Monday, December 31, 2012

TTABlog Quarterly Index: October - December 2012

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First Encounter Beach, Eastham, MA
(Click on photo for larger picture)

Section 2(a) - Scandalous or Immoral:

Section 2(d) - Likelihood of Confusion:
Section 2(e)(1) - Mere Descriptiveness:
Section 2(e)(2) - Primarily Geographically Descriptive:
Section 2(e)(3) - Primarily Geographically Deceptively Misdescriptive:
Section 2(e)(4) - Primarily Merely a Surname:


Section 2(e)(5) - Functionality:
Section 2(f) - Acquired Distinctiveness:
Abandonment:
Dilution:
Failure to Function:
Fraud:
Genericness:
Use in Commerce/Specimen of Use:
Discovery/Evidence/Procedure:
CAFC Decisions:
District Court Review:
Recommended Reading:
Other:
Text Copyright John L. Welch 2012.

posted by John L. Welch @ 12/31/2012   2 comments

Friday, December 28, 2012

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. 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In re Infinity Wind Power, Inc., Serial Nos. 77572712 and 77575965(December 11, 2012) [not precedential].[Refusal of INFINITY WIND POWER in standard character and design form, for wind energy project advisory services [WIND POWER disclaimed], in view of the registered mark ENFINITY & Design for management, consultation, installation, maintenance, development and implementation of renewable energy systems, including wind energy, photovoltaic energy and concentrated solar energy.]


In re ConSeal International Inc., Serial No. 85125792 (December 13, 2012) [not precedential]. [Refusal to register STOP BUGGING ME! for "Insecticides; pesticides; pesticides for exterminating, namely, bed bugs and dust mites" in view of the registered mark QUIT BUGGING ME for "insect repellents."]


In re Top That! Pizza Holding, LLC, Serial No. 85151866 (December 13, 2012) [not precedential]. [Refusal of TOP THAT! PIZZA WHERE PIZZA GETS PERSONAL and Design, for "dine-in and carry-out restaurant featuring individually topped pizzas [PIZZA disclaimed]," in view of the registered mark TOP THIS! for "pizza; pizza crust."]


In re Sam Farha, Inc., Serial No. 85061371 (December 13, 2012) [not precedential]. [Refusal to register the mark shown below for "shirts," the mark consisting of "a round-faced caricature depicting the poker face of world famous poker player Ihsan Sam Farha, including his trademarked use of an unlit cigarette dangling from his mouth, with the literal component, 'CHIPS HAPPEN' appearing proximate thereto in block lettering employing shadowing," in light of the registered mark CHIP HAPPENS for "short sleeve and long sleeve t-shirts, sweatshirts, and hats."



TTABlog comment: Here's a big hint. They all came out the same way. Would you take any of these cases up for further review?

Post your comment here.

Text Copyright John L. Welch 2012.

posted by John L. Welch @ 12/28/2012   1 comments

Thursday, December 27, 2012

GRAND PRIX SPORTS Merely Descriptive of Rugby and Soccer Tournaments, Says TTAB

In this consolidated appeal, the Board affirmed nine (9) Section 2(e)(1) refusals to register, finding the marks GRAND PRIX SPORTS and eight other GRAND PRIX-formative marks to be merely descriptive of entertainment services related to rugby, soccer, football, and basketball. Dictionary definitions, third-party registrations, and Applicant William Tatham's responses to several questions posed by the Examining Attorney David Elton supported the PTO refusal. In re Tatham, Serial Nos. 77754249, 77754270, 77754276, 77754286, 77754290, 77754297, 77754306, 77754327 and 77782796 (December 12, 2012) [not precedential].


The evidence showed that "grand prix" refers to "important or high level competitions," and applies not only to auto racing but to vastly different competitions. Applicant stated that his tournaments would be "at the highest possible level," like the Formula One Grand Prix auto race. Third-party registrations included FINA GRAND PRIX for water sports [GRAND PRIX disclaimed], K-1 GRAND PRIX for martial arts [GRAND PRIX disclaimed], GRAND PRIX OF DOG AGILITY for sporting events for animals [Section 2(f)], and GRAND PRIX CARD TOURNAMENTS [Supplemental Register].

Tatham argued that the primary definition of "grand prix" refers to an auto race, but the Board pointed out that the marks must be considered in the context of the services. Just because a particular definition is not the first listed in a dictionary does not mean that is is inapplicable or that imagination or thought is required to apply that definition to the services at hand.

Tatham also contended (without proof) that "grand prix" conveys a second, broader meaning of "prestige of services," in the nature of a double entendre, but the Board observed that even if true, that second meaning too would be laudatory and descriptive.

Finally, Tatham took one more wrong turn, pointing to a distinction between the competitions relied on by the PTO (equestrian, autos, sailing, water sports, dog agility, and card games) and his services (rugby, soccer, basketball, and football). The PTO's examples involve "a course or track with a starting line and a finish line," while his involve "head-to-head competitions on a field or court where the participants take alternative turns attacking and defending a goal or zone." The Board pointed out, however, that the dictionary definitions of "grand prix" have no such limitations. There was nothing in the record, and no reason, to conclude that the consuming public would make such a distinction.

And so the Board affirmed the Section 2(e)(1) mere descriptiveness refusals of: GRAND PRIX SPORTS, GRAND PRIX FOOTBALL, GRAND PRIX BASKETBALL, GRAND PRIX SOCCER, GRAND PRIX SEVENS, GRAND PRIX STUDIOS, GRAND PRIX ONLINE, GRAND PRIX GAMING, AND GRAND PRIX RUGBY SEVENS (each including a disclaimer of the wording other than GRAND PRIX).

Post your comment here.

Text Copyright John L. Welch 2012.

posted by John L. Welch @ 12/27/2012   0 comments

Wednesday, December 26, 2012

CAFC Affirms TTAB in WINNIE-THE-POOH Summary Judgment on Collateral Estoppel

In a precedential decision, a divided panel of the CAFC affirmed the TTAB's entry of summary judgment in a consolidated proceeding (eleven oppositions and one cancellation) involving trademark rights in various Winnie-the-Pooh marks. The Board ruled (here) that collateral estoppel barred SSI from re-litigating the issue of ownership, and that absent ownership, SSI's claims for likelihood of confusion, dilution, and fraud must fail. Stephen Slesinger, Inc. v. Disney Enterprises, Inc., 105 U.S.P.Q.2d 1472 (Fed. Cir. 2012) [precedential]. [mp3 of oral argument here].


This case is a chapter in a long-running dispute concerning rights arising out of the works of A.A. Milne. The TTAB proceeding involved only the registrability of certain trademarks relating to those works. The controversy centers around a 1983 agreement between the parties. SSI claimed that certain rights in the Winnie-the-Pooh works were reserved to it by the agreement, whereas Disney maintained that the agreement assigned all of SSI's ownership rights (including trademark rights) to Disney.

At the TTAB, Disney moved to dismiss all of SSI's claims on the ground that SSI is collaterally estopped from re-litigating the issue of ownership of the marks because that issue was decided in 2009 in a civil action between the parties in the U.S. District Court for the Central District of California. The district court found that Slesinger granted its rights to Disney and "may not now claim infringement of any retained rights."

SSI argued that the district court did not actually decide the that issue, and further that any such determination was not necessary to the district court's judgment. It asserted that the court decided only whether Disney's uses were authorized, without having to reach the issue of whether there was an assignment or a mere license of the rights.

The Board, treating the motion as one for summary judgment, found that collateral estoppel barred Slesinger’s claims and it granted Disney’s motion.

The CAFC panel majority observed that the Board’s decision to grant summary judgement is reviewed without deference. The appellate court observed that collateral estoppel requires four elements: (1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the prior action featured full representation of the estopped party.

SSI conceded that the first and fourth factors were satisfied. As to the second factor, SSI maintained that the district court failed to consider properly the scope of the 1983 agreement, noting for example that the district court did not use the word "assignment." The CAFC concluded otherwise. It agreed with the Board's statement that "[t]he clear wording of the district court’s order does not support SSI’s contention that the decision was focused only on whether a particular array of uses by Disney of the POOH works was authorized." Moreover, as the Board concluded, the "unambiguous nature of the contracts is strongly supported by the conduct of the parties over the nearly 50 years of their relationship." Both SSI and Disney parties treated the agreements as a complete assignment of  rights to Disney. "With such a clear explanation that Slesinger conveyed all rights completely to Disney, it is immaterial that the district court used the terms 'transfer' and 'grant' rather than 'assignment.'"

With regard to the third factor, the CAFC found the district court’s ruling to be neither incidental nor collateral. It directly addressed SSI's ownership interest in the Pooh rights, and that evaluation was "clearly an essential element of the judgment." The district court had to decide the issue of ownership before taking up the issue of whether Disney’s uses of the marks were infringing. It was also essential to determine ownership before considering SSI's request to correct the subject registrations to Slesinger’s name.

Therefore, the CAFC agreed with the Board that collateral estoppel applied, and it affirmed the Board's decision.

Circuit Judge Reyna dissented, maintaining that the district court did not decide ownership of the trademarks, and furthermore that a decision on ownership was not necessary to the district court’s decision concerning trademark infringement. In a nutshell, Judge Reyna asserted that the district court "was asked to resolve whether the transfer effected a license (for use), or an assignment (sale) of the trademarks." The court could have decided that Disney had a license to use the mark, and therefore was not an infringer. "The district court’s failure to definitively and expressly state whether the transfer was a license or assignment is striking and illuminating," and there is a reasonable doubt as to whether the district court decided that issue.

Moreover, Disney did not have to be an owner of the marks to avoid the infringement claim. "[O]wnership of the Pooh trademarks was not the only rational basis on which a fact finder could find non-infringement. An equally rational basis is that Disney was an authorized user under a license. It follows that collateral estoppel cannot apply."

There, Judge Reyna concluded that the TTAB had erred.

Post your comment here.

Text Copyright John L. Welch 2012.

posted by John L. Welch @ 12/26/2012   0 comments

Monday, December 24, 2012

TTAB Reverses Section 2(e)(5) Functionality Refusal of Wavy Exercise Hoop

Concluding that the PTO failed to make out a prima facie case of functionality under Section 2(e)(5), the Board reversed a refusal to register the product configuration shown below, for "exercise and toy hoop." And even if the PTO had established a prima facie case, Applicant's design patent rebutted the PTO's evidence. In re Kun Yuan Lin, Serial No. 85065887 (December 14, 2012) [not precedential].


The Board first recited the "traditional rule" or "Inwood formulation" for trademark functionality: a product feature is functional "if it is essential to the use or purpose of the article or if it affects the cost or quality of the article." The purpose of the functionality doctrine is to "encourage legitimate competition by maintaining the proper balance between trademark law and patent law." 

If a product's functional features could be used as trademarks, however, a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity).

The Board next looked to the CAFC's Morton-Norwich factors, keeping in mind that if functionality is established under Inwood, further inquiry regarding the Morton-Norwich factors is unnecessary.

Applicant's product is a weighted sports hoop having a smooth outer circumference, but an inner surface that "is not perfectly circular in that it has an undulating surface." The Examining Attorney contended that the "way ridges" of Applicant's hoop function to massage the user and help maintain the hoop on the user's body. He pointed to Applicant's advertising and to its design patent, entitled "Massage Hoop." [Of course, that just means that the design or configuration is de facto functional: i.e., it performs a function. Design patents are meant to cover things that have a function. But is the shape or design de jure functional? Ah, that is the question! ed.].

Applicant countered by addressing the four Morton-Norwich factors, asserting out that there has never been a utility patent on the subject design, that his advertising was mere "puffing," that there are at least seven competing products on the market that achieve the same function, none of which use the "wavy ridges" design, and that the cost to make his design is essentially the same as for other designs. 

As to the design patent, Applicant argued that its existence "suggests, at least presumptively, that the design is not de jure functional," citing Morton-Norwich.

The Board found that only one of the Morton-Norwich factors supported the PTO's position: in his advertising, Applicant made "vague references" to the massaging effect of the hoop and the role of the wavy ridges in helping maintain the hoop on the body. But the Board found these references insufficient to show that Applicant's design is "essential to the use or purpose of the article" or "affects ... the quality of the article" under Inwood. It was not clear to the Board that either the massaging effect or the "holding-up" effect were "essential to the use" of the product. Furthermore, the Board observed that any irregularity on the interior surface (such as a textured surface) would likely product the same result.

Advertising for the third-party hoops referred to the massaging effect and the maintenance function, but customer commentary focused on the exercise function of the hoops. In short, this evidence indicated that exercise, not massage, is the primary purpose of the hoops, and that the  maintenance effect is little more than incidental. Moreover, the existence of several alternative configurations suggested that Applicant's particular configuration is not essential to the use or purpose of the goods.

We find that all of the evidence that may tend to indicate the functionality of applicant’s configuration is not sufficient to make out a prima facie showing that applicant’s mark is functional under the Inwood standard. However, even if we assume that the examining attorney has made out a prima facie showing of functionality, it is sufficiently rebutted by the applicant’s design patent.

Finally, the Board noted that the existence of the design patent did not dispose of the functionality question. "Design patent applications, as opposed to trademark applications, are examined under different standards of functionality and are issued in furtherance of different public policies." The USPTO, "on a record that may well have included more evidence than we have before us," found the design "not dictated by function alone." "We have before us no evidence on the basis of which we could find otherwise."

And so the Board reversed the refusal.

Post your comment here.

TTABlog comment: Good job by the Board, except maybe for that last part about design patents. Having filed and secured many design patents, I can attest that the PTO's examination of design patent applications is typically minimal. I can't recall every having a question raised regarding "functionality." So it is quite unlikely that the PTO had more evidence during its examination of the design patent application than it did with regard to the trademark application.

As I understand it, as to "functionality," a design patent is granted unless the design is "dictated by function." That is a much higher standard for "functionality" than the trademark standard. Design patents are meant to cover utilitarian things, so by definition the subject of a design patent will have utility - i.e., will have a function. Only when there is absolutely no room for design choice should a design patent be refused on the ground of "functionality." If alternative designs exist, then there is no functionality refusal of the design patent application. On the trademark side, some designs may be better than others, and even though a better design may be the subject of a design patent, it may be refused trademark registration under Section 2(e)(5) as de jure functional.

Note that the quotation above regarding the balance between patents and trademark relates to utility patents, not design patents. This case presents an example of a product configuration that is both covered by a design patent and is eligible for trademark protection. [The PTO had already accepted Applicant's 2(f) evidence, in case the Board reversed the functionality refusal]. Maybe there should be a federal right to copy when a design patent expires, but there isn't.

By the way, did you know that HULA-HOOP was registered as a trademark for plastic toy hoops fifty years ago? The registration is owned by Wham-O. - ed.].

Text Copyright John L. Welch 2012.

posted by John L. Welch @ 12/24/2012   0 comments

Friday, December 21, 2012

Anne Gilson LaLonde Weighs in on the CAFC's "CORK SOAKER" Decision

Anne Gilson LaLonde and Jerome Gilson provided an extensive review of the law governing Section 2(a) determinations of whether a mark is "immoral" or "scandalous," in their article, "Trademarks Laid Bare: Marks That May Be Scandalous Or Immoral," 101 Trademark Reporter 1476 (September-October 2011). Here, Anne provides her comments on the CAFC's decision in In re Fox.


First, Marc Randazza is right on with his constitutional criticism of Section 2(a) restrictions. He's in good company; several other commentators have found the courts to have not only glossed over this question but gotten it flat wrong. Enforcement of Section 2(a) abridges protected commercial speech by denying the benefits of federal trademark registration to marks on the basis of their content.

Courts and the Board simply will not come right out and say that they refuse to register distasteful marks because registration appears to give those unpleasant terms a governmental imprimatur. The Federal Circuit in In re Fox continues to insist that Section 2(a) prohibitions are "not an attempt to legislate morality" but rather the rejections are made so that these marks will not take up "the time, services, and use of funds of the federal government." Surely the initial rejection of the application and the cases before the TTAB and the Federal Circuit took up plenty of government resources, far more than issuing a certificate of registration and processing renewals.

More troubling than the present case are scandalousness denials of registration of marks such as COCAINE for soft drinks and energy drinks or W.B. WIFE BEATER for t-shirts or AL-QAEDA for t-shirts. Those marks may be repugnant or politically incorrect, but there is no real statutory basis for rejecting their registrations. The USPTO's definitions of "scandalous" come from a 1938 case, In re Riverbank Canning Co., 95 F.2d 327 (C.C.P.A. 1938), which urges the rejection of marks that are "disgraceful" or "offensive" or "disreputable." Do we really want the PTO to reject marks that are "disgraceful"?

Finally, while agreeing with the Court that COCK SUCKER is vulgar in any context, I have to point out the difficulty the PTO has in maintaining consistency in the "scandalous" grey area. For example, registrations exist for COCK RUB, PLAY IT LIKE A COCKSTAR and BIG COCK RANCH. The double entendre in COCK RUB – a spice to be applied to chicken before cooking – seems much like the double entendre present with COCK SUCKER as applied to a rooster-shaped chocolate lollipop. Notably, in footnote 3, the In re Fox opinion made clear that the court rejected the Board's intimation in an earlier case that the existence of a non-vulgar meaning in a double entendre could allow a mark to be registered. In re Hershey, 6 U.S.P.Q.2d 1470 (T.T.A.B. 1988) (allowing registration of BIG PECKER BRAND for t-shirts where specimens included birds with large beaks).

posted by John L. Welch @ 12/21/2012   2 comments

Test Your TTAB Judge-Ability: Is TINSELTOWN Geographically Descriptive of Clothing from Hollywood?

The PTO refused registration of the mark TINSELTOWN on the ground that the mark is primarily geographically descriptive  of the goods, clothing items, under Section 2(e)(2). The Board inferred that the goods will come from Hollywood, California. The examining attorney relied on dictionary definitions and online references in maintaining that Tinseltown means Hollywood. But is Hollywood the primary meaning of Tinseltown? How do you think this came out? In re Topson Downs of California, Inc., Serial No. 85067696 (December 4, 2012) [not precedential].


Applicant Topson Downs got into early trouble by trying to convince the Board that the evidence attached to its appeal brief should be given consideration, claiming that it was not new evidence but was submitted "to demonstrate that unpersuasive quality of the Examiner's evidence." Not surprisingly, the Board was unmoved. Applicant should have submitted this evidence when the case was still before the Examining Attorney, or it could have sought remand from the TTAB in order to submit the new evidence.

The examining attorney claimed that Topson had failed to respond properly to a Rule 2.61 request that it "provide a written statement specifying where its goods will come from or originate." Topson stated that "its goods will originate in various locations both inside and outside California." The Examining Attorney found this response to be disingenuous because it "encompasses the entire universe." The Board, however, found the response acceptable, seeing no reason to question Topson's assertion that it had not yet made a decision in that regard. However, in light of Topson's broad statement, the Board inferred that "the locations inside California in which applicant's goods will originate include the area of Los Angeles known as Hollywood."

Turning to Section 2(e)(2), the first issue was whether the mark is the name of a place known generally to the public. [The second is whether the public would make a goods/place association, i.e., believe that the goods originate in that place].

The Board found it clear on the record that "Tinseltown" is a term used to refer both to the Hollywood section of Los Angeles and to the motion picture industry for which it is famous. In fact, the examining attorney's own evidence "suggest that it is the latter meaning, namely, that of the movie industry, that may be the primary denotation of the term Tinseltown as used in relation to applicant's goods."

The Board therefore found that the PTO failed to establish that the primary significance of TINSELTOWN is a geographic location, and so it reversed the refusal to register.

Post your comment here.

TTABlog note: The Board pointed out that it reached a similar conclusion regarding the term HOLLYWOOD in In re International Taste Inc., 52 USPQ2d 1604 (TTAB 2000). There it ruled that the PTO had failed to establish that HOLLYWOOD primarily refers to a geographic location rather than the general entertainment industry. It therefore reversed a refusal to register the mark HOLLYWOOD FRIES for french fries and fast food restaurants absent a disclaimer of HOLLYWOOD.

Text Copyright John L. Welch 2012.

posted by John L. Welch @ 12/21/2012   1 comments

Thursday, December 20, 2012

Marc Randazza Comments on CAFC "Cork Soaker" Decision

[Re-posted from The Legal Satyricon]. As many long-time readers know, Section 2(a) of the Trademark Act is one of my pet peeves. This is the section of the Trademark Act that gives pretty much unfettered discretion to a trademark examiner to deny a trademark registration on the basis that the mark itself is "immoral" or "scandalous." The Federal Circuit just decided In Re Fox, in which it reaffirmed some very bad law, and in which it lacked the integrity to address some Constitutional fictions upon which most 2(a) denials are based.

“[n]o trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it[] (a) [c]onsists of or comprises immoral, deceptive, or scandalous matter.” 15 U.S.C. § 1052.

One of the most absurd elements of a 2(a) denial is that the evidentiary standard is so open to abuse. An examiner may prove "immorality" or "scandalousness" by simply establishing that the mark is "vulgar." In re Boulevard Entm’t, Inc., 334 F.3d 1336, 1340 (Fed. Cir. 2003). Essentially, if the examiner finds a single online dictionary or chat board where someone says "that's vulgar," then that is usually enough for the examiner, the TTAB, and the Federal Circuit.

cork soaker

So, another 2(a) denial is just a "ho hum" event. But, this portion of the opinion shows just how little respect the Federal Circuit has for Constitutional issues. I mean, come on guys, at least try and make it look like you didn't just mail it in.

The prohibition on “immoral . . . or scandalous” trademarks was first codified in the 1905 revision of the trademark laws, see Act of Feb. 20, 1905, Pub. L. No. 58- 84, § 5(a), 33 Stat. 724, 725. This court and its predeces- sor have long assumed that the prohibition “is not an attempt to legislate morality, but, rather, a judgment by the Congress that [scandalous] marks not occupy the time, services, and use of funds of the federal government.” In re Mavety Media Grp. Ltd., 33 F.3d 1367, 1374 (Fed. Cir. 1994) (quotation marks omitted). Because a refusal to register a mark has no bearing on the applicant’s ability to use the mark, we have held that § 1052(a) does not implicate the First Amendment rights of trade- mark applicants. See id. (Op. at 2)

I find it outrageous not just because the court is wrong, but because the court was so glib and dismissive of the First Amendment.

Trademarks propose a commercial transaction; speech that proposes a commercial transaction is “commercial speech” and thus subject to First Amendment protection. Virginia State Bd. Of Pharmacy v. Virginia Citizens Consumer Council, 425 U.S. 748, 762 (1976). Trademarks convey messages about the type, cost and quality of the product or service associated with the mark. See Friedman v. Rogers, 440 U. S. 1, 11 (1979). The trademark is a tightly targeted bit of expressive activity that seeks to persuade a potential customer to choose one product over another, either due to the identification of goods or to the communicative element of the trademark itself.

Thus far, all USPTO decisions regarding the constitutionality of Section 2(A) rely upon the improperly decided case In re Robert L. McGinley, 660 F.2d 41 (Fed Cir. 1981).

McGinley is where we get the idea that since trademark applicants are still free to use the trademarks, then there is no abridgment of speech if your trademark is denied registration due to its content. However, this reasoning is simply shoddy and contrary to a body of First Amendment jurisprudence. For example, in striking down New York’s “Son of Sam” law, which prohibited criminals from profiting from writing books about their crimes, the Supreme Court held “[a] statute is presumptively inconsistent with the First Amendment if it imposes a financial burden on speakers because of the content of their speech.” Simon & Schuster v. New York State Crime Victims Bd., 502 U.S. 105, 115 (1991). In the Son of Sam case, the authors were still free to write, but were denied the financial benefits of their labors. That was the end of that law. This appears to completely dispense with the McGinley reasoning.

Bad Frog Brewery, Inc. v. New York States Liquor Authority, 134 F.3d 87 (2d Cir. 1998) analyzed a similar issue. In that case, the appellant sought to use a trademark of a frog giving the finger. The Second Circuit held that since trademarks are commercial speech, prohibition on use of so-called “offensive” trademarks did not advance the stated governmental purpose of protecting children from vulgarity or promoting temperance, nor was it narrowly tailored to serve that purpose. Not binding on the Fed. Cir., but I think that the Fed. Cir. is the wrong place to challenge McGinley. There is no indication that the Fed. Cir. will ever admit that it was wrong in McGinley, and every time it gets a chance, it doubles down.

Finally, there can be no clearer authority for the death of Section 2(a) than Lawrence v. Texas. (“The fact a State’s governing majority has traditionally viewed a particular practice as immoral is not a sufficient reason for upholding a law prohibiting the practice.”)

“Morality” is not a valid reason to confer or deny a governmental benefit – instead the government must articulate a reason why registration of a mark might be harmful, and then apply that reason to the particular circumstances at hand, in a narrow manner. The government has done none of this in this case, nor in any other 2(a) denial.

2(a) Delendum Est!

posted by John L. Welch @ 12/20/2012   4 comments

CAFC Affirms TTAB Section 2(a) Ruling: C%&K SU#&ER & Rooster Design for Lollipops Unregistrable as Scandalous

In a precedential ruling, the CAFC affirmed the TTAB's decision [TTABlogged here] holding that the mark depicted below, for "chocolate suckers molded in the shape of a rooster," is scandalous under Section 2(a), and therefore unregistrable. The appellate court concluded that "a mark that creates a double entendre falls within the proscription of Section 1052(a) where, as here, one of its meanings is clearly vulgar." In re Fox, 105 U.S.P.Q.2d 1247 (Fed. Cir. 2012). [mp3 of oral argument here].


The court observed that the determination of whether a mark comprises scandalous matter is a conclusion of law based upon underlying factual inquiries. The factual findings of the Board are reviewed for the presence of substantial evidence in support thereof.

Ms. Fox argued that the Board's finding that her mark has a vulgar meaning was not supported by substantial evidence. The CAFC disagreed. The Board did not err in viewing the distinction between the compound word COCKSUCKER and the two word phrase COCK SUCKER as a "distinction without a difference." The association of the two-word version, COCK SUCKER, with a "poultry-themed product" does not lessen the vulgar meaning, but rather merely established an additional, non-vulgar meaning and a double entendre, which is exactly what Fox intended.

Fox next argued that, even if her mark has a vulgar meaning, the mark is afforded special treatment by CAFC precedent: in her view, when a mark has a double meaning with one of the two being vulgar, the PTO must demonstrate that the public would choose the vulgar meaning.
The court, however, observed that there is no requirement in the Statute that a mark's vulgar meaning be its only relevant meaning, or even its most relevant meaning. Section 2(a) refers to a mark that "consists of or comprises ... scandalous matter." Comprises means includes. Fox conceded that, for her mark to have the intended humorous double meaning, the consumer must understand both the risque and the banal meaning of the mark. Therefore it is enough for the PTO to demonstrate that the mark has (comprises) a vulgar meaning.

The court also disagreed that its precedent excludes double entendres from the statutory bar. The BLACK TAIL case (Mavety) involved an ambiguity regarding the mark's interpretation, not a double entendre. In the JACK-OFF case (Boulevard), the only pertinent meaning of the term was vulgar, although the court distinguished the situation from other cases in which the PTO had approved marks for registration as "double entendres." However, Boulevard case does not suggest that "that a mark that includes a double entendre would be exempt from the prohibition of Section 1052(a) when the mark would be seen by a substantial composite of the general public as having both a vulgar and a non-vulgar meaning."

The CAFC recognized that there are "whimsical" and humorous aspects to the subject mark, but the fact that a mark is funny does not mean it cannot be scandalous. [The court here indirectly cites George Carlin's "Seven Words You Can Never Say on Television" monologue, a risque monologue that generated audience laughter].

Nothing in this decision precludes Fox from continuing to sell her merchandise under the mark at issue, or from seeking trademark protection for some other, otherwise registrable element of her product’s design, dress, or labeling. If Fox is correct that the mark at issue “bring[s] [nothing] more than perhaps a smile to the face of the prospective purchaser,” *** then the market will no doubt reward her ingenuity. But this does not make her mark registrable.

Finally, Fox suggested that, because there is doubt as to how the general public would view her mark, the court should permit the mark to be published for opposition, in order to bring to light any public objection to her mark. The court rejected that proposal, however, because there is no uncertainty here. The PTO is empowered to serve as the "first line of defense against 'scandalous' marks," and the court has "no authority to read such a power out of existence."

The court reiterated that Fox remains free to use her mark in commerce, but she will be unable "to call upon the resources of the federal government to enforce that mark."

TTABlog comment: WYHA? Was there any chance that the CAFC would not agree with the Board that this mark is scandalous? Well, I guess it was a good exercise for the Vanderbilt Legal Clinic.

Post your comment here:

Text Copyright John L. Welch 2012.

posted by John L. Welch @ 12/20/2012   3 comments

Wednesday, December 19, 2012

TTAB Affirms Refusal of "THE BRAIN THAT CHANGES ITSELF" as Title of Single Creative Work

The title of a single creative work is not considered a trademark and is consequently unregistrable under Sections 1, 2, and 45 of the Trademark Act. You might say that's a no-brainer. But what if the alleged mark is used as a book title and on a website "featuring additional copyrighted materials"? Not good enough, said the Board, and so it affirmed a refusal to register THE BRAIN THAT CHANGES ITSELF for "printed materials, namely books and instructional materials on the subjects of the human brain, brain science and neuroplasticity." In re Doidge, Serial No. 77801845 (December 4, 2012) [not precedential].


Dr. Doidge's specimen of use displayed the phrase THE BRAIN THAT CHANGES ITSELF as the title of a book. He claimed that he used the alleged mark for revised versions and translations of the book, and for printed instructional materials, but he failed to submit any evidence in that regard.

Dr. Doidge also pointed to his website, purportedly providing additional materials (e.g., an "FAQs" section), but he provided no legal authority for the proposition that a website constitutes a separate creative work. The Board viewed the website content as "collateral to applicant's book."

Finally, Dr. Doidge pointed to a documentary film related to the book, but again his evidence was inadequate: there was no proof regarding the source of the film, where it appeared on television, or where it is available on DVD. There was nothing to show that the film has been shown on television or distributed on DVD in the United States. Nor was there any evidence that Dr. Doidge was the source of the documentary, rather than his book serving as the subject of the film.

In short, the record evidence demonstrated use of the alleged mark only as the title of a single creative work. Therefore the Board affirmed the refusal.

TTABlog comment: For a recent, precedential decision discussing this issue, see Mattel, Inc. v. The Brainy Baby Company, LLC, 101 USPQ2d 1140 (TTAB 2011) [precedential] (use of LAUGH & LEARN & Design as the title of a children's learning program, offered in both VHS and DVD formats, constituted a single creative work). [TTABlogged here].

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Text Copyright John L. Welch 2012.

posted by John L. Welch @ 12/19/2012   0 comments

Tuesday, December 18, 2012

Test Your TTAB Judge-Ability: Is X-PRO for Insulation Confusable with X-PRO for Building Consultancy?

Atlas Roofing applied to register the mark X-PRO for foam insulation used in building construction, but Examining Attorney Maureen Dall Lott issued a Section 2(d) refusal in view of the identical mark registered for, inter alia, “consultancy in the fields of building construction and construction." On appeal, Atlas argued that the recitation of service in the cited registration is unclear, and that registrant's website shows that it operates only in the metallurgical industry. How do you think this came out? Post your comment here. In re Atlas Roofing Corporation, Serial No. 85024217 (November 28, 2012) [not precedential].


Because the marks are identical, the first du Pont "heavily favors" a finding of likely confusion. Moreover, the greater the similarity between the marks, the lesser the degree of relatedness between the involved goods/services that is needed to support a Section 2(d) refusal. And with the marks identical, there only need be a "viable relationship" between the involved goods and services to support the refusal.

The PTO relied on seven third-party registrations for marks covering both insulating materials and consulting services. Under Albert Trostel, these marks suggest that the involved goods and services are of a kind that may emanate from a single source under the same mark. The examining attorney also provided third-party website evidence showing that insulation products used in construction are sometimes offered in conjunction with consulting services.

Atlas shrugged. It argued that this evidence fails to show that any entity, such as registrant, that manufactures metallurgical machinery and metallurgical plants also provides consulting services relating to insulation. Atlas contended that the identification in the registration is "relatively unclear," and so one must consider these services "in the larger context of registrant's business." Registrant's website suggests that its services should be "defined with respect to the metallurgical industry."

The Board disagreed that registrant's recitation of services, "consultancy in the fields of business construction and construction," was unusual or unclear, and therefore it concluded that resort to extrinsic evidence was unnecessary. Applicant, the Board observed, is improperly seeking to limit the scope of registrant's broad identification, rather than provide clarity. Of course, it is black letter law that the Board must consider the issue of likely confusion based on the recitation of services in the cited registration, regardless of the actual nature of the services, classes of consumers, or channels of trade.

The Board further noted that Atlas's goods and registrant's services are both related to the building construction industry. In fact, looking at some of the goods in the cited (multi-class) registration, it is possible that some forms of insulation could be used by registrant to mitigate excessive heat or loud noise associated with steel mills.

Finally, Atlas urged that the consumers of registrant's services are sophisticated in the metallurgical industry, but the Board (putting aside the fact that registrant's recited services are not limited to the metallurgical industry) pointed out once again that even sophisticated purchasers are not immune to source confusion, especially when identical marks are involved. Furthermore, there was no evidence that Atlas's customers are sophisticated, which raises the possibility of reverse confusion.

The Board concluded that there is a likelihood of confusion as to source or sponsorship, and so it affirmed the refusal.

TTABlog comment: Suppose Atlas brought a claim under Section 18 for restriction or modification of the cited registration to narrow registrant's consulting service to the field of metallurgy. It would have to show that such a restriction would result in the "avoidance of a likelihood of confusion." For a recent discussion of Section 18, see Johnson & Johnson and Roc International S.A.R.L. v. Obschestvo s Ogranitchennoy; Otvetstvennostiu WDS, Oppositions Nos. 91182207 and 91184467 (May 16, 2012) [precedential]. [TTABlogged here].

Text copyright John L. Welch 2012.

posted by John L. Welch @ 12/18/2012   0 comments

Monday, December 17, 2012

USPTO Issues Examination Guide: "Webpage Specimens as Displays Associated with the Goods"

The USPTO has issued Trademark Examination Guide 1-13, entitled "Webpage Specimens as Displays Associated with the Goods." The 24-page Word document may be downloaded here. "This examination guide addresses webpage specimens as displays associated with the goods.  Specifically, the guide describes the elements of an acceptable webpage display specimen, discusses the analytical framework for determining the acceptability of a webpage display, identifies the appropriate potential refusals, and provides examples."

posted by John L. Welch @ 12/17/2012   0 comments

Precedential No. 38: Screenshot of YouTube Music Video Not a Proper Trademark Specimen Absent Download Link

Gary J. Rogowski sought to register the trademark ACTIVE REASONER for "audio recordings featuring music" in class 9. His specimen of use consisted of a screen shot of his YouTube webpage (see image below). Examining Attorney Janet H. Lee issued a refusal to register on the ground that the specimen of use failed to show the mark in direct connection with the identified goods. The Board affirmed, drawing a parallel with cases in which a website fails to provide means for ordering a product, ruled that "in the absence of a 'download' link or the equivalent thereof, applicant’s specimen on its face fails to show use of his mark in commerce for the identified goods." In re Rogowski, 104 USPQ2d 2012 (TTAB 2012) [precedential].

(click on photo for larger picture)

Section 1(d)(1) of the Trademark Act, 15 U.S.C. § 1051(d)(1), requires that the applicant file a “specimen” or facsimile “of the mark as used in commerce.” Under Section 45, 15 U.S.C. § 1127, use in commerce requires that the mark be "placed in any manner on the goods or their containers or the displays associated therewith... and the goods are sold or transported in commerce ...." 15 U.S.C. § 1127.

The examining attorney maintained that the mark as used on the specimen appears to identify a "non-downloadable musical video performance that has been uploaded onto, or is streamed on the YouTube website, in International Classes 038 and 041, respectively." She further contended that the specimen is unacceptable because it "fails to indicate that the audio recording may be downloadable."

Applicant Rogowski, appearing pro se, asserted that his music video is downloadable because there are "many computer programs available for free, on the internet, which enable the user to download music and video."

The Board noted that class 9 encompasses both audio recordings in both downloadable and tangible form, and Rogowski's identification of goods is sufficient broad to cover musical sound recordings in both formats. It observed that the specimen of use includes the ACTIVE REASONER mark in the top left corner of the screenshot, with a "Subscribe" button close by. The mark appears again on the right side, above a hyper-linked list of Rogowski's songs available on YouTube.

The Board recognized Rogowski's YouTube video as an "audio recording featuring music," but it concluded that the specimen "does not show the required correspondence between the mark and the identified goods being offered for sale or transported in commerce."

We acknowledge the advent and certainly the trend of music being offered in downloadable formats or the equivalent thereof in lieu of the traditional trade channels for tangible sound recordings, e.g., CDs being sold via retail or online stores. But we nonetheless find dispositive that applicant’s specimen does not include a “download” or similar link to put the consumer on notice that the identified goods (“audio recordings featuring music”) are indeed available for download or the equivalent thereof.

The Board likened this case to on-line retailing cases in which a webpage specimen fails to provide a means for ordering the goods or services. Cf. In re Dell Inc., 71 USPQ2d 1725, 1727 (TTAB 2004) (website specimen for downloadable computer software acceptable when it includes means to download, purchase or order the software).

The Board noted Rogowski's assertion regarding third-party software, but nonetheless, "in the absence of a 'download' link or the equivalent thereof, applicant's specimen on its face fails to show use of his mark in commerce for the identified goods."

TTABlog comment: Is the Board slicing the baloney a little too thin here? So thin you can see right through it? [LOL. I haven't used that line in about 17 years].

What if Rogowski included a statement with his YouTube uploads saying that he consents to the downloading and copying of his YouTube videos?

Post your comment here.

Text Copyright John L. Welch 2012.

posted by John L. Welch @ 12/17/2012   6 comments

Friday, December 14, 2012

Purchaser Sophistication Yields TTAB Reversal: OVATION for Vascular Implants Not Confusable with OVATION for Hip Implants

Despite the identity of the marks and the inherent strength of the cited mark, the Board reversed a Section 2(d) refusal to register OVATION for vascular stents and related devices, finding it not likely to cause confusion vis-a-vis Registrant's hip prosthesis used in joint reconstruction surgery. The Board  concluded that "any reasonable decision to purchase goods of applicant or registrant would in all likelihood involve a person having specialized expertise in orthopedic or vascular medicine, as appropriate." In re TriVascular, Inc., Serial No. 77941535 (November 27, 2012) [not precedential].


The identity of the marks and the inherent strength of the cited mark weighed heavily against Applicant TriVascular.

As to the goods, the Board must look only to the identifications in the involved application and registration. However, extrinsic evidence may assist in understanding of the nature of the identified goods. The evidence showed that the involved goods are "medical devices in the nature of prosthetics, designed to be implanted into a patient's body through complex surgery." TriVascular's products are used in repairing blood vessels; the registrant's goods are used in hip reconstruction surgery.

The Examining Attorney argued that the goods are highly related, travel in the same channels of trade, and are provided by the same suppliers. She pointed to eight third-party registrations, three of which included both vascular and orthopedic implants. These three registrations may indicate that the goods of both TriVascular and the registrant may emanate from a single source. [See TTABlog comment below].

The Board, however, concluded that the involved goods are "relatively unrelated." They are technologically distinct, cannot be substituted for each other, and are not used together in a single medical procedure. Although a medical products company might produce both products, nothing in the record indicated that these goods are more closely related than they would be to other medical products.

Therefore, the duPont factor regarding the similarity or dissimilarity of the marks favored TriVascular.

The Board observed that a critical question in the 2(d) analysis is "whose confusion should trigger a refusal of registration." The Examining Attorney contended that hospital administrators or medical office manager might make the purchasing decision. The Board accepted TriVascular's evidence that physicians participate in the purchasing decision, but it found plausible the PTO's suggestion that hospital administrators, managers, purchasing agents, and other personnel might be involved.

Pointing to several appellate court decisions holding that a hospital purchasing agent is not necessarily a "relevant person" for the Section 2(d) determination, and considering the highly specialized and technical nature of the goods, the Board concluded that "any reasonable decision" to purchase the involved goods would involve the advice of a specialist in the respective field of orthopedics or vascular medicine.

Orthopedic specialists and vascular medicine specialists are likely to be separate classes of customers, so that neither is likely to have exposure to the products of interest to the other. Considering the nature of the goods, one would expect both classes of purchasers to exercise a high degree of care when making purchasing decisions.

The Board therefore reversed the refusal to register.

TTABlog comment: Concerning the third-party registrations cited by the Examining Attorney under the Albert Trostel and Mucky Duck approach, the following thought has come into my head. The PTO is concerned, as are practitioners, about so-called "deadwood" on the Register: registrations that cover a number of goods, not all of which goods are actually sold (or ever were sold) under the mark. Part of this deadwood problem stems from the fact that the PTO requires only one specimen per class of goods, not a specimen for each item in the class. So if there are many deadwood registrations, what is the evidentiary value of the PTO's citing a third-party registration to show that item A is related to item B? How do we know that the third-party mark is actually in use, or ever was used, on both item A and B? Maybe it's a deadwood registration.

Some time ago, I suggested that an Examining Attorney has much more ability, in this Internet age, to find out whether a mark is in use on a particular product. Rather than allow the PTO to rely on third-party registrations to show the relatedness of goods, should we now require some evidence that the marks are actually in use for the cited goods? In other words, is Mucky Duck a dead duck?

Post your comment here

Text Copyright John L. Welch 2012.

posted by John L. Welch @ 12/14/2012   10 comments

Thursday, December 13, 2012

Two Surname Refusals for Your Perusal: One TTAB Reversal

Try your luck with these two Section 2(e)(4) refusals. In the first, the PTO deemed the mark LORCH for electric welding machines and products, to be primarily merely a surname. In the second, THE HENDRYX HOTEL for hotel, restaurant, and bar services, faced the surname bar. In each case the surname had no non-surname meaning, and in each case no person associated with the applicant had the surname. So what's left? The rareness of the surname, and its "look-and-feel." How do you think the appeals came out? [Post your comment here].



In re Lorch Schweißtechnik GmbH, Serial No. 85037839 (November 29, 2012) [not precedential]. The Examining Attorney submitted 470 listings for the name "Lorch" from the Lexis-Nexis database, leading the Board to conclude that "Lorch" is an "extremely rare surname." As to "look and feel" [shouldn't it be look and sound? - ed.], the Examining Attorney provided no evidence or argument. The Board observed that "Lorch" does not sound like a surname [What about Welch? - ed.], nor was there evidence that it has the structure or format of a surname. [I repeat, Welch? - ed.]. Weighing all the pertinent elements of the Benthin test, and giving the applicant the benefit of any doubt, the Board found that LORCH is not primarily merely a surname.


In re SBE Hotel Licensing, LLC, Serial No. 85054771 (November 27, 2012) [not precedential]. The Board pointed out that when generic wording is combined with a surname, the entire mark must be refused registration under Section 2(e)(4). [E.g., PICKETT SUITE HOTEL, HAMILTON PHARMACEUTICALS, BRASSERIE LIPP].

The 2000 census revealed 837 occurrences of "Hendryx," leading the Board to conclude that it is a "somewhat rare surname." However, even rare surnames may be refused registration under Section 2(e)(4) if the primary significance of the term to the purchasing public is that of a surname. [E.g., PIRELLI]. "Hendryx" is not so rare that this factor outweighs the others.

As to "look and feel," Examining Attorney Dominick John Salemi submitted not only the evidence that numerous individuals have the surname HENDRYX, but also census data showing 41,879 occurrences of the surname "Hendricks" and 34,032 occurrences of "Hendrix," both of which fall within the 1,000 most popular U.S. surnames. Furthermore, HENDRYX does not have the appearance of a coined term or an initialism or acronym. In short, the surname significance of HENDRYX would be readily recognized.

The Board concluded that the PTO had established a prima facie case, which Applicant failed to rebut. And so it affirmed the refusal.


Text Copyright John L. Welch 2012.

posted by John L. Welch @ 12/13/2012   1 comments

Wednesday, December 12, 2012

ATELIER for Tequila Confusable with ATELIER WINERY for Wine, Says TTAB

Once again, the TTAB proclaimed that there is no per se rule that all alcoholic beverages are related. [It just works out that way - ed.]. The Board affirmed a refusal to register the mark ATELIER for tequila, finding it likely to cause confusion with the registered mark ATELIER WINERY for wine [WINERY disclaimed]. Internet website evidence and third-party registrations for marks covering both tequila and wine convinced the Board that Examining Attorney Heather D. Thompson appropriately refused registration under Section 2(d). In re Maestro Tequilero, S.A. de C.V., Serial No. 77904774 (November 29, 2012) [not precedential].


Not surprisingly, the Board found the marks to be confusingly similar. ATELIER is the dominant word in the cited mark, given its position as the first word in the mark, and the disclaimer of WINERY. "Atelier" (French for "workshop") is an arbitrary term when used in connection with both tequila and wine. Those who know French will give it the same meaning in both marks; those who don't will, in their ignorance, just think the marks look and sound alike.

Applicant argued that the word WINERY in the registered mark will alert consumers that Registrant's goods are wine, thereby reducing the likelihood of confusion, since consumers will not believe that tequila comes from a winery. The Board, however, pointed out that this approach focuses too much on a side-by-side comparison of the marks, rather than on the recollection of the average consumer,  who retains only a general impression of the marks.

Applicant also argued that ATELIER is a weak formative for wine, pointing to registrations for ATELIER DE MAITRE ALBERT and L'ATELIER DE JOEL ROBUCHON. The Board observed that these two marks are quite different from the marks at issue, and that there is no evidence that these two marks are in use at all. Consequently, they have minimal probative value.

As to the goods, Applicant maintained that tequila and wine are appreciably different products, and that wineries "are not known for their tequilas."

The Board noted that in many cases the TTAB and the appellate courts have found different types of alcoholic beverages to be related for Section 2(d) purposes. The Board has specifically found wine and distilled spirits to be related. [Depends on the record evidence in each case - ed.].

The evidence here included Internet webpages showing that wine and tequila may be used together in drink recipes, that restaurants and bars offer wine and tequila pairings, and that some entities produce, distribute, and sell both wine and tequila. The Examining Attorney also submitted ten third-party registrations covering wine and tequila.

This evidence persuaded the Board that wine and tequila move in the same trade channels and are "sufficiently complementary or related that source confusion is likely."

Balancing the relevant du Pont factors, the Board affirmed the refusal the refusal to register.

Post your comment here.

Text Copyright John L. Welch 2012.

posted by John L. Welch @ 12/12/2012   0 comments

Tuesday, December 11, 2012

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


The TTAB reversed the PTO in one of the five Section 2(e)(1) mere descriptiveness cases summarized below. [Actually, in the second case, the refusal was based on Applicant's failure to disclaim "APOTHECARY"]. Let's see how you do with them. Do you find any WYHA's here? [Post your comment here].



In re Jrm Nutrasciences LLC, Serial No. 85165397 (November 16, 2012) [not precedential]. [Section 2e)(1) refusal of MUSCLE SPORT INTERNATIONAL for "Dietary and nutritional supplements; Herbal supplements; Nutraceuticals for use as dietary supplements; Weight loss dietary supplements; Pre-workout energy powder drink mixes, namely, nutritional supplement in the nature of a nutrient-dense, protein-based drink mix" [INTERNATIONAL disclaimed].


In re Retail Royalty Company, Serial No. 85257100 (November 20, 2012) [not precedential]. [Rule 6(a) requirement that Applicant disclaim APOTHECARY in the mark HAPPY APOTHECARY for cosmetics].


In re RYW Enterprises, LLC, Serial No. 85260850 (November 27, 2012) [not precedential]. [Refusal to register CRAB RANGOON for "prepared deep-fried dumplings consisting primarily of crab, cheese and vegetables in a flour wrap"].


In re Stephan Blass, Serial No. 85001985 (November 29, 2012) [not precedential]. [Refusal of LightLight for lights products and lighting installation apparatus].


In re OurPet’s Company, Serial No. 85329890 (November 30, 2012) [not precedential]. [Refusal of TOYS FOR TREATS for pet toys].


Text Copyright John L. Welch 2012.

posted by John L. Welch @ 12/11/2012   2 comments