New TTABlog Trademark Jobs Posting: Former PTO Examining Attorney Seeks DC-Area Trademark Position

Former PTO Examining Attorney (6+ years) and current law firm associate seeks law firm or corporate position in the Washington, DC area. Highly experienced in trademark clearance, registration, and enforcement, as well as in TTAB contested matters. Also experienced in drafting of UDRP and federal litigation pleadings and negotiations. In short, involved in all areas of trademark protection both in the US and internationally, representing clients across a broad spectrum of business activity. Send inquiries to John L. Welch to arrange for an introduction.

TTAB Rejects Another Insufficiently Pleaded Fraud Claim

Applying its post-Bose analysis to a pre-Bose fraud allegation, the Board denied Opposer Gallo's motion to amend its opposition, finding Gallo's proposed fraud claim to be deficiently pleaded under FRCP 9(b). E.&J. Gallo Winery v. Quala S.A., Opposition No. 91186763 (November 7, 2009) [not precedential].


Gallo's fraud claim was based on Applicant Quala's failure to produce any documentation showing that it had a bona fide intent to use its mark FRUTIÑO for various beverages. The proposed amended pleading would have added the following paragraph:

7. Applicant filed the application under Section 44(e) of the Lanham Act. The application contained a sworn Declaration that all statements made therein were true. Among the statements made in the application was the statement that Applicant had a bona fide intent to use the mark on each of the goods recited in the application. This statement was false and material to the application. This constitutes fraud and, accordingly, the application was void ab initio.

The Board pointed out that a fraud claim, "and in particular those made upon 'information and belief,' must be accompanied by a specific statement of facts upon which the belief is based."

The circumstances referred to in Federal Rule 9 "'must be pleaded in detail' - '[t]his means the who, what, when, where, and how' of the alleged fraud." *** That is, the time, place and contents of the false representations, the facts misrepresented, and identification of what has been obtained, shall be stated with specificity. *** Notwithstanding the requirement for specificity in the pleading of the circumstances resulting in the alleged fraud, "[m]alice, intent, knowledge, and other condition of mind of a person may be averred generally."

Here, the Board found, Gallo did not set forth "with sufficient particularity the underlying facts upon which opposer relies or provides the basis for its belief that the allegation of fraud is well-founded. In addition, the proposed fraud claim does not include an allegation of intent to deceive, i.e., that applicant knowingly made inaccurate or misleading statements."

Therefore the Board concluded that Gallo's allegation of fraud was deficient and it motion for leave to amend "futile."

In a footnote, the Board suggested that if Gallo is considering an amended motion for leave to add its fraud claim, it should note that proof of a lack of bona fide intent on the part of Applicant may render the re-pleading of the fraud claim unnecessary. Indeed. if Gallo could not prove its fraud claim without first proving a lack of bona fide intent, the fraud claim would be "superfluous" and the Board could see "no point in opposer pursuing this claim at trial." It would be "a waste of the parties' resources and those of the Board."

TTABlog comment: Applicant is a Colombian company, so the chance of obtaining deposition testimony regarding the "who, what, when, where, and how" of the alleged fraud are not good. Moreover, just how much is needed in the way of facts to satisfy FRCP 9(b)?

In short, it seems that pursuit of the fraud claim is not likely to bear FRUTIÑO.

Text Copyright John L. Welch 2009.

"VINTAGE PINK" Not Merely Descriptive of Jewelry and Clothing, Says TTAB

In a determination "not free from doubt," the Board reversed a Section 2(e)(1) refusal to register VINTAGE PINK, finding it not merely descriptive of various jewelry and clothing items. Although Applicant admitted that some of her goods will be pink in color and will follow a “retro style,” she contended that neither the color pink nor the “retro style” is a significant attribute of her goods. In re Ashley O’Rourke, Serial No. 77093617 (December 2, 2009) [not precedential].


As to the descriptiveness of the word "pink," the board observed that "from a trademark perspective the use of a color word in a mark for clothing or jewelry is unlikely to be perceived as descriptive of a significant aspect of those goods." Moreover, Applicant and the Examining Attorney agree that “pink” is suggestive of femininity. And so, the Board concluded, the word “pink” in this mark "is more likely to suggest femininity, particularly in connection with non-pink clothing and jewelry."

As to the word "vintage," much of the evidence showed (not surprisingly) that it refers to something old or of classic style. Both Applicant and the Examining Attorney submitted third-party registrations that either do or do not include a disclaimer of the word “vintage.” in the mark. Not surprisingly, the Board could draw no conclusion from this evidence "other than that USPTO disclaimer practice is inconsistent and/or that whether or not a disclaimer is required is specific to the facts of each case."

Surprisingly, the Board concluded that this evidence "falls short of establishing that “vintage” is merely descriptive of a significant aspect of clothing or jewelry."

The Examining Attorney pointed to six Internet excerpts using the term "vintage pink" to identify a color, but the Board found that the examining attorney "has not met her burden of establishing that a significant number of the relevant public would readily view “vintage pink” as a specific color or ... for the same reasons discussed above in connection with the individual words comprising the mark, the relevant public would view this color as merely descriptive of a significant aspect of the identified goods."

Furthermore, the Board agreed with Applicant that "the juxtaposition of the two words, which may have slightly contradictory connotations, adds something more to the mark than just the meanings of the individual words."

Although readily admitting that its decision is not free from doubt, the Board pointed out that any doubt as to mere descriptiveness must be resolved in favor of Applicant.

TTABlog comment: I think "vintage" is merely descriptive here, and should be disclaimed.

Text Copyright John L. Welch 2009.

7th Circuit Sanctions Leo Stoller for Deceptive In Forma Pauperis Petition

On December 4, 2009, the U.S. Court of Appeals for the 7th Circuit issued an order (here) sanctioning Leo Stoller for deceptive statements made in an application for in forma pauperis status in an appeal from a bankruptcy court ruling. The appellate court reinstated a "Mack order" directing the clerks of all federal courts in the 7th Circuit to return as unfiled any papers submitted by or on behalf of Stoller. No sooner than two years from the date of the order, Stoller may apply for modification or rescission of the order.

Leo Stoller
The court of appeals also ordered that the matter be referred to the United States Attorney for the Northern District of Illinois to consider "whether a perjury prosecution is warranted."

Text Copyright John L. Welch 2009.

NY Mets Defend "YOU GOTTA BELIEVE!" Slogan Against Cold Cuts and Tug McGraw Foundation

The TTABlog, in an effort to give equal time to New York's other baseball team, reports that the New York Mets have filed an opposition to registration of the mark YOU GOTTA BELIEVE! for "processed meats, luncheon meats, and cold cuts." The Mets allege that Applicant Hansel and Grettel's goods are related to "the goods offered and services rendered" in connection with its YA GOTTA BELIEVE! marks, and that false association, confusion, and dilution (by blurring) are likely to occur. Sterling Mets, L.P. v. Hansel 'N Gretel Brand, Inc., Opposition No. 91192483.


According to the Mets, in addition to the mark YA GOTTA BELIEVE!, they own a "family of BELIEVE-formative marks, such as ALWAYS BELIEVE and A NIGHT TO BELIEVE," and have used these marks in connection with a variety of goods and services, including "the types of food and beverage products sold at baseball stadiums, such as processed meats." [How do you spell b-a-l-o-n-e-y? - ed.] [Will this fairy tale have a bad ending for H&G? - ed.]

The Mets are also opposing an application to register the mark YA GOTTA BELIEVE filed by The Tug McGraw Foundation for charitable services. The late Tug McGraw, as we all know, is a former relief pitcher for the Mets (and Phillies). Sterling Mets, L.P. v. The Tug McGraw Foundation, Opposition No. 91184164.


The Mets here allege likelihood of confusion and false association (but not dilution), claiming that they have used their YA GOTTA BELIEVE! marks in connection with "an award given out at charitable events."

TTABlog note: Tug McGraw's autobiography, depicted above, was called "Ya Gotta Believe! Reportedly, he coined the phrase during the Mets 1973 season. Will that help the Foundation here?

Text Copyright John L. Welch 2009.

Precedential No. 47: TARR Printouts of Pleaded Registrations Acceptable at Trial

Trademark Rule 2.122(d)(1) permits the introduction of a pleaded registration into evidence if the original opposition or petition for cancellation is accompanied by TARR printouts showing the status and title of the registrations. But what about introduction at the trial stage? Rule 2.122(d)(2), seems to preclude the use of mere TARR printouts. Not so, says the Board. TARR printouts are acceptable at trial. Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 (December 2, 2009) [precedential].


Applicant NBOR sought to register the mark BLACK MAIL for "computer software for facilitating interactive communication, namely, chat, electronic mail, voice, instant messages, text transfer, multi-media transfer, live collaboration, motion pictures, and sound over a global computer information network and other networks." RIM opposed on the ground of likelihood of confusion with its registered BLACKBERRY marks for a variety of goods and services in the wireless telecommunications field. RIM also contended that NBOR lacked a bona fide intent to use its mark in commerce when the opposed application was filed.

NBOR raised several evidentiary objections, the most interesting being its attack on RIM's registration evidence. RIM submitted its registrations in the form of TARR printouts as part of its notice of reliance, and NBOR argued that this violated the Trademark Rules. The Board, however, concluded that the 2007 amendment of Rule 2.121(d)(1) to allow TARR printouts with the original pleading "can only be taken as an indication that the Office meant to liberalize the means for providing a pleaded registration." Therefore, the Board decided that this same liberalization should apply at the trial stage, despite the wording of Rule 2.122(d)(2). [Note that this liberalization applied only to proceedings commenced on or after August 31, 2007.]

Turning to the issue of bona fide intent, RIM "met its burden ... by showing that applicant has no documentary evidence regarding such intent." See Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1507 (TTAB 1993). Moreover, in its discovery responses NBOR indicated that its mark has not been used; that there are no plans as to how the mark may be used; that there is no projected date of first use, no consideration of channels of trade, no determination as to classes of customers or geographic areas of sales, no market studies, and no plan for growth or expansion.

So as to be clear, the record is completely devoid of any evidence such as product design efforts, manufacturing efforts, graphic design efforts, test marketing, correspondence with prospective licenses, preparation of marketing plans or business plans, creation of labels, marketing or promotional materials, and the like.

NBOR's mere statement that it intends to use the mark, and its denial of a lack of bona fide intent, is outweighed by the lack of objective evidence and clearly cannot suffice to resolve the issue.

Finally, the Board noted that NBOR had twice previously filed applications to use the mark BLACK MAIL, and in each case the application went abandoned for failure to file a statement of use. The legislative history of the Trademark Law Revision Act discusses bona fide intent, and gives examples of circumstances that "may cast some doubt on the bona fide nature of the intent or even disprove it entirely." One example is the filing of numerous intent-to-use applications to replace applications that have lapsed because no timely statement of use was filed. The Board found that NBOR's filing of successive applications also too supports the conclusion that NBOR lacked the requisite bona fide intent.

And so the Board sustained the opposition on this ground, declining to reach the issue of likelihood of confusion.

TTABlog note: Even had the registrations not been accepted into evidence, it appears that RIM provided evidence of use of the marks that would have given it standing to proceed with the opposition.

Text Copyright John L. Welch 2009.

NY Yankees Oppose "THE HOUSE THAT JUICE BUILT"; Applicants Assert Parody Defense

Here we go again with another case for our Hot Stove League collection. The New York Yankees have opposed two applications for the mark THE HOUSE THAT JUICE BUILT for "T-shirts, baseball caps, hats, jackets, and sweatshirts," and for "mugs," as well as a third application for the design mark shown below left for those same clothing items. The Yankees claim likelihood of confusion and dilution, disparagement, immorality, and false association (although they do not specifically cite any of the sections of the Trademark Act). New York Yankee Partnership v. Steven Lore and Jet Products and Services, Inc., Opposition No. 91189692.


Of course, baseball fans know that Yankee Stadium is often referred to as "The House That Ruth Built," and they are quite familiar with the Yankees' "top hat" logo (shown above right). The Yankees are not amused by these three applications:

"17. The term "juice" is often used as a vulgar, slang euphemism to refer to the consumption of alcohol or illegal anabolic steroids, including by injection into the body using a hypodermic needle.

18. Upon information and belief, Applicants’ Marks, which, together, incorporate the word “juice” or the image of a hypodermic needle in conjunction with well-known components of Opposer’s Marks, and which closely resemble the well-known Opposer’s Marks, are intended, and will be understood to be, an offensive reference to the consumption of alcohol or illegal anabolic steroids, and to refer to or suggest an affiliation or association with Opposer and the Club."

Applicants have filed a motion to dismiss, asserting that the Yankees have "failed to state a claim under the Lanham Act." According to Applicants, the opposed marks are non-offending parodies whose primary purpose is "to create public awareness about drug use and, in a sense, to shame Opposer and its organization for allegedly using anabolic steroids and tolerating the use of anabolic steroids."

Babe Ruth, 1921
The Yankees argue that the notice of opposition states proper claims for relief under the Lanham Act, and that parody is not a per se defense but rather one that must be resolved as part of the likelihood of confusion analysis. Moreover, the Yankees assert, First Amendment arguments are irrelevant in a TTAB proceeding, where registration and not use is at issue.

How do you think this will come out? I'm on pin(stripes) and needles!

TTABlog note: For recent TTAB parody cases, see HARRY POTHEAD (here), IVY LEAGRO (here), LESSBUCKS COFFEE (here), and SEX ROD (here), in all of which a parody defense failed.

Text Copyright John L. Welch 2009.

TTAB Posts December 2009 Hearing Schedule

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


December 3, 2009 - 10 AM: In re Capital Blue Cross, Serial No. 78869843 [Section 2(d) refusal to register AVALON for "Issuing group and individual health insurance policies and offering as a licensed insurer such health insurance policies and the administration thereof excluding acting as a broker or insurance agent" in view of the registered marks A AVALON Consulting Insurance/Reinsurance Claims Management, AVALON CONSULTING, and AVALON RISK MANAGEMENT for various insurance-related services].

December 8, 2009 - 2 PM: Bridgestone Firestone North America Tire, LLC v. Federal Corporation, Opposition No. 91168556 [Section 2(d) opposition to MILANZA for tires in view of the registered marks POTENZAand TURANZA, and the mark ALENZA, for tires].


December 9, 2009 - 10 AM: Eddy Packing Co. Inc. v. H.E. Butt Grocery Company, Cancellation No. 92041545 [Petition for cancellation of a Supplemental Registration for the mark FULLY COOKED for prepared entrees consisting primarily of meat, on the grounds of genericness and fraud].


December 10, 2009 - 11 AM: In re Unidos Financial Services, Inc., Serial No. 77042799 [Section 2(d) refusal to register UNIDOS (Stylized) for financial services, namely, money transfer services, in light of the registered mark UNITED for "financial services, namely, checking cashing, money transfer and money order services"].


December 10, 2009 - 2 PM: LT2, LLC and Kenneth Cole Productions (LIC) Inc. v. Andrew Craig, Opposition No. 91161781 [Opposition to the mark LE TIGRE for "writing instruments namely fountain pens, ball point pens, felt and fiber tip pens and markers, all the foregoing goods not relating to baseball or softball or a baseball or softball team" and for "small leather goods, namely, cases for diaries and daily planners; and brief case type portfolios, all the foregoing goods not relating to baseball or softball or a baseball or softball team" on the grounds of likelihood of confusion with, and likely dilution of, the registered mark LE TIGRE for clothing].


December 16, 2009 - 2 PM: National Pork Board and National Pork Producers Council v. Supreme Lobster and Seafood Company, Opposition No. 91166701 [Opposition to registration of THE OTHER RED MEAT for fresh and frozen salmon on the grounds of likelihood of confusion with, and likelihood of dilution of, the registered mark THE OTHER WHITE MEAT for “association services, namely, promoting the interests of members of the pork industry”].


December 22, 2009 - 2 PM: In re OnForce, Inc., Serial No. 77048972 [Section 2(d) refusal to register ON and Design (left below) for "providing online electronic bulletin boards for the posting and transmission of messages among and between computer users concerning products, services and business opportunities" in view of the registered mark ON and Design (right below) for “telecommunication services, namely, electronic transmission of voice messages and data.”].


Text Copyright John L. Welch 2009.

WYHA? TTAB Affirms 2(d) Refusal of "AUGUSTINER" for Beer in View of Identical Mark for Same Goods

Let's suppose that you are trying to register the mark AUGUSTINER in the font shown below for "beer, namely, strong beer, low-alcohol beer, beer wort and colorant beer, non-alcoholic beers, non-alcoholic beverages, namely, non-alcoholic beers, malt wort," and the PTO refuses registration under Section 2(d) in view of the registered mark AUGUSTINER for beer. Yes, that's right: essentially the same mark for essentially the same goods. Would you have appealed? In re Augustiner-Brau Wagner KG, Serial No. 79045906 (November 19, 2009) [not precedential].


Anyway, suppose the decision is made to appeal, and you have to give it your best shot. What arguments can you brew up that won't fall flat at the TTAB bar?

Applicant feebly contended that its mark AUGUSTINER "does not resemble the mark" AUGUSTINER in the cited registration, but "not surprisingly" Applicant offered no explanation. "Indeed this would be a difficult task as the marks are essentially identical other than the almost indistinguishable block style font in applicant's mark." Moreover, because the cited mark is in "typed form," the Board must consider "all reasonable displays for purpose of comparison, including applicant's block style lettering." In short, the Board found the marks to be "essentially identical."

Applicant argued that AUGUSTINER is a weak mark based upon a "search of the USPTO database," but Applicant did not provide the search results, failed to bring up the issue in timely fashion, had no proof regarding the use of the third-party marks, and searched the word "AUGUST" rather than "AUGUSTINER."

Next, Applicant pointed to a prior registration for the mark shown below, but there were two major problems with this argument: the prior mark is very different mark, and the Board in any case is not bound by registrability decisions made in other applications.


Applicant relied "heavily" on the argument that the two marks at issue have coexisted for ten years without any actual confusion. However, likelihood of confusion is the test, not actual confusion. The asserted lack of actual confusion "carries little weight," and in an ex parte contest it must be remembered that the registrant "has no opportunity to defend its registration." Nor was there any evidence that the products overlapped in the marketplace.

Finally, Applicant asserted that "its goods are from the oldest and arguably the most prestigious brewery in Munich, Germany [and applicant] has marketed these goods in the U.S. since the 1930s.... Purchasers of specialty German beer are likely very knowledgeable about this niche area of beer tasting, and will be able to distinguish one brand from another."

The Board, however, must consider all potential purchasers, no just those "well-versed in beer varieties." The Board pointed out that it "must make our determination based on the least sophisticated potential consumer." Moreover, even sophisticated consumers may be confused between similar trademarks for similar goods.

Noting that Applicant's identification of goods is not limited to premium beer, and that beer is subject to impulse purchasing, the Board affirmed the refusal to register.

TTABlog comment: After a few beers, the relevant consumers are likely to be even less sophisticated, don't you think?

Text Copyright John L. Welch 2009.

Joe Dreitler Expounds On "The Dangers Posed by Bose," But CAFC Chief Judge Michel Sees No Problem

The editors of World Trademark Review have kindly allowed me to provide TTABlog readers with Joe Dreitler's latest article: "The Dangers Posed by Bose," December-January 2010 World Trademark Review 13- 17 (Issue 23). (Subscribe to WTR here). CAFC Chief Judge Paul Michel, author of the court's Bose opinion, responds to the criticism and explains "why the court came to the decision it did." [Also included is a side-bar entitled "Fraud in the post-Bose era" by someone named John L. Welch].


Mr. Dreitler (whose article entitled "Why The TTAB Got It Right In Medinol" was published at the TTABlog on August 7, 2009) maintains that the CAFC, in overturning Medinol,

"equated fraud in trademark oppositions with fraud in patent infringement lawsuits. In so doing, the court rode roughshod over the principles of use of a mark implemented by the Trademark Law Revision Act of 1988 and sanctioned the development of a US Trademark Register filled with deadwood and falsely obtained registrations."

Joseph Dreitler; Chief Judge Paul Michel
Judge Michel asserts that "[t]he concern that this decision allows people to be careless during the application process is easy to exaggerate and is being exaggerated." According to the Judge,

"First, the application must be supported by a sworn affidavit. When a lawyer takes an affidavit under oath he or she is putting his or her reputation on the line. If the lawyer knowingly provides false information in an affidavit he or she is liable to criminal prosecution for perjury. Second, the USPTO can disbar any attorney and refuse to allow that attorney to appear before it ever again. Third, lawyers who specialize in trademark work are repeat advocates before the USPTO so the worst thing a lawyer can do is lie or exaggerate as he or she will quickly gain a reputation for being someone that cannot be trusted." [TTABlog comment: I believe that most trademark applications are verified not by the lawyer, but by the applicant]

Judge Michel also asserts that "the key cases on which the court relies are trademark cases, not patent cases. The decision is firmly grounded in trademark law."

As previously noted (here), the USPTO is pondering what to do in view of Bose. The first question I have is: just how big a problem is this?

Text Copyright John L. Welch 2009.

Boston Red Sox Oppose Stylized "SA" Mark for Clothing

Yesterday's post featured the New York Yankees, so let's give the Boston Red Sox equal time, shall we? The Red Sox have opposed registration of the mark shown below, for clothing, claiming likelihood of confusion, false association, and failure to use the mark on all the goods. Now what marks do you think the Red Sox rely on? Boston Red Sox Baseball Club Limited Partnership v. Visual Impact Products, LLC, Opposition No. 91189914.


According to the notice of opposition, the Red Sox "have used marks that consist of or incorporate the letters S and/or B and the words RED SOX and/or BOSTON, alone or with other word and/or design elements, in a particular, distinctive, stylization associated with the Club":



In short, the Red Sox contend that the letters in the stylized SA mark look too much like the letters S and B in the RED SOX marks! Seems like BS to me. What do you think?

Text Copyright John L. Welch 2009.