Friday, February 27, 2015

TTAB Dubiously Requires Disclaimer of RAIL for Surgical Implants

Relying on two third-party patent applications, the Board affirmed a refusal of the mark shown below, based upon applicant's failure to disclaim the word "RAIL," for "surgical implants made of artificial materials used in spinal surgery, namely, structural members used to connect pedicle screws in a spinal construct" [TECHNOLOGY disclaimed]. In re K2M, Inc., Serial No. 85679575 (February 17, 2015) [not precedential].


Although recognizing that "rail" has multiple meanings, the Board pointed to two patent applications that use the that word in connection with spinal implants. [Two patent applications? Maybe they will be rejected for indefiniteness. How many people read pending patent applications anyway? Why should this applicant be stuck with the usage of the word "rail" made by two third-party patent applicants? Is this the best evidence the USPTO could come up with? - ed.]. According to the Board, these two patent applications established that the term “rail” is "used generically by third parties to describe a structural component of spinal implants and the term will be understood in that same manner when used in connection with Applicant’s spinal implants."

Applicant submitted a declaration of its vice-president, saying that he never heard of the term "rail" used "to describe a member that interconnects screws implanted into the spine." The word commonly used in competitor literature is "rod." The Board pooh-poohed that evidence, observing that even if applicant is the first and only user of the term "rail," the word may still be merely descriptive of the goods.

Finally, the Board rejected applicant's contention that the mark is unitary and a disclaimer is not required.

And so the Board affirmed the refusal to register.

Read comments and post your comment here

TTABlog note: In this blogger's opinion, the Board gives entirely too much probative weight to statements made by third parties in patent applications and patents. But then, being a patent attorney, maybe I'm biased.

My point is that just because some patent attorney, perhaps newly-minted and still wet behind the ears  and probably not an expert in the technology, while fumbling for a word to name an element in the patent drawings, chooses the word "rail," does not mean that "rail" would be understood by the relevant consuming public to mean what the Board thinks it means.

Text Copyright John L. Welch 2015.

Thursday, February 26, 2015

Recommended Reading: Benschar and Springut, Does Reckless Indifference Suffice for Fraud?

Tal S. Benschar & Milton Springut ask "Does Reckless Indifference Suffice for a Cancellation Proceeding Predicated on Fraud?," 14 J. Marshall Rev. Intell. Prop. L. 20 (2014). They answer in the affirmative.


The CAFC's decision in In re Bose Corp. left open the question of whether reckless disregard for the truth is sufficient to make out a case for fraud on the USPTO. [See FRAUD-O-METER above].

This article answers that question in the affirmative. We show that at common law, reckless disregard for the truth has long been recognized as sufficient to make out a case of fraud, and that has been carried over to several federal statutory contexts. Under the long-established rule that common law terms must be interpreted consistent with the common law absent some compelling statutory language to the contrary, the Lanham Act’s cancellation-for-fraud provision must be interpreted as extending to recklessness.

The article also examines whether the question "might depend on the form in which particular representations are verified to the Trademark Office." And it suggest some changes that the Office might consider making to its verification forms to clarify this issue.

Read comments and post your comment here

Text Copyright John L. Welch 2015.

Wednesday, February 25, 2015

TTAB Test: Which of These Three Section 2(d) Refusals Was/Were Reversed?

At least one of the three Section 2(d) refusals summarized below was reversed, and a least one was affirmed. Can you figure out what happened in each case?  [Answer in first comment]. 


In re James Harris, Serial No. 85918970 (February 23, 2015) [not precedential]. [Section 2(d) refusal THE WASH BOX for "portable vehicle wash water filter" [WASH disclaimed], finding it confusingly similar to the registered mark WASH IN A BOX for "vehicle washing and cleaning equipment, namely, automated pressure washing and pressure rinsing machines and electronic and mechanical controls therefor, all sold as a unit; vehicle washing machines and parts therefor."]


In re World of Wine Events, LLC, Serial No. 86013688 (February 19, 2015) [not precedential]. [Section 2(d) refusal of SAN DIEGO BAY WINE & FOOD FESTIVAL for "arranging, organizing, conducting, and hosting social entertainment events; conducting entertainment exhibitions in the nature of food and wine festivals; consultation in the field of special event planning for social entertainment purposes; entertainment services, namely, wine and food tastings" in view of the registered mark SAN DIEGO BAY for promoting tourism and economic development in the San Diego Bay area.]


In re Sunton Enterprises, Inc., Serial No. 85863532 (February 19, 2015) [not precedential]. [Refusal to register AYLAZZARO for "handbags, luggage and trunks," in view of the registered mark LAZARO for "handbags, briefcases, briefcase-type portfolios and wallets."]


Read comments and post your comment here

TTABlog note: So how did you do?

Text Copyright John L. Welch 2015.

Tuesday, February 24, 2015

WYHA? TTAB Affirms Mere Descriptiveness Refusal of INTERNATIONAL AIR AND SPACE PROGRAM for Aero Space Conferences

In a four-page decision, the Board affirmed a Section 2(e)(1) refusal to register the mark INTERNATIONAL AIR AND SPACE PROGRAM for "organizing conferences and symposia in the field of aero space" [AIR AND SPACE PROGRAM disclaimed]. Would it be fair to say that any affirmance of a Section 2(e)(1) that runs five pages or less is presumptively a WYHA? Would You Have Appealed? In re Aexa Aerospace LLC, Serial No. 86181509 (February 19, 2015) [not precedential].


In light of the disclaimer, applicant focused its argument on the word "international," claiming that the word could have a variety of different meanings to consumers and therefore that some degree of imagination would be required to associate the term with applicant's services. That argument never took off because, as the Board pointed out, the mark must be considered not in the abstract but in the context of the services. Applicant's specimen of use described its services as "an international program for students," and so the Board agreed with Examining Attorney Matt Einstein that consumers will immediately recognize that the word "international" conveys information about applicant's services.

Moreover, the Board has in the past found marks incorporating the word "international" to be merely descriptive of services that are international in scope: for example, INTERNATIONAL BANKING INSTITUTE for organizing seminars for bankers from major countries, BILLFISH INTERNATIONAL COMPANY for services involving billfish on an international scale, and INTERNATIONAL TRAVELERS CHEQUE for financial services of international scope.

Finally, the Board noted that the combination of INTERNATIONAL with AIR AND SPACE PROGRAM created no new meaning beyond that of the constituent terms.

And so the Board affirmed the refusal.

Read comments and post your comment here

TTABlog note: With cases like this, I could be a TTAB judge.

Text Copyright John L. Welch 2015.

Monday, February 23, 2015

TTAB Test: Is "ARMADALE" for Vodka Confusable with "ARMADA" for Sherry?

AV investment Group LLC applied to register the mark ARMADALE for vodka, but Sandeman Sons opposed, claiming a likelihood of confusion with its registered mark ARMADA (in slightly stylized form) for sherry wine. Opposer argued that the applied-for mark merely adds "LE" to its arbitrary mark, and that vodka and sherry are related because they are consumed together and are offered by some third parties under the same mark. How do you think this came out? Geo G. Sandeman Sons & Co., Limited v. A V Investment Group LLC., Opposition No. 9120208 (February 20, 2015) [not precedential].


The marks: The Board agreed that ARMADA is an arbitrary term for an alcoholic product, and a term that consumers would recognize, but applicant's mark ARMADALE is not a recognized word. The addition of "LE" makes the latter mark look like a combination of "ARMA" and "DALE," creating the impression of a geographic reference as opposed to a fleet of warships. Moreover, applicant's mark would likely be pronounced as two words, ARMA and DALE, rather than as ARMADA and LE.

Although there is some similarity in appearance between the marks, the differences in connotation and pronunciation require that the first du Pont factor be weighed strongly in favor of a finding that there is no likelihood of confusion.

The goods: Opposer submitted a number of cocktail recipes that include both sherry and vodka, as well as Internet evidence that wine and vodka may be offered under the same mark. The parties agreed that the channels of trade for the goods may overlap, and that some of the purchasers of the goods may exercise only ordinary care. The Board found that these factors slightly favored opposer.

Applicant pointed out that its prior, now-cancelled registration for ARMADALE co-existed with the cited registration on the Trademark Register. The Board, however, pointed out that this fact is entitled to little weight.

“The existence of these registrations is not evidence of what happens in the market place or that customers are familiar with them nor should the existence on the register of confusingly similar marks aid an applicant to register another likely to cause confusion, mistake or to deceive.” In any event, the ’636 Registration is cancelled. Cancellation “destroys the Section [7(b)] presumptions” to which an existing registration is entitled, In re Hunter Publ’g Co., 204 USPQ 957, 963 (TTAB 1979), so it cannot even be presumed that the prior registration was valid when registered.

Relying primarily on the differences in the marks, the Board concluded that confusion is not likely and it dismissed the opposition.

Read comments and post your comment here

TTABlog note: Well, how did you do?

Text Copyright John L. Welch 2015.

Sunday, February 22, 2015

Florida Bar 6th Annual IP Symposium: Fort Lauderdale, March 5-6th

The Florida Bar Continuing Legal Education Committee and the Business Law Section will hold the 6th Annual Intellectual Property Law Symposium in Fort Lauderdale, Florida, on March 5 and 6, 2015. The March 5th session begins in the afternoon with a meeting of the Intellectual Property Committee, followed by a reception, and then dinner featuring keynote speaker Ron Fierstein, author of "A Triumph of Genius: Edwin Land, Polaroid and the Kodak Patent War." The Friday program includes a presentation by Mary Boney Denison, USPTO Commissioner for Trademarks. Details and registration here.

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Friday, February 20, 2015

TTABlog Road Trip: IPO's "PTO Day" in Washington, D.C., March 10th

Yours truly, the TTABlogger, will be speaking at "PTO Day," sponsored by the Intellectual Property Owners Association (IPO), on March 10, 2015, in Washington, D.C. The event will feature many luminaries from the USPTO, including Deputy Director Michelle Lee, Commissioner for Trademarks Mary Denison, Commissioner for Trademarks, TTAB Chief Administrative Trademark Judge Gerard F. Rogers, and Sharon Marsh, Deputy Director for Examination Policy. It will be held at the JW Marriott Hotel, 1331 Pennsylvania Avenue, NW. The program may be found here and registration here. Tentative title for my talk: "The Top 9 or 10 TTAB Decisions of the Past Year or So." See you there?


In an intriguing afternoon session, friends and fellow bloggers Ron Coleman and Steve Baird, along with Jesse Witten and the USPTO's Cynthia Lynch, will focus on "an overview of Section 2(a) of the Lanham Act as well as the procedures for determining if a trademark is disparaging. Then, attendees will hear from counsel that represented the Native Americans in the Washington Redskins case (Baird and Witten) as well as the counsel for The Slants (Coleman)."

Read comments and post your comment here

Text Copyright John L. Welch 2015.

Thursday, February 19, 2015

WYHA? TTAB Finds NOW YOGA AND FITNESS Confusable With NOWYOGA for Yoga Instruction

It's been a while since I posted a WYHA? Here's a "good" one. In a six-page decision, the Board affirmed a Section 2(d) refusal to register NOW YOGA AND FITNESS for "yoga instruction" [YOGA AND FITNESS disclaimed], finding the mark likely to cause confusion with the registered mark NOWYOGA (standard character form) for the identical services. Would You Have Appealed? In re Now Yoga, LLC, Serial No. 85677969 (January 27, 2015) [not precedential].


Because the involved services are identical, the Board must presume that the trade channels and marketing conditions are also identical. Applicant lamely argued that there are obvious differences: its mark is "used to attract a very specific consumer, namely, adults seeking yoga instruction and other body work and healing services as well as related accessories." As to the cited mark, applicant contended, "it can only be assumed that the ... mark was used to attract those seeking Buddhism based yoga and QiGong classes."

The Board pointed out one again, however, that the services recited in the application or cited registration cannot be narrowed by extrinsic evidence. Neither the application or the registration contains any restrictions in trade channels or classes of consumers. Regarding the contention that consumers of yoga instruction are "sophisticated," the Board found no support in the record.

Turning to the marks, applicant incisively observed that they are not identical. Examining Attorney Zachary B. Cromer maintained that the marks are highly similar in sound, appearance, and connotation, and that the space between the words "new" and "yoga" in applicant's mark is irrelevant. The Board agreed, noting that the disclaimed words "And Fitness" do little to distinguish the marks.

Finally, applicant made of record three registrations for marks containing the word "now" for yoga instruction services: HAPPY NOW YEAR!, Serenity Now Yoga, and NOW & ZEN STRENGTH TRAINING & YOGA CONDITIONING. The Board found this evidence non-probative: first, there was no evidence that these marks are in use or that the public is familiar with them, and second, each of these mark creates a substantially different commercial impression than the two marks at issue here.

And so the Board found confusion likely and it affirmed the refusal.

Read comments and post your comment here

Text Copyright John L. Welch 2015.

Wednesday, February 18, 2015

TTAB Dismisses SURVIVAL BRACELET Opposition for Lack of Standing

Bison Designs opposed an application to register the mark SURVIVAL BRACELET for "bracelets" [BRACELET disclaimed] on the grounds of genericness and mere descriptiveness. However, Bison failed to plead and prove standing, and so the Board dismissed the opposition. Bison Designs LLC v. Tough Gear, Inc., Opposition No. 91201036 (February 5, 2015) [not precedential].


The Board first dealt with Opposer Bison's motion to strike applicant's final brief because it was filed (one day) after the due date and was improperly formatted (according to Bison, applicant listed only about 46% of its cited cases in its Table of Authorities). The Board, however, observed that all 13 cases cited in applicant's brief were listed. The ones not listed were in its appendix, which is not part of the brief. In any event, failure to include a Table of Authorities is not a ground for striking a brief. And although the brief was tardy, the Board applied the Pioneer factors (Pioneer Inv. Serv. Co. v. Brunswick Assoc. Ltd., 507 U.S. 380 (1993)) in concluding that there was excusable neglect on the part of applicant, and it therefore accepted the brief.

As to the issue of standing, this "threshold" issue must be alleged and proven in every inter partes case. When mere descriptiveness is alleged, opposer's standing "is presumed if it has a sufficient interest in using the descriptive term in its business." The same standard applies to a claim of genericness.

Here, Opposer Bison neither properly pled nor proved standing. Bison stated in the preamble to its Notice of Opposition that it "believes that it will be damaged by the above-identified application if it were to proceed to registration," but it never alleged that it sells or manufactures anything, nor did it state any other reason why it has the requisite "real interest" in this proceeding.

Even if standing had been properly pled, Bison did not submit any probative evidence to establish its standing. In its notice of reliance, Bison did not refer to any of its exhibits as establishing standing. However, in its reply brief Bison pointed to two exhibits included in its notice of reliance, in an attempt to counter applicant's argument. But those exhibits, on their faces, were not probative of the issue, and attorney argument in opposer's brief could not substitute for timely submitted and properly identified evidence.

Simply put, Opposer did not state its relevance or characterize this evidence in its Notice of Reliance as involving Opposer’s own use of the term “survival bracelet.” Opposer cannot state in its brief for the first time that this evidence involves Opposer, and proceed to rely on the evidence for the same reason. Applicant was not put on notice and thus did not have the opportunity to verify such an assertion and, if it were to contest the assertion, submit rebuttal evidence, e.g., showing that the reference involves an unrelated third party with a similar name.

In short, applicant raised "timely and genuine arguments as to the limitations of the probative value of Opposer’s evidence for purposes of showing its standing."

And so the Board dismissed the opposition for lack of standing.

Read comments and post your comment here

TTABlog note: I suggest that every TTAB practitioner, if he or she wants his or her opposition or cancellation to survive, wear a bracelet that says PROVE STANDING.

Text Copyright John L. Welch 2015.

Tuesday, February 17, 2015

TTAB Denies Rule 12(b)(6) Motion to Dismiss Section 2(a) HAIRROIN SALON Cancellation

Finding that Petitioner Michael E. Zall had standing and adequately pleaded a claim under Section 2(a) of the Lanham Act, the Board denied Respondent's motion to dismiss this petition for cancellation of a registration for the mark HAIRROIN SALON (in standard character form) for hair salon services, on the ground that the mark is scandalous, immoral, and disparaging. Michael E. Zall v. Salon Hairroin, Inc., Cancellation No. 92059737 (February 14, 2015) [not precedential].


In considering respondent's motion under FRCP 12(b)(6) for failure to state a claim upon which relief can be granted, the Board must accept all of petitioner's well-pleaded allegations as true, and the petition must be construed in a light most favorable to petitioner.

The Board found that Petitioner Zall had pleaded a “real interest” in the proceedings "by alleging that his son died of a drug overdose; that his family suffered for twenty years dealing with his son’s addiction; that after his son’s death he became active in the addiction prevention community and is now Vice President of the Board of Directors of the Rockland Council on Alcoholism and Other Dependence, Inc. in Nanuet, N.Y.; that he has been or will be damaged by the subject registration; and that Respondent’s mark consists of or comprises matter that disparages those affected by addiction, and brings them into contempt, ridicule, and disrepute, and is scandalous and immoral in violation of Section 2(a) of the Lanham Act."

Furthermore, Mr. Zall had a reasonable belief of damage: he alleged that "others share the belief of harm from the subject registration by indicating in Paragraph 13 of the Petition that over 6,000 signatures were included on a petition to the owners of a store in which Respondent’s salon was opened demanding an end to the company’s marketing tactics and that such petition was sponsored by Shatterproof, a non-profit organization that advocates against addiction and the stigma associated therewith."

Reviewing the petition for cancellation, the Board concluded that Mr. Zall had sufficiently pleaded his claim "that the mark at issue is scandalous and immoral and is disparaging of those affected by addiction by alleging, for example, that that the mark is 'offensive, scandalous, immoral, contemptuous…' (Paragraph No. 15); by alleging that he 'finds the use of the term HARROIN for the services rendered by Registrant…despicable, scandalous, immoral and vulgar, and shocking to the sense of propriety…' (Paragraph No. 16); and by alleging that the registered mark 'consists of or comprise [sic] matter that disparages those affected by addiction, and brings contempt, ridicule, and disrepute, and is scandalous and immoral in violation of Section 2(a) of the Lanham Act, 15 U.S.C. Section 1052(a)' (Paragraph 19)."

The Board therefore denied the motion to dismiss and issued a new scheduling order.  

Read comments and post your comment here

TTABlog note: For a case in which the plaintiff failed to establish standing because of a lack of reasonable damage, see the "goats on a roof" case, Robert Doyle v. Al Johnson’s Swedish Restaurant & Butik, Inc., 101 USPQ2d 1780 (TTAB 2012) [precedential]. [TTABlogged here].



Text Copyright John L. Welch 2015.