TTABlog Quarterly Index: July - September 2013

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Section 2(a) - Deceptiveness:

• Precedential No. 29: TTAB Affirms Five (5) Refusals of "AOP" for Wine
  

Section 2(a) - Disparagement:

• Precedential No. 31: TTAB Dismisses U. Alabama Opposition to HOUNDSTOOTH MAFIA & Design for Clothing

Section 2(a) - False Connection:

• Precedential No. 31: TTAB Dismisses U. Alabama Opposition to HOUNDSTOOTH MAFIA & Design for Clothing

Section 2(a) - Scandalous of Immoral:

• Precedential No. 34: Findng "AWSHIT WORKS" to be Scandalous, TTAB Affirms Section 2(a) Refusal
• Test Your TTAB Judge-Ability: Is "I BANGED BETTY" Scandalous or Immoral Under Section 2(a)?

Section 2(c) - Consent to Register:

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

Section 2(d) - Likelihood of Confusion:

• Test Your TTAB Judge-Ability: Are REAL CHOICE and CLEARCHOICE DENTAL IMPLANTS Confusable for Implant Services?
• WYHA? Section 2(d) and Faulty Specimen Refusals Sink SCARLET Wine Application
• WYHA? TTAB Affirms Section 2(d) Refusal of BLUE STAR POWER SYSTEMS Over BLUE STAR for Generators
• Test Your TTAB Judge-Ability: Which Two of these Four Section 2(d) Refusals Were Reversed?
• Finding Living Plants Unrelated to Furniture Fabrics, TTAB Dismisses SUNBRELLA Opposition to SUN BRELLA'S
• Coach Loses Section 2(d) Design Mark Battle
• Test Your TTAB Judge-Ability on These Three Section 2(d) Appeals
• Test Your TTAB Judge-Ability: Are EWETOPIA and UTOPIA Confusable for Yarn?
• EDGECRAFT Proves Actual Confusion, TTAB Cancels EDGEWARE Registrations for Sharpeners
• Test Your TTAB Judge-Ability: Are NUTFFLES and P-NUTTLES Confusable for Candy?
• Precedential No. 31: TTAB Dismisses U. Alabama Opposition to HOUNDSTOOTH MAFIA & Design for Clothing
• TTABlog Uncorked: Collection of Section 2(d) Cases Involving Wine (Updated)
• Precedential No. 26: Finding Wine and Water Related, TTAB Sustains 2(d) Opposition
• FACEMAIL Falls on its Face When Faced with Famous FACEBOOK Mark
• Test Your TTAB Judge-Ability: Are C•PREME and SUPREME Confusingly Similar for Bicycles?
• Test Your TTAB Judge-Ability: Are Prepared Alcoholic Cocktails Related to Beer?
• Test Your TTAB Judge-Ability: Are "THE TEAM, THE TEAM, THE TEAM" And "TEAM" Confusable for Athletic Footwear?

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

• Test Your TTAB Judge-Ability: Is STACKED Merely Descriptive of Wine?
• Precedential No. 37: TTAB Affirms Mere Descriptiveness Refusal of SUPERJAWS for Machine and Hand Tools
• WORLD COIN NEWS Not Generic But Merely Descriptive for Coin-Related Magazines, Says TTAB
• Test Your TTAB Judge-Ability: Which One of these Four Mere Descriptiveness Refusals Was Reversed?
• Test Your TTAB Judge-Ability on These Three Mere Descriptiveness Refusals
• WYHA? TTAB Finds CASINO INFO Generic and/or Merely Descriptive of ... Guess What?
• Precedential No. 27: TTAB Rejects Genericness and Fraud Claims, But Cancels "ANNAPOLIS TOURS" Section 2(f) Registration for Mere Descriptiveness
• Test Your TTAB Judge-Ability: Is IPEN Merely Descriptive of Digital Pens?

Section 2(e)(1) - Deceptive Misdescriptiveness:

• Test Your TTAB Judge-Ability: Is "CARBON AUDIO" Merely Descriptive of Loudspeakers?
• Precedential No. 29: TTAB Affirms Five (5) Refusals of "AOP" for Wine

Section 2(e)(4) - Primarily Merely a Surname:

• Test Your TTAB Judge-Ability: Is JAKEMANS Primarily Merely a Surname for Medicated Confectionery?

Section 2(e)(5) - Functionality:

• Precedential No. 32: TTAB Sustains Opposition to Pipe Boot Design, Finding it De Jure Functional
• TTAB Reverses Section 2(e)(5) Functionality Refusal of "3-click" Sound Mark for Eyeglasses

Section 2(f) - Acquired Distinctiveness:

• FLOSS LOOPS Lacks Acquired Distinctiveness, Even Among Prison Inmates, Says TTAB

Failure to Function:

• Precedential No. 29: TTAB Affirms Five (5) Refusals of "AOP" for Wine
• TTAB Affirms Refusal to Register Non-Distinctive Product Design/Packaging for Clothing

Fraud:

• TTAB Finds No Fraud in 2008 Specimen of Use for Section 1(a) Application Filed in 2007
• TTAB Summarily Dismisses Two Fraud Claims in INTELLOGY Fracas
• Precedential No. 27: TTAB Rejects Genericness and Fraud Claims, But Cancels "ANNAPOLIS TOURS" Section 2(f) Registration for Mere Descriptiveness
• Precedential No. 28: TTAB Denies 12(b)(6) Motion to Dismiss Fraud Counterclaim

Genericness:

• TTAB Denies Petition to Cancel MUMBO Registration for Barbeque Sauce
• CAFC Affirms TTAB: "PRASTERONE.ORG" Generic for Prasterone-Related Website
• WORLD COIN NEWS Not Generic But Merely Descriptive for Coin-Related Magazines, Says TTAB
• Precedential No. 36: TTAB Finds FOOTLONG To Be Generic for Sandwiches
• Precedential No. 27: TTAB Rejects Genericness and Fraud Claims, But Cancels "ANNAPOLIS TOURS" Section 2(f) Registration for Mere Descriptiveness
• Genericness Counterclaim Demolishes ROCKSCAPE Registration for Landscaping Stone

Identification of Goods:

• Precedential No. 25: TTAB Affirms Refusal to Register Due To Indefinite Identification of Goods

Lack of Bona Fide Intent:

• TTAB Grants Two Summary Judgment Motions Due To Lack of Bona Fide Intent

Morehouse Defense:

• TTAB Summarily Rejects Morehouse Defense

Ownership:

• Precedential No. 24: Foreign Manufacturer, Not U.S. Distributor, Owns the Mark, Says TTAB

Priority:

• TTAB Dismisses "GREAT SEATS" 2(d) Opposition Due to Failure to Prove Priority
• Sale to Single Foreign Customer Sufficient for Priority, Says TTAB

Rule 2.61(b) Compliance:

• Precedential No. 29: TTAB Affirms Five (5) Refusals of "AOP" for Wine

Section 10 Assignability:

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

Discovery/Evidence/Procedure:

• Precedential No.35: TTAB Denies Protective Order, Requires Opposer to Answer Hundreds of Admission Requests
• Precedential No. 28: TTAB Denies 12(b)(6) Motion to Dismiss Fraud Counterclaim
• Precedential No. 30: TTAB Re-Designates as Precedential Its Opinon Vacating ROLEX/ROLL-X

CAFC Decisions:

• CAFC Affirms TTAB: "PRASTERONE.ORG" Generic for Prasterone-Related Website

Recommended Reading:

• Recommended Reading: LaLonde and Gilson, "The United States Supplemental Register: Solace, Substance, or Just Extinct?"
• Jerre B. Swann, "The Evolution of Dilution in the United States from 1927 to 2013"
• TTABlogger Article: "The Top Ten TTAB Decisions of 2012-2013" - Plus 40% Discount on "The IP Book"

Other:

• USPTO Seeks Feedback Regarding Post-Registration Amendment of I.D.s Due to Evolving Technology
• TTAB Posts September 2013 Hearing Schedule
• TTABlog September Road Trip: Ohio Double-Header at AOAIOIP in Cincinnati and Cleveland
• TTAB Posts August 2013 Hearing Schedule
• TTAB Posts July 2013 Hearing Schedule

Text Copyright John L. Welch 2013.

Cleveland

Cincinnati Today

Cincinnati today (actually, Covington, Kentucky) for the 23rd All Ohio Annual Institute on Intellectual Property (also known as AOAIOIP). Cleveland tomorrow.

Cincinnati

Test Your TTAB Judge-Ability: Is STACKED Merely Descriptive of Wine?

This applicant sought to register the mark STACKED & Design (shown below) for "wines and sparkling wines," but the PTO refused registration absent a disclaimer of STACKED. What do you think? Does it matter whether these are "full-bodied" wines? Before you answer those questions, take a look at the specimen of use, depicted further below. In re Stacked Wines, LLC, Serial No. 85129206 (September 4, 2013) [not precedential].

Examining Attorney Scott Bibb contended that STACKED immediately conveys information regarding a significant feature of applicant's wine: it is sold in "stacked" packaging. The evidence showed that applicant and others use the term "stacked" when referring to applicant's wine. Examining Attorney Bibb further argued that competitors need to use the word "stacked" to describe their own wines.

Applicant asserted that, although "stacked" may describe its novel packaging, it does not describe a "characteristic, function or property" of the wine. This innovative packaging is not an integral part of the product, said applicant.

The Board, however, pointed out that applicant was simply wrong: the concept of mere descriptiveness does apply to packaging. For example, in a CCPA precedent, the mark MATCHBOX SERIES was held to be merely descriptive of toy cars sold in packaging sized and shaped like matchboxes. J. Kohnstam, Ltd. v. Louis Marx & Co., 126 USPQ 362 (CCPA 1960). And the Board found SQUEEZE N' SERV merely descriptive of "ketchup," opining that "the package is as much a part of the goods as the ketchup." In re Serv-A-Portion Inc, 1 USPQ2d 1915 (TTAB 1986).

Here, the Board ruled, the goods and packaging are necessarily intertwined: wine must be in a container of some sort, whether in a traditional bottle or in applicant's vertically-stacked single-serve packaging. "[I]t is entirely appropriate to consider whether the term STACKED describes a feature of the packaging for the goods."

Applicant's goods are sold in a container consisting of four disposable, single-serve, plastic wine glasses stacked vertically. Thus the word STACKED immediately refers to a significant feature of applicant's brand of wine. The fact that applicant may be the first to use the term in relation to wine is of no consequence. The term STACKED is still merely descriptive of the goods, and must be disclaimed.

And so the Board affirmed the refusal, but allowed applicant two months within which to submit the required disclaimed.

Read comments and post your comment here.

TTABlog note: Well, how did you do? Since applicant presumably has no monopoly on the concept of stacking wine bottles for sale in a stacked package, then others are free to sell their wine in stacked format and they should be able to describe that arrangement as "stacked."

What if the mark included a drawing of a buxom woman, i.e., "stacked," instead of the drawing of four bottles? Would this double entendre get applicant over the disclaimer hurdle?

Text Copyright John L. Welch 2013.

Recommended Reading: LaLonde and Gilson, "The United States Supplemental Register: Solace, Substance, or Just Extinct?"

Anne Gilson LaLonde and Jerome Gilson "attempt to unravel the mysteries of the supplemental register" in "The United States Supplemental Register: Solace, Substance, or Just Extinct?", 103 TMR 828 (2013). Those of us who see a supplemental registration as a last resort, better than nothing, a minor league registration, will have our beliefs confirmed by this exploration of "what can and cannot be registered, what motivated the creation of this second-cousin register, and what advantages and disadvantages a supplemental registration brings its owner."



Registration on the Supplemental Register creates no substantive rights. Nonetheless, a supplemental registration can serve to block registration of other marks on the principal register, it permits the owner to us the ® symbol adjacent the mark, and it may stop identical domain names from being registered. [But is a mark registered on the supplemental register really a mark? Or would it, the authors ask, be better referred to as a "potential mark, contingent mark, non-mark, anti-mark, faux-mark or pseudo mark"?] Moreover, a supplemental registration provides federal jurisdiction over infringement actions.

The primary disadvantage of a supplemental registration, according to the authors, is the accompanying admission that the subject "mark" was descriptive (not inherently distinctive) at the time of registration. Moreover, unlike a principal registration, a supplemental registration does not enjoy the statutory presumptions of validity, ownership, and exclusive right to use. It does not provide evidence of priority of use or nationwide constructive notice of registrant's claim of ownership. It cannot become incontestable, and it does not help in stopping importation of counterfeit or infringing goods.

A few more tidbits: A foreign trademark owners may obtain a supplemental registration under Section 44 without use of the mark. [A mark registered on the supplemental register with no use in the United States is a really weak mark! - ed.]. However. a foreign applicant seeking an extension of protection under the Madrid Protocol cannot obtain registration on the supplemental register. A supplemental registration owned by a U.S. citizen may serve as the basis for foreign registration.

Should the supplemental register be abolished? The authors state that, if they were drafting a United States trademark law today, they would exclude it. "Without the current register, it would never occur to legislators - and properly so - to have a database of non-trademarks." But it is unlikely that abolition of the supplemental register will occur, since no one seems to pay much attention to it. [Only about 3.6% of all registrations reside on the supplemental register].

Still, the authors say, there is room for improvement. First, the PTO should be prohibited from citing supplemental registration against principal register applications under Section 2(d). Second, the Act should provide for oppositions to applications for supplemental registration, since there is no longer any need to expedite such applications to enable foreign registration. And third, owners of supplemental registrations should not be allowed to use the ® symbol, which misleads the public by indicating that trademark rights exist when there are none.

Interesting ideas, but I wouldn't hold my breath awaiting their implementation.

TTABlog note: This article is "Copyright © 2013 Matthew Bender & Company, Inc., a member of the LexisNexis Group. All rights reserved. Material reproduced from Gilson on Trademarks with the permission of Matthew Bender & Company, Inc., a member of the LexisNexis Group. No part of this document may be copied, photocopied, reproduced, translated, or reduced to any electronic medium or machine readable form, in whole or in part, without prior written consent of Matthew Bender & Company, Inc."

I thank Matthew Bender & Company, as well as The Trademark Reporter, for permission to provide a link to this article.

Text copyright John L. Welch 2013.

Recommended Reading: Jerre B. Swann, "The Evolution of Dilution in the United States from 1927 to 2013"

In this enlightening article, "The Evolution of Dilution in the United States from 1927 to 2013," Jerre B. Swann traces the history of dilution law in the United States from the Frank Schechter era to today's TDRA. He observes that Schecter's framework for dilution protection was "(a) besieged by Harvard school economics; (b) undercut by overreaching enactments at the state level; and (c) substantially obviated by expanded concepts of consumer confusion." [As we have seen in many TTAB decisions, very strong marks (i.e., those "famous" for Section 2(d) purposes) are given broad protection under a likelihood-of-confusion analysis, and the issue of dilution is never reached by the Board.]

Jerre B. Swann
As trademarks and markets changed during the last century, trademark law changed as well: "(a) in the 1960s, trademarks began to evolve into modern day-brands; (b) the evaluation of the evolution was radically altered by Chicago school economics; and (c) in the latter decades of the twentieth century, brands entered the current Age of Information (and clutter)."

Dilution concepts in the 1920s were thus perceived as necessary to prevent third-party appropriation of trademark quality signals for non-competing goods; by the 1960s, at the midpoint of its history, dilution was largely displaced as a remedy by an expanded confusion factors analysis; but, as of the twenty-first century, dilution is again in vogue to protect a limited number of brands with vastly greater informational/experiential content that is economically essential to consumers in a “crowded” market. Schechter participated only in dilution’s initial decade, but his insistence on a re-analysis of trademark functions set the pattern for its re-emergence, and dilution’s history confirms Schechter’s organic view of trademark law.

Mr. Swann urges that the primary purpose of dilution law today is "to protect the informational 'clarity'" of well-known or celebrated trademarks. "[B]rand clarity is a consumer good," and the attacks on dilution law as protecting marks, not consumers, are off the mark.

He believes that the "guidelines" incorporated into the TDRA "will facilitate predictability and ameliorate the expense of dilution protection."

If they operate as intended, the guidelines incorporated in the TDRA will, in tandem with emerging fair use concepts, protect the often competitively enhancing uses of famous brands in their purely informational sense. Those eventualities, of course, are not yet assured, and particularly in the age of the Internet, the function of trademarks—the nature of the information they convey and the total value they provide to consumers—may shift again. Still now, as when Schechter penned “Rational Basis” in 1927, “[t]here is no part of the law that is more plastic than unfair competition."

TTABlog note: I thank The Trademark Reporter for granting permission to provide a link to this article, which is Copyright © 2013 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 103 TMR 721 (2013).

Text Copyright John L. Welch 2013.

TTABlogger Article: "The Top Ten TTAB Decisions of 2012-2013" - Plus 40% Discount on "The IP Book"

Here is a link to my chapter in the 2013 edition of The IP Book, published by The Midwest Intellectual Property Institute and Minnesota Continuing Legal Education: "The Top Ten TTAB Decisions of 2012-2013." The IP Book provides a collection of updates on case law and emerging issues in all major areas of intellectual property law. Once again, I thank Steve Baird for the opportunity to contribute to this useful and readable reference. [E-mail recipients of this posting may have to surf to the blog to download the article].

Table of Contents for this, the 11th Edition:

• CHAPTER 1. United States Supreme Court - IP Year in Review
• CHAPTER 2. Federal Circuit Year in Review 2012-2013: Everything Old is Still Old Again
• CHAPTER 3. The America Invents Act - 2013 Update
• CHAPTER 4. Myriad: Genetic Material as Patentable Subject Matter, Form Versus Function
• CHAPTER 5. Standard Essential Patents
• CHAPTER 6. Already v. Nike: The IP Owner's Ability to Control the Existence of a Justiciable Case or Controversy
• CHAPTER 7. Bowman v. Monsanto: Knowing Beans About the Scope of Patent Rights for Self-Replicating Products
• CHAPTER 8. Developments in the Law of Patent Remedies 2012-2013
• CHAPTER 9. Copyright Highlights
• CHAPTER 10. Critical Trade Secret Developments
• CHAPTER 11. Top Ten Trademark Decisions of 2012-2013
• CHAPTER 12. The Top Ten TTAB Decisions of 2012-2013
• CHAPTER 13. Top Ten Uniform Domain-Name Dispute Resolution Policy Decisions for 2012-2013
• CHAPTER 14. Social Media: 10 Noteworthy Developments in 2012-2013

TTABlog readers interested in purchasing the 2013 edition of The IP Book ($75) may do so here. For a 40% discount, enter this code when prompted: 2013IPBook.

Text Copyright John L. Welch 2013.

TTAB Denies Petition to Cancel MUMBO Registration for Barbeque Sauce

Capital City, LLC provided evidence of some generic use of the mark MUMBO for barbeque sauce, but not enough to show that the relevant consuming public recognizes the term as a generic reference for a type of barbeque sauce. The Board therefore denied its petition for cancellation of the MUMBO registration. Capital City, LLC v. Select Brands LLC , Cancellation No. 92054587 (August 26, 2013) [not precedential].

Petitioner Capital City asserted that "mumbo" is a term used in the Washington, D.C. area since a least the early 1960's, to identify a type of condiment. After it adopted the term to describe a type of sauce, Capital City received a cease-and-desist letter from Respondent Select Brands, based in Chicago.

There was no real dispute that the genus of good at issue is barbeque sauce, and the relevant public consists of "consumers and potential consumers of barbeque sauce."

Petitioner's evidence consisted of printouts from six different retail websites, one Facebook page, and a website called "The Sauces." These materials evidenced use of a half-dozen different sauces called "mumbo sauce." One website stated that Mumbo Sauce is a "very popular sauce in the DC area." [Hearsay! - ed]. The Board was not impressed.

Although the aforementioned evidence indicates some generic use of the term “Mumbo” in connection with sauces, this evidence is of limited probative value for several reasons. First, the number of uses by third parties may be considered minimal inasmuch as the materials are drawn from seven different websites and one Facebook page. Second, there is no evidence showing the extent of exposure to these uses, i.e., there is no indication whether these are relatively obscure websites nor is there any way to determine the number of bottles, if any, of “Mumbo” sauce that have been sold by third parties. That is, there is no testimony or corroborating evidence showing that the aforementioned third-party use of the term “Mumbo” is so extensive such that we can conclude that the relevant consuming public recognizes “Mumbo” primarily as a generic reference for a type of barbeque sauce.

Respondent's evidence established its "serious efforts" to police improper uses of its MUMBO mark. [What does that have to do with genericness? - ed.].

The Board concluded that petitioner had failed to meet its burden to prove genericness by a preponderance of the evidence.

Read comments and post your comment here.

TTABlog note: Some of petitioner's proposed evidence was excluded for procedural reasons. What vehicle might petitioner employ to appeal from this decision and at the same time have the opportunity to submit additional evidence?

Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability: Is "CARBON AUDIO" Merely Descriptive of Loudspeakers?

Carbon Audio, Inc. sought to register the mark CARBON AUDIO for "audio headphones; audio speaker enclosures; audio speakers; wireless indoor and outdoor speakers," but the PTO turned down the application, deeming the mark merely descriptive of the identified goods. Applicant argued that every product contains some amount of carbon, and the word "carbon" has no particular significance for its goods. How do you think this came out? In re Carbon Audio Holdings, LLC, Serial No. 85394582 (September 12, 2013) [not precedential].

Examining Attorney Laura Dawn Golden maintained that the word "carbon" immediately and clearly informs consumer that applicant's products may be made of carbon fibers. The evidence, she contended, demonstrates that carbon fibers are a "most desirable ingredient" in the goods identified by applicant.

The record evidence showed that there is a "huge market among audiophiles for high-quality loudspeakers." Among the priciest are speakers incorporating carbon fibers in their woofers, sub-woofers, and other components. The accumulated evidence "speaks for itself:" carbon fibers are a significant element of high-end loud speakers

The only question was whether the term "carbon," as adopted and used by applicant, is so "attenuated that potential consumers of stereo speakers will not make an immediate connection to 'carbon fibers.'" On this critical issue, the Board disagreed with applicant.

The Board was simply not persuaded that potential customers for stereo speakers would, upon seeing CARBON AUDIO, spend time "cogitating on Element #6 of the Periodic Table" in some abstract, cosmic, or generalized way. Instead, the Board found that customers, when encountering CARBON AUDIO in connection with speaker products, will immediately think of carbon fibers and the critical role they play in high-quality speakers. In short, the word "carbon" in the applied-for mark will immediately convey information about the quality or characteristics of the products.

Despite applicant's contention to the contrary, the Board concluded that competitors certainly need to use the word "carbon," in its narrow sense of "carbon fibers," to describe their audio products.

Therefore, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog note: Well, how did you do? Do you think this case deserves the "WYHA?" tag?

Text Copyright John L. Welch 2013.

CAFC Affirms TTAB: "PRASTERONE.ORG" Generic for Prasterone-Related Website

In a rare case of double-WYHA?, the U.S. Court of Appeals for the Federal Circuit (a/k/a, the CAFC) affirmed the TTAB's decision (here) upholding a refusal to register, on the ground of genericness, the terms PRASTERONE.ORG and THE PRASTERONE COMPANY for "providing a website featuring scientific and clinical research information about investigational medical foods, dietary supplements or drugs, namely, prasterone or derivatives or analogs thereof." In Re Health Science Funding, LLC, Appeal No. 1054 (Fed. Cir. September 13, 2013) [not precedential].

There was no dispute that "prasterone" is a generic term for synthetic dehydroepiandroesterone (DHEA). The Board reasoned that because prasterone is generic for the subject matter of the services, it is also generic for the services themselves. It found that ".org" and "company" are also generic and lack source-identifying significance. Looking at the applied-for marks in their entireties, the Board found them to be generic.

The CAFC reviewed the Board's finding for substantial evidence, bearing in mind that the PTO has the burden to prove genericness by clear evidence.

The Board found no error in the Board's determination of the genus of services as being identified by the recitation of services in the applications at issue.

In determining whether the applied-for marks are understood by the relevant public primarily to refer to the identified genus of services, the Board properly relied on both the generic meaning of prasterone and on its use on informational websites, finding that "prasterone" is frequently used at websites that provide information about the drug and its efficacy.

Applicant relied heavily on the CAFC's decision in In re Steelbuilding.com, 415 F.3d 1293 (Fed. Cir. 2005), but the Board found that case "easily distinguishable."

In that case, we reversed because "the Board erroneously: (1) construed the genus of applicant’s services and goods too narrowly; (2) discounted the ambiguities and multiple meanings in the mark; and (3) dismissed the addition of the TLD indicator despite its expansion of the meaning of 'STEELBUILDING.COM.'" Id. at 1299. Health Science points to no similar errors in the Board’s decision in this case.

Instead, the court found that the Board's approach in this case largely tracked the CAFC's analysis in In re Hotels.com, L.P., 573 F.3d 1300 (Fed. Cir. 2009) [HOTEL.COM deemed generic for hotel information and reservation services].

Applicant here failed to show why the Board's factual findings lack substantial evidentiary support. The CAFC ruled that the Board's findings, and its ultimate conclusion, were indeed supported by substantial evidence.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

Precedential No. 37: TTAB Affirms Mere Descriptiveness Refusal of SUPERJAWS for Machine and Hand Tools

The Board affirmed a Section 2(e)(1) refusal to register the mark SUPERJAWS, finding it merely descriptive of machine tools and hand tools, including jaws and metal vice jaws. Examining Attorney Alyssa Paladino Steel and the applicant pointed to numerous third-party registrations for "super-"formative marks in which the word "super" was or was not deemed merely descriptive, the PTO claiming that "super" is laudatory and the applicant claiming that "super" is at most suggestive. In re Positec Group Limited, 108 USPQ2d 1161 (TTAB 2013) [precedential].

The Board first noted that although applicant's identification of goods includes tools other than "jaws" or gripping devices, a mark is deemed merely descriptive under Section 2(e)(1) if it describes even one of the identified goods.

"Super-"formative marks have been discussed in a number of precedential TTAB decisions, and applicant and the Examining Attorney seemingly agreed that there is no per se rule as to how the USPTO treats the word "super." The Board found helpful guidance in In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1052 (TTAB 2002), where the Board affirmed a Section 2(e)(1) deceptive misdescriptiveness refusal of SUPER SILK for "shirts made of silk-like fabric:"

A general proposition which may be distilled from the foregoing cases is that if 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.

The distinction made in Phillips-Van Heusen "explains well the difference in result" between many of the "Super-"formative marks listed by applicant and the Examining Attorney. The marks cited by applicant were either unitary marks in which disclaimer of "super" would not be required, or, for registrations issuing after Phillips-Van Heusen, comprised the word "Super" followed by a suggestive term (e.g., SUPER STRAP, SUPER BRITE, SUPER EDGE). In substantially all of the registrations cited by the Examining Attorney, the second term in the composite mark "names the goods," and therefore the registrations included a disclaimer of "Super" or a Section 2(f) claim of acquired distinctiveness, or resided on the Supplemental Register.

Applicant feebly argued that the term SUPERJAWS will immediately bring to mind connotations of Superman or some other superhero, rather than a laudatory reference to its goods. The Board, however, found no support for this argument in the evidence of record. Instead, it concluded that consumers would readily understand that the applied-for mark "describes a superior vice system for grasping and holding work pieces."

And so it affirmed the mere descriptiveness refusal.

Read comments and post your comment here.

TTABlog note: I think the word "super" should always be deemed merely descriptive. Better yet, there should be a new refusal: Section 2(t): mere triteness.

Text Copyright John L. Welch 2013.

USPTO Seeks Feedback Regarding Post-Registration Amendment of I.D.s Due to Evolving Technology

From the USPTO: The USPTO is seeking feedback from U.S. trademark owners, practitioners, and other interested parties regarding their views on amendments to identification of goods and services due to changes in the manner or medium by which products and services are offered for sale and provided to customers, particularly due to evolving technology. View the full Request for Comments here. Please email your responses to the questions in the Request for Comments to TMFeedback@uspto.gov, with the subject line “Technology Evolution” no later than December 1, 2013.

Test Your TTAB Judge-Ability: Are REAL CHOICE and CLEARCHOICE DENTAL IMPLANTS Confusable for Implant Services?

In this Section 2(d) opposition to registration of the mark REAL CHOICE, opposer claimed a likelihood of confusion with its registered mark CLEARCHOICE DENTAL IMPLANTS, both for dental implant services [DENTAL IMPLANTS disclaimed in the registered mark]. The services are legally identical, but are the marks close enough? Is the outcome real clear to you? Clear Choice Holdings LLC v. Implant Direct Int’l, Opposition No. 91190485 (August 26, 2013) [not precedential].

Because the involved services are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. And because there are no limitations in the application or pleaded registration as to channels of trade or classes of customers, the Board presumed that the services are offered in the usual channels to the normal classes of customers.

As to the marks, the Board not surprisingly focused on the terms REAL CHOICE and CLEARCHOICE. It found the terms similar in appearance and sound, noting that each term prefaces the word "choice" with a one-syllable term featuring a long "e" vowel sound framed by consonants. And it noted that "real" is an anagram of "clear," minus the "c."

The Board also found the connotations of "real" and "clear" to be related, since "real" is listed as one of many synonyms for "clear." And the marks make similar commercial impressions in the context of the identified services.

Consequently the first duPont factor favored opposer.

The Board recognized that dental implant services may be expensive, but neither the application nor the pleaded registration limit the services to any certain price. There was no evidence that the purchasers are sophisticated, but the Board has previously noted that even ordinary consumers exercise greater care when making healthcare decisions. But then, careful consumers are not immune to source confusion when similar marks are used for identical services. The Board concluded that the similarities between the marks outweighed any sophisticated purchasing decision, and so this factor was deemed neutral.

Opposer claimed that its mark is famous, but its proofs fell "woefully short." There was no evidence of actual confusion, but also little opportunity for same since the parties overlap in only three markets.

Opposer's survey evidence suffered from numerous flaws: opposer failed to follow an established format to measure likelihood of confusion, the sample size was small, and the choice of the survey universe was wrong. [Opposer's expert stated that the survey was designed to test initial interest confusion, but the Board noted that the CAFC has not embraced that theory.] The Board gave the survey results no weight.

Finally, opposer claimed that applicant adopted its mark in bad faith, but the Board found no intent to deceive consumers, even if applicant did intend to copy opposer's logo and website (which it changed after being contacted by opposer).

Balancing the duPont factors, the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

WORLD COIN NEWS Not Generic But Merely Descriptive for Coin-Related Magazines, Says TTAB

The Board reversed a genericness refusal of WORLD COIN NEWS for "magazines published periodically relating to collectible world coins," but found the term merely descriptive under Section 2(e)(1) and lacking in acquired distinctiveness. The Board noted that the PTO allows certain flexibility in the registration of marks for periodicals, because it is important that the title of a publication convey some idea of the subject matter of its contents. In re F+W Media, Inc., Serial No. 85223494 (August 13, 2013) [not precedential].

Genericness: The Examining Attorney argued that WORLD COIN NEWS is the apt name for applicant's goods, but Board pointed out that "aptness" is not enough. For example, AMERICAN BAR ASSOCIATION may be an apt name for a national association of lawyers, but it is not generic for all national bar associations.

The Board found the genus of goods to be adequately described by the application's identification of goods. The question then was "whether the term sought to be registered is understood by the relevant public primarily to refer to that class of magazines." {See Professor McCarthy's comment regarding the Board's use of the term "refer," below]. The relevant purchasing public, the Board found, comprises collectors of world coins.

The Board recognized WORLD COIN NEWS as a phrase, and therefore the In re American Fertility test applied: the Board cannot rely merely on definitions and generic uses of the constituent terms, but must explore the meaning of the phrase as a whole.

The record lacked any evidence of use of the phrase WORLD COIN NEWS in association with magazines, other than those of applicant. Third-party registrations for marks that include the word NEWS in connection with magazines (e.g., AMERICAN LAUNDRY NEWS) demonstrated that the USPTO treats such marks as not being generic. The Board noted that, for publication titles, "a certain degree of flexibility" is applied because it is important that consumers recognize the contents of a magazine from its title. On the other hand, the rights granted should be narrow in scope so that competitors may also employ titles that convey information about the publication's subject matter.

The Board concluded that the PTO had failed to provide the required clear evidence of genericness, and so it reversed this refusal.

Acquired Distinctiveness: Obviously, the applied-for mark is not a "coined" term. In fact, applicant invoked Section 2(f), thereby admitting that the mark is not inherently distinctive. And the Board deemed the mark "highly descriptive."

Applicant did not provide sales or advertising information, and its monthly circulation (3800) was not large. It claimed 40 years of use, but long use is not alone enough to establish acquired distinctiveness. There was no direct evidence of recognition of the mark as a source indicator.

And so the Board found that applicant had failed to prove acquired distinctiveness, and it affirmed the refusal under Section 2(e)(1).

Read comments and post your comment here.

TTABlog note: Professor McCarthy left the following comment regarding the FOOTLONG decision, TTABlogged on Friday:

Both the CAFC and the TTAB persist in using the vague language: “does the relevant public understand the designation primarily to refer to that genus of goods?” “Refer to” is an inapt and misleading phrase to use in this context. The proper question is whether the relevant public understands the designation as a name of that genus of goods. J. Thomas McCarthy

The TTABlogger notes that the Board reversed the genericness refusal "under Section 2(e)(1)" and affirmed the refusal "under Section 2(f)." Actually, I don't believe Section 2(f) is a ground for refusal, nor do I believe a genericness refusal falls under Section 2(e)(1). My understanding is that a genericness refusal is just that, while a mere descriptiveness refusal falls under 2(e)(1), the failure under 2(f) merely meaning that the 2(e)(1) refusal has not been overcome.

Text Copyright John L. Welch 2013.

FLOSS LOOPS Lacks Acquired Distinctiveness, Even Among Prison Inmates, Says TTAB

The Board affirmed a Section 2(e)(1) refusal to register the mark FLOSS LOOPS, finding it to be merely descriptive of dental floss and lacking in acquired distinctiveness. Applicant disclaimed FLOSS but claimed the benefit of Section 2(f) for the term LOOPS. The Board found that applicant failed to prove that the mark had acquired distinctiveness for general consumers, and that even if one considered the pertinent market as sales to prisons, its evidence was insufficient. In re Loops, LLC, Serial No. 85203745 (August 21, 2013) [not precedential].

Dictionary definitions, Internet evidence, and third-party patents submitted by Examining Attorney Lief Martin, as well as applicant's own specimen of use, led the Board to conclude that "floss loops" is at least highly descriptive of dental floss. Applicant therefore faced a heavy burden to prove acquired distinctiveness.

Applicant pointed to a Master Product List from the Florida Department of Corrections, but that document included "FLOSS LOOPS" in the same group as the generic terms "HAIR BRUSH" and "TOOTHBRUSH." Two newspapers articles were likewise of little help, one using the term "floss loops" generically, and the other making mere passing mention of "Floss Loops."

Applicant's sales amounted to some 285 cases of dental floss, a sum not sufficient to satisfy Section 2(f). It pointed to its other registrations for marks containing or consisting of the word LOOPS, but the Board found those other marks to be different in connotation: e.g., LOOPS FLEXIBLE TOOTHBRUSH HOLDER. [One registration, however, covered the word mark LOOPS for dental floss - ed.].

There was no evidence of sale of the goods to the general public. Because applicant's identification of goods is not restricted as to channels of trade or classes of consumers, the Board considered it appropriate to consider whether the subject mark had acquired distinctiveness with respect to the general public. It had not, and that alone was enough for affirmance of the refusal.

As to the sale of the goods to prisons, applicant provided evidence of its promotional efforts: letters to buyers and trade show exhibitions. The Examining Attorney urged dismissal of this evidence as not being directed to the ultimate purchasers, i.e., the prisoners. The Board, however, noted that correctional facilities themselves may purchase the goods for distribution, rather than sale, to prisoners. So those buyers may also be considered as relevant purchasers.

However, it was not clear that even among those prison purchasers, FLOSS LOOPS or LOOPS has acquired distinctiveness as a source-indicator. The evidence was too ambiguous and scant to permit a finding of acquired distinctiveness.

And so the Board affirmed the refusal.

Read comments and post your comments here.

TTABlog note:  Couldn't applicant make a claim to acquired distinctiveness of the word LOOPS by relying on its registration for LOOPS for dental floss? Trademark Rule 2.41(b) says that a prior registration for the "same mark" may be accepted by the PTO. Here, according to the Board, applicant was making a 2(f) claim only to the word LOOPS, and so, for our purposes, is that not the "same mark" as the prior registration?

Text Copyright John L. Welch 2013.

WYHA? Section 2(d) and Faulty Specimen Refusals Sink SCARLET Wine Application

The Board affirmed two refusals to register the mark shown below, for wines [2009 LAKE COUNTY RED WINE disclaimed], finding the applied-for mark likely to cause confusion with the registered mark THE SCARLET LETTER for wine, and also finding applicant's specimen of use to be inadequate. Would you have appealed? In re Steele Wines, Inc., Serial No. 85683619 (August 23, 2013) [not precedential].

Likelihood of confusion: Examining Attorney Fred Carl III maintained that the cited mark is the  name of the classic American novel, The Scarlet Letter, by Nathanial Hawthorne, which concerns an accused puritan adulteress who must wear a scarlet-colored “A” on her clothing, and that applicant’s mark connotes the same novel.

Applicant Steele argued that the cited mark is weak and merits only a narrow scope of protection, in view of third-party registrations for the marks SCARLOT HARLOT, SCARLET RIDGE, and SCARLATTA, all for wine.

The Board observed that since the involved goods are identical, it must presume that they travel through the same, normal channels of trade to the same classes of consumers. As to the marks, the imagery in applicant's mark - use of the color red letter “A” and word SCARLET - "unmistakably evoke the novel The Scarlet Letter." The evidence did not reveal any other possible connotation for applicant's mark. The Board concluded that the marks are "highly similar in connotation and, as a whole, convey highly similar commercial impressions."

The marks in the third-party references cited by applicant differ in connotation, appearance, and sound from the two marks at issue here. Moreover,third-party registrations are not proof that consumers are familiar with the marks and accustomed to the existence of the same or similar marks in the marketplace.

And so the Board found confusion likely and it affirmed the Section 2(d) refusal.

Specimen of Use: The Examining Attorney rejected applicant's specimen of use [depicted below] because it fails to display the entire applied-for mark. Under Rule 2.51(a), "the drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods and/or services."

Here, the specimen displays only a portion of the word SCARLET,  with only part of the letter "S" visible and none of the letter "T" visible. Moreover, the specimen does not fully display the second puritan figure appearing on the left side of the mark in the drawing.

In short, most, but not all, of the applied-for mark appears on the specimen of use. These are "major, significant" differences between the drawing and the specimen, and consequently the Board agreed with the examining attorney that the mark shown on applicant’s drawing is not a substantially exact representation of the mark appearing on the specimen of use.

And so the Board affirmed the second refusal to register.

TTABlog note: Certainly the second refusal could have easily been avoided by soaking a label off one of the bottles and submitted the entire label as the specimen.

Read comments and post your comments here.

Text Copyright John L. Welch 2013.

Precedential No. 36: TTAB Finds FOOTLONG To Be Generic for Sandwiches

The Board sustained an opposition to registration of FOOTLONG for "sandwiches, excluding hot dogs," finding the term to be generic, and if not generic, then merely descriptive and lacking in acquired distinctiveness. Applicant Subway's "Teflon" survey failed to pass mustard muster, and a rebuttal survey supported the Board's view that Subway's survey had little probative value. Sheetz of Delaware, Inc. v. Doctor’s Associates Inc., 108 USPQ2d 1341 (TTAB 2013) [precedential].


Genericness: The Board found the genus of goods to be "sandwiches excluding hot dogs," and the relevant public to be "ordinary consumers who purchase and eat sandwiches."

The term "footlong" is an adjective defined as "being about one foot in length: a footlong hot dog." Subway's own evidence showed that it was using "footlong" in a manner not likely to be recognized as trademark use: "it is clear that FOOTLONG denotes the fact that applicant purveys a type of sandwich that is approximately one foot long." Opposer Sheetz introduced many examples of third-party use of "footlong" to identify sandwiches.

Each party submitted the results of a "Teflon" survey, reaching opposite results on the question of genericness. Professor McCarthy describes a "Teflon" survey as a mini-course in the generic versus trademark distinction, followed by a test. Subway's survey results purported to show that 54% of respondents identified "Footlong" as a brand name.

The Board found several problems with Subway's survey. First, the universe was too narrow because it was limited to recent and frequent patrons of fast food restaurants and sandwich shops. Second, the examples of common names and brand names could be ambiguous. Third, there was no mini-test to determine whether respondents understood the difference between a common name and a brand name. Instead, respondents were simply asked, "Do you understand the difference between 'brand names' and 'common names?'" And fourth, respondents should not have been provided with the option of stating that a term could be both a common name and a brand name (since a generic term can never be a trademark). Therefore, the Board gave very little weight to Subway's survey results.

Opposer Sheetz offered a rebuttal survey designed to address the defects in Subway's survey. In Sheetz's survey, 80% identified "Footlong" as a type of product. Subway's expert aimed several criticisms at this rebuttal survey, but the Board concluded that Sheetz's survey supported the finding that Subway's survey had little probative value.

The Board therefore found that "Footlong" identifies a type or category of sandwich that includes 12-inch sandwiches and is generic for "sandwiches, excluding hot dogs."

Acquired Distinctiveness: For purposes of completeness, and assuming arguendo that "Footlong" is highly descriptive but not generic, the Board considered whether the term has acquired distinctiveness. Opposer Sheetz had the initial burden to show that "Footlong" has not acquired distinctiveness." In other word, Sheetz had the burden of producing evidence that would overcome Survey's evidence of acquired distinctiveness made of record during prosecution of the opposed application (allowed under Section 2(f)). The Board observed that Sheetz's evidence of genericness sufficed to meet this initial burden.

Subway was entitled, then, to submit additional evidence to rebut Sheetz's showing. The ultimate burden of persuasion on the issue of acquired distinctiveness rested on Subway. Subway pointed to its extensive sales and advertising, alleged copying of its mark by Sheetz, unsolicited media coverage, and its survey results.

The Board observed that, although Subway has achieved great commercial success, such success is not necessarily indicative of acquired distinctiveness. Other factors are significant, most likely the fact that Subway offers a quality product at a competitive price. In view of the manner of use of "Footlong" by Subway, consumers are much more likely to view the word as referring to sandwiches of a particular size, rather than as a trademark.

The Board found that Sheetz did not copy the "Footlong" mark, but rather the idea behind Subway's promotion of a "$5 Footlong." The media coverage of Subway's sandwiches used the term "Footlong" generically, not as a trademark. And in the acquired distinctiveness context, Subway's survey suffered from the same flaws discussed above.

Moreover, widespread use of "footlong" by third parties would itself be sufficient to dispose of the claim of acquired distinctiveness.

Lastly, the Board noted Subway's evidence that it policed use of FOOTLONG, and made at least thirty cease-and-desist demands. However, acquiescence to a competitor's demands may reflect merely a desire to avoid litigation, a desire that may be especially strong when faced with the largest fast food restaurant chain in the country.

Concluding that Subway had failed to prove acquired distinctiveness, the Board held the term "Footlong" to be merely descriptive.

Read comments and post your comments here.

TTABlog note: Oral argument in this case was held at the University of New Hampshire School of Law in September 2012 [TTABlogged here].

Text Copyright John L. Welch 2013.

WYHA? TTAB Affirms Section 2(d) Refusal of BLUE STAR POWER SYSTEMS Over BLUE STAR for Generators

In a seven-page opinion, the Board affirmed a refusal to register the mark BLUE STAR POWER SYSTEMS for emergency automatic standby electric generator sets of at least 20 kWe sold through distributors for standby power in industrial and commercial buildings." finding it likely to cause confusion with the registered mark BLUE STAR for "electric generators for welding or power." The marks are certainly similar and the goods overlap. Would you have appealed? In re Blue Star Power Systems, Inc., Serial No. 85459999 (August 23, 2013) [not precedential].

As to the marks, the applied-for mark incorporates the registered mark in its entirety, adding only the merely descriptive, if not generic, term POWER SYSTEMS. While the two marks differ somewhat in sound, the term BLUE STAR dominates, and so, not surprisingly, the Board found the similarities in the mark to outweigh the differences.

Applicant argued that BLUE STAR is weak in view of 65 third-party registrations for marks consisting of or containing BLUE STAR. But there were two major problems with this evidence: there was no proof that the marks are in actual use and, in any case, the registrations are for unrelated goods and services.

The goods in the cited registration are described broadly and encompass those of the subject application. Consequently, the involved goods are considered legally identical, and the Board presumes that they travel through the same channels of trade to the same classes of consumers.

Applicant urged that the purchasers of its generators are sophisticated and the overlap in channels of trade would be limited to its commercial goods. The Board agreed that purchases of electrical generators for industrial and commercial buildings are unlikely to be on impulse, and the purchasers may be sophisticated. But even sophisticated purchasers may be confused when similar marks are use for the same goods.

Finally, applicant claimed that there has been no actual confusion, but the Board once again pointed out that, in the ex parte context, such assertions have little weight because the other trademark owner has no opportunity to present its views. Moreover, there was insufficient evidence regarding the opportunities for confusion to occur in the marketplace.

Balancing the relevant duPont, and giving the benefit of any doubt to the prior registrant, the Board found confusion likely and it therefore affirmed the refusal.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability: Which One of these Four Mere Descriptiveness Refusals Was Reversed?

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


In re Tatham, Serial No. 77725646 (August 22, 2013) [not precedential]. [Refusal to register the mark GRAND PRIX RUGBY for "television broadcasting of rugby events and tournaments between rugby leagues" in Class 38; and "organizing and conducting rugby exhibitions and tournaments between rugby leagues" in Class 41 [RUGBY disclaimed]].

In re Brian Newville, Serial No. 85470364 (August 22, 2013) [not precedential]. [Refusal to register MANTLEMOUNT for "metal audio, video and computer wall and ceiling mounts" in International Class 6].

In re Assurant, Inc., Serial No. 85494137 (August 21, 2013) [not precedential]. [Refusal to register PREAUTHORIZED DEBIT PROTECTION for "underwriting and administration of payment protection insurance, namely, insuring payment of preauthorized payments" [PROTECTION disclaimed].

In re Goldberg, Serial No. 85365401 (August 19, 2013) [not precedential]. [Refusal to register THE DONUT for 'therapeutic hot and cold therapy packs"].

Read comments and post your comments here.

TTABlog note: Answer in first comment.

Text Copyright John L. Welch 2013.

TTAB Posts September 2013 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled nine (9) oral hearings for the month of September, 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.

September 10, 2013 - 2 PM: Carl Karcher Enterprises, Inc. v. Carl's Bar & Delicatessen, Inc., Opposition No. 91188150 [Opposition to registration of CARL'S BAR and CARL'S BAR & DELICATESSEN for "restaurant, bar and catering services" on the ground of likelihood of confusion with, and likely dilution of, the registered mark CARL'S, JR., in standard character and various design forms, for restaurant services].

September 12, 2013 - 2 PM: In re U.S. Tsubaki, Inc., Serial No. 85267349 [Refusal to register TSUBAKI: THE CHOICE FOR CHAIN for failure to file an acceptable specimen showing proper trademark use in connection with "industrial machine parts, namely, chains and
sprockets"].

September 18, 2013 - 1 PM: In re Midwestern Pet Foods, Inc., Serial No. 85501985 [Refusal to register TOBY'S TURKEY DINNER for pet food, absent a disclaimer of TURKEY DINNER].

September 18, 2013 - 1:30 PM: In re Midwestern Pet Foods, Inc., Serial No. 85501978 [Refusal to register PEPPER'S POT ROAST for pet food, absent a disclaimer of POT ROAST].

September 18, 2013 - 2 PM: In re Midwestern Pet Foods, Inc., Serial Nos. 85128946 [Refusal to register EARTHBORN HOLISTIC for cat food, absent a disclaimer of HOLISTIC].

September 24, 2013 - 2 PM: In re Flexi-Van Leasing, Inc., Serial Nos. 853615663 and 85363291 [Section 2(d) refusal to register FLEXI-VAN for "Leasing of motor vehicles; Leasing of vehicles; Rental of motor vehicles; Rental of traction vehicle and trailers; Rental of vehicles; Vehicle rental” in International Class 39 on the ground of likelihood of confusion the registered mark FLEXI for "rental of land, air and sea vehicles"]. 

September 25, 2013 - 11 AM: In re Visionstar, Inc., Serial No. 85319715 [Section 2(d) refusal of MAXGAIN for "natural supplements for male enhancement" in light of the registered mark MAXIMUM GAIN for food, herbal, and other supplements].

September 25, 2013 - 2 PM: In re Beachbody, LLC, Serial Nos. 85779111 and 85779130. [Section 2(d) refusal to register BEACHBODY PRO TEAM and P90X PRO TEAM for educational services in the field of exercise equipment, physical fitness, diet and nutritional programs, in view of the registered marks FITNESS PRO TEAM & Design for Providing fitness and exercise facilities, PROTEAM and PROTEAM & Design for, inter alia, "fitness and weight training equipment, namely, weight benches, and exercise weights"].

September 26, 2013 - 11 AM: McDonald's Corporation v. McSweet LLC, Opposition No. 91178758 [Section 2(d) and 43(c) opposition to registration of MCSWEET for pickled vegetable products, in view of  Opposer's alleged "Mc-formative" family of marks].

Text Copyright John L. Welch 2013.