Tuesday, September 30, 2014

TTABlog Quarterly Index: July - September 2014

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Section 2(a) - Deceptiveness:
Section 2(a) - False Association:
Section 2(a) - Immoral or Scandalous:
Section 2(b) - Governmental Symbols:
Section 2(d) - Likelihood of Confusion:
Section 2(e)(1) - Deceptive Misdescriptiveness:
Section 2(e)(1) - Mere Descriptiveness:
Section 2(e)(2) - Primarily Geographically Descriptive:
Section 2(e)(3) - Primarily Geographically Deceptively Misdescriptive:
Section 2(e)(4) - Primarily Merely a Surname:
Genericness:
Standing:
Ownership:
Non-Use/Specimen of Use:
Discovery/Evidence/Procedure:
Recommended Reading:
CAFC:
Other:
Text Copyright John L. Welch 2014.

posted by John L. Welch @ 9/30/2014   0 comments

Monday, September 29, 2014

Precedential No. 38: TTAB Deems "BEAUTV" Use-Based Application Void Ab Initio Due To Non-Use

The Board sustained, on two grounds, an opposition to registration of the mark BeauTV, in standard character form, for "providing information about beauty." It declared the application void ab initio because pro se Applicant Bonnie Tseng failed to prove use of the mark for the recited services prior to the filing of her use-based application to register. And the Board found a likelihood of confusion with opposer's registered service mark THE BEAUTY CHANNEL for providing a website and audio-visual materials in the field of beauty. Opposer overcame an early stumble when it failed to properly submit four of its seven registrations into evidence. United Global Media Group, Inc. v. Bonnie Tseng, 112 USPQ2d 1039 (TTAB 2014) [precedential].


Four registrations not in evidence: Opposer relied on five registrations (and two pending applications) in its notice of opposition, attaching photocopies of the registration certificates, each accompanied by a page from the PTO assignment database indicating that the registration had not been assigned. However, mere copies of the registration certificates did not comport with Rule 2.122(d), which allows a party to make a registration of record by, inter alia, submitting printouts from the PTO electronic records showing status and title. As to four of the registrations, opposer's submissions did not establish status, and therefore they were not properly made of record. [The Board also noted that the mere inputting of a registration number when prompted by ESTTA, when filing an opposition, does not make the registration of record].

As to the fifth registration, because its date of issuance (March 29, 2011) was "substantially contemporaneous" with the filing of the notice of opposition (July 20, 2011), the copy of the registration was sufficient to make that registration of record. See TBMP Section 704.03(b)(1)(A); Royal Hawaiian Perfumes, Ltd. v. Diamond Head Prods. of Haw., Inc., 204 USPQ 144, 145 (TTAB 1979).

The Board noted that, although applicant had admitted in her answer that opposer owned the pleaded registrations, that did not suffice to make the registrations of record. Opposer did not include allegations regarding the validity of its registrations, and the Board refused to find that Applicant Tseng had admitted "what, at best, might be considered an implied allegation in opposer's pleading, i.e., validity and status of the registrations it claimed to own."

As to the two pending applications that opposer identified in its notice of opposition, those applications issued to registration while this proceeding was pending. The Board pointed out that in such circumstances an opposer may make the registrations of record without having to amend the notice of opposition to assert reliance on the registrations. Opposer submitted, via notice of reliance, the electronic records from the PTO database for those two registrations, showing status and title.

Application void ab initio: In response to opposer's discovery requests, applicant failed to provide any documentation evidencing use of the applied-for mark prior to the filing date. Opposer had thus established a prima facie case of nonuse. Applicant nonetheless submitted a number of documents via notice of reliance (to which opposer objected). Applicant's submissions, however, were either inadmissible (e.g., invoices, letters, and other personal documents not available to the public) or failed to show use of the applied-for mark, or both. [One item comprised pages from applicant's website, where the term "BeauTV" appeared only in the copyright notice and the URL. Neither constitutes use of the term as a service mark].

In sum, the Board found that applicant had not used her mark for the recited services at the time she filed her use-based application, and therefore the application is void ab initio.


Likelihood of confusion: For the sake of completeness, the Board also considered opposer's Section 2(d) claim. The Board focused on opposer's registered mark THE BEAUTY CHANNEL as the mark most similar to applicant's mark, noting that if confusion is not likely as to that mark, then there is no need to consider the other two registered marks (BEAUTY EVERYWHERE and SYNCHRONIZING BEAUTY).

The Board first found that applicant's services (providing information about beauty) encompassed those of opposer. It therefore presumed that the channels of trade and classes of consumers are the same for both marks.

As to the similarity of the marks BeauTV and THE BEAUTY CHANNEL, the Board found that consumers would likely understand applicant's mark to be a "telescoped" form of "BEAUTY TV." The terms TV and CHANNEL have a similar significance in the marks, and so consumers will perceive the marks as "having the same meaning and engendering the same commercial impression." The Board concluded that the similarities in the marks outweigh their differences.

Balancing the relevant duPont factors, the Board found confusion likely and it sustained opposer's Section 2(d) claim.

Read comments and post your comment here;

TTABlog note: It may not have been BeauTTAB, but all's well that ends well. Opposer won the opposition, applicant's hollow application was rejected, and the Board laid down the law regarding how to plead a registration.

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 9/29/2014   2 comments

Friday, September 26, 2014

Overflow Seats Available: TTAB Comes to Boston: October 3rd

There are some seats still available in the overflow room (video) for the TTAB hearing and morning TM session. Law School students admitted free! On Friday, October 3rd, the USPTO's Trademark Trial & Appeal Board (TTAB) and Patent Trial & Appeal Board (PTAB) will hold hearings in the Moot Court Room on the campus of Northeastern University School of Law. This monumental event is jointly sponsored by the Boston Patent Law Association and Northeastern University School of Law. Details and registration here. Summary of TTAB case here.


The morning program will focus on trademarks at the TTAB, Chief Judge Rogers will explain "Why the TTAB is not like the PTAB or District Court," followed by John L. Welch, TTABlog and Lando & Anastasi, sharing his views on "The Top 8 or 9 Losing TTAB Arguments." A three judge panel of the TTAB will hear the final argument in an inter partes proceeding, and Susan Montgomery and John Welch will then lead a question-and-answer period among the attendees. The luncheon keynote speaker is Kevin Johnson, Associate General Counsel, The Gillette Company, who will discuss "Brand Intellectual Property." The afternoon session will turn to patents, led off by Claire Laporte of Foley Hoag, speaking on "Emerging Issue in AIA PTAB Proceeding: Obviousness." A hearing before a three judge panel of the PTAB will be followed by a reception.

Read comments and post your comment here.

TTABlog comoment:  In my memory, I think this is possibly the most significant double-header since Wilbur Wood started both ends of a twin-bill for the Chicago White Sox against the Yankees in 1973 (he lost both games).

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 9/26/2014   0 comments

Finding Beer and Wine Closely Related, TTAB Affirms 2(d) Refusal of "5 GOLDEN RINGS" for Beer

The Board affirmed a Section 2(d) refusal to register the mark 5 GOLDEN RINGS for "beer; malt liquor," finding the mark likely to cause confusion with the registered mark GOLD RING for wines. The Board deemed the marks to be similar in sound, appearance, connotation, and commercial impression, and third-party registration and Internet evidence convinced the Board that the goods are "closely related." The Bruery, LLC, Serial No. 85656671 (September 24, 2014) [not precedential].


Applicant submitted a Wikipedia entry for  the carol, "The Twelve Days of Christmas," arguing that the phrase "five golden rings" engenders a different commercial impression than the cited mark GOLD RING because the former is "so intrinsically associated with Christmas that it is difficult to read it without elongating the vowels." Unfortunately, applicant submitted that bit of evidence with its appeal brief, and the Board sustained Examining Attorney Natalie Polzer's objection that the submission was untimely.

The Board found that, considering the marks as a whole, the addition of the number "5" and the pluralization of "rings" in the applied-for mark were insufficient to outweigh the similarities in the marks.

As to the goods, applicant contended that consumers would not be easily confused between its craft brewed products and registrant's wine. The Board pointed out, however, that the issue is not whether consumers would confuse the goods, but whether they would be confused as to the source of the goods. Moreover, applicant's identification of goods is not limited to "craft" beer.

The examining attorney submitted numerous use-based third-party registrations showing that the same entity has registered a single mark for both beer and wine. Moreover, Internet evidence demonstrated that many third parties produce and offer both beer and/or malt liquor and wine. And it is not uncommon for craft/microbreweries to also produce wine, sometimes under the same house mark. The Board therefore found that the goods are "closely related." [Why doesn't the Board just take judicial notice of these facts and declare that beer and wine are per se related for Section 2(d) purpose. That would save everyone a lot of time and agony. - ed.]


The presumed channels of trade channels for beer and wine overlap, and in fact the record showed that both goods are sold in liquor stores and by online retailers. [Doh! Judicial notice?]

Finally, applicant maintained that wine and craft beers are rarely purchased on impulse and that consumers of these goods are highly educated [really?] and able to distinguish different brand names. The Board perceptively noted that not all consumers of these goods are highly educated. The goods may be inexpensive and purchased by the public at large. Moreover, consumers who are sophisticated and knowledgeable about alcoholic beverages are not necessarily sophisticated or knowledgeable about trademarks. [And what about consumers who have imbibed an alcoholic beverage, and are then less careful about the next purchase? - ed.].

Considering the pertinent duPont factors, the Board found confusion likely, and it affirmed the refusal.

Read comments and post your comment here.

TTABlog note:  Had applicant submitted the Wikipedia evidence in timely fashion, would that evidence have made a difference? Or is this like the recent PURPLE HAZE case, where the Board observed that those consumers who were unaware of the Jimi Hendrix classic would find the mark confusable with SUNNY HAZE?

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 9/26/2014   14 comments

Thursday, September 25, 2014

Test Your TTAB Judge-Ability: Is BLACK BELT for Ammunition Confusable with BLACK BELT for Pepper Spray?

The USPTO refused registration of the mark BLACK BELT for ammunition, finding a likelihood of confusion with the identical mark registered for pepper spray. Are the goods related for Section 2(d) purposes? Where do you think the examining attorney looked for evidence of relatedness? How do you think this came out? In re RA Brands, L.L.C., Serial No. 85721641 (September 23, 2014) [not precedential].


The Board first addressed a procedural issue: applicant included with its brief a substantial amount of evidence not previously submitted. The evidence consisted of webpages corresponding to excerpts that the examining attorney had made of record with his denial of applicant's request for reconsideration, after the appeal had been filed. Although evidence first submitted with an appellant's brief is usually rejected, the Board found applicant's expanded excerpts to be admissible, since "the Examining Attorney had the opportunity to consider the entire websites from which he submitted certain webpages, [and] there is no unfair surprise to him in our considering Applicant's evidence." Indeed, the Board observed, it would be unfair to applicant not to consider this evidence.

As to the marks, the Board found that BLACK BELT is not a strong mark because it is suggestive: "it conveys the idea of being able to defend oneself or being good at self-defense." [Hmmm, not very suggestive of ammunition or pepper spray in my book - ed.].

There was substantial evidence that the trade channels for the goods are the same: for example, the websites of Wal-Mart, Dick's Sporting Goods, and various firearm-oriented outlets offer both types of products.


As to the similarity of the goods, however, the evidence was weak. The examining attorney submitted a large number of third-party registrations in an attempt to show that the registrants had adopted a single mark for both ammunition and pepper spray. However, only one company (with several registrations) adopted a single mark for both types of goods. "The fact that one company has registered the same mark for both ammunition and pepper spray is insufficient to show that ammunition and pepper spray may emanate from a single source."

The examining attorney also argued that the goods are related because they are both used for self-defense and are complementary. The Board pointed out, however, that "simply because a term can be found to generally describe both goods does not necessarily make them related." [But it was enough to make the mark suggestive? - ed.]

The only evidence (a registration) that might show the goods to be complementary involved products for police and security personnel, and they would be sophisticated purchasers presumably familiar with the practices in the trade and likely to know that companies do not make both ammunition and pepper spray.

Therefore, despite the identity of the marks and channels of trade, the Board found that the PTO had failed to meet its burden of proof, and so it reversed the refusal.

Read comments and post your comment here;

TTABlog note:  To me, black belt suggests black shoes.

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 9/25/2014   2 comments

Wednesday, September 24, 2014

ZAFRAN Deceptive and Deceptively Misdescriptive for Sauces and Salsas, Says TTAB

The Board affirmed refusals to register ZAFRAN and CUSTOM CULINARY ZAFRAN for "sauces and salsas" [CULINARY disclaimed], on grounds that the marks are both deceptive under Section 2(a) and deceptively misdescriptive under Section 2(e)(1)]. Both applications contained the statement that "the English translation of ZAFRAN is saffron" and applicant stated that its goods do not contain saffron. In re Griffith Laboratories International, Inc., Serial Nos. 85332209 and 85332239 (September 19, 2014) [not precedential].


According to the evidence, saffron is known as the "king of spices" and is "the world’s most expensive spice." It is widely used in many cuisines, including Italian, French, Indian, Persian, European, Arab, and Turkish. Saffron is said to have a unique flavor for which there is no substitute. It also has religious and medical uses. Examining Attorney Brian Neville submitted evidence of use of "zafran" in the United States, meaning saffron, including a dish containing "zafran sauce" sold by an Italian restaurant in New York City.

Section 2(a) Deceptiveness: The Board applied the CAFC's test for Section 2(a) deceptiveness:

(1) Is the term misdescriptive of the character, quality, function, composition or use of the goods?
(2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods?
(3) If so, is the misdescription likely to affect a significant portion of the relevant consumers’ decision to purchase?

Applicant conceded, and the evidence established, that "zafran" is a synonym for, or an alternative spelling of "saffron." If "saffron" is deceptive for applicant's goods, then so is "zafran." A mark that includes a deceptive term is deceptive under Section 2(a).

The Board found that, because saffron in used in a number of sauces and salsa, but not in applicant's, it is misdescriptive of applicant's goods. Moreover, consumers are likely to believe that applicant's goods contains saffron. Finally, the "king of spices" would be a desirable ingredient because of its unique flavor  and its medicinal properties.

The Board concluded that ZAFRAN is deceptive for applicant's goods, and therefore it affirmed the Section 2(a) refusal.

Section 2(e)(1) Deceptive Misdescriptiveness: For the sake of completeness, the Board considered the alternative refusal. It noted that deceptive marks (Section 2(a)) are unregistrable, whereas deceptively misdescriptive marks may be registered on the Supplemental Register, or on the Principal Register with a showing of acquired distinctiveness under Section 2(f).

The test for deceptive misdescriptiveness consists of the first two points or questions of the deceptiveness test. The Board already answered those two questions in the affirmative, and so it affirmed the Section 2(e)(1) deceptive misdescriptiveness refusal as well.

Read comments and post your comment here;

TTABlog note:  Although evidence attached to an appeal brief is usually rejected as untimely (or duplicative), the Board may take judicial notice of dictionary definitions, and it did so here with regard to the definition of "saffron" submitted by applicant.

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 9/24/2014   2 comments

Tuesday, September 23, 2014

TTAB Reverses Section 2(b) Refusal of WORLD LITERACY DAY With Flags

In a rare Section 2(b) decision, the Board reversed a refusal to register the mark shown below, for various goods and services, finding that the mark does not consist of or comprise the flags of the United States or foreign nations. "[T]he flags are not being displayed as flags, but rather are incorporated into the design as torsos of individuals," signifying "the international aspect of Applicant's goods and services," said the Board. In re 3P Learning Pty Ltd., Serial No. 85641327 (as amended, September 30, 2014) [not precedential].


Section 2(b) of the Trademark Act, in pertinent part, prohibits registration of a mark that "[c]onsists of or comprises the flag or coat of arms or other insignia of the United States ... or of any foreign nation, or any simulation thereof." The examining attorney maintained that the flags in applicant's mark "remain in their usual rectangular shape with the same proportions and designs of their countries [sic] usual flags." She pointed out that the flags are not highly stylized or changed, and contended that even in black and white they are readily recognizable.

Paris Convention: Applicant argued that its mark has been registered in two Paris Convention countries that, "like the United States, prohibit marks containing flags of member countries," and therefore it should be allowed to register here. The Board pointed out, however, that the Paris Convention, and particularly Article 6ter, provides a "baseline for protection, but it does not impose a cap on how restrictive a country may be in prohibiting registration of symbols, including flags."

"[T]he Paris Convention is essentially a treaty between the various member countries by which each member country accords to citizens of the other contracting countries the same trademark and other rights accorded to its own citizens by its domestic law. The underlying principle is that foreign nationals should be given the same treatment in each of the member countries as if they were citizens of that country. The Paris Convention is not premised upon the idea that trademark laws of each member nation shall be given extraterritorial application, but on exactly the converse principle that each nation’s law shall only have territorial application.” International Finance Corp. v. Bravo Company, 64 USPQ2d at 1601-02."

In short, "how others jurisdictions apply the Paris Convention Article 6ter under their domestic laws, in any particular case, is not instructive."

2(b) or not 2(b)?:  The Board acknowledged that the flags in applicant's mark are not "stylized in such a manner to blur the flag design." But use of the flags as the torsos of individuals "is not a traditional flag design."

In assessing a mark in view of the Section 2(b) prohibition, the Board must consider "the commercial reaction that it imports to viewers." Although generally recognizable, the flags in the applied-for mark "do not have the commercial impression of national flags but rather as designations of individuals from various nations."

The Board distinguished the applied-for mark from the example provided by the examining attorney (below), in which the flag is attached to a guitar that functions as a flag pole. Here, the flags are not being displayed as flags but instead appear as torsos of individuals, signifying the international nature of applicant's goods and services.


And so the Board reversed the refusal.

Read comments and post your comment here;

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 9/23/2014   0 comments

Monday, September 22, 2014

On Summary Judgment, TTAB Finds NAUGHTY GIRL Not Merely Descriptive of Wine

The Board granted Respondent's motion for summary judgment, finding the mark NAUGHTY GIRL to be not merely descriptive of "fortified wines; wines and fortified wines." [sic!]. Petitioner contended that "drinking respondent’s wine, which has a slightly higher alcohol content than some wines, will make women 'naughty.'" Judges Seeherman, Taylor, and Ritchie were not swayed. Alvi's Drift Wine International v. von Stiehl Winery, Cancellation No. 92058100 (September 12, 2014) [not precedential].


Respondent asserted that NAUGHTY GIRL does not immediately convey any knowledge about the ingredients, qualities, functions, features or characteristics of wine. Its vice president averred that the mark was chosen because it is "playful, humorous and imaginative,” not because it will actually make a person a "naughty girl.'" Dictionary definitions of "naughty" and "girl" made no reference to wine, and a LEXIS/NEXIS search failed to disclose a single article using "naughty girl" to describe an ingredient, quality, characteristic, function, feature, purpose or use of wine.

Petitioner argued that the evidence, and particularly respondent’s claim that "the effect of the NAUGHTY GIRL wine might be fun and excitement," created a genuine dispute of material fact that precludes the entry of summary judgment. According to petitioner, respondent's intent in choosing the mark NAUGHTY GIRL was to describe the wine's effect: "after someone drinks a few glasses of high alcohol wine, it is a fine line between 'fun and excitement' and 'act[ing] like a naughty girl.' ... Registrant is also navigating a slippery slope between 'playful' and 'act[ing]' like a “naughty girl.'"

Petitioner submitted pages from a blog which included the following item: "When I saw this wine at the Wisconsin Cheese Chalet, the place I bought my chocolate cheese, I knew I had to try it. It was calling the party girl in me because they had a whole party girl display going by this wine. Here are the bottle toppers that started the whole 'naughty girl' craze." Another entry, entitled “boob wine stoppers," included the same photo as the first entry, and stated: "These are crazy boob party girl wine stoppers...they made me buy Naughty Girl wine."


The Board found the mark to be at most suggestive of the goods. Petitioner's evidence showed "only that one blogger appreciates respondent’s product, not that there is anything about the term that is descriptive."

Moreover, even if one could conclude from petitioner’s evidence that some altered state of behavior may follow ingesting the goods, there is no evidence to show that the term NAUGHTY GIRL or its constituent words, conveys any information about an ingredient, quality, characteristic, function, feature, purpose or use of wine. Rather, a multi-stage thought process would be necessary: 1) respondent’s wine has a higher alcohol content; 2) drinking fortified wine may make one inebriated; 3) inebriated people act inappropriately; 4) people who act inappropriately may be considered naughty; 5) NAUGHTY GIRL describes the result on the drinker of using the wine. Even if one were to follow that thought process, because it obviously takes a multi-stage reasoning process, the mark is not merely descriptive but is at most suggestive.

In short, petitioner failed to rebut respondent's evidence, and so the Board granted the motion for summary judgment.

Read comments and post your comment here;

TTABlog note:  Is this a WYHP? What about that label?

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 9/22/2014   5 comments

Sunday, September 21, 2014

N.D. Fla. District Court Upholds TTAB's "BUSHWACKER" Decision

The U.S. District Court for the Northern District of Florida, in a Section 1071 review of the TTAB's decision in Sandshaker Lounge and Package Store, LLC v. Quietwater Entertainment, Inc., Cancellation No. 92051644 (January 31, 2013) [not precedential], granted the summary judgment motion of defendant Quitewater and upheld the Board's dismissal of the opposition. [Complaint here]. Sandshaker Lounge and Package Store, LLC v. Quietwater Entertainment, Inc., Civil Action No. 3:1cv114/MCR/CJK (N.D. Fla. September 5, 2014).


Sandshaker sought to cancel a registration for the mark BUSHWACKER for "entertainment services in the nature of a festival featuring live musical groups," on the ground of likelihood of confusion, claiming that it had previously used the identical mark for frozen drinks and for musical events, all of the parties' activities occurring in Pensacola Beach, Florida.

The district court concluded that Plaintiff Sandshaker lacked ownership rights in the BUSHWACKER mark due to its acquiescence in use of the same name by other businesses for their own drinks, prior to Defendant's Quietwater's first music festival. Therefore Sandshaker could not establish the priority of use necessary for a likelihood of confusion claim.

It is undisputed that Murphy and Sandshaker knowingly allowed other businesses in the area to use the same name for their own drinks prior to and after 1988. Campbell admitted it was too late for Sandshaker to attempt to claim exclusive use of the term for its drink. This knowing acquiescence to use of the name by other unrelated establishments is relevant to the TTAB’s finding that Sandshaker did not have trade identity rights sufficient to create priority.

The district court dismissed all five counts of the complaint, including trademark infringement, dilution.

Read comments and post your comment here;

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 9/21/2014   1 comments

CAFC Affirms TTAB Decision in Flying Birds Section 2(d) Opposition

On September 15, 2014, in a nonprecedential ruling, the U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's decision in Retail Royalty Company v. Michael R. Longshore, Opposition No. 91192917 (January 21, 2014) [not precedential]. [TTABlogged here]. The Board found the two design marks shown below, for overlapping clothing items, to be confusingly similar . The CAFC agreed. Longshore v. Retail Royalty Co., Appeal No. 2014-1448 (Fed. Cir. September 15, 2014) [not precedential].


Longshore, appearing pro se, argued that the marks are distinguishable because his mark depicts a dove whereas Retail Royalty's mark depicts a bird of prey. The CAFC ruled that the Board's conclusion, based on a visual comparison of the marks, was supported by substantial evidence.

Longshore maintained that his goods are "inspirational wear," while Retail Royalty's mark is used only for women's clothing. The CAFC, however, pointed out that the Section 2(d) determination must be based on the goods as identified in the involved application and registration. Here, there are no corresponding limitations in either. And so the Board did not err in presuming that the involved goods travel in the same channels of trade to the same classes of consumers.

Finally, with regard to a third-party registration for the mark HOLLISTER CALIFORNIA & Design, which depicts a bird in silhouette (below), the Board correctly concluded that the probative value of this registration was limited given the lack of evidence of actual usage of the mark.


Read comments and post your comment here;

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 9/21/2014   0 comments

Seats Available: TTAB Comes to Boston: October 3rd

We now have an overflow room available for the TTAB hearing and morning TM session. Law School students admitted free! On Friday, October 3rd, the USPTO's Trademark Trial & Appeal Board (TTAB) and Patent Trial & Appeal Board (PTAB) will hold hearings in the Moot Court Room on the campus of Northeastern University School of Law. This monumental event is jointly sponsored by the Boston Patent Law Association and Northeastern University School of Law. Details and registration here. Summary of TTAB case here.


The morning program will focus on trademarks at the TTAB, Chief Judge Rogers will explain "Why the TTAB is not like the PTAB or District Court," followed by John L. Welch, TTABlog and Lando & Anastasi, sharing his views on "The Top 8 or 9 Losing TTAB Arguments." A three judge panel of the TTAB will hear the final argument in an inter partes proceeding, and Susan Montgomery and John Welch will then lead a question-and-answer period among the attendees. The luncheon keynote speaker is Kevin Johnson, Associate General Counsel, The Gillette Company, who will discuss "Brand Intellectual Property." The afternoon session will turn to patents, led off by Claire Laporte of Foley Hoag, speaking on "Emerging Issue in AIA PTAB Proceeding: Obviousness." A hearing before a three judge panel of the PTAB will be followed by a reception.

Read comments and post your comment here.

TTABlog comoment:  In my memory, I think this is possibly the most significant double-header since Wilbur Wood started both ends of a twin-bill for the Chicago White Sox against the Yankees in 1973 (he lost both games).

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 9/21/2014   0 comments

Friday, September 19, 2014

Test Your TTAB Judge-Ability on these Five Section 2(d) Appeals

I once heard a TTAB judge say 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 or services, without more. Well, your would-be honor, try your skills on these five recent appeals, keeping in mind that, by my estimate, about 85% of Section 2(d) refusals are affirmed by the Board. [Answer in first comment].


In re Special Fruit NV, Serial No. 79112203 (September 17, 2014) [not precedential]. [Refusal to register BERRY FRESH & Design (shown below) for "fresh fruits and vegetables" [BERRY FRESH disclaimed] in view of three marks registered on the Supplemental Register: BERRY FRESH for "independent sales representatives in the field of assorted fresh berries specifically, fresh blueberries, blackberries, raspberries and strawberries" [BERRY disclaimed]; BERRY FRESH PRODUCE for "fresh fruits; fruits, namely, assorted fresh berries specifically, fresh blueberries, blackberries, raspberries and strawberries" [BERRY PRODUCE disclaimed]; and Berry Fresh, in standard character form, for "fresh fruits; fruits, namely, assorted fresh berries, specifically, fresh blueberries, blackberries, raspberries and strawberries" [BERRY disclaimed]].


In re Progressive Foam Technologies, Inc., Serial No. 85738691 (September 17, 2014) [not precedential]. [Refusal to register the mark PROGRESSIVE FOAM & Design for "construction materials, namely, exterior building insulation made of polystyrene, expanded polystyrene, or other foamed thermoplastic, shaped to conform with other building products such as siding, roofing, decking, or fencing" [FOAM disclaimed], in view of the registered mark PROGRESSIVE INSULATION & WINDOWS & Design for "home energy assessments leading to and including installation of advanced insulation systems to create a more energy efficient home thermal envelope" [INSULATION AND WINDOWS disclaimed]].


In re Universal Entertainment Corp., Serial No. 85872412 (September 17, 2014) [not precedential]. [Refusal to register PROSPEROUS YEAR for "slot machines and replacement parts therefor, video slot machines and replacement parts therefor; gaming machines and replacement parts therefor; gaming machines with liquid crystal displays and replacement parts therefor; mechanical reel type slot machines with liquid crystal displays and replacement parts therefor" in view of the registered mark PROSPEROUS LIFE for "gaming machines"].


In re United Fibers LLC, Serial No. 85721638 (September 16, 2014) [not precedential].[Refusal to register GREEN DEPOT & Design (shown first below) for "recycling" [GREEN disclaimed], in view of the registered mark GREENDEPOT & Design (second below) for "on-line retail store services featuring home improvement products; retail stores featuring home improvement products"].


In re East Meadow Corp. d/b/a Uncle Guiseppe’s Marketplace, Serial No. 85540708 (September 16, 2014) [not precedential]. [Refusal to register the mark UNCLE GIUSEPPE'S MARKETPLACE & Design (shown first below) for "ready-made sauces" [MARKETPLACE disclaimed], in view of the registered mark GIUSSEPPE'S, in stylized form, for "pre[-]prepared prepackaged frozen entrees consisting primarily of pasta and sauces for sale in food stores"].


Read comments and post your comment here.

TTABlog Note: Hey Joe, see any WYHA's here?

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 9/19/2014   4 comments

Thursday, September 18, 2014

Precedential No. 37: TTAB Affirms Rejection of Web Page Specimen for Computer Services

The TTAB has re-designated as precedential its three-year old decision in In re Chengdu AOBI Information Technology Co., Ltd., wherein the Board affirmed a refusal to register the mark IObit on the Supplemental Register for computer programming, software design, data conversion, web site hosting, computer maintenance, and other related services. The Examining Attorney had deemed the specimen of use (below) unacceptable because it did not show use of the mark for any of the identified services. In re Chengdu AOBI Information Technology Co., Ltd., 111 USPQ2d 2080 (TTAB 2011) [precedential].

 

The specimen of use was a screenshot from applicant's website. The only mentions of services on the web page were as follows:

Our sincere commitment to all our customers is that we will continue delivering innovative system utilities that are as simple to use as they are powerful and reliable. We also promise that we will keep providing the first-class free software and online service, for personal or non-commercial use.

We pursue the genuine ambition of becoming one of the world's top utility producers and Windows system service providers on the Internet.

The Board found these vague references to services to be insufficient to show use of the mark IObit for the recited services.

In fact, we cannot determine from this specimen whether the "online service" refers to a separate service, or is merely part of the free software product. Nor is applicant’s stated ambition to be a Windows system service provider an indication that applicant is providing a service now, and this statement certainly does not show that applicant is offering any of the services specified in the application.

The Board also reviewed other specimens that applicant had submitted, but applicant did not even argue that they were acceptable since they were either illegible or referred to products, not services.

Read comments and post your comment here;

TTABlog note:  This decision appears as Example No. 20 in the USPTO's new Examination Guide for Service Mark specimens (here).

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 9/18/2014   0 comments

Wednesday, September 17, 2014

TTAB Will Hear Final Argument in ASHCON Opposition In Boston, October 3rd

As part of the "TTAB and PTAB Come to Boston" program in Boston on October 3rd [here], the Board will hear final arguments in Diamond Power International v. Clyde Bergemann, Inc., Opposition No. 91201996. [Pleadings and other filings downloadable here.] The TTAB panel will consist of Chief Judge Gerard Rogers, Judge Susan Hightower and Judge Linda Kuczma.


Applicant Bergemann seeks to register the mark ASHCON for "consulting services in the field of custom manufacturing of industrial equipment for power plants, mainly bottom ash dewatering systems," in class 40, and for "consulting services in the field of design and development of industrial equipment for power plants, mainly bottom ash dewatering systems," in class 42. Opposer Diamond Power claims a likelihood of confusion under Section 2(d) with its registered ASH and ASH-formative marks for ash-conveying equipment. Opposer also claims that ASHCON is merely descriptive of applicant's services under Section 2(e)(1).


Read comments and post your comment here;

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 9/17/2014   0 comments

SUNNY HAZE Confusable With PURPLE HAZE for Beer, Says TTAB

The Board sustained this Section 2(d) opposition to registration of SUNNY HAZE for "beer; brewed malt-based alcoholic beverage in the nature of a beer," finding the mark likely to cause confusion with the registered mark PURPLE HAZE for beer, ale, lager, and malt liquor. Of course it all came down to the marks and, while noting the facts that HAZE is the second word in each mark and that HAZE may have some meaning in the context of beer, the Board concluded that applicant's mark appears to be a variant of opposer's. Abita Brewing Company, LLC v. Mother Earth Brewing, LLC., Opposition No. 91203200 (September 11, 2014) [not precedential].


Objections to opposer's survey: Applicant objected to opposer's likelihood of confusion survey because it did not include respondents from the limited number of markets in which applicant sells its products, and it did not present the marks in the manner in which consumers would have seen them in the marketplace (i.e., on beer bottles or cans, accompanied by the respective house mark). The Board, however, pointed out that applicant seeks a nationwide, geographically unrestricted registration, and so the universe of survey respondents was not overbroad. Likewise, marketplace conditions are irrelevant when the Board is considering the likelihood of confusion of two marks, SUNNY HAZE and PURPLE HAZE, in standard character form.


The marks: As we know, when the goods are, at least in part, identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. Applicant argued that the words PURPLE and SUNNY, appearing as the first term in the respective marks, are dominant, and that the marks when viewed in their entireties evoke different images. The Board, however, found that the placement of the word HAZE does not distinguish the marks because SUNNY HAZE appears to be a variant of PURPLE HAZE. And even if HAZE has some meaning in the context of beer, as discussed below, "it is not so weak that consumers would  give greater significance to PURPLE and SUNNY and ascribe a different source to each brand of beer."

Applicant asserted that "haze" is descriptive of a characteristic of beer, and is used in the beer industry to measure beer clarity. Furthermore, PURPLE HAZE calls to mind the Jimi Hendrix song of the same name, along with psychedelic imagery associated with marijuana and LSD, imagery that SUNNY HAZE does not evoke.


The Board found no evidence that the general beer-drinking public would be familiar with the technical definition "haze." They would be aware, however, of the ordinary dictionary definition of "haze" (Webster's: "a cloudy appearance in a transparent liquid or solid"). According to opposer's website, PURPLE HAZE beer has a "subtle purple color and haze," and so the term does have some significance that consumers would recognize. (In addition, applicant pointed out that "purple" describes opposer's beer.) With regard to the Jimi Hendrix song, the evidence did not establish that the general beer-consuming public would make the connection between the mark PURPLE HAZE for beer and the song.

In any case, "at least those consumers who view the mark as having a descriptive feature and do not make the Jimi Hendrix association would see the marks PURPLE HAZE and SUNNY HAZE as more similar than they are different, as both identify a color or mood and both share the word HAZE." Moreover, even if the marks connote two different types of haze, a "purplish or dark haze" and a "bright, golden haze," they both connote types or colors of haze. And as to the ordinary dictionary meaning of "haze," it applies to both marks.

And so the Board concluded that this first duPont factor favored a finding of likely confusion.

Other factors: Opposer's evidence demonstrated that PURPLE HAZE beer has enjoyed some sales success, but it did not prove the widespread recognition required for fame under Section 2(d). The limited number of third-party registrations and Internet uses submitted by applicant were of little probative value vis-a-vis the strength of the PURPLE HAZE mark. Applicant argued that its craft beer is purchased with care, but neither the involved application or registration is limited to craft beer, nor are they limited as to price of channels of trade. In any case, even sophisticated purchasers are not immune to confusion when similar marks are used on identical goods. Finally, the lack of proof of actual confusion was of no probative value given the limited time of concurrent use of the mark, and the limited geographic distribution of applicant's product.

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

Read comments and post your comment here;

TTABlog note:  No mention that one who is drinking beer may have a more hazy recollection of each mark.

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 9/17/2014   7 comments

Tuesday, September 16, 2014

Precedential No. 36: TTAB Reverses Refusal of Service Mark Specimen for Financial Services

The Board has re-designated as precedential its ruling in In re McGowan Publishing Company, Inc.,, wherein the Board reversed a refusal to register the mark CASHFLOW UNITS for "investment products, namely, wealth management and performance tracking, and providing financial advisory and financial portfolio management services." The Examining Attorney had deemed the specimen web page (shown below) unacceptable because it did not display the mark in association with the recited services. The Board, however, found that links labeled with the mark, for documents used in the rendering of the services, supplied the required association. In re McGowan Publishing Company, Inc., 111 USPQ2d 2000 (TTAB 2013) [precedential].


According to the Trademark Examining Attorney, the specimen "contains only general information about The McGowan Group Asset Management Company (the Applicant), and makes no specific reference to ‘wealth management and performance tracking’ or the provision of ‘financial advisory and financial portfolio management services.'" Applicant argued that the web page "features links to two of Applicant's specific investment products ... offered clearly under the mark CASHFLOW UNITS." 

The question for the Board was "whether consumers will associate CASHFLOW UNITS with such services." The Board noted that there was, "unfortunately," no evidence regarding the reaction of consumers to applicant's use of the mark.

Reviewing the specimen web page, the Board observed that the disclosures at the bottom of the page inform the reader that applicant is a "federally Registered Investment Advisory Firm," which means that it is registered with the SEC as an entity that, according to several financial dictionaries, "for compensation, engages in the business of advising others, either directly or through publications or writings, as to the value of securities or as to the advisability of investing in, purchasing or selling securities." The wording "McGowan Group Asset Management" at the top of the page "informs the viewer that CASHFLOW UNITS are part of an asset management service."

Immediately below CASFLOW UNITS appear (1) the "MGAM Wrap Program Assets Discretionary Advisory Agreement" and (2) the "MGAM RIA Disclosure." The agreement is applicant's contract with the investor, and the disclosure notifies the client that applicant has complied with conflict of interest rules. "In other words," said the Board, "these are documents used by applicant in rendering its services."

The Examining Attorney contended that the specimen web page displays only links to the two documents, not the documents themselves. Moreover, the agreement is merely a document used in the normal course of business, and providing such an agreement is not a service. The document is not disseminated to the public as advertising, and it shows only potential use (when the blanks are filled in). In short, it is not an "investment product."

The Board, however, concluded that "a client or prospective client of applicant's investment advisory services would view the mark on the web page in close proximity to links for documents used in rendering those services." The link to the agreement "functions as an offer to enter into an arrangement for the provision of 'Advisory' services relating to the client's assets. Thus the links to these documents creates an association between the mark and the offered services activity."

The Board therefore reversed the refusal to register.

Read comments and post your comment here;

TTABlog comment:  Doesn't make much sense to me. Looking at the specimen, I have no idea what CASHFLOW UNITS is supposed to refer to. There is no indication that the mark CASHFLOW UNITS appears on the contract or on the disclosure document. The service mark for the advisory services seems to me to be McGowanGroup or maybe "MGAM." CASHFLOW UNITS seems to refer to some particular fund that the company is peddling. Note the "TM" next to CASHFLOW UNITS, not "SM."

BTW: take a gander at the USPTO's new Examination Guide for Service Mark specimens (here). This case appears as example no. 17. Perhaps when the Examination Guide was promulgated, the Board decided to go back and make this decision precedential.

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 9/16/2014   2 comments

Monday, September 15, 2014

USPTO Issues Examination Guide for Service Mark Specimens of Use

The USPTO has issued an Examination Guide for service mark specimens of use: download here.


posted by John L. Welch @ 9/15/2014   0 comments

Test Your TTAB Judge-Ability on these Four Mere Descriptiveness Refusals

Here are four recent appeals from mere descriptiveness refusals under Section 2(e)(1). Let's see how you do with them, bearing in mind that the Board affirms, in my estimation, more than 80% of these refusals. [Answers in first comment].


In re Tateho Kagaku Kogyo Kabushiki Kaisha d/b/a Tateho Chemical Industries Co., Ltd., Serial No. 79119845 (September 9, 2014) [not precedential]. [Mere descriptiveness refusal of PUREMAG for, inter alia, "“magnesium hydroxide, magnesium oxide, magnesium carbonate; magnesium oxide ceramics in particle and compacted form used as target material for sputtering, electron-beam deposition, evacuated deposition"].


In re New Energy Technologies, Inc., Serial No. 85673541 (September 10, 2014) [not precedential]. [Mere descriptiveness refusal of MOTION POWER & Design for "generators of electricity, namely, generators that generate electricity by capturing and converting kinetic energy into electricity"].


In re In re Hunter Engineering Company, Serial No. 85593757 (September 11, 2014) [not precedential]. [Mere descriptiveness refusal of ECAL for "automated systems, namely, micro-processor based hardware and software used to monitor the status of and self-calibrate equipment, namely, wheel balancers for balancing the wheels of land vehicles"].


In re Gyroz, Inc., Serial No. 85551984 (September 12, 2014) [not precedential]. [Mere descriptiveness refusal of GYROZ for "restaurant services, including sit-down service of food and take-out restaurant services"].


Read comments and post your comment here.

TTABlog note: See any WYHAs here?

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 9/15/2014   4 comments

Friday, September 12, 2014

Susan M. Richey Appointed Deputy Chief Administrative Trademark Judge at the TTAB

Susan M. Richey has been named Deputy Chief Administrative Trademark Judge at the Trademark Trial and Appeal Board. She becomes the twenty-second judge now sitting on the Board.


Susan Richey comes to the Board from the University of New Hampshire School of Law, where she served as a professor and Associate Dean. Prior to her 18-year tenure as an IP professor and law school administrator, Ms. Richey spent 13 years in Los Angeles engaged in the private practice of intellectual property law, with a concentration on trademark matters and litigation. While at UNH, Ms. Richey maintained her connection to private practice by consulting with a New Hampshire firm on IP and Internet issues. In addition to her academic and private practice experience, Ms. Richey served as a staff law clerk for the U.S. Court of Appeals for the Fourth Circuit.

Ms. Richey has been a frequent speaker on IP issues and has authored a very large number of law review articles and other papers. She has served as a member of the Editorial Board of the Trademark Reporter, as chair of the INTA Panel of Neutrals, and as a member of INTA’s Academic Committee. Since 2008, after nomination by the U.S. State Department, Ms. Richey has served as the U.S. representative to the Confidentiality Commission of the Conference of the States Parties for the Organisation for the Prevention of Chemical Weapons.X

After earning a B.S. in Biology from the College of William and Mary, and a B.A. in English from the University of Baltimore, Ms. Richey attended law school at the University of Maryland School of Law.

posted by John L. Welch @ 9/12/2014   2 comments

TTAB Finds "SWISSCODE" Not Confusable With "SKINCODE 2 & Design" for Cosmetics

The Board dismissed an opposition to registration of  the mark SWISSCODE for "[s]oap; perfumery, essential oils, cosmetics, hair lotions; dentifrices." finding it not likely to cause confusion with the previously used and registered mark SKINCODE 2 & Design (shown below) for "soaps, cosmetics, all adapted for use on the skin and the scalp." In an earlier procedural ruling [TTABlogged here], the Board had ruled that opposer, which relied only on its pleaded registrations, had made a prima facie showing of likelihood of confusion, shifting the burden of producing evidence to applicant. Third-party registrations and evidence of use sealed the deal for applicant.  Skincode AG v. Skin Concept AG, Opposition No. 91206091 (September 10, 2014) [not precedential].


The Board found the goods to be, in part, identical, and it therefore assumed that the trade channels and classes of consumers for those goods are the same. As to the marks, the Board looked to the sixth duPont factor, the number and nature of similar marks on similar goods, which "involves the notion that as a result of a certain degree of third-party use of similar marks for similar goods, consumers may be able to differentiate between such marks and that confusion is not likely even if the marks contain a common element."

The Board concluded that, because of the points of dissimilarity between the marks, combined with defendant's evidence, the marks are sufficiently different to avoid a likelihood of confusion.

"First and foremost," the marks begin with terms that, although suggestive or descriptive, have very different meanings. The Board noted once again that "it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered." The presence of the subscript "2" in opposer's mark - suggesting CO2 (carbon dioxide) or O2 (oxygen) - further distinguishes the marks.

Applicant submitted numerous third-party registrations for marks containing the word "code." By themselves, these registrations are entitled to no weight on the issue of the strength of the mark because they do not evidence use of the third-party marks. However, applicant buttressed this evidence with printouts or photos of the following marks in actual use on products similar to those involved here: BEAUTY CODE, ARMANI CODE, BIOCODE BEAUTY CARE, CODE SPORT, 3D CODE, COLLAGEN CODE, COWBOY CODE, FACE CODE, YOUTH CODE, and CODE 4. This evidence showed that "the parties in this proceeding are hardly unique in seeking to register and use the term CODE in connection with soap, cosmetics and other skincare goods." Consequently, the fact that this term is found in both marks "has less importance when considering the overall similarity of the two marks."

The Board therefore dismissed the opposition.

Read comments and post your comment here;

TTABlog note:  Third-party registrations alone are considered of no probative value on whether two marks at issue are confusable, absent proof of the nature and extent of the third-party use. Here there was evidence of the nature, but not the extent, of the third-party use, but the Board accepted that evidence. Without the third-party marks, the Board would have been left with a comparison of the two marks alone, and on the previous Rule 132(b)  motion to dismiss it already said that that was not enough.

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 9/12/2014   1 comments