Friday, March 30, 2012

TTABlog Quarterly Index: January - March 2012

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Section 2(a) - Disparagement:

Section 2(b) - Official Insignia:

Section 2(d) - Likelihood of Confusion:

Section 2(e)(1) - Mere Descriptiveness:

Section 2(e)(2) - Primarily Geographically Descriptive:


Section 2(e)(3) - Primarily Geographically Deceptively Misdescriptive:

Abandonment:

Certification Mark:


Dilution:

Fraud:

Genericness:

Lack of Bona Fide Intent;

Nonuse:

Section 44(e) Basis:

Single Creative Work:

Use in Commerce/Specimen of Use:


Discovery/Evidence/Procedure:

CAFC Decisions:

Recommended Reading:

Other:

Text Copyright John L. Welch 2012.

posted by John L. Welch @ 3/30/2012   0 comments

Thursday, March 29, 2012

TTAB Reverses 2(a) Disparagement Refusal of CHINA FREE & Design for Vitamins

In this "difficult case," the Board reversed a Section 2(a) disparagement refusal of the mark CHINA FREE & Design for vitamins and mineral supplements [the words CHINA FREE disclaimed]. There was "little or nothing" in the record to show that the People's Republic of China would find the mark disparaging. In re Prosynthesis Laboratories, Inc., Serial No. 77902555 (March 23, 2012) [not precedential].


During examination and appeal, the PTO argued that the "person" or "institution" referred to in the mark is the nation of China. Although at oral argument the PTO contended that the mark would also disparage the Chinese people, that issue was not raised previously and so it was not considered by the Board.

Applicant argued that Section 2(a) does not apply because China is not a "person" or "institution" within the meaning of the statute. The Board was "skeptical" of this position in light of the Lanham Act's definition of "person" and in light of the CAFC's Shinnecock Smoke Shop decision finding that the Shinnecock Indian Nation was an institution for purposes of Section 2(a). The Board chose to assume that China is a person or institution falling with the Section, because it did not matter to the result here.

Applicant also argued that Section 2(a) is an unconstitutional abridgement of free speech. The cases that Applicant cited for this proposition were inapposite. Moreover, the Board is not an Article III court and has no authority to declare provisions of the Lanham Act unconstitutional.

The Board noted that the disclaimer of the words CHINA FREE does not avoid the Section 2(a) prohibition, nor does the inclusion of the design element in the mark. There was no dispute that as to the immediate meaning of the mark: it informs the consumer that Applicant's goods do not contain ingredients from China.

The question, then, was whether the mark is disparaging. That determination requires a two-part inquiry: first, what is the likely meaning of the mark, and second, is that meaning disparaging to a substantial composite of the group referenced by the mark?

Unlike other terms found to be disparaging (e.g., SQUAW, HEEB, SEX ROD), CHINA FREE is not disparaging or derogatory in itself. It is the implication of the mark that causes the concern. The PTO contended that the mark suggests that there is something wrong with ingredients from China, and by extension that "China is therefore to be held in a dim view." According to the PTO, Applicant's products are "directed to a market segment that is full of paranoia about the nation of China and products made in China."

Applicant, however, contended that consumers have legitimate concerns about the wholesomeness of some products from China. The Board found evidence of a substantial public concern regarding the safety of food and pharmaceuticals imported from China.

Applicant's website may be "rather strident, one-sided, and somewhat alarmist," but the Board did not see it as "promoting a stereotype that ALL Chinese manufacturers make poor quality products." In sum, the Board found no clear evidence that Applicant's motivation is to disparage China." [Why is motivation relevant, you may ask? Because it sheds some light on what meaning is to be given to the term(s) at issue. - ed.].

Most importantly, the Board found little or no evidence as to whether the People's Republic of China would find CHINA FREE disparaging when used on nutritional supplements. In the SQUAW case, the Board relied on dictionary definitions noting the word as offensive and disparaging, on statements from Native American activists and from legislators, and on a number of articles indicating that many Native Americans find "squaw" to be disparaging. Here, the best evidence was a definition of "free" [as lacking something unpleasant], but there was no indication that this word, by itself, is derogatory.

While we do not rule out the possibility that the term might be used here with the intent to slight China or that it might be perceived by China in such a way, it is also possible that it is not. As the Federal Circuit has emphasized, the touchstone of disparagement is the meaning of the mark to the referenced group. *** And whatever we may think of applicant’s mark, the opinion of the Office or of this Board is no substitute for evidence (direct or indirect) of the opinion of the relevant individual or group.

The Board was not free from doubt, but it must resolve its doubts in favor of the Applicant. It noted that a different result might result from a more fully developed record, such as might be made in an inter partes proceeding.

TTABlog comment: An interesting, thoughtful, and readable opinion that provides an informative survey of Section 2(a) disparagement law.

Note that Applicant disclaimed CHINA TRADE, but the mark was still eligible for the Principal Register. In other words, the minimal design was sufficiently distinctive to merit a Principal Registration. Really? I beg to disagree.

Text Copyright John L. Welch 2012.

posted by John L. Welch @ 3/29/2012   5 comments

Wednesday, March 28, 2012

TTAB Discards Lame Fraud Claim but Grants 2(d) Petition to Cancel "BIO1ONE" Registration

The Board sustained this petition for cancellation of a registration for the mark BIO1ONE for "fertilizers and soil amendments for agricultural use," finding it likely to cause confusion with the earlier-used mark BIO-ONE for the identical goods. However, Petitioner's fraud claim withered and died, for the reason discussed below. Bio-One, Inc. v. A.L.E.G., Inc., Cancellation No. 92052195 (March 1, 2012).


Petitioner based its fraud claim on Respondent's assertion of a first use date that was false. While the application was still pending, Respondent amended the first use date from 1988 to 2004. Petitioner asserted that this "deliberate submission of a false and misleading declaration" under the penalty of perjury constituted fraud.

However, one critical element of fraud was missing:

[A] false claim in a date of use is not material so long as the mark was in use in commerce at the time the application was filed, if the application was based on use in commerce (Section 1(a) of the Trademark Act), or at the time the Statement of Use was filed, if the application was based on intent-to-use (Section 1(b) of the Act.)

Here, Petitioner neither alleged nor proved that Respondent had not made use of its mark as of the filing date of its Section 1(a) application. Even if Petitioner's allegations were taken as true, they do not state a ground of fraud. In other words, the date stated as the first use date has no bearing on the registrability of the mark. It is not material for purposes of a claim of fraud on the USPTO.

So the Board weeded out the fraud claim, but Petitioner's well-fertilized Section 2(d) claimed blossomed.

Text Copyright John L. Welch 2012.

posted by John L. Welch @ 3/28/2012   0 comments

Tuesday, March 27, 2012

Precedential No. 17: TTAB Reverses Genericness Refusal of TENNIS INDUSTRY ASSOCIATION

The PTO failed to provide the clear evidence necessary to support its genericness refusal of TENNIS INDUSTRY ASSOCIATION for association services related to tennis. Therefore the Board reversed, having "substantial doubt" as to whether the phrase is "perceived by the relevant public as a generic name for the recited services." Applicant also claimed that the phrase had acquired distinctiveness, but its evidence failed to clear the net. In re Tennis Industry Assn., 102 USPQ2d 1671 (TTAB 2012) [precedential].


Genericness: A term is generic if it refers to the class or category of goods or services. The Board first found that the genus of services is adequately defined by Applicant's recitation of services: "association services, namely, promoting the interests of tennis facilities, tennis manufacturers, tennis retailers and tennis court contractors; providing market research services to track the economic vitality of the tennis industry." The relevant purchasing public consists of those whose interests are promoted by the identified services.

The Board deemed TENNIS INDUSTRY ASSOCIATION to be a phrase that should be analyzed under the American Fertility approach: dictionary definitions of the constituent words are not enough to prove genericness; it must be shown that the phrase "as a whole" is used to refer to the genus of services.

The Examining Attorney submitted five examples from the Lexis/Nexis database and Internet websites, using the term "tennis industry association" in lower case letters in a manner that did not appear to indicate source in any particular entity. Applicant submitted a "voluminous" number of articles from the Westlaw database discussing Applicant and displaying the subject phrase in initial caps, thusly: Tennis Industry Association.

The Board found that, on balance, the PTO had failed to meet its "difficult burden of establishing by clear evidence" that TENNIS INDUSTRY ASSOCIATION, as a whole, is generic. Of the five examples submitted by the Examining Attorney, it was unclear in two that the phrase was being used generically. "A mere three unambiguous examples of generic usage ... simply is insufficient to support the genericness refusal."

The examining attorney’s remaining Lexis/Nexis and Internet evidence suggests that TENNIS INDUSTRY has a recognized meaning and that TENNIS INDUSTRY ASSOCIATION is an apt name for an association of tennis industry members, but not that the mark is generic for the recited association services.

The Board had substantial doubt whether TENNIS INDUSTRY ASSOCIATION is generic for the recited services, and it resolved that doubt, as it must, in Applicant's favor.

Acquired Distinctiveness: Because Applicant sought registration under Section 2(f), it conceded that the subject phrase is merely descriptive. The Board observed that highly descriptive marks are less likely to be perceived as trademarks, and therefore will require "more substantial evidence" to establish their distinctiveness.

Applicant relied on use of TENNIS INDUSTRY ASSOCIATION since 1974, a 2009 press release, a 2008 annual report, and 499 Westlaw articles (spanning 20 years) discussing Applicant and its programs. The Board found the Westlaw articles not to be compelling for various reasons, including the relative paucity of articles per year. Raw sales and advertising figures did not provide an explanation as to how they translated into recognition of TENNIS INDUSTRY ASSOCIATION as a mark. Notably, the record contained little direct evidence that relevant consumers view the phrase as a source indicator.

In short, the Board "would need to see a greater quantity of probative evidence than what Applicant has submitted."

And so the Board affirmed the PTO's mere descriptiveness refusal.

TTABlog comment: Tennis and genericness is a soporific combination.

Text Copyright John L. Welch 2012.

posted by John L. Welch @ 3/27/2012   2 comments

Monday, March 26, 2012

Precedential No. 16: "CEI" Identifies a Process, Not a Service, So TTAB Affirms Refusal to Register

The Board affirmed a refusal to register the proposed mark CEI for "technical consultation in the field of hydrocarbon and chemical processing, pipeline, and power industries," on the ground that the specimens failed to show use of the mark for the identified services. The Board agreed with Examining Attorney Jason Paul Blair that CEI (an initialism for "carbon emissions index") is used only to identify a process by which Applicant derives a particular measurement, and not as a source identifier. In re HSB Solomon Associates, LLC, 102 USPQ2d 1269 (TTAB 2012) [precedential].


"A term that identifies only a process, style, method, system or the like is not registrable as a service mark." TMEP Section 1301.02(e). The Examining Attorney maintained that CEI is not used in the context of providing consultation services.

Applicant argued that if it "uses CEI in connection with benchmarking that it provides as part of the consulting services, then the mark is being provided in connection with the services." [Shouldn't that be "used" rather than "provided"? - ed.]. Applicant also asserted that its customers are sophisticated and know that Applicant's only business is to provide technical consultation services.

The Board, however, observed that customer sophistication is "largely inapposite" to the issue at hand. And as to use of the CEI metric by Applicant in providing its services, the Board was similarly unimpressed:

The fact that the CEI process, measurement, metric, benchmark or standard may be used by applicant in the performance of its technical consulting service does not transform that metric into a technical consulting service or associate the term CEI with the technical consulting service such that it serves as a source identifier rather than simply the name of a process.

And so the Board affirmed the refusal to register.

TTABlog note: The decision includes a rather confusing discussion of the Examining Attorney's objection to evidence attached to Applicant's brief, and whether the Examining Attorney had waived that objection. He hadn't, but it didn't matter anyway.

Text Copyright John L. Welch 2012.

posted by John L. Welch @ 3/26/2012   1 comments

Friday, March 23, 2012

TTABlogger Named to "World Trademark Review 1000" List

I kid you not! Yours truly has again been named to the World Trademark Review 1000. (link here).

posted by John L. Welch @ 3/23/2012   3 comments

Precedential No. 15: TTAB Affirms Section 2(e)(3) Refusal of OLD HAVANA as Primarily Geographically Deceptively Misdescriptive of Rum

Providing a detailed discussion of Section 2(e)(3), the Board affirmed a refusal to register OLD HAVANA for rum, finding the mark to be primarily geographically deceptively misdescriptive. The Board also briefly addressed and quickly rejected Applicant's claim of acquired distinctiveness under Section 2(f) for lack of sufficient evidence. In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841 (TTAB 2012) [precedential]


Section 2(e)(3): There are four elements that must be met to invoke the bar of Section 2(e)(3):

1) The primary significance of the mark is a generally known geographic place;

2) The goods or services do not originate in the place identified in the mark;

3) Purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark; and

4) The misrepresentation would be a material factor in a substantial portion of the relevant consumers’ decision to buy the goods or use the services.

The Board concluded as follows:

The primary significance of Havana is the name of the capital of Cuba, a geographic location that is generally known to the American consumer. The presence of “OLD” in the mark OLD HAVANA does not diminish the primary geographic significance of the mark when considered as a whole; “OLD” only serves to reinforce the primary geographic significance which, in point of fact, is a section of Havana. Because of the large and well-known rum industry in Havana, consumers will make a good/place association, that is, consumers will mistakenly believe that the rum originates in Havana, Cuba when in fact it does not. Lastly, because of the renown of rum originating in Havana, Cuba, the geographic origin of the rum would be a material factor for a significant portion of the relevant consumers in their decision to buy the rum.

Applicant contended that "Havana" has two non-geographic meanings, and so the term is not primarily geographic in meaning. First, the term suggests a certain special method for producing rum, and second the term "possesses a certain prestige, evoking a place in time or a historical era, rather than a geographic city."

It was undisputed that Havana is a generally known geographic location, and the Board found that the primary significance of "Havana" to be geographic. Adding the term OLD does not diminish that primary significance. "Old Havana" is more than a historical reference; in fact, there is a section of Havana that is referred to by the name "Old Havana."

The record did not support the assertion that OLD HAVANA primarily evoked a particular lifestyle of a bygone era. Moreover, even if this connection were established, it would not overcome the primary geographic significance because the connection may be made precisely because Havana is a city in Cuba. Nor did the evidence support the assertion that there is a "Havana" style or method of rum production.

There was no dispute that Applicant's rum does not originate in Havana, Cuba.

As to the connection between rum and Cuba, and particularly Havana, the record showed that rum is the most famous alcoholic product of Cuba. In fact, Cuba is called the Island of Rum. Applicant argued that consumers know that they cannot buy "real" Cuban rum due to embargo restrictions, and so they will not believe that Applicant's rum came from Cuba. Instead they will ascribe the other meanings to "Havana." The Board noted that it has rejected this embargo argument in several cases, for lack of evidence, and it did the same here.

Applicant also pointed to its labeling (see above), which includes the word "brand" after OLD HAVANA, indicating that the term is a trademark, not a geographic indicator; the phrase "Cuban style rum;" and the phrase "Product of USA." Here, however, the Board is concerned with the applied-for mark OLD HAVANA by itself, regardless of what may appear on the label. In other words, the mark itself must pass PTO muster.

Applicant further maintained that its rum has a connection with Havana because its president was born in Cuba and has 30 years of experience in making "Cuban-style" rum. The Board was not moved. The evidence was too tenuous to show the required substantial current connection between Applicant's rum and Havana such that consumers would consider the goods to come from Havana.

Finally, the materiality element was satisfied by evidence that Cuba, and particularly Havana, is famous for rum. As the Board stated in In re Jonathan Drew [KUBA KUBA for cigars], direct evidence of materiality is not required. It may be inferred from indirect or circumstantial evidence, such as gazetteer entries and third-party websites.

In short, the Board found that consumers would care about whether Applicant's rum comes from Havana, and the misrepresentation conveyed by OLD HAVANA is likely to materially impact the purchasing decisions.

And so the Board affirmed the Section 2(e)(3) refusal.

Acquired Distinctiveness: Applicant claimed use of the mark beginning in November 1991. Acquired distinctiveness may overcome a Section 2(e)(3) refusal only if the mark became distinctive prior to enactment of the NAFTA Implementation Act on December 8, 1993. Thus Applicant had only two years of qualifying use, but the only evidence of record was its attorney's unsupported statement as to the length of use. The Board agreed with the Examining Attorney that Section 2(f) was not satisfied.

TTABlog comment: If I saw OLD HAVANA on a bottle of rum, I would probably first start chanting "Yo Ho Ho," but I would also think the rum came from Cuba and I might pay more for it than for rum from, say, Chicago.

Text Copyright John L. Welch 2012.

posted by John L. Welch @ 3/23/2012   1 comments

Thursday, March 22, 2012

Precedential No. 14: TTAB Reverses 2(d) Refusal of GRAND HOTEL NYC over GRAND HOTEL for Hotel Services

The Board reversed a Section 2(d) refusal of GRAND HOTELS NYC for hotel services [HOTELS NYC disclaimed], finding the mark not likely to cause confusion with the registered mark GRAND HOTEL for hotel, restaurant, and convention services [HOTEL disclaimed]. Dictionary definitions, third-party registrations, and Internet evidence showed the word GRAND to be a weak formative in the hotel field, leading the Board to conclude that the addition of NYC to GRAND HOTEL was enough to distinguish the marks. In re Hartz Hotel Services, Inc., 102 USPQ2d 1150 (TTAB 2012) [precedential].


Because the cited mark GRAND HOTEL is registered, the mark is entitled to a presumption of validity under Section 7(b). Therefore GRAND HOTEL cannot be treated as merely descriptive; at most it can be considered as a highly suggestive, laudatory term, as evidenced by third-party registrations, third-party use, and dictionary definitions.

Applicant submitted copies of five registrations for marks, owned by different entities, that include the term "Grand Hotel" or "Grande Hotel" for hotel services: THE GRAND HOTEL AT MOUNTAINEER, THE SOUTH'S GRAND HOTEL, ANCHORAGE GRAND HOTEL & Design, LOUISVILLE'S GRAND HOTEL, and FORT LAUDERDALE GRANDE HOTEL & YACHT CLUB. A private investigator confirmed the use of "Grand/Grande Hotel" marks in seven locations (including Geiser Grand Hotel, Wilshire Grand Hotel, and Bellissimo Grande Hotel), and Applicant submitted website pages for 10 "Grand Hotel" locations (including The Grand Hotel Minneapolis, The Grand Hotel Ocean City, North Conway Grand Hotel, Pensacola Grand Hotel, and Jerome Grand Hotel).

The Board relied on Plus Products v. Natural Organics, Inc., 204 USPQ 773 (TTAB 1979), which involved an unsuccessful opposition to the mark NATURE'S PLUS for vitamins in view of PLUS for vitamins. There, the evidence included eight third-party registrations issuing prior to Opposer's registration, and seven issuing after, all for marks including the word PLUS for vitamins or closely related goods. The Board inferred that Opposer was satisfied to register PLUS side-by-side with eight existing PLUS registrations, that the PTO historically registered PLUS marks for vitamins as long as the marks included some difference, and that a number of owners believed that various PLUS marks could co-exist on the register without causing confusion, provided there are differences between the marks. The Board applied the same reasoning here.

The Board found that the strength or weakness of the cited mark is the most important factor. It concluded that the addition of NYC to Applicant's mark is sufficient to distinguish the applied-for mark from that of the cited registration.

Because of the highly suggestive nature of the mark “Grand Hotel,” the proliferation of registered “Grand Hotel” marks and the unregistered uses of “Grand Hotel” marks, the mark “Grand Hotel,” itself, is entitled to only a very narrow scope of protection or exclusivity of use. Further, because of the highly suggestive nature of GRAND HOTEL and the number of third-party GRAND HOTEL marks, we conclude that consumers are able to distinguish between different GRAND HOTEL marks based on small differences in the marks, including the addition of a geographic term.

And so the Board reversed the refusal.

Text Copyright John L. Welch 2012.

posted by John L. Welch @ 3/22/2012   0 comments

Wednesday, March 21, 2012

Precedential No. 13: TTAB Sustains L'Oreal's Opposition to L'OREAL PARIS for Aloe Vera Drinks, Finding Likely Confusion and Lack of Bona Fide Intent

The fame of the marks L'OREAL and L'OREAL PARIS for cosmetics and personal care products was a major factor in the Board's sustaining Opposer's Section 2(d) claim in this opposition to registration of L'OREAL PARIS for "aloe vera drinks." As to L'Oreal's claim that Applicant Robert Victor Marcon lacked a bona fide intent to use the applied-for mark, Applicant's pattern of filing ITU applications for disparate goods under the well-known or famous marks of others was one basis for the Board's sustaining that claim. L’Oreal S.A. and L’Oreal USA, Inc. v. Robert Victor Marcon, 102 USPQ2d 1434 (TTAB 2012) [precedential].


Likelihood of Confusion: The Board began by finding Opposer's marks L'OREAL and L'OREAL PARIS to be famous for cosmetics and personal care products, based on billions of dollars in sales, significant market share, huge advertising expenditures, extensive media exposure, impressive brand awareness, and consistent ranking by Business Week as one of the world's "100 Top Brands."

Applicant Marcon made the "incredible statement" that the fame factor "strongly supports" his case because Opposer's fame is primarily associated with cosmetic products. The Board pointed out that a finding of fame for the senior mark can never support a junior party. Fame expands the scope of protection accorded a mark. And, the Board observed, "[a] strong mark ... casts a long shadow which competitors must avoid."

As to the marks, Opposer's L'OREAL PARIS mark is obviously identical to Applicant's mark. Moreover, the Board not surprisingly found Opposer's marks L'OREAL to be substantially similar to Applicant's mark, since, given the geographically descriptive nature of PARIS, consumers are more likely to remember the L'OREAL portion of Applicant's mark.

Turning to the goods, the Board noted once again that when the marks at issue are identical a lesser degree of relatedness between the goods is necessary to support a finding of likely confusion. At first glance, cosmetics and beverages "might not appear to be inherently related," but Opposer submitted "substantial evidence to show several reasons for finding such goods to be related."

Third-party registrations and Internet search results revealed companies that sell both cosmetics and food/beverage products. [E.g., MOUNTAIN DEW for lip balm and soft drinks]. Opposer also provided an article discussing the trend of "traditional skin care lines improving looks with dietary supplements." [Isn't that hearsay? - ed.]. Opposer's vice president testified that L'Oreal is an "innovator" from whom customers expect new and different products. [A bit self-serving, don't you think? - ed.]. Moreover, aloe vera is an ingredient in cosmetics and personal care products. Opposer's witness self-servingly testified that "consumers are aware that aloe or aloe vera is often prominently listed as a beneficial ingredient in moisturizers and other skin care products."

As shown by the record, companies have marketed cosmetics and beverages under the same mark; further, aloe vera is commonly used as an ingredient in cosmetic and personal care products. The evidence also shows the growing relationship between “inner health” products (e.g., beverages and nutritional supplements) and “outer beauty” products (e.g., cosmetics and personal care products). Accordingly, we find that the parties’ goods are sufficiently related for purposes of our likelihood of confusion analysis, and this factor weighs in favor of opposer.

As to trade channels, cosmetics and beverages move through supermarkets, drug stores, and mass merchandisers. [So do most every other product under the sun. - ed.] The classes of customers are the same: ordinary consumers. The identified goods are not restricted as to price, and presumably include inexpensive items that may be subject to impulse purchases.

Finally, under the 13th du Pont factor, the Board considered Applicant Marcon's bad faith. It agreed with Opposer that "applicant has a history and pattern of filing intent-to-use applications for a disparate range of products for which he has no industry-relevant experience, and where the applied-for marks are identical to some of the best known, previously registered trademarks in the country" Marcon has sought to register HEINEKEN for meat juices, JACK DANIELS for cigars, CHANEL for greeting cards, SOUTHERN COMFORT for beer, BAYER for mouthwash, etc. [How about TTABLOG for cat litter?].

This pattern convinced the Board that Marcon's adoption of L'OREAL PARIS was in bad faith. "Such bad faith is strong evidence that confusion is likely, as such an inference is drawn from the imitator’s expectation of confusion." But the Board hastened to add that even without this bad faith finding, it would still find confusion likely. And it did.

Lack of Bona Fide Intent: Marcon had no documents evidencing a bona fide intent to use the applied-for mark for aloe vera drinks. He admitted having no industry experience, no business plan, no potential partners or investors, no logos or packaging, and no concrete activities toward using the mark. His vague assertions regarding licensing and outsourcing were "woefully deficient" to establish a bona fide intent. The Board therefore concluded that Marcon lacked the requisite bona fide intent when he filed his Section 1(b) application.

Marcon's "demonstrated pattern" of filing applications (sixteen in all) for the famous or well-known marks of others was another basis for finding lack of bona fide intent. The legislative history of the Trademark Law Revision Act of 1988 provides several examples of objective circumstances that "may cast doubt on the bona fide nature of the intent or even disprove it entirely." One of these circumstances is the filing of an excessive number of intent-to-use applications to register marks that were ultimately not used.

Of course, Marcon's self-serving statements that he acted in good faith and did not lack a bona fide intent established nothing. The evidence establishing a bona fide intent, or a lack thereof, must be objective. Here the complete lack of documentation or other objective evidence of Marcon taking active steps toward use "outweighs any subjective (or even sworn) intent to use the mark." And Marcon's "blatant attempt to obtain registrations of third parties' well-known marks, and subsequent abandonment of those applications provides significant, additional support" for the Board's conclusion.

Finally, the Board declined to reach Opposer's dilution claim.

TTABlog comment: I am reminded of the Kaplan v. Brady case (TTABlogged here), wherein the Board denied a motion for summary judgment of lack of bona fide intent, but looked dimly upon that applicant's filing of an excessive number of ITU applications that were later abandoned.

Text Copyright John L. Welch 2012.

posted by John L. Welch @ 3/21/2012   1 comments

Tuesday, March 20, 2012

Precedential No. 12: TTAB Dismisses Cancellation Petition Due to Improper Service

When Petitioner Jacques Moret, Inc. commenced this proceeding by the filing of its petition for cancellation, it was supposed to have served the petition on either the Respondent or Respondent's domestic representative, if one had been appointed. See Rule 2.111(a) and (b). Here, Respondent Speedo did not appoint a domestic representative, and so Petitioner should have served Speedo (a Netherlands company) directly. It did not. Instead Petitioner served an attorney who had corresponded with Petitioner's counsel regarding a cease-and-desist letter. The Board therefore granted Speedo's motion to dismiss under FRCP 12(b)(5). Jacques Moret, Inc. v. Speedo Holdings B.V., 102 USPQ2d 1212 (TTAB 2012) [precedential].


Even if the PTO records for a registration indicate an attorney of record, if that attorney is not designated as domestic representative for the registration, service of a petition for cancellation on that attorney is not sufficient. Likewise, service on an attorney who represented registrant during prosecution, or who represented registrant as to other matters, is not sufficient.

As stated, Petitioner should have served a copy of the petition for cancellation on Speedo at its correspondence address in the Netherlands. Service on an attorney who was never counsel of record in this proceeding, nor appointed domestic representative, was insufficient. [Note that a power of attorney filed in connection with an application expires when the application issues to registration.]

Petitioner also served a copy of its petition on the Director of the USPTO (concurrently with its motion opposition papers), pointing to Rule 2.24(a)(2). But the Board pointed out that that Rule concerns service of notices or process in applications during ex part prosecution, and does not govern service of papers in cancellation proceedings.

Nonetheless, the Board noted that the firm that filed the motion to dismiss here is now recognized as counsel of record in this proceeding. That firm received a copy of the petition for cancellation as part of Petitioner's opposition to the motion. Since Respondent was then clearly on notice of the proceeding, the Board deemed the proceeding as commenced on July 28, 2011 (when the law firm received the copy), revoked the original filing date of June 16, 2011, and set out a discovery and trial schedule.



TTABlog comment: Big deal, huh? But suppose the challenged registration reached its fifth anniversary between June 16th and July 28th? And suppose the claim was for likelihood of confusion under Section 2(d)? Get my drift? No? See Section 14(1) of the Lanham Act.

Note that the motion to dismiss was pending for seven months!

Text Copyright John L. Welch 2012.

posted by John L. Welch @ 3/20/2012   7 comments

Monday, March 19, 2012

CAFC Reverses TTAB's MILANZA Decision, Finds Confusion Likely With POTENZA and TURANZA For Tires

In a precedential ruling, the U.S. Court of Appeals for the Federal Circuit reversed the TTAB's decision in Bridgestone Firestone North American Tire, LLC v. Federal Corp., Opposition No. 91168556 (February 24, 2010) [not precedential]. The Board had found the mark MILANZA in stylized form, not likely to cause confusion with the registered marks POTENZA and TURANZA, all for tires, concluding that "[t]he dissimilarity of the marks simply outweighs the other relevant factors." Bridgestone Americas Tire Operations, LLC v. Federal Corp., 102 USPQ2d 1061 (Fed. Cir. 2012).



If you listened to the oral argument [mp3 here], you would not be surprised that the CAFC reversed. Appellee Federal faced this uncomfortable question posed by Judge Newman: why did your client choose a mark that is pretty close to a mark that's already out there? Federal answered that it chose the mark because it wanted an association with Milan (although its tires are not made in Milan).

The Board had found that POTENZA and TURANZA "are not strong or famous marks because they are accompanied in advertising by the mark BRIDGESTONE or Bridgestone's 'B' log." However, Bridgestone "cited many commercial examples in which the marks POTENZA and TURANZA are prominently featured while showing Bridgestone as the manufacturer." The court agreed with Appellant that the use of the BRIDGESTONE mark concurrently with POTENZA and TURANZA does not diminish the status of those two marks as strong marks for tires.

The prolonged exclusive use of these marks, the extensive promotion and marketing, the billions of dollars of sales, of tires bearing these marks, shows commercial strength. A unique arbitrary word mark does not lose its strength as a trademark when the manufacturer is identified along with the branded product. Each identification may have trade significance.

Repeating the theme that she raised at oral argument, Judge Newman chastised Applicant for choosing a confusingly similar mark:

There is a heavy burden on the newcomer to avoid consumer confusion as to products and their source. *** This court has cautioned that there is “no excuse for even approaching the well-known trademark of a competitor.” *** This caution applies here; the prior user is entitled to the traditional protections of its marks of trade, as against newcomers choosing a confusingly similar mark for the same goods.

The court concluded that the Board erred in dismissing the opposition, in light of the identity of the goods, the long prior use of the POTENZA and TURANZA marks, their market strength, and the similarities in sound and connotation with MILANZA.

Text Copyright John L. Welch 2012.

posted by John L. Welch @ 3/19/2012   3 comments

Friday, March 16, 2012

Registrant Fails To Overcome Presumption of Abandonment, TTAB Partially Cancels E-MOTION Registration

Was Registrant Rolf Strothmann moved by any emotion when he received Petitioner Alco's motion for summary judgment partially cancelling his registration for the mark E-MOTION for golf carts, shopping carts, bicycles, mail delivery carts, and various other motorized, wheeled vehicles for moving people or things? We may never know. In any case, he failed to rebut the presumption of abandonment that arose as a result of his failure to use the mark for a three-year period after registration for the vast majority of his listed goods, and so the Board partially cancelled the registration. Alco Electronics Limited v. Rolf Stothmann, Cancellation No. 92052572 (March 1, 2012) [not precedential].


Strothmann's admissions established that he made no use of his mark in the USA for any of the goods except golf carts at any time prior to June 15, 2010. The subject registration issued on March 25, 2003, so the mark was not in use for the "Extra Goods" for a period of more than seven years. Consequently, Alco invoked the presumption of abandonment found in Section 45 of the Lanham Act, focusing on the three-year period immediately following registration.

The burden then shifted to Herr Strothmann to show that he had an intent to commence use of the mark on the Extra Goods. The question was "whether Respondent has put forth sufficient evidence to at least raise a genuine dispute of material fact of intent to commence use."

Strothmann submitted a declaration stating that he planned to apply his muscle/motor technology to use in/with the Extra Goods. However, there was no documentation evidencing any activities toward that end. The patents he submitted did not concern any of the Extra Goods. His mere assertion that his plans have not been abandoned was not sufficient to excuse the period of non use or to establish his intent to commence use on the Extra Goods.

[A]n affirmative desire by registrant not to relinquish a mark is not determinative of the intent element of abandonment under the Lanham Act. Nothing in the statute entitles registrant who has formerly used [or never used] a mark to overcome a presumption of abandonment arising from subsequent no use by simply averring "intent not to abandon."Imperial Tobacco v. Philip Morris, 14 USPQ2d 1390, 1394 (Fed. Cir. 1990).

In short, Strothmann "did not present any evidence regarding his intention to commence us of his mark on the Extra Goods for the first three-year period following registration of his mark." Therefore the Board granted Alco's motion and entered judgment against Respondent Strothmann as to the Extra Goods.

TTABlog note: At the time the petition for cancellation was filed, the subject registration was already five years old, and nonuse was no longer available as a claim to knock out the registration. So Alco relied on the abandonment claim, with its added requirement of showing an intent not to commence use.

As the Board points out in footnote 2, usually the concept of "intent to commence use" comes up in cases involving Section 44 o4 66 registrations, where use is not required prior to registration. However, it sometimes arises in Section 1 cases, like this one, where there is nonuse but the "simple claim of nonuse is time-barred" under Section 14(3).

Text Copyright John L. Welch 2012.

posted by John L. Welch @ 3/16/2012   0 comments

Erik Pelton's Summary of March 8th TPAC Public Meeting

Erik Pelton, at his blog, reports here on the March 8th meeting of the Trademark Public Advisory Committee (TPAC).


As to our favorite tribunal, Erik has this:

TTAB Update – Judge Rogers:
  • A new senior attorney, Cheryl Butler, was recently hired. Her duties include updates to the TBMP. An update to the TBMP is planned for sometime around May.

  • Cindy Greenbaum has been hired a the newest TTAB judge. She for the moment still in her former role managing the interlocutory attorneys until that role is be filled by a new hire, for which the process is underway.

  • TTAB is deploying a new “quality review” unit. The unit was formerly a pilot program and will now become permanent. One of its roles is to help to ensure accuracy in the history of proceedings in TTABvue, which is also helpful for having better and more consistent data for use in performance and other measures.

  • 20 precedents have been issued so far this (fiscal) year, up from the 38 issued the previous year.

  • The backlog of cases at the TTAB has increased lately (see data at Erik's blog). Incoming filings has seen some numbers up and some down from quarter to quarter over the last few years. But given increases in application filings the last two years, it is likely that TTAB filing numbers will trend up more consistently in the future if the application filing increases continue.

  • A few more cases are under ACR than in the previous years.

  • TTAB may hold an ACR roundtable over the summer once the staffing issues are addressed and filled.

  • The number of cases operating under the old rules is down to 268, 58 of which are suspended for settlement.

posted by John L. Welch @ 3/16/2012   0 comments

Thursday, March 15, 2012

Test Your TTAB Judge-Ability: Two Classes, One Specimen of Use, Divided Panel

Jakks Pacific, Inc. applied to register the mark BIONICAM for goods in two classes: magnifying glasses, video cameras and microscopes, and similar goods in class 9, and toy magnifying glasses, toy microscopes, and toy video cameras, in class 28. Jakks submitted one specimen label bearing the mark (see immediately below). Examining Attorney Brian Peno refused registration for the class 9 goods on the ground that the specimen shows use of the mark only for toy goods in class 28. Jakks appealed. The Board's opinion runs 46 pages. How do you think it came out? In re Jakks Pacific, Inc., Serial No. 77404047 (March 14, 2002) [not precedential].

Applicant's specimen of use


Applicant's BIONICAM product may be better understood by viewing this video:



Majority: Judge Bucher, writing for the panel majority, observed that a single specimen of use may support registration of a mark in multiple classes. See, for example, In re International Salt Co., 166 USPQ 215 (TTAB 1970) [Specimen bag stamped with the word SALT and the mark TX-10 is proper specimen for both salt for food purposes and salt used in chemical industries]. However, the panel majority agreed with the Examining Attorney that this is not such a case.

the evidence in this record, including several images submitted by applicant that serve as valid specimens, fails to show the applied-for mark used by applicant in connection with “microscopes” qua scientific instruments in Class 9. Rather, the specimens of record demonstrate use of the BIONICAM mark in connection with a mere toy. That is, the specimens of record do not show applicant’s use of its mark in association with the sale of any of the goods specified in International Class 9 in the application.

Dissent: Judge Mermelstein focused on the word "microscopes" in Applicant 's class 9 identification of goods. He maintained that Applicant's specimens are adequate to show use of the mark for microscopes.

Judge Mermelstein noted that while Applicant's products goods are sometimes referred to as toys, the are also sometimes referred to as useful tools. He noted that some purchasers commented on the perceived shortcomings of the device as a microscope, but that merely "highlights the fact that the posters considered the device as a microscope, and not simply as a toy." Even if the device is not a high-quality microscope, it is still a microscope, urged the Judge.

As far as I am aware, International Class 9 is not an exclusive club that may only be joined by microscopes used by post-doctoral researchers in white lab coats, or ones that cost a certain amount of money, are of a certain quality, or are even used by anyone over eight years old. (Every student of science has to begin at some point.)

In sum, Judge Mermelstein concluded that, although the PTO's evidence showed that some purchasers considered Applicant's product as a toy, others found use for it as a microscope. "All of that is entirely consistent with the application claiming use in both Classes 9 and 28." And so he would have reversed the refusal.

TTABlog comment: I am still without power, and energy as well. The judges said a lot more in their 46-page opinion, and I suggest that you read it, if you have lights.

Text Copyright John L. Welch 2012.

posted by John L. Welch @ 3/15/2012   6 comments

Wednesday, March 14, 2012

Copley Square Power Outage Knocks TTABlog Out of Commission

A major power outage in Boston's Back Bay last night knocked the TTABlog out of commission. We hope things will be up and running again tonight.


posted by John L. Welch @ 3/14/2012   2 comments

Tuesday, March 13, 2012

Opposer's Vague Testimony Fails to Establish Priority, TTAB Dismisses 2(d) DITA Opposition

Judith Mendez a/k/a Dita de Leon filed an opposition to registration of the mark DITA for jewelry, leather goods, and clothing, alleging likelihood of confusion with her previously used, identical mark for jewelry, clothing, and leather goods. To prove priority of use, she relied exclusively on her own testimony, but the Board found it to be vague and general, and lacking in specificity. And so it dismissed the opposition. Judith Mendez v. Dita, Inc., Oppositions Nos. 91167828 and 91170265 (March 8, 2012) [not precedential].


Of course, priority is a necessary element in proving likelihood of confusion. Applicant was entitled to rely at least on the filing date of its applications, namely, October 28, 2004.

The Board pointed out that oral testimony, even of a single witness, may be enough to establish priority if the testimony is "sufficiently probative." The testimony must carry a "conviction of its accuracy and applicability."

Here, Opposer claimed that she used the mark DITA "as early as the 1980s," but her testimony was "vague and indefinite." She claimed to be a "child prodigy" who at a young age was "already considering myself a business woman" even when she was 10 years old. She estimated her total income from jewelry sales from 1985 to 2005 to be "Under 10,000 maybe." Likewise as to clothing sales during that period, she did not have an exact number, "But I know it's not more than 10,000."

On cross-examination, Opposer became even less definite, and also evasive and combative. [The transcripts were "replete with irrelevant bickering and involve personal attacks."] When asked for unit sales and income amounts she responded "I'm not going to guess" or simply that she could not recall. Nor could she identify any suppliers.

Opposer claimed that her lack of evidence was due to the number of years that passed between 2004 and the taking of her testimony in 2009 and 2010. But she could not provide evidence or documentation even for the two years prior to her testimony.

The Board ruled that Opposer had failed to prove by a preponderance of the evidence that she was using the mark DITA prior to Applicant's filing date. It therefore dismissed the opposition.

TTABlog comment: WYHO? Would you have opposed in this situation?

Text Copyright John L. Welch 2012.

posted by John L. Welch @ 3/13/2012   2 comments

Monday, March 12, 2012

Granting Rule 2.132(b) Motion, TTAB Dismisses Ston Cor's 2(d) Opposition For Failure to Make Prima Facie Case

In this Section 2(d) opposition, Applicant Cupa Materials, Inc. moved for judgment under Rule 2.132 (b) at the end of Opposer Ston Cor's case-in-chief. Ston Cor relied only on its 15 pleaded registrations and nothing more. The Board granted the motion and dismissed the opposition, finding that Ston Cor had failed to make out a prima facie case of likelihood of confusion. Ston Cor Group, Inc. v. Cupa Materiales, S.A., Opposition No. 91190420 (February 28, 2012) [not precedential].


Cupa applied to register the mark STONEPANEL CUPA in stylized form (shown above) for non-metallic building materials (e.g., pipes and sealants), stone monuments, and construction services [STONEPANEL disclaimed]. Opposer Ston Cor pleaded 15 trademark registrations (and attached status-and-title copies to its Notice of Opposition)for the following marks for various grouts and mortars: STONCLAD-PT, STONHARD, STONCRETE, STONLOK, STONLUX, STONLINER, STONSHIELD, STONSET, STONKOTE, STONPROOF, STONSEAL, STONFIL, STONCLAD, STONBLEND, and STONCREST.

Rule 2.132(b) provides that:

If no evidence other than a copy or copies of Patent and Trademark Office records is offered by any party in the position of plaintiff, any party in the position of defendant may, without waiving the right to offer evidence in the event the motion is denied, move for dismissal on the ground that upon the law and the facts the party in the position of plaintiff has shown no right to relief.

Copa argued that Ston Cor had failed to meet its burden to submit evidence establishing a reasonable likelihood of confusion. Ston Cor asserted that it owns a "family" of "STON" marks, but the Board pointed out that we a party "cannot simply rely on its pleaded registrations to establish that it has a family of marks. Testimony and/or evidence beyond registration evidence is required to establish such a family of 'STON' marks and that is lacking here."

Turning to the individual marks of Opposer, the Board observed that the "only arguable similarity" is the STON- and STONE element, but Ston Cor did not establish that the appearance, sound, connotation and commercial impressions of the marks are similar. Instead the Board found that the dissimilar elements distinguish the marks.

As to the goods/services of the parties, they are clearly different and any relatedness is not readily apparent from the pleaded registrations.

And so the Board granted the motion and dismissed the opposition.

TTABlog comment: Ston-Cor took a gamble by not submitting any evidence during its testimony period. Third-party registration evidence might have helped on the relatedness issue.But the marks? "Ston-" has to be a weak formative for, at least, goods made of stone. If you were to appeal this case, which route would you take, CAFC or district court, and why?

Text Copyright John L. Welch 2012.

posted by John L. Welch @ 3/12/2012   3 comments

Friday, March 09, 2012

TTAB Knocks Out Ten Affirmative Defenses in SF Giants' Opposition to SAN FRANCISCO CALIFORNIA Design Mark

Bully for the San Francisco Giants! Claiming likelihood of confusion with their many Stylized SAN FRANCISCO marks, the Bay Area Batsmen are opposing registration of the mark shown immediately below, for "Aprons; Bandanas; Caps; Hooded sweatshirts; Jackets; Sweat shirts; T-shirts." The Giants moved to dismiss 10 of 17 affirmative defenses pleaded by Applicant Gogo, and the Board granted the motion. San Francisco Baseball Associates L.P. v. Gogo Sports, Inc., Opposition No. 91203112 (March 2, 2012). Under FRCP 12(f), the Board may strike from a pleading any insufficient or impermissible defense, or any redundant, immaterial, impertinent or scandalous matter. Although not favored, motions to strike are granted "in appropriate instances." The Board found it a no-go for the following affirmative defenses of Gogo:
  • No. 1. Unclean Hands: Gogot failed to plead with specificity the conduct that supposedly would constitute unclean hands
  • Nos. 5 and 6. Laches/undue delay: These are not defenses that are available in an opposition proceeding.
  • No. 9. Fair use: Not available where, as here, the party asserting the defense is using its mark as a trademark in commerce.
  • No. 10. First Amendment: The Board lacks jurisdiction to consider constitutional claims.
  • No. 11. Failure to mitigate damages: Applies to claims of trademark infringement and unfair competition, over which Board has no jurisdiction.
  • No. 14. No impairment or harm to famous mark: Irrelevant, since Opposer did not plead dilution.
  • No. 15. No false designation of origin: Irrelevant because Opposer did not plead such a claim, and the Board would not have jurisdiction over it anyway.
  • Nos. 16 and 17. No trademark infringement or unfair competition: Inapplicable because the Board lacks jurisdiction over such claims, and Opposer has not asserted such claims anyway.
So, you may wonder, what are the seven affirmative defenses that remain standing? Abandonment, lack of secondary meaning, descriptiveness, good faith [huh?? - ed.], genericness, no famous mark [what?? - ed.], and no inherent distinctiveness [a defense? - ed.]. It seems to me that the Giants might have taken a swing at a few of these remaining defenses as well. 

TTABlog comment: Is it worth the expense and effort to file a motion to knock out bogus affirmative defenses? Maybe it's useful to rattle and discourage the other side. Sort of like a high hard one to push a batter away from the plate? 

Text Copyright John L. Welch 2012.

posted by John L. Welch @ 3/09/2012   3 comments

Thursday, March 08, 2012

TTAB Grants Summary Judgment Motion in Section 2(d) Opposition Involving "AA" Marks

It seldom happens in the 2(d) realm, but the Board granted Opposer Olin's motion for summary judgment, finding the applied-for mark AA & Design (shown to the right) for "ammunition, gun and rifle cases, rifles, and related products," likely to cause confusion with the registered marks AA for "ammunition and parts thereof," DOUBLE A for "wads for shot shells," and AA & Design (shown below) for "shot shells and wads for shot shells." Olin Corporation v. Alexander Industries, Inc. d/b/a Alexander Arms, Opposition No. 91197030 (February 24, 2012) [not precedential].


The Board began by finding the involved goods of the parties to be legally identical. It presumed, as it must, that these goods travel through the same trade channels to the same classes of customers (since there were no limitations in the identifications of goods). Of course, when the goods are identical a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

The Board deemed "AA" to be the dominant portion of the parties marks. [Even the DOUBLE A mark? - ed.]. The design portion of Applicant's mark, a shield with crosshairs and a circle, is related to ammunition and firearms and is therefore not distinctive of the goods and entitled to little weight. The Board found no genuine issue of material fact concerning the similarity of the marks.

The Board declared, litotically, that "opposer's sales have not been insignificant," and Applicant admitted that "opposer's mark may be famous within the firearms industry." Applicant's purported evidence of third-party use of the mark AA was nonprobative because there was no showing that the marks are actually in use.

Applicant's assertion that customers for the involved goods are sophisticated, missed the target. There was no evidence that purchasers "would be educated about the products or discerning in their purchases." In any event, even sophisticated purchasers may be confused by very similar marks on identical goods.

The lack of evidence of actual confusion did not raise a genuine issue of material fact because the test under Section 2(d) is likelihood of confusion, not actual confusion. "If the lack of evidence of actual confusion were enough to generally raise a genuine dispute, summary judgment could almost never be granted in favor of a plaintiff on a ground of likelihood of confusion, and that is not the case."

Applicant had moved to amend its application to add a disclaimer of AA, but the Board denied the motion, since the disclaimer would do nothing to negate Olin's claim of likely confusion.

And so the Board granted the motion for summary judgment.

TTABlog comment: Olin had also moved for summary judgment on the ground of dilution, but the Board declined to reach that issue. Curiously, in the JUST JESU IT case and the recent CRACKBERRY decision, the Board found a likelihood of confusion but still went on the decide the dilution issue. In JUST JESU IT, the Board apparently wanted to announce a new standard for the required similarity between the marks. In CRACKBERRY, it did not find confusion vis-a-vis Applicant's clothing items, so the dilution ground was necessarily considered as to those goods.

Text Copyright John L. Welch 2012.

posted by John L. Welch @ 3/08/2012   0 comments

Wednesday, March 07, 2012

CAFC Upholds TTAB's Affirmance of Section 2(d) Refusal of XCEED Over X-SEED & Design for Agricultural Seed

In a precedential ruling, the CAFC upheld the TTAB's affirmance (here) of a Section 2(d) refusal to register the mark XCEED for agricultural seed, on the ground of likely confusion with the registered mark X-SEED & Design (shown below) [SEED disclaimed] for agricultural seeds. The court held that the Board's factual findings were supported by substantial evidence, and it agreed with the Board's legal conclusion that confusion is likely. In re Viterra Inc., 101 U.S.P.Q.2d 1905 (Fed. Cir. 2012) [precedential].


The Board gave "heavy weight" to the identity between the goods, and presumed that the goods travel in the same channels of trade to the same classes of customers (there being no limitations in the identifications of goods). It found that the literal portion of the cited mark was the dominant portion, that the literal portions of the two marks are at least virtually identical in sound, and that both marks play on the laudatory word "exceed." As to appearance, the Board applied the (now-jettisoned) "reasonable manners" standard, finding that one reasonable variation of XCEED could include a large capital X followed by small letters.

Applicant Viterra's appeal focused on the first DuPont factor, the similarity of the marks. Viterra argued that its standard character mark should not be construed so broadly as to cover the distinctive form of the cited mark, that the marks are phonetically different, and that the marks have different connotations.

Vittera urged the court to explain how standard character marks should be compared to design marks, and specifically argued that the court should "readdress and clarify" its ruling in Citigroup, Inc. v. Capital City Bank Group, Inc., 98 USPQ2d 1253 (Fed. Cir. 2011). There, the CAFC rejected the Board's approach of considering the "reasonable manners" in which the standard character might be displayed, and it declared that the TTAB "should not first determine whether certain depictions are 'reasonable' and then apply the DuPont analysis to only a subset of variations of a standard character mark." [This still makes little sense to me. Is the Board supposed to consider "unreasonable" manners of display as well? - ed.].

Rather, “[t]he T.T.A.B. should simply use the DuPont factors to determine the likelihood of confusion between depictions of standard character marks that vary in font, style, size and color and the other mark.” [quoting Citigroup]. We noted, as we had in prior cases, that "illustrations of the mark as actually used may assist the T.T.A.B. in visualizing other forms in which the mark might appear." Accordingly, our decision in Citigroup discarded the Board’s "reasonable manners" standard in favor of a standard that allows a broader range of marks to be considered in the DuPont analysis when a standard character mark is at issue.

Although the Board here applied the "reasonable manners" approach later discarded in Citigroup, that decision did not change the outcome here. Citigroup broadened the range of variations that could be considered (i.e., not just "reasonable" ones), and therefore the Board's approach was more favorable to Viterra.

Viterra contended that Citigroup should apply only in inter partes proceedings, but the court saw no reason to make that distinction. Indeed there is no doubt that the DuPont factors apply in both ex parte and inter partes matters.

Viterra next argued that the dominant portion of its mark is the letter "X," but the court found that substantial evidence supported the Board's position that the literal element "X-seed" is the dominant portion. The fact that SEED was disclaimed in the cited mark does not affect its inclusion in the dominant portion of the mark.

As to pronunciation, the court once again proclaimed that there is no correct pronunciation of a mark. [What about BLACK CAT, APPLE, or TTABLOG? Well, forget the third one, but what about the first two? - ed.]. Any minor differences in the sound of the marks may go undetected by consumers, as the Board pointed out.

Finally, as to connotation the court again refused to disturb the Board's factual finding that it is "reasonable" that purchasers may give the same laudatory meaning to both marks.

And so the court concluded that any minor differences in the marks are insufficient to outweigh the remaining DuPont factors, and so it affirmed the Board's ruling.

TTABlog comment: Another well-written trademark decision by Judge O'Malley. I just wish the court would explain more clearly this new way of considering standard character marks.

Text Copyright John L. Welch 2012.

posted by John L. Welch @ 3/07/2012   0 comments

Tuesday, March 06, 2012

Test Your TTAB Judge-Ability: Must Apple Disclaim "LP" in ITUNES LP?

Apple, Inc. applied to register the mark ITUNES LP for computer software, telecommunications services, entertainment services, and software design and development services relating to, inter alia, audio and multimedia content. The Examining Attorney refused registration of the mark without a disclaimer of LP. Applicant appealed. Both the PTO and Apple agreed that LP is an abbreviation for "long playing" vinyl records. How would you rule? In re Apple Inc., Serial No. 77860835 (February 29, 2012) [not precedential].


Examining Attorney Ty Murray contended that LP is descriptive of Apple's goods and services that "will provide the format of an LP record in a digital platform." Consumers would immediately understand that Apple's ITUNES LP digital content includes the same additional elements traditionally sold with LP records: lyrics, photos, and artwork.

Apple argued that LP refers to a very specific analog medium, and because Apple provides only digital content, "it is simply impossible for the unambiguous term 'LP' to be merely descriptive of the digital content."


The Examining Attorney relied on excerpts from dictionaries, websites, and the iTunes website itself to demonstrate the public's understanding of the term LP. Apple's website stated: "The visual experience of the record album returns with iTunesLP."

The Board agreed with the PTO that the evidence shows that LP is understood to mean "more than just the physical format of a 'microgroove photograph record designed to be played at 33 and 1/3 revolutions per minute.' " LP has a broader meaning: it encompasses the additional features typically associated with a long-playing album, such as cover art, song lyrics, liner notes, and band photographs.

Apple's "iTunes LP" service allows customers to purchase not only entire albums, but also additional, including artwork, lyrics, photos, and videos. "Thus applicant is providing to its customers, albeit in digital form, the same visual materials that made the LP record album a 'consuming experience.'" So says Apple's own website, as well as third-party websites.

Therefore the Board agreed with the PTO that ITUNES LP will convey "an immediate idea of a feature of the goods or services, namely that applicant's digital music files will include precisely the kinds of additional materials commonly associated with LP record albums."

We do not find, as applicant urges, that the evidence shows that LP records are so obsolete and long-forgotten that consumers would not recognize the term LP and its associations. On the contrary, applicant’s musically-minded consumers seem well aware of the significance of term LP and are quick to transfer these associations to applicant’s digital content, just as the term album has migrated from 78 rpm records to LPs, to compact discs, and now to digital music.

And so the Board affirmed the refusal to register.

TTABlog comment: How did you do? The Board affirms more than 80% of the mere descriptiveness refusals that it gets its hands on. So the odds were against Apple. Will Apple seek another bite via further appeal? iDoubtIt

Text Copyright John L. Welch 2012.

posted by John L. Welch @ 3/06/2012   1 comments