TTAB Dismisses 2(d) Opposition Due to Lack of Proof That Wine and Apple Beverages Are Related

In many, if not most, cases involving wine and other beverages [See TTABlog collection here], the Board finds the goods to be related for purposes of its likelihood of confusion analysis. Not here. Opposer Franciscan's proofs fell short. Franciscan Vineyards, Inc. v. Domaines Pinnacle, Inc., Opposition No. 91178682 (October 16, 2013) [not precedential].

Applicant sought to register the mark DOMAINE PINNACLE & Design (shown above) for "apple juices and apple-based non-alcoholic beverages" [DOMAINE disclaimed]. Franciscan claimed likelihood of confusion with its registered marks PINNACLES and PINNACLE RANCHES for wine [RANCHES disclaimed]. Applicant, appearing pro se, neither submitted evidence nor filed a brief.

As to the marks, the Board noted the disclaimer of DOMAINE (meaning "estate") and the large size of the word PINNACLE in applicant's mark, leading it to concluded that the word PINNACLE is the dominant term in the applied-for mark. Consequently the Board found the marks to be "highly similar in sound and appearance." Moreover, the Board concluded, the marks are similar in connotation and commercial impression.

Opposer Franciscan maintained that its mark PINNACLES is famous in light of 40 years of use, worldwide sales revenues, and accolades in print publications. Not enough, said the Board. U.S. sales figures were not broken out, and the unsolicited media recognition was sparse. And so this du Pont factor was neutral.

There was no evidence of third-party use of the mark PINNACLE, but the Board refused to conclude that the mark was therefore commercially strong, since applicant did not provide any evidence at all on the issue. The Board pointed out that evidence of third-party use is typically submitted by the defendant, and "the absence in the record of third-party uses cannot lead us to the factual determination that either of opposer's marks are strong and therefore deserving of a wide scope of protection." Moreover, opposer's marks are not conceptually strong in view of the laudatory connotation of PINNACLE.

The ordinary channels of trade for the involved goods overlap in that both wine and apple beverages are sold through wholesalers as well as retail store outlets such as grocery and convenience stores. The classes of consumers are the same. Therefore the third and fourth du Pont factors favored Opposer.

Turning to the goods, Franciscan cited several Board decisions finding wine related to apple cider, soft drinks, and powered apple-flavored drinks. But the Board observed that each case must be decided no its own factual record, and here opposer has the burden to show by a preponderance of the evidence that the goods are related for Section 2(d) purposes.

Franciscan pointed to several websites in arguing that the parties are competitors in Canada with respect to wine and ice wine. However, "[t]he probative value, if any, of foreign information sources must be evaluated on a case-by-case basis." There was no evidence regarding exposure of US consumers to these websites. Nor was there evidence that these goods were sold in Canada under the same brand name.

Opposer did not introduce evidence that the same entities produce and sell both wine and “[a]pple juices” or “apple-based non-alcoholic beverages,” or that they market said products under the same mark in the United States. We have no evidence before us that wine and apple juice or “apple-based non-alcoholic beverages” are complementary products (for example, consumed together at the same meal) or that these products are sold in proximity to each other in retail outlets such as grocery stores.

The Board concluded that this third du Pont factor did not favor a finding of likely confusion. Moreover, the lack of evidence regarding relatedness of the goods outweighed the first, third, and fourth factors, which favored opposer.

Therefore, the Board concluded that opposer Franciscan had failed to prove likelihood of confusion by a preponderance of the evidence, and it dismissed the opposition.

Read comments and post your comment here.

TTABlog note: The rope-a-dope technique employed by applicant was successful. In fact due to applicant's failure to put in any evidence on the issue of third-party use, the Board strangely refused to find that the lack of third-party usage bolstered the commercial strength of opposer's marks. This seems wrong to me. If there is no evidence of third-party use, why should a defendant who does nothing be shielded from the probative effect of that lack of evidence? Was it up to opposer to prove the negative?

Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability: Is MAMMOCAT Merely Descriptive of Medical Imaging Devices?

The PTO refused to register the mark MAMMOCAT, finding it to be merely descriptive of "medical diagnostic and screening imaging apparatus, and medical instruments for use in performing biopsies." Applicant argued that "mammo" and "cat" each have multiple meanings, and therefore consumers would have to use logic and reason to understand the nature and attributes of the product. How do you think this came out? In re Fischer Medical Technologies, Inc., Serial No. 85465059 (October 10, 2013) [not precedential].

The evidence showed that applicant's goods are used for "diagnostic mammography," and that mammography is "radiography of the mammary gland." Radiography is the production of "a photographic image produced by the action of x-rays or nuclear radiation." Applicant Fischer, in a response to a request for information, stated that it intended to use the mark in connection with medical equipment used in breast imaging and biopsy procedures, employing computerized tomography.

Examining Attorney Brendan McCauley maintained that the mark describes a feature, characteristic, or purpose of the goods: namely, CAT or computer axial tomography apparatus and equipment used in breast biopsies.

Dictionary definitions established that "mammo" is a "combining form denoting relationship to the breast, or to a mammary gland." CAT is, of course, an abbreviation for "computerized axial tomography," a radial imaging technique that produces images of tissue density in slices through the patient's body. The question was whether the combination of the terms "CAT" and "mammo" evokes a new and unique commercial impression, or whether the two descriptive components merely provide a composite meaning that is itself merely descriptive.

The Board found that MAMMOCAT, when used in connection with the identified goods, means a mammographic cat scan. Each term retains its original descriptive meaning.

Applicant argued that dissecting the mark into two words is not the only way the term could be parsed [MAMM O'CAT? - ed.], and in any case the terms MAMMO and CAT have multiple meanings. Consumers would have to exercise logic and reasoning to understand the nature of its products. The Board pointed out, however, that the meaning of a mark must be determined in relation to the identified goods, not in a vacuum.

Applicant pointed to third-party registrations for ORTHCAT and pedCAT, but the Board shrugged them off, observing once again that it is not bound by prior actions of the PTO in other cases.

Finally, applicant pointed to a CCPA decision deeming BIASTEEL to be not merely descriptive of tires. There, the court noted that "prior decisions in this area are not very helpful in deciding the issue of descriptiveness. The final determination is many times quite subjective." Here, although there was no evidence that third-parties use MAMMO and CAT together, the evidence was sufficient to show that MAMMOCAT is descriptive. There was nothing in the record to suggest that MAMMOCAT has any other meaning than, or would be perceived as referring to anything other than, a mammography CAT scan. And even if applicant is the first and only user of MAMMOCAT, it may still be descriptive of the goods.

And so the Board affirmed the Section 2(e)(1) refusal.

Read comments and post your comment here.

TTABlog note: Do you think this is a WYHA? Or does the third-party evidence and prior CCPA decision keep it out of that category?

Text Copyright John L. Welch 2013.

WYHA? TTAB Affirms Section 2(d) Refusal: STORM CANDLE Confusable With STORM WATCH for Candles

It took only seven pages for the Board to explain its decision affirming a Section 2(d) refusal of STORM CANDLE for candles [CANDLE disclaimed], in view of the registered mark STORM WATCH for "candles and and fragrant wax for use in potpourri burners." Would you have appealed? In re Royal Wine Corporation, Serial No. 85775626 (October 16, 2013) [not precedential].

Applicant argued that the nature of the involved goods is "irrelevant," as are all the other duPont factors (except one), because the marks are so different. The Board, however, pointed out that because the goods are in part identical (candles), that factor weighed heavily against applicant.

As to the marks, because CANDLE is disclaimed in applicant's mark, "it contributes less to its overall commercial impression and virtually nothing to its source-indicating function." Applicant did not dispute that STORM is the dominant portion of its mark, but argued that Examining Attorney Dezmona J. Mizelle-Howard improperly dissected the cited mark.

The Board pointed out that there is nothing wrong in according the word STORM greater significance in the overall impression created by the cited mark, but it agreed with applicant that STORM WATCH may be perceived by consumers as a unitary phrase. Nonetheless, that does not mean that the two marks are not similar in meaning or that they create different commercial impressions.

Instead, we find the marks similar in appearance and pronunciation due to the presence of the word “STORM” in both marks, and similar in their connotations and overall commercial impressions because, as applied to the involved goods, both marks bring to mind the idea of candles that illuminate the dark during a stormy weather condition, such as a storm watch, storm warning, or actual storm. In overall commercial impression, the marks evoke the same mental image.

Because the goods are identical and there are no limitations as to channels of trade in either the application or cited registration, the Board must presume that the goods travel through the same trade channels to the same classes of consumers.

Therefore, the Board found confusion likely and it affirmed the refusal.

Read comments and post your comment here.

TTABlog note: Is STORM a weak formative for candles? Doesn't seem to be, based on my search of TESS. Does this case bring to mind any Elton John song? No, not Philadelphia Freedom.

Text Copyright John L. Welch 2013.

TTAB Dismisses Fraud Counterclaims in "M & Design" Kerfuffle

In this consolidated proceeding involving likelihood of confusion between various "M" design marks for sport bags and clothing, Defendant Marker counterclaimed for cancellation of two of Plaintiff Wolverine's pleaded registrations, on the ground of fraud. Marker, however, failed to prove its fraud claims "to the hilt" because it failed to show that Wolverine intended to defraud the PTO. Wolverine Outdoors, Inc. v. Marker Volkl (International) GmbH, Oppositions Nos. 91161363, 91177732, and 9117736 (Sept. 30, 2013) [not precedential].

Marker claimed that, when Wolverine filed its Statements of Use in connection with the applications that issued as the two challenged registrations, Wolverine knew that it was not using the marks on all of the goods identified in the registrations. The Board considered the testimony of Wolverine’s corporate counsel and of a Wolverine’s employee, regarding the circumstances surrounding the signing of the respective statements of use, and concluded that they did not have the requisite intent to defraud the Office.

Each independently testified to Wolverine’s corporate procedures, which we find reasonable, for ensuring that the statements accurately represented the goods upon which the marks were used, and each independently advised that they followed those procedures at the time.

The Board went on, in its 47-page decision, to sustain in part Wolverine's opposition, but dismissed Marker's opposition as well as its fraud counterclaims.

Read comments and post your comment here.

TTABlog note: The shutout streak continues. Not a single fraud claim has been upheld by the Board since the CAFC's Bose decision.

Text Copyright John L. Welch 2013.

WYHA? TTAB Affirms Disclaimer Requirement: ARMOUR PIERCING Merely Descriptive of Archery Arrows

I recently finished the audiobook of James Dickey's Deliverance, and I'm so ready for this case! The Board affirmed a Section 6(a) requirement that applicant Aldila Golf disclaim the term ARMOUR PIERCING in its applied-for mark VICTORY ARMOUR PIERCING for "archery arrows; archery equipment, namely, arrow nocks, nock inserts, arrow points, arrow tips, arrow shafts and fletching." Would you have appealed? In re Aldila Golf Corp., Serial No. 85477282 (September 26, 2013) [not precedential].

Examining Attorney Angela Micheli maintained that ARMOUR PIERCING is merely descriptive of the identified goods. She submitted a definitions of "armour-piercing," "armour," and "pierce," online discussions of arrows penetrating body armor, a Wikipedia article on a "ballistic vest," a 1978 patent discussing armor-piercing projectiles and arrows, and third-party websites evaluating the penetrating abilities of arrows sold under applicant's mark.

Applicant Aldila provided a Wikipedia article concerning the armour-piercing capability of the bodkin point, a type of arrowhead used in the Middle Ages.

The Board noted that applicant's own website emphasized the penetrating ability of its arrows offered under the mark. The Board found that the dictionary definitions alone sufficed to demonstrate the descriptive significance of ARMOUR PIERCING.

Aldila offered three arguments, all of which missed the target. First it contended that ARMOUR PIERCING has no significance vis-a-vis archery arrows because such arrows are not used in combat. Second, modern day archery arrows are not designed, built, or used to pierce armor. Third, none of its competitors uses the term.

The first two arguments were belied by the evidence. There exists a market for medieval-style archery arrows and equipment. Applicant's identification of goods is broad enough to include replica goods. Furthermore, Aldila ignores the modern uses of "armor," which includes armor plating for vehicles and shelters. In any case, the evidence included online discussions of the ability of arrows to pierce modern body armor.

With regard to Aldila's competitors, it is black letter law that a term may be descriptive even if an applicant is the first and only user of the term.

And so the Board found ARMOUR PIERCING to be merely descriptive of the identified goods, and it affirmed the disclaimer requirement. It allowed applicant thirty-days to submit the required disclaimer, in which case this decision would be set aside.

Read comments and post your comment here.

TTABlog note: Well? WYHA?

Text Copyright John L. Welch 2013.

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

I once heard a TTAB judge opine 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. So try your adjudicatory skills on these three appeals.



In re Douglas Smurr and Bret Bocook, Serial No. 85342789 (October 3, 2013) [not precedential]. [Refusal of WORLD'S LAW for "legal services, namely the practice of law by licensed attorneys" [LAW disclaimed], in view of the registered mark WORLD LAW GROUP for "legal services" [LAW GROUP disclaimed].

In re Elements Behavioral Health, Inc., Serial No. 85375516 (October 2, 2013) [not precedential]. [Refusal to register the mark THE RANCH & Design shown below [THE RANCH disclaimed] for "counseling services in the fields of addiction and sobriety; consulting services regarding addiction treatment for patients; consulting services in the field of addiction treatment; drug and alcohol addiction treatment and rehabilitation services; rehabilitation of sexually addicted patients; drug and alcohol rehabilitation services; addiction treatment services; gambling addiction treatment services; rehabilitation of patients experiencing sex addiction and eating disorders, namely, bulimia and anorexia; providing a web site featuring information in the field of addiction treatment and sobriety," in view of the registered mark T.H.E. RANCH (TEACHING HUMANS WITH EQUINE), in standard character form, for psychotherapy [TEACHING HUMANS WITH EQUINE disclaimed].

In re AllPredatorCalls.com, Inc., Serial Nos. 85596596 and 85648155 (September 30, 2013) [not precedential]. [Refusals of WICKED LIGHTS for "lighting kits for use in hunting, consisting of flashlights, tactical flashlights, and hand-held spotlights" [LIGHTS disclaimed] and WICKED HUNTING LIGHTS for "lights for use in hunting, namely, flashlights, tactical flashlights, hand-held spotlights, LED lights in the nature of rifle and shotgun-mounted lighting fixtures featuring LED bulbs, weapon-mounted lights in the nature of flashlights specially adapted for mounting to rifles and shotguns, vehicle-mounted spotlights and driving lights in the nature of lighting apparatus for vehicles for use in hunting, illumination devices in the nature of flashlights, fixed position spotlights, and directable beam spotlights for use in hunting" [HUNTING LIGHTS disclaimed] in light of the two registered WICKED OPTICS & Design marks, shown below, for "telescopic sights for firearms, namely, rifle, handgun and spotting scopes" [OPTICS disclaimed in both registrations].

Read comments and post your comment here.

TTABlog note: Large hint: they all came out the same way. See any WYHAs here?

Text Copyright John L. Welch 2013.

TTAB Affirms Disclaimer Requirement; "4D" Merely Descriptive of Medical Monitoring Devices

The Board affirmed a requirement that applicant Masimo Corporation disclaim the term "4D" in its applied-for mark RAINBOW 4D for "medical devices, namely, patient monitors and patient sensors for monitoring and measuring blood properties or respiratory events." Masimo argued that RAINBOW 4D is a unitary mark and that a disclaimer is unnecessary, but the Board ruled otherwise. In re Masimo Corporation, Application No. 85041477 (September 30, 2013) [not precedential].

According to applicant Masimo, the combination of RAINBOW and 4D is incongruous because the term 4D is not associated with the word RAINBOW. The Board, however, pointed out that a mark is not unitary merely because its constituent parts have no relation to one another. Indeed, such marks "are categorically not unitary." A mark in considered unitary because its constituent words are related and their combination changes the impact of the words on the consumer. [e.g., URBAN SAFARI].

[A] mark is incongruous if the juxtaposition of its elements creates cognitive tension, such as when the combination of terms makes sense on one level, but clashes on another. This does not result from the use of random words which share no meaning at all, but rather from words whose meanings intersect, although not in the expected way.

As to the meaning of "4D," the evidence made clear that it means "four-dimensional" or "fourth dimension." In the context of applicant's goods, the four dimensions are length, width, height, and time. "4D" is commonly used in connection with medical devices that provide four-dimensional imaging.

Six registrations submitted by Examining Attorney Charles L. Jenkins, Jr., included disclaimers of "4D" in connection with goods or services relating to medical imaging. Masimo provided one pertinent registration (CINEMA 4D) in which "4D" was not disclaimed. In any event, the Board noted that it was not bound by the decisions of examining attorneys in other applications, but was required to rule based on the evidence in this case.

The Board concluded that the evidence "clearly demonstrates" that 4D is merely descriptive of "medical imaging devices that display three-dimensional images over time."

Masimo, however, maintained that its goods are not imaging devices. The Board recognized that applicant’s identification of goods does not explicitly include "medical imaging devices," but it proceeded to consider whether such devices are included in "patient monitors and patient sensors."

Based on several medical dictionaries, the Board concluded that a "patient monitor" includes an apparatus or device to observe or record a biological condition or phenomenon. It was clear from the evidence that "many of the 4D medical imaging devices discussed in the webpages and articles clearly fit the definition of a 'patient monitor,' i.e., a device to observe or record a biological condition or phenomenon. Indeed, the entire point of medical imaging devices is to observe biological conditions or phenomena, and it is obvious from the evidence that many — possibly all — of the devices or apparatus discussed in the evidence can also record what they observe on CDs, DVDs and other media."

As to the specific purpose of applicant’s goods — "for monitoring and measuring blood properties or respiratory events" — the evidence of record indicated that 4D imaging can be used to observe fetal blood flow, and phases of the respiratory cycle.

And so the Board concluded that 4D medical imaging devices fall within applicant’s identification of goods, and it affirmed the requirement that 4D be disclaimed.

Read comments and post your comment here.

TTABlog note: Masimo submitted a third-party registration for 4D-NUCLEOFECTOR, but the Board considered it irrelevant because a hyphenated mark is unitary, and therefore "4D" need not be disclaimed in that mark.

Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability: Is "KNOW YOUR SCORE" Merely Descriptive of Credit Reporting Services?

Consumerinfo.com applied to register the mark KNOW YOUR SCORE for credit reporting services, but Fair Issac opposed, claiming mere descriptiveness under Section 2(e)(1). Opposer asserted that many third parties use the phrase "know your score" or similar phrases when referring to such services. How do you think this came out? Would you like to see the evidence first before giving your opinion? Fair Isaac Corporation v. ConsumerInfo.com, Inc., Opposition No. 91178303 (September 30, 2013) [not precedential].

The parties got off on the wrong foot by submitting certain discovery depositions on CD-ROM. As of August 31, 2007, CD-ROMS are no longer acceptable by the Board [nor are 8-track tapes or cassettes - ed.]. The Board therefore refused to consider that testimony, nor any related exhibits, unless they had also been submitted on paper.

Opposer submitted dictionary definitions of the constituent words, examples of descriptive use of the phrase by applicant, and third-party use of "know your score" alone or with additional wording. Various articles from the Lexis/Nexis database showed common use of the term "score" interchangeably with "credit score."

Applicant cried, "It's not fair, Isaac." It urged that the phrase is at most suggestive and that its mark will not foreclose competitors from descriptive use of a necessary phrase, since third-parties use a variety of phrases in discussing credit scores and services.

The Board found that "score" and "credit score" are used interchangeably in the credit reporting and financial information industries, and that the phrase "know your score" has been and is routinely used to describe "a consumer's need to know what their credit score is, its effect and how to obtain it." No mental gymnastics are required to discern the information conveyed by the mark regarding applicant's services: namely, "that they enable a consumer to know his or her credit score or, as applicant puts it, it [the mark] allows relevant consumers to "know your score."

Applicant maintained that, by widely promoting the mark at sports venues, it created a double entendre that challenges the consumer to use a mental process to "extrapolate a connection" with the services. The Board, however, found nothing in the record to establish that consumers would recognize this sports meaning from the mark itself.

Although applicant contended that variations like "know the score" are irrelevant, the Board noted that applicant sent cease-and-desist letters to third-parties who used variants of the applied-for mark.

Applicant alternatively claimed that its mark has acquired distinctiveness, based on extensive use and promotion for more than five years, and on its ownership of a registration for the mark KNOW YOUR SCORE for "providing credit report information for perspective [sic] first mortgagers." However, in applicant's advertising, the mark FreeCreditReport.com is featured, and so it is unclear whether KNOW YOUR SCORE is viewed as a source indicator. Nor did applicant provide any information regarding market share, media recognition of the mark, and other contextual information that would enable the Board to assess the Section 2(f) claim.

As to applicant's claim of five years of continuous use, the evidence showed use of the same or a similar phrase by numerous third parties. Although absolute exclusivity is not required, applicant's use was not "substantially exclusive," and therefore applicant may not rely on the five-year claim under Section 2(f);

Finally, as to applicant's prior registration, the services are different from and narrower than those of the application at issue. In the registration, the information is provided to "perspective [sic] first mortgagers," while those in the subject application are identified broadly as "credit reporting services; credit information provided by electronic means" and "providing information in the financial and credit fields."

Therefore, the Board concluded that applicant's ownership of the prior registration did not serve as a basis for the claim of acquired distinctiveness here.

And so the Board sustained the opposition.

Read comments and post your comment here.

TTABlog note: In its prior registration, did applicant mean to say "prospective" first mortgagers, or "perspiring?"

Text Copyright John L. Welch 2013.

Columbia Law School Symposium: "Secondary Liability for Trademark Infringement on the Internet" - November 8th

The Kernochan Center at Columbia Law School will host a Symposium entitled "Secondary Liability for Trademark Infringement on the Internet" on November 8, 2013, in Jerome L. Greene Hall, Lobby Level, Room 104, 435 West 116th Street at Amsterdam Avenue, New York NY. For more details and registration information, go here. Summary and schedule of speakers are set out below. CLE credit available.

The Internet has contributed to a dramatic increase in trademark infringement. The difficulty of seeking out online infringers, however, complicates the process of bringing a direct infringement claim. As a result, stakeholders have resorted to secondary trademark liability, predicated on the role played by online intermediaries in expanding the reach of the alleged direct infringers. Our 2013 Symposium will explore the contours of secondary liability for trademark infringement online from domestic and international perspectives. In the morning, we will look at the law of secondary liability in the US, Europe, and the Far East, and discuss the complex international dimensions of online trademark infringement cases. The afternoon will be devoted to proposals for a secondary liability regime that would better secure the rights of trademark owners without interfering with the Internet marketplace.

8:30 A.M. – 9:00 A.M.	REGISTRATION AND CONTINENTAL BREAKFAST
9:00 A.M. – 9:15 A.M.	WELCOME & INTRODUCTIONS	June Besek, Executive Director and Yafit Lev-Aretz, IP Fellow Kernochan Center for Law, Media and the Arts, Columbia Law School

9:15 A.M. – 12:45 P.M. NYS CLE Credit: 3.0 Areas of Professional Practice	MORNING PROGRAM N.B. CLE Sign-out from Morning Session will close at 1:00 pm
9:15 A.M. – 10:05 A.M. SESSION I NYS CLE Credit: 1.0, Areas of Professional Practice	Keynote Address: The International Landscape - Secondary Liability for Online Trademark Infringement	Graeme Dinwoodie, Keynote Speaker Professor of Intellectual Property and Information Technology Law, University of Oxford
10:05 A.M. – 10:25 A.M.	BREAK
10:25 A.M. – 11:45 P.M. SESSION II NYS CLE Credit: 1.5, Areas of Professional Practice	Secondary Liability for Trademark Infringement On the Internet in the US, the EU, and the Far East	Rochelle Dreyfuss, Moderator Pauline Newman Professor of Law and Co-director, Engelberg Center on Innovation Law and Policy, New York University School of Law US: Stacey Dogan Law Alumni Scholar, Professor of Law, Boston University School of Law EU: Annette Kur Senior Research Fellow, Max Planck Institute for Intellectual Property and Competition Law, Germany Far East: Du Ying  Professor of Law, Central University of Finance and Economics, China
11:45 A.M. – 12:15 P.M. SESSION III NYS CLE Credit: 0.5, Areas of Professional Practice	International Choice of Law in Trademark Disputes	Susy Frankel, Moderator Faculty of Law, Victoria University Wellington; Global Research Fellow and Fulbright Senior Scholar, New York University School of Law  Edouard Treppoz  Director of the Institute of Art and Cultural Law, University of Lyon; Visiting Professor of Law, Columbia Law School
12:15 P.M. – 12:45 P.M.	Q&A Based on Morning Sessions
12:45 P.M. – 1:45 P.M.	LUNCH Lenfest Cafe, 3rd Floor
1:45 P.M. – 5:05 P.M. NYS CLE Credit: 3.0 Areas of Professional Practice	AFTERNOON PROGRAM N.B. CLE Sign-in for Afternoon Session re-opens at 1:30 pm
1:45 P.M. – 2:45 P.M. SESSION IV NYS CLE Credit: 1.0, Areas of Professional Practice	Secondary Liability Regimes for Trademark Infringement Online  Imposing a Duty of Care on Internet Intermediaries, e.g., Technology providers (hosts; search engines); advertisers and advertising-placement services, and financial intermediaries (credit cards; PayPal) Keeping the Status Quo with the guidance of DMCA-inspired common law, the eCommerce Directive, etc.	Barton Beebe, Moderator Professor of Law, New York University Wendy Larson Pirkey Barber PLLC Tom Rubin Chief Intellectual Property Strategy Counsel, Microsoft
2:45 P.M. – 5:05 P.M. SESSION V (with coffee break 3:30-3:50) NYS CLE Credit: 2.0, Areas of Professional Practice	Commentators on proposals presented, and Q&A Period	Jane Ginsburg, Moderator Morton L. Janklow Professor of Literary and Artistic Property Law, Columbia Law School Irene Calboli Professor of Law, Marquette University Law School; Visiting Professor at the Faculty of Law, National University of Singapore Miquel Peguera Professor of Law, Universitat Oberta de Catalunya, Barcelona Amy Cotton Office of International Relations, United States Patent and Tradmark Office Bruce Rich Weil, Gotshal & Manges LLP Robert Weigel Gibson Dunn LLP
5:05 P.M. - 5:15 P.M.	Closing Remarks	Pippa Loengard Assistant Director, Kernochan Center for Law, Media and the Arts, Columbia Law School

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TTAB Sustains Opposition to LAGUNA CANDLES: Geographically Descriptive of Candles

The Board sustained a Section 2(e)(2) opposition to registration of the mark LAGUNA CANDLES, finding it to be primarily geographically descriptive of "candles and fragrant candles" [CANDLES disclaimed]. Applicant claimed acquired distinctiveness - an issue that, although not pleaded, was tried by implied consent - but its proofs were unconvincing. Flame & Wax, Inc. v. Laguna Candles, Opposition No. 91200223 (October 2, 2013) [not precedential].

Section 2(e)(2): Opposer Flame & Wax had standing to bring the claim because it is a competitor of Applicant and sells a line of "Maison Laguna" candles. To establish a claim under Section 2(e)(2), a plaintiff must show that (1) the primary significance of the mark is a generally known geographic location, and (2) purchasers would be likely to believe that the goods originate in that location. If the named location is remote or obscure, or if the term has well recognized other meanings, then the term is not primarily geographic. A geographic nickname (like "Big Apple") is treated like the true geographic name.

Laguna Beach is a city in southwest California, a resort and artists' colony that draws millions of visitors annually. The evidence of record included many references to Laguna Beach as "Laguna." Applicant submitted evidence regarding other meanings of "laguna," including a definition of the word as a "lagoon, lake, or pond." "Laguna" is also a surname, as well as the name of multiple geographic locations, including Laguna Army Airfield in Arizona; Laguna, Imperial County in California; and Laguna, New Mexico. Website evidence referred to three "Laguna" cities in Orange County, California. However, according to the record evidence, Laguna Beach is the only city that has any renown outside of Orange County.

The Board was therefore satisfied that LAGUNA is primarily a geographic term that refers to Laguna Beach, California.

Applicant is located in Laguna Beach. Her Facebook page featured photographs of Laguna Beach, and her advertising created a connection with the artisans for which Laguna Beach is known. Candles are one of the products sold by artisans in Laguna Beach. Therefore, the Board found, consumers are likely to believe that applicant's candles originate in Laguna Beach.

And so the Board found the two-pronged test of Section 2(e)(2) to be satisfied.

Acquired Distinctiveness: Because applicant now invoked Section 2(f), it had in essence pleaded an affirmative defense of acquired distinctiveness and bore the burden to prove same.

Applicant asserted use of its mark since 2001, sale of approximately 15,000 candles, and revenues of approximately $384,000. Sales took place in eight stores in Orange County and one store in San Diego. It spent $86,500 on advertising.

The Board was not impressed. Although applicant has managed to stay in business for ten years, that does not indicate that the applied-for mark is recognized as a source indicator. The sales and advertising figures are "hardly persuasive evidence of acquired distinctiveness for products marketed to the general public." And there was no evidence of any media recognition of the applied-for mark as a source indicator.

And so the Board concluded that applicant had failed to establish acquired distinctiveness, and it sustained the opposition.

Read comments and post your comment here.

TTABlog note: How did this application get past the examination stage?

Text Copyright John L. Welch 2013.

TTAB Dismisses CAFE BARBERA Opposition: Pleaded Registration Not Properly Made of Record

Barbera 1870 S.p.A. filed an opposition to registration of the mark shown immediately below for restaurant services, claiming likelihood of confusion under Section 2(d) and false association under 2(a). It relied on alleged ownership and prior use of the mark BARBERA ... DAL 1870 & Design for "providing food and drink," and the registered mark MISCELA BARBERA CAFFE BARBERA DAL 1870 IL MAGO DEL CAFFE & Design for coffee. Both claims failed for lack of proof of ownership and prior use. Barbera 1870 S.p.A. v. Barbera Caffe’ S.p.A., Opposition No. 91201113 (October 2, 2013) [not precedential].

Likelihood of Confusion: Opposer alleged that it owned a pending application and an existing registration, but it put neither into evidence. It may have been relying on the data that it entered into the ESTTA system when it filed its opposition, but that did not make the registration of record. See Melwani v. Allegiance Corp., 97 USPQ2d 1537 (TTAB 2010). [Of course it could have submitted a current printout of the PTO's electronic database records, or proffered the registration via testimony, or provided status-and-title copies issued by the PTO. See Rule 2.122(d)(1)].

Opposer did submit a few items via notice of reliance, but nothing that established its ownership or prior use of its two marks. Applicant, in its answer, denied the salient allegations of the notice of opposition.

And so the Board concluded that opposer had failed to establish standing or priority, and it dismissed this Section 2(d) claim.

False Association: An opposer does not need to establish proprietary rights in a trademark in order to support a Section 2(a) false association claim. [See the TWIGGY decision]. But it must establish that applicant's mark "is the same or a close approximation of opposers previously used name or identity." [See the SEX ROD decision].

Here, Opposer failed to establish a "previously used name or identity."

Moreover, in order to establish a Section 2(a) false association claim, one must prove that its name or identity is sufficiently famous so that, when used in connection with another's goods or services, "a connection would be presumed." Here there was no evidence to establish the fame of opposer's marks.

And so the Board dismissed the Section 2(a) claim.

Read comments and post your comment here.

TTABlog note: I think keying in the information into ESTTA should suffice to make a registration of record. Why can't this result in a transfer to the TTAB file of the current data/information regarding status and title? Why does the opposer have to print out the PTO database pages and submit them? Seems like more of a "gotcha" rule than anything else.

Text Copyright John L. Welch 2013.

TTAB Reverses Refusal to Register Leather Strip Pattern: Not Aesthetically Functional, Has Acquired Distinctiveness

The Board reversed a refusal to register the product design mark shown below, for leather goods and shoes, finding the design not to be aesthetically functional under Section 2(e)(5), and not to be mere ornamentation in view of its acquired distinctiveness. The Board emphasized that its ruling on non-functionality "is based on a very narrow reading of the proposed mark, and the scope of the protection to which it is entitled." In re Bottega Veneta International S.a.r.l., Serial No. 77219184 (September 30, 2013) [not precedential].

Aesthetic Functionality: Applicant Bottega Veneta described its mark as "a configuration of slim, uniformly-sized strips of leather, ranging from 8 to 12 millimeters in width, interlaced to form a repeating plain or basket-weave pattern placed at a 45-degree angle over all or substantially all of the goods." The Examining Attorney maintained that exclusive appropriation of this design would put competitors at a significant non-reputation related disadvantage, and therefore it is aesthetically functional and barred from registration pursuant to Section 2(e)(5).

The Examining Attorney submitted an "inordinate amount" of evidence, much of which was not persuasive because it showed various weave patterns, all different from the specific pattern of applicant's applied-for mark. The Board noted that applicant was not "seeking exclusive rights to all weave designs" for its goods. Although there may be a competitive need to use a weave design for leather, granting a registration to applicant would not deprive competitors from adopting a different design. Moreover, applicant's applied-for mark does not cover use of grasses, reeds, or wood strips, or other non-leather materials.

The Board noted that the Examining Attorney did an "extremely thorough job" in collecting evidence of third-party use of weave designs, some similar to that of applicant. However, "the very limited number of weave designs that approximate applicant's weave design, at the very least, raises a question as to whether there is a competitive need for the design that applicant seeks to register." Moreover some of the third-party products may be intended to copy or mimic applicant's design in order to profit from the popularity or cachet of applicant's design. At a minimum, there is some doubt as to whether there exists a competitive need to use applicant's particular weave design.

In cases involving other refusals to register (e.g., surnames, mere descriptiveness), there is a policy that any doubt regarding a refusal should be resolved in favor of publication of the mark. The Board concluded that the same policy applies particularly well here, since publication of the mark will allow competitors to assert and prove that they indeed do have a competitive need to use the design at issue.

Therefore the Board reversed the Section 2(e)(5) refusal, noting again the narrowness in scope of the applied-for mark.

Ornamentation and Acquired Distinctiveness: The PTO's evidence demonstrated that woven leather designs are often used for handbags and shoes. Consequently, consumers are not likely to view such designs as source identifiers unless there has been significant promotion of the design as a trademark. In short, applicant had a "heavy burden" to prove acquired distinctiveness. However, applicant's evidence was "significant" in amount.

Applicant first used its weave design on handbags in 1975. Its sales during the period 2001-2007 were $275 million, and the weave design appeared on more than 80% of its goods. Advertising expenditures during this period totaled $18 million. Its catalogs and advertisements have featured products having the weave design, and many of the advertisements, as well as media editorials, refer to the "intrecciato wave design." Numerous newspaper and magazine articles refer to applicant's "signature" weave design. Numerous declarations from people in the fashion industry testified to the recognition of the weave design as a source indicator. And perhaps most persuasive were customer comments referring to or describing third-party products as looking like applicant's weave.

The Board concluded that the evidence amply demonstrated that the applied-for design had acquired distinctiveness and was not merely ornamental.

Read comments and post your comment here.

TTABlog note: Applicant sought registration under Section 2(f), thereby, according to the Board, admitting that its design was not inherently distinctive. But a product configuration can never be inherently distinctive (Wal-Mart), so did applicant "admit" anything by relying on Section 2(f)?

Text Copyright John L. Welch 2013.

PRÊT À BOIRE Not Generic for Wine, Says TTAB

The Board reversed a refusal to register on the Supplemental Register, the mark PRÊT À BOIRE for wine, finding that the PTO did not prove by clear evidence that it the mark is generic for the goods. Although it describes a characteristic or attribute of wine, "prȇt à boire" (or its English equivalent, "ready to serve") is not the “name” of wine or a sub-genus of it. In re Amuse Bouche LLC Application No. 77965809 (September 30, 2013) [not precedential].

We all know that a mark that is merely descriptive under Section 2(e)(1) may be registered on the Supplemental Register as long as it is "capable of distinguishing applicant's goods or services." A generic term is not so capable, and is therefore ineligible for supplemental registration.

The determination of genericness requires a two-part inquiry: What is the genus of the goods? Is the term at issue understood by the relevant public primarily to refer to that genus of goods? [Marvin Ginn]. Genericness is a question of fact, and the PTO must provide clear evidence thereof. [Professor McCarthy has questioned whether "refer to the genus" is enough. I ask, shouldn't it be "names the genus"? - ed.] The Board, not surprisingly, agreed with the Examining Attorney that the genus of goods is "wine."

The Examining Attorney provided considerable Internet evidence of use of the terms "prȇt à boire" and "ready to drink." Sometimes the phrase refers to the topic of when a particular wine will be at its best. Occasionally, it refers to the packaging of the wine (e.g., an individual serving in a wine glass).

Applicant Amuse Bouche submitted 61 third-party registrations for marks in the form of "PRÊT À ___" or "READY TO ____" for various goods and services, as well as a declaration of a wine buyer who claimed that PRÊT À BOIRE serves as a source indicator for applicant's wine.

The Board found no dispute that "prȇt à boire" is French for "ready to drink," and it deemed it appropriate to apply the doctrine of foreign equivalents in this case.

There is no evidence of record suggesting that that the translation in this application is inaccurate, that “prêt à boire” is so obscure that it would not be easily recognized and translated by French speakers in the U.S. marketplace, or that it is an idiom which is not equivalent to its direct English translation. As noted, the evidence of record shows both the French term and its English translation in use (sometimes side-by-side) in connection with wine. And there can be no doubt that French is a common, modern language. Wine drinkers familiar with French are thus likely to “stop and translate” prêt à boire when encountering it used in connection with wine. We therefore find applicant’s mark to be equivalent to the English phrase “ready to drink” for purposes of determining genericness.

As to the meaning of the mark, the Board noted the CAFC's observation that the boundary between descriptive and generic terms will occasionally be "fuzzy."

The applied-for mark is used as "an adjectival phrase referring to a point in time when a particular wine will be at its peak in quality." Of course, adjectives may be generic (e.g., ATTIC for automatic fire sprinklers). The question was this: does PRÊT À BOIRE, or its English equivalent, "ready to drink," refer primarily to wine? Based on the evidence of record, the Board said no.

[T]he bulk of the examining attorney’s evidence shows use of "prêt à boire," or "ready to drink" in describing a characteristic or attribute of wine. These terms are not used as the “name” of wine or a sub-genus of it (such as “red,” “sparkling,” or “chardonnay”). *** And although we have recognized that like nouns, adjectives can be generic when they "directly name[ ] the most important or central aspect or purpose of the goods," Central Sprinkler, 49 USPQ2d at 1199, the evidence does not show that the relevant public views "prêt à boire," or "ready to drink" as a most important or central aspect of wine. Rather, it merely signifies a point in time when the wine is estimated to be at its best.

The Board therefore reversed the refusal to register.

Read comments and post your comment here.

TTABlog note: I like the label, therefore I think I'll buy a bottle.

Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability: Is "ME SO HUNGRY" Confusable with "MISOFISHY" for Catering Services?

It has been said, by a TTAB judge no less, that the outcome of the vast majority of likelihood of confusion cases may be correctly predicted just by looking at the involved marks and the goods/services. Let's see how you do with this one. Applicant Ewing sought to register ME SO HUNGRY for catering services, but Solohay, Inc. opposed, based on its alleged prior use of, and alleged likelihood of confusion with, the mark MISOFISHY for restaurant, bar, and catering services. Solohay, Inc. v. James Michael Ewing DBA Me So Hungry and Me So Hungry LLC, Opposition No. 91199692 (September 18, 2013) [not precedential].

Priority: Although Opposer obtained a registration for the MISOFISHY mark while the opposition was pending, it failed to properly submit the registration into evidence. It submitted a photocopy of the registration with its notice of reliance, but that was not good enough. It did not submit either a printout from a USPTO database showing status and title, or an "original or photocopy of the registration prepared and issued by the United States Patent and Trademark Office showing both the current status and current title to the registration." Trademark Rule 2.122(d)(1).

Opposer could have proven priority via testimony (including ownership of the registration), but it did not submit any testimony. Excerpts from online articles discussing opposer did not constitute proof that oppposer was using the mark on the date the article was published. The pages were probative only for what they showed on their faces; as to any facts stated therein, they were mere hearsay.

In sum, the record lacked any evidence to support opposer's claim of priority.

Likelihood of Confusion: Nonetheless, The Board assumed, for its Section 2(d) discussion, that opposer had properly submitted its registration, thereby removing priority as an issue. [This was a clear sign that opposer would lose on this issue as well].

Since the respective services of the parties were identical (catering services), the similarity of the marks was the key issue. Of course, when the services are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

Opposer pointed out that the first parts of the marks, MESO and MISO, are "phonetically identical and visually very similar." The Board was unimpressed:

While ME SO may be phonetically similar to MISO, the appearance and, more importantly, the connotation is completely different, in that MISO is "a fermented seasoning paste of soybeans, often with rice or barley added, used to flavor soups and sauces," and ME SO in the phrase ME SO HUNGRY simply refers to an individual who is hungry. Phonetically, opposer’s mark could be perceived as having the double meaning "me so" and "miso," but the meaning “miso” would not be lost on customers of restaurant and catering services.

Moreover, the Board observed, HUNGRY is very different from FISHY. Therefore the Board concluded that the dissimilarities between the marks outweigh the similarities, and that because the marks are so different, this duPont factor outweighed the other factors and required dismissal of the Section 2(d) claim.

Read comments and post your comment here.

TTABlog note: How did you do? Me So Sure you did well!

If the Board had dismissed based solely on opposer's failure to prove priority, opposer might cure the defect by seeking review via civil action, where it could submit its registration properly or provide testimony regarding priority. So the Section 2(d) issue would like re-appear. Maybe that's why the Board went on to decide the issue. BTW: is the entire Section 2(d) analysis here merely dictum?

Text Copyright John L. Welch 2013.

John Marshall Law School Symposium, Nov. 8th: The Intersection of IP and Public Health

The Review of Intellectual Property Law (RIPL) at The John Marshall Law School in Chicago, will host its Annual Symposium on Friday, November 8, 2013. The topic: "The Intersection of IP and Public Health." Schedule here. Register here. Speakers listed below.

"A Scientific Approach to IP: Innovation, Access, and a Forgotten Corner of the Universal Declaration of Human Rights," Adam Houston, Human Rights Advocate, Vancouver Island Human Rights Coalition.

"Regulatory Competitive Shelters in the Regulation of Biomedical Technologies," Yaniv Heled, Assistant Professor of Law, Georgia State University.

"Patenting Identities: The Other Side of Myriad," Shubha Ghosh, Vilas Research Fellow & Professor of Law, University of Wisconsin.

"Drugged Out: How Cognitive Bias Hurts Drug Innovation," Cynthia Ho, Clifford E. Vickrey Research Professor, Loyola University School of Law.

Kevin Noonan, Partner, McDonnell Boehnen Hulbert & Berghoff LLP, Founding author, Patent Docs Weblog.

"Social Justice Meets Property Law: Realigning Patent Law’s Asymmetric Contour in Novartis. v. Union of India & Others," Saby Ghoshray, PhD, President, Interdisciplinary Studies.

"Pinwheel of Fortune," James Chen, Professor, Justin Smith Morrill Chair in Law, Michigan State University.

"Adopting Pharmacogenomics and Parenting Repurposed Molecules under the Orphan Drug Act: A Cost Dilemma," David C. Babaian, University of Washington.

"Patenting Drugs in Canada: Differences and Dividing Lines North and South of the Border," Nancy P. Pei, Partner, Smart & Biggar/Fetherstonhaugh.

"Analyzing Trade Agreements' Effects on Access to Medicine in Jordan," Bashar H. Malkawi, Associate Professor of Law, American University of Sharjah.

"Implementing and Enforcing Intellectual Property Rights In West Africa," Ganiyou Gassikia.

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PLI Publishes New Editions of Siegrun Kane and Richard Kirkpatrick Books

Practicing Law Institute (PLI) has published new editions of two incisive and important trademark books: Siegrun Kane's Kane on Trademark Law: A Practitioner's Guide (6th Edition) and Richard Kirkpatrick's Likelihood of Confusion in Trademark Law (2nd Edition)

My friend, Siegrun Kane, has for years been recognized as a leading trademark practitioner, and her book (sixth edition!) provides a much-needed practical explanation of trademark issues and tactics. Her one volume handbook is one of the few law books that I keep next to my desk.

Richard Kirkpatrick's book provides everything you want to know about the most important issue in trademark law. Likelihood of confusion is like a multi-faceted crystal, and this work will help you find the right angle (and the right precedent) that sheds light on your particular trademark problem.

Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability: Is ACHOUFFE Primarily Geographically Descriptive of Beer?

The PTO refused registration of the mark ACHOUFFE for beer, finding the mark to be primarily geographically descriptive under Section 2(e)(2). Applicant appealed. The question was whether Achouffe is a name of a place generally known to the public. [Customer: Achouffe! Bartender: Gesundheit!] How do you think this came out? In re Brasserie D’Achouffe, Société Anonyme, Serial No. 79107741 (September 26, 2013) [not precedential].

There was no dispute that Achouffe is the name of a small village in the municipality of Houffalize, located in the Wallonia region of Belgium. The Examining Attorney, relying on several websites and blogs, contended that "beer drinkers, especially those who drink Belgian beer, are familiar with the town of Achouffe."

The Board, however, found the PTO's evidence insufficient to show that Achouffe is a geographic location that is generally known to the relevant consuming public, namely, prospective beer drinkers. [what about current beer drinkers? - ed.]. The evidence showed that Achouffe is "very much an obscure location and would be relatively unknown to the relevant American consumer." At most, it would be known to persons intimately familiar with applicant's beer, and more specifically, those who had visited the town of Achouffe.

Brasserie D'Achouffe
Read comments and post your comment here.

Text Copyright John L. Welch 2013.