Guest Post: Josh Jarvis, "The Trademark “Chaff” Quandary: PTO Report On Post-Registration Proof of Use"

My friend, Joshua S. Jarvis, of Foley Hoag LLP in Boston, has consented to my re-posting this article discussing the USPTO's recent report on its pilot study regarding post-registration proof of use - a study intended to "Assess the accuracy and integrity of the trademark register as to the actual use of the mark with the goods and/or services identified in the registration." This article originally appeared on Foley Hoag's Trademark and Copyright Law Blog. Take it away, Josh:

As any IP lawyer will readily admit, trademark practice before the United States Patent & Trademark Office (PTO) comes with its fair share of annoyances: inconsistent treatment of similar applications, unreasonably stringent identification requirements, and so forth. Another difficulty lies in what appears to be a large number of registrations subsisting on the federal register, past their initial maintenance filings, despite a high likelihood that such marks are no longer used, or have never been used, in connection with some or all of their identified goods and services.

Many of these problematic registrations have their roots in applications based on incoming foreign filings, which are exempt from proof of use requirements prior to registration. Although all such applications require a bona fide intent to use the mark in U.S. commerce in connection with all of the identified goods and services, as a practical matter some foreign applicants use this opportunity to “reserve” a trademark for vast swaths of goods and services (indeed, such a practice is common in many first-to-register jurisdictions).

Some trademark practitioners have expressed concerns that these broad registrations have a chilling effect on business innovation, littering the federal register with trademark “chaff” that prevents new, bona fide market entrants from registering their own marks.  In response to these concerns, and to assess the quality of its operations more generally, the PTO is conducting a pilot study related to post-registration proof of use.

Under current PTO practice, all registrants must submit a declaration of continued use between the fifth and sixth year after federal trademark registration. This submission typically requires a simple affidavit and a single specimen of use per class of goods or services, even if a given class recites a list of multiple goods or services.

Under the pilot study, the PTO has required more.  The PTO selected 500 registrations at random “to assess the accuracy and integrity of the trademark register as to the actual use of the mark with the goods and/or services identified in the registration.” Each registrant was asked to submit proof of use for two additional goods/services per class, in addition to the proof that had already been submitted.  If a registrant was unable to do so, the registration was subject to additional scrutiny and proof of use requirements.

With the study complete for 470 of the 500 registrations (94%), the program has revealed interesting results. In about half of the registrations, the registrants failed to pass the threshold proof of use requirements, resulting in either deletion of certain goods/services from the registration (34%) or cancellation of the entire registration (16%).  The PTO also separated the results by initial filing basis, as follows:

Basis for Registration	% of Registrations with Goods/Services Deleted	% of Registrations Receiving Notices of Cancellation
Section 1(a) (Use-Based)	27%	17%
Section 44(e) (Direct Foreign Filings)	56%	7%
Section 66(a) (Madrid-Based Filings)	61%	18%
Combined Section 1(a) and 44(e)	63%	13%

The results appear to confirm the common understanding among U.S. practitioners that incoming direct foreign filings (Section 44(e)) and Madrid-based foreign filings (Section 66(a)) are more likely to have goods and services on which the mark isn’t used, resulting in either deletion of those goods or cancellation of the registrations.  It is notable, however, that 44% of the use-based (Section 1(a)) filings were flawed in some respect, including 17% that were canceled entirely, indicating that post-registration issues are far from endemic to  registrations based on foreign filings.

In a prior roundtable discussion held by the PTO and George Washington University Law School, attendees proposed several potential solutions to mitigate the “chaff registration” issue, including:

• Creating a streamlined non-use “expungement” procedure that would be less involved than a typical cancellation action.
• Requiring specimens for all goods/services in maintenance filings.
• Increasing the “solemnity” of the declaration accompanying a maintenance filing, making registrants think twice before claiming use.
• Conducting random audits of maintenance filings, in a manner similar to the pilot study itself.

A streamlined non-use procedure is an interesting proposal — as the PTO report notes, such a proceeding is used in Canadian trademark practice.  Requiring specimens for all goods/services, however, may not be feasible given the PTO’s already limited resources, and could unduly burden both trademark registrants and practitioners — as a practical matter, random audits seem more viable. And I’m not convinced that increasing the solemnity of the continued use declaration would have any measurable effect.

A parallel issue that has been discussed among trademark practitioners is the quality of post-registration review more generally — unlike pre-registration proof of use, maintenance filings typically aren’t reviewed by attorneys, which may result in somewhat lenient proof of use analyses.  The 44% of use-based registrations that were flawed, including the 17% that were canceled entirely, suggests that there is significant room for improvement here.  The USPTO plans to hold another roundtable to discuss these issues, and in the meantime welcomes comments or additional proposals via e-mail at TMPolicy@uspto.gov.

Read comments and post your comment here.

Text Copyright John L. Welch 2014.

Test Your TTAB Judge-Ability: Are Sci-Fi and Comedy TV Shows Related?

Sherrilynn Kenyon applied to register the mark THE LEAGUE for science fiction films (class 9) and television programs (class 41), but the PTO refused registration under Section 2(d), finding a likelihood of confusion with the identical mark registered for "entertainment services in the nature of a television series featuring comedy." On appeal, Kenyon argued that television viewers are savvy enough to understand that science fiction and slapstick comedy emanate from different sources. How do you think this came out? In re Sherrilyn Kenyon, Serial No. 85396538 (July 9, 2014) [not precedential].

The fact that the involved marks are identical weighed heavily against applicant in the Section 2(d) analysis. When the marks are identical, it is necessary only that there be a viable relationship between the services at issue to support a finding of likely confusion.

Applicant Kenyon did not dispute, and third-party registrations demonstrated, that motion picture films and television programming are related to a television series - in other words, that's entertainment! But what about science fiction versus comedy?

Kenyon contended that the audiences for science fiction and comedy are vastly different. "Mr. Brooks, Mr. Mel Brooks, please pick up the white courtesy phone! - ed. ]. She maintained that her science fiction plots are "dark, violent stories taking place in a fictional universe." The Board, however, pointed out that its analysis of the applicant's goods and services is made without reference to extrinsic evidence regarding actual use: the Board must focus on the goods/services as identified in the application and cited registration.

Examining Attorney Bridgett G. Smith submitted eleven third-party registrations covering both science fiction and comedy entertainment services or DVDs in the television and film industries, thereby demonstrating that goods and services in both the science fiction and the comedy genres may emanate from the same source. She also provided a list of more than 100 "comic-science fictions films" from Wikipedia.

The Board therefore concluded that applicant's goods and services are similar or related to the services of the cited registration. Finding that the first two du Pont factors weighed in favor of a finding of likely confusion, and with no evidence regarding any other factor, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog note:  Is it fair to say that the Board operates in a fictional universe when assessing the relationship between involved goods/services? Are the results sometimes comedic? Do you think this case belongs in the "WYHA?" category?

Text Copyright John L. Welch 2014.

Reminder: ABA IP Section: TTAB Hot Topics, Boston, August 7th

Yours truly will be a panelist at the "TTAB Hot Topics" session of the ABA Annual Meeting in Boston, on August 7th from 8:30 to 10:00 AM at the Boston Marriott Copley Place Hotel. Register here. The session is hosted by the ABA Section of Intellectual Property Law. A brochure detailing the entire IP program may be downloaded here.

This session will feature a lively discussion, among experienced TTAB practitioners, on a variety of recent hot topics before the Board, including disparagement and the Washington Redskins case, procedural tips, functionality, accelerated case review, fraud after Bose, dilution, appeals to the Court of Appeals for the Federal Circuit and the District Courts, and more.

Erik M. Pelton, of Erik M. Pelton & Associates PLLC, Falls Church, VA, will serve as panel moderator.

Panelists are:

• Phillip Barengolts, Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, LLP, Chicago, IL 
• Rebeccah Gan, Young & Thompson, Alexandria, VA
• Elizabeth King, Conley Rose, Houston, TX
• John L. Welch, Lando & Anastasi LLP, Cambridge, MA

.

Precedential No. 34: TTAB Grants Motion to Strike Belated Supplemental Expert Report

In another decision involving the suddenly hot topic of expert witnesses and their reports, the Board granted an opposer's motion to strike a "supplemental expert report" submitted with applicant's notice of reliance. The Board observed that the document, in the form of a testimony declaration, was not eligible for submission via notice of reliance, and further that the report did not fall within the agreement between the parties allowing submission of expert declarations. Nor was the supplemental report merely an attempt to correct the expert's initial report. The supplemental report was therefore not timely submitted, nor was the failure to submit the report in timely fashion "substantially justified or ... harmless." Gemological Institute of America, Inc. v. Gemology Headquarters International, LLC, 111 USPQ2d 1559 (TTAB 2014) [precedential].

Applicant GHI submitted, as an exhibit to its notice of reliance, the "Supplemental Expert Report of Carole Chaski, Ph.D.," in order to rebut statements made during the testimony of opposer's expert. Testimony by declaration is not proper subject matter for introduction via notice of reliance. However, Rule 2.123(b) says that if the parties agree in writing, the testimony of a witness may be submitted in declaration form.

Stipulation: The parties stipulated to the admissibility of certain expert reports of three experts, including Dr. Chaski, but they did not stipulate to the admissibility of the Chaski supplemental report (which was not in existence at the time of the stipulations). The Board ruled that the stipulations of the parties, which referred to specific dated reports, did not encompass the Chaski supplemental report. There was no mention of supplemental reports in the stipulations.

FRCP 26(e)(1)(A): A party may supplement or correct its Rule 26 expert report "if the party learns that in some material respect the disclosure or response is incomplete or incorrect ...." Any changes to the information must be disclosed by the time the party's pretrial disclosures are due. FRCP 26(e)(2).

Supplementation means correcting inaccuracies or filling in an incomplete report based on information that was unavailable at the time of the initial disclosure. A supplemental report that seeks to clarify or provide new examples to bolster an expert opinion is not proper supplementation. Here, the Chaski supplemental report contained additional opinions intended to rebut the other side's expert testimony. Therefore it did not qualify as a supplemental expert report under Rules 26(e)(1)(A) and 26(e)(2).

FRCP 37(c)(1): An improper supplemental report may be excluded unless the failure to timely file the expert's opinion was "substantially justified or ... harmless." In making that determination, the Board is guided by the five-factor test adopted in Great Seats:

1) the surprise to the party against whom the evidence would be offered;
2) the ability of that party to cure the surprise;
3) the extent to which allowing the testimony would disrupt the trial;
4) importance of the evidence; and
5) the nondisclosing party's [or the late disclosing party’s] explanation for its failure to disclose the evidence.

Here the late disclosure did cause unfair surprise, the cure for which would be re-opening discovery to allow opposer to take an additional deposition of Dr. Chaski. That cure, however,, would be disruptive to the trial because discovery closed "long ago" and the main trial periods had been completed. While the Chaski supplemental report may be important, the parties had already stipulated to the admissibility of her original report and her original declaration testimony. Finally, applicant did not offer an adequate excuse for the delay in providing the supplemental report. The Board therefore concluded that the untimely disclosure of the supplemental report was neither substantially justified nor harmless.

And so the Board granted the motion to strike.

Read comments and post your comment here.

TTABlog note:  How often do you think this issue will come up in future cases?

Text Copyright John L. Welch 2014.

Precedential No. 33: Party Withdraws Designation of Testifying Expert Who Provided Report: No Deposition Allowed, Says TTAB

In this Section 2(d) opposition to registration of GAGA JEANS for jeans, when opposer noticed the discovery deposition of applicant's named rebuttal expert, applicant filed a motion for a protective order precluding the deposition on the ground that the expert was not a testifying expert witness. Applicant had, however, named that expert as a testifying expert and had provided an expert report to opposer, but it subsequently stated that the expert would not be testifying and that she was employed only to aid applicant in preparation for trial. The Board granted the motion and issued a protective order precluding the deposition. Ate My Heart, Inc. v. GA GA Jeans Limited, 111 USPQ2d 1564 (TTAB 2014) [precedential].

Opposer's Lady Gaga
Civ. P. 26(a)(2) as a trial expert it was entitled to take the expert’s deposition in order to “cross-examine [her] on both her rebuttal expert report and the raw data that appears to be an affirmative expert report ....” The question for the Board was "whether a witness who was identified as a testifying expert and who produced an expert report, can be redesignated as a non-testifying or consulting expert and thereby shielded from discovery." The Board said yes.

FRCP 26(b)(4)(A) provides that a party may depose an expert whose opinions may be presented at trial. FRCP 26(a)(2)(B) requires a report from such an expert. These rules are designed to allow the opposing party an opportunity to adequately prepare for cross-examination of the expert.

FRCP 26(b)(4)(D) states that a party may not discover the facts know by, or opinions of, an expert retained in anticipation of litigation or to prepare for trial and who is not expected to be called as a trial witness. This rule is designed "to promote fairness by preventing access to another party's diligent trial preparation." And there is obviously no need for the opposing party to prepare for the cross-examination of a non-testifying expert.

The Board observed that applicant has the prerogative of not calling this expert for her testimony. The Board found that applicant had, by its letter to opposer and its submission to the Board, redesignated this individual as a non-testifying expert.

The courts are split on whether discovery may be allowed for such a redesignated expert after the expert's opinion has been disclosed. One line of cases prevents discovery except in "exceptional circumstances" under Rule 26(b)(4)(D)(ii). The other holds that the submission of the expert "takes the expert out of the exceptional circumstances category of Rule 26(b)(4)(D)(ii) as the expert's opinions are now known." These courts apply a balancing test  that mirrors F. R. Evid. 403 (whether the probative value of the evidence is substantially outweighs the danger of unfair prejudice) in considering whether to allow the deposition of a redesignated expert.

The Board adopted the first approach: only under exceptional circumstances may a party depose a redesignated non-testifying expert. It noted that the need for cross-examination of the expert to avoid surprise at trial "is simply not implicated when a redesignated expert will not testify."

Here, opposer made no showing of exceptional circumstances under Rule 26(b)(4)(D)(ii), and so the Board granted the motion for a protective order, precluding opposer from deposing the re-designated expert.

Read comments and post your comment here.

TTABlog note:  How often do you think this issue will come up in a TTAB proceeding? For a case involving the question of whether a witness qualifies as an "expert retained or specially employed to provide expert testimony," and who therefore must provide an expert report, see the RTX Scientific case, TTABlogged here.

Text Copyright John L. Welch 2014.

Test Your TTAB Judge-Ability: Is VENEZIA-MILANO Geographically Deceptively Misdescriptive of Clothing?

The PTO refused to register the mark VENEZIA-MILANO for clothing on the ground that the mark is primarily geographically deceptively misdescriptive under Section 2(e)(3). Applicant's goods are made in China and are so labelled. How do you think this came out? In re Tigerland-Foxland Ltd., Serial No. 85130889 (July 23, 2014) [not precedential].

According to applicant's translation statement, VENEZIA-MILANO means "Venice-Milan." Applicant feebly contended that the primary significance of its mark is not a generally known geographic location because there is no actual place called "Venice-Milan" and purchasers will not dissect the mark. The Board agreed that it should consider the mark as a whole, but it found that MILANO is the dominant feature of the mark because of its stronger connection with the involved goods and the fashion industry. Adding the word VENEZIA merely reinforces the perception that the goods emanate from a city in Italy.

Although there is no actual place known as "Venice-Milan," that fact does not detract from the primary significance of the mark: the mark names a geographic location that is "not obscure, minor, remote, or not likely to be connected with the goods." Taken together, Milan and Venice suggest that the goods originate in Italy, specifically Milan and/or Venice.

Applicant conceded that its goods are not made in Milan or Venice. Of course, there is a goods/place association between the mark and the goods because, as readily established by Examining Attorney Susan C. Hayash, Milan is known as a center for fashion and Venice is one of Italy's major ports and a famous tourist attraction. So consumers will mistakenly believe that the goods come from either Milan or Venice.

Finally, this mistaken belief is a material factor in the purchasing decision because Milan is famous for women's clothing and a substantial portion of consumers who care about fashion will be motivated to purchase applicant's goods in the belief that they come from Milan. The addition of Venice to the mark does not detract from its overall impression: "the reference to Milan is unmistakable."

Applicant maintained that consumers would not be deceived because "its mark, as used on the goods, includes a label that reads 'China.'" The Board pointed out, however that the additional matter on the label is not part of the applied-for mark. In short, the mark stands on its own. It also observed that the specimen label submitted by applicant included the phrase "designation Italy."

Finally, the Board noted applicant's claim of acquired distinctiveness as of July 2006. However, because the applied-for mark is ineligible for registration under Section 2(e)(3), Section 2(f) is not available to applicant. Section 2(f) states that a mark found to be primarily geographically deceptively misdescriptive may be registered only if it "became distinctive of the applicant's goods in commerce before the date of the enactment of the North American Free Trade Agreement Implementation Act" (i.e., prior to December 8, 1993).

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog note:  So how did you do?

Text Copyright John L. Welch 2014.

Fame of "Mc" Family of Marks Propels McDonald's to 2(d) Victory Over "BioMcDiesel" for Fuel

The fame of its "Mc" family of marks propelled McDonald's Corporation to a Section 2(d) victory in its opposition to registration of the mark BioMcDiesel, in standard character form, for "biodiesel fuel." The Board declined to reach McDonald's dilution and lack-of-bona-fide-intent claims. McDonald’s Corporation v. Joel D. Joseph, Opposition No. 91194117 (July 14, 2014) [not precedential].

Applicant Joseph, appearing pro se, conceded that McDonald's owns a "Mc" family of marks for food products and restaurant services, that McDonald's and has used the "Mc" formative in connection with a variety of non-food related services, and that consumers associate terms including "Mc" with McDonald's. The testimony and evidence also demonstrated the existence of a "Mc" family of marks.

Applicant also admitted that the "Mc" family of marks is famous and was famous long prior to his application filing date. The record evidence corroborated the fame of the "Mc" formative. McDonald's operates 14,500 restaurants in the United States and served 28 million customers per day. Media usage and public recognition of the "Mc" formative compelled a finding of fame.

Applicant's good, biodiesel fuel, may be made from used fryer grease, known as yellow grease. McDonald's is one of the largest sellers of yellow grease, and it promotes its sustainability programs, including its recycling efforts, on its website. The media has recognized McDonald's for its recycling program, including use of yellow grease as biofuel.

McDonald's submitted five third-party registrations for marks covering both restaurant services and gasoline or fuel (e.g., CHEVRON, BP, COSTCO), as well as evidence that it has been sharing locations with gas stations since 1993 (some of which sell biofuel).

Although we cannot conclude from this evidence that biodiesel fuel and restaurant services in general are related, it is sufficient to show that there is a relationship between gas stations and food service/restaurants, and particularly between Opposer’s restaurants, the food it ems served in those restaurants, and its yellow grease, and fuel, such that relevant consumers, when confronted with the use of Applicant’s BioMcDiesel mark for biodiesel fuel, would be likely to believe that there is an association as to source between that biodiesel fuel and Opposer’s restaurant services and related food products.

Applicant Joseph stated his intention to sell biofuel nationwide at retail gas stations. Thus ordinary consumers may be customers for both applicant's product and McDonald's restaurant services.

As to the marks, the Board noted that "Mc" is not the first syllable in the applied-for mark, but the evidence showed that McDonald's similarly uses "Mc" in such forms as EGGS McMUFFIN, CHICKEN McNUGGETS, and SAUSAGE McMUFFIN. And although DIESEL is not a food product, the use of DIESEL as the suffix word in applicant's mark follows the structure of McDonald's family of marks. "[B]ecause of the fame of Opposer’s 'Mc' formative family of marks, when third parties use the 'Mc' formative, it engenders a similar commercial impression as Opposer’s 'Mc' formative family of marks.

Pointing out that a newcomer "has the clear opportunity, if not the obligation, to avoid confusion with well-known marks of others," the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

TTABlog note:  There was no explanation as to why the applicant choose to include "Mc" in his mark.

Text Copyright John L. Welch 2014.

Test Your TTAB Judge-Ability on This 2(d) Refusal of DASH DOG WASH & Design

The PTO refused registration of the mark DASH DOG WASH and Design, shown first below, for various pet-related services, including dog washing and grooming [DOGWASH disclaimed], deeming the mark likely to cause confusion with the registered mark SPLASH AND DASH FOR DOGS & Design, second below, for dog grooming services [FOR DOGS disclaimed]. Applicant appealed from the refusal, claiming that the marks are too different. Was it barking up the wrong tree? In re The Franchise Group Pty Ltd., Serial No. 79122789 (July 2, 2014) [not precedential].

The Board found the involved services to be, in part, legally identical, and it therefore presumed that the those services are offered in the same channels of trade to the same classes of consumers.

The Examining Attorney maintained that the marks are similar because they each contain the word 'DASH' along with a 'dog' formative term, and further because each includes a water drop design. Applicant argued that the marks contain different words and different designs, thereby creating different commercial impressions. Moreover, according to applicant, "the matter common to the two marks is weak, and should be accorded a narrow scope of protection." The Board noted that the word "dog" is generic for the involved services and the word "dash" suggests that the dog grooming services are provided quickly. [To me, "dash" suggests "daschund" - ed.].

Applicant pointed to third-party website evidence showing use of the word "dash" in several trademarks for dog grooming services: K-9 SPLASH & DASH, DOGGY DASH, DOGGIE BATH & DASH, BATH & DASH, and BATH N DOGGIE DASH LLC. The Board found this to be persuasive evidence, under the 6th du Pont factor, that "dash" is a weak term in the dog-washing field. And so the Board concluded that the scope of protection to be accorded the common portion of the marks is narrow.

Looking at the marks in their entireties, the Board found the design portions to be very different overall. Moreover, the literal portions - which are the portions of the marks most likely to be remembered - have very different commercial impressions: "the word DASH versus the phrase SPLASH AND DASH which consumers would not likely abbreviate to just the word DASH." Given the weakness of the word "dash," consumers may be expected to look to other portions of the marks to distinguish source.

The Board concluded that the differences in the marks create different commercial impressions sufficient to distinguish the marks, and this first du Pont factor was pivotal in the reversal of the refusal.

Bloggsie
Read comments and post your comment here.

TTABlog note:  So how did you do?

Text Copyright John L. Welch 2014.

Fame of "POST-IT" Mark Yields 2(d) Opposition Victory over "FLAG-IT!"

Opposer 3M stuck it to Applicant Professional Gallery, Inc. in this opposition to registration of the mark FLAG-IT! for "adhesive-backed labels; adhesive-backed plastic film designating signatory action." The Board found the applied-for mark likely to cause confusion with the registered mark POST-IT for various stationery products, including note pads containing adhesive on one side of the sheets for attachment to surfaces. The fame of the POST-IT mark was the dominant factor, with the Board rejecting applicant's principal argument that the marks are not confusingly similar. 3M Company v. Professional Gallery, Inc., Opposition No. 91173411 (July 17, 2014) [not precedential].

Fame: 3M began using the mark POST-IT for sticky note pads in 1980, expanding the product line in 1987-88 to include adhesive flags. Annual sales of these products have been substantial and 3M is the market leader in both product areas. It spends millions of dollars per year in promoting these products and the brand has often been mentioned in unsolicited media coverage. The Board had no doubt that POST-IT is a famous mark for sticky notes, and it concluded that because sticky flags are so similar, that fame "spills over onto POST-IT for flags." Of course, the fame factor carried heavy weight in the du Pont analysis.

The Marks: Because the goods of the parties were found to be legally identical, a lesser degree of similarity between the marks is needed to support a finding of likely confusion. Furthermore, the Board must presume that the goods travel in the same, normal channels of trade to the same classes of consumers.

Applicant adhered to the argument that the differences in the marks make confusion unlikely, particularly in view of the weakness of the "IT" suffix. It (applicant) pointed to more than 100 third-party applications and more than 1,200 registrations for marks containing the element "IT." The Board found most of this evidence "not particularly probative" because applicant did not prove that the marks are in use or that the public is familiar with them. Moreover, few of those registrations involved goods similar to the products involved here, and even when the products were similar the Board was unable to conclude that "it" has any significance with regard to the involved goods "other than as an indefinite pronoun that, when combined with a verb, indicates that 'it' is the recipient of the action."

Third-party website pages likewise failed to convince the Board that consumers will distinguish the mark FLAG-IT! from POST-IT when used on identical adhesive flags. Many of the goods were not similar to the goods involved here, and some of the marks themselves were not similar to applicant's and opposer's marks.

Although Applicant has submitted hundreds of webpages from various websites, in point of fact there are only a very few webpages that can be regarded as showing the use of similar marks on even arguably similar goods. Further, there is no evidence of third-party marks ending in IT for sticky notes or flags.

The Board also noted that 3M has had some success in policing its mark vis-a-vis a number of third-party marks.

And so the Board concluded that applicant "has not demonstrated that the 6th du Pont factor [the strength of the mark] should weigh in its favor." [Doesn't opposer have the burden of proof here? - ed.].

Comparing the marks in their entireties, the Board found that consumers would consider POST-IT and FLAG-IT! to be similar in appearance and pronunciation. "The beginning elements, POST and FLAG, rather than being seen as identifying separate sources for the goods, will be understood as merely identifying different activities that can be done with the goods." Moreover, 3M has frequently used the word "flag" in advertising its POST-IT products, which "reinforces the connection of its mark with flag."

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

Read comments and post your comment here.

TTABlog note:  I wonder how the FLAG-IT! mark got past the examining attorney? I note that the Board pooh-poohed applicant's computer search results because the results depend on the "logarithm by which the results are depicted." (p.21). Shouldn't that be "algorithm"?

Text Copyright John L. Welch 2014.

ABA IP Section: TTAB Hot Topics, Boston, August 7th

Yours truly will be a panelist at the "TTAB Hot Topics" session of the ABA Annual Meeting in Boston, on August 7th from 8:30 to 10:00 AM at the Boston Marriott Copley Place Hotel. Register here. The session is hosted by the ABA Section of Intellectual Property Law. A brochure detailing the entire IP program may be downloaded here.

This session will feature a lively discussion, among experienced TTAB practitioners, on a variety of recent hot topics before the Board, including disparagement and the Washington Redskins case, procedural tips, functionality, accelerated case review, fraud after Bose, dilution, appeals to the Court of Appeals for the Federal Circuit and the District Courts, and more.

Erik M. Pelton, of Erik M. Pelton & Associates PLLC, Falls Church, VA, will serve as panel moderator.

Panelists are:

• Phillip Barengolts, Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, LLP, Chicago, IL 
• Rebeccah Gan, Young & Thompson, Alexandria, VA
• Elizabeth King, Conley Rose, Houston, TX
• John L. Welch, Lando & Anastasi LLP, Cambridge, MA

.

Test Your TTAB Judge-Ability on These Three Section 2(d) Refusals

I once heard a TTAB judge state that the outcome of most Section 2(d) likelihood of confusion cases can be predicted just by looking at the marks and the identified goods/services, without more. Well, your would-be honor, try your skills on these three appeals that were decided late last week - keeping in mind that, by my estimate, about 85% of Section 2(d) refusals are affirmed by the Board.

In re Jorge Alvarez, Serial No. 85529354 (July 18, 2014) [not precedential]. [Refusal to register PAYITAWAY for consumer lending services, in view of the registered marks
PAYAWAY and PAYAWAY PRIME [PRIME disclaimed] for credit and loan services].

In re Green Supreme, Inc., Serial No. 85502207 (July 18, 2014) [not precedential]. [Refusal to register BARLEY POWER GREEN SUPREME and Design shown below, for "dietary supplements also containing organically grown barley plants" [BARLEY disclaimed] in view of the registered mark GREEN SUPREME for "vitamin and mineral supplements, dietary supplements with herbs and natural ingredients"].

In re In re MAC Mode GmbH & Co. KGaA, Serial Nos. 79099041 and 79101237 (July 17, 2014) [not precedential].[Refusal to register the DREAM JEANS in the two design forms shown below left, for "clothing, namely, pants, jeans," in light of the registered marks DREAM JEANNE’S in standard character and design form, shown below right, for "women’s apparel, namely, jackets, jeans, skirts and shorts"].

Read comments and post your comment here.

TTABlog note: Well, what do you think? See any WYHA's here?

Text Copyright John L. Welch 2014.

Test Your TTAB Judge-Ability On These Three Section 2(d) Refusals of "EK" for Hats

New Era Cap Co. applied to register the mark EK in standard character form for "headwear, hats, caps, knit hats and baseball caps," but the PTO refused registration under Section 2(d) in view of three registered marks, depicted below. The first cited mark, owned by the Sigma Kappa Sorority, covers clothing items, including hats, the second is for footwear, and the third for t-shirts, knit tops, shirts and jackets. How do you think this came out? In re New Era Cap Co., Inc., Serial No. 85515684 (July 7, 2014) [not precedential].

As to the first registration, Examining Attorney David Yontef contended that the cited mark is a stylized version of the letters "EK" and would be so perceived and pronounced by customers. However, the record evidence showed that the mark consists of the Greek letters Sigma and Kappa, and that Sigma Kappa is a college sorority in the USA. [Note: the registrations is limited to clothing sold in connection with the sorority - ed.]. The registration stated that the mark consists of the two Greek letters. [But the consuming public doesn't know what statements appear in the registration - ed.]. The Board found the marks so dissimilar that confusion was unlikely, and it reversed that refusal.

As to the other two cited marks, applicant pointed to its ownership of two registrations for the mark EK in stylized form, which co-exist with the cited marks. The Board, however, noted that the instant application is for the letters EK in standard character form, and "if registered, Applicant would have the right to use the mark in any font, style, size, or color, including versions identical to either of the registered marks." The Board therefore agreed with the examining attorney that applicant's mark is virtually identical ... in appearance, sound, connotation and commercial impression, to the registered marks."

As to the goods it the second and third registrations, applicant lamely asserted that they are unrelated to its goods because they would, respectively, be found in different sections of a store or website. The Board, however, pointed out that goods may be related for Section 2(d) purposes even if not identical, and regardless of whether they are displayed together or far apart in the same store. The examining attorney submitted third-party use-based registrations that cover shirts, hats, and shoes under a single mark. Internet evidence also showed that third parties offer the same goods as applicant and these registrants under the same brand name.

And so the Board affirmed the second and third refusals.

Read comments and post your comment here.

TTABlog note:  So how did you do?

Text Copyright John L. Welch 2014.

WYHA? CAFC Affirms TTAB's Dismissal of STONSHIELD v. ARMORSTONE Opposition

The CAFC affirmed the Board's ruling in StonCor Group, Inc. v. Specialty Coatings, Inc. (Opposition No. 91187787), dismissing on opposition to registration of the mark ARMORSTONE for, inter alia, epoxy coating for use on concrete industrial floors. The Board found the applied-for mark not likely to cause confusion with the registered mark STONSHIELD [as well as the registered marks STONCLAD and STONHARD] for goods that include epoxy hardeners; and it also found the applied-for mark not merely descriptive of applicant's epoxy coatings. Would you have appealed? Stoncor Group, Inc. v. Specialty Coatings, Inc., 111 USPQ2d 1649 (Fed. Cir. 2014) [precedential].


On appeal, StonCor raised only two issues: likelihood of confusion with its STONESHIELD mark, and mere descriptiveness.

As to the Section 2(d) issue, the Board found that the first du Pont factor, the similarity or dissimilarity of the marks, weighed against StonCor.

StonCor presented evidence that the “o” (in “Ston”) would be pronounced by consumers with a long vowel sound, as in the word “stone.” The Board reasoned, however, that the spelling of “STON” and ordinary rules of English dictate that the “o” would be pronounced with a short vowel sound, as in the word “on.” Thus, the Board found that there was a dissimilarity in pronunciation.

The CAFC ruled, however, that the Board’s pronunciation analysis was not supported by substantial evidence. The Board improperly failed to credit StonCor’s evidence that consumers would pronounce “STON” as “stone.”

There is no correct pronunciation of a trademark that is not a recognized word. See In re Belgrade Shoe Co., 411 F.2d 1352, 1353 (CCPA 1969). “STON” is not a word in English. Neither party argues that “STON” is a word in any other language. Where a trademark is not a recognized word and the weight of the evidence suggests that potential consumers would pronounce the mark in a particular way, it is error for the Board to ignore this evidence entirely and supply its own pronunciation.

The Board's error, however, was harmless, because its other findings under the first du Pont factor were each supported by substantial evidence and together provided substantial evidence in support for the Board's weighing of that factor in favor of applicant.

The CAFC gave short shrift to the mere descriptiveness issue. StoneCor submitted definitions of "armor" and "shield," but no evidence that the combination conveyed "an immediate idea of the ingredients, qualities or characteristics of" the products.

And so the CAFC affirmed the Board's decision.

Read comments and post your comment here.

TTABlog note:  Well, WYHA?

Text Copyright John L. Welch 2014.

Precedential No. 32: TTAB Finds CLOUDTV Generic for ... Guess What?

The Board affirmed a refusal to register the purported mark CLOUDTV for software and software-based services relating to the provision of video-on-demand, finding the term to be generic. The Board also affirmed an alternative refusal on the ground of mere descriptiveness under Section 2(e)(1), concluding that applicant's proof of acquired distinctiveness was insufficient for this at least highly descriptive term. In re ActiveVideo Network, Inc., 111 USPQ2d 1582 (TTAB 2014) [precedential].

Applicant did not contest the examining attorney's contention that the term TV is generic for its goods and services, all of which involve streaming images to an electronic device having a screen. As to the word "cloud," the definitions submitted by the examining attorney demonstrated that the word "cloud," in the context of applicant's goods and services, will "immediately be seen as generic for packet-switched computer networks that link distant servers to one's TV, computer or other smart devices having screens." Applicant's own press releases and promotional materials repeatedly use the word "cloud" in reference to its products.

Applicant pointed to a number of third-party registrations for marks containing the word "cloud," but the examining attorney pointed out that those registrations presented "different circumstances on their face." In some the word "cloud" was disclaimed, while in others the marks were slogans (where disclaimers are not required). Moreover, the Board is not bound by decisions of trademark examining attorneys in other cases on other records. And, the Board noted, the rapidly changing nomenclature in this field requires that the USPTO have the freedom to consider meanings anew when appropriate.

Articles from trade publications discuss cloud TV's threat to traditional cable and satellite television, and the record demonstrated that the largest competitors in the entertainment business are involved in "cloud TV wars" as each adopts its own approach, based on applicant's proprietary technology.

Turning to the issue of genericness, applicant feebly argued that because it coined the term CLOUDTV, the term cannot be generic. The Board pointed out, however, that the first user is not entitled to register a generic term as a mark.

The Board found the genus of applicant's goods and services to be captured by various phrases, including "video on-demand," "interactive television," "streaming video online," and "cloud-based television programming services to Internet-connected TVs." The relevant consuming public consists of a very broad group of persons, from ordinary consumers to executives of multi-system operators.

The Board agreed with the examining attorney that the combination of the generic words CLOUD and TV is itself generic, since no new meaning beyond the individual meanings of the components is created by combining them. The compound term merely refers to a software platform for broadcasting multi-media content via video-on-demand.

In short, the examining attorney established by clear evidence that the wording "Cloud TV" is a compound term that names the "central focus" or "key aspect" of applicant's goods and services, and therefore CLOUDTV is a generic term.

Implicit in the Board's holding on genericness was a finding that CLOUDTV is at least merely descriptive of applicant's goods and services. The Board rejected applicant's contention that CLOUDTV is an imaginative play on words, instead finding that the term is highly descriptive.

As to applicant's claim of acquired distinctiveness, its evidence consisted of conclusory declarations from its Vice President of Marketing that recounted applicant's commercial success but failed to establish that the public views the term CLOUDTV as a source indicator. Applicant did not provide contextual information about its sales volume, such as market share, polling data, etc. The Board would "need to see a great deal more evidence (especially in the form of direct evidence from the relevant classes of purchasers that they view the term 'CloudTV' as a source-identifier, or other circumstantial evidence) than what Applicant has submitted."

And so the Board affirmed the genericness refusal, as well as the alternative mere descriptiveness refusal under Section 2(e)(1).

Read comments and post your comment here.

Text Copyright John L. Welch 2014.

Precedential No. 31: Fame of HARRY WINSTON Mark Crushes Son's BRUCE WINSTON Application for Jewelry

In a 71-page opinion, the Board sustained a Section 2(d) opposition to registration of the mark BRUCE WINSTON for gemstones and fine jewelry, finding the mark likely to cause confusion with the mark HARRY WINSTON and the registered mark WINSTON for jewelry. The strength of the WINSTON mark and the fame of the HARRY WINSTON mark, coupled with the overlap in goods, carried opposer to this gem of a victory. This summary will not discuss every facet of the decision, but rather will reflect only the high points. Harry Winston, Inc. and Harry Winston S.A. v. Bruce Winston Gem Corp., 111 USPQ2d 1419 (TTAB 2014) [precedential].

Marilyn Monroe in "Gentlemen Prefer Blondes"
Mr. Harry Winston, the founder of opposer Harry Winston, Inc., was a master at promotion of both himself and his jewelry business. In 1947, Cosmopolitan magazine called him the "King of Diamonds," in 1975 he was dubbed the "Wizard of Rocks," and in 1978, "Ace of Diamonds." He purchased the Hope Diamond and donated it to the Smithsonian Institution, an act that has generated enormous publicity. He loaned his jewelry to many celebrities for public appearances, including Lady Diana and the wife of the Shah of Iran. Marilyn Monroe sang the song, "Diamonds Are a Girl's Best Friend" in the 1953 movie "Gentlemen Prefer Blondes," a song that included the lyric, "Talk to me, Harry Winston, tell me all about it," a line that Winston continued to use in his advertising.

Opposers submitted voluminous examples of advertising and promotional materials. Its sales figures and advertising expenditures were "extremely substantial." In short, through extensive public relations efforts, the mark HARRY WINSTON has become famous in the field of jewelry, for purposes of the Board's likelihood-of-confusion analysis.

Although the evidence did not focus on the mark WINSTON by itself, the record demonstrated that the press often uses WINSTON as an abbreviated reference to the HARRY WINSTON brand, leading the Board to conclude that WINSTON is a very well-known source indicator in the jewelry field.

Applicant's chairman, Bruce Winston, is the son of Harry Winston. That relationship, the Board found, "interacts with the fame of the mark HARRY WINSTON in a way that is significant in this case." The press has incessantly promoted the connection between the two, and the evidence demonstrated that the public "may draw conclusions, not always entirely accurate, regarding the association between the members of the Winston family on one hand and Harry Winston and opposers' business on the other." The Board considered this evidence, under the 13th du Pont factor, as demonstrating "a strong proclivity among the press and other third parties to spontaneously perceive and promote an association between applicant's founder and opposers' founder and a connection between their two businesses."

The Board perceptively noted that BRUCE WINSTON is not identical to either WINSTON or HARRY WINSTON, but each mark comprises or consists of the word WINSTON. Comparing the applied-for mark to the registered mark WINSTON, the Board observed that the addition of a given name to a distinctive surname "has limited distinctive capability." The mark BRUCE WINSTON might well be seen as a "more specific reference to a person or company that is otherwise identified by the designation WINSTON." [E.g., JOSE GASPAR GOLD found confusingly similar to GASPAR'S ALE]. In view of the strength of opposers' WINSTON mark, the Board found that this first du Pont factor weighted heavily in favor of opposers.

As to the marks BRUCE WINSTON and HARRY WINSTON, the Board pointed out once again that when identical goods are involved, a lesser degree of similarity between the marks is needed to support a finding of likely confusion. Moreover, a famous mark like HARRY WINSTON "casts a long shadow which competitors must avoid." The Board consequently found that the two marks are sufficiently similar that this factor weighs in favor of opposers.

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

Read comments and post your comment here.

TTABlog note:  Hat tip to FOBs Joe Dreitler and Mary True, counsel for opposer.

Text Copyright John L. Welch 2014.

Precedential No. 30: YOUR CLOUD Merely Descriptive of Cloud Computing-Related Services, Says TTAB

Despite the existence of numerous third-party registrations for two-word "YOUR" marks without disclaimer of the word YOUR, the Board affirmed a Section 2(e)(1) mere descriptiveness refusal of YOUR CLOUD for cloud-computing related services. The immediacy with which YOUR CLOUD describes applicant Datapipe's personalized services distinguished the applied-for mark from the other registered marks. In re Datapipe, Inc., 111 USPQ2d 1330 (TTAB 2014) [precedential].

Examining Attorney Sung Hyun In maintained that "cloud" is the common descriptive name for a type of computer network in which data or software is stored and accessed remotely, rather than on one's own computer. Third-party website evidence demonstrated that Applicant is a provider of data center infrastructure and managed services in the fields of public and private cloud computing. The Board found that applicant's cloud storage services "provide customers with a viable alternative to capital expenditures for procuring new hardware - namely, providing, instead, infinitely scalable capacity at steadily decreasing prices." In short, the word "cloud" is descriptive of applicant's services.

As to the word "your," applicant pointed to a provision in a "nonpublic, internal examination guide that apparently directs Trademark Examining Attorneys to treat the word MY differently from the word YOUR on the issue of mere descriptiveness." According to applicant, this "'examination guide' produce[d] an unanticipated rejection" of its YOUR CLOUD mark. The Board was unmoved. The proffered document had "none of the hallmarks" of a genuine Examination Guide, and in any case, "the Board is not bound by Examination Guides, or the TMEP, etc." [Likewise, as I frequently say, the TBMP is not the law! - ed.].

The Examining Attorney relied on a dictionary entry indicating that "your" is "almost an equivalent to the definite article the <your typical teenager>." Applicant submitted several third party registrations for marks containing the word YOUR without disclaimer, including YOUR CHURCH (church management guidebooks), YOUR TUBE (condoms), YOUR CHEF (seasoning mixes), and YOUR NUTS! (pecan nuts). The Board, however, observed once again that it is not bound by by decisions of Examining Attorneys in other cases, nor is it privy to the evidence and arguments made in those cases. Moreover, most of those marks lacked the "stark immediacy" with which the word cloud conveys information about applicant's services.

Datapipe particularly relied on a prior Board decision reversing a mere descriptiveness refusal of YourDVD for DVD players, but since that decision was not precedential, the Board declined to discuss it in detail. It merely noted that there is a fine line between suggestiveness and mere descriptiveness, and in that case the Board panel apparently had a doubt about where to place the mark on the continuum of distinctiveness, and so it gave that applicant the benefit of the doubt (as it must). Here the Board had no such doubt.

Finally, the Board distinguished the YOUR CLOUD mark from several registered slogan marks - including two owned by applicant: THIS IS YOUR CLOUD and YOUR CLOUD MANAGED - because slogans are treated differently from two-word descriptors. And various third-party registered marks in which the second word was disclaimed, but not the first word YOUR, did not have the "immediate descriptiveness that is, by contrast, apparent in the content of Applicant's proposed mark, given the personalization of services that Applicant provides."

Applicant’s own website uses "you" and "your" four times in a single sentence. Additionally, the involved term points specifically to "your" (the customer’s) customized, unique, secured, backed-up, encrypted piece of the "cloud." When enterprises need cloud computing platforms and infrastructure, this personalized formulation is quite believable. By contrast, retailers of security products are unlikely to feel the same ownership of a brick-and-mortar warehouse, for example, when their wholesale distributor adopts as a service mark, YOUR WAREHOUSE.

The Board therefore found that YOUR CLOUD is merely descriptive of applicant's services, and it affirmed the Section 2(e)(1) refusal.

Read comments and post your comment here.

TTABlog note:  So what are YOUR THOUGHTS?

Text Copyright John L. Welch 2014.

Precedential No. 29: After Partnership Breakup, TTAB Declares FAIRWAY FOX Application Void Ab Initio

In this ownership dispute between former business partners over the mark FAIRWAY FOX for golf clothing, the parties invoked the Board's Accelerated Case Resolution (ACR) procedure. Nine months later, they had their decision. Opposer Conolty claimed that she was the prior user and owner of the mark. Applicant Conolty O'Connor LLC asserted that Ms. Conolty lacked standing and was barred from opposing the application by "unclean hands" as a result of "acting in bad faith," and by the doctrines of waiver and estoppel. The Board sided with opposer, deeming the opposed application void ab initio. Kristin Marie Conolty d/b/a Fairway Fox Golf v. Conolty O’Connor NYC LLC, 111 USPQ2d 1302 (TTAB 2014) [precedential].

In mid-2008, Kristin Marie Conolty and Kathryn O’Connor began preparations to offer a line of upscale, fashionable golf clothing. Conolty designed the clothing and worked with vendors, while O'Connor assisted with or consulted in the design efforts. O'Connor provided most or all of the funds for the business, and had some responsibility for the business side of the endeavor, but Conolty had input into that side of the business as well. Some documents named the two as "founders" or "co-owners" of the business, and vendors and others viewed both as being associated with the Fairway Fox business.

In 2011, Applicant Conolty O'Connor LLC was formed, with O'Connor as the sole shareholder. However, there was no evidence that Conolty agreed that O’Connor should or would be applicant’s sole shareholder. It was not clear from the record whether Conolty was involved in applicant’s formation, other than proposing names for the entity and titles for herself and O’Connor, nor was it clear whether Conolty transferred, or intended to transfer, any part of the business to applicant.

After the LLC was formed, the two individuals continued to work together, even regarding the filing of the application here opposed. In January 2012 they both participated in the PGA Merchandise Show, where the first FAIRWAY FOX branded goods were sold. In May 2012, the two stopped working together. O'Connor apparently offered Conolty a 20% share of the business, but Conolty rejected that proposal. O'Connor suggested that they "continue to work on the day-to-day deliveries of the product so as not to damage the brand we have developed."

The parties then went on their separate ways, each selling clothing under the FAIRWAY FOX mark. The mark was never assigned, transferred, or licensed, and there were no documents addressing the disposition of the assets upon dissolution of their partnership or joint venture.

The decision: There was no question that opposer had standing, since she clearly had a real interest in this proceeding beyond that of a mere intermeddler, and a reasonable basis for her belief of damage. Although opposer pleaded only priority and likelihood of confusion, the Board found that the issue of ownership, which was the real crux of the case, was tried by the consent of the parties.

The Board concluded that the opposed application was void ab initio because applicant was not the sole owner of the mark. Prior to the first use of the mark in January 2012, Conolty and O’Connor were "by any practical measure, partners, who jointly controlled the quality of FAIRWAY FOX products and who were both, together, perceived as the source of FAIRWAY FOX products." Applicant is controlled by O'Connor, but she had only a joint interest in the mark with Conolty.

If the case is analyzed as a priority dispute, the result is "effectively the same." Any activities of the individuals prior to their break-up inured to the benefit of the jointly-owned business, not to either individual.

As to the asserted defenses, applicant did not pursue the bad faith/unclean hands defense. The claims of waiver and estoppel were not supported by the evidence, since any actions of Conolty vis-a-vis use of the mark or filing the application to register were undertaken in the context of the partnership, not with the intention that O'Connor should enjoy sole ownership of the mark and any registration.

And so the Board sustained the opposition.

Read comments and post your comment here.

TTABlog note:  Somehow I sense a lawsuit somewhere.

Text Copyright John L. Welch 2014.

Recommended Reading: "Who Owns Blue? An Examination Of The Functionality Doctrine in University Sports Colors"

Here's a fine article by Michelle Gallagher on the protectability of university sports colors. Ms. Gallagher first provides a review of the law of color trademarks, reminding us of the parameters of the aesthetic functionality doctrine in that context (discussing the Second Circuit's Louboutin red sole decision and the TTAB's FTD black floral wrapping case). She then reviews several recent litigation battles over school colors (Louisiana, Texas Tech, Alabama). After that refresher course, Ms. Gallagher turns a critical eye to the "unduly broad" protection afforded Boise State University by its registration of the color blue for entertainment services (i.e., its football field). Gallagher, Who Owns Blue? An Examination Of The Functionality Doctrine in University Sports Colors, 104 Trademark Reporter 765 (May-June 2014).

Ms. Gallagher raises many interesting questions. For example, as to Boise State's policing and licensing of its mark to several colleges and high schools, what does quality control mean in that context? As to functionality, is the color blue functional in a utilitarian sense because a blue field provides certain "telegenic benefits" - i.e., it looks better on tv? Is color depletion a problem here, when so few colors are reasonably available? Is there a competitive need to use the color blue?

The author suggests that Boise State's rights in the color blue should be cut back, just as the Section Circuit cut back Louboutin's rights in (and registration of) the color red. Maybe the registration should be limited to an all blue field (no contrasting color in the end zones), or limited to a blue field with the Boise State insignia in the middle? [I note that Section 18 may be available as an avenue to restrict the Boise State registration to a particular shade of blue, or to add other restrictions like those suggested.]

In sum, a job well done by Michelle Gallagher, an LLM Candidate at Suffolk University Law School in Boston.

Read comments and post your comment here.

TTABlog notes:  I thank The Trademark Reporter for granting permission to provide a link to this article, which is Copyright © 2014 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 104 TMR 765 (2014).

FWIW: for this blog I adopted the orange-and-blue school colors of my undergraduate alma mater, the University of Illinois. When George Halas, also an Illinois alum, founded the Chicago Bears, he chose the Illinois colors. It worked for him.

Text Copyright John L. Welch 2014.

WYHA? Precedential No. 28: Finding "MOMSBANGTEENS" Scandalous for Adult Website, TTAB Affirms Section 2(a) Refusal

The Board not surprisingly affirmed a Section 2(a) refusal to register the mark MOMSBANGTEENS for "entertainment services, namely, providing a web site featuring photographic, audio, video and prose presentations featuring adult-oriented subject matter," finding the mark to be scandalous. [Would You Have Appealed?] The evidence established that "'bang' is a slang term used as a synonym for sexual intercourse and often regarded as vulgar." The Board rejected applicant's argument that the Board should consider the views of only the subset of the public that consumes applicant's services. In re Manwin/RK Collateral Trust, 111 USPQ2d 1311 (TTAB 2014) [precedential].

The PTO may prove that a mark is scandalous under Section 2(a) by establishing that the mark is “vulgar”in the context of the services recited in the application, and from the standpoint of a substantial composite of the general public. Here, dictionary definitions alone were sufficient to satisfy the PTO's burden to establish a prima facie case.

Examining Attorney Carolyn P. Cataldo submitted more than a dozen definitions of the transitive verb "bang," and in nine of the definitions "bang" is regarded as a slang term for sexual intercourse and is characterized in this context as “vulgar,” “offensive,” “objectionable,” or “obscene.” The Board therefore concluded that this usage of "bang" is considered to be vulgar by a substantial composite of the general public: "The mark MOMSBANGTEENS when used for an adult website would thus be understood as a vulgarity conveying the meaning of mothers having sexual intercourse with teenagers."

The Board was not moved by applicant’s argument that the term “bang” has numerous other relevant meanings, or by its evidence regarding non-sexual uses of the term “bang,” including in the titles of “The Big Bang Theory” TV show and the 1968 movie “Chitty Chitty Bang Bang.” There was simply no evidence that any alternate, non-sexual meanings were pertinent in the context of applicant’s mark and services.

Applicant asserted that the word "bang" is in common usage as a slang term for sexual intercourse, and therefore it is “simply inconceivable that it would be viewed as vulgar, scandalous or immoral by the majority of the public." [So is the "F" word (no, not "fraud") in common usage, and who would say that the "F" word isn't vulgar? - ed.] The Board acknowledged that social attitudes toward a word may change, but the many dictionary definitions of record that characterized the word "bang" as vulgar were "sufficiently contemporaneous with the examination of the application to reflect contemporary viewpoints."

Applicant maintained that the Board should consider the views only of the subset of the public who consumes its services – "an adult audience seeking adult content with an adult vocabulary." The Board disagreed. 

Previous opinions affirming refusals under Section 2(a) of marks used with adult-oriented goods or services instruct that our evaluation must consider the general public’s view as to whether a mark is vulgar, and the two cases applicant cites in support of this argument are not to the contrary. In Mavety Media, the Federal Circuit explicitly considered how a substantial composite of the general public would view the mark BLACK TAIL when used in the context of an adult entertainment magazine; the court did not limit its analysis to the views of consumers of such magazines. See 31 USPQ2d at 1928. The other case, In re Hershey, 6 USPQ2d 1470 (TTAB 1988), concerned Tshirts, not adult-oriented goods, and thus does not support applicant’s position.

Finally, Applicant pointed to its evidence that the general consuming public accepts the concept of older women having sexual intercourse with younger men, but the Board found that evidence irrelevant. "Our decision is based on the vulgarity of the specific term BANG as used in applicant’s mark MOMSBANGTEENS in association with its services."

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog note:  Well, any thoughts? As I banged out this blog post, contemplating getting my bangs cut, the thought hit me with a bang that this case should certainly be a "WYHA?" My advice to potential appellants: check the dictionaries first.


Text Copyright John L. Welch 2014.

Precedential No. 27: TTAB Rules that Notice of Reliance Must Indicate Relevance of Each Document by duPont Factor

In this Section 2(d) opposition, Applicant Sonoscape won a partial victory in its motion to strike certain evidence included in Opposer's notice of reliance. The Board ruled that Opposer could not rely on a newly-issued registration as a basis for opposition because the underlying application had not been pleaded in the notice of opposition, but the Board deferred until trial a ruling on whether the registration had any probative value. It agreed with applicant that, as to certain other documents (673 pages in all) purportedly relevant to the likelihood of confusion issue, opposer was required to indicate the relevance of each page by duPont factor. FUJIFILM SonoSite, Inc. v. Sonoscape Co., Ltd., 111 USPQ2d 1234 (TTAB 2014) [precedential].

Newly-issued registration: Applicant Sonoscape filed its motion just prior to commencement of its testimony period. Opposer Fuji claimed ownership of a family of "Sono-" formative marks, and sought in its notice of reliance to add a newly-issued registration to its arsenal. However, Fuji did not plead ownership of the application that matured into that registration. The Board ruled that Fuji "cannot use an unpleaded registration as a basis for the opposition (such as for purposes of removing priority as an issue in the case, or for proving standing)." However, the Board observed, an unpleaded registration, like third-party registrations, may be considered for "whatever probative value" it may lend to opposer's showing under the du Pont factors in its case in chief.

Because the Board's determination as to whether a registration (or other evidence) has probative value is made at final hearing, the Board refused to strike this exhibit and instead deferred any determination as to admissibility.

Relevancy of other evidence: Applicant Sonoscape contended that Fuji has failed to adequately designate the relevancy of certain documents attached to its notice of reliance. Although Fjui stated that the documents were relevant to three likelihood of confusion factors (the similarity of the parties’ marks, the similarity and relatedness of the goods at issue, and the similarity of the parties’ trade and
marketing channels), Sonoscape argued that Fuji must indicate which pages of the two involved exhibits were relevant to each particular du Pont factor.

Fuji claimed that the entirety of each exhibit was relevant to all three identified du Pont factors. Not good enough: "The Board will not expend its resources guessing which pages the propounding party is relying upon, particularly when an exhibit comprises such a large number of pages. Opposer should have indicated which web page or group of web pages within each exhibit support each specific du Pont factor." See Safer Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1039-40 (TTAB 2010).

The Board observed that, although Fuji will have an opportunity to explain its exhibits in its trial brief, Sonoscape is entitled to know, prior to its testimony period, which web pages allegedly support which likelihood of confusion factor. Because the defect was one that can be cured by the offering party as soon as it is raised by any adverse party, Fuji was allowed 15 days to submit and appropriately revised notice of reliance.

Read comments and post your comment here.

TTABlog note:  This kind of specificity should be required by rule for document production during discovery, whereby the produced documents must be correlated with document requests and interrogatories to which they purportedly are responsive.

Text Copyright John L. Welch 2014.

TTAB Affirms 2(d) Refusal of G-MEN for Clothing, Rejecting NY Giants Fame Argument

Rejecting the NY Giants' argument that the purported fame of its G-MEN mark must be considered in the Section 2(d) analysis, the Board found the mark (for "shirts; T-shirts; tops") likely to cause confusion with the registered mark GMAN SPORT & Design for overlapping goods [SPORT disclaimed]. In re New York Football Giants, Inc., Serial No. 85599795 (July 3, 2014) [not precedential].

The Giants hyperbolicly claimed that “[t]here is no more fundamental and grievous error than to conclude that confusion is likely by comparing two marks in the abstract, divorced from marketplace circumstances …." It asserted that the mark G-MEN is so famous that "when used in the context of football related merchandise, it has a unique and singular meaning for a distinct set of products." [For what it's worth, I never heard of it - ed.]

The Board, however, pointed to years of relevant precedent construing the second duPont factor, "the similarity or dissimilarity of the goods 'as described in an application or registration.'" Applicant's argument was simply out-of-bounds:

 [W]here there is no specific limitation in the description of goods and nothing inherent in the nature of Applicant’s mark that restricts Applicant’s usage to football related merchandise or the promotion of a particular football team, the Board may not read such limitations into the application." Moreover, the Board noted, there is nothing to stop the Giants from changing the manner or scope of use of the mark. [Or selling or licensing the mark to a non-football-related owner - ed.].

The analysis of the marks was straightforward. As to the meaning of applicant's mark, the Board perceptively pointed out that "though Applicant argues that G-MEN is essentially a synonym for the name GIANTS for a football team, this may be known only by football fans, or even only those fans who favor the GIANTS; but in the absence of restrictions expressed in the applicant’s identification, we must consider G-MEN clothing items to be marketed to all possible consumers of the identified items, including non-football fans."

Similarly unavailing was applicant's argument that consumers of its goods, being Giants fans, will exercise care in their purchasing decisions. However, extrinsic evidence cannot be used to narrow the channels of trade when no such restrictions are included in the identification of goods. Here, the goods as identified in the subject application include inexpensive items purchased without a great deal of care or sophistication.

Finally, applicant's asserted that there have not been any incidents of actual confusion despite four years of simultaneous use of the two marks. The Board observed, however, that such a statement is "generally entitled to little probative weight in the likelihood of confusion analysis, inasmuch as the Board in such cases generally has no way to know whether the registrant likewise is unaware of any instances of actual confusion, nor is it usually possible to determine that there has been any significant opportunity for actual confusion to have occurred."

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

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TTABlog note:  For some comments and discussion of this appeal, scroll to the bottom of this post.

Ringo Starr met with a similar fate in his attempt to register RINGO for various clothing items "all depicting the name and image of a famous entertainer." TTABlogged here. So even if the Giants had restricted the identification of goods to football-related items, would that have made a difference here?

For the same reasons set forth in this case, the Board will not consider marketplace factors in its Section 2(d) analysis when deciding an inter partes case. How then could the decision have preclusive effect in in infringement action in district court, where it's all about what is happening in the marketplace? Yet there is a split in the circuits on that point, and the Supreme Court will consider the issue in B&B v. Hargis.

Text Copyright John L. Welch 2014.