Friday, January 28, 2011

The Top Ten TTAB Decisions of 2010 (Part II)

In Part II of this compilation [Part I was TTABlogged here yesterday], the second quintet of TTAB cases includes two interesting genericness rulings: the THUMBDRIVE decision in particular catching many by surprise. In a procedural tussle, the Board found that an Opposer's attempt to amend its pleading ran afoul of the prohibition on adding new grounds in a "Madrid opposition." The Board rejected a supposed "noncommercial use" defense to a claim of dilution. And in a long and instructive decision it dismissed likelihood of dilution and confusion claims based on the famous CITIBANK mark. [Additional commentary may be found at the corresponding TTABlog posting]. American Express Marketing & Development Corp. v. Gilad Development Corporation, 94 USPQ2d 1294 (TTAB 2010) [precedential]. [TTABlogged here]. Applicant Gilad sought to register GRAND AMERICAN EXPRESS for “transportation services, namely, transporting passengers by means of a 19th century replica train.” American Express claimed likely dilution of its family of AMERICAN EXPRESS marks. Gilad moved to add the affirmative defense of “noncommercial use,” asserting that it chose its marks as an allusion to a Currier and Ives lithograph titled American “Express” Train and the nineteenth century history and era it evokes. Therefore, Applicant argued, its marks, “in addition to their intended service mark usage, serve as a form of artistic expression.” The Board, however, ruled that Applicant’s proposed amendment would be futile because the “noncommercial use” defense to a dilution claim is not available in an opposition proceeding. First, in order to obtain registrations, Applicant is required to demonstrate use of its marks in commerce, and thus cannot claim that the use is noncommercial. Second, for dilution purposes, the mere use of another’s famous mark as a mark for its own goods or services, whether commercial or not, disqualifies Applicant from invoking this exception. In any case, Applicant’s use does not fall into any of the recognized categories for noncommercial use: parody, satire, editorial, and other forms of expression that are not part of a commercial transaction. O.C. Seacrets, Inc. v. Hotelplan Italia S.p.A., 95 USPQ2d 1327 (TTAB 2010) [precedential]. [TTABlogged here]. Opposer Seacrets sought to amend its Notice of Opposition to add a new ground (lack of bona fide intent), but it ran into a major problem: the opposed application was a Section 66(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. Opposer alleged that “Applicant lacks a bona fide intent to use SECRETS LINE ... and therefore, has committed fraud on the U.S. Patent and Trademark Office.” The 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).” Seacrets 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: “[A]pplicant was apprised of only one ground by Paragraph 13 of the original notice of opposition, that of fraud. *** 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.” In re Wm. B. Coleman Co., Inc., 93 USPQ2d 2019 (TTAB 2010) [precedential]. [TTABlogged here]. Taking a tough line on the issue of genericness, the Board ruled that “the designation ‘company’ cannot transform the name of the goods for which registration is sought into a trademark,” finding the term ELECTRIC CANDLE COMPANY to be generic for “light bulbs; lighting accessories, namely, candle sleeves; lighting fixtures.” Alternatively, the Board found the phrase to be “incapable of identifying source for electric candles” under Section 23 of the Trademark Act. Coleman argued that ELECTRIC CANDLE COMPANY is not a compound term, that there are no examples of third-party use of the entire phrase, and therefore that Gould is inapplicable and American Fertility requires reversal. The Board, however, found the term to be generic under both approaches. “The record shows that ‘electric candle’ is a unitary generic term. *** The space between the generic terms ‘electric candle’ and ‘company’ does not disqualify this type of proposed mark from the Gould [compound word] analysis. If anything, the terms appearing as they should in normal usage make it even more common.” Moreover, the Board refused to read American Fertility, which governs genericness of phrases, to allow an applicant to take a clearly generic term and add a non-source identifying word and thereby create a trademark. And even if not generic, ELECTRIC CANDLE COMPANY is incapable of attaining source significance and thus unregistrable. In re Trek 2000 International Ltd., 97 USPQ2d 1106 (TTAB 2010) [precedential]. [TTABlogged here]. Many were surprised to hear the outcome of this case, in which the TTAB ruled that the USPTO failed to meet its burden to provide clear evidence that THUMBDRIVE is generic. The Board therefore reversed a refusal to register the mark for portable digital electronic storage devices. The record included “both trademark and generic uses [and] evidence of lack of competitor use,” which at a minimum created “doubt sufficient to tip the balance in favor of registration.” The Examining Attorney relied on Internet excerpts showing use of “thumb drive” generically for portable data storage devices. But Trek’s evidence showed that it coined the term in 2000, that its sales exceeded $4 million from 2002-2007, that it advertises and promotes the mark and authorizes others to co-brand and sell USB storage devices bearing the mark, and that it polices its mark. Noting that a genericness determination is an “all or nothing” decision and that the evidentiary burden is “heavy indeed,” the Board refused to take the “fatal step” of full “eradication” of Trek’s rights Citigroup Inc. v. Capital City Bank Group, Inc., 94 USPQ2d 1645 (TTAB 2010) [precedential]. [TTABlogged here]. Banking on the fame of the CITIBANK mark, Citigroup opposed registration of the marks CAPITAL CITY BANK, CAPITAL CITY BANC INVESTMENTS, CAPITAL CITY BANK GROWING BUSINESS, and CAPITAL CITY BANK INVESTMENTS for banking and financial services. In a 68-page decision, the Board dismissed the opposition, finding no likelihood of confusion or dilution primarily in view of the differences in commercial impression engendered by the parties’ marks. “Since the commercial impression of applicant’s marks is the geographic designation CAPITAL CITY and the generic term ‘Bank,’ applicant’s marks are not similar in appearance, sound or meaning with opposer’s CITIBANK marks.” Furthermore, the Board found the absence of any reported instances of actual confusion to be significant, in light of the widespread advertising of the CITIBANK mark. As to dilution, the Board found that the CITIBANK marks became famous in 1983, after Applicant’s first use of the CAPITAL CITY BANK mark. Therefore Citigroup’s dilution claim failed for that reason alone. Moreover, since the marks were found to be too dissimilar for likelihood of confusion purposes, they perforce did not meet the "substantially similar" requirement for dilution. [Note: this decision is now on appeal: TTABlogged here]. Text Copyright John L. Welch 2010-11.


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