Precedential No. 17: TTAB Suspends NFL's "WHO DAT" Opposition In View of Pending Lawsuit

One might say, "Bully for the NFL." The Board, in a rare precedential interlocutory order, granted the parties' motions to suspend this opposition in view of a civil action brought by the NFL over the annoying "trademark," WHO DAT. New Orleans Louisiana Saints LLC and NFL Properties LLC v. Who Dat?, Inc., 99 USPQ2d 1550 (TTAB 2011) [precedential].


This low-stakes, utterly meaningless battle over the term WHO DAT? is explained at a Wikipedia posting here.

Applicant Who Dat?, Inc. seeks to register the mark WHO DAT for lighters, tobacco pouches, and the like, and for arena and entertainment services. The NFL has opposed, dubiously claiming false association under Section 2(a), deceptiveness under 2(a), and (rather ridiculously) likelihood of confusion with various NFL and Saints' marks, none of which are anywhere near the mark WHO DAT.

Applicant moved for suspension in light of two other pending oppositions to its mark, but the Board denied that motion, explaining that it will usually not suspend one of several oppositions unless the oppositions contain "common" claims: e.g., mere descriptiveness or failure to function. Here the claims in the three opposition are all "personal" [my term] to each opposer.

Both the NFL and Applicant moved for suspension based upon a lawsuit commended by the NFL in the Louisiana federal court, where NFL makes claims of trademark infringement, among others, and seeks to enjoin use of WHO DAT by the defendants. The Board concluded that, since a decision by the federal court to enjoin use of WHO DAT by opposers [sic!] would have a bearing on this TTAB proceeding, it should suspend the case.

The Board noted that "[a] decision by the district court my be binding on the Board whereas a determination by the Board as to a defendant's right to obtain or retain a registration would not be binding or res judicata in respect to the proceeding pending before the court. Whopper-Burger, Inc. v. Burger King Corp., 171 USPQ 805, 805 (TTAB 1971).

Text Copyright John L. Welch 2011.

COLON CLEANSE for Laxative Confusingly Similar to COLON CLEANSE MOVE IT for Dietary Supplements, Says TTAB

As unpleasant as it may be, we must periodically blog a case like this. When we're done, you'll feel a whole lot better. The Board sustained a Section 2(d) opposition to registration of the mark COLON CLEANSE MOVE IT for "dietary food supplements" [COLON CLEANSE disclaimed], finding it likely to cause confusion with the registered mark COLON CLEANSE for "bulk forming fiber laxative." Health Plus, Inc. v. Tran Enterprises, LLC, Opposition No. 91190785 (July 12, 2011) [not precedential].


Opposer Health Plus relied on four registrations, for COLON CLEANSE, SUPER COLON CLEANSE, SUPER COLON CLEANSE DAY, and SUPER COLON CLEANSE NIGHT, claiming a family of COLON CLEANSE marks. However, once again, the proofs fell short. Although Opposer "tends to market goods under its [marks] together," it produced only three advertisements in which the marks appear together.

Health Plus also contended that its mark is famous for 2(d) purposes, but again its proofs fell short. It used its COLON CLEANSE mark since 1988, sold more than $54 million in goods between 2002 and 2009, and advertises in major media. However, these figures are "very low, compared to annual advertising figures for other marks" found famous by the Board. [E.g., $4 billion annually by the MPAA for its RATED R mark]. The Board concluded that the mark COLON CLEANSE has "at least some degree of recognition and strength in the nutritional supplement market and ... is therefore entitled to a broader scope of protection."

Turning to the marks, the Board noted that Applicant's disclaimer of COLON CLEANSE has no impact on the du Pont analysis, observing that the public is unaware of what portions of a mark may have been disclaimed at the USPTO.

The Board found that "taken as a whole," the marks COLON CLEANSE MOVE IT and COLON CLEANSE are "far more similar than dissimilar in appearance and sound." Moreover, they both convey a sense of "digestive regularity." The words MOVE IT reinforce the wording COLON CLEANSE "as well as the result that the goods identified under the marks are intended to achieve."

As to the goods, the record showed that Opposer's products are dietary supplements, and that Applicant's goods promote "bowel movement." In short, Opposer's laxative is a type of dietary supplement. Thus Applicant's goods encompass those of the COLON CLEANSE registration.

Because the goods overlap, the Board must presume that they travel in the same channels (of trade) to the same classes of consumers.

Finally, Health Plus charged that Applicant Tran adopted its mark in bad faith, since it knew of the COLON CLEANSE mark. The Board pointed out, however, that mere knowledge is not the same as bad faith.

The Board concluded that confusion is likely, and it sustained the opposition. However, it dismissed Opposer's dilution claim, noting that because Health Plus failed to prove fame under Section 2(d), it perforce did not meet the higher standard for fame under Section 43(c).

Text Copyright John L. Welch 2011.

TTAB Affirms Genericness Refusal of TREERADAR for ... Guess What?

Three years ago, Applicant TreeRadar, Inc. lost an appeal from a Section 2(e)(1) mere descriptiveness refusal of TREERADAR [opinion here], but it filed a new application and sought registration under Section 2(f). It lost again. This time, the Board affirmed a genericness refusal, finding TREERADAR to be generic for radar imaging systems for trees and for related services. In re TreeRadar, Inc., Serial No. 77579817 (July 15, 2011) [not precedential].


Res judicata: In light of this Applicant's prior unsuccessful appeal, the Board agreed with Examining Attorney Kristina Morris that Applicant was barred from re-litigating the issue of mere descriptiveness (i.e., inherent distinctiveness).

Genericness: Applying the In re Gould approach to the compound word TREERADAR, the Board first looked to dictionary definitions of "tree" and "radar." Applicant's own use of these two terms confirmed the generic meaning of those two words. Moreover, the compound term TREERADAR has no meaning apart from the meaning of the individual terms combined. "TREERADAR 'immediately and unequivocally describes the purpose, function and nature of the goods' and services."

The evidence also showed use of "tree radar" generically by others to refer to the same type of goods and services. Applicant argued that these references were actually to its mark "without capitalization," but the Board noted that these materials "still provide evidence of the context of use, the exposure of the term in a generic manner to the relevant public, and the meaning the public is likely to associate with the term as a result of such use."

Moreover, the Board found it not surprising that these uses of the term refer to Applicant and its product because Applicant "apparently holds a patent for its particular use of GPR technology ... and appears to be one of the only producers of this type of radar device." In any case, the term "tree radar" is used generically and not as a source indicator. And even if the record showed no third-party use of the term, it would still be generic because "the term clearly would be understood as having a generic meaning."

Applicant submitted evidence arguably showing that third-parties use TREERADAR as a trademark for its goods, but the Board found the evidence to be "ambiguous, at best." The "clear and unambiguous meaning of the term 'TREERADAR' as well as the generic manner of use of the term by others is far more convincing."

For the sake of completeness (and assuming arguendo that TREERADAR is not generic), the Board considered Applicant's evidence of acquired distinctiveness. Here, strong proof is required, and Applicant did not provide it. Applicant submitted a 5-year claim of continuous and substantially exclusive use, but such a claim is not sufficient by itself when the term sought to be registered is highly descriptive. Applicant did not submit sales or advertising figures, or other evidence. The Board therefore rejected the 2(f) claim.

TTABlog comment: The "g" key on my keyboard doesn't want to work, so I may have to skip enericness cases for a while.

The Board affirmed the refusal "under 2(e)(1) of the Act on the grounds that the mark is generic ...." What, pray tell, does Section 2(e)(1) have to do with genericness? Isn't the correct refusal under Sections 1, 2, and 45 on the ground that TREERADAR is simply not a mark?

Text Copyright John L. Welch 2011.

Test Your TTAB Judge-Ability: Are DYNATECH and DYNATEK Confusingly Similar for Auto Parts?

Before you exhaust yourself thinking about the question, let me start by clarifying the issue. Applicant sought to register the mark DYNATECH in standard character form for "engine exhaust system components, namely, pipes, collectors and mufflers ordered through specialty racing product ordering services." The PTO refused registration in view of the registered mark DYNATEK for "ignition systems for motor vehicles comprising, ignition coils and fuel injection controllers for motor vehicles; [and] crank sensor ignition triggers for motor vehicles." Confusable marks, right? Wrong! In re A-Fab, LLC, Serial No. 77639815 (July 11, 2011) [not precedential].


The marks were close enough. Applicant argued that third-party registrations of DYNATECH and similar marks required that the cited mark be given a narrow scope, but the Board found these registrations to be of limited value because only one covered goods in the automotive field, and in any case registrations alone do not indicate that consumers are familiar with are impacted by the marks.

As to the goods, the Board agreed with Applicant that there is no per se rule holding all automotive products to be related. The Examining Attorney submitted 21 third-party registrations covering both automotive ignition products and automotive exhaust products. Applicant submitted a declaration from its CEO, stating that Applicant's goods are highly specialized racing components. They are typically provided in specific sizes, designs, and configurations, and therefore are ordered with great care, usually with personalized guidance provided by Applicant to the customer.

Applicant attacked the third-party registrations by pointing out that four are not based on use and therefore have no probative value. Two are owned by the same entity, and so are redundant. That left 15, according to the Board. [I think it left 16, but who's counting? - ed.]. Of the 15 left, nine were house marks covering a wide range of automotive goods, and therefore are entitled to less probative weight. That left six, but none of those included exhaust systems sold through specialty racing products ordering services.

Although the cited registration did not contain any limitation as to channels of trade, the Board must focus on "the only relevant trade channel, namely 'specialty racing product ordering services.'" In light of the declaration of Applicant's CEO, the Board concluded that "the only overlap among customers are the careful, knowledgeable purchasers of applicant's goods." Given the specific difference in the goods, the "sophisticated decision-making involved in purchasing applicant's specialty racing exhaust components, warrant a finding that there is no likelihood of confusion."

Applicant also pointed to the lack of actual confusion despite 13 years of contemporaneous use of the involved marks, but the Board found that factor to be neutral in this ex parte context, where the Registrant has no chance to be heard.

And so the Board reversed the refusal to register.

Text Copyright John L. Welch 2011.

WYHA? TTAB Affirms 2(d) Refuslal of "RIDE OR DIE" over "RIDE TILL I DIE" for Clothing

Applicant Good Sports, Inc. rode this application all the way to the TTAB, where it died in a collision with Section 2(d). The Board affirmed a refusal to register the mark RIDE OR DIE (in standard character form) for various clothing items, in view of the registered mark RIDE TILL I DIE for overlapping clothing items. Would you have appealed? In re Good Sports Inc., Serial No. 77738935 (July 20, 2011) [not precedential].


Being a good sport, Applicant did not dispute that the involved goods are related. In fact, both the application and the cited registration cover hats and gloves. The Board thus must presume that the goods travel in the same channels of trade to the same classes or customers. These du Pont factors "weigh heavily in favor of a finding of likelihood of confusion."

Moreover, because the goods are in part identical, a lesser degree of similarity between the marks is necessary to support a Section 2(d) refusal.

Examining Attorney Kim Saito conceded that the marks have "very slightly different meanings, with applicant’s mark conveying the idea that a person will ride or die from wanting to ride, and registrant’s mark meaning a person will ride until his/her death." Not enough, said the Board:

"Despite this slight nuance in meaning, the marks still convey images of 'riding' and '“dying' in pithy phrases; although perhaps not identical in connotation, the marks have similar meanings, that is, 'I'm going to ride until I die.' While we have considered the slang meanings of the phrases as shown by applicant’s evidence, any difference in meaning is so subtle and nuanced that only purchasers engaging in extremely careful scrutiny and parsing would distinguish between the marks on this basis."

In short, the Board agreed with the Examining Attorney that the marks "are pithy phrases using monosyllabic words that reference riding and dying...and the rhythm and feel of the marks are similar." Any difference in meaning "is clearly outweighed by the presence of the identical words in each mark, 'RIDE' and 'DIE,' that results in marks that sound and look alike."

And so the Board affirmed the refusal.


Ride or Not
Text Copyright John L. Welch 2011.

Precedential No. 16: TTAB Finds That Orange-and-Green Color Combination Fails to Function as a Trademark For Newport Cigarettes

Affirming two refusals to register, the Board found that the orange-and-green color combination for the packaging of Newport-brand cigarettes fails to function as a trademark, and further that the proposed mark is a mutilation of the mark as it appears on the specimen of use. Thousands of customer and dealer statements submitted by Applicant Lorillard in an attempt to prove acquired distinctiveness failed to satisfy its high burden of proof. In re Lorillard Licensing Company, LLC, 99 USPQ2d 1312 (TTAB 2011) [precedential].


The applied-for mark consists of the color combination of orange and green, shown in the drawing immediately above, with the textual matter in orange and the background in green. However, Lorillard made no claim to any particular textual matter or any particular location for the text. The specimen of use, shown far below, is a sleeve that holds two packs of cigarettes.

The refusals to register were based on the PTO's contention that consumers do not view the color combination of orange textual material on a green background regardless of the text, as a source indicator for cigarettes. [The PTO did not refuse registration on the ground that the applied-for mark is a "phantom" mark.]

Applicant Lorillard claimed registrability under Section 2(f). The Board pointed out once again that "the kind and amount of evidence necessary to establish acquired distinctiveness ... depends on the nature of the mark and the circumstances surrounding the use of the mark in each case." Here, Lorillard had a "heavy burden."

Lorillard submitted two declarations from the brand director of its exclusive licensee, in which he detailed the sales and advertising numbers for cigarettes sold in connection with this color combination, and the use of the combination in advertising. The Board, however, had some problems with this evidence. For example, neither the cigarettes nor their individual boxes used the color combination, and the advertising and sales displays did not show "consistent use" of orange text on a green background in such a way as to function as a trademark.

Lorillard proffered more than 6,500 form statements from customers and more than 4,100 forms from dealers, purportedly showing that the applied-for mark is recognized as a source indicator.

CUSTOMER STATEMENT OF SECONDARY MEANING

To Whom It May Concern:

I am a customer of Newport cigarettes and have purchased at least one pack of Newport cigarettes. Also, as a frequent visitor of convenience stores, I have noticed the distinctive orange and green coloring of Newport’s point of purchase displays and advertising. I have come to look upon the orange and green coloring as a symbol identifying Newport cigarettes only and not of any other company in this field.

The Board did not find the customer statements "to be very probative." There was no information about the people who signed the forms: how often they bought cigarettes, the conditions under which they signed the statements, or their understanding of what they were signing. And it is not clear whether the customers were all in the same city or represent any geographic diversity.

The dealer statements were longer, but there was no indication of the name or nature of the retail establishment, or whether cigarette sales are a significant part of the business. Moreover the "rather vague and general nature of the statement" was troublesome: they do not indicate the proposed mark for which registration is here sought, so that it was not clear whether the consumers recognized the colors alone regardless of the text that appeared.

The Board observed that the sheer number of statements submitted was not important. It is what they say that counts. The Board would find "much more probative" fewer declarations with more pertinent information: "where the customers are from, that they are current purchasers of cigarettes, and a clear indication that they are aware of what the proposed mark is and that they view it as a trademark."

Finally, the Board reviewed Applicant's evidence that its purported mark has been copied by others in various parodies or advertising references. The Board agreed that this evidence showed "some consumer recognition that applicant uses the color orange and green for its cigarettes," but it was not enough to prove that consumers "will recognize any orange-colored text appearing on a green background as a trademark of applicant's."

The Board concluded that Lorillard failed to demonstrate that the applied-for mark, "namely, any orange text appearing on a green background," has achieved acquired distinctiveness. It ruled that the applied-for combination does not function as a trademark. Moreover, because the combination does not create a "separate commercial impression from the wording shown in the specimens," the drawing is also unacceptable as a mutilation of the mark [because the drawing leaves off some of the wording on the specimen].

specimen of use
TTABlog comment: I am re-considering whether to apply to register the color orange on a blue background as a service mark for informational services.

Seriously, though, were the declarations really that bad? It is not easy to get statements from consumers, so Lorillard's submission of more than 6,500 was pretty impressive. I get the feeling that the Board did not care for the "phantom" nature of the proposed mark, and would like to have knocked it out on that ground alone.

Text Copyright John L. Welch 2011.

WYHA? TTAB Affirms 2(d) Refusal of DEALER FINANCIAL SERVICES over DEALERS FINANCE COMPANY

Applicant MarineMax, Inc. ran aground in its attempt to register the marks DEALER FINANCIAL SERVICES and DEALER FINANCIAL SERVICES GROUP, in standard character and design form, for various financial services, including "providing loans for purchase or refinance." The Board found the marks likely to cause confusion with DEALERS FINANCE COMPANY & Design, registered for "financing services." Would you have appealed? In re MarineMax, Inc., Serial Nos. 77731739, 77731750, 77731757, and 77731762 (June 30, 2011) [not precedential].


The services: MarineMax's ship immediately began to sink when the Board found that its services overlap with those of the cited registration. Consequently, the Board presumed that the involved services are offered through the same channels of trade to the same classes of purchasers. These duPont factors "weigh heavily" against Applicant.


The marks: Moreover, because the services are in part identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

The Board found that the wording in the design marks dominates over the non-distinctive design components. Furthermore, the word DEALER is emphasized in each mark in larger lettering, the remaining words being highly descriptive or generic. [Each application and the cited registration included disclaimers of some or all the words]. The Board, not surprisingly, found that the similarities outweigh the differences.

MarineMax did not go down without a fight. It submitted twelve third-party registrations in class 36 for marks beginning with the term DEALER or DEALERS, arguing that DEALER is a weak-formative. The Board, however, gave most of these registration little probative value: three of the registrations were owned by Registrant, and only four of the remaining registrations are "clearly in the same field of financing," and only one includes the overlapping word FINANCIAL. In any event, even if these registration did establish weakness, even weak marks are entitled to protection under Section 2(d).

Finally, MarineMax urged that customer sophistication would prevent confusion, but that argument didn't float either. Consumers for these services could include "the general population seeking financial services or automobile financing, which would include unsophisticated consumers who would use ordinary care in selecting such services."

And so the Board affirmed the refusal to register.

Text Copyright John L. Welch 2011.

TTAB 2(d) Reversal: "EPs 7630" Not Confusingly Similar to "EP" for Respiratory Drugs

Although it rejected Applicant Schwabe's appeal brief as not brief enough, the Board nonetheless reversed a Section 2(d) refusal to register the mark EPs 7630 for "plant-based pharmaceuticals for the treatment of respiratory diseases, namely, those based on an ethanolic extract of the roots of pelargonium sidoides," finding it not likely to cause confusion with the registered marks EP and EP 12.5 for "pharmaceutical bronchodilators" [12.5 disclaimed]. In re Dr. Willmar Schwabe GmbH & Co. KG, Serial No. 76690276 (July 7, 2011) [not precedential].


Brief too long: Applicant's appeal brief comprised 45 pages (including table of content, table of cases, description of the record, statement of the issue, statement of facts, and argument), which exceeded the limit of Rule 2.142(b) by 20 pages. The Board therefore refused to consider the brief. However, Applicant made the same arguments during prosecution, and the prosecution history was part of the record anyway.

The goods: Although the goods are specifically different, the evidence showed that "they are related in that both are pharmaceutical products used to treat respiratory conditions." There were no limitations as to channels of trade in either the challenged application or the cited registration, and so the Board presumed that the involved goods move in the normal channels of trade for such goods, including drug stores and pharmacies. Moreover, there were no limitations as to classes of customers, and therefore the Board assumed that the goods would be purchased by all potential buyers, including ordinary consumers.

The marks: Since the cited EP mark is closer to the applied-for mark than EP 12.5, the Board focused its analysis on the former mark.

There was no evidence that the terms "EPs" or "7630" in Applicant's mark have any significance in the trade. Although consumers usually focus on the first portion of a mark, here "the second portion of the mark '7630' is just as distinctive as the first portion, and just as likely to be mentioned when a consumer calls for the goods." The Board found that numbers are often used with pharmaceuticals, and therefore the number 7630 should not be relegated to a "subordinate role" in Applicant's mark. In short, the Board refused to find that the mark is dominated by EPs.

The Board further found that the term "EP" is "highly suggestive" of ephedrine-based products, "thereby reducing the degree of distinctiveness of registrant's marks."

And so the Board concluded that the differences in sound, appearance, meaning, and overall commercial impression were sufficient to distinguish the marks.

The Board refused to consider Applicant's assertions that the cited marks are generic and that the marks have been abandoned due to non-use, on the ground that such collateral attacks on a cited registration are not permitted in an ex parte context.

Text Copyright John L. Welch 2011.

Recommended Listening: Anne Gilson LaLonde on "Trademarks Laid Bare - Marks That May Be Scandalous or Immoral"

"Anne Gilson LaLonde discusses [here] the prohibition of registering scandalous or immoral trademarks, the standard used by the PTO in determining such marks, and problems that result from having examining attorneys decide which marks are scandalous." [Copyright© 2010 LexisNexis, a division of Reed Elsevier Inc. All rights reserved.]

WYHA? TTAB Affirms 2(e)(1) Mere Descriptiveness Refusal of MUSCLE MAIZE for Supplements

Dictionary definitions of "muscle" and "maize," third-party registrations with MUSCLE disclaimed, and website evidence submitted by Examining Attorney Drew Leaser convinced the Board that the mark MUSCLE MAIZE is merely descriptive of "dietary and nutritional supplements" [MAIZE DISCLAIMED]. Would You Have Appealed? In re Nutraquest, Inc., Serial No. 77729645 (July 7, 2011) [not precedential].

Click on photo for larger picture
The evidence established that MUSCLE MAIZE "would immediately describe, without conjecture or speculation, a significant characteristic or feature of such goods, namely, that they are dietary or nutritional supplements that contain maize starch intended to promote muscle growth and recovery."

Applicant Nutraquest feebly argued that the constituent terms have various meanings, and so MUSCLE MAIZE "'might suggest that Applicant is particularly effective at transmitting the nutritional benefits of corn to the user;' 'that the corn-based ingredient(s) have ‘muscle’ and are especially effective or beneficial;' or that 'Applicant’s product contains only the ‘muscle,’ or the fundamental and most beneficial nutritional element(s) of corn.'" The Board pointed out, however, that the mark must be considered in relation to the involved goods; the fact that the words may have other meanings in other contexts is not controlling.

Finally, Nutraquest pointed to third-party registrations for MUSCLE-formative marks, but the Board pointed out once again that each case must be decided on its own record. "While uniform treatment under the Trademark Act is highly desirable, our task here is to determine, based upon the record before us, whether applicant's mark is registrable."

Nutraquest requested that, if its appeal failed, the mark "be remanded to the Examining Attorney with instructions to permit Applicant to amend the application to the Supplemental Register." However, the application is based on intent to use, and since Applicant did not submit proof of use, it is ineligible for the Supplemental Register. Furthermore, "an application that has been considered and decided on appeal to the Board will not be reopened except in very limited circumstances not applicable to this case."

And so the Board affirmed the refusal.

Text Copyright John L. Welch 2011. Photograph Copyright John L. Welch 2001.

Precedential No. 15: Finding Lack of Bona Fide Intent, TTAB Sustains MOSKONISI Opposition

In this Section 2(d) opposition, Opposer Spirits established a prima facie case of lack of bona fide intent through Applicant's discovery responses. The burden then shifted to Applicant to come forward with evidence to rebut Opposer's case. Applicant S.S. Taris did not submit any evidence (nor did it file a brief). The Board therefore sustained the opposition on the ground of lack of bona fide intent, entering judgment immediately despite the fact that Opposer's claim of priority was contingent upon registration of its pleaded mark. Spirits International, B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d 1545 (TTAB 2011) [precedential].


Applicant sought to register the mark shown above for various alcoholic and non-alcoholic beverages in classes 32 and 33. Spirits opposed on the basis of its ownership of an ITU application for the mark MOSKOVSKAYA for vodka, claiming likelihood of confusion as to Applicant's alcoholic beverages. [In one of several interesting footnotes, the Board pointed out that although Spirits' 2(d) claim was limited to Applicant's alcoholic products only, Applicant made no attempt to divide out the non-alcoholic products, and so if Spirits were to prove a lack of bona fide intent as to any of the goods in a class, the opposition would be sustained as to the entire class].

The Board also noted that Spirits had standing to oppose, even thought it based the opposition on an ITU application, and even though its application had not been refused registration in light of Applicant's application.

In its discovery responses, Applicant stated that it had no documents regarding intended use, no promotional or marketing materials, and no marketing plans. Nor had it obtained any necessary permits or approvals to import or sell alcoholic beverages. Spirits therefore met its initial burden of "demonstrating by a preponderance of the evidence that applicant lacked on the filing date of the application, or now lacks, a bona fide intent to use the mark on the identified goods."

The absence of any documentary evidence on the part of an applicant regarding such intent constitutes objective proof sufficient to establish that the applicant lacks a bona fide intention to use its mark in commerce. See Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008); Commodore Electronics Ltd. v. CBM Kabushiki Kaisha Opposition, 26 USPQ2d 1503, 1507 (TTAB 1993).

The burden then shifted to applicant "to come forward with evidence which would adequately explain or outweigh the failure to provide such documentary evidence." Applicant provided nothing.

The Board therefore sustained the opposition on the ground of lack of bona fide intent.

Finally, the Board explained that, even though Opposer's likelihood of confusion claim was contingent on its obtaining registration of its mark in order to perfect its priority claim, the Board entered judgment immediately.

[W]e have already found that opposer has established that applicant lacked and continues to lack a bona fide intention to use its mark for at least some of the identified goods, i.e., alcoholic beverages, in each class that has been opposed. Because the opposition can be sustained on this ground alone, thereby denying registration to applicant without any delay to see if opposer can perfect its claim of priority, we decline to address opposer’s second ground of likelihood of confusion, and enter judgment solely on the ground of lack of a bona fide intent to use the mark.

TTABlog comment: If not for the twists and turns discussed in the footnotes, I think this would have been a rather straightforward decision, probably not deserving of the "precedential" moniker.

Text Copyright John L. Welch

Test Your TTAB Judge-Ability: Are TEKSTONE and STONTEC Confusingly Similar for Vinyl Flooring?

Applicant Metroflor applied to register the mark TEKSTONE for "vinyl floor tile," but StonCor opposed, claiming likely confusion with its registered mark STONTEC for "non-metal floors, namely, vinyl flake decorated and colored floors, aspartic urethane-based floors." Metroflor filed a cross-motion for summary judgment under Section 2(d). How would you rule? StonCor Group, Inc. v. Metroflor Corporation, Opposition No. 91194599 (June 24, 2011) [not precedential].


The Board granted StonCor's motion for summary judgment, sustaining the opposition. It found the goods to be "closely related, if not identical," and that these flooring products presumably travel through overlapping channels of trade to overlapping classes of consumers.

With the goods so closely related, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. The Board observed that "the transposition of terms is not always sufficient to distinguish the resulting marks." Here, the transposition does not "add anything which would change the commercial impression fostered by these marks." They are similar in sound and appearance, and "engender the same suggestive connotations inasmuch as they both reference stone technology."

Applicant Metroflor feebly pointed to the lack of evidence of actual confusion, but of course that is not the test. In any case, Applicant submitted no evidence to show that there was any opportunity for confusion in the marketplace.

And so the Board sustained the opposition.

TTABlog comment: I don't think these marks are similar enough. They look and sound too different, and "stone" and "tech" are weak formatives. Are people really dumb enough to confuse TEKSTONE with STONTEC?

Stoncor, who claims to be the world leader in commercial and industrial flooring, seems to be a rather aggressive TTAB litigant. It seems to leave no stone unturned when it comes to policing the word "stone." I wonder if its has every resorted to the "rock-it" docket down in Virginia?

Text Copyright John L. Welch 2011.

PTO Proposes New Rules Allowing Examining Attorneys to Request Additional Specimens of Use

In a Notice published in the Federal Register yesterday (pdf here), the USPTO proposes a revision of the Trademark Rules of Practice to permit the Office "to require: any information, exhibits, and affidavits or declarations deemed reasonably necessary to examine an affidavit or declaration of continued use or excusable nonuse in trademark cases, or for the USPTO to assess the accuracy and integrity of the register; and upon request, more than one specimen in connection with a use-based trademark application, an allegation of use, an amendment to a registered mark, or an affidavit or declaration of continued use in trademark cases." Comments are due by September 12, 2011.


The ultimate goal of the PTO is to ensure the accuracy and reliability of the trademark register:

The public relies on the register to clear trademarks that they may wish to adopt or are already using. Where a party searching the register uncovers a potentially confusingly similar mark, that party may incur a variety of resulting costs and burdens, such as changing plans to avoid use of the mark, investigative costs to determine how the similar mark is actually used and assess the nature of any conflict, or cancellation proceedings or other litigation to resolve a dispute over the mark. If a registered mark is not actually in use in the United States, or is not in use on all the goods/services in the registration, these types of costs and burdens may be incurred unnecessarily. Thus, accuracy and reliability of the trademark register help avoid such needless costs and burdens, and thereby benefit the public.

The PTO notes that under current practice, the Office may require additional information relevant to a pending application, but no such rule exists for post-registration filings. These new rules would harmonize these requirements.

Note that the PTO may, for example, "require a verified photograph showing use of the mark on particular goods." This reminds me of my blog posting of May 11, 2009 (here), entitled "Fraud and the Digital Camera," where I suggested (in the fraud context) that the Office might require a specimen of use (e.g., a digital photograph) for each product included in an identification of goods.

Text Copyright John L. Welch 2011.

Finding Household Linens and Furniture Related, TTAB Cancels LEXINGTON Registration Under Section 2(d)

Here's one for the insomniacs among us. The Board granted a petition for cancellation of a registration for the mark LEXINGTON & Design for household linens, on the ground of likelihood of confusion with the registered and previously-used marks LEXINGTON, LEXINGTON FURNITURE INDUSTRIES, and LEXINGTON HOME BRANDS for furniture [FURNITURE INDUSTRIES and BRAND disclaimed]. Lexington Furniture Industries, Inc. v. The Lexington Company, AB, Cancellation No. 92048578 (June 22, 2001) [not precedential].


Rule 2.122(j)(4): The Board first addressed a procedural issue regarding Respondent's submission of excerpts from the discovery deposition of its own CEO. Petitioner, via notice of reliance, had submitted portions of the deposition, and Respondent claimed that the additional excerpts "should in fairness be considered." However, Rule 2.122(j)(4) requires that a party who submits such additional excerpts explain why it needs to rely on excerpts from its own witness's discovery deposition:

If only part of a discovery deposition is submitted and made part of the record by a party, an adverse party may introduce under a notice of reliance any other part of the deposition which should in fairness be considered so as to make not misleading what was offered by the submitting party. A notice for reliance filed by an adverse party must be supported by a written statement explaining why the adverse party needs to rely upon each additional part listed in the adverse party’s notice, failing which the Board, in its discretion, may refuse to consider the additional parts.

The Board ruled that Respondent had failed to show how the portions of the testimony submitted by Petitioner were misleading, and so the Board sustained Petitioner's objection to admission of these additional deposition excerpts.

Priority: The Board pointed out that in a cancellation proceeding in which both petitioner and respondent are owners of registrations, the petitioner must prove priority of use. Respondent could rely on the priority date of its Madrid Protocol application that issued into its registration, but the filing dates for Petitioner's applications for registration were earlier than that date. And so Petitioner enjoyed priority.

The marks: The Board found that the word portion of Respondent's mark is dominant "because consumers would use it to call for the products." It rejected Respondent's contention that the flag design is dominant and that the stacked arrangement of the word LEXINGTON distinguishes the marks.

Lexington, Massachusetts(Click on photo for larger picture)
The goods: To show the relatedness of the goods, Petitioner submitted a significant number of third-party registrations. However, the Board gave no probative value to the registrations that were based on Section 44 rather than on use, and little value to those directed to house or designer marks. As to the latter:

Because house marks and designer brands are used on such a wide variety of goods, consideration of registrations for house marks and designer brands to show that the goods at issue are related could create a situation where widely disparate goods are considered related.

Petitioner also introduced persuasive testimony of witnesses in the furniture industry, showing that furniture manufacturers sell both furniture and household linens under the same mark, and that consumers would encounter the marks under circumstances (e.g., in showrooms) likely to lead to confusion as to source.

Channels of trade: The witnesses established that both parties sell their products in department stores, in close proximity to each other. Retailers sell furniture "by creating how it looks in the home: that is, as an ensemble with all the elements of a decorated room."

Strength of petitioner's marks: Respondent argued that the LEXINGTON marks are not strong, since "Lexington" is a well know geographical name for several cities. The Board, however, pointed out that Petitioner's registrations are more than five years old and thus immune to a Section 2(e)(2) challenge. Moreover, even if weak, Petitioner's marks are still entitled to protection against confusion, especially when the marks, as here, are very similar.

And so, balancing the duPont factors, the Board granted the petition for cancellation.

Text Copyright John L. Welch 2011; photograph Copyright John L. Welch 2003.

Fame of "PING" Mark Brings TTAB 2(d) Victory Over "PING WI FI"

Pro se Applicant D. Kent Pingel did not take testimony, submit evidence, or file a brief in this Section 2(d) opposition to registration of the mark shown below [WI FI disclaimed] for "advertising and publicity services, namely, promoting the goods, services, brand identity and commercial information and news of third parties through print, audio, video, digital and on-line medium." Opposer Karsten claimed likelihood of confusion with its registered mark PING and proved that the mark is famous in connection with golf-related equipment and services. Karsten won. Karsten Manufacturing Corporation v. D. Kent Pingel, Opposition No. 91189542 (June 22, 2011) [not precedential].


Karsten proved use of the PING mark since 1960, high market share, and very substantial sales and significant advertising expenditures. It advertises at major golf tournaments and licenses its mark to a clothing maker. The Board concluded that the mark has achieved fame for Section 2(d) purposes, and is therefore entitled to "a wide latitude of legal protection."

Karsten attempted to prove that it renders advertising and promotional services for others, but its proofs fell short: it failed to show that those services were rendered under any of its marks. Nonetheless, the Board found that Karsten's evidence had probative value: "a relationship exists between opposer's sponsorship services in the golf field and applicant's services."

First, based on the respective recitations of services, the same golfers that opposer sponsors may also retain applicant for publicity services. Likewise, the same golf tournament organizations that seek opposer’s sponsorship services may also retain applicant’s promotional services. Second, and perhaps more importantly, the record demonstrates that certain conditions and activities surrounding opposer’s sponsorship services bridge the gap with applicant’s advertising and publicity services. In particular, opposer frequently places advertisements in magazines and other media containing a picture of a sponsored player using opposer’s PING golf clubs. In addition to obviously promoting the PING golf clubs, the record shows that these advertisements also promote and/or provide publicity to the player shown in the advertisement.

The Board therefore found it "plausible" that the parties "may offer their services to the same consumers, golfers and golf tournament organizations. There is also a degree of relationship between opposer's sponsorship services with the unrestricted advertising and publicity services in the opposed application."

Balancing the duPont factors, and giving the prior registrant the benefit of any doubt, the Board sustained the opposition.

TTABlog comment: This is, I think, one of those cases where one party did little or nothing while the other party put in all its evidence and did all the hard work to prove its case. In my experience, under those circumstances the Board will almost always side with the latter. The point is, don't disrespect the Board by making a half-baked effort.

Text Copyright John L. Welch 2011.

Test Your TTAB Judge-Ability: Which One of These Three Section 2(d) Refusals Did the TTAB Reverse?

Here we go again! Take a look at these three ex parte appeals from Section 2(d) refusals, two of which were affirmed by the Board, the other reversed. Let's see if you come up with the same results based on a quick look at the marks and the goods/services involved. [See comments for answer].

In re Iris Music Group, Serial No. 77021415 (June 20, 2011) [not precedential]. [Section 2(d) refusal of IRIS MUSIC GROUP for entertainment services, including providing prerecorded music on-line via a global computer network, music production services, production of sound and music video recordings, and record production [MUSIC GROUP disclaimed], in view of the registered mark IRIS RECORDS for "compact discs, audio cassettes, [phonograph] records, and prerecorded video tapes featuring musical and vocal performances"].


In re Bioenergy, Inc., Serial No. 77503783 (June 22, 2011) [not precedential]. [Refusal of REJUVALEN (Stylized) for skin cream, on the ground of likely confusion with the registered mark REJUVALINE for "non-medicated ingredients sold as an integral component of cosmetics and non-medicated skin care preparations"].


In re Mike Tonche, Serial No. 77730883 (June 24, 2011) [not precedential]. [Section 2(d) refusal of STREETLIGHT CLOTHING for "clothing, namely, T-shirts, sweatshirts, shirts, hats, pants, shorts, jackets, and caps” [CLOTHING disclaimed], in view of the registered mark STREETLIGHTS for "footwear incorporating a light feature"].


Text Copyright John L. Welch 2011.

WYHA? TTAB Affirms Mere Descriptiveness Refusal of STERNALVEST for Sternal Vests

The Board needed a mere two pages to set forth its opinion in this affirmance of a Section 2(e)(1) mere descriptiveness refusal of the mark STERNALVEST for 'therapeutic thoracic/abdominal compression vest used for the purposes of stabilizing, immobilizing, and compressing any type of medical condition including an open wound or closed medical condition or for any preoperative and/or postoperative surgical procedure." One must ask, Would You Have Appealed? In re Joseph S. Pongratz, Serial No. 76697006 (June 24, 2011) [not precedential].


The Board found that the "applied for term names the goods and does not create any nondescriptive meaning as used in connection with these goods."

The word “vest” alone is generic for applicant’s product inasmuch as the only listed International Class 10 item is a “vest.” Hence, the only remaining determination is the result under Section 2(e)(1) of the Trademark Act with the insertion of the word “sternal” immediately before the word “vest.”

Dictionary entries show that “sternal” is defined as “of or relating to or near the sternum.” According to the applicant’s website [http://www.sternalvest.com/], specimen of record, and the identification of goods, applicant markets a therapeutic vest worn on or over the sternum. The resulting telescoped term names the goods while failing to create any separate and impressionable non-descriptive meaning.

And so the Board affirmed the refusal.

TTABlog comment: But what about a definition of "sternum?" Ok, so "sternal" means "near the sternum," but what is the sternum?

Text Copyright John L. Welch 2011.

No Posting Today: Beach Day Yesterday

Waiting for the TTAB to issue some new decisions, so I went to the beach yesterday. First Encounter Beach, Eastham, MA, to be precise. Here are a few cellphone photos. [click on photos for larger image].

TTAB Non-Shocker: Summary Judgment Denied as to Fraud

In a nonprecedential interlocutory order [pdf here], the Board denied cross-motions for summary judgment based on fraud in this cancellation proceeding directed at a registration for the mark GOLDEN VISION FLOWER INC. & Design for flowers, seeds, and plants. Petitioner claimed that Respondent committed fraud when it submitted a Statement of Use that was sign by a person who falsely claimed to be president of the company, when she was not an officer at all, and who signed the statement based on use of the mark by a third party. Atlas Flowers, Inc. d/b/a Golden Flowers v. Golden Vision Flower Inc., Cancellation No. 92050966 (June 28, 2001) [not precedential].


Fraud: The Board found that genuine issues of material fact precluded the granting of either motion for summary judgment.

"At a minimum, genuine issues of material fact exist as to respondent's intent to commit fraud on the Office. The parties are advised that the factual question of intent is particularly unsuited to disposition on summary judgment."

Defect in SOU Signature: Petitioner also sought to add a separate claim for cancellation based on the fact that the person who signed the Statement of Use was not qualified to do so, and furthermore that the statement she signed was based on use of the mark by a third party. However, the Board pointed out that such an amendment would be futile because "the signature, and basis therefor, as opposed to fraud in executing the declaration, do not by themselves form a statutory ground for cancellation."

"Petitioner is correct to plead the relevant allegations under a ground of fraud, but petitioner may not separately plead them to allege that the resulting registration is invalid. The acceptability of the signature on respondent's statement of use is an issue that may be raised by the Office during examination, but it is not a statutory ground for opposition or cancellation by third parties." [TTABlog query: How would the PTO know to question the signature in this case?]

And so the Board resumed proceedings and re-set the discovery and trial dates.

TTABlog comment: Suppose Petitioner cannot prove an intent to deceive the USPTO. Does the registration survive despite the defective declaration? In a case like this, where the USPTO would have had no reason to question the signature on the Statement of Use, shouldn't a third party be able to challenge the validity of the registration without having to prove fraud?

The petitioner in this proceeding also claimed non-use, so maybe that claim will prove to be fatal to the registration.

Text Copyright John L. Welch 2011.

Highly Experienced Trademark and IP Attorney Seeks New Position

Intellectual Property attorney with 17 years of diverse in-house experience and a focus on trademarks seeks position with a corporation or law firm, preferably on the East Coast, but will consider any area of the country. Has managed large global trademark portfolios and trademark litigation for several Fortune 500 companies, and has been deeply involved in trademark prosecution and clearance. Responsibilities have included all phases of IP (including patents, copyright matters and new media issues) and a full range of related transactional work. Registered patent attorney. Send inquiries to John L. Welch (jwelch @ lalaw.com) to arrange for an introduction.

TTAB Posts July 2011 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled five (5) oral hearings for the month of July, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]. Briefs and other papers for these cases may be found at TTABVUE via the links provided.


July 7, 2011 - 11 AM: In re The Government of the District of Columbia, Serial No. 77643857 [Section 2(b) refusal to register the mark shown below for clocks, cufflinks, clothing, and various other goods, on the ground that the mark is an official insignia of the District of Columbia].


July 12, 2011 - 11 AM: In re Coach Services, Inc., Serial No. 77606502 [Section 2(d) refusal of the mark POPPY for “after shave lotions, body sprays, cologne, cosmetics, hand lotions, perfume, skin lotion, skin moisturizer, skin soap, toilet soap, not including hair and scalp conditioner” and “bracelets; earrings; jewelry; necklaces; rings being jewelry; watches” on the ground of a likelihood of confusion with the registered marks POPPY for "hair and scalp conditioner" and PINK POPPY & Design for "brooches, rings, jewelry, bracelets, collectible and commemorative coins, badges of precious metal; articles of precious metal, namely, jewelry, collectible and commemorative coins, badges"].


July 14, 2011 - 11 AM: In re Continental Fragrances, Ltd., Serial No. 77677661 [Section 2(d) refusal to register INVISIBLE for hair care preparations in view of the identical mark registered for cosmetics].


July 19, 2011 - 2 PM: In re Staples The Office Superstore LLC, Serial No. 78411419 [Section 2(d) refusal to register ONE^.TOUCH for "non-electric staplers and hole punchers," on the ground of likelihood of confusion with the registered mark ONE-TOUCH for ring binders].


July 26, 2011 - 11 AM: In re Johnson & Johnson, Serial No. 77464726 [Section 2(e)(1) mere descriptiveness of the mark MICRO-GROOVES for dental floss].


Text Copyright John L. Welch 2011.