Wednesday, January 23, 2013

The Top Ten TTAB Decisions of 2012 [Part Two]

The second half of the TTABlog's "top ten" list of 2012 decisions includes a non-precedential, but instructive, ruling on Section 2(e)(5) functionality, another Cuban cigar case under Section 2(e)(3), a rare Section 2(d) color decision, and two quasi-procedural, quasi-substantive determinations. Part One of the top ten list may be found here.

In re Cook Medical Technologies LLC, Serial No. 77882876 (December 31, 2012) [precedential]. In this "somewhat unusual" likelihood of confusion case involving the comparison of two color marks, the Board affirmed a refusal to register the color "teal" for "medical devices, namely, guiding sheaths for use in conjunction with access needles, wire guides, and dilators for providing access for diagnostic and interventional devices in vascular and non-vascular procedures." The Board found the applied-for mark likely to cause confusion with a registered mark comprising the color "blue" applied to the tip and indwelling length of catheters. The Board noted that Cook originally dubbed its mark as the color "blue/teal," and it observed that the narrow shapes of the products may make it more difficult to differentiate between the shades of blue. Although sympathizing with Cook's plight, the Board pointed out that Cook could have tried to narrow the scope of the cited mark via Section 18, or could have sought a consent from the registrant.

In re Hershey Chocolate and Confectionary Corp., Serial No. 77809223 (June 28, 2012) [not precedential]. In order to attain trademark registration, a product configuration must clear two hurdles: functionality and acquired distinctiveness. Hershey cleared both in this successful appeal from a refusal to register the product configuration shown here for “candy, chocolate.” Functionality: In a perceptive analysis, the Board found that, although certain aspects of the product configuration are functional, the design as a whole is not. The Board recognized that scoring or segmenting candy bars serves a useful purpose, noting the many examples in the record. But the Board stressed that Hershey “is not seeking to register a segmented rectangular candy bar of no particular design” and found that the proposed mark “as a whole is not essentially functional.” Acquired distinctiveness: A blind internet survey showed that 42% of the survey participants correctly identified Hershey as the maker of the product design, a “significant” number compared with previous cases. In addition, Hershey established use of the mark since 1968, sales of over four billion dollars from 1998-2010, and millions of dollars in advertising expenditures. Considering all the evidence, the Board concluded that Hershey established a prima facie case of acquired distinctiveness that the PTO failed to rebut.

Kallamni v. Khan, 101 U.S.P.Q.2d 1864 (TTAB 2012). [precedential]. Respondent Khan, a Pakistani domiciliary and national, obtained a US registration for the mark OZO ENERGY DRINK & Design for soft drinks, under Section 44(e) of the Lanham Act, based on a Community Trademark Registration (CTM). Khan claimed that the CTM registration emanated from his “country of origin,” but the Board concluded that Khan did not have a “bona fide and effective industrial or commercial establishment in the EU.” He did not have a permanent place of business with employees, nor production facilities, in the EU, and the Board found as a matter of law that “a bona fide and effective industrial or commercial establishment cannot be created by respondent’s reliance on the commercial facilities of an independent legal entity which respondent retained to source his European Union business.” It therefore ruled that the CTM registration could not serve as a basis for registration under Section 44(e), and it cancelled Khan’s registration on petitioner’s motion for summary judgment.

Otter Products LLC v. BaseOneLabs LLC, 105 U.S.P.Q.2d 1252 (TTAB 2012) [precedential]. In this Section 2(d) opposition, opposer Otter relied solely on a Supplemental Registration for its pleaded mark, proffering no other evidence or testimony. Rule 2.132(b) provides for involuntary dismissal of a proceeding if the plaintiff relies only on USPTO records and defendant establishes that plaintiff has “shown no right to relief.” Otter's ownership of a Supplemental Registration sufficed to give it standing to oppose, and removed priority as an issue in the proceeding. But to prevail under Section 2(d), an opposer must show that it has “proprietary rights in the term [it] relies upon to demonstrate likelihood of confusion as to source.” Otter’s only evidence, the Supplemental Registration, was not evidence of ownership, validity, or the exclusive right to use. In short, it does not enjoy the presumptions of Section 7(b). The mark in Otter’s Supplemental Registration is presumed to be merely descriptive, and because Otter provided no evidence of acquired distinctiveness, it could not prevail in this proceeding.

Corporacion Habanos, S.A. v. Guantanamera Cigars Co., 102 U.S.P.Q.2d 1085 (TTAB 2012). On remand from the U.S District Court for the District of Columbia, the Board sustained this opposition to registration of the mark GUANTANAMERA for cigars, finding the mark to be primarily geographically deceptively misdescriptive under Section 2(e)(3). The district court found that “Guantanamera” means “girl from Guantanamo,” that the primary significance of GUANTANAMERA is geographic, that the consuming public is likely to believe that applicant’s cigars originate from Cuba, and that cigar tobacco is produced in the Guantanamo province. However the court ruled that the Board had failed to address the third element of the California Innovations test: the materiality of the geographic representation inherent in the mark. The Board re-opened the proceeding so that the parties could address that issue. It ruled that indirect evidence of materiality is acceptable in an inter partes proceeding, and it concluded that “a significant portion of consumers of cigars would be materially influenced by the geographic meaning of applicant’s mark.” Applicant argued that direct evidence of materiality is required, but the Board concluded otherwise. It noted the difficulty in obtaining direct evidence from purchasers, and pointed out that the TTAB does not require survey evidence in any proceeding (given the limited nature of its jurisdiction).

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Text Copyright John L. Welch 2012-2013.


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