Wednesday, December 31, 2014

TTABlog Quarterly Index: October - December 2014

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Section 2(a) - Deceptiveness:
Section 2(d) - Likelihood of Confusion:


Section 2(e)(1) - Mere Descriptiveness:
Section 2(e)(3) - Primarily Geographically Deceptively Misdescriptive:
Section 2(e)(5) - Functionality:


Section 2(f) - Acquired Distinctiveness:
Bona Fide Intent:
Fraud:
Genericness:
Discovery/Evidence/Procedure:


CAFC Decisions:
Recommended Reading:
Other:

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 12/31/2014   0 comments

Tuesday, December 30, 2014

TTAB Test: Is BACCARA for Bottled Water Confusable With BACCARAT for Glassware?

Baccarat opposed an application to register the mark BACCARA in the Stylized form shown below, for "bottled water," claiming likelihood of confusion with the registered mark BACCARAT, in both standard character form and in the stylized form shown second below, for crystal and glassware. The Board found the BACCARAT mark to be famous, for likelihood of confusion purposes, for crystal and glassware. But what about the goods? Are they too close? Baccarat v. Northeast Distributors Inc., Opposition No. 91194574 (December 22, 2014) [not precedential]. 



Fame: Opposer began producing products in 1764 when King Louis XV authorized the Bishop of Metz to create a glassworks in the town of Baccarat, France. Opposer’s crystal wares have won numerous national and international awards and have garnered significant unsolicited media attention. Opposer’s products account for about 13% of the U.S. market. Its sales have amounted to $20-30 million per annum in the last decade, and advertising expenditures were about $3 million per year. The word BACCARAT is listed in some dictionaries as a trademark for fine crystal made in France. The Board concluded that BACCARAT is famous for crystal and glassware.

The marks: The Board found applicant’s mark to be similar in appearance to both of opposer’s marks. Neither applicant’s mark nor opposer’s stylized mark “is so highly stylized that, when considering the fame of Opposer’s marks, the special form displays do not serve to distinguish the overall visual similarities of the marks.” The Board must focus on the recollection of the average purchaser, who retains only a general impression of the marks. “This is especially true in this case where Opposer’s marks are famous and they are accorded a greater scope of protection or exclusivity of use.” A consumer may exercise less care in purchasing products under a famous mark.

“In reality … [w]hat happens is that a purchaser is less likely to perceive differences from a famous mark. All that is needed is a suggestion of such mark to trigger a mental perception that it is the famous mark. Purchasers simply do not take the time to study the marks and see the differences. Nor are they expected to.” B.V.D. Licensing Corp. v. Body Action Design, Inc., 6 USPQ2d at1722 (Nies, J., dissenting), quoted in Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 22 USPQ2d at 1456 (emphasis in the original).

With regard to sound, since the involved marks are not common words, there is no correct way to pronounce them. However, the marks are likely to have similar pronunciations. The connotations of the marks are the same. BACCARAT is a card game played in European casinos.The game is also spelled "baccara." In short, the marks have similar meanings and engender similar commercial impressions.

The goods: seven third-party registrations suggested that a single mark may be used as a source identifier for glassware and bottled water (e.g., SESAME STREET, SEATTLE'S BEST COFFEE). In addition, the evidence showed that Baccarat has extended its product line to include trophies, candlesticks, jewelry, light fixtures, bottles for perfume manufactures, and bottles for cognac sellers. It has collaborated with Evian in producing limited edition bottles of water. "In light of the fame of Opposer’s mark and the above-noted expansion of its product line, the use of a similar mark in connection with bottle water could be perceived as another of opposer’s commercial activities capitalizing on its BACCARAT mark."

In view of the common knowledge that the "licensing of commercial trademarks on ‘collateral products’ has become a part of everyday life,” and in view of the use of the BACCARAT mark in a growing line of collateral products, the Board found the goods of the parties to be related.

Because there are no limitations as to channels of trade or classes of customers in the involved applications or registrations, the Board presumed that the goods move in all normal trade channels for those goods, all classes of purchasers. And, as discussed above, the fame of the BACCARAT mark may make consumers less careful in their purchases.

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


Read comments and post your comment here

TTABlog note: The sales and advertising figures for BACCARAT glassware are not astronomical, but could you argue that it's not a famous mark, at least in the Section 2(d) realm? But why would anyone think that Baccarat has expanded into bottled water?

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 12/30/2014   2 comments

Monday, December 29, 2014

Precedential No. 45: TTAB Grants Motion to Amend Opposition to Section 66(a) Application

In this consolidated proceeding, Prosper filed a notice of opposition against IBM’s Section 66(a) application (Request for Extension of Protection) to register the mark BIGINSIGHTS for various goods and services in International Classes 9, 35, and 42. As required for an opposition to a Section 66(a) application, Prosper employed the USPTO’s electronic filing system (ESTTA), indicating on the ESTTA form that it was opposing IBM’s application in all classes, on the grounds of likelihood of confusion under Section 2(d) and likelihood of dilution under Section 43(c), without specifying which claims pertained to which classes. However, in the opposition document attached to the ESTTA notice Prosper more specifically pleaded its Section 2(d) claim against only the class 35 services only, and its dilution claim against only the class 9 goods and the class 42 services. Before IBM answered, Prosper filed an amended notice of opposition, by right under FRCP 15(a)(1), in which it dropped the dilution claim but asserted likelihood of confusion against all three classes in IBM's application. When Prosper moved for leave to file a second amended notice of opposition in order to set forth in greater detail its Section 2(d) claim, IBM responded by asserting that Prosper was trying to improperly expand its notice of opposition because in the original notice of opposition, the Section 2(d) claim was aimed only at the class 35 services. The Board sided with Prosper. Prosper Business Development Corp. v. International Business Machines, Corp., 113 USPQ2d 1148 (TTAB  2014) [precedential].


IBM pointed out that classes 9 and 42 were not the target of the likelihood of confusion claim included in the notice of opposition that Prosper filed along with the ESTTA opposition form. The Board framed the issue as follows: to what extent may an opposer amend a notice of opposition to a Section 66(a) application, “when the grounds stated in the original notice of opposition are arguably narrower in scope than the grounds for opposition set forth on the ESTTA electronic form?” The Board explained:

An opposition to a Section 66(a) application must be filed through ESTTA. See Trademark Rule 2.101(b)(2). Filing an opposition through ESTTA requires the completion of an electronic form, and the attachment of a “pleading (i.e. a short and plain statement showing that the filer is entitled to relief).” TBMP § 110.09(c)(1). In all oppositions filed through ESTTA, the electronic form requires entry of information necessary for the Board to institute the proceeding, including the grounds for opposition, which, it is expected, are further explained in the attached pleading. When an opposition to a Section 66(a) application is filed, the USPTO must notify the International Bureau (“IB”) of the World Intellectual Property Organization within strict time limits of “all of the grounds for the opposition.” Trademark Act Section 68(b)–(c), 15 U.S.C. § 1141h(b)-(c). In fulfillment of this requirement for notification, the ESTTA system automatically transmits to the IB the information provided by the filer on the ESTTA electronic opposition form. The automated system does not send a copy of the attached pleading to the IB. See CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1960 (TTAB 2011).

Once the IB is timely notified of the grounds for an opposition, the USPTO may not entertain an opposition on any ground as to which the IB has not been timely notified. See Trademark Act Section 68(c)(3), 15 U.S.C. § 1141h(c)(3). That is, once filed, an opposition against a Section 66(a) application may not be amended to add to the grounds for opposition or to add to the goods or services subject to opposition beyond those as to which the IB has been notified. See Trademark Rule 2.107(b); Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558 (TTAB 2011). Because the IB is notified of the grounds of the opposition by the contents of the ESTTA electronic opposition form and not the actual pleading attached thereto, it is the ESTTA electronic opposition form, and not the text of the pleading, that controls the scope of permissible amendments to claims in opposition proceedings involving Section 66(a) applications. See CSC Holdings LLC, 99 USPQ2d at 1962-63.

Here, the IB was notified that Prosper opposed in three classes, and that the grounds for opposition were likelihood of confusion and dilution. "Because the limitation on a party opposing registration of a Section 66(a) application prohibits asserting grounds for opposition which were not timely noticed to the IB, it is the scope of the notice to the IB which controls the scope of permissible amendments to the notice of opposition under Trademark Rule 2.107(b)." The Board therefore granted Prosper's motion for leave to file its second amended notice of opposition, noting the Board's "general policy of liberally granting leave to amend pleadings at any stage of a proceeding when justice so requires, unless entry of the proposed amendment would be prejudicial to the rights of the adverse party or would violate settled law."

Read comments and post your comment here

TTABlog note: No, oppositions to Madrid Protocol applications are not conducted in Spanish. Note that IBM, a US Corporation, based its request for extension on a French registration. (See footnote 1).

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 12/29/2014   0 comments

Wednesday, December 24, 2014

Recommended Reading: Two Trademark Reporter Commentaries on Trademark Use

The latest isssue of The Trademark Reporter is devoted to the topic of trademark use. Included in this valuable compilation are two "commentaries" that I want to call to your attention. A "commentary," according to TMR guidelines, "is intended to be a short essay (1,000–2,000 words) on trademark issues that shares an opinion, stimulates discussion, or responds to a previously published commentary or article. A commentary may be a musing on an aspect of trademark law, a policy issue, or a point of practice. It may be straightforward, provocative, or humorous in style." If you have something to say about trademarks, think about submitting a commentary to TMR (email to tmr at inta.org).


In the first commentary, Lisa Pearson, of Kilpatrick Townsend & Stockton, LLP, discusses Fluid Trademarks and Dynamic Brand Identities.

As they strive to humanize their brands and keep them relevant, more and more brand owners challenge trademark fundamentals by rejecting static marks in favor of marks that change frequently—and sometimes constantly. Logos increasingly function as brand ambassadors rather than mere signatures to engage consumers. Trade dress escapes the confines of products and packaging, becoming ever more instrumental in brand identification. These changing source identifiers have come to be known as “fluid marks.” Currently, the law on fluid marks remains nascent. This article offers practical ideas for brand owners and trademark lawyers seeking to keep pace with the brave new world of fluid branding.

In the second commentary, TMR Editor-in-Chief Jonathan E. Moskin considers the B&B v. Hargis case now awaiting a decision by the Supreme Court, in a commentary entitled Will There Be Any Repose at This B&B? The Supreme Court Weighs Collateral Estoppel from the TTAB.

After 18 years of litigation, including one trademark infringement action in federal court, a cancellation action and an opposition proceeding in the Trademark Trial and Appeal Board (“TTAB”) and then a second trademark infringement action (and three appeals to the Eighth Circuit), the Eighth Circuit refused, in B&B Hardware, Inc. v. Hargis Industries,1 to give collateral estoppel effect to the prior TTAB finding that Hargis’s mark SEALTITE for self-drilling and self-tapping screws was likely to be confused with B&B’s mark SEALTIGHT for fasteners used in the aerospace industry. The purpose of collateral estoppel, of course, is to give finality to previously decided issues by preventing their relitigation in a second suit. By ensuring finality, the rule also prevents needless conflict between tribunals asked to adjudicate the same issue. For almost two decades, however, this B&B is one where rest and repose thus far have proven entirely elusive.

TTABlog notes: The INTA's amicus brief in B&B v. Hargis may be found here. INTA takes that position that "Although preclusion should not apply, district courts should be able to decide whether to give any deference to a prior determination of the Trademark Trial and Appeal Board on individual factors that might be considered in the broader analysis of whether confusion is likely."

Once again, I thank The Trademark Reporter for granting permission to provide links to these two commentaries, which are Copyright © 2014 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 106 TMR No. 6 (November-December 2014).

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 12/24/2014   2 comments

Tuesday, December 23, 2014

TTAB Finds SHRIMP COTIJA SPRING ROLLS Generic for ... Guess What?

Agreeing with Examining Attorney Linda M. Estrada, the Board found the designation SHRIMP COTIJA SPRING ROLLS to be generic for "Dinner rolls, spring rolls and rolls containing shrimp, vegetables and cheese." In addition, the Board found that the applied-for mark fails to function as a trademark because it is merely informational. In re Steven DiFillippo, Serial No. 85013002 (December 17, 2014) [not precedential].


The Board found the genus of goods to be adequately described by the identification of goods, and the relevant consumers to be the general public. The question, then, was whether "the term sought to be registered [is] understood by the relevant public primarily to refer to that genus of goods?"

The examining attorney relied on In re Gould in arguing that the applied-for mark is a compound term because the constituent words are generic (based on dictionary and other evidence) and the term as a whole conveys no different meaning than the words themselves.

Applicant argued that In re American Fertility is applicable, "as the words shrimp, cotija and spring rolls are not united in order to form one compound word, such as [Gould's]  'Screenwipe.'" Under American Fertility the proposed mark (if a phrase) must be considered in its entirety, and dictionary definition of the constituent words do not suffice to prove genericness.  Applicant asserted that there was no evidence that the phrase SHRIMP COTIJA SPRING ROLLS is in use.

Furthermore, applicant maintained that the word "cotija" is not found in the main American dictionaries, and "that the average American citizen does not know that ‘COTIJA’ is a cheese, and does not know of the cheese’s place of origin, Cotija, Mexico." Applicant pooh-poohed evidence from two online references - Wordnik and www.cheese.com - because the former is a collaborative content website that should not carry much evidentiary weight, and the latter is a website for specialists and cheese connoisseurs.

The Board, however, found that other evidence corroborated the Wordnik entry, and it noted that the general public includes persons who are interested in cheese. Moreover, many consumers obtain information from or are exposed to information on the Internet. The Board concluded that "[t]he cumulative weight of the evidence supports a finding that a substantial number of consumers have been exposed to the term 'cotija' as a type of cheese, and, therefore, would understand it to be the name of a type of cheese, despite the absence of the word from the various dictionaries accessed by Applicant."

Applicant pointed to the supposed incongruity of combining the term COJITA (Mexican) with SPRING ROLLS (Asian), but the Board found nothing incongruous or catchy about the combination that would remove from the proposed mark the clear and obvious meaning of the list of ingredients.

Finally, applicant pointed to three registrations that it owns: for BUFFALO CHICKEN SPRING ROLLS (CHICKEN SPRING ROLLS disclaimed) for dinner rolls, spring rolls and rolls containing chicken, cheese and hot sauce; CHICKEN PARM SPRING ROLLS (SPRING ROLLS disclaimed) for dinner rolls, spring rolls and rolls containing chicken, cheese and hot sauce; and PHILLY CHEESE STEAK SPRING ROLLS (SPRING ROLLS disclaimed) for dinner rolls, spring rolls and rolls." The Board however, pointed out that, although consistency is a goal of the USPTO, the Board is not bound by the decisions of examining attorneys in other cases; rather, it must decide each case on the record evidence before it.

The Board found that this case does not fall clearly within either Gould or American Fertility. The applied-for mark is not a compound word, and even if it could be viewed as a phrase, "we do not read American Fertility to suggest that an applicant could take a clearly generic term 'SPRING ROLLS' for spring rolls and add to it the clearly generic terms 'SHRIMP COTIJA' for the main ingredients, shrimp and cotija, in those spring rolls and thereby create a registrable trademark simply because it is a phrase rather than a compound term."

"[W]hile this record does not include examples of third-parties using Applicant’s exact formulation, it does include many examples of various parts of SHRIMP COTIJA SPRING ROLLS being used together to name the offered dish or the ingredients therein." The fact that applicant may be the first and only user of SHRIMP COTIJA SPRING ROLLS does not justify registration if the only significance conveyed by the term is that of the category of goods. The USPTO must show that consumers would understand the designation as a whole to have generic significance, not that the public uses the designation in that manner.

The Board concluded that the examining attorney had clearly established that SHRIMP COTIJA SPRING ROLLS is generic for the identified goods, "or, more precisely, under the language of Section 23, is not 'capable of distinguishing the applicant’s goods or services.' 15 U.S.C. § 1091(c)."

In further finding that the designation fails to function as a trademark, the Board reviewed applicant's manner of use as well as the other evidence of record, concluding that the designation would not be perceived as a source identifier, but rather as informational matter.

Read comments and post your comment here

TTABlog note: If the applied-for mark is generic, it is flat out unregistrable. However, if the designation fails to function as a mark (but is not generic), then arguably it could become a trademark if used properly and if it acquires distinctiveness. Do you agree?

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 12/23/2014   2 comments

Monday, December 22, 2014

Precedential No. 44: TTAB Test - Are "REDNECK RACEGIRL & Design" and "RACEGIRL" Confusable for Clothing?

Lisa Covalinski applied to register the mark REDNECK RACEGIRL in the design form shown below, for athletic apparel, including shirts, hats, and caps, but the USPTO refused registration, deeming the mark confusingly similar to the registered mark RACEGIRL for various clothing items, including shirts, hats, and caps. The goods are obviously legally identical, but are the marks close enough? Doesn't the "double R" in applicant's mark predominate and serve to distinguish the marks? How do you think this came out? In re Covalinski, 113 USPQ2d 1166 (TTAB 2014) [precedential].


The Board found confusion unlikely because of the "crucial differences" in the marks. The graphic elements of the applied-for mark "serve not only to draw attention to the RR letters apart from the wording, but also make the letters that form the 'a-c-e' of the word 'RACEGIRL' difficult to notice." Consumers would be likely to encounter applicant's clothing items in a retail setting, on hang tags or neck labels, and "[i]n that context, the visual impression of the mark is likely to be more important."

The examining attorney maintained that the words REDNECK RACEGIRL are the dominant feature of applicant's mark because the literal portion of a word + design mark generally makes the more significant impact on the consumer. The Board, however, observed that the word portion is not always dominant, citing several prior Board decisions in which the design was deemed dominant.

The Board noted that in In re Viterra, the CAFC acknowledged the general rule when finding that the word portion predominated in the registered mark X-Seed & Design (shown below).



But in Viterra, the CAFC also found no inconsistency with the Board's ruling in In re White Rock Distilleries, Inc., where the Board found no likelihood of confusion between VOLTA for caffeine-induced vodka and TERZA VOLTA & Design for wines (below), due to the prominence of the design.


And so the Board found the first du Pont factor dispositive, and it reversed the refusal.


Read comments and post your comment here

TTABlog note: How did you do?

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 12/22/2014   0 comments

Friday, December 19, 2014

TTABlog Flotsam and Jetsam, Issue No. 15: Fee Reduction, New TPAC Members, TTAB Website Beta

Here's another edition of "Flotsam and Jetsam," wherein I provide, on an irregular basis, timely tidbits to the TTABar. The last edition was a mere nine months ago. Can't promise when the next one will be.



Trademark Fee Reduction: In a notice in the Federal Register on December 16th (here), the USPTO announced that certain trademark fees will be reduced as of January 17, 2015. In particular, the fee for filing an application will be reduced by $50 per class, and the renewal fee will be reduced by $100 per class. To quote the Federal Register notice:

[T]he USPTO reduces by $50 the fee for an application filed using the regular TEAS application form, and a TEAS request for transformation of an extension of protection to the United States into a U.S. application pursuant to § 7.31, from $325 to $275 per class if the applicant authorizes email communication and agrees to file all responses and other specified documents electronically during the prosecution of the application. This option will be known as a TEAS Reduced Fee (‘‘TEAS RF’’) application. The USPTO also reduces by $50 the fee for a TEAS Plus application from $275 to $225 per class and reduces by $100 the fee for a TEAS application for renewal of a registration from $400 to $300 per class.

Carl Oppedahl

At his blog, Ant-like Persistence - a name only a patent attorney could love - Carl Oppedahl suggests (here) that, when possible, one might delay filing a renewal application until after January 15th in order to save a few bucks. Also, if filing a new application before January 17, one might lump all the goods and services together and pay a single filing fee, then when the USPTO sorts things out and asks for more fees for the additional classes, one may pay the lower fee for the additional classes.

Two New TPAC Members: The USPTO has announced the appointment of two new members to the Trademark Public Advisory Committee (TPAC): Jonathan Hudis, a partner with Oblon, Spivak, McClelland, Maier & Neustadt, LLP; and Timothy J. Lockhart, of Wilcox & Savage, P.C. The full list of committee members, with biographical information, may be found here.

Hudis, Lockhart


Beta Version of New TTAB Website: Take a look at the proposed new TTAB website: here. What do you think? I like the current version, perhaps because I know where to find things. But then, I'm still using the original Blogger template from ten years ago. One thing I did notice that would improve this new TTAB website considerably: a direct link to The TTABlog.

TTAB video overview

Read comments and post your comment here

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 12/19/2014   1 comments

Thursday, December 18, 2014

Precedential No. 43: TTAB Dismisses XBOX 360 Cancellation Petition as Sanction for Misconduct

The Board granted Microsoft's Rule 12(b)(6) motion to dismiss a petition to cancel its registration for the mark XBOX 360 for publications in the field of computer games, finding that petitioners had failed to state a claim upon which relief can be granted. Petitioners, appearing pro se, failed to establish standing, and furthermore their claims of fraud and of misrepresentation of source under Section 14(3) were woefully inadequate. The Board also granted Microsoft's motion for sanctions, based upon petitioners' conduct in this and other proceedings in which it asserted similarly dubious claims. NSM Resources Corp. and Huck Doll LLC v. Microsoft Corp., 113 USPQ2d 1029 (TTAB 2013) [precedential]


Motion to Dismiss: Petitioners' claims centered on Microsoft's user manual for a game called "Stoked," which manual displayed the term "Huck" in its pages. Apparently, the game "Stoked" runs on the XBOX 360. Petitioners claimed ownership of twelve applications for marks comprising or containing the word "Huck." However, the Board observed, the HUCK marks bear no resemblance to the mark XBOX 360.

Petitioners maintained that use of the term "Huck" in the "Stoked" user manual infringed the HUCK marks. But this claim of damage was not based on the continued existence of the XBOX 360 registration.

The fact that the word "Huck" may be used in respondent's written materials that happen also to bear respondent's registered mark, a mark not remotely similar to "Huck," does not establish a basis upon which to allege standing to cancel the registration of the subject mark.

Even if petitioners had suffered damage by distribution of the Microsoft user manuals, that damage was unrelated to the XBOX 360 mark. Consequently, petitioners do not have a personal stake in this proceeding and have no reasonable belief of damage caused by continuation of the registration. Because standing is a necessary element of a petition for cancellation, the petition must be dismissed.

Nonetheless, the Board went on to consider the two claims asserted by petitioners. As to their fraud claim, one part concerned use of the R-in-a-circle symbol with the mark STOKED, but the petition did not seek cancellation of a registration for STOKED. The other part concerned allegedly false statements made in Microsoft's Section 8 & 15 declaration for the XBOX 360 registration, but this claim was based merely on "information and belief" and failed to include a recitation of specific facts constituting the alleged fraud, as required by Rule 9(b), Fed. R. Civ. P.

Turning to the Section 14(3) misrepresentation of source claim, petitioners did not allege that Microsoft's use of the XBOX 360 mark was calculated to trade on petitioners' goodwill and reputation, but instead focused on use of the term "Huck." The facts alleged did not constitute a viable claim under Section 14(3) since there was no allegation that the XBOX 360 mark was in any way associated with petitioners.

Thus petitioners failed to state a claim upon which relief can be granted, and the Board's dismissal of the petition was again warranted. [In a footnote, the Board pointed out that it is empowered to determine only the right to register, and has no authority to determine the right to use, nor to award the $1 billion dollars in damages sought by petitioners.]

Motion for Sanctions: Petitioner NSM filed twenty-nine oppositions, cancellations, and requests for extension of time to oppose since 2008. [Who do they think they are? Leo Stoller? - ed.]. It instituted nine cancellations or oppositions against marks that bear "absolutely no resemblance to its asserted marks," and six extensions of time to oppose marks that "do not appear to resemble petitioners' HUCK marks." Petitioners' repeated and inadequate assertions of fraud, claims of false connection under Section 2(a), deceptiveness and immoral or scandalous matter, likelihood of confusion, and dilution evidence the abuse of the Board's procedures. Petitioners have alleged ownership of marks that are, with few exceptions, entirely dissimilar from the marks they challenged.

Petitioners’ pattern of behavior leaves no doubt that the noted proceedings were initiated in bad faith, and at least with the intent to harass third parties who have lawfully registered their marks, or to unnecessarily delay those seeking to register their marks.

On five prior occasions the Board granted motions dismissing Petitioner NSM's pleadings based either on lack of standing or failure to state a claim. The Board concluded that in this case petitioners could not have had a good faith belief that the assertion of the same claims was warranted.

Indeed, petitioners’ vexatious conduct unnecessarily disrupts the fair allocation of Board resources. The filing of such frivolous cases requires that the Board sift through each case filed by petitioners, including pages upon pages of unsupported claims that in turn trigger further motion practice to prevent unnecessary litigation from going forward. These are resources and time better devoted to more meritorious matters. The Board has an interest in seeing that its processes are not abused for purposes of harassment and delay.

The Board concluded that, under Rule 11 and its inherent authority to sanction, "any sanction short of judgment would be futile and unfair to respondent and any other party targeted by petitioners." Therefore, it dismissed this case with prejudice as a sanction for petitioners' conduct in this case.

Furthermore, the Board ordered the petitioners to show cause why they, their shared principal, Zane Murdock, and any entity owned or controlled by Murdock, should not face additional sanctions to deter this pattern of filing frivolous petitions. Included in the proposed additional sanctions were requirements that these persons must retain outside counsel for any future filings, that they not file any request for extension of time for one year, and that they never file a notice of opposition or petition for cancellation where the challenged mark bears no resemblance to the HUCK marks and where the legal basis for the claim is fraud.

Read comments and post your comment here

TTABlog note: Well, at least Leo Stoller isn't forgotten, since one of his sanction decisions was cited.

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 12/18/2014   0 comments

Wednesday, December 17, 2014

CAFC Reverses TTAB Affirmance of Section 2(d) "TAKETEN" Refusal

In a precedential opinion, the U.S. Court of Appeals for the Federal Circuit reversed a TTAB decision (here) which had affirmed a Section 2(d) refusal to register the mark TAKETEN for "health care services, namely, evaluating weight and lifestyle health and implementing weight and lifestyle health improvement plans in a hospital-based residential program." The Board had agreed with the USPTO in finding the mark confusingly similar to the registered mark TAKE 10! for "printed manuals, posters, stickers, activity cards and educational worksheets dealing with physical activity and physical fitness." In re St. Helena Hospital, 113 USPQ2d 1082 (Fed. Cir. 2014) [precedential].


The Board had found the involved marks to be similar in appearance, sound, meaning and commercial impression. Applicant argued that in its mark TAKETEN refers, as shown in its specimen of use, to ten days, whereas in the cited mark TAKE 10! refers to ten minutes. The CAFC observed, however, that neither mark suggests any specific meaning of "TEN" or "10." The registrability of a mark must be determined "based on the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods," and so the court agreed with the Board’s finding that the marks engender similar connotations. See Octocom Sys., Inc. v. Houston Computer Servs., Inc., 918 F.2d 937, 942 (Fed. Cir. 1990). The court also agreed with the Board that registrant's addition of an exclamation point to "take ten" did not distinguish the marks in overall commercial impression.

At bottom, substantial evidence supports the Board’s conclusion that the first DuPont factor points towards a likelihood of confusion. However, “we note that similarity is not a binary factor but is a matter of degree." In re Coors Brewing Co., 343 F.3d 1340, 1344 (Fed. Cir. 2003). Here, there are some, albeit modest, differences between the two marks.

With regard to the issue of the relatedness of the goods and services, the CAFC concluded that substantial evidence did not support the Board's finding. The evidence relied upon by the examining attorney showed that printed materials are used in connection with various health services programs. However, the fact that goods are and services are "used together" does not show relatedness. When the types of goods and services at issue are "well-known or otherwise generally recognized as having a common source of origin, the PTO’s burden to establish relatedness will be easier to satisfy." However, when the relatedness of the goods and services is "obscure or less evident," the PTO must show "something more" than the mere fact that the goods and services are "used together."

While we have applied the “something more” standard in the past in the context of restaurant services, the rule is not so limited and has application whenever the relatedness of the goods and services is not evident, well-known or generally recognized.

Here, the USPTO did not show that applicant's services and the printed materials of the cited registration are generally recognized as being related, nor did it show the "something more" needed to prove relatedness in this case. The CAFC therefore concluded that the Board’s finding of relatedness between the involved services and goods was not supported by substantial evidence.

As to channels of trade, the evidence on both sides was lacking. The court agreed with the TTAB that registrant's goods were not limited to use by educators, but the court disagreed with the Board that the channels of trade overlap because both applicant and registrant advertise on the Internet.

Advertising on the Internet is ubiquitous and “proves little, if anything, about the likelihood that consumers will confuse similar marks used on such goods or services.” Kinbook, LLC v. Microsoft Corp., 866 F. Supp. 2d 453, 470–71 n.14 (E.D. Pa. 2012) (quoting J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 24:53.50 (4th ed. Supp. 2011)).

The Board had conceded that consumers of applicant's services would exercise a high degree of care, but it had found no evidence that consumers would exercise that same care when analyzing printed materials received while participating in the services. The court ruled that the Board's conclusion was in error because the record contained "no evidence to support a conclusion that the level of care exercised by consumers before entering a health-care program is any different from the level of care exercised once in the program." Consequently, the Board's determination that this factor was neutral lacked substantial supporting evidence.

The CAFC concluded that the refusal to register was not supported by substantial evidence in light of the dissimilarities between the involved services and goods and the high degree of consumer care. The court therefore reversed the Board’s decision and remanded the case for further proceedings.

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TTABlog note: What further proceedings might there be?

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 12/17/2014   1 comments

Tuesday, December 16, 2014

Test Your TTAB Judge-Ability on these Four 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 and/or services, without more. Well, 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 in first comment].


In re Petroleum Service Company, Serial No. 85904470 (December 12, 2014) [not precedential]. [Refusal to register BLUESKY LUBRICANTS for oils and lubricants, including lubricants for industrial machinery [LUBRICANTS disclaimed], in view of the registered mark BLUE SKY for "chemical additives for the after-treatment of exhaust gas, in particular chemical additives for reducing nitrogen oxides in exhaust gas from diesel engines; chemicals used in industry, in particular oil binders, anti-freezing agent, road salt"].


In re Kenneth T. Riddleberger, Serial Nos. 85632364 and 85637348 (December 12, 2014) [not precedential]. [Refusals to register 8UP and 8UPSPORTS for various clothing items, including t-shirts and sweatshirts, in view of the registered marks shown below, for various clothing items, including t-shirts and sweatshirts [APPAREL and CLOTHING disclaimed].


In re Thomas Barton, Serial No. 85826787 (December 11, 2014) [not precedential].[Refusal to register BARTON FAMILY for "wine; wines" in view of the registered mark THOMAS BARTON for "alcoholic beverages, namely, wines"]. [Note: see the case TTABlogged here].


In re Moll Anderson Productions, LLC, Serial No. 85777948 (December 10, 2014) [not precedential]. [Refusal to register ANDERSON WORLD MEDIA for music sound recordings and television and movie production [WORLD MEDIA disclaimed], in view of the registered mark MIKE ANDERSON MEDIA for audio and video recording services and film production [MEDIA disclaimed].


Read comments and post your comment here

TTABlog Big Hint: Any predictions? See any WYHA's here?

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 12/16/2014   2 comments

Monday, December 15, 2014

TTAB Reverses 2(d) Refusal of SOUTH BEACH SWIMWEAR for Swimwear

Finding that the term SOUTH BEACH is not necessarily the dominant portion of the cited mark, the Board reversed a Section 2(d) refusal to register SOUTH BEACH SWIMWEAR, in the design form shown below, for "Swimsuits; Swimwear excluding T-shirts, polo shirts, tank tops, hats, visors, aprons" [SWIMWEAR disclaimed], finding the mark not likely to cause confusion with the registered mark SOUTH BEACH WINE & FOOD FESTIVAL for "T-shirts, polo shirts, tank tops, hats, visors, aprons." Applicant overcame a Section 2(e)(2) geographical descriptiveness refusal by claiming acquired distinctiveness under Section 2(f); the cited mark was registered under Section 2(f). In re Michael D. Mathes, Serial No. 85892299 (December 12, 2014) [not precedential].


Although applicant had apparently carved out of its application the goods covered by the cited registration, the Board still found the involved goods to be related for Section 2(d) purposes. Swimwear and t-shirts are commonplace, casual items that might be warn together. Internet evidence showed that these goods have been offered by a single company under the same trademark: e.g., NIKE, UNDER ARMOUR, ADIDAS, GAP, HOLLISTER, and OAKLEY. There was no need to consider the other goods in the registration, because if a likelihood of confusion is found between any item in a given class in an application, with an item in a cited registration, that suffices to support a Section 2(d) refusal of the entire class of goods.

The examining attorney argued that the Board must presume that the goods travel through the same trade channels, but the Board questioned whether the goods were close enough to justify application of that presumption. In any case, the evidence established that the goods travel through at least one trade channel in common: on-line retail stores featuring apparel or sporting goods (e.g., GAP, Kohl’s, Target, JCPenney and Macy’s).

Applicant contended that the goods in fact are sold in different channels, since applicant's goods are not found at registrant's website or festival. That, of course, was irrelevant, since the Board must consider the goods as identified in the application and cited registration, where there appeared no limitations on channels of trade. In other words:

The relevant question is not whether the specific goods of Applicant and Registrant are actually marketed in the same trade channels. It is whether goods of the types identified in the application and the registration are typically marketed in the same or related channels.

Applicant further contended that its customers are sophisticated, "detail oriented consumers looking for swimsuits; as opposed to Registrant’s consumers who are interested in t-shirts, aprons and the like in connection with a festival that happens once a year." There was, however, no evidence to support that assertion. The Board must presume that registrant’s goods would be sold under normal retail conditions found in the types of stores that sell such goods.

Turning to the marks, the examining attorney maintained that the phrase SOUTH BEACH is the dominant portion of both marks, since it appears first in the marks and since SWIMWEAR has been disclaimed and WINE & FOOD FESTIVAL immediately conveys to consumers that registrant's goods are sold at such events.

The Board, however, observed that SOUTH BEACH "is inherently a weak source indicator because it is geographically descriptive." identifying a well-known neighborhood of Miami Beach. "Customers would therefore readily entertain the possibility that the term SOUTH BEACH might be adopted by any merchant located in the South Beach neighborhood." The Board agreed that SOUTH BEACH is dominant in applicant's mark, since SWIMWEAR is generic for the goods. However, WINE & FOOD FESTIVAL is not the generic name for registrant's goods. To the extent that it is descriptive, it conveys information about the association of the goods with an event, not about the nature of the goods themselves.

WINE & FOOD FESTIVAL plays a more important function in identifying the source of Registrant’s goods than does the word SWIMWEAR in Applicant’s mark. We find that SOUTH BEACH and WINE & FOOD FESTIVAL, as applied to Registrant’s goods, are of roughly equal distinctiveness, such that SOUTH BEACH does not merit more weight in our consideration of the mark in its entirety.

The Board concluded that the goods convey "very different commercial impressions." It agreed with applicant that consumers would not expect to find swimwear in a food-related event. Moreover the words FOOD and WINE are arbitrary and incongruous in the context of swimwear. The Board found it highly unlikely that consumers would see a commercial relationship between these two brands.

And so it reversed the refusal to register.

Read comments and post your comment here

TTABlog note: Any quarrels with this one?

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 12/15/2014   1 comments

Friday, December 12, 2014

Another TTAB Test: Is RADIANT POWER Merely Descriptive of Electricity Provider Services?

The USPTO refused registration of the marks RADIANT POWER for "retail electricity provider services that allow customers to purchase electricity" and RADIANT for the same services, as well as for "generation of electricity from solar energy." Applicant appealed, arguing that "radiant" is a double entendre, one of the meanings being suggested by the words of Charlotte the spider in Charlotte's Web, when she called Wilbur the pig "radiant." How do you think this came out? In re Distribusun LLC, Serial Nos. 85912404 and 8591242 (December 10, 2014) [not precedential].


Examining Attorney Michael A. Wiener relied on dictionary definitions of "radiant power" and of the constituent words, as well as on applicant's own promotional material that indicated that applicant's services involve the generation of electricity via solar power.Third-party websites and other publications describe solar energy as the "radiant power" produced by the sun.

Applicant maintained that, in view of the technical process of converting "radiant power" from the sun into electrical power, a consumer must exercise thought, imagination, or perception in order to arrive at the meaning of the mark espoused by the examining attorney. The Board was not persuaded that any such analysis of the mark would be required, since "radiant power" is a "defined and used term." The mark informs consumers that an aspect of applicant's services "is that the electricity it provides is derived from radiant power, that is, power from rays of light coming from the sun."

Applicant also argued that RADIANT POWER is a double entendre, one meaning of "radiant" being "showing an attractive quality of happiness, love, health, etc." In that connection, applicant provided a passage from the children's book Charlotte's Web, in which "the spider Charlotte used the word 'Radiant' in describing the positive aspects of her friend Wilbur the pig:"

"And when his audience grew bored, he would spring in the air and do a back flip with a half twist. At this the crowd would yell and cheer. 'How's that for a pig?' Mr. Zuckerman would ask, well pleased with himself. 'That pig is radiant.'"

Applicant asserted that, with regard to electrical power, it strives "for its services and products to be described as radiant." Solar energy evokes positive feelings in consumers and, applicant urged, the word "radiant" in its mark is a play on those feelings of happiness and well-being.

The Board found that argument "imaginative" but unpersuasive. There was no evidence that consumers recognize that second meaning, and applicant's argument was based only on conjecture.

The Board concluded that the mark RADIANT POWER immediately informs consumers that the electricity applicant provides is derived from radiant power generated by the sun.

As to the mark RADIANT, the Board applied the same reasoning, concluding that the mark, as an adjective, describes the nature of the electricity that applicant provides.

And so the Board affirmed both refusals.

Read comments and post your comment here

TTABlog note: So, how did you do? Note applicant's name, DistribuSUN !

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 12/12/2014   4 comments

Thursday, December 11, 2014

TTAB Test: Is "PhotoGro" Confusable With "PHOTO MAX" for Fertilizer?

The USPTO refused registration of the mark PhotoGro for "fertilizers for agricultural use," finding the mark likely to cause confusion with the registered mark PHOTO MAX for "fertilizers; plant nutrition preparations" [PHOTO disclaimed]. Applicant argued that "photo" is suggestive of plants, and therefore is the "much less dominant part of its mark." How do you think this came out? In re CP Bio, Inc., Serial No. 85692806 (December 9, 2014) [not precedential].


Since registrant's fertilizers encompass applicant's "fertilizers for agricultural use," the Board found the goods to be legally identical. The Board therefore presumed that the involved goods travel through the same channels of trade to the same classes of consumers. Moreover, when the goods are legally identical, a lesser degree of similarity between the marks is needed to support a likelihood of confusion.

Applicant and Examining Attorney Brian P. Callaghan argued at length over which portions of the marks should be considered dominant. The Examining Attorney submitted various third-party registrations for marks for fertilizer, with the word GROW disclaimed. Applicant pointed to its disclaimer of the word PHOTO in arguing that GRO is the dominant part of its mark, but the Board observed that the voluntary disclaimer of PHOTO does not mean that PHOTO cannot be dominant, since consumers are unaware of any disclaimer that might have been entered in the USPTO record.

Applicant also asked the Board to consider the dictionary definition of the word "photosynthesis," arguing that PHOTO is suggestive of a product for plants. It pointed to its ownership of several registration for other marks containing the word GRO, while registrant owns three other registration for marks containing the term MAX, showing that applicant emphasizes the GRO part of its mark, while registrant emphasizes MAX.

The Board saw no reason to give substantially more weight to any component of either mark, concluding that PHOTO, GRO, and MAX are of "relatively equal distinctiveness." The other third-party marks owned by applicant and registration were of little relevance. But the Board did acknowledge that PHOTO, as the first term in each of the involved marks, may have slightly more prominence than the remainder of the marks.

The Board found that the marks "resemble each" other visually and phonetically, and also in meaning, to the extent that both begin with the word PHOTO. They are also "structurally similar." Considering the overall commercial impressions of the two marks, the Board concluded that consumers would likely perceive the marks as "related to each other."


Applicant claimed that it  used its mark first, but that is, of course, irrelevant in an ex parte proceeding. Section 2(d) requires refusal based on a mark's resemblance to a mark "registered" in the USPTO, regardless of the alleged priority of the applicant.

Finally, applicant contended (but without  proof) that is mark has co-existed with the registered mark for at least 15 years. Of course, such uncorroborated statements are of little evidentiary value [I would have said no evidentiary value - ed.], particularly in an ex parte context where the registrant has no opportunity to be heard on the issue.

And so the Board affirmed the refusal.

Read comments and post your comment here

TTABlog note: Looking at the packaging/labels of the two products, do you think a court would find infringement?

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 12/11/2014   0 comments

Wednesday, December 10, 2014

TTAB Finds SNUG BUGS for Plastic Toys Confusable with SNUGGLE BUGZZZ for Plush Toys

Amidst a dearth of interesting decisions from the TTAB comes this one, in which the Board affirmed a Section 2(d) refusal to register the mark SNUG BUGS for "Hard plastic and mechanically connectible toy animals for toddlers and infants" [BUGS disclaimed], in view of the registered mark SNUGGLE BUGZZZ, in standard character and design form, for "plush toys, soft sculpture toys, stuffed and plush toys." Applicant trotted out several of the Top Ten Losing TTAB Arguments, and the Board squashed them like a bug. In re Battat Incorporated, Serial No. 85856116 (December 8, 2014) [not precedential].


Although applicant limited its goods to those for infants and toddlers, the goods of the registration are not so limited, and could include “plush toys, soft sculpture toys, stuffed and plush toys” for toddlers and infants. Applicant argued that these goods are “distinct” and “distinguishable,” but the Board pointed out that goods need not be identical or even competitive in order to support a finding of likely confusion. It is sufficient that they are related in some manner such that a consumer might mistakenly believe that they emanate from the same source.

Examining Attorney Kelly F. Bolton submitted ten third-party registrations, each covering both types of goods, as well as Internet web pages suggesting that the involved goods are offered by third-parties under a single mark. The Board concluded that applicant's hard plastic toys and registrant's stuffed toys are closely related.

The Internet evidence established the the involved goods travel through the same trade channels: namely, on-line websites and toy stores.

As to the marks, the Board found them similar in pronunciation and appearance. Moreover, they are identical in connotation and create the same commercial impression, as the Board explained:

“Snug” and “snuggle” are variations of the same word. In fact, the dictionary entry for “snuggle” states that it is a “[f]requentative of SNUG.” Further, the phonetically equivalent suffixes “BUGS” and “BUGZZZ” are identical in meaning. To the extent that SNUGGLE BUGZZZ is suggestive of “bedtime, sleeping, and cuddling, as a child may do with a ‘stuffed and plush toy’”, “SNUG BUGS” is equally suggestive. Similarly, to the extent “SNUG BUGS” connotes “multiple bugs that are held tightly together to one another.” “SNUGGLE BUGZZZ” has the same connotation with respect to the various toys identified in the application and registration.

In a final gambit, applicant contended that four third-party registrations for stuffed toys - AS SUNG AS A BOOK IN A BUG, SNUGGLEBUDDY, SNUGGLEBUMS, and SNUGGANIMALS - show the "dilute nature" of the term SNUG. The Board pointed out, however, that third-party registrations "are generally entitled to little weight in determining the strength of a mark because they are not evidence that the mark is in actual use in the marketplace or that consumers have been exposed to the mark." Moreover, only one of the third-party registrations contained both the words "snug" and "bug," and thus the combination is clearly not diluted.

And so the Board affirmed the refusal to register.


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TTABlog note: Is this a WYHA?

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 12/10/2014   0 comments

CAFC Affirms TTAB Dismissal of DOMAINE PINNACLE Section 2(d) Opposition

The CAFC affirmed the Board's dismissal [TTABlogged here] of an opposition to registration of the mark DOMAINE PINNACLE & Design (shown below) for "apple juices and apple-based non-alcoholic beverages" [DOMAINE disclaimed]. Opposer Franciscan Vineyards claimed likelihood of confusion with its registered marks PINNACLES and PINNACLE RANCHES for wine [RANCHES disclaimed]. However, the lack of evidence regarding the relatedness of the goods proved fatal at the Board, and the CAFC found no error in the TTAB's ruling. In re Franciscan Vineyards, Inc., Appeal No. 2014-1269 (Fed. Cir. December 9, 2014) [not precedential].


The CAFC concluded that substantial evidence supported the Board's factual findings underlying the relevant du Pont factors, and that the Board did not err in determining, based on the record evidence, that there was no likelihood of confusion.

Franciscan presented testimony to the Board that the parties were competitors in Canada and that Franciscan’s parent company owned three Canadian companies that sold wines and ciders. The Board correctly noted, however, that this evidence pertains to Canadian entities and is insufficient “to show that [Domaines Pinnacle’s] and [Franciscan’s] identified goods are related in some manner ....

Franciscan also argued that the Board "failed to follow In re Jakob Demmer KG, 219 U.S.P.Q. 1199 (T.T.A.B. 1983) to generally deem wines and non-alcoholic beverages related goods." The CAFC pointed out, however, that Jacob Demmer was an ex parte appeal wherein, as the Board correctly noted, the Board generally adopts a "more permissive stance with respect to the admissibility and probative value of evidence" than it does in an inter partes proceeding, in which the burden is on the opposer to introduce evidence that the goods are related.

And so the CAFC affirmed the dismissal of the opposition.


Read comments and post your comment here.

TTABlog note: The CAFC captioned its decision as if it were an ex parte appeal, although in fact it was an inter partes proceeding.

Text Copyright John L. Welch 2013.

posted by John L. Welch @ 12/10/2014   0 comments

Tuesday, December 09, 2014

KORD for Audio Equipment Confusable with KORDZ for Connectors, Says TTAB

The Board affirmed a Section 2(d) refusal to register the mark KORD for audio equipment, including speakers, finding the mark likely to cause confusion with the mark KORDZ, registered on the Supplemental Register, for "Cable connectors; Home theater products, namely, LCD; Electronic interconnecters [sic] for audio and video signals." Third-party registrations for marks containing the word "kord" or "cord" demonstrated that the term, by itself, has a descriptive significance vis-a-vis electrical cables and connectors, but they did not establish that the cited mark is so weak that confusion with applicant's mark would be avoided. In re MS Electronics LLC, Serial No. 85755706 (December 5, 2014) [not precedential].


The Board, not surprisingly, found the marks to be "extremely similar" in appearance and pronunciation, and identical in meaning and overall commercial impression.

Applicant pointed to third-party registrations of AUTAC RE-TRAK-TUL KORDS, KORD KING, KOIL KORD, and KOILED KORDS for electric cords in an attempt to show that the cited mark is so weak that even the slight difference between KORD and KORDZ distinguished the marks. The Board pointed out, however, that third-party registrations have little probative value on the issue of likelihood of confusion absent evidence that the marks are in use on a commercial scale and the public is familiar with them.

Although Registrant’s mark has been registered on the Supplemental Register for goods that maybe informally referred to as 'cords,' and would thus be considered highly suggestive in connection with the goods involved, the third-party registrations do not establish that the cited mark is so weak that the public would not be confused upon encountering Applicant’s mark used on related goods.

Moreover, the Board observed once again, even weak marks are entitled to protection, including marks registered on the Supplemental Register.

Turning to the goods, applicant's audio equipment includes some goods that are typically connected by cables. In short the involved goods are complementary and are likely to be purchased together and used together. See, e.g., In re Sela Prods., LLC, 107 USPQ2d 1580 (TTAB 2013) (purchasers of surge protectors for home theater systems would encounter wall mounts and brackets used in connection with such systems).

Applicant argued that registrants sells only HDMI-related products that are unrelated to its audio equipment. The Board, however, pointed out that an applicant may not restrict the scope of goods covered by a cited registration by introducing intrinsic evidence. The registration is broadly worded and encompasses all types of connectors, including those used with applicant's equipment.

Finally, applicant argued that the purchasers of the goods are knowledgeable about the differences in high-end cables. The Board noted, however, that there are no limitations in the application or the cited registration regarding classes of consumers or channels of trade. And in any case, even careful purchasers may be confused by highly similar marks used on related and/or complementary goods.

And so the Board found confusion likely, and it affirmed the refusal.

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TTABlog note: Do you think there is any chance that the registrant could convince a court to stop applicant from using the mark KORD? I highly doubt it.

Text Copyright John L. Welch 2014.

posted by John L. Welch @ 12/09/2014   4 comments