Wednesday, January 18, 2012

The Top Ten TTAB Decisions of 2011 [Part II]

The issue of bona fide intent, or lack thereof, bobbed to the surface with increasing frequency, but a recent decision muddied the waters regarding the remedy available when a lack of bona fide intent is proven. On the Madrid front, the Board emphasized, in two decisions, the need for proper and complete electronic filing of oppositions to Section 66(a) applications. And it clarified the nature of the proof necessary to establish that a mark is primarily geographically deceptively misdescriptive under Section 2(e)(3).

One well-known applicant overcame a genericness refusal and established acquired distinctiveness through impressive survey evidence. And the Board rejected an application to register a mark for medical reports on the ground that the reports were merely part of applicant’s services and not separate goods in trade. [This post is the second of two parts; the first five cases on the Top Ten list may be found here. Additional commentary on each case may be found at the corresponding TTABlog posting].

Spirits International, B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d 1545 (TTAB 2011) [precedential]. [TTABlogged here]. The Board sustained this opposition to registration of the mark MOSKONISI (Stylized) for various alcoholic and nonalcoholic beverages in classes 32 and 33, on the ground of lack of bona fide intent. Opposer Spirits established, through Applicant’s discovery responses, a prima facie case of lack of bona fide intent regarding the alcoholic beverages. Applicant Taris failed to submit any evidence, and so the Board sustained the opposition on that ground, entering judgment immediately on the claim and declining to consider Opposer’s alternative Section 2(d), which was contingent upon registration of its pleaded mark. Although the Board found that Applicant lacked a bona fide intent to use its mark only as to alcoholic beverages, it sustained the opposition as to all the goods in both classes, including the non-alcoholic beverages, in a ruling that appears in conflict with its prior decision in Wet Seal, Inc. v. FD Management, Inc., 82 USPQ2d 1629 (TTAB 2007) (stating in dictum that only the particular goods for which a lack of bona fide intent is shown will be deleted from an application). [See TTABlog comment here].

Hunt Control Systems, Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558 (TTAB 2011) [precedential]. [TTABlogged here]. An opposition to a Section 66(a) “Madrid application” must be filed electronically via ESTTA and the notice of opposition may not be amended to add new grounds. See Trademark Rules 2.101(b)(2) and 2.107(b). These rules facilitate the prompt notification to WIPO that an opposition has been filed: ESTTA generates an opposition form that is automatically forwarded to WIPO. This notification must be sent within strict time limits, and failure to timely notify WIPO may result in the opposition being limited by the information sent or dismissed entirely. Here, on the ESTTA form Opposer Hunt identified six items of the items in Applicant’s class 9 list of goods, but argued that the scope of the opposition was broader because “in the supplementary explanation of the basis for the opposition that was attached to the ESTTA opposition form, opposer specifically recites the same six goods and adds to such recitation ‘and related products in International Class 9’ as constituting the objectionable goods.” The Board ruled that, for Madrid oppositions, the opposed goods must be limited to those identified on the ESTTA form because that is the information transmitted to WIPO. CSC Holdings, LLC v. SAS Optimhome, 99 USPQ2d 1959 (TTAB 2011) [precedential]. [TTABlogged here]. The Board applied the reasoning of Hunt Control in limiting the grounds for opposition to the single ground designated on the ESTTA form (likelihood of confusion), despite the inclusion of additional grounds (fraud and lack of bona fide intent) in the attached pleading.

In re Jonathan Drew, Inc. d/b/a Drew Estate 97 USPQ2d 1640 (TTAB 2011) [precedential]. [TTABlogged here]. In affirming a Section 2(e)(3) refusal of KUBA KUBA for cigars, tobacco, and related products on the ground that the mark is primarily geographically deceptively misdescriptive of the goods, the Board attempted to clarify the law of Section 2(e)(3) in view of recent court decisions. Applicant Drew did not dispute that the primary meaning of “Cuba” is geographic, or that Cuba is famous for its tobacco products and cigars. Moreover, it conceded that its products will not originate in Cuba, nor will its products be made from Cuban seed tobacco. Drew principally argued that the PTO did not meet the high burden to prove that a substantial portion of relevant consumers would be materially influenced by the mark to purchase the products; Drew contended that direct evidence of public deception is required. The Board, however, opined that a “strong or heightened goods/place association, which we have here, is sufficient to support a finding of materiality.” Direct evidence of public deception is not required: “[W]e may infer from the evidence showing that Cuba is famous for cigars, that a substantial portion of relevant consumers would be deceived."

In re Country Music Association, Inc., 100 USPQ2d 1824 (TTAB 2011) [precedential]. [TTABlogged here]. CMA sought to register COUNTRY MUSIC ASSOCIATION in standard character and design form for “association services, namely, promoting country music, and promoting the interests of country music entertainers and the country music recording industry,” asserting acquired distinctiveness under Section 2(f). The PTO refused registration on the alternative grounds of genericness, or mere descriptiveness and lack of secondary meaning. The Board reversed the refusals (but required a disclaimer of ASSOCIATION). As to genericness, the PTO provided website evidence that 28 other associations use the phrase COUNTRY MUSIC ASSOCIATION preceded by a descriptive, geographical, or other term. CMA successfully countered with two expert reports and a Teflon survey, in which “[a] significant number of surveyed respondents, 85%, answered that COUNTRY MUSIC ASSOCIATION is a brand name.” As to acquired distinctiveness, CMA proved that the mark has been in use since 1958 and 30 million viewers watch its annual awards show. In addition, advertising expenditures, website traffic, and the survey results led the Board to find that CMA had satisfied Section 2(f).

In re Ameritox Ltd., 101 USPQ2d 1081 (TTAB 2011) [precedential]. [TTABlogged here] Ameritox sought to register the mark RX GUARDIAN for "printed reports featuring medical laboratory results provided to medical practitioners for record keeping purposes." [see the specimen of use shown below.] The Board, however, agreed with the PTO and it affirmed the refusal to register under Section 1, 2, and 45. On its website, Ameritox refers to its "Rx Guardian (SM) process." Based on the website and the specimen of use, the Examining Attorney maintained that the subject reports were nothing more than a vehicle by which the results of Applicant's services are reported. They are not available as separate "goods in trade." The Board noted that ancillary items, like invoices, forms, and reports, used to conduct business do not constitute goods in trade. It found that Applicant's website demonstrated that RX GUARDIAN is a drug testing and reporting service. Ameritox does not advertise the reports separately from its services. The reports merely provide information based on the particular test results. In short, "[t]he fundamental question in this case is what is being offered for sale under the RX GUARDIAN mark?" There was no evidence that Ameritox sells reports apart from its services; instead, the reports are "part and parcel" of its services, and thus are not "goods in trade."

(click on photo for larger picture)

Text Copyright John L. Welch 2011-12.


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