In A Citable Decision, TTAB Rules On Three Discovery Motions in Pioneer v. Hitachi Slugfest

In the Board's fourth citable decision of 2005, Japanese electronics giant Hitachi came out on top in a knock-down, drag-out discovery battle with fellow Japanese electronics giant Pioneer. Pioneer Kabushiki Kaisha v. Hitachi High Technologies America, Inc., 74 USPQ2d 1672 (TTAB 2005). Applicant Hitachi seeks to register the mark SUPERSCAN ELITE for audio and video systems, but Opposer Pioneer claims likelihood of confusion with and dilution of its registered trademark ELITE for audio and video equipment.


Pioneer also claims that Hitachi lacked a bona fide intention to use the SUPERSCAN ELITE mark, and as to that issue Pioneer noticed the depositions of six Hitachi employees. Hitachi contended the these depositions were duplicative, unnecessary, and vexatious, and it moved for a protective order under FRCP 26(c)(1). The Board found good cause for and granted the motion as to three witnesses: one had no "unique or superior personal knowledge of the facts," and two had no demonstrated knowledge relevant to the issue. The other three witnesses, however, "took an active role in generating information for others regarding the use of the SUPERSCAN ELITE mark;" therefore the Board denied Hitachi's motion in part. However, it ordered that these three depositions be limited to three hours per deponent, be limited to the issue of Hitachi's bona fide intent, and be conducted consecutively over one-and-one-half days.

Hitachi SUPERSCAN ELITE
In the second motion, Pioneer sought sanctions in the form of a judgment, pointing to Hitachi's failure to produce witnesses for scheduled depositions after Hitachi had filed a motion for a protective order but before that motion was decided. The Board ruled that Hitachi's conduct was not sanctionable.

Thirdly, Hitachi moved to compel production of certain documents relating to a survey commissioned by Pioneer. Automatic disclosure of expert reports is not required in TTAB proceedings (compare FRCP 26), but Hitachi served a Rule 34 request for production of documents and things relied up on by Pioneer's expert. Pioneer produced some documents, but it later claimed that other documents were not in its possession, custody, or control. By then, discovery had closed and it was too late for Hitachi to subpoena the documents from the expert. The Board again sided with Hitachi:

"Here, we find that Hitachi acted reasonably in assuming that documents related to the survey Pioneer commissioned would be in Pioneer's possession or control, and that Pioneer acted unreasonably in failing to inform Hitachi that they were not, thereby depriving Hitachi of the opportunity to timely seek a subpoena and obtain the documents by other means. A party may not mislead its adversary by stating that it will produce documents, and then fail to do so and claim that the documents are not within its possession or control."

The Board ordered Pioneer to produce the requested documents, if under its control, or file a declaration "with a full explanation of its request to [the expert] for copies of the responsive documents and the rational provided by [the expert] for any refusal to provide such copies." In the latter case, the Board will then suspend proceedings to allow Hitachi time to subpoena the documents.

Pioneer ELITE
Finally, the Board ordered discovery re-opened for purposes of the three depositions of the Hitachi employees and the production of survey documents by Pioneer.

TTABlog comment: Why, you might ask, was this case deemed citable? I think merely because it provides an example of the Board exercising its power under FRCP 26 to control discovery. The decision doesn't seem to break any new ground, nor involve a particularly interesting factual situation. If anyone has another idea, please let me know.

Text ©John L. Welch 2005. All Rights Reserved.

TTAB Affirms Refusal Of Insulated Mug Design As Devoid Of Secondary Meaning

Finding Applicant Pacific Market's Section 2(f) evidence completely inadequate, the Board affirmed a refusal to register the product configuration shown below as a trademark for "drinkware, namely insulated beverage containers." In re Pacific Market, Inc., Serial No. 75444515 (April 14, 2005) [not citable].


The Examining Attorney deemed the design to be a non-distinctive configuration, unregistrable under Sections 1, 2, and 45 of the Trademark Act. Pacific Market contended that its proofs established acquired distinctiveness.

The Board noted that "the burden of showing acquired distinctiveness in a product configuration is significant," citing In re Gibson Guitar Corp., 61 USPQ2d 1948, 1951 (TTAB 2001) and In re Ennco Display Systems, Inc., 56 USPQ2d 1279, 1283-84 (TTAB 2000).

Pacific offered the declarations of two employees, stating that the mug in question was sold to Starbucks, Target Stores, and Seattle's Best Coffee, that its shape is unusual, and that it was "specifically designed with the intention that it be a distinctive design in the marketplace." However, the Board noted that the record lacked any evidence that the shape is recognized by the trade or by the ultimate consumers as a trademark of Pacific.


Pacific provided sales figures of 150,000 units over a five-year period, but failed to provide "any context in which to assess this number." Given the size of the market in this country for travel mugs, the Board found those sales figure unimpressive. In any case, the Board observed that even if the amount of sales were significant, that does not mean that people recognize the product shape as a trademark.

Pacific did not provide information regarding promotional expenditures, nor did it point to any "look for" advertising. In fact, the Board noted out that the subject design is not even highlighted in Pacific's product brochure (depicted below).


Finally, the Board distinguished this case from In re Motorola, Inc., 3 USPQ2d 1142 (TTAB 1986), on which Pacific relied heavily. Motorola's unique design for a hand-held microphone was found to have acquired distinctiveness based on sales of 3 million relatively expensive units over a 25-year period, declarations from non-employees attesting to the distinctiveness of the product shape, and promotional materials prominently featuring the microphone configuration. Here, in contrast, competing products have a similar look, the subject design is not featured in promotional materials, and no evidence from non-employees referred to the distinctiveness of the design.

Consequently, the Board had little difficulty in affirming the refusal to register.

TTABlog comment: Curiously, the Board stated that "we clearly do not find this configuration to be inherently distinctive." The Board failed to note the Supreme Court ruling in Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 USPQ2d 1065, 1069 (2000) that product configurations can never be inherently distinctive. What's particularly odd is that the Board did cite Wal-Mart, but only for the proposition that consumers are not predisposed to "equate" product design with the source.

Text ©John L. Welch 2005. All Rights Reserved.

TTAB Sends Gillette Canada Packing In "ORAL MAX" Opposition

Gillette Canada Company (d/b/a Oral-B Laboratories) didn't look too sharp in its botched attempt to oppose an application to register ORAL MAX & Design for "electric toothbrush and dental flossing units." The Board dismissed the opposition in Gillette Canada Co. v. Robin Research Labs., Inc., Opposition No. 91124984 (April 12, 2005) [not citable] because Gillette Canada failed to get into evidence its registrations and failed to prove prior use of its marks.

(lined for the colors blue and yellow)
Gillette Canada pleaded likelihood of confusion with and dilution of its ORAL B and ORAL-B marks and claimed ownership of seven federal registrations for those marks. Applicant Robins Research, in its answer, admitted only that it owned the opposed application.

On the last day of its testimony period, Gillette Canada took the testimony of an employee of the Gillette Company (not of Gillette Canada), and filed the transcript and exhibits as its case-in-chief. Robins did not attend that testimony deposition, took no testimony of its own, and offered no evidence. Then, on the last day of its "rebuttal" period, Gillette Canada filed a notice of reliance on its registrations. However, that was way too late.


When it filed its notice of opposition, Gillette Canada attached plain copies of the registrations, not certified copies showing status and title. Then it neglected to prove ownership and current status of the registrations during its case-in-chief, either by way of testimony or via notice of reliance. See Rule 2.122(d) and TBMP Section 704.03(b).

The submission of a notice of reliance during rebuttal was ineffective for two reasons: (1) as mentioned, proof of ownership and status of registrations is part of opposer's case-in-chief, and (2) there was nothing for Gillette Canada to rebut because Robin Research did not submit any evidence.


As to the testimony of Opposer's witness, it did not establish the relationship between the Gillette Company and Opposer Gillette Canada Company, and in any case the witness gave no testimony regarding the registrations. There also was no testimony regarding use of specific marks for specific products, and no testimony of use of any marks prior to Robin's filing date.

In short, Gillette Canada's Section 2(d) claim was dismissed for failure to prove priority (either by way of registrations or use), and its dilution claim likewise failed because there was no showing that the ORAL-B marks became famous prior to applicant's filing date.

TTABlog comment: Isn't it time to revise the Rules to allow a party to attach copies of the entries from the TARR database, rather than require "status and title" copies of registrations? Does the PTO, when preparing "status and title copies," do anything other than check the TARR database anyway?

Text ©John L. Welch 2005. All Rights Reserved.

Leo Stoller At Forefront Of TTAB Drive For Increased Electronic Filing

My fellow Chicagoan Leo Stoller provides considerable content for the TTABlog, in part because he travels at the forefront of the TTAB's steady drive for increased electronic filing in Board proceedings. Okay, maybe he's the drivee and not the driver, but nonetheless . . . .

Route 66 -- ChicagoClick on photo for larger picture.
Two months ago, in Stoller v. Northern Telepresence Corp., Opposition No. 91162195, certain "glaring discrepancies" in the mailing of Mr. Stoller's requests for extension of time to oppose led the Board panel to order that all subsequent papers in that proceeding be filed via ESTTA. (TTABlogged here).

This month, in Central Mfg. Co. v. Dreamworks L.L.C., Opposition No. 91156858 (April 6, 2005), TTAB Interlocutory Attorney Cindy B. Greenbaum issued a similar order, requiring Stoller's company, Central Mfg. Co., to file all of its papers via ESTTA. Again, questions arose regarding the dates when Central had mailed certain documents:

". . . the Board recognizes that on at least two occasions, the Board has not received copies of opposer's filings. In fact, with respect to applicant's motion to join, the Board received applicant's reply and supplement thereto on April 1, 2005 and April 4, 2005, respectively, but, as noted above, the Board remains unsure whether opposer actually filed a response, and/or whether such response is timely. The Board also notes that applicant has used the Board's electronic filing systems (ESSTA) [sic!] for all filings in this matter, and the Board has had no problems receiving applicant's filings."

"In an effort to promote efficiency and maintain control over the Board's docket," the Board ordered Central to use ESTTA for all future filings in the opposition.


The Board's reasoning in ordering Stoller and Central to file via ESTTA applies in good measure to all Board proceedings. In every case, ESTTA allows the Board more efficient control over its docket. ESTTA also provides the same benefits to the involved parties: increased efficiency and control over their own dockets. Certain TTAB documents (e.g., oppositions to Madrid-based applications, as well as requests for extension of time to oppose such applications*) already must be filed electronically, and it seems inevitable that before too long the Board will require virtually all documents to be filed in electronic form.

One problematical area, however, is the filing of confidential documents. As the PTO website warns, ESTTA should not be used for such filings:

Board files are government records available to the public for inspection and copying. Parties desiring to file confidential documents in a Board proceeding may only do so pursuant to a court order, an order of the TTAB, or a stipulation of the parties which permits such filings. Confidential documents must be filed under separate cover as prescribed by Trademark Rule 2.126(d). DO NOT USE ESTTA TO FILE CONFIDENTIAL DOCUMENTS; such filings should be made in paper only. Failure to follow the proper procedure for filing confidential documents may result in public disclosure of the papers. *** For more information on filing confidential materials, see Trademark Rule 2.27(3), 2.126(d); TBMP § 412.04.

A redacted copy of the confidential document must also be furnished, and it may be filed electronically via ESTTA. Another alternative to paper filing may be filing on a CD-ROM. (See Rule 2.126).

_______________
* See the Board's recent citable decision in In re Börlind Gesellschaft für kosmetische Erzeugnisse mbH, 73 USPQ2d 2019 (TTAB 2005), TTABlogged here.


Text and Chicago photograph ©John L. Welch 2005. All Rights Reserved.

Finding Dumbbells and Soccer Goals Unrelated, TTAB Reverses 2(d) Refusal

Having watched many soccer games, I can attest that soccer goals are occasionally scored by dumbbells, and thus soccer goals are (in a broad, sporting sense) not unrelated to dumbbells. But that wasn't quite the question before the TTAB in In re Hoist Fitness Systems, Inc., Serial No. 76428061 (March 30, 2005) [not citable]. The Board reversed a Section 2(d) refusal to register the mark QUIK-CHANGE for dumbbell systems, finding the mark not likely to cause confusion with the registered mark KWIK CHANGE for size-adjustable soccer goals.

QUIK-CHANGE dumbbell system
The Examining Attorney contended that the marks are virtually identical and the goods would be found in the "same sporting goods market" as registrant's soccer goals. She relied on third-party trademark registrations and applications that cover both exercise and soccer equipment, and on Internet search results for websites selling both types of goods.

Hoist Fitness, in a feeble rejoinder, pointed out the obvious: "the marks are spelled differently" and the "equipment needed for playing soccer and weight training are very different."

KWIK CHANGE adjustable soccer goal
Fortunately for Hoist, the Board did the heavy lifting in this case. Although it agreed with the PTO that the marks have the same meaning and pronunciation, the Board noted that the cited mark is on the Supplemental Register:

"We, therefore, take into consideration the descriptiveness of the cited mark as well as the fact that applicant's mark is at least suggestive of the fact that its weights may be changed quickly."

Turning to the issue of relatedness of the goods, the Board pooh-poohed the PTO's third-party application and registration evidence. First, it pointed out that intent-to-use applications and non-use based registrations are not entitled to much weight. The most relevant registrations (WILSON, COLLEGIATE PACIFIC, and UNILETTE) are use based, but:

"these appear to be house marks. While they may show that there is some relationship between sporting goods, it hardly is evidence that goods as different as adjustable soccer goals and a dumbbell system are closely related."

As to the Internet excerpts, the Board found them "too cryptic to demonstrate that soccer and exercise equipment are related." Moreover, the evidence that soccer and exercise products are sold at the same websites like e-bay "does not show that consumers would expect the sources of these products to be associated or related."

"Websites like conventional stores often serve to bring together various products from unrelated sources. The mere fact that goods are sold in the same stores or on the same website does not establish that the goods are related, much less closely related."

In view of the "nature of the marks" and "the fact that the goods are not closely related," the Board concluded that confusion was not likely.

Text ©John L. Welch 2005. All Rights Reserved.

TTABlog: Friday Flotsam and Jetsam

It's Earth Day, and I feel I should be sending a greeting card (on recycled paper, of course), but to whom? Anyway, this seems like a good time to clean out my "things-to-blog" folder.

**** The paper I delivered on April 14, 2005, at that ABA 20th Annual Intellectual Property Law Conference in Arlington, VA, is now available for downloading (in pdf form): "The TTAB in 2004: What Was Hot, What Was Not." I shared the podium with TTAB Judge Carlisle Walters, who reviewed the workings and benefits of ESTTA (the Board's electronic filing system), noted the steady increase in the number of electronic filings, pointed out that electronic filing is required in certain circumstances (see the Madrid-related rule changes), and encouraged use of ESTTA whenever possible.

Boston Public GardensClick on photo for larger picture
**** I am pleased to note that the TTABlog was included in the presentation "60 Sites In 60 Minutes" at the ABA TECHSHOW 2005 Conference in Chicago earlier this month. (I'm particularly pleased that the blog made the "serious" list rather than the "offbeat" list.) The blogs and websites on the lists are well worth checking out; and don't miss the "Hall of Fame" websites from prior years.

The Art Institute of ChicagoClick on photo for larger picture
**** Turning to perhaps more substantive matters, on April 19, 2005 (Appeal No. 05-1165), the CAFC dismissed the appeal in the ARCHIE comic books v. ARCHÉ cosmetics case, TTABlogged here. The reason for the dismissal is not revealed, but my guess is that the appellant calculated that the likelihood of success on appeal was not great.


**** Finally, on April 19th, the U.S. House of Representatives passed the new dilution bill, The Trademark Dilution Revision Act of 2005 (H.R. 683), by a vote of 411-8. This new bill substantially re-writes Section 43(c) of the Trademark Act. As discussed in the House Report, the bill was spurred by the Supreme Court's Victoria's Secret decision, which held that (in a civil action) a claim under the FTDA requires a showing of actual dilution, not just a likelihood of dilution. The proposed new Act specifies that relief is available if dilution is likely.

In addition, the bill plugs another hole in the FTDA by making blurring by tarnishment actionable. Among other things, the bill also requires that a mark must be "widely recognized by the general consuming public" in order to qualify as famous, sets forth a list of factors to be considered in determining dilution by blurring, and provides an express exclusion for parody, criticism, and commentary.

The CapitolClick on photo for larger picture
In the TTAB context, the bill amends Sections 13 and 14 of the Trademark Act to specify that the "likelihood of dilution" standard applies in opposition and cancellation proceedings, and that blurring by tarnishment is also an available ground. The TTAB had already concluded that under the current version of the FTDA, likelihood of dilution is the applicable standard (at least when the challenged mark has not been put into use). In that regard, see Section II. A of my "TTAB in 2004" article, linked above.

Senate passage of this bill is fully expected, although when that will happen remains to be seen in light of current Congressional controversies.

Text and three photograph ©John L. Welch 2005. All Rights Reserved.

TTAB Denies Leave To File Amicus Brief in "SPAM ARREST" Cancellation Proceeding

Hormel Foods Corporation and Hormel Foods, LLC, owners of 10 registrations for the mark SPAM for a variety of meat products and collateral items, are seeking to cancel a registration owned by Spam Arrest LLC for the mark SPAM ARREST for "computer software, namely, software designed to eliminate unsolicited commercial electronic mail."


Spam Arrest moved for summary judgment on all pleaded grounds (likelihood of confusion, dilution, genericness, and mere descriptiveness), and on its affirmative defenses of laches and estoppel.


Along came SpamCop.Net, seeking leave (here) to file an amicus brief in support of Spam Arrest's summary judgment motion. The Board ruled, more or less, that Three Amigos is one too many. Hormel Foods Corp. v. Spam Arrest LLC, Cancellation No. 92042134 (March 31, 2005) [not citable].


The Board observed that "[t]he privilege of being heard amicus rests in the discretion" of the Board.

"In determining whether to grant leave, the Board considers whether the proposed brief will aid the Board in resolving issues of law, whether the moving party is effectively seeking a role in the proceeding beyond arguing questions of law, and whether the moving party is asserting prejudicial and partisan arguments of fact."

Noting that SpamCop is party to a proceeding in which the Petitioners here oppose registration of the mark SPAMCOP on essentially the same grounds as asserted here, the Board denied Spamcop's motion:

"Unquestionably, SpamCop's brief represents an improper attempt to intervene and persuade the Board to subscribe to a factual position that would unduly prejudice the petitioners in this case and in the related opposition proceeding as well."

The Board also denied Spam Arrest's summary judgment motion, finding genuine issues of material fact as to the commercial impression of the SPAM ARREST mark, the fame of the SPAM mark in relation to goods other than meat products, the relatedness of the goods, the genericness and/or descriptiveness of the SPAM ARREST mark, the alleged economic harm due to the supposed dilution of the SPAM mark, and the alleged acquiescence of Hormel.

Comment: The TTABlog wonders why Hormel has standing to raise the issues of genericness and/or mere descriptiveness of the SPAM ARREST mark. Hormel doesn't claim to use the SPAM mark in connection with computer software or anything like it. If SPAM ARREST does not dilute the SPAM mark and doesn't cause confusion, what harm can Hormel claim? Others in the computer field would have standing to challenge registration of a generic or merely descriptive term, but why Hormel?

Text ©John L. Welch 2005. All Rights Reserved.

Reversing 2(d) Refusal of "DELMONICO'S," TTAB Requires "Something More"

In restaurant/food product cases, CAFC precedent requires "something more" than mere similarity or identity of the marks to support a likelihood of confusion refusal. The PTO's failure to provide that "something more" led to reversal of its Section 2(d) refusal of the mark DELMONICO'S for restaurant services. In re Southwestern Management, Inc., Serial No. 78271067 (March 28, 2005) [not citable].

Delmonico's Italian SteakhouseUtica, New York
The PTO contended that the applied-for mark was likely to cause confusion with two DELMONICO registrations owned by different entities: the first for macaroni, spaghetti, and noodles; and the second for alimentary pastes. The TTAB, however, hungered for more. Relying on the CCPA's 1983 Jacobs decision, and the Federal Circuit's 1993 Lloyd's and 2003 Coors decisions, the Board asserted:

"Our primary reviewing court has made it abundantly clear on numerous occasions that 'to establish likelihood of confusion a party must show something more than that similar or even identical marks are used for food products and for restaurant services.'" [emphasis in original]

(Click on photo for larger picture.)
The Board observed that in only two situations has the appellate court found that "something more:" first, if the registered mark is not only identical to the applied-for mark, but also is "well known and famous" (Jacobs); and second, if the registered mark is identical and "particularly unique" (Mucky Duck).

The Board noted that here Applicant submitted more than 25 Internet references showing use of the term DELMONICO for a "wide array of different food items or food recipes." Moreover, it pointed out that the two cited registrations are owned by different entities. Thus the cited marks could not qualify as either "well known and famous" or "unique." The Board consequently ruled that, even though the marks at issue are "essentially identical," the Examining Attorney failed to provide the required "something more" to support her Section 2(d) refusal.


Text ©John L. Welch 2005. All Rights Reserved.

TTAB Affirms Refusal To Register "Whirlpool" Background Design

Optiva Corporation's application to register the "whirlpool" design shown immediately below as a trademark for toothbrushes went right down the drain in In re Optiva Corp., Serial No. 76143014 (April 5, 2005) [not citable].

application drawing
In a rambling opinion, the Board affirmed the PTO's refusal to register on two grounds: (1) the design does not function as a trademark under Sections 1, 2, and 45 of the Trademark Act; and (2) Optiva failed to comply with the PTO's requirement for a substitute specimen showing use of the mark as it appears on the application drawing.

Optiva described its design as follows: "[t]he mark consists of a circular whirlpool design, with a plurality of light and dark sections, indicating separate lines." The original specimen of use comprised the packaging box for an electric toothbrush.

original specimen
The Examining Attorney contended that the whirlpool design "is simply an ornamental background," and does not function as a source indicator. Optiva asserted that its design is registrable because it is "uncommon," "arbitrary," "complex," "fanciful," and "distinctive."

Optiva also submitted a substitute specimen, which the Examining Attorney found to suffer from the same lack of distinctiveness.

substitute specimen
The Board noted that Optiva's packaging refers to its product as a "sonic toothbrush" and emphasizes its sonic wave technology, leading the Board to agree with the PTO in concluding that:

"the interplay of the words and images on applicant's package make it most likely that its design - if consumers even cogitate over its significance instead of glossing over it as mere background ornamentation - will be perceived as a highly suggestive representation of the touted sonic waves."

The Examining Attorney, in the alternative, contended that even if the whirlpool design should be found to function as a trademark, Optiva failed to provide a specimen showing use of the design as it appears on the drawing. The Board posed the question as follows: "The determinative factor is whether or not the subject matter in question makes a separate and distinct commercial impression apart from the other element(s)." Relying on the CAFC's "medicine dropper" ruling and its own "cup and saucer" and "ice skater" decisions (illustrated in the opinion), the Board held that the PTO was correct in requiring a new specimen:

"Insofar as the involved design will be perceived as representing sonic waves, we find that the foreground image of the automatic toothbrush head is an integral feature of the total imagery. Seen in this light, the toothbrush head combined with the representation of a sonic wave, suggest a dynamic, three-dimensional activity. * * * On the other hand, taking the toothbrush head out of this combined graphic creates a very different image."

The Board's treatment of this "whirlpool" design is congruent with its decision in the recent Torre case, blogged here, in which the Board affirmed a refusal to register a "substantially obliterated" background design in the form of a "swirl."

The TTABlog poses the following question: does the fact that these whirlpool/swirl designs were refused registration in the northern hemisphere suggest that the designs would be registrable in the southern hemisphere? I.e., the entire flow of the case would be reversed?

Text ©John L. Welch 2005. All Rights Reserved.

Appellate Court Hears Argument In "REDSKINS" Appeal

On April 8, 2005, the United States Court of Appeals for the District of Columbia Circuit heard oral argument in an appeal from the decision in Pro-Football, Inc. v. Harjo, 68 USPQ2d 1225 (D.D.C. 2003). The U.S. District Court for the District of Columbia, in an appeal from the TTAB by way of civil action under Section 1071(b)(1) of the Trademark Act, granted summary judgment reversing the Board's decision in Harjo v. Pro-Football, Inc., 50 USPQ2d 1705 (TTAB 1999).

Susan Shown Harjo
The TTAB had granted Harjo's petition for cancellation of six registrations for marks containing the word REDSKINS (or a variation thereof) for football entertainment services. It found that the marks "may disparage" Native Americans or "bring them into contempt or disrepute" in violation of Section 2(a) of the Trademark Act.

The District Court ruled that the TTAB's finding of disparagement was not supported by substantial evidence, and further ruled that the doctrine of laches precluded consideration of the case.


A decision from the Court of Appeals is expected in a few months.

Text ©John L. Welch 2005. All Rights Reserved.

CAFC Affirms Dismissal Of 5 "MASTER" Cancellation Petitions On 2(d) And Equitable Grounds

The CAFC has affirmed the TTAB's decision in Master Builders, Inc. v. Polymerica, Inc., Cancellations Nos. 92030319 et al. (February 24, 2004) [not citable]. On April 14, 2005, the appellate court issued its per curiam ruling under Rule 36 (without opinion) in Appeal No. 04-1372 .
Petitioners sought cancellation of five Polymerica registrations for similar "globe" design marks that incorporate the words MasterProof, MasterQuartz, MasterShield, MasterSpec, and MasterPiece, for epoxy surface coating materials for concrete and other floors. [One of the five marks is shown immediately above.]


Petitioners relied on 13 registrations for marks that include the word "MASTER" for additives for concrete mix, including MASTER BUILDERS, MASTERSEAL, and MASTERPLATE, and claimed a "family" of "MASTER" marks.

In its 64-page decision, the Board extensively reviewed the record evidence in light of the du Pont factors. It found "key factors" to be "the dissimilarities of the marks, the sophistication of the purchasers and ultimate consumers, the technical nature of the respective goods and the conditions of sale." The Board also noted the lack of actual confusion despite the parties' co-existence in the market since 1990. Finally, it concluded that there existed "at most a de minimis chance" of confusion.

The Board rejected Petitioners' "family of marks" claim, both because Petitioners "have not promoted the term 'MASTER' as the 'family surname,'" and because the term "MASTER" is not sufficiently distinctive to qualify as the "surname" of a "family" of marks.

In addition to the Section 2(d) ruling, the Board also ruled that the Petitioners' consolidated cancellation petition was barred by laches and equitable estoppel. Master Builders' parent company had written to Polymerica in 1994 demanding that use of three of the marks at issue be terminated. Petitioners took no further action until 2000, when they filed the petitions for cancellation. Meanwhile, Polymerica had filed for and obtained the registrations at issue and had "actively developed its business and its products." The Board found that Polymerica was materially prejudiced by the delay (laches) and by Petitioners' misleading conduct, on which it had relied (estoppel).

Text ©John L. Welch 2005. All Rights Reserved.

Defendants In Chicago Lawsuit Charge Leo Stoller With TTAB Abuses As Part Of "Extortionate Protection Scheme"

In a civil action currently pending in the United States District Court for the Northern District of Illinois, the Defendants have charged Leo Stoller with an "extortionate protection scheme" that includes "abuse of the legitimate processes for trademark conflict resolution through the . . . U.S. Patent and Trademark Office." Central Mfg. Co. et al. v. Pure Fishing, Inc. et al., Case No. 05-c-0725 (N.D. Ill.).

Alleged office of Leo Stoller7622 West Belmont Avenue, Chicago 60634(click on photo for larger picture)
In their complaint, Plaintiffs accuse the Defendants of infringement of the mark STEALTH by reason of the sale of fishing line under the SPIDERWIRE STEALTH name. Stoller and Central claim rights in the STEALTH mark for fishing tackle floats (U.S. Reg. No. 1,766,806), and assert that Plaintiff Lindy-Little Joe, Inc. of Brainerd, Minnesota, is the "exclusive license for use of the mark STEALTH on fishing lures."


In their 35-page Answer and Counterclaims, accompanied by 32 exhibits, Defendants Pure Fishing, Inc., Fishing Spirit, Inc., and FishUSA, Inc. allege, inter alia, that the acquisition of this registration was "unfair and unlawful . . . in extortionate settlement of sham litigations," that fraudulent Section 8 and 15 Declarations and a fraudulent renewal application were filed to maintain the registration in force, and that any rights in the mark were abandoned due to naked licensing. Defendants' counterclaims include a claim for unfair competition that (over nine pages) alleges that Stoller has engaged in a "pattern of unlawful activity" involving his acquisition of federal trademark registrations, including various activities in TTAB proceedings.


In their Prayer for Relief, Defendants seek not only the usual forms of relief, but also "[a]n Order piercing the corporate veil and levying execution" against such trademark properties "as are sufficient to satisfy the judgment in S Industries, Inc. v. Centra 2000, Inc., 1998 U.S. Dist. LEXIS 10649 (N.D. Ill. 1998) [see Exhibits D19-20], which unsatisfied judgment Defendant Pure Fishing, Inc. claims to own by assignment.

Copies of the Answer and Counterclaims and referenced exhibits are available for downloading here in .pdf form:

• Answer and Counterclaims (filed April 11, 2005)
• Exhibits D1-5
• Exhibits D6-10
• Exhibits D11-15
• Exhibits D16-24
• Exhibits D25-32

Text ©John L. Welch 2005. All Rights Reserved.

CAFC Affirms TTAB's "BIKESOURCE" Res Judicata Decision

The CAFC has affirmed the TTAB's decision in Sports Machine, Inc. v. Midwest Merchandising, Inc., Opposition No. 91122948 (November 20, 2003) [not citable]. The appellate court issued its per curiam decision under Rule 36 (without opinion) on April 11, 2005 in Appeal No. 04-15 25.


Midwest Merchandising sought to register the mark BIKESOURCE in typed form for retail bicycle store services. Sports Machine opposed on the ground of Section 2(e)(1) mere descriptiveness. In a related cancellation proceeding between the same two parties, the Board had found here that the mark BIKESOURCE in the stylized form shown below was suggestive, not merely descriptive, of the same services.


Midwest Merchandising therefore moved for judgment in the opposition on the ground of res judicata. Sports Machine desperately contended that, just because the mark BIKESOURCE in stylized form was found to be suggestive, that does not necessarily mean that BIKESOURCE in block letter form is not merely descriptive.

The Board rode with Midwest. It ruled that the block letter version of BIKESOURCE and the "minimally stylized block capital letters" version of the registration "are considered to have the same commercial impression." Furthermore, the opposed application and the challenged registration contain identical recitations of services. Thus, the Board observed, the evidence of descriptiveness would be identical. It concluded that the claim Sports Machine asserted in the opposition "is identical to the one that it asserted unsuccessfully in the cancellation proceeding and that opposer is not entitled to relitigate that claim."

Sports Machine was undeterred by these two defeats. It requested reconsideration, and after that failed, it appealed. When the dust settled, Sports Machine was left with four flat tires and nowhere to go.

Text ©John L. Welch 2005. All Rights Reserved.

TTAB Shuts Down Texas 2(d) "HOME SHOW" Showdown

In this one-sided showdown at the 2(d) corral, Houston-based International Exhibitions was shot down by the first DuPont factor in its opposition to registration of the mark BUILDING A BETTER HOME SHOW for "arranging and conducting trade shows in the field of home and garden products and services." International Exhibitions, Inc. v. A.S.P. Inc., Opposition No. 91159160 (March 29, 2005) [not citable].


San Antonio's A.S.P. Inc. got the jump on International Exhibitions by firing off a summary judgment motion. In response, International shot nothing but blanks: namely, the six registered marks listed below (the first five for trade show services, and the sixth for a magazine).

• FORT WORTH HOME & GARDEN SHOW ("SHOW" disclaimed)
  
• DALLAS HOME & GARDEN SHOW ("SHOW" disclaimed)
  
• TEXAS HOME & GARDEN SHOW ("HOME & GARDEN SHOW" disclaimed)
  
• VACATION, LEISURE & OUTDOOR SHOW BY IEI & Design ("VACATION, LEISURE & OUTDOOR SHOW" disclaimed)
  
  
  
• HOUSTON HOME SHOW ("HOME SHOW" disclaimed)
  
• TEXAS HOME AND GARDEN LIVING ("TEXAS HOME & GARDEN" disclaimed)
  

International audaciously claimed a famous "family" of "HOME SHOW" marks (even though only one of the six registered marks includes that phrase). A.S.P. relied on Internet excerpts, newspaper and magazine articles, and third-party registrations in contending that "HOME SHOW" is generic, and it argued that International's marks were otherwise dissimilar to its mark.

The Board sided with A.S.P., finding the first DuPont factor -- the similarity or dissimilarity of the marks -- to be dispositive. It deemed the term "HOME SHOW" and the terms "HOME" and/or "SHOW" to be "at best, descriptive for the parties' goods and services."

". . . the remaining portions of the parties' marks are the dominant portions upon which purchasing customers would rely to distinguish the sources of their respective goods and services. Those dominant portions of the parties' marks are completely dissimilar and readily distinguishable in all respects."

That was enough for the Board to conclude that "the first DuPont simply outweighs all of the others that might be relevant to this case."

The TTABlog suggests that if you are going to get into a trademark turf battle in Texas, make sure your guns are loaded or you may just meet your Alamo.

Text ©John L. Welch 2005. All Rights Reserved.

TTAB Says "HIGH-HEELED HANDBAGS" Merely Descriptive Of Handbags With High Heels

New York artist Shoshanna Smith was tripped up in her attempt to register the mark HIGH-HEELED HANDBAGS for, inter alia, handbags made from high-heeled shoes. The Board affirmed a Section 2(e)(1) mere descriptiveness refusal in In re High-Heeled Creations, LLC, Serial No. 76306141 (March 31, 2005) [not citable].


The Examining Attorney relied on dictionary definitions of the constituent words, on NEXIS excerpts describing applicant's handbags as "real shoes made into purses," on several newspaper articles, and on Applicant's own specimens of use (see photo below).

Teetering on the brink of defeat, Applicant offered arguments that some might call "nonsense on stilts:" that the mark is not descriptive, but rather is an "evocative mark, calling to mind a sexy image;" that "the idea of this product is so unique that people generally cannot picture the handbags even after the concept of shoes as handbags is orally described;" that "the mark would be a poor descriptor even if that were its function;" and that the concept of turning shoes into handbags "has been described in the industry as award winning and utterly original and part of fashion history." Finally, Applicant pointed out that not all of its handbags have high heels.


The Board was not knocked off its feet by Applicant's arguments. It observed that a term that merely describes the form or shape of a product, or a significant feature of a product, is merely descriptive. The fact that not all of the identified products have that form or feature is "irrelevant."

"We do not take issue with the contention that the shape of applicant's handbags is unusual and that the concept of a shoe functioning as a handbag is innovative or unique. The fact remains, however, that purchasers of this style of handbags would clearly understand the descriptive meaning of HIGH-HEELED HANDBAGS in relation to those goods. Anyone who produces handbags with the high heel of a shoe on it, as unusual as that may be, should be entitled to describe its handbags as having high heels or as "high-heeled."

This Board decision is not likely to cause TTABlog readers to kick up their heels, but then again, how many TTAB decisions do?

Text ©John L. Welch 2005. All Rights Reserved.

TTAB Panel Requires Electronic Filing While Dismissing Stoller "DARKSTAR" Opposition

The TTAB is moving inexorably toward mandatory electronic filing. Last fall’'s Madrid rule changes gave the Board the opportunity to introduce various provisions requiring (e.g., here) or facilitating filing via ESTTA. In a recent ruling in a Leo Stoller opposition, it took another step in the ESTTA direction by requiring that the parties file all subsequent papers electronically. Stoller v. Northern Telepresence Corp., Opposition No. 91162195 (February 11, 2005) [not citable]. One small step for a Board panel, one giant leap toward ESTTA?


In an order granting Northern's motion to dismiss Stoller's opposition as a nullity (more below), the Board exercised its "inherent authority to manage the cases on its docket" in order to "simplify matters" and "avoid unnecessary effort by the parties and undue delay." It ruled that it would "consider only those papers filed herein via the ESTTA system." Thus, for example, any request for reconsideration or notice of appeal would have to be filed electronically.

The genesis of that ruling, and the basis for dismissal, was Opposer Stoller's bumbling attempt to file a request for an extension of time to oppose Northern's application to register the mark DARKSTAR for infrared night vision systems. Stoller filed three different paper requests for a 90-day extension of time to oppose. The first was unsigned, bore a typed February 25, 2003 mailing date, and arrived at the TTAB more than one month after the deadline for opposition. When the Board allowed Stoller time to submit a signed copy of the first request, he submitted a signed paper having an even later mailing date. A third, signed request accompanied the Notice of Opposition and bore the same mailing date as the first.

The Board noted the "glaring discrepancies" among the three papers:

"Put simply, the record does not support a conclusion that an extension request bearing a signed certificate of mailing was filed on or before the statutory deadline of February 27, 2003. Thus, potential opposer missed the statutory deadline to file an opposition."

Of course, Mr. Stoller has filed an appeal from the Board's dismissal (Appeal No. 05-1320, docketed April 5, 2005). And he still has the remedy of a petition for cancellation should Northern’'s application ever ripen into a registration.

After perusing this Board decision, TTABlog readers will agree that mandatory electronic filing is the way to go. We love you, ESTTA!

Text ©John L. Welch 2005. All Rights Reserved.

VRBIA Appeals TTAB's "NOT MADE IN FRANCE" Decision

TTABlog readers will recall the NOT MADE IN FRANCE decision, blogged here, in which the Board affirmed a Section 2(e)(1) refusal, finding the mark merely descriptive of certain clothing items. In re VRBIA, Inc., Serial No. 78263738 (December 3, 2004) [not citable].


The Board rejected VRBIA's principal argument: 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."

VRBIA will now have the opportunity to test the sense of humor of the CAFC, in Appeal No. 05-1316, docketed on April 6, 2005.

TTABlog update: The appeal was dismissed on May 14, 2005 because it was untimely filed.

Text ©John L. Welch 2005. All Rights Reserved.

Another CAFC Defeat For Frequent TTAB Litigant Leo Stoller

Leo Stoller fans will note today's non-precedential CAFC decision in Stoller v. Hyperstealth Biotechnology Corp., Appeal No. 05-1040 (April 8, 2005).


Hyperstealth filed an application to register the mark HYPERSTEALTH for a "therapeutic compound which is taken orally in either liquid or solid form and releases oxygen after consumption" (class 5) and for "passive negative ion generators and hyperbaric oxygen chambers for therapeutic medical use" (class 10). Leo Stoller opposed only as to the compound in class 5, claiming rights in the mark STEALTH for various medical devices. When Applicant filed an abandonment of its application as to the class 5 goods, the Board sustained the opposition as to those goods but indicated that the application would be forwarded to the ITU branch for issuance of a Notice of Allowance as to the remaining goods.

Stoller then sought re-consideration, strangely contending that the application should be returned to the Examining Attorney as to the Class 10 goods. The Board denied the request, pointing out that there is "no provision" for such an action, and that a multiple class application is in effect "a series of applications to register the mark in each international class."

On appeal, Stoller switched to a bizarre res judicata and collateral estoppel argument, contending that his success in opposing the class 5 goods applies to the class 10 goods as well. The court disagreed, pointing out that, "[s]ince the question of the likelihood of confusion as to the Class 10 goods presents a different question of fact from the likelihood of confusion as to the Class 5 goods," the causes of action are different and res judicata does not apply. As to collateral estoppel, no particular issues were fully litigated, and therefore that doctrine is likewise inapplicable.

The Board pointed out that Stoller's remedy is to seek cancellation of any registration that issues as to the class 10 goods. The odds seem pretty good that Mr. Stoller will do just that.

Text ©John L. Welch 2005. All Rights Reserved.

TTAB Affirms 2(e)(4) Surname Refusal of "EBNER"

The Board wasted little time in affirming the PTO's Section 2(e)(4) refusal to register the mark EBNER (in the slightly stylized form shown in the photo) for surgical instruments, namely, curettes. In re Maxilon Laboratories, Inc., Serial No. 78248647 (March 9, 2005) [not citable].


The Examining Attorney made out a prima facie case by submitting 1,825 "Ebner" surname listings from the USFIND database, Internet printouts showing use of "Ebner" as a surname, and so-called negative dictionary evidence.

Maxilon offered the superficially attractive but ultimately futile argument that, of the 123 million listings in the USFIND database, the "Ebner" listings "constitute a mere 0.000014%." The Board noted that there is no "magic number" of directory listings required to establish a "prima facie surname case."

Maxilon also argued that "Ebner" has significance in the medical field, pointing to medical dictionary definitions for "Ebner's Glands" and "Ebner's Reticulum." The Board noted, however, that it is common for human anatomical parts, diseases, etc., to be named after people. In fact the two aforementioned anatomical parts were named after an individual with the surname Ebner.

Applicant further contended that "Ebner" is a "coined" German term, but the Board observed that there is no evidence of record that "a significant number of purchasers of applicant's type of goods would have sufficient familiarity with the German language that 'Ebner' would be perceived as a German term or variation of a German word."

Finally, the Board noted (without much emphasis) that one of Maxilon's founders is named Peter Ebner.


The Board apparently felt no need to consider my favorite 2(e)(4) factor: whether the mark has the "look and feel" of a surname. The mark EBNER reminds me of the former baseball player named Richie Hebner, who enjoyed a major league career spanning some eighteen years. I can still hear my baseball-loving British friend, a Pirates fan, shouting: "Good show, 'ebner, good show!"

Text ©John L. Welch 2005. All Rights Reserved.

Affirming 2(d) Refusal, TTAB Pulls Plug On Gibson Guitar's "LP" Application

March was a TTABad month for Gibson Guitar Corp. The company began by losing a Section 2(d) opposition to string-maker J. D'Addario & Co. (blogged here), and ended by losing its appeal from a 2(d) refusal of the mark LP for electric guitars. In re Gibson Guitar Corp., Serial No. 76230196 (March 31, 2005) [not citable].

Giovanni Hidalgo
The Examining Attorney contended that Gibson's mark was likely to cause confusion with six registered marks containing the letters LP "as their dominant elements," owned by Kaman Music Corporation (d/b/a Latin Percussion) for various percussion instruments. The Board focused particularly on the two Kaman marks shown below:


Gibson argued that the goods are too dissimilar to support a finding of likelihood of confusion, but third-party registrations and website excerpts submitted by the Examining Attorney led the Board to conclude otherwise. Moreover, as the Board observed: "it is common knowledge that any rock band needs, at a minimum, a guitar and a set of drums."

As to the marks, the Board not surprisingly found them similar in overall commercial impression; it noted that the circle background of the Kaman marks is "common and ordinary" and of "no real trademark significance." As to connotation, Gibson asserted that LP means "Les Paul" for guitar purchasers (while LP means LATIN PERCUSSION for purchasers of percussion instruments). The Board reviewed Gibson's scanty evidence, which included uses of the letters "LP" as a model designation for Les Paul guitars, and was not impressed: "we cannot conclude that consumers, seeing LP used in connection with guitars in the manner shown in the documents of record, would immediately understand it to mean "Les Paul.'"

Les Paul
Gibson argued that Kaman always uses the name LATIN PERCUSSION with its products, while its own products always include the name LES PAUL. The Board, however, noted that it must consider the marks as shown in the subject application and registrations. In addition, there is no requirement that Gibson always use LES PAUL with the applied-for mark, nor that Kaman always use LATIN PERCUSSION with its registered marks.

Finally, Gibson pointed to its purported 34 years of use of the LP mark without actual confusion, but that argument failed to strike a responsive chord. The Board noted that Gibson's application was filed based not on actual use, but on intent-to-use. Although Gibson may have used LP as a model designation, that was not trademark use and it has no import here.

TTABlog comment: Maybe the Board should have deemed this decision "citable," in the hope that it would deter a certain guitar company from ever again trying to register a model designation as a trademark.

Text ©John L. Welch 2005. All Rights Reserved.

Reading Material From The IP/Updates Blog

Bill Heinze's excellent IP/Updates Blog provides links to two publications that will be of interest to TTABlog readers:

• The March/April 2005 issue of WIPO Magazine (here).
  
  
• "Trademark Licensing Consideration Checklist," written by Timothy J. Kelly, of the Fitzpatrick, Cella firm in New York City (here).

TTAB's 13th Citable 2004 Decision Bobs To The Surface

Just when we thought the book was closed on the year 2004, a 13th citable TTAB decision has surfaced: namely, the Board's interlocutory decision in Cognis Corp. v. DBC, LLC, 73 USPQ2d 1766 (TTAB 2004).

Xango
In Opposition No. 91155308, Cognis Corporation has opposed the application of DBC, LLC to register the mark XANGO for "liquid dietary supplements," relying on its registration of the mark XANGOLD for dietary and nutritional supplements. DBC asserted a counterclaim for partial cancellation of the cited registration, claiming that Cognis has used its mark only on "lutein ester supplements."

Both parties moved for summary judgment. The Board first quickly denied DBC's motion, stating merely that DBC "has failed to meet its burden of showing the lack of a genuine issue that opposer's use of its mark has been as limited with regard to scope and trade channels as applicant claims."

The Board likewise denied Opposer's summary judgment motion:

"Inasmuch as we have determined above that there are genuine issues with regard to the goods upon which opposer has used its mark in commerce, we find that it is inappropriate to dispose of opposer's likelihood of confusion claim by summary judgment. In other words, so long as it remains possible that opposer's registration may ultimately be restricted, we cannot say that there are no genuine issues in dispute regarding . . . Section 2(d)."

The Board then noted that, even if there were no counterclaim, there still would be a genuine issue of material fact with regard to the similarity of the parties' marks.

The TTABlog humbly asks: what exactly is it about this decision that merits the "citable" designation? Basically, all it says is that summary judgment will be denied if the Board finds genuine issues of material fact. The opinion contains very little explanation, and in fact is just over 4 pages long. Had this decision remain submerged, the TTAB bar would, I think, have been none the worse off.

Text ©John L. Welch 2005. All Rights Reserved.