Precedential No. 31: TTAB Affirms Mere Descriptiveness Refusal of ".MUSIC" for Domain-Related Services

Brushing aside several the third-party service mark registrations for top-level domain (TLD) marks, the Board affirmed a refusal to register the mark .MUSIC in each of five applications, for domain registration and hosting services, various computer-related services, and music-related goods, on the ground that the mark is merely descriptive under Section 2(e)(1). The Board's ruling was based "on the current marketing environment which is different than the marketing environment when many of the third-party registrations relied upon by applicant were issued." In re theDot Communications Network LLC, 101 USPQ2d 1062 (TTAB 2011) [precedential].


Examining Attorney Seth A. Rappaport maintained that "music is a feature of applicant's goods and services" and that the period at the beginning of the mark is "mere punctuation that does not alter the commercial impression of the mark as being something more than just the word 'Music.'" Applicant asserted that .MUSIC is arbitrary with respect to many of the identified services. Furthermore, a TLD does have a source-identifying function, "since by definition the domain names from a particular TLD emanate from only one domain registry source."

Applicant also argued that the PTO has a practice of allowing registration of top-level domains, including such ICANN-accredited TLDs as dotam, dotfm, .travel, .nu domain, and dotCoop, as well as non-accredited but proposed TLD strings. It noted that "[a]ll of these include domain registration services, and may include a much broader variety of online services.

The Board, however, observed that the situation has changed since 1989, when the first few TLDs were created. In 2000, a dozen more were announced, another one in 2005, and in 2010 the .xxx TLD was approved. Furthermore, in 2011 ICANN announced that "it would greatly increase the number of top-level domains by allowing nearly any new name in any language."

As a result, the Board noted, there are groups seeking various top-level domain names, including a group (unaffiliated with Applicant) that is seeking the name .music, which is intended for use by musicians and the music industry. The Board concluded that the public will perceive .MUSIC "as a top-level domain associated with the field of music because there has been a concerted public effort to build support for its use as a top-level domain in this field."

This finding is based on the current marketing environment which is different than the marketing environment when many of the third-party registrations relied upon by applicant were issued. When many of the third-party registrations were issued, ICANN was not considering expansion of the roster of domain name extensions. Nor does the record reveal active campaigns to obtain TLD status for the marks in those registrations as there is for the .music top-level domain. Therefore, the third-party registrations submitted by applicant for marks consisting of “dot __________” or “._________” have very limited probative value ....

Turning then to the goods and services identified in the five applications, the Board found the mark to be descriptive of "registration of domain names for identification of users on a global computer network," since "consumers would anticipate that .music identifies the registration of domain names for a music-related top-level domain." Likewise the mark is descriptive of Internet hosting services, music publishing and entertainment services, online directory services, and, finally, downloadable content.

And so the Board affirmed the Section 2(e)(1) refusal in all five applications.

TTABlog comment: Is there a broad principle to be gleaned from this decision, or is the outcome highly fact-dependent?

Text Copyright John L. Welch 2011.

Mattel Seeks Review of TTAB's "MOTOWN METAL" Decision

Mattel, Inc. has commenced a civil action (complaint here) in the U.S. District Court for Central District of California, seeking review under Section 1071(b) of the TTAB's decision in UMG Recordings, Inc. v. Mattel, Inc., 100 USPQ2d 1868 (TTAB 2011) [precedential]. [Update: case dismissed by the stipulation of the parties on October 30, 2012).


The Board sustained UMG's opposition to the mark MOTOWN METAL for toy vehicles and accessories, finding it likely to cause confusion with, and likely to dilute by blurring, the famous mark MOTOWN for musical entertainment and musical recordings. [TTABlogged here].

Mattel's complaint is just slightly more than two pages long. It seeks reversal of the Board's decision; an order "that Mattel is entitled to registration of MOTOWN METAL on the Principal Register;" and, alternatively, an order prohibiting UMG "from registering MOTOWN in Class 28 for toys, games and playthings."

This should be interesting.

Text Copyright John L. Welch 2011.

TTAB's CAVERN CLUB Ruling Heads to Federal Court

At the Trademark Blog, Marty Schwimmer reports (here) that Cavern City Tours Ltd. has filed a complaint seeking Section 1071(b) review of the Board's decision in Cavern City Tours Ltd. v. Hard Rock Cafe International, Inc., Cancellation No. 92044795 (September 29, 2011) [not precedential]


The Board dismissed Cavern City's fraud and Section 2(a) false association claims concerning Hard Rock Cafe's registration of the mark CAVERN CLUB for clothing and restaurant and bar services (summarized at the TTABlog here). Marty provides a copy of the complaint as filed in the U.S District Court for the District of Nevada. Furthermore, as an expert on issues of trademark use by foreign entities (he's my go-to guy on that topic), he observes:

Plaintiff has added an infringement claim, so it will have the opportunity to establish protectable trademark rights in CAVERN CLUB prior to HRC’s ITU filing date. Readers of the [Trademark] blog know that the US doesn’t protect "reputation without use." On the other hand, cases such as Casino de Monte Carlo and Grupo Gigante (646 F3d 0309), give plaintiff a fighting chance to establish that it had protectable prior rights (if it is correct, for example, that plaintiff promoted the Cavern Club as part of its US advertising efforts in the 1991 to 1995 period).

Text Copyright John L. Welch 2011.

TTAB Affirms Refusal to Register Rectangular Background Design Due to Failure to Function as a Trademark

Trademark Examining Attorney Hanno Rittner issued refusals in two applications to register the mark shown below, comprising a background design of adjacent white and blue rectangles outlined in blue, for various communications and computer-related consultation services, on the ground that the applied-for mark fails to function as a service mark. The Board affirmed. In re Ingram Micro Inc., Serial Nos. 78321253 and 78321254 (November 15, 2011) [not precedential].

Applicant argued that the refusals, issued after Applicant submitted its Statements of Use in the two cases, was "untimely" because the Examining Attorney should have been raised earlier in the prosecution because the PTO was on "clear notice" of the nature of the mark.

The Board pointed out that, when the refusals to register were first made in 2004, the 3rd edition of the TMEP was in place, and the Examining Attorney followed the procedure set forth therein by deferring issuance of a failure-to-function refusal until specimens were submitted. Although subsequent revisions of the TMEP made some changes, "[t]he fact that procedure altered somewhat by the time applicant filed its Statements of Use doe not provide applicant with a windfall."

Moreover, "questions of procedural missteps are not matters for Board consideration, but rather should be taken up by way of petition to the Director." In short, the Board will not consider whether the refusals were procedurally improper.

Applicant's specimens of use
Turning to the substantive refusals, the Board found that the proposed mark "is a background design and ... does not create a separate commercial impression sufficient to permit registration absent a showing of acquired distinctiveness. It is a simple geometric design." Use of two colors does not make this design inherently distinctive.

The Board found it "clear from applicant's specimens of use that applicant's mark does not make a separate commercial impression." Moreover, the specimens also include a red rectangle behind the word MICRO. "It seems unreasonable to expect consumers to recognize and pull out the white-and-blue rectangle as a service mark, yet be unaffected by the red rectangle featured in the overall design.

Text Copyright John L. Welch 2011

Anne Gilson Lalonde: Scandalousness Refusal Affirmed for Chocolate Candy Trademark [Warning: Post Rated NC-17]

Anne Gilson Lalonde is my go-to person when it comes to Section 2(a) "immoral or scandalous" refusals. She and her father, Jerome Gilson, reviewed the law in this always-controversial area in their article in the latest issue of The Trademark Reporter: "Trademarks Laid Bare: Marks That May Be Scandalous Or Immoral," 101 Trademark Reporter 1476 (September-October 2011). [pdf here]. Anne accepted my invitation to discuss the TTAB's latest ruling on a Section 2(a) scandalousness refusal. Her comments follow:


Marsha Fox applied to register the mark COCK SUCKER and the design (above) for "chocolate suckers molded in the shape of a rooster." The Examining Attorney found the mark to be scandalous and immoral, and rejected registration under Section 2(a). The Board affirmed. In re Fox, Serial No. 76315793 (November 15, 2011) [not precedential].

This decision is an prime example of the many challenges facing the PTO in determining whether a trademark is scandalous and immoral. The PTO has been unable to make consistent determinations of what constitutes scandalous matter. The unrelated word mark GAMECOCK SUCKER for lollipops, Ser. No. 85054752, was published for opposition on November 23, 2010 and a statement of use was filed on November 18, 2011, just three days after the decision in In re Fox was issued. The sole office action required the applicant to disclaim the word SUCKER, with no mention of scandalousness or immorality. It would be extremely difficult to find any legitimate basis on which to distinguish these two marks.

When a mark has two meanings, the PTO may or may not find it to be scandalous. Slang references to sexual material will nearly always be considered scandalous. However, the Board may permit registration if such a mark has a double meaning. The issue here is, when does the more offensive meaning render the mark unregistrable?

The most infamous example of double meanings in 2(a) rejections is that of BIG PECKER BRAND for t-shirts. The Board surprisingly concluded that this word mark had an alternative, nonvulgar meaning because the specimen (shown below) included a bird with a large beak:


In re Hershey, 6 U.S.P.Q.2d 1470 (T.T.A.B. 1988). In that case, the Board concluded that "the inclusion of the bird design would make it less likely that purchasers would attribute any vulgar connotation to the word mark." It also held that the evidence was "at best marginal to demonstrate that the mark is a vulgar, slang reference to male genitalia and would be recognized as such a reference by a substantial composite of the general public." In In re Fox, the Board distinguished Hershey by saying that "the evidence supports the fact that the term COCK SUCKER is vulgar."

The PTO has made several other apparently inconsistent determinations in this context. It has allowed registration of the following mark for "hunting preserves where people can hunt for pheasants":

Reg. No. 4002426.
The office action for that registration did not invoke the concept of scandalousness, though it did require the applicant to disclaim COCK RANCH. The word mark COCK RUB for spice rubs did receive a 2(a) refusal. The applicant's response, however, overcame that refusal, possibly with its argument that "the use of the term RUB to identify spice rubs automatically makes the consumer believe that the mark is identifying a type of food and not a sexual act." Ser. No. 85050620 (notice of publication issued May 24, 2011). And the following mark is currently registered for clothing:

Reg. No. 3130205.
Assuming that the offensive definition is the primary definition of the mark, it is difficult (perhaps impossible) to determine what point on the sliding scale of vulgarity causes a mark to be scandalous. The Board states in Fox that "the word 'vulgar' captures the essence of the prohibition against registration." Presumably, then, the term "cock sucker" is more vulgar than "big pecker," "big cock," "cock rub" or "tits." But how can the PTO possibly make such a subjective determination? Certainly the mark at issue in Fox is vulgar, but so are these others. A comparison of the determination in Fox to others the PTO has made highlights the troubling inconsistency and subjectivity in this particular area.

TTABlog note: a Notice of Appeal to the CAFC was filed on January 10, 2012.

Text Copyright 2011.

Precedential No. 30: TTAB Refuses to Compel Sweeping E-Discovery

If your knickers have been twisted into a pretzel over fear that TTAB litigation is becoming as complicated and expensive as civil litigation, this crisp interlocutory order will provide some relief. The Board denied a motion to compel sweeping e-discovery in this particular case, observing that in TTAB proceedings "the burden and expense of e-discovery will weigh heavily against requiring production in most cases." Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 100 USPQ2d 1904 (TTAB 2011) [precedential].


This proceeding concerns the issues of genericness and/or mere descriptiveness of the term PRETZEL CRISPS for "pretzel crackers." The parties were unable to reach an agreement on a procedure for handling e-discovery (other than use of .pdf format). Applicant Princeton Vanguard proceeded to produce tens of thousands of documents (possibly from a prior civil lawsuit), including ESI (electronically stored information). Dissatisfied with Opposer Frito-Lay's production, Princeton moved to compel, claiming that F-L's electronic discovery efforts were insufficient. F-L argued that the cost ($70,000 - 100,000) would far outweigh the benefit.

The Board discussed at length the role of e-discovery in civil actions and in Board proceedings, noting that in the courts "there is an increasing focus on the question of proportionality, and on whether the type of extensive ESI discovery applicant advocates here is always justified." In Board proceedings, discovery is expected to be less extensive than in court, and demands for e-discovery should be carefully scrutinized.

In view of our limited jurisdiction, the narrowness of the issues to be decided by the Board, and the concerns expressed by the Federal Circuit, the burden and expense of e-discovery will weigh heavily against requiring production in most cases. Parties are advised to be precise in their requests and to have as their first consideration how to significantly limit the expense of such production. Absent such a showing, the likelihood of success of any motion to compel will be in question.

Here, the Board denied Applicant Princeton's motion to compel, in large part, refusing to require Frito-Lay to "start its document production over, using the same or similar protocols to those applicant employed."

Applicant has simply failed to establish that opposer’s method of searching and producing documents was insufficient as a general matter, given the parties’ failure to agree on an ESI discovery protocol in advance, the nature of applicant’s discovery requests and the issues in this proceeding.

The Board proceeded to pare down Princeton's demands and then ordered Frito-Lay to produce documents in response to certain, narrowed requests.

TTABlog comment: Bravo!

Text Copyright John L. Welch 2011.

TTAB Affirms Genericness Refusal of "GRIND N BREW" for ... Guess What?

A beer hall featuring dancing girls? No. An orthodontist office that serves espresso? Don't be absurd! What then? How about "electric coffee makers for commercial use?" Bingo! Examining Attorney Simon Teng refused registration of GRIND N BREW on the grounds of genericness, and in the alternative, mere descriptiveness and lack of acquired distinctiveness. The Board affirmed. In re Grindmaster Corporation, Serial No. 77834762 (October 28, 2011) [not precedential].


Genericness: The Board, as usual, found the genus of goods to be adequately described by Applicant's identification of goods. Examining Attorney Simon Teng submitted Internet excerpts "showing that various manufacturers sell electric coffee makers and use 'grind and brew' as part of the name of their coffee makers." Newspaper stories also demonstrated the generic use of "grind and brew" for coffee makers. And consumer reviews showed that "the public considers the term to be generic for a type of electric coffee maker."

Applicant argued that the relevant public "is not the average retail consumer, but rather a more sophisticated buyer, such as would be found in a restaurant or hotel." The Examining Attorney contended that both commercial and home coffee makers "produce coffee for human consumption," and that commercial establishments can use consumer coffee makers.

The Board observed that the evidence showed "a cross-over in the market." Furthermore, restaurant and hotel purchasing agents "comprise members of the public who would be likely to purchase household electric appliances, such as grind-and-brew
coffee makers for home use."

The language “for commercial use” in applicant’s identification of goods may limit the market for applicant’s coffee maker and perhaps affect the size, capacity and/or the price of the coffee maker, but it does not change the fundamental nature of applicant’s product as a coffee maker. Simply put, the distinction between “domestic” and “commercial,” when essentially the same product is involved, is insignificant. The many examples of generic use by producers of coffee makers is strong evidence of the need by others in the trade to use the term generically and that it would be perceived as a generic term by consumers and commercial users alike.

Mere descriptiveness and acquired distinctiveness: For the sake of completeness, the Board next considered the 2(e)(1) and 2(f) issues. Not surprisingly, it found that the evidence supportsed a mere descriptiveness refusal.

We again refer to the meanings of the words “grind” and “brew.” Each word adequately describes a function of a coffee maker that acts on coffee beans by first crushing them into very small pieces (grinding) and then infusing them with water (brewing) to make coffee.

In view of the highly descriptive nature of GRIND N BREW, Applicant faced a heavy burden to prove acquired distinctiveness. Although Applicant has used the designation since 1995 and registered sales of some $20 million, there was no indication of whether sales have fluctuated over time and no context was provided for the sales figures. Moreover, the prevalence of third-party use "indicates that applicant’s has not been substantially exclusive as required by the statute."

In sum, Applicant evidence of acquired distinctiveness was insufficient.

TTABlog comment: Compare this case with the recent PICROSS decision (here), where the Board found acquired distinctiveness despite considerable third-party descriptive use of the word "picross."

Text Copyright John L. Welch 2011.

Test Your TTAB Judge-Ability: Are "RETHINKING YOUR FUTURE" and "CREATING YOUR FUTURE" Confusingly Similar for Self-Help Goods/Services?

The outcome of this Section 2(d) opposition hinged on the issue of the similarity or dissimilarity of the marks. Applicant Andrea Gallagher applied to register the mark RETHINKING YOUR FUTURE for publications and services in the field of life/career planning. Opposer Everett W. "Tad" James claimed that the mark would likely cause confusion with his registered mark CREATING YOUR FUTURE for publications and services in the field of self-improvement. The Board found the goods and services to be related, since self-improvement is a "target" of Applicant's life/career planning. But what about the marks? Too close for comfort? Is a TTAB Judgeship in your future? Everett W. James v. Andrea Gallagher, Opposition No. 91191941 (October 27, 2011) [not precedential].


Applicant Gallagher contended that the shared phrase "your future" is highly suggestive of the involved goods and services, and therefore the first word in each mark is the dominant portion. She provided some two dozen third-party registrations for marks in class 41 that include the phrase "your future." The Board noted that third-party registrations may demonstrate that a mark or a portion of a mark is suggestive or descriptive.

In addition, we take judicial notice of the term “your” as meaning “a person’s; one’s” and “future” as meaning “something that will happen in time to come.” We find these terms to be highly suggestive of the goods and services offered by applicant and opposer in both the pleaded registrations and the application, which are clearly targeted toward shaping the future of those who purchase their goods and services.

The Board therefore turned to the dominant portions of the marks, observing that "rethinking" and "creating" neither look nor sound alike. Moreover, the connotations of the two marks are different:

We find the commercial impression of opposer’s mark in the slightly stylized “CREATING YOUR FUTURE” to be one of inviting participant’s to invent their own path in self improvement. By contrast, we find the commercial impression generated by applicant’s mark “RETHINKING YOUR FUTURE” to be one of asking participants to reconsider and possibly change decisions they have already made regarding retirement and other life planning.

The Board concluded that the dissimilarities in connotation and commercial impression between the marks outweigh whatever similarities there are in sight and sound.

Balancing the du Pont factors, the Board found confusion unlikely and it dismissed the opposition.

TTABlog comment: Applicant alleged that his mark is famous, but his proofs fell short even of showing that the mark is well known. His own testimony did not help his cause: “So it’s not that we’re famous. We’re a legend in our own mind.”

So, how did you do, Judge Fill-in-the-blank?

Text Copyright John L. Welch 2011.

PICROSS Has Acquired Distinctiveness for Nintendo's Video Games, According to TTAB

Based on third-party usage, the Board agreed with the Examining Attorney that "PICROSS" is merely descriptive of Nintendo's video games. But it reversed the PTO's Section 2(e)(1) refusal to register the mark PICROSS DS without a disclaimer of PICROSS because it found that the word had acquired distinctiveness. In re Nintendo of America Inc., Serial No. 77245239 (November 3, 2011) [not precedential].


Mere Descriptiveness: Nintendo's goods feature a type of puzzle known as a "nonogram," also known as "Paint by Numbers," "Hanjie," and "Japanese Crosswords." The Examining Attorney submitted excerpts from more than 20 websites showing that the term PICROSS is used in connection with these types of puzzles. As a result, the Board found that the Examining Attorney had established a prima facie case that PICROSS is merely descriptive of nonogram puzzles.

Nintendo submitted a variety of evidence in rebuttal and asserted that it had coined the term "picross." Nonetheless, the Board pointed out, regardless of who invented the term, the question is whether PICROSS is, at the time of the application, merely descriptive of the goods.

Nintendo claimed that the third-party uses are infringing and that it has made efforts to enforce its mark. The Board observed, however, that Nintendo "overstates the impact of its efforts to police the mark and understates the descriptive significance of these third-party uses."

And so the Board ruled that PICROSS is merely descriptive of the goods.

Acquired Distinctiveness: The Board's discussion of Nintendo's 2(d) evidence was somewhat puzzling. It found that evidence of "media coverage of the popularity of these games provides some measure of context." [for Applicant's sales figures? - ed.]. The game also received high ratings from reviewers. [So what? - ed.]

Twenty-one form declarations from GAME STOP employees showed some degree of association of PICROSS with Applicant's games. Finally, Nintendo demonstrated that its "use of PICROSS has received extensive unsolicited media coverage." The Board concluded that:

Applicant has shown that the term PICROSS has been widely-associated with its two game programs. The games also have been shown to be both relatively popular and frequently reviewed by video game media sources. Balancing all of the evidence of record, we find that applicant has met its burden of showing that PICROSS has acquired distinctiveness.

The Board therefore reversed the requirement that PICROSS be disclaimed, and it ordered that the mark be published for opposition "with a notation of applicant's claim of acquired distinctiveness" as to PICROSS.

TTABlog comment: I was unconvinced by the Board's explanation as to why it found acquired distinctiveness. How about you?

Text Copyright John L. Welch 2011.

TTAB Finds Restaurant Services and Food and Beverage Items Related, Affirms 2(d) Refusal of ST. JOE'S COFFEE

We know that, for Section 2(d) purposes, pretty much all beverages are related and all snack foods are related. Now it appears that numerous food and beverage products are also related to restaurant services. Third-party registration and website evidence led the Board to affirm a Section 2(d) refusal to register the mark ST. JOE'S COFFEE for a variety of food products, including coffee, pastries, and smoothies [COFFEE disclaimed], on the ground of likelihood of confusion with the registered mark ST JOE for hotel, restaurant, and dining services. In re Gabriel Miller & Jason Miller, Serial No. 77855808 (November 3, 2011) [not precedential].


As to the similarity of the marks at issue here, the Board found that this "critical" du Pont factor points to a finding of likely confusion. Not a surprise.

As to the involved goods/services, the Board has repeatedly observed that there is no per se rule that food and beverage items are related to restaurant services for Section 2(d) purposes. "Something more" must be shown than just the similarity or identity of the marks. Here, the Board found that Examining Attorney Meghan Reinhart "carefully established something more:" the evidence demonstrated a "close relationship between coffee and restaurant services with some of the larges franchise operations in the country" [e.g., DUNKIN DONUTS and STARBUCKS]; between other beverage and food items, and restaurant services [e.g., MAUI WOWI and COLLEGE HILL COFFEE CO.]; and between various pastries/bakery items and restaurant services [e.g., THE CHEESECAKE FACTORY, COCO'S BAKERY, THE CUPCAKERY, and TOBIES RESTAURANT AND BAKERY].

In addition, the Examining Attorney submitted third-party registrations that listed both hotel, dining, and/or restaurant services, on the one hand, and coffee, hot chocolate, bakery goods, and smoothies, on the other hand [e.g., BR BASKIN ROBBINS, CALIFORNIA PIZZA KITCHEN, AUNTIE ANNE'S PERFECT PRETZEL]. [As we know, under Albert Trostel and Mucky Duck, third-party registrations may have some probative value in suggesting that the listed goods and/or services are of a type that may emanate from a single source.

The Board therefore found that the Applicant's "food and beverage items are closely related to registrant's types of restaurant and dining services." Moreover, there is a "significant overlap" in channels of trade, and the classes of consumers are the same.

The Board therefore concluded that confusion is likely, and it affirmed the Section 2(d) refusal.

TTABlog comment: Does this mean that, for Section 2(d) purposes, restaurant services are related to any and every food and beverage item served in restaurants?

Text Copyright John L. Welch 2011.

Test Your TTAB Judge-Ability: How Confident Are You About Deciding This Section 2(d) Gardening Case?

There was no need for new Administrative Trademark Judge Linda A. Kuczma to "dig into the record" in order to write this, her first TTAB opinion. Neither party submitted any testimony or filed briefs in this Section 2(d) opposition involving Helen Yoest's application to register the mark GARDENING WITH CONFIDENCE for "providing a website featuring information in the field of gardening" [GARDENING disclaimed]. Opposer McCorkle Nurseries claimed likelihood of confusion with its registered mark GARDENER’S CONFIDENCE for "live plants, trees and flowers" [GARDENER'S disclaimed]. That's all you need to know. How would you rule? McCorkle Nurseries, Inc. v. Helen Yoest dba Tiger Lily’s, Opposition No. 91191035 (October 26, 2011) [not precedential].



Procedure: Opposer McCorkle's opening brief was due on March 5, 2011 (a Saturday). On March 7, Opposer filed a motion seeking to re-open its testimony period [Good luck with that! - ed.], claiming that it was under the belief that the case had been suspended. The Board applied the Pioneer factors, finding that Applicant Yoest would not be prejudiced by a re-opening, but that resolution of this case would be significantly delayed. The cause of the delay was completely within Opposer McCorkle's control, and there was no reason for McCorkle to believe the case was suspended: "the parties were not engaged in settlement discussions, neither party filed a motion to suspend these proceedings, and the Board in fact never suspended this case." In short, the lack of a satisfactory explanation for the delay weighed "heavily against a finding of excusable neglect." Finally, the Board was unable to determine, on the record, whether Opposer McCorkle acted in good or bad faith.

Weighing all the factors, we find that the third factor, the reason for the delay, taken together with the second factor, the length and impact of the delay, weigh heavily against a finding of excusable neglect and therefore deny opposer’s motion to reopen its pretrial disclosure and testimony periods.

The Board also denied Opposer an extension of time to file its brief, again due to lack of a reasonable excuse for delay. Since neither Opposer nor Applicant Yoest submitted any evidence, and since Opposer had missed the briefing date, there was no need for the filing of a brief by Applicant, said the Board [I don't see why not - ed.], and it proceeded to the merits of the case.

Substance: The record was limited to the file of the opposed application and Opposer's registration, which became of record under Rule 2.122(b) because Applicant had counterclaimed to cancel the registration. [Had Applicant Yoest not counterclaimed, Opposer would have had nothing in the record].

The Board first looked to Applicant's Section 2(d) counterclaim. However, because Applicant had no evidence, she could rely only on the filing date of her (opposed) application (March 20, 2007), a date well after the filing date of Opposer's registration (December 21, 2004). Based on lack of priority, the Board dismissed the counterclaim.

Turning to Opposer McCorkle's 2(d) claim, the Board cryptically found the marks to be "somewhat different although they nonetheless have some similarities in appearance, sound, meaning and connotation."

As to the goods/services, "[i]nasmuch as the products sold by opposer are different from applicant’s services, and there is no evidence in the record to support the relatedness of such products and services, we find that applicant’s services are not similar or related to opposer’s products."

Balancing the du Pont factors, the Board found confusion unlikely, and it dismissed the opposition.

TTABlog comment: This was one strange case! The finding regarding the similarity of the goods and services is a bit unsatisfying. Couldn't the Board take judicial notice that there is some connection between plants, trees, and flowers, and a gardening website? But then, so what? I guess Opposer deserved to lose. However, don't forget that it can have a second bite of the apple via a Section 1071(b) civil action for review, in which it can create a new record.

Text Copyright John L. Welch 2011.

Prof. Gordon Thompson Questions TTAB's CAVERN CLUB Decision

Oxford University Press has kindly given me permission to reproduce the comments of Professor Gordon Thompson on the TTAB's recent CAVERN CLUB decision [TTABlogged here]]. His comments [here] appeared on Oxford's OUPblog [here].

"What Brings Mr. Epstein Here?" 9 November 1961
Prof. Gordon Thompson, Skidmore College

The transformation of the Beatles from four musicians with humble roots into British cultural icons (second only to Shakespeare in some minds) began in Liverpool, even if a recent decision by the Trademark Trial and Appeals Board of the United States Patent and Trademark Office may attempt to shape how we remember those roots in the future. Ironically, that decision comes shortly before a relevant anniversary in Beatles history.

Fifty years ago in 1961, Mathew Street on an early November midday would have presented a less than picture-postcard impression of Liverpool; but Brian Epstein had ventured forth on a mission, and he had brought his assistant, Alistair Taylor, as company. Temperatures in the low fifties and an ever-present threat of Irish Sea rain slowed the decay of the vegetable hubris dropped by workers from trucks, and the angle of the sun prevented much light illuminating what rotted underfoot. Nevertheless, the street would have seemed bucolic in comparison to the dragon’s roar and the stench of cigarette smoke, disinfectant, urine, and body odor that permeated clothing below the pavement where subterranean arches ran with the condensed sweat and breath of a great, unwashed wall of adolescent sexuality. With special permission to pass the Cavern Club’s bouncer and the line of aspiring dancers, Epstein descended the stairs like Dante, with Taylor acting as a reluctant Virgil, or perhaps they more closely resembled Don Quixote and Sancho Panza.

Epstein’s record store—perhaps the most successful in this northern port city—had recently been selling numerous copies of the 45 rpm single, “My Bonnie” by Tony Sheridan and the Beat Brothers. Locals knew the Beat Brothers to be the Beatles and, despite Cavern Club advertisements that declared the band as “Direct from Hamburg,” Liverpudlian blood flowed in their veins. Taylor recognized them as regulars in the store and Epstein had somehow learned that the band whose records he sold sometimes played a lunch-hour session at this dank outpost of rock ‘n’ roll. Although pop and rock were not to his taste, the educated and fastidiously sartorial record-store owner recognized the importance of this music, if not for its energy, then for the number of units it moved through his inventory.

He also could not have missed the parallels between himself and the most famous manager of British pop singers of the era: Larry Parnes. Music papers like the New Musical Express, Melody Maker, and Disc carried articles on and interviews with Parnes who sometimes made newsreel appearances where he introduced his “stable” of handsome boy singers. Like Epstein, Parnes was Jewish and from a merchant family; but from his time in London at the Royal Academy of Dramatic Arts, Epstein probably also knew that Parnes, like himself, was a homosexual, and to be a homosexual in Britain at the time was to be illegal. More importantly, Parnes offered an example of how to be officially accepted and successful in a society that routinely discriminated against people based on their class and ethnicity, let alone on their gender and sexual orientation.

The Beatles knew that Epstein had entered their lair when DJ Bob Wooler announced the NEMS manager’s presence; but the band seemed to have paid no heed to the businessmen who—after watching a set of humor, smoke, leather, hair, audience interaction, and powerful music—made their way to the stage. George Harrison reportedly saw them first and greeted the man in the exquisite dark suit with a very polite, but inquiring, “What brings Mr. Epstein here?” Indeed.

Taylor remembers Epstein—enthused by the energy and presence of Lennon, McCartney, Harrison, and Best—deciding almost immediately that he wanted to manage the Beatles. Over the next weeks, the band would agree to a contract with the record-store owner who, in return, would begin his challenging quest to have this band of northern scruffs signed to a recording company.

Later, as regional popularity evolved into Beatlemania, the story of how Brian Epstein “discovered” the Beatles in the Cavern Club made that establishment famous throughout not only Britain, but also the world. Although the club closed and reopened several times, fans continued to make the pilgrimage to the site of Beatledom’s naissance. Even when the City of Liverpool demolished the site and filled in the Cavern’s arches with rubble, fans returned to pay homage to John Lennon on the night of his assassination. Thus, when developers reopened the site of Mr. Epstein’s excellent lunchtime adventure and renovated its arches, the Cavern Club relocated back to this sacred ground from its ersatz location across the street. The memory would not die; but then many want to shape our memory of history.

When the Hard Rock Café received permission to trademark the identity “Cavern Club” in February 2000, they did so to sell “clothing, namely T-shirts, sweatshirts, polo shirts, sport shirts, jackets, hats, caps, bolo ties, belts, and sun visors,” as well as to operate a “restaurant, bar and prepared take-out food services.” Unsurprisingly, their website and stores feature Beatles-themed haberdashery as they attempt to capture part of the Beatles nostalgia market associated with a number of looming significant anniversaries. Hard Rock Café International, Inc. (owned today by the Seminole Indian Tribe of Florida) has avidly collected rock memorabilia, including material related to the Beatles and the original Cavern Club. Now, they apparently want to collect the identity of the place where George Harrison greeted his future.

Cavern City Tours, a company founded by Liverpudlian schoolteachers in 1984 to celebrate local Beatles history, have been the custodians of England’s Cavern Club since 1991 and petitioned the American court to cancel Hard Rock Café’s registration. They asserted that they have long marketed the club in the United States as part of their tour packages celebrating the Beatles in Merseyside and that the Hard Rock Café’s claim to be the Cavern Club constituted fraud. Indeed, Cavern City Tours maintain that their Cavern Club is THE Cavern Club and that they represent but the most recent of a succession of custodians of the institution.

However, Judge Albert Zervas’ opinion for the Appeal Board sided with the Hard Rock Café by agreeing that Cavern City Tours had failed to prove that its Cavern Club uniquely associated with the “particular personality or ‘persona’” of the Cavern Club. He curiously writes, “We find it implausible that any entity that operates The Cavern Club as a musical entertainment establishment under The Cavern Club name in the same location automatically has The Cavern as its identity.” Consequently, despite a likely appeal, another corporation seems poised to gobble up a piece of Beatles history and to create American imitations of an original in an attempt to provide fans with more convenient places to go than where Brian Epstein first went fifty years ago today.

Gordon Thompson is Professor of Music at Skidmore College. His book, Please Please Me: Sixties British Pop, Inside Out, offers an insider’s view of the British pop-music recording industry. Check out Prof. Thompson’s other posts here.

USPTO News: TEAS Version 4.9 to be Deployed on November 19th

TEAS Version 4.9 is scheduled for deployment on November 19, 2011, according to the USPTO. Most of the changes are highlighted here.

CAFC Affims TTAB Decision Sustaining "TELMEX" 2(d) Opposition

In a nonprecedential disposition, the CAFC affirmed the Board's decision in Telefonos de Mexico, S.A.B. de C.V. v. Andres Gutierrez Estrada, Opposition No. 91183487 (June 30, 2010) [not precedential]. [TTABlogged here]. The appellate court ruled that the TTAB's findings of fact in its Section 2(d) analysis were supported by substantial evidence, and it concluded that the Board did not err in finding a likelihood of confusion between Applicant Estrada's mark AUDITORIO TELMEX for arena and entertainment services [AUDITORIO disclaimed], and the previously-used mark TELMEX for telephone calling card services. Andres Gutierrez Estrada v. Telefonos de Mexico, S.A.B. de C.V., Appeal No. 10-1558 (Fed. Cir., November 20, 2011).

On appeal, Estrada contended that "entertainment services and arena services are not related to telecommunications services, and that Telefonos failed to establish that the promotions displayed on its calling cards would create an association between these services." The CAFC disagreed, concluding that substantial evidence supported the Board’s findings.

The Board considered the evidence submitted by Telefonos, including the testimony of Mr. Rivera and the images of calling cards bearing Telefonos’ TELMEX mark and depicting sporting and other entertainment events sponsored by Telefonos. *** Although telecommunications services are different in kind from arena and entertainment services, the Board properly relied on substantial evidence in the record to find that the services, when used in connection with the marks at issue, would likely be related in the mind of the consuming public.

Estrada also contended that the Board erred when it considered certain evidence dated after Estrada’s application filing dates. The court again disagreed: "Our precedent is clear, however, that 'evidence bearing on the issue of likelihood of confusion is admissible for the period extending through the latest date permitted by the procedural rules of the [PTO] for taking testimony and presenting evidence.' R.J. Reynolds Tobacco Co. v. Am. Brands, Inc., 493 F.2d 1235, 1238 (CCPA 1974)."

Finally, the court ruled that the Board had properly considered the matter of bad faith.

The thirteenth DuPont factor permits the Board to weigh "[a]ny other established fact probative of the effect of use." DuPont, 476 F.2d at 1361. An applicant’s bad faith is potentially relevant in the likelihood-of-confusion analysis. See L.C. Licensing Inc. v. Berman, 86 U.S.P.Q. 2d (BNA) 1883, 1890 (T.T.A.B. 2008); see also Paddington Corp. v. Attiki Imps. & Dis-tribs., Inc., 996 F.2d 577, 587 (2d Cir. 1993) ("Where a second-comer acts in bad faith and intentionally copies a trademark or trade dress, a presumption arises that the copier has succeeded in causing confusion."). As noted supra, the Board found that Estrada had been "evasive and disingenuous" by essentially denying any prior knowledge of Telefonos’ TELMEX mark. The Board concluded that Estrada exhibited "not only bad faith but a general lack of respect for the application and opposition process." *** The Board noted that although it would have found a likelihood of confusion on the present facts even without a finding of bad faith, were this a close case Estrada’s bad faith would have tipped the balance to a finding of a likelihood of confusion. We conclude that substantial evidence supports the Board’s finding of Estrada’s bad faith. As the Board noted, if Estrada had an explanation for his implausible responses, he could have provided that explanation by submitting evidence at trial."

And so the court affirmed the TTAB's ruling.

TTABlog comment: I guess the CAFC has not read Tom Casagrande's article (here) on "Why an Accused Trademark Infringer's Intent Has No Place in Likelihood of Confusion Analysis."

Here, it seems that Estrada's faith was doubly bad: first in choosing his mark and second in being "evasive and disingenuous" when asked about it. The Board stated that it would have found a likelihood of confusion even without the bad faith finding, but is there any doubt that Estrada's bad faith put him behind the 8-ball?

Text Copyright John L. Welch 2011.

TTAB Dismisses Cancellation Petition On Contractual Estoppel Ground

Invoking the doctrine of contractual estoppel, the Board entered summary judgement, dismissing a petition for cancellation of a registration for the mark MARIE CLAIRE for "women’s boots, shoes and sandals." The Board also dismissed Petitioner's motion for summary judgment based on a claim of abandonment. Marie Claire Album, S.A. v. Bata Brands S.A.R.L. Luxembourg, Succursale de Lausanne, Cancellation No. 92052238 (October 25, 2011) [not precedential].


The parties signed a consent agreement in 1986, resolving a cancellation proceeding brought on the ground of Section 2(d) likelihood of confusion. The agreement included these terms:

2. Bata agrees that it shall not use the mark MARIE CLAIRE on or in connection with any goods other than men’s, women’s, and children’s boots, shoes and sandals, or any other kind of variety of footwear (except hosiery) without the authorization of Marie Claire Album.

4. Marie Claire Album consents to the use or registration by Bata in the United States of the mark MARIE CLAIRE on or in connection with its goods, so long as such use is in accord with paragraph 2, above.

6. Marie Claire shall withdraw cancellation No. 14,624 upon the signing of the agreement, and shall not attempt to reinstitute cancellation proceedings based on the same set of facts alleged at the time of filing that petition.

9. This agreement shall remain in full force and effect so long as either party or any licensee or assignee continues to use the mark MARIE CLAIRE, or any registration of the mark by either party or a licensee or assignee remains in effect, or any new application for the mark is pending or has been approved.

Petitioner claimed that paragraph 9 requires that the MARIE CLAIRE registration be "effective," and that Bata has abandoned the mark. It also argued that the agreement “violates public policy" and that paragraph 6 "contemplates that future cancellation proceedings can be brought" on different facts, and here the cancellation proceeding is based on different facts.

The Board looked to the "plain terms" of the agreement:

The terms in paragraph 4 regarding use or registration are mirrored in paragraph 9--that is--the consent agreement provides petitioner’s consent to respondent’s use of MARIE CLAIRE or respondent’s registration of MARIE CLAIRE. Thus the conditions of the agreement are met by either respondent’s continued use of or respondent’s maintenance of a registration of MARIE CLARE. *** The terms in paragraph 9 with regard to registration simply require that the MARIE CLAIRE registration remain in registered-renewed (rather than expired) status. We also read paragraph 6 as an agreement by petitioner that it will not seek to relitigate the issues resolved by the consent agreement, not a provision that contemplates future cancellation proceedings.

Concluding that Petitioner, as a matter of law, is contractually estopped from petitioning for cancellation of the MARIE CLAIRE registration, the Board granted Bata's motion for summary judgment, and denied Petitioner's motion.

TTABlog comment: Is this petition based on the "same set of facts as alleged" in the original petition? If Bata has indeed abandoned the mark, wouldn't the public interest be served by allowing a petition for cancellation? And isn't this Petitioner the one most likely to bring such a petition?

Text Copyright John L. Welch 2011.

Court Rules That 1071(b) Civil Action For Review of TTAB Decision Was Timely Filed

Registrant Tovaritch filed a civil action for review, under Section 1071(b)(1), of the Board's decision of March 24, 2011, cancelling a registration for the mark TOVARITCH for vodka. (TTABlogged here). The action was commenced (i.e. the complaint filed) on May 24, 2011, two months later. Petitioner/Defendant moved for dismissal, claiming that the action had to be filed within 60 days of the Board's decision, i.e., on or before May 23rd. Based on the statute and the Trademark Rules, the court denied the motion, holding that such an action is due two calendar months after the Board's decision. Tovaritch Spirits Int'l S.A. v. Luxco, Inc., Case No. 4:11CV950 JCH (October 20, 2011) [decision here].


Section 1071(b) says that the Commissioner may set the time for appeal, but not less than sixty days. Rule 2.145 says that the period is "two months." The rule goes on to say that "months" means "calendar months." The court found it "clear" that "the time a party has to contest a TTAB decision is two calendar months - not sixty days."

Luxco argued that the courts have consistently interpreted "two months" to mean "sixty days," but the court found Luxco's case support to be either inapposite or ambiguous.

TTABlog note: Things get more complicated if the two month period incorporates February 28th.

Text Copyright John L. Welch 2011.

Precedential No. 29: TTAB Affirms Genericness Refusal of "Person2Person Payment" For Electronic Funds Transfers

In view of the "excellent record" assembled by Examining Attorney Lakeisha S. Munn-Lewis, the Board affirmed a refusal to register the designation Person2Person Payment (in standard character form) [PAYMENT disclaimed], finding it to be generic for "electronic funds transfer via electronic communications networks; clearing and reconciling financial transactions via electronic communications networks; providing a wide variety of payment and financial services, namely, processing and transmission of bills and payments thereof." In re ING Direct Bancorp, 100 USPQ2d 1681 (TTAB 2011)[re-designated Precedential, September 27, 2011].


The Board agreed with Applicant that the genus of the services at issue is "direct electronic fund transfers." That genus includes electronic payment services between individuals. The relevant consumers would be "individual persons wanting to transfer funds electronically - often to other individuals or small businesses."

The Examining Attorney contended the phrase "person to person payments" is often used to mean (not surprisingly) payments from one person to another. She pointed to a number of third-party websites where the phrase is used to refer to electronic transfer of funds and payments.

Applicant ING feebly argued that most of those transfers still involve banks and that, technically, the money does not go from "person to person." The Board was (not unimpressed, because the evidence "clearly shows" that "person to person payments" is a well-established term of art in the financial payments industry, with "specific meaning identical to the usage that applicant intends."

The evidence also showed that, in the field of e-finance, "person to person" is shortened to "P2P." The evidence even included use of "person-2-person."

ING argued that the evidence did not contain a single use of the exact phrase "Person2Person Payment" and therefore fails to show that the phrase is a commonly-used term in the industry.

Perhaps applicant’s argument is that its “Person2Person Payment” designation is not precisely the same as “Person 2 Person Payment” (having spaces) or “Person-2-Person Payment” (having hyphens). We also do not find this particular argument persuasive. Applicant's deletion of spaces or hyphens within the designation “Person2Person” cannot transform clearly generic terms such as “Person 2 Person Payment” or “Person-2-Person Payment” into something that is capable of functioning as a source identifier.

In short, ING's slight change does not yield a term that will be understood by relevant purchasers as "anything other than naming a category of direct electronic funds transfers."

And so the Board found the designation "Person2Person Payment" to be generic for the recited services, and it affirmed the refusal to register on the Supplemental Register.

TTABlog comment: Yawn! This is precedential? Judge Bucher does once again display his admirable Photoshopping skills, and it's nice to see the evidence right there in the opinion, but ....

Text Copyright John L. Welch 2011.

CAFC Hears Oral Argument in Mag Instrument v. Brinkmann Appeal Re Functionality

The CAFC heard oral argument [mp3 here] yesterday in Mag Instrument, Inc. v. The Brinkmann Corporation, Appeal No. 2011-1052. The TTAB decision is discussed in a TTABlog post here. Mag's appeal concerned the functionality of the two bands that encircle the the flashlight, which bands are used in re-charging the device. [Update: affirmed per curiam, November 9, 2011 under Federal Circuit Rule 36].



Brinkmann maintained that this configuration is functional because the rings are "necessary to charge the flashlight and the reason that the charging feature works." The Board agreed.

The Board reviewed an expired utility patent and concluded that "the features of [the proposed mark] are fundamentally covered by the expired patent," and that this patent "discloses the utilitarian advantages of the underlying mark, i.e., the two bands."

On appeal, Mag argued that the location of the bands and their contrasting color are not functional. It contended that the Board had over-emphasized the importance of, and had misread, the expired patent, because the patent does not claim or even disclose dual bands.

Brinkmann argued that the contrasting bands are functional because the metallic bands, used for charging the flashlight will by necessity be separated and surrounded by different material in order to insulate one band from the other. Brinkmann should not have to make the bands and the insulating material look the same in order to avoid Mag's purported trademark.

Mag countered that there is no record evidence that the contrasting color of the bands versus the flashlight body, or the location of the bands, is functional.


TTABlog comment: No one discussed the conceptual difference between de facto functionality and de jure functionality. Of course the bands are de facto functional - they perform a function. But do they have to be contrasting in color from the flashlight case? Do they have to be in the location where Mag put them? If not, then maybe the proposed mark is not de jure functional, and the Board should be reversed.

Text Copyright John L. Welch 2011.

TTABlog Celebrates Seventh Anniversary Today!

The TTABlog is seven years old today. This is post number 2,099. It's been real. Thanks for reading!

Test Your TTAB Judge-Ability on These Two House Marks for Construction Services

According to Long John Silver’s, the comparison of design marks comes down to a "subjective 'eye ball' reaction," so take a gander at the design marks below and let's see how well you do. Applicant Frangeli Consulting sought to register the mark shown below left, for architectural design, construction, and related services. Examining Attorney Linda E. Blohm refused registration under Section 2(d), finding the mark likely to cause confusion with the two marks on the right (one claiming the color red, the other with no color claim), registered for building and construction services. So what do you think? Would you bet the house on it? In re Frangeli Consulting, Inc., Serial No. 77684564 (October 17, 2011) [not precedential].


The Board found the respective services of the parties to be identical or closely related, and the channels of trade and classes of consumers overlapping. Of course, when the involved services are identical or closely related, the degree of similarity in the marks necessary to support a finding of likelihood of confusion declines.

As to the marks, side-by-side comparison is not the proper approach. The average consumer "normally retains a general rather than a specific impression of trademarks." "Here, consumers are likely to remember a white cross set against a dark background being situated inside a house; they are less likely to recall whether the cross is contained within a circle or not."

Applicant pointed to Red Carpet Corp. v. Johnstown American Enterprises Inc., 7 USPQ2d 1404 (TTAB 1988), where the Board dismissed an opposition to registration of the mark on the left in view of the registered mark on the right, for closely related real estate services.


This panel was not impressed. It observed that in Red Carpet, the overall commercial impressions of the two marks were substantially different, even though the designs were referred to as pentagonal “house designs.” There the Board found that the designs "are so different visually it is not even accurate to describe them as [having] ‘common elements.’ The suggestive connotation of the two different designs may be common, but this is quite different from concluding that they share a common design element."

Here, however, the marks "share common design elements, and these elements are the prominent features of both parties’ marks. Accordingly, the marks are similar in appearance and overall commercial impression."

Finally, Applicant urged that the consumers of the services are sophisticated and would exercise care in making their purchasing decisions. Once again, the Board shrugged off that argument: "Even sophisticated consumers may view the marks as variations on a theme intended to differentiate related services having a common source or sponsorship."

And so the Board affirmed the refusal.

TTABlog comment: Should this one be put in the "WYHA?" folder? Note that rookie judge Linda Kuczma apparently makes her first appearance on a TTAB panel, but we are still awaiting her first opinion.

Text Copyright John L. Welch 2011.

TTABlog Road Trip: Intellectual Property Law Association of Florida (IPLAF), November 10th

The TTABlogger will be speaking before the Intellectual Property Law Association of Florida at its meeting on Thursday, November 10, 2011, in Miami. The subject? "Hot Topics at the TTAB." [More information here].


Looking forward to meeting my Florida fan(s?).

Precedential No. 28: TTAB Reverses Genericness Refusal of COUNTRY MUSIC ASSOCIATION for Country Music Association Services

As George Strait would say, Write This Down! The 45th Annual CMA Awards will be presented on Wednesday night, November 9th, on ABC. Maybe they'll announce the CMA's victory in this TTAB case? CMA sought to register COUNTRY MUSIC ASSOCIATION and the logo mark shown below for “association services, namely, promoting country music, and promoting the interests of country music entertainers and the country music recording industry," asserting that the marks had acquired distinctiveness under Section 2(f). The Examining Attorney refused registration on alternative grounds: genericness, or mere descriptiveness and lack of secondary meaning. The Board reversed the refusals but required a disclaimer of the word ASSOCIATION. In re Country Music Association, Inc., 100 USPQ2d 1824 (TTAB 2011) [precedential].


Genericness: The Board began by defining the genus of services to be those identified in the applications. This was confirmed by Applicant's specimen of use, which referred to CMA as "a professional trade association, [with] membership ... available to those working in the Country Music industry." Everyone agreed that the relevant purchasing public "consists of the general public who listen to country music and those who are associated with the country music industry."

The question, then, was "whether the designation COUNTRY MUSIC ASSOCIATION is understood by the relevant purchasing public as primarily referring to association services which promote country music and the interests of professionals in the country music recording industry."

The Examining Attorney provided website evidence that 28 other associations use the phrase COUNTRY MUSIC ASSOCIATION preceded by a descriptive, geographical, or other term - e.g., Gay & Lesbian, Christian, Illinois - and he contended that, unlike in American Fertility, the phrase COUNTRY MUSIC ASSOCIATION is used generically. The Board pooh-poohed this evidence, finding it not clear enough, in part because the phrase appeared in initial caps in these names and because website data showed that these websites were "comparatively obscure" and had limited exposure.

CMA submitted two expert reports, but the first, which relied on dictionary definitions to conclude that because applicant's mark includes the term 'association,' it must be a brand name," was deemed to be flawed and its conclusion devoid of foundation. The second consisted of the same expert's review of various databanks, in which he found that in the LEXIS database, 99% of the usage of the phrase COUNTRY MUSIC ASSOCIATION was in initial caps. He pointed to many U.S. registrations which show, according to the Board, that "trademark owners view the term ASSOCIATION as part of their marks."




Perhaps most significantly, CMA submitted the results of a Teflon survey, in which "[a] significant number of surveyed respondents, 85%, answered that COUNTRY MUSIC ASSOCIATION is a brand name." The survey expert, Dr. Gerald L. Ford, concluded that the term 'country music association' is perceived by listeners of country western music as a proprietary or brand name, and not a generic term." Despite the Examining Attorney's rather feeble objections, the Board found the survey to be probative.

On balance, the Board found that the PTO had failed to meet its burden of proof by clear evidence. Moreover, any doubts must be resolved in Applicant's favor:

Both the results of Dr. Ford’s survey showing that a significant percentage of respondents who listen to country western music identify applicant’s mark as a brand name and Dr. Barnhart’s survey results showing that virtually all sampled written usages of the phrase COUNTRY MUSIC ASSOCIATION refer to applicant are sufficient to raise doubts regarding the genericness of applicant’s mark.

The Board did, however, find the word ASSOCIATION to be generic for the services, and it required a disclaimer of ASSOCIATION.

Acquired Distinctiveness: By seeking registration via Section 2(f), Applicant conceded that COUNTRY MUSIC ASSOCIATION is merely descriptive. However, the evidence convinced the Board that the mark had acquired distinctiveness. The mark has been in use since 1958 and 30 million viewers watch its annual awards show. Advertising expenditures, website traffic, and the survey results led the Board to find that CMA had satisfied Section 2(f). However, disclaimer of ASSOCIATION was again required.

And so the Board reversed both refusals to register with regard to both applications.

Text Copyright John L. Welch.

Test Your TTAB Judge-Ability on this Section 2(d) Refusal

Applicant G&F Manufacturing sought to register the mark shown below for "swimming pool heat pumps" [SWIMMING POOL HEAT PUMPS disclaimed], but the application was refused under Section 2(d) in view of the registered mark GULFSTREAM for "whirlpool baths and related accessories," including pumps. Applicant submitted a summary of the results of a Google brand search, purportedly showing that "many organizations in Florida ... utilize 'gulfstream' in their names." How do you think this came out? In re G&F Manufacturing, Inc., Serial No. 77632210 (October 13, 2011) [not precedential].


The Board found the evidence of third-party use unpersuasive because the search results were truncated, there was insufficient context for evaluation of the evidence, and in any case most of the uses of GULFSTREAM were in connection with goods or services unrelated to the goods at issue here. In sum, the registered mark GULFSTREAM is entitled to more than a narrow scope of protection for Registrant's goods.

Not surprisingly, the Board found the word GULFSTREAM to be the dominant portion of Applicant's mark. The wave design reinforces the "the terms comprising gulfstream" and the additional wording is generic and lacks source-identifying significance. The Board concluded that the similarities between the two marks outweigh their differences.

As to the goods, both include pumps for aquatic use. Indeed, Registrant's goods are broadly identified to include "whirlpool bath pumps," which may include heat pumps for whirlpools. Moreover, Examining Attorney Sung submitted third-party registrations that include goods of the type found in both the application and the registration. The Board therefore found that the goods are related.

There were no restrictions as to channels of trade in either the application or registration, and so the Board must presume that they travel in all normal channels for those goods, to all normal classes of consumers.

Applicant contended that its goods are expensive and would be purchased with care, but even if true, the Board noted, purchasers are not immune from source confusion when "the similar nature of the marks and the relatedness of the goods outweigh any sophisticated purchasing decision."

Finally, Applicant claimed that the involved marks have co-existed for years without any actual confusion. However, such a claim carries little weight in an ex parte context, where the registrant has no opportunity to be heard on the subject.

Noting that any doubt raised by applicant must be resolved in favor of the prior registrant, the Board affirmed the refusal to register.

TTABlog note: I was tempted to make this a WYHA, but we just had one yesterday.

Text Copyright John L. Welch 2011.

WYHA? TTAB Finds SMARTRASTER Merely Descriptive of Oil and Gas Data Logging Services

This applicant hit a dry well in its attempt to register the mark SMARTRASTER for various oil and gas well data services. The Board found the mark to be not just merely descriptive, but "highly descriptive," of the services, and so it affirmed the Section 2(e)(1) refusal. Applicant claimed acquired distinctiveness under Section 2(f), but its evidence fell "far short." In light of the record, Would You Have Appealed? In re A2D Technologies, Inc., Serial No. 77806767 (October 7, 2011) [not precedential].


Examining Attorney John S. Yard relied on dictionary definitions of "smart" and "raster" and evidence that the terms "smart raster" and "smart raster technology" are used in the field of geology and oil and gas exploration. "The evidence submitted by the examining attorney shows that 'smart raster' is the term used for the display of 'calibrated' or enhanced well log data or well log images, or the technology to produce such images." Not surprisingly, the Board found that the deletion of the space between the two words has no effect on the meaning of term.

The Board concluded that SMARTRASTER is "highly descriptive" of Applicant's services because it "immediately tells consumers that a major characteristic of its imaging of the date in its [services] uses smart raster technology. That is, the mark describes the fact that applicant's SMARTRASTER services add more information and functionality to conventional well log raster images."

As to acquired distinctiveness, Applicant had a "heavy burden" in light of the highly descriptive nature of the mark. It claimed use of the mark since 1995 and provided statistics and other information regarding the mark, but the Board was not impressed. Applicant did not submit its advertising figures or information as to the number of customers. There were "gaps" in its evidence regarding website hits and distribution of flyers. The Board concluded that the evidence fell "far short" of satisfying Section 2(f).

And so the Board affirmed the refusal.

TTABlog note: Applicant tried to argue that its mark was inherently distinctive (now there's a stretch!), but the Board refused to hear the argument because Applicant, by claiming acquired distinctiveness, had waived that argument.

Text Copyright John L. Welch 2011.

TTABlog Job Posting: Experienced IP Attorney Seeks Position in Massachusetts/Rhode Island

Mid-level attorney (2006 graduate) with large firm experience seeking a position in Massachusetts or Rhode Island. Experience is focused on all aspects of trademark law (clearance/prosecution/enforcement/transactional), with additional experience in copyright counseling/registration and support of patent prosecution/transactions. Representative industries of experience include banking/financial services, food products, computer hardware/software and medical/pharma research.

May be interested in junior-level positions or positions in New York, if the opportunity is a good fit. Licensed in Massachusetts, and eligible for reciprocity in NY in early 2012. Please send inquiries to John Welch (jwelch at lalaw.com) to arrange for an introduction.

TTAB Posts November 2011 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled six (6) oral hearings for the month of November, 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.


November 3, 2011 - 11 AM: In re Cold Spring Granite Company, Serial No. 77888783 [Section 2(d) refusal of SIERRA WHITE for "granite, cut stone, dimensional stone, slabs of granite, and monumental stone," in view of the registered mark SIERRA STONE for "cast stone"].


November 8, 2011 - 2 PM: In re Quicksilver, Inc., Serial No. 77734610 [Section 2(e)(1) mere descriptiveness refusal of SURF COUTURE for a variety of optical goods, clothing and clothing accessories].


November 15, 2011 - 2 PM: Stoncor Group, Inc. v. Specialty Coatings, Inc., Opposition No. 91187787 [Opposition to ARMORSTONE for "clear and pigmented coatings used in the nature of paint; Glazes; House paint; Interior paint; Mixed paints; Paint for concrete floors; Paint primers; Paint sealers; Paint thinner; Paints; Paints and lacquers; Pavement striping paint; Epoxy coating for use on concrete industrial floors," on the grounds of mere descriptiveness and likelihood of confusion with various registered marks containing the prefix STON- for goods that include epoxy hardeners].


November 16, 2011 - 2 PM: In re University of Georgia Research Foundation, Inc., Serial No. 77781694 [Section 2(d) refusal of TIF for "turfgrass" in view of the registered mark TIFBLAIR THE CERTIFIED CENTIPEDE & design for "grass seed" [CERTIFIED CENTIPEDE disclaimed].


November 17, 2011 - 2 PM: In re The Advice Company, Serial No. 77005059 [Section 2(e)(1) mere descriptiveness refusal of ATTORNEYPAGES for "Providing an on-line searchable commercial information directory on the Internet featuring information regarding lawyers and legal service providers and business information in the field of lawyers and legal service providers," and Section 2(d) refusal in light of the registered mark ATTORNEYYELLOWPAGES.COM for "on-line business directories featuring attorneys"].


November 22, 2011 - 2 PM: American Computer Associates, Inc. v. Model American Computer Corporation, Cancellation No. 92023939 [Petition for cancellation (filed in 1995) of a registration for the mark MODEL AMERICAN for "computer hardware, namely processor, keyboard, monitor and memory unit and computer utility programs," on the ground of abandonment].


Text Copyright John L. Welch 2011.