TTABlog Job Posting: Skilled, Experienced TM Attorney, Former Examining Attorney, Seeks New Position Preferably in DC Area

I am pleased to post this notice on behalf of a friend of mine who is the most knowledgeable person I know when it comes to trademark prosecution issues:

Trademark attorney with 10+ years of large firm and USPTO experience (Examining Attorney) seeks position with a firm or corporation where there is potential for advancement. Primarily looking in Washington, DC area, but would relocate for the right position. Would also consider a telecommuting situation. Small-but-growing book of business. Additional information available upon request. Please contact the TTABlogger at "jwelch at lalaw dot com" for an introduction.

Precedential No. 24: Finding Pepper Sauce and Agave Sweetener Related, TTAB Affirms 2(d) Refual of "CHANTICO & Design"

The Board affirmed a Section 2(d) refusal to register the mark shown immediately below, for "condiment, namely, pepper sauce" [PEPPER SAUCE disclaimed], in view of the registered mark CHANTICO for "agave sweetener." It found the marks to be confusingly similar, the involved goods to be complementary and purchased with only ordinary care, and the channels of distribution similar. In re Gina Davia, 110 USPQ2d 1810 (TTAB 2014) [precedential].

The marks: Not surprisingly, the Board deemed the dominant portion of applicant's mark to be the word CHANTICO. Applicant Davia contended that the serpent design is the most visually prominent and conspicuous feature of her mark, but the Board saw the snake design as creating a visual focus to the word. Moreover, the design is so stylized that it will not be immediately recognized as a serpent. [When I noticed it, I thought it was the head of a flying monkey from the Wizard of Oz - ed.]. Consumers will more readily recall the word portion of the mark, and that is what they will use to call for the goods.

Because the cited mark is in standard character form, the Board must consider the registered mark as if used in the same style or font as that used in applicant's mark. The meaning of the word CHANTICO is the same for both marks: the name of an Aztec goddess. Those unfamiliar with that meaning will see the marks as the same arbitrary term.

The mark CHANTICO is conceptually arbitrary and strong as applied to the involved goods. and there was no evidence of third party usage of the same or similar marks that might indicate that the cited mark is commercially weak.

The goods: The Board found the goods to be "functionally related:" pepper sauce and agave sweetener are commonly used together, and such conjoint use is relevant to the likelihood of confusion issue. Examining Attorney Marcie R. Frum Milone submitted web pages showing that the two products are often called for in the same recipes. Of course, there is no per se rule that all food products appearing in the same recipe are related for Section 2(d) purposes.

If two ingredients, however, are found to be complementary in that they are sold in the same stores to the same consumers for the same, related or complementary end use, consumers are likely to be confused upon encountering the goods under the same or similar marks even though the goods may be found in different areas within a store.

Here, the evidence showed that pepper sauce and agave sweetener are often blended together to provide a combination of sweet and hot flavors. The evidence also showed that consumers are likely to encounter one product while purchasing the other. Because the products appear in the same recipes, consumers are likely to purchase them at the same time and in the same store.

In sum, the Board found the goods to be related in the mind of the consumer.

Channels of Trade and Purchaser Care: There were no restrictions on channels of trade for the goods in the involved application and cited registration, and so the Board presumed that the goods travel in all ordinary channels of trade to all relevant classes of consumers. The evidence was inconclusive as to the ordinary channels of trade, however, but it did show that consumers may purchase both products through, at least, online grocery stores, and may use both in a single recipe. Thus the classes of customers are the same.

Both pepper sauce and agave sweetener are relatively inexpensive products that would likely be purchased "without much care" by the general public. Applicant argued that her customers are discriminating and brand loyal, but there was no evidence to support that assertion. In any case, the determination of likelihood of confusion must be made with the least sophisticated potential purchaser in mind. [God help us! - ed.]

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

Read comments and post your comment here.

TTABlog note:  Never mix, never worry, I always say, if you want to avoid confusion.

Text Copyright John L. Welch 2014.

Precedential No. 23: CHANEL for Real Estate Services Dilutes Famous CHANEL Mark, Says TTAB

The Board sustained Chanel, Inc.'s opposition to registration of the mark CHANEL for "real estate development and construction of commercial, residential and hotel property," finding the mark likely to cause dilution-by-blurring of opposer's famous CHANEL mark. Applicant Jerzy Makarczyk, appearing pro se, agreed to proceed under the Board's Accelerated Case Resolution ("ACR") regime, following the "summary judgment model." [See TTABlog post here]. He neither filed a brief nor submitted any testimony or evidence. Chanel, Inc. v. Jerzy Makarczyk, 110 USPQ2d 2013 (TTAB 2014) [precedential].

Fame and Distinctiveness: Chanel established that it began using its mark in the United States in the 1930s. It submitted 15 registration for the CHANEL mark, for perfume and cosmetics, jewelry, clothing, handbags, sunglasses, watches, keychains, leather goods, and retail store services. Its annual sales figures are "extremely high," and advertising expenditures are in the tens of millions of dollars per annum. Chanel's website receives millions of visits per year, and celebrities from Marilyn Monroe to Brad Pitt have endorsed its products or have appeared in opposer's advertising.

The CHANEL mark has consistently been ranked as one of the most recognized and famous brands in the United States. Its products have won numerous industry awards. Survey evidence demonstrated that the mark is "extremely well known and enjoys an unusually high degree of unaided and aided recognition." Moreover, those surveys were commissioned prior to the commencement of this proceeding and were used in the ordinary course of business, making them even more probative.

Opposer’s consistent history of U.S. advertising on multiple platforms such as print and social media, its extremely high sales figures and its high degree of unsolicited media attention and unaided consumer recognition, support the finding that CHANEL enjoys widespread recognition among the general public and is a “household name” synonymous with high fashion and style for the products and services identified in its pleaded registrations, and is therefore famous for dilution purposes.

The Board also found that the CHANEL mark is distinctive. Although some of opposer's registrations were issued under Section 2(f), the record evidence established that the mark has acquired distinctiveness and therefore is "distinctive" within the meaning of Section 43(c).

Applicant's use: Because the opposed application was based on actual use, opposer was required to show that applicant's use of his mark was likely to cause dilution. Here, Chanel did not provide evidence that applicant was using his mark, but the Board ruled that in proving applicant's use, opposer may rely on either direct evidence or on "the application filing date as the date of constructive use." [I find the Board's discussion of the "use" issue to be muddled at best and confusing at worst - ed.].

When famous? A dilution claimant must also show that its mark became famous prior to applicant's first use date (here, his filing date of April 17, 2012). The Board found it well-established that the CHANEL mark became famous before that date.

Will blurring occur? Dilution-by-blurring occurs when "a substantial percentage of consumers, when seeing the junior party's use of a mark on its goods or services, are immediately reminded of the famous mark and associate the junior party's use with the owner of the famous mark." Moreover, that association must "impair" the distinctiveness of the famous mark.

The Board then considered the six non-exhaustive factors set forth in Section 43(c)(2)(B)(i)-(vi). It found the involved marks to be (not surprisingly) identical, opposer's mark CHANEL to be highly distinctive, opposer's use of its mark to be substantially exclusive, and consumer recognition of opposers' mark to be high. The Board further found that applicant intended to trade on the fame and goodwill of the CHANEL mark, as evidence by statements on his website. Finally, the Board found the sixth factor (any actual association) to be neutral.

As to the issue of impairment, the Board observed that, although opposer has no current involvement in real estate, many luxury brands have licensed use of their marks in connection with hotels, and other have found opportunities in related areas, like interior design services and bathroom fixtures. This evidence sufficed to show that opposer would likely suffer an impairment of the distinctiveness of its mark.

In sum, the Board found dilution-by-blurring likely and it sustained the opposition on that ground, declining to reach opposer's Section 2(a) and Section 2(d) claims.

Read comments and post your comment here.

TTABlog note:  The impairment discussion is a bit strange and/or strained, I think.

Text Copyright John L. Welch 2014.

Test Your TTAB Judge-Ability: Are SUN SOUL ORCHESTRA and SOUL SUN Confusable for Musical Recordings?

Stephen L. Theard sought to register the mark SUN SOUL ORCHESTRA for musical recordings and related goods [ORCHESTRA disclaimed], but the PTO refused registration in view of the mark SOUL SUN for overlapping goods and related services. Of course, it all boiled down to the similarity of the marks. How do you think this came out? In re Stephen L. Theard, Serial No. 85719385 (May 14, 2014) [not precedential].

Applicant maintained that his mark immediately informs the consumer that the mark relates to an orchestra of practicing musicians, but the Board found the distinctive phrase SUN SOUL to be the dominant portion of the mark. "Applicant's mark thus incorporates as its dominant portion the cited registered mark in its entirety, merely transporting the terms 'sun' and 'soul.'" The Board found that this transposition did not change the overall commercial impression of the mark, and it concluded that the marks are confusingly similar in meaning and overall commercial impression.

Theard contended that his goods and their channels of trade are distinguishable from those of registrant because applicant offers goods "related to only one source, the band 'Sun Soul Orchestra.'" Applicant's identified goods were all described as the products of "a musical group." The Board pooh-poohed that distinction because the goods listed in the cited registration also may include recordings of music played by "a musical group."

Finally, Applicant Theard argued that the involved goods and services would be purchased with a high degree of care. However, there was no evidentiary support for that assertion, and in any case even careful consumers are not immune from source confusion.

Balancing the relevant duPont factors, the Board found confusion likely and it affirmed the Section 2(d) refusal.


Read comments and post your comment here.

TTABlog note:  Well, do you agree with the Board? How do you like the song? Or not?

Text Copyright John L. Welch 2014.

Test Your TTAB Judge-Ability: Is LINKED SYSTEM Merely Descriptive of Power Tools With Interchangeable Batteries?

The PTO refused registration of the mark LINKED SYSTEM for power tools and battery packs, finding the mark merely descriptive of the goods under Section 2(e)(1). The Examining Attorney maintained that applicant’s "system of power tools is connected – linked – because multiple tools can be using the same interchangeable battery" and "are connected and recharged with a single recharging system." What do you think? In re The Black & Decker Corporation, Serial No. 85857683 (May 22, 2014) [not precedential].

B&D pointed out that just because its tools use a common battery or charger does not make them "linked," and that no one else refers to products with interchangeable batteries as "linked" or as a "linked system." Referring to the dictionary definitions submitted by the PTO, B&D urged that the products are not "linked" because they are not connected together, and they do not comprise a "system" because they do not form a network to serve a common purpose.

The Board ruled in favor of B&D, concluding that the PTO had not established its case. Noting that there is a fine line between suggestiveness and mere descriptiveness, the Board found that LINKED SYSTEM falls on the suggestive side. The mark does not immediately describe with any particularity a characteristic or feature of the goods. At most it suggests that the goods are connected, without saying how.

It is not fatal that a mark conveys some information in addition to indicating the source of the goods or services. One may be informed by suggestion as well as by description. In re Reynolds Metals Company, 480 F.2d 902, 178 USPQ 296 (CCPA 1973). The mark at issue, LINKED SYSTEM, is typical of so many marks that consumers encounter in the marketplace: a highly suggestive mark that tells consumers something general about the product, without being specific or immediately telling consumers anything with a degree of particularity.

Although the Board had some concerns about the descriptiveness of the mark, the record evidence did not support the refusal. Observing that any doubt regarding descriptiveness must be resolved in favor of the applicant, it reversed the refusal.

Read comments and post your comment here.

TTABlog note:  So how did you do?

Text Copyright John L. Welch 2014.

Test Your TTAB Judge-Ability: Is INDIGO VANITY for T-Shirts Confusable With VANITY FAIR for Camisoles?

Vanity Fair, Inc. opposed an application to register the mark INDIGO VANITY for t-shirts, claiming likelihood of confusion with, and likelihood of dilution of, it allegedly famous, registered mark VANITY FAIR for camisoles, nightgowns, and the like. The Board found camisoles and t-shirts to be related, but Opposer failed to prove its claim that its mark is famous. So how do you think this came out? Vanity Fair, Inc. v. Ilyil Entertainment, LLC, Opposition No. 91201657 (May 21, 2014) [not precedential].

Fame: Because fame is a dominant factor in the duPont analysis, it is incumbent upon the claimant to clearly prove fame. Vanity Fair failed to do so. Although its advertising and sales figures were impressive, they were not placed in a meaningful context, and there was no evidence regarding the circulation of the magazines that mentioned VANITY FAIR branded merchandise. In sum, the evidence "fell short of demonstrating the extent so which such activities and achievements translate into widespread recognition of opposer's VANITY FAIR mark among the general public."

Opposer pointed to a decision in another case, in which its VANITY FAIR mark was found to be famous, but the Board "was not privy to the evidence made of record" in that proceeding. [Not to mention the fact that the applicant here was not a party to that prior proceeding and cannot be bound by the factual finding made therein - ed.].

The Board, however, found the VANITY FAIR mark to be arbitrary, and the long use and substantial sales and advertising under the mark, and lack of third-party use for similar goods, led the Board to find the mark to be strong and entitled to a broad scope of protection.

Of course, the failure to prove fame for Section 2(d) purposes put an end to Opposer's dilution claim, where an even higher standard for fame must be met.

The goods: The Board found opposer's camisoles to be similar to applicant's t-shirts: both are tops that can be worn as outerwear. If relatedness is established between one item in the application and one item in the cited registration, the Board pointed out, that suffices for a finding of likely confusion.

The Board, of course, assumed that the involved goods move through all normal channels of trade to all classes of purchasers. The record showed that opposer's goods are sold in nationwide retail stores that also carry t-shirts.

The identified goods include inexpensive apparel that would be purchased without a great deal of care or customer sophistication.

The marks: Not only are the involved marks different in appearance and sound, but they also differ in meaning and overall commercial impression.

Opposer argued that "indigo" is a shade of blue and therefore the opposed mark connoted "blue vanity." It maintained that the color blue is prominently featured in its packaging, trade dress, and advertising. The Board was not impressed:

Even assuming, arguendo, that opposer prominently features blue in relation to its goods, when considering word marks, the Board ordinarily does not look at trade dress because it is not part of opposer's mark, and opposer is free to change it or abandon it at any time. Moreover, there was no evidence that the public would associate the word "indigo" in applicant's mark with the color blue, rather than with the recording artist Indigo Marie Ford, who is affiliated with applicant. [She adopted the nickname "Indigo Vanity" in 2009].

Vanity Fair is a unitary phrase with literary connotations (in Pilgrim's Progress and in the novel of the same name by Thackeray). The opposed mark does not share that connotation, and overall the marks create different commercial impressions. Moreover, the Board found that INDIGO is the dominant element in applicant's mark because it appears as the first word in the mark.

Concluding that the first duPont factor was pivotal and outweighed all other factors, the Board dismissed the opposition.

Read comments and post your comment here.

TTABlog note:  On the dilution issue, could opposer have shown that VANITY FAIR is a "household word" that points to its products? What about Vanity Fair magazine? Or the novel?

Text Copyright John L. Welch 2014.

SPIDERGRAPH Merely Descriptive of Printed Graphs and Charts, Says TTAB

The Board affirmed a Section 2(e)(1) refusal to register the mark SpiderGraph, finding it to be merely descriptive of "printed material, namely, printed graphs and charts for use in the comparison and analysis of alternative choices in decision-making applications." Applicant's ownership of a now-expired registration for the same mark for the same goods was of no help. In re Chester, Serial No. 85220392 (May 20, 2014) [not precedential].

Prior Registration: The Board observed that, even though a term may be distinctive at its adoption, it may become merely descriptive over time. Moreover, the Board is not bound by the prior decision of the examining attorney who examined the prior application. Each case must be decided on its own merits. And a cancelled registrations provides none of the legal presumptions under Section 7(b) of the Act.

Mere Descriptiveness: Examining Attorney Nicholas A. Coleman provided Internet web pages referring to "spider graph" and "spider chart." For example, "[a] spider chart is a specialized type of chart that represents your data on a series of spokes (or radians), where each spoke is an attribute you are trying to measure, and the spoke's value is the distance from the center of the graph."

Applicant Gregory L. Chester feebly contended that the PTO's evidence did not show his particular charts, but the Board referred to the identification of goods in concluding that the mark conveys to consumers "an idea of an ingredient, quality, characteristic, feature, purpose or use of the goods."

Civility: The Board once again had to caution a pro se against personal attacks on the Examining Attorney [remember the FOK'N HURTS case, TTABlogged here].

Suffice to say that Applicant’s comments did nothing to advance the substantive prosecution of is application. The USPTO and the Board require all parties, whether represented by counsel or proceeding pro se, "to conduct their business with decorum and courtesy." Trademark Rule 2.192. In any future contact with the USPTO, Applicant should refrain from ad hominem attacks on USPTO personnel.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Is this applicant selling charts, or real estate services? In other words, are these charts really "goods in trade" or are they merely part and parcel of applicant's services?

Text Copyright John L. Welch 2014.

Test Your TTAB Judge-Ability on these Two Design Marks for Keyboards and Computers

Clamcase LLC sought to register the mark shown below left for keyboards, cases for cellular phones, and laptop computers (among other class 9 goods). The PTO refused registration in view of the registered mark shown below right, for the same goods (again among others in class 9). Clamcase appealed, maintaining that its mark resembles a shell while the cited mark looks like a shield. How do  you think this came out? In re Clamcase, LLC, Serial No. 85654205 (May 16, 2014) [not precedential].

Of course, when the goods are identical, a lesser degree of similarity is needed between the marks to support a finding of likely confusion. So it boiled down to the marks.

The Board observed that it is not unlikely that consumers may refer to either mark as clam-shaped or shield-shaped. [Really? The one on the right looks like a broken guitar pick - ed.] The relative dimensions are highly similar, and so are the characteristics of both. There was no evidence of third party use of similar marks to show that the cited mark is not inherently strong, or that consumers would notice small distinctions in the marks.

In sum, the Board found the marks to be "quite similar in appearance, commercial impression and connotation, as well as likely to be called-for or referred-to in a similar manner."

The Board also considered a second cited registration, owned by the same registrant, for the following mark for the same overlapping goods. [I don't know why the Board bothered to consider this second mark, since it is more different than the first one - ed.].

The Board then made this seemingly inapt statement: "It has often been said that likelihood of confusion would not be avoided when trade names and house marks are added to otherwise highly similar terms. 'Such addition may actually be an aggravation of the likelihood of confusion as opposed to an aid in distinguishing the marks so as to avoid source confusion.'" [Huh? How apply here?]

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog note:  So how did you do?

Text Copyright John L. Welch 2014.

Test Your TTAB Judge-Ability: Are LEN and LENS Confusable for Clothing Store Services?

The PTO refused registration of the mark LEN, in the form shown below, on the ground of likelihood of confusion with the registered mark LENS, both for retail clothing store services. Applicant argued that "Len" is the first name of its owner and thus is "immediately recognizable to consumer[s] as a first name," whereas LENS is an "obvious misspelling of the word LENSE." How do you think this came out? In re Len Druskin Inc., Serial No. 85590018 (May 14, 2014) [not precedential].

Because applicant's services and those of the cited registration are identical, the Board must presume that they travel in the same, normal channels of trade to the same classes of consumers.

As to the marks, the absence of the letter "S" from the applied-for mark "slightly distinguishes it visually and aurally from the cited registered mark." However, the "S" does not created an additional syllable in the cited mark or otherwise significantly change its appearance or sound as compared to applicant's mark.

As to the meanings of the marks, there was nothing in the record to support a finding that LENS would be perceived as anything other than the common word "lens." Nor was there any evidence regarding the extent to which consumers would be aware of applicant's corporate name or the name of the owner such that they would make an association between the mark and the owner. "Clearly, there are distinctions between the common optical meaning of the term 'lens' and the term 'len' which may be perceived as a given name, a coined term or possibly an acronym." However, the Board found, this difference in connotation was not enough to overcome the similarities in appearance and sound.

Simply put, registrant’s mark appears to be a pluralization, or possibly a possessive form, of applicant’s mark. Considering the marks in their entireties, we find that the marks are
very similar in sight, sound, and overall commercial impression.

Balancing the relevant duPont 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?

Text Copyright John L. Welch 2014.

TTAB Reverses 2(a) Deceptiveness Refusal of "BODY MINT & Design" for Dietary Supplements

The Board tossed out a Section 2(a) refusal to register the mark BODY MINT & Design for "dietary supplements; dietary supplements for promoting personal hygiene," finding that the word "mint" neither misdescribes the goods, nor is likely to affect consumer's purchasing decisions. In re Hawaiian Organics, L.L.C., Serial No. 85505232 (May 12, 2014) [not precedential].

The Examining Attorney argued that "mint" misdescribes the goods because applicant's supplements admittedly do not contain mint. Applicant maintained that the word has a broader meaning that the contents of the plant: it also may refer to the flavoring. Applicant's specimens of use refer to the scent of mint.

Applicant also pointed to its two existing registrations for BODY MINT in standard character form for legally identical goods, but the Board noted that there is no time limit on contestability for Section 2(a) claims and therefore these prior registration do not overcome the refusal. However, the Examining Attorney accepted the registrations as evidence of acquired distinctiveness of the term "body mint," and that fact strengthens applicant's argument that the word "mint" would not be misdescriptive of the goods.

The Board then considered whether consumers would likely believe the misdescription [assuming that "mint" is misdescriptive], and whether that would materially affect the purchasing decision. The Examining Attorney submitted several website pages referencing the health benefits of mint. Applicant provided a declaration from its "Member Manager," stating that despite sales of two million units of its goods, not one consumer has complained regarding the presence or absence of mint.

The Board concluded that the applicant had rebutted the PTO’s evidence that the mark misdescribes the goods. Moreover, as to the other two prongs of the Section 2(a) test, it found that, although the examining attorney established that consumers expect mint to provide health benefits, there was “scant evidence” that mint is often taken in the form of a dietary supplement, or that “when advertised with deodorant ‘mint’ refers to actual mint content as opposed to mint ‘flavoring’ or suggestiveness as would fit within the dictionary definition, nor that this is likely to affect consumers’ decisions.”

Therefore the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlog comment:  If the first prong of the test was not met (misdescriptiveness), why discuss the second and third prongs?

Text Copyright John L. Welch 2014.

Divided TTAB Panel Reverses Mere Descriptiveness Refusal of "GLOBAL MINING HOLDING COMPANY, LLC"

Finding insufficient the PTO's evidence of the meaning of the word "global," the Board reversed a refusal to register the mark GLOBAL MINING HOLDING COMPANY, LLC for "mining extraction of coal" [MINING HOLDING COMPANY, LLC disclaimed]. A definition from an English dictionary published in Scotland was irrelevant, and several third-party registrations for marks containing the disclaimed word "global" were in the same class as the subject mark but did not concern mining services. The Board took judicial notice of one dictionary meaning of the word, but that was not enough to permit the panel majority to find the word to be descriptive of the services. Judge Bucher dissented. In re Global Mining Holding Company LLC, Serial No. 85669303 (May 14, 2014) [not precedential].

In short, the panel majority found the record evidence "entirely too sparse." To find the term "global" to be descriptive of applicant's services based on a single dictionary definition "would be fundamentally unfair to applicant who had no opportunity to submit rebuttal evidence or present arguments addressing such evidence used as an adverse inference prior to appeal."

Judge Bucher noted in dissent that applicant had supplied a definition from the on-line dictionary www.dictionary.reference.com, which defines "global” as follows: "1. pertaining to the whole world; worldwide; universal: ...." He would acknowledge the generally accepted meaning of "global," as in "global warming," as signifying "worldwide." "Other large mining companies around the world likely assume, with good reason, that they could freely choose such a descriptive tagline to designate that their global entity is in the business of mineral extraction."

And so the Board reversed the refusal.

Read comments and post your comment here.

TTABlog note:  What do you think?

Text Copyright John L. Welch 2014.

CAFC Affirms TTAB's "STOP THE ISLAMISATION OF AMERICA" Disparagement Decision

The CAFC affirmed the TTAB’s decision upholding a Section 2(a) refusal to register the mark STOP THE ISLAMISATION OF AMERICA for “providing information regarding understanding and preventing terrorism.” The appellate court ruled that the Board’s finding that the mark may be disparaging to a substantial composite of Muslims in the United States was supported by substantial evidence and was in accordance with the law In re Pamela Geller and Robert B. Spencer, 110 USPQ2d 1867 (Fed. Cir. 2014) [precedential]. [oral argument (mp3) here].




In determining whether a mark is disparaging under Section 2(a), the proper inquiry was set forth in In re Lebanese Arak Corp.:

1) what is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services; and

(2) if that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group.

The Board found that the term “Islamisation,” as used in the mark, had two likely meanings: (1) a religious meaning: “the conversion or conformance to Islam” and (2) a political meaning: “a sectarianization of a political society through efforts to ‘make [it] subject to Islamic law.’” It concluded that the mark may be disparaging to American Muslims under both meanings because in both cases, the mark, when used with the recited services, associates Islamisation with violence and terrorism.Appellants conceded at oral argument that the subject mark is disparaging under a religious meaning of Islamisation. But they maintained that the Board “ignore[d] the overwhelming evidence in the record that the term ‘Islamisation’ has only been used in the public domain to refer to a political and military process replacing civilian laws with Islamic religious law.” They contended that the Board improperly relied “on arbitrary and anecdotal evidence” in determining the meaning of the mark.

The CAFC ruled that Appellants were incorrect in asserting that the political meaning was the only meaning of “Islamisation.” In any case, the CAFC ruled that substantial evidence supported the Board’s finding that the subject mark is also disparaging in the context of the political meaning of Islamisation.

And so the CAFC affirmed the Board’s decision.

Read comments and post your comment here.

Text Copyright John L. Welch 2014.

Ted Davis: 2014 Annual Review of U.S. Federal and State Case Law

Here is a link to Ted Davis's Annual Review of Federal and State Case Law, for the 2014 INTA Annual Meeting. Thank you, Ted, for permitting me to post this link.

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

Meet the Bloggers X - Royal Hong Kong Yacht Club

Despite sweltering weather, Meet the Blogger X proved to be a smashing success, according to bloggers Erik Pelton, Yours Truly, Marty Schwimmer, and Jeremy Phillips. Next year it's back to where MTB started: San Diego. Stay tuned for details.

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USPTO Seeks Comments on Proposed Trademark Fee Reduction

"The USPTO has issued a notice of proposed rulemaking [full text here] relating to the reduction of certain application and renewal fees (79 FR 26664 (May 9, 2014)). The notice proposes a new application filing option, to be known as TEAS Reduced Fee ("TEAS RF"), which will reduce the fee for applications filed using the regular TEAS application form if the applicant authorizes e-mail communications and agrees to file all responses and other documents electronically during the prosecution of the application. In addition, the notice proposes to reduce the fee for TEAS Plus applications and the fee for a TEAS application for renewal of a registration."

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CAFC Hears Oral Argument in ANNAPOLIS TOURS Cancellation Appeal

On Friday, May 9th, the CAFC heard oral argument [mp3 here] in Chesapeake Marine Tours, Inc. v. Alcatraz Media, Inc., Appeal No. 14-1031. 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 Under Rule 36: May 13, 2014].

The Board ruled that by showing the mark to be "highly descriptive," petitioner Alcatraz overcame the presumption arising from registration under Section 2(f) and therefore the burden shifted to respondent to "defend its registration." The appellate court, in its questioning, focused on the Board's lack of explanation of its "highly descriptive" finding and on its apparent failure to consider much of Chesapeake's evidence regarding use of its mark.

Read comments and post your comment here.

TTABlog note:  Yours truly provided some assistance and advice to Chesapeake in connection with its appeal.

Text Copyright John L. Welch 2014.

TTABlog Challenge: Can You Find All 21 TTAB Judges?

Here's something to keep you busy in, or on your way to, Hong Kong. See how long it takes you to find all 21 TTAB Judges. If you can do it in less than 10 minutes, you are a borderline genius. [download pdf here]

• ADLIN
• BERGSMAN
• BUCHER
• CATALDO
• GOROWITZ
• GREENBAUM
• HIGHTOWER
• KUCZMA
• KUHLKE
• LYKOS
• MASIELLO
• MERMELSTEIN
• QUINN
• RITCHIE
• ROGERS
• SEEHERMAN
• SHAW
• TAYLOR
• WELLINGTON
• WOLFSON
• ZERVAS

Read comments and post your comment here.

TTABlog note:  So how did you do?

Text Copyright John L. Welch 2014.

Test Your TTAB Judge-Ability: Are These Two Design Marks for Clothing Confusable?

Abercrombie & Fitch opposed an application to register the design mark shown below left, for various clothing items, including jeans, claiming a likelihood of confusion with its registered design mark shown below right, for jeans and other items. A&F claimed fame, but its proofs were inadequate to meet the clear evidence standard. How do you think this came out? Abercrombie & Fitch Trading Co. v. Artemides Holdings Pty. Ltd., Opposition No. 91193275 (May 6, 2014) [not precedential].

Because the good are in part identical [Strike One!], the Board must presume that they travel through the same, normal channels of trade to the same classes of consumers [Strike Two!].

A&F claimed that its mark is famous, but it failed to meet its obligation to "clearly prove it." In A&F's advertising and sales materials the pleaded mark was not sufficiently independent from the ABERCROMBIE & FITCH mark. When a mark is used in tandem with a famous house mark, a party must show that its product mark has independently achieved fame. Here it was impossible for the Board to assess the impact of the design mark on consumer perception. However, the Board did find that the mark has "a strong marketplace presence." [Foul tip.]

Applicant asserted that "back pocket jeans designs" are in wide use in the designer jeans market, and so A&F's design is not unique. It pointed to seven third-party registrations for pocket stitch designs, and specimens of use from eleven registrations files. However, the Board observed, such evidence does not establish the extent of use of the marks or any impact they may have had on consumers. Therefore that evidence had little probative value, and this factor was neutral. [Ball One!].

Turning to the marks, the Board first noted that when the involved goods are identical, a lesser degree of similarity between the marks is required to support a finding of likely confusion. Of course, a side-by-side comparison of the marks is not the proper approach. "The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks."

Applicant argued that its mark is "evocative of an Egyptian hieroglyph and, at the same time, could suggest to viewers the intersection of two chain-links. [Opposer's] is a standard back-pocket design that does not evoke similar connotations."

The Board noted that when placed side by side, specific differences in the marks are detectable "and those differences might well be enough to distinguish one from the other." But it is highly unlikely that the two marks at issue would be viewed together. When the marks are viewed at different times on identical goods, "the recollection of the first viewed mark will be a general impression most likely devoid of the details noted by applicant."

Consideration must also be given to the fact that a purchaser's recollection of design marks is often of a general and hazy nature. So considered, it is the intersecting arcs of the marks that impresses or provides the initial impact when viewing both marks. The overall similarity of the marks is such that there is reasonable likelihood of purchasers attributing identical products sold thereunder to a single source. [Strike Three!]

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

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TTABlog note:  So, do you agree with this decision? Why not?

Text Copyright John L. Welch 2014.

Precedential No. 22: TTAB Affirms Geographical Descriptiveness Refusal of HOLLYWOOD LAWYERS ONLINE for Online Referral Services

The Board affirmed a Section 2(e)(2) refusal to register the mark HOLLYWOOD LAWYERS ONLINE, finding it to be primarily geographically descriptive of "attorney referrals; providing a web site featuring business information in the form of audio and video interviews, transcripts and other educational materials; providing an online video business directory." Applicant argued that HOLLYWOOD referred to the entertainment industry, not the geographical location, but the Board disagreed. In re Hollywood Lawyers Online, 110 USPQ2d 1852 (TTAB 2014) [precedential].

Map of Hollywood (click on photo for larger picture)
Applicant insisted that the relevant consumers of online legal services would associate "Hollywood" with the entertainment aspect of the word. It relied particularly on the Board's decision in In re Taste International, 53 USPQ2d 1604 (TTAB 2000), reversing a Section 2(e)(2) refusal to register the mark shown here, for french fries and fast food restaurants, in view of the non-geographic meaning of  HOLLYWOOD, emphasized by the accompanying star design. The Board, however, distinguished this case from Taste International because the addition of the words LAWYERS ONLINE does not point to the entertainment industry connotation of HOLLYWOOD, but instead immediately describes applicant's services. The Board observed that geographic descriptiveness, like mere descriptiveness, must be evaluated in the context of the goods or services at issue.

When confronted with the phrase HOLLYWOOD LAWYERS ONLINE for attorney referral services, a web site featuring business information in the form of audio and video interviews, or online business directories, the immediate perception is an online database of Hollywood-based attorneys and businesses and websites featuring information about such businesses.

The record included examples of websites directed to the availability of lawyers in Hollywood, demonstrating that consumers are exposed to use of the term HOLLYWOOD in a geographic manner with these types of services. And contrary to applicant's assertion, the inclusion of the word ONLINE does not necessarily connote that the services are national in scope, but only that the services are offered online. Nothing in the record demonstrate that relevant consumers would view applicant's services as relating to the motion picture industry, rather than denoting a geographic connection.

The question, then, was whether there is an association between the services and the place named in the mark. Hollywood is a district of Los Angeles, and applicant's address is in Los Angeles, but not in the Hollywood district. However, when services are provided near the place named in the mark, that may be sufficient to support a finding that the services originate in the named geographic location: e.g., YOSEMITE BEER was found to be geographically descriptive for beer sold in Merced, California, ninety miles from Yosemite National Park. Moreover, the evidence showed that Hollywood is a well-known geographic location.

Although applicant may not specifically refer Hollywood-based attorneys or cater to customers in Hollywood, that does not alter that perception of the location of the services. Even if the services were rendered to an out-of-state consumer, that consumer would still understand that the services originated in Hollywood.  The Board noted in dictum that, if the facts were to establish that the services originated from a different location than Hollywood, that may simply indicate that the mark is primarily geographically deceptively misdescriptive under Section 2(e)(3).

Read comments and post your comment here.

TTABlog comment: So maybe applicant should put some stars next to the mark, and re-file?

Text Copyright John L. Welch 2014.

Three CAFC Oral Arguments This Week in TTAB Appeals

The CAFC will hear oral argument this week in three appeals from TTAB decisions. The three cases are summarized below. [Appeal briefs and other papers may be found via PACER; Oral argument recordings may subsequently be found here].

Wednesday, May 7, 10 AM: 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].

Thursday, May 8, 10 AM: 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].

Friday, May 9, 10 AM: 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].

Read comments and post your comment here.

Text Copyright John L. Welch 2014.

Precedential No. 21: IKEA Gets Split Decision Against AKEA: Section 2(d), Yes in Part; Dilution, No

The Board sustained Opposer Ikea's opposition to registration of the mark AKEA for certain class 35 services, including "providing advice and information in the field of career and business opportunities," finding the mark likely to cause confusion with its registered mark IKEA for educational services in the field of personnel management. But the Board dismissed Ikea's Section 2(d) claim as to applicant's supplements and vitamins (class 5) and its informational services regarding lifestyle topics (class 44). Ikea also claimed dilution by blurring, but that claim failed due to lack of proof that the mark IKEA became famous prior to applicant's filing date. Inter IKEA Systems B.V. v. Akea, LLC, 110 USPQ2d 1734 (TTAB 2014) [precedential].

Likelihood of confusion: The Board found that, for Section 2(d) purposes, the mark IKEA is famous for "retail store services in the field of furniture, housewares and home furnishings," and is otherwise a strong mark for furniture, housewares, home furnishing, food products, and restaurant services.

Not surprisingly, the Board found the involved marks to be similar. Both marks are coined terms that look and sound alike, they have no known difference in meaning to distinguish them, and they engender a similar commercial impression.

As to applicant's vitamins and supplements, Ikea failed to show any relationship between those goods and its goods and services. However, applicant's services of "providing advice and information in the field of career and business development" are, the Board found, closely related to Ikea's educational courses in the field of personnel development, and these were the only goods or services in the case deemed to be related.

Ikea failed to prove that applicant's vitamins and supplements move in the same channels of trade as to its own goods. However, the Board found that the channels of trade for the parties' related services overlap. Consumers of Ikea's goods and services and of applicant's products will exercise a moderate degree of care in their purchasing decisions, a factor that favored applicant.

Balancing the relevant duPont factors, the Board found that, despite the fame of the IKEA mark and its similarity to AKEA, confusion is not likely as to applicant's class 5 goods and class 44 services because of the differences in the parties' respective goods and services, the differing channels of trade, and the degree of care that purchasers will exercise. Applicant's class 35 services, however, are in part legally identical to those of Ikea, and therefore the Board found a likelihood of confusion as to the entire class 35 list of services.

Dilution: Assuming arguendo that the mark IKEA is famous for dilution purposes, Ikea's dilution claim failed, as previously indicated, because it did not prove that its mark became famous prior to the filing date of applicant's Section 1(b) application.

Read comments and post your comment here.

Text Copyright John L. Welch 2014.

Reminder: "MEET THE BLOGGERS X" Set For Monday, May 12th, 8-10 PM

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TTABlog Summary of TTAB Precedential Decisions: June 2012-March 2014

Here is a bit of reading material for your trip to the INTA annual meeting in Hong Kong: "Decisions of the Trademark Trial and Appeal Board and the Federal Circuit on Registrability Issues June 2012 to March 2014." This paper (pdf here) categorizes and summarizes the TTAB's precedential opinions for the last two years. I will be discussing a number of these cases in my presentation on Wednesday morning, May 14th. An expanded discussion of many of the decisions (i.e., the decisions published in the USPQ between July 2012 and June 2013) appears in the article "The Sixty-Sixth Year of Administration of the U.S. Trademark (Lanham) Act of 1946," recently published by The Trademark Reporter (TTABlogged here).

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Text Copyright John L. Welch 2014.

TTAB Posts May 2014 Hearing Schedule

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

May 1, 2014 - 2 PM: Shield Mfg., Inc. v. OPRO International Limited, Opposition No. 91190276 [Opposition to OPROSHIELD for "gum shields for protecting the mouth from injury" on the grounds of likelihood of confusion with, and likelihood of dilution of, the registered mark SHIELD for "protective mouth guards for all contact sports"].

May 21, 2014 - 2 PM: Treadwell Original Drifters, LLC v. James M. Slattery, Cancellation No. 92052155 [Petition for cancellation of a registration for the mark BILL PINKNEY'S ORIGINAL DRIFTERS for "entertainment Services in the nature of live performances by a musical group," on the ground that Opposer is the owner of superior rights in the mark THE DRIFTERS, and the registered mark is likely to cause confusion with Opposer's mark].

May 29, 2014 - 2 PM: Wonton Food v. v. Dakon International Inc. dba Dakon Foods Inc., Cancellation No. 92055180 [Petition for cancellation of a registration for the mark GOLDEN BOWL & Design (shown below) for rice, on the grounds of likelihood of confusion with, and likely dilution of, the mark GOLDEN BOWL for egg rolls, noodles, wraps, etc.]. 

Read comments and post your comment here.

Text Copyright John L. Welch 2014.