Finding Fruit Juice and Coffee/Tea Related, TTAB Affirms 2(d) Refusal of COCO LOCO

Once again, third-party registration evidence established the relatedness of two different beverages, this time fruit juices on the one hand, and coffee and tea on the other. The Board affirmed a Section 2(d) refusal to register COCO LOCO for fruit juices in view of the registered mark THE CRAZY COFFEE COCO LOCO ESPRESSO and Design (shown below) for coffee and tea [COFFEE, COCO, and ESPRESSO disclaimed]. Applicant argued, without success, that "The Crazy Coffee Company" is the dominant part of the cited mark, but the Board found that the mark contains two "memorable and distinctive elements," the other being the COCO LOCO ESPRESSO logo. In re Beuno Alimentos, S.A. de C.V., Serial Nos 76676618 (May 29, 2012) [not precedential].


Procedural issue: Examining S. Michael Gaafar initially cited two pending third-party applications as potential 2(d) bars, but then in a suspension order listed only one of the two applications. When that application went abandoned, prosecution resumed, and the Examining Attorney made the 2(d) final as to the other cited application when it issued to registration. Applicant cried foul, arguing that the possible citation of that second pending application had been withdrawn.

The Board noted that the TMEP does not clearly state that an Examining Attorney must cite all potential references in a suspension order. Moreover, Applicant was not harmed by the omission, since it had an opportunity to argue against the refusal based on the second reference. The Board noted the PTO's duty to issue valid registrations and its broad authority to correct errors made by Examining Attorneys. The Board concluded that "the examining attorney followed proper examination procedure" and therefore ruled that the PTO was not estopped from refusing registration in view of the second cited mark.

Likelihood of confusion: Applicant translated its mark as "the crazy coconut" while Registrant translated COCO LOCO ESPRESSO as "crazy coffee." The latter is not a literal translation, since "coffee" in Spanish is "cafe," and presumably "crazy coffee" is the commercial impression that Registrant is attempting to convey. In any event, the Board found that the cited mark includes two memorable and distinct elements, one being COCO LOCO ESPRESSO. Comparing that mark with COCO LOCO, the Board found them to be similar in appearance, sound, meaning and commercial impression.

As to the goods, the Examining Attorney relied on numerous use-based third-party registrations that list both fruit juices and coffee or tea in their identifications of goods. Excerpts from various websites also showed tea and fruit juices sold under the same mark (e.g., SNAPPLE, NANTUCKET NECTARS). Applicant feebly argued that tea, coffee, and fruit juices are completely different products, but the Board sagely pointed out that the issue here is confusion as to source, not confusion between the products themselves.

The Board therefore found confusion likely and it affirmed the refusal to register.

Text Copyright John L. Welch 2012.

TTAB Finds GAME FACE for Sports Masks Confusingly Similar to GAME FACE for Paint Ball Goggles

The Board affirmed a Section 2(d) refusal to register GAME FACE for protective masks for various sports (e.g., baseball, field hockey, and lacrosse), finding the mark likely to cause confusion with the identical mark registered for paintball goggles. Applicant Markwort pointed out that its products would be sold in different sections of "big box" stores than paintball goggles, but the Board still found the goods sufficiently similar to warrant affirmance of the refusal. In re Markwort Sporting Goods Company, Serial No. 77408993 (May 7, 2012) [not precedential].

Registrant's paintball goggles
Of course, with the marks being identical, a lesser degree of relatedness between the goods is necessary to support a Section 2(d) finding. Examining Attorney Katherine S. Chang submitted webpages from three large retailers that offer lacrosse, field hockey, and catcher's masks, as well as paintball googles. She further asserted that the goods "are used in the same way and have the same purpose."

Markwort asserted that the webpages were of limited probative value because "the mere fact that goods can be found in the same stores of a large retailer does not mean the goods are related." For example, the retailers may sell bicycles, treadmills, and trampolines, none of which are related to the goods at issue. Moreover, in its identification of goods Markwort specifically stated that its masks are "incapable of protecting the eyes from liquid contaminants as in paintball activities."

The Board agreed that the PTO's website evidence was not particularly persuasive for the reasons stated by Markwort. It concluded that the PTO had not established that the channels of trade are related, and therefore it considered this du Pont factor to be neutral.

However, given the identity of the marks, only a "viable relationship" between the goods is needed to support the refusal. Here, there is such a relationship: the involved products are identical in function. They protect the user's face and eyes, and consumers would likely consider the goods as emanating from the same source, even if offered in different store sections or on different webpages.

Applicant Markwort's mask
Markwort asserted that "game face" is a common term in sports, but the Board found nothing in the record that weakened the term as a trademark for the involved goods. Finally, Markwort maintained that the goods "can be expensive" and thus more care may be exercised in the purchasing process. Again, the Board was not impressed:

[T]he evidence of record exhibits that a paintball mask costs forty-five dollars and that a lacrosse mask costs eighty dollars. These items cannot be considered as expensive enough to justify heightened care in purchasing decisions. Also, there is no evidence in the record of a high risk of injury in paintball, baseball, lacrosse or other identified sports suggesting that greater care is taken by purchasers in deciding to purchase applicant’s and registrant’s goods.

And so the Board affirmed the refusal to register.

TTABlog note: Compare this decision with In re Hoist Fitness Systems, Inc., Serial No. 76428061 (March 30, 2005) [not precedential] [dumbbells and soccer goals not related for Section 2(d) purposes, despite being sold in the same stores and on the same websites].

Text Copyright John L. Welch 2012.

Test Your TTAB Judge-Ability: Is RECYCLED PAPER Generic for Greeting Cards?

PRGCO, LLC sought to register, on the Principal Register under Section 2(f), three marks containing the phrase RECYCLED PAPER for "greeting cards," but the USPTO refused registration without a disclaimer of that phrase. The PTO maintained that the genus of the goods is "recycled paper greetings cards." The Board, however, found no legal support for defining the genus more narrowly than Applicant's identification of goods: i.e., greeting cards. The PTO further contended that "recycled paper" is a sub-genus of greeting cards, but Applicant maintained that the phrase is merely descriptive of the type of paper used. How do you think this came out? In re PRGCO, LLC., Serial Nos. 77252690, 77252698 and 77252707 (May 4, 2012) [not precedential].


The Board began by observing that "terms may be generic if they serve to identify a principal ingredient or key characteristic of the genus of the goods." For example, HENNA 'N' PLACENTA for hair conditioner, or CHAMPAGNE for salad dressing.

Examining Attorney Gina Hayes relied on dictionary definitions of "recycled" and "paper," along with several items showing that Applicant uses recycled paper. She also submitted various media articles and third-party websites using the phrase "recycled paper" in connection with greeting cards. Finally, relying on other Internet evidence, she contended that "recycled paper" is a category of greeting card defined by its principal ingredient.

Applicant argued that the public understands "recycled paper" to mean paper that has been recycled, not greeting cards. It relied on certain Google search results, wherein "recycled paper" referred primarily to Applicant, and to a sample of ProQuest database hits showing the use of "recycled paper" without referring to greeting cards. The Board found this evidence of little value.

Applicant also relied on various third-party registrations in which the term "recycled paper" was disclaimed because it was deemed to be merely descriptive by the PTO. The Board pointed out, however, that an Examining Attorney, when requiring a disclaimed, must in the first instance hold a term to be merely descriptive. Only if a Section 2(f) claim is made may the Examining Attorney invoke genericness. Therefore it is not clear that the disclaimed terms were not generic for the goods.

As to the main point of contention, whether RECYCLED PAPER is a term that identifies a component or ingredient of the goods, and therefore is generic and unregistrable, the Board ruled against Applicant.

[T]he record demonstrates that “recycled paper” is a principal ingredient or component of the involved genus of goods, “greeting cards,” and applicant’s cards are known to feature this ingredient. Further, the evidence is clear that third parties use “recycled paper” to identify a particular type of greeting card, categorized according to this ingredient or component, namely, greeting cards that are printed on recycled paper. *** Thus, “recycled paper” identifies a sub-genus within the broader genus “greeting cards,” as readily as would the terms “birthday,” “anniversary,” “Christmas,” “get well” or even “blank” (to indicate all-purpose cards in which the sender writes the message or greeting).

Applicant asserted that the record evidence was "mixed," with "ample evidence" that Applicant is recognized as the source of the greeting cards offered under Applicant's marks. The Board was not convinced: the mere fact that there is some evidence of proper trademark use is not enough. "[I]t would be fairly easy for a well-healed applicant to ensure that there were at least some stories that would properly use an applicant's mark." Moreover, Applicant relied on mixed use of "Recycled Paper Greetings" as a whole, but the Examiner did not contend that the entire three-word phrase is generic.

And so the Board affirmed the disclaimer requirement, allowing Applicant thirty days to submit the required disclaimer.

Text Copyright John L. Welch 2012.

USPTO Amends Rules Regarding Specimens of Use, Launches Pilot "Deadwood" Project

Although the "golden era of fraud" at the TTAB ended in August 2009 with the CAFC's Bose decision, the brouhaha over fraud did bring to the forefront what some believe to be a serious problem: the existence of use-based registrations covering goods or services for which the mark has not been, or is no longer being, used. With fraud pretty much dead at the TTAB, the USPTO chose to look at the problem from the other end of the telescope, focusing on the application process rather than on a litigation solution, by considering how to ensure that the applicant (or registrant) has used the mark with all the goods or services claimed. [I once suggested (here) that, in this age of the digital camera, the PTO should require the submission of a specimen of use for every item listed in a Section 1(a) application or in a Section 8 Declaration of use.] The PTO has now revised the Rules regarding specimens of use, and has launched a pilot study to review a number of registrations at the Section 8 or renewal stages. These new Rules go into effect on June 22, 2012. The CFR notice, entitled "Changes in Requirements for Specimens and for Affidavits or Declarations of Continued Use or Excusable Nonuse in Trademark Cases," may be found here.

SUMMARY: In order to help assess and ensure the accuracy of the trademark register, the United States Patent and Trademark Office (‘‘USPTO’’) is revising the Trademark Rules of Practice and the Rules of Practice for Filings Pursuant to the Madrid Protocol to allow the USPTO to: Upon request, require any additional specimens, information, exhibits, and affidavits or declarations deemed reasonably necessary to examine a post registration affidavit or declaration of continued use or excusable nonuse in trademark cases, and for a two-year period, conduct a pilot program for the USPTO to assess the accuracy and integrity of the register; and upon request, require more than one specimen in connection with a use-based trademark application, an allegation of use, or an amendment to a registered mark. These revisions aim to ensure the ability to rely on the trademark register as an accurate reflection of marks that are actually in use in the United States for the goods/services identified in the registration, and thereby reduce costs and burdens on the public.

Even without these amendments to the Rules, Trademark Examining Attorneys could, via a Rule 2.61(b) request for information, require an applicant to submit additional specimens of use. See, for example, In re Anderson, Serial No. 76497832 (August 4, 2009) [not precedential]. The amendments make it explicit that the Examining Attorney has that "power." Now we shall see whether there is an increase in the number of requests for additional specimens of use; may we presume that the Examining Attorneys have been urged to make use of this authority?

Text Copyright John L. Welch 2012.

Test Your TTAB Judge-Ability: Are BODY FRUIT and FRUIT OF THE LOOM Confusingly Similar for Clothing?

Applicants sought to register the mark BODY FRUIT for various clothing items, but Fruit of the Loom, Inc., opposed, claiming likelihood of confusion with its registered mark FRUIT OF THE LOOM for overlapping clothing items. FOTL failed to establish fame under Section 2(d), but its mark is strong and the goods are, in part, identical. So did FOTL's opposition bear fruit? Fruit of the Loom, Inc. v. Thomas Riley, David Saulters and Peter Dragon, Opposition No. 91182644 (May 7, 2012) [not precedential].


Section 2(d) fame: Although FOTL proved that it extensively advertised its goods under the mark, that its brand is ranked by various publications as "highly valuable and recognized," and that various courts have found he mark to be famous, the evidence failed to show "the extent to which such activities and achievements translate into widespread recognition either of opposer's FRUIT OF THE LOOM mark or any of its other pleaded marks among the general public." FOTL did not provide sales or advertising figures, nor any context for ascertaining its market share. And so the Board refused to find the FRUIT OF THE LOOM mark famous for purposes of Section 2(d). However, the Board did find the mark to be strong.

The goods: The partial identity of the goods weighed heavily in FOTL's favor. Of course the Board must presume that these overlapping goods travel in the same normal channels of trade to the usual classes of consumers.

The marks: The Board picked FRUIT as the dominant portion of FOTL's mark, since it appears as the first word in the mark. As to connotation, FOTL's mark suggests that its clothing result from its labors. "Likewise, the word FRUIT in Applicants' mark refers back to, and reinforces, BODY, suggesting that its goods are fruit to be worn on or emanating from the body. Thus, both marks as a whole suggest that the parties' clothing products under their marks are fruit produced to be worn on the body." [Huh? - ed.]

The Board concluded that the similarities between the marks outweigh the differences, and it sustained the Section 2(d) claim.

FOTL also pleaded dilution, but the Board dismissed that claim: because FOTL failed to meet the standard for fame under Section 2(d), it could not meet the higher standard for fame under Section 43(c).

TTABlog comment: Well? How did you do?

Text Copyright John L. Welch 2012.

TTABlog Jobs: FSB FisherBroyles is Seeking Lateral Partner Candidates

Fisher Broyles LLP, with offices in Atlanta, Charlotte, Chicago, Dallas, and New York, is seeking lateral partners. Location and hours are flexible. Its attorneys both cloud compute and cloud commute. More details here. Highly-qualified candidate with at least 7 years of experience and big law firm training, should contact Kevin Grierson: grierson at fsblegal.com.

TTABlogger Road Trip: San Francisco IP Law Assn., June 1-3, Healdsburg, CA

Yours Truly will be speaking at the Annual Seminar of the San Francisco Intellectual Property Law Association, to be held in Healdsburg, California, over the weekend of June 1-3, 2012. (details here).


Speakers will include:

• Hon. Randy R. Rader, Chief Judge of the United States Court of Appeals for the Federal Circuit
• Hon. Susan Illston, United States District Court Judge for the Northern District of California
• Hon. Edward J. Davila, United States District Court Judge for the Northern District of California
• Hon. Gerard F. Rogers, Chief Administrative Trademark Judge, Trademark Trial and Appeal Board
• Hon. Margaret A. (Peggy) Focarino, USPTO Commissioner of Patents
• Robert Stoll, former USPTO Commissioner of Patents
• Prof. Eric Goldman, Associate Professor and Director of the High Tech Law Institute at Santa Clara University School of Law
• Prof. Marc Greenberg, Professor of Law and Founding Director of IP Law Program at Golden Gate University School of Law

TTAB Reverses Mere Descriptiveness Refusal of SURF COUTURE for Clothing

By my estimation, four out of five Section 2(e)(1) mere descriptiveness refusals are affirmed on appeal. Here's one that was reversed. The Board found the mark SURF COUTURE to be not merely descriptive of eyewear, luggage, and clothing. The PTO's evidence, consisting of dictionary definitions and a few NEXIS excerpts, fell short. In fact, the evidence suggested the incongruous connotation of high fashion clothing and related goods for surfers. In re Quicksilver, Inc., Serial No. 77734610 (May 18, 2010) [not precedential].


Of the five NEXIS items proffered by the PTO, two were from Australian publications, and they referred to "surf" and "couture" as two separate categories of clothing. Of the remaining three, one used SURF COUTURE in connection with pet accessories. The last two (one from Canada) discussed SURF COUTURE in connection with clothing, but a mere two NEXIS items are not sufficient to establish a prima facie case of mere descriptiveness.

The dictionary definitions pointed to a "relatively vague meaning" for Applicant's mark: it may suggest that the goods are "considered highly fashionable by those embracing a surfer lifestyle," but it does not immediately describe such a characteristic or feature thereof.

The Board observed once again that any doubt as to mere descriptiveness must be resolved in favor of the applicant. And so it reversed the refusal to register.

Text copyright John L. Welch 2012.

AMERICA'S STRONGEST MAN Not Confusingly Similar to WORLD'S STRONGEST MAN, Says TTAB

The Board dismissed a petition for cancellation of a Supplemental Registration for the mark AMERICA'S STRONGEST MAN for competitions in the field of strength athletics and strength entertainment, finding the mark not likely to cause confusion with the registered mark WORLD'S STRONGEST MAN for televised sports competitions. Judge Thomas Shaw did the heavy lifting in a ten-page decision, wryly observing that "the parties' marks, unlike their contestants, are weak." Trans World International, Inc. v. American Strongman Corporation, Cancellation No. 92050860 (May 8, 2012) [not precedential].


The services of the parties were closely related, if not overlapping. Respondent American argued its "strength athletics and competitions are not a sport," but the Board was unmoved. It noted that Respondent's specimens of use indicated that its mark is used with "activities that most would consider to be a sport." Respondent conducts contests in strength and fitness, and has held an AMERICA'S STRONGEST MAN "championship" annually since 1997. Moreover, the definition of "sport" encompasses American's activities: "an athletic activity requiring skill or physical prowess and often of a competitive nature, as racing, baseball, tennis, gold, bowling, wrestling, boxing, hunting, fishing, etc." [How are these sports like lifting and carrying a small car? - ed.]

Turning to the marks, the Board noted that a weak mark is entitled to only a narrow scope of protection. Petitioner Trans World's mark issued under Section 2(f), a concession that the mark was merely descriptive at the time of application. Similarly, the challenged registration issued on the Supplemental Register, a concession of mere descriptiveness. Both marks consist in part of the laudatory phrase "strongest man" together with a geographic term. The result is two weak marks that "merely tell prospective consumers that the competitions will seek out the strongest man in two different geographic regions."

The Board saw no reason why consumers could not distinguish between the competitions using the first terms in the mark. [Is that the right question? Isn't the question not whether the competitions could be distinguished but whether consumers would think they were presented or sponsored by the same entity? - ed.].

The Board concluded that the mere presence of STRONGEST MAN in each mark was not enough to support a finding of likely confusion, that the marks have different connotations and commercial impressions, and that their differences outweigh their similarities.

And so the Board dismissed the petition for cancellation.

Text Copyright John L. Welch 2012.

Opposer Dodges Fraud Counterclaim, But Purchaser Care and Lack of Actual Confusion Lead to TTAB Dismissal

In a 63-page decision, the Board dismissed a Section 2(d) opposition to registration of the mark BENCHMARK RELIANCE for the "issuance and administration of annuities," finding it not likely to cause confusion with the registered mark RELIANCE STANDARD for insurance underwriting and issuing and administering annuities. Despite a partial overlap in the involved services, the Board was persuaded to rule in Applicant's favor by the high degree of care exercised by consumers, the lack of any reported instances of confusion, and the differences in the marks. But the Board denied Applicant's counterclaim for fraud predicated on false statements made by Opposer to the USPTO to overcome a refusal to register. Reliance Standard Life Insurance Company v. American National Insurance Company, Opposition No. 91178996 (April 30, 2012) [not precedential].

Fraud counterclaim: During prosecution of its application to register RELIANCE STANDARD, Opposer sought to overcome a Section 2(d) refusal by stating that it offered its annuity services to employers. But it failed to state that it also sells annuities to individuals through independent agents and brokers. In short, Opposer told a "half-truth."

Opposer did not contest the fact that it knew it rendered its annuity services to individuals. Although the false statements at issue were attorney argument, a client is bound by the actions of its attorney. In any case, Opposer's officer advised counsel in preparing the argument.

The statements were material because they formed "the basis of opposer's contention that its services and the services in the cited registration move in different channels of trade and are sold to different classes of consumers." The false statements "presumably led the examining attorney to withdraw the likelihood of confusion refusal and approve opposer's application for publication."

The Board, however, had doubts as to whether Opposer intended to deceive the PTO. Although "our experience tells us that opposer intended to mislead the examining attorney" by its statements, Opposer did submit a specimen of use that stated that it "offers a complete portfolio of fixed rate annuity products to individuals." The Board must presume that the Examining Attorney was aware of that statement in the specimen of use. Consequently the Board could not "logically find that there was a willful withholding of facts which, if transmitted and disclosed to the examining attorney, would have resulted in the disallowance of the registration sought by opposer." In short, Applicant failed to prove fraud by clear and convincing evidence.


Likelihood of confusion: Opposer attempted to rely on its common law rights in the stand-alone mark RELIANCE, but it failed to meet its burden to prove priority of use. The Board then focused on Opposer's registered mark RELIANCE STANDARD.

The Board found that, based on the nature of an annuity, the personal interaction between the buyer and seller, and the cost of the premium, annuities are purchased "only after careful consideration by the relevant consumers with specific consideration give to the identity and reputation of the annuity underwriter."

The involved marks have been in concurrent uses for nearly seven years for individual annuity services sold in the same channels of trade to the same classes of consumers. The sales and marketing expenditures of the two companies was "substantial enough" for the Board to concluded that there has been a reasonably opportunity for confusion to have occurred. The lack of actual confusion therefore weighed in Applicant's favor.

Finally, as to the marks, the Board found that, despite the fact that the marks have similar meanings and engender similar commercial impressions, the differences in the marks outweigh their similarities. In sum, the Board found the marks "not similar."

Balancing the du Pont factors, the Board ruled that there is no likelihood of confusion between the marks at issue.

TTABlog comment: Note that even if Opposer's registration had been cancelled, it still had common law rights in the RELIANCE STANDARD mark.

Text Copyright John L. Welch 2012.

Test Your TTAB Judge-Ability on These Five Section 2(d) Appeals

Some say that one may predict the outcome of a Section 2(d) likelihood of confusion case just by looking at the marks and the goods or services involved. Once again, let's put that theory to the test with the five Section 2(d) appeals set out below. How do you think the these came out? Do you see any "WYHA?" cases here?


In re Lion Global Investors Limited, Serial No. 79063620 (May 9, 2012) [not precedential]. [Refusal of LION GLOBAL INVESTORS and Design for, inter alia, investment management and financial advisory services for pension funds, endowment funds, trust funds and assets of accredited or institutional investors [GLOBAL INVESTORS disclaimed], in view of the registered mark LION for investment management services, financial and investment planning and research, and trust services, namely, investment and trust company services].


In re 24/7 Eats, LLC, Serial No. 85066363 (May 8, 2012) [not precedential]. [Refusal of THE HIGHLINER for "restaurant services" (class 43) in view of HIGHLINER COFFEE CO for "cafe services; and carryout restaurant services featuring coffee, candy and baked goods" (class 42)].


In re The Border Cafe of Texas, Inc., Serial No. 85104508 (May 1, 2012) [not precedential]. [Refusal of LA CASITA MEXICAN GRILL for "restaurant services" [MEXICAN GRILL disclaimed] in view of LA CASITA MEXICANA in standard character and design form for "restaurant services and catering services" [MEXICANA disclaimed].


In re Xaviant, LLC, Serial No. 77820474 (April 30, 2012) [not precedential]. [Refusal of X (Stylized) for interactive video game devices and Internet entertainment services in the field of video games, in view of the registered mark X for downloadable computer games and video games, and for the provision of information on the video game and computer game industries via the Internet].



In re Active Medics Inc., Serial No. 77767314 (April 30, 2012) [not precedential]. [Refusal of ACTIVLASH "eyelash conditioner" in view of ACTILASH for "cosmetic preparations for eye lashes"].


TTABlog hint: They all came out the same way.

Text Copyright John L. Welch 2012.

Experienced IP/Marketing Counsel Seeks New Position, Preferably in South Florida

Former Senior IP/Marketing Counsel at Burger King Corporation, the Dannon Company and Altria (Kraft Foods and Philip Morris companies) seeks law firm or corporate position. Prefer South Florida location but will consider working remotely or relocating for the right opportunity. Known for protecting and enforcing international portfolios for well-known brands, including Burger King, Whopper, Have It Your Way, Oreo, Ritz, Chips Ahoy!, Tang, Jell-O, Dannon and Blockbuster. Successfully reduced in-house IP budgets and managed outside IP and litigation counsel. Proficient in negotiating and drafting a broad spectrum of legal agreements. Professional demeanor with excellent communication skills who builds strategic partnerships with clients that foster loyalty, cooperation and future business. Send inquiries to John L. Welch to arrange for an introduction.

Ted Davis Outline From INTA 2012: Annual Review of U.S. Federal Case Law

Ted Davis has provided his outline from his May 9th INTA Annual Meeting presentation, entitled "Annual Review of U.S. Federal Case Law." [pdf here]. Thank you, Ted! An audio slide show of Ted's presentation, followed by my presentation, may be found at the "final" INTA Annual Meeting portal (here).

Ted Davis
[NOTE: E-mail subscribers must surf to the blog in order to download the pdf].

"VIDEO POD" for Video Projectors Merely Descriptive and Confusingly Similar to "IPOD," Says TTAB

The Board sustained Apple Inc.'s opposition to the mark VIDEO POD for video projectors [VIDEO disclaimed], finding it merely descriptive of the goods and, alternatively, likely to cause confusion with the famous mark IPOD for handheld digital devices. Although Applicant Sector had yet to use its mark, the evidence showed that its products were intended to be pod-shaped. Moreover, the Board found that Applicant's video projectors were "highly related" to Apple's goods. Apple, Inc. v. Sector Labs, LLC, Opposition No. 91176027 (March 19, 2012) [not precedential].


Evidentiary rulings: The Board rejected the comments of various bloggers who harshly criticized Apple for even filing this opposition. Sector claimed that these comments buttressed its position that confusion is unlikely here. The Board was unimpressed by the bloggers:

[i]t is commonplace in the cyberworld for public officials and commercial establishments to be maligned by intemperate users of the blogosphere who hide behind anonymity or pseudonymity as a cloak of protection. [Ouch! - ed.]

The Board also excluded certain documents that Applicant Sector introduced during its testimony period, but which documents had never been produced during discovery. Sector failed to provide substantial justification for withholding these documents, and the Board ruled that would not only be unfair to allow the documents into evidence, but it would countenance "the very type of unfair trial practice that the Federal Rules and the Board's precedent are meant to prevent."

Sector objected to many of Apple's unpleaded registrations, but the Board pointed out that they were submitted only to show the relatedness of the goods, not to establish priority. And so they were admissible for that limited purpose.

Finally, Applicant objected to the errata sheet submitted by Apple's main witness, but the Board found that the thirteen minor changes in 135 pages of transcript were not substantive.

Mere descriptiveness In its discovery responses, Sector repeatedly referred to its video projectors as "pod-shaped" or having a "pod-like appearance." However, Sector later changed course, with its President feebly claiming that, in choosing its mark, he was inspired by "parallels between his dream of a family of video products and 'pods' of whales, or even a scene involving an 'escape pod' from the movie 2001. A Space Odyssey (1968)." The Board found these tardy explanations "most unconvincing." It concluded that VIDEO POD is merely descriptive of a pod-shaped video player, and it sustained the opposition under Section 2(e)(1).

Giant pod, cast of "Invasion of the Body Snatchers"

Likelihood of confusion: For the sake of completeness, the Board considered Apple's Section 2(d) claim. Since 2001, Apple has sold more than 250 million IPOD devices, spending nearly 3 billion dollars for advertising and promotion. Based on these and other facts, the Board concluded that IPOD is a famous mark for likelihood-of-confusion purposes. [Note that on the issue of Section 2(d) fame, the Board considered evidence up to the date of trial - ed.]

As the fame of a mark increases, the degree of similarity between the marks necessary to support a likelihood of confusion declines. The Board found the marks to be similar, since the word "video" is descriptive of Applicant's goods and the applied-for mark incorporates the most prominent part of Apple's mark.

As to the goods, Apple could not argue that it's IPOD device was capable of displaying videos as of Applicant's 2003 filing date. Apple argued that video projectors were within it's natural zone of expansion, but the Board chose not to go down that road. Instead, it focused on the relatedness of the involved goods as of 2003, finding that the goodwill from Apple's music players "would carry over into the area of video projectors."

That is, the reasonably prudent consumers familiar with opposer’s IPOD device in February 2003 – had they seen an electronic video device being sold under VIDEO POD – would have confused its source. This direction from audio to video was clearly not a distinct departure from Apple’s digital media empire. Specifically, the dozens of articles in this extensive record lauding the iconic nature of the IPOD media player reinforce the idea that Apple, throughout the tenure of the late Steve Jobs, has been on the cutting edge of technology and consumer trends.

Moreover, Sector conceded that its video projectors were to be designed to be compatible with Apple's IPOD media player devices. Thus even without a "strict overlap" of the involved goods, and without resorting to the natural area of expansion doctrine, the Board found a close relationship between the parties' respective goods.

Finally, the Board found IPOD to be a conceptually strong mark, a coined and fanciful term as applied to Apple's goods. There was no evidence of third-party use of the word "POD" in connection with similar electronic devices, and Apple has consistently acted to protect its IPOD mark.

And so the Board found confusion likely and it sustained Apple's Section 2(d) claim.

TTABlog comment: Someone should write an article about the differing cut-off dates for evidence on various issues: fame under Section 2(d), fame for dilution, relatedness of the goods, etc.

Text Copyright John L. Welch 2012.

FRAUD-O-METER Version 2.0 Released in Beta

The Board has yet to decide whether "reckless disregard for the truth" is enough to support a fraud ruling. There are some suggestions (including a recent article by TTAB Judge Lorelei Ritchie [TTABlogged here]) that "willful blindness" may be enough. With that in mind, I have created Version 2.0 of the Fraud-O-Meter, still in beta testing.


Copyright John L. Welch 2010, 2012.

Test Your TTAB Judge-Ability: Is DA VINCI Confusingly Similar to L'IL DAVINCI and DON DAVINCI for Clothing?

This applicant sought to register the mark DA VINCI for various clothing items, but the PTO refused registration under Section 2(d), deeming the mark confusingly similar to the registered marks L’IL DAVINCI and DON DAVINCI for identical or related clothing items. Applicant argued that the word "DAVINCI" is diluted, that the space between "DA" and "VINCI" in its mark makes a difference in connotation and commercial impression because only its mark evokes Leonardo Da Vinci, and that DAVINCI is not the dominant element in the cited marks. How do you think this came out? In re da Vinci, S.A., Serial No. 77651154 (April 30, 2012) [not precedential].


The Board found that all three marks "share the connotation and commercial impression of Leonardo da Vinci." The space or absence of a space cannot distinguish the marks because the three marks are in standard character form, and the Board must consider the marks "regardless of font style, size or color." In fact, Applicant itself submitted the examples below, showing use of the cited marks in a manner that could be perceived as "Da Vinci."


The Board further found that DON and L'IL do not dominate the cited marks. These terms merely modify DAVINCI, a well-known historical character. Even if DON is perceived as a person name (rather than as the Spanish word for a gentlemen or nobleman), "it does not detract from the impression of being a Da Vinci." [Huh? Don Da Vinci as in Leonardo Da Vinci? Or just some ordinary Da Vinci? - ed.]

Although the first word in the mark is often the part most likely to be remembered, here the strong commercial impression of the well-know figure Leonardo da Vinci is overpowering.

A "handful" of third-party registrations for marks incorporating the term DAVINCI are not binding on the Board. Moreover each mark includes other matter that serves to distinguish them from each other.

In sum, the Board found the applied-for mark to be substantially similar to each of the cited marks.

As to the weakness of the term DAVINCI, the four registrations proffered (including the two cited registrations) do not support "a finding that DAVINCI has a specific meaning in this field such that consumers would look to other elements to determine source."

Moreover, even if these four coexisting registrations do limit the scope of DAVINCI when registered with other distinguishing elements, "the scope of protection is still broad enough to prevent the registration of a highly similar mark that contains no distinguishing element for identical goods."

And so the Board affirmed the refusals to register.

TTABlog comment: Do you think DON DAVINCI and L'IL DAVINCI evoke Leonargo da Vinci? Maybe L'IL DAVINCI for children's clothing, but Don?

Text Copyright John L. Welch 2012.

PRL (Ralph Lauren) Rides Fame of "Polo Player" Design Mark to Victory in Section 2(d) Cancellation

Petitioner PRL USA Holdings, Inc. (think Ralph Lauren) ran roughshod over Respondent Thread Pit, Inc. in this Section 2(d) cancellation proceeding. The fame of Petitioner's "polo player" design mark (shown below left) for various clothing items, including t-shirts, led the Board to find confusingly similarity with the registered mark shown below right, for "t-shirts and collared polo shirts." Among other unsuccessful arguments, Respondent claimed that its mark was a parody of the "societal elite as embodied by the sport of polo," but the Board was unmoved. PRL USA Holdings Inc. v. Thread Pit, Inc., Cancellation No. 92047436 (May 14, 2012) [not precedential].


The Board began with the factor of fame because fame plays a dominant role in the duPont analysis. Forty years of use, substantial advertising expenditures, media exposure, and substantial sales via many retail stores, resulted in Board's conclusion that PRL's mark is famous for Section 2(d) purposes. In fact, Respondent conceded the fame of the mark; it feebly contended that this fame lessens the likelihood of confusion, but the Board knocked that hopeless argument right out of the saddle.

The involved goods are in part identical (t-shirts), and the channels of trade and classes of consumers are presumed to include the normal channels of trade for these goods, sold to the same, normal classes of consumers.

As to the marks, the Board observed for the zillionth time that when the goods are identical, a lesser degree of similarity between the marks is necessary to find confusion likely. Keeping in mind that famous marks are entitled to a wide scope of protection, the Board found the marks to be "very similar" in appearance.

The horses are in identical positions with the left front leg curling back and crossing the right rear legs, the reins drape in the same manner, and the mallet extends from the rider at the same angle. In addition, the horses and riders are similarly portrayed in silhouette. Moreover, both marks contain no other elements, either design or words.

Although there may be some differences in commercial impression (one rider in control, the other falling off), the overall commercial impression of the polo players is "very similar." Particularly when the marks appear as a small logo on a t-shirt, it would require close inspection to distinguish the marks.

Finally, Respondent argued that it intended to "parody the elite in society as embodied by the sport of polo." The Board pointed out, however, that parody is not a defense if the marks are otherwise confusingly similar. Moreover, the Board likened this case to Nike v. Maher, in which Board rejected a parody defense for the opposed mark JUST JESU IT, which was meant "to promote, satirized, or poke fun at religion or religious themes." Similarly in this case, "parodying a life style is not a parody of a trademark."

And so the Board found confusion likely, and it granted the petition to cancel, declining to reach Petitioner's dilution claim.

TTABlog comment: Isn't Respondent's mark a parody of the Ralph Lauren mark? Isn't that why they have similarities in design? I think the problem is that by making the marks look somewhat similar in order to parody the PRL mark, Respondent made them confusingly similar.

Text Copyright John L. Welch 2012.

TTAB Finds Reverse Confusion Between KUTT CALHOUN and Supplementally-Registered CALHOUN for Clothing

Rapper Melvin "Kutt" Calhoun sought to register the mark KUTT CALHOUN for various clothing items, including shirts, but was thwarted by a Supplemental Registration for the mark CALHOUN for "sports shirts." Kutt appealed, claiming that his renown in the field, coupled with the weakness of the cited mark, would make confusion unlikely. That argument failed to "kutt it" with the Board, who proceeded to affirm the Section 2(d) refusal to register. In re Melvin Calhoun, Jr., Serial No. 77946290 (April 27, 2012) [not precedential].


The Board considered the goods to be, in part, identical, since Registrants "sports shirts" are encompassed by Applicant's "shirts." Neither the registration nor the application include any limitations on channels of trade, so these shirts presumably travel in the same normal channels to the usual classes of consumers.

As to the marks, the Board first observed that when the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

Applicant argued that the dominant portion of his mark is KUTT, since CALHOUN is a well known surname, registered on the Supplemental Register. Applicant claimed that his is very well known, that he spent tens of thousands of dollars on promoting his name, that his debut album reached #60 on the Billboard charts, and thus that relevant consumers recognize that the goods come from him. In short, he urged that his is famous among the relevant consuming public, that the cited mark is weak, and therefore that there cannot be a likelihood of confusion.

The Board pointed out, however, the fame of Applicant would "exacerbate, rather than obviate, the likelihood of confusion" between the marks. Consumers who are familiar with Applicant's mark are "likely to believe, upon seeing the registrant's mark on sport shirts, that the shirts emanate from the same source as KUTT CALHOUN shirts." I.e., reverse confusion.

Although CALHOUN is a surname, which is presumably why it is registered on the Supplemental Register, marks on that Register may be cited as bars under Section 2(d). There is no special rule that applies to surname marks registered on the Supplemental Register. And even weak marks are entitled to protection.

Finally, Applicant argued that its consumers are sophisticated, and therefore will not be confused. The Board took this as an argument about trade channels, not sophistication or purchaser care. However, the trade channels overlap. And furthermore this argument does not address the "reverse confusion" problem.

The Board therefore affirmed the refusal to register.

TTABlog note: Applicant's identification of goods includes "wearable garments." Are there other kinds of garments?
Text Copyright John L. Welch 2012.

Official TTABlogger INTA 2012 Photo

TTAB Dismisses MODEL AMERICAN Cancellation Petition for Failure to Make Prima Facie Case of Abandonment

In May 1995, American Computer Associates, Inc. (ACA) petitioned for cancellation of a registration for the mark MODEL AMERICAN for "computer hardware, namely processor, keyboard, monitor and memory unit and computer utility programs," on the ground of abandonment. Seventeen years later, after numerous motions and suspensions, the Board has dismissed the petition because ACA failed to establish a prima facie case of abandonment. American Computer Associates, Inc. v. Model American Computer Corporation, Cancellation No. 92023939 (May 10, 2012) [not precedential].


To prove abandonment, a plaintiff must show both nonuse and the lack of an intent to resume use. If it can show three years of nonuse, a prima facie case of abandonment is established and the burden shifts to the Registrant to show either that it used the mark or that it had an intent to resume use during that period.

ACA claimed that Respondent had ceased use of its mark for a period of at least three years prior to commencement of the proceeding, with no intent to resume use.

Respondent was put into receivership in 1992 and was prohibited by court order "from undertaking business, including the use of the mark." However, Respondent submitted evidence that it had licensed the mark prior to the receivership, to a company that continued to sell off inventory from 1992-1993. It also entered into a 20-year license of the mark in 1992. That licensee immediately began test marketing notebooks under the MODEL AMERICAN mark.

In 1995, that second licensee sub-licensed the mark to another company, which continues to use the mark for a software package. ACA claimed that the licensed software was not a "computer utility program" as recited in the registration, but the Board found otherwise based on witness testimony.

And so the Board concluded that ACA failed to prove a three-year period of abandonment. Although Respondent itself stopped using the mark from February 1992 to May 1995 (when this proceeding was commenced), it licensed the mark and received royalty payments. The Board found that use was never discontinued "by those whose actions inure to the benefit of Respondent during the relevant time period."

Moreover, the Board noted, even if three years of nonuse had been shown, the Board would find that Respondent at all times intended to resume use of the mark, based on witness testimony and on Respondent's filing of Section 8 and 9 affidavits for the registration.

And so the Board dismissed the petition for cancellation.

TTABlog comment: If the parties were agreeable to suspending the case for all that time, should the Board care? I understand that the Board takes some grief when its docket includes "old" cases that have yet to be resolved, but if the parties want to delay decision, and if it's not the Board's fault that resolution is delayed, why not let the sleeping dog lie? Why not put these voluntarily-suspended cases in a separate category so that any lengthy "time to decision" does not count against the Board in the measurement of its efficiency?

Text Copyright John L. Welch 2012.

TTABlogger Written Materials for Wednesday's INTA Talk

The "written materials" for my Wednesday, May 8th, talk may be found in .pdf form (here), imaginatively entitled "Decisions of the Trademark Trial and Appeal Board and the Federal Circuit on Registrability Issues: 2011 - 2012." [Some of the more recent cases that I discussed are not included in this paper.]

More DC Photos

Here is a collection of photos, some from that final party at the Newseum. Charles Chen of UNH Law School appears in one. He also provided most of the party photographs.

USPTO Seeks Nominations for Trademark Public Advisory Committee (TPAC)

The United States Patent and Trademark Office (USPTO) is seeking nominations to fill upcoming vacancies for the Patent Public Advisory Committee (PPAC) and the Trademark Public Advisory Committee (TPAC). Nominations must be postmarked or electronically transmitted on or before June 11, 2012. Submission details can be found in the Federal Registration Notice. See USPTO press release here.

Photos From 2nd Annual E-Trademarks-L Reception

The second annual E-Trademarks-L reception was held last night at the Iron Horse Tavern. See anyone you know?

More Meet the Bloggers VIII Photos

Leonard Messinger of Fuldwider Patton in Los Angeles snapped these photos at MTB VIII.