TTAB Grants Leave to Add Fraud Claim, If Adequately Re-pleaded

The TTAB denied the parties' cross-motions for summary judgment on the issue of abandonment in this cancellation proceeding. However, it granted petitioner's motion for leave to amend its pleading to assert a claim of fraud, provided that petitioner set forth its fraud claim with the particularity required by FRCP 9(b). [This case was the subject of a precedential interlocutory ruling in 2010]. [TTABlogged here]. SaddleSprings, Inc. v. Mad Croc Brands, Inc., Cancellation No. 92055493 (March 31, 2014) [not precedential].

Abandonment: SaddleSprings seeks to cancel Mad Croc's registration for the mark shown above, for alcoholic beverages. SS pointed to Mad Croc's admission that it has never sold alcoholic beverages under the subject mark and had no certification to sell such beverages.

Mad Croc contended that, although it did not sell alcoholic beverages to the consuming public, sales of the goods were made by its licensees - i.e., bars that prepare the CROC-TAIL brand alcoholic drink - according to respondent's guidance and instructions pursuant to verbal agreements with the licensees. Furthermore, since it did not itself sell alcoholic beverages, it did not need any governmental certification or permit.

The Board found that, at a minimum, a genuine dispute of material fact existed as to whether "proprietors in respondent's field of trade, as well as their respective customers, would perceive respondent's goods, i.e., CROC-TAIL brand cocktails, as goods in trade pursuant to the provisions of the Trademark Act."

Fraud: In its motion to amend the petition for cancellation, SaddleSprings sought to add a paragraph asserting that Mad Croc committed fraud on the USPTO by filing a Declaration of Use under Section 71, in which it attested to its continued use of the mark CROC-TAIL in commerce. The Board found the motion to be timely, but further found that the proposed allegations did not state a claim of fraud with sufficient particularity, as required by FRCP 9(b). Petitioner did not specify which statements made in the declaration of use were false or which were material or which were made with intent to deceive.

Nonetheless, because the Board liberally grants leave to amend pleadings when justice so requires, the Board granted the motion to the extent that it allowed SaddleSprings twenty days to serve an appropriately amended petition setting forth its fraud claim with the appropriate particularity.

The Board noted that its ruling was merely procedural, and did not mean that the fraud claim was meritorious.

Read comments and post your comment here.

TTABlog note:  I suspect this fraud claim will go nowhere.

Text Copyright John L. Welch 2014.

TTAB Affirms Section 2(e)(3) Refusal of KUBA KUBA BY DREW ESTATE for Cigars

The Board affirmed a Section 2(e)(3) refusal of KUBA KUBA BY DREW ESTATE, finding it to be primarily geographically deceptively misdescriptive of "cigars made with Cuban seed tobacco." In 2011, the Board affirmed a similar refusal of applicant's mark KUBA KUBA for cigars, tobacco, and related products, [TTABlogged here], and so applicant started (and ended up) behind the eight ball. In re Drew Estate Holding Company, LLC, Serial No. 77840485 (March 25, 2014) [not precedential].

The Board found that, on the issue of the primary significance of KUBA KUBA, the record contained substantially the same evidence as in the prior case. Therefore this Board panel agreed with the earlier panel that "when the term 'Kuba Kuba' is viewed in connection with cigars, for which Cuba is famous, the most likely meaning of the term would be a reference to the island nation of Cuba."

The addition of the phrase BY DREW ESTATE did not avoid the refusal because a Section 2(e)(3) refusal is appropriate even if only a part of the composite mark consists of primarily geographically misdescriptive matter. [E.g., NEW YORK WAYS GALLERY, PARIS BEACH CLUB].

Alternatively, applicant argued that its cigars do have an origin in Cuba, because Cuban seed tobacco has its origins in Cuba. The Board, however, snuffed out that argument, pointing to Board precedent referring to the phrase "cigars made with Cuban seed tobacco" as a marketing term used in this country to refer to tobacco actually grown outside Cuba that is "claimed to be grown from multi-generation descendants of seeds taken from Cuba more than fifty or sixty years ago." That "claim of distant descent" was found insufficient to support a finding that cigars made with Cuban seed tobacco come from or originate in Cuba. In short, tobacco grown and processed outside Cuba over many generations cannot replicate the qualities or characteristics of genuine Cuban tobacco.

As to consumer perception of KUBA KUBA as a geographically deceptive term, applicant offered no evidence or reason to believe that anything has changed in the three years since the earlier decision.

The Board also affirmed a refusal based upon applicant's failure to provide a specimen of use that matched the application drawing. In the specimen of use, the words KUBA KUBA are separated from the words BY DREW ESTATE by a considerable distance (see illustration above), and the Board agreed with Examining Attorney David C. Reihner that these phrases will be perceived by the consumer as two separate marks.

Read comments and post your comment here.

TTABlog note:  WYHA?

Text Copyright John L. Welch 2014.

Recommended Reading: Coleman and Price, Secondary Trademark Infringement

Jane Coleman's online treatise has now evolved into a book published by Bloomberg BNA, and co-authored by Ms. Coleman and Griffith B. Price, Jr., entitled Secondary Trademark Infringement. [Read more and purchase it here]. Coleman's blog, also called "Secondary Trademark Infringement," may be found here. [Back in 2009, I recommended her blog in this post].

As we know, secondary liability for trademark infringement means that someone other than the direct infringer may be held liable for infringement. The Lanham Act does not directly address claims of secondary liability. The doctrine has evolved as courts applied common law principles in various contexts. A large part of current contributory liability doctrine has grown of out of "flea market" cases, where the courts first extended contributory trademark infringement beyond the "supplies a product" context to flea market owners and operators whose vendors sold counterfeits products.

Secondary trademark infringement may take either of two forms: contributory or vicarious. Contributory liability was solidly established by the Supreme Court in Inwood Labs, Inc. v. Ives Labs., Inc., 456 U.S. 844 (1982). Vicarious liability employs the same principles in the agency context.

Coleman and Price cover it all, from the development and evolution of the doctrine to its application to flea markets, landlords, franchisors and franchisees, credit card companies, and the Internet. The book is dividend into five Parts: I. Introduction; II. Contributory Trademark Infringement; III. The Expansion of the Inwood Labs Standard to the Service-Provider Context; IV. Vicarious Trademark Infringement; and V. Remedies. A list of the chapter headings reflects the comprehensive scope of the work.

1. The Problem of Secondary Trademark Infringement
2. Contributory Liability Doctrine
3. The Elements of Contributory Liability Under Inwood Labs
4. Contributory Liability for Other Forms of Trademark Infringement
5. The Relationship between Secondary Trademark and Secondary Copyright Infringement Claims
6. Introduction: Contributory Trademark Infringement in the Service-Provider Context
7. Landlords
8. Franchisors and Franchisees
9. Trademark Infringement on the Internet
10. Credit Card Companies and Related Services
11. Vicarious Trademark Infringement
12. Remedies

This well-researched and well-written treatise - the only treatise focusing on secondary trademark infringement - deserves a place on your trademark library shelf.

Read comments and post your comment here.

Text Copyright John L. Welch 2014.

TTAB Affirms Section 2(a) Scandalousness Refusal of "FOK'N HURTS" for Stun Guns

The Board, not surprisingly, affirmed a Section 2(a) refusal to register the mark FOK'N HURTS for stun guns, finding the mark to be a vulgar slang form of .... guess what? Because this is a family blog, we won't go into great detail regarding the Board's reasoning, but instead will simply hit some of the high points. In re Murchison, Serial No. 85748810 (March 24, 2014) [not precedential].

The Board observed that the Office may prove scandalousness under Section 2(a) by showing that a proposed mark is vulgar. If there is no ambiguity regarding the meaning of the term, dictionary definitions may suffice to show that the term invokes a vulgar meaning to a substantial composite of the general public.

Dictionaries routinely label the word "fuck" and "fucking" as "usually obscene" or "usually vulgar." The term "fucking" is an extremely offensive expression used to emphasize what one is saying, often to show anger. The Board also took judicial notice of several dictionary definitions of "fuck," one of which dictionaries stated that the word still remains one of the most taboo words in English. [If I may interject a personal note, I'm still offended by Big Papi's vulgar (though much ballyhooed) reference to Boston as "our f***'in city" - ed.]

The evidence showed that "fok'n" is a slang alternative for "fucking." There was no evidence that the phrase "fok'n hurts," when used in connection with stun guns, would result in anything other than a vulgar meaning.

The record included pronunciation guides indicating that the letter "o" in "fok" would be pronounced like the "o" in "love." [Wow, you learn something new every day! - ed.]. In any case, the Board noted, there is no correct pronunciation of a trademark. [What about BLACK CAT? APPLE? TTABLOG? - ed.].

Applicant Murchison complained that Examining Attorney Benji Paradewelai employed a 1927 "mind set," whereas "[o]ur country is not the same as in 1927." She contended that she was being treated unequally when her mark is compared to a number of third-party marks that are registered: PUCK-IT; FRIGGIN and design; AIRSCREW, FRIG U; FUCHS and design; FREAKIN; FRICKIN'; SCREW*D; WTF; PROSCREW; and THE F WORD. The Board pointed out, however, that none of these registered marks include the term "fok'n," and none is as close to the terms "fuck" and "fucking" as is "fok'n" in overall commercial impression. In any event, each case must be decided on its own record evidence, and the Board is not bound by actions of examining attorneys in other applications.

Finally, the Board chastised applicant for her ad hominem attacks on the examining attorney, pointing out that all parties before the Board , including those appearing pro se, are required "to conduct their business with decorum and courtesy." See Rule 2.192.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: When I use the phrase "the F word" on this blog, I'm referring to fraud.

Text Copyright John L. Welch 2014.

Test Your TTAB Judge-Ability On These Two Mutilation Cases

Two days ago, the Board decided two cases involving refusals based on the Examining Attorney's conclusion that the mark as depicted in the application drawing was not, as required by Rule 2.51(b), a "substantially exact representation of the mark as used on the specimen." Let's see how you do with this recurring issue.

In re Louisiana Medical Mutual Insurance Company, Serial No. 85204125 (April 22, 2014) [not precedential], involved an application to register the mark shown above, consisting of the letters MI with a flourish above the letter I, for "educational services, namely, conducting online seminars in the field of insurance risk management." On the specimen of use, shown below, the mark included the word COMMUNITY within the letter "I":

In re Scheucher, Karl F., Serial No. 85529532 (April 22, 2014) [not precedential], concerned an application to register the mark SIPS in standard character form, for various goods in class 9. The specimen of use depicted the mark as follows, with the letters S-I-P-S serving as the first letters of the words "Scalable Intelligent Power Supply."

The question in each case was whether the applied-for mark (i.e., the mark shown in the drawing) created a separate and distinct commercial impression. If the applied-for mark is part of a single, unified design, then the removal of the portion is an impermissible mutilation of the mark as used.

Judge Anthony R. Masiello authored both opinions. In the first case, after reviewing several prior TTAB rulings on the mutilation issue, the Board found it significant that both MI and COMMUNITY are literal elements - i.e., they consist of letters or words. "When customers see letters and words in close proximity to each other, they will be inclined to try to make sense of them all together." MI COMMUNITY could, for example, be seen as suggesting the community of customers that applicant serves. Where there are such readily apparent meanings, consumers are likely to perceive the combination as a unitary mark.

Applicant argued that the Board should resolve any doubt in its favor, but cited no binding precedent for that principle. In any event, the Board did not consider this case to be a close one.

In the second case, the Board again noted that an applicant may apply to register any element of a composite mark that creates a separate and distinct commercial impression. But again the Board found that the applied-for mark is not a substantially exact representation of the mark as actually used.

If we consider only the large, boldfaced lettering on the specimen, we will, of course, see the letters SIPS. But that would require that we cast a blind – or at least myopic – eye on the remainder of the mark. The words “Scalable Intelligent Power Supply” are there and we cannot pretend that they are not. If we try to separate the bold-faced letters from the other lettering, we will have, on the one hand, SIPS, but on the other hand the unknown designations “calable,” “ntelligent,” “ower” and “upply.” No reasonable customer will perceive the mark on the specimen in this way ....

The Board concluded that the applied-for mark is a mutilation of the mark as actually used, and it therefore affirmed the refusal to register.

Read comments and post your comment here.

TTABlog note:  So how did you do? I think I would have reversed the second refusal.

Text Copyright John L. Welch 2014.

CAN DEW for Nutritional Drink Mixes Confusable With Pepsico's Famous DEW Mark, Says TTAB

In this second round of this feud between Pepsico and Jay Pirincci over the latter's applied-for mark CAN DEW, the Board sustained the opposition to Pirincci's class 5 goods ("nutritional drink mixes for use as a meal replacement in a can plastic or bottle") on the ground of likelihood of confusion with Pepsico's famous DEW mark for soft drinks. The Board declined to reach Pepsico's dilution claim. In the first round [TTABlogged here], the Board sustained the opposition to Pirincci's class 32 goods, but denied Pepsico's motion for summary judgment as to the class 5 goods. Pepsico, Inc. v. Jay Pirincci, Opposition No. 91187023 (April 14, 2014) [not precedential].



The Board's treated its findings made in its prior decision as the law of the case. Pirincci, appearing pro se, shot himself in the foot by submitting an unverified declaration as his testimony. The parties had stipulated that testimony by declaration was acceptable, but Pirincci failed to verify his statement, and so the Board refused to consider it.

Next, the Board denied Pepsico's motion to strike Pirincci's brief at final hearing because it was filed one day late. Although the delay was unjustified, it was minimal in duration, caused no prejudice to opposer, had little impact on the proceeding, and apparently was not the result of bad faith.

Moving to the merits of the case, the Board went farther than in its earlier decision, here ruling that Pepsico's mark DEW is also famous for soft drinks. It found applicant's CAN DEW mark to be highly similar to Pepsico's DEW mark, and found the involved goods to be related "to the extent that they are drinks (or mixes to make drinks) which might be nutritious." Moreover, the Board inferred from third-party registrations that consumers might assume that the involved goods emanate from a single source.

The consumers for the involved goods overlap, and the goods travel in partly identical channels of trade (e.g., drugstores, grocery stores, and supermarkets). And the goods are inexpensive and likely to be purchased with only ordinary care.

Balancing the relevant duPont, the Board found confusion likely, and it sustained the opposition regarding Pirincci's class 5 goods, on the ground of likelihood of confusion.

[A]lthough opposer has not shown on this record that the parties’ goods share an especially close relationship, its strong showing on the other relevant factors — including the opposer’s fame and the similarity of the marks — more than makes up for its somewhat weaker showing on the second du Pont factor.

Read comments and post your comment here.

TTABlog note:  The well-written, 48-page opinion in this case discusses a number of interesting points raised by the parties: Pirinnci's intent in adopting the mark, his reliance on a statement supposedly made by the interlocutory attorney regarding the due date for the final brief, the motivation of Pepsico in bringing the opposition, the inapplicability of "file wrapper estoppel" to the interpretation of the identification of goods, among others. The footnotes alone are worth a careful reading.

Text Copyright John L. Welch 2014.

Precedential No. 20: TTAB Affirms Mere Descriptiveness Refusal of TOURBILLON & Design for Jewelry and Watches

The Board affirmed a Section 2(e)(1) refusal to register the mark TOURBILLON & Design (shown below), finding it to be merely descriptive of "jewellery, horological and chronometric instruments." There was no doubt that the word TOURBILLON is descriptive of a feature or component of horological or chronometric instruments, but applicant Swatch maintained, without success, that the word does not describe jewelry, and further that the design portion of the mark is distinctive. In re The Swatch Group Management Services AG, 110 USPQ2d 1751 (TTAB 2014) [precedential]. [Affirmed per curiam by the CAFC, April 16, 2015].

Swatch stated in its application that the mark "consists of the term ‘TOURBILLON’ below a design of a 'tourbillon,'" and it disclaimed any exclusive right in TOURBILLON for horological and chronometric instruments (but not for jewelry). As described in Wikipedia:

In horology, a tourbillon ... is an addition to the mechanics of a watch escapement. Developed around 1795 by the French-Swiss watchmaker Abraham-Louis Breguet from an earlier idea by the English chronometer maker John Arnold a tourbillon aims to counter the effects of gravity by mounting the escapement and balance wheel in a rotating cage, to negate the effect of gravity when the timepiece (and thus the escapement) is stuck in a certain position.

The Board concluded that the word TOURBILLON is merely descriptive of jewelry because, the evidence showed, the category of "jewelry" includes watches. The fact that this reading of the term "jewelry" results in some redundancy in the identification of goods was of no concern, because "redundancy in identification does not limit or otherwise adversely affect the evidentiary value of a registration certificate."

As to the design element of the mark, the Board noted that a design that comprises merely an illustration of a product is unregistrable under Section 2(e)(1), just as merely descriptive wording would be. Examining Attorney Melissa Vallillo maintained that the design element (which Swatch described as a tourbillon) "is the legal equivalent of the wording TOURBILLON," and that "the design element in the mark features various parts commonly found in a tourbillon, with such parts appearing as they would in a tourbillon."

Wikipedia photograph
Swatch argued that the depiction in its mark is not an exact representation of its extremely intricate escapement, but rather is an abstract, highly stylized version. The Board, however, pointed out that the question is whether the design forthwith conveys an immediate idea of a feature of the goods and lacks any additional fanciful, arbitrary, or suggestive matter. "The fact that applicant’s design is not completely accurate, realistic or true-to-life does not exempt it from a finding of mere descriptiveness." Although the record showed "many subtle variations in the basic design of the device, it is clear that the design in applicant’s mark depicts a tourbillon and would be easily recognized as such."

third-party tourbillon
Considering the applied-for mark as a whole, the Board found that the combination of the design with the word TOURBILLON "reinforces the singular impression conveyed by the mark as a whole, which is nothing more than the significance of 'tourbillon.'"

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog note:  Maybe Swatch should rely on copyright to protect the design element of its applied-for mark. Or maybe it should file an application to register the mark for "jewelry, not including horological and chronometric instruments."

Text Copyright John L. Welch 2014.

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Precedential No. 19: TTAB Grants Bayer's Petition for Cancellation Of FLANAX Registration Under Section 14(3)

In a case of first impression, the Board granted Bayer's petition to cancel Belmora's registration for the mark FLANAX for "orally ingestible tablets of Naproxen Sodium for use as an analgesic," on the ground that the mark is being used by Belmora to misrepresent the source of its goods, in violation of Section 14(3) of the Trademark Act. The Board found that the record evidence "readily establishes blatant misuse of the FLANAX mark in a manner calculated to trade in the United States on the reputation and goodwill of petitioner’s mark created by its use in Mexico." Bayer Consumer Care AG v. Belmora LLC, 110 USPQ2d 1623 (TTAB 2014) [precedential].



Belmora's FLANAX
Because Bayer could not show use of the FLANAX mark in the United States, the Board, in a prior ruling, dismissed its claims of likelihood of confusion and fraud. Bayer Consumer Care AG v. Belmora LLC, 90 USPQ2d 1587 (TTAB 2009) [precedential]. [TTABlogged here]. That same ruling also dismissed Bayer's claim of violation of Section 6bis of the Paris Convention because the Paris Convention is not self-executing and does not afford an independent cause of action for parties in Board proceedings.

Standing: Belmora challenged Bayer's standing at every stage of the proceeding, pointing out that Bayer does not own a registration for the mark FLANAX in the United States, and has not used and does not plan to use the mark here. In short, Belmora asserted, no use means no trademark rights. Bayer responded that Section 14 of the Trademark Act imposes no use requirement, in contrast to  Section 2(d).

Bayer established ownership of a Mexican registration for the mark FLANAX for pain relievers, and that it licenses its corporate affiliate to sell the product under that mark in Mexico. FLANAX brand analgesic has been sold in Mexico since 1976 and ranks as the top-selling pain reliever in Mexico. The Board found that Bayer met the CAFC's liberal standard for standing because it established that "it has an interest in protecting its Mexican FLANAX mark."

If respondent is using the FLANAX mark in the United States to misrepresent to U.S. consumers the source of respondent’s products as petitioner’s Mexican products, it is petitioner who loses the ability to control its reputation and thus suffers damage. *** [T]he record in this case clearly establishes that the reputation of the Mexican FLANAX mark does not stop at the Mexican border.

Section 14(3) Under Section 14(3) of the Trademark Act, a party may petition to cancel a registration of a mark if the mark "is being used by, or with the permission of, the respondent so as to misrepresent the source of the goods or services on or in connection with which the mark is used." The petitioner must show that respondent took steps to deliberately pass off its goods as those of petitioner.

The Board observed that, "although the facts before us present a matter of first impression, they do not present a close case." It found that Belmora "knowingly selected the identical mark FLANAX, used by petitioner's Mexican licensee on naproxen sodium-based painkillers, for use in the United States on the same type of goods."  The Board pointed to the fabrication of documents by, and untruthful testimony of, Belmora's founder regarding the origin of its FLANAX mark, the substantial copying of the FLANAX logo and packaging used in Mexico, and perhaps most importantly Belmora's repeated invocation of the reputation of Bayer's FLANAX mark when marketing its own FLANAX product in the United States - which the Board deemed an admission that Bayer's FLANAX mark "is known among the U.S. retailers and Hispanic consumers to whom respondent markets its products."

Belmora asserted that, because its own name and not Bayer's appears on its product, it could not have misrepresented the source of the product. The Board disagreed.

Respondent .. need not use the Bayer name to affirmatively misrepresent the source of its FLANAX-brand products. Respondent purposely achieved the same result by not only copying petitioner’s mark and logo – and, for several years, significant aspects of its packaging – but also by repeatedly holding itself out as the source in the United States of the product sold for decades under the same mark in the bordering country of Mexico.

Finally, Belmora maintained that it changed its packaging and discontinued its attempts to link its FLANAX product to Bayer's product, but the Board found that, even if those assertions were true, Belmora's "continued use of the FLANAX mark, coupled with its earlier deceptive marketing over several years as it built its business, constitutes misrepresentation of the source of respondent’s goods within the meaning of Section 14(3)."

And so the Board granted the petition for cancellation.

Read comments and post your comment here.

TTABlog note:  Wow! What would happen if Bayer brought a civil action in an attempt to enjoin Belmora's use of FLANAX? The courts in the United States do not recognize the "well-known  mark" basis for relief (but see Grupo Gigante v. Dallo), so what claim would it have? What if Bayer started using FLANAX in the United States. Could Belmora stop it? And what if a third-party began using FLANAX?

Marty Schwimmer, my go-to guy on these inter-jurisdictional trademark use issues, provides his commentary here at the Trademark Blog, in a post entitled "Bayer v Belmora (FLANAX): Is This The First TTAB 'Reputation Without Use' Case?"

Suppose Bayer had filed an intent-to-use application for FLANAX in the United States. Could it then bring a likelihood of confusion claim under Section 2(d)? Compare Fiat Group Automobiles S.p.A. v. ISM, Inc., 94 USPQ2d 1111 (TTAB 2010) [precedential] [TTABlogged here], in which the Board held that a foreign owner of a famous mark, who has filed an I-T-U application, may oppose an application on the basis of dilution.

Text Copyright John L. Welch 2014.

PTO Publishes Precedential Director's Ruling Reversing Abandonment Refusals

For the first time in years, the USPTO has published a precedential ruling of the Director: In re P.T. Polymindo Permata, 109 USPQ2d 1256, 1257-58 (Dir. USPTO 2013), in which the Director, exercising supervisory authority under Trademark Rule 2.146(a)(3), reversed the holding of abandonment in two applications. The Director found that applicant had substantially complied with Rule 2.65(b) by providing unverified but otherwise acceptable substitute specimens in its requests for reconsideration and then the necessary verifications on petition.

The Director found no clear error in the examining attorney's deeming the applications abandoned when applicant failed to file complete responses to the final refusals. Applicant had submitted, with requests for reconsideration, substitute specimens but failed to include appropriate verifications. However, the Director ruled, applicant had substantially complied with the examining attorney's requirements and had made a good faith attempt to advance prosecution. The preferred course of action for the examining attorney would have been to allow applicant 30 days within which to provide the required verifications. See Rule 2.65(b) and TMEP 715.03(a)(2)(c). Moreover, with its petition to the Director, applicant provided accompanying declarations under Rule 2.20.

The Director therefore exercised her supervisory authority under Rule 2.146(a)(3) to grant the petitions. The applications were returned to the examining attorney for consideration of the substitute specimens and supporting declarations.

Read comments and post your comment here.

Text Copyright John L. Welch 2014.

Test Your TTAB Judge-Ability: Is "N2WINES" Merely Descriptive of Wine Sold in Kegs?

N2Wines applied to register the mark N2WINES for "wine sold in kegs," but the PTO refused registration under Section 2(e)(1). The examining attorney deemed the mark merely descriptive of the goods, maintaining that "N2" is the symbol for nitrogen, an inert gas used in connection with wine tapping systems. Applicant's own website stated that its wine is "pushed through a tap system similar to draft beer, by an inert nitrogen (N2) based gas blend." How do you think this came out? In re N2Wines LLC, Serial No. 85680969 (April 15, 2014) [not precedential].

The examining attorney also relied on Internet articles and advertisements referring to other wine tapping systems that use nitrogen to preserve and dispense wine. The applicant and the examining attorney were seemingly in agreement that N2 is a recognized symbol for nitrogen.

The Board, however, found that "N2" takes on a different meaning and will be perceived by consumers in a manner that is not descriptive. The record supported applicant's assertion that "N2 when used in N2WINES is a double entendre meaning 'into wines.'"

Examples of marks that have been found to be registrable double entendres include SUGAR and SPICE for bakery products, SHEER ELEGANCE for pantyhose, SHEER PERFECTION for makeup for legs, FAST'N EASY for pre-cooked meats, and HAY DOLLY for self-loading trailers for hauling bales.

Applicant submitted evidence of registered marks and domain names in which "N2" means "into": for example, Dance N2 Shape; N2 Pottery, N2 Learning, N2 Graphics, and N2WIN.

N2WINES is a double entendre meaning "into wines," which implies that consumers of applicant's goods are interested in wine. "It does not immediately convey an idea of any ingredient, quality, characteristic, feature, function, purpose or use of the goods, and thus is not merely descriptive of the goods."

The Board therefore reversed the refusal.

Read comments and post your comment here.

TTABlog comment:  Well, how did you do?

Text Copyright John L. Welch 2014.

TTAB Denies Motion to Strike Late-Filed Final Brief

In TTAB proceedings, the defendant sometimes gets confused as to when to file its brief at final hearing. Rule 2.128 says that the defendant's brief is due to be filed "not later than thirty days after the due date of the first brief." The first brief (i.e., plaintiff's brief) is due 60-days after the date set for the close of rebuttal testimony. If plaintiff's brief is served by mail, does defendant get an extra five days to file its brief under Rule 2.119(c)? No. Rule 2.119(c) is inapplicable to briefing deadlines. This point came to play in a recently ruling in Promark Brands Inc. and H.J. Heinz Company v. GFA Brands, Inc., Opposition No. 91194974. The Board, in this order, set a side the interlocutory attorney's order that had stricken defendant GFA's trial brief because it was filed six days late.

GFA mistakenly believed that Rule 2.119(c) applied, giving it five extra days to file its brief. Then it ran into problems e-filing its brief. It filed the brief at 11:10 p.m. Central Time, which was 12:10 a.m. Eastern Time. [ESTTA filing are subject to Eastern Time].

The interlocutory attorney granted Promark's motion to strike GFA's brief. GFA petitioned to the Director, which kicked the matter back to the Board for reconsideration of the interlocutory attorney's ruling. Meanwhile, GFA had requested oral argument and, in light of the order striking its brief, had asked for an extra 15 minutes to argue its case. [The case is set for oral argument at the Fordham IP Institute on April 25th (here)].

The Board noted that the time for filing GFA's brief was set by operation of Rule 2.128 and not by the date of service of Promark's brief, and so Rule 2.119(c) did not apply.

The Board looked to the Supreme Court's Pioneer decision (Pioneer Inv. Serv. Co. v. Brunswick Assoc. Ltd., 507 U.S. 380 (1993)), a five-to-four ruling, "which underscores that the question whether neglect of a matter is excusable is not easily or predictably answered." Such questions "necessarily must be left to resolution by exercise of the discretion of the Board."

The Board found no clear error in the interlocutory attorney's weighing the third Pioneer factor (the reason for the delay and whether it was within the reasonable control of the movant) heavily against GFA. Nor was there error in weighing the second factor (the length of the delay) "somewhat" against GFA.

Nonetheless, the Board may exercise its discretion to considered the additional circumstances that are "significant" in this case. The Board warned, however, that its ruling here is "based solely on the particular facts of the case, and should not be taken as an indication that a similar result would be attainable in another case that differs in any particular fact or circumstance."

The Board observed that having a full set of briefs prior to oral argument enhances the quality of the argument and may suggest issues that the Board panel should consider in its deliberations. Another factor concerned GFA's mistaken reliance on Rule 2.119(c). Similar mistaken reliance has occurred in other Board cases. The Board noted that the TBMP, in the section concerning the time for filing defendant's main brief, makes no reference to the inapplicability of Rule 2.119(c). [The Board suggested that a change to the Rules be considered, to incorporate clarifying language or cross-referencing regarding the interplay of these two Rules].

The Board therefore set aside the order striking Defendant GFA's brief. It denied the request for additional time for argument as moot.

Read comments and post your comment here.

TTABlog note:  Recently, in Pepsico, Inc. v. Jay Pirincci, Opposition No. 91187023 (April 14, 2014) [not precedential], the Board denied opposer's motion to strike applicant's brief that was filed one day late. Although the delay was unjustified, it was minimal in duration, caused no prejudice to opposer, had little impact on the proceeding, and apparently was not the result of bad faith.

Text Copyright John L. Welch 2014.

Machine Stand Configuration Lacked Acquired Distinctiveness, Says TTAB

The Board affirmed a refusal to register the product configuration shown below, for stands for industrial stirring machines, finding that applicant had failed to establish acquired distinctiveness under Section 2(f). The lack of "look-for" advertising calling attention to the "Z" shape was a major factor in the Board's decision. Netzsch-Feinmahltechnik GmbH, Serial No. 79100238 (March 25, 2014) [not precedential].

We know from Wal-Mart v. Samara Bros. that a product configuration cannot be inherently distinctive. To merit registration, the purported mark must have achieved acquired distinctiveness. In support of its Section 2(f) claim, applicant submitted marketing materials, advertisements and articles from trade publications, a declaration from a company representative, ten customer statements, and a copy of its registration for the mark ZETA.

The Board observed that, when prompted to look for the "Z" shape in applicant's design, one can recognize it, but nothing in applicant's marketing materials calls attention to the letter "Z" in any explicit way. The company declaration averred that the configuration had been in use since January 1997, and that applicant's products garnered a 35 to 40 percent share of the relevant market. But applicant's evidence did not show promotion of the specific stand configuration embodied in the applied-for mark, as opposed to touting the superiority of applicant's products in general.

The customer's declarations stated that they associated the alleged mark with applicant, but the declarations were insufficient in number to support a finding that the configuration serves as a trademark, particularly in view of the lack of look-for advertising. In short, the Board was "simply not persuaded by these statements that applicant has managed to create consumer recognition of this design as a source indicator."

The trade articles established that applicant is an industry leader, but lacking was any mention of the configuration of the goods, or that consumers associated the Z-shaped stand with applicant's products. These publications gave the Board no reason to conclude that applicant or its competitors use their product shapes as trademarks.

Finally, applicant's ownership of a registration for the word mark ZETA was of no help. Nothing in the record would lead one to conclude that the mark ZETA represents the same source indicator as the "fairly obscure, largely unmentioned shape of [applicant's] industrial milling stand."

Concluding that applicant had failed to establish acquired distinctiveness, the Board affirmed the refusal to register under Sections 1, 2, and 45 of the Trademark Act.

Read comments and post your comment here.

TTABlog comment:  Zzzzzzzzzzzz! Actually, this opinion was not that soporific. Only one Z.

Text Copyright John L. Welch 2014.

Precedential No. 18: Identity of One Party's Trial Witnesses Cannot Be Kept Secret from Other Party

Finding that Opposer Hunter Industries had established prior common-law rights in the mark PRECISION DISTRIBUTION CONTROL for irrigation sprinklers, the Board sustained its opposition to registration of the mark PRECISION for landscape irrigation nozzles and sensors on the ground of likelihood of confusion under Section 2(d). Perhaps more interesting than the Section 2(d) analysis were the Board's rulings on several evidentiary issues. Hunter Industries, Inc. v. The Toro Company, 110 USPQ2d 1651 (TTAB 2014) [precedential].

Evidentiary rulings: Hunter successfully moved to strike certain testimony and exhibits proffered by Applicant Toro. First, the Board excluded Toro's exhibits that were submitted on a flash drive because Rule 2.126 does not permit such submissions. The documents should have been submitted on paper or electronically via ESTTA. A CD-ROM containing two video files submitted by Toro was in acceptable form, since ESTTA is currently unable to accept video files. See, generally, TBMP Section 106.03.

However, the Board rejected the two video files because they had not been produced to Opposer Hunter during discovery. Toro did not dispute that the two videos fell within at least one of Hunter's production requests. Toro claimed that it produced the documents as soon as it discovered them, but it offered no reason why the videos were not found sooner.

Toro submitted seven declarations from distributors of irrigation equipment [the parties' ACR agreement permitted submission of testimony by way of affidavits or declarations]. Portions of the declarations were designated "Trade Secret/Business Confidential" under the Board's Standard Protective Order, as modified by the ACR agreement. Hunter moved to strike these declarations on the ground that Toro had over-designated as confidential the identifying information for the declarants. The Board agreed with Hunter.

A party’s right to confront an adverse witness is significantly impaired when it is prevented from knowing the name, employer and location of the witness. Although opposer’s counsel was privy to the redacted information, opposer itself practices in the relevant industry and likely is familiar with some or all of the witnesses or their employers. That kind of information may be critical when considering adverse testimony, and it generally should not be kept from a party.

Such identifying information may be protectable during discovery, but not when the individual is to be named as a witness. In short, when a party chooses to rely on the testimony of a witness at trial, that party has waived the protection provided by the Protective Order to trade secret/commercially sensitive information. The Board therefore struck the seven declarations from the record.

Priority: Applicant Toro relied on the filing date of its application, June 21, 2010, as its (constructive) first use date. Toro argued that its own mark PRECISION is suggestive, but that Hunter's mark is merely descriptive. However, the record did not sufficiently support a finding that Hunter's mark, in its entirety, is merely descriptive. In any case, Hunter presented ample evidence to show that the mark had acquired distinctiveness prior to June 21, 2010. It submitted proof of continuous use of the mark for its goods since 1992, and its sales figures and marketing expenditures were "appreciable."

Likelihood of Confusion: The Board found the word "PRECISION" to be the dominant and most significant feature of Hunter's mark, since "DISTRIBUTION CONTROL" clearly describes a precise feature of the sprinklers. Toro's mark PRECISION, the Board opined, would appear to prospective customers as a shortened version of Hunter's mark. Therefore the Board found the marks to be similar in sound, appearance, connotation, and commercial impression.

The Board found the goods to be identical in part, since the parties use their respective marks on rotating nozzles for irrigating lawns. The opposed application did not contain any limitation as to channels of trade or classes of customers, and so the Board assumed that Toro's goods moved in all the normal channels, and to all classes of purchasers, for those goods. Toro's channels necessarily overlapped with those of Hunter for its nozzles.

Hunter's mark PRECISION DISTRIBUTION CONTROL may be conceptually weak, but in light of Hunter's long use, sales, and promotion of the mark, the Board found that it is entitled to protection against registration of PRECISION for overlapping and closely related goods.

The Board recognized that purchasers for the involved goods are landscape contractors who will exercise a degree of care and deliberation in deciding to make a purchase. However, even sophisticated buyers are likely to view the subjects marks as indicating a single source when they are used on identical or closely related goods.

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

Read comments and post your comment here.

TTABlog comment:  I'm guessing that this opinion was deemed precedential because of the evidentiary rulings, rather than the rather straightforward Section 2(d) analysis. What do you think?

Text Copyright John L. Welch 2014.

Affirming Refusal, TTAB Says "HOURS OF ENERGY NOW" Not Being Used as a Trademark

The Board affirmed a refusal to register the applied-for mark HOURS OF ENERGY NOW for dietary supplements and "energy shots," because the phrase as it appears on applicant's specimens of use, fails to function as a trademark. In re Innovation Ventures, LLC, Serial No. 85637294 (March 25, 2014) [not precedential].

Of course, a phrase or slogan is not per se unregistrable, but it must serve as a source indicator to qualify as a trademark or service mark. The critical question is how the public perceives the purported mark.

Examining Attorney Won Teak Oh contended that consumers will not see the phrase as a trademark because it appears only in conjunction with other phrases touting the characteristics of the product.

The Board scrutinized applicant's specimens of use, observing that in two of them the phrase "Hours of energy now" appears as one of a series of "bullet points" providing informational text, in less prominent position than the mark 5-HOUR ENERGY. Third-party advertising evidence confirmed that consumers understand the phrase as providing information that the product is fast acting and long lasting. Contrary to applicant's argument, the PTO need not show that the phrase is in common, everyday use.

Applicant argued that, because the Examining Attorney had withdrawn a Section 2(e)(1) mere descriptiveness refusal, the phrase must be a merely suggestive mark. But that was a nonsequitur because the phrase was not functioning as a mark at all.

In sum, the Board found that the proposed mark, as used by applicant, "merely informs prospective purchasers that applicant’s products will provide an immediate boost of energy upon consumption and that the increased levels of energy will last for several hours." It is therefore "incapable of functioning as a trademark." [Incapable? Maybe not, if used in a proper manner - ed.].

Read comments and post your comment here.

TTABlog comment: The phrase on the specimen above has an asterisk at the end. What if that were a "TM"?

Text Copyright John L. Welch 2014.

TTAB Tosses Out Fraud Claim - Insufficient Proof of Intent to Deceive the USPTO

In this cancellation proceeding, petitioner claimed that respondent had committed fraud on the USPTO when if filed its Sections 8, 9, and 15 declarations in connection with its registration for the mark shown below (translated loosely as "lucky old wang"). The declarations were signed by one Kevin Zhang as "Owner," despite the fact that he did not own the registration. Petitioner, however, did not take the testimony of Mr. Zhang or anyone else, and it failed to prove that Zhang intended to deceive the USPTO. Consequently, the Board denied the petition for cancellation. Multi Access Limited v. Wang Lao Ji Food & Beverage subsidiary, Yangcheng Pharmaceutical Stock Corp. Ltd of Guangzhou, Cancellation No. 92054959 (April 4, 2014) [not precedential].

The Board observed, once again, that fraud must be proven "to the hilt." Proof of subjective intent to deceive, although difficult to obtain, is an indispensable element of the claim. Such intent may be inferred from indirect or circumstantial evidence, but the evidence must be clear and convincing.

Mr. Zhang, an attorney who worked in California for a Chinese law firm, was Respondent's domestic representative but was not authorized to practice before the USPTO. Petitioner's theory was that Zhang knew he was not the owner of the registration and knew that he was not authorized to sign the declaration on behalf of respondent. Therefore, Respondent urged, Zheng intended to deceive the USPTO into accepting the maintenance declarations. Petitioner did not question that the mark was in use; its only claim was fraud based on Mr. Zhang's calling himself "Owner."

The Board found that the record evidence "falls short of establishing that respondent is guilty of fraud."

In response to interrogatories, Respondent stated that it did not know why Zheng had called himself "Owner." Zhang had first-hand knowledge of use of the mark in the USA. Respondent had instructed Zhang's law firm to filed the combined Section 8 & 9 document, and had fixed its seal (equivalent to a signature in China).  Respondent believed that by placing the seal on the document it was giving proper authority to the signatory. As to the Section 15 declaration, Respondent responded similarly. Petitioner provided no evidence to dispute these assertions.

The Board pointed out that a person who is authorized to verify facts on behalf of a registration owner may sign such declarations. That person may also serve as domestic representative. The fact that Mr. Zhang was not authorized to practice before the USPTO does not disqualify him from signing a verification on behalf of the registrant.

The Board agreed with Respondent that Petitioner's fraud claim was "based on inferences that are too speculative." Although his statement that he was the "Owner" of the registration was false, there was insufficient evidence to prove that Zhang intended to deceive the USPTO. The Board noted that the "owner" section of each declaration listed Respondent as the owner of the registration.

The Board therefore denied the petition for cancellation.

Read comments and post your comment here.

TTABlog note:  I don't understand how Petitioner possibly thought it could prove fraud given the evidence and the current state of fraud jurisprudence. So this is a WYHP?

Text Copyright John L. Welch 2014.

Precedential No. 17: Is PERKS Generic For Volume Discount Buying Services? Merely Descriptive?

In a somewhat complicated, yet enervating brouhaha, Coach/Braunsdorf petitioned for cancellation of a registration for the mark PERKSPOT for discount buying program services, claiming likelihood of confusion with its registered marks PERKS, Perks, and PERKSCARD for volume discount buying services. Respondent counterclaimed for cancellation of the first and third of Petitioner's pleaded registrations on the grounds of genericness, and cancellation of the second on the ground of mere descriptiveness. In a 57-page opinion that seemed much longer, the Board denied the genericness counterclaim, upheld the mere descriptiveness counterclaim, and dismissed Petitioner's likelihood of confusion claim. Coach/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458 (TTAB 2014) [precedential].

Genericness counterclaim: The Board found the genus of Petitioner's services to be volume discount buying services. The relevant public comprised companies that purchase volume discount buying services for customers and employees, as well as individuals who join organizations offering volume discount buying services.

In determining how the relevant purchasers perceive the marks PERKS and PERKSCARD, the Board considered dictionary definitions, Petitioner's own use of the marks, and third-party use of the word "perks," including third-party registrations.

The dictionary evidence showed that a "perk" is an employee benefit that is additional to salary. Third-party use showed that the term "perks" has been extended to describe benefits provided to a person in order to induce him or her to enter into a commercial relationship, or provided as a reward to build loyalty.

A volume discount buying service is not, by its nature, a "perk." Neither PERKS nor PERKSCARD is the generic name of such a service. Although a volume discount buying service may be a "perk," not all volume discount buying services are "perks." For example, such a service may be offered to a customer other than as compensation for employment or as an inducement to enter into some other commercial relationship.

And so the Board dismissed the genericness counterclaim. [Note that at page 3 of the decision, the Board said that all three pleaded registrations were the subject of this counterclaim - ed.].

Mere Descriptiveness Counterclaim: Petitioner's registration for the mark Perks had already been cancelled for failure to file the Section 8 declaration of use, but because the parties had briefed the mere descriptiveness issue, the Board decided it. [The Board noted that Petitioner's registration for the mark PERKS was more than five years old when the petition for cancellation was filed, and so that registration cannot be cancelled on the ground of mere descriptiveness (See Section 14 of the Trademark Act)].

Petitioner asserted that the counterclaim to cancel the Perks registration was an improper collateral attack on its "incontestable" PERKS registration. The Board agreed that it appeared illogical to cancel the Perks registration while the PERKS registration cannot be attacked for mere descriptiveness. However, the Board pointed out, the "prior registration" or Morehouse defense is an equitable defense that is not available against a claim of mere descriptiveness. The public interest demands that registrations for marks that are merely descriptive be cancelled. Petitioner's prior registration would remain viable, but the newer registration, with a newer filing date and less than five years of existence, was not immune to a mere descriptiveness attack.

The Board then found that the term "perks" directly conveys information concerning a characteristic of Petitioner's services because the services are administered as "perks" programs. Consequently, judgment was entered in favor of Respondent on this counterclaim.

Likelihood of Confusion:  The Board next considered the likelihood of confusion issue vis-a-vis Petitioners' two remaining pleaded registrations, for PERKS and PERKSCARD. It found the involved services to be legally identical, and it therefore presumed that the channels of trade and classes of purchasers are the same.

As to the strength of the pleaded marks, the Board found that in terms of conceptual strength, the word "perks" is descriptive. The fact that the PERKS registration is "incontestable" means only that it cannot be challenged as invalid on the ground of mere descriptiveness. However, for purposes of a likelihood of confusion analysis, the mark can be considered descriptive.

The mark PERKSCARD is likewise descriptive because it describes a card used to obtain perks or benefits.

Given the weakness of the term "perks" in Petitioner's marks, the Board concluded that Respondent's mark PERKSPOT is sufficiently different from the marks PERKS and PERKSCARD to avoid a likelihood of confusion. And so the Board denied the petition for cancellation of the PERKSPOT registration.

Read comments and post your comment here.

TTABlog note:  Zzzzzzzzzzzzzz!

Text Copyright John L. Welch 2014.

Precedential No. 16: TTAB Orders Cancellation of Registration - Applicant not Owner of Underlying Foreign Registration

Petitioner SARL Corexco moved for summary judgment in this proceeding seeking cancellation of a registration for the mark BEARWW for "Internet based social networking and introduction services ...." Corexco claimed likelihood of confusion with its registered mark BEARWWW for "online social networking services," and further claimed that the application for the challenged registration was void ab initio because the original applicant (Respondent Webid's predecessor-in-interest) did not own a foreign registration which could have served as a Section 44(e) basis for issuance of the registration. The Board summarily granted the petition on the second ground. SARL Corexco v. Webid Consulting Ltd., 110 USPQ2d 1587 (TTAB 2014) [precedential].

Webid's Effective Admissions: Corexco's summary judgment motion hinged in part on Applicant Webid's effective admissions resulting from its failure to timely respond to Corexco's admission requests. Webid filed a cross-motion for leave to substitute its actual (belated) responses to petitioner’s requests. Webid pointed out that the parties were discussing settlement at the time Webid served its responses four days late. The Board exercised its discretion under FRCP 36(b) to allow Webid to substitute its responses to the requests for admission for the effective admissions.

Clearly, the parties’ settlement discussions contributed to the respondent’s delay in timely serving its answers. As noted above, there is a two-prong test for allowing withdrawal or amendment of admissions: The presentation of the merits of the action will be subserved thereby, and the party who obtained the admission fails to satisfy the court that withdrawal or amendment will prejudice that party in maintaining the action on the merits.

The Board concluded that the merits of the action will be subserved by allowing the amendment, since the effective admissions largely formed the basis for petitioner’s motion for summary
judgment. And Corexco will suffer no recognizable prejudice, since the case was still in the pre-trial stage and any potential prejudice could be mitigated by extending the discovery period.

Likelihood of Confusion: Corexco's motion for summary judgment on the ground of likelihood of confusion was based solely on Webid's admissions by default. Because Webid's responses were deemed amended, the Board denied the motion as to the Section 2(d) claim.

Lack of Proper Section 44(d) Basis: The original applicant (Respondent’s predecessor-in-interest, Ms. Leclercq), filed an application to register the BEARWW mark under Section 1(a) of the Trademark Act. On August 11, 2011, she  amended the filing basis to Section 44(e), relying on a Canadian registration for the mark.

In Webid's amended admission responses, however, it admitted that Ms.Leclercq never owned the Canadian registration, that on August 11, 2011, Webid was the owner of the Canadian registration, and that on that date Webid was not the owner of the U.S. trademark application.The Board pointed out that:

If an application is filed based on Section 1(a) or Section 1(b), and the applicant later amends the application to add or substitute Section 44 as a basis, the applicant must be the owner of the foreign application or registration as of the filing date of the amendment adding or substituting a Section 44 claim of priority or basis for registration. 

Webid admitted that Ms. Leclercq was not the owner of the Canadian registration at the time the amendment was made to the Section 44(e)basis. Therefore the application was deemed void ab initio, and the Board granted Corexco's motion for summary judgment on that ground.

Read comments and post your comment here.

TTABlog note:  I found the Board's reasoning and citations on the last issue to be very difficult to follow. Is this a case of first impression? I think it is, but it's hard to tell from the confusing citations. The Board cites to Rule 35(b)(1) as if it covered the situation, but that rule doesn't say much of anything.

What is the significance, if any, of the fact that Ms. LeClercq did not own the Canadian registration at the time the challenged registration issued? If she had owned it then, would that have solved the problem or would the application still have been void ab initio?

I found particularly unhelpful the use of the "cf." citation signal on pages 8 and 9 without adequate explanation of what point was being made.

Text Copyright John L. Welch 2014.

Precedential No. 15: TTAB Dismisses Opposition Under Rule 2.132(a) For Failure To Prosecute

In a less than scintillating but precedential ruling, the Board granted applicant Romance's Rule 2.132(a) motion to dismiss this opposition because Opposer Sterling Jewelers failed to prosecute the case. Sterling relied on its prior registration for the mark HEARTS DESIRE for fine jewelry, in claiming that the applied-for mark WHAT YOUR HEART DESIRES for jewelry was likely to cause confusion under Section 2(d). But Sterling took no testimony and offered no evidence other than a photocopy of its registration attached to the notice of opposition. Sterling Jewelers Inc. v. Romance & Co., Inc., 110 USPQ2d 1598 (TTAB 2014) [precedential].

Applicant Romance contended that Sterling's registration was not submitted in compliance with Rule 2.122 because it did not show the current status and title of the registration. Sterling maintained that Romance admitted in its Answer that Sterling is the "listed owner of record" for its pleaded registration, and consequently that Opposer Sterling may rest upon the prima facie case established by the registration. Alternatively, Sterling requested that the Board grant it leave to file "further evidence of the current status and title of its pleaded registration and provide any further evidence, as appropriate." [Fat chance of that! - ed.].

Romance argued that it did not admit that Sterling is the owner of the pleaded registration or that the registration is valid and subsisting, but only that Sterling is the "listed owner of record."

The Board promptly denied Sterling's request to submit further evidence, since it had "failed to argue or demonstrate that its failure to submit any evidence or take any testimony during its assigned testimony period was the result of excusable neglect." See Fed. R. Civ. P. 6(b),

As to the motion to dismiss, Trademark Rule 2.132(a) provides that "[i]f the time for taking testimony by any party in the position of plaintiff has expired and that party has not taken testimony or offered any other evidence, any party in the position of defendant may … move for dismissal on the ground of the failure of the plaintiff to prosecute."

The first question, then, was whether Sterling had proffered any evidence: i.e., whether its registration was properly placed into evidence. Rule 2.122(d) provides for the submission of a registration via several alternative routes, but attaching a mere photocopy of the registration to the notice of opposition is not one of them.

But what about the admission in Romance's Answer that Sterling is the "listed owner" of the registration? The Board refused to construe that admission as establishing Sterling’s current ownership of the registration. "[I]nstead, we view the admission, albeit somewhat ambiguous, as merely establishing that opposer is identified as the owner of the registration in the photocopy of the registration attached as an exhibit to the notice of opposition."

Because Sterling did not properly submit any evidence in support of its Section 2(d) claim, and did not establish that its registration is currently owned by it and is valid and subsisting, Sterling "failed to demonstrate its standing or that it is entitled to any relief under its asserted claim of likelihood of confusion."

And so the Board granted the motion to dismiss.

Read comments and post your comment here.

TTABlog note:  Somebody should have been reading the TTABlog!! The standing hurdle is so low that you have to work at tripping over it.

Text Copyright John L. Welch 2014.

USPTO Roundtable, April 11: Amendments to Identifications of Goods and Services Due to Technology Evolution

From the USPTO website: "As part of the Trademark Operation’s continuing series of roundtable discussions to gather stakeholder views on important issues, a roundtable discussion about USPTO’s practice regarding amendments to identifications of goods and services due to technology evolution will be held on Friday, April 11, from 2 - 3 pm. The session will be open to the public and webcast. The event will take place in the Madison Auditorium at the USPTO offices, located at 600 Dulany Street, Alexandria, Virginia 22314." Details here.

CITIAIR for Travel Agency Confusable With Famous "CITI" Family of Marks, Says TTAB

Making a rare finding that a party had established a family of marks, the Board sustained an opposition to registration of the mark CITIAIR & Design (shown below) for "travel booking agencies," finding it likely to cause confusion with Citigroup's family of "CITI" marks for banking, credit card, and related services. Citigroup Inc. v. Citiair, LLC, Opposition No. 91201920 (March 31, 2014) [not precedential]

Opposer relied on 23 CITI-formative marks,including CITITRAVEL, CITIRAIL, CITI, CITIBANK, CITIGROUP. It also claimed common law rights in the marks CITI SPECIALS, CITI CARDS, CITIBANK ONLINE, and CITI MILES (in design form). It alleged use of CITI marks in connection with certain third-party credit cards, and asserted ownership of thirteen vanity telephone numbers that included CITI.

Family of Marks: A family of marks is a group of marks having a common characteristic, that have been used in such a way that the public associates the common term (or "master") with the mark owner. Using a series of similar marks does not necessarily create a family. There must be recognition by the purchasing public that the common term indicates a common origin for the goods or services.

Citigroup contended that it has a family of CITI marks "in the sense that the 'master' mark CITI or another key family mark (e.g., CITIBANK) is used along with one or more CITI Marks in association with each other." The Board agreed. For example, a 2008 internet advertisement showed the word marks CITI, CITIBANK, CITIMANAGER, CITIDIRECT, and the CITI logo mark. A 1999 brochure displayed CITIGOLD, CITICORP, CITIBANK, CITICARD, and THE CITI NEVER SLEEPS. The Board found that opposer had used and advertised numerous CITI-formative marks in a manner to create common exposure and recognition. [So all you have to do is display all the marks on one page? That creates a family? - ed.].

Fame: Citigroup's revenues figures were staggering: for example, $13 billion for 2011. Its advertising expenditures were "extremely impressive." Brand-tracking studies showed high brand awareness. Media references indicated extensive public recognition and renown of the CITI and CITBANK brands. The Board concluded that the family of CITI marks [the entire family? - ed.] is famous for Section 2(d) purposes.

The marks: Applicant's mark "conforms to the format of opposer's demonstrated family of marks." The word "air" is at least highly descriptive of applicant's services and the design portion is "very highly suggestive" of same, and so the "Citi" portion is dominant in the applied-for mark. The Board concluded that this duPont factor favored a finding of likely confusion.

The services: Opposer's CITITRAVEL registration covers travel planning services and, and opposer offers discounts on airfare, hotels, and dining to its customers. Its credit card services have "numerous points of contact with travel services," including co-branding with airlines and hotels. The Board noted that opposer is not a travel agent, but these cross-marketing efforts have exposed consumers to many of the CITI marks in the context of travel services. Therefore, the Board found a "significant commercial relationship between opposer's business and applicant's identified services."

Other factors: The Board found that the ordinary channels of trade for "travel booking" services overlap substantially with opposer's advertising channels. As to customers, applicant argued that its target audience consists of "cost-conscious Indian consumers" who want "cheap airfare" between India and this country. That was irrelevant, however, since there were no such restrictions in the opposed application. Finally the Board found the potential for confusion to be substantial in view of the large scope of opposer's business.

Balancing the relevant duPont factors, the Board found confusion likely, and it sustained the opposition. It declined to reach Citigroup's dilution claim.

Read comments and post your comment here.

TTABlog note: Hardly a fair fight. Once Citigroup got the "fame" label, it was all over.

Text Copyright John L. Welch 2014.

Test Your TTAB Judge-Ability: Is "ÓGRA" (Irish Gaelic) Merely Descriptive of Beauty Care Services?

The PTO refused registration of the mark ÓGRA for "hygienic and beauty care for human beings" (Class 44), deeming the mark to be merely descriptive under Section 2(e)(1). The Examining Attorney applied the doctrine of foreign equivalents, maintaining that the Irish Gaelic word ÓGRA means "youth/young people." But that doctrine applies only to common, modern languages. Does Irish Gaelic qualify as a common, modern language in this country? In re Dunville Peat and Herbal Products Limited, Serial No. 79111854 (March 24, 2014) [not precedential].

The Examining Attorney has the burden to establish a prima facie case in support of a refusal to register. Under the doctrine of foreign equivalents, a foreign word and the English language equivalent may be considered descriptive - provided the foreign word is in a modern language familiar to an appreciable segment of American consumers. The doctrine, however, is a guideline not a rigid rule: it is applied only when it is likely that "the ordinary American consumer would 'stop and translate' [the term] into its English equivalent. If the consumer will take the term "as is," then the doctrine does not apply. [E.g., TIA MARIA for a Mexican restaurant not likely to be translated to AUNT MARY'S].

Irish or Irish Gaelic is "the Gaelic language of the Celts of Ireland, now spoken mainly along the west coast, an official language of the Republic of Ireland since 1921." There was no dispute that "ógra" is an Irish word meaning "young people; youths." The threshold question here was whether Irish is a common, modern language.

The Examining Attorney did not provide any of the usual evidence that addresses this issue: census data showing the percentage or number of U.S. consumers who speak the language, or evidence that the foreign country where the language is spoken is a prominent trading partner of this country, or evidence that the language is spoken by a sizeable world population. Instead, the record contained little of probative value: a retail website that offers "Irish (Gaelic) language learning materials" and a website concerned with learning the Irish language.

The evidence failed to establish that any number of ordinary American purchasers is knowledgeable in the Irish language: i.e., the number of such purchasers who would stop and translate the Irish word. Nor did it even disclose the number of people who speak Irish in Ireland.

In short, although Irish may be a common, modern foreign language, the Examining Attorney failed to introduced the type of probative evidence that would serve as a basis for the Board to make such a finding in this case.

And so the Board refused to apply the doctrine of foreign equivalents, and it reversed the refusal.

Read comments and post your comment here.

TTABlog note:  If a person fluent in Irish saw the word "ógra" in connection with the subject services, would that person "stop and translate" the term into English, or would he or she just understand the Irish term without translating it into English?

Text Copyright John L. Welch 2014.

Precedential No. 14: Junior User Awarded Concurrent Use Registration for Entire Country Except New Jersey and New York

This complicated, contested concurrent use proceeding involved an application to register the mark BOI NA BRAZA, in standard character form, for restaurant and bar services, with a geographic restriction claiming the entire United States except for the state of New Jersey. Defendant Terra Sul, named as the exception to plaintiff's exclusive rights, claimed that it had used its mark CHURRASCARIA BOI NA BRASA in New Jersey, New York, and elsewhere and that plaintiff BNB's mark should be denied registration or restricted to plaintiff's three areas of actual use: Dallas, Atlanta, and Cincinnati. The Board ruled that plaintiff BNB was entitled to a concurrent use registration for the entire United States, except New Jersey and New York. Boi Na Braza, LLC v. Terra Sul Corporation a/k/a Churrascaria Boi Na Brasa, 110 USPQ2d 1386 (TTAB 2014) [precedential].

Plaintiff BNB owned a registration for the BOI NA BRAZA mark, but it was cancelled in 2009 on the ground of likelihood of confusion with Terra Sul's previously-used mark. BNB still owned an "incontestable," geographically unrestricted registration for the mark BOI NA BRAZA in the design form shown immediately above, for restaurant and bar services. Because that registration was claimed by the plaintiff in the subject concurrent use application, it was included in this proceeding. See TBMP Section 1104.

There are two conditions precedent to the issuance of concurrent registrations: (1) that the parties are presently entitled to concurrently use the mark in commerce, and (2) there is no likelihood of confusion, mistake, or deception in the marketplace as to the source of the goods. In addition, a party who claims concurrent rights must have commenced use of its mark prior to the filing date of any application owned by the conflicting claimant to the same mark or to a mark likely to cause confusion. The applicant/plaintiff has the burden of proof to demonstrate its entitlement to a concurrent use registration.

Plaintiff BNB claimed that it first used its mark in 1999, in good faith and without knowledge of Terra Sul's use, prior to the filing dates of any of Terra Sul's applications. Therefore it met the "jurisdictional requirement" for a concurrent use proceeding, and BNB was entitled to use its mark in its own geographical area of use. There remained in dispute the rights to the remainder of the United States.

The next question was whether, with an appropriate geographical restriction, likelihood of confusion could be avoided. The Board concluded that the answer was yes.

The parties had already co-existed for 15 years without credible evidence of actual confusion, and that fact weighed heavily against a finding that confusion would be likely in geographically restricted territories. Furthermore , the Board and other tribunals "have often found that confusion can be avoided when restaurant services in particular are offered under identical marks but in geographically restricted territories." Moreover, by definition, restaurant services are rendered in particular geographic locations.

Although the parties' advertising overlapped, that did not change the Board's conclusion, nor did the fact that both parties have a presence on the Internet, because in this case the overlap in advertising was minimal.

The Board then turned to the issue of the territory to which each party was entitled. Actual use in a territory is not necessary to establish rights in that territory. And as a general rule, a prior user of a mark is entitled to a registration covering the entire United States, limited only to the extent that the junior user can establish that no likelihood of confusion exists and that it has concurrent rights in its actual area of use plus its area of natural expansion. However, this presumption may be overcome if a senior user "remains static" and the junior user is the first to file for registration.

In other words, there is a policy of encouraging prompt registration of marks, and the concurrent use provision of Section 2(d) exhibits no bias in favor of the prior user.

Moreover, this case presents the unusual circumstance in which the plaintiff/applicant owns an "incontestable registration" for a composite mark that incorporates the term BOI NA BRAZA. Pursuant to Sections 15 and 33(b)(5) of the Trademark Act, use of such a mark cannot be challenged on the basis of prior rights and likelihood of confusion. A prior user normally may carve out of an incontestable registration only "the specific areas in which it has established its prior rights prior to actual or constructive notice of said registration." [This is a rare circumstance in which the "incontestable" status of a registration has some importance in a TTAB proceeding - ed.].

Since the first use of their mark in 1996, Terra Sul and its predecessors never expanded beyond their Newark, New Jersey neighborhood. BNB, the first to file an application, offered restaurant services in three cities geographically remote from one another and from Terra Sul. Although Terra Sul provided its services in New York to a limited extent, there was no evidence of use or promotion targeted to New York prior to its receipt of constructive notice of BNB's (now-cancelled) registration. Nonetheless, the record evidence suggested that Newark is a neighbor near enough to New York to draw customers from New  York City (who must traverse nearly 10 miles, three river crossings (including the Holland Tunnel), and Jersey City to reach Newark's Ironbound neighborhood.) The Board concluded that "the New York's restaurant scene's embrace is sufficiently broad to reach Newark" (based on inclusion of Terra Sul's restaurant in the Village Voice "best of nyc 2006" and evidence that some of its customers live in New York). [BNB had moved, in the alternative, to restrict the subject application to exclude New Jersey and New York].

The Board concluded that BNB is entitled to a nationwide registration, but excluding New Jersey and New York. And it stated that Terra Sul may elect to amend its two pending applications to include a concurrent use statement limiting its registration rights to New Jersey and New York.

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TTABlog note: Is there such a thing as an "incontestable registration?" See Section 15 of the Trademark Act, which speaks of incontestability in terms of "exclusive right to use," not "registration."

Text Copyright John L. Welch 2014.