Tuesday, July 28, 2015

Precedential No. 23: Abandonment and Opposition Filed on Same Day, TTAB Dismisses Opposition Without Prejudice

On December 31, 2014, Applicant Stacy Lee Huggins filed electronically an abandonment of his application to register the mark COKE HEAD for t-shirts. On that same day, 3PMC filed a notice of opposition via the TTAB's ESTTA system. Two months later, the Board entered judgment against Applicant Huggins under Rule 2.135 based on his abandonment of the application without consent. The Board, however, has granted Huggins's Rule 60(b) motion for relief from judgment, ruling that "a day is an indivisible period of time for purposes of the situation presented here." The Board, assuming that the abandonment and notice of opposition were filed at the same instant, held that Huggins's application was not subject to opposition when it was abandoned. 3PMC, LLC v. Stacy Lee Huggins, Opposition No. 91219982 (July 24, 2015) [precedential].

Opposer 3PMC filed its notice of opposition via the TTAB's ESTTA electronic filing system. On that same day, Applicant Huggins filed an abandonment of his application via the USPTO's TEAS electronic filing system.

In his motion for relief from the judgment under FRCP 60(e), Huggins contended that his abandonment had been filed before the opposition was filed, and therefore the opposition proceeding should be dismissed without prejudice.

The Board reaffirmed its holding in In re First Nat’l Bank of Boston, 199 USPQ 296, 301 (TTAB 1978), that it "shall not take cognizance of fractions of a day," and it therefore assumed that the opposition and the express abandonment were filed "at the same instant." "In accordance with our precedent, we conclude that the involved application was not subject to an opposition when it was abandoned, and therefore Trademark Rule 2.135 does not apply."

 The Board noted that the Boston case was decided when all documents were filed on paper and it was not possible to decide which document was filed first. Greater certainty as to timing may be available with electronic filing, but even now computer systems are subject to technological limitations. Moreover, the interaction between TEAS, ESTTA, and TRAM is complicated by the fact that some data is inputted automatically and some by hand.

The Board considered the prejudice that opposer would suffer if the opposition were dismissed without prejudice. Opposer contended that it "may be subject to opposition or cancellation proceedings by Applicant 'down the road' and 'will be forced to monitor the activities of Applicant at the USPTO for an indeterminate amount of time.'" The Board, however, deemed those concerns to be a cost of doing business that did not rise to the level of "manifest injustice" requiring further consideration.

Finally, opposer argued that the Board's ruling here would reduced the period for filing an opposition by one day. The Board pointed out, however, that an applicant may abandon its application at any time during the opposition period, thus completely eliminating the statutory time period for filing an opposition.

The Board therefore granted applicant’s Rule 60(b) motion, vacated its earlier judgment, and dismissed the opposition without prejudice. Opposer's filing fee for the opposition will be refunded.

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TTABlog comment: Well, at least opposer got its money back. But what about interest?

Text Copyright John L. Welch 2015.

Monday, July 27, 2015

Precedential No. 22: Unreasonable Party Loses Right to Substantive Objections to Document Requests

The Board granted Respondent Meenaxi's motion to compel Petitioner Cadbury to respond to Meenaxi's Rule 34 request for documents, which Cadbury had refused to do based on an "an obvious and inadvertent" typographical error in the request. The Board found that Cadbury's position was "unreasonable" and "resulted in the filing of an unnecessary motion, wasting the time and resources of both parties and the Board." It ordered Cadbury to respond to the requests without substantive objections. Cadbury UK Limited v. Meenaxi Enterprise, Inc., Cancellation No. 92057280 (July 21, 2015) [precedential].

Respondent Meenaxi simultaneously served interrogatories and document requests on Cadbury. Cadbury objected to the interrogatories but did not respond or object to the document requests. In the preamble to the document requests Meenaxi referred to Petitioner as "Venture Execution Partners, Inc.," instead of "Cadbury UK Limited." Although the document was correctly captioned, and although Cadbury requested and Meenaxi granted four extensions of time to respond to its "discovery," Cadbury contended that the typographical error was a "crucial mistake, the result of which is that the document requests were never directed to Petitioner."

Cadbury agreed that Meenaxi might serve corrected requests, and so the dispute boiled down to whether Cadbury, by its complete failure to respond, had waived its right to object to the requests.

Cadbury feebly contended the extensions of time for its responding to "discovery" did not contemplate document requests. The Board found Cadbury's claim to be "disingenuous at best." There was no doubt that Cadbury knew that the document requests were served in and related to this cancellation proceeding.

The isolated reference to Venture Execution Partners, Inc., was clearly a typographical error; it did not cause a matter of real confusion or misunderstanding. The motion to compel is the result of Petitioner’s attorney apparently concluding, upon the discovery of a typographical error, that he had found an excuse to become pedantic, unreasonable, and uncooperative. The Board expects each party to every case to use common sense and reason when faced with what the circumstances clearly show to be a typographical error.

The Board noted that if Cadbury had any doubt, it should have contacted Meenaxi for clarification rather than refusing to respond. Or Cadbury could have objected based upon the supposed ambiguity. At a minimum, it should have accepted Meenaxi's explanation, during that latter's good faith effort to resolve the issue, that the single reference to a different company was a typographical error.

The Board will not allow a party to avoid its discovery obligations due to an obvious typographical error such as this one. *** Petitioner’s unreasonable position here has resulted in the filing of an unnecessary motion, wasting the time and resources of both parties and the Board. The Board expects that when there is an obvious and inadvertent typographical error in any discovery request or other filing—particularly where, as here, the intended meaning was clear—the parties will not require the Board’s intervention to correct the mistake.

Granting the motion to compel, the Board gave Cadbury thirty days to respond to the document requests and to produce the requested documents, without objection on the merits. See Amazon, Inc. v. Was, 93 USPQ2d 1702, 1706 n.5 (TTAB 2009) ("Objections going to the merits of a discovery request include those which challenge the request as overly broad, unduly vague and ambiguous, burdensome and oppressive, as seeking non-discoverable information on expert witnesses, or as not calculated to lead to the discovery of admissible evidence. In contrast, claims that information sought by a discovery request is trade secret, business-sensitive or otherwise confidential, is subject to attorney-client or a like privilege, or comprises attorney work product, goes not to the merits of the request but to a characteristic or attribute of the responsive information."). Cadbury was also ordered to provide a privilege log within thirty days.

It also must be stressed that Petitioner’s conduct has not demonstrated the good faith and cooperation that is expected of litigants during discovery. Such conduct has delayed this proceeding, unnecessarily increased the litigation costs of the parties, wasted valuable Board resources, and interfered with Respondent’s ability and, indeed, its right, to take discovery.

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TTABlog comment: Wow! The TTABlogger's cardinal rule of practice is to at least try to look reasonable before the Board.

Text Copyright John L. Welch 2015.

Thursday, July 23, 2015

Forget Parody: GOTHAM BATMEN Confusable with Famous BATMAN, Says Split TTAB Panel

A divided Board panel sustained this opposition to registration of the mark GOTHAM BATMEN, in standard and design form (shown below), for "general business networking referral services, namely, promoting the goods and services of others by passing business leads and referrals among group members" and for "entertainment in the nature of amateur softball games." The panel majority found the marks confusingly similar to the registered mark BATMAN, deemed famous for comic books and movies. Applicant's parody claim went, as usual, nowhere before the Board. DC Comics v. Gotham City Networking, Inc., Opposition No. 91194716 (July 17, 2015) [not precedential].

This post shall not recapitulate the evidence of fame. The panel majority found that the fame of the BATMAN mark "is transferred to a vast array of collateral or merchandising products that are purchased because they bear the BATMAN trademark." In other words, "consumers have come to associate the fame of BATMAN with the products bearing that mark." [Huh? So BATMAN is famous for every product that bears the mark? - ed.]. Once the BATMAN mark was accorded that scope and strength, it was three strikes and out for applicant.

Because Opposer’s BATMAN mark is famous and it has been licensed for use on a myriad of products, countless individuals have been exposed to Opposer’s BATMAN mark and to its use on or in connection with collateral products, including t-shirts and baseball balls and bats. Under these circumstances, individuals familiar with Opposer’s BATMAN marks and their associated goods and services, when confronted with Applicant’s mark in connection with softball games and networking services, will consider such activities to be sponsored by or affiliated with Opposer.

With little or no discussion, the majority also deemed Opposer's "batwing" logo to be famous. The addition of GOTHAM to BATMEN does not distinguish the marks, said the panel majority, since it is "undisputable" that the superhero is known to hang out in a place called Gotham. Furthermore, any aural dissimilarity would be outweighed by "the recognition of that fact by those familiar with opposer's marks."

Parody? Fuggeddaboutit. "The right of the public to use words in the English language in a humorous and parodic manner does not extend to such words as trademark if such use is likely to cause confusion." [Kind of begs the question, doesn't it? - ed.]. Moreover, it is not Opposer's BATMAN marks that are the target of the parody but Applicant's own members (i.e., the superiority of their softball and networking prowess). The parody is an inside Joker. [But applicant wasn't laughing - ed.].

And so the Board sustained the opposition under Section 2(d).

Dissent: Judge Taylor dissented, contending that Opposer had not met its burden to prove fame. She would find that the BATMAN marks are not famous and, because the gods and services of the parties are so different, that confusion is not likely, or at least that Opposer did not prove that confusion is likely.

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TTABlog comment: I subscribe to the theory that some marks are so famous that the likelihood of confusion is diminished, the public not being completely gullible, but able to recognize an obvious parody.

Text Copyright John L. Welch 2015.

Wednesday, July 22, 2015

CAFC Reverses and Remands TTAB 2(d) Decision Due to Inadeqate Appreciation of PEACE & LOVE

In a precedential decision, the U.S. Court of Appeals for the Federal Circuit vacated and remanded  the TTAB's decision in GS Enterprises LLC v. Juice Generation, Inc.., Opposition No. 91206450 (June 18, 2014). The Board had found the mark PEACE LOVE JUICE & Design, shown immediately below, for "juice bar services" [JUICE disclaimed] likely to cause confusion with the registered mark PEACE & LOVE for "restaurant services." The CAFC ruled that the Board "did not adequately assess the weakness of GS's marks and did not properly consider the the three-word combination of Juice Generation's marks as a whole." Juice Generation, Inc. v. GS Enterprises LLC, Appeal No. 2014-1853 (Fed. Cir. July 20, 2015) [precedential].

In comparing the marks, the Board deemed "PEACE LOVE" to be the dominant part of applicant's mark, and it found that the additional word "JUICE" and the non-distinctive design features did not serve to sufficiently distinguish the marks at issue. The Board observed that GS's mark PEACE & LOVE was registered in standard character form and thus was not limited to any particular display, but, the CAFC noted, it "did not elaborate on its consideration of the three-word combination 'PEACE LOVE & JUICE' in its entirety."

The Board also considered the testimony of applicant's founder regarding third party uses of similar marks - "Peace Love and Pizza," "Peace Love and Popcorn," and others - but this evidence did not enable the Board to find that "customers have become conditioned to recognize that other entities use PEACE AND LOVE marks for similar services."

Finally, the Board gave little weight to statements made by GS, during the prosecution of its own marks, that the words "peace" and "love" lack distinctiveness.

The CAFC concluded that the Board's treatment of the evidence of use of third-party marks did not sufficiently appreciate the force of that evidence. Even though specific evidence as to extent and impact of use was not submitted, the evidence was "nonetheless powerful on its face." The uncontradicted testimony showed that a considerable number of third parties use similar marks. Third party registrations, the court observed, are relevant to show that some segment of a mark has a "normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that the segment is relatively weak."  Of course, weak marks merit less protection on the Section 2(d) battlefield.

The Board, however, never inquired as to whether PEACE & LOVE has a suggestive or descriptive connotation. See, e.g., Anthony's Pizza & Pasta Int'l, Inc., 95 USPQ2d 1271 (TTAB 2009) (Evidence of third-party use of "Anthony's" in connection with restaurants indicated that the word suggests an Italian restaurant, or even a New York style Italian restaurant).

This third-party evidence was "particularly important" here in view of the statements made by GS in prosecuting its own applications, when distinguishing its marks from "PEECE LUV CHICKEN" by suggesting that its mark creates "the impression of a restaurant that has a theme and atmosphere of the countercultures prevalent in the 1960's and 1970's." Comments made during prosecution, the CAFC has ruled, are "illuminative of shade and tone in the total picture confronting the decision maker."

The CAFC concluded that the Board gave inadequate consideration to the strength or weakness of the cited mark, and it instructed the Board to undertake that inquiry upon remand.

The court also concluded that the Board had not paid sufficient heed to the commercial impression of applicant's mark as a whole. The Board did not consider "how the three-word phrase in Juice Generation's mark may convey a distinct meaning - including by having different connotations in consumers' minds - from the two-word phrase used by GS." Although the Board may properly assign more or less weight to a given component of a mark, it still must consider the mark as a whole.

The Board did not err in giving less emphasis to the word JUICE when it noted that the term is generic. *** But the Board did not set forth an analysis showing that it avoided the error of giving no significance to the term, which is impermissible notwithstanding that the term is generic and disclaimed.

On remand, the Board must undertake a consideration of the applied-for mark as a whole.

The court therefore vacated the decision and remanded the case to the Board.

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TTABlog comment: What is descriptive or suggestive bout the phrase PEACE & LOVE in the restaurant/juice bar context? Hippie food?

Text Copyright John L. Welch 2015.

Tuesday, July 21, 2015

Recommended Reading: Peter Karol, "The Constitutional Limitation on Trademark Propertization"

Associate Professor Peter J. Karol of New England Law School argues that the Constitution places critical limits on the power of Congress to regulate trademark signifiers that are unattached to goods or services. Karol, The Constitutional Limitation on Trademark Propertization, 17 Penn. Journal of Constitutional Law 1065 (2015). "Trademark propertization ... requires a separate and distinct Commerce Clause analysis from that used to justify regulation of trademarks affixed to
goods and services." Although this constitutional limitation on propertization is "distant and unreachable in most cases," it nonetheless serves as a brake on such controversial trademark doctrines as dilution and the rule against assignments in gross, and it prevents Congress from ever granting trademark rights upon the mere creation of a new trademark.

The following article seeks to apply the retrenchment in constitutional Commerce Clause jurisprudence of the last few decades to the phenomenon of trademark propertization, the expansive and largely federal movement towards protecting trademarks as assets apart from any connection to referent goods and services. Trademark scholars have filled the trademarks literature with critiques of propertization that generally object, on policy and historical grounds, to the trend and offer constructions of the Lanham Act designed to check its progress. With the notable exception of an article published in 2000 by Professor Kenneth Port, however, the literature has largely avoided addressing the question of whether the United States Congress possesses the authority to push trademark law so far in that direction.

Building off of Barton Beebe’s semiotic account of trademark law, the article observes that much of the Commerce Clause case law in the trademark space is muddied by the failure to draw an analytic distinction between the trademark as such (i.e., the trademark’s signifier) and the goods and services with which it is used. Moreover, many of the seminal cases in the area predate such important new contributions to Commerce Clause juris prudence as United States v. Lopez, Gonzalez v. Raich, and National Federation of Independent Business v. Sibelius.

Upon close review of these and other recent precedents, and a thorough application of contemporary, three-category Commerce Clause analysis to trademark propertization, the article concludes that there is a firm constitutional limit to Congresses’ ability to regulate trademark signifiers detached from goods and services. Namely, Congress may not recognize or protect a property interest in trademarks as such except as a rational means of furthering the regulation of referent goods or services. Although distant and unreachable in most cases, this constitutional ceiling serves as a critical constructional limit on certain controversial trademark doctrines like dilution and the rule against assignments in gross, and prevents the U.S. Congress from ever recognizing pure trademarks in the abstract as property upon creation. Although a complete defense of trademark “localism” is outside of the article’s scope, it ends by offering some basic policy and structural justifications for accepting this limit on federal authority in the trademark sphere.

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Text Copyright John L. Welch 2015.

Monday, July 20, 2015

Precedential No. 21: TTAB Sides With Band in "WONDERBREAD 5" Ownership Dispute

The Board granted a petition for cancellation of a registration for the mark WONDERBREAD 5 for "entertainment services in the nature of live musical performances," ruling that the underlying application was void ab initio because Respondent and ex-band member Patrick Gilles was not the owner of the mark at the time of his filing the underlying application. Wonderbread 5 v. Patrick Gilles a/k/a Wonderbread 5 and/or Wonderbread Five Cancellation No. 92052150 (June 30, 2015) [precedential].

Evidentiary Issues: Respondent Gilles timely mailed his pre-trial disclosures, but to the wrong address for Petitioner's counsel. The disclosures were eventually received by Petitioner's successor counsel. Since it was highly unlikely that Petitioner was surprised that Gilles intended to testify, the Board declined to strike his testimony.

Gilles, however, failed to provide "a general summary or list of the types of documents and things which may be introduced as exhibits during [his] testimony" Rule 2.121(e). The disclosures merely stated that "Registrant may introduce exhibits to be identified in a Notice of Reliance." The disclosures were therefore inadequate and defective. The Board therefore struck all of Respondent's trial exhibits and all testimony referring thereto.

Petitioner had its own evidentiary problems. Under notice of reliance, it submitted an affidavit that Respondent Gilles had submitted in connection with a summary judgment motion. The Board declined to consider it. An affidavit or declaration is inadmissible as trial testimony absent a stipulation from the other party. See Rule 2.123(b). Petitioner also submitted Respondent's answer to its admission requests, including admissions and denials. The admissions were deemed properly of record, but denials are not admissible. See Rule 2.120(3))(i).

Ownership: The petition for cancellation asserted claims of likelihood of confusion and fraud, and included allegations that Gilles did not own the mark at the time of filing his application to register. Ownership of a mark is an element of every Section 2(d) claim. [W]hen both parties are relying upon activities the two conducted in concert with one another, each in an attempt to establish prior rights in a mark over the other, the dispute centers on ownership of the mark."

Despite the absence of any agreement, Petitioner claimed to own the WONDERBREAD 5 mark as a partnership under California law. It alleged that two days after Gilles was terminated as a partner, he filed the underlying application without the Petitioner's knowledge or consent. He concealed the existence of the application in subsequent state court litigation with Petitioner, which culminated in a buy-out and release of all of Respondent's claims.

Gilles claimed the he was one of two founding members of the band and therefore he owned a 50% interest in the partnership. The lawsuit, he contended, dealt only with monetary relief, not trademark rights.

The Board found, based on the totality of the evidence, that Gilles was not individually the owner of the mark at the time he filed his application to register. His actions with regard to the state court lawsuit confirmed that he understood that the band was a partnership of which he was no longer a member.

The Board also considered the "legal framework courts and commentators have developed to deal with" disputes regarding musical band names when there is no written agreement or other legal formalities that clearly delineate ownership rights. The Board observed that Professor McCarthy's test has been adopted by several courts and is a "useful adjunct" to the Board's findings here. Professor McCarthy frames the question as "Does Mark Identify the Group Regardless of its Members?"

In these performing group cases, it must first be determined whether the group name is personal to the individual members or not. If not, a second question then must be determined: for what quality or characteristic is the group known and who controls that quality? The answer should identify the person or entity that owns the group name as a mark

Temporal continuity of identification is an important factor, according to the Professor. The issue is "whether the mark signifies personalities, or style and quality regardless of personalities."

The Board concluded that the WONDERBREAD 5 mark was not "personal" to Respondent Gilles or any other of the band members. The mark signified the "style and quality" of the group: a Jackson 5 tribute band, not a "particular performer combination." As one band member testified, the band was "a bunch of Caucasian boys playing Jackson 5 songs."

The bands discontent with Respondent Gilles began with his refusal to wear the "over the top" costumes that the band's public persona required. Thus the band monitored and controlled the "style" of its musical services, not Gilles. The band's use of prerecorded music and substitute musicians further supported the conclusion that the music performed by the band was not personalized by the performers.

The Board concluded that at the time Gilles filed his application to register, "the consuming public did not associate the mark WONDERBREAD 5 with [him], but rather with the style of a Jackson 5 tribute band costumed in exaggerated 1970s regalia. It was the group/partnership consisting of WONDERBREAD 5 that controlled this quality or characteristic of the band."

The Board sustained the petition for cancellation, ruling that Respondent Gilles was not the owner of the mark at the time of filing his application, and therefore that the application was void ab initio.

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TTABlog comment: Easy as ABC. Is "WONDERBREAD 5" dilutive of the bread? [No, not the band, BREAD, the bread bread]. One Oneders.

Text Copyright John L. Welch 2015.

Friday, July 17, 2015

Applying Claim Preclusion, TTAB Affirms 2(e)(1) Refusal of Re-filed RESTORE LIFT Application

In July 2013, the Board affirmed (here) a Section 2(e)(1) refusal to register the mark RESTORE LIFT, finding the mark merely descriptive of "cosmetic and plastic surgery, namely, a minimally invasive face/neck lift done under local anesthesia." In February 2014, the same applicant (through the same attorney) filed a new application to register the same mark for the same services. When that application was refused under Section 2(e)(1), Applicant Southeastern Dermatology, S.A. appealed. In re Southeastern Dermatology, PA, Serial No. 86187997 (July 15, 2015) [not precedential].

The Board found this appeal to be barred by claim preclusion, sometimes referred to by people of a certain age as res judicata. Under that doctrine, "a judgment on the merits in a prior suit bars a second suit involving the same parties or their privies based on the same cause of action."

The Board noted that claim preclusion must be applied with caution. However, prior Board decisions have applyied the doctrine when an applicant "had already been refused registration for the same mark and goods in a prior ex parte proceeding and the applicant did not demonstrate a change of circumstances so as to justify not applying preclusion based on the prior judgment."

Here Applicant made no contention that circumstances had changed. In fact, applicant submitted the identical arguments and evidence as in its prior failed application. Its appeal briefs in the two cases were substantially identical.

The Board concluded that the requirements for claim preclusion were met and it affirmed the refusal on that ground.

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TTABlog comment: Geez, Louise! What's there to say?

Text Copyright John L. Welch 2015.

Wednesday, July 15, 2015

TTAB Deflates Feeble Attacks on SWISSBIKE Application and SWISS MILITARY Registration for Bicycles

The Board issued a single opinion in these two proceedings, which were consolidated solely for purposes of submitting a single trial brief for both matters. It dismissed the cancellation proceeding directed at Montague Corp.'s registration of the mark SWISSBIKE for "bicycles" because Petitioner Montres Charmex S.A. failed to establish its standing. The opposition to registration of the mark SWISS MILITARY, also for "bicycles" (under Section 2(f)), was dismissed because Montres Charmex "failed to meet its initial burden of demonstrating that Defendant had failed to meet its ultimate burden of acquired distinctiveness." Montres Charmex S.A. v. Montague Corp., Opposition No. 91191784 and Cancellation No. 92052183 (July 6, 2016) [not precedential].

Standing: Montres Charmex did not submit any admissible and/or probative evidence regarding the nature of its activities or its interest in registrant's SWISSBIKE trademark. A National Arbitration Forum decision regarding the domain name "swissmilitary.com" was irrelevant because the term "swissmilitary" is distinct from SWISSBIKE, and in any case an arbitration decision does not prove commercial use.

Entries for "Switzerland" in a dictionary and a business directory did not reference Montres Charmex and in any case would have been considered inadmissible hearsay with regard to any statements regarding its business. An excerpt from the Guinness Book of World Records referring to a Swiss Military Watch made by Montres Charmex, while admissible as a printed publication, could not be relied upon to prove the truth of the matters stated therein (i.e., hearsay). Montres Charmex did not submit any testimony regarding its activities.

The Board concluded that Montres Charmex failed to show that it had a "real interest" in the proceeding and a "reasonable belief in damage," and so the Board dismissed the cancellation on the ground of standing.

Acquired Distinctiveness In the opposition proceeding, Applicant Montague admitted in its answer that Montres Charmex owns the domain name "swissmilitary.com" and that it uses that domain in its business. That was sufficient to establish standing.

The only claim pursued by Montres Charmex was contention that the mark SWISS MILITARY had not acquired distinctiveness under Section 2(f). The examining attorney had deemed the mark merely descriptive because, as Montague acknowledged, the goods are made for the Swiss Military to its design specifications.

Montres Charmex contended that the Section 2(f) declaration submitted by Montague was void because Mr. Montague signed the declaration as "President," when in fact he was "Clerk" and "Treasurer." This, argued Montres Charmex, amounted to "intentional misrepresentation" and "perjury."

The Board observed that in an opposition proceeding, the opposer has the initial burden of showing that an applicant's mark has not acquired distinctiveness. When the opposer meets that initial burden challenging the sufficiency of applicant's evidence of acquired distinctiveness, then applicant may submit additional evidence to rebut opposer's prima facie case. The ultimate burden of persuasion is ultimately on the applicant.

The USPTO had found acquired distinctiveness based only on Montague's Section 2(f) declaration of five years of "substantially exclusive and continuous use." Montres Charmex did not contend that the SWISS MILITARY mark was so "highly descriptive" as to require a heightened showing under Section 2(f). Instead, its attack was based solely on the "purported technical deficiencies in the execution of the declaration."

Montres Charmex submitted documents from Massachusetts state records to show that Mr. Montague was not President of Montague Corp. However, those record established that he was an officer of the company during the relevant time period. He therefore had the requisite legal authority to bind the corporation, and thus to sign the declaration, pursuant to Trademark Rule 2.193(e)(1). The declaration was not invalid just because the title of the signatory was misstated.

The Board concluded that Montres Charmex had failed to meet its initial burden regarding the acquired distinctiveness issue, and so it dismissed the opposition.

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TTABlog comment: These proceedings dragged on for six years! The equivalent of a slow-motion train wreck.

Text Copyright John L. Welch 2015.

TTAB Test: Which of These Four Section 2(d) Refusals Was/Were Reversed?

Okay, readers. You didn't do so well on the last TTAB test, but that doesn't mean I'm going to make it any easier for you. When the going gets tough, etc., etc. Here are four Section 2(d) refusals for your perusal. At least one was reversed, but not all. Let's see if you have what it takes to be a TTAB Judge. [Answer(s) will be found in first comment].

In re Big John Products, Inc., Serial No. 86118253 (July 8, 2015) [not precedential]. [Refusal to register Big John Toilet Seat for "toilet seats" [TOILET SEAT disclaimed], in view of the registered mark BIG JON for "toilet brushes."]

In re ReSashay Square Dance, Inc., Serial No. 86041312 (July 8, 2015) [not precedential] [Refusal to register ReSashay for "On-line retail consignment stores featuring women's, men's and children's square dancing apparel and accessories, namely, children's square dancing petticoats; On-line retail store services featuring women's, men's and children's square dancing apparel and accessories," in view of the registered mark MYSASHAY for "Ballet shoes; Ballet slippers; Footwear for women; Insoles for footwear."]

In re Appgraft LLC, Serial No. 85843178 (July 9, 2015) [not precedential] [Refusal to register OBSERVANT OWL for "computer software for digital video monitoring and recording for use with video surveillance systems," in view of the registered mark OBSERVANT for, inter alia, computer software, namely, fully downloadable software for wireless sensing, remote sensing, monitoring, measuring, recording, reporting, data processing, data transmission, management and control."]

In re Pizza Pro, Inc., Serial No. 86320662 (July 9, 2015) [not precedential] [Refusal to register BYO PIZZA BUILD YOUR OWN PIZZA & Design, shown below, for "fresh pizza; pizza; pizza dough; pizza sauce" [PIZZA BUILD YOUR OWN PIZZA disclaimed], in view of the registered mark BYOPizza for "restaurant services, including sit-down service of food and take-out restaurant services."]

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TTABlog comment: It's not easy, is it?

Text Copyright John L. Welch 2015.

Tuesday, July 14, 2015

Precedential No. 20: 13th du Pont Factor Yields TTAB 2(d) Reversal

The Board reversed a Section 2(d) refusal to register the mark ALLEGIANCE STAFFING for "temporary employment agency services for others, not including hospitals and healthcare providers" [STAFFING disclaimed]. The USPTO had deemed the mark confusingly similar to eight registered marks consisting of or including the term ALLEGIS, for personnel recruitment and placement services for temporary and permanent positions. The catch-all 13th du Pont factor made a rare and critical appearance in Applicant's favor: the USPTO had permitted the eight cited registrations to issue over Applicant's now extinct registration for the identical mark and services at issue here. In re Allegiance Staffing, Serial No. 85663950 (July 9, 2015) [precedential].

The applicant got off on the wrong foot, irritating the Board by filing duplicate copies of its response to the first PTO office action, and compounding the crime by attaching to its appeal brief the same exhibits that it attached to its response.

Nonetheless, the Board reversed the refusal in view of the differences in meaning and commercial impression between the marks, the degree of customer care, and the 13th du Pont factor.

This is one of the rare cases in which the thirteenth du Pont factor, “any other established fact probative of the effect of use,” plays a role. du Pont, 177 USPQ at 567. This factor "accommodates the need for flexibility in assessing each unique set of facts." In re Strategic Partners Inc., 102 USPQ2d 1397, 1399 (TTAB 2012).

The facts in this case were unusual. Applicant owned a registration for the same mark ALLEGIANCE STAFFING for the same services covered by the subject application. That registration issued in 2001 and expired in 2012 when Applicant inadvertently failed to renew it. Applicant applied for a new registration within two weeks of the expiration of that registration.

During the life of the prior registration, six of the here-cited registrations issued and two underlying applications were approved for publication. Over that period, five different examining attorneys considered the marks in the eight cited registrations and (presumably) determined that those marks were not likely to cause confusion vis-a-vis Applicant's then-registered mark.

The Board agreed with the Examining Attorney's assertion that prior decisions by Examining Attorneys in other cases are not binding on the USPTO or the Board. Nonetheless, the Board took these facts into consideration in its du Pont analysis.

[W]e conclude that under the particular circumstances here, where: (i) the same Applicant owned a prior registration for the identical mark covering the same services; (ii) none of the five different examining attorneys who examined the cited registrations refused registration based on a likelihood of confusion with the same mark for which registration is sought in the current application; and (iii) Applicant inadvertently allowed the prior registration to lapse, and attempted to correct that lapse by filing its new application within two weeks of its prior registration expiring, we give the fact that no likelihood of confusion was found in eight separate situations due weight in our analysis.

Turning to the other du Pont factors, the Board found that the involved services overlap. It then focused on the cited registration for the mark ALLEGIS in standard character form, observing that if confusion is not likely as to that mark, then there would be no likelihood of confusion with the remaining seven ALLEGIS-containing marks.

The Board noted that there are between ALLEGIANCE, the dominant portion of Applicant's mark, and ALLEGIS. However the differences in the endings are "likely to be noticed because Applicant's mark results in a recognizable word." Any similarity in pronunciation is not so significant here because of the nature of the services: employment agency services are purchased by businesses, not general consumers.

The differences in meaning are even more significant. ALLEGIANCE has a clear meaning, whereas ALLEGIS is a coined term. As the CAFC has observed, "the familiar is readily distinguishable from the unfamiliar." Accordingly, the Board found that the differences in meaning between the involved marks outweighed any similarities in appearance and pronunciation.

In addition, the Board found that the conditions of purchase (du Pont factor No. 4) were significant, "since the care exercised by customers would result in their noting the differences in the marks at issue." The involved services "do not fall into the category of impulse purchasing." Businesses seeking temporary help or permanent employees will exercise a heightened level of care in their purchasing decisions, and will therefore perceive the differences between ALLEGIANCE STAFFING (composed of recognizable words) and the coined term ALLEGIS, which  "does not have any recognizable derivation."

Applicant pointed to the 15-year period of contemporaneous use of the involved marks without the occurrence of actual confusion, but the Board pointed out that there has been no meaningful opportunity for confusion to occur, since the parties provide their services in different geographical areas.

The Board therefore concluded that confusion is not likely between the involved marks, and it reversed the refusal to register.

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TTABlog comment: How much leeway does an Examining Attorney have in invoking the 13th du Pont factor? Is it merely an equitable escape hatch that the TTAB can open when it feels that an Applicant got the short end of the lick log?

I've been working on a new ditty for the TTABlog songbook, entitled "13th du Pont Factor," sung to the tune of the Rolling Stones' "19th Nervous Breakdown," but it hasn't quite Come Together. [Sorry - had to give the Beatles equal time].

Text Copyright John L. Welch 2015.

Monday, July 13, 2015

Recommended Reading: William McGeveran, "The Imaginary Trademark Parody Crisis (And The Real One)"

Professor William McGeveren of the University of Minnesota School of Law, in an enjoyable and informative article, discusses the current state of trademark parody law in "The Imaginary Trademark Parody Crisis (And The Real One)," 90 Wash. Law. Rev. 713 (2015). [Follow him on Twitter: @BillMcGev.]

Abstract: In the two decades since the Supreme Court protected a crude rap spoof from copyright liability in Campbell v. Acuff-Rose Music, Inc., courts have grown to understand the great value of parodic expression in trademark cases as well. Today, plausible claims of parody almost always prevail over trademark rights in judicial rulings. This Article demonstrates that it is simply wrong to suggest, as commentators often do, that we face a crisis in the results of trademark parody cases. That distortion is harmful because it distracts reform efforts and it lends credence to overbroad assertions of trademarks against parody and other speech. Demand letters and other pre-litigation maneuvering by markholders exemplify the real crisis in the law of trademark parody. Reform should concentrate on making excessive threats against speech less effective. I argue that fast-lane defensive doctrines that reduce the burden of litigating parody cases, such as safe harbors and a broad artistic relevance test, are more important than perfecting substantive parody doctrine. Meanwhile,we should shout the truth from the rooftops: Markholders who sue legitimate parodies lose.Their threats are empty.

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TTABlog comment: Parody does not fare well at the TTAB. Witness the SEX ROD, THE HOUSE THAT JUICE BUILT, JUST JESU IT, and a string of other decisions. In fact, as I sit here at my kitchen table (watchful of possible falling ice blocks), I can't think of a TTAB case upholding a parody claim.

Text Copyright John L. Welch 2015.