The TTABlog®

TTABlogger Road Trip: Florida Bar IP Symposium, Orlando March 1-2

2012-02-03T07:06:00.000-05:00

Yours truly will be heading to Florida to speak at the 3rd Annual Intellectual Property Law Symposium of The Florida Bar in Orlando (March 1 and 2) (webpage here). I will appear on Friday, March 2nd. The topic: TTAB Developments! All around trademark expert Anne Gilson Lalonde will be Friday's keynote speaker: "Non-Traditional Trademarks and the Future of Aesthetic Functionality." The brochure for the event may be found here.

Test Your TTAB Judge-Ability on this Section 2(d) Refusal of READYSHIP over SHIPREADY

2012-02-03T05:10:00.002-05:00

Are you ready to shape up or ship out? The PTO refused registration of READYSHIP for "expedited product shipment services, namely shipment of plumbing products and bathroom accessories," on the ground of likely confusion with the registered mark SHIPREADY for various transportation services, including "storage and delivery of goods, "shipping and freight forwarding," and "forwarding of cargo." Applicant Brasstech appealed. How would you rule? In re Brasstech, Inc., Serial No. 77810266 (January 24, 2012) [not precedential].

The marks: The Board got right down to brass tacks. Its precedents hold that confusion is likely between two marks consisting of reverse combinations of the same words if they convey the same meaning or substantially similar commercial impressions. [E.g., RUST BUSTER and BUST RUST; THE WINE SOCIETY OF AMERICA and AMERICAN WINE SOCIETY]. [Or, hypothetically: PAPER SCISSORS ROCK; SCISSORS ROCK PAPER; SCISSORS PAPER ROCK; ROCK SCISSORS PAPER; ROCK PAPER SCISSORS; and PAPER ROCK SCISSORS. - ed.-].

Here, "the transposed marks engender the same commercial impression."

The services: Brasstech lamely argued that its shipping services are offered as a convenience to its customers, and it does not make the actual delivery. The Board, however, was constrained to decide the case based on the recitations of services in the application and the cited registration. [Not sure that why that would make a difference anyway - ed.].

Registrant's services are not limited as to type of goods shipped; they encompass "expedited" shipment of plumbing and bathroom products. Therefore the services are legally identical.

Moreover, for what it's worth, third-party registrations showed that both shipment and delivery services are of a kind that may emanate from a single source under a single mark.

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

TTABlog comment: What about ROCK PAPER ROCK?

Text Copyright John L. Welch 2012.

Cindy B. Greenbaum Appointed as 19th TTAB Judge

2012-02-02T07:00:00.000-05:00

Cindy B. Greenbaum has been appointed an Administrative Trademark Judge at the Trademark Trial and Appeal Board, bringing the total number of TTAB judges to nineteen, by my count. [See the roster here.]

Ms. Greenbaum has been the Managing Interlocutory Attorney at the TTAB for approximately five years. She began her career with the USPTO as a Trademark Examining Attorney, and spent seven years as an Interlocutory Attorney at the TTAB. For several years prior to joining the USPTO, Ms. Greenbaum was in private practice in New York and Washington, D.C.

Ms. Greenbaum received her law degree from the New York University School of Law and her undergraduate degree from The Wharton School of the University of Pennsylvania.

Use of Mark for Menu Item Insufficient for Restaurant Services Application, Says TTAB

2012-02-02T05:10:00.001-05:00

The Board affirmed a refusal to register the mark CHA CHA for restaurant services on the ground that Applicant failed to submit an acceptable specimen of use. The Board ruled that the applied-for mark served only to identify a menu item and did not function as a service mark for restaurant services. In re The Restaurant Company, Serial No. 77508734 (January 17, 2012) [not precedential].

The definition of "service mark" in the Trademark Statute requires that the mark "identify and distinguish" the services from those of others, and indicate the source of the services. A mark will be deemed to function as a service mark "only if purchasers will directly associate the asserted mark with the services in question."

Applicant's specimens of use (shown above) consisted of various promotional pieces [table tents? - ed.]. But, the Board noted, "a proposed mark that serves only to identify an item on a menu does not function as a service mark for restaurant services."

The Board agreed with Examining Attorney Jeffrey C. Coward that the mark CHA CHA, as it appear on the specimens, identifies only a particular food items (wings) and not restaurant services.

[P]urchasers would not directly understand and perceive the mark as it appears on the displays as a source-indicator for the restaurant services. This is so, even though purchasers obviously are aware that applicant is rendering restaurant services because they are in the restaurant when they encounter the mark and can purchase wings while eating in the restaurant. Such a generalized association in the purchaser's mind between the product mark and the restaurant services does not suffice as the requisite “direct association” between the mark and the services which would make the asserted mark a service mark for the restaurant services themselves.

And so the Board affirmed the refusal to register.

Text Copyright John L. Welch 2012.

TTAB Seeks to Fill Managing Interlocutory Attorney Position

2012-02-01T13:08:00.003-05:00

The Trademark Trial and Appeal Board is seeking to fill the position of Managing Interlocutory Attorney.The open period for applications is Wednesday, February 01, 2012 to Tuesday, February 07, 2012. Job posting here.

TTAB Posts February 2012 Hearing Schedule

2012-02-01T05:10:00.000-05:00

The Trademark Trial and Appeal Board has scheduled eight (8) oral hearings for the month of February, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]. Briefs and other papers for these cases may be found at TTABVUE via the links provided.

February 2, 2012 - 10 AM: In re Vibrynt, Inc., Serial No. 77701760 [Section 2(d) refusal of PREVAIL for “medical devices, namely, abdominal implants comprised of artificial materials and associated surgical instrument sets" in view of the registered mark PEEK PREVAIL for “surgical implants comprising artificial material"].

February 2, 2012 - 2 PM: In re MDF Italia SPA, Serial No. 79063250 [Section 2(e)(2) refusal of MDF IT & Design for furniture, furniture fittings, and furniture catalogs, on the ground that the mark is primarily geographically descriptive of the goods].

February 7, 2012 - 10 AM: Lush Ltd. v. Luscious, LLC, Opposition No. 91158982 [Section 2(d) opposition to LUSCIOUS COSMETICS for cosmetics, including bath soaps, in view of the registered mark LUSH for overlapping products].

February 7, 2012 - 2 PM: In re Advanced Armament Corp., LLC, Serial No. 77770899 [Section 2(a) refusal to register the mark shown below for "silencers for firearms" on the ground that the mark is immoral or scandalous].

February 9, 2012 - 10 AM: In re da Vinci, S.A., Serial No. 77651154 [Section 2(d) refusal of DA VINCI for various clothing items in view of the registered marks L’IL DAVINCI and DON DAVINCI for various clothing items].

February 9, 2012 - 2 PM: In re Fedrigoni, S.p.A., Serial No. 79069010 [Section 2(e)(1) mere descriptiveness refusal of MULTILEVEL for various products used in the security printing and anti-counterfeiting industry, including printed holograms and security threads].

February 14, 2012 - 10 AM: Valentino, S.p.A. v. Matsuda & Co., Opposition No. 91174169 [ Opposition to registration of VALENTINO RUDY (Stylized) for watches, spectacles, fabric, clothing, and sporting goods, in view of the registered mark VALENTINO for overlapping goods].

February 28, 2012 - 2 PM: In re IO Data Centers, LLC, Serial No. 77902194 [Refusal to register I/O ANYWHERE for "high density enclosures for computer servers and computer equipment" based on Applicant's failure to disclaim "I/O"]

Text Copyright John L. Welch 2012.

Test Your TTAB Judge-Ability on this Section 2(d) Design Mark Refusal

2012-01-31T05:08:00.001-05:00

Applicant applied to register the design mark shown below left, for various pharmaceutical preparations and pharmaceutical research services, but the PTO refused registration under Section 2(d), finding the mark likely to cause confusion with the mark shown below right, for various pharmaceuticals. How would you rule on the appeal? In re Alvogen IP Co. S.a.r.l., Serial No. 77939659 (January 20, 2012) [not precedential].

The Board found that Applicant's goods and the goods of the cited registration are identical in part. As to the remaining goods and the services, the Examining Attorney submitted a number of third-party registrations showing that these goods and services may emanate from a single source under a single mark. Applicant did not contest this issue.

As to the marks, the Board noted once again that a side-by-side comparison is not the proper approach to the issue of similarity. [How about one atop the other? -ed.]. And because the goods are in part identical, the degree of similarity between the marks necessary to support a finding of likely confusion is diminished as to the parties' goods.

Applicant maintained that its mark would be perceived as the letter "A" due to "the gap in the right side, [and] the thickening and thinning of the line which evokes the stroke of a writing implement" whereas Registrant's mark will "overwhelmingly be perceived as a design rather than a letter."

The Board was not convinced: "Applicant's mark is so highly stylized that it cannot be presumed that it would be perceived as the letter 'A;' it would take some study to discern a lower-case letter 'A' in applicant's mark."

At best, applicant's mark is in the grey area between a pure design mark which cannot be vocalized and a mark which would readily be identified as a letter.

Applicant did not introduce any evidence as to its promotion of the mark or on consumer perceptions of the mark. Thus the Board had to decide the case based solely on the visual similarity of the marks. It considered applicant's mark "as a pure design rather than simply a stylized display of a letter mark." [What happened to the grey area? - ed.]

The Board concluded that, on balance, the marks are more similar than dissimilar. "This, of course, is a subjective determination, and hence we need not comment on the specific similarities and differences between the marks asserted in the briefs."

Finally, the Board observed that when pharmaceuticals are involved, and thus confusion as to source may have serious consequences, it is "extremely important to avoid that which will cause confusion."

And so the Board affirmed the refusal.

TTABlog comment: How did you do? Look, this is a subjective test, so you can't be wrong. Just disqualified for a judgeship.

Text Copyright John L. Welch 2012.

Precedential Nos. 1 and 2: TTAB Rules that Section 2(b) Bars Registeration of a Government Entity's Own Official Insignia

2012-01-30T05:02:00.001-05:00

Facing an issue of first impression in two separate cases, the Board, in well-reasoned decisions, affirmed the PTO's refusals to register the two design marks shown below on the ground that each mark comprises a governmental insignia that is barred from registration by Section 2(b) of the Trademark Act.

In re The Government of the District of Columbia, Serial No. 77643857 (January 18, 2012) [precedential]. The Board affirmed a refusal to register the official seal of the District of Columbia for various goods, including clocks, cufflinks, memo pads, pens and pencils, cups and mugs, and various clothing items.

Section 2(b) prohibits registration of any mark that “consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.” Here there was no dispute that the applied for mark was the official seal, nor that the District of Columbia qualifies as a “municipality” under the statute.

The Board found the language of Section 2(b) to be “plain and clear on its face.” The text of the statute provides for no exception to the ban on registration, even when a governmental entity is the applicant.

Applicant argued that, based on Congressional intent, Section 2(b) should be interpreted to include an exception for governmental entities seeking to register their own insignia. But the Board noted that such an exception is absent from the statutory text, and it refused to presume that Congress intended such an exception. The Board observed that Section 2(c) and 2(d) contain express exceptions like that which Applicant proposes. These provisions clearly show that Congress is fully capable of providing statutory exceptions when it intends to do so. Moreover, Congress has revisited the trademark law numerous times in the 100 years since the prohibition against registering governmental indicia was first enacted, and it has not provided the proposed exception. Consequently, the Board found it hard to believe that Congress intended this governmental exception but failed to expressly provide it.

Applicant contended that this prohibition was originally enacted with the intent of implementing the Paris Convention, which aims to prohibit others from registering government indicia, not governments themselves. The Board, however, pointed out that this prohibition was first enacted into United States trademark law in 1905. Although the Paris Convention currently does not require that signatories to the Convention prohibit registration of official insignia when authorized by the relevant government body, prior to 1911 there was no mention of a “registration with authorization” exception. This suggests that prior to 1911, the Convention's ban on such registrations was to be applied to all such marks, regardless of authorization or the identity of the applicant. Thus it might be presumed that in 1905 Congress intended to adopt the more restrictive approach of the 1883 text of the treaty that was then in effect.

The fact that Section 6ter of the current Paris Convention does not require the United States to bar registration of all governmental insignia is of no help to Applicant because the Paris Convention is not self executing. It creates no rights that Applicant can directly rely on. Even if it were self-executing, the Convention requires only that signatories refuse registration without authorization. It does not require signatories to accept registration when authorized.

Applicant also argued that the central purpose of Section 2 of the Act is to prevent confusion, whereas registration of indicia by the pertinent governmental body would not result in confusion. But the Board easily knocked down that argument, pointing to the ban on immoral and scandalous marks found in Section 2(a) and the various provisions of Section 2(e), none of which relate to confusion. Likewise, Section 2(b) prohibits registration of marks regardless of whether confusion is involved.

Applicant next maintained that Section 2(b) is ambiguous, as evidenced by the PTO’s issuance of three third-party registrations for governmental insignia, as well as by the TTAB’s decision in In re U.S. Dep’t of the Interior, 142 USPQ 506 (TTAB 1964), where the Board reversed a refusal to register a logo of the National Park Service. The Board observed, however, that in the Interior case it concluded that the involved logo was not the type of mark prohibited by Section 2(b) because it was not an official insignia of national authority. In other words, Section 2(b) does not bar a government body from registration of any and all marks, just insignia "of the same class as the flag or coats of arms of the United States."

As to the third-party registrations, the actions of the Examining Attorneys in approving those applications did not create any ambiguity in the statute, nor do they provide Applicant with a right to register its mark. The Board pointed out that arguments based on alleged examining inconsistencies have been consistently rejected. Each mark must be reviewed on the record submitted with the application. “Simply put, the goal of consistency does not require that [the Board] ignore a statutory directive.”

Finally, Applicant argued that Section 2(b) is unconstitutional because it denies Applicant its Fifth Amendment right to due process, and further that the refusal of its application is unconstitutional because it discriminates against Applicant in view of the three third-party registrations of record. The Board disagreed on both counts, but more importantly observed that the TTAB is not an Article III court and has no authority to declare provisions of the Trademark Act unconstitutional.

The Board therefore affirmed the refusal to register.

In re City of Houston, Serial No. 77660948 (January 18, 2012) [precedential]. Following its reasoning in the District of Columbia case, the Board affirmed a Section 2(b) refusal to register the official seal of the City of Houston for various municipal services.

Applicant Houston asserted that the statute is “silent” as to whether governmental entities may register their own official insignia, but the Board flatly disagreed. Section 2(b) categorically provides that all such insignia are barred from registration. It need not set forth or spell out every subset of marks that falls within the ban.

Applicant contended that Section 2(b) was enacted to prevent desecration of the flag and other government symbols by denying their registration, not to prevent government bodies from protecting their own insignia. The Board was unable to verify Applicant’s theory regarding enactment of Section 2(b), but even if it accepted Applicant’s premise, it does not necessarily follow that Congress intended that governments should be able to register their own indicia; rather it appears that Congress chose a complete ban on registration of such indicia in order to prevent their commercial exploitation. As pointed out in the District of Columbia decision, Congress could easily have provided an exception in Section 2(b), but it did not do so. Accordingly, the Board presumed that Congress intended Section 2(b) to apply universally, regardless of the identity of the applicant.

Relying on certain language in In re U.S. Dep’t of the Interior, Applicant urged that it sought registration of its seal not as a “symbol of authority,” but rather in connection with specific municipal services, and therefore its application falls outside the Section 2(b) bar. The Board, however, found that interpretation to be a misreading of Interior because that case does not support the contention that the nature of the involved goods or services is a factor in determining whether Section 2(b) prohibits registration.

The Board in Interior decided that the mark in question [shown above] was not of the type that falls within Section 2(b) because it was not similar in kind to the flag or Great Seal of the United States. In Interior, the Board discussed the nature of the services involved only in the context of determining whether the mark was in fact “the flag or coat of arms or other insignia” of the government.” If the mark is never used as an emblem of authority, but only to identify some service or program provided by a government agency [in Interior the mark was used in connection with recreational and educational services], the mark does not fall within Section 2(b). However, if it is determined that the mark does fall with the Section 2(b) prohibition, then the goods or services identified in the application to register are irrelevant. Here, the City of Houston’s seal is admittedly an official insignia under Section 2(b), and Applicant’s discussion of the particular services recited in its application is of no consequence .

Finally, Applicant pointed to the PTO’s inconsistent treatment of such marks, relying on a list of thirteen third-party registrations. The Board noted that the mere list was of little probative value because it was not even clear that the involved marks were official governmental insignia. In any event, even assuming that the listed registrations are inconsistent with the refusal to register in this case, reversal is not required. The Board is not bound by prior decisions of examining attorneys, nor do applicants have a substantive right to consistency. The Board must decide each case on the record before it.

The Board agreed with Applicant that legal determinations should be applied consistently, but the Board’s obligation is to make the decision correctly. This obligation may not be abdicated to examining attorneys. To the contrary, it is the Board’s role to correct the examining attorney who applies an incorrect legal standard when the case comes before the Board. Even if all of the listed registrations should have been refused registration, those errors do not require the PTO to improperly register Applicant’s mark.

The Board therefore affirmed this refusal to register.

Text Copyright John L. Welch 2012.

TTAB Affirms Genericness Refusal of CHRISTMAS ALE for ... Guess What?

2012-01-27T05:30:00.000-05:00

The Board affirmed a refusal to register CHRISTMAS ALE for beer [ALE disclaimed], on the ground of genericness, and alternatively as merely descriptive under Section 2(e)(1). Despite use of the designation by Applicant Great Lakes Brewing Co. for nearly two decades, the Board found Applicant's evidence of acquired distinctiveness to be insufficient in view of the highly descriptive nature of the applied-for mark. In re Great Lakes Brewing Co., Serial No. 77464553 (January 9, 2012) [not precedential]

Examining Attorney Florentina Blandu submitted dictionary definitions of CHRISTMAS and ALE, as well as evidence showing that "ale is a subset of beer." Internet website pages referred to "Christmas Ale" as a type of seasonal beer available from any number of sources.

Great Lakes pointed to other registrations for marks the include the word CHRISTMAS (but none for beer). The Board found these registrations irrelevant, in part because it is not bound by prior decisions of examining attorneys in other cases.

The Board deemed the genus of goods to be "beer," and it found that CHRISTMAS ALE is understood by the relevant public to refer to the genus of goods, or a subgenus thereof. Therefore it concluded that CHRISTMAS ALE is generic for beer.

As to the claim of acquired distinctiveness, Great Lakes pointed to its use of CHRISTMAS ALE since 1992, annual growth in sales of 30%, its receipt of various awards, its sale of collateral merchandise, and a number of media mentions. The Board, however, ruled that Applicant's commercial success demonstrated only the popularity of the product, not that consumers view CHRISTMAS ALE as a trademark. The record contained "little direct evidence" that relevant consumers perceive CHRISTMAS ALE as a source indicator for the goods. Given the (at least) highly descriptive nature of CHRISTMAS ALE, the Board "would need to see a great deal more evidence (especially in the form of direct evidence from customers) than what applicant has submitted in order to find that the designation has become distinctive of applicant's goods."

And so the Board affirmed both the genericness refusal and the alternative Section 2(e)(1) refusal.

TTABlog comment: The Board deemed CHRISTMAS ALE to be more akin to a compound word than a phrase, but that ruling had no effect on the outcome, since the evidence showed use of the phrase "Christmas Ale" by third parties.

Text Copyright John L. Welch 2012.

Feathers! Survives: USPTO Will Continue TARR Database

2012-01-26T04:35:00.004-05:00

Noting that the trademark user community has raised concerns about the retirement of "old" TARR [see, for example, this TTABlog post], the USPTO has announced [here] that it will "continue to service the 'old' TARR links beyond the February 29th date when the 'old' front page of the USPTO web site will be retired." This is good news for the many trademark practitioners who rely on Carl Oppedahl's fabulous (and free) "Feathers!" trademark database program.

Text Copyright John L. Welch 2012.

TTABlog on the Road: Paris

2012-01-26T03:09:00.014-05:00

Grey, drizzly, and cold in Paris this week. But who's complaining? Here are a few photos, some of which I've brightened up a bit, but others remain in their original grayness. [Click twice on a photo for a larger image].

Text and photos Copyright John L. Welch 2012.

TTAB Dismisses Section 2(e)(3) Petition for Cancellation of SWEDISH FIRESTEEL for Fire Igniters

2012-01-25T02:06:00.002-05:00

Petitioner Ronald W. Fontaine sought to cancel a registration for the mark SWEDISH FIRESTEEL for "hand-operated fire igniter in the form of metal sticks with a holder and a tin, and hand-operated fire strikers" [SWEDISH disclaimed] on the ground that the mark is primarily geographically deceptively misdescriptive under Section 2(e)(3). Fontaine's petition went up in smoke, however, when he failed to satisfy the second element of the Section 2(e)(3) test. Ronald W. Fontaine v. Light My Fire, AB, Cancellation No. 92051304 (January 12, 2012).

A mark is primarily geographically deceptively misdescriptive 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 (i.e., that a goods/place association exists), when in fact the goods do not come from that place; and (3) the misrepresentation would be a material factor in the consumer's decision to purchase the goods."

Prong 1: The Board agreed with Petitioner that the primary significance of the mark SWEDISH FIRESTEEL is geographical. The addition of FIRESTEEL to SWEDISH does not detract from the primary geographic significance of the mark.

Prong 2: The second element of the test raises two inquiries. As to the first inquiry - whether consumers will believe that the goods come from Sweden - Petitioner offered no evidence.

[P]etitioner has not proved that consumers associate the country of Sweden with the type of goods of respondent. The sole evidence petitioner can point to in the record is respondent’s admission that the Swedish military uses fire starter devices. This, by itself, is insufficient to establish a goods/place association.

As to the second inquiry under Prong 2 - whether the goods come from Sweden - Petitioner argued that because the "only essential part" of Respondent's device is not made in Sweden, then the entire product should be considered as not originating in Sweden: "Specifically, respondent contends that the flint rod is the 'only essential part' of respondent’s fire starter device because it is impossible to produce a spark in the absence of pyrophoric metals or ferrocerium."

The Board, however, found that each part of the device is equally important and essential, and that the five other component parts originate in Sweden: (1) striker, (2) striker handle, (3) flint handle, (4) lanyard, and (5) lock.

Moreover, Respondent is a Swedish company with headquarters, research facilities, and production facilities in Sweden. The finished (not Finnish - ed.) product is assembled in and distributed from Sweden. Therefore the Board concluded that Respondent's goods do originate in Sweden.

And so, having found that Petitioner Fontaine wholly failed to satisfy the second prong of the 2(e)(3) test, the Board declined to consider the third prong and instead dismissed the petition for cancellation.

TTABlog comment: Respondent's registration was more than five-years old when the petition for cancellation was filed [wrong! see below]. However, a registration more than five-years old may be cancelled on the ground of geographic deceptiveness. See Consorzio del Prosciutto di Parma v. Parma Sausage Products, Inc., 23 USPQ2d 1894 (TTAB 1992). [However, Parma is an old Section 2(a) deception case, not a 2(e)(3) case.]

TTABlog correction: Anne Gilson Lalonde has pointed out to me that the registration was not five-years old when the petition was filed. The Board's citation of the K-Swiss decision in footnote 1 is strange because it is simply irrelevant here: not only was the subject registration less than five-years old, but also there was no evidence that Respondent changed the geographic source of its goods after the registration issued. Furthermore, as Anne points out in her comments, it is not at all clear that a Section 2(e)(3) claim is available against a 5-year old registration!

Text Copyright John L. Welch 2012.

WYHO? TTAB Dismisses BVD's 2(d) and 43(c) Opposition to BOSIDENG BSD and Design

2012-01-24T03:07:00.001-05:00

Bosideng applied to register the mark shown immediately below for "suits, coats, overcoats, shirts, trousers, skirts, sweaters, T-shirts, pajamas, underwear, leather shoes." B.V.D. opposed on the grounds of likelihood of confusion and dilution. The Board dismissed both claims, finding the involved marks too dissimilar and deeming the BVD mark not famous enough for dilution purposes. If it were up to you, would you have opposed? The B.V.D. Licensing Corporation v. Bosideng Co., Ltd., Opposition No. 91173468 (January 10, 2012] [not precidential

Likelihood of Confusion: B.V.D. relied on nine registrations for the mark B.V.D. or BVD, and on use of the mark since about 1876. Sales figures, dictionary entries recognizing BVD as a trademark, the extremely long period of use, and third-party magazine survey evidence of the marks' renown led the Board to conclude that BVD is famous for purposes of likelihood of confusion.

The goods of the parties are in part identical, and therefore the Board presumed that they travel in the same channels of trade to the same classes of consumers. The Board found underwear is not purchased on impulse. Although these are relatively inexpensive goods, "[t]here is no per se rule that low price equates to a low degree of purchaser care especially when opposer’s own witness testified that the purchase of underwear is a 'planned purchase.'" However, the factual record was incomplete on this issue, and so the Board considered this du Pont factor to be neutral.

As to the marks, the Board found that Applicant's mark is dominated by the word BOSIDENG, a coined word. "The letters BSD are so buried in the middle of applicant’s mark and so innocuous that consumers will not perceive applicant’s mark as being similar in appearance or sound to opposer’s mark." Moreover, the marks create different connotations and commercial impressions.

The Board found the dissimilarities in the marks to be dispositive and it dismissed the Section 2(d) claim.

Dilution by Blurring: The standard for fame in the dilution context is more stringent than that for fame in the Section 2(d) context. BVD failed to clear the higher hurdle. "[T]he transformation of a term into a truly famous mark" means that the mark must be a household name."

BVD's evidence fell short. There was no evidence regarding advertising expenditures, no evidence regarding how many people saw BVD's advertising, and no media evidence showing widespread recognition of the BVD mark, other than the aforementioned magazine surveys. However, those surveys were "most akin to a brand awareness study but they are of limited probative value because opposer did not proffer a witness with first-hand knowledge of the study to explain how the study was conducted, how many people participated in the study or how many people read the published study."

B.V.D. argued that the Board should take judicial notice of the fame of its mark, based upon a 1988 CAFC decision in which the court took judicial notice of “the fact that within our jurisdiction, which is the whole United States, the B.V.D. trademark is at least widely, if not universally, known.” The Board pointed out, however, that the issue there was likelihood of confusion, not dilution. The Board "will not take judicial notice of the fame a mark for purposes of dilution."

[J]udicial notice may be taken of adjudicative facts [i.e., the facts that would normally go to a jury in a jury trial] and judicial notice of facts should only be taken when the matter is “beyond reasonable controversy.” *** We should not use a debatable supposed fact [i.e., the fame of the B.V.D. mark] to bootstrap a dubious conclusion to support an element of opposer’s dilution claim.

For the sake of completeness, the Board also considered the similarity or dissimilarity of the marks in the dilution context. It found the marks "so different" that Bosideng's mark will not "trigger consumers to conjure up" the BVD mark. "Accordingly, applicant’s mark will not create an association with opposer’s BVD mark to support opposer’s dilution claim."

And so the Board dismissed BVD's Section 43(c) claim as well.

TTABlog comment: I think this decision should be precedential, at least for the discussion of judicial notice.

[Please excuse the inconsistent use of BVD and B.V.D. Sometimes the mark is referred to in one way, sometimes the other.]

Text Copyright John L. Welch 2012.

A Sampling of TTAB Motion Practice

2012-01-23T05:05:00.000-05:00

As we all know, the vast majority of TTAB proceedings never reach final decision. But many involve motion practice of one sort or another. The TTABlog focuses primarily on final decisions, but here is a sampling of recent rulings on assorted interlocutory motions.

Embarcadero Technologies, Inc. v. Delphix Corp., Opposition No. 91197762 (January 10, 2012) [not precedential]. Motion to strike four affirmative defenses. Defense of failure to state a claim stricken, but motion denied as to laches and acquiescence (generally unavailable in an opposition proceeding) because Applicant relied on the Morehouse doctrine, and denied as to equitable estoppel. [See Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 160 U.S.P.Q. 715, 717 (C.C.P.A. 1969) (no injury from registration of BLUE MAGIC for pressing oil when applicant owned prior registration for BLUE MAGIC for hair dressing and “while there are trifling differences [between the marks] it takes careful inspection to detect them and the record showed the products sold under the two marks were ‘one and the same’”)].

Tata Sons Limited v. Tata’s Natural Alchemy, LLC, Opposition No. 91193987 (January 10, 2012) [not precedential]. Motion to amend notice of opposition denied as untimely because Opposer unduly delayed in bringing its motion (to add a registration issued eleven months before the filing of the motion, on an application that was on file when the notice of opposition was filed).

The Clorox Company v. Hermilo Tamez Salazar, Opposition No. 91198922 (January 12, 2012) [not precedential]. Applicant's motion for discovery under Rule 56(d) granted as to relatedness of the goods, classes of purchasers, and trade channels, but denied as to other topics first raised in Applicant's reply brief in support of the motion.

Robert P. Hornsby, Jr. v. Megan L. Murphy, Cancellation No. 92047058 (January 12, 2012) [not precedential]. Order to show cause dismissed as to Petitioner's failure to file a brief, but motion for leave to file the brief denied because Petitioner did not establish excusable neglect under the Board's Pumpkin test.

Oneida Ltd. v. Oneida Indian Nation of New York, Oppositions Nos. 91151254 and 91151404 (January 13, 2012) [not precedential]. Opposer's motion to re-open Applicant's testimony period for purposes of cross-examination denied under the excusable neglect standard, and its motion to extend its rebuttal period by sixty days denied under the good cause standard. However, the rebuttal period was re-set to give Opposer the ten days remaining in its rebuttal period when it filed its motion.

Text Copyright John L. Welch 2012.

TTABlog on the Road: Photos of Villefranche-sur-Mer

2012-01-20T05:22:00.001-05:00

I have been in Villefranche-sur-Mer, on the French Riviera, this week. So I'm going to take the day off and enjoy the sunshine and warm weather. Here are a few photos taken of and around the town. (Click twiceon photo for larger image).

Copyright John L. Welch 2012.

The Top Ten TTAB Decisions of 2011 [Part II]

2012-01-18T00:38:00.003-05:00

The issue of bona fide intent, or lack thereof, bobbed to the surface with increasing frequency, but a recent decision muddied the waters regarding the remedy available when a lack of bona fide intent is proven. On the Madrid front, the Board emphasized, in two decisions, the need for proper and complete electronic filing of oppositions to Section 66(a) applications. And it clarified the nature of the proof necessary to establish that a mark is primarily geographically deceptively misdescriptive under Section 2(e)(3).

One well-known applicant overcame a genericness refusal and established acquired distinctiveness through impressive survey evidence. And the Board rejected an application to register a mark for medical reports on the ground that the reports were merely part of applicant’s services and not separate goods in trade. [This post is the second of two parts; the first five cases on the Top Ten list may be found here. Additional commentary on each case may be found at the corresponding TTABlog posting].

Spirits International, B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d 1545 (TTAB 2011) [precedential]. [TTABlogged here]. The Board sustained this opposition to registration of the mark MOSKONISI (Stylized) for various alcoholic and nonalcoholic beverages in classes 32 and 33, on the ground of lack of bona fide intent. Opposer Spirits established, through Applicant’s discovery responses, a prima facie case of lack of bona fide intent regarding the alcoholic beverages. Applicant Taris failed to submit any evidence, and so the Board sustained the opposition on that ground, entering judgment immediately on the claim and declining to consider Opposer’s alternative Section 2(d), which was contingent upon registration of its pleaded mark. Although the Board found that Applicant lacked a bona fide intent to use its mark only as to alcoholic beverages, it sustained the opposition as to all the goods in both classes, including the non-alcoholic beverages, in a ruling that appears in conflict with its prior decision in Wet Seal, Inc. v. FD Management, Inc., 82 USPQ2d 1629 (TTAB 2007) (stating in dictum that only the particular goods for which a lack of bona fide intent is shown will be deleted from an application). [See TTABlog comment here].

Hunt Control Systems, Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558 (TTAB 2011) [precedential]. [TTABlogged here]. An opposition to a Section 66(a) “Madrid application” must be filed electronically via ESTTA and the notice of opposition may not be amended to add new grounds. See Trademark Rules 2.101(b)(2) and 2.107(b). These rules facilitate the prompt notification to WIPO that an opposition has been filed: ESTTA generates an opposition form that is automatically forwarded to WIPO. This notification must be sent within strict time limits, and failure to timely notify WIPO may result in the opposition being limited by the information sent or dismissed entirely. Here, on the ESTTA form Opposer Hunt identified six items of the items in Applicant’s class 9 list of goods, but argued that the scope of the opposition was broader because “in the supplementary explanation of the basis for the opposition that was attached to the ESTTA opposition form, opposer specifically recites the same six goods and adds to such recitation ‘and related products in International Class 9’ as constituting the objectionable goods.” The Board ruled that, for Madrid oppositions, the opposed goods must be limited to those identified on the ESTTA form because that is the information transmitted to WIPO. CSC Holdings, LLC v. SAS Optimhome, 99 USPQ2d 1959 (TTAB 2011) [precedential]. [TTABlogged here]. The Board applied the reasoning of Hunt Control in limiting the grounds for opposition to the single ground designated on the ESTTA form (likelihood of confusion), despite the inclusion of additional grounds (fraud and lack of bona fide intent) in the attached pleading.

In re Jonathan Drew, Inc. d/b/a Drew Estate 97 USPQ2d 1640 (TTAB 2011) [precedential]. [TTABlogged here]. In affirming a Section 2(e)(3) refusal of KUBA KUBA for cigars, tobacco, and related products on the ground that the mark is primarily geographically deceptively misdescriptive of the goods, the Board attempted to clarify the law of Section 2(e)(3) in view of recent court decisions. Applicant Drew did not dispute that the primary meaning of “Cuba” is geographic, or that Cuba is famous for its tobacco products and cigars. Moreover, it conceded that its products will not originate in Cuba, nor will its products be made from Cuban seed tobacco. Drew principally argued that the PTO did not meet the high burden to prove that a substantial portion of relevant consumers would be materially influenced by the mark to purchase the products; Drew contended that direct evidence of public deception is required. The Board, however, opined that a “strong or heightened goods/place association, which we have here, is sufficient to support a finding of materiality.” Direct evidence of public deception is not required: “[W]e may infer from the evidence showing that Cuba is famous for cigars, that a substantial portion of relevant consumers would be deceived."

In re Country Music Association, Inc., 100 USPQ2d 1824 (TTAB 2011) [precedential]. [TTABlogged here]. CMA sought to register COUNTRY MUSIC ASSOCIATION in standard character and design form for “association services, namely, promoting country music, and promoting the interests of country music entertainers and the country music recording industry,” asserting acquired distinctiveness under Section 2(f). The PTO refused registration on the alternative grounds of genericness, or mere descriptiveness and lack of secondary meaning. The Board reversed the refusals (but required a disclaimer of ASSOCIATION). As to genericness, the PTO provided website evidence that 28 other associations use the phrase COUNTRY MUSIC ASSOCIATION preceded by a descriptive, geographical, or other term. CMA successfully countered with two expert reports and a Teflon survey, in which “[a] significant number of surveyed respondents, 85%, answered that COUNTRY MUSIC ASSOCIATION is a brand name.” As to acquired distinctiveness, CMA proved that the mark has been in use since 1958 and 30 million viewers watch its annual awards show. In addition, advertising expenditures, website traffic, and the survey results led the Board to find that CMA had satisfied Section 2(f).

In re Ameritox Ltd., 101 USPQ2d 1081 (TTAB 2011) [precedential]. [TTABlogged here] Ameritox sought to register the mark RX GUARDIAN for "printed reports featuring medical laboratory results provided to medical practitioners for record keeping purposes." [see the specimen of use shown below.] The Board, however, agreed with the PTO and it affirmed the refusal to register under Section 1, 2, and 45. On its website, Ameritox refers to its "Rx Guardian (SM) process." Based on the website and the specimen of use, the Examining Attorney maintained that the subject reports were nothing more than a vehicle by which the results of Applicant's services are reported. They are not available as separate "goods in trade." The Board noted that ancillary items, like invoices, forms, and reports, used to conduct business do not constitute goods in trade. It found that Applicant's website demonstrated that RX GUARDIAN is a drug testing and reporting service. Ameritox does not advertise the reports separately from its services. The reports merely provide information based on the particular test results. In short, "[t]he fundamental question in this case is what is being offered for sale under the RX GUARDIAN mark?" There was no evidence that Ameritox sells reports apart from its services; instead, the reports are "part and parcel" of its services, and thus are not "goods in trade."

(click on photo for larger picture)
Text Copyright John L. Welch 2011-12.

The Top Ten TTAB Decisions of 2011 [Part I]

2012-01-17T01:04:00.003-05:00

Once again, yours truly has fearlessly chosen the ten TTAB decisions that he considers to be the most important and/or interesting from the previous calendar year. [This is the first of two posts, the first five entries being set out below. Additional commentary on each case may be found at the corresponding TTABlog posting].

Dilution by blurring made a particularly big splash in the TTAB pool during that last few months of the year. The Board relaxed its requirement that a plaintiff show that the marks at issue are identical or substantially similar in order to win a dilution claim, but it increased its focus on proof that any association between the marks will cause a diminution of the distinctiveness of the famous mark.

In a significant procedural ruling, the Board thankfully sank a defendant’s attempt to obtain sweeping e-discovery. And an application to register a top level domain name (TLD) as a service mark was torpedoed by a mere descriptiveness refusal.

Meanwhile, the issue of fraud treaded water; in fact, not a single fraud claim has been upheld by the Board since the CAFC’s Bose decision in 2009. A nonprecedential fraud ruling was noteworthy because the Board excused an applicant’s filing of a fabricated specimen of use – an act that most would consider a prime example of fraud – because the applicant’s president, as a layperson, had an “honest misunderstanding” of what was proper.

Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 100 USPQ2d 1904 (TTAB 2011) [precedential]. [TTABlogged here]. The Board denied Defendant Princeton’s motion to compel sweeping e-discovery, observing that in TTAB proceedings “the burden and expense of e-discovery will weigh heavily against requiring production in most cases.” The Board discussed at length the role of e-discovery in civil actions and in Board proceedings, noting that in the courts “there is an increasing focus on the question of proportionality, and on whether the type of extensive ESI discovery applicant advocates here is always justified.” In TTAB proceedings, the Board observed, “discovery is expected to be less extensive than in court, and demands for e-discovery should be carefully scrutinized.” Given that the Board has limited jurisdiction, and noting the concerns expressed by the Federal Circuit regarding e-discovery, “the burden and expense of e-discovery will weigh heavily against requiring production in most cases.” Here, Defendant “simply failed to establish that opposer’s method of searching and producing documents was insufficient as a general matter, given the parties’ failure to agree on an ESI discovery protocol in advance, the nature of applicant’s discovery requests and the issues in this proceeding.”

Nike, Inc. v. Peter Maher and Patricia Hoyt Maher, 100 USPQ2d 1018 (TTAB 2011) [precedential]. [TTABlogged here]. The TTAB sustained Nike’s opposition to registration of the mark JUST JESU IT for various items of athletic apparel, finding the mark likely to cause confusion with and likely to dilute (by blurring) the famous and registered mark JUST DO IT for overlapping clothing items. As to dilution, the Board jettisoned its former “substantial similarity” or “near identity” test, instead holding that the marks need only be “sufficiently similar in their overall commercial impressions” that the requisite association exists for a finding of blurring. Applying the six non-exhaustive dilution factors of Section 43(c)(2)(B), the Board concluded that “an association exists between the parties’ marks that would impair the distinctiveness of opposer’s famous mark.” See also UMG Recordings, Inc. v. Mattel, Inc., 100 USPQ2d 1868 (TTAB 2011) [precedential].[TTABlogged here], wherein the Board sustained a dilution claim, finding the mark MOTOWN METAL for toy vehicles likely to cause dilution of UMG's famous mark MOTOWN for musical entertainment and musical recordings.

Rolex Watch U.S.A., Inc. v. AFP Imaging Corporation, 101 USPQ2d 1188 (TTAB 2011) [precedential]. [TTABlogged here]. The Board dismissed Opposer Rolex's dilution-by-blurring claim, ruling that Rolex had failed to prove that the applied-for mark ROLL-X for "x-ray tables for medical and dental use" would impair the distinctiveness of Opposer's famous ROLEX mark. The Board concluded that the dissimilarity between the marks, the conflicting results of the survey, and the lack of evidence of Applicant's intent to create an association, outweigh the recognition, distinctiveness, and substantially exclusive use of the ROLEX mark. Moreover, despite establishing an "actual association" between the marks, Rolex did not provide any evidence of the degree to which its marketing power would potentially be diminished by Applicant's intended use of its mark. And in a further ruling, the Board dismissed Rolex's lack-of-bona-fide-intent claim when Applicant AFP overcame the prima facie case established by its lack of documentation by proving that it was capable of manufacturing the identified tables as an extension of its product line.

In re theDot Communications Network LLC, 101 USPQ2d 1062 (TTAB 2011) [precedential]. [TTABlogged here]. Brushing aside several third-party registrations for TLD marks, the Board affirmed a refusal to register the mark .MUSIC in each of five applications, for domain registration and hosting services, various computer-related services, and music-related goods, on the ground that the mark is merely descriptive under Section 2(e)(1). The Board’s ruling was based “on the current marketing environment which is different than the marketing environment when many of the third-party registrations relied upon by applicant were issued.” The PTO maintained that “music is a feature of applicant’s goods and services” and that the period at the beginning of the mark is “mere punctuation that does not alter the commercial impression ….” Applicant asserted that a TLD does have a source-identifying function, but the Board concluded that the public will perceive .MUSIC “as a top-level domain associated with the field of music because there has been a concerted public effort to build support for its use as a top-level domain in this field.”

Information Builders, Inc. v. Bristol Technologies, Inc., Opposition No. 91179897 (January 10, 2011) [not precedential]. [TTABlogged here]. In this, the only non-precedential decision in this year's Top Ten, Applicant Bristol Technologies sought to register the mark BRISTOL FOCUS for computer operating system programs, but Opposer raised two grounds in opposition: fraud and likelihood of confusion. The Board sustained the Section 2(d) claim but dismissed the fraud claim, even though Applicant concocted a specimen and falsely stated that its mark was in use as of the application filing date. The Board ruled that Opposer failed to meet its “heavy burden of proof” to show fraud. Opposer argued that “Applicant’s fabrication of a new specimen … constitutes clear and convincing evidence that Defendant sought to mislead the Patent and Trademark Office ....” The Board agreed that Applicant’s statement of use was false and material, but it ruled that the record did not establish that Applicant’s president “knowingly made a false representation with respect to use of the mark as shown on these specimens with a willful intent to deceive the U.S. Patent and Trademark Office.” “Mr. Bristol believed that the statement was true at the time he signed the statement of use.” As a layperson, he had “an honest misunderstanding” which the Board "would not characterize … as trying to fabricate a fraudulent specimen."

Copyright John L. Welch 2011-2012.

TTAB Issued 37 Precedential Decisions in 2011

2012-01-13T05:01:00.001-05:00

The Trademark Trial and Appeal Board issued 37 precedential decisions in calendar 2011, a decrease of about 30% from the average annual output of 56 for the prior five-year period. The ratio of precedential decisions to total decisions, however, remained relatively constant according to my calculation: about 10 to 12 %. In other words, the total number of final decisions issued by the Board fell considerably last year, perhaps because so many Board employees were focusing on completion of the long-awaited revision to the Trademark Board Manual of Procedure. In any case, here is a running compilation of the precedential decisions of 2011, categorized according to subject matter.

Section 2(a) - Immoral or Scandalous:

Precedential No. 25: TTAB Finds Raised Middle Finger Design for Bottle to be Scandalous or Immoral, Affirms 2(a) Refusal

Section 2(d) - likelihood of confusion:

Section 2(e)(1) - Mere descriptiveness:

Precedential No. 31: TTAB Affirms Mere Descriptiveness Refusal of ".MUSIC" for Domain-Related Services

Section 2(e)(3) - Primarily geographically deceptively misdescriptive:

Precedential No. 3: Finding KUBA KUBA Primarily Geographically Deceptively Misdescriptive for Cigars, TTAB Affirms 2(e)(3) Refusal

Section 2(f) - acquired distinctiveness:

Precedential No. 4: TTAB Finds That "NKJV" Has Acquired Distinctiveness for Bibles

Concurrent Use:

Precedential No. 34: TTAB Approves Geographic Restriction in Concurrent Use Proceeding Despite Overlap of Parties' Territories

Dilution:

Failure to Function:

Precedential No. 16: TTAB Finds That Orange-and-Green Color Combination Fails to Function as a Trademark For Newport Cigarettes

Functionality:

Genericness:

Goods in Trade:

Precedential No. 35: Finding Applicant's Medical Reports not to be Goods In Trade, TTAB Affirms Refusal to Register

Lack of bona fide intent:

Res judicata:

Single Creative Work:

Precedential No. 36: TTAB Enters Summary Judgment Cancelling Trademark Registration for the Title of a Single Creative Work

TTAB Discovery/Evidence/Procedure:

Text ©John L. Welch 2011-12.

Test Your TTAB TriviAbility: Which Law Firms Filed the Most Oppositions in 2011?

2012-01-12T06:09:00.001-05:00

Which law firm filed the most oppositions? Well, tell me what firm represents Major League Baseball? The answer to those two questions is supplied by the folks at Towergate Software, IP data mining specialist, who have (once again) compiled a list of the most frequent filers for the past year. The list of the top 16 firms may be found here, in a table that may be expanded to show the name of each plaintiff and each opposition number.

I recommend that you check out Towergate's 2(d) Citation Watch service (details here). This watch service highlights the marks of your firm's clients that were cited by the PTO against other marks, and includes links to the pertinent records.

Text Copyright John L. Welch 2012.

Test Your TTAB Judge-Ability on These Three Mere Descriptiveness Refusals

2012-01-11T05:05:00.001-05:00

Applicant Luby’s Fuddruckers applied to register the following three marks for restaurant services: BETTER TOPPINGS. BETTER BURGER., BETTER BUNS. BETTER BURGER., and BETTER BEEF. BETTER BURGER. Examining Attorney Ronald ~~McDonald~~ McMorrow refused registration on the ground of mere descriptiveness under Section 2(e)(1). Fuddruckers argued (as usual) that the marks are at most suggestive, that they are uniquely alliterative and clever, and, with regard to the first two marks, that the words "toppings" and "buns" may call to mind the "scantily clad women featured in restaurants such as HOOTERS, TILTED KILT and TWIN PEAKS." How would you rule? In re Luby's Fuddruckers Restaurant's LLC, Serial Nos. 77877292, 77878602, and 77876646 (December 22, 2011) [not precedential].

The Examining Attorney submitted dictionary definitions of the constituent words, as well as Internet excerpts showing use of the words, including the term "better burger," in connection with restaurant services. The Board found the marks to be merely descriptive because they are laudatory terms that directly conveys to consumers that applicant’s restaurant services feature high quality ingredients.

The Board disagreed with Applicant that the word "better" is vague, finding the marks to be definite statements of superior quality that are not vague or nebulous. As to the arguments regarding "toppings" and "buns," there were no references to those words in the evidence submitted, showing that "scantily clad female servers have become a common feature of trade dress for restaurant services."

As to the uniqueness or cleverness of the marks, the Board noted that other restaurants use the same alliterative structure, including the term "better burger," indicating that there is a competitive need to use that term.

Finally, Fuddruckers pointed to its ownership of registrations for the marks BETTER VALUE, BETTER BURGER, BETTER TIME, BETTER BURGER., BETTER VARIETY. BETTER BURGER., and BETTER EVERYTHING, BETTER BURGER. The Board, however, observed once again that each case must be decided on its own record, and the Board is not bound by prior examination decisions in other cases.

And so the Board affirmed the refusals.

Text Copyright John L. Welch.

WYHA? Applying Doctrine of Foreign Equivalents, TTAB Finds LA PELLE Merely Descriptive of Leather for Furniture

2012-01-10T05:12:00.000-05:00

Rejecting Applicant's "double entendre" argument, the Board affirmed a Section 2(e)(1) refusal to register the mark LAPELLE, finding it merely descriptive of "leather for furniture." Examining Attorney Ronald E. DelGizzi relied on dictionary evidence showing that, in Italian, "la" means "the" and "pelle" means leather." Would you have appealed? In re Shanghai Leather, Inc., Serial No. 77846384 (December 12, 2011) [not precedential].

The Board pointed out that the doctrine of equivalents "generally requires considering the meaning of a mark in a non-English language to the speakers of that language," provided that the language is modern and not dead or obscure. Even so, the doctrine should be applied only when it is likely that the ordinary American purchaser would stop and translate the term into its English equivalent. The "ordinary American purchaser" includes those proficient in a non-English language "who would ordinarily be expected to translate words into English."

Applicant argued that, under the CAFC's decision in In re Spirits International, the PTO must show that the number of people who speak Italian must constitute a "substantial portion" of the intended audience. However, the Board pointed out, Spirits involved a refusal under Section 2(e)(3) on the ground that the mark was primarily geographically deceptively misdescriptive. Under that provision, it must be shown that the misdescription is material to the purchasing decision and that "an appreciable number of consumers for the goods and services will be deceived." That is not a test for mere descriptiveness.

The essential question before us in this application is whether Italian speakers would translate the mark or take the mark at face value; not whether Italian speakers would find the mark deceptive.

The Board found that Italian speakers would understand LA PELLE to mean "the leather," and therefore it is merely descriptive of Applicant's goods. The compression of the words into a single term does not avoid this finding.

Finally, Applicant played the "double entendre" card, arguing that LAPELLE also means a part of a sport coat. The Board, however, found no double meaning. The mark must be considered not in the abstract, but in the context of the identified goods, and there was no reason to think that an Italian speaker who recognized LAPELLE as meaning "the leather" would associate the mark with a lapel of a coat. Moreover, the Italian word for "lapel" is "risvolto."

And so the Board affirmed the refusal to register.

Text Copyright John L. Welch 2012.

Precedential No. 37: TTAB Applies Claim Preclusion to 2(f) Issue, But Not Genericness, in AMERICAN INFRASTRUCTURE Oppositions

2012-01-09T06:09:00.004-05:00

In this well-reasoned and instructive decision, the Board entered partial summary judgment in two oppositions, concluding that res judicata (claim preclusion) barred consideration of the issue of acquired distinctiveness under Section 2(f) in light of a judgment in an earlier civil action between the parties. However, it rejected Opposer Zachry’s assertion that claim preclusion applied to the issue of genericness due to Applicant’s default in three related oppositions. Zachry Infrastructure, LLC v. American Infrastructure, Inc., 101 USPQ2d 1249 (TTAB 2011) [precedential].

Applicant sought to register the mark AMERICAN INFRASTRUCTURE in standard character form for various construction services. Zachry alleged that the mark is generic for the services, or is merely descriptive under Section 2(e)(1), primarily geographically descriptive under Section 2(e)(2), and lacking in acquired distinctiveness. The Board consolidated these two proceedings with the three related oppositions, each involving a mark that included the phrase AMERICAN INFRASTRUCTURE in design form, and with additional wording in two of the marks. It then suspended all of the proceedings pending the outcome of a civil action brought by Applicant against Zachry, based on Zachry’s use of AMERICAN INFRASTRUCTURE as part of its (prior) name.

The district court entered summary judgment against Applicant, ruling that it had failed to provide sufficient evidence to create a genuine factual issue regarding Zachry's defense of lack of acquired distinctiveness. In view of the court ruling, Opposer Zachry filed a motion for judgment in all five pending opposition proceedings. Applicant then expressly abandoned the applications for the three design marks that included the words AMERICAN INFRASTRUCTURE, and the Board entered judgment by default against Applicant in those three oppositions.

Along with its opposition to the motion for judgment, Applicant filed an unconsented motion to amend the two standard character mark applications to seek registration on the Supplemental Register. It asserted that the district court did not determine that the AMERICAN INFRASTRUCTURE mark was incapable of distinguishing its services and that its motion to amend to the Supplemental Register should therefore be granted.

Applicant asserted that the district court did not determine that the AMERICAN INFRASTRUCTURE mark was incapable of distinguishing its services and that its motion to amend to the Supplemental Register should therefore be granted.

The Board agreed with Zachry that claim preclusion applied to the question of whether AMERICAN INFRASTRUCTURE had acquired distinctiveness. In the two standard character applications, Applicant sought registration under Section 2(f), thereby conceding that the mark is not inherently distinctive. Applicant therefore had to prove acquired distinctiveness in order to obtain a Principal Registration. However, the issue of acquired distinctiveness was fully litigated in the civil action and the determination that the mark had not acquired distinctiveness was necessary to the court's judgment. The judgment was therefore binding on the Board and barred re-litigation of the issue.

As to genericness, the Board ruled that claim preclusion did not apply because the transactional facts at issue differed between the civil action and the oppositions. The civil action involved a claim by Applicant that its mark is distinctive and protectable, and the issue of whether Zachry had infringed. In the oppositions, however, the issue is Applicant’s right to register. Moreover, the district court did not consider whether AMERICAN INFRASTRUCTURE is generic for Applicant’s services, nor did it need to make that determination in order to enter summary judgment on Applicant’s civil claims.

Opposer Zachry further contended that the entry of default judgment in the other three oppositions, which also included claims of genericness, required that judgment also be issued on that claim in these two oppositions. However, because the marks in those three proceedings were different from the standard character mark at issue here, and because the two standard character applications were filed before the entry of the default judgments, claim preclusion does not apply here. As the CAFC stated in Sharp Kabushiki Kaisha v. ThinkSharp, Inc., 79 USPQ2d 1376, 1379 (Fed. Cir. 2006), “a trademark owner is entitled to choose which opposition to defend, when the proceedings are not an attempt to evade the effect of a previous adverse judgment on the merits.” In other words, the Board concluded, Applicant is not required to defend all five oppositions in order to preserve its right to litigate two of them.

Finally, in accordance with its usual practice, the Board deferred until final hearing (or summary judgment) Applicant’s motion to amend to the Supplemental Register.

TTABlog comment: The Board observed in footnote 8 that Applicant did not claim that its mark had acquired distinctiveness during the period between entry of the court judgment and Zachry’s filing of its motion for judgment. In other words, the court judgment that the mark lacked acquired distinctiveness has a limited preclusive effect, in that it merely says that as of the date of the ruling the mark had not become distinctive.

Text Copyright John L. Welch 2012.

Precedential No. 36: TTAB Enters Summary Judgment Cancelling Trademark Registration for the Title of a Single Creative Work

2012-01-06T06:12:00.001-05:00

The Board granted Petitioner Mattel's motion for summary judgment in this cancellation proceeding involving the registered mark LAUGH & LEARN in the design form shown below, on the ground that the phrase is merely the title of a single creative work and therefore unregistrable as a trademark. Respondent Brainy Baby sold both a VHS tape and a DVD under that title, but the Board found that they featured essentially the same content, and some additional content on the DVD was insufficient to show that the VHS and DVD versions constitute a series of works. Mattel, Inc. v. The Brainy Baby Company, LLC, 101 USPQ2d 1140 (TTAB 2011) [precedential].

The title of a single creative work is not considered a trademark, and is therefore not registrable on the Principal Register. "The policy for this is clear. Because a trademark can endure for as long as the trademark is used, at the point that copyright protection ends and others have the right to use the underlying work, they must also have the right to call it by its name."

The title is merely descriptive of the single work and does not function as a trademark. However, if a term is used to identify the source of a series of works, then the term is registrable, even though it may be included in the title of each work in the series.

Here, in the challenged registration the goods are identified as a "series of prerecorded videotapes, audio cassettes, digital video discs and compact discs featuring live and animated educational materials intended to develop and improve the creative and intellectual faculties of infants and children." The issue before the Board was whether respondent was using the mark for a series at the time it filed its application.

Respondent had sold, at the time it filed its application, a VHS tape and a DVD using LAUGH & LEARN as the title of each. The VHS tape and the DVD contained the same "featured program" consisting of "forty-five minutes of elementary learning concepts geared toward toddlers." The DVD, however, includes some additional features: a "scene selection" menu and an "Extras" menu providing information on the making of the Respondent's videos, outtakes, previews of other works, and a DVD-Rom Activities page that provides a website link when the disk is inserted in a computer.

The Board found no genuine dispute that "the additional content on the DVD is insufficient to show that the VHS and DVD versions are a series."

The featured program on both the VHS tape and the DVD are the same creative work, and the addition of the minor enhancements in the DVD does not transform this single work into a series, any more than the variations in a live performance that occur from night to night transform the title of a single production into a series.

Moreover, the LAUGH & LEARN program is promoted in Respondent’s catalogs as a single work available in both VHS and DVD formats. The Board concluded that "consumers will understand that the DVD version, even with the enhancements, is merely the same work as appears on the VHS tape, both of which have the title LAUGH & LEARN, rather than regarding the DVD as another item in a series bearing the mark LAUGH & LEARN."

And so the Board granted the motion for summary judgment.

TTABlog comment: If the policy for the single-work rule is that others must have the right to use the title when the copyright in the work expires, doesn't that same policy apply to a series of works when they go out of copyright? The Board noted that, in a series, each work has its own individual title, and so "a series name is comparable to the title of a periodical publication such as a magazine or newspaper."

Suppose the DVD were title "Enhanced LAUGH & LEARN," or "LAUGH & LEARN version 2.0"? Would that help avoid this result?

Suppose one title in a series goes out of copyright. May one sell copies of that one work, under its original title, but using the "series" mark only descriptively: e.g., "Fred Builds a Castle," a book in the series "STORIES OF FRED" originally published by ABC Publishing Company? Or something like that?

Text Copyright John L. Welch 2011.

TTAB Sustains BIG TEXAS 2(d) Opposition, But Denies Lack-of-Bona-Fide Intent Claim

2012-01-05T05:32:00.001-05:00

We don't see many cases wherein a defendant, despite a lack of supporting documentation, overcomes a claim of lack of bona fide intent. But it happened in this opposition, in which the Board sustained Opposer's 2(d) claim, finding Applicant's mark TEXAS BIG BITES for "organic pastries" likely to cause confusion with opposer's marks BIG TEXAS for danish, pastries and sweet bakery products and BIG TEXAS BUTTERKRUNCH for sweet bakery products. Cloverhill Pastry-Vend, LLC v. 10 Star Enterprises, Inc., Opposition No. 91181131 (December 16, 2011) [not precedential]

Section 2(d): Not much to see here. The Board's took its usual romp through the du Pont factors: goods legally identical; Opposer's marks strong in the marketplace; third-party registration of little probative value; marks similar in sound and appearance; connotation and commercial impression of "Big Texas" unaffected by reversal of words.

Lack of bona fide intent: Discovery revealed that Applicant did not have any business plans, advertising or sales records, or list of customers. Under Commodore Electronics the lack of documentary evidence to support Applicant's alleged bona fide intent is sufficient to establish a prima facie case that the application is invalid ab initio.

Here, however, Opposer itself submitted evidence (Applicant's interrogatory responses) indicating that Applicant has continuously used its mark on cookies for the past decade, has sold these cookies through personal contacts in Maryland and Florida, and has sold them to coffee shops and "personal customers." These were not "organic" cookies, however. Applicant stated that she was looking for appropriate organic ingredients.

The Board concluded that Opposer had failed to meet its burden of proof because:

opposer submitted evidence that applicant had been selling cookies, albeit not organic cookies, under its mark prior to the filing of its application, and that applicant was searching for the proper organic ingredients to use in its organic cookies. Furthermore, applicant’s lack of documents could be explained by applicant’s lack of sophistication with respect to starting a business.

And so the Board found that, on this record, Applicant "did, in fact, have a bona fide intent to use its mark."

TTABlog comment: Well, one might say, "that's the way the cookie crumbles." But I won't.

This case reminds me of Bristol Technologies [TTABlogged here], where submission of an allegedly fraudulent specimen of use was excused because Bristol's president was a layperson. Where does it say that "laypersons" don't have to play by the same trademark rules as the rest of us?

Text Copyright John L. Welch 2011.

Test Your TTAB Judge-Ability on this Service Mark Specimen of Use

2012-01-04T05:55:00.001-05:00

Able was I 'ere I saw Elba? How would you decide this case involving the acceptability of Elba Inc.'s specimen of use [shown below] for the mark FORMULATING HEALTH for manufacturing services in the fields of personal care and pharmaceutical products. The Examining Attorney refused registration, maintaining that the wording of the mark is so small and difficult to find that the phrase fails to function as a source indicator. In re Elba, Inc., Serial No. 77424767 (December 16, 2011) [not precedential].

(click on photo for larger picture)

Elba argued that the phrase FORMULATING HEALTH appears in a different font from the rest of the text, is physically separated from the text describing its services and from the company logo, and is presented in a manner that would be perceived as a service mark for its services. The Examining Attorney did not dispute any of this except for the last part - whether the phrase would be perceived as a service mark - since it is so difficult to discern.

The Board pointed out that "there is no requirement that applicant display the mark FORMULATING HEALTH in any particular size or degree of prominence on its website specimen." End of story. Refusal reversed.

TTABlog comment: Really? How small a font size can one get away with? The smallest one I know of is called "Lilliput," and with it one can write the entire TBMP on the head of a pin. Is that not too small?

Text Copyright John L. Welch 2012.

Towergate Software: Gallery of Design Mark Refusals

2012-01-03T07:58:00.002-05:00

The folks at Towergate Software, specialists in IP data mining, have compiled an interesting gallery of design mark refusals, here. The gallery displays the cited design mark and the applied-for mark side-by-side, covering more-or-less the calendar year 2011.

(click on photo for larger picture)
Check out Towergate's 2(d) Citation Watch service (details here). This watch service highlights the marks of your firm's clients that were cited by the PTO against other marks, and includes links to the pertinent records.

Text Copyright John L. Welch 2012.

TTAB Posts January 2012 Hearing Schedule

2012-01-03T06:50:00.000-05:00

The Trademark Trial and Appeal Board has scheduled four (4) oral hearings for the month of January, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]. Briefs and other papers for these cases may be found at TTABVUE via the links provided.

January 10, 2012 - 2 PM: In re Modern Woodmen of America, Serial No. 77203020 [Section 2(d) refusal of MaxCL for "fraternal services, namely, life insurance underwriting" in view of the registered mark MAX in standard character and design form, for "underwriting of property and casualty insurance"].

January 17, 2012 - 11 AM: In re PBM Products, L.L.C., Serial Nos. 77368754 and 77385593 [Refusals to register VERMONT ORGANICS, in standard character and design form, for "infant formula having organic ingredients" on the ground that the word mark is primarily primarily geographically descriptive of the goods under Section 2(e)(2), and the design mark requires a disclaimer of VERMONT ORGANICS].

January 24, 2012 - 10 AM: In re 3M Company, Serial Nos. 77701886 and 77701928 [Refusal to register the product configuration marks (wedge-shaped dispensers) shown below, for "hand-sanitizing antiseptic with moisturizers," on the grounds of functionality under Section 2(e)(5) or, alternatively, failure to function as a trademark (lack of acquired distinctiveness), and failure to satisfy the requirement for an accurate and concise description of the marks].

January 31, 2012 - 11 AM: In re John Shope, Serial No. 77671449 [Section 2(d) refusal of JOHN SHOPE'S SINISTER INDUSTRIES for motorcycles and structural parts and motorcycle customization and maintenance services in view of the registered mark SINISTER CYCLES for "retail store services featuring motorcycle parts and accessories"].

Text Copyright John L. Welch 2012.

After Benedict v. Super Bakery, How Are We to Interpret Rule 2.127(d)?

2012-01-02T15:31:00.006-05:00

In the CAFC's recent decision in Ward E. Benedict v. Super Bakery, Incorporated, Appeal No. 2011-1131 (Fed. Cir. December 28, 2011) [precedential] [TTABlogged here], the appellate court found Trademark Rule 2.127(d) to be ambiguous in that does not "clearly present" the Board's interpretation of the Rule. The Board took and takes the position that a proceeding is not automatically suspended when a party file a summary judgment motion, or other dispositive motion. Only when the Board issues a suspension order is the case suspended.

The CAFC observed, in agreeing with Mr. Benedict's argument, that "the Rule does not state that no suspension shall occur until the Board separately acts to impose it, and that any filing deadlines will remain in force despite the Rule's prohibition on filing. The Rule does not state that the requirement that no papers should be filed does not come into effect when the summary judgment motion is filed, despite the Rule's prohibition."

Rule 2.127(d), as Mr. Benedict pointed out, is unqualified in its requirement that when a summary judgment motion is filed, the case "will be suspended by the Trademark Trial and Appeal Board ... and no party should file any paper which is not germane to the motion except as otherwise specified in the Board's suspension order."

However, Section 528.03 of the TBMP states that the suspension is not automatic. Proceedings are suspended only when and if the Board issues an Order:

The filing of a summary judgment motion does not, in and of itself, automatically suspend proceedings in a case; rather, proceedings are
suspended only when the Board issues an order to that effect. *** However, on a case-by case basis, the Board may find that the filing of a motion for summary judgment provides a party with good cause for not complying with an otherwise outstanding obligation, for example, responding to discovery requests. *** Notwithstanding, the Board has found that the filing of a motion for summary judgment does not provide a party good cause not to timely comply with a Board order granting discovery sanctions which required the services of complete discovery responses. [citing its own Super Bakery decision [TTABlogged here], with which the CAFC just disagreed].

The TBMP is not the law, but it does set forth PTO policy. See TBMP Section 101.05. So where are we now? Should Rule 2.127(d) be clarified?

Text Copyright John L. Welch 2012.

CAFC Affirms TTAB Default Judgment Cancelling Registration Due to Failure to Comply with Discovery Orders

2011-12-30T07:30:00.003-05:00

In a precedential opinion, the U.S. Court of Appeals affirmed the TTAB's decision in Super Bakery, Incorporated v. Ward E. Benedict, 96 USPQ2d 1134 (TTAB 2010) [precedential]. [TTABlogged here]. The Board, on remand from an earlier CAFC appeal, ruled that Rule 2.127(d) does not provide an automatic stay of a proceeding when a party files a motion for summary judgment. "Rather, only an order of the Board formally suspending proceedings has such effect." As a consequence, the Board again granted Super Bakery's petition for cancellation as a sanction against Respondent Benedict for failure to comply with a Board discovery orders. The CAFC here disagreed with the Board's interpretation of the Rule, but nonetheless affirmed the Board's entry of judgment by default. Ward E. Benedict v. Super Bakery, Incorporated, 101 USPQ2d 1089 (Fed. Cir. 2011) [precedential].

In the first CAFC appeal, the court remanded the case [here] with a directive that the Board consider the impact of Rule 2.127(d) on its decision to grant judgment by default. Benedict claimed that under the Rule, the proceeding was stayed automatically when he filed his motion for summary judgment, and therefore that he did not have to respond to discovery by the date set in the Board's order compelling discovery (the day after Benedict filed his summary judgment motion).

On remand, the Board took the view that despite the language of the Rule that "the case will be suspended," the suspension did not occur until the Board actually issued a suspension order. In this second appeal, the CAFC ruled that the Board had misinterpreted the Rule, and that the proceeding was automatically stayed on the day the summary judgment motion was filed. [TTABlog note: see the first comment to this post, which makes an excellent point, urging that the CAFC did not say the Board's interpretation of the Rule was wrong, but rather that the Rule was not clear enough for purposes of the imposition of the sanction of default].

In any event, the CAFC ruled that the entry of judgment by default was "well supported without this event."

There had been two years of failure to comply with discovery requests and orders. The Board discussed Mr. Benedict’s repeated non-compliance with Super Bakery’s discovery requests, as well as his non-compliance with the Board’s orders concerning discovery. Although the Board criticized the "meritless" motion for summary judgment as "an effort to further obstruct petitioner's rights to obtain discovery under the Board's rules, the Board's order compelling discovery, and the Board's order granting discovery sanctions," 96 USPQ2d at 1136, the Board’s finding that "[t]here is no reason to assume that, given additional opportunities, petitioner will fulfill his obligations as a party to the proceeding," id., is supported by the entire experience of this case.

The question was whether the Board abused its discretion by entering default judgment. The CAFC said no. "On the entirety of the record, the Board’s orders were reasonable, and within its authority in seeking to advance the proceedings. The remedy of default judgment was within the Board’s discretion in view of Mr. Benedict’s repeated failures to comply."

TTABlog comment: So the CAFC remanded in order that the Board might apply Rule 2.127(d), and then when the Board applied the Rule, the CAFC said the Board got it wrong. But the CAFC affirmed anyway. So what was the point of the remand?

Text Copyright John L. Welch 2011.

TTABlog Quarterly Index: October-December 2011

2011-12-30T06:14:00.002-05:00

E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. You may also follow the blog on Twitter (here). And don't forget to leave your comments! [Note to E-mail subscribers: you must surf to the blog to see comments]. Finally, please report any broken or inoperative links, as well as any errors and omissions, to the TTABlogger at jwelch at lalaw.com.

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Section 2(a) - Immoral or Scandalous:

Anne Gilson Lalonde: Scandalousness Refusal Affirmed for Chocolate Candy Trademark [Warning: Post Rated NC-17]

Section 2(a) - False Association:

TTAB Tosses Out CAVERN CLUB Fraud and 2(a) False Association Claims

Section 2(d) - Likelihood of Confusion:

Section 2(e)(1) - Mere Descriptiveness:

Section 2(e)(1) - Deceptively Misdescriptive:

Section 2(e)(2) - Primarily Geographically Descriptive:

TTAB Finds FIRE ISLAND Primarily Geographically Descriptive of Beer

Section 2(f) - Acquired Distinctiveness:

Section 10 - Illegal Assignment of ITU:

TTAB Finds No Violation of Section 10 in Assignment of Intent-to-Use Application for YING YANG VODKA

Dilution:

Fraud::

TTAB Tosses Out CAVERN CLUB Fraud and 2(a) False Association Claims

Genericness:

Goods in Trade:

Precedential No. 35: Finding Applicant's Medical Reports not to be Goods In Trade, TTAB Affirms Refusal to Register

Concurrent Use:

Precedential No. 34: TTAB Approves Geographic Restriction in Concurrent Use Proceeding Despite Overlap of Parties' Territories

Discovery/Evidence/Procedure:

Ownership:

Who Owns the Mark "WORLD CHAMPIONSHIP CABBAGE CHUCK"? Pam Chestek Knows

Use in Commerce/Drawing/Specimen of Use:

CAFC Oral Arguments/Decisions:

Recommended Reading:

Other:

Text and Photographs (of First Encounter Beach) Copyright John L. Welch 2011.

Precedential No. 35: Finding Applicant's Medical Reports not to be Goods In Trade, TTAB Affirms Refusal to Register

2011-12-29T06:02:00.001-05:00

Ameritox Ltd. sought to register the mark RX GUARDIAN for "printed reports featuring medical laboratory results provided to medical practitioners for record keeping purposes." [see the specimen of use shown below.] The Board, however, agreed with Examining Attorney Verna B. Ririe that the reports are merely "part and parcel" of Applicant's laboratory testing services and are not "goods in trade" sold separately. And so the Board affirmed the refusal to register under Section 1, 2, and 45 of the Lanham Act. In re Ameritox Ltd., 101 USPQ2d 1081 (TTAB 2011) [precedential].

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On its website, Ameritox refers to its "Rx Guardian (SM) process." Based on the website and the specimen of use, the Examining Attorney maintained that the subject reports were nothing more than a vehicle by which the results of Applicant's services are reported. They are not available as separate "goods in trade."

The Board noted that ancillary items, like invoices, forms, and reports, used to conduct business do not constitute goods in trade. It found that Applicant's website demonstrates that RX GUARDIAN is a drug testing and reporting service. Applicant does not advertise the reports separate and apart from its services. The reports merely provide information based on the particular test results.

In short, "[t]he fundamental question in this case is what is being offered for sale under the RX GUARDIAN mark?" There was no evidence that Ameritox sells reports apart from its services; instead, the reports are "part and parcel" of its services, and thus are not "goods in trade."

TTABlog note: To find several additional examples of "goods in trade" refusals, stick that phrase in the TTABlog search box.

Text Copyright John L. Welch.

WYHRR? TTAB Reverses 2(d) Refusal of MLOCKER Over "M" Designs for Differentials

2011-12-28T05:50:00.000-05:00

Applicant Eaton Corp. applied to register the mark MLOCKER for "land vehicle differential," but the PTO refused registration under section 2(d), finding the mark likely to cause confusion with the two registered marks shown below, for various automotive goods, including "differential carrier assemblies, differentials and parts thereof." If you were an Examining Attorney, Would You Have Refused Registration [WYHRR]? In re Eaton Corp., Serial No. 85030456 (December 8, 2011) [not precedential].

The Board found the involved goods to be identical or closely related. Consequently, it presumed that the goods travel in the same, normal channels of trade to the same, usual purchasers of such goods.

Eaton argued that the purchasers would be sophisticated and knowledgeable about the specifications of the goods. The Board, however, pointed out that even sophisticated purchasers are not immune to source confusion when the goods are identical or related and the marks highly similar. [So much for the sophistication argument! - ed.].

Switching gears, the Board turned to a comparison of the marks. The Examining Attorney contended that they are "legally identical," pointing to third-party registrations and prior registrations owned by Eaton in which LOCKER is disclaimed for similar goods, and to Internet webpages in which LOCKER is used to describe a feature or characteristic of differentials.

As a result, the examining attorney argues “the applicant's addition of the generic term LOCKER is of minor significance when looking at the overall commercial impression. The dominant portion of applicant’s and registrant's marks is the letter M."

The Board took a differential view: even assuming that the cited marks comprise a stylized letter M, the involved marks "differ sharply" in appearance and sound. And even if the word LOCKER is a weak formative for these goods, it still contributes to the visual and aural impression created by Eaton's mark.

Moreover, the cited marks are stylized letter marks, which "partake of both visual and oral indicia." These marks are "in the gray region between pure design marks which cannot be vocalized and work marks which are clearly intended to be." In short, in this trademark twilight zone, a stylized letter design "can not be treated simply as a word mark." Here, the stylization in the cited mark is "so high that they are more akin to design marks rather than simply stylized displays of the letter 'M.'"

Considering the marks in their entireties we find that registrant’s marks are so highly stylized that they project the image of design marks and the letter takes on its significance only by reference to registrant’s trade name Mohawk Manufacturing & Supply Co., Inc. *** In contrast, the significance of applicant’s mark is focused on the letters MLOCKER in standard characters, notwithstanding the weakness of LOCKER in relation to the goods. Thus, we find that the marks are not so similar in sound, appearance, connotation or commercial impression, that, merely because such marks share the letter M, confusion as to origin or association is likely.

And so the Board reversed the refusal to register.

TTABlog comment: Well, would you have refused registration?

Text Copyright John L. Welch 2011.

Test Your TTAB Judge-Ability: Which of These Three Section 2(d) Refusals Did the Board Reverse?

2011-12-27T06:42:00.012-05:00

Let's see if you can predict the outcome of these three Section 2(d) likelihood of confusion appeals just by looking at the marks and the identified goods, without more. [The last time I did this, some readers were miffed that I didn't provide the answer right in the blog post. Well, I'll tell you that one of the three refusals was reversed. Which one? See the comment below, but don't peek.]

In re Smith & Vandiver Corp., Serial No. 77492026 (November 29, 2011) [not precedential]. Refusal to register SKIN NUTRITION for non-medicated toilet preparations, namely, hand and body soaps, skin cleansers, and the like, in view of the registered marks NATURE'S SKIN NUTRITION and NUTRIMAX SKIN NUTRITION for identical products, owned by two different registrants. [SKIN NUTRITION disclaimed in both registered marks].

In Revolution Energy Solutions LLC, Serial No. 76696032 (December 5, 2011) [not precedential]. Refusal to register REVOLUTION E BUILDING for building materials for agricultural uses, including swine, dairy and poultry farms, in light of the registered mark REVOLUTION "primarily non-metal, transportable, semipermanent, span fabric roofed buildings."

In re Savage Tales Entertainment, LLC, Serial No. 77816357 (December 8, 2011) [not precedential]. Refusal to register PETER CANNON THUNDERBOLT for "comic books; comic magazines; graphic novels; posters; trading cards" in view of the registered mark THUNDERBOLTS for "publications, namely, comic books and comic magazines and printed stories in illustrated form featured in books and magazines; posters."

TTABlog comment: The last two were affirmed. Note that the first case is a reverse-Knight Textile situation. [TTABlogged here] In Knight Textile, the mark NAUGHTON MCNAUGHTON ESSENTIALS was deemed registrable over ESSENTIALS for clothing, due to the weakness of the mark ESSENTIALS.

Text Copyright John L. Welch 2011.

TTABlog Holiday Gift: The Entire Nov-Dec 2011 Issue of The Trademark Reporter

2011-12-23T05:53:00.002-05:00

When I give a Christmas present, I like it to be something useful and enduring. (Don't tell my wife, but I got my her a Shop Vac). For my dear readers, I have just such a gift: the entire November-December 2011 issue of The Trademark Reporter (Vol. 101 No. 6), featuring a star-studded lineup of authors. Once again, I thank my friends at TMR for granting me permission to post these articles. [Note to e-mail subscribers: you will have to surf to the TTABlog to find active links to the articles].

Vincent N. Palladino, Lanham Act "False Advertising" Claims: What Is a Plaintiff to Do?

Anthony L. Fletcher, Defensive Aesthetic Functionality: Deconstructing the Zombie.

Daniel R. Bereskin, Q.C., Anti-Dilution, Anti-Free-Riding Laws in the United States, Canada, and the EU: Bridges Too Far?.

Dennis S. Prahl and Eric Null, The New Generic Top-Level Domain Program: A New Era of Risk for Trademark Owners and the Internet.

Miles J. Alexander, Eric Goldman, The Rt. Hon. Professor Sir Robin Jacob (Speakers) and J. Thomas McCarthy (Moderator), A Century of Trademark Law - Looking Back and Looking Forward.

INTA Amicus Brief in International Hair Cosmetics Ltd. v. International Hair Cosmetics Group Pty.

INTA Amicus Brief in PT Bintang Pesona Jagat v. PT Karya Tajinan Prima.

INTA Amicus Brief in Christina Louboutin S.A. et al. v. Yves Saint Laurent America Holding, Inc. et al.

Book Reviews:

Intellectual Property Strategies for the 21st Century Corporation: A Shift in Strategic and Financial Management. By Lanning G. Bryer, Scott J. Lebson, and Matthew D. Asbell (Editors). Reviewed by Maria K. Nelson.

Trademark and Copyright Litigation. By Mark V.B. Partridge and Phillip Barengolts. Reviewed by Susan D. Rector.

TTABlog note: These articles are Copyright © 2011 the International Trademark Association and are reprinted with permission from The Trademark Reporter®, Vol. 101 No. 6 (November-December 2011).

Text Copyright John L. Welch 2011.

TTAB Finds HANGBOARD Not Generic for ... Guess What?

2011-12-22T06:20:00.003-05:00

Okay, that's an unfair question. HANGBOARD could be "not generic" for a roast beef sandwich, or most anything. But what about "winter sports and recreation equipment, namely, snowboards, sleds?" Applying the In re Gould test for compound words, the Board concluded that the PTO had failed to meet its burden to prove genericness by clear evidence, and so the Board reversed the refusal to register the mark on the Supplemental Register. In re SEI Manufacturing, Inc., Serial No. 78648865 (December 5, 2011) [not precedential].

The Board began by finding HANGBOARD more analogous to a compound word (as in Gould) than a phrase (as in American Fertility). Therefore dictionary definitions of the constituents words may suffice to prove genericness, provided that the words when joined in the compound retain their meaning.

The Board found the genus to be adequately defined by the identification of goods. The question, then, was whether the relevant public understands the term HANGBOARD to refer primarily to that genus.

The Examining Attorney submitted definitions of HANG and BOARD, which would lead one to conclude that a "hangboard" is a "board that hangs," or "a board from which one hangs." Our Board concluded, however, that these definitions do not adequately establish that HANGBOARD is generic for the identified goods, since Applicant's product is neither. Internet excerpts submitted by the Examining Attorney used the terms "hangboard" and "hangboarding," sometimes with initial caps on the two words, but this mixed evidence was insufficient to prove of genericness.

In sum, the Board found that the PTO's evidence "falls somewhat short" of proving genericness:

This is not a case where the Office has clearly proven that the designation as a whole is no less generic than its constituents. Indeed, the dictionary definitions fail to clearly support a finding of genericness, and the Internet vidence shows mixed usage of HANGBOARD as a mark and as a descriptive term for an apparatus that allows the user to ride a snowboard while hanging from above as opposed to being attached at the feet.

The Board noted that, on a different record, such as one that might be provided by a competitor in an opposition proceeding, the result might be different. Noting that any doubt must be resolved in Applicant's favor, the Board reversed the refusal.

TTABlog comment: Well, what would you call this contraption? How about a "snow sling?" The inventor called it a HANGBOARD. Maybe if and when the thing becomes popular, evidence of genericness will be easier to amass. But so far, this Applicant has survived on that slippery slope.

Text Copyright John L. Welch 2011.

Test Your TTAB Judge-Ability: Is GREEN BANK Merely Descriptive of Banking Services?

2011-12-21T05:15:00.002-05:00

In 2007, the Board reversed a mere descriptiveness refusal of the mark GREEN BRANCH for banking services. (TTABlogged here). So surely GREEN BANK and GREEN BANCORP, INC. are not merely descriptive! But wait! The GREEN BRANCH decision was chosen as one of the ten worst TTAB decisions of 2007 by the esteemed TTABlog. So now what? Perhaps we should look at the record evidence. In re Green Bancorp, Inc., Serial Nos. 78659563 and 78659571 (December 5, 2011) [not precedential].

Mere Descriptiveness: Examining Attorney Laura A. Hammel argued that the marks are merely descriptive [note that BANK and BANCORP, INC. were disclaimed] because Applicant's services are "environmentally beneficial." The services feature electronically-delivered statements and online bill payment, and customers may recycle paper at the bank [not the same as laundering - ed.]. Applicant maintained that GREEN has many meanings and therefore consumers will have to pause and reflect on the marks before gleaning anything specific about the services.

The Examining Attorney relied on a dictionary definition of "green" (environmentally sound or beneficial) and on several website pages using the term "green bank" descriptively in connection with environmentally-efficient banking. Applicant's response to the PTO's request for information, and its own website (here) discussed its eco-friendly focus.

Applicant argued that the GREEN BRANCH case "squarely addressed the issue of whether the term GREEN is merely descriptive of banking services." The Board, however, once again noted that each case must be decided on its own record. Applicant did not persuade the Board that the facts in this case are the same as in the GREEN BRANCH case.

Finally, the Board was not persuaded by Applicant's multiple-meaning argument, concluding that, based on the record, consumers would perceive only the environmental/ecological connotation of GREEN.

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

Likelihood of Confusion: The PTO also refused registration under Section 2(d) ground, finding likely confusion with the registered marks GREEN SAVINGS, GREEN CHECKING, and GREEN BRANCH for legally identical services.

Applicant primarily argued that the word GREEN is a weak formative, pointing to 13 "Green" mark registrations for banking services, including GREEN STATION, GREEN CARD, GREEN CHECKING, GREEN SAVINGS, GREEN BRANCH, GREEN NETWORK, and GO GREEN REWARDS CHECKING. The Board found it unnecessary to discuss these prior registrations, since it had already concluded that GREEN "has the meaning of environmentally or ecologically friendly or environmentally conscious" in this context. Thus the three cited marks are, according to the Board, "highly suggestive."

Applicant argued that banking customers exercise more than ordinary care in their decisions, but the Board correctly cited Amalgamated Bank (a frequently mis-cited case) for the proposition that some consumers choose their banks with care, but others do not.

As to the marks, the question was whether the addition of the word BANK or the words BANCORP, INC. to GREEN is sufficient to distinguish Applicant's marks from the cited marks. In light of the clear meaning of GREEN and the limited scope of protection accorded the cited marks, the Board found that the differences in the marks outweighed their similarities, and so it reversed the Section 2(d) refusals.

TTABlog comment: Apparently it took some time for the PTO (and the Board) to realize that GREEN has a descriptive meaning in connection with environmentally-friendly banking services. Maybe the GREEN BRANCH decision should be taken to a green bank for re-cycling.

Text Copyright John L. Welch 2011.

"Fame Law: Requiring Proof of National Fame in Trademark Law," by Xuan-Thao Nguyen

2011-12-20T05:58:00.001-05:00

The TTAB has not posted a decision on its FOIA webpage for four weeks. So let's continue with our supplementary reading on dilution. Here is an article by Xuan-Thao Nguyen entitled Fame Law: Requiring Proof of National Fame in Trademark Law, 33 Cardozo Law Review 89 (2011). Professor Nguyen argues that, under the TDRA, not only must the fame of a mark be nationwide in order to qualify for dilution protection, but also the mark must be recognized by at least 70% of the general consuming public.

Professor Nguyen asserts that courts have had problems with the TDRA's fame standard. Some continued to apply the rejected concept of niche fame. Others ignored the fame standard altogether, zeroing in on the dilution by blurring or tarnishment question. Still others superficially considered fame and wound up with questionable conclusions.

In her view, "the courts should impose upon the plaintiff the burden of submitting a consumer survey evidencing the overall, general consuming public recognition of the trademark throughout the United States." Evidence of sales volume, advertising and promotional expenditures, and geographical reach would still be required, but they "should not be a substitute for consumer survey evidence proving at least seventy percent of the general consuming public" recognizes the mark.

For other articles and pertinent Board decisions, type the word "dilution" into the TTABlog search box, and see what comes up.

Text Copyright John L. Welch 2011.

Reccommended Reading: Sandra L. Rierson, "The Myth and Reality of Dilution"

2011-12-19T06:16:00.014-05:00

If the Board's recent dilution decisions have you scratching your head, maybe it's time to take a step back from the front line to consider what this dilution thing is all about. Here's an article by Prof. Sandra L. Rierson, entitled The Myth and Reality of Dilution, that reviews the history and development of the law of dilution, discusses its flaws, and offers a novel explanation as to why trademark owners embrace the dilution concept.

Prof. Rierson
FOB (Friend of the Blog) Professor Stacey Dogan provides a concise review of the article here. By way of introduction, Prof. Dogan observes that:

After several years of witnessing the dilution laws in action, ... the nature of the commentary has shifted. Scholars have gone from a state of wary watchfulness to one of bemused head-scratching, as they have unpacked the theoretical underpinnings of the doctrine and observed its treatment in the courts. Dilution laws, it turns out, are a solution in search of a problem, and have had little practical effect.

Professor Rierson concludes that the law of dilution should either be abolished or substantially reformed. She argues, first, that there is no empirical support for the assumption that the source-identifying function of a famous mark is dissipated when others uses the same word. Without such proof, the justification for dilution law vanishes.

Second, providing a legal claim for dilution has significant costs that outweigh the supposed harm caused by dilution. "Dilution claims inflict profound anticompetitive burdens, preclude beneficial comparative advertising, and entrench dominant (often oligopolist) firms at the expense of market entrants. Dilution has serious non-economic costs as well and prohibits protected First Amendment speech without justification."

Third, the real basis for federal dilution "lies not in alleged economic harms, but rather results from an entirely misplaced fiction of corporate personality. We do not require trademark holders to prove actual economic injury in the context of a dilution claim because, in truth, there is none. Instead, we have granted the holders of famous trademarks the equivalent of a “moral” right to these marks."

When dilution is recognized for what it really is, it becomes even harder to justify its existence. Although the Pillsbury Doughboy and Barbie may well be trademarks that are imbued with personality traits in the minds of consumers (as well as in the minds of their respective corporate parents), they do not have the type of creative “soul” that normatively warrants this type of protection. Properly viewed, the federal dilution statutes of 1995 and 2006 are legislative precursors to the type of corporate personification that gave rise to the analogous treatment of corporate entities by the United States Supreme Court in Citizens United in 2010 and are equally misplaced. Trademark owners do not have an abstract moral right to ownership of particular words. Absent anticompetitive effects, those words properly remain in the public domain. By granting monopoly protection to famous marks notwithstanding the absence of actual economic injury, the federal dilution statute turns competition on its head, and serves only to entrench and further concentrate economic power in the hands of dominant corporate firms at the expense of consumers and competitors alike.

Text Copyright John L. Welch 2011.

TTAB Affirms Genericness Refusal of THREE CARD POKER for Gaming Services

2011-12-16T06:19:00.000-05:00

Rejecting Applicant's Thermos and Teflon surveys as fundamentally flawed, the Board affirmed a refusal to register THREE CARD POKER for "entertainment services, namely, providing live games of chance in gaming establishments," on the ground of genericness. In re Shuffle Master, Inc., Serial No. 77394063 (December 8, 2011) [not precedential].

Evidentiary squabbles: Examining Attorney Katy Halmen successfully objected to Applicant's untimely submission of a declaration with its reply brief. Applicant argued that this was tardy submission was permissible because the Examining Attorney had included new evidence in her denial of its request for reconsideration and Applicant had no chance to reply. The Board pointed out that the Examining Attorney is allowed to submit new evidence during reconsideration. If Applicant wanted to submit more evidence, it should have requested that the Board remand the case to the PTO.

Genericness: The Examining Attorney relied on dictionary definitions of "poker," "Texas Hold 'Em", "Draw Poker" and "Stud Poker" in contending that the genus of Applicant's services is "providing three card poker games of chance." Applicant urged that this was too narrow and that the proper genus is defined by its recitation of services.

The Board looked to Applicant's own submission describing its services, which made clear that the recited services encompass a particular version of poker. Therefore, the genus "may be accurately identified as providing live games of chance in gaming establishments, including a variation of the game of poker."

Next, the Board deemed the relevant consumers to be the general public who encounter games of chance in gaming establishments.

The jackpot question was whether these consumers understand THREE CARD POKER to refer primarily to the genus of services. Since the designation at issue is a phrase, dictionary definitions and generic uses of the constituent terms would not suffice to show genericness. Pursuant to American Fertility, the Board must discern the meaning of the phrase as a whole.

The Board found that the Examining Attorney had met her burden of proof. She relied on various Internet excerpts and LEXIS/NEXIS articles referring to "three card poker." Applicant contended that these items consisted of "nominative uses" referring to Applicant, and that many of the articles refer to licensed uses of its mark. The Board was not persuaded. It asserted that Applicant itself uses "three card poker" generically in its patents, as in this excerpt:

The present invention comprises a casino style wagering game against a dealer, comprising the steps of placing a wager, dealing a three card poker hand to each player ... [emphasis supplied by the Board]. [This doesn't seem like a generic use to me, but merely a description of the number of cards dealt - ed.]

Moreover, the licensees use THREE CARD POKER combined with other words and/or designs, rather than the phrase by itself. [see example below].

The Board acknowledged that many of the excerpts and articles use the phrase to refer to Applicant, but that was not enough to overcome the evidence of generic use.

Finally, the Board looked at Applicant's survey evidence, purporting to use both a Thermos and a Teflon style methodology, and found it to be fundamentally flawed. The respondents were not properly screened and the survey choices were poorly worded. Moreover, although Applicant argued that responses saying that "three card poker" referred primarily to a "specific type of poker" were favorable to its position, the Board found the opposite.

The Board concluded that, "despite some evidence of licensed and trademark use," the Examining Attorney had met her burden to prove genericness.

Acquired Distinctiveness: Applicant had applied to register the subject phrase under Section 2(f), thereby conceding that the phrase is not inherently distinctive. For the sake of completeness, the Board considered Applicant's 2(f) argument. It found that the evidence amply demonstrated that the mark is at least highly descriptive, and therefore Applicant's burden to prove acquired distinctiveness is increased.

Proof of use of the phrase since 1995 was not enough. Nor were annual revenues of $30-40 million, sponsorship of tournaments and other promotional activities, unsolicited media coverage, and ownership of other registrations for marks including the same phrase. Although this evidence demonstrates the success and popularity of the game, it is not sufficient to prove acquired distinctiveness in view of the highly descriptive nature of the proposed mark.

And so the Board affirmed both refusals; genericness and mere descriptiveness.

TTABlog comment: If the game was patented and no one could provide the game without a license, why didn't all uses of THREE CARD POKER refer to licensor? And in that case, would any evidence of exclusive use be probative of secondary meaning?

Text Copyright John L. Welch 2011.

Precedential No. 34: TTAB Approves Geographic Restriction in Concurrent Use Proceeding Despite Overlap of Parties' Territories

2011-12-15T06:30:00.004-05:00

This concurrent use proceeding grew out of a prior opposition between the parties, involving Holmes' mark CRUIZERS in the logo form shown immediately below, for "retail store services featuring convenience store items and gasoline." Myers claimed likelihood of confusion with its registered mark MYERS CRUIZERS DRIVE-IN for "restaurant services." The parties filed a consent motion to terminate that proceeding in favor of this concurrent use proceeding, and then requested entry of an amendment to Holmes's application to restrict the services to the geographical area that comprises the United States except for Arkansas. Holmes Oil Company, Inc. (by assignment from R. Dwayne Meadows) v. Myers Cruizers of Mena, Inc., 101 USPQ2d 1148 (TTAB 2011) [precedential].

Myers promptly filed a motion to implement the parties' settlement agreement, which provided that Holmes would obtain a registration that excluded Arkansas, while the registration owned by Myers would remain unrestricted.

The Board noted that in the usual concurrent use proceeding, each party seeks a different geographical area for its mark. By way of contrast, if a consent agreement is involved, rather than a concurrent use agreement, generally there is no geographical restriction on either mark. This case is only "nominally" a concurrent use proceeding since the agreement provides for use of the involved marks in overlapping territories [i.e., the territory of Not-Arkansas - ed.]. However, according to Trademark Rule 2.99(h), the TTAB may consider concurrent use rights "only in the context of a concurrent user registration proceeding."

The question for the Board was whether the parties can co-exist under the agreement, without there being a likelihood of confusion. A consent agreement is entitled to great weight on that issue if it "includes information as to why the parties' believe confusion is unlikely, ... evidences the parties' business-driven belief and conclusion that there is no likelihood of confusion, and ... includes provisions to avoid any potential confusion."

The parties' agreement was confidential, but the Board noted that it was intended to resolve trademark claims, it included provisions to address actual confusion that might arise, and it indicated the nature of each party's use and included restrictions on use. The agreement, however, could have been improved if it included more details regarding the steps to be taken in the case of actual confusion, and an explanation of why the parties think that confusion is not likely.

The Board concluded that this agreement between parties knowledgeable as to the relevant trade and market practices is "adequate evidence that confusion is not likely and supports Holmes' right to register the mark in question." It therefore approved the proposed geographical restriction to Holmes' application.

Map of Not-Arkansas
Text Copyright John L. Welch 2011.

WYHA? TTAB Affirms Refusal of TEAM GEORGIA MARKETPLACE Without Disclaimer of MARKETPLACE

2011-12-14T05:52:00.000-05:00

Applicant disclaimed GEORGIA but not MARKETPLACE in its applied-for mark TEAM GEORGIA MARKETPLACE for services involving procurement and government contract management. Examining Attorney Jessica A. Powers consequently refused registration under Section 6(a) of the Lanham Act. Would you have appealed? In re Georgia Department of Administrative Svcs., Serial No. 77792242 (November 21, 2011) [not precedential].

The Examining Attorney relied on dictionary definitions of MARKETPLACE, Internet excerpts showing use of GEORGIA MARKETPLACE and third-party registrations that either included disclaimers of MARKETPLACE or resided on the Supplemental Register. She contended that:

the wording GEORGIA MARKETPLACE is merely geographically descriptive in relation to the applicant’s ordering, procurement and business services taking place in or specifically targeting businesses that operate in the state of Georgia and further that the term MARKETPLACE is itself descriptive of a characteristic of those services, namely, buying, selling and general economic activity.

The Board found that the Examining Attorney had made a prima facie case that MARKETPLACE is merely descriptive of Applicant's services.

Applicant feebly argued that some imagination or reasoning would be required to connect the word MARKETPLACE with the services, but the Board found that the term is "not so vague that consumers will not understand its meaning in relation to applicant's services."

Applicant submitted a list of third-party registrations and applications for marks containing the word MARKETPLACE. The Board accepted the list, since the Examining Attorney did not timely object, but it accorded the list no probative value since the goods and services involved were not indicated. Moreover, third-party applications have no evidentiary value, other than to show that they were filed.

Finally, Applicant submitted a third-party registration for the mark TEXAS MARKETPLACE for "business resource referral services," which issued without a disclaimer. The Board found that evidence "inconclusive."

In fact, this registration highlights why prior decisions in other applications are not binding on the Board and underscore the need to evaluate each case on its own record. In re Nett Designs Inc., 57 USPQ2d 1564.

And so the Board affirmed the refusal, but it allowed Applicant thirty days to submit the required disclaimer of MARKETPLACE.

Text Copyright John L. Welch 2011.

Test Your TTAB Judge-Ability on Three Section 2(d) Appeals

2011-12-13T05:55:00.002-05:00

I heard a TTAB judge say not long ago that the outcome of most Section 2(d) likelihood of confusion cases can be predicted just by looking at the marks and the identified goods/services, without more. Well, your would-be honor, try your skills on these three refusals:

In re Midwestern Pet Foods, Inc., Serial No. 77327252 (November 16, 2011) [not precedential]. Refusal to register KITTY NIBBLES for "cat treats" in view of the registered mark KITTEN LI'L NIBBLES for "cat food and cat treats."

In re Bernstein, Serial No. 77743350 (November 17, 2011) [not precedential]. Refusal to register WE THE PEOPLE PLAN for a website providing information about politics, on the ground of likely confusion with the registered mark WE THE PEOPLE for "promotion of public awareness of the need for political reform."

In re Sherwood Development Group LLC, Serial No. 77784128 (November 22, 2011) [not precedential]. Refusal of NOURISH KIDS for frozen food items, in view of the registered mark NOURISH for various food items, encompassing some of Applicant's goods].

TTABlog comment: Well how did you do? Here's a hint: all three cases came out the same way.

Text Copyright John L. Welch 2011.

Precedential No. 33: TTAB Rejects ROLEX Dilution Claim for Failure to Prove Likely Impairment of the Distinctiveness of the Mark

2011-12-12T05:45:00.004-05:00

The Board's recent JUST JESU IT and MOTOWN METAL decisions seemed to waken the Rip Van Winkle of TTAB jurisprudence - Section 43(c) dilution - from its long slumber. By discarding its "substantial similarity" or "near identity" standard for comparing the marks at issue, the Board had surely made it easier to prove dilution. But this new decision may put old Rip back to sleep. The Board dismissed Opposer Rolex's dilution-by-blurring claim, concluding that Opposer had failed to prove that the applied-for mark ROLL-X for "x-ray tables for medical and dental use" would, despite an "actual association" between the marks, impair the distinctiveness of Opposer's famous ROLEX mark. And in a further ruling, the Board dismissed Rolex's claim that Applicant AFP did not have a bona fide intent to use the ROLL-X mark when it filed its application to register. Rolex Watch U.S.A., Inc. v. AFP Imaging Corporation, 101 USPQ2d 1188 (TTAB 2011) [precedential].

Fame: The Board had little difficulty finding the ROLEX mark to be famous for dilution purposes based on: nearly one hundred years of use, a lack of any third-party use or registration of similar marks, the fact that the mark is a coined and fanciful term, hundreds of millions of dollars in annual sales, tens of millions of dollars in annual advertising expenditures in a variety of media, and unsolicited, "intense" media coverage.

Fame when?: Most of Opposer's evidence pre-dated the 2008 filing date of Applicant's intent-to-use application, leading the Board to conclude that the fame of the ROLEX mark was well established prior to Applicant's constructive use date.

Dilution by blurring?: Dilution by blurring arises when a substantial percentage of consumers, when seeing the junior party's mark, are immediately reminded of the famous mark and associate the junior party's use with the owner of the famous mark - even if they do not believe that the goods come from that owner. Even if such an association is established, the Board must determine whether such association is likely to impair the distinctiveness of the famous mark.

The Board considered the six non-exhaustive factors set forth in Section 43(c). As to the first factor, the similarity of the marks, the Board noted that Nike v. Maher embraced a new test based simply on a comparison of the marks as to appearance, sound, connotation and commercial impression: i.e., whether the marks are sufficiently similar to cause consumer to conjure up the famous mark when confronted with the junior mark. Here, the Board found that the differences between the marks in appearance, meaning, and commercial impression "greatly outweigh any dissimilarities in pronunciation." More specifically, Applicant's mark is likely to be viewed as comprising the word "roll," as in moving on rollers, and "x," as in x-ray. Thus this factor favored Applicant.

The second factor, the distinctiveness of the famous mark favored Rolex. The third factor, the extent that owner is engaging in substantially exclusive use of the famous mark, also favored Rolex, as did the fourth factor, the degree of recognition of the famous mark.

The fifth factor, whether the junior party intended to create an association with the famous mark, favored Applicant. In fact, the only evidence on the issue indicated that Applicant chose the mark ROLL-X based on the product's attributes.

As to the sixth factor, whether there is an actual association between the junior mark and the famous mark, Rolex relied on a survey targeted on "animal professionals" responsible for purchasing x-ray tables. When asked if something came to mind when first shown the ROLL-X table, 82% said yes, and 42% of those respondents said it was "Rolex/Watch." The Board found this level of association to be insufficient to prove a likelihood of dilution:

This figure is not persuasive given that a higher percentage, 50% of respondents who replied that something came to mind, thought of a feature of the goods (portable, rolling) or the actual goods themselves (x-ray tables/equipment). Moreover, the survey results, while showing an “actual association” between opposer’s and applicant’s marks, do not establish that such an association would impair the distinctiveness of opposer’s famous mark.

The Board concluded that the dissimilarity between the marks, the conflicting results of the survey, and the lack of evidence of Applicant's intent to create an association, outweigh the recognition, distinctiveness, and substantially exclusive use of the ROLEX mark. Moreover, Rolex did not provide any evidence of the degree to which its marketing power would potentially be diminished by Applicant's intended use of its mark. Therefore the Board dismissed Rolex's dilution claim.

Lack of bona fide intent: Rolex also claimed that Applicant did not have a bona fide intent to use the ROLL-X mark at the time it filed its application to register. Indeed, Opposer established a prima facie case by showing that Applicant had no documentation (e.g., labels or advertising materials) to support its claim of a bona fide intent.

However, Applicant AFP submitted sufficient evidence to rebut the claim: it promotes and advertises other imaging products, and it owns the registered mark DENT-X for film processors and x-ray machines and advertises that mark for its human dental x-ray business. Thus the filing of the ROLL-X application was consistent with an extension of AFP's product line. In addition, AFP has the capacity to manufacture and market the goods identified in the challenged application.

And so the Board concluded that Applicant filed its application in good faith, not merely to reserve a right in the ROLL-X mark.

TTABlog comment: Please provide your thoughts on how one would go about proving that the marketing power of a famous mark would be diminished by another mark, particularly one that is not yet in use. Is it a matter of better survey results regarding the percentage of association?

If the marks had been identical, would that have brought a different result? In other words, does proof of dilution by blurring still hinge on proving that the marks are substantially similar or nearly identical?

TTABlog further note: I like to think that the Board took to heart Professor McCarthy's comment, posted on the TTABlog, concerning the June 2010 decision finding dilution of the THE OTHER WHITE MEAT (here):

What I think is missing from the T.T.A.B.’s opinion is any discussion of what “dilution by blurring means” and whether the applicant’s mark was likely to “impair the distinctiveness of the famous mark.” Exactly how would the accused slogan probably sap the strength of the famous slogan? Just by itself or because it would likely be the first of many? The Board is silent.

The Board goes through the non-exclusive list of six factors and assumes in one sentence that blurring is likely: “Accordingly, after considering all the relevant factors, we find herein a likelihood of dilution by blurring.” None of the six factors directs attention to whether there is any evidence that it is likely that the famous mark’s strength will be “impaired.” This statutory omission apparently led the Board to simply ignore this crucial link in the chain of proof.

Text Copyright John L. Welch 2011.

CAFC Hears Oral Argument in MILANZA versus POTENZA and TURANZA Tire Appeal

2011-12-09T05:23:00.002-05:00

On December 7, 2011, the CAFC heard oral argument [mp3 here] in an appeal (Appeal No. 2010-1376) from the TTAB's decision in Bridgestone Firestone North American Tire, LLC and Bridgestone Corporation v. Federal Corporation, Opposition No. 91168556 (February 24, 2010) [not precedential]. Despite the identity of goods (tires), channels of trade, and classes of customers, the Board dismissed this Section 2(d) opposition to registration of the mark MILANZA in stylized form, finding the mark not likely to cause confusion with the registered marks POTENZA and TURANZA. "[T]he dissimilarity of the marks simply outweighs the other relevant factors," said the Board.

Appellant Bridgestone argued that the Board had missapplied the CAFC's decision in Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002), and as a result failed to find the marks POTENZA and TORANZA to be famous or strong. The Board ruled that the house mark BRIDGESTONE was always used with POTENZA and TORANZA, which undermined the evidence of fame. In short, the Board found "nothing in the record to demonstrate that the marks ... have achieved significant recognition independent of the BRIDGESTONE mark." Bridgestone argued that, under Bose, the house mark was sufficiently uncoupled from the POTENZA and TORANZA marks that these two marks create their own commercial impressions, separate and apart from the house mark.

As to the marks, the Board found that POTENZA means "power" in Italian. TURANZA "engenders the commercial impression of touring." MILAN suggests something from Milan. On appeal, Bridgestone asserted that the Board ascribed meanings to POTENZA and TORANZA that were not supported by record evidence.

Appellee Federal first faced this uncomfortable question: why did your client choose a mark that is pretty close to a mark that's already out there? Appellee answered that it chose the mark because it wanted an association with Milan (although its tires are not made in Milan). It asserted that the marks POTENZA and TORANZA pale in the shadow of the strong BRIDGESTONE mark.

The panel discussed the standard of appellate review, with one judge stating that he never understand how the standard is to be applied: the underlying factual findings are reviewed with deference under the susbstantial evidence standard, but then the ultimate judgment on likelihood of confusion is de novo.

Text Copyright John L. Welch 2011.

New PTO "TSDR " System Will Put "Feathers" Database Program in Jeopardy

2011-12-08T14:35:00.006-05:00

The many avid users of the "Feathers" trademark database program, the brainchild of Carl Oppedahl, have been rocked by the USPTO's announcement (here) that on or about December 16th it will introduce a new system, Trademark Status and Document Retrieval (TSDR 1.0), that will "redefine the way Trademark status data and all documents will be displayed to the public." The PTO notes that "at a currently undetermined point, both TARR and TDR will disappear. Until then, the links for both TARR and TDR will take the user to an 'interim' page, from which either the existing system can be reached or the new TSDR 1.0 can be accessed."

One can only hope that Carl Oppedahl will come up with a prompt fix for "Feathers." Or maybe the USPTO could delay implementation of the new system until "Feathers" is made compatible? Craig Morris, please pick up the white courtesy phone!

Despite Identity of Marks, TTAB Dismisses 2(d) Opposition for Lack of Proof That Pet Food and Organic/Natural Food Products Are Related

2011-12-08T05:33:00.001-05:00

The Board dismissed this Section 2(d) opposition to registration of the mark NATURE'S PROMISE for "food for caged birds, pet food for small mammals, hay." Opposer Ahold claimed likely confusion with the identical mark, registered for natural and organic food and for a grocery store department featuring natural and organic foods. The Board found no evidence that consumers would expect that Applicant's pet food and Opposer's goods and services are related. Ahold Licensing SA v. Premium Nutritional Products, Inc., Opposition No. 91180170 (November 22, 2011) [not precedential].

In an initial procedural skirmish, Applicant objected in its brief to a discovery deposition submitted by Ahold because it was not submitted via notice of reliance. Applicant claimed that it did not know why the brief was filed. The Board agreed that the deposition transcript should have been filed through a notice of reliance; but this involved a procedural objection that Applicant should have made promptly so that the defect could be cured. Because it was not raised promptly, the objection was waived.

Fame? Ahold proved substantial sales of its NATURE'S PROMISE brand products (some 550 different products in all, sold in Ahold's own stores, including GIANT and STOP & SHOP). A brand awareness study indicated that a "very significant portion of opposer's customer base are users of Nature's Promise or purchasers of Nature's Promise." Another study showed that 71% of Ahold's customers were aware of the NATURE'S PROMISE brand. But the Board observed that a survey of Ahold's own grocery store customers is not sufficient to establish fame, and there was no evidence regarding market share or renown among all customers for organic and natural foods. Nor was there any evidence of the marks renown in any media, or of advertising expenditures.

The marks: Identical.

The channels of trade and classes of customers: Identical in part. Applicant's goods are sold through, inter alia, grocery stores and mass merchandisers. Opposer's goods are presumed to travel in all normal trade channels for those goods, and those channels would include grocery stores and mass merchandisers. Furthermore, the people who buy groceries also buy pet food.

The goods and services: There was no testimony or evidence regarding the similarity or dissimilarity of the goods and services. Although the involved goods (as identified) are sold in grocery stores, they are not competitive or complementary products.

Ahold contended that human and pet foods can and do emanate from the same source, and it pointed to the Recot v. Becton case, where the CAFC found pertinent that "several large companies produce and sell both human and pet food." The Board, however, pointed out that, unlike in Recot, here the evidence does not support Ahold's position. There was no evidence that any other company produces and sells human and pet food. "In fact, opposer is the only company identified in this record that produces and sells human and pet food and, in that regard, opposer's pet food has a different trademark (i.e., COMPANION)."

Moreover, the Board noted, the modern supermarket sells many products from many producers and industries. There is no reason to assume that the involved goods "would share a common source merely because they are sold under the same roof."

Furthermore, in Recot, the court found FRITO-LAY to be a famous mark and it ruled that the TTAB had erred in giving limited weight to that fame. The CAFC reasoned that the fame of a mark may affect the likelihood that consumers would be confused when purchasing products that are not closely related.

Likewise, Ahold failed to provide evidence that pet food is related to a grocery store department featuring natural and organic foods.

Conditions of purchase: There was no evidence that consumers would exercise heightened care when purchasing the involved products.

Lack of actual confusion: Applicant's pet food products actually move in different channels of trade than those of Ahold [which goods are sold only in Ahold's own stores, in segmented NATURE'S PROMISE sections], and so there has not been a significant opportunity for confusion to occur. Therefore, the absence of confusion merited little weight.

Balancing the factors: Because Ahold failed to meet its burden to prove that customers "would mistakenly believe that pet food and organic or natural food emanate from the same source because of the similarity of the marks," the Board dismissed the opposition.

TTABlog comment: Compare this decision with the ENSURE decision blogged on Monday, involving human and pet nutritional supplements.

Text Copyright John L. Welch 2011.

Test Your TTAB Judge-Ability: Is This Descriptive Mark Sufficiently Stylized To Merit a Principal Registration?

2011-12-07T06:21:00.007-05:00

I understand that the TTAB is looking to hire another Administrative Trademark Judge. Here's a chance to prove you've got what it takes. This applicant sought to register the mark shown immediately below for "car auction services" [AUCTION SERVICES disclaimed]. The Examining Attorney refused registration under Section 2(e)(1) on the ground of mere descriptiveness. On appeal, Applicant narrowed the issue to whether the stylization of the mark is "sufficient striking, unique or distinctive so as to create a commercial impression separate and apart from the unregistrable components of the mark." In other words, with all the words disclaimed, is this mark sufficiently stylized to merit a Principal Registration? In re Kar Auction Services, Inc., Serial No. 77852072 (December 1, 2011) [not precedential].

The Board observed that the question at hand is, by nature, fact-specific. Third-party registrations and/or rejected third-party applications carry little weight.

Applicant relied on the Board's decisions on the four marks depicted below, but the Board distinguished the last two cases on their facts:

Applicant also relied on the "IT BAG case" [TTABlogged here]:

The Examining Attorney submitted examples of marks whose refusal was affirmed by the Board:

From these examples, the Board noted, it is evident that the determination at hand is "fact specific and somewhat subjective," and further observing that "[a]s the design aspect decreases it becomes more difficult to discern where to draw the line."

Here, the separation of K and R in Applicant's mark "creates a structural space that given the word KAR a logo/design feel." This differs from the examples cited by the Examining Attorney, in which the words are merely written in a different font.

Overall, we find that the stylization and presentation of applicant’s mark falls more closely within the boundaries of the examples where the presentation of the marks was found to create a separate commercial impression.

And so the Board affirmed the refusal to register on the mere descriptiveness ground, absnet a disclaimer; it gave Applicant thirty days to submit a disclaimer of CAR AUCTION SERVICES, in which case this decision will be set aside.

TTABlog comment: Well, how did you do? Are you TTAB material?

Text Copyright John L. Welch 2011.

Applying Doctrine of Foreign Equivalents, TTAB Finds TATTOO and TATUAJE Confusingly Similar for Cigars

2011-12-06T05:30:00.001-05:00

After several interlocutory rulings, the only issues left to decide in this Section 2(d) opposition were the similarity of the marks and the final determination of likelihood of confusion. The Board found the mark TATTOO for cigars and related goods likely to cause confusion with the registered mark TATUAJE for cigars. Applying the doctrine of foreign equivalents, it concluded that Opposer's mark would be translated to "tattoo" by American purchasers familiar with Spanish. Tatuaje Cigars, Inc. v. Nicaragua Tobacco Imports, Inc., Opposition No. 91185180 (November 22, 20101) [not precedential].

Opposer contended that "tatuaje" is a Spanish word the translates directly to TATTOO in English. Applicant Nicaragua argued that the doctrine of foreign equivalents does not apply because there was no evidence that consumers would "stop and translate" TATUAJE, and further that the words "tattoo" and "tatuaje" each have other meanings. According to one Spanish dictionary, "tatuaje" means "a circle or mark that is left around the wound from a gun fired in very close proximity." The word "tattoo" may also mean "a rapid rhythmic rapping" and "a call sounded shortly before taps."

The Board observed that the doctrine of foreign equivalents is applied when it is likely that the ordinary American purchaser would "stop and translate" the mark into its English equivalent. For this purpose, the purchaser is one who is knowledgeable in Spanish. [Query: If the purchaser knows Spanish, why would he or she bother to translate the word into English? Wouldn't he or she just understand the word as it is? -ed.]

Opposer's expert witness testified that "tatuaje" is a common Spanish word meaning an "engraving under the skin," and that she was not aware of other meanings of that word or of the English word "tattoo." Based on her testimony, the Board concluded that Applicant's alternative meanings were too obscure to have any impact on the equivalency issue. In particular, the Board snuffed out Applicant's imaginative argument regarding the alternative meaning of "tatuaje:"

[T]he record does not establish that "the common experience of smokers being burned by lit cigars, would tend to create an impression in the mind of consumers of the translated meaning of 'tatuaje' as being a gun powder burn on the skin." *** We find it more likely that Spanish-speaking cigar smokers, like any other person, would immediately perceive the meaning of “tattoo” when presented with a cigar under the mark TATUAJE.

And so the Board concluded that TATUAJE and TATTOO are equivalent in meaning. This identity in connotation was sufficient for the Board to conclude that confusion is likely, despite the differences in appearance and sound between the two marks.

The Board also found that the mark TATUAJE would be translated by those familiar with Spanish, because there was "no compelling evidence that the mark would not be translated because of marketplace circumstances or the commercial setting in which the mark is used." [Query: Isn't the fact that the goods are cigars a "circumstance" that would suggest that the word would not be translated, given the popularity of Cuban cigars? -ed.].

Finally, Nicaragua made a hopeless argument about the pronunciation of the Spanish word "tatuaje," but as usual the Board pointed out that there is no correct pronunciation of a trademark. [Query: What about APPLE for computers? BLACK CAT for firecrackers? TTABlog for ..... ah, forget it.]

And so the Board sustained the opposition.

TTABlog comment: I think the "stop and translate" concept makes little sense. My test would be this: first, is the language in question in common use in the USA?; second, if so, would a person familiar with that language recognize the foreign language mark as having the same meaning as the English language mark at issue? No "translation into English" would be involved. What do you think? The problem is that my test would not jibe with decisions like Tia Maria.

For a critique of the doctrine of foreign equivalents, see the article by Serge Krimnus, entitled , "The Doctrine of Foreign Equivalents at Death's Door," North Carolina Journal of Law & Technology, Vol. 12, Issue 1: Fall 2010.

Text Copyright John L. Welch 2011.

Finding Cat, Dog, and Human Supplements Related, TTAB Sustains ENSURE Opposition to CATSURE and DOGSURE

2011-12-05T06:14:00.002-05:00

In December 2010, more than four years into the matter, the parties to this Section 2(d) opposition opted for the Board's ACR procedure, which yielded a decision eleven months later. The Board sustained Abbott's opposition to registration of CATSURE and DOGSURE for food supplements for cats and dogs, respectively, finding the marks likely to cause confusion with the registered mark ENSURE for nutritional products and supplements. Evidence that the involved products are "comparable," and that people substitute ENSURE products for CATSURE or DOGSURE supplements proved to be crucial. Abbott Laboratories v. Pet-Ag, Inc., Opposition No. 91170148 (November 22, 2011) [not precedential].

Family of Marks: Abbott feebly argued that it owns a family of "-sure" marks (ENSURE, PEDIASURE, NEOSURE, and PROSURE), but that dog wouldn't hunt. Abbott stipulated that it never used those marks together in any advertisement or brochure, and it provided no direct evidence that it promoted the marks as a family or that the public perceives a family of marks.

Fame of ENSURE?: As to inherent strength of the ENSURE mark, the Board found that the mark is "at worst somewhat suggestive." Pet-Ag argued that the mark is weak because of its similarity to the common word "insure," but the Board could find no connection between the meaning of "insure" and the ENSURE product. As to commercial strength, Abbot proved sales of more that $6 billion from 1972 to 2006, but there was no evidence regarding market share. Advertising expenditures were large, but there was no direct evidence of brand recognition by the general public. The Board therefore found the proofs insufficient to establish fame for Section 2(d) purposes, but it did find the mark to be "commercially strong."

Strength of ENSURE: Pet-Ag contended that widespread us of the suffix "-sure" for food supplements weakened the ENSURE mark; it offered 70 third-party registrations for such marks, with proof of use for all but 16. Not surprisingly, the Board found the probative value of the 16 use-less registrations to be minimal. As to the rest, however, the Board agreed that they have probative value, but only 17 were in the field of animal supplements and only three of those appeared to cover pet food supplements. Nonetheless, the Board found that this factor favored Pet-Ag.

The Marks: The Board deemed the marks to be "closer in their overall similarities than in their differences," and "sufficiently similar in terms of their overall commercial impression" that confusion is likely.

The Goods: Although similar in their intended usages, the involved goods are meant for different users: feline and canine, on the one hand, human on the other. Media references called the involved products "comparable," and although Abbott does not promote its ENSURE brand products for use with pets, the evidence included many consumer comments indicating that "people use ENSURE supplement or meal replacement for their dogs or cats or consider ENSURE to be 'like' CATSURE or DOGSURE." The Board consequently found that the involved goods are related for purposes of the du Pont analysis:

We conclude from these postings that some people appear to believe that ENSURE products are sufficiently beneficial for their pets that ENSURE supplements may be substituted for applicant's DOGSURE and CATSURE supplements. Others appear to believe that the goods are equivalent. These references corroborate the similarity of the goods.

Trade Channels and Customers: Although the products of the parties are sold in the same grocery and drug stores, they appear in different sections of the stores. And though some consumers view the products as interchangeable [hopefully, in only one direction - ed.], the trade channels are different. However, the products are relatively inexpensive consumer products, a factor that favored Abbott.

Applicant's Intent: Pet-Ag's intent in adopting its marks is relevant under the 13th du Pont factor. The evidence showed that Pet-Ag was aware of Abbott's concern regarding the two marks, but that fact alone does not compel a conclusion that Ag-Pro intended to play off the goodwill of the ENSURE mark. In view of the conflicting evidence, the Board deemed this factor neutral.

Balancing the du Pont factors, the Board found confusion likely and it sustained the opposition.

TTABlog comment: I think the evidence regarding the relatedness of the goods was not all that convincing, since it was not clear just how many customers feed ENSURE supplements to their pets, or whether they thought the sources of the products were the same. The consumers could well have appreciated that the goods come from different sources.

Text Copyright John L. Welch 2011.

Precedential No. 32: CLASSIC AMERICAN BLEND Confusingly Similar to CLASSIC CANADIAN for Tobacco, Says TTAB

2011-12-02T06:05:00.002-05:00

In this consolidated proceeding that began more than eight years ago, the Board sustained oppositions to registration of the marks CLASSIC AMERICAN BLEND, in standard character and design form [AMERICAN BLEND disclaimed], for tobacco and tobacco products, on the ground of likelihood of confusion with the registered mark CLASSIC CANADIAN for tobacco [CANADIAN disclaimed]. However, the Board dismissed Plaintiff's Section 2(d) petition for cancellation of a registration for the mark ZIG ZAG CLASSIC AMERICAN BLEND for "smoking tobacco" because the marks are too dissimilar. Top Tobacco, L.P. v. North Atlantic Operating Co., Inc., 101 USPQ2d 1163 (TTAB 2011) [precedential].

Evidentiary Ruling: The Board first addressed an evidentiary issue concerning the admissibility of third-party product packaging that Defendant North Atlantic proffered in order to show “that these products exist and they contain a reference to ‘Classic’ and/or a country designation to designate the place where the tobacco comes from.” Top objected on the ground that the packaging was not properly authenticated. North Atlantic maintained that the documents were properly authenticated by its witnesses, and in any event are self-authenticating under Rule 902(7) of the Federal Rules of Evidence.

The Board agreed with Tops that North Atlantic’s witness did not properly authenticate the documents because there was no testimony as to how and where the packaging was obtained. But the Board sided with North Atlantic on the Rule 902(7) issue.

Rule 902(7) provides that extrinsic testimony is not required for “[i]nscriptions, signs, tags, or labels purporting to have been affixed in the course of business and indicating ownership, control or origin.” In other words, such documents are self-authenticating. The Board ruled that the documents are admissible under the Rule, but it further observed that the documents are “essentially limited to what they show on their face.”

They may be used in the same manner as third-party registrations based on use in commerce, namely to demonstrate any suggestive meaning of the term “Classic” as it is found on packaging for tobacco-related goods. The witnesses’ testimony, to the extent that they have personal knowledge of the goods identified by the exhibits may also be of relevance.

However, the exhibits "are not evidence that the labels or packaging shown or comprising the exhibits have been used in commerce."

The Goods, Trade Channels, and Classes of Purchasers: The Board noted that the parties are competitors in the "roll your own" (RYO) or "make your own" (MYO) tobacco industry. It found the goods of the parties to be either legally identical, since Top's "tobacco" encompassed North Atlantic's identified goods, or to be complementary. The trade channels for the tobacco products presumably overlap, and in fact the evidence showed that the trade channels and classes of purchasers are the same.

Sophistication of Purchasers: North Atlantic contended that, at both the wholesale and retail level, the purchasers of its goods are sophisticated, but the Board was not persuaded. Although wholesale buyers may be more sophisticated in their purchasing decisions, they are not necessarily knowledgeable about trademark issues or immune from source confusion. As to ordinary consumers, the parties' identification of goods encompass less expensive tobacco that would not necessarily be purchased with heightened care. In short, although this factor may favor North Atlantic, it does not outweigh the other du Pont factors.

Strength of Top's Mark: North Atlantic argued that extensive use by third parties of the term CLASSIC for tobacco products, and registration of marks containing that term, show that consumers and the PTO readily distinguish among those marks when viewed in their entirety. North Atlantic also contended that CLASSIC CANADIAN is an inherently weak mark because CLASSIC is highly suggestive and CANADIAN merely describes a tobacco style or blend.

The Board, however, found North Atlantic's evidence unimpressive: the third-party registrations are not evidence of actual use, and the third-party use evidence lacked details as to length of use, degree of exposure, or popularity of the marks.

Top claimed that CLASSIC CANADIAN is a distinctive and strong mark, given its use since 1992 and Top's policing efforts. North Atlantic urged that the mark is inherently weak. The Board found that the record "overwhelmingly establishes that CLASSIC CANADIAN has little intrinsic distinctiveness." Top disclaimed CANADIAN, and CLASSIC suggests that the goods have "lasting significance or worth," or are "of a well-known type." In fact, Top acknowledged the suggestiveness of CLASSIC in the PTO prosecution of its pleaded registration. Although Top's prior statement is not conclusive, it is relevant and adds "shade and tone in the total picture confronting the decision maker."

Third-party registrations demonstrated that CLASSIC has a suggestive meaning for tobacco products. Moreover, the suggestiveness of the word is accentuated by the term CANADIAN. "In other word, Top's mark will be understood as suggesting a 'Canadian' blend of tobacco that is 'of a well-known type' or is 'typical' of such blend."

As to the commercial strength of the CLASSIC CANADIAN mark, there was insufficient evidence of consumer exposure to establish that it is a strong mark. The Board concluded that CLASSIC CANADIAN is an inherently weak mark, and the evidence of commercial strength "does not overcome the mark's intrinsic shortcoming."

Nonetheless, even weak marks are entitled to protection against confusingly similar marks for closely related goods. Here, because the goods overlap in part, a lesser degree of similarity between the marks is needed to support a finding of likely confusion.

Comparing the Marks: As to North Atlantic's CLASSIC AMERICAN BLEND marks, the Board noted the similarities in appearance and sound, and found that the marks are "equally highly suggestive of a style of tobacco." It concluded that North America's three marks are similar to Top's mark

As to ZIG ZAG CLASSIC AMERICAN BLEND, however, the word CLASSIC "will not likely be perceived by purchasers as distinguishing source." Instead consumers will focus on the ZIG ZAG element, and therefore the Board found that the dissimilarities between this mark and CLASSIC CANADIAN outweigh the similarities. Indeed, the Board concluded that this factor was dispositive as to this mark.

Lack of Actual Confusion: North Atlantic next pointed to the lack of actual confusion despite ten years of coexistence in the marketplace. The Board found that this factor pointed slightly in favor of Defendant.

Reverse Confusion?: Finally, Tops argued that reverse confusion is likely because North Atlantic is now the larger seller. The Board, however, found no reason to alter its likely confusion analysis, since Tops did not show that North Atlantic is a significantly larger newcomer that has saturated the market.

Balancing the du Pont Factors: Resolving any doubt in favor of the registrant, the Board found confusion likely as to the AMERICAN CLASSIC BLEND marks, but not as to the ZIG ZAG version.

Alleged Failure to Use Registered ZIG ZAG Mark: Top claimed that North Atlantic had not used this mark prior to registration, urging that the packaging did not show the mark "as a single, contiguous mark with a unitary commercial impression," since ZIG ZAG and CLASSIC AMERICAN BLEND were in different fonts and separated by the word "Cigarette Tobacco." The Board disagreed. On the front of the canister (above), ZIG ZAG and CLASSIC AMERICAN BLEND are in relative proximity to each other, and the wording "cigarette tobacco" is generic for the goods and does not interject a separate commercial impression between those two elements. In any case, the side of the canister (below) shows the two elements without intervening wording. And so the Board dismissed this claim.

TTABlog comment: I think the Board got this one wrong. I don't think the marks are confusingly similar, given the weakness of Opposer's mark. I also don't think North Atlantic was properly using the ZIG ZAG mark. How about you?

Text Copyright John L. Welch 2011.

USPTO Issues FY 2011 Performance and Accountability Report

2011-12-01T05:29:00.006-05:00

The USPTO has issued its Performance and Acccountability Report for Fiscal 2011 (pdf here). With regard to our favorite tribunal, the report notes, at page 27, that precedential TTAB decisions for the fiscal year were down to a mere 38. Also noted are the issuance of the new edition of the TBMP in May 2011, and the expansion and refinement of the Board's Accelerated Case Resolution (ACR) practice options.

TTAB Posts December 2011 Hearing Schedule

2011-12-01T05:20:00.001-05:00

The Trademark Trial and Appeal Board has scheduled six (6) oral hearings for the month of December, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]. Briefs and other papers for these cases may be found at TTABVUE via the links provided.

December 6, 2011 - 2 PM: In re Navy Command Service Exchange ("NEXCOM"), Serial No. 77324270 and 77324266 [Refusal to register the two marks shown below for clothing and fabrics on the ground that the background design or pattern of "irregular block-shaped pixels in a four-color pattern of black, deck grey, light grey, and navy blue” is functional under Section 2(e)(5) (and in the first mark, must be disclaimed].

December 6, 2011 - 2:30 PM: In re Navy Command Service Exchange ("NEXCOM"), Serial Nos. 77160763, 77160783, and 77160754 [Refusal to register the three marks shown below for clothing on the ground that the background design or pattern of "irregular block-shaped pixels in a four-color pattern of black, deck grey, light grey, and navy blue” is functional under Section 2(e)(5)].

December 7, 2011 - 10 AM: In re Beuno Alimentos, S.A. de C.V., Serial Nos 76676618 [Section 2(d) refusal to register the mark COCO LOCO for fruit juices in light of the registered mark COCO LOCO ESPRESSO & Design for coffee and tea].

December 7, 2011 - 11 AM: In re Repligen Corporation, Serial No. 77933539 [Section 2(d) refusal to register the mark OPUS for chromatography chemicals and media, chromatography columns, cartridges, and systems, in view of the identical mark registered for "laboratory apparatus, namely, automated, electronic and handheld dispensers of fluid, displacement-dosers of fluid, pipettes and titrators, all for laboratory purposes"].

December 7, 2011 - 2 PM: In re Northside Imports, Inc., Serial No. 77440023 [Section 2(d) refusal to register the mark HH HUDSON PRODUCTS & Design for automotive parts (first below), in view of the registered marks RL HUDSON, in standard character and design form (second below), for automobile and engine parts].

December 8, 2011 - 11 AM: In re Hershey Chocolate & Confectionery Corporation, Serial No. 77809223 [Refusal to register the configuration of a candy bar, shown below, on the ground of functionality under Section 2(e)(5), and alternatively on the ground that the proposed mark lacks acquired distinctiveness].

Text Copyright John L. Welch 2011.

Precedential No. 31: TTAB Affirms Mere Descriptiveness Refusal of ".MUSIC" for Domain-Related Services

2011-11-30T07:30:00.002-05:00

Brushing aside several the third-party service mark registrations for top-level domain (TLD) marks, the Board affirmed a refusal to register the mark .MUSIC in each of five applications, for domain registration and hosting services, various computer-related services, and music-related goods, on the ground that the mark is merely descriptive under Section 2(e)(1). The Board's ruling was based "on the current marketing environment which is different than the marketing environment when many of the third-party registrations relied upon by applicant were issued." In re theDot Communications Network LLC, 101 USPQ2d 1062 (TTAB 2011) [precedential].

Examining Attorney Seth A. Rappaport maintained that "music is a feature of applicant's goods and services" and that the period at the beginning of the mark is "mere punctuation that does not alter the commercial impression of the mark as being something more than just the word 'Music.'" Applicant asserted that .MUSIC is arbitrary with respect to many of the identified services. Furthermore, a TLD does have a source-identifying function, "since by definition the domain names from a particular TLD emanate from only one domain registry source."

Applicant also argued that the PTO has a practice of allowing registration of top-level domains, including such ICANN-accredited TLDs as dotam, dotfm, .travel, .nu domain, and dotCoop, as well as non-accredited but proposed TLD strings. It noted that "[a]ll of these include domain registration services, and may include a much broader variety of online services.

The Board, however, observed that the situation has changed since 1989, when the first few TLDs were created. In 2000, a dozen more were announced, another one in 2005, and in 2010 the .xxx TLD was approved. Furthermore, in 2011 ICANN announced that "it would greatly increase the number of top-level domains by allowing nearly any new name in any language."

As a result, the Board noted, there are groups seeking various top-level domain names, including a group (unaffiliated with Applicant) that is seeking the name .music, which is intended for use by musicians and the music industry. The Board concluded that the public will perceive .MUSIC "as a top-level domain associated with the field of music because there has been a concerted public effort to build support for its use as a top-level domain in this field."

This finding is based on the current marketing environment which is different than the marketing environment when many of the third-party registrations relied upon by applicant were issued. When many of the third-party registrations were issued, ICANN was not considering expansion of the roster of domain name extensions. Nor does the record reveal active campaigns to obtain TLD status for the marks in those registrations as there is for the .music top-level domain. Therefore, the third-party registrations submitted by applicant for marks consisting of “dot __________” or “._________” have very limited probative value ....

Turning then to the goods and services identified in the five applications, the Board found the mark to be descriptive of "registration of domain names for identification of users on a global computer network," since "consumers would anticipate that .music identifies the registration of domain names for a music-related top-level domain." Likewise the mark is descriptive of Internet hosting services, music publishing and entertainment services, online directory services, and, finally, downloadable content.

And so the Board affirmed the Section 2(e)(1) refusal in all five applications.

TTABlog comment: Is there a broad principle to be gleaned from this decision, or is the outcome highly fact-dependent?

Text Copyright John L. Welch 2011.

Mattel Seeks Review of TTAB's "MOTOWN METAL" Decision

2011-11-30T05:30:00.001-05:00

Mattel, Inc. has commenced a civil action (complaint here) in the U.S. District Court for Central District of California, seeking review under Section 1071(b) of the TTAB's decision in UMG Recordings, Inc. v. Mattel, Inc., 100 USPQ2d 1868 (TTAB 2011) [precedential].

The Board sustained UMG's opposition to the mark MOTOWN METAL for toy vehicles and accessories, finding it likely to cause confusion with, and likely to dilute by blurring, the famous mark MOTOWN for musical entertainment and musical recordings. [TTABlogged here].

Mattel's complaint is just slightly more than two pages long. It seeks reversal of the Board's decision; an order "that Mattel is entitled to registration of MOTOWN METAL on the Principal Register;" and, alternatively, an order prohibiting UMG "from registering MOTOWN in Class 28 for toys, games and playthings."

This should be interesting.

Text Copyright John L. Welch 2011.

TTAB's CAVERN CLUB Ruling Heads to Federal Court

2011-11-29T08:16:00.007-05:00

At the Trademark Blog, Marty Schwimmer reports (here) that Cavern City Tours Ltd. has filed a complaint seeking Section 1071(b) review of the Board's decision in Cavern City Tours Ltd. v. Hard Rock Cafe International, Inc., Cancellation No. 92044795 (September 29, 2011) [not precedential]

The Board dismissed Cavern City's fraud and Section 2(a) false association claims concerning Hard Rock Cafe's registration of the mark CAVERN CLUB for clothing and restaurant and bar services (summarized at the TTABlog here). Marty provides a copy of the complaint as filed in the U.S District Court for the District of Nevada. Furthermore, as an expert on issues of trademark use by foreign entities (he's my go-to guy on that topic), he observes:

Plaintiff has added an infringement claim, so it will have the opportunity to establish protectable trademark rights in CAVERN CLUB prior to HRC’s ITU filing date. Readers of the [Trademark] blog know that the US doesn’t protect "reputation without use." On the other hand, cases such as Casino de Monte Carlo and Grupo Gigante (646 F3d 0309), give plaintiff a fighting chance to establish that it had protectable prior rights (if it is correct, for example, that plaintiff promoted the Cavern Club as part of its US advertising efforts in the 1991 to 1995 period).

TTAB Affirms Refusal to Register Rectangular Background Design Due to Failure to Function as a Trademark

2011-11-29T06:12:00.000-05:00

Trademark Examining Attorney Hanno Rittner issued refusals in two applications to register the mark shown below, comprising a background design of adjacent white and blue rectangles outlined in blue, for various communications and computer-related consultation services, on the ground that the applied-for mark fails to function as a service mark. The Board affirmed. In re Ingram Micro Inc., Serial Nos. 78321253 and 78321254 (November 15, 2011) [not precedential].

Applicant argued that the refusals, issued after Applicant submitted its Statements of Use in the two cases, was "untimely" because the Examining Attorney should have been raised earlier in the prosecution because the PTO was on "clear notice" of the nature of the mark.

The Board pointed out that, when the refusals to register were first made in 2004, the 3rd edition of the TMEP was in place, and the Examining Attorney followed the procedure set forth therein by deferring issuance of a failure-to-function refusal until specimens were submitted. Although subsequent revisions of the TMEP made some changes, "[t]he fact that procedure altered somewhat by the time applicant filed its Statements of Use doe not provide applicant with a windfall."

Moreover, "questions of procedural missteps are not matters for Board consideration, but rather should be taken up by way of petition to the Director." In short, the Board will not consider whether the refusals were procedurally improper.

Applicant's specimens of use
Turning to the substantive refusals, the Board found that the proposed mark "is a background design and ... does not create a separate commercial impression sufficient to permit registration absent a showing of acquired distinctiveness. It is a simple geometric design." Use of two colors does not make this design inherently distinctive.

The Board found it "clear from applicant's specimens of use that applicant's mark does not make a separate commercial impression." Moreover, the specimens also include a red rectangle behind the word MICRO. "It seems unreasonable to expect consumers to recognize and pull out the white-and-blue rectangle as a service mark, yet be unaffected by the red rectangle featured in the overall design.

Anne Gilson Lalonde: Scandalousness Refusal Affirmed for Chocolate Candy Trademark [Warning: Post Rated NC-17]

2011-11-28T06:11:00.002-05:00

Anne Gilson Lalonde is my go-to person when it comes to Section 2(a) "immoral or scandalous" refusals. She and her father, Jerome Gilson, reviewed the law in this always-controversial area in their article in the latest issue of The Trademark Reporter: "Trademarks Laid Bare: Marks That May Be Scandalous Or Immoral," 101 Trademark Reporter 1476 (September-October 2011). [pdf here]. Anne accepted my invitation to discuss the TTAB's latest ruling on a Section 2(a) scandalousness refusal. Her comments follow:

Marsha Fox applied to register the mark COCK SUCKER and the design (above) for "chocolate suckers molded in the shape of a rooster." The Examining Attorney found the mark to be scandalous and immoral, and rejected registration under Section 2(a). The Board affirmed. In re Fox, Serial No. 76315793 (November 15, 2011) [not precedential].

This decision is an prime example of the many challenges facing the PTO in determining whether a trademark is scandalous and immoral. The PTO has been unable to make consistent determinations of what constitutes scandalous matter. The unrelated word mark GAMECOCK SUCKER for lollipops, Ser. No. 85054752, was published for opposition on November 23, 2010 and a statement of use was filed on November 18, 2011, just three days after the decision in In re Fox was issued. The sole office action required the applicant to disclaim the word SUCKER, with no mention of scandalousness or immorality. It would be extremely difficult to find any legitimate basis on which to distinguish these two marks.

When a mark has two meanings, the PTO may or may not find it to be scandalous. Slang references to sexual material will nearly always be considered scandalous. However, the Board may permit registration if such a mark has a double meaning. The issue here is, when does the more offensive meaning render the mark unregistrable?

The most infamous example of double meanings in 2(a) rejections is that of BIG PECKER BRAND for t-shirts. The Board surprisingly concluded that this word mark had an alternative, nonvulgar meaning because the specimen (shown below) included a bird with a large beak:

In re Hershey, 6 U.S.P.Q.2d 1470 (T.T.A.B. 1988). In that case, the Board concluded that "the inclusion of the bird design would make it less likely that purchasers would attribute any vulgar connotation to the word mark." It also held that the evidence was "at best marginal to demonstrate that the mark is a vulgar, slang reference to male genitalia and would be recognized as such a reference by a substantial composite of the general public." In In re Fox, the Board distinguished Hershey by saying that "the evidence supports the fact that the term COCK SUCKER is vulgar."

The PTO has made several other apparently inconsistent determinations in this context. It has allowed registration of the following mark for "hunting preserves where people can hunt for pheasants":

Reg. No. 4002426.
The office action for that registration did not invoke the concept of scandalousness, though it did require the applicant to disclaim COCK RANCH. The word mark COCK RUB for spice rubs did receive a 2(a) refusal. The applicant's response, however, overcame that refusal, possibly with its argument that "the use of the term RUB to identify spice rubs automatically makes the consumer believe that the mark is identifying a type of food and not a sexual act." Ser. No. 85050620 (notice of publication issued May 24, 2011). And the following mark is currently registered for clothing:

Reg. No. 3130205.
Assuming that the offensive definition is the primary definition of the mark, it is difficult (perhaps impossible) to determine what point on the sliding scale of vulgarity causes a mark to be scandalous. The Board states in Fox that "the word 'vulgar' captures the essence of the prohibition against registration." Presumably, then, the term "cock sucker" is more vulgar than "big pecker," "big cock," "cock rub" or "tits." But how can the PTO possibly make such a subjective determination? Certainly the mark at issue in Fox is vulgar, but so are these others. A comparison of the determination in Fox to others the PTO has made highlights the troubling inconsistency and subjectivity in this particular area.

TTABlog note: a Notice of Appeal to the CAFC was filed on January 10, 2012.

Text Copyright 2011.

Precedential No. 30: TTAB Refuses to Compel Sweeping E-Discovery

2011-11-23T06:32:00.002-05:00

If your knickers have been twisted into a pretzel over fear that TTAB litigation is becoming as complicated and expensive as civil litigation, this crisp interlocutory order will provide some relief. The Board denied a motion to compel sweeping e-discovery in this particular case, observing that in TTAB proceedings "the burden and expense of e-discovery will weigh heavily against requiring production in most cases. Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 100 USPQ2d 1904 (TTAB 2011) [precedential].

This proceeding concerns the issues of genericness and/or mere descriptiveness of the term PRETZEL CRISPS for "pretzel crackers." The parties were unable to reach an agreement on a procedure for handling e-discovery (other than use of .pdf format). Applicant Princeton Vanguard proceeded to produce tens of thousands of documents (possibly from a prior civil lawsuit), including ESI (electronically stored information). Dissatisfied with Opposer Frito-Lay's production, Princeton moved to compel, claiming that F-L's electronic discovery efforts were insufficient. F-L argued that the cost ($70,000 - 100,000) would far outweigh the benefit.

The Board discussed at length the role of e-discovery in civil actions and in Board proceedings, noting that in the courts "there is an increasing focus on the question of proportionality, and on whether the type of extensive ESI discovery applicant advocates here is always justified." In Board proceedings, discovery is expected to be less extensive than in court, and demands for e-discovery should be carefully scrutinized.

In view of our limited jurisdiction, the narrowness of the issues to be decided by the Board, and the concerns expressed by the Federal Circuit, the burden and expense of e-discovery will weigh heavily against requiring production in most cases. Parties are advised to be precise in their requests and to have as their first consideration how to significantly limit the expense of such production. Absent such a showing, the likelihood of success of any motion to compel will be in question.

Here, the Board denied Applicant Princeton's motion to compel, in large part, refusing to require Frito-Lay to "start its document production over, using the same or similar protocols to those applicant employed."

Applicant has simply failed to establish that opposer’s method of searching and producing documents was insufficient as a general matter, given the parties’ failure to agree on an ESI discovery protocol in advance, the nature of applicant’s discovery requests and the issues in this proceeding.

The Board proceeded to pare down Princeton's demands and then ordered Frito-Lay to produce documents in response to certain, narrowed requests.

TTABlog comment: Bravo!

Text Copyright John L. Welch 2011.

TTAB Affirms Genericness Refusal of "GRIND N BREW" for ... Guess What?

2011-11-22T05:48:00.015-05:00

A beer hall featuring dancing girls? No. An orthodontist office that serves espresso? Don't be absurd! What then? How about "electric coffee makers for commercial use?" Bingo! Examining Attorney Simon Teng refused registration of GRIND N BREW on the grounds of genericness, and in the alternative, mere descriptiveness and lack of acquired distinctiveness. The Board affirmed. In re Grindmaster Corporation, Serial No. 77834762 (October 28, 2011) [not precedential].

Genericness: The Board, as usual, found the genus of goods to be adequately described by Applicant's identification of goods. Examining Attorney Simon Teng submitted Internet excerpts "showing that various manufacturers sell electric coffee makers and use 'grind and brew' as part of the name of their coffee makers." Newspaper stories also demonstrated the generic use of "grind and brew" for coffee makers. And consumer reviews showed that "the public considers the term to be generic for a type of electric coffee maker."

Applicant argued that the relevant public "is not the average retail consumer, but rather a more sophisticated buyer, such as would be found in a restaurant or hotel." The Examining Attorney contended that both commercial and home coffee makers "produce coffee for human consumption," and that commercial establishments can use consumer coffee makers.

The Board observed that the evidence showed "a cross-over in the market." Furthermore, restaurant and hotel purchasing agents "comprise members of the public who would be likely to purchase household electric appliances, such as grind-and-brew
coffee makers for home use."

The language “for commercial use” in applicant’s identification of goods may limit the market for applicant’s coffee maker and perhaps affect the size, capacity and/or the price of the coffee maker, but it does not change the fundamental nature of applicant’s product as a coffee maker. Simply put, the distinction between “domestic” and “commercial,” when essentially the same product is involved, is insignificant. The many examples of generic use by producers of coffee makers is strong evidence of the need by others in the trade to use the term generically and that it would be perceived as a generic term by consumers and commercial users alike.

Mere descriptiveness and acquired distinctiveness: For the sake of completeness, the Board next considered the 2(e)(1) and 2(f) issues. Not surprisingly, it found that the evidence supportsed a mere descriptiveness refusal.

We again refer to the meanings of the words “grind” and “brew.” Each word adequately describes a function of a coffee maker that acts on coffee beans by first crushing them into very small pieces (grinding) and then infusing them with water (brewing) to make coffee.

In view of the highly descriptive nature of GRIND N BREW, Applicant faced a heavy burden to prove acquired distinctiveness. Although Applicant has used the designation since 1995 and registered sales of some $20 million, there was no indication of whether sales have fluctuated over time and no context was provided for the sales figures. Moreover, the prevalence of third-party use "indicates that applicant’s has not been substantially exclusive as required by the statute."

In sum, Applicant evidence of acquired distinctiveness was insufficient.

TTABlog comment: Compare this case with the recent PICROSS decision (here), where the Board found acquired distinctiveness despite considerable third-party descriptive use of the word "picross."

Text Copyright John L. Welch 2011.

Test Your TTAB Judge-Ability: Are "RETHINKING YOUR FUTURE" and "CREATING YOUR FUTURE" Confusingly Similar for Self-Help Goods/Services?

2011-11-21T06:01:00.005-05:00

The outcome of this Section 2(d) opposition hinged on the issue of the similarity or dissimilarity of the marks. Applicant Andrea Gallagher applied to register the mark RETHINKING YOUR FUTURE for publications and services in the field of life/career planning. Opposer Everett W. "Tad" James claimed that the mark would likely cause confusion with his registered mark CREATING YOUR FUTURE for publications and services in the field of self-improvement. The Board found the goods and services to be related, since self-improvement is a "target" of Applicant's life/career planning. But what about the marks? Too close for comfort? Is a TTAB Judgeship in your future? Everett W. James v. Andrea Gallagher, Opposition No. 91191941 (October 27, 2011) [not precedential].

Applicant Gallagher contended that the shared phrase "your future" is highly suggestive of the involved goods and services, and therefore the first word in each mark is the dominant portion. She provided some two dozen third-party registrations for marks in class 41 that include the phrase "your future." The Board noted that third-party registrations may demonstrate that a mark or a portion of a mark is suggestive or descriptive.

In addition, we take judicial notice of the term “your” as meaning “a person’s; one’s” and “future” as meaning “something that will happen in time to come.” We find these terms to be highly suggestive of the goods and services offered by applicant and opposer in both the pleaded registrations and the application, which are clearly targeted toward shaping the future of those who purchase their goods and services.

The Board therefore turned to the dominant portions of the marks, observing that "rethinking" and "creating" neither look nor sound alike. Moreover, the connotations of the two marks are different:

We find the commercial impression of opposer’s mark in the slightly stylized “CREATING YOUR FUTURE” to be one of inviting participant’s to invent their own path in self improvement. By contrast, we find the commercial impression generated by applicant’s mark “RETHINKING YOUR FUTURE” to be one of asking participants to reconsider and possibly change decisions they have already made regarding retirement and other life planning.

The Board concluded that the dissimilarities in connotation and commercial impression between the marks outweigh whatever similarities there are in sight and sound.

Balancing the du Pont factors, the Board found confusion unlikely and it dismissed the opposition.

TTABlog comment: Applicant alleged that his mark is famous, but his proofs fell short even of showing that the mark is well known. His own testimony did not help his cause: “So it’s not that we’re famous. We’re a legend in our own mind.”

So, how did you do, Judge Fill-in-the-blank?

Text Copyright John L. Welch 2011.

PICROSS Has Acquired Distinctiveness for Nintendo's Video Games, According to TTAB

2011-11-18T06:14:00.005-05:00

Based on third-party usage, the Board agreed with the Examining Attorney that "PICROSS" is merely descriptive of Nintendo's video games. But it reversed the PTO's Section 2(e)(1) refusal to register the mark PICROSS DS without a disclaimer of PICROSS because it found that the word had acquired distinctiveness. In re Nintendo of America Inc., Serial No. 77245239 (November 3, 2011) [not precedential].

Mere Descriptiveness: Nintendo's goods feature a type of puzzle known as a "nonogram," also known as "Paint by Numbers," "Hanjie," and "Japanese Crosswords." The Examining Attorney submitted excerpts from more than 20 websites showing that the term PICROSS is used in connection with these types of puzzles. As a result, the Board found that the Examining Attorney had established a prima facie case that PICROSS is merely descriptive of nonogram puzzles.

Nintendo submitted a variety of evidence in rebuttal and asserted that it had coined the term "picross." Nonetheless, the Board pointed out, regardless of who invented the term, the question is whether PICROSS is, at the time of the application, merely descriptive of the goods.

Nintendo claimed that the third-party uses are infringing and that it has made efforts to enforce its mark. The Board observed, however, that Nintendo "overstates the impact of its efforts to police the mark and understates the descriptive significance of these third-party uses."

And so the Board ruled that PICROSS is merely descriptive of the goods.

Acquired Distinctiveness: The Board's discussion of Nintendo's 2(d) evidence was somewhat puzzling. It found that evidence of "media coverage of the popularity of these games provides some measure of context." [for Applicant's sales figures? - ed.]. The game also received high ratings from reviewers. [So what? - ed.]

Twenty-one form declarations from GAME STOP employees showed some degree of association of PICROSS with Applicant's games. Finally, Nintendo demonstrated that its "use of PICROSS has received extensive unsolicited media coverage." The Board concluded that:

Applicant has shown that the term PICROSS has been widely-associated with its two game programs. The games also have been shown to be both relatively popular and frequently reviewed by video game media sources. Balancing all of the evidence of record, we find that applicant has met its burden of showing that PICROSS has acquired distinctiveness.

The Board therefore reversed the requirement that PICROSS be disclaimed, and it ordered that the mark be published for opposition "with a notation of applicant's claim of acquired distinctiveness" as to PICROSS.

TTABlog comment: I was unconvinced by the Board's explanation as to why it found acquired distinctiveness. How about you?

Text Copyright John L. Welch 2011.

TTAB Finds Restaurant Services and Food and Beverage Items Related, Affirms 2(d) Refusal of ST. JOE'S COFFEE

2011-11-17T06:07:00.000-05:00

We know that, for Section 2(d) purposes, pretty much all beverages are related and all snack foods are related. Now it appears that numerous food and beverage products are also related to restaurant services. Third-party registration and website evidence led the Board to affirm a Section 2(d) refusal to register the mark ST. JOE'S COFFEE for a variety of food products, including coffee, pastries, and smoothies [COFFEE disclaimed], on the ground of likelihood of confusion with the registered mark ST JOE for hotel, restaurant, and dining services. In re Gabriel Miller & Jason Miller, Serial No. 77855808 (November 3, 2011) [not precedential].

As to the similarity of the marks at issue here, the Board found that this "critical" du Pont factor points to a finding of likely confusion. Not a surprise.

As to the involved goods/services, the Board has repeatedly observed that there is no per se rule that food and beverage items are related to restaurant services for Section 2(d) purposes. "Something more" must be shown than just the similarity or identity of the marks. Here, the Board found that Examining Attorney Meghan Reinhart "carefully established something more:" the evidence demonstrated a "close relationship between coffee and restaurant services with some of the larges franchise operations in the country" [e.g., DUNKIN DONUTS and STARBUCKS]; between other beverage and food items, and restaurant services [e.g., MAUI WOWI and COLLEGE HILL COFFEE CO.]; and between various pastries/bakery items and restaurant services [e.g., THE CHEESECAKE FACTORY, COCO'S BAKERY, THE CUPCAKERY, and TOBIES RESTAURANT AND BAKERY].

In addition, the Examining Attorney submitted third-party registrations that listed both hotel, dining, and/or restaurant services, on the one hand, and coffee, hot chocolate, bakery goods, and smoothies, on the other hand [e.g., BR BASKIN ROBBINS, CALIFORNIA PIZZA KITCHEN, AUNTIE ANNE'S PERFECT PRETZEL]. [As we know, under Albert Trostel and Mucky Duck, third-party registrations may have some probative value in suggesting that the listed goods and/or services are of a type that may emanate from a single source.

The Board therefore found that the Applicant's "food and beverage items are closely related to registrant's types of restaurant and dining services." Moreover, there is a "significant overlap" in channels of trade, and the classes of consumers are the same.

The Board therefore concluded that confusion is likely, and it affirmed the Section 2(d) refusal.

TTABlog comment: Does this mean that, for Section 2(d) purposes, restaurant services are related to any and every food and beverage item served in restaurants?

Text Copyright John L. Welch 2011.

Test Your TTAB Judge-Ability: How Confident Are You About Deciding This Section 2(d) Gardening Case?

2011-11-16T06:20:00.005-05:00

There was no need for new Administrative Trademark Judge Linda A. Kuczma to "dig into the record" in order to write this, her first TTAB opinion. Neither party submitted any testimony or filed briefs in this Section 2(d) opposition involving Helen Yoest's application to register the mark GARDENING WITH CONFIDENCE for "providing a website featuring information in the field of gardening" [GARDENING disclaimed]. Opposer McCorkle Nurseries claimed likelihood of confusion with its registered mark GARDENER’S CONFIDENCE for "live plants, trees and flowers" [GARDENER'S disclaimed]. That's all you need to know. How would you rule? McCorkle Nurseries, Inc. v. Helen Yoest dba Tiger Lily’s, Opposition No. 91191035 (October 26, 2011) [not precedential].

Procedure: Opposer McCorkle's opening brief was due on March 5, 2011 (a Saturday). On March 7, Opposer filed a motion seeking to re-open its testimony period [Good luck with that! - ed.], claiming that it was under the belief that the case had been suspended. The Board applied the Pioneer factors, finding that Applicant Yoest would not be prejudiced by a re-opening, but that resolution of this case would be significantly delayed. The cause of the delay was completely within Opposer McCorkle's control, and there was no reason for McCorkle to believe the case was suspended: "the parties were not engaged in settlement discussions, neither party filed a motion to suspend these proceedings, and the Board in fact never suspended this case." In short, the lack of a satisfactory explanation for the delay weighed "heavily against a finding of excusable neglect." Finally, the Board was unable to determine, on the record, whether Opposer McCorkle acted in good or bad faith.

Weighing all the factors, we find that the third factor, the reason for the delay, taken together with the second factor, the length and impact of the delay, weigh heavily against a finding of excusable neglect and therefore deny opposer’s motion to reopen its pretrial disclosure and testimony periods.

The Board also denied Opposer an extension of time to file its brief, again due to lack of a reasonable excuse for delay. Since neither Opposer nor Applicant Yoest submitted any evidence, and since Opposer had missed the briefing date, there was no need for the filing of a brief by Applicant, said the Board [I don't see why not - ed.], and it proceeded to the merits of the case.

Substance: The record was limited to the file of the opposed application and Opposer's registration, which became of record under Rule 2.122(b) because Applicant had counterclaimed to cancel the registration. [Had Applicant Yoest not counterclaimed, Opposer would have had nothing in the record].

The Board first looked to Applicant's Section 2(d) counterclaim. However, because Applicant had no evidence, she could rely only on the filing date of her (opposed) application (March 20, 2007), a date well after the filing date of Opposer's registration (December 21, 2004). Based on lack of priority, the Board dismissed the counterclaim.

Turning to Opposer McCorkle's 2(d) claim, the Board cryptically found the marks to be "somewhat different although they nonetheless have some similarities in appearance, sound, meaning and connotation."

As to the goods/services, "[i]nasmuch as the products sold by opposer are different from applicant’s services, and there is no evidence in the record to support the relatedness of such products and services, we find that applicant’s services are not similar or related to opposer’s products."

Balancing the du Pont factors, the Board found confusion unlikely, and it dismissed the opposition.

TTABlog comment: This was one strange case! The finding regarding the similarity of the goods and services is a bit unsatisfying. Couldn't the Board take judicial notice that there is some connection between plants, trees, and flowers, and a gardening website? But then, so what? I guess Opposer deserved to lose. However, don't forget that it can have a second bite of the apple via a Section 1071(b) civil action for review, in which it can create a new record.

Text Copyright John L. Welch 2011.

Prof. Gordon Thompson Questions TTAB's CAVERN CLUB Decision

2011-11-15T05:12:00.001-05:00

Oxford University Press has kindly given me permission to reproduce the comments of Professor Gordon Thompson on the TTAB's recent CAVERN CLUB decision [TTABlogged here]]. His comments [here] appeared on Oxford's OUPblog [here].

"What Brings Mr. Epstein Here?" 9 November 1961
Prof. Gordon Thompson, Skidmore College

The transformation of the Beatles from four musicians with humble roots into British cultural icons (second only to Shakespeare in some minds) began in Liverpool, even if a recent decision by the Trademark Trial and Appeals Board of the United States Patent and Trademark Office may attempt to shape how we remember those roots in the future. Ironically, that decision comes shortly before a relevant anniversary in Beatles history.

Fifty years ago in 1961, Mathew Street on an early November midday would have presented a less than picture-postcard impression of Liverpool; but Brian Epstein had ventured forth on a mission, and he had brought his assistant, Alistair Taylor, as company. Temperatures in the low fifties and an ever-present threat of Irish Sea rain slowed the decay of the vegetable hubris dropped by workers from trucks, and the angle of the sun prevented much light illuminating what rotted underfoot. Nevertheless, the street would have seemed bucolic in comparison to the dragon’s roar and the stench of cigarette smoke, disinfectant, urine, and body odor that permeated clothing below the pavement where subterranean arches ran with the condensed sweat and breath of a great, unwashed wall of adolescent sexuality. With special permission to pass the Cavern Club’s bouncer and the line of aspiring dancers, Epstein descended the stairs like Dante, with Taylor acting as a reluctant Virgil, or perhaps they more closely resembled Don Quixote and Sancho Panza.

Epstein’s record store—perhaps the most successful in this northern port city—had recently been selling numerous copies of the 45 rpm single, “My Bonnie” by Tony Sheridan and the Beat Brothers. Locals knew the Beat Brothers to be the Beatles and, despite Cavern Club advertisements that declared the band as “Direct from Hamburg,” Liverpudlian blood flowed in their veins. Taylor recognized them as regulars in the store and Epstein had somehow learned that the band whose records he sold sometimes played a lunch-hour session at this dank outpost of rock ‘n’ roll. Although pop and rock were not to his taste, the educated and fastidiously sartorial record-store owner recognized the importance of this music, if not for its energy, then for the number of units it moved through his inventory.

He also could not have missed the parallels between himself and the most famous manager of British pop singers of the era: Larry Parnes. Music papers like the New Musical Express, Melody Maker, and Disc carried articles on and interviews with Parnes who sometimes made newsreel appearances where he introduced his “stable” of handsome boy singers. Like Epstein, Parnes was Jewish and from a merchant family; but from his time in London at the Royal Academy of Dramatic Arts, Epstein probably also knew that Parnes, like himself, was a homosexual, and to be a homosexual in Britain at the time was to be illegal. More importantly, Parnes offered an example of how to be officially accepted and successful in a society that routinely discriminated against people based on their class and ethnicity, let alone on their gender and sexual orientation.

The Beatles knew that Epstein had entered their lair when DJ Bob Wooler announced the NEMS manager’s presence; but the band seemed to have paid no heed to the businessmen who—after watching a set of humor, smoke, leather, hair, audience interaction, and powerful music—made their way to the stage. George Harrison reportedly saw them first and greeted the man in the exquisite dark suit with a very polite, but inquiring, “What brings Mr. Epstein here?” Indeed.

Taylor remembers Epstein—enthused by the energy and presence of Lennon, McCartney, Harrison, and Best—deciding almost immediately that he wanted to manage the Beatles. Over the next weeks, the band would agree to a contract with the record-store owner who, in return, would begin his challenging quest to have this band of northern scruffs signed to a recording company.

Later, as regional popularity evolved into Beatlemania, the story of how Brian Epstein “discovered” the Beatles in the Cavern Club made that establishment famous throughout not only Britain, but also the world. Although the club closed and reopened several times, fans continued to make the pilgrimage to the site of Beatledom’s naissance. Even when the City of Liverpool demolished the site and filled in the Cavern’s arches with rubble, fans returned to pay homage to John Lennon on the night of his assassination. Thus, when developers reopened the site of Mr. Epstein’s excellent lunchtime adventure and renovated its arches, the Cavern Club relocated back to this sacred ground from its ersatz location across the street. The memory would not die; but then many want to shape our memory of history.

When the Hard Rock Café received permission to trademark the identity “Cavern Club” in February 2000, they did so to sell “clothing, namely T-shirts, sweatshirts, polo shirts, sport shirts, jackets, hats, caps, bolo ties, belts, and sun visors,” as well as to operate a “restaurant, bar and prepared take-out food services.” Unsurprisingly, their website and stores feature Beatles-themed haberdashery as they attempt to capture part of the Beatles nostalgia market associated with a number of looming significant anniversaries. Hard Rock Café International, Inc. (owned today by the Seminole Indian Tribe of Florida) has avidly collected rock memorabilia, including material related to the Beatles and the original Cavern Club. Now, they apparently want to collect the identity of the place where George Harrison greeted his future.

Cavern City Tours, a company founded by Liverpudlian schoolteachers in 1984 to celebrate local Beatles history, have been the custodians of England’s Cavern Club since 1991 and petitioned the American court to cancel Hard Rock Café’s registration. They asserted that they have long marketed the club in the United States as part of their tour packages celebrating the Beatles in Merseyside and that the Hard Rock Café’s claim to be the Cavern Club constituted fraud. Indeed, Cavern City Tours maintain that their Cavern Club is THE Cavern Club and that they represent but the most recent of a succession of custodians of the institution.

However, Judge Albert Zervas’ opinion for the Appeal Board sided with the Hard Rock Café by agreeing that Cavern City Tours had failed to prove that its Cavern Club uniquely associated with the “particular personality or ‘persona’” of the Cavern Club. He curiously writes, “We find it implausible that any entity that operates The Cavern Club as a musical entertainment establishment under The Cavern Club name in the same location automatically has The Cavern as its identity.” Consequently, despite a likely appeal, another corporation seems poised to gobble up a piece of Beatles history and to create American imitations of an original in an attempt to provide fans with more convenient places to go than where Brian Epstein first went fifty years ago today.

Gordon Thompson is Professor of Music at Skidmore College. His book, Please Please Me: Sixties British Pop, Inside Out, offers an insider’s view of the British pop-music recording industry. Check out Prof. Thompson’s other posts here.

USPTO News: TEAS Version 4.9 to be Deployed on November 19th

2011-11-14T15:57:00.006-05:00

TEAS Version 4.9 is scheduled for deployment on November 19, 2011, according to the USPTO. Most of the changes are highlighted here.

CAFC Affims TTAB Decision Sustaining "TELMEX" 2(d) Opposition

2011-11-14T06:00:00.001-05:00

In a nonprecedential disposition, the CAFC affirmed the Board's decision in Telefonos de Mexico, S.A.B. de C.V. v. Andres Gutierrez Estrada, Opposition No. 91183487 (June 30, 2010) [not precedential]. [TTABlogged here]. The appellate court ruled that the TTAB's findings of fact in its Section 2(d) analysis were supported by substantial evidence, and it concluded that the Board did not err in finding a likelihood of confusion between Applicant Estrada's mark AUDITORIO TELMEX for arena and entertainment services [AUDITORIO disclaimed], and the previously-used mark TELMEX for telephone calling card services. Andres Gutierrez Estrada v. Telefonos de Mexico, S.A.B. de C.V., Appeal No. 10-1558 (Fed. Cir., November 20, 2011).

On appeal, Estrada contended that "entertainment services and arena services are not related to telecommunications services, and that Telefonos failed to establish that the promotions displayed on its calling cards would create an association between these services." The CAFC disagreed, concluding that substantial evidence supported the Board’s findings.

The Board considered the evidence submitted by Telefonos, including the testimony of Mr. Rivera and the images of calling cards bearing Telefonos’ TELMEX mark and depicting sporting and other entertainment events sponsored by Telefonos. *** Although telecommunications services are different in kind from arena and entertainment services, the Board properly relied on substantial evidence in the record to find that the services, when used in connection with the marks at issue, would likely be related in the mind of the consuming public.

Estrada also contended that the Board erred when it considered certain evidence dated after Estrada’s application filing dates. The court again disagreed: "Our precedent is clear, however, that 'evidence bearing on the issue of likelihood of confusion is admissible for the period extending through the latest date permitted by the procedural rules of the [PTO] for taking testimony and presenting evidence.' R.J. Reynolds Tobacco Co. v. Am. Brands, Inc., 493 F.2d 1235, 1238 (CCPA 1974)."

Finally, the court ruled that the Board had properly considered the matter of bad faith.

The thirteenth DuPont factor permits the Board to weigh "[a]ny other established fact probative of the effect of use." DuPont, 476 F.2d at 1361. An applicant’s bad faith is potentially relevant in the likelihood-of-confusion analysis. See L.C. Licensing Inc. v. Berman, 86 U.S.P.Q. 2d (BNA) 1883, 1890 (T.T.A.B. 2008); see also Paddington Corp. v. Attiki Imps. & Dis-tribs., Inc., 996 F.2d 577, 587 (2d Cir. 1993) ("Where a second-comer acts in bad faith and intentionally copies a trademark or trade dress, a presumption arises that the copier has succeeded in causing confusion."). As noted supra, the Board found that Estrada had been "evasive and disingenuous" by essentially denying any prior knowledge of Telefonos’ TELMEX mark. The Board concluded that Estrada exhibited "not only bad faith but a general lack of respect for the application and opposition process." *** The Board noted that although it would have found a likelihood of confusion on the present facts even without a finding of bad faith, were this a close case Estrada’s bad faith would have tipped the balance to a finding of a likelihood of confusion. We conclude that substantial evidence supports the Board’s finding of Estrada’s bad faith. As the Board noted, if Estrada had an explanation for his implausible responses, he could have provided that explanation by submitting evidence at trial."

And so the court affirmed the TTAB's ruling.

TTABlog comment: I guess the CAFC has not read Tom Casagrande's article (here) on "Why an Accused Trademark Infringer's Intent Has No Place in Likelihood of Confusion Analysis."

Here, it seems that Estrada's faith was doubly bad: first in choosing his mark and second in being "evasive and disingenuous" when asked about it. The Board stated that it would have found a likelihood of confusion even without the bad faith finding, but is there any doubt that Estrada's bad faith put him behind the 8-ball?

Text Copyright John L. Welch 2011.

TTAB Dismisses Cancellation Petition On Contractual Estoppel Ground

2011-11-11T06:48:00.002-05:00

Invoking the doctrine of contractual estoppel, the Board entered summary judgement, dismissing a petition for cancellation of a registration for the mark MARIE CLAIRE for "women’s boots, shoes and sandals." The Board also dismissed Petitioner's motion for summary judgment based on a claim of abandonment. Marie Claire Album, S.A. v. Bata Brands S.A.R.L. Luxembourg, Succursale de Lausanne, Cancellation No. 92052238 (October 25, 2011) [not precedential].

The parties signed a consent agreement in 1986, resolving a cancellation proceeding brought on the ground of Section 2(d) likelihood of confusion. The agreement included these terms:

2. Bata agrees that it shall not use the mark MARIE CLAIRE on or in connection with any goods other than men’s, women’s, and children’s boots, shoes and sandals, or any other kind of variety of footwear (except hosiery) without the authorization of Marie Claire Album.

4. Marie Claire Album consents to the use or registration by Bata in the United States of the mark MARIE CLAIRE on or in connection with its goods, so long as such use is in accord with paragraph 2, above.

6. Marie Claire shall withdraw cancellation No. 14,624 upon the signing of the agreement, and shall not attempt to reinstitute cancellation proceedings based on the same set of facts alleged at the time of filing that petition.

9. This agreement shall remain in full force and effect so long as either party or any licensee or assignee continues to use the mark MARIE CLAIRE, or any registration of the mark by either party or a licensee or assignee remains in effect, or any new application for the mark is pending or has been approved.

Petitioner claimed that paragraph 9 requires that the MARIE CLAIRE registration be "effective," and that Bata has abandoned the mark. It also argued that the agreement “violates public policy" and that paragraph 6 "contemplates that future cancellation proceedings can be brought" on different facts, and here the cancellation proceeding is based on different facts.

The Board looked to the "plain terms" of the agreement:

The terms in paragraph 4 regarding use or registration are mirrored in paragraph 9--that is--the consent agreement provides petitioner’s consent to respondent’s use of MARIE CLAIRE or respondent’s registration of MARIE CLAIRE. Thus the conditions of the agreement are met by either respondent’s continued use of or respondent’s maintenance of a registration of MARIE CLARE. *** The terms in paragraph 9 with regard to registration simply require that the MARIE CLAIRE registration remain in registered-renewed (rather than expired) status. We also read paragraph 6 as an agreement by petitioner that it will not seek to relitigate the issues resolved by the consent agreement, not a provision that contemplates future cancellation proceedings.

Concluding that Petitioner, as a matter of law, is contractually estopped from petitioning for cancellation of the MARIE CLAIRE registration, the Board granted Bata's motion for summary judgment, and denied Petitioner's motion.

TTABlog comment: Is this petition based on the "same set of facts as alleged" in the original petition? If Bata has indeed abandoned the mark, wouldn't the public interest be served by allowing a petition for cancellation? And isn't this Petitioner the one most likely to bring such a petition?

Text Copyright John L. Welch 2011.

Court Rules That 1071(b) Civil Action For Review of TTAB Decision Was Timely Filed

2011-11-10T06:22:00.001-05:00

Registrant Tovaritch filed a civil action for review, under Section 1071(b)(1), of the Board's decision of March 24, 2011, cancelling a registration for the mark TOVARITCH for vodka. (TTABlogged here). The action was commenced (i.e. the complaint filed) on May 24, 2011, two months later. Petitioner/Defendant moved for dismissal, claiming that the action had to be filed within 60 days of the Board's decision, i.e., on or before May 23rd. Based on the statute and the Trademark Rules, the court denied the motion, holding that such an action is due two calendar months after the Board's decision. Tovaritch Spirits Int'l S.A. v. Luxco, Inc., Case No. 4:11CV950 JCH (October 20, 2011) [decision here].

Section 1071(b) says that the Commissioner may set the time for appeal, but not less than sixty days. Rule 2.145 says that the period is "two months." The rule goes on to say that "months" means "calendar months." The court found it "clear" that "the time a party has to contest a TTAB decision is two calendar months - not sixty days."

Luxco argued that the courts have consistently interpreted "two months" to mean "sixty days," but the court found Luxco's case support to be either inapposite or ambiguous.

TTABlog note: Things get more complicated if the two month period incorporates February 28th.

Text Copyright John L. Welch 2011.

Precedential No. 29: TTAB Affirms Genericness Refusal of "Person2Person Payment" For Electronic Funds Transfers

2011-11-09T05:34:00.003-05:00

In view of the "excellent record" assembled by Examining Attorney Lakeisha S. Munn-Lewis, the Board affirmed a refusal to register the designation Person2Person Payment (in standard character form) [PAYMENT disclaimed], finding it to be generic for "electronic funds transfer via electronic communications networks; clearing and reconciling financial transactions via electronic communications networks; providing a wide variety of payment and financial services, namely, processing and transmission of bills and payments thereof." In re ING Direct Bancorp, 100 USPQ2d 1681 (TTAB 2011)[re-designated Precedential, September 27, 2011].

The Board agreed with Applicant that the genus of the services at issue is "direct electronic fund transfers." That genus includes electronic payment services between individuals. The relevant consumers would be "individual persons wanting to transfer funds electronically - often to other individuals or small businesses."

The Examining Attorney contended the phrase "person to person payments" is often used to mean (not surprisingly) payments from one person to another. She pointed to a number of third-party websites where the phrase is used to refer to electronic transfer of funds and payments.

Applicant ING feebly argued that most of those transfers still involve banks and that, technically, the money does not go from "person to person." The Board was (not unimpressed, because the evidence "clearly shows" that "person to person payments" is a well-established term of art in the financial payments industry, with "specific meaning identical to the usage that applicant intends."

The evidence also showed that, in the field of e-finance, "person to person" is shortened to "P2P." The evidence even included use of "person-2-person."

ING argued that the evidence did not contain a single use of the exact phrase "Person2Person Payment" and therefore fails to show that the phrase is a commonly-used term in the industry.

Perhaps applicant’s argument is that its “Person2Person Payment” designation is not precisely the same as “Person 2 Person Payment” (having spaces) or “Person-2-Person Payment” (having hyphens). We also do not find this particular argument persuasive. Applicant's deletion of spaces or hyphens within the designation “Person2Person” cannot transform clearly generic terms such as “Person 2 Person Payment” or “Person-2-Person Payment” into something that is capable of functioning as a source identifier.

In short, ING's slight change does not yield a term that will be understood by relevant purchasers as "anything other than naming a category of direct electronic funds transfers."

And so the Board found the designation "Person2Person Payment" to be generic for the recited services, and it affirmed the refusal to register on the Supplemental Register.

TTABlog comment: Yawn! This is precedential? Judge Bucher does once again display his admirable Photoshopping skills, and it's nice to see the evidence right there in the opinion, but ....

Text Copyright John L. Welch 2011.

CAFC Hears Oral Argument in Mag Instrument v. Brinkmann Appeal Re Functionality

2011-11-08T06:34:00.003-05:00

The CAFC heard oral argument [mp3 here] yesterday in Mag Instrument, Inc. v. The Brinkmann Corporation, Appeal No. 2011-1052. The TTAB decision is discussed in a TTABlog post here. Mag's appeal concerned the functionality of the two bands that encircle the the flashlight, which bands are used in re-charging the device. [Update: affirmed per curiam, November 9, 2011 under Federal Circuit Rule 36].

Brinkmann maintained that this configuration is functional because the rings are "necessary to charge the flashlight and the reason that the charging feature works." The Board agreed.

The Board reviewed an expired utility patent and concluded that "the features of [the proposed mark] are fundamentally covered by the expired patent," and that this patent "discloses the utilitarian advantages of the underlying mark, i.e., the two bands."

On appeal, Mag argued that the location of the bands and their contrasting color are not functional. It contended that the Board had over-emphasized the importance of, and had misread, the expired patent, because the patent does not claim or even disclose dual bands.

Brinkmann argued that the contrasting bands are functional because the metallic bands, used for charging the flashlight will by necessity be separated and surrounded by different material in order to insulate one band from the other. Brinkmann should not have to make the bands and the insulating material look the same in order to avoid Mag's purported trademark.

Mag countered that there is no record evidence that the contrasting color of the bands versus the flashlight body, or the location of the bands, is functional.

TTABlog comment: No one discussed the conceptual difference between de facto functionality and de jure functionality. Of course the bands are de facto functional - they perform a function. But do they have to be contrasting in color from the flashlight case? Do they have to be in the location where Mag put them? If not, then maybe the proposed mark is not de jure functional, and the Board should be reversed.

Text Copyright John L. Welch 2011.

TTABlog Celebrates Seventh Anniversary Today!

2011-11-08T06:07:00.003-05:00

The TTABlog is seven years old today. This is post number 2,099. It's been real. Thanks for reading!

Test Your TTAB Judge-Ability on These Two House Marks for Construction Services

2011-11-07T06:15:00.000-05:00

According to Long John Silver’s, the comparison of design marks comes down to a "subjective 'eye ball' reaction," so take a gander at the design marks below and let's see how well you do. Applicant Frangeli Consulting sought to register the mark shown below left, for architectural design, construction, and related services. Examining Attorney Linda E. Blohm refused registration under Section 2(d), finding the mark likely to cause confusion with the two marks on the right (one claiming the color red, the other with no color claim), registered for building and construction services. So what do you think? Would you bet the house on it? In re Frangeli Consulting, Inc., Serial No. 77684564 (October 17, 2011) [not precedential].

The Board found the respective services of the parties to be identical or closely related, and the channels of trade and classes of consumers overlapping. Of course, when the involved services are identical or closely related, the degree of similarity in the marks necessary to support a finding of likelihood of confusion declines.

As to the marks, side-by-side comparison is not the proper approach. The average consumer "normally retains a general rather than a specific impression of trademarks." "Here, consumers are likely to remember a white cross set against a dark background being situated inside a house; they are less likely to recall whether the cross is contained within a circle or not."

Applicant pointed to Red Carpet Corp. v. Johnstown American Enterprises Inc., 7 USPQ2d 1404 (TTAB 1988), where the Board dismissed an opposition to registration of the mark on the left in view of the registered mark on the right, for closely related real estate services.

This panel was not impressed. It observed that in Red Carpet, the overall commercial impressions of the two marks were substantially different, even though the designs were referred to as pentagonal “house designs.” There the Board found that the designs "are so different visually it is not even accurate to describe them as [having] ‘common elements.’ The suggestive connotation of the two different designs may be common, but this is quite different from concluding that they share a common design element."

Here, however, the marks "share common design elements, and these elements are the prominent features of both parties’ marks. Accordingly, the marks are similar in appearance and overall commercial impression."

Finally, Applicant urged that the consumers of the services are sophisticated and would exercise care in making their purchasing decisions. Once again, the Board shrugged off that argument: "Even sophisticated consumers may view the marks as variations on a theme intended to differentiate related services having a common source or sponsorship."

And so the Board affirmed the refusal.

TTABlog comment: Should this one be put in the "WYHA?" folder? Note that rookie judge Linda Kuczma apparently makes her first appearance on a TTAB panel, but we are still awaiting her first opinion.

Text Copyright John L. Welch 2011.

TTABlog Road Trip: Intellectual Property Law Association of Florida (IPLAF), November 10th

2011-11-04T12:04:00.000-04:00

The TTABlogger will be speaking before the Intellectual Property Law Association of Florida at its meeting on Thursday, November 10, 2011, in Miami. The subject? "Hot Topics at the TTAB." [More information here].

Looking forward to meeting my Florida fan(s?).

Precedential No. 28: TTAB Reverses Genericness Refusal of COUNTRY MUSIC ASSOCIATION for Country Music Association Services

2011-11-04T06:47:00.009-04:00

As George Strait would say, Write This Down! The 45th Annual CMA Awards will be presented on Wednesday night, November 9th, on ABC. Maybe they'll announce the CMA's victory in this TTAB case? CMA sought to register COUNTRY MUSIC ASSOCIATION and the logo mark shown below for “association services, namely, promoting country music, and promoting the interests of country music entertainers and the country music recording industry," asserting that the marks had acquired distinctiveness under Section 2(f). The Examining Attorney refused registration on alternative grounds: genericness, or mere descriptiveness and lack of secondary meaning. The Board reversed the refusals but required a disclaimer of the word ASSOCIATION. In re Country Music Association, Inc., 100 USPQ2d 1824 (TTAB 2011) [precedential].

Genericness: The Board began by defining the genus of services to be those identified in the applications. This was confirmed by Applicant's specimen of use, which referred to CMA as "a professional trade association, [with] membership ... available to those working in the Country Music industry." Everyone agreed that the relevant purchasing public "consists of the general public who listen to country music and those who are associated with the country music industry."

The question, then, was "whether the designation COUNTRY MUSIC ASSOCIATION is understood by the relevant purchasing public as primarily referring to association services which promote country music and the interests of professionals in the country music recording industry."

The Examining Attorney provided website evidence that 28 other associations use the phrase COUNTRY MUSIC ASSOCIATION preceded by a descriptive, geographical, or other term - e.g., Gay & Lesbian, Christian, Illinois - and he contended that, unlike in American Fertility, the phrase COUNTRY MUSIC ASSOCIATION is used generically. The Board pooh-poohed this evidence, finding it not clear enough, in part because the phrase appeared in initial caps in these names and because website data showed that these websites were "comparatively obscure" and had limited exposure.

CMA submitted two expert reports, but the first, which relied on dictionary definitions to conclude that because applicant's mark includes the term 'association,' it must be a brand name," was deemed to be flawed and its conclusion devoid of foundation. The second consisted of the same expert's review of various databanks, in which he found that in the LEXIS database, 99% of the usage of the phrase COUNTRY MUSIC ASSOCIATION was in initial caps. He pointed to many U.S. registrations which show, according to the Board, that "trademark owners view the term ASSOCIATION as part of their marks."

Perhaps most significantly, CMA submitted the results of a Teflon survey, in which "[a] significant number of surveyed respondents, 85%, answered that COUNTRY MUSIC ASSOCIATION is a brand name." The survey expert, Dr. Gerald L. Ford, concluded that the term 'country music association' is perceived by listeners of country western music as a proprietary or brand name, and not a generic term." Despite the Examining Attorney's rather feeble objections, the Board found the survey to be probative.

On balance, the Board found that the PTO had failed to meet its burden of proof by clear and convincing evidence. Moreover, any doubts must be resolved in Applicant's favor:

Both the results of Dr. Ford’s survey showing that a significant percentage of respondents who listen to country western music identify applicant’s mark as a brand name and Dr. Barnhart’s survey results showing that virtually all sampled written usages of the phrase COUNTRY MUSIC ASSOCIATION refer to applicant are sufficient to raise doubts regarding the genericness of applicant’s mark.

The Board did, however, find the word ASSOCIATION to be generic for the services, and it required a disclaimer of ASSOCIATION.

Acquired Distinctiveness: By seeking registration via Section 2(f), Applicant conceded that COUNTRY MUSIC ASSOCIATION is merely descriptive. However, the evidence convinced the Board that the mark had acquired distinctiveness. The mark has been in use since 1958 and 30 million viewers watch its annual awards show. Advertising expenditures, website traffic, and the survey results led the Board to find that CMA had satisfied Section 2(f). However, disclaimer of ASSOCIATION was again required.

And so the Board reversed both refusals to register with regard to both applications.

Text Copyright John L. Welch.

Test Your TTAB Judge-Ability on this Section 2(d) Refusal

2011-11-03T06:40:00.002-04:00

Applicant G&F Manufacturing sought to register the mark shown below for "swimming pool heat pumps" [SWIMMING POOL HEAT PUMPS disclaimed], but the application was refused under Section 2(d) in view of the registered mark GULFSTREAM for "whirlpool baths and related accessories," including pumps. Applicant submitted a summary of the results of a Google brand search, purportedly showing that "many organizations in Florida ... utilize 'gulfstream' in their names." How do you think this came out? In re G&F Manufacturing, Inc., Serial No. 77632210 (October 13, 2011) [not precedential].

The Board found the evidence of third-party use unpersuasive because the search results were truncated, there was insufficient context for evaluation of the evidence, and in any case most of the uses of GULFSTREAM were in connection with goods or services unrelated to the goods at issue here. In sum, the registered mark GULFSTREAM is entitled to more than a narrow scope of protection for Registrant's goods.

Not surprisingly, the Board found the word GULFSTREAM to be the dominant portion of Applicant's mark. The wave design reinforces the "the terms comprising gulfstream" and the additional wording is generic and lacks source-identifying significance. The Board concluded that the similarities between the two marks outweigh their differences.

As to the goods, both include pumps for aquatic use. Indeed, Registrant's goods are broadly identified to include "whirlpool bath pumps," which may include heat pumps for whirlpools. Moreover, Examining Attorney Sung submitted third-party registrations that include goods of the type found in both the application and the registration. The Board therefore found that the goods are related.

There were no restrictions as to channels of trade in either the application or registration, and so the Board must presume that they travel in all normal channels for those goods, to all normal classes of consumers.

Applicant contended that its goods are expensive and would be purchased with care, but even if true, the Board noted, purchasers are not immune from source confusion when "the similar nature of the marks and the relatedness of the goods outweigh any sophisticated purchasing decision."

Finally, Applicant claimed that the involved marks have co-existed for years without any actual confusion. However, such a claim carries little weight in an ex parte context, where the registrant has no opportunity to be heard on the subject.

Noting that any doubt raised by applicant must be resolved in favor of the prior registrant, the Board affirmed the refusal to register.

TTABlog note: I was tempted to make this a WYHA, but we just had one yesterday.

Text Copyright John L. Welch 2011.

WYHA? TTAB Finds SMARTRASTER Merely Descriptive of Oil and Gas Data Logging Services

2011-11-02T06:30:00.003-04:00

This applicant hit a dry well in its attempt to register the mark SMARTRASTER for various oil and gas well data services. The Board found the mark to be not just merely descriptive, but "highly descriptive," of the services, and so it affirmed the Section 2(e)(1) refusal. Applicant claimed acquired distinctiveness under Section 2(f), but its evidence fell "far short." In light of the record, Would You Have Appealed? In re A2D Technologies, Inc., Serial No. 77806767 (October 7, 2011) [not precedential].

Examining Attorney John S. Yard relied on dictionary definitions of "smart" and "raster" and evidence that the terms "smart raster" and "smart raster technology" are used in the field of geology and oil and gas exploration. "The evidence submitted by the examining attorney shows that 'smart raster' is the term used for the display of 'calibrated' or enhanced well log data or well log images, or the technology to produce such images." Not surprisingly, the Board found that the deletion of the space between the two words has no effect on the meaning of term.

The Board concluded that SMARTRASTER is "highly descriptive" of Applicant's services because it "immediately tells consumers that a major characteristic of its imaging of the date in its [services] uses smart raster technology. That is, the mark describes the fact that applicant's SMARTRASTER services add more information and functionality to conventional well log raster images."

As to acquired distinctiveness, Applicant had a "heavy burden" in light of the highly descriptive nature of the mark. It claimed use of the mark since 1995 and provided statistics and other information regarding the mark, but the Board was not impressed. Applicant did not submit its advertising figures or information as to the number of customers. There were "gaps" in its evidence regarding website hits and distribution of flyers. The Board concluded that the evidence fell "far short" of satisfying Section 2(f).

And so the Board affirmed the refusal.

TTABlog note: Applicant tried to argue that its mark was inherently distinctive (now there's a stretch!), but the Board refused to hear the argument because Applicant, by claiming acquired distinctiveness, had waived that argument.

Text Copyright John L. Welch 2011.

TTABlog Job Posting: Experienced IP Attorney Seeks Position in Massachusetts/Rhode Island

2011-11-01T09:22:00.003-04:00

Mid-level attorney (2006 graduate) with large firm experience seeking a position in Massachusetts or Rhode Island. Experience is focused on all aspects of trademark law (clearance/prosecution/enforcement/transactional), with additional experience in copyright counseling/registration and support of patent prosecution/transactions. Representative industries of experience include banking/financial services, food products, computer hardware/software and medical/pharma research.

May be interested in junior-level positions or positions in New York, if the opportunity is a good fit. Licensed in Massachusetts, and eligible for reciprocity in NY in early 2012. Please send inquiries to John Welch (jwelch at lalaw.com) to arrange for an introduction.

TTAB Posts November 2011 Hearing Schedule

2011-11-01T06:00:00.001-04:00

The Trademark Trial and Appeal Board has scheduled six (6) oral hearings for the month of November, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]. Briefs and other papers for these cases may be found at TTABVUE via the links provided.

November 3, 2011 - 11 AM: In re Cold Spring Granite Company, Serial No. 77888783 [Section 2(d) refusal of SIERRA WHITE for "granite, cut stone, dimensional stone, slabs of granite, and monumental stone," in view of the registered mark SIERRA STONE for "cast stone"].

November 8, 2011 - 2 PM: In re Quicksilver, Inc., Serial No. 77734610 [Section 2(e)(1) mere descriptiveness refusal of SURF COUTURE for a variety of optical goods, clothing and clothing accessories].

November 15, 2011 - 2 PM: Stoncor Group, Inc. v. Specialty Coatings, Inc., Opposition No. 91187787 [Opposition to ARMORSTONE for "clear and pigmented coatings used in the nature of paint; Glazes; House paint; Interior paint; Mixed paints; Paint for concrete floors; Paint primers; Paint sealers; Paint thinner; Paints; Paints and lacquers; Pavement striping paint; Epoxy coating for use on concrete industrial floors," on the grounds of mere descriptiveness and likelihood of confusion with various registered marks containing the prefix STON- for goods that include epoxy hardeners].

November 16, 2011 - 2 PM: In re University of Georgia Research Foundation, Inc., Serial No. 77781694 [Section 2(d) refusal of TIF for "turfgrass" in view of the registered mark TIFBLAIR THE CERTIFIED CENTIPEDE & design for "grass seed" [CERTIFIED CENTIPEDE disclaimed].

November 17, 2011 - 2 PM: In re The Advice Company, Serial No. 77005059 [Section 2(e)(1) mere descriptiveness refusal of ATTORNEYPAGES for "Providing an on-line searchable commercial information directory on the Internet featuring information regarding lawyers and legal service providers and business information in the field of lawyers and legal service providers," and Section 2(d) refusal in light of the registered mark ATTORNEYYELLOWPAGES.COM for "on-line business directories featuring attorneys"].

November 22, 2011 - 2 PM: American Computer Associates, Inc. v. Model American Computer Corporation, Cancellation No. 92023939 [Petition for cancellation (filed in 1995) of a registration for the mark MODEL AMERICAN for "computer hardware, namely processor, keyboard, monitor and memory unit and computer utility programs," on the ground of abandonment].

Text Copyright John L. Welch 2011.