Friday, January 09, 2015

The Top Ten TTAB Decisions of 2014 [Part 1]

Yours truly, the TTABlogger, has again chosen the ten TTAB decisions that he considers to be the most important and/or interesting from the previous calendar year. This is the first of two posts, the first five selections being set out below. Additional commentary on each case may be found at the linked TTABlog posting]. The cases are not necessarily listed in order of importance (whatever that means).

Section 2(d) likelihood of confusion cases and Section 2(e)(1) mere descriptiveness appeals account for the vast majority of the TTAB’s final decisions in ex parte cases. Most inter partes matters involve Section 2(d) and are very fact-specific, seldom venturing into uncharted territory regarding the applicable law. So the decisions that deal with other issues tend to stand out. This past year was no exception.

For the first time in five years, the Board sustained a claim of fraud, convinced by the applicant’s evasive testimony that he intended to deceive the USPTO when he filed a use-based application for the mark NATIONSTAR for real estate brokerage services. The decision states no new principles of law, and so is perhaps more notable for its curiosity value than its substantive impact as legal precedent.

In a long anticipated and controversial ruling, a divided Board panel ordered cancellation of six registrations for marks comprising or containing the word REDSKINS, on the ground that the marks disparaged Native Americans. Judge Bergsman dissented, concluding that the petitioners had failed to prove disparagement in the context of registrant’s entertainment services.

In an extremely rare ruling under Section 14(3) [subseqeuently reversed, as noted below], the Board ordered cancellation of a registration for the mark FLANAX for neproxin sodium analgesics, finding that the registrant had used the mark to misrepresent the source of the goods. And in a case of first impression, a petitioner was allowed to invoke the often overlooked Section 18 of the Trademark Act in seeking to restrict the registration of a color mark to a particular shade of that color.

Dilution-by-blurring claims are seldom decided by the Board because they are usually coupled with likelihood of confusion claims, and the Board will typically decide the latter claim and choose not to consider the former. But the Board upheld a claim of dilution-by-blurring with regard to the famous mark CHANEL, concluding that Opposer Chanel would likely suffer an impairment of the distinctiveness of its mark even though Chanel has no involvement in applicant’s field of real estate.

In the sole non-precedential decision on this list, the Board ruled that a title of a single book or DVD is registrable if acquired distinctiveness is established. Many other decisions had held that a title of a single work is incapable of serving as a trademark, but the Board held that Section 2(e)(1) mere descriptiveness was the appropriate basis for refusal, thus opening the door to registration via a Section 2(f) showing.

Two concurrent use proceedings were resolved in favor of the junior user but first filer. The Board observed that the concurrent use provision of Section 2(d) exhibits no bias for the first user, but instead encourage the prompt registration of marks. In the TRILOBITE case, plaintiff Turdin faced the difficult burden of proving that confusion with defendant’s mark was not likely in his trading area. In the BOI NA BRAZA matter, the Board awarded the first filer nearly the entire country because the defendant/senior user had never expanded beyond its original New York/New Jersey trading areas.

In a bit of “inside baseball” for trademark prosecutors, the Board applied the “Ordinary-Meaning” test in interpreting a Section 66(a) applicant’s recitation of services that parroted the Class 35 heading, refusing to allow amendment to particular services that fell within the class but not within the ordinary meaning of the original recitation. And in the inter partes procedural realm, the Board confirmed that a party, in its notice of reliance, must indicate the relevance of each document by reference to the applicable du Pont factor.

Nationstar Mortgage LLC v. Ahmad, 112 USPQ2d 1361 (TTAB 2014) [precedential]. [TTABlogged here].  In a case perhaps more significant as a curiosity than as a jurisprudential landmark, the Board sustained a fraud claim for the first time since the CAFC issued its 2009 decision in In re Bose Corp., 91 USPQ2d 1938 (Fed. Cir. 2009), raising the bar for proof of fraud on the USPTO. The Board upheld an opposition to registration of the mark NATIONSTAR for, inter alia, real estate brokerage, residential and commercial property and insurance brokerage, and mortgage brokerage services. The Board found that Applicant Ahmad’s averments as to his use of the NATIONSTAR mark for the identified services were fraudulent. Ahmad testified that he chose the name in 2004-2005 after checking corporate records and the USPTO databases. Opposer Nationstar Mortgage contacted Ahmad in early April 2006, and within days, Ahmad himself filed the application at issue under Section 1(a). However, he was not a real estate broker, insurance broker, or mortgage insurance broker, each of which requires a state license. Ahmad’s testimony regarding use as of his filing date was of grave concern to the Board because it was “so lacking in conviction and credibility as to be virtually incapable of corroboration.” The Board distinguished the case from Bose in that here the applicant made false statements about his own industry and his own activities, knowing that he did not have the appropriate licenses. Although Ahmad was allowed, after the opposition was filed, to amend his filing basis to Section 1(b) intent-to-use, the Board observed that fraud cannot be cured once an opposition is filed.

Blackhorse v. Pro-Football, Inc., 111 USPQ2d 1080 (TTAB 2014) [precedential]. [TTABlogged here].  A divided TTAB panel granted a petition for cancellation of six registrations for marks containing the word REDSKINS, finding that the marks, at their respective dates of registration, disparaged Native Americans. This is the second time the TTAB has considered a petition for cancellation of these registrations. In the first case, the United States Court of Appeals for the District of Columbia Circuit ultimately ruled that the claims of the Native American petitioners were barred by laches. Six new petitioners who had recently reached the age of majority brought this proceeding. The test for disparagement under Section 2(a) has two parts: (1) what is the meaning of the term as it appears in the mark and as the mark is used?; (2) does the meaning disparage Native Americans? As to the first, the Board concluded that the term REDSKINS, when used in connection with professional football, means Native Americans. As to the second, based on a general analysis of the word (dictionary definitions, reference books, and expert testimony), and the specific views of the referenced group (deposition testimony, newspaper articles, official records, personal letters, and a 1993 Resolution of the National Congress of American Indians), the majority concluded that “a substantial composite of Native Americans found the term REDSKINS to be disparaging in connection with respondent’s services during the relevant time frame of 1967-1990.” pointing to the lack of evidence that the term was disparaging when used in connection with sports teams. [Petitioner has filed a civil action in the U.S. District Court for the Eastern District of Virginia for review of this decision under 15 U.S.C. § 1071(b).]

Bayer Consumer Care AG v. Belmora LLC, 110 USPQ2d 1623 (TTAB 2014) [precedential]. [TTABlogged here]. In what it called "a matter of first impression," the Board granted Bayer’s petition to cancel Belmora’s registration for the mark FLANAX for “orally ingestible tablets of Naproxen Sodium for use as an analgesic,” on the ground that the mark was being used by Belmora to misrepresent the source of its goods in violation of Section 14(3) of the Trademark Act. The Board found that the record evidence “readily establishes blatant misuse of the FLANAX mark in a manner calculated to trade in the United States on the reputation and goodwill of petitioner’s mark created by its use in Mexico.” Belmora challenged Bayer’s standing at every stage of the proceeding, pointing out that Bayer does not own a registration for the mark FLANAX in the United States and had not used and did not plan to use the mark here. In short, Belmora asserted, no use means no trademark rights. Bayer responded that Section 14 of the Trademark Act, in contrast to Section 2(d), imposes no use requirement. The Board pointed out that Belmora was focusing only on Bayer’s commercial activities within the United States, but was overlooking its own use of the FLANAX mark in this country. The Board found that Bayer met the CAFC’s liberal standard for standing because it established that “it has an interest in protecting its Mexican FLANAX mark.” [On February 6, 2015, in a civil action for review under Section 21(b) of the Lanham Act, the U.S. District Court for the Eastern District of Virginia reversed the Board’s decision, ruling that, because Bayer had neither used nor registered the mark FLANAX in the United States, it lacked standing to bring a claim under Section 14(3). Belmora LLC v. Bayer Consumer Care AG, Civil Action No. 1:14-cv-000847 (E.D. Va. February 6, 2015)].

In re King Productions, Inc., Serial No. 76703458 (November 19, 2014) [not precedential]. [TTABlogged here].  The Board ruled, in a surprising decision, that the title of a single book or a single DVD is properly refused registration under Section 2(e)(1) on the ground of mere descriptiveness, but is registrable under Section 2(f). The Board observed that, although the registration of a title has often been refused registration under Sections 1, 2, and 45, the proper basis for refusal is Section 2(e)(1) because the title describes the work. The Board reasoned that since a title is capable of registration if it is used for a second work (i.e., as the title of a series), and since courts have protected the title of a single work once secondary meaning has been established, a title is capable of functioning as a trademark. Of course, a Section 2(e)(1) refusal can be overcome by a showing of acquired distinctiveness under Section 2(f). Applicant had a “significant burden” under Section 2(f) because a title is highly descriptive of a book or DVD. Applicant sold only 884 sets of the book and DVD. Its website displayed the mark with apparel and workshops, but the evidence failed to show the extent of exposure of the website (e.g., the number of hits or visitors). The Board found applicant's evidence insufficient to establish acquired distinctiveness, and so it affirmed the refusal under Section 2(e)(1).

Covidien LP v. Masimo Corp., 109 USPQ2d 1696 (TTAB 2014) [precedential]. [TTABlogged here]. In another case of first impression, the Board denied Respondent Masimo’s FRCP 12(b)(6) motion to dismiss, ruling that a petition under Section 18 of the Trademark Act is a proper vehicle for restricting a registration of a color mark to a particular shade of that color. Covidien’s application to register the color pink (Pantone PMS 806) for medical connectors and lead wires, was refused under Section 2(d) in view of Masimo’s Supplemental Registration for the color “red” for patient monitoring sensors and cables. Covidien then filed a petition under Section 18 to restrict the cited registration to the particular shade of red (Pantone PMS185) actually used by Masimo. Covidien alleged that such a restriction would avoid a likelihood of confusion. Masimo moved to dismiss, urging that such a restriction is permitted only when the description of the mark is “ambiguous or overly broad,” citing Wellcome Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478 (TTAB 1998). The Board, however, “also reads § 18 as allowing for, and thus encompassing, relief where a plaintiff alleges that a feature of the description of the mark renders the description not specific to the mark actually used by the defendant.” The Board refused to dismiss Covidien’s petition, but required that Covidien comply with Rule 2.52(b)(1) by setting forth a more definite statement as to respondent’s color, in ordinary language. [Covidien subsequently amended its petition to describe the color of Masimo’s mark as “fire engine red.”]

Read comments and post your comment here.

Text Copyright John L. Welch 2015.


Post a Comment

<< Home