Thursday, September 18, 2014

Precedential No. 37: TTAB Affirms Rejection of Web Page Specimen for Computer Services

The TTAB has re-designated as precedential its three-year old decision in In re Chengdu AOBI Information Technology Co., Ltd., Serial No. 77723547 (May 31, 2011) [not precedential], wherein the Board affirmed a refusal to register the mark IObit on the Supplemental Register for computer programming, software design, data conversion, web site hosting, computer maintenance, and other related services. The Examining Attorney had deemed the specimen of use (below) unacceptable because it did not show use of the mark for any of the identified services.

 

The specimen of use was a screenshot from applicant's website. The only mentions of services on the web page were as follows:

Our sincere commitment to all our customers is that we will continue delivering innovative system utilities that are as simple to use as they are powerful and reliable. We also promise that we will keep providing the first-class free software and online service, for personal or non-commercial use.

We pursue the genuine ambition of becoming one of the world's top utility producers and Windows system service providers on the Internet.

The Board found these vague references to services to be insufficient to show use of the mark IObit for the recited services.

In fact, we cannot determine from this specimen whether the "online service" refers to a separate service, or is merely part of the free software product. Nor is applicant’s stated ambition to be a Windows system service provider an indication that applicant is providing a service now, and this statement certainly does not show that applicant is offering any of the services specified in the application.

The Board also reviewed other specimens that applicant had submitted, but applicant did not even argue that they were acceptable since they were either illegible or referred to products, not services.

Read comments and post your comment here;

TTABlog note:  This decision appears as Example No. 20 in the USPTO's new Examination Guide for Service Mark specimens (here).

Text Copyright John L. Welch 2014.

Wednesday, September 17, 2014

TTAB Will Hear Final Argument in ASHCON Opposition In Boston, October 3rd

As part of the "TTAB and PTAB Come to Boston" program in Boston on October 3rd [here], the Board will hear final arguments in Diamond Power International v. Clyde Bergemann, Inc., Opposition No. 91201996. [Pleadings and other filings downloadable here.] The TTAB panel will consist of Chief Judge Gerard Rogers, Judge Susan Hightower and Judge Linda Kuczma.


Applicant Bergemann seeks to register the mark ASHCON for "consulting services in the field of custom manufacturing of industrial equipment for power plants, mainly bottom ash dewatering systems," in class 40, and for "consulting services in the field of design and development of industrial equipment for power plants, mainly bottom ash dewatering systems," in class 42. Opposer Diamond Power claims a likelihood of confusion under Section 2(d) with its registered ASH and ASH-formative marks for ash-conveying equipment. Opposer also claims that ASHCON is merely descriptive of applicant's services under Section 2(e)(1).


Read comments and post your comment here;

Text Copyright John L. Welch 2014.

SUNNY HAZE Confusable With PURPLE HAZE for Beer, Says TTAB

The Board sustained this Section 2(d) opposition to registration of SUNNY HAZE for "beer; brewed malt-based alcoholic beverage in the nature of a beer," finding the mark likely to cause confusion with the registered mark PURPLE HAZE for beer, ale, lager, and malt liquor. Of course it all came down to the marks and, while noting the facts that HAZE is the second word in each mark and that HAZE may have some meaning in the context of beer, the Board concluded that applicant's mark appears to be a variant of opposer's. Abita Brewing Company, LLC v. Mother Earth Brewing, LLC., Opposition No. 91203200 (September 11, 2014) [not precedential].


Objections to opposer's survey: Applicant objected to opposer's likelihood of confusion survey because it did not include respondents from the limited number of markets in which applicant sells its products, and it did not present the marks in the manner in which consumers would have seen them in the marketplace (i.e., on beer bottles or cans, accompanied by the respective house mark). The Board, however, pointed out that applicant seeks a nationwide, geographically unrestricted registration, and so the universe of survey respondents was not overbroad. Likewise, marketplace conditions are irrelevant when the Board is considering the likelihood of confusion of two marks, SUNNY HAZE and PURPLE HAZE, in standard character form.


The marks: As we know, when the goods are, at least in part, identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. Applicant argued that the words PURPLE and SUNNY, appearing as the first term in the respective marks, are dominant, and that the marks when viewed in their entireties evoke different images. The Board, however, found that the placement of the word HAZE does not distinguish the marks because SUNNY HAZE appears to be a variant of PURPLE HAZE. And even if HAZE has some meaning in the context of beer, as discussed below, "it is not so weak that consumers would  give greater significance to PURPLE and SUNNY and ascribe a different source to each brand of beer."

Applicant asserted that "haze" is descriptive of a characteristic of beer, and is used in the beer industry to measure beer clarity. Furthermore, PURPLE HAZE calls to mind the Jimi Hendrix song of the same name, along with psychedelic imagery associated with marijuana and LSD, imagery that SUNNY HAZE does not evoke.


The Board found no evidence that the general beer-drinking public would be familiar with the technical definition "haze." They would be aware, however, of the ordinary dictionary definition of "haze" (Webster's: "a cloudy appearance in a transparent liquid or solid"). According to opposer's website, PURPLE HAZE beer has a "subtle purple color and haze," and so the term does has some significance that consumers would recognize. (In addition, applicant pointed out that "purple" describes opposer's beer.) With regard to the Jimi Hendrix song, the evidence did not establish that the general beer-consuming public would make the connection between the mark PURPLE HAZE for beer and the song.

In any case, "at least those consumers who view the mark as having a descriptive feature and do not make the Jimi Hendrix association would see the marks PURPLE HAZE and SUNNY HAZE as more similar than they are different, as both identify a color or mood and both share the word HAZE." Moreover, even if the marks connote two different types of haze, a "purplish or dark haze" and a "bright, golden haze," they both connote types or colors of haze. And as to the ordinary dictionary meaning of "haze," it applies to both marks.

And so the Board concluded that this first duPont factor favored a finding of likely confusion.

Other factors: Opposer's evidence demonstrated that PURPLE HAZE beer has enjoyed some sales success, but it did not prove the widespread recognition required for fame under Section 2(d). The limited number of third-party registrations and Internet uses submitted by applicant were of little probative value vis-a-vis the strength of the PURPLE HAZE mark. Applicant argued that its craft beer is purchased with care, but neither the involved application or registration is limited to craft beer, nor are they limited as to price of channels of trade. In any case, even sophisticated purchasers are not immune to confusion when similar marks are used on identical goods. Finally, the lack of proof of actual confusion was of no probative value given the limited time of concurrent use of the mark, and the limited geographic distribution of applicant's product.

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

Read comments and post your comment here;

TTABlog note:  No mention that one who is drinking beer may have a more hazy recollection of each mark.

Text Copyright John L. Welch 2014.

Tuesday, September 16, 2014

Reminder: TTAB and PTAB Come to Boston: October 3rd

Not many seats left! You may choose to attend one or both hearings. On Friday, October 3rd, the USPTO's Trademark Trial & Appeal Board (TTAB) and Patent Trial & Appeal Board (PTAB) will hold hearings in the Moot Court Room on the campus of Northeastern University School of Law. This monumental event is jointly sponsored by the Boston Patent Law Association and Northeastern University School of Law. Details and registration here.


The morning program will focus on trademarks at the TTAB, Chief Judge Rogers will explain "Why the TTAB is not like the PTAB or District Court," followed by John L. Welch, TTABlog and Lando & Anastasi, sharing his views on "The Top 8 or 9 Losing TTAB Arguments." A three judge panel of the TTAB will hear the final argument in an inter partes proceeding, and Susan Montgomery and John Welch will then lead a question-and-answer period among the attendees. The luncheon keynote speaker is Kevin Johnson, Associate General Counsel, The Gillette Company, who will discuss "Brand Intellectual Property." The afternoon session will turn to patents, led off by Claire Laporte of Foley Hoag, speaking on "Emerging Issue in AIA PTAB Proceeding: Obviousness." A hearing before a three judge panel of the PTAB will be followed by a reception.

Read comments and post your comment here.

TTABlog comoment:  In my memory, I think this is possibly the most significant double-header since Wilbur Wood started both ends of a twin-bill for the Chicago White Sox against the Yankees in 1973 (he lost both games).

Text Copyright John L. Welch 2014.

Precedential No. 36: TTAB Reverses Refusal of Service Mark Specimen for Financial Services

The Board has re-designated as precedential its ruling in In re McGowan Publishing Company, Inc.,, wherein the Board reversed a refusal to register the mark CASHFLOW UNITS for "investment products, namely, wealth management and performance tracking, and providing financial advisory and financial portfolio management services." The Examining Attorney had deemed the specimen web page (shown below) unacceptable because it did not display the mark in association with the recited services. The Board, however, found that links labeled with the mark, for documents used in the rendering of the services, supplied the required association. In re McGowan Publishing Company, Inc., 111 USPQ2d 2000 (TTAB 2013) [precedential].


According to the Trademark Examining Attorney, the specimen "contains only general information about The McGowan Group Asset Management Company (the Applicant), and makes no specific reference to ‘wealth management and performance tracking’ or the provision of ‘financial advisory and financial portfolio management services.'" Applicant argued that the web page "features links to two of Applicant's specific investment products ... offered clearly under the mark CASHFLOW UNITS." 

The question for the Board was "whether consumers will associate CASHFLOW UNITS with such services." The Board noted that there was, "unfortunately," no evidence regarding the reaction of consumers to applicant's use of the mark.

Reviewing the specimen web page, the Board observed that the disclosures at the bottom of the page inform the reader that applicant is a "federally Registered Investment Advisory Firm," which means that it is registered with the SEC as an entity that, according to several financial dictionaries, "for compensation, engages in the business of advising others, either directly or through publications or writings, as to the value of securities or as to the advisability of investing in, purchasing or selling securities." The wording "McGowan Group Asset Management" at the top of the page "informs the view that CASHFLOW UNITS are part of an asset management service."

Immediately below CASFLOW UNITS appear (1) the "MGAM Wrap Program Assets Discretionary Advisory Agreement" and (2) the "MGAM RIA Disclosure." The agreement is applicant's contract with the investor, and the disclosure notifies the client that applicant has complied with conflict of interest rules. "In other words," said the Board, "these are documents used by applicant in rendering its services."

The Examining Attorney contended that the specimen web page displays only links to the two documents, not the documents themselves. Moreover, the agreement is merely a document used in the normal course of business, and providing such an agreement is not a service. The document is not disseminated to the public as advertising, and it shows only potential use (when the blanks are filled in). In short, it is not an "investment product."

The Board, however, concluded that "a client or prospective client of applicant's investment advisory services would view the mark on the web page in close proximity to links for documents used in rendering those services." The link to the agreement "functions as an offer to enter into an arrangement for the provision of 'Advisory' services relating to the client's assets. Thus the links to these documents creates an association between the mark and the offered services activity."

The Board therefore reversed the refusal to register.

Read comments and post your comment here;

TTABlog comment:  Doesn't make much sense to me. Looking at the specimen, I have no idea what CASHFLOW UNITS is supposed to refer to. There is no indication that the mark CASHFLOW UNITS appears on the contract or on the disclosure document. The service mark for the advisory services seems to me to be McGowanGroup or maybe "MGAM." CASHFLOW UNITS seems to refer to some particular fund that the company is peddling. Note the "TM" next to CASHFLOW UNITS, not "SM."

BTW: take a gander at the USPTO's new Examination Guide for Service Mark specimens (here). This case appears as example no. 17. Perhaps when the Examination Guide was promulgated, the Board decided to go back and make this decision precedential.

Text Copyright John L. Welch 2014.

Monday, September 15, 2014

USPTO Issues Examination Guide for Service Mark Specimens of Use

The USPTO has issued an Examination Guide for service mark specimens of use: download here.


Test Your TTAB Judge-Ability on these Four Mere Descriptiveness Refusals

Here are four recent appeals from mere descriptiveness refusals under Section 2(e)(1). Let's see how you do with them, bearing in mind that the Board affirms, in my estimation, more than 80% of these refusals. [Answers in first comment].


In re Tateho Kagaku Kogyo Kabushiki Kaisha d/b/a Tateho Chemical Industries Co., Ltd., Serial No. 79119845 (September 9, 2014) [not precedential]. [Mere descriptiveness refusal of PUREMAG for, inter alia, "“magnesium hydroxide, magnesium oxide, magnesium carbonate; magnesium oxide ceramics in particle and compacted form used as target material for sputtering, electron-beam deposition, evacuated deposition"].


In re New Energy Technologies, Inc., Serial No. 85673541 (September 10, 2014) [not precedential]. [Mere descriptiveness refusal of MOTION POWER & Design for "generators of electricity, namely, generators that generate electricity by capturing and converting kinetic energy into electricity"].


In re In re Hunter Engineering Company, Serial No. 85593757 (September 11, 2014) [not precedential]. [Mere descriptiveness refusal of ECAL for "automated systems, namely, micro-processor based hardware and software used to monitor the status of and self-calibrate equipment, namely, wheel balancers for balancing the wheels of land vehicles"].


In re Gyroz, Inc., Serial No. 85551984 (September 12, 2014) [not precedential]. [Mere descriptiveness refusal of GYROZ for "restaurant services, including sit-down service of food and take-out restaurant services"].


Read comments and post your comment here.

TTABlog note: See any WYHAs here?

Text Copyright John L. Welch 2014.

Friday, September 12, 2014

Susan M. Richey Appointed Deputy Chief Administrative Trademark Judge at the TTAB

Susan M. Richey has been named Deputy Chief Administrative Trademark Judge at the Trademark Trial and Appeal Board. She becomes the twenty-second judge now sitting on the Board.


Susan Richey comes to the Board from the University of New Hampshire School of Law, where she served as a professor and Associate Dean. Prior to her 18-year tenure as an IP professor and law school administrator, Ms. Richey spent 13 years in Los Angeles engaged in the private practice of intellectual property law, with a concentration on trademark matters and litigation. While at UNH, Ms. Richey maintained her connection to private practice by consulting with a New Hampshire firm on IP and Internet issues. In addition to her academic and private practice experience, Ms. Richey served as a staff law clerk for the U.S. Court of Appeals for the Fourth Circuit.

Ms. Richey has been a frequent speaker on IP issues and has authored a very large number of law review articles and other papers. She has served as a member of the Editorial Board of the Trademark Reporter, as chair of the INTA Panel of Neutrals, and as a member of INTA’s Academic Committee. Since 2008, after nomination by the U.S. State Department, Ms. Richey has served as the U.S. representative to the Confidentiality Commission of the Conference of the States Parties for the Organisation for the Prevention of Chemical Weapons.X

After earning a B.S. in Biology from the College of William and Mary, and a B.A. in English from the University of Baltimore, Ms. Richey attended law school at the University of Maryland School of Law.

TTAB Finds "SWISSCODE" Not Confusable With "SKINCODE 2 & Design" for Cosmetics

The Board dismissed an opposition to registration of  the mark SWISSCODE for "[s]oap; perfumery, essential oils, cosmetics, hair lotions; dentifrices." finding it not likely to cause confusion with the previously used and registered mark SKINCODE 2 & Design (shown below) for "soaps, cosmetics, all adapted for use on the skin and the scalp." In an earlier procedural ruling [TTABlogged here], the Board had ruled that opposer, which relied only on its pleaded registrations, had made a prima facie showing of likelihood of confusion, shifting the burden of producing evidence to applicant. Third-party registrations and evidence of use sealed the deal for applicant.  Skincode AG v. Skin Concept AG, Opposition No. 91206091 (September 10, 2014) [not precedential].


The Board found the goods to be, in part, identical, and it therefore assumed that the trade channels and classes of consumers for those goods are the same. As to the marks, the Board looked to the sixth duPont factor, the number and nature of similar marks on similar goods, which "involves the notion that as a result of a certain degree of third-party use of similar marks for similar goods, consumers may be able to differentiate between such marks and that confusion is not likely even if the marks contain a common element."

The Board concluded that, because of the points of dissimilarity between the marks, combined with defendant's evidence, the marks are sufficiently different to avoid a likelihood of confusion.

"First and foremost," the marks begin with terms that, although suggestive or descriptive, have very different meanings. The Board noted once again that "it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered." The presence of the subscript "2" in opposer's mark - suggesting CO2 (carbon dioxide) or O2 (oxygen) - further distinguishes the marks.

Applicant submitted numerous third-party registrations for marks containing the word "code." By themselves, these registrations are entitled to no weight on the issue of the strength of the mark because they do not evidence use of the third-party marks. However, applicant buttressed this evidence with printouts or photos of the following marks in actual use on products similar to those involved here: BEAUTY CODE, ARMANI CODE, BIOCODE BEAUTY CARE, CODE SPORT, 3D CODE, COLLAGEN CODE, COWBOY CODE, FACE CODE, YOUTH CODE, and CODE 4. This evidence showed that "the parties in this proceeding are hardly unique in seeking to register and use the term CODE in connection with soap, cosmetics and other skincare goods." Consequently, the fact that this term is found in both marks "has less importance when considering the overall similarity of the two marks."

The Board therefore dismissed the opposition.

Read comments and post your comment here;

TTABlog note:  Third-party registrations alone are considered of no probative value on whether two marks at issue are confusable, absent proof of the nature and extent of the third-party use. Here there was evidence of the nature, but not the extent, of the third-party use, but the Board accepted that evidence. Without the third-party marks, the Board would have been left with a comparison of the two marks alone, and on the previous Rule 132(b)  motion to dismiss it already said that that was not enough.

Text Copyright John L. Welch 2014.

Thursday, September 11, 2014

Although Rare, LEARDI Primarily Merely a Surname, Says TTAB

The Board affirmed a Section 2(e)(4) refusal to register the mark LEARDI (in the stylized form below) for business management services, finding the mark to be primarily merely a surname. Although LEARDI is a rare surname, applicant indicated that it is the surname of Paolo Roberto Leardi, whose consent is of record. And there was no evidence of record that LEARDI would be viewed as anything but a surname.  In re Markbens Administradora de Bens Eireli, Serial No. 85713043 (September 9, 2014) [not precedential].


Examining Attorney Leslie L. Richards submitted a listing from a nationwide telephone directory indicating that 62 individuals in this country have the surname LEARDI. Although finding that LEARDI is a rare surname, the Board pointed out that "even a rare surname is unregistrable if its primary significance to purchasers is a surname." [But if the name is that rare, does it have any significance to the typical purchaser? - ed.].

Applicant indicated that LEARDI identifies Paulo Roberto Leardi, whose consent is of record. "A term that is the surname of someone associated with the Applicant is evidence of the surname significance of the term LEARDI. [Note: Applicant is a Brazilian company. Is Paulo Roberto Leardi a US citizen or resident? If not, what is the significance of his surname? - ed.]

"Negative dictionary evidence" from the Internet showed no definitions for LEARDI, but did provide examples of LEARDI used as a surname. And the Board found that it has the look and sound of a surname because the only public use of the word is as a surname, and further because it "appears to be a cohesive turn with no meaning other than as a surname."

Of course, the stylization of the mark was insufficiently distinctive to create a separate commercial impression. "The term, although in stylized letters, would still be perceived as a surname."

The Board therefore affirmed the refusal.

Read comments and post your comment here

TTABlog note:  This decision takes the opposition approach to that which Judge Seeherman espoused in In re "Baik" [TTABlogged here] and other cases, where she posited that the rareness of the surname is the most important factor. In her view:

"The purpose behind prohibiting the registration of marks that are primarily merely surnames is not to protect the public from exposure to surnames, as though there were something offensive in viewing a surname. Rather, the purpose behind Section 2(e)(4) is to keep surnames available for people who wish to use their own surnames in their businesses ...." ***

"If the surname is extremely rare, it is also extremely unlikely that someone other than the applicant will want to use the surname for the same or related goods or services as that of the applicant."

Text Copyright John L. Welch 2014.

Wednesday, September 10, 2014

TTAB and PTAB Come to Boston: Friday, October 3, Northeastern Univ. School of Law

On Friday, October 3rd, the USPTO's Trademark Trial & Appeal Board (TTAB) and Patent Trial & Appeal Board (PTAB) will hold hearings in the Moot Court Room on the campus of Northeastern University School of Law. This monumental event is jointly sponsored by the Boston Patent Law Association and Northeastern University School of Law. Details and registration here.


The morning program will focus on trademarks at the TTAB, Chief Judge Rogers will explain "Why the TTAB is not like the PTAB or District Court," followed by John L. Welch, TTABlog and Lando & Anastasi, sharing his views on "The Top 8 or 9 Losing TTAB Arguments." A three judge panel of the TTAB will hear the final argument in an inter partes proceeding, and Susan Montgomery and John Welch will then lead a question-and-answer period among the attendees. The luncheon keynote speaker is Kevin Johnson, Associate General Counsel, The Gillette Company, who will discuss "Brand Intellectual Property." The afternoon session will turn to patents, led off by Claire Laporte of Foley Hoag, speaking on "Emerging Issue in AIA PTAB Proceeding: Obviousness." A hearing before a three judge panel of the PTAB will be followed by a reception.

Read comments and post your comment here.

TTABlog comoment:  In my memory, I think this is possibly the most significant double-header since Wilbur Wood started both ends of a twin-bill for the Chicago White Sox against the Yankees in 1973 (he lost both games).

Text Copyright John L. Welch 2014.

Precedential No. 35: Filing of Opposition by Foreign Attorney is Curable Defect, Says TTAB

In this cat fight over rights to the mark TOBERMORY CAT, Applicant Angus Stewart moved for dismissal on the ground that the notice of opposition, and two extension requests that preceded it, were signed by a foreign attorney not authorized to practice before the USPTO. The Board, however, ruled that this defect was curable. It then suspended the proceeding in order to assess the impact of a pending UK invalidation proceeding involving the foreign registration on which the opposed application is based. Birlinn Limited. v. Angus Stewart, 111 USPQ2d 1905 (TTAB 2014) [precedential].


The cure: The extension requests and the notice of opposition were signed and filed by an attorney in Edinburgh, Scotland, using the ESTTA system; this resulted in their automatic approval and the institution of this proceeding. When applicant moved to dismiss, a new attorney for opposer, authorized to practice before the USPTO, filed an opposition to the motion and an amended notice of opposition (differing from the original notice only in the name of the signatory and the certificate of service).

Opposer relied on TBMP § 114.06 (2014) [Note to reader: the TBMP is not the law - ed.], which provides:

If it comes to the attention of the Board that an individual who is not entitled, under 37 CFR § 11.14(a), 37 CFR § 11.14 (b), 37 CFR § 11.14 (c) or 37 CFR § 11.14 (d), to practice before the Office in trademark cases, is attempting to represent a client in a Board proceeding, the Board will notify the individual that he or she is not entitled to do so. If the individual signs and files a submission on behalf of a client to a Board proceeding, the submission will not be considered unless a new copy thereof, signed by the party or by an authorized representative who is entitled to practice before the Office in trademark cases, is filed.

In response, Applicant Stewart asserted that the amended notice of opposition was untimely and therefore there was no operative notice of opposition to amend or to cure.

Applicant's motion was based on the premise that service of the original notice of opposition was improper, but the Board pointed out that the Rules do not require service by a person authorized to practice before the USPTO. The real issue was whether the extension requests and the original notice of opposition "were signed in conformity with the Trademark Rules of Practice, and if they were not, whether and when the rules allow Opposer to cure the defect in the signature of these papers."

Rule 2.102(a) requires that an extension request be signed by "the potential opposer or by the potential opposer’s attorney, as specified in § 11.1 of this chapter, or authorized representative, as specified in § 11.14(b) of this chapter." Rule 2.101(b) states the same requirement for notices of opposition. Opposer did not contend that the original signatory was either an attorney or an authorized representative, as defined by the Rules. [There was no contention that the Scottish attorney was not in fact authorized to sign and file the papers].

The question, then, was whether and how the defective filings could be cured. The Board noted that Rules 2.102(a) and 2.101(b) do not say that filings that are not properly signed are null and void. It found instructive Rule 2.119(e), which allows a party to cure the defect of a lack of a signature for any inter partes filing at the Board. That Rule provides:

Every paper filed in an inter partes proceeding, and every request for an extension of time to file an opposition, must be signed by the party filing it, or by the party’s attorney or other authorized representative, but an unsigned paper will not be refused consideration if a signed copy is submitted to the Patent and Trademark Office within the time limit set in the notification of this defect by the Office.

The Board saw no reason why this opportunity to cure should not also apply when a paper is signed by a person not authorized to practice before the USPTO. Nor does Rule 2.119(e) require that the defect be cured within the original time limit for the filing. Rule 2.119(e)requires only that the party re-file the properly signed copy "within the time limit set in the notification of this defect by the Office."

Opposer had filed an amended notice of opposition with a proper signature, but had not filed amended extension requests. The Board allowed opposer twenty days to file amended requests with proper signature.

The Board emphasized that its ruling should not be interpreted to cover situations beyond the circumstances at hand, where there was no evidence of intentional misconduct.

The suspension: The Board observed that opposer had referred to a pending UK invalidation proceeding instituted by Opposer Birlinn. The Board therefore suspended this proceeding pending receipt of further information that would allow the Board to assess whether the final determination in the UKIPO proceeding might have a bearing on the issues in this opposition. See Marie Claire Album S.A. v. Kruger GmbH & Co. KG, 29 USPQ2d 1792, 1793-94 (TTAB 1993).

Read comments and post your comment here

TTABlog note:  Since the opposed application is based only on Section 44, invalidation of the underlying UK registration could be fatal to the application.

Text Copyright John L. Welch 2014.

Tuesday, September 09, 2014

Test Your TTAB Judge-Ability on these Four Mere Descriptiveness Appeals

Here are four recent appeals from mere descriptiveness refusals under Section 2(e)(1). Let's see how you do with them, keeping in mind that the Board affirms, in my estimation, more than 80% of these refusals. [Answers in first comment].


In re Women's Bar Foundation, Serial No. 85240460 (August 29, 2014) [not precedential]. [Requirement for disclaimer of WOMEN'S BAR FOUNDATION in the mark shown below for "charitable foundation services, namely, providing fundraising activities, funding, scholarships and/or financial assistance for women in law school and public service legal positions"].


In re The Travel Chronicle, Serial No. 85368593 (September 2, 2014) [not precedential]. [Mere descriptiveness refusal of THE TRAVEL CHRONICLE for "art prints comprised of digital illustrations originating from photographs"].


In re Breathing Center, LLC, Serial No. 85433600 (September 2, 2014) [not precedential]. [Mere descriptiveness refusal of BREATHING NORMALIZATION for DVDs and videos, books, educational services, and health care services, all in the field of health improvement].


In re Internet Promise Group LLC, Serial No. 85690713 (September 2, 2014) [not precedential]. [Mere descriptiveness refusal of SMART DISPLAY for "computer software application for use in connection with mobile wireless devices equipped with display screens; the application reformats a received web page for display on the screen to make the webpage readable without use of zooming and scrolling functions to be able to view the page content on the display screen"].


Read comments and post your comment here.

TTABlog note: See any WYHAs here?

Text Copyright John L. Welch 2014.

Monday, September 08, 2014

Caterpillar Conquers BIG CAT in TTAB 2(d) Opposition

The fame of the mark CAT for construction equipment brought victory to Opposer Caterpillar Inc. in its Section 2(d) opposition to registration of BIG CAT, in standard character and design form, for "gas well equipment, namely, well bore fluid redistribution equipment comprised of a sealing body insertable into a well bore with ports allowing fluid to be pumped from one geological stratum to another, pumps, valves, and pipes." Although the products of the parties are expensive and would be purchased with care and sophistication, the remaining relevant duPont factors pointed in Caterpillar's direction. Caterpillar Inc. v. Big Cat Energy Corporation, Opposition No. 91193704 (September 3, 2014) [not precedential].


Caterpillar relied on a slew of registrations for the mark CAT, in standard character and design form, as well as on common law use of the mark CAT for a whole litter of goods and services, including goods and services used in the oil and gas industry. It asserted that its mark CAT is often associated with "big machines," "big projects," and other big things, and it made a bid deal out of the claim that the company is often referred to as "BIG CAT."

The Board found that opposer's CAT marks are famous, "in no small measure because ... CAT branded equipment is pervasive on natural gas well sites throughout the entire life-cycle of the well." In short, "there exists a relationship between Applicant's hydrological technology and Opposer's listed heavy machinery, engines and generator sets."

The Board found "compelling," Caterpillar's arguments that the involved marks are confusable not only at the point-of-sale, but also in the post-sale context of "dealing with produced water from well sites."

Given the renown of the CAT marks generally, in the oil and gas industry specifically, and the ubiquitous presence of CAT-branded equipment at gas well sites, we agree that it is likely that during the life of the well, a range of persons, including miscellaneous contractors, well owners, and/or operators might well be confused regarding the source of Applicant’s technology upon exposure to the BIG CAT marks on a well site inundated with Caterpillar’s CAT-branded products and services.

From the record evidence, the Board found that the CAT mark "has reached an extraordinary level of fame, not only in the oil and gas industry, but also with respect to the general consuming public."Of course, when present fame is a dominant factor in the Section 2(d) analysis.

Not surprisingly, the Board found the word "cat" to be the dominant portion of applicant's marks, and it agreed with Caterpillar that potential customers of applicant will consider the BIG CAT marks as merely variations of opposer's CAT marks. Moreover, the record included many examples of use of the term "Big Cat" to refer to Caterpillar.

Third-party "cat"  marks offered by applicant were of little relevance, but even if they were, the Board noted that "third-party registration or use cannot justify the registration of what possibly may be another confusingly similar mark." The lack of actual confusion evidence was likewise non-probative, in part because applicant operates only in a limited geographic area in Wyoming and has had comparatively minimal sales and promotional activity.

The Board acknowledged that the involved products and services are quite expensive and would be purchased with care. But even sophisticated customers may be confused by very similar marks. This duPont factor slightly favored applicant.

Balancing the relevant duPont factors, and giving opposer's CAT marks the broad scope of protection to which they are entitled, the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

TTABlog note: The Board declined to reach Caterpillar's dilution claim. Is there any chance that CAT could be a "household word" for Caterpillar's products and services? [In my household, "cat" means the neighbor's pest.] I don't think so.


Text Copyright John L. Welch

Friday, September 05, 2014

Quadruple WYHA? Would You Have Appealed These Four Section 2(d) Refusals?

The USPTO refused registration of the following four marks for "IT consulting services" - MAC SUPPORT AT WORK, MAC SUPPORT AT HOME, BIZMACS, and HOMEMACS [SUPPORT AT WORK disclaimed in the first mark] - finding the marks likely to cause confusion with Apple's registered marks MAC, MAC OS, and MAC.COM for computers and related devices, storage media, software, leasing services, and telecommunication services. Would you have appealed???? In re BizMacs, Inc., Serial Nos. 85652874, 85652879, 85652890 and 85652893 (September 3, 2014) [not precedential].



The Board found Applicant's services to be "at least related" to Registrant's computers, peripherals, operating system software, and computer programs and software. In fact, the Board noted, "IT" (information technology) services are by definition related to computers, peripherals, and software.

Third-party registrations demonstrated that the same sources under the same mark offer both IT consulting services and one or more of registrant's goods. And applicant's marks and specimens of use revealed that its IT services are provided to owners of Registrant's MAC computers. [Well, I'll be danged! - ed.]. Applicant's website offers "help" to MAC owners, and applicant offers to "build" and "support" computers, including mail servers and web servers - indicating a relationship to Registrant's electronic mail and message services telecommunication services. Applicant effectively conceded the point, and this duPont factor weighed heavily against applicant.

Since applicant targets Apple's customers, the channels of trade for the involved goods and services are identical.

Turning to the marks, the applied-for marks include registrant's MAC mark combined with merely descriptive wording. Thus the term MAC dominates applicant's mark.

Applicant pointed to a number of third-party registrations containing the term MAC, but the Board was unimpressed. There was no evidence that any of those marks were in use, and in any case the Board is not bound by prior decisions of examining attorneys in allowing marks to register. Moreover, as examining attorney C. Skye Young pointed out, most of the third-party registrations are irrelevant because they contain arbitrary terms or otherwise create a different commercial impression than the marks here at issue.

Applicant urged that the relevant consumers are highly sophisticated: "men and women of all ages who use Macintosh products in their business and occasionally need to hire an IT professional who specializes in Macintosh products." Its services cost from $95-180 per hour, while Apple's products cost about $300 for software and up to $3000 for some computer systems. Again the Board was unimpressed. Applicant's customers include sophisticated and unsophisticated consumers, and those who only occasionally hire IT professionals are likely to be less sophisticated. Even if some care is assumed, however, even careful consumers may be confused "where substantially similar marks are used on highly related and/or complementary goods."

Finally and feebly, applicant pointed to the lack of actual confusion, but the Board pointed out that there was no evidence regarding whether there had been meaningful opportunity for confusion, and further that in an ex parte context the registrant is afforded no opportunity to address that issue.

Considering the relevant duPont factors, the Board found confusion likely and it affirmed the refusals.

Read comments and post your comment here.

TTABlog note:  Well, would you have????

Text Copyright John L. Welch 2014.