Recommended Reading: Lalonde and Gilson, "Trademarks Laid Bare: Marks That May Be Scandalous Or Immoral"

There is no more troublesome area of TTAB jurisprudence than its determinations of whether a mark is "immoral" or "scandalous" under Section 2(a). The Trademark Act requires the USPTO to make these decisions but provides no standards or guidelines for doing so. The resulting case law is a muddle. In their article in the latest issue of The Trademark Reporter, Ann Gilson Lalonde and Jerome Gilson provide an extensive review of the law and offer some suggestions for handling these cases in a more consistent and acceptable way: "Trademarks Laid Bare: Marks That May Be Scandalous Or Immoral," 101 Trademark Reporter 1476 (September-October 2011). [pdf here].

The United States Patent and Trademark Office (USPTO) is faced with an impossible task: It is legally required to make such determinations. Section 2(a) of the Lanham Act, The United States Trademark Act of 1946, bars registration in the United States of trademarks that consist of or comprise “immoral, deceptive, or scandalous matter.” ***

The difficulties with the USPTO deciding whether marks are “scandalous” and “immoral” are manifest, and consistency is topmost. The Office has no independent standards that apply to such determinations, which are made by dozens of different individuals of varying political, religious, geographic and family backgrounds. Further, it compounds the issue by refusing to acknowledge previous registrations of similar marks as precedential.

Another intractable problem is whether there is in fact a general public view about the offensiveness, or not, of any given trademark, and if there is, whether such a view can be determined by the USPTO under its current procedures. The Office has tremendous expertise in many areas of trademark law, but none in discerning the temperature of the public’s moral outrage.

TTABlog bonus: In this podcast (here), Anne Gilson LaLonde discusses these issues.

TTABlog note to email subscribers: In order to see comments and download the article, please surf to the blog.

TTABlog acknowledgement: Thanks again to The Trademark Reporter for granting permission to provide a link to this article, which is Copyright © 2011 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 101 TMR 1476 (September-October 2011).

Text Copyright John L. Welch 2011.

Test Your TTAB Judge-Ability: Is MEGA-SAMPLER Merely Descriptive of Cigars?

Cigars International, Inc. sought to register the mark MEGA-SAMPLER for cigars, but the Examining Attorney refused registration on the ground of mere descriptiveness. Applicant's goods feature, according to the Examining Attorney, "a large selection of representative cigars." Applicant argued that the "mega" prefix is ambiguous and therefore that the mark is, at worst, suggestive. How would you rule? In re Cigars International, Inc., Serial No. 77262426 (September 14, 2011) [not precedential].


The question for the Board was "whether the term MEGA-SAMPLER conveys information about a significant feature of applicant's goods with the immediacy required by the Trademark Act."

The Examining Attorney submitted webpages showing use of the term "Mega-Sampler" by online retailers, but the Board noted that most of them referred to Applicant's usage of its mark rather than being merely descriptive uses by third parties, and others used the term "in the form of a source indicator." The record did reflect use of "Mega-Sampler" by two of Applicant's competitors, but Applicant asserted that those were infringements that it "continues to pursue."

Applicant also submitted third-party registrations from various fields for marks containing the "mega-" prefix, urging that they "reflect more than a dozen years of Office practice apparently treating composite marks having a 'MEGA-' prefix as inherently distinctive." In addition, Applicant pointed to several non-precedential TTAB rulings in which the TTAB explicitly referred to the MEGA- prefix as being suggestive.

The Board concluded that MEGA-SAMPLER is suggestive, not merely descriptive. The prefix "mega-" suggests a relatively large number of cigars, and Applicant usually includes fifteen to twenty-five cigars.

[B]ased upon all the evidence in this record, we agree with applicant that whatever the attenuated connections between the connotations of the component words and applicant’s goods, the information conveyed herein is not immediate enough to sustain a descriptiveness refusal. Applicant admits it may be somewhat laudatory, serve as a boast, an exaggeration, a swaggering or whimsical use of a common English-language prefix, but that applicant coined this moniker and with few exceptions has successfully policed usage of this term in its field of competition.

The Board agreed with Applicant that the mark "seems too ambiguous to cause consumers to associate that phrase with a feature or characteristic of appellant's cigars." There is no proof that others need to use this term in order to compete, and it does not immediately convey knowledge about a feature of the goods.

And so the Board reversed the refusal.

TTABlog comment: Would BIG SAMPLER be merely descriptive? I think so. "Mega-" means big to me. So I think it's merely descriptive. It immediately tells me that there are a lot of cigars, relatively speaking, in the sampler. I.e., it's not a mini-sampler.

Text Copyright John L. Welch 2011.

Recommended Reading: Casagrande on the Role of Intent in Likelihood of Confusion Analysis

The latest issue of The Trademark Reporter includes Thomas L. Casagrande's thought-provoking dissertation on the role of intent in the determination of likelihood of confusion: "A Verdict For Your Thoughts? Why an Accused Trademark Infringer's Intent Has No Place in Likelihood of Confusion Analysis," 101 Trademark Reporter 1447 (September-October 2011). [pdf here].

This article explores whether intent should play any role in determining infringement, that is, whether a defendant’s intent to deceive consumers makes it more likely, from an empirical standpoint, that such consumers will actually be deceived. The author concludes that intent should be excised from the confusion analysis. Part II summarizes the current role of intent in determining likelihood of confusion—which is that every federal court, to varying degrees, considers it relevant—and describes how U.S. law got to this point. Part III discusses why an accused infringer’s intent does not shed light on the crucial issue of whether confusion is likely among consumers, suggests that trademark law is anomalous in its continued regard of intent evidence as relevant and that evidence of intent is both irrelevant and highly prejudicial, thus running afoul of basic evidentiary principles. Part IV identifies some of the practical effects of intent’s current role in determining infringement under U.S. law. Part V proposes the elimination of intent as a factor to be considered in determining likelihood of confusion. It also discusses the practical issues surrounding implementation of that proposal, advocates restricting any discussion of intent to the judge-directed equitable issues (largely concerning remedies) that may arise, and proposes dealing with such issues, if implicated, only after liability is determined.

TTABlog query: Is evidence of copying probative of secondary meaning? To apply Mr. Casagrande's reasoning, what does the intent of the accused infringer have to do with consumer perception of the mark at issue? TTABlog note: Thanks again to The Trademark Reporter for granting permission to provide a link to this article, which is Copyright © 2011 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 101 TMR 1447 (September-October 2011). .

TTAB Roundtable: "A Dialogue about TTAB Processing Time" - November 1st, 12:45 to 4:00 PM

On November 1, 2011, from 12:45 to 4:00 PM, the TTAB will host a roundtable with stakeholder representatives to discuss processing times in Board proceedings. Click here for an agenda and list of participants. Click here for information about attending the event by webcast.

TTAB Turns Up Nose at NASACORT Opposition to LAZACOR for Rhinitis Remedies

The Board dismissed this opposition to registration of the marks LAZACOR and LAZACOR + for "homeopathic supplements," finding the marks not likely to cause confusion with, or to dilute, the registered mark NASACORT for "steroid preparation for the treatment of allergic rhinitis." The differences in the marks and the care with which the products are purchased outweighed the strength of Opposer's mark and, the "presumptive similarity" of the goods and purchasers. Aventis Pharmaceuticals Inc. v. Heal The World Inc., Opposition No. 91192046 (October 24, 2011) [not precedential].


Likelihood of confusion: Despite substantial sales (more that $1.5 billion from 2003-2008) and advertising expenditures, Opposer failed to prove its mark to be famous for likelihood of confusion purposes. The evidence of consumer recognition of the mark was not persuasive, and there was no proof of any unsolicited media attention. "The evidence is indicative of the success of opposer's product rather than recognition of the fame of the mark." The Board did, however, find that the mark has a "high degree of public recognition and renown."

As to the goods, Applicant's identification encompasses products "intended to treat symptoms of a condition which ... may include rhinitis and nasal congestion and pressure." The Board concluded that the goods are "sufficiently related that, if sold under the same or similar marks, they would be likely to cause confusion."

Although the Board may assume that Applicant's goods are sold in all normal channels of trade for homeopathic supplements, there was no evidence regarding what those channels are. Applicant's interrogatory answers indicated that it sells its goods on the Internet and not through retail outlets or wholesalers. NASACORT is a prescription drug sold through doctors and pharmacies. The Board concluded that the evidence as to this du Pont factor is neutral.

The classes of customers for the products are the same, but given the nature of the goods, purchasers will "undoubtedly exercise great care and correspondingly pay careful attention to the trademark for the products."

As to the marks, they are not similar in appearance, but they share a similar cadence, rhythm, and stress pattern. Both marks appear to be coined terms, although NASACORT suggest "nasal" and "corticosteroid." [I get the "nasal" part, but never heard of a "corticosteroid" - ed.] The Board concluded that the marks are "dissimilar."

Balancing the du Pont factors, the Board ruled that confusion is not likely.

Dilution: Because the Board already found that NASACORT is not a famous mark for Section 2(d) purposes, Opposer could not meet the higher standard of fame for dilution purposes. Nonetheless, the Board went on to explain why the mark is not famous: in short, it is not a "household name." Unlike the NASDAQ case, for example, there was no evidence of widespread media recognition of Opposer's mark by the general population.

Moreover, even assuming arguendo that NASACORT had achieved fame, Opposer failed to show that the mark became famous prior to Applicant's constructive first use date (i.e. its filing date).

And so the Board denied the dilution claim.

TTABlog comment: It's a tough climb to get to the top of Dilution Mountain, but if you get there, the trademark world is at your feet.

Text Copyright John L. Welch 2011.

TTAB Dismisses BLACKBERRY's 2(d) Opposition to FASHIONBERRY for Online Fashion Magazines

Applicant Fashionberry Inc., appearing pro se, did not submit testimony or any other evidence, nor did it file a brief, but it still survived a challenge by RIM to its application to register the mark FASHIONBERRY & Design (shown below) for "providing online nondownloadable magazines in the field of fashion design and fashion trends." RIM claimed that the mark would be likely to cause confusion with its registered mark BLACKBERRY for handheld electronic devices and related goods and services. Research In Motion Limited v. Fashionberry, Inc., Opposition No. 91191572 (September 30, 2011) [not precedential].


RIM claimed that the BLACKBERRY mark is famous in light of its use of the mark since 1999, significant sales, world-wide user base, and extensive promotion and advertising. Unfortunately, RIM failed to submit any evidence to support its claim to fame. It submitted an annual report, but statements in an annual report are inadmissible hearsay: "The annual report is of record only for what it shows on its face; it is not admissible for the truth of any matters stated therein, such as opposer's sales figures."

RIM could rely on its registrations to show use of the mark since the filing date of the underlying applications (December 1998). However, that was "not an extraordinary length of time," and insufficient to prove fame "without evidence of the extent of consumer exposure to or recognition of the mark over the years."

RIM also contended that involved goods/services are "highly related," arguing that content provided by applicant's online fashion magazines "is commonly accessed through wireless devices such as BLACKBERRY smartphones." Even assuming, despite the lack of proof, that such content is commonly accessed on RIM's devices, the evidence of relatedness was still insufficient. "The fact that the goods and services in some broad sense may all be 'related to content' is clearly not a sufficient basis, in and of itself, for a finding that the goods and services are related."

There was no evidence of record as to RIM's channels of trade, no evidence as to the cost of RIM's goods, and no evidence of the degree of care exercised by buyers of RIM's goods.


As to the marks, the Board found the differences in the marks to be "readily apparent," their meaning substantially different, and the commercial impressions distinct. As a whole the difference "clearly outweigh [the] similarities, particularly when we consider the differences between the parties' respective goods and services."

And so the Board dismissed the opposition.

TTABlog comment: RIM got rope-a-doped, didn't it? Is there any doubt that RIM could have proved BLACKBERRY to be a famous mark? Maybe RIM will attempt a second bite of the apple via a civil action for review under Section 1071(b)?

Text Copyright John L. Welch 2011.

TTAB New Filings and Performance Measures for FY 2011

The TTAB has issued its "New Filings and Performance Measures" for Fiscal Year 2011 (here). I note two things in particular. First, with more than 2,500 appeals filed in each of the last two years, why are there only about 450 decisions issued each year (including inter partes decisions). What happens to all these appeals? Are most notices of appeal filed and then not pursued, perhaps due to reconsideration by the Examining Attorney? Second, I note that the duration of pendency rose during the year. Is this a result of the push to finish the revision of the TBMP?

TTAB Affirms 2(e)(1) Deceptively Misdescriptive Refusal of BLACK FLEECE for Fleeceless Clothing

The Board affirmed a Section 2(e)(1) refusal of the mark BLACK FLEECE in standard character form, for various clothing items "not made of fleece fabric," finding the mark to be deceptively misdescriptive under Section 2(e)(1) and lacking in acquired distinctiveness under Section 2(f). Three consumer declarations submitted by Applicant (Brooks Brothers) were "hardly overwhelming evidence" of customer perception of the mark, and were "far from conclusive" as to "source-indicating recognition by consumers." In re Retail Brand Alliance, Inc., Serial No. 77049126 (September 15, 2011) [not precedential].


Applicant conceded that the term "'black fleece' is facially misdescriptive of apparel that is not made of black fleece," but it contended that consumers are not likely to believe the misrepresentation. In any case, urged Applicant, the mark has acquired distinctiveness.

Examining Attorney David Taylor argued that the evidence "demonstrates that the description conveyed by the mark is plausible because consumers regularly encounter goods that contain the features or characteristics of the mark, namely, 'black fleece.'" And he maintained that Applicant's 2(f) evidence fell short.

Section 2(e)(1): The Board set out the test for Section 2(e)(1) deceptive misdescriptiveness: First, does the mark misdescribe the goods or service to which it applies? Second, if so, are consumers likely to believe the misdescription.

The first prong of the test was satisfied because BLACK FLEECE describes a type of clothing and, as Applicant conceded, the identified goods are "not of that type." As to the second prong, the Board found "the record supports a finding that consumers may encounter clothing of the type identified in the involved application that are made of black fleece [e.g., coats, jackets, and gloves] , ... customers are likely to believe that BLACK FLEECE misdescribes the identified goods."

Applicant argued that customers for its expensive clothing items are not likely to believe or expect that the goods are made from fleece, but the Board observed that "not all clothing items are purchased with such a degree of care." Moreover, "applicant's goods under the BLACK FLEECE mark are not only available to discerning consumers of Brooks Brothers stores, but to anyone," and the goods are offered online and via catalog.

Catalog and Internet purchasers of applicant’s goods do not enjoy firsthand examination thereof prior to purchase. Furthermore, catalogs and Internet postings do not necessarily describe or depict goods in such detail as to prevent consumers from believing that the goods are made of fleece.

In addition, a consumer hearing a radio advertisement for Applicant's goods "might expect the clothing items to be made of fleece materials."

Applicant pointed to a first set of three declarations submitted on this point, but the Board gave them short shrift because the declarants were clothing or fashion professionals, not consumers of Applicant's goods. It also provided declarations from three consumers, but the Board found them to be "hardly overwhelming evidence of consumer perception."

And so the Board ruled that the mark BLACK FLEECE is deceptively misdescriptive of the goods under Section 2(e)(1).

Acquired distinctiveness: Applicant has used its BLACK FLEECE mark since 2007, a duration insufficient to create a prima facie case of acquired distinctiveness. Applicant pointed to its use of the marks BROOKS BROTHERS, GOLDEN FLEECE, and the "hanging sheep" logo since the mid-1800s as prima facie evidence of acquired distinctiveness under Rule 2.41(b), but the Board pointed out that an applicant may "tack" such earlier marks only if they are the "legal equivalent" of BLACK FLEECE. Here, the marks are obviously not "the same" as BLACK FLEECE. Moreover, there was no evidence that the notoriety of Applicant's other marks has been transferred to the BLACK FLEECE mark.

Applicant's sales and advertising figures under the BLACK FLEECE mark lacked context vis-a-vis others in the same field, and so had little probative value. In any case, the figures were "not overwhelming." Similarly, its data for website hits lacked context. And its evidence of marketing impact failed to establish that consumers recognized BLACK FLEECE as a source indicator.

For instance, applicant points to 2.8 million consumer impressions and 15.5 million viewership impressions of the January 2009 cover of GQ magazine featuring a photograph of the actress Jennifer Aniston naked except for a BLACK FLEECE necktie. However, the record does not reveal whether viewers of the image of an otherwise unclothed Ms. Aniston paid particular attention to her necktie and, if so, whether the BLACK FLEECE mark was visible on it or they recognized it as belonging to the BLACK FLEECE collection.

Finally, although the three declarations from customers provided direct evidence of source-indicating recognition, "the very small number ... renders them far from conclusive."

In sum, Applicant's evidence fell "rather short" of demonstrating acquired distinctiveness.

TTABlog note: The Board, in its final footnote, pointed out that on a different record Applicant might establish acquired distinctiveness. Maybe a survey is in order? A new application, or a civil action for review of this decision under Section 1071(b), would provide the opportunity for submission of additional evidence.

Text Copyright John L. Welch 2011.

USPTO Issues 8th Edition of TMEP

On October 15th, the USPTO issued the 8th Edition of the Trademark Manual of Examining Procedure (TMEP). [download here].

The Manual is published to provide trademark examining attorneys in the USPTO, trademark applicants, and attorneys and representatives for trademark applicants with a reference work on the practices and procedures relative to prosecution of applications to register marks in the USPTO. The Manual contains guidelines for Examining Attorneys and materials in the nature of information and interpretation, and outlines the procedures which Examining Attorneys are required or authorized to follow in the examination of trademark applications.

Trademark Examining Attorneys will be governed by the applicable statutes, the Trademark Rules of Practice, decisions, and Orders and Notices issued by the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Commissioners, or Deputy Commissioners. Policies stated in this revision supersede any previous policies stated in prior editions, examination guides, or any other statement of Office policy, to the extent that there is any conflict.

Summary Judgment: TTAB Dismisses "MUSCLE MILK" 2(d) Opposition to "NUTRI LECHE"

Agreeing with Applicant that the differences between the marks are "so great as to avoid likelihood of confusion," the Board entered summary judgment in favor of Applicant, finding the applied-for mark NUTRI LECHE for milk-based beverages containing added nutrients, not confusingly similar to MUSCLE MILK and MIGHTY MILK for nutritional supplements, fortified beverages, and related goods. Cytosport, Inc. v. Comercializadora de Lácteos y Derivados, S.A. de C.V., Opposition No. 91194995 (September 26, 2011)[not precedential].


Applicant provided an English translation of "leche" as "milk," and disclaimed LECHE. It maintained that the dominant portion of its mark is NUTRI, which has no meaning, although it may suggest that the product is "nutritious" or contains "nutrients." Opposer contended that it needed additional discovery under FRCP 56(f), but the Board noted that Applicant had conceded all the du Pont factors except for the dissimilarity in the marks, and further that Opposer had been able to address that issue substantively in its brief.


Turning to the substance, the Board likened this case to Kellogg v. Pack'em Enterprises, where the single factor of the dissimilarity of the marks [FROOT LOOPS v. FROOTEE ICE] outweighed the other relevant factors and was dispositive of the 2(d) claim.

The Board pointed out that, although LECHE means "milk" in English, Applicant seeks to register NUTRI LECHE, not NUTRI MILK. "Applicant's mark creates a markedly different visual appearance as compared to opposer's pleaded MILK marks." Moreover, they do not sound alike and do not share the same meaning.

[T]he first term in applicant’s mark, i.e., NUTRI, is not a recognized word but may suggest that applicant’s goods are nutritious or contain nutrients. In comparison, the first terms in opposer’s pleaded marks are MUSCLE and MIGHTY which do not convey anything about nutrients or nutrition.In view thereof, we find that when wording with completely different connotations is added before LECHE and MILK, i.e., NUTRI on the one hand and MUSCLE and MIGHTY on the other, the ensuing combination of the terms create marks with completely different connotations.

Finally, the commercial impressions of the marks are "utterly dissimilar" because of the differences in connotation, appearance, and sound.

And so the Board dismissed the opposition.

TTABlog note: Cytosport is an active TTAB litigant, having commenced about 17 proceedings since January 2010. Do you consider it to be a trademark bully? Or is it merely an appropriately aggressive trademark owner?

Text Copyright John L. Welch 2011.

Who Owns the Mark "WORLD CHAMPIONSHIP CABBAGE CHUCK"? Pam Chestek Knows

IP Ownership guru Pamela Chestek, at her Property, intangible blog, reports (here) on the TTAB ownership battle between a church and its parishioner over the registered mark WORLD CHAMPIONSHIP CABBAGE CHUCK for "charitable fund raising by means of an entertainment event where competitors throw cabbages." St. Denis Parish v. Diana Von Straten, Cancellation No. 92051378 (Sept. 28, 2011) [not precedential].

Test Your TTAB Judge-Ability on this Trademark Specimen of Use

The PTO refused registration of the mark ORGANIZED GOES BEYOND ORDINARY for "plastic storage containers for household or domestic use" on the ground that Applicant failed to provide an acceptable specimen of use. The specimen submitted comprised a screenshot from Applicant's website (immediately below), which Applicant contended constituted a "display associated with the goods." How would you rule? In re DV International, Inc., Serial No. 77501020 (September 29, 2011) [not precedential].


Examining Attorney Shaila A. Settles maintained that the specimen is merely advertising material and is not an acceptable trademark specimen. The Board agreed.

The Board found two infirmities with the specimen. First, it does not appear as a source indicator. The image "appears to be the first slide in an online presentation where the viewer who is ready immediately to make a purchase from applicant's kitchen or office collection can 'SKIP' the next dozen promotional slides."

To the person viewing such a slide show, the expression “Organized goes beyond ordinary” is no more likely to be perceived as a source indicator for these goods than would be hypothetical, prosaic slogans like “See the difference,” “Sophisticated design,” or “Soft, Textured Surface,” etc.

Second, the specimen is unacceptable as a "website-based" specimen, as the Examining Attorney contended. Web pages have been found acceptable as displays associated with the goods when the screen-print of the web page also contains "adequate information for routinely and easily placing orders for the goods." [See Valenite, Dell, Anpath, and Quantum].

As in the physical world of a catalogue (Land’s End, Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314, 1316 (E.D. Va. 1992)), so it is in the case of the virtual, online world –- the critical threshold query is determining whether the specimen has the nature of a point-of-sale display.

Here, the purported point-of-sale display does not provide the consumers with the information normally associated with ordering products of that kind. The fact that the applied-for mark appears close to an image of the goods is not enough.

[H]ere we have only what appears to be the first slide of a series, with no idea what the skips, slides, clicks or links may be before reaching critical information (e.g., details of sizes, features, prices, ways to order, etc.) about specific goods. A prospective purchaser cannot be presumed to be at the point of making a purchase at the time this particular advertising copy appears on the screen.

The Board concluded that the specimen is merely promotional material and not a display associated with the goods.

TTABlog note: The Board observed that if Applicant were seeking to register the mark MADE SMART, this might be a good specimen, "much as would a photograph of the same label on a storage bin."

Text Copyright John L. Welch 2011.

Which of These Four Section 2(d) Refusals Did the TTAB Reverse?

Here are four appeals from Section 2(d) refusals to register. The Board reversed at least one, but maybe not more. [By the way, I've heard a TTAB Judge say that most 2(d) cases can be decided just by looking at the involved goods/services and the marks.] Let's see how you do with these four. Answer found in comments. [Email subscribers will have to surf to the TTABlog in order to see the comments].


In re KCK International, Inc., Serial No. 77820964 (September 27, 2011) [not precedential]. Refusal to register the mark shown immediately below for "liquid tire puncture sealant used to protect automobile, motorcycle, bicycle and other heavy equipment tires from punctures" [SEAL disclaimed] in view of the registered mark PERMA SEAL for “distributorship services in the field of tire repair materials."


In re Filini Wine Company, LLC, Serial No. 77843310 (September 30, 2011) [not precedential]. Refusal of FILINI for wine in view of the registered mark FELLINE for wines.


In re CSI Collision Specialist, Inc., Serial No. 77797115 (September 30, 2011) [not precedential]. Refusal to register the mark CSI & Design (below) for "vehicle body repair services" in view of the registered mark CSI for "repair and maintenance of gas engines, gas compression equipment, electronic ignition, control equipment, lubrication and emission control equipment."


In re Boyer Refrigeration, Heating & A/C., Inc., Serial No. 76699557 (October 6, 2011) [not precedential]. Refusal of BOYER & Design (below) for "commercial and residential installation, replacement service and maintenance of heating, refrigeration, and air conditioning units, namely, gas and oil furnaces, gas and oil heat pumps, gas and oil boilers, geothermal units, air conditioning, air conditioning units, chillers, walk-in coolers and walk-in freezers,” in light of the registered mark BOYER for "construction services, namely, civil construction and tunneling; installation and maintenance of electrical systems; mechanical equipment installation; marine construction; and house and building demolition."


Text Copyright John L. Welch 2011.

California Bar Presents its 36th Annual IP Institute: November 10 - 12

Registration is now open for the 36th Annual IP Institute, the State Bar of California IP Section’s premier multi-day conference, to be held at the Marriott Laguna Cliffs Resort & Spa, Dana Point. This year’s Institute will once again offer a wide array of unique IP programming covering patents, trademarks, copyright, trade secrets and cyberlaw. For more information about the Institute and to register, please visit the Institute’s website (here).

TTAB Tosses Out CAVERN CLUB Fraud and 2(a) False Association Claims

When I hear "Cavern Club," I think of the Beatles and their birthplace. But so what? Hard Rock Cafe registered the mark CAVERN CLUB for clothing and for restaurant and bar services in February 2000. Cavern City Tours petitioned to cancel the registration in August 2005 on the grounds of fraud and Section 2(a) false association, but lost on both counts. Cavern City Tours Ltd. v. Hard Rock Cafe International, Inc., Cancellation No. 92044795 (September 29, 2011) [not precedential].


Petitioner Cavern City Tours has been offering music and live entertainment at The Cavern Club in Liverpool since 1991, and Beatles-themed tours since 1983. The original Cavern Club opened in 1957 but was closed off and on until 1991, when Petitioner took over. Petitioner has never directly advertised The Cavern Club in the USA. In April 1994, one of Petitioner's owners gave an interview in Toronto, stating that Petitioner planned to establish a Cavern Club-themed nightclub in the USA. One week later, Hard Rock filed its application to register CAVERN CLUB.

Fraud: Petitioner claimed that Hard Rock committed fraud when it filed its application to register (verifying that it knew of no other person who had the right to use the mark in commerce) because it was "intimately familiar with Petitioner's mark and its fame."

However, Petitioner failed to meet its burden of proof to show that (1) Hard Rock knew of any rights Petitioner had to the mark when the application was filed; and (2) Hard Rock intended to procure a registration to which it was not entitled.

Petitioner argued that Hard Rock is as a sophisticated company that holds itself out as "one of the world's largest repositor[ies] of rock and roll memorabilia, including thousands of pieces of Beatles memorabilia and dozens of pieces of Liverpool Cavern Club memorabilia." The Board therefore, according to Petitioner, must inescapably conclude that Hard Rock knew of the prior use of the Cavern Club mark by Petitioner and its predecessors.

The Board observed that in order to prove fraud by indirect evidence, the evidence must point to no reasonable conclusion other than an intent to deceive. Here there was no evidence that anyone associated with Hard Rock ever heard the Toronto interview. And the Board refused to infer, from the facts stated by Petitioner, that Hard Rock knew of any claimed rights to THE CAVERN CLUB in the United States and intended to deceive the PTO.

The Board found that Petitioner did not meet its "heavy burden of proof" in showing fraud, and it therefore dismissed the fraud claim.


Section 2(a): "Because Petitioner's name is not The Cavern Club, it must establish that its identity or persona is The Cavern Club." However, there was little, if any, evidence that THE CAVERN CLUB is the identity or persona of Petitioner. Much of the evidence concerned the significance of the Cavern Club to Beatles fans and did not mention Petitioner, and it linked The Cavern Club to the original proprietors of the club, not to Petitioner. Thus the evidence did not point uniquely to Petitioner, as required by Section 2(a).

Moreover, the record showed that Petitioner's customers from the USA visit The Cavern Club because the Beatles performed there in the 1960s, and not because the customers want to see any attractions or performances at the club.

In sum, it does no dishonor to the hallowed space at 10 Mathew Street in Liverpool to conclude that the evidence of record fails to establish that THE CAVERN CLUB points uniquely to petitioner.

Noting that Petitioner has more than one business interest, including operating a tour called "Magical Mystery Tour," the Board found this to be inconsistent with Petitioner's position that its persona is The Cavern Club. "That petitioner offers another service under a different mark undercuts its argument that petitioner's persona is The Cavern Club."

Finally, the Board noted that The Cavern Club in Liverpool had four previous owners. "Petitioner has not pointed to any persuasive evidence that it has the persona of The Cavern Club as opposed to any of the other earlier Cavern Clubs.

In sum, the Board ruled that Petitioner had failed to establish THE CAVERN CLUB "is unmistakably associated with a particular personality or 'person' that points uniquely to plaintiff."

TTABlog comment: I wonder why the Board didn't just decide the 2(a) claim, since without Petitioner having some right under 2(a), how could there be fraud? Perhaps the Board wanted to drill into our heads once more how hard it is to prove fraud.

Text Copyright John L. Welch 2011.

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

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


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

Precedential No. 27: TTAB Sustains 2(d) and Dilution Claims in MOTOWN Challenge to MOTOWN METAL for Toy Vehicles

In a 62-page opinion, the Board sustained UMG's opposition to the mark MOTOWN METAL for toy vehicles and accessories, finding it likely to cause confusion with, and likely to dilute by blurring, the famous mark MOTOWN for musical entertainment and musical recordings. UMG Recordings, Inc. v. Mattel, Inc., 100 USPQ2d 1868 (TTAB 2011) [precedential].


The Board began by tossing out Mattel's half-baked counterclaim, which sought to "cancel and/or limit UMG’s registrations to the extent they apply to toys, games and playthings." The problem was that UMG's registrations did not cover those goods, and so the relief sought was "irrelevant."

Next, the Board criticized the parties for the size of the record, which included 125 pages of objections, all of which the Board overruled. It complained that both parties submitted much more evidence than was necessary to support their respective claims. [I'd rather err on the side of submitting too much than not enough, wouldn't you? - ed.].

Turning to the merits, the Board reviewed the history of Motown records, finding that Opposer has used the mark MOTOWN since 1959 in connection with musical recordings and performances. It also proved by licensees since 2003 of the common law design mark to the right, for toys and games, including board games and karaoke. UMG admitted that "Motown" is a play on "Motor City," which is commonly understood to refer to Detroit, Michigan.

Mattel's MOTOWN METAL toy vehicles were first shipped in 2006 as part of its "Hot Wheels" line, and consisted of seven items replicating cars made by Detroit auto makers. Mattel contended that "Motown" is merely a nickname for Detroit and therefore is a "generic geographic description" entitled to only "extremely limited protection."


The parties submitted expert testimony regarding the significance of the word "Motown." Mattel's expert opined that "Motown" refers to the record company, but more broadly is a descriptor for a type of musical style or genre not limited to that record company. UMG's expert asserted that, to the extent there is a "Motown" style of music, that merely emphasizes the strength of the MOTOWN mark. Moreover, he contended that if "Motown" is used to refer to Detroit, that reference is derived directly from Motown and the Motown sound.

The Board found that the term "Motown" was created by Barry Gordy, Opposer's founder, and refers to a style of music. However, Mattel did not establish that this term is "generally understood to describe a style reflected in the music of non-Motown artists." The Board noted that, since 2003, the media have used the word Motown to refer to Detroit; dictionaries define "Motown" as Opposer's record company, the style of music, and the city of Detroit.

Likelihood of confusion: The Board found that, when created, the mark MOTOWN was arbitrary and inherently distinctive, and it "only became stronger in view of the established fact that Mr. Gordy and his company forged a new popular music style," a style that is "strongly and primarily associated with opposer."

Sales and advertising under the MOTOWN mark were "extensive," and the demonstrated popularity of the MOTOWN label and its artists led the Board to conclude that Motown is "very famous in connection with musical recordings and musical entertainment." And although the mark is not famous for the licensed goods, the Board noted that "a famous mark such as Motown can be expected to cast a long shadow and to be used in connection with numerous collateral goods, i.e., consumers would expect certain non-music-related items containing the Motown brand to be sponsored by opposer."

The Board concluded that the adoption of the word "Motown" to refer to Detroit does not diminish the strength of MOTOWN as a mark. The uses of "Motown" in the media are not commercial uses, and a trademark owner has "no right to control public discourse whenever the public imbues his mark with a meaning beyond its source-identifying function." UMG actively policed its mark, and third-party uses of "Motown" in the Detroit area were considered to be insignificant and/or non-competing. In short, these third-party uses did not diminish the fame or strength of the MOTOWN mark or render it weaker due to geographical descriptiveness.

As to the goods/services, Mattel's toys were close enough. The record showed that Opposer has licensed the MOTOWN mark in connection with a wide range of goods and services, and consequently:

It requires no stretch of the imagination for consumers to believe that these varied collateral goods could reasonably include toy cars. Thus, particularly in view of the fame of opposer's MOTOWN marks in connection with its music and entertainment services, we find that applicant's “toy vehicles” are sufficiently related to, and reasonably within the scope of, opposer’s MOTOWN-branded collateral goods and are likely items in opposer’s MOTOWN-branded retail store and museum gift shop, that confusion as to source is likely if identified by substantially similar marks.

As to the marks, the Board pointed out that as the strength of a mark increases, the degree of similarity between marks to support a finding of likely confusion decreases. Moreover, in Mattel's mark, "the principal connotation of MOTOWN will be as a reference to opposer, whether or not it also conjures up the city of Detroit; and this connotation is not diminished or changed by the addition of the highly suggestive, if not merely descriptive, term METAL to the mark."

The Board concluded that mark MOTOWN METAL is "substantially similar to opposer’s word mark MOTOWN, and significantly more similar than dissimilar to opposer’s other MOTOWN marks."

And so the Board found confusion likely and it sustained the Section 2(d) claim.

Dilution: Although UMG did not provide survey or other evidence measuring the public’s "actual" recognition” of opposer’s MOTOWN marks, the Board found the evidence of public exposure so strong "that we infer from this significant actual recognition among the general public as well." The fame of the MOTOWN mark is not limited to a geographic region, segment of an industry or service, or particular channel of trade.

The Board then turned to the six non-exhaustive factors of Section 43(c). It found the marks to be sufficiently similar that the MOTOWN METAL mark will "trigger consumers to conjure up" Opposer's famous mark. Furthermore MOTOWN is inherently distinctive, it has been in substantially exclusive use, and it enjoys substantial recognition.

There was no evidence that Mattel intended to create an association with Opposer's mark, and no evidence of any actual association.

Balancing these factors, the Board found that the MOTOWN METAL mark is likely to dilute Opposer's mark, and it sustained the Section 43(c) claim.

TTABlog comment: I don't think MOTOWN METAL for toy cars conjures up MOTOWN Records, nor is it confusingly similar to the MOTOWN mark. To me, MOTOWN METAL for toy cars connotes American autos made in Detroit. Seems to me that Mattel got shafted here. What do you think?

I note that Mattel did not disclaim the word "Motown." Legally it wouldn't have made a difference, but shouldn't Mattel have done so in light of its geographical descriptiveness argument? Suppose Mattel had disclaimed "Motown" after an Examining Attorney's requirement of same. Would that have made a difference here? I doubt it. Since MOTOWN is a "very famous" mark, it is perhaps invincible.

FWIW, two years ago, the Board sustained UMG's opposition to MTOWN & Design for clothing, finding the MOTOWN mark famous for Section 2(d) purposes. [TTABlogged here].

Text Copyright John L. Welch 2011.

TTAB Affirms Refusal to Register Shape of Temperature Control Device due to Lack of Acquired Distinctiveness

Despite its use of the applied-for product designs for more than 60 years, a 70% market share, and some 20 million temperature control units sold, Applicant Johnson Controls failed to convince the Board that the designs (shown below) have acquired distinctiveness. And so the Board affirmed the refusal to register under Sections 1, 2, and 45. In re Johnson Controls, Inc., Serial Nos. 77612039 and 77612049 (September 27, 2011) [not precedential].


In case you couldn't tell, the mark on the left consists of the three-dimensional knob and display configuration, the bracket on top, and the rectangular shape of the device; the other mark consists of only the knob and display. [i.e., the portions shown in solid lines in the drawings].

Examining Attorney Douglas M. Lee maintained that the marks are not inherently distinctive and that Johnson failed to provide sufficient proof of acquired distinctiveness. Of course, under Wal-Mart v. Samara Bros., product design trade dress cannot be inherently distinctive. Registration requires proof of acquired distinctiveness, and the applicant has the burden to establish same. Moreover, under applicable Board precedent, an applicant "faces a heavy burden in establishing the distinctiveness of a product design."

Johnson alleged that it has used its marks since at least the 1940s and that it has a share of the market exceeding 79%. From 2000 to 2009, its sales exceeded $130 million and more than 20 million units were sold. Johnson contended that it has advertised and promoted its control units under the mark, and it provided product bulletins, catalogs, technical bulletins, and other materials.

The Board noted that the "most persuasive" types of evidence in a product design case are "look for" advertising and consumer declarations. Here, no such evidence was presented by Johnson.

As to the proof that Applicant did provide, the product bulletins describe the features of the devices, but do not "set any of the features apart, or tout them in such a way that they would be perceived as source-indicating features." The catalogs include photos of the devices but do not refer to any of the subject design features, and additional advertising and Johnson's website make no mention of any of the features but merely include a photograph of the device.

Moreover, based on the Examining Attorney evidence, the Board found that "round-shaped knob adjustments for controllers, display windows for reading temperature, and a square or rectangular-shaped device are not uncommon design features of temperature control devices."

The Board accorded little probative value to the self-serving statement of Applicant's declarant that customers recognize these features as source indicators, in the absence of "sufficient direct or circumstantial evidence corroborating the assertion." In short, Johnson's evidence of acquired distinctiveness fell short of showing "that consumers have been conditioned to perceive the particular combinations of design features claimed in each application as source-indicating trademarks."

The Board noted that it would need to see "a great deal more evidence (especially in the form of direct evidence from customers)" than that submitted by Johnson.

TTABlog comment: It's danged hard to get a product configuration past the TTAB. There have been a few during the life of this blog (the Walther "James Bond" pistol, the Cartier watch, and the Baldwin key head come to mind), but not many.

Text Copyright John L. Welch 2011.

TTAB Finds No Violation of Section 10 in Assignment of Intent-to-Use Application for YING YANG VODKA

IP Ownership maven Pamela Chestek, at her Property, intangible blog (here), discusses the Board's recent decision in Philip Restifo v. Power Beverages, LLC substituted for Paul Kidd (aka Ishmael Hassan), Opposition No. 91181671 (September 21, 2011) [not precedential], in which trademark ownership issues abound. The dispute grew out of discussions between Restifo and Kidd beginning in 2006 concerning the making and marketing of vodka.

This post will highlight one of the issues the Board decided: whether Kidd's assignment of his intent-to-use application to register the mark YING YANG VODKA & Design, shown here, for vodka to a company called Power Beverages, violated Section 10 of the Lanham Act. Kidd's business did not involve manufacturing or selling vodka, but only contemplated licensing to another for manufacturing and distribution.

Under Section 10, an ITU application may not be assigned prior to the filing of proof of use, except for an assignment to a successor to the business of the applicant, or portion thereof, to which the mark pertains, if that business is ongoing and existing.

Kidd filed his application on January 10, 2007, and recorded the assignment to Power Beverages on December 24, 2008. The question was whether Kidd had an "ongoing and existing business" that was transferred along with the intent-to-use application. The Board pointed out that Opposer Restifo had the burden of proof on the issue of whether the assignment was valid, and the Board concluded that Kidd did transfer an "ongoing and existing business."

After the relationship with opposer terminated, Mr. Kidd "brought in" a third party and, with Mr. Hills, sought to have the YING YANG VODKA branded vodka produced. Moreover, by the terms of the December 3, 2008 agreement (as incorporated into the December 12, 2008 Operating Agreement), Mr. Kidd assigned all rights he had acquired from Ying Yang Tours to Power Beverages 'upon formation' of [Power Beverages]. Finally, a review of the December 3 and 12, 2008 agreements reveals that Mr. Kidd relinquished any separate personal interest he had in the ongoing business; his remaining interest in the business thereafter was as a Member of Power Beverages, LLC.

The Board distinguished this factual scenario from that in The Clorox Co. v. Chemical Bank, 40 USPQ2d 1098 (TTAB 1996), where it was apparent from the assignment document itself that the assignee was not a successor to the business of the assignee since no assets were transferred other than the applications themselves.

TTABlog comment: As Pam Chestek suggests, owners of "zombie" trademarks should take note of this decision when contemplating an assignment of an ITU application. He or she should also note the FUNNY FACE decision [TTABlogged here] regarding challenges to the bona fides of an ITU applicant.

Text Copyright John L. Welch 2011.

ABA Webinar Tomorrow: Trademark Trial and Appeal Board Litigation Best Practices

The ABA's Section of Intellectual Property Law will present a webinar tomorrow, entitled "Trademark Trial and Appeal Board Litigation Best Practices." The fun begins at 12:30 EST. Details here. The faculty is listed below:

Patricia S. Smart (Moderator), Partner, Smart & Bostjancich,
Chicago, IL

Gerard F. Rogers, Chief Administrative Trademark Judge, Trademark Trial and Appeal Board, US Patent and Trademark Office, Alexandria, VA

Peter W. Cataldo, Administrative Trademark Judge, Trademark Trial and Appeal Board, US Patent and Trademark Office, Alexandria, VA

Angela Lykos, Administrative Trademark Judge, Trademark Trial and Appeal Board, US Patent and Trademark Office, Alexandria, VA

Cheryl Butler, Interlocutory Attorney, Trademark Trial and Appeal Board, US Patent and Trademark Office, Alexandria, VA

Test Your TTAB Judge-Ability on this Specimen of Use for Financial Advisory Services

Examining Attorney Khanh M. Li issued a final refusal of the mark R&B SOLUTIONS for various financial advisory services, on the ground that the specimen of use (shown below) does not "evidence an association between the mark and the services specified in the application." The specimen consists of a photograph showing the mark on signs in front of and on a building. Applicant appealed. How would you rule? In re R & B Receivables Management, Inc., Serial No. 77855168 (September 23, 2011) [not precedential].


Applicant requested that, if the Board should find the specimen unacceptable, Applicant be allowed to amend the application to a Section 1(b) intent-to-use basis. No, said the Board. Once an application has been considered and decided on appeal, it will not be reopened except for the entry of a disclaimer or upon order of the Director.

Turning to the specimen issue, the Board first noted that under Trademark Rule 2.56(b)(2), a service mark specimen of use must show the mark as actually used in the sale or advertising of the services.

When the specimen of use shows the mark in the rendering of the services, it need not disclose the nature of the services. For example, in In re Metriplex Inc., 23 UPSQ2d 1315 (TTAB 1992) the computer printouts displaying the mark without disclosing the services was acceptable because it shows use of the mark as it appears on the computer terminal while in the course of rendering the services to the actual consumer.

However, when a service mark is used in advertising, the specimen must show an association between the mark and the services. "A specimen that shows only the mark, with no reference to the services, does not show service mark usage."

Here the specimen of use does not contain any reference to Applicant's financial advisory services. Applicant contended that the statement in the application that the sign appears at and on the building where the services are rendered is enough. Not so, said the Board.

Here, the signage is not used in the rendering of the service. The sign is not providing financial advisory services as the computer was providing data transmission services at the time that mark was displayed.

In other words, while [the sign] may indicate a source, it is a source in a vacuum unconnected to any service, at least without prior knowledge of an existing client. *** Upon seeing this sign, it could be literally for anything that one might find in an office park.

And so the Board affirmed the refusal.

TTABlog comment: Well that was easy, wasn't it? What if the services were sign manufacturing? Would this specimen of use be adequate? Not very likely.

Text Copyright John L. Welch 2011.

Recommended Reading: Measuring Consumer Confusion through Online Surveys - Practical Guide to Survey Acceptance

Hal Poret and William D. Schultz recently gave an informative presentation on online surveys, entitled "Measuring Consumer Confusion through Online Surveys - Practical Guide to Survey Acceptance." (.pdf of outline here). Hal Poret is Senior Vice-President of ORC International in New York City, and William D. Schultz is a partner in Merchant & Gould P.C., in Minneapolis.

Introduction: Trademark practitioners have begun using the Internet as an alternative to telephone, mall-intercept, and other in-person surveys. The shift to the online format comes from a variety of factors including the rise of consumers using the Internet, the affordability, speed, and ability to track real-time results of the online format, and the increased comfort level of online surveys in general. The relative newness of the Internet format, however, may cause some trademark practitioners pause before recommending the online format to their clients. Moreover, the relative lack of a clear, proven track record in federal court opinions for the online survey has dissuaded online surveys in the past. This outline discusses the issues trademark professionals should consider in deciding whether to use an online survey. The outline also includes references to recent federal court opinions addressing online surveys.

Precedential No. 26: TTAB Grants Motion to Exclude 26 Belatedly-Identified Trial Witnesses

Better late than never didn't work for this Opposer, when the Board granted Applicant's motion to quash and to exclude the testimony of 26 [count 'em, 26!] potential witnesses first identified in amended and supplemental disclosures served six-months after the last date for Opposer's pre-trial disclosures. As to the underlying facts, you, dear reader, are invited to slog through them yourself. Great Seats, Inc. v. Great Seats, Ltd., 100 USPQ2d 1323 (TTAB 2011) [precedential].


Opposer contended that any failure to disclose the witnesses was harmless, and was justified because Opposer was concentrating its efforts on settlement. It further argued that these witnesses were crucial to its case.

The Board applied the five-factor test of Southern States Rack & Fixture in finding that the belated identification of these witnesses resulted in "unfair surprise to applicant and deprived applicant of any opportunity to take discovery from them." Applicant could not "cure the surprise" without moving to quash or seeking to re-open discovery, or preparing for unplanned cross-examination of the witnesses during their trial testimony. And the late identification disrupted the trial schedule.

The testimony of the witnesses may be important since Opposer has the burden of proof on the issue of priority, and so this factor may favor Opposer. However, it has two other witnesses who can address the issue of prior rights in the GREAT SEATS mark.

Opposer's explanation suggests that it "only fully considered how it would establish its claims after settlement discussions ended."

To allow all of the new potential witnesses to testify under these circumstances would overlook and essentially excuse opposer's failure to supplement discovery and reward its correspondingly late disclosure of these witnesses. Therefore, this factor strongly favors applicant.

On balance, the Board found Opposer's actions "neither harmless nor substantially justified," and it found the "estoppel sanction" appropriate.

As to a 27th belatedly-named witness, one Mr. Kelly, his identify was disclosed in opposer's initial pre-trial disclosures (but not during discovery), and therefore he was allowed to testify, but only after Applicant has had the opportunity to take his discovery deposition.

And so the Board re-sent the trial periods.

TTABlog note: The same parties were involved in a cancellation proceeding in which a registration owned by the Opposer here was cancelled as void ab initio on the ground that the underlying application was not filed by the owner of the mark. [TTABlogged here].

Text Copyright John L. Welch 2011.

Test Your TTAB Judge-Ability: Is This a Case of Trademark Mutilation?

Under Rule 2.51(b), the mark shown on the application drawing must be a "substantially exact representation of the mark as used on or in connection with the goods and/or services." Here, Applicant Mastronardi sought to register the mark MEDLEY on the Supplemental Register, for tomatoes and vegetables, but Examining Attorney Shaila E. Settles refused registration on the ground that "the mark as it appears in the drawing is not a substantially exact representation of the mark as it appears on the specimen submitted with the allegation of use." In short, the mark depicted on the drawing is a mutilation. How would you rule? In re Mastronardi Produce, Ltd., Serial No. 77322943 (September 21, 2011) [not precedential].


The Board noted that an applicant may seek to register "any portion of a composite mark if that portion presents a separate and distinct commercial impression" that serves as a source indicator. As Professor McCarthy has observed, the issue of mutilation "all boils down to a judgment as to whether that designation for which registration is sought comprises a separate and distinct 'trademark' in and of itself."

Applicant contended that "the word GOURMET is obviously devoid of any source-indicating significance and would require a disclaimer if it were to be included," and so individuals encountering the specimen would recognize that the mark consists only of MEDLEY.

The Board agreed with the Examining Attorney. It was not persuaded that MEDLEY in Applicant's specimen "creates a commercial impression and thus a trademark that is separate and distinct from the term GOURMET."

[T]he terms GOURMET and MEDLEY appear next to one another approximately the same size in highly similar font in such a manner as to create the impression of the single mark GOURMET MEDLEY.

The Board noted that Applicant's arguments regarding the "source-indicating ability" of GOURMET are not supported by evidence. In any case, the disclaimer of a word does not remove the word from the mark; the consumer will still view the mark on the specimen as the unitary phrase GOURMET MEDLEY.

In short, the drawing of the mark is an impermissible mutilation of the mark as used on the goods. And so the Board affirmed the refusal.

TTABlog comment: Compare this decision with that of a different Board panel in the CONTINUUM case, TTABlogged here. Clearly the conclusion as to whether mutilation has occurred is a subjective one. Maybe for the sake of (possible) consistency, the same panel should review all mutilation cases?

Text Copyright John L. Welch 2011.

TTAB Finds FIRE ISLAND Primarily Geographically Descriptive of Beer

Examining Attorney Howard Smiga required disclaimer of the words FIRE ISLAND in Applicant's marks FIRE ISLAND BEER COMPANY LIGHTHOUSE ALE and the logo shown below, for "ale; beer," on the ground that the phrase is primarily geographically descriptive of the goods under Section 2(e)(2). Applicant declined to disclaim and then appealed, contending that "the geographic meaning of 'FIRE ISLAND' is too minor and unconnected to Applicant's goods to be the primary significance of the mark," and that "it would be incongruous for consumers to believe that Applicant’s goods originate on Fire Island." The Board affirmed the refusal to register. In re Fire Island Brewing Company, LLC, Serial Nos. 77696816 and 77696805 (September 23, 2011) [not precedential].


Applicant got off on the wrong feet when it asked the Board to take judicial notice of a registration issued to Applicant prior to the final refusal; the Board does not take judicial notice of registrations. Applicant also requested that, if the Board affirmed the disclaimer requirement, the application be remanded to the Examining Attorney for consideration of the issue of acquired distinctiveness. The Board doesn't do that either, unless the request is filed in a separate motion paper and includes a showing of good cause. Applicant provided neither.

Turning to the merits of the appeal, the Board observed that "[i]n order for a mark to be considered primarily merely descriptive under Section 2(e)(2), it must be shown that (1) the mark's primary significance is a generally known geographic location; and (2) that the relevant public would be likely to make a goods/place association, that is, would be likely to believe that the goods originate in the place named in the mark."

Applicant did not dispute that Fire Island is a generally known geographic location, and the Board concluded that Fire Island is neither remote nor obscure to the American public. Applicant did not provide evidence that the phrase has any meaning other than the geographically descriptive one.

As to the issue of goods/place association, this requirement is satisfied when the goods come from the specific location. Here, however, Applicant's goods are produced in Saratoga, New York, and there is nothing in the record connecting Saratoga with Fire Island.

When the goods are not actually produced in the location, we look to other points of contact that may be sufficient to consider the origin of the goods to be from the location (otherwise the mark may be primarily geographically deceptively misdescriptive) and for evidence that consumers would be likely to make that association.

In the NANTUCKET NECTARS case, the Board found the island of Nantucket to be a principal place of origin for the goods, even though the goods were manufactured elsewhere. On the other hand, the required goods/place association was not found in the MONTECITO DIET case, where the only contact was the individual applicant’s address.

Here, the evidence showed that commercial activity on Fire Island includes several bars, restaurants, and stores.

There is nothing in the record to support a finding that it would be incongruous or otherwise unexpected for the purchasing public to expect that bars, restaurants and stores on the island would sell beer or to believe that beer, produced, for example, from a brewpub, originates on Fire Island. *** In fact, based on applicant’s evidence of commercial enterprises on FIRE ISLAND, including bars and restaurants, it is reasonable to believe that a brewpub is on the island and offers its own label.

The Board then weighed Applicant's points of contact with Fire Island: (1) recipes for some of applicant's goods were developed on Fire Island; (2) applicant's website and labels tout the connection to Fire Island (including pictures and maps of the island and statements such as "Craft beer from The Other New York"); (3) the goods are sold on Fire Island in stores and restaurants; (4) applicant maintains inventory in a warehouse across the bay from Fire Island and conducts tastings and promotional events in the area, including on Fire Island; and (5) applicant’s owners maintain a presence on Fire Island through their home.

Although the Board recognized that "consumers might not believe that applicant’s beer and ale are mass produced and bottled on Fire Island, (obviously a difficult task when the only mode of transportation is a bicycle or a red wagon) certainly it is reasonable to believe the beer originates from there in the sense that Nantucket was 'a principal origin if not the principal origin' of Nantucket Nectars or was in 'some way connected to' Fire Island."

Concluding that "Fire Island" is a term that "applicant's competitors are entitled to use to describe the geographical origin of their beer and ale," the Board deemed the disclaimer requirement to be appropriate and it affirmed the refusals to register.

TTABlog comment: It really doesn't take much contact with the geographic location to trigger a goods/place association, does it? Seems to me that the Board should focus on consumer perception rather than a mechanical recitation of "contacts" with the location. Do consumers know where the owners of the business live, where the goods are warehoused, and where the recipes were created? If not, then aren't these facts irrelevant?

Text Copyright John L. Welch 2011.