TTABlog Special Report: List of Fraud Claims Sustained by TTAB Since In re Bose

None. The TTAB has not sustained a single fraud claim in the two years since the CAFC issued its decision in In re Bose Corporation. Nor has it decided whether reckless disregard for the truth is sufficient to satisfy the "intent" element. To sum up the situation, see the Fraud-O-Meter.

Test Your TTAB Judge-Ability Against This Opinion By New Judge Thomas Shaw

Rookie TTAB Judge Thomas Shaw stepped into the TTABatter's box to face this appeal from a Section 2(d) refusal to register the mark ARCTIC HEAT for, inter alia, "therapeutic hot and cold compression wraps for cooling or warming parts of the human body." PTO Examining Attorney Charisma Hampton deemed the mark likely to cause confusion with the registered mark shown below for, inter alia, "human and veterinary medical devices, namely cooling and heating rehabilitation packs." How would you rule? In re Poly-Gel L.L.C., Serial No. 77850772 (August 16, 2011) [not precedential].

As to the marks, the Board not surprisingly found ARCTIC HEAT to be the dominant portion of the cited mark. The rectangular carrier design has no source-indicating value, and the words COOL DOWN AND FIRE UP, appearing in small type, merely reinforce "the suggestion of cold and hot conveyed by ARCTIC HEAT." The Board concluded that the two marks are similar in appearance, connotation, and commercial impression.

Applicant argued that the word ARCTIC and HEAT are suggestive, or even descriptive, when used for cold or heat packs, but the Board found no evidence that ARCTIC HEAT is weak or commonly used in connection with the subject goods. "On the contrary, the juxtaposition of the seemingly opposite terms ARCTIC and HEAT creates a noticeable and arbitrary mark."

As to the goods, the Board found that Applicant's "therapeutic hot and cold compression wraps for cooling or warming parts of the human body" are closely related to registrant's "cooling and heating rehabilitation packs," since both "are used to provide localized heat or cold to treat parts of the human body." The Examining Attorney's website evidence showed that heat or cold packs are often used in wraps to heat or cool body parts. Applicant's own website likewise showed such packs used in such wraps. Furthermore, third-party registration evidence demonstrated that healing or cooling wraps or packs emanate from a single source.

And so the Board found these involved goods to be closely related and, in view of the similarity of the marks, it affirmed the refusal to register.

TTABlog comment: Well, how did you do? Looks to me like Judge Shaw was thrown a slowball right over the plate for his first time at bat.

Text Copyright John L. Welch 2011.

WYHA? "TUBES" Merely Descriptive of Non-inflatable Mattresses, Says TTAB

The Board affirmed a Section 2(e)(1) refusal to register the mark TUBES, finding it merely descriptive of non-inflatable mattresses made of polyurethane-foam or latex. Applicant Metzeler, when faced with a potential deceptive misdescriptiveness refusal during prosecution, admitted that its mattresses contain foam tubes. Would you have appealed? In re Metzeler Schaum GmbH, Serial No. 79041878 (August 15, 2011) [not precedential].

Warning: Video is slow to load (but worth the wait)

Metzeler argued that the mark is at most suggestive, pointing out that it does not sell "a typical water or air bed containing a cavity to be filled with water or air" [respectively - ed.]. Furthermore, "consumers are not aware of foam springs being used in mattresses and therefore [TUBES] cannot be descriptive."

Examining Attorney Evelyn Bradley pointed to Applicant's admission, and also to several search engine results showing use of the phrase "foam tube" in connection with mattresses. The Board was satisfied that TUBES "conveys a salient feature or attribute of applicant's non-inflatable mattresses made of polyurethane-foam or latex, namely that the mattresses contain cylindrical structures or tubes."

Metzeler contended that the "hidden TUBE content" of its mattresses is not a significant attribute, since consumers are not aware of the internal structure of mattresses. That argument was "severely undercut," however, by the evidence of industry and public recognition of the "tubes" feature in Applicant's mattresses. In fact, Applicant's advertising prominently shows the "tubes" construction.

The Board therefore affirmed the mere descriptiveness refusal under Section 2(e)(1).

Text Copyright John L. Welch 2011.

Test Your TTAB Judge-Ability: Are "LES COLLINES" and "HILLS VINEYARD" Confusingly Similar for Viticulture Services?

The French term "Les Collines" translates into English exactly as "The Hills." Applicant sought to register the mark LES COLLINES for "“vineyard and winery services, namely, the cultivation of grapes for others; [and] viticulture services, namely, grape growing and cultivation of grapes for others," but the PTO refused registration under Section 2(d) in view of the registered mark HILLS VINEYARD for, inter alia, "viticulture services, namely, grape growing and cultivation of grapes for others" [VINEYARD disclaimed]. Does the doctrine of foreign equivalents apply? And how would you rule? In re Les Collines, LLC, Serial No. 77871104 (August 19, 2011) [not precedential].


The Board observed that, as to sound and appearance, "there is nothing even remotely similar between the marks." But what about meaning and overall commercial impression?

Foreign Equivalents: The question of whether to apply the doctrine of foreign equivalents was "at the heart" of the appeal.

Although words from modern languages are generally translated into English, the doctrine of foreign equivalents has evolved into a guideline, not an absolute rule, and is applied only when it is likely that "the ordinary American purchaser would 'stop and translate' [the term] into its English equivalent." Palm Bay Import, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1696, quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976).

Applicant argued that purchasers are not likely to translate LES COLLINES because of the manner in which the terms are encountered in the "unique marketplace environment of vineyards, wineries and viticulture," where foreign names abound and purchasers of the involved services are sophisticated. The Board appreciated the "potential merit" in Applicant's argument, but found that its evidence fell short.

[A] mere single declaration of applicant (not exactly an unbiased source) is not enough to persuade us that wineries and winemakers would not stop and translate applicant’s mark. *** [W]e think it is plausible that these purchasers are just as likely to stop and translate applicant’s mark, if not more likely. We say this given their degree of exposure to foreign terms in the wine industry.

Commercial Impression: The Board found that the marks "engender overall commercial impressions that are completely different. Moreover, "the differences between the marks in sound, appearance and overall commercial impression clearly outweigh the similarity in meaning when the doctrine of foreign equivalents is applied."

Other Factors: The Board found "hills" and "hill" to be suggestive in the wine industry and, therefore, weak formatives, a factor that buttressed Applicant's position.

[Applicant's witness] explained the importance of the “terroir” (comprising climate, soil type, topography and elevation) of a vineyard as it impacts the quality and characteristics of grapes grown for winemaking. According to Mr. McKibben, vineyards are often planted on hillsides due to advantages to such a location.

Website evidence showed that "hills" is often used in connection with wineries: "Given the importance of hills in growing grapes for wine, it comes as no surprise that wineries have a fondness for using the terms 'hill' or 'hills' as a component of their names and/or trademarks, or as a component of their names for particular vineyards."

Moreover, the purchasers of the services are "highly sophisticated, " and the purchasing process "typically involves a complicated and informed decision, certainly not made on impulse."

Weighing the relevant duPont factors, the Board ruled that confusion is unlikely, and it reversed the refusal to register.

Text Copyright John L. Welch 2011.

Experienced Trademark and Copyright Examiner Seeks Position, Preferably on East Coast

Former Examiner with 8 years' examining experience, first as a Trademark Examining Attorney at the PTO, then as a Copyright Examiner at the U.S. Copyright Office, plus 2 years' experience in private practice, seeks position with a corporation, institution or law firm, preferably in North Carolina or other areas on the East Coast, but will consider other locations as well. Private practice has focused on trademark and copyright prosecution, clearance and maintenance. Copyright Office experience includes educational outreach and an intimate familiarity with electronic processing of copyright registration applications. Qualified to testify as an expert witness on copyright registration matters. Responsibilities have covered all phases of trademark & copyright prosecution with some related transactional work. Send inquiries to John L. Welch (jwelch at lalaw.com) to arrange for an introduction.

Opposer Fails to Serve Proper and Timely Pre-Trial Disclosures, TTAB Strikes Testimony

Tip from the TTABlog: Don't mess with the Board's disclosure rules. Opposer Cantine Riondo failed to comply with the pre-trial disclosure requirements of Rule 2.121(e), and so the Board granted Applicant Sood's motion under Rule 2.123(e)(3) to strike the testimony of Opposer's only witness. The Board then dismissed the opposition because Opposer failed to get any evidence into the record -- even its own registration. And you think you had a bad day? Cantine Riondo S.p.A. v. Renu Sood, Opposition No. 91194042 (August 24, 2011) [not precedential]. 

 

 

Opposer's pre-trial disclosures were due on January 31, 2011. On the first day of its testimony period (February 16, 2011) Opposer served a letter "bearing the line 'Re: Supplemental Initial And Pretrial Disclosures,' in which it identified three individuals and their locations," including Mr. Charles Massie, the one person who subsequently testified. The disclosure include a list of documents, but not the required summary of the subjects on which each witness would testify. Actually, the disclosure was not "supplemental" at all, because Opposer had never served initial disclosures. Opposer also refused to send Applicant copies of its production documents, but instead insisted that Applicant travel across the country to see them. [I think it's fair to say that Opposer was not wearing the white hat in this matter - ed.]. Applicant Sood argued that it was severely prejudiced by the lack of timely disclosure "due to both lack of notice regarding the subjects on which Mr. Massie would testify and opposer's introduction of documents that it had not copied and mailed to applicant's counsel during discovery." Opposer pointed to certain interrogatory answers that had referred to Mr. Massie, but the Board was not impressed:

Opposer’s failure to serve any initial disclosures during discovery, failure to serve timely pretrial disclosures, and failure to identify specific subjects on which Mr. Massie was expected to testify is clearly in violation of Trademark Rule 2.121(e) and subjected  applicant to unfair surprise. Although applicant never moved to compel opposer’s initial disclosures, which would have been the preferred practice, opposer, who determined that Mr. Massie’s testimony was important to its case, did not identify him as such at a time when applicant could have sought discovery from him. Moreover, as noted above, the mere mention of Mr. Massie in two discovery responses does not absolve opposer from its obligations under Trademark Rule 2.121(e).

And so the Board struck Mr. Massie's testimony, and Opposer's case collapsed like a cheap deck chair in a hurricane.  

TTABlog comment: I'm surprised this ruling wasn't deemed "precedential." Maybe it will be. 

 Text Copyright John L. Welch.

TTAB Sustains MOZY v. MOZIE Section 2(d) Opposition But Nixes Fraud Claim

The Board sustained this Section 2(d) opposition to registration of the mark MOZIE for, inter alia, "online digital photo management and online photo sharing," in light of the common law mark MOZY and the registered marks MOZYPRO, MOZYHOME, and MOZYENTERPRISE for, inter alia, electronic data storage services for photos and videos. But Opposer's fraud claim, based on Applicant's false statements regarding use of her mark and her submission of a mocked-up specimen, was rejected for lack of proof of deceptive intent. Decho Corporation v. Brigitte Mueller, Opposition No. 91183001 (August 12, 2011) [not precedential].


In rather routine fashion, the Board found the marks to be similar and the services to be "very similar" and closely related. However, two issues are worth particular attention.

Actual Confusion?: Opposer Decho submitted data from Google Analytics showing that in some 1500 instances, "prospective users of opposer's MOZY branded services mistakenly have typed 'mozie' while searching for opposer's services on the Internet." According to Opposer, "it is likely that these users heard about MOZY by word of mouth and then typed in 'mozie' as their search query."

The Board agreed with Applicant Mueller, however, that "[t]here simply is "no way of knowing the reasons why these mistypings occurred, that is, whether by confusion, a distraction or the user simply being a poor typist."

Mueller, in turn, pointed to the lack of any instance of actual confusion during the five years of contemporaneous use of the involved marks, but the Board was unimpressed because of the lack of evidence regarding the extent of use of the involved marks, "and thus, whether there have been meaningful opportunities for instances of actual confusion to have occurred in the marketplace."

Cross-Estoppel?: Decho pointed to the fact that Applicant Mueller had earlier filed an opposition against the MOZY mark, claiming likelihood of confusion with MOZIE. But, "[w]hat opposer conveniently overlooks ... is its own action in the prior proceeding," where it denied likely confusion. The Board "considered the parties' prior statements," but based its decision on the other evidence of record, citing several CCPA precedents for the proposition that a prior statement regarding the issue of likelihood of confusion is "illuminative of shade and tone in the total picture confronting the decision maker," but it does not "relieve the decision maker of the burden of reaching his own ultimate conclusion on the entire record."


Fraud: Opposer claimed that Applicant Mueller (without an attorney) repeatedly made false statements regarding her use of the MOXIE mark. She swore to dates of first use, but the services were still in development and not yet available. Also, her specimen of use was purportedly a "mock-up of the home page still in development." Moreover, she has "never provided on-line social networking services, as indicated in the recitation of services."

The Board, however, ruled that Decho had not proven fraud: "Opposer has not introduced any evidence of applicant's 'deceptive intent' to knowingly deceive the Office."

In sum, the proofs regarding the first use dates, as well as with respect to the other instances relied upon by opposer, fall short of proving “to the hilt” an intention by applicant to deceive the USPTO. Accordingly, the fraud claim is dismissed.

And so the Board sustained the opposition, but only on the Section 2(d) ground.

Text Copyright John L. Welch 2011.

Mark Donahey Reports on August 19th TPAC meeting

Mark Donahey provides a detailed report (here) on the August 19, 2011 meeting of the Trademark Public Advisory Committee (TPAC). In the TTAB arena, Judge Rogers discussed new personnel (two new judges), TTAB filings, pendency and backlog data, the decline in precedential decisions this year, ACR, TBMP revisions, comments received regarding Board participation in settlement negotiations, and a November outreach to discuss improvements in processing time.

Test Your TTAB Judge-Ability on These Three Section 2(d) Appeals

Let's see if you have what it takes to be the next TTAB judge. Take an educated guess, based on the involved marks and goods, as to the outcomes of these three appeals from Section 2(d) refusals to register. [Answers in comments].


In re Clayton Corporation, Serial No. 77462009 (August 9, 2011) [not precedential]. [Refusal of the mark HOMESEAL & Design (shown below) for "sealants, adhesives, expansion joint fillers and insulation materials in the nature of a spray-applied curable foam for building, construction, repair and maintenance uses" [HOMESEAL disclaimed], in view of the registered mark HOMESEAL in standard character form, for "asphalt, modified asphalt and rubberized asphalt based peel and stick membranes for use on roofing"].


In re Elite Lighting, Serial No. 77799919 (August 10, 2011) [not precedential]. [Refusal to register EQUINOX ARCHITECTURAL PERFORMANCE LIGHTING for "recessed electrical lighting fixtures" [ARCHITECTURAL PERFORMANCE LIGHTING disclaimed], in light of the registered mark EQUINOX for "dimming controls for electric lighting fixtures utilized in commercial and industrial environments"].



In re Tropical Seas, Inc., Serial No. 77830997 (August 12, 2011) [not precedential]. [Refusal to register REEF SAFE for "sun care lotions," in view of the registered marks REEF for "sun block preparations and sun screen preparations" and REEF OIL & Design for "suntan lotion" [OIL disclaimed]].


Text Copyright John L. Welch 2011.

Precedential No. 20: Madrid Opposer Limited to Single Ground Designated in ESTTA Form

A few months ago, the Board issued a decision that limited the goods opposed in a § 66(a) application to those identified on the ESTTA electronic form, despite the fact that additional goods were listed in an attached pleading. Hunt Control Sys. Inc. v. Koninklijke Philips Elec. N.V., 98 USPQ2d 1558 (TTAB 2011). [TTABlogged here]. In this case, the Board applied the same reasoning to limit the grounds for opposition to the single ground designated on the ESTTA form, despite the inclusion of additional grounds on the attached pleading. And so Opposer CSC Holdings was allowed to pursue only its electronically-designated Section 2(d) claim, and not its additional claims of fraud and lack of bona fide intent. CSC Holdings, LLC v. SAS Optimhome, 99 USPQ2d 1959 (TTAB 2011) [precedential].


An opposition to a "Madrid application" must be filed via ESTTA, and the notice of opposition may not be amended to add new grounds. See Trademark Rules 2.101(b)(2) and 2.107(b). These rules facilitate the prompt notification to WIPO that an opposition has been filed. ESTTA generates an opposition form that is automatically forwarded to WIPO.

In filing an opposition via ESTTA, the Opposer must complete the ESTTA electronic form and must attach a "pleading, i.e. a short and plain statement showing that the filer is entitled to relief." See TBMP § 110.09(c)(1) (3d ed. 2011).

The Board pointed out that, in the case of an opposition to a Madrid Protocol application (i.e., a Section 66(a) request for extension of protection), the electronic form plays an "additional, vital role." When such an opposition is instituted:

[T]he USPTO must so notify the International Bureau (“IB”) of the World Intellectual Property Organization, informing it of certain information required under U.S. law implementing the Madrid Protocol. This notice must be sent within strict time limits, and any USPTO failure to fully and timely notify the IB may result in the opposition being limited by the information sent or dismissed in its entirety.

The ESTTA sends to WIPO only the information that is entered on the ESTTA electronic form. The system is fully automated, and "Board personnel do not review or edit the information provided on the electronic form to ensure that it is complete."

Here, Opposer designated a claim of priority and likelihood of confusion on the ESTTA form. It set forth the two additional grounds in its attached pleading. Therefore, the Board limited this opposition to the Section 2(d) claim.

TTABlog comment: How do you say "electronic form over substance" in Spanish?

Text Copyright John L. Welch 2011.

TTAB Breaking News: Linda A. Kuczma Named TTAB Judge

Linda A. Kuczma, a practicing attorney in Banner & Witcoff's Chicago office, is the latest addition to the roster of Administrative Trademark Judges at the TTAB. She will be the 19th currently-serving TTAB judge. Ms Kuczma received her law degree from Loyola University Chicago School of Law, and her undergraduate degree in biology from St. Mary's University. She is a registered patent attorney. [I suspect that she is the first registered patent attorney to serve as a TTAB judge].

8th Circuit Affirms Jury's Finding of Fraud on The PTO in Fair Isaac "300-850" Case

The U.S. Court of Appeals for the Eighth Circuit affirmed a district court judgment that Plaintiff/Appellant Fair Isaac Corporation committed fraud on the USPTO when it obtained its registration for the alleged mark 300-850 for "credit scoring ,credit and risk management." The appellate court refused to overturn the jury's finding that Fair Isaac, during prosecution of the trademark application, had intentionally made false and material statements that were relied upon by the PTO in issuing the registration. Fair Isaac Corp. v. Experian Information Services, Inc., Appeal No. 10-2281 (8th Cir. Aug. 17, 2011).


The court first affirmed the lower court's grant of summary judgment on the issue of mere descriptiveness of the 300-850 mark: "[T]here is no genuine issue of fact that consumers in this market immediately understand '300-850' to describe the qualities and characteristics of FICO's credit score - that the score will be within the range of 300-850."

As to fraud, the court applied the Bose fraud standard in reviewing the evidence and the jury's findings. It focused on two statements made by FICO, one by an employee and one by its outside counsel, in response to the PTO's initial refusal to register the mark on descriptiveness grounds. FICO stated that it was the only entity using 300-850 as a "unique identifier;" the appellate court concluded that a reasonable jury could have determined that those statements were false because FICO was not using the term as a unique identifier but only descriptively.

As to FICO's intent, the court observed that FICO's employee was aware that FICO and others "were using the same credit-score range, for the same purpose," and that she knew that FICO was not using 300-850 as a trademark. The defendants had pointed to her "artful" use of the phrase "unique identifier." Again, a reasonable jury counld have inferred an intent to deceive the PTO.

Finally, as to materiality and reliance, the court noted that the registration was not issued until after the false statements were made, and so a reasonable jury could determine that the PTO relied on the misrepresentation in deciding whether to issue the registration.

Text Copyright John L. Welch.

Another TTABlog Follower Found!

We've found another TTABlog follower, bringing the total to three. This one's in California: Mr. Jonah Smigelski. He joins Ella Harris and Max Zilinek. I'm just hoping that, when they learn to read, they don't unsubscribe.

TTABlog Road Trip: Ohio Double-Header at AOAIOIP in Cleveland and Cincinnati

The TTABlogger will hit the road next month, heading to the 21st All Ohio Annual Institute on Intellectual Property (also known as AOAIOIP), first in Cleveland on September 20th, then in Cincinnati on September 21st. My topic? Take a guess. Lots of CLE credit. Brochure here.

WYHA? TTAB Affirms 2(d) Refusal of "df & Design" Over "DF," Both for Clothing

The Board didn't flinch in affirming a Section 2(d) refusal of the mark DF & Design (shown below), for various clothing items, finding it likely to cause confusion with the registered mark DF for overlapping clothing items. Would You Have Appealed? In re de Ferran Motor Sports Holdings, LLC, Serial No. 77702401 (July 27, 2011) [not precedential].


Both the application and the cited registration included "shorts," and the "tops" in the registration encompass the "shirts" and "sweaters" in the application; so the Board found the goods to be identical-in-part. The Board therefore presumed, in the absence of any express limitations, that the goods travel in the same channels of trade to the same classes of consumers. These factors weighed "heavily" in favor of a finding of likely confusion.

Of course, the more similar the goods, the lesser the degree of similarity between the marks needed to support a finding of likely confusion.

The literal portion of Applicant's mark, the letter combination "df," is identical in sight and sound to the registered mark. Although Registrant actually uses its mark in a "bright red color," with "wings" and "horns," that is all irrelevant, since the registered mark is in standard character format.

See Citigroup Inc. v. Capital City Bank Group Inc., 98 USPQ2d 1253, 1259 (Fed. Cir. 2011) ("If the registrant . . . obtains a standard character mark without claim to ‘any particular font style, size or color,’ the registrant is entitled to depictions of the standard character mark regardless of font, style, size, or color, not merely ‘reasonable manners’ of depicting its standard character mark.").

Registrant's specimen of use
The Board found nothing in the record to indicate that the "DF" in the cited registration would make a different commercial impression than the "df" in the applied-for mark.

Applicant de Ferran Motor Sports argued that the registered mark is weak, pointing to eight third-party registrations for marks that include "DF" for similar goods. However, Examining Attorney Renee Servance properly objected to these registrations as untimely evidence, since they were first submitted with Applicant's appeal brief. In any case, the Board noted, even weak marks are entitled to protection against registration of confusingly similar marks for overlapping goods.

The Board concluded that confusion is likely, and it affirmed the refusal.

TTABlog comment: Suppose there were eight third-party registration for the letters DF in various design forms, all for clothing. Surely then Applicant would have succeeded in its appeal, right? My search of the PTO database uncovered only two other supposed "DF" design marks in class 25, but the letters "DF" were very difficult to discern in either logo.

Text Copyright John L. Welch 2011.

Experienced Trademark and IP Attorney with Computer, Internet, and Social Media Expertise Seeks New Position

Intellectual Property attorney with 10 years of in-house/law firm experience and expertise in computer, Internet, and social media issues, seeks position with a corporation or law firm, preferably on the West Coast, but will consider any area of the country. Practice has focused on trademarks, including litigation, trademark prosecution, clearance and maintenance, and management of large global trademark portfolios. Responsibilities have covered all phases of IP prosecution and protection (including patent, trade secret and copyright matters) and related transactional work. Send inquiries to John L. Welch (jwelch @ lalaw.com) to arrange for an introduction.

Rejecting Naked Consent, TTAB Affirms 2(d) Refusal of ONE-STEP for Glucose Monitoring Gear

Sometimes the Board will give probative weight to a naked consent [See, for example, this TTABlog posting], but not this time. The Board affirmed 2(d) refusals of the marks ONE STEP and ONE-STEP for glucose monitoring systems and related devices, finding them likely to cause confusion with the registered mark ONE-STEP in standard character and design form, and with the design mark shown below [SAFETY LANCET disclaimed] for blood sampling prickers. In re Intuity Medical, Inc., Serial Nos. 77416484 and 77416487 (July 26, 2011) [not precedential].


The Board found the marks to be "virtually identical" and, in light of third-party registration and website evidence provided by Examining Attorney Khanh M. Le, the goods to be related. "[T]he term 'blood sampling prickers' is broad enough to encompass blood drawing devices used in connection with monitoring blood glucose levels."

Applicant argued that purchasers of the goods would exercise a high degree of care, but the Board concluded that the similarity of the marks and the relatedness of the goods outweigh this higher care in the 2(d) analysis.


Finally, Applicant pointed to a letter of consent signed by the owner of the three cited registrations. The letter, in its entirety, reads as follows:

Pursuant to the Settlement and Co-Existence Agreement dated as of the date hereof by and among [applicant] and [registrant], [registrant] hereby grants its consent for [applicant] to use and obtain registration in the United States and internationally of its ONE STEP and ONE-STEP marks in connection with the following goods: blood glucose monitoring systems including the devices, and parts and accessories thereof in Class 10. (Emphasis in the original).

The Examining Attorney found the letter insufficient because "it neither (1) sets forth reasons why the parties believe there is no likelihood of confusion, nor (2) describes the arrangements undertaken by the parties to avoid confusing the public." Applicant explained that the parties entered into a detailed settlement agreement but that the terms were confidential, and Applicant refused to disclose them.

Applicant argued that the letter "should be given great weight" and that the Board "must honor the parties' position." The Board disagreed.

A “naked consent,” as presented by applicant in this case, carries little weight as compared to a more detailed agreement. *** [T]he consent agreement or letter of consent should reflect the relevant du Pont likelihood of confusion factors. (citation omitted) In this case, the letter of consent is conspicuously silent as to the underlying facts which led registrant to the conclusion that there is no likelihood of confusion.

The Board found it difficult to imagine "how the facts supporting the purported differences in the marks, the goods, their channels of trade, and the classes of consumers, as well as the degree of consumer care constitute confidential information." Since there was no credible explanation for the omission of this type of information from the consent letter, that Board concluded that it has "little, if any, probative value."

Balancing the relevant duPont factors, the Board affirmed the refusal.

Text Copyright John L. Welch 2011.

Precedential No. 19: "JUST JESU IT" Likely to Cause Confusion With and Dilute Nike's "JUST DO IT," Says TTAB

The TTAB sustained Nike's opposition to registration of the mark JUST JESU IT for various items of athletic apparel, finding the mark likely to cause confusion with and likely to dilute (by blurring) the famous and registered mark JUST DO IT for overlapping clothing items. The Board jettisoned its former "substantial similarity" or "near identity" test for dilution, instead holding that the marks need only be "sufficiently similar in their overall commercial impressions" that the requisite "association" exists for a finding of blurring. Nike, Inc. v. Peter Maher and Patricia Hoyt Maher, 100 USPQ2d 1018 (TTAB 2011) [precedential].


Likelihood of confusion: Applicants, appearing pro se, admitted that the JUST DO IT mark is famous for Section 2(d) purposes. Moreover, as discussed below, the Board found that Nike met the even higher fame standard that applies for dilution. Of course, this du Pont factor weighed heavily in Nike's favor.

As a famous mark, JUST DO IT is entitled to a "wide latitude of protection, and the degree of similarity between the marks necessary to support a conclusion of likely confusion declines." Moreover, "[t]he degree of similarity required is also lessened in this case because the goods are identical in part." [How low can it go? - ed.]

The Board found the marks to be similar in overall appearance and pronunciation. But to meaning, not so much:

[O]pposer has shown that its mark has been viewed as a “battle cry.” The meaning of applicants’ mark is ambiguous, not just as a three-term phrase with a middle term that evokes “Jesus” (but appears not to be itself an English word), but even when that middle term “Jesu” is combined with “it” to form the word “Jesuit.” Despite this ambiguity in the meaning of applicants’ mark, the overall commercial impression of the parties’ marks is similar because given the fame of opposer’s mark, the public is likely to view applicants’ mark as similarly being a call to action, even though it is unclear what action is being urged.

The Board concluded that, despite the "potential" difference in meaning, "given the fame of opposer’s mark and the similarity of appearance, pronunciation and overall commercial impressions," the marks are similar for likelihood of confusion purposes.

As to Applicants' argument that their mark is a humorous parody [LOL - ed.], the Board was not amused:

W]here, as here, a defendant appropriates a trademarked symbol such as a word or picture, not to parody the product or company symbolized by the trademark, but only as a prominent means to promote, satirize or poke fun at religion or religious themes, this is not “parody” of a trademark. [Trademarked? What does that mean? - ed.]

Weighing the relevant du Pont factors, the Board found confusion likely and it sustained Nike's 2(d) claim.

Likelihood of dilution: The Board usually stops after sustaining a 2(d) claim and declines to consider the plaintiff's dilution claim, but in a departure from its usual practice, the Board took up Nike's Section 43(c) claim. It looked to three necessary elements: "(1) whether the opposer’s mark is famous; (2) whether the opposer’s mark became famous prior to the date of the application to register the applicant’s mark; and (3) whether the applicant’s mark is likely to blur the distinctiveness of the opposer’s famous mark.”

Famous? As to fame, the Board found that Applicants had admitted that JUST DO IT is famous, in light of these discovery responses: Applicants answered opposer’s interrogatory No. 13 regarding applicants’ awareness of the mark JUST DO IT with the response: “Who isn’t aware of Opposer’s Mark? At least in the free world.” Applicants also answered opposer’s request for production of documents regarding when applicants first learned of opposer’s mark with the response: “No such documents. Applicants don’t live under a rock.”

In any event, Nike proved its mark to be famous for dilution purposes. Third-party references and media discussion about JUST DO IT "have been pervasive, reflecting the extreme popularity of the mark and the message of compelled action that it represents." The evidence showed that JUST DO IT has "made its way into the popular culture at all levels." Several independent studies identified this slogan as among the most well-known in the country. Its popularity "resonates over a broad spectrum of the public."

Nike has spent more than $6 billion in advertising the JUST DO IT mark during its 20-year lifespan. Well known sports figures like Michael Jordan, Bo Jackson, and LeBron James, have appeared in its advertising. The mark appeared on 900 million shoeboxes in the years 2005-2010, and Nike has sold more than 27 million units of products that bear the mark JUST DO IT or include the mark JDI in the style name.

Nike owns three registration for the mark, each of which was issued without resort to Section 2(f) and each of which is incontestable.

Based on this evidence, the Board found JUST DO IT to be famous for dilution purposes.

Famous when? Applicants' earliest available first-use date was August 5, 2008, their filing date. Nike established that its mark, used continuously since 1989, became famous well before that date.

Likely blurring? The Board next looked to the six factors set forth in Section 43(c)(2)(B). It found that Nike's "continued long use and promotion of the brand have created an extremely well-recognized mark."

As to exclusivity, Nike vigorously enforces its rights in the mark and denies all requests for permission to use the mark, even in connection with religious activities. Applicant proffered four registrations for "JUST ... IT" marks for clothing [JUST JEW IT, JUST BREW IT, JUST BE IT, and JUST GRAB IT] but the Board pooh-poohed them, since there was no evidence whether the marks are actually in use, or to what extent. Moreover, the existence of those registrations did not persuade the Board that "the phrase 'just ... it' would be considered a commonly registered element such that a mark following this pattern but with a different middle term would thereby be rendered, as a whole, distinguishable from opposer's famous mark."

As mentioned, Nike's mark was registered on the Principal Register without a 2(f) claim, and no other uses of the phrase by third parties were proven. Nike established that its mark is "so distinctive that the public would associate the term with the owner of the famous mark even when it encounters the term apart from the owner’s goods or services."

Turning to the degree of similarity between the marks, prior to the Trademark Dilution Revision Act of 2006, the TTAB generally held that the diluting mark and the diluted mark had to be "identical or very or substantially similar." However, the TDRA made substantial changes to the law of dilution, creating a list of factors to determine blurring. Congress did not include the terms "substantial" similarity, "identity," or "near identity," but referred only to the "similarity" between the marks. The 9th Circuit's recent decision in Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 97 USPQ2d 1947, 1958 (9th Cir. 2011), followed that reasoning, and concluded that the similarity between the two marks at issue need not be "substantial" in order for the dilution-by-blurring claim to succeed.

The Board then turned to its own consideration of the two marks involved here:

While we are not concerned in this context with whether a likelihood of confusion exists, we still consider the marks, not on the basis of a side-by-side comparison, but rather in terms of whether the marks are sufficiently similar in their overall commercial impressions that the required association exists. Also, in determining the similarity or dissimilarity of the marks, "we will use the same test as for determining the similarity or dissimilarity of the marks in the likelihood of confusion analysis, that is, the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression." (quoting Coach Services, Inc. v. Triumph Learning LLC, 96 USPQ2d 1600, 1613 (TTAB 2010) [precedential].)

The Board concluded that the marks are sufficiently similar here to "trigger consumers to conjure up" Nike's famous mark." "Upon encountering applicants' mark, consumers will be immediately reminded of opposer's JUST DO IT mark and associate applicant's mark with opposer's mark."

There was no proof of an "actual association" between the parties' marks, since Applicants have yet to use their mark. Nor was there direct evidence that Applicants "intended to create an association with opposer's famous mark."

Finally, under the "all relevant factors" umbrella, the Board noted that although Applicants have a "very small company," an exception in Applicant's case would impair the ability of the JUST DO IT mark to uniquely point to Nike as a single source. This "small company" defense "does not assist applicants."

Applicant's parody defense failed again, since they are not making any joke as to Nike's mark, but are merely trying to take a "free ride" on their mark's association with Nike's famous mark, for financial gain. "This is not protectable parody."

Finally, the TDRA did not preclude application of the dilution doctrine when the goods are related or competing. Indeed, some courts have said that the closer the products, the greater the likelihood of both confusion and dilution.

Balancing the relevant factors, the Board concluded that "an association exists between the parties' marks that would impair the distinctiveness of opposer's famous mark." Therefore the Board sustained Nike's Section 43(c) claim.

TTABlog comment: This is only the third dilution claim sustained by the TTAB since 1999, when dilution became available as a ground for opposition and cancellation. [Can you name the other two cases?]

When the goods are overlapping and the mark is famous for Section 2(d) purposes, isn't the dilution claim superfluous? Isn't the Board just piling on here? I think the Board just wanted a chance to address the issue of the "similarity" of the marks required for dilution purposes, and consequently the Applicants here had to endure an extra pounding.

Text Copyright John L. Welch 2011.

USPTO Posts Comments on Notice of Inquiry re Settlement Discussions

"In the April 22, 2011 issue of the Federal Register (76 Fed. Reg. 22678) the USPTO published a Notice of Inquiry titled “Trademark Trial and Appeal Board Participation in Settlement Discussions” [TTABlogged here] which sought comments from stakeholders on various questions set forth in the notice. The Board received comments from four individuals, three law firms and four intellectual property organizations." Here is the link to PTO webpage. By my estimate one individual and one law firm favor mandatory settlement discussions with Board participation, while the rest do not. I found the comments of former TTAB Judge Beth A. Chapman to be particularly interesting.

Test Your TTAB Judge-Ability: Are AUTO BY RENT and AUTO-BY-TEL Confusingly Similar for Auto-Related Services

Applicant sought to register the mark AUTO BY RENT & Design for "automobile dealerships," but Opposer claimed likelihood of confusion with its mark AUTO-BY-TEL for various vehicle-related services, including "referrals in the field of automobile and truck sales and leasing." How do you think this came out? Autobytel Inc. v. Auto By Rent, Inc., Opposition No. 91180067 (July 28, 2011) [not precedential].


A divided Board panel sustained the opposition. The panel majority found the services to be complementary and related, and the marks to be more similar than dissimilar. It noted that the channels of trade in the involved application and registration are not restricted, and found that the services "are likely to be marketed through the same channels of trade to all manner of consumers."

The Board denied Opposer's dilution claim because of a failure to provide sufficient proof of fame.

Judge Bucher dissented on the 2(d) issue, maintaining that the actual services offered by the parties travel in different channels of trade: Opposer's services are directed to new car dealerships, while Applicant directs its "rent-to-own used cars to marginal customers in rural Missouri." [But as the panel majority points out in footnote 9, there are no such restrictions in the involved application or registration. ed.]

Judge Bucher further asserted that the marks are different in appearance, "jarringly different aurally," and create "very different connotations." He would find these differences alone to be dispositive of the 2(d) issue.

TTABlog comment: I agree with the majority on the first point (channels of trade) and with Judge Bucher on the second, except that I would couple the differences in marks with the differences in the services to find confusion unlikely.

Text Copyright John L. Welch 2011.

WYHA? "YELLOW EMERALD" Merely Descriptive of Golden Beryl Gemstones, Says TTAB

The Board affirmed a Section 2(e)(1) refusal to register the mark YELLOW EMERALD, finding it merely descriptive of "golden beryl gemstones." Examining Attorney Toby E. Bulloff relied on dictionary definitions, Internet website evidence, and Applicant's own advertising in arguing that "the purchasing public has come to know golden-colored beryl gemstones as 'yellow emeralds.'" The Board agreed. Would You Have Appealed? In re American Diamond Importers of St. Clair, Inc., Serial No. 77745553 (July 28, 2011) [not precedential].

Applicant's advertisement
Applicant contended that the term "emerald" is not immediately descriptive of golden beryl gemstones, but only suggestive of many characteristics, such "high quality," "rare," and "green." It submitted Internet excerpts and other evidence that refers to various types of beryl, including emeralds, golden beryl, and yellow beryl, but not to "yellow emeralds."

The Board found that "the beryl family includes emeralds, golden beryl, aquamarine and morganite. The different beryl gemstones have the same qualities and characteristics but with different trace elements providing the color."

Because emeralds are perceived as a well-known and valuable beryl gemstone, vendors try to associate yellow beryl gemstones with the valuable and well-known emerald by calling golden beryl gemstones yellow emeralds.

Moreover, Applicant's advertisement (shown above) uses the term "Yellow Emeralds" to describe its gemstones, and consumers will perceive "Yellow Emeralds" to be the name of the goods. Applicant's yellowemeralds.com website identifies the "Yellow Emerald" as a member of the beryl family, and uses the term generically:

What are Yellow Emeralds?

Yellow Emeralds are in the beryl family of minerals typically grown as hexagonal crystals with a Mohs scale of hardness of 7.5-8.

Despite Applicant's argument that, technically, golden beryl is not an emerald, "the evidence demonstrates that there are people and publications in the industry that use the term 'yellow emerald' for such gems, including applicant." In short, consumers understand the term "yellow emeralds" to refer to golden beryl. "Because of this perception, the term has lost whatever incongruity it may have had."

And so the Board affirmed the refusal.


TTABlog comment: On a personal note, I grew up on Emerald Avenue on the South Side of Chicago, and I had an aunt named Beryl.

In any event, was it worth a shot to appeal this refusal? Should the Examining Attorney have refused registration on the alternate ground of deceptive misdescriptiveness, in an attempt to put Applicant in a box?

Text Copyright John L. Welch 2011.

Breaking TTAB News! PTO Associate Solicitor Thomas Shaw Named Administrative Trademark Judge

Reliable sources confirm that Thomas Shaw has been appointed as an Administrative Trademark Judge. [By my count, he is the 18th TTAB judge]. Mr. Shaw most recently served as Associate Solicitor at the USPTO (2007-August 2011). He previously served as a Managing Attorney (1997-2007), Senior Attorney (1994-1997), and Examining Attorney (1989-1994) at the PTO. He is a graduate of The George Washington University (B.A., Political Science and History, 1983) and the University of Miami School of Law (J.D. 1988).

CAFC Hears Oral Argument in Appeal from TTAB Dismissal of COACH Opposition

On August 5, 2011, the U.S. Court of Appeals for the Federal Circuit heard oral argument [mp3 here] in the appeal from the TTAB's decision [TTABlogged here] dismissing Coach's opposition to registration of the mark COACH for educational test preparation materials. Coach had claimed likely confusion with, and likely dilution of, Opposer's COACH mark for leather goods and various other consumer items, and had further claimed that Applicant Triumph Learning's mark is merely descriptive of its services. Coach Services, Inc. v. Triumph Learning LLC, Appeal No. 2011-1129.


The oral arguments focused to a large extent on the dilution issue, and included a discussion of the standard of fame under Section 2(d) versus the fame standard for dilution under Section 43(c). Coach argued that once the Board found fame for Section 2(d) purposes, that finding of fame should carry over to the dilution analysis. Triumph Learning contended that "fame" in the 2(d) context is merely a colloquial way of saying that the mark is very strong along a sliding scale, but that the standard of fame for dilution purposes requires a higher, yes-or-no, test.

Text Copyright John L. Welch 2011.

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

Here we go again, all you TTAB Judge-wannabees out there. The Board affirmed two of the three Section 2(d) refusals summarized below; it reversed one. Let's see if you come up with the same results based on a quick look at the marks and goods/services involved. [Answer in comments].

In re Flowerhorn, Serial No. 77847440 (July 26, 2011) [not precedential]. [Section 2(d) refusal of the mark HOT N JUICY CRAWFISH and Design (shown below left) for "bar services; restaurant services featuring seafood, namely, Cajun style crawfish, shrimp, crab, and oysters" [CRAWFISH disclaimed], in view of the registered mark HOT N JUICY and Design (shown below right) for "restaurant and carry out restaurant services"].


In re Bookriff Media Inc., Serial No. 77537045 (July 28, 2011) [not precedential]. [Section 2(d) refusal of BOOKRIFF for electronic books in the field of self book publishing, for book publishing, and for providing a website allowing users to build books online, in light of the registered mark RIF for "newsletters dealing with reading" and CLUB RIF for publications and educational services concerning literacy programs for children].


In re Intrafitt, Inc., Serial No. 77644949 (July 22, 2011) [not precedential]. [Section 2(d) refusal to register INTRAFITT INDIVIDUALIZED NUTRITION AND EXERCISE PROGRAMS for "weight reduction diet planning and supervision and physical fitness consultation" [INDIVIDUALIZED NUTRITION AND EXERCISE PROGRAMS disclaimed], in view of the registered mark INTERFIT for "health spa services for corporate employees"].



Text Copyright John L. Welch 2011.

TTAB Enters Summary Judgment Under Section 2(e)(5), Cancelling Registration for Baseball Training Glove Design Due to Functionality

The Board granted Petitioner Rawlings' motion for summary judgment in this cancellation proceeding directed to a trademark registration for the product configuration shown below for "baseball and softball training apparatus, namely a glove used for catching practice." The Board found the design to be, as a whole, functional under Section 2(e)(5). A (now-expired) utility patent owned by Registrant Birmingham, which patent claimed the triangular shape for the device, proved to be fatal to Birmingham's case. Rawlings Sporting Goods Company, Inc. v. Peter C. Birmingham, Cancellation No. 92051353 (July 26, 2011) [not precedential].


The purpose of Birmingham's device is to assist in teaching a baseball player proper fielding technique: catching the ball "with two hands." [Not such a good idea for catchers, however. They use the one-handed technique popularized by Johnny Bench].

Rawlings pointed to a now-expired utility patent that Birmingham obtained, disclosing and claiming "the functional advantage of the triangular shape of the training glove." Birmingham never told the Trademark Examining Attorney of the existence of the patent.

The claims of the patent specifically include "a triangular shaped ... pad having a planar front ..., having hand attachment means on the back surface thereof for encircling the thumb and first three fingers of the glove hand which will align the middle finder along an axis of the triangle with the apex of the pad being positioned over the wrist." Of course, under TrafFix, the existence of a prior utility patent is "strong evidence that the features claimed therein are functional."

Birmingham contended that the design in the trademark registration is only one of may possible shapes for the training device. He pointed to the standard, boilerplate language found in his and, in one form or another, in virtually every utility patent: "the invention is not limit to [the preferred] embodiment and many modifications and variation" are possible "without departing from the scope and spirit of this invention."


Not so fast, said the Board:

[N]otwithstanding respondent's position that the shape was somehow "disclaimed" in the patent, the shape is not considered "disclaimed" in considering the features disclosed, claimed and described and claimed in the patent to determine whether the shape is functional for purposes of trademark registrability. The triangular configuration, described in the patent as the preferred embodiment, is now the subject of respondent's Registration No. 3019645.

The expired utility patent demonstrates the utilitarian advantages of the triangular design. The shape of the pad as disclosed and claimed in the patent is not arbitrary or ornamental, or incidental to the design and function of the training glove. Instead, it performs an essential function for the invention/product. Thus, the patent establishes that no genuine dispute of material fact exists and that the design, as a whole, is the functional configuration of the goods.

And so the Board granted the petition for cancellation.

TTABlog comment: Dare I say that the TTAB hit a home run with this one? This is not one of those cases where the patent claim includes broad, functional language that could be met by a product having various shapes. Here the claim dictates the shape. Ballgame over!

Text Copyright John L. Welch 2011.

On Rehearing, 7th Circuit Rules that Wisconsin Waived Sovereign Immunity by Seeking 1071(b) Review of TTAB Decision

Reversing its prior ruling [TTABlogged here], the U.S. Court of Appeals for the Seventh Circuit held that Defendant Phoenix Software's compulsory counterclaims for trademark infringement are not barred by sovereign immunity in a civil action brought by the University of Wisconsin seeking review of the TTAB's cancellation of a registration owned by Wisconsin for the mark PHOENIX for computer software. Board of Regents of the University of Wisconsin System v. Phoenix International Software, Inc., 99 USPQ2d 1571 (7th Cir. 2011).


In its 63-page opinion, the appellate court maintained its position that genuine issues of material fact precluded the entry of summary judgment on the substantive trademark issues, as it did in its original decision of December 28, 2010.

However, it reversed itself on the issue of sovereign immunity, ruling that Wisconsin had waived its sovereign immunity vis-a-vis Phoenix's compulsory counterclaims when Wisconsin brought a civil action in the federal district court, under 15 U.S.C. 1071(b), for review of the TTAB's decision.

To maximize its chances of reversing the agency’s decision, the state availed itself of the advantages of a fresh lawsuit, choosing that path over a number of others available. It would be anomalous if, after invoking federal jurisdiction, the state could declare that the federal court has no authority to consider related aspects of the case. Cf. Lapides, 535 U.S. at 619. Phoenix’s counterclaims are compulsory in nature and thus lie well within the scope of Wisconsin’s waiver of immunity. Accordingly, we reverse the district court’s grant of summary judgment, reinstate Phoenix’s federal counterclaims, and remand for further proceedings.

TTABlog comment: Apparently Wisconsin wanted a home-court advantage in its appeal from the TTAB's decision. As it turns out, not such a great idea. I can hear the strains of the "On Wisconsin" fight song fading meekly into silence.

Text Copyright John L. Welch 2011.

Divided TTAB Panel Sustains Iowa's Opposition to Eagle's Head Design Mark of Southern Mississippi

In a 54-page decision, the high points of which will be noted here, a divided Board panel sustained the University of Iowa's opposition to registration of Southern Mississippi's "eagle's head" design mark shown below left (lined for the color gold), for a variety of products falling in 12 classes, on the ground of likelihood of confusion with Iowa's registered "hawk's head" design mark shown below right (no color claim) for various goods in eight classes, and with Iowa's common law (yellow) design marks shown slightly further below. The panel majority (Judges Bucher and Kuhlke) found that the similarities between the marks outweigh the minor differences. In a brief dissent, Judge Wellington opined that, in light of the use of various "bird-head designs" by numerous sports teams, consumers are accustomed to look for distinguishing features in such marks and will notice the specific differences in the marks at issue. The University of Iowa and The Board of Regents, State of Iowa v. The University of Southern Mississippi, Opposition No. 91164745 (July 29, 2011) [not precedential].

Southern Mississippi (left). Iowa (right).

Iowa's common law marks
The Board began by ruling that Opposers' Hawkeyes marks "are at least well-known in the field of national collegiate sports and, as such, must be accorded a wider scope of protection." The Board noted that each of the universities is "best known within their respective regions of the country," but Iowa has been "afforded regular nation-wide exposure via several different sports programs and networks."

Considering the involved goods, the various collateral products of the parties are either legally identical or closely related. This factor "weighs strongly" in Opposers' favor. The Board also found that the goods are or would be marketed in the same trade channels to identical customers: for example, both teams have merchandise offered on the same websites and in brick-and-mortar stores across the country, like Wal-Mart, Target, etc.

As to the conditions of purchase, the most enthusiastic fans may be able to distinguish the marks, but other persons (like relatives or friends who are purchasing gifts) may not be "necessarily attuned to minor differences between somewhat similar sports teams' logos." And so this factor also favored Iowa.

Turning to the marks, Mississippi contended that the marks are radically different in commercial impressions. The Board, however, was not persuaded, observing that a side-by-side comparison is not the proper test under Section 2(d). One must consider the consumer who, lacking perfect recall of the details of each mark, sees the respective marks on different occasions.

The Board noted once again that, when the goods are identical, a lesser degree of similarity in the marks is necessary to support a finding of likely confusion. It concluded that the similarities between these marks outweigh the minor differences:

Both parties’ marks present the head of a bird of prey facing right, and basically oval in shape. Both contain identical colors. These images are very similar to each other in style and proportion. They both involve a bold profile image of the head of a large bird.

Applicant attempted to weaken the scope of Iowa's marks (under the sixth duPont factor) by pointing to many bird-head designs (mostly eagles or hawks) on the marketplace. The Board agreed that such birds of prey are "popular mascots for collegiate and professional sports teams." However, that does not mean that every bird-head mark is weak. "Iowa should be able to establish a reasonable zone of protection around its Hawkeye marks in spite of the existence of many other representations of bird heads."

Despite the lack of evidence regarding the sales, advertising, and exposure of these other marks, the Board nonetheless examined the marks in some detail. It found a variety of possible designs, but none were as similar to Iowa's marks as is Applicant's mark. In short, while these third-party marks may "narrow somewhat" the scope of Iowa's marks, that is not sufficient to overcome the other duPont factors.

Iowa pointed to several instances of actual confusion, but the Board noted that they did not involve "actual consumers." Nonetheless, these incidents are at least "illustrative of how and why confusion is likely."

Finally, the Board noted that Applicant Mississippi failed to exercise care in adopting its particular mark, essentially ignoring comments "about how similar its new logo was to Iowa's marks." This fact weighed against Applicant under the 13th duPont factor.

And so the panel majority found confusion likely and it sustained the opposition. Judge Wellington disagreed as to the analysis under the sixth duPont factor, as noted above, and would have dismissed the opposition.

TTABlog comment: I went to college at Illinois (hence the trademark orange-and-blue colors of this blog), so there is no way I can side with Iowa, in this case or anything else, ever.

Text Copyright John L. Welch 2011.

Test Your TTAB Judge-Ability: Must "FRESH" Be Disclaimed for Frozen Desserts?

Applicant Farr's Fresh, Inc. applied to register the mark FARR'S FRESH for "retail frozen dessert store services," but the Examining Attorney required a disclaimer of FRESH, pursuant to Section 6(a) of the Act, contending that the term is merely descriptive of the services. Applicant argued that consumers do not immediately associate FRESH with frozen desserts but rather with such non-processed food items as fruits and vegetables. How do you think this came out? In re Farr’s Fresh, Inc., Serial No. 77762425 (July 22, 2011) [not precedential].


Examining Attorney Michael A. Weiner submitted a dictionary definition of "fresh" ("Recently made, produced or harvested; not stale or spoiled"), as well as statements from Applicant's own website: e.g., "Our frozen custard tastes like your Grandma's good old-fashioned homemade ice cream - fresh."

Applicant, of course, claimed that the term FRESH was merely suggestive, and that "[t]o journey from encountering the term 'FRESH' to the concept of the service of frozen desserts, a consumer's mind must first associate the term 'FRESH' with food instead of newness of novelty, then with frozen desserts instead of non-processed foods." Moreover, noted Applicant, there are multiple definitions of FRESH. The Board, however, pointed out once again that the mark must be considered not in a vacuum, but in the context of the services at issue.

Within the context of retail store services featuring frozen desserts, prospective consumers will perceive the term “fresh” as describing a quality of the desserts items for sale. The dictionary definition of “fresh” noted above, coupled with applicant’s own website touting the “fresh” or newly made quality of its frozen desserts, directly show that prospective consumers are not required to make a mental leap to draw the conclusion that the frozen desserts sold in applicant’s retail stores are “fresh,” or recently made.

The Examining Attorney also supplied evidence of third-party usage of FRESH in the frozen dessert retail store industry. The Board concluded that FRESH in connection with retail service featuring frozen desserts "unambiguously refers to dessert items which are newly-made."

Applicant pointed to third-party registrations with no disclaimer of FRESH, but although they show inconsistent treatment of the word, none of the registrations involve retail frozen dessert services and so are of little probative value. Moreover, many of the marks consist of unitary terms or slogans wherein a disclaimer of FRESH is not required, and they are of no probative value. ["An Examining Attorney has discretion not to require a disclaimer of a descriptive term when it appears in a slogan."]

And so the Board affirmed the refusal to register.

TTABlog comment: Was Applicant's argument so Farr-fetched that this should have been a "WYHA?" case? Does the citation of those third-party registrations suffice to push this case out of the "WYHA?" category?

Text Copyright John L. Welch 2011.

TTAB Posts August 2011 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled seven (7) oral hearings for the month of August, 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.


August 2, 2011 - 11 AM: L'Oreal USA, Inc. v. Robert Victor Marcon, Opposition No. 91184456 [Opposition to registration of L'OREAL PARIS for aloe vera drinks, on the grounds of likelihood of confusion with, and likely dilution of, the marks L'OREAL and L'OREAL PARIS for cosmetics, and on the ground of lack of bona fide intent].


August 9, 2011 - 11 AM: In re Lori Goldstein , Serial Nos. 77667009 and 77666448 [Section 2(d) refusal to register the mark LOGO in standard character and stylized form, in view of the registered mark LOGO GEAR, for overlapping clothing items].


August 11, 2011 - 11 AM: In re Hartz Hotel Services, Inc., Serial No. 76692673 [Section 2(d) refusal of GRAND HOTELS NYC for hotel services in view of two registrations for the mark GRAND HOTEL for hotel, restaurant, and convention services].


August 17, 2011 - 2 PM: In re Papyrus-Recycled Greetings, Inc., Serial Nos. 77252690, 77252698, and 77252707 [Appeal from disclaimer requirement of "recycled paper" in the marks RECYCLED PAPER GREETINGS, COMIC RELEAF RECYCLED PAPER GREETINGS and design, and RECYCLED PAPER GREETINGS and design, for greeting cards].


August 23, 2011 - 10 AM: In re Modern Woodmen of America, Serial No. 77308794, 77308779, and 77308822 [Section 2(d) refusal of the mark shown below for "banking services including checking and savings account services, credit card services, and loan services, namely, consumer and mortgage loan services," in view of the registered marks WOODMEN OF THE WORLD for "underwriting of insurance;" OMAHA WOODMEN for "underwriting of insurance;" WOODMEN FINANCIAL SERVICES for "financial services, namely, broker-dealer services and insurance agency services in the field of variable life and annuity insurance policies and mutual funds;" WOODMEN MORTGAGE SERVICES for "mortgage banking services;" WOODMEN INSURANCE AGENCY for "general insurance agency;" and WOODMEN OF THE WORLD for "underwriting of life insurance"].


August 25, 2011 - 10 AM: Judith Mendez v. Dita, Inc., Oppositions Nos. 91167828 and 91170265 [Section 2(d) consolidated opposition to registration of DITA for jewelry, leather goods, and clothing, based on the alleged prior use of the identical mark and the mark DITA DE LEON for the same "categories" of goods].


August 25, 2011 - 2 PM: Ahold Licensing, S.A. v. Premium Nutritional Products, Inc., Opposition No. 91180170 [Section 2(d) opposition to NATURE'S PROMISE for "food for caged birds, pet food for small mammals, hay," in view of the identical mark registered for various food products for humans].


Text Copyright John L. Welch 2011.