TTAB Finds No Fraud in 2008 Specimen of Use for Section 1(a) Application Filed in 2007

The Board granted opposer Novozymes's motion for partial summary judgment, dismissing applicant Cleary Chemicals's counterclaim for fraud aimed at Opposer's specimen of use. Applicant claimed that opposer's predecessor-in-interest, in obtaining its registration, submitted a specimen of use dated 2008 while fraudulently stating that the specimen had been in use at least as early as the 2007 filing date of its underlying application. Novozymes Bioag, Inc. v. Cleary Chemicals, Inc., Opposition No. 91200105 (August 16, 2013) [not precedential].

On October 19, 2007, the original application was filed under Section 1(a) by opposer's predecessor-in-interest, but did not include a specimen of use or dates of use. In response to an office action, that applicant submitted a specimen of use dated 2008. Cleary Chemicals claimed fraud.

Opposer asserted that a specimen of use dated 2008 was submitted because the label that had been used in 2007 was discontinued when the size of the container for the goods had been changed. It further maintained that the 2007 and 2008 labels are substantially identical, differing only in the stated net weight and contents. And so it argued that no false statement was made because the 2008 specimen was an example of how the mark was used as of the 2007 filing date.

The Board found that opposer did not make a material misrepresentation. Both the 2007 and the 2008 labels display the mark TORQUE for the identified goods, and there are no material differences between the labels. The PTO does not require that a specimen of use be an archival example of the exact matter that was in use as of the application filing date. It routinely accepts specimens that were actually used subsequent to the filing date if the specimen is of the same type, in all material respects, as the matter that was in use at the appropriate time. Moreover, here the Examining Attorney did not question the specimen of use.

The Board found no material representation and it granted the motion for summary judgement as to the fraud counterclaim.

Read comments and post your comment here.

TTABlog note: The original application was entitled to a filing date, under 37 C.F.R. §2.21(a), even though filed under Section 1(a) without a specimen of use or dates of use. All that is required to secure a filing date are: (1) The name of the applicant; (2) A name and address for correspondence; (3) A clear drawing of the mark; (4) A listing of the goods or services; and (5) The filing fee for at least one class of goods or services.

Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability: Which Two of these Four Section 2(d) Refusals Were Reversed?

I once heard a TTAB judge tell an audience that the outcome of most Section 2(d) likelihood of confusion cases may be predicted just by looking at the marks and the identified goods/services, without more. Well, your would-be Honor, try your skills on these four appeals. Which two of the four refusals were reversed (counting the two BITES of BOSTON marks as one)?


In re Alison Raffaele Cosmetics, Inc., Serial No. 77325348 (August 16, 2013) [not precedential] [Refusal to register FRUTTA DI VITA for "Cosmetics and cosmetic preparations; Concealers; Cosmetic facial blotting papers; Cosmetic sun-protecting preparations; Cosmetic sun-tanning preparations," in view of the registered mark FRÜT A VIE for "Cosmetic creams for skin care; Cosmetic preparations for skin renewal; Skin and body topical lotions, creams and oils for cosmetic use; Wrinkle removing skin care preparations"].

In re Fairview Import Corp., Serial No. 85395780 (August 16, 2013) [not precedential] [Refusal to register the mark HERITAGE COLLECTION & Design, shown below, for "cases for eyeglasses and sunglasses; cases for spectacles and sunglasses; chains for spectacles and for sunglasses; eyewear, namely, sunglasses, eyeglasses and ophthalmic frames and cases therefor; frames for spectacles and sunglasses; lenses for sunglasses; spectacles and sunglasses; sunglass lenses; sunglasses" [COLLECTION DISCLAIMED] in view of the registered mark HERITAGE 1981for "eyewear, namely, sunglasses" [1981 disclaimed]].

In re Bites of Boston Food Tours, LLC, Serial Nos. 85376420 and 85397975 (August 15, 2013) [not precedential] [Refusal of BITES OF BOSTON and BITES OF BOSTON FOOD TOURS & Design (see below) for "entertainment and educational services, namely, conducting cultural and culinary guided walking tours of neighborhoods, restaurants, and specialty food shops" in view of the mark BITE OF SEATTLE for "organizing, conducting, and supervising food festivals"].

In re Victor Quintana, Serial No. 77916753 (August 13, 2013) [not precedential] [Refusal to register EQUILIBRIO WELLNESS and Design (see below) for "physical fitness training services; providing fitness and exercise studio services, namely, pilates instruction and training" and for "food nutrition consultation; health care services, namely, wellness programs," in view of the registered mark EQUILIBRIO for "providing information, counseling and consulting services in the field of exercise, and physical fitness via a global computer network, mobile phones, and wireless handheld computers; Providing information, counseling and consulting services in the fields of health, wellness, diet, nutrition, stress management, sleep management, medication, and vital sign monitoring via a global computer network, mobile phones, and wireless handheld computers; Personal lifestyle consulting services; providing information, counseling and consulting services in the field of personal lifestyle management via a global computer network, mobile phones, and wireless handheld computers"].

Read comments and post your comments here.

TTABlog note: In the BITES OF BOSTON logo, how many of those Boston landmarks can you name?

Text Copyright John L. Welch 2013.

TTAB Dismisses "GREAT SEATS" 2(d) Opposition Due to Failure to Prove Priority

A long-running battle over registration of the mark GREAT SEATS, after generating two precedential TTAB decisions (here and here), may have finally reached an end (at least at the Board). The TTAB dismissed this Section 2(d) opposition, involving identical marks for essentially identical services, because opposer failed to prove priority. Great Seats, Inc. v. Great Seats, Ltd., Opposition No. 91189540 (August 12, 2013) [not precedential].


Opposer attempted an end-run around the Board's earlier order refusing to allow opposer to take the testimony of 26 belatedly-identified witnesses, by submitting 23 written statements during its rebuttal case. The Board found the statements to be barred due to the earlier order, and also inadmissible as improper rebuttal.

On the key issue of priority, opposer relied on common law use of GREAT SEATS, as well as use analogous to trademark use. The Board deemed the mark GREAT SEATS to be merely descriptive (i.e., not inherently distinctive) of the parties' ticketing services, and so opposer had to show when the mark acquired distinctiveness as a source indicator for its services. Opposer established use as a service mark as of 1995, but attempted to show prior use analogous to trademark use, claiming that "Great Seats" was the nickname of its Danny Matta, the founding principle of opposer. However, there was no documentation showing use of GREAT SEATS prior to 1995, nor was there evidence that "a clear or widespread association exists between 'Great Seats' and opposer or Mr. Matta in the minds of the purchasing or potential purchasing public prior to opposer's first use of GREAT SEATS as a trademark in 1995." As to the nickname, the evidence was insufficient to show that there was anything more than a "de minimis public association of the term with the services offered by Mr. Matta."

Applicant submitted testimony and evidence (including 36 form statements from customers) showing first use on August 1, 1992, and acquired distinctiveness as early as 1993 or 1994.

Because opposer failed to prove priority, the Board dismissed the Section 2(d) claim.

Opposer also argued that during prosecution of its application, applicant made an insufficient showing under Section 2(f) to warrant approval of the application for publication. The Board pointed out, however, that these allegations address an ex parte examination issue that is not a proper ground for relief in an inter partes proceeding. "It would be manifestly unfair to penalize applicant for non-compliance with a requirement that was never made by an Examining Attorney."

In any event, applicant submitted evidence of acquired distinctiveness in this proceeding and opposer did not challenge its sufficiency.

Read comments and post your comments here.

Text Copyright John L. Welch 2013.

TTAB Affirms Section 2(c) Refusal of MARTIN & WEYRICH ROSSO ALLEGRO for Wine

I don't think we've seen a Section 2(c) decision since the OBAMA BAHAMA PAJAMAS case in 2010, but we've got one here. A divided panel of the Board affirmed a Section 2(c) refusal to register MARTIN & WEYRICH ROSSO ALLEGRO for wine, because the applicant failed to provide the required written consent to registration from Mary Martin Weyrich and David Weyrich, the persons named in the mark. Applicant argued that these two individuals impliedly consented to registration, but the panel majority disagreed. In re O’Neill Beverage Co., Ltd., Serial No. 85152684 (August 15, 2013) [not precedential].

Section 2(c), in pertinent part, provides that: “No trademark ... shall be refused registration on the principal register on account of its nature unless it ... Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent....”

Applicant did not dispute that the term MARTIN & WEYRICH identifies the two particular individuals. The evidence of record provided by Examining Attorney Linda M. Estrada showed that they were previous owners of, and public associated with, the Martin & Weyrich Winery of Paso Robles, California.

Applicant O'Neill Beverage acquired the assets of Martin & Weyrich Winery under a Receivership Order that included a Preliminary Injunction requiring the Winery to surrender possession of its collateral, including all trademarks. However, neither individual was a named party in the proceeding, nor a signatory of those documents.

The panel majority examining the relevant documentation and found that these documents did not meet Section 2(c)'s "clear requirement" that the two individuals expressly consent in writing to registration of the marks at issue here. The Board observed that ownership of a mark does not necessarily entitle the owner to register the mark. Section 2 of the Trademark Act sets forth certain bars to registration of a trademark by its owner. One of those bars is Section 2(c).

The panel majority distinguished the only case in which implied consent under Section 2(c) had been found: In re D.B. Kaplan Delicatessen, 225 USPQ 342 (TTAB 1985). There, Mr. Kaplan had personally signed the buyout agreement, had expressly agreed to transfer the particular mark in question, and had expressly agreed not to use the mark in the future. Given the clear language of Section 2(c), the panel majority found that Kaplan should be read narrowly and limited to its specific facts.

And so the Board affirmed the refusal.

Judge Seeherman, in dissent, would reverse because the documents, considered in their entireties, are sufficient to demonstrate consent. To read the documents otherwise "would essentially eviscerate the purpose of the Order and the Asset Purchase Agreement, and have a deleterious impact on  policy involving use of trademarks as collateral."

Read comments and post your comments here.

TTABlog query: What should or could the receiver and/or O'Neill Beverage have done to secure the right to registration?

Text Copyright John L. Welch 2012.

TTABlog September Road Trip: Ohio Double-Header at AOAIOIP in Cincinnati and Cleveland

The TTABlogger will hit the road next month, heading to the 23rd All Ohio Annual Institute on Intellectual Property (also known as AOAIOIP), first in Cincinnati (actually Covington, Kentucky) on September 26th, then in Cleveland on September 27th. My topic? "What's New and Exciting at the T.T.A.B.?" Lots of CLE credit. Brochure here.

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

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


In re Tri-Coastal Design Group, Inc., Serial No. 85302240 (July 25, 2013) [not precedential] [APPLE BROWN SUGAR for bath soaps, lip gloss, scented oils].

In re Douglas John Shuntich, Serial No. 85369587 (Auguest 5, 2013) [not precedential] [SUPERCOOLER for countertop and portable household refrigerator/freezer].

In re Rawlings Sporting Goods Company, Inc., Serial No. 85445340 (August 6, 2013) [not precedential] [NATIONAL PLAY CATCH MONTH for promoting public awareness of the dangers of childhood obesity].

Read comments and post your comments here.

Big TTABlog hint: They all came out the same way.

Text Copyright John L. Welch 2012.

Precedential No.35: TTAB Denies Protective Order, Requires Opposer to Answer Hundreds of Admission Requests

In this Section 2(d) opposition, when The Phillies were served with 507 requests for admission, they cried "foul" and proceeded to file a motion for a protective order under FRCP 26(c). They claimed that the sheer number of requests demonstrated that applicant made no effort to seek only proper and relevant discovery, and that the time to be spent and expenses incurred in responding would be unduly burdensome. Those arguments failed to get The Phillies to first base, the Board unsympathetically noting that The Phillies had pleaded more than two dozen marks as bases for the pleaded claim. The Board did, however strike 96 of the admission requests as duplicative or as seeking irrelevant information. The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149 (TTAB 2013) [precedential].

Applicant's requests for admission asked The Phillies to admit or deny whether they were selling or licensing specific goods or services under each of the pleaded marks. The Phillies admitted that the information sought was relevant, but they asserted that these requests were cumulative of other discovery requests, that responding thereto would require opposer to spend extensive time and effort, and that the burden on opposer outweighed any need of applicant for the information sought.

There was nothing improper in The Phillies filing a motion for a protective order rather than respond to the requests. The Board noted that the Trademark Rules and the Federal Rules of Civil Procedure vest the Board with "discretion to manage the discovery process in order to balance the requesting party's need for information against any injury that may result from discovery abuse."

A party seeking a protective order must establish good cause by providing "a particular and specific demonstration  of fact, as distinguished from stereotyped and conclusory statements." It must show that its ability to litigate will be hampered, not just that litigation will be more difficult.

The Board found applicant's requests to be neither improper individually, nor harassing or oppressive as a whole. The subject admission requests included 32 requests for each of fourteen marks (although The Phillies had pleaded 26 marks in all). Since Opposer chose to draft its notice of opposition broadly, the sheer number of requests (507) is not per se oppressive and unduly burdensome.

Applicant seeks information about opposer’s alleged use, and its requests for admission require opposer to admit or deny that it uses its pleaded marks on or in connection with specific pleaded goods and services. These requests are relevant to opposer’s allegations and claims as pleaded, as admitted by the parties, as they seek information about the scope of use, relatedness of the parties’ goods and/or the basis for potential counterclaims.

Nonetheless, applicant's requests did contain some duplication, and also some requests (directed to unpleaded registrations) that were outside the scope of discovery.

And so the Board denied the motion for the most part.

Read comments and post your comments here.

TTABlog note: BTW, when someone mentions "Robin Roberts," I think of the Phillies' pitcher, not the television newsperson.

Text Copyright John L. Welch 2013.

Precedential No. 34: Findng "AWSHIT WORKS" to be Scandalous, TTAB Affirms Section 2(a) Refusal

Aw, shucks! Here we go again. The Board affirmed a Section 2(a) refusal to register the mark AWSHIT WORKS, in standard character form, for baseball caps and other clothing items, finding the mark to be scandalous. Dictionary definitions uniformly deemed the term "shit" to be vulgar or offensive. In addition, newspaper articles and other media evidence demonstrated that the word "shit" is considered offensive. And a recent Supreme Court opinion opted for the designation "s***" in place of the word "shit." Consequently, the Board had "no trouble" finding a violation of Section 2(a)'s ban on immoral or scandalous marks. In re Star Belly Stitcher, Inc., 107 U.S.P.Q.2d 2059 (TTAB 2013) [precedential].

The Board observed that the PTO may prove scandalousness by establishing that a mark is "vulgar." When it is clear from dictionary definitions alone that the mark is vulgar to a substantial composite of the public, the mark is unregistrable.

Here the evidence included a definitions of " aw shit" from the Urban Dictionary, an online slang dictionary whose definitions are submitted by visitors to the website. The Board recognized the inherent problems regarding the reliability of such a resource, but decided that it should be treated like the Wikipedia website: definitions will be accepted from the Urban Dictionary as long as the non-offering party has an opportunity to rebut the evidence. Here, Examining Attorney Linda Lavache submitted the Urban Dictionary definition at an early stage, and applicant failed to provide any alternative meanings of "aw shit."

Much of the media evidence related to former President George W. Bush's use of the word "shit" in an off-the-cuff remark. Many newspapers declined to print the word in full, and CBS bleeped the word from its newscast. Others stated that they would not normally print or broadcast the word, but did so in this case because it was said by the President.

In light of the evidence, the Board found that "aw shit" is an interjection that is scandalous or vulgar to the conscience of a substantial composite of the general public. The addition of the word WORKS to AWSHIT did not diminish the vulgarity of the mark.

Applicant contended that there are much more offensive trademarks already on the Register, listing five in its brief [I resist the temptation to call it a "s*** list" - ed.]. However, its list was both untimely and unaccompanied by copies of the registrations. Moreover, and most significantly, the Board is not bound by the actions of PTO Examining Attorneys in other cases.

The Board pointed out that applicant is not precluded by this decision from selling its merchandise under the proposed mark, "or from uttering the vulgar portion of its proposed mark upon its receipt of this decision." But as the CAFC stated in In re Fox, 105 USPQ2d 1247, 1252 (Fed. Cir. 2012), applicant "will be unable, however, to call upon the resources of the federal government in order to enforce [its] mark."

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

Precedential No. 33: TTAB Cancels ZILLA Registration, Section 10 Violated by Assignment of ITU Application to Parent

In this complicated, consolidated proceeding, Central Garden opposed Doskocil's applications to register the marks PETZILLA and DOGZILLA & Design, and petitioned to cancel Doskocil's registration for DOGZILLA in standard character form, for pet toys, claiming priority and likelihood of confusion with its twice-registered mark ZILLA for pet food and pet treats. Doskocil counterclaimed for cancellation of Central's registrations, one due to an allegedly improper assignment of Central's underlying intent-to-use application, and the other due to a likelihood of confusion with Doskocil's previously-used DOGZILLA mark. In an instructive decision, the Board granted Doskocil's first counterclaim for cancellation (improper assignment), dismissed its second counterclaim (lack of interest), and dismissed Central's oppositions and petition for cancellation (lack of priority). Central Garden & Pet Company v. Doskocil Manufacturing Company, Inc., 108 USPQ2d 1134 (TTAB 2013) [precedential].

Priority: Because counterclaims were asserted against Central's pleaded registrations, and Doskocil's registration is subject to a petition for cancellation, each party must prove priority with regard to its likelihood of confusion claim(s). Each party may rely on the filing date of a particular (valid) application as a constructive first use date.

Central asserted priority based on the filing date (December 7, 2005) of the intent-to-use application that ultimately issued as its '521 registration for ZILLA, and that date would have sufficed, since the earliest date that Doskocil could rely on was April 4, 2006, the application filing date for its registered DOGZILLA mark. But Doskocil counterclaimed to cancel the '521 registration due to an allegedly improper assignment of Central's application in violation of Section 10 of the Trademark Act. So the Board first put aside the constructive first use date of that registration and instead looked to see whether Central could otherwise establish priority - even if its registration were cancelled.

In attempting to prove actual use of ZILLA prior to Doskocil's constructive first use date, Central relied on a "teaser ad" and a "name validation study" under a theory of use analogous to trademark use." The Board observed that "even before proper trademark use commences, advertising or similar pre-sale activities may establish priority if they create the necessary association in the mind of the consumer."

Simply put, to claim priority based on analogous use, a party must show that its putative mark essentially functioned as a trademark - identifying the source of the goods in the mind of the consumer - notwithstanding that technical trademark use, such as use on or in connection with the goods, had not commenced.

The Board found Central's evidence insufficient. The use of ZILLA as a proposed mark with three other marks in a survey was not the type of use that would form the required source connection in the mind of the public. Moreover, given the small number of respondents (83) and the vaguely-described goods ("reptile-related products"), Central's survey fell short.

The "teaser ad" featured a "mysterious reptilian eye, ominously peering out of a large dinosaurian egg that is breaking open." The ZILLA logo appeared prominently in a corner of the ad, and the phrases "The Reign Begins in September" and "www.zilla-rules.com" in another corner. The Board found two problems with this advertisement: the date of publication was unclear, and no mention was made of any goods. At most, it suggested that ZILLA was to be used as a mark for something to do with reptiles. Such an indefinite association of a mark with a general field of commerce is insufficent to establish analogous use.

The Board therefore found that Central was not entitled to priority based on analogous use, and it concluded that, if Doskocil's counterclaim to cancel the '521 registration were successful, Doskocil has priority of use. If not, Central had priority.

Assignment: Doskocil maintained that Central's '521 registration should be cancelled because the underlying intent-to-use application was improperly assigned before an allegation of use was filed, in violation of Section 10 of the Act. Under Section 10, the Board noted, an intent-to-use application may not be transferred to another unless the assignee also acquires at least that part of applicant's business to which the mark pertains. An improper transfer results in a void application, and any resulting registration must be cancelled. Clorox Co. v. Chem. Bank, 40 USPQ2d 1098, 1106 n.8 (TTAB 1996).

The application at issue was filed by All-Glass Aquarium Co., a wholly-owned subsidiary of Pennington Seed, which was in turn a wholly-owned subsidiary of Central. While that application was pending, and prior to the filing of an allegation of use, All-Glass assigned the application to Central. The recorded assignment of the mark constituted the entire agreement between All-Glass and Central regarding transfer of the application; the assignment was not part of a larger transaction. Central was not the successor to All-Glass; All-Glass continued in the same business after the transfer as before, including the production and sale of products under the ZILLA mark. The Board had no doubt that this transaction violated Section 10.

[T]he only thing which was exchanged in the transaction was the mark and the 'goodwill of the business appurtenant to and connected with the Mark,' in return for which All-Glass recited receipt of nominal consideration. In particular, neither All-Glass itself, nor the 'portion thereof, to which the mark pertains, Trademark Act Section 10(a)(1), was transferred from All-Glass to Central along with the ZILLA mark.

Although Central feebly contended that the Board's reading of Section 10 was "hypertechnical," the meaning of the statute was "plain and clear" to the Board.

The Board distinguished this case from Amazon v. Wax, in which Wax and Freeland had jointly filed an intent-to-use application, but Freeland assigned his interest to Wax prior to the filing of an allegation of use. That was not an impermissible transaction, the Board found, because there was no transfer to "another," since Wax was an original applicant and became the sole applicant. The transaction was more a change of entity type than an assignment of a mark from one unrelated party to another.

Here, All-Glass and Central were distinct legal entities. The Board recognized that Central owned Pennington, and Pennington owned All-Glass. But each of the companies counts as a "person" under the Trademark Act.

Central contended that Congress did not intend such a result, but Central did not argue that the language of Section 10 is unclear. When the statutory language is clear on its face, "it is usually inappropriate to delve into the legislative history in search of another meaning." If the intent of Congress was to prohibit "trafficking" in intent-to-use trademark applications, perhaps Congress could have drafted narrower language, but the Board has "no authority to tell Congress how to accomplish its goals."

The Board concluded that the assignment violated Section 10, and therefore Central's '521 registration must be cancelled.

Likelihood of Confusion: With the '521 registration cancelled, Central's three likelihood of confusion claims failed. There remained Doskocil's Section 2(d) counterclaim against Central's '833 registration. This was a perfunctory, hypothetical claim in case the Board found that Doskocil had priority, but Doskocil argued at length that confusion was not likely. The Board concluded that, "if the senior party does not believe there to be a likelihood of confusion, we need not and should not opine on this purely hypothetical question.

And so, as to likelihood of confusion, the Board chose to "leave the parties as we found them, without reaching the merits of either party's claim."

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

Finding Living Plants Unrelated to Furniture Fabrics, TTAB Dismisses SUNBRELLA Opposition to SUN BRELLA'S

The Board dismissed this opposition to registration of the mark SUN BRELLA'S for "living plants," finding the mark not likely to cause confusion with the registered mark SUNBRELLA for fabrics for indoor and outdoor furniture. Opposer claimed that its mark is famous for Section 2(d) purposes, but its proofs fell short. [That put the kibosh on Opposer's Section 43(c) dilution claim]. The marks were close enough, but Opposer failed to convince the Board that the goods are complementary or sufficiently related. Glen Raven, Inc. v. Amerinova Properties, LLC, Opposition No. 91192496 (July 23, 2013) [not precedential].

Fame?: The Board found opposer's marks to be inherently strong, noting that they are registered on the Principal Register without a 2(f) claim. Moreover, according to the Board, the pleaded registrations, "being five years old, are incontestable and no longer to subject to challenge under Trademark Act Section 2(e)." [TTABlog comment: I maintain that "incontestability" is irrelevant in the TTAB context: regardless of whether the registrant has filed a Section 15 declaration to make the registration incontestable, the five-year statute of limitations of Section 14 prohibits a challenge under Section 2(e).]

The mark SUNBRELLA is also commercially strong, having been in use for more than 50 years on various types of fabric. Sales and advertising figures were substantial, and the mark has been extensively promoted. However, there was no direct evidence of awareness of the mark by the ultimate consumer. Since opposer does not sell to end users, that type of evidence would have been particularly important here: those users are the only class of customers that overlap with those of applicant. Nonetheless, SUNBRELLA is a strong mark among purchasers of outdoor furniture, but it is not well-known or famous.

The marks; Not surprisingly, the "strong visual and aural resemblance" of the marks, and their similar connotations and commercial impressions led the Board to conclude that this duPont factor favored opposer.

The Goods: The evidence "overwhelmingly" suggested that "in all but a very limited arena, the marketing channels and classes of consumers are so disparate that the marks will not be encountered by the same persons under similar buying conditions." And even in the limited arena of the "outdoor room" market, the Board found confusion unlikely.

Opposer argued that plants and furniture are sold together as part of "the outdoor room." According to opposer, these days the outdoor room is "more than just a chair and a Weber grill." Retailers position plants next to furniture in complementary fashion.

The Board observed that the test for determining whether goods are complementary is not that the goods are used together, but whether their use is complementary. Here, "[t]here is nothing in the evidence to suggest that live plants and fabrics, including those that are used in the manufacture of outdoor furniture and umbrellas, are complementary in nature and thus related." The Board concluded that, based on the evidence of record, the subject goods are not complementary.

Nevertheless, the question is whether the consuming public may think the goods to be related vis-a-vis the origin of the goods. Opposer's advertising and third-party media depicting or discussing outdoor rooms failed to suggest that a manufacturer of fabrics (or even a manufacturer of furniture) would be a source of live plants. Likewise, website evidence provided by opposer did not demonstrate that the purchasing public would perceive the goods as related. And the three third-party registrations submitted by opposer (two from the same owner) had very little probative value.

Opposer contended that landscape architects or designers offer outdoor room design, whereby they will purchase live plants and furniture; however, nothing in the record "suggests that this class of professional consumer purchases applicant's plants, or that, even if such customer did, he or she would be confused as to the source of origin of the goods."

Balancing the relevant duPont factors, the Board found confusion unlikely, and it dismissed Opposer's Section 2(d) claim.

Dilution: Because Opposer failed to prove fame for purposes of Section 2(d), it perforce did not meet the higher standard for fame under Section 43(c), and so the Board dismissed opposer's dilution claim as well.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

Coach Loses Section 2(d) Design Mark Battle

Coach Services, Inc. opposed an application to register the mark shown to the left below, for eyewear and related goods, claiming a likelihood of confusion with the two marks shown to the right, for admittedly identical goods. Coach fumbled the ball on several evidentiary issues, but the case boiled down to the similarity or dissimilarity of the marks. Coach lost. Coach Services, Inc. v. E&D Trading, Inc., Opposition No. 91203818 (August 7, 2013) [not precedential].

Coach submitted copies of seven certificates of registration, but the copies did not state current status or title. The parties stipulated to Coach's "priority of use" of its marks, but not to its ownership of the registrations. Registrations may be made of record in any of several ways (see Rule 2.122(d)(2) and TBMP Section 704.03(b)(1)(A), but Coach followed none of them,  and so its registrations were not in evidence.

Opting for the Board's ACR procedure, the parties proceeded on a stipulated record, with each party relying on affidavits or declarations in lieu of testimony. Opposer Coach's affidavit related to use of the pleaded marks by an entity called "Coach, Inc.," not Opposer Coach Services, Inc. Fortunately for Opposer, applicant stipulated to priority and to the nature of opposer's goods. The Board found the relevance of Coach's affidavit to be "uncertain," but it proceeded as if the assertions in the affidavit "related to opposer in all ways," noting that this assumption did not alter its ultimate decision.

Because the goods of the parties are identical (so stipulated) the Board stated that it must presume that the goods of the parties move through the same, normal channels of trade to the same classes of consumers. [TTABlog query: that would be true if Coach's registrations were in evidence, but since it was relying on common law rights, why should the Board make such an assumption? Why didn't it look to Coach's actual channels of trade to see if the actual channels overlapped with the normal channels for applicant's goods?]

Coach claimed that its two design marks are famous for purposes of Section 2(d), but its proofs fell short. It relied on strong sales, extensive advertising expenses, and tens of millions of website hits. However, Coach provided no context for its data - for example, comparison with others in the field - and no direct evidence of consumer recognition of its marks. While its indirect evidence weighed in favor of a finding of likely confusion, it was not sufficient "to demonstrate actual fame or an objectively high level of consumer recognition."

Turning to the marks, the board observed that applicant's mark would likely be pronounced "DP" [i.e, "dee-pee" - ed.]. Opposer's marks, if pronounced (which is doubtful) would sound substantially differently: they would sound like "C" or "CC" or "CCCC." ["see," or "see see," or "see see see see" - ed.].

Coach argued that the marks are "substantially identical" and "strikingly similar" because they both create a "circular aesthetic" with the sides of the letters being much fuller than the tops and bottoms. Coach urged the Board to consider applicant's mark next to a cropped image of its marks, thusly:

The Board, however, pointed out that the "cropped" version of Coach's mark was not pleaded, and there was no evidence of use of that cropped form. Instead, the evidence showed use by Opposer only in the four or eight "C" patterns, or as a repetitive pattern with innumerable iterations of the marks.

The Board saw "some similarity" in the oval shapes in the marks, but there are many differences. "[W]hile applicant's mark has the character of a combination of letters, opposer's marks have the character of abstract designs, albeit composed of iterations of the letter C in various orientations and reversals."

Although Coach might "in another context, have occasion to object to any use by applicant of its mark in a repeating pattern," there was no evidence that applicant had ever done so.

In sum, the Board found the marks to be dissimilar in appearance, meaning, sound, and overall commercial impression. It therefore dismissed the opposition.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability on These Three Section 2(d) Appeals

I once heard a TTAB judge tell an audience that the outcome of most Section 2(d) likelihood of confusion cases may be predicted just by looking at the marks and the identified goods/services, without more. Well, your would-be Honor, try your skills on these three refusals. Hint: only two of them came out the same way.



In re W.T. Adams & Co., Application Serial No. 85015200 (July 25, 2013) [not precedential]. [Refusal to register ADAMS for "commercial and residential real estate agency services," in view of the registered mark SMITH ADAMS for "real estate brokerage services"],

In re Catherine Hawkins, Serial No. 85587596 (August 8, 2013) [not precedential]. [Refusal of SWEETPEATOAD, in the stylized form shown in the specimen below, for "handmade hats and scarves," in light of the registered mark SWEET PEA for various clothing items, including hats and scarves].

In re Lil Fats, Inc. dba Coast 2 Coast Mixtapes, Serial No. 85404979 (August 8, 2013) [not precedential]. [Refusal of COAST 2 COAST for "arranging and conducting nightclub entertainment events in the nature of 'music industry mixer' networking events; arranging and conducting nightclub entertainment events in the nature of live competitions by rap, hip-hop, and urban artists and DJs; providing a website for entertainment purposes where users can view and submit songs, videos and photos featuring musical bands and artists," in view of the registered marks COAST2COAST for "entertainment services, namely, a continuing variety show featuring live audiences broadcast over television, satellite, internet, audio and video media," and COAST TO COAST BLUES BAND for "entertainment, namely, live performances by a musical band" [BLUES BAND disclaimed]].

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

Precedential No. 32: TTAB Sustains Opposition to Pipe Boot Design, Finding it De Jure Functional

H & C Milcor sought to register a product configuration mark for "pipe flashing for use in sealing openings for pipe," but AS Holdings opposed on the grounds of de jure functionality under Section 2(e)(5) and, in the alternative, lack of acquired distinctiveness. In a relatively straightforward but instructive ruling, the Board sustained the opposition on both grounds. AS Holdings, Inc. v. H & C Milcor, Inc., f/k/a Aquatico of Texas, Inc., 107 USPQ2d 1829 (TTAB 2013) [precedential].

The Board first considered Opposer's contention that Applicant impermissibly amended its original drawing to that shown above, materially altering the mark. The Board pointed out, however, that such allegations do not constitute a valid ground for opposition. Determinations made by an Examining Attorney regarding examination requirements, such as the acceptability of an identification of goods or of the drawing of the mark, do not constitute statutory grounds for refusal and therefore cannot form the basis of an inter partes challenge to registration.

Functionality: The Board applied the CCPA's Morton-Norwich analysis, recently cited by the CAFC in In re Becton, Dickinson & Co., 102 USPQ2d 1372 (Fed. Cir. 2012).

Under the first Morton-Norwich factor, a utility patent that claims the features of a product design is "strong evidence that those features are functional." Here, applicant's predecessor owned a patent for a pipe boot, which patent claimed a boot having annular step portions of progressively small diameter, the boot being severable along its top edge in order to match the diameter of the pipe. In other words, the cone of the pipe boot may be cut off to fit the particular pipe to be sealed. A number of third-party patents also disclosed the utility of the stepped-cone configuration.

Moreover, another patent demonstrated that the tapered, or "frusto-conical" shape of the pipe boot is functional because it allows the user to cut the pipe boot to the appropriate size smaller than the pipe so that the pipe boot securely seals around the pipe.

The remaining features of the design - a circular rib near the top of each step followed by a short vertical surface - are also functional, as disclosed in third-party patents: the rib arrangement acts as a cutting guide and as a barrier to keep clamps in place.

As to the second Morton-Norwich factor, applicant's catalog touted the utilitarian feature of the pipe boot configuration: "[t]he conically shaped steps ... will securely seal all pipes and the large double thick molded rib at the top of each step offers supreme tear resistance and reinforcement as well as a cutting guide." Applicant conceded that its brochures attributed a cutting guide and "clamp-stopping" function to the ribs. Thus applicant's own advertising "extols specific utilitarian advantages of the applied-for design and is strong evidence that the matter sought to be registered is functional."

As to the third and fourth factors, there was limited evidence regarding alternative designs, and the parties disagreed as to the cost and simplicity of manufacture of the applied-for design. The Board noted that even if the applied-for design is more expensive or more difficult to make, that does not mean it is not de jure functional.

The Board concluded that the overall design of applicant's pipe boot is dictated by utilitarian concerns and is therefore unregistrable under Section 2(e)(5).

Acquired Distinctiveness: For the sake of completeness, the Board considered opposer's claim that, even if the applied-for design were not barred by Section 2(e)(5), it lacked the acquired distinctiveness necessary for registration of a product configuration mark.

An application that seeks registration under Section 2(f), once approved for publication, enjoys a presumption that the examining attorney found that applicant had made a prima facie case of acquired distinctiveness. When that application is challenged in an inter partes proceeding, the challenger has the initial burden to establish prima facie, on the record evidence, that applicant has not met its ultimate burden of showing acquired distinctiveness. Applicant may find it necessary to submit additional evidence to counter the plaintiff's showing.

The Board found that opposer met its initial burden in challenging the Section 2(f) evidence submitted by applicant during prosecution.

That is, based on the entire record, including the patents submitted by opposer and applicant’s own statements and catalog highlighting the utilitarian aspects of the applied-for design, there is ample evidence supporting a prima facie showing that consumers will view the pipe boot design as a non-distinctive product design, rather than a design that has acquired distinctiveness and functions as an indicator of the source of the product. 

Applicant failed to overcome the evidence submitted by opposer. For a product design, applicant must show that "the primary significance of the design in the minds of consumers is not that of the product itself, but rather is the source of that pipe boot in order to establish acquired distinctiveness."

In its application, Applicant Milcor claimed substantially exclusive and continuous use for more than five years, but the weight to be accorded this type of evidence depends on the facts of each case. In light of the evidence showing the utilitarian nature of the design, more evidence is needed.

Applicant also relied on sales and advertising figures, but the sales figures were devoid of context, like market share, and therefore had little or no probative value. The advertising figures were not limited to the subject pipe boot, and in any case they were relatively modest. There was no evidence of "look for" advertising that pointed to any unique design features; when particular features were called out by applicant, it was to tout their utilitarian purpose or advantages.

The Board concluded that applicant had failed to establish acquired distinctiveness.

Read comments and post your comments here.

Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability: Are EWETOPIA and UTOPIA Confusable for Yarn?

Examining Attorney Robert J. Struck refused registration of the mark EWETOPIA for "knitting yarns," finding it likely to cause confusion with the registered mark UTOPIA for "handknitting yarn." Applicant argued that the existence of several “topia” marks in this field narrow the scope of protection to be accorded the registered mark. How do you think this came out? In re T& C Imports, Serial No. 85570200 (July 25, 2013) [not precedential].

The goods are legally identical because applicant's "knitting yarns" encompass the goods of the cited registration. Since there are no limitations in the identification of goods, the Board must presume that they travel through the same, normal, channels of trade to the same classes of consumers. Although consumers may exercise some care in choosing yarn, even sophisticated consumers are not immune to source confusion.

As to the marks, the Board observed once again that when the involved goods are legally identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. Here, the marks are phonetically equivalent and, despite the double entendre in applicant's mark, "one of the perceived meanings, utopia, remains identical to registrant's mark." The Board concluded that the similarities between the marks outweigh their differences.

As to third-party "topia" marks, applicant relied on six registrations, but only one was for goods related to yarn. Moreover, there was no proof of the extent of use of these six marks, and no evidence that consumers were accustomed to seeing them. Therefore, the evidence was insufficient to prove the cited mark to be weak; but in any event, even weak marks are entitled to protection when the goods are identical and the marks at issue are similar.

Applicant pointed to the lack incidents of actual confusion, but the Board noted that such an assertion carries little weight in an ex parte context, where the registrant has no opportunity to provide evidence.

Finally, applicant maintained that the cited mark had been abandoned, but the Board refused to hear this impermissible collateral attack on the cited registration. 

And so the Board affirmed the refusal.

Read comments and post your comments here.

TTABlog note: Well, how did you do? Don't be sheepish! Would you have appealed?

Text Copyright John L. Welch 2013.

TTAB Summarily Dismisses Two Fraud Claims in INTELLOGY Fracas

In this opposition to registration of the mark INTELLOGY for golf-related computer software, Applicant Intelligolf alleged that Opposer's registration for the identical mark (for website hosting services) was obtained by fraud. Opposer moved for summary judgment on Intelligolf's four fraud counterclaims, and the Board knocked out two of them, while two survived because a genuine dispute of material fact remained as to those two. Intellogy Solutions, LLC v. IntelliGolf, Inc., Opposition No. 91198579 (July 29, 2013) [not precedential].

Initial declaration: Itelligolf's first counterclaim charged that the initial declaration that accompanied Opposer's application for registration was fraudulent because opposer knew of applicant's superior rights, or that opposer had sufficient information to require further investigation.

The Board pointed out that an applicant is under no obligation to investigate potential conflicting uses, and has no duty to "investigate specific information such as when a third party may have started using a mark." [Ignorance is indeed bliss! - ed.].

Moreover, if another's rights in a mark are not known by applicant to be superior or clearly established - for example by court decree of prior agreement between the parties - then the applicant's averment that it is entitled to registration is not fraudulent.

Here, Opposer admitted that it was aware that Intelligolf owned the domain name "intellogy.com," but maintained that it was not aware that Intelligolf had any trademark rights in INTELLOGY. The web address www.intellogy.com directed one to the Intelligolf website. A search by opposer failed to uncover any trademark use of INTELLOGY. [The Board noted that opposer's knowledge of the domain name did not by itself require disclosure to the PTO].

The Board observed that none of the goods offered at the applicant's Intelligolf website were offered under the trademark INTELLOGY. The Board observed that "the purely technological function of the intellogy.com URL directing users to applicant's Intelligolf website is not evidence of trademark use."

Moreover, in a UDRP decision between the parties, stated that applicant did not "appear to use that mark [INTELLOGY] on the home page of [its] website."

The Board therefore found no genuine dispute of material fact on this issue, and is summarily dismissed this first counterclaim.

Date of First Use and Specimen of Use: In its second counterclaim, applicant alleged that opposer's dates of first use were false. The Board pointed out, however, that a false date of use is not fraudulent or otherwise fatal as long as there has been some use of the applied-for mark in commerce prior to the application filing date. So this portion of the second counterclaim was dismissed.

The other part of this counterclaim was directed to opposer's specimen of use, a press release rather than an advertisement. This does not constitute fraud, said the Board, because the Examining Attorney could not have been misled by what was apparent on the face of the document. And so this portion of the second counterclaim was dismissed as well.

Section 8 & 15 Declaration: The third and fourth fraud counterclaims alleged that Opposer's mark was not in continuous use for the identified services during the five-year period prior to the filing of the Section 15 Declaration, and was not in use when the Section 8 declaration was filed. The Board found that the existence of genuine issues of material fact precluded the granting of summary judgment on these two counterclaims.

And so the Board ordered that proceedings be resumed.

Read comments and post your comment here.

TTABlog comment: My proposed early "Rogers" hearing would have gotten rid of these two counterclaims right off the bat. [See last paragraph of this TTABlog post.]

Text Copyright John L. Welch 2013.

WYHA? TTAB Finds CASINO INFO Generic and/or Merely Descriptive of ... Guess What?

The Board affirmed two refusal of CASINO INFO for, inter alia, the provision of a website featuring information on gaming and entertainment, finding the term to be generic, or alternatively, merely descriptive under Section 2(e)(1). Applicant appealed, but it rolled snake eyes in the TTAB casino. In re Nortech Investments Ltd., Application No. 85080867 (July 10, 2013) [not precedential].

Mere Descriptiveness: The Board dealt first with the Section 2(e)(1) refusal. Applicant did not assert inherent distinctiveness but instead claimed acquired distinctiveness under Section 2(f) and transferred distinctiveness from two prior registrations.

First, applicant claimed that because of its claim of five years of continued and substantially exclusive use, the applied-for mark was entitled to a "presumption of acquired distinctiveness" under Section 2(f). Not so, said the Board. Section 2(f) states that the PTO "may accept" five years of use as prima facie evidence of distinctiveness. Here, website pages and other evidence submitted by Examining Attorney Linda Lavache established the "highly descriptive nature" of the mark, and consequently "it would not be appropriate to accept applicant's five years of use as prima facie evidence of distinctiveness in this case."

As to the prior registrations, Rule 2.41(b) provides that, "[i]n appropriate cases, ownership of one or more prior registrations on the Principal Register ... of the same mark may be accepted as prima facie evidence of distinctiveness." Here, the first registration was on the Supplemental Register, and so did not qualify under Rule 2.41. The second registration, for the word and design mark shown above, covered broadcasting and netcasting services and included a disclaimer of CASINO INFO. Obviously it cannot be used to established distinctiveness of the disclaimed phrase. Moreover the mark and services were different from the application at hand.

Finally, applicant claimed acquired distinctiveness from its actual use of CASINO INFO in commerce for 13 years. However, there was little detail in the record regarding applicant's use of the mark, and no context in which to evaluate the little detail that was provided. The Board found no probative value in the fact that CASINO INFO appears first in a Google search result listing, since the Board is "not privy to the algorithm by which Google selects and displays the results of a search." The Board noted the evidence that others are using CASINO INFO to describe their similar services, demonstrating that CASINO INFO does not identify applicant as the sole source of services under the CASINO INFO brand name.

Genericness: The Board found the genus of services to be adequately defined by the recitation of services in the subject application. Dictionary definitions and webpages established the generic use of CASINO INFO in connection with the provision of information about gambling. Although the evidence does not contain a definition of "casino info," it demonstrates, under American Fertility, that CASINO INFO is "widely used for exactly the same purposes as applicant."

And so the Board affirmed the genericness refusal.

Read comments and post your comments here.

TTABlog note: Well, would you have appealed?

Text Copyright John L. Welch 2013.

EDGECRAFT Proves Actual Confusion, TTAB Cancels EDGEWARE Registrations for Sharpeners

The Board granted petitions for cancellation of three registrations for the mark EDGEWARE for electric knife sharpeners; electric scissor sharpeners; power operated sharpeners; hand tools, namely, knife sharpeners; hand-operated sharpening tools and instruments; knife sharpeners; sharpening rods; sharpening stones; whetstones; and hand operated kitchen tools, namely, graters, slicers, choppers and mandolins for cutting food, finding a likelihood of confusion with the registered mark EDGECRAFT for knife sharpeners and other household goods. The Board's opinion includes a lengthy discussion of actual confusion, the "centerpiece" of Petitioner's case. Edgecraft Corporation v. Smith’s Consumer Products, Inc., Cancellation Nos. 92052940, 92054092, and 92054104 (July 12, 2013) [not precedential].

The Board reviewed Petitioner's actual confusion evidence "with a critical eye, not only with respect to the problem of hearsay but also as to the witnesses competence to testify regarding the incidents and as to the degree of detail with which the incidents are described." Some of the purported incidents of confusion lacked sufficient detail to be probative. Other incidents did not demonstrate actual confusion, "but rather perspicacious awareness that respondent and petitioner's brand are different." And others were mere "slips of the tongue" by persons fully aware of the difference between the brands.

However, several incidents were probative, to varying degrees, of actual confusion in the marketplace. One involved a store manager for a customer of both parties, who while setting up an in-store demonstration of Petitioner's products, mistakenly displayed Respondent's products. In a second incident, a UK distributor attending a trade show in Chicago was confused in believing that Petitioner had two booths at the show, when one was the EDGECRAFT booth and the other the EDGEWARE booth. In a third, an on-line retailer mistakenly displayed one company's products under the other's mark.

The Board found that the factor of actual confusion weighed in favor of Petitioner.

With regard to the other duPont factors, the Board found the involved goods to be identical or related. As to the identical goods, the Board presumed that they travel through the same channels of trade to the same classes of customers. The parties, in "intense direct competition," stipulated that they share some of the same trade channels and advertise in some of the same media. This factor favored Petitioner.

As to customer sophistication, the involved goods were sold to a wide range of customer types and in various marketing environments. The Board found this factor to be neutral.

As to the strength of Petitioner's mark, the evidence of marketplace strength weighed in favor of Petitioner. Third-party registrations demonstrated that "there is a weakness in the source-indicating power inherent in the designation EDGE in the field of sharpeners." The Board also noted that EDGE is "highly suggestive in the context of sharpening instruments, inasmuch as it describes an ultimate purpose of the goods, i.e., to improve the cutting edge of a knife or other cutting tool." The number of similar marks in the marketplace weighed against a finding of likely confusion.

As to the marks, the Board noted that the initial element of a mark may be more strongly impressed upon the minds of consumers than the remainder of the mark. Here, "craft" and "ware" are words of relatively low distinctiveness, and neither substantially changes the suggestive meaning of EDGE. The Board concluded that the marks are more similar than dissimilar in appearance, sound, meaning, and commercial impression.

Balancing the relevant duPont, the Board found confusion likely, and it granted the petitions for cancellation.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability: Is "I BANGED BETTY" Scandalous or Immoral Under Section 2(a)?

The PTO refused registration of the mark I BANGED BETTY for "bathing suits for men; men’s and women’s jackets, coats, trousers, vests; men’s underwear," deeming it to be scandalous or immoral under Section 2(a). Applicant argued that "bang" has many non-vulgar meanings, and also (somewhat contradictorily, the Board noted) that "bang" has become a common and accepted synonym for you-know-what. What do you think? In re Betty Bangs, LLC, Serial No. 85386222 (July 9, 2013) [not precedential].

The Board affirmed the refusal. Because this is a family blog, we will not go into the details of the Board's reasoning. Suffice it to say that the Board found the applied-for mark to be "vulgar to a substantial composite of the general population."

Applicant pointed to its existing registration of BETTY BANGS for bathing suits, and to several third-party registrations, but the Board noted that "[n]one of these registrations comprises even the term 'banged,' much less a vulgar declarative sentence in a form similar to applicant's mark." Moreover, as we know, each case must be decided on its own merits and the Board is "not bound by the allowance of prior registrations, even if they have some characteristics similar to the application."

Read comments and post your comments here.

TTABlog comment: Well, how did you do? For a full discussion of the application of the "immoral or scandalous" bar of Section 2(a), see Anne Gilson LaLonde and Jerome Gilson, "Trademarks Laid Bare: Marks That May Be Scandalous Or Immoral," 101 Trademark Reporter 1476 (September-October 2011). [pdf here].

Text Copyright John L. Welch 2013.

TTAB Reverses Section 2(e)(5) Functionality Refusal of "3-click" Sound Mark for Eyeglasses

The Board reversed the PTO's Section 2(e)(5) refusal to register on the Supplemental Register, a sound mark for "eye glasses; optical glasses; [and] sun glasses," the mark comprising "a series of three, regularly spaced, repeated clicks, wherein the clicks resemble the sound of a small object striking another metal object." [specimen .mpeg here]. The Board found that the clicks, made by the eyeglass hinges, were not 'essential" to making a resistance hinge, and therefore were not de jure functional. In re Sutro Product Development, Inc., Serial No. 77418246 (August 1, 2013) [not precedential].

The Examining Attorney maintained that the proposed mark provides a functional advantage and therefore is barred from registration by Section 2(e)(5):

Because applicant's goods involve a ratcheting mechanism that involves metallic components rubbing against each other to provide resistance, the sound produced is merely a natural byproduct of the friction created by the functional hinge, and any similar design will naturally produce a similar or even identical sound. *** [E]liminating such a sound would require an additional step in the manufacturing process...."

The Examining Attorney also pointed to applicant's advertising, claiming that it touted the functionality of the proposed mark by stating that its "Three Click Hinge" is "10X stronger than a conventional hinge."

The Board noted that the PTO did not claim any functionality in the "click" sound itself, or the number of clicks. Instead the PTO argued that the clicks were a "natural byproduct" of a functional feature, and therefore cannot be registered. The Examining Attorney could cite no case law in support of his "byproduct" theory. However, if the "byproduct" sound were "essential" to the use or purpose of the goods, then it would be de jure functional, under the traditional analysis. [TTABlog comment: if a sound were a natural byproduct of a de jure functional feature, then I think the sound too would be de jure functional.]

The Board, as usual, applied the Morton-Norwich factors. Two third-party utility patents disclosed resistant eyewear hinges, neither mentioning sound. The absence of any utility patent covering the sound sought to be registered is, according to the Board, a factor in applicant's favor. [TTABlog comment: Does this mean that an Examining Attorney must conduct a thorough patent search lest the first factor be weighed in favor of the applicant? Would a party in an ex parte proceeding face the same burden? Does the Board realize how difficult and expensive a patent search can be?]

As to applicant's advertising, the Board found no statement that applicant's hinge is superior because of any feature that creates sound.

The designer/inventor of the three-click hinge provided a detailed declaration averring that he could have designed a hinge that made no appreciable sound, while still providing the hinge's other features. Moreover, it would not add cost to create variations with no sound, or a different number of clicks.

Applicant agreed that the 3-click sound is a "natural byproduct" of the particular camming mechanism of its hinge, but it denied that competitors would be placed at a competitive (non-reputation related) disadvantage if the subject sound mark were registered.

Applicant's arguments clicked with the Board, the decision hinging on the designer/inventor's declaration:

As spelled out by applicant, the hinges in its eyeglasses could have been designed to not produce any sound, yet the hinge would still have all of its functional features. The sound, in and of itself, has no appreciable effect on the hinge’s resistance to movement. Thus, while the hinge movements produce the sound, the sound is not dictated by functionality.

And so the Board reversed the refusal.

TTABlog comments: The Board noted that a sound emitted in the course of a product's ordinary function cannot be inherently distinctive. See, e.g. In re Powermat Inc., 105 UPSQ2d 1789 (TTAB 2013) [chirp sound of battery charger]. But that does not mean that the sound is de jure functional.

On a pedantic note, I think that, In the trademark context, one should be careful in using the term "functional" when one merely means that a particular product feature has a function. Many product features have a function and thus are de facto functional.  If a feature is unregistrable under the Morton-Norwich, it is labelled de jure functional. I think it better, in order to avoid confusion, to say that a feature "has a function" until one decides whether it is de jure functional or merely de facto functional. Or maybe say it is "useful," or "has utility."

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability: Are NUTFFLES and P-NUTTLES Confusable for Candy?

Adams & Brooks petitioned for cancellation of a registration for the mark NUTFFLES for "chocolate and candy," claiming a likelihood of confusion with its registered mark P-NUTTLES for "nut candies" both marks in standard character form. The goods are, in part, legally identical, but what about the marks? Are they too close? Adams & Brooks, Inc. v. Morris National, Inc., Cancellation No. 92052158 (July 23, 2013) [not precedential].

Respondent moved to amend its identification of goods to read "chocolate, namely premium Belgian chocolate truffles," but the Board denied the motion, finding the amendment to be unhelpful. A truffle is a type of candy, and Respondent admitted that its truffles contain nuts, so the amended identification would still fall within Petitioner's "nut candies." The word "premium" adds nothing, since there was no evidence that premium chocolates travel in channels of trade different from "nut candies." "In short, respondent’s amendment does not reduce the similarity of the goods or affect the channels of trade in which the goods are offered."

Turning to the marks, because the goods are legally identical, in part, a lesser degree of similarity between the marks is necessary to establish a likelihood of confusion. The Board noted that:

[b]oth parties’ marks include the descriptive term “NUT”and end with the letters “LES”, which suggest a plurality. Significantly, the “NUTTLES” portion of petitioner’s mark and respondent’s “NUTFFLES” mark are similar in sound, differing in only the substation [substitution? - ed.] of an “F” sound in the middle of respondent’s mark for the second “T” in petitioner’s mark. The most significant difference between the marks is that petitioner’s mark begins with the letter “P”, which, when combined with the term, “NUT” suggests peanuts to the prospective consumer.

* * * * * * * *

The commercial impression created by petitioner’s mark suggests a product containing a plurality of peanuts. The commercial impression created by respondent’s mark suggests a plurality of nut truffles or a truffle containing a plurality of nuts. 

The Board concluded that the the marks "have a similar appearance, similar elements of sound, and similar connotation and commercial impression," and so this duPont factor favored Petitioner.

Respondent submitted 12 third-party registrations for marks containing “NUT” and/or “PEANUT,” claiming that these terms are “widespread in both the candy and snack industry to suggest an ingredient of the product.” [PEANUT CHEWS, PEANUT BUTTER CUPS, MR. PEANUT, P.NUTTY (for ice cream), PNUTTY (frozen confection on a stick), P-NUT BUTTER D-LITE, P-NUT POPS (dog treats), NUTRAGEOUS, NUTTER-BUTTER, NANTUCKET NUTS, NUTIBLES (two registrations)].

Respondent also provided two registrations for marks having the “LES” suffix (SKITTLES and TURTLES), asserting that these marks, along with NUTIBLES from its list of 12, indicate that the combination of NUT and LES is not unique, but at a minimum indicates that the product contains nuts.

The Board noted that three of the 12 registrations were for goods unrelated to candy, and further that the marks SKITTLES and TURTLES are very different from the marks at issue here. However, the Board recognized that NUT is descriptive, or even generic, for these candy goods, but there was no evidence that the terms P-NUTTLES or NUTTLES are in use. P-NUTTLES is a suggestive mark, said the Board, but it is still entitled to protection from likely confusion involving a similar mark for identical goods.

In short, "the limited third-party evidence and the suggestive nature of petitioner’s marks fall short in undermining the distinctiveness of petitioner’s mark to any significant degree, that is, to show that petitioner’s mark is weak. Accordingly, this factor is neutral."

Balancing the relevant duPont factors, and giving the prior registrant the benefit of any doubt, the Board found confusion likely and it granted the petition for cancellation.

Read comments and post your comments here.

TTABlog comment: Petitioner also relied on a stylized, design version of P-NUTTLES, but that regsitration played almost no role in the analysis.  Anyway, do you agree with the decision?

Text Copyright John L. Welch 2013.

TTAB Posts August 2013 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled seven (7) oral hearings for the month of August, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]. Briefs and other papers for these cases may be found at TTABVUE via the links provided.

August 8, 2013 - 2 PM: In re Datapipe, Inc., Serial No. 85173828  [Section 2(e)(1) mere descriptiveness refusal of YOUR CLOUD for "electronic data storage services, namely, storing electronic data at data centers; Computer services in the nature of providing an integrated suite of data and computer related services, namely, electronic data storage"].

August 13, 2013 - 10 AM: Clear Choice Holdings, LLC v. Implant Direct Int'l., Opposition No. 91190485 [Section 2(d) opposition to registration of REAL CHOICE in view of the registered marks CLEARCHOICE, CLEARCHOICE DENTAL IMPLANTS, and CLEARCHOICE DENTAL IMPLANT CENTER, all for dental implant services].

August 21, 2013 - 2 PM: In re Monica Krause, Serial No. 79071482 [Refusal of CE'REAL for "confectionery, namely, candy, chocolate and chocolate products, namely, chocolates and chocolate candy, wafers, pastilles; pastries, cookie based snack bars, ice-cream, preparations for making the aforementioned goods, namely, cocoa powder, cake mixes, cookie mixes, mixes for making ice-cream" on the grounds of mere descriptiveness under Section 2(e)(1) and improper deletion of the standard character claim (as an unacceptable amendment to the drawing)].

August 22, 2013 - 11 AM: Harry Winston, Inc. and Harry Winston Ultimate Timepiece SA v. Bruce Winston Gem Corp., Opposition No. 91153147 [Opposition to registration of BRUCE WINSTON for jewelry on the grounds of likelihood of confusion with the registered mark WINSTON and HARRY WINSTON for jewelry, and fraud].

August 27, 2013 - 10 AM: In re Visionstar, Inc., Serial No. 85319715 [Section 2(d) refusal of MAXGAIN for "natural supplements for male enhancement" in light of the registered mark MAXIMUM GAIN for food, herbal, and other supplements].

August 28, 2013 - 11 AM: In re Autodesk, Inc., Serial No. 78852798 et al. [Refusals to register DWG, DWG & Design, DWG TRUEVIEW, DWG TRUECONVERT, and DWG EXTREME for "computer software for data management and creation and manipulation of engineering and design data, particularly adapted for engineering, architecture, manufacturing, building, and construction applications, together with instruction manuals sold as a unit; computer-aided design software; computer software for animation, graphics and design modeling applications" on the ground that DWG is merely descriptive of the goods and lacks acquired distinctiveness].

August 29, 2013 - 2 PM: Carl Karcher Enterprises, Inc. v. Carl's Bar & Delicatessen, Inc., Opposition No. 91188150 [Opposition to registration of CARL'S BAR and CARL'S BAR & DELICATESSEN for "restaurant, bar and catering services" on the ground of likelihood of confusion with, and likely dilution of, the registered mark CARL'S, JR., in standard character and various design forms, for restaurant services].

Text Copyright John L. Welch 2013.