TTAB Test: Is "ALOE BIOSCIENCE" Generic for Aloe-Containing Personal Products?

The USPTO refused registration on the Supplemental Register, of the applied-for mark ALOE BIOSCIENCE, deeming it generic for, inter alia, dietary drinks, lotions, creams, toothpaste, and other aloe-containing products (in International Class 5). The examining attorney maintained that "bioscience" is used as an entity designator by companies involved in the bioscience industry, and fails to function as source indicator for applicant's goods. Applicant contended that "[w]hen ALOE and BIOSCIENCE come together to form the composite mark, they create a bizarre or incongruous meaning and evoke a new commercial impression." How do you think this came out? In re Aloe Bioscience, LLC, Serial No. 85531266 (May 12, 2015) [not precedential].

The Board observed that, although "Bioscience" is used in company names, that does not mean that the word is necessarily being used generically or that it is an entity designator. In several instances, "Bioscience" was being used as part of product brand names or as part of company names preceding the entity designator "Inc."

The fact that companies have utilized "Bioscience" in their names to describe the nature of their business does not render "Bioscience" generic for the goods at issue in this application. Taken in its entirety, the evidence establishes that "Bioscience" is merely descriptive term for a company involved with goods such as Applicant’s goods....

Applicant offered several feeble arguments: that aloe has many different meanings (but, as the Board noted, not when considered in the context of the identified goods); that the term ALOE BIOSCIENCE is not found in the dictionary (irrelevant); that consumers would not immediately understand from the term ALOE BIOSCENCE that the goods sold under the mark are those identified in the application (this is not a guessing game); and that eleven marks containing the word ALOE are already registered (but in 10 of them, "aloe" was either disclaimed or was combined in single word mark).

As to the argument that the combination of ALOE and BIOSCIENCE is incongruous, Applicant did not provide any factual support or explanation of either the supposed "bizarre or incongruous meaning," or the new commercial impression supposedly created by ALOE BIOSCIENCE.

The Board pointed out that the USPTO must prove genericness by clear evidence, and it concluded that the evidence here failed to meet that standard.

While “aloe” may be a generic term for the goods which contain "aloe," "bioscience" merely describes a feature or characteristic of the goods. The internet evidence also does not show the genericness of ALOE BIOSCIENCE or of "Bioscience." *** Even if we treat ALOE BIOSCIENCE as a phrase, rather than a compound term, the record supports the finding that ALOE BIOSCIENCE is not generic when used in connection with Applicant’s goods even in the absence of evidence that Applicant’s competitors use the term ALOE BIOSCIENCE.

And so the Board reversed the refusal.

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TTABlog note: Three days after this decision was issued, the CAFC pointed out in the PRETZEL CRISPS case that there is no dichotomy between compound words and phrases when assessing genericness. The Board here conducted the type of analysis that was criticized by the CAFC, but since the refusal was reversed, no harm was done.

Text Copyright John L. Welch 2015.

INTA Roundtable on PTO and TTAB: Boston, June 2nd

Wolf Greenfield will host an INTA luncheon roundtable on June 2nd from 12:00-2:30, at its offices at 600 Atlantic Avenue in Boston. The discussion will feature USPTO Deputy Commissioner for Trademark Examination Policy, Sharon Marsh, TTAB Chief Judge Gerard F. Rogers, and Managing Attorney for Trademark Outreach, Craig Morris. Registration details here.

The roundtable is designed to help the USPTO better understand the needs of those using its services and to offer insights into the USPTO operations. Topics to be covered will include:

• Recent developments at the USPTO.
• Customer suggestions for improvements.
• End-to-end electronic processing.
• Practice tips.

TTAB Orders Cancellation of "AAA CarFacts" Registration: Confusable with CARFAX

The Board granted a petition for cancellation of a registration for the mark AAA CarFacts for vehicle history reports [CAR FACTS disclaimed], finding the mark likely to cause confusion with various CARFAX-formative marks registered for highly similar services. Respondent AAA’s sketchy laches and estoppel defenses went nowhere, and the Board found that Respondent “had simply added its well-known AAA house mark to the phonetic equivalent of Petitioner’s mark." Carfax, Inc. v. American Automobile Association, Inc., Cancellation No. 92056568 (May 7, 2015) [not precedential].

Laches: AAA pointed to Petitioner’s 20-month delay (from the publication date of the underlying application to the filing of the petition). The Board observed that 20 months generally cannot be considered unreasonable, since the Lanham Act provides that a petition for cancellation under Section 2(d) may be brought up to five years after issuance of a registration. [Compare the recent Ava Ruha decision, TTABlogged here, where the Board ruled that at delay of just over three years and two months could support a laches defense]. However, the two elements for proving laches – unreasonable delay and resulting harm – must be considered together.

AAA claimed that it relied on Petitioner Carfax’s failure to oppose when AAA decided to begin using the mark, and therefore the loss of goodwill would be prejudicial. However, there was no evidence of record regarding any investments in or expenditures connected with the mark by AAA, and so in view of the lack of proof of prejudice, the Board declined to find laches.

Estoppel: AAA claimed that an estoppel defense “arises from the prejudice to Registrant.” Estoppel, however, requires misleading conduct by the other party that leads the first party to reasonably infer that rights will not be asserted against it. Here, however, Carfax voiced its concerns beginning shortly after publication and beyond. In short, AAA could not reasonably have believed that Carfax would consent to its use of the AAA CarFacts mark.

Likelihood of Confusion: The Board focused its analysis on the Carfax mark most similar to AAA’s mark, shown immediately below, for providing online vehicle history information. AAA admitted in its answer that the services of the parties are highly similar and related, but it argued that the services are different in that AAA does not provide information regarding specific vehicles, but only more generally by make, model, and year. However, the services identified in the challenged registration make no such distinction, and in any case AAA conceded the relatedness of the involved services.

Because the services are in part identical, the Board presumed that they are offered through the same channels of trade to the same classes of consumers. AAA pointed out that its services are rendered only to its members, but again the Board noted that there was no such limitation in the challenged registration. The evidence showed that AAA and Carfax have a long history of working together, which only increases the likelihood of confusion “because consumers may used to seeing Petitioner’s services offered on Respondent’s website.”

AAA admitted that the CARFAX mark is well-known and is arbitrary and distinctive. Nevertheless, it asserted that when spoken, CARFAX sounds like “car facts” and is therefore entitled to a narrower scope of protection. But, the Board observed, “CARFAX is more than a ‘mere misspelling” of ‘car facts.’” The combination of “car” and “fax” is incongruous or arbitrary and is a distinctive mark, as AAA admitted. The record was devoid of any third party use of the term “car facts.” In any case, Carfax’s evidence of thirty years of use, and of its position as market leader in its field, established that CARFAX is “at least a fairly strong mark ... entitled to a concomitantly broad scope of protection.”

Turning to the marks, AAA contended that its mark is dominated by AAA, since that is the first term in the mark. But looking at the marks in their entireties, the Board found that AAA had simply added its house mark to the phonetic equivalent of Petitioner’s mark. “The addition of AAA to CarFacts does not change the connotation or commercial impression of the term CarFacts. Rather, it merely tells consumers that the CarFacts service is offered by AAA." And despite AAA’s disclaimer of CAR FACTS, and even assuming that “car facts” is descriptive of facts about cars, “it does not follow that CARFAX is not entitled to protection from phonetically similar marks for legally identical services.” Confusion should be avoided between “weak” marks, as well as between “strong” marks, or between a “weak” and a “strong” mark. The Board concluded that the similarities between the marks outweigh their differences, and that AAA’s mark is substantially similar to Petitioner’s CARFAX marks.

Balancing the relevant duPont factors, the Board found confusion likely and it granted the petition for cancellation.

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TTABlog note: The Board did not consider the real marketplace conditions, and so would AAA be collaterally estopped on the issue of likely confusion if an infringement action were brought?

Text Copyright John L. Welch 2015.

TTAB Test: Is CHEF'S CUBE Merely Descriptive of Vacuum Packaging Machines?

Joseph E. Sielski applied to register the mark CHEF'S CUBE for "vacuum packaging machines for sealing plastic pouches" (Int'l Class 7), but the USPTO refused registration under Section 2(e)(1), deeming the mark merely descriptive of the identified goods. The examining attorney argued that such machines are used by chefs and are commonly cube-shaped. Applicant asserted that its machines may be used by individuals other than chefs. How do you think this came out? In re Joseph E. Sielski, Serial No. 86032662 (May 21, 2015) [not precedential].

The examining attorney relied on dictionary definitions of "chef" and "cube," as well as on numerous website pages displaying vacuum packaging machines for sealing plastic pouches containing food. [Applicant's device is shown above].

The evidence established, and applicant acknowledged, that vacuum packaging machines may be cube-shaped and may be used by chefs. But the evidence failed to show that a cubic shape is a significant feature of those machines.

The evidence ... clearly indicates that vacuum packaging machines are produced in a variety of shapes other than cubes, strongly suggesting that the cube shape of Applicant’s goods is an arbitrary, aesthetic or practical choice of product design. The Examining Attorney fails to explain how the cubical shape of Applicant’s goods is a significant feature, aspect or characteristic of vacuum packaging machines such that the mark CHEF’S CUBE may be merely descriptive of thereof.

Distinguishing several prior rulings, the Board observed that here the mark describes an intended user and one of may shapes in which the goods may be made. It noted that a mark like CHEF'S VACUUM may describe an end user and a significant characteristic of the goods. But CHEF'S CUBE does not.

And so the Board reversed the refusal.

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TTABlog note:  Doesn't "cube" describe the shape of applicant's goods? Should CUBE be disclaimed?

Text Copyright John L. Welch 2015.

Three Summary Judgment Motions: Morehouse Defense, Claim Preclusion, and Contract Estoppel

Here are three recent TTAB decisions granting motions for summary judgment (in whole or in part), the first rejecting an applicant's Morehouse defense, the second applying claim preclusion, and the third sustaining a defense of contract estoppel.

In Disney Enterprises, Inc. v. Ronica Holdings Limited, Opposition No. 91218136 (April 29, 2015) [not precedential], the Board granted Disney's motion for partial summary judgment, dismissing applicant's Morehouse defense. That defense is based on the proposition that a plaintiff (opposer) cannot be harmed by a new registration when the defendant (applicant) already owns a registration for substantially the same mark for substantially the same goods or services. [Why need a new registration then? - ed.]. Here the Board concluded that applicant's applied-for mark was not essentially the same as its prior registered mark [see illustration below] and further that the application included goods and services not found in the registration.

In BLVD Supply, LLC v. Juan Chen, Cancellation No. 92059168 (April 28, 2015) [not precedential], the Board entered judgment summarily on Chen's defense of res judicata or claim preclusion. Chen relied on a prior TTAB dismissal of a petition for cancellation filed by a company called BLVD Supply, the dismissal being based on that petitioner's failure to take testimony or introduce evidence (Rule 2.132(a)). The Board found that the earlier judgment was final and on the merits, that the petitioners in the two cases were in privity, and that the new petition for cancellation was based on the same set of transactional facts as the first petition (asserting that Chen had committed fraud or had abandoned her mark (shown below)).

In Who Dat Yat Chat, LLC v. Who Dat?, Inc., Opposition No. 91215018 (April 28, 2015) [not precedential], the Board granted Applicant's motion and denied opposer's cross-motion for partial summary judgment on the issue of contract estoppel. The parties had entered into a settlement agreement in connection with a district court infringement action, which provided that opposer had exclusive right to use the mark WHO DAT YAT CHAT and WHO DAT for goods and services provided in connection with restaurants and coffee houses. When applicant sought to register the mark WHO DAT? for bakery products, coffee, and the like, opposer brought a motion to re-open the district court action in order to seek enforcement of the settlement agreement. The court, however, ruled that applicant had not breached the agreement by filing its application because opposer's contractual right of exclusivity extended only to products sold in connection with its restaurants and coffee houses. The Board chose to defer to the district court's ruling and entered judgment in favor of applicant on the issue of contract estoppel. [The Board also denied applicant's motion based on issue preclusion (or collateral estoppel) because the district court ruling was not a final judgment but rather a post-judgment ruling on a motion to reopen proceedings.]

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TTABlog note: I've yet to see a successful Morehouse defense.

Text Copyright John L. Welch 2015.

TTAB Test: Are COW CREEK and BULL CREEK BREWING Confusable for Beer?

This applicant found itself up a creek when the USPTO refused registration of its mark COW CREEK for beer, finding the mark likely to cause confusion with the registered mark BULL CREEK BREWING, in standard character and design forms, for "beer, craft beer, and ales" BREWING disclaimed]. Of course with the goods identical in part, a lesser degree of similarity between the marks is necessary to support a Section 2(d) refusal. But who would confuse a cow with a bull? How do you think this came out? In re BWBC, Inc., Serial No. 76711077 (May 19, 2015) [not precedential].

As to the marks, the Board noted that BREWING is a merely descriptive or generic term that is accorded less weight in assessing the similarities between the marks. It all came down to the words COW and BULL, which were the subject of considerable discussion by applicant and Examining Attorney Michael Webster.

Several dictionaries defined the word "cow" as including domestic bovines of either sex. "Bull" is defined as a male of any bovine species, or even a "male cow." The Examining Attorney therefore contended that the general impression of the word "cow" would include any domestic bovine of either gender.

Applicant noted that the primary definitions of "cow" indicate a female animal, and only the second or third definitions in the dictionaries included the gender neutral reference, and some definitions in the record did not have any neutral definition. It argued that "the most understood definition is listed first." Applicant also submitted several articles and website pages that referred separately to cows (female) and bulls (male).

The Board, however, found the marks to be more similar than different. Whether the gender neutral dictionary definitions are the first or third is of no great concern, nor does it matter than some definitions are labeled "informal." Moreover, the definitions of "bull" as a male cow supported the contention that "cow" is used to refer to both males and females. The Board concluded that the marks at issue engender the same commercial impression.

As to the cited design mark, the words BULL CREEK are dominant. The design component only reinforced the word BULL in the mark. Again the Board found applicant's mark to be similar to the cited mark.

And so the Board affirmed the refusal to register.

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TTABlog note: Would you appeal from this TTAB decision? Would you take it to the district court in order to add more evidence, keeping in mind the possibility (after Shammas v. Focarino) that you will wind up paying all the USPTO's expenses?

Text Copyright John L. Welch 2015.

TTABlog Road Trip: Rocky Mountain IP Institute, May 28th and 29th

Yours truly, the TTABlogger, will be heading west to speak at the "Rocky Mountain Intellectual Property and Technology Institute," presented by the Intellectual Property Law Section of the Colorado Bar Association, the ABA Section of Intellectual Property Law, and Stanford Law School, Stanford Program in Law, Science and Technology. This monumental event will be held in Westminster, Colorado at the Westin Westminster Hotel on May 28th and 29th. Registration and details here. Brochure here.

Speakers will include Professor Mark Lemley of Stanford Law School (Patent Law Update), David Bernstein of Debevoise & Plimpton LP (Trademark), Ian Ballon of Greenberg Traurig, LLP (Copyright), and a host of other speakers and panelists.

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

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Text Copyright John L. Welch 2015.

TTAB Reverses Mere Descriptiveness Refusal of "ERILLO" For Electronic Cigars

The Board reversed this Section 2(e)(1) refusal of the mark ERILLO, finding it not merely descriptive of "tobacco products and accessories, namely electronic cigarettes and electronic cigars." The examining attorney contended that "rillo is merely a type of cigar and an erillo is another word for electronic cigar," but the USPTO's evidence was mostly smoke and not enough substance. In re Blunt Wrap U.S.A., Inc., Serial No. 85938790 (May 12, 2015) [not precedential].

The examining attorney relied on a dictionary definition of "e" (electronic) and two website pages referring to a "rillo" as a small cigar in which the tobacco has been replaced by cannabis. Other websites referred to cigars as "rillos," to small cigars as cigarillos, and to electronic cigars as "e-cigars."

The Board acknowledged that the letter "e" often means "electronic," but the questions was whether when the letter is combined with "rillo," the compound term is merely descriptive of the identified goods. The Board could not make such a finding based on the evidence of record.

In addition to being few in number, the above-mentioned “definitions” and uses of the term “rillo” are from websites that provide no source attribution, and therefore have little probative value. Moreover, there is no information in the record as to whether the general population has been exposed to any of the websites.... *** The term “rillo” appears to be a slang term for a cigarillo with altered contents, and as noted above, a cigarillo is defined as “a small, thin cigar,” but that is not enough evidence on which to base a finding that the mark ERILLO is merely descriptive of electronic cigars and electronic cigarettes.

If a "rillo" requires replacement of the tobacco with another substance, use of the term with applicant's electronic cigarettes and cigarettes is incongruous, because they do not contain tobacco that could be replaced.

The Board therefore reversed the refusal to register, but noted that "on a different record" it might reach a different result.

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TTABlog note: Is there such a think as e-snuff? An e-chaw? An e-bong?

Text Copyright John L. Welch 2015.

TTAB Test: Are Ginger-Based Soft Drinks Related to Vodka, Gin, and Rum?

Waiwera LLC applied to register the mark GINGERELLA for "vodka, gin, rum," but the USPTO refused registration under Section 2(d) in view of the identical mark for "Non-alcoholic ginger based carbonated soft drinks." Waiwera appealed, arguing that the mark GINGERELLA is weak for ginger-based drinks, and that a mere four third-party registrations is not enough to prove the relatedness of the goods. How do you think this came out? In re Waiwera LLC, Serial No. 86310144 (May 15, 2015) [not precedential].

Applicant maintained that GINGERELLA is weak and entitled to limited protection even for non-alcoholic beverages, because the word GINGER is generic and ELLA is often used as a suffix to denote a diminutive version of something. The Board observed that, at most, GINGERELLA is suggestive of a drink containing ginger, and that applicant's goods could also have a ginger flavor. In addition, GINGERELLA appears to be a play on "Cinderella" and as such is a suggestive mark. In any case, even weak marks are entitled to protection against likelihood of confusion.

Of course, when the marks are identical a lesser degree of similarity between the goods is necessary to support a finding of likely confusion. Applicant maintained that the respective goods of the parties occupy unique niches within the broad category of beverages. The Board agreed with Applicant that the four third-party registrations, covering the involved goods, cited by Examining Attorney Joanna Shanoski were insufficient to prove relatedness of the goods.

However, more compelling was the evidence that registrant's goods are complementary to and commonly used with applicant's goods. Internet evidence showed that well-known cocktails have been made with ginger ale and ginger beer, including the Moscow Mule, the Foghorn, and the Dark 'N Stormy. [Shouldn't that be 'N'? - ed.]. Numerous drink recipes call for the mixing of vodka, gin, or rum with ginger-based carbonated soft drinks. Producers of ginger ale market their goods as an ingredient of cocktails containing vodka, gin, or rum. Applicant conceded that ginger ale and alcohol are often mixed to make cocktails.

When the evidence shows that goods have complementary uses and are often purchased by the same purchase for those purposes, "such goods have generally been found to be sufficiently related such that confusion would be likely if they are marketed under the same or similar marks." [E.g., bread and cheese, pepper sauce and agave nectar].

And so the Board affirmed the refusal to register.

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TTABlog note: What do you think? Was this a WYHA?

CAFC Vacates PRETZEL CRISPS Decision: TTAB Misapplied Genericness Test

The CAFC vacated the TTAB's decision [TTABlogged here] finding the term PRETZEL CRISPS to be generic for "pretzel crackers," and remanded the case to the Board for application of the correct legal standard set forth in its Marvin Ginn decision. The appellate court concluded that the Board had failed to consider evidence of the relevant public's understanding of PRETZEL CRISPS in its entirety. Princeton Vanguard, LLC v. Frito-Lay North America, Inc., 114 USPQ2d 1827 (Fed. Cir. 2015) [precedential].


According to Marvin Ginn, "[t]he critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question." The parties did not dispute that the genus of goods at issue was "pretzel crackers" and the relevant public, ordinary consumers who purchase and eat same.

The Board acknowledged that it must determine whether a proposed mark as a whole is generic, but it cited In re Gould for the proposition that when the mark is a "compound term (in other words a combination of two or more terms in ordinary grammatical construction)," it need only look at the meanings of the constituent words. If the proposed mark is a phrase, however, American Fertility requires that the Board "conduct an inquiry into the meaning of the disputed phrase as a whole." But the CAFC pointed out that there is no such dichotomy: "The problem with the Board’s analysis is that there is only one legal standard for genericness: the two-part test set forth in Marvin Ginn."

Regardless of whether the mark is a compound term or a phrase, the applicable test is the same and the Board must consider the record evidence of the public’s understanding of the mark as a whole. Am. Fertility, 188 F.3d at 1348-49. Our decision in Gould merely provides additional assistance in assessing the genericness of compound terms where it can be shown that “the public understands the individual terms to be generic,” and the joining of those terms into one compound word provides no additional meaning. Id. It is not a short-cut and does not supplant the two-part test set forth in Marvin Ginn.

Consideration of the public's understanding of the constituent words of a compound term may be a useful first step in the genericness analysis, but the Board must then consider the record evidence regarding the public's understanding as to whether joining the words together lends any additional meaning. Here, the Board deemed PRETZEL CRISPS to be a compound term, not a phrase, and evaluated the individual terms under In re Gould. "Where, as here, the record is replete with evidence of the public’s perception of the term PRETZEL CRISPS as a whole, it is unclear why the Board would resort to analyzing the terms individually or why it would believe doing so would aid its analysis."

After analyzing the constituent words under In re Gould, the Board "stated in passing" that had it analyzed PRETZEL CRISPS as a phrase it would have reached the same conclusion because "the words strung together as a unified phrase also create a meaning that we find to be understood by the relevant public as generic for 'pretzel crackers.'" But the court found "no evidence that the Board conducted the necessary step of comparing its findings with respect to the individual words to the record evidence demonstrating the public's understanding of the combined term PRETZEL CRISPS."

The CAFC therefore concluded that the Board applied the incorrect legal standard. On remand, the Board must consider the evidence concerning the relevant public's understanding of the term PRETZEL CRISPS in its entirety.

The court went on to observe that the record contained "significant evidence in the form of declarations, survey evidence, and evidence of use of PRETZEL CRISPS in the snack food industry and by the media."

Though the Board is not required to discuss every piece of evidence, it cannot focus primarily on evidence of the word “crisps” in isolation, select a few pieces of evidence involving the combined term “pretzel crisps,” and conclude that the trademark is generic. Nor can it disregard the results of survey evidence without explanation. Just as it may not short-cut its legal analysis, the Board may not short-cut its consideration of the factual record before it.

The CAFC particularly noted the Board's questionable treatment of the survey evidence of record. The Board seemingly considered the respective survey evidence of the parties as cancelling each other out, but it did not explain why. However, it found no flaw in Princeton Vanguard's survey evidence (indicating that 55% of respondents thought PRETZEL CRISPS was a brand name and 36% thought it a common name), and expressly agreed with the criticism of Frito-Lay's survey. Instead the Board gave controlling weight to dictionary definitions, evidence of use by the public, and evidence of use by Princeton Vanguard. "On remand, the Board will have the opportunity to make the relevant factual findings based on all of the evidence of record, and must give appropriate consideration to the proffered survey evidence."

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TTABlog comment: The "dichotomy" that the CAFC complains about is a child of its own confusing precedents. If there is no such dichotomy, why does this opinion still talk about "compound terms" and "phrases?" Why not just look at the term proposed as a mark and ask, "what does the term mean?" based on all the record evidence?

Text Copyright John L. Welch 2015.

WYHA? TTAB Finds MASTERBAITER Confusable With MASTERBAIT & Design, Both for Clothing

In an ultimately futile exercise, Applicant Packed House Publications, LLC, appealed from a Section 2(d) refusal to register the mark MASTERBAITER for a laundry list of clothing items in class 25, including various items of athletic apparel. Examining Attorney Eugenia K. Martin had deemed the mark likely to cause confusion with the registered mark shown below, for "athletic apparel, namely, shirts, pants," etc. Would you have appealed? In re Packed House Publications, LLC, Serial No. 85955911 (May 13, 2015) [not precedential].

Applicant argued lamely that the involved goods are not related because its mark "is used with humorous t-shirts and apparel," whereas the cited mark is used for clothing sold exclusively in connection with fishing bait. The Board, however, pointed out for the umpteenth time that the goods at issue must be compared as identified in the application and cited registration, regardless of actual marketplace usage.

Because the goods are in part identical, the Board must presume that they travel through the same trade channels to the same classes of consumers. Moreover, the involved goods include non-expensive items sold to ordinary consumers having no particular sophistication.

Turning to the marks, the Board noted once again that when the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. Both the applied-for mark and the word portion of the registered mark are "readily recognized as misspellings of the words masturbate and masturbator," and thus have the same connotation. The marks are similar in pronunciation and also in appearance, since the word MASTERBAIT is the dominant part of the cited mark. "Both marks share the overall commercial impression of being slightly racy, and the addition of the fish design in registrant's mark, while reinforcing the double entendre created thereby, does not obviate this similarity."

Applicant argued that the cited mark is weak in view of ten third-party registrations for marks incorporating the word BAIT or MASTER, but there was no evidence of use of the marks, or of any public recognition thereof. Moreover, only five of the marks were registered for clothing, and four of those contained additional wording (BITE ME BAIT & Design, SKINBAIT, XCITE BAITS, and BAM BAITS) that differentiated the marks from the marks involved here. The existence of the fifth registration, for BAIT for "tee shirts," did not establish that MASTERBAIT is weak for clothing. In short, the third-party registrations had no probative value regarding the alleged weakness of the mark MASTERBAIT.

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

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TTABlog note: Well, would you have?

Text Copyright John L. Welch 2015.

PRECEDENTIAL: Test Your TTAB Judge-Ability On This Service Mark Specimen of Use

The USPTO refused registration of the mark WALK-IN SHOPPER for "business training consultancy services" on the ground that the specimen of use failed to show use of the mark in connection with the identified services. Applicant argued that the text states that it offers communications training targeting the walk-in shopper. How do you think this came out? In re Graystone Consulting Associates, Inc., 115 USPQ2d 2035 (TTAB 2015) [re-designated as precedential on July 30, 2015].

click on image for larger picture
Examining Attorney W. Wendy Jun maintained that the applied-for phrase "is the subject of applicant's consulting and training services" and is not being used as a source indicator for applicant's services. Consumers, she asserted, "would only likely view the mark as referring to the topic or category of applicant’s consulting services, not as the source of the consulting services."

The Board agreed with the examining attorney that the specimen does not show the the required connection between the mark and the services.

Applicant is using “Walk-In-Shopper” to identity a particular customer, i.e., one who “visit[s] a funeral home in advance to determine which firm they will choose.” This is evident from the use of the term in lower cases letters (“targeting the walk-in-shopper”) and from the content of the paragraph which is referring to an individual identified as a walk-in shopper.

Even though the "TM" symbol appears adjacent the term, the mere reference to "training and consulting" is not enough to make the association between mark and services. The text that follows regarding the target customer makes clear that the phrase is used to refer to the customer, not to the services.

And so the Board affirmed the refusal.

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TTABlog note: Is this a WYHA? Was the appeal dead on arrival?

Text Copyright John L. Welch 2015.

TTAB Test: Which One of These Four Section 2(d) Refusals Was Reversed?

Here are four recent appeals from Section 2(d) likelihood of confusion refusals. Three were affirmed. Which one was reversed? [Answer in first comment].


In re Car Wash Co., Inc., Serial Nos. 86011273 and 86011285 (May 8, 2015) [not precedential]. [Refusal to register SHINE 'N' SHIELD for "clear coating protectant for vehicles" and for "car wash services," in view of the registered mark SHINE & SHIELD for "Automobile and car wax preparations; Automobile cleaners; Automobile polishes; Automobile tire cleaning and polishing preparations; Automobile wax; Automobile, tire, glass and wheel cleaning preparations; Cleaning, washing and polishing preparations; Polymer sealant for cleaning, shining and protecting automobile exterior surfaces"].

In re Gulf Coast Pharmacy, Inc., Serial No. 86246922 (May 8, 2015) [not precedential]. [Refusal to register the mark shown below left, for "Retail pharmacy services; retail store services featuring home medical equipment, vitamins, medications, and home health products for general consumer health needs," in view of the two registered marks: the mark shown below right for vitamins, and the mark PHARMCARE for "long term care pharmaceutical services, in the nature of institutional retail pharmacy services primarily marketed to nursing facilities, assisted living centers, and other institutional and residential healthcare facilities"].

In re Amco International Education Services, S.A.P.I. de C.V., Serial No. 85601701 (May 7, 2015) [not precedential]. [Refusal to register the mark BRIGHT IDEAS, BRILLIANT FUTURE for educational publications; consultancy services in the fields of school management and administration, and providing teacher workshops, in view of the registered mark HARRY WINSTON BRILLIANT FUTURES for educational services, namely, providing workshops, seminars, tutoring and academic mentoring to children].

In re AccentCare, Inc.., Serial No. 85712363 (April 30, 2015) [not precedential]. [Refusal to register TEXAS HOME HEALTH for home health care services and personal living assistance services [HOME HEALTH disclaimed], in view of the registered mark TEXAS HEALTH & Design (shown below) for "comprehensive health care services; hospital services; addiction treatment services; mental health services; mobile medical diagnostic services and home healthcare services" [HEALTH disclaimed].

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TTABlog comment: See any WYHAs here?

Text Copyright John L. Welch 2014.

Precedential No. 14: TTAB Sustains Yankees' Dilution Claim Re "THE HOUSE THAT JUICE BUILT"

An augmented panel (seven judges) of the TTAB sustained an opposition to registration of the mark THE HOUSE THAT JUICE BUILT for T-shirts, baseball caps, hats, jackets and sweatshirts, the mark "THE HOUSE THAT JUICE BUILT" for mugs, and the design mark shown immediately below for "T-shirts, baseball caps, hats, jackets and sweatshirts," finding the first two marks likely to cause dilution-by-blurring of the Yankees' registered marks THE HOUSE THAT RUTH BUILT and the third likely to dilute its "Top Hat" design mark. The Board declined to consider applicant's parody defense in its Section 43(c) analysis, because applicant asserted an intention to use the opposed marks as source indicators, which by definition is not a noncommercial use or a "fair use" exempted from a dilution claim. New York Yankees Partnership v. IET Products and Services, Inc., 114 USPQ2d 1497 (TTAB 2015) [precedential].

A plaintiff must establish four elements in order to prove a claim of dilution by blurring:

(1) the plaintiff “owns a famous mark that is distinctive;
(2) the defendant is using a mark in commerce that allegedly dilutes the plaintiff’s famous mark;
(3) the defendant’s use of its mark began after the plaintiff’s mark became famous; and
(4) the defendant’s use of its mark is likely to cause dilution by blurring or by tarnishment." Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1723-24 (Fed. Cir. 2012).

Fame of Top Hat logo: Applicant conceded that opposer's Top Hat logo is distinctive. The Bronx Bombers offered substantial evidence regarding the duration and extent of the advertising of the mark, and the sales of goods and services under the mark. The Top Hat logo has been in use for at least four decades on clothing items, and has been widely displayed on television broadcasts and in promotional campaigns with various well-known brands. The design has been registered on the Principal Register since at least 1976 for baseball-related services and various collateral goods, including drinking cups and apparel. The Board therefore found the Top Hat logo to be famous for dilution purposes.

Fame of THE HOUSE THAT RUTH BUILT: Applicant conceded that the phrase THE HOUSE THE RUTH BUILT, as used by the press and public, is famous as referring to Yankee Stadium, but it contended that the phrase is not famous as a trademark. The Board observed that the first factor for assessing fame is the "duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties." [Emphasis in original]. In addition, the Board has occasionally found that "a nickname or a trade name for a product or service may acquire trademark significance when the public has come to know and use it as such 'even if the company itself has made no use of the term.'" [E.g., AMEXCO, BIG BLUE, and BUNNY CLUB]. Here, opposer had registered and used the mark for licensed merchandise.

The Board found that opposer’s "use of its stadium, which Applicant admits had been known by the nickname THE HOUSE THAT RUTH BUILT since the 1920s, has resulted in widespread recognition of that mark in association with Opposer’s baseball services." Extensive media coverage confirmed the fame of the mark.

The second element of the dilution test requires that defendant be using its mark in commerce, but the Board in Toro Co. v. ToroHead Inc., 61 U.S.P.Q.2d 1164, 1174 (T.T.A.B. 2001), held that the filing of an intent-to-use application satisfied that requirement. As to the third element, the Board found that opposer’s marks became famous before the filing dates of the challenged applications (i.e., their constructive first use dates).

Dilution or Not?: As to the final element of the analysis, whether applicant's marks are likely to dilute opposers' marks, the Board noted that "dilution by blurring occurs when a substantial percentage of consumers, on seeing the junior party’s use of a mark on its goods, are immediately reminded of the famous mark and associate the junior party’s use with the owner of the famous mark, even if they do not believe that the goods come from the famous mark’s owner." UMG Recordings Inc. v. Mattel Inc., 100 USPQ2d 1868, 1888 (TTAB 2011) (citing Toro Co., 61 USPQ2d at 1183).

The Board looked to the six non-exhaustive factors of Section 43(c)(B)(i)-(vi), finding the Top Hat logo to be "sufficiently similar that Applicant’s mark will 'trigger consumers to conjure up' Opposer’s famous mark." Quoting National Pork Board v. Supreme Lobster & Seafood Co., 96 USPQ2d 1479, 1497 (TTAB 2010). Opposer's Top Hat mark is inherently distinctive and the Yankees are the substantially exclusive user of that design. The record, however, lacked evidence from which the Board could determine the degree of recognition of opposer's mark.

Parody: As to applicant's intention to create an association between the marks, applicant claimed that its mark was a parody of the Yankees logo and therefore 15 U.S.C. §1125(c)(3)(A)(ii) "mandates that Applicant's parody is non-actionable." The Board pointed out that this "fair use" exemption in the dilution statute applies to use of a famous mark "other than as a designation of source for the person’s own goods or services." Noncommercial use is also excluded. Here, applicant sought to register its marks as source indicators; it was not proposing merely ornamental, expressive, or noncommercial use. And so the fair use exception was inapplicable here, and this factor favored opposer.

The Board took the opportunity to modify its suggestion in in Research in Motion Ltd. v. Defining Presence Marketing Group Inc., 102 USPQ2d 1187, 1198 (TTAB 2012), that an alleged parody should be considered as part of its dilution analysis even when parody did not provide a "safe harbor" for a defendant.

We now choose to not consider the parody defense as part of the assessment of the dilution claim, because, as discussed supra, a mark that identifies source – which it must for registration – will not concurrently qualify for a statutory exclusion to a dilution claim. Stated another way, when an applicant’s mark is registrable, because it is being used in commerce to indicate source, such use is not a noncommercial use or fair use. Thus, given the circumstances generally presented by opposition and cancellation proceedings based on allegations of dilution, we find it virtually impossible to conceive of a situation where a parody defense to a dilution claim can succeed in a case before the Board.

Finally, there was no evidence of an actual association between the marks, but then the opposed applications were based on intent-to-use and applicant had sold only 22 shirts, thus minimizing the opportunity for actual association to occur.

The Board concluded that the first, second, third, and fifth factors favored a finding of dilution, while the fourth and sixth were neutral. The Board ruled that Applicant’s design mark "would impair the distinctiveness of Opposer’s top hat design marks and would not constitute a non-source-indicating fair use parody."

As to the mark THE HOUSE THE RUTH BUILT, the Board's dilution analysis was similar to that above. The first, second, fourth, and fifth factors favored the Yankees, while the third and sixth were neutral.

Applicant claimed that the Yankees' mark was diluted due to seven similar marks that were registered or in use: THE HOUSE THAT ROCK BUILT, THE HOUSE THAT FRIED CHICKEN BUILT, THE HOUSE THAT JACK BUILT, WELCOME TO THE HOUSE THAT SEAFOOD BUILT, THE HOUSE THAT LOVE BUILT, THE HOUSE THAT FAME BUILT, and THE HOUSE THAT SERVICE BUILT. The Board observed, however, that registrations are not evidence of use, and applicant's Internet evidence lacked proof of the nature and extent of use of the third-party marks. Moreover, "[a] limited amount of third-party use is insufficient to defeat a showing of substantially exclusive use." McDonald’s Corp. v. McSweet, LLC, 112 USPQ2d 1268, 1289 (TTAB 2014).

And so the Board sustained the opposition on the ground of dilution, declining to reach opposer's Section 2(a) false association and Section 2(d) likelihood of confusion claims.

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TTABlog note: IMHO, Babe Ruth is the greatest baseball player of all time. Any dissent? What if the designated hitter rule had applied in his day? Would Babe have merely been the greatest left-handed pitcher of all time?

Text Copyright John L. Welch 2015.

TTAB Dismisses OMEGA Opposition, Finding Tactical Protective Clothing and Watches Unrelated

The Board dismissed this opposition to registration of the marks Ωmega and Ωmega Elite, in the stylized forms shown below, for protective clothing and bags for technical gear, finding the marks not likely to cause confusion with the (allegedly) previously-used marks OMEGA and the Greek letter “Ω”, for clothing, watches, timing equipment, and sports accessories, and the registered marks OMEGA and variations thereof for watches and timing equipment. The Board also dismissed opposer’s claims of non-use, abandonment and fraud. Omega S.A. (Omega AG) (Omega Ltd.) v. Alliant Techsystems Inc., 118 USPQ2d 1289 (TTAB 2015) [not precedential].

Likelihood of Confusion: The Board first found that opposer’s mark OMEGA is famous for watches, in light of opposer’s use of the mark for more than 100 years, significant sales, extensive advertising, widespread media attention, and association with major sports events and celebrities.

As to the marks, the Board not surprisingly found applicants Omega stylized mark to be quite similar to opposer’s stylized OMEGA mark, since the Greek letter is the first letter in each mark. Applicant’s Omega Elite mark is more similar than dissimilar to opposer’s marks, the word “Elite” being laudatorily descriptive and therefore entitled to less weight in the likelihood of confusion analysis. In short, this first du Pont factor weighed in favor of opposer.

Applicant submitted dozens of third-party registrations, for marks comprising or containing the word “omega” or the Greek letter, as well as Internet printouts displaying use of such marks. However the vast majority of the registrations and printouts were for goods and services unrelated to those of opposer and applicant. However, several were probative, and although there was no evidence of the extent of use of these marks, the Board was satisfied that “the public may have been exposed to offers for sale of or advertisements for OMEGA-branded goods which are similar or at least related to Applicant’s goods.” The Board concluded that this evidence, given its limitations, slightly favored applicant.

Although opposer introduced some evidence of use of OMEGA in connection with clothing, sports accessories, and other goods besides watches, its evidence did not establish “technical trademark use,” nor any use prior to applicant’s filing dates.

The Board was not persuaded that opposer’s goods were related to applicant’s goods. Opposer pointed to “Omega-branded [promotional] life preservers” and “starting guns,” but there was no proof that these items qualified as “goods in trade,” or that opposer sold these goods or made any use of OMEGA with them, prior to applicant’s filing date. Moreover, “starting guns” are not weapons and are unrelated to applicant’s tactical gear. Likewise, opposer’s “timekeeping services," although sometimes provided for events that include guns (e.g., biathlons), are unrelated to applicant’s goods.

Opposer’s arguments regarding channels of trade and classes of purchasers were unsupported by evidence. Applicant primarily offers its goods via catalog targeted to military, law enforcement, and other customers seeking tactical gear. Opposer’s goods are sold through its own retail stores, as well as in authorized dealers and boutiques. It utilizes “celebrity ambassadors” and prominent publications to promote its products. OMEGA brand watches are priced from $3,000 upward.

The Board noted that neither the opposed applications nor the pleaded registrations have any limitations as to channels of trade or classes of consumers, but the Board asserted that this “only means that the ‘goods are presumed to travel in all normal channels to all prospective purchasers for the relevant goods.’” [This seems to ignore the black letter law that one may not limit the identification of goods by means of extrinsic evidence of actual usage - ed.]. Here the actual channels of trade are much different. Moreover, the fact that some consumers of applicant’s tactical goods might also purchase one of opposer’s high-end watches does not provide a basis for finding that the channels of trade and classes of purchasers overlap. Every consumer is a potential customer for opposer’s watches, but that does not mean that a purchaser of both would think they emanated from the same source. Otherwise, this factor would weigh in opposer’s favor in every Section 2(d) dispute. In sum, the Board found that in view of the “utter lack of any evidence of a relationship between Opposer’s and Applicant’s goods, their channels of trade or the classes of purchasers, these factors weigh heavily against a finding of likely confusion.”

Finally, the Board accepted applicant’s argument that its goods would be purchased with care because they are used to protect people’s lives. This factor slightly favored applicant.

Balancing the relevant du Pont factors, and despite the fame of opposer’s mark, the Board found confusion unlikely.

Nonuse and Abandonment: While the involved applications were pending, applicant filed a motion to delete many of its identified goods, and consented to entry of judgment against it as to those goods. The Board granted the motion. Applicant’s admitted nonuse on some of the goods, the Board observed, was not a ground for deeming the applications void ab initio in their entireties. [citing Grand Canyon Ranch LLC v. Hualapai Tribe, 78 USPQ2d 1696, 1697-98 (TTAB 2006)]. Moreover, prior to its filing date, applicant used its marks for pouches for tactical gear, which are substantively the same as the “bags for tactical gear and tactical equipment” of the application, and for armor bearing vests, which are “protective clothing.”

And so opposer’s nonuse and abandonment claims failed.

Fraud: Applicant admitted that it did not use its marks on some of the identified goods prior to filing its use-based applications. However, that did not establish fraud. There was no evidence, let alone the required clear and convincing evidence, that applicant intended to deceive the USPTO. The fact that applicant should have known that it was not using its marks on some of the goods does not, of course, establish fraud.

The Board rejected Opposer’s claim that applicant’s delay in correcting its applications established its deceptive intent. Applicant admitted its error during discovery and it then made its motions to amend. [N.B.: some seven years after filing the applications - ed.]. That did not constitute evidence of an intent to deceive.

And so the Board dismissed opposer’s fraud claim.

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TTABlog note: This case was argued at the ABA-IPL Conference in Bethesda, Maryland, in March of this year.

Text Copyright John L. Welch 2015.

TTAB Test: Which One of These Four 2(d) Refusals Was Reversed?

Here are four recent appeals from Section 2(d) refusals. Three were affirmed. Which one, your would-be Honor, was reversed? [Answer in first comment].



In re Duncan, Serial No. 85909106 (April 23, 2015) [not precedential]. [Refusal to register Joe Momma's Place for restaurant services, in view of the registered mark JOE MAMMAS for "catering for the provision of food and beverages; catering of food and drinks; contract food services; food preparation; serving food and drinks; serving of food and drink/beverages"].

In re Ecopetrol S.A, Serial No. 85384900 (April 23, 2015) [not precedential]. [Refusal to register the mark shown  below left, for "All purpose lubricants; benzene fuel; hydrocarbon fuels; raw petroleum; refined petroleum; petroleum-derived fuels; oil-based fossil fuels; excluding ethanol fuels, all of the foregoing sold at wholesale; naphtha; paraffin," in view of the registered mark shown below right, for "ethanol fuels"].

In re Nutritional Concepts, Inc., Serial No. 76715478 (April 23, 2015) [not precedential]. [Refusal to register NUTRITIONAL CONCEPTS for "retail and wholesale on-line and store services featuring dietary and nutritional supplements, and for "personalized nutritional counseling services," in view of the registered mark NUTRITION CONCEPTS for "nutrition counseling services"].

In re The Jockey Club LLC , Serial No. 85595169 (April 24, 2015) [not precedential]. [Refusal to register THE JOCKEY CLUB RACING COLORS for “luggage, bags, namely, courier bags, beach bags, tote bags, backpacks, and travel bags; leather goods, namely, wallets, briefcases, attaché cases, handbags, leather covers for diaries, notebook covers, garment bags for travel and saddles, all made of leather," in view of the registered mark JOCKEY for various clothing items, including underwear].

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TTABlog comment: See any WYHA's here?

Text Copyright John L. Welch 2015.

Two Bloggers Offline: Can You Name Them?

Reading Material for Your Trip to INTA San Diego

Here are a few items to keep you occupied on the way to the INTA Annual Meeting in San Diego. If you'd like to get together, meet me in the lobby of the Marriott Marquis on Sunday at noon. I'll be the guy holding an orange stress ball in each hand.

Circuit Judge Kimberley A. Moore, who provided the "additional views" in the CAFC's now-vacated decision in THE SLANTS case, wrote an article 20 years ago on the topic of disparagement and the First Amendment: The Washington Redskins Case and the Doctrine of Disparagement: How Politically Correct Must a Trademark Be?, 22 Pepperdine Law Review 1 (1995).

The latest issue of the Trademark Reporter provides the Annual Review of EU Trademark Law: 2014 in Review, 105 TMR No. 2 (2015).

And last, and probably least, here is yours truly's compilation of the "Decisions of the Trademark Trial and Appeal Board and the Federal Circuit on Registrability Issues: July 2013 to March 2015."

Read comments and post your comment here

TTABlog note: I thank The Trademark Reporter for granting permission to provide a link to the EU Annual Review issue, which is Copyright © 2015 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 105 TMR No. 2.

Text Copyright John L. Welch 2015.

USPTO Seeks Leave to Intervene In FLANAX 4th Circuit Appeal

The USPTO has filed a motion for leave to intervene [here] in the pending 4th Circuit appeal from the E.D. Virginia's recent FLANAX decision.  The district court reversed the TTAB by holding that because Bayer never used the mark FLANAX in the United States, it lacked standing to bring a claim under Section 14(3) of the Lanham Act for cancellation of Belmora's FLANAX registration. [TTABlogged here]. The district court also ruled that Article 6 bis of the Paris Convention is not self-executing, and further that its "well-known" mark provision has not been implemented in this country.

According to the USPTO's motion, "intervention is warranted because the district court’s decision in this trademark case raises questions of institutional importance to the Patent and Trademark Office and because it misunderstands the manner in which the Lanham Act implements provisions regarding well-known marks in the Paris Convention"

The Director seeks to exercise her unconditional statutory right to intervene, 15 U.S.C. §1071(b)(2), to vindicate the Patent and Trademark Office’s interest in ensuring the proper application of the Lanham Act to a claim by the owner of a foreign trademark with goodwill among United States consumers that the owner of a domestic mark has misrepresented the source of its goods and has engaged in false association and false advertising. The district court held that such claims could be asserted only by someone with a protectable interest in a mark that has been used in commerce within the United States. That holding is inconsistent with the Lanham Act and fails to appreciate the manner in which that statute implements Paris Convention provisions regarding well-known marks.

Claiming that the PTO Director has interests adverse to both parties to the litigation, it seeks permission to file a separate brief.

Read comments and post your comment here

TTABlog note: Caveat: Marty Schwimmer and I represent Belmora in this appeal.

Text Copyright John L. Welch 2015.