WYHA? TTAB Affirms Genericness Refusal of PET RELOCATION for ..... Guess What?

Examining Attorney Toby E. Bulloff issued a refusal to register the term PET RELOCATION, deeming it generic for "arranging for pickup, delivery, storage and transportation of documents, packages, freight and parcels, specifically animals and domestic pets, via ground and air carriers." In its specimen of use, Applicant itself described its services as "pet relocation." Third-party evidence also used the term "pet relocation" to refer to the services recited in the application. Would you have appealed? In re Pet Relocation LLC, Serial No. 77849966 (November 8, 2012) [not precedential].


The Board had no doubt that the Examining Attorney provided "clear and convincing" evidence [clear evidence would have been enough - ed.] that the relevant public will understand "pet relocation" to refer primarily to the genus of services identified in the subject application. Therefore it affirmed the refusal.

For the sake of completeness (and assuming arguendo that "pet relocation" is not generic), the Board considered Applicant's Section 2(f) evidence. "Pet relocation" is a "highly descriptive" mark, and therefore a relatively greater showing of acquired distinctiveness is necessary.

In addition to a claim of five years of continuous and substantially exclusive use, Applicant submitted evidence of media coverage, and annual revenues and advertising expenses. [Sales rose from $1M in 2006 to $4M in 2010]. However, this evidence had limited probative value because Applicant did not provide any context to permit an assessment of how these numbers compare with others in the relevant industry.

As to the five year claim, the Board found that Applicant's use was not in fact "substantially exclusive and continuous" in light of the third-party use of "pet relocation" to refer to this type of service.

And so the Board concluded that Applicant had not provided sufficient evidence to prove acquired distinctiveness.

Text Copyright John L. Welch 2012.

Test Your TTAB Judge-Ability: Are STRIPT WAX BAR and THE WAX BAR Confusable for Body Waxing Services?

Applicant sought to register the mark STRIPT WAX BAR & Design for "body waxing services for the human body" [WAX BAR disclaimed], but Examining Attorney John Kelly issued a Section 2(d) refusal in view of the registered mark THE WAX BAR for "body waxing services." Applicant argued that the common element "wax bar" is descriptive, or at least highly suggestive, of the services, and therefore the focus should be on the other elements of its mark. How do you think this came out? In re Stript Wax Bar, LLC, Serial No. 77706198 (November 16, 2012) [not precedential].

In comparing the marks the Board noted that, under the CAFC's ruling in Citigroup, Inc. v. Capital City Bank, it must consider that the registered standard-character mark may be displayed in the same "saloon-style" font as the applied-for mark.

The Board also pointed to the line of cases saying that when a proposed mark incorporates the entirety of a cited mark, the additional matter will not necessarily suffice to distinguish the marks. On the other hand, another line of cases holds that when the common or appropriated matter is highly suggestive or merely descriptive, or is frequently used or registered by others in the field, the addition of a house mark or other matter may serve to distinguish the marks. For example, ZU ELEMENTS in stylized form was found to be not confusingly similar to ELEMENTS for clothing products; ESSENTIALS was deemed not confusingly similar to NORTON MCNAUGHTON ESSENTIALS for clothing items.

Here, however, the Board was not persuaded that WAX BAR possessed the degree of suggestiveness or significance to fall within the latter line of cases. Applicant's evidence "merely" showed eleven different websites referencing marks containing WAX BAR used in connection with body waxing services. However, at least three of them used THE WAX BAR, and may be associated with Registrant. In Knight Textile [the ESSENTIALS case], the Board relied on 23 third-party registrations for marks containing the word ESSENTIALS for clothing products.

With regard to the addition of the word STRIPT, consumers may believe this is a house mark "that simply identifies what had previously been an anonymous source for Applicant's services."

Resolving any doubt in favor of the registrant, the Board found confusion likely, and it affirmed the refusal.

TTABlog note: Applicant was not required by the PTO to disclaim WAX BAR, but only WAX. Apparently it chose to disclaim the two-word term in order to be consistent with its argument that the cited mark is descriptive.

Text Copyright John L. Welch 2012.

TTAB Sustains Section 2(e)(3) Opposition to HAVANA COLLECTION for Cigar Accessories

The Board sustained a Section 2(e)(3) opposition to registration of HAVANA COLLECTION for "cigar cutters; non-electric cigar lighters not of precious metal; humidors; and cigar carrying cases not of precious metal" [COLLECTION disclaimed], finding it to be primarily geographically descriptively misdescriptive of the goods. The Board concluded that because Havana, Cuba, is well known, if not famous, for cigars, consumers will make a goods/place association between cigar accessories and Havana, and the misdescription will be a material factor in the purchasing decision. Corporacion Habanos, S.A. and Empressa Cubano del Tabaco, dba, Cubatabaco v. Xikar, Inc., Opposition No. 91186534 (November 13, 2012) [not precedential].

It was beyond dispute that Havana, Cuba is a generally known geographic location. The addition of COLLECTION to HAVANA does not diminish the primary geographic significance of HAVANA. And it was undisputed that Applicant's products do not originate in Havana.

What about the required goods/place association? Applicant conceded that there is a goods/place association between Havana and cigars, but denied such an association between Havana and cigar accessories. There was little direct evidence referencing cigar accessories and Havana.  Nonetheless, the Board concluded that there is a goods/place association, relying on the CAFC's decision in In re Save Venice N.Y., Inc., which held that "the registrability of a geographic mark may be measured against the public's association of that region with both the traditional goods and any related goods or service that the public is likely to believe originate there." [Emphasis supplied by TTABlog]. Said the Board:

[T]o the extent there is a goods/place association between cigar accessories and Havana, it exists solely as a result of the fame of Havana in connection with cigars. Because Havana is so well-known for cigars, consumers seeing Havana used in connection with a product associated with cigars are likely to believe that there is a goods/place association between these products and Havana.

Finally, as to the materiality of the misdescription in the consumer's purchasing decision, the Board found that, "[b]ecause cigar accessories have no purpose other than to be used in connection with cigars, it follows that cigar accessories are more desirable if there is some association with Havana." This conclusion was bolstered by Applicant's specimen of use, whichfeatured the term "a la Havane" and a certificate of authenticity. A consumer would believe that Applicant was certifying that the product is from Havana and is part of the "HAVANA COLLECTION." Only in the small print is the consumer informed that the certificate refers to the fact that the cigar cutter is hand-made. The Board concluded that Applicant was attempting to associate his product with the positive commercial impression engendered by Havana cigars. In sum, the Board ruled that the use of HAVANA in Applicant's mark is a material factor in the purchasing decision.

And so the Board sustained the opposition.

TTABlog comment: What about HAVANA for bubble-gum cigars? Are those goods related to real cigars? Isn't "El Bubble" an attempt to suggest a Cuban origin? What if the proofs showed that baseball players create a chaw out of tobacco and bubble gum? What if the baseball players include Cubans?

Text Copyright John L. Welch 2012.

TTAB Reverses Mere Descriptiveness Refusal of "PC ON A STICK" for Computer Software and Hardware

Newly-appointed TTAB Judge Anthony R. Masiello penned the Board's opinion in this appeal from a Section 2(e)(1) mere descriptiveness refusal of the mark PC ON A STICK for "computer software for computer system and application development, deployment and management; computer operating system software; computer operating programs and computer operating systems; computer software and firmware for operating system programs; computer storage devices, namely, blank flash drives and high-speed storage subsystems for storage of computer operating programs and systems either locally or via a telecommunications network; computer memory hardware; and computer hardware." The Board reversed the refusal, finding that a consumer "must undertake a multistage reasoning process through which he or she may appreciate the suggestion that the STICK does not contain a PC, but rather all of the data and software content of a PC." In re Lockheed Martin Corporation, Serial No. 85073741 (November 15, 2012) [not precedential].

The Examining Attorney relied on dictionary definitions of STICK and PC, on several online articles, and on Applicant's specimens of use, in maintaining that PC is a commonly-recognized reference to "personal computer," that STICK is a slang expression for a memory module, such as a USB stick, and that PC ON A STICK directly informs consumers that Lockheed's goods "enable the user to carry the essence of their PC with them on a flash drive. The product enables a flash drive to function as a virtual PC."

The Board found the definitions sufficient to establish the meanings of PC and STICK, and it concluded that Applicant's mark, when considered in its entirety, means "a personal computer installed on, contained within, held upon or otherwise connected to a memory storage device such as a flash drive or other compact data storage medium."

Applicant's software products are not computers, and therefore PC ON A STICK does not describe them. But what about "computer storage devices" and "computer hardware?"  

The evidence showed that Applicant's product is an encrypted flash drive capable of holding the contents of a laptop's hard drive, including operating system and software applications.

The Board recognized that PC and STICK have "some relevance to the nature of applicant's goods." But Applicant's goods are not "computers" of any kind. The product may be a STICK for use with a computer, but the product does not and cannot perform the functions of a computer. The Board concluded that the mark suggests the function and purpose of the goods, but it does not do so "forthwith and with immediacy."

Rather, the  mark is both elliptical and exaggerative. The term PC is used elliptically to stand in for "all of the data and software content of a PC." PC is also exaggerative, as the mark suggests that the product is the equivalent of a PC actually contained within a STICK ...." In order to understand the meaning of the mark in the context of these goods, a customer must undertake a multistage reasoning process, through which he or she may appreciate the suggestion that the STICK does not contain a PC, but rather all of the data and software content of a PC. The indirect way in which the mark conveys this information renders it suggestive rather than descriptive of the nature of applicant's computer storage devices.

The Examining Attorney provided three news items evidencing third-party use of PC ON A STICK for similar goods, but each article acknowledged that the product is not in fact a PC, but rather for use with a PC. Thus each writer understood that PC ON A STICK is an exaggeration. "It is reasonable to conclude that, in using the expression PC ON A STICK, each of these writers independently and coincidentally exercised the same expressive license that the applicant used in developing the trademark." These three items amount to "scant evidence" of the meaning of Applicant's mark in the marketplace.

Finally, what about "computer memory hardware; and computer hardware?" There was no evidence that any such product could accurately be described as a PC ON A STICK, and thus no basis for finding the mark descriptive as to those identified goods.

And so the Board reversed the refusal.

TTABlog note: I think the Board got this one right. Not enough evidence of descriptiveness. What do you think?

Text Copyright John L. Welch 2012.

TTAB Grants Cancellation Petition, Finding Prison Toothbrush Design to be De Jure Functional

The Board granted a petition to cancel a registration for the product configuration shown below, for toothbrushes, finding the design to be de jure functional and therefore barred from registration under Section 2(e)(5) of the Trademark Act. A utility patent disclosed and claimed the design, asserting that it is both safer than a conventional toothbrush for use in prisons and other correctional institutions, and is easier to hold in one hand. Phoenix Trading Inc. dba Amercare Products, Inc. v. Loops, LLC, Cancellation No. 92051757 (November 15, 2012) [not precedential].

According to the registration, the mark "consists of a three-dimensional, overall appearance of a toothbrush featuring a smoothly rounded handle, having a top aspect which is generally barbell shaped with the rear end portion being larger than the front end portion and with a narrow intermediate portion smoothly interconnecting both ends, and a side aspect being slightly bowed and smoothly tapered toward its rear end." [specimen of use pictured below].

Petitioner's claim for cancellation relied entirely on the first Morton-Norwich factor, the existence of Respondent's utility patent (7,334,286) entitled "Toothbrush and Methods of Making and Using Same."

The Board noted the Supreme Court's statement in TrafFix that "[a] utility patent is strong evidence that the features claimed therein are functional." In considering a utility patent, the Board may look to not only the claims of the patent, but the entire disclosure.

The Board compared the patent claim language to the description of the registered, finding a correlation between the three-dimensional overall appearance, the rounded handle, general barbell shape, and bowed and tapered sides.

And so the Board found the design to be unregistrable under Section 2(e)(5), and it granted the petition for cancellation.

TTABlog comment: When the claims of a utility patent are detailed and specific and read on a particular product configuration, there is little room for argument that the design is not de jure functional under Section 2(e)(5). Of course, functionality is only the first hurdle prior to registration of a product configuration; acquired distinctiveness must also be shown.

Text Copyright John L. Welch 2012.

Test Your TTAB Judge-Ability: Are CRAWLSAFE and SAFE CRAWL Confusable for Building Repair Services?

Applicant Cable Lock, Inc. applied to register the mark CRAWLSAFE for "repair or maintenance of home and building foundations," but the PTO refused registration under Section 2(d) in view of the Supplementally-Registered mark SAFE CRAWL for "waterproofing and encapsulation, namely, installation of protective barriers and sealing of the crawl spaces of residential buildings." Third-party websites and registration evidence provided by Examining Attorney Deborah Lobo, as well as Applicant's own use of the mark for waterproofing and encapsulation services, convinced the Board that the involved services are closely related and move through the same channels of trade to the same classes of consumers. But what about the marks? And what about the weakness of the registered mark? In re Cable Lock, Inc., Serial No. 8517466 (October 31, 2012) [not precedential].

Because it is registered on the Supplemental Register, the cited mark SAFE CRAWL "is entitled to a narrow scope of protection." Applicant submitted 23 registrations for marks containing the word "Crawl" and 324 registration for "Safe" marks, but that evidence had limited probative value. None of the marks were close to the marks involved here, and none include both words in the same mark. Moreover, the vast majority were for unrelated goods, and there was no evidence that the marks are in continued use. Although these third-party marks may be utilized, like a dictionary, to show that a portion of a mark is descriptive or suggestive, here "that fact has been established by registration on the Supplemental Register."

Turning to the marks, the most significant difference is the reversal of the words. However, given the fallibility of consumers in recalling trade designations, consumers may transpose the elements of the marks and as a result purchase the wrong product or service. When the two marks evoke the same or substantially the same commercial impressions, the Board has found the marks to be similar. That is the situation here: both marks suggest that the services provide a safe crawlspace.

In short, the word reversal is not enough to distinguish the marks when used on closely related services.

Finally, Applicant argued that consumers seeking its services are "sophisticated homeowners and commercial building owners, who exercise extra care when deciding whether to purchase such services." The Board, however, pointed out that the range of Applicant's customers is not limited but rather encompasses "all homeowners, including the ignorant, unthinking, and the credulous." Moreover, even if they were sophisticated, such purchasers are not immune to source confusion, especially when similar marks are used on closely related services.

Nevertheless, the Board acknowledged that the involved services are expensive and the purchase thereof is an unusual, one-time event. Some deliberation would be involved in the purchasing decision, so the degree-of-care factor favors Applicant.

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

TTABlog comment: Okay, it's safe to crawl out of your shell and venture your opinion.

Text Copyright John L. Welch.

TTAB Affirms Genericness Refusal of PARTNER SERVICES for Business Consulting

The Board affirmed a refusal to register PARTNER SERVICES on the Supplemental Register, finding the phrase to be generic for "business development consulting services." Examining Attorney Barney L. Charlon provided the "clear evidence" of genericness required to establish a prima facie case, which Applicant failed to overcome. In re ScanSource, Inc., Serial No. 77731385 (October 19, 2012) [not precedential]


The Board first found that the genus of services is adequately defined by Appliant's recitation of services. This genus encompasses "the provision of services to partner companies," as suggested by the Examining Attorney.

The Board observed that Applicant is a "value-added distributor of specialized technologies providing, inter alia, voice, data and telephony products." Applicant stated that it offers “valuable partner services to its resellers, including system integration, marketing support professional services, education and training, and e-commerce solutions."

The question, then, was whether "Partner Services" is understood by the relevant consuming public to refer primarily to the genus of services. The relevant public consists of "entrepreneurs requiring assistance in business development, including those businessmen and businesswomen who are value-added resellers of specialized technologies, including voice, data and telephony products."

Third-party webpages and Internet articles convinced the Board that "in the business context, 'partner services' is a term broadly used to identify those services offered to another with whom the offering party has a business relationship." Several webpages used "partner services" as a topic heading. Some webpages used the term "partner services" in the reseller context. This evidence established a prima facie case of genericness.

Applicant submitted three third-party registrations in support of its case, but only one was a Principal Registration. One of the three registrations was cancelled, while the one on the Principal Register, for the mark PARTNERS INVESTMENT SERVICES, is of limited probative value. The third is for SERVICE PARTNER PLATFORM, but it was unpersuasive since the word order is different from the subject mark, and the listed services are also different from those of the subject application. In any event, the Board must decide each case on the record before it.

And so the Board concluded that the PTO established a prima facie case by clear evidence that the designation “PARTNER SERVICES” is generic for "those business development consulting services to business involving the use of partners in rendering those services, which fall within applicant’s recitation of services."

TTABlog comment: Perhaps there should be a new ground of refusal: Section 2(j), primarily merely business jargon.

Text Copyright John L. Welch 2012.

TTAB Sustains Mere Descriptiveness Opposition to WOMEN'S RUNNING for Fitness Website

The Board sustained a Section 2(e)(1) opposition to WOMEN'S RUNNING, finding the mark to be merely descriptive of sports and health information services. In view of the highly descriptive nature of the mark, Applicant Rodale's claim of five years of continuous and substantially exclusive use under Section 2(f) was insufficient to prove acquired distinctiveness. Wet Dog Media, Inc. v. Rodale, Inc., Opposition No. 91193283 (October 18, 2012) [not precedential].

Because the PTO approved Applicant's 2(f) claim in passing the mark to publication, Applicant Rodale enjoyed a presumption that its mark is registrable, and Opposer Wet Dog carried the initial burden to establish a prima facie case that Applicant's did not have acquired distinctiveness. If Opposer established a prima facie case, the burden would then shift to Applicant to provide additional evidence to rebut or overcome Opposer's evidence.

The Board agreed with Wet Dog that Rodale's mark is "highly descriptive" of its services. The Board observed that the degree of descriptiveness is relevant because it has a direct bearing on the amount of evidence needed to show acquired distinctiveness. To put it simply, the more descriptive the mark, the more Section 2(f) evidence required.

The Board noted that Rodale's mark is comprised of two "common and readily recognizable words that, combined, will be easily understood by consumers in the context of applicant's services." Consumers will understand that the mark is "merely describing that applicant's information services are geared to 'women' and will focus on the sports and health activity of 'running.'"

Materials submitted by Wet Dog, all by way of notice of reliance, along with Rodale's own website, underscored the straightforward meaning of the subject mark. At its website, Rodale displays "Women's Running" alongside, and in the same font as, other "categories" of information, such as "Nutrition & Weight Loss/ Motivation/ Site Map...Training Log/ High School Runner/Beginners."

The Board pointed out that Wet Dog's evidence (unaccompanied by testimony) does not establish the truth of the statements therein. It does not disprove Rodale's assertion of more than five years of continuous and substantially exclusive use. It does, however, support Opposer's assertion that the subject mark is "highly descriptive" and that Rodale "has not met its ultimate burden to prove acquired distinctiveness." Although the Board cannot reach any conclusions regarding the extent to which the public has been exposed to the materials submitted by Wet Dog, nor can it even assume that the publications were ever circulated, the materials do support Wet Dog's position: they corroborate the "plain meaning" of the term "women's running."

Turning to the sufficiency of Rodale's Section 2(f) evidence, the Board noted that Rodale did not submit testimony, but instead relied only on its 5-year claim of exclusivity. The Board concluded that, in view of the highly descriptive nature of the subject mark, Rodale's 5-year declaration is not sufficient to establish acquired distinctiveness. "The mark will clearly and immediately describe applicant's information services, namely, that applicant is rendering sports and health information [services] aimed at women and involving the sport of running."

The Board therefore affirmed the refusal to register.

TTABlog comment: Was the Examining Attorney asleep at the switch? We all know that Section 2(f) claims based on five years of use are not automatically accepted. Would you have accepted this one?

Text Copyright John L. Welch 2012.

Test Your TTAB Judge-Ability on These Three Section 2(e)(1) Refusals

The TTAB recently ruled on the appeals from the three Section 2(e)(1) refusals summarized below. Let's see how you do with them, keeping in mind that the Board affirms, in my estimate, more than 80% of these refusals. By the way, do you see any WYHA's here?


In re Casio Keisanki Kabushiki Kaisha, DBA Casio Computer Co., Ltd., Serial No. 77884436 (October 18, 2012) [not precedential]. [Mere descriptiveness refusal of PREMIUM AUTO for digital cameras].

In re William E. Gridley, Serial No. 85127536 (October 24, 2012) [not precedential]. [Mere descriptiveness refusal of BOAT VENT for "ventilators for covers, namely, vehicle covers, tarps, canopies, umbrellas" [BOAT disclaimed]].

In re Milo Shammas Serial No. 77758863 (October 25, 2012) [not precedential]. [Refusal to register PROBIOTIC for fertilizer on the ground of genericness (sic!) under Section 2(e)(1)].

Big TTABlog hint: They all came out the same way.

Text Copyright John L. Welch 2012.

CAFC Affirms T-T-A-B's Dismissal of Cancellation Petitions Aimed at VILLAGE PEOPLE Registrations

In a brief, nonprecedential decision, the CAFC affirmed the TTAB's ruling (here) dismissing the fraud and misrepresentation-of-source claims of Karen L. Willis, and also entering summary judgment in favor of Can’t Stop Productions, Inc. on her claims that the mark VILLAGE PEOPLE is generic and was abandoned. Karen L. Willis v. Can't Stop Productions, Inc., Appeal No. 2012-1109 (Fed. Cir. November 13, 2012) [not precedential].

The court concluded that the TTAB correctly entered summary judgment on the genericness claim because there was no evidence that "Village People" is used as a generic term for musical recordings or performances.

As to abandonment, Willis contended that the Village People do not perform as a "musical and vocal group" because they do not sing or play instruments. Instead they lip-sync to recorded music. The court, however, ruled that, "[a]lthough it may reflect on the quality of the entertainment Appellee offers, Mrs. Willis’s argument that the Village People do not actually sing or play their own instruments fails to disqualify them as a “musical and vocal group.”

The court also concluded that the Board properly dismissed Appellant's fraud and misrepresentation-of-source claims as unsupported by any evidence.

Therefore, the court affirmed the TTAB's decision, per curiam.


TTABlog comment: This appellate decision may be of minimal legal import, but it does provide a welcome opportunity to resurrect a golden oldie from the TTABlog songbook: namely, "T-T-A-B." [sung to the tune of the Village People's "Y-M-C-A." (What, you expect me to write music too?)].

T-T-A-B

Losers, there's no need to feel down, I said
Losers, pick your chin from the ground,
get a lawyer who can turn it around,
Take your case up on appeal, and

Owners, you can protect your marks
By opposing. Make your bite match your bark.
You can cancel, should the worse come to worst
Yes the good guys finish first .....

At the T-T-A-B
You gotta go to the T-T-A-B.
When your trademark's at stake
For your own goodness sake
At the Board you will get a fair shake.

You've got to go to the T-T-A-B
I said to go to the T-T-A-B
Don't just fall on your sword,
Bring your case to the Board,
Where you're sure to get your just reward ....

At the T-T-A-B
You've gotta go to the T-T-A-B.
etc.

Text and lyrics Copyright John L. Welch 2006, 2012.

Applicant’s Prior Use of PARLAY for Wine Was Not Unlawful Despite Lack of COLA Approval, Says TTAB

In this Section 2(d) priority contest involving the identical marks PARLAY for wine, Opposer Churchill Cellars claimed that it was entitled to priority because Applicant Brian Graham, although he used the mark first, did not obtain COLA certification for his label until after Churchill secured COLA certification and used its mark. In short, Churchill claimed that Graham’s prior use was illegal. Churchill Cellars, Inc. v. Brian Graham, Opposition No. 91193930 (October 19, 2012) [not precedential].

The regulations of the Department of Treasury Alcohol and Tobacco Tax and Trade Bureau (“TTB”) require approval of a wine’s label prior to sale of the wine: the certificate of label approval, or COLA. Opposer Churchill contended that Graham’s non-compliance with the TTB rules was a material, per se violation of the TTB regulations. Therefore, Churchill maintained, Graham’s use of his mark prior to Churchill’s first use date was not lawful and did not result in the creation of trademark rights.

The Board reviewed its precedents regarding lawful use, observing that the “illegal use doctrine” is narrowly applied. Generally, the Board’s approach is “to hold a use in commerce unlawful only when the issue of compliance has previously been determined (with a finding of noncompliance) by a court or government agency having competent jurisdiction under the statute involved, or where there has been a per se violation of a statute regulating the sale of a party's goods."

Opposer Churchill did not provide any evidence of a prior determination of illegality. It appeared, however, that Applicant Graham “may have been in technical violation of the applicable TTB regulation for a short time, although it is undisputed that it is now in compliance.”

Churchill argued that Graham’s noncompliance was material, because the “purpose of this requirement is to ensure that wine makers properly inform consumers about the wine’s brand, geographic origin, grape type, age and any other relevant information.” The Board, however, found no evidence in the record that Graham’s wine labels were in any way deceptive or failed to provide any information relevant to his wine.

The labels submitted by applicant were ultimately approved by the TTB and there is no evidence that they were found to be deceptive or deficient in any respect. As a result, there is no evidence that applicant’s asserted non-compliance with the applicable TTB regulation is material and should result in denying registration of its mark. Certainly there is no evidence that applicant’s submission of its wine label for approval a few months after commencing use of its mark "was so tainted that, as a matter of law, it could create no trademark rights." General Mills, 24 USPQ2d at 1274.

Finally, the Board noted the “draconian and potentially disproportionate result” of denying trademark rights to a party on the ground of noncompliance, here over three and one-half years after the asserted noncompliance.

And so the Board dismissed the opposition.

TTABlog comment: Do you think this decision will be appealed?

Text Copyright John L. Welch 2012.

WYHA? MLB Strikes Out in Appeal from 2(e)(1) Refusal of HONORARY BAT GIRL for Charity Contest Services

The Board affirmed a Section 2(e)(1) refusal to register the mark HONORARY BAT GIRL, in standard character form, finding it merely descriptive of "conducting a contest relating to cancer awareness." Dictionary definitions, third-party uses, and MLB's own specimen of use convinced the Board that "consumers are accustomed to contests that award winners with the opportunity to be recognized as 'honorary bat girls/boys' and would understand the term HONORARY BAT GIRL to refer to the contest prize awarded by applicant." Would you have appealed? In re Major League Baseball Properties, Inc., Serial No. 77876203 (November 8, 2012) [not precedential].

TTAB Affirms Section 2(e)(4) Surname Refusal of GRISWALD

New TTAB Judge Michael B. Adlin penned the TTAB's opinion in this affirmance of a Section 2(e)(4) refusal to register GRISWALD for luggage, household goods, and clothing. The Board agreed with Examining Attorney Won T. Oh that GRISWALD is primarily merely a surname. In re Bedrock Brands, LP, Serial No. 85036916 (October 23, 2012) [not precedential].

Clark Wilhelm “Sparky” Griswold Jr.
The Board applied its traditional 2(e)(4) test: "(i) whether the surname is rare; (ii) whether anyone connected with applicant has the involved term as a surname; (iii) whether the term has any other recognized meaning; and (iv) whether the term has the 'look and feel' of a surname."

The Board deemed GRISWALD to be a "rare surname," since the evidence showed only 70 people in the United States have that surname. That factor weighed in Applicant's favor. [Under Judge Seeherman's approach in In re Joint-Stock Company "Baik", 84 USPQ2d 1921 (TTAB 2007) [precedential], this degree of rareness might well result in reversal of the refusal].

The second factor was neutral, there being no person having the surname GRISWALD associated with Applicant.

The Applicant and the PTO disagreed as to the third factor. Applicant provided evidence that "Griswald" is a given name in Germany, but there was no such evidence for the United States. The Board found persuasive the Examining Attorney's negative dictionary evidence showing that GRISWALD has no other meaning.

The parties also disagreed as to whether GRISWALD has the "look and feel" of a surname. The PTO pointed to 3,425 listings for the surname "Griswold," a close approximation to GRISWALD, and on Wikipedia evidence regarding the "Griswold" family in the National Lampoon's "Vacation" series of films. Applicant pointed to the lack of evidence that consumers would associate GRISWALD (spelled with an "A") with Griswold (with an "o"). The Board, however, found that GRISWALD does have the look and feel of a surname.

The Board concluded that, although GRISWALD is a rare surname, there was "no persuasive evidence in the record that it would be perceived as anything other than a surname in the United States." The Board therefore affirmed the refusal.

TTABlog comment: If the purpose of Section 2(e)(4) is to block registrations of marks that consumers will perceive as surnames, the decision is probably correct. But if its purpose is to make sure that surnames are available for use by others who have that surname, then under Judge Seeherman's analysis, in light of the rareness of the surname, the refusal should be reversed. So what is the purpose of Section 2(e)(4)? I discussed this issue a few years ago in Section IV of this article.

Text Copyright John L. Welch 2012.

TTABlog Reaches Eighth Anniversary!

The first TTABlog posting went up on November 8, 2004. The subject? Former TTAB nemesis, Leo Stoller. Two-thousand four-hundred posts later, it's still going. Thanks for reading!

Recommended Reading: Professors Lemley and Dogan: "Parody as Brand"

Professors Mark A. Lemley of Stanford Law School and Stacey L. Dogan of Boston University School of Law have authored an article (or "working paper") entitled "Parody as Brand" (download here). Their goal is to "think about what circumstances (if any) should lead courts to find parody illegal."

Abstract:

Courts have struggled with the evaluation of parody under trademark law. While many trademark courts have protected parodies, there are a surprising number of cases that hold obvious parodies illegal. The problem is particularly severe with respect to parodies that are used to brand products, a growing category. The doctrinal tools that generally protect expressive parodies often don't apply to brand parodies. Our goal in this paper is to think about what circumstances (if any) should lead courts to find parody illegal. We conclude that, despite courts’ increasing attention to speech interests in recent years, the law’s treatment of parody reflects too much uncertainty, leaving would-be parodists vulnerable to threats of legal action by trademark holders. In particular, given the flexibility of likelihood of confusion analysis, parodists’ fate is usually determined by the subjective judgment of courts, whose treatment of parody often seems to turn on instinct rather than trademark principles. We suggest some doctrinal tools that offer greater predictability and quicker resolution of parody cases, while avoiding some of the shortcomings of more traditional infringement analysis.

WYHA? TTAB Affirms Mere Descriptiveness Refusal of "MultiAccount" for Debit Cards

Examining Attorney Helene Liwinski issued a Section 2(e)(1) refusal to register the mark MultiAccount, in standard character form, finding it to be merely descriptive of electronic and magnetic ID cards for use in connection with payment services, magnetic coded gift cards, magnetically encoded debit cards, magnetically encoded key cards, and pre-paid telephone calling cards. She maintained that "multi" means "multiple," "account" means account, and the compounding of the two words does not change their descriptive meaning. Would you have appealed? In re Dynamics Inc. Serial No. 85050940 (October 9, 2012) [not precedential].

Dictionary definitions, Internet excerpts, and Applicant's own website (displaying the photo shown above) convinced the Board that the mark immediately conveys the information that Applicant's card may be used with more than one account.

Applicant Dynamics argued that because (existing) debit cards are linked only to a single account, consumers do not have "any understanding regarding the use of the mark in relation to more than one accounts" since no such devices exist in the marketplace. The Board was not impressed for two reasons: first , "MultiAccount" immediately tells the consumer that the card may be used with more than one account. Second,, even if applicant were the first and only user of MultiAccount, the mark is still descriptive of the goods.

Dynamics contended that the Internet articles were merely suggestive of the mark's meaning, but the Board disagreed. The articles "show that the writers use the term MultiAccount for its primary descriptive meaning, thus demonstrating that the compound term does not have a new meaning or incongruous meaning (e.g., 'The MultiAccount lives up to its name, allowing you to use two cards without carrying two cards,' ...)."

And so the Board affirmed the refusal.

TTABlog comment: Well, would you have?

Text Copyright John L. Welch 2012.

"THE BUTTERFLY EFFECT" Confusable With "BUTTERFLY FX" For Business Consultation Services, Says TTAB

The Board affirmed a Section 2(d) refusal to register the mark THE BUTTERFLY EFFECT for "providing employee recognition programs to businesses to promote and reward job quality, productivity, loyalty and longevity." It agreed with Examining Attorney Laurie Mayes that the mark is likely to cause confusion with the registered mark BUTTERFLY FX for "business consulting services featuring professional consultations and business planning." In re TharpeRobbins Company, Inc., Serial No. 85266411 (October 23, 2012) [not precedential].

Eastern Swallowtail (female)(click on photo for larger picture)
The marks: The Board found the marks to be similar in appearance and sound. Any difference in sound between FX and EFFECTS is so subtle as to escape notice or appreciation even by the most careful listener. Moreover, the marks are identical in meaning, each referring to the "butterfly effect" of chaos theory: "the idea ... that something insignificant my have great ramifications, such as the beating of a butterfly's wings can transform atmospheric conditions and may cause (or even prevent) a storm thousands of miles away." Applicant's advertising refers to the butterfly effect, and idea is likewise applicable to the Registrant's consultation services: that small changes can create large effects.

TharpeRobbins argued that FX has many meanings (e.g., foreign exchange, navigational fix, field exercise), but the Board noted that, when coupled with BUTTERFLY, the term will likely be seen as meaning "effects" and as referring to the "butterfly effect." Consumers are not likely to attribute some other, less relevant meaning to FX.

The services: Registrant's broadly-worded identification of goods must be construed to encompass all types of business consultation and planning, including employee recognition programs. The evidence showed that business consulting services "routinely cover employee recognition programs." The Board agreed with the Examining Attorney that "human resource issues are a major part of business planning," and thus it is "no surprise that business planning consultations include consulting related to human resources." Third-party registration and Internet evidence bolstered the Board's finding the consumers are likely to believe that Applicant's and Registrant's services emanate from the same source.

ThorpeRobbins contended that the relevant purchasers would exercise care, planning, and foresight in choosing the involved services. The Board pointed out, however, that Applicant failed to submit evidence to support that contention, and furthermore that even sophisticated consumers may be confused by similar marks for closely related services.

The Board therefore affirmed the refusal to register.

Text and photograph Copyright John L. Welch 2012.

Rolex Seeks Vacatur of TTAB's Precedential Dilution Decision

Rolex Watch U.S.A., Inc. recently asked the CAFC to vacate the TTAB's decision in Rolex Watch U.S.A., Inc. v. AFP Imaging Corporation, 101 USPQ2d 1188 (TTAB 2011) [precedential].[TTABlogged here]. The Board had dismissed Rolex's dilution-by-blurring claim, concluding that Rolex failed to prove that the applied-for mark ROLL-X for "x-ray tables for medical and dental use" would, despite an "actual association" between the marks, impair the distinctiveness of Opposer's famous ROLEX mark.


The appellate court had dismissed the appeal as moot on August 14, 2012, but Rolex asked that the court to modify its order and to vacate the Board's decision. The CAFC, in an Order dated November 1, 2012 [here], declined Rolex's request, but instead remanded the case to "allow the Board to consider a motion to vacate its decision in the first instance, in accordance with United States Bancorp Mortgage Company v. Bonner Mall Partnership, 513 U.S. 18, 29 (1994), and for any further proceedings deemed appropriate by the Board."

The CAFC took "no position as to whether the Board should grant any motion for vacatur or any motion to deem the trademark abandoned."

TTABlog note: Applicant withdrew its application on March 19, 2012. Since that mooted the appeal, is it fair to allow the TTAB judgment to stand when Rolex lost its opportunity to appeal the decision? Is this a case where the "unilateral" action by the victorious party below warrants vacatur?

Text Copyright John L. Welch 2012.

ALI Webinar Nov. 15: "Recent Developments on Registration, Infringement, Dilution, and Remedies"

Yours truly, aka the TTABlogger, will team up with Prof. Ken Germain in an ALI Webinar entitled "Trademark/Trade Dress for Business Lawyers and IP Lawyers: Recent Developments on Registration, Infringement, Dilution, and Remedies." When? November 15th, 1:00 - 2:30 PM, Eastern Standard Time. Registration here.

Prof. Ken Germain

This seminar brings together two nationally-known trademark law experts, Kenneth B. Germain (a long-time professor and practitioner who has served as an Expert Witness in many litigated trademark/trade dress cases), and John L. Welch (an experienced practitioner and author of the acclaimed TTABlog), for an integrated examination of important trademark/trade dress developments during 2012.
This program will cover:

• Federal Registration
• Likelihood of Confusion
• Dilution
• Trade Dress (Product Design)
• Monetary Remedies
• Jurisdiction

TTAB Posts November 2012 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled an oral hearing for November 29th in the three consolidated cases listed below. The hearing will be held in the East Wing of the Madison Building, in Alexandria, Virginia. The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]. Briefs and other papers for these cases may be found at TTABVUE via the links provided.

November 29, 2012 - 10 AM: Central Garden & Pet Company v. Doskocil Manufacturing Company, Inc., Opposition No. 91188816 [Section 2(d) opposition to DOGZILLA  & Design for "dog toys" in view of the registered mark ZILLA for  "vivariums, terrariums, and aquariums for small animals; accessories for vivariums, terrariums, and aquariums, namely, tanks and artificial landscapes, stands, canopies, covers, hoods, air stones, aquarium fish nets" and for "pet food; pet treats." Applicant Doskocil raised the affirmative defense of laches and counterclaimed to cancel Central's pleaded registration on the basis of an allegedly illegal assignment of the underlying Section 1(b) application, in violation of Section 10].

November 29, 2012 - 10 AM: Central Garden & Pet Company v. Doskocil Manufacturing Company, Inc., Opposition No. 91190058 [Section 2(d) opposition to PETZILLA for pet toys, in view of the registered mark ZILLA for  "vivariums, terrariums, and aquariums for small animals; accessories for vivariums, terrariums, and aquariums, namely, tanks and artificial landscapes, stands, canopies, covers, hoods, air stones, aquarium fish nets" and for "pet food; pet treats"].

November 29, 2012 - 10 AM: Central Garden & Pet Company v. Doskocil Manufacturing Company, Cancellation No. 92050852 [Petition for cancellation of a registration for DOGZILLA for dog toys in view of the registered mark ZILLA for  "vivariums, terrariums, and aquariums for small animals; accessories for vivariums, terrariums, and aquariums, namely, tanks and artificial landscapes, stands, canopies, covers, hoods, air stones, aquarium fish nets" and for "pet food; pet treats"].

Text Copyright John L. Welch 2012.

TTAB Finds OUT Confusable With IRON OUT, RUST OUT, DRAIN OUT, YELLOW OUT, LIME OUT, and WHIRL OUT for Cleaning Products

It was four, five, six strikes, you're out! at the TTAB. The Board sustained a Section 2(d) opposition to the mark OUT for "all-purpose cleaner; cleaning preparations," finding it likely to cause confusion with each of the registered marks IRON OUT, RUST OUT [RUST disclaimed], DRAIN OUT, YELLOW OUT, LIME OUT [LIME disclaimed], and WHIRL OUT for various specific cleaning products. Although Opposer IOIP claimed a family of "OUT" marks [not to be confused with an OUT house mark. - ed.] it failed to show that the marks "have been promoted as a family or that the public perceived the mark as a family." IOIP Holdings, LLC v. Ontel Products Corporation, Opposition No. 91197243 (October 9, 2012) [not precedential].

The goods of the application are so broadly worded as to encompass the more specific goods set forth in the pleaded registrations. For example, the IRON OUT registration covers "chemical compounds for use in removing foreign matter from water softeners," which can be classified as a "cleaning preparation." [Really? I wouldn't have thought that. - ed.]

Since the involved goods are legally identical, the Board must presume that they travel through the same normal channels of trade, to the same classes of consumers.

Because the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. The Board found the marks to be "very similar inasmuch as each of the opposer's marks is comprised of a single, highly suggestive or descriptive term followed by OUT." The Board acknowledged that OUT is suggestive of cleaning preparations, but that same suggestive meaning is present in all the marks, "the only difference being that opposer's marks are more specific of the blemish or purpose of the cleaner." Moreover, there was no evidence that OUT is commonly used by third-parties in connection with similar goods such that OUT should be accorded a limited scope of protection.

Although the various initial terms in Opposer's marks are not to be ignored, the involved marks "remain similar based on the common element, OUT."

Weighing all the relevant factors, the Board found confusion likely and it sustained the opposition.

TTABlog comment: Applicant Ontel did not offer evidence or submit a brief. Perhaps that explains why its case went so swiftly down the drain.

Text Copyright John L. Welch 2012.