Bill Introduced in Congress to Allow Registration of Governmental Insignia

In October, the CAFC affirmed the TTAB's decisions (here and here) upholding the USPTO's Section 2(b) refusals to register the governmental seals of the District of Columbia and the City of Houston. In re City of Houston and In re The Government of the District of Columbia, 108 USPQ2d 1226 (Fed. Cir. 2013) [precedential]. (Opinion here). [TTABlogged here].



In its District of Columbia decision, the Board observed that "[t]he remedy that applicant seeks is a matter that might be addressed legislatively, but we have no authority to change the words of the statute." On December 13, 2013, several members of the House and Senate introduced a bill to amend the Trademark Act to allow "the Federal government as well as all State and local governments to register with the U.S. Patent and Trademark Office (PTO) marks consisting of their flag, coat of arms and other official seals." Press release here.

The full text of the bill, entitled "A bill to amend the Trademark Act of 1946 to provide for the registration of marks consisting of a flag, coat of arms, or other official insignia of the United States or of any State or local government, and for other purposes, " may be found here.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

TTABlog Quarterly Index: October - December 2013

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

Section 2(a) - Deceptiveness:

• Test Your TTAB Judge-Ability: Is BLAZING SILKS Deceptive for Non-Silk Clothing?

Section 2(a) - Disparagement:

• Precedential No. 38: TTAB Affirms Section 2(a) Disparagement Refusal of "THE SLANTS" for Musical Band

Section 2(a) - Scandalous or Immoral:

• Test Your TTAB Judge-Ability: Is This "Statue of Liberty" Design Mark Scandalous Under Section 2(a)?

Section 2(b) - Governmental Insignia:

• CAFC Affirms TTAB: DC and Houston Seals Properly Refused Registration Under Section 2(b)

Section 2(d) - Likelihood of Confusion:

• Different Trade Channels Preclude Confusion of BENTLEY marks, Says TTAB
• TTAB Affirms 2(d) Refusal of ZERO EMISSIONS in View of Supplemental Registration
• PRIDER Confusable With PRIDE for Scooters, Says TTAB, Affirming 2(d) Refusal
• Test Your TTAB Judge-Ability: Are Socks Related to Jackets? How About Sunglass Lenses and Sunglasses?
• WYHA? TTAB Finds WINERY DOGS Confusable With WINE DOGS for Books About Dogs
• TTAB Sustains 2(d) Opposition: ACTRX for Supplements Confusable with ACT for Anti-Cavity Mouthwash
• TTAB Refuses to Take Judicial Notice of WIkipedia Entry, Affirms Section 2(d) Refusal of FREEBIRD BY STEVEN for Shoes
• Test Your TTAB Judge-Ability: Which One of these Section 2(d) Refusals Was Reversed?
• WYHA? TTAB Finds FLUTTER FAERIES for Dolls Confusable with FLITTER FAIRIES for Fantasy Toy Characters
• Test Your TTAB Judge-Ability: Is there a Reversal in these Four Section 2(d) Appeals?
• Test Your TTAB Judge-Ability: Are CARESTAT and STATCARE Confusable for Health Services?
• Finding Applicant's Proof of Analogous Use Inadequate, TTAB Enters Summary Judgment in SPENDOLOGY Opposition
• WYHA? TTAB Affirms 2(d) Refusal of "GAME GENIE & Design" for Video Game Cheat Software
• Test Your TTAB Judge-Ability: Are These Two "Marvelous" Marks Confusable for Movie Production Services?
• Test Your TTAB Judge-Ability on these Four Section 2(d) Appeals
• BOTULEX Confusable With Famous BOTOX Mark, Says TTAB
• TTAB Dismisses 2(d) Opposition Due to Lack of Proof That Wine and Apple Beverages Are Related
• WYHA? TTAB Affirms Section 2(d) Refusal: STORM CANDLE Confusable With STORM WATCH for Candles
• Test Your TTAB Judge-Ability on These Three Section 2(d) Appeals
• Test Your TTAB Judge-Ability: Is "ME SO HUNGRY" Confusable with "MISOFISHY" for Catering Services?

Section 2(e)(1) - Mere Descriptiveness:

• Test Your TTAB Judge-Ability: Is SUPER-PHARM Merely Descriptive of Drug Store Services?
• District Court Reverses TTAB: INTELLIGENT QUARTZ Not Merely Descriptive of Watches
• Test Your TTAB Judge-Ability: Is THE COOLER COMPANY Merely Descriptive of Coolers?
• Test Your TTAB Judge-Ability: Which One Of These Three Mere Descriptiveness Refusals Was Reversed?
• TTAB Affirms Requirement to DIsclaim HOLISTIC in EARTHBORN HOLISTIC for Cat Food
• "PRESERVATION CLOUD" Merely Descriptive of Data Preservation Services, Says TTAB
• Test Your TTAB Judge-Ability: Is MAMMOCAT Merely Descriptive of Medical Imaging Devices?
• WYHA? TTAB Affirms Disclaimer Requirement: ARMOUR PIERCING Merely Descriptive of Archery Arrows
• TTAB Affirms Disclaimer Requirement; "4D" Merely Descriptive of Medical Monitoring Devices
• Test Your TTAB Judge-Ability: Is "KNOW YOUR SCORE" Merely Descriptive of Credit Reporting Services?
• Test Your TTAB Judge-Ability: Is JIN-JA Merely Descriptive of Herbal Tea?
• Precedential No. 37: TTAB Affirms Mere Descriptiveness Refusal of SUPERJAWS for Machine and Hand Tools

Section 2(e)(2) - Primarily Geographically Descriptive:

• Test Your TTAB Judge-Ability: Is ASHBURN Geographically Descriptive of Blankets?
• TTAB Sustains Opposition to LAGUNA CANDLES: Geographically Descriptive of Candles
• Test Your TTAB Judge-Ability: Is ACHOUFFE Primarily Geographically Descriptive of Beer?

Section 2(e)(5) - Functionality:

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

Section 2(f) - Acquired Distinctiveness:

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

Failure to Function:

• TTAB Affirms Failure-to-Function Refusal of 668-Word "Mark" for Printed Matter
• TTAB Affirms Refusal to Register Bicycle Enclosure Shape Due to Lack of Distinctiveness

Fraud:

• TTAB Dismisses Fraud Counterclaims in "M & Design" Kerfuffle

Genericness:

• TTAB Reverses Genericness Refusal of "BOURGOGNE DES FLANDRES" for ... Guess What?
• Divided TTAB Panel Finds NEIGHBORHOOD RADIO Generic for ... Guess What?
• Precedential No. 36: TTAB Finds FOOTLONG To Be Generic for Sandwiches
• PRÊT À BOIRE Not Generic for Wine, Says TTAB

Lack of Bona Fide Intent:

• Polo Runs Roughshod over Pro Se Applicant with No Bona Fide Intent
• Precedential No. 39: TTAB Sustains Swatch Opposition to IWATCH, Finding Lack of Bona Fide Intent

Non-use:

• Precedential No. 40: TTAB Sustains Opposition to CLOROTEC & Design Due to Non-Use

Ownership:

• TTAB Sustains Opposition to KLYMAXX in Band Name Ownership Dispute

Discovery/Evidence/Procedure:

• TTABummer: Pro Se Opposer Fails To Get Registration, Other Evidence Into Record
• Precedential No. 42: TTAB Grants Applicant's Contested, Pre-Trial Motion to Narrow Its Identification of Goods
• TTAB Grants Petitioner STP's Summary Judgment Motion After Registrant Admits Everything
• Precedential No. 41: Genericness Counterclaim Survives Dismissal of Opposer's 2(d) Claim, Says TTAB
• TTAB Dismisses CAFE BARBERA Opposition: Pleaded Registration Not Properly Made of Record

CAFC Decisions:

• CAFC Affirms TTAB: DC and Houston Seals Properly Refused Registration Under Section 2(b)

Recommended Reading:

• PLI Publishes New Editions of Siegrun Kane and Richard Kirkpatrick Books

Other:

• Updated List of TTAB Opposition Decisions on Appeal to the CAFC
• Updated List of TTAB Ex Parte Decisions on Appeal to the CAFC
• New Book: Trademark Litigation - Jurisdictional Comparisons
• TTAB Posts December 2013 Hearing Schedule
• Three More District Court "Appeals" from TTAB Decisions
• Current List of TTAB Decisions on "Appeal" to District Courts
• Current List of TTAB Cancellation Decisions On Appeal to CAFC
• Current List of TTAB Opposition Decisions on Appeal to the CAFC
• Current List of TTAB Ex Parte Decisions on Appeal to the CAFC
• Tips for Effectively Searching the USPTO Database Using TESS - California IP Bar Webinar: Nov. 12 at Noon (PST)
• TTAB Posts November 2013 Hearing Schedule
• Erik Pelton's Summary of October 18th TPAC Meeting
• Columbia Law School Symposium: "Secondary Liability for Trademark Infringement on the Internet" - November 8th
• John Marshall Law School Symposium, Nov. 8th: The Intersection of IP and Public Health
• TTAB Posts October 2013 Hearing Schedule

Text Copyright John L. Welch 2013.

TTABummer: Pro Se Opposer Fails To Get Registration, Other Evidence Into Record

The Board dismissed this Section 2(d) opposition to registration of the mark SUN BUM for stickers, clothing, and toy animals, because Opposer Donald A. Gagne, appearing pro se, failed to get his evidence of priority into the record. Gagne relied on a registration (issued in 1996) for the mark SUNBUM for lounge chairs, and on common law use of that mark for lounge chairs and shirts. However, he failed to properly submit the registration into evidence, and the Board rejected his other proffered evidence as inadmissible under the hearsay rule. Donald A. Gange v. Agility Sports, LLC, 91194831 (December 23, 2013) [not precedential].

Mr. Gagne took no testimony, but submitted a photocopy of his registration, a photocopy of papers from the ex parte prosecution file of the registration, and a printout from the USPTO assignment database. However he did not submit any document showing the current status of the registration. Therefore the registration was not properly made of record. See Trademark Rule 2.122(d)(1).

Opposer Gagne did not plead priority by analogous use, nor was that issue tried by consent. Therefore, to establish priority, he had to prove actual trademark use of the SUNBUM mark. His evidence, submitted via notice of reliance, consisted of newspaper articles and transcripts of radio and television shows discussing his products, Facebook and Twitter pages, and other Internet documents. However, these documents "constitute hearsay as per Federal Rules of Evidence 801 and 802, if they are offered for the truth of the matter asserted, i.e., that opposer was using [his] pleaded mark SUNBUM on the dates that the articles were written or the dates that the television or radio shows were broadcasted."

In short, the fact that the SUNBUM mark appeared on the various Internet documents was not proof that the mark was in trademark use on the date of the document. Testimony was required to establish that fact. "Opposer could have testified as to his use of his pleaded mark to establish priority, preferably corroborated with documentary evidence authenticated by opposer (for example, sales figures or invoices)."

The Board acknowledged that Opposer Gange entered the trial phase of this opposition without the benefit of legal counsel (who had died). "Nonetheless, the rule against hearsay is a long-established safeguard of the common-law system, serving to exclude evidence which cannot be tested by cross-examination."

Read comments and post your comment here.

TTABlog note: The Internet pages submitted by Gagne might have established priority via use analogous to trademark use. If you were to appeal or seek review of this decision, what route affords the opportunity to add evidence?

Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability: Is SUPER-PHARM Merely Descriptive of Drug Store Services?

In its recent precedential decision in In re Positec Group Limited, 108 USPQ2d 1161 (TTAB 2013)(now on appeal to the CAFC), the Board found the mark SUPERJAWS to be merely descriptive of machine tools and hand tools, including jaws and metal vice jaws. The Board applied the following rule: "[I]f the word "super" is combined with a word which names the goods or services, or a principal component, grade or size thereof, then the composite term is considered merely descriptive of the goods or services, but if such is not strictly true, then the composite mark is regarded as suggestive of the products or services." Here, Examining Attorney Edward Nelson refused registration of the mark shown below, for retail drug store services and for the preparation of pharmaceuticals, absent a disclaimer of the term SUPER-PHARM. Applicant appealed. How do you think this came out? In re Super-Pharm (Israel) Limited, Serial No. 85521587 (December 23, 2013) [not precedential].

In light of Positec, the Board's focus was on the meaning of PHARM. The Examining Attorney relied on two dictionary definitions of "pharm," not surprisingly denoting the term as an abbreviation for "pharmaceutical" and for "pharmaceutical company," and one registration in the pharmacy field, with the word PHARM disclaimed.

Applicant relied on two surveys, an expert witness, third-party registrations of PHARM marks without disclaimer, and the fame of the applied-for mark in Israel.

The expert's testimony, that PHARM does not appear in established dictionaries as an abbreviation for "pharmacy" or "pharmaceutical," was belied by the record. As to the registrations, the Board is not bound by decisions in other applications. And, of course, the alleged fame of the mark in Israel is irrelevant.

As to the two surveys, the first was a "Teflon-style" on-line survey, to which the Board gave "little or no" probative value. While this type of survey may assist in a determination of acquired distinctiveness, applicant did not seek the benefit of Section 2(f), and so the Board was uncertain of the survey's relevance in the context of inherent distinctiveness. In any event, less than half of the survey participants thought SUPER-PHARM to be a drugstore brand, compared with 73% for DUANE READE.

The other survey was "open-ended." Participants were asked to come up with a two-word phrase that describes the products or services of retail drugstores. None came up with SUPER-PHARM. The Board gave this survey no weight, given the innumerable possible answers.

The Board had no doubt, based on the definitions of record, that PHARM is descriptive of applicant's services and must be disclaimed. And so it affirmed the refusal.

Read comments and post your comment here.

TTABlog note: So how did you do?

Text Copyright John L. Welch 2013.

District Court Reverses TTAB: INTELLIGENT QUARTZ Not Merely Descriptive of Watches

The U.S. District Court for the Eastern District of Virginia has reversed the TTAB's decision in In re Timex Group USA, Inc., Serial No. 85164601 (July 26, 2012) [not precedential]. The Board had affirmed a Section 2(e)(1) mere descriptiveness refusal of INTELLIGENT QUARTZ for watches [QUARTZ disclaimed]. On cross-motions for summary judgment in this Section 1071(b)(1) action, the court ruled that the TTAB erred in denying registration because INTELLIGENT QUARTZ "is suggestive rather than descriptive and thus merits trademark protection." Timex Group USA, Inc. v. Focarino, Case No. l:12-cv-1080 (E.D. Va. December 17, 2013).

In a Section 1071(b)(1) action, the district court "sits in a dual capacity:" on one hand it is the finder of fact with respect to new evidence presented by the parties, and on the other it is an appellate reviewer of facts found by the TTAB.

Accordingly, the analysis in this case proceeds as follows. First, the TTAB's finding of fact—viz., the TTAB's conclusion that the term INTELLIGENT QUARTZ is merely descriptive—must be reviewed deferentially pursuant to the substantial evidence standard. Next, the new evidence submitted by the parties must be reviewed de novo to determine what findings of fact are warranted by this new evidence. Finally, in the event that the new evidence warrants findings that contradict, or are inconsistent with, the TTAB's factual findings, the district court must then consider whether the record as a whole establishes that plaintiff has borne its burden of proving by a preponderance of the evidence that the term INTELLIGENT QUARTZ is suggestive in connection with Timex watches and is therefore a protectable mark.

The TTAB concluded that the term is merely descriptive, stating that "consumers and prospective consumers viewing the mark INTELLIGENT QUARTZ as applied to watches will understand the mark to mean that the watch contains a quartz component controlled by a computer chip."

The court first looked at the evidence before the Board and concluded that the Board's decision was "contrary to substantial evidence in the administrative record."

This is so because the lynchpin of the TTAB's descriptiveness finding is the erroneous factual finding that "the watch contains a quartz component controlled by a computer chip." To the contrary, there is no support in the administrative record for the proposition that the quartz is controlled by a computer chip. Indeed the quartz component is not so controlled. ***

[T]here is no evidence in the administrative record that the quartz component in a Timex INTELLIGENT QUARTZ watch functions any differently from the quartz component in any other timekeeping device; viz., that the quartz crystal oscillates to provide a time base for the device.

Therefore, the mark cannot be merely descriptive of Timex's goods.

The court then turned to the new evidence submitted by the parties, as permitted in a Section 1071(b)(1) action.

The court's de novo review of this evidence, "and of the record as a whole, points persuasively to the conclusion that the mark INTELLIGENT QUARTZ is suggestive and therefore protectable." The evidence warranted a finding that the quartz components in the watches are not controlled by computer chips.

The court then examined the INTELLIGENT QUARTZ mark under the two tests for descriptiveness versus suggestiveness: the imagination test and the competitors' need test.

As to the first test, the Board observed that "intellegent watch" may be descriptive, but the mark INTELLIGENT QUARTZ, with the word INTELLIGENT modifying a type of mineral, "does not convey an immediate idea of the characteristics of the relevant product, as the imagination test requires for a descriptiveness finding." The incongruity of the term "requires consumers to exercise imagination or multistep reasoning to decipher the relevant characteristics of the product," and therefore the mark is suggestive.

Turning to the competitive need test, because INTELLIGENT does not describe the functioning of the QUARTZ movement of a watch, competitors do not need to use this term to describe watches with advanced technological capabilities and quartz timepieces.

In sum, the Board's decision was not supported by substantial evidence, and the new evidence compelled the conclusion that INTELLIGENT QUARTZ is suggestive.

Read comments and post your comment here.


TTABlog notes: What happens if the court finds that the Board decision was wrong, but that the new evidence establishes descriptiveness? Is the Board's decision vacated, but registration denied?

The parties mutually resolved the PTO's claim for "expenses" under 15 U.S.C. Section 1071(b)(3). 

Text Copyright John L. Welch 2013.

Different Trade Channels Preclude Confusion of BENTLEY marks, Says TTAB

The Board reversed a refusal to register the mark BENTLEY for perfume, cosmetics, and glassware "sold only in authorized vehicle dealers and authorized vehicle service outlets," finding the mark not likely to cause confusion with the marks BENTLEY, BENTLEY UNIVERSITY, and BENTLEY ORGANIC for similar or identical goods. Applicant Bentley Motors successfully argued that, because its goods are sold only through the "very tightly-knit" Bentley circle of dealers and service outlets, to an "niche, affluent clientele," confusion is unlikely. The Board agreed, apparently having never heard of reverse confusion. In re Bentley Motors Ltd., Serial No. 85325994 (December 3, 2013) [not precedential].

The Examining Attorney argued that, since the cited registrations are unrestricted as to channels of trade, the goods are presumed to travel in all normal channels of trade. The Board  observed, however, that there was no evidence that the ordinary channels of trade for registrants' goods include Bentley's authorized dealers and service outlets.

Put another way, applicant’s goods are marketed solely and exclusively through dealers and service outlets for Bentley and Rolls Royce automobiles. The record does not support the proposition that the goods identified in the cited registrations normally move in these channels of trade, notwithstanding that they do not recite any trade channel limitations. The burden is on the Office to show that the ordinary trade channels for registrants’ goods overlap with applicant’s very limited trade channel.

The Board found this factor to be dispositive, and it therefore reversed the refusal.

Read comments and post your comment here.

TTABlog note: Hold on just a second. What about reverse confusion? What about customers seeing BENTLEY brand products in the normal channels of trade, and thinking they are sold by applicant? Where's the evidence that the general consuming public is aware that Bentley's goods are sold only by authorized dealers?

For a different take on this issue, see the ORION case, TTABlogged here, wherein L.L. Bean's application to register that mark ORION for golf clubs and fishing rods was rejected, despite Bean's argument that the trade channels "cannot overlap" because its goods are sold only by itself, and because the customers for these goods are sophisticated and discriminating.

Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability: Is ASHBURN Geographically Descriptive of Blankets?

Do you know where Ashburn is? FWIW, I never heard of it. When I hear "Ashburn," I think of Hall of Fame outfielder Richie Ashburn. The PTO refused to register ASHBURN for "bed blankets; blanket throws; lap blankets," finding it to be primarily geographically descriptive under Section 2(e)(2). Applicant Punita Leathers appealed. How do you think this came out? In re Punita Leathers, Inc., Serial No. 85322001 (December 17, 2013) [not precedential].

A mark is primarily geographically descriptive under Section 2(e)(2) when the mark is the name of a place generally known to the public, and the public would make a goods/;ace association, i.e., it would believe that the goods identified in the application originate in that place.

The examining attorney's evidence indicated that Ashburn, Virginia (population ~50,000) is located about 30 miles northwest of Washington, D.C. and 12 miles from Chantilly, Virginia, where Punita Leathers is located. However, there was no evidence that Ashburn has any association with blankets, nor that Chantilly, Virginia, is associated with Ashburn.

Although there was no evidence that ASHBURN "is anything other than a geographical location," [remember Richie Ashburn? - ed.], the question here was "how many people in this country know that?" There was no evidence that a significant number of people are aware of Ashburn, Virginia. Instead, the evidence established that Ashburn is remote and obscure.

Because there was at least a genuine issue regarding the obscurity of Ashburn, Virginia, the examining attorney was required to establish a public association of the goods with the place. Again, the evidence fell short. In fact, as Punita Leathers pointed out, it is not even located in Ashburn.

In a footnote the Board distinguished the instant situation from the Board's YOSEMITE BEER decision, in which a Section 2(e)(2) refusal was affirmed even though applicant was located in Merced, California, some 90 miles from Yosemite National Park, because Merced was touted as the "gateway to Yosemite" and the economy of Merced centered around its association with the national park

And so the Board reversed the refusal to register.

Richie Ashburn
Read comments and post your comment here.

TTABlog note: Well, how did you do? What percentage of trademark attorneys, do you think, know who Richie Ashburn is?

Text Copyright John L. Welch 2013.

Updated List of TTAB Opposition Decisions on Appeal to the CAFC

There are currently pending (or soon to be pending) before the CAFC, nine (9) 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, January 18, 2013). [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, June 22, 2012). [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, March 20, 2013). [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]. [Affirmed per curiam].

Cutino v. Nightlife Media, Inc., Appeal No. 13-1541 (Opposition No. 91186025, April 25, 2013). [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, August 26, 2013) [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].

Cybervillage Corporation v. New Jersey Nets LLC, Appeal No. _______ (Opposition No. 91201370, September 9, 2013) [The Board sustained this opposition on two grounds: non-use of the applied-for service mark WWW.BROOKLYN-NETS.TV for "Promoting the goods and services of others, namely, the Dr. Cassagnol signature-lines of fine arts and higher technologies products and services thru the Dr. Cassagnol publishing house, studios and museum group by means of online and offline ordering and cataloging of those goods and services in fine arts and high technologies, distributing advertising materials through a variety of online and offline marketing methods and promotional contests of the Dr. Cassagnol publishing house, studios and museum groups, and by arranging for sponsors to  affiliate their goods and services with the Dr. Cassagnol publishing house, studios and museum group’s activities through the Dr. Cassagnol organizational global high-tech network of the Dr. Cassagnol publishing house, studios and museum group’s duly registered web addresses," in International Class 35, and likelihood of confusion with opposer's famous, registered NETS and NEW JERSEY NETS marks for, inter alia, on-line store, ordering, retail, electronic retailing, catalog, and mail order catalog services].

M.Z. Berger & Co. v. Swatch AG, Appeal No. 14-1219 and 14-1220 (Opposition No. 91187092, September 30, 2013) [precedential] [The Board sustained this opposition to registration of the mark IWATCH, in standard character form, for watches, clocks, and parts thereof, finding that applicant lacked the requisite bona fide intent to use the mark in commerce in connection with its identified goods. However, the Board dismissed Swatch's likelihood of confusion claim, from which dismissal Swatch has cross-appealed]. [TTABlogged here].

Amorepacific Corporation v. Primavera Life GmbH, Appeal No. 14-1255 (Opposition No. 91196106, September 11, 2013) [The Board sustained this opposition to registration of PRIMERA for "Cosmetics and cosmetic preparations; nonmedicated nourishing creams for skin; skin milk lotions; facial creams; cosmetic creams; toilet waters; make-up preparations; non-medicated skin care preparations; foundation cream; shampoos; beauty masks; make-up powder," finding the mark likely to cause confusion with the registered mark PRIMAVERA for, inter alia, pefumery and cosmetics].

Franciscan Vineyards, Inc. v. Domaines Pinnacle, Inc., Appeal No. 14-1269 (Opposition No.  91178682) [The Board dismissed this Section 2(d) opposition to registration of the mark DOMAINE PINNACLE & Design for "apple juices and apple-based non-alcoholic beverages" [DOMAINE disclaimed], finding it not likely to cause confusion with the PINNACLES and PINNACLE RANCHES for wine [RANCHES disclaimed]. [ TTABlogged here].

Read comments and post your comment here.

TTABlog note:  See any WHYA?s here?

Text Copyright John L. Welch 2013.

Updated List of TTAB Ex Parte Decisions on Appeal to the CAFC

By my reckoning, with the help of Alex Samuel and others, there are currently ten (10) appeals pending (or soon to be 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, February 2, 2013) [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, March 27, 2013) [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, April 29, 2013) [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, May 2, 2013) [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, May 24, 2013) [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, July 23, 3013) [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, June 25, 2013) [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. 14-1163 (Serial No. 77920346, September 13, 2013) [precedential] [Section 2(e)(1) mere descriptiveness refusal of SUPERJAWS for machine tools and hand tools, including jaws and metal vice jaws]. [TTABlogged here]. [Appeal withdrawn]

In re Tam, Appeal No. _______ (Serial No. 85472044, September 26, 2013) [precedential] [Section 2(a) disparagement refusal of THE SLANTS for a musical band]. [TTABlogged here].

In re Waves Licensing, LLC, Appeal No. 14-1202 (Serial No. 85437501, September 30, 2013) [Section 2(d) refusal to register the mark SFG for "providing financial intermediation services to institutional investors with respect to securities and other financial instruments and products, namely, brokerage in the field of securities, trading of and investments in securities and financial instruments and products; financial exchange; investment funds transfer services to institutional investors; providing financial market news and commentary to institutional investors," in view of the registered mark SFG A Legacy of Trust and Innovation & Design (shown below) for "financial planning services"].

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.

Test Your TTAB Judge-Ability: Is THE COOLER COMPANY Merely Descriptive of Coolers?

The Coleman Company applied to register the mark THE COOLER COMPANY for "food and drink containers for domestic use; portable water carriers, namely, jugs sold empty; portable coolers and jugs of both rigid and fabric construction." Examining Attorney Ira J. Goodsaid refused registration under Section 2(e)(1) on the ground of mere descriptiveness. Coleman contended that the mark has a double meaning: that it is a company that sells coolers, and that applicant is "cooler," i.e., more fashionable and hip, than other companies in the field. How do you think this came out? In re The Coleman Company, Inc., Serial No. 85980011 (December 4, 2013) [not precedential].

The Board found that the examining attorney had made a prima facie case that THE COOLER COMPANY is "highly descriptive" of applicant's products. THE COOLER COMPANY "clearly and unambiguously describes applicant's business and related products." Coleman conceded as much when it argued that the mark "on the one hand ... conveys that Applicant offers coolers, i.e., containers for food and beverages."

However, Coleman asserted that its mark involves a creative double entendre: "an ambiguity of meaning arising from language that lends itself to more than one interpretation." [E.g., the following marks were found registrable: SUGAR & SPICE for bakery products; NO BONES ABOUT IT for boneless ham; THE FARMACY herbs and organic products for medicinal purposes; MufFuns (stylized) for muffins; TENNIS IN THE ROUND for tennis facilities; THE HARD LINE for mattresses; THE SOFT PUNCH for soft drinks; CHERRY-CHERRY-BING for bing cherries]. But unlike the instant case, some of the examples above set forth above include "stark incongruities" in addition to a potential double meaning.

The Examining Attorney maintained that there is no argument here because the alleged second meaning is not readily apparent from the mark. [E.g., THE GREATEST BAR not registrable as a double entendre because the second meaning (honoring Boston's greatest sports stars) was not readily apparent from the mark itself, without reference to other indicia].


The Greatest BarBoston, MA(click on photo for larger picture)
Coleman contended that the second meaning is readily apparent, since the slang meaning of "cool" is found in many dictionaries. It argued that customers are likely to perceive the word "Cooler" as "a play on the hipness of applicant and or applicant's thermal products."

The Board agreed with Coleman that the word "cool" does have a meaning of "hip" or "fashionable." But it noted that Coleman and the examining attorney seem to agree that the mark is "highly descriptive" of the goods. The question was whether applicant has made a sufficient showing that the mark would be perceived as a double entendre.

The Board pointed out that, since applicant's goods are coolers, any argument about "the ability of an alleged double entendre to overcome the bar of Section 2(e)(1) must be strong." However, there was no evidence of consumer recognition of the supposed double entendre. The fact that Coleman, in its advertising, "is working exceedingly hard to create an aura of fashionableness and trendiness ... around a class of good many consumers might well not place highly on the hipness scale, strengthens the conclusion that consumers will not readily perceive this alternative meaning of 'Cooler.'"

And so the Board found that the applied-for mark does not operate as a double entendre.

Read comments and post your comment here.

TTABlog note: FWIW, when I first saw the mark and the goods, the double entendre did not occur to me.

BTW: I don't recall another case in which the Board applied the "highly descriptive" tag in a "double entendre" context to raise the bar for the applicant.

Text Copyright John L. Welch 2013.

Precedential No. 42: TTAB Grants Applicant's Contested, Pre-Trial Motion to Narrow Its Identification of Goods

Stryker Corporation filed an intent-to-use application to register the mark MICROFX, for "surgical instruments." Johnson & Johnson opposed, alleging likelihood of confusion with its registered mark MICROFIX for "suture anchors." Prior to trial, Stryker filed a motion under Rule 2.133, without opposer's consent, to amend its identification of goods to read: "surgical instruments, namely osteochondral drills, drill guides, and curettes used to create microfracture holes." The Board found that the "unique circumstances" of this case warranted granting of the motion. Johnson & Johnson v. Stryker Corporation, 109 USPQ2d 1077 (TTAB 2013) [precedential].

Under Rule 2.133(a), "An application subject to an opposition may not be amended in substance ... except with the consent of the other party or parties and the approval of the Trademark Trial and Appeal Board, or upon motion granted by the Board." The Board will usually defer a ruling on such a motion until final decision. The circumstances presented here, however, "allow the Board to accept applicant's proposed amendment immediately," despite Johnson & Johnson's objection.

The Board first noted that the subject motion was timely filed, i.e., prior to trial. In considering the motion, the Board looks to the following requirements:

(1) the proposed amendment must serve to limit the broader identification of goods;

(2) applicant must consent to the entry of judgment on the grounds for opposition with respect to the broader identification of goods; and

(3) if the applicant wishes to avoid the possibility of a res judicata effect by the entry of judgment on the original identification, the applicant must make a prima facie showing that the proposed amendment serves to change the nature and character of the goods or restrict their channels of trade and customers so as to introduce a substantially different issue for trial. See Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433, 1435 (TTAB 2007); Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955, 964 (TTAB 1986); Int’l Harvester Co. v. Int’l Tel. & Tel. Corp., 208 USPQ 940, 941 (TTAB 1980).

Here, the first and third requirements were satisfied: the proposed amendment narrows the identification of goods, and the narrowing of the category of users restricts the channels of trade and the prospective customer base, so as to create a substantially different issue for trial.

The crucial question for the Board was whether Stryker unconditionally stated its willingness to accept judgment as to the broader range of goods. Its motion paper and its reply brief were inconsistent on that point. However, the reply brief indicated Stryker's intention to "obviate any doubt," and it clearly expressed its "desire to facilitate resolution of the other opposition to the involved application [which other opposition would be withdrawn by that opposer if the instant motion were granted]." The Board found that Stryker had expressed a position "that if the specified condition precedent - that its amendment be immediately accepted - occurs, then applicant will immediately accept judgment against it on the broader range of goods."

In the "unique circumstances present here," the Board concluded that the second condition set forth above was satisfied.

The Board therefore granted Stryker's motion and accepted its consent to the entry of judgment as to the broader identification of goods. The Board entered judgment "with respect to the mark as applied to all goods encompassed by the broader description 'surgical instruments,' except as for the goods identified by the amended identification."

Proceedings were then resumed as to the amended identification of goods.

Read comments and post your comment here.

TTABlog note: The Board noted that when the application is based upon use, the movant must meet a fourth condition: the specimens of record must support the goods, as amended, and applicant must prove at trial that its mark was in use with the remaining goods as of the relevant date as determined by the filing basis. See cases cited above.

Text Copyright John L. Welch 2013.

TTAB Affirms Failure-to-Function Refusal of 668-Word "Mark" for Printed Matter

In 2001, pro se applicant Prema Jyothi Light filed an application to register the alleged mark shown below for cartoon strips, storybooks, and other printed matter, but Examining Attorney Linda Lavache refused registration, maintaining that the applied-for matter fails to function as a mark under Sections 1, 2 and 45 of the Trademark Act. Furthermore, the PTO refused to accept several proposed amendments to the drawing because they each constitute a material alteration of the proposed mark shown in the original drawing. The Board affirmed the refusals. In re Prema Jyothi Light, Serial No. 76293326 (December 13, 2013) [not precedential].

(click on photo for larger picture)
The proposed mark comprises the wording SHIMMERING BALLERINAS & DANCERS CHARACTER COLLECTION on the top left, surrounded by columns of what appear to be names of various characters. [By my count, 668 words in all, counting an ampersand as a word - ed.].

Failure to function: The critical question was whether consumers would view the applied-for mark as a source indicator. The Board reviewed the specimens of use, as well as other record evidence, and concluded that the proposed mark fails to function as a trademark.

The Board agreed with the examining attorney that "because of the sheer number and visual display of the words in the applied-for matter, it faces a significantly more difficult task in being perceived as a unitary trademark." The Board contrasted this case with the TWOALLBEEF-PATTIESSPECIALSAUCELETTUCECHEESEPICKLESONIONSONASESAMESEEDBUN  case, in which McDonald's provided sufficient evidence to establish acquired distinctiveness. In re McDonald’s Corporation, 199 USPQ 490 (TTAB 1978). [hyphenation added to the mark - ed.].

[W]e do not, in this case, have the same type of persuasive evidence that would allow us to reverse the examining attorney’s refusal. We also find that the much greater number of words in applicant’s proposed mark, as compared to the list of ingredients in the McDonald’s case, presents an even higher hurdle for applicant to overcome when trying to establish that her proposed mark would be perceived as such. In short, the quantity of information in the proposed mark is simply too great to be a useful means for consumers to differentiate one source from another.

The original specimens of use depicted the applied-for mark on pages from what applicant called playbooks." But rather than appearing to be a trademark identifying the source of the goods, the proposed mark merely identifies what appears to be a title (perhaps of a story) and a list of fanciful, fictional names for dancers. Applicant's substitute specimens, in which a "TM" symbol appears adjacent "Shimmering Ballerinas," likewise failed to show trademark use. At best, the TM symbol suggested that "Shimmering Ballerinas" is the trademark.

In sum, the Board agreed with the examining attorney that the applied-for mark, as used on the specimens, "is merely informational and will be perceived as such. Applicant's claim of acquired distinctiveness, based only on here alleged long use, must fail because the applied-for mark was never perceived as a trademark.

Material alteration of the applied-for mark: On several occasions, the examining attorney suggested that applicant amend the application drawing to delete all of the wording except SHIMMERING BALLERINAS & DANCERS, but applicant refused to do so. Instead, on three occasions, applicant proposed a new drawing of the mark. Rule 2.72(a)(2) provides that a Section 1(a) applicant may amend the drawing of the mark if "[t]he proposed amendment does not materially alter the mark."

The Board found that each of three proposed amendments to the drawing would materially alter the mark. The first would remove the columns of names and display them in a radial manner with SHIMMERING BALLERINAS & DANCERS in the middle. The second would remove the stylization and the columns and would present the mark as a single standard character mark. The third attempt depicted the same matter shown in the original drawing with the addition of a colorful background, stars, and rays of light emanating from the top left corner. [Note: the amended drawings would not have solved the failure-to-function problem - ed.].

Therefore, the Board affirmed the examining attorney's refusal to accept the amended drawings.

Read comments and post your comment here.

TTABlog note: This applicant apparently had no clue as to what she was doing. Even if she were able to register this 668-word mark, what exactly would be the scope of protection? Minuscule, at best.

Text Copyright John L. Welch 2013.

TTAB Reverses Genericness Refusal of "BOURGOGNE DES FLANDRES" for ... Guess What?

Okay, okay. That's not a fair question. BOURGOGNE DES FLANDRES could be not generic for a lot of things. I was just trying to inject some life into the discussion of this enervating decision. The question here was simply this: is BOURGOGNE DES FLANDRES generic for beer? The PTO said yes. The Board said not enough proof. Reversed. In re Martin, Serial No. 85501340 (December 9, 2013) [not precedential].

The English translation of BOURGOGNE DES FLANDRES is BURGUNDY OF FLANDERS. The Examining Attorney maintained that "Burgundy of Flanders" refers to a type of beer that is "a typical and common beer in West Flanders."

The Board, not surprisingly, found the genus of goods at issue to be "beer." The relevant public,, not surprisingly, comprises ordinary consumers who drink beer. The question then was how the consuming public understands the term BOURGOGNE DES FLANDRES.

The Board began its analysis by observing that "the foreign equivalent of a generic English term is no more registrable than the English term itself." Applying the doctrine of foreign equivalents, it found that the ordinary American purchaser who is knowledgeable in French would translate the term "Bourgogne Des Flandres" into English.

The PTO must prove genericness by clear evidence, but its proofs fell flat.

The Examining Attorney relied on excerpts from five websites that made reference to "burgundy of flanders." Only two brands identified BOURGOGNE DES FLANDRES as a type of beer, and those two brands appear to be related. Two beer reviewers identified BOURGOGNE DES FLANDRES as a type of beer. But none of the evidence showed the advertisement or promotion of a "Bourgogne Des Flandres" or "Burgundy of Flanders" style of beer. The Global Beer Network website listed eleven "beer styles," but "Burgundy of Flanders" was not one of them.

[W]e find that this evidentiary record falls short of proving that the term BOURGOGNE DES FLANDRES is a generic term for beer or, more precisely under the language of Section 23, that it is not "capable of distinguishing the applicant’s goods or services." 15 U.S.C. §1091(c).

And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlog note: I thought this case was going to be more interesting than it turned out to be. Given the high standard of proof, genericness cases are more appealable (though not necessarily more appealing) than, say, mere descriptiveness cases.

Text Copyright John L. Welch 2013.

New Book: Trademark Litigation - Jurisdictional Comparisons

Richard Mandel and Joel Schmidt of Cowan, Liebowitz & Latman, P.C., have authored the chapter on U.S. litigation in Thomson Reuters' recently-published book, Trademark Litigation - Jurisdictional Comparisons (2nd edition), part of its European Reference Series. The book may be purchased here. A pdf of the Mandel and Schmidt article may be downloaded here.

(click on photo for larger picture)

This title:

• Explains the latest legislation and precedents involving trade mark litigation in over 30 jurisdictions
• Adopts a country-by-country approach, with content provided by expert practitioners from each of the jurisdictions, following a common format to allow straightforward comparisons
• Takes into account the enormous expansion of digital commerce and the growing roles of trade mark registration in fighting abuses on the internet
• Answers such questions as ‘can I oppose or cancel this trade mark?’ in a particular country, and the basis for taking such action – like national or supranational rights, and the procedures for doing so
• Sets out each country’s courts and administrative system
• Looks at the available enforcement options
• Goes through civil court procedure
• Identifies the available remedies
• Covers trade mark enforcement against metatag
• Examines unjustified threats of trade mark infringement
• Looks at conflicts between trade mark and domain name

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TTAB Affirms 2(d) Refusal of ZERO EMISSIONS in View of Supplemental Registration

In a non-epic clash of two weak marks, the Board affirmed a Section 2(d) refusal to register the mark ZERO EMISSIONS & Design [shown below, top] for financing services, some related to energy projects [ZERO EMISSIONS disclaimed]. Examining Attorney Jason F. Turner deemed the mark likely to cause confusion with the mark ZEROEMISSIONS (Stylized, in orange) [shown below, bottom], registered on the Supplemental Register, for various business management and office function services, some relating to the environment and control of gas emissions. In re Zero Emissions Leasing LLC dba Zero Emissions, Serial No. 77427844 (November 29, 2013) [not precedential].

The marks: The Board perceptively observed that the wording in the marks is identical in sound and meaning: services relating to non-polluting energy sources. There is "nothing particularly novel" about the registered mark that would cause a consumer to perceive it as anything other than "zero emissions."

Applicant's disclaimer of the wording in its mark cannot avoid likelihood of confusion, since a disclaimer does not remove the matter from the mark. Consumers viewing the mark would have no clue that the wording had been disclaimed in a federal registration.

Similarly, consumers would not be aware that the cited mark is registered on the Supplemental Register. Thus, even marks registered on the Supplemental Register are entitled to protection under Section 2(d).

Applicant's inclusion of the design of a hydrogen atom in its mark is of little importance because consumers will perceive the wording in the mark as the dominant portion and the main factor in the mark's commercial impression.

In sum, the marks are "far more similar than they are different and, overall, convey highly similar commercial impressions. That is to say, the marks appear to be variations of each other that nonetheless point to a common source."

The services: While many of the services identified in the opposed application are unrestricted as to field, some relate to energy projects. Similarly, some of the services in the registration relate to carbon dioxide and greenhouse gas emissions. Thus these particular services in the energy field are at least "tangentially related," since they concern aspects of energy production on the one hand, and the resulting pollution and climate change, on the other hand.

Furthermore, considering the application and cited registration more broadly, third-party registrations show that various entities have adopted a single mark for business management/consulting services and for financing services.

As to the sophistication of customers, the Board noted that even small businesses seek business management and financing services. Those consumers of modest means may exercise no more than an ordinary degree of care. And in any event, even sophisticated purchasers are likely to be confused when confronted with highly similar marks used in connection with related services.

Resolving any doubt in favor of the prior registrant, the Board found confusion likely and it affirmed the refusal to register.

Read comments and post your comment here.

TTABlog note: Applicant appeared pro se. Should we put this in the "WYHA?" category? Or should pro se applicants get a pass? Maybe we need a new category: Would An Attorney Have Appealed? = WAAHA?

Text Copyright John L. Welch 2013.

PRIDER Confusable With PRIDE for Scooters, Says TTAB, Affirming 2(d) Refusal

Applicant Joseph Tsiyoni, appearing pro se, failed to overturn the USPTO's refusal to register his mark PRIDER for "Motor standing scooters, Motorized personal mobility scooters, personal mobility device namely standing motor scooters for multi purposes, for persons who can stand and drive." Examining Attorney Robin Mittler deemed the mark confusingly similar to the registered marks PRIDE, PRIDE MOBILITY PRODUCTS, and PRIDE - THE FIRST NAME IN SCOOTERS, for electrically powered scooter vehicles for use by elderly, infirm, or disabled persons. If this case did not involve a pro se applicant, it probably would be a "WYHA?," don't you think? In re Joseph Tsiyoni d/b/a Shairon Int’l Trade, Serial No. 85737891 (November 14, 2013) [not precedential].

Applicant Tsiyoni found the appellate route a bit bumpy. First, he attached to his appeal brief a number of exhibits, to which the Examining Attorney objected as untimely. The Board agreed, refusing to consider the exhibits and instead focusing only on material previously filed.

The Examining attorney raised a "conduct-based objection" to Tsiyoni's inclusion in his brief, a "cartoon figure seated in a wheelchair with his middle finger extended upwards and a partial verbal bubble containing symbols usually associated with expletives." The cartoon was labeled "wheelchair representing registrant." The Board agreed that applicant should not have included this "unseemly" graphic in his brief. It did not require applicant to submit a substitute brief, but reminded applicant that all parties must "conduct their business with decorum and courtesy."

The merits of the case were not that interesting. The involved goods are legally identical, since the "electrically powered scooter vehicles" of the registrations, for use by elderly, infirm, or disabled persons, encompass applicant's scooters. In other words, some elderly, disabled, and/or infirm individuals undoubtedly can stand and drive applicant's scooters.

Because the involved application and cited registrations have no limitations as to channels of trade, the Board must assume that the overlapping goods are offered in the same channels of trade to the same classes of consumers.

Turning to the marks,Tsiyoni's mark PRIDER is highly similar to the registered mark PRIDE in appearance and sound. Moreover, PRIDER is a telescoped term consisting of the recognizable words PRIDE and RIDER. Therefore, PRIDER and PRIDE have related connotations and create the same overall commercial impressions, namely, mobility products that individuals (riders) use with pride.

Tsiyoni pointed to the differences between standing and seated scooters, but the Board put the brakes on that argument by pointing to a particular product advertised on the Internet, which products transforms from a standing into a sitting scooter. In any event, the "motorized personal mobility scooters" of the application are not limited to "standing" scooters, and registrant's "electrically powered scooter vehicles" do not specify whether they are standing or sitting.

Next, Tsiyoni contended that registrant does not actually make "scooters" because its products have more than two wheels, and therefore "scooters" should not have been included in the identification of goods. The Board noted that the cited registrations enjoy a presumption of validity, and that applicant's argument constitutes an impermissible collateral attack on the registrations that may not be considered in an ex parte context.

Finally, Tsiyoni urged that purchasers of mobility devices are sophisticated and would exercise care in the purchasing decision. The Board observed once again that even sophisticated purchasers may be confused as to source when confronted by similar marks and legally identical goods.

Considering all the relevant duPont factors, the Board found confusion likely and it affirmed the refusal.

Read comments and post your comment here.

TTABlog note: Lesson here: avoid including in your brief, cartoons that disparage the other side.

Text Copyright John L. Welch 2013.