Pro Se Applicant Fends Off Feckless U.S. Marines in "MARINE ONE DOWN" Opposition

The Board dismissed this multi-pronged opposition to registration of the mark MARINE ONE DOWN for computer game software, rejecting all seven claims brought by the U.S. Marines: Section 2(d) likelihood of confusion; Section 43(c) likelihood of dilution; false association and deceptiveness under Section 2(a); deceptive misdescriptiveness under Section 2(e)(1); misrepresentation of source under Section 14(3); and lack of bona fide intent. The Board took time to comment on the woeful inadequacy of the Marines' attack. U.S. Marine Corps v. Peter J. Healy, Opposition No. 91215087 (April 25, 2017) [not precedential] (Opinion by Judge Lykos).

Likelihood of Confusion: The Marines asserted rights in 49 registered U.S. trademarks containing the word "Marine," including MARINE ONE for cups, mugs, postcards, posters, neckwear, and shirts, and MARINE for toy airplanes and action target games. The Board considered these particular registrations to be the most likely to support opposer's likelihood of confusion claim.

However, opposer failed to submit any evidence to show that Applicant Healy's goods are related to those of its MARINE ONE registrations, or to the toy airplanes and target games of the MARINE registrations. Although Opposer claimed that its helicopter squadron called "Marine One" is famous, there was no proof that the term is famous for the goods identified in opposer's registrations.

In short, opposer's arguments regarding confusion were devoid of supporting evidence, and so the Board dismissed the Section 2(d) claim.

Dilution: Since opposer did not prove fame for purposes of Section 2(d), it perforce could not satisfy the higher standard for fame under Section 43(c). And so the Board dismissed this claim.

Bona fide intent: The Marines argued that use of the applied-for mark would violate a federal statute, namely, 10 U.S.C. Section 7881, "Unauthorized Use of Marine Corps Insignia," which probibits, inter alia, civilian use of the "names" of the Marine Corps. The Board noted that, although the application at issue is based on intent-to-use, the intended use must be lawful or else the applicant's intent is not bona fide.

The Board observed, however, that there is a "safe harbor" provision in the statute that allows use of the "names" of the Marine Corps without written permission, so long as the following disclaimer is prominently displayed: "Neither the United States Marine Corps nor any other component of the Department of Defense has approved, endorsed, or authorized this product (or promotion, or service, or activity) as an integral part of the use or imitation."

Here, there was no evidence as to how Applicant Healy intended to use his mark, and no evidence as to whether Healy would avail himself of the "safe harbor" provision. Therefore, opposer did not meet its burden of proof that Healy's use of the applied-for mark would violate the statute.

Section 2(a) False Connection: The first prong of the Section 2(a) false connection bar requires that the mark at issue be a "close approximation" of the plaintiff's name or identity. Opposer provided no evidence that applicant's mark closely approximates its name or identity (for example, United States Marine Corps, U.S. Marine Corps, USMC or Marines).

Nor did opposer meet the second or fourth prongs of the Section 2(a) test: there was no evidence that applicant's mark points "uniquely and unmistakably" to opposer, and there was no evidence that opposer's name or identity is of sufficient fame or reputation that applicant's goods would presumably evoke a connection with opposer.

Section 2(a) Deceptiveness The Section 2(a) deceptiveness bar requires that a term misdescribe a significant aspect of the goods. Opposer pointed to no such misdescription and provided no evidence thereof.

Section 2(e)(1) Deceptive Misdescriptiveness: This test comprises the first two prongs of the Section 2(a) deceptiveness test. Since opposer did not prove any misdescription, this claim failed.

Section 14(3) Misrepresentation of Source: This statutory section applies only to registered marks, and is available only in the context of a cancellation proceeding or a counterclaim for cancellation. Therefore, the Board dismissed the claim.

Observations: Opposer chose not to take any testimony, and most of its evidence, submitted under notice of reliance, was either inadmissible or irrelevant. Opposer's brief contained many factual statements without evidentiary support. All but the Section 14(3) claim, which was futile on its face, were dismissed for lack of proof. "A plaintiff in a Board proceeding cannot expect to prevail on its asserted claims based on mere assertions in its appeal brief."

Finally, the Board noted that on a more developed record, the result may have been different.

Read comments and post your comment here.

TTABlog comment: Hmmm. Will the Marines seek review by way of civil action under Section 1071, in order to bolster the evidentiary record?

Text Copyright John L. Welch 2017.

Report on HAWKWIND Oral Hearing: Raphael Gutierrez

The TTAB heard oral argument on April 24th in Dave Brock v. Nicholas Turner, Opposition No. 91214199, involving Nik Turner's application to register the mark NIK TURNER'S HAWKWIND for "Entertainment services, namely, live musical performances by an individual or musical group." Opposer Dave Brock claims ownership and priority of use of the mark HAWKWIND, likelihood of confusion under Section 2(a), and false association under Section 2(a). The parties’ briefs, testimony, evidence, and other papers may be found here.

Dave Brock
Dave Brock alleges that he co-founded the band HAWKWIND in 1969 and has been the only person who has been a member of the band continuously since its founding. Brock asserts that he has controlled the style and quality of the band's music, that he is therefore the owner of the mark HAWKWIND, and that the mark is famous and is entitled to a broad scope of protection.

Applicant Nik Turner claims that HAWKWIND is not famous, but just an obscure "cult" band, that Brock is not the prior user in the United States, and that Brock has abandoned any rights he may have had.

Nik Turner
Friend of the TTABlog Raphael Gutierrez attended the oral hearing and provides the following observations and comments:

Attendance: About 40 people. The room could have accommodated about 100. Most appeared to be law students with their professors.

Panel:
- Deputy Chief Judge Susan Richey
- Judge Lorelei Ritchie
- Judge Francine Gorowitz

Neither party was present.

Counsel for the Parties:
- For Opposer Dave Brock: first year associate Jodi Benassi of McDermott Will Emery. Another attorney was at the table, but did not argue.
- For Applicant Nik Turner: Evan Cohen of Manifesto Records

The Board stated that each side would get 30 minutes to present its case. When asked if Opposer would like to reserve time for rebuttal, Opposer indicated it would like to reserve 20 minutes for rebuttal. Judge Richey asked if Opposer was sure and Opposer replied that it was. After 10 minutes of argument, Judge Richey offered Opposer 10 more minutes for argument, leaving 10 for rebuttal. Opposer accepted the offer.

The Judges did not let either party get far into their arguments before starting in with questions.

Opposer opened with the factual history, but was reminded by the judges that they were familiar with it. The judges asked Opposer to move on to the legal arguments. Opposer argued that he is the proper owner of the HAWKWIND trademark because he was a founder of the band and the most consistent member since the beginning. Applicant, on the other hand, started as a roadie before joining the band. He was eventually fired after about 8 years. Opposer argued that 9th Circuit case law [Robi v. Reed] makes clear that the name of a band does not move with a member who has been kicked out. Judge Gorowitz asked whether Opposer knew that 9th Circuit law was not binding on the Board and whether Opposer had any Federal Circuit precedent; Opposer responded yes and no, respectively. Opposer admitted infrequent touring in the US using the HAWKWIND name, citing the difficulties of touring and complications due to “medical issues” arising from stress caused by Applicant’s use of HAWKWIND. Opposer also claimed that consistent record sales (a rough average of 1,000/year) showed no abandonment of the mark in the past 40 years. The Board’s toughest questions related to Opposer’s false association claim and the fame of the party asserting the claim. The Board was dubious of Opposer’s claim that HAWKWIND was famous among all concert-goers. Judge Gorowitz pointed out that she had never heard of the band.

Applicant argued that HAWKWIND was not and is not a famous band, even amongst the narrower subset of enthusiasts of the “prog rock” genre. Applicant made the point that there has been a revolving door of artists, but did not emphasize that as a result there is no singular source for HAWKWIND music. Applicant argued that Opposer’s use of the HAWKWIND mark in the United States for musical recordings (1,000 albums sold per year) was de minimis and that Opposer had abandoned the mark for live musical performances, not having performed in the US for over 10 years. This led to questions from the Board about how much use is enough to constitute use of the mark. Judge Richey asked if Applicant was familiar with the Adidas v. Christian Faith Fellowship case. He was not, so she did not press with further questions. [One might have countered that Adidas related to use sufficient to support a trademark registration - not use sufficient to establish nationwide common law rights.] Upon further questioning Opposer did go on to suggest that something like record sales of 10,000/year would probably be sufficient use to support a trademark claim. Applicant admitted there was confusion, but said it was not dispositive because there were lots of different versions of HAWKWIND the band. However, much of the confusion related to people emailing Opposer or posting on blogs with questions like “Which version of HAWKWIND is this?” Applicant might have argued that these were mere inquiries, not evidence of actual confusion.

The Board asked tough questions of both parties, but did not indicate which way they were leaning.

Read comments and post your comment here.

TTABlog comment: Thank you, Rafa. BTW: there are hundreds of comments to the original blog post regarding the hearing (here).

Text Copyright John L. Welch 2017.

TTAB Reverses 2(d) Refusal of ARC: Different Services and Channels of Trade, Sophisticated Purchasers

The Board reversed a Section 2(d) refusal of the mark shown below, for "litigation support services provided exclusively to law firms, namely, conducting electronic legal discovery in the nature of reviewing e-mails and other electronically stored information that could be relevant evidence in a laws," finding the mark not likely to cause confusion with the registered mark ARC for "legal services." The Board found that the differences in services and the care with which they would be purchased outweighed the similarities in the marks. In re Iris Data Services, Inc., Serial No. 86455558 (April 24, 2017) [not precedential] (Opinion by Judge Lykos).

The Marks: The cited mark is registered in standard character form, and could be used in the same font, color, and design as the applied-for mark. Moreover, it is the literal portion of the mark that will be used in calling for the services. And the design portion of applicant's mark merely reinforces the meaning and connotation of the word ARC. And so the Board found that the first factor weighed in favor of affirmance of the refusal.

The Services and Channels of Trade: The Examining Attorney contended that registrant's "legal services" encompass "all manner of legal services activities, including legal discovery and legal document review." Applicant argued that its services are computer-based services offered to legal professionals.

The Board sided with applicant, noting that the Examining Attorney offered no evidence to show that the involved services are related. The restriction of applicant's services to those provided "exclusively to law firms" made the channels of trade distinct. There was no evidence that the persons at law firms who are responsible for purchasing electronic discovery services are also the same individuals who retain "legal services" within the context of a traditional attorney/client relationship.

Therefore the Board concluded that these du Pont factors favored applicant.

Conditions of Sale: Although registrant's legal services encompass both high-priced and low-priced services, and even pro bono services, consumers will exercise a relatively high degree of care in their purchasing decisions. Applicant's services are of a specialized nature and are offered on a subscription basis at a relatively high price. Purchasers of applicant's services are likely to be highly sophisticated professionals knowledgeable about electronic discovery and information technology.

Therefore this factor favored applicant.

Conclusion: Balancing the relevant du Pont factors, the Board found confusion unlikely and it reversed the refusal.

Read comments and post your comment here.

TTABlog comment: Seems like the right decision to me. What about you?

Text Copyright John L. Welch 2017.

WYHA? NANOCHIP Merely Descriptive of RFID Tags, Says TTAB

The USPTO refused registration of the mark NANOCHIP, finding it merely descriptive of "radio frequency identification (RFID) tags." Examining Attorney Sophia S. Kim maintained that the mark immediately describes a feature or characteristic of the goods, namely, that the products "feature a very small microchip." The Board agreed. Would You Have Appealed? In re Nanochip ID, Inc., Serial No. 86694656 (April 12, 2017) [nor precedential] (Opinion by Judge Bergsman).

A term is merely descriptive within the meaning of Section 2(e)(1) if it "immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used." The determination of mere descriptiveness is made not in the abstract, but rather in the context of the relevant goods.

The Examining Attorney submitted dictionary definitions of "nano" ("denoting a very small item") and chip ("Also a microchip. Electronics. A tiny slice of semiconducting material, generally in the shape of a few millimeters long, cut from a larger wafer of the material, on which a transistor or an entire integrated circuit is formed.") Applicant’s website identified its “radio frequency identification (RFID) tags” as microchips.

Applicant’s mark NANOCHIP retains the dictionary definitions of its component parts when used in connection with “radio frequency identification (RFID) tags” engendering the commercial impression that Applicant’s product is or is comprised of a very small microchip that functions as an identification tag.

Excerpts from Applicant’s website (nanochipid.com) touting the small size of the product supported the Board's finding.

Applicant argued that NANOCHIP is merely suggestive because “it fails to convey the use or purpose of that microchip, in the instant application as a part of a RFID tag." The Board pointed out, however, that a mark is merely descriptive if it "directly conveys to consumers a feature of Applicant’s product, namely, an RFID that is or is comprised of a very small microchip."

Applicant also contended that NANOCHIP is a double entendre, referring both to the size of the chip and its low cost. The Board, however, pointed out that, although the word “nano” may have multiple meanings in the abstract, when Applicant uses NANOCHIP in connection with RFID tags, it clearly conveys the message that its product is or is comprised of a very small microchip."

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Nano Nano!

Text Copyright John L. Welch 2017.

TTAB Reverses False Association Refusal of ME AND THE MOUSE TRAVEL & Design

The Board reversed a Section 2(a) refusal of the mark shown below for travel agency services, rejecting the USPTO's contention that the mark includes matter that falsely suggests a connection with Disney Enterprises, Inc. The evidence showed that the image of Mickey Mouse qualifies as an "identity" of Disney, but was insufficient to establish that the applied-for mark is a close approximation of the Mouse cartoon character or that it points unmistakably to Disney. In re Me and the Mouse Travel, LLC, Serial No. 76717725 (April 21, 2017) [not precedential] (Opinion by Judge Gorowitz).

The first two prongs of the Section 2(a) test require that (1) the mark at issue be the same as, or a close approximation of, the name or identity previously used by another person or institution; and (2) the mark be recognized as such, in that it points uniquely and unmistakably to that person or institution. The Examining Attorney contended that the applied for mark not only contains the word "mouse" but also contains a design element (the gloved hand) that is a close approximation of a design element of Mickey Mouse.

The probative evidence establishes "both that Disney is a well-known company and that Mickey is a famous character and mark. Moreover, the evidence establishes that Mickey Mouse is so well-recognized as a symbol of the company that the cartoon character’s image qualifies as an “identity” of Disney within the meaning afforded that term by the relevant precedents.

The Board concluded, however, that the USPTO had failed to show that the applied-for mark is a "close approximation of Disney’s Mickey Mouse cartoon character or that it points unmistakably to Disney." First, the mark incorporates the term "THE MOUSE" not "Mickey Mouse." Also, Mickey has three fingers and a thumb whereas the applied for mark shows four fingers and a thumb. And Mickey Mouse is not the only cartoon character sporting white gloves; later Disney characters also had white gloves, as did non-Disney characters such as such as Bugs Bunny, Woody Woodpecker, and Mario.

Thus, this record does not support a finding that characteristics of the Mickey Mouse figure are so well known that the depiction of a narrow arm a with a white-gloved hand would be recognized as being being unique to a body part of the Mickey character, versus that of another cartoon character or some other arbitrary figure.

And so the Board reversed the Section 2(a) refusal.

Read comments and post your comment here.

TTABlog comment: Do you agree with the Board's decision? When you see the word "mouse" and the cartoonish gloved hand in the drawing, what do you think of?

Text Copyright John L. Welch 2017.

TTABlog Webcast: California Bar IP Section - May 2nd Noon PDT: "TTAB Year in Review"

Yours truly, the TTABlogger - who some say has a face for radio and a voice for blogging - will nonetheless present a webinar on Tuesday, May 2nd at 12 Noon Pacific Daylight Time, sponsored by the Intellectual Property Section of the California Bar. The topic? Wait for it ................. "TTAB Year in Review." Register here.

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TTAB Test: Are Sauces and Spice Rubs Related to Beer and Bakery Goods?

The USPTO refused registration of the mark SOUTHERN GIRLS GOURMET SAUCES for "sauces; spice rubs" [GOURMET SAUCES disclaimed), finding the mark likely to cause confusion with the mark SOUTHERN GIRL registered by one owner for beer and by another owner for bakery products. The Board found the marks confusingly similar, but what about the goods? How do you think this came out? In re Southern Girls Gourmet Sauces LLC, Serial No. 86932732 (April 19, 2017) [not precedential] (Opinion by Judge Taylor).

The Marks: Not surprisingly, the Board found the marks to be similar in sound, appearance, and meaning, and very similar in overall commercial impression. Applicant pointed to the fact that the two cited registrations are owned by different entities, arguing that if those two registrations can co-exist on the Register, its mark can too. The Board was unmoved.

While the Office strives for consistency in examination, the Board is not bound by the prior decisions of examining attorneys in allowing marks for registration. It is well established that each case must be decided on its own facts. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)

The Board further noted that, to the extent applicant contends that the cited registrations should be treated in the same manner as third-party registrations, these two registrations "do not persuade us that the phrase SOUTHERN GIRL(S) 'has a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that [term] is relatively weak.'" Juice Generation, Inc. v. GS Enters., 115 USPQ2d 1671 (Fed. Cir. 2015). In short, two registrations are not enough to show that SOUTHERN GIRLS carries a suggestive or descriptive connotation and is a weak formative for the involved goods.

The Goods: Examining Attorney Tara L. Bhupathi relied on various websites showing use of the same mark for both sauces and/or spice rubs and bakery goods and beer. She also made of record third-party use-based registrations for marks covering items in the subject application and cited registrations. The Board found this evidence sufficient to establish the relatedness of the goods, "such goods all being comestibles and flavorings for food that are often sold by the same source under the same mark."

Conclusion: With the marks similar, the goods related, and the channels of trade and classes of purchasers overlapping, the Board found confusion likely and it affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: What do you think? Did the registrants get the gold mine and the Southern Girls the shaft?

Text Copyright John L. Welch 2017.

TTAB Affirms Section 2(d) Refusal Despite Addition of House Mark "ISATORI" to "BIOGROW" for Supplements

The Board affirmed a Section 2(d) refusal of iSatori Bio-Gro for "dietary and nutritional supplements" in view of the registered marks BIOGROW, BIOGROWN, and BIOGROWTH, owned by the same entity, for "nutritional supplements.' The goods are in part identical, but applicant argued that the term "iSatori" distinguished the marks, just as in yesterday's case, the word CROSBY distinguished CROSBY QUIC-TAG from QUICK TAG. Nope, said the Board. In re iSatori, Inc., Serial No. 86397344 (April 18, 2017) [not precedential] (Opinion by Judge Adlin).

As to the identical goods, the Board must presume that they travel in the same, normal channels of trade to the same classes of consumers. Not only do these factors weigh heavily in favor of a finding of likely confusion, but they reduce the degree of similarity between the marks necessary to support a Section 2(d) refusal.

The Board found the marks to be highly similar in appearance, sound, connotation, and commercial impression. In fact, applicant's mark may be seen as another variation of registrant's marks.

The Board found that the added word "iSatori" may exacerbate confusion, based in part on the appearance of applicant's specimen of use (above), in which BIO-GRO is displayed in larger letters than iSatori.

The Board noted that in a number of analogous cases, the addition of a house mark to a registered mark has been found to be "in essence, an 'aggravation rather than a justification.'"Although BIOGROW is somewhat suggestive of nutritional supplements, "it is nowhere near as suggestive as the marks in which the addition of a house mark was found to be sufficiently distinguishing to avoid a likelihood of confusion." For example, in Knight Textile, the mark ESSENTIALS was found to be highly suggestive for clothing in light of 23 third-party registrations for marks that included the word ESSENTIALS. Here the evidence in not on a part with that evidence; dictionary  definitions of BIO and GROW and 12 third-party registrations for marks including the term BIO  for nutritional supplements [but not GROW].

In short, ESSENTIALS, and English word commonly used by numerous  parties for clothing, is significantly more suggestive than BIOGROW and forms thereof, which is not a word and which has not been revealed to be used by anyone other than Applicant and Registrant for nutritional supplements.

Finally, the Board accepted applicant's argument that the goods would be purchased with a heightened degree of care, but that factor was "easily outweighed" by the other du Pont factors that favored the Section 2(d) refusal.

Finding confusion likely, the Board affirmed.

Read comments and post your comment here.

TTABlog comment: Lots of case citations in this one. Note Board's pooh-poohing the import of federal court decisions in infringement cases (footnote 6).

Text Copyright John L. Welch 2017.

TTAB Reverses Section 2(d) Refusal of CROSBY QUIC-TAG over QUICK TAG for Identification Tags

The Board reversed a Section 2(d) refusal to register the mark CROSBY QUIC-TAG for "radio frequency identification (RFID) tags for material lifting equipment; computer software and firmware for reading radio frequency identification (RFID) tags for material lifting equipment," finding it not likely to cause confusion with the registered mark QUICK TAG in the form shown to the right, for "metal identification tags" [TAG disclaimed]. The Board found that "although Applicant’s and Registrant’s goods are somewhat related, the dissimilarities in their respective marks, coupled with the mostly diverse channels of trade and sophisticated classes of purchasers, create 'a confluence of facts which persuasively point to confusion as being unlikely.'" In re The Crosby Group LLC, Serial No. 86780353 (April 17, 2017) [not precedential] (Opinion by Judge Heasley).

The Marks: The Board found the word CROSBY to be the dominant element in applicant's mark. Although CROSBY is a surname, applicant has used the mark CROSBY for more than five years and owns two registrations for the mark for various forms of material lifting equipment. The Board ruled that the acquired distinctiveness of the two registered marks carries over to the instant application. Moreover, the evidence demonstrated that "purchasers of material lifting equipment and related goods have been conditioned over time to associate CROSBY with a single source: Applicant."

The words in the cited mark QUICK TAG are "at best highly suggestive and at worst generic." The disclaimed word TAG is generic for metal identification tags. QUICK is highly suggestive because it indicates that Registrant’s tags are provided quickly [via vending machines]. The lightning bolt design element reinforces that suggestion. "QUICK TAG is thus highly suggestive―so much so that the addition of CROSBY, a dominant, distinctive component, suffices to distinguish it."

The Goods: The issue of the similarity of the goods arises with respect to applicant's RFID tags and registrant's metal identification tags. The Board found that registrant’s metal tags "can be considered somewhat related to Applicant’s RFID tags." The fact that they fall in different USPTO classes is irrelevant, since Section 2(d) makes no reference to classification. The evidence of third-party use showed that the goods may emanate from a common source, and may overlap at times.

Channels of Trade/Sophistication of Purchasers: Given the limitation of applicant's goods to tags and readers used in connection with material lifting equipment, the only overlap in customers would be businesses that purchase and use material lifting equipment. Considering the nature of the material lifting equipment industry, "it stands to reason that its institutional purchasers will exercise greater care in making their purchases than the general purchasing public."

Thus, while Registrant could offer its products to industries requiring material lifting equipment, it is unlikely that the purchasers in those industries will confuse its mark with Applicant’s CROSBY-formative mark.

Therefore the third and fourth du Pont factors favor applicant.

Conclusion: Considering the relevant factors, the Board found confusion unlikely and it reversed the refusal.

Read comments and post your comment here.

TTABlog comment: Sometimes the addition of a "house" mark will avoid likelihood of confusion: see, e.g., the Knight Textiles case (ESSENTIALS, so highly suggestive of clothing that the applicant’s addition of the house mark NORTON MCNAUGHTON sufficed to distinguish the marks).

Text Copyright John L. Welch 2017.

TTAB Affirms Section 2(e)(2) Refusal of LAUGHLIN RANCH: Geographically Descriptive of Golf Courses and Spas

The Board affirmed a Section 2(e)(2) refusal of the mark LAUGHLIN RANCH, finding it to be primarily geographically descriptive of retail store services featuring golf products and apparel in Class 35; golf club services; golf courses in Class 41; restaurant and bar services; catering services in Class 43; and health spa services; hair salon services; hair styling and cutting services; manicure and pedicure services in Class 44. Applicant unsuccessfully maintained that, although the word LAUGHLIN is geographically descriptive, the entire mark is not. In re IMH LR Clubhouse, LLC, Serial No. 86338122 (April 13, 2017) [not precedential] (Opinion by Judge Goodman).

Applicant acknowledged that its services originate in Laughlin, Arizona and that LAUGHLIN is geographically descriptive of the services. Laughlin is a place generally known to the public [although it seems to be in Nevada, not Arizona].

Examining Attorney Karen K. Bush maintained that the addition of the descriptive term RANCH does not change the primary geographic significance of the term LAUGHLIN. Applicant contended, however, that RANCH "is not generic or so highly descriptive as to make the mark geographically descriptive overall."

Third-party web site evidence showed use of the term RANCH in connection with golf club, dining, spa services, and retail store services. The examining attorney asserted that RANCH is "a term of art that identifies resorts and communities located on large areas of land in which various activities, such as golfing, restaurants, spa services etc. are offered." The Board concluded from this evidence that RANCH is a "highly descriptive term" when used in connection with ranch-style resorts and communities that offer golf, dining, spa, and retail store services.

The Board then found that combining RANCH with LAUGHLIN does not detract from the geographical descriptiveness of the mark as a whole.

Finally, the Board observed that when the geographical significance of a term is its primary significance, and when the place is not obscure or remote, a services/place association in the minds of consumers may be presumed when the services emanate from that place. Laughlin, Nevada is the third largest gambling venue in Nevada and is a generally known geographical location, and so the Board presumed that a services/place association would be made.

The Board therefore affirmed the Section 2(e)(2) refusal.

Read comments and post your comment here.

TTABlog comment: The Examining Attorney had accepted applicant's 2(f) claim, and so the mark will proceed to publication under Section 2(f).

Text Copyright John L. Welch 2017.

TTABlog Road Trip: New York City Bar Association, April 24th

Your truly, the TTABlogger, will venture down to the Big Apple for the New York City Bar's symposium called "On Your Marks: Frontline Issues in Trademark and Advertising Law." My topic will be ..... guess what? The event will run from 9am to 5pm, at the New York City Bar, 42 West 44th Street, New York, NY 10036. Register here.

9:00 am – 9:10 am - Introduction

9:10 am – 10:25 am - New World, New Marks: Trademark Issues Presented by Brexit and Market Expansion into Cuba: (Michelle DiGruttolo, Ainslee A. Schreiber, and Phil Sherrell).  2016 saw dramatic developments in both Europe and Cuba that are changing the business environment in those countries. What does Brexit mean for U.S. rights holders, and what should you be doing now to protect your brands in Europe? On the other side of the Atlantic, how should U.S. trademark holders protect their marks in the fast-changing economy that is Cuba?

10:25 am – 10:40 am - Break

10:40 am – 11:55 am - Digitally Clear: Tips for Clearance of Advertising on Social Media and Online Apps: (June Casilmir, Nicole D. D’Amato, Zev Parnass, and Fara S. Sunderji).  In today’s digital world, social media and mobile apps are becoming increasingly important in consumer marketing. When is an online posting an advertisement? What are the applicable rules and the potential penalties for violating them?

11:55 am – 12:20 pm - An Ambassador’s View: International Trade and IP Challenges for the Trump Administration: Ambassador Ronald Kirk: Former U.S. Trade Representative (USTR) in the Obama Administration, Currently Senior Of Counsel, Gibson, Dunn & Crutcher

12:20 pm – 1:45 pm - Networking Luncheon

1:45 pm – 3:00 pm - Trademark Battle Roundup: Annual Review of Leading Trademark Decisions by Federal Courts and the TTAB: (Dale M. Cendali and John L. Welch). What were the major decisions of 2016 in both at the Trademark Trial and Appeal Board and in the courts? This session will provide a comprehensive summary of the past year’s most important rulings and their impact on rights holders.

3:00 pm – 3:10 pm - Break

3:10 pm – 4:00 pm - Disruptive Strategies to Combat Infringement in Cyberspace: (Joseph V. DeMarco and Roxanne Elings). In today’s connected world, infringers can take advantage of U.S. commerce from outside the United States. This session explores practical and litigation strategies taken within the United States that can disrupt the infringer’s business and bring a return on investment for the rights holder.

4:00 pm – 4:50 pm - In All Honesty: How to Navigate Ethical Issues in Trademark Investigations: (Susan Upton Douglass and Tony Yarborough). Investigating trademarks that potentially block a client’s proposed mark, or investigating a potential adverse party before sending a cease and desist letter or bringing a lawsuit can raise complicated ethical issues. In this session, a trademark attorney and investigator address the potential ethical pitfalls and ways to avoid them.

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TTAB Schedules HAWKWIND Hearing for April 24 at Silicon Valley USPTO

The Board has scheduled an oral hearing on April 24th at 3PM at Silicon Valley USPTO, California Room, Rm. 109 (lobby level), 26 S. Fourth Street, San Jose, CA 95113, in Dave Brock v. Nicholas Turner, Opposition No. 91214199., involving Nik Turner's application to register the mark NIK TURNER'S HAWKWIND for "Entertainment services, namely, live musical performances by an individual or musical group." Opposer Brock claims ownership and priority of use of the mark HAWKWIND, likelihood of confusion under Section 2(a), and false association under Section 2(a).

Dave Brock alleges that he co-founded the band HAWKWIND in 1969 and has been the only person who has been a member of the band continuously since its founding. Brock asserts that he has controlled the style and quality of the band's music, that he is therefore the owner of the mark HAWKWIND, and that the mark is famous and is entitled to a broad scope of protection.

Nik Turner
Applicant Nik Turner claims that HAWKWIND is not famous, but just an obscure "cult" band, that Brock is not the prior user in the United States, and that Brock has abandoned any rights he may have had.

David Brock
Read comments and post your comment here.

TTABlog comment: Thoughts? Any HAWKWIND fans out there? Wikipedia explains how the name was chosen.

Text Copyright John L. Welch 2017.

TTAB Reverses Section 2(d) Refusal of "PAPER" over "BAMBOO PAPER" for Digital Notebooks

Third-party registration and use of the word "paper" in connection with digital writing devices led the Board to reverse a Section 2(d) refusal of the mark PAPER for software for writing on electronic devices with a stylus or finger. The USPTO had deemed the mark confusable with the registered mark shown below, for input devices for computers, including computer software for digital drawing and painting. In re FiftyThree, Inc., Serial No. 86180291 (April 12, 2017) [not precedential] (Opinion by Judge Bergsman).

The Goods: The Board concluded that both applicant's application software and registrant's electronic whiteboards and software identify digital notebooks that simulate paper notebooks, and so the goods are in part identical.

The Marks: Applicant submitted evidence of use of marks containing the word PAPER by three third parties for products related to digital notebooks. [Pen and Paper, PAPERLESS DRAW, and ePAPER]. In addition, applicant provided nine third-party, used-based registrations for such mark.

The third-party uses of marks consisting of the word “Paper,” in whole or in part, and the third-party registrations for marks consisting of the word “Paper” in connection with computer applications allowing for the substitution of digital data for writing or drawing on paper are sufficient to prove that the word “Paper” has been extensively adopted, registered and used as a trademark or part of a trademark for computer software or related goods and services of this type. As a result, a mark comprising, in whole or in part, the word “Paper” in connection with such goods or services should be given a restricted scope of protection.

In addition, applicant is the owner of a registration for the mark PAPER BY FIFTYTHREE for the same goods as in the application at issue. The evidence led the Board to conclude that:

● Registrant was satisfied to register its mark BAMBOO PAPER and design side-by-side with all the other PAPER marks by requesting an extension of protection under Section 66 of the Trademark Act, 15 U.S.C. § 1141f;

●The USPTO has been registering PAPER marks for computer software and related services for creating and utilizing digital data so long as there has been some difference between the marks as a whole or between the goods or services; and

● The number of registrations for various PAPER marks reflects a determination by the USPTO that various PAPER marks can be used and registered side-by-side without causing confusion, provided there are minimal differences between the marks and the goods or services.

Considering the marks in their entireties as to appearance, sound, connotation, and commercial impression, the Board concluded that BAMBOO is the prominent element in the cited mark, since "Paper" is a weak term for the involved goods.

The Board noted that registrant uses BAMBOO as a stand-alone mark on its stylus, and also in several BAMBOO-formative marks to identify its products. The Board concluded that "the marks are distinguishable because BAMBOO is the dominant part of Registrant’s mark and Applicant’s mark PAPER is very weak because it is highly suggestive, if not descriptive."

And so the Board reversed the refusal.

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TTABlog comment: This is one of the infrequent, post-Juice Generation TTAB decisions in which the number of third-party uses (3) and registrations (9) were sufficient to affect the Section 2(d) outcome, even without proof of the manner and extent of use of the third-party marks. In other words, they had probative value on their face(s).

Text Copyright John L. Welch 2017.

Finding Watches and Clothing Related, TTAB Affirms Section 2(d) Refusal of MARIE-ANTOINETTE

The Board affirmed a Section 2(d) refusal to register the mark MARIE-ANTOINETTE for various goods in classes 9, 18, and 25, including sunglasses, handbags, and clothing, finding the mark likely to cause confusion with the registered mark BREGUET MARIE-ANTOINETTE for jewelry and watches. Applicant contended that BREGUET is the dominant element in the cited mark, but the Board cut short that argument. In re Tempting Brands Netherlands B.V., Serial No. 79161682 (April 11, 2017) [not precedential] (Opinion by Judge Bergsman).

The Marks: The Board observed that there is no per se rule as to how the addition of a house mark or a designer name to similar product marks affects the analysis of whether marks are similar or dissimilar.

[S]uch addition may actually be an aggravation of the likelihood of confusion as opposed to an aid in distinguishing the marks so as to avoid source confusion. On the other hand, where there are some recognizable differences in the asserted conflicting product marks or the product marks in question are highly suggestive or merely descriptive or play upon commonly used or registered terms, the addition of a housemark and/or other material to the assertedly conflicting product mark has been determined sufficient to render the marks as a whole sufficiently distinguishable. In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985) (citations omitted) (Applicant's LE CACHET DE DIOR is similar to the registered mark CACHET).

When the common part of the marks is identical, as here, purchasers familiar with registrant’s mark are likely to assume that the house mark or designer name simply identifies what had previously been an anonymous source. The name MARIE-ANTOINETTE is an arbitrary term in this context because it describe or suggest any qualities, characteristics or features of eyeglasses, handbags, clothing, jewelry or watches.

The Board concluded that that involved marks are similar in appearance, sound, connotation, and commercial impression.

The Goods: Examining Attorney Christopher M. Law submitted numerous third-party web pages showing the same mark in use for sunglasses, handbags, clothing, and jewelry or watches. The third-party uses included designer names or house marks (e.g., TOMMY HILFIGER), and the Board recognized that "because such marks may be licensed for a broader range of unrelated goods and services they may be of less probative value to show that goods are related."

[T]he third-party uses are persuasive evidence because, as vigorously argued by Applicant, Registrant’s mark includes a house mark, and consumers understand that Registrant would sell or license its BREGUET name/mark on a wide variety of products. Thus, consumers familiar with BREGUET MARIE-ANTOINETTE products in connection with jewelry and watches, encountering MARIE-ANTOINETTE eyeglasses, handbags, and clothing may mistakenly believe that those fashion products emanate from the same source.

Moreover, these items are used together "in the scheme of presenting oneself in a desired, stylish manner; they are related to the extent that the goods are part of the overall fashion picture which encompasses apparel and accessories"

Finally, applicant argued that registrant's goods are very expensive and would be purchased with care, but the Board pointed out that there were no such limitations in the registration. Registrant's broadly-written identification of goods encompasses inexpensive watches.

Conclusion: The Board affirmed the refusal to register

Read comments and post your comment here.

TTABlog comment: Was this a close case? I think not.

Text Copyright John L. Welch 2017.

TTAB Finds Section 2(f) Evidence for "CERTIFIED CHIANINA BEEF" Inadequate

The Board affirmed a refusal to register the proposed mark CERTIFIED CHIANINA BEEF [with CHIANINA BEEF disclaimed], finding Applicant Klickitat's evidence of acquired distinctiveness to be inadequate in light of the highly descriptive nature of the mark. Klickitat Valley Chianina, LLC, Serial No. 76715490 (March 16, 2017) [not precedential] (opinion by Judge Shaw).

The Board observed that "more evidence is required where a mark is so highly descriptive that purchasers seeing the matter in relation to the named good would be less likely to believe that it indicates source in any one party."

Applicant oddly argued that Examining Attorney Emily Chuo's evidence of descriptiveness was irrelevant, but the Board pointed out that "the degree of descriptiveness of Applicant’s mark affects the amount and character of evidence required to establish acquired distinctiveness."

The examining attorney submitted web pages showing use of the terms "certified Chianina beef" and "certified Chianina" in connection with beef. ["Chianina" is defined as "any of a breed
of tall white cattle of Italian origin noted especially for producing lean meat."] She also provided three registrations on the Supplemental Register for "conceptually similar marks": CERTIFIED HEREFORD BEEF, CERTIFIED DEVON BEEF, and CERTIFIED PIEDMONTESE BEEF.

The foregoing dictionary definitions and Internet excerpts establish that the term CERTIFIED CHIANINA BEEF is widely used by restaurants and travel sites to describe a well-regarded type of beef as coming from a particular breed of cattle, the Chianina. The third-party registrations show that the Examining Attorney’s treatment of Applicant’s mark is consistent with the Office treatment of conceptually similar marks.

The Board therefore concluded that the applied-for mark is highly descriptive, and so applicant has the burden to show a "concomitantly high level of secondary meaning."

To prove acquired distinctiveness, applicant submitted two declarations, one from it manager and one from a customer. Applicant claimed use of the mark since 2006, but although that may indicate a degree of commercial success, it is "not conclusive or persuasive considering both the nature of the mark sought to be registered and the widespread use of CERTIFIED CHIANINA BEEF by others.

Moreover, Applicant states that it has spent “[a]t least $82,750.00” to promote its products and conducted a number of dinners for more than 100 “ranchers, cattlemen, restaurateurs, and beef product wholesalers.” But these efforts to advertise and promote Applicant’s products are extremely modest over the given time frames.

Only the single customer declaration provided any evidence of consumer protection of the proposed mark. Applicant did not provide information regarding its market share or the size of the marks, and so the assertion that its beef is expensive and sold to a limited market was not probative.

In sum, substantially more evidence bearing directly on the degree of public recognition of Applicant’s mark would be required to demonstrate that it has acquired public recognition as a source indicator.

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

Read comments and post your comment here.

TTABlog comment: Got any beef with this ruling?

Text Copyright John L. Welch 2017.

"CV INVESTMENTS & Design" Confusable With "CV & Design" for Investment Services, Says TTAB

The Board affirmed a refusal to register the mark shown below left [INVESTMENTS disclaimed], for various financial and brokerage services, finding the mark likely to cause confusion with the registered mark shown below left, for overlapping financial services. Applicant argued that the involved consumers would be sophisticated and would exercise care in their purchasing decisions, but that argument ran into a Stone Lion. In re Cumberland Valley Financial Corp., Serial No. 86827085 (April 5, 2017) [not precedential] (Opinion by Judge Hightower).

Both applicant's and registrant's services included "asset acquisition and management of investment property." There were no limitations in the application  and cited registration as to classes of consumers and channels of trade, and so the Board presumed that they are the same as to the overlapping services.

Moreover, because the marks are used with services that are identical in part, the degree of similarity necessary to support a likelihood of confusion declines.

The Board found that the letters "CV" dominate applicant's mark. The wording in a word-plus-design mark is usually accorded greater weight because the literal portion is the part voiced by consumers when ordering the services. In addition, CV is the leading term in applicant's mark and thus more likely to be noticed. Although the tree design and the word "investments" distinguish the mark somewhat from the cited mark, this has less significance in creating the commercial impression of the mark.

The Board also noted that "marks involving letter combinations can be more susceptible to confusion than word marks." The fact that the letter portions CV may have been derived from the names of the applicant and respondent was of no consequence, absent evidence that consumers are aware of the derivation.

The Board concluded that the first du Pont factor supported a finding of likely confusion.

As to applicant's contention regarding the sophistication of its customers, the Board pointed to the CAFC's decision in Stone Lion Capital Partners, LP v. Lion Capital LLP, 110 SPQ2d 1157 (Fed. Cir. 2014) [TTABlogged here], wherein the court found that "the Board properly considered all potential investors for the recited services, including ordinary consumers seeking to invest in services with no minimum investment requirement." In short, the Board must base its decision on the least sophisticated potential purchasers. Such ordinary consumers will exercise care but are not immune to source confusion. Thus the fourth du Pont factor weighed in favor of a finding of likelihood of confusion.

The Board concluded that the first, second, third, and fourth du Pont factors favored a likelihood of confusion and none weighed against it. Therefore, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Any thoughts?

Text Copyright John L. Welch 2017.

TTAB Finds OVATION FOR MEN & Design Confusable with Two Registered OVATION Marks

In a decision deserving of one clap at most, the Board affirmed a refusal to register the mark shown immediately below - comprising a two-dimensional design of a bottle that includes the words OVATION FOR MEN - for "colognes and perfumes" [FOR MEN disclaimed], finding it confusingly similar to the mark OVATION, registered by two different owners, one registration for hair care products and the other for cosmetics. In re Shawn Crenshaw, Inc., Serial No. 86328394 (April 5, 2017) [not precedential] (Opinion by Judge Lynch).

The Marks: The Board found that the applied-for mark is dominated by the word OVATION. Consumers are likely to perceive the ring-shaped design as a depiction of the cologne or perfume bottle. In a word-plus-design mark, greater weight is typically given to the literal portion of the mark. The Board noted that the term FOR MEN not only appears in smaller font than OVATION, but is disclaimed.

The Board therefore found that the involved marks are similar in appearance and sound. Moreover, the shared word OVATION contributes to a strong similarity in connotation and commercial impression.

And so he Board concluded that the applied-for mark and the cited marks are very similar.

The Goods: Examining Attorney Roger T. McDorman submitted voluminous demonstrating the relatedness of applicant's goods and those of the cited registrations, including third-party web pages and registrations. Applicant argued that its goods are "high-end" and so consumers would exercise care in their purchases, but the Board pointed out that there is no such restriction in the subject application. Similarly, applicant's argument that consumers would not confuse the goods was irrelevant, since the issue is source confusion, not product confusion.

Finally, applicant contended that, because the two cited registrations can co-exist on the Register, registration of applicant's mark would not present any greater likelihood of confusion. The Board was unmoved. Each case must be decided on its own facts, and the allowance of prior registrations does not bind the Board. The record here provides "compelling support for likely confusion between Applicant's mark and these marks."

The Board therefore affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: In view of the relatedness the goods, how could the two cited registrations co-exist on the Register? Maybe there was a consent?

Text Copyright John L. Welch 2017.

Meet the Bloggers XIII: Monday, May 22nd, 7:30 PM, XUP XUP Restaurant

MEET THE BLOGGERS is returning for the 13th time. Perhaps the best non-INTA event ever devised by woman or man, MTB XIII will be held on Monday, May 22nd, 7:30 - 9:30 PM., at XUP XUP in Barcelona (here). Come and meet some of the best trademark attorneys in the world, and while you're at it say hello to the sponsors of this year's event. For details, directions, a look at the sponsoring bloggers, and the RSVP link, go HERE.

Orlando 2016

San Diego 2015

Hong Kong 2014

Dallas 2013

Washington, D.C. 2012. Co-hosts Pelton, Welch, Coleman, Schwimmer

San Francisco, 2011

Boston 2010. Co-hosts: Coleman, Chestek, Schwimmer, and Welch

Seattle 2009

Berlin 2008

Coleman, Schwimmer, Welch, Chicago 2007

Toronto 2006
San Diego 2005 Click on photo for larger picture
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Precedential No. 7: TTAB Affirms Section 2(b) Refusal of Mark Simulating the Prince of Wales Emblem

The TTAB affirmed a Section 2(b) refusal of the mark shown below left, for various goods in classes 20, 21, and 24, including furniture, dinnerware, and fabrics, on the ground that the mark comprises a design that simulates a governmental insignia of the United Kingdom, namely, the Prince of Wales' emblem (shown below right). In re Shabby Chic Brands LLC, 122 USPQ2d 1139 (TTAB 2017) [precedential] (Opinion by Judge Shaw).

Section 2(b) bars registration of a mark that "[c]onsists of or comprises the flag or coat of arms or other insignia ... of any foreign nation, or any simulation thereof." Thus the issue before the Board involved two questions: (1) Is the Prince of Wales' emblem an insignia of a foreign nation; and (2) if so, does the applied-for mark consist of or comprise that insignia, or a simulation thereof?

Insignia?: The Prince of Wales is a member of the British royal family and is heir to the throne. The emblem at issue here has a long association with the Prince of Wales; its use dates back to the 14th Century. The Government of the United Kingdom identified the emblem as "[t]he official emblem of the Prince of Wales" when it notified WIPO in 2005, under the Paris Convention, that this emblem is a 'state emblem' of the United Kingdom. WIPO transmitted this notification to the USPTO pursuant to Article 6ter of the Paris Convention.

The United States has implemented its obligations under Article 6ter, in part, through Section 2(b) of the Trademark Act. The USPTO assigned the emblem a serial number specifically identifying the entry as "non-registration data" and it entered that data into the USPTO search database, to assist examining attorneys when considering possible statutory refusals. This item in the database is not a registration and thus not a basis for a Section 2(d) refusal, but it may form the basis of a Section 2(a) or 2(b) refusal.

The Board concluded that the Prince of Wales' emblem is an "insignia of national authority" on a par with a coat of arms, as found in Section 2(b), and therefore that the emblem qualifies as an insignia of a foreign nation.

Simulation?: Because of the differences between the applied-for mark and the emblem, the Board found that the mark does not consist of, or comprise, the emblem. In determining whether the mark is a "simulation" of the emblem, the Board must consider the "first impression gathered from a view of such mark without a careful analysis and side-by-side comparison ...." In re Advance Indus. Sec., Inc., 194 USPQ 344, 346 (TTAB 1977).

The Board noted several differences, including the banner and wording "Ich Dien," which are missing from applicant's mark. In contrast, the latter includes the initials SC in front of the shield. Also, the quill ends of the feathers are not visible below the crown in applicant's mark, the crowns are slightly different in design, and the feathers are arranged somewhat differently. Nonetheless, the similarities in their commercial impressions outweigh these differences.

[B]oth Applicant’s mark and the Prince of Wales’ emblem create the same overall impression, that of a heraldic crown with three large feathers extending up from the crown. In addition, given the fact that some variation in the representation of the Prince of Wales’ emblem is permitted, it is possible that consumers viewing Applicant’s mark would ascribe any differences between Applicant’s mark and the emblem to such permitted variation.

The Board therefore found that the applied-for mark is a simulation of an insignia of a foreign nation, namely, the Prince of Wales' emblem.

Applicant argued that it is unlikely that customers will believe that the applied-for mark has any association or connection with the Prince of Wales. The Board pointed out, however, that the Prince is able to grant Royal Warrants of appointment to companies, who may then display "The Prince of Wales' Feathers" on their products. Therefore consumers might possible believe that applicant has been granted such a Royal Warrant.

Applicant also asserted that its mark has co-existed with the Prince of Wales' emblem for 13 years without objection or confusion, but the Board pointed out that absence of objection or confusion is irrelevant, since Section 2(b) is an absolute bar, and confusion plays no part in the analysis.

Finally, applicant pointed to two now-cancelled registrations that it owned for nearly identical marks, arguing that it is illogical to deny registration here. The Board pointed out, once again, that each application must be considered on its own merits, and the Board is not bound by the decisions of examining attorneys in other cases. Moreover, the Board noted, the marks in the two prior registrations were examined in 2003, before the Prince of Wales' emblem was claimed and recorded as a state emblem.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Do you think the applied-for mark was inspired by the Prince's emblem?

Text Copyright John L. Welch 2017.

TTAB Test: Which of these Three Mere Descriptiveness Refusals Was Reversed?

One of these three Section 2(e)(1) refusals was reversed. Put on your TTAB judicial robes and see if you can figure out how these recent appeals came out. [Answer will be found in first comment].



In re De Beers UK Limited, Serial No. 86978658 (March 27, 2017) [not precedential]. [Refusal to register MARKET PRICE QUOTE for gemological services, jewelry remounting, and related services].

In re MN Group, LLC, Serial No. 86879481 (March 30, 2017) [not precedential]. [Refusal of PRESS PAPERS for "providing a website featuring resources, namely, non-downloadable publications in the nature of newsletters, white papers, press releases in the field of health, education, and business"].

In re Three Lollies LLC, Serial No. 86779106 (March 31, 2017) [Refusal of TUMMY NATURALS for "medicinal preparations for the mouth to be applied in the form of drops, capsules, tablets and compressed tablets; nausea treatment preparations" [TUMMY disclaimed]].

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TTABlog comment: How did you do? See any WYHA?s here?

Text Copyright John L. Welch 2017.

Precedential No. 6: Applicant Complied With Rule 2.61(b) Request for Information, Says TTAB

The Board affirmed a refusal to register the term LOCKDOWN ALARM on the Supplemental Register, finding it to be generic for "Training services in the field of school safety, school security and crisis preparedness; training services in the field of security and crisis preparedness for schools, hospitals, college campuses, malls, public buildings, office buildings, and other commercial buildings." However, the Board reversed a refusal based on applicant's supposed failure to adequately respond to a Rule 2.61(b) request for information. In re Emergency Alert Solutions Group, LLC, 122 USPQ2d 1088 (TTAB 2017) [precedential]. (Opinion by Judge Masiello).

Genericness: The examining attorney relied on dictionary definitions of "lockdown" and "alarm," and on Internet web pages referring to warning devices called "lockdown alarms."

Applicant's specimen of use described its training program as covering "proper use of the Lockdown Alarm (such as circumstances warranting Lockdown alarm actuation) as well as procedures for effectively responding to the Lockdown Alarm evacuation." Thus it was clear that applicant's services includes training directly related to lockdown alarms.

The Board observed that a term that is the generic name of a particular category of goods is likewise generic for services directed to or focused on that class of goods. Furthermore, the CAFC has repeatedly treated the generic name of a "key aspect" of a service as generic for the service itself. See, e.g., In re Cordua Rests. Inc. 118 USPQ2d 1632 (Fed. Cir. 2016).

Applicant argued that "lockdown alarm" describes only an insignificant element of its complex training services. But the Board pointed out that many of the services that applicant offers are merely different aspects of the proper way to respond to a lockdown alarm. "It is clear from the record that the proper response to the sounding of an alarm is considered an essential skill and is the subject of many other training programs."

The subject matter of any training is not an insignificant “facet” of the training. Rather, it is quite literally the focus of the training. In this case, relevant customers would readily understand LOCKDOWN ALARM to refer to the type of training identified in the application.

And so the Board affirmed this refusal to register.

Rule 2.61 Request: The examining attorney asserted that applicant failed to respond suitably to three questions contained in the Rule 2.61 request for information. The Board disagreed. Applicant provided various documents in response to the request, and, in responding to the questions, "[a]pplicant was entitled to describe its services in its own words."

For example, one of the questions was "Do the applicant’s services involve or pertain to a LOCKDOWN ALARM?" Applicant, in its response, explained how its services might "involve or pertain to" an “emergency alarm.” The Board deemed the response to be adequate: "We find the Examining Attorney's question far too freighted with legal implications to require a 'yes or no' answer. The question comes close to subsuming the ultimate question of whether the proposed mark is generic."

We recognize that applicants normally are expected to answer “yes” or “no” to a question calling for such a response and that examining attorneys are not obligated to infer direct answers from narrative responses to such questions. However, examining attorneys should not elevate the form of an applicant’s response to an information requirement over its substance. We find that Applicant was reasonably forthcoming in its responses, and did not withhold the required information. It merely insisted on giving the information in its own words, coupled with submission of a sample of its advertising.

And so the Board reversed the refusal under Rule 2.61(b)

Read comments and post your comment here.

TTABlog comment: It's not often that the Board sides with the applicant on a Rule 2.61 issue.

Text Copyright John L. Welch 2017.