The Top Ten TTAB Decisions of 2013 [Part One]

For better or worse, yours truly, the TTABlogger, has once again chosen the ten TTAB decisions that he considers to be the most important and/or interesting from the previous calendar year. [This is the first of two posts, the first five entries being set out below. Additional commentary on each case may be found at the linked TTABlog posting]. The cases are not listed in order of importance, or in any particular order at all.



America’s Best Franchising, Inc. v. Abbott, 106 USPQ2d 1540 (TTAB 2013) [precedential]. [TTABlogged here]. In a rare, contested concurrent use proceeding, the Board awarded junior user ABF concurrent use registrations for the three marks shown below, for hotel and motel services, in the entire United States except for the State of Arizona. The Board ruled that although Roger Abbott was the first user of the mark 3 PALMS, his inaction over a considerable time amounted to an abandonment of his right to expand beyond his original trading area, “especially since ABF was the first to seek federal registration.” Abbott licensed his 3 PALMS mark to a single hotel in Scottsdale, Arizona, but he contended that Internet marketing had necessarily expanded his territory nationwide, or at least significantly beyond Arizona. Abbott first used his 3 PALMS mark in April 2004, whereas ABF began use in 2008 in Florida, unaware of Abbott’s use. It first learned of Abbott’s use in mid-2008 and subsequently reached service agreements with hotels in Indiana, South Carolina, Georgia, Michigan, and California. The question was whether confusion may be avoided by a geographic restriction, and the Board answered yes. It found that PALMS is a weak formative and that the localized nature of hotel services would make confusion unlikely between hotels in different locations. The fact that both parties advertise online did not mean that confusion was likely.

In re Florists’ Transworld Delivery, Inc., 106 USPQ2d 1784 (TTAB 2013) [precedential]. [TTABlogged here]. The Board affirmed two refusals to register the color black applied to packaging for flowers, finding the mark to be aesthetically functional under Section 2(e)(5). In In M-5 Steel Mfg. Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086 (TTAB 2001), the Board recognized that there are two forms of functionality: utilitarian and aesthetic. A design feature that does not meet the Inwood test for utilitarian functionality is still prohibited from registration if the exclusive appropriation of that feature would put competitors at a significant non-reputation related disadvantage. The Board agreed that the color black “serves an aesthetic function” when used for floral packaging; the evidence showed that color communicates particular messages in the presentation of flowers. The Board concluded that the PTO had demonstrated prima facie that competitors in the industry need to use the color black in connection with floral arrangements and flowers.

Central Garden & Pet Company v. Doskocil Manufacturing Company, Inc., 108 USPQ2d 1134 (TTAB 2013) [precedential]. [TTABlogged here]. In these complicated proceedings, Central Garden opposed Doskocil’s applications to register PETZILLA and DOGZILLA & Design, and petitioned to cancel Doskocil’s registration for DOGZILLA in standard character form, all for pet toys, claiming priority and likelihood of confusion with its twice-registered mark ZILLA for pet food and pet treats. The Board granted Doskocil’s first counterclaim for cancellation (improper assignment), dismissed its second counterclaim (likelihood of confusion), and dismissed Central’s oppositions and petition for cancellation (lack of priority). Central’s priority claim was based on the filing date of its intent-to-use application for ZILLA, but the Board, applying a strict construction of Section 10, concluded that the assignment of that application to Central’s own grandparent company violated that section, and therefore that the registration must be cancelled. With that, Central’s three likelihood of confusion claims failed. Doskocil’s Section 2(d) counterclaim against Central’s registration was a perfunctory, hypothetical claim and Doskocil argued at length that confusion was not likely, so the Board chose to “leave the parties as we found them, without reaching the merits of either party’s claim.”

City National Bank v. OPGI Management GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668 (TTAB 2013) [precedential]. [TTABlogged here]. The Board sustained a petition for cancellation of OPGI’s registration (issued under Section 44(e)) for the service mark TREASURYNET for “providing information on financial information, namely corporate treasury and loan information and commercial real estate property management information via a global computer network,” finding that OPGI had used the mark only internally and not “in commerce” and therefore had abandoned the mark. OPGI owns an intranet website whereby its employees may access an informational database identified as “TreasuryNet.” Third parties cannot directly access the information in the TREASURYNET database. OPGI relied on several decisions in which the provision of services to employees (administration of an annuity plan, in-house sales training) was deemed to be use of a mark in interstate commerce. The Board, however, pointed out that OPGI “is the real beneficiary and not its employees who are accessing the TREASURYNET database in order to perform their jobs.” The Board concluded that OPGI did not use TREASURYNET in commerce since at least the date of issuance of its registration, February 20, 2007, resulting in more than three years of nonuse and establishing a prima facie case of abandonment, which OPGI did not successfully rebut.

Embarcadero Technologies, Inc. v. RStudio, Inc., 105 USPQ2d 1825 (TTAB 2013) [precedential]. [TTABlogged here]. Prior to the close of discovery in this Section 2(d) opposition, Applicant RStudio moved under Rule 2.133 and Section 18 to narrow the descriptions of its software and related services in the opposed applications “in the event that the Board deems such amendments necessary to dismiss the opposition.” Applicant applied to register the mark RSTUDIO for goods and services identified in fairly broad terms, encompassing all types of statistical software and application development software, as well as training and design and development services. Its motion aimed to restrict its applications to the field of “advanced” statistical software using the “R” computer language and data from two dimensional datasets. Embarcadero alleged likelihood of confusion with its registered mark ER/STUDIO for “entity relationship modeling software for SQL databases.” The Board deferred ruling on the motion until final decision, ultimately finding that, taking into account applicant’s proposed amendments, there was no significant relationship between applicant’s software and services, as amended, and opposer’s software, and so it dismissed the opposition.


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Text Copyright John L. Welch 2014.