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

Applicant applied to register the design mark shown below left, for various pharmaceutical preparations and pharmaceutical research services, but the PTO refused registration under Section 2(d), finding the mark likely to cause confusion with the mark shown below right, for various pharmaceuticals. How would you rule on the appeal? In re Alvogen IP Co. S.a.r.l., Serial No. 77939659 (January 20, 2012) [not precedential].


The Board found that Applicant's goods and the goods of the cited registration are identical in part. As to the remaining goods and the services, the Examining Attorney submitted a number of third-party registrations showing that these goods and services may emanate from a single source under a single mark. Applicant did not contest this issue.

As to the marks, the Board noted once again that a side-by-side comparison is not the proper approach to the issue of similarity. [How about one atop the other? -ed.]. And because the goods are in part identical, the degree of similarity between the marks necessary to support a finding of likely confusion is diminished as to the parties' goods.

Applicant maintained that its mark would be perceived as the letter "A" due to "the gap in the right side, [and] the thickening and thinning of the line which evokes the stroke of a writing implement" whereas Registrant's mark will "overwhelmingly be perceived as a design rather than a letter."

The Board was not convinced: "Applicant's mark is so highly stylized that it cannot be presumed that it would be perceived as the letter 'A;' it would take some study to discern a lower-case letter 'A' in applicant's mark."

At best, applicant's mark is in the grey area between a pure design mark which cannot be vocalized and a mark which would readily be identified as a letter.

Applicant did not introduce any evidence as to its promotion of the mark or on consumer perceptions of the mark. Thus the Board had to decide the case based solely on the visual similarity of the marks. It considered applicant's mark "as a pure design rather than simply a stylized display of a letter mark." [What happened to the grey area? - ed.]

The Board concluded that, on balance, the marks are more similar than dissimilar. "This, of course, is a subjective determination, and hence we need not comment on the specific similarities and differences between the marks asserted in the briefs."

Finally, the Board observed that when pharmaceuticals are involved, and thus confusion as to source may have serious consequences, it is "extremely important to avoid that which will cause confusion."

And so the Board affirmed the refusal.

TTABlog comment: How did you do? Look, this is a subjective test, so you can't be wrong. Just disqualified for a judgeship.

Text Copyright John L. Welch 2012.

Precedential Nos. 1 and 2: TTAB Rules that Section 2(b) Bars Registration of a Government Entity's Own Official Insignia

Facing an issue of first impression in two separate cases, the Board, in well-reasoned decisions, affirmed the PTO's refusals to register the two design marks shown below on the ground that each mark comprises a governmental insignia that is barred from registration by Section 2(b) of the Trademark Act.


In re The Government of the District of Columbia, 101 USPQ2d 1588 (TTAB 2012) [precedential]. The Board affirmed a refusal to register the official seal of the District of Columbia for various goods, including clocks, cufflinks, memo pads, pens and pencils, cups and mugs, and various clothing items.

Section 2(b) prohibits registration of any mark that “consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.” Here there was no dispute that the applied for mark was the official seal, nor that the District of Columbia qualifies as a “municipality” under the statute.

The Board found the language of Section 2(b) to be “plain and clear on its face.” The text of the statute provides for no exception to the ban on registration, even when a governmental entity is the applicant.

Applicant argued that, based on Congressional intent, Section 2(b) should be interpreted to include an exception for governmental entities seeking to register their own insignia. But the Board noted that such an exception is absent from the statutory text, and it refused to presume that Congress intended such an exception. The Board observed that Section 2(c) and 2(d) contain express exceptions like that which Applicant proposes. These provisions clearly show that Congress is fully capable of providing statutory exceptions when it intends to do so. Moreover, Congress has revisited the trademark law numerous times in the 100 years since the prohibition against registering governmental indicia was first enacted, and it has not provided the proposed exception. Consequently, the Board found it hard to believe that Congress intended this governmental exception but failed to expressly provide it.

Applicant contended that this prohibition was originally enacted with the intent of implementing the Paris Convention, which aims to prohibit others from registering government indicia, not governments themselves. The Board, however, pointed out that this prohibition was first enacted into United States trademark law in 1905. Although the Paris Convention currently does not require that signatories to the Convention prohibit registration of official insignia when authorized by the relevant government body, prior to 1911 there was no mention of a “registration with authorization” exception. This suggests that prior to 1911, the Convention's ban on such registrations was to be applied to all such marks, regardless of authorization or the identity of the applicant. Thus it might be presumed that in 1905 Congress intended to adopt the more restrictive approach of the 1883 text of the treaty that was then in effect.

The fact that Section 6ter of the current Paris Convention does not require the United States to bar registration of all governmental insignia is of no help to Applicant because the Paris Convention is not self executing. It creates no rights that Applicant can directly rely on. Even if it were self-executing, the Convention requires only that signatories refuse registration without authorization. It does not require signatories to accept registration when authorized.

Applicant also argued that the central purpose of Section 2 of the Act is to prevent confusion, whereas registration of indicia by the pertinent governmental body would not result in confusion. But the Board easily knocked down that argument, pointing to the ban on immoral and scandalous marks found in Section 2(a) and the various provisions of Section 2(e), none of which relate to confusion. Likewise, Section 2(b) prohibits registration of marks regardless of whether confusion is involved.

Applicant next maintained that Section 2(b) is ambiguous, as evidenced by the PTO’s issuance of three third-party registrations for governmental insignia, as well as by the TTAB’s decision in In re U.S. Dep’t of the Interior, 142 USPQ 506 (TTAB 1964), where the Board reversed a refusal to register a logo of the National Park Service. The Board observed, however, that in the Interior case it concluded that the involved logo was not the type of mark prohibited by Section 2(b) because it was not an official insignia of national authority. In other words, Section 2(b) does not bar a government body from registration of any and all marks, just insignia "of the same class as the flag or coats of arms of the United States."

As to the third-party registrations, the actions of the Examining Attorneys in approving those applications did not create any ambiguity in the statute, nor do they provide Applicant with a right to register its mark. The Board pointed out that arguments based on alleged examining inconsistencies have been consistently rejected. Each mark must be reviewed on the record submitted with the application. “Simply put, the goal of consistency does not require that [the Board] ignore a statutory directive.”

Finally, Applicant argued that Section 2(b) is unconstitutional because it denies Applicant its Fifth Amendment right to due process, and further that the refusal of its application is unconstitutional because it discriminates against Applicant in view of the three third-party registrations of record. The Board disagreed on both counts, but more importantly observed that the TTAB is not an Article III court and has no authority to declare provisions of the Trademark Act unconstitutional.

The Board therefore affirmed the refusal to register.

In re City of Houston, 101 USPQ2d 1534 (TTAB 2012) [precedential]. Following its reasoning in the District of Columbia case, the Board affirmed a Section 2(b) refusal to register the official seal of the City of Houston for various municipal services.

Applicant Houston asserted that the statute is “silent” as to whether governmental entities may register their own official insignia, but the Board flatly disagreed. Section 2(b) categorically provides that all such insignia are barred from registration. It need not set forth or spell out every subset of marks that falls within the ban.

Applicant contended that Section 2(b) was enacted to prevent desecration of the flag and other government symbols by denying their registration, not to prevent government bodies from protecting their own insignia. The Board was unable to verify Applicant’s theory regarding enactment of Section 2(b), but even if it accepted Applicant’s premise, it does not necessarily follow that Congress intended that governments should be able to register their own indicia; rather it appears that Congress chose a complete ban on registration of such indicia in order to prevent their commercial exploitation. As pointed out in the District of Columbia decision, Congress could easily have provided an exception in Section 2(b), but it did not do so. Accordingly, the Board presumed that Congress intended Section 2(b) to apply universally, regardless of the identity of the applicant.

Relying on certain language in In re U.S. Dep’t of the Interior, Applicant urged that it sought registration of its seal not as a “symbol of authority,” but rather in connection with specific municipal services, and therefore its application falls outside the Section 2(b) bar. The Board, however, found that interpretation to be a misreading of Interior because that case does not support the contention that the nature of the involved goods or services is a factor in determining whether Section 2(b) prohibits registration.

The Board in Interior decided that the mark in question [shown above] was not of the type that falls within Section 2(b) because it was not similar in kind to the flag or Great Seal of the United States. In Interior, the Board discussed the nature of the services involved only in the context of determining whether the mark was in fact “the flag or coat of arms or other insignia” of the government.” If the mark is never used as an emblem of authority, but only to identify some service or program provided by a government agency [in Interior the mark was used in connection with recreational and educational services], the mark does not fall within Section 2(b). However, if it is determined that the mark does fall with the Section 2(b) prohibition, then the goods or services identified in the application to register are irrelevant. Here, the City of Houston’s seal is admittedly an official insignia under Section 2(b), and Applicant’s discussion of the particular services recited in its application is of no consequence .

Finally, Applicant pointed to the PTO’s inconsistent treatment of such marks, relying on a list of thirteen third-party registrations. The Board noted that the mere list was of little probative value because it was not even clear that the involved marks were official governmental insignia. In any event, even assuming that the listed registrations are inconsistent with the refusal to register in this case, reversal is not required. The Board is not bound by prior decisions of examining attorneys, nor do applicants have a substantive right to consistency. The Board must decide each case on the record before it.

The Board agreed with Applicant that legal determinations should be applied consistently, but the Board’s obligation is to make the decision correctly. This obligation may not be abdicated to examining attorneys. To the contrary, it is the Board’s role to correct the examining attorney who applies an incorrect legal standard when the case comes before the Board. Even if all of the listed registrations should have been refused registration, those errors do not require the PTO to improperly register Applicant’s mark.

The Board therefore affirmed this refusal to register.

Text Copyright John L. Welch 2012.

TTAB Affirms Genericness Refusal of CHRISTMAS ALE for ... Guess What?

The Board affirmed a refusal to register CHRISTMAS ALE for beer [ALE disclaimed], on the ground of genericness, and alternatively as merely descriptive under Section 2(e)(1). Despite use of the designation by Applicant Great Lakes Brewing Co. for nearly two decades, the Board found Applicant's evidence of acquired distinctiveness to be insufficient in view of the highly descriptive nature of the applied-for mark. In re Great Lakes Brewing Co., Serial No. 77464553 (January 9, 2012) [not precedential]


Examining Attorney Florentina Blandu submitted dictionary definitions of CHRISTMAS and ALE, as well as evidence showing that "ale is a subset of beer." Internet website pages referred to "Christmas Ale" as a type of seasonal beer available from any number of sources.

Great Lakes pointed to other registrations for marks that include the word CHRISTMAS (but none for beer). The Board found these registrations irrelevant, in part because it is not bound by prior decisions of examining attorneys in other cases.

The Board deemed the genus of goods to be "beer," and it found that CHRISTMAS ALE is understood by the relevant public to refer to the genus of goods, or a subgenus thereof. Therefore it concluded that CHRISTMAS ALE is generic for beer.

As to the claim of acquired distinctiveness, Great Lakes pointed to its use of CHRISTMAS ALE since 1992, annual growth in sales of 30%, its receipt of various awards, its sale of collateral merchandise, and a number of media mentions. The Board, however, ruled that Applicant's commercial success demonstrated only the popularity of the product, not that consumers view CHRISTMAS ALE as a trademark. The record contained "little direct evidence" that relevant consumers perceive CHRISTMAS ALE as a source indicator for the goods. Given the (at least) highly descriptive nature of CHRISTMAS ALE, the Board "would need to see a great deal more evidence (especially in the form of direct evidence from customers) than what applicant has submitted in order to find that the designation has become distinctive of applicant's goods."

And so the Board affirmed both the genericness refusal and the alternative Section 2(e)(1) refusal.

TTABlog comment: The Board deemed CHRISTMAS ALE to be more akin to a compound word than a phrase, but that ruling had no effect on the outcome, since the evidence showed use of the phrase "Christmas Ale" by third parties.

Text Copyright John L. Welch 2012.

Feathers! Survives: USPTO Will Continue TARR Database

Noting that the trademark user community has raised concerns about the retirement of "old" TARR [see, for example, this TTABlog post], the USPTO has announced [here] that it will "continue to service the 'old' TARR links beyond the February 29th date when the 'old' front page of the USPTO web site will be retired." This is good news for the many trademark practitioners who rely on Carl Oppedahl's fabulous (and free) "Feathers!" trademark database program.


Text Copyright John L. Welch 2012.

TTABlog on the Road: Paris

Grey, drizzly, and cold in Paris this week. But who's complaining? Here are a few photos, some of which I've brightened up a bit, but others remain in their original grayness. [Click twice on a photo for a larger image].











Text and photos Copyright John L. Welch 2012.

TTAB Dismisses Section 2(e)(3) Petition for Cancellation of SWEDISH FIRESTEEL for Fire Igniters

Petitioner Ronald W. Fontaine sought to cancel a registration for the mark SWEDISH FIRESTEEL for "hand-operated fire igniter in the form of metal sticks with a holder and a tin, and hand-operated fire strikers" [SWEDISH disclaimed] on the ground that the mark is primarily geographically deceptively misdescriptive under Section 2(e)(3). Fontaine's petition went up in smoke, however, when he failed to satisfy the second element of the Section 2(e)(3) test. Ronald W. Fontaine v. Light My Fire, AB, Cancellation No. 92051304 (January 12, 2012) [not precedential].


A mark is primarily geographically deceptively misdescriptive if "(1) the primary significance of the mark is a generally known geographic location; (2) the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark (i.e., that a goods/place association exists), when in fact the goods do not come from that place; and (3) the misrepresentation would be a material factor in the consumer's decision to purchase the goods."

Prong 1: The Board agreed with Petitioner that the primary significance of the mark SWEDISH FIRESTEEL is geographical. The addition of FIRESTEEL to SWEDISH does not detract from the primary geographic significance of the mark.

Prong 2: The second element of the test raises two inquiries. As to the first inquiry - whether consumers will believe that the goods come from Sweden - Petitioner offered no evidence.

[P]etitioner has not proved that consumers associate the country of Sweden with the type of goods of respondent. The sole evidence petitioner can point to in the record is respondent’s admission that the Swedish military uses fire starter devices. This, by itself, is insufficient to establish a goods/place association.

As to the second inquiry under Prong 2 - whether the goods come from Sweden - Petitioner argued that because the "only essential part" of Respondent's device is not made in Sweden, then the entire product should be considered as not originating in Sweden: "Specifically, respondent contends that the flint rod is the 'only essential part' of respondent’s fire starter device because it is impossible to produce a spark in the absence of pyrophoric metals or ferrocerium."

The Board, however, found that each part of the device is equally important and essential, and that the five other component parts originate in Sweden: (1) striker, (2) striker handle, (3) flint handle, (4) lanyard, and (5) lock.

Moreover, Respondent is a Swedish company with headquarters, research facilities, and production facilities in Sweden. The finished (not Finnish - ed.) product is assembled in and distributed from Sweden. Therefore the Board concluded that Respondent's goods do originate in Sweden.

And so, having found that Petitioner Fontaine wholly failed to satisfy the second prong of the 2(e)(3) test, the Board declined to consider the third prong and instead dismissed the petition for cancellation.


TTABlog comment: Respondent's registration was more than five-years old when the petition for cancellation was filed [wrong! see below]. However, a registration more than five-years old may be cancelled on the ground of geographic deceptiveness. See Consorzio del Prosciutto di Parma v. Parma Sausage Products, Inc., 23 USPQ2d 1894 (TTAB 1992). [However, Parma is an old Section 2(a) deception case, not a 2(e)(3) case.]

TTABlog correction: Anne Gilson Lalonde has pointed out to me that the registration was not five-years old when the petition was filed. The Board's citation of the K-Swiss decision in footnote 1 is strange because it is simply irrelevant here: not only was the subject registration less than five-years old, but also there was no evidence that Respondent changed the geographic source of its goods after the registration issued. Furthermore, as Anne points out in her comments, it is not at all clear that a Section 2(e)(3) claim is available against a 5-year old registration!

Text Copyright John L. Welch 2012.

WYHO? TTAB Dismisses BVD's 2(d) and 43(c) Opposition to BOSIDENG BSD and Design

Bosideng applied to register the mark shown immediately below for "suits, coats, overcoats, shirts, trousers, skirts, sweaters, T-shirts, pajamas, underwear, leather shoes." B.V.D. opposed on the grounds of likelihood of confusion and dilution. The Board dismissed both claims, finding the involved marks too dissimilar and deeming the BVD mark not famous enough for dilution purposes. If it were up to you, would you have opposed? The B.V.D. Licensing Corporation v. Bosideng Co., Ltd., Opposition No. 91173468 (January 10, 2012) [not precidential].


Likelihood of Confusion: B.V.D. relied on nine registrations for the mark B.V.D. or BVD, and on use of the mark since about 1876. Sales figures, dictionary entries recognizing BVD as a trademark, the extremely long period of use, and third-party magazine survey evidence of the marks' renown led the Board to conclude that BVD is famous for purposes of likelihood of confusion.

The goods of the parties are in part identical, and therefore the Board presumed that they travel in the same channels of trade to the same classes of consumers. The Board found underwear is not purchased on impulse. Although these are relatively inexpensive goods, "[t]here is no per se rule that low price equates to a low degree of purchaser care especially when opposer’s own witness testified that the purchase of underwear is a 'planned purchase.'" However, the factual record was incomplete on this issue, and so the Board considered this du Pont factor to be neutral.

As to the marks, the Board found that Applicant's mark is dominated by the word BOSIDENG, a coined word. "The letters BSD are so buried in the middle of applicant’s mark and so innocuous that consumers will not perceive applicant’s mark as being similar in appearance or sound to opposer’s mark." Moreover, the marks create different connotations and commercial impressions.

The Board found the dissimilarities in the marks to be dispositive and it dismissed the Section 2(d) claim.

Dilution by Blurring: The standard for fame in the dilution context is more stringent than that for fame in the Section 2(d) context. BVD failed to clear the higher hurdle. "[T]he transformation of a term into a truly famous mark" means that the mark must be a household name."

BVD's evidence fell short. There was no evidence regarding advertising expenditures, no evidence regarding how many people saw BVD's advertising, and no media evidence showing widespread recognition of the BVD mark, other than the aforementioned magazine surveys. However, those surveys were "most akin to a brand awareness study but they are of limited probative value because opposer did not proffer a witness with first-hand knowledge of the study to explain how the study was conducted, how many people participated in the study or how many people read the published study."

B.V.D. argued that the Board should take judicial notice of the fame of its mark, based upon a 1988 CAFC decision in which the court took judicial notice of “the fact that within our jurisdiction, which is the whole United States, the B.V.D. trademark is at least widely, if not universally, known.” The Board pointed out, however, that the issue there was likelihood of confusion, not dilution. The Board "will not take judicial notice of the fame a mark for purposes of dilution."

[J]udicial notice may be taken of adjudicative facts [i.e., the facts that would normally go to a jury in a jury trial] and judicial notice of facts should only be taken when the matter is “beyond reasonable controversy.” *** We should not use a debatable supposed fact [i.e., the fame of the B.V.D. mark] to bootstrap a dubious conclusion to support an element of opposer’s dilution claim.

For the sake of completeness, the Board also considered the similarity or dissimilarity of the marks in the dilution context. It found the marks "so different" that Bosideng's mark will not "trigger consumers to conjure up" the BVD mark. "Accordingly, applicant’s mark will not create an association with opposer’s BVD mark to support opposer’s dilution claim."

And so the Board dismissed BVD's Section 43(c) claim as well.

TTABlog comment: I think this decision should be precedential, at least for the discussion of judicial notice.

[Please excuse the inconsistent use of BVD and B.V.D. Sometimes the mark is referred to in one way, sometimes the other.]

Text Copyright John L. Welch 2012.

A Sampling of TTAB Motion Practice

As we all know, the vast majority of TTAB proceedings never reach final decision. But many involve motion practice of one sort or another. The TTABlog focuses primarily on final decisions, but here is a sampling of recent rulings on assorted interlocutory motions.


Embarcadero Technologies, Inc. v. Delphix Corp., Opposition No. 91197762 (January 10, 2012) [not precedential]. Motion to strike four affirmative defenses. Defense of failure to state a claim stricken, but motion denied as to laches and acquiescence (generally unavailable in an opposition proceeding) because Applicant relied on the Morehouse doctrine, and denied as to equitable estoppel. [See Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 160 U.S.P.Q. 715, 717 (C.C.P.A. 1969) (no injury from registration of BLUE MAGIC for pressing oil when applicant owned prior registration for BLUE MAGIC for hair dressing and “while there are trifling differences [between the marks] it takes careful inspection to detect them and the record showed the products sold under the two marks were ‘one and the same’”)].

Tata Sons Limited v. Tata’s Natural Alchemy, LLC, Opposition No. 91193987 (January 10, 2012) [not precedential]. Motion to amend notice of opposition denied as untimely because Opposer unduly delayed in bringing its motion (to add a registration issued eleven months before the filing of the motion, on an application that was on file when the notice of opposition was filed).

The Clorox Company v. Hermilo Tamez Salazar, Opposition No. 91198922 (January 12, 2012) [not precedential]. Applicant's motion for discovery under Rule 56(d) granted as to relatedness of the goods, classes of purchasers, and trade channels, but denied as to other topics first raised in Applicant's reply brief in support of the motion.

Robert P. Hornsby, Jr. v. Megan L. Murphy, Cancellation No. 92047058 (January 12, 2012) [not precedential]. Order to show cause dismissed as to Petitioner's failure to file a brief, but motion for leave to file the brief denied because Petitioner did not establish excusable neglect under the Board's Pumpkin test.

Oneida Ltd. v. Oneida Indian Nation of New York, Oppositions Nos. 91151254 and 91151404 (January 13, 2012) [not precedential]. Opposer's motion to re-open Applicant's testimony period for purposes of cross-examination denied under the excusable neglect standard, and its motion to extend its rebuttal period by sixty days denied under the good cause standard. However, the rebuttal period was re-set to give Opposer the ten days remaining in its rebuttal period when it filed its motion.

Text Copyright John L. Welch 2012.

TTABlog on the Road: Photos of Villefranche-sur-Mer

I have been in Villefranche-sur-Mer, on the French Riviera, this week. So I'm going to take the day off and enjoy the sunshine and warm weather. Here are a few photos taken of and around the town. (Click twiceon photo for larger image).










Copyright John L. Welch 2012.

Recommended Reading: TTAB Judge Lorelei Ritchie, "Is 'Willful Blindness' the New 'Recklessness' after Global-Tech?"

TTAB Judge Lorelie Ritchie dons her academic robe in a thoughtful and informative article entitled "Is 'Willful Blindness' the New 'Recklessness' after Global-Tech?," published in the December 2011 issue of the Federal Circuit Bar Journal, Vol. 21, No. 165 (forthcoming). You may download the article here. [Note that the article expresses her viewpoint and is not intended to reflect the views of the Trademark Trial and Appeal Board].


As we know, the CAFC in In re Bose raised the bar for proving fraud on the USPTO. The Board's "knew or should have known" standard was discarded as too lenient, but the court left open the question of what level of proof, other than proof of willful intent, would be sufficient. In particular, the CAFC said that even gross negligence was not enough, but it side-stepped the question of whether reckless disregard for the truth would suffice. Judge Ritchie's article "provides a framework for courts to use" in considering that question.

Judge Ritchie focuses on a recent Supreme Court decision in the patent law arena, Global-Tech Appliances, Inc. v. SEB S.A., 131 S.Ct. 2060 (2011), in which the Court applied the "willful blindness doctrine" (borrowed from criminal law) to a inducement-of-infringement situation. She notes that "the Supreme Court appears to be increasingly aligning patent law with general jurisprudence." The next step may be to align trademark law with patent law. [I think that is, in part, what happened in Bose, which was a precursor to the CAFC's raising the bar for proof of inequitable conduct in patent law in the Therasense case - ed.]

As explored by this Article, patent and trademark (as well as copyright) law share common historical and legal origins. Accordingly, it seems appropriate to cross-apply doctrines between them, including, possibly, the doctrine of willful blindness recently adopted by the Supreme Court.

Judge Ritchie's article proceeds in five parts:

I. The Case for Aliging Patent Law with General Jurisprudence
II. The Case for Aliging Trademark Law with Sisters Copyright and Trademark
III. Willful Blindness Principles from the 2011 Supreme Court Global-Tech Case
IV. The State of Fraud in Trademark Law
V. Applying Willful Blindness - A Higher Standard - From Patent Law

The question in Global-Tech was this: what, if any, level of scienter should be required under Section 271 (b) of the Patent Statute for a finding of induced patent infringement.

The Supreme Court chose to apply a standard of scienter that satisfied the knowledge requirement but was not being applied in the sphere of patent infringement. Willful blindness, the Court held, a doctrine from another field entirely, struck the right balance in requiring sufficient knowledge, without requiring a party to literally evidence actual knowledge.

The Court specified two basic requirements for meeting the "willful blindness" standard: (1) the defendant must subjectively believe that there is a high probability that a fact exists and (2) the defendant must take deliberate actions to avoid learning of that fact. The Court suggested that willful blindness has:

an appropriately limited scope that surpasses recklessness and negligence. Under this formulation, a willfully blind defendant is one who takes deliberate actions to avoid confirming a high probability of wrongdoing and who can almost be said to have actually known the critical facts. By contrast, a reckless defendant is one who merely knows of a substantial and unjustified risk of such wrongdoing and a negligent defendant is one who should have known of a similar risk but, in fact, did not. 131 S.Ct. at 2070-71

Thus this "willful blindness" standard requires less than proof of willful intent, but more than recklessness. Judge Ritchie urges that this standard be considered with regard to trademark fraud.

While the Federal Circuit set forth a knowledge requirement for parties alleging fraud on the USPTO in their trademark disputes, there are three viable interpretations of that level of scienter. Looking to other areas of law, it becomes apparent that “knowledge” may be interpreted to mean (1) actual knowledge; (2) recklessness or reckless disregard; or, looking creatively to historically and legally-related patent law, as well as to other applications of trademark law, (3) willful blindness. Supreme Court precedent should guide all areas of jurisprudence. The Supreme Court has provided a useful standard in willful blindness. To simply close one’s eyes to analogies in related areas of law would be unwise.

Text Copyright John L. Welch 2012.

The Top Ten TTAB Decisions of 2011 [Part II]

The issue of bona fide intent, or lack thereof, bobbed to the surface with increasing frequency, but a recent decision muddied the waters regarding the remedy available when a lack of bona fide intent is proven. On the Madrid front, the Board emphasized, in two decisions, the need for proper and complete electronic filing of oppositions to Section 66(a) applications. And it clarified the nature of the proof necessary to establish that a mark is primarily geographically deceptively misdescriptive under Section 2(e)(3).

One well-known applicant overcame a genericness refusal and established acquired distinctiveness through impressive survey evidence. And the Board rejected an application to register a mark for medical reports on the ground that the reports were merely part of applicant’s services and not separate goods in trade. [This post is the second of two parts; the first five cases on the Top Ten list may be found here. Additional commentary on each case may be found at the corresponding TTABlog posting].


Spirits International, B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d 1545 (TTAB 2011) [precedential]. [TTABlogged here]. The Board sustained this opposition to registration of the mark MOSKONISI (Stylized) for various alcoholic and nonalcoholic beverages in classes 32 and 33, on the ground of lack of bona fide intent. Opposer Spirits established, through Applicant’s discovery responses, a prima facie case of lack of bona fide intent regarding the alcoholic beverages. Applicant Taris failed to submit any evidence, and so the Board sustained the opposition on that ground, entering judgment immediately on the claim and declining to consider Opposer’s alternative Section 2(d), which was contingent upon registration of its pleaded mark. Although the Board found that Applicant lacked a bona fide intent to use its mark only as to alcoholic beverages, it sustained the opposition as to all the goods in both classes, including the non-alcoholic beverages, in a ruling that appears in conflict with its prior decision in Wet Seal, Inc. v. FD Management, Inc., 82 USPQ2d 1629 (TTAB 2007) (stating in dictum that only the particular goods for which a lack of bona fide intent is shown will be deleted from an application). [See TTABlog comment here].


Hunt Control Systems, Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558 (TTAB 2011) [precedential]. [TTABlogged here]. An opposition to a Section 66(a) “Madrid application” must be filed electronically via ESTTA and the notice of opposition may not be amended to add new grounds. See Trademark Rules 2.101(b)(2) and 2.107(b). These rules facilitate the prompt notification to WIPO that an opposition has been filed: ESTTA generates an opposition form that is automatically forwarded to WIPO. This notification must be sent within strict time limits, and failure to timely notify WIPO may result in the opposition being limited by the information sent or dismissed entirely. Here, on the ESTTA form Opposer Hunt identified six items of the items in Applicant’s class 9 list of goods, but argued that the scope of the opposition was broader because “in the supplementary explanation of the basis for the opposition that was attached to the ESTTA opposition form, opposer specifically recites the same six goods and adds to such recitation ‘and related products in International Class 9’ as constituting the objectionable goods.” The Board ruled that, for Madrid oppositions, the opposed goods must be limited to those identified on the ESTTA form because that is the information transmitted to WIPO. CSC Holdings, LLC v. SAS Optimhome, 99 USPQ2d 1959 (TTAB 2011) [precedential]. [TTABlogged here]. The Board applied the reasoning of Hunt Control in limiting the grounds for opposition to the single ground designated on the ESTTA form (likelihood of confusion), despite the inclusion of additional grounds (fraud and lack of bona fide intent) in the attached pleading.


In re Jonathan Drew, Inc. d/b/a Drew Estate 97 USPQ2d 1640 (TTAB 2011) [precedential]. [TTABlogged here]. In affirming a Section 2(e)(3) refusal of KUBA KUBA for cigars, tobacco, and related products on the ground that the mark is primarily geographically deceptively misdescriptive of the goods, the Board attempted to clarify the law of Section 2(e)(3) in view of recent court decisions. 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, it conceded that its products will not originate in Cuba, nor will its products be made from Cuban seed tobacco. Drew principally argued that the PTO 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; Drew contended 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.” 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."


In re Country Music Association, Inc., 100 USPQ2d 1824 (TTAB 2011) [precedential]. [TTABlogged here]. CMA sought to register COUNTRY MUSIC ASSOCIATION in standard character and design form for “association services, namely, promoting country music, and promoting the interests of country music entertainers and the country music recording industry,” asserting acquired distinctiveness under Section 2(f). The PTO refused registration on the alternative grounds of genericness, or mere descriptiveness and lack of secondary meaning. The Board reversed the refusals (but required a disclaimer of ASSOCIATION). As to genericness, the PTO provided website evidence that 28 other associations use the phrase COUNTRY MUSIC ASSOCIATION preceded by a descriptive, geographical, or other term. CMA successfully countered with two expert reports and a Teflon survey, in which “[a] significant number of surveyed respondents, 85%, answered that COUNTRY MUSIC ASSOCIATION is a brand name.” As to acquired distinctiveness, CMA proved that the mark has been in use since 1958 and 30 million viewers watch its annual awards show. In addition, advertising expenditures, website traffic, and the survey results led the Board to find that CMA had satisfied Section 2(f).


In re Ameritox Ltd., 101 USPQ2d 1081 (TTAB 2011) [precedential]. [TTABlogged here] Ameritox sought to register the mark RX GUARDIAN for "printed reports featuring medical laboratory results provided to medical practitioners for record keeping purposes." [see the specimen of use shown below.] The Board, however, agreed with the PTO and it affirmed the refusal to register under Section 1, 2, and 45. On its website, Ameritox refers to its "Rx Guardian (SM) process." Based on the website and the specimen of use, the Examining Attorney maintained that the subject reports were nothing more than a vehicle by which the results of Applicant's services are reported. They are not available as separate "goods in trade." The Board noted that ancillary items, like invoices, forms, and reports, used to conduct business do not constitute goods in trade. It found that Applicant's website demonstrated that RX GUARDIAN is a drug testing and reporting service. Ameritox does not advertise the reports separately from its services. The reports merely provide information based on the particular test results. In short, "[t]he fundamental question in this case is what is being offered for sale under the RX GUARDIAN mark?" There was no evidence that Ameritox sells reports apart from its services; instead, the reports are "part and parcel" of its services, and thus are not "goods in trade."

(click on photo for larger picture)
Text Copyright John L. Welch 2011-12.

The Top Ten TTAB Decisions of 2011 [Part I]

Once again, yours truly has fearlessly chosen the ten TTAB decisions that he considers to be the most important and/or interesting from the previous calendar year. [This is the first of two posts, the first five entries being set out below. Additional commentary on each case may be found at the corresponding TTABlog posting].

Dilution by blurring made a particularly big splash in the TTAB pool during that last few months of the year. The Board relaxed its requirement that a plaintiff show that the marks at issue are identical or substantially similar in order to win a dilution claim, but it increased its focus on proof that any association between the marks will cause a diminution of the distinctiveness of the famous mark.

In a significant procedural ruling, the Board thankfully sank a defendant’s attempt to obtain sweeping e-discovery. And an application to register a top level domain name (TLD) as a service mark was torpedoed by a mere descriptiveness refusal.

Meanwhile, the issue of fraud treaded water; in fact, not a single fraud claim has been upheld by the Board since the CAFC’s Bose decision in 2009. A nonprecedential fraud ruling was noteworthy because the Board excused an applicant’s filing of a fabricated specimen of use – an act that most would consider a prime example of fraud – because the applicant’s president, as a layperson, had an “honest misunderstanding” of what was proper.


Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 100 USPQ2d 1904 (TTAB 2011) [precedential]. [TTABlogged here]. The Board denied Defendant Princeton’s motion to compel sweeping e-discovery, observing that in TTAB proceedings “the burden and expense of e-discovery will weigh heavily against requiring production in most cases.” The Board discussed at length the role of e-discovery in civil actions and in Board proceedings, noting that in the courts “there is an increasing focus on the question of proportionality, and on whether the type of extensive ESI discovery applicant advocates here is always justified.” In TTAB proceedings, the Board observed, “discovery is expected to be less extensive than in court, and demands for e-discovery should be carefully scrutinized.” Given that the Board has limited jurisdiction, and noting the concerns expressed by the Federal Circuit regarding e-discovery, “the burden and expense of e-discovery will weigh heavily against requiring production in most cases.” Here, Defendant “simply failed to establish that opposer’s method of searching and producing documents was insufficient as a general matter, given the parties’ failure to agree on an ESI discovery protocol in advance, the nature of applicant’s discovery requests and the issues in this proceeding.”


Nike, Inc. v. Peter Maher and Patricia Hoyt Maher, 100 USPQ2d 1018 (TTAB 2011) [precedential]. [TTABlogged here]. The TTAB sustained Nike’s opposition to registration of the mark JUST JESU IT for various items of athletic apparel, finding the mark likely to cause confusion with and likely to dilute (by blurring) the famous and registered mark JUST DO IT for overlapping clothing items. As to dilution, the Board jettisoned its former “substantial similarity” or “near identity” test, instead holding that the marks need only be “sufficiently similar in their overall commercial impressions” that the requisite association exists for a finding of blurring. Applying the six non-exhaustive dilution factors of Section 43(c)(2)(B), the Board concluded that “an association exists between the parties’ marks that would impair the distinctiveness of opposer’s famous mark.” See also UMG Recordings, Inc. v. Mattel, Inc., 100 USPQ2d 1868 (TTAB 2011) [precedential].[TTABlogged here], wherein the Board sustained a dilution claim, finding the mark MOTOWN METAL for toy vehicles likely to cause dilution of UMG's famous mark MOTOWN for musical entertainment and musical recordings.


Rolex Watch U.S.A., Inc. v. AFP Imaging Corporation, 101 USPQ2d 1188 (TTAB 2011) [precedential]. [TTABlogged here]. The Board dismissed Opposer Rolex's dilution-by-blurring claim, ruling that Rolex had failed to prove that the applied-for mark ROLL-X for "x-ray tables for medical and dental use" would impair the distinctiveness of Opposer's famous ROLEX mark. The Board concluded that the dissimilarity between the marks, the conflicting results of the survey, and the lack of evidence of Applicant's intent to create an association, outweigh the recognition, distinctiveness, and substantially exclusive use of the ROLEX mark. Moreover, despite establishing an "actual association" between the marks, Rolex did not provide any evidence of the degree to which its marketing power would potentially be diminished by Applicant's intended use of its mark. And in a further ruling, the Board dismissed Rolex's lack-of-bona-fide-intent claim when Applicant AFP overcame the prima facie case established by its lack of documentation by proving that it was capable of manufacturing the identified tables as an extension of its product line.



In re theDot Communications Network LLC, 101 USPQ2d 1062 (TTAB 2011) [precedential]. [TTABlogged here]. Brushing aside several third-party registrations for TLD marks, the Board affirmed a refusal to register the mark .MUSIC in each of five applications, for domain registration and hosting services, various computer-related services, and music-related goods, on the ground that the mark is merely descriptive under Section 2(e)(1). The Board’s ruling was based “on the current marketing environment which is different than the marketing environment when many of the third-party registrations relied upon by applicant were issued.” The PTO maintained that “music is a feature of applicant’s goods and services” and that the period at the beginning of the mark is “mere punctuation that does not alter the commercial impression ….” Applicant asserted that a TLD does have a source-identifying function, but the Board concluded that the public will perceive .MUSIC “as a top-level domain associated with the field of music because there has been a concerted public effort to build support for its use as a top-level domain in this field.”


Information Builders, Inc. v. Bristol Technologies, Inc., Opposition No. 91179897 (January 10, 2011) [not precedential]. [TTABlogged here]. In this, the only non-precedential decision in this year's Top Ten, Applicant Bristol Technologies sought to register the mark BRISTOL FOCUS for computer operating system programs, but Opposer raised two grounds in opposition: fraud and likelihood of confusion. The Board sustained the Section 2(d) claim but dismissed the fraud claim, even though Applicant concocted 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. Opposer argued that “Applicant’s fabrication of a new specimen … constitutes clear and convincing evidence that Defendant sought to mislead the Patent and Trademark Office ....” The Board agreed that Applicant’s statement of use was false and material, but it ruled that the record did not establish that Applicant’s president “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.” As a layperson, he had “an honest misunderstanding” which the Board "would not characterize … as trying to fabricate a fraudulent specimen."


Copyright John L. Welch 2011-2012.

TTAB Issued 37 Precedential Decisions in 2011

The Trademark Trial and Appeal Board issued 37 precedential decisions in calendar 2011, a decrease of about 30% from the average annual output of 56 for the prior five-year period. The ratio of precedential decisions to total decisions, however, remained relatively constant according to my calculation: about 10 to 12 %. In other words, the total number of final decisions issued by the Board fell considerably last year, perhaps because so many Board employees were focusing on completion of the long-awaited revision to the Trademark Board Manual of Procedure. In any case, here is a running compilation of the precedential decisions of 2011, categorized according to subject matter.


Section 2(a) - Immoral or Scandalous:

• Precedential No. 25: TTAB Finds Raised Middle Finger Design for Bottle to be Scandalous or Immoral, Affirms 2(a) Refusal

Section 2(d) - likelihood of confusion:

• Precedential No. 32: CLASSIC AMERICAN BLEND Confusingly Similar to CLASSIC CANADIAN for Tobacco, Says TTAB
• Precedential No. 27: TTAB Sustains 2(d) and Dilution Claims in MOTOWN Challenge to MOTOWN METAL for Toy Vehicles
• Precedential No. 24: Fame of TOTAL Mark Yields Near Total Victory in General Mills 2(d) Opposition to Fage Yogurt Applications
• Precedential No. 23: Sophistication of Buyers Leads to TTAB Dismissal of CALYPSO Section 2(d) Opposition and Cancellation Proceeding
• Precedential No. 22: TTAB Renders Split Decision in CURE4KIDS 2(d) Oppositions
• Precedential No. 19: "JUST JESU IT" Likely to Cause Confusion With and Dilute Nike's "JUST DO IT," Says TTAB
• Precedential No. 13: In Issue-Packed 2(d) Decision, TTAB Cancels "LA INDITA MICHOACANA" Registration for Ice Cream
• Precedential No. 9: Finding Wine and Beer Related, TTAB Affirms 2(d) Refusal of "HB" over "HB & Crown Design"
• Precedential No. 7: ZU ELEMENTS Not Confusingly Similar to ELEMENT for Overlapping Goods, Says TTAB
• Precedential No. 6: With Proof of "Something More" Lacking, TTAB Finds Barbecue Sauce and Catering Services Not Related

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

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

Section 2(e)(3) - Primarily geographically deceptively misdescriptive:

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

Section 2(e)(5) - Functionality:

• Precedential No. 2: TTAB Cancels Supplemental Registration for Shape of Culvert Unit Due To Functionality
• Precedential No. 1: TTAB Affirms 2(e)(5) Functionality Refusal of Motorcycle Stand Design

Section 2(f) - acquired distinctiveness:

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

Concurrent Use:

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

Dilution:

• Precedential No. 33: TTAB Rejects ROLEX Dilution Claim for Failure to Prove Likely Impairment of the Distinctiveness of the Mark
• Precedential No. 27: TTAB Sustains 2(d) and Dilution Claims in MOTOWN Challenge to MOTOWN METAL for Toy Vehicles
• Precedential No. 19: "JUST JESU IT" Likely to Cause Confusion With and Dilute Nike's "JUST DO IT," Says TTAB

Failure to Function:

• Precedential No. 16: TTAB Finds That Orange-and-Green Color Combination Fails to Function as a Trademark For Newport Cigarettes

Genericness:

• Precedential No. 29: TTAB Affirms Genericness Refusal of "Person2Person Payment" For Electronic Funds Transfers
• Precedential No. 28: TTAB Reverses Genericness Refusal of COUNTRY MUSIC ASSOCIATION for Country Music Association Services

Goods in Trade:

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

Lack of bona fide intent:

• Precedential No. 33: TTAB Rejects ROLEX Dilution Claim for Failure to Prove Likely Impairment of the Distinctiveness of the Mark
• Precedential No. 15: Finding Lack of Bona Fide Intent, TTAB Sustains MOSKONISI Opposition

Res judicata:

• Precedential No. 37: TTAB Applies Claim Preclusion to 2(f) Issue, But Not Genericness, in AMERICAN INFRASTRUCTURE Oppositions
• Precedential No. 14: Applying Collateral Estoppel to the Ownership Issue, TTAB Enters Summary Judgment in "WINNIE THE POOH" Trademark Dispute
• Precedential No. 8: Applying Claim Preclusion, TTAB Dismisses Two of Three "DVD & Design" Cancellation Petitions

Single Creative Work:

• Precedential No. 36: TTAB Enters Summary Judgment Cancelling Trademark Registration for the Title of a Single Creative Work

TTAB Discovery/Evidence/Procedure:

• Precedential No. 30: TTAB Refuses to Compel Sweeping E-Discovery
• Precedential No. 26: TTAB Grants Motion to Exclude 26 Belatedly-Identified Trial Witnesses
• Precedential No. 21: Two Cuban Corporations Have Standing to Bring Section 2(e)(3) Cancellation Petition
• Precedential No. 20: Madrid Opposer Limited to Single Ground Designated in ESTTA Form
• Precedential No. 18: TTAB Denies Motion to Re-Open Testimony Period, Dismisses 2(d) Opposition for Shortage of Proof
• Precedential No. 17: TTAB Suspends NFL's "WHO DAT" Opposition In View of Pending Lawsuit
• Precedential No. 13: In Issue-Packed 2(d) Decision, TTAB Cancels "LA INDITA MICHOACANA" Registration for Ice Cream
• Precedential No. 12: TTAB Issues Pre-Trial Order in New REDSKINS Disparagement Case
• Precedential No. 11: TTAB Limits Madrid Opposition to Goods Listed on ESTTA Form, But Opposer Wins Anyway
• Precedential No. 10: TTAB Okays Opposer's Pre-Trial Disclosures, Denies Motion to Strike Trial Testimony
• Precedential No. 5: Prompt Supplementation of Expert Disclosure Defeats Motion to Exclude Testimony, Says TTAB

Text ©John L. Welch 2011-12.

Test Your TTAB TriviAbility: Which Law Firms Filed the Most Oppositions in 2011?

Which law firm filed the most oppositions? Well, tell me what firm represents Major League Baseball? The answer to those two questions is supplied by the folks at Towergate Software, IP data mining specialist, who have (once again) compiled a list of the most frequent filers for the past year. The list of the top 16 firms may be found here, in a table that may be expanded to show the name of each plaintiff and each opposition number.


I recommend that you check out Towergate's 2(d) Citation Watch service (details here). This watch service highlights the marks of your firm's clients that were cited by the PTO against other marks, and includes links to the pertinent records.

Text Copyright John L. Welch 2012.

Test Your TTAB Judge-Ability on These Three Mere Descriptiveness Refusals

Applicant Luby’s Fuddruckers applied to register the following three marks for restaurant services: BETTER TOPPINGS. BETTER BURGER., BETTER BUNS. BETTER BURGER., and BETTER BEEF. BETTER BURGER. Examining Attorney Ronald McDonald McMorrow refused registration on the ground of mere descriptiveness under Section 2(e)(1). Fuddruckers argued (as usual) that the marks are at most suggestive, that they are uniquely alliterative and clever, and, with regard to the first two marks, that the words "toppings" and "buns" may call to mind the "scantily clad women featured in restaurants such as HOOTERS, TILTED KILT and TWIN PEAKS." How would you rule? In re Luby's Fuddruckers Restaurant's LLC, Serial Nos. 77877292, 77878602, and 77876646 (December 22, 2011) [not precedential].


The Examining Attorney submitted dictionary definitions of the constituent words, as well as Internet excerpts showing use of the words, including the term "better burger," in connection with restaurant services. The Board found the marks to be merely descriptive because they are laudatory terms that directly conveys to consumers that applicant’s restaurant services feature high quality ingredients.

The Board disagreed with Applicant that the word "better" is vague, finding the marks to be definite statements of superior quality that are not vague or nebulous. As to the arguments regarding "toppings" and "buns," there were no references to those words in the evidence submitted, showing that "scantily clad female servers have become a common feature of trade dress for restaurant services."

As to the uniqueness or cleverness of the marks, the Board noted that other restaurants use the same alliterative structure, including the term "better burger," indicating that there is a competitive need to use that term.

Finally, Fuddruckers pointed to its ownership of registrations for the marks BETTER VALUE, BETTER BURGER, BETTER TIME, BETTER BURGER., BETTER VARIETY. BETTER BURGER., and BETTER EVERYTHING, BETTER BURGER. The Board, however, observed once again that each case must be decided on its own record, and the Board is not bound by prior examination decisions in other cases.

And so the Board affirmed the refusals.

Text Copyright John L. Welch.