The TTABlog<sup>®</sup>: September 2012

TTABlog Quarterly Index: July - September 2012

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Section 2(a) - Deceptiveness:

Section 2(a) - False Association:

Section 2(d) - Likelihood of Confusion:

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

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

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

Section 2(e)(3) - Primarily Geographically Deceptively Misdescriptive

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

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

Section 2(e)(5) - Functionality:

TTAB Affirms Functionality Refusal of Plastic Suction Cup Configuration

Section 2(f) - Acquired Distinctiveness:

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

Failure to Function:

Genericness:

Non-use:

Specimen of use/Material alteration:

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

CAFC Decisions:

Recommended Reading:

Other:

Text Copyright John L. Welch 2012.

Another TTABlog Reader Found!

We've found another TTABlog reader: Owen Mullet, resident of Cambridge, Massachusetts. Owen attended the recent TTAB Comes to New Hampshire event with his father, Ian, and gave it two thumbs up!

TTABlogger Article: "The Top Ten TTAB Decisions of 2011-2012" Plus 40% Discount on The IP Book

Here's a link to my chapter in the 2012 edition of The IP Book, published by The Midwest Intellectual Property Institute and Minnesota Continuing Legal Education: "The Top Ten TTAB Decisions of 2011-2012." The IP Book provides a collection of updates on case law and emerging issues in all major areas of intellectual property law. [Again, I thank Steve Baird for the opportunity to contribute to this useful and readable reference.]

Table of Contents for this, the 10th Edition:

CHAPTER 1. Federal Circuit Year in Review: Claim Construction Takes a Back Seat

CHAPTER 2. On the Road to Patent Harmonization: An Overview of the AIA and Its Impact on Patent Applicants, Owners and Practitioners

CHAPTER 3. Caraco v. Novo: Counterclaims Relating to Brand Name Description of Claim Scope

CHAPTER 4. Mayo v. Prometheus: The Supreme Court of the United States Comments on Patents and Laws of Nature

CHAPTER 5. Kappos v. Hyatt: Standard of Review of Patent Office Appeals to the District Court

CHAPTER 6. Divided Infringement: A Legal Standard in En Banc Limbo

CHAPTER 7. Developments in the Law of Patent Damages in 2011-2012

CHAPTER 8. Copyright Highlights: Noteworthy Cases 2011-2012

CHAPTER 9. Recent Developments in Trade Secret Law - 2012

CHAPTER 10. Top Ten Trademark Decisions of 2011-2012

CHAPTER 11. The Top Ten TTAB Decisions of 2011-2012

CHAPTER 12. Top Ten UDRP Decisions for 2011–2012

CHAPTER 13. Social Media: 10 Noteworthy Cases in 2011-2012

CHAPTER 14. The Rites of Passage of the European Registered Community Design

TTABlog readers interested in purchasing the 2012 edition of The IP Book ($75) may do so here. For a 40% discount, enter this code when prompted: 2012IPBook.

Text Copyright John L. Welch 2012.

TTAB Affirms Disclaimer Requirement of "PLANTABLE PACKAGING" for Seed-Infused Packaging Material

The Board affirmed a Section 6(a) requirement that Applicant UFP Technologies disclaim the term PLANTABLE PACKAGING in the applied-for mark MF PLANTABLE PACKAGING, finding the term to be merely descriptive of paper and cardboard material infused with seeds. Countering UFP's argument that the term is incongruous, Examining Attorney Andrea Koyner Nadelman submitted dictionary and website evidence establishing that "plantable packaging" is used frequently "to describe goods that have a second life as a plant product after serving an initial purpose as, for example, a party invitation, a personal journal, or product packaging." In re UFP Technologies, Inc., Serial No. 85178012 (September 12, 2012) [not precedential].

Applicant UFP maintained that the term "plantable packaging" creates an inherent incongruity, and at worst only vaguely suggests a characteristic of the goods.

[M]any objects are not thought to be plantable, e.g., automobiles, furniture, jewelry, and packaging. Packaging is a container which is used by consumers to hold another item. Packaging is not meant to be planted into the ground. People do not buy packaging to plant it. The use of the term PLANTABLE with PACKAGING together creates an incongruity.

According to Applicant, imagination, thought, or perception are needed to decide what can be done with these goods once they have served their purpose. Since packaging is generally not used to grow vegetation, Applicant should not have to disclaim the term.

The Board, however, found no incongruity. Although UFP may be correct that there are no "plantable automobiles," and also that a consumer would not first think of product packaging when he or she wants to plant greenery. Nonetheless, the record evidence showed that third-party vendors have been using the term "plantable packaging" to describe biodegradable packaging infused with seeds. Although some of the webpages explain to the reader how items of biodegradable packaging infused with seeds actually work, this is consistent with fact that this technology is relatively new.

Concluding that "plantable packaging" immediately conveys knowledge of a significant feature of the involved goods, the Board affirmed the disclaimer requirement.

TTABlog note: Loyal reader Frank Terranella sent a photograph and asked this question: "What do you mean there are no plantable automobiles?"

Text Copyright John L. Welch 2012.

Fraud at the TTAB: Is "Willful Blindness" Enough?

Three years have passed since the CAFC’s decision in In re Bose raised the bar for proof of fraud at the TTAB. The appellate court jettisoned the “knew or should have known” standard, but left open the question of whether something less than proof of deceptive intent – say, reckless disregard for the truth – would suffice to establish fraud. The Board has yet to answer that question. In fact, it has not sustained a single claim of fraud since Bose. In a December 2011 article [TTABlogged here], TTAB Judge Lorelei Ritchie suggested that the concept of “willful blindness” might be borrowed from patent law and applied in the trademark context. The “willful blindness" standard requires less than proof of willful intent, but more than recklessness.

Earlier this year, I offered a beta version of a revised FRAUD-O-METER that included a “willful blindness” wedge, inspired by Judge Ritchie’s article and by a decision by the U.S. District Court for the Southern District of Florida holding that willful blindness is enough for fraud. According to the court, "a willfully blind defendant is one who takes deliberate actions to avoid confirming a high probability of wrongdoing and who can almost be said to have actually known the critical facts." Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and of Malta v. Florida Priory of the Knights Hospitallers of the Sovereign Order of Saint John of Jerusalem, Knights of Malta, the Ecumenical Order, Civil Action No. 09-81008 (S.D. Florida, Sept. 28, 2011). Plaintiff SMOM had actual knowledge of Defendant Florida Priory nearly two decades before SMOM filed its applications to register. It had an attorney with no personal knowledge of the Defendant execute the applications.

Finding a parallel with the Supreme Court's ruling in Global-Tech Appliances, Inc. v. SEB S.A., 131 S.Ct. 2060 (2011) [a patent case], the court found the Plaintiff's failure to inform its attorney of the existence of Defendant to be "evidence of willful blindness." Therefore, the court cancelled four registrations owned by Plaintiff SMO on the ground of fraud.

On September 11, 2012, however, the U.S. Court of Appeals for the Eleventh Circuit reversed the district court decision. Emphasizing the subjectivity of the attorney's declaration, the appellate court ruled that, because the attorney had "no awareness that any other organization was using the marks for which Plaintiff Order sought federal protection," that fact alone compelled reversal of the fraud finding, "as [the attorney] could not have intended to deceive the PTO in attesting to an oath that he believed was entirely accurate." Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and of Malta v. Florida Priory of the Knights Hospitallers of the Sovereign Order of Saint John of Jerusalem, 104 USPQ2d 1953 (11th Cir. 2012), modified in part, 105 USPQ2d 1001 (11th Cir. 2012).

Moreover, the appellate court asserted that it was error to look to a patent case for the applicable standard to analyze a claim for fraud on the PTO. "We have been admonished to exercise caution before importing standards from one area of intellectual-property law into another." *** "The Florida Priory has not pointed to any authority to establish the sort of 'historic kinship' that may justify translation of a patent infringement standard into the mark-application context."

TTABlog comment: The appellate court's reasoning raises a number of questions. First, after finding no subjective bad intent, why did the court even reach the issue of whether "willful blindness" applies in a trademark case? In Bose, the CAFC declined to say whether reckless disregard for the truth sufficed to prove fraud: because Bose's employee had not been reckless, there was no need to decide the legal issue.

Second, why is it wrong to rely on patent law decisions in a trademark context? Note that the Bose decision itself relies on patent law cases?

Third, does this case provide an easy way to avoid fraud - keep your attorney in the dark?

Text Copyright John L. Welch 2012.

Inter Partes Proceedings at the TTAB: Advanced Practice Tips

Yesterday's "TTAB Comes to New Hampshire" was a resounding success. Approximately one hundred attendees heard the final argument in the FOOTLONG case, as well as presentations from Chief Judge Rogers, Anne Gilson LaLonde, Professor Ashlyn Lembree, and Joshua Jarvis. First-class presentations were made by attorneys Roberta Jacobs-Meadway and Walter Welsh in the FOOTLONG final argument. Judge Rogers made available (pdf here) the paper entitled, "Inter Partes Proceedings at the TTAB: Advanced Practice Tips," authored by Judge Rogers, Judge Ellen Seeherman, and Interlocutory Attorney Cheryl Butler. The paper is chock-full of useful information for TTAB litigants. Enjoy!

From left to right, Judge David Mermelstein, Prof. Ashlyn Lembree, Ann Gilson LaLonde, Chief Judge Gerard F. Rogers, John L. Welch, Judge Mark Bergsman, and Joshua Jarvis.

TTAB Reverses 2(d) Refusal of "PERFUME PARIS & Design" Over "PARIS PERFUMES & Design"

The sophistication of the relevant public and the differences in the marks led the Board to reverse a Section 2(d) refusal of the mark PERFUME PARIS & Design, shown below left, for "retail store services featuring perfume" [PERFUME and PARIS disclaimed]. The Board found the mark not likely to cause confusion with the registered mark PARIS PERFUMES & Design, shown below right, for "distributorship services in the field of perfumes" [PERFUMES disclaimed]. In re Sanyet Ferdinand, Serial No. 77965837 (September 7, 2012) [not precedential].

Third-party registration evidence submitted by the Examining Attorney missed the mark. It showed that many marks have been registered for both retail and distributorship services, but almost none in the field of perfume. In short, the evidence that companies offer both types of services in the perfume field was "very limited."

As to the channels of trade the Board concluded, based primarily on dictionary definitions, that distributorship services are not rendered to the public at large. "Thus, retailers or others in the trade are the only entities that would be aware of or who could encounter" both Applicant's and Registrant's services.

Those in the perfume trade, whether distributors or retail store operators, must be treated as sophisticated and careful purchasers, and thus would be aware of trademarks and likely to notice differences between them.

Turning to the marks, because the words in Applicant's mark are disclaimed (one being generic, the other geographically descriptive), they are entitled to less weight in the analysis. Although the word portion of a word-and-design mark is usually given greater weight, that is not the case here.

The Board reached the same conclusion as to the cited mark. PARIS describes the geographic origin of the perfumes, and PERFUMES is generic and disclaimed. Although the cited registration issued under Section 2(f) as to those words, the acquired distinctiveness "must be recognized to derive from the registrant's use of the mark as a whole, and the conclusion of acquired distinctiveness is to the stylized manner in which the words are depicted, and not to the words per se."

When the marks are compared in their entireties, with appropriate weight given to the dominant portions, "it is clear that the design portions of the respective marks are quite different in appearance and significance." Moreover, the words appear in different order, with the cited mark emphasizing the word PARIS. Assuming the Applicant's mark would be pronounced PERFUME PARIS, the odd syntax creates a somewhat different impression from PARIS PERFUMES.

The only similarity between the marks is the inclusion of the words PARIS and PERFUME(S). Those common elements were not sufficient for the Board to find the marks confusingly similar. The sophisticated purchasers who would be the only overlapping customers for the involved services would not assume, based on these common elements, that the services emanate from the same source. Factoring in the limited scope of protection to which the registered mark is entitled, the Board found that the PTO had failed to establish a likelihood of confusion.

Text Copyright John L. Welch 2012.

Precedential No. 31: TTAB Affirms Mere Descriptiveness Refusal of "CENTER OF SCIENCE AND INDUSTRY"

In a straightforward ruling, the Board affirmed a Section 2(e)(1) refusal to register CENTER OF SCIENCE AND INDUSTRY, finding it to be merely descriptive of "education and entertainment services, namely, operating a museum and conducting workshops, programs and demonstrations in the field of science," and lacking in acquired distinctiveness. And despite 35 years of use of the alleged mark, millions of museum visitors, and the receipt of national awards, Applicant failed to prove its claim of acquired distinctiveness under Section 2(f). In re Franklin County Historical Society, 104 U.S.P.Q.2d 1085 (TTAB 2012) [precedential].

Mere Descriptiveness: Examining Attorney Jason Paul Blair relied on dictionary definitions of the constituent words, on third-party usage of the same or similar names for museum services, and on other uses of the individual words in connection with those services.

The Board found that the dictionary evidence showed the applied-for mark to be descriptive, and the third-party websites established that there is a competitive need to use those words. Although Applicant's identification of goods is broader than "museum services," a descriptiveness refusal is proper if the mark is descriptive of any of the identified services.

Here, it is clear that consumers would understand the applied-for mark to convey information about Applicant's services: namely, "a place where services that concern science and industry are provided."

Acquired Distinctiveness: The Board agreed with the PTO that CENTER OF SCIENCE AND INDUSTRY is highly descriptive of Applicant's services, since it "directly and easily" conveys information about the services. Of course, the greater the descriptiveness of a term, the greater the evidentiary showing needed to establish acquired distinctiveness.

Applicant relied on a declaration from its director of marketing stating that the mark has been in use for 35 years, and on the facts that the museum has received 20 million visitors from all 50 states, has garnered media attention, features "rare artifacts," and has collected national awards.

The Examining Attorney argued that the Applicant is not known by the proposed mark, but rather by the acronym COSI, pointing out that in none of the materials submitted by Applicant does the proposed mark appear without the acronym. Even on Applicant's own website, the term COSI appears prominently, while the full term CENTER OF SCIENCE AND INDUSTRY appears only once, and in small type under the larger letters COSI.

The Board therefore concluded Applicant's evidence of acquired distinctiveness was insufficient, and it affirmed the refusal to register.

Text Copyright John L. Welch 2012.

Precedential No. 30: Denying Cancellation, TTAB Finds CMS Neither Generic Nor Merely Descriptive for Wine

The Board dismissed a two-pronged petition for cancellation of a registration for the mark CMS (in the stylized lettering shown here) for wine, finding the mark to be neither gen

eric nor merely descriptive of the goods. The fact that the mark was derived from the generic names cabernet savignon, merlot, and syrah, or that one can "figure out" the derivation of the term by seeing it in the context of the generic words, does not make CMS generic. As to mere descriptiveness, the evidence failed to show that CMS directly and immediately conveys the meaning of the three varietals. Baroness Small Estates, Inc. v. American Wine Trade, Inc., 104 U.S.P.Q.2d 1224 (TTAB 2012) [precedential].

Genericness: The question was whether CMS is understood by the relevant public to refer to the genus of goods: i.e., "whether the initials for generic or merely descriptive terms, or a combination thereof, are also recognized and used as an accepted abbreviation for the term itself."

Petitioner contended that the public understands that cabernet, merlot, and syrah are the generic names of the wines that are blended in Respondent's wine, and that consumers would understand that CMS refers to those generic terms. It submitted evidence of five different third-party wines for which the term CMS has been used, but as to four of them use has ceased and the extent of public exposure to the term was not clear. Moreover, the manner of usage of CMS was mixed and not sufficient to show, by clear evidence, that the term is generic for wine.

Petitioner also submitted a definition of CMS from Abbreviations.com, which listed 92 definitions for that acronym, as "Cabernet Merlot Syrah." However, the website gave no basis for that listing nor did it indicate when the acronym first appeared. Respondent, on the other hand, submitted a number of references in which CMS was not listed (including Acronymfinder.com, which listed 278 other meanings for CMS).

There was no question that CMS was derived from the initials of the varietals that make up Respondent's wine.

However, the fact that a term is derived from individual generic words or even a listing of generic words does not necessarily make the derived term generic. Nor does the fact that one can figure out the derivation of a term by seeing it in the context of the generic words make that term generic.

The Board concluded that Petitioner had failed to prove that the consuming public perceives the term CMS as generic for wine.

Mere Descriptiveness: There was no evidence that "C" is a recognized abbreviation for "cabernet sauvignon," or "M" for "merlot," or "S" for "syrah." In fact, the evidence showed that the mark CMS does not directly and immediately convey the meaning of the three varietals.

The authors of the various articles and reviews and sales information believed that they needed to spell out the connection between CMS and the names of the varietals that are contained in the wine, and that readers would not immediately understand that the mark CMS has the meaning of cabernet sauvignon, merlot, syrah. Although some consumers may be able to figure out that the mark was derived from the initials of the varietals comprising the wine, the process of recognizing that derivation requires some thought, and that is the very essence of a suggestive mark.

And so the Board found the mark CMS to be inherently distinctive.

Text Copyright John L. Welch 2012.

USPTO Extends Deadlines for Comments on Two Proposed Changes, Finalizes "Universal Symbols" Examination Guide

The USPTO is providing additional time for public comment feedback on two recently published notices. First, the USPTO has extended by three weeks the period for comment on the previously-published Request for Comments Regarding Amending the First Filing De

adline for Affidavits or Declarations of Use or Excusable Nonuse (here). The USPTO is providing the public, including user groups, with an opportunity to comment on a potential legislative change to amend the first filing deadline for Affidavits or Declarations of Use or Excusable Nonuse under Sections 8 and 71 of the Trademark Act. The new deadline for public comment is November 5, 2012. Second, the USPTO has extended by one week, to October 22, 2012, the deadline for comments on the previously-published Notice of Inquiry Regarding Adjustment of Fees for Trademark Applications (here). The notice seeks input regarding possible adjustments to trademark application filing fees so as to promote efficiency for the USPTO and customers by incentivizing complete electronic communication.

Also, a new trademark examination guide has issued on universal symbols. In response to feedback from practitioners and other stakeholders expressing a desire to provide constructive input on trademark examination guides before they are finalized, the USPTO previously made a draft of this guide available for public comment. The final version of the guide is now available on the “Manuals, Guides, Official Gazette” page of the USPTO website (here).
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New Online Version of TMEP (8th Ed.) Now Available

The PTO announces that a new online version of the 8th edition of the Trademark Manual of Examining Procedure (TMEP), with a new search tool, is now available (here). "This release is intended to assist users in the transition to the new version, which will replace the current online version when the next revision of the TMEP is issued in October 2012. The new online version is part of a system that will make it easier to revise, update, and publish the TMEP on a more frequent basis to ensure that the latest changes to statutes, rules, procedures, and examining practices are published and available to users."

The new online version features a redesigned user interface and a search system that enables users to conduct highly focused queries using advanced search syntax including Boolean, proximity, and wild-card search capabilities. A “search history” tool allows quick access to a record of searches conducted during a search session. And a flexible interface, whereby users can make various preference changes for browsing the Table of Contents, displaying and viewing search results, and adjusting font sizes and screen setups, makes it easier to navigate across content areas, search results, and viewed documents.

To access information regarding searching the new online version of the TMEP, changing settings, and other topics, click on the "Help" button in the top right corner above the search box. Please send any comments regarding the new online version of the TMEP to tmtmep@uspto.gov.

TTAB Affirms 2(d) Refusal:"THE HURRICANE CLUB" Confusable With "HURRICANE GRILL & WINGS"

Applicant Fourth Wall Restaurants huffed and puffed but could not blow away the PTO's Section 2(d) refusal of the mark THE HURRICANE CLUB for "bar and restaurant services provided in the style and motif of a Polynesian supper club" [CLUB disclaimed]. The Board found the mark likely to cause confusion with the two registered marks shown below, owned by the same entity, for restaurant and cocktail lounges [GRILL and WINGS disclaimed]. In re Fourth Wall Restaurants, LLC, Serial No. 77930437 (August 29, 2012) [not precedential].

Of course, Registrant's "restaurant services" encompass the Polynesian-style services of the application, and therefore the involved services are considered to be legally identical. The Board must then presume that the channels of trade and classes of consumers overlap.

As to the marks, the design elements of the cited marks merely reinforce the word "hurricane," and that word dominates the other words and design features due to its relative size. Likewise in Applicant's mark, the word HURRICANE is prominent.

Applicant Fourth Wall pointed to certain arguments made by Registrant's precedessor-in-interest during prosecution, when, on arguing against a refusal, it asserted that the red flag design portion is dominant. The Board, however, is not bound by that argument, and it found the red flags to be subordinate to the word HURRICANE.

Applicant lamely contended that "hurricane" has different connotations in the marks because, in the cited marks, the word "connotes the fact that the company [registrant] originates from the state of Florida, which is strongly associated with Hurricanes and is referred to as 'The Hurricane State.'" Applicant maintained that because Applicant has no connection with Florida [Its restaurant is in New York City], the word "hurricane" in the applied-for mark contributes to the connotation of Applicant's Polynesian restaurant.

The Board, however, did not find two meanings for the word "hurricane." The "meager" record evidence did not establish that the word "hurricane" in the cited marks connotes the State of Florida. In any case, even if there were such a geographic connotation, it would be equally attributed to the word "hurricane" in Applicant's mark.

Of course, since the services are legally identical, a lesser degree of similarity between the marks is needed to support a finding of likelihood of confusion. The Board concluded that the similarities between the marks outweigh their differences.

Finally, Applicant urged that "Hurricane" is a widely used name in connection with restaurant services, and is therefore a weak formative. It submitted a listing of restaurant-type businesses using "Hurricane" as part of their names: some 50 in all. However, the probative value of this evidence was limited by the lack of evidence of the public's awareness of these business names. Moreover the number of instances was considerably less that in the Broadway Chicken and the Steve's Ice Cream cases.

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

TTABlog comment: Will Applicant seek to add additional evidence regarding third-party use, in a review by way of civil action under Section 1071(b)? Or would that be as productive as spitting into the wind?

Text Copyright John L. Welch 2012.

"N3D" Not Merely Descriptive of Broadcasting Services, Says TTAB

The Board reversed six Section 2(e)(1) refusals of the mark N3D, in standard character and design form, and N3D DIRECTV, finding the marks not to be merely descriptive of broadcasting services, television programming, and the like, in classes 38 and 41. It agreed with Applicant Direct TV that "there is no threat that applicant's registrations will remove a merely descriptive term from the public domain." In re DIRECT TV, LLC, Serial Nos. 77967755; 77967758; 85082281; 85082282; 85082285; and 85082287 (September 11, 2012) [not precedential].

The Examining Attorney maintained that the letter "N" stands for "in" and "3D" means "three-dimensional." In other words, N3D is "both an abbreviation and a phonetic equivalent of "in 3-D," and thus merely descriptive of broadcasting services utilizing a three-dimensional format.

Direct TV, relying on a "detailed critique" of the PTO's evidence, argued that the letter "N" is not an obvious abbreviation of "in," nor is it a phonetic equivalent, and therefore consumers would not perceive N3D as meaning "in 3D."

The Board began with the insightful observation that "N" is the 14th letter of the English alphabet, and is pronounced "en." At acronymfinder.com [a dubious reference, at best - ed.], "in" is one of the 42 meanings of the letter "N." The Examining Attorney also feebly pointed to several uses of both the term 3D and the phrase "in 3D" at Applicant's website, but the Board found that these instances show that 3D and "in 3D" are not substantially synonymous. Similar third-party usage was equally non-probative.

Finally, the PTO relied on several registrations for marks in which the letter "N" substitutes for "in": NCOGNITO, N-TIMIDATOR, N-SIGHT, N-TACT, NFLIGHT, NFUSION, NSIDE REALTY GROUP, N'TENSE, N'GENUITY, AND N-JECT. But the Board noted that in those cases, the letter "N" takes the place of "IN" as the first portion of a commonly recognized and understood word, making it easier for a consumer to perceive the substitution of "N" for "IN." Here that is not the case.

The Board concluded that consumers are not likely to perceive the letter "N" as meaning "in," or even pronounce it as "in." It agreed with Applicant Direct TV's assessment that N3D is not a "useful abbreviation:"

Acronyms and abbreviations are created for the sake of convenience, because they condense a longer phrase into a shorter string of letters or syllables. However, there is no particular reason why anyone would abbreviate 'in 3D' as N3D. N3D has the same number of syllables as 'in 3D,' and only on additional letter. It saves on space or time.

As Direct TV stated in its brief and at oral argument, competitors are free to use the descriptive phrase "in 3D," but there is no reason why they would need to use the term N3D to describe their services.

And so, the Board reversed the refusals.

TTABlog comment: Since I had trouble understanding the Board's opinion in his recent OpenCL victory, TTABlogged last Friday, Glenn Gundersen suggested that I wear 3-D glasses while reading this opinion. I think it worked!

Text Copyright John L. Welch 2012.

In One Week: 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, as part of a Boston Patent Law Association (BPLA) program to be held at the University of New Hampshire School of Law, to hear final arguments in 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]. 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.

TTAB Sustains Section 2(a) False Association Opposition to "FRANKS ANATRA" for Catering Services

Start spreading the news .... The TTAB sustained a Section 2(a) opposition to registration of the mark FRANKS ANATRA for "catering of food and drinks," finding that it falsely suggests a connection with .... you guessed it! .... Frank Sinatra. And for good measure, it also found Applicant's mark likely to cause confusion with the registered marks SINATRA and FRANK SINATRA for entertainment services, and the mark FRANK SINATRA & Design for prepared sauces. Frank Sinatra Enterprises, LLC v. Bill Loizon, Opposition No. 91198282 (September 12, 2012) [not precedential]

Section 2(a): The evidence, not surprisingly, established that Frank Sinatra is an iconic figure in American culture. The Board found that the applied-for mark is a close approximation of the name Frank Sinatra. Applicant Loizon argued that FRANKS means hot dogs or frankfurters, and ANATRA means "duck" or "drake" in Italian. The Board was unmoved by that argument:

We do not agree because there is nothing inherent in applicant's mark or in his marketing to lead consumers to translate the word "Anatra" to duck. Furthermore, we do not understand how applicant's mark engenders the commercial impression relating to anything other than a play on the Frank Sinatra name.

Loizon testified that "Anatra" is a reference to "the People's Republic of Anatra," a fictional "independent island nation" that is "all about hot dogs." He contended that the badge of the country appears on the door of his truck. The Board found this island imagery to be "obscure" and unlikely to be understood by consumers.

Moreover, the Board observed that it is common for performers and owners of well-known marks to expand their product lines to diverse goods in order to capitalize on their name and brands. The Board therefore found that consumers will associate the applied-for mark with Frank Sinatra. And the Board noted Applicant's concession that Frank Sinatra is not associated with his business.

Finally, there was no doubt that Frank Sinatra is sufficiently famous to satisfy the final element of the Section 2(a) test, and it therefore ruled that Applicant's mark FRANKS ANATRA falsely suggests a connection with Frank Sinatra.

Section 2(d): The Board readily found the marks SINATRA and FRANK SINATRA to be famous for entertainment services.

As to the marks, FRANKS ANATRA and FRANK SINATRA are "phonetically equivalent," which reinforces their visual similarity. Applicant's mark is an obvious play on "Frank Sinatra." [Applicant testified that he has a "passion for humor," but I guess passion does not equal talent - ed.]. However, "the right of the public to use words in the English language in a humorous or parodic manner does not extend to use of such words as trademark if such use conflicts with the prior use or registration of the substantially same marks by another."

In view of the fame of Opposer's mark and the similarities in appearance, sound, and overall commercial impression, the Board found the marks to be similar.

As to the goods/services, the Board again noted the common tendency for performers to expand their product lines, including to services unrelated to entertainment, such as catering. Accordingly, the Board found the goods and services to be related.

Balancing the relevant du Pont factors, the Board found confusion likely and it sustained the Section 2(d) claims as well.

TTABlog comment: Now in the real world, is anyone going to believe there is a connection between Frank Sinatra and this food truck? I think not. But at the TTAB it's a different story.

By the way, how about a catering service called FRAN XINATRA? Too close?

Text Copyright John L. Welch 2012.

Test Your TTAB Judge-Ability on these Five Mere Descriptiveness Refusals

The TTAB recently ruled on the appeals from the five Section 2(e)(1) mere descriptiveness refusals summarized below. [Actually, the second refusal was based on Applicant's failure to disclaim "TEAM"]. Let's see how you do with them, keeping in mind that the Board affirms four out of five mere descriptiveness refusals. Do you see any WYHA's here?

In re RealCore Realty LLC, Serial No. 85028127 (August 13, 2012) [not precedential]. [HOUSING ANGELS for "Real estate acquisition services; Real estate investment services; Real estate investment services in the nature of purchasing and selling of real estate for others; Real estate procurement for others; Real estate services to stop foreclosure, namely, mortgage debt management" (Class 36) [HOUSING disclaimed]].

In re Lance Armstrong Foundation, Serial No. 85018297 (August 15, 2012) [not precedential]. [Disclaimer requirement of TEAM in TEAM LIVESTRONG for "Organization of sports events in the field of running, walking, cycling, and swimming; organizing community sporting events; conducting charity sporting events and tournaments" (Class 41)].

In re Seagate Technology LLC, Serial No. 85007424 (August 24, 2012) [not precedential]. [ADAPTIVE MEMORY for "computer hardware and software for processing storage of data utilizing non-volatile solid state storage, namely, hard disk drives combined with solid state memory" (Class 9)].

In re Cantor G&W, L.P., Serial No. 77819424 (August 29, 2012) [not precedential]. [IN-RUNNING for gaming and gambling machines, mobile and wireless gaming and gambling machines; computer hardware; computer software for mobile and electronic wagering through wireless devices; computer gaming and gambling hardware and software; wireless telecommunications devices; computer hardware and software for wireless telecommunications devices; apparatus for wireless transmission and reception of data (Class 9); and Wagering services; casino services; gaming, gambling and betting services; online gaming, gambling and betting services; casino services offered via wireless telecommunications devices; wagering based on the outcome of sporting events; sports betting; providing information in the fields of sports, betting, wagering, and sports betting; providing information in the fields of gambling and gaming; providing information in the field of sporting events; providing online casino games via telecommunication or computer networks" (Class 41)].

Werner Media Partners, LLC, Serial No. 85083690 (August 30, 2012) [not precedential]. [Ortho-Pedic (in the form shown below, and in the color aquamarine) "sleep products, namely, beds, mattresses, wood bedsteads, mattress toppers, pillows; mattress support systems in the nature of mattress foundations, bed frames, and bed headboards; viscoelastic foam mattresses, viscoelastic foam mattress toppers, non-therapeutic pet beds, and non-therapeutic viscoelastic foam pet beds" (Class 20)].

TTABlog hint: They all came out the same way.

Text Copyright John L. Welch 2012.

TTAB Cancels LITTLE RED HEN BAKERY Registration: No Proof of Pre-Filing Use in Interstate Commerce

The Board sustained a two-legged petition for cancellation of a registration for the mark LITTLE RED HEN BAKERY for various baked bread products [BAKERY disclaimed], finding the mark likely to cause confusion with the previously-used mark RED HEN BREAD for bakery goods, and also ruling that Respondent had failed to prove use of his mark in interstate commerce prior to the filing date of his application. Red Hen Bread LLC v. Norm Oeding, Cancellation No. 92051279 (August 31, 2012) [not precedential].

Likelihood of Confusion: Because the involved goods are legally identical, the Board must presume that they travel in the same, normal channels of trade to the usual classes of consumers. The goods are of the type that are purchased by unsophisticated consumers without great deliberation.

As to the marks, the Board gave less weight to the generic/descriptive words BAKERY and BREAD. The inclusion of the word LITTLE in Respondent's mark was not enough to distinguish it from Petitioner's mark. "The impression of both marks remains the same, that of a RED HEN, with respondent's mark merely providing some additional information about the hen."

In sum, the marks are similar in appearance and sound, and convey substantially similar connotations and commercial impressions.

Respondent claimed that there are a number of similar business under similar marks, but he provided no evidentiary support for that assertion. The Board noted that there is a children's story about a little red hen who attempts to bake bread, but there was no evidence showing that "parties have adopted RED HEN marks because the term has a suggestive connotation for bakery products." Moreover, even if there is a slightly suggestive connotation, it is present in both marks.

Finally, petitioner pointed to a lack of proof of actual confusion, but the Board observed that (1) actual confusion evidence is difficult to obtain, and unnecessary, and (2) there is no evidence that the parties operate in the same geographic area, and so there apparently has not been an opportunity for confusion to occur.

Balancing all the relevant du Pont factors, the Board found confusion likely and it sustained Petitioner's Section 2(d) claim.

Lack of Use in Commerce: Petitioner contended that, as of the filing date of the application that issued as Respondent's registration, Respondent did not make use of his mark in interstate commerce on all of the listed goods. Respondent so stipulated in his answer, and in discovery stated that he sold his goods in only two counties in the State of Kansas and had no distributors outside that state.

Respondent nonetheless argued that his activities within the State of Kansas constituted use in commerce, and that he "continues to maintain that he has distributed his marked products to numerous locations which have on occasion been frequented by customers from outside the state of Kansas." Unfortunately, he provided no evidence to back up those assertions.

Respondent's mere assertions in his brief that he engaged in activities that constitute use in commerce are not sufficient to rebut his own admissions that he did not make use of his mark in interstate commerce on all of the identified goods as the filing date of his application. Although there are situations in which intrastate sales may be found to have such an effect on commerce that may be controlled by Congress that the activities constitute use in commerce, see In re Silenus Wines, Inc., 557 F.2d 806, 194 USPQ 261 (CCPA 1977), there must be a showing that the activities have such an effect.

The Board therefore found that Respondent did not use his mark on all of his identified goods as of his filing date, and ruled that the registration must be cancelled on the ground of nonuse.

TTABlog comment: The little red hen laid an egg.

Text Copyright John L. Welch 2012.

Test Your TTAB Judge-Ability: Are These Automobile Design Marks Confusingly Similar?

The PTO refused registration of the three configuration marks shown immediately below, for "land vehicles, namely, automobiles and engines for land vehicles." Examining Attorney William Breckenfeld deemed them to be confusingly similar to the two design marks shown next below, for "motor vehicles, namely automobiles and structural parts therefor" (the first covering only the roof line, and the second only the C-scoop). Applying the eye-ball test, how would you rule? In re Carroll Hall Shelby Trust, Serial Nos. 77355668, 77356004, and 77356033 (August 16, 2012) [not precedential].

The Board found the goods to be legally identical, and it presumed that they travel in the same normal channels of trade to the same classes of consumers. These du Pont factors weighed heavily in favor of a finding of likely confusion.

Of course, when the goods are identical, a lesser degree of similarity between the marks is necessary to support a Section 2(d) refusal.

As to the mark of the first cited registration, the Board found the roof line to be shorter and not as flat as the roof line in the three applications. And so it reversed the refusals based on that registration.

As to the second cited registration, the Board observed that the C-scoop design "appears to b e incorporated virtually in its entirety in the marks in each of the three applications. Although the applied-for marks are not identical to the registered design, there is a "C-scoop" in each.

We note that the C-scoop is but one aspect of what appears as a “muscle car” in the overall “outward appearance of a vehicle” that is captured by the descriptions in the marks in each of the three applications. As noted by the designer, “[t]he Shelby GT-350 was built on a Ford Mustang platform” *** In this regard, we note that although the C-scoop is part of a larger mark in each of the applications, at the same time, it is still a separately recognizable element of the mark. On the other hand, the C-scoop in the ‘331 registration, which constitutes the whole of that mark, is incorporated in full in some version of the marks in the applications.

The Board found that the commercial impression engendered by the applied-for marks is similar to that created by the registered C-scoop design.

Finally, the Board noted an "unusual situation" that must be considered here: the Shelby automobile is based on the Ford Mustang platform "under various agreements with Ford Motor Company." However, those agreements were never made part of the record. Applicant did not submit any evidence of a consent from Ford, and the Board "must not infer such consent exists."

And so the Board reversed one set of refusals and affirmed the other set.

Precedential No. 29: TTAB Affirms 2(e)(1) and Failure-to-Function Refusals of SEMICONDUCTOR LIGHT MATRIX for Light Curing Systems

In a straightforward decision, the Board affirmed two refusals to register the mark SEMICONDUCTOR LIGHT MATRIX, finding that it is merely descriptive of "Light curing systems composed primarily of light emitting diodes for industrial applications; UV curing systems composed primarily of light emitting diodes, for commercial applications, namely, for curing inks, coatings, adhesives, and a variety of other materials," and further that, as used on the Applicant's specimen of use, it fails to function as a trademark. In re Phoseon Technology, Inc., 103 U.S.P.Q.2d 1822 (TTAB 2012) [precedential].

Mere Descriptiveness: Examining Attorney Kim Teresa Moninghoff relied on use of the term in dictionary definitions of the constituent words, in published articles, on third-party websites, and in two patent applications, leading the Board to find that "SEMICONDUCTOR LIGHT MATRIX describes the technology featured in applicant's products and, therefore, is merely descriptive of a significant feature of the product."

Failure to Function: Phoseon's specimen of use (above) consisted of a photo showing "use of the mark in association with the goods at a trade show." The Examining Attorney maintained that the term SEMICONDUCTOR LIGHT MATRIX identifies a technology, not the source of the UV curing system.

The critical issue concerned how the relevant public would perceive the mark; for example, whether the alleged mark would be perceived as identifying the source of the goods, or merely as an informational phrase. The Board found that the display engenders the commercial impression that Phoseon is selling a UV curing system that uses semiconductor light matrix technology. In other words, consumers will perceive the term SEMICONDUCTOR LIGHT MATRIX as identifying the technology used in Phoseon's product, not as identifying the source of the goods.

And so the Board affirmed both refusals.

TTABlog comment: Two questions comes to mind: (1) WYHA? (2)WITDP? (Why Is This Decision Precedential?)

Text Copyright John L. Welch 2012.

Reminder: 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, as part of a Boston Patent Law Association (BPLA) program to be held at the University of New Hampshire School of Law, to hear final arguments in 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]. 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.

Precedential No. 28: TTAB Finds Stylization of "SADORU" Not Enough to Overcome Mere Descriptiveness Refusal for Motorcycle Seats

The Board affirmed a Section 2(e)(1) refusal of SADORU (Stylized), finding it merely descriptive of "motorcycle parts and accessories, namely motorcycle seats and ergonomic motorcycle pads for use with seats." Applicant did not dispute that "sadoru," which approximates the Japanese word for "saddle," is at least descriptive of the goods. The sole issue before the Board was whether the stylization of SADORU "creates a separate and distinctive commercial impression apart from the word itself, such that the mark as a whole is not merely descriptive." In re Sadoru Group, Ltd., 105 USPQ2d 1484 (TTAB 2012) [precedential]

To decide the issue at hand, the Board applied the "eye-ball" test. It looked to other Board decisions for guidance.

The following five marks were held to be not sufficiently stylized to overcome a distinctiveness refusal:

The following six marks were found registrable, but only upon a showing of acquired distinctiveness; in other words, the stylization was not inherently distinctive:

The following mark was registered on the Supplemental Register, the stylization being considered ordinary and non-distinctive:

On the other hand, these two marks were registered on the Principal Register without a showing of acquired distinctiveness:

Applicant argued that the stylization of its mark is inherently distinctive because "the hand-drawn script creates an impression taken from Japanese ink-style script," giving the mark a "distinctive oriental flavor reminiscent of the ink brush strokes of Japanese (or other Oriental) calligraphy," and creating a mental reference to ancient Japan.

The Examining Attorney provided a sample of Japanese calligraphy, and the Board agreed that Applicant's lettering is "not the same:"

The Board viewed the lettering in Applicant's mark to be "more in the nature of slightly stylized block lettering," and not like the brushstrokes of Japanese calligraphy. The "dip" in the lettering is so minimal as to be insignificant, and the lettering is horizontal, rather than vertical like the calligraphy example.

Applicant submitted several examples of registered stylized marks in arguing its position, but the Board noted, once again, that it is not bound by the actions of Examining Attorneys in other applications, and it further pointed out that the marks that Applicant submitted have more stylization than the instant mark.

The Board concluded that, considering the case law, the stylization of the SADORU mark "does not create a separate and inherently distinctive commercial impression apart from the word itself." It therefore affirmed the refusal under Section 2(e)(1).

Text Copyright John L. Welch 2012.

The TTABlog®

Friday, September 28, 2012

TTABlog Quarterly Index: July - September 2012

Thursday, September 27, 2012

Recommended Reading: Elizabeth W. King, "The Trademark Functionality Doctrine"

Wednesday, September 26, 2012

Another TTABlog Reader Found!

TTABlogger Article: "The Top Ten TTAB Decisions of 2011-2012" Plus 40% Discount on The IP Book

Tuesday, September 25, 2012

TTAB Affirms Disclaimer Requirement of "PLANTABLE PACKAGING" for Seed-Infused Packaging Material

Monday, September 24, 2012

Fraud at the TTAB: Is "Willful Blindness" Enough?

Friday, September 21, 2012

Inter Partes Proceedings at the TTAB: Advanced Practice Tips

Thursday, September 20, 2012

TTAB Reverses 2(d) Refusal of "PERFUME PARIS & Design" Over "PARIS PERFUMES & Design"

Wednesday, September 19, 2012

Precedential No. 31: TTAB Affirms Mere Descriptiveness Refusal of "CENTER OF SCIENCE AND INDUSTRY"

Tuesday, September 18, 2012

Precedential No. 30: Denying Cancellation, TTAB Finds CMS Neither Generic Nor Merely Descriptive for Wine

USPTO Extends Deadlines for Comments on Two Proposed Changes, Finalizes "Universal Symbols" Examination Guide

Monday, September 17, 2012

New Online Version of TMEP (8th Ed.) Now Available

TTAB Affirms 2(d) Refusal:"THE HURRICANE CLUB" Confusable With "HURRICANE GRILL & WINGS"

Friday, September 14, 2012

"N3D" Not Merely Descriptive of Broadcasting Services, Says TTAB

Thursday, September 13, 2012

In One Week: TTAB Comes to New Hampshire - September 20th at UNH School of Law

TTAB Sustains Section 2(a) False Association Opposition to "FRANKS ANATRA" for Catering Services

Wednesday, September 12, 2012

Test Your TTAB Judge-Ability on these Five Mere Descriptiveness Refusals

Tuesday, September 11, 2012

TTAB Cancels LITTLE RED HEN BAKERY Registration: No Proof of Pre-Filing Use in Interstate Commerce

Monday, September 10, 2012

Test Your TTAB Judge-Ability: Are These Automobile Design Marks Confusingly Similar?

Friday, September 07, 2012

Precedential No. 29: TTAB Affirms 2(e)(1) and Failure-to-Function Refusals of SEMICONDUCTOR LIGHT MATRIX for Light Curing Systems

Thursday, September 06, 2012

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

Precedential No. 28: TTAB Finds Stylization of "SADORU" Not Enough to Overcome Mere Descriptiveness Refusal for Motorcycle Seats

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