TTAB Posts May 2015 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled four (4) oral hearings for the month of May, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]. Briefs and other papers for these cases may be found at TTABVUE via the links provided.



May 13, 2015 - 2 PM: Innovation Law Group, Ltd. v. Ryan E. Alley dba Ryan Alley Intellectual Property Lay, Opposition No. 91202418 [Section 2(d) opposition to registration of BUILDING ASSETS FROM IDEAS for "legal services in intellectual property, including patent, trademark, copyright, and trade secret procurement, transfer, and enforcement," on the ground of likelihood of confusion with the registered marks TRANSFORMING IDEAS INTO BUSINESS ASSETS for legal services and consultation in the field of intellectual property].

May 19, 2015- 11 AM: In re Intellipharmaceutics Corp., Serial No. 85360467 [Section 2(e)(1) mere descriptiveness refusal of DRUG DELIVERY ENGINE for drug delivery systems and for research and development services regarding same [DRUG DELIVERY disclaimed]].

May 19, 2015 - 2 PM: In re Restoration Capital, LLC, Serial No. 85972840 [Appeal from requirement that applicant disclaim the word RESTORATION in the mark RESTORATION CAPITAL & Design for "residential mortgage origination" [CAPITAL disclaimed]].

May 21, 2015 - 11 AM: In re World Trade Centers Association, Inc., Serial Nos. 85473613 et al. [Appeals from eight refusals to register the marks WTC and WORLD TRADE CENTER for various goods in classes 9, 14, 16, and 18, on the ground that the marks do not function as trademarks but rather are perceived as merely referring to the terrorist attacks of September 11, 2011].

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TTABlog note: Any predictions?

Text Copyright John L. Welch 2015.

Test Your TTAB Judge-Ability on These Three Mere Descriptiveness Appeals

Here are three recent appeals from mere descriptiveness refusals under Section 2(e)(1) [Actually, one was a disclaimer requirement]. Let's see how you do with them, keeping in mind that, by my estimation, the Board affirms more than 80% of these refusals. [Answers in first comment. Hint: at least one refusal was reversed and at least one was affirmed].



In re Affinity Gaming, Serial No. 85909611 (April 16, 2015) [not precedential]. [Requirement for disclaimer of the word SEVENS in the mark SILVER SEVENS for casino and casino services].

In re Free-Flow Packaging International, Inc., Serial No. 85679090 (April 27, 2015) [not precedential]. [Mere descriptiveness refusal of  POWER PAK’R for “machines for manufacturing and dispensing packing material"].

In re Lloyd, Serial No. 85639318 (April 27, 2015) [not precedential]. [Mere descriptiveness refusal of ARTISTS COLLECTIVE ENTERPRISE for downloadable graphic novels and comic books].

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TTABlog note: See any WYHA(s) here?

Text Copyright John L. Welch 2015.

CAFC Vacates THE SLANTS Opinion, Orders En Banc Hearing

The CAFC has issued an Order vacating its April 20, 2015 opinion in In re Tam, Appeal No. 2014-1203, in which it affirmed the TTAB's ruling that the mark THE SLANTS is derogatory of persons of Asian descent, in violation of Section 2(a) of the Lanham Act. [TTABlogged here]. The CAFC sua sponte ordered that the appeal be reinstated and be considered by the court en banc. In re Tam, 114 USPQ2d 1469 (Fed. Cir. 2015).

The court's Order follows on Circuit Judge Kimberly A. Moore's inclusion of "additional views" in the CAFC's original opinion, concerning the constitutionality of Section 2(a), in which she urged that the court re-visit the CCPA's 1981 decision in In re McGinley in view of the subsequent evolution of First Amendment jurisprudence.

The court's Order requests that the parties file new briefs addressing the following question: "Does the bar on registration of disparaging marks in 15 U.S.C. § 1052(a) violate the First Amendment?"

The court indicated that amicus briefs will be entertained and may be filed without consent and leave of court.

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Text Copyright John L. Welch 2015.

Name of Dolphin Fails to Function as Service Mark for Aquarium, Says TTAB

Clearwater Marine Aquarium hoped to register the mark HOPE for marine aquarium exhibitions, but the Board affirmed the PTO's refusal to register the mark on the ground that, based on applicant's specimens of use, the term failed to function as a service mark for the recited services. Applicant pointed to the PTO's issuance of registrations for the marks SHAMU and WINTER for similar services, but the Board pointed out that each dolphin mark must sink or swim in its own evidentiary waters. In re Clearwater Marine Aquarium, Serial No. 85865851 (April 24, 2015) [not precedential).

After rescuing a baby bottle-nosed dolphin, applicant named the creature "Hope" and it featured the dolphin on its website. Applicant's specimens of use consisted of three webpages, each including a prominent display of the words CLEARWATER MARINE AQUARIUM, and referring to Hope the dolphin.

A service mark must be displayed "in a manner that would be perceived by potential purchasers as identifying the applicant's services and indicating their source via a 'direct association.'" Examining Attorney Katherine S. Chang maintained that the applied-for mark "is used simply as the name of the dolphin; it is not used in connection with the identified services and therefore does not serve as a source indicator."

The Board observed that the name of a dolphin could function as a service mark for exhibition services. Applicant argued that a direct connection is made to its services by the fact that applicant's specimens invite viewers to buy tickets and "visit" and "meet HOPE."

The Board, however, found that the term HOPE is used, in the submitted specimens, only as the name of the baby dolphin. "Promoting the exhibition of an animal named Hope as a feature of applicant's services does not automatically cause the name of the exhibited animal to function as an indicator of the source of Applicant's services."

Applicant suggested that the examining attorney had a "bias against an animal's name as serving as a trademark," but the Board pointed out that the attorney had indicated that her refusal might be overcome by the submission of other specimens of use.

Finally, applicant pointed to the SHAMU and WINTER registrations, but the Board refused to jump through those hoops, preferring to swim only with the dolphin at hand.

And so the Board affirmed the refusal to register.

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TTABlog note: Perhaps applicant should have called the dolphin "Mark."

Text Copyright John L. Welch 2015.

Fourth Circuit Rules That Plaintiff in Appeal from Ex Parte TTAB Decision Must Pay ALL Expenses

A divided panel of the United States Court of Appeals for the Fourth Circuit affirmed the decision of the U.S. District Court for the Eastern District of Virginia, upholding the lower court's ruling (Shammas v. Focarino, 109 USPQ2d 1320 (E.D. Va. 2014)) that, in a Section 1071(b) civil action for review of an ex parte TTAB decision, the plaintiff/applicant must pay the PTO's expenses (including attorney and paralegal fees). Dissenting Judge Robert Bruce King maintained that the American Rule (that each party pays its own expenses) should be applied absent “explicit statutory authority” for proceeding differently. Shammas v. Focarino, 114 USPQ2d 1489 (4th Cir. 2015) [published].

The Lanham Act provides that a dissatisfied trademark applicant may seek review of a final refusal to register either via appeal to the CAFC under 15 U.S.C. §1071(a)(1), or by commencing a de novo civil action in a federal district court under §1071(b)(1). If the applicant proceeds in a district court, the applicant must name the Director of the PTO as a defendant and must pay "all the expenses of the proceeding," whether the final decision is "in favor of such party or not," unless the expenses are unreasonable. §1071(b)(3).

Here, Mr. Shammas lost in the district court, and the court awarded the USPTO $32,836.27 in attorney salaries, $3,090.32 in paralegal salaries, and $393.90 in photocopying expenses.

In his appeal to the 4th Circuit, Shammas acknowledged that the term "expenses" is a sufficiently broad term that "in ordinary parlance" includes attorneys fees. However, he argued that the district court erred in "shifting" the PTO’s attorneys fees to him, contrary to the American Rule under which each party bears its own attorneys fees, because the governing statute does not expressly provide for the shifting of attorneys fees.

The majority rejected this fee-shifting argument, observing that in "fee-shifting" statutes the fees are awarded to a party that has succeeded in its claim. Here, the majority concluded, the imposition of all expenses on a plaintiff in an ex parte proceeding, regardless of whether the plaintiff wins or loses, "does not constitute fee-shifting that implicates the American Rule but rather an unconditional compensatory charge imposed on a dissatisfied applicant who elects to engage the PTO in a district court proceeding." The majority confirmed that these "expenses" include the PTO’s salary expenses for the attorneys and paralegals who represented the Director.

The majority observed that a de novo civil action under § 1071(b)(1) results in a more complicated and expensive procedure than an appeal to the CAFC, where no new evidence is allowed and no discovery or other facets of civil litigation are permitted. In short, in a civil action for review, "the PTO is required to expend substantially greater time and effort and incur substantially greater expense than it would otherwise in an appeal to the Federal Circuit." Reviewing the legislative history of Section 1071(b)(3), the majority found that it was plainly meant to "incentivize[] trademark applicants to appeal routine trademark denials to the Federal Circuit."

In dissent, Circuit Judge King maintained that because §1071(b)(3) makes no reference to attorney’s fee awards, the American Rule should be followed. He noted that the words "attorney’s fees" are not found in §1071(b)(3), and he found no "clear support" for the award of such fees in the statute or its legislative history.

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TTABlog note: So if you are contemplating an appeal from an adverse TTAB ruling in an ex parte case, you might want to avoid the Fourth Circuit, if you can. Here's a question: does the USPTO now have a (reasonably) blank check to hire experts, conduct surveys, and take discovery in a §1071(b) civil action?

Text Copyright John L. Welch 2015.

Roberto Ledesma: "Google and the Kingdom of Tonga"

While perusing Google's U.S. application to register GOOGLE GLASS, Roberto Ledesma noted that the application claimed priority to an application filed in the Kingdom of Tonga. He decided to write about why Google did that, in his blog post called "Google and the Kingdom of Tonga."

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Text Copyright John L. Welch 2015.

Precedential No. 13: TTAB Finds BUYAUTOPARTS.COM Generic for .... Guess What?

The Board affirmed a refusal to register BUYAUTOPARTS.COM on the Supplemental Register, finding the term to be generic for "on-line retail store services featuring auto parts." Applicant argued that the word "buy" does not identify a genus of services associated with "selling," but the Board didn't buy it. In re Meridian Rack & Pinion DBA buyautoparts.com, 114 USPQ2d 1462 (TTAB 2015) [precedential].

The Board found the genus of services to be adequately defined by applicant's recitation of services. The relevant public consists of general consumers of auto parts. The question, then, was the public's understanding of the term, considered as a whole. When the proposed mark is a phrase, the Board cannot rely simply on definitions of the constituent words, but must analyze the meaning of the phrase as a whole. [See. e.g., American Fertility Society].

Applicant contended that BUYAUTOPARTS.COM does not name the genus of its services because "buy" does not identify a genus associated with "selling." At most, applicant argued, the applied-for mark describes the result or purpose of the services. The term would be generic "only if applicant purchased auto parts from others." According to applicant, "BUYAUTOPARTS.COM merely conveys the message that consumers may purchase auto parts from Applicant online, if consumers desire to do so, but does not describe Applicant's 'selling.'" [Huh? Say again? - ed.].

The Board found applicant's arguments unpersuasive. First, more than one term may be generic with regard to a particular product or services. Second, the central focus of any retail sales service is to facilitate "buying." In short, "buying" is directly related to "selling." [And vice versa - ed.]. The Board has often held that a term that names the "central focus" or "key aspect" of a service is generic for that service. [E.g., HOTELS.COM for lodging information and reservation services; TIRES TIRES TIRES for retail tire stores; RUSSIANART or selling such art].

The evidence showed that applicant offers its auto parts for sale online by advertising "Buy Auto Parts." Thus "buying" is a central focus of applicant's services. The record also showed that relevant consumers understand "buy auto parts" to refer to the transactions that are the central focus of applicant's services, and that third parties who sell auto parts tell their customers to "Buy Auto Parts Online."

Applicant feebly conceded that the term "BuyAutoParts" can be seen as generic, but it maintained that the addition of ".com" changes the commercial impression of the phrase and creates a distinctive mark (even though applicant disclaimed the term ".com"). In any case, the Board observed that ".com" is widely understood to refer to online commerce, and therefore the entire term BUYAUTOPARTS.COM as a whole is generic for applicant's services.

Moreover, the addition of a top level domain indicator to the generic name of the central focus or subject matter of a services does not transform the composite phrase into a registrable mark. [E.g., "mattress.com," "hotels.com," "lawyers.com," "advertising.com"].

Consequently, the Board found the applied-for mark to be incapable of distinguishing applicant's services, and thus ineligible for registration on the Supplemental Register under Section 23 of the Lanham Act.

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TTABlog note: WYHA?

Text Copyright John L. Welch 2015.

CAFC Affirms TTAB, Finds THE SLANTS Disparaging of People of Asian Descent

The CAFC affirmed the Board's decision [TTABlogged here] that upheld a refusal to register the mark THE SLANTS for "entertainment in the nature of live performances by a musical band," finding that the mark, when used in connection with applicant's services, would be perceived as disparaging to a substantial composite of the referenced group, namely persons of Asian descent, in violation of Section 2(a) of the Lanham Act. Circuit Judge Kimberly A. Moore provided "additional views" on the constitutionality of Section 2(a), suggesting that the Court should re-visit the CCPA's 1981 decision in In re McGinley in view of the subsequent evolution of First Amendment jurisprudence. In re Tam, Appeal No. 2014-1203 (Fed. Cir., April 20, 2015) [precedential].

The Slants album cover
The appellate court ruled that substantial evidence supported the Board's finding that the mark THE SLANTS likely refers to people of Asian descent. The fact that the term "slants" has some innocuous meanings makes it necessary to examine how the applicant uses the mark in order to determine its meaning. The Board relied on images from the band's website and Mr. Tam's own statement that in choosing the mark, he was "trying to think of things that people associate with Asians," in reaching its finding.

Substantial evidence also supported the Board's finding that THE SLANTS is likely to be perceived as "disparaging to a substantial composite of the referenced group." Dictionary definitions uniformly characterized the word "slant" as "disparaging, offensive, or an ethnic slur when used to refer to a person of Asian descent." A brochure published by the Japanese American Citizens League described the term "slant" as derogatory. New articles and blog posts discussing the band's name led to the cancellation of the band's performance at a conference for Asian youth.

As to the constitutionality of Section 2(a), the CAFC deemed that argument foreclosed by In re McGinley, which held that because the refusal to register a mark did not affect the applicant's right to use the mark, "[n]o conduct is proscribed, and no tangible from of expression is suppressed." Therefore the applicant's First Amendment rights were not abridged by the refusal to register.

Furthermore, the court ruled that Section 2(a) is not unconstitutionally vague, since the Board follows a well-established two-part test for disparagement. Nor was applicant's right to due process infringed, despite the registration of a slur like DIKES ON BIKES, because applicant had a full opportunity to prosecute his application and to appeal from the USPTO's final refusal. Moreover, each application must be examined on its own merits, and an error made in some other application cannot justify the improper registration of this applicant's mark.

Judge Moore provided 24 pages of "additional views," urging that "[i]t is time for this Court to revisit McGinley's holding on the constitutionality of Section 2(a)." She observed that there are three requirements for finding a violation of the First Amendment: (1) the speech at issue must be protected speech; (2) there must be governmental action that abridges that speech; and (3) the abridgement must be unconstitutional when analyzed under the appropriate legal framework.

Judge Moore maintained that a trademark constitutes a form of protected commercial speech because it identifies the source of a product or service and thus provides commercial information. Here, the mark THE SLANTS "does more that merely identify the band." Mr. Tam selected the name in order to "reclaim" and "take ownership" of Asian stereotypes. In short, "Mr. Tam and The Slants weigh in on cultural and political discussions about race and society that are within the heartland of speech protected by the First Amendment." [Compare the REDSKINS mark on that point - ed.].

Moreover, although the applicant may continue to use the mark, the absence of a registration is significant. As the Supreme Court recently said in B&B Hardware v. Hargis, "The Lanham Act confers important legal rights and benefits on trademark owners who register their marks." Moreover, protection of an unregistered mark under Section 43(a) is available only if the mark could have qualified for registration. Denial of registration "severely burdens use of such marks." "Section 2(a)'s content-based restrictions on registrability were adopted to reduce use of trademarks the government deemed unsuitable (such as those that disparage) - no doubt a chilling effect on speech."

Finally, Judge Moore noted that Section 2(a) has not been analyzed under the "unconstitutional conditions" doctrine: the government cannot deny access to a benefit because of the potential recipient's exercise of constitutionally protected free speech.

Federal trademark registration confers valuable benefits, and under Section 2(a), the government conditions those benefits on the applicant's choice of a mark. Because the government denies benefits to applicants on the basis of their constitutionally protected speech, the "unconstitutional conditions" doctrine applies.

Section 2(a) is viewpoint-discriminatory because it bars registration of disparaging speech but not terms that refer to a certain group in a positive or non-disparaging way. Therefore Section 2(a) is presumptively invalid and must satisfy strict scrutiny to be constitutional. Moreover, even if strict scrutiny does not apply, Section 2(a) cannot survive even the intermediate scrutiny applicable to any restriction on commercial speech.

Applying the Central Hudson test for commercial speech, Judge Moore found that the government "has not put forth any substantial interests that would justify Section 2(a)'s bar against disparaging marks." The fact that protected speech may be offensive does not justify its suppression. Striking down the Section 2(a) bar would not disrupt long-standing, well-balanced common law principles, because there are no such principles applying to disparaging (as opposed to scandalous or misleading) mark: Congress created new law when it banned registration of disparaging marks. And finally, issuance of a trademark registration does not amount to the Government's imprimatur regarding the mark.

And so, Judge Moore concluded:

We have yet to be presented with any substantial government interests that would justify the PTO's refusal to register disparaging marks. Without this, Section 2(a) cannot satisfy the Central Hudson test. It is time to revisit the holding in McGinley in light of subsequent developments in the law and the trademark registration funding regime.

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Text Copyright John L. Welch 2015.

CAFC Affirms TTAB: NOPALEA Merely Descriptive of Supplements Containing Nopal Juice

In an enervating yet precedential ruling, the CAFC affirmed the Board's decision (here) upholding a Section 2(e)(1) mere descriptiveness refusal of the mark NOPALEA as a trademark for dietary and nutritional supplements "containing, in whole or in substantial part, nopal juice." In re TriVita, Inc., 114 USPQ2d 1574 (Fed. Cir. 2015) [precedential].

Appellant TriVita argued that the addition of the letters EA to NOPAL makes the mark NOPALEA substantially different in sight and sound. The CAFC observed, however, that "nopalea" is not a made-up word obtained by adding arbitrary letters. The record showed, and the Board found, that "nopalea" is a genus of cacti from which nopal juice is derived.

TriVita contended that the ordinary purchaser of its products will be of low botanical sophistication and will not immediately recognize the botanical meaning of the word "nopalea." However, the court agreed with the Board that there is "abundant evidence, scientific and non-scientific, of the words 'nopalea' and 'nopal' being used interchangeably," largely in the context of discussions of the health benefits of this class of cactus.

The Board found that the relevant consumer, knowing that the goods are supplements containing nopal cactus juice, would understand the mark NOPALEA to convey information that the goods contain ingredients from the Nopalea cactus. The Board based its finding on evidence that “nopalea” is the name of a genus of cacti used in food and supplements, that the word “nopal” is a common name for prickly pear cacti including cacti in the genus Nopalea, and that the words “nopal” and “nopalea” are used interchangeably to refer to cacti of that genus. Substantial evidence supports the Board’s findings, and its conclusion that “nopalea” is merely descriptive of TriVita’s goods.

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Text Copyright John L. Welch 2015.

Five Presentations from the Trademark Office Comes to California

Here are five PowerPoint presentations from the Trademark Office Comes to California program, held this week in Los Angeles and San Francisco.

Chief Judge Gerard F. Rogers and Deputy Chief Judge Susan Richey, The State of the TTAB the Evolution of Board Proceedings

Judges Ellen Seeherman and Lorelei Ritchie, Practice Tips from the TTAB

Commissioner for Trademarks Mary Boney Denison (keynote address), The State of the Trademark Office

Commissioner for Trademarks Mary Boney Denison and Sharon Marsh, Commissioner for Examination Policy, Hot Topics from the Patent and Trademark Office

Dr. E. Deborah Jay, President/CEO, Field Research Corporation, and Dr. Jerry Ford, Ford Bubala & Associates, Mark My Words: Contemporary Trademark Surveys


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Text Copyright John L. Welch 2015.

Meet the Bloggers XI: Monday, May 4th, 8 PM, Henry's Pub

MEET THE BLOGGERS, perhaps the best non-INTA event ever devised by woman or man, will be held for the eleventh time (XIth), on Monday, May 4th, at 8 PM. at Henry's Pub and Restaurant, 618 Fifth Avenue, in San Diego (Henry's was the site of the first MtB). Come and meet some of the best trademark attorneys in the world, and while you're at it say hello to the sponsors of this year's event. For details, directions, a look at the sponsoring bloggers, and the RSVP link, go here.

MEET THE BLOGGERS I, San Diego, May 2005Click on photo for larger picture
PS: Can you name the movie from which the name MEET THE BLOGGERS was derived?

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TTABlog note: No, it wasn't "Night of the Living Dead."

Text Copyright John L. Welch 2015.

TTAB Test: Is SUNRISE for Guitar Picks Confusable With PUKANA LA for Guitars?

The USPTO refused registration of the mark SUNRISE for guitar picks, finding the mark likely to cause confusion with the registered mark PUKANA LA & Design for guitars (shown below). The English translation of the Hawaiian term "pukana la" provided in the registration is "sunshine, sunrise." The examining attorney contended that the marks have the same connotation under the doctrine of foreign equivalents. Applicant argued that the doctrine should not be applied because Hawaiian is not a "common, modern" language. How do you think this came out? In re Christopher A. Fahey, DBA Gravity Guitar Picks, Serial No. 86250337 (April 13, 2015) [not precedential].

Both applicant and the examining attorney argued that the similarity or dissimilarity of the marks was dispositive. As to the doctrine of foreign equivalents, the Board observed:
'

Under the first du Pont factor, we focus on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. Yet, when focusing on the perceptions of ordinary American consumers who are multilingual, we are tasked with calibrating a bewildering balance – namely weighing (1) the closeness with which the non-English-language term denotes the putative equivalent term in the English-language, against (2) the quite obvious and inevitable differences of sight and sound involved in comparison.

The Board found that Hawaiian is clearly a modern language. Despite colonial attempts to eradicate the language, Hawaiian remains viable and important to the Hawaiian people. It cannot be equated with a dead language like Ancient Greek.

However, the doctrine of equivalents will not be applied when the language is obscure - when it is "not spoken by an appreciable number of individuals sufficient to sustain a finding of a likelihood of
confusion." The Board agreed with applicant that Hawaiian does not fit the bill:

The record herein shows that approximately eighteen thousand Hawaiian language speakers live in the state of Hawaii and seven thousand more Hawaiian speakers live elsewhere in the United States. Moreover, there is substantially no population of Hawaiian speakers elsewhere around the globe.

Therefore, since the doctrine of equivalents is not applicable, the Board found the marks to be "totally dissimilar" and it reversed the refusal to register.

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TTABlog note: How do you say "congratulations" in Hawaiian to FOB Paul Reidl for this victory? The entire opinion is three-pages long but right on target.

Text Copyright John L. Welch 2015.

TTAB Reverses BRUTOPIA BREWERY Refusal, Finding Pubs Not Related to Beer Festivals

Applicant Grill 505 came away with its glass half full in this appeal from a Section 2(d) refusal to register BRUTOPIA BREWERY for "beer" and for “pubs” [BREWERY disclaimed]. As to beer, the Board found the mark likely to cause confusion with the registered mark BREWTOPIA for “providing beer events and beer festivals; and providing online information regarding the beer events and beer festivals.” But evidence was lacking to show that applicant’s pubs are related to registrant’s beer event services. In re Grill 500 LLC, Serial No. 85951305 (March 31, 2015) [not precedential].

Not surprisingly, given the disclaimer of BREWERY in the applied-for mark, the Board found the involved marks to be similar in appearance, sound, connotation, and commercial impression. Applicant conceded as much in its brief on appeal.

Turning to the goods and services, the Board found, on the face of the respective identifications, that applicant’s beer and registrant’s services are complementary. Applicant’s beer could be purchased or sampled at registrant’s festivals, or could be the subject of registrant’s information regarding festivals. According to the USPTO’s website evidence, the principal subject of beer festivals is a wide variety of beers. [No kidding? ed.].

Applicant lamely argued that its beers are artisan craft beers local to the State of Rhode Island, whereas registrant’s services are not offered in connection with a brewery. The Board, of course, pointed out that there are no geographical restrictions in the application or cited registration, and that the involved services need not be identical but merely related in order to find confusion likely.

Applicant feebly asserted that consumers for the involved goods (applicant’s local craft beer sold only in a pub setting), and services would be highly sophisticated, thus minimizing the likelihood of confusion. The Board noted that applicant’s beer is relatively low priced, and that consumers of registrant’s services will include ordinary seeking to taste a variety of beers, without any particular level of sophistication. In any event, even sophisticated consumers may be confused when substantially similar marks are used on closely related goods and services.

However, the Board found no evidence to support the assertion that pubs are related to registrant’s services. The single webpage submitted by the examining attorney did not demonstrate the relatedness of the services.

The fact that breweries showcase their beer at beer events and festivals simply does not demonstrate that consumers who frequent both pubs and beer events and beer festivals will mistakenly believe that both types of services emanate from a common source, or otherwise are commercially related, even when the respective services are offered under similar marks.

The Board therefore affirmed the refusal as to applicant’s beer, but reversed the refusal as to pubs.

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Text Copyright John L. Welch 2015.

WYHA? PUP SCOUTS and DOG SCOUTS OF AMERICA Confusable for Pet Services, Barks TTAB

The USPTO refused registration of PUP SCOUTS as a collective membership mark for "indicating membership in an organization for pets and their human counterparts," finding it likely to cause confusion with the registered mark DOG SCOUTS OF AMERICA, in standard character and design form, for retail store, educational, and association service in the field of pet training and pet parenthood and ownership [DOG and AMERICA disclaimed]. Applicant pointed out that registrant's services are offered only in certain states and certain channels of trade, and differ in kind from applicant's membership services. Would you have appealed? In re Pup Scouts, LLC, Serial No. 86048207 (April 2, 2015) [not precedential].

The Board began by noting that the Section 2(d) analysis for a collective membership mark is somewhat different than that for a service mark because the former does not involve purchasers or users of goods and services. A collective membership mark "serves only to identify the fact that such members belong to the collective organization and to inform relevant persons of the members’ association with the organization." The "relevant persons" for Section 2(d) are the persons for whose benefit the membership mark is displayed.

Thus, in the case of Applicant’s collective membership mark and Registrant’s service mark, the question is whether relevant persons are likely to believe that the collective organization, i.e., Applicant, is endorsed by or in some way associated with the provider of the association services.

The Board found it clear, on the face of the application and cited registration, that applicant's organization and registrant's services "both involve pets and their owners." The fact that applicant offers memberships for the benefit of pets and their owners, while registrant offers its services directly to pets and their "human counterparts" does not detract from "the clear and obvious nexus on the face of the identifications."

Applicant feebly argued that registrant's service, according to its website, are limited to certain states and certain channels of trade. But applicant was barking up the wrong tree. [Apologies. - ed.] But there were no such restrictions in the cited registration.

As to the marks, the Board found that both "give the commercial impression of a dog or young dog that is a scout," and suggest an organization similar in style to the Boy Scouts or Girl Scouts, or an association, focusing on dogs. The Board concluded that the marks are extremely similar in meaning and overall impression, though not so much with regard to sight and sound.

Applicant's founder declared that applicant attracts highly sophisticated dog owners [the owners, not the dogs - ed.] who want to honor their pets. The Board noted, however, that there was no evidence as to the price range for registrant's services or applicant's memberships, and there were no limitations in the application or registration as to type of consumer. Potential customers and members would include all dog owners, sophisticated or not.

The Board therefore found confusion likely, and it affirmed the refusal.

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TTABlog note: What about CAT SCOUTS?

Text Copyright John L. Welch 2015.

TTAB Denies Petition to Disqualify Opposer's Attorney for Signing Applications

The TTAB, under authority delegated by the USPTO Director, decides petitions for disqualification of counsel. Here, the Board denied a petition to disqualify counsel for Opposer INTS, ruling that, although the attorney had signed and verified certain documents pursuant to a power of attorney from opposer, he was not the sole source for information regarding those documents and therefore was not a "necessary witness." INTS It Is Not The Same, GmbH v. Disidual Clothing, LLC, Opposition No. 91212768 (March 28, 2015) [not precedential].

Oppposer's counsel signed and filed applications, statements of use, renewals, and/or declarations of use and incontestability, in connection with opposer's pleaded registrations, pursuant to a Power of Attorney from opposer. He was identified in opposer's initial disclosures as a person likely to have discoverable information about "Opposer's knowledge of Opposer's registrations; matters related to the filing of Opposer's Notice of Opposition against Applicant's application; information related to the current opposition proceeding."

Section 11.307(a) of the USPTO Rules of Professional Conduct indicates when a "practitioner for a party" who may become a witness in a USPTO proceeding should be disqualified:

(a) A practitioner shall not act as advocate at a proceeding before a tribunal in which the practitioner is likely to be a necessary witness unless:
(1) The testimony relates to an uncontested issue;
(2) The testimony relates to the nature and value of legal services rendered in the case; or
(3) Disqualification of the practitioner would work substantial hardship on the client.

Thus the first question was whether opposer's attorney was a "necessary witness," i.e., whether "no other person is available to testify in his place." In other words, "[a] necessary witness is one who offers evidence that is not available from another source."

The Trademark Rules specifically state that an attorney may sign verifications on behalf of an applicant or registrant. "Indeed, it is common for attorneys to do so." The mere signing of a document on behalf of an applicant does not make an attorney a "necessary witness."

Here, there was no showing that opposer's counsel alone would need to testify to the contents of the documents he signed. "Evidence and information as to the contents of those submissions can be found elsewhere." Thus opposer's attorney was not a necessary witness. The Board observed:

In passing, a policy of disqualifying an attorney for signing a declaration on behalf of his client, especially where it is permitted by the Trademark Rules of Practice, without anything more, would have an undesired consequence of rendering many attorneys practicing before the Board eligible for disqualification.

With regard to the identification of the attorney in Opposer's initial disclosures, the stated topics were merely ministerial aspects associated with the filing of the application and subsequent submissions. That information is available from USPTO databases and from opposer. The identification of the attorney in the initial disclosures, although unusual, did not make him a "necessary witness" in light of the nature of the topics listed.

And so the petition for disqualification was denied.

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TTABlog note: Many practitioners are reluctant to verify documents on behalf of a client for fear of possible disqualification in subsequent proceedings. Maybe that fear is unwarranted. Hat tip to FOBs John Egbert and Kevin Wilson for tipping me off to this ruling.

Text Copyright John L. Welch 2015.

TTAB Test: Is BOLAN for Musical Instruments Primarily Merely a Surname?

The USPTO refused registration of the mark BOLAN for musical instruments, piano benches, recording systems, and related management and repair services, finding the mark to be primarily merely a surname under Section 2(e)(4). The name "Bolan" appeared 455 times in a public record database. How do you think this came out? In re Grand & Piano Parts Distribution B.V. Serial No. 85946217 (March 31, 2015) [not precedential].

The Board applied its standard Benthin test, looking to the rareness of the surname, any connection of the surname with someone associated with applicant, other meanings, and the "look and feel" of the term.

The examining attorney provided a database listing in which the surname BOLAN appeared 455 times. There was no showing that anyone named BOLAN had achieved wide renown or publicity. The Board concluded that BOLAN is "an extremely rare surname."

There was no evidence that anyone named "Bolan" was associated with applicant. The Examining attorney produced "negative dictionary evidence" from a single dictionary, and the Board found that this factor "very slightly" favored the PTO's position.

As to "look and feel," the examining attorney maintained that BOLAN is similar to other surnames found on a genealogy website: Boland, Boling, Bolin, and Boylan, but the Board noted that each name appeared only once. Due to the dearth of evidence, the Board was unable to make a definitive determination regarding this factor.

Bearing in mind that any doubt must be resolved in favor of the applicant, the Board found that BOLAN, "largely due to its rareness," is not primarily merely a surname.

And so the Board reversed the refusal.

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TTABlog note: Half a century ago, the Red Sox had a shortstop named Milt Bolling, whose brother Frank played for the Tigers, if I recall correctly. Frankly, Bolan looks like a surname to me.

Postscript: a loyal FOB recalled the late Marc Bolan of T-Rex.

Text Copyright John L. Welch 2015.

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

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



In re Internet Promise Group LLC, Serial No. 85892404 (March 23, 2015) [not precedential]. [Mere descriptiveness refusal of EAR NATURAL for "a packaging with a dropper that contains limited quantity of mustard oil, for dropping oil drops in the ear canal, for cure of middle ear infection, without use of antibiotics"].

In re EBCO, Inc., Serial No. 85894991 (March 27, 2015) [not precedential]. [Mere descriptiveness refusal of LOCKDOWN MAGNET for "magnets" [MAGNET disclaimed]].

In re Hookah Portable Enterprises, Inc., Serial No. 85829768 (March 27, 2015) [not precedential]. [Mere descriptiveness refusal of HOOKAH PORTABLE & Design for "electronic hookahs; hookahs" [HOOKAH disclaimed]].

In re Dish Network LLC, Serial No. 85851513 (April 2, 2015) [not precedential]. [Mere descriptiveness refusal of SMARTBOX for "set-top box"].

Read comments and post your comment here.

TTABlog note: See any WYHAs here?

Text Copyright John L. Welch 2015.

PANDORA'S for Cosmetics Confusable with Famous Mark PANDORA for Jewelry, Says TTAB

The Board sustained an opposition to registration of the mark PANDORA'S for cosmetics and related retail store services, finding the mark likely to cause confusion with the mark PANDORA for jewelry and related retail services. The fame of opposer's mark and the near identity of the goods weighed heavily in opposer's favor. The Board was unmoved by applicant's lamentations that it was a tiny David in a duel to the death with Goliath. Said the Board, "[w]e have indeed seen corporate bullying, and this is not such a case." Pandora Jewelry, LLC v. Pandora's Makeup Box Inc., Opposition No. 91196078 (April 1, 2015) [not precedential].

Priority was not an issue as to opposer's pleaded registrations, including one for the mark PANDORA in a design form shown in the picture above. Opposer also demonstrated common law use of PANDORA as of 2003, well before the filing date (constructive first use date) of the opposed application.

Opposer's products are sold through a nationwide network of retailers and are advertised and promoted widely in various media. Its sales figures and promotional expenditures are "quite impressive," and it has become one of the most recognizable jewelry brands in the country. The Board found opposer's mark PANDORA to be famous for Section 2(d) purposes, for a wide variety of jewelry products and for retail store services featuring jewelry and other fashion accessories. As we know, fame plays a dominant role in the likelihood of confusion analysis.

As to the marks, not only did opposer establish common law rights in the mark PANDORA, but the word PANDORA was the dominant term in opposer's registered marks. Applicant's adoption of the possessive form is not source-distinguishing. The close similarity between the involved marks weighed strongly in favor of opposer.

The evidence established that jewelry and cosmetics are advertised in the same magazines and sold through the same channels of trade. Applicant argued that the vast majority of opposer's products are expensive, but the Board found that most of the involved products are relatively inexpensive, and might even be purchased on impulse. Moreover, both parties market their goods to the same classes of consumers.

The key issue, then, was the relatedness of the involved goods and services. Applicant seemingly argued that, under established law, jewelry and cosmetics cannot be related. The Board, however, found the question to be one of fact.

Opposer submitted third-party registrations in which the same entities offered both jewelry and cosmetics under the same mark. Website evidence showed that jewelry and cosmetics are offered under the same brand. Women's magazines feature advertising for both types of goods. Witnesses for both parties testified that large department stores often locate the make-up counter quite closely to the jewelry counters. The Board concluded that cosmetics and jewelry are closely related for Section 2(d) purposes.

With regard to retail store services, both parties "are targeting the same demographic for gifts and purchases for the same pot of discretionary income." The Board therefore found the services of the parties to be related.

The Board observed that opposer has been expanding the use of its PANDORA brand beyond jewelry, to include sunglasses, watches, and apparel. Related goods like cosmetics are natural areas of expansion for a jewelry brand.

Although applicant contended that the likelihood of confusion was minimal, the Board found otherwise.

Opposer has invested a great deal of time, effort, and money in building its famous PANDORA brand. From the humble beginnings in 2002 of sales out of the trunk of a car, Opposer has built one of the most recognized jewelry brands in the United States. Should Applicant's mark - nearly identical to opposer's mark - be allowed to register for related goods and services, the potential for customer confusion and damage to Opposer is manifest.

The Board therefore found confusion likely and it sustained the opposition.

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TTABlog note: The issue of priority was a little murky. Applicant, a Canadian company, defeated opposer Pandora in a trademark battle in Canada, and it claimed use of its mark in the USA beginning in 2000. Footnote 32 addresses the issue, and seems to say that applicant's proof of early use was inadequate or irrelevant. I'm not sure what the phrase "falling through the Looking Glass" is supposed to mean in this context. [I guess I should go ask Alice.] I think it means that, because applicant did not seek to cancel opposer's registrations, priorty was not an issue as to the registered marks and the goods and services in the registrations. But then why mention applicant's constructive first use date at all?

Text Copyright John L. Welch 2015.

Recommended Reading: Prof. Robert C. Bone, "Trademark Functionality Reexamined"

Professor Robert C. Bone of the University of Texas School of Law considers the history, purpose, and application of the doctrine of functionality in trademark law in his article, "Trademark Functionality Reexamined," Journal of Legal Analysis (March 29, 2015). Says Professor Bone, "Functionality is one of the most important but also one of the most confusing and unsettled areas of trademark law. *** The functionality doctrine is an important bulwark against expanding trademark law too far. It is, therefore, critical to get functionality right."

Professor Robert C. Bone

Abstract
The functionality doctrine in trademark law bars protection for some, but not all, source-identifying product features—so-called trade dress—that contribute to a product’s functional performance. Despite the doctrine’s lengthy history, its critical role in promoting intellectual property policies, and the considerable attention devoted to it in recent decades, courts and commentators still disagree about what functionality means, the reasons why functional marks should not be protected, and how far the functionality bar should extend. This confusion is due largely to a lack of clarity and rigor at the normative level. This article seeks to remedy the deficiency. It traces the history of the functionality doctrine, critically analyzes its policy foundations, and outlines an analytical approach for designing optimal functionality rules.

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Text Copyright John L. Welch 2015.

Finding Abandonment, TTAB Orders Cancellation of NAUGLES Registration for Restaurant Services

The Board granted a petition for cancellation of a registration for the mark NAUGLES for restaurant services, finding that Respondent Del Taco abandoned use of the mark beginning in 1995, for a period of more than three consecutive years without an intent to resume use. Christian M. Ziebarth v. Del Taco, LLC, Cancellation No. 92053501 (March 31, 2015) [not precedential].

Respondent Del Taco acquired the original NAUGLES restaurant chain in 1988. Its last NAUGLES restaurant closed in October 1995 and Del Taco has not re-opened or operated any NAUGLES restaurant since then. Petitioner Ziebarth, an "online blogger" [Is there such a thing as an off-line blogger? - ed.], detected some interest in the return of the restaurant and filed an application to register the mark NAUGLES for "cafeteria and restaurant services" in May 2010. The mark was refused registration under Section 2(d) in view of Del Taco's registration.

Standing: Even if an application is barred by a prior registration, applicant's standing to seek cancellation of that registration may be challenged on the ground that the applicant lacked a bona fide bona fide intent to use its mark when it filed its ITU application. Here, however, the evidence showed that Ziebarth took active steps toward using the mark, including discussions regarding possible locations, financing, and marketing. He purchased the domain name www.nauglestacos.com and there operates a website called "Naugles Tacos and Burgers."

The Board therefore concluded that Ziebarth had a bona fide intent to use the mark NAUGLES when he filed his application to register, and therefore he has standing in this proceeding.

Abandonment: Section 45 of the Lanham Act provides that a mark is abandoned "[w]hen its use has been discontinued with intent not to resume use. Intent not to resume use may be inferred from circumstances. Nonuse for three consecutive years shall be prima facie evidence of abandonment." The ultimate burden of proving abandonment remains with the petitioner, but if a prima facie case is established, respondent has the burden to produce evidence that it either used the mark during the statutory period, or intended to resume use.

Respondent Del Taco's own witness testified that "Del Taco stopped using the NAUGLES trademark as the actual name of a restaurant on October 25, 1995," and respondent admitted that during the years 1995-2010 it "did not own a restaurant to the public [sic] named 'Naugles.'" Nonetheless, Del Taco contended that it never stopped using the mark in connection with restaurant services, and that since 1995 it used the mark "in advertising and on clothing."

The Board, however, pointed out that use of the mark on clothing is not service mark use. For a service mark, use requires that the mark be used in the advertising or sale of the services and that the services be rendered (as the CAFC recently held in Couture v. Playdom). Here, the services were not being provided, and so Del Taco could not rely on any purported sales of clothing to refute the abandonment of the service mark.

Respondent Del Taco's witness pointed to evidence purportedly showing website use of NAUGLES during the period 2003-2006, but the Board noted that the proffered webpages were merely historical in content and were "clearly not advertisements for contemporaneously-rendered restaurant services." In any event, this supposed evidence did not rebut petitioner's prima facie claim of abandonment for the years 1995-2003.

Del Taco claimed that it incorporated the NAUGLES mark into its "Del Taco" restaurants by way of a purported "secret menu," which is not an actual menu but a "concept" that allows customers to request food items (namely, a "bun taco" and a "MACHO bacon and egg burrito") previously offered in Naugles restaurants. But there was no evidence that the NAUGLES mark appeared on advertising materials or that Del Taco promoted the Naugles "secret menu." Nor was it clear that the mark NAUGLES was itself referred to in connection with the "secret menu." The Board concluded that the sale of food items previously sold at NAUGLES restaurants cannot be construed as use of the mark by Del Taco.

Finally, Del Taco claimed to own "considerable goodwill" in the NAUGLES mark, but the Board pointed out that it "has never found residual goodwill to be a defense to abandonment." "The continuing existence of enthusiasts of the old Naugles food items does not negate the statutory presumption of abandonment."

The Board found that Petitioner Ziebarth had established a prima facie case of abandonment. The burden shifted to Respondent "to prove that it either used the mark during the statutory period or intended to resume use." [Actually, as noted above the burden to produce evidence shifted, not the ultimate burden of proof - ed.].

The remaining question was whether Del Taco intended to resume use during the period of abandonment. Del Taco pointed to certain materials from 2009-2010 purporting to show plans for a new advertising campaign called "NAUGLES Secret Menu." However, even if those materials showed an intent to resume use in 2009, "this is much too late to save Respondent's registration."

Once a mark has been abandoned, the abandonment cannot be undone, and a registration of the mark can be cancelled on that basis notwithstanding any later use or intent to resume use. "Merely because a party used a mark a long time ago and it could use the mark in the future is not sufficient to avoid abandonment."

In conclusion, the Board ordered cancellation of the subject registration, observing that "[T]he Lanham Act was not intended to provide a warehouse for unused marks,"

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TTABlog note: Absent reversal of this ruling on appeal, Ziebarth's application will proceed to publication. What if Del Taco opposes on the ground of Section 2(a) false association? Do you think that claim could succeed?

A reader notes that Del Taco renewed the registration in 2006, well after it stopped operating Naugles restaurants. Was there a claim for fraud? Reminds me of the Bose case, where the renewal papers were signed by an executive who thought the mark was still in use, and so there was no bad intent.

Text Copyright John L. Welch 2015.

Precedential No. 12: WYHA? TTAB Says Application Must Be Verified, Affirms Refusal to Register

Here's a shocker: a trademark application must be verified! The Board affirmed a refusal to register the mark SIMPLY ORANGECELLO for orange flavored liqueur because Applicant John Michael Brack never satisfied the verification requirement. In fact, applicant never even addressed that refusal to register, either during prosecution of the application or during the appeal. In re John Michael Brack, 114 USPQ2d 1338 (TTAB 2015) [precedential].

Examining Attorney Amy E. Hella issued a refusal to register under Section 2(d), and also noted that the application was not signed or verified. Applicant addressed the Section 2(d) issue in his response, but ignored the verification requirement. Subsequently, the Section 2(d) refusal and the verification requirement were made final, and the refusals were maintained on reconsideration.

In his appeal brief, applicant ignored the verification requirement. In her brief, the examining attorney addressed both the Section 2(d) refusal and the verification requirement. Applicant did not submit a reply.

The Board observed that an applicant filing a Section 1(b) application must submit a verified statement that the applicant has a bona fide intention to use the mark in commerce in connection with the identified goods and/or services. See Section 1051(b)(3)(B) of the Lanham Act. Here, the original application (filed by applicant himself) was unsigned. The examining attorney explained in detail the procedures necessary for applicant to comply with the verification requirement. Although all of applicant's communications submitted after the original application were properly signed by applicant's attorney, none contained the required averments and thus they did not satisfy the verification requirement.

[S]ignature and verification of the averments in an application is a requirement for establishing a basis for application; in this case, a bona fide intent to use the mark in commerce pursuant to Section 1(b) of the Trademark Act, 15 U.S.C.§ 1051(b). See also Trademark Rule 2.34(a)(2), 37 C.F.R.§ 2.34(a)(2). A simple and straightforward requirement, it nonetheless is necessary to support the averments made in an application. Applicant failed to comply with this requirement despite clear and repeated admonitions from the Examining Attorney.

Therefore, the Board affirmed the verification requirement and affirmed the refusal to register on that basis. The Board also noted that the application cannot be reopened for further examination following this appeal. See Trademark Rule 2.142(g).

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TTABlog note: What the ....?

Text Copyright John L. Welch 2015.

TTABlog Road Trip: "The Trademark Office Comes to California," April 14 and 16

Yours truly, the TTABlogger, will be heading to the West Coast to speak at "2015 Trademark Office Comes to California," presented by the Intellectual Property Law Section of the State Bar of California. This awesome event will be held in Los Angeles on April 14, and in San Francisco on April 16. Registration and details here. Brochure here.

Speakers will include Commissioner for Trademarks Mary Boney Denison and Deputy Commissioner Sharon Marsh. The TTAB contingent comprises TTAB Chief Judge Gerard F. Rogers (San Francisco), Deputy Chief Judge Susan M. Richey (LosAngeles), and Judges Ellen J. Seeherman and Lorelei Ritchie.

Beth M. Goldman, Partner at Orrick, Herrington & Sutcliffe, LLP, and  Bob Samuelson, VP Business Development, Donuts Inc. "will offer practical advice and share strategies based on their extensive legal and industry experience in trademark protection, domain portfolio management, and digital marketing."

Dr. E. Deborah Jay, President/CEO, Field Research Corporation,  and Dr. Gerry Ford, Partner, Ford, Bubala & Associates, "will provide an overview of surveys and some practical tips for using them in trademark disputes."

The TTABlogger will be discussing ........ wait for it!.......... TTAB developments!

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Text Copyright John L. Welch 2015.

TTAB Posts April 2015 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled four (4) oral hearings for the month of April, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]. Briefs and other papers for these cases may be found at TTABVUE via the links provided.



April 15, 2015 - 2 PM: Caterpillar Inc. v. Rodney P. Kelly, Opposition No. 91210124 [Opposition to registration of PETRACAT for "oil and gas well testing; engineering services in the field of oil and gas well testing; consulting in the field of engineering," on the grounds of likelihood of confusion with, and likely dilution of, the allegedly famous mark CAT for construction equipment].

April 16, 2015- 11 AM: Vita Zahnfabrik H. Rauter GmbH & Co. KG v. Green Luxury Brands Inc., Opposition No. 91203900 [Section 2(d) opposition to registration of VITACARE for toothpaste, mouthwash, and other oral care products, in view of the registered marks VITA and VITA-formatives for artificial teeth and related products sold to dentists and dental laboratories].

April 21, 2015 - 11 AM: In re Belron Hungary Kft. - Zug Branch , Serial No. 86047553 [Section 2(d) refusal to register the mark shown below, for "automobile dent, scratch and chip repair," on the ground of likelihood of confusion with the registered mark AUTO RESTORER for "providing online information and news in the field of vehicle repair, maintenance, rebuilding, customization, detailing and cleaning," and on the ground of failure to disclaim the term AUTORESTORE].

April 30, 2015 - 2 PM: L'Oreal USA, Inc. and L'Oreal v. Mikhail Levitin T/A Mikhail Levitin Institute, Opposition No. 91202898 [Opposition to registration of the mark shown below for "anti-aging cream" on the grounds of likelihood of confusion with, and likelihood of dilution of, the registered mark L'OREAL and related marks, for beauty care products, including face cream and face lotion].

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TTABlog note: Any predictions?

Text Copyright John L. Welch 2015.

Precedential No. 11: Despite Examination Errors, Issued Registration Must Be Cited as Section 2(d) Bar

The Board affirmed a refusal to register the mark HOUSE BEER for "retail store services featuring beer," finding it likely to cause confusion with the identical mark for "beer." Applicant did not address the substance of the refusal in its appeal, but instead focused on certain procedures that were not followed during examination of the application underlying the cited registration (the "Underlying Application") and during examination of the application under appeal. The Board, however, ruled that once the cited registration had issued, the USPTO must apply Section 2(d), even though the application here on appeal had an earlier filing date than the Underlying Application. In re House Beer, LLC, 114 USPQ2d 1073 (TTAB 2015) [precedential].

When the USPTO is faced with conflicting applications - i.e., applications filed by different applicants, that appear to be sufficiently similar that they may require a Section 2(d) refusal - it is standard examining procedure to allow the application with the earlier filing date to proceed to publication, while suspending the later-filed application.

The Underlying Application was filed based on intent-to-use under Section 1(b), prior to applicant's filing date, but it was later amended to seek registration on the Supplemental Register. When that happens, the application loses its original filing date and the effective filing date becomes the date of filing the allegation of use that is a prerequisite to such an amendment. Here, the allegation of use was filed at least a year after applicant's filing date.

At the time when the allegation of use was filed, applicant's application was suspended in view of the Underlying Application, but the change in effective filing date for the Underlying Application went unnoticed by both the examining attorney and the applicant. [The examining attorney of the Underlying Application should have conducted a new search once the effective filing date was changed, and he or she should have found applicant's application and should have notified the other examining attorney of the change in effective filing date.]

The examining attorney maintained that she properly cited the issued registration under Section 2(d). The Board agreed. Under Section 2(d), if the mark is registered, it may be cited. That section makes no reference to the filing date of the application underlying the registration.

Applicant requested that the refusal be deemed invalid because the pertinent examination procedures were not followed, but the Board observed that it cannot give the internal examination procedures of the USPTO primacy over statutory law. "Strict compliance with those procedures is by no means a prerequisite to issuing a refusal that Section 2(d) of the Act requires."

In short, "the Examining Attorney's refusal, being required by the express terms of Section 2(d), is not rendered invalid by the procedural mishaps described herein."

The Board noted that if indeed applicant has priority of use, it may have a valid Section 2(d) ground for cancellation of the cited registration. However, mere error in the examination of the Underlying Application would not be a valid ground for cancellation.

The Board then found the involved goods and services to be related for Section 2(d) purposes, and it affirmed the refusal to register.

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TTABlog note: All's well that ends well? Well, we shall see.

Text Copyright John L. Welch 2015.