Tuesday, February 03, 2009

The Top Ten TTAB Decisions of 2008 ® [Part 1 of 2]

Once again, yours truly has chosen the ten TTAB decisions that he considers to be the most important and/or interesting from the past calendar year. Seven are precedential decisions and three are not. Arguably, the precedential rulings are the more important because they constitute binding precedent, but the non-precedential rulings at a minimum have educational and/or entertainment value. Or at least I hope so. [This posting is in two parts, the first five decisions being set out below].

University Games Corp. v. 20Q.net Inc., 87 USPQ2d 1465 (TTAB 2008) [precedential]. The Board addressed head-on the issue of whether an applicant who, during ex parte prosecution, corrects a false statement regarding use may avoid a later fraud ruling. The panel majority (focusing on the intent issue) held that such an amendment creates a rebuttable presumption that the applicant did not have the requisite willful intent to deceive the PTO. In a concurring/dissenting opinion, Judge Walsh expressed a broader view (factoring in the issue of materiality): he would have granted summary judgment sua sponte in favor of University Games because, in his view, timely correction of an error prior to publication completely negates the possibility of any fraud claim related to the corrected matter "(i) because the action effectively negated the intent required to establish fraud, if such an intent ever existed, and (ii) because the allegedly false statement, once deleted, was not material to the Office’s later approval of the application." In light of this decision, practitioners would be wise to conduct a review of pending use-based applications while there is still an opportunity to correct erroneous statements regarding use. [TTABlogged here].

Sierra Sunrise Vineyards v. Montelvini S.p.A., Cancellation No. 92048154 [not precedential]. Foreign trademark owners who obtain registrations under Section 44 (and Section 66) are particularly in jeopardy with regard to the fraud issue. Here, the Board granted Petitioner Sierra's cross-motion for summary judgment and its cancellation petition, finding that Registrant Montelvini S.p.A., an Italian company, committed fraud on the USPTO when it filed its Section 8 Declaration of Use. Montelvini verified that its registered mark MONTELVINI VENEGAZZU & Design was in use on "wines, spirits, and liqueurs," when in fact it was not. Montelvini's registration had issued under Section 44(e), based on its Italian counterpart registration. When it came time to file the Section 8 Declaration, its U.S. counsel inquired whether Respondent was using the mark "in connection with the goods listed in the Certificate of Registration" and asked for two specimens of the mark as currently used in the U.S. The Declaration was signed and filed electronically without deletion of any of the goods, but the mark had not been used on liqueurs. Montelvini claimed that "there was a failure on the part of the Italians to appreciate the USPTO’s requirement to demonstrate specific actual use of the mark on each of the various goods…." The Board was not moved. Montelvini’s motion to amend the registrations was also denied, since such deletion of goods upon which the mark has not been used "does not remedy an alleged fraud upon the Office." [TTABlogged here].

L.C. Licensing, Inc. v. Berman, 86 USPQ2d 1883 (TTAB 2008) [precedential]. Applicant Cary Berman, appearing pro se, lost this opposition on the grounds of likelihood of confusion and (more significantly) lack of a bona fide intent to use the mark ENYCE on custom automobile accessories. Opposer L.C. Licensing is the owner of the registered mark ENYCE for various clothing items and accessories directed to the "urban lifestyle market." The Board found "an association between urban lifestyle clothing and custom automobile accessories," concluded that Berman had acted in bad faith, and sustained Opposer's Section 2(d) claim. As to bona fide intent, Berman admitted in discovery that he had no documents evidencing his intent to use the mark on custom automotive accessories. His testimony that he intended to use the mark on shift knobs "does not suffice to establish a bona fide intention to use the mark." Citing Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503 (TTAB 1993) ["the absence of documentary evidence on the part of an applicant regarding such intent is sufficient to prove that the applicant lacks a bona fide intention to use the mark"], the Board sustained the opposition on that ground as well. [TTABlogged here].

Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, 88 USPQ2d 1581 (TTAB 2008) [precedential]. This White Sox fan enjoyed last year's Red Sox v. Yankee fan brouhaha in which the Crimson Hose successfully opposed registration of the mark SEX ROD (Stylized) for 136 clothing items (including infantwear and baby bibs). The Board found that New Yorker Sherman lacked a bona fide intent to use the mark, and further that the mark is both scandalous and disparaging under Section 2(a). The Board, however, dismissed the Red Sox claims of likelihood of confusion and 2(a) false connection. As to the bona fide intent issue, Sherman had no documentation to support his claimed intent and he thus failed to meet his resultant burden of proof. As to scandalousness, a substantial portion of the consuming public would view the mark as vulgar; the inclusion of children's and infant's clothing "makes the term particularly lurid and offensive." As to disparagement, the Board observed that, because the mark is offensive and its message will be associated with the Red Sox, the mark is disparaging under the Statute. But as to likelihood of confusion and false association, the Board concluded that the marks are too disimilar to support the Section 2(d) claim and that"the public would not reasonably believe that opposer, a famous and reputable organization, would be associated with a mark that disparages itself." [TTABlogged here].

In re Spirits Int'l N.V., 86 USPQ2d 1078 (TTAB 2008) [precedential]. The key issue in this Section 2(e)(3) case was the definition of the "ordinary American purchaser" for purposes of the doctrine of foreign equivalents. Spirits admitted that its vodka will not originate in Moscow, and there was no dispute that MOSKOVSKAYA means "of or from Moscow" or that Moscow is known for its production of vodka. Spirits coupled survey evidence with its reading of the CAFC's somewhat confusing decision in Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689 (Fed. Cir. 2005), in maintaining that mark is arbitrary because the term would not be translated into English by the ordinary (i.e., non-Russian speaking) American consumer, and that "its geographic meaning would be lost on the public." The Board strenuously disagreed with Applicant's interpretation of the case law, ruling that the "ordinary American purchaser" in this case refers to the ordinary American purchaser of vodka who is knowledgeable in Russian. It found nothing in the record to indicate the mark would not be translated, nor any question as to its meaning, and so it affirmed the PTO's refusal, finding the mark to be primarily geographically deceptively misdescriptive. [TTABlogged here].

[Part 2 of this two-part posting will appear tomorrow.]

"The Top Ten TTAB Decisions of 20**" is a Registered Trademark of John L. Welch. Text Copyright John L. Welch 2008-9.


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