Test Your TTAB Judge-Ability On These Four Section 2(d) Appeals

Some say that one may predict the outcome of a Section 2(d) likelihood of confusion appeal just by looking at the marks and the goods or services involved. Once again, let's put that theory to the test with the four 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In re Evonik Goldschmidt GmbH, Serial No. 85014843 (October 1, 2012) [not precedential]. [Refusal to register SK-INFLUXfor "chemical products for use in industry, namely, additives and auxiliary agents for the production of cosmetic and pharmaceutical products," in view of the registered marks shown below, the first for chemical additives for use in the manufacture of pharmaceuticals, cosmetics and plastic molding compositions, and for synthetic resins for use in the manufacture of adhesive, paint, cosmetics and binder, and the second registration for "acetone and citric acid for industrial purposes"].

In re Akzo Nobel Coatings International B.V., Serial No. 85121039 (October 2, 2012) [not precedential]. [Refusal to register CONTRACTOR PERFORMANCE for coatings, namely, non-aerosol interior and exterior paints, in view of the registered mark CONTRACTOR for protective and decorative coatings in the nature of aerosol paint].

In re Riotto, Serial No. 85144408 (October 9, 2012) [not precedential]. [Refusal to register TRIUMPH FITNESS and Design, shown below, for "personal fitness training services and consultancy; physical fitness studio services, namely, providing group exercise instruction, equipment, and facilities; providing fitness and exercise facilities" [FITNESS disclaimed], in view of the registered mark TEAM TRIUMPH for "sports club services, namely providing athletic instruction and training, member social events, and providing a website featuring sports competition information" [TEAM disclaimed]].

In re Shameless Swimwear, L.L.C, Serial Nos. 85262472 and 85262496 (October 11, 2012) [not precedential]. [Refusals of SHAMELESS SWIMWEAR for "swimwear, namely, high-end, haute couture bathing suits, bikinis, monokinis and cover-ups" [SWIMWEAR disclaimed] and of SHAMELESS COUTURE for "women's clothing, namely, high-end bathing suits, bikinis, monokinis, cover-ups, tops, shirts, blouses, dresses, skirts, pants, sweaters, scarves" [COUTURE disclaimed], in view of the registered mark SHAMELESS, in standard character form, for "clothing, namely, tops, shirts, dresses, skirts, pants, sweaters, and knit shirts."

TTABlog hint: Of the six refusals involved in these four appeals, one refusal was reversed.

Text Copyright John L. Welch 2012.

Ron Coleman: "Hardball at the TTAB"

Ron Coleman, at his Likelihood of Confusion blog, comments here on the "shark attack" case TTABlogged here yesterday.

Updated Roster of TTAB Administrative Trademark Judges

The appointment of five Administrative Trademark Judges this year brings the membership of the Trademark Trial and Appeal Board to twenty-three (23). Set out below is the current list of Administrative Trademark Judges, beginning with Chief Judge Gerard F. Rogers and then proceeding alphabetically.


Rogers, Gerard F., Chief Judge: Appointed to TTAB in 1999; Prior Professional Experience: Trademark Examining Attorney; Assistant to the Assistant Commissioner for Trademarks; TTAB Staff Attorney; Education: B.A., University of Massachusetts Amherst; J.D. magna cum laude, New England School of Law.

Adlin, Michael B.: Appointed to TTAB in 2012; Prior Professional Experience: TTAB Interlocutory Attorney; USPTO Office of External Affairs; Private Practice; Education: B.A., Duke University, J.D., Boston University School of Law.

Bergsman, Marc A.: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; Trademark Managing Attorney; TTAB Interlocutory Attorney; Private Practice (Washington, D.C.); Education: B.A., Miami University of Ohio; J.D., Cleveland Marshall College of Law, Cleveland State University.

Bucher, David E.: Appointed to TTAB in 1998; Prior Professional Experience: Trademark Examining Attorney; Senior Examining Attorney; Legislative Assistant, Office of U.S. Senator Paul Simon; Director, Trademark Examining Organization; Deputy Assistant Commissioner for Trademarks; Education: B.A., Eastern Mennonite University; J.D., George Washington University.

Cataldo, Peter W.: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Canisius College; J.D., Albany Law School.

Gorowitz, Francie R.: Appointed to TTAB in 2012; Prior Professional Experience: Private Practice (Los Angeles); Trademark Examining Attorney; Education: B.A., State University of New York at Cortland; J.D., Albany Law School.

Greenbaum, Cindy B.: Appointed to TTAB in 2012; Prior Professional Experience: Private Practice (New York and Washington, D.C.); Trademark Examining Attorney; TTAB Interlocutory Attorney; TTAB Managing Interlocutory Attorney (2006-2011); Education: Wharton School, University of Pennsylvania; J.D., New York University School of Law.

Grendel, Charles M.: Appointed to TTAB in 1999; Prior Professional Experience: Private Practice (Oregon); Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Stanford University; J.D., University of Oregon School of Law.

Hightower, Susan J.: Appointed to TTAB in 2012; Prior Professional Experience: Private Practice (Austin, Texas); Education: B.A., Austin College; M.A., University of Texas; J.D., Stanford Law School.

Holtzman, Terry E.: Appointed to TTAB in 1999; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A. with honors, American University; J.D., George Mason University.

Kuczma, Linda A.: Appointed to TTAB in 2011; Prior Professional Experience: Private Practice (Chicago, Ill.): Education: B.S., St. Mary's University; J.D., Loyola University Chicago School of Law.

Kuhlke, Karen: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice (Washington, D.C.); Education: B.A., University of Kansas; M.A., Columbia University; J.D., Georgetown University.

Lykos, Angela: Appointed to TTAB in 2010; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice; Education: B.A., M.A., Johns Hopkins University; J.D., Duke University Law School.

Masiello, Anthony R.: Appointed to TTAB in 2012; Prior Professional Experience: Private Practice (Boston, New York, and Washington, D.C.); Education: Harvard College; J.D., Harvard Law School.

Mermelstein, David: Appointed to TTAB in 2006: Prior Professional Experience: TTAB Interlocutory Attorney; TTAB Supervisory Interlocutory Attorney; Trademark Examining Attorney. Education: B.A., New College, Hofstra University; J.D., American University.

Quinn, T. Jeffrey: Appointed to TTAB in 1988; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Tulane University; J.D., Tulane University School of Law.

Ritchie, Lorelei: Appointed to TTAB in 2008; Prior Professional Experience: Private Practice; Arbitrator and judge pro tem, Orange and Los Angeles counties, California; Intellectual Property Manager, UCLA; Adjunct Professor of Law, Loyola Law School, Los Angeles; Assistant Professor, Florida State University School of Law; Education: A.B., Stanford University; J.D., Columbia University.

Seeherman, Ellen J.: Appointed to TTAB in 1987; Prior Professional Experience: Private Practice (New York, NY); Trademark Examining Attorney; Staff Assistant, Special Assistant to the Assistant Commissioner for Trademarks; Education: A.B., Brandeis University; J.D., New York University School of Law.

Shaw, Thomas: Appointed to TTAB in 2011; Prior Professional Experience: Associate Solicitor at the USPTO; Managing Attorney; Senior Attorney; Trademark Examining Attorney; Education; B.A., George Washington University; J.D., University of Miami School of Law.

Taylor, Jyll: Appointed to TTAB in 2006; Prior Professional Experience: TTAB Interlocutory Attorney; Trademark Examining Attorney; Education: B.A., University of North Carolina at Chapel Hill; J.D., Howard University School of Law.

Wellington, Thomas W.: Appointed to TTAB in 2007; Prior Professional Experience: TTAB Interlocutory Attorney; Trademark Examining Attorney; Private Practice; Education: B.A., University of Maryland at College Park; J.D., American University Washington College of Law.

Wolfson, Frances S.: Appointed to TTAB in 2010; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice; Education: B.A., University of California - Santa Barbara; J.D., U.C.L.A.

Zervas, Albert: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice (New York and Washington, D.C.); Education: B.A. and J.D., University of Virginia.

Text Copyright John L. Welch 2012.

Bullying at the TTAB? Shark Attacks Pro Se Applicant

Pro se Applicant Brick City 21 applied to register the mark shown below left for various clothing items. Great White Shark opposed, claiming likelihood of confusion with its registered design mark (the "Greg Norman logo") shown below right, for overlapping clothing items. Great White filed a motion for partial summary judgment on the issues of standing and priority, and on two of the du Pont factors: the similarity of the goods and the similarity of the channels of trade and classes of customers. The Board granted the motion. Great White Shark Enterprises, Inc.. v. Brick City 21 LLC, Opposition No. 91201911 (October 12, 2012) [not precedential].

Great White established its standing by attaching TARR and TESS printouts for one of its pleaded registrations. Lipton Industries, Inc. v. Ralston Purina Company, 213 USPQ 185, 189-190 (C.C.P.A. 1982); see also Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1408 (TTAB 2010) (pleaded registration made of record establishes standing).

Likewise, priority is not an issue when an opposer relies on a registration. King Candy Co. v. Eunice King's Kitchen, Inc., 182 USPQ 108, 110 (CCPA 1974).

As to the goods, Great White's registration covers "apparel, headwear." Brick City's goods are "casual clothing and garments, namely, shirts, pants, shorts, hooded sweatshirts, hats, bandanas, jackets and sweatshirts." Therefore the goods overlap and to that extent are considered legally identical.

Since the goods are identical, they are presumed to travel in the same, normal channels of trade to the same, usual classes of consumers. Paula Payne Products Co. v. Johnson Publishing Co., 177 USPQ 76, 77 (CCPA 1973); See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003). Brick City argued that its goods are sold only at poker tournaments while Great White's are sold in golf shops and department stores, but that was irrelevant since the Board must look only at the goods as identified in the opposed application and pleaded registration, regardless of what the evidence may show as to the actual nature of the goods, their channels of trade, and/or the classes of consumers . See Canadian Imperial Bank v. Wells Fargo Bank, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987).

The Board therefore granted partial summary judgment on these four issues, leaving for another day the critical issue: are these two marks similar enough for Section 2(d) purposes?

TTABlog comment: Is this a case of bullying by Great White Shark? Do you think the marks are close enough to cause confusion? If you didn't think so, would you try to show your shark's strength, so to speak, by filing a motion for summary judgment on these four issues? Even though you will surely prevail on these "slam dunk" issues anyway? Why spend the time and effort on a partial summary judgment motion instead of waiting for the final denouement? Is it because you hope that a partial victory on summary judgment will intimidate the Applicant into submission?

Let's not kid ourselves, this is the way the game is played at the TTAB. Is this trademark bullying? Or just aggressive and appropriate policing of one's trademark?

Text Copyright John L. Welch 2012.

Erik Pelton's Summary of October 12th TPAC Public Meeting

Erik Pelton, at his blog, reports here on the October 12th meeting of the Trademark Public Advisory Committee (TPAC).


As to our favorite Tribunal, there follows a summary of some of the points in Erik's report. For more details, see Erik's post:

TTAB Update – Chief Judge Rogers:

Filings - Opposition and cancellation filings were up in FY2012, though not quite as high as the levels prior to the latest recessions.

Precedentials TTAB issued approximately 43 precedential decisions in FY2012. [Approximately? - ed.]

New Hirings – Four new judges [TTABlogged here] and three interlocutory attorneys.

ACR Roundtable - TTAB will be hosting a roundtable on ACR on October 30, 2012, from 1:00 to 3:30 P.M. in the USPTO Madison North Auditorium.

TTABlog note: No mention made of the TTAB's adoption of a new font for some of the Board's opinions. Looks like Times New Roman, only different.

California Bar IP Institute: Nov. 8-10, San Diego

Yours truly, a/k/a The TTABlogger, will be speaking at the 37th Annual Intellectual Property Institute hosted by the Intellectual Property Section of the California State Bar, to be held at the Onmi Hotel in San Diego, Nov 8-10th. Details and registration here. Brochure here. Note that the hotel reservation deadline is October 19th, and the registration deadline is November 2nd.

Thursday kicks off with "Nuts and Bolts" sessions on patent, copyright, trademark, licensing, entertainment, and trade secret law featuring both fundamental information for new attorneys in these areas as well as tips and best practices that more experienced practitioners will find valuable. Join your fellow attendees that evening at the poolside patio for a networking reception featuring tequila and local microbrew tastings paired with delicious Mexican appetizers. Friday’s programming spans the IP spectrum and features an opening panel with former Vanguard Award winners Ian Ballon and Professor Mark Lemley. The 4th Annual Vanguard Awards, honoring leaders from the frontier of the IP community, will be held during Friday’s lunch. Be sure not to miss a unique dining experience Friday night at our “Interactive Farmers Market Dinner” and cap off the evening by testing your luck at Casino Night. Saturday will feature more excellent programs and a keynote luncheon with Steve Tapia of DirectTV. Please join us for a three day celebration of this unique area of law.

Yours truly will take the podium on Friday afternoon. The Topic? ..... (wait for it!) ..... "The TTAB in 2012: What’s Hot and What’s Not?"

WYHA? "AL COURA" and "EL KOURA" Confusingly Similar for Olive Oil, Says TTAB

The PTO refused to register the mark AL COURA for "canned processed olives, olive oil, olive paste, processed olives, tahini, [and] grape leaves" on two grounds. First, Applicant Gateway Foods failed to comply with Examining Attorney Anne Gustason's requirement that it furnish a translation of the mark. Second, she found the applied-for mark likely to cause confusion with the registered mark EL KOURA for "extra virgin olive oil." Would you have appealed? In re Gateway Foods, Inc., Serial No. 77930551 (October 2, 2012) [not precedential].

An application to register a mark that includes a non-English term must include an English translation of that term. See Trademark Rule 2.32(a)(9). Gateway did not respond to the Examining Attorney's requirement, and did not address the issue in its appeal brief. The Board affirmed the requirement.

As to likelihood of confusion, Gateway's "olive oil" encompasses the registration's "extra virgin olive oil," and therefore the goods are (in part) legally identical for purposes of the du Pont analysis. As a result, the Board must presume that they travel in the same, normal channels of trade to the same, usual classes of consumers. Moreover, because olive oil is relatively inexpensive, the likelihood of confusion is increased.

The marks are "very similar" in sound. Although Applicant argued that they sound differently, the Board once again observed [Unsoundly? - ed.] that "there is no correct pronunciation of a trademark." The two marks, "whether carefully or hurriedly spoken, still sound alike." The marks look alike, and there is no evidence regarding their meaning. In sum, the marks engender similar commercial impressions.

The relevant duPont factors weigh in favor of a finding of likely confusion, and so the Board affirmed the Section 2(d) refusal.

TTABlog comment: Well. Would you have?

Text Copyright John L. Welch 2012.

TTAB Finds CURVEE, CURVEY, and CURVEEY Merely Descriptive And Confusable With CURVY, All for Clothing

The Board affirmed two refusals in each of three applications (2 x 3 = a sexfusal?) for the marks CURVEE, CURVEY, and CURVEEY for various clothing items, finding them to be merely descriptive of the goods and likely to cause confusion with the Supplementally-registered mark CURVY for overlapping clothing items. Although the cited mark is weak and the evidence showed that "curvy" is descriptive in the clothing field, even a weak mark is entitled to protection against registration of a similar mark for the same or related goods. In re Apparel Limited, Inc., Serial Nos. 85141163, 85141193 and 85141214 (October 2, 2012) [not precedential].

Mere Descriptiveness: Applicant asserted that CURVY is merely descriptive of Registrant's clothing, "designed for larger busts," but it maintained that its three marks are unique and are not the phonetic equivalent of "curvy." Dictionary definitions, third-party uses, and the cited Supplemental Registration itself demonstrated that "curvy" is merely descriptive of a significant feature or characteristic of Applicant's clothing. A slight misspelling does not turn a descriptive word into a non-descriptive mark, and the mere fact that Applicant's spellings are not found in the dictionary is not controlling.

Likelihood of Confusion: Both the applications and the cited registration include "skirts," and the applications include "pants," which are equivalent to Registrant's "trousers." In short, the involved goods are, for purposes of the 2(d) analysis, identical or closely related. There were no restrictions on the goods, and consequently the Board presumed that they travel in the same, normal channels of trade to the same classes of consumers. These factors weighed heavily in favor of a finding of likely confusion.

As to the marks, Applicant's claim that the marks may be pronounced in various ways is, "to say the least, strained." In any case, there is no correct pronunciation of a mark. [Really? What about APPLE, or BLACK CAT, or TTABLOG? Well, forget the third one. - ed]. The marks engender "substantially similar, if not virtually identical commercial impressions."

In sum, the mere difference in spelling is not enough to enable ordinary consumers to distinguish the marks.

The Board "appreciated" Applicant's argument that the registered mark is weak and is entitled to a narrow scope of protection. The evidence showed that "curvy" is descriptive in the field of clothing. However, "even a weak mark is entitled to protection against the registration of a similar mark for closely related goods or services." And even a mark registered on the Supplemental Register may be cited under Section 2(d).

The Board proclaimed once again that there is no per se rule that all clothing items are related for Section 2(d) purposes. [It just works out that way - ed.]. To the extent that any doubt remained as to the Section 2(d) issue, it must be resolved in favor of the prior registrant.

TTABlog comment: Applicant was in a tough spot here. It obviously could not challenge the cited registration on mere descriptiveness grounds, because a mark registered on the Supplemental Register is presumed to be merely descriptive (i.e., not inherently distinctive). So one would have to allege that the mark is incapable of serving as a source indicator. That would mean proving that the mark is generic, or that there are so many third-party descriptive uses that the mark could never acquire distinctiveness. Here, Applicant's third-party use evidence was of minimal value because it provided no proof of the extent of use.

My point is that Supplemental Registrations may be difficult to cancel. They just sit there on the register like a boulder in the road to registration.

Text Copyright John L. Welch 2012.

TTAB Says "Hasta La Vista" to GRUPO PEGASSO Fraud Claim

The Board dismissed a petition for cancellation of a registration for the mark GRUPO PEGASSO and Design (shown below) for musical sound recordings (class 9) and live entertainment services (class 41). It concluded that Registrant Vasquez is the owner of the mark, that Petitioner's Section 2(d) claim must fail for lack of priority, that the mark has not been abandoned, and finally that Petitioner's claim of fraud was meritless. IP ownership maven Pamela Chestek discusses the ownership and priority issues here at her Property, intangible blog (where she expresses confusion over the decision). I shall deal only with the fraud issue. In other words, I am abandoning abandonment. O.T.H. Enterprises, Inc. d/b/a Frontera Music v. Federico Estevan Vasquez, Cancellation No. 92050569 (September 28, 2012) [not precedential].

The dispute stems from the 1985 breakup of the Mexican band Grupo Pegasso. Petitioner claimed that Vasquez committed fraud on the PTO by knowingly misrepresenting his dates of first use, and by submitted false, altered specimens of use (album covers).

The Board pointed out that, under In re Bose, proof of fraud must include a showing of four elements:

(1) applicant/registrant made a false representation to the USPTO;
(2) the false representation is material to the registrability of a mark;
(3) applicant/registrant had knowledge of the falsity of the representation; and
(4) applicant/registrant made the representation with intent to deceive the USPTO.  

Falsity: Petitioner did not establish the first element: that Vazquez made false statements. Although the record contained contradictory evidence as to whether the group's first album was released in 1979 or 1980, Petitioner failed to meet its burden to show that the claimed date of 1979 was false. As to the specimens of use, the testimony of the only witness for Petitioner was offset by Registrant's testimony and evidence that the album covers submitted as specimens were not altered.

Materiality: Moreover, even if Vasquez's statement regarding first use were false, such a false statement cannot be fraudulent. The stated date of first use is not material to the PTO's decision to approve a mark for publication.

Intent: Finally Even assuming that the specimens of use were altered, Petitioner wholly failed to prove that Vasquez intended to deceive the USPTO . His son testified that he did not alter the specimens, nor did his father, nor did anyone he was aware of.

And so the Board dismissed the fraud claim.

TTABlog comment: Fraud may be dead in the sense that the Board never finds fraud. But it is alive and well as a pleaded claim in opposition and cancellation proceedings. It is my belief that parties include fraud claims in major part because of their in terrorem effect. Who cares if you can't prove a fraud claim, as long as it helps pressure the other side into a favorable settlement?

I've had some success getting bogus fraud claims knocked out via the discovery/settlement conference. Interlocutory attorneys seemed to be primed to review and prune the pleadings. I think the Board should require that when a fraud claim is made, the discovery/settlement conference must be held with the participation of an interlocutory attorney.

Maybe the Board should consider establishing a separate conference, like the Markman hearing required in patent infringement cases, where the fraud claimant must present his position on fraud and the other party is allowed to argue why the claim should be jettisoned. I suggest calling it a "Rogers" hearing, named after the Chief Judge who has presided over the demise of fraud at the TTAB.

Text Copyright John L. Welch 2012.

Test Your TTAB Judge-Ability: Is DUB for Dietary Supplements Confusable With DUB for Energy Drinks?

Here we go again! If you're not still staggering after last Friday's JOTS/TOTT'S test, try your luck/skill on this one. The PTO refused registration of the mark DUB for dietary supplements on the ground of likely confusion with the identical mark registered for non-alcoholic energy drinks. Applicant appealed. How do you think this came out? In re Dub Nutrition, LLC, Serial No. 77752113 (October 3, 2012) [not precedential].

The fact that the marks are identical weighed "heavily" against the Applicant. Moreover, there was no evidence of any third-party use of DUB for energy drinks or supplements, and the mark appeared to be arbitrary for energy drinks. The Board therefore considered the cited mark to be a strong mark entitled to a broad scope of protection.

But what about the goods? Not to worry. The Examining Attorney provided a half-dozen third-party registrations that cover both dietary supplements and energy drinks. "Third-party registrations which individually cover a number of different items and which are based on use in commerce serve to suggest that the listed goods and/or services are of a type which may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993)."

Applicant attempted to distinguish the goods by arguing that dietary supplements are healthy and energy drinks are not. But the Examining Attorney submitted website evidence that some energy drinks may appeal to health-conscious consumers.

Applicant asserted the channels of trade differ because its supplements are sold via a direct sales network of individuals/distributors working out of their homes. The Board pointed out, however, that there was no such restriction in the opposed application, and therefore it must assume that Applicant's goods "are sold in all channels of trade appropriate for dietary supplements, including retail stores such as supermarkets and pharmacies, where energy drinks are sold."

Applicant next contended that its customers use care in their purchases, but the Board was unmoved. Although some consumers of supplements may exercise care, others may not: for example, purchasers of daily multi-vitamins, "which may be purchased by the public at large simply because they have heard that it is a good idea to take these vitamins." Moreover, when the marks are identical, even careful purchasers may be confused as to source. And if, as Applicant asserted, energy drinks are impulse items, "there is a likelihood of reverse confusion, because a consumer who is familiar with applicant’s DUB dietary supplements might well buy a DUB energy drink without any thought, merely assuming because of the identical mark that the goods emanate from the same source."

Finally, Applicant asserted that it was not aware of any incidents of actual confusion. The Board observed, however, that the opposed application was based on intent-to-use, and there was no evidence as to when Applicant began using its mark or the extent of that use. In any case, such an assertion by an Applicant in an ex parte context is of little import, since the registrant has no opportunity to rebut the contention.

Considering the relevant duPont factors, the Board found that the PTO had met its Section 2(d) burden, and it affirmed the refusal.

TTABlog comment: Well? Can we say that there is a de facto per se rule that dietary supplements and energy drinks are related for Section 2(d) purposes? The de facto qualifier applies because it's up to the Examining Attorney to put in the third-party registration evidence.

Text Copyright John L. Welch 2012.

Test Your TTAB Judge-Ability: Is JOTS for Gelatin Shots Confusingly Similar to TOTT'S for Sparkling Wine?

Well, with four new Administrative Trademark Judges added to the Board recently, I suppose there's not much chance of your being appointed any time soon. Meanwhile, however, you should stay sharp in case the call comes. Take a shot at this Section 2(d) opposition, in which Gallo Winery opposed an application to register JOTS for "alcoholic beverages, namely, flavored gelatin shot consisting of gelatin mixed with distilled spirits and wine - wine and distilled spirits not combined in a single shot." [Wouldn't "distilled spirits or wine" have been simpler? - ed.]. Gallo claimed likely confusion with its registered mark TOTT'S for sparkling wine. How do you think this came out. E.J. Gallo Winery v. Christopher M. Malek, Opposition No. 91199089 (September 14, 2012) [not precedential].

The parties filed cross-motions for summary judgment, and when the Interlocutory Attorney informed them that both motions would likely be denied, they sipulated to the Board's resolving the case on the summary judgment papers.

The Board found the marks to be similar in sound and appearance, and each lacking in any established meaning. Considered in their entireties, the marks are substantially similar. The differences in the marks "are not so great as to overcome the marks' similarities, particularly when hastily viewed, quickly spoken, or poorly remembered." [Or slurred - ed.].

As to the goods, the Board agreed with Applicant Malek that there is no per se rule that all alcoholic beverages are related. [It just works out that way at the TTAB - ed.]. The relationship of the goods must be decided on a case-by-case basis, and this is particularly significant when the goods are "out of the ordinary," like those of the opposed application.

Malek's goods are not beverages in the normal sense (i.e., liquid), but single portions of flavored gelatin prepared with alcohol; thus the goods are semi-solids or gels. Whereas a typical alcoholic beverage is consumed by drinking it, applicant's goods "would presumably be ingested by eating (although depending on consistency, chewing may be optional)." However, Malek's goods share at least one important characteristic with Gallo's product: both are means of ingesting alcohol by "anyone seeking the pleasures of intoxication (safely, and in moderation, we hope)."

There was no evidence that any entity produces both sparkling wine and gelatin shots, and no evidence of any trademark registrations covering both products. Gallo argued that the goods are related because both comprise or contain wine. The Board concluded that, although it is not clear that Malek's customers would know or care whether the gelatin shots contained wine or some other alcoholic beverage, the goods are related "to the extent that both contain wine and they are both sources of alcohol for human consumption."

As to channels of trade, Malek's business plan states that his "general marketplace is that of alcoholic beverages," with the product to be sold at a relatively low-price to a target demographic of 21-30  year olds. The Board found that the involved goods would be marketed to the same potential customers, and may be purchased by relatively unsophisticated customers with little care or prior experience, and in venues that do not afford an opportunity for close inspection of the goods.

Finally, Gallo argued that its mark is famous, but its proofs fell short. Nonetheless, the evidence showed some renown which, when coupled with the arbitrary nature of the TOTT'S mark, "makes it somewhat more likely that applicant's mark will cause confusion."

Balancing the relevant du Pont factors, the Board found confusion likely. To the extent that there remained any doubt, that doubt must be decided in favor of the prior registrant.

TTABlog note: Well, how did you do? Do you agree with the decision? Could you use a good, stiff gelatin shot after this exercise?

Text Copyright John L. Welch 2012.

TTAB Affirms Refusal to Register Handwheel Design Feature Due to Lack of Acquired Distinctiveness

Despite Applicant's claim of forty (40) years of use, the Board affirmed a refusal to register the product design feature (a gray metallic ring) shown below, for "machine elements, namely, handwheels," on the ground that the feature lacks acquired distinctiveness under Section 2(f). Weak sales figures, lack of "look-for" advertising, and lame declarations from distributors failed to carry Applicant over the high 2(f) hurdle faced by a product configuration mark. In re Elesa S.p.A., Serial no. 77782897 (September 28, 2012) [not precedential].

Of course, under Wal-Mart a product configuration mark can never be inherently distinctive. Moreover, an applicant must meet "a heavy burden in establishing the distinctiveness of a product design."

Applicant claimed continuous and exclusive use of the mark for 40 years, and provided sales and advertising figures, six declarations from distributors, product literature, and copies of Italian court decisions.

The Board observed that, for a mark that is not inherently distinctive because of its nature, evidence of five years' use is not generally sufficient.

Applicant claimed total sales of at least 2.5 million dollars since 1972, spending on average $27,000 per year on advertising. However, it was not clear what portion of the sales occurred in the USA, nor how the advertising dollars were used. Nor was it clear that these sales and advertising dollars related to all of Applicant's products or just those embodying the subject feature.

Applicant's website and literature evidence did not draw attention to the purported mark but instead merely displayed the product. Applicant did refer to the "beauty" or "customizing" provided by the ring, and called it an "Elisa Original Design," but customers would likely view the gray ring as simply a product feature, not a trademark.

The declarations from distributors were flawed: only one identified the company for which he worked and none revealed the declarant's position nor their experience in the industry. Nor did they refer specifically to the gray ring.

Evidence of third-party designs submitted by Applicant was counter-productive because it showed other handwheels in gray and metallic colors.

The Italian court decisions concerned copying of the gray ring by others, but foreign decisions are not "controlling," and furthermore copying may result merely from a desire to exploit a desirable product feature rather than an intention to confuse consumers as to source.

And so the Board concluded that Applicant's gray wheel design feature lacks acquired distinctiveness, and it affirmed the refusal to register under Sections 1, 2, and 45 of the Act.

Text Copyright John L. Welch 2012.

Precedential No. 34: Section 66(a) Registration May Be Cancelled Under Section 14 Even If I.R. Still Viable

The TTAB denied Respondent Mad Croc's Rule 12(b)(6) motion to dismiss this petition for cancellation of a Section 66(a) registration (a/k/a Madrid Protocol extension of protection), alleging that the subject mark had been abandoned. Mad Croc contended that because the corresponding International Registration was still viable, the registration could not be cancelled under Section 14, and therefore that the petition failed to state a claim on which relief can be granted. The Board, however, ruled that "a Section 66(a) registration is subject to the same treatment and conditions which prevail in connection with any other registrant. *** [T]his includes the possibility that the registration may be cancelled on any available ground under Section 14 of the Trademark Act, 15 U.S.C. § 1064." SaddleSprings, Inc. v. Mad Croc Brands, Inc., 104 USPQ2d 1948 (TTAB 2012) [precedential].

Petitioner SaddleSprings alleged that Respondent has "either never used the Registered Mark in commerce or completely ceased using Registered Mark, in connection with the goods identified in the Registration for a period of at least three consecutive years.”

In its motion, Mad Crocs argued that its registration is subject to Section 71 of the Trademark Act, 15 U.S.C. Section 1141k, which states that "an extension of protection remains in force for the term of the international registration, except that the Director may cancel the extension if the affidavit required by Section 1141k is not timely filed." Consequently, Respondent asserted, the Director has no authority to cancel the registration prior to expiration of the grace period for filing a declaration or affidavit of use - i.e., prior to six years and six months after the registration issued on February 20, 2007.

SaddleSprings maintained that Respondent's arguments conflict with Section 69 of the Trademark Act, which provides that "an extension of protection shall have the same effect and validity as a registration on the Principal Register." It argued that, under Respondent's interpretation, Madrid-based registrations would be immune from attack, even if obtained fraudulently and even if the mark has been abandoned, or is generic or "functionable." (sic).

So the question for the Board was this: "whether abandonment is an available claim with respect to a registration based on Section 66(a) for which the underlying international registration is valid and subsisting."

The Board observed that there are some distinctions between registrations issuing on different bases under the Trademark Act: e.g., a Section 1(a) registration requires use, while Section 44 and 66(a) registrations do not; a Section 44(e) registration stands independent of the underlying foreign national registration, while a Section 66(a) registration always remains part of and dependent upon the international registration. However,"the availability of particular grounds for cancellation is not such a distinction."

Section 71 is "clearly not a limitation on cancellation of a Section 66(a) registration" any more than Section 8 is a limitation on cancellation of a Section 1 or 44 registration.  The two sections are "similar by design:" each sets out the normal duration or term of the registration, but neither expressly limits the right of others to petition for cancellation under Section 14 of the Act.

The Board found no support in the text for Respondent's proposed reading of Section 71. Moreover, if Section 71 were to be read as Respondent suggests, then Section 8 should be read to prohibit cancellation of any registration under Section 14, rendering that section meaningless.

The Board asserted that its interpretation of the statute is consisted with Article 5(6) of the Madrid Protocol, which expressly acknowledges that a request for extension may be subject to cancellation..

Because trademark rights in this country are based on use in commerce, and because the validity of a Section 66(a) registration must be determined under the Trademark Act, the registrant must use the mark in commerce in order to avoid abandonment.  In the absence of justifiable non-use, registrations for marks that have never been used, or for which use has been discontinued with no intent to resume use, are subject to cancellation even if the International Registration remains in effect.

Thus, once having obtained a U.S. registration, an owner of a Section 66(a) registration is subject to the same treatment and conditions which prevail in connection with any other registrant. We hold that this includes the possibility that the registration may be cancelled on any available ground under Section 14 of the Trademark Act, 15 U.S.C. § 1064.

And so the Board denied the motion to dismiss and issued an order resuming the proceeding.

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 appeal 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 HOB Entertainment, Inc., Serial No. 85002891 (September 18, 2012) [not precedential]. [Refusals to register KARMA KASH for coupons due to failure to disclaim KASH, and further on the ground of likelihood of confusion with the registered mark KARMA COUPONS [KARMA disclaimed], also for coupons].

In re PBC Supply, Inc., Serial No. 77435787 (September 18, 2012) [not precedential]. [Refusal to register MEDISLIM for "medically supervised weight loss and weight reduction program for patients" in view of the registered mark MEDSLIM MEDICALLY PRESCRIBED WEIGHT CONTROL RX and Design (shown below) for "clinic services for weight reduction, diet planning and program supervision" [MEDICALLY PRESCRIBED WEIGHT CONTROL and the representations of the caduceus and prescription symbol (RX) disclaimed].

In re Apple Inc., Serial No. 85019762 (September 18, 2012) [not precedential]. [Refusal to register the design mark shown on the left below, for "computer software for use in reviewing, storing, organizing, and playing pre-recorded audio content, sold as a feature of handheld mobile digital electronic devices  comprised of digital audio and video players, handheld computers, personal digital assistants, and electronic personal organizers," in view of the mark shown below right, registered for "providing temporary use of nondownloadable software for adding music and video profiles on the internet, for listening to MP3’s and for sharing MP3’s and music playlists with others"].

In re Griffin and Grossman, Serial No. 77850840 (September 20, 2012) [not precedential]. [Refusal of MAJOR MOJO for "apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms" in view of the registered mark MOJO "clothing, namely hats, shorts, tee-shirts, sweat shirts,jackets, coats, socks and infantwear"].

In re Breckenridge Pharmaceutical, Inc., Serial No. 85034402 (September 20, 2012) [not precedential]. [Refusal of FERREX for "vitamin and mineral supplements" on the ground of likely confusion with the registered mark FERREX 18 "iron ingredient sold as an integral
component of a vitamin supplement"].

TTABlog hint: They all came out the same way.

Text Copyright John L. Welch 2012.

TTAB Torpedoes 2(e)(5) Functionality Refusals of Four US Navy Pixilated Fabric Patterns

The TTAB torpedoed four Section 2(e)(5) refusals to register the US Navy's pixilated pattern designs shown below, for clothing sold at military exchanges and for fabric for manufacturing merchandise to be sold at military exchanges. The Board concluded that, although the color pattern has incidental utility (i.e., is de facto functional), the PTO failed to make a prima facie case that the pattern is de jure functional and therefore barred from registration. In re Navy Exchange Service Command, Serial Nos. 77160754, 77160783, 77324266 and 77324270 (September 29, 2012) [not precedential].

The Examining Attorney maintained that the marks are barred by Section 2(e)(5) because the color pattern masks stains and wear-and-tear, and consequently the designs are "essential" to the Navy's requirements for a neat and clean uniform. The Navy fired back with the arguments that any such function or utility is merely incidental, and further that a "plethora" of alternative patterns are available and therefore there is no competitive need for this particular color pattern.

The Board applied TrafFix and Morton-Norwich to the issue at hand, observing generally that under the former, "the design or trade dress of a product is functional and cannot serve as a trademark if its is essential to the use or purpose of the article or if it affects the cost or quality of the article." Under Morton-Norwich, the following factors are to be considered in assessing Section 2(e)(5) functionality:

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.

As to the first factor, there were no utility patents of record. With regard to "advertising," the Examining Attorney pointed to certain statements in Navy regulations and other documents that show the importance of the “uniform display,” exemplifying the Navy's commitment to meet the "qualitative factors" for uniforms set out in these documents: ease of maintenance, cleaning, upkeep, tailoring, neatness, packability, etc.

The Board pointed out, however, that only one of the documents refers to the subject design, stating that a multicolor pattern was chosen because it is less likely to show wrinkles, stains, and heavy wear. The Board, however, was not persuaded that the particular pattern at issue "is superior to any other pattern that could have been chosen." It agreed with applicant that the ability to hide stains and wear and tear is "an incidental function inherent to most patterned material." Moreover, the Navy’s requirements have nothing to do with fabric design. In short, "there is nothing in Applicant's statements that persuade us that applicant’s applied for color pattern is essential to the Navy’s requirement for a neat and clean uniform."

As to the third factor, the Navy's submission of numerous alternative designs of camouflage patterns convinced the Board that "the availability of alternative designs that appear to work 'equally well,' does not support the examining attorney’s argument that applicant's marks are functional." In other words, there is no competitive need to adopt the Navy's color pattern.

Finally, as to cost and quality, the Navy proffered a declaration from a screen-printing company stating that printing the pattern at issue is no less expensive than printing any other pattern or logo. This evidence regarding the fourth factor did not support the PTO’s case, but neither does it necessarily prove non-functionality.

The Board concluded that "[w]hile the color pattern design in applicant's mark may perform the incidental function of masking stains and wear and tear on the fabric and clothing items identified in the applications, it need not be devoid of any function in order to be registrable as a trademark."

Because the PTO failed to show how the Navy's color pattern is functional or how it would hinder competition, the Board reversed the refusals.

TTABlog note: The Navy cleared the ornamentality when the Examining Attorney(s) accepted its claim of acquired distinctiveness under Section 2(f).

Text Copyright John L. Welch 2012.

TTAB Reverses 2(d) Refusal of "DARK HORSE" Over Japanese Character Marks, All for Distilled Spirits

The Board reversed Section 2(d) refusals of the marks DARK HORSE for distilled spirits and DARK HORSE DISTILLERY for "spirits distillery services," finding them not likely to cause confusion with four registered marks owned by the same entity, one for the mark KUROUMA in standard character form, two for the non-latin (hiragana) character marks shown to the right, and the fourth for the word-and-design mark shown immediately below. The Board deemed the involved goods and services to be identical or related, but it rejected the PTO's application of the doctrine of foreign equivalents and concluded that the marks differ in sound, appearance, and commercial impression. In re Dark Horse Distillery, LLC, Serial Nos. 85104448 and 85125674 (September 30, 2012) [not precedential].

The Examining Attorney relied on the doctrine of foreign equivalents in contending that the marks are equivalent in meaning and connotation. He urged that the Japanese-character marks transliterate to "Kurouma," which in turn translates to "dark horse" in English. For the latter proposition, the Examining Attorney relied solely on Registrant's statement in the cited registrations.

Hold your horses, said the Board. It agreed with Applicant's contention that the doctrine of foreign equivalents does not apply because there is no evidence that the "single literal and direct" translation of KUROUMA or of the Japanese characters is "dark horse."

If evidence shows that the English translation is unambiguously literal and direct, with no other relevant connotations or variations in meaning, the doctrine is applicable. *** However, where the evidence shows that the English translation is not exact, literal or direct, the doctrine of foreign equivalents has generally not been applied to find the marks confusingly similar.

Applicant established that other relevant translations of KUROUMA exist, such as black horse, black animal, evil horse, or evil animal. The Examining Attorney's reliance on the translation statements in the cited registrations was improper, because the statements are "not proof of the truth of the matter asserted." The Board noted that the translation statement "is not included in the presumptions listed under Section 7(b) of the Act."

And so the Board reversed the refusals.

Text Copyright John L. Welch 2012.

Buckeye Fire Equipment Files Complaint for District Court Review of TTAB Decision in 2(d) "KITCHEN GUARD" Opposition

Buckeye Fire Equipment Company has filed a civil action under Section 1071(b) in the U.S. District Court for the District of North Carolina, seeking review of the TTAB's decision in Tyco Fire Products LP v. Buckeye Fire Equipment Co., Opposition No. 91192716 (August 1, 2012) [not precedential]. [complaint here].

The TTAB found Buckeye's applied-for mark KITCHEN GUARD for fire extinguishers likely to cause confusion with Tyco's registered mark K-GUARD for portable fire extinguishers. In its Complaint, at paragraph 21, Buckeye alleges that:

The TTAB’s August 1, 2012 decision was unsupported by substantial evidence in accordance with 5 U.S.C. § 706(2)(E). The Court's review of the TTAB’s August 1, 2012 decision will include a review of: 1) the TTAB’s conclusion regarding likelihood of confusion; 2) the TTAB's findings regarding the similarity of the marks; 3) the TTAB's findings regarding similarity of the parties' respective goods; 4) the TTAB's findings regarding similarity or dissimilarity of trade channels and classes of consumers; and 5) the TTAB's findings regarding the conditions under which buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing.

Text Copyright John L. Welch 2012.

TTAB Dismisses 2(d) Opposition to Pyramidal Tea Package Despite Similarity to Opposer's Marks for Tea Infusers

The Board dismissed a Section 2(d) opposition to registration of the mark shown below left, for "bags for packaging made of paper or plastic materials, not included in other classes" in class 16, finding the mark not likely to cause confusion with the two registered marks shown below right, for "tea infusers not of precious metal." Applicant's description of the mark stated that it consisted of cardboard packaging for holding teabags filled with tea. The Board ruled that "[s]imilarity of the marks alone is not enough," because Opposer presented little evidence on any other of the du Pont factors. Tea Forté, Inc. v. Dr. Dünner AG, Opposition No. 91179751 (September 30, 2010) [not precedential].

The Board began with a review of some of the proffered evidence. Opposer relied on the Cold War Museum case [TTABlogged here] in contending that the files of its registrations and pending applications are automatically of record. But the Board pointed out that only the files of challenged registrations and applications are automatically in the record, not a plaintiff's files. Opposer did properly submit the files of four pending applications, but the Board noted that they have little probative value since applications serve to prove nothing more than "that they were filed."

Opposer also relied on magazine articles quoting its founder regarding Opposer's business and its success, but those statements were inadmissible hearsay. And the Board ignored 237 pages of exhibits attached to Opposer's brief, noting that it is pointless to attach evidence to a brief: "If the evidence was not previously submitted, it is untimely; if the evidence was previously submitted it is unnecessary and duplicative."

Opposer claimed prior use of several unregistered marks, but its proofs failed. It took no testimony, and its printed publications were not admissible to prove the truth of the statements made therein.

Turning to the substantive issues, the Board found the drawings of the marks to be quite similar: they depict a pyramidal object with a string attached or emerging from the apex, terminating in a cloud-shaped label or a leaf. The Board concluded that the similarity of the marks favors a finding of likely confusion.

As to the goods, Opposer claimed them that they are identical, both being essentially teabags or tea. The Board, however, looked at the goods as set out in the involved applications and registrations, regardless of whether the evidence showed the goods to be different from those identified. It also considered the drawings in light of the descriptions of the marks, which descriptions are required by Rule 2.37 in applications for product configuration or trade dress marks.

Applicant's goods are not tea, tea bags, or tea infusers, as Opposer claimed. They are packaging for tea, in class 16. Opposer's goods are not tea bags, but tea infusers in class 21. Tea infusers are typically made of mesh or perforated material, often with a handle, chain, or similar appendage.

The Board concluded that the uncertainties in Opposer's first registration prevented the Board from finding a likelihood of confusion. The description of the mark referred to it as a triangle-shaped tea bag, but the goods are tea infusers, an irreconcilable difference.

In the second of Opposer's registrations, the mark is described as "the ... trade dress of the packaging for a product ..." The "product" could include tea infusers, so there was no inconsistency here.

The Board found the involved goods to be very different and serving different purposes. One needing packaging for tea bags would not consider a tea infuser, and vice versa. The customers for the products are likely to be different, and the normal channels of trade are different and do not overlap.

As to conditions of sale, Opposer's tea infusers are likely to be relatively inexpensive, but there was no evidence as to the cost of Applicant's packaging. Therefore the Board was unable to reach any conclusion as to this factor.

Finally, Opposer contended that its mark is well-known, but it failed to submit any competent evidence as to sales or length of use of the marks.

Balancing the relevant du Pont factors, the Board concluded that Opposer had failed to carry its burden to show likelihood of confusion.

Text Copyright John L. Welch 2012.

California Bar IP Institute: Nov. 8-10, San Diego

Yours truly, a/k/a The TTABlogger, will be speaking at the 37th Annual Intellectual Property Institute hosted by the Intellectual Property Section of the California State Bar, to be held at the Onmi Hotel in San Diego, Nov 8-10th. Details and registration here. Brochure here. Note that the hotel reservation deadline is October 19th, and the registration deadline is November 2nd.

Thursday kicks off with "Nuts and Bolts" sessions on patent, copyright, trademark, licensing, entertainment, and trade secret law featuring both fundamental information for new attorneys in these areas as well as tips and best practices that more experienced practitioners will find valuable. Join your fellow attendees that evening at the poolside patio for a networking reception featuring tequila and local microbrew tastings paired with delicious Mexican appetizers. Friday’s programming spans the IP spectrum and features an opening panel with former Vanguard Award winners Ian Ballon and Professor Mark Lemley. The 4th Annual Vanguard Awards, honoring leaders from the frontier of the IP community, will be held during Friday’s lunch. Be sure not to miss a unique dining experience Friday night at our “Interactive Farmers Market Dinner” and cap off the evening by testing your luck at Casino Night. Saturday will feature more excellent programs and a keynote luncheon with Steve Tapia of DirectTV. Please join us for a three day celebration of this unique area of law.

Yours truly will take the podium on Friday afternoon. The Topic? ..... (wait for it!) ..... "The TTAB in 2012: What’s Hot and What’s Not?"

Split TTAB Panel Finds VERDE Merely Descriptive of Power Supplies

A divided TTAB panel affirmed two refusals to register the mark VERDE, in standard character form, finding it merely descriptive of electrical and electronic devices for power supply technology, and further finding that Applicant had failed to comply with the Examining Attorney's request for information under Rule 2.61(b). Judge Seeherman dissented, concluding that the Section 2(e)(1) evidence was insufficient, and that consequently the refusal based on Rule 2.61(b) was too harsh a penalty under the circumstances. In re Verde Power Supply, Inc., Serial No. 77907011 (September 12, 2012) [not precedential].

When Examining Attorney Kristina Morris requested information regarding Applicant's products, Applicant refused to provide same on the ground that it did not want to reveal trade secrets. The Examining Attorney then asked Applicant to answer two questions: (1) are the goods energy efficient? and (2) are the goods environmentally friendly? Applicant ignored those questions, even when the Examining Attorney raised the issue in her brief.

The panel majority found the Examining Attorneys approach to be proper under Rule 2.61(b), and it therefore affirmed this refusal.

In light of Applicant's failure to answer those questions, the Board presumed that the answers would have been unfavorable to Applicants: i.e., that its goods are energy efficient and environmentally friendly.

Turning to the word VERDE, there was no disagreement that VERDE is a Spanish word for "green." Nor was there a dispute that many purchasers of the goods would be aware of the meaning of VERDE, since Spanish is a common, modern language.

The Examining Attorney submitted a definition of "green" in English to show that the word identifies environmentally friendly services and products. She argued that "verde" has the same idiomatic connotation as does the English word "green." However, her only proof on that point was a single on-line reference to an article concerning a Costa Rican energy project. The Board found that evidence insufficient to show that "verde" has the same idiomatic meaning as "green."

The panel majority observed, however, that "the ecological or environmental meaning of the word 'green' or 'verde' has been evolving over the years and is therefore not necessarily reflected in all available reference sources." The Board took judicial notice of additional dictionary definitions, one from a 2004 Spanish dictionary defining "verde" as "(ecologistica) Green, green," and a 2009 Spanish dictionary defining "ecologistica" with a reference to the "Green party." From these definitions, the panel majority concluded that "green" and "verde" are idiomatic equivalents, and it therefore affirmed the mere descriptiveness refusal.

In dissent, Judge Seeherman maintained that the single definition of "verde" from a 2004 Spanish dictionary is not an adequate basis on which to conclude that "verde" has an ecological or environmental meaning. She particularly noted that two later dictionaries (2006 and 2007) submitted by Applicant, as well as a 2010 online definition, do not include any such meaning for "verde." At the least, this raises a doubt about the mere descriptiveness of VERDE, a doubt the must be resolved in Applicant's favor.

As to the Rule 2.61(b) refusal to register, Judge Seeherman agreed that Applicant should have answered the questions. However, she considered the adverse inference to be a sufficient penalty for Applicant's failure to provide information. Since Judge Seeherman viewed the PTO's evidence inadequate to establish the Section 2(e)(1) bar, she would not refuse registration on the Rule 2.61(b) ground alone.

TTABlog comment: The majority's evidence was pretty weak, don't you think? Oh well, if you are interested in the latest FTC Green Guides (Guides for the Use of Environmental Marketing Claims), take a gander at Lara Pearson's post here.

Text Copyright John L. Welch 2012.

Beverly Hills Bar, Oct. 11th Luncheon: "Dressing Up IP: Copyright, Trademark, and Licensing Issues in the Fashion Industry"

On October 11, 2012, the Beverly Hills Bar Association will host a luncheon and panel discussion entitled "Dressing Up IP: Copyright, Trademark, and Licensing Issues in the Fashion Industry." Full details here. Where? 9420 Wilshire Boulevard, Second Floor, Beverly Hills, CA. 90212 (Parking at 241 North Canon Drive). When? Registration and lunch: 12 noon. Program: 12:30 - 2:00 PM. [Program will be streamed online, and available later via Internet.]

This program will discuss protection, monetization, and enforcement of IP in fashion design and will also review recent court decisions impacting Fashion Law, inlcuding the recent ruling in Louboutin v. YSL by the Second Circuit Court of Appeals.


Speakers:

• Staci Riordan, Esq.: Partner and Chair of Fashion Law Practice Group, Fox Rothschild LLP
• Deborah Greaves, Esq.: Secretary and General Counsel , True Religion Brand Jeans
• Melissa Dagodag, Esq.: Principal, Law Offices of Melissa Dagodag

"MCLE CREDIT: This activity has been approved for Minimum Continuing Legal Education credit by the State Bar of California in the amount of 1.5 HOURS and the Beverly Hills Bar Association certifies that this activity conforms to the standards for approved prescribed by the rules and regulations of the State Bar of California governing minimum continuing legal education. "
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New Law Signed October 5th Corrects Clerical Error in Trademark Dilution Statute

On Friday, October 5, 2012, President Obama signed into law "An Act to amend the Trademark Act of 1946 to correct an error in the provisions relating to remedies for dilution." [pdf here]. This Act amends the Trademark Act to correct the clerical error discussed in today's TTABlog posting regarding the OSCAR case. Note that the change is not retroactive, but applies only to petitions for actions commenced "on or after the date of the enactment of this Act."

The law corrects Section 43(c)(6) to read as follows:

6) Ownership of valid registration a complete bar to action.

The ownership by a person of a valid registration under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register under this chapter shall be a complete bar to an action against that person, with respect to that mark, that—

(A) is brought by another person under the common law or a statute of a State; and

(B)(i) seeks to prevent dilution by blurring or dilution by tarnishment; or
(ii) asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark, label, or form of advertisement.

TTABlog comment: apparently there is no dispute that an "action" includes cancellation proceeding at the TTAB.

P.S. Hat tip to Anne Gilson LaLonde.

Precedential No. 33: Federal Registration Defense Yields TTAB Dismissal of Dilution Claim

In a case of first impression, the Board granted Respondent APC's Rule 12(b)(6) motion to dismiss cancellation Petitioner Motion Picture Academy's claim for dilution-by-blurring, on the ground that Section 43(c)(6)(B) provides a "complete bar" to a dilution claim against a federal registration. Although the parties and commentators agree that a "clerical error" was made during passage of the Trademark Dilution Revision Act in 2006 (TDRA), the Board applied the statue as written, finding insufficient basis in the legislative history to justify an alternative reading of the statutory language. Academy of Motion Picture Arts and Sciences v. Alliance of Professionals & Consultants, Inc., 104 U.S.P.Q.2d 1234 (TTAB 2012) [precedential].

APC registered the mark OSCAR in 2011 for "providing recognition and incentives by the way of awards and contests to demonstrate excellence in the field of business consultation and information technology." The Academy petitioned to cancel on three grounds: Section 2(d) likelihood of confusion with its registered mark OSCAR for various entertainment services; section 2(a) false association; and Section 43(c) dilution-by-blurring. Prior to answer, Respondent APC filed a motion to dismiss the dilution claim, asserting the "federal registration defense."

The Board found no cases raising this issue in the federal courts or before the Board. The fact that the Board has entertained dilution claims in other cancellation proceedings was "not persuasive."

The federal registration defense was included in the Federal Trademark Dilution Act of 1995 (FTDA), which provided that "ownership by a person of a valid registration" is a "complete bar" to any action brought "under common law or a statute and that seeks to prevent dilution of the distinctiveness of a mark, label, or form of advertisement." In 2006, the TDRA sought to expand this defense to include all types of state law dilution claims by replacing "dilution of the distinctiveness of a mark" with "dilution by blurring or dilution by tarnishment."

During Senate consideration of the House bill, Section 43(c)(6) was slightly reorganized. The Senate version of the bill became law, and as a result the statute states that ownership of a federal registration acts as a "complete bar" to a federal dilution claim (as well as state law-based claims). The Academy argued that such the interpretation urged by APC would result in inconsistencies and absurd results. Commentators (and the parties) agreed that a clerical error occurred in the legislative process [by reorganizing the sub-section headings], but disagree how that "error" should be interpreted. As enacted, Section 43(c)(6) reads as follows:

(6) Ownership of valid registration a complete bar to action.
The ownership by a person of a valid registration under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register under this chapter shall be a complete bar to an action against that person, with respect to that mark, that—
(A) (i) is brought by another person under the common law or a statute of a State; and (ii) seeks to prevent dilution by blurring or dilution by tarnishment; or
(B) asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark, label, or form of advertisement.

The bill as passed by Congress read as follows:

The ownership by a person of a valid registration ... shall be a complete bar to an action against that person, with respect to that mark, that--
(A) is brought by another person under the common law or a statute of a State; and
(B)(i) seeks to prevent dilution by blurring or dilution by tarnishment; or (ii) asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark....

The Board observed that when statutory terms are unambiguous, the language must be given effect, except in those "rare and exceptional circumstances" when there is a "clearly expressed legislative intent to the contrary."

The Academy characterized this reorganization of the language as "unintended," but the Board found "scant legislative history, and certainly not enough to support an alternative reading in this case. The Board "must apply and enforce the statute as written, rather than picking and choosing a preferred interpretation." It must "assume that Congress means what it says." If Congress intended something else, it is up to Congress to amend the statute accordingly.

Accordingly, the Board granted the motion to dismiss.

TTABlog comment: What do you think of this decision? I don't see how the Board would have the power or authority to ignore or re-cast the statutory language. What might a district court do if presented with a claim for cancellation on the ground of dilution?

Since this is an interlocutory ruling, when will it be reviewed/appealed?

PS: I think I have to file an amended answer in one of my cancellation proceedings to add a new affirmative defense.

Text Copyright John L. Welch 2012.