INTA, ABA, AIPLA, IPO Respond to USPTO Request for Comments on "Trademark Bullying"

Erik Pelton summarizes here the responses of four trademark/ip organizations to the USPTO's request for comments on the subject of trademark litigation tactics (a/k/a the trademark bully study). [See USPTO request here]. The PTO's report to Congress is due in March.


The full comments of the four organizations may be found here:

AIPLA (American Intellectual Property Lawyers Association)

ABA-IPL (American Bar Association Intellectual Property Law Section)

INTA (International Trademark Association)

IPO (Intellectual Property Owners Association)

Recommended Reading: Ann Gilson Lelonde and Jerome Gilson, "Getting Real with Nontraditional Trademarks"

In the 100th Anniversary issue of The Trademark Reporter, Ann Gilson Lelonde and Jerome Gilson bring us up to date on the law of nontraditional trademarks, in their article entitled: "Getting Real with Nontraditional Trademarks: What's Next after Red Oven Knobs, the Sound of Burning Methamphetamine, and Goats on a Grass Roof, " 101 TMR 186 (January-February 2011). [pdf here].


The authors "recap and update" their 2005 article on the subject and "take a fresh look at the issues inherent in enforcing nontraditional marks." They emphasize that" enforcement is and will continue to be an enormous challenge."

The great American marketing engine has generated a torrent of nontraditional trademarks since our 2005 article on the subject. In the pantheon of sound, flavor, texture, color, scent, and product shape, these marks continue to enliven trademark law and captivate trademark lawyers. They are rarely mundane, occasionally brash, curious, or puzzling, but often creative and witty.

TTABlog comment: the authors point out that, as to flavor, they could find no evidence of any registration for a flavor mark. They note the TTAB 2006 decision affirming a refusal to register the flavor orange for "antidepressants in quick-dissolving tablets." The Board found that the proposed mark was de jure functional. In re N.V. Organon, 79 USPQ2d 1639 (T.T.A.B. 2006) [TTABlogged here].

Recently, there was a discussion of flavor marks on the e-trademarks list serv, where I proposed the following as a possibly registrable flavor mark: suppose a bank includes a particular flavor in the adhesive of its deposit envelopes or mailing envelopes, and advertises that flavor as its trademark. E.g., suppose that the bank’s "corporate color" is blue, and it uses the flavor blueberry on its envelopes. Would that "flavor service mark" avoid a functionality refusal?

Text Copyright John L. Welch 2011.

WYHA? TTAB Affirms Refusal Of "LUVD G & Design" over "THE LOVED DOG" for Clothing

Pro se Applicant Cheryl Lynn Ingberg lost her appeal from a refusal to register the mark LUVD G & Design (shown below) for various human clothing items. The Board found her mark likely to cause confusion with the registered mark THE LOVED DOG for overlapping human clothing items. If it were up to you, would you have appealed? In re Ingberg, Serial No. 776633 (January 31, 2011) [not precedential].


Since the goods in the application and cited registration are in part identical, the Board must presume that they travel in the same channels of trade to the same classes of customers. This factor weighed heavily against Applicant Ingberg.

Moreover, the greater the similarity in the goods, the lesser the degree of similarity in the marks necessary to support a Section 2(d) refusal.

The dominant portion of the cited mark is LOVED DOG, since THE is merely an article. Applicant's mark would clearly be viewed as "LOVEDOG." The connotations of the two marks are similar: either a loved dog or one who loves dogs.


Applicant feebly pointed to several pending applications involving marks containing the words "love" and "dog," but they were not issued registrations and so had no probative value. In any case, each mark must be evaluated on its own merits, and even if the cited mark is a weak mark, it is still entitled to protection.

And so the Board affirmed the refusal.

TTABlog comment: Well, was this appeal a dog, or what? If you had to spend your own time and/or money, would you have appealed? Or is your bark worse than your bite?

Text Copyright John L. Welch 2011.

Snack on This: TTAB Sustains 2(d) Opposition to MYCHEW over HI-CHEW for Candy

The Board didn't waste much time on the substantive issues in sustaining a Section 2(d) opposition to registration of the mark MYCHEW in the stylized form shown below, for candy, finding it likely to cause confusion with the registered mark HI-CHEW in stylized form, also for candy. The Board recognized that "chew" is a weak formative for candy, but it concluded that the marks as a whole are substantially similar.Various procedural issues took up the first half of the 20-page decision. Morinaga & Co., Ltd. v. Crown Confectionary, Co., Ltd., Opposition No. 91171726 (February 17, 2011) [not precedential].


"International Comity": Applicant asserted in its answer that "international comity" required the Board to recognize certain foreign registrability decisions favoring Applicant over Opposer. It also asserted that U.S. membership in the World Trade Organization bars the opposition because the U.S. is prohibited from giving "local preferences."

Applicant did not pursue these affirmative defenses, but the Board proceeded to chew them apart anyway. First, foreign decisions regarding trademark registrability have no effect in the U.S. [Doh! - ed.]. The WTO defense was equally useless: the Board pointed out that the "trademark registration opposition system in the United States provides equal treatment for all opposers and applicants, regardless of their national origin or status in the United States." [Cue the marching band! - ed.]

Third-party registrations: The Board sustained Opposer's objection to Applicant's submission of a list of third-party registrations and applications. A mere list is not a proper way to submit registrations. Moreover, cancelled registrations prove nothing, nor do pending applications.

Applicant did properly submit several third-party registrations, but they are not evidence that the marks are in use, nor are they proof that consumers are familiar with the marks. They may, however, show that a particular word has a readily understood meaning and that it has been adopted by third parties to express that meaning.


Page Limitation Violation?: Opposer claimed that Applicant's trial brief exceeded the applicable page limitation [55 pages, including table of contents, index of cases, description of the record, statement of the issues, recitation of the facts, argument, and summary. See Rule 2.128(b).]

Applicant's brief comprised 49 pages, including table of contents and authorities, but not including the cover pages or certificate of service. It also had a 7-page appendix. The main text was double-spaced in 11-point type (ok under Rule 2.126(b)), but its 53 single-spaced footnotes and six pages of tables were in 10-point type.

The Board noted that footnotes may not be used "as a subterfuge to avoid the page limit." Exhibits or appendices are not part of the brief and do not count toward the page limit. Evidentiary objections may be raised in an appendix (or by a separate statement of objections).

The Board found Applicant's brief to be within the page limitations. The footnotes include arguments that "could have been made in the body of the brief, although we are not troubled by their single-spacing, as this is usual in most briefs." However the Board found that, on balance, the brief was acceptable in length and the Board considered the entire brief. [Wasn't it all or nothing? - ed.] The appendix properly contained evidentiary objections. [The ten-point type was not specifically mentioned - ed.]

Objections to Testimony: Opposer objected to nearly all of Applicant's questions, but failed to renew its objections in its trial brief. Opposer did state in its reply that it maintained all the objections, but that was too, said the Board, and not specific enough. A blanket statement that all objections are renewed does not cut the mustard.

TTABlog comment: Take a look at Applicant's brief (here) and see if you agree with the Board's ruling on the page limitations question.

Text Copyright John L. Welch 2011.

Recommended Reading: Mostert and Schwimmer, "Notice and Takedown for Trademarks"

The 100th Anniversary Issue of The Trademark Reporter includes a thought-provoking article by Frederick W. Mostert and Martin B .Schwimmer, entitled "Notice and Takedown for Trademarks," 101 TMR 249 (January-February 2011). [pdf here].


The authors begin by noting that "[t]rademark fraud on the Internet is rife." They assert that there is an urgent need for development of a legal scheme that addresses this problem.

In some other areas of IP law, such as copyright and domain name disputes, quite successful strides have been made in developing clear guidelines and remedies with which to tackle online deception. The Digital Millennium Copyright Act (DMCA) and the Internet Corporation for Assigned Names and Numbers’ (ICANN)’s Uniform Domain Name Dispute Resolution Policy (UDRP) are good examples. Woefully left behind in the fray are measures to combat deceptive trademark abuse online.

After reviewing the workings and effectiveness of the DMCA, VeRO, and UDRP processes, the authors propose an expedited dispute resolution proceeding (EDRP).

We suggest the exploration of multinational legislative adoption of a two-phase expedited dispute resolution proceeding (EDRP) that can channel disputes into the first three categories [i.e., default, negotiated settlement, arbitration] wherever possible. The first phase is a mandatory notice and takedown/safe harbor procedure resembling the DMCA and VeRO. The second phase is a voluntary inter partes arbitration reminiscent of the UDRP. The purpose of phase one is to provide intermediaries with a legislative motivation to take down the easy cases (primarily the defaults); the purpose of phase two is to motivate the parties to first negotiate and then arbitrate, where feasible.

The authors recognize that their proposed EDRP system will have to be universal, and they posit that "WIPO is in an ideal position to develop country guidelines on notice and takedown for trademarks."

Text Copyright John L. Welch 2011.

Recommended Reading: 100th Anniversary Issue of The Trademark Reporter

INTA has just published its 100th Anniversary Issue of The Trademark Reporter. [Press release here]. The Table of Contents for the centennial issue (January-February 2011, Vol. 101, No. 1) is set out below. Members of INTA may download the articles from the INTA website.

• Introductions
  By Gerhard R. Bauer, Alan C. Drewsen, and Lanning G. Bryer


• Reflections of Former Editors-in-Chief/Editors Since 1911


• History of The Trademark Reporter (reprint)/A New Century Begins (update)
  By Miles J. Alexander and Daniel R. Bereskin/Update by Clifford W. Browning


• Editor's Note
  By Sandra Edelman


• The Next 100 Years--What Will It Be Like in 2078 AD? (reprint)
  By Sidney A. Diamond


• The Trademark Reporter as Catalyst
  By Jerre B. Swann


• Global Registration--Where Are We Now?
  By Ruth Annand and Leone Kemp


• Sidney Diamond's Predictions Regarding the Development of International Trademark Systems
  By Janet L. Hoffman


• Predicting the Future of U.S. Trademark Law in 1978: A Promise Fulfilled on Intent-to-Use Applications
  By Sandra Edelman


• A Century of Supreme Court Trademark Law
  By Edward Vassallo and Kristin B. Hogan


• Trademark Functions and Protected Interests in the Decisions of the European Court of Justice
  By Pier Luigi Roncaglia and Giulio Enrico Sironi


• Getting Real With Nontraditional Trademarks: What's Next After Red Oven Knobs, the Sound of Burning Methamphetamine, and Goats on a Grass Roof?
  By Anne Gilson LaLonde and Jerome Gilson


• One Perspective on Anti-Counterfeiting: From T-Shirts in the Basement to Global Trade
  By Harley I. Lewin


• Notice and Takedown for Trademarks
  By Frederick W. Mostert and Martin B. Schwimmer


• Trademarks in the Veldt: Do Virtual Lawyers Dream of Electric Trademarks?
  By Theodore C. Max

Test Your TTAB Judge-Ability: Two Cases of Beer and Wine

Before you send in your resume for one of the open positions on the TTAB, test your judicial potential on these two Section 2(d) refusals. In the first, the Examining Attorney found the mark UPSLOPE BREWING COMPANY for beer, ale, and lager [BREWING COMPANY disclaimed] likely to cause confusion with UPSLOPE for wines. In the second, EARTHQUAKE HIGH GRAVITY LAGER & Design for "high gravity lager" [HIGH GRAVITY LAGER disclaimed] was blocked by EARTHQUAKE for wine. How do you think the appeals came out?


In re Upslope LLC., Serial No. 77650402 (January 28, 2011) [not precedential]. The Board not surprisingly found that the similarities in the marks UPSLOPE BREWING COMPANY and UPSLOPE outweigh the differences. As to the goods, the Board agreed with Applicant that beer and wine are not per se related. However, numerous use-based third-party registrations identified both beer and wine, and under Albert Trostel, such evidence may suggest that these goods are of a type that may emanate from the same source.

Examining Attorney Robin S. Chosid-Brown also submitted website pages showing many third parties offering for sale both beer and wine.

As to channels of trade, there were no restrictions in the subject application or the cited registration, and so "there is nothing that prevents applicant from offering for sale its beer (once the goods are in use) through the same channels of trade and to the same consumers who purchase registrant’s wines, and vice-versa."

Likewise the goods involved are not limited to expensive beers and wines; instead they include inexpensive products that would be purchased on impulse.

Considering the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal to register.

In re Phusion Projects, Inc., Serial No. 77695481 [not precedential]. Again not surprisingly, the Board found the two marks to be "highly similar." As to the goods, third party registrations suggested that beer and wine could be marketed by a single source under a single mark.


Moreover, Examining Attorney Leslie L. Richards submitted website evidence showing that "wineries across the country are opening their own microbreweries and brewing and selling a variety of craft beers along with their wines, including such high gravity beers as India Pale Ale, imperial stout, and barley wine." In addition,

... the similarity between wine and high gravity beers is demonstrated even more clearly by the 2007 article quoted above at the beginning of our discussion, which states that “[h]igh gravity beers are meant to be sipped and appreciated, even paired with foods like wine.”

The Board therefore concluded that the involved goods are similar and related for purposes of the du Pont analysis.

Applicant feebly argued that beer and wine are not related because they are specifically different, the only thing in common being alcohol. The Board, however, pointed out once again that the question is not whether purchasers are likely to confuse the goods, but whether they will likely be confused as to source if the goods are offered under confusingly similar marks. Moreover, the Board has often found that different alcoholic beverages are related for purposes of its du Pont analysis.

Finally, Applicant asserted (without evidence) that the beer that it actually markets is very inexpensive and sold "primarily to lower-class purchasers who buy the high-alcohol beer for 'a quick cheap high.'" On the other hand, said Applicant, Registrant's wine sells for up to thirty dollars per bottle and is marketed to "more affluent wine drinkers who buy wines to be sipped and savored along with good food." The Board, as usual, rejected this argument because the issue of likely confusion must be determined on the basis of the goods as identified in the involved application and cited registration, regardless of the actual goods being sold. The goods must be presumed to encompass all goods of the nature and type identified in the application and registration.

As to channels of trade, there is no restriction in the involved application and cited registration, and the normal channels for both for beer and wine would include supermarkets and liquor stores. Finally, beer and wine are purchased by ordinary consumers exercising only a normal degree of care.

And so, weighing the relevant du Pont factors, the Board found confusion likely, and it affirmed the refusal.

TTABlog comment: Well, are you ready to send in your resume?

Text Copyright John L. Welch 2011.

TPAC Quarterly Meeting Summary – February 11, 2011

Erik Pelton provides [here] a summary of the Trademark Public Advisory Committee meeting of Friday, February 11, 2011.


Among other things, Chief Judge Gerard F. Rogers [no longer "Acting" Chief Judge] revealed that the long-awaited update of the TBMP will be available on-line by the end of March. It will be current as of November 15, 2010, and will be updated twice per year, according to current plans.
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USPTO Seeks Applicants for Two Vacancies on TTAB

"The United States Patent and Trademark Office (USPTO), a cutting-edge organization dealing with intellectual property issues around the world, is seeking one or more high performing professionals to join the Trademark Trial and Appeal Board as an Attorney Examiner (Administrative Trademark Judge)." Details here.

TTAB Dismisses Fraud Claim Based on Fabricated Specimen of Use: Opposer Failed to Prove Fraud "to the Hilt"

Applicant Bristol Technologies sought to register the mark Bristol Focus for computer operating systems programs, but Opposer raised two grounds in opposition: fraud and likelihood of confusion. The Board sustained the Section 2(d) claim, finding the applied-for mark likely to cause confusion with the registered mark FOCUS for other computer software programs. But as to the fraud claim, although Applicant fabricated a specimen and falsely stated that its mark was in use as of the application filing date, the Board ruled that Opposer failed to meet its "heavy burden of proof" to show fraud. Information Builders, Inc. v. Bristol Technologies, Inc., Opposition No. 91179897 (January 10, 2011) [not precedential].


Applicant's original specimen of use, a newspaper advertisement regarding Applicant's intended product line, was rejected by the Examining Attorney. Applicant was offered the option of amending the application to a Section 1(b) intent-to-use basis, but instead Applicant created a screen image (shown above) and submitted a photograph of the image as a specimen of use, accompanied by a declaration stating that the substitute specimen was in use as of the filing date of the application.

However, Applicant had not yet sold any products, had no distributors, representatives, or sales persons, no licensees, and no use of the product. No computer operating system program had been completed, no orders received, and no computer systems bearing the applied-for mark had been shipped.

Opposer argued that "Applicant's fabrication of a new specimen no more than six weeks after learning of the initial refusal constitutes clear and convincing evidence that Defendant sought to mislead the Patent and Trademark Office ...."

The Board agreed that Applicant's statement of use that accompanied the new specimen was incorrect - i.e., false. Applicant's statement was also material, because without this misrepresentation the application would not have been published for opposition. However, as we all know, the CAFC's Bose decision requires that fraud be proven "to the hilt."

The Board ruled that the record did not establish that Applicant's president, David W. Bristol, "knowingly made a false representation with respect to use of the mark as shown on these specimens with a willful intent to deceive the U.S. Patent and Trademark Office." "Mr. Bristol believed that the statement was true at the time he signed the statement of use." [Query: where is the support in the record for that last statement? - ed.]

The Board quoted Bose for the proposition that "[U]nless the challenger can point to evidence to support an inference of deceptive intent, it has failed to satisfy the clear and convincing evidence standard required to establish fraud."

Viewing the evidence in light of the above legal principles, we find that opposer has not established that Bristol Technologies, Inc. acted fraudulently in order to have its mark published for opposition. Rather, based upon the evidence of record, we find that Mr. Bristol, as a layperson, had an honest misunderstanding that the above activities represented a legitimate way to document his purported usage of the adopted term and that applicant had legitimately used the mark Bristol Focus as shown on the substitute specimen. We would not characterize his actions as trying to fabricate a fraudulent specimen. Under the standard set out in Bose by our principal reviewing Court, opposer has not met its “heavy burden of proof” in showing fraud. Opposer’s claim of fraud is therefore dismissed.

TTABlog comment: "The party's over. It's time to call it a day." Forget fraud. It can't be proven. Either the accused party will raise an advice of counsel defense (see Brady Bunte), or if he or she doesn't have counsel, he or she will raise an "uninformed layperson" defense. In support of its ruling the Board, in footnote 37, cited the Maids to Order case, where a layperson mistakenly averred that the mark there at issue was in use in interstate commerce when it was in use only in intrastate commerce. But isn't that a much more complicated issue that a layperson might not fully understand? Is the issue here of equal complexity? Or is it more like the issue in Hurley, where the applicants' misunderstanding or lack of knowledge of the law did not excuse them from fraud based on a false statement of use?

Perhaps the only ones who can commit fraud nowadays are trademark lawyers, since they (should) know the law. But, I maintain, a trademark lawyer shouldn't be signing anything unless he or she is the actual applicant.

I just don't understand the Board's reasoning here. Early in the decision it said that it was declining to consider Applicant's final brief because the brief was not timely filed. Yet later the Board refers to what Applicant "argues" (page 15). If Applicant's brief was jettisoned, and Applicant took no testimony and there was no final hearing, where did Applicant do this arguing? [Perhaps a reader can answer that question.]

Text Copyright John L. Welch 2011.

Test Your TTAB Judge-Ability: Two 2(e)(3) Refusals for Your Perusal

There are three elements to a "primarily geographically deceptively misdescriptive" refusal under Section 2(e)(3): the mark refers primarily to a generally-known geographical location; the relevant public would likely believe that the goods or services originate from that location, when they do not; and the misrepresentation must be material to the purchasing decision. In re Jonathan Drew, Inc. d/b/a Drew Estate (January 28, 2011) [precedential]. [TTABlogged here]. How would you apply the test to these marks: LONDON SOHO NEW YORK for cosmetic bags; and JPK PARIS 75 & Design for "sunglasses; wallets, handbags and purses, travel bags, suitcases; belts, shoes?"


In re Conair Corporation, Serial No. 77210108 (January 14, 2011) [not precedential].There was no dispute that London, Soho, and New York are generally known locations, or that Applicant's goods will not be manufactured or originate in those locations.

Applicant maintained that because Soho identifies neighborhoods in both London and New York, the commercial impression of the mark is of the two neighborhoods and not the entire cities. Therefore, it argued, the required goods/place association is lacking because the consuming public would not think the goods originated in those neighborhoods. Instead, consumers would consider the mark as suggesting that the goods are "hip, upscale, artsy and edgy," like the neighborhoods.

The Examining Attorney countered that the mark gives the commercial impression that the source of the goods is London or Soho or New York: i.e., three possibilities. The Board disagreed, finding that the ambiguity in and structure of the mark leads one to focus on the SOHO portion. "This in turn minimizes the impression that the mark indicates the origin of the goods, but rather takes on a more atmospheric impression by referencing not London and New York per se, but the artsy Soho neighborhoods of these cities."

In any event, there was no evidence of record that cosmetic bags sold empty are manufactured in any of these locations. Although New York is a fashion center, there was no evidence that empty cosmetic bags are fashion items. The record did show that cosmetic bags are given away in Soho New York and in London, "[b]ut such evidence could support a goods/place association for every city on the planet that has a drug store."

In sum, the record did not support the required goods/place association. Moreover, the Office failed to prove the requisite materiality under the third prong of the 2(e)(3) test. And so the Board reversed the refusal.

In re Miracle Tuesday, LLC, Serial No. 77649391 (February 3, 2011) [not precedential]. There was no dispute that Paris is a well-known center of design and fashion, and that Applicant is a Nevada corporation located in Miami.


Applicant first argued that the dominant portion of its mark is JPK and that the primary significance of the mark is not a geographic location. The Board disagreed, finding that consumers would assume that the goods have a connection with Paris either in their manufacture or design.

Next Applicant asserted that its manager and designer, Jean Pierre Klifa [get it? JPK - ed.] is Parisian, and it urged that because Mr. Klifa, as the creative force behind its products, lived and worked in Paris for 23 years, the Board should consider the design of the products as having originated in Paris.


JPK
The Board disagreed because "the current connection between applicant and Paris on the record is too tenuous to avoid the prohibition under Section 2(e)(3)." "Although Mr. Klifa may still consider himself to be Parisian, the goods applicant seeks to register are not because there is no current connection between the goods and Paris." [Somehow JPK Nevada 75 just doesn't have the same allure, does it? -ed.]. It found that the second prong of the 2(e)(3) test was satisfied.

Finally, as to materiality, the evidence showed Paris to be a recognized center of design. [That's Paris, France, not Paris, Illinois - ed.]. Given the renown and reputation of Paris for fashion designs, the Board "may infer that at least a substantial portion of consumers who encounter applicant's mark ... are likely to be deceived into believing that these products come from or were designed in Paris." In re Jonathan Drew, Inc. d/b/a Drew Estate, ___ USPQ2d ___, Serial No. 77099522 (TTAB 2011), quoting In re Pacer Tech., 338 F.3d 1348, 67 USPQ2d 1629, 1631 (Fed. Cir. 2003).

And so the Board affirmed this refusal.

Text Copyright John L. Welch 2011.

Precedential No. 5: Prompt Supplementation of Expert Disclosure Defeats Motion to Exclude Testimony, Says TTAB

In this straightforward procedural decision, the Board denied Petitioner AOG's motion to exclude Respondent's expert witness, ruling that Respondent HFM had cured any deficiencies in its expert disclosure by prompt supplementation. General Council of the Assemblies of God dba Gospel Publishing House v. Heritage Music Foundation, 97 USPQ2d 1890 (TTAB 2011) [precedential].


Respondent served its expert disclosures in timely fashion under Rule 2.120(a)(2), thirty days prior to the close of discovery. One week later, Petitioner moved to "strike" Respondent's expert witness testimony [i.e., exclude it, since the testimony hadn't been given yet] on the ground that the disclosure failed to comply with FRCP 26(a)(2): it was not signed by the expert, did not include a list of her publications (it turned out there were none), did not include a list of cases in which she had testified (one), and did not state her compensation ($750). In response, Respondent provided the missing information and argued that the original omission was harmless under FRCP 37(c)(1).

The Board ruled in favor of Respondent:

In this case, respondent supplemented its expert disclosure as soon as the deficiencies were brought to its attention. There are no last-minute changes, the discovery period is still open, and there is no disruption to trial. *** Here, prompt supplementation of the disclosure resolves the problem so that the Board need not consider the question under the Fed. R. Civ. P. 37(c)(1) standard, whether the omissions were substantially justified or harmless.

There is no requirement that a party notify the Board that it has served expert disclosures. However, if either party needs additional time for discovery, they "may inform the Board of the timely expert disclosures and demonstrate good cause for an extension or suspension of the discovery period."

Petitioner also challenged the expert's qualifications as an expert, but the Board refused to consider that issue at this time: "The Board does not hear motions in limine and the qualifications of respondent's witness is a subject that can be raised later, at an appropriate time."

Text Copyright John L. Welch 2011.

Test Your TTAB Judge-Ability: Is "MONSTER" Merely Descriptive of Automotive Accessories?

Monster Cable filed an ITU application to register the mark MONSTER for various automotive and truck accessories, including suspension struts and truck bed liners, but Examining Attorney Steven W. Jackson found the mark to be merely descriptive and refused registration under Section 2(e)(1). Application argued (1) that just because there is a vehicle called a "monster truck" does not mean that "monster" is descriptive of automotive accessories, (2) that "monster" per se has no direct relationship with automotive accessories, and (3) because average consumers do not drive monster trucks, the word "monster" does not directly describe automotive accessories. How would you rule? In re Monster Cable Products, Inc., Serial No. 78348832 (January 24, 2011) [not precedential].


The Board affirmed the refusal in a terse, 10-page decision.

It pointed out that whether a term is descriptive or not is determined in the context of the goods, not in a vacuum: the question is not whether one presented with the mark could guess what the goods are, but whether someone who knows what the goods are will immediately understand the mark as conveying information about the goods.

The Board observed once again that a mark need not describe all the goods in the application for the subject mark to be merely descriptive: even one will do. Here, the application includes "suspension struts," and consumers "will immediately perceive MONSTER brand suspension struts as being for monster trucks." Likewise for truck steps and truck bed liners.

And so the Board affirmed the refusal.

TTABlog comment: I think this case could have been added to the WYHA (Would You Have Appealed?) folder, don't you?

Text Copyright John L. Welch 2011.

Precedential No. 4: TTAB Finds That "NKJV" Has Acquired Distinctiveness for Bibles

Reversing a refusal to register the mark NKJV for bibles, the Board found that, in light of Applicant's long use, substantial sales and advertising, and ownership of two incontestable 2(f) registrations for marks that include the term NKJV, the mark had acquired distinctiveness. In re Thomas Nelson, Inc., 97 USPQ2d 1712 (TTAB 2011) [precedential].


Mere Descriptiveness: The Board observed that, for NKJV to be merely descriptive of bibles, the evidence must show that (1) NKJV is an abbreviation for “New King James Version”; (2) “New King James Version” is merely descriptive of bibles; and (3) a relevant consumer viewing NKJV in connection with bibles would recognize it as an abbreviation of the term “New King James Version.”

First, the Board concluded that NKJV is an abbreviation for New King James Version, based on Acronymfinder.com and other website evidence, on the use of various acronyms or initials for various version of the Bible, and on Applicant's own registered mark NKJV NEW KING JAMES VERSION, which suggests that NKJV is an acronym for NEW KING JAMES VERSION.

Next, based on dictionary definitions and website evidence, the Board found that NEW KING JAMES VERSION is descriptive of a particular version of the Bible.

Finally, the website evidence demonstrated that "consumers viewing the term NKJV used in connection with bibles would recognize that term as an abbreviation for 'New King James Version.'"

The Board suggested that Applicant and the Examining Attorney should have resolved this issue without the need for an appeal.

Acquired Distinctiveness: The Board was also not happy with the Examining Attorney's refusal to accept Applicant's 2(f) claim:

In view of the evidence of acquired distinctiveness submitted by applicant (i.e., substantially exclusive and continuous use over a long period of time, substantial sales and advertising expenditures) as well as applicant’s two previously registered marks, to hold that the initials NKJV has not acquired distinctiveness when the same term is the subject of two incontestable registrations under the provisions of Section 2(f) appears illogical on its face. Thus, under the facts before us, we find that the evidence of record is sufficient to support the finding that the mark NKJV mark used in connection with bibles has acquired distinctiveness.

And so the Board reversed the refusal, finding that the mark has acquired distinctiveness under Section 2(f).

Text Copyright John L. Welch 2011.

Precedential No. 3: Finding KUBA KUBA Primarily Geographically Deceptively Misdescriptive for Cigars, TTAB Affirms 2(e)(3) Refusal

The Board affirmed a Section 2(e)(3) refusal of KUBA KUBA for cigars, tobacco, and related products, finding the mark to be primarily geographically deceptively misdescriptive of the goods. In doing so, the Board attempted to clarify the law of Section 2(e)(3) in view of recent court decisions. In re Jonathan Drew, Inc. d/b/a Drew Estate 97 USPQ2d 1640 (TTAB 2011) [precedential].


Applicant Drew did not dispute that the primary meaning of "Cuba" is geographic, or that Cuba is famous for its tobacco products and cigars. Moreover, Drew conceded that its products will not originate in Cuba, nor will its products be made from Cuban seed tobacco.

Drew argued, however, that the term KUBA, and the mark KUBA KUBA, "would convey meanings and associations that are different from the country of Cuba. It also maintained that Examining Attorney David C. Reihner did not meet the high burden to prove that a substantial portion of relevant consumers would be materially influenced by the mark to purchase the products, and further that because of the US embargo on goods from Cuba, consumers would not likely believe that Applicant's goods originate in Cuba.

Meaning of KUBA: The Board found nothing unusual or fanciful about the spelling of Cuba as KUBA. Drew contended that KUBA would be "primarily viewed as a non-geographic term with a meaning 'associated with the overall look and feel of the art and culture of the African Kuba Kingdom,'" and that KUBA has other geographic meanings. The Board pointed out, however, that the mark must be considered in the context of the goods. Moreover, there was no evidence that the "alternative" meanings offered by Drew were anything other than obscure to the ordinary consumer. And even if the KUBA KINGDOM were commonly known, that "would not detract from the significance of KUBA KUBA as a reference to Cuba," since Drew's goods are cigars not tribal artifacts.

The Board therefore concluded that the geographic meaning denoting Cuba is the primary meaning of KUBA KUBA.

Materiality: Drew asserted that, in view of the CAFC's decisions in Spirits and California Innovations, "the USPTO's burden of establishing deceptiveness now requires a higher showing of deceptiveness, and that there has been no showing ... that a substantial portion of the relevant consumers would be materially influenced to purchase applicant's products." Drew further argued that direct evidence of public deception is required.

The Board, however, opined that a "strong or heightened goods/place association, which we have here, is sufficient to support a finding of materiality." Moreover, direct evidence of public deception is not required. "[W]e may infer from the evidence showing that Cuba is famous for cigars, that a substantial portion of relevant consumers would be deceived."

The Board also distinguished the recent decision of the U.S. District Court for the District of Columbia in the Guantanamera Cigar case, because here "there is no question that a substantial portion of relevant consumers would recognize the meaning of KUBA KUBA as meaning Cuba; and the evidence showing that Cuba is famous for cigars provides a reasonable predicate for finding that a substantial portion of the relevant consumers would be deceived."

Embargoed Goods: Finally, Applicant Drew argued that consumers would not believe that KUBA KUBA brand cigars come from Cuba because the US has embargoed goods from Cuba. But the Board pointed out that Drew offered no evidence that the embargo would have any effect on the perception of KUBA KUBA as a geographically deceptive term.

Text Copyright John L. Welch 2011.

Precedential No. 2: TTAB Cancels Supplemental Registration for Shape of Culvert Unit Due To Functionality

In a 57-page decision that seemed even longer, the Board granted a petition for cancellation of a Supplemental Registration for the product configuration shown below for "precast concrete bridge unit for constructing a bridge or culvert," finding the design to be de jure functional under Sections 2(e)(5) and 23(c). The Board gave "heavy weight" to five utility patents that showed "the functionality of each of the features claimed to be respondent's trademark," and little weight to "respondent's evidence and speculation about other alternative designs." Kistner Concrete Products, Inc. v. Contech Arch Technologies, Inc., 97 USPQ2d 1912 (TTAB 2011) [precedential].


According to the challenged registration, "[t]he mark consists of the configuration of a one-piece open bottom bridge unit, with parallel spaced vertical side walls connected by an arched top wall and having sharp outside corners and a width substantially greater than its length." The Board noted that Respondent obtained its trademark registration shortly before its patents expired.


The Board plowed through the Morton-Norwich factors, concluding that they "weigh decidedly in favor of a finding that the registered trademark is functional."

First, the Board observed that a utility patent is "strong evidence that the features therein claimed are functional." It found that "each of the elements comprising the trademark is a essential element of the ['314] patent," and that Respondent failed to show that "any element of its described trademark is ornamental, incidental, or arbitrary."

The fact that Respondent also obtained design patents for designs very similar to the registered trademark was "insufficient to counter the significant probative value accorded to the utility patents."

Furthermore, Respondent's advertising and other materials touted the utilitarian benefits of the specific configuration of its bridge units: for example, the arch shape provides an economy of materials for an initial lower cost, it carries heavy loads at low stress levels, its curved top sheds water and slats, it provides large waterway openings with minimum headroom and compact shape, and so forth.

As to alternative designs, the Board saw no need to consider them in light of the heavy probative weight to be given the utility patents. Nonetheless, the Board declared that, even if it did consider alternative designs, it would not rule in Respondent's favor. It then took a stab at explaining away Respondent's testimony regarding the availability of alternative designs.

The Board pointed out that the question is not whether there are alternative designs, but whether there are alternative designs that perform "equally well." The parties submitted much testimony on this factor, "detailing geometric ratios and other numeric values." The Board found Respondent's highly technical expert testimony from a patent lawyer to be "not helpful," and it gave little weight to respondent's "evidence and speculation about other design alternatives."

Respondent pointed to the fact that the utility patent claims recite specific geometric ratios, arguing that there are designs that fall within the scope of the trademark that are not covered by the patent claims. The Board was not impressed:

While the patent claims specific geometric ratios, this fact does not establish the non-functionality of the trademark that lacks the same specificity, because the patent shows that the features claimed as respondent’s trademark are essential or integral parts of the invention and have utilitarian advantages. *** Simply put, respondent’s trademark comprises functional features as set forth in the patent, minus the mathematical ratios (except to the extent that one might view “a width substantially greater than its length” as a substitution for the ratios in a very general sense).

Finally, the Board found that Respondent's design, "due to its structural efficiencies, is less expensive to produce than other less efficient designs that may require more concrete and/or reinforcing materials."

The Board concluded that the design is de jure functional, and it granted the petition for cancellation.

patent drawing left; trademark right
TTABlog comment: Utility patent claims are typically more detailed in defining (claiming) an invention, than is the general description provided in a trademark application for a product shape. But if even one version of the product that falls within the scope of the trademark also falls within the scope of the claims, then that should be enough for de jure functionality. So if one wants to prove functionality of a product design, how about getting an admission that a particular product made according to the patent claims would also be covered by the registered mark? Whether the mark covers other products as well is irrelevant.

In other words, a registered trademark for a product shape may "cover" many different variations of that shape. If any one of them falls within the patent claim, the shape is de jure functional. This has its corollary in patent law: if a patent claim reads on any prior art device, the claim is invalid under Section 102.

Text Copyright John L. Welch 2011.

PTO Roundtable on Trademark Litigation Tactics: Is There a Bull in the Trademark Shop?

Hello, Detroit! The USPTO will host an all-day Conference called "Protecting Your Intellectual Property in the Global Marketplace," on February 10, 2011 at Wayne State University. [Details here]. The afternoon session will include a "Roundtable on Trademark Litigation Tactics: Is there a Bull in the Trademark Shop?"


Reportedly, several trademark bullies will take part in the roundtable, but will be seen only in silhouette behind a white screen, with voices altered to prevent identification.

The TTABlogger wonders why the bullies are getting all the attention? What about the trademark good guys? the trademark angels? Let's think about honoring them!
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Test Your TTAB Judge-Ability: Is Candy Related to Chocolate Drink Mix? Cookies?

Examining Attorney Fred Carl III issued two Section 2(d) refusals of the mark CHOKI for "candy, namely confections prepared from chocolate and aronia berries, containing no fillers, waxes or artificial ingredients, and marketed by direct sales," finding the mark likely to cause confusion with two registered marks: CHOKI for powdered chocolate drink mix and CHOKIS for cookies. What do you think the Examining Attorney relied on to proof of relatedness of the goods? In re Orenda International, LLC, Serial No. 77639103 (January 7, 2011) [not precedential].


The Board readily found the marks to be "highly similar in appearance, pronunciation, connotation (or lack thereof) and commercial impression."

Chocolate Drink Mix: As to the first of the cited goods, the Examining Attorney relied on third-party registrations and website evidence showing, for example, that Starbucks and Nestle sell chocolate bars and cocoa mixes. Applicant Orenda argued that its candy is a "specially-formulated, high quality food product …[for] consumers who want to take advantage of the apparent health benefits of consuming products with high antioxidant content," while the cited goods are "inexpensive chocolate-flavored drink mix … for consumption by children." The problem, however, was that there were no such restrictions in the application or cited registrations: "applicant’s goods can include inexpensive candy sold to children who want a sugary concoction, and the registrant’s goods can include an expensive product that is purchased by people seeking the health benefits of chocolate."

Moreover, Orenda's goods "include candy purchased on impulse by the general public," and so "the du Pont factor of the conditions of purchase favors a finding of likelihood of confusion."

Lastly, Orenda contended that the channels of trade are different, since its goods are "marketed by direct sales." The Board, however, concluded that, even if Registrant's goods were not sold by direct sales, "the purchasers of applicant’s and the registrant’s products, as those goods are identified, would be the same."

Whether [the] confusion is reverse confusion, with their believing that the CHOKI powdered chocolate drink mix that they see in a supermarket is a product of the same company that sells CHOKI candy marketed through direct sales, or that the CHOKI candy offered to them through direct sales is from the same source as the CHOKI powdered chocolate drink mix they are familiar with from retail stores, the result is the same.

And so the Board affirmed this refusal.

Cookies: The cookie story crumbled in the same way as the chocolate drink mix story: third-party registrations and website evidence convinced the Board that the goods are related:

For the same reasons that we have found applicant’s goods and powdered chocolate drink mix to be related, to be sold to the same classes of purchasers, and to be the subject of impulse purchase, we find that the du Pont factors of the relatedness of the goods, classes of purchasers and conditions of purchase to favor a finding of likelihood of confusion with respect to Registration No. 3601353.

And so the Board affirmed the second refusal as well.

TTABlog comment: One suspects that PTO registration evidence could be mustered to show that pretty much every snack item is related to every other snack item.

And by the way, isn't "choki" a strange word choice for candy or cookies?

Text Copyright John L. Welch 2011.

Judge James Walsh Retires From TTAB

On Friday, January 28, 2010, Judge James Walsh retired from the Trademark Trial Appeal Board. He served on the Board since 2005, after many years at the USPTO and a stint in private practice. Judge Walsh's departure brings the number of TTAB judges to seventeen.


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TTAB Allows Applicant to Amend I.D., But Still Sustains 2(d) Opposition to FINISHPRO for Professional Paint Sprayers

Applicant Graco won the initial skirmish but lost the war in this Section 2(d) opposition. The Board granted Graco's motion to amend its identification of goods from "paint sprayers" to "paint sprayers for use by professional painters and professional contractors in applying architectural coatings." But the Board still found Graco's mark FINISHPRO likely to cause confusion with the registered mark FINISH PRO (in standard character and design form) for paint and paint-related products for automobile, marine, and industrial use. Liberty Bell Equipment Corp. v. Graco Minnesota Inc., Opposition No. 91177965 (January 31, 2011) [not precedential].


After discovery closed and before its testimony period opened, Graco filed a motion under Rule 2.133(a) to amend its application as stated above. Liberty Bell objected, arguing that it had conducted discovery based on the unrestricted description of goods.

The Board ruled that Liberty Bell would not be prejudiced by the motion because Graco had explained in its interrogatory responses that it "intended to use its FINISHPRO mark to identify" sprayers used by professionals in applying architectural coatings. The Board entered judgment against Graco on the original description of goods, and granted the motion to amend.

Turning to the du Pont analysis, the Board not surprisingly found the involved marks to be "essentially the same." It then observed, once again, that the greater the similarity between the marks, the lesser the required between the goods to support a finding of likely confusion. And "[w]hen virtually identical marks are involved, there only needs to be a viable relationship between the respective goods to find that a likelihood of confusion exists."

The Board noted that, although Applicant's identification of goods was restricted to sprayers for use with architectural coatings, "there is evidence in the record that demonstrates that the restricted description of goods will not avoid a likelihood of confusion because applicant's paint sprayers may be used for automotive applications and presumably marine and industrial applications. [Then why allow Graco's amendment to the identification of goods? - ed.]

Opposer's paints, on the other hand, may be used with spray guns. Therefore the Board found the involved goods to be complementary.

The Board noted that Graco's products sell for $1,200 to $2,100, and that the involved goods would be purchased with a high degree of care. "However, even professional painting contractors exercising a high degree of care are not immune to trademark confusion." The Board concluded that the care with which the goods are purchased was not sufficient to overcome the other du Pont factors.

And so the Board sustained the opposition.

Text Copyright John L. Welch 2011.

TTAB Schedules Eight Final Hearings for February 2011

The Trademark Trial and Appeal Board has scheduled eight (8) oral hearings for the month of February, 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.


February 9, 2011 - 10 AM: Tempur-Pedic Management, Inc. and Dan-Foam ApS v. FKA Distributing Co., Opposition No. 91185706 [Section 2(d) opposition to TEMP-RITE for mattresses, mattress toppers, pillows, stuffing material, and the like, in view of the mark TEMPUR for mattresses, cushions, pillows, and the like].


February 9, 2011 - 11 AM: In re U.S. Game Systems, Inc., Serial Nos. 75463414, -3415, and -3417. [Refusal to register USGAMESINC for card games, board games, tarot cards, and collectibles, and related retail store and online services, in view of the registered mark U.S. GAMES for "playing equipment for physical exercise games-namely, bats of various sizes and shapes, balls of various sizes and shapes, ring-shaped pucks for a hockey-type game, goals, nets, game boundary markers, and storage and transportation bags and containers for the foregoing sold separately or in combination with the foregoing," and for "mail order services in the field of games, toys, and sporting goods"].


February 10, 2011 - 2 PM: Ms. Anita Dhaliwal v. DVD WORLD Pictures Corp., Opposition No. 91167207 [Opposition to registration of DVD World for "online retail store services and distributorships of DVD movies" and "motion picture production and distribution" on the ground of non-use and mere descriptiveness].


February 15, 2011 - 11 AM: In re in3media, Inc., Serial No. 77171708 [Refusal to register RADIO-INFO.COM for Providing online news and information in the field of radio entertainment personalities, radio entertainment programming, and radio broadcasting, on the grounds of genericness and, alternatively mere descriptiveness and lack of acquired distinctiveness].


February 16, 2011 - 2 PM: Nintendo of America, Inc. v. Adar Golad, Opposition No. 91178130 [Opposition to FLASHBOY for "plug and play interactive video games of virtual reality comprised of computer hardware and software" and "hand-held units for playing video games and electronic games, namely, stand alone video game machines" on the ground of lack of bona fide intent and likelihood of confusion with the registered mark GAME BOY for video game programs and hand-held video games].


February 23, 2011 - 10 AM: AutoZone Parts, Inc. v. Dent Zone Companies, Inc., Cancellation No. 92044502 [Section 2(d) cancellation directed to registration of DENT ZONE in standard character and design form for vehicle maintenance and repair, in view of Opposer's mark AUTOZONE, registered for retail auto parts store services and auto repair services].


February 24, 2011 - 11 AM: Cavern City Tours Ltd. v. Hard Rock Cafe International, Inc., Cancellation No. 92044795 [Petition to cancel a registration for the mark CAVERN CLUB [think "The Beatles" - ed.] for restaurant and bar services, and for t-shirts and other clothing items, on the grounds of false association under Section 2(a) and fraud].




February 24, 2011 - 2 PM: General Mills, Inc. and General Mills IP Holdings II, LLC v. Fage Dairy Processing Industry S.A., Oppositions Nos. 91118482 et al.[Oppositions to registration of TOTAL SHEEPS' YOGHURT for "set yoghurt - made from ewes' milk and yoghurt culture" [SHEEPS' YOGHURT disclaimed] on the grounds of likelihood of confusion and dilution with the registered mark TOTAL for ready-to-eat cereal].


Text Copyright John L. Welch 2011.