Precedential No. 18: Parties Opt for ACR, Foregoing Discovery, Trial, and Final Argument

The parties to this opposition proceeding opted for the Board's Accelerated Case Resolution (ACR) procedure, agreeing to forego discovery, expert testimony, trial, and oral hearing. They stipulated that the Board may resolve genuine issues of fact and issue a final ruling based on the parties' ACR submissions: i.e., briefs and declarations or affidavits. What do you think of this approach? Chanel, Inc. v. Makarczyk, 106 USPQ2d 1774 (TTAB 2013) [precedential].

Applicant Jerzy Makarczyk, appearing pro se, applied to register the mark CHANEL for "real estate development and construction of commercial, residential and hotel property." Chanel, Inc. opposed on the grounds of likelihood of confusion, false suggestion of a connection (Section 2(a)), and dilution, relying on a number of registrations for the mark CHANEL for cosmetics, toiletries, etc.

In addition to streamlining the procedure, the parties stipulated to a number of facts, mostly basic,  but including this one: "Applicant uses in connection with his real estate development and construction of commercial, residential and hotel property services not only the CHANEL mark but also the marks HERMES and PLAYBOY among others." Apparently, Opposer will attempt to parlay that fact into some kind of "bad faith" claim against Applicant.

The Board approved the stipulation, set a briefing schedule, and stated that it would "endeavor to issue a decision on the merits within 50 days of the due date for opposers' rebuttal brief." [i.e., before December 17, 2013]. [The proceeding was commenced on December 7, 2012].

Read comments and post your comments here.

TTABlog comment: Well, what do you think? Is it worth giving up discovery to get a "quicker" decision? It would certainly help keep the costs down, but I personally think that a party should take some discovery - at least paper discovery - before deciding whether to opt for ACR.

Text Copyright John L. Welch 2013.

TTABlog Collection of Section 2(e)(5) Functionality Decisions

Here is a collection of Section 2(e)(5) functionality cases. Obviously, Section 2(e)(5) refusals are difficult to overcome. Often the Board catches sight of a utility patent and that's all she wrote. Note that four of the seven reversals occurred in 2012! Does this suggest that the PTO Examining Corps needs a refresher course in the difference between de facto and de jure functionality?



Of course, functionality is only one hurdle that product configuration or other trade dress must clear in order to reach the registrability finish line. The other is distinctiveness. Three product configuration marks that cleared the functionality hurdle tripped over the distinctiveness bar. For a general discussion of "trade dress" that remains applicable today, see my 2004 article entitled "Trade Dress and the TTAB: If Functionality Don't Get You, Nondistinctiveness Will."


Functionality refusal affirmed:

• Precedential No. 10: Finding Aesthetic Functionality, TTAB Affirms 2(e)(5) Refusal of Black Color for Floral Packaging
• Precedential No. 7: TTAB Affirms Refusal to Register Peppermint Flavor and Scent for Nitroglycerin Spray
• Precedential No. 3: TTAB Affirms Alternative Refusals to Register Pet Food Container Design, Finding it Functional or Non-Distinctive
•  TTAB Grants Cancellation Petition, Finding Prison Toothbrush Design to be De Jure Functional
• TTAB Affirms Functionality Refusal of Plastic Suction Cup Configuration 
• CAFC Hears Oral Argument in Mag Instrument v. Brinkmann Appeal Re Functionality
• TTAB Enters Summary Judgment Under Section 2(e)(5), Cancelling Registration for Baseball Training Glove Design Due to Functionality 
• Divided CAFC Panel Affirms TTAB's Becton, Dickinson Functionality Ruling
• Precedential No. 2: TTAB Cancels Supplemental Registration for Shape of Culvert Unit Due To Functionality
• Precedential No. 1: TTAB Affirms 2(e)(5) Functionality Refusal of Motorcycle Stand Design
• Precedential No. 32: TTAB Finds Bands on Mag Rechargeable Flashlight Functional, Lacking in Acquired Distinctiveness
• TTAB Affirms Refusal of "Closure Cap Configuration Mark" on Functionality and Nondistinctiveness Grounds
• TTAB Affirms Section 2(e)(5) Functionality Refusal of Bird Feeder Design
• Precedential No. 28: TTAB Affirms 2(e)(5) Functionality Refusal of Bicycle Spoke Design
• TTAB Finds Design of "MOI" Putter Head Functional Under Section 2(e)(5)
• Applicant's Own Boastful Advertising Leads TTAB to Find Tray Design Functional
• Precedential No. 6: TTAB Affirms Section 2(e)(5) Functionality Refusal of Shape of Metal Spray Nozzle
• Precedential No. 4: TTAB Rules that a Sound Emitted by Goods in Normal Course of Operation Cannot Be Inherently Distinctive
• CAFC Affirms TTAB's Res Judicata Ruling re Functionality of Bose Speaker Design
• TTAB Finds Toilet Plunger Designs De Jure Functional
• TTAB Affirms Eight Functionality Refusals for Elevator Roller Guide Configurations
• TTAB Affirms Refusals to Register the Reversing Motion of a Watchcase
• Utility Patent Leads to TTAB Affirmance of Functionality Refusal for Pet Toy Configuration
• Citable No. 36: TTAB Deems Earplug Configuration Functional Based on Expired Patent
• TTAB Affirms Functionality Refusal of the Color Red for Fake Weapons
• TTAB Affirms Refusal to Register Bose Speaker Shape (Again)
• TTAB Nixes Baby Carrier Shape As Functional

Functionality refusal reversed:

• TTAB Reverses Section 2(e)(5) Functionality Refusal of Wavy Exercise Hoop
• TTAB Reverses Refusal to Register Hershey Bar Product Configuration
• TTAB Torpedoes 2(e)(5) Functionality Refusals of Four US Navy Pixilated Fabric Patterns
• TTAB Reverses Functionality Refusal of 3M Hand Sanitizer Dispenser, But Affirms Failure-to-Function Refusal
• TTAB Finds Flashlight Casing Not De Jure Functional but Lacking in Distinctiveness
• TTAB Reverses Functionality Refusal of Shape of Traffic Signal Bracket, but Affirms Nondistinctiveness Refusal
• Citable No. 41: TTAB Finds Drawing of Product Not Functional for Design Services

TTAB Affirms Geographical Descriptiveness Refusal of NEWBRIDGE HOME for Household Goods

The Board affirmed a Section 2(e)(2) refusal of NEWBRIDGE HOME, finding it to be primarily geographically descriptive of silverware, jewelry, and kitchen goods [HOME disclaimed]. Applicant argued that "Newbridge" is unknown to the average consumer, but the evidence submitted by Examining Attorney Kristin Carlson convinced the Board that Newbridge would be recognized as a commercial center in Ireland. In re The Newbridge Cutlery Company t/a Newbridge Silverware, Serial No. 79094236 (April 29, 2013) [not precedential].

For a mark to be deemed primarily geographically descriptive under Section 2(e)(2), it must be shown that (1) the mark's primary significance is a generally known geographic location; and (2) the relevant public would be likely to make a goods/place association, that is, would be likely to believe that the goods originate in the place named in the mark. When the goods do indeed come from the location named, then a goods/place association may be presumed.

However, a mark is not "primarily" geographic where the geographic meaning is minor, obscure, remote, or unconnected with the goods

There was no dispute that applicant’s goods originate in Newbridge, Ireland. Applicant maintained that Newbridge is unknown to the "mill-run American consumer." The evidence showed, however, that Newbridge is the second largest town in County Kildare and the seventeenth largest in the Republic of Ireland. It is listed in the Columbia Gazetteer of the World, and is described on the Internet as "a large commercial town with plenty of shops, coffee shops, restaurants, hotels and pubs." One of its attractions is Applicant's silverware visitor centre. Moreover, Newbridge hosts some of the most famous horse races in the world.
 
Applicant urged that the popularity of Newbridge is driven in large part by applicant’s presence, and that its mark has acquired secondary meaning as a sourced indicator for its products. The Examining Attorney agreed that Newbridge is "world renowned" for silverware, but she noted that Applicant "appears to have entered its goods into commerce in the United States only relatively recently," and therefore a Section 2(f) claim would not succeed. In fact, Applicant did not enter a 2(f) claim.

Finally, Applicant feebly argued that NEWBRIDGE has another meaning, which derives from the joinder of the words “new” and “bridge”: it denotes or evokes "a path from a position of lack to one of fulfillment, or a means of joining the consumer with his/her goals by means of a 'bridge' that is 'new.'" Blarney, said the Board.

To the extent the evidence of record creates a genuine issue regarding the primary significance of Newbridge in the minds of American "homeware" consumers, such that a goods/place association cannot therefore be presumed from the fact that the goods come from Newbridge, the examining attorney has presented evidence sufficient to establish that American consumers of these products would in fact make such as association. Moreover, the town of Newbridge is not sufficiently remote, minor, or obscure that the goods/place association would not be made.

And so the Board affirmed the refusal.

Read comments and post your comments here.

TTABlog note: For a collection of Section 2(e)(2) postings, go here.

Text Copyright John L. Welch 2013.

TTAB Affirms Surname Refusal of MOTT'S for Baby Food

Finding that MOTT is not a rare surname, the Board affirmed Section 2(e)(4) refusals of MOTT'S for "baby foods" and for "packaged combinations consisting primarily of fresh fruit, namely, fresh fruit and fresh fruit packaged in combination with cheese, granola, yogurt, and/or caramels." Applicant argued that MOTT primarily identifies Samuel R. Mott, an historical figure. Applesauce! said the Board. In re Mott’s LLP, Serial Nos. 85374805 and 85436615 (April 30, 2013) [not precedential].

The Board applied its conventional Section 2(e)(4) analysis. It first observed that the "surname significance of a term is not diminished by the fact that the term is presented in its plural or possessive form."

Examining Attorney Thomas M. Manor submitted LexisNexis evidence showing that MOTT appears 5,819 times as a surname in a nationwide directory. According to Applicant's 2010 census evidence, there are 17,013 persons surnamed MOTT, ranking MOTT as the 1,941st most common surname in the USA. The Board concluded that MOTT is not a rare surname.

Next the Board noted that Applicant has no current officer or employee named Mott (although Samuel R. Mott founded the company in 1842). In any case, this factor alone is not dispositive.

The evidence indicated that there is no meaning of "mott" other than as a surname. Applicant asserted that "Mott" is a reference to Samuel R. Mott, who is "so widely recognized, revered, and celebrated that use of the term MOTT has lost any surname significance." See, e.g., In re Pyro-Spectaculars, Inc., 63 USPQ2d 222, 2024 (TTAB 2002) [SOUSA not primarily merely a surname for fireworks]. The Board was unconvinced: "Applicant’s argument would have carried more weight had it been supported by a reference other than applicant’s website and had Samuel Mott been identified in any of the [cited] dictionaries." Mr. Mott's personal history is not "in any way so extraordinary that he warrants treatment under the 'historical person' exception to the surname refusal."

Finally, the Board found that Mott has the look and sound of a surname. It has no other meaning and does not look like a coined term. Moreover, the possessive form "Mott's" reinforces its impression as a surname.

Finally, Applicant pointed to its ownership of ten Principal Registrations for the mark MOTT'S or combinations thereof, all registered without resort to Section 2(f). However, the marks that combine MOTT'S with other words, like MINI MOTT'S, are not relevant because they are not primarily merely surnames. Only three registrations involved the word MOTT'S by itself. However, these prior registrations "do not conclusively rebut" the Section 2(e)(4) refusal. "Even if some prior registration had some characteristics similar to the subject matter of this application, the PTO's allowance of such prior registrations does not bind the Board."

And so the Board affirmed the refusal.

Read comments and post your comments here.

TTABlog note: For a collection of TTABlog postings on Section 2(e)(4) cases, go here.

Text Copyright John L. Welch 2013.

TTABlog Collection of Section 2(a) Deceptiveness Cases

Here is a collection of Section 2(a) deceptiveness cases from the TTABlog. One might estimate from these rulings that the odds are about 1 in 8 that a deceptiveness refusal will be overturned on appeal. Of course, most of these decisions are not precedential, but even non-precedential decisions may be helpful in framing effective arguments and locating precedential support for them.


The Board applies a three-part test for determining whether a mark is deceptive under Section 2(a): (1) is the term misdescriptive of the character, quality, function, composition or use of the goods? (2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods? (3) If so, is the misdescription likely to affect a significant portion of the relevant consumers' decision to purchase? In re White Jasmine LLC, 106 USPQ2d 1385 (TTAB 2013) [precedential], citing In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988).

Deceptive trademarks (unlike deceptively misdescriptive marks under Section 2(e)(1)) are not eligible for registration via Section 2(f) acquired distinctiveness.

A mark is deceptively misdescriptive if it satisfies the first two prongs of the test set forth above. Deceptively misdescriptive marks may be registered on the Principal Register via Section 2(f), or on the Supplemental Register.

Marks that are primarily geographically deceptively misdescriptive are treated under Section 2(e)(3) and are not eligible for registration via Section 2(f), unless the mark acquired distinctiveness before December 8, 1993, the effective date of the North American Free Trade Agreement Act (NAFTA). The TTABlog collection of 2(e)(3) cases may be found here.

These distinctions are explained and explored in Anne Gilson LaLonde's recent article, "You Are Not Going to Believe This! Deception, Misdescription and Materiality in Trademark Law," 102 Trademark Reporter 883 (May-June 2012) [TTABlogged here].


Marks found deceptive:

• Precedential No. 29: TTAB Affirms Five (5) Refusals of "AOP" for Wine
• TTAB Affirms 2(a) Deceptiveness Refusal of IRON-TEK CLEAN PERFORMANCE for Nutritional Supplements
• TTAB Affirms 2(a) and 2(e)(1) Refusals of GREEN SEAL for Non-Environmentally-Friendly Adhesive Tape
• Precedential No. 9: TTAB Affirms 2(a) Deceptiveness Refusal of WHITE JASMINE for Tea
• TTAB Affirms Deceptiveness Refusal of "VALENCIA" for Rice
• Precedential No. 25: TTAB Finds "α CU" (Alpha CU) Deceptive for Copper-less Dietary Supplements 
• Finding "ORGANIC ASPIRIN" Deceptively Misdescriptive of and Deceptive for Dietary Supplements, TTAB Sustains Bayer Opposition 
• TTAB Chops Down Evasive "SILVER BIRCH" Applicant with Three Well-Aimed Strokes
• TTAB Affirms Section 2(e)(1) and 2(a) Refusals of "NEUROBOTICS" for Augmented Surgical Goods and Services
• TTAB Agrees that "BIOSILK" is Deceptive for Clothing
• TTAB Affirms 2(a) Deceptiveness Refusal of "MINK BIKINI" for Minkless Clothing
• Finding "MINK" Deceptive and Deceptively Misdescriptive for Clothing, TTAB Affirms 2(a) and 2(e)(1) Refusals
• TTAB Affirms Refusal of "ECODOWN" for Pillows Under 2(a), 2(d), and 2(e)(1) 
• TTAB Affirms Three Deceptiveness Refusals of "SWISSGOLD" for Watches and Parts
• TTAB Citable No. 20: Divided Panel Affirms 2(a) Deceptiveness Refusal of "CAFETERIA" for Non-Cafeterias

Marks found not deceptive:

• "ILEX" Not Deceptive or Deceptively Misdescriptive for Medicated Skin Paste, Says TTAB 
• TTAB Finds AMERICAN HERITAGE Neither Merely Descriptive of, Nor Deceptive for, Wines

Text Copyright John L. Welch 2013.

TTAB Affirms 2(a) Deceptiveness Refusal of IRON-TEK CLEAN PERFORMANCE for Nutritional Supplements

The Board affirmed a Section 2(a) refusal to register IRON-TEK CLEAN PERFORMANCE, finding it to be deceptive of "dietary and nutritional supplements" that do not contain iron. Applicant contended that "iron" in its mark suggests "pumping iron," but the Board gave that no weight, observing that Applicant's identification of goods is not limited to weightlifters. In re Country Life, LLC, Serial No. 85340192 (May 2, 2013) [not precedential].

Dictionary definitions and website pages demonstrated that iron is a common mineral in dietary and nutritional supplements. Applicant confirmed during prosecution that its products do not contain iron. The Board agreed with Examining Attorney Kim Teresa Moninghoff that ordinary consumers will view the term "iron" in the subject mark as meaning that the goods contain iron. Thus there was no doubt that the mark is misdescriptive, and deceptively so.

Finally, the misdescription of the goods would be material to the purchasing decision because iron is a "most desirable" ingredient in supplements.

Applicant pointed to its ownership of two incontestable registrations for the mark IRON-TEK for vitamins and nutritional supplements, but the Board was unmoved.

[C]onsistent with the statutory structure of the Trademark Act, each application for registration of a mark for particular goods must be separately evaluated based on its own set of facts and in view of whatever marketplace evidence is available in the record. Nothing in the statute provides a right ipso facto to register a new mark for additional goods, and we are not bound by prior determinations made by examining attorneys. While uniform treatment under the Trademark Act is highly desirable, our task here is to determine, based on the record before us, whether applicant’s mark is registrable. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001).

And so the Board affirmed the refusal.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability on these Two Genericness Appeals

The Board decided two genericness cases in early May, one involving the designation DENIM & DENIM for "men's, women's, and children's clothing made from denim, namely, pants, shirts, hooded sweat shirts," and the other DOCTORS MAKING HOUSECALLS for "providing on-site medical services to patients at their homes, apartments, senior communities, offices, or other designated locations." How do you think they came out?

In re Fawad Motiwala dba California Hub, Serial No. 85108655 (May 1, 2013) [not precedential]. The Board began by ruling that the genus of the goods is adequately defined by Applicant's identification of goods. Applicant argued that the applied-for designation is a unitary phrase, requiring the PTO to provide evidence beyond mere definitions of the constituent words (see American Fertility Society, 51 USPQ2d at 1836). The Board, however, concluded that DENIM & DENIM is a "compound word term" which falls under In re Gould.. Therefore, if each of the words in the proposed mark retains its generic meaning when combined, the dictionary definitions are alone sufficient to establish genericness.

Applicant argued that "denim" might be generic for "bolts of twilled cloth." DENIMS or DENIM PANTS & DENIM PANTS would be generic for clothing, but not the applied-for mark. The Board was unmoved. Third-party website evidence showed that "denim" is used to describe clothing made from this type of fabric.

Applicant asserted that addition of the ampersand and repetition of the word 'denim' in the proposed mark signal "what it means to be an American." - i.e., that denim clothing represents a long American tradition. The Board disagreed. The repetition of the word "denim" does not provide a different meaning. The Board also rejected Applicant's comparison of its proposed mark to a catchy phrase like SUGAR & SPICE, or a pair of surnames like JOHNSON & JOHNSON;

And so the Board affirmed the refusal.

In re Doctors Making Housecalls, LLC, Serial No. 85324528 (May 2, 2013) [not precedential]. The Board again found the genus at issued to be adequately defined by the recitation of services in the subject application. The Board found that the PTO's evidence "clearly and convincingly shows that the public would understand DOCTORS MAKING HOUSECALLS to be the name used for the recited services."

Recognizing that the proposed mark is a phrase, the Board applied the American Fertility approach, which requires more than dictionary evidence regarding the constituent words. Instead the Board must conduct an inquiry into the meaning of the phrase as a whole.

The Examining Attorney submitted several media articles using the phrase "doctors making housecalls" to refer to the practice of doctors visiting patients in their homes. The Board pooh-poohed Applicant's submission of four third-party registrations for marks including the term "house calls" because the marks were quite different from the one at issue here; in any event each case must be decided on its own record.

And so the Board affirmed the refusal.

Read comments and post your comments here.

TTABlog comment: Any WYHA's here?

Text Copyright John L. Welch 2013.

TTAB Affirms Disclaimer Requirement of MONOGRAM in BR MONOGRAM for Handbags and Clothing

Banana Republic applied to register the mark BR MONOGRAM in the stylized form shown below, for various "higher end" handbag and clothing items, "excluding products personalized with the intended user's initials." Examining Attorney Leigh A. Lowry required disclaimer of the word MONOGRAM, deeming it to be both merely descriptive and deceptively misdescriptive under Section 2(e)(1). Banana Republic appealed. The Board affirmed the refusals. In re Banana Republic (Apparel), LLC Serial Nos. 77375273 and 77375380 (May 9, 2013) [not precedential].

Mere Descriptiveness: The Examining Attorney maintained that MONOGRAM describes a feature of BR's goods because handbags and clothing may include "the initials of the designer, sometimes in a repetitive or wallpaper design, but also in a single instance like a conventional monogram." She relied on Internet websites showing use of designer initials on clothing and bags, websites offering the option to add initials to such items, and third-party registrations for marks for clothing, bags, and monogramming services, which registrations included a disclaimer of MONOGRAM or resided on the Supplemental Register.

The Board rejected BR's argument that "high end" products are not likely to be monogrammed, and it observed that Applicant's exclusion of "products personalized with the intended user's initials" did not account for the appearance of designer initials on products. Moreover. BR's goods may be monogrammed by a third party, after purchase from applicant.

BR contended that MONOGRAM will be perceived as meaning high quality, but the Board found no evidence that the typical consumer would attribute this meaning to the word. It concluded that Applicant's promotion of the subject mark, and the unsolicited media attention given the mark, was not enough to overcome the commonly-understood meaning of MONOGRAM.

Deceptively Misdescriptive: Because Applicant's identification of goods specifically excluded "products personalized with the intended user's initials," MONOGRAM is misdescriptive of the goods. [At least the ones without a monogram - ed.]. Moreover, consumers are likely to believe the misdescription.

In fact, the evidence establishes that companies which offer clothing, tote bags, purses and related products often offer monogramming services, specifically the ability to personalize these goods with the intended user’s initials. Here, however, applicant’s mark includes MONOGRAM but applicant will not offer this type of monogramming service, as many of its competitors do and consumers have therefore come to expect.

Acquired Distinctiveness: Because the Board found the MONOGRAM to be "highly descriptive," Applicant BR's burden to show acquired distinctiveness is "concomitantly high." [What is the test for determining whether a mark is "highly descriptive" rather than just descriptive? ed.] BR's evidence fell short. Its promotional efforts were "underwhelming at best." Moreover, BR's use was not exclusive because some clothing designers monogram their products with their own initials, and others offer monogramming services.

Finally, BR asked that the case be remanded so that the PTO could consider 2(f) evidence based on five years of continuous use. It pointed out that by the time this appeal would be decided, the subject mark would have been in use for five years. The Board denied the request because it "would serve no useful purpose" in view of the highly descriptive nature of the mark: BR's five years' of use would not "add to the weight of the evidence" already submitted.

And so the Board affirmed the disclaimer requirement.

Read comments and post your comments here.

TTABlog note: In a subsequent ruling, the Board modified its decision as follows: "applicant is allowed to file a disclaimer with the Board until either: (1) the deadline for filing an appeal, in this case two months from the May 9, 2013 decision, if applicant does not file an appeal;1 or (2) if applicant does file an appeal, thirty days after the final disposition of the appeal, if it is ultimately unsuccessful. Applicant’s “provisional” disclaimers are withdrawn."

TTABlog comment: I'm not convinced by this opinion. If a consumer buys an item with the brand name BR MONOGRAM, won't he or she see that it isn't monogrammed? Won't they know at the time of purchase that monogramming services are not being offered by BR?

As for descriptiveness, how so? Again, the consumer can see that the goods are not monogrammed and won't be monogrammed by BR.

If anything, the mark is self-redundant: it points out that BR is a monogram, but I don't see that as making the mark descriptive of the goods.

What do you think?

Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability: Must NATURALLY be Disclaimed in NATURALLY POWERED for All-Natural Beverages?

The PTO refused registration of the mark NATURALLY POWERED for "all-natural coconut-based beverages," because Applicant Zico refused to disclaim the word NATURALLY. The Examining Attorney insisted that NATURALLY is merely descriptive of the goods, and must be disclaimed under Section 6(a) of the Act. Zico argued that NATURALLY POWERED is a unitary expression and a double entendre. How do you think this came out? In re Zico Beverage LLC, Serial No. 85284093 (May 9, 2013) [not precedential].

The Examining Attorney relied on dictionary definitions of "naturally" in maintaining that the word conveys to consumers that Applicant's beverages do not contain synthetics, chemicals, preservatives, artificial ingredients, and other non-natural substances.

The Board, however, agreed with Zico that NATURALLY POWERED is a unitary expression. "A unitary mark is a mark with multiple elements that creates a single and distinct commercial impression separate and apart from the meaning of its constituent terms." The Board concluded that "the term NATURALLY in applicant's NATURALLY POWERED mark clearly modifies the term POWERED to create a unitary phrase that only suggests a feature of applicant's goods."

Moreover, the Board agreed that NATURALLY POWERED is a double entendre: on the one hand, it connotes goods that are powered by forces of nature, and on the other, goods that are powered in a natural manner, without special intervention. Thus consumers will view NATURALLY POWERED as having several connotations.

And so the Board reversed the refusal.

Read comments and post your comments here.

Text Copyright John L. Welch 2013.

WYHA? TTAB Affirms Mere Descriptiveness Refusal of PADPIVOT for Pad Computer Stands

Examining Attorney Alice Benmaman issued a Section 2(e)(1) refusal of the mark PADPIVOT, deeming it merely descriptive of a "[s]tand specially adapted for holding tablet computers, PC tablets, pad computers, digital book readers and electronic book readers." She relied on dictionary definitions of "pad" and "pivot," and on a photograph of Applicant's goods taken from his website (shown below). Would you have appealed? In re Bernie Graham, Serial No. 85255894 (May 10, 2013) [not precedential].

The Examining Attorney concluded that the combination of "pad" and "pivot" is descriptive of a "stand specially adapted for holding ... pad computers...."

Applicant argued that because a certain retailer required a label change to add the phrase "portable table stand," the subject mark was not sufficient "to describe the nature of the device so as to entice sales." He asserted that "[r]easonable consumers without knowledge of the PADPIVOT mark and goods were unable to understand what the goods were with the PADPIVOT mark applied directly thereto without additional language that would qualify as “merely descriptive”'to provide such information to consumer."

The Board disagreed. First, the retailer did not say that consumers were unable to understand "what the goods were," but only that it wanted to emphasize that the goods function as a stand. Secondly, the determination of descriptiveness is not madde in a vacuum, but in relation to the goods in question. Moreover, whether a mark will "entice sales" is wholly irrelevant to the issue at hand.

Applicant next argued that various dictionaries do not include a definition of "pad" that applies to his product. However, Applicant refers to a "pad computer" in its identification of goods, and the Examining Attorney supplied a pertinent definition from an on-line dictionary. The picture from Applicant's website shows a ball-and-socket joint that would allow a pad computer to "pivot."

Finally, the concatenation of "pad" and "pivot" provides no new meaning to the two words.

And so the Board affirmed the refusal.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability: Are ROUGH COUNTRY and WILD COUNTRY Confusable for Tires?

TBC Trademarks, LLC, owner of the registered mark WILD COUNTRY for tires, opposed Heckethorn Products' application to register ROUGH COUNTRY for "tires for off road vehicles and trucks," claiming a likelihood of confusion under Section 2(d). The goods obviously overlap, but what about the marks? How do you think this came out? TBC Trademarks, LLC v. Heckethorn Products, Inc., Opposition No. 91179460 (May 2, 2013) [not precedential].

The Board noted that, in comparing marks for identical goods, "it is proper to consider their appearance, sound and meaning. *** But a combination of all three factors need not necessarily exist, and an opposition to registration may be sustained if the marks are identical or so similar in meaning that confusion as to source is deemed likely."

Here, the Board found, the marks engender the same commercial impression: "uninhabited, unpopulated, rugged country."

Applicant Heckethorn contended that many other off road tire companies try to project the same connotation, and it pointed to eight third-party registrations for marks that include the word "Country" for tires, including ALL COUNTRY, OPEN COUNTRY, and HIGH COUNTRY. Moreover, Applicant sells DICK CEPEK MUD COUNTRY tires and FUN COUNTRY tires. Applicant's President, Michael Heckethorn, testified that he saw all eight marks in use on the Internet.

DICK CEPEK
The Board pointed out, however, that third-party registrations are not evidence of what actually happens in the marketplace, or of the public's familiarity with the marks. For the same reason, the testimony of Applicant's President is not very probative on those issues. Moreover, Applicant did not submit the Internet pages about which its President testified.

Finally, the Board noted that Opposer began using the WILD COUNTRY mark in 1977 and its evidence showed significant sales. Applicant, as the newcomer, had a "heavy burden" to avoid consumer confusion.

Based upon the identity of the goods, the presumptive identity of channels of trade and classes of customers, the market strength of the WILD COUNTRY mark, and the similarities in connotation and commercial impression of the marks at issue, the Board found confusion likely, noting that any doubt must be resolved in favor of Opposer.

And so the Board sustained the opposition.

Read comments and post your comments here.

Text Copyright John L. Welch 2013.

TTAB Affirms Genericness Refusal of POMEGRANATEA for Tea-Based Beverages

Argo Tea sought to register POMEGRANATEA as a trademark for "tea-based beverages," but Examining Attorney Michael P. Keating refused registration on the ground of genericness. The Board agreed with the PTO, finding the applied-for term to be generic for "pomegranate-flavored tea," a sub-set of the identified goods. In re Argo Tea, Inc., Serial No. 85011197 (May 9, 2013) [not precedential].

The PTO must establish genericness by "clear evidence," the key issue being whether the relevant public primarily uses or understands the applied-for term to refer to the category or class of goods at issue. Here the "broad genus" in question is tea-based beverages, and the relevant public comprises ordinary consumers who purchase and drink tea.

The Board first found that POMEGRANATEA is the equivalent of "Pomegranate Tea" because the individual words retain their ordinary meaning when compounded. Dictionary definitions, Argo's website, and third-party Internet evidence convinced the Board that POMEGRANATEA, as used by Argo, identifies a type or category of tea-based beverage.

The extensive third-party use makes clear that “Pomegranate Tea” is widely used to refer to pomegranate flavored tea. In short, POMEGRANATEA is the name of a category of tea. Because the term POMEGRANATEA directly names the most important or central aspect of applicant’s tea, that is, that the tea is pomegranate flavored, POMEGRANATEA is generic. And because POMEGRANATEA describes a category of tea-based beverages, it should be freely available for use by competitors.

A term is generic if it refers to narrower category of goods encompassed by the broader identification of goods. See, e.g., In re Central Sprinkler Co., 49 USPQ2d 1194, 1197 (TTAB 1998) (ATTIC for “automatic sprinklers for fire protection ” falls within the narrower category of sprinklers for fire protection of attics). Here, "Pomegranate Tea" is a generic term for pomegranate-flavored tea, which is a sub-category of tea-based beverages.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability on this Trademark Specimen of Use

Manchester Cigarette applied to register the mark MANCHESTER SUUM CUIQUE PLACET, in standard character form, for cigarettes and related goods. Its specimen of use is pictured below. Examining Attorney Khanh M. Lee refused registration on the ground that the mark is not a substantially exact representation of the mark as used on the goods, as required by Rule 2.51(b). What say you? In re Manchester Cigarette Tobacco Limited, Serial No. 85260060 (May 3, 2013) [not precedential].

The Examining Attorney maintained that the word MANCHESTER and the phrase SUUM CUIQUE PLACET create two separate commercial impressions rather than a unitary commercial impression. Applicant argued that MANCHESTER and SUUM CUIQUE PLACET form a unitary commercial impression because "they are typed words appearing on a uniform red background thereby tying the words together."

The Board agreed with the Examining Attorney: "The separate and distinct manner of presentation of these elements creates separate commercial impressions for MANCHESTER and SUUM CUIQUE PLACET in contrast to the unitary phrase applicant seeks to register in unitary form."

And so the Board affirmed the refusal.

TTABlog comment: WYHA?

Text Copyright John L. Welch 2013.

Who are These People?

Hint: Photo taken at INTA13 in Dallas.

Five Hosts of MEET THE BLOGGERS IX

Can you name them? Don't be a wise guy: I mean their real names!

CAFC Hears Oral Arguments in Houston and District of Columbia Section 2(b) Appeals

On May 8, 2013, the U.S. Court of Appeals for the Federal Circuit heard oral argument in two Section 2(b) cases. In the first, In re City of Houston, 101 USPQ2d 1534 (TTAB 2012) [precedential], District of Columbia, the Board affirmed a Section 2(b) refusal to register the official seal of the City of Houston for various municipal services. In the second, In re The Government of the District of Columbia, 101 USPQ2d 1588 (TTAB 2012) [precedential], the Board affirmed a refusal to register the official seal of the District of Columbia for various goods, including clocks, cufflinks, memo pads, pens and pencils, cups and mugs, and various clothing items.


Section 2(b) prohibits registration of any mark that "consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof."

The Board's decisions were TTABlogged here. The Houston oral argument is found here. The District of Columbia argument is here.

TTABlog note: Comments by the court during oral argument, such as "the legislation is plain on its face," and "why aren't you on Capitol Hill seeking to change the law?," and "where does the Paris Convention require that the United States register governmental insignia?," suggest that these two appellants are not likely to succeed on their respective appeals.

It would not be surprising if the CAFC affirmed the Board's decisions under the court's Rule 36.

Text Copyright John L. Welch 2013.

Anthony L. Fletcher: "Separating Descriptive Sheep From Generic Goats"

I always enjoy reading Tony Fletcher's articles in the Trademark Reporter, both for his wisdom and his humor. Here he probes the genericness/descriptiveness dichotomy, concluding that, "[q]uite simply, the problem is that it is impossible to foresee with tolerable accuracy where courts, or the USPTO, will draw the line between generic names and descriptive terms." Anthony L. Fletcher, "Separating Descriptive Sheep From Generic Goats," 103 TMR 487 (2013).

Anthony L. Fletcher
Why is this issue important?

[I]t is critical to understand the “generic”– “descriptive” dichotomy for trademark management and planning purposes. Promoting a name that can never become a trademark as if that name were a trademark is an exercise in futility. While promoting a generic name as a trademark might result in a degree of trademark recognition by the public, when that begins to happen, competitors can step in and, with impunity, appropriate to themselves and/or their products whatever degree of de facto trademark meaning might have been created.

TTABlog note: Thanks again to The Trademark Reporter for granting permission to provide a link to this article issue, which is Copyright © 2013 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 103 TMR 487 (March-April 2013).

Ted Davis: Annual Review of U.S. Federal and State Case Law

Here is a link to Ted Davis's article for the 2013 INTA Annual Meeting, entitled "Annual Review of U.S. Federal and State Case Law." Thank you, Ted, for permitting me to post this link.

Ted Davis
[NOTE: E-mail subscribers must surf to the blog in order to download the pdf].

INTA Outline: 2012-2013 Decisions of the Trademark Trial and Appeal Board and the Federal Circuit on Registrability Issues

Here is a link to my outline for the 2013 INTA Annual Meeting, entitled "2012-2013 Decisions of the Trademark Trial and Appeal Board and the Federal Circuit on Registrability Issues." This outline covers decisions issued from January 2012 through February 2013.

TTAB Affirms Refusal of Clear Cube Package for Parlor Games as Not Inherently Distinctive

Ruby Mine, Inc. applied to register as a trademark its clear plastic cube packaging for "parlor games," but Examining Attorney Edward Fennessy refused registrations on several grounds, including failure to function as a trademark. Applicant did not claim acquired distinctiveness, so the question became whether the packaging was inherently distinctive. The Board agreed with the Examining Attorney and affirmed the refusal. In re Ruby Mine, Inc., Serial No. 85287700 (April 16, 2013) [not precedential].

The alleged mark was described as a "two-piece, clear plastic, hollow cube having ... walls sufficiently thick to produce an aesthetic prismatic effect at the wall ends as a function of ambient light conditions." The Board applied the CCPA's Seabrook test to determine whether the proposed packaging configuration was inherently distinctive.

Under Seabrook, the Board considers whether the configuration is (1) a common basic shape or design; (2) unique or unusual in a particular field: (3) a mere refinement of a commonly adopted and well known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods; or (4) capable of creating a commercial impression distinct from the accompanying words.

The Examining Attorney relied on cube-shaped parlor games (including some of clear plastic, just like that of Applicant), clear plastic card holders (some cubic, not necessarily for games), cube-shape plastic display cases (for golf balls and baseballs), and general cubic packaging, all to show that Ruby Mine's packaging comprised a common design and/or a mere refinement of a well-known form of trade dress for the goods.

The Board was convinced that "a cube shape is a common shape for packaging of games and is a mere refinement on the ubiquitous, rectangular, box-shaped packaging." It found that the described aspects of the applied-for mark are mere refinements of common attributes of parlor games.

Moreover, the "aesthetic prismatic effect" of Ruby Mine's packaging was merely incidental to the use of transparent plastic and is not likely to create its own commercial impression. In fact, in its brief, Applicant admitted that this effect is "an unavoidable effect of the overall design" under certain light conditions.

Ruby Mine submitted a declaration from its President and founder, stating that he had never seen any packaging for game cards that was even remotely similar to the subject cube-shape package. The Board observed that, even accepting those assertions, they did not overcome the evidence submitted by the PTO.

The Board therefore affirmed the refusal to register.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

TTAB Dismisses 2(d) Opposition: TAMAYA Not Confusable With MAYA, Both For Wine

Finding that the dissimilarity of the marks and their different commercial impressions outweighed the other relevant duPont factors, the Board dismissed this opposition to registration of the mark TAMAYA for wines. Opposer Oakville Hills claimed likely confusion with its registered mark MAYA for wine, but failed to prove its claim by a preponderance of the evidence. Oakville Hills Cellar, Inc. dba Dalla Valle Vineyards v. Vina Casa Tamaya S.A., Opposition No. 91189443 (April 15, 2013) [not precedential].

The Marks: Although Applicant Vina Casa’s mark includes the letters or term MAYA, it comprises three syllables and begins with TA. Therefore the marks at issue look and sound differently. Moreover, the Board noted, it is often the first part of the mark that is “likely to be impressed upon the mind of a purchaser and remembered.”

In addition, the evidence showed that the connotations and overall commercial impressions of the marks are different. The term MAYA has several known meanings in this country: that of a member of the Mayan people and also the name of a girl. In fact, Social Security records show that “Maya” has been in the top 100 for girl’s names for the past ten years. Therefore consumers are likely to perceive the mark MAYA as the popular girl’s name.

Applicant, at its website, explained that TAMAYA means “highest point” in the Diaguita dialect, and also is the name of a hill on Applicant’s property in Chile.

Opposer argued that the Diaguta dialect is obsolete and obscure, and that the doctrine of equivalents should not be applied to translate the word TAMAYA. The Board agreed, concluding that American consumers are likely to perceive the mark as a coined term without any meaning.

The Board therefore found that the first duPont factor “weighs heavily" against a finding of likely confusion.

Strength of Opposer’s Mark: Applicant asserted that the mark MAYA is diluted and weak. It relied on several third-party registrations for marks containing the word or term MAYA and on Internet website pages offering MAYA wine along with MAYACAMAS wine, MAYACAMAS MOUNTAINS wine, and MAYACAMAS RANGE wine sold by three different companies. The Board, however, found that this relatively limited evidence, balanced against the arbitrariness of the mark MAYA for wine and Opposer’s policing efforts, “does not indicate significant weakness in opposer’s MAYA mark.”

Fame: Opposer claimed that its mark MAYA is famous, but its proofs were woefully inadequate. It relied on a single magazine article, but acknowledged that it never advertised MAYA wine at trade shows or in print publications.

The Goods: Applicant attempted to distinguish the marks by pointing to the requirements of the U.S. Tobacco and Alcohol Bureau (TTB) regarding the labeling and advertising of wine. Under these requirements, Applicant’s wine is labeled as originating in the Limari Valley of Chile, whereas Opposer’s wine originates in the Napa Valley in California.

The Board, however, pointed out that the issue of likelihood of confusion in this proceeding must be determined based on the goods recited in the opposed application and the pleaded registration. There are no limitations as to country of origin, type, or appellation, and therefore the Board must assume that all wines are included and must consider the involved goods to be identical.

Channels of Trade: Similarly, because there are no limitations as to channels of trade in the involved application and registration, the Board must assume that they travel through the same, normal channels of trade.

Conditions of Sale: Although Applicant’s wine sells for $10 to $16 per bottle, and Opposer’s wine for $200 to $559 and more per bottle, there are no corresponding restrictions in the involved application and registration. Consequently, the Board must assume that the products are sold to the same classes of purchasers under the same conditions.

Balancing the Factors: The Board concluded that the first duPont factor, the dissimilarity of the marks and the differences in commercial impression, “are so great as to outweigh the other DuPont factors." And so the Board dismissed the opposition

Read comments and post your comment here.

TTABlog note: Add this one to the TTABlog collection of 2(d) wine decisions, here.

Note all the evidence that was not considered by the Board in this proceeding. Surely that evidence would have been admitted in a trademark infringement suit. So should a TTAB decision on likelihood of confusion have preclusive effect in a civil action? See the last TTABlog post, here.

Text Copyright John L. Welch 2013.

Divided 8th Circuit Panel Says TTAB 2(d) Decision Has No Preclusive Effect in Infringment Suit

B & B Hardware sued Hargis Industries for trademark infringement, unsuccessfully claiming that defendant's use of the mark "Sealtite" for "self-drilling and self-taping screws" infringed B&B's mark "Sealtight" for fasteners used in the aerospace industry. The TTAB had sustained B&B's opposition to registration of the "Sealtite" mark on the ground of likelihood of confusion with B&B's mark. The district court rejected B&B's contention that the TTAB decision should be given preclusive effect on the likelihood of confusion issue and the United States Court of Appeals for the Eight Circuit agreed. The panel majority ruled that because the TTAB is not an Article III court, its decision on the issue of likelihood of confusion is not entitled to preclusive effect in a subsequent trademark infringement action between the parties. B & B Hardware, Inc. v. Hargis Industries, Inc., 106 USPQ2d 1660 (8th Cir. 2013).

The appellate court distinguished an earlier 8th Circuit precedent in which a decision of the CCPA (the CAFC's predecessor) was given preclusive effect on the issue of likelihood of confusion, observing that the CCPA was an Article III court at the time. The TTAB is not an Article III court and therefore the appellate court need not follow the earlier decision.

Moreover, even if the TTAB decision were entitled to preclusive effect, that would not be appropriate here because "the same likelihood-of-confusion issues were not decided by the TTAB as those brought in the action before the district court."

The simple fact that the TTAB addressed the concept of “likelihood of confusion” when dealing with Hargis’s attempt to register its mark does not necessarily equate to a determination of “likelihood of confusion” for purposes of trademark infringement. In reaching its determination, the TTAB used only 6 of the 13 factors from In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) .... *** When considering the question of likelihood of confusion for purposes of trademark infringement, in this Circuit, courts apply the six-factor test from SquirtCo v. Seven-Up Co., 628 F.2d 1086, 1091 (8th Cir. 1980). *** Although some of the I.E. DuPont factors are the same or comparable to the SquirtCo factors, "for collateral estoppel to apply, the [TTAB] must have examined the 'entire marketplace context'" as is done in trademark infringement cases.

The TTAB ignored the marketplace usage of the marks and products, and so preclusion is not appropriate here, said the majority. The products were not similarly priced, similarly marketed, or intended to be used in conjunction with or in substitution for one another. And so the district court properly refused to apply preclusion.

The appellate court further ruled that the TTAB decision was not entitled to deference, and that the district court did not abuse its discretion in excluding the evidence of the TTAB decision before the jury. Hargis had argued that this evidence would be too prejudicial.

The dissent would have accorded preclusive effect to the TTAB's decision, in line with a statement by the Supreme Court that "giving preclusive effect to administrative factfinding serves the value underlying general principles of collateral estoppel: enforcing repose."

As to the test applied by the district court, the dissent urged that the modest differences in analytical approach between the TTAB test and the 8th Circuit test do not justify the refusal to apply collateral estoppel. Moreover, the dissenting judge asserted that the TTAB did consider the entire marketplace context.

TTABlog comment: There seems to be a split in the circuits on this issue. Hello, Mr. Court, Mr. Supreme Court, please pick up the white courtesy phone!

Text Copyright John L. Welch 2013.

TTABlog Collection of Section 2(e)(4) "Primarily Merely A Surname" Cases

Here is a collection of Section 2(e)(4) surname cases from the TTABlog. It appears from this collection that the odds are about 2 to 1 that a surname refusal will be upheld. Of course, most of the decisions are not precedential, but even non-precedential decisions may be helpful in framing effective arguments and locating precedential support for them.


The Board typically looks to four factors in determining whether a mark’s primary significance to the public is as a surname: (1) whether the surname is rare; (2) whether anyone connected with the owner of the mark  has the involved surname; (3) whether the term has any other recognized meaning; and (4) whether the term has the "look and feel" of a surname. Miller v. Miller, 105 USPQ2d 1615 (TTAB 2013) [precedential].

Judge Seeherman, beginning with her concurrence in  In re Joint-Stock Company "Baik", has urged that more weight be given to the "rareness" factor, because the aim of Section 2(e)(4) should be to make sure that surnames are available for registration by others having that surname. In her view, whether the mark has the "look and sound" of a surname, and whether it is the name of someone associated with the owner of the mark, are not relevant to that question.

As to surname rareness, note that the U.S. Bureau of the Census has released its list of "Frequently Occurring Surnames from Census 2010." (link here).


Marks found to be primarily merely a surname under Section 2(e)(4):

• MERLO'S MERLOT for Wine is Primarily a Surname, Confusable with LAGO DI MERLO, Says TTAB
• TTAB Affirms Surname Refusal of MOTT'S for Baby Food
• Another Surnamed Law Firm (THE SIMMONS FIRM) Bites the TTAB Dust
• Precedential No. 2: TTAB Sustains Section 2(e)(4) Surname Opposition to "MILLER LAW GROUP" for Legal Services
• Two Surname Refusals for Your Perusal: One TTAB Reversal (THE HENDRYX HOTEL affirmed)
• TTAB Affirms Section 2(e)(4) Surname Refusal of GRISWALD
• Test Your TTAB Judge-Ability: Is CROMWELL for Safety Helmets Primarily Merely a Surname? 
• WYHA? TTAB Affirms Section 2(e)(4) Surname Refusal of "WEIS" for Frozen Dairy Products
• Precedential No. 49: TTAB Affirms Surname Refusal of "BINION"; Renown of Binion Family Does Not Equal Acquired Distinctiveness
• Another WYHA? TTAB Affirms 2(e)(4) Surname Refusal of "MERIWETHER" for Cabinetry 
• Applicant Fails to Prove Historical Significance of "DAIMLER" for Vehicles, TTAB Affirms 2(e)(4) Surname Refusal 
• TTAB Administers 2(e)(4) Kiss of Death to "SIMMONS COMICS GROUP" for Comic Books 
• Despite Claim that "MERROW" Means "Mermaid," TTAB Affirms 2(e)(4) Surname Refusal
• TTAB Affirms Surname Refusal of "HARRINGTON OAK" for Flooring
• TTAB Reverses Surname Refusal of "CURLIN" for Medical Devices 
• TTAB Affirms 2(e)(4) Surname Refusal of "MARRIOTT" for Charitable Services; Judge Seeherman Concurs
• Precedential No. 62: TTAB Affirms Surname Refusal of "VOSE & SONS" for Pianos
• Precedential No. 24: TTAB Rejects Historical Figure Contention, Affirms Surname Refusal of "WATSON"
• Elves Lose Appeal: TTAB Affirms Surname Refusal of "KEEBLER" for Snacks
• TTAB Affirms 2(e)(4) Surname Refusals of "ABANTE" and "RUXTON PHARMACEUTICALS"
• "DR. BRANDT" Primarily Merely a Surname for Skin Care Products, Says TTAB
• TTAB Rules "CHISHOLM" Primarily Merely a Surname for Smokeless Tobacco
• TTAB Affirms 2(e)(4) Refusal of "BRANIFF" as Primarily Merely a Surname for Air Transport
• TTAB Sinks "COLGATE SAILING SCHOOL," Affirms Section 2(e)(4) Surname Refusal
• TTAB Twin Killing: Surname Refusals of "LAURENTI" and "BREIL" Upheld
• Citable No. 13: TTAB Affirms Surname Refusal of "GIGER MD" for Exercise Machines 
• TTAB Affirms Surname Refusal of "MEARS" for Semiconductor Materials
• TTAB Affirms Surname Refusal of "PICCHIOTTI" for Jewelry 
• TTAB Affirms 2(e)(4) Surname Refusal of "EBNER"
• TTAB Affirms PTO'S Refusal of "MARAJ" As Surname
• TTAB Socks It To Norwegian Skier Vegard Ulvang
• Willie Mosconi and Firmant Arthur Franke: Historic Figures and Section 2(e)(4) (FRANKE affirmed)

Marks found not to be primarily merely a surname under under Section 2(e)(4):

• Test Your TTAB Judge-Ability: Is JAKEMANS Primarily Merely a Surname for Medicated Confectionery?
• Two Surname Refusals for Your Perusal: One TTAB Reversal (LORCH reversed)
• Test Your TTAB Judge-Ability: Is "CARDANO" Primarily Merely a Surname? 
•  Emphasizing Rareness of the Surname, TTAB Reverses Section 2(e)(4) Refusal of "BOVIS FOODS"
• Precedential No. 22: Reversing 2(e)(4) Refusal, TTAB Finds "P.J. FITZPATRICK, INC." Not Primarily Merely a Surname
• Test Your TTAB Judge-Ability: Does "VALVERDE" Have the Look and Sound of a Surname
• Extreme Rareness of "RENATI" as Surname Leads to 2(e)(4) Reversal
• TTAB Reverses Surname Refusal of "SIGMANN" for Kitchen Fixtures 
• Giving Added Weight to the Rareness Factor, TTAB Reverses Surname Refusal of "BERGFELD" for Wine 
• Precedential No. 60: "J. J. YELEY" Not Primarily Merely A Surname, Says TTAB 
• Precedential No. 56: TTAB Reverses Surname Refusal of "BAIK" for Vodka 
• TTAB Reverses Surname Refusal of "FRESCH" for Frozen Pizza 
• Finding PTO's Proofs Inadequate, TTAB Reverses Surname Refusal of "SIKORSKY" 
• TTAB Says "VAULTZ" for Purses Not Primarily Merely a Surname 
• Divided TTAB Panel Finds "J.W. Foster" Not Merely a Surname
• In a Citable Decision, TTAB Reverses Surname Refusal of "FIORE"
• TTAB Reverses Surname Refusal Of "LATAS" For Avocado Rootstocks
• Willie Mosconi and Firmant Arthur Franke: Historic Figures and Section 2(e)(4) (MOSCONI reversed)

TTABlog note: I don't blog every 2(e)(4) case, particularly mundane affirmances. So the chances of a refusal being affirmed are probably higher than 2 to 1.

Text Copyright John L. Welch 2013.

"Stolen Valor and the First Amendment: Does Trademark Infringement Law Leave Congress an Opening"

In United States v. Alvarez, the Supreme Court struck down as unconstitutional the "Stolen Valor Act" of 2005. That Act made it a crime to falsely claim receipt of the Congressional Medal of Honor. A majority of the Court found the statute to be overbroad and violative of the First Amendment right of freedom of speech. Professors Susan M. Richey and John M Greabe of the University of New Hampshire School of Law, have written an interesting article about the case and the Act, entitled "Stolen Valor and the First Amendment: Does Trademark Infringement Law Leave Congress an Opening?", 47 New England Law Review 293 (2013).

This paper proceeds as follows. Part II addresses how the three Alvarez opinions deployed trademark law as a referent, but cautions against the dissent's suggestion that the Stolen Valor Act should have been conceptualized and upheld against a First Amendment challenge as a type of trademark anti-dilution statute. Part III explains why the Act could have been conceptualized as a trademark anti-infringement statute protecting the phrase "Congressional Medal of Honor" as a collective membership mark. Finally, Part IV argues that Congress may prohibit infringement of the "Congressional Medal of Honor" collective membership mark without running afoul of the First Amendment.

Text Copyright John L. Welch 2013

TTAB Posts May 2013 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled three (3) oral hearings for the month of May, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]. Briefs and other papers for these cases may be found at TTABVUE via the links provided.

May 22, 2013 - 2 PM: Weider Publications, LLC v. D & D Beauty Care Company, Inc., Opposition No. 91199352 [Opposition to registration of the mark SHAPES for "Beauty salon services; Day spa services, namely, nail care, manicures, pedicures and nail enhancements; Health spa services for health and wellness of the body and spirit; Health spa services for health and wellness of the body and spirit, namely, providing massage, facial and body treatment services, cosmetic body care services; Health spa services, namely, cosmetic body care services," on the grounds of likelihood of confusion with, and dilution of, the registered mark SHAPE for magazines concerning health and fitness, and for clothing and instructional audio and video products].
 

May 30, 2013 - 10 AM: Pandol Bros., Inc. v. James Pandol, Cancellation No. 92048691 [Petition for cancellation of registrations for the marks PANDOL and PANDOL FAMILY FARMS for fresh fruit in view of the allegedly previously-used mark PANDOL for fresh fruit].

May 30, 2013 - 2 PM: Great Seats, Inc. v. Great Seats, Ltd., Opposition No. 91189540 [Section 2(d) opposition to GREAT SEATS for "arranging for ticket reservations for shows and other entertainment events" in view of the allegedly previously-used, identical mark GREAT SEATS for "ticket agency services for concerts, theatrical performances and sporting events"].



Text Copyright John L. Welch 2013.