Thursday, April 24, 2014

Test Your TTAB Judge-Ability On These Two Mutilation Cases

Two days ago, the Board decided two cases involving refusals based on the Examining Attorney's conclusion that the mark as depicted in the application drawing was not, as required by Rule 2.51(b), a "substantially exact representation of the mark as used on the specimen." Let's see how you do with this recurring issue.

In re Louisiana Medical Mutual Insurance Company, Serial No. 85204125 (April 22, 2014) [not precedential], involved an application to register the mark shown above, consisting of the letters MI with a flourish above the letter I, for "educational services, namely, conducting online seminars in the field of insurance risk management." On the specimen of use, shown below, the mark included the word COMMUNITY within the letter "I":

In re Scheucher, Karl F., Serial No. 85529532 (April 22, 2014) [not precedential], concerned an application to register the mark SIPS in standard character form, for various goods in class 9. The specimen of use depicted the mark as follows, with the letters S-I-P-S serving as the first letters of the words "Scalable Intelligent Power Supply."

The question in each case was whether the applied-for mark (i.e., the mark shown in the drawing) created a separate and distinct commercial impression. If the applied-for mark is part of a single, unified design, then the removal of the portion is an impermissible mutilation of the mark as used.

Judge Anthony R. Masiello authored both opinions. In the first case, after reviewing several prior TTAB rulings on the mutilation issue, the Board found it significant that both MI and COMMUNITY are literal elements - i.e., they consist of letters or words. "When customers see letters and words in close proximity to each other, they will be inclined to try to make sense of them all together." MI COMMUNITY could, for example, be seen as suggesting the community of customers that applicant serves. Where there are such readily apparent meanings, consumers are likely to perceive the combination as a unitary mark.

Applicant argued that the Board should resolve any doubt in its favor, but cited no binding precedent for that principle. In any event, the Board did not consider this case to be a close one.

In the second case, the Board again noted that an applicant may apply to register any element of a composite mark that creates a separate and distinct commercial impression. But again the Board found that the applied-for mark is not a substantially exact representation of the mark as actually used.

If we consider only the large, boldfaced lettering on the specimen, we will, of course, see the letters SIPS. But that would require that we cast a blind – or at least myopic – eye on the remainder of the mark. The words “Scalable Intelligent Power Supply” are there and we cannot pretend that they are not. If we try to separate the bold-faced letters from the other lettering, we will have, on the one hand, SIPS, but on the other hand the unknown designations “calable,” “ntelligent,” “ower” and “upply.” No reasonable customer will perceive the mark on the specimen in this way ....

The Board concluded that the applied-for mark is a mutilation of the mark as actually used, and it therefore affirmed the refusal to register.

Read comments and post your comment here.

TTABlog note:  So how did you do? I think I would have reversed the second refusal.

Text Copyright John L. Welch 2014.

Wednesday, April 23, 2014

CAN DEW for Nutritional Drink Mixes Confusable With Pepsico's Famous DEW Mark, Says TTAB

In this second round of this feud between Pepsico and Jay Pirincci over the latter's applied-for mark CAN DEW, the Board sustained the opposition to Pirincci's class 5 goods ("nutritional drink mixes for use as a meal replacement in a can plastic or bottle") on the ground of likelihood of confusion with Pepsico's famous DEW mark for soft drinks. The Board declined to reach Pepsico's dilution claim. In the first round [TTABlogged here], the Board sustained the opposition to Pirincci's class 32 goods, but denied Pepsico's motion for summary judgment as to the class 5 goods. Pepsico, Inc. v. Jay Pirincci, Opposition No. 91187023 (April 14, 2014) [not precedential].

The Board's treated its findings made in its prior decision as the law of the case. Pirincci, appearing pro se, shot himself in the foot by submitting an unverified declaration as his testimony. The parties had stipulated that testimony by declaration was acceptable, but Pirincci failed to verify his statement, and so the Board refused to consider it.

Next, the Board denied Pepsico's motion to strike Pirincci's brief at final hearing because it was filed one day late. Although the delay was unjustified, it was minimal in duration, caused no prejudice to opposer, had little impact on the proceeding, and apparently was not the result of bad faith.

Moving to the merits of the case, the Board went farther than in its earlier decision, here ruling that Pepsico's mark DEW is also famous for soft drinks. It found applicant's CAN DEW mark to be highly similar to Pepsico's DEW mark, and found the involved goods to be related "to the extent that they are drinks (or mixes to make drinks) which might be nutritious." Moreover, the Board inferred from third-party registrations that consumers might assume that the involved goods emanate from a single source.

The consumers for the involved goods overlap, and the goods travel in partly identical channels of trade (e.g., drugstores, grocery stores, and supermarkets). And the goods are inexpensive and likely to be purchased with only ordinary care.

Balancing the relevant duPont, the Board found confusion likely, and it sustained the opposition regarding Pirincci's class 5 goods, on the ground of likelihood of confusion.

[A]lthough opposer has not shown on this record that the parties’ goods share an especially close relationship, its strong showing on the other relevant factors — including the opposer’s fame and the similarity of the marks — more than makes up for its somewhat weaker showing on the second du Pont factor.

Read comments and post your comment here.

TTABlog note:  The well-written, 48-page opinion in this case discusses a number of interesting points raised by the parties: Pirinnci's intent in adopting the mark, his reliance on a statement supposedly made by the interlocutory attorney regarding the due date for the final brief, the motivation of Pepsico in bringing the opposition, the inapplicability of "file wrapper estoppel" to the interpretation of the identification of goods, among others. The footnotes alone are worth a careful reading.

Text Copyright John L. Welch 2014.

Tuesday, April 22, 2014

Precedential No. 20: TTAB Affirms Mere Descriptiveness Refusal of TOURBILLON & Design for Jewelry and Watches

The Board affirmed a Section 2(e)(1) refusal to register the mark TOURBILLON & Design (shown below), finding it to be merely descriptive of "jewellery, horological and chronometric instruments." There was no doubt that the word TOURBILLON is descriptive of a feature or component of horological or chronometric instruments, but applicant Swatch maintained, without success, that the word does not describe jewelry, and further that the design portion of the mark is distinctive. In re The Swatch Group Management Services AG, Serial No. 85485359 (April 18, 2014) [precedential].

Swatch stated in its application that the mark "consists of the term ‘TOURBILLON’ below a design of a 'tourbillon," and it disclaimed any exclusive right in TOURBILLON for horological and chronometric instruments (but not for jewelry). As described in Wikipedia:

In horology, a tourbillon ... is an addition to the mechanics of a watch escapement. Developed around 1795 by the French-Swiss watchmaker Abraham-Louis Breguet from an earlier idea by the English chronometer maker John Arnold a tourbillon aims to counter the effects of gravity by mounting the escapement and balance wheel in a rotating cage, to negate the effect of gravity when the timepiece (and thus the escapement) is stuck in a certain position.

Moreover, the Board concluded, TOURBILLON is merely descriptive of jewelry because, the evidence showed, the category of "jewelry" includes watches.The fact that this reading of the term "jewelry" results in some redundancy in the identification of goods was of no concern, because "redundancy in identification does not limit or otherwise adversely affect the evidentiary value of a registration certificate."

As to the design element of the mark, the Board noted that a design that comprises merely an illustration of a product is unregistrable under Section 2(e)(1), just as merely descriptive wording would be. Examining Melissa Vallillo maintained that the design element (which Swatch described as a tourbillon) "is the legal equivalent of the wording TOURBILLON," and that "the design element in the mark features various parts commonly found in a tourbillon, with such parts appearing as they would in a tourbillon."

Wikipedia photograph

Swatch argued that the depiction in its mark is not an exact representation of its extremely intricate escapement, but rather is an abstract, highly stylized version. The Board, however, pointed out that the question is is whether the design forthwith conveys an immediate idea of a feature of the goods and lacks any additional fanciful, arbitrary, or suggestive matter. "The fact that applicant’s design is not completely accurate, realistic or true-to-life does not exempt it from a finding of mere descriptiveness." Although the record showed "many subtle variations in the basic design of the device, it is clear that the design in applicant’s mark depicts a tourbillon and would be easily recognized as such."

third-party tourbillon

Considering the applied-for mark as a whole, the Board found that the combination of the design with the word TOURBILLON "reinforces the singular impression conveyed by the mark as a whole, which is nothing more than the significance of 'tourbillon.'"

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog note:  Maybe Swatch should rely on copyright to protect the design element of its applied-for mark. Or maybe it should file an application to register the mark for "jewelry, not including horological and chronometric instruments."

Text Copyright John L. Welch 2014.

Monday, April 21, 2014

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Precedential No. 19: TTAB Grants Bayer's Petition for Cancellation Of FLANAX Registration Under Section 14(3)

In a case of first impression, the Board granted Bayer's petition to cancel Belmora's registration for the mark FLANAX for "orally ingestible tablets of Naproxen Sodium for use as an analgesic," on the ground that the mark is being used by Belmora to misrepresent the source of its goods, in violation of Section 14(3) of the Trademark Act. The Board found that the record evidence "readily establishes blatant misuse of the FLANAX mark in a manner calculated to trade in the United States on the reputation and goodwill of petitioner’s mark created by its use in Mexico." Bayer Consumer Care AG v. Belmora LLC, Cancellation No. 92047741 (April 17, 2014) [precedential].

Belmora's FLANAX

Because Bayer could not show use of the FLANAX mark in the United States, the Board, in a prior ruling, dismissed its claims of likelihood of confusion and fraud. Bayer Consumer Care AG v. Belmora LLC, 90 USPQ2d 1587 (TTAB 2009) [precedential]. [TTABlogged here]. That same ruling also dismissed Bayer's claim of violation of Section 6bis of the Paris Convention because the Paris Convention is not self-executing and does not afford an independent cause of action for parties in Board proceedings.

Standing: Belmora challenged Bayer's standing at every stage of the proceeding, pointing out that Bayer does not own a registration for the mark FLANAX in the United States, and has not used and does not plan to use the mark here. In short, Belmora asserted, no use means no trademark rights. Bayer responded that Section 14 of the Trademark Act imposes no use requirement, in contrast to  Section 2(d).

Bayer established ownership of a Mexican registration for the mark FLANAX for pain relievers, and that it licenses its corporate affiliate to sell the product under that mark in Mexico. FLANAX brand analgesic has been sold in Mexico since 1976 and ranks as the top-selling pain reliever in Mexico. The Board found that Bayer met the CAFC's liberal standard for standing because it established that "it has an interest in protecting its Mexican FLANAX mark."

If respondent is using the FLANAX mark in the United States to misrepresent to U.S. consumers the source of respondent’s products as petitioner’s Mexican products, it is petitioner who loses the ability to control its reputation and thus suffers damage. *** [T]he record in this case clearly establishes that the reputation of the Mexican FLANAX mark does not stop at the Mexican border.

Section 14(3) Under Section 14(3) of the Trademark Act, a party may petition to cancel a registration of a mark if the mark "is being used by, or with the permission of, the respondent so as to misrepresent the source of the goods or services on or in connection with which the mark is used." The petitioner must show that respondent took steps to deliberately pass off its goods as those of petitioner.

The Board observed that, "although the facts before us present a matter of first impression, they do not present a close case." It found that Belmora"knowingly selected the identical mark FLANAX, used by petitioner's Mexican licensee on naproxen sodium-based painkillers, for use in the United States on the same type of goods."  The Board pointed to the fabrication of documents by, and untruthful testimony of, Belmora's founder regarding the origin of its FLANAX mark, the substantial copying of the FLANAX logo and packaging used in Mexico, and perhaps most importantly Belmora's repeated invocation of the reputation of Bayer's FLANAX mark when marketing its own FLANAX product in the United States - which the Board deemed an admission that Bayer's FLANAX mark "is known among the U.S. retailers and Hispanic consumers to whom respondent markets its products."

Belmora asserted that, because its own name and not Bayer's appears on its product, it could not have misrepresented the source of the product. The Board disagreed.

Respondent .. need not use the Bayer name to affirmatively misrepresent the source of its FLANAX-brand products. Respondent purposely achieved the same result by not only copying petitioner’s mark and logo – and, for several years, significant aspects of its packaging – but also by repeatedly holding itself out as the source in the United States of the product sold for decades under the same mark in the bordering country of Mexico.

Finally, Belmora maintained that it changed its packaging and discontinued its attempts to link its FLANAX product to Bayer's product, but the Board found that, even if those assertions were true, Belmora's "continued use of the FLANAX mark, coupled with its earlier deceptive marketing over several years as it built its business, constitutes misrepresentation of the source of respondent’s goods within the meaning of Section 14(3)."

And so the Board granted the petition for cancellation.

Read comments and post your comment here.

TTABlog note:  Wow! What would happen if Bayer brought a civil action in an attempt to enjoin Belmora's use of FLANAX? The courts in the United States do not recognize the "well-known  mark" basis for relief (but see Grupo Gigante v. Dallo), so what claim would it have? What if Bayer started using FLANAX in the United States. Could Belmora stop it? And what if a third-party began using FLANAX?

Marty Schwimmer, my go-to guy on these inter-jurisdictional trademark use issues, provides his commentary here at the Trademark Blog, in a post entitled "Bayer v Belmora (FLANAX): Is This The First TTAB 'Reputation Without Use' Case?"

Suppose Bayer had filed an intent-to-use application for FLANAX in the United States. Could it then bring a likelihood of confusion claim under Section 2(d)? Compare Fiat Group Automobiles S.p.A. v. ISM, Inc., 94 USPQ2d 1111 (TTAB 2010) [precedential] [TTABlogged here], in which the Board held that a foreign owner of a famous mark, who has filed an I-T-U application, may oppose an application on the basis of dilution.

Text Copyright John L. Welch 2014.

Friday, April 18, 2014

PTO Publishes Precedential Director's Ruling Reversing Abandonment Refusals

For the first time in years, the USPTO has published a precedential ruling of the Director: In re P.T. Polymindo Permata, 109 USPQ2d 1256, 1257-58 (Dir. USPTO 2013), in which the Director, exercising supervisory authority under Trademark Rule 2.146(a)(3), reversed the holding of abandonment in two applications. The Director found that applicant had substantially complied with Rule 2.65(b) by providing unverified but otherwise acceptable substitute specimens in its requests for reconsideration and then the necessary verifications on petition.

The Director found no clear error in the examining attorney's deeming the applications abandoned when applicant failed to file complete responses to the final refusals. Applicant had submitted, with requests for reconsideration, substitute specimens but failed to include appropriate verifications. However, the Director ruled, applicant had substantially complied with the examining attorney's requirements and had made a good faith attempt to advance prosecution. The preferred course of action for the examining attorney would have been to allow applicant 30 days within which to provide the required verifications. See Rule 2.65(b) and TMEP 715.03(a)(2)(c). Moreover, with its petition to the Director, applicant provided accompanying declarations under Rule 2.20.

The Director therefore exercised her supervisory authority under Rule 2.146(a)(3) to grant the petitions. The applications were returned to the examining attorney for consideration of the substitute specimens and supporting declarations.

Read comments and post your comment here.

Text Copyright John L. Welch 2014.

Thursday, April 17, 2014

Test Your TTAB Judge-Ability: Is "N2WINES" Merely Descriptive of Wine Sold in Kegs?

N2Wines applied to register the mark N2WINES for "wine sold in kegs," but the PTO refused registration under Section 2(e)(1). The examining attorney deemed the mark merely descriptive of the goods, maintaining that "N2" is the symbol for nitrogen, an inert gas used in connection with wine tapping systems. Applicant's own website stated that its wine is "pushed through a tap system similar to draft beer, by an inert nitrogen (N2) based gas blend." How do you think this came out? In re N2Wines LLC, Serial No. 85680969 (April 15, 2014) [not precedential].

The examining attorney also relied on Internet articles and advertisements referring to other wine tapping systems that use nitrogen to preserve and dispense wine. The applicant and the examining attorney were seemingly in agreement that N2 is a recognized symbol for nitrogen.

The Board, however, found that "N2" takes on a different meaning and will be perceived by consumers in a manner that is not descriptive. The record supported applicant's assertion that "N2 when used in N2WINES is a double entendre meaning 'into wines.'"

Examples of marks that have been found to be registrable double entendres include SUGAR and SPICE for bakery products, SHEER ELEGANCE for pantyhose, SHEER PERFECTION for makeup for legs, FAST'N EASY for pre-cooked meats, and HAY DOLLY for self-loading trailers for hauling bales.

Applicant submitted evidence of registered marks and domain names in which "N2" means "into": for example, Dance N2 Shape; N2 Pottery, N2 Learning, N2 Graphics, and N2WIN.

N2WINES is a double entendre meaning "into wines," which implies that consumers of applicant's goods are interested in wine. "It does not immediately convey an idea of any ingredient, quality, characteristic, feature, function, purpose or use of the goods, and thus is not merely descriptive of the goods."

The Board therefore reversed the refusal.

Read comments and post your comment here.

TTABlog comment:  Well, how did you do?

Text Copyright John L. Welch 2014.

Wednesday, April 16, 2014

TTAB Denies Motion to Strike Late-Filed Final Brief

In TTAB proceedings, the defendant sometimes gets confused as to when to file its brief at final hearing. Rule 2.128 says that the defendant's brief is due to be filed "not later than thirty days after the due date of the first brief." The first brief (i.e., plaintiff's brief) is due 60-days after the date set for the close of rebuttal testimony. If plaintiff's brief is served by mail, does defendant get an extra five days to file its brief under Rule 2.119(c)? No. Rule 2.119(c) is inapplicable to briefing deadlines. This point came to play in a recently ruling in Promark Brands Inc. and H.J. Heinz Company v. GFA Brands, Inc., Opposition No. 91194974. The Board, in this order, set a side the interlocutory attorney's order that had stricken defendant GFA's trial brief because it was filed six days late.

GFA mistakenly believed that Rule 2.119(c) applied, giving it five extra days to file its brief. Then it ran into problems e-filing its brief. It filed the brief at 11:10 p.m. Central Time, which was 12:10 a.m. Eastern Time. [ESTTA filing are subject to Eastern Time].

The interlocutory attorney granted Promark's motion to strike GFA's brief. GFA petitioned to the Director, which kicked the matter back to the Board for reconsideration of the interlocutory attorney's ruling. Meanwhile, GFA had requested oral argument and, in light of the order striking its brief, had asked for an extra 15 minutes to argue its case. [The case is set for oral argument at the Fordham IP Institute on April 25th (here)].

The Board noted that the time for filing GFA's brief was set by operation of Rule 2.128 and not by the date of service of Promark's brief, and so Rule 2.119(c) did not apply.

The Board looked to the Supreme Court's Pioneer decision (Pioneer Inv. Serv. Co. v. Brunswick Assoc. Ltd., 507 U.S. 380 (1993)), a five-to-four ruling, "which underscores that the question whether neglect of a matter is excusable is not easily or predictably answered." Such questions "necessarily must be left to resolution by exercise of the discretion of the Board."

The Board found no clear error in the interlocutory attorney's weighing the third Pioneer factor (the reason for the delay and whether it was within the reasonable control of the movant) heavily against GFA. Nor was there error in weighing the second factor (the length of the delay) "somewhat" against GFA.

Nonetheless, the Board may exercise its discretion to considered the additional circumstances that are "significant" in this case. The Board warned, however, that its ruling here is "based solely on the particular facts of the case, and should not be taken as an indication that a similar result would be attainable in another case that differs in any particular fact or circumstance."

The Board observed that having a full set of briefs prior to oral argument enhances the quality of the argument and may suggest issues that the Board panel should consider in its deliberations. Another factor concerned GFA's mistaken reliance on Rule 2.119(c). Similar mistaken reliance has occurred in other Board cases. The Board noted that the TBMP, in the section concerning the time for filing defendant's main brief, makes no reference to the inapplicability of Rule 2.119(c). [The Board suggested that a change to the Rules be considered, to incorporate clarifying language or cross-referencing regarding the interplay of these two Rules].

The Board therefore set aside the order striking Defendant GFA's brief. It denied the request for additional time for argument as moot.

Read comments and post your comment here.

TTABlog note:  Recently, in Pepsico, Inc. v. Jay Pirincci, Opposition No. 91187023 (April 14, 2014) [not precedential], the Board denied opposer's motion to strike applicant's brief that was filed one day late. Although the delay was unjustified, it was minimal in duration, caused no prejudice to opposer, had little impact on the proceeding, and apparently was not the result of bad faith.

Text Copyright John L. Welch 2014.

Tuesday, April 15, 2014

Machine Stand Configuration Lacked Acquired Distinctiveness, Says TTAB

The Board affirmed a refusal to register the product configuration shown below, for stands for industrial stirring machines, finding that applicant had failed to establish acquired distinctiveness under Section 2(f). The lack of "look-for" advertising calling attention to the "Z" shape was a major factor in the Board's decision. Netzsch-Feinmahltechnik GmbH, Serial No. 79100238 (March 25, 2014) [not precedential].

We know from Wal-Mart v. Samara Bros. that a product configuration cannot be inherently distinctive. To merit registration, the purported mark must have achieved acquired distinctiveness. In support of its Section 2(f) claim, applicant submitted marketing materials, advertisements and articles from trade publications, a declaration from a company representative, ten customer statements, and a copy of its registration for the mark ZETA.

The Board observed that, when prompted to look for the "Z" shape in applicant's design, one can recognize it, but nothing in applicant's marketing materials calls attention to the letter "Z" in any explicit way. The company declaration averred that the configuration had been in use since January 1997, and that applicant's products garnered a 35 to 40 percent share of the relevant market. But applicant's evidence did not show promotion of the specific stand configuration embodied in the applied-for mark, as opposed to touting the superiority of applicant's products in general.

The customer's declarations stated that they associated the alleged mark with applicant, but the declarations were insufficient in number to support a finding that the configuration serves as a trademark, particularly in view of the lack of look-for advertising. In short, the Board was "simply not persuaded by these statements that applicant has managed to create consumer recognition of this design as a source indicator."

The trade articles established that applicant is an industry leader, but lacking was any mention of the configuration of the goods, or that consumers associated the Z-shaped stand with applicant's products. These publications gave the Board no reason to conclude that applicant or its competitors use their product shapes as trademarks.

Finally, applicant's ownership of a registration for the word mark ZETA was of no help. Nothing in the record would lead one to conclude that the mark ZETA represents the same source indicator as the "fairly obscure, largely unmentioned shape of [applicant's] industrial milling stand."

Concluding that applicant had failed to establish acquired distinctiveness, the Board affirmed the refusal to register under Sections 1, 2, and 45 of the Trademark Act.

Read comments and post your comment here.

TTABlog comment:  Zzzzzzzzzzzz! Actually, this opinion was not that soporific. Only one Z.

Text Copyright John L. Welch 2014.

Monday, April 14, 2014

Precedential No. 18: Identity of One Party's Trial Witnesses Cannot Be Kept Secret from Other Party

Finding that Opposer Hunter Industries had established prior common-law rights in the mark PRECISION DISTRIBUTION CONTROL for irrigation sprinklers, the Board sustained its opposition to registration of the mark PRECISION for landscape irrigation nozzles and sensors on the ground of likelihood of confusion under Section 2(d). Perhaps more interesting than the Section 2(d) analysis were the Board's rulings on several evidentiary issues. Hunter Industries, Inc. v. The Toro Company, Opposition No. 91203612 (March 31, 2014) [precedential].

Evidentiary rulings: Hunter successfully moved to strike certain testimony and exhibits proffered by Applicant Toro. First, the Board excluded Toro's exhibits that were submitted on a flash drive because Rule 2.126 does not permit such submissions. The documents should have been submitted on paper or electronically via ESTTA. A CD-ROM containing two video files submitted by Toro was in acceptable form, since ESTTA is currently unable to accept video files. See, generally, TBMP Section 106.03.

However, the Board rejected the two video files because they had not been produced to Opposer Hunter during discovery. Toro did not dispute that the two videos fell withing at least one of Hunter's production requests. Toro claimed that it produced the documents as soon as it discovered them, but it offered no reason why the videos were not found sooner.

Toro submitted seven declarations from distributors of irrigation equipment [the parties' ACR agreement permitted submission of testimony by way of affidavits or declarations]. Portions of the declarations were designated "Trade Secret/Business Confidential" under the Board's Standard Protective Order, as modified by the ACR agreement. Hunter moved to strike these declarations on the ground that Toro had over-designated as confidential the identifying information for the declarants. The Board agreed with Hunter.

A party’s right to confront an adverse witness is significantly impaired when it is prevented from knowing the name, employer and location of the witness. Although opposer’s counsel was privy to the redacted information, opposer itself practices in the relevant industry and likely is familiar with some or all of the witnesses or their employers. That kind of information may be critical when considering adverse testimony, and it generally should not be kept from a party.

Such identifying information may be protectable during discovery, but not when the individual is to be named as a witness. In short, when a party chooses to rely on the testimony of a witness at trial, that party has waived the protection provided by the Protective Order to trade secret/commercially sensitive information. The Board therefore struck the seven declarations from the record.

Priority: Applicant Toro relied on the filing date of its application, June 21, 2010, as its (constructive) first use date. Toro argued that its own mark PRECISION is suggestive, but that Hunter's mark is merely descriptive. However, the record did not sufficiently support a finding that Hunter's mark, in its entirety, is merely descriptive. In any case, Hunter presented ample evidence to show that the mark had acquired distinctiveness prior to June 21, 2010. It submitted proof of continuous use of the mark for its goods since 1992, and its sales figures and marketing expenditures were "appreciable."

Likelihood of Confusion: The Board found the word "PRECISION" to be the dominant and most significant feature of Hunter's mark, since "DISTRIBUTION CONTROL" clearly describes a precise feature of the sprinklers. Toro's mark PRECISION, the Board opined, would appear to prospective customers as a shortened version of Hunter's mark. Therefore the Board found the marks to be similar in sound, appearance, connotation, and commercial impression.

The Board found the goods to be identical in part, since the parties use their respective marks on rotating nozzles for irrigating lawns. The opposed application did not contain any limitation as to channels of trade or classes of customers, and so the Board assumed that Toro's goods moved in all the normal channels, and to all classes of purchasers, for those goods. Toro's channels necessarily overlapped with those of Hunter for its nozzles.

Hunter's mark PRECISION DISTRIBUTION CONTROL may be conceptually weak, but in light of Hunter's long use, sales, and promotion of the mark, the Board found that it is entitled to protection against registration of PRECISION for overlapping and closely related goods.

The Board recognized that purchasers for the involved goods are landscape contractors who will exercise a degree of care and deliberation in deciding to make a purchase. However, even sophisticated buyers are likely to view the subjects marks as indicating a single source when they are used on identical or closely related goods.

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

Read comments and post your comment here.

TTABlog comment:  I'm guessing that this opinion was deemed precedential because of the evidentiary rulings, rather than the rather straightforward Section 2(d) analysis. What do you think?

Text Copyright John L. Welch 2014.

Friday, April 11, 2014

Affirming Refusal, TTAB Says "HOURS OF ENERGY NOW" Not Being Used as a Trademark

The Board affirmed a refusal to register the applied-for mark HOURS OF ENERGY NOW for dietary supplements and "energy shots," because the phrase as it appears on applicant's specimens of use, fails to function as a trademark. In re Innovation Ventures, LLC, Serial No. 85637294 (March 25, 2014) [not precedential].

Of course, a phrase or slogan is not per se unregistrable, but it must serve as a source indicator to qualify as a trademark or service mark. The critical question is how the public perceives the purported mark.

Examining Attorney Won Teak Oh contended that consumers will not see the phrase as a trademark because it appears only in conjunction with other phrases touting the characteristics of the product.

The Board scrutinized applicant's specimens of use, observing that in two of them the phrase "Hours of energy now" appears as one of a series of "bullet points" providing informational text, in less prominent position than the mark 5-HOUR ENERGY. Third-party advertising evidence confirmed that consumers understand the phrase as providing information that the product is fast acting and long lasting. Contrary to applicant's argument, the PTO need not show that the phrase is in common, everyday use.

Applicant argued that, because the Examining Attorney had withdrawn a Section 2(e)(1) mere descriptiveness refusal, the phrase must be a merely suggestive mark. But that was a nonsequitur because the phrase was not functioning as a mark at all.

In sum, the Board found that the proposed mark, as used by applicant, "merely informs prospective purchasers that applicant’s products will provide an immediate boost of energy upon consumption and that the increased levels of energy will last for several hours." It is therefore "incapable of functioning as a trademark." [Incapable? Maybe not, if used in a proper manner - ed.].

Read comments and post your comment here.

TTABlog comment: The phrase on the specimen above has an asterisk at the end. What if that were a "TM"?

Text Copyright John L. Welch 2014.