Thursday, September 03, 2015

Precedential No. 29: TTAB Dissolves Concurrent Use Proceeding, Plaintiff Fails to Prove Prior Use

Concurrent use cases usually give me a headache, but this one wasn't too painful. The Board dissolved this proceeding because the plaintiff/concurrent use applicant failed to prove that its use of the applied-for mark commenced before the filing date of the application underlying defendant's registration. Bad Boys Bail Bonds, Inc. v. William Lee Yowell, Concurrent Use No. 94002552 (October 21, 2015) [precedential].


Applicant Bad Boys sought to register the mark shown above, for bail bond services, advertising and marketing services, and various ancillary goods. Its application was refused in view of the registered mark BAD BOYZ BAIL BONDS 'IN JAIL, WE BAIL' for "providing bail bonds for persons under arrest in the state of Missouri." Bad Boys amended its application to seek a concurrent use registration claiming California, Arizona, and Nevada. The application was published for opposition and after the opposition period closed without a challenge, the Board instituted this proceeding.

As a condition precedent to issuance of a concurrent use registration, the applicant must show use of its mark in commerce prior to the applicable date specified in Section 2(d) of the Lanham Act: i.e., prior to the filing date of the application underlying the defendant's registration.

Bad Boys claimed a first use date of August 28, 1998, more than a year before Defendant Yowell's December 29, 1999 filing date. Yowell moved for summary judgment, asserting that Bad Boys' first use of the applied-for mark did not occur prior to that critical date. Yowell's motion was based upon certain documents that Bad Boys had provided during settlement discussions between the two entities.

Bad Boys objected to the admission of those documents under Federal Rule of Evidence 408(a), asserting that they constituted statements made during settlement negotiations. The Board, however, overruled the objection, pointing out that the documents existed independently of the discussions and did not include any statements made during the settlement discussions.


Bad Boys had provided the documents to Yowell in an attempt to demonstrate the former had used the name or mark BAD BOYS BAIL BONDS prior to the critical date. Yowell, in his summary judgment motion, asserted that the documents did not show use of the applied-for mark, but only the literal portion thereof, and that Bad Boys had failed to provide any additional documents when asked. Bad Boys argued that the design element of its mark was irrelevant, since the refusal to register in view of Yowell's mark had been based only on the word portion of the applied-for mark.

The Board, however, pointed out that the mark at issue in this proceeding is the combined word plus logo mark. The submissions by Yowell established a prima facie case that Bad Boys did not use the applied-for mark prior to the critical date. Bad Boys failed to provide evidence rebutting that case. The Board therefore considered it undisputed that Bad Boys did not use the applied-for mark prior to the critical date.

Finding no genuine issue of material fact, the Board granted the motion for summary judgment and dissolved the proceeding.

Read comments and post your comment here.

Text Copyright John L. Welch 2015.

Wednesday, September 02, 2015

"INDICES" Not Deceptively Misdescriptive of Healthcare Data Reporting, Says TTAB

The Board reversed a Section 2(e)(1) refusal to register the mark INDICES, finding it not deceptively misdescriptive of "business analysis services in the field of healthcare data, namely, the collection, reporting and analysis of healthcare data for business purposes"]. In re Inovalon, Inc., Serial No. 85351975 [Section 2(e)(1) deceptive misdescriptiveness refusal of  .


The test for deceptive misdescriptiveness under Section 2(e)(1) has two parts: (1) the mark must misdescribe the goods or services, and (2) consumers must believe the misdescription. Unlike for a Section 2(a) deceptiveness refusal, the misdescription need not be material to the purchasing decisions of reasonably prudent consumers.

The Examining Attorney argued that "companies providing informatics and data aggregation may present data in the form of 'indices;' that consumers encounter 'indices' in the analysis and presentation of large sets of data; that Applicant provides datasets in the field of healthcare; and that Applicant’s datasets in the field of healthcare may be analogous to indexes or "indices.''"

The Board rejected applicant's argument that INDICES is an acronym for INSIGHTS DATA INTELLIGENCE SOLUTION, since there was no evidence that the mark was so intended or understood. [What does intent have to do with it? - ed.].

Applicant stated that its INDICES services do not provide information to customers in the form of an index.

The Board concluded that the Examining Attorney had failed to carry her burden of proof to show that INDICES "may plausibly describe a characteristic" of applicant's services. The proffered definition of "index" as a reference table having keys that allow one to address data items was specific to computers. Other evidence regarding indexes of data in certain industries was "too speculative" to be applicable here.

Simply put, the Examining Attorney’s evidence requires several steps from the use of “indices” to present and organize data in various industries to the interpretation of Applicant’s services as providing datasets in the healthcare field to
analogizing such datasets as “indices” for us to find that the mark INDICES merely describes a function, feature or characteristic of the recited services. At best, the evidence indicates that INDICES may be suggestive thereof.

The Board therefor found it unnecessary to address the issue of whether the supposed misrepresentation was likely to be believed by consumers, since it found no misrepresentation.

Read comments and post your comment here.

TTABlog comment:

Text Copyright John L. Welch 2015.

Reminder: TTABlog Road Trip: 2015 Midwest IP Institute - Minneapolis, September 17-18th

Yours truly, the TTABlogger, will be back on the road in September, heading the Blogmobile west and north to Minneapolis for the 2015 Midwest Intellectual Property Institute on September 17 and 18, 2015. Details and registration information may be found in this brochure.


On the trademark side, the program will feature TTAB Chief Judge Gerard F. Rogers, who will discuss recent TTAB-related developments such as the B&B v. Hargis decision and possible rule changes. Judge Rogers will also appear on a panel with Carrie Hefte of Wells Fargo, Scott Johnston of Merchant & Gould, and yours truly, of Wolf, Greenfield & Sacks in Boston.

Fellow Blogger Steve Baird of Winthrop and Weinstine will team up with me to discuss "the year in trademark law," including some insights into the REDSKINS and FLANAX cases now wending their way through the appeal process, and a rundown of the more interesting and/or impactful recent decisions of the TTAB.

Read comments and post your comment here.

Text Copyright John L. Welch 2015.

Tuesday, September 01, 2015

TTAB Test: Which One of These Three Section 2(d) Refusals Was Reversed?

Allegedly, one may predict the outcome of a Section 2(d) appeal, nine times out of ten, by simply looking at the marks and the identified goods or services. Here are three recent appeals from Section 2(d) likelihood of confusion refusals. One was reversed. Which one? [Answer in first comment].



In re Thriveon, Serial No. 86178339 (August 27, 2015) [not precedential] [Refusal to register THRIVEON for 'computer services, namely, remote and on-site management of information technology (IT) systems of others," in view of the registered mark shown below for "Information technology technical support services and consulting, namely, troubleshooting in the nature of diagnosing of computer hardware and software problem ...." [NETWORKS disclaimed]].


In re Dretzka, Serial No. 86396440 (August 28, 2015) [not precedential] [Refusal to register INSPIRED GRIT for "education services, namely, providing live and on-line coaching, training, seminars, courses, retreats, camps,and workshops in the field of personal development as it relates to helping people identify, set, and achieve personal life goals; providing live and on-line coaching in the field of personal development, namely, life coaching services in the field of self-realization, talent utilization, and finding personal satisfaction in one’s life," in view of the registered mark GRIT 
for "educational services, namely, developing and conducting seminars and workshops in the field of leadership, teamwork and customer service"].



In re Fourstar Group USA Inc., Serial No. 86248063 (August 28, 2015) [not precedential] [Refusal to register FUNOVATIONS for “Mechanical toys; Wind-up toys", in view of the registered mark shown below, for, inter alia, "Action skill games"].


Read comments and post your comment here.

TTABlog comment: Well, how did you do?

Text Copyright John L. Welch 2015.

Monday, August 31, 2015

Eighth Circuit Directs District Court to Apply Preclusion in B&B v. Hargis

On remand from the Supreme Court, the U.S. Court of Appeals for the Eighth Circuit has directed the District Court (E.D. Ark) to apply preclusion to the TTAB's ruling (here) on likelihood of confusion in the B&B v. Hargis case. B&B Hardware, Inc., v. Hargis Industries, Inc., Appeal No. 10-3137 (8th Cir. August 25, 2015). Earlier this year, the Supreme Court ruled that issue preclusion may apply to the Board's decision "when the usages adjudicated by the TTAB are materially the same as those before the district court." B&B Hardware, Inc. v. Hargis Industries, Inc., 113 USPQ2d 2045 (2015).


[W]e now determine that the ordinary elements of issue preclusion have been met and the usages of the marks adjudicated before the TTAB were materially the same as the usages before the district court. As noted in our prior opinions, the TTAB compared the marks in question in the marketplace context when it determined the likelihood of confusion issue for purposes of trademark registration.

Accordingly, we vacate the district court’s judgment and remand this matter for further proceedings, including what remedies may be awarded for infringement. *** On remand, the district court is directed to give preclusive effect to the decision of the TTAB on likelihood of confusion.

Read comments and post your comment here.

TTABlog comment: Note that the identifications of goods in the application and cited registration in the TTAB proceeding were very narrow: "self-piercing and self-drilling metal screws for use in the manufacture of metal and post-frame buildings" and "threaded or unthreaded metal fasteners and other related hardware; namely, self-sealing nuts, bolts, screws, rivets and washers, all having a captive o-ring for use in the aerospace industry." As we know, in Section 2(d) cases the identifications of goods are often very broad, and consequently the Board's decision regarding likelihood of confusion is not based on real "marketplace conditions."

Text Copyright John L. Welch 2015.

TTAB Posts September 2015 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled eight (8) oral hearings for the month of September, 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.



September 1, 2015 - 2 PM: In re PTT, LLC dba High 5 Games, Serial No. 86035890 [Section 2(d) refusal of EMPRESS JOSEPHINE for "game software," in view of the registered mark NAPOLEON AND JOSEPHINE for "Components for gaming machines that generate or display wager outcomes, namely, controllers, displays, button panels, bolsters, electrical wiring, and computer hardware and software associated therewith; Gaming machines, namely, devices which accept a wager; Gaming software that generates or displays wager outcomes of gaming machines"].


September 3, 2015 - 2 PM: Dille Family Trust v. Nowlan Family Trust , Opposition No. 91200643 [Ownership and priority dispute regarding the mark BUCK ROGERS for a variety of goods and services, including comic books, action figures, board games, and DVDs].


September 15, 2015 - 11 AM: In re Xylomen Participations, S.à r.l., Serial No. 86024542 [Section 2(e)(1) mere descriptiveness refusal of MULTI BINGO for "Gaming devices, namely, gaming machines, slot machines, bingo machines, ..."].


September 16, 2015 - 3 PM: In re Fashion Box S.P.A., Serial No.86051465 [Section 2(d) refusal of the mark shown below, for various men's clothing items, in view of the registered mark RED SEAL for "Carry-all bags, leather pouches, rucksacks, duffle bags, travel bags, tool bags sold empty, backpacks, purses, trunks, suitcases, garment bags for travel, billfolds, wallets, harnesses, leather bags, leather bag laces, valises"].


September 22, 2015 - 11 AM: Mini Melts, Inc. v Reckitt Benckiser LLC , Opposition No. 91173963 [Opposition to registration of MINIMELTS and MINI-MELTS for "Pharmaceutical preparations for use as an expectorant," on the grounds of Section 2(e)(1) mere descriptiveness and Section 2(d) likelihood of confusion in view of the registered mark MINI-MELTS for "frozen confections"].


September 23, 2015 - 2 PM: In re Neato Robotics, Inc. , Serial No. 85751529 et al. [Mere descriptiveness refusal of BOTVAC, and requirement of disclaimer of BOTVAC in the mark NEATO BOTVAC for, inter alia, robotic vacuum cleaners and parts therefor].




September 23, 2015 - 11 AM: In re Do Something!, Inc., Serial No. 85696594 [Section 2(e)(1) mere descriptiveness refusal of PREGNANCY TEXT for "Education and entertainment services, namely, providing audio, video, and prose presentations featuring a simulated pregnancy experience in mobile wireless form in both SMS and MMS formats"].


September 30, 2015 - 2 PM: In re Santa Crux Toacco Co., Inc., Serial No. 77129912 [Section 2(e)(3) refusal to register GRAN HABANO for "cigars made from cuban seed tobacco" [HABANO disclaimed], on the ground that them mark is primarily geographically deceptively misdescriptive].


Read comments and post your comment here.

TTABlog note: Any predictions? See any WYHA?s here?

Text Copyright John L. Welch 2015.

Friday, August 28, 2015

Yet Another TTAB Test: Must "CLUB" Be Disclaimed for Vehicle Reservation Services?

The USPTO refused registration of the mark EMERALD CLUB for "reservation services for the rental and leasing of vehicles" (in class 39) because the applicant failed to comply with the requirement under Section 6(a) that it disclaim the word CLUB. The question, of course, was whether CLUB is merely descriptive of the recited services. Applicant argued that that the instant application should not be treated differently than its two registrations for related class 39 services, issued in 1988 and 1997, in which CLUB was not disclaimed in the term EMERALD CLUB. How do you think this came out? In re Vanguard Trademark Holdings USA LLC, Serial No. 85945488 (August 20, 2015) [not precedential].


Examining Attorney Gretta Yao relied on a dictionary definition of "club" as "“an organization that offers its subscribers certain benefits,as discounts, bonuses, or interest, in return for regular purchases or payments: a book club; a record club; a Christmas club." The Board agreed that "club" is merely descriptive of applicant's services: "as used in Applicant’s mark and in the context of the identified services, immediately informs consumers of a significant feature or characteristic of such services, namely, that the reservation services are provided as a benefit to members of a consumer loyalty program for vehicle rentals."

Applicant's website confirmed that it offers its identified reservation services as a benefit to members of its "Emerald Club." Third-party website evidence showed similar usage of "club" by Hertz, Avis, and Alamo.

Applicant claimed ownership of two registrations in class 39 - EMERALD CLUB for "automobile rental services" (issued in 1988) and EMERALD CLUB AISLE SERVICE (SERVICE disclaimed) for "automobile rental and reservation services" (issued in 1997) - without a disclaimer of CLUB. It argued that consistency required reversal of the subject refusal.

The Board, however, pointed out that applicant also owns four more recently-issued registrations for marks that included the words EMERALD CLUB for services in classes 35 and 39, in which CLUB is disclaimed. It further observed that trademarks are not "static," and that the eligibility of a mark for registration must be considered in light of the evidence that exists at the time registration is sought.

That CLUB is disclaimed in the more recently issued registrations, but not in the registrations that issued approximately 20 and 30 years ago for highly similar services, reflects recognition that consumer loyalty programs have evolved over the past few decades, including the rise of rental car clubs that offer many membership benefits, such as easier and quicker rental car reservations.

The disclaimer of CLUB in applicant's four most recent registrations supports a finding that the word has lost its source-identifying significance and is merely descriptive of the involved services.

And so the Board upheld the disclaimer requirement and affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Do you think this case belongs in the WYHA Club?

Text Copyright John L. Welch 2015.

Thursday, August 27, 2015

Another TTAB Test: Is PURPLE HAZE for Guitar Pickups Confusable With HAZE for Amplifiers?

The USPTO refused registration of the mark PURPLE HAZE for "electronic sound pickup for guitars and basses," finding the mark likely to cause confusion with the registered mark HAZE for "sound amplifiers." Applicant argued that consumers may recognize the association of "Purple Haze" with Jimi Hendrix, psychedelic rock, and the counterculture of the 1960s, and the mark may bring to mind "a purple, psychedelic vapor or a mental state of blurriness and confusion." How do you think this came out? In re Flying Mojo, LLC, Serial No. 86009264 (August 25, 2015) [not precedential].


The marks: The Board found that "despite the addition of the word 'purple' to Registrant's mark, the similarities outweigh the dissimilarities as to appearance and sound."

The term "Purple Haze," the Board observed, will bring to mind the famous Jimi Hendrix song. On its home page, Applicant refers to pickups from a Stratocaster once owned by Jimi, and the purple and black design use by Applicant for its mark "is reminiscent of psychedelic posters of the 1960s and '70s."

The word "haze," according to the Board, appears to be an unusual and arbitrary mark for the involved goods. It may create the mental image of vapor or smoke, or a confused state of mind, in a nightclub setting. The Board agreed with Applicant that its mark may suggest an association with Jimi Hendrix, psychedelic music, and the 1960s counterculture.

In comparing the possible meanings of these two marks, to the extent there is overlap between a confused state of mind (“haze”) and the prevalence of a drug culture in the 60s frequently associated with a truly legendary piece of music (“Purple Haze”), we find that these marks could well create similar connotations.

Combining the closeness in connotation with the similarities in appearance and sound, the Board concluded that the marks create similar overall commercial impressions. Thus the first du Pont factor supported a finding of likely confusion.

The goods: The complementary nature of the goods was a basis for finding them to be related: the goods are likely to be purchased together, and used in conjunction with each other to provide amplification for an electric guitar or base. Third-party website evidence offered by Examining Attorney Linda M. Estrada showed that the involved goods travel through the same channels of trade to the same classes of consumers. That evidence, as well as third-party registration evidence demonstrated that the goods are of a type that may be offered under the same mark.

Hence, based upon widespread industry practice, customers would be likely to assume, upon encountering these complementary products under such similar marks, that the goods originate from the same source. Specifically, a consumer acquainted with the HAZE amplifier who is looking for an electronic sound pickup for a guitar or bass is likely to believe the PURPLE HAZE pickup is a brand or product extension from the same source that offers the Marshall HAZE amplifier.

Applicant argued that musicians are sophisticated consumers, pointing out that its pickups retail for more than $300. [$300 for a guitar pickup? Seems rather high. - ed.] However, Applicant did not provide any evidence regarding the sophistication of its customers, and the identification of goods in its application is not limited to any particular class of customers or any particular price range. In any event, even sophisticated customers may be confused when presented with highly similar marks for related and/or complementary goods.


Consent Agreement: Applicant pointed to a "consent to use letter" provided by Registrant Marshall Amplification plc, and filed with the USPTO, claiming that it constituted a consent to registration. The Examining Attorney disagreed, and so did the Board.

The consent letter did not include an express consent to registration. It referred to Applicant's non-exclusive inclusion of the word "Haze" in its mark. Although the CAFC has repeatedly said that consent agreements should be given great weight, and that the Board should not substitute its judgment for that of the parties in interest as to the issue of likelihood of confusion, but "this case is an outlier."

This “naked consent” fails to set forth the reasons why Registrant believes there is no likelihood of confusion and does not describe any arrangements undertaken by Applicant and Registrant to avoid confusion among members of the relevant public. *** Without additional factors to support the conclusion that confusion is unlikely, this naked agreement is accorded little weight inasmuch as it does not constitute a proper and credible consent agreement between the parties.

Considering the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: I thought there might be a Section 2(a) false association refusal.

Text Copyright John L. Welch 2015.

Wednesday, August 26, 2015

TTAB Test: How Would You Decide These Four Recent Appeals?

Here are four appeals that were decided on Monday, August 24th: two Section 2(d) likelihood of confusion cases, and two Section 2(e)(1) mere descriptiveness cases. How would you decide them? [Correct answers in first comment].



In re Red Whale, LLC, Serial No. 86037950 (August 24, 2015) [not precedential]. [Section 2(d) refusal of RED WHALE for "beer" and "distilled spirits," in view of the registered marks WHALE for "beer" and BLUE WHALE VODKA for "vodka" [VODKA disclaimed]].


In re Alec R. Fernandez, Serial No. 86176743 (August 24, 2015) [not precedential]. [Refusal to register the mark GOOD BUN & Design (shown below) for restaurant services on the ground that GOOD BUN is merely descriptive under Section 2(e)(1) and must be disclaimed].


In re Dr. Fresh, LLC, Serial No. 86010644 (August 24, 2015) [not precedential]. [Section 2(d) refusal of COMPLETE CARE for "dental floss" in light of the registered mark ARM & HAMMER COMPLETE CARE and Design (shown below), for "tooth paste, tooth gel"].


 In re USA Enterprises, LLC., Serial No. 86170165 (August 24, 2015) [not precedential]. [Section 2(e)(1) mere descriptiveness refusal of THE RESERVOIR for "Plastic bags for household use for storing drinking water"].


Read comments and post your comment here.

TTABlog comment: See any WYHAs here?

Text Copyright John L. Welch 2014.

Tuesday, August 25, 2015

TTABlog Road Trip: 2015 Midwest IP Institute - Minneapolis, September 17-18th

Yours truly, the TTABlogger, will be back on the road in September, heading the Blogmobile west and north to Minneapolis for the 2015 Midwest Intellectual Property Institute on September 17 and 18, 2015. Details and registration information may be found in this brochure.


On the trademark side, the program will feature TTAB Chief Judge Gerard F. Rogers, who will discuss recent TTAB-related developments such as the B&B v. Hargis decision and possible rule changes. Judge Rogers will also appear on a panel with Carrie Hefte of Wells Fargo, Scott Johnston of Merchant & Gould, and yours truly, of Wolf, Greenfield & Sacks in Boston.

Fellow Blogger Steve Baird of Winthrop and Weinstine will team up with me to discuss "the year in trademark law," including some insights into the REDSKINS and FLANAX cases now wending their way through the appeal process, and a rundown of the more interesting and/or impactful recent decisions of the TTAB.


Read comments and post your comment here.

Text Copyright John L. Welch 2015.

TTAB Reverses Genericness Refusal of SKINSLEEVES, Finds Acquired Distinctiveness

In a 31-page opinion, the Board reversed a refusal to register the mark SKINSLEEVES for "medical devices, namely, non-compression fabric covers for legs and noncompression fabric covers for arms, non-compression fabric covers for skin protection of a patient's limb such as a leg or an arm, non-compression knitted skin coverings to be used for protection of the legs or arms of patients who have fragile skin that may be prone to tears and abrasions; protective fabric medical coverings for wound prevention." The examining attorney had based the refusal on the alternative grounds of genericness and mere descriptiveness, but applicant overcame both refusals, the second one by proving acquired distinctiveness. In re J.T. Posey Company, Serial No. 85206911 (August 18, 2015) [not precedential].


Genericness: The Board found the genus of goods to be "medical protective fabric skin coverings for wound prevention." The relevant public consisted of "medical professionals specifically charged with patient safety." [The Board noted the patients themselves might also be buyers of the goods, but there was no evidence of record to that effect.]

As to the meaning of SKINSLEEVES, there were no dictionary definitions of the term. The examining attorney submitted four website examples of the use of "skinsleeves" or variations thereof in a generic sense. However, there were also articles showing third-party use of SKINSLEEVES as a trademark for applicant's products.

Applicant argued that the fact that several accused infringers agreed to stop using the term SKINSLEEVES was evidence of non-genericness, but the Board pointed out that the cessation of use may have resulted simply from the desire to avoid litigation and not from any acknowledgment of the source identifying significance of the term. Nevertheless, the Board decided not to consider earlier use of the term by these accused infringers in the evaluation of the evidence.

In view of the mixed record, the Board concluded that the PTO had failed to satisfy the clear evidence standard for a genericness refusal.

Mere Descriptiveness: The Board found that the mark SKINSLEEVES when used in connection with medical protective fabric skin coverings for wound prevention "immediately engenders the
commercial impression of 'sleeves for skin,'" and not, as applicant contended, "sleeves of skin."

[T]he wide third-party use of the word “sleeve” in connection with medical protective fabric skin coverings for wound prevention demonstrates that medical professionals are accustomed to seeing, in connection with medical protective fabric skin coverings for wound prevention, the word “sleeve” preceded by another descriptive term (e.g., arm, leg, and limb). Thus when confronted with the term SKINSLEEVES, they would perceive a sleeve for skin.

Acquired Distinctiveness: Applicant submitted declarations from seven customer attesting to the source identifying significance of SKINSLEEVES, but that evidence was too skimpy to be probative. The statements of applicant's attorney regarding sales figures over a two year periods were not proper evidence, and applicant did not submit "actual evidence" of its sales receipts and advertising expenditures.

Nonetheless, in view of the facts that there were no dictionary definitions of “skin sleeve,” there was vague evidence of only one competitor using that term, and there are only three academic articles referencing the term “skin sleeves,” the Board found that SKINSLEEVES "is not so highly descriptive that its registrability under Section 2(f) may not be determined on the basis of Applicant’s declaration of substantially exclusive and continuous use since 2004."

The Board therefore reversed the Section 2(e)(1) mere descriptiveness refusal.

Read comments and post your comment here.

TTABlog comment: Note that the fact that applicant was the first and nearly the only user of the term SKINSLEEVES did not rule out the possibility of the mark being merely descriptive. On the genericness issue, however, those facts are important, although not dispositive.

Text Copyright John L. Welch 2015.

Monday, August 24, 2015

Two TTAB Administrative Trademark Judges Appointed

Chief Judge Gerard F. Rogers has announced the appointments of David K. Heasley and Cynthia C. Lynch to the position of Administrative Trademark Judge for the Trademark Trial and Appeal Board. This brings the number of TTAB judges to twenty-five (XXV).


David Heasley comes to the Board following a three-decade long career as a litigator, including fifteen years specializing in the litigation of trademark matters. During his time as a partner in the firm of Silverberg, Goldman & Bikoff, and more recently with Smith, Gambrell & Russell, Mr. Heasley represented such clients as the National Grange, Nike, FIFA, Major League Soccer, the Red Cross and the International Olympic Committee. Because of his experience representing both large, well-financed clients and non-profit or charitable organizations, Mr. Heasley has developed a deep appreciation of the varying litigation priorities for a wide variety of organizations. He also has developed a keen understanding of the differences between Board and district court litigation. Mr. Heasley’s experience also includes frequent appearances in ex parte appeal cases at the Board. As the author of many articles on various trademark topics, a regular member of the committee that organizes the Lefkowitz Trademark Moot Court Competition, and a lecturer for foreign judges and government officials on American trademark law, Mr. Heasley is well-versed in a wide variety of current trademark issues.

Before embarking on his long career as a litigator, Mr. Heasley served for two years as an Appellate Law Clerk for the Maryland Court of Special Appeals. Mr. Heasley earned his law degree with honors from the University of Maryland School of Law, and his bachelor’s degree from The Johns Hopkins University.


Cynthia C. Lynch joins the Board after having served the USPTO as the Administrator for Trademark Policy and Procedure for nine years. In that position, Ms. Lynch has engaged in frequent interaction with the TTAB regarding the legal issues that arise in ex parte examination, appeals, and in the international arena, an increasingly important aspect of Board work. Prior to assuming her position as a Trademark Administrator, Ms. Lynch spent five years handling high-level responsibilities as an Associate Solicitor. In that position, she represented the USPTO in intellectual property litigation, primarily defending TTAB and patent board decisions on appeal to the United States Court of Appeals for the Federal Circuit and in numerous federal district courts. In addition, Ms. Lynch frequently served as liaison to the United States Solicitor General’s Office (SG) to provide USPTO input on SG amicus curiae briefs and arguments before the United States Supreme Court.

Ms. Lynch’s legal career began with three years of service as a litigation and intellectual property associate in private practice. She then served three years as an Attorney-Advisor at the International Trade Commission. In that position, Ms. Lynch worked for an Administrative Law Judge handling all aspects of Section 337 trial proceedings involving patent, trademark, infringement/unfair competition and importation issues. A Phi Beta Kappa graduate of the University of North Carolina, Ms. Lynch earned her law degree from the University of Virginia School of Law.

Read comments and post your comment here.

Text Copyright John L. Welch 2015.

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

Here are four recent appeals from Section 2(d) likelihood of confusion refusals. Two were reversed. Which ones? [Answer in first comment].


In re Lin, Serial No. 86329057 (August 20, 2015) [not precedential] [Refusal to register the mark shown immediately below in view of the registered mark PH:FIVE, for overlapping clothing items].


In re Chauvet & Sons, Inc., Serial No. 86075662 (August 20, 2015) [not precedential] [Refusal to register the mark ROGUE for "Lighting apparatus incorporating one or more lighting colors to create special lighting effects in sports arenas, theatres, clubs and discotheques; lighting apparatus incorporating one or more lighting colors for sports arenas, theatres, clubs and discotheques; Lighting devices incorporating one or more lighting colors to create special lighting effects for concerts, theatrical productions and other events.," in light of the identical mark ROGUE registered for "Photographic accessories, namely: Collapsible light directors and diffusers for use with photographic lighting equipment for professional and recreational photography; Light directors and photographic lighting tents, all for use with photographic lighting equipment for professional and recreational photography; Stands for photographic apparatus"].


In re YourGemologist, LLC, Serial No. 86228244 (August 19, 2015) [not precedential] [Refusal to register YOURGEMOLOGIST for "Providing educational information in the academic field of gemology for the purpose of academic study," in view of the registered mark MYGEMOLOGIST for "Gemological services, namely providing information regarding gems via the Internet"].


In re Sloane Construction Inc., Serial No. 86441206 (August 10, 2015) [not precedential] [Refusal to register THE TANNERY for "tanning salons and skin tanning services for humans for cosmetic purposes" in view of the registered mark CELSIUS TANNERY for "tanning salon services"].


Read comments and post your comment here.

TTABlog comment: Well, how did you do? By just randomly guessing two of the four cases, you have a one-in-six change of being correct.

Text Copyright John L. Welch 2015.

Friday, August 21, 2015

Precedential No. 28: TTAB Denies Motion to Add Claim Preclusion Defense As Futile

In yet another claim preclusion decision, the TTAB denied Applicant Al-Jazeera's motion to amend its answer to add an affirmative defense of claim preclusion, ruling that the amendment would be futile because claim preclusion did not apply. The Board found that the mark that was challenged in the other proceeding (BEIN) did not create the same commercial impression as the mark involved in this proceeding (BEIN SPORT). Be Sport, Inc. v. Al-Jazeera Satellite Channel, Opposition No. 91213743 (August 12, 2015) [precedential].


The first opposition, involving applicant Al-Jazeera's mark BEIN, was dismissed with prejudice under Rule 2.132(a) when Opposer Be Sport failed to prosecute. In this proceeding, which was co-pending with the other, Al-Jazeera filed a motion to amend its answer to add the affirmative defense of claim preclusion, along with a motion for summary judgment on that ground.

The Board noted that, although leave to amend an answer is to be "freely given when justice so requires," leave may be denied when the claim or defense would be "legally futile." The Board therefore turned to an analysis of the claim preclusion issue.

The doctrine of claim preclusion holds that a judgment on the merits in a prior proceeding bars a second proceeding involving the same parties or their privies, based on the same cause of action (based on the same set of transactional facts). Here the first two elements were not in dispute. The question, then, was whether opposer's Section 2(d) claim in the first proceeding was based on the same set of transactional facts as the second opposition. In making that determination, the Board considers (1) whether the mark involved in the first proceeding is the same mark, in terms of commercial impression, as the mark in the second, and (2) whether the evidence regarding likelihood of confusion would be identical in each case. Claim preclusion should be invoked with caution lest a litigant be denied its day in court. 

Here, BEIN, the mark in the Prior Opposition, creates a different commercial impression than does BEIN SPORT, the mark involved in this proceeding. While SPORT may be descriptive and both parties disclaimed SPORT in the involved and pleaded applications, "a disclaimer with the Patent and Trademark Office does not remove the disclaimed matter from the purview of determination of likelihood of confusion."

Furthermore, the evidence would not necessarily be the same in each case. "BEIN alone is a different mark than BEIN SPORT, and each case would require assessment of likelihood of confusion based on the involved marks as a whole." The more similar the marks at issue, the less similar the goods or services must be to support a finding of likely confusion. Accordingly, the evidence and analysis may be different in the two cases.

The Board therefore found that Al-Jazeera's proposed defense of claim preclusion was futile, and it denied the motion for leave to amend the answer. The motion for summary judgment was denied as moot.

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Text Copyright John L. Welch 2015.