TTABlog Road Trip: Texas Bar IP Course, Austin, Feb. 14-15th

Yours truly will be appearing at the Texas Bar CLE's "26th Annual Advanced Intellectual Property Law Course," on Friday, February 15th, 2013, in Austin, Texas. The subject of my presentation will be .... wait for it .... "TTAB Hot Topics." Brochure here.

I look forward to seeing my Texas readers. Both of them.

TTAB Vacates ROLEX No-Dilution Decision After AFP Withdraws Application During Appeal

The TTAB has vacated its precedential decision in Rolex Watch U.S.A., Inc. v. AFP Imaging Corporation, 101 USPQ2d 1188 (TTAB 2011) [TTABlogged here]. In its December 2011 decision, the Board had dismissed Rolex's dilution-by-blurring claim, concluding that Opposer had 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. And in a further ruling, the Board dismissed Rolex's claim that Applicant AFP did not have a bona fide intent to use the ROLL-X mark when it filed its application to register. Rolex appealed to the CAFC and, while the appeal was pending, applicant AFP unilaterally withdrew its application to register. The CAFC then dismissed the appeal as moot and 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 Board concluded that U.S. Bancorp mandated that the Board's decision be vacated. Rolex Watch U.S.A., Inc. v. AFP Imaging Corporation, 107 USPQ2d 1626 (TTAB 2013) [re-designated as precedential, July 17, 2013].



In U.S. Bancorp, the Supreme Court held that vacature is appropriate if a decision becomes moot as a result of the unilateral actions of the prevailing party (but not when due to a voluntary act by the losing party). Here, AFP, the prevailing party before the Board, took the unilateral action of abandoning its application without Rolex's consent while Rolex's appeal was pending before the CAFC. There was no evidence that the appeal was rendered moot by any voluntary action on Rolex's part. In fact, Rolex objected to AFP's abandonment of the ROLL-X application because it deprived Rolex of its right to obtain review of the Board's adverse decision.

AFP argued (without evidentiary support) that it was “forced” to withdraw its application due to the cost of litigation, but the Board found that to be irrelevant. AFP withdrew its application without Rolex's permission, thereby mooting the appeal. Under those circumstances, U.S. Bancorp mandated that the Board's decision be vacated.

Indeed, to decide otherwise would be manifestly unfair because applicant’s unilateral abandonment of the subject application has frustrated opposer’s statutory right to seek review of a decision it believes to be incorrect. In view thereof, the Board’s decision is vacated.

The Board then entered judgment against AFP under Rule 2.135.

Read comments and submit your comments here.

Text Copyright John L. Welch 2013.

Precedential No. 5: TTAB Affirms Failure-to-Function Refusal of Battery Charger "Chirp"

Two more applications to register "chirp" sounds as trademarks fell on deaf ears at the TTAB. The Board affirmed the PTO's refusals to register applied-for marks comprising "five short electronic chirps," one in slightly increasing pitch, and the other in slightly decreasing pitch, for battery chargers [listen here]. Examining Attorney Jason Paul Blair found that these two sounds were not, as Applicant claimed, inherently distinctive, and therefore they failed to function as a trademark. In re Powermat Inc., 105 USPQ2d 1789 (TTAB 2013) [precedential].

Evidentiary issues: the Board first addressed certain problems with Applicant Powermat's evidence. Powermat submitted a list of links to YouTube advertisements for its products, but the Board observed that "providing hyperlinks to Internet materials is insufficient to make such materials of record." Powermat also submitted printouts of YouTube.com pages where its commercials are posted, apparently expecting the Examining Attorney to view the videos. This was not the proper way to submit audiovisual files; applicant should have submitted a CD, DVD, or videotape of the commercials, or it could have sent the audiovisual files as e-mail attachments.

Failure to Function: In some instances, a sound may function as a mark. Sounds emitted in the course of a product's ordinary function, however, cannot be inherently distinctive. In re Vertex Group LLC, 89 USPQ2d 1694 (TTAB 2009) [TTABlogged here]; Nextel Communications v. Motorola, Inc., 91 USPQ2d 1393 (TTAB 2009) [TTABlogged here].

Powermat's battery chargers emit the ascending tones when an electronic device is placed on the charger, and the descending tones when the device is removed. Powermat did not dispute that its battery chargers emit the sounds in their ordinary course of operation. Therefore its applied-for sound marks are not inherently distinctive.

Powermat's advertising evidence and its (unsupported) argument that the sounds were developed by a professional composer and market-tested, could not change the result here. Even if Powermat's evidence of promotion of its sounds were considered the equivalent of "look-for" advertising, that would help Powermat only under a Section 2(f) claim, but Powermat did not claim acquired distinctiveness. It claimed only inherent distinctiveness, a claim destined to be silenced by the cited Board precedent.

And so the Board affirmed the refusals to register.

Read comments and post your comment here.

TTABlog comment: Nothing new here. Why precedential?

Text Copyright John L. Welch 2013.

Precedential No. 4: TTAB Affirms Failure-to-Function Refusal of BLATANCY for Audio Recordings by Eponymous Performer

Examining Attorney Katina Minster refused registration of the mark BLATANCY for "audio recordings featuring music" in Class 9, on the ground(s) that the mark failed to function as a trademark because it comprised the title of a single artistic work, and because it merely identified the featured performer. In an enervating, yet precedential decision, the Board reversed the first refusal but affirmed the second. In re Arnold, 105 USPQ2d 1953 (TTAB 2013) [precedential].

Title of a Single Work: Applicant Arnold overcame the "single work" refusal by showing that the mark BLATANCY has been used on a series of works. Of course, a title used on a series of works is registrable as a trademark. The evidence included two CDs identified by the BLATANCY designation; because it was not clear whether the two CDs had the same content, the Board gave Arnold the benefit of the doubt.

Name of Performer? The evidence showed that BLATANCY is the name of a performing artist associated with applicant's goods. The Examining Attorney followed Section 1202.09(a) of the TMEP by requiring that applicant demonstrate that (1) the proposed mark has been used on a series of works and (2) the mark serves to identify the source of the series of works. Applicant Arnold satisfied the first prong of the test [can a prong be satisfied? - ed.]. The question then was whether BLATANCY serves to identify the source of the goods.

The Examining Attorney advised Arnold that he could "fulfill the second prong" (sic!) of the test by submitting a verified statement as to his control over the nature and quality of the goods. Arnold did not do so. The Board, therefore, had to consider whether:

applicant has demonstrated, through submission of evidence, that he controls the nature and quality of his goods and the use of the name BLATANCY thereon in such a way as to indicate the quality of those works; or, alternatively, whether this name has become so widely recognized, through vigorous promotion, that it now identifies applicant as the source of a series of works.

The Board looked to applicant's MySpace Music page, his official website, advertisement cards, and CD insert, but it found the evidence as to control "conflicting and of uncertain meaning." The evidence referred to a "Record Label" called "ComingUp Records" and to a "Publisher" named "Simply Original Music." Other evidence referred to BLATANCY as "Producer" and as a "publisher."

In short, it was unclear from the record who controlled the mark. It was applicant's burden to dispel the ambiguities by means of reliable evidence, such as business records or affidavits, and he failed to carry that burden.

And so the Board affirmed this second refusal.

Read comments and post your comments here.



TTABlog note: Applicant Arnold's application included live entertainment services in Class 41, and the Examining Attorney accepted his specimen of use for that Class.

Text Copyright John L. Welch 2013.

Precedential No. 3: TTAB Affirms Alternative Refusals to Register Pet Food Container Design, Finding it Functional or Non-Distinctive

Mars, Inc. applied to register the packaging configuration shown below for "pet food." The mark comprises a cylindrical, inverted container having a "rounded top" with two concentric ridges forming the inner and outer lip of the top. The bottom has a wider ridged lip. Examining Attorney Heather Biddulph refused registration on the ground of functionality under Section 2(e)(5), and alternatively on the ground that the package design is not inherently distinctive and fails to function as a trademark. The Board affirmed both refusals. In re Mars, Inc.,  105 USPQ2d 1859 (TTAB 2013) [precedential].

Functionality: The Board applied the Morton-Norwich factors in considering the functionality of the design (In re Morton-Norwich Prods., Inc., 213 USPQ 9 (CCPA 1982)):

1. Whether a utility patent exists that discloses the utilitarian advantages of the design sought to be registered;
2. Whether applicant’s advertising touts the utilitarian advantages of the design;
3. Whether alternative designs are available that serve the same utilitarian purpose; and
4. Whether the design results from a comparatively simple or inexpensive method of manufacture.

Although Mars did not own a utility patent directed to the design, third-party patents disclosed various benefits that result from using an annulus formed by a ridged or beaded container end: the ridging or beading allows the container to withstand changes in pressure during thermal processing of the container. Mars attempted to distinguish its container design from those of the patents, but the Board found the differences irrelevant in light of the evidence. Mars also argued that its container does not require beading or ridging because its short stature provides adequate structural support. The Board noted, however, that the applied-for mark was not limited as to dimensions, material, or type of sealing.

In addition, even if applicant's container does not make use of the ridges and beadings because it is not vacuum sealed, if they are functional on third-party containers, applicant should not be granted a registration that would inhibit third parties from using such ridges and beading on containers that are vacuum sealed.

As to the flared bottom lip, the Examining Attorney maintained that this feature allows stacking of the containers. Again, a third-party utility patent disclosed a can configuration having "a flared top and a container wall with a recession at the opposing bottom," allowing one can to be stacked with a second can of the same design. "[T]he principle that having an end that cooperates with a flared lip for stacking purposes applies to both designs."

The inverted nature of applicant's design "does not negate any of the functional aspects of the design, thereby rendering them non-functional."

With regard to the second factor, applicant's based its application on an intent-to-use, and therefore the record did not include advertising material.

Mars contended that there are many alternative designs for pet food containers in the marketplace and thus no need to copy the features of its design. The Board noted, however, that not all container designs are relevant: pouches, bags, and boxes are not suitable for wet pet food, and non-circular cans may be more costly and not as readily opened by a simple can opener.

As to cost of manufacture, Mars argued that it could have chosen a "stock" container, which purportedly would have been "an easier and cheaper alternative." The Board pointed out, however, that applicant provided no information regarding whether the stock containers are in fact simpler to manufacture or less costly. At most, the evidence did not show that the applied-for configuration results from a cheaper or easier method of manufacture.

Based on the evidence of record, the Board concluded that "competitors would need this flared lip for containers where no modification is made to the sizing of exterior ridging at the opposite end of the can, or where only slight modifications of the exterior ridging exists." It therefore affirmed the Section 2(e)(5) refusal to register.

Inherent Distinctiveness: For the sake of completeness, the Board also considered the PTO's second ground for refusal: that the alleged mark lacks distinctiveness. Mars did not claim acquired distinctiveness, but product packaging may be inherently distinctive. That determination required application of the CCPA's test set out in Seabrook Foods, Inc. v. Bar-Well Foods Limited, 568 F.2d 1342, 196 USPQ 289, 291 (CCPA 1977):

1. Whether the subject matter sought to be registered is a “common” basic shape or design;
2. Whether the subject matter sought to be registered is unique or unusual in a particular field;
3. Whether the subject matter sought to be registered is a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods; or
4. Whether the subject matter sought to be registered is capable of creating a commercial impression distinct from the accompanying words.

Of course, here the fourth factor is irrelevant.

The Examining Attorney submitted various third-party pet food cans, including cans that have substantially the same ridging and/or beading as the Mars design. This evidence established that the subject design is a common basic shape.

Mars pointed to the differences between its container and the others, shown in the photograph immediately below.

The Board found this evidence unpersuasive. When the third-party containers are inverted, they share many of the same features as the Mars design. Moreover, Mars did not claim any particular size for its container.

The Mars container design resembled many metal cans use in the pet food field. It was not unique or unusual, but rather "has the appearance of an upside down container."

As to the third factor, the Board found that, in view of the "strong similarities" between the Mars container and the other non-inverted containers, the applied-for design was a mere refinement of a commonly-adopted and well-known form of ornamentation for pet food containers.

In short, the applied-for design was not inherently distinctive, and the Board affirmed the refusal to register under Sections 1,2, and 45 of the Trademark Act.

Read comments and post your comment here.

TTABlog comments: On the issue of utility patents, it's easy to understand why an applicant's own patent, and his or her design. But as to someone else's utility patent, why aren't the statements therein merely hearsay, and inadmissible? Just because someone in a patent application makes a statement about his or her invention and its benefits, that doesn't mean the statements are true. So why should an applicant be held "accountable" for someone else's statements?

By the way, compare this decision to In re Mars, Incorporated, Serial No. 77727119 (May 16, 2011) [not precedential] [TTABlogged here], where the Board found the pet food container design shown below to be inherently distinctive.


Text Copyright John L. Welch 2013.

Precedential No. 2: TTAB Sustains Section 2(e)(4) Surname Opposition to "MILLER LAW GROUP" for Legal Services

This Miller's tale had quite an unhappy ending for applicant Michele Ballard Miller. The Board sustained an opposition to her application to register MILLER LAW GROUP for legal services [LAW GROUP disclaimed], finding the alleged mark to be primarily merely a surname under Section 2(e)(4), and lacking in acquired distinctiveness. The non-surname meanings of "miller " (a mill operator or a moth) did not eclipse the surname significance of the word when used in the context of legal services. Mitchell Miller, a Professional Corp. dba Miller Law Group, P.C. v. Michele Ballard Miller, 105 USPQ2d 1615 (TTAB 2013) [precedential].

Primarily merely a surname? Applying its standard surname test, the Board first found that "Miller" is a common surname. It is the sixth most frequently-occurring surname in the 2000 U.S. Census (1,127,803 occurrences), and it is a common surname in the legal profession. Even applicant admitted that "Miller" is a common surname.

The fact that applicant's surname is Miller "strengthens the inference that the public will perceive the term as a surname."

The Board took judicial notice of the definitions of "miller" as "one that operates a mill" and "any of various moths having powdery wings." However, in the context of applicant's services, the surname significance of "Miller" is its primary significance.

The question is not whether a mark having surname significance might also have a non-surname significance, but whether, in the context of the goods or services at issue, that non-surname significance is the mark's primary significance to the purchasing public, thus eclipsing and relegating the mark's surname significance to secondary rather than primary status.

Finally, the Board not surprisingly found that "Miller" has the "look and feel" of a surname, given that it is the sixth most common surname in this country.

In sum, the evidence was overwhelming that the primary significance of "Miller" to the relevant public is that of a surname. The addition of the phrase LAW GROUP to MILLER did not change its primary significance. "Considered as a whole and in light of the preponderance of evidence," the Board found that MILLER LAW GROUP is primarily merely a surname under Section 2(e)(4).

Acquired distinctiveness? A Section 2(e)(4) surname refusal may be overcome by proof of acquired distinctiveness under Section 2(f). Applicant's evidence showed use of the applied-for mark since 1998, with growing revenues and tens of thousands of dollars spent on marketing.

Opposer used the mark MILLER LAW GROUP, P.C. since 2007, on letterhead, signage, etc. Opposer also provided evidence of third-party use of MILLER in connection with legal services: at least seven users in addition to opposer and applicant. The State Bar of California included 274 active attorneys with the surname MILLER, and San Francisco alone has 68. With MILLER being the sixth most common surname, "it is reasonable to assume that there are additional legal practitioners that use MILLER in connection with legal services, and that the record only reflects a small sampling of those users."

Although applicant has used the applied-for mark continuously since 1998, "it is clear from the record that applicant has not established that her use of MILLER is substantially exclusive as required by Section 2(f)." In addition, applicant had consented to use and registration of the surname MILLER by three additional parties in connection with certain legal services.

Moreover, applicant has not, and it would appear cannot in good faith, submit a verified statement with an affidavit or signed declaration under 37 C.F.R. § 2.20 that the mark has become distinctive of her legal services through her “substantially” exclusive use in commerce.

The Board therefore found that the neither the surname MILLER nor the applied-for mark MILLER LAW GROUP has acquired distinctiveness with respect to legal services.

And so the Board sustained the opposition.

Read comments and post your comments here. 

Text Copyright John L. Welch 2013.

Precedential No. 1: TTAB Affirms Ornamentality Refusal of Clothing Trim Design Mark

The Board affirmed a refusal to register the purported mark shown below for "hooded sweatshirts; jackets; coats," on the ground that the design is merely ornamental and fails to function as a trademark. Because Lululemon's application was not based on actual use, it could not claim acquired distinctiveness. Its attempt to prove inherent distinctiveness was unsuccessful, as was its assertion that the design serves as a secondary source indicator. In re Lululemon Athletica Canada Inc., 105 USPQ2d 1684 (TTAB 2013) [precedential].

An applicant may overcome an ornamentality refusal in any of three ways: (1) by proving inherent distinctiveness; (2) by establishing acquired distinctiveness; or (3) by showing that the mark is registered for other goods or services, and thus that the applied-for mark serves as a secondary source indicator. But because Lululemon relied only on Sections 1(b) and 44(e) as the bases for its application to register, and did not claim use under Section 1(a), it could not rely upon or show acquired distinctiveness. That left avenues (1) and (3).

Inherent Distinctiveness: An ornamental design may be inherently distinctive if its principal function is to identify source, with its ornamental aspect being only incidental. A design that is a mere refinement of common or well-known forms of ornamentation will not be viewed as a source indicator by the consuming public.

Lululemon asserted that its applied-for mark is distinctive, and further that competitors use similar "large marks" on their clothing items, leading consumers to recognize Lululemon's design as a source identifier rather than merely an ornament.

Examining Attorney Ellen J.G. Perkins contended that, due to the large size of the design, consumers would not view it as a mark. She also pointed to third-party registrations showing that similar designs are registered on the Supplemental Register or under Section 2(f) [i.e., they were deemed not to be inherently distinctive].

Based on the record evidence, the Board observed that, although it "may have once been the practice in the clothing industry to limit logos to small sizes in discrete areas rather than have them 'emblazoned' across a garment, that is no longer standard practice." In short, the large size of Lululemon's design does not per se rule out its registrability.

However, the Board found that Lululemon's wave design "is rather simple and looks like piping." It is, the Board concluded, "likely to be perceived by the public as merely ornamental."

Secondary Source Indicator: The Board recognized that ornamentation on clothing (e.g., logos on T-shirts) may be of a "special nature which inherently tells the purchasing public the source of the T-shirt, not the source of manufacture but the secondary source."

In the context of an ornamentality refusal, "secondary source" simply means that the use of the design or words would be perceived by the consumer as an indicator of source due to the applicant's prior use or registration of the mark for other goods or services (not the applied-for goods).

Lululemon asserted that it has used "the same mark" for related goods and services: on a storefront, Christmas ball ornaments, shopping bag, luggage bag, gift card, wool cap, jacket, bamboo yoga brick, dense foam brick, yoga mat, skidless towel, hairbands, running cap, and headbands.

The Examining Attorney contended, however, that the applied-for mark and the registered mark (shown below) are not the same mark. The Board agreed. The registered mark comprises a wave design "confined in and highlighted by a contrasting-hued circle." The sides of the registered mark are thicker and closer together than the applied-for mark, and the registered mark is not of uniform thickness.

One might say that, in the Board's eye, Lululemon's secondary source argument was not a "lulu" but rather a "lemon."

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

The Top Ten TTAB Decisions of 2012 [Part Two]

The second half of the TTABlog's "top ten" list of 2012 decisions includes a non-precedential, but instructive, ruling on Section 2(e)(5) functionality, another Cuban cigar case under Section 2(e)(3), a rare Section 2(d) color decision, and two quasi-procedural, quasi-substantive determinations. Part One of the top ten list may be found here.



In re Cook Medical Technologies LLC, Serial No. 77882876 (December 31, 2012) [precedential]. In this "somewhat unusual" likelihood of confusion case involving the comparison of two color marks, the Board affirmed a refusal to register the color "teal" for "medical devices, namely, guiding sheaths for use in conjunction with access needles, wire guides, and dilators for providing access for diagnostic and interventional devices in vascular and non-vascular procedures." The Board found the applied-for mark likely to cause confusion with a registered mark comprising the color "blue" applied to the tip and indwelling length of catheters. The Board noted that Cook originally dubbed its mark as the color "blue/teal," and it observed that the narrow shapes of the products may make it more difficult to differentiate between the shades of blue. Although sympathizing with Cook's plight, the Board pointed out that Cook could have tried to narrow the scope of the cited mark via Section 18, or could have sought a consent from the registrant.

In re Hershey Chocolate and Confectionary Corp., Serial No. 77809223 (June 28, 2012) [not precedential]. In order to attain trademark registration, a product configuration must clear two hurdles: functionality and acquired distinctiveness. Hershey cleared both in this successful appeal from a refusal to register the product configuration shown here for “candy, chocolate.” Functionality: In a perceptive analysis, the Board found that, although certain aspects of the product configuration are functional, the design as a whole is not. The Board recognized that scoring or segmenting candy bars serves a useful purpose, noting the many examples in the record. But the Board stressed that Hershey “is not seeking to register a segmented rectangular candy bar of no particular design” and found that the proposed mark “as a whole is not essentially functional.” Acquired distinctiveness: A blind internet survey showed that 42% of the survey participants correctly identified Hershey as the maker of the product design, a “significant” number compared with previous cases. In addition, Hershey established use of the mark since 1968, sales of over four billion dollars from 1998-2010, and millions of dollars in advertising expenditures. Considering all the evidence, the Board concluded that Hershey established a prima facie case of acquired distinctiveness that the PTO failed to rebut.



Kallamni v. Khan, 101 U.S.P.Q.2d 1864 (TTAB 2012). [precedential]. Respondent Khan, a Pakistani domiciliary and national, obtained a US registration for the mark OZO ENERGY DRINK & Design for soft drinks, under Section 44(e) of the Lanham Act, based on a Community Trademark Registration (CTM). Khan claimed that the CTM registration emanated from his “country of origin,” but the Board concluded that Khan did not have a “bona fide and effective industrial or commercial establishment in the EU.” He did not have a permanent place of business with employees, nor production facilities, in the EU, and the Board found as a matter of law that “a bona fide and effective industrial or commercial establishment cannot be created by respondent’s reliance on the commercial facilities of an independent legal entity which respondent retained to source his European Union business.” It therefore ruled that the CTM registration could not serve as a basis for registration under Section 44(e), and it cancelled Khan’s registration on petitioner’s motion for summary judgment.



Otter Products LLC v. BaseOneLabs LLC, 105 U.S.P.Q.2d 1252 (TTAB 2012) [precedential]. In this Section 2(d) opposition, opposer Otter relied solely on a Supplemental Registration for its pleaded mark, proffering no other evidence or testimony. Rule 2.132(b) provides for involuntary dismissal of a proceeding if the plaintiff relies only on USPTO records and defendant establishes that plaintiff has “shown no right to relief.” Otter's ownership of a Supplemental Registration sufficed to give it standing to oppose, and removed priority as an issue in the proceeding. But to prevail under Section 2(d), an opposer must show that it has “proprietary rights in the term [it] relies upon to demonstrate likelihood of confusion as to source.” Otter’s only evidence, the Supplemental Registration, was not evidence of ownership, validity, or the exclusive right to use. In short, it does not enjoy the presumptions of Section 7(b). The mark in Otter’s Supplemental Registration is presumed to be merely descriptive, and because Otter provided no evidence of acquired distinctiveness, it could not prevail in this proceeding.

Corporacion Habanos, S.A. v. Guantanamera Cigars Co., 102 U.S.P.Q.2d 1085 (TTAB 2012). On remand from the U.S District Court for the District of Columbia, the Board sustained this opposition to registration of the mark GUANTANAMERA for cigars, finding the mark to be primarily geographically deceptively misdescriptive under Section 2(e)(3). The district court found that “Guantanamera” means “girl from Guantanamo,” that the primary significance of GUANTANAMERA is geographic, that the consuming public is likely to believe that applicant’s cigars originate from Cuba, and that cigar tobacco is produced in the Guantanamo province. However the court ruled that the Board had failed to address the third element of the California Innovations test: the materiality of the geographic representation inherent in the mark. The Board re-opened the proceeding so that the parties could address that issue. It ruled that indirect evidence of materiality is acceptable in an inter partes proceeding, and it concluded that “a significant portion of consumers of cigars would be materially influenced by the geographic meaning of applicant’s mark.” Applicant argued that direct evidence of materiality is required, but the Board concluded otherwise. It noted the difficulty in obtaining direct evidence from purchasers, and pointed out that the TTAB does not require survey evidence in any proceeding (given the limited nature of its jurisdiction).



Read comments and post your comments here.

Text Copyright John L. Welch 2012-2013.

The Top Ten TTAB Decisions of 2012 [Part One]

Once again, yours truly, the TTABlogger, has fearlessly chosen the ten TTAB decisions that he considers to be the most important and/or interesting from the previous calendar year. All but one of the chosen decisions are precedential. [This is the first of two posts, the first five entries being set out below, preceded by a few introductory paragraphs. Additional commentary on each case may be found at the linked TTABlog posting].



The issue of fraud continues to tread water at the TTAB. Not a single fraud claim has been sustained by the Board since the CAFC issued its Bose decision in August 2009. In the one precedential ruling that mentioned a fraud claim [ShutEmDown Sports v. Lacy, below], the Board ducked the issue entirely by choosing to base its ruling on the unpleaded ground of nonuse. Nonetheless, claims of fraud are frequently made, perhaps because of their in terrorem effect on the accused party.

Although fraud may be in the TTAB doldrums, dilution-by-blurring has been making waves in the TTAB pool. In 2011, the Board relaxed its requirement that a plaintiff show that the marks at issue are identical or substantially similar in order to win a dilution claim, but it tightened its focus on proof that any association between the marks will cause a diminution of the distinctiveness of the famous mark. The net result may do little to reduce the uncertainty of success when a trademark owner pursues a dilution claim.

The issue of bona fide intent, or lack thereof, seems to be surfacing with increasing frequency. In one significant decision [L'Oreal v. Marcon, below], the Board found a lack of bona fide intent based in part on the applicant’s history of filing intent-to-use applications for the famous marks of others, but never using the marks.

Section 2(b) cases are rare indeed, but a pair of TTAB decisions applied this statutory bar according to its express terms in affirming refusals to register the official seals of two municipalities. [District of Columbia and Houston, below]. In an inter partes decision, the Board likewise declined to look beyond the statutory language of Section 43(c)(6) - despite general agreement that the language resulted from a “clerical error” - in dismissing a dilution claim in view of the "federal registration defense." Academy of Motion Picture Arts and Sciences v. Alliance of Professionals & Consultants, Inc., 104 U.S.P.Q.2d 1234 (TTAB 2012).

In other TTAB rulings of particular interest, the Board clarified the nature of the proofs necessary to establish that a mark is primarily geographically deceptively misdescriptive under Section 2(e)(3). [Corporacion Habanos, below]. It affirmed the USPTO’s refusal to allow amendment of the mark GOT STRAPS to add a question mark because that change would constitute a material alteration under Trademark Rule 2.72(b)(2). In re Guitar Straps Online, LLC, 103 U.S.P.Q.2d 1745 (TTAB 2012). The Board confirmed that the owner of a Section 66(a) registration is subject to the same treatment and conditions as any other federal registrant. [SaddleSprings, below]. It explained the difference between a claim for partial abandonment under Section 14 and a request for modification or restriction of a registration under Section 18. Johnson & Johnson v. Obschestvo s Ogranitchennoy; Otvetstvennostiu WDS, 104 U.S.P.Q.2d 2037 (TTAB 2012). And it invoked the catch-all 13th duPont factor in two cases, once in an inter partes context in considering an applicant’s bad faith intent to cause, and profit from, consumer confusion [Edom Laboratories, Inc. v. Lichter, 102 U.S.P.Q.2d 1546 (TTAB 2012)], and once in an ex parte context, taking into account an applicant’s ownership of a registration for the plural version of the mark it sought to register [In re Strategic Partners, Inc., 102 U.S.P.Q.2d 1397 (TTAB 2012)].

In perhaps the most noteworthy ruling in the procedural realm, the Board precluded the trial testimony of a party's only witness because the party had failed to identify her in its initial disclosures or discovery responses, while the only witness the party had disclosed had left the company. [Spier v. Shepher, below].

In CAFC decisions of note, a divided panel blessed the Board’s approach to Section 2(e)(5) functionality: weighing the functional and non-functional features of a product design against each other in order to determine whether the design is de jure functional. In re Becton, Dickinson and Co., 102 U.S.P.Q.2d 1372 (Fed. Cir. 2012). In yet another Section 2(e)(3) decision, the appellate court affirmed the Board’s ruling that goods do not originate in Paris just because the designer of the goods had significant ties to that city. In re Miracle Tuesday, LLC, 104 U.S.P.Q.2d 1330 (Fed. Cir. 2012). And the CAFC applied its recent Citigroup ruling in an ex parte context, rejecting again the Board’s "reasonable manners" analysis when considering variations of a standard character mark. In re Viterra Inc.., 101 U.S.P.Q.2d 1905 (Fed. Cir. 2012).

The Board’s total output of 42 precedential decisions in 2012 [see TTABlog list here] was a slight increase from 2011, but still a marked decline from the average of 56 for the previous five-year period. Perhaps the addition of five new judges in 2012 will yield more decisions, and more precedential decisions, in 2013.



THE TOP TEN TTAB DECISIONS OF2012


L’Oreal S.A. v. Marcon, 102 U.S.P.Q.2d 1434 (TTAB 2012) [precedential]. The fame of the marks L’OREAL and L’OREAL PARIS for cosmetics and personal care products was a major factor in the Board’s sustaining opposer’s Section 2(d) claim in this opposition to L’OREAL PARIS for “aloe vera drinks.” As to the claim that applicant lacked a bona fide intent to use the mark, applicant’s pattern of filing ITU applications for disparate goods under the well-known or famous marks of others was a basis for sustaining that claim. The Board found opposer’s marks to be famous based on billions of dollars in sales, significant market share, huge advertising expenditures, extensive media exposure, impressive brand awareness, and consistent high ranking by Business Week. The marks are obviously identical and, while at first glance cosmetics and beverages “might not appear to be inherently related,” opposer submitted “substantial evidence to show several reasons for finding such goods to be related;” for example, companies have marketed cosmetics and beverages under the same mark. Marcon’s history of filing applications for products for which he had no relevant experience convinced the TTAB that adoption of this mark was in bad faith, although the Board observed that even without bad faith it would still find confusion likely.



In re The Government of the District of Columbia, 101 U.S.P.Q.2d 1588 (TTAB 2012) [precedential]; In re City of Houston, 101 U.S.P.Q.2d 1534 (TTAB 2012) [precedential]. Facing an issue of first impression, the Board, in District of Columbia, affirmed the USPTO’s refusal to register the mark shown below left, on the ground that the mark comprises a governmental insignia that is barred from registration by Section 2(b) of the Lanham Act. Applicant sought to register its official seal for various goods, including clocks, cufflinks, and clothing items. Section 2(b) prohibits registration of any mark that “consists of or comprises the ... insignia of ... any State or municipality ....” There was no dispute that the applied for mark is applicant’s official seal, nor that the District of Columbia qualifies as a “municipality” under the Act. The Board found the language of Section 2(b) to be “plain and clear on its face.” Applicant argued that Section 2(b) should be interpreted to include an exception for governmental entities seeking to register their own insignia, but the Board noted that such an exception is absent from the statutory text, and it refused to presume that Congress intended such an exception.

In Houston, the Board followed its decision in District of Columbia, affirming a Section 2(b) refusal to register the official seal of the City of Houston for various municipal services. The Board distinguished its ruling in In re U.S. Dep’t of the Interior, 142 U.S.P.Q. 506 (TTAB 1964), where it reversed a refusal to register a logo of the National Park Service. There, the question was whether the logo was an official insignia falling with Section 2(b), i.e., was it “of the same class as the flag or coats of arms of the United States.” Once it is determined that the mark does fall with the Section 2(b) prohibition, then the goods or services identified in the application to register are irrelevant. Here, the City of Houston’s seal is admittedly an official insignia under Section 2(b), and applicant’s discussion of the particular government-related services recited in its application is of no consequence.


ShutEmDown Sports, Inc. v. Lacy, 102 U.S.P.Q.2d 1036 (TTAB 2012) [precedential]. The Board shut down applicant Carl Dean Lacy in this cancellation proceeding involving his registration for the mark SHUT IT DOWN for 113 clothing items. Petitioner alleged abandonment and fraud, asserting that at the time of filing, Lacy had yet to use the mark on any of the goods and that any subsequent use of the mark had been abandoned. The Board granted the petition on the ground of abandonment, ruled that the registration was void ab initio for nonuse – a ground that was not pleaded – and declined to consider the fraud issue. Lacy admitted that he did not use the mark in connection with 109 of the identified goods, and had no intention to do so. He therefore failed to rebut the statutory presumption of abandonment that arises after three years of nonuse. As to the remaining four items that Lacy claimed to have sold, the lack of sales for a five-year period, coupled with his lack of documentation, established a prima facie case of abandonment. The Board found it unnecessary to reach petitioner’s fraud claim because petitioner had made a prima facie case that Lacy had not used his mark on any of the goods at the time he filed his application, and Lacy failed to overcome that showing. The Board therefore ruled that Lacy’s application was void ab initio for nonuse.


Spier Wines (PTY) Ltd. v. Shepher, 105 U.S.P.Q.2d 1239 (TTAB 2012) [precedential]. Spier Wines noticed the testimony deposition of one witness, Ms. Eve Jell, but not until its pre-trial disclosures was she first identified as a potential witness. Spier’s initial disclosures had identified a person who had subsequently left the company. Applicant Shepher moved to strike the pre-trial disclosures and to quash the notice of taking testimony due to Spier’s failure to timely identify Ms. Jell in a supplement to its initial disclosures or otherwise. The Board granted the motion. It weighed the five factors set forth in Great Seats, Inc. v. Great Seats, Ltd., 100 U.S.P.Q.2d 1323 (TTAB 2011), concluding that the failure to identify Ms. Jell was neither harmless nor substantially justified. “Essentially, opposer treated the initial and pretrial disclosure requirements as unrelated events, rather than recognizing that disclosures and discovery responses should be viewed as a continuum of inter partes communication designed to avoid unfair surprise and to facilitate fair adjudication of the case on the merits.” Consequently, the Board applied the “estoppel sanction” and precluded the testimony of Ms. Jell.



SaddleSprings, Inc. v. Mad Croc Brands, Inc., 104 U.S.P.Q.2d 1948 (TTAB 2012). [precedential]. The Board denied respondent’s Rule 12(b)(6) motion to dismiss this petition for cancellation of a Section 66(a) registration (a/k/a Madrid Protocol extension of protection). Petitioner alleged that the subject mark had been abandoned, but respondent asserted that because the corresponding International Registration is still viable, the registration cannot be cancelled under Section 14. Respondent contended that its registration is subject to Section 71 of the Trademark Act, 15 U.S.C. Section 1141k, which states that “an extension of protection remains in force for the term of the international registration, except that the Director may cancel the extension if the affidavit required by Section 1141k is not timely filed.” Consequently, according to respondent, the Director has no authority to cancel its registration prior to expiration of the grace period for filing a declaration or affidavit of use - i.e., prior to six years and six months after the registration issued on February 20, 2007. The Board, however, ruled that “an owner of a Section 66(a) registration is subject to the same treatment and conditions which prevail in connection with any other registrant. *** [T]his includes the possibility that the registration may be cancelled on any available ground under Section 14 of the Trademark Act, 15 U.S.C. § 1064."


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Text Copyright John L. Welch 2012-2013.

Nevermind! USPTO Drops Idea of Moving Up Deadline for First Filing of Section 8 Declarations of Use

You will recall that last Fall, the USPTO sought comments on a potential amendment to the Trademark Act that would have changed the first filing deadline for Affidavits or Declarations of Use or Excusable Nonuse under Sections 8 and 71 of the Trademark Act from between the fifth and sixth years after the registration date (or the six-month grace period that follows), to between the third and fourth years after the registration date (or the following six-month grace period). See TTABlog posting here.


Well, nevermind. Based on the comments received, the USPTO has decided to shelve that idea. It recently posted the following notice (here):

On August 16, 2012, the USPTO published a notice inviting the public to submit written comments on a potential legislative change to amend the first filing deadline for Affidavits or Declarations of Use or Excusable Nonuse under Sections 8 and 71 of the Trademark Act from between the fifth and sixth years after the registration date, or the six-month grace period that follows, to between the third and fourth years after the registration date, or the six-month grace period that follows (77 FR 49425 (August 16, 2012)). A review of the comments submitted reveals that although many commenters expressed concern regarding registrations that are no longer in use in connection with some or all of the goods/services listed, the predominant sentiment was that the deadline should not be shortened. Several commenters also noted that further research and data were necessary to support a legislative change to the deadline. To that end, the USPTO notes that it is currently conducting a post-registration pilot program to gather information regarding the accuracy of identifications of goods/services for registered marks. (77 FR 30197 (May 22, 2012)).

Read comments and post your comment here.

The TTAB Issued 42 Precedential Decisions in 2012

Here is a compilation of links to the TTABlog postings for the 42 precedential decisions issued by the TTAB in 2012, categorized according to subject matter.


Section 2(a) - Deceptiveness:

• Precedential No. 25: TTAB Finds "α CU" (Alpha CU) Deceptive for Copper-less Dietary Supplements

Section 2(a) - False Association:

• Precedential No. 23: TTAB Affirms 2(a) False Connection Refusal of BENNY GOODMAN COLLECTION

Section 2(b) - Official Insignia:

• Precedential Nos. 1 and 2: TTAB Rules that Section 2(b) Bars Registration of a Government Entity's Own Official Insignia

Section 2(d) - Likelihood of Confusion:

• Precedential No. 42: In Rare Section 2(d) Color Case, TTAB Affirms Refusal of Teal for Sheaths over Blue for Catheters
  
• Precedential No. 37: WYHA? TTAB Finds TALENT ASSURANCE and JOB ASSURANCE Confusable with ASSURANCE for Employment Placement Services
• Precedential No. 19: TTAB Finds Actual Confusion and Bad Faith, Sustains SUPER CHIRO TEA Opposition
• Precedential No. 18: Invoking 13th duPont Factor, TTAB Reverses 2(d) Refusal of ANYWEAR for Footwear
• Precedential No. 14: TTAB Reverses 2(d) Refusal of GRAND HOTEL NYC over GRAND HOTEL for Hotel Services
• Precedential No. 13: TTAB Sustains L'Oreal's Opposition to L'OREAL PARIS for Aloe Vera Drinks, Finding Likely Confusion and Lack of Bona Fide Intent
• Precedential No. 10: TTAB Finds COLOMBIANO COFFEE HOUSE Confusingly Similar to COLOMBIAN Certification Mark for Coffee
• Precedential No. 9: Rejecting Parody Defense, TTAB Finds CRACKBERRY Likely to Cause Confusion With and Likely to Dilute BLACKBERRY
• Precedential No. 5: Parties Choose ACR, TTAB Finds TURFECTA and TRIFECTA Confusingly Similar for Grass Seed

Section 2(e)(1) Mere Descriptivenses:

• Precedential No. 40: On Summary Judgment, TTAB Rejects Claim that SMS Number Is Merely Descriptive of Mobile Search Services
• Precedential No. 31: TTAB Affirms Mere Descriptiveness Refusal of "CENTER OF SCIENCE AND INDUSTRY"
• Precedential No. 30: Denying Cancellation, TTAB Finds CMS Neither Generic Nor Merely Descriptive for Wine
• Precedential No. 29: TTAB Affirms 2(e)(1) and Failure-to-Function Refusals of SEMICONDUCTOR LIGHT MATRIX for Light Curing Systems
• Precedential No. 28: TTAB Finds Stylization of "SADORU" Not Enough to Overcome Mere Descriptiveness Refusal for Motorcycle Seats
• Precedential No. 26: Chastizing PTO, TTAB Reverses Disclaimer Requirement of ARCADEWEB For Internet Marketing Services

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

• Precedential No. 24: TTAB Affirms Refusal of REAL RUSSIAN as Primarily Geographically Deceptively Misdescriptive of Vodka
• Precedential No. 15: TTAB Affirms Section 2(e)(3) Refusal of OLD HAVANA as Primarily Geographically Deceptively Misdescriptive of Rum
• Precedential No. 7: On Remand from District Court, TTAB Sustains Section 2(e)(3) Opposition to GUANTANAMERA for Cigars

Abandonment:

• Precedential No. 34: Section 66(a) Registration May Be Cancelled Under Section 14 Even If I.R. Still Viable
• Precedential No. 11: Sidestepping Fraud Claim, TTAB Cancels "SHUT IT DOWN" Registration Due to Abandonment and Nonuse

Certification Mark:

• Precedential No. 10: TTAB Finds COLOMBIANO COFFEE HOUSE Confusingly Similar to COLOMBIAN Certification Mark for Coffee
• Precedential No. 3: TTAB Dismisses Petition to Cancel SWISS and SWISS MADE Certification Mark Registrations for Watches

Dilution:

• Precedential No. 33: Federal Registration Defense Yields TTAB Dismissal of Dilution Claim
• Precedential No. 9: Rejecting Parody Defense, TTAB Finds CRACKBERRY Likely to Cause Confusion With and Likely to Dilute BLACKBERRY

Failure to Function:

• Precedential No. 35: TTAB Finds Mouthwash Bottle and Cap to Be Inherently Distinctive Source Indicators

Fraud:

• Precedential No. 11: Sidestepping Fraud Claim, TTAB Cancels "SHUT IT DOWN" Registration Due to Abandonment and Nonuse

Genericness:

• Precedential No. 30: Denying Cancellation, TTAB Finds CMS Neither Generic Nor Merely Descriptive for Wine
• Precedential No. 17: TTAB Reverses Genericness Refusal of TENNIS INDUSTRY ASSOCIATION

Lack of Bona Fide Intent;

• Precedential No. 13: TTAB Sustains L'Oreal's Opposition to L'OREAL PARIS for Aloe Vera Drinks, Finding Likely Confusion and Lack of Bona Fide Intent

Nonuse:

• Precedential No. 11: Sidestepping Fraud Claim, TTAB Cancels "SHUT IT DOWN" Registration Due to Abandonment and Nonuse

Section 44(e) Basis:

• Precedential No. 6: TTAB Summarily Cancels Registration Due to Flawed Section 44(e) Basis

Use in Commerce/Specimen of Use/Mutilation:

• Precedential No. 41: TTAB Affirms SSFA CERTIFIED CODE COMPLIANT Refusal - Specimens Show Two Marks, Drawing One
• Precedential No. 38: Screenshot of YouTube Music Video Not a Proper Trademark Specimen Absent Download Link
• Precedential No. 27: Adding a Question Mark to GOT STRAPS Materially Alters the Mark, Says TTAB
• Precedential No. 22: TTAB Re-designates Azteca Specimen-of-Use Decision as Precedential
• Precedential No. 16: "CEI" Identifies a Process, Not a Service, So TTAB Affirms Refusal to Register

(click on photo for larger picture)
Discovery/Evidence/Procedure:

• Precedential No. 39: Plaintiff That Relies Solely on a Supplemental Registration Cannot Prevail in a Section 2(d) Proceeding
• Precedential No. 36: TTAB Denies Another Motion to Re-Open Discovery
• Precedential No. 34: Section 66(a) Registration May Be Cancelled Under Section 14 Even If I.R. Still Viable
• Precedential No. 32: Board Finds Service of Notice of Opposition Flawed but Adequate
• Precedential No. 21: TTAB Excludes Opposer's Sole Trial Witness Due To Failure to Previously Identify Her
• Precedential No. 20: TTAB Says Partial Cancellation for Abandonment Governed by Section 14, not Section 18
• Precedential No. 12: TTAB Dismisses Cancellation Petition Due to Improper Service
• Precedential No. 8: TTAB Applies Collateral Estoppel in Ex Parte Section 2(d) Context Based on Prior TTAB Proceedings
• Precedential No. 5: Parties Choose ACR, TTAB Finds TURFECTA and TRIFECTA Confusingly Similar for Grass Seed
• Precedential No. 4: TTAB Dismisses "Goats on a Roof" Cancellation Petition for Lack of Standing, Failure to State a Claim

Text Copyright John L. Welch 2012-2013.

Precedential No. 42: In Rare Section 2(d) Color Case, TTAB Affirms Refusal of Teal for Sheaths over Blue for Catheters

In a "somewhat unusual" likelihood of confusion case involving the comparison of two color marks, the Board affirmed a refusal to register the color "teal" for "medical devices, namely, guiding sheaths for use in conjunction with access needles, wire guides, and dilators for providing access for diagnostic and interventional devices in vascular and non-vascular procedures." The Board found the applied-for mark likely to cause confusion with a registered mark comprising the color "blue" applied to the tip and indwelling length of catheters. In re Cook Medical Technologies LLC, 105 U.S.P.Q.2d 1377 (TTAB 2012) [precedential].

Drawing of Applicant's mark
Applicant Cook Medical sought registration on the Supplemental Register for a mark [drawing above] consisting of "a translucent, iridescent teal color shown along the shaft length of a rib-reinforced medical guiding sheath." The cited registration (drawing below) is directed to the color "blue" as applied to catheters.

Cook confirmed that is sheaths may be used with catheters, and its website so indicated. Third-party websites corroborated the same type of complementary use. The Board therefore found the goods to be closely related. As we know, the closer the goods, the lesser the degree of similarity necessary to support a finding of likely confusion.

Because there were no limitations as to channels of trade or classes of purchasers in the application and the cited registration, the Board presumed that the involved goods move in the same, normal channels of trade to all classes of purchasers.

The "crux" of the appeal centered on the similarity of the marks. The Board noted that "likelihood of confusion takes on additional significance when the goods are pharmaceuticals or medical instruments."

It found that applicant’s teal color mark, running the length of the shaft of a guiding sheath for catheters, to be similar in appearance to Cook's blue color mark that runs the length of a catheter. The Board noted that applicant's originally described its mark as the color "blue/teal," and it observed that the narrow shape of the products may make it more difficult to differentiate between the shades of blue. "The fact that applicant’s teal color mark may appear to be translucent and iridescent is not sufficient to distinguish the marks in a meaningful manner," because in some lighting conditions, the translucence "may not be perceptible and the iridescence may result in the teal being perceived as more blue than green."

Applicant Cook did not argue that the relevant purchasers are sophisticated and discriminating, but in any case, "even sophisticated purchasers are not immune from source confusion, especially in cases such as the instant one involving similar marks and closely related goods." The Board concluded that "the similarities between the marks and the goods sold thereunder outweigh any sophisticated purchasing decision, especially in the absence of evidence relating to the degree of care in making the decision."

The record was devoid of evidence of third-party use of any color mark for medical devices, though that was "hardly the most probative factor in this case." Cook's assertion of no actual confusion despite contemporaneous use of the marks for more than 18 years was entitled to little weight in this ex parte context, where the registrant has no opportunity to be heard. Moreover, there was no evidence as to the extent of use of the marks, and thus whether there have been meaningful opportunities for the occurrence of actual confusion.

Balancing the relevant duPont factors, the Board concluded that confusion is likely, and it affirmed the refusal.

Registrant's specimen of use
The Board went on to observe that its decision should not be taken to mean that "merely because a party obtains a registration for a single color that such registration will block others from using or registering marks for other colors, even similar colors." Here, registrant's mark is describes only as the color "blue," and therefore the Board must consider every shade of blue.

Finally, the Board expressed some sympathy for Cook's concerns about the scope of protection given to the cited registration, but it noted that Cook did not avail itself of Section 18 of the Act, which gives the Board the equitable power to cancel registrations in whole or in part. "This Section 18 claim, if successful, would modify the description of the mark from 'blue' to the specific shade of blue actually used in the marketplace. Such a claim can be used to modify overly broad identification of goods (for example, 'computer programs')." Of course, the Board will not entertain such a Section 18 claim unless the proposed modification will serve to avoid a finding of likelihood of confusion between the involved marks." Alternatively, Cook could have sought a consent from the registrant.

Read comments and post your comment here.

TTABlog comment: For a discussion of the difference between partial cancellation under Section 14 and restriction or modification of a registration under Section 18, see Johnson & Johnson v. Obschestvo s Ogranitchennoy; Otvetstvennostiu WDS, 104 USPQ2d 2037 (TTAB 2012) [precedential]. [TTABlogged here].

FWIW: I am prosecuting an application in which the color pink for a medical device has been refused registration over the color red for another medical device. Is pink a shade of red?

Text Copyright John L. Welch 2013.

Precedential No. 41: TTAB Affirms SSFA CERTIFIED CODE COMPLIANT Refusal - Specimens Show Two Marks, Drawing One

In a rather straightforward, yet precedential decision. the Board affirmed two refusals to register the mark SSFSA CERTIFIED CODE COMPLIANT, in standard character form, for "testing, analysis and evaluation of the goods and services of others for the purposes of certification in the field of the use of cold-formed steel tracks and steel framing studs" [CERTIFIED CODE COMPLIANT disclaimed]. It agreed with examining Attorney Gina M. Fink that (1) applicant "is seeking to register multiple marks, as displayed in its specimens," and (2) applicant’s mark differs in the drawing and the specimen," both in violation of Sections 1 and 45 of the Trademark Act. In re Supreme Steel Framing System Association, Inc., 105 U.S.P.Q.2d 1385 (TTAB 2012) [precedential].

Specimen of Use
Multiple Marks: The Board observed that the Trademark Act and the Trademark Rules permit registration of only one mark per application. "However, an applied-for mark combining separate elements is registrable only if it is a single unitary mark engendering a unique and distinct commercial impression."

The question presented is whether the specimens of use accurately depict a single, unitary mark engendering a unique and distinct commercial impression, or whether the specimens depict two separate marks.

To resolve the issue, the Board must compare the specimens with the drawing and make a necessarily subjective determination. The Board concluded that, "[a]s they are presented on these specimens, 'SSFSA' and 'CERTIFIED CODE COMPLIANT' would not be perceived as components of a single unitary mark, but rather as two separate marks."

[The} spatially separate and distinct manner of presentation of these elements creates separate commercial impressions for SSFSA and CERTIFIED CODE COMPLIANT. Based on the manner in which they are depicted in the specimens, purchasers would be more likely to perceive these two elements as two different marks – SSFSA SUPREME STEEL FRAMING SYSTEM ASSOCIATION and design on the one hand, and CERTIFIED CODE COMPLIANT and design on the other – rather than the single mark shown on the drawing page.

The Board therefore affirmed this refusal.

Difference between the Drawing and Specimen: Having found that the drawing presents a single composite mark while the specimen does not, the Board perforce concluded that "the mark on the drawing differs from the multiple marks on the specimen." And so the Board affirmed this second refusal as well.

Read comments and post your comment here:

TTABlog comment: I don't understand the first refusal. It seems to me that Applicant is seeking to register only one mark. Unfortunately, its specimens of use don't "match" the drawing. IMHO, the second refusal is all that is needed.

Text Copyright John L. Welch 2013.

Precedential No. 40: On Summary Judgment, TTAB Rejects Claim that SMS Number Is Merely Descriptive of Mobile Search Services

Grape Technology was squashed by ChaCha in this combined opposition/cancellation proceeding. The Board denied Grape's belated motion to amend its counterclaim, denied its summary judgment motion seeking cancellation of ChaCha's registration on the newly-proposed ground of failure-to-function, and granted ChaCha's summary judgment motion for a ruling that its registered mark 242242 is not merely descriptive of "[p]roviding search engine services for obtaining specific user-requested information via text messaging, instant messaging, mobile internet, voice messaging, and wireless devices." ChaCha Search, Inc. v. Grape Technology Group, Inc., 105 U.S.P.Q.2d 1298 (TTAB 2012) [precedential].

Grape's Motion to Amend:  Grape filed its counterclaim in November 2010, stating on the cover sheet only mere descriptiveness as the ground for cancellation. Its allegations likewise referenced only mere descriptiveness and lack of acquired distinctiveness.

Grape sought to amend its counterclaim to add the ground of failure to function as a trademark, asserting that its proposed new allegations merely served to amplify the allegations raised in the original counterclaim. The Board disagreed, finding that Grape was "clearly seeking to add a new ground for cancellation."

A claim that a mark is merely descriptive relates to the character of the mark at issue, while a claim that matter does not function as a mark is generally tied to the manner in which that matter is used.

Moreover, Grape's motion to amend was filed in February 2012, fifteen months after its original counterclaim, after it served its pretrial disclosures (which date had been extended twice), and after ChaCha had filed its motion for summary judgment. The Board accordingly found that Grape had unduly delayed in filing its motion. The new ground proposed by Grape was based on facts know to it when it filed its original counterclaim. Although Grape claimed that the parties had been in settlement negotiations, the Board noted that those negotiations ended in July 2011.

The Board further found that ChaCha would suffer prejudice if the motion to amend were granted. "[A]llowing piecemeal prosecution of this case would reward Grape for its apparent haphazardness and would unfairly prejudice ChaCha by increasing the time, effort, and money that respondent would be required to expend to defend against an additional basis for Grape’s challenge to its registration."

And so the Board denied the motion to amend.

Grape's Motion for Summary Judgment:  Having denied the motion to amend, the Board denied Grape's cross-motion for summary judgment on the rejected ground of failure to function.

ChaCha's Motion for Summary Judgment:  ChaCha maintained that is mark 242242, which corresponds to CHACHA on the telephone dial, is not merely descriptive of its mobile search services because it does not identify any quality, characteristic, function, feature, purpose, or use of the services.

Grape argued that the USPTO has established "a bright line examination rule that requires alphanumeric telephone number marks to be deemed registrable [only] if there are word elements in the alphanumeric telephone number that are not descriptive or generic of the goods or services offered in association with the alleged mark," and Grape further contended that because 242242 is the SMS number by which users may obtain ChaCha's search services, the mark is merely descriptive.

Reviewing the record evidence, the Board found no genuine dispute that the mark 242242 does not identify an ingredient, quality, characteristic, function, feature, purpose, or use of ChaCha's recited services. Grape's assertion that "the fact that the marks are presented as telephone numbers gives rise to an inference that they are functional and descriptive" lacked any support and, the Board found, is "incorrect." Nor did Grape explain how 242242 identifies an ingredient, quality, characteristic, function, feature, purpose, or use of ChaCha's services.

And so the Board granted ChaCha's motion for summary judgment.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.