Monday, January 12, 2015

The Top Ten TTAB Decisions of 2014 [Part 2]

Here is the second half of the TTABlog's "top ten" list of 2014 TTAB decisions. Part 1 may be found here. If you would have selected other cases for the top ten, please say so in the comments.

Chanel, Inc. v. Makarczyk, 110 USPQ2d 2013 (TTAB 2014) [precedential]. [TTABlogged here]. The Board sustained Chanel, Inc.’s opposition to registration of the mark CHANEL for “real estate development and construction of commercial, residential and hotel property,” finding the mark likely to cause dilution-by-blurring of opposer’s famous CHANEL mark. Applicant Makarczyk, appearing pro se, agreed to proceed under the Board’s Accelerated Case Resolution (“ACR”) regime, following the “summary judgment model.” [When Makarczyk did not submit evidence or a brief, Chanel requested a decision, and seven months later the Board issued this one]. Chanel established that it began using its mark in the United States in the 1930s, and the mark has consistently been ranked as one of the most recognized and famous brands in the United States. Survey evidence demonstrated that the mark is “extremely well known and enjoys an unusually high degree of unaided and aided recognition.” Considering the six non-exhaustive factors set forth in Section 43(c)(2)(B)(i)-(vi), the Board found that Chanel would likely suffer an impairment of the distinctiveness of its mark, even though it had no current involvement in real estate, since many luxury brands have licensed use of their marks in connection with hotels, and others have found opportunities in related areas, like interior design services and bathroom fixtures.

Boi Na Braza, LLC v. Terra Sul Corp. a/k/a Churrascaria Boi Na Brasa, 110 USPQ2d 1386 (TTAB 2014) [precedential]. [TTABlogged here]. This contested concurrent use proceeding involved an application to register the mark BOI NA BRAZA, in standard character form, for restaurant and bar services, with a geographic restriction claiming the entire United States except New Jersey. Defendant sasserted that it had used its mark CHURRASCARIA BOI NA BRASA in New Jersey, New York, and elsewhere and that Plaintiff BNB's mark should be denied registration or the registration should be restricted to BNB's three areas of actual use: Dallas, Atlanta, and Cincinnati. This case presented the unusual circumstance in which the plaintiff/applicant owned an “incontestable registration” for a composite mark that incorporated the term BOI NA BRAZA. Pursuant to Sections 15 and 33(b)(5) of the Lanham Act, the registered mark cannot be challenged on the basis of prior rights and likelihood of confusion. A prior user normally may carve out of an “incontestable” registration only “the specific areas in which it has established its prior rights prior to actual or constructive notice of said registration.” Defendant never expanded beyond its Newark, New Jersey neighborhood. BNB, the junior user but the first to file an application to register, offered restaurant services in three cities geographically remote from one another and from Defendant Terra Sul. The Board, noting that there is a policy of encouraging prompt registration of marks, and that the concurrent use provision of Section 2(d) exhibits no bias in favor of the prior user, concluded that BNB is entitled to a nationwide registration, excluding New Jersey and New York.

In re Fiat Group Marketing & Corporate Communications S.p.A., 109 USPQ2d 1593 (TTAB 2014) [precedential]. [TTABlogged here]. Applying the “Ordinary-Meaning” test, the Board affirmed a refusal to register the mark FIAT 500 for “retail store services and on-line retail store services featuring a wide variety of consumer goods of others,” in International Class 35, on the ground that the proposed wording exceeded the scope of the original recitation of services (“advertising services; business management; business administration; office functions”). Although the proposed language itself would fall within Class 35, it was not encompassed by the original recitation of services – even though the original recitation is identical to the class heading for Class 35. Finding no support in the record for Fiat’s assertion that the meaning of the term “business management” includes “operating a retail store,” the Board agreed with the Examining Attorney that the proposed amendment violated Rule 2.71(a) because it improperly broadened the recitation of services. The Board observed that, although some Madrid Protocol countries have adopted a “class heading covers all” policy, “no provision in U.S. law or any obligation by treaty obliges the USPTO to deviate from or make an exception to its longstanding practice governing the scope and interpretation of identifications and in deciding what amendments are permissible.”

FUJIFILM SonoSite, Inc. v. Sonoscape Co., 111 USPQ2d 1234 (TTAB 2014). [precedential] [TTABlogged here]. In this Section 2(d) opposition, Applicant Sonoscape won a partial victory in its motion to strike certain evidence in Opposer’s notice of reliance. The Board ruled that FUJIFILM could not rely on a newly issued registration because the underlying application had not been pleaded in the notice of opposition, but the Board deferred until trial a ruling on whether the registration had any probative value at all. It agreed that, as to certain other documents (673 pages in all) purportedly relevant to the likelihood of confusion issue, opposer was required to indicate the relevance of each page by du Pont factor. Newly issued registration: Opposer Fuji claimed ownership of a family of “Sono-” formative marks, and sought to add a newly issued registration to its arsenal. Since FUJIFILM did not plead ownership of the application, the Board ruled that FUJIFILM “cannot use an unpleaded registration as a basis for the opposition,” but it refused to strike the exhibit, accepting it for “whatever probative value” it may lend to opposer’s showing under the du Pont factors in its case-in-chief. Other evidence: Although FUJIFILM stated that certain documents were relevant to three likelihood of confusion factors, that was not good enough: “The Board will not expend its resources guessing which pages the propounding party is relying upon…. Opposer should have indicated which web page or group of web pages within each exhibit support each specific du Pont factor.” Fuji was allowed 15 days to submit a revised notice of reliance.

Turdin v. Trilobite, Ltd., 109 USPQ2d 1473 (TTAB 2014) [precedential] [TTABlogged here]. In another concurrent use decision favorable to the first filer, the Board ruled that Defendant Trilobite, Ltd. was entitled to a geographically unrestricted federal registration for its mark TRILOBITE for audio and video recording and production services. The concurrent use application of Peter Turdin, Jr., seeking a registration of TRILOBITE PICTURES for “motion picture film production, and animation services,” restricted to New York City and Connecticut, was refused because Turdin was unable to establish that there was no likelihood of confusion if the involved marks were concurrently used in these two areas. Although Trilobite, Ltd. had never rendered its services in New York City, the Board relied on First Niagara Insurance Brokers Inc. v. First Niagara Financial Group Inc., 81 USPQ2d 1375, 1378 (Fed. Cir. 2007), in awarding priority to Trilobite, Ltd. based on its business contacts in Gotham. As for Connecticut, the Board applied the Weiner King factors (Weiner King, Inc. v. The Weiner King Corp., 204 USPQ 820, 830 (CCPA 1980)) in ruling in favor of Trilobite, Ltd. Although there was no evidence that Trilobite, Ltd. had previous business activity in Connecticut, and no evidence of any significant business in states contiguous to Connecticut (other than in New York City), its president testified that there is “quite an overlap of people who live in the Connecticut area and work in New York….” Consequently, Plaintiff Turdin failed to persuade the Board that confusion is not likely “if Turdin is granted Connecticut as part of his concurrent use territory.”

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Text Copyright John L. Welch 2015.


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