Three More District Court "Appeals" from TTAB Decisions

A reader of the blog has pointed out three more pending district court "appeals." The cases are summarized below, with links to the TTABvue pages where the decisions may be found, as well as to the pertinent TTABlog postings, if any. [The complaints are usually attached to the Notice of Appeal filed at the TTAB; other court papers may, of course, be found via PACER].

Timex Group USA, Inc. v. Rea, No. 1:12-cv-1080 (TSE/TCB) (E.D. Va.) (Serial No. 85164601) [The Board affirmed a Section 2(e)(1) mere descriptivness refusal of INTELLIGENT QUARTZ for watches [QUARTZ disclaimed]; cross-motions for summary judgment are pending).

Adams Mfg. Corp. v. Rea, No. 2:12-cv-1430-MPK (W.D. Pa.) (Serial No. 85025503 [The Board affirmed two refusals to register the product configuration shown below for "plastic suction cups, not for medical purposes:" Section 2(e)(5) functionality, and alternatively, lack of acquired distinctiveness. [The applied-for configuration does not include the outer ring or the stem (shown in dashed lines), but only the three-dimensional configuration of the two concentric rings on the cup portion.] Cross-motions for summary judgment pending]. [TTABlogged here].



Crown Equip. Corp. v. Rea, No. 3:12-cv-3075 (N.D. Ohio). (Serial No. 77248621) [The Board affirmed a Section 2(d) refusal of CROWN INSITE for lift truck systems consisting of receivers, computer hardware and software, all used to collect and transmit data for locating, routing and tracking lift trucks and their operators and performance, in view of the registered mark INSITE for goods that include radiating line radio frequency identification systems consisting of receivers, beacons and transmitters, used for locating and tracking personnel, equipment, machinery and vehicles, as well as computer software and programs used for the same purposes. [the civil action is currently stayed in view of Crown Equip. Corp. v. Mine Radio Sys., Cancellation No. 92057763, wherein petitioner seeks to restrict the goods of the cited registration to "use in or in connection with underground environments such as mines and tunnels"].

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Text Copyright John L. Welch 2013.

Current List of TTAB Decisions on "Appeal" to District Courts

I have collected six (6) pending federal district court actions (one is going up on appeal) involving Section 1071(b) review of TTAB decisions. The cases are summarized below, with links to the TTABvue pages where the decisions may be found, as well as to the pertinent TTABlog postings, if any. [The complaints are usually attached to the Notice of Appeal filed at the TTAB; other court papers may, of course, be found via PACER].

Pandol v. Pandol Bros., Inc., Case No. 1:13-cv-01488-LJO-MJS (E.D. Cal.) (Cancellation No. 92048691) [The Board granted a petition for cancellation filed by Pandol Bros., ordering cancellation of registrations for the marks PANDOL and PANDOL FAMILY FARMS for fresh fruit in view of the previously-used mark PANDOL for fresh fruit].

Glen Raven, Inc. v. Amerinova Properties, LLC, Civil Action No. 3:13-cv-02278-H-NLS (S. D. Cal). (Opposition No. 91192496) [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]. [TTABlogged here].

Product Source International, LLC v. Nahshin, Civil Action No. 1:13-cv-04997-NLH-KMW (D. NJ). (Cancellation No. 92051140) [In a cancellation proceeding involving a registration for the mark NIC OUT for "mechanical cigarette filters for removing nicotine," the Board ruled that Petitioner Leonid Nahshin, as the manufacturer of the goods and first user, owned the mark, and not the U.S. distributor]. [TTABlogged here].

Board of Trustees of The University of Alabama et al. v. Houndstooth Mafia Enterprisess LLC et al., Civil Action No. 7:13-cv-01736-SLB (N.D. Alabama). (Opposition No. 91187103) [The Board dismissed this opposition to registration of the mark depicted below for "shirts, caps" [HOUNDSTOOTH disclaimed], denying opposers' claims of likelihood of confusion under Section 2(d), and false suggestion of a connection and disparagement, both under Section 2(a)]. [TTABlogged here].

Zao Odessky Konjatschnyi Zawod v. Sia "Baltmark Invest" et al., Civil Action No. 1:12-cv-00515-JCC-IDD (E.D. Va.) (Opposition No. 91161570 and Cancellation No. 92047126) [The Board sustained an opposition to registration of the mark SHUSTOFF for various alcoholic beverages, finding it likely to cause confusion with the mark SHUSTOV & Design (shown below) for alcoholic beverages. The Board dismissed counterclaims asserting fraud and abandonment regarding the latter registration. On Nov. 6, 2013, the district court dismissed Odessky's fraud and abandoment claims (here)].

Vosk International Co. v. Zao Gruppa Predpriyatij Ost et al., 2:11-cv-01488-RSL (W.D. Wa.) (Oppositions Nos. 91168423, 91169098, and 91169446) [The district court granted defendants' summary judgment motion (here), affirming the TTAB's decision that sustained oppositions to registration of three marks for sparkling water. A notice of appeal to the U.S. Court of Appeals for the Ninth Circuit was filed on November 4, 2013].



Read comments and post your comment here.

TTABlog note:  If you are aware of any other pending district court cases (or any appellate court cases), please let me know.

Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability: Which One Of These Three Mere Descriptiveness Refusals Was Reversed?

By my estimation, some 80-85% of all Section 2(e)(1) mere descriptiveness refusals that reach the TTAB are affirmed on appeal. Well, here are three appeals that were just decided. One was reversed. Which one, pray tell?



In re Micro Interventional Devices, Inc., Serial No. 85446955 (November 15, 2013) [not precedential]. [Mere descritiveness refusal of MICRO INTERVENTIONAL DEVICES for "medical, surgical implants made of artificial material" [DEVICES disclaimed].

In re Société des Produits Nestlé S.A., Serial No. 85509120 (November 18, 2013) [not precedential]. [Mere descriptiveness refusal of KID SELECTS for various food items, including drinking yogurts, cereal, and fruit juices].

In re Motion Fitness, Serial No. 85627683 (November 19, 2013) [not precedential]. [Mere descriptiveness refusal of ACTIVE GAMING for "educational services, namely, conducting programs in the field of health and fitness"].

Read comments and post your comment here.

TTABlog note:  Well, how did you do, kids? See any WYHAs here?

Text Copyright John L. Welch 2013.

Current List of TTAB Cancellation Decisions On Appeal to CAFC

I have gleaned (with the help of Alex Samuel and others) seven (7) appeals currently pending before the CAFC from TTAB decisions in cancellation proceedings. The cases are summarized below, with links to the pertinent TTABvue pages where the decisions may be found, as well as links to the pertinent TTABlog postings, if any. [Appeal briefs and other papers may be found via PACER; Oral argument recordings may be found here, if any].

Cancellations:

Empresa Cubana del Tabaco v. General Cigar Co., Inc., Appeal No. 13-1465 (Cancellation No. 92025859). [Summary dismissal of petition for cancellation of two registrations for the mark COHIBA for cigars, on the ground of lack of standing, in view of the decision of the U.S. Court of Appeals for the Section Circuit in  Empresa Cubana Del Tabaco dba Cubatabaco v. Culbro Corp., 399 F.3d 462 (2nd Cir. 2005)].

Gutier v. Hugo Boss Trade Mark Mgmt, Appeal No. 13-1481 (Cancellation No. 92052549). [The Board dismissed as moot a petition for cancellation of registrations for the marks XY COSMETICS for "cosmetics and non-medicated skin care preparations for men" and XY SKIN CARE for "non-medicated skin care preparations for men," on the ground of mootness in view of a decision of the U.S. District Court for the District of Arizona, ordering cancellation of the two registrations]. [Affirmed]

Edge Games, Inc. v. EA Digital Illusions, Appeal No. 13-1530 (Cancellation No. 92051465). [The Board granted a petition for cancellation of five registrations for the marks EDGE, THE EDGE, GAMER'S EDGE, and CUTTING EDGE for video games, printed matter, and related goods and services, in view of a final judgment entered by the United States District Court for the Northern District of California in Edge Games, Inc. v. Electronics Art, Inc., Civil Action No. c10-02614 WHA (N.D. Cal. October 1, 2010)]. [See TTABlog posting here]. [Appeal dismissed].

Cigar King, LLC v. Corporacion Habanos, S.A., Appeal No. 13-1531 (Cancellation No. 92053245). [The Board granted a petition for cancellation of two registrations, one for the mark HAVANA SOUL and the other HAVANA LEON, both for cigars made with Cuban seed tobacco, as a sanction for Respondent's failure to comply with a Board discovery order].

C. & J. Clark International v. Unity Clothing Inc., Appeal No. 13-1542 (Cancellation No. 92049418) [Dismissal of a petition for cancellation of a registration for the mark UN & Design for various clothing items, predicated solely on the ground of fraud, in view of the lack of proof of Respondent's fraudulent intent in making admittedly false statements, at the time of filing the underlying application, regarding use of its mark in connection with some of the goods identified in its registration]. [TTABlogged here].

Chesapeake Marine Tours, Inc. v. Alcatraz Media, Inc., Appeal No. 14-1031 (Cancellation No. 92050879) [The Board ordered cancellation of a registration for the mark ANNAPOLIS TOURS for "conducting guided tours of historic districts and other areas of cities" on the ground of mere descriptiveness]. [TTABlogged here].

Terry v. Newman, Appeal No. 14-1036 (Cancellation No. 92047809). [The Board dismissed a petition for cancellation of a registration for the mark OPERATION RESCUE for "educational services, namely, providing classes, workshops, seminars, and personal instruction in the field of pro-life issues and social activism," ruling that the mark did not falsely suggest a connection with Petitioner Randall Terry because the mark did not uniquely and unmistakably point to Petitioner as of the time of registration].

Read comments and post your comment here.

TTABlog note: A major fraud ruling from the CAFC in the "UN" case is, I think, UNlikely.

Text Copyright John L. Welch 2013.

Current List of TTAB Opposition Decisions on Appeal to the CAFC

I gather (with the help of Alex Samuel and others) that there are currently pending before the CAFC, five (5) appeals  from TTAB decisions in opposition proceedings. The cases are summarized below, with links to the pertinent TTABvue pages where the decisions may be found, as well as to the pertinent TTABlog postings, if any. [Appeal briefs and other papers may be found via PACER; Oral argument recordings may be found here, if any].

Oppositions:

Stone Lion Capital Partners v. Lion Capital LLP, Appeal No. 13-1353 (Opposition No. 91191681). [The Board sustained this opposition to registration of STONE LION CAPITAL for "financial services, namely, investment advisory services, management of investment funds, and fund investment services" [CAPITAL disclaimed], finding the mark likely to cause confusion with the registered marks LION and LION CAPITAL for various financial services [CAPITAL disclaimed]].

StonCor Group, Inc. v. Specialty Coatings, Inc., Appeal No. 13-1448 (Opposition No. 91187787). [The Board dismissed this opposition to ARMORSTONE for "clear and pigmented coatings used in the nature of paint; Glazes; House paint; Interior paint; Mixed paints; Paint for concrete floors; Paint primers; Paint sealers; Paint thinner; Paints; Paints and lacquers; Pavement striping paint; Epoxy coating for use on concrete industrial floors," finding it not likely to cause confusion with the registered mark STONCLAD, STONHARD, and STONSHIELD for goods that include epoxy hardeners; and also finding the applied-for mark not merely descriptive of applicant's epoxy coatings].



Costantine v. C.F.M. Distributing Company, Appeal No. 13-1467 (Opposition No. 91185766). [In this complicated case concerning ownership of the two marks shown immediately below, for restaurant services, the Board sustained Opposer Constantine's oppositions, ruling that applicant was not the owner of the marks at the time the applications were filed, and consequently, both of the opposed applications were void ab initio]. [TTABlogged here].

Cutino v. Nightlife Media, Inc., Appeal No. 13-1541 (Opposition No. 91186025). [Dismissal of a Section 2(d) opposition to registration of NIGHTLIFE TELEVISION for "Video-on-demand transmission services, Internet broadcasting services, broadcasting services, namely, broadcasting programs over a global computer network to mobile telephones and computers, Satellite television broadcasting, and Television broadcasting," in view of the registered marks LONG ISLAND’S NIGHTLIFE (Stylized) [LONG ISLAND disclaimed] and NEW YORK'S NIGHTLIFE [NEW YORK'S disclaimed] for monthly magazines].

Implant Direct Int'l v. Clear Choice Holdings LLC, Appeal No. 14-1071 (Opposition No. 91190485) [The Board sustained this Section 2(d) opposition to registration of the mark REAL CHOICE, finding confusion likely with the registered mark CLEARCHOICE DENTAL IMPLANTS, both for dental implant services [DENTAL IMPLANTS disclaimed in the registered mark]. [TTABlogged here].

Read comments and post your comment here.

TTABlog note:  See any WHYA?s here?

Text Copyright John L. Welch 2013.

USPTO Looking to Hire Trademark Examining Attorneys

The USPTO is accepting applications for "Attorney Advisor" positions. Deadline for applications is November 25, 2013. Details here.

Work for the largest Intellectual Property Rights Firm in the United States - United States Patent and Trademark Office (USPTO). The U.S. Patent and Trademark Office has been serving the economic interests of America for more than 200 years. We are responsible for granting US intellectual property rights for patents and trademarks. Our efforts have provided inventors exclusive rights over their discoveries. It's an effort that continues to contribute to a strong global economy, to encourage investment in innovation and to cultivate an entrepreneurial spirit for the 21st century. The USPTO is headquartered in Alexandria, Virginia, and has over 11,000 employees, including engineers, scientists, attorneys, analysts, IT specialists, etc. all dedicated to accomplishing the USPTO’s mission, vision, strategic goals and guiding principles. For more information about the USPTO, please visit our websites at www.usptocareers.gov.

TTAB Sustains Opposition to KLYMAXX in Band Name Ownership Dispute

IP Ownership maven Pamela Chestek, at her Property, intangible blog, in a posting entitled, "If There's No Evidence, How Do You Decide?," discusses (here) the Board's recent decision involving a dispute between certain members of the all-female band KLYMAXX. The Board was handed an incomplete factual record, but managed to conclude that, as between the parties, applicants Cooper and Irby either were not the first users of the mark or were not the sole owners of the mark. Cheryl Cooley v.  Bernadette Cooper and Joyce Irby, Opposition No. 91189474 (November 4, 2013) [not precedential].

Read comments and post your comment here.

TTABlog note:

Text Copyright John L. Welch 2013.

Current List (11-23-13) of TTAB Ex Parte Decisions on Appeal to the CAFC

By my reckoning, with the help of Alex Samuel and others, there are currently nine (9) appeals pending before the CAFC from TTAB decisions in ex parte cases. They are summarized below, with links to the pertinent TTABvue pages where the decisions may be found, as well as to the pertinent TTABlog postings, if any. [Appeal briefs and other papers may be found via PACER; Oral argument recordings may be found here. if any].

Ex parte appeals:

In re Geller, Appeal No. 13-1412 (Serial No. 77940879) [Section 2(a) disparagement refusal of STOP THE ISLAMISATION OF AMERICA, for "providing information regarding understanding and preventing terrorism"].  [TTABlogged here].



In re Nordic Naturals, Inc., Appeal No. 13-1492 (Serial No. 77131419) [Refusals to register CHILDREN'S DHA for "nutritional supplements containing DHA" on the grounds of genericness and, alternatively, mere descriptiveness and lack of acquired distinctiveness, and further on the ground that applicant failed to enter a required amendment of the identification of goods to indicate that the goods are formulated for children].


In re The Newbridge Cutlery Co., Appeal No. 13-1535 (Serial No. 79094236) [Section 2(e)(2) refusal of NEWBRIDGE HOME as primarily geographically descriptive of silverware, jewelry, and kitchen goods [TTABlogged here].

In re Doctors Making Housecalls, Appeal No. 13-1553 (Serial No. 85324528) [DOCTORS MAKING HOUSECALLS deemed generic for “providing on-site medical services to patients at their homes, apartments, senior communities, offices, or other designated locations," and if not generic, then merely descriptive and lacking in acquired distinctiveness]. [TTABlogged here].

In re Louisiana Fish Fry Products, Appeal No. 13-1619 (Serial No. 77816809) [Requirement that applicant disclaim the term FISH FRY PRODUCTS in the mark LOUISIANA FISH FRY PRODUCTS BRING THE TASTE OF LOUISIANA HOME and Design, for "marinade; sauce mixes, namely, barbecue shrimp sauce mix; remoulade dressing; cocktail sauce, seafood sauce; tartar sauce; gumbo filé; and cayenne pepper"].

In re BabyCakes NYC, Inc, Appeal No. 13-1659 (Serial No. 85214746) [Section 2(d) refusal of BABYCAKES & Design for "retail bakery shops" in view of the registered mark BABYCAKES (Stylized) for staple foods, namely, doughnuts and bakery goods]. (Serial No. 85214746).

In re St. Helena Hospital, Appeal No. 14-1009 (Serial No. 85416343) [Section 2(d) refusal to register TAKETEN for "health care services, namely, evaluating weight and lifestyle health and implementing weight and lifestyle health improvement plans in a hospital-based residential program," in view of the registered mark TAKE TEN! for "printed manuals, posters, stickers, activity cards and educational worksheets dealing with physical activity and physical fitness"].

In re Positec Group Limited, Appeal No. 14-____ (Serial No. 77920346) [Section 2(e)(1) mere descriptiveness refusal of SUPERJAWS for machine tools and hand tools, including jaws and metal vice jaws]. [TTABlogged here].

In re Tam, Appeal No. 14-____ (Serial No. 85472044) [Section 2(a) disparagement refusal of THE SLANTS for a musical band]. [TTABlogged here].

Read comments and post your comment here.

TTABlog note: If you are aware of any other ex parte cases now on appeal to the CAFC, please let me know and I will add it/them to the list. And if you see any corrections that should be made, please contact me.

Text Copyright John L. Welch 2013.

TTAB Affirms Requirement to Disclaim HOLISTIC in EARTHBORN HOLISTIC for Cat Food

Rejecting applicant's arguments that HOLISTIC is merely suggestive of cat food and that EARTHBORN HOLISTIC is a unitary mark, the Board affirmed a refusal to register that mark due to applicant's failure to disclaim HOLISTIC. The fact that applicant Midwest owns a more-than-five-years-old registration for the identical mark for dog food, without disclaimer, was of no help. In re Midwestern Pet Foods, Inc., Serial No. 85128946 (November 13, 2013) [not precedential].

Is HOLISTIC merely descriptive of cat food?: The Examining Attorney submitted dictionary definitions of "holistic," third-party website evidence showing the word "holistic" to "describe pet food as addressing the complete needs of the pet," third-party registrations for pet or dog food, which registrations included a disclaimer of HOLISTIC, and applicant's own website (stating that applicant has "developed a natural holistic approach to nutrition with high quality ingredients to nourish the whole cat.)"

Midwest urged that HOLISTIC is suggestive because the word has so many varied definitions that it "can hardly be said to immediately describe any one single feature or characteristic" of the cat food. Instead, HOLISTIC connotes "a sophisticated level of pet food formulation, catered to the needs of a demanding pet owner clientele."

The Board found the PTO's evidence sufficient to demonstrate that HOLISTIC is merely descriptive of a significant feature of applicant's cat food, namely, that it, in applicant's words, "nourishes the whole cat."

Is EARTHBORN HOLISTIC unitary?: Midwest maintained that the combination of EARTHBORN and HOLISTIC is incongruous because EARTHBORN means a part of the earth and HOLISITIC means concerned with the whole and not the parts. A particular food cannot be both EARTHBORN and HOLISTIC at the same time because "a food cannot be part of something and also be the whole of itself," Midwest asserted. The Board disagreed.

Here, the words EARTHBORN and HOLISTIC are not “so merged together” such that they are not perceived as separable elements. We find that the individual words do not “cancel one another out.” The words EARTHBORN (“of earthly origin”) and HOLISTIC (focusing on the interdependence of the diverse parts within the total entity) each retain their separate but congruent meanings. Thus, the mark does not present an incongruity such that the merely descriptive meaning of HOLISTIC is lost or eclipsed by some combined meaning or double entendre. 

Prior Registration for Dog Food?: Applicant argued that the "unitariness" of its mark was recognized by the PTO when it registered the identical mark for dog food, without a disclaimer. That registration is now more than five years old and cannot be cancelled on mere descriptiveness grounds.

The Board observed that "a registered mark is incontestable only in the form registered and for the goods or services claimed."  Here, although "dog food and cat food are similar insofar as they fall under the general category of pet food, they are distinct products." They have different formulations, according to applicant's website. There is no statutory ipso facto right to register a mark for additional goods when items are added to a company's line of goods.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog note: Although the Board cites various cases involving "incontestability," those cases concern civil actions in federal court. The five-year statute of limitations under Section 14 bars a petition for cancellation on certain grounds (including mere descriptiveness), regardless of whether the registration has been made incontestable by the filing of an appropriate declaration under Section 15. To use the term "incontestable" in the TTAB context seems to me to be inappropriate; incontestability refers to the right to use, not the right to register. What we need is a better term than a "more-than-five-years-old" registration.

Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability: Is there a Reversal in these Four Section 2(d) Appeals?

I once heard a TTAB judge assert 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 four appeals. Is there a reversal in there somewhere? No there isn't.



In re MWR Holdings, LLC, Serial No. 85490234 (October 29, 2013) [not precedential]. [Refusal of BONGO BEAR for “plush toys” [BEAR disclaimed] in view of the registered marks BONGO CATS for “plush toys, stuffed toy animals, musical toy instruments” [CATS disclaimed] and BONGO BI-LINGO BUDDY for “plush toys, hand puppets, board games, card games, stuffed toy animals, musical toy instruments, namely, drums, brass and percussion”].

In re Health Fusion Brands, Inc., Serial No. 85491698 (November 4, 2013) [not precedential]. [Refusal to register the mark shown immediately below, for “clothing, namely shirts,” in view of the registered mark RIPTIDE for “men’s, women’s and children’s apparel, namely, shorts, shirts, jackets and footwear”].

In re Anderal OÜ, Serial No. 79105302 (November 4, 2013) [not precedential]. [Refusal to register the mark shown below left, for “preparations; hair lotion soaps; perfumery; essential oils; cosmetics; non-medicated skin care preparations; cosmetic sunscreen preparations; non-medicated toiletries; nail cares; hair-care preparations; shampoos; hair gels; hair sprays; non-medicated hair shine serums; hair conditioners; hair foams; hair oils; hair bleaching preparations; hair waving preparations; hair colorants; hair dyes; hair-coloring preparations; adhesives for affixing false hair,” in view of the registered mark shown below right, for “beauty masks; body masks; cloths or tissues impregnated with a skin cleanser; face and body creams; face and body lotions; facial masks; skin cleansers”].

In re Twentieth Century Fox Film Corp., Serial No. 77824292 (November 8, 2013) [not precedential]. [Refusal to register PANDORAPEDIA for “shirts; pants; shorts; underwear; boxer shorts; hats; caps; sweatshirts; sweaters; skirts; gloves; socks; shoes; boots; coats; jackets; swimwear; belts; scarves; pajamas; slippers; infant wear; hosiery; Halloween and masquerade costumes and masks sold in connection therewith; all of the foregoing related to motion picture films,” in view of the registered mark PANDORA for “men’s[,] women’s and children’s sportswear, namely, sweaters, swimwear, pants, shorts, shirts, blouses, skirts, jumpers, blazers, jackets, culottes, dresses, cotton knit tops, shifts, swimsuits, and swim suit cover-ups”].

Read comments and post your comment here.

TTABlog note: The song "Civilization," features the lyric: "Bingo, Bango, Bongo, I don't want to leave the Congo."


Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability: Are CARESTAT and STATCARE Confusable for Health Services?

The PTO refused registration of the mark CARESTAT for “medical services, namely, non-emergency and urgent out-patient health care services and occupational medicine services,” finding the mark likely to cause confusion with the registered mark STATCARE & Design, shown below, for “physician services, health services” [P.L.L.C. and the Caduceus design disclaimed]. Applicant Main Line appealed. How do you think this came out? In re Main Line Urgent Care Centers, LLC, Serial No. 85470562 (October 31, 2013) [not precedential].

The services: The Board agreed with Examining Attorney W. Wendy Jun, without objection from applicant Main Line, that the services are legally identical. Because the opposed application and cited registration have no limitations as to channels of trade or classes of consumers, the Board presumed, as it must, that they are the same for both marks.

The marks: Once again the Board noted that when the services are identical, a lesser degree of similarity is necessary to support a finding of likely confusion.

Main Line argued that the marks, in their entireties, engender different commercial impressions because of the different order of the words. Moreover, it asserted, the Caduceus design and the entity designation in the cited mark further distinguish the marks. Not surprisingly, the Board found the dominant portion of the cited mark to be STAT CARE, since P.L.L.C. is a legal entity designation that has no source-identifying significance and the Caduceus design is a commonly-known medical insignia. In any event, when a mark comprises a word and a design, the word is normally accorded more weight because purchasers would use the word to request the goods or services.

Main Line contended that in the cited mark the word STAT is emphasized, stressing the speed of the care given, while in the applied-for mark the emphasis is on care, stressing concern and empathy. The Board disagreed. It found that both marks suggest quick emergency care. Moreover, Main Line seeks to register its mark in standard character form, and its mark could be displayed in the same or similar font, color, and character as the cited mark. In fact, in applicant’s specimen of use, it displays the mark as CareSTAT, emphasizing the STAT portion. In short, the involved marks engender the same commercial impression.

As to the reversal of the elements, this may serve as a basis for distinguishing the marks “only if the transposed marks create distinctly different commercial impressions.” The cases cited by applicant to support its view were distinguishable because the marks in those cases were different. [both TOWN SQUIRES and SQUIRETOWN, and SILKY TOUCH and TOUCH O’ SILK, concern marks having distinctly different commercial impressions]. Here the commercial impressions of the two marks are the same.

As to the strength of the marks, the Board agreed that both are weak when used in connection with the identified services. However, even weak marks are entitled to protection against registration of a similar mark for closely related services.

Finally, even if consumers of the involved services would exercise extra care in their purchasing decisions, they are not immune from confusion:

Further, even if we accept that purchasers of urgent healthcare services exercise a heightened degree of care in purchasing such services, we are not persuaded that the degree of care will avoid a likelihood of confusion, since the fact that "the relevant class of buyers may exercise care does not necessarily impose on that class the responsibility of distinguishing between similar trademarks for similar goods. Human memories even of discriminating purchasers are not infallible."

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog note: How did you do?

Text Copyright John L. Welch 2013.

Divided TTAB Panel Finds NEIGHBORHOOD RADIO Generic for ... Guess What?

A divided panel of the TTAB affirmed a refusal to register, on the Supplemental Register, the applied-for mark NEIGHBORHOOD RADIO, finding it to be generic for “radio broadcasting of information and other programs” [RADIO disclaimed]. Judge Masiello filed a terse dissent. In re Sounds Good Broadcast Consultants, Inc., Serial No. 77885449 (October 29, 2013) [not precedential].

The Board found the genus of services to be identified by applicant’s recitation of services. The question, then, was whether the relevant consuming public – ordinary consumers who listen to “radio broadcasting of information and other programs” – understands the term NEIGHBORHOOD RADIO to identify a type of radio broadcasting service.

The panel majority concluded that the Examining Attorney William T. Verhosek had established the term’s genericness by the required clear evidence, consisting of applicant’s own specimen of use, third-party Internet pages, and several Lexis/Nexis articles.

Applicant’s own use of the term NEIGHBORHOOD RADIO (e.g., “your community radio station”) and the third-party uses (e.g., “Start Your Very Own Neighborhood Radio Station!”; “FCC Supports Neighborhood Radio”: “How to create and run your own neighborhood radio network”) demonstrate that the public understands that NEIGHBORHOOD RADIO is generic for “radio broadcasting of information and other programs.”

Judge Masiello dissented, briefly: “I do not believe the examining attorney has met his burden of demonstrating by clear evidence that the expression NEIGHBORHOOD RADIO is generic."

Read comments and post your comment here.

TTABlog comment: I didn’t find the evidence all that convincing either. What do you think?

Text Copyright John L. Welch 2013.

Finding Applicant's Proof of Analogous Use Inadequate, TTAB Enters Summary Judgment in SPENDOLOGY Opposition

Twitter? Facebook? Domain Name Registration? Not enough to prove priority by way of use analogous to trademark use. So the Board granted opposer PNC's summary judgment motion in this Section 2(d) opposition to registration of the mark SPENDOLOGY for a financial website in view of the identical mark for an online budgeting tool. The parties, via their cross-motions for judgment, essentially agreed that confusion is likely. The only issue was priority. The PNC Financial Services Group, Inc. v. Keith Alexander Ashe dba Spendology and Spendology LLC, Opposition No. 91207409 (October 15, 2013) [not precedential].

Applicant enjoyed a constructive first use date of October 25, 2011, the filing date of the opposed application. However, opposer PNC's evidence established a first use date of August 26, 2010. Applicant attempted to prove an earlier date based on alleged "use analogous to trademark use."

In order to demonstrate that use analogous to trademark use has given rise to proprietary rights, a party must show that such prior use was sufficient to create an association in the minds of the purchasing public between the mark and the goods. *** We may infer the fact of identification of the mark with the party on the basis of indirect evidence regarding the party's use of the word or phrase in advertising brochures, catalogs, newspaper ads, articles in newspapers, trade publications and Internet websites which create a public awareness of the designation as a trademark identifying the party as a source. [citations omitted].

Applicant's evidence, taken as a whole, failed to establish proprietary rights before its constructive first use date, which plainly was too late for priority purposes.

Applicant's personal budgeting survey and an undated budget presentation failed to reference the mark SPENDOLOGY. Its registration of the domain name did not itself constitute use analogous to trademark use. As to the SPENDOLOGY website, applicant provided two "beta" pages, neither of which referenced the identified services, and in any case there was no evidence as to how many persons viewed the website.

With regard to social media, the acts of joining Twitter and Facebook did not by themselves establish use analogous to trademark use. Although the evidence included URLs and dates of publication, there was no declaration testimony regarding the extent of consumer exposure to applicant's blog posts, Twitter page, tweets, or Facebook page. Moreover, the Twitter page, Facebook page, and blog postings did not refer to applicant's services.

Applicant's remaining evidence, consisting of emails, a press release, and a conference receipt, likewise did not mention the identified services.

In sum, applicant's indirect evidence failed to establish use analogous to trademark use because it did not "support an inference of identification in the mind of the consuming public." Therefore, the earliest date upon which applicant could rely was its filing date of October 25, 2011.

Relying on the declarations of its product manager, based on his personal knowledge, opposer PNC established its common law rights in the mark SPENDOLOGY from August 26, 2010. PNC therefore had priority and the Board granted its motion for summary judgment.

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TTABlog note: Note that oral testimony may be enough to establish priority if it is clear and convincing, and uncontradicted.

For a case in which the proof of use analogous to trademark use was deemed adequate, go here.

Text Copyright John L. Welch 2013.