Tuesday, January 17, 2012

The Top Ten TTAB Decisions of 2011 [Part I]

Once again, yours truly has fearlessly chosen the ten TTAB decisions that he considers to be the most important and/or interesting from the previous calendar year. [This is the first of two posts, the first five entries being set out below. Additional commentary on each case may be found at the corresponding TTABlog posting].

Dilution by blurring made a particularly big splash in the TTAB pool during that last few months of the year. The Board relaxed its requirement that a plaintiff show that the marks at issue are identical or substantially similar in order to win a dilution claim, but it increased its focus on proof that any association between the marks will cause a diminution of the distinctiveness of the famous mark.

In a significant procedural ruling, the Board thankfully sank a defendant’s attempt to obtain sweeping e-discovery. And an application to register a top level domain name (TLD) as a service mark was torpedoed by a mere descriptiveness refusal.

Meanwhile, the issue of fraud treaded water; in fact, not a single fraud claim has been upheld by the Board since the CAFC’s Bose decision in 2009. A nonprecedential fraud ruling was noteworthy because the Board excused an applicant’s filing of a fabricated specimen of use – an act that most would consider a prime example of fraud – because the applicant’s president, as a layperson, had an “honest misunderstanding” of what was proper.

Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 100 USPQ2d 1904 (TTAB 2011) [precedential]. [TTABlogged here]. The Board denied Defendant Princeton’s motion to compel sweeping e-discovery, observing that in TTAB proceedings “the burden and expense of e-discovery will weigh heavily against requiring production in most cases.” The Board discussed at length the role of e-discovery in civil actions and in Board proceedings, noting that in the courts “there is an increasing focus on the question of proportionality, and on whether the type of extensive ESI discovery applicant advocates here is always justified.” In TTAB proceedings, the Board observed, “discovery is expected to be less extensive than in court, and demands for e-discovery should be carefully scrutinized.” Given that the Board has limited jurisdiction, and noting the concerns expressed by the Federal Circuit regarding e-discovery, “the burden and expense of e-discovery will weigh heavily against requiring production in most cases.” Here, Defendant “simply failed to establish that opposer’s method of searching and producing documents was insufficient as a general matter, given the parties’ failure to agree on an ESI discovery protocol in advance, the nature of applicant’s discovery requests and the issues in this proceeding.”

Nike, Inc. v. Peter Maher and Patricia Hoyt Maher, 100 USPQ2d 1018 (TTAB 2011) [precedential]. [TTABlogged here]. The TTAB sustained Nike’s opposition to registration of the mark JUST JESU IT for various items of athletic apparel, finding the mark likely to cause confusion with and likely to dilute (by blurring) the famous and registered mark JUST DO IT for overlapping clothing items. As to dilution, the Board jettisoned its former “substantial similarity” or “near identity” test, instead holding that the marks need only be “sufficiently similar in their overall commercial impressions” that the requisite association exists for a finding of blurring. Applying the six non-exhaustive dilution factors of Section 43(c)(2)(B), the Board concluded that “an association exists between the parties’ marks that would impair the distinctiveness of opposer’s famous mark.” See also UMG Recordings, Inc. v. Mattel, Inc., 100 USPQ2d 1868 (TTAB 2011) [precedential].[TTABlogged here], wherein the Board sustained a dilution claim, finding the mark MOTOWN METAL for toy vehicles likely to cause dilution of UMG's famous mark MOTOWN for musical entertainment and musical recordings.

Rolex Watch U.S.A., Inc. v. AFP Imaging Corporation, 101 USPQ2d 1188 (TTAB 2011) [precedential]. [TTABlogged here]. The Board dismissed Opposer Rolex's dilution-by-blurring claim, ruling that Rolex had failed to prove that the applied-for mark ROLL-X for "x-ray tables for medical and dental use" would impair the distinctiveness of Opposer's famous ROLEX mark. The Board concluded that the dissimilarity between the marks, the conflicting results of the survey, and the lack of evidence of Applicant's intent to create an association, outweigh the recognition, distinctiveness, and substantially exclusive use of the ROLEX mark. Moreover, despite establishing an "actual association" between the marks, Rolex did not provide any evidence of the degree to which its marketing power would potentially be diminished by Applicant's intended use of its mark. And in a further ruling, the Board dismissed Rolex's lack-of-bona-fide-intent claim when Applicant AFP overcame the prima facie case established by its lack of documentation by proving that it was capable of manufacturing the identified tables as an extension of its product line.

In re theDot Communications Network LLC, 101 USPQ2d 1062 (TTAB 2011) [precedential]. [TTABlogged here]. Brushing aside several third-party registrations for TLD marks, the Board affirmed a refusal to register the mark .MUSIC in each of five applications, for domain registration and hosting services, various computer-related services, and music-related goods, on the ground that the mark is merely descriptive under Section 2(e)(1). The Board’s ruling was based “on the current marketing environment which is different than the marketing environment when many of the third-party registrations relied upon by applicant were issued.” The PTO maintained that “music is a feature of applicant’s goods and services” and that the period at the beginning of the mark is “mere punctuation that does not alter the commercial impression ….” Applicant asserted that a TLD does have a source-identifying function, but the Board concluded that the public will perceive .MUSIC “as a top-level domain associated with the field of music because there has been a concerted public effort to build support for its use as a top-level domain in this field.”

Information Builders, Inc. v. Bristol Technologies, Inc., Opposition No. 91179897 (January 10, 2011) [not precedential]. [TTABlogged here]. In this, the only non-precedential decision in this year's Top Ten, Applicant Bristol Technologies sought to register the mark BRISTOL FOCUS for computer operating system programs, but Opposer raised two grounds in opposition: fraud and likelihood of confusion. The Board sustained the Section 2(d) claim but dismissed the fraud claim, even though Applicant concocted a specimen and falsely stated that its mark was in use as of the application filing date. The Board ruled that Opposer failed to meet its “heavy burden of proof” to show fraud. Opposer argued that “Applicant’s fabrication of a new specimen … constitutes clear and convincing evidence that Defendant sought to mislead the Patent and Trademark Office ....” The Board agreed that Applicant’s statement of use was false and material, but it ruled that the record did not establish that Applicant’s president “knowingly made a false representation with respect to use of the mark as shown on these specimens with a willful intent to deceive the U.S. Patent and Trademark Office.” “Mr. Bristol believed that the statement was true at the time he signed the statement of use.” As a layperson, he had “an honest misunderstanding” which the Board "would not characterize … as trying to fabricate a fraudulent specimen."

Copyright John L. Welch 2011-2012.


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