Test Your TTAB Judge-Abiliity: Which One of these Four Mere Descriptiveness Refusals Was Reversed?

By my estimation, somewhere around 80 to 85% of all Section 2(e)(1) mere descriptiveness refusals that reach the TTAB are affirmed on appeal. Well, here are four appeals that were decided in the last week or so. One refusal was reversed. Which one, pray tell? [Answer in first comment].



In re US Digital Media, Inc., Serial Nos. 85752995 and 85753010 (August 27, 2014) [not precedential]. [Refusal of BUD BAG and EAR BUD BAG for "ear bud accessory, namely, ear bud case"].

In re Internet Promise Group LLC, Serial No. 85637786 (August 25, 2014) [not precedential]. [Refusal of SPICE WATER for "a water-based beverage with a blend of tropical fruit extracts and spices from Indian subcontinent [sic]"].

In re Ethos USA, Inc., Serial No. 85675559 (August 25, 2014) [not precedential]. [Refusal of PROGEAR for "covers for golf clubs; gloves for golf; golf bag covers; golf bags; golf clubs"].

In re Nanomech, Inc., Serial No. 85602143 (August 22, 2014) [not precedential]. [Refusal of nSert for "machine tools for the cutting of materials, namely, coated substrates manufactured using nanotechnology"].

Read comments and post your comment here.

TTABlog note:  See any WYHA?s here, Bud?

Text Copyright John L. Welch 2014.

Test Your TTAB Judge-Ability on this Service Mark Specimen of Use

This applicant tried to register the mark ANOTHER GIANT EAGLE ADVANTAGE for "supermarket services," relying on the specimen of use displayed immediately below. The examining attorney refused registration, maintaining that the specimen did not show use of the mark in connection with the recited services. Applicant appealed. How would you rule? In re Phoenix Intangibles Holding Company, Serial No. 85355964 (August 26, 2014) [not precedential].

(click on photo for larger picture)
"A service mark specimen must show an association between the mark and the services for which registration is sought, although the services need not be expressly referenced." The question was this: how would consumers perceive applicant' use of the mark on this specimen? Does it identify supermarket services?

The examining attorney contended that the advertisement is limited to beer, not supermarket services. Applicant, on the other hand, argued that beer is a product often sold in supermarkets and that "many, if not all, supermarkets have advertisements featuring only a portion of the products they sell ...." The Board agreed with applicant: "it is common knowledge that beer and wine may be sold in supermarkets and that supermarkets often advertise a few of the products they sell." [Apparently, the Board took judicial notice of that "fact"]. It noted that the case law does not require that the specimen include a statement as to the nature of the services.

The Board concluded that the specimen, considered in context, shows "direct use of the mark" in connection with supermarket services.

The advertisement submitted as a specimen promotes the sale of beer at a store such as the GIANT EAGLE MARKET DISTRICT shown in the logo at the bottom of the advertisement. A market includes a supermarket. Thus, we have a connection between the mark and a store that offers a variety of goods. *** [A] purchaser or prospective purchaser of Applicant's supermarket services would view the mark ... as promoting the sale of a wide selection of beers at Applicant's supermarket.

And so the Board deemed the specimen of use acceptable and it reversed the refusal.

Read comments and post your comment here.

TTABlog comment:  A strange decision, I think. Why wouldn't consumers think this was an advertisement for just a liquor store?

Text Copyright John L. Welch 2014.

TTAB Reverses ENTERPRISE Phantom Mark and Mutilation Refusals

The Board reversed a refusal to register the mark shown below for vehicle rental and leasing and fleet management services, rejecting the PTO's contention that applicant's mark is a "phantom mark" and overruling the Examining Attorney's objection to the specimens of use. In re Enterprise Holdings, Inc., Serial No. 85675437 (August 25, 2014) [not precedential].

Phantom mark: The examining attorney contended that applicant was trying to register more than one mark, because applicant "inserts changeable merely descriptive wording" in the blank space below the word ENTERPRISE. As such, the mark is a phantom mark.

The CAFC has defined a phantom mark as "one in which an integral portion of the mark is generally represented by a blank of dashed line acting as a placeholder for a generic term of symbol that changes depending on the use of the mark." Registration of a phantom mark is prohibited because one cannot conduct a proper search of the mark and fails to give proper notice to other trademark users. [Example: HERBAL ESSENCE OF xxxx, where xxxx may be one of a number of fruit names, such as HERBAL ESSENCE OF APPLE, HERBAL ESSENCE OF KUMQUAT, etc.].

Applicant's description of its mark was as follows: "The mark consists of a green square to the left of a black rectangle. The letter "e" is white and positioned within the green square. The letters "nterprise" are white and positioned within the black rectangle. The foregoing elements are positioned over a barrel-shaped shield design that is white outlined in black."

The Board pointed out that this description does not indicate that there are missing elements or elements that will change. Moreover, the application drawing depicts a single mark. The Board therefore reversed the phantom mark refusal.

Specimens of use: Applicant's specimen brochures are depicted immediately below:

The Examining Attorney maintained that the specimens display the mark as ENTERPRISE FLEET MANAGEMENT and design and ENTERPRISE COMMERCIAL TRUCKS and design, whereas the drawing shows the mark as ENTERPRISE and design without any additional wording. Therefore, he concluded, the mark in the drawing is not a substantially exact representation of the mark as used on the specimen, as required by Rule 2.51.

The question, then, was whether applicant had mutilated its mark, which reduced to this basic query: what exactly is a trademark? It is something that creates a separate and distinct commercial impression that indicates the source of the goods or services. The examining attorney argued that, since FLEET MANAGEMENT and COMMERCIAL TRUCKS are not generic for any particular service, the addition of this merely descriptive language clearly changes the impression of the mark.

The Board disagreed. FLEET MANAGEMENT is generic for fleet management services, and COMMERCIAL TRUCKS is at least highly descriptive of leasing and rental services. These terms not only cannot function alone as marks for applicant's services, but they also are separable from the rest of the mark. Therefore, their deletion does not change the commercial impression of the mark.

Consequently the Board found the specimens of use to be acceptable and it overruled this objection.

Read comments and post your comment here.

TTABlog note:  In support of its ruling on the specimens of use issue, the Board pointed to the ridiculous TINEL-LOCK decision, which held that a specimen of use displaying the term TR06AI-TINEL-LOCK-RING supported registration of the term TINEL-LOCK for metal rings.

Text Copyright John L. Welch 2014.

"PAGOS DEL REY" and "PradoRey" Confusable for Wine, Says TTAB

The Board sustained a Section 2(d) opposition to registration of PAGOS DEL REY for wine in view of the registered mark PradoRey (stylized) for wine. Applicant argued that Spanish-speaking Americans would perceive the difference in meaning between the two marks, but the Board observed that even if that were so, customers who are not familiar with Spanish must also be considered, and they would find the marks similar in appearance and sound. Real Sitio de Ventosilla, S.A. v. Pagos del Rey, S.L., Opposition No. 91201741 (August 22, 2014) [not precedential].

Because the goods are identical, the Board presumed that applicant's wine and opposer's wine travel through the same, normal channels of trade to the usual classes of consumers. Applicant contended that consumers, when faced with walls or rows of wine, are "forced to choose a wine off the shelf in order to read the label to find out what they have the option of purchasing." Opposer, on the other hand, maintained that lower-priced wine is frequently bought on impulse, and further that when wine is sold in the "chaotic" conditions of a bar or restaurant, customers may not be able to inspect the bottle of wine. The Board found opposer's position more persuasive.

As to the marks, the evidence showed that opposer's mark PradoRey consists of two Spanish words meaning "meadow" and "king," whereas the three Spanish words in opposer's mark mean "the king's estate" or "the king's vineyards." According to applicant the tens of millions of people of Hispanic descent in this country would recognize the different meanings of the two marks. The Board pointed out, however, that it must also be concerned with consumers who do not understand Spanish. "For them, the marks may have no meaning and the visual and phonetic aspects of the marks, as well as the overall commercial impression created by the marks, will be the critical elements in forming their impressions of the marks."

Non-Spanish speaking consumers would likely have difficulty in determining how to pronounce the marks, increasing the likelihood that they would be confused by the similarities in the marks: the initial P, the assonance of the vowels of PRADO- and PAGOS, and the final syllable REY. The sharing of seven letters, in similar order, in marks beginning with "P" and ending in "REY," with the marks having no meaning for many, would likely result in confusion when the marks are used on identical goods.

Applicant claimed that third-party uses and registrations of marks containing the word REY have a diluting effect on the cited mark, but the Board was unimpressed. The evidence of such usage lacked specificity, and the third-party registered marks were entitled to no probative weight because of a lack of evidence as to the nature and extent of their use.

Finally, applicant pointed to the absence of proof of actual confusion, but the Board noted that opposer's sales have been low and limited geographically. Applicant's assertion that the marks have co-existed peacefully in other countries was irrelevant here. And applicant's claim that it adopted its mark in good faith was likewise irrelevant because good intent does not avoid a finding of likely confusion.

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

Read comments and post your comment here.

TTABlog note:  I don't think the marks are all that similar.

Text Copyright John L. Welch 2014.

Test Your TTAB Judge-Ability: Is GOOD BOX Merely Descriptive of Wine?

Switzerly, Inc. sought to register the mark GOOD BOX for wine, but the USPTO refused registration, deeming the mark merely descriptive of the goods under Section 2(e)(1). On appeal, applicant argued that its mark does not describe the wine itself, but at most the packaging for the wine. How do you think this came out? In re Switzerly, Inc., Serial No. 85720234 (August 20, 2014) [not precedential].

Examining Attorney Karen K. Bush relied on dictionary definitions of, not surprisingly, "good" and "box," and on several Internet website printouts referring to "good wine in a box," "box wines," "boxed wines," and "good boxed wine." The Board concluded that in the context of wine, "box" and "boxed" refer to wine sold in a box, that "good" box wine is increasingly common, and that consumers seek out "good" box wine.

The evidence also established that the combination of "good" and "box" does not convey any commercial impression beyond the meaning of the individual terms.

Switzerly urged that GOOD BOX at most describes the packaging, not the wine itself, but it conceded that "[wines] may be categorized by type of packaging." The Board observed that because wine is a liquid, it typically is sold in some type of container or package, and applicant's mark must appear on the package.

[T]he predecessor to our primary reviewing court has held that a mark which is merely descriptive of the packaging of goods may be found merely descriptive for the goods themselves. J. Kohnstam, Ltd. v. Louis Marx & Co., Inc., 280 F.2d 437, 126 USPQ 362 (CCPA 1960). There, the Court found MATCHBOX SERIES merely descriptive of “toy model vehicles and toy model machines” sold in matchboxes.

Finally, Switzerly pointed to a number of registrations for marks in which the word "good" is not disclaimed, but the Board pooh-poohed that argument. First, applicant failed to submit this evidence prior to the filing of its appeal, and second, each application must be considered on its own merits and the PTO and the TTAB are not bound by the prior actions of individual examining attorneys in other cases.

Because consumers seek out good box wine, competitors have a need to use that term. The Board therefore affirmed the refusal to register.

Read comments and post your comment here.

TTABlog note:  So how did you do?

Text Copyright John L. Welch 2014.

TTAB Affirms PTO Refusal: Specimens Fail to Show Use for Live Entertainment Services

The Board affirmed a refusal to register the mark FAB AGAIN for "entertainment in the nature of visual and audio performances, namely, musical band, rock group, gymnastic, dance, and ballet performances," on the ground that applicant failed to submit an acceptable specimen of use. Specimens evidencing use of the mark on recordings or in connection with music streaming are not sufficient to support a registration for the recited services: the specimens must relate to a live performance before an audience. In re Titan Music, Inc., Serial No. 77344197 (August 20, 2014) [not precedential].

Applicant first submitted a webpage from the CDBABY.com website, offering for sale a music CD having the cover shown above. Examining Attorney Andrew Rhim rejected that specimen of use because it made no reference to any services.

Applicant then submitted a printout from Last FM's internet website (a streaming service), showing the album cover with a link to allow streaming audio from the album. The Examining Attorney again refused to accept the specimen because "performances captured on a musical sound recording constitute goods and are not the same as the service of providing or conducting visual and audio performances."

"Performance" in the context of services involves the act of performing and is done in front of an audience. *** [T]he Trademark Manual of Examination Procedure Section 1402.11(g) states that "For entertainment services in the nature of performances, such as those rendered by a musical group, the performances must be live."

The TMEP goes on to say that "[t]he recording of a live concert or studio performance is not considered a service of the performing group." [The production of a recording by another entity of a performance by a musical group would be a service of the other entity.] Recorded entertainment usually takes the form of goods in Class 9, such as videotapes, audio cassettes, DVDs, CDs, etc.

The Board agreed with the Examining Attorney that applicant's specimens may show use of the mark for goods (compact discs) or services (streaming), but they did not show use of the mark with the recited services.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog note:  Who's that in the middle of the Fab Four?
 

Text Copyright John L. Welch 2014.

Test Your TTAB Judge-Ability on this Section 2(d) Refusal of WINSTON CHURCHILL LANCASTER for Cigars

Applicant Randolph Leonard Spencer Churchill sought to register the mark shown below left, for cigarillos and cigars, but was refused registration in view of the registered mark shown below right, for chewing tobacco. On appeal, Applicant Churchill argued that the cited mark would be seen as referring to a place, whereas his mark refers to the famous British Prime Minister. How do you think this came out? In re Randolph Leonard Spencer Churchill, Serial No. 85446588 (August 19, 2014) [not precedential].

(click on drawings for larger picture)
Examining Attorney Anne Madden submitted numerous third-party registrations that each included both cigars and chewing tobacco, which registrations served to suggest that these goods are of a type that may emanate from a single source. Because there were no limitations on channels of trade in the application or cited registration,the Board presumed that the goods travel through the same, normal channels of trade to the same classes of consumers. Moreover, third-party website evidence demonstrated that chewing tobacco and cigars are frequently marketed together.

Turning to the marks, the cited mark contains the phrase LIMITED-RESERVE CHEWING TOBACCO in a small font. [LIMITED RESERVE CHEWING TOBACCO was disclaimed in the registration]. Applicant's mark includes a crest containing Latin and Spanish wording in so small a font "as to be illegible to the extent it would be noticed at all by consumers." Both marks include the word LANCASTER, but in the cited registration it is plainly the dominant term.

Considered in their entireties, "the marks do not look or sound much alike." However, the Board must also consider their connotations and overall commercial impressions.

Applicant asserted that LANCASTER gives the connotation and commercial impression of a place, while his mark would be understood to refer to British Prime Minister Winston Churchill.

The Board acknowledged that LANCASTER "may be understood by some as referring to a place." But LANCASTER may engender the same understanding in applicant's mark, despite being preceded by WINSTON CHURCHILL. In such a situation, it has been found that consumers are likely to believe that "applicant is offering a new line of cigars under its LANCASTER mark." [Or perhaps that registrant is offering a new line under its LANCASTER mark - ed.].

The design element in the cited mark does little to change its commercial impression, which is dominated by the word LANCASTER. In applicant's mark, the words WINSTON CHURCHILL LANCASTER dominate.

The Board therefore concluded that the similarities in connotation and commercial impression outweigh the differences and sound and appearance between the two marks.

Finally, Applicant Churchill asserted that he has enjoyed "some degree of success" with his products, but the Board pointed out that commercial success does not negate a likelihood of confusion, and may even cause reverse confusion.

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

Read comments and post your comment here.

TTABlog note:  So how did you do?

Text Copyright John L. Welch 2014.

TTAB Sustains Section 2(d) Opposition: VS vs. VS for Skin Moisturizers

The Board sustained an opposition to registration of the mark shown below left for various organic hair and skin care products, including skin moisturizers, finding it likely to cause confusion with the registered mark shown below right for various personal care products, including body lotions. Both parties stumbled a bit with their proofs, but the similarity of the marks and the overlap in the goods proved to be insurmountable obstacles for applicant. Victoria's Secret Stores Brand Management, Inc. v. Yael Mamroud/Cummins, Opposition No. 91201001 (August 7, 2014) [not precedential].

Applicant argued that her products are different from opposer's because they are "made in Canada, vegan, cruelty free, hypoallergenic, fragrance free, free trade" and furthermore are not unisex, whereas opposer's products are for women only. The Board pointed out, however, that no such limitations appear in the opposed application or cited registration. The Board found the goods to be legally identical, in part: applicant's "skin moisturizers" encompass registrant's "body lotions." Of course, the Board then presumed that the legally identical goods travel in the same channels of trade to the same classes of consumers.

Applicant next argued that her goods are more expensive than opposer's and therefore would be purchased with extra care, but again that argument failed because there were no such limitations as to price in the opposed application or cited registration.

Turning to the marks, both contain the letters "V" and "S," and in strikingly similar fonts. However, the Board noted that its must consider the marks in their entireties. Applicant argued that the inclusion of an ampersand in her mark "changes the sound, appearance, connotation, and overall commercial impression to 'vee' and 'ess,'" thus avoiding a likelihood of confusion. But the Board agreed with opposer that the ampersand in applicant's mark "looks like an afterthought."

[G]iven the relatively small size of the ampersand in relation to the letters "V" and "S," it is more likely that prospective consumers encountering Applicant’s stylized mark will overlook the ampersand, and perceive and pronounce the mark as the acronym "VS" as opposed to "V and S."

The Board consequently found that the letters "V" "S" are the dominant feature of applicant’s mark, and so the involved marks "are far more similar than dissimilar in sound, appearance, connotation and commercial impression."

Opposer pointed to the fame of its VICTORIA'S SECRET mark, asserting that consumers would likely see VS as a shortened version thereof, but applicant correctly pointed out that opposer did not plead ownership of any of its VICTORIA'S SECRET trademarks and so the fame of that mark was irrelevant. Applicant, in turn, claimed that the cited mark is weak in view of numerous VS marks used on similar goods, but she failed to provide any supporting evidence.

Because all of the relevant duPont factors were either neutral or favored opposer, the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

TTABlog note:  After reading this decision, I think VS stands for very soporific.

Text Copyright John L. Welch 2014.

Pro-Football Seeks Section 1071 Review of TTAB's "REDSKINS" Decision in E.D. Va. District Court

On August 14th, Pro-Football, Inc. filed a complaint in the U.S. District Court for the Eastern District of Virginia, seeking Section 1071(b)(1)  review of the TTAB's "REDSKINS" decision of June 18, 2014 [TTABlogged here]. As you know, a divided Board panel granted a petition for cancellation of six registrations owned by Pro-Football for marks comprising or containing the word REDSKINS, for entertainment services, finding that the marks, at their respective dates of registration, disparaged Native Americans. A pdf of the complaint may be downloaded here.

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In its complaint, Pro-Football argues that the TTAB's decision " is replete with errors of fact and law, including its failure to restrict its analysis to the relevant time frame of 1967-1990, when the registrations were first issued." Pro-Football also claims that the decision violates the First and Fifth Amendments of the Constitution, and that laches bars the claims of the petitioners.

In September 2011, the America Invents Act changed the applicable venue for Section 1071(b)(1) actions, when adverse parties reside in a plurality of districts. Previously, the U.S. District Court for the District of Columbia was the proper venue, but the AIA amended that to the Eastern District of Virginia. Of course, the previous round of litigation over the REDSKINS trademark had involved the District of Columbia district court (the Harjo decisions).

Ron Coleman, prominent trademark blogger and attorney for THE SLANTS in its appeal from another TTAB disparagement ruling [TTABlogged here], provides his interesting comments on Pro-Football's complaint and the REDSKINS case in general, here at his Likelihood of Confusion blog.

Read comments and post your comment here.

TTABlog note:  If you were a betting person, where would you put your money?

Text Copyright John L. Welch 2014.

Test Your TTAB Judge-Ability on these Four Section 2(d) Refusals

Okay, you know the drill: 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 four appeals, keeping in mind that, by my estimate, about 85% of Section 2(d) refusals are affirmed by the Board. [Answers will be found in first comment].


In re Gavin McNeill, Serial No. 85461532 (August 11, 2014) [not precedential]. [Refusal to register the design mark shown below, comprising "a black outline of a baseball hat and the word 'Cool' beneath the hat that resembles a face," for "Caps; Hats; Headwear; Jackets and socks; Sweatshirts; T-shirts; Tank tops; Tops," in view of the registered mark COOL!, in standard character form, for various clothing items, including t-shirts].

In re Hearst Communications, Inc., Serial No. 85704221 (August 11, 2014) [not precedential]. [Refusal of METROPOLITAN HOME for "case goods, namely, chests, night stands, cabinets, dining tables, coffee tables, end tables, desks, bed and headboards; upholstered furniture; all the foregoing not relating to furniture for use in patient rooms and waiting areas of healthcare facilities" [HOME disclaimed], in view of the registered mark METROPOLITAN for "furniture for use in patient rooms and waiting areas of healthcare facilities"].

In re Federacion Regional de Sociedades Cooperativas de la Industria Pesquera, Baja California, F.C.L., Serial No. 85835945 (August 14, 2014) [not precedential]. [Refusal to register the mark REY DEL MAR and Design, shown below, for "Abalones; Ark-shells; Lobsters; Oysters" [The English translation of REY DEL MAR is KING OF THE SEA], in view of the registered mark KING OF THE SEA for seafood].

In re Forshaw, Serial No. 85797042 (August 15, 2014) [not precedential]. [Refusal of CALI FO$HO for "Hats; pants; shirts" in view of the registered mark SOFOSHO for "clothing – namely-shirts, sweatshirts, shorts, T-shirts, jackets"].

Read comments and post your comment here.

TTABlog note:  See any WHYA?s here?

Text Copyright John L. Welch 2014.

TTAB Finds MYUNDIES Registration Void Ab Initio: Mark Not in Use As Of Filing Date

The Board summarily granted a petition for cancellation of a registration for the mark MYUNDIES for various clothing items, finding the registration to be void ab initio because Respondent was not using the mark on any of the goods at the time he filed the application to register. Respondent asserted that he is using the mark and has no intention to abandon it, but that did not cure the initial, fatal error. MeUndies, Inc. v. Drew Massey dba myUndies Inc., Cancellation No. 92055585 (August 13, 2014) [not precedential].

A registration may be found void ab initio under Trademark Act Section 1(a) when the mark in the underlying use-based application was not in use in commerce as of the application filing date.

Respondent Drew Massey admitted that he did not use the registered mark as of the filing date of the underlying application. He stated that he was "pro se and should have filed as ‘intend to use’ versus referring to ‘first known use’ which was done by a prior separate company."

The founder and owner of a company called "myUndies.com, Inc," which existed from 1999 to 2001, had used the mark MYUNDIES in connection with online retail services, but Respondent was not involved in
his company. Respondent contacted him regarding Respondent’s possible use of the mark, but the mark MYUNDIES had been abandoned for nearly eight years.

In response to Petitioner's summary judgment motion,Respondent merely argued that he has been and is using the mark MYUNDIES and has no intention to abandon the mark, and did not commit fraud when he filed the underlying application. The Board was unmoved.

Whether Respondent is currently using the registered mark or whether he has any current intent to resume use is not the issue. *** Similarly, it is irrelevant that Respondent represented himself and possibly misunderstood the law when he filed his use-based application. A use-based application is void if the mark is not in use on the identified goods at the time of filing, regardless of whether the applicant understood the statutory requirement for use or intended to mislead the USPTO.

The Board therefore granted Petitioner's summary judgment motion and granted its petition for cancellation.

Read comments and post your comment here.

TTABlog note: Petitioner did not claim fraud. Too bad. We are approaching the fifth anniversary of the post-Bose "no fraud" era, and this case might have opened the door.

Text Copyright John L. Welch 2014.

Finding Chickpeas Related to Restaurants, TTAB Sustains PITA PAL Opposition

The Board sustained a Section 2(d) opposition to registration of the mark PITA PAL - THE ART OF HEALTHY EATING & Design for "falafel; processed chickpeas; processed garbanzo beans," finding the mark likely to cause confusion with the registered mark THE ART OF EATING HEALTHY for "restaurants." Although opposer's survey evidence failed to pass mustard, the Board found the goods and services related, the marks similar, and the channels of trade overlapping. Pita Jungle – Tempe, Inc. v. Pita Pal Foods, LP, Opposition No. 91204422 (July 24, 2014) [not precedential].

The Board observed the there is no per se rule holding that restaurant services and food items are related for purposes of a likelihood of confusion determination. One claiming likelihood of confusion must show “something more.” Jacobs v. International Multifoods Corp., 668 F.2d 1234, 212 USPQ 641, 642 (CCPA 1982).

Opposer’s restaurant’s offers food “based upon a Mediterranean diet and … includes substantial amounts of hummus, falafel, chick peas and garbanzo beans as well as a lot of grains, olive oil, vegetables, fish, chicken and pita pocket bread.” The Board found that opposer had satisfied the “something more” requirement in two ways. First, “pita” describes a type of food often eaten with applicant’s goods and a type of food served at applicant’s restaurants. Thus there is an “undeniable connection” between applicant’s goods and opposer’s services. Second, Opposer’s restaurants offer takeout and catering services that feature the same food items for which Applicant seeks registration: “Applicant’s processed chickpeas and garbanzo beans (essentially hummus) and falafel are related to Opposer’s restaurant services which offer all of those foods, as well as the pita identified in Applicant’s mark, for takeout.”

The normal channels of trade for applicant’s goods and Opposer’s restaurants “are likely to overlap, as both parties would be expected to market their respective goods and services through the same advertising channels to consumers interested in hummus, falafel and related products.”

As to the marks, applicant’s mark is comprised of a slight variation of Opposer’s mark (THE ART OF HEALTHY EATING rather than THE ART OF EATING HEALTHY) combined with the term PITA PAL, in which PITA is disclaimed. In Applicant’s mark, the slogan THE ART OF HEALTHY EATING makes a separate commercial impression from the rest of the mark. Moreover, the term PITA PAL is at best suggestive of applicant’s goods.

Opposer offered the results of a survey involving the interviews of 26 or 27 customers in each of its 17 PITA JUNGLE locations, for a total of 446 interviews. Opposer’s expert concluded that applicant’s mark caused 30% of survey respondents to be confused by applicant’s mark.

The Board, however, did not find the survey to be reliable. The survey did not include any control, i.e., the survey expert did not use a “test cell” and a “control cell.” The universe of interviewees was skewed because it included only customers who were leaving opposer’s restaurant, and they were questioned immediately after being exposed to Opposer’s marks. Moreover, the extent of the expert’s experience with trademark surveys was unclear, and his qualifications were not impressive. And the key question in the survey was leading.

Giving the benefit of any doubt to the registrant, the Board found confusion likely, and it sustained the opposition.


Read comments and post your comment here.

TTABlog note:  So what do you think?

Text Copyright John L. Welch 2014.

Test Your TTAB Judge-Ability: Is BOATS DIRECT USA Geographically Descriptive of Boat Dealerships?

The USPTO issued a Section 2(e)(2) refusal to register the mark BOATS DIRECT USA, finding it to be primarily geographically descriptive of boat dealerships. On appeal, applicant admitted that "the term 'USA' is generally know to mean the United States of America." And since applicant is located in Key Largo, Florida, a services/place association is presumed, a presumption that applicant failed to rebut. So "USA' is geographically descriptive, but what about the mark as a whole? How do you think this came out? In re Boats Direct, LLC, Serial No. 85418867 (August 7, 2014) [not precedential].

According to Board precedent, a mark comprised of a geographic term and generic terms, highly descriptive terms, or highly suggestive and laudatory terms, is considered to be primarily geographically descriptive. [e.g., MINNESOTA CIGAR COMPANY for cigars]. So the question was whether the phrase BOATS DIRECT is generic, highly descriptive, or highly suggestive and laudatory.

The was no dispute that BOATS is generic for boats [Doh!], but what about DIRECT? The examining attorney argued that the wording merely describes the nature of applicant's services: "the direct sale of boats." But there was no evidence showing what the "direct sale of boats" means. Although applicant admitted that some of the boats it sells are "factory direct," the PTO did not establish "that the term 'BOATS DIRECT' describes a feature of applicant's dealerships in factory-direct boats." Nor did any of the submitted dictionary definitions apply the word "direct" in conjunction with "boats."

To be clear, there is no evidence supporting the Examining Attorney’s contention that the term “Boats Direct” is merely descriptive or even that it is highly suggestive and laudatory. Accordingly, we find that the phrase “BOATS DIRECT” is not highly descriptive, generic or highly suggestive and laudatory.

The Board therefore found that the applied-for mark is not primarily geographically descriptive. However, pursuant to Trademark Rule 2.142(g), the Board re-opened the application for the purpose of entry of a disclaimer of the words BOATS and USA under Section 6 of the Trademark Act.

Read comments and post your comment here.

TTABlog note:  Any thoughts?

Text Copyright John L. Welch 2014.

Test Your TTAB Judge-Ability: Which One of these Section 2(d) Refusals Was Reversed?

I once heard a TTAB judge state that the outcome of most Section 2(d) likelihood of confusion cases may 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 four appeals, one of which resulted in a reversal. [Answer in first comment].


In re Pacific Resorts Investments Limited, Serial No. 85668227 (August 7, 2014) [not precedential]. [Refusal to register GINGER-EZE for dietary supplements containing ginger, in view of the registered mark GINEASE for dietary and nutritional supplements].

In re Les Mills International Limited, Serial No. 85652407 (August 7, 2014) [not precedential]. Refusal of GRIT for audio and video recordings, printed materials, educational services in the fields of health, nutrition, and physical fitness, in view of the registered mark GRIT FIT for physical fitness and exercise instruction and training; production of videos, and publishing of books and handbooks].

In re James Charne, Serial No. 85778933 (August 7, 2014) [not precedential]. [Refusal to register RISE OF KINGS for computer game programs, in view of the registered mark THE RISE OF THE WITCH-KING for computer game software].

In re Gold Crust Baking Company, Serial Nos. 85678105 and 85691267 (August 6, 2014) [not precedential]. [Refusal to register the marks GOLD CRUST BAKING COMPANY in standard character [BAKING COMPANY disclaimed] and design form (shown below left) [BAKING COMPANY, INC. disclaimed], for "bakery goods, namely, bread and buns," in view of the registered mark shown below right (CARIBBEAN BAKERY & GRILL disclaimed] for "restaurant services featuring Caribbean style foods"].

Read comments and post your comment here.

TTABlog note:  Answer may be found in first comment. See any WYHA?s here?

Text Copyright John L. Welch 2014.

CAFC Vacates and Remands TTAB's NIGHTLIFE TELEVISION Decision: Board Ignored Pleaded Registration

The U.S. Court of Appeals for the Federal Circuit has vacated the Board's decision in Cutino v. Nightlife Media, Inc., Opposition No. 91186025 (April 25, 2013) [not precedential], in which the Board dismissed a Section 2(d) opposition to registration of NIGHTLIFE TELEVISION for "Video-on-demand transmission services, Internet broadcasting services, broadcasting services, namely, broadcasting programs over a global computer network to mobile telephones and computers, Satellite television broadcasting, and Television broadcasting," in view of the two registered marks LONG ISLAND’S NIGHTLIFE (Stylized) [LONG ISLAND disclaimed] and NEW YORK'S NIGHTLIFE [NEW YORK'S disclaimed] for monthly magazines. The CAFC found that the Board erred in refusing to consider Opposer Cutino's pleaded NIGHTLIFE registration (for "magazines of general interest" and for "television programming services") because, the court found, applicant had admitted the current ownership and active status of that registration. The case was remanded to the TTAB for consideration of the NIGHTLIFE registration. Cutino v. Nightlife Media, Inc., Appeal No. 2013-1541 (Fed. Cir. August 7, 2014) [not precedential].

Opposer Cutino pleaded three registrations, but as to the NIGHTLIFE registration he submitted only an ordinary copy of the registration (rather than copies of the PTO database entries or a status-and-title copy of the registration). See Rule 2.122(d)(1). Therefore the Board ruled that the NIGHTLIFE registration was not of record. As to the two registered marks that were of record, the Board noted that they included words that referred to a specific geographic location, making Cutino's two marks "look and sound significantly different than applicant's mark." Moreover, Cutino failed to prove that his local-area magazines were related to applicant's broadcasting services.

The CAFC pointed out that applicant admitted in its answer that Cutino is the owner of the three pleaded marks and that the pleaded registrations identify the goods and services alleged by Cutino in his opposition. The Board, however, found that applicant's admission of Cutino's ownership of the NIGHTLIFE mark was not enough to make the registration of record.

The CAFC concluded that the Board had abused its discretion in disregarding the NIGHTLIFE registration. "The Board's own procedures and this court's precedent recognize that an opposer's registration will be deemed of record if the applicant's answer contains admissions sufficient to establish the current status of the registration and the plaintiff's ownership of the registration."

The court found that applicant's admissions in its answer were sufficient "to treat the NIGHTLIFE registration as part of the record."

While Applicant purported to admit only that Mr. Cutino is the owner of the "mark" NIGHTLIFE, Applicant did not deny that Mr. Cutino owns the corresponding pleaded registration. *** An answer that fails to deny a portion of an allegation is deemed admitted as to that portion."

Moreover, the court found that the admission regarding ownership "not only establishes current title, but also the current status of the NIGHTLIFE registration, i.e., that it is active." The court explained that one "technically does not own a registration unless it is in force and effect." And applicant's denial that the registration was "subsisting" was not a clear denial of its current status, particularly since applicant made the identical denials with regard to the other two pleaded registrations for which Cutino submitted records establishing current status.

The CAFC remanded the case to the TTAB to consider the likelihood of confusion between the registered NIGHTLIFE mark and applicant's mark.

Read comments and post your comment here.

TTABlog note:  Well, with opposer's NIGHTLIFE registration, which covers "television programming sevices," back in play, this is a whole new ballgame.

Text Copyright John L. Welch 2014.

TTAB Reverses Mere Descriptiveness Refusal of RBAM for Engineering Consulting Services

In a rare reversal of a Section 2(e)(1) mere descriptiveness refusal, the Board found the mark RBAM not merely descriptive of management and consulting services in the field of engineering, particularly with regard to industrial, military, and marine equipment. The Board found the phrase "risk-based asset management" to be descriptive of applicant's services, but there was insufficient evidence to show that the acronym RBAM is understood by relevant customers as synonymous with that phrase. In re Life Cycle Engineering, Inc., Serial No. 85692710 (August 4, 2014) [not precedential].

Applicant refers to the "ultimate result of its services as 'a risk-based asset management strategy.'" The Examining Attorney established that third parties use the expression "risked-based asset management" to describe processes similar to those of applicant. Applicant did not claim that the phrase has an nondescriptive significance.

The question, then, was whether the acronym RBAM would be understood by relevant consumers to be synonymous with "risk-based asset management." The Acronym Finder website showed "risk-based asset management" as one of the meanings for RBAM, but did not indicate widespread exposure to or understanding of the correlation between the acronym and the phrase. With only one exception, that examples of third-party use of RBAM "never show the expression RBAM alone unless it has earlier appeared in the form 'risk-based asset management (RBAM)'" This type of usage, the Board noted, "may suggest that the writer would not expect readers to understand the acronym without explanation."

The Board also noted that the number of uses of the RBAM acronym in the record is "objectively small." Applicant's Manager of Director of Asset Management Services unequivocally averred that he was unaware of any third-party use of RBAM for similar services.

Although the Board had some doubt about the issue at hand, it resolved any doubt in favor of applicant and so reversed the refusal to register.

Read comments and post your comment here.

TTABlog note:  Do you think the acronym WYHA? has become synonymous with the phrase "Would You Have Appealed"? Is "Would You Have Appealed?" merely descriptive of anything? If not, why are we worried about the acronym anyway? Just embrace it.

Text Copyright John L. Welch 2014.

Napa Vintners Association Fails to Prove Standing, TTAB Dismisses 2(d) Opposition to NOPA for Wines

Standing is a threshold issue that must be proven in every inter partes proceeding. In this opposition to registration of the mark NOPA for wines, applicant Wine Vision, a Portuguese company appearing pro se, did not file a brief or introduce testimony or other evidence - you might say that NOPA used the Ropa Dopa defense - but the Napa Valley Vintners Association failed to prove its standing to oppose. How did it all go sour? Read on, MacDuff. Napa Valley Vintners Association v. Wine Vision, Lda., Opposition No. 91189310 (July 29, 2014) [not precedential].

Opposer claimed to own the common law certification marks NAPA and NAPA VALLEY for wine, and it alleged that applicant's mark NOPA would likely cause confusion under Section 2(d), comprises a geographical indication that identifies a place other than the origin of the goods under Section 2(a), is geographically deceptive under 2(a), and is geographically deceptively misdescriptive under Section 2(e)(3). Applicant admitted that "Napa" is a geographic indication for wine, but otherwise denied opposer's allegations.

Opposer argued in its brief that it had standing, claiming that it is a non-profit trade association promoting the interest of Napa Valley wineries and owner of a pending certification mark application for NAPA VALLEY for wine - but it failed to cite any evidence in support of those assertions. There was "no evidence of record that Opposer is a trade association, what its responsibilities are, who its members are or whether it certifies anything and if it does so, much less whether it owns the alleged certification mark NAPA VALLEY." Its alleged application to register was not of record, and anyway it did not plead ownership of that application. There was no evidence that opposer owns any mark.

Opposer's evidence consisted of certain sections of the Code of Federal Regulations referring to the Napa Valley viticultural area, and book excerpts referring to the Napa Valley. There was a passing book reference to the formation of the Napa Valley Vintners Association in 1943, but no evidence to establish opposer's current activities.

Applicant made no admissions that would establish opposer's standing.

Therefore the Board concluded that opposer failed to establish standing, and the opposition was dismissed.

Read comments and post your comment here.

TTABlog note:  So now what does the Association do?

Text Copyright John L. Welch 2014.

TTAB Dismisses ZILLOW Opposition to "LoanZilla" For Mortgage Brokerage Services

The Board dismissed a Section 2(d) opposition to registration of the mark LoanZilla for "mortgage brokerage," finding that the mark is not likely to cause confusion with the registered mark ZILLOW for a real estate information website and related services. Although the parties' services are commercially related, and although the customer classes and channels of trade overlap, the Board found the marks to be "extremely different in overall commercial impression," a difference that is "further emphasized" by the number and nature of marks incorporatinh the -ZILLA suffix in use by third parties." Zillow, Inc. v. Super T Financial Inc. DBA LoanZilla, Opposition No. 91203730 (July 22, 2014) [not precedential].

The marks: The Board perceptively recognized that the marks "are not identical," but they do share the letter string ZILL. Opposer feebly maintained that ZILL is the "most distinctive and memorable part of each mark," but the Board saw no reason to focus on ZILL as a separate element. To do so would be an "impermissible dissection of Applicant's mark."

Applicant Super T maintained that "Zilla" is a play on "Godzilla," and its logo resembles a lizard. It provided a Wikipedia entry for "-zilla," defining the term as "an English slang suffix, a back-formation derived from the English name of the Japanese movie monster Godzilla." Applicant also made of record evidence of third party use of "-zilla" formatives, as well as a number of third-party registrations of "-zilla" marks for a wide variety of goods and services. Although the registrations do not demonstrate use of the registered marks, "they do demonstrate that the suffix -ZILLA holds some special appeal for applicants."

Opposer Zillow argued that the -ZILLA evidence was irrelevant because "Godzilla" has nothing to do with mortgage brokerage services, and further because most of the evidence of third-party use was unrelated to mortgage brokerage or real estate. The Board agreed that this evidence does not show that the ZILLOW mark is weak, but it does show "the special meaning that, according to Applicant, the suffix -ZILLA has for trademark applicants."

Furthermore, the evidence of third-party use of -ZILLA marks (e.g., BUGZILLA, MOZILLA, SHOPZILLA, EVENTZILLA), although unrelated to real estate or mortgage services, suggests that "customers likely can distinguish between Opposer's mark and marks that include the suffix -ZILLA on the bases of other element in the marks. [But if they are not in relevant fields, who cares? - ed.].

The Services: Opposer Zillow's core service is the provision of a website of information related to real estate, searchable by address. One feature of the service is the provision of an estimated value for the particular parcel of real estate. Many customers have an interest in information about financing a home purchase, and Zillow provides information regarding loan rates as well as an online form for requesting a loan from participating lenders.

Zillow admitted that it does not provide mortgage brokerage services. However, for purposes of Section 2(d), services need not be similar or competitive; it is sufficient if they are related in some manner such that they would be encountered by the same persons in circumstances that could result in confusion as to source. Here, the parties' services are commercially related. Zillow provides some of the functions that customers would obtain as part of mortgage brokerage services, and one of its registrations covers "providing mortgage and home equity loan quotations to others." And its website includes advertisements for real estate professionals, including lenders and mortgage brokers.

There is a substantial overlap between the classes of customers, but the conditions of sale includes an element of care, which makes this du Pont factor lean slightly in favor of applicant.

Zillow claimed that its mark is famous, but its sales and advertising figures were not properly verified. Although the figures show substantial growth for its business, the numbers were not placed in meaningful context for comparison with similar businesses. Its other evidence of fame was unpersuasive, and so the Board found this factor to be neutral.

Zillow provides services in various fields, including finance, and this factor pointed in its favor. The absence of actual confusion was a neutral factor because there was no evidence of a meaningful opportunity for confusion to occur. Finally, although applicant admitted that it was aware of the ZILLOW mark when it adopted its mark, and had considered advertising on the ZILLOW website, that was not enough for the Board to conclude that applicant acted in bad faith.

Balancing the relevant du Pont factors, the Board found confusion unlikely and it dismissed the opposition.


Read comments and post your comment here.

TTABlog note:  This was a bit of a yawner.

Text Copyright John L. Welch 2014.

WYHA? TTAB Affirms Section 2(a) Refusal of "fuct" for Athletic Apparel

The Board, not surprisingly, affirmed a Section 2(a) refusal of the mark fuct, in standard character form, for athletic apparel, finding the mark to be vulgar and therefore scandalous. Did this application have any chance of surviving the Board's scrutiny? Would you have appealed? In re Brunetti, Serial No. 85310960 (August 1, 2014) [not precedential].

Examining Attorney Zachary R. Bello maintained that the term "fuct" is the phonetic equivalent of "fucked" and is therefore "vulgar, profane and scandalous slang." Applicant contended that the PTO has employed an incorrect standard in applying Section 2(a), that the evidentiary support for the refusal was insufficient, that "fuct" is a coined word having no meaning, and that the Board should narrow the scope of Section 2(a) in light of the evolving view that this provision, as currently enforced by the PTO, is unconstitutional. The Board agreed with the PTO.

Erik Brunetti is an artist and entrepreneur whose graphics are infused with cultural strands from skateboarding, graffiti culture, punk rock music, and remnants of Situationist Ideal ideologies. He has been a trail-blazer since the early nineties in popularizing “streetwear” having revolutionary themes, proudly subversive graphics and in-your-face imagery. His assaults on American culture critique capitalism, government, religion and pop culture.

To prove that a term is scandalous under Section 2(a), the Trademark Examining Attorney need show only that the term is vulgar. The CAFC has repeatedly held that "the threshold for objectionable matter is lower for what can be described as 'scandalous' than for 'obscene.'" The term at issue must be considered in the context of the identified goods, from the standpoint of a substantial composite of the general public, and in view of contemporary attitudes.

Based upon dictionary definitions submitted by the Examining Attorney, the Board had no doubt that "the word 'fuck' continues correctly to be characterized as 'offensive,' 'extremely offensive,' 'highly offensive,' 'intentionally offensive,' an 'obscenity,' 'vulgar slang,' the 'f-bomb,' and at the root of a number of other twisted and angry expressions." The word "fuct" is a slang term equivalent to the word  "fucked," and having the same vulgar meaning.

Applicant Brunetti argued that "fuct" is a made-up term meaning FRIENDS U CAN’T TRUST. He pointed out that his FUCT brand makes no reference to "fuck" or to sexual intercourse. Nor do the graphics on the goods suggest that FUCT means “fuck.”

The Board, however, pointed out that applicant's apparel contains "strong, and often explicit, sexual imagery that objectifies women and offers degrading examples of extreme misogyny, ... [leaving] an unmistakable aura of negative sexual connotations." Even when the term "fuct" is used in the sense of "having no chance of success," the dictionary evidence established that the term is still "an extremely offensive word." Applicant's apparel depicts "an unending succession of anti-social imagery of executions, despair, violent and bloody scenes including dismemberment, hellacious or apocalyptic events, and dozens of examples of other imagery lacking in taste."

The Board found that applicant's assertion regarding the derivation of the word "fuct" stretched credulity.

[W]e conclude, to the contrary, that the term “fuct” was chosen precisely because it was knowingly calibrated to be simultaneously alluring, offensive, and corporate (i.e., "mainstream") – retaining just enough ambiguity to provide plausible deniability when necessary around the question of whether it is merely another way to say “fucked,” while knowing that members of its specially target[ed] audience would never be fooled. 

The Board brushed aside applicant’s claim that "vulgar" is an incorrect standard under Section 2(a), concluding that, although various precedential rulings define "scandalous" in more comprehensive terms, "the word 'vulgar' captures the essence of the prohibition against registration in the case at bar" and is used here as shorthand for the Examining Attorney's phrase "vulgar, profane and scandalous slang."

Although "fuct" may have  served as applicant’s brand name for decades, the Board's responsibility is to determine the question of registrability based upon contemporary standards and in light of the record evidence.

Applicant’s cult following may well represent a reliable niche market for its goods and ideology. While the existence of this market segment may reveal differing opinions within the consumer community, once a substantial composite has been found to consider the term scandalous, the mere existence of differing opinions cannot change the conclusion. 

Finally, the Board recognized its "statutory limitations:" the Trademark Trial and Appeal Board "is not the appropriate forum for re-evaluating the impacts of any evolving First Amendment jurisprudence within Article III courts upon determinations under Section 2(a) of the Lanham Act, or for answering the Constitutional arguments of legal commentators or blog critics." [Emphasis supplied].

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog note:  Okay, all you blog critics out there. Let's hear it!

Text Copyright John L. Welch 2014.

Midwestern Company Seeks Experienced International Lawyer

Multinational retailer located in the Midwest is seeking an experienced attorney to provide international law services. Reporting to the General Counsel of the company, the attorney will provide advice regarding franchising, joint ventures, mergers & acquisitions, retail law issues, and customs and trade issues. 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 the 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.

Test Your TTAB Judge-Ability on These Five Section 2(e)(1) Mere Descriptiveness Refusals

By my estimation, somewhere around 80-85% of all Section 2(e)(1) mere descriptiveness refusals that reach the TTAB are affirmed on appeal. Well, here are five appeals that were decided in July 2014. How do you think they came out? Do you see any WYHAs here?


VISUAL MUSIC CONCEPTS for "Printed music books containing songs from the public domain printed in an oversized layout for visual learning; Flash cards featuring music notes to reinforce note recognition, printed in a oversized layout for visual learning; Stickers for piano keys made out vinyl static cling sheets and printed in an oversized layout for visual learning." In re Maria C. LaMon, Serial No. 76709973 (July 30, 2014) [not precedential].

SCREEN EXTEND for "A slide mechanism with a pair of channels on opposite ends that are positioned on the backside of a mobile device as a feature of the mobile device; the mechanism on the backside of the mobile device stows and deploys a hidden display screen to and from the backside of the wireless mobile device." In re Internet Promise Group LLC, Serial No. 85690175 (July 29, 2014) [not precedential].

DIGITALPREP for "dental software for automatically generating an electronic model of a cutting guide positionable on a patient’s teeth and marking margins on the electronic model of a patient’s teeth." In re B & D Dental Corp., Serial No. 85591438 (July 25, 2014) [not precedential].

TASTY FISH CO. for seafood [FISH CO. disclaimed]. In re Tasty Fish Co., LLC, Serial No. 85740939 (July 22, 2014) [not precedential].

LOCALSHOPPER for "advertising and marketing services, namely, promoting the goods and services of others through mobile phone marketing communications, website advertising and mobile phone applications." In re Triad Digital Media, LLC, Serial No. 85631785 (July 17, 2014) [not precedential].

Read comments and post your comment here.

TTABlog note:  So how did you do? Here's a hint: they all came out the same way. Which one is the biggest WYHA?

Text Copyright John L. Welch 2014.

TTAB Posts August 2014 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled four (4) oral hearings for the month of August, 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.



August 5, 2014 - 2 PM: In re Midwestern Pet Foods, Inc., Serial No. 85598829 and 85598831 [Appeal from Section 2(e)(1) mere descriptiveness refusal of WHOLESOMES for pet food, and requirement of disclaimer of WHOLESOMES in the mark SPORTMIX WHOLESOMES for pet food].

August 20, 2014 - 2 PM: In re BCA Research, Inc., Serial No. 77967732 [Section 2(d) refusal of BCA RESEARCH for electronic and printed publications, provision of information, and presentation of shows, events and educational seminars, all in the field of investment research and financial investments, in view of the registered mark BCA BURGESS, CHAMBERS & ASSOCIATES INC., in stylized form, for “Advice relating to investments; Fund investment consultation; Funds investment; Investment advisory services; Investment consultation; Investment management"].

August 26, 2014 - 2 PM: In re Bonhams & Butterfields Auctioneers Corporation, Serial Nos. 85443489 and 85443485 [Section 2(e)(4) refusal of BUTTERFIELDS for auction and appraisal services on the ground that the mark is primarily merely a surname].

August 28, 2014 - 2 PM: In re United Trademark Holdings, Inc., Serial No. 85706113 [Section 2(d) refusal of ZOMBIE CINDERELLA for dolls on the ground of likelihood of confusion with the registered mark WALT DISNEY’S CINDERELLA and design, also for dolls].

Read comments and post your comment here.

TTABlog note: Any predictions? See any "WYHA"s?

Text Copyright John L. Welch 2014.