Friday, September 30, 2016

TTAB Quarterly Index: July-September 2016

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Section 2(a) - Deceptiveness:
Section 2(a) - False Association:
Section 2(d) - Likelihood of Confusion:

Section 2(e)(1) - Mere Descriptiveness:
Section 2(e)(1) - Deceptive Misdescriptivenss:
Section 2(e)(2) - Geographically Descriptive:
Section 2(e)(3) - Geographically Deceptively Misdescriptive:


Section 2(e)(4) - Primarily Merely a Surname:
Section 2(e)(5) - Functionality:
Section 2(f) - Acquired Distinctiveness:
Abandonment:
Application Requirements/Lawful Use/Specimen of Use:
Concurrent Use:
Dilution:


Failure to Function:
Fraud:
Genericness:
Unclean Hands:
Discovery/Evidence/Procedure:
Recommended Reading:
Other:
Text Copyright John L. Welch 2016.

posted by John L. Welch @ 9/30/2016   0 comments

Precedential No. 28: Claim Preclusion Inapplicable To Fraud Claim Due To Different Transactional Facts

The Board entered summary judgment in favor of petitioner on the issue of claim preclusion in this proceeding seeking cancellation of a registration for the mark DANTANNA'S for "steak and seafood restaurant." Respondent contended that petitioner's sole claim, based on the allegedly fraudulent filing of a Section 15 declaration, could have been raised in an earlier cancellation proceeding brought by petitioner and dismissed for failure to prosecute, and therefore the claim was barred in this second proceeding. The Board, however, ruled that the claim of fraud in this proceeding was not based on the same transactional facts as the earlier fraud claim, and therefore was not barred. Chutter, Inc. v. Great Concepts, LLC, Cancellation No. 92061951 (August 30, 2016) [precedential].


The earlier petition for cancellation was based on Section 2(a) false association and on fraud, the latter claim being founded on the allegation that respondent, while prosecuting the underlying application, failed to inform that examining attorney that the mark identified a living individual. That earlier proceeding was suspended pending the outcome of a lawsuit between the parties, and during the suspension respondent filed its combined Section 8 and 15 declaration, stating that there was "no proceeding involving the rights [to register the same or keep the same on the register] pending and not disposed of either in the U.S. Patent and Trademark Office or in the courts."

When the lawsuit ended, the Board sua sponte reviewed the petition for cancellation and found both claims insufficiently pleaded. It allowed petitioner to file an amended petition, but petitioner did not do so, and so the Board dismissed the proceeding with prejudice.

Respondent argued that petitioner is now barred from raising the issue of fraud vis-a-vis the Section 15 declaration because that claim could have been raised in the prior proceeding, but was not.

Under the doctrine of claim preclusion (f/k/a res judicata), a judgment on the merits in a prior suit bars a second suit involving the same parties (or their privies) and based on the same cause of action. "A valid and final judgment rendered in favor of the defendant bars another action by the plaintiff on the same claim and encompasses claims that were raised or could have been raised in the earlier action."

In short, a second suit will be barred by claim preclusion if :  (1) there is identity of the parties (or their privies); (2) there has been an earlier final judgment on the merits of a claim; and (3) the second claim is based on the same set of transactional facts as the first.

Here there was no dispute as to the first and second requirements. As to the third, however, respondent maintained that petitioner could have brought the fraud claim based on respondent's Section 15 filing before the first cancellation proceeding was dismissed.

The Board observed, however, that the phrase "could have been raised" does not refer to any claim whatsoever that was ripe at the time of or during the prior proceeding, but only to "a different cause of action or theory of relief" based on "the same transactional facts" as earlier involved.

The Restatement of Judgments refers to a "common nucleus of operative facts." "[R]elevant factors include whether the facts are so woven together as to constitute a single claim in their relatedness in time, space, origin, or motivation, and whether, taken together, they form a convenient unit for trial purposes." The precedents caution against readily extending claim preclusion to claims that were not before the court, particularly when the prior action was dismissed on procedural grounds.

The Board noted that here the first fraud claim concerned a failure to reveal during ex parte examination of the underlying application, that the mark identified a living individual. In contrast, the second proceeding involves alleged fraud based on a different representation made at a time removed by six years from the ex parte issue involved in the prior proceeding. The earlier claim involved communication with the examining attorney, while the later claim involved communication with the Post Registration Section of the USPTO. "These are very different fact sets, and the transactions are unrelated; they are not "so woven together as to constitute a single claim in their relatedness in time, space, origin, or motivation ...."

Therefore the Board denied respondent's motion for summary judgment and instead entered summary judgment sua sponte in favor of petitioner on the defense of claim preclusion.


Read comments and post your comment here.

TTABlog comment: Query: is the Section 15 declaration material to the validity of the registration? Fraud requires materiality. A Section 8 declaration must be filed, and so it is material to the continued viability or maintenance of the registration. But the Section 15 declaration is voluntary.

Section 15 incontestability refers to the exclusive right to use the mark. It has nothing to do with maintenance of the registration, nor is it needed to invoke the Section 14 five-year statute of limitations on cancellation petitions. Can fraud on the USPTO be found where the false statement is not material to the viability or maintenance of the registration? Where is the materiality here?

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 9/30/2016   0 comments

Thursday, September 29, 2016

Precedential No. 27: TTAB Rejects Fraud Claim in QUIRK Cancellation Proceeding

The Board dismissed a petition for cancellation of registrations for the marks QUIRK and QUIRK AUTO PARK for "automobile dealership" because petitioner failed to prove its claim of fraud on the USPTO. Petitioner asserted that respondent's underlying applications were executed fraudulently because respondent knew of and failed to disclose petitioner's allegedly prior rights in the marks QUIRK and QUIRK WORKS TO SAVE YOU MONEY for auto dealerships. However, petitioner failed to establish its prior rights, and it also failed to demonstrate that respondent intended to deceive the USPTO. Daniel J. Quirk, Inc. v. Village Car Company, 120 USPQ2d 1146 (TTAB 2016) [precedential].


As we all know, fraud must be proven "to the hilt" with clear and convincing evidence. To prevail on its fraud claim, petitioner was required to prove that:

(1) Petitioner was the user of the same or a confusingly similar mark at the time the oath was signed;
(2) Petitioner had legal rights superior to Respondent’s rights at the time Respondent signed the applications for registration;
(3) Respondent knew that Petitioner’s rights in the mark were superior to Respondent’s and either believed that a likelihood of confusion would result from Respondent’s use of its mark or had no basis for believing otherwise; and that
(4) Respondent in failing to disclose these facts to the USPTO, intended to procure a registration to which it was not entitled.

Fraud will not lie against a party who holds an honest and good faith belief in its right to register a mark, and who verifies the statutorily prescribed ownership statement, which is phrased in terms of subjective belief.

As to the first requirement, the evidence showed that petitioner was using the term QUIRK at the time respondent filed its underlying applications. As to priority, however, petitioner's evidence fell short of proving it was the first user of the QUIRK marks.

The parties proceed via Accelerated Case Resolution (ACR), stipulating that each could rely on the evidence submitted with their earlier, unsuccessful cross-motions for summary judgment. Petitioner relied on its own interrogatory responses, which was allowable because the responses had been submitted with its summary judgment motion. Nonetheless, the Board gave the responses limited weight. Although oral testimony may suffice to establish priority, petitioner's interrogatory responses "are not oral testimony, and are not conclusive on the question of priority." The Board deemed the interrogatory responses ineffective to prove petitioner's priority.

Because petitioner failed to prove superior rights in the mark QUIRK, its fraud claim failed. The Board nonetheless proceeded to consider the issue of fraudulent intent, finding that the record evidence was insufficient.

Respondent acknowledged that, at the time its underlying applications were signed, it was aware that petitioner was using its mark QUIRK in Southeastern Massachusetts. However, respondent stated that it believed that no likelihood of confusion would result from concurrent use of the marks because respondent was located in Maine, 250 miles from petitioner. There was nothing in the record to indicate that this was not an honest belief that respondent had superior rights because petitioner's use was merely intrastate. While that belief may have been mistaken, that does not amount to fraud.

Petitioner contended that "[t]he simple act of causing the .... Applications to be filed ... demonstrates the intention to procure registrations to which [respondent] was not entitled." The Board, however, observed that the mere filing of an application does not provide an inference that the applicant intended to deceive.

Petitioner also contended that deceptive intent may be inferred from respondent's unprompted disclosure to the USPTO of petitioner's use. The Board, however, saw that disclosure as demonstrating the opposite of a bad intent.

Finally, petitioner asserted that intent may be inferred from the fact that, based on his education, intellect, and experience in signing important documents, respondent's president would appreciate "the legal consequences - and pitfalls - of singing oaths while withholding personal knowledge of information to the contrary." The Board was unimpressed, noting that Mr. Quirk demonstrated candor in his communications with the USPTO.

To prove fraud, petitioner was required to provide specific facts supporting an inference of respondent's fraudulent intent. No evidence illuminated respondent's beliefs as to its rights in the QUIRK or QUIRK-formative marks, or its beliefs as to the likelihood of confusion between the involved marks. In short, petitioner failed to show, by direct or indirect evidence, that respondent intended to deceive the USPTO.

And so the Board dismissed the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: The treatment of petitioner's interrogatory responses as being insufficient to prove priority was an interesting quirk in the decision. Perhaps interrogatory responses are downgraded because they are typically prepared by the attorney involved, as opposed to live testimony under oath and subject to cross-examination. But then, why accept affidavits or declarations?

In the third requirement for fraud, listed above, the "no reason for believing otherwise" language is interesting. Does this suggest that fraud may be based on reckless disregard for the truth? On willful blindness?

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 9/29/2016   2 comments

Wednesday, September 28, 2016

Rejecting Abandonment by Naked Licensing, TTAB Sustains 2(d) Opposition to LUCKY DILL for Restaurant Services

The Board sustained this opposition to registration of LUCKY DILL in the design form shown below, for food kiosk and restaurant services, finding it likely to cause confusion with Opposer's common law mark LUCKY DILL and THE LUCKY DILL for restaurant services. Applicant asserted that opposer abandoned its mark through naked licensing, but the fact that LUCKY DILL continues to identify opposer negated any inference of abandonment. CB Specialists, Inc. v. Central Avenue Deli, LLC d/b/a Lucky Dill Deli, Opposition No. 91212366 (September 26, 2016) [not precedential].


The Mitow family opened the first LUCKY DILL restaurant in the Tampa area in 1991. Jason Mitow, son of the founder, opened three more LUCKY DILL restaurants. Applicant operates a restaurant on Central Avenue in St. Petersburg, which it purchased in 2008 as an ongoing business, under the name "Lucky Dill Deli."

Applicant contended that opposer abandoned its rights in the name LUCKY DILL by allowing Jason Mitow and then subsequent purchasers of his three restaurants to continue to use the name without quality control. The Board, however, found that Jason opened the three restaurants with the implicit consent of opposer, and that a license can be implied. Opposer relied on Jason to control the quality of the goods and services offered.

Jason was trained by his parents to run a restaurant. His mother developed standards that Jason followed. She knew Jason was using the marks, she was familiar with and visited the restaurants, and she taste-tested menu items and gave her approval.

While there was no formal system of quality control over the restaurants opened by Jason, an inference of abandonment is not drawn if satisfactory quality has been maintained such that no deception of purchasers has occurred.

The next question was whether, after Jason sold his three restaurants, opposer engaged in naked licensing with the subsequent owners, resulting in the abandonment of the LUCKY DILL mark. Applicant contended that opposer and two unrelated parties operated restaurants within 30 miles of each other under the name "Lucky Dill."


The Board, however, found that because LUCKY DILL continues to identify opposer as one of the sources of the restaurant services, opposer has not abandoned its mark. "[A] mark becomes abandoned only when the mark loses all significance as an indication of origin in the mark holder, not merely because it  may longer be viewed as indicating only the mark holder as a single source."

Moreover, unrestricted rights to use the LUCKY DILL name were not necessarily transferred with the sale of the business to applicant. Opposer did not give Jason the right to sell the name. Moreover, the mark involved in this proceeding is different from the name "The Lucky Dill Deli," which applicant received with its purchase of the restaurant in 2008. Applicant purchased only the rights to that trade name at one location. In 2008, the other two "Lucky Dill" restaurants that Jason sold were out of business.

[R]egardless of whether Applicant may have a right to use the Lucky Dill name at its location, the fact that LUCKY DILL continues to identify Opposer as one of the sources of the restaurant services, negates any inference of abandonment.

Turning to the Section 2(d) issue, the Board found that opposer has priority, that the services are identical in part, and that the marks are very similar.

And so the Board sustained the opposition.

Read comments and post your comment here.

TTABlog comment: Just what rights does Applicant own in "Lucky Dill Deli"? Will applicant oppose opposer's pending application, filed in 2013? On what ground(s)? Did you notice that I showed great restraint in not using the word "pickle" to describe applicant's predicament?

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 9/28/2016   3 comments

Tuesday, September 27, 2016

TTAB Test: Is "HOPNOTIC" for Beer Confusable With "HPNOTIQ" for Liqueur?

Heaven Hill Distilleries petitioned to cancel Cricket Hill's registration for the mark HOPNOTIC for "beer" on the ground of likelihood of confusion with the registered mark HPNOTIQ for "liqueur." Heaven Hill proved priority, and since all beverages are related at the TTAB [as a practical matter], it all came down to the marks. How do you think this came out? Heaven Hill Distilleries, Inc. v. Cricket Hill Brewing Co., Inc., Cancellation No. 92060811 (Sept. 23, 2016) [not precedential].


Relatedness of the Goods: Beer and liqueur are sold in the same channels of trade to the same classes of consumers. Moreover, brand extension have become more frequent in the alcoholic beverage industry. Even if consumers are aware of the difference in the manufacture of beer and liqueur, they may assume that there is a licensing arrangement concerning the two.

Conditions of Purchase: Beer is an inexpensive drink and may be purchased on impulse. Liqueurs are more expensive, but are still relatively inexpensive items. A cocktail containing HPNOTIQ liqueur may cost as little as $5.00.


Strength of Petitioner's Mark: The Board concluded that consumers would understand petitioner's mark to be the equivalent of "hypnotic," an arbitrary term for liqueurs. In addition to the inherent strength of the mark, the evidence established that the mark HPNOTIQ is a "big brand" with larger sales than popular brands like Chambord and Cointreau. And there was no evidence of third-party use or registration of a mark having a "hypnotic" or "hypnosis" formative. The Board therefore concluded that HPNOTIQ is a strong, but not famous, mark.

The Marks: Consumers who make impulse purchases are not likely to notice the different spellings of the marks. Even if consumers notice the "O" in respondent's mark, they will see HOPNOTIC as a variation of the HPNOTIQ mark that suggests a connection between "hops" and beer.

The marks are also similar in pronunciation. In a noisy bar, a waiter or bartender may not be able to distinguish between the two. Although when the customer is served the error would be corrected, there still would be initial confusion. Even putting aside the similarity in sound, the similarity in meaning dictates a finding in favor of petitioner regarding this du Pont factor.

The Board concluded that, when the marks are considered in their entireties, they are similar in appearance, pronunciation, meaning and commercial impression.

Lack of Confusion Evidence: Respondent argued that the lack of actual confusion despite twelve years of concurrent use, was dispositive. The Board, however, pointed out that there was almost no evidence of the extent of respondent's use of its mark, and so it was not possible to determine whether there has been a reasonable opportunity for confusion to occur. In any case, it is not necessary to show actual confusion in order to prove likelihood of confusion.

After considering all the relevant du Pont factors, the Board found confusion likely and it granted the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: How did you do? In the real world, do you think anyone would be confused as to the source of these two products?

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 9/27/2016   4 comments

Monday, September 26, 2016

Mark Your Calendar: USPTO's National Trademark Expo: October 21-22

Mark your calender for the USPTO's National Trademark Expo to be be held on October 21st and 22nd at the Andrew W. Mellon Auditorium, 1301 Constitution Ave. NW, Washington, D.C. More information here.

 

The Expo is open to any owner of a federally-registered trademark. This free, family-fun, educational event includes exhibitors, kids programs, costumed characters, seminars, and more. The Andrew W. Mellon Auditorium is a very brief walk from the Federal Triangle Station of the Washington Metropolitan Area Transit Authority (WMATA) subway station and provides very convenient access.

The theme of the 2016 Expo is “Movement and Energy.” Space is limited. Those interested in applying should submit the 2016 Application to exhibit.


Read comments and post your comment here.

Copyright John L. Welch 2016.

posted by John L. Welch @ 9/26/2016   0 comments

Precedential No. 26: Finding a Repeating Pattern Not Distinctive, TTAB Affirms Failure To Function Refusal of Hookah Ornamentation

The Board affirmed a refusal to register the proposed mark shown below, consisting of a repeated diamond pattern applied to the lower third of the cylinder of "electronic hookahs," deeming it to be a non-distinctive, merely ornamental design that lacks acquired distinctiveness under Section 2(f). In re Fantasia Distribution, Inc., 120 USPQ2d 1137 (TTAB 2016) [precedential].


The Board noted that the refusal to register is consistent with TMEP Section 1202.19 (April 2016), incorporating a 2015 USPTO examination guide that addressed the potential lack of inherent distinctiveness of repeating patterns because they often serve an ornamental function. Analogous to color and product design, repeating patterns are often used to make products more attractive, and so consumers would not be predisposed to equate the pattern with source. The Board did not rule out the possibility that a repeating pattern could be inherently distinctive, but in most cases it would not be. "A pattern may function as a mark only 'if it is arbitrary and distinctive and its principal function is to identify and distinguish the source of the goods to which it is applied ....' See In re Soccer Sport Supply Co., 184 USPQ 345, 347 (CCPA 1975)."

Inherent Distinctiveness: To assess the inherent distinctiveness of the pattern, the Board followed Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 196 USPQ 289 (CCPA 1977), adapting its factors to the following:
  • the nature of Applicant's goods and whether there is an industry practice of ornamenting such goods;
  • the nature of the pattern, including whether any element of the pattern might be perceived as source indicating if it were standing alone;
  • how common the pattern is, whether it is composed of common or unusual repeating shapes, whether such shapes repeat in a common or unusual manner, and whether the overall pattern is similar to, or a mere refinement or variation of, a common or well-known form of ornamentation;
  • the manner in which the repeating pattern appears on the product, including the size and location of the pattern on the product and how much of the product is covered by the pattern; and
  • whether the pattern creates a distinct commercial impression apart from any accompanying wording and design elements.


Examining Attorney April Roach submitted evidence regarding three other brands of electronic hookahs that display patterns placed at one end of the device, in a manner similar to applicant's pattern, contending that this evidence demonstrated that such placement of ornamental designs is a common practice in the industry. The Board rejected applicant's contention that the evidence must show other diamond patterns, pointing out that even if applicant's is the first and only user of a diamond pattern, that fact alone "does not imbue the design with source-identifying significance, where Applicant's design merely repeats an ordinary shape in an unremarkable pattern and places it on the goods in an unremarkable way."

Applicant's basic diamond pattern blends with other elements of the trade dress and does not make a distinct commercial impression. It appears in a location often used for ornamentation in this industry.

The Board concluded that applicant's repeating diamond pattern is not inherently distinctive. It "plays a significant role in giving the devices an attractive appearance," and consumers would not be predisposed to view the pattern as source-indicating.

Acquired Distinctiveness: Of course, an ornamental element may be registrable as a trademark on the Principal Register upon proof of acquired distinctiveness. The Board found, however, that applicant's proofs fell short. There was no evidence of "look for" advertising, and the handful of Internet references to applicant's diamond pattern did not indicate its significance. The evidence showed that applicant's are sold in packaging that hides the diamond pattern from view. Moreover, the wording and pattern color signify the flavor of the hookah, and thus the diamond pattern blends with the other elements of trade dress rather than standing out on its own.

The Board therefore concluded that the proposed mark lacks acquired distinctiveness.

And so the Board affirmed the refusal to register under section 1, 2, and 45 of the Trademark Act.

Read comments and post your comment here.

TTABlog comment: It seems to me that if ornamentation at the lower end of the hookah is common in the industry, this may indeed be a way of distinguishing source.

Maybe applicant should try to register this at the U.S. Pattern and Non-Trademark Office.

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 9/26/2016   2 comments

Friday, September 23, 2016

TTAB Test: How Did These Four Section 2(d) Appeals Turn Out?

I once heard a TTAB judge say that the outcome of most Section 2(d) likelihood of confusion cases may be predicted just by looking at the marks and the identified goods/services, without more. Well, try that approach on these four recent appeals that were decided two days ago, keeping in mind that about 85% of Section 2(d) appeals result in affirmance of the refusal. How do you think these came out? [Answer in first comment.]


In re Universal Entertainment Corp., Serial No. 79161731 (September 21, 2016) [not precedential]. [Section 2(d) refusal of GODDESSES HERA for gaming machines, slot machines, and the like, in view of the registered mark HERA’S GOLD for computer game software and gaming].


In re Peag, LLC, Serial No. 86019875 (Se, 2016) [not precedential]. [Section 2(d) refusal of EPIC BY JLAB, in the stylized form below, for "ear buds," in view of the registered mark EPIC for "loudspeakers."


In re Oncor Corporation aka DMK Cosmetics, Serial No. 86131491 (September 21, 2016) [not precedential]. [Section 2(d) refusal of A2Z for"skin care products, namely skin cleansers,non-medicated exfoliating gels for skin, non-medicated acne treatment preparations," in view of the registered mark HEALTHA2Z for pharmaceuticals for the treatment of various conditions, including acne, and for other drugs].


In re The Line and Dot LLC, Serial No. 86170528 (September 21, 2016) [not precedential]. [Section 2(d) refusal of LUMIÈRE for "women's clothing, namely blouses tops dresses, pants and sweaters," in light of the registered mark LUMIERE PLACE for "Blouses; Coats; Foul weather gear; Gloves; Headwear; Jackets; Jogging suits; Pants; Polo shirts; Robes; Shirts; Shorts; Socks; Sweat pants; Sweat shirts; Sweaters; Swimwear; T-shirts; Tank tops; Vests; Wristbands"].


Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 9/23/2016   4 comments

Thursday, September 22, 2016

Christopher Larkin Appointed As TTAB Administrative Trademark Judge

Christopher Larkin has been appointed to the position of Administrative Trademark Judge at the Trademark Trial and Appeal Board. His appointment brings the total number of TTAB judges to 26.


Christopher Larkin comes to the Board from his position as a partner in the Los Angeles law firm of Seyfarth Shaw LLP. He has been a partner there since 2002 and at other firms for the preceding 15 years. Previous law firm partner positions include those at the Los Angeles firms of Small Larkin and Graham & James. Before taking on his first partnership position, Mr. Larkin served as an associate in the firms of Graham & James and Townley & Updike (in New York). In all of these law firm positions, spanning 35 years of law practice, Mr. Larkin has been involved in a wide-ranging intellectual property practice, focused primarily on such matters as trademark clearance, prosecution, counseling, licensing and litigation. The litigation practice has involved proceedings in state and federal courts, including federal appellate courts, and before the Trademark Trial and Appeal Board.

Mr. Larkin has also served many years as a Lecturer in Law at the University of Southern California Law School, teaching Internet Law, Trademark Law and Trademark Law in Practice. His professional affiliations are many and varied, and include a number of leadership positions on committees of the International Trademark Association (INTA). He was the author of the INTA amicus curiae brief to the United States Supreme Court in Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995). Mr. Larkin has been a frequent author, lecturer and presenter on trademark topics for more than 20 years and has co-chaired six Practising Law Institute programs on practice before the USPTO and TTAB in trademark matters.

A Phi Beta Kappa graduate of Stanford University, Mr. Larkin earned his J.D. from Columbia Law School in New York, where he was a Harlan Fiske Stone Scholar and a Young B. Smith Prize recipient.

Read comments and post your comment here.

Text (except for quoted material) Copyright John L. Welch 2016.

posted by John L. Welch @ 9/22/2016   0 comments

Wednesday, September 21, 2016

Erik Pelton's Report on Sept. 16th TPAC Meeting

A tip of the fedora to FOTTABlog Erik M. Pelton, who once again provides a report (here) on the latest meeting of the Trademark Public Advisory Committee (a/k/a TPAC). Note particularly the slides provided at the end of Erik's blog post.


With regard to our favorite tribunal, TTAB Chief Administrative Trademark Judge Gerard Rogers reported the following:
  • The latest TTAB pendency statistics were reviewed (see slides), showing that pendency times in general continue to decrease.
  • New proceeding filings at the TTAB are up considerably in FY2016, including Notice of Opposition filings up 11%.
  • New TTAB Judge Christopher Larkin begins work this week.
  • The TTAB rulemaking package will be issued this month, with an effective date of January 14, 2017.
  • The new rules will apply to all cases, with judges having discretion where needed in applying them to pre-existing cases.
  • The new rules retain the Board processes considered significant by the Supreme Court last year in B&B Hardware.

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 9/21/2016   0 comments

Tuesday, September 20, 2016

TTAB Denies Unclean Hands Defense, Grants AACHI Cancellation Petition

In a rare decision discussing the affirmative defense of unclean hands, the Board granted a petition for cancellation of a registration for the mark AACHI AAPPAKADAI & Design for "restaurant and catering services" [AAPPAKADAI disclaimed], finding the mark likely to cause confusion with petitioner's registered mark AACHI for various food products. The Board dismissed respondent's fraud defense since the validity of a pleaded registration may be attacked only via a counterclaim for cancellation. But the Board entertained respondent's unclean hands defense, ultimately finding it wanting. Aachi Spices & Foods v. Kalidoss Raju, Cancellation No. 92058629 (September 13, 2016) [not precedential].


Unclean hands The Board dismissed all eleven of respondent's so-called affirmative defenses, including laches, "fair use," and fraud. The unclean hands defense merited the most attention. The Board observed that "[t]he equitable doctrine of unclean hands prevents a plaintiff from relying on its registration if it made a false statement during the prosecution of its application for registration or maintenance of its registration."

Petitioner, in obtaining its two registrations, stated that "aachi" means "distinguished lady" in English. Respondent asserted that that statement was false, since "aachi" should properly be translated as "grandmother." According to respondent, had petitioner provided a proper translation, the PTO would have conducted a search of all marks that contained the words grandmother, mother, and grandma, and would have found hundreds of trademarks. The PTO may then have refused registration of petitioner's mark.

However, the evidence showed that "aachi" has several meanings (e.g., distinguished lady, elderly woman, grandmother, etc.), and so the Board could not find that petitioner made a false statement in its translation. Moreover, it was not clear that the examining attorney would have translated the word as "grandmother," nor was there any evidence that an appreciable number of consumers would be aware that the Tamil word "aachi" means "grandmother." Finally, respondent did not provide any evidence to support its assertion that there are numerous marks comprising the words "grandmother," etc.


Likelihood of Confusion: Although finding that the word AAPPAKADAI is the dominant part of respondent's mark, the Board found the involved marks to be similar in appearance, sound, connotation, and commercial impression. Consumers may believe that AACHI AappaKadai is the restaurant and catering line of the AACHI food products company

To show the relatedness of the involved goods and services, petitioner introduced 450 use-based, third-party registrations covering both food products and restaurant and/or catering services. Excerpts from 31 websites demonstrated that restaurant and grocery store services, and particularly Indian restaurant and grocery services, move in the same channels of trade to the same classes of consumers.

The Board noted that under Jacobs v. International Multifoods Corp., a party must show something more than that similar or even identical marks are used for food products and restaurant services, in order to establish likelihood of confusion. Applicant's evidence of third-party use and registration, along with the fact that the involved marks share a similar arbitrary term, satisfied that requirement.

Read comments and post your comment here.

TTABlog comment: For some reason, this case reminded me of former Mets pitcher Bob Apodoca.


Text Copyright John L. Welch 2016.

posted by John L. Welch @ 9/20/2016   1 comments

Monday, September 19, 2016

TTABlog Tweets and Re-Tweets

If you are not a Twitter subscriber, you missed these recent TTABlog tweets and re-tweets @TTABlog.

Gainesville, Florida

Massachusetts district court denies preliminary injunction motion in HEALTH NEW ENGLAND trademark dispute (here).


Beneath Louis Vuitton’s inability to take a joke, a serious First Amendment question. (here)


Looking for a basic primer on Design Patents? Try this.


Why granting TM protection to hashtags is bad. Harvard Journal of Law and Technology (here).


WIPO. At a glance: How the International Trademark System works –


Read comments and post your comment here.

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 9/19/2016   0 comments

Friday, September 16, 2016

TTAB Test: Is PROBOKNOW Merely Descriptive of a Legal Services Website?

The USPTO refused registration of the mark PROBOKNOW, in standard character form, deeming it merely descriptive of "Operating an online marketplace for providers and consumers of free and affordable legal services." The PTO maintained that the mark is the phonetic equivalent of "pro bono."Applicant argued that PROBOKNOW will not be recognized as "pro bono," but rather as a merely suggestive portmanteau of the terms "pro bono" and "knowledge." Moreover, said applicant, the mark is a double entendre. How do you think this came out? In re Proboknow, LLC., Serial No. 86790769 (September 14, 2016) [not precedential].


The Board first observed that PROBOKNOW is a novel spelling of the phonetically equivalent “pro bono.” "The novel spelling of a mark that is the phonetic equivalent of a merely descriptive word or term is also merely descriptive if purchasers would perceive the different spelling as the equivalent of the descriptive word or term."

Examining Attorney David I. Dubin submitted dictionary definitions of the term "pro bono," which made clear that the term “pro bono” merely describes legal services provided to clients who are unable to pay. Internet evidence also indicated that “pro bono” is a well-recognized term in the field of law describing legal work performed for the public good to clients who are unable to pay. Applicant's website states that it services enable 'new attorneys to gain the experience they need by connecting them with those in need." Thus prospective customers would immediately know that the services are intended for providers and consumers of free, or pro bono, legal services.

As to applicant's argument that PROBOKNOW would be perceived as a melding of "pro bono" and "knowledge," there was no evidence to support that theory, nor is such an interpretation evident from applicant's manner of use of the mark. Moreover, even if consumers perceive the mark as applicant asserts, the mark would still be descriptive of applicant's services.

As to the double entendre argument, both meanings of the mark are descriptive of the services, and therefore there is no double entendre.

Finally, even if applicant is the first and only user of the term PROBOKNOW, it is still merely descriptive of the services, because it immediately describes an essential function, feature or characteristic of the identified services.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: How did you do? PS: the Board did acknowledge once again that "there is a thin line between terms that are merely descriptive and those that are suggestive." That should make applicant feel better.

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 9/16/2016   17 comments

Thursday, September 15, 2016

Precedential No. 25: Issue Preclusion Applies to Standing, Says TTAB

In November 2015, the Board dismissed a cancellation petition brought by NH Beach Pizza LLC because NH failed to prove standing. [TTABlogged here]. NH then filed a new petition for cancellation on the same ground as the prior petition. Respondent moved for summary judgment on the basis of collateral estoppel (issue preclusion) because the issue of standing had already been decided against Petitioner NH. The Board granted the motion and dismissed the new petition. NH Beach Pizza LLC v. Cristy’s Pizza Inc., 119 USPQ2d 1861 (TTAB 2016) [precedential].


Under B & B Hardware, Inc. v. Hargis Indus., Inc., issue preclusion bars the re-litigation of the same issue in a second action.

The application of issue preclusion requires: (1) identity of an issue in the current and a prior proceeding; (2) actual litigation of that issue in the prior proceeding; (3) that determination of the issue was necessary in entering judgment in the prior proceeding; and (4) that the party with the burden of proof on that issue in the second proceeding had a full and fair opportunity to litigate the issue in the prior proceeding.

There was no factual dispute that would preclude entry of summary judgment.

As to the first element, Petitioner pled the same basis for its standing as in the first proceeding: that it uses "the generic term ‘beach pizza’” to promote its goods and that respondent claimed that this usage caused actual consumer confusion.

As to the second element, the issue of standing was actually litigated and decided in the prior proceeding. The fact that the basis for the decision was NH's failure to provided evidence of its standing does not change the fact that the issue was actually litigated.

NH wrongly asserted that the original case was dismissed "without prejudice." The Board noted that the case was "dismissed." In any event, even in a case dismissed without prejudice, the issue decided is subject to issue preclusion. Claim preclusion may not apply, but issue preclusion will bar the re-litigation of the same standing argument in a second proceeding.

The Board pointed out that NH could have rectified its evidentiary deficiencies by pursuing an appeal of the Board’s decision pursuant to Section 21(b) of the Trademark Act, 15 U.S.C. § 1071(b), which would have allowed NH an opportunity to submit new evidence regarding its standing. [As I suggested in the first blog posting - ed.].

The third factor was met because the standing determination was necessary to the Board's prior decision. "Indeed, it was the reason that the Board dismissed the Prior Action."

Finally, the fourth factor was satisfied because Petitioner NH was fully represented in the prior proceeding and had a full and fair opportunity to introduce testimony or other evidence on the issue of its standing. .

And so the Board dismissed the petition for cancellation with prejudice.

Read comments and post your comment here.

TTABlog comment: Double ouch!

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 9/15/2016   0 comments

Wednesday, September 14, 2016

TTAB Test: Are These Design Marks Confusable for Jewelry?

Omega SA opposed an application to register the mark shown to the right, for jewelry, claiming a likelihood of confusion with its registered and common law marks (shown below) for watches and watch parts, and for jewelry. The Board found the goods to be identical and/or closely related (not surprisingly), and Opposer's marks to be famous for Section 2(d) purposes. But are the marks confusingly similar? Well, close enough to result in a divided panel decision. Omega SA (Omega AG) (Omega LTD.) v. Derral Leon Reynolds, Opposition No. 91197643 (September 12, 2016) [not precedential].


The panel majority observed that "[t]he Lanham Act's tolerance for similarity between competing marks varies inversely with the fame of the prior mark." [Strike One?] Moreover, when the involved goods are identical, a lesser degree of similarity between the marks is needed to support a finding of likely confusion. [Strike Two?] And in his application, Applicant Reynolds stated that his mark consists of "the Greek letter Alpha nestled inside of the Greek letter Omega." [Strike Three?]

Consumers will likely pronounce Opposer's marks as "omega." Applicant, by his statement, considers the letter "Ω" to be a readily discernable part of  his mark. "If he articulates the 'omega' component of his mark, as he does in the description of his mark, it is likely that his consumers will also articulate the 'omega' component of his mark." [That seems like a nonsequitur to me - ed.].

The panel majority found that the Greek letter "Ω" is readily recognizable in Applicant's mark, surrounding the "A" or "alpha." Thus the involved marks are similar in appearance because they both include "Ω".  Even when consumers note the "alpha" element in applicant's mark, they are likely to see the mark as a variation of opposer's well known Omega marks.

Balancing the relevant factors, the panel majority found confusion likely and so it sustained the opposition.

Dissent: Judge Francie R. Gorowitz dissented, concluding that the marks are so different that confusion is unlikely. She asserted that the majority put too much weight on applicant's description of his mark, when the important issue is the public's perception of the mark and not applicant's description. She opined that consumers would not likely perceive the curve around the "A" as the letter omega, but rather would see the mark as a capital "A" with a slight design element.

Read comments and post your comment here.

TTABlog comment: I agree with the dissent. To me, applicant's mark looks like a capital "A" with an arc around it. What do you think?

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 9/14/2016   7 comments

Tuesday, September 13, 2016

EURO for Paint Spray Guns Made in Taiwan is Deceptive, Says TTAB

The Board sustained two oppositions, finding the term EURO, in the design forms shown below, to be primarily geographically deceptively misdescriptive of paint spray guns made in Taiwan. It also granted a petition to cancel a registration for the standard character mark EURO for the same goods, on the ground of Section 2(a) deceptiveness. SATA GmbH & Co. KG v. Mike Ghorbani, Oppositions Nos. 91210813 and 91217915, Cancellation No. 92059849 (September 8, 2016) [not precedential].


The Board observed that, according to California Innovations, the legal standard for finding a mark primarily geographically deceptively misdescriptive under Section 2(e)(3) is identical to the test for geographical deceptiveness under Section 2(a). [Note: in that case, the CAFC stated that it "anticipates that the PTO will usually address geographically deceptive marks under subsection (e)(3) of amended Lanham Act rather than subsection (a)." So why is the Board dealing with 2(a)? - ed.].

In re Miracle Tuesday sets forth the test under Section 2(e)(3):

[a] mark is primarily geographically deceptively misdescriptive, and thus barred from registration, if: (1) the primary significance of the mark is a generally known geographic location”; (2) “the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark, when in fact the goods do not come from that place”; and (3) “the misrepresentation was a material factor in the consumer’s decision” to purchase the goods.

The evidence was clear that the primary significance of the term EURO is Europe. The fact that dictionaries also define EURO as the common currency of participating European countries does not detract from, but rather enhances, this connotation.

There was no dispute that applicant's goods originate in Taiwan, but would consumers likely believe that they originate in Europe? A goods/place association is established where, as here, the place named is a known source for the goods.

The evidence established that European spray guns, and plaintiff's spray guns in particular (made in Germany) are highly regarded. Manufacturers and distributors of spray guns compare their products to those of European origin, including plaintiff's. Thus consumers have been exposed to claims of European superiority or desirability.



As to materiality, the record as a whole established that a substantial portion of U.S. consumers would be influence in their purchasing decisions by the geographic meaning of EURO in applicant's marks.

The Board therefore ruled in favor of plaintiff in all three proceedings.

Read comments and post your comment here.

TTABlog comment: Why else would a Taiwanese entity pick the mark EURO?

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 9/13/2016   2 comments

Monday, September 12, 2016

Precedential No. 24: TTAB Affirms 2(d) Refusal of MT RAINIER Logo, But Reverses on 2(e)(3)

The Board affirmed a Section 2(d) refusal of MT. RAINIER THE MOUNTAIN OF SEATTLE ESPRESSO & MILK and Design for "Milk beverages containing espresso coffee and milk; milk products containing espresso coffee and milk, excluding ice cream, ice milk and frozen yogurt," in International Class 29, and "Espresso coffee containing milk; and sandwiches flavored with espresso coffee and milk," in International Class 30 [ESPRESSO & MILK disclaimed], finding the mark likely to cause confusion with the mark MOUNT RAINIER COFFEE COMPANY, registered on the Supplemental Register for “coffee” [COFFEE COMPANY disclaimed]. However, the Board reversed a Section 2(e)(3) refusal to register, finding the applied-for mark not primarily geographically deceptively misdescriptive of applicant’s goods. In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738 (TTAB 2016) [precedential].


Likelihood of Confusion: The record evidence was clear that the involved goods are identical or closely related, since "espresso coffee," an essential component of applicant's goods, is a kind of "coffee."

The Marks: The Board agreed with Examining Attorney April A. Hesik that the involved marks are significantly similar. The dominant portion of the marks is virtually identical: MT. RAINIER and MOUNT RAINIER. The words COFFEE COMPANY in registrant's mark and ESPRESSO & MILK in applicant's mark are generic, or at least very highly descriptive, and therefore of little or no trademark significance. The Board recognized that applicant's mark also contains the image of a mountain and the words THE MOUNTAIN OF SEATTLE, but they reinforce, rather than detract from, the impression made by the words MT. RAINIER. Moreover, the phrase THE MOUNTAIN OF SEATTLE is far less prominent than MT. RAINIER. The fact that applicant's mark includes color and a circular carrier is not significant, since registrant's standard character mark is not limited to any particular color or font, and the circular background is an ordinary shape that would not change the commercial impression conveyed by applicant's mark.

The Board concluded that the marks, viewed in their entireties, are substantially similar in appearance, sound, meaning, and commercial impression.

Strength of the Cited Registration: Applicant argued that the cited mark is inherently weak and therefore entitled to a narrow scope of protection, since it is registered on the Supplemental Register. The Board pointed out that it is settled law that a mark on the Supplemental Register may be cited as a bar to registration under Section 2(d). [See cases cited]. "[L]ikelihood of confusion can be found even it a term is merely descriptive and does not identify source: Registration on the Supplemental Register is sufficient, and a showing of trade identity rights in the form of secondary meaning is unnecessary."

Applicant further asserted that the scope of protection to be accorded a descriptive mark is limited to substantially identical marks for substantially identical goods, but the Board disavowed that theory in In re Smith & Mehaffey, 31 USPQ2d 1531, 1533 (TTAB 1991), holding that while a mark on the Supplemental Register may be weaker and of less ability to preclude registration of a similar mark, there is no categorical rule like that posited by applicant and there is no different test for likelihood of confusion to be applied in such a case.

Although the record suggested that the registered mark was deemed primarily geographically descriptive, since registrant is located near Mt. Rainier, such a mark is eligible for the Principal Register upon a showing of acquired distinctiveness, and there was nothing to suggest that the cited mark is generic or highly descriptive of the goods.

Applicant pointed to several third-party registrations for mark incorporating the term RAINIER, in an effort to show the marketplace weakness of registrant's mark. However, third-party registrations standing alone are not evidence of use of the marks on a commercial scale, or that consumers are so accustomed to seeing them that they have learned to distinguish the marks based on minor differences. As to marketplace strength, third-party registrations may not be given any weight.

Evidence of extensive third-party use of a term in connection with similar goods is clearly probative of the term's marketplace weakness, but applicant did not provide any such evidence.

Nonetheless, third-party registrations are relevant regarding the inherent or conceptual strength of a mark because they reflect how terms are used in connection with the identified goods or services. The more descriptive a term, the less likely that consumers will attach source-identifying significance to the term.

Here there was no dispute as to the likely meaning of MOUNT RAINIER: it is a mountain in the state of Washington, and probably in the general vicinity of registrant's business. Other than that, the term has no apparent significance with respect to the involved goods.

We thus recognize that Registrant’s MOUNT RAINIER COFFEE COMPANY mark is likely geographically descriptive. But geographic descriptiveness is a separate inquiry from determining likelihood of confusion, and even if a geographically descriptive mark may not be given a broad scope of protection, the fact that it is registered on the Supplemental Register is enough for it to ground the ex parte refusal of an application for registration of a similar mark for use on the same or closely related goods or services. Cf. Research and Trading, 230 USPQ at 49; Towers, 16 USPQ2d at 1042.

The Board concluded that applicant's mark is likely to cause confusion in view of registrant's mark.

Section 2(e)(3): The examining attorney based this refusal on the word SEATTLE, maintaining that the focus of Section 2(e)(3) is whether the term in question is primarily geographic in the context of the mark, not whether the geographic reference dominates the mark. Applicant argued that the first element of the pertinent test requires a determination of "the primary significance of the mark."

The Board observed that a refusal to register under Section 2(e)(3), by its terms, is appropriate only if what applicant seeks to register "consists of a mark" that is geographically misdescriptive. Thus the focus is on whether the mark as a whole, not merely some part of it, is "primarily geographically deceptively misdescriptive."

Although a geographic term in a compound mark may dominate the commercial impression of a mark in a way that renders the entire significance of the mark geographic, that is not the case here, where the word SEATTLE plays a relative minor role. The Board did not find that the relevant public would consider the word SEATTLE as an indicator of the origin of the goods.

And so the Board reversed the Section 2(e)(3) refusal.

Read comments and post your comment here.

TTABlog comment: The Board discusses the different wording of Section 2(a) with regard to deceptiveness, but as I understand that California Innovations dictates that cases involving geographical deceptiveness fall under Section 2(e)(3) and are no longer treated under Section 2(a). Maybe that's why the examining attorney withdrew her Section 2(a) refusal.

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 9/12/2016   3 comments