Reminder: Meet the Bloggers VIII at INTA 2012

The eighth annual "Meet the Bloggers" gathering will take place on Monday night, May 7th, from 8-10 pm at Hill Country Barbeque Market, 410 7th Street, N.W., Washington, D.C. Marty Schwimmer, Ron Coleman, Erik Pelton, and Yours Truly will be hosting and signing copies of their respective blogs. If you plan to attend, please R.S.V.P. here.


Some Blasts from the Past:

San Francisco, 2011

Boston 2010. Co-hosts: Coleman, Chestek, Schwimmer, and Welch

Seattle, 2009

Berlin, 2008

Coleman, Schwimmer, Welch, Chicago, 2007

Toronto, 2006

San Diego, 2005Click on photo for larger picture

On Remand from CAFC, TTAB Affirms Failure-to-Function Refusal of ONE NATION UNDER GOD for Charity Bracelets

In 2009, the CAFC vacated the TTAB's decision rejecting Applicant Michael Sones' specimen of use (CAFC decision TTABlogged here) for the mark ONE NATION UNDER GOD for "charity bracelets." The Board then remanded the application to the PTO to "consider the evidence as a whole to determine whether applicant’s webpage specimen sufficiently associates his mark with his charity bracelets so as to identify and distinguish the goods." Examining Attorney Brian D. Brown refused registration on the grounds that the phrase "fails to function as an indicator of source because it is informational and is merely ornamental." Sones appealed. The Board affirmed the refusal. In re Michael Sones, Serial No. 78717427 (April 20, 2012) [not precedential].


Procedural issues: Sones maintained that it was improper to raise new grounds for refusal on remand of the case. The Board was unmoved. It pointed out that it reviews only substantive issues; Sones should have petitioned to the Commissioner if he wanted to raise this procedural issue.

Sones also complained that he did not have an opportunity to rebut the evidence included by the Examining Attorney in the final office action, but the Board pointed out that he should have requested remand if he wanted to put in rebuttal evidence.

In a footnote, the Board observed that the PTO "has the inherent right to raise a refusal of registration, as the mandate of the Office is to issue registrations only for valid marks."

Substantive issues: The Board first looked at the "informational" refusal. The Examining Attorney contended that "ONE NATION UNDER GOD is such a common phrase universally signifying a sense of patriotism and displayed for the message it conveys that it is incapable of being perceived as a trademark in this case." He cited numerous websites demonstrating that ONE NATION UNDER GOD is a well-known phrase from the Pledge of Allegiance, frequently mentioned in articles and used by third parties in connection with the sale of their products.

The Board pointed out that, just because the phrase appears in the Pledge of Allegiance does not make it ineligible for trademark status. But the numerous third-party uses are "strong support for the examining attorney’s position."

The evidence shows that the use of ONE NATION UNDER GOD for various products, including jewelry and wristbands, is ubiquitous, and that these third parties use the phrase to provide information about their goods.

The use of the "TM" symbol by Sones does not necessarily mean that consumers will perceive the phrase as a trademark. Moreover, Applicant’s use of the purported mark must be considered in the context of the third-party uses for similar wristbands.

The Board concluded that the phrase, as used by Sones, would not be viewed by consumers as a source indicator for charity bracelets, but merely as giving information about them.

In light of this finding, the Board declined to consider the "ornamental" issue.

TTABlog comment: I think the phrase in question is more ornamental than "informational." What "information" does it convey?

In any event, I'm surprised that the Board did not cite its relatively recent precedential decision in In re Eagle Crest, Inc., 96 USPQ2d 1227 (TTAB 2010) [TTABlogged here], wherein it held that the phrase ONCE A MARINE, ALWAYS A MARINE would be perceived merely as informational and did not function as a trademark for Eagle Crest's clothing items.

Text Copyright John L. Welch 2012.

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

Applicant Azteca Systems sought to register the mark shown to the right, for "computer software for management of public works and utilities assets." The PTO refused registration on the ground that Azteca's specimen of use did not show the applied-for mark associated with the identified goods. The mark appears in the lower left-hand corner of Applicant's specimen webpage, shown immediately below. [Double-click on the picture for a larger image]. How would you rule? In re Azteca Systems, Inc., 102 USPQ2d 1955 (TTAB 2012) [re-designated precedential June 6, 2012].


The Examining Attorney contended that the textual description of the software clearly refers to the mark CITYWORKS and not the applied-for mark. There is no association of that mark with the description.

Azteca argued that it is not necessary that the mark be "right next to" the description. Some of the text included in the mark also appears in the description of the product, thereby connecting the goods to the mark. Only one product is described on the webpage.

The question, then, was whether the mark appears on the website in a manner that would associate the mark with the goods.

The Board found that the mark "fails to create an association with the goods and fails to serve as an indicator of source of applicant's goods as described on the webpage." The mark is distant from the description of the software and separated by text of marginal relevance (e.g., Applicant's philosophy regarding customers). Moreover, a number of different logos appear on the webpage that do not relate to the software. Links to event and news further distract the reader from the mark.

Just because the webpage contains a description of the software does not mean that the specimen must be accepted. Here, the specimen of use fails to display the mark in a manner that would associate it with the goods.

And so the Board affirmed the refusal.

TTABlog comment: Do you agree with the Board's assessment? Would you appeal?

Text Copyright John L. Welch 2012.

"DOG GAMES" for Pet Toys Clears Genericness and 2(f) Hurdles, Says Divided TTAB Panel

Applicant Kyjen overcame a genericness refusal of the mark DOG GAMES for "pet toys," and then established secondary meaning in the mark, leading one to conclude that the PTO's bark was worse than its bite. In dissent, Judge Shaw would find the phrase to be generic, asserting that the panel majority failed to consider the applied-for mark in the context of the specimens of record. In re The Kyjen Company, Inc., Serial No. 77571488 (April 12, 2012) [not precedential].


Genericness: The Examining Attorney contended that "dog games" is understood by the relevant public primarily to refer to "pet toys." She pointed to several websites that refer to "dog games," including some foreign websites. The panel majority discounted the latter, since "pet toys do not appear to be the type of goods that American consumers would be inclined to purchase from abroad." [What if you had a French poodle or a German shepherd? - ed.].

Other website evidence referred to DOG GAMES in a trademark sense, or in connection with goods other than toys, while still other evidence was of a "hybrid" variety wherein it was not clear whether "dog games" was being used generically or in reference to play activity.

The Board noted that the PTO must prove genericness with "clear evidence." The Examining Attorney provided only four clear examples of generic use. They were overridden by use of the term "dog games" to mean games played with dogs, with no toys involved. The resulting doubt regarding genericness must be resolved in Applicant's favor, said the majority.

Acquired Distinctiveness: The majority had no doubt that DOG GAMES is merely descriptive of pet toys because it describes a feature or function of the toys: they are used to play games with dogs.

The majority rejected the Examining Attorney's contention that DOG GAMES is "highly descriptive." Applicant attested to just over five years of use of the mark, more than a million dollars in revenue, $48k per year in advertising, and sales in many well known on-line and other venues. Customer reviews bolstered the majority's view that DOG GAMES had acquired distinctiveness.

Dissent: Judge Shaw asserted that the majority was barking up the wrong tree, because the PTO provided clear evidence of genericness. He maintained that Applicant's goods (which include weave poles, a start/finish line, and a tunnel) are "clearly a game for dogs or a 'dog game.'"

The third-party Internet evidence showed that "dog games" is commonly used to refer "to both equipment and activities intended to keep dogs active and healthy." One website uses the phrase "Dog Toys and Games" as the heading for a page of dog toys and games like those of Applicant.

Judge Shaw emphasized that Applicant's specimen shows that the goods are pet toys in the nature of games for dogs. When mark is considered in relation to these goods, "the consuming public would immediately understand that the term DOG GAMES refers primarily to goods such as applicant's notwithstanding that they have been broadly identified as 'pet toys.'"

TTABlog comment: I think the mark is merely descriptive and lacks secondary meaning.

Text Copyright John L. Welch 2012.

BARBIE v BARBIE GRIFFIN Final Argument at TTAB

You might want to mosey on over to the TTAB to catch the final argument this afternoon (2pm) in Mattel. Inc. v. S.W. Fantasies, Inc., Opposition No. 91170977. Mattel is opposing registration of BARBIE GRIFFIN for adult entertainment services, on the ground of likelihood of confusion and likelihood of dilution (both blurring and tarnishment) of the allegedly famous mark BARBIE for dolls and other goods.


The only TTAB dilution-by-tarnishment decision that I can recall is the rejection of Coach's claim of tarnishment in this case.

Three Motions to Amend Marks: How Would You Rule?

Here are three recent cases involving motions to amend an opposed mark, each motion having the consent of the non-moving party. Of course, even with consent, such an amendment will be accepted only if it does not materially alter the mark. How would you rule?


MasterCard International Incorporated v. CambridgeCommerce, Inc., Opposition No. 91155999 (April 4, 2012) [Applicant's motion to amend its mark from that shown above to that shown below].


Free Spirit Publishing Inc. v. Robert L. Styles, Opposition No. 91204026 (April 4, 2012) [Motion to amend Applicant's mark from A BULLY FREE WORLD to A WORLD WITHOUT BULLYING].


Diageo North America, Inc. v. Spirits Of The USA LLC, Opposition No. 91204026 (March 27, 2012) [Motion to amend Applicant's mark from PELICAN BAY RUM to PELICAN RUM].


TTABlog hint: They all came out the same way.

Text Copyright John L. Welch 2012.

Test Your TTAB Judge-Ability: Is CROMWELL for Safety Helmets Primarily Merely a Surname?

The PTO issued a Section 2(e)(4) refusal to register CROMWELL for "headgear for protection against accident or injury, and parts and fittings therefor ..." on the ground that the mark is primarily merely a surname. Applicant Helmet Integrated Systems contended that the mark's "primary significance is Oliver Cromwell, a British general, Puritan statesman, and Lord Protector of England from 1653-1658." How would you rule? In re Helmet Integrated Systems Ltd., Serial No. 77697443 (April 10, 2012) [not precedential].


The evidence indicated that there are 10,000 or more people with the surname CROMWELL in this country, and the Board therefore found that CROMWELL is not a rare surname. The Board also concluded that CROMWELL has the "look and sound" of a surname.

The main question was whether CROMWELL has any meaning other than as a surname. Applicant (a U.K. company) urged that CROMWELL is a given name, and that the primary significance of "Cromwell" is a reference to Oliver Cromwell, a British historical figure.


Applicant pointed to a website identifying 1,500 persons with the given name “Cromwell," but Examining Attorney Priscilla Milton countered with other websites that state that "Cromwell" is a very rare given name" and is "an uncommon first name for men but a very common last name for both men and women." [Some websites say that the moon is made of blue cheese. So should we believe them? - ed.]. The Board concluded that this infrequent use as a given name does not affect the mark's surname significance.

The main thrust of Applicant's argument, however, was that "Cromwell" is primarily a reference to Oliver Cromwell. It pointed to several websites and to reference book listings for "Cromwell" in support of its argument. The Board observed that Applicant must show that "[t]he name 'Cromwell' [is] so widely recognized as to be 'almost exclusively associated in commercial impression with the historical figure[].'" In other words, it is the present day recognition of the name that is important, not its past historical significance.

The Board contrasted decisions regarding SOUZA (his music remains in the public's mind) and DA VINCI (still nearly exclusively associated with the 15th Century artist), with the MCKINLEY case (a past U.S. President of little current significance).

In view of the foregoing, we find that surname “Cromwell” is more akin to McKinley than Da Vinci. It is unlikely that American consumers would regard CROMWELL in connection with protective headgear, etc. as an arbitrary use of the name Oliver Cromwell, rather than merely a surname of any individual identified by that name. Accordingly, the evidence of “Cromwell” as a surname is greater than the evidence that “Cromwell” has any other significance.

And so the Board affirmed the refusal.

TTABlog comment: The SOUZA case involved fireworks and firework display services, a fact that increased the likelihood that the mark would bring to mind the name of the composer. Are there any goods you can think of that would, when branded CROMWELL, increase the likelihood that the Englishman would be brought to mind? Swords? Cutlery? Tea biscuits? Eccles pudding? Soused pig face?

Text Copyright John L. Welch 2012.

Reminder: Meet the Bloggers VIII - Monday, May 7th, 8PM

The eighth annual "Meet the Bloggers" get-together is scheduled for Monday night, May 7th, from 8-10 pm at Hill Country Barbeque Market, 410 7th Street, N.W., Washington, D.C. Marty Schwimmer, Ron Coleman, Erik Pelton, and Yours Truly will be hosting and signing copies of their respective blogs. If you plan to attend, please R.S.V.P. here.

WYHP? TTAB Denies Section 2(d) Petition to Cancel SCIENTIFIC SOLUTIONS Registration Due To Dissimilarity of Goods

The Board denied this petition to cancel a registration for the mark SCIENTIFIC SOLUTIONS & Design for dietary and nutritional supplements [SCIENTIFIC SOLUTIONS disclaimed], finding the mark not likely to cause confusion with the identical mark registered for "Computer hardware and software for use in the fields of industrial automation and scientific and engineering data acquisition, control and analysis and for controlling, monitoring and emulating scientific and engineering instruments and instrumentation systems, and for performing instrumentation functions, and instruction manuals sold therewith." Petitioner claimed actual confusion, but the Board pooh-poohed the evidence thereof. Respondent did not take testimony, submit any evidence, or file a brief. [The old rope-a-dope approach]. Would You Have Petitioned? Scientific Solutions, Inc. v. Scientific Solutions, LLC, Cancellation No. 92051031 (March 30, 2012) [not precedential].


Not surprisingly, the Board found the marks to be very similar in sound, appearance, meaning and commercial impression, since the literal portions of the marks are identical. Respondent's disclaimer of the two words has no bearing on the likelihood-of confusion analysis.

However, to prove likely confusion, Petitioner must establish some viable relationship between the goods "such that they would be encountered by the same persons under circumstances that could, because of the similarity of the marks used thereon, give rise to the mistaken belief that they emanate from or are associated with the same source."

The goods appear wholly unrelated on their respective faces, and Petitioner failed to show or explain how they are commercially related. Respondent's goods would be sold in drug stores and groceries, where computer hardware and software are not customarily found.

Petitioner pointed out, however, that both parties market via the Internet. Not good enough, said the Board. "[T]he mere fact that goods and services may both be advertised and offered through the Internet is not a sufficient basis to find that they are sold through the same channels of trade." Parfums de Coeur Ltd. v. Lazarus, 83 USPQ2d 1012, 1021 (TTAB 2007).

The involved goods would be sold to different classes of consumers, the Board observed, and even though the purchasers of Petitioner's highly technical goods [rocket scientists, engineers, and the like] may also be purchasers of Respondent's goods, "the likelihood for any kind of confusion as to the source or sponsorship of the parties' goods is de minimis."

Finally, Petitioner contended that actual confusion has already occurred: it received four misdirected phone calls over a two-year period, each inquiring about vitamins or male enhancement pills. The Board, however, found the evidence of no probative value. Although the callers were confused, the nature of that confusion was entirely unclear from the testimony.

Indeed, petitioner has offered no testimony as to what caused these individuals to contact petitioner instead of respondent. There could be any number of reasons for the mistake other than confusion as to source for respondent’s and petitioner’s goods. They may have mistaken one mark for the other, which would account for their misdirected calls, but there is no indication that mistake occurred because of any belief that respondent’s nutritional supplements came from the same source as petitioner’s computer goods. In fact, it is not even clear that the callers were aware of petitioner’s goods.

The Board concluded that, because the goods are so "fundamentally dissimilar," a likelihood of confusion does not exist.

TTABlog comment: So what would be a probative telephone call? "Hello? I just wanted you to know that your male enhancement pill was a dud. You can be sure I'll never buy your software!"

Text Copyright John L. Welch 2012.

WYHA? TTAB Affirms 2(d) and Specimen Refusals of SONEX for Aircraft Engines

The Board affirmed two Section 2(d) refusals of SONEX for internal combustion engines for manned and unmanned aerial vehicles, in view of the identical mark registered for "aircraft, and aircraft kits comprised of aircraft parts and plans to build complete aircraft." The Board also affirmed the PTO's refusal of Applicant's specimens of use, comprising an invoice and a press release. After you read the decision, ask yourself, "Would You Have Appealed?" In re Sonex Research, Inc., Serial Nos. 77435929 and 77979007 (April 6, 2012) [not precedential].



Likelihood of Confusion: Of course, when the marks are identical, a lesser degree of similarity between the involved goods is necessary to support a likelihood of confusion finding. Applicant argued that, as everyone knows, aircraft engines and aircraft are manufactured by different sources. Although that may be true, the Board observed, the cited registrations covers aircraft kits as well as aircraft.

There are no limitations to the goods in the application and cited registration, and so it is presumed that they move in all normal channels for the respective goods. Since an engine may be part of an aircraft kit, the Board assumed that the products move in the same channels of trade to the same classes of consumers. Applicant argued, without evidence, that the customers for these products will exercise a high degree of care. Even so, the Board noted, "even careful consumers are not immune to trademark confusion." [Compare yesterday's COSMETIC WORLD decision - ed.]

Weighing all the duPont factors, the Board found confusion likely, and it affirmed the Section 2(d) refusal.

Specimens: Examining Attorney Julie A. Watson rejected the specimens in one of the two applications, namely, the one for engines for unmanned aircraft. The specimens comprised a press release and an invoice. Although press releases and invoices are generally not acceptable specimens of trademark use, Applicant argued that Rule 2.56(b)(1) applied, and that the PTO should accept these specimens because "it is impracticable to place the mark on the goods, packaging for the goods, or displays associated with the goods." Moreover, Applicant's customers may not want the source of the engine to be traceable.

The Board was not impressed. This was not a case like those involving natural gas, or s, grain sold in bulk, or chemicals transported in tanker cars. And even if customers did not want the mark affixed to the goods, Applicant could have placed the mark on hang-tags or removable stickers.

In any case, even if the specimens could be considered displays closely associated with the goods, they did not show the mark SONEX used to identify internal combustion engines.

And so the Board affirmed this refusal as well.

TTABlog comment: Well? Would you have?

Text Copyright John L. Welch 2012.

Test Your TTAB Judge-Ability: Is Confusion Likely Between COSMETIC WORLD for Industry Newsletter and for Retail Store Services?

Applicant Ledes Group sought to register the mark COSMETIC WORLD for a "newsletter about the cosmetic and beauty industry, and directed solely to those who work or operate in those industries." The PTO found the mark confusingly similar to the identical mark registered for "retail store services in the field of perfumery, cosmetic products, beauty products and hair products." Remembering that when the involved marks are identical, a lesser degree of similarity between the goods/services is required to support a Section 2(d) refusal, how would you rule on the appeal? In re The Ledes Group Inc., Serial No. 85002861 (April 18, 2012) [not precedential]


Applicant won an initial skirmish over certain evidence that it filed with its brief on appeal. The Board agreed with Applicant that it could submit certain newsletters belatedly in order to provide "context" for purported "newsletters" that the Examining Attorney had relied on.

As to the relatedness of the involved goods and services, the Examining Attorney pointed to three third-party registrations that cover retail store, mail order, door-to-door, and home party cosmetic services, and brochures, pamphlets, and catalogs for cosmetics. The Board observed, however, that those types of materials "bear little resemblance" to Applicant's industry-targeted newsletters, since they are not intended for members of the general public. The Board therefore found that the channels of trade do not overlap.


Applicant urged that its customers are sophisticated, and would not be confused. The Board agreed. Applicant's customers would be smarter that the average consumer and would not be confused by advertisements "blasted from a national retail firm" or by written materials handed out at a home party or via door-to-door sales.

The Board deemed this sophistication factor to be "critical" in its finding that confusion is not likely.

TTABlog comment: I wonder whether everyone in the cosmetics industry is that sophisticated? I mean, when I wander through the Prudential Mall and glance into the big cosmetics store, I don't see many rocket scientists, you know what I mean?

Text Copyright John L. Welch 2012.

TTAB Affirms Section 2(e)(2) Geographical Descriptiveness Refusal of PITTSBURGH GLASS WORKS for Glass

The Board affirmed the PTO's Section 2(e)(2) refusal of the mark PITTSBURGH GLASS WORKS, finding it to be primarily geographically descriptive of "glass and laminate windshield and windows for vehicles excluding aircraft." Applicant PGW argued that only 8.9% of its goods are produced in Pittsburgh, PA, but cited no authority to support its position that a Section 2(e)(2) refusal is improper if only a portion of the goods originate in the named location. In re Pittsburgh Glass Works, LLC, No. 77484850 (April 11, 2012) [not precedential].


The Board began by finding that Pittsburgh is a place generally known to the American public. There was nothing in the record to suggest that Pittsburgh is either obscure or remote. The words GLASS WORKS are highly descriptive of Applicant's goods, and the presence of these words does not serve to detract from the primary significance of the mark as a whole under Section 2(e)(2).

PGW introduced evidence that Pittsburgh is the most misspelled city in the country [I would have guessed Cinncinnatti Cincinatti Cincy - ed.], and it pointed to other municipalities named Pittsburgh (e.g., North Dakota), but without any supporting evidence as to their size or significance.

Thus as to the first prong of the Section 2(e)(2) test, the Board found that the primary significance of the applied-for mark is a well-known geographic place, namely, Pittsburgh, PA.

The second prong asks whether purchasers would make a goods/place association. PGW acknowledged that its headquarters are in Pittsburgh. Furthermore, three of its manufacturing facilities are located within 100 miles of Pittsburgh. Based on the totality of the evidence, the Board found that "at least some of applicant's goods" originate in Pittsburgh. Therefore, the Board may presume that purchasers would make a goods/place association with that city. Moreover, Applicant chose the name PITTSBURGH GLASS WORKS to associate itself with the city, which has been known as "the center of glassmaking," reinforcing the goods/place association.

PGW did not present sufficient evidence to rebut the presumption of a goods/place association. It argued that only 8.9% of its goods come from Pittsburgh but, as noted above, it provided no authority to show that this fact serves to avoid the Section 2(e)(2) bar.

As to the other towns named Pittsburgh, there was no evidence that they are anything other than remote and obscure. As to the misspelling of Pittsburgh, PGW provided no evidence to show that this makes any difference here. Nor was there evidence that consumers, although informed as to which facility produced the goods, will not associate Pittsburgh with the goods.

The Board therefore affirmed the refusal to register.

TTABlog comment: Pittsburgh - first in glass, first in steel, last in the National League.

Text Copyright John L. Welch 2012.

Section 2(f) Evidence for Backpack Design Falls Short, Says TTAB

The Board sent Applicant CellCorp packing by affirming a refusal to register the product configuration shown below, for "backpacks," finding that CellCorp had failed to prove acquired distinctiveness under Section 2(f). The mark comprised the backpack, water bottle, and flashlight, and three mesh pockets. In re CellCorp USA, LLC, Serial No. 77860793 (March 28, 2012) [not precedential].


Of course, under Wal-Mart, a product design cannot be inherently distinctive, and is registrable only upon a showing of acquired distinctiveness. The 2(f) burden is a heavy one for a product configuration.

Examining Attorney W. Wendy Jun maintained that the applied-for mark is made up of common elements found in many backpacks and is not a unique design. Moreover, she contended that CellCorp's sales and advertising figures fail to show any degree of consumer recognition. She pooh-poohed its customer declarations as being directed to the marketing concept of a combination backpack, water bottle, and flashlight, rather than the trademark significance of the configuration. And she discounted three retail buyer declarations because the declarants had "superior knowledge" about the goods.

CellCorp's evidence showed that it sold more than 4 million backpacks for some $41 million since 2002, it spends about $50,000 per year on advertising, and its goods appear in major "big box" stores. Three declarations from retail store buyers and 38 consumer declarations identified applicant as the source of the backpacks.

The Board, however, found this evidence unconvincing. CellCorp's use of the configuration since 2002 is not "conclusive or persuasive considering the nature of the subject matter sought to be registered, regardless of the consumer declarations." The sales in units and dollars indicates commercial success, but not recognition of the configuration as a trademark. Moreover, there was no evidence putting the sales figures in context with those of other backpack manufacturers. And there was no "look-for" advertising pointing out that the combination of elements is exclusively associated with CellCorp.

In fact, the advertisements submitted by CellCorp undercut the consumer declarations, which refer to the advertising, yet the advertising merely displays the configuration as the product being sold, with no reference to its trademark significance. These form declarations do not explain what the declarants understand the trademark to be, or how they concluded that the combination of elements forms a trademark. "In other words, the declarants did not state their own knowledge; rather, they simply concurred in the conclusion to which they were [led] by applicant."


The buyer declarations were more probative, since buyers presumably have experience in identifying a product configuration that functions as a trademark. However, the buyers did not explain how they reached the conclusion that Applicant's product configuration functions as a trademark. "[L]ike the customer declarations, we find that the buyers concurred in the conclusion to which they were [led] by applicant."

Finally the Board noted the lack of media recognition of the purported trademark, as well as the lack of evidence of an industry practice that regards product configurations as trademarks.

And so the Board affirmed the refusal to register on the ground of lack of acquired distinctiveness.

TTABlog comment: Boy, is it difficult to get a product configuration mark past the Board, or what? How many product designs can you think of that passed Board muster in recent years? The Baldwin keyhead. The Cartier watch. The "James Bond" handgun. Any others?

Text Copyright John L. Welch.

Divided CAFC Panel Affirms TTAB's Becton, Dickinson Functionality Ruling

A divided panel of the U.S Court of Appeals for the Federal Circuit affirmed the TTAB's decision (TTABlogged here) refusing registration, on the ground of functionality, of the product configuration shown below for a closure cap for blood collection tubes. The majority ruled that the Board had not committed legal error by weighing the functional and non-functional features of the design against each other in order to determine whether the design is de jure functional. The dissent maintained that this "weighing" of the individual elements was improper because under Section 2(e)(5) of the Lanham Act the design must be considered "as a whole," and further that the Board's factual findings were not supported by substantial evidence. In re Becton, Dickinson and Company, 102 USPQ2d 1372 (Fed. Cir. 2012) [precedential].


In its decision, the Board gave less weight to less prominent features of the design, such as the precise spacing or shape of the ribs, because it found them to be incidental and barely discernable when the mark is viewed. BD challenged two aspects of the Board's functionality ruling: the Board's determination that certain admittedly non-functional features of the mark did not remove the mark from the functionality ban, and that the Board's Morton-Norwich analysis was not supported by substantial evidence. The first issue was a question of law, while the second was a question of fact, reviewable under a more deferential standard.

As to the first issue, the panel majority observed that "one aspect of the Morton-Norwich inquiry is to weigh the elements of a mark against one another to develop an understanding of whether the mark as a whole is essentially functional and thus non-registrable."

[T]he Board committed no legal error by weighing the functional and non-functional features of BD’s mark against each other. Our functionality precedent indeed mandates that the Board conduct such an assessment as part of its determination of whether a mark in its entirety is overall de jure functional. As the court explained in Morton-Norwich, “we must strike a balance between the ‘right to copy’ and the right to protect one’s method of trade identification.” 621 F.2d at 1340.

The majority then considered the Board's factual findings under Morton-Norwich. It found that the Board did not err in relying on statements in B-D's patent specification (not the claims) as support for finding that at least two elements of the design were functional (the circular opening in the top allows for a needle to puncture the cap and the ribs on the side provide a gripping surface). BD's design patents might have provided some support for non-functionality, but the patented designs were not identical to the applied-for mark.

Substantial evidence also supported the Board's finding that BD's advertising touted the utilitarian advantages of the design. Since BD's utility patent coupled with its advertising established functionality, there was no need for the Board consider alternative designs. Nonetheless, the Board did consider and dismiss two proffered alternative designs, a finding that was supported by substantial evidence. As to the fourth factor, the relative cost of manufacture, the evidence was scant and the Board did not err in refusing to weigh this factor.

The panel majority thus concluded that the Board committed no legal error, and that its factual findings were supported by substantial evidence.

Judge Linn dissented. He observed that in Morton-Norwich, the CCPA reversed a finding that a spray bottle design [shown below] was de jure functional due to a lack of evidence that the shape of the bottle and the spray top were dictated by function. The evidence showed that each feature could take on a number of diverse forms.


Judge Linn found the facts here to be very much like those in Morton-Norwich, and he asserted that the Board and the majority overlooked the arbitrary nature of BD'S overall design:

There is no evidence that: (1) the hole in the top must be that particular shape and size for a needle to pass through the opening; (2) the side of the cap must possess horizontally spaced ribs in the precise shape, size, and spacing depicted in BD’s design to provide for increased grip; or (3) the bottom lip must be flanged and tapered in the precise manner depicted to avoid being unsafe.

As to the Board's Morton-Norwich analysis, Judge Linn pointed out that the claims of B-D's patent do not cover the appearance or pattern of the ridges, the flanged lip, or the top opening of the applied-for design. Although BD's advertising does lend support to a finding of functionality, the advertising also supports a finding of non-functionality because it indicates the existence of alternative designs (since the designs shown were not identical to the applied-for mark).


The Board and the majority, according to Judge Linn, "discounted the most probative evidence submitted in this case - the design patents and evidence of alternative designs." The existence of three distinct design patents shows that the shape of the container may be varied and still perform the same function. The two third-party alternative designs were wrongly discarded. And BD's evidence that its design did not result from a cheaper method of manufacture, even if scant, should have been considered.

Thus Judge Linn concluded that the Board committed legal error in failing to analyze the design as a whole, and further that its factual findings were not supported by substantial evidence.


TTABlog comment: It seems to me that nearly every product has some features or elements that are not dictated by function, i.e., that are not de jure functional. The question is where to draw the line for purposes of Section 2(e)(5): how significant must these non-functional features or elements be to avoid the verdict that the design is functional "as a whole?"

Of course, if a design clears the functionality hurdle, it must still clear the acquired distinctiveness hurdle. Will that second hurdle be higher if the non-functionality conclusion is based on relatively minor features? Will look-for advertising have to focus on those particular non-functional features in order to be effective proof? Or, as a practical matter, will large sales and advertising figures carry the applicant over the 2(f) hurdle?

Text Copyright John L. Welch 2012.

Former TTAB Nemesis Leo Stoller Pleads Guilty to Bankruptcy Fraud

I take little joy in reporting that Leo Stoller pleaded guilty today to one count of bankruptcy fraud in federal court in Chicago. (See pdf). The count concerned a perjurious statement regarding Stoller's assets. A sentencing hearing is set for July 5, 2012. Mr. Stoller, in his heyday, provided many headaches to his adversaries and considerable material for this blog. He served as inspiration for two of the songs in the TTABlog songbook: "Stealth" and "Where Has Leo Stoller Gone?"

INTA Meeting Reading: The Trademark Reporter's Annual Review of International Trademark Law

The Trademark Reporter has published its Annual Review of International Trademark Law: "The Nineteenth Yearly Review of International Trademark Jurisprudence." (pdf here). How better to prepare for the upcoming INTA Annual Meeting? [You might want to read it in digital form, since it is more than 800 pages long.] [Email subscribers will have to surf to the blog to download a copy].


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 2 (March-April 2012).

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

Some say that one may predict the outcome of a Section 2(d) case just by looking at the marks and the goods or services involved. Well, let's put that theory to the test with the four Section 2(d) appeals set out below. How do you think the appeals came out?


In re Dayton Power and Light Company, Serial Nos. 77445394 and 77445395 (March 14, 2012) [not precedential]. [Refusal to register GREEN CONNECT in standard character and design form for "promoting consumer awareness in the field of renewable energy and promoting consumer use of renewable energy sources through incentive programs where customers can purchase renewable energy certificate-based services," in view of the mark GREEN CONNECTED in standard character and design form for "promoting the goods and services of others who engage in and promote environmentally sound practices in the fields of environmentally sound practices and environmentally sound lifestyles, residential and commercial renovation, construction and repair, storage, packaging, transportation, and logistics by means of providing a website with hypertext links to the web sites of others” and for “computer services, namely, search engine services for users seeking information about goods and services of others that engage in and promote environmentally sound practices and environmentally sound lifestyles"].


In re Ameristar Fence Products, Inc., Serial Nos. 77955361 and 77955366 (March 19, 2012) [not precedential]. [Refusal of the mark 440 in standard character and stylized form for “metal fences and gates and structural component parts thereof for ranching use” in light of the the registered mark 440-XH for "steel in the form of metal powder and compacted metal powder and wrought products, namely wire, rod, bar, strip, billet, and other shapes"].

In re Nissan North America, Inc., Serial Nos. 77865978 and 77866625 (March 30, 2012) [not precedential]. [Refusals of ONE-TO-ONE SERVICE, in standard character and design form, for “customer relationship management services in the field of vehicle maintenance and repair offered exclusively to applicant’s authorized vehicle dealerships,” in view of ONE-TO-ONE SERVICE.COM in standard and design form for "online business services, namely, tracking, managing and cataloging customer service inquiries from web-site visitors and customers, and providing online responses thereto; and, conducting and analyzing the results of customer surveys"].


In re Steamboat Springs Chamber-Resort Association, Inc., Serial No. 77939915 (March 31, 2002) [not precedential]. [Refusal of BIKE TOWN USA for "organizing athletic competitions, namely, bicycle races" [BIKE and USA disclaimed] over BIKETOWN for "Promoting the interests of consumers involved in lifestyle enhancement and improved health through the distribution of printed material; promoting public awareness of the need for improved health and lifestyle enhancement; promoting the goods and services of others by arranging for sponsors to affiliate their goods and services with promotional contests"].


TTABlog hint: All four cases came out the same way.

Text Copyright John L. Welch 2012.

Precedential No. 19: TTAB Finds Actual Confusion and Bad Faith, Sustains SUPER CHIRO TEA Opposition

The one-two punch of actual confusion and bad faith knocked out Glenn Lichter's application to register the mark SUPER CHIRO TEA for "herbal teas for medicinal purposes" [TEA disclaimed]. The Board found the mark likely to cause confusion with the registered mark CHIRO-KLENZ for "herbal teas for medicinal purposes; nutritional supplements for eliminating toxins from the body." Edom Laboratories, Inc. v. Glenn Lichter, 102 USPQ2d 1546 (TTAB 2012) [precedential].


Applicant Lichter appearing pro se feebly argued that Opposer's mark CHIRO-KLENZ is weak because "the product is sold to chiropractors and is for the purpose of cleansing." The Board, however, found the mark to be, at worst, suggestive. A list of third-party registrations submitted by Lichter was non-probative, and two third-party website pages were inadmissible.

The goods are, in part, identical, and to that extent they are presumed to travel to the same, normal classes of consumers through the same, normal channels of trade.

As to the marks, because the goods partly identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. The Board found the dominant portion of Applicant's mark to be CHIRO, since SUPER is laudatory and TEA is generic. As to Registrant's mark, the first part of the mark "is most likely to be impressed upon the mind of a purchaser and remembered." Despite the obvious differences in the marks, the Board found that their similarities outweigh their differences."[C]onsumers may believe that SUPER CHIRO TEA and CHIRO-KLENZ are different varieties of the CHIRO line of tea."

Applicant Lichter failed to show that purchasers of the products are sophisticated; the low price of the goods "suggests that purchases are made by ordinary consumers who exercise no more than ordinary care in making their purchasing decisions."

Actual Confusion: The Board gave some probative value to 10 or 15 telephone calls received by Opposer, in which the callers either asked for SUPER CHIRO TEA or inquired as to Opposer's relationship to SUPER CHIRO TEA. This evidence was not inadmissible hearsay because it was not offered for the truth of what the caller said, but only as to the fact that the statements were made by the callers. However, the evidence was of only "minimal probative value" because there was no testimony from the callers themselves as to whether and why they were confused.

Additional testimony (by way of declaration) of actual confusion, by two persons who were confused, was more probative. In searching for CHIRO-KLENZ tea, each thought that SUPER CHIRO TEA was made by Opposer.

Bad Faith: Once again invoking the 13th duPont factor, the Board considered Lichter's bad faith in adopting the mark SUPER CHIRO TEA. It agreed with Opposer that Applicant took "affirmative steps to cause confusion and to associate SUPER CHIRO TEA with CHIRO-KLENZ tea." For example, Lichter included the tag line "FROM THE ORIGINAL MAKERS OF CHIRO-KLENZ" on his packaging [The parties had a past relationship]. Lichter also owns the domain name www.chiroklenzforless.com, which redirects to his website. And he used testimonials for CHIRO-KLENZ to promote his own product.

The "overwhelming" evidence showed that Applicant Lichter had a bad faith intent to cause, and profit from, consumer confusion.

And so the Board sustained the opposition.

TTABlog comment: Another case resolved through the Board's ACR procedure. Have you tried it?

Text Copyright John L. Welch 2012.

Test Your TTAB Judge-Ability on this Service Mark Specimen of Use

Applicant sought to register the mark HEROES UNDER GOD & Design, shown to the right, for "retail store services featuring novelty items, namely, hats, magnets and key chains." Its specimen of use is found below; the mark is shown in a clear plastic picture frame on a shelf with various items. The Examining Attorney refused registration, maintaining that, although the applied-for-mark functions as a mark, it does not appear as a source indicator for the recited services. The Board rendered a split decision.How would you rule on Applicant's appeal? In re International Christian Broadcasting, Inc., Serial No. 85058128 (March 29, 2012) [not precedential].


Click on photo for larger specimen.
The Examining Attorney contended that the specimen shows the mark being used on point-of-sale materials - i.e., as a trademark for the adjacent goods. She asserted that "the specimens all seem to show that some third party is providing such space, and that applicant is merely using that space to offer its goods." The panel majority, however, found no proof for the assertion regarding ownership of the space, and Applicant denied the assertion in its brief.

In any case, the majority noted, there was no legal support for the position that "if the owner of the mark does not itself own the space in which it sells goods, it cannot per se be owner of a mark for retail store services." Moreover, a term can function as a mark for retail store services even if it identifies only a section of a store.

Just because the framed display would be an appropriate trademark specimen does not mean that it cannot be an appropriate service mark specimen. The question is how the mark would be perceived by consumers. Here, the panel majority found that consumers viewing the mark as show in the specimen "could well understand it to identify the section of a retail store dedicated to U.S. troops." In fact, some of the goods shown in the specimen of use bear their own trademarks.

To the extent there was any uncertainty as to the acceptability of the specimen, the Board gave applicant the benefit of the doubt.

Judge Kuczma dissented. She observed that the framed images of the mark "could appear to be actual products that are available for sale, or they could appear as displays that advertise the sale of adjacent products."

Judge Kuczma noted that the framed image of the mark does not include any reference to retail store services. "[W]e are clearly missing the 'link' between the mark as used in the specimens and retail store services."

To create an association between a mark and retail store services requires something more than the mere presence of a framed image of a mark just sitting on a retail store shelf. This is particularly so when the framed image of the mark is juxtaposed to products bearing the same mark.

TTABlog comment: Well, what do you think? I side with the dissent.

Text Copyright John L. Welch 2012.

Precedential No. 18: Invoking 13th duPont Factor, TTAB Reverses 2(d) Refusal of ANYWEAR for Footwear

Although the applied for mark ANYWEAR (Stylized) [below left] for footwear would usually be considered confusingly similar to the cited mark ANYWEAR BY JOSIE NATORI & Design [below right] for "jackets, shirts, pants, stretch t-tops, and stoles," this was not the usual case. Applicant already owned a registration for the plural ANYWEARS in standard character form, for footwear, which registration had coexisted with the cited registration for more than five years. In this "unique situation," the Board found confusion unlikely. In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012) [precedential].


There was no question that the two marks at issue are similar, since each is dominated by the word ANYWEAR. Third-party registrations and Internet evidence showed that the goods are related. The Board "would conclude, under usual circumstances, that confusion is likely to occur among consumers in the marketplace." But this is an "unusual situation."

We must balance the similarities between the marks and goods against the facts that applicant already owns a registration for a substantially similar mark for the identical goods, and that applicant’s registration and the cited registration have coexisted for over five years.

Under the thirteenth duPont factor, the Board may consider "any other established fact probative of the effect of use." This factor "accommodates the need for flexibility in assessing each unique set of facts."

Because Applicant registered its mark ANYWEARS in standard character form, the registration covers the mark regardless of font size, style or color, including the identical style depicted in its applied-for mark (above). Consequently "there is no meaningful difference between the standard character and stylized versions of applicant's marks." Moreover, the difference between the singular and the plural forms of ANYWEAR is not meaningful, since consumers are not likely to perceive the slight difference between them.

Applicant's registered mark, covering footwear, has co-existed with the cited mark for more than five years and is no longer vulnerable to attack via a claim of priority and likelihood of confusion.

The Board found that these facts tip the balance in favor of Applicant.

The Board noted that it was not applying the (seldom helpful) Morehouse defense, an equitable affirmative defense that may be asserted in an inter partes proceeding. [Under Morehouse, a defendant may claim that, because of its ownership of a registration for the same or substantially identical mark for the same or substantially identical goods/services, plaintiff cannot be damaged by registration of the challenged mark].

And so the Board reversed the refusal to register.

TTABlog comment: Can you think of a situation where the addition of an "S" to a mark does make a material difference? How about adding an "S" to the mark DUMBAS?

Text Copyright John L. Welch 2012.

TTABlogger in Person and in Print at INTA 2012 Annual Meeting

Yours truly will be presenting this year's annual review of TTAB cases at the INTA annual meeting in Washington, D.C., on Wednesday, May 8th. INTA has kindly allowed me to post my outline/paper in .pdf form (here), imaginatively entitled "Decisions of the Trademark Trial and Appeal Board and the Federal Circuit on Registrability Issues: 2011 - 2012." Other meeting materials may be found at the attendee portal at the INTA website (here).


TTABlog Notes: Email subscribers will have to surf to the blog to download the paper. By the way, what's that orange ball with blue text that Lady Justice is holding?

Test Your TTAB Judge-Ability: Is INVISIBLE for Hair Care Preparations Confusable with INVISIBLE for Cosmetics?

The PTO refused registration of INVISIBLE for hair care preparations, finding it likely to cause confusion with the identical mark, registered for cosmetics. Third-party registrations and Internet use evidence showed INVISIBLE to be a weak mark for cosmetics. On the other hand, even weak marks are entitled to protection. So how would you rule? In re Continental Fragrances, Ltd., Serial No. 77677661 (March 8, 2002) [not precedential].


The Examining Attorney submitted six third-party registrations, owned by three different entities, that covered both hair care preparations and cosmetics. Two website pages offered both types of products. Applicant argued that the number of registrations and websites was too few to be probative, and further that the websites involved retailers offering a wide variety of goods [i.e., the department store argument - ed.].

The Board, however, found the PTO's evidence sufficient to establish that the goods are related for Section 2(d) purposes. The registrations, though few, "clearly list both applicant's and registrant's goods." The websites listed product categories in only limited fields.

Turning to the marks, in both cases "invisible" has an obvious suggestive meaning. However, six third-party registrations for marks containing the word INVISIBLE for cosmetics, and seven website pages using the term "invisible" for cosmetics, rendered the cited mark weak. It is therefore not entitled to a broad scope of protection.

Applicant feebly argued that the trade channels for the goods are different because, although the goods are admittedly sold in the same stores, they are found in different areas of a store. However, it offered no proof in support of that assertion. The Board observed that the involved goods are personal care products used by a consumer on a daily basis. A consumer is likely to buy both types of products and to be exposed to the trademarks of each.

Balancing all the duPont factors, the Board found confusion likely and it affirmed the refusal to register.

TTABlog comment: If your cosmetics are going to be invisible, why wear them?

Text Copyright John L. Welch 2012.

Double WYHA? CAFC Affirms TTAB: "NATIONAL CHAMBER" Merely Descriptive of Chamber of Commerce Services

In a precedential ruling, the CAFC upheld the TTAB's affirmance of two refusals to register NATIONAL CHAMBER, finding the mark merely descriptive of certain chamber of commerce-related services. [TTAB decision here]. Would you have appealed to the CAFC? Would you have appealed to the Board in the first instance? In re The Chamber of Commerce of the United States of America, 102 USPQ2d 1217 (Fed. Cir. 2012) [precedential].


The Board relied on dictionary definitions and Applicant COC's own website in concluding that:

[i]t takes no mental leap to understand that applicant is using the mark for the services in both applications as a national chamber of commerce, whether promoting the interests of businesspersons or industry on a national level, or connecting local chambers of commerce through a nationwide network.

The TTAB's determination of mere descriptiveness is a factual finding reviewed by the CAFC for substantial evidence. The court concluded that substantial evidence supported the Board's finding under Section 2(e)(1).

The CAFC found that NATIONAL CHAMBER immediately conveys information about a feature or characteristic of at least one of the services designated by COC in each of its two applications. As to one application, NATIONAL CHAMBER is descriptive of "[p]roviding online directory information services featuring information regarding local and state Chambers of Commerce." In the other, NATIONAL CHAMBER describes the "expressly-recited function" of various services listed in the application, such as policy analysis and data analysis, performed "for the purposes of promoting the interests of businessmen and businesswomen."

And so the court affirmed the Board's decision.

TTABlog comment: I think this may be the first double WYHA? in the seven-and-one-half year history of the TTABlog. Actually, there were two refusal that were affirmed twice, so is this really a quadruple WYHA? The mind boggles.

Text Copyright John L. Welch 2012.

Test Your TTAB Judge-Ability: Is TEMPEST for Perfume Confusingly Similar to TEMPEST for Indoor Tanning Preparations?

The PTO refused registration of the mark TEMPEST for "perfumery, namely, perfume, perfumed soaps, eau de toilette, perfumed body wash, and perfumed shower gel," on the ground of likely confusion with the identical mark registered for "indoor tanning preparations." Are the goods close enough to support the refusal? Did Applicant weather the storm? How would you rule? In re Coty US LLC, Serial No. 77631330 (March 29, 2012) [not precedential].


Applicant Coty argued that its goods are distinctly different from the "very narrow set of goods" of the cited registration. The examining attorney, relying on third-party registration evidence, contended that the goods are similar because they both “fall under the category of cosmetics” and involve potentially overlapping clients or markets.

On close inspection, the Board found that the third-party registrations "cover goods that are distinctly different from (or not sufficiently clear that they are the same as) those at issue in this case."

For example, none of the identifications in the third-party registrations contains the clear limitation present in applicant’s identification of “indoor” tanning preparations or even “tanning preparations” generally. A number mention “sun tanning preparations,” but the identification in the cited registration is clearly not intended to included “preparations” for “tanning” in the “sun.” Moreover, there is no evidence in the record that otherwise establishes that “indoor tanning preparations” are a similar category of goods to those identified in the application or that they involve similar classes of consumers or channels of trade.

Moreover, the examining attorney conceded that the “indoor tanning preparations” of the cited registration are directed toward sophisticated professionals. [Do the "sophisticated professionals" who work at tanning salons not also buy perfumed products? - ed.].

The Board found confusion unlikely, and so it reversed the refusal:

While the marks are legally identical, the examining attorney has not carried his burden of showing a viable relationship between applicant’s identified goods and the goods in the cited registration, or that they would travel in the same or similar channels of trade. We further find that the consumers of registrant’s goods are likely to be sophisticated professionals. We therefore conclude that confusion is not likely.

Text Copyright John L. Welch 2012.

TTAB Posts April 2012 Hearing Schedule

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


April 10, 2012 - 10 AM: Virgin Enterprises Limited v. Steven E. Moore, Opposition No. 91192733 [Sections 2(d) and 43(c) (blurring) opposition to VIRGINFARMS & Design for "agricultural grains for planting; agricultural seeds; bulbs for agricultural purposes; plantable seed paper comprised primarily of seeds for agricultural purposes; seeds for agricultural purposes; spores and spawn; unprocessed seeds for agricultural use" [VIRGINFARMS disclaimed] in view of the allegedly famous mark VIRGIN for various goods and services].


April 12, 2012 - 10 AM: In re Wet Technologies, Inc. , Serial No. 77135323 [Refusal to register the mark shown immediately below absent a disclaimer of WET TECHNOLOGIES, for "particle blast cleaning machines; machine tools for water blasting, descaling, derusting, wet lapping, wet peening, slurry processing, and deburring; wet etching machines; Rust removal; Water blasting services; particle blasting services; metal finishing; wet peening; slurry processing; wet etching of metals; wet lapping; processing of metals, namely, mechanical descaling"].


April 17, 2012 - 10 AM: In re Adams Mfg. Corp., Serial No. 85025503 [Refusal to register the product configuration shown below for "plastic suction cups, not for medical purposes," on the grounds of functionality and, alternatively, lack of acquired distinctiveness].


April 17, 2012 - 11 AM: Natron Corporation v. Hewlett-Packard Development Company, LP, Cancellation No. 92050789 [Section 2(d) opposition to TOUCH SMART for "personal computers, computer hardware, computer monitors, computer display screens" on the ground of likelihood of confusion with the registered mark SMART TOUCH for “electronic proximity sensors and switching devices"].


April 19, 2012 - 11 AM: In re Primerica, Inc., Serial No. 77931208 [Section 2(d) refusal to register PRIMERICA DEBTWATCHERS for "providing temporary use of a Web-based software application, marketed exclusively through the proprietary's sales force of independent contractor sales representatives and accessible only through proprietary's company-branded website, for assimilating financial information, namely, financial data provided directly by the customer and financial data obtained directly from the customer's consumer credit report, to permit the customer to formulate and calculate debt payoff plans" in view of the registered mark DEBTWATCHERS & Design for advice and counseling services for eliminating and reducing personal debt].


April 25, 2012 - 10 AM: Katz Communications Inc. v. Katz Marketing Solutions LC, Opposition No. 91191178 [Section 2(d) opposition to KATZ MARKETING SOLUTIONS & Design for "business marketing consulting services" in view of an alleged family of KATZ marks for marketing-related services].


April 25, 2012 - 2 PM: In re Sadoru Group, Ltd., Serial No. 77941164 [Section 2(e)(1) mere descriptiveness refusal of SADORU (Stylized) for "motorcycle parts and accessories, namely motorcycle seats and ergonomic motorcycle pads for use with seats"].


April 26, 2012 - 2 PM: Mattel. Inc. v. S.W. Fantasies, Inc., Opposition No. 91170977 [Opposition to registration of BARBIE GRIFFIN for adult entertainment services, on the ground of likelihood of confusion and likelihood of dilution (both blurring and tarnishment) of the allegedly famous mark BARBIE for dolls and other goods].



Text Copyright John L. Welch 2012.