TTAB Posts September 2012 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled five (5) oral hearings for the month of September, as listed below. The first four 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)]. The fifth hearing will be held at the University of New Hampshire School of Law in Concord, New Hampshire, as part of a trademark law program co-sponsored by the law school and the Boston Patent Law Association [details here]. Briefs and other papers for these cases may be found at TTABVUE via the links provided.

September 5, 2012 - 11 AM: City National Bank v. OPGI Management GP Inc./Gestion OPGI Inc., Cancellation No. 92050730 [Petition for cancellation of a registration for the mark TREASURYNET (based on Section 44(e)) for "providing information on financial information, namely corporate treasury and loan information and commercial real estate property management information via a global computer network," on the grounds of lack of bona fide intent and abandonment].

September 18, 2012 - 2 PM: Sunbeam Products, Inc. v. OSRAM GmbH, Opposition No. 91171206 [Opposition to OSTAR for "light emitting diodes; light emitting diode displays and display circuit modules; and components of the aforementioned goods" on the grounds of likelihood of confusion with, and dilution of, the registered mark OSTER for a wide variety of goods, including electric hair clippers, toasters, heat massage machines and food mixers].


September 19, 2012, 2012 - 2 PM: Fair Isaac Corporation v. ConsumerInfo.com, Inc., Opposition No. 91178303 [Opposition to registration of KNOW YOUR SCORE for "credit reporting services; credit information provided by electronic means; providing information in the financial and credit fields" on the ground of mere descriptiveness and lack of secondary meaning].


September 20, 2012 - 2 PM: In re Primerica, Inc., Serial No. 77931208 [Section 2(d) refusal to register PRIMERICA DEBTWATCHERS for "providing temporary use of a Web-based software application, marketed exclusively through the proprietary's sales force of independent contractor sales representatives and accessible only through proprietary's company-branded website, for assimilating financial information, namely, financial data provided directly by the customer and financial data obtained directly from the customer's consumer credit report, to permit the customer to formulate and calculate debt payoff plans" in view of the registered mark DEBTWATCHERS & Design for advice and counseling services for eliminating and reducing personal debt].


September 20, 2012 - 3:15 PM: Sheetz of Delaware, Inc. v. Doctor's Associates, Inc., Opposition No. 91192657 [Opposition to registration of FOOTLONG for "sandwiches" on the grounds of genericness or, alternatively, mere descriptiveness and lack of secondary meaning].


Text Copyright John L. Welch 2012.

COLONY Confusingly Similar to COLONY MEMBER ARGO GROUP & DESIGN, Says TTAB, Affirmingly

In another enervating clash of insurance company marks, the Board affirmed a Section 2(d) refusal of COLONY for "life insurance underwriting" on the ground of likely confusion with the registered mark COLONY MEMBER ARGO GROUP & Design for "insurance services, namely, writing commercial excess and surplus insurance" [GROUP disclaimed]. Despite Applicant Genworth Financial's vigorous arguments, the Board found that none of the relevant du Pont factors favored Applicant. In re Genworth Financial, Inc., Serial No. 77782734 (August 29, 2012) [not precedential].


The Board deemed the marks to be similar in appearance, sound, connotation, and commercial impression. In short, Applicant appropriated the dominant portion of registrant’s mark. The less prominent wording "Member Argo Group" in the cited mark merely explains the corporate identity of the registrant. Genworth argued that the "sail" design reinforces the ARGO GROUP house mark, since "ARGO"’ is "a well-known reference to the ship in which Jason sailed in quest of the Golden Fleece in Classical Mythology," but the Board refused to climb on board.

Arguing that COLONY is a weak formative, Genworth submitted five registrations in class 36 for marks that include the word COLONY, but none covered insurance services and the record was devoid of evidence of the nature and extent of use of the marks.

The Board concluded that consumers may believe that the mark COLONY is a shortened form of the cited mark.

As to the services, Examining Attorney Katherine C. Weigel proffered two third-party registrations covering both "life insurance and excess and surplus insurance," and Internet evidence showing seven companies offering both services. As to the Internet evidence, Genworth argued that the PTO's position "is akin to arguing that chewing gum and razor blades are similar or related products simply because grocery stores may offer both products." The Board was not moved: the fact that the involved services may be offered in different sections of the websites does not mean that the services are unrelated. "It is not uncommon for users to navigate a website by using links or tabs, which suggests that prospective consumers would be familiar with this arrangement and not consider any of the single websites necessarily akin to a grocery store."

The Board noted that that there are no restrictions in the recitation of services in the involved application and registration, and so it must consider that Applicant and Registrant "each can market its insurance services through direct sales as well as through agents, and that these related services can be offered to the same consumers." And don't forget that even sophisticated consumers are not immune to source confusion.

The lack of proof regarding actual confusion was entitled to little weight, since there was no evidence regarding the extent of use of applicant’s and registrant’s marks, or whether there have been meaningful opportunities for confusion to occur.

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

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 Pavestone Company, LP, Serial No. 77827139 (August 1, 2012) [not precedential] [Refusal of VENETIAN STONE "concrete building materials, namely, interlocking concrete pavers" [STONE disclaimed] in view of the registered mark VENEZIAN (in stylized form) for, inter alia, building stone, granite, paving stone, stone for building and construction].


In re Sick AG, Serial No. 85041954 (August 1, 2012) [not precedential] [VISTAL for housings for various electronic sensing devices, refused registration over VISTA for "optical and/or electric sensor for sensing cells engraved or used in the engraving and printing industries"].


In re SWIMC, Inc., Serial No. 85016796 (August 2, 2012) [not precedential] [COMPLETE for automotive paints refused registration in view of KILZ COMPLETE for paint primer].


In re Jonathan M. Klokow, Serial No. 77850282 (August 7, 2012) [not precedential] [MOO DA CHAINZ for “hats; T-shirts” refused registration over MOODA CHAINZ for "clothing, namely, tops, pants, shorts, skirts, dresses, hats, caps, jackets, coats, headwear, underwear, sleepwear, and footwear"].


In re Forte Solutions Group, LLC, Serial No. 76699385 (August 7, 2012) [not precedential] [PLAN4 for "business planning services" refused registered in light of PLAN4DEMAND for "business consulting services"].



TTABlog hint: One was reversed.

Text Copyright John L. Welch 2012.

TTAB Finds "FRIDGE BINZ!" Generic for ... Guess What?

The Board affirmed a genericness refusal of FRIDGE BINZ! for "plastic storage containers for domestic use; plastic storage containers for use within refrigerators and freezers." Neither the novel spelling of "bins" nor the addition of an exclamation point served to lift the applied-for mark out of the genericness bin. In re InterDesign, Inc., Serial No. 77906060 (August 13, 2012) [not precedential].


The Board found the the genus of goods at issue to be adequately defined by Applicant’s identification of goods. The Board focused its analysis on the second portion of the identification, "plastic storage containers for use within refrigerators." The relevant public consists of ......[wait for it] ......"the ordinary consumer interested in purchasing plastic storage containers for use within refrigerators."

Examining Attorney Amy L. Kertgate put together "an impressive record of web blogs and online discussion forums, advertisements, newspaper articles and dictionary definitions," leading the Board to conclude that there was "clear evidence to support a finding that the relevant public, when it considers FRIDGE BINZ! in connection with plastic storage containers for use within refrigerators, would readily understand the term to identify refrigerator bins."

We have seen that both words “fridge” and “bins” are generic in connection with applicant’s goods. The evidence of record also shows that the term “fridge bins” maintains its genericness when these words are combined, inasmuch as this is simply another name for storage containers for use within refrigerators

The Board noted that some online retailers use FRIDGE BINZ! when referring to Applicant's goods, but others "clearly promoted applicant’s goods online using the generic term, 'fridge bin[s],' spelled correctly[.]"

Finally, the Board observed that 'a novel spelling that is the phonetic equivalent of a generic term is also generic if purchasers would perceive the misspelling as the equivalent of the generic term." [For example, ICE PAK generic for ice packs; MINERAL-LYX generic for mineral licks for feeding livestock; SUPERHOSE! merely descriptive of a hydraulic hose.]

And so the Board affirmed the refusal.

TTABlog comment: Why isn't this a case where the mixed record (some generic usage, some not) creates enough doubt to avoid a genericness finding?

Text Copyright John L. Welch 2012.

Test Your TTAB Judge-Ability: Is "MDF IT & Design" Primarily Geographically Descriptive of Furniture?

The PTO issued a Section 2(e)(2) refusal of MDF IT & Design (shown below) for furniture, furniture fittings, and furniture catalogs [MDF disclaimed], on the ground that the mark is primarily geographically descriptive of the goods. Applicant appealed. The Board need only five pages for its opinion. How would you rule? In re MDF Italia SPA, Serial No. 79063250 (August 21, 2012) [not precedential].


The first prong of the test for geographical descriptiveness is this: the primary significance of the mark as it is used must be a generally known geographic place. Generally, a mark that has a well-known meaning independent from its geographical meaning does not meet the test.

The Examining Attorney contended that the designation "IT" in applicant’s mark primarily denotes a geographic location: Italy. He noted that the disclaimed portion, MDF , is an acronym for the descriptive term "medium density fiberboard" and would be so recognized by consumers of Applicant’s goods.

The Board, however, pointed out that "IT" has significant non-geographic meaning, one that is "reinforced by the manner in which IT is depicted in the mark, as lower case script letters." Even the Examining Attorney, in a non-final action, noted that “the mark, at first impression, can be read as the double entendre 'MDF IT', that is, use medium density fiberboard for the applicant’s goods, furniture."

And so the Board reversed the refusal.

TTABlog comment: I note that the letters "IT" are in an italic font. Italic? Italy? Get it? I think the Examining Attorney's earlier statement was the killer.

Text Copyright John L. Welch. 2012

TTABlog Job Posting: Boutique IP Firm Seeks TM Associate With Litigation and TTAB Experience

Holley & Menker, a boutique intellectual property firm with offices in California and Florida, is seeking a junior to mid-level trademark associate with litigation and TTAB experience. The successful candidate will have excellent academic credentials and the ability to assist in litigation, draft and negotiate IP-related agreements, and prosecute trademark applications. Part-time work schedules are possible. Job location in California or Florida preferred but not required. Please send inquiries to John L. Welch (jwelch at lalaw.com) to arrange for an introduction.


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TTAB Finds BAGEL THINS Merely Descriptive of Baked Goods, But Not Generic

The Board affirmed a Section 2(e)(1) refusal to register the mark BAGEL THINS, finding it to be merely descriptive of "bakery products, not including cookies" [BAGEL disclaimed]. The Board reversed the PTO's genericness refusal in view of the mixed evidentiary record, but it found Applicant Bimbo's proof of acquired distinctiveness insufficient in light of the highly descriptive nature of the mark. The net result: Supplemental Registration. In re Grupo Bimbo, S.A.B. de C.V., Serial No. 77798364 (August 10, 2012) [not precedential].


Mere Descriptiveness: Examining Attorney Tasneem Hussein relied on definitions of "bagel" and "thin," on third-party uses of the term "bagel thins" for slices of bagels, and on Bimbo's own website, which uses "bagel thins" as a category of bagel products, not unlike "mini bagels" or "traditional bagels."

Bimbo pointed to decades of PTO practice for similar marks - registrations for WHEAT THINS, VEGETABLE THINS, GOURMET THINS, GARDEN CHICKEN THINS, STONED WHEAT THINS, ETC. THINS - and urging that the Office has long considered the noun "thins" when combined as the final word in a composite mark for shacks or other treats, to be distinctive enough "to carry a mark when combined with earlier generic or highly-descriptive matter." Recognizing that the PTO may take a different tack with cookies, Bimbo excluded cookies from its identification of goods.

Bimbo also pointed to its own applications, approved for publication, for SANDWICH-THINS, GRILLIN' THINS, COUNTRY THINS, POCKET THINS, HOT DOG THINS, MUFFIN THINS, and PARTY THINS.

Based upon the PTO's evidence, the Board had no doubt that the combination BAGEL THINS is merely descriptive.

Genericness: As to genericness, however, the record evidence was mixed. Although the Board had "concerns" about the genericness of BAGEL THINS, "the record controls the determination, not our subjective opinions." The noun "thins" is not found in any dictionaries of record, and the PTO simply failed to provide the clear evidence required to support a genericness refusal. This conclusion was reinforced by the PTO's treatment of "Thins" in examining composite marks for crackers, snacks, and other bakery products.

Acquired Distinctiveness: Bimbo claimed extensive use of the BAGEL THINS mark since 2010, spending more than $5 million in promoting the goods in 2010, and generating sales of some $61 million. In a recent 12 -month period the brand's website page received 93,000 discrete hits. [How many indiscrete? - ed.]. An advertising campaign on Facebook in 2011 generated 11 million hits.

Advertising has appeared in prominent publications and on prominent websites. Bimbo places thousands of in-store displays, distributes coupons, and holds in-store sampling events. It sponsored a marathon and sent products to many magazine editors. The BAGEL THIN products have been featured in articles in major magazines, newspapers, on-line news sources, and television broadcasts.

In short, these widespread promotional activities have led to extensive sales and substantial media coverage and exposure.

The question was whether these efforts were enough to achieve acquired distinctiveness. The Board said no: "for a term that appears to be an apt descriptive name of the involved goods, we find the evidence in its entirety to be inadequate to prove acquired distinctiveness for this term."

A particular weakness in Bimbo's case was the relatively short period of use of the mark. At the time the record was closed, the mark had been in use for little more than one year. Furthermore, most of the evidence was "fairly indirect" for purposes of determining consumer perception; the Board, for example, was unsure how customers would perceive the applied-for mark compared to the house mark "Thomas'." It is entirely possible that much of the promotional efforts will reinforce the house mark rather than creating awareness for "an apt descriptive name of the product."

Moreover, Bimbo's gross sales figures lacked context in terms of market share, and there were no declarations or surveys demonstrating recognition of BAGEL THINS as a mark. Third party usage, of course, affected Bimbo's claim to "substantially exclusive use" under Section 2(f).

However, the Board concluded that the mark is capable of achieving acquired distinctiveness, and so it reversed the refusal to allow issuance of a Supplemental Registration.

TTABlog comment: I will bet half of a poppy seed bagel that this case goes to the district court for review under Section 1071(b), with Bimbo adding additional evidence of acquired distinctiveness.

Text Copyright John L. Welch 2012.

"THE BEST LITTLE ART WALK IN TOWN" Not Merely Descriptive of Art Exhibitions, Says TTAB

The Board reversed a Section 2(e)(1) refusal to register the mark THE BEST LITTLE ART WALK IN TOWN, finding it not merely descriptive of "Art exhibitions; organizing cultural and arts events." Consumers would perceive the oxymoronic combination of BEST and LITTLE to be not merely laudatory, but instead would view the mark as unitary, alluding to the well-know musical and motion picture "CATS" "The Best Little Whorehouse in Texas." In re North Beaches Art Walk Association, Inc., Serial No. 85139899 (August 10, 2012) [not precedential].


The Examining Attorney relied on dictionary definitions in contending that the mark is descriptive of the quality, feature and characteristics of Applicant’s art exhibitions: i.e., "applicant provides art exhibitions and events in the form of ‘art walks’ superior in character and quality to other similar events in town, which can be seen in a relatively short period of time."

The Board, however, ruled that the mark is unitary, and therefore that the examining attorney had improperly dissected the mark. It agreed with the Applicant that the mark is an "oxymoronic connotation" that raises it above the merely descriptive. Any laudatory aspect of BEST is "diminished by the notion that the event is LITTLE." The Board agreed that the "selfdeprecating" word LITTLE provides a connotation that directly contrasts with BEST." And vice versa. [I'm not buying this argument - ed.]

The Board was particularly impressed by the fact that the mark parallels the title of the well-known Broadway musical "The Best Little Whorehouse in Texas" Given the vast exposure of that title to the public, the parallel between the applied-for mark and the title would be obvious.

Applicant pointed to six other registrations with similar parallels to the title. [Not included was my common law mark, "The Best Little TTABloghouse on the Internet" - ed.]. Even most of the evidence submitted by the PTO showed that third parties have adopted and used names based on that title.

The Board therefore concluded that the mark as a while is not merely descriptive. Instead, it is akin to the "Polly Pitcher" mark, which was recognized to be more suggestive of "Molly Pitcher of Revolutionary time" than descriptive of polyethylene.

And so the Board reversed the refusal, further observing that, because the mark is unitary, disclaimer of the term ART WALK is not required.

Text Copyright John L. Welch 2012.

TTAB Comes to New Hampshire: September 20th at UNH School of Law

The Trademark Trial and Appeal Board (TTAB) will travel to Concord, New Hampshire on Thursday, September 20, 2012, to hear final arguments in a TTAB inter partes proceeding, as part of a Boston Patent Law Association (BPLA) program to be held at the University of New Hampshire School of Law. The hearing will be preceded by a presentation on non-traditional trademarks by Anne Gilson LaLonde and a review of TTAB practice and procedure by Chief Judge Gerard F. Rogers. Professor Ashlyn Lembree and Boston attorney Joshua Jarvis will summarize the parties' arguments prior to the oral hearing. The program will close with a panel discussion on trademark topics before a panel comprised of the speakers. The program will run from about 1:00 PM to 5:00 PM, with a reception afterward. Further details and registration here.

SPEAKERS AND PANELISTS
Anne Gilson LaLonde, Gilson on Trademarks
Anne is the author of Gilson on Trademarks, a multi-volume treatise on trademark law published by LexisNexis/Matthew Bender. She has also written articles and spoken on a wide variety of trademark-related topics, including scandalous trademarks, fan-created content and anti-counterfeiting strategies.

Prof. Ashlyn J. Lembree, UNH School of Law
Ashlyn J. Lembree is director of the Intellectual Property and Transaction Clinic at the University of New Hampshire School of Law’s Franklin Pierce Center for Intellectual Property.

TTAB Chief Administrative Trademark Judge Gerard F. Rogers
Appointed to TTAB in 1999; Prior professional experience: Trademark Examining Attorney, 1987-90; Assistant to the Assistant Commissioner for Trademarks, 1990-92; TTAB Staff Attorney, 1992-99; Education: B.A., University of Massachusetts Amherst; J.D., magna cum laude, New England School of Law.

Joshua Jarvis, Foley Hoag LLP
Josh is a senior associate in the Trademark, Copyright and Unfair Competition Practice Group at Foley Hoag LLP, in Boston. His practice is focused on trademark, copyright, and domain name counseling and strategy, including prosecution, licensing, policing, and trademark matters before the TTAB.

John L. Welch - Lando & Anastasi, LLP.
John L. is Of Counsel to the firm, and practices intellectual property law in all its forms. A frequent author and lecturer on TTAB topics, he is the founder and publisher of The TTABlog, a contributing editor to Allen’s Trademark Digest, and a Member of the Editorial Board of The Trademark Reporter. He is co-chair of the BPLA Trademarks and Unfair Competition Committee.

Test Your TTAB Judge-Ability: Are Wine and Sauces Related Goods?

The PTO issued a Section 2(d) refusal to register the mark ISLAND GROVE WINE COMPANY for wine [WINE COMPANY disclaimed], finding it likely to cause confusion with the registered mark ISLAND GROVE for "dipping sauces, hot sauce, marinades, salsa, sauces." Applicant argued that these goods differ in functionality, are not complementary, and travel in different trade channels. How do you think this appeal came out? In re Island Grove Winery, LLC, Serial No. 85036344 (August 10, 2010) [not precedential].


Not surprisingly, the Board found the applied-for mark to be dominated by the ISLAND GROVE portion, and concluded that the marks are similar in sound appearance and meaning.

As to the goods, Examining Attorney Katherine S. Chang submitted several use-based third-party registrations, each showing a single mark registered for the both types of goods involved here. She also submitted printouts from several third-party websites demonstrating that the same retailers (mostly wineries) sell both wine and sauces under the same mark. The Board, citing Mucky Duck and Albert Trostel, was persuaded that the goods are sufficiently related.

The Board noted that the involved goods would be purchased by the same classes of purchasers, including ordinary consumers. The fact that wine and sauces are relatively inexpensive and may be subject to impulse purchase increased the likelihood of confusion.

Applicant claimed that its customers are sophisticated, but even if that were true, "even sophisticated purchasers are not immune from source confusion, especially in cases such as the instant one involving similar marks and related goods." [In light of that statement, you might as well kiss the "sophisticated purchaser" argument good-bye. -ed.]

Finally, Applicant claimed that there has been no actual confusion, but the Board pointed out that the lack of actual confusion carries little evidentiary weight. Moreover, the record was devoid of evidence regarding the extent of use of the involved marks and thus whether there has been a reasonable opportunity for confusion to occur. The fact that both Applicant and the registrant have headquarters in the same state (i.e., Florida) does not prove anything in this regard.

Resolving any doubt in favor of the prior registrant, the Board affirmed the refusal to register.

TTABlog comment: Well, how did you do? Were you surprised by the outcome? Convinced of its correctness?

Text Copyright John L. Welch 2012.

E. D. Va. District Court Affirms TTAB Dismissal of SWATCH Opposition versus SWAP

In a civil action for review under 15 U.S.C. Section 1071(b), the United States District Court for the Eastern District of Virginia has affirmed the TTAB's dismissal of Swatch, S.A.'s opposition to registration of the mark SWAP in stylized form for "watch faces, watch bands, slide pendants, and beaded watch bands." [TTABlogged here]. The Board found applicant's mark to be not merely descriptive of the goods and not likely to cause confusion with or to dilute the registered mark SWATCH for watches, clocks, and parts. The court entered judgment against Swatch on its six claims: for reversal of the TTAB decision, and for federal and state trademark infringement and unfair competition, and federal dilution. Swatch, S.A. v. Beehive Wholesale, L.L.C., Civil Action No. 1:11-cv-434 (E.D. Va. August 16, 2012).


The district court noted that, although appellate review of a TTAB decision is limited to the record before the Board, a civil action for review affords litigants the opportunity to introduce new evidence. Moreover, although the appeal is heard by the CAFC and is governed by the law of the Federal Circuit, appeals from this district court are heard by the Fourth Circuit, and so the Fourth Circuit's nine factor test for likelihood of confusion is applicable.

In addition, while the district court is an "appellate reviewer" of facts found by the TTAB (applying a substantial evidence standard), the court is a fact finder as to new evidence and issues presented.

Likelihood of confusion: Most of Swatch's claims hinged on its proving likelihood of confusion. The court found the SWATCH mark to be both conceptually and commercially strong. But it agreed with the TTAB that the marks SWATCH and SWAP are "insufficiently similar in sign sound and meaning," and it further found that the marks as used are dissimilar.

As to the goods, there is a similarity between the general types of goods sold under the marks, and even if they are not "related," the goods sold under the SWAP mark are "associated" with the market for goods identified by the SWATCH mark. There was a de mimimis overlap in channels of trade, and no overlap in advertising channels. And despite Applicant/Defendant's awareness of the SWATCH mark when it adopted the SWAP mark, the TTAB was correct in concluding that the evidence was insufficient to support a finding of bad faith.

Most importantly, there was no evidence of actual confusion, and this factor weighed heavily against a finding of likelihood of confusion.

Combining the lack of actual confusion with the lack of similarity between the marks, the lack of predatory intent, the lack of similar advertising and only minimal similarity in facilities, the court found no likelihood of confusion. It therefore affirmed the TTAB's judgment as to likelihood of confusion, and entered judgment against Swatch on its infringement and unfair competition claims.

Dilution by blurring: The court found that, even assuming that the SWATCH mark is famous and was famous at the time Applicant commenced use of its mark, and even assuming that "a similarity" between the marks "gives rise to an association between the marks," Swatch failed to show that the distinctiveness of its mark would likely be impaired by Defendant's use of its SWAP mark. (citing Rosetta Stone Ltd. v. Google, Inc.., 676 F.3d 144, 153-54 (4th Circuit 2012)

Looking to the six non-exhaustive factors of Section 43(c)(1)(B)(1), the court found insufficient similarity between the marks, no evidence that Defendant intended to associate with the SWATCH mark, and no actual association between the marks. "In sum, Plaintiff falls far short of meeting its burden of showing that SWAP's mark impacts its ability to be 'uniquely' identified as the single source of the products using its famous mark."

Descriptiveness: The court found the TTAB's ruling to be supported by substantial evidence, and Plaintiff's new evidence "does nothing to alter the conclusion that Swap is suggestive and properly registrable."

TTABlog note: The complaint filed by Swatch may be found at the TTABlog posting (here). Swatch took advantage of the opportunity to introduce evidence that was not admitted during the TTAB proceeding, but to no avail.

Text Copyright John L. Welch 2012.

TTAB Affirms 2(d) Refusal: "MY BIG FAT GREEK WINE" Confusingly Similar to "MY BIG FAT GREEK RESTAURANT"

The Board affirmed a refusal to register the mark MY BIG FAT GREEK WINE for wine [GREEK WINE disclaimed], finding it likely to cause confusion with the registered mark MY BIG FAT GREEK RESTAURANT & Design for restaurant services [GREEK RESTAURANT disclaimed]. Third-party registration and Internet evidence were the key ingredients of the PTO's case. In re Nikolaos Mastorogiannakis, Serial No. 77858375 (August 1, 2012) [not precedential].


The Board not only found the marks to be substantially identical in sound, appearance, meaning, and commercial impression, but it also found the registered mark to be, "by its nature ... strong and distinctive." There was no record evidence that "anyone other than registrant has used or registered a similar mark." Therefore, the registered mark is entitled to a broad scope of protection.


Moreover, "where the marks are nearly identical, as they are in this case, there need be only a viable relationship between the respective goods and services in order to find that a likelihood of confusion exists." We also know that there is no per se rule requiring a finding of likely confusion whenever food or beverages and restaurant services are offered under similar marks. See Jacobs v. International Multifoods Corp., 212 USPQ 641, 642 (CCPA 1982). Under Jacobs, "something more" must be shown.

Examining Attorney Janet H. Lee, in addressing the "something more" requirement, proffered 20 use-based, third-party registrations each showing that a single entity has adopted the same registered mark for both wines and restaurant services. She also provided printouts from the websites of 14 wineries demonstrating that wines are offered under the same or similar marks as restaurants located at the wineries.

The Board concluded that "wine and restaurant services clearly are complementary goods and services which may be encountered together by the same purchasers." Moreover, an article from Bloomberg Business Week states that "between 60% and 75% of Greek wine sold in the U.S. is through restaurants." [Isn't that merely hearsay? - ed.].

The Board noted that the "something more" requirement has been met when the applicant and registrant specialize in the same cuisine [for example, AZTECA MEXICAN RESTAURANT and AZTECA for tortillas], and when the registered mark is "particularly unique" [MUCKY DUCK for mustard and restaurant services].

The Board found the evidence here to be sufficient to meet the "something more" requirement of Jacobs.

Applicant Mastorogiannakis feebly argued that the goods and services will never be encountered together, since its wine is produced in Massachusetts and registrant's restaurants are in Arizona. Putting aside the lack of evidence to support his argument, the Board noted that there are no geographical restrictions in the involved application or the cited registration, and the Board must presume that these goods and services could be provided in the same geographical area.

And so the Board affirmed the refusal.



Text Copyright John L. Welch 2012.

Ron Coleman Comments on the TTAB''s "BENNY GOODMAN" False Association Decision

If I could write as well as Ron Coleman writes, I'd quit my day job. At his Likelihood of Confusion blog, Ron comments (here) on the Board's "BENNY GOODMAN" decision of July 26, 2012. [TTABlogged here]. You will recall that 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.


Ron picks up on a question that I posed in the comments: "How is Section 2(a) false association like 43(c) dilution protection?" His response is worth a read.


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USPTO Seeks Comments on Raising Fees to Incentivize Electronic TM Filings

In another August 16, 2002, Notice (here) in the Federal Register (vol. 77, no. 159, page 49426), the USPTO is seeking public comments on the desirability of "adjusting trademark application filing fees so as to promote efficiency for the USPTO and customers by incentivizing complete electronic communication." The deadline for written comments is October 15, 2012.


The PTO requests that commenters respond to the following questions:

1. Fees for filing an application for registration of a trademark are currently set at: $375 per class for filing by a paper application; $325 per class for filing electronically using TEAS; and $275 per class for filing electronically using TEAS Plus (additional requirements apply, including authorizing email communication from the USPTO, agreeing to file all subsequent documents electronically, and selecting goods/services from a preapproved entry in the U.S. Acceptable Identification of Goods and Services Manual). Given the objective to increase end-to-end electronic processing of trademark applications, the significantly higher cost of processing paper applications, and the ability of the USPTO to offer some fee reductions, what fee amounts would you consider reasonable for the three existing methods of filing?

2. How much of a discount do you consider appropriate for the proposed TEAS application fee discount if the applicant authorizes email communication and agrees to file all responses and other documents electronically during the prosecution of the application?

3. If you generally file trademark applications using TEAS, but not TEAS Plus, how much of a proposed discount would motivate you to authorize email communication and agree to file all responses and other documents electronically during the prosecution of a trademark application?

4. If the TEAS Plus fee were reduced and remained the lowest fee, and the discount TEAS option were also offered, what would be the impact on the TEAS Plus filing level—i.e. would you be more likely to choose TEAS Plus as the lowest fee, or to select the discount TEAS option with its less burdensome requirements?

5. The cost of processing paper filed applications is substantially higher than electronically filed applications. If you generally file paper trademark applications, would you continue to do so even if the paper application fee were to increase, and why?

6. What advantages and disadvantages do you see in a fee structure that includes the TEAS application fee discount and a significantly higher fee for paper-filed applications?
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USPTO Requests Comments on Proposal to Require Earlier Filing of First Section 8 Declaration

In an August 16, 2012, Notice (here) in the Federal Register (vol. 77, no. 159, page 49425), the USPTO is seeking public comments on a potential amendment to the Trademark Act that would change the first filing deadline for Affidavits or Declarations of Use or Excusable Nonuse under Sections 8 and 71 of the Trademark Act from between the fifth and sixth years after the registration date, or the six-month grace period that follows, to between the third and fourth years after the registration date, or the following six-month grace period. The deadline for written comments is October 15, 2012.


The purpose of the proposed amendment is to help ensure that registered marks are actually in use in commerce. "Reasons for adding the requirement included removing deadwood from the register, showing that a mark was still in use at the time it became incontestable, and [making U.S. law] correspond to English law."

In particular, the PTO requests comments on these questions:

(1) Is ‘‘deadwood’’ on the trademark register a concern of yours, and what impact do you believe it has?

(2) Do you favor or oppose an amendment to shorten the first filing deadline for Affidavits or Declarations of Use or Excusable Nonuse under Sections 8 and 71 as a means of ensuring the accuracy of the trademark register? (Please explain why.)

(3) If you favor shortening the deadline, what time period do you believe would be most appropriate for the first filing deadline?

(4) Are you concerned that an amendment to the first Section 8 and 71 affidavit deadline would foreclose the ability to combine the filing with the filing of an Affidavit or Declaration of Incontestability under Section 15? What impact do you believe separating these filings would have?
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CAFC Reverses TTAB, Finds Two "SNAP' Marks Merely Descriptive of Syringes

In this partial appeal from the TTAB's decision of April 5, 2011 [TTABlogged here], the CAFC reversed the Board's ruling that Appellant DuoProSS had failed to prove mere descriptiveness with regard to Inviro's registered marks SNAP & Design (shown immediately below) and SNAP SIMPLY SAFER for syringes. The appellate court concluded that the Board failed to consider the design mark as a whole, instead focusing only on "one portion of it," failed to make adequate findings of fact, and erroneously found that "puffing could render the marks more than descriptive." DuoProSS Meditech Corporation v. Inviro Medical Devices Ltd., 103 U.S.P.Q.2d 1753 (Fed. Cir. 2012).


In the Board proceeding, DuoProSS had counterclaimed to cancel five registrations asserted by Inviro. The Board cancelled three registrations for the word mark SNAP for needles and syringes, one on the ground that it was a duplicate registration, and the other two on the ground of mere descriptiveness: SNAP describes "a significant feature of function of [Inviro's] cannulae, syringes and needles, namely that to safely disable them, one must snap off the plunger." Inviro did not appeal from those rulings.

The Board denied the counterclaims of DuoProSS for cancellation of the two registrations here at issue. It found that the broken exclamation point in the SNAP & Design mark, and the words SIMPLY SAFER in the other mark avoided the mere descriptiveness bar to registration.

The SNAP! Design Mark: The CAFC observed that it may reverse a Board decision on mere descriptiveness, which is a question of fact, only if the decision is not supported by substantial evidence. "Where two different conclusions may be warranted based on the evidence of record, the Board's decision to favor one conclusion over the other is the type of decision that must be sustained by this court as supported by substantial evidence." It found that the evidence here "supports no conclusion other than that the mark is merely descriptive."

The Board improperly separated the SNAP & Design mark into two elements, the word SNAP and the broken exclamation point. Looking at the design portion alone, the Board had found it to be merely suggestive of "the breaking of 'something,' not necessarily the breaking of a syringe." But it should have considered the entire mark rather than the exclamation point in isolation.

The Board's opinion lacks any indicia, however, that it actually considered the mark as a whole. The Board failed to explain why a mark composed of the admittedly descriptive word SNAP, which refers to a prominent function of the recited goods, and an exclamation point that depicts at least the breaking or snapping of "something" is not, when taken as a whole, merely descriptive of the snapping syringes.

The Board also failed to cite any evidence that the mark required "imagination, thought and perception" in order to determine the nature of the goods. The findings made by the Board contradicted that conclusion. They indicate that the mark, when viewed in the context of Inviro's products, "does nothing other than depict the snapping of the syringe plunger: the prominent functional feature of Inviro's goods." The instructions packaged with the goods (see below) include an image (incorporated in the Board decision) place the mark and the snapping of the syringe plunger "in the same context." The only reasonable inference is that a consumer would perceive the mark, in the context of the goods, as depicting the snapping of a plunger.


SNAP SIMPLY SAFER: The Board did not cite any evidence to support its conclusion that DuoProSS failed to prove the mere descriptiveness of this mark. It simply noted the "rhyming pattern" that results in a distinctive commercial impression, but there was no evidence that a consumer would focus on the alliteration. If anything, SIMPLY SAFER "describes the most important advantage of Inviro's products: their safety."

Moreover, the Board erred as a matter of law when it concluded that the phrase is more than descriptive because SIMPLY SAFER is a laudatory phrase or puffery. The court, however, ruled that "adding SIMPLY SAFER to SNAP does nothing more than laud the safety of Inviro's products, which ... is a merely descriptive use."

********
In sum, the Board's conclusion that DuoProSS failed to prove the mere descriptiveness of these two marks is not supported by substantial evidence, and therefore the CAFC reversed the decision and remanded the case to the Board for entry of an order cancelling the two registrations at issue.

TTABlog comment: I think the word SNAP should be disclaimed in the design mark, but I also think that the broken exclamation point is like a "double entendre," serving both as punctuation and as an stylized illustration of the product. So I think the CAFC was wrong, but also that the Board was wrong in not requiring the disclaimer.

Text Copyright John L. Welch 2012.

Test Your TTAB Judge-Ability: Are "ADMIRAL RODNEY" and "ADMIRAL NELSON'S" Confusingly Similar for Rum?

Ahoy, matey! Let's say an Applicant seeks to register ADMIRAL RODNEY and ADMIRAL RODNEY EXTRA OLD ST. LUCIA RUM & Design for rum. And let's say an Opposer claims likelihood of confusion with its registered marks ADMIRAL NELSON'S and ADMIRAL NELSON'S PREMIUM SPICED RUM & Design, also for rum. Suppose you are a TTAB judge. How would you decide the case? Luxco, Inc. and Heaven Hill Distilleries, Inc. v. Saint Lucia Distillers Limited, Opposition No. 91193668 (August 2, 2012) [not precedential].


Opposer Luxco claimed that its marks are famous, based on use since 1990, the ranking of ADMIRAL NELSON'S rum as the fifth-largest selling rum in the USA, significant sales and extensive marketing, and the winning of several brand awards in the industry. Not good enough, said the Board.

The Board observed that, in view of the deference accorded a famous mark in the Section 2(d) analysis, a party asserting fame must clearly prove it. Luxco's mark has a high degree of recognition and, given its arbitrary nature, it is entitled to a broad scope of protection. But fame? Blimey, no. [The Board did not spell out what was missing in Opposer's evidence concerning fame. - ed.]

Of course, because the goods are identical, the Board must presume that they travel through the same normal channels of commerce to the same classes of consumers. Moreover, when the goods are the same, a lesser degree of similarity between the marks is required to float a finding of likely confusion.

Turning to the marks, the Board noted that they both suggest a nautical theme, but then "there is nothing particularly distinctive with using a nautical theme in connection with the sale of rum because there is a long-time association between rum and sailors." ["Fifteen men on the dead man’s chest, yo-ho-ho and a bottle of rum!" - -ed.]

The Board noted that "Admiral" is a naval title, and so the parties' marks "identify separate and distinct individuals." In fact, Admiral George Brydges Rodney was a notable British naval officer, and of course Admiral Horatio Nelson is a legendary British hero. The Board referred to those facts not to demonstrate that "typical U.S. consumers recognize British naval heroes, but to demonstrate that the names Admiral Nelson and Admiral Rodney identify different individuals and, when used as marks, are likely to be construed as different names." [Say again? - ed.] Consequently, the Board found that the marks have different meanings and it concluded that the differences in the marks outweigh their similarities.

Balancing the relevant du Pont factors, the Board found that consumers will distinguish the marks because of these dissimilarities. "In other words, in this case, the dissimilarity of the marks is the most important factor."

And so the Board dismissed the opposition.

TTABlog comment: Well, how did you do? Are you ready to join the Board, or must you walk the plank?

Do you think the Opposer was sailing pretty close to the WYHO? line.

Text Copyright John L. Welch 2012.

TTAB Affirms Genericness Refusal of "BABY GUIDE" for ... Guess What?

Noting that the issue of genericness must be determined at the time registration is sought, regardless of whether the applied-for term was once merely suggestive, the Board affirmed a genericness refusal of BABY GUIDE for "Printed guides for new or expectant parents featuring a directory of third-party retailers and entities offering products or services related to pregnancy and parenting" and "Hosting an online website for new or expectant parents featuring a directory of third-party retailers and entities offering products or services related to pregnancy and parenting." In re Bliss Publications, LLC, Serial No. 77779284 (July 23, 2012) [not precedential].


As usual, the Board found the genus to be "appropriately defined by the description of goods and services recited in the application." It then found, without any guidance from Applicant or the PTO, that the relevant public is ...... [wait for it!] ...... "new or expectant parents seeking products or services related to pregnancy and parenting."

Examining Attorney Doritt Carroll relied on dictionary definitions of "baby" [an extremely young child; especially: infant] and "guide" [something that provides a person with guiding information], leading the Board to perceptively conclude that "BABY GUIDE merely refers to something that provides a person with guiding information about babies." It noted that under In re Gould, dictionary definitions alone may support a genericness refusal, and it cited In re Wm. B. Coleman Co. for the proposition that the space between generic terms does not disqualify a proposed mark from the Gould analysis.[In other words, the Board did not have to consider the more difficult American Fertility test that applies to phrases. -ed.].

Moreover, a number of third-party web sites displayed the term "baby guide" in connection with online and printed guides, demonstrating that "baby guide" is "commonly used, not only by consumers but also by competitors, to refer to printed or electronic publications or directories containing information for new and expectant parents about babies and products for babies."

Applicant Bliss asserted that these third-party uses occurred long after its first use of BABY GUIDE, but the Board pointed out that, even if the term were at one time entitled to registration, the issue of registrability must be determined at the time registration is sought: "a term that was once suggestive may later become merely descriptive or even generic."

Bliss feebly contended that BABY GUIDE is a double entendre because "the term does not suggest products which may only be used by a baby." The Board found no evidentiary support for that argument.

Finally, Bliss hopelessly pointed to third-party registrations for marks containing the words BABY or GUIDE, without disclaimer, but the Board found them to be non-probative, in part because the Board must decide each case on its own merits and "a mark that is merely
descriptive or generic must not be registered on the Principal Register simply because other marks with common terms appear on the register."

And so the Board affirmed the refusal.

TTABlog comment: It looks like the evidence would have satisfied American Fertility as well, since it included uses of the entire phrase.

Text Copyright John L. Welch 2012.

Precedential No. 27: Adding a Question Mark to GOT STRAPS Materially Alters the Mark, Says TTAB

The Board affirmed two refusals to register the mark GOT STRAPS for "bumper stickers" and "online retail store services featuring straps for musical instruments and accessories for musical instruments," agreeing with Examining Attorney Simon Teng that Applicant’s proposed amendment of the mark to add a question mark constitutes a material alteration of the original mark under Trademark Rule 2.72(b)(2), and that the application drawing is not a substantially exact representation of the mark GOT STRAPS? as used on the specimens, under Trademark Rule 2.51(b). In re Guitar Straps Online, LLC, 103 U.S.P.Q.2d 1745 (TTAB 2012) [precedential].


Proposed amendment: The Board noted that if the proposed amendment adding a question mark were permitted, the amended drawing would comport with the specimens of use, and the second refusal would be moot. The key issue under Rule 2.72(b)(2) was whether the proposed amendment would materially alter the mark.

The modified mark must contain what is the essence of the original mark, and the new form must create the impression of being essentially the same mark. The general test of whether an alteration is material is whether the mark would have to be republished after the alteration in order to fairly present the mark for purposes of opposition. If one mark is sufficiently different from another mark as to require republication, it would be tantamount to a new mark appropriate for a new application.

The Board stressed that the "primary question is whether the proposed amendment contains 'the essence of the original mark' and whether it creates 'the impression of being essentially the same mark.'" It pointed to TMEP Section 807.14(c) (8th ed. Oct. 2011), which lists instances in which addition or deletion of punctuation would change the commercial impression of a mark and would constitute a material alteration. [But no specific examples - ed.]. The list includes "the addition or deletion of a question mark" as one instance.

The Board found that addition of a question mark to GOT STRAPS constitutes a material alteration "because it changes the commercial impression of the original mark from a declaratory statement to an interrogative phrase." The Board agreed with the Examining Attorney that GOT STRAPS? versus GOT STRAPS is equivalent to "do you have guitar straps" versus "I have guitar straps."

The placement of a question mark at the end of the phrase GOT STRAPS transforms not only the appearance and meaning of applicant’s original mark but also the pronunciation. In other words, applicant’s proposed amendment alters "the essence of the original mark."

Applicant pointed out that the USPTO does not provide a design code for the question mark for purposes of searching the USPTO database, arguing that the PTO thus "does not believe that the question mark is a significant feature of the mark, and that it is not necessary to include the question mark in a search for the mark." Therefore, Applicant reasoned, addition of a question mark to GOT STRAPS would not require republication of the mark or a new search.

The Board observed, however, that the PTO treats a question mark as a standard character, and a standard character mark is not treated as a design mark or given a design code. In any case the assignment of a design code is a purely administrative practice that has no bearing on the issue at hand.

Although the Board agreed with Applicant that a new search would not be required if the mark were amended, it concluded that republication would be necessary "given the change in the commercial impression of the mark, ... in order to give interested third parties adequate notice."

And so the Board affirmed the refusal on the ground that the proposed amendment would materially alter the mark, in violation of Trademark Rule 2.72.


Drawing and specimens: Trademark Rule 2.52 provides that the “drawing depicts the mark sought to be registered.” The drawing of the mark must be a "substantially exact representation" of the mark as used. Trademark Rule 2.51(b). Although an applicant may seek to register any portion of a composite mark that presents a separate and distinct commercial impression, the mark as used "must not be so entwined (physically or conceptually) with other material that it is not separable from it in the mind of the consumer."

Applicant contended that the words GOT STRAPS in the specimens of use create a separate and distinct commercial impression from the question mark.

The Board again turned to the TMEP, and particularly Section 807.12(a)(i), entitled "Role of Punctuation in Determining Whether Mark on Drawing Agrees with Mark on Specimen." It found the following hypothetical to be persuasive:

For example, if the mark on the specimen is PREGNANT?, and the mark on the drawing is PREGNANT, the mark on the drawing is not a substantially exact representation of the mark as actually used. The question mark on the specimen transforms the word PREGNANT from a mere statement to a question, and, therefore, changes the commercial impression of the mark. Moreover, the drawing cannot be amended to add the punctuation because it would result in a material alteration. Therefore, the applicant must submit a new specimen showing the mark without the punctuation.

The Board also found persuasive its decision in In re Yale Sportswear Corp., 88 USPQ2d 1121 (TTAB 2008) [TTABlogged here], in which it affirmed a refusal to register the mark UPPER 90 on the ground that the drawing was not a substantially exact representation of the mark as used because the mark appeared on the specimens as UPPER 90° [with the addition of a degree symbol].

The Board concluded that the literal element GOT STRAPS cannot be severed from the question mark without altering the commercial impression or meaning of the mark. In other words, the literal portion and the question mark are entwined, and therefore Applicant's drawing depicting GOT STRAPS is not a substantially exact representation of the mark as usedin commerce.

TTABlog comment: I still disagree with the UPPER 90 decision.

Text Copyright John L. Welch 2012.

TTAB Affirms Functionality Refusal of Plastic Suction Cup Configuration

The Board stuck with the PTO in affirming two refusals to register the product configuration shown below for "plastic suction cups, not for medical purposes:" Section 2(e)(5) functionality, and alternatively, lack of acquired distinctiveness. [The applied-for configuration does not include the outer ring or the stem (shown in dashed lines), but only the three-dimensional configuration of the two concentric rings on the cup portion.] In re Adams Mfg. Corp., Serial No. 85025503 (August 7, 2012) [not precedential].


Functionality: The Board applied the CAFC's Valu Engineering test, which involves consideration of the Morton-Norwich factors:

1. Whether a utility patent exists that discloses the utilitarian advantages of the design sought to be registered;

2. Whether applicant’s advertising touts the utilitarian advantages of the design;

3. Whether alternative designs are available that serve the same utilitarian purpose; and

4. Whether the design results from a comparatively simple or inexpensive method of manufacture.

Examining Attorney James W. MacFarlane maintained that the rings are functional because they diffuse light that passes through the suction cup to prevent damage from sunlight focused on surfaces or objects. He asserted that Applicant's particular configuration has advantages over alternative designs. Applicant conceded that the rings diffuse light, but argued that the its design is not essential to that function nor does it affect the cost or quality of the product.

The Board observed that "if the concentric ring design is essential to the light-diffusing qualities of the suction cup, is less expensive to manufacture, or affects the quality of the product, registration of the design would hinder the legitimate right of others to compete effectively."

The Board found that one of Applicant's utility patents describes the utilitarian advantages of the use of ridges on a suction cup, and the claims of that patent read on the applied-for design because they call for a "plurality of surface deformations" to diffuse light.

Although Applicant owns a design patent on the suction cup, which is some evidence of nonfunctionality, that design patent is "outweighed" by the disclosure of the utilitarian advantages of the design in Applicant's utility patent.

The Board further found that Applicant's advertising "flaunts" the utilitarian advantages of the design.

As to the availability of alternative designs, the Board concluded that the concentric rings design "appears to be superior" to other design options.

The evidence did not show that Applicant's design results from a comparatively cheaper or simpler method of manufacture, and so this factor favored Applicant.

Balancing the factors, the Board affirmed the refusal to register.

Acquired distinctiveness: For purposes of completeness, and assuming that the applied-for mark is not functional, the Board considered the issue of acquired distinctiveness.

An applicant has a "heavy burden" to prove that a product configuration has acquired distinctiveness. Applicant Adams submitted evidence of use of the design for 15 years, with total sales of more than $10 million. However, Adams offered no "look for" advertising, and the three declarations that it submitted (one from a sales representative of Applicant and one from its president) were of limited probative value since the declarants were not purchasers of the goods.

There was no evidence of media recognition of the mark, or unsolicited endorsements, or information as to advertising expenses. Nor was there evidence of market share. And so the Board was unable to assess the impact of Applicant's long use on the purchasing public.

In sum, Applicant failed to carry its heavy burden under Section 2(f).

TTABlog comment: Compare the Board's analysis here with that in recent Hershey case [TTABlogged here], where the Board was careful in recognizing that although a design may be de facto functional, the details or refinements may not be de jure functional: i.e, the scoring on the Hershey bar has a utilitarian purpose, but is not barred from registration by Section 2(e)(5).

I have suggested before that when the Section 2(e)(5) question is a close one, the registration hurdle should be raised even higher on the Section 2(f) question.

Text Copyright John L. Welch 2012.

TTAB Affirms Two of Three PHILADELPHIA'S CHEESESTEAK Refusals to Register

Rookie TTAB Judge Cindy B. Greenbaum cut her teeth on the PHILADELPHIA'S CHEESESTEAK appeal, penning the Board's opinion affirming the PTO's refusals to register that mark for "sandwiches; sandwiches, namely, cheesesteaks" [CHEESESTEAK disclaimed] on the grounds that (1) the mark is confusingly similar to the registered marks PHILADELPHIA CHEESESTEAK CO. & Design, PHILADELPHIA CHEESESTEAK CO., and THE ORIGINAL PHILADELPHIA CHEESESTEAK CO. for “prepared foods, namely, meat," and (2) the mark is primarily geographically descriptive under Section 2(e)(2). As a small consolation to Applicant, the Board reversed the PTO's rejection of Campo's specimen of use (shown below). In re Campo's Deli at Market, Inc., Serial No. 77768687 (August 7, 2012) [not precedential].


Section 2(d): Noting that the involved marks contain the virtually identical terms PHILADELPHIA'S CHEESESTEAK and PHILADELPHIA CHEESESTEAK, the Board concluded that they sound and look similar and have very similar meanings and commercial impressions.

Third-party registrations and Internet evidence helped establish the relatedness of sandwiches and cheesesteaks, on the one hand, and meat on the other hand. Moreover, Examining Attorney Evelyn Bradley perceptively pointed out that sandwiches may contain prepared meat.

Because there are no limitations in the application or the cited registrations, the Board presumed that the goods travel through the same, normal, channels of trade to the same classes of consumers. There was no evidence that consumers of these goods would necessarily be sophisticated. [Where would one possibly get such evidence? - ed.].

Finally, although the cited registrations either reside on the Supplemental Register or were issued under Section 2(f), even weak marks are entitled to protection. To the extent that the Board had any doubts on the Section 2(d) issue, it resolved them, as it must, in favor of the prior registrant.

Geographic Descriptiveness: The Board found that the primary significance of the applied-for mark is that of a well-known place: Pittsburgh Philadelphia. The Board noted that Campo's is located in Philadelphia, and therefore a goods/place association may be presumed.

Applicant, however, argued that "its use of PHILADELPHIA's designates a kind or type of sandwich that is available nationwide, and that no cheesesteak purchaser would believe that the cheesesteak came from anywhere other than where it was purchased." [FWIW, I agree. ed.]. But the Board saw the use of the possessive PHILADELPHIA'S as underscoring the geographic significance of the mark, "namely, that applicant's cheesesteak is of, or from, Philadelphia." In sum, Applicant failed to produce sufficient evidence to overcome the presumption of a goods/place association.

Specimen of use: The Examining Attorney rejected Campo's specimens of use, maintaining that they were mere advertising material or pictures of a restaurant, and not proper trademark specimens. The Board, however, found the specimen depicted above to be acceptable as a point-of-sale display, since the applied-for mark is clearly visible on the sign, and the menu behind the counter lists "cheese steaks" as one of Campo's specialties.

TTABlog comment: I think Campo's is saying that its "Philadelphia Cheesesteak" is the best in Philadelphia, or the one preferred by Philadelphians: i.e., of all the cheesesteaks in Philly, this is the one chosen by Philadelphia. Which makes me think that the mark is geographically descriptive, so forget what I said above.

Text Copyright John L. Welch 2012.

CAFC Affirms TTAB Cancellation of "LENS" Registration: Mark Not Used for Software

In a precedential ruling, the CAFC affirmed a May 8, 2010 decision of the TTAB (here) summarily cancelling a registration for the mark LENS for "computer software featuring programs used for electronic ordering of contact lenses...." The Board found that "software is merely incidental to [Lens.com's] retail sale of contact lenses, and is not a 'good in trade.'" Lens.com, Inc. v. 1-800 Contacts, Inc., 103 USPQ2d 1672 (Fed. Cir. 2012) [precedential]


The Trademark Act defines "use in commerce" for goods as follows:

The bona fide use of a mark in the ordinary course of trade . . . . [A] mark shall be deemed to be in use in commerce –

(1) on goods when –

(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and

(B) the goods are sold or transported in commerce

The court observed that the actual sale of goods is not required to satisfy § 1127’s “use in commerce” requirement, provided that the goods are “transported” in commerce.

Registrant Lens.com does not sell software, and therefore the appeal focused on "whether Lens.com’s software is a 'good' that is “transported in commerce." CCPA precedent establishes that "an article does not qualify as a good in trade when that article is 'simply the conduit through which [the applicant] renders services,' i.e., is “the essence or gist of [the applicant’s] services.” In addition, "when an article 'has no independent value apart from the services,' such article is not likely to be an independent good in trade."

The court noted, however, that there is little precedent on whether an Internet service provider's software is an independent "good" in commerce, or is merely incidental to the Internet services.

The question is whether consumers associate a mark with software, as opposed to other services. That is "a factual determination that must be conducted on a case-by-case basis. Relevant factors to consider include whether the software: (1) is simply the conduit or necessary tool useful only to obtain applicant’s services; (2) is so inextricably tied to and associated with the service as to have no viable existence apart therefrom; and (3) is neither sold separately from nor has any independent value apart from the services." None of these factors is dispositive.

Here, Lens.com’s software is merely the conduit through which it renders its online retail services. Lens.com’s customers utilize the website (and thereby the software associated therewith) to avail themselves of Lens.com’s services. Lens.com’s software is inextricably intertwined with the service that Lens.com provides to its customers—the software facilitates the customers’ online order, which is unique to each customer depending on the links he or she clicks on, the screens viewed, and the ultimate decision of whether or not to order contacts. While Lens.com’s software may provide greater value to Lens.com’s online retail services by enhancing the overall consumer experience, there is no evidence that it has any independent value apart from in rendering the service.

There was no evidence of record indicating that "consumers have any reason to be aware of any connection between the LENS mark and Lens.com’s software." There was no association of the LENS mark with software on Registrant's website, and no evidence that consumers make such an association. Even viewing the evidence in a light most favorable to Registrant, there was no genuine issue of material fact regarding this association, or lack thereof.

Therefore, since Registrant had not used the mark in connection with software for a period of three consecutive years, the mark was properly deemed abandoned and the Board's ruling was correct.

TTABlog note: Last year the Board issued a precedential decision on the issue of "goods in trade," finding that an Applicant's medical reports are merely "part and parcel" of its laboratory testing services and are not "goods in trade" sold separately. In re Ameritox Ltd., 101 USPQ2d 1081 (TTAB 2011) [precedential].

Text Copyright John L. Welch 2012.

Precedential No. 26: Chastizing PTO, TTAB Reverses Disclaimer Requirement of ARCADEWEB For Internet Marketing Services

In a "very unusual" case, the Board reversed a refusal to register the mark ARCADEWEB & Design for Internet marketing services, finding that the PTO had failed to meet its burden to show that the term ARCADEWEB is merely descriptive and must be disclaimed. Although Applicant submitted little evidence, the Board blamed that on the PTO "unfair" handling of the case. In re Future Ads LLC, 103 USPQ2d 1571 (TTAB 2012) [precedential].


The record included dictionary definitions of "arcade" and "web," but the Examining Attorney did not submit any evidence showing use of the term "arcadeweb" or "arcade web" in connection with services like those of Applicant. She did submit a copy of Applicant’s prior Supplemental Registration for the mark ARCADEWEB in standard character form for identical services, but only in the context of requesting that Applicant acknowledge ownership thereof. However, in her final brief, the examining for the first time asserted that, by obtaining this Supplemental Registration, Applicant had impliedly admitted that ARCADEWEB is merely descriptive.

The Board noted that an examining attorney need not limit the arguments in her brief to those raised in the various Office actions in support of the disclaimer requirement. See TBMP 1203.02(b) ("an examining attorney need not request remand in order to make a new argument or change the rationale for a refusal or requirement, as that is not considered to be a new refusal or requirement"). However, the Board found it unfair for the Examining Attorney to use this evidence "for an argument that is totally different from the purpose for which the registration was submitted, and not even hinted at in the Office actions...."

[A]lthough we do not say that the examining attorney cannot use the evidence of the Supplemental Registration in support of her disclaimer requirement, or that we cannot consider the argument relying on that registration raised for the first time in her brief, we view the examining attorney’s actions as poor examination practice and strongly urge that such a practice not be followed in the future.

That "poor examination practice" had its effect on the substantive issue of mere descriptiveness.

The Examining Attorney maintained that "arcade" and "web" merely describe a feature of the services because Applicant provides an "online arcade web site;" i.e., "it disseminates advertising and promotes goods and services of others by means of arcade games on the web."

The Board pointed out that registration on the Supplemental Register is prima facie evidence that, at least at the time of registration, that registered mark was merely descriptive. However, the Board was troubled by the fact that "the examining attorney never put applicant on notice that the examining attorney was treating the Supplemental Registration as evidence in support of her position, or that applicant had options to address the prima facie evidence of the Supplemental Registration (i.e., to file evidence of acquired distinctiveness under Section 2(f) or submit rebuttal evidence)."

Applicant did submit some evidence, in the form of a dictionary definition, that “arcade” is not merely descriptive of applicant’s services, but it might have submitted more had it been on timely notice of the PTO's position:

We acknowledge that this evidence is quite limited for rebutting the prima facie evidence of mere descriptiveness of a Supplemental Register registration. [Is the "registration" merely descriptive, or is it the registered mark? - ed.] However, we must also recognize that the circumstances in this case are very unusual, and that the cause for this limited evidence was the examining attorney’s raising the argument of mere descriptiveness based on that registration at a point where prosecution and examination had long closed. Because of this and because the examining attorney has not submitted any evidence going directly to the mere descriptiveness of ARCADEWEB, in this case these points outweigh any prima facie evidence of mere descriptiveness from the Supplemental Register registration.

And so the Board reversed the refusal.

TTABlog comment: Couldn't the Board have remanded the case for the re-opening of prosecution? Applicant attempted, in its reply brief, to submit evidence of acquired distinctiveness, but of course that evidence was rejected as untimely. Couldn't the Board have considered that submission as a request for remand and reconsideration, and tossed the case back to the PTO. It does seem that the mere descriptiveness claim has some merit. So maybe the PTO gets embarrassed here, but what about the effect on third parties who might want to use the term "arcade web" or "web arcade." Shouldn't they have been considered?

Text Copyright John L. Welch 2012.