The TTABlog<sup>®</sup>: June 2010

TTABlog Quarterly Index: April - June 2010

E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. You may also follow the blog on Twitter (here). And don't forget to leave your comments! Finally, please report any broken or inoperative links, as well as any errors and omissions, to the TTABlogger at jwelch at lalaw.com.

Tremont Street, Boston(click on photos for larger picture)
Section 2(a) - deceptiveness:

Section 2(d) - likelihood of confusion:

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

Section 2(e)(1) - deceptive misdescriptiveness:

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

Precedential No. 22: Reversing 2(e)(4) Refusal, TTAB Finds "P.J. FITZPATRICK, INC." Not Primarily Merely a Surname

Bona Fide Intent:

TTAB Enters Summary Judgment: Applicant Lacked Bona Fide Intent to Use "FEAR THE FRIARS" for Clothing

Dilution:

Fraud:

Genericness:

Lack of Bona Fide Intent:

Use in Commerce/Drawing/Specimen of Use:

TTAB Discovery/Evidence/Procedure:

CAFC Decisions:

CAFC Oral Arguments:

Recommended Reading:

Other:

Text and photos ©John L. Welch 2010.

Daniel Kegan: "The grammar of intellectual property: Copyright is a noun, trademark is an adjective"

I don't like seeing the word "trademark" used as a verb. Nor the word "copyright." Daniel Kegan, of Kegan & Kegan in Chicago, doesn't either. He touches on this point in a brief article for the Illinois State Bar Association, entitled "The grammar of intellectual property: Copyright is a noun, trademark is an adjective." [pdf here]. Dan, whom we all know from the INTA list serv, has kindly given me permission to publish the article.

Illinois State Fair 2006
Text Copyright John L. Welch 2010.

TTAB Affirms Rejection of Catalogue Specimen for "CELLAR 360" for Wine

Applicant submitted, as its specimen of use for the mark CELLAR 360 for wine, a catalogue mailed to prospective customers, with the mark appearing on the cover (see below). Examining Attorney Karen K. Bush refused registration under Sections 1, 2, and 45 of the Trademark Act on the ground that the specimen does not show use of the applied-for mark as a trademark for the goods. The Board affirmed the refusal. In re Foster's Wine Estates Americas Company, Serial No. 77018496 (June 16, 2010) [not precedential].

Applicant argued that the specimen is proper under Land's End and Sones as a display associated with the goods. The Board, however, agreed with the Examining Attorney that the mark "functions only as a service mark associated with the consumers’ ordering and purchasing of wine." (emphasis in original).

We actually view the basis for the refusal herein to be less analogous to the line of cases focused on displays associated with the goods, growing out of the nuanced case law surrounding Trademark Rule 2.56(b), and rather more like factual situations where an applicant has misapprehended the nature or correct categorization of the term. Here, the applied-for matter clearly functions as a service mark for retail store services, but not as a trademark for wine.

Applicant asserted that substantially all of the wine in the catalogue is produced by Applicant itself, and therefore that the mark functions as a source indicator for wine -- i.e., a trademark.

The Board, however, did not agree that the case turned on whether the wines are produced by Applicant. Rather the question was "whether consumers will recognize CELLAR 360 as a source indicator for particular bottles of wine." Noting that the mark does not appear on the bottles of wine, where trademarks for wine normally appear, the Board reasoned as follows:

A critical element in determining whether this term functions as a trademark is the impression the term makes on members of the relevant public. In reaching our decision herein, we are focused on the totality of the perceptions of the prospective consumer upon receiving this mailer with its attendant offerings from CELLAR 360. We conclude that CELLAR 360 will be seen as a service mark for retail store services featuring wines, but not as a trademark for wine.

And so the Board affirmed the refusal.

TTABlog comment: Is it just me, or are these catalogue/website specimen cases getting to be confusing? For example, how is this case different from the Odom's sausage case TTABlogged here?

Text Copyright John L. Welch 2010.

Precedential No. 24: TTAB Says Reference to Documents (in Russian) Does Not Satisfy FRCP 33(d)

Applicant WDS responded to certain interrogatories by referencing its business records, pursuant to FRCP 33(b). The documents were in Russian. Opposers moved to compel supplemental responses that did not reference the Russian documents. The Board granted the motion to compel. Johnson & Johnson and RoC International S.A.R.L. v. Obschestvo s ogranitchennoy;otvetstvennostiu "WDS", 95 USPQ2d 1567 (TTAB 2010) [precedential].

Under TTAB precedent, a party seeking to invoke Rule 33(b) must meet three conditions: (1) it "must identify documents which the responding party knows to contain the responsive information, and may not merely agree to provide access to a voluminous collection of records which may contain the responsive information;" (2) it "may not rely on the option to produce business records unless it can establish that providing written responses would impose a significant burden on the party;" and (3) even if the responding party meets the above two requirements and “can identify particular documents in which the inquiring party will find its answers, the inquiring party must not be left with any greater burden than the responding party when searching through and inspecting the records."

Furthermore, "the determination and weighing of the parties’ respective burdens is only necessary and appropriate if the responding party already has established that it would be unduly burdensome for it to provide written answers to the interrogatories, and if its responses to the interrogatories have specified in sufficient detail the business records from which the answers to the interrogatories can be ascertained.” The third requirement, if at issue, often will not be met “because the responding party will have greater familiarity with its own records and will generally have a lesser burden than the inquiring party when searching through the relevant records.”

The Board found that Applicant failed to demonstrate that it would be unduly burdensome to provide separate and full answers to the interrogatories. Furthermore, Applicant failed to specify in detail the records from which the answers may be drawn.

The fact that the documents are in Russian "further complicates matters." The Board was unaware of any precedential decision involving foreign language documents, but several non-precedential decisions favored Opposers' position.

The Board noted that it need not reach the third condition here, but for completeness "and so as to dispel any doubt about the Board's frustration with applicant's approach to discovery," the Board considered that condition anyway. It found that "applicant’s burden to ascertain the answers from its business records is far less than opposers’ burden of surmising an answer, and that opposers’ burden is dramatically increased because the documents are in Russian."

The Board, in short, was not pleased with Applicant's position:

Applicant’s approach clearly thwarts the exchange of discoverable information as Fed. R. Civ. P. 33(d) contemplates because, as stated by opposers, "it forces the responding party first to translate all documents, then to wade through each document in an effort to identify responsive information, and then to guess which of that information was intended by the responding party as comprising the balance of the answer to a given interrogatory."

Finally, the Board pointed out that "[b]y requiring written responses ... in English, the Board is only requiring applicant and its counsel to summarize and explain what they found (when they reviewed the documents for production) and why the responses are contained in the documents."

And so the Board granted the motion to compel.

TTABlog comment: This, I think, cannot be a welcome decision for parties in non-English speaking countries. But you know what they say in Russia: "tough s*#tsky."

Text Copyright John L. Welch 2010.

Precedential No. 23: Finding Third-Party Registrations Not Probative, TTAB Reverses 2(d) Refusal

In this precedential ruling, the Board reversed a Section 2(d) refusal to register the mark EPIC for "personal headlamps," finding the mark not confusingly similar to the identical mark for "electric lighting fixtures." The Board took a dim view of the third-party registrations introduced by the Examining Attorney, deeming them not probative and pointing out that that "examining attorneys must review the registrations carefully to ensure that each registration presented is probative and that the number of registrations is sufficient, along with other types of evidence, to establish that the types of goods at issue are related." In re Princeton Tectonics, Inc., 95 USPQ2d 1509 (TTAB 2010) [precedential].

The Examining Attorney first feebly argued that personal headlamps and electric lighting fixtures are related because both emit light. Next, she argued that registrant's identified goods encompass applicant's goods because "a fixture can include a personal headlamp, as such goods are placed in a fixed position on one's head or helmet." The Board was understandably not impressed.

The Examining Attorney also submitted six third-party registrations and copies of several webpages, but the Board emasculated them. Two of the registrations listed a diversity of unrelated goods -- one included "virtually everything under the sun, including the kitchen sink" -- and therefore their probative value was diminished. Only one registration "arguably includes headlamps," but one registration is not enough to show that the involved goods are related.

In sum, we find that the third-party registrations are not probative of whether personal headlamps and electric lighting fixtures are related. While third-party registrations can play an important role in establishing that the types of goods at issue are related, examining attorneys must review the registrations carefully to ensure that each registration presented is probative and that the number of registrations is sufficient, along with other types of evidence, to establish that the types of goods at issue are related.

The website evidence was likewise non-probative because it either failed to identify the goods at issue here, or it presented a broad range of varied and unrelated goods.

And so the Board reversed the refusal to register.

TTABlog comment: Judge Walsh, who wrote this decision, recently co-authored (with Michael Hall) a paper on third-party registration evidence and its potential weaknesses. (TTABlogged here).

Compare the recent TTAB decision in Franciscan Vineyards, Inc. v. BeauxKat Enterprises LLC, Opposition No. 91181755 (June 21, 2010) [not precedential], finding beer and wine related based in part on 30 third-party registrations that included beer and wine in their identifications of goods. Judge Walsh was a member of the Board panel.

Text Copyright John L. Welch 2010.

TTAB Reverses 2(d) Refusal As Waste of Everyone's Time

The Board took two Examining Attorneys to task in this appeal from a Section 2(d) refusal. Applicant Grand Prix sought to register the mark SPYN in the stylized form shown immediately below, for various automobile parts. The Examining Attorneys saw a likelihood of confusion with the registered mark SPYN in the different stylized form shown next below, for "audio equipment namely speakers, equalizers, and amplifiers." But the Board found no evidence in the record that the involved goods are related, and more specifically that "automobile owners might encounter the respective goods in the same channels of trade." In re Grand Prix Import Inc., Serial No. 77408025 (June 2, 2010) [not precedenital].

The only evidence of record supporting the refusal comprised two webpages: one showing that Don's Car Stereo of Lynchburg, VA, sells auto stereos, installs windshield wipers, tints windows and customizes wheels: the other indicating that Xtreme Cary Toys of Birmingham, AL, offers a wide array of custom accessories allowing an owner to "trick out" his or her vehicle. But neither showed that the involved goods are sold under the same mark.

The original Examining Attorney had provided no evidence with the refusal. When applicant requested reconsideration, a second Examining Attorney, "upon finding a case on appeal with no evidence in the record but determining to adhere to the action from which the appeal was taken, should have rightly wanted to supplement the record with new and substantial evidence."

On the other hand, her weak attempt to introduce insubstantial evidence as an appendage to a form denial of request for reconsideration does not comport with good examination practice, and basically wastes everyone’s time. This situation should have resulted in the newly-assigned Trademark Examining Attorney’s filing a written request for the Board to suspend the appeal and remand the application for further examination. TBMP § 1207.02 (2d ed. 2004).

The Board observed:

Had applicant not requested reconsideration but rather proceeded with merely an appeal, we would have been faced with a case having absolutely no evidence in support of a refusal. Aside from the manifest injustice to applicant of having had to suffer the expense of an appeal in a case with no evidence, the Board would have had to expend its resources in processing and deciding an appeal with a result that would have been clear to all.

And so the Board reversed the refusal.

TTABlog comment: Perhaps we should start a new category of decisions: WYHRR? Would You Have Refused Registration?

Text Copyright John L. Welch 2010.

Test Your TTAB Judge-Ability: Is "LEMONADE" Merely Descriptive of Restaurant Services?

Flower Restaurant Group, Inc. applied to register the mark LEMONADE for “restaurant services; catering; self service restaurants.” The Examining Attorney deemed the mark merely descriptive and refused registration under Section 2(e)(1), arguing that Applicant highlights lemonade as a “house specialty.” Applicant contended that the mark is merely suggestive, evoking “an earlier time in a consumer’s life, when she was a kid, when she was focused on having fun and (in retrospect), when life was easy.” How do you think this one came out? In re Flower Restaurant Group, Inc., Serial No. 77455669 (June 2, 2010)[not precedential]

The Examining Attorney pointed to Applicant’s website, which draws attention to its lemonade: “Once you’ve filled your tray with quirky, mouthwatering morsels, pay up at the central stand, where you’ll select from the several varieties of the requisite lemonade. Favorites are rosemary, watermelon and pink ginger….” [Not so popular are spinach, onion, and licorice - ed.]

Applicant contended that the décor of its restaurant reflects the symbolic role of lemonade: “it is evocative of a grade-school cafeteria.” Applicant further noted that, although its menu includes four blends of lemonade, it also includes other beverages and a selection of food items.” [Why on earth would anyone who wanted to go out for dinner, choose a place reminiscent of a grade school cafeteria? - ed.]

The Board didn’t buy what Applicant was offering. It was not convinced that the word “lemonade” by itself evokes the meaning that Applicant suggested, and instead it agreed with the Examining Attorney that LEMONADE is merely descriptive of the services. “[I]t is enough that the term describes one significant feature of the services.”

Applicant submitted third-party registrations for MUSTARD CAFE, KETCHUP, HONEY, CITRUS, and FIG & OLIVE, all for restaurant or related services, but the Board poo-pooed that evidence, since the Board must decide each case on its unique facts and the record before it.

Furthermore, we do not find any of the marks applicant references analogous to LEMONADE. For example, it is not reasonable to conclude that either mustard or ketchup would generally serve as a featured attraction in a restaurant. Accordingly, we reject that argument. [I believe that the legendary MUCKY DUCK mustard originated at a restaurant of the same name. So perhaps mustard may be a “featured attraction” at a restaurant. - ed.]

And so the Board affirmed the refusal.

TTABlog comment: Having recently imbided about 30 ounces of “lemonade” in a short period of time in preparation for a certain medical procedure, I’m currently not very interested in anything having to do with LEMONADE.

Text Copyright John L. Welch 2010.

Test Your TTAB Judge-Ability: Are These Two Marks Confusingly Similar?

Okay, all you judicial wannabes out there. How would you decide this one? Applicant sought to register the mark ICE AGE FULL LIP SERVICE LIP PLUMPER for "non-medicated lip preparations" [LIP PLUMPER disclaimed]. Registration was refused under Section 2(d) in view of the registered mark LIP SERVICE for "non-medicated lip balms" [LIP disclaimed]. It's your call. In re Flageoli, Ltd., Serial No. 78969164 (June 4, 2010) [not precedential].

The goods: The Board found that Registrant's goods are encompassed by Applicant's identification of goods. Applicant argued that its mark "will be used to identify a 'lip plumper' used to make lips appear larger and more attractive while the cited registration is for lip balms used to relieve the discomfort of chapped lips." [I thought a "lip plumper" was something that Ralph Kramden threatened to give Alice on the "Honeymooners." - ed.]

The Board pointed out, however, that the Section 2(d) issue must be decided on the basis of the goods set forth in the subject application and registration, and not on what the goods actually are in the real world.

The marks: Based on definitions of "lip" and "service," the Board found that "lip service" means "to aid or restore lips." According to the Board, this "is further corroborated by the applicant's addition of the word 'Full' before 'Lip Service' creating the term 'Full Lip Service" further emphasizing the highly suggestive, if not descriptive, nature of the term 'Lip Service' as used by applicant." [Huh? - ed.]

Therefore, the term "Ice Age" is the dominant portion of Applicant's mark, and its appearance as the first part of the mark reinforces that dominance.

Although "Lip Service" is a suggestive term that "limits the scope of exclusivity afforded the registered mark," the appearance of the identical term in the applied-for mark cannot be ignored. However, comparing the marks in their entireties, "the addition of the term 'Ice Age' to applicant's mark serves to distinguish the marks because consumers are likely to regard “Lip Service” as used in applicant’s mark as indicating the function of applicant’s lip preparation, and to look to the other elements in the mark to indicate the source of applicant’s product.

As the CCPA stated in Sure-Fit Products Company v. Saltzson, 117 USPQ 295, 297 (CCPA 1958):

It seems both logical and obvious to us that where a party chooses a trademark which is inherently weak, he will not enjoy the wide latitude of protection afforded the owners of strong trademarks. Where a party uses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark without violating his rights. The essence of all we have said is that in the former case there is not the possibility for confusion that exists in the latter case.

Concluding that the dissimilarities between the marks outweigh the other relevant du Pont factors, the Board reversed the refusal.

Lip service?
TTABlog comment: A tip of the TTABlog fedora to Applicant's attorney and loyal reader Daphne Sheridan Bass.

Text Copyright John L. Welch 2010.

Precedential No. 22: Reversing 2(e)(4) Refusal, TTAB Finds "P.J. FITZPATRICK, INC." Not Primarily Merely a Surname

The TTAB reversed a Section 2(e)(4) refusal to register the mark P.J. FITZPATRICK, INC. for various construction services, finding the mark not to be primarily a surname. The Board attempted to clarify prior case law by stating that "if a mark consists of two initials (or more) coupled with a surname, it typically will convey a commercial impression of a personal name, and thus generally will not be primarily a surname." In re P.J. Fitzpatrick, Inc., 95 USPQ2d 1412 (TTAB 2010) [precedential].

The case that particularly needed clarification was the CCPA's decision in In re I. Lewis Cigar Mfg. Co., 98 USPQ 265 (CPA 1953), in which the court found the mark "S. Seidenberg & Co.'s" to be primarily merely a surname. The Board observed that in Lewis Cigar, "the court did not find as a matter of law that a single initial added to a surname could never convey something other than surname significance." It depends on the facts.

Here there are two initials, not one, and "a segment of society uses multiple initials in lieu of given names, a fact not before the court in Lewis Cigar." According to the Board, Lewis Cigar suggests "that the coupling of two initials and a surname creates a full name and therefore a registrable mark."

Of course, the term "INC." has no effect on the Section 2(e)(4) question. The Board therefore held that P.J. FITZPATRICK, INC. is not primarily a surname.

TTABlog comment: The J.J. YELIN case in 2007 was a precursor to this ruling. (TTABlogged here). There the Board (again in a decision by Judge Bergsman) found the mark not to be primarily a surname, but on the narrower ground that the "primary significance of J. J. YELEY is the race car driver, and this primary significance outweighs the surname significance."

Text Copyright John L. Welch 2010.

TTABlog Recommended Reading: Ted Davis on Recent Developments in Trademark and Unfair Competition Law

I never miss Ted Davis's presentation at the INTA annual meeting. Judging from the size of the crowd in attendance this year, a lot of other people feel the same way. Ted has once again kindly allowed me to post his latest 50-page article/outline on "Recent Developments in U.S. Trademark and Unfair Competition Law" (pdf here). Unlike his INTA talk, this paper integrates TTAB decisions with court developments.

Ted Davis

Table of Contents
I. USE IN COMMERCE
II. MARK DISTINCTIVENESS
III. FUNCTIONALITY
IV. STANDING
V. LIKELIHOOD OF CONFUSION
VI. COUNTERFEITING
VII. DILUTION
VIII. CYBERSQUATTING
IX. FALSE ADVERTISING
X. FALSE ENDORSEMENT AND RIGHT OF PUBLICITY
XI. SECONDARY LIABILITY
XII. THE FIRST AMENDMENT
XIII. DEFENSES
XIV. REMEDIES
XV. USPTO PRACTICE AND PROCEDURE
XVI. JUDICIAL AUTHORITY OVER REGISTRATIONS

Precedential No. 21: TTAB Sustains Dilution Claim For the First Time in Seven Years

Not since Hector was a pup has the TTAB sustained a dilution claim. In fact, it had sustained only one (NASDAQ) since dilution became available as a ground for opposition and cancellation in 1999. But the Board has found the mark THE OTHER RED MEAT for "fresh and frozen salmon" to be dilutive of the registered mark THE OTHER WHITE MEAT for "association services namely, promoting the interests of members of the pork industry." A "well-designed" telephone survey demonstrated an association between the marks, and played a crucial role in the Board's decision. National Pork Board and National Pork Producers Council v. Supreme Lobster and Seafood Company, 96 USPQ2d 1479 (TTAB 2010) [precedential].

This posting will not attempt to cover every facet of the decision, but will focus on the elements of the Section 43(c) dilution claim: (1) whether opposer's mark is famous: (2) whether it became famous prior to Applicant's filing date (i.e., its constructive first use date); and (3) whether Applicant's mark is likely to blur the distinctiveness of opposer's famous mark.

Fame?: Advertising expenditures, tracking studies, consumer surveys, and media references convinced the Board that THE OTHER WHITE MEAT is famous. "It is among the most well-know advertising slogans in the U.S. given awareness rates of eighty to eighty-five percent of the general adult population and rates of correct source recognition at nearly seventy percent of the population."

Famous When?: The Board also concluded that the fame of THE OTHER WHITE MEAT "was well-established prior to the date that Supreme Lobster and Seafood Company filed the involved application."

Blurring?: The Board looked to the non-exclusive factors set out in Section 43(c)(2)(B).

Beginning with the similarity between the marks, it found this factor favored Opposer, noting that the survey evidence "shows that more than thirty-five percent of the survey respondents associate applicant's slogan with opposers' slogan (or with the pork being promoted by the mark) in an unaided survey response. This degree of association demonstrates that a sizeable segment of the target population sees the two marks as similar."

Because Opposer's mark is registered, it is entitled to a presumption of inherent distinctiveness. Moreover, the mark is merely suggestive of "a healthy attribute of the commodity being promoted by the pork industry, namely, the color of some cuts of pork after being cooked." The Board found the mark to be inherently distinctive, and this factor weighed in Opposer's favor.

Opposer's use of the mark is "virtually exclusive," which again supports a finding of dilution by blurring.

Voluminous evidence established how well recognized the Opposer's mark is, and led the Board to conclude that "THE OTHER WHITE MEAT, has become part of the fabric of popular culture in the United States." This also supports "the conclusion that dilution by blurring is likely upon the introduction of applicant's slogan into the marketplace."

The Board was reluctant to find bad faith on the part of applicant, but it did find that "applicant's principals may have believed it was permissible for applicant to create such an association," and so the Board concluded that this factor favored Opposer.

Finally, as to actual association between Applicant's mark and Opposer's mark, the Board noted that Applicant has not yet used its mark, and so "this statutory factor too is neutral but consistent with a likelihood of dilution by blurring."

The Board therefore found dilution by blurring likely. It then declined to consider Opposer's likelihood of confusion claim.

TTABlog comment: Applicant put up quite a fight, but Opposer's evidence was overwhelming.

It is interesting that the Board declined to decide the Section 2(d) claim. Typically, it's the other way around in 2(d)/dilution cases. Would judicial economy have been better served by deciding both claims, in case one ruling gets overturned on appeal? How do you think the Section 2(d) claim would come out?

Copyright John L. Welch 2010.

TTAB Affirms Disclaimer Requirement of "VILLAGE" in "HEALTH VILLAGE" Mark for Real Estate Services

The Board affirmed a refusal to register the mark HEALTH VILLAGE for rental, sales, management, and development of real estate, based on Applicant's refusal to disclaim the word VILLAGE. Examining Attorney Lydia M. Belzer maintained that VILLAGE identifies a feature or characteristic of the services because they "pertain to villages and/or to buildings set up in such a manner as to form villages." In re Adventist Health System/Sunbelt, Inc., Serial Nos. 77589735 and 77589737 (May 20, 2010) [not precedential].

The Board agreed:

The word VILLAGE clearly and unambiguously describes a significant feature of the real estate services in that it clearly denotes a particular location involving a grouping of residences and other buildings in the immediate vicinity of each other, which is directly pertinent to the rental and leasing, management, development and sales of real estate. We also find that the word VILLAGE when combined with the word HEALTH does not lose its descriptive significance.

Applicant contended that VILLAGE "merely describes the organization or location of building or structures" and is "one or more steps" from describing the services. The Board disagreed:

Here the term VILLAGE, as applicant apparently acknowledges, immediately conveys the information that the properties that applicant is renting, leasing, managing, developing or selling are located in a village, or are organized in such a manner as to resemble the form of a village.

The Board noted that the Board's history of disclaimers as to the word VILLAGE is "inconclusive," but in any case decisions by Examining Attorneys in other applications are not binding on the Board.

And so the Board affirmed the refusal.

TTABlog comment: What do you think about this one? Adventist is apparently developing a complex in Winter Park, Florida that one could consider to be a "village." But where's the evidence of that in the record? Otherwise, shouldn't there be some evidence that real estate developers develop "villages?"

Text Copyright John L. Welch 2010.

Fraud and Lack of Bona Fide Intent: Some Thoughts on Remedies

Several TTABlog readers and I have been trying to crystallize our understanding of the remedies available under a claim of fraud (based on non-use) and those available under a claim of lack of bona fide intent. The bottom line is that fraud is the "nuclear" option, while a false statement that falls short of fraud may not be, unless the false statement pertains to all the goods or services in a class.

Fraud: If one proves fraud based upon a false verification of use, even as to one item in a list of items, the Board will hold the challenged application or registration void as to the entire class of goods or services involved. This was recently confirmed by the Board in Meckatzer Löwenbräu Benedikt Weiß KG v. White Gold, LLC, 95 USPQ2d 1185 (TTAB 2010) [precedential]. ("In re Bose did not change the consequences of fraud, when it is proved. A finding of fraud with respect to a particular class of goods or services renders any resulting registration void as to that class.") See also, Herbaceuticals, Inc. v. Xel Herbaceuticals, Inc., 86 USPQ2d 1572 (TTAB 2008) [precedential] [dictum] ("the registration is void in the international class or classes in which fraud based on nonuse has been committed.") [Note that the Xel decision was subsequently vacated (here) because the grant of partial summary judgment on the fraud claim was based on a pre-Bose standard.]

In short, Bose raised the barrier for proving fraud, but it did not affect the severity of the remedy (at least according to the TTAB).

Lack of Bona Fide Intent: Nearly every TTAB decisions on this issue has involved the lack of bona fide intent as to all the goods in an application. The application is deemed void ab initio. See, e.g., The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, Opposition No. 91170589 (May 18, 2010) [not precedential].

However, in contrast to fraud, a successful claim of lack of bona fide intent knocks out only the particular goods or services as to which there was no intent, not the entire class. See The Wet Seal, Inc. v. FD Management, Inc., 82 USPQ2d 1629 (TTAB 2007) [precedential]. ("contrary to opposer's contention, an application will not be deemed void for lack of a bona fide intention to use absent proof of fraud, or proof of a lack of bona fide intention to use the mark on all of the goods identified in the application, not just some of them. Thus, we will decide this issue in terms of whether the items, if any, for which opposer has shown applicant's lack of bona fide intention to use the mark should be deleted from the application.").

Non-use Without a Fraud Claim: In a use-based application or registration, a false declaration will not result in the application being declared void ab initio unless fraud has been claimed and proven. Otherwise, just as in Bose, where the fraud claim ultimately failed, the application or registration may be amended to remove the particular "non-used" goods or services. See Grand Canyon West Ranch, LLC v. Hualapai Tribe, 78 USPQ2d 1696 (TTAB 2006) [precedential]. )"... in the absence of a fraud claim, an applicant who bases its application on Section 1(a) (use in commerce) but who did not use the mark on some or all of the goods or services identified in the application may 'cure' this problem by amending its basis to Section 1(b) (intent to use)."

[You may recall that in the Grand Canyon West case, the Board granted Applicant's motion to deleted the "unused" services. Opposer then obtained leave to add a fraud claim, and the Board sustained the opposition on that ground. Grand Canyon West Ranch, LLC v. Hualapai Tribe, 88 USPQ2d 1501 (TTAB 2008) [precedential].]

Combining Fraud with Lack of Bona Fide Intent: What about alleging that an Applicant's or Registrant's lack of bona fide intent amounts to fraud? Why not? I'm not aware of a decision on point, but I don't know of any to the contrary either. [In the recent White Gold vodka case, cited above, the Petitioner alleged fraud based on lack of bona fide intent (since Registrant had allegedly put the mark into use on only one of thirty items in its identification of goods), but that fraud claim was knocked out on summary judgment due to the inadequacy of the pleading in light of Bose.]

So that's my summary of the remedies situation as I understand it. Comments and corrections welcome.

Text Copyright John L. Welch 2010.

TTAB Finds "THREE-STRAND FLOSS" Generic for ... Guess What?

The Board granted a petition for cancellation of a Supplemental Registration for THREE-STRAND FLOSS [with FLOSS disclaimed], finding it to be generic for "cotton thread and yarn." It concluded that "it is common practice in the industry to refer to the genus of 'cotton thread and yarn' by the number of strands in the product in the format with the number first followed by the words 'strand' and 'floss.' Therefore the Board ruled that "respondent may not lay claim to that particular arrangement of words." Weeks Dye Works, Inc. v. Valdani, Inc., Cancellation No. 92049174 (May 11, 2010) [not precedential].

The Board noted that, because the registration at issue is a Supplemental Register, Petitioner's assertion that the phrase is merely descriptive is irrelevant. "[T]he only issue to be decided is whether respondent’s mark THREE-STRAND FLOSS is generic for floss made of three strands and as such unregistrable on the Supplemental Register."

The board, as usual, found the genus of goods to be those set forth in the identification of good, namely, “cotton thread and yarn” which includes “floss.” The question, then, was whether the relevant purchasers (here, the general public) would understand THREE-STRAND FLOSS to refer to the genus.

Petitioner relied on dictionary definitions, letters from industry experts, and website evidence in arguing that it is “the industry’s common practice of stating the number of strands when referencing floss, whether in conjunction with the sale of floss, kits that use floss, or needles used with floss.”

Respondent contended that THREE-STRAND FLOSS is a new term, and further that competitors have no need to use the term since the word PLY means the same as STRAND.

The Board was unpersuaded, observing that "[t]he fact that the three-strand floss is a new product and respondent is the first to use 'three-strand floss' in connection with floss is not dispositive." Furthermore, the fact that another term is available for use does not turn a generic term into a protectable one.

Despite Respondent's efforts regarding promotion and use of THREE-STRAND FLOSS, it remains generic:

“While it is always distressing to contemplate a situation in which money has been invested in a promotion in the mistaken belief that trademark rights of value are being created, merchants act at their peril in attempting, by advertising, to convert common descriptive names, which belong to the public, to their own exclusive use. Even though they succeed in the creation of de facto secondary meaning, due to lack of competition or other happenstance, the law respecting registration will not give it any effect.” Weiss Noodle Co. v. Golden Cracknel & Specialty Co., 290 F.2d 845, 129 USPQ 411, 414 (CCPA 1961)."

Agreeing with Petitioner's argument about the industry's naming convention, the Board sustained the petition and cancelled the registration.

TTABlog comment: Note that the Board didn't even mention In re American Fertility Society, 51 USPQ2d 1832 (Fed. Cir. 1999), which requires proof that the general public understands the phrase as a whole to refer to the genus. Usually that means evidence showing that the phrase itself has been in use by others to refer to the genus. See, for example, the Board's reluctant reversal in In re American Food Co., Serial Number 76101362 (September 29, 2004) [not citable] [Applying American Fertility in finding THE BEEF JERKY OUTLET not generic for retail stores featuring meat products]. [TTABlogged here].

In a number of genericness cases, however, the Board has side-stepped that test, as it did in the recent ELECTRIC CANDLE COMPANY case (TTABlogger here). I'm not complaining. I think that's a good thing.

Text Copyright John L. Welch 2010.

Finding Lack of Bona Fide Intent, TTAB Sustains "MIDDLE EARTH JEWELRY" Oppositions

Pro se Applicant Joseph M. Bumb got the TTABum's rush in his quest for registration of the marks MIDDLE EARTH JEWELRY and ARAGORN for various jewelry items. In light of Bumb's lack of documentation and his own testimony, the Board found the applications to be void ab initio due to Bumb's lack of bona fide intent to use the marks. The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, Opposition No. 91170589 (May 18, 2010) [not precedential].

A 2008 Harris poll named Lord of the Rings as the third most popular book of all time. [Can you name the other two? - ed.] Opposer is a film production company that owns "the exclusive world-wide performance, motion picture and ancillary rights in and to the Tolkien works." It has licensed its Tolkien-related marks for many goods (including jewelry), and the films based on the series are the most successful movies in U.S. box office history.

Applicant Bumb "operates a store at the San Jose Flea Market in California, where he buys and sells a range of products including jewelry, collectibles and memorabilia. He also engages in the custom design and manufacture of jewelry."

Bumb admitted that he has no documentation relating to his intent to use the MIDDLE EARTH JEWELRY or ARAGORN marks. That statement alone established a prima facie case of lack of bona fide intent, and shifted the burden of production to Bumb. He submitted no evidence at trial on the issue, but in his trial testimony (taken by opposer) he testified that he couldn't recall whether he had an intent to manufacture or sell jewelry under these marks. "The only thing I did was trademark the name." [sic!]

Indeed, applicant’s testimony includes what essentially are his admissions that he filed his intent-to-use application merely to reserve a right in the MIDDLE EARTH JEWELRY mark “as an insulator or a buffer."

The same testimony and reasoning applied to the ARAGORN mark.

And so the Board found the applications void ab initio for lack of a bona fide intent to use the marks.

TTABlog comment: Opposer had to spend a lot of time and money to block these applications. It seems there should be a faster way to resolve cases like this. Unfortunately, in my experience, a summary judgment motion seldom does the trick because the Board seldom grants summary judgment. Let's face it, it's a lot easier to deny a summary judgment than to write a decision justifying the granting of one.

Text Copyright John L. Welch 2010.

Precedential No. 20: Per Rule 2.107(b), TTAB Denies Motion to Amend Madrid Opposition

Opposer sought to amend its Notice of Opposition to add a new ground (lack of bona fide intent), but it ran into one big problem: the opposed application is a Madrid Request for Extension of Protection and Rule 2.107(b) prohibits such an amendment in a Madrid opposition. Opposer claimed that it was merely clarifying an existing ground, but the Board disagreed and it denied the motion to amend. O.C. Seacrets, Inc. v. Hotelplan Italia S.p.A., 95 USPQ2d 1327 (TTAB 2010) [precedential].

Opposer's notice of opposition alleged, in pertinent part, that "Applicant lacks a bona fide intent to use SECRETS LINE ... and therefore, has committed fraud on the U.S. Patent and Trademark Office."

Its proposed amendment would replace that allegation with this: "In violation of 15 U.S.C. 1141(f) Applicant lacked a bona fide intent to use SECRETS LINE ...(for certain goods and services in the opposed application)."

Opposer argued that the claim that applicant lacked a bona fide intent was an element of its original fraud claim, and that the proposed amendment is therefore a permissible clarification of an existing ground. The Board found that argument unpersuasive:

Although the particular basis for opposer’s claim of fraud in this case was the allegation that applicant falsely stated it had a bona fide intent to use its mark on all of its identified goods and services, applicant was apprised of only one ground by Paragraph 13 of the original notice of opposition, that of fraud. Fraud was the ground that applicant defended against in its motion for judgment on the pleadings, and the ground upon which judgment for applicant was entered by the Board in its April 2, 2010 order. We will not parse an asserted ground to see if any of the elements that go to pleading that ground would independently state a separate ground.

And so the Board denied the motion to amend.

TTABlog comment: On March 9, 2010, Applicant moved for judgment on the pleadings as to Opposer's original fraud claim on the ground that it was inadequately pleaded under Bose. Opposer did not contest the motion, and it was granted on April 2nd.

Meanwhile, on March 29th Opposer filed a combined motion to amend the opposition to assert the bona fide intent claim, and a motion for summary judgment on that "new" claim. The denial of the motion to amend rendered the summary judgment motion moot.

Hat tip to TTABlog reader Mark Lebow, Applicant's counsel.

Text Copyright John L. Welch 2010.

TTABlog Wants Your Comments

Did you know that you may leave a comment on any TTABlog posting? You may do so anonymously - even I don't know who you are. Of course, I edit the comments and reject the spammers, etc. But I won't reject a comment just because the commenter disagrees with me. So fire away!

P.S.: Those of you who receive the Feedblitz e-mail may not see the "comment" link, in which case you will have to go to the blogsite itself to leave your comment.
.

Finding "ORGANIC ASPIRIN" Deceptively Misdescriptive of and Deceptive for Dietary Supplements, TTAB Sustains Bayer Opposition

The Board sustained an opposition to registration of the mark ORGANIC ASPIRIN for "dietary supplements for human consumption," finding it to be deceptively misdescriptive under Section 2(e)(1) and deceptive under Section 2(a). Applicant unsuccessfully argued that the combination of "Organic" with "Aspirin" is incongruous since there is no such thing as organic aspirin, and therefore that the mark is inherently distinctive. But Applicant's own advertising materials proved to be a major pain in the argument. Bayer Aktiengesellschaft v. Stamatios Mouratidis, Opposition No. 91185473 (May 21, 2010) [not precedential].

Bayer established its standing by submitting it federal registrations for the mark BAYER for vitamin, mineral and nutritional supplements, thereby proving its commercial interest in the proceeding.

The CAFC's test for deceptiveness under Section 2(a) has three parts:

Is the term misdescriptive of the character, quality, function, composition or use of the goods?
If so, are prospective purchasers likely to believe that the description actually describes the goods?
If so, is the misdescription likely to affect a significant portion of the relevant consumers’ decision to purchase?

The third question, whether the misdescription is likely to affect the decision to purchase, distinguishes marks that are deceptive from marks that are merely deceptively misdescriptive. [What difference does it make? Deceptively misdescriptive marks may be registered under Section 2(f), deceptive marks cannot be - ed.]

As to question 1, the Board found it "plausible that dietary supplements could contain aspirin for its cardiovascular and other health benefits. *** Applicant’s dietary supplements do not contain acetylsalicylic acid otherwise known as aspirin. Thus, the term 'Aspirin' is misdescriptive of applicant’s goods."

As to question 2, the Board concluded that the term ORGANIC ASPIRIN conveys the literal commercial impression that applicant’s products are, or contain, a natural aspirin product. "The text of applicant’s websites and advertising ... reinforces this commercial impression by contrasting applicant’s products with synthetic aspirin. ... applicant’s advertising leads consumers to believe that there are two types of aspirin: organic and synthetic."

Applicant argued that consumers know there is no such thing as "organic aspirin," but the Board observed that "[p]resumably, dietary supplements are available to all consumers some of whom may not know that there is no such thing as organic aspirin." Moreover, Applicant's own advertising is "leading consumers to mistakenly believe that its product is, or contains, aspirin derived from natural products."

Finally, as to question 3, the Board found that the use of the term “aspirin” in applicant’s mark ORGANIC ASPIRIN "is likely to affect the purchasing decision because consumers will purchase applicant’s dietary supplements in the mistaken belief that the products contain aspirin and, thus, provide the health benefits of aspirin." Moreover, the use of the term ORGANIC ASPIRIN "is likely to affect the purchasing decision of consumers who want the benefits of aspirin from a natural source, as opposed to synthetic chemicals, without the problems that traditional aspirin may cause."

And so the Board sustained the opposition.

TTABlog comment: Compare this case with the TTAB's recent ILEX decision (TTABlogged here), wherein the Board found that mark neither deceptive for, nor deceptively misdescriptive of, medicated skin care preparations.

Text Copyright John L. Welch 2010.

Test Your TTAB Judgeability: Is "BLUECAR" Merely Descriptive of Electric Vehicles?

Applicant Bollore sought to register the mark BLUECAR for electrically-powered vehicles, but the Examining Attorney refused registration on the ground that the mark is merely descriptive under Section 2(e)(1), reasoning that Applicant's identification of goods may encompass blue-colored electric cars. Bollore argued that BLUECAR is a double entendre because the mark is used in connection with environmentally friendly (i.e., blue) vehicles. The Board rendered a split decision. How would you rule? In re Bollore, Serial No. 79039545 (May 20, 2010) [not precedential].

To prove that the word "blue" means environmentally friendly, Bollore submitted excerpts from six websites from entities that use the word "blue" as part of their names and in connection with renewable energy. In view of that evidence, according to the panel majority, the Examining Attorney failed to give "appropriate consideration to the full context in which this mark will be used."

Applicant states that it intends to offer the goods in a range of colors, including blue. Therefore, potential purchasers of applicant’s cars, and the other goods identified, will approach the purchase with the understanding that the cars are available in a range of colors. Indeed, any other understanding would contradict both logic and experience. It would be unconventional to say the least for applicant, or any other car company, to offer its cars in only one color. Therefore, potential purchasers will perceive BLUECAR, not as merely describing the cars, even the cars which may be blue. Rather potential purchasers will perceive BLUECAR either as an arbitrary mark, or perhaps as a mark suggesting a clean, blue sky, that is, that the electric powered vehicles are environmentally friendly, as applicant argues. It would not make sense for potential purchasers who see the BLUECAR mark applied to cars of various colors to perceive BLUECAR as merely describing the color of some of those cars.

Noting that any doubt as to registrability must be resolved in favor of Applicant, the panel majority reversed the refusal.

Judge Bergsman, in dissent, pointed out that none of the definitions of "blue" submitted by Bellore include any reference to "environmentally friendly policies, practices, and products." Nor was he persuaded by the website evidence that "blue" is synonymous with environmentally friendly products and services. [In other words, "blue" does not have the same meaning as "green" to the consuming public.]

Moreover, purchasers of Applicant's cars presumably would include unsophisticated consumers "who merely want a blue car or for whom the color is the dominant feature."

He concluded that BLUECAR does not create a double entendre but merely means that Applicant's products include blue cars, and he would affirm the refusal to register.

TTABlog comment: If BLUECAR has two meanings: color and "environmentally friendly," aren't both meanings merely descriptive? Should the refusal be alternatively affirmed on that basis?

Note, however, that the majority does not say that the mark creates a double entendre. It says that consumers will perceive BLUECAR as "an arbitrary mark, or perhaps as a mark suggesting a clean, blue sky, that is, that the electric-powered vehicles are environmentally friendly."

So how do you come out on this one?

Text Copyright John L. Welch 2010.

Fame of Coach's "Signature C" Design Mark Leads TTAB to Sustain 2(d) Opposition

Applicant Master Leather Corp. failed to pull a rabbit out of its hat while attempting to register the logo mark shown on the right, for "evening handbags, handbags, leather handbags" [Why not just "handbags"? - ed.]. Opposer Coach proved the fame of its "C Signature" mark, shown below, for handbags, and from there it was all downhill, since fame plays a "dominant role" in the Section 2(d) likelihood of confusion analysis. Coach Services, Inc. v. Master Leather Corp., Opposition No. 91185554 (May 21, 2010) [not precedential].

Coach first used its "Signature C" mark in 2001, and has generated more than $1 billion in sales over the last five years. It extensively advertises its goods under the mark in various well-known periodicals, and the goods have received "widespread" unsolicited media coverage.

The Board therefore found the mark to be famous for purposes of the fifth du Pont factor.

The goods of the parties are in part identical, and therefore the Board must presume that they travel in the same trade channels to the same classes of purchasers.

Turning to the marks, the Board found them to be "highly similar:"

both utilize interlocking pairs of stylized letters arranged in novel directions. Applicant’s mark includes two pairs of the letter “G” with one pair facing one another and the other rotated ninety degrees to the right. These letters are arranged in exactly the same manner as two of the four pairs of the letter “C” that comprise opposer’s famous mark. We note in addition that the stylization of the two pairs of the letter “G” in applicant’s mark is strikingly similar to the stylization of the four pairs of the letter “C” comprising opposer’s famous mark. In fact, the stylization in the letters is so highly similar that it is difficult to distinguish between them, notwithstanding that they contain the letter “G” on the one hand and “C” on the other.

The inclusion of the phrase "G Rabbit" in small, lettering in Applicant's mark is "not sufficient to create a commercial impression that is separate from opposer's famous mark." In short, the similarities "overcome" the dissimilarities between the marks.

And so the Board sustained the opposition.

TTABlog comment: Applicant didn't put up much of a fight. It did not file a brief, take testimony, or submit any evidence. Its officer failed to appear for a testimony deposition noticed by Opposer. Apparently Applicant saw the handwriting on the wall.

Should Opposer have filed for summary judgment? What do you think?

Test Your TTAB Judgeability: Do You Know Trademark Mutilation When You See It?

Cutting Edge Beverages, LLC sought to register the mark shown to the right (the universal prohibition symbol) for "soft drinks, namely, carbonated and non-carbonated soft drinks," and it submitted the specimen of use shown below. The Examining Attorney refused registration on the ground that the mark of the drawing is not a "susbstantially exact representation" of the mark as used on the specimen. In other words, the applied-for mark did not create a separate and distinct commercial impression, and therefore was a mutilation of the mark as actually used. How would you rule? In re Cutting Edge Beverages, LLC, Serial No. 77420157 (May 18, 2010) [not precedential].

Examining Attorney Andrew Rhim maintained that the wording is "an integral element of the mark as shown on the specimen," and further that consumers frequently encounter the universal prohibition sign together with words and so would likely view the design and words as integral parts of a unitary mark.

[T]he display of the word CRASH over the diagonal slash of the universal prohibition symbol on the specimen conveys the commercial impression of goods where the consumer does not “crash” or does not get tired or fatigued. This commercial impression is reinforced by use of the word ENERGY on the specimen and the appearance of the additional wording “LONG LASTING” and “EXTENDS ENDURANCE” shown beneath the mark on the specimen. Without this wording, the mark shown on the applicant’s drawing certainly conveys a different commercial impression.

Applicant feebly argued that "energy crash science" is merely the variety designation for the drink and that the universal symbol creates a separate commercial impression. [That argued indeed did crash for lack of energy. ed.

The Board sided with the Examining Attorney: "consumers would perceive the display on the specimen as a unitary message NO CRASH or NO ENERGY CRASH SCIENCE and not merely the design without meaning or meaning only 'NO.'"

The design element here is not simply a background or carrier, but is also an integral part of the message conveyed by the combination of the design and wording. Thus, it is “not a background design in the usual sense.” *** Here, the words are “essential to the commercial impression” of the universal prohibition symbol.

And so the Board found that the mark shown on the drawing is not a substantially exact representation of the mark shown on the specimen, and it affirmed the refusal to register. [In other words, the Board gave Applicant the universal thumbs-down signal.]

TTABlog comment: What do you think the odds were of overturning this refusal on appeal?

Text Copyright John L. Welch 2010.

The TTABlog®

Wednesday, June 30, 2010

TTABlog Quarterly Index: April - June 2010

Daniel Kegan: "The grammar of intellectual property: Copyright is a noun, trademark is an adjective"

Tuesday, June 29, 2010

TTAB Affirms Rejection of Catalogue Specimen for "CELLAR 360" for Wine

Monday, June 28, 2010

Recommended Reading: "A Comparative Empirical Analysis of Online Versus Mall and Phone Methodologies for Trademark Surveys"

Friday, June 25, 2010

Precedential No. 24: TTAB Says Reference to Documents (in Russian) Does Not Satisfy FRCP 33(d)

Thursday, June 24, 2010

Precedential No. 23: Finding Third-Party Registrations Not Probative, TTAB Reverses 2(d) Refusal

Wednesday, June 23, 2010

TTAB Reverses 2(d) Refusal As Waste of Everyone's Time

Tuesday, June 22, 2010

Test Your TTAB Judge-Ability: Is "LEMONADE" Merely Descriptive of Restaurant Services?

Monday, June 21, 2010

Recommended Reading: "Bona Fide Intent to Use in the United States and Canada"

Friday, June 18, 2010

Test Your TTAB Judge-Ability: Are These Two Marks Confusingly Similar?

Thursday, June 17, 2010

Precedential No. 22: Reversing 2(e)(4) Refusal, TTAB Finds "P.J. FITZPATRICK, INC." Not Primarily Merely a Surname

Wednesday, June 16, 2010

TTABlog Recommended Reading: Ted Davis on Recent Developments in Trademark and Unfair Competition Law

Tuesday, June 15, 2010

Precedential No. 21: TTAB Sustains Dilution Claim For the First Time in Seven Years

Monday, June 14, 2010

TTAB Affirms Disclaimer Requirement of "VILLAGE" in "HEALTH VILLAGE" Mark for Real Estate Services

Friday, June 11, 2010

Fraud and Lack of Bona Fide Intent: Some Thoughts on Remedies

Thursday, June 10, 2010

TTAB Finds "THREE-STRAND FLOSS" Generic for ... Guess What?

Wednesday, June 09, 2010

Finding Lack of Bona Fide Intent, TTAB Sustains "MIDDLE EARTH JEWELRY" Oppositions

Tuesday, June 08, 2010

Precedential No. 20: Per Rule 2.107(b), TTAB Denies Motion to Amend Madrid Opposition

Monday, June 07, 2010

TTABlog Wants Your Comments

Finding "ORGANIC ASPIRIN" Deceptively Misdescriptive of and Deceptive for Dietary Supplements, TTAB Sustains Bayer Opposition

Friday, June 04, 2010

Test Your TTAB Judgeability: Is "BLUECAR" Merely Descriptive of Electric Vehicles?

Thursday, June 03, 2010

Fame of Coach's "Signature C" Design Mark Leads TTAB to Sustain 2(d) Opposition

Wednesday, June 02, 2010

Test Your TTAB Judgeability: Do You Know Trademark Mutilation When You See It?

TTABlog Search

E-mail Subscription

Hit Counter:

Last Ten Posts

Precedential Decisions

TTABlog Quarterly Indices

Recommended IP Blogs

TTAB and TM Links

JLW Articles

TTABlog Archives

The TTABlog^®