Test Your TTAB Judge-Ability: Which One of These Four Section 2(d) Refusals Did the Board Reverse?

In the first two weeks of April, the Board affirmed seven out of eight Section 2(d) likelihood of confusion refusals. Although a small sample, that's consistent with my recent estimate that 90% of Section 2(d) refusals are affirmed by the Board. Here are four of the eight. In this batch, one of the Section 2(d) refusals was reversed. Which one?



In re KW Intellectual Properties, Inc., Serial No. 85402206 (April 5, 2013) [not precedential]. [Refusal to register THE SPIRIT OF LINDY for shirts, t-shirts, and other clothing items, in view of the mark LINDI in stylized form, for identical and related clothing items].

In re Wildgame Innovations, LLC, Serial No. 85136181 (April 9, 2013) [not precedential]. [Refusal of BOOTIE CALL for "hunting game calls" [CALL disclaimed] over BOOTY CALL for fishing tackle].

In re Fona International Inc., Serial No. 85344795 (April 12, 2013) [not precedential]. [Refusal of CONSIDER IT DONE for "business consulting services related to the development and use of flavors" in view of the identical mark for "business consultation services, namely consultation relating to business strategy, including assessing a company's existing operations, and advising on the development of technology-related methodologies in the field of project management; consultation relating to outsourcing of computerized business functions; business consultation relating to the fields of electronic commerce and electronic business; business consultation relating to the field of on-line business transactions, namely marketing, order processing, and order fulfillment; customer relationship management; and employee leasing services, namely, providing information technology professionals to others."

In re Melanie Hart, Serial No. 77909807 (April 12, 2013) [not precedential]. [Refusal of CALLULA LILLEBELLE for "towels that may be worn as a dress or similar garment; dresses; skirts; slacks," in light of the registered mark KALULA KIDS for "children’s clothing, namely, girls' dresses, tops, pants, and skirts, separately and in sets" [KIDS disclaimed]].

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

Precedential No. 17: Use of TREASURYNET Mark Only Internally Results in Cancellation due to Abandonment

The Board sustained a petition for cancellation of OPGI's registration (issued under Section 44(e)) for the service mark TREASURYNET for "providing information on financial information, namely corporate treasury and loan information and commercial real estate property management information via a global computer network," finding that OPGI had used the mark only internally and had therefore abandoned the mark. City National Bank v. OPGI Management GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668 (TTAB 2013) [precedential].

Evidentiary rulings: The Board first dealt with an issue regarding discovery deposition testimony taken by Petitioner City of OPGI's Rule 30(b)(6) designee, one Mr. Smart, its in-house counsel. Trademark Rule 2.120(j)(4) provides that "if only part of a discovery deposition is submitted and made part of the record by a party, an adverse party may introduce under a notice of reliance any other part of the deposition which should in fairness be considered so as to make not misleading what was offered by the submitting party."

City argued that OPGI's counter-designations exceeded the scope of the testimony excerpts that it had submitted, but the Board disagreed. City also contended that the testimony, concerning a period of time before Mr. Smart's employment by OPGI, constituted hearsay, but the Board overruled that objection too, pointing out that a designed Rule 30(b)(6) witness is testifying on behalf of the party and not himself: Rule 30(b)(6) provides that the party’s designated witness shall "testify about information known or reasonably available to the organization," and it is therefore not inappropriate for him to testify as to matters not within his personal knowledge.

Next, the Board overruled Petitioner City's objection to a certain third-party publication downloaded from the Internet, ruling that under Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031 (TTAB 2010), the document was properly submitted via notice of reliance. However, the Board emphasized, the third-party document has limited probative value because it is admissible solely for what it shows on its face. It cannot be considered to prove the truth of any matter stated therein.

City also objected to Mr. Smart's trial testimony regarding any events occurring before his employment by OPGI in 2008, on the grounds of hearsay and lack of foundation. OPGI maintained  that Mr. Smart had "sufficient reliable knowledge" based on his investigations and discussions "regarding intent and the like with the persons with the most knowledge of those issues and by reviewing relevant documents."

Federal Rule of Evidence 602 provides that "[a] witness may not testify to matter unless evidence is introduced sufficient to support a finding that the witness has personal knowledge of the matter." The Board has held that a witness may not offer testimony regarding company history unless he or she has personal knowledge thereof:

[T]he [business record hearsay exception] rule does not provide for the admission into evidence of the testimony of a person who lacks personal knowledge of the facts, who is unable to testify to the fulfillment of the conditions specified within the rule, and who is testifying only about what he has read or has been allowed to review. Olin Corp. v. Hydrotreat, Inc., 210 USPQ 63, 67 (TTAB 1981).

The Board concluded that OPGI failed to demonstrate that Mr. Smart had personal knowledge regarding Respondent’s history prior to May 2008, or its use of the term TREASURYNET prior to that date. Furthermore, his testimony revealed that OPGI could have produced a witness with the requisite personal knowledge of matters for those years, and OPGI did not explain why that person could not have testified. Nor did OPGI show that, as in-house counsel, Mr. Smart would have had knowledge of the pre-employment matters regarding which he was testifying. And so the Board sustained City's objection and refused to consider Mr. Smart's testimony regarding pre-2008 matters.

Use in Commerce: The crux of Petitioner City's abandonment claim was that any use by OPGI of the term TREASURYNET had been solely for OPGI’s internal use, not for use by others, and thus the term was never used in commerce in connection with the recited services. The Board agreed.

"Use in commerce" is defined, in pertinent part, in Section 45 of the Trademark Act (15 U.S.C. § 1127) as follows:

[T]he bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce-- ... on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, orthe services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

Respondent OPGI is a Canadian company that owns an intranet website whereby its employees may access an informational database identified as "TreasuryNet." Mr. Smart testified that third parties cannot directly access the information in the TREASURYNET database; only OPGI's employees may do so.

OPGI relied on several decisions in which the provision of services to employees (administration of an annuity plan, in-house sales training) under a particular mark was deemed to be use of the mark in interstate commerce. It contended that it "provides tangible services directly to its employees under the TREASURYNET mark." The Board, however, pointed out that OPGI "is the real beneficiary and not its employees who are accessing the TREASURYNET database in order to perform their jobs."

Respondent’s employees are not being offered a benefit and otherwise taught skills that are transferrable to other positions outside of their employment with respondent. Rather, respondent’s employees are merely using respondent’s proprietary database as a source of information in performing their work; they would not have access to this database upon leaving their job with respondent. The record in this proceeding provides no indication how respondent’semployees would personally benefit from having access to the TREASURYNET database other than the satisfaction of knowing that they are fulfilling their employment duties on behalf of respondent.

Abandonment: Under Section 45 of the Trademark Act (15 U.S.C. § 1127), a mark is considered to be abandoned when "its use has been discontinued with intent not to resume such use." Furthermore, under Section 45, a mark shall be deemed to be abandoned when, inter alia, "its use has been discontinued with intent not to resume such use." Nonuse for 3 consecutive years gives rise to a prima facie case of abandonment.

The Board concluded that OPGI "has not used TREASURYNET as a mark in commerce in connection with the recited services" and therefore it abandoned its mark. More specifically, OPGI did not use TREASURYNET in commerce since at least the date of issuance of its registration, February 20, 2007, resulting in over three years of nonuse. The record therefore established a prima facie case of abandonment, which OPGI did not rebut.

Finally, the Board noted that Mr. Smart's disallowed testimony regarding pre-2007 activities would not have made a difference. Any use prior to 2008 would not erase the three-year period of abandonment subsequent to 2007, and furthermore his testimony would only confirm that same internal use of the mark for an even longer period of time.

And so the Board granted the petition for cancellation.

Read comments and post your comments here.

Text Copyright John L. Welch 2013.

TTAB Dismisses Fraud Claim for Lack of Proof of Intent to Deceive

In one of my rants at the recent "Trademark Office Comes to California" Symposium, I suggested that the TTAB hold an early "hearing" in every case in which a party claims fraud - something like a "Markman hearing" on the patent side. The idea is that the Board would nip a fraud claim in the bud by requiring the claimant to show its hand regarding its proof of fraud. This might discourage and eliminate bogus fraud claims that terrorize (or bully) applicants and registrants. Here's a case in point, where the fraud claimant had no proof that Respondent intended to deceive the PTO, and so the fraud claim failed at trial. C. & J. Clark International Limited v. Unity Clothing Inc., Cancellation No. 92049418 (April 24, 2013) [not precedential].

Prior to commencement of this proceeding, Respondent Unity Clothing amended its registration to delete five clothing items from its identification of goods. After commencement, and without opposition from Petitioner, Respondent deleted a sixth item.

Petitioner Clark's only claim was fraud, i.e., that Respondent "fraudulently alleged actual use of the [registered mark] in commerce on goods when no actual use has been made." Of courses, Unity denied the salient allegations of Clark’s fraud claim.

Under In re Bose Corp., the following four elements must be established to prove fraud:

1. applicant/registrant made a false representation to the USPTO;
2. the false representation is material to the registrability of the mark;
3. applicant/registrant had knowledge of the falsity of the representation; and
4. applicant/registrant made the representation with intent to deceive the PTO.

Respondent Unity admitted, on discovery, that it falsely stated that it was using its mark on the eliminated goods when it filed its underlying application and that it knew at that time that it was not using its mark on those goods. Thus, the first and third Bose elements were satisfied. Furthermore, there was no dispute that this was a material representation because the PTO relied upon that statement in issuing the challenged registration. Consequently, the second element was satisfied.

The question, then, was whether Unity had an intent to deceive the PTO when it made the false statement.

Unity asserted that it "acted under a mistaken belief that it was proper to list related goods that were as yet unused together with related goods that were already in use." It pointed to the fact that it deleted the "unused goods" as soon as it learned that inclusion of those goods was improper. Clark had nothing to offer other than Unity's admissions.

The Board found Unity's explanation "plausible in that it mistakenly believed that it could list goods for which it was not using its mark already so long as it was making use of its mark on other goods identified in the application at the time."

We do not have clear and convincing evidence to suggest the false statements were the result of a fraudulent intent rather than Unity's principal, Mr. Hwang, simply misunderstanding the requirement that all, and not just some, identified goods must be used in commerce at the time of filing a use-based application. While the admissions are certainly relevant, applicant has not admitted that its false statement entitled it to a registration that it did not otherwise deserve. Reviewing the record in its entirety, we do not find sufficient evidence demonstrating any deceitful intent on Unity's behalf in this regard.

The Board saw "some probative value in Unity's actions in promptly amending its registration upon learning of its error." It recognized that principals of companies, and even counsel, sometimes overlook or misinterpret averments made in documents submitted to the PTO. "Without more, we do not find a fraudulent intent simply based on mistakes or oversights."

And so the Board dismissed Clark's petition for cancellation.

Read comments and post your comments here.

TTABlog comment: Is fraud dead? You betcha! Note that it is helpful to amend a registration (or, presumably, correct an application) in a timely manner to eliminate "unused" goods/services.

For a case (not a TTAB case) where fraud was recently found, see  Melodrama Publishing LLC v. Santiago, Civil Action No. 12-Civ. 7830 (S.D.N.Y. April 11, 2013). [TTABlogged here].

Text Copyright John L. Welch 2013.

Divided TTAB Panel Finds OPEN SOURCE HARDWARE Merely Descriptive of Technology Website Services

In a less than convincing decision, the Board affirmed a Section 2(e)(1) refusal to register the mark OPEN SOURCE HARDWARE, finding it to be merely descriptive of "computer services, namely, providing an interactive web site featuring technology that allows users to consolidate and manage social networks, accounts, and connections to existing and emerging application programming interfaces (APIs)." Judge David Bucher dissented, opining that the PTO had failed to make a prima facie case of mere descriptiveness. In re Fuhu Holdings, Inc., Serial No. 85326591 (April 19, 2013) [not precedential].

The Examining Attorney relied on various definitions and website pages in arguing that OPEN SOURCE HARDWARE is merely descriptive of Applicant Fuhu's services because it identifies the computer hardware that applicant uses in rendering its computer services:

Applicant’s services involve the sharing or use of hardware-related information because the provision of an interactive web site featuring technology that allows users to consolidate and manage application programming interfaces is essentially an open source hardware platform that involves open source hardware interfaces.

The panel majority found that "open source hardware" has a "variety of uses, and includes software."

It follows, then, that applicant's website 'featuring technology' may feature open source hardware that allows users to consolidate and manage social networks, accounts, and connections to existing and emerging APIs.

Fuhu contended that its mark consists of a new and unique combination of OPEN SOURCE and HARDWARE, but the panel majority brushed that aside, noting that "open source hardware" has a defined meaning. Applicant further contended that its services "do not feature any ... sharing of hardware-related information" and that its services "are not related to hardware or physical attributes at all." The Board, however, found that OPEN SOURCE HARDWARE is merely descriptive of a feature of applicant's services, and it affirmed the refusal.

Disssent: Judge Bucher concluded that the PTO had failed to make out a prima facie case that the subject mark immediately conveys information about the recited services. 

"Open Source Hardware" as represented throughout this record (e.g., Arduino, BeagleBone or BeagleBoard) currently involves circuit boards that sell for around $100. Given applicant’s world of Web 2.0 technologies, open cloud web APIs, software development kits, and a platform having access to over 70 million devices (PCs, TVs and mobile devices), I am quite sure that inexpensive circuit boards designed for hobbyists are not the type of hardware applicant relies upon in rendering its services.

The Examining Attorney should have asked for more information, under Rule 2.61(b), according to Judge Bucher. With a better understanding of what Fuhu proposes to do, the PTO might have concluded that the applied-for mark is not merely descriptive, "but may be deceptive (viz. applications for SILK-formative terms in connection with cheap polyester fabrics), or deceptively misdescriptive (or even to those in the open source movement, 'scandalous'!)." Said Judge Bucher:

I would hold my nose, vote to reverse the merely descriptive refusal under Section 2(e)(1) of the Lanham Act, and send this application to publication. If the system works as it should, a competitor, trade association, industry group or someone else in the open source community would then oppose this application – making the appropriate statutory refusal(s) having a sound basis in trademark law – with the result that applicant would not succeed in having this mark registered, avoiding all the potential confusion and mischief that could ensue therefrom.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

What is the Likelihood That the TTAB Will Affirm a Section 2(d) Refusal? 90%

I recently looked at the TTAB's FOIA page in an attempt to determine, or at least estimate, the percentage of Section 2(d) likelihood-of-confusion refusals that were affirmed by the Board during the calendar year 2012. I counted 229 Section 2(d) refusals, of which 208 were affirmed and 21 reversed. That's an affirmance rate of 91.7%. So let's say there's a 90% chance of affirmance.



Five of the decisions were precedential: TALENT ASSURANCE/JOB ASSURANCE, ANYWEAR, GRAND HOTEL, COLOMBIANO COFFEE HOUSE, and FUTURA. The ANYWEAR and GRAND HOTEL cases were reversals.

NB: Some cases involved a mark in standard character and stylized form, and I counted that situation as one refusal.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

TTAB Dismisses YENKO Cancellation Petition, Finding Laches Based On 14-Year Delay

Terri Yenko Gould, executor of the estate of Donald Frank Yenko, petitioned to cancel a registration for the mark YENKO for toy cars, alleging that the mark falsely suggests a connection with the Estate and heirs of Don Yenko, in violation of Section 2(a), and that Respondent violated Section 14(3) by misrepresenting the source of its goods. The Board ruled that Gould failed to prove either claim, and further that laches, based on a 14-year delay in bringing the petition for cancellation, barred her claims. Terri Yenko Gould v. General Marketing Capital, Inc. and Supercar Collectibles Limited, Cancellation No. 92052197 (March 26, 2013) [not precedential].

From the mid-1960s to 1981, Mr. Yenko designed, modified and sold approximately 800 high-performance Chevrolet automobiles, a so-called “muscle car.” He produced his last vehicle in 1981, and made no effort thereafter to support replacement parts, memorabilia, etc. In 1987, Mr. Yenko was killed in a plane crash, and his businesses were closed and liquidated. Mr. Yenko’s estate documents listed no trademarks as assets, and claimed that Yenko Sportscars, Inc. had no value.

In the mid-1990’s, Respondent’s predecessor recognized an unserved market for scale models of YENKO Chevrolets and, believing Mr. Yenko had abandoned his trademark, began use of the
Mark in connection with model cars. It obtained the involved registration in 1997. Over the years, Respondent and its predecessor developed and sold over 20 different scale models of YENKO Chevrolets and licensed them to several companies.

Standing: With respect to the Section 2(a) ground for cancellation, petitioner is not required to prove proprietary rights in her name for standing purposes; even the owner of an abandoned mark (as here) may have standing to raise this claim.

Abandonment: In finding abandonment, the Board considered the nature of petitioner’s goods. It acknowledge that certain automobiles are long-lasting products, and that the goodwill value of a mark used for certain automobiles may persist long after production of automobiles with that mark has ceased

Here, however, the period of more than three decades of nonuse on automobiles presented a persuasive case for abandonment. Petitioner's predecessor, Donald Yenko, discontinued use in 1981 and abandoned the mark with intent not to resume such use. "[T]here is not a single statement or document indicating that petitioner ever had an intention to resume use of the mark on cars or for that matter, on any other product or service."

Section 14(3): In order to prevail on this claim, Petitioner must show that Respondent took steps to deliberately pass off its goods as those of Petitioner: i.w, Petitioner must establish "blatant misuse of the mark by respondent in a manner calculated to trade on the goodwill and reputation of petitioner."

Petitioner’s proofs fell far short. "Respondent and its predecessor SCL took adequate steps, prior to adopting the mark YENKO for toy cars in 1996, to confirm that any prior rights in the mark had been abandoned. Indeed, as indicated above, petitioner’s mark was abandoned at that time." Therefore, there could be no deliberate misrepresentation of the source of respondent’s products, blatant misuse of the mark, or conduct amounting to the deliberate passing-off.

Section 2(a): The critical date for determining this claim is the date of issuance of Respondent's registration, April 1997. Again, Petitioner's proofs fell well short of the mark. There is insufficient proof that the mark YENKO, in April 1997, pointed uniquely and unmistakably to the Donald Yenko, and that the Yenko name was of sufficient fame or reputation so that, when the mark YENKO was used on toy cars in 1997, a connection with petitioner was presumed.

Although Yenko Chevrolets may be quite valuable today, there is little in the record to show that Mr. Yenko or his estate took any action to perpetuate his alleged fame and reputation after production ceased in 1981, and after Mr. Yenko’s death in 1987

Laches: To prove the defense of laches, one must show (1) unreasonable delay in assertion of one’s rights against another; and (2) material prejudice to another attributable to that delay.

Petitioner is charged with constructive notice of the challenged registration dating back to 1996, when Respondent's application was published for opposition. The record established that petitioner had actual notice of respondent’s use in 1998 when Yenko family members attended the first annual car reunion at which Respondent had a vendor booth selling its toy cars.

The petition for cancellation was filed on March 11, 2010. The delay in taking action against the involved registration dates from March 5, 1996 to March 11, 2010, a period of fourteen years. Petitioner failed to explain the reason for this delay and inaction.

The Board found that respondent’s business grew during the fourteen years of inaction, and that respondent and its predecessor expended time, effort and money in building their business under the YENKO mark. Respondent continued to use and invest in the mark YENKO, expanding its business and obtaining registrations along the way. Respondent thereby created a valuable business and goodwill under the mark YENKO while Petitioner remained silent. The Board therefore concluded that Respondent suffered economic prejudice during period of delay, and that Respondent had established the affirmative defense of laches.

Morehouse defense: Once again, the Morehouse defense failed because the goods identified in the involved registration and the goods identified in Respondent’s other registrations are not the same or substantially identical goods.

Read comments and post your comments here.

TTABlog comment: There is no more useless doctrine than the Morehouse defense. It only applies when the marks and goods/services are the same or substantially identical, in which case why do you need the defense at all if all you are looking at is a possible duplicate registration?

Text Copyright John L. Welch 2013.

TTAB Finds "Translucent Blue" Color Confusable with "Blue" Color for Fuel Additives

The Board affirmed a Section 2(d) refusal to register the color “translucent blue” for “non-chemical additives for oils and fuels,” finding the mark likely to cause confusion with a mark comprising the color “blue” for a “petroleum based fuel additive.” Applicant contended that consumers would readily distinguish its goods having translucent blue containers, from Registrant’s blue product contained in a transparent tube. The Board disagreed. In re Star-Brite Distributing, Inc., Serial No. 77762719 (March 29, 2013) [not precedential].

The goods: Third-party registrations showed that Applicant’s identification of goods is broad enough to encompass the more specific goods of the cited registration, i.e., that Applicant’s non-chemical additives could be petroleum based. Internet evidence indicated that enzyme fuel treatments, as a non-chemical based fuel additive, and petroleum based fuel additives have the same purpose of treating fuels and oils, and are marketed to the same consumers who use these products in their engines and vehicles. The Examining Attorney also proffered several used-based third-party registrations covering the goods in both the subject application and the cited registration.

Moreover, because there are no limitations as to channels of trade or classes of purchasers in the identifications of goods in the application or registration, the Board must presume that the involved goods move in the same, normal channels of trade to all classes of purchasers for those goods. The evidence confirmed that the goods are sold through automotive stores, marine stores and hardware stores.

The marks: Not surprisingly, when "the marks at issue are non-literal design marks, the similarity of the marks must be decided primarily on the basis of visual similarity." In other words, the Board applies a subjective, eye-ball test. Of course, when the goods are closely related, the degree of similarity necessary to support a finding of likely confusion is reduced.

In considering the marks, the Board must compare them as they appear in the drawings. However, because the record includes descriptions of the involved marks, those descriptions must also be considered in determining the commercial impressions conveyed to relevant consumers.

Registrant’s mark is described as follows: "'The drawing is lined for the color blue, and color is claimed as a feature of the mark. The mark consists of the color blue as applied to the goods visible through a transparent tube." Applicant’s mark is described thusly: "The color(s) translucent blue is/are claimed as a feature of the mark. The mark consists of translucent blue to be used for a container body and not the cap."

Regardless of how registrant’s mark appears on its specimen of use, the Board must decide on the basis of the information appearing on the face of the registration, and so registrant’s mark covers all shades of "blue." Consequently, the Board found that in the context of the goods in this case, "registrant’s and applicant’s colors are identical." Because Registrant’s color is not restricted to any particular shade of blue, it encompasses “translucent blue.”

The fact that Applicant’s color appears on the containers while Registrant's color appears on the goods was irrelevant, since Registrants goods are visible through its transparent tubes.

The Board noted, as it did in Cook Medical, that Applicant could have sought a Section 18 restriction to the cited registration, limiting the registration to the shade of blue actually used in the marketplace.

Read comments and post your comments here.

Text Copyright John L. Welch 2013.

TTAB Reverses 2(e)(2) Refusal: KAPALUA Not Geographically Descriptive of Retail Store Services

The Board reversed a Section 2(e)(2) refusal to register the mark KAPALUA for retail an online store services, finding that the primary significance of the mark is to identify the source of Applicant’s services rather than the geographic location of its resort development. The examining attorney submitted numerous third-party Internet references to "Kapalua," but Applicant showed that most of the references pertained to the resort and/or other services rendered under the mark. In re Kapalua Land Company, Ltd. , Serial No. 76670962 (March 26, 2013) [not precedential].

A mark is primarily geographically descriptive under Section 2(e)(2) if (1) the mark’s primary significance is the name of a place generally known to the public, and (2) the relevant public would be likely to make a goods or services/place association (i.e., would be likely to believe that the services originate in the place named in the mark).

Applicant owns the Kapalua Resort on the northwestern coast of the Hawaiian island of Maui. Its parent company adopted "KAPALUA" as the name for its resort, and it was the first to apply that name to the resort’s location. Applicant argued that KAPALUA had no geographical significance before Applicant chose the name for its resort; that it has extensively promoted its upscale real estate properties, hotel services, and golf services under the KAPALUA mark; and that it has maintained quality control over use of that mark by others.

The first question for the Board was whether the primary significance of the mark KAPALUA is to designate applicant’s services or to designate the geographic location where its resort development is sited. The Board noted that neither the fact that an applicant coins a name for a geographic area, nor that it owns and controls access to or use of that property, changes the nature of a term that is in fact primarily geographically descriptive.

The Board found the geographic significance of KAPALUA to be subsidiary to the function of the word as a service mark.

[T]he greater weight of the evidence shows that KAPALUA did not signify a geographic place before applicant adopted the term to designate the origin of its services and it continues to serve the function of designating source. Second, there is no record evidence of any manufacturer or other commercial enterprise in a place named “Kapalua” outside of applicant’s ownership or control.

Although the examining attorney submitted numerous third-party Internet references to "Kapalua," Applicant overcame that evidence "by demonstrating that most such references either clearly pertain to the resort and other services rendered under its mark (by applicant or authorized third parties) or are consistent with that interpretation.

Because the first prong of the Section 2(e)(2) test was not met, the Board did not need to consider the second prong.

And so it reversed the refusal to register.

Read comments and post your comments here.

Text Copyright John L. Welch 2013.

TTAB Affirms 2(a) and 2(e)(1) Refusals of GREEN SEAL for Non-Environmentally-Friendly Adhesive Tape

The Board affirmed two refusals of the mark GREEN SEAL for "adhesive tape and adhesive packaging tape and tape dispensers for home and office use," finding the mark to be deceptive under Section 2(a) and deceptively misdescriptive under Section 2(e)(1). Applicant Kitaru pointed out that it uses the term "Green Seal" to color code a line of adhesive tape products that also includes "Black Seal," "Blue Seal" and "Double Blue Seal," and further that it uses this term in connection with the imagery of a sea mammal (see below). But those arguments didn't stick. In re Kitaru Innovations Inc., Serial No. 85211019 (March 26, 2013) [not precedential].

Section 2(e)(1) Deceptive Misdescriptiveness: A mark is deceptively misdescriptiveness if it misdescribes the goods, and if consumers are likely to believe the misrepresentation. The Examining Attorney submitted dictionary definitions, Internet pages, and third-party registrations to support the contention that the word “green” is used frequently to refer to environmentally-friendly tape products. The Board found that the record evidence showed "overwhelmingly" that the word “green” directly informs consumers that the tape products are environmentally friendly.

Applicant made no such claim for its products, but instead asserted that it uses the term "Green Seal" to color code a line of adhesives, using the imagery of a sea mammal. But whether Applicant also uses "Black Seal," "Blue Seal" and "Double Blue Seal" function as trademarks was not the issue before the Board. The mark GREEN SEAL must stand on its own. Likewise, the image of a seal is not part of the applied-for mark. [There is nothing stopping Applicant from dropping the "color code" and removing the seal as soon as the mark is registered - ed.].

Furthermore, the Board concluded, purchasers and prospective purchasers would likely believe the misrepresentation conveyed by the term: that applicant’s goods are environmentally-friendly.

Therefore the Board affirmed the Section 2(e)(1) refusal.

Section 2(a) Deceptiveness: The CAFC has articulated the following test for determining whether a mark consists of or comprises deceptive matter: (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?; and (3) If so, is the misdescription likely to affect a significant portion of the relevant consumer’s decision to purchase?

The first two elements were satisfied as discussed above. The question, then, was whether the misdescription is material to the purchasing decision. The evidence showed that consumers are eager to recycle as well as to purchase products made of recycled materials, to use biodegradable products, and to avoid toxic substances, and further that a segment of the public would be more inclined to purchase eco-friendly adhesive products. In short, whether an adhesive product is environmentally friendly or green would be material to the purchasing decision.

And so the Board affirmed the Section 2(a) refusal.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

Precedential No. 16: TTAB Refuses to Consider File HIstory of Cited Registration in Section 2(d) Appeal

In this appeal from two Section 2(d) refusals to register the mark FORZA for metal mounting brackets for televisions and speakers, and for custom audio/video accessories, including cables and wires, Applicant Sela Products contended that the Board should consider certain statements made in the file history of one of the cited registrations. But there were two problems: Sela never made that file history of record during the prosecution of its own application, and even if it had, the statements were mere opinions submitted in a wholly different context and of no probative value here. In re Sela Products, LLC, 107 USPQ2d 1580 (TTAB 2013) [precedential].

The Board affirmed the first Section 2(d) refusal, finding Sela's mark likely to cause confusion with the registered mark FORZA POWER TECHNOLOGIES for surge protectors and other electrical items "for home and office use only" [POWER TECHNOLOGIES disclaimed]. Third-party registrations and website evidence demonstrated that the involved goods are related.

Sela asserted that the channels of trade and classes of customers for the goods are different, noting that registrant's goods are for "home and office use only" whereas its goods are "custom" accessories sold to professional custom installation specialists and commercial contractors. The Board pointed out that Sela's identification of goods is not so limited: do-it-yourselfers could purchase the items for their home systems. And even specialists and contractors would be purchasers of surge protectors. Moreover, purchasers are likely to encounter applicant's complementary products during the course of purchasing a television, audio or home theater system.

As noted, Sela argued that certain statements made by registrant in the file history for the FORZA POWER TECHNOLOGIES mark should have been considered by the Examining Attorney during prosecution of Sela's application, and should be considered by the Board. Analogizing the situation to that of an opposition, in which the file history of an opposed application is automatically of record, Sela contended that the Examining Attorney, functioning like a "quasi-opposer," has "introduced" this registration into the record, and therefore the file history should be considered of record for the appeal.

The Board was unmoved. There is no equivalent rule (to Rule 2.122(b)) that applies to ex parte proceedings. Moreover, the file of an opposer's pleaded registration is not automatically part of the record; it must be submitted into evidence. And even if the statements that Sela referred to were considered, they would not have changed the Board's decision. Those statements were made in a very different context: an attempt to distinguish the FORZA TECHNOLOGIES MARK over a citation of the mark FORZA for a hydrogen fuel cell power generator.

A decision maker "may not consider a party's opinion relating to the ultimate legal conclusion of likelihood of confusion (particularly in another case.) as a binding admission of fact. See Interstate Brands Corp. v. Celestial Seasonings, Inc., 198 USPQ 151, 154 (CCPA 1978). In sum, registrant's statements cannot be treated as indicating its position with respect to applicant's mark and its goods.

As to the second Section 2(d) refusal, the Board reversed, finding Sela's mark not likely to cause confusion with the registered mark FORZA MILAN! ACM 1899 & Design, shown above, for various goods, including optical and electrical cables and sound and image recording and transmission apparatus [1899 and MILAN disclaimed].

The Examining Attorney contended that FORZA is the dominant portion of the cited mark and that MILAN! will be understood as the geographic location of the company that makes the goods. Sela pointed out that the cited mark incorporates the crest of the Italian soccer  team Associazione Calcio Milan, known as "ACM" [or AC Milan - ed.], a world-renowned football club. The registration includes a translation of  FORZA as "Go!", so that the meaning of FORZA MILAN! would be in the nature of a cheer: "Go Milan!"

Based on the evidence of record, the Board had no doubt that those familiar with world soccer would readily distinguish the two marks; but even those unaware of the soccer meaning would distinguish the them. A geographic location is not normally shown in the same manner as MILAN! in the cited mark, and so the Board did not view FORZA as the dominant element of the cited mark: consumers will see that as part of the phrase FORZA MILAN! And the design element of the cited mark is large and noticeable, further distinguishing the marks.

The Board concluded that any similarities between Sela's mark and this cited mark are outweighed by the differences in appearance and commercial impression (and in the case of soccer aficionados, connotation). 


Read comments and post your comment here.

Text Copyright John L. Welch 2013.

SDNY Orders Cancellation of NISA SANTIAGO Registration on the Ground of Fraud

On April 11, 2013, the U.S. District Court for the Southern District of New York granted Plaintiff Melodrama's motion for judgment on the pleadings under FRCP 12(c), ordering cancellation of a registration for the mark NISA SANTIAGO for a series of novels, on the grounds of, inter alia, fraud on the USPTO. Defendant Santiago admitted in her answer that she had never used or owned the mark. Melodrama Publishing LLC v. Santiago, Civil Action No. 12-Civ. 7830 (S.D.N.Y. April 11, 2013).


The court also entered judgment in favor of Melodrama on its claim for damages under 15 U.S.C. Section 1120 for procurement of a registration by false or fraudulent representations to the PTO. And it granted Melodrama's request for an award of attorney's fees.

Read comments and post your comments here.

TTABlog comment: Since the Bose decision, it has seemed that a finding of fraud would require the proverbial smoking gun. Santiago shot herself in the foot with her admissions.

Text Copyright John L. Welch 2013.

What is the Likelihood of TTAB Affirmance of a Section 2(e) Refusal?

I took a look at the TTAB's FOIA page in an attempt to determine, or at least estimate, the percentage of various Section 2(e) refusals that are affirmed by the Board. For the calendar year 2012, I counted 139 such decisions, of which 117 were Section 2(e)(1) mere descriptiveness rulings, and the remaining 22 were scattered among subsections 2 (primarily geographically descriptive), 3 (primarily geographically deceptively misdescriptive), 4 (primarily merely a surname), and 5 (functional).


Of the seven refusals under Section 2(e)(2), five were affirmed (PHILADELPHIA'S CHEESESTEAK, INTERIORSUSA.COM, VERMONT ORGANICS, BONDS NO 9S DUBAI, and THE MUNICH), and two were reversed (MDF IT & Design and TINSELTOWN).

All three Section 2(e)(3) were affirmed (REAL RUSSIAN, SWISS+TECH, and OLD HAVANA).

Of the seven Section 2(e)(4) refusals, four were affirmed (THE HENDRYX HOTEL, GRISWALD, RITTER, and CROMWELL), and three were reversed (LORCH, SCHOTTLER, and CARDANO).

Surprisingly, I think, four of the five Section 2(e)(5) refusals were reversed (massage hoop, pixilated Navy fabric designs, scored Hershey bar, and 3M hand sanitizer dispenser), while one was affirmed (concentric rings on suction cup). All five were non-precedential. In the first three, the applicant established acquired distinctiveness, while in the fourth, 3M's Section 2(f) evidence fell short.

Of course this data is not statistically significant, but I think one can draw some insight from them. In the 2(e)(3) realm, sellers of rum like to suggest a Cuban connection, for vodka it's Russia, and for hand tools it's Switzerland. On the functionality front, I think the reversals are a result of the lack of understanding of de facto versus de jure functionality on the part of the PTO Examining Corps.

Turning to the 117 Section 2(e)(1) mere descriptiveness, 96 were affirmed and 21 reversed, for an affirmance rate of approximately 82%. That is consistent with estimates that I and others have made in past years.

Five of the 2(e)(1) decisions were deemed precedential, but only the ARCADEWEB decision (a reversal) is of the least interest, mainly because the Board's ruling hinged on its unhappiness with the Examining Attorney's change in position on appeal. The other four precedentials were affirmances: CENTER OF SCIENCE AND INDUSTRY, SEMICONDUCTOR LIGHT MATRIX, SADORU, and COLOMBIANO COFFEE HOUSE.

NB: With regard to the 2(e)(1) cases, I counted a case involving several variations of the same mark as one case. For example, the GRAND PRIX SPORTS decision involved nine applications for marks comprising GRAND PRIX with various generic terms. I counted that as one affirmance, not nine.

Read comments and post your comment here.

Text copyright John L. Welch 2013.

"IN & OUT CAR WASH" Not Confusable With, Nor Dilutive of, "IN-N-OUT" Burgers Marks, Says TTAB

The Board dismissed this opposition to registration of the mark IN & OUT CAR WASH for car washing services (CAR WASH disclaimed), finding it not likely to cause confusion with or to dilute Opposer's registered marks IN & OUT for vehicle repair and painting services and IN -N-OUT BURGERS for restaurant services. Opposer failed to prove that its restaurant marks were famous for Section 2(d) purposes, and failed to establish that its repair and painting services were related to Applicant's car wash services. As to dilution, Opposer could not meet the lower Section 2(d) standard for fame, let alone the higher Section 43(c) standard. In-N-Out Burgers v. Fast Lane Car Wash & Lube, L.L.C., Opposition No. 91183888 (March 14, 2013) [not precedential].

Opposer claimed use of its mark since 1948, registering the mark first in 1978 and subsequently, in various forms. At the time of trial, Opposer operated 262 restaurants, exclusively in the states of California, Nevada, Utah, Arizona, and Texas. In 2009, Opposer acquired a registration for the mark IN & OUT for motor vehicle body repairing and painting.

Applicant Fast Lane began using the IN & OUT CAR WASH mark in April 2005, and owns two car wash facilities, in Joplin and Springfield, Missouri. Although its service may include "rubbing some scratches off a car's painted surface," it does not repair scratches, remove dents, repair windshields, or touch up paint. Until 2008, it provided lube services, such as oil changes, fluid checks, etc.

Likelihood of Confusion: The Board focused on the mark of Opposer that is most similar to Fast Lane's mark IN & OUT CAR WASH: the registration of IN & OUT for car repair and painting services, reasoning that if likelihood of confusion is found vis-a-vis this mark, then the other marks of Opposer need not be considered; if likelihood of confusion is not found, the Board would also not find confusion as to the marks of the other pleaded registrations.

Opposer claimed that its IN-N-OUT marks are famous for restaurant services and menu items. The Board, however, concluded that, although Opposer's restaurant and food marks "are strong and have gained notoriety for its restaurant services and menu items," they are not "famous" for Section 2(d) purposes. Opposer's evidence of sales was unspecific and indicated that the sales are made "to a limited market share of the consuming public in the United States." Its advertising was geared to specific store locations, and its proof of media attention failed to establish the level of recognition of its marks. "While opposer undoubtedly enjoys a devoted following and business success, at least within its areas of operation, it has not clearly shown a level of recognition for its mark which would justify the heightened scope of protection afforded truly famous marks."

As to the inherent distinctiveness of the subject marks, the Board found them to be suggestive because that convey a message about the respective services: "the customer can drive 'in and out.'" Consequently, any similarity between the marks "is less likely to cause confusion than would be the case if the marks were arbitrary or fanciful." On the other hand, the evidence did not show widespread use of similar marks.

Turning to the marks, the Board not surprisingly found "IN & OUT" to be the dominant portion of Applicant's Fast Lane's mark and identical to Opposer's mark.

As to the relatedness of the services, Opposer relied on 24 third-party registrations and Internet evidence from 13 third-parties to show that car wash services originate from the same source as body repair and painting services. However, many of the registrations were not based on use in commerce, and were therefore not probative. That left 15 registrations owned by 14 different entities. The Board observed, however, that third-party registrations are of limited probative value on the issue of likelihood of confusion because they are "not evidence of what happens in the market place or that customers are familiar with them." Likewise, the Internet evidence was of limited value, because the webpage printouts cannot be used to prove the truth of what has been printed.

Thus, the Internet evidence made of record by opposer does not prove that the five above-noted entities actually provide car washing and cleaning services as well as car repair and painting services, but simply that the third parties responsible for the Internet postings of record state that such services are available therefrom.

Opposer's witness unhelpfully testified that the primary business of car wash is distinct from that of a paint and body shop, and washing would be incidental to repair or painting.

The Board therefore found that Opposer had failed to prove the services to be related for Section 2(d) purposes. Neither the nature of the services nor the evidence of record supported a finding that the services travel in common channels or are made available to the same customers. [Aren't the customers the same? the general public? - ed.]

Balancing the relevant du Pont factors, the Board ruled that Opposer had failed to prove a likelihood of confusion.

Dilution: Because Opposer failed to prove its mark to be famous for Section 2(d) purposes, it could not possibly meet the higher standard for fame under Section 43(c).

And so the Board dismissed the opposition.

TTABlog comment: Why does this decision leave me with a bad taste in my mouth, feeling like Opposer got the shaft?

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability: Which One of These Five Section 2(e)(1) Mere Descriptiveness Refusals Was Reversed?

By my estimation, 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 March 2013. One refusal was reversed. Which one, pray tell? Do you see any WYHA?'s here?



In re Worship Artistry, LLC, Serial No. 85392899 (March 21, 2013) [not precedential]. [Refusal of WORSHIP ARTISTRY for "Educational and entertainment services in the field of music instruction offered through online, nondownloadable videos and instructor assistance; providing a website featuring non-downloadable instructional videos in the field of music instruction"].

In re GP Global Limited, Serial No. 85345544 (March 21, 2013) [not precedential]. [Refusal of FRAGRANCE PODS for "room fresheners" [FRAGRANCE disclaimed]].

Giant pod, cast of "Invasion of the Body Snatchers"
In re Weitzen, Serial No. 85291176 (March 19, 2013) [not precedential]. [Refusal of PARTNERSHIP DANCING "educational and entertainment services, namely, conducting classes, workshops and events in the field of dance and distribution of course materials in connection therewith, and education consulting related thereto"].

In re Avant Garde Marketing Solutions, Inc., Serial No. 77735279 (March 19, 2013) [not precedential]. [Refusal of CASH VALUE for "customer loyalty services and customer club services, for commercial, promotional and/or advertising purposes featuring the ability for customers to earn rewards with a value equivalent to cash when applied to purchase goods or services from a participating merchant subject to compliance with any conditions imposed by the merchant; promoting the goods and services of others by means of the issuance of loyalty rewards cards which offer customers the ability to earn rewards with a value equivalent to cash when applied to purchase goods or services from a participating merchant subject to compliance with any conditions imposed by the merchant; providing incentive award programs for customers and employees for the purpose of promoting and rewarding loyalty through the distribution of prepaid stored value cards having a value equivalent to cash when applied to purchase goods or services from a participating merchant subject to compliance with anyconditions imposed by the merchant; providing incentive award programs for customers for frequent use of participating businesses through the issuance and processing of loyalty coupons having a value equivalent to cash when applied to purchase goods or services from a participating merchant subject to compliance with any conditions imposed by the merchant"].

 In re GP Global Limited, Serial No. 85399516 (March 14, 2013) [not precedential]. [Refusal of AYURVEDIC for “herbal tea; tea"].

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

Precedential No. 15: TTAB Requires FRCP 26(a)(2)(B) Written Report of "Retained" Expert Witness

The Board granted Respondent's motion to compel Petitioner to serve an expert written report pursuant to FRCP 26(a)(2)(B), ruling that the question of whether a party's witness is "retained or specially employed to provide expert testimony" does not depend on whether the party controls the expert's time or compensates the expert. Rather it turns on whether the expert opinion testimony "arises from his enlistment as an expert and not from an on-the-scene involvement in any incidents giving rise to the litigation." RTX Scientific, Incorporated v. Nu-Calgon Wholesaler, Inc., 106 USPQ2d 1492 (TTAB 2013) [precedential].

Petitioner filed and served an expert disclosure statement identifying one Roger Holder as an "unretained expert" pursuant to TBMP Section 401.03 and FRCP 26(a)(2)(C). Respondent moved to compel a written expert report signed by Mr. Holder under FRCP 26(a)(2)(B).

Respondent asserted that Petitioner provided only limited information regarding the witness, and not the detailed report that Rule 26(a)(2)(B) requires of a witness "retained or specially employed to provide expert testimony in the case or one whose duties as the party's employee regularly involve giving expert testimony."

Petitioner admitted that Mr. Holder is a third-party witness capable of giving expert testimony, but asserted that it did not retain Mr. Holder, that he is not specially employed by Petitioner, that he has not been and will not be compensated, and that he has not prepared any written report. Petitioner further asserted that the Rule does not require written reports of "unretained" expert witnesses, and that Respondent may subpoena Mr. Holder for information.

The Board observed that, in a TTAB proceeding, a party's planned use of an expert witness is largely governed by FRCP 26(a)(2). The 2010 amendment to that Rule makes clear that there is a distinction between an expert witness who is required to produce a report and one who is not.

Under Fed. R. Civ. P. 26(a)(2)(B), an expert “disclosure must be accompanied by a written report—prepared and signed by the witness—if the witness is one retained or specially employed to provide expert testimony in the case or one whose duties as the party’s employee regularly involve giving expert testimony."

Thus the courts distinguish between "retained and specially employed" experts and "unretained experts." Only the former must provide written reports (containing the information listed in FRCP 26(a)(2)(B)).

In 2010, Rule 26(a)(2)(c) was added to emphasize that a Rule 26(2)(a)(2)(B) report is required only from an expert described in (a)(2)(B). So then the question was, when is an expert witness "retained or specially employed"? The First Circuit in Downey v. Bob's Discount Furniture Holdings, Inc., 633 F.3d 1, 6-7 (1st Cir. 2011), interpreted the term as follows: "[Where] the expert comes to the case as a stranger and draws opinions on facts supplied by others, in preparation for trial, he reasonably can be viewed as retained or specially employed for that purpose." That witness is distinguished from a percipient witness who happens to be an expert: for example, a treating physician, or treating pesticide professionals, or treating water damage remediation professionals.

TTAB proceedings are based on a plaintiff's belief of damage arising from registration of a mark. Unlike tort of personal injury cases, there are usually no specific incidents (e.g., auto accidents, floods, or bedbug infestations) that lead to the proceedings. So in Board proceedings, an expert is typically recruited not on the basis of personal knowledge of an event, but because of his or her particular knowledge of a relevant field. Therefore, the Board concluded, that type of expert is a "retained" expert for purposes of FRCP 26(a)(2)(B), and a written report is required.

Here, Mr. Holder was identified as an expert in the HVAC/R industry who would testify about the functionality and lack of distinctiveness of Respondent's claimed trade dress (the blue color of cleaning preparation for air conditioning and refrigeration coils).

Mr. Holder had no "on-the-scene" involvement in any incidents giving rise to the proceeding. He is a "retained" expert witness and his report must be provided. And contrary to Petitioner's argument, the question of whether Mr. Holder is a "retained" witness does not hinge on whether Petitioner controls his time or compensates him.

Read comments and post your comments here.

Text Copyright John L. Welch 2013.

Precedential No. 14: Refusing to Read Cited Registration Narrowly, TTAB Affirms 2(d) Refusal of LOTUS for Casino Bar Services

The Board affirmed a refusal to register the mark LOTUS for "bar services located in a casino," finding it likely to cause confusion with the identical mark registered for "providing banquet and social function facilities for special occasions; restaurant and bar services." Applicant argued that the "restaurant and bar services" of the cited registration must be considered in the context of the entire recitation of services and therefore read narrowly to be services offered in connection with "banquet and social function facilities for special occasions." The Board disagreed, and instead read the disputed phrase as identifying discrete and separate services. In re Midwest Gaming & Entertainment LLC, 106 USPQ2d 1163 (TTAB 2013) [precedential].

The crux of the matter was, of course, the similarity of the services. Applicant limited its "bar services" to those offered in a casino, but there was no restriction on the "restaurant and bar services" in the cited registration. The Board presumed that the latter services included bar services located in a casino. See Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987).

The Board acknowledged that it is unlikely that registrant would be offering its bar and restaurant services in the same casinos as those in which applicant rendered its bar services. "However, the relevant class of purchasers, i.e., casino patrons, would be the same in both cases, and we must assume that they could encounter applicant's and registrant's services in the different casinos."

Applicant argued that Registrant's "restaurant and bar services' must be considered in the context of Registrant's recitation of services in its entirety, so that the restaurant and bar services should be limited to those offered in connection with "providing banquet and social function facilities for special occasions." The Board was not persuaded.

In the cited registration’s identification of services, the "providing banquet and social function facilities for special occasions" are services separated by a semicolon from the "restaurant and bar services." Under standard examination practice, a semicolon is used to separate distinct categories of goods or services. See Trademark Manual of Examining Procedure Section 1402.01(a) (October 2012).

The Board observed that applicant essentially was asserting that "restaurant and bar services" should be read in pari materia with "providing banquet and social function facilities for special occasions." That argument was unavailing. See In re Thor Tech Inc., 90 USPQ2d 1634 (TTAB 2009) [Interpreting the term "trailers" broadly in the phrase "trailers, dump trailers, and truck bodies" to include recreational trailers, rather than restrictively to refer to industrial and commercial trailers].

Finally, the Board found that the relevant purchasers include ordinary consumers who would exercise only a normal degree of care in their purchasing decisions.

And so the Board affirmed the refusal to register.

TTABlog comment: WYHDTDP? Would you have deemed this decision precedential?

Read comments and post your comments here.

Text Copyright John L. Welch 2013.

Precedential No. 13: TTAB Nixes Stipulation for Service By E-Mail And Five Extra Mailing Days

The parties to this opposition proceeding filed a stipulation to accept service by e-mail while retaining the five additional days afforded by Rule 2.119(c) for filing and/or serving responsive documents, applicable for service by first-class mail. No can do, said the Board, as it rejected the stipulation. McDonald's Corporation v. Cambridge Overseas Development Inc., 106 USPQ2d 1339 (TTAB 2013) [precedential].

Rule 2.119(b)(6) allows service of papers by electronic transmission when the parties so agree. But they cannot also take advantage of the five-extra-days-for-mailing provision of Rule 2.119(c). That five-extra-days rule applies only to service by first-class mail, Express Mail, or overnight courier. See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42442, 42250 (August 1, 2007) ("as for agreed use by parties of e-mail or fax for forwarding service copies, the office confirms that Section 2.119(c) would not apply to service by electronic transmission (email or fax) under Section 2.119(b)(6).").

The Board pointed out that a stipulation such as that filed here would run afoul of Rule 2.127, which states that the time for filing reply briefs and motions under FRCP 56(d) "will not be extended."

Therefore, the Board refused to approve the stipulation.

The parties could stipulate that they would accept service by first-class mail but with a courtesy e-mail copy sent simultaneously. Then the five-extra-days-for-mailing would apply. [TTABlog query: what is the sanction if one fails to send the courtesy e-mail copy?]

Read comments and post your comments here.

TTABlog comment: FWIW, my practice is to never agree to service by e-mail. That's because, from one case to another, I can never remember in which cases I've agreed to e-mail service and in which I haven't. So the simple way to remember is to never agree. I will agree to sending courtesy copies by e=mail, however, being that kind of guy.

Text Copyright John L. Welch 2013.

Final Reminder: "The Trademark Office Comes to California" - April 16 and 18th

Yours truly, the TTABlogger, will be heading to the West Coast to speak at "2013 Trademark Office Comes to California," presented by the Intellectual Property Law Section of the State Bar of California. The event will be held in Los Angeles on April 16, and in San Francisco on April 18. Registration and details here. Brochure here.

Speakers will include Commissioner Deborah Cohn and Deputy Commissioner Sharon Marsh from the USPTO, and TTAB Chief Judge Gerard F. Rogers and Judge Lorelei Ritchie.

Bret Fausett, Principal, Internet Pro, Vineeta Gajwani, Senior Counsel, IP, Electronic Arts, and Mike Rodenbaugh, Principal, Rodenbaugh Law, will discuss the gTLD system and the trademark protection measures within it, including the most recent ICANN developments.

J. Alison Grabell, Partner, Ezra Brutzkus Gubner LLP, and Sean M. SeLegue, Partner, Arnold & Porter LLP, will address potential ethical pitfalls in trademark practice.

The TTABlogger will be discussing ........ wait for it!.......... TTAB developments. A copy of my paper, entitled "2012-2013 Decisions of the Trademark Trial and Appeal Board and the Federal Circuit on Registrability Issues,' may be downloaded here. [My talk will not consist of a reading of the paper.] Hope to see you there.

Meanwhile, if you have any issues you would like me to discuss, or any questions for the other speakers, please let me know.
.

Precedential No. 12: WYHA? TTAB Affirms Refusal of PLAQUE-ZAPPER for Pet Treats Due to Faulty Specimen of Use

The Board affirmed a refusal to register the mark PLAQUE-ZAPPER for "pet products, namely, edible pet treats, pet food and pet beverages," finding that applicant's specimen did not show use of the mark for the identified goods. The specimen of use (partly depicted below) described the product as a veterinary dental or health care product rather than a pet treat as applicant claimed. Would You Have Appealed? In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243 (TTAB 2013) [precedential].

The Board first pointed to In re Bose Corp., 192 USPQ 213, 216 (CCPA 1976) regarding the role of the specimen of use:

An important function of specimens in a trademark application is, manifestly, to enable the PTO to verify the statements made in the application regarding trademark use. In this regard, the manner in which an applicant has employed the asserted mark, as evidenced by the specimens of record, must be carefully considered in determining whether the asserted mark has been used as a trademark with respect to the goods named in the application.

Applicant did not contend that the specimen shows use of the mark for pet food or pet beverages, but urged that it qualified under an online definition of a "treat" as "entertainment, food, drink, etc. given by way of compliment or as an expression of friendly regard." However, there was no evidence that this meaning is commonly recognized for "pet treats."

Even applying applicant's definition, the specimen did not support its position. The information on the specimen described a dental healthcare product that controls plaque, tartar and bad breath. It is described as odorless, colorless, and tasteless.

The Board concluded that any reasonable interpretation of the language used on the specimen pointed to a healthcare product, not a treat. The instructions and warnings on the specimen reinforced that interpretation.

The Board pointed out that the term "pet treats" is commonly used to identify an edible item for pleasure or enjoyment. In the evidence of record, "pet treats" referred to chews, biscuits, bones, crunches, and moist goodies. On one website, applicant's product was not referred to as a "pet treat," but was listed under "dental products" as a "dental additive."

Here, there was nothing in the specimen of use showing the mark PLAQUE-ZAPPER in connection with the identified goods. Therefore, registration was properly refused under Sections 1 and 45 of the Trademark Act.

Read comments and post your comments here.

TTABlog note: I'm not sure that Examining Attorneys always require a specimen that refers to the goods involved. Services, yes. Goods, no. What's been your experience?

Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability: Is "SOF" Merely Descriptive of Exercise Weights?

The USPTO refused registration of the mark SOF under Section 2(e)(1), finding it to be merely descriptive of exercise weights. Applicant appealed, arguing that SOF is not the phonetic equivalent of "soft," and pointing to third-party registrations for marks containing the terms "sof" or "soft" without disclaimers. How do you think this came out? In re McCrane, Inc., Serial No. 85276221 (March 5, 2013) [not precedential].

Examining Attorney Ronald McMorrow contended that "sof" is a misspelling of the word "soft," which describes a type of exercise weight that is coated or covered with a soft material. Internet evidence showed that various companies offer "soft dumbbells," "soft weights," and "Pilates soft weight balls."

Applicant McClane maintained that "sof" is not the phonetic equivalent of "soft," distinguishing its mark from the marks involved in the cases cited by the Examining Attorney. Third-party registrations purportedly showed that the PTO has registered marks containing the word "soft" or "sof" without disclaimer.

The Board observed that it is well established that a slight misspelling will not turn a descriptive term into a non-descriptive mark if it will be perceived by the consuming public as the equivalent of the descriptive term. Moreover, even highly altered terms may still be deemed merely descriptive [e.g., KWIX-TART]. And misspelled words have been found to be merely descriptive even if the pronunciation has been slightly altered. [e.g., AL-KOL, EXTRORDINAIRE, RICH 'N CHIPS, CAR-FRESHNER].

The policy underlying the rule that misspelled words may still be merely descriptive is spelled out in the Restatement of Unfair Competition:

Recognition of exclusive rights in variants and corruptions of descriptive words also imposes a risk of liability on subsequent users of the original words. *** Thus, unless the alteration is sufficient to avoid encumbering use of the original word, the variation remains descriptive.

The Supreme Court has expressed the same concern, in one case finding RUBEROID to be merely descriptive: "Bad orthography has not yet become so rare or so easily detected as to make a word the arbitrary sign of something else than its conventional meaning ...."

The Board found that registration of SOF would violate those policies. In the context of exercise weights, consumers are likely to see SOF as a "misspelling or corruption" of the word "soft" because "soft weights" and " soft dumbbells" are known in the marketplace.

The trademark registrations of record - including SOF TEE for a soft vinyl golf tee, and SOF GEL for gel-filled shoe inserts - strongly suggest that SOF may be perceived as a variant of "soft." The Board concluded that, overall, SOF is likely to be perceived as a misspelling or variant of "soft." In other words, the difference between SOF and "soft" is not "sufficient to avoid encumbering use of the original word."

And so the Board affirmed the refusal.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.