Lack of Bona Fide Intent Dooms Two "FUTURE" Applications, Says TTAB

The Board sustained these two oppositions to registration of the mark FUTURE, in standard character and stylized forms, for various services in classes 35 and 36, finding that applicant Kent G. Anderson lacked a bona fide intention to use the mark with the services as of the filing date of the applications. The class 36 services related to banking and finance, while the class 35 recitation encompassed services ranging from shopping malls and aircraft dealerships to talent agencies and dog breeding. Lincoln National Corporation v. Kent G. Anderson, Opposition Nos. 91192939 and 91194817 (February 21, 2014) [Re-designated as precedential on March 26, 2014].

In its 46-page decision, the Board concluded that Anderson was "merely attempting to reserve a general right in his FUTURE mark when he filed his intent-to-use applications." His "idealistic hopes for forming a futuristic company" (described at his website and in his testimony), did not suffice to establish a bona fide intention to use the mark.

The legislative history of Section 1(b) provided support for the Board's finding. It provides as an example of objective evidence that may cast doubt on an applicant's bona fides, the filing of "an excessive number of intent-to-use applications in relation to the number of products the applicant is likely to introduce." Although Anderson filed for many classes in each of the two applications here opposed, rather than filing a multiplicity of applications, the same reasoning applied: the sheer number of classes and their diverse scope led the Board to find it "highly unlikely" that Anderson would be able to introduce the class 35 and 36 services during the pendency of his applications.

There was no record evidence to show that Anderson ever had the capacity to provide any of the services in class 35 and class 36. He admitted same, testifying that if he had the resources and knowledge, he would provide the services. His efforts and activities regarding implementation of his plans for the FUTURE mark were too non-specific to support a finding of a bona fide intent.

And so the Board sustained the oppositions on the ground of lack of bona fide intent. The Board also sustained the oppositions, in part, on a Section 2(d) ground, which we will not discuss here.

With regard to the two opposed applications, nine classes remain in one and seven in the other.

Read comments and post your comment here.

TTABlog note:  Mr. Anderson has appeared twice before at this blog. In 2009, the Board affirmed a refusal based upon his failure to comply with a Rule 2.61 request for additional specimens for his mark TOMORROW, in classes 1 and 3 goods, because of the wide range of unrelated articles listed in his application. [TTABlogged here]. And in 2012, the Board applied collateral estoppel against Mr. Anderson and certain applications to register the FUTURE mark, based upon prior inter partes rulings against him. [TTABlogged here].

Text Copyright John L. Welch 2014.

TTAB Affirms Refusal of "4D" as Merely Descriptive or Deceptively Misdescriptive of Amusement Park Attraction

The Board affirmed the PTO's alternative refusals of the mark 4D for "entertainment services in the nature of an amusement park attraction, namely, a themed area featuring mirror labyrinths with rotating mirrors therein," finding the mark either merely descriptive or deceptively misdescriptive of the services under Section 2(e)(1). Applicant Amazing Mazes argued that, in common parlance, "4D" refers to special effects such as moving seats, water mists, or scents. But the Board found the meaning of the term to be not so limited, and if it were, then it misdescribes applicant's services. In re Amazing Mazes LLC, Serial No. 85122528 (February 25, 2014) [not precedential].

Mere Descriptiveness: Examining Attorney Ramona Ortega Palmer submitted evidence that the term "4D" in the entertainment industry means that an attraction includes special effects which, the Board found, would include "rotating mirrors" or special lighting. Particularly probative was applicant's use of the term in a descriptive sense in its own advertising: "One of San Antonio's newest attractions, Ultimate Mirror Maze will have you seeing double in an amusing 4D moving mirror maze experience." Moreover, applicant's specimen of use (depicted above) also serves to emphasize the descriptive nature of "4D."

The Board concluded that, when considered in the context of applicant's services, the term "4D" would be perceived by consumers as identifying or describing the special effects of rotating mirrors and lighting. Competitors in the field should be able to use the term "4D" when describing their own mirror maze or labyrinth.

Deceptive Misdescriptiveness:  Assuming for the sake of argument that the term "4D," as suggested by applicant, is perceived to refer to such special effects as water sprays, odors, shaking or sound and does not encompass rotating mirrors or special effects lighting, then the term misdescribes applicant's services because potential customers would expect such special effects.

Would consumers believe the misrepresentation to be true? Applicant argued that consumers would not because they would not expect special water or movement effects in an enclosed maze environment. The Board pointed out, however, that "4D" also includes odor, sound, or wind effects, which might be found in a maze. Consumers are therefore likely to believe that applicant's services would include some type of "4D" special effects typical of other "4D" amusement park attractions but absent from applicant's maze.

Therefore, since both prongs of Section 2(e)(1) had been satisfied vis-a-vis this refusal, the Board affirmed it as well.


Read comments and post your comment here.

TTABlog note:  If the misdescription were material to the purchasing decision, the term might also be refused as deceptive for the services under Section 2(a). The Examining Attorney did not make that refusal.

Text Copyright John L. Welch 2014.

Test Your TTAB Judge-Ability: Are These Two "WELLS" Logos Confusable for Frozen Confections?

Margverz, Inc. sought to register the mark shown below, left for frozen confections (among other things) [FRUIT CANDY disclaimed], but Examining Attorney Paul Moreno refused registration under Section 2(d), deeming the mark likely to cause confusion with the mark shown below, right for "frozen confections" [FAMILY COMPANY and SINCE 1913 disclaimed]. Applicant appealed. What did the TTAB decide? In re Magverz, Inc., Serial No. 85614128 (February 21, 2014) [not precedential].

Because the involved goods are, in part, identical, the Board must presume that these identical goods travel in the same channels of trade to the same classes of consumers. Magverz lamely argued that the goods are different because it uses its mark exclusively with sugar-free mints and confectionery products that are "vitamin enhanced," whereas the cited mark is used with frozen confections sold under the BLUE BUNNY BRAND. Irrelevant, said the Board. Its determination must be made based upon the goods identified in the application and cited registration, regardless of how the marks are actually used.

Next, Magverz feebly argued that WELLS is a weak term, citing eleven registered marks: SIMPLY WELL, WELLMADE, WELLABY'S, OPTIWELL, WELLTHY CHOCOLATES, MEDWELL FOODS, WEL CREAM DESSERTS, TEACH THEM WELL, SOY WELL, EAT WELL BE WELL, and OATWELL. The Board found two major problems with this evidence: (1) there was no proof as to whether these marks are in use or whether the public is familiar with them; and (2) none of the marks are as similar to the registered marks as is the applied-for mark. In fact, the commercial impression of each of the involved marks is the surname "Wells." The Board concluded that the strength of the registered mark is a factor favoring a finding of likely confusion.

Comparing the marks, the Board noted that when the goods are (in part) identical, a lesser degree of similarity between the marks is necessary to support a Section 2(d) refusal. Here, the board found, not surprisingly, that the word WELLS is the dominant portion of each of the marks. The other words in the marks are descriptive with little trademark significance, or generic. The design elements (primarily a round carrier and an oval carrier) merely serve as background designs for the word WELLS, which word projects the primary significance of each mark.

Magverz asserted that its mark has a "modern, cooler appearance," in contrast to the nostalgic look of the cited mark. However, the Board observed, customers for registrant's goods may view the applied-for mark as an update of the registrant's mark for its "Fruit Candy" line of products.

In sum, the Board found the marks to be similar in appearance, sound, connotation, and commercial impression. Balancing the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal.

Read comments and post your comment here.

TTABlog note:  Wells, how did you do? Do you think this is a WYHA? Why wasn't the article "A" disclaimed?

Text Copyright John L. Welch 2014.

Test Your TTAB Judge-Ability: Are Trade Association Services Related to Motor Oil?

Examining Attorney Doritt Carroll refused registration of the mark BLUE IS THE NEW GREEN for "trade association services, namely, promoting the interests of Pennsylvania independent oil and natural gas producers, marketers, service companies and related businesses," finding the mark likely to cause confusion with the identical mark, registered for "motor oils; lubricants for motor vehicles." Applicant PIOGA appealed. How do you think this came out? In re The Pennsylvania Independent Oil and Gas Association, Serial No. 85514044 (February 21, 2014) [not precedential].

Because the involved marks are identical, only a "viable relationship" between the goods or services need be shown to support a finding of likelihood of confusion. The goods/services need not be identical or even competitive, as long as they are related in some manner or that some circumstances surrounding their marketing would lead to a mistaken belief that there is an association between the providers thereof.

PIOGA's recitation of services may be read to include the promotion of the interests of those who produce any type of oil and of those related companies that market oil products, including "motor oils." Therefore, based on a plain reading of the application and cited registration, the involved services and goods are related.

As to channels of trade, registrant's motor oils may be promoted by applicant's trade association services. Moreover, consumers of oil, who purchase registrant's goods, are likely targets for PIOGA's promotional services.

As to consumer sophistication, the Board observed once again that "even sophisticated buyers are not immune to source confusion where, as here, the marks are identical."

Balancing the du Pont factors, the Board found confusion likely, and it affirmed the refusal.

Read comments and post your comment here.

TTABlog note:  Well, how did you do? Is this more of a case of reverse confusion, where the oil company is thought to be impinging on the trade association mark?

Text Copyright John L. Welch 2014.

Precedential No. 5: "Family of Marks" Doctrine Inapplicable in Ex Parte Context, Says TTAB

In this straightforward Section 2(d) affirmance, the Board took time to point out that the "family of marks" doctrine is inapplicable in an ex parte context. It upheld a refusal to register the mark OPTICROSS for "liquid chromatography apparatus and parts thereof," finding the mark likely to cause confusion with the registered mark OPTI for components of liquid chromatography systems. The Board found it unnecessary to consider six additional registrations for "OPTI-" formative marks (all seven registrations being members of the purported "OPTI" family). In re Hitachi High-Technologies Corp., 109 USPQ2d 1769 (TTAB 2014) [precedential].

The Examining Attorney retracted her reliance on the "family of marks" doctrine during reconsideration of the refusal of the applied-for mark. Nevertheless, the Board took the opportunity to point out that this doctrine is reserved for inter partes proceedings, because "establishing a 'family' of marks requires a detailed assessment of not just the registrations, but, more importantly, of how the 'family' is used in the marketplace." The mere existences of multiple registrations of similar marks doe not establish a family; there must be public recognition that the "family surname" (i.e., the shared characteristic) is perceived as a source indicator.

Our primary reviewing court has noted that “[r]ecognition of the family is achieved when the pattern of usage of the common element is sufficient to be indicative of the origin of the family. It is thus necessary to consider the use, advertisement, and distinctiveness of the marks, including assessment of the contribution of the common feature to the recognition of the marks as of common origin." J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d at 1891-92 (Fed. Cir. 1991).

Of course, such an assessment of marketplace usage is "usually beyond the scope of an ex parte examination."

Turning to the individual registrations, standing on their own, the Board found the OPTI registration to be the most relevant to the du Pont analysis, because if confusion is likely as to that mark, then the Board need not consider the other six registered marks [namely, OPTI-MAX, OPTI-MAX, OPTI-GUARD, OPTI-SOLV (two registrations), and OPTI-PAK, all for various components of liquid chromatography systems]. On the other hand, if confusion is not likely as to the OPTI mark, then the Board would not find it likely as to the other six marks.

Applicant Hitachi did not dispute that the goods of the application at issue overlapped with those of the OPTI registration. Consequently, the Board must presume that those overlapping goods travel in the same channels of trade to the same classes of customers. These factors weighed heavily in favor of a finding of likely confusion.

Because the involved goods are, in part, identical, a lesser degree of similarity between the marks is necessary to support a finding of likelihood of confusion. Hitachi's mark merely adds the word "CROSS," which has no apparent connotation in relation to the involved goods, to the cited mark.  

Hitachi argued that its mark should be viewed and pronounced as the telescoped mark of "OPTIC"+"CROSS" not "OPTI"+"CROSS." The Board, however, found that consumers are more likely to view and pronounce the mark as "OPTI"+"CROSS." In any case, the Board observed, there is not correct way to pronounce a mark. [What about BLACK CAT? APPLE? TTABLOG? ... okay, forget the third one. - ed.] The Board concluded that any differences in commercial impression between the two marks are outweighed by the similarities in appearance and sound.

Hitachi pointed to several third-party registrations for marks containing the term "opti," but they were too few in number to have probative value, and there was no evidence of record regarding the extent of use of those marks. Dictionary definitions of "opti" as connoting "the eye or vision," even if they demonstrated that the term is suggestive, did not "necessarily limit the scope of protection that should be accorded the Optimize OPTI mark."

Finally, Hitachi contended that the Board should consider the degree of care with which the goods are purchased. But Hitachi provided no evidence regarding the nature of the purchasing process, and in any event, the Board noted, even a careful, sophisticated purchaser when faced with identical goods offered under similar marks, is not likely to note the differences in the marks.

And so the Board affirmed the refusal to register.

Family of Marx
Read comments and post your comment here.

TTABlog note: Here is an old blog post on the "family of marks" doctrine.

Text Copyright John L. Welch 2014.

WYHA? "CHAMPION DENT CRAFT" Bumps Into "DENT CRAFT" and "CHAMPION AUTO STORES"

The application of Champion Dent Craft, Inc. to register the mark shown below [DENT disclaimed], for "repair of automobiles; repair of automobiles, namely, paintless dent repair," ran into a pair of Section 2(d) refusals. Examining Attorney Vivian Micznik First deemed the mark confusingly similar to the registered marks DENT KRAFTERS for "automobile body repair" [DENT disclaimed] and CHAMPION AUTO STORES for "maintenance of automobiles" [AUTO STORES disclaimed]. The Board affirmed the refusals. In re Champion Dent Craft, Inc., Serial No. 85698477 (February 19, 2014) [not precedential].

As to the services, applicant's "paintless dent repair" is legally identical to the "automobile body repair" of the first registration cited by Ms. First (i.e., the first First registration), because it is a subset thereof. Applicant's "repair of automobiles" is legally identical to the "maintenance of automobiles" of the second First registration. Third-party registrations and websites demonstrated that these services all may emanate from a single source under a single mark.

Applicant made a "feeble" attempt (Hey, that's my word! - ed.) to make a dent in the PTO's evidence by asserting that the services are distinguishable. It relied on extrinsic evidence in the form of a declaration from a person associated with applicant, claiming that applicant's services are rendered from a "mobile repair shop" and marketed to auto dealers in southwestern Virginia and southern West Virginia, whereas one registrant operates a repair shop in California and the other sells auto parts in Minnesota. Irrelevant! said the Board. There are no such limitations in the application or cited registrations, and applicant seeks nationwide rights, just as the registrations provide nationwide rights.

The legal identity or substantial similarity of the involved services required the Board to presume that the services are offered through the same channels of trade to the same classes of consumers. These factors weighed heavily against applicant.

Turning to the marks, the Board found that applicant's mark is "similar to" the DENT KRAFTERS mark. Acknowledging the inclusion of the word CHAMPION in applicant's mark, the Board nonetheless found that the essential identity of DENT CRAFT to DENT KRAFTERS outweighed any differences in the marks. In making this determination, the Board noted that the services are identical (and so a lesser degree of similarity between the marks is necessary to support a finding of likely confusion).

As to the second First-cited mark, the dominant portion is the word CHAMPION, since AUTO STORES is disclaimed. Notwithstanding its prior analysis, the Board noted that purchasers in general are inclined to focus on the first word in a mark, and here the first words are identical. In short, the marks are similar in sound, appearance, and meaning (with CHAMPION connoting the best or superior services). Consequently the marks engender similar commercial impressions.

Applicant pointed to ten third-party registrations for marks that include CHAMP, CHAMPION, DENT, or CRAFT, but absent proof of use and public familiarity with the marks, this evidence had little probative value. Applicant's asserted that the involved services are purchased by knowledgeable and discriminating customers, but the Board noted that the services would include inexpensive work, such as oil changes, fluid replacement, and body touch-up. Even if the purchasers were careful, the Board noted, careful purchasers are not immune from source confusion when confronted with similar marks for related services.

Finally, applicant averred that it was unaware of any actual confusion, but that statement deserves little weight in an ex parte context (where the registrant has no opportunity to be heard on the issue). Moreover, there was no evidence of the extent of use of the marks, so the Board could not determine whether there had been a meaningful opportunity for confusion to occur. [Note, too, applicant's assertions about geographical disparity - ed.].

Balancing the relevant du Pont factors, the Board found confusion likely and it affirmed the refusals, noting that any doubt in this regard must be resolved in favor of the prior registrant.

Read comments and post your comment here.

TTABlog note:  Do you think this was a WYHA? As to both refusals, or just one?

Text Copyright John L. Welch 2014.

Certiorari Petition Seeks Clarification of Preclusive Effect of TTAB Likelihood of Confusion Determination

On September 18, 2013, B&B Hardware, Inc. filed with the U.S. Supreme Court a petition for writ of certiorari (here), seeking review of the Eighth Circuit's decision in B & B Hardware, Inc. v. Hargis Industries, Inc., 106 USPQ2d 1660 (8th Cir. 2013). [TTABlogged here]. B & B 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 appellate court affirmed, in a split decision.

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.

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.

On January 13, 2014, the Supreme Court invited the Solicitor General "to file a brief in this case expressing the views of the United States." In its petition, B&B presents the following questions:

1. Whether the TTAB’s finding of a likelihood of confusion precludes Hargis from relitigating that issue in infringement litigation, in which likelihood of confusion is an element.

2. Whether, if issue preclusion does not apply, the district court was obliged to defer to the TTAB’s finding of a likelihood of confusion absent strong evidence to rebut it.

Read comments and post your comment here. Also see comments here on the Eighth Circuit ruling.

Text Copyright John L. Welch 2014.

WYHA? "ELISA B." Confusable With "LISA B." for Clothing, Says TTAB

The Board affirmed a Section 2(d) refusal to register ELISA B. for various clothing items, including sweaters and dresses, in view of the registered mark LISA B. for various clothing items, including sweaters and dresses. In its brief, Applicant Lipstik argued that, when considered as a whole, the marks are not aurally or visually similar. The Board disagreed. In re Lipstik, Inc., Serial No. 85663715 (January 22, 2014) [not precedential].

As to the overlapping goods in the application and cited registration, the Board presumed that they travel through the same channels of trade to the same classes of consumers. Of course, it is sufficient for Section 2(d) purposes that confusion is likely even as to one item in the application or registration. Therefore the second and third duPont factors favored a finding of likely confusion.

As to the marks, the Board agreed with Examining Attorney Dominick J. Salemi that the proper test is not a side-by-side comparison of the marks, but whether the average consumer, encountering the marks separately and retaining a general rather than a specific recollection of the marks, "would be likely to assume a connection between the parties." Of course, when the goods are identical, a lesser degree of similarity between the marks is needed to support a finding of likely confusion.

Here, the Board noted, applicant's mark incorporates the cited mark and simply adds the letter "E." That initial letter slightly distinguishes applicant's mark visually and aurally from the cited mark, but the Board found that distinction to be "minimal." "Considering the marks in their entireties, we find the marks are very similar in sight, sound, connotation, and overall commercial impression."

Weighing the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal.

Read comments and post your comment here.

TTABlog note:  Well, would you have appealed?

Text Copyright John L. Welch 2014.

WYHA? TTAB Affirms Mere Descriptiveness Refusal of ABDOMINAL ELEVATOR for Surgical Instruments

Mark A. Fisher appealed from the PTO's Section 2(e)(1) mere descriptiveness refusal of the mark ABDOMINAL ELEVATOR for "Surgical and medical apparatus and instruments for use in general surgery; Surgical devices and instruments; Surgical instruments and apparatus" [ELEVATOR disclaimed]. He argued that the mark is a double entendre because it suggests that, like the word "elevator" in "elevator speech," ABDOMINAL ELEVATOR "conveys the convenience and speed with which the abdominal area can be retracted and prepared for surgery." Mr. Fisher mentioned, but did not submit, his pending patent application [entitled "Abdominal Elevator"](see below). He lost. In re Fisher, Serial No. 85496960 (January 31, 2014) [not precedential].

Examining Attorney Sophia S. Kim relied on dictionary definitions of "elevator" ("a surgical instrument used to elevate tissues") and "abdominal" ("of or relating to the abdomen"). His patent application, he revealed, disclosed that the goods provide "an unobstructed view of the incision site along the abdomen for the medical staff." The Board concluded that the term ABDOMINAL ELEVATOR "immediately and directly tells relevant consumers that the goods are used to elevate abdominal tissue."

Fisher argued that consumers, without seeing his goods, would not know the meaning of "elevator" because the word has different meanings in different medical contexts: e.g., in dentistry, an "elevator" is a blade used to extract teeth. The Board noted, however, that the determination of mere descriptiveness is not a guessing game, but is made in the context of the identified goods. "In the context of the goods, consumers would understand 'elevator' in ABDOMINAL ELEVATOR to have the meaning of a surgical instrument or device used to elevate abdominal tissue."

Finally, Applicant Fisher pointed to the term "elevator speech," a term used in the business world to convey "that a speaker must convey relevant information to a listener within the time that it takes to ride an elevator," claiming that "elevator" means that his goods may be used in a "rapid, swift, instant or prompt" manner.

The Board, however, found that ABDOMINAL ELEVATOR does not have a clear meaning of convenience and speed. "In fact, it is not clear to us why the word ELEVATOR per se would connote 'speed,' nor is the word ELEVATOR the same as ELEVATOR SPEECH. When ELEVATOR is used in combination with ABDOMINAL it strains credulity that a consumer would understand ABDOMINAL ELEVATOR as having the meaning 'speed.'" Rather, "consumers would immediately understand, when seeing ABDOMINAL ELEVATOR in connection with applicant’s surgical apparatus and devices, that the goods elevate or lift abdominal tissue, and therefore the mark describes the purpose of the goods."

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog note:  It is not clear that the Board was aware of the title of Fisher's patent application, "Abdominal Elevator," nor his use of that term throughout the application to identify his invention, nor the wording of the patent claims, which begin, "An abdominal elevator comprising ...."

Text Copyright John L. Welch 2014.

TTAB Re-designates as Precedential Its Ruling that Section 18 is Available for Restriction of Color Mark to a Particular Shade

In an Order dated February 13, 2014, the Board re-designated as precedential the January 17th interlocutory ruling in Covidien LP v. Masimo Corporation, 109 USPQ2d 1696 (TTAB 2014) [TTABlogged here]. In that ruling, the Board denied respondent Masimo's Rule 12(b)(6) motion to dismiss this cancellation proceeding, ruling that a petition for restriction of a registration under Section 18 of the Trademark Act is a proper vehicle for restricting a registration of a color mark to a particular shade of that color.

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ALI Webinar Feb 19th: "Trademarks, Trade Dress and False Advertising: Recent Developments for Business and IP Lawyers"

Yours truly, aka the TTABlogger, teams up with Prof. Ken Germain in an ALI Webinar entitled "Trademarks, Trade Dress and False Advertising: Recent Developments for Business and IP Lawyers." When? Wednesday, February 19th, 3:00 - 4:30 PM, Eastern Standard Time. Registration here. [Note: this is a re-broadcast of the program originally presented on December 10, 2013].


Prof. Ken Germain

Business and IP lawyers who need to stay current with the recent trends in trademark, trade dress, and false advertising law should register today for this CLE program. Our faculty of experienced practitioners will give an overview of the latest developments, while focusing on decisions of the United States Supreme Court, United States Court of Appeals for the Federal Circuit, regional Courts of Appeals and the United States Patent and Trademark Office Trademark Trial and Appeal Board.

Topics include:

• recent federal registration decisions (fraud, proof of lack-of-bona fide intent)
• possible resuscitation of a dead “generic term”
• likelihood of confusion (consumer and non-consumer),
• distinctiveness of mark,
• sponsored links fair use and limits of nominative fair use
• equitable defenses (especially laches) and remedies
• and more!

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Test Your TTAB Judge-Ability on These Three Mere Descriptiveness Refusals

Three recent appeals from Section 2(e)(1) mere descriptiveness refusals are summarized below. How do you think they came out? Hint: they all came out the same way.


In re Schwartz, Serial No 85495793 (January 16, 2014) [not precedential]. [Mere descriptiveness refusal of MANAGE for "downloadable software for professional scheduling and appointment-keeping"].

In re Marino Felice SNC; Di Marino Ferdinando E Flavio, Serial No. 79113793 (January 27, 2014) [not precedential]. [Section 2(e)(1) refusal of ENKIR for flour and cereal preparations, and for beers and other beverages, all containing Triticum Monococcum or Einkorn, also known as Enkir].

In re Clic Goggles, Inc., Serial No. 85880648 (January 29, 2014) [not precedential] [Mere descriptiveness refusal of FRONT CONNECTION EYEWEAR for "eyewear"].

Read comments and post your comment here.

TTABlog note:  So how did you do? Are these all WYHAs?

Text Copyright John L. Welch 2014.

Test Your TTAB Judge-Ability On This Service Mark Specimen of Use

When applicant Sports Outdoor And Recreation sought to register the marks JETTE and X-RAY for "providing theme park services," the PTO rejected the specimen of use under Sections 1 and 45 of the Act, maintaining that the specimen (a one page advertisement, shown immediately below) did not show an association of the marks with the identified services. Applicant appealed. How do you think this came out? In re Sports Outdoor And Recreation (SOAR) Park, Serial Nos. 85108918 and 85108928 (February 10, 2014) [not precedential].

Click on picture for larger image
The examining attorney argued that the marks do not appear as source indicators for theme park services. Instead, consumers will view the terms as indicators for applicant's membership services. Applicant SOAR asserted that membership is essentially the purchase of tickets for the park (Morgan's Wonderland), and the membership package is an integral part of the identified services, embodying the intangible rights that are being exchanged when customers use the park services.

The Board noted that the specimen of use makes no reference to a "theme park." The examining attorney, however, conceded that "the exact nature of the services does not need to be specified in the specimen." Moreover, other wording on the specimen makes it clear that "what is offered is a place in which to play." The question, then, was whether the specimen of use shows a "direct association" between the marks and the "park."

The examining attorney argues that "Membership services are not theme park services…." However, the examining attorney does not explain what she means by “membership services,” nor does she explain the nature of the membership services that are supposedly offered by the advertisement. There is nothing else in the record to suggest that applicant is operating any kind of organized association, society, or other conventional type of membership organization.

The Board found that customers would understand the specimen as an advertisement for a park where one can play. In context, a "member" is a "customer," and the word “membership” is merely an alternative word for a package of admission tickets.

The marks JETTE and X-RAY are closely associated with the offered services: each appears a few lines above the offer of tickets to the park. In sum, the specimen advertisement demonstrates us of the subject marks as service marks.

And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlog note:  So how did you do? Do you think that "Jette Membership" and "X-Ray Membership" are unitary phrases?

Text Copyright John L. Welch 2014.

Updated List of TTAB Opposition Decisions on Appeal to the CAFC

There are currently pending  before the CAFC, eight (8) appeals from TTAB decisions in opposition proceedings. The cases are summarized below, with links to the pertinent TTABvue pages where the decisions may be found, as well as to the pertinent TTABlog postings, if any. [Appeal briefs and other papers may be found via PACER; Oral argument recordings may be found here, if any].

Oppositions:

Stone Lion Capital Partners v. Lion Capital LLP, Appeal No. 13-1353 (Opposition No. 91191681, January 18, 2013). [The Board sustained this opposition to registration of STONE LION CAPITAL for "financial services, namely, investment advisory services, management of investment funds, and fund investment services" [CAPITAL disclaimed], finding the mark likely to cause confusion with the registered marks LION and LION CAPITAL for various financial services [CAPITAL disclaimed]]. [Oral argument mp3 here].

StonCor Group, Inc. v. Specialty Coatings, Inc., Appeal No. 13-1448 (Opposition No. 91187787, June 22, 2012). [The Board dismissed this opposition to ARMORSTONE for "clear and pigmented coatings used in the nature of paint; Glazes; House paint; Interior paint; Mixed paints; Paint for concrete floors; Paint primers; Paint sealers; Paint thinner; Paints; Paints and lacquers; Pavement striping paint; Epoxy coating for use on concrete industrial floors," finding it not likely to cause confusion with the registered mark STONCLAD, STONHARD, and STONSHIELD for goods that include epoxy hardeners; and also finding the applied-for mark not merely descriptive of applicant's epoxy coatings].



Cutino v. Nightlife Media, Inc., Appeal No. 13-1541 (Opposition No. 91186025, April 25, 2013). [Dismissal of a Section 2(d) opposition to registration of NIGHTLIFE TELEVISION for "Video-on-demand transmission services, Internet broadcasting services, broadcasting services, namely, broadcasting programs over a global computer network to mobile telephones and computers, Satellite television broadcasting, and Television broadcasting," in view of the registered marks LONG ISLAND’S NIGHTLIFE (Stylized) [LONG ISLAND disclaimed] and NEW YORK'S NIGHTLIFE [NEW YORK'S disclaimed] for monthly magazines].

Implant Direct Int'l v. Clear Choice Holdings LLC, Appeal No. 14-1071 (Opposition No. 91190485, August 26, 2013) [The Board sustained this Section 2(d) opposition to registration of the mark REAL CHOICE, finding confusion likely with the registered mark CLEARCHOICE DENTAL IMPLANTS, both for dental implant services [DENTAL IMPLANTS disclaimed in the registered mark]. [TTABlogged here].

Nettadoz Enterprises v. Cintron Beverage Group, LLC, Appeal No. 14-1210 (Opposition No. 91200692, March 29, 2013). [The Board granted summary judgment to applicant Cintron on the ground that Opposer Nettadoz lacked standing to bring its oppositions to regsitration of the mark CINTRON (STylized) for beverages].

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

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

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

Read comments and post your comment here.

TTABlog note:  See any WHYA?s here?

Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability: Are BUFFALO and BUFFALO BUCKS Confusable for Gaming Machines?

Aristocrat Technologies sought to register the mark BUFFALO for "gaming machines, namely, devices which accept a wager," but Examining Attorney Giancarlo Castro refused registration under Section 2(d) in view of the registered mark BUFFALO BUCKS for "gaming machines and operating software that runs thereon." Aristocrat appealed, arguing that its games are slot machines whereas registrant's are bingo machines. Moreover it pointed to seven (7) existing registrations for marks containing the word BUFFALO for goods or services related to gaming (including its own registration for BUFFALO MOUNTAIN). How do you think this came out? In re Aristocrat Technologies Australia Pty Ltd, Serial No. 77753502 (February 4, 2014) [not precedential].

The Board found that applicant's goods are encompassed within the identification of goods in the registration: i.e., they are a sub-set of registrant's gaming machines. The Board therefore presumed that these goods travel in the same channels of trade to the same classes of consumers. Applicant contended that it manufactures slot machines and the previous owner of the cited registration sold only bingo machines - a different class of gaming. Irrelevant, said the Board: "It is well-established ... that we are bound by the identification as written in the registration and cannot limit registrant’s goods, channels of trade, or classes of customers to what any evidence shows them to be."

As to the marks, the Board observed for the zillionth time that, because the goods are in part identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. It found the word "Buffalo" to be the dominant portion of registrant's marks, both because of its prominence as the first word in the mark and because "bucks" has a descriptive connotation in connection with gaming devices.

Applicant lamely argued that, in use, the marks are displayed differently, but of course that was irrelevant, since the Board must consider these two standard character marks without reference to any style, color, font size, or other manner of use.

The Board concluded that the marks are similar in appearance, sound, connotation, and commercial impression.

Applicant maintained, without evidentiary support, that some of its customers are "regular and knowledgeable slot players" who are not likely to be confused, while others are only occasional slot players.The Board noted that "the standard of care is that of the least sophisticated purchaser" [Heaven help us! - ed.], and in any event, even sophisticated purchasers are not immune to source confusion.

Finally, on its last throw of the dice, applicant pointed to seven current registrations for marks containing the word BUFFALO, for goods or services related to gaming. Applicant argued that these registrations show that many BUFFALO marks can co-exist: namely, BUFFALO BILL'S RESORT & CASINO (in word and design forms), BUFFALO MOUNTAIN (owned by this applicant), BUFFALO THUNDER RESORT & CASINO and Design, PRIMM VALLEY CASINO RESORTS BUFFALO BILL'S PRIMM VALLEY WHISKEY PETE'S and Design, SENECA BUFFALO CREEK CASINO, and THUNDERING BUFFALO.

The Board found these registrations to be unpersuasive for several reasons. First, each of these marks (which include words in addition to BUFFALO) makes a commercial impression less similar to the cited mark than does applicant's mark BUFFALO. Second, these registrations do not show that BUFFALO has some descriptive or suggestive significance in the gaming field such that the word should be considered to be a weak formative. Third, there was no proof of the manner or extent of use of these marks, and therefore no basis on which to conclude that consumers distinguish these marks based on the differences in the marks. And fourth, each case must be decided on its own merits based on the record presented.

Balancing the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal.

Read comments and post your comment here.

TTABlog note:  So how did you do? Do you think this is a WYHA?

Text Copyright John L. Welch 2014.

Updated List of TTAB Cancellation Decisions On Appeal to CAFC

There are six (6) appeals currently pending before the CAFC from TTAB decisions in cancellation proceedings. The cases are summarized below, with links to the pertinent TTABvue pages where the decisions may be found, as well as links to the pertinent TTABlog postings, if any. [Appeal briefs and other papers may be found via PACER; Oral argument recordings may be found here, if any].

Cancellations:

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

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

C. & J. Clark International v. Unity Clothing Inc., Appeal No. 13-1542 (Cancellation No. 92049418) [Dismissal of a petition for cancellation of a registration for the mark UN & Design for various clothing items, predicated solely on the ground of fraud, in view of the lack of proof of Respondent's fraudulent intent in making admittedly false statements, at the time of filing the underlying application, regarding use of its mark in connection with some of the goods identified in its registration]. [TTABlogged here]. [Affirmed per curiam, April 9, 2014].

Chesapeake Marine Tours, Inc. v. Alcatraz Media, Inc., Appeal No. 14-1031 (Cancellation No. 92050879) [The Board ordered cancellation of a registration for the mark ANNAPOLIS TOURS for "conducting guided tours of historic districts and other areas of cities" on the ground of mere descriptiveness]. [TTABlogged here]. [Affirmed per curiam, May 13, 2014].

Terry v. Newman, Appeal No. 14-1036 (Cancellation No. 92047809). [The Board dismissed a petition for cancellation of a registration for the mark OPERATION RESCUE for "educational services, namely, providing classes, workshops, seminars, and personal instruction in the field of pro-life issues and social activism," ruling that the mark did not falsely suggest a connection with Petitioner Randall Terry because the mark did not uniquely and unmistakably point to Petitioner as of the time of registration]. [Affirmed per curiam, May 14, 2014].

Morris National, Inc. v. Adams & Brooks, Inc., Appeal No. 14-1224 (Cancellation No. 92052158). [The Board granted a petition for cancellation of a registration for the mark NUTFFLES for "chocolate and candy," finding a likelihood of confusion with the registered mark P-NUTTLES for "nut candies."] [TTABlogged here]. [Affirmed per curiam, September 17, 2014].

Read comments and post your comment here.

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

Text Copyright John L. Welch 2013.

Precedential No. 4: Section 18 Available for Restriction of Color Mark to a Particular Shade, Says TTAB

[TTABlog caveat: In this proceeding, petitioner Covidien is represented by yours truly]. The Board denied respondent Masimo's Rule 12(b)(6) motion to dismiss this proceeding, ruling that a petition for restriction of a registration under Section 18 of the Trademark Act is a proper vehicle for restricting a registration of a color mark to a particular shade of that color. Covidien LP v. Masimo Corporation, 109 USPQ2d 1696 (TTAB 2014) [precedential].

Covidien's application to register the color pink (Pantone PMS 806) for medical connectors and lead wires, was refused under Section 2(d) in view of Masimo's Supplemental registration for the color "red" for patient monitoring sensors and cables. Covidien then filed a petition under Section 18 to restrict the cited registration to the particular shade of red (Pantone PMS185) actually used by Masimo. Covidien alleged that such a restriction would avoid a likelihood of confusion.

Masimo moved to dismiss the petition under FRCP 12(b)(6), arguing that Covidien had failed to state a claim upon which relief can be granted. It urged that restriction under Section 18 is permitted only when the description of the mark in the registration is "ambiguous or overly broad," citing Wellcome Foundation Ltd. v. Merck & Co.., 46 USPQ2d 1478 (TTAB 1998). The Board, however, ruled that Wellcome "did not limit this type of § 18 claim in inter partes proceedings by requiring that the pleadings allege that an existing description of a registered mark is 'ambiguous' or 'overly broad.' [T]hose allegations are not the sole averments which can form a sufficient pleading."

The Board also reads § 18 as allowing for, and thus encompassing, relief where a plaintiff alleges that a feature of the description of the mark renders the description not specific to the mark actually used by the defendant.

Therefore, the Board ruled that Covidien's allegations were sufficient to state a claim. However, it required Covidien to amend its petition to comply with Rule 2.52(b)(1) by setting forth a more definite statement as to respondent's color, in ordinary language. [Covidien then filed an amended petition for cancellation, naming respondent's color as "fire engine red."]

fire engine red
Read comments and post your comment here.

TTABlog note:  The decision here appears to be the first case in which the Board has held that such a petition to restrict a color registration is proper. In In re Cook Medical Technologies LLC, 105 U.S.P.Q.2d 1377 (TTAB 2012) [precedential], involving teal and blue medical devices, the Board stated in dictum that Section 18 is available to restrict the color in a registered mark. [TTABlogged here].

Text Copyright John L. Welch 2014.

TTAB Declares Registration Void Because Services Not Rendered Before Filing of Use-Based Application

The Board granted Playdom Inc.'s petition for cancellation of a registration for the mark PLAYDOM for certain entertainment services, ruling that the registration was void ab initio because Registrant David Couture had not used the mark in the rendering of the services prior to filing his Section 1(a) application. Playdom, Inc. v. Couture, 113 USPQ2d 2042 (TTAB 2015) [not precedential].

In an application based on use in commerce under Section 1(a), the applicant must have used the mark in commerce with all listed goods or services as of the filing date. Section 45 provides that a service mark is in use in commerce "when its is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State." The display of the mark in the sale or advertising of the services does not alone constitute use of the service mark in commerce, absent rendering of the services.

In his discovery responses, Registrant David Couture stated that his "first customer is pending." In his discovery deposition testimony he stated that he has had one customer, to whom he rendered script-writing services in March 2010, nearly two years after his application filing date of May 30, 2008. He explained that, in filing the application, he thought that the offering of the services was sufficient to establish the he was rendering the services. [Petitioner dropped its fraud claim, perhaps because of this testimony - ed.]

The Board found from the evidence of record that Couture had not rendered any of the identified services as of the filing date of his application. He had "merely posted a website advertising his readiness, willingness, and ability to render said services." The Board therefore deemed the registration void ab initio and it granted to petition for cancellation.

Read comments and post your comment here.

TTABlog note: The Board also considered, alternatively, petitioner's abandonment claim, in case the void ab initio ruling is reversed. It found that Couture had abandoned his mark for some, but not all, of his services.

Text Copyright John L. Welch 2014.

TTAB Year in Review: Cal Bar Webinar, February 11 at Noon

Yours truly, the TTABlogger, will discuss recent TTAB developments at/on/in a webinar sponsored by the Intellectual Property Law Section of the California Bar, on Tuesday, February 11th, from noon to 1 p.m. Details and registration here (scroll down). Worth 1 Participatory MCLE Credit.

WYHA? TTAB Affirms Refusal to Register Phantom Mark

The Board affirmed a refusal to register the mark shown below for axles for vehicles," in which mark the "44 shown in brokes [sic] lines represents that any number with at least two digits may be used," on the ground that applicant was seeking to register multiple marks in violation of Sections 1 and 45 of the Trademark Act. In re Dana Limited, Serial No. 85447797 (January 30, 2014) [not precedential].

Applicant Dana admitted that its mark contained a "phantom" element, but argued that the mark should still be registered because (1) it is the legal equivalent of Applicant's prior registered marks, (2) the mark is "limited" in accordance with prior case law, and (3) PTO practice allows such a registration.

Dana's prior registrations covered the diamond design, or the design plus the word DANA, without any digits. The Board, not surprisingly, found none of the registered marks to be the legal equivalent of the applied-for mark.

Dana's argument that its mark was limited because it covered only two-digit combinations was belied by the description of the mark: "at least two digits may be used." This contrasted with the In re Dial-A-Mattress case, where the phantom element was a telephone area code, "of which ... there are limited possible combinations." The Board agreed with Examining Attorney Benji Paradewelai that "applicant’s proposed phantom mark makes an accurate search for conflicting marks impossible, and gives insufficient notice of applicant’s mark on the register."

As to the prior-PTO-practice argument, Dana pointed to registrations for the marks
NDA[], WEBSTRATEGIES---, ___COWLENDER, and SPL123X (the "123" representing phantom digits). The first two registrations, however, have been cancelled, and all four were issued prior to the relevant case law. The fourth registration is owned by Dana and includes a phantom element for a "part or model number consisting of two or three digits which vary depending on use of the mark," but the Board exorcised that argument by pointing out once again that every case must be decided on its own merits.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog note:  Did this applicant/appellant have a ghost of a chance? Put another way, was this a WYHA?

Text Copyright John L. Welch 2014.

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

There are currently ten (10) appeals pending before the CAFC from TTAB decisions in ex parte cases. They are summarized below, with links to the pertinent TTABvue pages where the decisions may be found, as well as to the pertinent TTABlog postings, if any. [Appeal briefs and other papers may be found via PACER; Oral argument recordings may be found here. if any].

Ex parte appeals:

In re Geller, Appeal No. 13-1412 (Serial No. 77940879, February 2, 2013) [Section 2(a) disparagement refusal of STOP THE ISLAMISATION OF AMERICA, for "providing information regarding understanding and preventing terrorism"].  [TTABlogged here].



In re Nordic Naturals, Inc., Appeal No. 13-1492 (Serial No. 77131419, March 27, 2013) [Refusals to register CHILDREN'S DHA for "nutritional supplements containing DHA" on the grounds of genericness and, alternatively, mere descriptiveness and lack of acquired distinctiveness, and further on the ground that applicant failed to enter a required amendment of the identification of goods to indicate that the goods are formulated for children].


In re The Newbridge Cutlery Co., Appeal No. 13-1535 (Serial No. 79094236, April 29, 2013) [Section 2(e)(2) refusal of NEWBRIDGE HOME as primarily geographically descriptive of silverware, jewelry, and kitchen goods [TTABlogged here].

In re Doctors Making Housecalls, Appeal No. 13-1553 (Serial No. 85324528, May 2, 2013) [DOCTORS MAKING HOUSECALLS deemed generic for “providing on-site medical services to patients at their homes, apartments, senior communities, offices, or other designated locations," and if not generic, then merely descriptive and lacking in acquired distinctiveness]. [TTABlogged here]. [Affirmed under Rule 36, March 10, 2014].

In re Louisiana Fish Fry Products, Appeal No. 13-1619 (Serial No. 77816809, May 24, 2013) [Requirement that applicant disclaim the term FISH FRY PRODUCTS in the mark LOUISIANA FISH FRY PRODUCTS BRING THE TASTE OF LOUISIANA HOME and Design, for "marinade; sauce mixes, namely, barbecue shrimp sauce mix; remoulade dressing; cocktail sauce, seafood sauce; tartar sauce; gumbo filé; and cayenne pepper"].

In re BabyCakes NYC, Inc, Appeal No. 13-1659 (Serial No. 85214746, July 23, 3013) [Section 2(d) refusal of BABYCAKES & Design for "retail bakery shops" in view of the registered mark BABYCAKES (Stylized) for staple foods, namely, doughnuts and bakery goods]. (Serial No. 85214746). [Appeal terminated on Appellant's motion, February 18, 2014].

In re St. Helena Hospital, Appeal No. 14-1009 (Serial No. 85416343, June 25, 2013) [Section 2(d) refusal to register TAKETEN for "health care services, namely, evaluating weight and lifestyle health and implementing weight and lifestyle health improvement plans in a hospital-based residential program," in view of the registered mark TAKE TEN! for "printed manuals, posters, stickers, activity cards and educational worksheets dealing with physical activity and physical fitness"].

In re Tam, Appeal No. 14-1203 (Serial No. 85472044, September 26, 2013) [precedential] [Section 2(a) disparagement refusal of THE SLANTS for a musical band]. [TTABlogged here].

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

In re Midwestern Pet Foods, Inc., Appeal No. 14-1272 (Serial No. 85128946 November 13, 2013) (Affirmance of refusal based on applicant's failure to disclaim the word "HOLISTIC" in the mark EARTHBORN HOLISTIC for cat food). [TTABlogged here].

Read comments and post your comment here.

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

Text Copyright John L. Welch 2013.