Monday, June 02, 2014

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.


At 9:16 AM, Anonymous Gene Bolmarcich, Esq. said...

I find the G-Men case extremely interesting and one that should cause the Board a lot of concern. The "famous junior applicant" cases (few that there are) have always bothered me just because there seems to be no way to get into evidence the fame of the junior mark (we all know it's irrelevant in a registration context). Despite the rule that marketplace realities do not matter, Applicant's arguments in the briefs in this case do not much more than discuss marketplace realities. I can't wait to see how the Board manipulate the law to allow the G-men to win (or maybe they are Redskins fans??)

At 9:42 AM, Anonymous Gene Bolmarcich, Esq. said...

the other very interesting issue and, I think, one of first impression, is whether the considered connotation of a mark can be a trademark meaning as opposed to a dictionary meaning. I recently argued against a 2(d) refusal by saying that the cited mark clearly means a famous third-party trademark (for unrelated goods, but because the mark had no relation to the goods at issue, that famous mark would clearly come to mind whereas our mark wouldn't). Applicant's argument in this case boils down to "their mark is 'GMAN' (whatever that means if anything) and our mark CLEARLY refers to the Giants" (feels right, but also circular?). Of course the only non-trademark meaning of G-Men (that I am aware of) is a government agent. So many novel issues in this case, the Board better not disappoint!

At 10:40 AM, Blogger John L. Welch said...

I don't understand your reasoning. The application is for a standard character mark for t-shirts. Nothing in the i.d. restricts it to t-shirts relating to a football team. Secondly, I never heard of the term "G-Men" as referring to the NY football Giants. I think this is an easy case for the Board and a loss for the Giants.

At 3:22 PM, Anonymous Gene Bolmarcich, Esq. said...

A survey taken in NY would show that 100% of the residents are well aware of G-Men as the famous nickname of the Giants football team. It's probably even "famous" among football fans nationwide.
I wasn't making any arguments but merely noting that while this should be an easy case for the Giants to win because nobody seeing G-Men on a football shirt would confuse it with GMAN (brand shirts), it nonetheless poses great difficulty for the Giants because of the reasons why nobody will be confused mostly fall outside the four corners of their application (i.e., everyone knows G-Men means Giants, it's a strong mark, it's always used with the NFL house mark...). I can't imagine the Board not finding a way to allow the Giants to register this very well known mark.

At 3:26 PM, Anonymous Gene Bolmarcich, Esq. said...

Concerning the i.d., although it doesn't refer to "football" jerseys, the argument is that this would be inferred from the clear meaning of G-Men (being a football team). I'm not saying this will win the day, but just noting that this is the argument being made and it will be interesting to see if the Board goes with it. Since connotation has to be considered, and the connotation of G-Men is the New York Giants football team, isn't this and easy case of the marks having completely different connotations, so GIANTS WIN! (oops, not football season yet)

At 5:18 PM, Blogger John L. Welch said...

Gene: I've been a football fan for years (Bears, Patriots) and I never heard of the Giants referred to as G-Men. To me, G-Men refers to Elliot Ness, et al.
In any case, Ringo Starr tried this "fame" argument a few years ago, to no avail:
The Las Vegas oddsmakers are making the PTO the prohibitive favorite on this appeal.

At 6:11 PM, Anonymous Gene Bolmarcich, Esq. said...

I can only assume that it's been banned in Boston! I'm being quite sincere when I continue to insist that every Giants fan calls them the G-Men (I'm a New Yawka, so my perspective is biased). Thanks for the Ringo case. That was my point (I may be typing too fast to be as clear as I could be with my main point). I realize that this is not a valid argument but hoping against hope that this might change (why shouldn't fame of the "junior" mark matter if fame of the senior mark does...putting aside reverse confusion). Anyway, there still remains the question whether one can consider "trademark meanings" when looking at the connotations of marks...assuming G-Men unequivocally "means" the NY Giants (at least when seen on a shirt with other indicia of football), then the argument goes, nobody would confuse it with GMAN. Perhaps this is another way of arguing the same point that has been routinely rejected (as in Ringo). In fact this argument can be made in every case where a mark with some recognition is blocked by an earlier mark ("my mark calls to mind "my mark" and theirs does not").

At 11:23 PM, Anonymous Orrin A. Falby said...

Gene, the GIANTS referred to themselves as the G-MEN. The record below clearly shows this. This case could be determined solely on the commercial impression factor. I think that the NFL should have introduced the dictionary definitions for G-MAN (not sure that they did not put this evidence in). I also looked at the cited registrant's website and an argument could be made that it is trying to evoke the urban meaning of "G",i.e., ganster. I am a little biased here because I looked at this case before the appeal for a friend and concluded that the commercial impression created by the marks in the context of their marketing is dissimilar. I would have stayed away from all the fame evidence though. I don't see how it applies in the ex parte context. I don't see that this is a tough case at all.

At 6:01 AM, Blogger John L. Welch said...

The marketplace context is irrelevant. Nothing in the Giants' application says that they can't or won't turned around tomorrow and change the marketing of the t-shirts. I expect the Board to focus on the marks and the goods, with no consideration given to "marketplace context." The goods overlap and the marks? G-men is the plural of GMAN. QED. Affirmed.

At 7:22 PM, Anonymous Orrin A. Falby said...

Sorry John. I disagree. See, ELVIS PRESLEY ENTERPRISES, INC. v. CAPECE,141 F.3d 188 (5th Cir. 1998) -- "The use of a mark in advertising is highly probative of whether the mark creates a likelihood of confusion in relation to another mark. "Evidence of the context in which a mark is used on labels, packages, or in advertising material directed to the goods is probative of the reaction of prospective purchasers to the mark." In re Abcor Dev. Corp., 588 F.2d 811, 814 (C.C.P.A.1978). Courts consider marks in the context that a customer perceives them in the marketplace, which includes their presentation in advertisements. See The Sports Auth., Inc. v. Prime Hospitality Corp., 89 F.3d 955, 962 (2d Cir.1996) (considering the appearance of the mark in advertising in determining similarity of marks); Nikon Inc. v. Ikon Corp., 987 F.2d 91, 94-95 (2d Cir.1993) (same); Oreck Corp., 803 F.2d at 171 (considering the presentation of the marks in advertising in determining the similarity of the marks and the defendant's intent); Sun Banks of Fla., Inc. v. Sun Fed. Sav. & Loan Ass'n, 651 F.2d 311, 318 (5th Cir.1981) (considering the presentation of the marks in advertising in determining the similarity of the marks); National Ass'n of Blue Shield Plans v. United Bankers Life Ins. Co., 362 F.2d 374, 378 (5th Cir.1966) (comparing marks as used in advertising in newspapers and on television where the black and white format did not allow for color distinctions); see also Sun-Maid Raisin Growers v. Sunaid Food Prods., Inc., 356 F.2d 467, 469 (5th Cir.1966) ("[I]t is the labels that the prospective purchaser sees. The trademarks cannot be isolated from the labels on which they appear.")."

At 7:33 PM, Blogger John L. Welch said...

Orrin, all but one of the cases you cite are infringement cases, having no relevance to inter partes TTAB cases. The remaining case, Abcor, is a mere descriptiveness case, not a Section 2(d) case. So I stand pat.

At 8:20 PM, Blogger John L. Welch said...

PS: a court is considering the issue of infringement based on what the defendant is actually doing, and what the plaintiff is actually doing, at a given point in time. At the TTAB, the Board looks only at the marks and the listed goods or services. The Giants could change the way they use the mark, or could even assign the mark to someone else, so the actual manner of usage by the Giants at any given time is irrelevant to the registrability issue.


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