TTABlog News Flash: President Obama Signs Trademark Technical and Conforming Amendment Act of 2010

On March 17, President Obama signed into law the Trademark Technical and Conforming Amendment Act of 2010. Among other things, the law fixes an anomaly concerning the time periods for filing declarations of use under Section 71 of the Act (in connection with Madrid Extensions of Protection). [See this TTABlog posting].

Petitioner North Face Falls Flat in Attempted Cancellation on Abandonment and Fraud Grounds

Petitioner North Face Apparel fell victim to Respondent Gerald L. Baranzyk's rope-a-dope approach to this cancellation proceeding involving the design mark shown below for "clothing, namely caps, shirts and jackets." Face alleged abandonment and fraud, but failed to prove either. Respondent did not file a brief, failed to get any evidence into the record, and did not answer Face's admission requests, which were thereby deemed admitted. But he still won. The North Face Apparel Corp. v. Gerald L. Baranzyk, Cancellation No. 92046488 (March 10, 2010) [not precedential].


Abandonment: North Face attempted to prove abandonment via the testimony of three investigators who swore they could not find Baranzyk's goods. However, one had looked in retail outlets, even though Baranzyk had stated in an interrogatory answer that he sold his goods by "mail, phone." The other two investigators perused online websites, but Baranzyk answered "no" to an interrogatory asking whether he promoted his goods online.

But it turns out that all this was unimportant anyway, since Baranzyk had admitted (by his failure to respond to the admission requests) that he "does not use his mark on shirts, jackets and caps." That admission request was dated May 6, 2007, and the Board treated that admission as effective through July 10, 2009, "the last day of Respondent's testimony period and therefore the last point at which respondent could have controverted that admission."

Fortunately for North Face, that covered the period when the investigators had been on the prowl, but, unfortunately for North Face, the admitted period of non-use was less than three years, and Face could not therefore rely on the three-year statutory presumption of abandonment.

North Face had no other evidence of nonuse, and so the Board ruled that it had failed to meet its burden of proof. [The Board noted that had North Face requested the right admissions (e.g., non-use year by year), it could have avoided this problem.]


Fraud: In its petition for cancellation, North Face had used the now-discredited "knew or should have known" language for its fraud claim. In its final brief, it asked the Board to strike the "should have known" part, and the Board did so. Nonetheless, Face did not prove fraud. Baranzyk filed his Section 8 declaration on April 14, 2005, and Face provided no evidence that the mark was not in use with the goods on that date.

So the fraud claim bit the dust as well.

TTABlog comment: This case is like a car wreck. You can't keep yourself from looking. But the Board's willingness to amend Face's fraud claim at was interesting. Of course, the amendment allowed the Board to deny the claim substantively.

TTABlog postscript: I don't mean to be too harsh on North Face. The Board seemed to lean over backwards in ignoring Applicant's shortcomings. I'd rather face a law firm or lawyer on the other side any day, than a pro se applicant who does the absolute minimum to keep the case going.

Text Copyright John L. Welch 2010.

"TTAB Comes To Boston" - April 9th at Boston University School of Law

The TTAB will visit Boston on the afternoon of April 9th to hear final argument in Factory Five Racing, Inc. v. Carroll Shelby and Carroll Hall Shelby Trust, Opposition No. 91150346, as part of a program co-sponsored by the Boston Patent Law Association and Boston University Law School. The hearing will be held in the Stone Moot Court Room at the law school, at 765 Commonwealth Avenue, Boston, MA 02215.


The case involves Shelby's application to register the product configuration mark shown above, for automobiles. Factory Five alleges genericness, abandonment, fraud, failure to function as a mark, and collateral estoppel. Briefs and other pertinent papers may be found here at TTABVUE.


The hearing will be preceded by two presentations: Mark Robins of Nixon & Peabody (Boston) will review recent trademark decisions in the First Circuit, and Acting Chief Judge Gerard F. Rogers will discuss Accelerated Case Resolution (ACR) and TTAB procedural developments.

Following the hearing, yours truly will moderate a panel discussion regarding the Shelby case, the panel consisting of Amy Brosius of Fish & Richardson (Boston), Pamela Chestek of Red Hat, Inc. (Raleigh, NC), and Aaron Silverstein of Saunders & Silverstein (Amesbury). A reception will follow the panel discussion.

The program will run from 1:15 pm to 5:30 pm. Details may be found here. On-line registration is available at that BPLA link, or at the door beginning at 12:30.

The registration fee for BPLA members is $100. For non-members, $120. Students may attend fee of charge, provided they sign up in advance (through me).

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Glitch-Filled Battle Over "COMPUTER GEEKS" Mark Lurches to Split TTAB Decision

You might expect a TTAB battle over the mark COMPUTER GEEKS to include a few glitches, right? Sure enough, the parties to this consolidated opposition/cancellation proceeding staggered to a split decision regarding rights in that mark for various computer-related goods and services. Computer Geeks, Inc. v. Compgeeks.com, Oppositions Nos. 91167886 and 91170726 and Cancellation No. 92046567 (March 4, 2010) [not precedential].


Cancellation dismissed: Plaintiff got off on the wrong foot when the Board jettisoned its petition for cancellation of a registration for the mark COMPGEEKS.COM for on-line computer ordering services and for internet search engines. Plaintiff alleged priority of use but it never alleged likelihood of confusion. Instead, it asserted only that: "Insofar as the subject Reg. No. 2499396 is asserted by the Registrant ... as a defense to the pending Consolidated Opposition, then Petitioner believes it will be damaged by the continued registration of the mark of 2499396." Not good enough, said the Board, agreeing with Defendant's affirmative defense that the petition "failed to state a claim."

Testimony submitted late: Defendant objected that Plaintiff had not submitted its testimonial depositions "in a timely fashion," but the objection was overruled, since "Defendant did not suffer any cognizable prejudice."

Too much confidentiality: The Board was not pleased that a "good portion of the record" was designated as Confidential. "[W]e will not be hamstrung by the parties' designation of testimony and evidence as 'Confidential.'" The Board indicated that it would treat as confidential only that which is "truly confidential and commercially sensitive."

Who has priority? There remained to be decided Plaintiff's two oppositions to registration of COMPUTER GEEKS for computer-related goods and services in classes 9, 35, and 4.2 Plaintiff claimed prior use of that mark for a "wide variety of computer-related goods and services."

Plaintiff's testimony established a first use date of November 28, 1995, but only for "computer services in the nature of diagnostics, consulting, and custom assembly of computers."

Defendant asserted a first use date of April 8, 1995 in one application, and had to prove this date only by a preponderance of the evidence. As to the other application, it asserted a first use date of February 1, 1996, and it was required to prove any earlier date (e.g., earlier than November 28, 1995), by clear and convincing evidence. Defendant failed on both counts due to "the uncertainty of [its] testimony on exact dates, as well as the lack of documentary evidence attesting to the use of the mark in 1995."


Likelihood of confusion: The Board noted that this case was "a bit unusual in that neither party in its brief actually points to evidence or arguments regarding the du Pont factors." Plaintiff argued that it should win because (1) the examining attorney for Plaintiff's application thought there was confusion, and (2) Defendant sent Plaintiff two cease-and-desist letters. Not good enough, said the Board: it is not bound by the decisions of examining attorneys, and cease-and-desist letters are not dispositive on the issue. Likewise, Defendant's reliance on certain comments made by Plaintiff's witness was insufficient because the comments were not dispositive admissions.

The Board then found the marks to be identical, but it weighed in Defendant's favor the lack of actual confusion during the more than 10 years that the parties have co-existed in Southern California.

The Board concluded that confusion is likely between Plaintiff's "computer services in the nature of diagnostics, consulting, and custom assembly of computers" and Defendant's computer consulting services (class 42) and its computer hardware (class 9). However, as to "retail store services" and "on-line retail store services," Plaintiff failed to sustain its burden of proof.

Got that?

Text Copyright John L. Welch 2010.

"PAPERCLIP CLUB" for Office Supply Services Not Confusingly Similar to "PAPERCLIP" for Office Furniture, Says TTAB

The Board reversed a Section 2(d) refusal to register the mark PAPERCLIP CLUB & Design for "on-line wholesale and retail store services featuring office and home office supplies," finding it not likely to cause confusion with the registered mark PAPERCLIP for "office and residential furniture." In re The Paperclip Club, LLC, Serial No. 77501562 (March 2, 2010) [not precedential].


The Board concluded that the marks are "highly similar," in light of the shared term PAPERCLIP. The word CLUB is descriptive of Applicant's services, since Applicant's website indicates that it operates a membership club. The design portion of the mark simply reinforce the term PAPERCLIP. [I like to reinforce paperclips with STAPLES - ed.].

As to the goods/services, the Examining Attorney pointed to Applicant's website, which shows that Applicant sells furniture, and she argued that office supplies encompass furniture. Applicant contended that consumers of its services and purchasers of office furniture are sophisticated.

The Board found the Examining Attorney's evidence insufficient. There was no evidence that office furniture is "encompassed within office and home office supplies:" i.e., no evidence that "purchasers understand or refer to office furniture such as desks, chairs, and bookcases as office supplies." In fact, Applicant's website has separate categories for furniture and office supplies.

Thus, the principle that confusion is likely to result from the use of the same or similar mark for goods, on the one hand, and for services involving those goods, on the other, is not applicable in this case. Furthermore, the mere fact that office furniture is one of the many products applicant sells is insufficient to show that applicant’s identified services and registrant’s goods are related. There is no evidence that applicant’s services and registrant’s goods are of a type which may emanate from a single source ....

As to Applicant's "sophistication" argument, the Board pointed out that there are no pertinent limitations in the application or cited registration, and therefore the Board must assume that all normal classes of purchasers are involved, including ordinary consumers.

And so, the Board reversed the refusal to register, but pointed out that "on a more complete evidentiary record, it might reach a different conclusion."

TTABlog comment: I wonder why the Board sometimes makes the statement that "on a more complete evidentiary record," it might reach a different result. It certainly is an encouragement for the cited registrant to oppose, isn't it? Or is it intended to teach the Examining Attorney a lesson? Anyway, it seems inappropriate to me.

Text Copyright John L. Welch 2010.

"USEFUL NETWORKS" Merely Descriptive of Location Software, Says TTAB, Questionably

The Board affirmed two refusals to register the mark USEFUL NETWORKS in standard character and design form, finding the term to be merely descriptive of computer software for physically locating people and for related software development services, and the logo unregistrable absent a disclaimer of the term. In re Useful Networks, Inc., Serial Nos. 77364008 and 77364155 (March 3, 2010) [not precedential].


Examining Attorney Geoffrey Fosdick maintained that USEFUL NETWORKS immediately "conveys the fact that applicant's software and software consulting 'utilize communication network devices to create useful social networks.'" He relied on dictionary definitions of "useful" and "network " and on excerpts from Applicant's website discussing "social networking,"

Applicant Useful Networks contended that a multiple step reasoning process is needed "to conclude that products bearing this mark are for use in physically locating people." It asserted that the mark suggests only a desirable end result without describing the goods and services themselves. Useful pointed to nine third-party registrations containing the words "use," "user," or "useful" without a disclaimer or a claim of acquired distinctiveness.

The Board found it "clear" that Applicant's software and services create "useful networks (i.e., valuable connections between users and service providers)."

While the term “useful networks” does not in and of itself directly convey that the software applications and services related thereto involve location based
services, it is a laudatory term and merely descriptive of the goods and services because it describes a quality that all networking software and services aspire to achieve (i.e., to make useful connections for its users). In this regard, a laudatory term that describes the merits of the goods and/or services is merely descriptive because it describes the characteristics or quality of the goods in a condensed form.

The Board opined that such "location-based technology increases the usefulness [of] the software applications ... and, therefore, is the epitome of a 'useful network.'" The mark "directly describes the purpose of applicant's goods and services: that is the creation of useful networks of mobile communication device users."

The Board rejected Useful's contention that the combination of the words creates some commercial impression different from the individual works. And, of course, the fact that Useful may be the first and only user of the term does not avoid the mere descriptiveness bar.

And so the Board affirmed the two refusals.

TTABlog comment: Sorry, but I don't buy this one. "Useful networks" just doesn't tell me anything about the goods and services, and I don't see it as all that laudatory. I mean, is that a great selling point? We'll make your network useful? Ho-hum. I would have given Useful the benefit of the doubt on this one.

Text Copyright John L. Welch 2010.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Text Copyright John L. Welch 2010.

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

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


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

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

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

Text Copyright John L. Welch 2010.

Interesting TTAB Statistics in Report to February TPAC Meeting

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

· TTAB Receipts – First Quarter of FY10 compared to FY09

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

· Pendency – First Quarter of FY10 compared to FY09

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

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

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

· Accelerated Case Resolution (ACR)

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

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

TTABlog postscript: A reader called me to voice disagreement with this statement in the TTAB report: "Approximately 97% of trial cases settle before decision by a panel of judges." The reader says that it is true that about 3% of cases go to trial, but the other 97% are not all settled. They are disposed of by motion, procedural ruling, withdrawal, etc., and no one really knows how many are actually "settled." Perhaps "resolved" would be a better term to use.
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TTAB Dismisses 2(d) Opposition, "MILANZA" Too Different from "POTENZA" and "TURANZA" for Tires

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


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

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

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

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

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

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

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

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

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

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

Family of Marx
Text Copyright John L. Welch 2010.

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

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


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

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

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

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

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

As for American Fertility:

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

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

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

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

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

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

Text Copyright John L. Welch 2010.

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

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


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

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

Text Copyright John L. Welch 2010.

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

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


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

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

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

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

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

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

And so the Board denied the motion.

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

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

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

Text Copyright John L. Welch 2010.