CAFC Vacates TTAB's "MOSKOVSKAYA" Vodka Ruling, Clarifies 2(e)(3) Materiality Test

The U.S. Court of Appeals for the Federal Circuit has vacated the TTAB's decision in the MOSKOVSKAYA case (TTABlogged here), in which the Board found the mark to be primarily geographically deceptively misdescriptive of vodka. (TTAB decision here). The CAFC ruled that the Board had improperly applied the materiality test of Section 2(e)(3) because it failed to consider whether a substantial portion of all relevant consumers (not just Russian speakers) is likely to be deceived. And so the court remanded the case to the Board for proper application of that test. In re Spirits International, N.V., 90 USPQ2d 1489 (Fed. Cir. 2009) [precedential]. [.mp3 of CAFC oral argument here].


Doctrine of Foreign Equivalents: The CAFC's decision in Palm Bay gave rise to some confusion about how the doctrine of foreign equivalents is to be applied. Here, the court further explained its view. It noted the "general requirement of translation" under the doctrine and reiterated that it applied "only in those situations where the ordinary American consumer would stop and translate the mark into English." The ordinary American consumer encompasses "all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate the words into English." [Emphasis supplied.]

The court pointed out that there are situations in which the doctrine does not require translation with respect to foreign speakers:

The ordinary American consumer would not translate VEUVE CLICQUOT because its literal translation would be irrelevant to even those ordinary American consumers who speak French. Palm Bay, 396 F.3d at 1377. Similarly, CORDON BLEU has such a well established alternative meaning that the literal translation is Irrelevant because even French speakers would not translate the mark. Cont’l Nut Co. v. Cordon Bleu, 494 F.2d 1397, 1398 (CCPA 1974). Additionally, some marks would not be translated because of the particular context in which they occur. See In re Tia Maria, Inc., 188 USPQ 524, 525-26 (TTAB 1975). There may be many non-English marks that will not be translated in context but instead accepted at face value by the ordinary American consumer, including those familiar with the literal meaning of the mark in the non-English language.

Here, however, Spirits did not contend "that the specific context of the mark is such that an ordinary American purchaser sufficiently familiar with Russian would nonetheless take the mark at face value." [TTABlog query: so who has the burden of proof regarding whether a foreign-language term will be translated by the non-English speaker, the PTO or the Applicant? Apparently the PTO.]

Materiality under Section 2(e)(3): The CAFC ruled in California Innovations that a refusal to register under Section 2(e)(3) requires that the misdescription must materially affect the public's decision to purchase the goods. But it did not address whether the necessary materiality "embodies a requirement that a significant portion of the relevant consumers be deceived." [Emphasis supplied]. Here the court held that "subsection (e)(3) does incorporate such a requirement, and that the appropriate inquiry for materiality purposes is whether a substantial portion of the relevant consumers is likely to be deceived, not whether any absolute number or particular segment of the relevant consumers (such as foreign language speakers) is likely to be deceived."

The Board then observed that the relevant population is "often the entire U.S. population interested in purchasing the product or service." However, in some cases the use of a non-English mark evidences that the product is targeted to those who understand the language. In those cases, the relevant consumers will comprise the members of the targeted community and therefore the consumers who speak the language "could comprise a substantial portion of the relevant consumers." [E.g., a mark in Polish for canned ham marketed to the Polish community.]

The Board recognized that under Section 2(e)(3) "an appreciable number" of consumers for the good must be deceived.However it rejected a requirement of "proportionality," i.e., it failed to consider whether Russian speakers were a "substantial portion of the intended audience."

Because the TTAB "applied an incorrect test," the court remanded the case. Although it expressed no opinion as to whether a substantial portion of the intended audience in this case would be materially deceived, it noted that only 0.25% of this country's population speaks Russian.

If only one quarter of one percent of the relevant consumers was deceived, this would not be, by any measure, a substantial portion. However, it may be that Russian speakers are a greater percentage of the vodka-consuming public; that some number of non-Russian speakers would understand the mark to suggest that the vodka came from Moscow; and that these groups would together be a substantial portion of the intended audience.

And so the case returns to the TTAB to determine "whether there is a prima facie case of material deception under the correct legal test in the first instance."

TTABlog note: Will the Board send the case back to the PTO for examination in light of this new standard? Shouldn't the PTO (and the Applicant as well) have an opportunity to offer additional evidence in light of this new standard?

Since the number of Russian-speaking Americans is so small, it seems that the PTO, in order to support the refusal, will have to establish that non-Russian speaking Americans drink vodka (judicial notice, anyone?) and that a substantial portion of them will perceive the mark MOSKOVSKAYA as an indication that the vodka originates in Moscow.

Text Copyright John L. Welch 2009.

TTABlog Challenge: You Be The TTAB Judge!

Imagine yourself in the role of TTAB judge. You are considering the summary judgment motion filed by an Applicant seeking to register the mark shown to the right, for retail grocery store services. The Opposer claims that confusion is likely with the six registered marks shown below, for various food items, including sausage, barbequed pork, and various other swine-related products. How would you rule in Odom's Tennessee Pride Sausage, Inc. v. FF Acquisition, L.L.C., Opposition No. 91182173 (April 17, 2009) [not precedential]?


In its terse six-page opinion, the Board granted the motion for summary judgment, finding that, even considering all other relevant du Pont factors in Opposer Odom's favor, the single factor of the dissimilarity of the marks was dispositive:

While both parties’ design marks consist of smiling boys wearing hats (and in some instances both waiving [sic!] one hand), this is where the similarities end. Opposer's marks depict a barefoot child holding a fishing pole. The boy is wearing a tall pilgrim hat with a ribbon directly above the brim. The boy's feet are small and narrow. By contrast, applicant’s mark depicts a boy facing forward wearing a short, wide brimmed cowboy hat. This boy is wearing thick boots, has thick hands, and has a piece of straw in his mouth. The boy depicted in opposer’s marks has nothing in his mouth. These visual distinctions are sufficient to create different commercial impressions of the marks, thereby precluding a finding of likelihood of confusion.

And so the Board dismissed the opposition.


TTABlog comment: Well, how did you do? Easy, no? Do you think this case belongs in the WYHO (Would You Have Opposed?) category? I do.

Text Copyright John L. Welch 2009.

TTAB Finds "RUSSKAYA" for Vodka Abandoned, Cancels Registration

Got your screwdriver? We're going to dismantle a 53-page TTAB opinion granting a petition for cancellation of a registration for the mark RUSSKAYA for vodka. The Board found that Petitioner A.V. Brands had established a prima facie case of abandonment based on at least three consecutive years of nonuse, and that Registrant Spirits International, B.V. failed to overcome Petitioner's case because it established neither an excuse for the nonuse nor a bona fide intent to resume use. A.V. Brands, Inc. v. Spirits International, B.V., Opposition No. 92043340 (March 31, 2009) [not precedential].

Respondent Spirits' chain-of-title to the RUSSKAYA registration "originated in the early 1990s with the privatization of the previously state-owned Russian vodka industry, which itself occurred as part of the process of privatization in Russia and the former Soviet Union known as perestroika." Spirits claimed that this cancellation proceeding is part of a "worldwide campaign to recapture for the Russian Federation the vodka marks owned by Spirits.

A.V. Brands claimed that Spirits has abandoned the RUSSKAYA mark due to nonuse in this country for at least three years. Spirits contended that its nonuse was excusable, "citing its uncertainty about its rights in the mark which has been generated by the worldwide litigation between respondent and the Russian Federation and its proxies." Spirits also contended that it has always maintained an intent to resume use of the mark.

Standing: Spirits challenged A.V. Brand's standing to pursue this cancellation petition, asserting that the intent-to-use application upon which its petition is based (i.e., in that application the PTO refused registration under Section 2(d) in light of the RUSSKAYA registration), was illegally assigned to A.V. Brands in contravention of Section 10(a)(1) of the Trademark Act.

The Board looked at the assignment document by which A.V. Brands acquired the registration, and noted its reference to an "Asset Purchase Agreement." The Board litotically deemed it "not unreasonable to assume that the 'assets' ... included more than just the trademarks": i.e., that the assignee succeeded to the import and distribution system of the assignee, or to the portion of the business to which the mark pertains. [TTABlog comment: since A.V. Brands had the burden to prove its standing, shouldn't the Board have required real evidence rather than merely assuming what the assets were that supposedly accompanied the transaction?] And so, the Board concluded that Section 10 was not violated.

In any case, the Board found that A.V. Brands had a real interest in the outcome of the proceeding because the evidence showed that it is engaged in the sale and distribution of vodka and it intends to use the RUSSKAYA mark in connection therewith.

Abandonment: Spirits acquired the RUSSKAYA registration from Pepsico on May 10, 2001. Three years and nine days later this petition for cancellation was filed. There was no dispute that Spirits made no use of the mark for that three-year period. As a result, A.V. Brands established a prima facie case of abandonment under Section 45, shifting the burden to Spirits to rebut that case.

Spirits offered two excuses for the nonuse: it made a prudent business decision to postpone use of the mark due to the uncertainty of its ownership rights in light of worldwide litigation with the Russian Federation and its allies; and the drain on its financial and manpower assets caused by the litigation prevented it from re-introducing and building the RUSSKAYA brand. The Board found Spirits' testimony vague and sometimes contradictory, and it bought neither excuse.

As to the litigation uncertainty, the Board reviewed the pertinent litigations, observing that much of the litigation occurred after May 2004 and thus was too late to affect Spirits' nonuse decision, and concluding that none of the litigation should have "caused any reasonable uncertainty on respondent's part as to its ownership rights in the registered RUSSKAYA mark in the United States."

As to the "drain on resources" excuse, the Board again found the testimony vague and unpersuasive. Although Spirits claimed that a resumption of use of the RUSSKAYA mark would require "huge investments" and "big marketing support and push," the Board noted that in October 2005 Spirits shipped thirty cases of RUSSKAYA vodka to its U.S. Distributor, apparently without any such major investment.

Indeed, on this record it appears that the more likely reason for respondent's nonuse of the RUSSKAYA mark in the United States for at least the three years prior to May 2004 was not due to its litigation with FTE, which for the most part was commenced after May 2004, but rather was the result of a purely business-driven decision not to market RUSSKAYA vodka in the United States during that period.

The Board next found that Spirits had failed to provide proof of a bona fide intent to resume use of the mark. Vague and conclusory testimony regarding negotiations with its U.S. distributor was unpersuasive. Spirits did not provide any documentation or other tangible evidence to corroborate the testimony, and the lack of such evidence "weighs against a finding that, during the nonuse period, respondent had maintained the requisite bona fide intent to resume use of the mark in United States commerce."

And so the Board concluded that Spirits abandoned the RUSSKAYA mark "at least as early as May 2004, and that its registration of the mark must be cancelled and removed from the register."

TTABlog comment: Spirits International seems to be in a TTAB slump. Last year its mark MOSKOVSKAYA for vodka was held to be primarily geographically deceptively misdescriptive under Section 2(e)(3). TTABlogged here.

Text Copyright John L. Welch 2009.

Applicant's Own Boastful Advertising Leads TTAB to Find Tray Design Functional

The Board tossed another purported product configuration mark in the TTAB trash can, finding the tray design of Applicant Gratnell's Limited to be functional under Section 2(e)(5) and, if not functional, lacking in acquired distinctiveness. Gratnell's served up the decisive functionality evidence on a platter: its own advertising materials touting the superiority of the design. In re Gratnell’s Limited, Serial No. 78450327 (April 8, 2009) [not precedential].


Gratnell's sought to register the product design for "trays not of precious metals, namely storage trays, trays of plastic for storage and stackable trays," which the Board understandably referred to simply as "trays."

Functionality: The Board applied the functionality test laid down in In re Morton-Norwich Prods., Inc., 213 USPQ 9, (CCPA 1982), to determine, in essence, "whether granting trademark protection to the design will hinder competition."

Examining Attorney Nicholas Altree pointed to the utilitarian advantages highlighted in Applicant's own promotional materials:

(1) that users "can stack them in and on top of one another," (2) that the trays "save space by fitting into one another," (3) that they "are designed to fit directly into standard school furniture," (4) that "the front handle cutout allows the contents to be seen," (5) that "the flat fronts create a safer grip surface," and (6) that "a continuous ribbed edge keeps the tray sides from squeezing in."

Gratnell's contended that these laudatory claims were merely "standard statements of puffery," but the Board was not blown away by that argument because the statements "point to specific characteristics of applicant's product."

In short, the Board agreed with the PTO: "these advertisements indicate that the tray design ... provides[s] competitive advantages in terms of monitoring content, handling and storage." The Board reviewed two rather mundane alternative designs provided by Applicant, finding (with little discussion) that they "highlight the superiority of applicant's design."

Balancing the Morton-Norwich factors, the Board found the design to be functional because it "provides the ability to see content and improves handling and storage."


Acquired Distinctiveness: Assuming arguendo that the design is not functional, the Board considered Gratnell's Section 2(f) evidence, but not before ominously observing that "applicant faces a heavy burden in establishing the distinctiveness of a product design."

Gratnell's pointed to use of the design since 1992, its receipt of the 1992 WorldDidac Silver Award for the design [On wonders who got the gold? - ed.], sales of about $1 million dollars over the past six years, advertising demonstrating that consumers recognize the design as a trademark, and registration of the design in (what the Board called) the "European Trademark Office."

The Board was unconvinced: seventeen years of use is "not necessarily conclusive or persuasive;" there was no explanation of the nature or meaning of the design award; Gratnell's sales figures "do not seem to be significant;" and the advertising, which points to the qualities of the tray, is not likely to cause consumers to view the design as a trademark. The fact that Gratnell's design is distinct from any competitor's product, or is unique and appealing, does not substitute for proof that consumers recognize the design as a source indicator. As to the European registration, the Board not surprisingly pointed out that a decision by OHIM has no probative value here.

And so the Board affirmed the refusal to register.

TTABlog comment: Can you remember the last TTAB decision that found a product configuration to be registrable? I think it was this one. Unlike a stack of Gratnell's trays, such decisions are few and far between.

Text Copyright John L. Welch 2009.

Precedential No. 17: TTAB Dismisses Bayer "FLANAX" Cancellation Claims - No Famous Marks Exception in US Law

Flummoxed by Bayer's three attempts to properly plead its claims, the Board granted three-fourths of Registrant Belmora's motion for dismissal for failure to state a claim upon which relief may be granted. Bayer lost its Section 2(d) and its fraud claim by failing to allege prior use of its mark FLANAX in the United States by itself or by someone on its behalf. Bayer's claim under Article 6bis of the Paris Convention was jettisoned because the Convention is not self-executing and Section 44 of the Trademark Act does not afford the owner of a foreign trademark a separate basis for cancellation under a "famous mark" theory. However, Bayer did manage to scrape through with its claim under Section 14(3) that by copying the FLANAX mark and packaging, Belmora misrepresented the source of its goods. Bayer Consumer Care AG v. Belmora LLC, 90 USPQ2d 1587 (TTAB 2009) [precedential].

Belmora's FLANAX
Respondent Belmora owns a registration for the mark FLANAX for "Orally ingestible tablets of Naproxen Sodium for use as an analgesic." Petitioner Bayer uses the same mark in countries other than the United States for the same product. However, Bayer had one major problem here: it did not itself use the mark in the United States, nor did anyone under its authority. [Bayer did allege that "parties" have purchased "authorized" FLANAX goods and imported or carried them into this country for resale.]

Section 2(d): The Board dismissed this claim because Bayer failed to allege that, prior to respondent's filing date, its FLANAX goods were "manufactured or distributed in the United States by petitioner, or on its behalf."

A third party’s importation and resale of goods does not by itself constitute "use" by petitioner, at least not without some allegation that the third party was licensed or authorized by petitioner to "use" petitioner’s alleged mark on petitioner’s behalf.

Article 6bis: Bayer alleged that its mark was "well-known" in this country prior to Belmora's filing date and that Belmora copied its mark and packaging for the FLANAX product, but this "famous marks" claim ran into a legal brick wall. The Board pointed out that the Paris Convention is not self-executing, and that "Articles 6bis and 6ter do not afford an independent cause of action for parties in Board proceedings." Nor does Section 44 of the Trademark Act "provide the user of an assertedly famous foreign trademark with an independent basis for cancellation in a Board proceeding." [See comment below - ed.]


Bayer's FLANAX
Section 14(3) Misrepresentation: Bayer's allegations here were deemed legally sufficient because they "clearly and specifically" stated that "respondent copied petitioner's mark, including its particular display, and virtually all elements of its packaging" in order to "misrepresent to consumers, including consumers familiar with Petitioner's FLANAX mark," that Belmora's product came from the same source.

Bayer's allegation of damage arising from Belmora's use of strikingly similar packaging "to misrepresent the source of " its goods was enough to provide Bayer with standing to bring this claim.

Although existing case law does not address whether petitioner's alleged use is sufficient to support a claim of misrepresentation of source, we find that at a minimum the claim is pled sufficiently to allow petitioner to argue for the extension of existing law. Moreover, respondent's focus solely on petitioner's extra-territorial use fails to take account of the fact that respondent's use is in the United States and to the extent such use may be misrepresenting to consumers making purchases in the United States that petitioner is the source of respondent's products, the misrepresentation is alleged by petitioner to be occurring in the United States. The Lanham Act provides for the protection of consumers as well as the property rights of mark owners.

Fraud: Bayer's fraud claim was "untenable" because, in light of its lack of prior use of its mark in the United States, it did not sufficiently allege that it has legal rights superior to those of Belmora.

And so the Board tossed out three of Bayer's claims and resumed the proceeding vis-a-vis the Section 14(3) claim.

TTABlog comment: I consulted Marty Schwimmer, my go-to guy on trademark "use" issues, on the "famous marks" aspect of this case. Marty subsequently posted the following comment and question on the INTA list-serv:

Bayer v Belmora ... holds that Section 44 of the Lanham Act does not create a famous mark exception to the territoriality principle. Those familiar with, for example, the Punchgini case in NY, know that this is the majority view.

Having said that, the holding in the GIGANTE case 391 f3d 1088 (and the fact patterns in the MONTE CARLO, PERSONS and COHIBA cases) suggest that amending the Lanham Act to provide a cause of action based on 6bis where the intentional adoption of a famous mark that has such 'reputation without use' in the US, [causes] consumer confusion ..., might lead to some fair results.

And, by the way, American companies have been enjoying the benefits of Article 6bis abroad for over a hundred years.

Has INTA ever lobbied for such an amendment?

Note that here, the Board did allow the Section 14(3) misrepresentation claim to go forward. Will that provide Bayer the relief that the Board denied under its Article 6bis claim?

Text Copyright John L. Welch 2009.

Precedential No. 16: TTAB Throws New England Patriots for Another Loss in "19-0 THE PERFECT SEASON" Opposition

Just when we Patriots fans had seemingly put the heartbreaking 2007 NFL season behind us, here comes the TTAB to open the old wound and pour salt in it. The Board dismissed the Patriots' Section 2(d) opposition to registration of the mark 19-0 THE PERFECT SEASON for various clothing items because Applicant William A. Harpole filed his application two months before Opposer Kraft filed its ITU application for the same mark for clothing and other goods. Kraft Group LLC v. William A. Harpole, 90 USPQ2d 1837 (TTAB 2009) [precedential].


Applicant Harpole, of Centennial, Colorado, filed his application pro se on November 8, 2007, seeking registration on the Supplemental Register. On April 22, 2008, Harpole amended the application to seek registration on the Principal Register under Section 1(b). Opposer Kraft filed its Section 1(b) application on January 17, 2008, two weeks before Super Bowl XLII (which, as we all know, the Giants won). [Can you spell J-I-N-X? - ed.].

So, in order to establish priority in the opposition, Kraft needed to knock out the Harpole application, or at least change its filing date. Kraft claimed that Harpole's application was void ab initio because as of his filing date Harpole had admittedly not used his mark and it therefore was not eligible for registration on the Supplemental Register. Kraft pointed to Rule 2.47(a), which states that "In an application to register on the Supplemental Register under section 23 of the Act, the application shall so indicate and shall specify that the mark has been in use in commerce." Furthermore, Kraft urged that under Rule 2.47(d), an applicant who does does not allege use in commerce is not eligible for registration on the Supplemental Register until an allegation of use is filed. In short, according to Kraft, Harpole did not comply with Rule 2.47 (a), and so the application was bogus from the git-go.

Alternatively, Kraft argued that, just as the original filing date is lost when an application is amended to seek registration on the Supplemental Register, "the inverse applies as well": i.e., even if Harpole's application is not void, it lost its original filing date when amended to the Principal Register. Therefore, the argument went, Kraft has priority.

Applicant Harpole contended that he met the minimum filing requirements for receiving a filing date under Rule 2.21, and that he was not required to specify a filing basis to receive a filing date. In reply, Kraft asserted that Rule 2.21 applies, by its terms, to Section 1 and 44 applications, and does not mention Section 23 (Supplemental Register) applications.

Both parties moved for judgment on the pleadings. The Board ruled in favor of Applicant Harpole:

[W]e are not persuaded that applicant’s application is void ab initio or that its effective filing date must be deemed to be the date on which he amended the application to seek registration on the Principal Register. In particular, we find that opposer has conflated the rule for obtaining a filing date, namely, Trademark Rule 2.21, with the rules that set forth the requirements for obtaining a registration under a particular statutory basis and for a particular register. See, e.g., Trademark Rules 2.32, 2.34(a), and 2.47(a) and (e), 37 C.F.R. §§ 2.32, 2.34(a), and 2.47(a) and (e). [The penalty for improper conflation is 10 yards plus loss of down - ed.]

Even though Harpole's application indicated that he sought a Supplemental Registration, it contained all that was needed to receive a filing date under Rule 2.21(a): the name of the applicant, a correspondence name and address, a listing of goods, and the filing fee for at least one class of goods. Harpole "was not required to specify the filing basis for seeking registration on the Supplemental Register, i.e., Section 1(a) of the Trademark Act, to receive a filing date."

The Trademark Rules and Trademark Office examination practice clearly allow applicant another opportunity to provide certain information missing from the original application so that the mark may be registered, without losing the original filing date. In sum, contrary to opposer’s arguments, Trademark Rule 2.47(a) sets forth the registration requirements for marks to register on the Supplemental Register, not the requirements to obtain a filing date.

Therefore, Harpole's application is not void ab initio.


As to Kraft's alternative argument, the Board found no authority for the proposition that Harpole should be accorded a later filing date. Rather, a continuing valid basis for registration is presumed when an applicant amends its application for registration on the Supplemental Register to one seeking a Principal Registration.

Accordingly, the Board denied Kraft's motion for judgment on the pleadings. Because the filing dates of the parties' respective ITU applications were now established, and because Harpole filed first, Kraft's claim of priority failed as a matter of law. The Board therefore granted Harpole's motion and dismissed the opposition "subject to applicant's establishment of constructive use." [Presumably, Kraft's application will remain suspended until such time as Harpole's application either issues to registration or is abandoned - ed.].

TTABlog comment: I note that the mark 18-1 THE IMPERFECT SEASON appears to be available. At this point, who cares anymore?

Will the Patriots appeal? Seek a re-match? Petitioner the Commissioner? Which Commissioner?

Text Copyright John L. Welch 2009.

TTAB Rules, Non-Precedentially, that Fraud May be "Cured" Post-Registration

The ever-informed Maury Tepper brought to my attention a non-precedential decision from October 2008 involving the issue of fraud, and particularly whether fraud can be "cured" after a registration has issued. This Board panel adopted the approach of the panel majority in University Games in ruling that correction of a false statement regarding use, if made before a registration has been challenged, creates "a rebuttable presumption that [registrant] did not intend to commit fraud." Zanella Ltd. v. Nordstrom, Inc., 90 USPQ2d 1758 (TTAB 2008) [not precedential]. [Redesignated as precedential on May 13, 2009 [see TTABlog posting here].


Applicant Nordstrom counterclaimed for cancellation of five registrations asserted by Opposer Zanella in its notice of opposition, and then moved for summary judgment.

The Board entered summary judgment as to one registration, finding that Zanella had committed fraud vis-a-vis one of the registrations by including in its application and in its Section 8 declaration the following goods as to which it was not using the subject mark (shown above): "mantles, blouses, waistcoats, socks, stockings, ties, scarves, hats, swimwear or underwear."

As to the other four registrations, however, Zanella "corrected" the registrations by omitting various "unused" items when it filed its Section 8 declaration in each case. Zanella argued that the registrations as maintained are not fraudulent because they “were corrected prior to Nordstrom’s use of its mark and prior to this proceeding.” Zanella also asserted that, at a minimum, the corrective actions raise a genuine issue of material fact as to its fraudulent intent.

Nordstrom contended that Zanella's delay in correcting these registrations and its "history of false claims" supported a finding of fraud.

The Board looked favorably on Zanella's actions:

We find that opposer's timely proactive corrective action with respect to these registrations raises a genuine issue of material fact regarding whether opposer had the intent to commit fraud. In particular, opposer's action in correcting any false statements prior to any actual or threatened challenge to the registrations creates a rebuttable presumption that opposer did not intend to deceive the Office. See University Games Corp. v. 20Q.net Inc., 87 USPQ2d 1465, 1468 (TTAB 2008). In this case, we find that applicant’s evidence submitted in support of the motion for summary judgment, namely, opposer's discovery responses and the file histories of the registrations, fails to rebut the presumption of no intent to commit fraud on the Office. Accordingly, we find a genuine issue of material fact remains with respect to whether opposer had the intent to commit fraud on the USPTO with respect to these registrations.

And so the Board denied the motion for summary judgment as to the four "corrected" registrations.


Maury M. Tepper, III

TTABlog comment: Let the post-registration fraudits begin!! [Maybe we should call them "f®audits"?]

It appears from this decision that fraud may be curable even after registration, as long as the false statement regarding use is corrected before the registration is challenged. Note well that this is a non-precedential decision by one panel of the TTAB, so it is not etched in stone. But it is certainly a promising approach to the fraud problem.

In University Games, Judge Walsh, in a concurring opinion, espoused the view that a correction made before publication completely obliterated any fraud because the PTO Examining Attorney had not relied on the false statement in approving the application for publication.

We may now begin to see some coherence to the TTAB's view of fraud and how to cure it: an amendment to correct a false statement filed before the application or registration has been challenged, gives rise to a rebuttable presumption that the owner lacked the requisite intent to commit fraud on the PTO. Judge Walsh would take this a step farther, saying that, prior to approval for publication, the correction wipes out any materiality and therefore eliminates fraud altogether.

As to drawing the line at which correction no longer cures fraud, I can understand why an attempt to cure after a fraud claim has been made in a proceeding should not "cure" fraud. Otherwise there would be no incentive to make any correction until one is caught. But why should a challenge on other grounds (e.g., see the GRAND CANYON WEST case) foreclose the possibility of a curing amendment? Is it because, in the usual situation, fraud is uncovered only after discovery is taken and therefore the fraud may not be known (and thus will not have been pleaded) at the time of commencement of the proceeding? Would a party's discovery requests regarding possible fraud trigger the other side's attempt to cure, before the discovering party has a chance to obtain the discovery it needs to support a fraud claim?

What we need are a few more precedential decisions that clearly map the fraud minefield.

[This decision was not included in the TTAB's FOIA database because it is interlocutory, even though it was "final" as to one of the registrations, and therefore it sailed under the TTABlog radar.]

Text Copyright John L. Welch 2009.

Applicant Fails to Prove Historical Significance of "DAIMLER" for Vehicles, TTAB Affirms 2(e)(4) Surname Refusal

Applying its standard Section 2(e)(4) analysis, the Board affirmed a refusal to register the mark DAIMLER for "land vehicles," finding that the PTO had made out a prima facie case that the mark is primarily merely a surname, and that Applicant Jaguar had failed to rebut the PTO's case. Applicant argued that DAIMLER has historical significance that eclipses the marks surname significance because it identifies automobile pioneer Gottlieb Daimler, but the Board found inadequate Applicant's evidence that he is that widely-known. In re Jaguar Cars Limited, Serial No. 77035168 (April 7, 2009) [not precedential].

The Board applied the surname test set forth in In re Benthin Management GmbH, 37 USPQ2d 1332 (TTAB 1995). As to rareness, Examining Attorney Eli J. Hellman submitted the results of four different database searches, which showed 77, 744, 54, and 89 entries for the surname DAIMLER. Jaguar objected to this wide range in results, and the Board took a close look, ruling that the 744 figure (Lexis/Nexis) were "duplicative because this database is a group file containing nine types of person locator files." The Board therefore rejected this result and accepted the other three, more consistent results. In light of the fewer than 100 listings for the surname DAIMLER, the Board considered it a rare surname. [TTABlog note: compare the recent BERGFELD case, here, where a completely different Board panel found that BERGFELD was an "extremely rare surname," and reversed the surname refusal primarily on that basis.]

As to the second factor, no person currently associated with Jaguar has the surname DAIMLER. [Gottlieb Daimler founded the German Company, Daimler Motoren Gesellschaft in 1896, and licensed the British firm, Daimler Motor Company, to use the name. Jaguar acquired the British company in 1960.]

The third factor concerns whether the mark has any non-surname significance. The Examining Attorney supplied "negative" dictionary evidence showing no meaning for DAIMLER other than as a surname. Jaguar argued that DAIMLER has historical significance because it identifies Gottlieb Daimler. However, Jaguar's evidence was flimsy: a Wikipedia entry and a Dictionary.com entry.

The Board observed that a name that is "so widely recognized that [it is] almost exclusively associated with a specific historical figure" is not considered as being primarily merely a surname. [E.g., DAVINCI]. Here, however, the Board was not persuaded that Gottlieb Daimler is such an historical figure. Listings in a dictionary and in Wikipedia are "hardly evidence that he is widely-known." The Board concluded that Gottlieb Daimler is at best a "semi-historical" figure and does not eclipse its surname significance.

Gottlieb Daimler
As to the fourth factor, the Board ruled that DAIMLER has the "look-and-feel" of a surname. The existence of others with the name DAIMLER "tends to reinforce the conclusion that DAIMLER has the look and feel of a surname." [TTABlog comment: This seems to be a particularly weak point, since nearly every surname, even if extremely rare, will be shared by at least a few individuals.] Moreover, the surname significance of DAIMLER "will be reinforced by its association with him." And surnames are frequently used as marks for vehicles. [TTABlog comment: Isn't that a reason why DAIMLER would be seen as a mark, and not primarily merely a surname?]

Finally, Jaguar pointed to its already approved application to register DAIMLER for motor vehicles, but the Board was untroubled by this inconsistency. As usual, it cited In re Nett Designs, Inc., 57 USPQ2d 1564, 1566 (Fed. Cir. 2001), for the proposition that each case must be decided on its own record.

In sum, the Board ruled that Jaguar had failed to overcome the PTO's prima facie case of surname significance, and it affirmed the refusal.

TTABlog comment: Obviously, not all of the TTAB judges have bought into Judge Seeherman's revised view of the Section 2(e)(4) surname refusal, first set out in In re "Baik", which gives greatest weight to the name's "rareness" and holds that "look-and-feel" should not be a factor in the PTO's prima facie case. For a discussion, see the BERGFELD posting here.

I guess the bottom line is that we have to keep the DAIMLER name available in case one of the one hundred people in the USA named Daimler wants to go into the automobile manufacturing business.

Text Copyright John L. Welch 2009.

TTAB Says "So Longo, BADONGO" in 2(d) Opposition to "PODANGO"

ICL, Ltd.'s Section 2(d) opposition to the mark PODANGO, based on ownership of the registered mark BADONGO (both marks for various Internet communication services), went all wrongo: first, ICL failed to properly introduce its registration into the record, and as a result did not prove standing or priority; second, the Board found the marks too dissimilar anyway. ICL, Ltd. v. Podango LLC, Opposition No. 91178334 (April 8, 2009) [not precedential].


Failure to Get Registration into Evidence: Neither party to this proceeding submitted any evidence during the trial phase. Opposer ICL filed a brief (two paragraphs), but Applicant did not bother (i.e., no paragraphs). ICL tried to make its pleaded registration of record, but without success: "[a]pparently opposer attempted to attach an electronic copy of its pleaded registration from USPTO electronic records to its notice of opposition, but opposer failed to do so in accordance with the governing procedures."

At the time the opposition was filed (July 11, 2007), a pleaded registration could be submitted with the notice of opposition, provided it was a status-and-title copy prepared and issued by the PTO. Rule 2.122(d)(1). That Rule was amended effective August 31, 2007 to permit the submission, with the initial pleading, of "a current printout of information from the electronic database records of the USPTO showing the current status and title of the registration."

However, even under the revised Rule, Opposer failed to follow proper procedures. The instructions for filing a notice of opposition electronically state that the pleading must be in PDF, TIFF, or TXT format. Opposer here apparently tried to submit a JPEG copy of its registration, which was not received by the PTO, "either because it was not attached at all or because the jpeg format is not one of the acceptable formats."

Standing: In its answer, Applicant Podango admitted that ICL owns the pleaded registration, but it did not admit that the registration is valid and subsisting. Thus ICL failed to prove standing, and that alone was enough for dismissal.

Priority: Again, Podango's admissions did not go to the issue of the status of Opposer's pleaded registration. Consequently, ICL did not prove priority: another ground for dismissal.

Likelihood of Confusion: Even had Badongo proved priority, the Board pointed out, the marks at issue are not sufficiently similar to support a likelihood of confusion finding.

[C]ontrary to opposer’s arguments, the marks differ significantly in both appearance and sound. The marks also differ in connotation and commercial impression. Applicant’s mark begins with POD, and all of the services identified in the application relate to podcasting. Therefore, applicant's PODANGO mark connotes a connection to podcasting. This likewise affects the commercial impression of applicant’s mark. We find no such connotation or commercial impression in opposer’s BADONGO mark.

The Board therefore dismissed the opposition.

Text Copyright John L. Welch 2009.

New TTABlog Trademark Jobs Posting: Experienced California Trademark Attorney Willing to Re-locate

Trademark attorney with six-plus years of experience seeks employment with in-house legal department or law firm. The attorney has extensive experience in trademark prosecution, counseling, clearance, enforcement, and litigation. He has managed the filing and prosecution of more than 1,200 international trademark applications in 180 different countries, for a major U.S. based technology company. As part of his trademark clearance experience, he has cleared trademarks within the United States and in more than 30 foreign jurisdictions. He has participated at all levels of trademark enforcement, from the drafting of cease-and-desist letters to trademark infringement litigation. In short, he has been actively involved in all forms of trademark protection both within the United States and internationally. Send inquiries to John Welch to arrange for an introduction.

TTAB Referees PTO Translator Tussle, Accepts Applicant's Translation of "FIOR DI GRANO"

Applicant Paolo Doino's attempt to register the mark FIOR DI GRANO for pasta, tomato sauce, pasta sauce, and related goods, turned into a battle of the translators. The PTO claimed that Doino failed to comply with a Rule 2.61(b) requirement that he translate the phrase into English as "corn marigold" but Doino argued that the phrase also means "flower of grain." The Board found Doino's evidence that the Italian phrase has two ordinary meanings "stands unrebutted," and it reversed the refusal to register. In re Paolo Doino, Serial No. 77077462 (April 2, 2009) [not precedential].

corn marigold
The Examining Attorney relied on a translation provided by the PTO's Technical Translator, Steven M. Spar, stating that "the wording fior di grano means 'corn marigold.'" She also submitted a definition of "corn marigold" from Webster's Online Dictionary:

Corn Marigold 1. European herb with bright yellow flowers, a common weed in grain fields. Synonym: Field marigold.
Modern Translation (alternative meanings in parentheses): Italian fior de grano (yellow oxeye daisy).

Applicant Doino countered with the declaration of Alessandro Rubinacci, a certified English/Italian translator:

5. The literal translation of “FIOR DI GRANO” is “FLOWER OF GRAIN.”

6. “FLOWER OF GRAIN” is the ordinary meaning of “FIOR DI GRANO” in Italian.

7. A common speaker of Italian would readily understand “FIOR DI GRANO” to mean “FLOWER OF GRAIN.”

8. “FIOR DI GRANO” is also the Italian name for the weed known in English as corn marigold.

9. The phrase “fior di grano” appears to be suggestive of the weed’s flower-like appearance.

Applicant asserted that his translation is undisputed by the PTO's Declaration. Doino suggested that "both translations appear, as both have significance."

glebionis segetum
Rule 2.32(a)(9) states that if the mark in an application includes non-English wording, an English translation of that wording must be included in the application. The TMEP says that the translation should be the one "that has significance in the United States as the equivalent of the meaning in the non-English language." Section 809.01. It should be "the clear and exact equivalent," which "normally, means only one translation." Section 809.02.

The Examining Attorney insisted that FIOR DI GRANO has only one English equivalent: corn marigold. The Board pointed out that such assertion indicates that FIOR DI GRANO is a unitary phrase, but the PTO required a disclaimer of GRANO because it means "grain." The Board seized on that contradiction:

Either “fior di grano” is a unitary phrase and has only one translation, and, therefore, no disclaimer is required, or it has an ordinary meaning and a disclaimer is required. Of course the third possibility is that it has both meanings, and the connotation would depend on the context. In this case, it is more likely that applicant seeks to evoke the idea that the pasta is the “flower of grain” rather than a weed. In any event, as applicant points out, the declaration of this translator indicating the phrase has both meanings to “a common speaker of Italian,” stands unrebutted.

The Board noted the TMEP's statement that normally one translation is appropriate, thus contemplating the possibility of more than one.

Therefore, based on the record where there is a dispute, applicant's evidence of two ordinary meanings stand unrebutted, and applicant's translation makes more sense in the context of the goods, we defer to applicant's translation.

And so the Board ruled that Doina's submission of "flower of grain" as the translation for FIOR DE GRANO satisfied the PTO's Rule 2.61(b) request.

TTABlog comment: Mamma Mia! What a waste of time! What difference does it make which translation is accepted? Several readers have suggested that it may make a difference with regard to potential 2(d) issues raised by, for example, an opposer.

Text Copyright John L. Welch 2009.

TTAB Chops Down Evasive "SILVER BIRCH" Applicant with Three Well-Aimed Strokes

Victoria Principal Productions, Inc. was seeking to register the mark SILVER BIRCH for skin and body preparations, but it refused to give a direct response to Examining Attorney John Dwyer's request for information that would "make clear whether the goods will contain silver birch as an ingredient." The PTO refused registration on three grounds: failure to comply with the Rule 2.61(b) request for information, Section 2(e)(1) mere descriptiveness, or alternatively, Section 2(a) deceptiveness. The Board, obviously annoyed at Applicant's antics, barked out its affirmance of all three registrations In re Victoria Principal Productions, Inc., Serial No. 78245283 (March 25, 2009) [not precedential].

Betula Pendula
Section 2.61(b) Request for Information: Applicant VPPI's weaselly response to the PTO's request suggested to the Board that "applicant is being evasive because it fears that a totally truthful response might well support the statutory refusals ..., thereby hurting its chances of getting a registration."

[A]pplicant’s hair-splitting responses on the merits combined with a strategic refusal to supply the requested information seemed calculated to interject just enough ambiguity into the record to avoid a falsehood while defeating the ability of the Trademark Examining Attorney to prove descriptiveness or deceptiveness in an Intent-to-Use application without an allegation of use, specimens, etc.

The Board ruled that Applicant's responses clearly did not satisfy the PTO's Rule 2.61(b) request, and so the Board affirmed the refusal on that ground.

Victoria Principal
Section 2(e)(1) Mere Descriptiveness: Although Applicant VPPI acknowledged that "an extract of a 'Birch' tree may be present as an ingredient in at least some" of Applicant's goods, Applicant feebly argued that "Silver Birch" is merely suggestive: it "evokes the image of a silvery-leaved birch tree so that consumers will imagine the feelings of shimmering beauty, lightness and serenity."

The Board saw the issue to be whether the term SILVER BIRCH conveys, immediately and particularly, information about a significant feature, characteristic, or ingredient of the goods. Rejecting Applicant's "hair-splitting" arguments, the Board found the record replete with uses of "Silver Birch" in a manner that immediately conveys information about an ingredient of Applicant's products.

The record shows the wide range of medicinal uses of Silver Birch, dating back thousands of years to pre-history and spanning the millennia all the way up to still unfolding promise for dealing with melanomas and HIV/AIDS.

Third-party advertising showed "silver birch" used with skin cleansers, moisturizers, and lotions, sunscreen preparations, cosmetics, skin soaps, hair-care preparations, and tooth-whiteners.

The Board concluded that the term SILVER BIRCH "has a readily understood" meaning as applied to the goods, and it ruled that Applicant's mark is barred from registration by Section 2(e)(1).


Section 2(a) Deceptiveness: In order to prove a mark to be deceptive, the PTO must show that (1) the mark misdescribes a character, quality, function, composition or use of the goods; (2) prospective purchasers are likely to believe that misdescription; and (3) the misdescription is likely to affect the purchasing decision.

If Applicant's goods do not include silver birch extracts, then the mark SILVER BIRCH is misdescriptive of them. Given the "extraordinary cosmetic and medicinal benefits allegedly imparted by these ingredients, informed and intelligent prospective purchasers are the ones most likely to believe that the misdescription actually describes applicant's goods." As to the third prong:

With ever more scientific information about the range of benefits of these extracts, including as treatment for deadly melanomas and HIV/AIDS, the perceived benefits of “Silver Birch” as an ingredient in the identified goods also promise to increase beyond its current elevated level. Accordingly, we find that such a misdescription is likely to affect the decision to purchase the goods.

The Board therefore affirmed the alternative Section 2(a) refusal.

TTABlog note: For a similar triple refusal, see the NORMANDIE CAMEMBERT cheese case, TTABlogged here. The moral of the story is simple: if you don't respond properly to a Rule 2.61(b), your cheese may be up a tree.

Text Copyright John L. Welch 2009.

TTAB Affirms Single Creative Work and Mutilation Refusals of "CHOOSE TO BE RICH"

The application of Cashflow Technologies, Inc. to register the mark CHOOSE TO BE RICH for audio tapes featuring financial educational information, turned out to be a poor candidate for registration. The Board chose to affirm the PTO's refusals to register, finding that the phrase constitutes the title of a single creative work (and is thus unregistrable), and that it comprises a mutilation of the mark that appears on the specimens of use. In re Cashflow Technologies, Inc., Serial No 78965495 (March 26, 2009) [not precedential].


Single Creative Work: Under well-established law, the title of a single creative work cannot serve as a trademark. Cashflow argued, however, that the "content of each of [its] respective tapes is clearly different (e.g., like different books rather than different chapters of the same book) and therefore, [its specimen of use] is acceptable to show use of the mark on a series of creative works."

Examining Attorney Linda Lavache pointed out that Cashflow is selling several cassette tapes as a single work: one of its specimens displays six tapes in a cassette notebook. She submitted evidence showing that audio versions of books "are often sold in cassette form with multiple cassettes for practical reasons."

[A]pplicant apparently could have sold its cassettes individually but it did not. Applicant instead sells its YOU CAN CHOOSE TO BE RICH cassettes as a single work as if the cassettes were chapters of a book.

A book equals a single work. Ergo, the Board affirmed this refusal.

Mutilation: Under Rule 2.51(a), the mark shown on the application drawing must be a "substantially exact representation of the mark as used on or in connection with the goods and/or services." The question of whether a mark is a mutilation "boils down to a judgment as to whether that designation for which registration is sought comprises a separate and distinct 'trademark' in and of itself."

The Board looked to the "eye-dropper" case, in which an attempt to register the dropper by itself, apart from the watering can, was considered a mutilation of the mark. It also noted the recent "Upper 90" decision, in which mutilation was found because the specimen of use included a "degree symbol" that was missing on the application drawing (TTABlogged here).

Here, the Board observed that the words YOU CAN are intertwined with the letter "C" in CHOOSE TO BE RICH. "Indeed, the letter 'C' in 'Can' forms part of the letter 'C' in Choose." Moreover, the Board noted, the words "You," "Can," and "Choose" appear as in an English sentence. "These features support the argument that the mark would be viewed as YOU CAN CHOOSE TO BE RICH."

Finally, the Board asserted that the meaning of the two sentences CHOOSE TO BE RICH and YOU CAN CHOOSE TO BE RICH are not necessarily the same.

We conclude that the mark sought to be registered does not create a separate and distinct commercial impression from the other material on the specimen. Therefore, applicant's mark is not a substantially exact representation of the mark shown on the specimen.

And so, the Board affirmed the mutilation refusal.

TTABlog comment: Well, I think the Board got it half right. It strikes me that CHOOSE TO BE RICH does create its own commercial impression. That phrase is much larger than the words YOU CAN. Moreover, I don't agree that the "C" in Can "forms part of the letter 'C' in CHOOSE." The letter "C" in CHOOSE is readily recognizable with or without that small "C."

Text Copyright John L. Welch 2009.

TTAB Finds No Trademark Rights in OEM Who Applied "WASTEMAID" Mark at Others' Direction

In a 41-page, fact-packed opinion, the Board disposed of Anaheim Manufacturing Company's opposition to registration of the mark WASTEMAID in the design form shown below, for "food waste disposers, garbage disposers." Discarding Anaheim's likelihood of confusion claim (as well as its fraud and lack-of-bona-fide-intent claims), the Board found that Anaheim is a private label supplier who placed the subject mark on products at the direction of others, and never used the mark to identify itself as the source of the products. Because the opposed application was based on intent-to-use, the opposition was dismissed contingent upon the issuance of a registration certificate to Joneca Corporation. Anaheim Manufacturing Company v. Joneca Corporation, Opposition No. 91171906 (March 26, 2009) [not precedential].


The Board ground its way through the "voluminous" record and the "exhaustive" testimony depositions, to find that there is "no association between the WASTEMAID and Design mark and opposer as the source of the products in the mind[s] of the relevant consumers." In short, Anaheim failed to prove that it has a proprietary interest in the mark prior to Joneca's filing date (i.e., its filing date), and so its Section 2(d) claim was trashed.

Anaheim's fraud claim hinged on the assertion that Joneca, its sales representative and distributor, knew that any use of the mark by Joneca inured to the benefit of Anaheim. However, Joneca was never aware that Anaheim claimed ownership of the mark, and "[b]ased on applicant’s experience as opposer’s sales representative and a distributor, applicant viewed opposer as a private label supplier of the WASTEMAID and Design garbage disposers for Wilec Ltd."

Joneca believed that another company had prior rights to the mark in the United states, and when that company let its U.S. Registration expire, Joneca could have believed that it could claim ownership via its intent-to-use application. Therefore, Joneca did not knowingly make a false statement when it filed its application.

As to its bona fide intent, Anaheim argued that Joneca's could not have a bona fide intent because, pursuant to the agreements between the parties, Joneca was obligated to act on Anaheim's behalf. The Board, however, found no obligation on Joneca relating to ownership of the subject mark. In any case, even if Joneca breached the contract, "it is not apparent how that breach establishes that applicant's intent to use the mark was not a bona fide intent."

And so the Board sent all of Anaheim's claims down the drain, dismissing the opposition, contingently.

Anaheim Disposer

TTABlog note: Pamela Chestek, expert on trademark ownership issues, comments here at her Property, intangible blog.

Text Copyright John L. Welch 2009.

TTABlog Road Trip: Cary, North Carolina

I will be speaking to the Intellectual Property Law Section of the North Carolina Bar Association this Friday morning, along with Maury Tepper of the Womble, Carlyle firm. Our presentation is entitled "TTAB Tune-up: Getting Up to Speed on the Law and the Rules." We begin at 8:30 A.M.


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TTAB Finds "SPEEDOMETER" Generic for ... You'll Never Guess What

Aurel A. ("Alex") Astilean hit the proverbial wall in his attempt to obtain a Supplemental Registration for the term SPEEDOMETER for a "monitoring device worn on the person for tracking fitness of the walking and running exercises, and not concerned with the speed of the walking and running exercise." The Board barked, "not so fast, Mr. Astilean," and then proceeded to find the term to be generic for the goods. In re Astilean, Serial No. 76686920 (March 19, 2009) [not precedential]


With little explanation, as usual, the Board deemed the genus of the goods to be "wearable fitness-tracking devices." As to the meaning of "speedometer," the Examining Attorney provided two dictionary definitions and several website excerpts. The definitions were basically identical: "1. An instrument for indicating speed. 2a. An instrument for indicating distance traveled as well as the rate of speed. b. An odometer." The websites referred to speedometer/odometer/pedometer permutations and combinations.

Applicant's attorney, the indefatigable and always-appealing Myron Amer, argued that the term SPEEDOMETER is "perceived by the public only in relation to motor vehicles."

Being "worn on the person" brings into play legs in a running mode, not a rotating wheel, and not a MPH scale reading, and not other differences going far beyond the dictionary definitions of the Trademark Attorney.

The Board, perhaps exercised by that assertion, disagreed:

Not only is there no evidentiary support for applicant’s argument, but the examining attorney's evidence proves the contrary: These materials demonstrate that the term SPEEDOMETER is commonly applied to a "monitoring device worn on the person...,” and is readily understood by the public to designate such a device capable of variously displaying time, speed, distance traveled, heart rate, calories burned, and/or location. There is no basis to conclude that SPEEDOMETER only has meaning with reference to motor vehicles.

Despite Astiliean's "unclear" language excluding devices that measure speed, "the evidence of record makes clear that the term SPEEDOMETER refers to more than a device for simply measuring speed." According to the Board, "the online advertisements and articles demonstrate the use of SPEEDOMETER to refer to wearable fitness-tracking devices with a wide variety of functions other than speed."

... there are a number of devices in the marketplace referred to in whole or in part as a "speedometer," encompassing a range of functions and capabilities, and fitting easily within the genus to which applicant’s goods pertain.

And so the Board affirmed the refusal to register.

TTABlog comment: It seems to me that this supposed mark might have been refused on the ground of deceptiveness under Section 2(a). But that ground was not raised by the PTO. I have a difficult time agreeing that SPEEDOMETER is generic for a device that does not measure speed. Do you think the PTO's evidence met the applicable "clear evidence" standard?

TTABlog Side Bar: Astilean's website may be found here. Mr. Astilean lost another TTAB appeal last month (here), involving an unacceptable specimen of use for the mark FIT TEST. He is also the inventor of the "Treadmobile," which looks to me more like some kind of torture contraption than an exercise machine.

Astilean's Treadmobile

Text Copyright John L. Welch 2009.

Precedential No. 15: Finding No Evidence of Bona Fide Intent to Use Mark in US, TTAB Sustains Opposition to 44(e) Application

In an article that we penned early last year, entitled "Unfriendly Shores: Recent Developments in U.S. Law May Trouble Foreign Trademark Owners," Ann Lamport Hammitte and I asked whether, in light of a then-recent ruling on bona fide intent, the Board was about to open up Pandora's Box for foreign applicants and registrants. Herr Freidrich Winkelmann found out the answer to that question in connection with his Section 44(e) application (based on a German registration) to register the mark V.I.C. for vehicles. The Board ruled that he had failed to establish the requisite bona fide intent to use his mark in the USA, and so it sustained Honda's opposition on summary judgment. Honda Motor Co., Ltd. v. Friedrich Winkelmann, 90 USPQ2d 1660 (TTAB 2009) [precedential].


An applicant who applies for registration under Sections 44(e) of the Trademark Act must verify that he/she/it has a bona fide intent to use the mark in commerce. [The same is true for applicants under Section 44(d) and 66(a)]. The Board applies the "same objective, good faith analysis" as it applies under Section 1(b) for a U.S. applicant. See Lane Ltd. v. Jackson Int'l Trading Co., 33 USPQ2d 1351, 1355 (TTAB 1994).

In Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503 (TTAB 1993), the Board held that the absence of any documentary evidence regarding an applicant's bona fide intent "is sufficient to prove that an applicant lacks such intention" under Section 1(b).

Winkelmann responded to Honda's interrogatories by stating that he "has not had activities in the U.S. and has not made or employed a business plan, strategy, arrangements or methods there," and "has not identified channels of trade that will be used in the United States." The only documents he produced comprised printouts from his website, copies of his "German, European and WIPO" trademark registrations, and correspondence with the USPTO. In opposing the summary judgment motion, Winkelmann submitted "statements of subjective intent" made by others on his behalf.

Both Winkelmann and Honda pointed to Winkelmann's website as showing how the mark is used in Europe, but Applicant did not identify "the portions of the record ... that demonstrate that he manufactures vehicles in Germany or elsewhere."

To raise a genuine issue of material fact, applicant must rely on specific facts that establish the existence of an ability and willingness to use the mark in the United States to identify its claimed “vehicles for transportation” at the time of the filing of the application. Applicant’s declarations of outside counsel merely state opinions and do not provide specific facts in support of his position.

***
The website printouts are not translated, but judging from the graphics, the mark seems to be used to identify car care packages or promotional material, not the vehicles themselves, and there is no evidence of a bona fide intent to use the mark in the United States as to the goods listed in the application. Any intention to use the mark may go to promotional services for dealerships, but not to "vehicles for transportation."

The Board distinguished this case from Lane, supra, which involved a Section 44(d) application based on an Austrian priority filing. There the Board found the applicant's evidence of bona fide intent to be sufficient: applicant's principal was engaged in the tobacco marketing business, including the export of tobacco to the United States under a prior mark, and had made attempts to obtain a U.S. licensee. In contrast, here "there is no evidence that applicant is engaged in the manufacture or sale of automobiles under the claimed mark."

And so the Board granted the motion for summary judgment and sustained the opposition.

TTABlog comment: Wow! This is big! I can see the lack-of-bona-fide-intent issue being raised in every proceeding involving a Section 44 or 66 application (not to mention Section 1(b)). Plaintiff's will jump onto this decision as a vehicle for success, while defendants will try to maneuver into the Lane lane.

But hold on a second. You will notice that in this case, the lack-of-bona-fide-intent ground was added by Honda after it took discovery and learned that Winkelmann had no documentation to substantiate his intent. That makes sense, right? How can one make the claim (in good faith) without first taking discovery.

But with a Madrid-based Section 66 application, there's a Catch-22. Under Rule 2.107(b), a notice of opposition filed against a Section 66(a) application may not be amended to add grounds for opposition. [This ban on post-filing additions to the opposition grounds stems from the Madrid Protocol’s requirement that all grounds for opposition be included in the notification of opposition when it is timely transmitted to WIPO. See Madrid Protocol Article 5(2)(a) and MPIA Section 68(c)(2)].

So what is the trademark practitioner to do when opposing a Section 66(a) application? Should one include every conceivable ground for opposition in the original pleading, including lack-of-bona-fide-intent, expecting to weed out later the unsupportable grounds? Would this be a violation of Rule 11? For an early discussion of this dilemma, see the Welch and Lamport Hammitte article entitled "TTAB Practice and the Madrid Rule Changes."

And if you are not tired by now of what I have to say, you might peruse Part II of my article "TTAB Year in Review (2008)," where I asked the following questions (after the Enyce and Sex Rod decisions): "What do these precedential decisions mean for trademark practitioners? Do we always collect documentation before filing an intent-to-use application? Do we ask whether the client has any? Do we ask ourselves how we will prove a bona fide intent should that issue arise?"

Text Copyright John L. Welch 2009.

TTAB Finds "X-PIPE" Generic for ... Guess What?

In a semi-exhaustive decision, the Board granted Opposer Bassani Manufacturing's motion for summary judgment, sustaining an opposition to registration of the term X-PIPE for "internal combustion engine exhausts" on the ground of genericness. Although Applicant Campbell used the term "in the manner of a trademark" on his website, that evidence failed to overcome the "clear evidence of genericness" submitted by Bassani. Bassani Manufacturing v. Monty Allen Campbell, Opposition No. 91166939 (March 17, 2009) [not precedential].


The Board first found that the genus of Applicant's goods is "internal combustion engine exhausts which contain exhaust pipes and discharge pipes." The question, then, was whether the relevant public primarily understands X-PIPE to refer to that genus of goods.

Bassani relied on magazine articles, online publications, website printouts, copies of catalogues, and the declaration of one of Campbell's competitors, in urging genericness. [The prosecution file includes the PTO's grant of a letter of protest (filed by Bassani) that included nearly 100 pages of materials.] The Board took judicial notice of a definition of "pipe" from Delmar's Automotive Dictionary: an exhaust system.

Bassani provided "ample evidence" of use of the term "x-pipe" in a generic manner. Minor variation in the term (xpipe, XPIPE, X pipe, x pipe, X pipes, X Pipe, X Pipes, X-PIPE, X-PIPES) are "typically legally insignificant and do not avoid a finding of genericness."

Campbell asserted that Bassani's evidence came from competitors, not the public, but the Board pointed out that "competitor use is evidence of genericness." Moreover, the newspaper and magazine articles provide "strong evidence of the relevant public's perception of the designation 'x-pipe' as a generic term."

Also relevant was the use of the terms H-pipe and Y-pipe for exhaust systems and pipes "as evidence of naming conventions in the industry."

Campbell's website (below) did show use of X-PIPE in a trademark manner, but "in view of opposer's clear evidence of genericness, this evidence is not sufficient to raise a genuine issue of material fact by creating a mixed record of generic use."


The Board therefore sustained the opposition.

TTABlog comment: Oh well, Mr. Campbell may take solace in his ownership of the domain name "x-pipe.com" and his three U.S. patents.

If you had to choose, which would you rather own: the trademark registration for X-PIPE, or the domain name "x-pipe.com"?

Text Copyright John L. Welch 2009.