Divided TTAB Panel Dismisses Oppositions: No Priority Based on Title of SIngle Work

The Board, in a split decision, granted Applicant BOL Enterprise's motion for summary judgment, dismissing Opposer Independent Media's likelihood of confusion and fraud claims. Opposer's  alleged priority was based use of the mark BOL as the title of a single creative work, which the Board held was not a trademark use. Opposer's fraud claim was based on Applicant BOL's statements that it had exclusive rights in the applied-for marks despite its knowledge of Opposer's rights; however, since Opposer had no rights, those statement were not false let alone fraudulent. Independent Media Corporation (PVT.) Ltd. v.BOL Enterprise (PVT.) Ltd., Oppositions Nos. 91216909, 91216942, and 91219384 (January 14, 2016) [not precedential].

Priority: Opposer claimed prior use of the mark BOL for movies and films, pre-recorded DVDs, and the like, and for audio production services. Applicant asserted that Opposer's prior claim was based solely on a Pakistani motion picture entitled "Bol," which briefly appeared in US theaters in 2011. Applicant maintained that under the applicable precedents, use of a term as the title of a single work did not create any trademark rights, and therefore Opposer did not have priority of use.

The Board observed that the title of a single creative work is not a trademark. See, e.g., Herbko Int'l Inc. v. Kaplan Books, Inc. The name of a series of books, however, may be registered as a trademark. In re Cooper. A book title identifies a specific literary work, whereas the name of a series "has a trademark function in indicating that each book of the series comes from the same source as the others."

Opposer asserted that it used BOL not only as a movie title, but also on soundtracks from the movie [see photo above]. The panel majority found, however, that "[b]ecause of the soundtrack's association with the BOL film, and because only songs from the BOL Film are in the soundtrack or compilation of songs, Applicant has established that the soundtrack or compilation of songs is based on or derived from the same creative work, namely, the BOL Film."

In the absence of evidence demonstrating that BOL is used on at least two different creative works, we conclude as a matter of law that BOL is simply the title of essentially a single creative work. Cf., In re Arnold, 105 USPQ2d 1953, 1956 (TTAB 2013) (requiring evidence that a title is used on at least two different creative works). See also, Trademark Manual of Examining Procedure (“TMEP”) § 1202.08(c) (October 2015).

Opposer also claimed secondary meaning in the term BOL, but the Board pointed out that titles of single creative works are incapable of any trademark significance, even if proof of acquired distinctiveness is proffered.

Because Opposer could not establish priority, the Board granted applicant's motion for summary judgment motion on the Section 2(d) claim.

Fraud: As to the fraud claim, since Opposer had no rights in the mark BOL, there was nothing fraudulent, or even false, about applicant's statements that it owned exclusive rights in the mark.

Dissent: Judge Wolfson dissented, urging that the "title of a single work" doctrine should not apply when there exists a creative work and a derivative work that varies substantially in content from the original. Since Opposer used the mark BOL on multiple works, and also used the term as a trade name, it should have the opportunity to show that the term has acquired distinctiveness. It is error to hold as a matter of law that in such a case a party cannot establish priority. The standard of proof may be high, but Opposer should have the opportunity to make its case.

Judge Wolfson would also not summarily dismiss the fraud claim because, contrary to the majority's view, Opposer did properly make of record a temporary injunction order from a Pakistani court, and therefore a genuine issue of material fact existed as to the impact of that order on this case.

Read comments and post your comment here.

TTABlog comment: The Board made no mention of its November 2014 nonprecedential decision in In re King [TTABlogged here], which held that the title of a single DVD was registrable as a trademark under Section 2(f), with proof of acquired distinctiveness. Judge Quinn was a panelist on both cases.

Text Copyright John L. Welch 2016.

TTAB Reverses 2(e)(3) Geographical Deceptiveness Refusal of "AUX ETAT UNIS" for Luggage

Yours truly, the TTABlogger, notched a victory in this appeal from a Section 2(e)(3) refusal to register the mark shown below for luggage and other Class 18 goods. The Board found that, although the phrase AUX ETATS UNIS refers to a generally known geographical place [can you guess what place?], the Examining Attorney failed to show that a substantial portion of the relevant consuming public would likely be deceived by the place name. In re Luvanis S.A., Serial No. 86294633 (January 26, 2015) [not precedential].

In order to establish a prima facie case that a mark is primarily geographically deceptive misdescriptive case under Section 2(e)(3), the USPTO must show that:

1) The primary significance of the mark is a generally known geographic place;

2) The goods or services do not originate in the place identified in the mark;

3) Purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark; and

4) The misrepresentation would be a material factor in a substantial portion of the relevant consumers’ decision to buy the goods or use the services. In re Spirits International, N.V., 563 F.3d 1347, 90 USPQ2d 1489, 1490-95 (Fed. Cir. 2009).

Applicant argued that "aux Etats Unis" would be translated as "to the United States," but the Board found that the phrase could also mean "in the United States." The Board concluded that the primary significance of the mark is a known geographic place, and so the first prong of the 2(e)(3) test was satisfied.

Applicant conceded that its goods would not originate in the United States, and so the second prong of the test was met. [Can a prong be met? Not without some pain, I think - ed.].

As to the third and fourth elements, none of the PTO's evidence "concerns the issue of whether a substantial portion of the relevant consuming public would likely be deceived by a non-English place name."

In cases under the doctrine of foreign equivalents, where the place name in the mark appears in a foreign language, the requirement that a substantial portion of the relevant consuming public would likely be deceived raises special issues. To make a determination about “a substantial portion” in such cases, the examining attorney must consider whether the foreign language place name would be recognizable as such to consumers who do not speak the foreign language, and/or whether consumers who speak the foreign language could constitute a substantial portion of the relevant consumers (e.g., because they are the “target audience”). Spirits, 563 F.3d at 1353, 90 USPQ2d at 1493; see Corporacion Habanos, S.A. v. Guantanamera Cigars Co., 102 USPQ2d 1085, 1097 (TTAB 2012).

The Board found nothing in the record from which to determine "whether (1) U.S. consumers who do not speak French would recognize 'aux Etats Unis' as referring to 'in the United States' or 'to the United States,' or (ii) U.S. consumers who speak French are a substantial portion of the relevant consuming public, and would be deceived by the asserted misrepresentation in the mark."

The Board also noted that the PTO had failed to show that the misrepresentation would be a material factor in the purchasing decisions of a substantial portion of the relevant consuming public.

And so the Board reversed the refusal.

Read comments and post your comment here.

TTABlog comment: The Spirits test under Section 2(e)(3) is stringent, particularly the third and fourth factors. When a mark for cigars sounds of Cuba, a 2(e)(3) refusal may stick because of the size of the Spanish-speaking population in this country and the desirability of Cuban cigars (see, for example, the GRAN HABANO case, TTABlogged here), but otherwise the Office has a tough row to hoe.

Text Copyright John L. Welch 2016.

The Top Ten TTAB Decisions of 2015 [Part 2]

Here is the second half of the TTABlog's "top ten" list of 2015 TTAB decisions. Part 1 may be found here. If you would have selected other cases for the top ten, please say so in the comments.



In re Frankish Enterprises Ltd., 113 USPQ2d 1964 (TTAB 2015) [precedential] [TTABlogged here]. The Board reversed a refusal to register the mark shown below, comprising a “truck cab body in the design of a fanciful, prehistoric animal,” for “entertainment services, namely performing and competing in motor sports events in the nature of monster truck exhibitions.” The Examining Attorney contended that applicant’s design fails to function as a service mark because monster trucks appear in a wide variety of designs and applicant’s design would not be perceived as a source indicator. The Board first noted that, although product designs cannot be inherently distinctive, product packaging trade dress and trade dress for services can be. The Board found applicant’s proposed mark to be “akin to the packaging of what is being sold.” Under Two Pesos, trade dress for services may be inherently distinctive. Applying the CCPA’s Seabrook test, the Board found the mark to be unique and unusual, and therefore inherently distinctive.


In re Thor Tech, Inc., 113 USPQ2d 1546 (TTAB 2015) [precedential] [TTABlogged here]. The differences in the goods and their channels of trade and the high level of purchaser care led the Board to conclude that the mark TERRAIN for “recreational vehicles, namely, towable trailers” is not likely to cause confusion with the identical mark registered for “motor land vehicles, namely, trucks.” Thor Tech submitted dozens of third-party registrations for the same or very similar marks, owned by different entities, for vehicles and recreational vehicle trailers, suggesting to the Board that “businesses in these two industries believe that their respective goods are distinct enough that confusion between even identical marks is unlikely. The Board found that this “pattern of registrations” rebutted the two third-party registrations submitted by the Examining Attorney. The Board came to a similar conclusion in Keebler Company v. Associated Biscuits Limited, 207 USPQ 1034, 1038 (TTAB 1980) (“The mutual respect and restraint exhibited toward each other by the owners of the plethora of marks, evidenced by their coexistence on the Register, are akin to the opinion manifested by knowledgeable businessmen ...."). The third-party registrations “suggest that consumers are aware that [the goods] are offered by different companies under the same or similar marks.”


In re Engine 15 Brewing Co., LLC, S.N. 86038803 (October 29, 2015)[not precedential] [TTABlogged here] and In re Left Nut Brewing Company, Inc., S.N. 85935569 (November 13, 2015) [not precedential] [TTABlogged here]. This pair of “nut” cases may be interesting, but perhaps not very important after the CAFC's decision in In re Tam, since the complete demise of the Section 2(a) immoral or scandalous refusal seems imminent. The Board reversed Section 2(a) refusals, finding the marks NUT SACK DOUBLE BROWN ALE and LEFT NUT BREWING COMPANY for beer, not to be immoral or scandalous. The Board observed that the USPTO may prove that a mark is scandalous under Section 2(a) by showing that the mark is “vulgar” as applied to the identified goods. The mark must be considered in light of contemporary attitudes, from the standpoint of a substantial composite (not necessarily a majority) of the public. The Board has noted for several decades that “contemporary attitudes toward coarse language are more accepting than they had been in earlier eras.” As to the first mark, the Board concluded that “beer drinkers can cope with Applicant’s mark without suffering meaningful offense.” Even when the consumer thinks of body parts or insults, he or she is still likely to see the mark as an attempt at humor. As to the second, in view of the mixed record of vulgar and non-vulgar meanings, the Board ruled that the evidence had failed to establish that LEFT NUT is vulgar: the term has even been use “by senators and web-authors with no evidence of offense or disapproval” and the PTO has registered similarly-suggestive “nut” marks.

Southwestern Management, Inc. v. Ocinomled, Ltd. and Emeril’s Food of Love Productions, LLC, 115 USPQ2d 1007 (TTAB 2015) [precedential] [TTABlogged here]. Concluding that there would be a likelihood of confusion even in Applicant Southwestern Management’s current territory (upstate New York), the Board dismissed this proceeding involving a concurrent use application for the mark DELMONICO’S for “restaurant services.” Southwestern, the junior user but first to file an application to register, sought a nationwide registration except for the areas of use of the two named Defendants. However, the renown of the Defendants’ restaurants (one in New York City (DELMONICO’S), the heir apparent to the historical restaurant of that name, the other based in New Orleans (DELMONICO) and promoted by Chef Emeril Lagasse) made it likely that confusion would occur even if Applicant’s registration for “restaurant services” were limited to upstate New York. In short, Southwestern failed to carry its burden of proof to show that confusion is not likely. The Board hastened to add that its determination did not, in some respects, take into account actual marketplace conditions, and affected only the issue of registrability and not Southwestern’s right to use the mark. And so the Board denied Southwestern the concurrent use registration requested.

ProMark Brands Inc. and H.J. Heinz Company v. GFA Brands, Inc., 114 USPQ2d 1232 (TTAB 2015) [precedential] [TTABlogged here]. The Board gave the cold shoulder to this consolidated opposition to registration of the mark SMART BALANCE for frozen entrees and for various snack foods and desserts, finding the mark not likely to cause confusion with the registered mark SMART ONES for various types of frozen foods, including entrees, desserts, ready-to-eat wraps, pizzas, and breakfast foods. The Board concluded that the marks are significantly different, particularly in view of the weakness of the formative “SMART,” the seventeen-year period of conflict-free coexistence of the parties’ marks (but not for frozen foods), and applicant’s corroborating survey evidence and expert testimony. A large portion of the Board’s opinion focused on the expert testimony and survey evidence. Opposers’ likelihood of confusion survey purported to show a 32% likelihood among the 250 respondents surveyed, but the Board found the survey to be fatally flawed, primarily because the pivotal question was close-ended and failed to ask “why?” Applicant’s survey, on the other hand, comported with best practices. It reported a 2% likelihood of confusion among relevant purchasers, based on 410 respondents, and the Board found that this supported a conclusion that confusion is not likely.

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

The Top Ten TTAB Decisions of 2015 [Part 1]

Yours truly, the TTABlogger, has once again chosen the ten TTAB decisions that he considers to be the most important and/or interesting from the previous calendar year (here, 2015). This is the first of two posts, the first five selections being set out below. Additional commentary on each case may be found at the linked TTABlog posting]. The cases are not necessarily listed in order of importance (whatever that means).



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] [TTABlogged here]. [VACATED on March 3, 2016]. An augmented Board panel denied the opposers’ request to reopen, vacate, and dismiss without prejudice the TTAB’s 2013 precedential decision (here), dismissing an opposition to registration of the mark HOUNDSTOOTH MAFIA, in the design form shown below, for “shirts, hats.” A subsequent civil action under Section 21(b)(1) of the Trademark Act for review of the TTAB’s decision resulted in settlement and entry of a consent judgment, which in part ordered that the Board’s decision be vacated. 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 HOUNDSTOOTH MAFIA mark, including the opposed application. The parties agreed that the Board’s Order should be vacated. The Board, however, concluding that 28 U.S.C. Section 2106 was not implicated and, noting that Rule 60(b) was not invoked, ruled that Section 21(b)(1) did not require vacatur. The Board then considered the matter in view of its "general equitable authority." It saw no exceptional circumstances or any public interest that would require vacatur. The decision was deemed precedential in order to provide guidance to practitioners. The consent judgment did not point to any error in the Board's decision, and nothing suggested a public interest that would be advanced by vacatur and that would outweigh the Board’s determination that the decision had precedential value. [On February 23, 2016, the U.S. District Court for the Northern District of Alabama ordered that the original TTAB decision be vacated, in accord with a consent judgment entered in the civil action seeking review of the Board's decision].

New York Yankees Partnership v. IET Products and Services, Inc., 114 USPQ2d 1497 (TTAB 2015) [precedential]. [TTABlogged here]. An augmented panel 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” (with quotation marks) for mugs, and the design mark shown 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 mark 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 because applicant asserted an intention to use its marks as source indicators, which is neither a noncommercial use nor a “fair use” exempted from a dilution claim. Fame: Applicant conceded that opposer’s Top Hat logo is distinctive, and the Board found the mark to be famous for dilution purposes. Applicant also conceded that THE HOUSE THAT RUTH BUILT is famous as referring to Yankee Stadium, but contended that it is not famous as a mark. The Board, however, found that the Yankees’ “use of its stadium … since the 1920s, has resulted in widespread recognition of that mark in association with Opposer’s baseball services.” Dilution or Not?: 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.” Its analysis was similar for THE HOUSE THAT RUTH BUILT.

Ava Ruha Corporation dba Mother’s Market & Kitchen v. Mother’s Nutritional Center, Inc., 113 USPQ2d 1575 (TTAB 2015) [precedential] [TTABlogged here]. In this consolidated cancellation proceeding involving allegations of likelihood of confusion, dilution, and fraud, the parties filed cross-motions for summary judgment on respondent’s affirmative defense of laches. Because laches is not an available defense to a fraud claim, the Board considered laches only with respect to the dilution and likelihood of confusion claims. In order to establish the defense of laches, a party must show undue or unreasonable delay by the other party in asserting its rights, and prejudice resulting from the delay. The Board found the period of delay to be just over three years and two months, a length of delay that “could support a defense of laches.” Petitioner claimed that its delay was excusable due to Respondent’s “progressive encroachment,” but its evidence failed to raise a genuine issue of fact in that regard. The Board concluded that laches barred petitioner’s dilution claim, but as to likelihood of confusion a genuine issue of material fact as to whether confusion was inevitable precluded summary judgment. The Board ordered that the proceeding be resumed on the issues of fraud and likelihood of confusion, with Petitioner having the burden to prove inevitable confusion lest the Section 2(d) claim be barred by laches.

Joshua Domond v. 37.37, Inc., 113 USPQ2d 1264 (TTAB 2015) [precedential] [TTABlogged here]. In this cancellation proceeding challenging a registration for the mark BEAUTIFUL PEOPLE for various clothing items, Petitioner Joshua Domond served 872 requests for admission, 247 document requests, and 26 interrogatories in the first two days of the discovery period. Respondent 37.37, Inc. moved for a protective order under Fed. R. Civ. P. 26(c), requesting that the Board limit the discovery items to a reasonable number. The Board found the discovery requests to be “excessive, unduly burdensome and harassing in number and content” when viewed in light of the issues raised in the proceeding, and it granted the motion, limiting the total number of discovery requests to 150, absent prior Board review and approval. Petitioner alleged fraud, abandonment, and likelihood of confusion, and claimed that the challenged registration was void ab initio because respondent’s specimen failed to show use in commerce. The Board pointed out that while parties to a proceeding are generally allowed to seek discovery as they deem necessary, they are expected to take into account the principles of proportionality so that the volume is not harassing or oppressive, and they are expected to consider the scope of the requests as well as to confer in good faith so as to minimize the need for motions. The Board granted the motion for a protective order, and it warned petitioner that further uncooperative or harassing behavior may result in the imposition of sanctions, and possibly entry of judgment.

INTS It Is Not The Same, GmbH v. Disidual Clothing, LLC, Opposition No. 91212768 (March 28, 2015) [not precedential] [TTABlogged here]. The Board denied a petition to disqualify counsel for Opposer INTS, ruling that, although the attorney had signed and verified certain documents pursuant to a power of attorney from opposer, he was not the sole source for information regarding those documents and therefore was not a "necessary witness." Oppposer's counsel signed and filed applications, statements of use, renewals, and/or declarations of use and incontestability, in connection with opposer's pleaded registrations, pursuant to a Power of Attorney from opposer. Section 11.307(a) of the USPTO Rules of Professional Conduct indicates when a "practitioner for a party" who may become a witness in a USPTO proceeding should be disqualified. The first question was whether opposer's attorney was a "necessary witness," i.e., whether "no other person is available to testify in his place." Here, there was no showing that opposer's counsel alone would need to testify to the contents of the documents he signed. "Evidence and information as to the contents of those submissions can be found elsewhere." The Board noted, "[i]n passing, a policy of disqualifying an attorney for signing a declaration on behalf of his client, especially where it is permitted by the Trademark Rules of Practice, without anything more, would have an undesired consequence of rendering many attorneys practicing before the Board eligible for disqualification."

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

Precedential No. 1: TTAB Clarifies Statement of Use Timing Requirement

The Board batted away another bogus fraud claim in this consolidated opposition and cancellation proceeding, but perhaps more significantly it ruled on an important point regarding the filing of Statements of Use and so-called "insurance extensions." Petitioner Embarcadero sought cancellation of a registration for the mark DELPHIX & Design (shown below) for database management software. Delphix moved for summary judgment as to Embarcadero's claim that the registration was obtained by fraud. Embarcadero filed a cross-motion to amend its petition to add several claims: Section 2(a) false association, "false representation," and nonuse. The Board granted the summary judgment motion and part of the motion to amend, as explained below. Embarcadero Technologies, Inc. v. Delphix Corp., 117 USPQ2d 1526 (TTAB 2016) [precedential].

Fraud: Embarcadero alleged that Delphix filed fraudulent Statements of Use in order to obtain the challenged registration. Embarcadero pointed to the fact that Delphix's president, who signed and submitted the Statement of Use, was a "highly educated Harvard graduate" [so what? - ed.] with previous trademark experience, who was "well aware of the importance of reading and verifying the accuracy of documents he signs." According to Embarcadero, he "could not have reasonably believed that Delphix's two claimed 'installations' constituted use in commerce of software goods."

Delphix asserted that summary judgment was appropriate because the facts relied upon by Embarcadero did not support an inference that Delphix filed the statements with the requisite fraudulent intent, and thus there was an absence of evidence to support Embarcadero's claim.

The Board observed that, although it must view the claim of fraud in a light most favorable to the non-movant, Embarcadero "was required to set forth specific facts, by declarations or as otherwise provided in [FRCP 56(e)], evidence supporting an inference of Respondent's fraudulent intent ...." See FRCP 56(e). See also Copelands’ Enters. Inc., 20 USPQ2d at 1298, and Octocom Sys. Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1786 (Fed. Cir. 1990).

Here, Embarcadero failed to raise a genuine issue as to Delphix's intent to deceive the USPTO. The Board noted that the reasonableness of Delphix's belief is irrelevant to the fraud analysis. See In re Bose Corp., 91 USPQ2d 1938, 1945 (Fed. Cir. 2009).

Testimony regarding the education and trademark experience of Respondent’s CEO who signed the statement of use is not evidence, direct or indirect, of fraudulent intent, a necessary element of the fraud claim. Accordingly, Respondent’s motion for summary judgment on the ground of fraud is GRANTED.

Motion to Amend: The Board quickly disposed of Embarcadero's proposed claims for false association under Section 2(a) and for "false representation" as being both untimely and futile. As to the former, Embarcadero failed to allege that the challenged mark is Embarcadero's identity or "persona" (See Hornby v. TJX Cos., Inc., 87 USPQ2d 1411, 1424 (TTAB 2008)), and as to the latter, there is no statutory claim for cancellation based on "false representation." Daimlerchrysler Corp. and Chrysler, LLC v. Am. Motors Corp., 94 USPQ2d 1086, 1089 (TTAB 2010) (citing Bose, 91 USPQ2d at 1942 ("There is no fraud if a false misrepresentation is occasioned by an honest misunderstanding or inadvertence without a willful intent to deceive.").

The Board, however, granted Embarcadero's motion to amend its petition for cancellation to add the ground of nonuse. Timing was not an issue since, the Board observed, nonuse may be considered "without requiring a separate pleading." See ShutEmDown Sports, Inc. v. Carl Dean Lacy, 102 USPQ2d 1036, 1045 (TTAB 2012).

Embarcadero's nonuse claim was based on a "faulty legal premise." Embarcadero maintained that, after Delphix filed a first, flawed Statement of Use on August 12, 2009, Delphix could not later file another Statement of Use claiming a first use date after August 12, 2009. Not so, said the Board. It held that in an inter partes proceeding, it will "consider evidence of use which occurred after the filing of the statement of use but within the original or extended period for filing the statement of use."

During ex parte examination, the actual filing of a statement of use does not cut off the deadline for meeting the requirements for a statement of use. The applicant may amend its statement of use so long as the amendment demonstrates that the requirements for the statement of use were met before the expiration of the deadline for filing the statement of use. Trademark Rule 2.88(e), 37 C.F.R. § 2.88(e). *** Thus, an applicant may amend its statement of use to state dates of use which fall after the statement of use filing date, but before the expiration of the deadline for filing the statement of use. See Trademark Rule 2.71(c)(2), 37 C.F.R. § 2.71(c)(2).

Here the Notice of Allowance issued on July 28, 2009, giving Delphix until January 28, 2010 to file its Statement of Use. It filed a first Statement of Use on August 12, 2009, and on January 25, 2010 filed a request for an "insurance extension of time" for six months, i.e., to July 28, 2010. The Board found that giving Delphix the benefit of the insurance extension "satisfies the letter and the spirit of the statement of use rules."

Therefore, to set forth a legally sufficient claim of nonuse, Embarcadero "must plead that Respondent did not use the DELPHIX mark with the software listed in the registration within the time for filing its statement of use as extended, i.e., no later than July 28, 2010."

The Board allowed Embarcadero fifteen days within which to amend its petition for cancellation accordingly.

Read comments and post your comment here.

TTABlog comment: Makes sense to me. How about you?

Text Copyright John L. Welch 2016.

Which Law Firms Filed the Most Oppositions in 2015 (and 2014)?

Which law firms filed the most oppositions in 2015 (and 2014)? [Well, let's see .... Who represents Major League Baseball? Monster Energy?] The folks at Towergate Software have compiled a list of the top 20 filers (here). [You can more details upon request to Towergate].


Towergate reports that Cowan Liebowitz dropped to second place in 2015, after many years as top dog (thanks to MLB). Kilpatrick Townsend and Stockton have moved into first place, "mainly fueled by Instagram, Oracle, and Occulus VR." The third through sixth positions remained the same over the past two years: Fross Zelnick, Knobbe Martens, Cooley, and Arent Fox.

I wonder which firms are involved in the most cases that go all the way to final decision? I suspect that the inter partes cases handled by high powered firms for aggressive, deep-pocket clients often are terminated well before that.

Read comments and post your comment here.

Text Copyright John L. Welch 2014.

Recommended Reading: Marc J. Randazza, "Freedom of Expression and Morality Based Impediments to the Enforcement of Intellectual Property Rights"

Friend-of-the-blog, MEET THE BLOGGERS sponsor, and First Amendment expert Marc J. Randazza has published a timely article entitled "Freedom of Expression and Morality Based Impediments to the Enforcement of Intellectual Property Rights," Nevada Law Journal, Vol. 16, No. 1 2016). [Free subscription download here].

Abstract:

In the case of intellectual property rights (IPRs), some nations erect barriers to the protection of IPRs on the basis of "morality." This paper will examine the implications of morality-based impediments to the enforcement of IPRs and their supportability under international agreements.

Commenting on the potential impact of In re Tam, Mr. Randazza posits that the recent CAFC ruling "signals a sea change in how the United States may look at morality issues in the trademark realm."

After decades of frustration, the First Amendment argument against Section 2(a) finally prevailed, as In re Tam explicitly overruled any support that clause might have found from In re McGinley. *** While In re Tam did not directly confront the immoral and scandalous clause, it confirmed the theory that Section 2(A) is flawed, and cannot withstand constitutional scrutiny.

Read comments and post your comment here.

TTABlog comment: The Randazza Legal Group may be found here.

Text Copyright John L. Welch 2016.

TTAB Issued 41 Precedential Opinions in Calendar 2015

By my count, the TTAB issued 41 precedential opinions in calendar year 2015. (I say "calendar year" to distinguish my count from the official USPTO count, which is based on its fiscal year ending on September 30th). This number is consistent with the total for each of the past three years (45, 44, 44). While trademark developments in the courts may have overshadowed the TTAB's efforts this past year, there were still plenty of decisions worth noting.


Section 2(a) - Disparagement:

• WYHA? Precedential No. 8: TTAB Affirms Section 2(a) Disparagement Refusal of PORNO JESUS

Section 2(a) - False Association:

• Precedential No. 39: TTAB Dismisses 2(a) False Association Claim: MARATHON MONDAY vs.BOSTON MARATHON
• Precedential No. 36: TTAB Gives the Boot to Nike's Inadequate Section 2(a) and 2(c) Claims
• Precedential No. 4: TTAB Affirms 2(a) and 2(c) Refusals of "PRINCESS KATE" and "ROYAL KATE" for Clothing

Section 2(c) - Consent to Register:

• Precedential No. 36: TTAB Gives the Boot to Nike's Inadequate Section 2(a) and 2(c) Claims
• Precedential No. 4: TTAB Affirms 2(a) and 2(c) Refusals of "PRINCESS KATE" and "ROYAL KATE" for Clothing

Section 2(d) - Likelihood of Confusion:

• Precedential No. 38: Fame of "will.i.am" Can't Save "I AM" Trademark Applications From 2(d) Bar
• Precedential No. 34: MMMBop! TTAB FInds C.H. HANSON Confusable with HANSON for Hand Tools
• Precedental No. 33: North Face Gets Split Decision In Multi-Class Section 2(d) Opposition
• Precedential No. 32: Orange Bang Wins "OLÉ" Section 2(d) Beverage Bullfight
• Precedential No. 27: Fame of BUD for Beer Brings Victory over WINEBUD for Wine
• Precedential No. 20: 13th du Pont Factor Yields TTAB 2(d) Reversal
• Precedential No. 16: MARAZUL and BLUE SEA Confusable for Seafood, Says TTAB
• Precedential No. 11: Despite Examination Errors, Issued Registration Must Be Cited as Section 2(d) Bar
• Precedential No. 10: TTAB Test: Are These Two Marks for Furniture Confusingly Similar?
• Precedential No. 9: SMART BALANCE Not Confusable with SMART ONES for Frozen Food, Says TTAB
• Precedential No. 6: "PMONEY" Confusable with "POPMONEY" for Electronic Funds Transfer, Says TTAB
• Precedential No. 2: Applicant's Third-Party Registrations Show That RV Trailers and Trucks are Not Related

Section 2(e)(1) - Deceptive Misdescriptiveness:

• Precedential No. 35: TTABang! SMART SERIES Merely Descriptive of Firearm Safes
• Precedential No. 31: "THCTea" Deceptively Misdescriptive of Tea-Based Beverages, Says TTAB

Section 2(e)(5) - Functionality:

• Precedential No. 37: TTAB Affirms Functionality Refusal of Hot Bonder Product Design

Dilution:

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

Failure to Function:

• TTAB Precedential No. 25: "WALK-IN-SHOPPER" Not Used As Source Indicator for Applicant's Services
• Precedential No. 7: TTAB Reverses Failure-to-Function Refusal of Monster Truck Body Ornamentation

Genericness:

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

Laches:

• Precedential No. 5: TTAB Grants Partial Summary Judgment On Laches Ground

Lack of Bona Fide Intent:

• Precedential No. 30: Finding Lack of Bona Fide Intent, TTAB Sustains SWISS GRILLS Opposition

Ownership:

• Precedential No. 21: TTAB Sides With Band in "WONDERBREAD 5" Ownership Dispute
• Precedential No. 18: U.S. Seller, Not Foreign Manufacturer, Owns Trademark, TTAB Rules

Discovery/Evidence/Procedure:

• Precedential No. 41: TTAB Refuses Reconsideration of its Denial of Rule 12(b)(6) Motion to Dismiss
• Precedential No. 40: TTAB Refuses to Allow Witness to Change Testimony in HOLLYWOOD HOTEL Opposition
• Precedential No. 28: TTAB Denies Motion to Add Claim Preclusion Defense As Futile
• Precedential No. 26: TTAB Dismisses Opposition As Untimely, Denying Opposer Benefit of Another's Extension of Time
• Precedential No. 24: TTAB Summarily Dismisses Cancellation Petition Due to Claim Preclusion
• Precedential No. 23: Abandonment and Opposition Filed on Same Day, TTAB Dismisses Opposition Without Prejudice
• Precedential No. 22: Unreasonable Party Loses Right to Substantive Objections to Document Requests
• Precedential No. 19: PTO "Clear Error" Determination Not Reviewable by Petition or Appeal
• Precedential No. 17: TTAB Refuses to Vacate HOUNDSTOOTH MAFIA Decision
• Precedential No. 11: Despite Examination Errors, Issued Registration Must Be Cited as Section 2(d) Bar
• Precedential No. 3: TTAB Grants Motion To Substitute New Expert Witness After Discovery Closed
• Precedential No. 1: Applying "Proportionality," TTAB Limits Number of Discovery Requests to Avoid Abuse

Application Requirements:

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

Concurrent Use:

• Precedential No. 29: TTAB Dissolves Concurrent Use Proceeding, Plaintiff Fails to Prove Prior Use
• Precedential No. 15: TTAB Refuses Concurrent Use Registration of DELMONICO'S For Restaurant Services

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

TTAB Dismisses CIGAR SNOB Cancellation For Failure to Prove Priority, Fraud

The Board dismissed this petition for cancellation of a registration for the mark THE $NOB, in standard character form, for "multimedia publishing of books, magazines, journals, software, games, music, and electronic publications," on the ground of likelihood of confusion and fraud, ruling that petitioner had failed to prove priority for its pleaded mark CIGAR SNOB, and failed to provide any evidence that Respondents made false statements with the requisite intent to deceive the USPTO. Lockstock Publications, Inc. d/b/a Cigar Snob Magazine v. J. Thomas Investments, Inc. and Jeffrey Thomas Gomez, Cancellation No. 92057753 (January 15, 2016) [not precedential].

Priority: Petitioner claimed common law rights arising out of its alleged prior use of CIGAR SNOB for magazines. However, its only proof of prior use was introduced by notice of reliance, without testimony or other evidence. Specifically, Petitioner relied on the cover pages and mastheads of several issues of CIGAR SNOB magazine from 2006-2007.

The problem is that printed publications introduced through notice  of reliance alone are not competent to establish the truth of the matters asserted therein. We consider unexplained, unauthenticated printed publications such as these only for what they show on their face. See Safer Inc. v. OMS Investments Inc., 94 USPQ2d1031, 1039-40 (TTAB 2010). *** On their face, the copies of what appear to be portions of certain editions of CIGAR SNOB magazine are insufficient to establish that Petitioner controlled the nature and quality of the magazines; where and when they were distributed, if ever; that anyone purchased or was exposed to the magazines or the CIGAR SNOB mark; or any other fact supporting a finding that Petitioner owns or used the mark CIGAR SNOB for magazines.

Respondent made no admission regarding Petitioner's use of the CIGAR SNOB mark. The magazine excerpts submitted by Petitioner were insufficient to prove use prior to Respondents' constructive first use date (the filing date of its underlying application) in June 20007. Therefore the Section 2(d) claim was dismissed.


Fraud: To establish a fraud claim, intent to deceive the USPTO must be proven by clear and convincing evidence. "Here, Petitioner has not presented any evidence, direct, indirect or circumstantial, let alone the requisite 'clear and convincing'' evidence." Co-respondent Gomez testified that he believed he was using the involved mark THE $NOB for magazines and other products prior to the filing date of Respondents' underlying application. "Whether this belief was accurate or reasonable is not relevant to the fraud inquiry."

Even if Petitioner was correct that Respondents should have known that they were not using the mark on some of the goods identified in the Registration, that, without more, does not reflect an intent to deceive much less prove such an intent “to the hilt” as required by Bose.

And so Petitioner's fraud claim was dismissed.

Read comments and post your comment here.

TTABlog comment: The U.S. District Court for the District of Maryland recently applied B&B v. Hargis in giving preclusive effect to the issue of priority. [TTABlogged here]. The Eastern District of Virginia recently applied B&B to the issue of fraud [TTABlogged here]. Petitioner might want to file an civil action for review of the Board's decision, which would permit the submission of additional evidence.

Text Copyright John L. Welch 2016.

TTAB Test: Is "DIAMONDESS" Deceptive for Simulated Diamonds?

The USPTO refused registration of the mark DIAMONDESS for "jewelry primarily comprised of simulated diamonds and gemstones," deeming the mark deceptive under Section 2(a). Applicant Hyman appealed, arguing that DIAMONDESS is a coined term that suggests a female figure, rather than a diamond. The Examining Attorney argued that the word could be viewed as simply a plural of the word "diamond." How do you think this came out? In re The Hyman Companies, Inc., Serial No. 85483397 (January 14, 2015) [not precedential].

A mark is deceptive if: (1) it contains matter that is misdescriptive of the character, quality, function, composition or use of the goods; (2) prospective purchasers would be likely to believe that the misdescription actually describes the goods; and (3) the misdescription would be likely to affect a significant portion of the relevant consumers’ decision to purchase the goods.

The crucial question, according to the Board, was this: "whether the addition of the suffix –ESS provides a basis for not believing that the goods are in fact made of real diamonds." The Board found applicant's emphasis on the coined nature of the mark to be "highly relevant."

While acknowledging that this is a close case, we find that DIAMONDESS is not deceptive within the meaning of Section 2(a). Placing the word DIAMONDESS on a product is not the same as placing the word DIAMOND on it: the use of  DIAMONDESS, which has no definite meaning, is objectively not a statement that the product is a diamond. While the presence of the word “diamond” within the mark obviously suggests the idea of a diamond, a costume jewelry merchant could certainly, without deceptiveness, compare his goods to diamonds or say that they are diamondlike. In such a context, we believe the differences between “diamond” and DIAMONDESS in appearance, sound, and meaning are a sufficient signal to customers that they are not being offered a diamond.

And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlog comment: I wouldn't call this opinion a jewel of clarity.

Text Copyright John L. Welch 2016.

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

Here are three recent appeals from mere descriptiveness refusals under Section 2(e)(1). How would  you decide them? Remember the Board affirms about 85% of mere descriptiveness refusals that are appealed. [See first comment for outcomes].


In re Comfort Revolution, LLC, Serial No. 86029326 (January 7, 2015) [not precedential]. [refusal to register MEMORY COIL (in standard characters) for "Mattress toppers, pillows, [and] mattresses"].

In re Bell, Serial Nos. 86187124 (January 7, 2015) [not precedential]. [Refusal to register BUY AN INMATE A BOOK (in standard characters) for "charitable services, namely, providing books to people; charitable services, namely, providing books to inmates and the incarcerated"].

In re Olawale Mafolasire, 85895010 (January 12, 2015) [not precedential]. [Refusal to register 1-TAP GIVE for "computer application software for mobile phones and portable electronic devices
enabling a user to send or donate money to a recipient"].

Read comments and post your comment here.

TTABlog comment: See any "WYHA?"s here?

Text Copyright John L. Welch 2016.

Matthew Swyers (The Trademark Company) Sues USPTO For Harassment

On January 6, 2016, Matthew H. Swyers, proprietor of The Trademark Company, commenced a lawsuit against the USPTO, alleging that the Office has violated his Constitutional rights in its investigation of his practices in the filing and prosecuting trademark applications. The complaint may be found here. The Trademark Company is reportedly the second largest filer of trademark applications in the country.

Mr. Swyers complains that numerous Requests for Information (RFIs) issue by the Office were "designed to harass, overburden, invade, injure and damage the Plaintiff and his business," and he seeks injunctive relief and damages. The USPTO has not commented on the matter, but a Courthouse News article (here) provides one side of the story.

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

WYHA? MAGIC SNOWBALL and SNOWBALL Confusable for Stuffed Toys, Says TTAB

The Board affirmed a refusal to register the mark MAGIC SNOWBALL for "plush toy which looks like a snowball and contains a motion-activated LED" [SNOWBALL disclaimed] finding the mark likely to cause confusion with the registered mark SNOWBALL for "plush toys." Applicant contended that MAGIC is the dominant, and distinguishing, part of its mark. Would You Have Appealed? In re Hallmark Licensing, LLC, Serial No. 86198536 (January 11, 2015) [not precedential].

Since registrant's good encompass those of applicant, the involved goods must be considered legally identical. They therefore presumably travel in the same normal channels of trade to the same classes of consumers. Moreover, when the involved goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

As to the word MAGIC, Examining Attorney Toby E. Bulloff maintained that "The wording ‘MAGIC’ (or the related ‘MAGICAL’) is so commonly used within the toy industry, and specifically with respect to plush or stuffed toys, and ‘SNOWBALL’ is so rarely used, that applicant’s argument is unpersuasive." She submitted seven website excerpts showing plush toys offered under marks that include the word MAGIC, as well as six third-party registrations for marks containing the word MAGIC for plush toys. The Board was impressed.

The Federal Circuit has stated that evidence of third-party registrations is relevant to show that a segment of a mark “may have a ‘normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak,’ …” Jack Wolfskin Ausrustung FurDraussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015), quoting Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015).

The Board found this evidence "sufficient to show that the term MAGIC has suggestive significance in the field of plush toys, thereby weakening the source-indicating power of that term." Therefore, even if MAGIC is considered to be dominant in applicant's mark, it does not sufficiently distinguish the involved mark.

Nor did the Board agree that MAGIC SNOWBALL and SNOWBALL have very different meanings, as applicant claimed. According to applicant, "the likely connotation of MAGIC SNOWBALL is not a traditional snowball. The connotation of MAGIC SNOWBALL in a consumer’s mind is something imaginary or fantastical." The Board was not persuaded that, in the context of plush toys, addition of the word MAGIC thoroughly transforms the meaning of SNOWBALL.

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

Read comments and post your comment here.

TTABlog comment: This was a rather liberal application of Juice Generation and Jack Wolfskin, since there were only seven third-party uses and six third-party registrations. Seemingly, applicants seldom benefit from such a liberal approach to third-party evidence.

Text Copyright John L. Welch 2016.

TTABlog Test: Are "THE WORLDS PAGEANTS" and "MISS WORLD" Confusable for Beauty Pageants?

Miss World Limited opposed an application to register the mark THE WORLDS PAGEANTS for "entertainment in the,nature of beauty pageants," on the ground of likelihood of confusion with the registered marks MISS WORLD and MR WORLD & Design, for "entertainment Services, namely conducting of beauty competitions." The services are basically identical, but what about the marks? Is "World" a strong formative? Miss World Limited v. Camila Productions Ltd., Opposition No. 91206024 (January 7, 2015) [not precedential].

The Board found that WORLD is the only distinctive term in Applicant’s mark, since "the" lacks source-identifying significance and the disclaimed term "pageants" is generic for beauty pageants. The Board recognized that the word WORLD is "inherently somewhat suggestive" in association with the involved services, "particularly in light of the evidence that Opposer’s services are intended to be global in nature." However, the record established that Opposer’s MISS WORLD mark "has gained strength through more than 60 years of exclusive and continuous use of the mark in the United States."

The honorifics "MISS" and "MR." in Opposer's marks are merely descriptive for its services, and they "they do not significantly distinguish Opposer’s marks from Applicant’s more inclusive mark THE WORLDS PAGEANTS." The globe in Opposer's design mark emphasizes the word WORLD common to both marks.

Consumers aware of Opposer’s use of MISS WORLD and MR WORLD (and design) in connection with pageants would likely believe that Applicant’s mark is a reference to both of Opposer’s pageants.

Finding that the first and second du Pont factors weigh in opposer's favor, the Board sustained the opposition.

Read comments and post your comment here. Note that applicant did not submit evidence (nor did it file a brief).

TTABlog comment: If applicant had shown that the word "WORLD" is use by a number of other beauty pageants, would that proof have made a difference? See, for example, the Juice Generation and Jack Wolfskin cases.

Text Copyright John L. Welch 2016.

Single Location Restaurant Not Operating in Interstate Commerce, Says TTAB

The Board sustained this Section 2(d) opposition to registration of the mark FLATIZZA for "pizza," finding that Applicant Janco, LLC had not used the applied-for mark in commerce prior to to the filing of its use-based application to register. Applicant operated a single restaurant in Bothell, Washington, but the Board found insufficient evidence to show that the restaurant operated in interstate commerce. Doctor’s Associates Inc. v. Janco, LLC, Opposition No. 91217243 (January 7, 2016) [not precedential].

The Board observed that there is no particular threshold level of interstate activity required for proof of use by a single-location restaurant, but some use "in commerce" must be shown.

In this case, Applicant has not shown that its services were rendered to any out-of-state customers. Its restaurant was not shown to have been listed in any travel or restaurant guide. No advertising has been submitted. The record does not support a finding that any viewers (from out-of-state or otherwise) accessed Applicant’s website, and the business plan and menu mock-ups were for internal use only. Nor has Applicant shown that its services affected interstate commerce.

Although Bothell, Washington is near Seattle, it is not on an interstate highway: "[W]hile I-5 traverses Seattle, it is speculation to assume that out-of-state travelers would travel 3 miles off the Interstate highway to patronize Applicant’s restaurant, especially given that the route from I-5 to Bothell would require either driving the distance in a reverse direction or taking side roads."

The Board therefore found the application to be void ab initio because the mark was not in use in commerce prior to applicant Section 1(a) filing date.

Read comments and post your comment here.

TTABlog comment: What I find confusing about this decision is that the Board treats the opposed mark as if it were a service mark for restaurant services, rather than a trademark for pizza. Not that the result would be any different.

Text Copyright John L. Welch 2016.

WYHA? "PALMS FREE" Merely Descriptive of Phone Holders, Says TTAB

The USPTO refused to register the mark PALMS FREE for "universal phone holders and harnesses," deeming the mark to be merely descriptive under Section 2(e)(1). Examining Attorney Christopher Law contended that the applied-for mark "directly conveys to consumers that Applicant’s product has a hands-free feature that permits users to use their hands for purposes other than holding the phone." Would You Have Appealed? In re Palms Free Inc., Serial No. 86229868 (January 5, 2016) [not precedential].

Based on dictionary definitions of "palm" ("[t]he inner surface of the hand that extends from the wrist to the base of the fingers) and "free" ("not subject to external restraint" and "not bound, fastened, or attached"), the Board concluded that, "when used in connection with a universal phone holder or harness, the term PALMS FREE means an unencumbered hand."

Applicant itself explained that the "applied-for mark PALM S FREE will be used with a universal phone holder and/or harness that frees the user’s palms and permits them to be used for other purposes while using a phone." Thus, PALMS FREE describes a feature of applicant's products (i.e., "that using a phone will be a hands-free event").

Applicant feebly argued that its mark describes "no particular device" that might be operated hands-free, but the Board was not moved. "[T]he mark PALMS FREE describes a feature or purpose of the products by directly conveying to consumers that their hands will be unencumbered."

Finally, the Board pointed out once again that even if applicant were the first and only user of the term PALMS FREE, that alone does not make the term distinctive.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Well, WYHA?

Text Copyright John L. Welch 2016.

TTABlog Test: Is "E GAR" Merely Descriptive of Electronic Cigars?

The USPTO refused to register the mark E GAR, finding it merely descriptive of the goods: "Electronic Cigars, Namely, an electronic device to heat liquids to create a vapor for a human to inhale by mouth being a battery, an LED light source, a mouthpiece, and a cartomizer, in the nature of a compartment for the fluid to be heated, a heating coil, and a vaporizing chamber." Applicant admitted that "E" is an abbreviation for "electronic," but denied that "GAR" is short for "cigar." How do you think this came out? In re Land Sky Sea, LLC, Serial No. 85923067 (January 4, 2016) [not precedential].

The word "namely," when used in an identification of goods, typically focuses the application on the particular words following the word "namely." Here, however, the additional language merely provides a detailed description of the function of the various components of applicant's devices. And so the Board found the goods to be, simply, "electronic cigars."

Applicant contended that "[a] substantial portion of U.S. consumers do not understand the term
E GAR to refer to an electronic non-tobacco inhaling device which does not contain tobacco." Rather, they would see the term as an arbitrary or coined term.

The Board found that "E GAR" is a readily understandable abbreviation of "electronic cigar," and is consistent is consistent with evidence showing that electronic cigarettes are referred to as "E Cigarettes," which may be abbreviated as "Ecig." Moreover, third parties have referred to electronic cigars as "E-Cigars."

More importantly, Examining Attorney Jacquelyn A. Jones submitted evidence of third-party use of "E-GAR" and "e-gar" in association with electronic cigars: e.g., "From the website howtovape.com, under the heading “What is a Personal Vaporizer (Electronic Cigarette)? " the statement that: "There also exist an E-Cigar (sometimes called an E-Gar), and an E-Pipe."

The Board observed also that even if applicant had been the first and only user of "E-gar," the mark would still have been merely descriptive of the goods.

Based on careful consideration of all the record evidence, we find that consumers viewing the term E GAR would recognize it as an abbreviation of “e cigar” or electronic cigar. Therefore, E GAR is merely descriptive in association with Applicant’s goods in that it immediately conveys knowledge of features or characteristics of those goods, that is, that they are electronic cigars.

And so the Board affirmed the Section 2(e)(1) refusal.

Read comments and post your comment here.

TTABlog comment: WYHA? At first, I was thinking that a "gar" is a needle-shaped fish, and an e-gar an electronic needle-shaped fish. But once you put "e-gar" in the context of electronic cigars, well, forget the fish.

Text Copyright John L. Welch 2016.

TTAB Finds Monster's Flat Cable Design Functional and Generic

The Board affirmed two refusals to register, on the Supplemental Register, the product configuration shown below for "Headphone cables sold as an integral component of headphones," on the grounds of functionality and genericness. The marks "consists of a headphone cable having a cross-section in the form of an oblong, wherein the cable features contoured outer edges and is significantly wider than it is thick." In re Monster Cable Products, Inc., Serial No. 85318060 (December 28, 2015) [not precedential].

Functionality: Applying the Morton-Norwich factors, and guided by the CAFC's decision in In re Becton, Dickinson and Co., 102 USPQ2d 1372 (Fed. Cir. 2012) [TTABlogged here], the Board concluded that the proposed mark is, as a whole, functional. Applicant Monster's utility patent disclosed the usefulness of (it doesn't tangle), and claimed, the flat cable design. Although the patent did not discuss the contoured sides of the flat cable, that aspect of the design was, according to the Board, "imperceptible and inconsequential." Monster's advertising emphasized the non-tangle benefit of the headphone cable, attributing this feature to the fact that the cable is "significantly wider than it is thick."

The Board reviewed a number of alternative cable designs submitted by Monster - although the Board did not have to consider them in view of the persuasive impact of the patent and advertising evidence. These alternative designs, the Board found, did not offer the same features as Monster's configuration.

The Board concluded that the applied-for mark is functional under Section 23(c), and therefore unregistrable on the Supplemental Register.

Genericness: A product design may be found generic when the design is "at a minimum, so common in the industry that it cannot be said to identify a particular source." Stuart Spector Designs Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1555 (TTAB 2009) [Guitar shape] [TTABlogged here].

The Board found that Examining Attorney Kim Teresa Moninghoff had submitted ample evidence that other entities provide headphone cables that are oblong and have curved or rounded edges that are the same as, or highly similar to Monster’s design: i.e., headphone cables that are significantly wider than thick, and have curved or rounded side contours.

The Board concluded that Monster's applied-for mark is a "generic design for flat headphone cables, incorporating the common, basic elements of an oblong cross-section (i.e., wider than it is thick) and curved edges."

Read comments and post your comment here.

TTABlog comment: Do you think this case will go up on appeal? How do you think it will come out?

Text Copyright John L. Welch 2016.