Test Your TTAB Judge-Ability: Does the Stylization of this Mark Render it Inherently Distinctive?

VOX Media applied to register the mark MMA FIGHTING.COM in the stylized form shown below, for "on-line journals, namely, blogs featuring sports; providing information in the field of sports." The PTO refused registration on the ground of mere descriptiveness under Section 2(e)(1). Applicant admitted that the wording is descriptive of the services  (MMA meaning Mixed Martial Arts], but it argued that the stylization of the mark renders it inherently distinctive. The PTO disagreed and VOX appealed. How would you rule? In re VOX Media Inc., Serial No. 85085395 (February 19, 2013) [not precedential].


Applicant argued that the letters "MMA" represent the following:

The white portion of the letter "A" is clearly a thumb with the thumbnail showing. The white portions of the M are clearly the fingers of two clenched fists. The black portions also resemble the columns of an arena or temple. And the black portions also resemble blades such as those used in a box cutter, utility knife, or Samurai sword.

Examining Attorney Alain A. Lapter maintained that Applicant merely used a non-traditional font, and did not replace any letters or words with a design element.

The Board observed that the determination of whether a descriptive term is sufficiently stylized to merit registration is "in the eyes of the beholder." The question is whether the stylization creates "a separate and inherently distinctive commercial impression apart from the word itself, such that the mark as a whole is not merely descriptive."

Both the Applicant and the Examining Attorney pointed to prior Board decisions. Applicant noted, for example, the Board's blessing of the mark JACKSON HOLE in stylized form (shown below), found registrable with the words disclaimed.



Unlike Applicant's mark, however, the JACKSON HOLE mark features the letters JH in larger font, partly joined together, in the nature of a monogram, and set lower than the rest of the letters. Moreover, the JH portion was not descriptive of the involved services, whereas MMA is descriptive.

We acknowledge that the lettering in applicant's mark is displayed in a stylized font with sharp, angular lines. However, we do not find that the stylization resembles, as applicant asserts, two punching fists, or calls to mind "the columns of an arena or coliseum" or "blades or knives."

The Board concluded that "the impression conveyed by applicant's mark is not separate from the disclaimed wording in the mark." And so it affirmed the refusal.

Read comments and post your comment here.

TTABlog note: Well, how did you do?

Text Copyright John L. Welch 2013.

Precedential No. 6: Applicant's Rule 133 Amendment Yields Dismissal of 2(d) Opposition

Prior to the close of discovery in this Section 2(d) opposition, Applicant RStudio moved under Rule 2.133 (and Section 18) to narrow the descriptions of its software and related services in the opposed applications "in the event that the Board deems such amendments necessary to dismiss the opposition." The Board deferred ruling on the motion until final decision. It ultimately found that, taking into account applicant's proposed amendments, there was no significant relationship between applicant's software and services and Opposer's software, and so it dismissed the opposition. Embarcadero Technologies, Inc. v. RStudio, Inc., 105 USPQ2d 1825 (TTAB 2013) [precedential].


Applicant sought to register the mark RSTUDIO for goods and services identified in fairly broad terms, encompassing all types of statistical software and application development software, as well as training and design and development services. Applicant's motion aimed to restrict the application under Section 18 to the field of "advanced" statistical software using the "R" computer language and data from two dimensional datasets.

Opposer Embarcadero alleged likelihood of confusion with its registered mark ER/STUDIO for "entity relationship modeling software for SQL databases."

The Board noted that, ideally, a defendant will invoke Section 18 as an affirmative defense. The Board, however, found applicant's motion to be timely because it was filed before the close of discovery. The proposed restrictions were supported by the record in that the scope of applicant's actual goods and services are in fact so restricted. In addition, it was clear that the issue of the proposed restriction was tried by the parties and argued in their briefs. As requested, the Board considered applicant's Section 18 defense in the alternative.

The Board then proceeded through its usual Section 2(d) analysis. It found that the marks have a degree of similarity in appearance and sound, but that each mark has a distinctly different commercial impression and connotation. Most of Opposer's users would understand ER to mean "entity relationship," whereas the R in applicant's mark refers to the "R" programming language. The common element STUDIO is highly suggestive and weak in the field. Therefore this du Pont factor weighed in applicant's favor.

As to the involved goods and services, applicant's "unamended" software and services were clearly related to opposer's database modeling software. As to the amended goods and services, however, the Board did not find "any significant relationship between the respective software products," and it further noted that applicant's services are even further removed from opposer's goods.

The purchasing conditions and the sophistication of purchasers weighed against a likelihood of confusion finding.

Balancing the relevant du Pont factors, the Board found confusion likely as to the unamended goods and services in the opposed applications. However, considering the amended description, the Board found no likelihood of confusion.

And so the Board granted the motion to amend and dismissed the opposition.

Read comments and post your comment here.


Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability: Are VOLVO and LOVOL Confusable for Vehicles?

Volvo opposed registration of the mark LOVOL, in standard character and design forms, for agricultural machinery, construction equipment, automobiles, and other vehicles, claiming likelihood of confusion with its mark VOLVO for overlapping and legally identical goods. Volvo proved that is mark enjoys a "very high degree of renown" in the relevant field, but the Board agreed with applicant that the involved goods are purchased with "significant care." How do you think this came out? Volvo Trademark Holding AB v. Hebei Aulion Heavy Industries Co., Ltd., Opposition No. 91178281 et al. (February 7, 2013) [not precedential].

The Board noted that Applicant's mark is a palindrome, which gives it a "visual symmetry" that is absent from the VOLVO mark: "the beginning and ending L's of applicant's mark balance each other as do the symmetrically placed O's." As to sound, both marks share the letter string VOL, creating the possibility of some phonetic similarity. But there was no objective evidence that the pronunciations of the two marks would be similar.

As to meaning, LOVOL has none. VOLVO means "I am rolling" in Latin, but since Latin is a dead language, who cares? [or qui cogitat?] The Board observed that it is questionable whether relevant customers would be aware of this meaning, and if they were, that would further distinguish the marks. The Board noted also that "VOLV" is suggestive of the English words "revolve" and "evolve".

In sum, the Board found it unlikely that customers of "normal perceptual abilities" would mistake one mark for the other. Nor would they perceive a relationship or other connection between the marks or the parties. Although in light of the renown of the VOLVO mark, the LOVOL mark might call the other to mind, nothing in the record suggested a likelihood of confusion under Section 2(d).

And so the Board dismissed the opposition.

Read comments and post your comments here.

TTABlog comment: Volvo dropped its dilution claim. But since the test for similarity of marks under a dilution theory is the same as that for likelihood of confusion, the dilution claim was probably a loser too.

TTABlog note: My favorite palindrome is: "A man, a plan, a canal - Panama." What's yours?

Text Copyright John L. Welch 2013.

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

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



In re Tofasco of America, Inc., Serial Nos. 85084630 (February 8, 2013) [not precedential].[Refusal to register APEN, in the stylized form shown below, for "digital pens" (in Class 9) and for "online retail and wholesale store, wholesale distributorship, catalogue ordering service and mail order service featuring digital pens"].

In re Athmaram Vasudevan, Serial No. 77849253 (February 6, 2013)[not precedential]. [Refusal to register ASSISTANT GC for "outsourcing in the field of law"].

In re Camp Bow Wow Distribution, LLC, Serial No. 85138662 (February 6, 2013)[not precedential]. [Refusal to register CAMPER CAMS for "Remote monitoring of data indicative of the health or condition of an individual or group of individuals, namely, video monitoring of pets, viewable through a global computer network and mobile devices" and for "Monitoring for security and safety purposes,namely, video monitoring of pets, viewable through a global computer network and mobiledevices"].


In re Ranir, LLC, Serial No. 85156652 (February 6, 2013)[not precedential]. [Refusal to register CLINICAL GRADE for "night teeth guards"].

In re Barteca Restaurants, LLC, Serial Nos. 85202482 and 85202583 (February 1, 2013) [not precedential]. [Refusal to register BARTACO, in standard character, for "restaurant and bar services"].


Read comments and post your comment here.

TTABlog note: Two of the five refusals were reversed. Answers in comments.

Text Copyright John L. Welch 2013.

Mark Your INTA Calendars: "MEET THE BLOGGERS IX" Set For Monday, May 6th, 8-10 PM

The ninth annual "Meet the Bloggers" gathering will take place on Monday night, May 6th, from 8-10 pm. Venue will be announced later (but before May 6th). Marty Schwimmer, Ron Coleman, Erik Pelton, Carl Oppedahl, and Yours Truly will be hosting. Watch this blog for more details.


Washington, D.C. 2012. Co-hosts Pelton, Welch, Coleman, Schwimmer

San Francisco, 2011

Boston 2010. Co-hosts: Coleman, Chestek, Schwimmer, and Welch


Seattle, 2009


Berlin, 2008


Coleman, Schwimmer, Welch, Chicago, 2007


Toronto, 2006

San Diego, 2005 Click on photo for larger picture

Test Your TTAB Judge-Ability: Is This Specimen of Use Okay for the mark "JUXTA"?

Applicant CirCaid Medical Products applied to register the mark JUXTA, in standard character form, for "therapeutic compression support bands, bandages and leggings for medical and veterinary use." It submitted as its specimen of use the packaging depicted below. The PTO issued a final refusal on the ground that the mark as depicted in the drawing is not a substantially exact representation of the mark as used on the specimen, as required by Rule 2.51(a). Circaid appealed. How would you rule? In re CirCaid Medical Products, Serial No. 85401718 (February 5, 2013) [not precedential].


Examining Attorney Dominic R. Fathy maintained that the term JUXTA-LITE or JUXTALITE on the specimen is unitary, since the wording appears in the same font and size. He also noted the symbol "TM" after the term "LITE."

CirCaid argued that JUXTA creates a separate and distinct commercial impression, since the term LITE is often used to identify "a particular version of a given product line." Circaid also pointed to other products at its website: JUXTA-FIT and JUXTA-CURES.

The Board observed that an applicant may seek to register any portion of a composite mark that the chosen portion creates its own commercial impression. However, the proposed mark "must not be so entwined ... with other material that it is not separable from it in the mind of the consumer."

Here, the Board found that consumers will not perceive the term JUXTA as separable from LITE. The words appear in the same font, as the Examining Attorney noted. Furthermore, although CirCaid pointed to other JUXTA- composite marks, there was no evidence of use of JUXTA alone.

CirCaid cited TTAB cases involving registration of the mark TINEL-LOCK, which appeared on the specimen of use as part of "TRO6A1-TINEL-LOCK-RING," and the marks QSE and QSD, which appeared on the specimens of use with a series of model numbers.

The Board pointed out, however, that the specimens here do not display the mark being used with a model or stock number. Moreover, the word LITE is "entwined with JUXTA." Consumers will not perceive the term LITE as merely indicating a variation of the JUXTA product line. And there was no evidence that other manufactures use the term LITE, or that it is descriptive or generic for the identified goods.

And so the Board affirmed the refusal to register.

Read comments and post your comments here.

TTABlog note: Well, how did you do? Do you think this case falls in the "WYHA" category?

Text Copyright John L. Welch 2013.

Yankees Win! TTAB Sustains Opposition to "BASEBALLS EVIL EMPIRE" on Confusion and False Association Grounds

Although the New York Yankees have never used the mark EVIL EMPIRE nor applied to register same, the Board sustained its opposition to registration of BASEBALLS EVIL EMPIRE, in standard character form, for "clothing, namely, shirts, t-shirts, sweatshirts, jackets, pants, shorts and hats." The Board found that the Yankees acquired prior rights in the mark EVIL EMPIRE, that the mark has become famous "in identifying the Yankees," that confusion would likely result from applicant's use of the mark, and further that the applied-for mark creates a false association with the Yankees. Applicant did manage to win on one issue: the Board dismissed the Yankees' Section 2(a) disparagement claim. New York Yankees Partnership v. Evil Enterprises, Inc., Opposition No. 91192764 (February 8, 2013) [not precedential].




[Note: The TTABlog looked at this case in its early stages (here), principally noting the lack of an appropriate apostrophe in applicant's mark.]

Likelihood of Confusion: Applicant admitted that the Yankees had been referred to as the "Evil Empire" prior to the filing date of the opposed application. That took care of the priority issue. The Yankees established rights in the EVIL EMPIRE mark by showing that the public associated the mark with the Yankees. [As an (un)interesting side note, the term EVIL EMPIRE for the Yankees was coined by Larry Lucchino, president of the Boston Red Sox. When he heard the news that Cuban pitcher Jose Contreras had signed with the Bronx Bombers rather than the Carmine Hose, Lucchino reportedly said "The evil empire extends its tentacles even into Latin America."]

The Yankees submitted hundreds of articles and stories using the EVIL EMPIRE moniker for the Yankees. The Yankees claimed that they "implicitly embraced" the EVIL EMPIRE concept by adopting music and other indicia from the STAR WARS movie.

Applicant admitted that "the New York Yankees baseball team has been referred to and known as the 'Evil Empire' by the press, fans, media, other Major League baseball teams and/or public."

The Board therefore found that EVIL EMPIRE, when used in connection with baseball, refers to the Yankees.

Applicant argued that the Yankees did not acquire rights because "[t]oo many baseball teams are now referred to by the media as an 'Evil Empire.'" The Board, however, was unimpressed by the few stories that applicant relied upon. "In short, the record shows that there is only one EVIL EMPIRE in baseball and it is the New York Yankees."

Next the Board found that the mark EVIL EMPIRE, in the world of baseball, has become famous "in identifying the Yankees for the purposes of likelihood of confusion."

The clothing items identified in the opposed application are identical to products sold by the Yankees under its various marks. There are no restrictions in the application, and the goods include everyday items purchased on impulse.

As to the marks, the Board not surprisingly found them to be similar in appearance, sound, connotation and commercial impression. The added word BASEBALLS in the opposed mark increases the likelihood of confusion by defining applicant's field of use.

Balancing the relevant du Pont factors, the Board found confusion likely.

Applicant argued that its mark is a "spoof and parody," but the Board observed that parody is not a defense if the marks at issue are "otherwise confusingly similar."

False Association: The Board found that applicant's mark is a close approximation of Opposer's previously used name or identity, that applicant's mark points uniquely and unmistakably to the Yankees (which, based on applicant's website, is what applicant intended), that applicant has no connection with the Yankees, and that the evidence shows sufficient fame for the EVIL EMPIRE mark that use of BASEBALLS EVIL EMPIRE will falsely suggest a connection with the Yankees.

Disparagement: This claim was undermined by the Yankees' own statement that it "implicitly embraced" the EVIL EMPIRE designation. The Board concluded:

having succumbed to the lure of the dark side, opposer will not now be heard to complain about the judgment of those who prefer the comfort of the light.

And so the Yankees prevailed in this opposition.

Read comments and post your comments here.

Text Copyright John L. Welch 2013.

TTAB Finds MECHANIC to be Generic for ... Guess What?

The TTAB affirmed a refusal to register the term MECHANIC on the Supplemental Register, finding it to be generic for "maintenance and installation of waste handling equipment in the nature of compactors, pre-crushers and hoppers; repair and maintenance of waste handling equipment in the nature of refuse and waste handling trucks, compactors, pre-crushers and hoppers." In re Waste-Away Group, Ltd., Serial No. 77887354 (February 5, 2013) [non precedential].

Examining Attorney Benji Paradewelai relied on dictionary definitions and on third-party websites in contending that the term "mechanic" identifies a type of repair and maintenance services. Applicant argued that the PTO's evidence uses the term "mechanic" to refer to a person, not to services.

The Board first determined the genus of services to be "repair and maintenance services for refuse and waste handling trucks and equipment, such as compactors, pre-crushers and hoppers."

The relevant public for the Board's consideration comprised "waste handling companies that are in need of repair and maintenance services for their machinery and vehicles."

Turning to the record evidence, the Board noted that "mechanic" is defined as "a person who repairs and maintains machinery, motors, etc." However, the "central focus" of applicant's activities consists of the offering of the services of a mechanic. Members of the relevant public, the Board observed, would "readily understand the proposed mark MECHANIC to identify repair and maintenance services which, by necessity, are rendered by a mechanic." [What about a robotic vacuum cleaner? - ed.]

The Board has held that a term that names the provider of goods or services is also generic for those goods or services: e.g., OFFICE MOVERS, INC. for office moving services; THE PROFESSIONAL HEALTH CARE PEOPLE for temporary employment services; THE COMPUTER STORE for computers and computer book outlet services.

Here, given the widespread use of "mechanic" in connection with repair and maintenance services, the Board concluded that the term is incapable of distinguishing the source of applicant's services. And so it found the proposed mark MECHANIC to be generic for applicant's services.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

TTAB Confirms That Federal Registration Defense to Dilution Claim Lives On For Older Cases

[TTABlog caveat: in this proceeding, Evade, LLC, is represented by yours truly]. In a non-precedential ruling, the Board has confirmed that “the federal registration defense” to a claim for dilution still applies to actions commenced prior to October 5, 2012, despite the amendment of the Trademark Act on that date to eliminate the defense. Under Armour, Inc. v. Evade, LLC, Cancellation No. 92052716 (February 14, 2013) [not precedential].


In Academy of Motion Picture Arts and Sciences v. Alliance of Professionals & Consultants Inc., 104 USPQ2d 1234 (TTAB 2012) (“Academy”) [TTABlogged here], the Board ruled that Section 43(c)(6) of the Trademark Act created a “federal registration defense” to a claim for dilution. The Board dismissed the Academy's dilution claim, but acknowledged that the defense arose from a “clerical error” that occurred during the passage of the Trademark Dilution Revision Act of 2006 (TDRA).

On October 5, 2012, eight days after the Academy decision, President Obama signed into law An Act to amend the Trademark Act of 1946 to correct an error in the provisions relating to remedies for dilution, which Act corrected the unintended error in Section 43(c)(6). [TTABlogged here].

However, the new Act expressly states that the amendment to Section 43(c)(6) "shall apply to any action commenced on or after the date of the enactment of this Act."

Accordingly, the Act only applies prospectively to actions which commenced on or after October 5, 2012, and the Board is bound to adhere to the stated effective date of the statute. Consequently, the current Trademark Act Section 43(c)(6), which limits the applicability of the “federal registration defense” to dilution claims that are brought under common law or a statute of a State, is not applicable with respect to dilutions claims brought in inter partes proceedings that commenced prior to October 5, 2012.

The Board observed that what it "recognized in Academy is true here as well: '(T)he Board must apply and enforce the statute as written, rather than picking and choosing a preferred interpretation… this Board must assume that Congress means what it says.'"

The instant case, which included dilution claims aimed at two registrations owned by Evade, was commenced by Under Armour on July 12, 2010. The Board therefore ruled that these claims are barred by the federal registration defense, and it granted Evade's motion for summary judgment vis-a-vis those claims.

Text Copyright John L. Welch 2013.

Recommended Reading: The Trademark Reporter's Annual Review of U.S. Trademark Cases

The Trademark Reporter has published its Annual Review of U.S. Trademark Cases: "The Sixty-Fifth Year of Administration of the U.S. Trademark (Lanham) Act of 1946," by Theodore H. Davis, Jr. and yours truly, John L. Welch. (pdf here). [You might want to read it in digital form, since it is 446 pages long.]

Ted Davis observes in the Introduction that the year may be best remembered for the Nike v. Already case, which featured the issuance of a writ of certioriari by the Supreme Court’s in a trademark case for the first time in nearly a decade.

On the TTAB front, perhaps most notable was the surge of dilution-by-blurring cses that caught the Board's attention, making up for its recent lack of interest in anything having to do with fraud.
 
TTABlog note: Thanks again to The Trademark Reporter for granting permission to provide a link to this issue, which is Copyright © 2013 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 103 TMR 1 (January-February 2013).

Text Copyright John L. Welch 2013.

Food Fight! TTAB Dismisses "WHERE FOOD COMES FROM" 2(d) Opposition

In this opposition to the logo mark shown first below [all wording disclaimed] for food information services, Opposer IMI relied on its alleged common law rights in, and a Supplemental Registration for, the phrase WHERE FOOD COMES FROM, and on a Principal Registration for the second mark shown below for food quality verification services [WHERE FOOD COMES FROM and VERIFIED disclaimed]. The Board found that Opposer had failed to establish acquired distinctiveness in the phrase WHERE FOOD COMES FROM, and further that, given the descriptiveness of the wording, the two design marks at issue are dissimilar. Therefore it dismissed the opposition. Integrated Management Information, Inc. v. Barrie, Opposition No. 91195943 (January 22, 2013) [not precedential].



With regard to Opposer's alleged common law rights and its Supplemental Registration, the question was whether the designation WHERE FOOD COMES FROM had acquired distinctiveness, since it is a highly descriptive phrase. As the Board recently held in Otter Products, a Section 2(d) opposer cannot prevail based on its Supplemental Registration alone; it must prove acquired distinctiveness. The same requirement applies to Opposer's common law claim.

The Board concluded that Opposer's evidence failed to establish acquired distinctiveness. The phrase WHERE FOOD COMES FROM is highly descriptive: it immediately informs the consumer of an aspect of opposer's services. Moreover, opposer's revenue and advertising expenses were small and the phrase has been in use for only a limited time. There were no details regarding opposer's use of social media.

Consequently, Opposer's Section 2(d) claims based on its alleged common law rights and on its Supplemental Registration were rejected.

Turning to Opposer's Principal Registration, the Board found that the two involved marks have "significantly different design elements," and the word portions of Opposer's registered logo is highly descriptive. Those factors outweighed the overlap in customers (the general public) and trade channels.

And so the Board dismissed the opposition.

Read comments and post your comments here.

Text Copyright John L. Welch 2013.

TTAB Sustains 2(d) Opposition to WAL-ZYR, Finding it Confusable with ZYRTEC

The Board sustained this Section 2(d) opposition to registration of the mark WAL-ZYR for "“pharmaceuticals, namely, allergy medications," finding the mark likely to cause confusion with the previously-used mark ZYRTEC for allergy medications. It found ZYRTEC to be a strong mark, the goods identical, the channels of trade and classes of customers the same, the mark similar, and the purchasing decisions to be less than highly sophisticated. Walgreen's survey evidence was deemed not sufficiently probative to affect the result. McNeil-PPC, Inc. v.Walgreen Co., Opposition No. 91184978 (January 22, 2013) [not precedential]. 

Opposer McNeil is the exclusive licensee under the ZYRTEC mark, not the owner, and so it had to prove priority by way of its common law rights. Walgreen relied on its filing date of September 9, 2007, as its constructive first use date. McNeil established priority by showing a "clear chain of trademark rights from prior licensees," and use of the mark by predecessors since 1996.

Brand awareness studies, advertising evidence, and sales figures convinced the Board that ZYRTEC is "both conceptually and commercially very strong."

As to the goods, there was no dispute that they are identical. In fact, they are displayed side-by-side on store shelves. This du Pont factor weighed heavily in McNeil's favor.

The purchasers of these over-the-counter products are "ordinary consumers with no special knowledge or expertise," and although they may spend time confirming the particular uses for the products, that does not mean they are immune from source or sponsorship confusion. So the Board found this factor to be neutral.

Turning to the marks, the Board noted once again that when the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. The Board found that Walgreen's incorporation of the distinctive first portion of Opposer's mark with the first portion of its house mark "creates a substantially similar mark to opposer's previously-used mark." An appreciable number of consumers could believe that "some sort of sponsorship or affiliation exists between the two sources where [applicant has] taken the first and most prominent portion of the respective marks to create a combined mark identifying both of them."

In short, the Board found that the similarities in appearance, sound, connotation and overall commercial impression outweigh the dissimilarities.

Walgreen submitted the results of an Ever-Ready type survey, which the Board found to be in proper form but flawed because the questions "do not expose the full potential for confusion."

The record shows that applicant incorporated the first part of opposer’s mark ZYRTEC in its WAL-ZYR mark because it conveyed equivalence with ZYRTEC. Although the survey included an “affiliation” question, the answers were less than illuminating.

Moreover, the results "rely on assumptions as to how the respondent's would interpret the questions regarding the affiliation aspect. The survey assumes that respondents would, in answering question 3, include in the category of affiliation the circumstance where WAL-ZYR and ZYTREC contain ingredients from the same supplier."

The survey found a confusion rate of less than 7%. Although that number is low, it is not particularly probative because, according to the Board, in this case "confusion is more focused on the sponsorship/affiliation aspect or the possible perception of potential consumers that the ingredients come from the same manufacturer." In addition, the responses showed "more a lack of knowledge about sources of OTC drugs in general, rather than clearly showing a lack of confusion."

Walgreen pointed to the lack of actual confusion evidence despite the goods being sold side-by-side for about three years. The Board, however, observed that proof of actual confusion is difficult to find, and is not necessary to prove likelihood of confusion.

McNeil contended that Walgreen intended to confuse consumers when it adopted its mark. Walgreen maintained that it chose the mark "not to confuse but rather to assist consumers:" the WAL-ZYR mark helps consumers identify the source of the product (Walgreen) and the name brand equivalent (ZYRTEC), while making sure they understand that WAL-ZYR is a value-priced alternative to ZYRTEC. The Board found the evidence to be inconclusive, and so it considered this 13th du Pont factor to be neutral.

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

Read comments and post your comments here.

TTABlog comment: Well, what do you think? What's with this idea of confusion as to the ingredients? Just because two drugs may contain the same ingredient, would a consumer think they came from the same source? Let's hope that some of our friend-of-the-blog survey experts weigh in on this.

Text Copyright John L. Welch 2013.

U.S. Census Bureau "Frequently Occurring Surnames" from Census 2010

The U.S. Bureau of the Census has released its list of "Frequently Occurring Surnames from Census 2010." (link here). Census data is, of course, often cited in connection with Section 2(e)(4) surname refusals.

TTAB Deems "ANGEL" a Weak Formative in Computer Field, Reverses 2(d) Refusal

The existence of 14 third-party registered "Angel" marks in the computer field, coupled with the differences between the applied-for mark (immediately below) and the cited mark (second below), both for goods/services in the computer field, led the Board to reverse a Section 2(d) refusal.  In re Angel Computer Network Services, Inc., Serial No. 77438719 (January 25, 2013) [not precedential].

Applicant urged the Board to narrow the scope of the cited registration to on-line services by pointing to the narrow scope of the identified goods, namely, online help desk software. But the Board agreed with the examining attorney that there is "no basis in statute or practice to conclude that goods or services in one class should limit the services recited in another class." Certain of the goods and services pertaining to the use and maintenance of computer systems were "inherently related." Third-party registrations and website evidence supported the finding that the goods and services are "closely related." Consequently, it is presumed that they travel through the same, normal channels of trade to the same classes of consumers.

Turning to the strength of the cited mark, applicant submitted fourteen third-party registrations (in addition to the cited registration) in the field of information technology (IT), for marks that feature prominently the term “Angel." The Board agreed with applicant that "Angel," in the context of IT, is "suggestive of a rather routine commercial idea of being supportive ('be an angel and help me do this')." The Board found that "the term 'Angel' is fairly dilute in the IT field such that the relevant
purchasers are able to distinguish among those Angel-formative marks based upon small distinctions in the marks." Consequently, the cited mark is entitled to a narrower scope of protection.

Considering the marks at issue, the Examining Attorney argued that the word ANGEL dominates each mark, but applicant asserted that there is no per se rule that words dominate in word-plus-design marks. The Board agreed with applicant that there is no such general rule, concluding that registrant’s wings design "is a dominant portion of its composite mark." Applicant’s large letter “A” surrounded by a halo having a sunburst at its center is a prominent portion of applicant’s mark that further distinguishes the marks.

In the case at bar, registrant’s mark features a large, heavy wings design, followed by the much smaller designation, “angelpc.” Undoubtedly, the tagline “Permanent Online PC Support” has minimal source-distinguishing capabilities. In terms of appearance, it is the design element, rather than the words, that dominates registrant’s mark. The wings design is much larger than the term “angelpc,” and it is by far the most visually significant part of the mark. Accordingly, we disagree with the Trademark Examining Attorney that the word “Angel,” drawn from the larger designation angelpc, is the dominant part of registrant's mark, or even that the angelpc designation is entitled to more weight than the wings design portion of registrant’s mark.

Although the literal portions of the marks include the common identifiable and pronounceable word "Angel," that is not sufficient to support a finding that the marks are similar. The Board concluded that when the marks are compared in their entireties, they have sufficiently different commercial impressions to avoid a likelihood of confusion.

Read comments and post your comments here.

Text Copyright John L. Welch 2013.

TTAB Affirms 2(a) Disparagement Refusal of STOP THE ISLAMISATION OF AMERICA

The Board affirmed a Section 2(a) refusal to register the mark STOP THE ISLAMISATION OF AMERICA for "providing information regarding understanding and preventing terrorism," finding the mark to be disparaging to Muslims in the United States. Even if, as Applicants argued, "islamization" refers to a non-violent "political movement to replace man-made laws with the religious laws of Islam," the use of Applicants' mark in connection with services that provide information regarding "understanding and preventing terrorism" would be disparaging to a substantial composite of Muslims. In re Pamela Geller and Robert B. Spencer, Serial No. 77940879 (February 7, 2013) [not precedential].


The test for disparagement of a non-commercial group, such as a religious or racial group, is as follows:

1. What is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods and services; and

2.  if that meaning is found to refer to identifiable persons, institutions, beliefs, or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group.

Meaning of the mark: Based on dictionary definitions provided by Examining Attorney Maria-Victoria Suarez, considered in the context of Applicants' services, the Board found that the subject mark connotes that "conversion or conformance to Islam must be stopped in order to prevent the intimidating threats and violence associated with terrorism." Articles posted at Applicants' website urged that the "spread of Islam in America is undesirable and must be stopped." Comments to Applicants' blog "reflect the website's message of stopping the spread of Islam in the United States." All of this evidence supported the meaning of the mark proposed by the Examining Attorney: "to stop the conversion or conformance to Islam in America in order to avoid terrorism."

Applicants contended that Muslims understand "Islamisation" to mean "the term of art to incorporate the political-legal movement to convert a society or politic into a political society predicated upon and governed by Islamic law (i.e., Shariah)." In support, Applicants pointed to use of the term by professionals, academics, and religious and legal experts.

The Board, however, agreed with the Examining Attorney that the definitions from several online dictionaries are more reflective of the public's current understanding of the term "Islamisation." It concluded that one meaning of the mark is the one proposed by the Examining Attorney, but the mark has a second meaning, as espoused by Applicants, to the narrower group that Applicants cited.

The Board noted that when a term has two meanings, both meanings advance to the "second phase" of the analysis: does the relevant group consider the term, as used in the context of the services, to be disparaging?

Disparaging or not? Applicants argued that if the word "Islamisation" refers only to those groups and movements that seek to compel a change of the political order to adopt Islamic law as the law of the land, then "law abiding and patriotic Muslims, who are not members of such groups, would not be disparaged by the mark." The Board found two problems with that argument: it assumes that a substantial composite of Muslims embraces the meaning of "Islamisation" that Applicant espouses, and that they would not be offended by Applicants' mark.

However, there was no evidence that a substantial composite of Muslims understand "Islamisation" to have the meaning that Applicants' assert. The narrow evidence submitted by Applicants did not show how the term is perceived by the general Muslim population of the United States.

The Board observed that, even if a substantial composite of Muslims embraced the more specific meaning offered by Applicants, the mark is disparaging "because the term 'Islamisation' has another more general meaning relating to conversion to Islam." If the general, non-Muslim population understands the term to refer to converting or conforming to Islam, and adopts the more likely meaning of "stopping the spread of Islam in America," a substantial composite of Muslims (regardless of their understanding of the meaning of the term) would be disparaged by the mark.

The admonition in the mark to STOP sets a negative tone and signals that Islamization is undesirable and is something that must be brought to an end in America. In light of the meaning of “Islamization” as referring to conversion to Islam, i.e., spreading of Islam, use of the mark in connection with preventing terrorism creates a direct association of Islam and its followers with terrorism.

In sum, the Board found "sufficient evidence that the majority of Muslims are not terrorists and are offended by being associated as such." Consequently, the use of applicants’ mark in connection with the recited services would be disparaging to a substantial composite of Muslims in America.

The Board also found the mark disparaging under applicants’ definition of “Islamisation” as a political movement to replace man-made law with the religious laws of Islam. A "further flaw" in applicants’ argument is that it ignores the nature of the services identified in the subject application.

In view of the foregoing, we find that under either meaning of applicants’ mark, when the mark is used in connection with the services identified in the application, namely providing information for understanding and preventing terrorism, the mark is disparaging to Muslims in the United States and is therefore not registrable.

Freedom of speech: Finally, applicants argued that the refusal to register violated their First Amendment right to freedom of speech. The Board, however, observed that its decision affects only the right to register the subject mark and does not impede their right to use the mark. "[I]t imposes no restraint or limit on their ability to communicate ideas or express points of view, and does not suppress any tangible form of expression."

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TTABlog comment: What about a mere descriptiveness refusal?

Text Copyright John L. Welch 2013.

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

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



In re Lydia Anne Juge, Serial No. 76704219 (February 6, 2013) [not precedential]. [Refusal of ANTIQUES OF PARIS, in standard character form, for "retail store services featuring international antiques" [ANTIQUES disclaimed].

In re Isaac Daniel Group, Inc., Serial No. 77885250 (February 5, 2013) [not precedential]. [Mere descriptiveness refusal of COVERT ALARM LOCATOR APPARATUS for "shoes, footwear, t-shirts, sports shirts, sports jerseys, sports jackets, sports pants, track pants, sports fleece pullover"].

In re Flight Travel, Inc., Serial No. 85149936 (January 25, 2013) [not precedential]. [Refusal of JITS for goods and services in five classes, including "magazines featuring lifestyle and culture content related to martial arts and general sports," sports bags, sports bottles, and martial arts uniforms, and operations of martial arts gyms].

TTABlog hint: They all came out the same way.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

WYHA? TTAB Affirms 2(d) Refusal of BRIX CELLARS over BRIX for Restaurant Services

This applicant sought to register the marks BRIX CELLARS, in standard character form, and BRIX WINE CELLARS, in standard character and design forms, for "bar and restaurant services; restaurant; restaurant and bar services; wine bars" [sic!]. The terms CELLARS and WINE CELLARS were disclaimed. Examining Attorney Jeffrey C. Coward refused registration under Section 2(d), deeming the marks confusingly similar to the registered marks BRIX for "restaurant and bar servies" and BRIXX for "restaurant services." The Board affirmed. Would You Have Appealed from the PTO refusal? In re Brix Cellars LLC dba Brix Wine Cellars, Serial Nos. 85111647, 85111682 and 85112408 (January 25, 2013) [not precedential].

The Board found the services involved to be legally identical. Applicant argued that its wine bar is "somewhat dark and sophisticated and has a relatively enclosed atmosphere," whereas registrant's establishment has "a relatively light and airy atmosphere overlooking outdoor vistas." That, of course, was irrelevant, since there are no such limitations in the subject applications and registrations.

Applicant next argued that the restaurants of applicant and registrant are in locations distant from each other, respectively. Again, irrelevant, since applicant sought nationwide registrations and since the cited registrations are nationwide in scope.

Because the services are legally identical, they are presumably rendered in the same channels of trade to the same classes of customers.

Applicant contended that the conditions of sale outweigh all other factors, and there is no likelihood of confusion because the potential customers are quite careful and sophisticated. The Board, however, noted that the recitations of services do not exclude less sophisticated customers who will exercise only ordinary care.

Because restaurant and bar services can run the gamut in terms of cost and clientele, we cannot accept applicant's position that only sophisticated individuals will be the patrons of either applicant's or registrant's establishments.

Moreover, even discriminating consumers may be confused by very similar marks used for identical services.

As to the marks, the registered marks BRIX and BRIXX are arbitrary for restaurant and bar services, and are strong marks, "both conceptually and commercially." [What was the evidence showing that registrant's marks are strong commercially? - ed.]

The Board agreed with the Examining Attorney that, despite the addition of the non-distinctive and disclaimed terms CELLARS and WINE CELLARS, applicant's marks still engender the same overall commercial impressions as the cited marks. The word BRIX "retains its identity as a separately identifiable term in all of applicant's marks, and, indeed, as the sole term with any real source-identifying significance."

Finally, applicant maintained that there has not been any actual confusion between the marks during three years of contemporaneous use. Of course, the Board observed, actual confusion is not required to proved likelihood of confusion. Moreover, the assertion of a lack of actual confusion in an ex parte context carries little weight, since the registrant does not have the opportunity to be heard on the issue.

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

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

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

Lithionics, LLC sought to register the design shown below left for "batteries, electrical cells and batteries" [sic!], but Braille Battery opposed on the ground of likelihood of confusion with its registered mark shown below right, for "batteries and battery chargers." The Board noted that "Li" is the symbol for the chemical element "lithium," which has an atomic number of "3," and that lithium is especially used in storage batteries. How do you think this came out? Braille Battery, Inc. v. Lithionics, LLC, Opposition No. 91198482 (January 8, 2013) [not precedential].

Evidentiary issues: The Board began by dealing with a battery of evidentiary issues. Opposer Braille cured the procedural defects in its Notice of Reliance by amending the notice to indicate the relevance of certain documents. Its submission of a recently-issued registration was proper because the registration issued before Braille's testimony period closed, from an application that was identified in the notice of opposition. Finally, Braille's Florida state registrations were admissible, for whatever they might be worth [little or nothing - ed.].

Likelihood of confusion: The goods of the parties partly overlap, and those overlapping goods presumably travel to the same consumers through the same channels of trade. Moreover, when the goods are identical, a lesser degree of similarity between the marks is needed to support a finding of likely confusion.

The Board took judicial notice that "Li" is the symbol for the chemical element "lithium," whose atomic number is "3." Moreover, "Lithium, the lightest metal known, ... is used especially in alloys and glass, and in ... storage batteries." Consequently, its atomic number and chemical symbol (Li3) are descriptive of batteries. In view of that descriptiveness, the Board gave greater weight to the arbitrary elements of Lithionics's mark when comparing it to Braille's mark.

 As to Braille's mark, there was no evidence that the representations of a round battery cell and a positive terminal are descriptive of batteries. The Board also took into consideration the letter "b" and the arrow design, but again there was no evidence that those elements have any meaning.

The Board concluded that the marks are similar in appearance. citing several prior Board decisions finding confusing likely between the following pairs of marks.

Resolving any doubts in favor of the prior registrant, the Board sustained the opposition.

Read comments and post your comments here.

TTABlog comment: Note that Braille's registration issued on an application filed after the opposed application was filed. Yet once the registration issued, Braille was accorded priority. Does this make sense? Should Braille be required to prove actual use prior to applicant's filing date? Once the registration issued, should Applicant have been given the opportunity to petition to cancel the registration via a counterclaim?

Text Copyright John L. Welch 2013.

TTAB Finds "ITICKETS" Generic for .... Guess What?

Agreeing with Examining Attorney Andrea Koyner Nadelman, the TTAB affirmed a refusal to register, on the ground of genericness, the term ITICKETS for "Arranging for ticket reservations for shows and other entertainment events; Entertainment ticket agency services; On-line admission ticket agency services for entertainment, educational, sporting and cultural events; On-line entertainment ticket agency services; Providing an Internet website portal featuring links to musical artist websites and music performance ticket information; Ticket agency services for entertainment events; Ticket reservation and booking services for entertainment, sporting and cultural events." Quoting In re Gould Paper, the Board found that the terms I and TICKET "remain as generic in the compound as individually, and the compound thus created is itself generic." In re Christian Happenings Acquisition Corp., Ltd., Serial No. 77926930 (January 25, 2013) [not precedential].

The Board deemed the genus to be defined by the services identified in the application, and further found "online ticket agency services and Internet ticket information services" to be the subset of  the genus most relevant the question at hand.

The PTO met its evidentiary burden by providing clear evidence that Internet tickets and Internet ticket services are commonplace. The record showed that the terms "online" and "Internet" are interchangable, that "I" is a generic abbreviation for "Internet," and that the public is routinely exposed to the phrase "Internet ticket" in connection with ticket agency and information services.

We find that the prefix “I” and the word “ticket” retain these common meanings when telescoped into the compound word “ITICKET,” and that the public would readily understand ITICKET to refer to ticket services offered on the Internet. "In this instance, the terms remain as generic in the compound as individually, and the compound thus created is itself generic." In re Gould Paper, 5 USPQ2d at 1112. 

The Board concluded that consumers would readily understand ITICKETS to identify ticket agency and information services provided over the Internet.

Applicant Christian Happenings pointed out that ITICKETS does not appear in dictionaries, and contended that the term has "its own exclusive meaning and serves as a source identifier for Applicant’s unique goods and services." The Board disagreed: applicant failed to show how "the common constituent terms are transformed to gain a new meaning in the term ITICKETS when used in association with the applied-for Internet ticket services."

Our primary reviewing court has emphasized that the test of genericness is not only whether the public would itself use this term to name this genus of services, "but also whether the relevant public would understand the term to be generic."

Applicant also maintained that ITICKETS is not generic because the term is used for other services in addition to Internet services: e.g., ticket sales by telephone and other outlets. However, the Board observed, it is well-settled that registration must be refused if the applied-for term is generic for any of the services in the application to register.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

TTAB Posts February 2013 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled six (6) oral hearings for the month of February, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]. Briefs and other papers for these cases may be found at TTABVUE via the links provided.

February 12, 2013 - 2 PM: Randall A. Terry v. Troy Newman, Cancellation No. 92047809 [Petition for cancellation of a registration for OPERATION RESCUE for "Educational services, namely, providing classes, workshops, seminars and personal instruction in the field of pro-life issues and social activism," on the ground that the mark falsely suggests an association with Petitioner Terry, under Section 2(a)].

February 19, 2013 - 10 AM: Glen Raven, Inc. v. Amerinova Properties, LLC, Opposition No. 91192496 [Opposition to registration of SUN BRELLA'S for living plants, on the grounds of likelihood of confusion and likelihood of dilution of the registered mark SUNBRELLA for fabrics].

February 21, 2013 - 10 AM:: Renter Magnet Acquisition, LLC v. American Moving and Storage Association, LLC, Opposition No. 91193584 [Section 2(d) opposition to registration of the logo shown immediately below as a certification mark for moving and relocation services, in view of the registered mark PROMOVE THE APARTMENT SOURCE for locating rental properties for others].

February 26, 2013 - 11 AM: C. & J. Clark International, Limited v. Unity Clothing, Inc., Cancellation No. 92049418 [Petition to cancel a registration of the mark UN & Design for various clothing items (not footwear), in view of the registered mark in view of the registered mark UNSTRUCTURED & Design for "footwear, namely, shoes, boots and sandals"].

February 26, 2013 - 2 PM: In re Omega Alpha Pharmaceuticals, Inc., Serial Nos. 77486441 and 77486429 [Section 2(a) refusal to register OMEGA ALPHA (in standard character and design form) or various dietary, nutritional, and herbal supplements on the ground that the term "Omega" is deceptive when "the supplements do not encompass omega fatty acids"].

February 28, 2013 - 11 AM: Jeanjer, LLC and MG Overseas Limited v. S.W.A.K., Inc., Opposition No. 91161203 [Section 2(d opposition to registration of GASCO THE GREAT AMERICAN SWEATER CO. for sweaters, in view of Opposer's alleged prior use of the marks GAS and GASOLINE for sweaters].

Read comments and post your comments here.

Text Copyright John L. Welch 2013.

TTABlogger Named to 2013 "World Trademark Review 1000"

It's true! It's happened again! Yours truly has been included in the 2013 edition of the World Trademark Review 1000. (link here).

Test Your TTAB Judge-Ability: Does the Stylization of this Mark Render it Inherently Distinctive?

Applicant HCA International applied to register the mark shown immediately below for various goods and services in International Classes 16, 36, 42, and 44. The wording in the mark was disclaimed. The Examining Attorney refused registration on the ground of mere descriptiveness under Section 2(e)(1), but HCA argued that the stylization or design of its mark made it inherently distinctive. The Board issued a four-page opinion. How do you think it came out? In re HCA International Limited, Serial No. 85103030 (January 17, 2013) [not precedential].

HCA, of course, contended that its mark creates a distinctive commercial impression. The PTO maintained that the mark appears in ordinary font, and that the "impact of the stylization of the lettering is lost in the descriptive significance of the wording."

The Board found this cast to be analogous to In re Jackson Hole Ski Corp. 190 USPQ 714 (TTAB 1977). There, the PTO refused registration of the mark shown below [JACKSON HOLE disclaimed], on the ground that the mark was primarily geographically descriptive.


The Board reversed the refusal because the letters "JH" were "displayed in a distinctive and prominent fashion so as to create a commercial impression in and of themselves ...."

Similarly, here the letters L, O, and C, arranged vertically and in bold type, are "prominent and striking, to such a degree that they create a separate and inherently distinctive commercial impression consisting of the acronym 'LOC.'"

The PTO did not submit any evidence that LOC is a commonly recognized descriptive acronym. So the Board ruled that the mark as a whole is inherently distinctive, and it reversed the refusal.

Read comments and post  your comment here.

TTABlog comment: I dissent. Rather than the ordinary font of the applied-for mark, the JACKSON HOLE mark has a distinctive font. The font looks kind of old-westy. The "C" resembles a horseshoe and the "S' looks like a rattlesnake. I give a thumbs up to JACKSON HOLE, but thumbs down to the subject mark.

Text Copyright John L. Welch 2013.