Thursday, December 18, 2014

Precedential No. 43: TTAB Dismisses XBOX 360 Cancellation Petition as Sanction for Misconduct

The Board granted Microsoft's Rule 12(b)(6) motion to dismiss a petition to cancel its registration for the mark XBOX 360 for publications in the field of computer games, finding that petitioners had failed to state a claim upon which relief can be granted. Petitioners, appearing pro se, failed to establish standing, and furthermore their claims of fraud and of misrepresentation of source under Section 14(3) were woefully inadequate. The Board also granted Microsoft's motion for sanctions, based upon petitioners' conduct in this and other proceedings in which it asserted similarly dubious claims. NSM Resources Corp. and Huck Doll LLC v. Microsoft Corp., Cancellation No. 92057932 (November 25, 2014) [precedential]

Motion to Dismiss: Petitioner's claims centered on Microsoft's user manual for a game called "Stoked," which manual displayed the term "Huck" in its pages. Apparently, the game "Stoked" runs on the XBOX 360. Petitioners claimed ownership of twelve applications for marks comprising or containing the word "Huck." However, the Board observed, the HUCK marks bear no resemblance to the mark XBOX 360.

Petitioners claimed that use of the term "Huck" in the "Stoked" user manual infringed the HUCK marks. But this claim of damage was not based on the continued existence of the XBOX 360 registration.

The fact that the word "Huck" may be used in respondent's written materials that happen also to bear respondent's registered mark, a mark not remotely similar to "Huck," does not establish a basis upon which to allege standing to cancel the registration of the subject mark.

Even if petitioners had suffered damage by distribution of the Microsoft user manuals, that damage was unrelated to the XBOX 360 mark. Consequently, petitioners do not have a personal stake in this proceeding and have no reasonable belief of damage caused by continuation of the registration. Because standing is a necessary element of a petition for cancellation, the petition must be dismissed.

Nonetheless, the Board went on to consider the two claims asserted by petitioners. As to their fraud claim, one part concerned use of the R-in-a-circle symbol with the mark STOKED, but the petition did not seek cancellation of a registration for STOKED. The other part concerned allegedly false statements made in Microsoft's Section 8 & 15 declaration for the XBOX 360 registration, but this claim was based merely on "information and belief" and failed to include a recitation of specific facts constituting the alleged fraud, as required by Rule 9(b), Fed. R. Civ. P.

Turning to the Section 14(3) misrepresentation of source claim, petitioners did not allege that Microsoft's use of the XBOX 360 mark was calculated to trade on petitioners' goodwill and reputation, but instead focused on use of the term "Huck." The facts alleged did not constituted a viable claim under Section 14(3) since there was no allegation that the XBOX 360 mark was in any way associated with petitioners.

Thus petitioners failed to state a claim upon which relief can be granted, and the Board dismissal of the petition was again warranted. [In a footnote, the Board pointed out that it is empowered to determine only the right to register, and has no authority to determine the right to use, nor to award the $1 billion dollars in damages sought by petitioners.]

Motion for Sanctions: Petitioner NSM filed twenty-nine oppositions, cancellations, and requests for extension of time to oppose since 2008. [Who do they think they are? Leo Stoller? - ed.]. It instituted nine cancellations or oppositions against marks that bear "absolutely no resemblance to its asserted marks," and six extensions of time to oppose marks that "do not appear to resemble petitioners' HUCK marks." Petitioners' repeated and inadequate assertions of fraud, claims of false connection under Section 2(a), deceptiveness and immoral or scandalous matter, likelihood of confusion, and dilution evidence the abuse of the Board's procedures. Petitioners have alleged ownership of marks that are, with few exceptions, entirely dissimilar from the marks they challenged.

Petitioners’ pattern of behavior leaves no doubt that the noted proceedings were initiated in bad faith, and at least with the intent to harass third parties who have lawfully registered their marks, or to unnecessarily delay those seeking to register their marks.

On five prior occasions the Board granted motions dismissing Petitioner NSM's pleadings based either on lack of standing or failure to state a claim. The Board concluded that in this case petitioners could not have had a good faith belief that the assertion of the same claims was warranted.

Indeed, petitioners’ vexatious conduct unnecessarily disrupts the fair allocation of Board resources. The filing of such frivolous cases requires that the Board sift through each case filed by petitioners, including pages upon pages of unsupported claims that in turn trigger further motion practice to prevent unnecessary litigation from going forward. These are resources and time better devoted to more meritorious matters. The Board has an interest in seeing that its processes are not abused for purposes of harassment and delay.

The Board concluded that, under Rule 11 and its inherent authority to sanction, "any sanction short of judgment would be futile and unfair to respondent and any other party targeted by petitioners." Therefore, it dismissed this case with prejudice as a sanction for petitioners' conduct in this case.

Furthermore, the Board ordered the petitioners to show cause why they, their shared principal, Zane Murdock, and any entity owned or controlled by Murdock, should not face additional sanctions to deter this pattern of filing frivolous petitions. Included in the proposed additional sanctions were requirements that these persons must retain outside counsel for any future filings, that they not file any request for extension of time for one year, and that they never file a notice of opposition or petition for cancellation where the challenged mark bears no resemblance to the HUCK marks and where the legal basis for the claim is fraud.

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TTABlog note: Well, at least Leo Stoller isn't forgotten, since one of his sanction decisions was cited.

Text Copyright John L. Welch 2014.

Wednesday, December 17, 2014

CAFC Reverses TTAB Affirmance of Section 2(d) "TAKETEN" Refusal

In a precedential opinion, the U.S. Court of Appeals for the Federal Circuit reversed a TTAB decision (here) which had affirmed a Section 2(d) refusal to register the mark TAKETEN for "health care services, namely, evaluating weight and lifestyle health and implementing weight and lifestyle health improvement plans in a hospital-based residential program." The Board had agreed with the USPTO in finding the mark confusingly similar to the registered mark TAKE 10! for "printed manuals, posters, stickers, activity cards and educational worksheets dealing with physical activity and physical fitness." In re St. Helena Hospital, Appeal No. 14-1009 (Fed. Cir. December 16, 2013) [precedential].

The Board had found the involved marks to be similar in appearance, sound, meaning and commercial impression. Applicant argued that in its mark TAKETEN refers, as shown in its specimen of use, to ten days, whereas in the cited mark TAKE 10! refers to ten minutes. The CAFC observed, however, that neither mark suggests any specific meaning of "TEN" or "10." The registrability of a mark must be determined "based on the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods," and so the court agreed with the Board’s finding that the marks engender similar connotations. See Octocom Sys., Inc. v. Houston Computer Servs., Inc., 918 F.2d 937, 942 (Fed. Cir. 1990). The court also agreed with the Board that registrant's addition of an exclamation point to "take ten" did not distinguish the marks in overall commercial impression.

At bottom, substantial evidence supports the Board’s conclusion that the first DuPont factor points towards a likelihood of confusion. However, “we note that similarity is not a binary factor but is a matter of degree." In re Coors Brewing Co., 343 F.3d 1340, 1344 (Fed. Cir. 2003). Here, there are some, albeit modest, differences between the two marks.

With regard to the issue of the relatedness of the goods and services, the CAFC concluded that substantial evidence did not support the Board's finding. The evidence relied upon by the examining attorney showed that printed materials are used in connection with various health services programs. However, the fact that goods are and services are "used together" does not show relatedness. When the types of goods and services at issue are "well-known or otherwise generally recognized as having a common source of origin, the PTO’s burden to establish relatedness will be easier to satisfy." However, when the relatedness of the goods and services is "obscure or less evident," the PTO must show "something more" than the mere fact that the goods and services are "used together."

While we have applied the “something more” standard in the past in the context of restaurant services, the rule is not so limited and has application whenever the relatedness of the goods and services is not evident, well-known or generally recognized.

Here, the USPTO did not show that applicant's services and the printed materials of the cited registration are generally recognized as being related, nor did it show the "something more" needed to prove relatedness in this case. The CAFC therefore concluded that the Board’s finding of relatedness between the involved services and goods was not supported by substantial evidence.

As to channels of trade, the evidence on both sides was lacking. The court agreed with the TTAB that registrant's goods were not limited to use by educators, but the court disagreed with the Board that the channels of trade overlap because both applicant and registrant advertise on the Internet.

Advertising on the Internet is ubiquitous and “proves little, if anything, about the likelihood that consumers will confuse similar marks used on such goods or services.” Kinbook, LLC v. Microsoft Corp., 866 F. Supp. 2d 453, 470–71 n.14 (E.D. Pa. 2012) (quoting J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 24:53.50 (4th ed. Supp. 2011)).

The Board had conceded that consumers of applicant's services would exercise a high degree of care, but it had found no evidence that consumers would exercise that same care when analyzing printed materials received while participating in the services. The court ruled that the Board's conclusion was in error because the record contained "no evidence to support a conclusion that the level of care exercised by consumers before entering a health-care program is any different from the level of care exercised once in the program." Consequently, the Board's determination that this factor was neutral lacked substantial supporting evidence.

The CAFC concluded that the refusal to register was not supported by substantial evidence in light of the dissimilarities between the involved services and goods and the high degree of consumer care. The court therefore reversed the Board’s decision and remanded the case for further proceedings.

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TTABlog note: What further proceedings might there be?

Text Copyright John L. Welch 2014.

Tuesday, December 16, 2014

Test Your TTAB Judge-Ability on these Four Section 2(d) Appeals

I once heard a TTAB judge say that the outcome of most Section 2(d) likelihood of confusion cases can be predicted just by looking at the marks and the identified goods and/or services, without more. Well, try your skills on these four appeals, keeping in mind that, by my estimate, about 85% of Section 2(d) refusals are affirmed by the Board. [Answers in first comment].

In re Petroleum Service Company, Serial No. 85904470 (December 12, 2014) [not precedential]. [Refusal to register BLUESKY LUBRICANTS for oils and lubricants, including lubricants for industrial machinery [LUBRICANTS disclaimed], in view of the registered mark BLUE SKY for "chemical additives for the after-treatment of exhaust gas, in particular chemical additives for reducing nitrogen oxides in exhaust gas from diesel engines; chemicals used in industry, in particular oil binders, anti-freezing agent, road salt"].

In re Kenneth T. Riddleberger, Serial Nos. 85632364 and 85637348 (December 12, 2014) [not precedential]. [Refusals to register 8UP and 8UPSPORTS for various clothing items, including t-shirts and sweatshirts, in view of the registered marks shown below, for various clothing items, including t-shirts and sweatshirts [APPAREL and CLOTHING disclaimed].

In re Thomas Barton, Serial No. 85826787 (December 11, 2014) [not precedential].[Refusal to register BARTON FAMILY for "wine; wines" in view of the registered mark THOMAS BARTON for "alcoholic beverages, namely, wines"]. [Note: see the case TTABlogged here].

In re Moll Anderson Productions, LLC, Serial No. 85777948 (December 10, 2014) [not precedential]. [Refusal to register ANDERSON WORLD MEDIA for music sound recordings and television and movie production [WORLD MEDIA disclaimed], in view of the registered mark MIKE ANDERSON MEDIA for audio and video recording services and film production [MEDIA disclaimed].

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TTABlog Big Hint: Any predictions? See any WYHA's here?

Text Copyright John L. Welch 2014.

Monday, December 15, 2014

TTAB Reverses 2(d) Refusal of SOUTH BEACH SWIMWEAR for Swimwear

Finding that the term SOUTH BEACH is not necessarily the dominant portion of the cited mark, the Board reversed a Section 2(d) refusal to register SOUTH BEACH SWIMWEAR, in the design form shown below, for "Swimsuits; Swimwear excluding T-shirts, polo shirts, tank tops, hats, visors, aprons" [SWIMWEAR disclaimed], finding the mark not likely to cause confusion with the registered mark SOUTH BEACH WINE & FOOD FESTIVAL for "T-shirts, polo shirts, tank tops, hats, visors, aprons." Applicant overcame a Section 2(e)(2) geographical descriptiveness refusal by claiming acquired distinctiveness under Section 2(f); the cited mark was registered under Section 2(f). In re Michael D. Mathes, Serial No. 85892299 (December 12, 2014) [not precedential].

Although applicant had apparently carved out of its application the goods covered by the cited registration, the Board still found the involved goods to be related for Section 2(d) purposes. Swimwear and t-shirts are commonplace, casual items that might be warn together. Internet evidence showed that these goods have been offered by a single company under the same trademark: e.g., NIKE, UNDER ARMOUR, ADIDAS, GAP, HOLLISTER, and OAKLEY. There was no need to consider the other goods in the registration, because if a likelihood of confusion is found between any item in a given class in an application, with an item in a cited registration, that suffices to support a Section 2(d) refusal of the entire class of goods.

The examining attorney argued that the Board must presume that the goods travel through the same trade channels, but the Board questioned whether the goods were close enough to justify application of that presumption. In any case, the evidence established that the goods travel through at least one trade channel in common: on-line retail stores featuring apparel or sporting goods (e.g., GAP, Kohl’s, Target, JCPenney and Macy’s).

Applicant contended that the goods in fact are sold in different channels, since applicant's goods are not found at registrant's website or festival. That, of course, was irrelevant, since the Board must consider the goods as identified in the application and cited registration, where there appeared no limitations on channels of trade. In other words:

The relevant question is not whether the specific goods of Applicant and Registrant are actually marketed in the same trade channels. It is whether goods of the types identified in the application and the registration are typically marketed in the same or related channels.

Applicant further contended that its customers are sophisticated, "detail oriented consumers looking for swimsuits; as opposed to Registrant’s consumers who are interested in t-shirts, aprons and the like in connection with a festival that happens once a year." There was, however, no evidence to support that assertion. The Board must presume that registrant’s goods would be sold under normal retail conditions found in the types of stores that sell such goods.

Turning to the marks, the examining attorney maintained that the phrase SOUTH BEACH is the dominant portion of both marks, since it appears first in the marks and since SWIMWEAR has been disclaimed and WINE & FOOD FESTIVAL immediately conveys to consumers that registrant's goods are sold at such events.

The Board, however, observed that SOUTH BEACH "is inherently a weak source indicator because it is geographically descriptive." identifying a well-known neighborhood of Miami Beach. "Customers would therefore readily entertain the possibility that the term SOUTH BEACH might be adopted by any merchant located in the South Beach neighborhood." The Board agreed that SOUTH BEACH is dominant in applicant's mark, since SWIMWEAR is generic for the goods. However, WINE & FOOD FESTIVAL is not the generic name for registrant's goods. To the extent that it is descriptive, it conveys information about the association of the goods with an event, not about the nature of the goods themselves.

WINE & FOOD FESTIVAL plays a more important function in identifying the source of Registrant’s goods than does the word SWIMWEAR in Applicant’s mark. We find that SOUTH BEACH and WINE & FOOD FESTIVAL, as applied to Registrant’s goods, are of roughly equal distinctiveness, such that SOUTH BEACH does not merit more weight in our consideration of the mark in its entirety.

The Board concluded that the goods convey "very different commercial impressions." It agreed with applicant that consumers would not expect to find swimwear in a food-related event. Moreover the words FOOD and WINE are arbitrary and incongruous in the context of swimwear. The Board found it highly unlikely that consumers would see a commercial relationship between these two brands.

And so it reversed the refusal to register.

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TTABlog note: Any quarrels with this one?

Text Copyright John L. Welch 2014.

Friday, December 12, 2014

Another TTAB Test: Is RADIANT POWER Merely Descriptive of Electricity Provider Services?

The USPTO refused registration of the marks RADIANT POWER for "retail electricity provider services that allow customers to purchase electricity" and RADIANT for the same services, as well as for "generation of electricity from solar energy." Applicant appealed, arguing that "radiant" is a double entendre, one of the meanings being suggested by the words of Charlotte the spider in Charlotte's Web, when she called Wilbur the pig "radiant." How do you think this came out? In re Distribusun LLC, Serial Nos. 85912404 and 8591242 (December 10, 2014) [not precedential].

Examining Attorney Michael A. Wiener relied on dictionary definitions of "radiant power" and of the constituent words, as well as on applicant's own promotional material that indicated that applicant's services involve the generation of electricity via solar power.Third-party websites and other publications describe solar energy as the "radiant power" produced by the sun.

Applicant maintained that, in view of the technical process of converting "radiant power" from the sun into electrical power, a consumer must exercise thought, imagination, or perception in order to arrive at the meaning of the mark espoused by the examining attorney. The Board was not persuaded that any such analysis of the mark would be required, since "radiant power" is a "defined and used term." The mark informs consumers that an aspect of applicant's services "is that the electricity it provides is derived from radiant power, that is, power from rays of light coming from the sun."

Applicant also argued that RADIANT POWER is a double entendre, one meaning of "radiant" being "showing an attractive quality of happiness, love, health, etc." In that connection, applicant provided a passage from the children's book Charlotte's Web, in which "the spider Charlotte used the word 'Radiant' in describing the positive aspects of her friend Wilbur the pig:"

"And when his audience grew bored, he would spring in the air and do a back flip with a half twist. At this the crowd would yell and cheer. 'How's that for a pig?' Mr. Zuckerman would ask, well pleased with himself. 'That pig is radiant.'"

Applicant asserted that, with regard to electrical power, it strives "for its services and products to be described as radiant." Solar energy evokes positive feelings in consumers and, applicant urged, the word "radiant" in its mark is a play on those feelings of happiness and well-being.

The Board found that argument "imaginative" but unpersuasive. There was no evidence that consumers recognize that second meaning, and applicant's argument was based only on conjecture.

The Board concluded that the mark RADIANT POWER immediately informs consumers that the electricity applicant provides is derived from radian power generated by the sun.

As to the mark RADIANT, the Board applied the same reasoning, concluding that the mark, as an adjective, describes the nature of the electricity that applicant provides.

And so the Board affirmed both refusals.

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TTABlog note: So, how did you do? Note applicant's name, DistribuSUN !

Text Copyright John L. Welch 2014.

Thursday, December 11, 2014

TTAB Test: Is "PhotoGro" Confusable With "PHOTO MAX" for Fertilizer?

The USPTO refused registration of the mark PhotoGro for "fertilizers for agricultural use," finding the mark likely to cause confusion with the registered mark PHOTO MAX for "fertilizers; plant nutrition preparations" [PHOTO disclaimed]. Applicant argued that "photo" is suggestive of plants, and therefore is the "much less dominant part of its mark." How do you think this came out? In re CP Bio, Inc., Serial No. 85692806 (December 9, 2014) [not precedential].

Since registrant's fertilizers encompass applicant's "fertilizers for agricultural use," the Board found the goods to be legally identical. The Board therefore presumed that the involved goods travel through the same channels of trade to the same classes of consumers. Moreover, when the goods are legally identical, a lesser degree of similarity between the marks is needed to support a likelihood of confusion.

Applicant and Examining Attorney Brian P. Callaghan argued at length over which portions of the marks should be considered dominant. The Examining Attorney submitted various third-party registrations for marks for fertilizer, with the word GROW disclaimed. Applicant pointed to its disclaimer of the word PHOTO in arguing that GRO is the dominant part of its mark, but the Board observed that the voluntary disclaimer of PHOTO does not mean that PHOTO cannot be dominant, since consumers are unaware of any disclaimer that might have been entered in the USPTO record.

Applicant also asked the Board to consider the dictionary definition of the word "photosynthesis," arguing that PHOTO is suggestive of a product for plants. It pointed to its ownership of several registration for other marks containing the word GRO, while registrant owns three other registration for marks containing the term MAX, showing that applicant emphasizes the GRO part of its mark, while registrant emphasizes MAX.

The Board saw no reason to give substantially more weight to any component of either mark, concluding that PHOTO, GRO, and MAX are of "relatively equal distinctiveness." The other third-party marks owned by applicant and registration were of little relevance. But the Board did acknowledge that PHOTO, as the first term in each of the involved marks, may have slightly more prominence than the remainder of the marks.

The Board found that the marks "resemble each" other visually and phonetically, and also in meaning, to the extent that both begin with the word PHOTO. They are also "structurally similar." Considering the overall commercial impressions of the two marks, the Board concluded that consumers would likely perceive the marks as "related to each other."

Applicant claimed that it  used its mark first, but that is, of course, irrelevant in an ex parte proceeding. Section 2(d) requires refusal based on a mark's resemblance to a mark "registered" in the USPTO, regardless of the alleged priority of the applicant.

Finally, applicant contended (but without  proof) that is mark has co-existed with the registered mark for at least 15 years. Of course, such uncorroborated statements are of little evidentiary value [I would have said no evidentiary value - ed.], particularly in an ex parte context where the registrant has no opportunity to be heard on the issue.

And so the Board affirmed the refusal.

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TTABlog note: Looking at the packaging/labels of the two products, do you think a court would find infringement?

Text Copyright John L. Welch 2014.

Wednesday, December 10, 2014

TTAB Finds SNUG BUGS for Plastic Toys Confusable with SNUGGLE BUGZZZ for Plush Toys

Amidst a dearth of interesting decisions from the TTAB comes this one, in which the Board affirmed a Section 2(d) refusal to register the mark SNUG BUGS for "Hard plastic and mechanically connectible toy animals for toddlers and infants" [BUGS disclaimed], in view of the registered mark SNUGGLE BUGZZZ, in standard character and design form, for "plush toys, soft sculpture toys, stuffed and plush toys." Applicant trotted out several of the Top Ten Losing TTAB Arguments, and the Board squashed them like a bug. In re Battat Incorporated, Serial No. 85856116 (December 8, 2014) [not precedential].

Although applicant limited its goods to those for infants and toddlers, the goods of the registration are not so limited, and could include “plush toys, soft sculpture toys, stuffed and plush toys” for toddlers and infants. Applicant argued that these goods are “distinct” and “distinguishable,” but the Board pointed out that goods need not be identical or even competitive in order to support a finding of likely confusion. It is sufficient that they are related in some manner such that a consumer might mistakenly believe that they emanate from the same source.

Examining Attorney Kelly F. Bolton submitted ten third-party registrations, each covering both types of goods, as well as Internet web pages suggesting that the involved goods are offered by third-parties under a single mark. The Board concluded that applicant's hard plastic toys and registrant's stuffed toys are closely related.

The Internet evidence established the the involved goods travel through the same trade channels: namely, on-line websites and toy stores.

As to the marks, the Board found them similar in pronunciation and appearance. Moreover, they are identical in connotation and create the same commercial impression, as the Board explained:

“Snug” and “snuggle” are variations of the same word. In fact, the dictionary entry for “snuggle” states that it is a “[f]requentative of SNUG.” Further, the phonetically equivalent suffixes “BUGS” and “BUGZZZ” are identical in meaning. To the extent that SNUGGLE BUGZZZ is suggestive of “bedtime, sleeping, and cuddling, as a child may do with a ‘stuffed and plush toy’”, “SNUG BUGS” is equally suggestive. Similarly, to the extent “SNUG BUGS” connotes “multiple bugs that are held tightly together to one another.” “SNUGGLE BUGZZZ” has the same connotation with respect to the various toys identified in the application and registration.

In a final gambit, applicant contended that four third-party registrations for stuffed toys - AS SUNG AS A BOOK IN A BUG, SNUGGLEBUDDY, SNUGGLEBUMS, and SNUGGANIMALS - show the "dilute nature" of the term SNUG. The Board pointed out, however, that third-party registrations "are generally entitled to little weight in determining the strength of a mark because they are not evidence that the mark is in actual use in the marketplace or that consumers have been exposed to the mark." Moreover, only one of the third-party registrations contained both the words "snug" and "bug," and thus the combination is clearly not diluted.

And so the Board affirmed the refusal to register.

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TTABlog note: Is this a WYHA?

Text Copyright John L. Welch 2014.

CAFC Affirms TTAB Dismissal of DOMAINE PINNACLE Section 2(d) Opposition

The CAFC affirmed the Board's dismissal [TTABlogged here] of an opposition to registration of the mark DOMAINE PINNACLE & Design (shown below) for "apple juices and apple-based non-alcoholic beverages" [DOMAINE disclaimed]. Opposer Franciscan Vineyards claimed likelihood of confusion with its registered marks PINNACLES and PINNACLE RANCHES for wine [RANCHES disclaimed]. However, the lack of evidence regarding the relatedness of the goods proved fatal at the Board, and the CAFC found no error in the TTAB's ruling. In re Franciscan Vineyards, Inc., Appeal No. 2014-1269 (Fed. Cir. December 9, 2014) [not precedential].

The CAFC concluded that substantial evidence supported the Board's factual findings underlying the relevant du Pont factors, and that the Board did not err in determining, based on the record evidence, that there was no likelihood of confusion.

Franciscan presented testimony to the Board that the parties were competitors in Canada and that Franciscan’s parent company owned three Canadian companies that sold wines and ciders. The Board correctly noted, however, that this evidence pertains to Canadian entities and is insufficient “to show that [Domaines Pinnacle’s] and [Franciscan’s] identified goods are related in some manner ....

Franciscan also argued that the Board "failed to follow In re Jakob Demmer KG, 219 U.S.P.Q. 1199 (T.T.A.B. 1983) to generally deem wines and non-alcoholic beverages related goods." The CAFC pointed out, however, that Jacob Demmer was an ex parte appeal wherein, as the Board correctly noted, the Board generally adopts a "more permissive stance with respect to the admissibility and probative value of evidence" than it does in an inter partes proceeding, in which the burden is on the opposer to introduce evidence that the goods are related.

And so the CAFC affirmed the dismissal of the opposition.

Read comments and post your comment here.

TTABlog note: The CAFC captioned its decision as if it were an ex parte appeal, although in fact it was an inter partes proceeding.

Text Copyright John L. Welch 2013.

Tuesday, December 09, 2014

KORD for Audio Equipment Confusable with KORDZ for Connectors, Says TTAB

The Board affirmed a Section 2(d) refusal to register the mark KORD for audio equipment, including speakers, finding the mark likely to cause confusion with the mark KORDZ, registered on the Supplemental Register, for "Cable connectors; Home theater products, namely, LCD; Electronic interconnectors [sic] for audio and video signals." Third-party registrations for marks containing the word "kord" or "cord" demonstrated that the term, by itself, has a descriptive significance vis-a-vis electrical cables and connectors, but they did not establish that the cited mark is so weak that confusion with applicant's mark would be avoided. In re MS Electronics LLC, Serial No. 85755706 (December 5, 2014) [not precedential].

The Board, not surprisingly, found the marks to be "extremely similar" in appearance and pronunciation, and identical in meaning and overall commercial impression.

Applicant pointed to third-party registrations of AUTAC RE-TRAK-TUL KORDS, KORD KING, KOIL KORD, and KOILED KORDS for electric cords in an attempt to show that the cited mark is so weak that even the slight difference between KORD and KORDZ distinguished the marks. The Board pointed out, however, that third-party registrations have little probative value on the issue of likelihood of confusion absent evidence that the marks are in use on a commercial scale and the public is familiar with them.

Although Registrant’s mark has been registered on the Supplemental Register for goods that maybe informally referred to as 'cords,' and would thus be considered highly suggestive in connection with the goods involved, the third-party registrations do not establish that the cited mark is so weak that the public would not be confused upon encountering Applicant’s mark used on related goods.

Moreover, the Board observed once again, even weak marks are entitled to protection, including marks registered on the Supplemental Register.

Turning to the goods, applicant's audio equipment includes some goods that are typically connected by cables. In short the involved goods are complementary and are likely to be purchased together and used together. See, e.g., In re Sela Prods., LLC, 107 USPQ2d 1580 (TTAB 2013) (purchasers of surge protectors for home theater systems would encounter wall mounts and brackets used in connection with such systems).

Applicant argued that registrants sells only HDMI-related products that are unrelated to its audio equipment. The Board, however, pointed out that an applicant may not restrict the scope of goods covered by a cited registration by introducing intrinsic evidence. The registration is broadly worded and encompasses all types of connectors, including those used with applicant's equipment.

Finally, applicant argued that the purchasers of the goods are knowledgeable about the differences in high-end cables. The Board noted, however, that there are no limitations in the application or the cited registration regarding classes of consumers or channels of trade. And in any case, even careful purchasers may be confused by highly similar marks used on related and/or complementary goods.

And so the Board found confusion likely, and it affirmed the refusal.

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TTABlog note: Do you think there is any chance that the registrant could convince a court to stop applicant from using the mark KORD? I highly doubt it.

Text Copyright John L. Welch 2014.

Monday, December 08, 2014

TTAB Finds "STEAM CAR WASH" Generic for ... Guess What?

I suspect you didn't guess this one. The Board affirmed a refusal to register STEAM CAR WASH for "online retail store services featuring car cleaning and vacuuming equipment," on the ground of genericness. The Board pooh-poohed applicant's argument that the applied-for mark "creatively suggests that Applicant’s website at is an imaginary online car wash."  In re Daniel Cohen, Serial No. 85813275 (December 4, 2014) [not precedential].

Examining Attorney Ellen Awrich relied upon dictionary definitions of "steam" and "car wash," on Internet evidence regarding steam car washing machines, on industry articles, and on third-party websites advertising directed to auto detailers (promoting the "green" or ecological benefits of this equipment).

The Board found the genus or category of the services to be aptly described by applicant's recitation of services. The examining attorney pointed out that STEAM CAR WASH identifies a key aspect of applicant's services. Under Board precedent, a term that names the focus of the services is generic for the services. [E.g., TIRES TIRES TIRES for retail stores that sell tires; LENS for retail contact lens services.]

The "relevant public" for applicant's services consists of auto detailers and others in the car washing business. The evidence confirmed that others in the same business as applicant advertise cleaning equipment online using the term "steam car wash."

In short, the examining attorney provided the required clear evidence that "steam car wash" names the "central focus" or "key aspect" of applicant's services, and therefore is a generic term for those services.

Applicant maintained that the third-party websites use the phrase "steam car wash" with another word, like "machine" or "system," and that "steam car wash" by itself does not connote a type of machine. The Board was not moved. Applicant's mark is a generic adjective, like ATTIC for sprinklers, found to be generic in In re Cent. Sprinkler Co., 49 USPQ2d 1194, 1199 (TTAB 1998). The fact that other terms (like "steam pressure washers") may be available for use was irrelevant, since the USPTO need not establish that the term in question is the only, or even the most frequently used, term for the goods that are the focus of applicant's services.

Finally, applicant urged that the applied-for mark "creatively suggests that Applicant's website ... is an imaginary online car wash" that uses steam or is named "Steam." [Not if they visit the website - ed.]. The Board had not doubt, however, that the relevant consumers will understand STEAM CAR WASH in the context of applicant's services, as referring to a category of online retail store services.

And so the Board affirmed the refusal.

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TTABlog comment: I'm not convinced that STEAM CAR WASH should be deemed generic for the identified services. Highly descriptive, yes. Requiring a significant mound of Section 2(f) evidence for registration purposes, yes. But generic?

Text Copyright John L. Welch 2014.

Friday, December 05, 2014

Test Your TTAB Judge-Ability on these Four Section 2(d) Appeals

I once heard a TTAB judge say that the outcomes of most Section 2(d) likelihood of confusion cases can be predicted just by looking at the marks and the identified goods/services, without more. Try your adjudicatory skills on these four recently decided appeals, keeping in mind that, by my estimate, about 85% of Section 2(d) refusals are affirmed by the Board. [Answer in first comment].

In re Perry, Serial No. 85561003 (December 3, 2014) [not precedential]. [Refusal to register the mark THE BONEYARD and design (shown below), for "clothing, namely, t-shirts, shirts, dresses, jackets, skirts, pants, shorts, sweaters, sweatshirts, one piece garments for infants and toddlers, sweatpants, robes, undergarments, scarves, gloves, socks, hats, caps, visors, sleepwear; footwear, swimwear." in view of the registered mark BONEYARDS for "belts, footwear, headwear, pants, shirts, shorts, t-shirts"].

In re Seacret Spa International LTD, Serial No. 78811559 (December 3, 2014) [not precedential]. [Refusal to register SEACRET (in stylized form) for "products containing ingredients from the Dead Sea, namely, non-medicated skin care preparations, namely, moisturizers, facial cleansers, facial peels, masks, lotions, creams , scrubs, soaps, nail care preparations, hand creams, cuticle oils; after shave," in view of the registered mark SECRET for body spray and deodorant].

In re John Paul Merkel, Serial No. 85618114 (November 13, 2014) [not precedential]. [Refusal to register the mark shown below, for "Clothing, namely, shirts, t-shirts, sweat shirts, jackets, shorts, pants, caps, and hats; Footwear, namely, boxing, wrestling, and mixed martial arts shoes" in view of the registered mark dtf, in standard character form, for "“clothing, namely, shirts, t shirts, caps, visors, jackets"].

In re Duro-Last, Inc., Serial No. 85746099 (December 3, 2014) [not precedential]. [Refusal to register DURO-LIGHT for metal and non-metal skylights, in light of the registered mark DURULITE for "non-metal doors"].

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TTABlog query:  How did you do? Any WYHAs here?

Text Copyright John L. Welch 2014.