Friday, March 29, 2013

TTABlog Quarterly Index: January - March 2013

E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. You may also follow the blog on Twitter (here). And don't forget to leave your comments! Finally, please report any broken or inoperative links, as well as any errors and omissions, to the TTABlogger at jwelch at lalaw.com.

Trinity Church, Copley Square, Boston

Section 2(a) - Deceptiveness:
Section 2(a) - Disparagement:
Section 2(d) - Likelihood of Confusion:
Section 2(e)(1) - Mere Descriptiveness:

Massachusetts State House


Section 2(e)(2)- Primarily Geographically Descriptive:
Section 2(e)(3) - Primarily Geographically Deceptively Misdescriptive:
Section 2(e)(4) - Primarily Merely a Surname:
Section 2(e)(5) - Functionality:
Dilution:
Failure to Function:
Genericness:
Goods in Trade:
Ownership:
Use in Commerce/Specimen of Use/Drawing:

Rock Harbor, Orleans, MA

Discovery/Evidence/Procedure:
Recommended Reading:
Other:
Text and Photos Copyright John L. Welch 2013.

posted by John L. Welch @ 3/29/2013   0 comments

Thursday, March 28, 2013

Your Thoughts Regarding H.R. 1278 - the "Non-Disparagement of Native American Persons or Peoples in Trademark Registration Act of 2013"?

The text of H.R. 1278, entitled "Non-Disparagement of Native American Persons or Peoples in Trademark Registration Act of 2013," may be found here. The Bill was introduced on March 20th by U.S. Congressman Eni F.H. Faleomavaega of the Territory of American Samoa. The law would require cancellation of existing trademark registrations for trademarks using the term "redskin" in reference to Native Americans. It would also deny registration for new trademarks so using the term "redskin." More details may be found here. Your thoughts?


 Read comments and post your comment here.

posted by John L. Welch @ 3/28/2013   10 comments

Test Your TTAB Judge-Ability On These Five Mere Descriptiveness Refusals

By my estimate, somewhere around 80-85% of all Section 2(e)(1) mere descriptiveness refusals that reach the TTAB are affirmed on appeal. Well, here are five appeals that were decided in late February. How do you think they came out? Do you see any "WYHA?"s here?



In re Dharmacon, Inc., Serial No. 85041732 (February 22, 2013) [not precedential]. [SHMIMIC for "Research support reagents, namely, reagents for use in scientific, genetic and medical research; reagents containing nucleic acids exhibiting microRNA activity when transfected into mammalian cells in tissue culture for laboratory use"].



In re Mark Holdings, LLC, Serial No. 85163500 (February 25, 2013) [not precedential]. [LENDING STORE for "providing business marketing services for the financial products industry"].

In re Western Industries, Inc., Serial No. 85076800 (February 25, 2013) [not precedential]. [PREMIUM. RELIABLE. PERFORMANCE. for "Cooking ovens; Cooking ranges; Electric cooktops; Electric food warmers; Electric stoves; Electric towel warmers; Extractor hoods for kitchens; Gas stoves; Plate warmers"].


In re MVP Group International, Inc., Serial No. 85078518 (February 25, 2013) [not precedential]. [ECO WICK in standard character form for "candles; scented candles"].


In re Mdintellesys, LLC, Serial No. 85136211 (February 28, 2013) [not precedential]. [ADAPTIVE TEMPLATE TECHNOLOGY in standard character form for goods identified as "Electronic medical records software for database management, namely, the creation, management, and access to medical records and charts"].


Read comments and post your comments here.

TTABlog hint: They all came out the same way.

Text Copyright John L. Welch 2013.

posted by John L. Welch @ 3/28/2013   0 comments

Wednesday, March 27, 2013

CHAMPARTY Not Confusable With CHAMPAGNE for Sparkling Wine, Says TTAB

Bursting opposers' bubble, the Board dismissed this Section 2(d) opposition to registration of the mark CHAMPARTY for "alcoholic beverages except beers," finding the mark not likely to cause confusion with the common law certification mark CHAMPAGNE for sparkling wine. The Board concluded that, although the goods overlap, the marks are simply too different. Comité Interprofessionel du Vin de Champagne and Institut National de l’Origine et de la Qualité v. Shlomo David Jehonadav, Opposition No. 91195709 (March 8, 2013) [not precedential].


Opposers CIVC and INAO contended that the designation CHAMPAGNE is protectable as a common law certification mark under U.S. law, and that under French law they are charged with the control, promotion, and protection of that mark. The Board therefore found that opposers had standing to pursue this opposition.

Applicant made only minimal efforts to defend himself. The Board found the involved goods to be legally identical because it presumed that applicant's goods, as identified, include sparkling wines identical to those certified by opposers. It therefore also presumed that the goods travel in the same channels of trade to the same classes of consumers.

As to the marks, however, the Board found it unlikely that "customers of average perceptual abilities would mistake one mark for the other or find the marks to be significantly similar" even if used for identical goods. The English word "party" is a salient feature of the applied-for mark. That portion of the mark is "likely to counteract the visual similarities between the two marks in the perception of consumers."

Moreover, the marks are not likely to give rise to phonetic confusion. Although there is no correct pronunciation of a coined mark like CHAMPARTY, consumers will likely give the latter portion of the mark the pronunciation of the common word "party." CHAMPAGNE is usually pronounced so that the latter portion rhymes with "pane," which has a sound not likely to be confused with "party." If the French pronunciation is given to CHAMPAGNE, it would have a sound nearly unique in the U.S. market. And if consumers see the common word "champ" in the applied-for mark, they would pronounce it quite differently that the first syllable of CHAMPAGNE.

As to meaning, CHAMPAGNE is a term well known as a type of sparkling wine. CHAMPARTY has no literal meaning. Opposer's suggested that CHAMPAGNE is often associated with celebrations and thus PARTY might suggest a connection with CHAMPAGNE, but the Board was unimpressed. There was no evidence that CHAMPAGNE is more closely connected with celebrations that any other alcoholic beverage.

The Board saw no support for opposers' argument that consumers would see CHAMPARTY as a sort of "brand extension" of the CHAMPAGNE mark, nor did it find any other reason why consumers might perceive a relationship or connection between the marks of the parties.

The Board concluded that applicant's mark "differs substantially from opposers' asserted certification mark, so as not to be likely to cause confusion, mistake or deception as to the source of applicant's goods."

Read comments and post your comments here.

TTABlog note: To me, CHAMPARTY suggests that applicant is selling some party drink that includes CHAMPAGNE. Maybe a punch or something. What do you think? But is that confusion as to source?

I also think that if someone is selling a sparkling wine called CHAMPARTY, the consumer would likely pronounce the CHAM part like CHAMPAGNE. Besides, there is no correct pronunciation of a trademark, is there?

Text Copyright John L. Welch 2013.

posted by John L. Welch @ 3/27/2013   3 comments

Tuesday, March 26, 2013

Test Your TTAB Judge-Ability: Has This Pizza Slice Mark Been Mutilated?

Hot Stuff Foods, LLC applied to register the mark shown first below, for food products and services, based on an intent-to-use. When it submitted its statement of use, it also submitted an amended drawing, shown second below. The PTO refused registration on the ground that the mark shown on the amended drawing constitutes a material alteration of the mark shown in the original drawing, in violation of Rule 2.72(a)(2). What do you think? In re Hot Stuff Foods, LLC, Serial No. 77392514 (March 8, 2013) [not precedential]

Original drawing

Amended drawing

The Examining Attorney contended that the original drawing shows a "much more stylized" version of a pizza slice. Several lines and circular designs have been deleted, and there is no shading in the original. She urged that the amended version depicts "a pretty thick crusted pizza whereas the original drawing shows a thinner crusted pizza with various toppings on it."

Trademark Rule 2.72(a)(2) provides that an applicant may amend the drawing of its mark if the proposed amendment "does not materially alter the mark." The general test is whether the change would require the mark to be republished "in order to fairly present the mark for purposes of oppostion." If the amended mark is sufficiently different to require re-publication, then the amendment is unacceptable.

The Board found that the amended drawing here is not a material alteration of the original.

The two marks create the same commercial impression: the words HOT STUFF PIZZA superimposed on a pizza slice. Although the slices of pizza in the original and amended drawings have specific differences, it must be remembered that the mark is not solely the design portion. The words HOT STUFF PIZZA are clearly the dominant part of the mark, and the nature of the mark is not changed by the proposed amendment. The modified mark contains the essence of the original mark, and the new form of the mark creates the impression of being essentially the same mark as the mark in the original drawing.

Ans so the Board reversed the refusal.

Click on photo for larger picture

Read comments and post your comment here.

TTABlog note: Well, how did you do?

Text Copyright 2012, Photograph Copyright 2006, John L. Welch.

posted by John L. Welch @ 3/26/2013   9 comments

Monday, March 25, 2013

TTAB Takes On Family Feud over MARYLAND FRIED CHICKEN Ownership

For complicated ownership issues, this blogger turns to IP ownership guru Pamela Chestek. She reports here at her Property, intangible blog on the most complicated ownership case she has ever seen: C.F.M. Distributing Company, Inc. v. Theresa Costantine, as Personal Representative of the Estate of Richard Costantine, Opposition No. 91185766 et al. (March 20, 2013) [not precedential]. The dispute took the form of a pair of Section 2(d) oppositions to registration of the two marks shown immediately below, for restaurant services.


Judge David Bucher, writing for the Board, painstakingly set out the complicated history of the MARYLAND FRIED CHICKEN marks. He found helpful Ms. Chestek's article, "Who Owns the Mark? A Single Framework for Resolving Trademark Disputes," in the May-June 2006 Trademark Reporter (pdf here). Ms. Chestek, in her blog post, discusses the Board's analysis of the ownership issue, which is based on the approach suggested in her article.

I will not attempt to lay out the entire factual background, but instead borrow Judge Bucher's summary of the situation:

We are faced herein with an extended family spat that has been building for decades over the ownership of asserted source-indicators for restaurants selling pressure-fried chicken. These disputes have survived the passing of three brothers from what has been popularly referred to as "the greatest generation," including significantly for this proceeding, Richard Costantine’s death in 2008. The disagreements all arise from a string of restaurant s begun in the 1960s in the Orlando, Florida area trading under the name, “Maryland Fried Chicken.” While all the parties to this litigation seem to agree that in the context of fast food restaurants, this three-word term, “Maryland Fried Chicken,” retains substantially no source-indicating capacity, that has not stopped constant disagreements over a range of cartoon-like fowl images alone and within a variety of composite Maryland Fried Chicken service marks and trademarks, apparently used in Central Florida by both related and unrelated parties since the 1960s.

Observing that "the traditional concepts of priority and likelihood of confusion are of little help in resolving these disputes," the Board sustained the opposition, finding that the applicant was not the owner of the marks at the time the applications were filed, and consequently, the two involved applications were void ab initio.

[G]iven the state of play, the status quo is preferable to the scenario where a single player, like applicant, is given the imprimatur of a federal registration and the appearance of exclusivity, when in reality – to quote Gertrude Stein’s famous observations about Oakland – “There is no there there.”

And so the Board sustained the oppositions.

Read comments and post your comment here.

TTABlog postscript: This decision was affirmed per curiam by the CAFC on February 10. 2014.

Text Copyright John L. Welch 2013.

posted by John L. Welch @ 3/25/2013   4 comments

Friday, March 22, 2013

Mark Your Calendar: MEET THE BLOGGERS IX

The ninth annual edition of "Meet the Bloggers" will be held on Monday night, May 6th, from 8-11 pm at the Press Box Grill, 1623 Main Street, Dallas (corner of Elm and Ervay). RSVP here.


Hosted by Marty Schwimmer (The Trademark Blog), Ron Coleman (Likelihood of Confusion Blog), Erik Pelton (ipelton blog), Carl Oppedahl (oppedahl.com), and Yours Truly (TTABlog). Photos from Meet the Bloggers I-VIII here.

posted by John L. Welch @ 3/22/2013   0 comments

Congressman Faleomavaega Introduces Bill To Cancel REDSKINS Registrations

On March 20th, U.S. Congressman Eni F.H. Faleomavaega of the Territory of American Samoa introduced H.R. 1278, entitled the "Non-Disparagement of Native American Persons or Peoples in Trademark Registration Act of 2013. [Press Release here]. H.R. 1278 would cancel existing trademark registrations for trademarks using the term "redskin." It would also deny registration for new trademarks using the term "redskin."


According to a briefing paper distributed to legislators, there are currently six trademark registrations and five pending trademark applications that would be affected by the bill. [Read more here]

Read comments and post your comment here.

posted by John L. Welch @ 3/22/2013   10 comments

Thursday, March 21, 2013

Precedential No. 9: TTAB Affirms 2(a) Deceptiveness Refusal of WHITE JASMINE for Tea

The Board affirmed a Section 2(a) refusal of the mark WHITE JASMINE & Design, finding the word "White" to be deceptive for applicant's tea. For the sake of completeness, the Board also considered and affirmed the PTO's alternative refusal based on its requirement that "White Jasmine" be disclaimed, after reviewing applicant's evidence of acquired distinctive and finding it insufficient. In re White Jasmine LLC, 106 USPQ2d 1385 (TTAB 2013) [precedential].


Deceptiveness: Examining Attorney Christine C. Martin put applicant in hot water by submitting a considerable batch of Internet evidence establishing that "white jasmine" is a type of tea, including evidence of use of that term by competitors of applicant. She maintained that the word "white" in applicant's mark is deceptive because its tea does not contain white tea: white tea is believed to have health benefits and its presence is a material factor in the consumer's purchasing decision.

The Board noted that a mark may be found deceptive based on a single term embedded in a larger mark. Deceptiveness under Section 2(a) is an absolute bar to registration. The test for determining whether a mark is deceptive under Section 2(a) is as follows: (1) is the term misdescriptive of the character, quality, function, composition or use of the goods? (2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods? (3) If so, is the misdescription likely to affect the purchasing decisions of a significant portion of the relevant consumers?

As to the first question, white jasmine tea is a subcategory of two types of tea: white tea and jasmine tea. The word "white" immediately describes a significant ingredient of tea because it indicates that the tea is white tea, or at least contains white tea. Applicant admitted that its tea does not contain white tea leaves. Consequently, the term WHITE JASMINE misdescribes applicant's tea.

As to the second question, the Board found it quite likely that consumers would believe that applicant's tea contains white tea.

As to the third, the Examining Attorney's evidence showed that consumers perceived that white tea has desirable health benefits. Therefore, the misdescription is material to the purchasing decision.

Strike, three! Yerrrrr out!

Disclaimer requirement: Although a disclaimer cannot render a deceptive mark registrable, the Board considered and affirmed the PTO's disclaimer requirement in the alternative. The Board agreed with the Examining Attorney that the term WHITE JASMINE is deceptively misdescriptive under Section 2(e)(1). A term is deceptively misdescriptive under that section if it (1) misdescribes the goods, and (2) a consumer is likely to believe the misrepresentation. [Note: if the misrepresentation is material to the purchasing decision, then the term would be deceptive under Section 2(a)].

The Board found clear evidence that consumers would believe that applicant's tea is a particular type of white tea (white tea scented or flavored with jasmine). Since it is not, WHITE JASMINE is deceptively misdescriptive, and must be disclaimed.

Acquired distinctiveness: Deceptively misdescriptive marks, unlike marks that are deceptive under Section 2(a), may be registrable with a showing of acquired distinctiveness under Section 2(f). The Board observed that, under the circumstances, applicant had a heavy burden of proof.

The Board found applicant's Section 2(f) evidence unconvincing. Use since 2003 is not by itself persuasive considering the nature of the matter sought to be registered and the widespread third-party use of the term "White Jasmine." Applicant's sales of about $75,000 over four years was "hardly persuasive." Moreover, there was no evidence placing those sales in context vis-a-vis competing products. Applicant's advertising and marketing efforts were modest, and they did not outweigh its minimal sales and the extensive third-party use.

And so the Board affirmed the Section 2(a) refusal, and in the alternative affirmed the refusal to register based upon applicant's failure to comply with the PTO's Section 6 disclaimer requirement.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

posted by John L. Welch @ 3/21/2013   3 comments

Wednesday, March 20, 2013

KATZ Fight! TTAB Finds LIkelihood of Confusion but Dismisses Fraud Claim

The Board sustained this Section 2(d) opposition to registration of the mark KATZ MARKETING SOLUTIONS & Design for "business marketing consulting services," finding it likely to cause confusion with the registered mark KATZ for "independent media sales representation services in the fields of radio and television broadcasting and consulting services in connection therewith." Opposer also claimed that applicant committed fraud on the PTO when its CEO signed the application oath swearing that no other entity had the right to use its mark in commerce, but the proofs fell "far short of meeting standard of proof for fraud." Katz Communications, Inc. v. Katz Marketing Solutions LLC, Opposition No. 91191178 (February 21, 2013) [not precedential].




The Board spent the first quarter of its opinion addressing numerous evidentiary issues. It pooh-poohed Opposer's objection to the way applicant numbered its exhibits, admonished Opposer for submitting hundreds of blank pages mark "redacted" when one page per exhibit would have sufficed, and criticized Opposer for "'dumping' evidence into the record with the idea that the Board will sort through the evidence and possibly find something that will support the submitting party’s position."

Likelihood of Confusion: Opposer claimed to own a "family" of KATZ marks, but the Board found its evidence inadequate. "Opposer has not pointed to any specific evidence in which several KATZ marks have been used or promoted together that would result in the recognition of a family." Noting that Opposer "could not take the trouble to identify particular advertisements or other promotional materials that it asserts shows it has established a family of marks," the Board declined to discuss in detail why the evidence was insufficient (although it did spend seven pages of the decision on this issue).

Opposer also failed to prove its purported common law rights in any KATZ marks, and so the Board focused on Opposer's closest registered mark: KATZ for "independent media sales representation services in the fields of radio and television broadcasting and consulting services in connection therewith,"

It found that applicant's services, as recited in its application, must be read to include advising companies about advertising on television and radio. "Accordingly, because applicant’s services are broadly described in its identification, and because this broad identification of services can include consulting on the purchase of television and radio advertising spots, the identified services must be deemed to overlap with the consulting services in connection with the radio and television representation identified in opposer’s registration."

The Board acknowledged that the consumers of opposer’s and applicant’s services "are both sophisticated and careful. They will clearly notice that applicant’s mark contains the additional words MARKETING SOLUTIONS. However, because, as stated above, these words provide additional information about the services, these discriminating purchasers are likely to view KATZ MARKETING SOLUTIONS as a variation of opposer's mark KATZ, when used in connection with services that overlap with opposer’s consulting services."

The Board was particularly concerned with what one might call "initial interest confusion," even thought that confusion would be dispelled by the time the final decision to hire applicant's services was made:

We are aware that during the process of a company’s decision to hire a company to place media advertising and obtain consulting services in connection therewith, or to hire a company for business marketing consulting, details about the company will be made known, so that a potential customer will know that Tammy Katz is the principal of applicant, and that she is not associated with opposer. However, the question is not whether, before the ultimate purchase is made, the customer knows what company he is dealing with, but whether the customer is likely to believe, when he contacts Katz Marketing Solutions, that the services offered under the KATZ MARKETING SOLUTIONS mark emanate from the same source as the services offered under the KATZ mark.

Applicant pointed to the lack of evidence of actual confusion, but the Board deemed that factor to be neutral. Although applicant's services as recited in its application overlap with opposer's, applicant does not actually engage in those overlapping activities. Therefore, there was actually no opportunity for confusion to occur.

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

We want to make clear, though, that we are not finding that KATZ is a strong mark, or that it is entitled to a broad scope of protection, even for related goods or services, or even against other marks consisting of the name KATZ and descriptive wording. Nor are we finding that applicant's mark is likely to cause confusion if it were used solely for the services in connection with which applicant actually uses its mark, as opposed to the services recited in its application.

Fraud:  The Board observed for the umpteenth time that fraud must be proven "to the hilt." [A bit of an anachronism, I think. - ed.] Opposer alleged that, because it had sent a cease-and-desist letter to applicant, applicant was on notice of opposer's superior rights before the opposed application was filed. "Surprisingly, though, opposer did not make a copy of the cease and desist letter of record." Applicant admitted receiving a letter, but there was no information about the contents of the letter. The Board therefore found that opposer failed to prove that applicant knew of opposer's rights in the KATZ or KATZ-formative marks, "let alone that opposer had rights superior to applicant's, or that applicant believed that its use of its mark would be likely to cause confusion."

Read comments and post your comment here.

TTABlog note: What do you think about the initial confusion issue? Should that be enough for a Section 2(d) finding of likely confusion?

Even if Opposer had made the cease-and-desist letter of record, would that have proven fraud? Didn't applicant have the right (in good faith) to reject Opposer's claim in light of the fact that its mark and actual usage were different from that of Opposer?

Text Copyright John L. Welch 2013.

posted by John L. Welch @ 3/20/2013   8 comments

Tuesday, March 19, 2013

TTABlog Collection of Section 2(e)(3) "Primarily Geographically Deceptively Misdescriptive" Cases

As a companion of sorts to the recent collection of Section 2(e)(2) cases, here is a collection of Section 2(e)(3) cases. Of course, most of the decisions are not precedential, but even non-precedential decisions may be helpful in framing effective arguments and locating precedential support for them.


There are four elements that must be met to invoke the bar of Section 2(e)(3): (1) The primary significance of the mark is a generally known geographic place; (2) The goods or services do not originate in the place identified in the mark; (3) Purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark; and (4) The misrepresentation would be a material factor in a substantial portion of the relevant consumer's decision to buy the goods or use the services. In re Spirits Int’l N.V., 563 F.3d 1347, 90 U.S.P.Q.2d 1489, 1490-95 (Fed. Cir. 2009); In re California Innovations, 329 F.3d 1334, 66 U.S.P.Q.2d 1853, 1858 (Fed. Cir. 2003).

Acquired distinctiveness may overcome a Section 2(e)(3) refusal, provided that the mark became distinctive prior to enactment of the NAFTA Implementation Act on December 8, 1993. See In re Boyd Gaming Corp., 57 U.S.P.Q.2d 1944, 1947 (T.T.A.B. 2000).

Marks found to be primarily geographically deceptively misdescriptive under Section 2(e)(3):

Marks found not to be primarily geographically deceptively misdescriptive under Section 2(e)(2):
.

posted by John L. Welch @ 3/19/2013   0 comments

Monday, March 18, 2013

"BUSHWACKER" TTAB Brouhaha Heads to Federal District Court

Sandshaker Lounge has filed a complaint [here] in the U.S. District Court for the Northern District of Florida, seeking Section 1071 review of the TTAB's decision in Sandshaker Lounge and Package Store, LLC v. Quietwater Entertainment, Inc., Cancellation No. 92051644 (January 31, 2013) [not precedential]. Sandshaker sought to cancel a registration for the mark BUSHWACKER for "entertainment services in the nature of a festival featuring live musical groups," on the ground of likelihood of confusion, claiming that it had previously used the identical mark for frozen drinks and for musical events, all of the parties' activities occurring in Pensacola Beach, Florida.


The Board found that Sandshaker did not have priority as to its own festival "since it is one and the same as the festival held by respondent at the same time in essentially the same location."

Moreover, Sandshaker acquiesced in the use of the term BUSHWACKER by Quietwater because the parties used the term concurrently from 1988 to 2009 without complaint by Sandshaker.

Text Copyright John L. Welch 2013.

posted by John L. Welch @ 3/18/2013   0 comments

Friday, March 15, 2013

Test Your TTAB Judge-Ability: Is "Property, intangible" Inherently Distinctive for an Intellectual Property Blog?

Pamela Chestek, expert blogger on intellectual properly ownership issues, applied to register the mark Property, intangible, in standard character form, for "on-line journals, namely, blogs featuring information on intellectual property law." The PTO refused registration under Section 2(e)(1), but accepted Ms. Chestek's Section 2(f) evidence of acquired distinctiveness. Ms. Chestek then appealed the Section 2(e)(1) refusal, contending that her mark is inherently distinctive. The Board panel rendered a split decision. How do you think it came out? In re Chestek, Serial No 85072195 (March 14, 2013) [not precedential].


Applicant Chestek argued that her mark is only suggestive, because it comprises an unnatural, incongruous combination. Examining Attorney Laura Kovalsky maintained that the reversal of word order and addition of a comma do not lessen the merely descriptive nature of the mark, pointing to the public's understanding of such formats as "item, type of" and "last name, first name."

The panel majority deemed it  undisputable that "intangible property" is a commonly-used and well understood term in law. The target audience for applicant's blog is intellectual property attorneys. These "knowledgeable customers" would readily understand that the transposed term "property, intangible" directly conveys information about the subject matter of the blog. "[M]erely reversing the word order of 'intangible property' to 'property, intangible' in an 'item, type of' format does not give the term the modicum of distinctiveness to make it inherently distinctive."

Judge David Bucher dissented, finding that the applied-for mark creates a distinct commercial impression. It is not analogous to the "last name, first name" telephone listings or the "item, type of" format. Nor is it analogous to the mere insertion of "surprising, punctuation," or cases involving a "reversed order word" or a "mispelled" term. [sic!]

Rather, with a reversal of the word order and the insertion of a comma, one experiences a sudden pause, a mental hiccup. Rolling this designation across one’s tongue creates a momentary aural awkwardness bordering on the poetic. Property, Intangible breaks apart a unitary term, and when reassembled in this new form, it creates an incongruity that requires a multi-stage reasoning process or imagination in order for readers of applicant’s blog to be able, perhaps, to ascribe any particular significance to the phrase when used in connection with applicant’s services.

Moreover, Judge Bucher saw a double entendre in the mark: "Readers of the Property, Intangible blog often struggle along with the author over complex intellectual property ownership disputes of a most elusive nature." [Emphasis in original] This alternative meaning necessitates "sufficient mental gymnastics" to mandate a conclusion that the mark is suggestive, not merely descriptive. The proffered declarations of other intellectual property attorneys indicate that readers of the blog see the mark as an inherently distinctive source indicator. That creates sufficient doubt to warrant a reversal.

Read comments and post your comment here.

TTABlog note: Sadly, I am reminded of the Board decision in In re Welch, wherein the Board rejected the contention that THE TTABLOG was inherently distinctive for a blog featuring commentary and information regarding our favorite tribunal. [TTABlogged here].

Text Copyright John L. Welch 2013.

posted by John L. Welch @ 3/15/2013   15 comments

Thursday, March 14, 2013

TTABlog Collection of Section 2(e)(2) "Primarily Geographically Descriptive" Cases

I've been writing a response to a Section 2(e)(2) refusal, and I thought it would be useful for me and others to compile a list of TTABlog postings on the issue. The great majority of the decisions are not precedential, but even non-precedential decisions may be helpful in framing effective arguments and locating precedential support for them.


For a mark to be deemed primarily geographically descriptive under Section 2(e)(2), it must be shown that (1) the mark's primary significance is a generally known geographic location; (2) the relevant public would be likely to make a goods/place association, that is, would be likely to believe that the goods originate in the place named in the mark; and (3) the goods do originate in that place. When the goods do come from the location named, then a goods/place association may be presumed.

Marks found to be primarily geographically descriptive under Section 2(e)(2):

Marks found not to be primarily geographically descriptive under Section 2(e)(2):

posted by John L. Welch @ 3/14/2013   0 comments

Wednesday, March 13, 2013

Test Your TTAB Judge-Ability: Is DIRK for Sunglasses Confusable With DIRK BIKKEMSBERG for Spectacles?

Orange 21 applied to register the mark DIRK for sunglasses, but the PTO refused registration under Section 2(d) in view of the registered mark DIRK BIKKEMSBERG for spectacles. Orange 21 appealed. Did its appeal bear fruit? What do you think? In re Orange 21 North America Inc., Serial No. 85281102 (February 14, 2013) [not precedential].


Examining Attorney Jennifer D. Richardson submitted a dictionary definition of "spectacles," copies of third-party registrations that included both "sunglasses" and "spectacles," and copies of Internet pages displaying sunglasses and eyeglasses under the same mark.

Dictionary evidence showed that the terms "spectacles" and "eyeglasses" are synonymous, and that the term "sunglasses" refers to both spectacles and eyeglasses that have been tinted. It was clear that "sunglasses are related to, and indeed, to some extent overlap with, spectacles in that both may be offered as prescription eyewear." The channels of trade overlap, and both sunglasses and spectacles are sold to the general public.Therefore this du Pont factor supported the refusal.

Of course, when marks appear on virtually identical goods, a lesser degree of similarity between the marks is necessary to support of finding a likelihood of confusion.

In the case at hand, both marks share the term DIRK, making them similar in appearance and pronunciation. Consumers will be inclined to focus on the term DIRK in both marks, as it is the first term in the cited mark and the only term in applicant’s mark. The general commercial impression of both marks, DIRK and DIRK BIKKEMBERGS, is that of a person’s name. It is highly likely that consumers will believe that both marks identify the same source and that the cited mark is merely the complete, full name of an individual whose first name is Dirk. The addition of the term BIKKEMBERGS in the cited mark may add to the likelihood of confusion, inasmuch as it would be perceived as a surname.

Applicant asserted that consumers are just as likely to think of "dirk" as having another meaning: "a dagger, especially of the Scottish Highlands." However, there was no evidence to support that contention, and nothing in the nature of the goods would suggest the meaning that applicant proposed.

The dictionary definition of “dirk” as a dagger carries no greater weight than that of the dictionary definition of “Dirk” as a boy’s first name. Accordingly, we find that purchasers are just as likely to perceive either, or both, meanings of the term when encountering applicant’s mark. Since one of the dictionary meanings is similar to the meaning of the name DIRK in the prior registration, the connotations of both marks are similar.

Applicant pointed to several third-party registrations in an attempt to show that the cited mark is weak. As to three of them (DIRK DAGGER, DIRK ZELLER, and DIRK PITT), applicant failed to provide any information regarding the goods or services. As to a fourth, DIRK DEJOINE for clothing, the Board found it readily distinguishable from the cited mark. "That this mark and the cited mark co-exist tells us nothing about whether applicant’s mark, which does not include a unique second element such as DEJOINE, is similar to the cited mark."

And so the Board affirmed the refusal.

Read comments and post your comment here.

Test Copyright John L. Welch 2013.

posted by John L. Welch @ 3/13/2013   4 comments

Tuesday, March 12, 2013

Another Surnamed Law Firm Bites the TTAB Dust

We just had a precedential surname decision involving the MILLER LAW GROUP [TTABlogged here], and now comes The Simmons Firm, seeking to register the mark shown below for "legal services" [FIRM and LAW CORPORATION disclaimed]. Another Simmons Firm opposed, claiming the applied-for mark to be primarily merely a surname, and lacking in secondary meaning. Same result: opposition sustained. Simmons Browder Gianaris Angelides and Barnerd, LLC v. The Simmons Firm, ALC, Opposition No. 91199120 (February 21, 2013) [not precedential].


The Board wasted little time in finding SIMMONS to be primarily merely a surname. Applicant conceded same, and the record evidence confirmed the concession. Simmons was the 103rd most common surname in the 2000 Census. It is the surname of applicant's founder. There was no evidence that Simmons has anything other than surname significance. and it has the "look and sound" of a surname.

Applicant's argument turned on the fifth Benthin factor: whether the stylization of the mark is sufficiently distinctive to cause the mark "not to be perceived primarily merely as a surname."

The Board, however, found the stylization to be minimal, and did not "result in a mark separate and apart from the literal elements." Moreover, applicant owns a Supplemental Registration for the same stylized mark. Since Section 23 prohibits registration of inherently distinctive marks on the Supplemental Register, this was an admission by applicant (at the time of registration) that the mark was not distinctive.

And so the Board concluded that the applied-for mark is primarily merely a surname under Section 2(e)(4).

Applicant claimed, alternatively, that the mark had acquired distinctiveness. The Board observed that applicant "bears a heavy burden" in establishing acquired distinctiveness for a surname in the field of legal services:

[L]awyers and law firms typically are identified by surnames. Thus, registration of a surname for legal services “could hinder the creation of new law firms . . . and the ability of individuals to practice law in their chosen field without changing their names” – a result that would not be in the public interest. J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 13:2 (4th ed. 2012).

Applicant's evidence under Section 2(f) was "minimal." In fact it was less that the unsuccessful evidence in the Miller case. For example, there was no evidence regarding gross revenues, marketing expenditures, advertisements, articles or publications by or about the firm or its attorneys, speaking events, newsletters, or any of the other stuff that law firms churn out.

Moreover, as in Miller, opposer and others have an interest in using, and do use, the surname Miller in connection with their legal services. There are four other law firms using the surname Simmons, and 60 attorneys in California and 20 in Illinois with that surname. In short, applicant failed to prove, as required by Section 2(f), that its use of SIMMONS has been substantially exclusive.

The Board concluded that the surname SIMMONS had not acquired distinctiveness for applicant's legal services.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

posted by John L. Welch @ 3/12/2013   1 comments

Monday, March 11, 2013

Test Your TTAB Judge-Ability on this Trademark Specimen of Use

Here we go again! Another specimen of use problem. Applicant Factory Direct applied to register the mark SLEEP BETTER, LIVE BETTER for "sleep products, namely, mattresses, spring mattresses, box springs and mattress foundations." It submitted the specimen shown below, in which applicant's slogan is displayed on a large, circular, illuminated sign hanging from the ceiling of its showroom. The USPTO rejected the specimen on the ground that the mark is not closely associated with the goods, as required by the Act and applicable rules. Factory Direct appealed. How would you rule? In re Factory Direct, Inc., Serial No. 77764096 (February 21, 2013) [not precedential].


Examining Attorney Linda A. Powell maintained that the sign is located some distance away from the goods, and is not associated with the goods as would be shelf-talkers, banners, and other point-of-purchase displays. Although the specimen might be suitable for a service mark application, it is not acceptable for a trademark application.

The Board agreed with the examining attorney. As Judge Bucher pithily observed: "Wishing does not a trademark make."

[A]s the prospective consumer flops down on the floor model to determine the quality and comfort of the innerspring mattress, it is the Serta, Sealy or Tempur-Pedic label on the mattress the customer will be eyeing when making a determination about the quality of the product. By contrast, the prospective consumer will not understand the suspended slogan to be a mark identifying the source of that mattress. Moreover, applicant does not argue anywhere in the prosecution of this application that the applied-for mark appears on or in close proximity to any of the goods for which registration is sought.

The Board therefore affirmed the refusal to register.

Read comments and post your comment here.

TTABlog note: Well, how did you do? Does this appeal belong in the "WYHA?" category?

Text Copyright John L. Welch 2013.

posted by John L. Welch @ 3/11/2013   6 comments

Friday, March 08, 2013

Precedential No. 8: TTAB Finds Investment Report to Be a Mere Sales Document, Not a Good in Trade

The Board affirmed a refusal to register the mark EMPOWERING THE INVESTOR, in standard character form [INVESTOR disclaimed], for "Electronic publications, namely, reports featuring investment management and investment research information, and financial research and equity research information recorded on computer media" in Class 9. The Board agreed with Examining Attorney Chrisie Brightmire King that the specimen of use comprises a report that is merely incidental to Applicant's own business, and does not constitute a "good in trade." Consequently, "the specimen is unacceptable to support registration of the mark for the identified goods." In re Thomas White Int'l, Ltd., 106 USPQ2d 1158 (TTAB 2013) [precedential].


The specimen of use was a 52-page "pdf" entitled "Annual Report" for investment funds named "Thomas White Funds," for which applicant is the advisor. The Board accepted applicant's assertion that the document is not an "annual report," as that term is normally understood. In any case, the Board found that the report is not a "good in trade."

The report explains applicant’s role as the advisor to the funds, provides an outlook for 2010, describes the "portfolio strategy," provides a performance review of two funds, lists the specific holdings in each fund, and sets forth investment, financial and equity research information regarding various markets. The funds' accounting firm confirms that the report presents fairly and accurately the financial details of the funds.

In the case at hand, the specimen shows applicant is using the mark only on an item incidental to conducting its own business. The annual investment report is a common and necessary adjunct to the rendering of applicant’s investment management and research services, that is, it is one of the means through which it provides investment services. For customers who have invested in the funds, it serves the purpose of a status report on the customers’ investments; there is no evidence in the record that applicant charges for the report. Such customers do not solicit or purchase such reports for their intrinsic value; rather, they merely are being provided a report on the status of their investments. With regard to prospective investors, the report is tantamount to a sales document; the answer to the fundamental question, “what is being offered for sale,” is the opportunity to invest in the funds and receive the investment management services of applicant. The annual report provides advertising for the services, rather than being a product in itself. The report is not sold separately from the services, and the report has no viable existence or independent value separate and apart from the services. The publications are part and parcel of the services.

The Board concluded that the specimen report merely "serves as a conduit to applicant’s services; is inextricably tied to and associated with the services so as to have no viable existence apart therefrom; and is neither sold separately from nor has any independent value apart from the services. See Lens.com, Inc. v. 1-800 Contacts, Inc. , 103 USPQ2d at 1676." [TTABlogged here]

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog note: This decision seems to be a companion to the Board's Ameritox decision of 2011 [TTABlogged here], which held that reports featuring medical laboratory results were merely "part and parcel" of Applicant's laboratory testing services, and were not separate goods in trade.

Text Copyright John L. Welch 2013.

posted by John L. Welch @ 3/08/2013   6 comments

Thursday, March 07, 2013

Test Your TTAB Judge-Ability: Is LIVEVIEW Merely Descriptive of Game Scouting Cameras?

WGI Innovations applied to register the mark LIVEVIEW for "game scouting cameras," but the PTO refused registration on the ground of mere descriptiveness under Section 2(e)(1). What is a game scouting camera, you might ask? According to applicant it is a camera that is mounted on a tree, post, etc., to take and store pictures of wildlife, the camera being activated by a sensor without the user being in the vicinity. WGI Innovations appealed. How do you think this came out? In re WGI Innovations, Ltd., Serial No. 85245646 (February 14, 2013) [not precedential].

The Examining Attorney, relying on dictionary definitions of the constituent words, contended that LIVEVIEW is merely descriptive because LIVE and VIEW are each descriptive of the goods, and their combination retains that descriptive significance. She urged that the mark describes the function of the camera, i.e., to allow "the user to capture live images or views of actual, real live animals on film in their natural environment, and the images may be viewed, examined or inspected carefully at a later time." [emphasis in original]. In other words, LIVEVIEW describes the fact that the user may VIEW the film that was shot LIVE of LIVE animals.

The record showed, however, that the term "live view" usually refers to either the preview frame of a camera's LCD or the function of real time streaming of the "live view" from a camera. WGI's camera provides neither. The preview frame idea is incongruous vis-a-vis applicant's camera because the pictures are taken when the user is absent.

The Board concluded that a multi-stage reasoning process would be required to recognize that LIVEVIEW could refer to observing animals in their natural habit by means of a recorded image that is not really "live."

And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlog note: Well, how did you do? Do you agree with the decision? Is the mark misdescriptive of the goods as identified in the application?

Text Copyright John L. Welch 2013.

posted by John L. Welch @ 3/07/2013   6 comments

Wednesday, March 06, 2013

Erik Pelton's Summary of March 1st TPAC Public Meeting

Erik Pelton, at his blog, reports here on the March 1, 2013 meeting of the Trademark Public Advisory Committee (TPAC).


As to our favorite Tribunal, Erik says the following:

TTAB Update by Chief Judge Gerard Rogers:

• Recent staffing increases: 4 new judges, 3 new staff attorneys, a lead paralegal. [Can you name the new judges? Answers here].

• TTAB webpage just updated, now includes section with "Stakeholder Outreach" information and links.

• Continuing efforts to enhance and improve the "TTAB Dashboard"; working to collect more information going forward.

• Number of cases operating under the old rules [i.e., cases commenced prior to November 1, 2007] is down to about 150.

• Filings of new proceedings at the TTAB are mostly up slightly.

posted by John L. Welch @ 3/06/2013   0 comments

Tuesday, March 05, 2013

TTAB Affirms Deceptiveness Refusal of "VALENCIA" for Rice

Less than two months after oral hearing, the Board affirmed a Section 2(a) refusal of the mark shown below, finding it to be deceptive for "enriched rice; rice; rice flour." The PTO's evidence showed that "Valencia" connotes a type of rice that has particular qualities that make it suitable for certain kinds of cooking. Applicant admitted that its rice is "not rice of the Valencia type." In re Pan American Grain Mfg. Co., Inc., Serial No. 85035510 (February 6, 2013) [not precedential].


A mark is deceptive under Section 2(a) if it contains misdescriptive matter that consumers are likely to believe, and that would likely affect the purchasing decisions of a significant number of consumers.

Examining Attorney Robin M. Mittler submitted evidence from numerous websites showing that "Valencia" is perceived by consumers of rice to refer to a type of rice having particular qualities suitable for certain kinds of cooking. Valencia may, in some cases, refer to Valencia, Spain, but not all "Valencia"-type rice originates there. In any event, "Valencia" is perceived as an indicator of a type of rice. Applicant Pan American admitted that its rice is not of the Valencia type.

The evidence further showed that Valencia rice is especially suitable for certain Spanish dishes: e.g., arroz con pollo and paella. Thus customers are likely to find rice that is marked "Valencia" to be more desirable than other rice products, and the designation would be material to their purchasing decisions.

Pan American urged the Board to look at the mark as a whole, but the Board found nothing in the mark that contradicted the impression that VALENCIA denotes the type of rice. Next, Pan American argued that VALENCIA has other meanings: a surname, a female given name, a region in Venezuela, the Spanish equivalent of the English word "valence." The Board, however, saw no evidence that consumers would interpret VALENCIA in any of these alternative ways. In the context of applicant's goods, VALENCIA will be seen as a designation of the type of rice.

Finally, Pan American pointed to its Puerto Rican trademark registration for VALENCIA, lamely arguing that Puerto Rican trademark law is derived primarily from the Lanham Act. Moreover, under Puerto Rican law, a certificate of registration is prima facie evidence of the mark's validity. The Board was not impressed:

It is well established that the Board gives no probative weight to state or foreign registrations because the Board's determination regarding the registrability of a mark under the Lanham Act is predicated on the facts before us in this application, not on the basis of a decision by the Puerto Rico Department of State on an unknown set of criteria.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

posted by John L. Welch @ 3/05/2013   0 comments