Precedential No. 4: TxDOT Wins TTAB 2(d) Tussle Over "DON'T MESS WITH TEXAS" for Clothing

The Board granted plaintiff's summary judgment motion in this Section 2(d) opposition/cancellation proceeding involving two entities owning registrations for the mark DON'T MESS WITH TEXAS for various clothing items. Applicant Richard Tucker admitted that TxDOT had priority of use (TxDOT proved it anyway), and TxDot easily fended off his feeble arguments regarding the lack of "significant" evidence regarding TxDOT's interstate use and the de mimimis nature of its actual confusion evidence. Texas Department of Transportation v. Richard Tucker, Cancellation No. 92030882 and Opposition No. 91165417 (February 5, 2010) [precedential].


TxDOT owns four U.S. Registrations and a pending application for the subject mark for its promotional services and various goods including clothing. Tucker owns a registration and a pending application for the mark for various clothing items. TxDOT opposed Tucker's application and petitioned to cancel his registration.

The Board pointed out that the issue of priority is different in the two proceedings:

In the opposition, the issue of priority has been removed by virtue of TxDOT’s submission of status and title copies of its pleaded registrations. See King Candy, supra, which explains that the Trademark Act requires consideration under Section 2(d) of an opposer’s registration, regardless of whether the opposer is the prior user. By contrast, in the cancellation proceeding, priority is in issue. See Brewski Beer Co. v. Brewski Brothers Inc., 47 USPQ2d 1281, 1283-84 (TTAB 1998) (In a cancellation proceeding where both parties have registrations, each can rely on the filing date of the application resulting in its registration, but the evidence of record otherwise determines priority).

In any event, Tucker admitted that TxDOT had prior use of its mark. He therefore had little left to argue, so he first attacked the nature of TxDOT's use, arguing that it did not have "significant prior use" outside of Texas. The Board pointed out, however, that for priority purposes, prior significant use within Texas is sufficient.

Tucker then lamely argued that TxDOT's evidence of actual confusion was de minimis. The Board agreed that "the evidence may not conclusively establish actual confusion," but, as we all know, evidence of actual confusions is not necessary for a finding of likelihood of confusion.

TTABlog note: I'm wondering what makes this decision worthy of the "precedential" tag?

Text Copyright John L. Welch 2010.

Bummer! TTAB Finds "PEACH CLAIRE" for Lingerie Not Confusingly Similar to "PEACH BUNS" for Clothing

In an unexpectedly dull opinion, disappointingly devoid of illustrations, the Board dismissed an opposition to registration of the mark PEACH CLAIRE for lingerie, finding the mark not likely to cause confusion with the registered mark PEACH BUNS for women's clothing, including swimwear. Opposer's lack of proof regarding the relatedness of the goods, paired with the suggestiveness of the word PEACH for clothing, led to Opposer's downfall. GA Peach Buns, Inc. v. Voucia Corporation, Opposition No. 91174032 (January 21, 2010) [not precedential].


Although the parties' actual channels of trade were somewhat circumscribed, there were no such restrictions in the application or registration, and so the Board presumed that these items of everyday apparel "are sold in the same wholesale market as well as at least in some of the same retail channels, such as department stores, to the same ultimate consumers."

However, the Board noted that there is no per se rule that all clothing items are related, and so Opposer had the burden of proof to show that "consumers will believe that these different types of clothing identified by similar marks come from a single source."

The Board noted that "undergarments and outerwear are specifically different types of clothing, having different purposes," and the record lacked evidence that undergarments are complementary or functionally similar. Opposer submitted a Victoria's Secret catalog offering certain items of swimwear and undergarments under the same marks, but that was not sufficient to persuade the Board that "swimwear typically emanates from companies that produce underwear or that purchasers would naturally expect both products to emanate from the same source."

To top it all off, Opposer's president, stated that "I don't consider swimwear an undergarment" and "I would not wear it as underwear." And so the Board concluded, as the bottom line, that Opposer failed to carry its burden of proof to show the relatedness of the goods.

As to the strength of Opposer's mark, the "evidence as a whole falls far short of indicating strength and recognition of PEACH BUNS in opposer's market." Moreover, the Board found that PEACH BUNS is "by its nature" suggestive (again with help from Ms. Smith's own testimony):

In explaining the selection of opposer's mark, Ms. Smith states that she "had always been remembered amongst associates as the Georgia Peach with the perfect butt." *** In this regard we take judicial notice of the definition of "peach" as "Informal. a person or thing that is especially attractive, liked, or enjoyed"; and the definition of "buns" as "Slang. the buttocks." The mark suggests revealing clothing, or, for example, swimwear to show off an attractive part of the body.

Several third-party registrations for marks containing the word PEACH for clothing [for example, BEHIND EVERY GIRL THERE IS A PEACH] indicate that the word has a suggestive meaning.

Finally, the Board observed that when the goods involved "are not highly related, a greater degree of similarity in the marks is required to support a finding of likelihood of confusion." It noted that PEACH BUNS "is a slang expression suggesting revealing clothing or an attractive body part, while PEACH CLAIRE suggests a particular individual or an individual's name." The Board therefore found that "the differences between the marks as a whole in terms of their meaning and commercial impression are sufficient to outweigh those similarities."

And so the Board dismissed the opposition.

TTABlog comment: Even if Opposer had proven the goods to be related, do you think Applicant still would have won? It seems to me that Opposer would also have to show that its mark is very strong in order to overcome the differences in the marks.

Text Copyright John L. Welch 2010.

TTAB Affirms 2(e)(2) Geographical Descriptiveness Refusal of "US PATIENT REGISTRY" for Medical Information Database

Rejecting Applicant's contention that the term "US" in US PATIENT REGISTRY would be perceived as meaning "we," the Board affirmed a Section 2(e)(2) refusal to register, finding the mark primarily geographically descriptive of Applicant's services: "providing a database of health and medical information" [PATIENT REGISTRY disclaimed]. In re Milwaukee Institute, Inc., Serial No. 77476467 (January 28, 2009) [not precedential].


Applicant maintained that the primary significance of "US" is not geographic. It urged that "US" without periods has a different meaning than U.S.: it connotes 'the objective case of 'we'" and so the mark denotes "a patient registry for all of us."

Examining Attorney Simon Teng submitted dictionary definitions, Internet excerpts, and third-party registrations that convinced the Board that "US" denotes the United States and that "the geographic meaning is its primary meaning."

We acknowledge that "US" also means "we." However, the question of whether the mark's primary significance is a geographic location must be determined not in the abstract but in the context of the mark, in relation to the services with which it is used, and from the perspective of the relevant public for those services.

The Board found that "[t]he relevant public is likely to believe that applicant's database provides access to patient records anywhere in the United States or throughout the United States." [What's the difference? - ed.]

The Board was not persuaded by Applicant's imaginative argument that its database will "provide patients with a community of interest based on common experience/attributes of those suffering from the same disease." According to Applicant, "[a] sense of belonging to this community is a key aspect of what the applicant is intending to accomplish with the use of 'US', the objective case of 'we.'"

The Board, however, found US PATIENT REGISTRY to be "grammatically awkward," and observed that "it would be quite a stretch for the relevant public, such as patients and their doctors, to associate a database for maintaining medical records with a sense of belonging to a community."

As to the association between the place and the services, since the US is neither obscure or remote, a services/place association is presumed from the fact that Applicant's services originate from the place named [Applicant is based in Milwaukee]. Contrary to Applicant's contention, the fact that its server may not be located in the U.S., or that registering patients may reside elsewhere, is not significant.

And so the Board affirmed the refusal.

TTABlog comment: Do you think Applicant's argument about the meaning of US was worth making? In other words, should this have been a WYHA?

Text Copyright John L. Welch 2010.

Thinking About Fraud (Part III): After Bose, Can Fraud Be Cured?

In an apparent attempt to lessen the pain of the TTAB's stringent Medinol doctrine, the Board threw a lifeline to trademark applicants and registrants by developing a (rather clunky) set of decisions that allowed one to "cure" a fraud on the PTO under certain circumstances. But with the stricter fraud standard mandated by the CAFC in Bose, does this line of "cure" cases remain viable? I think not.


In Medinol, Registrant Neuro Vasx filed a motion to amend its registration to remove one of two items (stents and catheters) from its identification of goods because its mark had not been used on stents. The Board found fraud (under the now defunct "knew or should have known" theory), pointing out that even if the amendment were allowed, "the question remains whether or not respondent committed fraud upon the Office in the procurement of its registration." So much for curing fraud after a challenge to a registration.

The Board first suggested the possibility of "curing" fraud in Hurley Int'l LLC v. Volta, 82 USPQ2d 1339 (TTAB 2007). There, after commencement of the opposition, the Applicants sought to cure their non-use problem by amending their filing basis to Section 44(e). The Board observed, however, that "the proposed amendment does not serve to cure a fraud that was committed." But in dictum the Board offered a ray of hope to trademark practitioners worried about potential fraud charges: “We note, however, that a misstatement in an application as to the goods or services on which a mark has been used does not rise to the level of fraud where an applicant amends the application prior to publication." [Emphasis added].

The dictum in Hurley was given life in University Games Corp. v. 20Q.net Inc., 87 USPQ2d 1465 (TTAB 2008) [precedential], wherein the Board ruled that an applicant who corrected a false statement as to use while the subject application was under prosecution enjoyed "a rebuttable presumption that [the applicant] lacked the willful intent to deceive the Office." Judge Walsh, concurring with the majority, would have gone even farther, urging that this corrective action during prosecution negated fraud altogether:

In my view, such corrective action should preclude a fraud claim: (1) because the action effectively negated the intent to establish fraud, and (2) because the allegedly false statement, once deleted, was not material to the Office's later approval of the application.

And in 2009 the Board extended its "cure" jurisprudence beyond the prosecution stage, reaching back to designate as precedential its decision in Zanella Ltd. v. Nordstrom, Inc., 90 USPQ2d 1758 (TTAB 2008). It adopted the approach of the panel majority in University Games in ruling that correction of a false statement regarding use, if made before a registration has been challenged, creates "a rebuttable presumption that [registrant] did not intend to commit fraud." [Emphasis added].

So, prior to the CAFC's decision in Bose, applicants and registrants who were concerned that an error in an application or registration regarding use of a mark might lead to a fraud claim, were given a way to cure the problem by filing a corrective amendment -- the sooner the better, and hopefully before any challenge arose.

But that "cure" jurisprudence was developed under the Medinol fraud regime, where "knew or should have known" was the relevant standard. Bose requires a much more substantial showing to support a finding of fraud -- just what that standard is remains to be seen. The CAFC in Bose specifically declined to rule on the question of whether proving a reckless disregard for the truth is sufficient to establish fraud (footnote 2), but it also gave an indication that reckless disregard might not be enough:

We [have] even held that “a finding that particular conduct amounts to ‘gross negligence’ does not of itself justify an inference of intent to deceive.” Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867, 867 (Fed. Cir. 1988) (en banc). The principle that the standard for finding intent to deceive is stricter than the standard for negligence or gross negligence, even though announced in patent inequitable conduct cases, applies with equal force to trademark fraud cases. After all, an allegation of fraud in a trademark case, as in any other case, should not be taken lightly. San Juan Prods., 849 F.2d at 474 (quoting Anheuser-Busch, Inc. v. Bavarian Brewing Co., 264 F.2d 88, 92 (6th Cir. 1959)). Thus, we hold that a trademark is obtained fraudulently under the Lanham Act only if the applicant or registrant knowingly makes a false, material representation with the intent to deceive the PTO.

Bose made clear that simple negligence does not suffice for a finding of fraud and that gross negligence is not enough either. So let's suppose that reckless disregard for the truth is the minimum requirement.

Now let's think about curing fraud. If a corrective amendment regarding the use of a mark is made while the application is being prosecuted, how can there be fraud? There has been no reliance on the false statement by the PTO in that the Examining Attorney has not approved the mark for publication. So it seems to me ( as Judge Walsh stated in Universal Games) that there is no fraud because there is no materiality and/or no reliance. [Whether there should be some other consequence for filing a false verification of the application is a different question, not addressed here.]

What about after the application has been approved for publication? Remember we have posited that the false statement regarding use was made with at least a reckless disregard for the truth. Is there any reason why the Board should allow such a false statement to be cured? We are not dealing with the innocent false statement, or even the negligent false statement, or even a grossly negligent false statement. I submit that if fraud has occurred under the heightened post-Bose standard, then there should be no cure. Period.

In sum, I suspect that the TTAB's "cure" jurisprudence has suffered the same fate as the Medinol fraud standard: it's now defunct too.

TTABlog further comment: On the issue of the PTO's reliance on a false statement prior to approval of an application for publication, what about the argument that (at least in some cases) the Examining Attorney conducted a search of the PTO register that would not have been as extensive or time-consuming had the identification of goods been correct in the first place? For example what if the original identification read "chewing gum and nuclear power plants," and the Examining Attorney had expended the time and energy to search for both? Now suppose the Applicant deletes chewing gum? Was the original misstatement material or not? Was there reliance by the PTO, or not?

Text Copyright John L. Welch 2010.

Precedential No. 3: Denying 2(f) Tacking, TTAB Finds HOLLYWOOD and BOLLYWOOD Not Legal Equivalents

The TTAB found that BOLLYWOOD is not HOLLYWOOD, and that bought down the curtain on this Applicant's attempt to register the mark THE BOLLYWOOD REPORTER for newspapers and on-line publications in the field of entertainment. The Board held that Applicant could not rely on its previous registrations for THE HOLLYWOOD REPORTER to establish acquired distinctiveness under Rule 2.41(b). In re Nielsen Business Media, Inc., Serial Nos. 77223725 and 77223738 (January 28, 2010) [precedential].


In response to a Section 2(e)(1) mere descriptiveness refusal of its intent-to-use application, Applicant claimed that the mark THE BOLLYWOOD REPORTER had acquired distinctiveness and was therefore registrable under Section 2(f). It pointed to Rule 2.41(b), which states that "[i]n appropriate cases, ownership of one or more prior registrations on the Principal Register ... of the same mark may be accepted as prima facie evidence of distinctiveness." In other words, Applicant claimed that it could "tack on" the use of the registered marks to its present mark for purposes of transferring distinctiveness to the new mark.

Examining Attorney Julie A. Watson concluded that the mark THE BOLLYWOOD REPORTER is not the same as or legally equivalent to the mark THE HOLLYWOOD REPORTER. The Board agreed.

To meet the legal equivalents test, the marks must be indistinguishable from one another or create the same, continuing commercial impression such that the consumer would consider both marks as the same mark.

The Board found that here, the marks are not legal equivalents because they have different meanings and produce different commercial impressions.

“Bollywood” is “the extravagantly theatrical Indian motion picture industry.” “Hollywood” is “the center of the American motion picture industry located in Hollywood, California.” THE BOLLYWOOD REPORTER means and creates the commercial impression of a news source regarding the Indian movie industry while THE HOLLYWOOD REPORTER means and creates the commercial impression of a news source regarding the American movie industry.

Applicant feebly argued that "there is only one inconsequential difference between the marks": the substitution of a B for an H. Each of the marks refers to a film industry.

Not so fast, said the Board. That one little letter makes a BIG difference in meaning!

And so the Board affirmed the refusal to register.

TTABlog comment: I've never seen a Bollywood movie. Nor have I been to Dollywood. I have been to Hollywood. How about you? If Dolly Parton ever makes a Bollywood movie, I'd go to Hollywood to see it.

That's about the best I can do with regard to commenting on this case, which hardly seems to merit the "precedential" tag.

Text Copyright John L. Welch 2010.

CAFC Hears Argument in "ODOM'S PRIDE" 2(d) Summary Judgment Appeal

The CAFC heard oral argument today (mp3 here) in the appeal from the TTAB's decision in Odom's Tennessee Pride Sausage, Inc. v. FF Acquisition, L.L.C., Opposition No. 91182173 (April 17, 2009) [not precedential]. [TTABlogged here]. The Board found the mark shown to the right, for retail grocery store services, not confusingly similar to the six registered marks shown below, for various food items, including sausage, barbequed pork, and various other swine-related products. In its terse six-page opinion, the Board granted the motion for summary judgment, finding that, even considering all other relevant du Pont factors in Opposer Odom's favor, the single factor of the dissimilarity of the marks was dispositive:


The Board said this:

While both parties’ design marks consist of smiling boys wearing hats (and in some instances both waiving [sic!] one hand), this is where the similarities end. Opposer's marks depict a barefoot child holding a fishing pole. The boy is wearing a tall pilgrim hat with a ribbon directly above the brim. The boy's feet are small and narrow. By contrast, applicant’s mark depicts a boy facing forward wearing a short, wide brimmed cowboy hat. This boy is wearing thick boots, has thick hands, and has a piece of straw in his mouth. The boy depicted in opposer’s marks has nothing in his mouth. These visual distinctions are sufficient to create different commercial impressions of the marks, thereby precluding a finding of likelihood of confusion.

Appellant argued that the Board's side-by-side comparison and dissection of the marks was not the proper way to assess their similarities. Appellee argued that Appellant was trying to rely on common law uses of its marks that were not pled in the notice of opposition.

Text Copyright John L. Welch 2009.

TTAB Posts February 2010 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled seven (7) hearings for the month of February, 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.


February 3, 2010 - 2 PM: United Industries Corporation d/b/a Spectrum Brands v. OMS Investments, Inc., Opposition No. 91158240 [Opposition to registration of ANT-STOP for "pesticides for domestic use," on the grounds of abandonment and likelihood of confusion with an alleged family of "STOP" marks for lawn and garden products].


February 4, 2010 - 10:00 AM: In re United Pan Am Financial Corp. Serial No. 77262107 [Section 2(d) refusal to register the mark UNITED AUTO CREDIT CORPORATION for "loan financing services" ["AUTO CREDIT CORPORATION" disclaimed] in view of the registered mark UNITED AUTO (Stylized) for automobile dealerships and financing of automobiles].


February 4, 2010 - 10:30 AM: In re Madmann Trademark Holding Company, Ltd, Serial No. 77228194 [Section 2(d) refusal of MAVERICK for hotel and bar services in view of the identical mark for "restaurant services; contract food services"].


February 9, 2010 - 10 AM: Taiwan Semiconductor Manufacturing Co., Ltd. v. Semiconductor Manufacturing International (Shanghai) Corporation, Oppositions Nos. 91171146 and 91171147 [Section 2(d) oppositions to registration of the mark SMIC & Design for semiconductors, integrated circuits, and parts and packaging therefor,and for custom manufacture and design thereof, in view of the registered mark TSMC & Design] for semiconductors and integrated circuits and their custom manufacture and design].


February 9, 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"].


February 17, 2010 - 11 AM: Coach Services, Inc. v. Triumph Learning LLC, Opposition No. 91170112 [Opposition to registration of the marks COACH and COACH AMERICA'S BEST FOR STUDENT SUCCESS & Design for various educational materials on the grounds of mere descriptiveness and of likelihood of confusion with and dilution of the mark COACH registered for leather goods and various other products].


February 25, 2010 - 11 AM: Mag Instrument, Inc. v. The Brinkmann Corporation, Oppositions Nos 91163534, 91164169, and 91164340 [Three consolidated oppositions: (1) Mag's section 2(d) opposition to MAGNUM MAXFIRE for "Hand-held portable lights, namely flashlights and spotlights" in view of the registered mark MAG-NUM STAR and an alleged family of MAG marks for flashlights: (2) Brinkmann's opposition to registration of the design mark shown below, consisting of "two bands that encircle the flashlight," for flashlights, on the ground of functionality; and (3) Brinkmann's Section 2(d) opposition to registration of the mark MAG STAR for flashlights and flashlight accessories in view of the registered mark MAXSTAR for "electric lanterns"].


Text Copyright John L. Welch 2010.

Senate Passes Bill to Provide Usual Grace Periods for Section 71 Declarations of Use

The United States Senate yesterday passed a bill (here) introduced by Vermont Senator Patrick Leahy to amend the Trademark Act in order to fix an anomaly concerning the time periods for filing declarations of use under Section 71 of the Act (in connection with Madrid Extensions of Protection).


In contrast to Section 8 of the Act, Section 71 currently does not provide any grace period for the sixth-year Section 71 declaration of use. And as to the 10-year declarations of use, Section 71 requires that they be filed within the six-month period before the 10th anniversary, or within a three-month grace period thereafter.

This new bill will amend Section 71 to provide the same filing periods and grace periods as does Section 8: one year before the anniversary date or within six months thereafter.

Note that, although the Madrid provisions came into effect in the U.S. in November 2004, the first U.S. Extension of Protection under the Madrid Protocol provisions was issued on February 1, 2005 [See TTABlog posting here]. Therefore, under current law, the first Section 71 Declaration of Use for a Madrid-based U.S. Extension of Protection will be due no earlier than February 1, 2010, and could be filed as late as February 1, 2011. Presumably Section 71 will be amended before then, and a six-month grace period will apply.

Text Copyright John L. Welch 2010.

Weakness of "UNITED" Mark for Money-Transfer Services Leads to TTAB 2(d) Reversal

Twenty-five third-party registrations for marks containing the word "UNITED" for financial services convinced the Board that UNITED is a weak formative, leading to a reversal of a Section 2(d) refusal of the mark shown below for money-transfer services. The Board found Applicant's mark not confusingly similar to the registered mark UNITED for the same services. In re Unidos Financial Services, Inc., Serial No. 77126814 (January 27, 2009) [not precedential].


In light of the identity of the involved services and the lack of any limitations in the registration and application, the Board assumed that the services are offered in all normal channels of trade to the usual classes of purchasers, namely the general public, who will exhibit "all levels of sophistication and care."

As to the marks, Applicant provided a translation of its mark as "UNITED WITHIN YOUR REACH." The Examining Attorney maintained that the doctrine of foreign equivalents applies because Spanish is the second most common language in the USA [What's the first? - ed.] and she contended that the ordinary American purchaser familiar with Spanish will stop and translate UNIDOS into UNITED.

The Board not surprisingly found that an appreciable number of U.S. consumers speak or understand both English and Spanish [I speak English but don't understand it; as to Spanish, nada - ed.], and that the doctrine of foreign equivalents is applicable.

I seems likely that, in connection with money-transfer services, this appreciable number of English/Spanish bi-lingual U.S. consumers will translate applicant's Spanish-language mark into English.There is nothing in this record that indicates the contrary.

Turning to the strength of the term UNIDOS/UNITED in connection with money-transfer services, Applicant submitted 25 third-party registrations for marks containing the word UNITED for services in the financial field. This evidence suggested "that UNITED is one of those ubiquitous terms, like ACME, used in many trademarks in the financial services field, and more specifically, in connection with money transfer and related services." [I never heard of ACME Bank - ed.]

The Board then found that the additional wording and the design elements in Applicant's mark "are both significant aspects of the overall commercial impression of the mark." In view of the weakness of the mark UNITED, it concluded that the marks at issue here are "more dissimilar than similar."

And so it reversed the refusal to register.

TTABlog comment: What if the Board were faced with just the word UNIDOS in the form and color displayed above? Would that stylized, single-word mark be confusingly similar to the registered UNITED mark, both for money-transfer services?

Funny you should ask. That was the very issue raised in the appeal of Applicant's co-pending application Serial No. 77042799, scheduled for oral argument on January 28, 2010 (yesterday). However, after the Board's decision came down in this case on January 27th, the Examining Attorney withdrew the refusal to register in the UNIDOS case. Hmmm. Seems like she had a shot at winning that one.

Text Copyright John L. Welch 2010.

Affirming 2(d) Refusal of "COMMANDER-IN- CHIEF," TTAB Finds Board Games and Playing Cards Related

In this Section 2(d) Board game, the TTAB found the mark COMMANDER-IN-CHIEF for "equipment sold as a unit for playing board games" likely to cause confusion with the nearly identical mark COMMANDER IN CHIEF for playing cards. Applicant's arguments that Registrant sells its goods to tourists in Washington, DC and other touristy areas and that Registrant may no longer be using its mark were simply irrelevant to the Board's determination. In re Paul D. Miller, Serial No. 77332676 (January 27, 2010) [not precedential].


Not surprisingly, the Board found the involved marks to be "substantially identical," a fact that weighed heavily against Applicant. Moreover, when marks are substantially identical, a lesser degree of closeness between the goods is necessary to support a finding of likely confusion.

Applicant's references to how Registrant uses its mark and whether it has abandoned its mark for playing cards were trumped by black letter law: the issue of likelihood of confusion must be determined in light of the goods as identified in the involved application and registration, not on the basis of what the extrinsic evidence shows.

Applicant argued that Examining Attorney Jennifer Vasquez had misinterpreted the term "playing cards" because, when the term stands alone, it means a "standard pack of fifty-two playing cards." But the Examining Attorney demonstrated that "traditional board games come with a variety of types of game cards, many of which are referred to as 'playing cards.'" And in some board games, a traditional fifty-two card deck is a critical component. Moreover, some manufacturers and merchants sell standard decks in close proximity to board games. The Board therefore concluded that the goods are related for Section 2(d) purposes.


Since there are no limitations as to channels of trade in the application or registration, the Board presumed that they travel in the normal channels for such goods. Finally, the goods are not particularly expensive, and so potential buyers will not be "especially thoughtful" in purchasing them.

Balancing the du Pont factors, the Board found confusion likely and it affirmed the refusal.

TTABlog comment: Since Registrant has purportedly stopped using the mark for playing cards, perhaps Applicant should have considered Section 18 of the Trademark Act, which permits partial cancellation or restriction of a registration. Sometimes a letter to the Registrant bringing up the subject of partial cancellation or restriction may yield a consent to register, and both parties can go on their merry way, thereby avoiding the TTAB poker game.

Text Copyright John L. Welch 2010.

Thinking About Fraud (cont.): Why Look to Patent Law for the Trademark Fraud Standard?

In its fraud analysis in In re Bose Corporation, 91 USPQ2d 1938 (Fed. Cir. 2009), the CAFC relied on various precedents involving inequitable conduct in the patent arena. As Joe Dreitler has pointed out (for example, here), trademark fraud and patent inequitable conduct are completely different beasts, and they should be treated differently. But the CAFC, relying on its patent rulings, has now completely knocked the props out from under the TTAB's fraud jurisprudence, and it may take some time to build it up again.


Generally speaking, a patent is a government grant of an exclusive right, for a limited time, to make, use, and sell a particular invention. If a patent is held unenforceable due to inequitable conduct, the patentee is left with nothing. Therefore the CAFC maintains a very high standard of proof for inequitable conduct:

The need to strictly enforce the burden of proof and elevated standard of proof in the inequitable conduct context is paramount because the penalty for inequitable conduct is so severe, the loss of the entire patent even where every claim clearly meets every requirement of patentability. Star Scientific, Inc. v R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1366 (Fed. Cir. 2008).

The patent doctrine of inequitable conduct requires clear and convincing proof of both the materiality of the misrepresentation and the intent to deceive the USPTO. "Information is material when a reasonable examiner would consider it important in deciding whether to allow the application to issue as a patent." Id. at 1367. Information concealed from the UPSTO may be material even if it does not invalidate the patent. Ibid.

Determining materiality in the patent context is not easy: Should some piece of information have been disclosed to the PTO? Is a certain prior art reference merely cumulative? What exactly does it disclose? Would it affect examination of the application? This determination is hardly a black-and-white decision, and there is much room for disagreement.

In short, the CAFC requires clear and convincing proof of inequitable conduct in patent cases because of the severity of the penalty and the uncertainty surrounding the materiality issue.

This contrasts sharply with the trademark side of the coin. In the typical trademark fraud case, there is no issue of materiality because a false statement regarding use is clearly material to the examination of the application or Section 8 Declaration: the application would not be approved for publication, or the declaration accepted, if the PTO knew the truth. Moreover, it is usually a simple question with a black or white answer: either the mark was in use for a particular good or service, or it wasn't.

Furthermore, as Mr. Dreitler points out, the consequence of a finding of trademark fraud is not nearly as severe as in the patent context. A trademark applicant or registrant found to have committed fraud will lose its application or registration (and the appurtenant priority thereof), but its common law rights will remain intact. Unlike the patentee, it hasn't lost everything.

Given the lesser severity of the punishment for trademark fraud and the relatively simple and straightforward determination of materiality, why should such a high standard of proof for fraud be imported from the patent context? Yet that's what the CAFC did in Bose, relying on Star Scientific at the core of its ruling.

In my blog posting on Monday (here), I discussed the possibility that "reckless disregard for the truth" might satisfy the intent requirement for fraud in the trademark context. The TTAB recently suggested the same in DaimlerChrysler Corporation and Chrysler, LLC v. American Motors Corporation, Cancellation No. 92045099 (January 14, 2010). The CAFC in Bose specifically declined to rule on that question (footnote 2), but it also gave an indication that reckless disregard might not be enough:

We [have] even held that “a finding that particular conduct amounts to ‘gross negligence’ does not of itself justify an inference of intent to deceive.” Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867, 867 (Fed. Cir. 1988) (en banc). The principle that the standard for finding intent to deceive is stricter than the standard for negligence or gross negligence, even though announced in patent inequitable conduct cases, applies with equal force to trademark fraud cases. After all, an allegation of fraud in a trademark case, as in any other case, should not be taken lightly. San Juan Prods., 849 F.2d at 474 (quoting Anheuser-Busch, Inc. v. Bavarian Brewing Co., 264 F.2d 88, 92 (6th Cir. 1959)). Thus, we hold that a trademark is obtained fraudulently under the Lanham Act only if the applicant or registrant knowingly makes a false, material representation with the intent to deceive the PTO.

There is no dispute that an allegation of trademark fraud "should not be taken lightly." But does that preclude a lesser standard of proof for fraud in trademark cases, where the consequences are less severe than in a patent case and where the materiality is unquestionable? The verification of an application or a declaration of use is not to be taken lightly either.

In its criticism of Medinol Ltd. v. Neuro Vasx, Inc., 67 USPQ2d 1205 (TTAB 2003), the CAFC stated that the TTAB had "lowered the fraud standard to a simple negligence standard." Has the CAFC left the door open for "reckless disregard" as a basis for trademark fraud? Is the TTAB ready to take a step through that door? We shall see.

TTABlog afterthought: Can you think of a reason why the patent operation and the trademark operation are in the same agency, other than due to historical accident? I've been a registered patent attorney since 1975, and have practiced patent law and trademark law throughout my career, and I can't think of one. If patents and trademarks were each handled by separate agencies, would the CAFC so readily apply patent fraud principles to a trademark case? I doubt it.

Text Copyright John L. Welch 2010.

TTAB Finds "CATELLI" for Pasta Sauce Confusingly Similar to "LOCATELLI" for Cheese

In a "somewhat close" but nonetheless dull case, the Board gave the benefit of the doubt to the Registrant in sustaining a Section 2(d) opposition to registration of the mark CATELLI for "pasta sauces," finding it likely to cause confusion with the registered mark LOCATELLI for "cheese." Gennaro Auricchio S.p.A. v. Trademark Management Company, Opposition No. 91161200 (January 22, 2010) [not precedential].


As to the marks, the Board found them "more similar than dissimilar." Although there are readily discernible differences between the marks [Can you identify them? - ed.], "to the extent they may well be seen as Italian surnames, [they] will leave prospective consumers with similar connotations."

Of course, the goods need not be identical or even competitive in order to support a finding of likely confusion. Opposer introduced a number of third-party registrations that cover both cheese and pasta sauce, and it pointed to various websites where cheese and pasta sauces appear -- and even pasta sauce containing cheese!

Opposer also showed that "cups of its hard, grated cheese are often sold in supermarkets on stand-alone displays , or 'shippers,' placed in the produce section, in store aisles with dry pasta and pasta sauces, and/or in the deli area."

And so the Board found the goods to be related for Section 2(d) purposes.

Because neither the registration nor the opposed application includes any limitation as to channels of trade, it must be assumed that the goods travel in the normal channels therefor, which channels would clearly overlap. Similarly, Registrant's "cheese" must be assumed to include inexpensive goods purchased "without much care." [I.e., I don't care what type of cheese you got, just give me some cheese, will you?]

Opposer then hit Applicant with the strength of its mark. The long and successful history (since 1984) of US sales of LOCATELLI brand cheese (three million pounds (by weight) in 2007), convinced the Board that LOCATELLI has achieved "a notable degree of renown in the field, and this factor weighs in opposer's favor."


Applicant pointed to the fact that Opposer had agreed to limit its use of the LOCATELLI mark to pecorino cheese and had granted Nestle a license to use the mark for other cheeses. However, Nestle "no longer maintains any rights in this mark," and so the Board found this situation distinguishable from those in which "multiple third parties using similar marks may have the impact of weakening or boxing-in a potential plaintiff." In short, Opposer has "a fairly significant right to exclude third-parties from the use and registration of the LOCATELLI mark for cheese and related food items."

And so the Board sustained the opposition.

TTABlog comment: It's a close call, but I think I agree with the Board.

Text copyright John L. Welch 2010.