Precedential No. 9: Rejecting Parody Defense, TTAB Finds CRACKBERRY Likely to Cause Confusion With and Likely to Dilute BLACKBERRY

The Board sustained Opposer Research in Motion's opposition to registration of the mark CRACKBERRY for various online computer services and assorted clothing items, finding the mark likely to cause confusion with, and likely to dilute, RIM's famous mark BLACKBERRY for handheld devices including smartphones. The likelihood of confusion finding was limited to Applicant's computer services. As to the dilution claim, Applicants invoked the defense of parody under the "fair use" exclusion of Section 43(c), but the Board found that Applicants' use of the CRACKBERRY mark did not merit fair use protection. Research in Motion Limited v. Defining Presence Marketing Group, Inc. and Axel Ltd. Co., 102 USPQ2d 1187 (TTAB 2012) [precedential].


Likelihood of confusion: The Board first considered parody in the Section 2(d) context, observing that while some courts in infringement cases have indicated that "a successful parody seems to make confusion less likely," the First Amendment claim is not as strong at the TTAB, where the issue is right to registration rather than restraint on use, and where the likelihood of confusion "will usually trump any First Amendment concerns."

The Board found that, based on extensive promotion and use, and the role of "this historically-significant device in shaping the culture and technology of the early twenty-first century," the mark BLACKBERRY has become "famous and well known" for hand-held devices and related information technology services.

The involved marks sound alike and their visual similarities outweigh the differences. As to connotation, the public initially adopted the name "Crackberry" to refer to the seemingly addictive nature of the device. In fact, in 2006 the word "Crackberry" was selected as the "Word of the Year" by Webster's New World Dictionary. Thus even prior to Applicants' adoption of the mark CRACKBERRY, the two terms had already developed similar connotations. The fact that consumers informally refer to Blackberry devices by the "Crackberry" moniker further supports the finding that the marks have similar commercial impressions.

And so the Board concluded that the marks are highly similar, and this "critical" duPont factor weighs in favor of Opposer RIM. Indeed, the fame of the BLACKBERRY mark magnifies the significance of the similarities between the marks.

Applicants argued that RIM's goods relate primarily to hand-held devices and related support services, whereas its services concern online chat rooms and retail store services for wireless device accessories. The Board, however, found that Applicants' recited services are "closely related, if not, in some respects, legally identical, to opposer's broadly-stated goods and services." In sum, the Board found a close relationship between opposer's "registered goods and services" and Applicants' services. It agreed with RIM that there is a large overlap in channels of trade; in fact, it seems that Applicants' marketing targets RIM's customers.

As to clothing items, RIM claimed common law rights but failed to prove when its use of BLACKBERRY commenced, and the record did not establish that RIM's goods and services are related to clothing.

And so the Board found confusion likely as to Applicants' services, but dismissed the Section 2(d) claim as to Applicants' clothing items.

Dilution by blurring: The Board found BLACKBERRY to be among the most famous and valuable trademarks in the world, and concluded that BLACKBERRY has become a "household name" that qualifies for protection under Section 43(c). Prior to the filing date of the opposed applications, "BLACKBERRY-branded goods had kicked-off a technology revolution in the United States" and the mark BLACKBERRY had become famous.

The question, then, was whether CRACKBERRY is likely to blur the distinctiveness of the BLACKBERRY mark. The Board reviewed the non-exclusive factors set forth in Section 43(c)(2)(B) of the Lanham Act, and answered the question in the affirmative.

As discussed in the Section 2(d) analysis, the Board found a high degree of similarity between the marks. Applicants did not contest that point, and they conceded that BLACKBERRY is an inherently distinctive mark. Moreover, the record showed that RIM is the exclusive user of the mark BLACKBERRY.

As to the degree of recognition of the mark, the evidence established that BLACKBERRY "became one of the most prominent marks in our digital, wireless culture" and one of the most famous and valuable trademarks in the world.

The record supported the conclusion that Applicants deliberately set out to create an association with the BLACKBERRY mark. The purpose of Applicants' online services is to provide a forum for BLACKBERRY users. Applicants' representative confirmed that Applicants chose their mark because of its strong association with BLACKBERRY. Indeed, Applicants' claim of parody "stands as a admission that applicants intended to create an association with BLACKBERRY."

The evidence also supported the conclusion that there is a strong association between the two terms, from a date well prior to Applicants' adoption of the CRACKBERRY mark.

The Board concluded that all six of the statutory factors support RIM's position and that RIM is "likely to suffer impairment of the distinctiveness of its marks." Hence, the Board found a likelihood of blurring vis-a-vis all of Applicants' goods and services.

Parody defense Applicants' conceded much of RIM's dilution argument, while zealously advancing its claim to a parody defense. Parody is explicitly included as a defense to a claim of dilution under the statutory "fair use" exception in Section 43(c) of the Lanham Act. However, under the terms of that section ("other than as a designation of source"), Applicants' use of CRACKBERRY as a service mark seems to be excluded from the fair use safe harbor.

Nevertheless, Applicants' pointed to the Fourth Circuit's Louis Vuitton decision in arguing that Opposer should have an "increased burden" to demonstrate impairment of the distinctiveness of its mark when a parody is involved. However, the Board agreed with RIM that "the safe harbor provision does not extend the fair use defense to parodies used as a trademark." As in the Louis Vuitton case, the Board assessed the alleged parody as part of the total circumstances in determining whether the claim of dilution by blurring has been made.

The Board found that, in this case, parody does not insulate Applicants from the dilution claim. Two factors are critical: first, the public adopted and popularized "Crackberry" as a nickname for BLACKBERRY devices, and so the term "Crackberry" does not solely, "if at all," reflect Applicants' attempt at parody; second, the closeness of Applicants' services to the goods and services of RIM further undercuts Applicants' parody defense (compare the vast difference between the LOUIS VUITTON handbag and the "Chewy Vuitton" dog toy).

And so the Board found that use of Applicants' mark would blur the distinctiveness of RIM's mark, rather than create "a non-source-identifying fair use parody that should be protectable either under the safe harbor provisions of Section 43(c) (3)(A) or of the First Amendment."

TTABlog comment: If CRACKBERRY means BLACKBERRY and the services are identical or related then how does use of CRACKBERRY diminish the distinctiveness of BLACKBERRY? Doesn't it amplify the strength of BLACKBERRY? Please limit your answer to one bluebook.

What did RIM prove in establishing a dimunition in the distinctiveness of its mark, that Rolex failed to prove when its dilution claim against the ROLL-X table was a failure. [TTABlogged here]? [Again, one bluebook only].

Text Copyright John L. Welch 2012.

Precedential No. 8: TTAB Applies Collateral Estoppel in Ex Parte Section 2(d) Context Based on Prior TTAB Proceedings

Kent G. Anderson seeks to register the marks FUTURE and FUTURE MOTORS for hundreds of goods and services falling in classes 3, 12, 35, and 40. The PTO refused registration under Section 2(d) as to various goods in class 12 and certain of the services in view of the registered mark FUTURA for "tires" and "automotive accessories, namely, vehicle wheel caps and hub caps." The Examining Attorney further asserted that collateral estoppel bars registration of the marks for the refused goods and services in view of a prior Board proceeding in which the Board sustained oppositions to several other applications of Mr. Anderson. The Board agreed that collateral estoppel applied to the FUTURE application, but not the FUTURE MOTORS application, and it also affirmed the Section 2(d) refusals of both applications. In re Kent G. Anderson, Serial Nos. 76511652 and 76514799 (February 17, 2012) [precedential].

Collateral Estoppel: In 2008 the Board sustained oppositions brought by the owner of the FUTURA registration to Anderson's attempt to register the FUTURE mark for goods in classes 12, 35, and 40, and the mark FUTURE/TOMORROW & Design for goods in class 12. [See The Pep Boys Manny, Moe & Jack of California v. Kent G. Anderson, Oppositions Nos. 91157538 et al. (August 6, 2008) [not precedential]].

The Board reviewed various precedents involving collateral estoppel, but the application of collateral estoppel in an ex parte context based upon a prior inter partes judgment appears to be a matter of first impression for the TTAB. The Board observed, however, that "it is firmly within our discretion to apply collateral estoppel where it is warranted."

Turning to the elements of collateral estoppel, and first considering the FUTURE mark, the Board found that the identical Section 2(d) issue was raised in the prior proceeding (same marks and goods/services), the issue was actually litigated, the determination of likely confusion was necessary to the judgment, and Anderson had a full and fair opportunity to litigate the issue. Ergo, collateral estoppel applied.

As to the FUTURE MOTORS mark, however, collateral estoppel did not apply because the prior proceeding did not concern that particular mark, but instead the marks FUTURE and FUTURE/TOMORROW & Design. Neither of those two marks is substantially identical to FUTURE MOTORS.

Section 2(d): The Board then turned to a consideration of the Section 2(d) refusals regarding the two applied-for marks. In a straightforward analysis the Board found confusion likely and it affirmed the refusals.

TTABlog comment: Many of Mr. Anderson's identified goods and services survived in these applications: e.g., ferry boats, lunar rovers, literary agencies, business management services, and wholesale toy stores. Of course, once the notices of allowance issue, Mr. Anderson will have the opportunity to submit proof of use and thereby obtain registrations for his various non-automotive goods and services.

Text Copyright John L. Welch 2012.

Precedential No. 7: On Remand from District Court, TTAB Sustains Section 2(e)(3) Opposition to GUANTANAMERA for Cigars

In February 2008, the Board sustained this opposition to registration of the mark GUANTANAMERA for cigars, finding the mark to be primarily geographically deceptively misdescriptive under Section 2(e)(3). [TTABlogged here]. In August 2010, the U.S. District Court for the District of Columbia reviewed the Board's decision and reversed and remanded [here], ruling that the Board had "erred as a matter of law in applying the materiality requirement" of Section 2(e)(3) of the Trademark Act. The Board has now sustained the opposition again, finding that "a significant portion of consumers of cigars would be materially influenced by the geographic meaning of applicant's mark." Corporacion Habanos, S.A. v. Guantanamera Cigars Company, 102 USPQ2d 1085 (TTAB 2012) [precedential].


The district court found that "Guantanamera" means "girl from Guantanamo," that the primary significance of GUANTANAMERA is geographic, that the consuming public is likely to believe that Applicant's cigars originate from Cuba, and that cigar tobacco is produced in the Guantanamo province. However the court ruled that the Board had failed to address the third element of the California Innovations test: the materiality of the geographic representation inherent in the mark.

The court concluded that our decision did not address whether a significant portion of relevant consumers would be materially influenced in their purchasing decisions; and "[t]o establish a prima facie case, the TTAB or the opposition must show that 'a significant portion of the relevant consumers would be materially influenced in the decision to purchase the product or service by the geographic meaning of the mark.'" [The court relied on the CAFC's In re Spirits decision, decided after the Board had ruled in this case.]

The Board reopened the proceeding so that the parties could address that one issue. The parties submitted more than three thousand pages of additional evidence (much to the Board's dismay).

Applicant's Expert and His Report: Opposer objected to Applicant's expert witness report, asserting that it was not competent expert testimony under FRE Rule 702 and Daubert. After reviewing the applicable law, the Board ruled that the witness was qualified, based on his experience, as an expert in the advertising and selling of "Cuban cigar brands, i.e., cigar brands with Cuban names or words or references to Cuba, in the United States." He owned two cigar stores for many years, interacted with sellers and buyers, regularly reviewed cigar magazines and websites, traveled to cigar manufacturing regions, operates an educational institution, and writes a blog. ['nuff said!- ed.].

His report, however, was inadmissible. It revealed no methodology applied by the witness in reaching his conclusions [e.g., that the primary significance of "Guantanamera" is a famous song of Cuban origin, that those who do relate the word to Guantanamo, Cuba, do not perceive a connection with cigars, and that even if they did, this would not be a material factor in the purchasing decision]. He did not conduct any studies or focus groups, but relied only on his "educated perception." In short, there was "nothing in the report or his testimony to demonstrate that the report is reliable."

Materiality: The question at hand was whether "a significant portion of the relevant consumers would be materially influenced in the decision to purchase the cigars by the geographic meaning of the mark." In Spirits, the CAFC reversed the Board because, in finding that MOSKOVSKAYA was primarily geographically deceptively misdescriptive of vodka, it failed to consider whether Russian speakers, who would be deceived into believing that the vodka came from Moscow, constituted a "substantial portion of the intended audience." The court there noted that:

only 0.25% of the U.S. population speaks Russian.… If only one quarter of one percent of the relevant consumers was deceived, this would not be, by any measure, a substantial portion. However, it may be that Russian speakers are a greater percentage of the vodka-consuming public; that some number of non-Russian speakers would understand the mark to suggest that the vodka came from Moscow; and that these groups would together be a substantial portion of the intended audience.

Spanish speakers constitute more that 12 percent of the United States population. Tens of millions more have received Spanish language instruction in school. The Board concluded that "(i) persons who speak Spanish at home, and (ii) persons who do not speak Spanish at home but who know Spanish, are a substantial portion of the U.S. population." Moreover, Applicant's advertising is aimed at Spanish-speaking consumers and at the general adult population. The Board therefore found that "persons who speak or know Spanish are a substantial portion of the intended audience (or purchasers) of applicant's goods."

The question, then, was whether these consumers would be deceived by the geographical misdescription. Applicant argued that direct evidence of materiality is required, but the Board concluded otherwise. Reviewing the case law, noting the difficulty in obtaining direct evidence from purchasers, and observing that the TTAB does not require survey evidence in any proceeding (given the limited nature of its jurisdiction), the Board ruled that indirect evidence of materiality is acceptable in an inter partes proceeding.

Applicant argued that, even if the Board is permitted to draw an inference of materiality, here there is no evidence that Guantanamo is "famous or otherwise known" in this country for cigar production. Instead, according to Applicant, "Guantanamo is famous for a US Naval Detention center and as it relates to the song titled Guantanamera." The latter argument, however, conflicted with the District Court's finding that "Cuba, or Guantanamo, Cuba is the primary significance of GUANTANAMERA," and that the consuming public is likely to believe that the cigars come from Cuba. It also ignored the requirement that the mark be considered in the context of the goods.

Moreover, the law does not require that the place identified in the mark be "noted for" the goods in order for the Section 2(e)(3) bar to apply. It is enough that the consumer would expect the goods to come from that geographical location.

Finally, turning to the question of whether the misdescription would be a material factor in the purchasing decision, the Board answered in the affirmative.

From the advertisements, webpages, testimony, magazines and cigar publications and encyclopedias, we find that opposer has established that sellers of cigars in the United States market non-Cuban cigars through branding and marketing associations with Cuba because they believe that consumers value associations with Cuba in making purchasing decisions.

And so the Board concluded that the Spirits test had been met, and it sustained the opposition.

TTABlog comment: From these cases, I distill the following: it's okay if native speakers of a foreign language are materially deceived by a geographical misdescription, as long as they comprise only a small portion of the entire intended market. In other words for the native speakers who are deceived - as they say in Russia - tough s%$tsky.


Text Copyright John L. Welch 2012.

Test Your TTAB Judge-Ability: Are MANGO BEACH and MANGO Confusingly Similar for Soaps, Cosmetics, and Perfumes?

Applicant sought to register the mark MANGO BEACH for creams, powders, soap, perfume, and the like [MANGO disclaimed], but Opposer asserted a likelihood of confusion with its registered mark MANGO, in the stylized from shown below, for soaps, perfumery, and cosmetics. The goods are identical in part and the marks sure are close, aren't they? How do you think this came out? Consolidated Artists BV v. Camille Beckman Corporation, Opposition No. 91188863 (February 16, 2012) [not precedential].


The Board noted that the "minimal stylization" of Opposer's mark did not distinguish the marks, since Applicant's standard character mark must be considered without regard to font size, style, or color. Opposer contended that Applicant's mark includes the registered mark in its entirety, and the marks are consequently similar in "spelling sound and form."

The Board, however, found the connotations and commercial impressions of the two marks to be "very different." Applicant's mark is a unitary phrase, MANGO BEACH, which suggests a place. Opposer's mark evokes the fruit. These differences, the Board found, outweigh any similarities in appearance or sound.

Moreover, the word "mango" is merely descriptive of the scent of Applicant's products. Although there was no counterclaim attacking the registered mark, the Board may still make findings regarding the strength of the mark. The Board deemed MANGO to be highly suggestive for soaps and fragrances. Third-party registrations and use showed that the word "mango" is employed to describe the scent of the goods.

And so the Board ruled that confusion is not likely, and it dismissed the opposition.


TTABlog comment: How, you might ask, was MANGO registered for soap and cosmetics without at least a showing of acquired distinctiveness?

Text Copyright John L. Welch 2012.

Reminder: TTABlogger Road Trip: Florida Bar IP Symposium, Orlando March 1-2

Yours truly will be heading to Florida to speak at the 3rd Annual Intellectual Property Law Symposium of The Florida Bar in Orlando (March 1 and 2) (webpage here). I will appear on Friday morning, March 2nd. The topic: TTAB Developments! All around trademark expert Anne Gilson Lalonde will be Friday's keynote speaker: "Non-Traditional Trademarks and the Future of Aesthetic Functionality." The brochure for the event may be found here.

Precedential No. 6: TTAB Summarily Cancels Registration Due to Flawed Section 44(e) Basis

Respondent Asad A. Khan, a Pakistani domiciliary and national, obtained a US registration for the mark shown below, for soft drinks, under Section 44(e) of the Lanham Act, based on a Community Trademark Registration (CTM). Khan claimed that the CTM registration emanated from his "country of origin," but the Board concluded that Khan did not have a "bona fide and effective industrial or commercial establishment in the EU." It therefore ruled that the CTM registration could not serve as a basis for registration under Section 44(e), and it cancelled Khan's registration on Petitioner's motion for summary judgment. Fouad Kallamni v. Asad A. Khan, 101 USPQ2d 1864 (TTAB 2012) [precedential].


Section 44(e) provides that a mark duly registered in a foreign applicant's "country of origin" may be registered in the USPTO. An applicant's "country of origin" is defined in Section 44(c) as "the country in which he has a bona fide and effective industrial or commercial establishment, or if he has not such an establishment the country in which he is domiciled, or if he has not a domicile in any of the countries described in subsection (b) of this section, the country of which he is a national." Under subsection (b), the applicant’s country of origin must be a party to a treaty or agreement with the United States that provides for registration based on ownership of a foreign registration, or must extend reciprocal registration rights to nationals of the United States. [See TMEP Section 1002].

Although Pakistan is a treaty nation of the Paris Convention, Khan did not base his US application on a Pakistani registration (and it does not appear that any such registration has issued). Instead he relied on his CTM registration. Consequently, "the question is whether any country in the European Union qualifies as a 'country of origin' of respondent." I.e., did Khan have a "bona fide and effective industrial or commercial establishment" in an EU country on the date of the US registration?

The Board concluded that Khan's evidence fell short. He did not have a permanent place of business with employees, nor production facilities, in the EU. Instead he conducted business through a independent entity in the EU "with which [he] had a contractual relationship for product sourcing, business development, and marketing." Khan admitted that this entity was "neither a Licensee, nor a Subsidiary, nor a Parent company, nor a holding company, nor a special instrument company created for royalty or tax advantages." In sum, it was an independent entity, separate from Respondent.

We find as a matter of law that a bona fide and effective industrial or commercial establishment cannot be created by respondent’s reliance on the commercial facilities of an independent legal entity which respondent retained to source his European Union business.

The Board also found that Khan's shipment of product from Pakistan to distributors in Romania and Bulgaria did not create the requisite bona fide and effective commercial establishment in the EU. Nor did Khan's activities in Pakistan, targeting EU countries, support that claim.

Finally, there was no genuine dispute that Khan is neither domiciled in nor a national of an EU country.

And so Khan had no issued foreign registration on which he could rely under Section 44(e) at the time his US registration issued. The Board therefore granted Petitioner's motion for summary judgment, cancelling the registration.

Text Copyright John L. Welch 2012.

CAFC Affirms TTAB Dismissal of COACH Section 2(d) and Dilution Claims, But Remands Mere Descriptiveness Claim

In a 44-page precedential decision, the CAFC affirmed the Board's dismissal [TTABlogged here] of Opposer Coach's Section 2(d) and dilution-by-blurring claims, finding that Opposer had failed to prove likelihood of confusion or dilution between Applicant Triumph's mark COACH for educational software and publications, and Opposer's registered mark COACH for handbags, luggage, and the like. As to Opposer's Section 2(e)(1) mere descriptiveness claim, however, the court vacated the Board decision and remanded the claim for further consideration. Coach Services, Inc. v. Triumph Learning LLC, 101 USPQ2d 1713 (Fed. Cir. 2012) [precedential].


Evidentiary Ruling: The court first reviewed the Board's refusal to accept into evidence copies of Opposer Coach's 2000-2008 annual reports, submitted via notice of reliance. Triumph had objected on the ground that the reports had not been submitted in accordance with the Rules and were not otherwise authenticated. The court agreed with Triumph. Annual reports may not be submitted merely via notice of reliance (i.e., without authenticating testimony) because they are not considered to be printed publications available to the general public.

Coach argued that the reports are available on the Internet and therefore that the printed reports should have been admissible pursuant to the Board's ruling in Safer Inc. v. OMS Investments, Inc., 94 USPQ2d 1031 (TTAB 2010). However, the court noted that in Safer the Board made a distinction between an annual report available only in paper form as opposed to a report in digital form on the Internet because the latter would be in general circulation. Coach's printed annual reports did not contain the "identifying information" that would be found on copies obtained from the Internet. They therefore did not fall with the Safer exemption.

Likelihood of Confusion: Coach argued that the Board should have given more weight to its determination that Opposer's mark was famous. The court, however, concluded that "the unrelated nature of the parties' goods and their different channels of trade" weighed heavily against Coach. "Because the duPont factors favoring Triumph outweigh the factors favoring, the Board was correct in finding no likelihood of confusion."

Dilution: The court agreed with the Board that Coach had failed to provide sufficient evidence to meet the higher fame standard for dilution. The only sales and advertising figures of record covered a single year (2008, four years after Triumph's filing date), but the court observed that even had Opposer's 2000-2008 annual reports been admitted into evidence, such evidence by itself would still be insufficient. Coach's 16 incontestable registrations were relevant to the fame inquiry, but of course not conclusive. Coach's evidence of media attention failed, as the Board found, "to show widespread recognition of opposer's mark [by] the general population." Likewise, other evidence offered by Coach missed the mark.

The court emphasized that the burden to show fame in the dilution context is not "insurmountable." [just almost - ed.]. But Coach's evidence was "just too weak" to prove fame on this record.


Mere Descriptiveness: The Board had found that Applicant's mark had achieved acquired distinctiveness. Applicant challenged Coach's standing to raise the issue of mere distinctiveness, while Coach challenged the sufficiency of the 2(f) evidence.

Even though Coach does not use, nor want to use, the word "coach" in a descriptive fashion, it still had standing to raise the issue. Under CAFC precedent, once standing is raised as to any one issue, the party may rely on any other Section 2 ground to negate the applicant's right to registration.

As to acquired distinctiveness, the Board relied on certain documents despite Coach's objection that the documents had not been properly authenticated. The court agreed with Coach that the Board had committed error, and it remanded the case to the Board:

[O]n remand, the Board must address the weight, if any, to be given to pre-July 2003 documents [the date when Triumph's witness began working for Triumph -- ed.] in the absence of any testimony authenticating them or addressing their use. The Board must then assess whether these apparent gaps in Triumph's proofs impact the Board's determination that the mark was in continuous use during any relevant period.

TTABlog comment: IMHO, this is one of the best trademark opinions to come out of the CAFC in a long time. There are no ground-breaking legal rulings, but the application of the law to the particular facts is interesting. Here's a mark that is famous, but not famous enough; entitled to a broad scope of protection, but not that broad. Typically, if a mark is famous for 2(d) purposes, the owner will win against almost any goods and services. Here, however, the marks had totally different meanings in their respective contexts.

On the dilution side, is COACH a unique enough word to ever achieve dilution-level fame? It's not a coined word. In fact it clearly has more than one common meaning. Could Opposer ever convince the Board that COACH is a "household name" that qualifies as famous for dilution purposes?

Suppose Coach's 2(e)(1) claim is sustained on remand. If you were Triumph, wouldn't you file a new application for registration, with an eye toward providing more evidence of secondary meaning next time around?

Text Copyright John L. Welch 2012.

Precedential No. 5: Parties Choose ACR, TTAB Finds TURFECTA and TRIFECTA Confusingly Similar for Grass Seed

Had the parties not chosen the ACR route, I bet this case would not have been deemed precedential. The first half of the opinion deals with the parties' somewhat clumsy attempt to comply with the Accelerated Case Resolution Procedure. The second half addresses the substantive Section 2(d) issues: the Board found the mark TURFECTA for "grass seed" likely to cause confusion with the registered mark TRIFECTA for "lawn seed." Lebanon Seaboard Corporation v. R & R Turf Supply, Inc., 101 USPQ2d 1826 (TTAB 2012) [precedential].


ACR: The parties stipulated to submission of their trial evidence concurrently with their legal arguments, sort of like the case of cross-motions for summary judgment. They stipulated that testimony could be submitted by affidavit or declaration. They also stipulated that, inter alia, Opposer has standing and priority of use, the goods of the parties are legally identical, and the word "trifecta" has no special meaning in the field of grass seed.

Although the Board found it "admirable" that the parties chose the ACR route, it noted that the parties needlessly submitted evidence as to certain facts and issues that had already been stipulated. The parties also needlessly stipulated that the Board could "resolve any disputed issues of material fact in making a final determination on the merits." Such a provision applies in a summary judgment context, but not here because the parties actually went to trial. So of course the Board could decide factual issues.

Likelihood of confusion: The Board plodded through the du Pont factors, first noting that because the goods are identical, they are presumed to travel in the same channels of trade. Neither party addressed the issue of "consumer care" in the purchasing of the goods, and so that factor was neutral.

As to the strength of Opposer's mark, the Board found TRIFECTA to be arbitrary for lawn seed. Dictionary definitions showed the primary meaning of the word to be "a variation of the perfecta in which a bettor wins by selecting the first three finishers of a race in the correct order of finish." Opposer's sales topped $8 million in the period 2006-2010 and it spent some $250,000 for advertising in a 14-year period. These advertising expenditures were not "overwhelmingly large," and there was no evidence as to how these figures compared with other brands of grass seed, nor any evidence regarding media coverage or brand awareness. And so the Board refused to find the TRIFECTA mark to be famous.

On the other hand, there was no evidence of any use of similar marks on similar goods. Applicant pointed to third-party registrations in an attempt to show that the suffix "FECTA" is commonly used and is therefore a weak formative. The Board pointed out, however, that TRIFECTA is the only mark containing "FECTA" that is registered for grass seed.

Consequently, the Board concluded that TRIFECTA, being an arbitrary mark in use for 25 years, is a strong mark entitled to a broad scope of protection.

As to the marks, the Board observed that when the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. Applicant contended that FECTA is a "common laudatory suffix" that imports the word "perfect" into the mark. The Board disagreed.

[G]iven the definitions of “trifecta” that applicant has made of record, we cannot conclude that consumers would view the FECTA portion of opposer’s mark TRIFECTA separately from the mark as a whole; rather, they would ascribe to the mark the dictionary meaning of the word. *** Further, even if consumers were aware that a trifecta is a variation of a perfecta, they would not regard FECTA in opposer’s mark as referencing the laudatory term “perfect,” but would understand it to refer to a type of bet.

Third-party registrations for marks that include the suffix "FECTA" were not probative on this issue. Many were for the mark PERFECTA by itself or with an additional word, and they do not demonstrate that the "FECTA" portion of the mark has the connotation "perfect." The remaining registrations were for the mark TRIFECTA, alone or with other words. Again, this word has a recognized meaning and consumers are not likely to extract the "FECTA" portion and ascribe to it a separate meaning.

Therefore, the Board refused to give "FECTA" a separate laudatory meaning and instead considered the involved marks as a whole.

As to meaning, the marks plainly differ, but that difference was not sufficient to distinguish the marks.

Because of the similarity in structure of TURFECTA to "trifecta," consumers are likely to see TURFECTA as a play on "trifecta," with the descriptive or generic word "turf" replacing the element "tri." This connotation is subtly reinforced by the horse racing meaning of "turf": "a. A racetrack, b. The sport or business of racing horses." As a result, the marks TRIFECTA and TURFECTA convey a similar commercial impression, and TURFECTA may be seen as a variation of opposer’s mark TRIFECTA, indicating origin in opposer.

Next, the Board considered the lack of actual confusion evidence. It noted that the period of concurrent use of the two marks was limited: only 18 months elapsed between Applicant's first use date and the date it submitted its testimony. Moreover, Applicant's sales and advertising were limited as well, and there was no overlap in actual customers or marketing channels. The Board treated this factor as neutral.

Finally, Applicant maintained that it chose the mark TURFECTA in good faith, with no intention to mimic or copy Opposer's mark. The Board observed, however, that good faith adoption of a mark does not prevent a finding of likely confusion.

Balancing the relevant du Pont, the Board found confusion likely and it sustained the opposition.

TTABlog comment: Anything of particular interest here? Not that I see.

Text Copyright John L. Welch 2012.

Holiday Reading: The Trademark Reporter's Annual Review of U.S. Trademark Cases

The Trademark Reporter has published its Annual Review of U.S. Trademark Cases: "The Sixty-Fourth Year of Administration of the U.S. Trademark (Lanham) Act of 1946," by Theodore H. Davis, Jr. and yours truly, John L. Welch. (pdf here). [You might want to read it in digital form, since it is 463 pages long.]


Ted Davis observes in the Introduction that "[t]he most notable developments in trademark and unfair competition law in the twelve months between the sixty-fourth and sixty-fifth anniversaries of the Lanham Act’s effective date related to the aesthetic functionality and utilitarian functionality doctrines."

On the TTAB side of the fence, the claim of fraud on the PTO continued in its downward trajectory. The Board has yet to find fraud in any case since the CAFC issued its Bose decision in August 2009. The advice-of-counsel defense to a fraud claim came to the fore in MCI Foods, Inc. v. Bunte, making it even more unlikely that we will see a successful fraud claim any time soon.

TTABlog note: Thanks again to The Trademark Reporter for granting permission to provide a link to this issue, which is Copyright © 2012 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 102 TMR 1 (January-February 2012).

Text Copyright John L. Welch 2012.

Test Your TTAB Judge-Ability: Are Pet Treats and Pet Boarding Services Related for Section 2(d) Purposes?

The USPTO refused registration of the mark LUCKY PAWS for "pet treats, namely, organic material to be mixed with other organic material and microwaved," finding the mark likely to cause confusion with the registered mark LUCKY PAWZ for "pet boarding services; pet day care services." Of course the marks are real close, but what about the goods/services? How would you rule? In re Lucky Paws, LLC, Serial No. 77929696 (February 3, 2012) [not precedential].


There was no evidence that any company that manufactures pet treats also renders pet day care services. The record included only one third-party registration that included both "pet treats" and "boarding and daycare for private pets." [As opposed to public pets? -ed.]. The record evidence failed to show "that pet boarding and day care services and pet treats are intrinsically related." End of story, right? Wrong.

There was evidence that companies rendering pet boarding and day care services "provide food and treats to the pets albeit not under the same marks." The Board therefore concluded that "organic pet treats are a type of product that is offered in conjunction with pet boarding and day care services, they move in the same channels of trade, and are sold to the same classes of consumers."

The Board found confusion likely and it affirmed the refusal to register.

TTABlog comment: Well, how did you do, Judge Wanna-be? Were you surprised by the outcome?

Text Copyright John L. Welch 2012.

Precedential No. 4: TTAB Dismisses "Goats on a Roof" Cancellation Petition for Lack of Standing, Failure to State a Claim

In one of the more bizarre TTAB cases in years, the Board granted Respondent's motion to dismiss a petition for cancellation of two registrations for the mark shown below (comprising goats on a grass roof) for restaurant services and retail store services. Petitioner Robert Doyle failed to allege sufficient facts that would establish his standing, and failed to state a claim on which relief can be granted. Robert Doyle v. Al Johnson’s Swedish Restaurant & Butik, Inc., 101 USPQ2d 1780 (TTAB 2012) [precedential].


Standing: Doyle alleged that he personally has been or will be negatively affected by Respondent's registrations because:

Many establishments in the classes to which Registrant’s mark apply have, because of Registrant’s marks, refrained from placing goats on their grass roofs, as a result of which Petitioner has been, and will continued (sic) to be, damaged in that Petitioner has been, and will continue to be, unable to satisfy his desire to take photographs of goats on grass roofs.

Even though, as we know, the standing hurdle is quite low, Doyle failed to clear it. Although he may have a "real interest" or a "personal stake" in taking photographs of goats on a roof, Doyle did not "relate [his] alleged impairment to respondent's service mark in any manner." There was no allegation that Respondent's mark somehow prevented him from placing goats on a grass roof and photographing them, or even photographing the goats on Respondent's restaurants.

Moreover, Doyle's alleged belief that he will be damaged was not reasonable. Respondent's mark does not prevent his photographing goats on grass roofs. Doyle did not allege that he uses or wants to use goat photographs in connection with restaurant or retail store services. In short, he failed to allege a reasonable basis in fact to support his claim of standing.


Functionality: Doyle's alleged ground for cancellation was functionality, but he failed to relate this claim to respondent's services. In other words, he failed to allege that goats on sod roofs are essential to the use or purpose of restaurant or retail store services.

Doyle asserted that goats and sod roofs affect respondent's costs by reducing respondent's energy and mowing expenses, but that allegation was completely unrelated to respondent's services. Goats on a sod roof might decrease the costs for any business, but functionality must be assessed in connection with the specific services at issue.

Doyle also alleged that the mark was functional because it is a "form of entertainment" that attracts customers. However, although goats on the roof may attract customers to respondent's restaurant, there was no allegation that this method is superior to any other method for attracting customers. Moreover, the Board observed, there is "no prohibition against a trade dress mark both functioning to indicate source and being aesthetically pleasing."

And so the Board concluded that Doyle's allegations, even if true, cannot establish the functionality of the registered mark.

The Board allowed Doyle 20 days to file an amended petition sufficiently alleging standing and a proper claim of functionality. However, it cautioned Doyle to be aware of the "extreme difficulties he would likely face in ultimately proving that respondent's mark is functional."

TTABlog comment: What gets my goat is that the Board can't award monetary sanctions against a plaintiff who brings such a ridiculous claim.

Text Copyright John L. Welch 2012.

Test Your TTAB Judge-Ability On These Five Mere Descriptiveness Refusals

Here for your contemplation are five Section 2(e)(1) mere descriptiveness refusals. A few years ago, I estimated that 80% of mere descriptiveness refusals were affirmed by the Board. Do you think that the results of these five appeals will lower that percentage, or raise it?


In re Nihondo Co., Ltd., Serial No. 79071083 (January 24, 2012) [not precedential]. Mere descriptiveness refusal of KAMPO BOUTIQUE for "tea; tea-based beverages; Chinese tea; Japanese green tea; herbal tea; all of the goods not for medical, purposes but used in accords [sic] with kampo practices." [KAMPO disclaimed].


In re Tom Miranda Outdoors Inc., Serial No. 77704628 (January 30, 2012) [not precedential]. Refusal of DOMINANT BUCKS as merely descriptive of DVDs, etc., in the field of hunting, and entertainment services, namely a television series in the field of hunting.

In re Brilliant Design, LLC, Serial No. 77842712 (January 31, 2012) [not precedential]. PETTICOAT VINTAGE for women's clothing refused registration on the ground of mere descriptiveness.



In re Dorr Arthritis Institute Medical Associates, Inc., Serial No. 77803520 (February 2, 2012) [not precedential]. ORTHOROBOTICS merely descriptive of "medical surgery."


In re Alpha Equipment Services Inc., Serial No. 77943347 (February 2, 2012) [not precedential]. SMART VAC deemed merely descriptive of "manufacture of industrial vacuum vehicles to order and/or specification of others" [VACUUM disclaimed].


TTABlog comment: Big Hint: they all came out the same way.

Text Copyright John L. Welch 2012.

TTAB Affirms 2(e)(2) Refusal of "THE MUNICH & Design" for Business Services Without a Disclaimer of MUNICH

Applicant Christoph Geskes stated that his various recited business services would originate from Munich, Germany. Examining Attorney Andrea R. Hack issued a final refusal of his applied-for mark THE MUNICH on the ground that the word MUNICH is primarily geographically descriptive under Section 2(e) and must be disclaimed. The Board affirmed the refusal. In re Geskes, Serial No. 77911173 (February 9, 2012) [not precedential].


Applicant's recited services ranged from forestry management to insurance brokerage to beauty care for human beings. He relied on Section 44(d) of the Lanham Act as his basis for registration.

Pursuant to Section 2(e)(2), a mark is primarily geographically descriptive if (1) it is the name of a place that is generally known to the public, and (2) the public would make a goods/place association, believing that the goods or services originate from that place. When there is no doubt that the geographical significance is the mark's primary significance, and where the place is neither obscure nor remote, a public association would be presumed if the applicants goods/services originate from that place.

Applicant did not dispute the Board's presumption of a services/place association. Instead he argued that a disclaimer of Munich is not warranted because the combination of THE and MUNICH creates an incongruity:

THE MUNICH is incongruous because in common usage the word the is a definite article that is not used before the names of cities. And, of course, "incongruity is one of the accepted guideposts in the evolved set of legal principles for discriminating the suggestive from the descriptive mark.” In re Shutts, 217 U.S.P.Q. 363, 364-65 (T.T.A.B. 1983) (SNO-RAKE held not merely descriptive).

The Board agreed that an incongruous combination of nondistinctive words is registrable as a unitary mark: e.g., URBAN SAFARI, MR. MICROWAVE, DR. GRAMMER, FRANKWURST, TINT TONE. The Board stated the question at hand thusly: "[W]hether the addition of the definite article 'The' before the word MUNICH in applicant's composite mark THE MUNICH, turns the unregistrable term into a trademark." [I would have said "turns the unregistrable term into a registrable trademark" - ed.].

The Board answered the question in the negative. A number of cases have found the definite article "THE" to have no source-identifying significance when added to an otherwise descriptive term: e.g., THE MART, THE MAGAZINE FOR YOUNG WOMEN. Here, combining THE with MUNICH, although in a grammatically incorrect manner, "does not create a unique, incongruous or geographically non-descriptive term whose meaning would require some measure of imagination and 'mental pause.'"

And so the Board affirmed the disclaimer requirement.

TTABlog comment: The USPTO recently issued an Examination Guide concerning disclaimers: "Additional Considerations for Determining Whether Wording in a Mark Comprises a Unitary Phrase or Slogan for Purposes of Disclaimer." Available at this link.

What about THE HARTFORD, registered for insurance services? Ahhhh, but under Section 2(f).

Text Copyright John L. Welch 2011.

Recommended Reading: Professor Barton Beebe: "Is The Trademark Office A Rubber Stamp?: Trademark Registration Rates at the PTO, 1981-2010"

Professor Barton Beebe of New York University Law School reports on the results of an empirical study of all trademark applications filed at the USPTO from 1981 to 2010, in his article entitled "Is The Trademark Office A Rubber Stamp?: Trademark Registration Rates at the PTO, 1981-2010," 48 Houst. L. Rev. 751 (2012). Download article here. Abstract below.

We have long lacked basic information concerning what proportion of trademark applications submitted to the U.S. Patent and Trademark Office (PTO) result in publication in the Official Gazette and in registration. Working from a previously unstudied dataset observing each of the some five million trademark registration applications submitted to the PTO from 1981 through 2010, this brief symposium contribution seeks to fill this gap in our knowledge. It reports and analyzes trademark application publication and registration rates at the PTO along a variety of dimensions, including by the year and filing basis of the application, by the type of mark that is the subject of the application and the category of goods or services with which the mark is associated, by the type and country of origin of the commercial entity applying for registration, and by the final status of applications that failed to survive to publication or registration. The article finds, in particular, that the publication rate for all applications filed from 1981 through 2007 was .76 and remained reasonably steady over the course of that period. The registration rate for all applications from 1981 to the November 16, 1989 effective date of Trademark Law Revision Act, which introduced the Intent to Use (ITU) filing basis, was .77. For all applications thereafter to 2007, the overall registration rate dropped to .53, largely as a result of ITU applications that failed to show use. The article speculates on why overall publication rates are significantly higher than 50 percent and why overall registration rates are strikingly close to 50 percent.

WYHA? TTAB Affirms 2(d) Refusal of THE LEATHER + VINYL DOCTOR Over LEATHER & VINYL MD & Design

The USPTO issued a Section 2(d) refusal to register the mark THE LEATHER + VINYL DOCTOR for "furniture restoration, repair and maintenance" [LEATHER + VINYL disclaimed], finding it likely to cause confusion with the registered mark LEATHER & VINYL MD & Design for "leather and vinyl cleaning and repair services; upholstery cleaning and repair services" [LEATHER & VINYL disclaimed]. The TTAB affirmed. Would you have appealed? In re Leather and Vinyl Doctor, LLC, Serial No. 77853280 (January 24, 2012) [not precedential].


As to the services, Examining Attorney Cynthia Sloan submitted eleven third-party registrations that suggested that furniture restoration and upholstery cleaning are types of services that may emanate from a single source under a single mark. Internet excerpts also showed a close relationship between the involved services. In fact, the Board found the services to be so closely related as to be "legally identical."

Applicant lamely argued that "consumers interested in services of any kind are sophisticated and exercise a higher degree of purchaser care" [higher than what? - ed.], but the Board swept aside that [rather strange] assertion as unproven.

As to the marks, the Board not surprisingly found them to be very similar in sound and appearance, the same in connotation, and similar in commercial impression. Applicant's argument that MD may sometimes refer to the State of Maryland simply went nowhere. [The fact that the registered mark includes a drawing of a doctor didn't help with the Maryland argument].

And so the Board affirmed the refusal.

TTABlog comment: To me, the most surprising thing about the decision was its length: 23 pages. I think I could have done it in 22 pages, max.

Text Copyright John L. Welch 2012.

Test Your TTAB Judge-Ability on These Four Section 2(d) Refusals

Can you predict the outcome of these four Section 2(d) likelihood of confusion appeals just by looking at the marks and the identified goods, without more? I won't give away the answers, but there's a hint below, in the comment.

In re Pura Vida Tequila, LLC, Serial No. 77853437 (January 10, 2012). Section 2(d) refusal of PURA VIDA for tequila, in view of the identical mark, registered for "brewed malt-based alcoholic beverages in the nature of a beer and beer."


In re Homie International Corporation, Serial Nos. 85005921 and 85006121 (January 17, 2012) [not precedential]. Refusals of HOMIE and HOMIES for athletic bags and backpacks, as being confusingly similar to the registered mark HOMIES & Design for t-shirts and hats.


In re Matthew W. Fitzgerald, Serial No. 77812771 (January 17, 2012) [not precedential]. Section 2(d) refusal of MANN ORCHARDS & Design for pies, bread and pastries, and raw fruits, in view of the registered mark MANN for fresh vegetables.


In re Source Interlink Magazines, LLC, Serial No. 77879157 (January 18, 2012) [not precedential]. Section 2(d) refusal of THE ULTIMATE PUZZLE SOURCE for a "magazine containing puzzles," in view of the registered mark THE ULTIMATE PUZZLE & Design for puzzles.

TTABlog comment: Here's a hint: they all came out the same way.

Text Copyright John L. Welch 2012.

TTAB Seeks to Fill Managing Interlocutory Attorney Position

The Trademark Trial and Appeal Board is seeking to fill the position of Managing Interlocutory Attorney.The open period for applications is Wednesday, February 01, 2012 to Tuesday, February 14, 2012. Job posting here.

Precedential No. 3: TTAB Dismisses Petition to Cancel SWISS and SWISS MADE Certification Mark Registrations for Watches

The Board dismissed a petition for cancellation of registrations for SWISS and SWISS MADE as certification marks for watches, clocks, and their component parts and fittings. Petitioner raised five grounds for cancellation: that Respondent permits its marks to be used for purposes other than certification (Section 14(5)(C) of the Lanham Act); that respondent does not control use of its marks (Section 14(5)(A)); that respondent discriminates in refusing to certify (Section 14(5)(D)); that the marks are generic for the goods; and that respondent committed fraud on the USPTO in securing the registrations. Swiss Watch International, Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d 1731 (TTAB 2012) [precedential].


Section 14(5)(C): Petitioner claimed that Respondent has permitted use of the subject marks for purposes other than certification, because it allowed its members and licensees to use trademarks that include the word SWISS: e.g., WENGER SWISS MILITARY, SWISS ARMY, and DAVOSA SWISS. However, the Board pointed out that, although a certification mark cannot be used as a trademark, this prohibition applies only when the mark is "identical or substantially or virtually identical" to the certification mark. Here, the third-party marks contain additional wording, which "clearly make these marks different from SWISS and from SWISS MADE."

Section 14(5)(A): A registration of a certification mark may be cancelled if the registrant does not control, or is not able to exercise control over, the use of the mark. Petitioner claimed that there is widespread, unauthorized use of SWISS by third parties. However, Respondent's witness testified as to its significant worldwide activities to ensure adherence to its standards. It monitors trademark filings, files oppositions, monitors media usage, buys or requests sample watches, and inspects watches seized by customs authorities.

Petitioner claimed that Respondent should be exercising greater control over its marks. However, absolute control is neither possible nor required; the question is whether Respondent's efforts have been reasonable. The Board found that Respondent's control has been adequate. Although there is some evidence of misuse of SWISS, the instances are not so extensive as to require cancellation of the registrations.

Section 14(5)(D): Petitioner's claim of discrimination was based not on a claim that Respondent refuses to certify goods, but that its standards are wrong and unnecessary. The Board, however, pointed out that the statutory provision "is not dependent upon whether the Board or a third party likes the standards, or sees the need for them." The statute requires only that the Registrant allow any entity that meets the standards (whatever they are) to use the mark.

In sum, Petitioner did not submit any evidence that Registrant refused to permit use of its marks for watches that meet its standards: namely, that the watch movement is made in Switzerland, the watch is "cased up" in Switzerland, and the final inspection takes place in Switzerland.

Genericness: Petitioner asserted that the subject marks are generic because they "primarily signify to the American purchaser the type of watch regardless of regional origin." It pointed to media usage of "Swiss watch" and "Swiss precision" to convey certain qualities associated with accurate watches. The Board, however, found that these uses merely show the renown of Swiss watches, not that the word "Swiss" refers to a type of watch.

The Board recognized that the record evidence included instances of use of the marks that do not conform to Respondent's standards. This small number of uses, however, was not sufficient to show that the marks "refer to any watch that works with precision, as opposed to indicating their geographic origin."

Petitioner also asserted that certification marks that indicate a geographic origin must concern "products tied to the land." The Board was unaware of any case law that supported that position. Here, the manufacture of watches is closely associated with Switzerland, and therefore consumers will understand that the subject marks signify the geographic origin of the goods. They will not regard the marks as generic terms.

Fraud: Finally, Petitioner claimed that Respondent committed fraud when it submitted its standards to the USPTO in a response to an Office action. However, the Board did not find any false statements in the submission, nor did it find any evidence of an intent to deceive the Office.

And so the Board dismissed the petition for cancellation.

Text Copyright John L. Welch.

Test Your TTAB Judge-Ability: Are MOCAMBO for Rum and MOCAMBO for Cigars Confusingly Similar?

You've been doing pretty well lately in your judging. Not perfect, but then who is? So sit back, light up a stogie, have a glass of your favorite beverage, and test your judge-ability on this case. The PTO refused registration of the mark MOCAMBO for rum, finding it likely to cause confusion with the identical mark registered for cigars. How would you decide the appeal? In re Licores Veracruz, S.A. de C.V., Serial No. 77753913 (January 26, 2012) [not precedential].


The marks are identical, and therefore a lesser degree of similarity between the involved goods is necessary to support a finding of likely confusion.

Examining Attorney Saima Makhdoom maintained that the goods are complementary products that are marketed together for simultaneous consumption. Various internet articles referred to the pairing of rum and cigars, and other website advertised rum and cigars. One website offered both rum and cigars under the brand name COHIBA, and another offered "rum cigars." The Board was persuaded by the evidence that rum and cigars are consumed together and sold in the same channels of trade.

[W]e find that cigars and rum will be encountered by the same consumers under circumstances that could, because of the identity of the marks, give rise to the mistaken belief that they originate from the same source.

Applicant argued that the PTO went too far: "Persons that drink rum and smoke wear clothing .... Does that mean that one would believe that pants or shoes branded MOCAMBO ... come from the same source as the rum or as the cigar?" That argument, the Board noted, ignores the record evidence regarding the relationship between cigars and rum.

The Board found this case similar to the JOHNNIE WALKER case, where it deemed whiskey and cigars to be related, and a similar holding in the CASCADE case involving cigarettes and whiskey. [Reminds me of a song: "Cigarettes and whiskey and wild, wild women; they'll drive you crazy, they'll drive you insane." -ed.].


And so the Board affirmed the refusal.


Text Copyright John L. Welch 2012.

TTABlogger Road Trip: Florida Bar IP Symposium, Orlando March 1-2

Yours truly will be heading to Florida to speak at the 3rd Annual Intellectual Property Law Symposium of The Florida Bar in Orlando (March 1 and 2) (webpage here). I will appear on Friday, March 2nd. The topic: TTAB Developments! All around trademark expert Anne Gilson Lalonde will be Friday's keynote speaker: "Non-Traditional Trademarks and the Future of Aesthetic Functionality." The brochure for the event may be found here.

Test Your TTAB Judge-Ability on this Section 2(d) Refusal of READYSHIP over SHIPREADY

Are you ready to shape up or ship out? The PTO refused registration of READYSHIP for "expedited product shipment services, namely shipment of plumbing products and bathroom accessories," on the ground of likely confusion with the registered mark SHIPREADY for various transportation services, including "storage and delivery of goods, "shipping and freight forwarding," and "forwarding of cargo." Applicant Brasstech appealed. How would you rule? In re Brasstech, Inc., Serial No. 77810266 (January 24, 2012) [not precedential].


The marks: The Board got right down to brass tacks. Its precedents hold that confusion is likely between two marks consisting of reverse combinations of the same words if they convey the same meaning or substantially similar commercial impressions. [E.g., RUST BUSTER and BUST RUST; THE WINE SOCIETY OF AMERICA and AMERICAN WINE SOCIETY]. [Or, hypothetically: PAPER SCISSORS ROCK; SCISSORS ROCK PAPER; SCISSORS PAPER ROCK; ROCK SCISSORS PAPER; ROCK PAPER SCISSORS; and PAPER ROCK SCISSORS. - ed.-].

Here, "the transposed marks engender the same commercial impression."

The services: Brasstech lamely argued that its shipping services are offered as a convenience to its customers, and it does not make the actual delivery. The Board, however, was constrained to decide the case based on the recitations of services in the application and the cited registration. [Not sure that why that would make a difference anyway - ed.].

Registrant's services are not limited as to type of goods shipped; they encompass "expedited" shipment of plumbing and bathroom products. Therefore the services are legally identical.

Moreover, for what it's worth, third-party registrations showed that both shipment and delivery services are of a kind that may emanate from a single source under a single mark.

And so the Board found confusion likely and it affirmed the refusal.

TTABlog comment: What about ROCK PAPER ROCK?

Text Copyright John L. Welch 2012.

Cindy B. Greenbaum Appointed as 19th TTAB Judge

Cindy B. Greenbaum has been appointed an Administrative Trademark Judge at the Trademark Trial and Appeal Board, bringing the total number of TTAB judges to nineteen, by my count. [See the roster here.]


Ms. Greenbaum has been the Managing Interlocutory Attorney at the TTAB for approximately five years. She began her career with the USPTO as a Trademark Examining Attorney, and spent seven years as an Interlocutory Attorney at the TTAB. For several years prior to joining the USPTO, Ms. Greenbaum was in private practice in New York and Washington, D.C.

Ms. Greenbaum received her law degree from the New York University School of Law and her undergraduate degree from The Wharton School of the University of Pennsylvania.

Use of Mark for Menu Item Insufficient for Restaurant Services Application, Says TTAB

The Board affirmed a refusal to register the mark CHA CHA for restaurant services on the ground that Applicant failed to submit an acceptable specimen of use. The Board ruled that the applied-for mark served only to identify a menu item and did not function as a service mark for restaurant services. In re The Restaurant Company, Serial No. 77508734 (January 17, 2012) [not precedential].


The definition of "service mark" in the Trademark Statute requires that the mark "identify and distinguish" the services from those of others, and indicate the source of the services. A mark will be deemed to function as a service mark "only if purchasers will directly associate the asserted mark with the services in question."

Applicant's specimens of use (shown above) consisted of various promotional pieces [table tents? - ed.]. But, the Board noted, "a proposed mark that serves only to identify an item on a menu does not function as a service mark for restaurant services."

The Board agreed with Examining Attorney Jeffrey C. Coward that the mark CHA CHA, as it appear on the specimens, identifies only a particular food items (wings) and not restaurant services.

[P]urchasers would not directly understand and perceive the mark as it appears on the displays as a source-indicator for the restaurant services. This is so, even though purchasers obviously are aware that applicant is rendering restaurant services because they are in the restaurant when they encounter the mark and can purchase wings while eating in the restaurant. Such a generalized association in the purchaser's mind between the product mark and the restaurant services does not suffice as the requisite “direct association” between the mark and the services which would make the asserted mark a service mark for the restaurant services themselves.

And so the Board affirmed the refusal to register.

Text Copyright John L. Welch 2012.

TTAB Posts February 2012 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled eight (8) oral hearings for the month of February, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]. Briefs and other papers for these cases may be found at TTABVUE via the links provided.


February 2, 2012 - 10 AM: In re Vibrynt, Inc., Serial No. 77701760 [Section 2(d) refusal of PREVAIL for “medical devices, namely, abdominal implants comprised of artificial materials and associated surgical instrument sets" in view of the registered mark PEEK PREVAIL for “surgical implants comprising artificial material"].


February 2, 2012 - 2 PM: In re MDF Italia SPA, Serial No. 79063250 [Section 2(e)(2) refusal of MDF IT & Design for furniture, furniture fittings, and furniture catalogs, on the ground that the mark is primarily geographically descriptive of the goods].


February 7, 2012 - 10 AM: Lush Ltd. v. Luscious, LLC, Opposition No. 91158982 [Section 2(d) opposition to LUSCIOUS COSMETICS for cosmetics, including bath soaps, in view of the registered mark LUSH for overlapping products].


February 7, 2012 - 2 PM: In re Advanced Armament Corp., LLC, Serial No. 77770899 [Section 2(a) refusal to register the mark shown below for "silencers for firearms" on the ground that the mark is immoral or scandalous].


February 9, 2012 - 10 AM: In re da Vinci, S.A., Serial No. 77651154 [Section 2(d) refusal of DA VINCI for various clothing items in view of the registered marks L’IL DAVINCI and DON DAVINCI for various clothing items].


February 9, 2012 - 2 PM: In re Fedrigoni, S.p.A., Serial No. 79069010 [Section 2(e)(1) mere descriptiveness refusal of MULTILEVEL for various products used in the security printing and anti-counterfeiting industry, including printed holograms and security threads].

February 14, 2012 - 10 AM: Valentino, S.p.A. v. Matsuda & Co., Opposition No. 91174169 [ Opposition to registration of VALENTINO RUDY (Stylized) for watches, spectacles, fabric, clothing, and sporting goods, in view of the registered mark VALENTINO for overlapping goods].


February 28, 2012 - 2 PM: In re IO Data Centers, LLC, Serial No. 77902194 [Refusal to register I/O ANYWHERE for "high density enclosures for computer servers and computer equipment" based on Applicant's failure to disclaim "I/O"]


Text Copyright John L. Welch 2012.