TTAB Affirms 2(d) Refusal of "MaxCL" for Life Insurance, Finds Confusing Similarity to "MAX" for Property/Casualty Insurance

Oh boy! What could be more exciting than a case involving insurance company marks? In this barnburner, the Board affirmed a Section 2(d) refusal of MaxCL for "fraternal services, namely, life insurance underwriting" in view of the registered mark MAX in standard character (and design form), for "underwriting of property and casualty insurance." Third-party registration and Internet evidence established the relatedness of the services, and the Board found the marks to be similar in appearance, sound, meaning and commercial impression. Doesn't this one come awfully close to the WYHA? line. In re Modern Woodmen of America, Serial No. 77203020 (July 16, 2012) [not precedential].


The marks: Applicant feebly argued that the "CL" suffix would distinguish its mark from the cited marks, but the Board concluded that since "CL" has no particular meaning, Applicant's mark would likely be viewed merely as a variant of the cited MAX mark.

Applicant pointed to a TESS search listing of 100 of 402 records for marks containing the word "max" in class 36. The Examining Attorney did not object to the lack of copies of the actual registrations, but the Board found the list non-probative anyway, since it failed to provide crucial information - like the nature of the services.

And so the Board found the marks to be similar in appearance, sound, meaning and commercial impression.

The services: Examining Attorney Cory Boone submitted third-party registration and website evidence demonstrating that the same entities underwrite all three types of insurance involved here: life, property, and casualty. Under Albert Trostel, third party registrations based on use in commerce have probative value and serve to suggest that the involved services may emanate from a single source under a single mark. In short, consumers are likely to believe that the services emanate from the same source.

Applicant's services are limited to those provided by a fraternal society (Modern Woodmen of America), leading Applicant to argue that confusion is not likely because only its members may buy its insurance. The Board, however, pointed out that registrant's services are not restricted as to trade channels and are presumably sold to all member of the general consuming public, including Applicant's members.

Applicant claimed that the purchase of insurance is not done on impulse but as part of a careful decision. Although Applicant provided no evidence to support that argument, the Board agreed that purchasers exercise care when purchasing insurance. Thus this du Pont factor slightly favored Applicant.

Prior registration: Finally, Applicant pointed to its ownership of a 2009 registration for "MaxCL Pro" for life insurance services [PRO disclaimed], arguing that consumers would associate MaxCL with the registered MaxCL Pro mark. The Board noted the lack of evidence of such an association, and further pointed out that "there is nothing that explains why customers would only associate the MaxCL mark with MaxCL PRO, and not also with the cited MAX mark." Moreover, the Board is not bound by the prior decision of an Examining Attorneys in allowing the MaxCL Pro mark for registration, but rather must decide each case on the record before it.

Noting that a lesser degree of similarity between the marks is necessary when the involved services are "similar in kind and/or closely related," and resolving any doubt in favor of the prior registrant, the Board affirmed the refusal.

TTABlog comment: I don't like the statement that when the services are "similar in kind," a lesser degree of similarity between the marks is needed for a likelihood of confusion finding. Isn't "similar in kind" a rather low threshold?

Text Copyright John L. Welch 2012.

"VALENTINO RUDY" Confusingly Similar to "VALENTINO" for Clothing, Says TTAB

The Board sustained a sextet of oppositions to registration of VALENTINO RUDY (Stylized) for various goods in classes 9, 14, 18, 24, 25, and 28, including watches, spectacles, fabric, clothing, and sporting goods, in view of the registered mark VALENTINO for identical or closely related goods. Although third-party uses showed that the VALENTINO mark exists in a "somewhat crowded field," these third-party uses did not render Opposer's mark weak. Valentino, S.p.A. v. Matsuda & Co., Opposition No. 91174169 (July 18, 2012) [not precedential]


Opposer objected to Applicant Matsuda's introduction of evidence of third-party use, which evidence was not produced during discovery but was later acquired. The Board overruled the objection, stating that any failure by Applicant to supplement its discovery responses could be eliminated or minimized during Opposer's rebuttal testimony period.

Turning to the substantive issues, perhaps the most (or only) interesting issue involved Matsuda's class 28 goods: "sporting equipment, namely, golf clubs, golf irons, golf bags." Although Opposer does not use, and has not registered the VALENTINO mark, for golf stuff, third-party registrations and website evidence demonstrated that clothing and golf stuff are related for Section 2(d) purposes.

Of course, when the goods are identical or closely related, the Board must presume that they travel in the same channels of trade to the same classes of consumers. Moreover, the identified goods include products purchased with no more than ordinary care.

Furthermore, when the goods are identical or closely related, a lesser degree of similarity between the marks is needed to support a finding of likely confusion. The Board found the marks VALENTINO and VALENTINO to be "highly similar." Matsuda's mark VALENTINO RUDY incorporates Opposer's mark in its entirety, and the marks are similar in appearance and pronunciation.

Moreover, the general commercial impression of both marks, VALENTINO and VALENTINO RUDY, is that of a person’s name. It is highly likely that consumers will believe that both marks identify a real person and that applicant’s mark is merely the complete, full name of the individual whose first name is Valentino.

Based on Opposer's use of the VALENTINO marks since 1992, the Board found the mark to be commercially strong.

As to the sixth du Pont factor, "the number and nature of similar marks in use on similar goods,"Matsuda submitted a "sizeable number of third-party uses of “Valentino,” but except for one, they include the word "Valentino" in the "second, less dominant, position." But the Board drew "an inference that consumers have come to recognize that several other entities use the term VALENTINO as part of their mark in connection with products that may be used to accessorize clothing items." Nonetheless, "the existence of these third-party uses has not rendered Opposer's mark weak."

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


TTABlog comment: Opposer's licensee won a similar Section 2(d) case back in 2010 [TTABlogged here].

Text Copyright John L. Welch 2012.

Dallas Office of Haynes and Boone Seeks Trademark Associate

Haynes and Boone's Dallas office is seeking a junior to mid-level associate to join our Trademark, Domain Name, and Copyright practice group. Our nationally-ranked practice group, the largest in Texas, represents large, mid-size, and startup clients in a wide range of industries. The ideal candidate will have developed skills in trademark clearance, prosecution, counseling, and enforcement. Experience with TTAB and UDRP proceedings, licensing, and copyright matters are a plus. Prior experience in a large law firm setting is preferred. Candidates must have strong academic credentials and excellent writing skills. Candidates should enjoy working with others in a team oriented setting. References will be required. Interested applicants may contact Brandy Morrison at 214-651-5721 or may apply online here.

Erik Pelton's Summary of July 13th TPAC Public Meeting

Erik Pelton, at his blog, reports here on the July 13th meeting of the Trademark Public Advisory Committee (TPAC).


As to our favorite Tribunal, here is a quick summary of Erik's report. For more details, see Erik's post:

TTAB Update – Chief Judge Rogers:

Staffing Changes – Cheryl Butler is the TTAB’s Senior Attorney and editor of the TBMP, Ken Soloman is the Board’s new Managing Attorney, and Deborah Decker has moved to a new position with the Board.

Vacancy Announcements - The Chief Judge is reviewing applications for two available Administrative Trademark Judge (ATJ) positions. The Board received 45 applications from the most recent announcement. The Board also recently posted an announcement seeking applications for additional interlocutory attorneys (here).

Statistics – The Board is facing challenges keeping up with final decisions. Cases maturing to “Ready for Decision” (“RFD”) are projected to be 659 this year, but the Board is projected to decide only 500 of these cases by the end of the year.

Accelerated Case Resolution – No ACR cases were decided in the most recent quarter, but others are in the pipeline. The Board has decided seven (7) ACR cases so far this year, and they hope to decide three more by the end of the year.

Addressing Backlog – The Board is hiring judges. In addition, Judges and Interlocutory Attorneys are developing templates to use in decisions. The Board is also launching a program that would permit Examining Attorneys to do rotations with the TTAB to prepare memos in support of ATJs as they review the records in cases and other groundwork.

ABA Publishes Second Edition of TTAB Practice Guide

The ABA has published A Legal Strategist's Guide to Trademark Trial and Appeal Board Practice, Second Edition, edited by Jonathan Hudis. "A must-have resource for both the TTAB tyro and veteran, this book combines legal exphttp://www.blogger.com/img/blank.gifertise with practical insights. Well-organized and plentifully annotated, it will make us all better TTAB practitioners." [quoting myself]. Order it here.

Now completely updated, this first-of-its-kind treatment provides invaluable analysis and practical insights from an array of experienced attorneys who practice before the U.S. Trademark Trial and Appeal Board. With chapters that are logically organized and clearly written, A Legal Strategist s Guide to Trademark Trial and Appeal Board Practice describes and analyzes each facet of Board practice. Topics covered include:

• Inter partes matters and prefiling considerations
• Pleadings and commencement of proceedings
• Disclosures and discovery
• Motion practice
• Trial procedures and rules of evidence
• The use of experts
• Briefs on final hearing and oral argument
• Appeals from final TTAB decisions
• Settlement, alternative dispute resolution, and accelerated case resolution
• Ethical issues when practicing before the Board

Each chapter concludes with a valuable checklist of items that the practitioner should bear in mind during each stage of a Board proceeding.

Precedential No. 23: TTAB Affirms 2(a) False Connection Refusal of BENNY GOODMAN COLLECTION

The Board affirmed a Section 2(a) refusal to register the mark BENNY GOODMAN COLLECTION THE FINEST QUALITY (stylized), shown below, for fragrances, cosmetics, leather goods and clothing, finding that the mark falsely suggests a connection with the late band leader, composer, and clarinetist, Benny Goodman. In re Jackson International Trading Co. Kurt D. Bruhl GmbH & Co. KG, 103 USPQ2d 1417 [precedential].


Examining Attorney Linda M. King, relying on various Internet websites and references, maintained that Benny Goodman "had a very long and successful career as a musician and bandleader, with a reputation that continues to this day." Furthermore, she asserted that the Estate of Benny Goodman continues to protect his intellectual property rights.

The Board applied its four-part test in assessing whether Section 2(a) barred registration:

1. The mark is the same as, or a close approximation of, the name of or identity previously used by another person;

2. The mark would be recognized as such because it points uniquely and unmistakably to that person;

3. The person named by the mark is not connected with the activities performed by the applicant under the mark; and,

4. The prior user’s name or identity is of sufficient fame or reputation that a connection with such person would be presumed when applicant’s mark is used on applicant’s goods.

As to factor (1), the Board not surprisingly found that the applied-for mark is a close approximation of the name BENNY GOODMAN.

As to factor (2), the Board noted that performers commonly capitalize on their renown by licensing their names for collateral products, and so it found that consumers would associate Applicant's goods with the "well-known bandleader, composer and clarinetist."

Applicant argued that no one under 40 would know Benny Goodman, and moreover that there are Benny Goodmans "galore" on Facebook. However, Applicant failed to provide any evidence to support these assertions, and thus it failed to rebut the PTO's evidence.

As to factor (3), there was no evidence of a connection between Benny Goodman and Applicant's business.

And as to factor (4), the Board concluded that "Benny Goodman remains a well-known figure among a sufficient segment of the population as to support finding a false suggestion of a connection."

Applicant contended that this case is similar to the Maria Callas case [TTABlogged here], in which a Section 2(a) false association refusal was reversed because there was no evidence that any entity with rights in the deceased singer’s name existed. However, here the evidence showed that CMG Worldwide holds itself out as the exclusive business representative for the estate of Benny Goodman. Indeed, Applicant itself acknowledged that it is aware that there are heirs asserting rights in the name and persona of Benny Goodman

And so the Board affirmed the refusal under Section 2(a).



Text Copyright John L. Welch 2012.

TTAB Affirms Disclaimer Requirement of WET TECHNOLOGIES in Design Mark for Wet Blasting Machines

In a 37-page decision, the Board affirmed a requirement that Applicant disclaim the phrase WET TECHNOLOGIES in the mark shown immediately below, for "particle blast cleaning machines; machine tools for water blasting, descaling, derusting, wet lapping, wet peening, slurry processing, and deburring; wet etching machines;" and for rust removal. The application contained three classes of services, but Applicant failed to pay the full $300 appeal fee; since it paid only $200, the Board considered only the first two classes, and it dismissed the appeal as to the third class. In re Wet Technologies, Inc., Serial No. 77135323 (July 20, 2012) [not precedential].


Applicant disclaimed the words "WET" and "TECHNOLOGIES" separately, but the PTO insisted on a disclaimer of the phrase "WET TECHNOLOGIES." Applicant refused, claiming that the PTO was "estopped" from requiring the disclaimer and that the phrase is a unitary, non-descriptive term.

As to the estoppel argument, Applicant was all wet. It maintained that the Board cannot require a disclaimer of the phrase two years after requiring separate disclaimers of "wet" and "technologies."Had the PTO made the requirement earlier, Applicant asserted, the matter would have been resolved "in a much timelier fashion."

The Board pointed out that Applicant cited no authority for its argument, and the Board found none. With only one exception, the PTO is not barred from raising a new refusal or requirement after a first Office action: that is in the case of a Section 66(a) or Madrid Protocol application, as to which the PTO must raise any ground for refusal within 18 months from receipt of the application from the International Bureau of WIPO. Indeed, the PTO has a duty to correct its own errors to avoid issuing a registration contrary to law. The PTO is expected to raise all potential issues in a first Office action, but in cases of "clear error" new refusals or requirements may be made. The determination of "clear error" is left to the discretion of the Examining Attorney and his or her supervisors.

As to its "unitary" argument, Applicant urged that the wording "wettechnologies" is a single compound word, not a phrase. The Board, however, noted that the words "wet" and "technologies" are displayed in different colors, one inside and one outside the circle design. Moreover, the words and the design are not so integrated as to comprise a visual or conceptual whole that cannot be separated.

As to whether WET TECHNOLOGIES is merely descriptive of Applicant's services, the Board declined to treat the earlier disclaimer of "WET" and "TECHNOLOGIES" as a concession that those words are descriptive, but it nonetheless found that the words are indeed descriptive. Discovery definitions and website evidence demonstrated same. Furthermore, the combination of the two words conveys no meaning different from the two separate words. The Board rejected Applicant's argument that the words are "unusually arranged," have a "rhyming pattern," or have "other sound" so as to create a distinct impression.

And so the Board affirmed the refusal to register based on Applicant's failure to disclaim WET TECHNOLOGIES. Applicant' was allowed the usual thirty days to submit a proper disclaimer, in which case this decision will be set aside.

Text Copyright John L. Welch 2012.

Despite Sophisticated Purchasers, TTAB Finds PREVAIL Confusingly Similar to PEEK PREVAIL for Medical Implants

Applicant Vibrynt put up a gallant but losing effort in this Section 2(d) appeal from a refusal to register its applied-for mark PREVAIL for "medical devices, namely, abdominal implants and delivery systems therefor." The Board found the mark likely to cause confusion with the registered mark PEEK PREVAIL for "surgical implants comprising artificial material." In re Vibrynt, Inc., Serial No. 77701760 (July 20, 2012) [not precedential].


The marks: Vibrynt contended that PEEK is the dominant portion of the cited mark, but the Board found the marks similar in their entireties. Although the first portion of a mark the more likely to be remembered, here the word PEEK may have some suggestive descriptive connotation (i.e., polyether ether-ketone). In any event, the cited mark includes Applicant's mark in its entirety.

As to meaning, the term PEEK may give the cited mark a "more specific meaning" in the medical field, but both marks "suggest that the respective goods will assist a patient in prevailing over a medical infirmity."

Vibrynt pointed to a number of third-party registration, uses, and business names, as well as one website, involving use of PREVAIL in the medical or healthcare fields, but none of them referred to surgical implants. Moreover, there was no showing of the extent of use of PREVAIL by third parties. In short, this evidence was of minimal value.

The goods: The Board agreed with Examining Attorney Barbara A. Gaynor that Registrant's goods are not, as Vibrynt urged, limited to orthopedic implants. The identification of goods in the registration are not so limited, and must be construed to include Vibrynt's abdominal implants. This, the Board noted, is a "critical fact" in its analysis.

Vibrynt submitted nine declarations distinguishing abdominal implants from orthopedic implants. It argued that the word PEEK refers to the organic thermoplastic "polyether ether ketone," which is a biomaterial used with orthopedic implants. The Board, however, refused to allow a restriction of the goods of the cited registration. Although extrinsic evidence may be considered when an identification of goods is unclear, here there is no ambiguity in the registration. In fact, "surgical implants comprising artificial material" is an exact identification included in the Acceptable Identification of Goods and Services Manual.

Sophistication: The Examining Attorney conceded that the goods would be purchased with care, after some research and discussion. Nonetheless, the Board pointed out once again that "even sophisticated purchasers are not immune to source confusion, especially in cases such as the instant one involving similar marks and related goods." [This last statement seems to eliminate sophistication of purchasers as a factor in the du Pont analysis - ed.].

TTABlog comment: The Board noted that "the principal problem with applicant's case ... is registrant's broadly worded identification." Would a Section 18 modification or amendment of the registration, limiting it to orthopedic implants, make a difference in the 2(d) analysis?

Text Copyright John L. Welch 2012.

Finding CORVUS and CORVO Confusingly Similar for Wine, TTAB Sustains 2(d) Opposition

The TTAB often states that when the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likelihood of confusion. That reasoning resulted in the Board sustaining this opposition to registration of the mark CORVUS & Design, shown immediately below, for "wines," on the ground of likely confusion with the registered mark CORVO for wine. Duca di Salaparuta S.p.A v. Corvus Cellars LLC, Opposition No. 91191848 (June 26, 2012) [not precedential].


Applicant Corvus Cellars lamely argued that the goods have a different target market due to the price points, type of wine represented and geography of the fruit (Applicant in Benton City, Washington; Opposer in Sicily), and different channels of advertising and sales. Of course, that was all irrelevant because the involved application and registration have no limitations on channels of trade, type of wine, etc. Since the goods are admittedly identical, the Board must presume that they travel in the same channels to the same classes of consumers.

As to conditions of sale, Applicant urged that its "$50 wines cannot be considered an impulse purchase," but there was no limitation in its application (or in the cited registration) as to price.

Opposer claimed that its mark is famous, but it failed to provide sales or advertising figures. Several media references were not enough to satisfy the high burden of proof for establishing fame. Nonetheless, the Board found it to be a "strong" mark, apparently based on its arbitrariness for wine: "corvo" means "raven" in Italian, and there was no evidence of third-party use that would suggest that the word has any meaning for wine.

As to the marks, the Board noted that since Opposer's mark is registered in standard character form, it is "entitled" to use it in any form. As to Applicant's mark, the Board not surprisingly found CORVUS to be the dominant element, since that is how customers will call for the product. The four letters that begin each mark will have a greater impact than the letters that end each mark. The Board therefore concluded that the similarities outweigh the differences.

Opposer maintained that "corvus" (the name of the Crow constellation) and corvo (raven) have similar connotations, and pointed out that the applied-for mark includes a depiction of a black bird. The Board, however, opined that most consumers would not know the meaning of either word, and would probably think the words have no meaning. If they did know the meaning of the terms, the bird design would certainly reinforce the similarity between the marks.


Finally, the Board pointed out that because wine is a widely available consumer item, the potential for confusion is high. Noting that consumers of wine may be unsophisticated, the Board found confusion likely, and it sustained the opposition.

TTABlog note: This was a loser from the git-go for the Applicant.

Text Copyright John L. Welch 2012.

Test Your TTAB Judge-Ability: Which One of these Section 2(d) Refusals Was Reversed?

Readers did well on Wednesday's mere descriptiveness test. So try your skill on these five Section 2(d) appeals. As previously noted, some say that one may predict the outcome of a likelihood of confusion case just by looking at the marks and the goods or services involved. How do you think these five cases came out? By the way, do you see any "WYHA?" cases here?


In re Insurance Auto Auctions, Inc., Serial No. 77663407 (July 5, 2012) [not precedential]. [I-BID LIVE for “providing real-time online auction services, namely allowing potential buyers of salvage vehicles to bid in real time over the internet along with other live and internet bidders” [LIVE disclaimed] refused registration over the mark shown immediately below for "computerized on-line retail store services in the fields of automotive collectibles, memorabilia, and apparel; [and] organization of internet auctions” [MOTORS disclaimed]].


In re Shurtech Brands, LLC, Serial No. 85171209 (July 5, 2012) [not precedential]. [Refusal of SHAPE for “painter's masking tapes in roll, sheet and pad form for use in painting interior building walls and woodwork,” in view of the identical mark for “paints and lacquers”]

spilled paint
In re Airborne Athletics, Inc., Serial No. 76699839 (July 2, 2012) [not precedential]. [DRILL WIZARD for “athletic training equipment, namely, computerized controls sold as a component of ball-delivery training machines for setting up and executing machine assisted training routines for ball sports” [DRILL disclaimed], refused registration in view of SHOT WIZARD for “basketball training devices, namely, devices for placing over basketball rims to aid in shot training” [SHOT disclaimed]].


In re The Trenton Corporation, Serial No. 77555997 (June 26, 2012) [not precedential]. [GUARD-WRAP on “coatings and chemical compounds, namely, anti-corrosion and protective coatings for metal structures, pipes, piping, bridges, and aboveground and underground utility structures,” refused registration over GUARDWRAP for “barrier material, namely, flexible plastic sheeting, used in the construction industry to protect structures from wind and moisture”].


In re Donald E. Moriarty, Serial No. 77946129 (June 26, 2012) [not precedential]. [HAUT COZEES for “clothing, namely, pants, denim pants, cargo pants, capri pants, stretch pants, jogging pants” refused registration in view of COZEEZ for “slippers”; “sleeping garments, namely, pajama tops and bottoms, nightgowns, sleepwear, [and] night shirts”; and “baby newborn and infant layette apparel, namely, creepers, hats, booties, blankets, rompers, coveralls, outwear jackets”]



TTABlog hint: This is not an easy test, is it? The answer is found in the first comment.

Text Copyright John L. Welch 2012.

"METRO LIVING & Design" Not Descriptive of Real Estate Brokerage Services, Says TTAB

In this "fairly close" case, the Board dismissed a two-pronged opposition to registration of the mark METRO LIVING & Design for real estate brokerage serves, finding that Opposer had failed to meets is burden to prove mere descriptiveness under Section 2(e)(1) or geographical descriptiveness under Section 2(e)(2). K. Hov IP II, Inc. v. Jonathan Benner-Ortega d/b/a Metro Living, Opposition No. 91185619 (June 26, 2012) [not precedential].


Mere descriptiveness: Opposer claimed that the word portion of the mark "immediately conveys the message that Applicant's services assist home buyers in finding housing that provides an attractive lifestyle in a metropolitan area." Furthermore, the design portion, depicting certain famous federal buildings [can you name them?], makes it clear that the services are offered in the Washington, D.C. area.

The Board, however, agreed with Applicant that the mark is only suggestive of the services. Recognizing that there is a "fine line" between the merely descriptive and the suggestive, the Board acknowledged that this determination is often subjective and not an "exact science." Here, the mark fell on the suggestive side.

The term “metro” is susceptible of various, albeit similar meanings, including “a large, sprawling metropolitan area” or “urbane,sophisticated, excitingly varied, cosmopolitan.” Likewise, the term “living” may be perceived as “dwelling in a particular place” as well as “conducting one’s life in a particular manner.” The mark does not immediately describe any specific characteristic or feature of applicant’s real estate brokerage services with any degree of particularity. At most, the mark suggests that use of applicant’s real estate brokerage services may result in some undefined, amorphous urban lifestyle.

The Board concluded that the meaning of the mark will vary from consumer to consumer, and does not directly tell the consumer anything other than to suggest that the services "will result in an undefined lifestyle in an urban environment." [Gee, that describes my life exactly - ed.].

Since the mark does not immediately describe any characteristic or feature of real estate brokerage services, it is not merely descriptive of them. Resolving any doubt in Applicant's favor, the Board reversed the Section 2(e)(1) refusal.

Primarily geographic descriptiveness Opposer urged that the landmarks depicted in the mark would be recognized as being located in Washington, D.C. The Board, however, found that Opposer had failed to prove that the primary meaning of the image is the geographic location, because these monument create a "separate readily understood meaning that is not geographic:" national pride and patriotism, the federal government, the seat of power of the United States, and the memory of historical persons and events that shaped this country. In light of these strong concepts conveyed by the image, the Board could not conclude, in light of meager evidence, that the mark is primarily geographically descriptive.

TTABlog comment: I get the point that Opposer's evidence on the geographic point was weak, but shouldn't the meaning of the image have been considered in the context of Applicant's services, and not in the abstract? What do national pride and patriotism have to do with real estate brokerage services? In context, doesn't the image say "Washington, D.C." And isn't the subway in D.C. called the "metro?" I think this is one of those cases where the Board was not going to rule in favor of a party who put in a feeble effort - which is all Opposer did on the geographic descriptiveness issue.

Text Copyright John L. Welch 2012.

Test Your TTAB Judge-Ability: Which One of these Mere Descriptiveness Refusals Was Reversed?

The TTAB reversed the PTO in one of these four Section 2(e)(1) mere descriptiveness cases summarized below. [Actually, the fourth refusal was based on Applicant's refusal to disclaim "I/O"]. Let's see how you do with them. Do you see any WYHA's here?


In re Madetoorder, Inc., Serial No. 77861639 (June 29, 2012) [not precedential]. [Refusal of MADETOORDER for "“on-line design services for others in the field of personalized and custom design transfers, namely, text, pictures and graphics for imprinting on apparel"].


In re HEB Grocery Company, LP, Serial No. 85027087 (June 29, 2012) [not precedential]. [Refusal of XTREME HEAT for “cheese flavored snacks, namely, cheese curls"].

cheese puffs
In re Mata Dolores, Serial No. 85309094 (June 28, 2012) [not precedential]. [Refusal to register POCKET HAT for hats [HAT disclaimed]].

fedora
In re IO Data Centers, LLC, Serial No. 77902194 (June 26, 2012) [not precedential]. [Refusal to register I/O ANYWHERE for "high density enclosures for computer servers and computer equipment" based on Applicant's failure to disclaim "I/O"].


TTABlog hint: No hint this time. You're on your own.

Text Copyright John L. Welch.

USPTO Seeks Applications for TTAB Interlocutory Attorney Position

The USPTO is seeking applications for the position of Interlocutory Attorney at the Trademark Trial and Appeal Board. Details here. Application period ends July 25, 2012.

TTAB Reverses Failure-to-Function Refusal of MONTICELLO for House Paint

The PTO refused registration of MONTICELLO for house paint on the ground that the term "as used on the specimens of record, serves solely as a color designation and does not serve a trademark function." The Board reversed, observing that even if a term identifies one particular shade or color, it may still function as a trademark if used in a trademark manner by the Applicant. In re Thomas Jefferson Foundation, Inc., Serial No. 77967242 (June 29, 2010) [not precedential].

(click on photo for larger image)
The determination of whether a term functions as a mark is made based upon the specimens of use. [Doh! - ed.]. The Board holds that "use of a proposed mark to identify one particular style or color shade for the goods, e.g., lipstick, paints, etc., does not necessarily render the term unable to function as a trademark." The Board found this case similar to In re Clairol Inc., 173 USPQ 355 (CCPA 1972):

In the Clairol decision, the predecessor of our primary reviewing court reversed the Board and found SWEDISH CRYSTAL for hair color products registrable because it was a "coined and completely arbitrary term” and was used as a trademark despite also being a color designation and always followed by wording, "light muted ash."

Here, like “Swedish Crystal,” the term “Monticello” has no meaning or suggestive connotation with respect to a color: unlike, say, "lemon" or "banana." More importantly, applicant’s manner of use (on the specimen above) of MONTICELLO would cause viewers to perceive the term as more than just a color designation. [Applicant's original specimen of use was a paint chip or swatch card with "Monticello Yellow" on one side, and the color swatch on the other. That didn't cut the mustard - ed. ].

Applicant's substitute specimen of use, a point-of-purchase placard, displayed proper trademark use.

The point-of-purchase placard ... shows the wording “Monticello ™ Yellow” on a can of paint. On the adjoining page, the wording “Ralph Lauren Introduces Monticello ™ Yellow” appears prominently at the top. The term “Monticello” is also used on both pages in reference to the historic home of Thomas Jefferson, and discusses how the home inspired the paint. We find that consumers who receive this point-of-sale placard will perceive applicant’s use, through its licensee, of the term “Monticello” as a term used uniquely by applicant to identify and distinguish applicant as the source of that particular paint. The term “Monticello” is also used on both pages in reference to the historic home of Thomas Jefferson, and discusses how the home inspired the paint.We find that consumers who receive this point-of-sale placard will perceive applicant’s use, through its licensee, of the term “Monticello” as a term used uniquely by applicant to identify and distinguish applicant as the source of that particular paint.

And so, even though MONTICELLO designates a single shade of yellow paint, as opposed to a line of various paints in different colors, the Board ruled that the term MONTICELLO also functions as a trademark for Applicant's house paint.

TTABlog comment: Be careful not to confuse MONTICELLO YELLOW with MELLOW YELLOW, the latter being a song by Donovan.


Text Copyright John L. Welch 2012.

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

Some say that one may predict the outcome of a Section 2(d) likelihood of confusion case just by looking at the marks and the goods or services involved. Once again, let's put that theory to the test with the five Section 2(d) appeals summarized below. How do you think these came out? By the way, do you see any "WYHA?" cases here?


In re John Shope, Serial No. 77671449 (June 22, 2012) [not precedential] [Refusal of JOHN SHOPE'S SINISTER INDUSTRIES for motorcycles and structural parts and motorcycle customization and maintenance services [INDUSTRIES disclaimed], in view of the registered mark SINISTER CYCLES for "retail store services featuring motorcycle parts and accessories" [CYCLES disclaimed].


In re Restoration Hardware, Inc., Serial No. 85064187 (June 21, 2012) [not precedential]. [MAXWELL for "leather furniture, namely, chairs, loveseats, couches, sofas, sleeper sofas, ottomans, chaise lounges," refused registration over MAXWELL and MAXWELL HOME & GARDEN, owned by one entity, for fabric products, including upholstery fabric, chair covers, throws, and cushion covers].


In re Delta Dental of California, Serial No. 77921755 (June 21, 2012) [not precedential]. [Refusal of MY SMILEKIDS (in standard character form) for "providing a website featuring information in the field of dental care; providing information in the field of dental care;" in view of the registered mark MYSMILE for “providing health information"].


In re Targus Information Corporation, Serial No. 77954823 (June 15, 2012) [not precedential]. [WHO’S CALLING ME? (in standard character form) for "application service provider in the field of nondownloadable software featuring information about inbound calls made through cellular phones, telephones," in view of the registered mark WHO'S CALLING, in standard character and design form, for call tracking software and services].


In re Annabelle’s Natural Ice Cream & Yogurt, Inc., Serial No. 85152285 (June 14, 2012) [not precedential] [Refusal to register the mark shown below [NATURAL ICE CREAM disclaimed] for "ice cream," in light of the registered mark ANNABELLE’S for "confectionery, namely candy"].


TTABlog hint: They all came out the same way.

Text Copyright John L. Welch 2012.

ABA Webinar, July 26: Accelerated Case Resolution Before the Trademark Trial and Appeal Board

The ABA Section of Litigation will present a webinar on the TTAB’s Accelerated Case Resolution (ACR) procedure on July 26th. Mary Margaret L. O’Donnell, Blue Filament Intellectual Property, LLC, Birmingham, MI, will serve as moderator, and TTAB Judge Peter Cataldo and Interlocutory Attorneys Cheryl Goodman and George Pologeorgis as panelists. Date: July 26. Time: 1:00 to 2:30 PM (Eastern). Details and registration here.

If you’ve been wondering how you can more efficiently pursue merits determinations in inter partes proceedings before the Trademark Trial and Appeal Board (TTAB) of the USPTO, this ABA webinar is just the ticket. The panel will discuss using the various efficiencies and alternatives to traditional discovery and trial that characterize opposition and cancellation cases proceeding under the TTAB’s Accelerated Case Resolution (ACR) process. If you want to streamline and position opposition and cancellation proceedings for more efficient, economical and focused presentation of the facts and evidence that are necessary to resolve the merits of a case, and are involved in a case with an adversary seeking the same savings, the ACR process may be right for you. ACR can save parties time and resources, and typically will result in faster resolution than a standard TTAB proceeding utilizing traditional discovery and trial methodologies.

Our authoritative panel will provide an overview of the ACR process and discuss how ACR can help parties achieve resolution on an expedited basis. We will examine factors to consider in determining whether ACR is right for a particular situation, and will discuss timing, procedures, and strategies to keep in mind when electing and using Accelerated Case Resolution.

TTAB Affirms Genericness Refusal of ADMEDIA for ... Guess What?

The TTAB affirmed a refusal to register the proposed mark ADMEDIA on the Supplemental Register, finding it to be generic for various advertising and marketing services. Despite minimal evidence of use of the compound term, there was "ample evidence to support the
relevant public’s understanding of the term ADMEDIA to refer to the genus of services" In re ad.com Interactive Media, No. 77832668 (June 18, 2012) [not precedential].


The Board rejected the genera proposed by the PTO and Applicant, and instead found that the genus is appropriately defined by Applicant's recitation of services, re-organized and "condensed" as follows:

Advertising agencies; and Services of advertising agencies; Preparing and placing advertisements for others; Preparation and realization of media and advertising plans and concepts; Advertising, advertisement, marketing, promotion and publicity services; Advertising consultation; On-line advertising services for others; Advertising services, namely, promoting the books of others in the field of law by means of news and reviews regarding same; Advertising services, namely, cost-per-action on-line advertising; Advertising via electronic media and specifically the internet; Pay per click (PPC) advertising management services; Providing and rental of advertising space on the internet and websites; Provision of space on websites for advertising goods and services; Mediation of advertising.

The Board next found the relevant public to be "those entities who advertise and market their products and services whether through traditional means or via online or digital methods." There was no evidence that the relevant public includes end users or the general public.

The Board then turned to assessing the meaning of ADMEDIA to the relevant public. The Board applied the Gould analysis to this compound term, whereby "the USPTO may satisfy its burden of proving a term generic by producing evidence that each of the constituent words is generic, and that 'the separate words joined to form a compound have a meaning identical to the meaning common usage would ascribe to those words as a compound.'"

Here the joining of the terms "ad" and "media" does not create any new meaning or impression beyond that of the constituent words. The Examining Attorney relied on dictionary definitions, third-party websites, third-party registrations containing disclaimers of "ad" or "media," and Lexis-Nexis articles, the latter demonstrating that "not only is the term 'ad media' used as a variant of 'advertising media,' it also is used in a broad sense to refer to an industry which provides the types of services offered by applicant and covered in the genus established for this case."

The Board concluded that ADMEDIA is generic with respect to at least some of the services in the genus, and therefore registration was properly refused.

The recitation of services relates to a wide variety of advertising, marketing, promotion and publicity services. By their nature, such services necessarily include developing media strategy, the selection and placement of advertising/ad media, as well as the “preparation and realization of media and advertising plans and concepts.” Thus, within the broad categories set forth in the genus of services are services that are directly related to and encompassed by the advertising/ad media services identified by the evidence.

TTABlog comment: I had a hard time staying awake while reading this decision and writing this blog post. But advertising always has that effect on me.

Text Copyright John L. Welch 2012.

Test Your TTAB Judge-Ability on this Appeal from a Section 2(d) Refusal

The PTO refused registration of the mark MUZZIE'S & Design (shown first below) for "retail clothing boutiques featuring young women's evening gowns, cocktail dresses and evening footwear and accessories ...," finding the mark likely to cause confusion with the registered mark MUZZYS in stylized form (second below) for "clothing, namely hats, shirts and jackets," and for "retail store ... featuring motorcycle parts and clothing manufactured by others." Applicant appealed, arguing that Registrant's clothing comprises motorcycle apparel, while its boutiques attract young women seeking formal attire. How do you think this came out? In re Muzzie's, Inc., Serial No. 85065751 (June 21, 2012) [not precedential].


Applicant emphasized the differences in spelling, and argued that its mark is "very feminine in appearance," whereas the cite mark "uses a completely different stylization that is quite masculine in nature ...." The Board was unmoved. It observed that the literal portion of a mark is normally accorded greater weight in the likelihood-of-confusion analysis, and here the literal portions are pronounced identically. That alone may suffice to support a Section 2(d) finding. Moreover, the Board agreed with the PTO that Applicant over-emphasized the differences in font, because consumers may believe that either applicant or registrant has expanded its business to include variations of its original mark.

As to the goods and services, the fact that Applicant restricted its services is irrelevant, since the "retail store" services of the cited registration are broad enough to encompass applicant's "retail clothing boutiques ...." Furthermore, based on third-party registration evidence submitted by the PTO, Applicant's class 25 clothing products are related to Registrant's retail store services.

Applicant pointed to Registrant's website, where the "hats, shirts and jackets" of the registration "all identify motorcycle related apparel sold to motorcycle enthusiasts," in contrast to Applicant's formal attire for young women. This reliance on extrinsic evidence to narrow the scope of Registrant's goods is, of course, improper. "The law is clear that the question of likelihood of confusion must be determined based on the identification of goods in the application and cited registration, regardless of what the record may reveal as to the actual nature of the goods, the particular channels of trade or the class of purchasers to which the goods are directed."

Finally, Applicant pointed to a now-cancelled registration that Applicant owned for the same mark for "retail clothing boutiques," asserting that the involved marks co-existed on the register for more than six years without any instances of confusion. The Board, however, pointed out once again that a cancelled registration is not entitled to any statutory presumptions, that the PTO and the Board are not bound by the prior decisions of another examining attorney once the registration has lapsed, and that in this ex parte context there is no opportunity for the registrant to be heard on the issue of actual confusion.

And so the Board affirmed the refusal to register.

Text Copyright John L. Welch 2012.

CAFC Affirms TTAB Ruling that WAGGIN' STRIPS and BEGGIN' STRIPS Are Confusingly Similar for Pet Treats

The CAFC has affirmed the Board's non-precedential decision of March 31, 2011 [TTABlogged here], finding the mark WAGGIN' STRIPS for pet food and edible pet treats [STRIPS disclaimed], likely to cause confusion with the registered mark BEGGIN' STRIPS for dog snacks [STRIPS disclaimed]. Circuit Judge Dyk concurred on the Section 2(d) issue but disagreed with the "flawed process" by which the TTAB reached its decision. Midwestern Pet Foods, Inc. v. Societe Produits de Nestle S.A., 103 USPQ2d 1435 (Fed. Cir. 2012) [precedential].


Likelihood of confusion: The appellate court ruled that the Board's finding of likelihood of confusion was supported by substantial evidence.

The Board properly accorded the BEGGIN' STRIPS mark a broad scope of protection, based on use of its mark since 1988 and nationwide advertising, marketing, and sales, concluding that the mark has enjoyed "at least a high degree of recognition."

The two marks at issue have the same format, structure, and syntax, and similar pronunciations, cadences, and intonations. Moreover, "the verbs 'wag' and 'beg' both suggest dog behavior, and in particular both convey the excitement exhibited by dogs during feeding." The Board reasonably concluded that the implicit reference to "bacon" in Opposer's mark did not detract from the similarity of the marks in sound and meaning.

The marks are used in connection with identical products that travel in the same channels of trade to the same classes of consumers. The products are inexpensive items that would be purchased with no more than ordinary care.

Finally, although Opposer Nestle did not introduce survey evidence, neither the TTAB nor the CAFC has required survey evidence in order to show a likelihood of confusion. No inference may be drawn against Opposer for failing to provide survey evidence.

Evidentiary issue: The disagreement between the panel majority and Judge Dyk centered on Applicant Midwestern's objection to the admission of certain documents relating to sales and marketing activities that Nestle had not produced during discovery. Nestle had objected to the production requests, including one seeking "all documents ... which [Nestle] may rely on," on various grounds, including the breadth of the requests.

Because this proceeding was commenced prior to November 2007, the "old" TTAB rules applied, and Nestle (according to the panel majority) was not "obligated to specify in advance of trial the evidence it intended to present in support of its case or to identify which witnesses it intended to call." Moreover, as to the objections, Midwestern was required to move to compel production in order to test the sufficiency of Nestle's responses. By failing to so move, Midwestern had waived its objections to admission of the documents.

The majority observed that, had Nestle stated that it had no documents in response to a request, then it would not be later allowed to introduce responsive documents into the record.

In dissent, Judge Dyk maintained that under the Federal Rules of Civil Procedure, a party is required to produce the documents on which it intends to rely at trial. [The majority pointed out that the TTAB has adopted the Federal Rules in most, but not all, respects, and has retained discretion to adopt rules suited to its own proceedings and the interest of the parties before it]. Once Nestle determined that it would use these documents at trial, it was obligated to supplement its discovery responses under Rule 26(e) by producing the documents upon which it would rely.

TTABlog comment: This decision would seem to have little impact on the Board's procedure, since it deals with a pre-November 2007 case, and since the panel majority gave its blessing to the Board's discovery procedure.

Text Copyright John L. Welch 2012.

TTAB Amends GUANTANAMERA Decision to Remove Derogatory Statements

On the motion of Opposer's counsel, the Board amended its decision in Corporacion Habanos, S.A. v. Guantanamera Cigars Company, Opposition No. 91152248 [precedential], to remove certain "erroneous" statements regarding Opposer's submission of evidence, as well as the Board's reprimand of counsel based thereon. The amended opinion, dated June 12, 2012, is here. The original decision was TTABlogged here.


In its February 16, 2012 precedential decision, the Board accused Opposer's counsel of "burying" inadmissible evidence amongst certain admissible evidence in a "purportedly handy attachment to its brief," in an "attempt to hoodwink us into considering material that opposer did not make of record." The Board proclaimed that "[l]ittle is left in the integrity of a proceeding if the tribunal cannot trust the accuracy of submissions or the veracity of a party’s representations."

In the request to amend the decision, filed on March 1, 2012 (here), Opposer's counsel, David B. Goldstein, pointed out the errors in the Board's factual statements regarding Opposer's submission of testimony. He stated that "[t]he Board’s erroneous statements, and its subsequent unfounded reprimand, in its precedential, to be published opinion are plainly damaging to undersigned counsel’s previously unblemished professional reputation, both before the Board and elsewhere."

The Board granted Opposer's uncontested request and has now removed, without further comment, the following text from the original decision (at pages 6-8):

Opposer submitted as exhibit 1 to its main brief "[a] true and correct copy of the excerpts of the Armenteros [district court discovery] deposition and the deposition exhibits and excerpts thereof that are cited" in the brief. As indicated above, Mr. Armenteros is a tobacco retailer and educator. Applicant offered Mr. Armenteros as an expert witness in the district court; his deposition is covered by the parties’ stipulation regarding various depositions. Opposer introduced into the record certain excerpts from the Armenteros discovery deposition, some during opposer’s trial period and others during its rebuttal period. However, after spending some time reviewing the submission, we discovered that approximately thirty pages in exhibit 1 were not submitted to the Board during the testimony period, and thus were never made of record. It appears to us that opposer sought to have us consider those pages in exhibit 1 - which were not in evidence - by burying them among other pages which were properly submitted in evidence in this purportedly handy attachment to its brief. We condemn in the strongest possible terms opposer’s attempt to hoodwink us into considering material that opposer did not make of record, and which is helpful to opposer’s case. Little is left in the integrity of a proceeding if the tribunal cannot trust the accuracy of submissions or the veracity of a party’s representations. As for those pages in exhibit 1 which opposer properly introduced in evidence, it was not necessary to resubmit them with opposer’s brief. The Board has repeatedly advised parties that it is not necessary to submit duplicates of material that is already in the record. Although the submission, with a brief, of one or two pages of particularly important material, along with clear and accurate notations of where in the record the material can be found, can be useful, in general, the submission of large amounts of material as exhibits to briefs is not helpful.

The Board also removed the very next, relatively mundane, sentence: "Next, we turn to the documents submitted by applicant."

Text Copyright John L. Welch 2012.

San Francisco Seminar/Webcast July 16th: "Riding the Rollercoaster of New gTLDs: Enforcing and Policing a Brand in the New World"

The Bar Association of San Francisco (BASF) and the San Francisco Intellectual Property Law Association (SFIPLA) are co-sponsoring a seminar entitled: "Riding the Rollercoaster of New gTLDs: Enforcing and Policing a Brand in the New World." Date/Time: Monday, July 16th, 2012, Noon-1:30pm. Where: BASF 301 Battery Street, San Francisco, CA. Register here to attend, or sign up for the webinar here.

Moderator: Mary L. Shapiro, Mary L. Shapiro Law PC

Panelists:

Steve K. Andersen, Vice President, International Development, International Centre for Dispute Resolution

Jefferson Scher, Partner, Carr & Ferrell LLP

Alica Del Valle, Trademark Counsel, salesforce.com, Inc.


Program Content:

► Update on status of new gTLD Program

► Nuts and bolts of new gTLDs and how they affect brand protection

► Understanding how and when to make objections

► Best practices for enforcement

► What should I tell my clients

TTAB Reverses 2(d) and 2(e)(1) Refusals of "ATTORNEYPAGES" for Online Legal Directory

The Advice Company overcame of bifusal (i.e., two refusals) of its mark ATTORNEYPAGES for an on-line searchable directory of information of lawyers and legal services. The Board found the mark not likely to cause confusion with the Supplementally-registered mark ATTORNEYYELLOWPAGES.COM for overlapping services. And Applicant's Section 2(f) evidence was sufficient to support its claim of acquired distinctiveness. In re The Advice Company, Serial No. 77005059 (June 7, 2012) [not precedential].


Likelihood of confusion:The Board found the involved services to be legally identical, and therefore presumed that they are offered through the same trade channels to the same classes of purchasers.

Because the cited mark ATTORNEYYELLOWPAGES.COM is registered on the Supplemental Register, it is considered to be merely descriptive at the time of registration. Moreover, the Board found it to be "highly descriptive" of the services and therefore entitled to only a narrow, "quite limited" scope of protection. In view of this narrow scope, the Board found the marks to be distinguishable.

The Board then looked over a settlement agreement, submitted in redacted form, between Applicant and Registrant that arose out of a previous civil action, in which agreement the Registrant agreed to "release any claims concerning the ATTORNEYPAGES mark," while Applicant released its claims regarding the cited mark. The Examining Attorney contended that this "naked consent" has little probative value because it failed to state why the parties believed there is no likelihood of confusion, and how the parties would avoid confusion.

The Board agreed that this naked consent carries little weight, but it should not be ignored. The consent is actually an acknowledgement of a broader, arms-length agreement arising out of prior legal proceedings. These circumstances indicate that the issue of confusion was necessarily and seriously considered, and that the parties determined that confusion is unlikely.

Finally, the Board noted that Applicant owns an existing Supplemental Registration for the same mark for legally identical services. Although this factor is not as weighty as the others, it does point away from a finding of likely confusion.

And so, balancing the relevant du Pont factors, the Board found confusion unlikely and it reversed the Section 2(d) refusal.

Acquired Distinctiveness: Applicant proved use of its mark since 1998, averaging 150,00 unique visitors per month, with revenues growing to nearly $1.5 million in 2009. It advertises in legal periodicals and exhibits at national conventions.

The Board recognized that the assessment of Section 2(f) evidence is a subjective one based on the relative degree of descriptiveness, but the Board found the evidence sufficient in this case. Therefore, it reversed the Section 2(e)(1) mere descriptiveness refusal.

TTABlog comment: Name two places where a naked consent is given legal weight. Answer here.

Text Copyright John L. Welch 2012.

TTABlog Job Posting: Highly Experienced IP Attorney Seeks New Position, South Florida Preferred

Highly experienced IP attorney seeks law firm or corporate position. Prefers South Florida location but will consider working remotely or relocating. Extensive experience in national and international forums; protecting and enforcing domestic and international portfolios; domain dispute enforcement and defense. Portable book of business. Send inquiries to John L. Welch to arrange for an introduction.

WYHA? TTAB Finds AMERICA'S FAVORITE Confusingly Similar for Mustard and Ketchup

You might say that this appeal was no picnic for Applicant. The Board affirmed a Section 2(d) refusal of the mark AMERICA'S FAVORITE for mustard, finding it likely to cause confusion with the identical mark registered for ketchup. Applicant conceded that the goods are "somewhat related," but the Board found them to be not only related, but complementary. In fact, both Applicant (French's) and Registrant (Heinz) sell mustard and ketchup under their own brand names. Would You Have Appealed? In re Reckitt Benckiser LLC, Serial No. 85082505 (June 21, 2012) [not precedential].


Examining Attorney Katy Halmen provided Internet evidence and third-party registrations establishing that "mustard, ketchup and sauces are commonly offered by a single entity under a single mark." Moreover, when goods have complementary uses, and are often used together or purchased for the same or related purposes, "such goods have generally been found to be sufficiently related such that confusion would be likely if they are marketed under the same or similar marks." (Examples: bread and cheese; fresh produce and biscuits, cookies, wafers and candy [Huh? - ed.]; bread and frozen chicken parts [Really? - ed.]; sausage and cheese).


Applicant argued that AMERICA'S FAVORITE is a weak mark in light of various third-party registrations, but the Board noted two problems with that assertion: first, there was no evidence regarding the nature or extent of use of the third-party marks; and second, even weak marks are entitled to protection against likely confusion.

Finally, Applicant pointed to its prior registration, now cancelled, for the subject mark, which registration co-existed on the register with the cited registration for a half-dozen years. There were three problems with that argument: first, cancelled registrations have no evidentiary value in this context; second, there is no evidence that Heinz was aware of this registration or believed that there was any likelihood of confusion; and third, the Board is not bound by the prior decisions of examining attorneys in approving a particular mark for publication.

Balancing the du Pont factors, the Board found confusion likely and it affirmed the refusal.

Text Copyright John L. Welch 2012.

Test Your TTAB Judge-Ability: Is "CARDANO" Primarily Merely a Surname?

The PTO refused registration of CARDANO for various financial services, deeming the mark to be primarily a surname under Section 2(e)(4). The evidence showed that some 100 individuals in this country have the surname CARDANO. Applicant argued that the primary significance” of CARDANO is its association with Gerolamo Cardano, a Renaissance mathematician and physician, since the recited services are "“intricately tied with mathematics." How do you think this came out? In re Cardano Risk Management B.V., Serial No. 85230910 (June 7, 2012) [not precedential].


The Board followed Judge Seeherman's reasoning in her influential concurring opinion in In re Joint-Stock Company 'Baik', 84 USPQ2d 1921 at 1924 (TTAB 2007) [TTABlogged here], giving significant weight to the "extreme rareness" of the surname CARDANO. Judge Seeherman observed that the ...

purpose behind prohibiting the registration of marks that are primarily merely surnames is not to protect the public from exposure to surnames.... Rather, the purpose behind Section 2(e)(4) is to keep surnames available for people who wish to use their own surnames in their businesses....

Moreover, under the more traditional approach, the rareness of the surname makes it less likely that consumers will recognize it as a surname.

The Board noted that there were not any individuals with the surname CARDANO associated with Applicant. And there was no recognized non-surname meaning for CARDANO.

As to Applicant's reference to the Renaissance mathematician, the record failed to show that "Gerolamo Cardano is considered a well-known historical figure such that the proposed mark will be associated with the mathematician."

Finally, the PTO did not offer any evidence to show that CARDANO has the "look and sound" of a surname.

The Board ruled that, in light of the rareness of the surname, the likelihood that any individual with the surname CARDANO would seek to use that surname in a trademark for similar services or goods is greatly reduced. That factor outweighed the others, and so the Board reversed the refusal to register.

TTABlog comment: If "rareness" is the key factor under Section 2(e)(4), where does one draw the line between the marks barred by Section 2(e)(4) and those not barred? The Board is not likely to set some bright-line numerical boundary. For some further thoughts on the surname issue, see Section V of this article that I wrote a few years ago.

Text Copyright John L. Welch 2012

ALI-ABA Webinar, July 11: Trademark Dilution for Business Lawyers

ABA-ALI (now called ALI CLE) will present a webinar entitled "Trademark Dilution for Business Lawyers," on Wednesday, May 11th, from 1:00 to 3:00 PM. Register here. Panelists include Prof. Ken Germain and Philadelphia attorneys Roberta Jacobs-Meadway, Nancy Frandsen, and Manny Pokotilow.

Prof. Ken Germain
Chaired by Roberta Jacobs-Meadway of Eckert Seamans Cherin & Mellott (Philadelphia, PA), this video seminar will cover:

• What the business lawyer needs to know about dilution law
• How can the business lawyer help his/her clients in selecting business names and developing brands
• How can the business lawyer assist clients in evaluating claims of dilution
• Furthermore, the program will explore assessing options and risks when/if:
• There is no need for substantial identity for a dilution claim to stand
• The goods or services may be related (or the same) for a dilution claim to stand
• The remedies for dilution include damages, profits and fees, as well as injunctive relief

Joining Ms. Jacobs-Meadway will be Nancy Frandsen of Woodcock Washburn LLP (Philadelphia, PA), Manny Pokotilow of Caesar, Rivise, Bernstein, Cohen & Pokotilow (Philadelphia) and Kenneth Germain (of counsel at Wood, Herron & Evans (Cincinnati, OH).

TTABlog comment: Why, you may ask, did I post Ken Germain's photo in two consecutive posts? It's because there's nothing more confidence-inspiring than a man with glasses and a mustache.