Monday, June 30, 2014

TTABlog Quarterly Index: April to June 2014

E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. You may also follow the blog on Twitter (here). And don't forget to leave your comments! [Note that E-mail subscribers may gave to go to the blog to see comments]. Finally, please report any broken or inoperative links, as well as any errors and omissions, to the TTABlogger at jwelch at lalaw.com.

(click on photos for larger pictures)

Section 2(a) - Deceptiveness:
Section 2(a) - Disparagement:
Section 2(a) - Immoral or Scandalous or Immoral:
Section 2(d) - Likelihood of Confusion:
Section 2(e)(1) - Mere Descriptiveness:


Section 2(e)(2) - Primarily Geographically Descriptive:
Section 2(e)(3) - Primarily Geographically Deceptively Misdescriptive:
Section 2(e)(4) - Primarily Merely a Surname:
Section 2(f) - Acquired Distinctiveness:
Dilution:
Fraud:
Genericness:
Lack of Bona Fide Intent:
Ownership:


Specimen of Use:
Non-use:
Cancellation Under Section 14(3):
Concurrent Use:
Discovery/Evidence/Procedure:

Erik Pelton, Yours Truly, Marty Schwimmer, Jeremy Phillips

Recommended Reading:
CAFC:
Other:

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 6/30/2014   0 comments

Friday, June 27, 2014

Test Your TTAB Judge-Ability: Is GLOBAL-SP for O-Rings Confusable with SP DIRECT for Gaskets?

The PTO refused registration of the mark Global-SP for goods including "O-rings of rubber for automobiles" and "non-metal packings for forming seals for automobiles," on the ground of likelihood of confusion with the registered mark SP DIRECT for "automotive aftermarket parts, namely, ... gaskets." On appeal, the Board found the goods to be legally identical and purchaser "sophistication" not likely to be a factor with regard to these relatively inexpensive items. But what about the marks? Confusable? How do you think this came out? In re NOK Corporation, Serial No. 79090703 (June 25, 2014) [not precedential].


Applicant NOK argued that the "common component SP in both marks is weak," relying on 23 third-party registrations containing "SP," and it offered possible alternative meanings for "global" and "direct" that are not descriptive of automotive goods. In short, NOK maintained that the marks are dissimilar in sight, sound, and connotation.

Examining Attorney Michelle E. Dubois, on the other hand, maintained that SP is the dominant element of each mark, since the letter combination "SP" has no meaning in the relevant field, whereas "global" and "direct" are descriptive or highly suggestive. She asserted that "[c]onsumers are likely to believe that GLOBAL-SP is an international line of products and SP DIRECT is a line of products from the same company that is provided directly to the consumer, without an intervening agent."

The Board found the marks to be similar in meaning, sound, appearance, and commercial impression. The fact that both marks contain the SP letter combination outweighed the differences between the marks. It agreed with "all of the reasons" presented by the examining attorney for concluding that NOK had not shown SP to be a weak formative. Many of the third-party registrations submitted by NOK are owned by a single entity, and cover tires. There was no showing that tires are related to the goods here at issue. Nor did NOK offer a possible meaning or significance for "SP" in the automotive industry.

The Board also agreed with the PTO that "direct" and "global" are not particularly distinctive, and that these terms suggest the manner or geographic range in which the goods may be purchased. The alternative meanings of these words that NOK offered were not reasonably applicable in the present context. "Ultimately, consumers already familiar with the mark SP DIRECT are likely to perceive a strong similarity to Applicant's GLOBAL-SP based on the shared element SP."

And so the Board knocked out NOK's application to register.

Read comments and post your comment here.

TTABlog note:  So how did you do?

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 6/27/2014   0 comments

Thursday, June 26, 2014

Test Your TTAB Judge-Ability: Is DIAMOND Merely Descriptive of Paper-Cutting Dies?

The PTO refused registration of the mark DIAMOND, finding it merely descriptive of "paper cutting machine parts, namely, steel rule dies for cutting paper products." The examining attorney maintained, and Applicant Hannan Products conceded, that "diamond" describes one of the many shapes cut by steel dies. How do you think this came out? In re Hannan Products Corp., Serial No. 85442708 (May 30, 2014) [not precedential].


The Internet evidence submitted by Examining Attorney Helene Liwinski established that steel dies like those of applicant may be used to cut a variety of shapes, including diamonds and patterns in the shape of a diamond, and that the term is used descriptively by third parties. Hannon acknowledged that "steel die rules are not limited to any particular shape, and they can be any imaginable shape."

The Board therefore found that DIAMOND "immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used," and so it affirmed the Section 2(e)(1) refusal.

Read comments and post your comment here.

TTABlog note:  So would the mark PUPPY DOG be merely descriptive of paper-cutting dies because a die is capable of cutting paper in the shape of a puppy dog?

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 6/26/2014   2 comments

Wednesday, June 25, 2014

New Jersey Manufacturer and Retailer Seeks Experienced Trademark Counsel

Central New Jersey company is seeking an attorney with 10-15 years’ experience to provide legal services for multinational manufacturer and retailer of category leading products. Reporting to the General Counsel of the company, counsel will be charged with managing domestic and international trademark process; negotiating and advising with respect to license agreements, distribution agreements, and general contract matters; and providing other advice in support of management, operations and other support functions (human resources, IT, finance). Ideal candidate will have had law firm and in-house experience, with specific retail and/or brand experience in consumer products company a plus. To be successful in role, individual must have excellent written and verbal skills, demonstrated ability to work in fast-paced team-oriented environment and ability to manage outside resources within legal budget. Email to jwelch at lalaw.com for introduction.

posted by John L. Welch @ 6/25/2014   1 comments

Decisions of the TTAB and the CAFC on Registrability Issues: July 2013 to June 2014

Here is my latest synopsis of CAFC and TTAB decisions, covering the period July 2013 to June 2014. This paper was prepared for the 2014 ABA Annual Meeting in Boston, in August 2014. More details will follow. Decisions of the Trademark Trial and Appeal Board
and the Federal Circuit on Registrability Issues: July 2013 to June 2014.

.

posted by John L. Welch @ 6/25/2014   0 comments

Tuesday, June 24, 2014

CAFC Affirms TTAB: CHILDREN'S DHA Generic for Nutritional Supplements Containing DHA

The CAFC affirmed the TTAB's decision [here] upholding the PTO's refusal to register CHILDREN'S DHA for "nutritional supplements containing DHA" [DHA disclaimed], the appellate court ruling that substantial evidence supported the Board's conclusion that the purported mark is generic for the identified goods. Nordic unsuccessfully argued that the record included a "mixture of usages," and that the required clear evidence of genericness was therefore absent. In re Nordic Naturals, Inc., 111 USPQ2d 1495 (Fed. Cir. 2014) [precedential].


The record included a dictionary definition of DHA (an abbreviation for docosahexaenoic acid, an omega-3 fatty acid that assists in brain development) and evidence of third-party uses of "children's DHA" both to describe DHA products in general and to describe third-party DHA products.

Nordic asserted that it was the first to use the term CHILDREN'S DHA, that it invested significantly in marketing its product, and that its commercial success was based in part on use of CHILDREN'S DHA to identify its product. It pointed to declarations from its retailers, its own advertising, and third-party use of "children's DHA" to refer to its products. Based on this evidence Nordic maintained that, as in In re Merrill, Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567 (Fed. Cir. 1987), the mixed record of uses could not constitute clear evidence of genericness.

The court, however, pointed out that in Merrill Lynch the evidence included multiple third-party references "that explicity recognized Merill Lynch as the source of the mark." Here, there was a lack of such third-party references. Instead the record included generic and descriptive uses of "children's DHA." Some references that used "children's DHA" to refer to Nordic's goods also used it "to describe those goods in a generic manner." Furthermore, the declarations submitted by Nordic were from its retailers, not members of the relevant public (parents or other adults seeking nutritional supplements containing DHA for children), and they were prepared primarily by Nordic. In Merrill Lynch, the evidence included unsolicited references to Merrill Lynch "as the source of CASH MANAGEMENT ACCOUNT," the mark there at issue.

Even if Nordic were the first to use the phrase "children's DHA," the question remained, "in light of Nordic's use and all other relevant uses, what does 'children's DHA' primarily to the relevant public?" The CAFC concluded that "sufficiently clear evidence" supported the Board's finding that the relevant public primarily uses "children's DHA" to refer to the category of DHA products for children.

And so the appellate court affirmed the TTAB's decision.

Read comments and post your comment here.

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 6/24/2014   0 comments

Monday, June 23, 2014

BOMBER GEAR for Dry Clothing Confusable With BOMBER(S) for Hats and Shirts, Says TTAB

The Board affirmed a Section 2(d) refusal to register BOMBER GEAR for "dry tops, dry pants, and dry shorts used for kayaking" [GEAR disclaimed], finding the mark likely to cause confusion with the registered marks BOMBER for hats and BOMBERS for shirts, the cited registrations being owned by two different entities. Applicant pointed to eleven third-party registrations and seven websites for BOMBER-formative marks, arguing that BOMBER is a weak formative. The Board, however, found that argument to be all wet. In re Confluence Holdings Corp., Serial No. 85643399 (June 19, 2014) [not precedential].


The Marks: The Board not surprisingly found the word BOMBER to be the dominant element of applicant's mark, since GEAR is disclaimed and BOMBER appears as the first word in the mark. The Board therefore concluded that the involved marks are similar in appearance, sound, connotation, and commercial impression. [Note my preference for the Oxford comma - ed.].

The eleven third-party marks cited by the applicant included JOURNEYMAN BOMBER, BROWNBOMBERMMA, AFRICVILLE BROWN BOMBERS, BLAKE STREET BOMBERS, BRONX BOMBERS, LONG BOMBERS, and SAYERVILLE BOMBERS. The Board noted that five of the marks are related to sports teams and suggest that the team includes good hitters or good shooters. Two include the term BROWN BOMBER, which may refer to former heavyweight champion Joe Louis.


From these registered marks, the Board could not conclude that the word BOMBER by itself has a particular significance for the goods in the cited registrations. The Board recognized that the registration of BOMBER for hats was based on Section 2(f) acquired distinctiveness (a bomber hat being a type of hat), but because the mark is registered, the Board must presume that it is not merely descriptive.

The seven websites cited by applicant corresponded to seven of the registered marks. Each of those marks has words additional to the word BOMBERS that serve to distinguish the marks. Applicant's mark has nothing to distinguish it other than the generic term GEAR.

And so the Board concluded that the marks BOMBER and BOMBERS are entitled to a normal scope of protection.

The Goods: The Board recognized that the "dry tops" in the subject application are not "shirts." However, the evidence provided by Examining Attorney Miah Rosenberg showed that shirts and dry tops emanate from the same sources and are sold on the same websites. Moreover, shirts and dry tops may be used together. Similarly, hats and caps are used for kayaking, they emanate from the same sources as kayaking clothing, and they are sold in the same channels of trade as kayaking clothing.

Degree of Consumer Care: Although a purchaser of dry clothing will exercise a high degree of care, since those products are not inexpensive, the purchaser may not exercise the same degree of care when purchasing hats and shirts. Consequently, there is a likelihood of noisufnoc esrever [reverse confusion - ed.]. The Board concluded that this fact was neutral or, at most, slightly favored applicant.

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

Read comments and post your comment here.

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 6/23/2014   0 comments

Friday, June 20, 2014

WYHA? TTAB Affirms Mere Descriptiveness Refusal of "TEA QUILA" for Alcoholic Beverages

We haven't had a WYHA? in a while. But I don't want to lose that "trademark" through non-use, so here goes. The Board affirmed a Section 2(e)(1) refusal to register the mark TEA QUILA, finding the mark merely descriptive of "alcoholic beverages except beer." The Board pooh-poohed Applicant's double entendre argument that TEA QUILA may be seen "as a type of Quila, where Tea modifies Quila (which may be interpreted as a coined or nonsense term, and is also type of bamboo, a city, and in Hindi/Urdu a fort or fortress)." In re IV Science, LLC d/b/a Green & Co., Serial No. 85609906 (June 18, 2014) [not precedential].


The evidence submitted by Examining Attorney Cheryl Clayton established that TEA QUILA describes an alcoholic beverage made with tea and tequila. Applicant argued that the PTO must show that TEA QUILA "does nothing but describe the goods or services with which it is used." That is not, however, a correct statement of the law. A mark must be considered in the context of the goods or services with which it is used, not in the abstract.

As to Applicant's double entendre argument, the Board pointed out that Applicant submitted no evidence supporting its definition of "quila." Moreover, Applicant submitted no evidence that anyone
would interpret TEA QUILA as "tea" + "bamboo, or city, or fort, or fortress." "Further, unless Applicant can establish that this interpretation of TEA QUILA has significance as applied to the goods, it is not a double entendre. See TMEP § 1213.05(c) (April 2014)."

Finally, Applicant argued that the term TEA QUILA sounds like "tequila," but that was no help because "tequila" is itself merely descriptive of alcoholic beverages.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog note:  Well, would you have appealed?

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 6/20/2014   2 comments

Thursday, June 19, 2014

Precedential No. 26: In Split Decision, TTAB Orders Cancellation Of Six REDSKINS Registrations Due To Disparagement

In an eagerly anticipated decision, a divided TTAB panel granted a petition for cancellation of six registrations for marks comprising or containing the word REDSKINS, for football entertainment services, finding that the marks, at their respective dates of registration, disparaged Native Americans. Judge Bergsman dissented, concluding that the petitioners had failed to prove disparagement by a preponderance of the evidence. Amanda Blackhorse, Marcus Briggs-Cloud, Philip Gover, Jillian Pappan, and Courtney Tsotigh v. Pro-Football, Inc., 111 USPQ2d 1080 (TTAB 2014) [precedential].


Amanda Blackhorse

This is the second time the TTAB has considered a petition for cancellation of these registrations. In the first case (Harjo v. Pro Football, Inc.), the federal courts ultimately ruled that the claims of the Native American petitioners were barred by laches [See TTABlog post here].

Six new petitioners brought the instant cancellation proceeding in 2006 (one later withdrew). Each of these petitioners had recently reached the age of majority, the age from which, according to the D.C. Circuit Court of Appeals, laches began to run. The parties stipulated that the entire Harjo record, with certain exceptions, could be submitted into evidence by way of notice of reliance.

The test for disparagement under Section 2(a) involves a two-part inquiry: (1) what is the meaning of the term in question as it appears in the mark and as the mark is used in connection with the identified goods and services?; (2) does the meaning of the mark disparage Native Americans? The view of the referenced group are determined by the views of a "substantial composite thereof," and that substantial composite need not be a majority. These two questions are to be answered, with regard to each mark, as of the date of registration of the mark (here, 1974 for the earliest registration, to 1990 for the latest).

As to the first question, the Board concluded that the term REDSKINS in the registered marks, when used in connection with professional football, means Native Americans. As to the second question, petitioners submitted two types of evidence: a general analysis of the word (based on dictionary definitions, reference books, and expert testimony), and the specific views of the referenced group (focusing on depositions testimony, newspaper articles, official records, personal letters, and a 1993 Resolution of the National Congress of American Indians (NCAI). The panel majority concluded that "a substantial composite of Native Americans found the term REDSKINS to be disparaging in connection with respondent's services during the relevant time frame of 1967-1990."

Therefore, the Board ruled, the registrations must be cancelled.

The Board rejected Respondent's laches defense, holding that as a matter of law, laches does not apply to a disparagement claim regarding a group, and even if it did, Respondent did not prove that it was harmed by any delay in bringing this proceeding.


In dissent, Judge Bergsman concluded that petitioners' evidence failed to show that the term REDSKINS was disparaging at the time of the subject registrations. He pointed to a lack of evidence that the term is disparaging specifically when used in connection with football-related services. The expert testimony was not so directed, and the dictionary definitions that labelled the term "usually offensive" left open the possibility that it was not disparaging when used in connection with sports teams.

Read comments and post your comment here.

TTABlog note:  This case will surely go up on appeal. If Pro Football appeals to the CAFC, will Petitioners exercise their option to proceed by way of civil action in the district court (See Section 1071), where they could add additional evidence to the record in a trial de novo?

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 6/19/2014   8 comments

Wednesday, June 18, 2014

Fame of NAUTICA Mark Yields 2(d) Opposition Victory over NAUTI LIFE for Clothing

Opposer Nautica sailed to victory on the fame of its NAUTICA mark in this Section 2(d) opposition to registration of NAUTI LIFE for various clothing items. Opposer's long use of the NAUTICA mark, its impressive sales and substantial advertising expenditures, and unsolicited media attention regarding the brand, convinced the Board that the mark, for Section 2(d) purposes, is famous for apparel. The Board once again declined to reach the issue of dilution by blurring. Nautica Apparel, Inc. v. Nauti Marine, Opposition No. 91205138 (June 16, 2014) [not precedential].


Fame is, of course, a dominant factor in the likelihood of confusion analysis. The goods of the parties were identical in part, and so the Board presumed that those goods travel in the same, normal channels of trade to the same classes of consumers. The identified goods include inexpensive clothing items offered to the general public.

As to the marks, the Board pointed out once again that when the involved goods are identical (in part), a lesser degree of similarity between the marks is needed to support a finding of likely confusion.

The Board found the marks similar in sound and appearance, noting that consumers are inclined to focus on the first word or portion of a mark. "Naut" is defined as an abbreviation of "nautical," and so applicant's mark, when used with bathing suits, flip-flops, and the like, conveys the idea of a nautical life or nautical lifestyle. The addition of the suggestive word "life" in applicant's mark is likely to be viewed as identifying a variation or subset of opposer's clothing line. Indeed, Nautica has registered its mark in various forms, for clothing items.

Finally, the Board noted that there is no evidence of third-party use of NAUTICA, and there is evidence that opposer policed its mark.

In finding confusion likely and sustaining the opposition, the Board repeated the CAFC's observation that "there is no excuse for even approaching the well-known mark of a competitor inasmuch as 'a strong mark ... casts a long shadow which competitors must avoid.'"

Read comments and post your comment here.

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 6/18/2014   2 comments

Tuesday, June 17, 2014

OPROSHIELD and SHIELD Confusingly Similar for Mouth Guards, Says TTAB

After dismissing Applicant OPRO's genericness counterclaim, the Board sustained this Section 2(d) opposition to registration of the mark OPROSHIELD for "gum shields for protecting the mouth from injury." The Board found applicant's mark likely to cause confusion with the registered mark SHIELD for "protective mouth guards for all contact sports." Shield Mfg., Inc. v. OPRO International Limited, Opposition No. 91190276 (June 10, 2014) [not precedential].


Genericness of SHIELD: In an exhaustive and exhausting discussion of the issue of genericness that took up about three-fourth of the decision, the Board concluded that applicant OPRO "failed to prove by a preponderance of the evidence that the relevant public understands that the word 'shield' primarily refers to mouth guards (i.e., that it is a generic term for mouth guards)."

Nothing in the record evidence - including dictionary definitions, opposer's website, applicant's website, third-party websites, applicant's patent, and applicant's own testimony - called a "mouth guard" a "shield."

According to the record, when "shield" is used in connection with protective devices, including mouth guards, the word "shield" is the suffix of a unitary term preceded by a specific body part (e.g., gum shield, arm shield, etc.). As applicant produced no evidence that the relevant public understands the term "shield" per se as it relates to mouth guards is a generic term, it failed to carry its burden.

The Board distinguished this case from Central Sprinkler, in which ATTIC was found to be generic for automatic fire sprinklers. There, the goods fell into both a broad category (automatic sprinklers) and a sub-class (sprinklers for attics). Here the question was whether the mark refers to the narrow category of goods (mouth guards) rather than the broad category of goods (protective devices). "We will not rely on evidence of unitary terms such as gum shield, arm shield, or knee shield and extrapolate that athletes and other relevant purchasers perceive the term "shield" per se to be generic for mouth guards."

And so the Board dismissed the counterclaim.

Likelihood of confusion: Opposer claimed that its mark is famous for Section 2(d) purposes, but its evidence fell short. The mark, however, enjoys "significant marketplace strength."

As we know, when the good are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. "In this case, we find that that SHIELD is likely to be perceived as a shortened version of OPROSHIELD when used on the same products." OPRO contended that the term "shield" is descriptive of mouth guards, and therefore that opposer’s SHIELD mark is entitled to only a narrow scope of protection. The Board, however, pointed to the marketplace strength of the SHIELD mark, concluding that SHIELD is entitled to a broad scope of protection.

The Board therefore sustained the opposition.

Read comments and post your comment here.

TTABlog note:  What do you think?

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 6/17/2014   1 comments

Monday, June 16, 2014

TTAB Finds Confusing Similarity Between "Paw" Design and "KELME & Paw Design" For Clothing

New Millennium Sports clawed its way to victory in this Section 2(d) opposition to registration of the "paw" design mark shown below left, for various clothing items. The Board found that mark likely to cause confusion with the registered mark KELME & paw design shown below right, for overlapping clothing items. Applicant Jack Wolfskin counterclaimed to cancel opposer's pleaded registration, contending that opposer had ceased using the mark in 2004 in favor of a different mark. But the Board disagreed. New Millennium Sports, S.L.U. v. Jack Wolfskin Ausrustung fur Draussen GmbH & Co. KGaA, Opposition No. 91195604 (June 10, 2014).


Counterclaim: Jack Wolfskin asserted that New Millennium, by using its mark in the form shown below, had abandoned the registered mark because the new mark was "materially different in character from" the registered mark.


The Board observed that a change in form of a mark "does not constitute abandonment or a change in continuous use if the change neither creates a new mark nor changes the commercial impression of the old mark." Jack Wolfskin argued that the design in the "replacement mark" was clearly a paw, whereas in the mark as registered the design could be interpreted as "a mountain with the sun's rays, a volcano, a setting sun, or an abstract design."

The Board found that the modified version did not constitute a material alteration of the mark as registered. The style of lettering in each is non-distinctive and highly conventional, and the change in style does not affect the literal portion of the mark. As to the design portion, the primary change in the modified design is the addition of "claws" to the "paw" design.  The Board was not persuaded that the original design would be interpreted as something other than a paw. Rather, the design conforms to "conventional concepts of what an animal's paw or paw print would look like." [see examples below].


The addition of claws to the design are "typical of variations to be reasonably expected in representations of animals' paws." In short, the differences between the original and the modified marks do not constitute a material alteration of the mark, and so the Board dismissed the counterclaim.

Likelihood of confusion: The key question, of course, was the similarity of the marks. Applicant Wolfskin pointed out that its mark is a design with no literal element and is clearly a paw but "without claws." It asserted that New Millennium's mark "look like something drawn by a child; that if it is perceived to be a paw, it would be the paw of a harmless pet, whereas applicant's design depicts the paw of 'an animal that ... has not been domesticated.'" Moreover its design is depicted realistically at an angle and is symmetrical, unlike opposer's design.

The Board pointed out that, even if KELME is the dominant portion of opposer's mark, the design portion creates a distinctive commercial impression that cannot be ignored. The Board concluded that, despite their differences, the two designs have "substantial visual similarities." Moreover, the marks at issue create substantially similar commercial impressions.

Companies that use marks consisting of a word plus a logo often display their logos alone, unaccompanied by the literal portions of their trademarks. Indeed, opposer has demonstrated that it sometimes displays its paw design (in its modified form) separate and apart from the KELME designation. Applicant’s mark could therefore be interpreted by customers as a display of opposer’s design, apart from opposer’s word element.

Applicant submitted substantial evidence of third-party registration and use of "paw" designs, the most relevant shown immediately below. The Board noted that only the mark in Exhibit F resembled opposer's design; the other four have five digits and "very prominent" claws.


Most of the Internet evidence related to apparel associated with universities, high schools, and athletic teams. (see below). Of the 19 such designs, some "quite closely resemble opposer's design."


The Board found it significant that these marks are displayed on apparel primarily in an ornamental fashion. Moreover, they indicated "an association with particular colleges, high schools, and their sports teams, rather than to identify an apparel company or a sporting goods company." They are often displayed with the name of the actual manufacturer of the goods, and serve as secondary source indicators. This somewhat reduces their impact on the distinctiveness of New Millennium's mark.

The Board concluded that this duPont factor was neutral.

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

Read comments and post your comment here.

TTABlog note:  Well, do you agree with the Board?

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 6/16/2014   1 comments

Friday, June 13, 2014

Test Your TTAB Judge-Ability: Are READR and READER Confusable for Software for Reading Digital Magazines?

PixelMags sought to register the mark READR for "computer application software for mobile phones, portable media players and portable computers, namely, software for viewing digital magazines," but the PTO deemed the mark likely to cause confusion with the registered mark READER for "computer software for page recognition and rendering for use in viewing, printing, navigating, editing, annotating and indexing electronic documents, ... computer software for the encryption and access control of electronic documents." Applicant argued that the goods differ in purpose and that consumers will distinguish between them, and further that the words "read" and "reader" are used so frequently for software that consumers will recognize even small difference between marks. How do you think this came out? In re PixelMags, Inc., Serial No. 85379299 (June 12, 2014) [not precedential].


Applicant argued that its software is used for viewing magazines, whereas registrant's software enables users to read and print pdf files. Examining Attorney Dannean J. Hetzel maintained that the term "electronic documents" in the cited registration is broad enough to encompass "digital magazines." The Board agreed with the examining attorney.

As to the marks, applicant urged that READR is and "unfamiliar, coined term," whereas READER is a well-known word. The Board, not surprisingly, saw READR as a misspelling of READER. The marks are similar in appearance and, as applicant conceded, identical in sound. Both marks convey the idea that the software functions as a reader. "Given these similarities, the marks engender substantially similar overall commercial impressions."

Applicant submitted more than 60 third-party registrations for marks containing the words READ or READER, but they were of little probative value. There was no evidence of the nature or extent of use of those marks, nor do their existence on the register justify the registration of another mark that is likely to cause confusion. Moreover, none of the third-party registrations is as close to the cited mark as is applicant's mark.

The third-party registrations do show, however, that "the commonly registered term “reader” has a suggestive or descriptive significance for computer software such that differences between two marks may be sufficient to render the marks as a whole distinguishable." Here, however, the two marks are "extremely close," and even weak marks are entitle to protection against a similar mark for closely-related goods.

Resolving any doubt in favor of the prior registrant, the Board found confusion likely, and it affirmed the refusal.

Read comments and post your comment here.

TTABlog note:  The cited registration, owned by Adobe Systems, issued in 2002. Do you think READER is generic for magazine-reading apps? Would Section 18 be of any use to applicant?

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 6/13/2014   2 comments

Thursday, June 12, 2014

TTAB Overrules Disclaimer Requirement for BENEDIKTINER for Beer and Food Services

The PTO examining attorney required disclaimer of the word BENEDIKTINER in the mark shown below [WEISSBIER disclaimed], for beers and for "services for providing food and drink, namely, providing of food and drink; temporary accommodation, namely, providing temporary housing accommodations," maintaining that the word is merely descriptive of the goods and of a feature of the services. Applicant BEDA refused to comply and, when the final refusal was issued, appealed to the TTAB. The Board reversed the refusal to register. In re BEDA Investments GmbH, Serial No. 79107074 (June 10, 2014) [not precedential].


Applicant BEDA conceded that the English translation of BENEDIKTINER is "Benedictine." The Examining Attorney relied on a dictionary definition of Benedictine as a noun meaning "A monk or nun belonging to the order founded by Saint Benedict of Nursia." In adjectival form, the Board noted, Benedictine means "of or relating to St. Benedict of Nursia: of or relating to the Benedictines."

Applicant BEDA also stated that it is part of a brewery called Bitburger Braugruppe, which has entered into a joint venture with the Benedictine Order of Ettal for the production of beer. That led to the Examining Attorney's position that the word BENEDIKTINER "immediately tells consumers an important fact about the source of applicant’s beer and the beer featured in its food and beverage provision services."

The essence of the Examining Attorney’s position appears to be that the term BENEDIKTINER informs the purchaser that: (a) the beer originates in a Benedictine monastery or is made by Benedictine monks; (b) it was brewed according to Benedictine traditions, recipes, and techniques; and (c) the money earned from the sale of the beer supports Benedictine monasteries and their charitable endeavors.

As to the first point, the Board opined, the fact that the word BENEDIKTINER conveys to customers that the goods originate in a Benedictine monastery or are made by Benedictine monks does not render the term merely descriptive. Instead, according to the evidence, the term functions as a source-indicator for a single monastic order under the worldwide control of (as Applicant contends) "a single Benedictine Confederation."

As to the second point, the evidence did not establish that consumers would perceive the designation “Benedictine” as indicating that the beer possesses any particular attributes, or that BENEDIKTINER merely describes the traditions, recipes or techniques underlying the brewing of Applicant’s beer.

As to the third point, "the fact that the mark tells consumers that the entity selling the goods profits from the sales does not make the mark descriptive or even suggestive of the purpose of the goods unless it otherwise describes them."

Under the same reasoning, since BENEDIKTINER is not merely descriptive of beer, it is not merely descriptive of services featuring beer, nor is it merely descriptive of the provider of those goods or services.

And so the Board reversed the refusal.

Read comments and post your comment here.

TTABlog note:  I needs a drink.

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 6/12/2014   0 comments

Wednesday, June 11, 2014

Applicant Avoids Disclaimer of "EZ" Via Transferred Distinctiveness From Prior Registrations

Applicant DEQ sought to register the mark shown immediately below, for card games, gaming tables, and the like [NO COMMISSION and PAI GOW disclaimed], but the Examining Attorney required a disclaimer of "EZ." When DEQ declined to comply, the PTO refused registration. DEQ pointed to two prior registrations for EZ-containing marks, but the Examining Attorney maintained that direct evidence of acquired distinctiveness was required in view of the "highly descriptive" nature of EZ. The Board reversed. In re DEQ Systèmes Corp., Serial No. 85315739 (June 4, 2014) [not precedential].


In order to be eligible for a claim of acquired distinctiveness, a part or element of a mark must create a distinct commercial impression apart from the other elements of the mark. Here, EZ is presented in a larger font size than the other words in the mark, and those other words are descriptive. The design elements, and particularly the yellow and gold disk in lighter shading than EZ, serve to reinforce that separate and distinct nature of EZ. Therefore, Applicant DEQ may make a claim of acquired distinctiveness for that element.

As to whether EZ has acquired distinctiveness, the Board pointed to Rule 2.41(b), which provides that "in appropriate cases, ownership of one or more prior registrations on the Principal Register of the same mark may be accepted as prima facie evidence of distinctiveness." When a portion of a mark is involved, the portion in the application must be the same as or the legal equivalent of the corresponding portion of the prior registration. Two marks are legally equivalent when a "consumer would consider them both the same mark." Of course the goods must be the same, or related, for the two marks.

The mark of the first registration on which DEQ relied is set out immediately below; the registration covered card games, game tables, and the like. The second registration, for the standard character mark EZ BACCARAT, covered roughly the same goods. The word BACCARAT was disclaimed in both registrations. Neither registration included a disclaimer of, or a Section 2(f) claim for, the term "EZ."


The Board found the goods in the two prior registrations to be identical or highly similar to those of the subject application. The EZ in the second registration is the legal equivalent of the stylized version in the applied-for mark. As to the first registration, the stylized depiction of "EZ" conveys the same commercial impression as the stylized depiction in the applied-for mark. In other words, "the literal elements are identical and the stylization is not so great as to diminish or detract from the connotation or meaning of the term." The Board concluded that the "EZ" portions of the marks are legally equivalent.

The Board therefore found that the distinctiveness of "EZ" in the prior registrations transfers to the "EZ" portion of the applied-for mark, and it reversed the PTO's refusal, concluding that applicant's showing of acquired distinctiveness for that element was sufficient.

Read comments and post your comment here.

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 6/11/2014   3 comments

Tuesday, June 10, 2014

Reversing TTAB, CAFC Rules that Cubatabaco May Seek Cancellation of General Cigar's COHIBA Registrations

The U.S. Court of Appeals for the Federal Circuit has vacated the TTAB's decision dismissing a petition for cancellation of two registrations for the mark COHIBA for cigars. The Board ruled (here) that petitioner Cubatabaco lacked standing in view of the decision of the U.S. Court of Appeals for the Section Circuit in Empresa Cubana Del Tabaco dba Cubatabaco v. Culbro Corp., 399 F.3d 462 (2nd Cir. 2005). The CAFC held that the question of cancellation was not decided by the Second Circuit, and it concluded that Cubatabaco has a statutory "cause of action" that is not barred by the Cuban Assets Control Regulations (CACR). Empresa Cubana Del Tabaco v. General Cigar Co., Inc., 111 USPQ2d 1058 (Fed. Cir. 2014) [precedential].


In January 1997, Cubatabaco filed a Section 44 application to register the trademark COHIBA for cigars and related goods, based on its Cuban registration. As required, it stated that it had a bona fide intention to use the mark in commerce. The application was blocked under Section 2(d) by the General Cigar's two registrations for the same mark, and so Cubatabaco filed a petition for cancellation.

In October 1997, Cubatabaco obtained a special license from the Treasury Department to allow it to sue General Cigar over its use of the COHIBA mark. The district court enjoined further use of the mark by General Cigar and cancelled the two registrations, but the Second Circuit reversed, holding that the court could not grant Cubatabaco injunctive relief since that remedy would entail a prohibited transfer of property under the CACR because Cubatabaco would acquire ownership of the mark.

The cancellation proceeding then resumed and General Cigar moved for summary judgment on the grounds of lack of standing, and claim and issue preclusion. The Board granted the motion and entered judgment, but only on the ground of lack of standing. The Board reasoned that because Cubataco was deemed to have no property interest in the mark, it lacked standing to challenge registration of the same mark.

The CAFC saw the issue not as one of standing, but more appropriately as whether Cubatabaco had a cause of action. Because its application was refused registration over the two registrations, Cubatabaco had a real interest in cancelling the registrations and a reasonable belief that the registrations were causing it damage.

The CAFC observed that the TTAB "appears to have read [the Second Circuit's] decision as barring Cubatabaco from ever acquiring any property interest in the mark under the CACR." But the Second Circuit did not address the cancellation issue, and its decision on the non-availability of injunctive relief is irrelevant here. Cubatabaco is authorized to seek cancellation under the general license provided by CACR that allows Cuban entities to engage in transactions "related to the registration and renewal" of trademarks, including a petition to cancel a prior registration.

In seeking registration under 44(e), Cubatabaco was not required to show use of its mark; a bona fide intent to use the mark sufficed. It therefore has a legitimate interest in seeking cancellation of the registrations that are causing it damage by blocking its application. If Cubatabaco succeeds in the cancellation proceeding, it could obtain registration of the COHIBA mark. And so the CAFC ruled that Cubatabaco has a statutory cause of action under the Lanham Act to seek cancellation of the two registrations.

Although the Board declined to reach the questions of issue and claim preclusion, the CAFC chose to resolve those issues as well. It found that issue preclusion did not bar any of the grounds on which Cubatabaco sought cancellation: either the Second Circuit did not address the particular ground, or determination of the issue was not necessary to the judgment, or Cubatabaco had chosen not to pursue the issue, or the issues were not identical at the TTAB and the court. Claim preclusion did not apply because the Second Circuit did not render a final judgment on the merits of Cubatabaco's cancellation claims. Moreover, the transactional facts differed between the court and the TTAB.

The CAFC therefore vacated the Board's decision and remanded the case to the Board for further proceedings.

Read comments and post your comment here.

TTABlog note:  What happens if Cubatabaco gets a registration but is barred from using the mark? Will the mark go abandoned and the registration be subject to cancellation? Or will the CACR serve as a legitimate excuse for non-use?

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 6/10/2014   7 comments

Monday, June 09, 2014

Test Your TTAB Judge-Ability: Is "O-RING CONDOM" Merely Descriptive of Condoms?

William Thomas Mistler applied to register the mark O-RING CONDOM for condoms, but the PTO found the mark to be merely descriptive of the goods under Section 2(e)(1) [CONDOM disclaimed]. Mistler contended that terms "O-ring" and "condom" are the antithesis of each other: the former "is a hollow circular element that defines a passage," whereas the latter is a sheath-like element that prevents passage. How do you think this came out? In re Mistler, Serial No. 85700737 (June 4, 2014) [not precedential].

O-ring

The Examining Attorney relied upon dictionary definitions of "ring," "condom," "O-ring," and "sheath," on applicant’s patent, and on a portion of applicant's website.

Applicant’s U.S. Patent No. 7,673,632, is directed to "a condom having an indicia indicating the proper orientation for use."

Preferably, the indicia is a fluorescent marking disposed on the inner side of the condom disposed at a location so that, when the condom is in the rolled configuration, the indicia is visible from the lower side only. More preferably, the indicia is a ring-shaped marking extending about the inner side of the tubular body. In this configuration, a user holding the condom can easily determine which is the upper side of the roll and which is the lower side of the roll. The user may then quickly orient the condom with the lower side facing toward the penis and unroll the condom in the proper direction.

According to Mistler's website, "O-Ring Condoms are designed for exceptionally quick and easy application. O-Ring Condoms feature a patented luminescent ring on the underneath side of the rolled condom, which can be seen in the daytime and nighttime. When the luminescent ring is facing down towards the body, the condom is ready to unroll."

60 = luminescent indicia

The Board noted that the dictionary evidence consistently defined “O-ring” as a gasket or rubber ring used as a seal in connection with machinery. Applicant's ring is not an O-ring. Moreover, there was no evidence that competitors have a need to use the term “O-ring” to describe their condoms.

The Board therefore reversed the refusal.

Read comments and post your comment here.

TTABlog note:  So how did you do?

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 6/09/2014   1 comments

Friday, June 06, 2014

TTAB Reverses Section 2(e)(4) Surname Refusal of ROMANÓV for Decorative Eggs

The Board reversed a Section 2(e)(4) refusal to register the mark ROMANÓV for decorative eggs made of precious metals, jewelry, and picture frames, finding that the mark is not primarily merely a surname. The rareness of the surname "Romanov," coupled with its historical significance as the name of the imperial dynasty that ruled Russia for centuries, convinced the panel majority that the refusal must be reversed. Judge Seeherman concurred in the result, but would have based the ruling solely on the rareness of the surname. In re The Hyman Companies Inc., Serial No. 85483695 (June 4, 2014) [not precedential].

Peter the Great

The Examining Attorney contended that ROMANÓV is a common surname, based on "100+ Results" from the 411.com Free Directory Assistance website. The Board assumed that 100+ meant just over 100, and therefore concluded that ROMANÓV is not a common surname, but rather a rare one. It noted the "Baik" decision, wherein a surname with 456 listings was found to be an "extremely rare surname."

Applicant Hyman contended that ROMANÓV is not merely a surname because it is a name of historical significance, identifying the House of Romanov, the imperial dynasty that ruled Russia from 1613 to 1917. The examining attorney maintained that ROMANÓV has "no dictionary meaning" and no significance other than as a surname, and further that its reference to the Russian dynasty merely increases the likelihood that consumers would see the word as a surname.

The Board pointed out that the Examining Attorney's own evidence included dictionary definitions of "Romanov," referring to the Russian ruling dynasty.

Simply put, the term ROMANÓV has significance apart from a surname as the designation of the Russian imperial dynasty. This is especially true when considered within the context of Applicant’s identified goods, ... items associated with royalty, and in particular the Romanov imperial dynasty.

The Board observed that no one associated with applicant has the surname ROMANÓV, and that the term has the look and sound of a surname, in particular a Russian surname.

Concluding that the PTO had failed to demonstrate that the applied-for mark is primarily merely a surname, the Board reversed the refusal.

Judge Seeherman, concurring, would have treated ROMANÓV as an extremely rare surname, and on that basis alone would have reversed the refusal. Judge Seeherman's position on Section 2(e)(4) remains consistent with her concurrence in  In re Joint-Stock Company "Baik", 84 USPQ2d 1921, 1924 (TTAB 2007), in stating that the purpose behind Section 2(e)(4) is to keep surnames available to those who wish to use their own names. If a surname is extremely rare, she reasoned, it is also extremely unlikely that someone other than applicant will want to use the surname for the goods or services of the applicant. [TTABlogged here].

Read comments and post your comment here.

TTABlog note:  Do you think that most Americans ever heard of the ROMANÓV dynasty? How about most Americans interested in purchasing decorative eggs?

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 6/06/2014   7 comments

Thursday, June 05, 2014

Test Your TTAB Judge-Ability On This Section 2(d) Refusal of ORGASMIC for Sex Education Books

Applicant Edward Kenneth Watson applied to register the mark ORGASMIC for "books in the field of sex education" but the PTO refused registration under Section 2(d), finding the mark likely to cause confusion with the registered mark ORGAZMIK for adult entertainment DVDs and other recordings, and for retail stores services in the field of adult entertainment. The marks are certainly close, but what about the goods and services? How do you think this came out? In re Watson, Serial No. 85775921 (June 3, 2014) [not precedential].


The Board found them to be phonetically equivalent and visually quite similar. ORGAZMIK would be seen as a misspelling of ORGASMIC, and therefore the two marks create the same commercial impression of extreme sexual pleasure. Thus the first duPont factor favored a finding of likely confusion.

Applicant Watson contended that ORGASMIC is a weak mark, pointing to 10 third-party registrations for marks that include the word ORGASMIC or ORGASM for goods/services similar or related to those at issue. Several of the registrations included a disclaimer of ORGASM. The Board agreed with Watson that the term ORGASMIC is highly suggestive of the involved goods and services. However, the two marks at issue here are more similar to each other than to any of the third-party marks. The Board concluded that the conceptual weakness of the marks limits the scope of protection to which the are entitled.

As to the relatedness of the goods/services, the Examining Attorney submitted a number of third-party registrations, but only one or two covered both sexual education books and recordings featuring adult entertainment. Applicant Watson submitted an affidavit attesting that there is no overlap in the involved goods and services, and no overlap in channels of trade. The Board concluded that the goods and services are unrelated and travel in different channels of trade.

As to customer sophistication, the prices of the involved goods and services would not suggest a high degree of purchaser care, but consumers may exercise some care vis-a-vis these personal goods. The Board deemed this factor to be neutral.

Balancing the relevant duPont factors, the Board found no likelihood of confusion, and so it reversed the refusal.

Read comments and post your comment here.

TTABlog note:  So how did you do?

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 6/05/2014   2 comments

Wednesday, June 04, 2014

Finding Proof of Acquired Distinctiveness Insufficient, TTAB Affirms Refusals to Register Fence Post Configurations

The Board affirmed two refusals to register the product configuration marks shown below, for "pre-assembled plastic fence panels," on the ground that the applicant failed to carry its "heavy burden" to prove acquired distinctiveness. In re Barrette Outdoor Living, Inc., Serial Nos. 85389360 and 85389763 (May 30, 2014) [not precedential]



Wal-Mart teaches us that product configurations can never be inherently distinctive. In order to achieve registration for a product configuration mark, applicant must prove acquired distinctiveness, and the burden is a "heavy" one. In re Ennco, 56 USPQ2d 1279, 1284 (TTAB 2000).

Applicant's evidence indicated that some three million units of the first product have been sold since 2004, for at least $130,600,000 in revenue, and applicant spent at least $1,300,000 on advertising for the products. As to the second product the numbers were similar. These products have been sold at such stores as Lowe's, Home Depot, True Value Hardware, and Ace Hardware.

Although it found these numbers impressive, the Board nonetheless found the evidence insufficient to show acquired distinctiveness. The figures may demonstrate the popularity of the products but they are "not probative of purchaser recognition of a configuration as an indication of source." There was no evidence showing a connection of either product's design and its source.

Applicant's advertising touted the measurements, material, color, and accompanying hardware for the fences, and referred to one configuration as "classic styling." A "classic styling" would likely be seen by customers as "typical" or "standard" and not as a source indicator. As to the other fence section, the advertising touted its "privacy" and "low maintenance," but did not highlight any of the features shown in the application drawing. And significantly, there was no evidence of any "look for" advertising.

Moreover the designs of the subject fence panels are not particularly unique. Website evidence depicted similar third-party designs, suggesting that applicant's use of its alleged marks was not substantially exclusive.

Despite applicant's use of these two alleged marks for more than ten years, the Board concluded that applicant had not met its heavy burden to establish acquired distinctiveness. And so the Board affirmed the refusals to register under Sections 1, 2, and 45 of the Trademark Act.

Read comments and post your comment here.

TTABlog note:  For sure, not many product configurations make it past the Board.

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 6/04/2014   0 comments

Tuesday, June 03, 2014

Precedential No. 25: Finding ASSHOLE REPELLENT for Gag Gift to Be Vulgar, TTAB Affirms 2(a) Refusal

The Board affirmed a refusal to register the mark ASSHOLE REPELLENT for an "amusement device, namely, a can with a spray top used as a gag gift and sold as a unit," finding the mark to be scandalous and immoral. Applicant Anthony Michalko argued that the word "asshole" is no longer scandalous but at most "impolite." However, dictionary definitions and Internet evidence convinced the Board that the word remains a vulgar slang term. In re Michalko, 110 USPQ2d 1949 (TTAB 2014) [precedential].


To prove that a mark is scandalous, it is sufficient for the PTO to show that a term is vulgar. Dictionary definitions labeled "asshole" as "vulgar," "offensive," "rude and derogatory." According to Vocabulary.com:

Asshole is a vulgar (dirty) slang word. Besides the literal meaning, it’s a common word for a jerk or idiot. If you call someone an asshole, they’re probably doing something not just stupid and annoying, but mean. Like all slang words and obscenities, this is a word you need to be careful about using. Saying asshole in class, in a paper, at a job interview, or even on television could get you in serious trouble. If you’re not alone with your buddies, stick to a safer word like jerk or doofus. [Personally, I think doofus is too feeble; jerk better captures the nastiness angle without being vulgar - ed.]

The Board found that the dictionary evidence overwhelmingly supported Examining Attorney Keri-Marie Cantone's contention that "asshole" is vulgar. Dictionary definitions alone may suffice to establish that a proposed mark is scandalous when all definitions deem the term as vulgar.

Applicant Michalko pointed to database search results demonstrating that widely-read publications use the term "asshole,' and he further noted that many book titles include that term. In other words, "asshole" might once have been scandalous, but not under modern standards of usage.

The Board, however, pointed out that a term does not lose its profane meaning just because it is used more frequently. The dictionary definitions and Internet excerpts showed that the collective understanding deems "asshole" as vulgar.

In sum, the PTO established a prima facie case that "asshole" is a vulgar and offensive term to a substantial composite of the general public, and applicant's evidence did not overcome that prima facie case.


Read comments and post your comment here.

TTABlog note:  Where can I get some ASSHOLE REPELLENT you may ask? Why, at Amazon.com: here. I bought a case.

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 6/03/2014   5 comments

Monday, June 02, 2014

TTABlogger on Two "IP Fridays" Podcasts

People tell me I have a face for radio (see photo below) and a voice for blogging (witness the two podcasts linked here). Rolf Claessen asked me to talk about the TTAB for his IP Fridays podcast series, and I did so here and here. [P.S. I'm not happy that I look like Mitch McConnell in this selfie].

TTABlogger, Rolf Claessen
.
Read comments and post your comment here.

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 6/02/2014   1 comments

TTAB Posts June 2014 Hearing Schedule

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



June 5, 2014 - 2 PM: Real Sitio de Ventosilla, S.A. v. Pagos del Rey, S.L., Opposition No. 91201741 [Section 2(d) opposition to registration of PAGOS DEL REY for wine in view of the registered mark PRADOREY for wine].


June 11, 2014 - 2 PM: Swatch AG v. The Spark Agency, Inc., Opposition No. 91190380 [Opposition to registration of SW:TCH for marketing and promotional services, on the ground of likelihood of confusion with the mark SWATCH, registered for "advertising agencies" and used for marketing and advertising services].


June 12, 2014 - 11 AM: In re New York Football Giants, Inc., Serial No. 85599795 [Section 2(d) refusal to register G-MEN for "shirts; t-shirts; tops" in view of the registered mark GMAN SPORT for "boxer shorts; socks; t-shirts; tank tops”]. 


June 17, 2014 - 11 AM: North American Medical Corporation v. Axiom Worldwide, Inc., Opposition No. 91171054 [Opposition to registration of the mark WE SELL SCIENCE for medical devices, on the ground of likelihood of confusion with the allegedly previously-used, identical mark for medical devices].


June 17, 2014 - 2 PM: Hakoba Sarees, Inc. v. Pioneer Embroideries Limited, Opposition No. 91171969 [Opposition to registration of the mark HAKOBA, in the stylized from shown below, for textile fabrics and cloths, on the ground of likelihood of confusion with the previously-used mark HAKOBA for the same goods].    


June 19, 2014 - 2 PM: In re Tigerland-Foxland Ltd., Serial No. 85130889 [Refusal to register VENEZIA-MILANO for women's clothing on the ground that the mark is primarily geographically deceptively misdescriptive under Section 2(e)(3)].


June 24, 2014 - 11 AM: McDonald's Corporation v. Joel D. Joseph dba Joseph Brands, Opposition No. 91194117 [Opposition to registration of BioMcDiesel for biodiesel fuel, on the grounds of likelihood of confusion with, and likely dilution of, opposer's "Mc" family of marks, and lack of bona fide intent].



June 24, 2014 - 2 PM: In re The North Face Apparel Corp., Serial No. 85216056 [Refusal to register them mark CRADLE for footwear on the grounds of mere descriptiveness under Section 2(e)(1) and likelihood of confusion with the registered mark DYNAMIC CRADLE for athletic footwear [CRADLE disclaimed].



June 26, 2014 - 2 PM: In re Flexi-Van Leasing, Inc., Serial Nos. 853615663 and 85363291 [Section 2(d) refusal to register FLEXI-VAN for "Leasing of motor vehicles; Leasing of vehicles; Rental of motor vehicles; Rental of traction vehicle and trailers; Rental of vehicles; Vehicle rental” on the ground of likelihood of confusion the registered mark FLEXI for "rental of land, air and sea vehicles"]. 


Read comments and post your comment here.

TTABlog note: Any predictions?

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 6/02/2014   12 comments