Friday, April 26, 2019

Meet The Bloggers XV: Kings Bowl, Monday, May 20, 8-10 PM

MEET THE BLOGGERS, widely recognized as the best non-INTA event ever devised, will be convened for the fifteenth time (thus "MTB XV") on Monday, May 20th, 8:00 - 10:00 PM, at Kings Dining and Entertainment (a/k/a KINGS BOWL), 60 Seaport Boulevard (a few blocks from the Convention Center). Come and meet some of the best trademark attorneys in the world, and while you're at it say hello to the eight bloggers hosting this year's event. For details, directions, and the RSVP link, go HERE.

A special thanks to our premier sponsor, Wolf Greenfield, for supporting this event.


POWER TECHON Confusable with POWER TECH for Extension Cords, Says TTAB in ACR Proceeding

In what may be the first opinion written by recently appointed Judge Jonathan Hudis, the Board sustained an opposition to register the mark POWER TECHON for, inter alia, electrical power extension cords, finding a likelihood of confusion with the registered mark POWER TECH for "Electric extension cords for use with portable electric hand tools, and sold through retail outlets including hardware, plumbing, electrical, and farm supply stores." Applicant argued, without success, that the mark POWER TECH is so inherently weak that it should not preclude registration of the applied-for mark. Gehr Industries, Inc. v. Ming’s Mark Inc., Opposition No. 91238658 (April 25, 2019) [not precedential] (Opinion by Judge Jonathan Hudis).

Of course, since the goods are identical (in part), a lesser degree of similarity between the marks is needed to support a finding of likely confusion. Also, these identical goods are presumed to travel i the same channels of trade. Applicant had filed a motion to amend its identification of goods to "power inverters," but the Board found that even if it granted the motion, confusion would still be likely, since the evidence showed that extension cords and power inverters may be used together, and thus are complementary and related goods.

Opposer's POWER TECH mark is presumed to be valid and distinctive, under Section 7(b) of the Lanham Act. Moreover, opposer submitted evidence of marketplace strength, while applicant's list of registered marks containing the words POWER or TECH in class 9 was of no probative value. Nonetheless,  the Board recognized that the POWER TECH mark "is on the weaker end of the spectrum conceptually, " but even weak are "still entitled to protection under Section 2(d) of the Trademark Act against the registration by a subsequent user of a similar mark for goods that are legally identical in-part and otherwise related, as is the case here."

Comparing the marks, the Board found that the similarities strongly weighed in opposer's favor.

Because the parties’ marks differ only in their last two letters, they would likely be pronounced similarly. Even with the addition of the letters “… ON” at the end of the word “TECH …” the commercial impression of “TECH” still comes through. Overall, the marks still look and sound similar and suggest that the goods have “TECH” features. 

Finally, applicant pointed to a consent agreement entered into by Opposer Gehr in 2007, involving the identical marks POWER TECH. But the Board found that agreement irrelevant, noting that applicant had reached no such agreement. "Thus, no presumption can be made that Gehr would consent to the use or registration of marks similar to POWER TECH in connection with goods identical or complimentary to the goods recited in Ming’s ‘824 Application. Obviously, by virtue of this proceeding, any such presumption would be incorrect."

And so the Board sustained the opposition.

Read comments and post your comment here.

TTABlog comment: This cases was submitted via ACR on February 21, 2019.

Text Copyright John L. Welch 2019.

Thursday, April 25, 2019

TTABlog Test: Is ACTTRA Confusable with ACTARA for Agricultural Insecticides?

The USPTO refused registration of the mark ACTTRA, finding it likely to cause confusion with the registered mark ACTARA, both for agricultural insecticides. Applicant argues that its mark "is a two syllable word pronounced as 'ACK-tra'"whereas the cited mark "is a three syllable word
pronounced as 'ac-TAR-a.'" How do you think this appeal came out? In re ISCA Technologies, Inc., Serial No. 87321402 (April 24, 2019) [not precedential] (Opinion by Judge Thomas Shaw).

The Board took only six pages to affirm the refusal. Since the goods are identical, a lesser degree of similarity between the marks is needed to support a Section 2(d) refusal. The Board was not persuaded by applicant's argument.

It is well settled that there is no correct pronunciation of a mark. Viterra, 101 USPQ2d at 1912. For example, Registrant’s mark also could be pronounced “ACT-a-ra” which sounds very similar to the purported pronunciation of Applicant’s mark, “ACK-tra.” Given the slight differences in the possible pronunciation of the last syllable or syllables of the marks, consumers who hear the marks spoken by others might not notice, or could easily forget, the difference. See Viterra, 101 USPQ2d at 1912; In re Energy Telecomms. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983) (“Slight differences in the sound of similar marks do not avoid a likelihood of confusion.”).

The Board found the marks similar in appearance (both begin with ACT), sound, connotation (neither mark had any), and overall commercial impression.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: I would put this in the WYHA category, wouldn't you?

Text Copyright John L. Welch 2019.

Wednesday, April 24, 2019

HERE FOR THE GIRLS Confusable with FOR THE GIRLS for Cancer-related Services, Says TTAB

The Board affirmed a refusal to register HERE FOR THE GIRLS for "Charitable services, namely, providing emotional support services for improvement of young womens [sic] lives affected by Breast Cancer by means of in-person and online support," finding a likelihood of confusion with the registered mark FOR THE GIRLS for "Promoting public awareness of breast cancer over the Internet." There was no doubt about the similarity of the marks, and third-party confirmed the relatedness of the services. In addition, applicant's specimen of use failed to associate the mark with the services. In re Here for the Girls, Inc. dba Beyond Boobs!, Pink-Link and Pink Lin, Serial No. 87345046 (April 23, 2019) [not precedential] (Opinion by Judge Thomas Shaw).

The Board observed that both applicant and registrant are providing services related to combating breast cancer. Examining Attorney Sandra Snabb submitted seven (7) third-party registrations establishing that cancer-survivor support services and cancer-awareness promotion services are commonly provided by the same entity under the same mark. The Board therefore found that "[t]he respective services are commonly offered under the same mark by the same entity to the same consumers, namely, patients, family members, and caregivers." And so it affirmed the Section 2(d) refusal.

Applicant described its specimen of use [here] as "the support webpage showing a white box in the center of the page displaying the words ‘Here for the Girls.'"

The mark HERE FOR THE GIRLS appears in the URL of the web page and in a white box in the middle of the page. The page includes a tab at the top of the page with the word “DONATE” in a pink box. However, there is no mention of any services Applicant is providing. That is, prospective consumers may donate, but they will have no idea to whom they are donating or why. Absent any references to Applicant’s charitable services, the mark HERE FOR THE GIRLS is not associated with the services. See, e.g., In re Keep A Breast Found., 123 USPQ2d 1869, 1876-1879 (TTAB 2017). As such, applicant’s specimen fails to show use of Applicant’s mark in commerce in connection with the identified services.

And so the Board also affirmed the refusal based on applicant's inadequate specimen of use.

Read comments and post your comment here.

TTABlog comment: Is this a WYHA?

Text Copyright John L. Welch 2019.

Tuesday, April 23, 2019

TTAB Dismisses DENTISTRY DONE DIFFERENTLY Opposition: Failure to Prove Priority

The Board dismissed this opposition to registration of DENTISTRY DONE DIFFERENTLY for "dentist services" because Opposer Timber Dental failed to prove priority. Opposer claimed common law rights in the same phrase, but its proofs showed prior use of a different mark. Timber Dental LLC v. Tooth, LLC, Opposition No. 91234587 (April 12, 2019) [not precedential] (Opinion by Judge Lorelei Ritchie).

In order to establish prior trademark rights, an opposer must show that its alleged mark is distinctive, inherently or otherwise. There was no allegation or evidence that DENTISTRY DONE DIFFERENTLY is not distinctive of  “dental services,” and so the Board found that "that while the mark is suggestive, on this record it appears to be inherently distinctive."

Applicant Tooth provided no evidence of use of the applied-for mark prior to its filing date of November 28, 2016, and so that was the earliest date on which it could rely. Opposer Timber's owner testified that opposer has used its alleged mark since 2014. However, the exhibits to his testimony showed use of the word-plus-design mark shown above, as well as the phrase FAMILY DENTISTRY DONE DIFFERENTLY, and not the phrase DENTISTRY DONE DIFFERENTLY alone.

This evidence does not establish use of the mark that Opposer pleads in its notice and argues on brief, DENTISTRY DONE DIFFERENTLY. Rather, . . . Opposer's mark includes at least the word "FAMILY" in the literal element of its mark, and most uses include TIMBER DENTAL FAMILY DENTISTRY DONE DIFFERENTLY (and design).
* * *

As noted, the entire literal element contained in Opposer’s mark is TIMBER DENTAL FAMILY DENTISTRY DONE DIFFERENTLY or FAMILY DENTISTRY DONE DIFFERENTLY. This is not the same as the mark pleaded, and sought to be proven on  brief, by Opposer. The mark pleaded by Opposer is simply DENTISTRY DONE DIFFERENTLY, which is a different mark.

The CAFC addressed the issue of what constitutes the "same mark" in In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001):

A proposed mark is the "same mark" as previously-registered marks for the purpose of Trademark Rule 2.41(b) if it is the "legal equivalent" of such marks. A mark is the legal equivalent of another if it creates the same, continuing commercial impression such that the consumer would consider them both the same mark. Whether marks are legal equivalents is a question of law subject to our de novo review. No evidence need be entertained other than the visual or aural appearance of the marks themselves. Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 1159, 17 USPQ2d 1866, 1868 (Fed. Cir. 1991). (emphasis added)

The Board found that the phrases actually used by Opposer Timber - which refer more specifically to "family dentistry" - do not engender the same commercial impression as the phrase DENTISTRY DONE DIFFERENTLY.

Opposer did not plead or otherwise assert prior rights to any mark other than DENTISTRY DONE DIFFERENTLY. "Given that this is not the mark for which Opposer has established use, Opposer has failed to prove its priority."

And so the Board dismissed the opposition.

Read comments and post your comment here.

TTABlog comment: Gee whiz! Why didn't opposer just rely on FAMILY DENTISTRY DONE DIFFERENTLY?

Text Copyright John L. Welch 2019.

Monday, April 22, 2019

Latest Roster of TTAB Interlocutory Attorneys

With the recent ascendance of Elizabeth A. Dunn and Christen M. English to TTAB judgeships, the departure of Benjamin U. Okeke, and the appointment of five new attorneys last fall, the roster of TTAB interlocutory attorneys now stands at sixteen (16). Thew new appointees are attorneys Stempien Coyle, Folmar, McCormack, Sanders, and Stanley.

  • Andrew P. Baxley
  • Wendy Cohen
  • Rebecca J. Stempien Coyle
  • Mary Catherine Faint
  • Winston T. Folmar
  • Yong Oh (Richard) Kim
  • Jennifer Krisp
  • Jill M. McCormack
  • Katie W. McKnight
  • Geoffrey McNutt
  • Mary B. Myles
  • Shanna K. Sanders
  • Lawrence (Larry) T. Stanley
  • Ann Linnehan Vogler
  • Michael Webster
  • Elizabeth Winter

* * * * * * * *

As an attorney for a particular case or legal issue, the interlocutory attorney is responsible for promoting the efficient disposition of litigation before the TTAB. Specifically, she or he:
  • Analyzes the legal issue in question, develops the strategy to deal with the legal issue, and determines the content and means of delivery of the completed analysis of the legal issue.
  • Handles interlocutory matters in oppositions, cancellations and concurrent use cases at the TTAB, including mentoring and coaching others, and is recognized as an expert in the procedural and substantive aspects of the law.
  • Independently decides and issues orders on all procedural and substantive motions that are not potentially dispositive of the proceeding, such as motions to amend pleadings, motions to compel and motions to strike evidence.
  • Consults with and drafts decisions for Administrative Trademark Judges on all procedural and substantive motions that are potentially dispositive of the proceeding, such as motions to dismiss, motions for judgment on the pleadings, and motions for summary judgment.
  • Deals with Administrative Trademark Judges and the top management of the TTAB, as well as the top management and/or attorneys of other private and public organizations.

Read comments and post your comment here.

TTABlog comment: Thoughts?

Text Copyright John L. Welch 2019.

Friday, April 19, 2019

SDNY Dismisses DJ Action: No Case or Controversy from Notice of Opposition

The U.S. District Court for the Southern District of New York dismissed this declaratory judgment action because the court lacked subject matter jurisdiction to hear the lawsuit. Plaintiff Halo Lifestyle sought a ruling that its HALO SPORT mark did not infringe on defendant's HALO FARMS marks, claiming that defendant's actions, including the filing of notices of opposition, suggested that defendant will bring a legal action for trademark infringement, and therefore that a case or controversy existed as to the issue of infringement. Not so, said the court. Halo Lifestyle LLC v. Halo Farm, Inc., 18 Civ. 9459 (S.D.N.Y. April 16, 2019).

Defendant Halo Farms asserted that it has not "sought or threatened to sue Lifestyle for use of the HALO SPORTS mark or any other Lifestyle Marks." Plaintiff Lifestyle pointed to the allegations in the notices of opposition claiming that registration and use of plaintiff's marks could cause consumer confusion. Lifestyle also claimed that Halo Farms had made oral threats and that it has sued other companies.

The court, however, found no actual case or controversy under the Declaratory Judgment Act. Second Circuit law is well settled that the filing of an opposition "is not by itself a charge or warning of a future charge of infringement."

Accordingly, absent any allegation that Halo Farm has done more - to wit, that it has threatened Halo Lifestyle with litigation, sent a cease-and-desist letter to Halo Lifestyle, or taken or made statements of a similar character - Halo Lifestyle's claim of a justiciable controversy would fall short.

Plaintiff Lifestyle did not make any such allegations. There was no explicit oral threat of an infringement action, nor any such written communications.

Defendant Halo Farm's allegations in the notices of opposition were not tantamount to a threat of litigation. As indicated, the case law is clear that a notice of opposition alone is not a basis for declaratory judgment jurisdiction.

Concluding that it lacked subject matter jurisdiction to adjudicate the matter, the Board granted Halo Farm's motion to dismiss.

Read comments and post your comment here.

TTABlog comment: I count at least ten oppositions.

Text Copyright John L. Welch 2019.

Thursday, April 18, 2019

Right of Publicity: Columbia Journal of Law & the Arts

In the current issue (here) of the Columbia Journal of Law & the Arts (Volume 42, No. 3 (2019)), a cavalcade of professors and attorneys discuss the right of publicity from most every angle one can imagine. Enjoy!

  • Jennifer E. Rothman, The Right of Publicity’s Intellectual Property Turn 
  • Stacey Dogan, Stirring the Pot: A Response to Rothman’s Right of Publicity
  • Mark Roesler, Term, Breadth, and Waivability
  • Jeremy Sheff, Scope and Justification of the Right of Publicity
  • Mark P. McKenna, Remarks on the Right of Publicity: Theory and Scope
  • Ben Sheffner, Why Movie Studios Care About Right of Publicity
  • Sarah “Alex” Howes, Digital Replicas, Performers’ Livelihoods, and Sex Scenes: Likeness Rights for the 21st Century
  • Jessica Silbey, Control over Contemporary Photography: A Tangle of Copyright, Right of Publicity, and the First Amendment
  • David G. Post, Territoriality, Jurisdiction, and the Right(s) of Publicity
  • Frederick J. Sperling, Protecting the Rights of Publicity of Michael Jordan, Pele, and Muhammad Ali
  • Danielle Keats Citron, The Roots of Sexual Privacy: Warren and Brandeis & the Privacy of Intimate Life
  • Barton Beebe, What Trademark Law Is Learning from the Right of Publicity
  • Mitchell M. Gans, Publicity Rights and the Estate Tax

Read comments and post your comment here.

Text Copyright John L. Welch 2019.

Wednesday, April 17, 2019

TTAB Dismisses Opposition: Opposer Failed to Respond to 12(b)(6) Motion to Dismiss

The CAFC issued a per curiam affirmance under Fed. Cir. R. 36, upholding the TTAB's ruling dismissing an opposition because the opposer failed to respond to a Fed. R. Civ. P. 12(b)(6) motion to dismiss. Opposer NetxGen mistakenly believed that the Board would determine the motion on the merits even without a response, rather than consider the motion conceded. NextGen Biologics, Inc. v. Axolotl Biologix, Opposition No. 91236432 (March 29, 2019), affirmed per curiam, Appeal No. 2018-2016 (Fed. Cir. April 15, 2019).

Trademark Rule 2.127(a) states: "When a party fails to file a brief in response to a motion, the Board may treat the motion as conceded." After the Board dismissed the opposition with prejudice, opposer requested reconsideration.

Opposer essentially argued that it believed the Board would decide the motion to dismiss on the merits, whether or not a response was filed, and further that the Board was obligated to invite opposer to submit an amended notice of opposition. Opposer cited no authority in support of that proposition. The Board was unmoved:

More pointedly addressing Opposer’s mistaken belief, the Board expects attorneys to be cognizant of their duties as officers of the court and to file proper and timely responses to motions; attorneys may not rely upon the Board to act as a surrogate advocate. See The General Tire & Rubber Co. v. The Gendelman Rigging & Trucking Inc., 189 USPQ 425, 427 (TTAB 1976).

The Board pointed out that opposer could have filed an opposition to the motion, or an amended notice of opposition within 21 days after service of the motion to dismiss (FRCP 15(a)(1)(B), or both. When opposer did neither, the Board followed its ordinary practice and stated authorities in granting applicant's motion as conceded.

Since opposer did not point to any error by the Board, the request for reconsideration was denied.

Read comments and post your comment here.

TTABlog comment: Lesson: read the Rules.

Text Copyright John L. Welch 2019.

Tuesday, April 16, 2019

New Deputy Chief Judge Joins TTAB

Chief Judge Rogers has announced the appointment of Mark A. Thurmon as the new Deputy Chief Administrative Trademark Judge for the TTAB. The new Deputy will join the Board on May 28, 2019.

Mark A. Thurmon has more than 25 years of experience as an attorney in private practice, as in-house counsel, and as a professor of law. Mr. Thurmon’s primary focus in his ten years of private practice and his sixteen years as a law professor has been the field of trademarks and trademark litigation.

The private practice positions held by Mr. Thurmon include Associate in the Intellectual Property section of Arnold, White and Durkee, an Of Counsel position with the firm of Fulbright and Jaworski, and an Of Counsel position with Roy, Kiesel, Ford, Doody & Thurmon, APLC. Mr. Thurmon’s in-house position as IP counsel was with W-H Energy Services, Inc. He has also provided pro bono legal services to the Baton Rouge North Economic Development District. In addition to his work experience involving intellectual property matters, Mr. Thurmon gained valuable experience as a manager during his five years of service as a Naval Officer. For his service, the Navy awarded Mr. Thurmon the Navy Achievement Medal and the Humanitarian Service Medal.

Teaching experience includes work as an Adjunct Professor of Law for the University of Texas School of Law; as an Assistant Professor of Law for the Levin College of Law at the University of Florida; and his current position as Professor of Law at the Southern University Law Center. At Southern University, he also serves as Director of the Technology & Entrepreneurship Clinic, and previously chaired the Curriculum Committee.

Mr. Thurmon has served on various committees of the American Intellectual Property Law Association (AIPLA), including the Amicus Committee and the AIPLA Quarterly Journal Editorial Board, both of which attest to his skill as a writer and editor. Mr. Thurmon is an accomplished public speaker and will be able to handle many outreach activities for the TTAB involving USPTO Regional Offices and IP stakeholders. Topics of his written work include federal trademark remedies, IP issues for Small Businesses, IP issues for Food Entrepreneurs, Practical Solutions to Internet Trademark Problems, and substantive topics such as Functionality. Mr. Thurmon has also presented Congressional testimony on procedural issues raised by international Internet trademark disputes.

Mr. Thurmon is a graduate of Louisiana State University, with a bachelor’s degree in electrical engineering, and earned his law degree from the Duke University School of Law, with high honors.

Monday, April 15, 2019

Precedential No. 8: TTAB Rejects Designation of Documents and Responses as "Attorneys' Eyes Only"

In a precedential ruling, the Board considered Petitioner USPA's motion challenging Respondent McLane's confidentiality designations applied to certain documents and interrogatory responses pursuant to the Board's Standard Protective Order. The Board granted petitioner's motion in large part, requiring re-designation of the responses and some of the documents. United States Polo Association v. David McLane Enterprises, Inc., Cancellation No. 92066233 (March 25, 2019) [precedential] (Opinion by M. Catherine Faint, Interlocutory Attorney).

David McLane and Leroy Neiman with his Triple Crown of Polo mural

The Board’s Standard Protective Order ("SPO") provides for two tiers of protected information: (1) Confidential and (2) Confidential – For Attorneys’ Eyes Only (trade secret/commercially sensitive) (hereafter “AEO”). The Board cited TBMP Section 412.01 [although the TBMP is not the law - ed.] for an explanation of the applicability of those two terms. The SPO (at paragraph 1) itself describes generally the types of information that may qualify as AEO. Of course, the designations dictate the level of protection accorded: i.e., who may have access to the information and materials. Essentially, parties, including inside counsel, have access to "Confidential" information but not AEO information. In either case, the information is shielded from public view by the Board.

Respondent bore the burden of demonstrating the appropriateness of its confidentiality designations. See SPO para. 14. Because the parties were unable to agree on a modification of the SPO (respondent wanted to restrict access to "Confidential" information to a single in-house attorney), the Board was required to decide which of the two "default designations" applied to the documents and information in dispute.

Interrogatory responses: The Board reviewed three of Respondent McLane's interrogatory responses, which concerned the identification of agreements, gross sales figures under the mark at issue, and the identity of persons who communicated with McLane regarding use of the mark. McLane had designated its responses AEO, asserting that Petitioner USPA, a direct competitor, would gain an advantage in future business deals if armed with this information.

The Board, however, observed that the SPO states that information protected under the order may be used only in connection with the Board proceeding, and each party is obligated to maintain the confidentiality of the information and must exercise reasonable care in that regard. McLane failed to show that disclosure of the information to Petitioner USPA would cause any injury, "let alone a clearly defined, serious injury," to McLane's business. Nor did McLane produce "any evidence" supporting its fear that USPA would violate the protective order by misusing the information provided.

The Board did allow the "Confidential" designation for these responses, since gross sales figures are "routinely" treated as confidential in Board proceedings and since individual third parties named in the responses presumably expected their identities to remain private.

Documents: The documents at issue, designated AEO by Respondent McLane, fell into the following six categories:

(1) agreements with ESPN. These documents were more than 10 years old, and therefore "stale." The Board allowed them to be labeled "Confidential." Documents reflecting negotiations qualified as AEO.

(2) financing and operating agreements. Although more than ten years old, these documents disclosed the shares of each of respondent's members, and therefore are appropriately designated AEO.

 (3) sponsorship opportunities. All except one of these documents were appropriately designated AEO, since they disclose respondent's marketing strategies. A single document, indicating what respondent would charge sponsors in 2008, must be re-designated as "Confidential." 

(4) daily planner entries and notes. Respondent failed to address these documents, but the Board allowed them to be designated as "Confidential," since they include third-party personal information.

(5) respondent's plans in 2017. Again, respondent failed to address these documents. Two appeared to be publicly available announcements meriting no protection under the SPO. The remaining document included email correspondence and proposed business terms and merited the "Confidential" designation.

(6) invoices. Respondent again failed to address these documents. The invoices related to charges for hosting and domain registration services and, because they contain information regarding the cost of maintaining respondent's website, they may be designated "Confidential."

The Board ordered proceedings to resume in accordance with a new scheduling order.

Read comments and post your comment here.

TTABlog comment: Why does the Board suspend proceedings except for the deadline for serving expert disclosures?

Well, this precedential ruling may put a damper on what appears to be a common practice of designating most everything as AEO. What the Board needs to do is look more closely at the issue of relevance. For example, why are ten-year old licensing agreements relevant to whether consumers would be confused today?

Text Copyright John L. Welch 2019.