Monday, November 11, 2019

WYHA? TTAB Affirms Refusal of PREVENTION CHAIN for Swine Disease Prevention Services: Specimens Failed to Show Use as a Mark

The Board affirmed a refusal to register the purported mark PREVENTION CHAIN for educational and informational services concerning "the treatment and management of infections in swine and other animals," finding that Applicant Boehringer's specimens failed to show use of the term as a source indicator for the services. "At best, the mark identifies a process or concept of swine disease prevention." Would You Have Appealed? In re Boehringer Ingelheim Vetmedica, Inc., Serial No. 87072333 (November 6, 2019) [not precedential] (Opinion by Judge David Mermelstein).


During examination, the USPTO must analyze the specimens of use to determine whether the purported mark would be perceived as a source indicator. A term that is used only to designate a process or method is not a trademark for services.

Applicant Boehringer's two specimens were website pages. The first consisted of the beginning of an article entitled, "Prevention Chain™ Approach for Systematic Disease Control in Large Farms," which discussed the "Infection/Prevention Chain Concept" and "Infection and Prevention Chain™ thinking." The second specimen was a chart showing steps in the "Production Chain," the "Infection Chain," and the "Prevention Chain." [excerpt below].


The Board agreed with Examining Attorney Tejbir Singh that "the proposed mark PREVENTION CHAIN identifies only a concept of disease prevention among swine."

The first specimen variously identifies PREVENTION CHAIN as an “approach,” a “concept,” and a manner of “thinking” about disease prevention. Nowhere, however, is PREVENTION CHAIN used to identify either educational services or providing veterinary information. Likewise, the second specimen uses PREVENTION CHAIN as the title of a process of swine disease prevention, but not in connection with any of the identified services. While Applicant’s specimens might themselves be characterized as educational or informational materials, they do not evidence use of PREVENTION CHAIN to advertise or sell the educational or informational services identified in the application. It is not enough that the proposed mark merely appear on educational or informational materials. The mark must identify those services and indicate their source.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Trademarks 101: just because you coin a term and put it on your website or in an article doesn't mean it's a source indicator.  If it were your money, would you have appealed this one?

Text Copyright John L. Welch 2019.

Friday, November 08, 2019

TTABlog Celebrates 15th Anniversary!

The TTABlog debuted on November 8, 2004, with a blog post entitled "Leo Stoller Loses Again." (here). Remember him? Here we are, some 4,300 blog posts and more than 12,000 tweets later.  Thank you readers! 



Read comments and post your comment here.

Text Copyright John L. Welch 2019.

TTABlog Test: Are ACCELETERM and LINCOLN TERMACCEL Confusable for Life Insurance Services?

Lincoln National Life opposed an application to register ACCELETERM for "insurance services, namely, underwriting, issuance, and administration of life insurance policies, claiming a likelihood of confusion with its registered mark LINCOLN TERMACCEL for essentially the same services. So it boiled down to the issue of the similarity of the marks. How do you think this came out? The Lincoln National Life Insurance Company v. Kansas City Life Insurance Company, Opposition No. 91236982 (November 6, 2019) [not precedential] (Opinion by Judge Lorelei Ritchie).


As we know, when the involved services are identical, a lesser degree of similarity between the marks is needed to support a finding of likelihood of confusion. The parties agreed that the term LINCOLN, opposer's house mark, is arbitrary, but they disagreed "on the effect of this element on Opposer's mark as a whole."

Lincoln provided evidence regarding its revenues and advertising expenditures. There was no evidence of third-party use of marks containing "TERM" and "ACCEL," but the Board found the evidence insufficient to allow a finding as to commercial strength of Lincoln's mark, and so the Board considered this factor neutral.

As to conceptual strength, both parties agreed that "TERM" may refer to "term life insurance," but they disagreed on the meaning of "ACCEL" in the life insurance field. However, there was evidence of life insurance policies referring to provisions that may "Accelerate" their "Term." such as "Accelerated Death Benefit for Chronic Condition." And so the Board found that LINCOLN TERMACCEL is "suggestive of life insurance policies that may include term acceleration provisions." Nevertheless, Lincoln's mark is inherently distinctive and entitled to a normal scope of protection.

Opposer Lincoln argued that Applicant Kansas City merely transpose the elements "TERM" and "EXCEL" and omitted the house mark. [That begs the question, doesn't it? ed.]. Kansas City argued that LINCOLN is the dominant portion of opposer's mark.

The Board concluded that the order of the words "TERM" and "ACCEL" does not affect the meaning of the combined term: the suggestion of an acceleration provision on the term of a policy. "In this regard, Applicant's ACCELETERM gives a very similar commercial impression to Opposer's LINCOLN TERMACCEL, as applied to life insurance services."

Board precedent dictates that the addition of a house mark (LINCOLN) does not necessarily avoid a likelihood of confusion. Instead, the Board found that "consumers are likely to perceive Applicant's mark as a variant on LINCOLN TERMACCEL."

The Board concluded that the similarities in connotation and commercial impression outweigh the differences in sight and sound. And so the first du Pont favored Lincoln.

Kansas City contended that purchasers of life insurance will exercise care in buying insurance policies that are a "fairly substantial investment." The Board agreed that, in light of the cost and long-term commitment involved, consumers are likely to exercise "a somewhat heightened level of care," and it found that this fourth du Pont factor weighed "somewhat against a finding of likelihood of confusion."

Balancing the relevant factors, the Board concluded that the purchaser care factor was outweighed by the use of similar marks on identical services, and so the Board sustained the opposition.

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2019.

Thursday, November 07, 2019

WYHA? "DIRTY LAUNDRY" for Clothing Confusable With "DIRTY LAUNDRY" for Footwear, Says TTAB

The Board affirmed a Section 2(d) refusal to register the mark DIRTY LAUNDRY for "Hooded sweatshirts; Jackets; Jeans; Pants; Shirts; Shorts; T-shirts," finding a likelihood of confusion with the identical mark registered for "footwear." Not surprisingly, third-party registrations and Internet evidence established that the goods are related.  Would you have appealed? In re Telecom (CHINA) Ltd., Serial No. 87440925 (November 6, 2019) [not precedential] (Opinion by Judge Cheryl S. Goodman).


Because the marks are identical, "[a]pplicant's goods need not be closely related to Registrant's goods in order for there to be a likelihood of confusion." There need be only a "viable relationship" been the involved goods.

Examining Attorney Kevin G. Crennan submitted fourteen third-party registrations covering footwear and at least two of the clothing items in applicant's identification of goods. Internet website evidence showed that clothing and footwear are sold together under the same mark: for example, nautica.com and timberland.com. The Board therefore found that the involved goods are "sufficiently related."

Applicant argued that DIRTY LAUNDRY is weak and entitled to a narrow scope of protection, pointing to a recently-cancelled registration for DIRTY LAUNDRY for "luggage," which registration was co-existing with the cited registration for "footwear." Since footwear and luggage are as closely related as footwear and clothing, applicant asserted, its mark should be allowed to co-exist as well.

The Board pointed out once again, however, that "decisions on prior applications do not dictate a particular result." The Board must decide each case on its own record. Moreover, there was no evidence that the registered marks are even in use, and therefore applicant failed to establish either that DIRTY LAUNDRY has any well-established meaning that would render the cited mark weak, or that the mark is "in use in commerce on a commercial scale or that the public has become familiar with it." Moreover, the fact that two registrations co-existed on the register, one for footwear and one for luggage, does not prove that there was no confusion in the marketplace.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Well, Would You Have Appealed?

Text Copyright John L. Welch 2019.

Wednesday, November 06, 2019

TTABlog Test: Does This Specimen of Use Support Registration of BOWL & STIX?

The USPTO refused to register the mark BOWL & STIX (in standard character form) for "Oriental and Pacific rim cuisine prepared foods . . .," under Trademark Act Sections 1 and 45 on the ground that the specimen of use (below) does not show the mark depicted in the drawing, i.e., the drawing is not a substantially exact representation of the mark as shown on the specimen. Applicant argued that a normal reading of the mark is BOWL & STIX, and the consumer would ignore the crossed-out word ROLL. How do you think this came out? In re Kahiki Foods, Inc., Serial No. 87648828 (October 31, 2019) [not precedential] (Opinion by Judge Jonathan Hudis).


The drawing in an application shows the mark sought to be registered. Trademark Rule 2.52. "[T]he mark must be a substantially an exact representation of the mark as used on or in connection with the goods." Trademark Rule 2.51(a).

Examining Attorney Corinne Kleinman maintained that the marks in the drawing and specimen are not the same because "the mark on the specimen includes stylization and/or a design element (the crossed out wording 'ROLL' and substitute term 'STIX') that creates an uncommon or 'special' commercial impression."

In support of the Office’s position, the Examining Attorney cites to articles . . . reporting that crossed-out words accompanied by replacement wording can demonstrate: textual irony, the history of document changes, the deliberate change of thought, a way of saying something without really saying it, ironic commentary, rebranding by the change of commercial impression, an eye-catching form of advertising, a dual meaning, and an indication of differences or the value of a new offer from a prior one. We find that none of these vehicles of intended meaning can be conveyed by a standard character (typed) drawing.

In fact, applicant conceded that the crossed out word "Roll" is intended to show that BOWL & STIX is a follow-on product to its prior product, BOWL & ROLL. This intended commercial impression cannot be captured by the standard character drawing of BOWL & STIX.

Applicant pointed to several third-party registrations for marks in which a word was crossed out, but the Board once again noted that it is not bound by actions of examining attorneys in registering prior marks. [What's the relevance  anyway, since applicant is not seeking to register a mark with a crossed out word? -
ed.]. 

The Board therefore affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: How did you do? I would refer to this product as "BOWL & STIX," not "BOWL & CROSSED-OUT ROLL STIX."

Text Copyright John L. Welch 2019.

Tuesday, November 05, 2019

TTABlog Test: Are "PUBLIC GOODS" and "PUBLIX" Confusable for Personal Care Products?

The USPTO refused to register the mark PUBLIC GOODS for various personal products, including bar soap, toilet paper, and tooth brushes (GOODS disclaimed), on the ground of likelihood of confusion with the registered mark PUBLIX (in standard character and design form) for, inter alia, bar soap, dental floss, and toilet paper. On appeal, the Board found the goods to be identical or related. B0ut what about the marks? The Board issued a split decision, with Judge Mermelstein dissenting. How do you think this came out? In re Don’t Run Out, Inc., Serial No. 87344127 (October 31, 2019) [not precedential] (Opinion by Judge Angela Lykos).


When the involved goods are identical in part, a lesser degree of similarity between the marks  is needed to support a finding of likelihood of confusion. The examining attorney relied on the proposition that similarity in sound alone may support such a finding. She contended that PUBLIX is identical in sound to the plural version of PUBLIC. Since GOODS is disclaimed by applicant, and PUBLIC is the first word in applicant's mark, she found PUBLIC to be the dominant element.

Applicant maintained that the examining attorney improperly dissected its mark, and that the marks as a whole engender different meanings and commercial impressions: PUBLIX is a coined term with no recognized meaning, while PUBLIC GOODS conveys a meaning of social benefit.

The panel majority found the differences in connotation and commercial impression to be critical. The evidence established that PUBLIC GOODS projects the connotation and impression that applicant's products "are available to all consumers due to their affordability, and beneficial to the public because they are environmentally safe." [N.B.: Nothing in the identification of goods or the mark itself says that they are inexpensive or environmentally safe - ed.].

The majority concluded that the differences in meaning and commercial impression outweighed the other du Pont factors, and so it concluded the confusion is not likely and it reversed the refusal.

Judge Mermelstein, in dissent, agreed that PUBLIC GOODS appears to have a particular meaning in the field of economics, "as a product which is 'non-rivalrous' and 'non-excludable." But "[i]t is far from clear that purchasers of Applicant's goods ... would ascribe that meaning to the mark when it is encountered on shampoo, toilet paper, and toothbrushes." Purchasers would more likely consider the mark to refer simply to goods available to the public.

Judge Mermelstein disagreed that PUBLIX has no recognized meaning. "PUBLIX is a homophone and an obvious misspelling of the plural or possessive of PUBLIC."

The addition of the word GOODS somewhat distinguished applicant's mark, but Judge Mermelstein would assign little weight to that word, and he noted that it is the first word in a mark that is most likely to be remembered by consumers.

Considering the marks in their entireties, Judge Mermestein would find them "sufficiently similar given the identical and closely related goods at issue," and he would affirm the refusal to register.

Read comments and post your comment here.

TTABlog comment: How did you do? By the way, what is the meaning of "cleaned up" in the citation at the top of page 16 of the opinion?

Text Copyright John L. Welch 2019.

Monday, November 04, 2019

Precedential No. 31: TTAB Enters Judgment as a Sanction for Willful Evasion of Discovery

The Board granted Plaintiff Fifth Generation's motion for entry of judgment as a sanction, under Trademark Rule 2.120(h), due to Defendant Titomirov Vodka's failure to comply with various Board orders and for its "pattern and practice ... of avoiding its discovery obligations evidencing willful evasion." Fifth Generation Inc. v. Titomirov Vodka LLC, 219 USPQ2d 418666 (TTAB 2019) [precedential].


Relying on a variety of grounds, Fifth Generation, owner of the registered mark TITO'S for distilled spirits, opposed Titomirov Vodka's applications to register TITOMIROV VODKA and TITOMIROV ALKALINE MARTINI, and petitioned to cancel a registration for the mark LUCKY VODKA BY ALEX TIMOROV, all for vodka.

Fifth Generation had filed a motion to reopen discovery on the ground that defendant had concealed evidence by its misrepresentation that Dr. Alexander Titomirov was defendant's only officer and that he resided in Monaco. Defendant had refused to produce any witnesses for deposition. However, Fifth Generation established that two other individuals, Dr. Singer and Mr. Samuelson, represented themselves publicly as defendant's President of U.S. Operations and Vice President of Sales and Business Development, respectively. The Board reopened discovery.

Next, Fifth Generation filed a motion for sanctions, or for an order compelling discovery, on the grounds that (1) defendant continued to claim that Dr. Titomirov was its sole employee, that he lives in Monaco, and that defendant had no presence in the United States, (2) defendant refused to collect documents from its employees, and (3) it failed to supplement its discovery responses or respond to Fifth Generation's new discovery requests.

The Board ordered defendant to supplement is discovery responses and allowed Fifth Generation to depose Singer and Samuelson on notice alone. It required defendant to submit amended and supplemental response after consultation with these two individuals. And the Board precluded defendant from relying at trial on testimony from anyone other than Dr. Titomirov.

Because defendant did not comply with these discovery orders, Fifth Generation filed the subject motion for sanctions.

Defendant then requested a telephone conference with the Board to resolve the motion, but the Board denied the request: "the Board will not decide by telephone conference any motion that the Board determines may be potentially dispositive." Nor did the Board grant defendant's request that it "assist the parties in quickly fleshing out the issues raised," since "it is not the Board's role to 'mediate' the parties discovery disputes." The Board observed that it "appears that the request for a telephone conference is interposed for purpose of delay."

Although defendant's counsel submitted a declaration describing the difficulties in communicating with defendant, " As with its two prior unsuccessful motions to extend its time to respond, Titomirov once again has failed to show good cause for the Board to reset the time for it to file a response to Fifth Generation’s motion for sanctions. Fed. R. Civ. P. 6(b); SFW Licensing Corp. v. Di Pardo Packing Ltd., 60 USPQ2d 1372, 1373 (TTAB 2001) (opposers had not come forward with “detailed facts” required to carry their burden to explain their inaction).

In the subject motion for sanctions, Fifth Generation pointed out that defendant continued to refuse to make witnesses available for deposition and failed to state when Dr. Titomirov would be in the United States. Fifth Generation relied on information posted on social media regarding the corporate positions of Dr. Sanger and one Anthony Bromley, images of Dr. Titomirov at events in Florida, and two sworn documents filed in a New York state court, averring that Dr. Titomirov resides in Jupiter, Florida.

Under Rule 2.120(h)(1) and Fed. R. Civ. P. 37(b)(2), the Board may issue appropriate sanctions for failure to comply with a discovery order, including entry of judgment. "Although judgment is a harsh remedy, it is justified where there is a strong showing of willful evasion and no less drastic remedy would be effective. Unicut Corp. v. Unicut, Inc., 222 USPQ 341, 344 (TTAB 1984); see also Benedict, 101 USPQ2d at 1093."

The Board found that defendant "has failed to comply with Board orders regarding discovery by: (1) failing to properly supplement its discovery responses concerning Dr. Titomirov’s presence in the United States, and (2) failing to make witnesses available for deposition." Defendant attempted to evade discovery by misrepresenting its relationship with Sanger and Samuelson and by misrepresenting Dr. Titomirov's residence address. It filed two unsupported motions for extensions of time and requested a telephone conference apparently for the purpose of delay. "Such dubious filings not only demonstrate Titomirov's dilatory intent, but also tax Board resources."

Together, these actions show a course and pattern of delay that evidence willful evasion of Titomirov’s discovery obligations. On this record and based on all of Titomirov’s actions before us, we find that Titomirov has continually failed to comply with Board orders and hampered reasonable procedures appropriate to resolution of this trademark conflict. See Benedict, 101 USPQ2d at 1093.

The Board noted that the lesser sanctions imposed on defendant had little effect, and so the Board saw no prospect of future compliance. "Any sanction short of judgment would be futile and unfair to Fifth Generation."

And so, "[i] view of Titomirov’s failure to comply with the Board’s prior orders and its pattern and practice ... of avoiding its discovery obligations evidencing willful evasion," the Board entered judgment against defendant as a discovery sanction under Rule 2.120(h). The Board found it unnecessary to invoke its inherent authority to issue sanctions.

Read comments and post your comment here.

TTABlog comment: As they say in Russia, tough shitsky!

Text Copyright John L. Welch 2019.

Friday, November 01, 2019

TTAB Denies Cancellation Petition Because Petitioner Failed to Prove Standing

The Board denied this petition for cancellation of a registration for the mark MORALE PATCH for "Ornamental cloth patches; Patches for clothing made of rubber, plastic and vinyl," because Petitioner failed to prove its standing. Petitioner Violent Little Mahine claimed that the registered mark is merely descriptive or generic. It alleged that it is in the business of selling patches at its website at www.violentlittle.com. However, Petitioner failed to prove its allegations regarding its business and therefore failed to establish its standing. Arms Keep, LLC d/b/a Violent Little Machine v. Morale Patch Armory LLC, Cancellation No. 92065573 (October 30, 2019) [not precedential] (Opinion by Judge Cheryl S. Goodman).


"Standing is a threshold issue that must be proven by the plaintiff in every inter partes case." Violent Little Machine alleged that it sells morale patches; that allegation, if proven at trial, would suffice to establish its standing in this case.

However, Petitioner Violent Little Machine took no testimony nor did it introduce any other evidence to prove its standing based on the allegations in the petition to cancel. The documents it submitted under notice of reliance were relevant to the descriptiveness or genericness grounds but did not relate to its own activities.

Violent Little Machine submitted webpages from its website as an attachment to its reply brief, in a belated attempt to prove that it sells patches. That proposed evidence was, of course, untimely. And so it asked the Board to take judicial notice of same, claiming that "the web pages are easily verifiable, and the accuracy of these web pages cannot reasonably be questioned."

The Board refused to take judicial notice: "[W]eb pages from Petitioner’s website do not constitute the type of source whose accuracy cannot reasonably be questioned nor do the web pages contain facts that are generally known, as contemplated by Fed. R. Evid. 201(b)(2)." In any event, there was "no corroborating testimony or other evidence that Petitioner owns or controls this website." Without such testimony, "the website evidence would not be admissible to prove the truth of the matter contained therein."

Respondent’s answer did not contain any admissions that would establish petitioner’s standing.

Therefore, the Board denied the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: I guess petitioner needed its morale patched up after this defeat.

Text Copyright John L. Welch 2019.

Thursday, October 31, 2019

TTAB Affirms Section 2(e)(2) Geographical Descriptiveness Refusal of "SE VENDE FOR SALE AMERICA" for Marketing Consulting

The Board affirmed a refusal to register the mark SE VENDE FOR SALE AMERICA for "marketing consulting" [AMERICA disclaimed], finding the mark to be primarily geographically descriptive of the goods under Section 2(e)(2). Applicant Camarena-Vazquez argued that the mark is not geographically descriptive because SE VENDE and FOR SALE are suggestive, not descriptive, of his services. Applicant himself does not sell goods or services. These terms "suggest an end-result (i.e., consulting for others so that they may sell their goods and services)." The Board didn't buy it. In re Guillermo Camarena-Vazquez, Serial No. 87734668 (October 21, 2019) [not precedential] (Opinion by Judge Cheryl S. Goodman).


A term is primarily geographically descriptive under Section 2(e)(2) when (1) the primary significance of the term is a place generally known to the public, (2) the public would make an association between the identified goods or services and the place named in the mark, that is, believe that the goods of services for which the mark is sought to be registered originate in that place, and (3) the source of the goods or services is the geographic region named in the mark.

If there is no question that the geographic significance of the term is its primary significance and the place is neither obscure nor remote, a public association of the goods or services with the place may be presumed if, in fact, the goods or services originate from the geographic place named in the mark.

The addition of highly descriptive matter to a geographically descriptive term does not detract from  the primarily geographically descriptive significance of the mark as a whole.

The Board first found that AMERICA is the name of a place known generally to the American public that is neither obscure nor remote. The primary significance of "America" is a geographic location. Applicant conceded the descriptiveness of "America" by disclaiming the word.

The combination of the highly descriptive term SE VENDE FOR SALE with the geographic term AMERICA does not detract from the primary geographic significance of the composite mark.

Applicant's address is in Las Vegas, Nevada. Therefore the Board presumes that the public would make an associate between applicant's services and the place named in the mark: that is, they would believe that the services originate in America.

And so the Board affirmed the refusal to register.

In his brief, applicant requested that he be allowed to amend his application to seek registration on the Supplemental Register if the Board upheld the Section 2(e)(2) refusal. Too late, said the Board. The Board has no power to re-open an application to propose such an amendment. See Rule 2.142(b) (An application which has been considered and decided on appeal will not be reopened except for the entry of a disclaimer ... or upon order of the Director").

Read comments and post your comment here.

TTABlog comment:  Is this a WYHA?

Text Copyright John L. Welch 2019.

Wednesday, October 30, 2019

District Court Dismisses Section 18 Counterclaim for "Cancellation by Restriction"

In a trademark infringement action, the U.S. District Court for the Western District of Virginia dismissed a counterclaim under Section 18 of the Lanham Act for "Cancellation by Restriction" of a registration for the mark CFA for financial advisor certification services. Defendant claimed that restricting the registration to fields other than "retirement financial planning at the employer level" would avoid confusion with its mark CPFA. The court, however, found no legal support for the proposition that Section 18 applies to civil actions, and in any case it ruled that defendant failed to allege facts that would make its claim plausible. CFA Institute v. American Society of Pension Professionals and Actuaries, Case No. 3:19-cv-00012 (W.D. Va. October 24, 2019).


Section 18 provides that in inter partes proceedings the TTAB "may modify the application or registration by limiting the goods or services specified therein, may otherwise restrict or rectify with respect to the register the registration of a registered mark." The Board held in Eurostar that in order to seek restriction of the goods or services in a registration, the plaintiff must allege two elements: "(1) the entry of a proposed restriction to the goods or services in its opponent’s application or registration will avoid a finding of likelihood of confusion, and (2) the opponent is not using its mark on those goods and services that will be effectively excluded from the application or registration if the proposed restriction is entered."

The court first observed that "it is not clear that Section 18 even applies in federal court." Defendant cited no case in which a court had entertained a claim under Section 18. On the other hand, no court has held that Section 18 is inapplicable in courts.

Defendant pointed to Section 37 of the Lanham Act, which states that "In any action involving a registered mark the court may determine the right to registration, order the cancellation of registrations, in whole or in part, restore canceled registrations, and otherwise rectify the register with respect to the registrations of any party to the action." However, defendant provided no case law to support defendant's theory that Section 18 applies "by virtue of Section 37." [Then what the heck is Section 37 for? ed.].

Moving right along, the court found that even if it did accept that Section 18 and Eurostar apply in federal court, defendant's counterclaim was legally insufficient. Defendant failed to allege any facts that, if proven, how the proposed restriction would affect any likelihood of confusion in the marketplace. Moreover, defendant did not allege facts to show that plaintiff is not using its mark on the services to be excluded.

Finally, the court pointed out that plaintiff will be required to prove that defendant's use in commerce will be likely to cause confusion. "Regardless of whether Defendant's counterclaim is maintained, likelihood of confusion based on actual use will remain the central inquiry in at least resolving Plaintiff's Section 1114 claim [for infringement of a registered mark]."


Read comments and post your comment here.

TTABlog comment: Seems to me that Section 37 by itself gives the court the power to restrict a registration. But what differencce would it make in this case?

Text Copyright John L. Welch 2019.

Tuesday, October 29, 2019

TTAB Posts November 2019 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled seven (7) oral hearings for the month of November 2019. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia.  Briefs and other papers for each case may be found at TTABVUE via the links provided.


November 7, 2019 - 1 PM: In re Gigit, Inc., Serial No. 87069673 [Refusal to register GIGIT for "staff augmentation services, namely, providing information technology (IT) support staff; updating and maintenance of data in computer databases" and for "computer and information technology security services, namely, providing social engineering assessments and assessing and testing the security posture and vulnerability of computer networks and the software applications that run on the networks; computer and information technology security consultation services; Information technology consultation services; information technology and computer network engineering services, namely, designing, configuring, optimizing, and implementing computer networks; computer and information technology support services, namely, help desk services and monitoring the technological functions of computer network systems; data warehousing; installation, repair, updating, and maintenance of computer software; software design and development; Information technology project management services; consulting in the field of information technology project management; IT integration services; computer systems integration services" on the ground of mere descriptiveness under Section 2(e)(1), and also on the ground that the mark shown in the drawing is not a substantially exact representation of the mark on the specimen of use].


November 12, 2019 - 2 PM: In re Toyota Jidosha Kabushiki Kaisha , Serial No. 87734664 [Section 2(d) refusal of SKYDRIVE for "aircraft; structural parts for aircraft; airplanes; structural parts for airplanes; autogyros; gliders and structural parts therefor; turbo-jet airplanes; turbo-prop airplanes; tilt rotor aircraft; propeller airplanes; helicopters; structural parts for helicopters; empennages; propellers for aircraft; propeller blade protectors for aircraft; landing gear for aircraft; landing gear wheels for aircraft; fuselages for aircraft; hot air balloons; seaplanes; airships; rotor blades for helicopters; aircraft wings; fuel tanks for aircraft; tires for aircraft; civilian drones; airplane seats; amphibious airplanes; flying cars and structural parts therefor; fitted covers for flying cars; air vehicles, namely, ultralight aircraft; structural parts for air vehicles; fitted covers for air vehicles; electrically powered motor vehicles for use in the air; structural parts for electrically-powered motor vehicles for use in the air; fitted covers for electrically powered motor vehicles for use in the air; roadable aircrafts; structural parts for roadable aircrafts; fitted covers for roadable aircrafts; rotorcraft; vertical take-off and landing propeller airplanes; vertical take-off and landing aircraft capable of road travel; vertical take-off and landing aircraft; short take - off and landing aircraft; structural parts for vertical take-off and landing aircraft capable of road travel; fitted covers for vertical take-off and landing aircraft capable of road travel; parachutes," in view of the registered mark SKY DRIVE for "speedometer speed sensors"].


November 13, 2019 - 1 PM: In re Nunn Milling Company, Inc., Serial No. 87622839 [Section 2(d) refusal of MERIDIAN for pet food in view of the registered mark MERIDIAN ANIMAL HEALTH & Design for, inter alia, "nutritional and dietary supplements for animals, namely, nutritional supplements for pets to prevent or treat dry skin, hot spots, sores, rashes, worms and other parasites, joint pain, and arthritis”].


November 19, 2019 - 11 AM: The Travelers Indemnity Company v. Trov, Inc., Cancellation No. 92067936 [Petition to cancel a registration for the mark TROV for "Computer application software for mobile devices, namely, software for collecting, indexing, storing and managing personal financial information and information relating to the user's personal and real property, sharing, bookmarking, indexing, storing, collecting and showcasing content, articles, images, and products relating to the user's personal and real property and financial assets, obtaining insurance quotes, purchasing insurance policies, purchasing and selling goods, and managing personal property for the purpose of lending, borrowing, and donating such property, and for managing information regarding personal property for use in curating on-line offers and advertising such property in connection with offers for the private sale of such property" on the ground of likelihood of confusion with the registered mark TRAVELERS and TRAV-formative marks, and the common law mark TRV, for various insurance-related services, and on the ground that registrant's mark was not in use as of the filing date of its underlying application].


November 19, 2019 - 1 PM: In re Bayco Products, Inc., Serial No. 87708217 [Section 2(d) refusal of INTEGRITAS for "Flashlights, namely, portable, rechargeable lanterns," in view of the registered mark ENTEGRITY, in stylized form, for “Light bulbs; Light bulbs, electric; Lighting fixtures; Lighting installations; Lighting tubes; Electric light bulbs; Fixtures for incandescent light bulbs; Fluorescent electric light bulbs; Halogen light bulbs; Incandescent light bulbs; LED light bulbs"].


November 20, 2019 - 11 AM: In re Southcorp Brands Pty Limited, Serial No. 88310184 [Section 2(e)(1) mere descriptiveness refusal of 19 CRIMES for “motion picture films featuring comedy, drama, action, adventure and animation; prerecorded audio tapes, audio video cassettes, audio video discs, and digital versatile discs featuring music, and motion picture films featuring comedy, drama, action, adventure and animation,” and “production, distribution and rental of motion pictures films; production, distribution, and rental of television and radio programs; production, distribution, and rental of sound and visual recordings in the nature of videos in the field of comedy, drama, action, adventure and animation; production of live-action and animated entertainment television shows; production of entertainment television and radio news programs; provision of entertainment information via communication and computer networks; providing entertainment information services via a global communications network in the nature of websites featuring a wide variety of general interest entertainment information relating to motion picture films, television show programs, musical videos, related film clips, photographs, and multimedia entertainment content; presentation of live stage shows; presentation of live show performances; theater productions; entertainer services, namely, live appearances by a professional entertainer; entertainment services, namely, displaying a series of motion picture films featuring comedy, drama, action, adventure and animation via television broadcast”].


November 21, 2019 - 1 PM: In re Medline Industries, Inc., Serial No. 87680078 [Section 2(d) refusal to register the color green (below left) as applied to gloves for  “Medical examination gloves” in view of the registered mark shown below right, for the color green as applied to the exterior of gloves for use with “Gloves for medical use; Protective gloves for medical use"].


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Text Copyright John L. Welch 2019.