Friday, December 30, 2011

CAFC Affirms TTAB Default Judgment Cancelling Registration Due to Failure to Comply with Discovery Orders

In a precedential opinion, the U.S. Court of Appeals affirmed the TTAB's decision in Super Bakery, Incorporated v. Ward E. Benedict, 96 USPQ2d 1134 (TTAB 2010) [precedential]. [TTABlogged here]. The Board, on remand from an earlier CAFC appeal, ruled that Rule 2.127(d) does not provide an automatic stay of a proceeding when a party files a motion for summary judgment. "Rather, only an order of the Board formally suspending proceedings has such effect." As a consequence, the Board again granted Super Bakery's petition for cancellation as a sanction against Respondent Benedict for failure to comply with a Board discovery orders. The CAFC here disagreed with the Board's interpretation of the Rule, but nonetheless affirmed the Board's entry of judgment by default. Ward E. Benedict v. Super Bakery, Incorporated, 101 USPQ2d 1089 (Fed. Cir. 2011) [precedential].


In the first CAFC appeal, the court remanded the case [here] with a directive that the Board consider the impact of Rule 2.127(d) on its decision to grant judgment by default. Benedict claimed that under the Rule, the proceeding was stayed automatically when he filed his motion for summary judgment, and therefore that he did not have to respond to discovery by the date set in the Board's order compelling discovery (the day after Benedict filed his summary judgment motion).

On remand, the Board took the view that despite the language of the Rule that "the case will be suspended," the suspension did not occur until the Board actually issued a suspension order. In this second appeal, the CAFC ruled that the Board had misinterpreted the Rule, and that the proceeding was automatically stayed on the day the summary judgment motion was filed. [TTABlog note: see the first comment to this post, which makes an excellent point, urging that the CAFC did not say the Board's interpretation of the Rule was wrong, but rather that the Rule was not clear enough for purposes of the imposition of the sanction of default].

In any event, the CAFC ruled that the entry of judgment by default was "well supported without this event."

There had been two years of failure to comply with discovery requests and orders. The Board discussed Mr. Benedict’s repeated non-compliance with Super Bakery’s discovery requests, as well as his non-compliance with the Board’s orders concerning discovery. Although the Board criticized the "meritless" motion for summary judgment as "an effort to further obstruct petitioner's rights to obtain discovery under the Board's rules, the Board's order compelling discovery, and the Board's order granting discovery sanctions," 96 USPQ2d at 1136, the Board’s finding that "[t]here is no reason to assume that, given additional opportunities, petitioner will fulfill his obligations as a party to the proceeding," id., is supported by the entire experience of this case.

The question was whether the Board abused its discretion by entering default judgment. The CAFC said no. "On the entirety of the record, the Board’s orders were reasonable, and within its authority in seeking to advance the proceedings. The remedy of default judgment was within the Board’s discretion in view of Mr. Benedict’s repeated failures to comply."

TTABlog comment: So the CAFC remanded in order that the Board might apply Rule 2.127(d), and then when the Board applied the Rule, the CAFC said the Board got it wrong. But the CAFC affirmed anyway. So what was the point of the remand?

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 12/30/2011   4 comments

TTABlog Quarterly Index: October-December 2011

E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. You may also follow the blog on Twitter (here). And don't forget to leave your comments! [Note to E-mail subscribers: you must surf to the blog to see comments]. Finally, please report any broken or inoperative links, as well as any errors and omissions, to the TTABlogger at jwelch at lalaw.com.

(click on photo for larger picture)

Section 2(a) - Immoral or Scandalous:

Section 2(a) - False Association:

Section 2(d) - Likelihood of Confusion:

Section 2(e)(1) - Mere Descriptiveness:

Section 2(e)(1) - Deceptively Misdescriptive:

Section 2(e)(2) - Primarily Geographically Descriptive:


Section 2(f) - Acquired Distinctiveness:

Section 10 - Illegal Assignment of ITU:

Dilution:

Fraud::

Genericness:



Goods in Trade:

Concurrent Use:

Discovery/Evidence/Procedure:

Ownership:

Use in Commerce/Drawing/Specimen of Use:

CAFC Oral Arguments/Decisions:

Recommended Reading:

Other:

Text and Photographs (of First Encounter Beach) Copyright John L. Welch 2011.

posted by John L. Welch @ 12/30/2011   0 comments

Thursday, December 29, 2011

Precedential No. 35: Finding Applicant's Medical Reports not to be Goods In Trade, TTAB Affirms Refusal to Register

Ameritox Ltd. sought to register the mark RX GUARDIAN for "printed reports featuring medical laboratory results provided to medical practitioners for record keeping purposes." [see the specimen of use shown below.] The Board, however, agreed with Examining Attorney Verna B. Ririe that the reports are merely "part and parcel" of Applicant's laboratory testing services and are not "goods in trade" sold separately. And so the Board affirmed the refusal to register under Section 1, 2, and 45 of the Lanham Act. In re Ameritox Ltd., 101 USPQ2d 1081 (TTAB 2011) [precedential].

(click on photo for larger picture)

On its website, Ameritox refers to its "Rx Guardian (SM) process." Based on the website and the specimen of use, the Examining Attorney maintained that the subject reports were nothing more than a vehicle by which the results of Applicant's services are reported. They are not available as separate "goods in trade."

The Board noted that ancillary items, like invoices, forms, and reports, used to conduct business do not constitute goods in trade. It found that Applicant's website demonstrates that RX GUARDIAN is a drug testing and reporting service. Applicant does not advertise the reports separate and apart from its services. The reports merely provide information based on the particular test results.

In short, "[t]he fundamental question in this case is what is being offered for sale under the RX GUARDIAN mark?" There was no evidence that Ameritox sells reports apart from its services; instead, the reports are "part and parcel" of its services, and thus are not "goods in trade."

TTABlog note: To find several additional examples of "goods in trade" refusals, stick that phrase in the TTABlog search box.

Text Copyright John L. Welch.

posted by John L. Welch @ 12/29/2011   1 comments

Wednesday, December 28, 2011

WYHRR? TTAB Reverses 2(d) Refusal of MLOCKER Over "M" Designs for Differentials

Applicant Eaton Corp. applied to register the mark MLOCKER for "land vehicle differential," but the PTO refused registration under section 2(d), finding the mark likely to cause confusion with the two registered marks shown below, for various automotive goods, including "differential carrier assemblies, differentials and parts thereof." If you were an Examining Attorney, Would You Have Refused Registration [WYHRR]? In re Eaton Corp., Serial No. 85030456 (December 8, 2011) [not precedential].

The Board found the involved goods to be identical or closely related. Consequently, it presumed that the goods travel in the same, normal channels of trade to the same, usual purchasers of such goods.

Eaton argued that the purchasers would be sophisticated and knowledgeable about the specifications of the goods. The Board, however, pointed out that even sophisticated purchasers are not immune to source confusion when the goods are identical or related and the marks highly similar. [So much for the sophistication argument! - ed.].

Switching gears, the Board turned to a comparison of the marks. The Examining Attorney contended that they are "legally identical," pointing to third-party registrations and prior registrations owned by Eaton in which LOCKER is disclaimed for similar goods, and to Internet webpages in which LOCKER is used to describe a feature or characteristic of differentials.

As a result, the examining attorney argues “the applicant's addition of the generic term LOCKER is of minor significance when looking at the overall commercial impression. The dominant portion of applicant’s and registrant's marks is the letter M."

The Board took a differential view: even assuming that the cited marks comprise a stylized letter M, the involved marks "differ sharply" in appearance and sound. And even if the word LOCKER is a weak formative for these goods, it still contributes to the visual and aural impression created by Eaton's mark.

Moreover, the cited marks are stylized letter marks, which "partake of both visual and oral indicia." These marks are "in the gray region between pure design marks which cannot be vocalized and work marks which are clearly intended to be." In short, in this trademark twilight zone, a stylized letter design "can not be treated simply as a word mark." Here, the stylization in the cited mark is "so high that they are more akin to design marks rather than simply stylized displays of the letter 'M.'"

Considering the marks in their entireties we find that registrant’s marks are so highly stylized that they project the image of design marks and the letter takes on its significance only by reference to registrant’s trade name Mohawk Manufacturing & Supply Co., Inc. *** In contrast, the significance of applicant’s mark is focused on the letters MLOCKER in standard characters, notwithstanding the weakness of LOCKER in relation to the goods. Thus, we find that the marks are not so similar in sound, appearance, connotation or commercial impression, that, merely because such marks share the letter M, confusion as to origin or association is likely.

And so the Board reversed the refusal to register.


TTABlog comment: Well, would you have refused registration?

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 12/28/2011   4 comments

Tuesday, December 27, 2011

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

Let's see if you can predict the outcome of these three Section 2(d) likelihood of confusion appeals just by looking at the marks and the identified goods, without more. [The last time I did this, some readers were miffed that I didn't provide the answer right in the blog post. Well, I'll tell you that one of the three refusals was reversed. Which one? See the comment below, but don't peek.]


In re Smith & Vandiver Corp., Serial No. 77492026 (November 29, 2011) [not precedential]. Refusal to register SKIN NUTRITION for non-medicated toilet preparations, namely, hand and body soaps, skin cleansers, and the like, in view of the registered marks NATURE'S SKIN NUTRITION and NUTRIMAX SKIN NUTRITION for identical products, owned by two different registrants. [SKIN NUTRITION disclaimed in both registered marks].


In Revolution Energy Solutions LLC, Serial No. 76696032 (December 5, 2011) [not precedential]. Refusal to register REVOLUTION E BUILDING for building materials for agricultural uses, including swine, dairy and poultry farms, in light of the registered mark REVOLUTION "primarily non-metal, transportable, semipermanent, span fabric roofed buildings."


In re Savage Tales Entertainment, LLC, Serial No. 77816357 (December 8, 2011) [not precedential]. Refusal to register PETER CANNON THUNDERBOLT for "comic books; comic magazines; graphic novels; posters; trading cards" in view of the registered mark THUNDERBOLTS for "publications, namely, comic books and comic magazines and printed stories in illustrated form featured in books and magazines; posters."


TTABlog comment: The last two were affirmed. Note that the first case is a reverse-Knight Textile situation. [TTABlogged here] In Knight Textile, the mark NAUGHTON MCNAUGHTON ESSENTIALS was deemed registrable over ESSENTIALS for clothing, due to the weakness of the mark ESSENTIALS.

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 12/27/2011   0 comments

Friday, December 23, 2011

TTABlog Holiday Gift: The Entire Nov-Dec 2011 Issue of The Trademark Reporter

When I give a Christmas present, I like it to be something useful and enduring. (Don't tell my wife, but I got my her a Shop Vac). For my dear readers, I have just such a gift: the entire November-December 2011 issue of The Trademark Reporter (Vol. 101 No. 6), featuring a star-studded lineup of authors. Once again, I thank my friends at TMR for granting me permission to post these articles. [Note to e-mail subscribers: you will have to surf to the TTABlog to find active links to the articles].


Vincent N. Palladino, Lanham Act "False Advertising" Claims: What Is a Plaintiff to Do?

Anthony L. Fletcher, Defensive Aesthetic Functionality: Deconstructing the Zombie.

Daniel R. Bereskin, Q.C., Anti-Dilution, Anti-Free-Riding Laws in the United States, Canada, and the EU: Bridges Too Far?.

Dennis S. Prahl and Eric Null, The New Generic Top-Level Domain Program: A New Era of Risk for Trademark Owners and the Internet.

Miles J. Alexander, Eric Goldman, The Rt. Hon. Professor Sir Robin Jacob (Speakers) and J. Thomas McCarthy (Moderator), A Century of Trademark Law - Looking Back and Looking Forward.

INTA Amicus Brief in International Hair Cosmetics Ltd. v. International Hair Cosmetics Group Pty.

INTA Amicus Brief in PT Bintang Pesona Jagat v. PT Karya Tajinan Prima.

INTA Amicus Brief in Christina Louboutin S.A. et al. v. Yves Saint Laurent America Holding, Inc. et al.

Book Reviews:

Intellectual Property Strategies for the 21st Century Corporation: A Shift in Strategic and Financial Management. By Lanning G. Bryer, Scott J. Lebson, and Matthew D. Asbell (Editors). Reviewed by Maria K. Nelson.

Trademark and Copyright Litigation. By Mark V.B. Partridge and Phillip Barengolts. Reviewed by Susan D. Rector.

TTABlog note: These articles are Copyright © 2011 the International Trademark Association and are reprinted with permission from The Trademark Reporter®, Vol. 101 No. 6 (November-December 2011).

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 12/23/2011   0 comments

Thursday, December 22, 2011

TTAB Finds HANGBOARD Not Generic for ... Guess What?

Okay, that's an unfair question. HANGBOARD could be "not generic" for a roast beef sandwich, or most anything. But what about "winter sports and recreation equipment, namely, snowboards, sleds?" Applying the In re Gould test for compound words, the Board concluded that the PTO had failed to meet its burden to prove genericness by clear evidence, and so the Board reversed the refusal to register the mark on the Supplemental Register. In re SEI Manufacturing, Inc., Serial No. 78648865 (December 5, 2011) [not precedential].


The Board began by finding HANGBOARD more analogous to a compound word (as in Gould) than a phrase (as in American Fertility). Therefore dictionary definitions of the constituents words may suffice to prove genericness, provided that the words when joined in the compound retain their meaning.

The Board found the genus to be adequately defined by the identification of goods. The question, then, was whether the relevant public understands the term HANGBOARD to refer primarily to that genus.

The Examining Attorney submitted definitions of HANG and BOARD, which would lead one to conclude that a "hangboard" is a "board that hangs," or "a board from which one hangs." Our Board concluded, however, that these definitions do not adequately establish that HANGBOARD is generic for the identified goods, since Applicant's product is neither. Internet excerpts submitted by the Examining Attorney used the terms "hangboard" and "hangboarding," sometimes with initial caps on the two words, but this mixed evidence was insufficient to prove of genericness.

In sum, the Board found that the PTO's evidence "falls somewhat short" of proving genericness:

This is not a case where the Office has clearly proven that the designation as a whole is no less generic than its constituents. Indeed, the dictionary definitions fail to clearly support a finding of genericness, and the Internet vidence shows mixed usage of HANGBOARD as a mark and as a descriptive term for an apparatus that allows the user to ride a snowboard while hanging from above as opposed to being attached at the feet.

The Board noted that, on a different record, such as one that might be provided by a competitor in an opposition proceeding, the result might be different. Noting that any doubt must be resolved in Applicant's favor, the Board reversed the refusal.

TTABlog comment: Well, what would you call this contraption? How about a "snow sling?" The inventor called it a HANGBOARD. Maybe if and when the thing becomes popular, evidence of genericness will be easier to amass. But so far, this Applicant has survived on that slippery slope.

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 12/22/2011   4 comments

Wednesday, December 21, 2011

Test Your TTAB Judge-Ability: Is GREEN BANK Merely Descriptive of Banking Services?

In 2007, the Board reversed a mere descriptiveness refusal of the mark GREEN BRANCH for banking services. (TTABlogged here). So surely GREEN BANK and GREEN BANCORP, INC. are not merely descriptive! But wait! The GREEN BRANCH decision was chosen as one of the ten worst TTAB decisions of 2007 by the esteemed TTABlog. So now what? Perhaps we should look at the record evidence. In re Green Bancorp, Inc., Serial Nos. 78659563 and 78659571 (December 5, 2011) [not precedential].


Mere Descriptiveness: Examining Attorney Laura A. Hammel argued that the marks are merely descriptive [note that BANK and BANCORP, INC. were disclaimed] because Applicant's services are "environmentally beneficial." The services feature electronically-delivered statements and online bill payment, and customers may recycle paper at the bank [not the same as laundering - ed.]. Applicant maintained that GREEN has many meanings and therefore consumers will have to pause and reflect on the marks before gleaning anything specific about the services.

The Examining Attorney relied on a dictionary definition of "green" (environmentally sound or beneficial) and on several website pages using the term "green bank" descriptively in connection with environmentally-efficient banking. Applicant's response to the PTO's request for information, and its own website (here) discussed its eco-friendly focus.

Applicant argued that the GREEN BRANCH case "squarely addressed the issue of whether the term GREEN is merely descriptive of banking services." The Board, however, once again noted that each case must be decided on its own record. Applicant did not persuade the Board that the facts in this case are the same as in the GREEN BRANCH case.

Finally, the Board was not persuaded by Applicant's multiple-meaning argument, concluding that, based on the record, consumers would perceive only the environmental/ecological connotation of GREEN.

And so the Board affirmed the Section 2(e)(1) refusal.

Likelihood of Confusion: The PTO also refused registration under Section 2(d) ground, finding likely confusion with the registered marks GREEN SAVINGS, GREEN CHECKING, and GREEN BRANCH for legally identical services.

Applicant primarily argued that the word GREEN is a weak formative, pointing to 13 "Green" mark registrations for banking services, including GREEN STATION, GREEN CARD, GREEN CHECKING, GREEN SAVINGS, GREEN BRANCH, GREEN NETWORK, and GO GREEN REWARDS CHECKING. The Board found it unnecessary to discuss these prior registrations, since it had already concluded that GREEN "has the meaning of environmentally or ecologically friendly or environmentally conscious" in this context. Thus the three cited marks are, according to the Board, "highly suggestive."

Applicant argued that banking customers exercise more than ordinary care in their decisions, but the Board correctly cited Amalgamated Bank (a frequently mis-cited case) for the proposition that some consumers choose their banks with care, but others do not.

As to the marks, the question was whether the addition of the word BANK or the words BANCORP, INC. to GREEN is sufficient to distinguish Applicant's marks from the cited marks. In light of the clear meaning of GREEN and the limited scope of protection accorded the cited marks, the Board found that the differences in the marks outweighed their similarities, and so it reversed the Section 2(d) refusals.

TTABlog comment: Apparently it took some time for the PTO (and the Board) to realize that GREEN has a descriptive meaning in connection with environmentally-friendly banking services. Maybe the GREEN BRANCH decision should be taken to a green bank for re-cycling.

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 12/21/2011   0 comments

Tuesday, December 20, 2011

"Fame Law: Requiring Proof of National Fame in Trademark Law," by Xuan-Thao Nguyen

The TTAB has not posted a decision on its FOIA webpage for four weeks. So let's continue with our supplementary reading on dilution. Here is an article by Xuan-Thao Nguyen entitled Fame Law: Requiring Proof of National Fame in Trademark Law, 33 Cardozo Law Review 89 (2011). Professor Nguyen argues that, under the TDRA, not only must the fame of a mark be nationwide in order to qualify for dilution protection, but also the mark must be recognized by at least 70% of the general consuming public.


Professor Nguyen asserts that courts have had problems with the TDRA's fame standard. Some continued to apply the rejected concept of niche fame. Others ignored the fame standard altogether, zeroing in on the dilution by blurring or tarnishment question. Still others superficially considered fame and wound up with questionable conclusions.

In her view, "the courts should impose upon the plaintiff the burden of submitting a consumer survey evidencing the overall, general consuming public recognition of the trademark throughout the United States." Evidence of sales volume, advertising and promotional expenditures, and geographical reach would still be required, but they "should not be a substitute for consumer survey evidence proving at least seventy percent of the general consuming public" recognizes the mark.

For other articles and pertinent Board decisions, type the word "dilution" into the TTABlog search box, and see what comes up.

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 12/20/2011   4 comments

Monday, December 19, 2011

Reccommended Reading: Sandra L. Rierson, "The Myth and Reality of Dilution"

If the Board's recent dilution decisions have you scratching your head, maybe it's time to take a step back from the front line to consider what this dilution thing is all about. Here's an article by Prof. Sandra L. Rierson, entitled The Myth and Reality of Dilution, that reviews the history and development of the law of dilution, discusses its flaws, and offers a novel explanation as to why trademark owners embrace the dilution concept.

Prof. Rierson

FOB (Friend of the Blog) Professor Stacey Dogan provides a concise review of the article here. By way of introduction, Prof. Dogan observes that:

After several years of witnessing the dilution laws in action, ... the nature of the commentary has shifted. Scholars have gone from a state of wary watchfulness to one of bemused head-scratching, as they have unpacked the theoretical underpinnings of the doctrine and observed its treatment in the courts. Dilution laws, it turns out, are a solution in search of a problem, and have had little practical effect.

Professor Rierson concludes that the law of dilution should either be abolished or substantially reformed. She argues, first, that there is no empirical support for the assumption that the source-identifying function of a famous mark is dissipated when others uses the same word. Without such proof, the justification for dilution law vanishes.

Second, providing a legal claim for dilution has significant costs that outweigh the supposed harm caused by dilution. "Dilution claims inflict profound anticompetitive burdens, preclude beneficial comparative advertising, and entrench dominant (often oligopolist) firms at the expense of market entrants. Dilution has serious non-economic costs as well and prohibits protected First Amendment speech without justification."

Third, the real basis for federal dilution "lies not in alleged economic harms, but rather results from an entirely misplaced fiction of corporate personality. We do not require trademark holders to prove actual economic injury in the context of a dilution claim because, in truth, there is none. Instead, we have granted the holders of famous trademarks the equivalent of a “moral” right to these marks."

When dilution is recognized for what it really is, it becomes even harder to justify its existence. Although the Pillsbury Doughboy and Barbie may well be trademarks that are imbued with personality traits in the minds of consumers (as well as in the minds of their respective corporate parents), they do not have the type of creative “soul” that normatively warrants this type of protection. Properly viewed, the federal dilution statutes of 1995 and 2006 are legislative precursors to the type of corporate personification that gave rise to the analogous treatment of corporate entities by the United States Supreme Court in Citizens United in 2010 and are equally misplaced. Trademark owners do not have an abstract moral right to ownership of particular words. Absent anticompetitive effects, those words properly remain in the public domain. By granting monopoly protection to famous marks notwithstanding the absence of actual economic injury, the federal dilution statute turns competition on its head, and serves only to entrench and further concentrate economic power in the hands of dominant corporate firms at the expense of consumers and competitors alike.

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 12/19/2011   3 comments

Friday, December 16, 2011

TTAB Affirms Genericness Refusal of THREE CARD POKER for Gaming Services

Rejecting Applicant's Thermos and Teflon surveys as fundamentally flawed, the Board affirmed a refusal to register THREE CARD POKER for "entertainment services, namely, providing live games of chance in gaming establishments," on the ground of genericness. In re Shuffle Master, Inc., Serial No. 77394063 (December 8, 2011) [not precedential].


Evidentiary squabbles: Examining Attorney Katy Halmen successfully objected to Applicant's untimely submission of a declaration with its reply brief. Applicant argued that this was tardy submission was permissible because the Examining Attorney had included new evidence in her denial of its request for reconsideration and Applicant had no chance to reply. The Board pointed out that the Examining Attorney is allowed to submit new evidence during reconsideration. If Applicant wanted to submit more evidence, it should have requested that the Board remand the case to the PTO.

Genericness: The Examining Attorney relied on dictionary definitions of "poker," "Texas Hold 'Em", "Draw Poker" and "Stud Poker" in contending that the genus of Applicant's services is "providing three card poker games of chance." Applicant urged that this was too narrow and that the proper genus is defined by its recitation of services.

The Board looked to Applicant's own submission describing its services, which made clear that the recited services encompass a particular version of poker. Therefore, the genus "may be accurately identified as providing live games of chance in gaming establishments, including a variation of the game of poker."

Next, the Board deemed the relevant consumers to be the general public who encounter games of chance in gaming establishments.

The jackpot question was whether these consumers understand THREE CARD POKER to refer primarily to the genus of services. Since the designation at issue is a phrase, dictionary definitions and generic uses of the constituent terms would not suffice to show genericness. Pursuant to American Fertility, the Board must discern the meaning of the phrase as a whole.

The Board found that the Examining Attorney had met her burden of proof. She relied on various Internet excerpts and LEXIS/NEXIS articles referring to "three card poker." Applicant contended that these items consisted of "nominative uses" referring to Applicant, and that many of the articles refer to licensed uses of its mark. The Board was not persuaded. It asserted that Applicant itself uses "three card poker" generically in its patents, as in this excerpt:

The present invention comprises a casino style wagering game against a dealer, comprising the steps of placing a wager, dealing a three card poker hand to each player ... [emphasis supplied by the Board]. [This doesn't seem like a generic use to me, but merely a description of the number of cards dealt - ed.]

Moreover, the licensees use THREE CARD POKER combined with other words and/or designs, rather than the phrase by itself. [see example below].


The Board acknowledged that many of the excerpts and articles use the phrase to refer to Applicant, but that was not enough to overcome the evidence of generic use.

Finally, the Board looked at Applicant's survey evidence, purporting to use both a Thermos and a Teflon style methodology, and found it to be fundamentally flawed. The respondents were not properly screened and the survey choices were poorly worded. Moreover, although Applicant argued that responses saying that "three card poker" referred primarily to a "specific type of poker" were favorable to its position, the Board found the opposite.

The Board concluded that, "despite some evidence of licensed and trademark use," the Examining Attorney had met her burden to prove genericness.

Acquired Distinctiveness: Applicant had applied to register the subject phrase under Section 2(f), thereby conceding that the phrase is not inherently distinctive. For the sake of completeness, the Board considered Applicant's 2(f) argument. It found that the evidence amply demonstrated that the mark is at least highly descriptive, and therefore Applicant's burden to prove acquired distinctiveness is increased.

Proof of use of the phrase since 1995 was not enough. Nor were annual revenues of $30-40 million, sponsorship of tournaments and other promotional activities, unsolicited media coverage, and ownership of other registrations for marks including the same phrase. Although this evidence demonstrates the success and popularity of the game, it is not sufficient to prove acquired distinctiveness in view of the highly descriptive nature of the proposed mark.

And so the Board affirmed both refusals; genericness and mere descriptiveness.

TTABlog comment: If the game was patented and no one could provide the game without a license, why didn't all uses of THREE CARD POKER refer to licensor? And in that case, would any evidence of exclusive use be probative of secondary meaning?

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 12/16/2011   2 comments

Thursday, December 15, 2011

Precedential No. 34: TTAB Approves Geographic Restriction in Concurrent Use Proceeding Despite Overlap of Parties' Territories

This concurrent use proceeding grew out of a prior opposition between the parties, involving Holmes' mark CRUIZERS in the logo form shown immediately below, for "retail store services featuring convenience store items and gasoline." Myers claimed likelihood of confusion with its registered mark MYERS CRUIZERS DRIVE-IN for "restaurant services." The parties filed a consent motion to terminate that proceeding in favor of this concurrent use proceeding, and then requested entry of an amendment to Holmes's application to restrict the services to the geographical area that comprises the United States except for Arkansas. Holmes Oil Company, Inc. (by assignment from R. Dwayne Meadows) v. Myers Cruizers of Mena, Inc., 101 USPQ2d 1148 (TTAB 2011) [precedential].


Myers promptly filed a motion to implement the parties' settlement agreement, which provided that Holmes would obtain a registration that excluded Arkansas, while the registration owned by Myers would remain unrestricted.

The Board noted that in the usual concurrent use proceeding, each party seeks a different geographical area for its mark. By way of contrast, if a consent agreement is involved, rather than a concurrent use agreement, generally there is no geographical restriction on either mark. This case is only "nominally" a concurrent use proceeding since the agreement provides for use of the involved marks in overlapping territories [i.e., the territory of Not-Arkansas - ed.]. However, according to Trademark Rule 2.99(h), the TTAB may consider concurrent use rights "only in the context of a concurrent use registration proceeding."

The question for the Board was whether the parties can co-exist under the agreement, without there being a likelihood of confusion. A consent agreement is entitled to great weight on that issue if it "includes information as to why the parties' believe confusion is unlikely, ... evidences the parties' business-driven belief and conclusion that there is no likelihood of confusion, and ... includes provisions to avoid any potential confusion."

The parties' agreement was confidential, but the Board noted that it was intended to resolve trademark claims, it included provisions to address actual confusion that might arise, and it indicated the nature of each party's use and included restrictions on use. The agreement, however, could have been improved if it included more details regarding the steps to be taken in the case of actual confusion, and an explanation of why the parties think that confusion is not likely.

The Board concluded that this agreement between parties knowledgeable as to the relevant trade and market practices is "adequate evidence that confusion is not likely and supports Holmes' right to register the mark in question." It therefore approved the proposed geographical restriction to Holmes' application.

Map of Not-Arkansas

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 12/15/2011   4 comments

Wednesday, December 14, 2011

WYHA? TTAB Affirms Refusal of TEAM GEORGIA MARKETPLACE Without Disclaimer of MARKETPLACE

Applicant disclaimed GEORGIA but not MARKETPLACE in its applied-for mark TEAM GEORGIA MARKETPLACE for services involving procurement and government contract management. Examining Attorney Jessica A. Powers consequently refused registration under Section 6(a) of the Lanham Act. Would you have appealed? In re Georgia Department of Administrative Svcs., Serial No. 77792242 (November 21, 2011) [not precedential].


The Examining Attorney relied on dictionary definitions of MARKETPLACE, Internet excerpts showing use of GEORGIA MARKETPLACE and third-party registrations that either included disclaimers of MARKETPLACE or resided on the Supplemental Register. She contended that:

the wording GEORGIA MARKETPLACE is merely geographically descriptive in relation to the applicant’s ordering, procurement and business services taking place in or specifically targeting businesses that operate in the state of Georgia and further that the term MARKETPLACE is itself descriptive of a characteristic of those services, namely, buying, selling and general economic activity.

The Board found that the Examining Attorney had made a prima facie case that MARKETPLACE is merely descriptive of Applicant's services.

Applicant feebly argued that some imagination or reasoning would be required to connect the word MARKETPLACE with the services, but the Board found that the term is "not so vague that consumers will not understand its meaning in relation to applicant's services."

Applicant submitted a list of third-party registrations and applications for marks containing the word MARKETPLACE. The Board accepted the list, since the Examining Attorney did not timely object, but it accorded the list no probative value since the goods and services involved were not indicated. Moreover, third-party applications have no evidentiary value, other than to show that they were filed.

Finally, Applicant submitted a third-party registration for the mark TEXAS MARKETPLACE for "business resource referral services," which issued without a disclaimer. The Board found that evidence "inconclusive."

In fact, this registration highlights why prior decisions in other applications are not binding on the Board and underscore the need to evaluate each case on its own record. In re Nett Designs Inc., 57 USPQ2d 1564.

And so the Board affirmed the refusal, but it allowed Applicant thirty days to submit the required disclaimer of MARKETPLACE.

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 12/14/2011   2 comments

Tuesday, December 13, 2011

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

I heard a TTAB judge say not long ago that the outcome of most Section 2(d) likelihood of confusion cases can be predicted just by looking at the marks and the identified goods/services, without more. Well, your would-be honor, try your skills on these three refusals:


In re Midwestern Pet Foods, Inc., Serial No. 77327252 (November 16, 2011) [not precedential]. Refusal to register KITTY NIBBLES for "cat treats" in view of the registered mark KITTEN LI'L NIBBLES for "cat food and cat treats."


In re Bernstein, Serial No. 77743350 (November 17, 2011) [not precedential]. Refusal to register WE THE PEOPLE PLAN for a website providing information about politics, on the ground of likely confusion with the registered mark WE THE PEOPLE for "promotion of public awareness of the need for political reform."


In re Sherwood Development Group LLC, Serial No. 77784128 (November 22, 2011) [not precedential]. Refusal of NOURISH KIDS for frozen food items, in view of the registered mark NOURISH for various food items, encompassing some of Applicant's goods].


TTABlog comment: Well how did you do? Here's a hint: all three cases came out the same way.

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 12/13/2011   6 comments

Monday, December 12, 2011

Precedential No. 33: TTAB Rejects ROLEX Dilution Claim for Failure to Prove Likely Impairment of the Distinctiveness of the Mark

The Board's recent JUST JESU IT and MOTOWN METAL decisions seemed to waken the Rip Van Winkle of TTAB jurisprudence - Section 43(c) dilution - from its long slumber. By discarding its "substantial similarity" or "near identity" standard for comparing the marks at issue, the Board had surely made it easier to prove dilution. But this new decision may put old Rip back to sleep. The Board dismissed Opposer Rolex's dilution-by-blurring claim, concluding that Opposer had failed to prove that the applied-for mark ROLL-X for "x-ray tables for medical and dental use" would, despite an "actual association" between the marks, impair the distinctiveness of Opposer's famous ROLEX mark. And in a further ruling, the Board dismissed Rolex's claim that Applicant AFP did not have a bona fide intent to use the ROLL-X mark when it filed its application to register. Rolex Watch U.S.A., Inc. v. AFP Imaging Corporation, 101 USPQ2d 1188 (TTAB 2011) [precedential], vacated January 29, 2013 (TTAB). [TTABlogged here].


Fame: The Board had little difficulty finding the ROLEX mark to be famous for dilution purposes based on: nearly one hundred years of use, a lack of any third-party use or registration of similar marks, the fact that the mark is a coined and fanciful term, hundreds of millions of dollars in annual sales, tens of millions of dollars in annual advertising expenditures in a variety of media, and unsolicited, "intense" media coverage.

Fame when?: Most of Opposer's evidence pre-dated the 2008 filing date of Applicant's intent-to-use application, leading the Board to conclude that the fame of the ROLEX mark was well established prior to Applicant's constructive use date.

Dilution by blurring?: Dilution by blurring arises when a substantial percentage of consumers, when seeing the junior party's mark, are immediately reminded of the famous mark and associate the junior party's use with the owner of the famous mark - even if they do not believe that the goods come from that owner. Even if such an association is established, the Board must determine whether such association is likely to impair the distinctiveness of the famous mark.

The Board considered the six non-exhaustive factors set forth in Section 43(c). As to the first factor, the similarity of the marks, the Board noted that Nike v. Maher embraced a new test based simply on a comparison of the marks as to appearance, sound, connotation and commercial impression: i.e., whether the marks are sufficiently similar to cause consumer to conjure up the famous mark when confronted with the junior mark. Here, the Board found that the differences between the marks in appearance, meaning, and commercial impression "greatly outweigh any similarities in pronunciation." More specifically, Applicant's mark is likely to be viewed as comprising the word "roll," as in moving on rollers, and "x," as in x-ray. Thus this factor favored Applicant.

The second factor, the distinctiveness of the famous mark favored Rolex. The third factor, the extent that owner is engaging in substantially exclusive use of the famous mark, also favored Rolex, as did the fourth factor, the degree of recognition of the famous mark.

The fifth factor, whether the junior party intended to create an association with the famous mark, favored Applicant. In fact, the only evidence on the issue indicated that Applicant chose the mark ROLL-X based on the product's attributes.

As to the sixth factor, whether there is an actual association between the junior mark and the famous mark, Rolex relied on a survey targeted on "animal professionals" responsible for purchasing x-ray tables. When asked if something came to mind when first shown the ROLL-X table, 82% said yes, and 42% of those respondents said it was "Rolex/Watch." The Board found this level of association to be insufficient to prove a likelihood of dilution:

This figure is not persuasive given that a higher percentage, 50% of respondents who replied that something came to mind, thought of a feature of the goods (portable, rolling) or the actual goods themselves (x-ray tables/equipment). Moreover, the survey results, while showing an “actual association” between opposer’s and applicant’s marks, do not establish that such an association would impair the distinctiveness of opposer’s famous mark.

The Board concluded that the dissimilarity between the marks, the conflicting results of the survey, and the lack of evidence of Applicant's intent to create an association, outweigh the recognition, distinctiveness, and substantially exclusive use of the ROLEX mark. Moreover, Rolex did not provide any evidence of the degree to which its marketing power would potentially be diminished by Applicant's intended use of its mark. Therefore the Board dismissed Rolex's dilution claim.

Lack of bona fide intent: Rolex also claimed that Applicant did not have a bona fide intent to use the ROLL-X mark at the time it filed its application to register. Indeed, Opposer established a prima facie case by showing that Applicant had no documentation (e.g., labels or advertising materials) to support its claim of a bona fide intent.

However, Applicant AFP submitted sufficient evidence to rebut the claim: it promotes and advertises other imaging products, and it owns the registered mark DENT-X for film processors and x-ray machines and advertises that mark for its human dental x-ray business. Thus the filing of the ROLL-X application was consistent with an extension of AFP's product line. In addition, AFP has the capacity to manufacture and market the goods identified in the challenged application.

And so the Board concluded that Applicant filed its application in good faith, not merely to reserve a right in the ROLL-X mark.

TTABlog comment: Please provide your thoughts on how one would go about proving that the marketing power of a famous mark would be diminished by another mark, particularly one that is not yet in use. Is it a matter of better survey results regarding the percentage of association?

If the marks had been identical, would that have brought a different result? In other words, does proof of dilution by blurring still hinge on proving that the marks are substantially similar or nearly identical?

TTABlog further note: I like to think that the Board took to heart Professor McCarthy's comment, posted on the TTABlog, concerning the June 2010 decision finding dilution of the THE OTHER WHITE MEAT (here):

What I think is missing from the T.T.A.B.’s opinion is any discussion of what “dilution by blurring means” and whether the applicant’s mark was likely to “impair the distinctiveness of the famous mark.” Exactly how would the accused slogan probably sap the strength of the famous slogan? Just by itself or because it would likely be the first of many? The Board is silent.

The Board goes through the non-exclusive list of six factors and assumes in one sentence that blurring is likely: “Accordingly, after considering all the relevant factors, we find herein a likelihood of dilution by blurring.” None of the six factors directs attention to whether there is any evidence that it is likely that the famous mark’s strength will be “impaired.” This statutory omission apparently led the Board to simply ignore this crucial link in the chain of proof.

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 12/12/2011   3 comments

Friday, December 09, 2011

CAFC Hears Oral Argument in MILANZA versus POTENZA and TURANZA Tire Appeal

On December 7, 2011, the CAFC heard oral argument [mp3 here] in an appeal (Appeal No. 2010-1376) from the TTAB's decision in Bridgestone Firestone North American Tire, LLC and Bridgestone Corporation v. Federal Corporation, Opposition No. 91168556 (February 24, 2010) [not precedential]. Despite the identity of goods (tires), channels of trade, and classes of customers, the Board dismissed this Section 2(d) opposition to registration of the mark MILANZA in stylized form, finding the mark not likely to cause confusion with the registered marks POTENZA and TURANZA. "[T]he dissimilarity of the marks simply outweighs the other relevant factors," said the Board.


Appellant Bridgestone argued that the Board had missapplied the CAFC's decision in Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002), and as a result failed to find the marks POTENZA and TORANZA to be famous or strong. The Board ruled that the house mark BRIDGESTONE was always used with POTENZA and TORANZA, which undermined the evidence of fame. In short, the Board found "nothing in the record to demonstrate that the marks ... have achieved significant recognition independent of the BRIDGESTONE mark." Bridgestone argued that, under Bose, the house mark was sufficiently uncoupled from the POTENZA and TORANZA marks that these two marks create their own commercial impressions, separate and apart from the house mark.

As to the marks, the Board found that POTENZA means "power" in Italian. TURANZA "engenders the commercial impression of touring." MILAN suggests something from Milan. On appeal, Bridgestone asserted that the Board ascribed meanings to POTENZA and TORANZA that were not supported by record evidence.

Appellee Federal first faced this uncomfortable question: why did your client choose a mark that is pretty close to a mark that's already out there? Appellee answered that it chose the mark because it wanted an association with Milan (although its tires are not made in Milan). It asserted that the marks POTENZA and TORANZA pale in the shadow of the strong BRIDGESTONE mark.

The panel discussed the standard of appellate review, with one judge stating that he never understand how the standard is to be applied: the underlying factual findings are reviewed with deference under the susbstantial evidence standard, but then the ultimate judgment on likelihood of confusion is de novo.

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 12/09/2011   0 comments

Thursday, December 08, 2011

New PTO "TSDR " System Will Put "Feathers" Database Program in Jeopardy

The many avid users of the "Feathers" trademark database program, the brainchild of Carl Oppedahl, have been rocked by the USPTO's announcement (here) that on or about December 16th it will introduce a new system, Trademark Status and Document Retrieval (TSDR 1.0), that will "redefine the way Trademark status data and all documents will be displayed to the public." The PTO notes that "at a currently undetermined point, both TARR and TDR will disappear. Until then, the links for both TARR and TDR will take the user to an 'interim' page, from which either the existing system can be reached or the new TSDR 1.0 can be accessed."


One can only hope that Carl Oppedahl will come up with a prompt fix for "Feathers." Or maybe the USPTO could delay implementation of the new system until "Feathers" is made compatible? Craig Morris, please pick up the white courtesy phone!

posted by John L. Welch @ 12/08/2011   1 comments

Despite Identity of Marks, TTAB Dismisses 2(d) Opposition for Lack of Proof That Pet Food and Organic/Natural Food Products Are Related

The Board dismissed this Section 2(d) opposition to registration of the mark NATURE'S PROMISE for "food for caged birds, pet food for small mammals, hay." Opposer Ahold claimed likely confusion with the identical mark, registered for natural and organic food and for a grocery store department featuring natural and organic foods. The Board found no evidence that consumers would expect that Applicant's pet food and Opposer's goods and services are related. Ahold Licensing SA v. Premium Nutritional Products, Inc., Opposition No. 91180170 (November 22, 2011) [not precedential].


In an initial procedural skirmish, Applicant objected in its brief to a discovery deposition submitted by Ahold because it was not submitted via notice of reliance. Applicant claimed that it did not know why the brief was filed. The Board agreed that the deposition transcript should have been filed through a notice of reliance; but this involved a procedural objection that Applicant should have made promptly so that the defect could be cured. Because it was not raised promptly, the objection was waived.

Fame? Ahold proved substantial sales of its NATURE'S PROMISE brand products (some 550 different products in all, sold in Ahold's own stores, including GIANT and STOP & SHOP). A brand awareness study indicated that a "very significant portion of opposer's customer base are users of Nature's Promise or purchasers of Nature's Promise." Another study showed that 71% of Ahold's customers were aware of the NATURE'S PROMISE brand. But the Board observed that a survey of Ahold's own grocery store customers is not sufficient to establish fame, and there was no evidence regarding market share or renown among all customers for organic and natural foods. Nor was there any evidence of the marks renown in any media, or of advertising expenditures.

The marks: Identical.

The channels of trade and classes of customers: Identical in part. Applicant's goods are sold through, inter alia, grocery stores and mass merchandisers. Opposer's goods are presumed to travel in all normal trade channels for those goods, and those channels would include grocery stores and mass merchandisers. Furthermore, the people who buy groceries also buy pet food.

The goods and services: There was no testimony or evidence regarding the similarity or dissimilarity of the goods and services. Although the involved goods (as identified) are sold in grocery stores, they are not competitive or complementary products.

Ahold contended that human and pet foods can and do emanate from the same source, and it pointed to the Recot v. Becton case, where the CAFC found pertinent that "several large companies produce and sell both human and pet food." The Board, however, pointed out that, unlike in Recot, here the evidence does not support Ahold's position. There was no evidence that any other company produces and sells human and pet food. "In fact, opposer is the only company identified in this record that produces and sells human and pet food and, in that regard, opposer's pet food has a different trademark (i.e., COMPANION)."

Moreover, the Board noted, the modern supermarket sells many products from many producers and industries. There is no reason to assume that the involved goods "would share a common source merely because they are sold under the same roof."

Furthermore, in Recot, the court found FRITO-LAY to be a famous mark and it ruled that the TTAB had erred in giving limited weight to that fame. The CAFC reasoned that the fame of a mark may affect the likelihood that consumers would be confused when purchasing products that are not closely related.

Likewise, Ahold failed to provide evidence that pet food is related to a grocery store department featuring natural and organic foods.

Conditions of purchase: There was no evidence that consumers would exercise heightened care when purchasing the involved products.

Lack of actual confusion: Applicant's pet food products actually move in different channels of trade than those of Ahold [which goods are sold only in Ahold's own stores, in segmented NATURE'S PROMISE sections], and so there has not been a significant opportunity for confusion to occur. Therefore, the absence of confusion merited little weight.

Balancing the factors: Because Ahold failed to meet its burden to prove that customers "would mistakenly believe that pet food and organic or natural food emanate from the same source because of the similarity of the marks," the Board dismissed the opposition.

TTABlog comment: Compare this decision with the ENSURE decision blogged on Monday, involving human and pet nutritional supplements.

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 12/08/2011   2 comments

Wednesday, December 07, 2011

Test Your TTAB Judge-Ability: Is This Descriptive Mark Sufficiently Stylized To Merit a Principal Registration?

I understand that the TTAB is looking to hire another Administrative Trademark Judge. Here's a chance to prove you've got what it takes. This applicant sought to register the mark shown immediately below for "car auction services" [AUCTION SERVICES disclaimed]. The Examining Attorney refused registration under Section 2(e)(1) on the ground of mere descriptiveness. On appeal, Applicant narrowed the issue to whether the stylization of the mark is "sufficient striking, unique or distinctive so as to create a commercial impression separate and apart from the unregistrable components of the mark." In other words, with all the words disclaimed, is this mark sufficiently stylized to merit a Principal Registration? In re Kar Auction Services, Inc., Serial No. 77852072 (December 1, 2011) [not precedential].


The Board observed that the question at hand is, by nature, fact-specific. Third-party registrations and/or rejected third-party applications carry little weight.

Applicant relied on the Board's decisions on the four marks depicted below, but the Board distinguished the last two cases on their facts:





Applicant also relied on the "IT BAG case" [TTABlogged here]:


The Examining Attorney submitted examples of marks whose refusal was affirmed by the Board:


From these examples, the Board noted, it is evident that the determination at hand is "fact specific and somewhat subjective," and further observing that "[a]s the design aspect decreases it becomes more difficult to discern where to draw the line."

Here, the separation of K and R in Applicant's mark "creates a structural space that given the word KAR a logo/design feel." This differs from the examples cited by the Examining Attorney, in which the words are merely written in a different font.

Overall, we find that the stylization and presentation of applicant’s mark falls more closely within the boundaries of the examples where the presentation of the marks was found to create a separate commercial impression.

And so the Board affirmed the refusal to register on the mere descriptiveness ground, absnet a disclaimer; it gave Applicant thirty days to submit a disclaimer of CAR AUCTION SERVICES, in which case this decision will be set aside.

TTABlog comment: Well, how did you do? Are you TTAB material?

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 12/07/2011   2 comments