The TTABlog<sup>®</sup>: December 2004

The TTABlog End-of-Year Index

The TTABlog first appeared in the blogosphere on November 9, 2004. More than three dozen postings later, it toddles into the New Year. Set out below is a listing of the items thus far posted, categorized loosely by subject matter.

Section 2(a) - false suggestion of a connection:

Section 2(d) - likelihood of confusion:

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

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

Fashion-Savvy TTAB Says "No" To "NO-L-ITA"

Section 2(e)(4) - primarily merely a surname:

Section 2(e)(5) - functionality:

Boston Commons
Not a trademark/service mark:

Mutilation:

TTAB Hands Alabama and Auburn "IRON BOWL" Defeat

Genericness

Bona fide intent

Dallas Mavericks Lose Board Battle For "DEEP 3"

Trade Dress/Product Configuration:

Other:

TTAB Blocks Half-Obliterated Design Mark

There was nothing smooth about the Torre company's attempt to register the design shown below (lined for the colors red and yellow, the yellow region including a swirl design) as a trademark for "fruit puree base for use in the preparation of fruit drinks, smoothies and the like." In re R. Torre & Co., Serial No. 76383794 (December 16, 2004) [not citable].

The Board deemed the sole issue on appeal to be “whether the mark as it appears on the drawing conforms with the mark as it appears on the specimen of use.” In the specimen, “half of applicant’s mark is totally obliterated by wording and other design features. To be more specific . . . by applicant’s word trademark FRUSIA; the generic wording ‘whole fruit smoothie base strawberry’: and the depiction of strawberries.” [The actual usage apparently looked like this:]

Applicant Torre argued that “anytime a mark is a background design mark, it will inherently have overlying elements when used in commerce.” The Board disagreed, noting that Torre had failed to cite a single case “where a design mark . . . was permitted to be registered when said design mark on the specimen was substantially obliterated by wording and/or other designs.”

The Applicant and the Examining Attorney sparred over another issue: whether Torre’s design makes a “separate and distinct commercial impression” apart from the wordings and other designs on the label. The Board, seemingly annoyed, observed that even if the issue in the case may be so construed, and assuming arguendo that “half of applicant’s mark as shown on the specimens makes a ‘separate and distinct commercial impression,’” this does not mean that the entire mark does so. [emphasis in original].

"Because only half of applicant’s mark is visible on the specimen, then applicant’s mark (as shown on the drawing page) cannot make a separate and distinct commercial impression."

In my view, the Board was rather lenient toward this Applicant. I haven't made an exact analysis based on the gridlines in the application drawing, but it looks to me that the mark is more like 75% partially obliterated.

Paint Can Icon Gets TTAB Brush-Off

The TTAB brushed aside the attempt of Dunn-Edwards Corporation to register the paint brush icon shown below as a trademark for "paint for use on masonry" because as used, the design does not function as a trademark. In re Dunn-Edwards Corp., Serial No. 76201822 (December 16, 2004) [not citable].

Dunn-Edwards had received a Notice of Allowance, but the Examining Attorney, upon seeing the specimen of use, issued a refusal to register under Sections 1, 2, and 45 of the Trademark Act. The specimen was a label affixed to a paint can, on which the subject design:

"appears in a very subordinate fashion (i.e. far less than the size of a postage stamp) and the design merely indicates that the paint can be used on masonry. Eight other very small informational icons appearing on the label indicate that this paint is water-based, but not solvent-based; that this paint is good for both interior and exterior use; that this paint can be used on dry wall, wood and metal; and that this paint has a certain gloss range."

Dunn-Edwards also submitted an advertising poster, but that made matters worse: the poster displayed 14 small informational icons under the heading "Our Instructions Are Now in Sign Language." The Board concluded that "the design . . . does not function as a trademark, but rather functions merely as an informational icon, along with other informational icons, to indicate the 'Application Use' for a particular can of paint."

Dunn-Edwards argued that its design is "not merely descriptive," but the Board noted that such an assertion was "totally misplaced," since the question was whether the design served as a mark at all. Similarly, Applicant's reference to three registrations obtained for other paint can icons fell flat, because (as it frequently states) the TTAB is "not bound by actions of Examining Attorneys in allowing marks to be registered."

1,696 Dunn-Edwards Colors

Osama and the "Trademark Trial and Appeal Board"?

Imagine my surprise when I received the following e-mail message from Google in response to my standing request for new alerts relating to the "Trademark Trial and Appeal Board"!!

Google Alert for: Trademark Trial and Appeal Board

BIN LADEN: Address To The Saudi Rulers December 16, 2004
jihadunspun.com - West Vancouver,British Columbia,Canada
... withstand the Messenger's order, lest some trial befall them ... and many other violations have been the trademark of this ... I now appeal to all Muslims to call on ...

In case you're wondering, the word "board" appears on page 2 of the 19 page diatribe, in the phrase "Allah might send punishment across the board." The speech is posted at the website Jihad Unspun.

[Upon seeing my original post, Marty Schwimmer of the Trademark Blog quipped: "Finally, an explanation for all those uncitable decisions – national security."]

TTAB Socks It To Norwegian Skier Vegard Ulvang

Norwegian cross-country skiing champion Vegard Ulvang veered off course in his attempt to register the mark ULVANG for "socks." The Board affirmed a Section 2(e)(4) refusal to register, finding the mark to be primarily merely a surname. In re Ulvang, Serial No. 78160641 (December 15, 2004) [not citable].

Applicant acknowledged that "Ulvang" is his surname, that it has no dictionary meaning, and that it has no geographical significance or meaning in a foreign language. But he contended that "Ulvang" is "a particularly rare surname" in the USA, since only 15 listings for the name appear in the PowerFinder database, that "Ulvang" does not have the look and sound of a surname, and that "due to the connection between Applicant's mark ULVANG and the specific goods at issue, namely, 'socks,' the term 'Ulvang' does not create the impression of being a surname." [Apparently Applicant was alluding to his own fame as a cross-country skier and a marketer of socks in his native Norway.]

The Board looked to the usual factors in considering this Section 2(e)(4) refusal. It noted that several NEXIS stories refer to individuals named Ulvang, that those individuals and the 15 whose residential listings appear in the PowerFinder database are spread across the country, that (in the Board's subjective judgment) "Ulvang" has the "look and sound" of a surname, that it is indeed Applicant's surname, and that the word has no other meaning. The Board concluded that:

"even if ULVANG is a rare surname, this does not mean that its surname significance would not be recognized by a substantial number of members of the general public."

Curiously, the record was apparently devoid of evidence that Applicant Vegard Ulvang and the Norwegian skier are one and the same person:

"It is noteworthy that several of the excerpted stories include information about Vegard Ulvang, an Olympic gold medal winner in cross-country skiing."

In any case, although Mr. Ulvang owns a Norwegian registration for his mark, he will have to develop secondary meaning in this country if he wants to win the red seal and blue ribbon attached to a U.S. trademark registration certificate.

TTAB No Picnic For Teddy Bears

It wasn't exactly "Picnic Time" for these two teddy bears, as they tussled over potential trademark rights in the placement of a heart inside a stuffed bear. The TTAB granted summary judgment to Applicant in Vermont Teddy Bear Co. v. Build-A-Bear Workshop, LLC, Opposition No. 91115198 (December 17, 2004) [not citable], and dismissed this Section 2(d) opposition, finding that Vermont's prior use of a heart "does not constitute trademark use and is not protectable under the Lanham Act."

Build-A-Bear's I-T-U application seeks to register, for plush animals and stuffed toy animals, the following mark:

". . . a three-dimensional heart shaped object. The outline of a teddy bear is used to signify the placement of a heart shaped object inside a stuffed or plush toy animal; the teddy bear design itself is not claimed as part of the mark, as the heart-shaped object may be placed in any stuffed or plush toy animal."

Opposer Vermont Teddy Bear claimed prior rights in the use of a heart-shaped object in a stuffed toy animal, but the Board found that Vermont's use consisted of "advertising and selling toy animals and toy animal kits, usually teddy bears, that include a heart-shaped object and instructions for the consumer to insert the object into the toy animal."

The Board concluded that "the procedure or step of placing the heart-shaped object in the toy animal's chest by the consumer" did not constitute trademark use and could not be accorded protection under the Trademark Act.

"Opposer's proposed mark fails to meet the definition of a trademark or service mark and, thus, is not capable of distinguishing opposer's goods or services. * * * Even under the concept of 'trade dress,' which expands the Trademark Act's definition of a 'trademark,' trade dress is not so pliable as to give exclusive rights for the concept of placing a heart inside a stuffed animal."

The Board ordered that Build-A-Bear's application be forwarded for the issuance of a notice of allowance, but lest the Build-A-Bear teddy begin its victory dance prematurely, the Board made clear that Applicant is not yet out of the PTO woods:

"Although the opposition is being dismissed, we note that this does not mean the subject application will ultimately mature into a registration. Should applicant file a statement of use and specimens of use in support thereof (which is required for the mark in the intent-to-use based application to be registered) the USPTO examining attorney may at that point refuse registration on various grounds, including failure to function as a trademark under Sections 1, 2, 3 and 45 of the Trademark Act."

The Build-A-Bear teddy may indeed have a tall mountain to climb in its quest for registration. As the following excerpt from the Build-A-Bear website shows,

Build-A-Bear is apparently doing the same thing as Opposer Vermont: it supplies the heart, and the customer places the heart inside the stuffed toy. The PTO seemingly should ultimately bring to bear the time-honored, black-letter law principle: what's sauce for the stuffed toy goose, etc.

Text ©John L. Welch 2004. All Rights Reserved

TTAB Says "Hasta la Vista" to PALABRA LISTA

The Board wasted little time in affirming a Section 2(e)(1) refusal to register the mark PALABRA LISTA, finding it merely descriptive of "printed educational materials for teaching Spanish vocabulary." In re Curriculum Associates, Inc., Serial Number 76433945 (December 7, 2004) [not citable].

Applicant provided an English translation of PALABRA LISTA as "word list," and its specimen of use consisted primarily of lists of Spanish words. The Examining Attorney acutely observed that the mark "aptly describes the goods, which appear to be a list of Spanish vocabulary." The Board, of course, pointed out that "the foreign equivalent of a merely descriptive English term is no more registrable than the English term itself."

Curriculum Associates feebly argued that the mark is not descriptive because, "although [the] materials include word lists, they do not necessarily have to do so." The Board brushed aside that argument, noting that if the materials did not contain word lists, "a refusal on the ground that the mark is deceptively misdescriptive would have been in order."

Curriculum next weakly asserted that, because the word "Spanish" does not precede "Palabra Lista," the mark does not immediately describe the goods because "one would not know the language of the words listed." The Board pointed out, as it often does, that a mark must be considered not in the abstract but rather in context, i.e., in connection with the goods with which it is used.

Finally, Curriculum noted that its mark has been in use since 1993, but the Board observed that no claim under Section 2(f) had been made, and that length of use is irrelevant to a Section 2(e)(1) refusal.

Thus ended Curriculum's quixotic quest for reversal of the PTO's refusal to register.

CAFC Partially Reverses TTAB in Paris Ritz Oppositions

Five trademark applications filed twenty years ago by The Ritz Hotel, Ltd. (owner of the Paris Ritz) have finally cleared the opposition hurdle. In a precedential opinion, the CAFC in Shen Mfg. Co. v. The Ritz Hotel, Ltd., Appeals Nos. 04-1063, -1076 (Fed. Cir. Dec. 17, 2004), reversed the part of the TTAB's decision that had refused registration of two marks, and affirmed the part that had dismissed Shen's opposition as to the other three.

The Ritz sought to register the marks PUTTING ON THE RITZ for shower curtains, RITZ PARIS RITZ HOTEL and Design for dinnerware, the same RITZ PARIS RITZ HOTEL and Design mark for various floor and wall coverings, RITZ for cooking and wine selection classes, and THE RITZ KIDS for clothing. Shen succeed at the Board level in preventing registration of the last two marks under Section 2(d), relying on its use of the mark RITZ since 1892 for various textile items, including dish towels, potholders, aprons, bathroom towels, and ironing board covers, as well as for various other textile items.

The CAFC first considered Shen's assertion that its RITZ mark is famous and entitled to enhanced protection under Section 2(d). Agreeing with the TTAB, the court found inadequate Shen's evidence of $5 million in annual sales, use of its mark for more than a century, and hundreds of thousands of dollars in annual advertising expenditures. Shen's evidence "does not compare in terms of sales, advertising, or media interest" with that in other cases in which the CAFC has found fame.

As to the marks, the CAFC agreed with the Board that PUTTING ON THE RITZ is sufficiently different from RITZ to avoid a likelihood of confusion. It reached the same conclusion as to the two RITZ PARIS RITZ HOTEL and Design marks (shown here):

As to the mark RITZ for cooking and wine selection classes, the CAFC disagreed with the TTAB that those services are related to kitchen textiles. The Board had reasoned that "in providing cooking courses . . . it would be necessary that one make use of kitchen towels, dish cloths, aprons, barbecue mitts and potholders." The CAFC noted the lack of evidence that the consuming public would perceive these goods and services as originating from the same source. It ruled that "[a]lthough the marks are identical, the differences in the products as well as the weakness of Shen's mark" required dismissal of Shen's opposition to this mark. [emphasis added].

Finally, as to the mark THE RITZ KIDS, the TTAB had dubiously found the goods related because the hotel's goods included gloves, and Shen's barbecue mitts are a kind of glove. Then, relying on this "partial identity" of the goods, the Board opined that a lesser degree of similarity of the marks was required to support a likelihood of confusion finding. The CAFC, however, found the goods unrelated and the marks dissimilar, and it therefore reversed the Board's ruling.

There was no mention in either the Board's opinion or that of the CAFC about actual confusion or the lack thereof. One would think, had confusion been likely between the marks in question, some evidence of confusion would have arisen over the century of simultaneous use of the RITZ marks by the parties. Somehow I doubt that many people would associate RITZ brand potholders and ironing board covers with the ultra-posh Hotel Ritz in Paris.

Fame of "PHYSIO-CONTROL" Accorded Dominant Weight in TTAB's Confusion Analysis

It is not often that the Board upholds an Opposer's claim that its mark is famous for purposes of a Section 2(d) determination, but the TTAB did just that in Medtronic Physio-Control Corp. v. Osypka Medical, Inc., Opposition No. 91124380 (October 22, 2004) [not citable]. The Board found PHYSIO-CONTROL to be a famous mark for external defibrillation products, and accorded that fame "dominant weight" in its likelihood of confusion analysis under the fifth du Pont evidentiary factor.

Applicant Osypka sought to register the mark PHYSIOCOM for heart-related medical instruments and software, but the Board deemed that mark likely to cause confusion with Medtronic's marks PHYSIO, PHYSIO-CONTROL, and PHYSIO CONTROL, registered for defibrillators and other cardiac care equipment.

The Board found Applicant’s goods to be “legally identical to or complementary to or otherwise closely related to certain of the goods” identified in Opposer’s registrations, and further that they would be marketed in the same trade channels to the same classes of customers.

As to the marks, although PHYSIO might be somewhat suggestive, it appeared that Medtronic is the only user of that term in connection with the subject goods; the Board found PHYSIO to be the dominant feature in each of the marks at issue, and ruled that the marks create similar overall commercial impressions.

But the dominant du Pont factor was the fame of the PHYSIO-CONTROL mark, which Medtronic established with evidence of more than $2.5 billion in sales since 1975, advertising expenditures of more than $850,000 per year, numerous media articles, and a 47% share of the market for external defibrillation products. As the Board observed, citing Kenner Parker Toys, Inc. v. Rose Art Indus., Inc., 22 USPQ2d 1453, 1456 (Fed. Cir. 1992), "[a] strong mark . . . casts a long shadow which competitors must avoid."

The Board, as if often does, declined to reach Medtronic's claims under Sections 2(a) [false suggestion of a connection] and 43(c) [dilution]. Given the difficulty of establishing a Section 2(a) claim, and the near identity of marks required for a dilution claim, Medtronic was probably just as well off.

TTAB Hands Alabama and Auburn "IRON BOWL" Defeat

The Iron Bowl is purportedly the most intense intrastate collegiate football rivalry in the nation. [And I thought it was Illinois v. Northwestern for the "Sweet Sioux Tomahawk" Trophy!] But both Alabama and Auburn came up losers in their attempt to register the Iron Bowl logo because they ran afoul of Rule 2.51(a), which requires that the drawing of the mark be a "substantially exact representation" of the mark as used. In re The Board of Trustees of The University of Alabama and Auburn University, Serial No. 76143855 (November 29, 2004) [not citable].

These joint applicants sought to register the mark shown above on the left for t-shirts and for entertainment services. However, the specimen for the t-shirts displayed the mark as shown on the right, which brought up the issue of "mutilation:" i.e., whether the mark sought to be registered is an incomplete representation of the mark as actually used. The Board of Trustees argued that the "Iron Bowl" is a "widely-known, century-old football game between joint applicant the University of Alabama and Auburn University," that the elephant head design is used by Alabama and the tiger eyes by Auburn, and therefore that consumers will recognize those designs as marks separate and distinct from the IRON BOWL and design mark.

The TTAB noted that the issue of mutilation comes down to "a judgment as to whether that designation for which registration is sought comprises a separate and distinct 'trademark' in and of itself." Here, the Board had no problem with the omission of "ALABAMA VS AUBURN" and the date, "because the omission of these elements does not disturb the overall integrity of the design." However, the portion of the design "left after the animal head designs have been extracted does not create a distinct commercial impression apart from the deleted elements and does not function without those elements on its own as a separate design. *** [T]he extraction of the two animal head designs leaves physical holes in the football, thereby destroying the visual integrity of the background design as a composite whole."

The specimens for the class 41 entertainment services raised a different issue: the addition of elements to the drawing The specimen of use did not show the concentric oval design with the triangle at the top or the wording "ALABAMA VS AUBURN." Instead it looked, more or less, like this:

The Board concluded that the additional elements "are significant enough to indeed change the overall commercial impression of the mark." "The concentric oval and triangle composite is an entirely new and different design feature that stands out from the football and other elements of the mark and creates an obvious visual disparity between the mark in the drawing and the mark as shown in the Class 41 specimens."

As to Illinois v. Northwestern, I'm sorry to say that NU kept the Sweet Sioux Tomahawk for another year after defeating the Fighting Illini 28-21 on November 20th.

Sweet Sioux Tomahawk

Fashion-Savvy TTAB Says "No" To "NO-L-ITA"

A "hip" Board panel affirmed a refusal to register the mark NO-L-ITA NORTH LITTLE ITALY for various clothing items on the ground that the mark is primarily geographically deceptively misdescriptive because it identifies the fashion-trendy "Nolita" area of New York City. In re Fashion Group S.N.C., Serial No. 76006037 (December 3, 2004) [not citable].

Last year in In re California Innovations, Inc., 66 USPQ2d 1853 (Fed. Cir. 2003) the CAFC ruled that the PTO must deny registration of a mark under Section 2(e)(3) if:

(1) the primary significance of the mark is a generally known geographic location;
(2) the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark, when in fact the goods do not come from that place; and
(3) the misrepresentation was a material factor in the consumer's decision. 66 USPQ2d at 1858.

Applicant Fashion Group did not dispute that the term "Nolita" may refer to an area of New York City, and it stated that its goods do not come from any locale so known. However, it argued that "Nolita" is a term recently "dreamed up" by real estate brokers and is already "on the wane," that there is no one place known as "Little Italy" or "north of Little Italy" and thus purchasers would not associate its goods with New York City, and that in any event there is no evidence that such an association would materially affect purchasing decisions.

The record evidence, however, included dozens of NEXIS articles showing that Nolita primarily signifies a geographic location, generally recognized as a New York City neighborhood among "those who follow the fashion industry, as well as among travel agents or travel writers," and even among casual readers of newspapers across the country.

The record also demonstrated that Nolita is associated with "clothing designers and retailers, many of whom have apparently found the neighborhood a suitable location for their businesses."

And, finally, as to the issue of materiality, California Innovations held that "if there is evidence that goods like applicant's or goods related to applicant's are a principal product of the geographical area named by the mark" or if "the place is noted for the particular goods," deceptiveness is likely. 86 USPQ2d at 1857. The evidence "established that clothing designers are concentrated in the neighborhood and that it is known for its trend-setting and unique clothing boutiques. " The Board therefore concluded that "for consumers, the origin of clothes in 'Nolita' is a material factor in their shopping decisions."

Thirteen Section 66(a) Applications Published For Opposition Today

The PTO published thirteen more Madrid Protocol-based Section 66(a) applications today, bringing the total published for opposition to date to 36. For those who are more visually inclined, the graph below depicts the number of Section 66(a) applications published and to be published on the ten consecutive Tuesdays beginning on November 9, 2004. Some say a picture is worth a thousand words, but I say, who's counting?

The large slab on the right end of the chart represents the 84 applications scheduled to be published on January 11, 2005, bringing the grand total to 121.

At least one previously-published section 66(a) application is already the subject of a possible opposition: namely, Application S.N. 79000859, owned by Thaler Event GbR of Gevelsberg, Germany, for the mark shown below for various clothing items. [The mark still reminds me of a certain National League baseball team].

The potential opposer is PEI Licensing Inc. of Miami, Florida, owner of various PERRY ELLIS registrations and others. PEI has already obtained a 30-day extension of time to oppose.

TTAB Finds "NOT MADE IN FRANCE" Not Funny

Reminiscent of the recent AUTHENTIKRUD decision, another applicant's attempt at humor fell flat before the Board. In In re VRBIA, Inc., Serial No. 78263738 (December 3, 2004) [not citable], the TTAB found the mark NOT MADE IN FRANCE merely descriptive of clothing, and it therefore affirmed a Section 2(e)(1) refusal to register.

Applicant VRBIA argued that the mark will not be perceived as descriptive, but rather as a "humorous satire on the country of origin label" or a "humorous statement relating to the current decline in Franco-American relations over the war in Iraq." The Examining Attorney contended that any humorous meaning would not be discernible without reference to other slogans or features of the clothing (VRBIA suggested, for example, the image of a "French flag in a universal 'NO' symbol"). Because VRBIA conceded that France is not likely to be the origin of its clothing, the Examining Attorney deemed the mark merely descriptive.

The Board agreed with the Examining Attorney, noting that the record contains "many excerpts showing use of the phrase 'not made in France' to describe products having their origins from somewhere other than France." It found unpersuasive Applicant's main argument -- that the mark "has a double entendre by virtue of the current state of affairs in Franco-American relations."

"The effect of other indicia (that might appear on the clothing) on consumer perceptions cannot be considered in our determination of mere descriptiveness. See In re Wells Fargo & Co. 231 USPQ 95 (TTAB 1986). In the absence of these other indicia, such as the humorous sayings regarding Franco-American relations to which applicant refers, we find it unlikely that the average consumer will make the association suggested by applicant. TMEP Sec. 1213.05(c)(3d ed. rev. 2 2003)."

Although VRBIA will be unable to display the R-in-a-circle symbol adjacent its mark, maybe it could append something like this instead:

Virgin's Rights Intact After TTAB Tryst

Applicant Kay Guitar Company never had a prayer in its pro se attempt to register the mark VIRGIN GUITARS and Design for guitars [GUITARS disclaimed]. The Board found the mark likely to cause confusion with Opposer's VIRGIN marks for a variety of goods and services related to the music industry. Virgin Enterprises Ltd. v. Kay Guitar Co., Opposition No. 91154392 (November 23, 2004) [not citable].

Opposer Virgin Enterprises submitted dozens of registrations for the mark VIRGIN in various forms, and established a record "replete with examples of the close connection" between music and its goods and services. Virgin sells records, tapes, and discs, features live in-store musical performances frequently involving "giveaways, including autographed guitars from the bands." Its stores offer guitar magazines, instructions books, and musical history books, and Virgin is "considering in the future offering musical instruments at its United States stores." Kay Guitar, on the other hand, did not take testimony, offer any evidence, or file a brief at final hearing.

Virgin did, however, strike a few sour chords. The Board turned a deaf ear to its claim to a family of "Virgin" marks, citing (as usual) J&J Snack Foods Corp. v. McDonald's Corp., 18 USPQ2d 1889 (Fed. Cir. 1991), and observing that "[s]imply using a series of similar marks, or the mere fact of registration of many marks with a common 'surname,' does not of itself establish the existence of a family." One who claims a family of marks "must prove that all or many of the marks in the alleged family were used and promoted together in such a way as to create public perception of the family 'surname' as an indication of source."

[The Board regularly rejects the "family of marks" argument, the recent MISS T-GIRL USA decision (see below) being a rare exception. In that decision, however, the Board provided virtually no analysis of how it reached its finding of a "family" of MISS . . . USA marks, and then made no apparent use of the "family of marks" finding in reaching its decision.]

The other sour chord involved Virgin's claim that its marks are famous. Although the Board found VIRGIN to be "a strong mark that is entitled to a relatively broad latitude of protection," it could not conclude that the VIRGIN marks are famous. "Critical evidence is lacking, such as volume of sales under the marks, and the amount of opposer's advertising expenditures."

In view of the Board finding of likelihood of confusion, it declined to reach the merits of Virgin's Section 43(c) dilution claim. That was probably a wise idea, since the chances of appellate reversal of the Board's Section 2(d) decision are minimal.

Ole! "RED RAVE" Sidesteps Charge Of "RED BULL"

In one of those cases where the marks are just not close enough, the Board dismissed an opposition to registration of RED RAVE for sports drinks, finding it not likely to cause confusion with the mark RED BULL registered for the same goods. Red Bull GmbH v. Cochran, Opposition No. 91152588 (September 29, 2004) [not citable].

The evidence showed that the goods of the parties are "energy drinks" sold in the same channels of trade. But the Board found the marks "significantly different." Although both begin with the word RED, the words RAVE and BULL "are common words which would be readily recognized as such and which are readily distinguishable." The marks also differ "in terms of sound as a whole."

As to connotation, "rave" means "to speak or write with a wild enthusiasm," or as a noun, "an all-night dance party, usually featuring electronically synthesized music." The word "bull," on the other hand, "connotes a male cow." This analysis led the Board to conclude that "Opposer's mark RED BULL does not connote wild enthusiasm or an all-night dance party, but rather a 'red bull.'"

Red Bull rather surprisingly argued that the alleged similarity in the marks is increased by Applicant Cochran's similar trade dress, but the Board understandably found the trade dress of the parties "not at all similar."

Red Bull submitted evidence of extensive advertising of its RED BULL mark, but did not specifically allege that its mark is famous. The Board pointed out that even if the RED BULL mark were famous, the differences in the marks would preclude a likelihood of dilution finding.

Applicant Carl Cochran may have won this encounter, but another challenge lies ahead. Cochran's own testimony appeared to show that he had not used the RED RAVE mark "on or in connection with the goods" prior to the filing of his use-based application. The TTAB therefore advised the parties that:

"if applicant ultimately prevails herein, applicant's involved application will be remanded to the Trademark Examining Attorney pursuant to Trademark Rule 2.131 for reexamination with respect to the issue of whether the application is void ab initio."

In that reexamination, the PTO will undoubtedly see red if there is any bull.

Dallas Mavericks Lose Board Battle For "DEEP 3"

The NBA's Dallas Mavericks tossed up a desperation air-ball in their attempt to stop Applicant John Jacob Carlisle from registering the mark DEEP 3 and Design for various clothing items. Dallas Basketball Ltd. v. Carlisle, Opposition No. 91156064 (Nov. 2, 2004) [not citable].

Dallas opposed solely on the ground that Carlisle "did not have a bona fide intention to use his mark in commerce" when he filed the subject application. [Dallas had filed its own application to register DEEP THREE for clothing, but Carlisle had priority, thus ruling out the more common bases for opposition.] Dallas contended that Carlisle lacked an intent to use the mark in his individual capacity because he always had the intention of forming a business with his friends.

The Board granted Carlisle's motion for summary judgment and dismissed the opposition with prejudice, noting that "[b]y arguing that applicant did not have the bona fide intent to use the mark in a particular legal entity-type capacity," Opposer Dallas sought to add "an element that does not appear in the statute or the legislative history to Section 1(b)."

Carlisle filed his I-T-U application in November 2000, after talking with two friends, Jim Hajdukovich and Dan Meckel, about "how DEEP 3 would be a great brand name for clothing." His first sale occurred in December 2000, and he then developed his business with the assistance of friends and family. In January 2003, Carlisle formed Deep Three, Inc. with Hajdukovich and Meckel.

Opposer Dallas tried in vain to raise a genuine issue of material fact that would have precluded summary judgment, but Carlisle batted away every shot Dallas took. The Board found no genuine factual issue in view of Carlisle's evidence that he "did have the requisite bona fide intention to use the mark in commerce at the time of the application, has subsequently used the mark in commerce, and continues to use the mark in commerce."

Of particular interest is the Board's observation regarding Opposer's position and its potential effect on I-T-U applicants:

"[O]pposer's position effectively imposes a limitation on any intent-to-use applicant that may have hopes and plans for business development and licensing potential, that may seek business consultation advice or legal advice from third parties, and that may change its business type after filing an intent-to-use application. This limitation may certainly affect corporate subsidiary applicants which file intent-to-use applications and later, as may happen under some corporate business models, transfer the application or mark to the parent or to a related trademark holding company responsible for maintaining a trademark portfolio."

Madrid Section 66(a) Applications Still Dammed Up

As expected, the Section 66(a) logjam continues for another week. No Madrid Protocol-based applications were published for opposition today.

Madrid Dam: Madrid, New York

Carl Oppedahl, who keeps track of these things, says that 13 more applications will flow over the dam to publication next Tuesday, December 14. One more will be published on January 4, 2005, and then the dam will burst on January 11th, when 84 Section 66(a) applications will be published. That will bring the total to 121. The reason for the sporadic publication of Madrid-based applications has yet to be explained.

Beauty and the Board: TTAB Says "MISS T-GIRL USA" Likely To Confuse

A potential battle between beauty pageants never got very far down the runway. In Miss Universe L.P. v. Rainbow Productions and Publications, Inc., Opposition No. 91122676 ((November 10, 2004) [not citable], the Board sustained a Section 2(d) opposition to registration of the mark MISS T-GIRL USA ("T-GIRL" disclaimed) for "entertainment services in the nature of promoting and conducting gay beauty pageants," finding the mark likely to cause confusion with the registered marks MISS USA and MISS TEEN USA for entertainment services, namely, the presentation of beauty pageants.

The Board found MISS USA and MISS TEEN USA to be "well-known" marks "deserving of a wide scope of protection," in view of decades of use, a "great deal of money" spent on advertising and marketing, and wide media exposure.

According to the Board, the marks at issue are similar in sound and appearance, since they begin with MISS and end with USA. Moreover, Opposer owns a "family" of "MISS . . . USA" marks licensed for use in all 50 states, the name of the state being sandwiched between MISS and USA. As to the services, the Board perceptively recognized that they "would not be identical," but found them to be "similar and related."

The Board noted that "no evidence was properly made of record showing the meaning of the 'T-Girl' portion of applicant's mark." Indeed, Applicant Rainbow apparently did nothing more than file an answer to the notice of opposition: it did not take testimony, offer evidence, or file a brief. That, of course, is not the way to win a beauty contest before the TTAB.

Opposer also asserted a Section 43(c) dilution claim, but the Board declined to rule on it. While it seems highly unlikely that Rainbow will appeal, perhaps the Board (in the interest of judicial economy) should have ruled on the dilution claim as well -- just in case its Section 2(d) ruling is overturned on appeal. Instead, the Board followed its usual practice of avoiding dilution rulings whenever possible.

TTAB Finds No Use For "AUTHENTIKRUD"

The Board failed to see the humor in this Applicant's attempt to register the mark AUTHENTIKRUD for "mail order services featuring clothing and accessories for motorcycle riders." In re Aero Design and Mfg. Co., Serial No. 78188620 (November 19, 2004) [not citable].

Aero's specimens of use comprised a catalog page and a website printout, each featuring a bottle bearing the mark AUTHENTIKRUD. The Examining Attorney understandably took the position that the mark functions as a trademark to identify a product called a "stain kit," and not as a service mark.

Aero admitted that it did not actually sell a stain kit or any other product under the mark AUNTHENTIKRUD. Instead, according to Aero, the mark is used "in jest to promote its catalog services:"

"The service mark and corresponding copy in the catalog and on applicant's website are written to amuse the reader, the potential purchasers of applicant's high-end motorcycle clothing. ...use of jokes and items offered in jest are part of applicant's promotional style."

The Board had "two problems" with Aero's argument. First, Aero did not offer any direct evidence that customers would perceive the AUTHENTIKRUD stain kit as a non-existent, "joke" product. The Board noted that the kit has an order code and a price, and appears on the same page with five presumably "legitimate" products. Second, even if customers got the joke, that does not mean they perceive AUTHENTIKRUD as a service mark for the identified services.

Potential AUTHENTIKRUD Customer

TTAB E-jects Three "E"-Prefix Marks as Merely Descriptive

"E" prefix marks are regularly "e-jected" by the Board under Section 2(e)(1) on the ground of mere descriptiveness, and it happened again to the applicants in three recent cases.

In In re EOS GmbH Electro Optical Systems, Serial Number 75722993 (October 22, 2004) [not citable], the Board affirmed a refusal to register E-MANUFACTURING for rapid prototyping equipment and related training and educational services.

Nexis evidence established that rapid prototyping involves a "highly automated computer-controlled system" used in the "manufacturing" of prototypes. The Board took judicial notice that the prefix "e" indicates a "computer-based version of some traditionally nonelectronic term, as e-mail, e-commerce, and e-money." It concluded that E-MANUFACTURING" describes a significant function of rapid prototyping apparatus that enables the computer-controlled manufacture of prototypes. The term also describes the subject matter of applicant's training and consulting services in the use of such apparatus. "

Applicant argued that the uses of "e-manufacturing" in the PTO's evidence related to business activities rather than manufacturing processes, but the Board brushed that point aside, observing that a term need not be in common usage to be merely descriptive. Moreover, even if Applicant were the first to use the term "e-manufacturing," that is not dispositive "where, as here, the term unquestionably projects a merely descriptive connotation."

In re Envirosolve Corp., Serial No. 76436149 (October 8, 2004) [not citable] involved the mark ECOC for "software which supports the manual entry of data into a designated form which can be transmitted and/or stored on computer based media." The prefix "E", of course, stands for electronic, and "COC" is an established abbreviation for "chain of custody." According to the Board, the term ECOC:

"would be immediately understood by the relevant consumers . . . as conveying information about a significant feature, function or purpose of applicant's identified goods -- which is to provide or facilitate the electronic chain of custody of data or information."

And in In re Advanced Lighting Technologies, Inc., Serial No. 76422584 (November 15, 2004) [not citable], the Board pulled the plug on this applicant's attempt to register the mark E-LAMP for metal halide lamps and lighting systems.

The PTO's evidence showed that an E-LAMP is a light bulb that includes an electronic component. Applicant argued that "the 'E' prefix would be understood by average purchasers as relating to computers or the Internet." The Board, however, pointed out that "E" is not limited to this meaning, and it noted that third-party advertising describes Applicant's E-LAMP product as a "Revolutionary Electronic System."

TTABlog Update: On January 13, 2005, the Board vacated the E-LAMP decision because it had not provided an opportunity for oral argument (which Applicant had requested). On April 21, 2005, after hearing oral argument, the Board reversed the refusal to register, as discussed here.

TTAB Gives Thumbs Up To WW2 Pin-Up Nose Art

The TTAB has reversed seven Section 2(a) refusals to register black-and-white drawings of Second World War airplane "nose art" as trademarks for printed matter, including posters and greeting cards. In re American Airpower Heritage Museum, Serial Nos. 76144075 et al. (November 18, 2004) [not citable].

The Examining Attorney contended that each of the marks falsely suggests a connection with pin-up artists Alberto Vargas (four marks) or Gil Elvgren (three). She submitted Internet evidence regarding World War II "nose art" and its sources, and copies of particular paintings by Vargas or Elvgren corresponding to each mark.

The Board cited Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 217 USPQ 505 (Fed. Cir. 1983) for a list of the elements necessary to establish a false-suggestion-of-a-connection claim under Section 2(a): it must be shown that (1) applicant's mark is the same as or a close approximation of the person's previously used name or identity; (2) the mark points uniquely and unmistakably to that person; (3) the person is not connected with the applicant; and (4) the person's name or identity is of sufficient fame that, when used in connection with Applicant's goods, a connection with that person would be presumed by customers. Here, three of the four requirements were not satisfied.

The Board concluded that the first element was not met because "there is scant evidence that the 'pin-up girl' painting(s) of either Vargas or Elvgren amounted to the artist's name or identity in the minds of consumers."

"The fact that one artist paints a particular picture which another artist copies to some degree does not establish that the original particular picture amounts to that artists's name or identity."

As to the second element, "the record clearly does not establish that 'pin-up girl' art in general is uniquely and unmistakably associated with either artist, Vargas or Elvgren." Numerous artists were involved in painting "pin-up girls," particularly in the 1940s, when Applicant's "nose art" designs were originally painted on airplanes.

The third element was met because Applicant and the two artists are not connected.

The fourth requirement was not satisfied because there was no evidence that the particular paintings that were the bases for the marks are "famous, and would be recognized by the purchasing public as identifying either Alberto Vargas or Gil Elvgren, such that a connection with the particular artist would be presumed."

Section 2(a) false connection refusals are seldom upheld, an exception being the citable APACHE case of a few months ago. In In re White, S.N. 78175476 (Sept. 8, 2004), the Board affirmed a Section 2(a) refusal to register the mark APACHE for cigarettes, finding that it falsely suggests a connection with the nine federally-recognized and variously-named Apache tribes.

In White, the Board applied its “fairly standard” analysis in ruling that APACHE “would be recognized as a name, or equivalent thereof, for each of the tribes;” that the mark points uniquely and unmistakably to the Apache tribes; that Applicant has no connection with the tribes; and that the name APACHE is of sufficient fame or reputation that a connection with the tribes would be presumed by consumers of cigarettes. The evidence showed that “Native Americans not only are engaged in large-scale marketing of cigarettes, but in manufacturing of Native American brands of cigarettes.”

The TTABlog®

Thursday, December 30, 2004

The TTABlog End-of-Year Index

Wednesday, December 29, 2004

Recommended Reading: Design Patents and “The Death of Gorham Co. v. White”

Tuesday, December 28, 2004

TTAB Blocks Half-Obliterated Design Mark

Monday, December 27, 2004

Paint Can Icon Gets TTAB Brush-Off

Sunday, December 26, 2004

Osama and the "Trademark Trial and Appeal Board"?

Thursday, December 23, 2004

TTAB Socks It To Norwegian Skier Vegard Ulvang

Wednesday, December 22, 2004

TTAB No Picnic For Teddy Bears

Tuesday, December 21, 2004

TTAB Says "Hasta la Vista" to PALABRA LISTA

Monday, December 20, 2004

CAFC Partially Reverses TTAB in Paris Ritz Oppositions

Friday, December 17, 2004

Fame of "PHYSIO-CONTROL" Accorded Dominant Weight in TTAB's Confusion Analysis

Thursday, December 16, 2004

TTAB Hands Alabama and Auburn "IRON BOWL" Defeat

Wednesday, December 15, 2004

Fashion-Savvy TTAB Says "No" To "NO-L-ITA"

Tuesday, December 14, 2004

Thirteen Section 66(a) Applications Published For Opposition Today

Monday, December 13, 2004

TTAB Finds "NOT MADE IN FRANCE" Not Funny

Friday, December 10, 2004

Virgin's Rights Intact After TTAB Tryst

Thursday, December 09, 2004

Ole! "RED RAVE" Sidesteps Charge Of "RED BULL"

Wednesday, December 08, 2004

Dallas Mavericks Lose Board Battle For "DEEP 3"

Tuesday, December 07, 2004

Madrid Section 66(a) Applications Still Dammed Up

Monday, December 06, 2004

Beauty and the Board: TTAB Says "MISS T-GIRL USA" Likely To Confuse

Friday, December 03, 2004

TTAB Finds No Use For "AUTHENTIKRUD"

Thursday, December 02, 2004

TTAB E-jects Three "E"-Prefix Marks as Merely Descriptive

Wednesday, December 01, 2004

TTAB Gives Thumbs Up To WW2 Pin-Up Nose Art

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