Tuesday, July 29, 2014

Precedential No. 34: TTAB Grants Motion to Strike Belated Supplemental Expert Report

In another decision involving the suddenly hot topic of expert witnesses and their reports, the Board granted an opposer's motion to strike a "supplemental expert report" submitted with applicant's notice of reliance. The Board observed that this testimony declaration is not eligible for submission via notice of reliance, and further that the report did not fall within the agreement between the parties allowing submission of expert declarations. Nor was the supplemental report merely an attempt to correct the expert's initial report. The supplemental report was therefore not timely submitted, nor was the failure to submit the report in timely fashion "substantially justified or ... harmless." Gemological Institute of America, Inc. v. Gemology Headquarters International, LLC, Opposition No. 91194658 (July 22, 2014) [precedential].

Applicant GHI submitted with its notice of reliance, the "Supplemental Expert Report of Carole Chaski, Ph.D.," in order to rebut statements made during the testimony of opposer's expert. Testimony by declaration is not proper subject matter for introduction via notice of reliance. However, Rule 2.123(b) says that if the parties agree in writing, the testimony of a witness may be submitted in declaration form.

Stipulation: Here, the parties stipulated to the admissibility of certain expert reports of three experts, including Dr. Chaski, but they did not stipulate to the admissibility of the Chaski supplemental report (which was not in existence at the time of the stipulations).

The Board ruled that the stipulations of the parties, which referred to specific dated reports, did not encompass the Chaski supplemental report. There was no mention of supplemental reports in the stipulations.

FRCP 26(e)(1)(A): A party may supplement or correct its Rule 26 expert report "if the party learns that is some material respect the disclosure or response is incomplete or incorrect ...." Any changes to the information must be disclosed by the time the party's pretrial disclosures are due. FRCP 26(e)(2).

Supplementation means correcting inaccuracies or filling in an incomplete report based on information that was unavailable at the time of the initial disclosure. A supplemental report that seeks to clarify or provide new examples to bolster an expert opinion is not proper supplementation. Here, the Chaski supplemental report contained additional opinions intended to rebut the other side's expert testimony. Therefore it did not qualify as a supplemental expert report under Rules 26(e)(1)(A) and 26(e)(2).

FRCP 37(c)(1): An improper supplemental report may be excluded unless the failure to timely file the expert's opinion was "substantially justified or ... harmless." In making that determination, the Board is guided by the five-factor test adopted in Great Seats:

1) the surprise to the party against whom the evidence would be offered;
2) the ability of that party to cure the surprise;
3) the extent to which allowing the testimony would disrupt the trial;
4) importance of the evidence; and
5) the nondisclosing party's [or the late disclosing party’s] explanation for its failure to disclose the evidence.

Here the late disclosure did cause unfair surprise, the cure for which would be re-opening discovery to allow opposer to take an additional deposition of Dr. Chaski. That cure, however,, would be disruptive to the trial because discovery closed "long ago" and the main trial periods had been completed. While the Chaski supplemental report may be important, the parties had already stipulated to the admissibility of her original report and her original declaration testimony. Finally, applicant did not offer an adequate excuse for the delay in providing the supplemental report. The Board therefore concluded that the untimely disclosure of the supplemental report was neither substantially justified nor harmless.

And so the Board granted the motion to strike.

Read comments and post your comment here.

TTABlog note:  How often do you think this issue will come up in future cases?

Text Copyright John L. Welch 2014.

Monday, July 28, 2014

Precedential No. 33: Party Withdraws Designation of Testifying Expert Who Provided Report: No Deposition Allowed, Says TTAB

In this Section 2(d) opposition to registration of GAGA JEANS for jeans, when opposer noticed the discovery deposition of applicant's named rebuttal expert, applicant filed a motion for a protective order precluding the deposition on the ground that the expert was not a testifying expert witness. Applicant had, however, named that expert as a testifying expert and had provided an expert report to opposer, but it subsequently stated that the expert would not be testifying and that she was employed only to aid applicant in preparation for trial. The Board granted the motion and issued a protective order precluding the deposition. Ate My Heart, Inc. v. GA GA Jeans Limited, Opposition No. 91205110 (July 22, 2014) [precedential].

Opposer's Lady Gaga

Opposer maintained that it was entitled to take the expert's deposition under FRCP 26(a)(2) as a trial expert in order to "cross-examine [her] on both her rebuttal expert report and the raw data that appears to be and affirmative expert report ...." The question for the Board was "whether a witness who was identified as a testifying expert and who produced an expert report, can be redesignated as a non-testifying or consulting expert and thereby shielded from discovery." The Board said yes.

FRCP 26(b)(4)(A) provides that a party may depose an expert whose opinions may be presented at trial. FRCP 26(a)(2)(B) requires a report from such an expert. These rules are designed to allow the opposing party an opportunity to adequately prepare for cross-examination of the expert.

FRCP 26(b)(4)(D) states that a party may not discover the facts know by, or opinions of, an expert retained in anticipation of litigation or to prepare for trial and who is not expected to be called as a trial witness. This rule is designed "to promote fairness by preventing access to another party's diligent trial preparation." And there is obviously no need for the opposing party to prepare for the cross-examination of a non-testifying expert.

The Board observed that applicant has the prerogative of not calling this expert for her testimony. The Board found that applicant had, by its letter to opposer and its submission to that Board, redesignated this individual as a non-testifying expert.

The courts are split on whether discovery may be allowed for such a redesignated expert after the expert's opinion has been disclosed. One line of cases prevents discovery except in "exceptional circumstances" under Rule 26(b)(4)(D)(ii). The other holds that the submission of the expert "takes the expert out of the exceptional circumstances category of Rule 26(b)(4)(D)(ii) as the expert's opinions are now known." These courts apply a balancing test  that mirrors F. R. Evid. 403 (whether the probative value of the evidence is substantially outweighs the danger of unfair prejudice) in considering whether to allow the deposition of a redesignated expert.

The Board adopted the first approach: only under exceptional circumstances may a party depose a redesignated non-testifying expert. It noted that the need for cross-examination of the expert to avoid surprise at trial "is simply not implicated when a redesignated expert will not testify."

Here, opposer made no showing of exceptional circumstances under Rule 26(b)(4)(D)(ii), and so the Board granted the motion for a protective order, precluding opposer from deposing the re-designated expert.

Read comments and post your comment here.

TTABlog note:  How often do you think this issue will come up in a TTAB proceeding? For a case involving the question of whether a witness qualifies as an "expert retained or specially employed to provide expert testimony," and who therefore must provide an expert report, see the RTX Scientific case, TTABlogged here.

Text Copyright John L. Welch 2014.

Friday, July 25, 2014

Test Your TTAB Judge-Ability: Is VENEZIA-MILANO Geographically Deceptively Misdescriptive of Clothing?

The PTO refused to register the mark VENEZIA-MILANO for clothing on the ground that the mark is primarily geographically deceptively misdescriptive under Section 2(e)(3). Applicant's goods are made in China and are so labelled. How do you think this came out? In re Tigerland-Foxland Ltd., Serial No. 85130889 (July 23, 2014) [not precedential].

According to applicant's translation statement, VENEZIA-MILANO means "Venice-Milan." Applicant feebly contended that the primary significance of its mark is not a generally known geographic location because there is no actual place called "Venice-Milan" and purchasers will not dissect the mark. The Board agreed that it should consider the mark as a whole, but it found that MILANO is the dominant feature of the mark because of its stronger connection with the involved goods and the fashion industry. Adding the word VENEZIA merely reinforces the perception that the goods emanate from a city in Italy.

Although there is no actual place known as "Venice-Milan," that fact does not detract from the primary significance of the mark: the mark names a geographic location that is "not obscure, minor, remote, or not likely to be connected with the goods." Taken together, Milan and Venice suggest that the goods originate in Italy, specifically Milan and/or Venice.

Applicant conceded that its goods are not made in Milan or Venice. Of course, there is a goods/place association between the mark and the goods because, as readily established by Examining Attorney Susan C. Hayash, Milan is known as a center for fashion and Venice is one of Italy's major ports and a famous tourist attraction. So consumers will mistakenly believe that the goods come from either Milan or Venice.

Finally, this mistaken belief is a material factor in the purchasing decision because Milan is famous for women's clothing and a substantial portion of consumers who care about fashion will be motivated to purchase applicant's goods in the belief that they come from Milan. The addition of Venice to the mark does not detract from its overall impression: "the reference to Milan is unmistakable."

Applicant maintained that consumers would not be deceived because "its mark, as used on the goods, includes a label that reads 'China.'" The Board pointed out, however that the additional matter on the label is not part of the applied-for mark. In short, the mark stands on its own. It also observed that the specimen label submitted by applicant included the phrase "designation Italy."

Finally, the Board noted applicant's claim of acquired distinctiveness as of July 2006. However, because the applied-for mark is ineligible for registration under Section 2(e)(3), Section 2(f) is not available to applicant. Section 2(f) states that a mark found to be primarily geographically deceptively misdescriptive may be registered only if it "became distinctive of the applicant's goods in commerce before the date of the enactment of the North American Free Trade Agreement Implementation Act" (i.e., prior to December 8, 1993).

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog note:  So how did you do?

Text Copyright John L. Welch 2014.

Thursday, July 24, 2014

Fame of "Mc" Family of Marks Propels McDonald's to 2(d) Victory Over "BioMcDiesel" for Fuel

The fame of its "Mc" family of marks propelled McDonald's Corporation to a Section 2(d) victory in its opposition to registration of the mark BioMcDiesel, in standard character form, for "biodiesel fuel." The Board declined to reach McDonald's dilution and lack-of-bona-fide-intent claims. McDonald’s Corporation v. Joel D. Joseph, Opposition No. 91194117 (July 14, 2014) [not precedential].

Applicant Joseph, appearing pro se, conceded that McDonald's owns a "Mc" family of marks for food products and restaurant services, that McDonald's and has used the "Mc" formative in connection with a variety of non-food related services, and that consumers associate terms including "Mc" with McDonald's. The testimony and evidence also demonstrated the existence of a "Mc" family of marks.

Applicant also admitted that the "Mc" family of marks is famous and was famous long prior to his application filing date. The record evidence corroborated the fame of the "Mc" formative. McDonald's operates 14,500 restaurants in the United States and served 28 million customers per day. Media usage and public recognition of the "Mc" formative compelled a finding of fame.

Applicant's good, biodiesel fuel, may be made from used fryer grease, known as yellow grease. McDonald's is one of the largest sellers of yellow grease, and it promotes its sustainability programs, including its recycling efforts, on its website. The media has recognized McDonald's for its recycling program, including use of yellow grease as biofuel.

McDonald's submitted five third-party registrations for marks covering both restaurant services and gasoline or fuel (e.g., CHEVRON, BP, COSTCO), as well as evidence that it has been sharing locations with gas stations since 1993 (some of which sell biofuel).

Although we cannot conclude from this evidence that biodiesel fuel and restaurant services in general are related, it is sufficient to show that there is a relationship between gas stations and food service/restaurants, and particularly between Opposer’s restaurants, the food it ems served in those restaurants, and its yellow grease, and fuel, such that relevant consumers, when confronted with the use of Applicant’s BioMcDiesel mark for biodiesel fuel, would be likely to believe that there is an association as to source between that biodiesel fuel and Opposer’s restaurant services and related food products.

Applicant Joseph stated his intention to sell biofuel nationwide at retail gas stations. Thus ordinary consumers may be customers for both applicant's product and McDonald's restaurant services.

As to the marks, the Board noted that "Mc" is not the first syllable in the applied-for mark, but the evidence showed that McDonald's similarly uses "Mc" in such forms as EGGS McMUFFIN, CHICKEN McNUGGETS, and SAUSAGE McMUFFIN. And although DIESEL is not a food product, the use of DIESEL as the suffix word in applicant's mark follows the structure of McDonald's family of marks. "[B]ecause of the fame of Opposer’s 'Mc' formative family of marks, when third parties use the 'Mc' formative, it engenders a similar commercial impression as Opposer’s 'Mc' formative family of marks.

Pointing out that a newcomer "has the clear opportunity, if not the obligation, to avoid confusion with well-known marks of others," the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

TTABlog note:  There was no explanation as to why the applicant choose to include "Mc" in his mark.

Text Copyright John L. Welch 2014.

Wednesday, July 23, 2014

Test Your TTAB Judge-Ability on This 2(d) Refusal of DASH DOG WASH & Design

The PTO refused registration of the mark DASH DOG WASH and Design, shown first below, for various pet-related services, including dog washing and grooming [DOGWASH disclaimed], deeming the mark likely to cause confusion with the registered mark SPLASH AND DASH FOR DOGS & Design, second below, for dog grooming services [FOR DOGS disclaimed]. Applicant appealed from the refusal, claiming that the marks are too different. Was it barking up the wrong tree? In re The Franchise Group Pty Ltd., Serial No. 79122789 (July 2, 2014) [not precedential].

The Board found the involved services to be, in part, legally identical, and it therefore presumed that the those services are offered in the same channels of trade to the same classes of consumers.

The Examining Attorney maintained that the marks are similar because they each contain the word 'DASH' along with a 'dog' formative term, and further because each includes a water drop design. Applicant argued that the marks contain different words and different designs, thereby creating different commercial impressions. Moreover, according to applicant, "the matter common to the two marks is weak, and should be accorded a narrow scope of protection." The Board noted that the word "dog" is generic for the involved services and the word "dash" suggests that the dog grooming services are provided quickly. [To me, "dash" suggests "daschund" - ed.].

Applicant pointed to third-party website evidence showing use of the word "dash" in several trademarks for dog grooming services: K-9 SPLASH & DASH, DOGGY DASH, DOGGIE BATH & DASH, BATH & DASH, and BATH N DOGGIE DASH LLC. The Board found this to be persuasive evidence, under the 6th du Pont factor, that "dash" is a weak term in the dog-washing field. And so the Board concluded that the scope of protection to be accorded the common portion of the marks is narrow.

Looking at the marks in their entireties, the Board found the design portions to be very different overall. Moreover, the literal portions - which are the portions of the marks most likely to be remembered - have very different commercial impressions: "the word DASH versus the phrase SPLASH AND DASH which consumers would not likely abbreviate to just the word DASH." Given the weakness of the word "dash," consumers may be expected to look to other portions of the marks to distinguish source.

The Board concluded that the differences in the marks create different commercial impressions sufficient to distinguish the marks, and this first du Pont factor was pivotal in the reversal of the refusal.


Read comments and post your comment here.

TTABlog note:  So how did you do?

Text Copyright John L. Welch 2014.

Tuesday, July 22, 2014

Fame of "POST-IT" Mark Yields 2(d) Opposition Victory over "FLAG-IT!"

Opposer 3M stuck it to Applicant Professional Gallery, Inc. in this opposition to registration of the mark FLAG-IT! for "adhesive-backed labels; adhesive-backed plastic film designating signatory action." The Board found the applied-for mark likely to cause confusion with the registered mark POST-IT for various stationery products, including note pads containing adhesive on one side of the sheets for attachment to surfaces. The fame of the POST-IT mark was the dominant factor, with the Board rejecting applicant's principal argument that the marks are not confusingly similar. 3M Company v. Professional Gallery, Inc., Opposition No. 91173411 (July 17, 2014) [not precedential].

Fame: 3M began using the mark POST-IT for sticky note pads in 1980, expanding the product line in 1987-88 to include adhesive flags. Annual sales of these products have been substantial and 3M is the market leader in both product areas. It spends millions of dollars per year in promoting these products and the brand has often been mentioned in unsolicited media coverage. The Board had no doubt that POST-IT is a famous mark for sticky notes, and it concluded that because sticky flags are so similar, that fame "spills over onto POST-IT for flags." Of course, the fame factor carried heavy weight in the du Pont analysis.

The Marks: Because the goods of the parties were found to be legally identical, a lesser degree of similarity between the marks is needed to support a finding of likely confusion. Furthermore, the Board must presume that the goods travel in the same, normal channels of trade to the same classes of consumers.

Applicant adhered to the argument that the differences in the marks make confusion unlikely, particularly in view of the weakness of the "IT" suffix. It (applicant) pointed to more than 100 third-party applications and more than 1,200 registrations for marks containing the element "IT." The Board found most of this evidence "not particularly probative" because applicant did not prove that the marks are in use or that the public is familiar with them. Moreover, few of those registrations involved goods similar to the products involved here, and even when the products were similar the Board was unable to conclude that "it" has any significance with regard to the involved goods "other than as an indefinite pronoun that, when combined with a verb, indicates that 'it' is the recipient of the action."

Third-party website pages likewise failed to convince the Board that consumers will distinguish the mark FLAG-IT! from POST-IT when used on identical adhesive flags. Many of the goods were not similar to the goods involved here, and some of the marks themselves were not similar to applicant's and opposer's marks.

Although Applicant has submitted hundreds of webpages from various websites, in point of fact there are only a very few webpages that can be regarded as showing the use of similar marks on even arguably similar goods. Further, there is no evidence of third-party marks ending in IT for sticky notes or flags.

The Board also noted that 3M has had some success in policing its mark vis-a-vis a number of third-party marks.

And so the Board concluded that applicant "has not demonstrated that the 6th du Pont factor [the strength of the mark] should weigh in its favor." [Doesn't opposer have the burden of proof here? - ed.].

Comparing the marks in their entireties, the Board found that consumers would consider POST-IT and FLAG-IT! to be similar in appearance and pronunciation. "The beginning elements, POST and FLAG, rather than being seen as identifying separate sources for the goods, will be understood as merely identifying different activities that can be done with the goods." Moreover, 3M has frequently used the word "flag" in advertising its POST-IT products, which "reinforces the connection of its mark with flag."

Balancing the relevant du Pont factors, the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

TTABlog note:  I wonder how the FLAG-IT! mark got past the examining attorney? I note that the Board pooh-poohed applicant's computer search results because the results depend on the "logarithm by which the results are depicted." (p.21). Shouldn't that be "algorithm"?

Text Copyright John L. Welch 2014.

Monday, July 21, 2014

ABA IP Section: TTAB Hot Topics, Boston, August 7th

Yours truly will be a panelist at the "TTAB Hot Topics" session of the ABA Annual Meeting in Boston, on August 7th from 8:30 to 10:00 AM at the Boston Marriott Copley Place Hotel. Register here. The session is hosted by the ABA Section of Intellectual Property Law. A brochure detailing the entire IP program may be downloaded here.

This session will feature a lively discussion, among experienced TTAB practitioners, on a variety of recent hot topics before the Board, including disparagement and the Washington Redskins case, procedural tips, functionality, accelerated case review, fraud after Bose, dilution, appeals to the Court of Appeals for the Federal Circuit and the District Courts, and more.

Erik M. Pelton, of Erik M. Pelton & Associates PLLC, Falls Church, VA, will serve as panel moderator.

Panelists are:
  • Phillip Barengolts, Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, LLP, Chicago, IL 
  • Rebeccah Gan, Young & Thompson, Alexandria, VA
  • Elizabeth King, Conley Rose, Houston, TX
  • John L. Welch, Lando & Anastasi LLP, Cambridge, MA

Test Your TTAB Judge-Ability on These Three Section 2(d) Refusals

I once heard a TTAB judge state that the outcome of most Section 2(d) likelihood of confusion cases can be predicted just by looking at the marks and the identified goods/services, without more. Well, your would-be honor, try your skills on these three appeals that were decided late last week - keeping in mind that, by my estimate, about 85% of Section 2(d) refusals are affirmed by the Board.

In re Jorge Alvarez, Serial No. 85529354 (July 18, 2014) [not precedential]. [Refusal to register PAYITAWAY for consumer lending services, in view of the registered marks
PAYAWAY and PAYAWAY PRIME [PRIME disclaimed] for credit and loan services].

In re Green Supreme, Inc., Serial No. 85502207 (July 18, 2014) [not precedential]. [Refusal to register BARLEY POWER GREEN SUPREME and Design shown below, for "dietary supplements also containing organically grown barley plants" [BARLEY disclaimed] in view of the registered mark GREEN SUPREME for "vitamin and mineral supplements, dietary supplements with herbs and natural ingredients"].

In re In re MAC Mode GmbH & Co. KGaA, Serial Nos. 79099041 and 79101237 (July 17, 2014) [not precedential].[Refusal to register the DREAM JEANS in the two design forms shown below left, for "clothing, namely, pants, jeans," in light of the registered marks DREAM JEANNE’S in standard character and design form, shown below right, for "women’s apparel, namely, jackets, jeans, skirts and shorts"].

Read comments and post your comment here.

TTABlog note: Well, what do you think? See any WYHA's here?

Text Copyright John L. Welch 2014.

Friday, July 18, 2014

Test Your TTAB Judge-Ability On These Three Section 2(d) Refusals of "EK" for Hats

New Era Cap Co. applied to register the mark EK in standard character form for "headwear, hats, caps, knit hats and baseball caps," but the PTO refused registration under Section 2(d) in view of three registered marks, depicted below. The first cited mark, owned by the Sigma Kappa Sorority, covers clothing items, including hats, the second is for footwear, and the third for t-shirts, knit tops, shirts and jackets. How do you think this came out? In re New Era Cap Co., Inc., Serial No. 85515684 (July 7, 2014) [not precedential].

As to the first registration, Examining Attorney David Yontef contended that the cited mark is a stylized version of the letters "EK" and would be so perceived and pronounced by customers. However, the record evidence showed that the mark consists of the Greek letters Sigma and Kappa, and that Sigma Kappa is a college sorority in the USA. [Note: the registrations is limited to clothing sold in connection with the sorority - ed.]. The registration stated that the mark consists of the two Greek letters. [But the consuming public doesn't know what statements appear in the registration - ed.]. The Board found the marks so dissimilar that confusion was unlikely, and it reversed that refusal.

As to the other two cited marks, applicant pointed to its ownership of two registrations for the mark EK in stylized form, which co-exist with the cited marks. The Board, however, noted that the instant application is for the letters EK in standard character form, and "if registered, Applicant would have the right to use the mark in any font, style, size, or color, including versions identical to either of the registered marks." The Board therefore agreed with the examining attorney that applicant's mark is virtually identical ... in appearance, sound, connotation and commercial impression, to the registered marks."

As to the goods it the second and third registrations, applicant lamely asserted that they are unrelated to its goods because they would, respectively, be found in different sections of a store or website. The Board, however, pointed out that goods may be related for Section 2(d) purposes even if not identical, and regardless of whether they are displayed together or far apart in the same store. The examining attorney submitted third-party use-based registrations that cover shirts, hats, and shoes under a single mark. Internet evidence also showed that third parties offer the same goods as applicant and these registrants under the same brand name.

And so the Board affirmed the second and third refusals.

Read comments and post your comment here.

TTABlog note:  So how did you do?

Text Copyright John L. Welch 2014.

Thursday, July 17, 2014

WYHA? CAFC Affirms TTAB's Dismissal of STONSHIELD v. ARMORSTONE Opposition

The CAFC affirmed the Board's ruling in StonCor Group, Inc. v. Specialty Coatings, Inc. (Opposition No. 91187787), dismissing on opposition to registration of the mark ARMORSTONE for, inter alia, epoxy coating for use on concrete industrial floors. The Board found the applied-for mark not likely to cause confusion with the registered mark STONSHIELD [as well as the registered marks STONCLAD and STONHARD] for goods that include epoxy hardeners; and it also found the applied-for mark not merely descriptive of applicant's epoxy coatings. Would you have appealed? Stoncor Group, Inc. v. Specialty Coatings, Inc., Appeal No. 2013-1448 (Fed. Cir. July 16, 2014) [precedential].

On appeal, StonCor raised only two issues: likelihood of confusion with its STONESHIELD mark, and mere descriptiveness.

As to the Section 2(d) issue, the Board found that the first du Pont factor, the similarity or dissimilarity of the marks, weighed against Stoncor. The CAFC ruled, however, that the Board erred in considering the pronunciation of the "STON-" prefix. The Board concluded that "STON-" would be pronounced by prospective consumers "according to the spelling" of 'STON,' with a short 'o' sound." According to the Board, StonCor had not provided any evidence to support the argument that "STON" would be pronounced with a long "o" sound - i.e., like "stone."

The CAFC ruled that the Board’s pronunciation analysis was not supported by substantial evidence. The Board improperly failed to credit StonCor’s evidence that consumers would pronounce “STON” as “stone.”

There is no correct pronunciation of a trademark that is not a recognized word. See In re Belgrade Shoe Co., 411 F.2d 1352, 1353 (CCPA 1969). “STON” is not a word in English. Neither party argues that “STON” is a word in any other language. Where a trademark is not a recognized word and the weight of the evidence suggests that potential consumers would pronounce the mark in a particular way, it is error for the Board to ignore this evidence entirely and supply its own pronunciation.

The Board's error, however, was harmless, because its other findings under the first du Pont factor were each supported by substantial evidence and together provided substantial evidence in support for the Board's weighing of that factor in favor of applicant.

The CAFC gave short shrift to the mere descriptiveness issue. StoneCor submitted definitions of "armor" and "shield," but no evidence that the combination conveyed "an immediate idea of the ingredients, qualities or characteristics of" the products.

And so the CAFC affirmed the Board's decision.

Read comments and post your comment here.

TTABlog note:  Well, WYHA?

Text Copyright John L. Welch 2014.

Wednesday, July 16, 2014

Precedential No. 32: TTAB Finds CLOUDTV Generic for ... Guess What?

The Board affirmed a refusal to register the purported mark CLOUDTV for software and software-based services relating to the provision of video-on-demand, finding the term to be generic. The Board also affirmed an alternative refusal on the ground of mere descriptiveness under Section 2(e)(1), concluding that applicant's proof of acquired distinctiveness was insufficient for this at least highly descriptive term. In re ActiveVideo Network, Inc., Serial No. 77967935 (July 9, 2014) [precedential].

Applicant did not contest the examining attorney's contention that the term TV is generic for its goods and services, all of which involve streaming images to an electronic device having a screen. As to the word "cloud," the definitions submitted by the examining attorney demonstrated that the word "cloud," in the context of applicant's goods and services, will "immediately be seen as generic for packet-switched computer networks that link distant servers to one's TV, computer or other smart devices having screens." Applicant's own press releases and promotional materials repeatedly use the word "cloud" in reference to its products.

Applicant pointed to a number of third-party registrations for marks containing the word "cloud," but the examining attorney pointed out that those registrations presented "different circumstances on their face." In some the word "cloud" was disclaimed, while in others the marks were slogans (where disclaimers are not required). Moreover, the Board is not bound by decisions of trademark examining attorneys in other cases on other records. And, the Board noted, the rapidly changing nomenclature in this field requires that the USPTO have the freedom to consider meanings anew when appropriate.

Articles from trade publications discuss cloud TV's threat to traditional cable and satellite television, and the record demonstrated that the largest competitors in the entertainment business are involved in "cloud TV wars" as each adopts its own approach, based on applicant's proprietary technology.

Turning to the issue of genericness, applicant feebly argued that because it coined the term CLOUDTV, the term cannot be generic. The Board pointed out, however, that the first user is not entitled to register a generic term as a mark.

The Board found the genus of applicant's goods and services to be captured by various phrases, including "video on-demand," "interactive television," "streaming video online," and "cloud-based television programming services to Internet-connected TVs." The relevant consuming public consists of a very broad group of persons, from ordinary consumers to executives of multi-system operators.

The Board agreed with the examining attorney that the combination of the generic words CLOUD and TV is itself generic, since no new meaning beyond the individual meanings of the components is created by combining them. The compound term merely refers to a software platform for broadcasting multi-media content via video-on-demand.

In short, the examining attorney established by clear evidence that the wording "Cloud TV" is a compound term that names the "central focus" or "key aspect" of applicant's goods and services, and therefore CLOUDTV is a generic term.

Implicit in the Board's holding on genericness was a finding that CLOUDTV is at least merely descriptive of applicant's goods and services. The Board rejected applicant's contention that CLOUDTV is an imaginative play on words, instead finding that the term is highly descriptive.

As to applicant's claim of acquired distinctiveness, its evidence consisted of conclusory declarations from its Vice President of Marketing that recounted applicant's commercial success but failed to establish that the public views the term CLOUDTV as a source indicator. Applicant did not provide contextual information about its sales volume, such as market share, polling data, etc. The Board would "need to see a great deal more evidence (especially in the form of direct evidence from the relevant classes of purchasers that they view the term 'CloudTV' as a source-identifier, or other circumstantial evidence) than what Applicant has submitted."

And so the Board affirmed the genericness refusal, as well as the alternative mere descriptiveness refusal under Section 2(e)(1).

Read comments and post your comment here.

Text Copyright John L. Welch 2014.