TTAB Test: Are MAYARI and MAYA Confusable for Wine?

Oakville Hills Cellar opposed registration of the mark MAYARI for wine, alleging a likelihood of confusion with its registered mark MAYA, also for wine. The goods are identical, the channels of trade and classes of consumers are presumed to be the same, and the application and registration encompass inexpensive wines purchased with no more than ordinary care. But are the marks confusingly similar? Oakville Hills Cellar, Inc., dba Dalla Valle Vineyards v. Georgallis Holdings, LLC, Opposition No. 91211612 (July 16, 2015) [not precedential].

Of course, when the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. Opposer Oakville argued that the first part of the opposed mark is more likely to be remembered, but the Board saw no reason to consider the letters MAYA separate from the letters RI.

Oakville contended that, at certain orientations of the wine bottle, the word MAYARI on applicant's label may appear as MAYA, depending on the vagaries of how the wine bottles are placed on a shelf. The Board, noted, however, that although "mistake" is to be considered under Section 2(d), the likelihood of such a mistake was a matter of speculation absent relevant evidence.

As to sound, the Board recognized that MAYARI may be pronounced with emphasis on the second or third syllables. Oakville argued that the likelihood of confusion is increased when the goods are ordered by name "in a bar under noisy, chaotic conditions," where the small difference of the RI may not be perceived.

The parties disagreed vigorously as to the meanings of the marks. The Board found that most consumers would likely perceive MAYA "as a female personal name or the name of the pre-Columbian civilization, while most customers would perceive MAYARI as a coinage without meaning." Consumers "would likely find the term MAYA to be somewhat familiar, while finding MAYARI unfamiliar."

The Board concluded that, overall, the marks at issue create "significantly different commercial impressions." Therefore, the first du Pont factor weighed against a finding of likelihood of confusion.

Opposer Oakville claimed that its mark MAYA is famous, but its evidence was too scant to establish fame. Applicant Georgallis argued that the presence of FDA-required information on wine labels would assist in distinguishing the sources of the involved goods, but the Board pointed out that such information will not reliably serve to distinguish confusingly similar marks. And, of course, the label information is irrelevant when the marks are used in advertising, etc.

Applicant pointed to several third-party MAYA-formative marks registered for beverages, but the Board found that evidence irrelevant absent proof of use of the marks. The lack of any evidence of actual confusion was a neutral factor since there did not appear to be a reasonable opportunity for confusion to occur, given the vast difference in actual price between the parties' goods.

Balancing the relevant du Pont factors, the Board found the marks to be "sufficiently different that, under normal commercial conditions for the sale of wines, confusion is not likely."

Read comments and post your comment here

TTABlog comment: Well, how did you do? I probably would have sided with Opposer.

Text Copyright John L. Welch 2015.

TTAB Affirms Refusal of Deer Logo with "Phantom" Antlers, for Coffee, on Four Grounds

Bar NND Ranches sought registration of the mark shown immediately below, for "coffee; coffee based beverages; roasted coffee beans," but Examining Attorney Justin R. Jackson refused registration on four grounds: applicant sought to register more than one mark; the specimen of use did not show the mark as depicted in the application drawing; and the drawing and description of the mark were unacceptable. The Board affirmed all four refusals. In re Bar NND Ranches, LLC, Serial No. 77928601 (July 28, 2015) [not precedential].

Applicant Bar NND Ranch described the mark as follows: "The mark consists of a two dimensional fanciful deer design; the deer is holding a coffee mug which has the words “UNGULATTE”; the matter shown by the dashed lines in the drawing show placement of the mark; the matter shown by the dashed lines in the drawing is a “non-claimed” feature of the mark and serves to show the position of the mark." Applicant's specimen of use displayed the mark thusly:

Applicant explained that the antlers depicted on the deer are different depending on the strength of the coffee in the container. Antlers having more points or tips indicate stronger coffee. For decaffeinated coffee, applicant applies felt to the antlers.

Phantom element: The examining attorney contended that applicant was seeking to register more than one mark because the antlers, show in broken line on the application drawing, "constitute a changeable, phantom element of the marks." The Board noted that, under the Trademark Act, "a trademark application may only seek to register a single mark." A proposed mark that contains a changeable, or "phantom," element constitutes more than one mark.

Applicant argued that the antlers are not a "claimed element" and are not an "integral" part of the mark, and therefore the use of dashed lined for the antlers is proper and does not comprise a phantom element.

The Board noted that in both the application drawing and the specimen of use, that antlers are attached to the deer. It therefore found that the antlers "are integrated into the image of a deer holding a steaming mug of coffee."

Applicant’s stylized deer, with antlers of either size, constitutes a unitary composite mark conveying a single commercial impression that does not vary with the size of the antlers or the strength of Applicant’s coffee.

Applicant did not indicate that any antler configuration would be limited within a range of size, shape, or number of points. Thus this case is distinguishable from In re Dial-A-Mattress, where the phantom element was an area code, "the possibilities of which are limited by the offerings of the telephone company."

The Board therefore agreed with the examining attorney that the dashed lines in applicant's mark represent a phantom element, and it therefore affirmed the refusal to register on the ground that applicant was seeking to register more than one mark, in violation of Sections 1 and 45 of the Trademark Act.

The Board also found that the specimen of use "does not match and show use of the mark in the drawing, as required by Trademark Act Sections 1 and 45." [In other words, mutilation of the deer - ed.].

Twisting applicant's antlers even further, the Board affirmed two more refusals, finding applicant's drawing unacceptable under Section 1(a) and its description of the mark unacceptable under Trademark Rule 2.37. "These two refusals flow from the substantive issue that Applicant is seeking to register more than one mark in a single application."

Read comments and post your comment here

TTABlog comment: Oh, deer. What if applicant had left the antlers off the drawing altogether? That would get rid of the phantom mark refusal. But the specimen wouldn't match the drawing.

I'm not convinced that applicant was trying to register more than one mark. It did not describe the mark as including antlers of various shapes. It was trying to register the deer without antlers. That, in my book, constitutes one mark.

Text Copyright John L. Welch 2015.

TTAB Test: Which One of These Four Mere Descriptiveness Refusals Was Reversed?

By my estimation, somewhere around 80-85% of all Section 2(e)(1) mere descriptiveness refusals that reach the TTAB are affirmed on appeal.  Well, here are four appeals that were decided this month. One refusal was reversed. Which one, pray tell? [Answer in first comment].



In re Tesher, Serial No. 85405171 (July 10, 2015) [not precedential] [Mere descriptiveness refusal of COLLEGE BIDS for "On-line trading services in which a seller posts items to be sold at a set price; online trading services in which a seller posts items to be sold in an auction-style format where bidding is done electronically; and providing evaluative feedback and ratings of sellers' goods and services, the value and prices of sellers' goods, buyers' and sellers' performance, and delivery and overall trading experience in connection with the foregoing, all for commercial purposes," and a further refusal based on failure to disclaim COLLEGE as to feedback and ratings services.]

In re Masco Corporation of Indiana, Serial No. 86037351 (July 22, 2015) [not precedential]. [Mere descriptiveness refusal of DOWNPOUR for "plumbing products, namely showerheads and handheld showers."]

In re Dipyourcar.com LLC, Serial No. 86165003 (July 23, 2015) [not precedential]. [Mere descriptiveness refusal of DIP PEARLS for "Paint additive made of recycled material to add texture, color, or reflection; Textured additives for paint."]

In re PJCL Hughes Family Trust, LLC, Serial No. 86109353 (July 23, 2015) [not precedential]. [Mere descriptiveness refusal of REVERSE IONIZER for "water treatment equipment, namely, an electromagnetic water activator for influencing the energetic quality of water by amending the information contained in the clusters of water molecules."]

Read comments and post your comment here

TTABlog comment: See any WYHAs here?

Text Copyright John L. Welch 2015.

Precedential No. 23: Abandonment and Opposition Filed on Same Day, TTAB Dismisses Opposition Without Prejudice

On December 31, 2014, Applicant Stacy Lee Huggins filed electronically an abandonment of his application to register the mark COKE HEAD for t-shirts. On that same day, 3PMC filed a notice of opposition via the TTAB's ESTTA system. Two months later, the Board entered judgment against Applicant Huggins under Rule 2.135 based on his abandonment of the application without consent. The Board, however, has granted Huggins's Rule 60(b) motion for relief from judgment, ruling that "a day is an indivisible period of time for purposes of the situation presented here." The Board, assuming that the abandonment and notice of opposition were filed at the same instant, held that Huggins's application was not subject to opposition when it was abandoned. 3PMC, LLC v. Stacy Lee Huggins, 115 USPQ2d 1488 (TTAB 2015) [precedential].

Opposer 3PMC filed its notice of opposition via the TTAB's ESTTA electronic filing system. On that same day, Applicant Huggins filed an abandonment of his application via the USPTO's TEAS electronic filing system.

In his motion for relief from the judgment under FRCP 60(b), Huggins contended that his abandonment had been filed before the opposition was filed, and therefore the opposition proceeding should be dismissed without prejudice.

The Board reaffirmed its holding in In re First Nat’l Bank of Boston, 199 USPQ 296, 301 (TTAB 1978), that it "shall not take cognizance of fractions of a day," and it therefore assumed that the opposition and the express abandonment were filed "at the same instant." "In accordance with our precedent, we conclude that the involved application was not subject to an opposition when it was abandoned, and therefore Trademark Rule 2.135 does not apply."

 The Board noted that the Boston case was decided when all documents were filed on paper and it was not possible to decide which document was filed first. Greater certainty as to timing may be available with electronic filing, but even now computer systems are subject to technological limitations. Moreover, the interaction between TEAS, ESTTA, and TRAM is complicated by the fact that some data is inputted automatically and some by hand.

The Board considered the prejudice that opposer would suffer if the opposition were dismissed without prejudice. Opposer contended that it "may be subject to opposition or cancellation proceedings by Applicant 'down the road' and 'will be forced to monitor the activities of Applicant at the USPTO for an indeterminate amount of time.'" The Board, however, deemed those concerns to be a cost of doing business that did not rise to the level of "manifest injustice" requiring further consideration.

Finally, opposer argued that the Board's ruling here would reduce the period for filing an opposition by one day. The Board pointed out, however, that an applicant may abandon its application at any time during the opposition period, thus completely eliminating the statutory time period for filing an opposition.

The Board therefore granted applicant’s Rule 60(b) motion, vacated its earlier judgment, and dismissed the opposition without prejudice. Opposer's filing fee for the opposition will be refunded.

Read comments and post your comment here

TTABlog comment: Well, at least opposer got its money back. But what about interest?

Text Copyright John L. Welch 2015.

Precedential No. 22: Unreasonable Party Loses Right to Substantive Objections to Document Requests

The Board granted Respondent Meenaxi's motion to compel Petitioner Cadbury to respond to Meenaxi's Rule 34 request for documents, which Cadbury had refused to do based on an "an obvious and inadvertent" typographical error in the request. The Board found that Cadbury's position was "unreasonable" and "resulted in the filing of an unnecessary motion, wasting the time and resources of both parties and the Board." It ordered Cadbury to respond to the requests without substantive objections. Cadbury UK Limited v. Meenaxi Enterprise, Inc., 115 USPQ2d 1404 (TTAB 2015) [precedential].

Respondent Meenaxi simultaneously served interrogatories and document requests on Cadbury. Cadbury objected to the interrogatories but did not respond or object to the document requests. In the preamble to the document requests Meenaxi referred to Petitioner as "Venture Execution Partners, Inc.," instead of "Cadbury UK Limited." Although the document was correctly captioned, and although Cadbury requested and Meenaxi granted four extensions of time to respond to its "discovery," Cadbury contended that the typographical error was a "crucial mistake, the result of which is that the document requests were never directed to Petitioner."

Cadbury agreed that Meenaxi might serve corrected requests, and so the dispute boiled down to whether Cadbury, by its complete failure to respond, had waived its right to object to the requests.

Cadbury feebly contended the extensions of time for its responding to "discovery" did not contemplate document requests. The Board found Cadbury's claim to be "disingenuous at best." There was no doubt that Cadbury knew that the document requests were served in and related to this cancellation proceeding.

The isolated reference to Venture Execution Partners, Inc., was clearly a typographical error; it did not cause a matter of real confusion or misunderstanding. The motion to compel is the result of Petitioner’s attorney apparently concluding, upon the discovery of a typographical error, that he had found an excuse to become pedantic, unreasonable, and uncooperative. The Board expects each party to every case to use common sense and reason when faced with what the circumstances clearly show to be a typographical error.

The Board noted that if Cadbury had any doubt, it should have contacted Meenaxi for clarification rather than refusing to respond. Or Cadbury could have objected based upon the supposed ambiguity. At a minimum, it should have accepted Meenaxi's explanation, during that latter's good faith effort to resolve the issue, that the single reference to a different company was a typographical error.

The Board will not allow a party to avoid its discovery obligations due to an obvious typographical error such as this one. *** Petitioner’s unreasonable position here has resulted in the filing of an unnecessary motion, wasting the time and resources of both parties and the Board. The Board expects that when there is an obvious and inadvertent typographical error in any discovery request or other filing—particularly where, as here, the intended meaning was clear—the parties will not require the Board’s intervention to correct the mistake.

Granting the motion to compel, the Board gave Cadbury thirty days to respond to the document requests and to produce the requested documents, without objection on the merits. See Amazon, Inc. v. Wax, 93 USPQ2d 1702, 1706 n.5 (TTAB 2009) ("Objections going to the merits of a discovery request include those which challenge the request as overly broad, unduly vague and ambiguous, burdensome and oppressive, as seeking non-discoverable information on expert witnesses, or as not calculated to lead to the discovery of admissible evidence. In contrast, claims that information sought by a discovery request is trade secret, business-sensitive or otherwise confidential, is subject to attorney-client or a like privilege, or comprises attorney work product, goes not to the merits of the request but to a characteristic or attribute of the responsive information."). Cadbury was also ordered to provide a privilege log within thirty days.

It also must be stressed that Petitioner’s conduct has not demonstrated the good faith and cooperation that is expected of litigants during discovery. Such conduct has delayed this proceeding, unnecessarily increased the litigation costs of the parties, wasted valuable Board resources, and interfered with Respondent’s ability and, indeed, its right, to take discovery.

Read comments and post your comment here

TTABlog comment: Wow! The TTABlogger's cardinal rule of practice is to at least try to look reasonable before the Board.

Text Copyright John L. Welch 2015.

Forget Parody: GOTHAM BATMEN Confusable with Famous BATMAN, Says Split TTAB Panel

A divided Board panel sustained this opposition to registration of the mark GOTHAM BATMEN, in standard and design form (shown below), for "general business networking referral services, namely, promoting the goods and services of others by passing business leads and referrals among group members" and for "entertainment in the nature of amateur softball games." The panel majority found the marks confusingly similar to the registered mark BATMAN, deemed famous for comic books and movies. Applicant's parody claim went, as usual, nowhere before the Board. DC Comics v. Gotham City Networking, Inc., Opposition No. 91194716 (July 17, 2015) [not precedential].

This post shall not recapitulate the evidence of fame. The panel majority found that the fame of the BATMAN mark "is transferred to a vast array of collateral or merchandising products that are purchased because they bear the BATMAN trademark." In other words, "consumers have come to associate the fame of BATMAN with the products bearing that mark." [Huh? So BATMAN is famous for every product that bears the mark? - ed.]. Once the BATMAN mark was accorded that scope and strength, it was three strikes and out for applicant.

Because Opposer’s BATMAN mark is famous and it has been licensed for use on a myriad of products, countless individuals have been exposed to Opposer’s BATMAN mark and to its use on or in connection with collateral products, including t-shirts and baseball balls and bats. Under these circumstances, individuals familiar with Opposer’s BATMAN marks and their associated goods and services, when confronted with Applicant’s mark in connection with softball games and networking services, will consider such activities to be sponsored by or affiliated with Opposer.

With little or no discussion, the majority also deemed Opposer's "batwing" logo to be famous. The addition of GOTHAM to BATMEN does not distinguish the marks, said the panel majority, since it is "undisputable" that the superhero is known to hang out in a place called Gotham. Furthermore, any aural dissimilarity would be outweighed by "the recognition of that fact by those familiar with opposer's marks."

Parody? Fuggeddaboutit. "The right of the public to use words in the English language in a humorous and parodic manner does not extend to such words as trademark if such use is likely to cause confusion." [Kind of begs the question, doesn't it? - ed.]. Moreover, it is not Opposer's BATMAN marks that are the target of the parody but Applicant's own members (i.e., the superiority of their softball and networking prowess). The parody is an inside Joker. [But applicant wasn't laughing - ed.].

And so the Board sustained the opposition under Section 2(d).

Dissent: Judge Taylor dissented, contending that Opposer had not met its burden to prove fame. She would find that the BATMAN marks are not famous and, because the gods and services of the parties are so different, that confusion is not likely, or at least that Opposer did not prove that confusion is likely.

Read comments and post your comment here

TTABlog comment: I subscribe to the theory that some marks are so famous that the likelihood of confusion is diminished, the public not being completely gullible, but able to recognize an obvious parody.

Text Copyright John L. Welch 2015.

CAFC Reverses and Remands TTAB 2(d) Decision Due to Inadequate Appreciation of PEACE & LOVE

In a precedential decision, the U.S. Court of Appeals for the Federal Circuit vacated and remanded  the TTAB's decision in GS Enterprises LLC v. Juice Generation, Inc.., Opposition No. 91206450 (June 18, 2014). The Board had found the mark PEACE LOVE JUICE & Design, shown immediately below, for "juice bar services" [JUICE disclaimed] likely to cause confusion with the registered mark PEACE & LOVE for "restaurant services." The CAFC ruled that the Board "did not adequately assess the weakness of GS's mark and did not properly consider the the three-word combination of Juice Generation's mark as a whole." Juice Generation, Inc. v. GS Enterprises LLC, 115 USPQ2d 1671 (Fed. Cir. 2015) [precedential].

In comparing the marks, the Board deemed "PEACE LOVE" to be the dominant part of applicant's mark, and it found that the additional word "JUICE" and the non-distinctive design features did not serve to sufficiently distinguish the marks at issue. The Board observed that GS's mark PEACE & LOVE was registered in standard character form and thus was not limited to any particular display, but, the CAFC noted, it "did not elaborate on its consideration of the three-word combination 'PEACE LOVE & JUICE' in its entirety."

The Board also considered the testimony of applicant's founder regarding third party uses of similar marks - "Peace Love and Pizza," "Peace Love and Popcorn," and others - but this evidence did not enable the Board to find that "customers have become conditioned to recognize that other entities use PEACE AND LOVE marks for similar services."

Finally, the Board gave little weight to statements made by GS, during the prosecution of its own marks, that the words "peace" and "love" lack distinctiveness.

The CAFC concluded that the Board's treatment of the evidence of use of third-party marks did not sufficiently appreciate the force of that evidence. Even though specific evidence as to extent and impact of use was not submitted, the evidence was "nonetheless powerful on its face." The uncontradicted testimony showed that a considerable number of third parties use similar marks. Third party registrations, the court observed, are relevant to show that some segment of a mark has a "normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that the segment is relatively weak."  Of course, weak marks merit less protection on the Section 2(d) battlefield.

The Board, however, never inquired as to whether PEACE & LOVE has a suggestive or descriptive connotation. See, e.g., Anthony's Pizza & Pasta Int'l, Inc., 95 USPQ2d 1271 (TTAB 2009) (Evidence of third-party use of "Anthony's" in connection with restaurants indicated that the word suggests an Italian restaurant, or even a New York style Italian restaurant).

This third-party evidence was "particularly important" here in view of the statements made by GS in prosecuting its own applications, when distinguishing its marks from "PEECE LUV CHICKEN" by suggesting that its mark creates "the impression of a restaurant that has a theme and atmosphere of the countercultures prevalent in the 1960's and 1970's." Comments made during prosecution, the CAFC has ruled, are "illuminative of shade and tone in the total picture confronting the decision maker."

The CAFC concluded that the Board gave inadequate consideration to the strength or weakness of the cited mark, and it instructed the Board to undertake that inquiry upon remand.

The court also concluded that the Board had not paid sufficient heed to the commercial impression of applicant's mark as a whole. The Board did not consider "how the three-word phrase in Juice Generation's mark may convey a distinct meaning - including by having different connotations in consumers' minds - from the two-word phrase used by GS." Although the Board may properly assign more or less weight to a given component of a mark, it still must consider the mark as a whole.

The Board did not err in giving less emphasis to the word JUICE when it noted that the term is generic. *** But the Board did not set forth an analysis showing that it avoided the error of giving no significance to the term, which is impermissible notwithstanding that the term is generic and disclaimed.

The court therefore vacated the decision and remanded the case to the Board. On remand, the Board must undertake a consideration of the applied-for mark as a whole.

Read comments and post your comment here

TTABlog comment: What is descriptive or suggestive about the phrase PEACE & LOVE in the restaurant/juice bar context? Hippie food?

Text Copyright John L. Welch 2015.

Recommended Reading: Peter Karol, "The Constitutional Limitation on Trademark Propertization"

Associate Professor Peter J. Karol of New England Law School argues that the Constitution places critical limits on the power of Congress to regulate trademark signifiers that are unattached to goods or services. Karol, The Constitutional Limitation on Trademark Propertization, 17 Penn. Journal of Constitutional Law 1065 (2015). "Trademark propertization ... requires a separate and distinct Commerce Clause analysis from that used to justify regulation of trademarks affixed to
goods and services." Although this constitutional limitation on propertization is "distant and unreachable in most cases," it nonetheless serves as a brake on such controversial trademark doctrines as dilution and the rule against assignments in gross, and it prevents Congress from ever granting trademark rights upon the mere creation of a new trademark.

The following article seeks to apply the retrenchment in constitutional Commerce Clause jurisprudence of the last few decades to the phenomenon of trademark propertization, the expansive and largely federal movement towards protecting trademarks as assets apart from any connection to referent goods and services. Trademark scholars have filled the trademarks literature with critiques of propertization that generally object, on policy and historical grounds, to the trend and offer constructions of the Lanham Act designed to check its progress. With the notable exception of an article published in 2000 by Professor Kenneth Port, however, the literature has largely avoided addressing the question of whether the United States Congress possesses the authority to push trademark law so far in that direction.

Building off of Barton Beebe’s semiotic account of trademark law, the article observes that much of the Commerce Clause case law in the trademark space is muddied by the failure to draw an analytic distinction between the trademark as such (i.e., the trademark’s signifier) and the goods and services with which it is used. Moreover, many of the seminal cases in the area predate such important new contributions to Commerce Clause juris prudence as United States v. Lopez, Gonzalez v. Raich, and National Federation of Independent Business v. Sibelius.

Upon close review of these and other recent precedents, and a thorough application of contemporary, three-category Commerce Clause analysis to trademark propertization, the article concludes that there is a firm constitutional limit to Congresses’ ability to regulate trademark signifiers detached from goods and services. Namely, Congress may not recognize or protect a property interest in trademarks as such except as a rational means of furthering the regulation of referent goods or services. Although distant and unreachable in most cases, this constitutional ceiling serves as a critical constructional limit on certain controversial trademark doctrines like dilution and the rule against assignments in gross, and prevents the U.S. Congress from ever recognizing pure trademarks in the abstract as property upon creation. Although a complete defense of trademark “localism” is outside of the article’s scope, it ends by offering some basic policy and structural justifications for accepting this limit on federal authority in the trademark sphere.

Read comments and post your comment here

Text Copyright John L. Welch 2015.

Precedential No. 21: TTAB Sides With Band in "WONDERBREAD 5" Ownership Dispute

The Board granted a petition for cancellation of a registration for the mark WONDERBREAD 5 for "entertainment services in the nature of live musical performances," ruling that the underlying application was void ab initio because Respondent and ex-band member Patrick Gilles was not the owner of the mark at the time of his filing the underlying application. Wonderbread 5 v. Patrick Gilles a/k/a Wonderbread 5 and/or Wonderbread Five, 115 USPQ2d 1296 (TTAB 2015) [precedential].

Evidentiary Issues: Respondent Gilles timely mailed his pre-trial disclosures, but to the wrong address for Petitioner's counsel. The disclosures were eventually received by Petitioner's successor counsel. Since it was highly unlikely that Petitioner was surprised that Gilles intended to testify, the Board declined to strike his testimony.

Gilles, however, failed to provide "a general summary or list of the types of documents and things which may be introduced as exhibits during [his] testimony" Rule 2.121(e). The disclosures merely stated that "Registrant may introduce exhibits to be identified in a Notice of Reliance." The disclosures were therefore inadequate and defective. The Board therefore struck all of Respondent's trial exhibits and all testimony referring thereto.

Petitioner had its own evidentiary problems. Under notice of reliance, it submitted an affidavit that Respondent Gilles had submitted in connection with a summary judgment motion. The Board declined to consider it. An affidavit or declaration is inadmissible as trial testimony absent a stipulation from the other party. See Rule 2.123(b). Petitioner also submitted Respondent's answer to its admission requests, including admissions and denials. The admissions were deemed properly of record, but denials are not admissible. See Rule 2.120(3))(i).

Ownership: The petition for cancellation asserted claims of likelihood of confusion and fraud, and included allegations that Gilles did not own the mark at the time of filing his application to register. Ownership of a mark is an element of every Section 2(d) claim. [W]hen both parties are relying upon activities the two conducted in concert with one another, each in an attempt to establish prior rights in a mark over the other, the dispute centers on ownership of the mark."

Despite the absence of any agreement, Petitioner claimed to own the WONDERBREAD 5 mark as a partnership under California law. It alleged that two days after Gilles was terminated as a partner, he filed the underlying application without the Petitioner's knowledge or consent. He concealed the existence of the application in subsequent state court litigation with Petitioner, which culminated in a buy-out and release of all of Respondent's claims.

Gilles claimed the he was one of two founding members of the band and therefore he owned a 50% interest in the partnership. The lawsuit, he contended, dealt only with monetary relief, not trademark rights.

The Board found, based on the totality of the evidence, that Gilles was not individually the owner of the mark at the time he filed his application to register. His actions with regard to the state court lawsuit confirmed that he understood that the band was a partnership of which he was no longer a member.

The Board also considered the "legal framework courts and commentators have developed to deal with" disputes regarding musical band names when there is no written agreement or other legal formalities that clearly delineate ownership rights. The Board observed that Professor McCarthy's test has been adopted by several courts and is a "useful adjunct" to the Board's findings here. Professor McCarthy frames the question as "Does Mark Identify the Group Regardless of its Members?"

In these performing group cases, it must first be determined whether the group name is personal to the individual members or not. If not, a second question then must be determined: for what quality or characteristic is the group known and who controls that quality? The answer should identify the person or entity that owns the group name as a mark

Temporal continuity of identification is an important factor, according to the Professor. The issue is "whether the mark signifies personalities, or style and quality regardless of personalities."

The Board concluded that the WONDERBREAD 5 mark was not "personal" to Respondent Gilles or any other of the band members. The mark signified the "style and quality" of the group: a Jackson 5 tribute band, not a "particular performer combination." As one band member testified, the band was "a bunch of Caucasian boys playing Jackson 5 songs."

The bands discontent with Respondent Gilles began with his refusal to wear the "over the top" costumes that the band's public persona required. Thus the band monitored and controlled the "style" of its musical services, not Gilles. The band's use of prerecorded music and substitute musicians further supported the conclusion that the music performed by the band was not personalized by the performers.

The Board concluded that at the time Gilles filed his application to register, "the consuming public did not associate the mark WONDERBREAD 5 with [him], but rather with the style of a Jackson 5 tribute band costumed in exaggerated 1970s regalia. It was the group/partnership consisting of WONDERBREAD 5 that controlled this quality or characteristic of the band."

The Board sustained the petition for cancellation, ruling that Respondent Gilles was not the owner of the mark at the time of filing his application, and therefore that the application was void ab initio.

Read comments and post your comment here

TTABlog comment: Easy as ABC. Is "WONDERBREAD 5" dilutive of the bread? [No, not the band, BREAD, the bread bread]. One Oneders.

Text Copyright John L. Welch 2015.

Applying Claim Preclusion, TTAB Affirms 2(e)(1) Refusal of Re-filed RESTORE LIFT Application

In July 2013, the Board affirmed (here) a Section 2(e)(1) refusal to register the mark RESTORE LIFT, finding the mark merely descriptive of "cosmetic and plastic surgery, namely, a minimally invasive face/neck lift done under local anesthesia." In February 2014, the same applicant (through the same attorney) filed a new application to register the same mark for the same services. When that application was refused under Section 2(e)(1) and on the ground of claim preclusion, Applicant Southeastern Dermatology, S.A. appealed. In re Southeastern Dermatology, PA, Serial No. 86187997 (July 15, 2015) [not precedential].

The Board found this appeal to be barred by claim preclusion, sometimes referred to by people of a certain age as res judicata. Under that doctrine, "a judgment on the merits in a prior suit bars a second suit involving the same parties or their privies based on the same cause of action."

The Board noted that claim preclusion must be applied with caution. However, prior Board decisions have applyed the doctrine when an applicant "had already been refused registration for the same mark and goods in a prior ex parte proceeding and the applicant did not demonstrate a change of circumstances so as to justify not applying preclusion based on the prior judgment."

Here Applicant made no contention that circumstances had changed. In fact, applicant submitted the identical arguments and evidence as in its prior failed application. Its appeal briefs in the two cases were substantially identical.

The Board concluded that the requirements for claim preclusion were met and it affirmed the refusal on that ground.

Read comments and post your comment here

TTABlog comment: Geez, Louise! What's there to say?

Text Copyright John L. Welch 2015.

TTAB Deflates Feeble Attacks on SWISSBIKE Application and SWISS MILITARY Registration for Bicycles

The Board issued a single opinion in these two proceedings, which were consolidated solely for purposes of submitting a single trial brief for both matters. It dismissed the cancellation proceeding directed at Montague Corp.'s registration of the mark SWISSBIKE for "bicycles" because Petitioner Montres Charmex S.A. failed to establish its standing. The opposition to registration of the mark SWISS MILITARY, also for "bicycles" (under Section 2(f)), was dismissed because Montres Charmex "failed to meet its initial burden of demonstrating that Defendant had failed to meet its ultimate burden of acquired distinctiveness." Montres Charmex S.A. v. Montague Corp., Opposition No. 91191784 and Cancellation No. 92052183 (July 6, 2016) [not precedential].

Standing: Montres Charmex did not submit any admissible and/or probative evidence regarding the nature of its activities or its interest in registrant's SWISSBIKE trademark. A National Arbitration Forum decision regarding the domain name "swissmilitary.com" was irrelevant because the term "swissmilitary" is distinct from SWISSBIKE, and in any case an arbitration decision does not prove commercial use.

Entries for "Switzerland" in a dictionary and a business directory did not reference Montres Charmex and in any case would have been considered inadmissible hearsay with regard to any statements regarding its business. An excerpt from the Guinness Book of World Records referring to a Swiss Military Watch made by Montres Charmex, while admissible as a printed publication, could not be relied upon to prove the truth of the matters stated therein (i.e., hearsay). Montres Charmex did not submit any testimony regarding its activities.

The Board concluded that Montres Charmex failed to show that it had a "real interest" in the proceeding and a "reasonable belief in damage," and so the Board dismissed the cancellation on the ground of standing.

Acquired Distinctiveness In the opposition proceeding, Applicant Montague admitted in its answer that Montres Charmex owns the domain name "swissmilitary.com" and that it uses that domain in its business. That was sufficient to establish standing.

The only claim pursued by Montres Charmex was contention that the mark SWISS MILITARY had not acquired distinctiveness under Section 2(f). The examining attorney had deemed the mark merely descriptive because, as Montague acknowledged, the goods are made for the Swiss Military to its design specifications.

Montres Charmex contended that the Section 2(f) declaration submitted by Montague was void because Mr. Montague signed the declaration as "President," when in fact he was "Clerk" and "Treasurer." This, argued Montres Charmex, amounted to "intentional misrepresentation" and "perjury."

The Board observed that in an opposition proceeding, the opposer has the initial burden of showing that an applicant's mark has not acquired distinctiveness. When the opposer meets that initial burden challenging the sufficiency of applicant's evidence of acquired distinctiveness, then applicant may submit additional evidence to rebut opposer's prima facie case. The ultimate burden of persuasion is ultimately on the applicant.

The USPTO had found acquired distinctiveness based only on Montague's Section 2(f) declaration of five years of "substantially exclusive and continuous use." Montres Charmex did not contend that the SWISS MILITARY mark was so "highly descriptive" as to require a heightened showing under Section 2(f). Instead, its attack was based solely on the "purported technical deficiencies in the execution of the declaration."

Montres Charmex submitted documents from Massachusetts state records to show that Mr. Montague was not President of Montague Corp. However, those record established that he was an officer of the company during the relevant time period. He therefore had the requisite legal authority to bind the corporation, and thus to sign the declaration, pursuant to Trademark Rule 2.193(e)(1). The declaration was not invalid just because the title of the signatory was misstated.

The Board concluded that Montres Charmex had failed to meet its initial burden regarding the acquired distinctiveness issue, and so it dismissed the opposition.

Read comments and post your comment here

TTABlog comment: These proceedings dragged on for six years! The equivalent of a slow-motion train wreck.

Text Copyright John L. Welch 2015.

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

Okay, readers. You didn't do so well on the last TTAB test, but that doesn't mean I'm going to make it any easier for you. When the going gets tough, etc., etc. Here are four Section 2(d) refusals for your perusal. At least one was reversed, but not all. Let's see if you have what it takes to be a TTAB Judge. [Answer(s) will be found in first comment].

In re Big John Products, Inc., Serial No. 86118253 (July 8, 2015) [not precedential]. [Refusal to register Big John Toilet Seat for "toilet seats" [TOILET SEAT disclaimed], in view of the registered mark BIG JON for "toilet brushes."]

In re ReSashay Square Dance, Inc., Serial No. 86041312 (July 8, 2015) [not precedential] [Refusal to register ReSashay for "On-line retail consignment stores featuring women's, men's and children's square dancing apparel and accessories, namely, children's square dancing petticoats; On-line retail store services featuring women's, men's and children's square dancing apparel and accessories," in view of the registered mark MYSASHAY for "Ballet shoes; Ballet slippers; Footwear for women; Insoles for footwear."]

In re Appgraft LLC, Serial No. 85843178 (July 9, 2015) [not precedential] [Refusal to register OBSERVANT OWL for "computer software for digital video monitoring and recording for use with video surveillance systems," in view of the registered mark OBSERVANT for, inter alia, computer software, namely, fully downloadable software for wireless sensing, remote sensing, monitoring, measuring, recording, reporting, data processing, data transmission, management and control."]

In re Pizza Pro, Inc., Serial No. 86320662 (July 9, 2015) [not precedential] [Refusal to register BYO PIZZA BUILD YOUR OWN PIZZA & Design, shown below, for "fresh pizza; pizza; pizza dough; pizza sauce" [PIZZA BUILD YOUR OWN PIZZA disclaimed], in view of the registered mark BYOPizza for "restaurant services, including sit-down service of food and take-out restaurant services."]

Read comments and post your comment here

TTABlog comment: It's not easy, is it?

Text Copyright John L. Welch 2015.

Precedential No. 20: 13th du Pont Factor Yields TTAB 2(d) Reversal

The Board reversed a Section 2(d) refusal to register the mark ALLEGIANCE STAFFING for "temporary employment agency services provided to others, not including hospitals and healthcare providers" [STAFFING disclaimed]. The USPTO had deemed the mark confusingly similar to eight registered marks consisting of or including the term ALLEGIS, for personnel recruitment and placement services for temporary and permanent positions. The catch-all 13th du Pont factor made a rare and critical appearance in Applicant's favor: the USPTO had permitted the eight cited registrations to issue over Applicant's now extinct registration for the identical mark and services at issue here. In re Allegiance Staffing, 115 USPQ2d 1319 (TTAB 2015) [precedential].

The applicant got off on the wrong foot, irritating the Board by filing duplicate copies of its response to the first PTO office action, and compounding the crime by attaching to its appeal brief the same exhibits that it attached to its response.

Nonetheless, the Board reversed the refusal in view of the differences in meaning and commercial impression between the marks, the degree of customer care, and the 13th du Pont factor.

This is one of the rare cases in which the thirteenth du Pont factor, “any other established fact probative of the effect of use,” plays a role. du Pont, 177 USPQ at 567. This factor "accommodates the need for flexibility in assessing each unique set of facts." In re Strategic Partners Inc., 102 USPQ2d 1397, 1399 (TTAB 2012).

The facts in this case were unusual. Applicant owned a registration for the same mark ALLEGIANCE STAFFING for the same services covered by the subject application. That registration issued in 2001 and expired in 2012 when Applicant inadvertently failed to renew it. Applicant applied for a new registration within two weeks of the expiration of that registration.

During the life of the prior registration, six of the here-cited registrations issued and two underlying applications were approved for publication. Over that period, five different examining attorneys considered the marks in the eight cited registrations and (presumably) determined that those marks were not likely to cause confusion vis-a-vis Applicant's then-registered mark.

The Board agreed with the Examining Attorney's assertion that prior decisions by Examining Attorneys in other cases are not binding on the USPTO or the Board. Nonetheless, the Board took these facts into consideration in its du Pont analysis.

[W]e conclude that under the particular circumstances here, where: (i) the same Applicant owned a prior registration for the identical mark covering the same services; (ii) none of the five different examining attorneys who examined the cited registrations refused registration based on a likelihood of confusion with the same mark for which registration is sought in the current application; and (iii) Applicant inadvertently allowed the prior registration to lapse, and attempted to correct that lapse by filing its new application within two weeks of its prior registration expiring, we give the fact that no likelihood of confusion was found in eight separate situations due weight in our analysis.

Turning to the other du Pont factors, the Board found that the involved services overlap. It then focused on the cited registration for the mark ALLEGIS in standard character form, observing that if confusion is not likely as to that mark, then there would be no likelihood of confusion with the remaining seven ALLEGIS-containing marks.

The Board noted that there are similarities between ALLEGIANCE, the dominant portion of Applicant's mark, and ALLEGIS. However the differences in the endings are "likely to be noticed because Applicant's mark results in a recognizable word." Any similarity in pronunciation is not so significant here because of the nature of the services: employment agency services are purchased by businesses, not general consumers.

The differences in meaning are even more significant. ALLEGIANCE has a clear meaning, whereas ALLEGIS is a coined term. As the CAFC has observed, "the familiar is readily distinguishable from the unfamiliar." Accordingly, the Board found that the differences in meaning between the involved marks outweighed any similarities in appearance and pronunciation.

In addition, the Board found that the conditions of purchase (du Pont factor No. 4) were significant, "since the care exercised by customers would result in their noting the differences in the marks at issue." The involved services "do not fall into the category of impulse purchasing." Businesses seeking temporary help or permanent employees will exercise a heightened level of care in their purchasing decisions, and will therefore perceive the differences between ALLEGIANCE STAFFING (composed of recognizable words) and the coined term ALLEGIS, which  "does not have any recognizable derivation."

Applicant pointed to the 15-year period of contemporaneous use of the involved marks without the occurrence of actual confusion, but the Board pointed out that there has been no meaningful opportunity for confusion to occur, since the parties provide their services in different geographical areas.

The Board therefore concluded that confusion is not likely between the involved marks, and it reversed the refusal to register.

Read comments and post your comment here:

TTABlog comment: How much leeway does an Examining Attorney have in invoking the 13th du Pont factor? Is it merely an equitable escape hatch that the TTAB can open when it feels that an Applicant got the short end of the lick log?

I've been working on a new ditty for the TTABlog songbook, entitled "13th du Pont Factor," sung to the tune of the Rolling Stones' "19th Nervous Breakdown," but it hasn't quite Come Together. [Sorry - had to give the Beatles equal time].

Text Copyright John L. Welch 2015.

Recommended Reading: William McGeveran, "The Imaginary Trademark Parody Crisis (And The Real One)"

Professor William McGeveren of the University of Minnesota School of Law, in an enjoyable and informative article, discusses the current state of trademark parody law in "The Imaginary Trademark Parody Crisis (And The Real One)," 90 Wash. Law. Rev. 713 (2015). [Follow him on Twitter: @BillMcGev.]

Abstract: In the two decades since the Supreme Court protected a crude rap spoof from copyright liability in Campbell v. Acuff-Rose Music, Inc., courts have grown to understand the great value of parodic expression in trademark cases as well. Today, plausible claims of parody almost always prevail over trademark rights in judicial rulings. This Article demonstrates that it is simply wrong to suggest, as commentators often do, that we face a crisis in the results of trademark parody cases. That distortion is harmful because it distracts reform efforts and it lends credence to overbroad assertions of trademarks against parody and other speech. Demand letters and other pre-litigation maneuvering by markholders exemplify the real crisis in the law of trademark parody. Reform should concentrate on making excessive threats against speech less effective. I argue that fast-lane defensive doctrines that reduce the burden of litigating parody cases, such as safe harbors and a broad artistic relevance test, are more important than perfecting substantive parody doctrine. Meanwhile,we should shout the truth from the rooftops: Markholders who sue legitimate parodies lose.Their threats are empty.

Read comments and post your comment here

TTABlog comment: Parody does not fare well at the TTAB. Witness the SEX ROD, THE HOUSE THAT JUICE BUILT, JUST JESU IT, and a string of other decisions. In fact, as I sit here at my kitchen table (watchful of possible falling ice blocks), I can't think of a TTAB case upholding a parody claim.

Text Copyright John L. Welch 2015.

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

With the recent flash flood of precedential decisions from the TTAB, we haven't had a TTAB Test in a while. Well, here are four recent appeals from Section 2(d) refusals. Three were affirmed. Which one was reversed? And why? [Answer in first comment].



In re IBrand Accessories LLC, Serial No. 86185362 (June 29, 2015) [not precedential] [Refusal to register BULLETPROOF SCREEN PROTECTOR for "display screen protectors for providing shade and privacy specially adapted to electronic devices, namely, laptops, cell phones, and personal digital assistants" [SCREEN PROTECTOR disclaimed], in view of the registered mark BULLET-PROOF SHIELDS for "protective sheet for covering laptop computers, MP3 players, ipods, personal digital assistance [sic], mobile phones and other electronics"].

In re Leon Hughes, Sr., Serial No. 86079547 (July 6, 2015) [not precedential]. [Refusal of the mark LEON HUGHES’ COASTERS for "Live performances by a musical group," in view of the registered mark THE COASTERS for "entertainment services in the nature of a musical group"].

In re Korn Ferry Leadership Consulting Corporation, Serial No. 85932617 (July 6, 2015) [not precedential]. [Refusal to register the mark CHOICES for "Providing temporary use of on-line non-downloadable software in the field of human resources that enables users to conduct online evaluation of leadership and managerial aptitudes, competencies, job performance and job development, learning agility, and skills for the purpose of implementing leadership development for individuals and organizations," in view of the identical mark CHOICES registered for "computer programs recorded on magnetic media and instruction manuals sold therewith"].

In re K & N Distributors, Serial No. 86150955 (July 7, 2015) [not precedential]. [Refusal of DERMOPLUS GEL for cosmetics [GEL disclaimed], in view of the registered mark DERMA PLUS for "skin care products, namely, medicated skin care lotions sold in aerosol container" [DERMA disclaimed].

Read comments and post your comment here

TTABlog comment: See any WYHAs here?

Text Copyright John L. Welch 2015.

E.D. Va. Affirms TTAB: REDSKINS Marks Found Disparaging of Native Americans

The United States District Court for the Eastern District of Virginia, in a Section 21 civil action for review, affirmed the decision of the Trademark Trial and Appeal Board (114 USPQ2d 1080 (TTAB 2014)) [TTABlogged here], ordering cancellation of the federal registrations for six marks - five consisting of or comprising the word REDSKINS, and the sixth the mark REDSKINETTES - for football entertainment services, on the ground of Section 2(a) disparagement. Pro-Football, Inc. v. Amanda Blackhorse et al., 115 USPQ2d 1524 (E.D. Va. 2015).

On cross-motions for summary judgment, the court ruled that the disparagement provision of Section 2(a) does not violate the First Amendment because Section 2(a) "does not implicate the First Amendment" and because "the federal trademark registration program is government speech and is therefore exempt from First Amendment scrutiny." The court held that Section 2(a) does not violate the Fifth Amendment because it is not "void for vagueness," and it does not violate the Takings Clause or the Due Process Clause because "a trademark registration is not considered property under the Fifth Amendment."

As to the substantive issue, the court ruled that the challenged marks violate Section 2(a) because, at the time of their registration, they "may disparage" a substantial composite of Native Americans. Thc court founded this conclusion on dictionary evidence; literary, scholarly, and media references; and statements of individuals and groups in the referenced group. The court denied PFI's laches claims both because the cancellation petitioners did not unreasonably delay in bringing their Section 2(a) claim, and because laches does not apply in light of the public interest at stake.

Section 2(a) does not implicate the First Amendment because cancellation of a registration does not burden, restrict, or prohibit PFI's ability to use its marks. Furthermore, the federal trademark registration program is government speech, and therefore exempt from First Amendment scrutiny, under three pertinent precedents. Looking to the very recent Supreme Court decision in Walker v. Texas (license plates), the court found that the federal trademark registration scheme conveys the message that the Government has approved the mark, the public associates registration with Government approval of the mark, and the Government exercises editorial control over the scheme. The court also found the registration system passed the Fourth Circuit test in SCV v. Virginia and comported with the Supreme Court's decision in Rust v. Sullivan.

The court ruled that Section 2(a) is not void for vagueness because PFI could not show that it is unconstitutional in all possible applications. Nor does the Section authorize or encourage "arbitrary and discriminatory enforcement." Section 2(a) is not vague as specifically applied to PFI because PFI was on notice that its mark contained verbiage that "may disparage."

Judge Lee''s 70-page opinion includes a thorough review of the evidence submitted by the parties. The court repeatedly pointed out that even if a majority of Native Americans found the term REDSKINS to be acceptable, the term may still run afoul of Section 2(a) because that Section requires only that a substantial composite of the referenced group consider the term disparaging. Here there was significant evidence to satisfy that standard.


Amanda Blackhorse
Read comments and post your comment here

TTABlog comment: An impressive opinion by Judge Lee. Now let's see what the en banc Federal Circuit does in the SLANTS case.

Text Copyright John L. Welch 2015.

Precedential No. 19: PTO "Clear Error" Determination Not Reviewable by Petition or Appeal

After receiving a notice of allowance, the applicant filed its statement of use for the mark DOTBLOG for “providing specific information as requested by customers via the Internet.” The examining attorney determined that the applied-for mark was merely descriptive of the services, and that it was “clear error” under Section 1109.08 of the Trademark Manual of Examining Procedure (TMEP) to have failed to refuse registration, during initial examination, on the ground of mere descriptiveness. He therefore entered refusals to register the mark under Sections 1, 2, 3 and Section 2(e)(1) of the Lanham Act. The applicant argued that the refusal was improper because it was not a “clear error,” but the Board ruled that an applicant may not separately challenge that determination of “clear error,” either by petition to the Director or on appeal to the Board. Applicant’s only recourse is to appeal the substantive refusal. In re Driven Innovations, Inc., 115 USPQ2d 1261 (TTAB 2015) [precedential].

Clear Error: Section 1109.08 of the TMEP provides that, in examining a Statement of Use, an Examining Attorney "should not make a requirement or refusal concerning matters that could or should have been raised during initial examination, unless the failure to do so in initial examination constitutes a clear error, i.e., would result in issuance of a registration in violation of the Act or applicable rules." Although here the Examining Attorney did not use the term "clear error" in connection with issuance of the belated refusal, the Board observed that it was not necessary that he do so. Given the posture of the case, the refusal was obviously made under the "clear error" standard.

The Board took the opportunity to clarify the Applicant's position under the "clear error" scenario:"

We hold that an applicant may not directly challenge the Office’s determination under the clear error standard and that the only way an applicant may challenge a refusal that was issued during examination of the statement of use under the clear error standard is by appealing the merits of that final refusal to the Board.

Although the USPTO does have a policy that all possible refusals and requirements should be included in the first Office Action, that is not a requirement of the statute or any rule. "The Office has the inherent discretion to issue a requirement or refusal that it finds is correct at any stage in the prosecution of an application."

Mere Descriptiveness: The Board affirmed the refusal of DOTBLOG on the ground of mere descriptiveness. Although applicant does not operate a blog, it provides information that "may be derived from blogs or [may] be for blogs." Its specimens of use display the tag line, "Need to know what the buzz is within the blogosphere?" The word BLOG thus immediately describes Applicant's information services.

The term DOT represents the standard pronunciation of the period that separates address levels in an Internet address. As used in Applicant's mark, DOT indicates that the services may be requested and provided via the Internet.

When the composite DOTBLOG is considered as a whole, the meaning is still merely descriptive.

Alternatively, in view of ICANN's potential activation of the ".blog" TLD, consumers are likely to perceive Applicant's mark as related to information gleaned from ".blog" domains.

[W]hen considered as the coupling of a term ("DOT") that indicates Applicant provides an Internet-based service with a term ("BLOG") that describes places on the Internet, regardless of the domain in which those webpages reside, DOTBLOG is merely descriptive of Applicant’s services of "providing specific information as requested by customers via the Internet."

Read comments and post your comment here

TTABlog comment: I thought an examining attorney could always issue a mere descriptiveness refusal once he or she saw the specimen of use after notice of allowance. Didn't think there had to be "clear error."

Text Copyright John L. Welch 2015.

Precedential No. 18: U.S. Seller, Not Foreign Manufacturer, Owns Trademark, TTAB Rules

This cancellation proceeding boiled down to a dispute between the U.S. seller (petitioner) and the foreign manufacturer (respondent) over ownership of the mark UVF861 for light bulbs and lighting fixtures. Petitioner contended that the goods were manufactured to its order and specifications, and therefore it owned the mark. Respondent maintained that as manufacturer it owned the mark, because petitioner was a mere distributor. The Board, after an extensive review of the record evidence, ruled in favor of petitioner. UVeritech, Inc. v. Amax Lighting, Inc., 115 USPQ2d 1242 (TTAB 2015) [precedential].

Although the proceeding was couched in terms of priority and likelihood of confusion under Section 2(a), the crux of the dispute was the issue of ownership. The parties fully tried that issue and argued it in their briefs.

There exists a legal presumption that, as between a manufacturer and an exclusive distributor of a product, the manufacturer is the owner of the mark, absent an agreement between them. However, the presumption is rebuttable.

Here there was no agreement regarding ownership of the mark. The Board therefore looked to the following factual framework in considering the ownership issue:

(1) which party created and first affixed the mark to the product;
(2) which party's name appeared with the trademark on packaging and promotional materials;
(3) which party maintained the quality and uniformity of the product, including technological changes;
(4) which party does the consuming public believe stands behind the product, e.g., to whom customers direct complaints and turn to for correction of defective products;
(5) which party paid for advertising; and
(6) what a party represents to others about the source or origin of the product.

The Board found petitioner to be owner of the mark UVF861 because factors 1 through 4 and six favored petitioner (factor no. 5 was neutral, there being no evidence regarding payment for advertising). Thus the factual evidence rebutted the presumption of ownership by the manufacturer.

The evidence showed that petitioner designed the bulbs for use in its ultraviolet counterfeit currency detector, and it conceived the mark UVF61. Petitioner hired respondent to make the bulbs under the mark to petitioner's specifications. Petitioner had already been using the mark UVF461, and looked to a bulb with twice as much wattage: thus the "8" in the subject mark instead of the "4" in the prior mark. Respondent had never sold a bulb under the mark UVF861 prior to its dealings with petitioner.

The most telling events, the Board found, occurred when petitioner became dissatisfied with respondent's products and turned to another manufacturer for a one-year period. The bulbs were still branded with the UVF861 mark, but respondent never objected or asserted its supposed rights in the mark.

Moreover, when quality problems arose, customers approached petitioner, not respondent, in seeking a solution. In other words, consumers believed petitioner to be the party standing behind the UVF861 bulbs. In fact, the product literature distributed with petitioner's equipment indicated that petitioner was the manufacturer, and included an order form for replacement bulbs.

Petitioner proved that it adopted the mark UVF861 as early as 2003 when it arranged for manufacture of the bulbs by respondent. There was no evidence that petitioner agreed to respondent's ownership of the mark, or that petitioner ever assigned the mark to respondent. Nor was there evidence that petitioner authorized respondent's filing of the application that issued as the challenged registration. Prior to its business relationship with petitioner, respondent never made similar products nor used the mark UVF861 for any products.

The sale of goods under a trademark does not require that the goods on which the mark is used be manufactured by the seller for the seller to be the owner of the mark. It is enough that the goods are manufactured for it, that it controls their production, or that the goods pass through its hands in the course of trade and that it gives to the goods the benefit of its reputation or of its name and business style.

The Board concluded that petitioner's claim of ownership was both consistent with applicable precedent and amply supported by the record evidence.

And so the Board granted the petition for cancellation.

Read comments and post your comment here

TTABlog comment: If ever a case existed for rebutting the presumption of ownership, this was it.

Text Copyright John L. Welch 2015.

Precedential No. 17: TTAB Refuses to Vacate HOUNDSTOOTH MAFIA Decision

An augmented Board panel denied the opposers' request to reopen, vacate, and dismiss without prejudice the TTAB's 2013 precedential decision [TTABlogged here] which dismissed an opposition to registration of the mark HOUNDSTOOTH MAFIA, in the design form shown below, for "shirts, hats." Opposers claimed Section 2(d) likelihood of confusion and Section 2(a) disparagement and false association, based on alleged trademark rights arising out of the University's and Coach Bear Bryant's use of a houndstooth pattern in conjunction with athletic services. A subsequent civil action for review of the Board's decision resulted in settlement and entry of a consent judgment, which in part ordered that the Board's decision be vacated.  The Board of Trustees of The University of Alabama and Paul W. Bryant, Jr. v. William Pitts, Jr. and Christopher Blackburn, 115 USPQ2d 1099 (TTAB 2015) [precedential].

The Board indicated that an augmented panel of five Administrative Trademark Judges, including the Chief Judge and the Deputy Chief Judge, was employed because of the importance of the issue and the frequency with which such requests for vacatur are made.

The civil action under Section 21(b)(1) for review of the TTAB's decision was filed in the U.S. District Court for the Northern District of Alabama. In settling the case, the parties submitted to the court a Final Consent Judgment, which would result in assignment to the University of applicants' rights in the HOUNDSTOTH MAFIA mark, including the opposed application. The consent judgment recited certain agreed-upon facts that "might be understood to stand in contradiction to those found by the Board" - for example, that the houndstooth pattern enjoys "widespread association with the University." The parties agreed that the Board's Order should be vacated.

The district court issued the Final Consent Judgment in May 2014, ordering that the Board's decision be vacated and that the "Register of Trademarks" allow the opposed application to proceed to registration. Opposers then filed with the Board their "Request to Reopen, Vacate and Dismiss Without Prejudice." Although applicants did not file an opposition to the motion, the Board chose to consider the motion on the merits in view of the "policies and public interest implicated by a request to vacate a precedential opinion based on a settlement."

When a dispute involving registrability becomes moot after a Board decision, due to settlement during an appeal, the appellate court will typically dismiss the appeal as moot and remand the case to the Board to allow the parties to move for vacatur of the Board's decision. In U.S. Bancorp, the Supreme Court, interpreting 28 U.S.C. Section 2106, held that "mootness by reason of settlement does not justify vacatur of a judgment under review," absent "exceptional circumstances." However, because the TTAB is not an Article III appellate court, U.S. Bancorp does not apply to a Board decision. Furthermore, opposers did not invoke FRCP 60(b) in seeking relief from the Board's judgment. The Board therefore undertook the initial task of determining the authority under which Opposers' request fell.

Section 21(b)(1) of the Lanham Act empowers a district court to adjudge that applicant's entitlement to a registration, whether a registration should be canceled, or such other matters as the issues may require. That section also provides that a district court "shall authorize the Director to take any necessary action, upon compliance with the requirements of law." [Emphasis supplied by the Board].

The Final Consent Judgment, however, does not reference any record evidence and "does not appear to involve adjudication," and "does none of these things a court is empowered to judge or directed to inform the Director of, following adjudication." It does not order that applicants are entitled to a registration and does not order cancellation of any registration. The Board saw no other "issues" as to which the court determined any facts, and it concluded that vacatur of the precedential Board opinion is not a "necessary action" under Section 21(b))1).

The court's directive that the PTO allow the application to proceed to registration did not require that the Board's decision be vacated and the opposition dismissed: it was not a "necessary action," because the assignment of the application was sufficient to allow the application to proceed to registration on behalf of the University. The Board's decision, which dismissed the opposition, did not stand  in the way of registration.

Concluding that 28 U.S.C. Section 2106 was not implicated, noting that Rule 60(b) was not invoked, and ruling that Section 21(b)(1) did not require vacatur, the Board then considered the matter in view of its "general equitable authority," under which it undertakes to balance the equities.

The Board saw no exceptional circumstances or any public interest that would require vacatur. The district court did not determine that the Board decision was wrong in any way. The Final Consent Judgment stated that the Board's order was erroneous in unspecified "material respects." In short, the Board concluded that the consent judgment did not represent an adjudication of any of the facts or issues before the court.

The Board's decision was deemed precedential in order to provide guidance to trademark practitioners on the issues decided. The consent judgment did not point to any error in the Board's decision, and nothing suggested the existence of any public interest that would be advanced by vacatur and that would outweigh the the Board's determination that the decision had precedential value.

And so the Board denied the motion.

Read comments and post your comment here

TTABlog comment: Had the opposers invoked FRCP Rule 60, the result would likely have been the same. Under that Rule, the sixth ground for relief, "any other reason that justifies relief," was pertinent here. Surely the Board would have ruled that relief was not justified.

Text Copyright John L. Welch 2015.