TTABlog Quarterly Index: April - June 2012

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Meet The Bloggers VIII --photo by Will Maguire
Section 2(d) - Likelihood of Confusion:

• On Summary Judgment, TTAB Says No "CAN DEW" Due to Confusingly Similarity to "MOUNTAIN DEW" for Soft Drinks
• WYHA? TTAB Finds "FIREBIRD X" For Guitars Confusingly Similar to "FIREBIRD" for Amplifiers
• Test Your TTAB Judge-Ability: Are SOOGLE And GOOGLE Confusingly Similar for Travel Services?
• TTAB Finds LOUISIANA FAST START Not Confusingly Similar to QUICK START For Business Training Services
• Test Your TTAB Judge-Ability: Are NIKEA and IKEA Confusingly Similar for Candy?
• TTAB Finds RLX RALPH LAUREN Not Confusingly Similar to ROLEX for Watches
• Test Your TTAB Judge-Ability: Two "Skateboarder" Design Marks for Clothing
• Test Your TTAB Judge-Ability: Is GREEN DOOR for Sex Club Services Confusingly Similar to THE GREEN DOOR for Restaurant Services?
• Finding Fruit Juice and Coffee/Tea Related, TTAB Affirms 2(d) Refusal of COCO LOCO
• TTAB Finds GAME FACE for Sports Masks Confusingly Similar to GAME FACE for Paint Ball Goggles
• Test Your TTAB Judge-Ability: Are BODY FRUIT and FRUIT OF THE LOOM Confusingly Similar for Clothing?
• AMERICA'S STRONGEST MAN Not Confusingly Similar to WORLD'S STRONGEST MAN, Says TTAB
• Opposer Dodges Fraud Counterclaim, But Purchaser Care and Lack of Actual Confusion Lead to TTAB Dismissal
• Test Your TTAB Judge-Ability on These Five Section 2(d) Appeals
• "VIDEO POD" for Video Projectors Merely Descriptive and Confusingly Similar to "IPOD," Says TTAB
• Test Your TTAB Judge-Ability: Is DA VINCI Confusingly Similar to L'IL DAVINCI and DON DAVINCI for Clothing?
• PRL (Ralph Lauren) Rides Fame of "Polo Player" Design Mark to Victory in Section 2(d) Cancellation
• TTAB Finds Reverse Confusion Between KUTT CALHOUN and Supplementally-Registered CALHOUN for Clothing
• WYHA? TTAB Affirms 2(d) Refusal of AIRIA over AREA, Both for Night Clubs
• Test Your TTAB Judge-Ability: Are NETGARD and NETGATE Confusingly Similar for Security Software?
• WYHP? TTAB Denies Section 2(d) Petition to Cancel SCIENTIFIC SOLUTIONS Registration Due To Dissimilarity of Goods
• WYHA? TTAB Affirms 2(d) and Specimen Refusals of SONEX for Aircraft Engines
• Test Your TTAB Judge-Ability: Is Confusion Likely Between COSMETIC WORLD for Industry Newsletter and for Retail Store Services?
• Test Your TTAB Judge-Ability on these Four Section 2(d) Appeals
• Precedential No. 19: TTAB Finds Actual Confusion and Bad Faith, Sustains SUPER CHIRO TEA Opposition
• Precedential No. 18: Invoking 13th duPont Factor, TTAB Reverses 2(d) Refusal of ANYWEAR for Footwear
• Test Your TTAB Judge-Ability: Is INVISIBLE for Hair Care Preparations Confusable with INVISIBLE for Cosmetics?
• Test Your TTAB Judge-Ability: Is TEMPEST for Perfume Confusingly Similar to TEMPEST for Indoor Tanning Preparations?

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

• Test Your TTAB Judge-Ability on These Four Section 2(e)(1) Mere Descriptiveness Refusals
• WYHA? "THE BIG RIG MATTRESS" Merely Descriptive of Mattresses, Says TTAB
• TTAB Reverses Mere Descriptiveness Refusal of SURF COUTURE for Clothing
• "VIDEO POD" for Video Projectors Merely Descriptive and Confusingly Similar to "IPOD," Says TTAB
• Affirming Disclaimer Requirement, TTAB Finds RESPOSABLE Merely Descriptive of Patient Sensors
• Test Your TTAB Judge-Ability: Is "FANTRIP" Merely Descriptive of Travel Agency Services for Fan-Themed Destinations?

Section 2(e)(2) - Primarily Geographically Descriptive:

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

Section 2(e)(4) - Primarily Merely A Surname::

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

Coleman, Schwimmer, Welch, Chicago, 2007
Section 2(e)(5) - Functionality:

• TTAB Reverses Functionality Refusal of 3M Hand Sanitizer Dispenser, But Affirms Failure-to-Function Refusal

Section 2(f) - Acquired Distinctiveness:

• TTAB Reverses Functionality Refusal of 3M Hand Sanitizer Dispenser, But Affirms Failure-to-Function Refusal
• On CAFC Remand, TTAB Again Finds COACH Has Acquired Distinctiveness for Test-Prep Software
• Finding Coke's "ZERO" Has Acquired Distinctiveness, TTAB Dismisses Opposition
• Section 2(f) Evidence for Backpack Design Falls Short, Says TTAB

Abandonment:

• TTAB Dismisses MODEL AMERICAN Cancellation Petition for Failure to Make Prima Facie Case of Abandonment

Dilution:

• On Summary Judgment, TTAB Says No "CAN DEW" Due to Confusingly Similarity to "MOUNTAIN DEW" for Soft Drinks

Fraud:

• Opposer Dodges Fraud Counterclaim, But Purchaser Care and Lack of Actual Confusion Lead to TTAB Dismissal
• FRAUD-O-METER Version 2.0 Released in Beta

Genericness:

• TTAB Finds "WHO'S WHO ONLINE" Generic for ... Guess What?
• TTAB Dismisses Petition to Cancel BACKRACK for Truck Headache Racks Due to Insufficient Proof of Genericness
• Test Your TTAB Judge-Ability: Is RECYCLED PAPER Generic for Greeting Cards?
• "DOG GAMES" for Pet Toys Clears Genericness and 2(f) Hurdles, Says Divided TTAB Panel

Discovery/Evidence/Procedure:

• Precedential No. 21: TTAB Excludes Opposer's Sole Trial Witness Due To Failure to Previously Identify Her
• Precedential No. 20: TTAB Says Partial Cancellation for Abandonment Governed by Section 14, not Section 18
• Three Motions to Amend Marks: How Would You Rule?

Use in Commerce/Drawing/Specimen of Use:

• Precedential No. 22: TTAB Re-designates Azteca Specimen-of-Use Decision as Precedential
• USPTO Amends Rules Regarding Specimens of Use, Launches Pilot "Deadwood" Project
• On Remand from CAFC, TTAB Affirms Failure-to-Function Refusal of ONE NATION UNDER GOD for Charity Bracelets
• Test Your TTAB Judge-Ability on this Trademark Specimen of Use
• WYHA? TTAB Affirms 2(d) and Specimen Refusals of SONEX for Aircraft Engines
• Test Your TTAB Judge-Ability on this Service Mark Specimen of Use

Meet the Bloggers I, San Diego, 2005Click on photo for larger picture
CAFC Decisions:

• Divided CAFC Panel Affirms TTAB's Becton, Dickinson Functionality Ruling
• Double WYHA? CAFC Affirms TTAB: "NATIONAL CHAMBER" Merely Descriptive of Chamber of Commerce Services

Recommended Reading:

• Recommended Reading: Anne Gilson LaLonde, "You Are Not Going to Believe This! Deception, Misdescription and Materiality in Trademark Law"
• INTA Meeting Reading: The Trademark Reporter's Annual Review of International Trademark Law

Other:

• TTABlog Tweets and Re-Tweets
• TTAB Posts June 2012 Hearing Schedule
• Ted Davis Outline From INTA 2012: Annual Review of U.S. Federal Case Law
• TTABlogger Road Trip: San Francisco IP Law Assn., June 1-3, Healdsburg, CA
• TTABlogger Written Materials for Wednesday's INTA Talk
• USPTO Seeks Nominations for Trademark Public Advisory Committee (TPAC)
• TTAB Posts May 2012 Hearing Schedule
• BARBIE v BARBIE GRIFFIN Final Argument at TTAB
• Former TTAB Nemesis Leo Stoller Pleads Guilty to Bankruptcy Fraud
• Meet the Bloggers VIII at INTA 2012: Have You Signed Up?
• TTABlogger in Person and in Print at INTA 2012 Annual Meeting
• TTAB Posts April 2012 Hearing Schedule

Text Copyright John L. Welch 2012.

On Summary Judgment, TTAB Says No "CAN DEW" Due to Confusingly Similarity to "MOUNTAIN DEW" for Soft Drinks

Pro se applicant Jay Pirincci had a mountain to climb in this opposition to his application for the mark CAN DEW for "Fruit drinks and fruit beverages; Fruit flavored carbonated beverages; Fruit flavored energy drinks; Non-alcoholic malt beverages; Malt beer; all in a can, plastic, or bottle," in class 32. The Board entered summary judgment on Opposer Pepsico's Section 2(d) claim, finding the applied-for mark likely to cause confusion with the famous mark MOUNTAIN DEW for flavored sodas and soft drinks. However, due to disputed material facts, the Board denied Pepsico's summary judgment motion as to Pirincci's class 5 goods ("Nutritional drink mixes for use as a mean replacement in a can plastic or bottle"), and as to Pepsico's dilution-by-blurring claim. Pepsico, Inc. v. Jay Pirincci, Opposition No. 91187023 (June 25, 2012) [not precedential].


Likelihood of confusion: Pepsico introduced a mountain of evidence to establish that MOUNTAIN DEW is an "exceedingly famous mark." The Board observed that there is no excuse for even approaching a famous mark, and that all doubt as to likely confusion will be resolved against the newcomer, "especially where the established mark is one which is famous and applied to an inexpensive product bought by all kinds of people without much care."

In light of the fame of Pepsico's mark, the degree of similarity between the marks necessary to support a finding of likely confusion is decreased. The Board found no genuine dispute as to the issue of the similarity of the marks.

Pirincci's "fruit flavored carbonated beverages" in class 32 are legally identical to Pepsico's goods. As to his class 5 goods, however, Pepsico failed to establish the similarity of the goods. In short, a genuine dispute of material fact existed as to the relatedness of the class 5 goods to Pepsico's products.

There was no genuine dispute that the channels of trade as to the class 32 goods are identical, but there was a genuine dispute regarding the class 5 goods. And consumers would not exercise a great deal of care in purchasing the parties' soft drink products.

Finally, the Board looked to the survey evidence submitted by Pepsico and found that the survey (conducted by Friend-of-the-Blog Hal Poret) "weighs in favor of a finding of likelihood of confusion." Mr. Poret's survey pegged "net confusion" at 47.8%.

We find that Mr. Poret’s survey, which used the “mall intercept” method, surveyed approximately 400 respondents divided into control and test groups, displayed the test and control marks on cards, and asked a series of questions and follow-up questions in a well-accepted format, is admissible and credible. In fact, the survey is quite similar in design and execution to surveys we and federal courts have previously held to be persuasive.

The Board therefore granted Pepsico's summary judgment as to the class 32 goods, on Section 2(d) grounds, but denied the motion as to the class 5 goods.

Dilution: The Board found that, at a minimum, a genuine issue of material fact exists as to "whether applicant's mark will blur the distinctiveness of opposer's marks."

More specifically, genuine disputes exist as to the “extent to which [opposer] is engaging in substantially exclusive use” of its marks, whether applicant “intended to create an association with” opposer’s mark and whether there is “[a]ny actual association” between the parties’ marks.

And so the Board denied the motion as to the dilution issue.

TTABlog comment: The class 5 portion of the case will be interesting, assuming that Pepsico pursues its claims. The opposed application is based on intent to use, and any party claiming dilution-by-blurring in such a situation will have an difficult task to proving that a dimunition in the marketing power of the famous mark will occur. On that note, see Rolex Watch U.S.A., Inc. v. AFP Imaging Corporation, 101 USPQ2d 1188 (TTAB 2011) [precedential] [TTABlogged here].

Text Copyright John L. Welch 2012.

TTAB Reverses Functionality Refusal of 3M Hand Sanitizer Dispenser, But Affirms Failure-to-Function Refusal

Applicant 3M overcame two of three PTO refusals of each of its configuration marks shown below, for "hand-sanitizing antiseptic with moisturizer." The Board reversed the Section 2(e)(5) functionality refusals and the refusals alleging a failure to provide adequate descriptions of the mark. But the Board affirmed the PTO's failure-to-function refusal, deeming 3M's Section 2(f) evidence insufficient. In re 3M Company, Serial Nos. 77701886 and 77701928 (May 10, 2012) [not precedential], reconsideration denied (here), June 21, 2012.


Functionality: The Board looked to the CCPA's Morton-Norwich factors to determine whether the applied-for configuration is de jure functional and therefore unregistrable under Section 2(e)(5). The Examining Attorney focused on the first factor - the existence of a utility patent that discloses the utilitarian advantages of the design - and apparently conceded that the other three factors (boastful advertising, availability of alternative designs, and relative ease of manufacture) favored 3M.

The Board, however, disagreed with the Examining Attorney's interpretation of 3M's utility patents. It did not find that the patents disclose utilitarian advantages of the design.

The particular patent excerpts referenced by the examining attorney in his brief provide a general description of the overall shape of the dispenser’s reservoir; however, there is no explanation or claims in the patents divulging any utilitarian purpose for such design or configuration. Specifically, the examining attorney relies on the language in the patents regarding a “preferable geometry” for the dispensers, but does not point to any further language in the patents illustrating how this “preferable geometry” actually provides a utilitarian advantage.

The Examining Attorney pointed to the nozzle, but the Board noted that the inner workings of the nozzle cannot be claimed as features of the proposed configuration mark, and even if the nozzle shown in the mark had some utilitarian advantage (that it is somehow easier to grasp and turn), that alone would not be enough for a finding that the "entire mark" is functional. See In re Becton, Dickinson and Company, 102 USPQ2d 1372, 1376 (Fed. Cir. 2012) [precedential]. [TTABlogged here].

3M also owns two design patents for nearly indistinguishable designs. These design patents, under Morton-Norwich, are evidence of non-functionality.

The Board therefore found that the PTO did not meet its burden to prove functionality.

Description of the Mark: The Board found that Applicant's description of its proposed marks, although not as succinct as they might have been, accurately characterizes the marks, in compliance with Rule 2.37.


Acquired Distinctiveness: By seeking registration only under Section 2(f), 3M conceded that the proposed marks are not inherently distinctive. [Remember that product containers or packaging can be inherently distinctive - ed.]. It was 3M's burden to prove acquired distinctiveness.

3M relied on look-for advertising ("a few copies"), use of the configurations for more than 10 years, a market share of more than 50%, and nine affidavits containing the statement that that the affiant associates the shape with a single source for sanitizer products.

The Board criticized the form of some of this evidence because it was not supported by affidavit (i.e., statements about the advertising and 3M's market share), but was presented in factual statements by counsel. However, the Board considered the evidence anyway, since the Examining Attorney did not object and there was no contradictory evidence.

However, the Board found 3M's proofs to be insufficient. There was no evidence as to the number of dispensers sold or the revenues therefrom, and no evidence regarding advertising figures or the "degree of advertising efforts" to associate the proposed marks with the identified goods. The market share figures related to the "limited realm of the medical scrub markets," but 3M's identification of goods was not so limited: i.e., there was no information as to 3M's market share in the broader market of hand-sanitizing antiseptics.

As to the affidavits, the number was not impressive and there was no evidence that the they "resulted from a random selection of possible declarants" Moreover, some of the statements were incomplete. In sum, their probative value was minimal.

And so the Board affirmed the failure-to-function refusal.

TTABlog comment: Should 3M appeal, or file a new application in which it can add additional evidence, alternatively argue inherent distinctiveness, and perhaps narrow its identification of goods to the "medical scrub" market?

Text Copyright John L. Welch 2012.

TTAB Finds "WHO'S WHO ONLINE" Generic for ... Guess What?

The Board affirmed a refusal to register the alleged mark WHO'S WHO ONLINE, finding it to be generic for "providing an online directory information service in the nature of biographical and professional data about individuals of accomplishment" [ONLINE disclaimed]. Applicant pointed to its prior ownership of a Supplemental Registration for the same mark, which registration Applicant had inadvertently allowed to lapse, but the Board was unmoved. In re 21st Century Communications SCP Serial No. 77650780 (June 11, 2012) [not precedential].


Examining Attorney Darryl M. Spruill relied on dictionary definitions of WHO'S WHO and ONLINE, on articles and Internet webpages displaying various forms of WHO'S WHO ONLINE, and on eight third-party Supplemental Registrations in which the term WHO'S WHO is disclaimed.

The Board found that the genus of services at issue was adequately defined by Applicant's recitation of services. The relevant public consists of "the ordinary consumer interested in viewing, posting or subscribing" to such services.

Observing that the PTO must support a genericness refusal with clear evidence, that Board found clear evidence that the relevant public "would readily understand the term [WHO'S WHO ONLINE] to identify a type of directory information service providing online information regarding biographical and professional data about individuals of accomplishment."

The evidence of record clearly establishes that the term WHO’S WHO is the name of a type of listing of biographical and professional data about individuals of note or accomplishment. Furthermore, the record clearly establishes that the term ONLINE is the name of a type of information that is available on the Internet. Thus, and contrary to applicant’s contention, the record in this case establishes that WHO’S WHO and ONLINE are generic for the recited services.

Combining the terms WHO'S WHO with ONLINE has "no significance," and the Board found the proposed mark to be generic. WHO'S WHO is a unitary generic term and ONLINE is also generic. "WHO'S WHO ONLINE is the combination of two generic terms to create a compound."

Thus, Gould-type evidence showing the generic nature of the two terms is sufficient to establish that the separate terms retain their generic significance when joined to form a compound that has “a meaning identical to the meaning common usage would ascribe to those words as a compound." quoting Gould, 5 USPQ2d at 1111-12.

Applicant's prior, cancelled Supplemental Registration for similar services did not compel a reversal of this refusal. There was no record evidence regarding that prior registration, and in any event a cancelled or expired registration has no probative value. The PTO must apply the same standard to the instant application as it applies to any other, and this applicant is not entitled to special treatment merely because it unfortunately allowed its prior registration to lapse.

And so the Board affirmed the refusal.

TTABlog note: Calling WHO'S WHO ONLINE a compound term is a bit of a stretch, I think, but it is necessary in order to avoid the "phrase" analysis of American Fertility. Under that case, dictionary definitions of the words in a phrase are not alone sufficient to support a genericness refusal. Under Gould, which involved the compound term SCREENWIPE, definitions are sufficient.

I think the Board reached the right result, and it is not the first time that the Board has ducked the American Fertility test in finding a phrase to be generic. See, e.g., In re Nutraceutical Corp., Serial No. 78975072 (March 13, 2006) [not citable] [affirming a genericness refusal of the term FRESH ORGANICS for fresh fruits and vegetables, unprocessed cereals, and the like, and for retail health food store services].

Text Copyright John L. Welch 2012.

Recommended Reading: Anne Gilson LaLonde, "You Are Not Going to Believe This! Deception, Misdescription and Materiality in Trademark Law"

The latest issue of The Trademark Reporter® includes Anne Gilson LaLonde's informative article entitled, "You Are Not Going to Believe This! Deception, Misdescription and Materiality in Trademark Law," 102 TMR 883 (May-June 2012) [pdf here]. Anne patiently explains the differences between Section 2(a) deceptiveness, Section 2(e)(1) deceptive misdescriptiveness, and Section 2(e)(3) primarily geographically deceptive misdescriptiveness.

Trademarks that misdescribe goods and services can fall into a wide range of categories, depending on whether they are misleading or simply inapt. They may be arbitrary, suggestive, misdescriptive, deceptively misdescriptive, deceptive or primarily geographically deceptively misdescriptive. Arbitrary, suggestive and merely misdescriptive marks are immediately valid and registrable; deceptively misdescriptive terms are only valid and registrable with a showing of secondary meaning; and deceptive and primarily geographically deceptively misdescriptive marks are never valid or registrable. So the category a misdescriptive trademark falls into is vital.

The article also includes a discussion of false or misleading representations under on Section 43(a), and finishes with some suggestions for statutory change.

TTABlog note: Thanks again to The Trademark Reporter® and to Matthew Bender for granting permission to provide a link to this article.

Copyright © 2012 Matthew Bender & Company, Inc., a member of the LexisNexis Group. All rights reserved. Materials reproduced from Gilson on Trademarks® with the permission of Matthew Bender & Company, Inc., a member of the LexisNexis Group. No part of this document may be copied, photocopied, reproduced, translated, or reduced to any electronic medium or machine readable form, in whole or in part, without prior written consent of Matthew Bender & Company, Inc. Changes to the original are stylistic, save for a few updates and clarifications.

WYHA? TTAB Finds "FIREBIRD X" For Guitars Confusingly Similar to "FIREBIRD" for Amplifiers

The Board affirmed a Section 2(d) refusal to register the mark FIREBIRD X for guitars, finding the mark likely to cause confusion with the registered mark FIREBIRD for "electric audio equipment, namely, musical instrument sound processors comprising one of more of the following components, namely, amplifiers, equalizers, and speakers." Dozens of third-party registration for marks covering both guitars and amplifiers suggested that these good are of a type that may emanate from a single source. Would you have appealed? In re Gibson Guitar Corp., Serial No. 85127067 (June 14, 2012) [not precedential].


The Board first found the two marks to be highly similar in sight, sound, connotation, and commercial impression. Of course when the marks are nearly identical, a lesser degree of similarity between the goods is necessary to support a finding of likely confusion.

Third-party registrations, including some owned by Gibson, and Internet webpages demonstrated that guitars and amplifiers are complementary and related.


Neither the application nor the cited registration contains any limitation on channels of trade or classes of consumers, and so the Board assumed that the goods travel in the same, normal channels to the same, normal classes of customers.

Gibson argued that its goods are expensive (see article here) and the purchasers sophisticated, but the Board pointed out that there are no restrictions on price in Gibson's identification of goods. The Board must presume that both the guitars identified in the application and the amplifiers of the cited registration would be sold at all usual prices levels and ma include relatively inexpensive products. Moreover, the Board noted, when the marks involved are nearly identical, even careful, sophisticated consumers may not notice the differences in the marks, and even if they do, they will see the marks as variations of each other, pointing to a single source.

Finally, Gibson lamely argued that the cited mark is not famous, while its own goods sold under the FIREBIRD mark have garnered "a significant level of fame." The Board noted that this argument raised the issue of reverse confusion, which is no less a problem. In any event, any doubt as to confusion must be resolved in favor of the senior user.

And so the Board affirmed the refusal to register.

TTABlog comment: Well, what do you think?

Text Copyright John L. Welch 2012.

Precedential No. 22: TTAB Re-designates Azteca Specimen-of-Use Decision as Precedential

On June 6, 2012, the Board re-designated as precedential its decision in In re Azteca Systems, Inc., 102 USPQ2d 1955 (TTAB 2012). As discussed here at the TTABlog, the Board affirmed a refusal to register the mark shown immediately below for "computer software for management of public works and utilities assets" on the ground that Azteca's specimen of use did not show the applied-for mark associated with the identified goods.


The commenters on the original blog post were evenly split as to whether the Board reached the right decision.

Text Copyright John L. Welch 2012.

Test Your TTAB Judge-Ability: Are SOOGLE And GOOGLE Confusingly Similar for Travel Services?

Google, Inc. filed an opposition to registration of the mark SOOGLE for services involving arranging trips and travel, claiming a likelihood of confusion with its registered mark GOOGLE for various goods and services, including travel-related services. Applicant ACPS admitted that GOOGLE is a famous mark, but argued that the two marks are different because SOOGLE is "based on its sound and meaning in Chinese." Moreover, it claimed that its customers are "exclusively from mainland China with little English language ability" and therefore the parties' channels of trade are different. How do you think this came out? Google Inc. v. ACPS Global, Inc., Opposition No. 91198926 (June 11, 2012) [not precedential].


The Board granted Google's motion for summary judgment. It found the GOOGLE mark to be "exceedingly famous." Google's revenue figures were staggering, its website was highly rated, media coverage was significant, and the brand GOOGLE has been deemed the "single most popular brand" in three different years. From 2003 to 2011 its annual revenues grew from $1 billion to more than $17 billion. Of course, as a famous mark, GOOGLE is entitled to a broad scope of protection.

Comparing the marks, the Board found them to be quite similar in look and sound, and it observed that neither GOOGLE nor SOOGLE has any meaning.

As to the goods and services of the parties, Applicant admitted that, as with its SOOGLE services, a customer may obtain travel information and may make reservations using Google's services. "In other words, applicant admits that the parties' services are at the very least related."

Applicant's argument that its customers are exclusively from mainland China was irrelevant, since there is no such restriction in its recitation of services.

Finally, Applicant pointed to the lack of evidence of actual confusion and of bad faith, but the Board observed that neither actual confusion nor bad faith is necessary to establish likelihood of confusion, nor does this lack of evidence raise a genuine issue of material fact that would preclude the granting of a summary judgment motion.

Considering all the relevant factors, the Board found confusion likely and entered summary judgment in favor of Google.

TTABlog comment: I'm going to go out on a limb here and say that I don't think there is a likelihood of confusion. I don't think the marks sound or look alike.

PS: The Board declined to consider Google's dilution claim.

Test Copyright John L. Welch 2012.

On CAFC Remand, TTAB Again Finds COACH Has Acquired Distinctiveness for Test-Prep Software

In February 2012, the CAFC affirmed the TTAB'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 vis-a-vis Applicant Triumph's mark COACH (in standard character, stylized, and design forms) 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]. [CAFC decision TTABlogged here]. The Board has again dismissed Opposer's Section 2(e)(1) claim, finding that Triumph's marks have acquired distinctiveness. Coach Services, Inc. v. Triumph Learning LLC, Opposition No. 91170112 (June 18, 2012) [not precedential].


The CAFC ruled that the Board had made two errors in its analysis of acquired distinctiveness: first, it failed to consider the impact of five book titles that appeared after Triumph had filed its applications. The court noted that the application filing date is not the cut-off date for evidence bearing on the issue of acquired distinctiveness. Second, the court found that Triumph had failed to lay a proper foundation for testimony regarding certain catalogs dated prior to July 2003, when its witness, Jane Fisher, joined the company.

On remand, the TTAB decided not to consider any pre-2003 documents nor any testimony by Ms. Fisher regarding activities prior to 2003.

The Board then reviewed Triumph's evidence of acquired distinctiveness: use of the trademark COACH since 1986, annual advertising expenditures in the six figures, millions of promotional pieces distributed annually, revenues in the seven figures per annum. It also noted that Triumph is the largest publisher of educational materials for standardized tests.

The Board ruled that Triumph's COACH mark is "merely descriptive," but "not so highly descriptive that applicant has the burden to show a concomitantly high level of acquired distinctiveness." [How one draws the line between "merely descriptive" and "highly descriptive" was not explained - ed.]. It observed that survey evidence or direct evidence of consumer recognition is not required to prove acquired distinctiveness.

The Board found that Applicant's use of its COACH marks for preparing standardized tests has been substantially exclusive. "The requirement for substantially exclusive use makes allowance for use by others that may be inconsequential."

The evidence of purported third-party use was of little probative value because there was no proof that the public is aware of the books or software. As to the book titles, the Board pointed out that the title of a single creative work is not a source indicator. [So what? Wouldn't the book titles still undercut Triumph's claim to exclusivity? Aren't they also relevant to the issue of the degree of descriptiveness of the COACH marks? - ed.]. In any case, this evidence does not show that Triumph's use of its COACH marks for test-prep materials was not substantially exclusive.

The Board therefore found that Triumph's use of its marks "has made an impact on the purchasing public in the field of educational materials for preparing standardized tests as an indication of origin and has acquired distinctiveness. It ruled that Triumph had established its affirmative defense of acquired distinctiveness, and it dismissed Opposer's Section 2(e)(1) claim.

TTABlog comment: I suspect this case will return to the CAFC.

Text Copyright John L. Welch 2012.

TTAB Finds LOUISIANA FAST START Not Confusingly Similar to QUICK START For Business Training Services

The Board dismissed an opposition to registration of the mark LOUISIANA FAST START for business training services [LOUISIANA disclaimed], finding the mark not likely to cause confusion with Opposer's mark QUICK START for very similar training services. The weakness of Opposer's mark and the sophistication of potential purchasers were key factors in the Board's decision. Technical College System of Georgia v. Louisiana Economic Development, Opposition No. 91191683 (May 29, 2012) [not precedential].



Evidentiary issues: Opposer TCSB failed to get its pleaded registration for the mark QUICK START into the record. It claimed that it "downloaded the '463 Registration to its Notice of Opposition via the Board's ESTTA electronic filing system." But that doesn't work. Even though a person types in the registration number(s) for the pleaded registration(s), that does not make the registration(s) of record because it does not provide status and title copies of the registration(s), as required by Rule 2.122. [TTABlog query: why doesn't the PTO/Board just automatically upload the corresponding TEAS electronic records when one types in a registration number? It's their data anyway! That would eliminate this "gotcha" situation.]

Opposer created a number of other evidentiary problems for itself. For example, it submitted its trial evidence after its testimony period had closed, and belatedly filed its testimony deposition (which testimony was taken prematurely, before its testimony period had opened). The Board allowed the testimony deposition into the record because Applicant had not timely objected.

When the evidentiary dust had settled, the testimony deposition of Opposer TCSB's witness was "minimally sufficient" to establish priority. Of course, had it proven up its registration, prioirty would not have been an issue.




Likelihood of confusion: Turning to the Section 2(d) issues, the Board found the involved services to be "highly related inasmuch as both programs are essentially in the business of workforce training." Moreover, the services are offered through overlapping trade channels to the same classes of customers.

As to the strength of Opposer's mark, the Board observed that QUICK START is "clearly not an arbitrary choice." It suggests that newly-trained employees can quickly begin working with business relocating to Georgia. Third-party registrations for Quick Start, PR QUICKSTART, DP QUICKSTART, FASTART, FAST START, and JUMPSTART, and third-party uses of similar terms, all for educational services, convinced the Board that QUICK START is "highly suggestive for TCSG's services."

Because TCSG failed to get its registration into the record, its actual form of use of the mark "becomes more critical." The Board noted that in many cases Opposer uses the mark in the form "Georgia Quick Start" rather than "Quick Start" by itself.

The Board considered LOUISIANA to be the dominant element of Applicant's mark [even though disclaimed]. This word "would seem to create a strong dissimilarity in the marks," even with the addition of "Georgia" to Opposer's mark. And when "Georgia" is added, the marks do not resemble each other. This, the Board found, is a significant factor.

Finally, the Board pooh-poohed TCSG's feeble assertion that international businesses might be confused, since they may not distinguish between different southern states and may not recognize that individual states may have competing economic interests. Applicant argued that the decision to locate a company in a particular state is a complex and time-consuming process, one undertaken with care. The Board sided with Applicant.

Inasmuch as the governors of most states are similarly engaged in this kind of competition, it seems likely that most foreign ventures contemplating the planting of a large business enterprise in the United States will be well aware that fifty separate states within our federalist system are all competing for their investments. Accordingly, we agree with applicant that it is a fairly remote chance that some foreign national will inadvertently be led to invest millions of dollars into the wrong state based on the superficial resemblance of these two marks.

The Board therefore concluded that Opposer had failed to show by a preponderance of the evidence that confusion is likely.

Text Copyright John L. Welch 2012.

TTABlog Tweets and Re-Tweets

If you are not a Twitter subscriber, you missed these recent TTABlog tweets and re-tweets:

Guess? Who: Gucci “wins” injunction, $4.6 million in trademark suit against Guess? http://j.mp/Mv3i7E

RT @TrademarkBlog: Comcast Protests “Shake Down” of Alleged BitTorrent Pirates | TorrentFreak http://bit.ly/NyOsio

RT @LexisNexis: Parody as a Defense to Trademark Infringement http://bit.ly/MvspEu

RT @UNHLaw: Professor Susan Richey weighs in on NH legal debate that began over commercial use of JD Salinger's image: http://ow.ly/buWMM

U.S. and Cuba Clash over Havana Club Trademark http://j.mp/MRhtXy

RT @RTushent: Shouldn't we give up on the "brand as adjective" rule?: STK LLC v. Backrack, Inc., Cancellation No. 92049332 http://bit.ly/LChYOb

RT @ERicGoldman: Trademark Registrant Isn't Required to Shut Down Competitive Keyword Advertisers--STK v Backrack http://j.mp/L6GM3u

RT @INTA: Have a #TrademarkLaw question on #trademark enforcement, dilution, or something else? This is a great #INTAresource - http://ow.ly/blw7v

Test Your TTAB Judge-Ability on These Four Section 2(e)(1) Mere Descriptiveness Refusals

The TTAB reversed the PTO in two of the four Section 2(e)(1) mere descriptiveness cases summarized below. Let's see what you would do with them.


In re MVP Group International, Inc., Serial No. 85074276 (May 16, 2012) [not precedential]. FIREBRIX merely descriptive of “fire lighters; solid fire starters.”

In re HJL Group, LLC., Serial No. 85028579 (May 21, 2012) [not precedential]. NEIGHBORHOODJOINTS merely descriptive of: offering business management assistance in the establishment and/or operation of restaurants; Providing a web site featuring product ratings of the consumer goods and services of others in the field of food and restaurant services; Providing a website where users can post ratings, reviews and recommendations on restaurants, food and wine for commercial purposes; Restaurant management for others.

In re Michael W. Arlen, Serial Nos. 85135800 and 85180298 (May 25, 2012) [not precedential]. NEWTRITIOUS and INSTANT NEWTRITION for “powdered mixes in the nature of powdered nutritional supplement mix.”

In re Outlook Amusements, Inc., Serial No. 77314375 (May 31, 2002) [not precedential]. TEEN PSYCHIC for a wide variety of educational and entertainment services, including services involving psychic readings, astrological forecasting, and including services for children and teenagers, and for psychic and astrological reading services; entertainment services, namely, providing a website at which the public can receive advice from an individual concerning relationships, psychic readings, and/or astrological forecasting.


TTABlog hint: The first and third cases came out the same way.

Text Copyright John L. Welch.

Precedential No. 21: TTAB Excludes Opposer's Sole Trial Witness Due To Failure to Previously Identify Her

Opposer Spier Wines noticed the testimony deposition of one witness, Ms. Eve Jell, but she was first identified as a potential witness in Spier's pre-trial disclosures. In its initial disclosures, Spier had identified another person who had subsequently left the company. Applicant Shepher moved to strike the pre-trial disclosures and to quash the notice of taking testimony due to Spier's failure to timely identify Ms. Jell in a supplement to its initial disclosures or otherwise. The Board, through Interlocutory Attorney Elizabeth J. Winter, granted the motion. Spier Wines (PTY) Ltd. v. Ofer Z. Shepher, 105 U.S.P.Q.2d 1239 (TTAB 2012) [precedential].


To determine whether Spier's failure to identify Ms. Jell in its initial disclosures, in supplemental initial disclosures, or in response to interrogatories, was substantially justified or harmless, the Board weighed the five factors set forth in Great Seats, Inc. v. Great Seats, Ltd., 100 USPQ2d 1323 (TTAB 2011) [precedential]:

1) the surprise to the party against whom the evidence would be offered;
2) the ability of that party to cure the surprise;
3) the extent to which allowing the testimony would disrupt the trial;
4) the importance of the evidence; and
5) the non-disclosing party’s explanation for its failure to disclose the evidence.

The Board found that Spier could have identified Ms. Jell, its international sales director, at least as early as November 2010, when it informed Applicant that the previously-identified employee had left the company. The failure to disclose Jell's identity sooner than pre-trial disclosures resulted in surprise to applicant (factor 1), and was prejudicial, not harmless, because Applicant was deprived of the opportunity to seek discovery of her. Spier provided no satisfactory explanation for the failure to disclose her identity (factor 5).

As to the importance of the evidence (factor 4), the Board noted that Jell's testimony was not the only evidence that Spier had to offer: Spier submitted the pleaded registrations and several notices of reliance. It did not appear that her testimony (on industry awards, pronunciation of the term SPIER, and perceptions of US customers), would be "particularly critical or persuasive in the ultimate determination of the merits of the case by a panel of Board judges."

As to whether Applicant could cure the surprise (factor 2), the Board pointed out that discovery had closed more than one year previously, and further that the proposed deposition on written questions (Ms. Jell resides in South Africa) would deprive Applicant of the opportunity to confront the witness and cross-examine her. The Board therefore concluded that Applicant Shepher had little, if any, ability to cure the surprise.

Finally, re-opening the discovery period to allow a discovery deposition on written questions would significantly disrupt the proceeding (factor 3).

Even aside from the Great Seats analysis, Spier's failure to disclose the identity of Ms. Jell effectively misled Applicant as to the identity of potential trial witnesses. Ms. Jell should have been identified in initial disclosures as a person likely to have discoverable information that Spier might use to support its claims.

[T]he Board concludes that opposer failed to timely identify Ms. Jell as a person knowledgeable about the issues involved in these proceedings, and that such failure was neither harmless nor substantially justified. Essentially, opposer treated the initial and pretrial disclosure requirements as unrelated events, rather than recognizing that disclosures and discovery responses should be viewed as a continuum of inter partes communication designed to avoid unfair surprise and to facilitate fair adjudication of the case on the merits.

Consequently, the Board applied the "estoppel sanction" and precluded the testimony of Ms. Jell.

TTABlog comment: It might be a good idea to add an additional date to your docketing calendar for TTAB proceedings: say midway through the discovery period, docket a date for "confirming accuracy, currency, and completeness of initial disclosures."

Text Copyright John L. Welch 2012.

Test Your TTAB Judge-Ability: Are NIKEA and IKEA Confusingly Similar for Candy?

Applicant Arsen Manasyan sought to register the mark NIKEA for "chocolates, candy," but Ikea opposed, claiming likelihood of confusion with its registered mark IKEA for various food items, including candy. How would you rule? Inter-IKEA Systems B.V. v. Arsen Manasyan, Opposition No. 91194783 (May 17, 2012) [not precedential].


Because the goods are in-part identical, the Board must presume that they travel in the same, normal channels of trade to the same, usual classes of consumers. So it all came down to the marks.

Both IKEA and NIKEA are coined terms with no particular meaning. The similarities in in sight, sound, connotation and commercial impression to outweigh their dissimilarities.

Ikea claimed that its mark is famous, but its proofs fell short. Although it proved a "fair amount of market exposure," Ikea did not provide "clear context for its sales and advertising numbers with regard to the industry, nor as to how the fame of its IKEA mark in the media relates specifically to its chocolate and candy products."

Ikea argued that candy products are inexpensive and are not purchased with any sophistication, but the Board (rather strangely) pointed to a lack of evidence "regarding the typical price of candy and chocolates or the average sophistication of the consumers thereof." [Since there are no limitations in the application or cited registration, shouldn't the Board assume that the involved goods include inexpensive candy purchased on impulse? - ed.].

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

TTABlog comment: How did you do? Was it like taking candy from ....? Or did you have no ikea what you were doing?

Text Copyright John L. Welch 2012.

Precedential No. 20: TTAB Says Partial Cancellation for Abandonment Governed by Section 14, not Section 18

In this procedural skirmish, Petitioner J&J moved to dismiss Applicant's OsO's counterclaim for partial cancellation of a J&J registration on the ground of abandonment as to some of the identified goods. Applicant invoked Section 18 in its counterclaim; J&J argued that the counterclaim lacked the necessary allegation that the cancellation would avoid a likelihood of confusion. The Board ruled that Section 18 does not apply at all, and that this "straightforward" counterclaim for partial abandonment falls under Section 14, where no such allegation of avoidance is needed. Johnson & Johnson and Roc International S.A.R.L. v. Obschestvo s Ogranitchennoy; Otvetstvennostiu WDS, 104 USPQ2d 2037 (TTAB 2012) [precedential].


The Board concluded that the parties missed the real issue because "the counterclaim of abandonment is sufficient without reference to Section 18." A counterclaim for partial abandonment "does not require any reference to avoidance of a likelihood of confusion." Such an allegation is needed only when the claim seeks to modify or restrict the identification of goods or services, and not when, as here, a party seeks to have discrete goods or services deleted on a theory of abandonment.

[W]hile Section 18 allows the Board to consider claims it could not entertain in an opposition under Section 13 or a cancellation under Section 14, for example, a restriction in a concurrent use case, or the entry of a modification to an identification of goods where the modification would avoid a likelihood of confusion, it does not change the statutory basis for cancellation where a valid ground for cancellation exists, such as a partial abandonment under Section 14, as is the case here.

And so the Board denied J&J's motion to dismiss the counterclaim.

TTABlog comment: The requirement that a party seeking a modification or restriction of a registration under Section 18 must allege that avoidance of a likelihood of confusion will result, stems from the TTAB's decision in Eurostar, Inc. v. "Euro-Star" Reitmoden GmbH, 34 USPQ2d 1266, 1271 n.3 (TTAB 1994).

Note that cancellation of all or part of a registration under Section 14 on the ground of abandonment requires both proof of both non-use and an intent not to resume use. A Section 18 claim for restriction or modification of a registration does not have to meet those requirements, but it does have to meet the "avoidance of a likelihood of confusion" requirement.

Text Copyright John L. Welch 2012.

TTAB Finds RLX RALPH LAUREN Not Confusingly Similar to ROLEX for Watches

Despite the fame of the ROLEX mark and the overlap of the goods and channels of trade, the Board found the marks RLX RALPH LAUREN and RALPH LAUREN RLX not likely to cause confusion with the ROLEX mark, all for watches. The dissimilarity of the marks was sufficient to overcome the other du Pont factors, leading to dismissal of the opposition. Rolex Watch U.S.A., Inc. v. PRL USA Holdings, Inc., Opposition No. 91170868 (June 7, 2012) [not precedential].


Opposer pointed to the judgment entered in its favor when PRL withdrew its application to register RLX alone, but the Board pointed out that claim preclusion does not apply because the marks are not identical. Nor does issue preclusion apply, because no issues were decided when the default judgment was entered.

Opposer asserted that third parties use the term RLX to refer to it, but the Board found the evidence of same to be minimal: four websites (two German) and a Google brand search of "rlx." Moreover, there was no information as to how many consumers have been exposed to this usage.

Finally, Opposer trumpeted its survey reporting that 61 percent of consumers perceived Opposer as the source of RLX watches. Although these results may be strong evidence as to RLX by itself, they have minimal probative value in the context of the two marks at issue.

Opposer conceded that the RALPH LAUREN mark is well known and that consumers would believe that Applicant's watches come from, or are connected in some way to, Applicant. But it posed the following question: "Would consumers believe that watches sold under the RLX RALPH LAUREN and RALPH LAUREN RLX marks have some connection with Opposer in terms of whether such watches are manufactured by or otherwise approved by Rolex when such is not the case?"

Opposer emphasized the fact that it and PRL both sponsor some of the same athletic events, for which their marks are simultaneously displayed (e.g., Wimbledon, U.S. Open). On the other hand, PRL argued that the appearance of its well-known house mark alleviates any likelihood of confusion.

The Board recognized that the addition of a house mark to another's mark does not avoid confusion, and may in fact increase confusion. But that rule does not apply when the additional matter, when taken with the house mark, conveys a different commercial impression (e.g., THE RITZ KIDS for clothing versus RITZ for kitchen utensils).

The Board found that RLX is the dominant portion of Applicant PRL's marks. Moroever, RLX, when joined with the well-known name RALPH LAUREN, suggests an expansion of the RALPH LAUREN product line (the R.L. initials plus the X).

[G]iven the different connotation and commercial impression engendered by the presence of the well-known mark RALPH LAUREN, when viewing the mark in its entirety, consumers will perceive RLX as Mr. Lauren’s initials and not an abbreviation of ROLEX. Even in the case where the RLX is emphasized ..., in view of the strength of the RALPH LAUREN mark it still creates the commercial impression of Mr. Lauren’s initials when displayed alongside the well-known RALPH LAUREN house mark.

And so the Board dismissed the opposition.

TTABlog comment: For some reason, I find RLX RALPH LAUREN more troublesome than RALPH LAUREN RLX. By the way, what do you think of this manner of display of RLX RALPH LAUREN?


Text Copyright John L. Welch 2012.

TTAB Dismisses Petition to Cancel BACKRACK for Truck Headache Racks Due to Insufficient Proof of Genericness

In a 55-page decision, the Board dismissed this petition for cancellation of a registration for the mark BACKRACK for "pick-up truck racks, namely, headache racks designed to protect the cab and mount a variety of accessories, namely, light, antenna and toolbox brackets." Petitioner claimed genericness but it failed to overcome the presumption of validity with a showing, by a preponderance of the evidence, that consumers use or understand the term "primarily refer to headache racks rather than a particular headache rack manufactured and sold by respondent." Professor Eric Goldman discusses (here) one aspect of the decision: the Board's ruling that, in view of the evolving status of the case law, "Respondent's failure to pursue purchasers of 'backrack' as a keyword is not evidence of failure to police its mark." Prof. Goldman opines that "this opinion reaches a sound result and provides some helpful insights for trademark owners wondering if they must chase off competitive keyword advertisers to satisfy their trademark policing 'duty.'" STK LLC v. Backrack, Inc., Cancellation No. 92049332 (May 21, 2012) [not precedential].


The Board first found the genus of the goods to include those identified in the challenged registration, plus synonymous names for headache racks (headache guards, cab guards, window guards, cab protectors, cab racks, truck racks, and cab protection). The relevant public includes distributors, retailers/jobbers, and commercial and non-commercial end users.

Petitioner STK asserted that this case is like In re Gould, where SCREENWIPE was held to be generic for ... guess what? - based on definitions of the constituent words. Here, however, the word "back" and "rack" have many meanings, and BACKRACK is registered and used for various goods completely unrelated to headache racks..

Although Respondent occasionally misuses the term BACKRACK, these misuses have not destroyed the mark. Based on the overall manner in which Respondent has marketed its products, the Board found it "more likely than not that the relevant public recognizes BACKRACK as a brand name."

The evidence did not show a competitive need to use the term "backrack," since there are a number of synonymous names available. As to third-party usage of the term, some used it as a trademark, others as a generic term. But the misuse was not so widespread and of such a duration as to deprive BACKRACK of all trademark significance.

As to consumer understanding of the term, there was no evidence establishing how end-customers use the term. Petitioner's "homemade" survey was flawed throughout and proved nothing. BACKRACK was not used generically in the printed publications placed in evidence.

Turning to Respondent's policing efforts, much of the activity occurred after this case began, but Respondent did in fact attempt to enforce its rights earlier, and many complied with Respondent's requests. Respondent has also recovered various domain name registrations that include the term "backrack."

Petitioner STK asserted that Respondent had failed to police keyword purchasing, but the Board found that argument not compelling:

Only recently has a federal court of appeals provided a plaintiff trademark owner with the opportunity to show that Google's keyword program creates a likelihood of confusion. In view of the evolving status of the case law in this area," respondent's failure to pursue purchasers of 'backrack' as a keyword is not evidence of a failure to police its mark.

Moreover, other parties may be purchasing "backrack" as a keyword because of its trademark significance and association with Respondent's products.In fact, the keyword l"backrack" leads to websites where competitive products are referred to by other names, not as "back racks."

On this mixed record, the Board concluded that the evidence of generic use was offset "by evidence of the overall context of respondent's trademark use of the term BACKRACK, a less than rigorous but sufficient level of policing and control over use of the mark by others, recognition of the trademark significance of the mark by competitors and sellers, and a lack of evidence that the primary understanding of the term BACKRACK to end-purchasers of headache rack is as a generic term."

And so the Board dismissed the petition for cancellation.

TTABlog comment: Why wasn't this opinion precedential?

Text Copyright John L. Welch 2012..

Test Your TTAB Judge-Ability: Two "Skateboarder" Design Marks for Clothing

Maloof Skateboarding applied to register the design mark shown on the left, for various clothing items, including shirts, t-shirts, and sweaters. Examining Attorney Janice Kim refused registration under Section 2(d) in view of the registered design shown below right, for overlapping clothing items. Maloof argued that the designs show different types of skateboarding, and that the purchasers of the goods are sophisticated. How would you rule? In re Maloof Skateboarding, LLC, Serial No. 77931954 (May 23, 2012) [not precedential].


We all know that marks are not to be analyzed in a side-by-side comparison. The Board must consider the general impression made by the marks. Here, the general impression is the same: "the silhouette of a person on an airborne skateboard with his body turned slightly toward the right." Details such as long hair or jeans, or whether a skater's arm is up or down, are not likely to be noted or remembered.

Maloof contended that the relevant purchasers of the goods would recognize that the designs depict two different styles of skateboarding: Applicant's mark depicts a "street skateboarder," whereas the registered mark depicts a "vert skateboarder." [The few time I tried skateboarding, I ended up as a "horizontal-on-the-street skateboarder" - ed.].

Unfortunately for Maloof's argument, neither its application nor the cited registration identified the goods as being sold only to skateboarders. Regardless of whether some purchasers may be sophisticated, the Board must determine the likelihood-of-confusion issue from the point of view of the general public that buys the ordinary clothing items identified. The ordinary consumer cannot be expected to distinguish the styles of skateboarding. In short, the marks would have a similar appearance, meaning, and commercial impression.

Consequently, the Board affirmed the refusal to register.

TTABlog comment: How did you do? Are you ready to apply for a TTAB judgeship? If so, go here.

Text Copyright John L. Welch 2012.

WYHA? "THE BIG RIG MATTRESS" Merely Descriptive of Mattresses, Says TTAB

In a five-page decision, the Board affirmed a Section 2(e)(1) refusal of THE BIG RIG MATTRESS, finding the mark to be merely descriptive of mattresses. Examining Attorney Brian Neville submitted dictionary definitions of "big rig" as a "tractor-trailer truck," and a page from Applicant's website showing that Applicant's goods are advertised as a "Truck-Sleeper mattress." Would you have appealed? In re Quality Spring Products, Inc., Serial No. 77738221 (May 23, 2012) [not precedential]


Applicant conceded that one meaning of its mark is descriptive of its goods, but it asserted that the mark is a double entendre, having a non-descriptive second meaning: the word "rig" means "gear," so that "big rig" may mean "big gear/apparatus" in addition to "truck." The second meaning of the mark is then "a heavy duty mattress or heavy duty sleeping gear."

[I]t is applicant’s position that 'when a rig is interpreted to mean equipment or gear, big is an adjective modifying that equipment or gear,' and that 'big as an adjective modifying rig is not simply ‘large’, but there is a suggestion that the big rig is the stronger, more powerful, more heavy duty piece of equipment or gear in comparison to the normal, ordinary, or small rig.' [emphasis in original].

Thus, according to Applicant, THE BIG RIG MATTRESS may mean "The Heavy Duty or High Quality Equipment or Gear Mattress."

The Board pointed out that, to qualify as a double entendre, the non-descriptive meaning of the mark must be immediately apparent. It was not persuaded by Applicant's "very strained argument" that consumers would understand Applicant's mark, for mattresses to be used in tractor-trailers, as meaning "The Heavy Duty or High Quality Equipment or Gear Mattress."

On the contrary, they will not go through this very convoluted reasoning when the meaning of BIG RIG as a tractor-trailer will be very evident to them, and THE BIG RIG MATTRESS will mean to them only that the mattress on which this mark is used is a mattress designed for big rigs.

And so the Board affirmed the refusal.

TTABlog comment: Well? WYHA?

Text Copyright John L. Welch 2012.

Test Your TTAB Judge-Ability: Is GREEN DOOR for Sex Club Services Confusingly Similar to THE GREEN DOOR for Restaurant Services?

Applicant MUS, Inc. sought to register the mark GREEN DOOR for "adult entertainment services, namely, an adult-themed social club for engaging in adult-themed erotic activities, excluding restaurant and bar services." The PTO refused registration under Section 2(d), finding the mark likely to cause confusion with the essentially identical mark THE GREEN DOOR registered for "restaurant and bar services." The services do not overlap, but are they too close? What do you say? In re MUS, Inc., Serial No. 77865028 (May 24, 2012) [not precedential]


The recitation of services in the opposed application is sufficiently self-explanatory that extrinsic evidence was not need for a full understanding thereof. Nevertheless, the evidence submitted by Applicant and the Examining Attorney confirmed that "applicant provides a sex club in which couples and individuals may engage in sexual activity or observe others so engaged." Thus Applicant's services are clearly different from those of the cited registration.

The Examining Attorney submitted about 20 third-party registrations for marks covering restaurant and bar services along with other goods or services. However, only one also recited adult-oriented services that might be considered related to those of the opposed application. The other registrations recited nightclub services in addition to restaurant and bar services, but the Board took judicial notice of a definition for "night club" as "an establishment for evening entertainment, generally open until the early morning, that serves liquor and usually food and offers patrons music, comedy acts, a floor show, or dancing; nightspot." The definition did not mention adult-oriented erotic entertainment.

The Examining Attorney offered one Internet website pertained to a night club that provides private rooms for "swingers." [Maybe they were a batting cages for baseball practice? - ed.]. The Board, however, found this single website insufficient to establish that night clubs typically offer such swinging facilities.

Moreover, the fact that Applicant's adult social club includes a bar does not require the conclusion that Applicant's services are related to restaurant services. Although the exclusion of "restaurant and bar services" from Applicant's recitation does not render the involved services unrelated, the PTO must provide evidence of relatedness. One third-party registration and one website are simply not enough to show that consumers would expect the involved services to emanate from the same source, even if offered under the same mark.

We recognize the multifarious connection that exists between alcohol and sexual activity. We further are mindful that habitués of bars may utilize such venues as a prelude to adult-themed erotic activities. However, this tangential connection between bar services and erotic activities is not a basis for finding the offering of bar services and an adult-themed social club to be related.

And so the Board reversed the refusal to register.

TTABlog comment: I wonder what's behind Applicant's choice of the mark GREEN DOOR?

Text Copyright John L. Welch 2012.

TTAB Posts June 2012 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled six (6) oral hearings for the month of June, 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.


June 13, 2012 - 11 AM: Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc. dba Watermark Cruises, Cancellation No. 92050879 [Petition for cancellation of a registration for ANNAPOLIS TOURS for "conducting guided tours of historic districts and other areas of cities" on the grounds of fraud, genericness, and lack of acquired distinctiveness].


June 13, 2012 - 2 PM: Atlas Flowers, Inc. d/b/a Golden Flowers v. Golden Vision Flower Inc., Cancellation No. 92050966 [Petition for cancellation of a registration for the mark GOLDEN VISION FLOWER INC. & Design for flowers, plants and bulbs, on the grounds of (1) likelihood of confusion with Petitioner's allegedly prior mark GOLDEN VISION & Design, (2) non-use, and (3) fraud].


June 14, 2012 - 11 AM: In re Apple, Inc., Serial Nos. 77616247 et al. [Section 2(e)(1) mere descriptiveness refusal of OPENCL for "application programming interface computer software for use in developing applications for execution on central processing units (CPU) or graphic processor units (GPU), sold as an integral component of computer operating software"].


June 14, 2012 - 2 PM: In re Directv, LLC, Serial Nos. 77967755 et al. [Refusal to register the marks N3D in standard character and stylized form, and N3D DIRECTTV, on the ground that the term "N3D" is merely descriptive of broadcasting, transmission and programming services].


June 19, 2012 - 10 AM: In re Geller, Serial No. 77940879 [Section 2(a) refusal to register the mark STOP THE ISLAMISATION OF AMERICA for "providing information regarding understanding and preventing terrorism," on the ground of disparagement].


June 28, 2012 - 11 AM: In re Genworth Financial, Inc., Serial No. 77782734 [Section 2(d) refusal of COLONY for “life insurance underwriting” on the ground of likely confusion with the registered mark COLONY MEMBER ARGO GROUP and design for "insurance services, namely, writing commercial excess and surplus insurance”].


Text Copyright John L. Welch 2012.