Precedential No. 10: Divided TTAB Panel Affirms 2(a) Disparagement Refusal of "KHORAN" for Wines

An augmented TTAB panel of five judges affirmed (3-2) a Section 2(a) disparagement refusal to register the mark KHORAN for wines, concluding that "Muslims would find the mark KHORAN for wines as disparaging to themselves, their religions and their beliefs." The dissent, however, found significant doubt that the word KHORAN, when used in the context of wine, would be equated with the Islamic holy text. In re Lebanese Arak Corporation, Serial No. 77072261 (March 4, 2010) [precedential].

The panel majority reviewed the "structure and development" of Section 2(a), observing that "the proper ground for refusing marks which would offend the sensibilities of an ethnic or religious group is that the matter is disparaging to the members of that group, rather than the matter is offensive or scandalous." The disparagement bar differs from the "scandalousness provision" of Section 2(a) in that the latter protects the public as a whole and the effect of the mark is judged from a general perspective, whereas for the former there is a particular object of disparagement: e.g., a person, group, set of beliefs, etc.

The determination of disparagement requires the application of a two-part test: (1) what is the likely meaning of the mark, taking into account the nature of the goods and the way the mark is used; and (2) if that meaning refers to identifiable persons, institutions, beliefs, or national symbols, is that meaning disparaging to a substantial composite thereof.

The panel majority found "no real dispute that the Office has met the burden of proving the second part of the test. Specifically, the examining attorney has submitted a significant amount of evidence showing that the Koran is 'the sacred text of Islam, considered by Muslims to contain the revelations of God to Muhammad,' and that Islamic authorities view alcohol as a prohibited substance. Applicant does not dispute that this is the case."

The real disagreement between Applicant and the Examining Attorney, and between the majority and dissent, concerned the likely meaning of KHORAN. The Examining Attorney argued that KHORAN is the phonetic equivalent of Koran, while Applicant asserted that it is an Armenian term with the English translation of "altar."

The majority found that KHORAN "gives the commercial impression that it is the word Koran, and that the public (other than Armenian speakers) in general, and Muslim Americans in particular, would regard the mark as referring to the holy text of Islam." It noted, inter alia, that KHORAN and "Koran" may be pronounced identically, and that there are variations in how "Koran" is spelled, including "Khoran."

The dissent argued that the majority misapplied the disparagement test and it disagreed with the determination of the likely meaning of KHORAN.

Specifically, we dispute the majority’s contention that the determination of “what is the likely meaning of the matter in question” should be made from the perspective of the disparaged group. Rather, we believe the Board must look to the general population of the United States and how they will understand applicant’s mark when it is being used in connection with the identified goods or services, in this case wine.

According to the dissent, the majority's approach "will lead to cases where a proposed mark will be found disparaging despite the fact that most Americans attribute a different and inoffensive meaning to that mark."

Moreover, according to the dissent, the Islamic prohibition on alcoholic beverages "may decrease the likelihood that anyone from the general public, at least those familiar with the prohibition, would understand applicant’s mark as a reference to the Koran" as opposed to a reference to the Armenian word.

In short, the dissent concluded that the first part of the disparagement test had not been met. It had "significant doubt as to whether or not the general public is even likely to equate applicant's mark, when considered in the context of wine, with the Islamic holy text." The dissenters would resolve this doubt in favor of Applicant, bearing in mind that an "opposition or cancellation proceeding ... may be filed where the parties will have an opportunity to fully develop an evidentiary record and argue the issue."

TTABlog comment: When is the last time that the Board rendered a decision with an augmented panel? Why, pray tell, was it augmented here?

In any case, I think that, for the general public, the word KHORAN would bring to mind "Koran," and so the dissent's insistence that the meaning of the term be considered from the perspective of the general public would not have made a difference in the outcome here. The majority made that point.

Text Copyright John L. Welch 2010.

Appellee Removes CAFC Appeal to Federal District Court Under 15 USC 1071

A party who is dissatisfied with a decision of the TTAB may, of course, appeal to the U.S. Court of Appeals for the Federal Circuit pursuant to 15 USC Sec. 1071(a). That party thereby waives its right to seek review by way of civil action in a federal district court under 1071(b). But the appellee has the right, within 20 days of the notice of appeal, to invoke 1071(b) by giving notice to the USPTO that it wishes to have all further proceedings conducted in a district court. The appellant then has thirty days to commence a civil action. Why, you might ask, would an appellee (who won at the TTAB level) remove the appeal from the CAFC?


That's what happened in Snowizard's appeal from the Board's decision in Southern Snow Manufacturing, Inc. v. Snowizard Holdings, Inc., Cancellation No. 92044522 (December 10, 2009) [not precedential]. [TTABlogged here]. Southern Snow, who successfully cancelled Snowizard's registration for the mark ORCHID CREAM VANILLA on mere descriptiveness grounds, took the case out of the CAFC [notice here].

The petition for cancellation was filed by Southern Snow in 2005. In 2006, Southern Snow commenced a civil action for unfair trade practices in Louisiana state court, but that case was then removed to the federal district court in New Orleans. The federal judge stayed the district court action pending the outcome of the cancellation proceeding. [The opposite of what usually happens].

Mark Edward Andrews, counsel for Southern Snow, reports that the federal judge has agreed that the new complaint to be filed by Snowizard, seeking review of the TTAB judgment, will be consolidated with one of several now-pending lawsuits between the parties. It seems that the Battle of New Orleans involves many flavors of snowballs, not just the ORCHID CREAM VANILLA one.

Text Copyright John L. Welch 2010.

Interesting TTAB Statistics in Report to February TPAC Meeting

Some interesting TTAB statistics were provided at the February 2010 TPAC meeting. (document here). New appeals and oppositions are down, final decisions are down, in first quarter of FY 2010 (Oct. - Dec. 2009): presumably the effect of a struggling economy. TBMP revision under way.

· TTAB Receipts – First Quarter of FY10 compared to FY09

o New Appeals: 832, down 11% from 934 received first quarter FY09
o New Oppositions: 1104, down 25% from 1470 received first quarter FY09
o New Cancellations: 357, almost the same as 355 received first quarter FY09
o Cases maturing for final decision on merits: 131, down 42 % from the 225 maturing in the first quarter of FY09

· Pendency – First Quarter of FY10 compared to FY09

o Final Decisions on Merits: 9.1 weeks (6.3 weeks for first quarter FY09)
o Decisions on Contested Motions: 6.8 weeks (8.25 weeks for first quarter FY09)
o Total number of final decisions on the merits: 82, down 44% from the 147 issued in first quarter FY09 (approximately half of the Board’s ATJs were working on the TBMP revision in the first quarter of FY10)
o Total number of decisions on contested motions: 220, Down 29% from the 312 issued in first quarter FY09 (smaller number of Interlocutory Attorneys than ATJs working on TBMP revision in first quarter of FY10)
o Encouraging decision of motions by telephone: 21%, off slightly from the 24% for all of FY09
o Total pendency of those cases that go all the way to decision by a panel of judges:

• Appeals: 46 weeks on average for first quarter FY10 (up slightly from 44 week figure for all of FY09); median figure of 34 weeks in first quarter the same as for all of FY09
• Trial cases: 165 weeks on average (down significantly from 192 week figure for all of FY09); median down from 150 weeks for all of FY09 to 145 weeks in first quarter FY10
• Approximately 97% of trial cases settle before decision by a panel of judges

· Precedential Decisions: 13; about average for quarter (49 total for all of FY09)

· Accelerated Case Resolution (ACR)

o Description: ACR is a method to expedite decision on the merits; agreement of the parties required
o One case resolved by ACR in first quarter
o Advertising availability of ACR: Q & A format article published in ABA-IP Section publication and posted on TTAB website, focusing on “true ACR” cases and cases involving similar efficiencies, such as stipulations of fact, stipulated introduction of evidence, or stipulated restrictions on discovery or trial; list of case names/numbers illustrating more efficient approaches also published and posted
o Presentation on ACR and other possible efficiencies made to Bar Association for District of Columbia and planned for other forums, including Boston Patent Law Association program and INTA annual meeting

· TTAB Manual of Procedure (TBMP): Revision under way with the participation of:
o 9 administrative trademark judges
o 3 interlocutory attorneys
o 4 paralegals/administrative staff

TTABlog postscript: A reader called me to voice disagreement with this statement in the TTAB report: "Approximately 97% of trial cases settle before decision by a panel of judges." The reader says that it is true that about 3% of cases go to trial, but the other 97% are not all settled. They are disposed of by motion, procedural ruling, withdrawal, etc., and no one really knows how many are actually "settled." Perhaps "resolved" would be a better term to use.
.

TTAB Dismisses 2(d) Opposition, "MILANZA" Too Different from "POTENZA" and "TURANZA" for Tires

Despite the identity of goods (tires), channels of trade, and classes of customers, the Board dismissed this Section 2(d) opposition to registration of the mark MILANZA in the stylized form shown here, finding the mark not likely to cause confusion with the registered marks POTENZA and TURANZA. "[T]he dissimilarity of the marks simply outweighs the other relevant factors." Bridgestone Firestone North American Tire, LLC and Bridgestone Corporation v. Federal Corporation, Opposition No. 91168556 (February 24, 2010) [not precedential].


Family of Marks: Bridgestone had a third registration (ALENZA), but it failed to get it into evidence because its witness "did not testify as to the current status of the regsitration." [Doh! - ed.] In any case, Bridgestone's claim to ownership of an "-NZA" family of marks got no traction. The Board (after reviewing Bridgestone's advertising) punctured that assertion:

Based on the record before us, opposers have failed to establish that the "NZA" suffix is recognized by the purchasing public as exclusively identifying opposers in connection with tires. Opposers' advertising emphasizes the BRIDGESTONE mark and identifies sub-brands such as POTENZA, TURANZA, DUELER and BLIZZAK. *** By highlighting the BRIDGESTONE mark and using POTENZA and TURANZA with DUELER and/or BLIZZAK with the BRIDGESTONE mark, opposers do not draw attention to the purported "NZA" family.

Since Bridgestone did not establish a family of marks, its 2(d) claim rested solely on the likelihood of confusion between the applied-for mark and the marks POTENZA and TURANZA individually.

Strength of Opposer's Marks: As to the strength of Bridgestone's marks, the Board found "nothing in the record to demonstrate that the marks ... have achieved significant recognition independent of the BRIDGESTONE mark."

Flawed Survey Evidence: The Board then let the air out of Bridgestone's survey evidence, finding "a problem with the survey format that affects its probative value."

[I]n the survey, the respondents were shown TURANZA, POTENZA and DUELER and told that these marks were owned by one company and then asked whether the control marks and MILANZA were associated or affiliated with the owner of the first three marks. By telling the respondents that TURANZA, POTENZA and DUELER were owned by the same company, Guideline planted the seed that the "NZA" suffix was significant and, therefore, it influenced respondents by stating the marks were related and suggesting that one or more of the marks shown later might also be related.

Comparing the Marks: Turning then to the marks themselves, the Board found the dominant portion of each to be the first two syllables. The "ZA" provides an Italian accent. "In considering the marks in their entireties, the final syllable is too insignificant to hold that the marks are similar." Moreover, the meaning and commercial impression of the marks are not similar. POTENZA means "power" in Italian. TURANZA "engenders the commercial impression of touring." MILAN suggests something from Milan. And so the Board found the marks not similar in appearance, sound, meaning, and commercial impression. [Query: does TURANZA suggest Turin? - ed.]

Customer Care: Noting that some 45% of consumers purchase replacement tires without regard to brand [I choose by color - ed.], this factor slightly favored opposer.

Balancing all the factors, the Board concluded that the "dissimilarity of the marks simply outweighs the other relevant factors."

TTABlog comment: When Bridgestone's family of marks argument went flat, that seriously undermined the acceptability of its survey. Had their been a family of marks, it seemingly would have been ok to show the two family members together during the survey. But then, had there been a family, would Bridgestone have needed a survey?

Family of Marx
Text Copyright John L. Welch 2010.

Precedential No. 9: TTAB Finds "ELECTRIC CANDLE COMPANY" Generic for Light Bulbs

Ruling that "the designation 'company' cannot transform the name of the goods for which registration is sought into a trademark," the TTAB found the term ELECTRIC CANDLE COMPANY to be generic for "light bulbs; lighting accessories, namely, candle sleeves; lighting fixtures." In addition to genericness, the Board also found the phrase to be "incapable of identifying source for electric candles" under Section 23 of the Trademark Act. In re Wm. B. Coleman Co., Inc., Serial No. 77067861 (March 4, 2010) [precedential].


Applicant sought registration on the Supplemental Register, having failed to convince Examining Attorney Mark Sparacino that the phrase had acquired distinctiveness under Section 2(f). The Examining Attorney then refused registration on the ground of genericness.

The Examining Attorney relied on excerpts from Applicant's website, on third-party websites, and on dictionary definitions, to show that the term "electric candle" is generic. In fact, "electric candle" is an entry in the Trademark Manual of Acceptable Identifications of Goods and Services. He applied both the Gould (compound word) and the American Fertility (phrase) tests for genericness, arguing that under Gould, "electric candle" is a unitary generic term and the addition of 'company' creates a compound term," and that under American Fertility, the phrase is generic pursuant to In re Cell Therapeutics, 67 USPQ2d 1675 (TTAB 2003) [CELL THERAPEUTICS generic for pharmaceuticals].

Applicant argued that ELECTRIC CANDLE COMPANY is not a compound term, and there are no examples of third-party use of the entire phrase.

The Board observed that the dispute "centers on the effect of the addition of the word 'company' to the term 'electric' and the standard to be applied in analyzing the evidence." Under its reading of the two cases, it found ELECTRIC CANDLE COMPANY to be generic under both Gould and American Fertility. As to Gould:

The record shows that “electric candle” is a unitary generic term. *** The space between the generic terms “electric candle” and “company” does not disqualify this type of proposed mark from the Gould analysis. If anything, the terms appearing as they should in normal usage make it even more common. There is no logical basis upon which to conclude that Gould would have yielded a different result if the mark had been SCREEN WIPE rather than SCREENWIPE. Therefore, the Gould analysis applies under these circumstances.

As for American Fertility:

In American Fertility, the Court of Appeals for the Federal Circuit (Court) determined that the USPTO did not satisfy its “burden of showing that the phrase SOCIETY FOR REPRODUCTIVE MEDICINE is generic as applied to the Society’s’ services, namely, promoting the interests of the reproductive medicine profession.” American Fertility, 51 USPQ2d at 1836. However, we do not believe that American Fertility can be read such that an applicant could take a clearly generic term and add to it a non-source identifying word such as “company” and thereby create a trademark. This is true even in the absence of proof by the examining attorney that others have used “electric candle company.”

Finally, dealing with Applicant's contention that ELECTRIC CANDLE COMPANY is not the term that consumers would use to describe the genus, the Board ruled that "the relevant public would nonetheless understand ELECTRIC CANDLE COMPANY to refer to a company that offers electric candles, and public understanding is critical. 1800Mattress.com, 92 USPQ2d at 1685. It is, therefore, incapable of identifying source for electric candles because it is a term a purchaser would understand and could use to refer to the type of company that sells electric candles, and must be left available for use by other such companies selling electric candles."

As has been found in other cases, marks may not equate to the literal name of the goods or services for which registration is sought, but still be deemed to be “generic" or otherwise incapable of attaining source significance and thus unregistrable, even on the Supplemental register. See In re Boston Beer Co. Ltd. Partnershipp, 47 USPQ2d 1914 (TTAB 1998), aff’d, 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (The Best Beer in America, although not the generic name of the goods, is such a commonly used laudatory phrase that it is incapable of registration as a trademark).

And so the Board ruled that ELECTRIC CANDLE COMPANY is both generic and incapable of serving as a source indicator for Applicant's goods.

TTABlog comment: Bravo to the Board for tackling head on the CAFC's goofy dichotomy between compounds words and phrases when it comes to genericness. Let's hope the CAFC sees the (candle)light one of these days and straightens out these two cases.

By the way, the Board took a similar approach in its recent, non-precedential ruling in the JOJOBA BUTTER BEADS case [TTABlogged here].

Text Copyright John L. Welch 2010.

CACF Affirms TTAB Ruling: "X-PIPE" is Generic for Engine Exhausts

In a four-page opinion, the U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's decision of March 18, 2009 [TTABlogged here], wherein the Board found the term X-PIPE to be generic for "internal combustion engine exhausts." Monty Allen Campbell v. Bassani Manufacturing, Appeal No. 2009-1534 (March 5, 2010) [not precedential].


Campbell argued that the Board was not permitted to rely on evidence of generic use of the term by competitors, but the court pointed out that the cases say otherwise, and further noted that the Board also relied on sources other than competitor use.

TTABlog comment: The Board had rejected as inadmissible (under TBMP Section 528.05(e))certain documents submitted by Campbell because he did not provide an authenticating affidavit or declaration. After the recent TTAB ruling in Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (February 23, 2009), however, such documents (depending on their nature) may now be admissible as self-authenticating. Should Campbell ask or reconsideration by the court?

Text Copyright John L. Welch 2010.

Precedential No. 8: You Can't Move for Summary Judgment Until After Serving Initial Disclosures, Says TTAB

Here's a primer on how not to file for summary judgment. Opposer Qualcomm's motion was ill-timed, procedurally deficient, and substantively lacking. As a result, it FLOed right down the TTAB drain. Qualcomm Incorporated v. FLO Corporation, 93 USPQ2d 1768 (February 25, 2010) [precedential].


Bad Timing: Under Rule 2.127(e)(1): "A party may not file a motion for summary judgment until the party has made its initial disclosures, except for a motion asserting claim or issue preclusion or lack of jurisdiction by the Trademark Trial and Appeal Board." Qualcomm's motion did not fall within the exception. Applicant Flo pointed out in its opposition brief that Qualcomm did not serve initial disclosures, but Flo did not expressly object on that ground. The Board held that this requirement "cannot be waived." Therefore the Board denied the motion as premature.

Unpleaded grounds: Qualcomm did not plead in its notice of opposition any of the grounds on which it sought summary judgment. For that reason, too, the motion was denied. See FRCP 56(a) and (b) and TBMP Section 528.07(a).

Improper ground for summary judgment: One of Qualcomm's grounds for summary judgment, abandonment, is "not available when the opposed application is based on Section 1(b)." "Use of a mark that is the subject of an application alleging a bona fide intent to use is not required until the application files a statement of use."

Inadequate pleading of fraud: The Board took the opportunity to bash Qualcomm's fraud pleading, finding its allegations "legally insufficient." Qualcomm claimed that Flo "knew or should have known" of Opposer's prior use and registration of its pleaded marks and "therefore could not have formed the requisite good faith belief that [a]pplicant is the owner of the mark sought to be registered, and that no other person, firm, corporation or association has the right to use said mark in commerce."

Not good enough, said the Board. "[A]llegations that a party made material representations of fact that it 'knew or should have known' were false or misleading are insufficient."

Opposer has failed to allege that applicant knew that opposer had rights in the mark superior to applicant's, and either believed that a likelihood of confusion would result from applicant's use of its mark or had no reasonable basis for believing otherwise; and that applicant, in so failing to disclose, intended to procure a registration to which it was not entitled.

And so the Board denied the motion.

TTABlog comment: This business of whether you have to object on the ground that the other side didn't serve initial disclosures is getting a bit tricky, isn't it?

Note also the "no reasonable basis to believe" language. Isn't that like "knew or should have known"? I thought that, under Bose, reasonableness was not part of the equation.

TTABlog further comment: Not that in Boston Red Sox Baseball Club Limited Partnership v. Chaveriat III, 87 USPQ2d 1767 (TTAB 2008) [precedential], the Board held that the parties can stipulate to a waiver of the initial disclosure requirement. And in Amazon Technologies, Inc. v. Jeffrey S. Wax, 93 USPQ2d 1702 (TTAB 2009), the Board held that an objection to discovery on the ground that the other party has not made its initial disclosures must be made specifically.

Text Copyright John L. Welch 2010.

TTAB Affirms 2(d) Refusal of "CARMINE'S" Design for Restaurant Services in view of Two Other "CARMINE'S" Designs

Two CARMINE'S is/are enough, said the TTAB, in affirming a Section 2(d) refusal to register the mark CARMINE'S in the form shown here, in view of the two registered marks shown below (owned by different entities), all for restaurant services. Applicant Carmine's Broadway Feast, Inc. pointed out that one of those two marks was cited against the other during prosecution but the refusal was withdrawn; however, the Board observed once again that it is not bound by the actions taken by Examining Attorneys in cases not before it. In re Carmine's Broadway Feast Inc., Serial No. 78934642 (February 25, 2010) [not precedential].


The Board wasted little time in finding the marks to be "highly similar" since CARMINE's is the dominant element in each mark. The displays of the marks do not alter the marks' similar connotations or commercial impressions.

Applicant argued that CARMINE'S is a given name and therefore the term is entitled to only a narrow scope of protection. The Board noted, however, that "contrary to the implication in applicant's argument," Section 2(e)(4) applies only to surnames, not given names. There is no provision of the Trademark Act that requires different treatment for given names than any other mark.

Applicant maintained that the coexistence of the two cited registrations dictates reversal. Since one of the cited marks issued despite initially being refused registration over the other, Applicant argued that the Board should reverse here to be consistent. No, said the Board. It is required to assess Applicant's mark in light of the record before it, and is not bound by the actions of Examining Attorneys with regard to other applications.

Next, Applicant urged that CARMINE'S is a weak mark in light of use of that name by several third parties. It provided menus from fourteen establishments that use CARMINE or CARMINE'S as their entire name or part of their name. The Board, however, found this evidence unpersuasive.

This is unlike cases where the Board has found a term to be weak because it is highly suggestive or descriptive, as applied to the relevant goods or services, based on evidence of third-party use in the relevant field. Cf. Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313, 1315 (TTAB 2005). Rather, the record, limited as it is, suggests that numerous parties use these marks in distinct geographical areas. There is no basis for us to conclude that the customers of restaurants would view CARMINE as highly suggestive or descriptive of restaurant services. Quite the contrary -- in each example CARMINE or CARMINE’S appears to be the most distinctive element of the mark.

Finally, Applicant asserted that there have been no incidents of actual confusion between the marks at issue. The Board pointed out, however, that the issue is likelihood of confusion, not actual confusion. Moreover, Applicant itself argued that the three entities operate in different geographical markets. "More importantly, self-serving arguments of no actual confusion have little or no probative value in an ex parte proceeding."

The Board concluded that confusion is likely and it therefore affirmed the refusal.

TTABlog comment: The first cited CARMINE'S is in Rochester, NY, while the second was in Albany (it is apparently now closed). Do you think there is or was any likelihood of confusion in the real world, as opposed to TTAB-world?

Text Copyright John L. Welch 2010.

TTABlog Announcements to Watch For

Hey, TTABlog readers! Watch for these upcoming announcements! The Boston Patent Law Association (BPLA) will host another "TTAB Comes to Boston" seminar on Friday afternoon, April 9, 2010, at Boston University Law School. The Board will hold a final hearing in a pending TTAB proceeding, followed by a panel discussion of the case. And at this year's INTA Annual Meeting in Boston, yours truly will co-host (along with Marty Schwimmer, Ron Coleman, and Pam Chestek) the most popular unofficial INTA event: "MEET THE BLOGGERS VI" on Monday, May 24th, at 8pm at Lucky's Lounge, just a hop, skip, and jump from the Convention Center. Details will follow.

Precedential No. 7: TTAB Deems Internet Printouts Admissible Via Notice of Reliance

In a significant new interpretation of Rule 2.122(e), the Board held that "if a document obtained from the Internet identifies its date of publication or date that it was accessed and printed, and its source (e.g., the URL), it may be admitted into evidence pursuant to notice of reliance in the same manner as a printed publication in general circulation." [emphasis in original]. The Board dismissed this Section 2(d) opposition, finding the mark DEER-B-GON for "animal repellant used to repel deer and other ruminant animals and rabbits" not confusingly similar to the registered marks DEER AWAY and DEER AWAY PROFESSIONAL for deer repellant [DEER disclaimed]. Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (February 23, 2009).


Strength of an incontestably-registered mark: Opposer Safer argued that the incontestability of its registrations under Section 15 is evidence of the strength of its marks; Applicant OMS urged that incontestability does not make a weak mark strong. The Board noted that the appellate courts are split on the issue, some presuming that incontestability is an indicator of strength, others holding that incontestability refers to the validity of the registration, not the mark's degree of strength. The Board held that incontestability "does not dictate that the mark is 'strong' for purposes of determining likelihood of confusion."

Likelihood of confusion: The Board found that the products involved "are for a very specific purpose and purchasers will be particular about purchasing a product that suits this purpose." Furthermore, Opposer’s marks are highly suggestive and are not entitled to as broad a scope of protection as arbitrary marks. The Board therefore concluded that the marks are sufficiently different that confusion as to source is not likely.

Admissibility of Internet Evidence: Under Rule 2.122(e), "[p]rinted publications,, such as books and periodicals, available to the general public in libraries or of general circulation among members of the public" may be introduced into evidence by way of notice of reliance. In other words, they are self-authenticating.

Opposer Safer proffered, in its notice of reliance, certain publications obtained from the Internet. The Board, acknowledged its obligation to "recognize and adapt to changes in technology, particularly the prevalence of the internet." And so the Board deemed these publications admissible.

Thus Safer broadened "the types of documents that may be introduced by notice of reliance to include not only printed publications in general circulation, but also documents such as websites, advertising, business publications, annual reports, studies or reports prepared for or by a party or non-party, if, and only if, they can be obtained through the Internet as publicly available documents." Of course these downloaded documents are admissible for the limited purpose of demonstrating what the documents show on their face; they are not admissible to prove the truth of the statements contained therein.

Furthermore, the Board noted that "the party proffering information obtained through the Internet, runs the risk that the website owner may change the information contained therein. However, any relevant of significant change to the information submitted by one party is a matter for rebuttal by the opposing party."

TTABlog comment: This change will eliminate the formalistic step of authenticating Internet documents by witness testimony (or by declaration in non-trial situations), and should save both the Board and practitioners considerable time and expense. [Not to mention the time of paralegals and legal assistance who no longer have to testify about when and how they downloaded documents.]

Text Copyright John L. Welch 2010.

Precedential No. 52 (2009): TTAB Rules That Objection to Discovery For Failure to Provide Initial Disclosures Must Be Made Specifically

Here is a precedential decision from November 4, 2009, that, because of its interlocutory nature, does not appear on the TTAB FOIA webpage. [Therefore it slipped under the TTABlog radar.] Opposer Amazon did not respond substantively to any of Applicant Wax's discovery requests because Wax (Amazon believed) had failed to serve initial disclosures. Amazon instead stated only that it was "exempt from responding (at this time), due to Applicant's failure to comply with the applicable rules." Not good enough, said the Board. Objections must be made with specificity. And so the Board granted Wax's motion to compel. Amazon Technologies, Inc. v. Jeffrey S. Wax, 93 USPQ2d 1702 (TTAB 2009).


Amazon made a total of 35 "General Objections" to applicant's interrogatories, document requests, and requests for admission, and it posed 171 "specific" objections to each of applicant’s 171 written discovery requests, but Amazon never mentioned Wax's alleged failure to serve initial disclosures. The Board found that Amazon compounded the problem by continuing to "hide the ball" during the meet and confer prior to Wax's motion to compel.

This dispute could and should have been resolved without the necessity of filing a motion to compel. Opposer's mistaken but apparently honest belief that applicant failed to serve initial disclosures is no excuse.

The Board therefore granted Wax's motion to compel and to test the sufficiency of Amazon's s responses to his admission requests. It overruled Amazon's objections:

To the extent opposer's various boilerplate objections could be construed as specific to individual discovery requests, they are OVERRULED, for two reasons. First, opposer has not even claimed, must less established, that any of applicant’s individual discovery requests are objectionable in any specific manner or that any of opposer’s boilerplate objections are valid. Second, applicant’s discovery requests are in large part identical to requests which opposer served on applicant, and "a party ordinarily will not be heard to contend that a request for discovery is proper when propounded by the party itself but improper when propounded by its adversary."

The Board then denied Wax's motion for sanctions [Wax on, wax off? - ed.] as being premature, since Amazon had not disobeyed any Board order. And it reopened discovery for Wax only, but just for two weeks [since Wax had waited until late in the discovery period to serve his discovery demands, and only two weeks were left when Amazon's responses were due].

TTABlog comment: So even if Wax had not served his initial disclosures, Amazon's vague objection was insufficient and the Board would have granted Wax's motion to compel anyway. Would it also have required Wax to serve his initial disclosures belatedly? I suspect so.

TTABlog postscript: Amazon's request for reconsideration was denied (here). In his original decision, the Interlocutory attorney said that Amazon was trying to "hide the ball" and had not laid "its cards on the table." On reconsideration, he stated that discovery "should not be treated as a shell game." Pretty strong words.

Text Copyright John L. Welch 2010.

TTAB Posts March 2010 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled six (6) hearings for the month of March, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. [The hearing schedule and other details regarding attendance may be found at the TTAB website.] Briefs and other papers for these cases may be found at TTABVUE via the links provided.


March 11, 2010 - 11 AM: In re Pantech Co., Ltd. Serial No. 77501046 [Section 2(d) refusal of the mark PANTECH BREEZE for "wireless Telephone Transmitters and Receivers for use other than broadband wireless access," on the ground of likely confusion with the registered mark BREEZE ACCESS for equipment and accessories for broadband wireless access].


March 16, 2010 - 10 AM: In re Sofrane, Serial No. 77384952 [Section 2(d) refusal to register the mark RENDEZ-VOUS BY PAUL & JOE SISTER for various clothing items in view of the registered mark RENDEZVOUS for foundation garments].


March 17, 2010 - 11 AM: In re Robbie H. Phillips, Serial No. 77277484 [Section 2(d) refusal of the mark SIREN for pre-recorded music and for live performances by a single death metal rock group, in view of the registered mark SIREN MUSIC FESTIVAL for "entertainment, namely, live music concerts"].


March 18, 2010 - 2 PAM: Specialized Bicycle Components, Inc. v. Leon A. Fable, Cancellation No. 92048314 [Petition for cancellation of a registration for the mark SPECIALIZE FITNESS in stylized form for "clothing, namely, t-shirts and baseball caps" on the grounds of likelihood of confusion and dilution vis-a-vis the registered mark SPECIALIZED for bicycles and accessories, and Petitioner's alleged common law use of its mark for clothing].


March 25, 2010 - 2 PM: In re Celebrity Cruises, Inc., Serial No. 78834241 [Section 2(d) refusal of CELEBRITY EQUINOX for "cruise ship services" in view of the registered mark EQUINOX for "arranging of travel tours."].


March 30, 2010 - 2 PM: In re Foster's Wine Estates Americas Company, Serial No. 77018496 [Appeal from an objection to Applicant's specimen of use (a catalog) for the mark CELLULAR 360 for wine].


Text Copyright John L. Welch 2010.

TTABlog Article: The Top Ten TTAB Decisions of 2009®

This afternoon, I am speaking at the 54th Annual Intellectual Property Law Conference sponsored by the Center for Intellectual Property Law of John Marshall Law School. A copy of my paper, entitled "The Top Ten TTAB Decisions of 2009" may be downloaded here. The first half of the paper talks about the Bose and its ramifications, while the second half discusses my selections of the Big Ten cases for the year MMIX.

TTAB Vacates 2008 Fraud Ruling in Xel Pharmaceuticals Case

In an Order issued on February 25, 2010 (here), the Board vacated its March 7, 2008 ruling in Herbaceuticals, Inc. v. Xel Herbaceuticals, Inc., Cancellation No. 92045172, wherein the Board had entered partial summary judgment on the ground of fraud. It had found that Respondent Xel Pharmaceuticals committed fraud as to four of its registrations by filing knowingly false Statements of Use (signed by its attorney) regarding use of its XEL HERBACEUTICALS marks on some of the goods listed in its registrations. [TTABlogged here].


The Board observed that its March 7, 2008 order was "interlocutory in nature, did not result in the immediate cancellation by the Commissioner of the noted registrations, and ... was not immediately appealable, because it did not result in full decision of the claims in this case."

Relying on the Bose decision, Xel, on January 7, 2010, filed a motion to vacate the Board's entry of partial summary judgment on HCI's fraud claim. To date, HCI has not filed a brief in response to the motion to vacate. In view of HCI's failure to respond in any manner to Xel's motion to vacate entry of partial summary judgment, that motion is hereby granted as conceded.

Moreover, in view of the Bose decision, the Board sua sponte reviewed the pleading of HCI's fraud claim and found that it was infsufficiently pleaded. "HCI's pleaded fraud claim is based on allegations that Xel 'knew or should have known that it was not using' the involved marks on all of the goods *** and does not allege that Xel filed those statements of use with the requisite intent to deceive the USPTO. *** In addition, HCI’s fraud claim is based '[u]pon information and belief' without a specification of facts upon which such belief could reasonably be based."

The Board allowed HCI thirty days to file an amended petition to cancel repleading its fraud claim in accordance with the Bose decision.

In a footnote, the Board pointed out that "The standard for finding intent to deceive is stricter than the standard for negligence or gross negligence. Still open is the question whether a submission to the PTO with reckless disregard of its truth or falsity would satisfy the intent to deceive requirement. Bose, 91 USPQ2d at 1942, fn. 2." [For a graphical illustration of this point, go here].

Text Copyright John L. Welch 2010.

TTAB Finds "JOJOBA BUTTER BEADS" Generic for ... Guess What?

Yes, you got it! The Board found the term JOJOBA BUTTER BEADS to be generic for "semi-solid wax for use in the manufacturing of other products in the field of personal care, cosmetics and cosmeceutical formulations and preparations," and it therefore granted International Flora's petition for cancellation of Desert Whale's Supplemental Registration. International Flora Technologies, Ltd. v. Desert Whale Jojoba Company, Inc., Cancellation No. 92048102 (February 23, 2010) [not precedential]. [TTABlog note: I provided some assistance to Petitioner in this matter, and so I will keep my editorial comments to a minimum].

male jojoba flowers
The Board first noted that, by obtaining a Supplemental Registration, Desert Whale admitted that JOJOBA BUTTER BEADS is not inherently distinctive. Consequently, its arguments that the term is "an oxymoron or a play on words" cannot be considered.

The Board next ruled that the genus of goods is defined by Desert Whale's identification of goods, and includes semi-solid wax in bead form. The relevant purchasing public includes sophisticated purchasers (e.g., cosmetic formulators at large companies) and home "crafters" who make cosmetic products for themselves. Although Desert Whale does not in fact sell its product in the small quantities purchased by crafters, the genus of goods is not so limited.

The record included definitions of the individual words, industry ingredient listings, third-party generic uses of "jojoba butter," use of that term generically by Desert Whale, third-party generic uses of "beads," and third-party uses of "jojoba butter beads" as an ingredient name.

The Board took an interesting take on the current tests for genericness: In re Gould Paper Corp., 5 USPQ2d 1110 (Fed. Cir. 1987) says that for a compound word (like SCREENWIPE), dictionary definitions of each constituent word may alone suffice to proved genericness, but for a phrase (like SOCIETY FOR REPRODUCTIVE MEDICINE), In re American Fertility Society, 51 USPQ2d 1832 (Fed. Cir. 1999), requires proof that the phrase as a whole be used generically.

The Board agreed with Desert Whale that definitions of the individual words "jojoba," "butter," and "beads" would not be enough to prove genericness here. "However, the evidence shows that the term 'jojoba butter,' and not merely the individual words in that term, is generic as well."

We think that “jojoba butter beads” is analogous to “milk chocolate bar,” as combining the primary ingredient of the product with the shape, and that it is appropriate to treat it as a compound term. *** ... the combination of them lends no additional meaning to the term.*** The space between the generic terms “jojoba butter” and “beads” does not disqualify the mark from the Gould analysis. *** If anything, the terms appearing as they should in normal usage make it even more recognizable as a generic term.

In any case, the Board also found the mark generic under American Fertility, because the record showed that "third parties use the entire phrase 'jojoba butter beads' generically as well." [Then why the discussion about Gould, one might ask? Perhaps because the Board does not like the often senseless distinction between phrases and compound words when determining genericness. - ed.]

And so the Board granted the petition for cancellation.

Text Copyright John L. Welch 2010.