Wednesday, January 23, 2008

The Ten Worst TTAB Decisions of 2007? [Part 2 of 2]

Here for your reading pleasure is the second batch of the "ten worst" Board decisions of last year. The first five were TTABlogged here yesterday. As you read these postings, please bear in mind that it takes a skilled carpenter to build a barn, but any jackass can knock it down. Or so they say. I've never actually confirmed this.

The Children's Inn at NIH v. Bhandari, Opposition No. 91120549 (December 17, 2007) [not precedential]. Applicant Vinod Bhandari's eight-year quest for registration of the mark KIDS INN for hotel, motel, and restaurant services ended in futility at the TTAB. Although in 1999 the Board had ruled, in an ex parte appeal, that Bhandari's mark was not confusingly similar to the registered mark CHILDREN'S INN for "lodging services for use of children and their families who are patients at NIH," the Board here sustained the opposition subsequently filed by The Children's Inn at NIH. However, because the NIH's registration was not renewed, it had to rely on its common law rights (arising from a single facility on the NIH grounds). The Board noted that Applicant Bhandhari's recitation of services was broadly worded, and therefore that it must assume those services would include "offering lodging to families that travel to Maryland for treatment at NIH." It then astonishingly ruled that these consumers "would exercise nothing more than ordinary care in making their decisions regarding nearby lodging in connection with a family's visit to NIH." The Board found that the marks convey the same meaning and, given the notoriety of the CHILDREN'S INN AT NIH, that confusion was likely. [If your child were ill and a patient at NIH, would you use only ordinary care in choosing lodging for your family? Would you not notice the difference between the CHILDREN'S INN at NIH and KIDS INN? - ed.] (TTABlogged here).

The Children's Inn at NIH

In re Deutsche Telekom AG, Serial No. 78492246 (March 7, 2007) [not precedential]. Missapplying Knight Textiles, the Board reversed a Section 2(d) refusal of the mark T-MOBILE NEWS EXPRESS for various telecommunication and information technology services ["news express" disclaimed], finding it not likely to cause confusion with the registered mark NEWSEXPRESS for electronic telecommunication services. Even though the marks are used for "closely related, if not identical services, marketed in the same trade channels and to the same classes of consumers," the Board found that the dissimilarity of the marks "outweighs the other factors." The PTO cogently argued that Applicant "has simply taken registrant’s nearly identical mark, NEWSEXPRESS, and added its T-Mobile house mark to it," but the Board found that the addition of Applicant's house mark is sufficient to avoid a likelihood of confusion, citing Knight Textile. But there, the record included 23 third-party registrations for clothing items in which the marks included the word ESSENTIALS. Those third-party registrations corroborated the dictionary definition of "essentials," leading the Board to find the mark NORTON McNAUGHTON ESSENTIALS not confusingly similar to the registered mark ESSENTIALS for clothing. Here, however, there was no similar evidence regarding the term NEWSEXPRESS, and yet the Board effectively stripped that registration of any strength. (TTABlogged here).

In re, Inc., Serial Nos. 78711311 and 78730624 (October 29, 2007) [not precedential]. Despite a questionable evidentiary record, the mark NAPOLEON BRIE (in standard character and design form) for cheese [BRIE disclaimed] met its Waterloo at the TTAB. The Board, relying primarily on third-party registration evidence to show the relatedness of the goods, affirmed a Section 2(d) refusal in view of the registered mark NAPOLEON for "edible oils, namely, salad oil, olive oil processed vegetables, namely, cocktail onions, baby corn, stir-fry vegetables, hearts of palm, artichokes; processed seafood, namely, anchovies, oysters, mussels and sardines; and processed olives, vinegar, capers and pasta." The PTO submitted ten third-party registrations “for marks for goods that include cheese and many or all of the registrant’s identified goods,” as well as two websites that provide recipes using cheese and one or more of Registrant’s goods, and a third website offering “gift tins, with the featured tin including ‘brie cheese’ and ‘gourmet olives.’” The Board sided with the PTO, even though the Examining Attorney offered no evidence (e.g., websites) that the relevant goods are actually being offered under the same mark, even though the evidentiary value of recipes is minimal at best [e.g., eggs and peanut butter may be used in the same recipe (for peanut butter cookies?), so does that make them related for Section 2(d) purposes?], and even though it was unclear that the cheese and the olives sold in the gift tin bore the same mark. (TTABlogged here).

Allergan, Inc. v. BioCentric Labs., Inc., Opposition No. 91161603 (August 20, 2007) [not precedential]. ]. Swept away by the fame of the BOTOX trademark, the Board sustained an opposition to registration of the mark SEATOX for "cosmetic[s]." According to the Board, consumers "may believe … that SEATOX identifies a related product emanating from opposer, perhaps an adjunct or complementary product with a formulation that includes a sea-based ingredient." Sales of the BOTOX product approached $1.7 billion in the period 1999-2004, and advertising expenditures were in the $10 to 20 million range. Applicant admitted that "[e]verybody has heard of BOTOX." Accordingly, the Board found the mark to be famous for Section 2(d) purposes. And, of course, fame plays a dominant role in the Board's du Pont analysis. The only wrinkle that the Board encountered was the evident dissimilarity of the marks. Not to worry! "The marks BOTOX and SEATOX are similarly constructed, two-syllable coined terms. The marks are similar in sound and appearance in that both begin with a single syllable and end in a TOX-suffix." "[A]ny specific differences … are outweighed by the similarities, especially in light of the absence on this record of any instances of third-party use of similar marks." [Thus, in effect, Opposer owns the phantom mark *TOX - ed.] (TTABlogged here)

Tabor v. LaBarba, Opposition No. 91166743 (June 14, 2007) [not precedential] and In re Sigma Alimentos, S.A. de C.V., Serial Nos. 78572313 and 78572318 (July 3, 2007) [not precedential]. In these two decisions, the TTAB found bottled water related to soy shake mix, and spring water related to "soy based beverages not being milk substitutes," for Section 2(d) purposes. In the first, the Board relied on six third-party registrations of questionable evidentiary value (and as usual, with no actual proof of use of the marks), and on a “study reported in several online locations showing that healthy beverages include lots of water and several servings of nonfat, fortified soy beverages.” Finally, the Board feebly noted several advertisements and online ordering forms from supermarkets “showing all kinds of non-alcoholic beverages listed together, e.g., alphabetically by type.” From this it was clear to the Board that the goods move in the same general channels of trade and may be seen as alternative, healthy bottled beverages. In the second, the Board found the products related because Opposer's soy mix product "is to be blended with water." By that odd logic, one would find sugar and coffee to be related products, as well as tea and honey, tea bags and water, water and coffee, and so on ad nauseam. (TTABlogged here and here).

Text Copyright John L. Welch 2007-08.


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