TTAB Dismisses 2(d) Opposition: Marks Similar but Goods and Services, Trade Channels, and Purchasers Too Different

Despite the strength of General Cable's "Roleaux" mark (below right), and the similarity between that mark and National Rural's design mark (below left), the Board dismissed this Section 2(d) opposition. It found National Rural's services so different from General's goods and services, the channels of trade and classes of customers so different, and the potential purchasers so knowledgeable and careful, that confusion is not likely. General Cable Technologies Corporation v. National Rural Electric Cooperative Association, Opposition No. 91165554 (June 25, 2009) [not precedential].


National Rural sought to register its mark for "promoting the interests of electric cooperatives by promulgating standards for uniform data formatting for facilitating the transfer of data between software applications." General Cable relied on its registered "Roleaux" design mark for wires, cables, and related products and services.

General Cable claimed that its mark is famous, but despite use of the mark since 1927, more than $5 billion in sales of wire and cable during the period 2003-2007, extensive advertising, and ranking as the largest supplier of energy cable in the United States, its proof fell short. The problem was that General Cable primarily displays the "Roleaux" mark adjacent the words "General Cable," and there was no evidence that the design has any renown independent of the trade name. The Board did, however, find that the mark to be "strong and distinctive."


As to the marks, the Board spent little energy in finding them to be similar in overall impression ("intersecting arcs forming a circular triangle").

As to the goods/services, on their faces, General Cable's products and services and National Rural's services (essentially trade association services for electric utilities in the nature of promulgating data transfer services) are different in character and use. Although both sell their goods/services to electric cooperatives, "that does not change the distinctly different character and use of their goods and services." The Board found no evidence that the goods and services of the parties "will come to the attention of the same types of actual or potential consumers or users suggesting a common origin."

The Board noted that Opposer and Applicant attend the same trade shows and place advertisements in the same publications, and at one show the involved marks were displayed at adjacent booths. General Cable claimed that the channels of trade and classes of consumers are identical.

The problem with opposer's argument is that opposer presumes that the same people who buy wire and cable for an electric cooperative are also involved with the software used by electric cooperatives. There is no evidence regarding the organization of electric cooperatives that establishes that the persons in charge of information technology are also responsible for purchasing wire and cable. Considering the obvious complexity involved in distributing electricity and managing an electric cooperative, it is inconceivable that the individuals in charge of information technology are also involved with the purchasing of wire and cable.

Indeed, the Board found no evidence that the same people in charge of information and technology are the same people who purchase wire and cable. Therefore, it concluded that the channels of trade and classes of consumers are different, despite the fact that the involved goods and services are marketed to electric cooperatives through the same media.

Turning to the degree of consumer care, the Board found that the involved purchasers exercised "careful consideration" and are "knowledgeable about the goods and services and their source."

Finally, the lack of any reported incidents of actual confusion, according to the Board, supported its finding that the trade channels and classes of customers are different.

Balancing the relevant du Pont factors, the Board found no likelihood of confusion, and it therefore dismissed the opposition.

TTABlog comment: I don't find the marks to be that similar, do you? Applicant's mark reminds me of a stylized drawing of an atom or molecule or something of that ilk. Opposer's mark reminds me of a camera lens.

Three years ago, National Rural was on the losing end of another inter partes battle over two design marks, when it sought to cancel a registration for the mark shown below left, based on its mark shown below right. The Board found the similarity between the marks to be "not great," in large part because of the inclusion of the word SUZLON in the challenged mark. (TTABlogged here).


Text Copyright John L. Welch 2009.

Antler Trade Dress Fails to Function as a Trademark for Ammunition, Says TTAB

The Board affirmed a refusal to register the design shown below as a trademark for ammunition, finding that it fails to function as a source indicator. Applicant Alliant fired a blank with its claim that the design is inherently distinctive, the Board concluding that the design is not so unique that it would automatically be perceived as a trademark. In re Alliant Techsystems Inc., Serial No. 78546549 (July 2, 2009) [not precedential].


The Board applied the "time-tested" analysis of Seabrook Foods, Inc. v. Barwell Foods, Ltd., 196 USPQ 289 (CCPA 1977) in determining whether Alliant's trade dress is inherently distinctive. In essence, according to Prof. McCarthy, the question is whether the design "is so unique, unusual or unexpected in this market that one can assume without proof that it will automatically be perceived by customers as an indicia of origin -- a trademark."

Alliant urged that the design "creates a separate commercial impression upon the buyer as it emerges out of a background and hits the buyer in the eye in such a way that it is easily recognizable by consumers as a source indicator." According to Alliant, its design is "suggestive of a high-technology, high-energy molecular reaction through the use of vibrant colors (red, orange and yellow) complimented (sic) by linear, dotted, and swirling patterns and framed by uniquely positioned deer antlers."


Examining Attorney Dayna J. Browne relied on product packaging of several competitors in the ammunition industry, including some showing "a variety of pictorial representations of deer, ranging from full body deer to deer silhouettes to a deer head with antlers. No matter the type of representation, the deer is always displayed with antlers." Other packaging showed the use of colors like red, yellow, and orange, "presumably to suggest an explosion caused by the ammunition."

The Board noted Alliant's statement that the product "is made specifically for deer hunting," and that the design is always used with Alliance's mark FUSION. While it conceded that the colors of Alliance's packaging are "very bright," the Board found that brightness alone is not sufficient "to transform the packaging into an inherently distinctive trademark for applicant's goods." It concluded that

... the combination of the swirling bright colors and the deer antlers, as described in the description of the mark, is not so unique or unexpected in the ammunition market to conclude that the design automatically is perceived as a trademark for applicant's ammunition.

Alliant's design, said the Board, "is essentially a mere decorative or ornamental background for the display of its mark FUSION." The fact that the design covers the entire packaging added to the Board's view "that buyers will not perceive the design as a source indicator."

And so the Board affirmed the refusal to register under Sections 1, 2, 3, and 45 of the Trademark Act.

TTABlog comment: Applicant Alliant has been using the mark for more than four years. Do you think that, a year from now, the five-year presumption may be enough to get this design registered under Section 2(f)? Or will more be required?

Note that the competitor packaging included deer with antlers. What if one showed a deer without antlers? Would that be inherently distinctive? Or does one not shoot antler-less deer?

Text Copyright John L. Welch 2009.

CAFC Rules on Whether "SEED TO PLATE" Design Marks are Confusingly Similar

In a nonprecedential disposition, the U.S. Court of Appeals for the Federal Circuit ruled today on whether the two marks shown below, both for services related to "growing crops as food," are likely to cause confusion. In re Northland Organic Foods Corp., Appeal No. 2009-1139 (Fed. Cir. July 8, 2009). What do you think?


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Another WYHA? TTAB Affirms 2(e)(4) Surname Refusal of "MERIWETHER" for Cabinetry

The Board affirmed a Section 2(e)(4) refusal to register the mark MERIWETHER for cabinetry, finding it to be primarily merely a surname. Applicant Masco argued that the mark has non-surname significance as the first name of explorer Meriwether Lewis, but that argument, unlike Lewis, went nowhere. In re Masco Builder Cabinet Group, Serial No. 77309908 (June 15, 2009) [not precedential].

Meriwether Lewis
Examining Attorney Dominic J. Ferraiuolo proffered more than 300 listings for persons with the surname MERIWETHER in the United States ("not an especially rare surname," observed the Board). The mark has the "look and sound" of a surname, the Board opined, and "does not look like a coined term or an acronym, nor anything else but a surname."

Based on these findings, we find, prima facie, that MERIWETHER is primarily merely a surname. MERIWETHER, depicted in standard character form, looks like a surname, and it in fact is a surname.

The next question was whether this prima facie case was overcome by any recognized non-surname meaning or significance.

Masco contended that MERIWETHER has non-surname significance as (1) the first name of Meriwether Lewis of the Lewis and Clark Expedition, and (2) as the name of the Meriwether National Golf Club, near Portland, Oregon.

The Board noted that Masco's evidence showed that MERIWETHER is not merely a surname, but the question is "what the primary significance of the mark would be to the purchasing public." The Board pointed out that "[t]he mere existence of non-surname meanings does not preclude a finding that the mark is not merely a surname."

The Wikipedia entry for "Meriwether Lewis" (here) discusses his role in the famous Expedition, but there was no evidence that consumers are aware that Lewis' first name was Meriwether, "much less any evidence that they would recognize or refer to Meriwether Lewis by his first name." Lewis is not an historical figure of such renown that consumers, seeing the word MERIWETHER, would think it referred to Lewis, rather than perceiving it primarily as a surname.

As to the Meriwether National Golf Club, even assuming that the club was not named after someone with the surname MERIWETHER, there was no evidence that this golf club is well-known to consumers, even golf fans. This non-surname significance is "much too obscure to support a finding that it, rather than the surname of significance of MERIWETHER, is the primary significance of MERIWETHER."

The Board concluded that there are no recognized non-surname meanings of MERIWETHER that eclipse its surname significance, and so it affirmed the refusal.

TTABlog comment: The golf course evidence was obviously feeble, but the Meriwether Lewis argument wasn't much better. Would you have given it a shot on appeal? What do you think a survey would have shown as to people's perception of the word MERIWETHER? Given that, as H.L. Mencken said, the average American is below average, I think one in ten thousand would say "Meriwether Lewis."

Text Copyright John L. Welch 2009.

WYHA? TTAB Affirms 2(e)(1) Mere Descriptiveness Refusal of "SENSOR DOME" for Kitchen Cooktops

Would you have appealed from this Section 2(e)(1) refusal? Examining Attorney David S. Miller deemed the mark SENSOR DOME merely descriptive of household and kitchen machines and equipment, including ovens, ranges, and cooktops. The Board affirmed in a brisk, 7-page opinion that relied largely on Applicant's own admissions during prosecution. In re BSH Home Appliances Corporation, Serial No. 77298376 (June 15, 2009) [not precedential].


Examining Attorney Miller cited dictionary definitions of "sensor" and "dome" and third-party websites showing that "ovens, ranges and cooktops typically, if not always, have one or more temperature sensors and that such sensors may take a variety of shapes, including a domelike shape."

If that weren't enough, Applicant BSH provided further ammunition when it responded to the PTO's Rule 2.61(b) inquiry regarding the nature of the goods, stating that the goods "may incorporate a sensor," "may be domelike in shape," and "may include a sensor or a related part that is domelike in shape," and that "neither the term SENSOR nor the term DOME have any other meaning or significance as applied to Applicant's identified goods."

And if that weren't enough, BSH's advertising stated that its new electric cooktops feature "infrared sensor technology" and a "retractable dome that continuously measures the heat from the cookware."

The Board found that this evidence clearly established that SENSOR and DOME are merely descriptive of the goods. Moreover, the composite SENSOR DOME "does not result in an incongruous, clever or otherwise inherently distinctive composite."

The mark as a whole immediately informs purchasers that applicant's ovens, ranges, and cooktops feature and use a dome-shaped temperature sensor.

And so the Board affirmed the refusal.

TTABlog comment: Well, the appeal fee is only $100.00.

Text Copyright John L. Welch 2009.

TTAB Affirms Failure-to-Function Refusal of Folded Brochure as Service Mark

The Board said no to Applicant Kathy Sayah's attempt to register the shape and design of a folded brochure (shown below) as a service mark for advertising and printing services, because the brochure fails to function as a mark. The Board found the brochure to be not inherently distinctive and it deemed Sayah's proof of acquired distinctiveness to be insufficient. In re Sayah, Serial No. 76486273 (June 18, 2009) [not precedential].


Sayah's design consists of "the size and shape of folded printed materials finished to a size of approximately 2 inches by 4 inches; the location of a business name or picture on the front cover; the location of a map and a border of approximately one sixteenth of an inch on the back cover; the location of a product or a price list between the front and back cover. The name of the business and the map are not party (sic) of the design." For ease of reference, the Board called the alleged mark the "Folded Printed Material Design."

The Board first noted that in Two Pesos, the Supreme Court ruled that trade dress used in connection with restaurant services may be (and in that case was) inherently distinctive. But not all trade dress is inherently distinctive: it depends on the facts of the case and on whether consumers are "predisposed" to view the particular type of trade dress as a source indicator. Here, the Board concluded that the public was not so predisposed, and further that the trade dress was not inherently distinctive anyway.

In this case we conclude, without hesitation, that Applicant's Folded Printed Material Design is not the type of trade dress which relevant consumers are predisposed to view as a source indicator. See, e.g., In re Hudson News Co., 39 USPQ2d at 1923. We likewise conclude, without hesitation, that the Folded Printed Material Design is not inherently distinctive.

The elements of Sayah's alleged mark -- pocket-size, a name or picture on the cover, a map on the back, and a product or price list inside. -- are "extremely common" and appear in "many, if not most, advertisements or other printed material used by businesses in the travel, entertainment, and restaurant industry, or elsewhere." The proposition that purchasers will view this design as inherently distinctive is "not credible."


Moreover, these elements are so common that, in attempting to prove acquired distinctiveness, Sayah faced a "substantial, if not insurmountable burden."

Sayah claimed use of the design since 1994, distribution of more than 58 million brochures employing the design, display of the brochures in more than 500 hotel and motel lobbies, exposure of the design to more than 27,000 hotel employees and 50 million consumers, and expenditure of $540,000 to promote the design.

The Board, however, pointed to the lack of any evidence that would show "what impact ... these various activities have had on relevant consumers."

... we have no evidence, and certainly no direct evidence, that anyone perceives the Folded Printed Material Design as a source indicator for Applicant's services. This is especially important in a case, such as this one, where the alleged mark is so broadly and even vaguely defined. Accordingly, we find Applicant's evidence of acquired distinctiveness wholly insufficient under the circumstances of this case.

Sayah's use of the mark for 15 years has "little probative value" in view of the "broad description" of the design. The evidence, the Board concluded, falls "far short" of meeting the "especially high" burden of proof in this case.

And so the Board affirmed the refusal under Sections 1, 2, 3, and 45 of the Trademark Act.

TTABlog comment: One might consider Sayah's trade dress to be de jure functional and perhaps generic. But let's not pile on.

Sometimes when I'm bored in a meeting or a deposition, I fold a piece of paper into a cube (water bomb), or a bird, or a frog. Suppose one were to claim service mark rights in a folded origami frog that had advertising material printed on it? Registrable for advertising services?

Text Copyright John L. Welch 2009.

CAFC Affirms TTAB's Shinnecock Smoke Shop Section 2(a) Ruling

The U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's judgment in the Shinnecock Smoke Shop case, in which the Board affirmed the PTO's Section 2(a) false association refusal of the two marks shown below, for cigarettes. (TTABlogged here). The Board found that the marks falsely suggest a connection with the Shinnecock Indian Nation. In re Shinnecock Smoke Shop, Appeal No. 2009-1100 (Fed. Cir. July 1, 2009) [precedential]. [An mp3 of the oral argument before the CAFC may be found (here).]


Applicant/Appellant argued that the Shinnecock Indian Nation is not a "person" or "institution" under Section 2(a), but the court agreed with the TTAB that the Nation is indeed an institution. That conclusion, the court found, is in accord with Board precedent and the ordinary meaning of the term.

Applicant also contended that the "institution" issue was not raised below, but the record showed otherwise. Indeed, Applicant's own brief to the Board stated that, after the PTO final rejection, it "filed a request for reconsideration, arguing, among other things, that the Tribe is not a person or institution within the meaning of Section 2(a)."

Finally, Applicant asserted that the PTO's refusal to register the arks, when it has registered "supposedly similar marks also involving Indian tribe names to non-Indians, shows a pattern of racial discrimination," in violation of the Due Process and Equal Protection Clauses of the Fifth Amendment, and of the United Nations' International Convention on the Elimination of All Forms of Racial Discrimination (CERD).

The court ruled, however, that there was no due process violation because Applicant was accorded a full opportunity to prosecute the applications and to appeal the PTO's final refusals to the TTAB. The allegations regarding similar marks are irrelevant because each application must be considered on its own merits, regardless of whether the PTO erred with regard to some other applications.

There was no equal protection violation because the Board and PTO had legitimate, nondiscriminatory reasons for denying registration, and because the most Applicant could establish is that the PTO should have rejected the other marks as well. Moreover, Applicant assumed that the other applicants were not Indians and that this is the reason why their marks were registered. The court agreed with the Board that "[i]t is entirely reasonable to assume that these registrations were issued not because the applicants therein were non-Indians, but because the elements of the Section 2(a) refusal were not or could not be proven by the Office."

Finally, Applicant reliance on CERD was misplaced because CERD is not a self-executing treaty, and affords no private right of action.

And so the court affirmed the TTAB's ruling.

Text Copyright John L. Welch 2009.

Precedential No. 26: TTAB Affirms Descriptiveness Refusal of "BATTLECAM" for Computer Game Software

Applicant Petroglyph Games won the identification-of-goods battle but lost the registration war regarding its mark BATTLECAM for "computer game software." In a rather odd ruling, the Board reversed the PTO's requirement that Petroglyph provide a new identification of goods. It then affirmed the Section 2(e)(1) refusal, finding the mark merely descriptive of a feature of game software. In re Petroglyph Games, Inc., Serial No. 78806413 (June 19, 2009) [precedential].

Click on picture for larger image
Identification of goods: Examining Attorney Khanh M. Le contended that "computer game software" is an inaccurate identification because the specimen of use (above) shows the mark being used only for a feature of a computer game. [The word BATTLECAM with an adjacent "TM" appears near the the row of blue lights toward the bottom of the specimen; click on the photo above to see a larger image of the specimen]. The Board, however, pointed out that the feature "remains, at bottom, computer code that allows the feature to be activated and used by or controlled by a player." It concluded that Applicant's identification of goods is acceptable:

Certainly the entire collection of code used for a particular game can aptly be referred to as "computer game software"; but we conclude that subsets of such code that would support only particular aspects or features of a game can also be accurately identified by such an identification.

Although it may be more accurate to refer to a game feature as "a feature of computer game software that allows users to ____ (specify function)," as the Examining Attorney suggested, "it would not be inaccurate to identify such software simply as computer game software."

And so the Board reversed the refusal to register based on Petroglyph's identification of goods.

Mere Descriptiveness: The Board found that "battle" is clearly "descriptive of computer games that feature battles as part of the game." Moreover, "it could not reasonably be argued that a game entitled STAR WARS EMPIRE AT WAR would not feature battles or combat of some type."

As to "cam," Petroglyph argued that the term is most likely to be perceived as an acronym for "computer-aided manufacturing" or a shortened version of "camshaft." It lamely argued that the term BATTLECAM is an incongruous composite having no obvious meaning:

"arguably the only relationship would be some form of entertainment between mechanics battling away at repairing cam shafts in a vehicle." *** "BATTLECAM might be descriptive or suggestive of a customized camshaft specifically designed for use by auto mechanics to obtain a competitive advantage in a racing or demolition derby setting."

The Board was not impressed. It found, based on the record, that "the function or feature within a game that allows a player to resort to alternative views of the playing field, elements thereof, or participants thereon, is referred to by players as a 'camera,' 'battle camera' or 'battlecam'; and the fact that such feature may not fit the dictionary definition of a camera is unimportant."

The Board had no hesitation or doubt that relevant purchasers will immediately understand BATTLECAM to describe a feature of computer game software.

TTABlog comment: I don't understand why the Board accepted Applicant's identification if the goods Petroglyph is offering comprise complete computer games. Was there any evidence that Applicant was offering only code (i.e., software) for a particular feature? If it sold entire games, the Examining Attorney's "a feature of computer game software that allows users to ____ (specify function)" seems appropriate. If Applicant was offering only the code for a particular feature, then "software for a computer game feature" seems appropriate.

As a practical matter, however, what difference would it make?

Text Copyright John L. Welch 2009.

TTAB Posts July 2009 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled six hearings for the month of July, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]. Briefs and other papers for these cases may be found at TTABVUE via the links provided.


July 8, 2009 - 11 AM: Sunkist Growers, Inc. v. Style Factory, LLC, Oppositions Nos. 91176970 and 91176973 [Section 2(d) oppositions to registration of SMILE PACK (SMILE disclaimed) and SMILE FACTORY for "processed sliced fresh apples," based upon Opposer's prior use and registration of SMILE and SMILE-formative marks for fresh fruit and fresh cut fruit].


July 21, 2009 - 11 AM: In re The Lex Group VA, Serial No. 76665046 [Section 2(e)(1) mere descriptiveness refusal to register E-LEX for "litigation support services for attorneys provided via an electronic network with court-specific consultation on the rules and implementation of procedures for filing electronically"].

July 21, 2009 - 2 PM: In re World's Finest Chocolate, Inc., Serial No. 78582690 [Section 2(d) refusl to register the mark MOCHACCINO MELTAWAYS (MOCHACCINO disclaimed) for candy in view of the registered mark CAPPUCCINO MELTAWAYS for candies].


July 22, 2009 - 2 PM: In re Scrum Alliance, Inc., Serial No. 77095301 [Section 2(e)(1) mere descriptiveness of the certification mark CERTIFIED SCRUMMASTER (CERTIFIED disclaimed) for "Training, mentoring, and tutoring services in the fields of product development, product design, product development consultation, product manufacturing consultation, computer software development and computer software development management; Educational services, namely, conducting classes, seminars, workshops in the fields of product development, product development consultation, product manufacturing consultation, computer software development and computer software development management; Providing information in the fields of product development, product design, product development consultation, product manufacturing consultation, computer software development and computer software development management; Project management services, product development services, product development and design consultation, and product manufacturing consultation"].


July 28, 2009 - 10 AM: Christopher Brooks v. Creative Arts by Calloway, LLC, Opposition No. 91160266 [Section 2(d) opposition to registration of the mark CAB CALLOWAY for retail music store services and entertainment services, on the ground of likely confusion with the previously used mark THE CAB CALLOWAY ORCHESTRA for musical recordings and entertainment services].

Cab Calloway
July 30, 2009 - 2 PM: Unido Financial Services, Inc., Serial No. 77126814 [Section 2(d) refusal to register the mark ....UNIDOS.... AL ALCANCE DE TU MANO (Stylized) for money transfer services in view of the registered mark UNITED for check cashing, money transfer and money order services].


Text Copyright John L. Welch 2009.

TTAB Denies Motion to Amend Cancellation Petition to Add New Classes Because Fee Did Not Accompany Motion

Maybe it's just me, but I found this decision surprising. Petitioner Fred Beverages filed a motion to amend its petition for cancellation of Registration No. 3051906, seeking to add three more classes to the petition. The Board denied the motion because it "was not accompanied by any payment or authorization to charge respondent's [sic] deposit account for any of the additional classes sought to be cancelled." Fred Beverages, Inc. v. Fred's Capital Management Company, Cancellation No. 92048454 (June 26, 2009) [not precedential].


The Board cited Rule 2.111(c)(1) for the proposition that a petition for cancellation "must be accompanied by the required fee ... for each class in the registration for which cancellation is sought." It noted that Rule 2.112(b) similarly states that "[t]he required fee must be included ... for each class sought to be cancelled."

But Fred Beverages wasn't filing a petition for cancellation. It was filing a motion for leave to amend its current petition. If and when leave were granted, presumably Fred Beverages would have paid the fee when it filed the new petition.

This decision seems wrong to me. What do you think?

Text Copyright John L. Welch 2009.

TTABlog Quarterly Index: April - June 2009

The TTABlog now accepts comments -- so go ahead, hit me with your best shot! Note also that you may now follow The TTABlog on Twitter (here). E-mail subscriptions to the TTABlog continue to be available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. Please report any broken or inoperative links, as well as any errors and omissions, to the TTABlogger.


Section 2(a) - deceptiveness:

• TTAB Chops Down Evasive "SILVER BIRCH" Applicant with Three Well-Aimed Strokes

Section 2(a) - disparagement:

• Steve Baird Thinks the Washington Redskins Need a Re-Branding
• Back to the Board: Is "REDSKINS" Disparaging or Not?

Section 2(a) - scandalous:

• TTAB Affirms Two More Section 2(a) Scandalous Refusal
• TTAB Affirms PTO's Latest Section 2(a) Scandalous Refusal

Section 2(a) - suggesting a false connection:

• Would You Have Appealed from this TTAB Trifusal?

Section 2(b) - flag, coat of arms, insignia:

• Would You Have Appealed from this TTAB Trifusal?

Section 2(d) - likelihood of confusion:

• Precedential No. 25: "VANTAGE TITAN" and "TITAN" Confusingly Similar for Related Medical Devices, Says TTAB
• Precedential No. 23: TTAB Refuses to Hear Belated Fraud Claim, Finding It Not Tried By Consent
• Fame of Gibson Guitar's "Dove Wing Peg Head" Design Brings TTAB 2(d) Victory
• Test Your TTAB Eyeball-Ability With These Five "CL" Stylized Marks for Jewelry
• "AMERICAN GIRL" Tops "AMERICAN BOY" in TTAB 2(d) Clothing Confrontation
• Appeal from a Section 2(d) Refusal: You Be the TTAB Judge!
• TTABlog WYHA: Would You Have Appealed This 2(d) Refusal?
• Teenie Weenie Wins Split Decision Over Paddington in TTAB 2(d) Battle-of-the-Bear-Designs
• Divided TTAB Panel Disagrees over Doctrine of Equivalents, Reverses 2(d) Refusal of "ALLEZ FILLES!" Over "GO GIRL"
• Precedential No. 21: TTAB Sustains “PALOMA” 2(d) Opposition to “PALOMITA” for Clothing, But Dismisses Claim for Fraudulent Misuse of ® Symbol
• Precedential No. 19: Family-of-Marks Argument Not Available to Overcome 2(d) Refusal; Sophisticated Purchaser Claim Fails Too
• Lacking Proof that Cosmetics and Medicated Lotions Are Related, TTAB Tosses Out 2(d) Refusal of "REVIVE WITH THI"
• TTABlog Challenge: Test Your TTAB Judgeability
• Precedential No. 18: Refusing to Read Limitations into Cited Registration, TTAB Affirms 2(d) Refusal of "WAVE" for Recreational Trailers
• "BIG O TIRES" TTAB Challenge to "BIGG WHEELS" for Automobile Wheels Goes Flat
• TTABlog Challenge: You Be The TTAB Judge!
• TTAB Says "So Longo, BADONGO" in 2(d) Opposition to "PODANGO"

Section 2(e)(1) - mere descriptiveness:

• TTAB Reverses Two Refusals of "CARPET TO CARPET" for Reclamation Services
• Precedential No. 22: Saying No-No to Double Entendre Argument, TTAB Deems "URBANHOUZING" Merely Descriptive of Real Estate Services
• TTAB Affirms Mere Descriptiveness Refusal of "AUTOPROBE" for Soil Sampling Machines and Related Services
• TTABlog 2(e)(1) Triple-Header: Mere Descriptiveness is Not a Guessing-Game!
• Tip from the TTABlog: Don't Use the Applied-For Mark Descriptively in the Identification of Goods
• TTABlog WYHA? TTAB Affirms Descriptivness Refusal of "SILICON ULTRASOUND" for Ultrasound Devices Utilizing ... Guess What?
• TTAB Chops Down Evasive "SILVER BIRCH" Applicant with Three Well-Aimed Strokes

Section 2(e)(2) - primarily geographically descriptive:

• Precedential No. 14: TTAB Finds "THE MONTECITO DIET" Not Primarily Geographically Descriptive of Diet Publications

Section 2(e)(3) - primarily geographically deceptively misdescriptive:

• CAFC Vacates TTAB's "MOSKOVSKAYA" Vodka Ruling, Clarifies 2(e)(3) Materiality Test

Section 2(e)(4) - primarily merely a surname:

• Applicant Fails to Prove Historical Significance of "DAIMLER" for Vehicles, TTAB Affirms 2(e)(4) Surname Refusal

Section 2(e)(5) - functionality:

• TTAB Finds Design of "MOI" Putter Head Functional Under Section 2(e)(5)
• Applicant's Own Boastful Advertising Leads TTAB to Find Tray Design Functional

Section 2(f) - acquired distinctiveness:

• Precedential No. 24: TTAB Finds Another Motorola "Chirp" Sound Unregistrable
• Applicant's Own Boastful Advertising Leads TTAB to Find Tray Design Functional
• TTAB Finds Religious Habit Not Registrable: Lacks Distinctiveness, Inherent or Acquired
• Precedential No. 13: TTAB Axes Fender Guitar Shapes, Finding Them Generic or Lacking Acquired Distinctiveness

Section 14(3) Misrepresentation:

• Precedential No. 17: TTAB Dismisses Bayer "FLANAX" Cancellation Claims - No Famous Marks Exception in US Law

Abandonment:

• TTAB Finds "RUSSKAYA" for Vodka Abandoned, Cancels Registration

Bona Fide Intent:

• Precedential No. 15: Finding No Evidence of Bona Fide Intent to Use Mark in US, TTAB Sustains Opposition to 44(e) Application

Costumes/Habits:

• TTAB Finds Religious Habit Not Registrable: Lacks Distinctiveness, Inherent or Acquired

Drawing Requirement:

• Would You Have Appealed from this TTAB Trifusal?

Failure to Function/Non-distinctiveness:

• TTAB Finds Religious Habit Not Registrable: Lacks Distinctiveness, Inherent or Acquired

Famous Marks Doctrine:

• Precedential No. 17: TTAB Dismisses Bayer "FLANAX" Cancellation Claims - No Famous Marks Exception in US Law

Fraud:

• Precedential No. 23: TTAB Refuses to Hear Belated Fraud Claim, Finding It Not Tried By Consent
• Precedential No. 21: TTAB Sustains “PALOMA” 2(d) Opposition to “PALOMITA” for Clothing, But Dismisses Claim for Fraudulent Misuse of ® SYMBOL
• TTAB Re-Designates Zanella v. Nordstrom Fraud Ruling As Precedential
• TTABlog Comment: Fraud and the Digital Camera
• CAFC Hears Oral Argument in Bose Fraud Appeal
• TTAB Rules, Non-Precedentially, that Fraud May be "Cured" Post-Registration
• Precedential No. 12: TTAB Again Says False Statement of First Use Date is not Fraud

Genericness:

• TTAB Finds "SPEEDOMETER" Generic for ... You'll Never Guess What
• TTAB Finds "X-PIPE" Generic for ... Guess What?
• Precedential No. 13: TTAB Axes Fender Guitar Shapes, Finding Them Generic or Lacking Acquired Distinctiveness

Ownership:

• Pam Chestek Ponders the Transfer of Common Law Trademarks under State Law
• TTAB Affirms Rejection of SOU filed by Assignor After Assignment
• TTAB Resolves Santana's Ownership Dispute, But Pamela Chestek is Dissatisfied
• TTAB Finds No Trademark Rights in OEM Who Applied "WASTEMAID" Mark at Others' Direction

Priority:

• Precedential No. 16: TTAB Throws New England Patriots for Another Loss in "19-0 THE PERFECT SEASON" Opposition

Procedural Issues:

• Precedential No. 23: TTAB Refuses to Hear Belated Fraud Claim, Finding It Not Tried By Consent
• On Remand from CAFC, TTAB Re-Jettisons Bishop v. Flournoy Oppositions
• Precedential No. 20: TTAB Enters Judgment Due to Defendant's Blatant Failure to Comply with Board Order
• Lost and Found: 2007 TTAB Precedential Decision Rejects Belated Supplemental Discovery Responses
• TTAB Says "So Longo, BADONGO" in 2(d) Opposition to "PODANGO"

Res Judicata:

• Precedential No. 24: TTAB Finds Another Motorola "Chirp" Sound Unregistrable

Rule 2.61(b) Request for Information:

• TTAB Referees PTO Translator Tussle, Accepts Applicant's Translation of "FIOR DI GRANO"
• TTAB Chops Down Evasive "SILVER BIRCH" Applicant with Three Well-Aimed Strokes

Single Creative Work:

• TTAB Affirms Single Creative Work and Mutilation Refusals of "CHOOSE TO BE RICH"

Sound marks:

• Precedential No. 24: TTAB Finds Another Motorola "Chirp" Sound Unregistrable

Specimen of Use/Mutiliation:

• "DUNES" on Slot Machines not a Proper Specimen for Casino Services, Says TTAB
• TTAB Says a Principle is not a Service, Affirms PTO Rejection of Specimens of Use
• TTAB Affirms Single Creative Work and Mutilation Refusals of "CHOOSE TO BE RICH"

Use/Use in Commerce

• Precedential No. 17: TTAB Dismisses Bayer "FLANAX" Cancellation Claims - No Famous Marks Exception in US Law
• CAFC Affirms TTAB's "AIRFLITE" Cancellation: Preparations for Use Not Enough for Service Mark Registration

Courts of Appeal:

• D.C. Circuit Affirms Laches Ruling Dismissing "REDSKINS" Cancellation
• CAFC Vacates TTAB's "MOSKOVSKAYA" Vodka Ruling, Clarifies 2(e)(3) Materiality Test
• CAFC Affirms TTAB's "AIRFLITE" Cancellation: Preparations for Use Not Enough for Service Mark Registration

Recommended Reading:

• More Recommended Reading: Jordan Weinstein's TTAB Year in Review
• Recommended Reading: Sandra Edelman on Proving Bona Fide Intent
• Recommended Reading: Glenn Gundersen's Annual Report on Trademark Trends
• Recommended Reading: Ted Davis on "Recent Developments in U.S Trademark Practice"

Other:

• TTAB Posts June 2009 Hearing Schedule
• TTABlog Comment: Fraud and the Digital Camera
• TTABlogger and Jeremy Phillips on IP Think Tank Podcast
• TTAB Posts May 2009 Hearing Schedule
• TTAB Posts April 2009 Hearing Schedule

Text and photos ©John L. Welch 2009.

Precedential No. 25: "VANTAGE TITAN" and "TITAN" Confusingly Similar for Related Medical Devices, Says TTAB

The Board played "Whac-A-Mole" with Applicant Toshiba's several arguments as it affirmed the PTO's Section 2(d) refusal to register the mark VANTAGE TITAN for "medical magnetic resonance imaging diagnostic apparatus, namely, MRI diagnostic apparatus." Despite the sophistication of the purchasers, the differences in the marks and the goods, and the distinctiveness of the word VANTAGE, the Board found the mark likely to cause confusion with the registered mark TITAN for "medical diagnostic apparatus, namely, medical ultrasound device." In re Toshiba Medical Systems Corporation, Serial No. 79046106 (June 18, 2009) [precedential].


The Marks: Toshiba argued that, while addition of a house mark to someone else's registered mark does not avoid likely confusion, the term VANTAGE is not a house mark but a product mark used in two other Toshiba marks. The Board, however, observed that it does not matter whether VANTAGE is a house mark or a product mark. Even if the latter, "[t]he addition of a distinctive term, which is not a house mark, does not necessarily result in marks that are dissimilar." In other words, "there is no rule that adding a product mark to a registered mark avoids confusion while adding a house mark results in confusion."

Inasmuch as the words "Vantage" and "Titan" are not naturally associated, the term TITAN will retain its identify as a separately identifiable mark.

Toshiba pointed to a number of third-party registrations for TITAN-formative marks, contending that TITAN is highly suggestive and deserving of a "very narrow scope of protection." The Board noted, however, that Toshiba offered no evidence that these third-party marks are in use, and further that the registrations involved different goods.

These third-party registrations may, however, be considered "as a form of dictionary definition." Toshiba asserted that TITAN is laudatory (pointing to a TTAB decision involving cigars), but the Board concluded that, with regard to the machines at issue here, TITAN is "only slightly laudatory, and it is not entitled to only a narrow scope of protection."

The Board ruled that the marks are similar, supporting a finding of likely confusion:

... the marks TITAN and VANTAGE TITAN are more similar than they are different. Applicant has taken registrant's mark and added its "product mark" to it. It is not clear why the addition of the word VANTAGE would avoid confusion. It is more likely to be considered another product from the previously anonymous source of TITAN medical diagnostic apparatus, namely, medical ultrasound devices.

The goods: The Board found that "several facts" supported the conclusion that the involved goods are related: (1) they are both medical diagnostic apparatus with imaging functions; (2) both goods "originate from the same source" (i.e., some third party companies, and Toshiba itself, sell both); (3) the goods are used in the same facilities; and (4) the goods can serve complementary purposes because they may be used by medical personnel to treat the same patient for such diseases as prostate cancer.

Toshiba pointed to six pairs of registrations showing that the PTO "has allowed similar marks for MRI and ultrasound equipment." The Board, however, pointed out that third-party registrations "cannot justify the registration of another confusingly similar mark." Moreover, none of the pairs of registrations involved the taking of an entire registered mark and adding an additional word to it, and the marks involved were quite different from those at issue here.

The Board next found that the channels of trade and the concerned purchasers are likely to overlap: "both items [are] likely to be purchased by the same departments of diagnostic facilities with the involvement of the same physicians in the purchasing decision."

Sophistication of purchasers: The Board acknowledged that sophistication of purchasers is "an important factor in avoiding confusion." The goods at issue are expensive and the purchasers are sophisticated. However, the Board noted once again that "even sophisticated purchasers may be confused."

Here, the Board could not conclude that the sophisticated purchasers would not be confused when the marks TITAN and VANTAGE TITAN are used on the respective goods.

These purchasers are likely to be aware that a single entity can be the source of both such products. *** These purchasers, familiar with registrant’s products, are likely to participate in purchasing decisions involving applicant’s goods, and assume that the products are associated or related in some way. The fact that purchasers may study the specimens and determine that applicant’s and registrant’s imaging devices originate from different sources is not relevant. We must consider whether the marks TITAN and VANTAGE TITAN when used on the identified goods are confusingly similar. Dan Robbins & Associates, Inc. v. Questor Corp., 599 F.2d 1009, 202 USPQ 100, 104 n.6 (CCPA 1979) ("Likelihood of confusion occurs upon observance of the mark and goods. It need not await a reading of the book. The mark, not the specimen, is submitted for registration").

The Board therefore affirmed the refusal to register.


TTABlog questions: What is it about this opinion that led the Board to deem it precedential? What do you think of the Board's treatment of the sophisticated purchaser argument? Do you think the Board got this one right? Would you appeal?

Text Copyright John L. Welch 2009.