Recent TTAB decisions and activity of note (3/19 – 3/25/2012)

Still catching up on decisions from last month – thanks for your patience!

During the week of March 19 – March 25, 2012, the TTAB issued five precedential decisions including one on the ex parte appeal for an application (OLD HAVANA) that was filed more than 15 years ago! It also issued many other decisions and rulings which cover important substantive and procedural issues..

Several important and interesting decisions or interesting procedural and discovery issues are highlighted in bold. Two interesting opinions relate to concurrent use agreements – one was accepted and one was rejected – and together they provide a good road map for how to draft an acceptable agreement. The SOFTSPIKES opinion provides an excellent road map for the type and amount of evidence that can establish acquired distinctiveness under Section 2(f).

Here is a rundown of the activity of note from the TTAB in the week [visit http://ttabvue.USPTO.gov to view any of the proceeding and documents]:

Proceeding No.

Date

TTAB Action

Precedent?

Notes

94002460

03/22/2012 BD`S DECISION: FAVORABLE TO APPLICANT

N

Board accpepted terms of concurrent use agreement.

75010230

03/20/2012 BOARD`S DECISION: AFFIRMED

Y

OLD HAVANA for rum refused under Section 2(e)(3) as primarily geogrphically deceptively misdescriptive, and alternatively as not having acquired distinctiveness under 2(f). Application pending since 1995 and has a long history. Evidence attached with the briefs not considered. Board affirmed the 2(e)(3) refusing finding: a good/place association, geographic origin to be a material factor for the purchase of the goods, and “OLD” not diminishing the signficance of HAVANA. As to 2(f), “Acquired distinctiveness may not be asserted to contravene a refusal under Section 2(e)(3) unless the mark became distinctive of an applicant’s goods in commerce before December 8, 1993, the date of enactment of the NAFTA Implementation Act.” Since mark was first used in 1991, Board affirmed 2(f) refusal.

77136242

03/21/2012 BOARD`S DECISION: AFFIRMED

Y

CEI for ‘technical consultation in the field of hydrocarbon and chemical processing, pipeline, and power industries’ refused on grounds that specimens failed to show use in connection with the services identified (Section 1 and 45 of Trademark Act). Applicant’s evidence of website addresses does not make the site content evidence of record, and the references (nor printouts attached to reply brief) were not considered. Board affirmed the refusal, finding Applicant’s mark “is identified as a metric, an index, an equivalency factor, a standard, a performance measure, but never as a technical consulting service.  There is no direct association between applicant’s offer of the applied-for services and the term CEI.”

77629648

03/23/2012 BOARD`S DECISION: AFFIRMED

N

FOREVER NUTRI-LEAN refused under 2(d) with NUTRILEAN+. Both are for use with supplement products. Applicant argued that FOREVER is its house mark. Board found registered mark rather strong and affirmed the refusal.

77717219

03/22/2012 BOARD`S DECISION: AFFIRMED

N

2(d) refusal of applicant’s mark COUNTRY FRESH OVENS for “for “biscuits; breakfast burritos; brownies; cakes; cookies; Danish pastries; donuts; English muffins; hamburger sandwiches; hot dog sandwiches; muffins; sandwiches; sandwiches, namely, breakfast sandwiches and wraps, and cheeseburgers.” Cited mark: COUNTRY OVEN for “cakes, cake rolls, donuts, bread buns, rolls, fingers and party squares.” Evidence attached to applicant’s appeal brief not considered where Ex. Atty properly objected. Goods are identical in part; presence of FRESH in applicant’s mark not sufficient to avoid likelihood of confusion. Decision affirmed.“We also point out the often-cited principle that “a new entrant presenting a new mark for registration has an obligation to avoid confusion with established marks in the same market.”  Bridgestone Americas Tire Operations, LLC v. Federal Corporation, __F.3d__, slip. op. No. 2010-1376, p. 5 (Fed. Cir. March 16, 2012)”

77892528

03/21/2012 BOARD`S DECISION: AFFIRMED

N

FOCUS for ‘for “medical devices, namely, retractors for use in spinal surgery” refused under 2(d) for conflict with MRFOCUS for a long list of ““surgical and microsurgical instruments.”As to the goods,  “registrant’s and applicant’s surgical retractors are technically identical goods and may be used in the same types of surgical procedures regardless of the interpretation of registrant’s identification of goods.” In prosecutiong of Registrant’s application it had argued against a 2(d) refusal with a different FOCUS mark. But found its arguments during prosecution illuminative, but not admissions. Board also found FOCUS the dominant part of the registered mark and found the marks extremely similar. Applicant’s list of applications and registrations containing FOCUS given little if any weight – it did not identify good/service or deomonstrate actual use. Overall, Board affirmed: “we find the marks too similar and the goods potentially identical such that, even allowing for a sophisticated purchaser, there remains a likelihood of confusion in the purchasing decision.”

 77967215

03/23/2012 BOARD`S DECISION: AFFIRMED

N

Applicant for BFFL! BEST FRIENDS FOR LIFE & Design for “footwear, shirts, pants, jackets, and headwear” refused under 2(d) for conflict with BFFLZ “footwear.” “[T]he examining attorney has submitted several entries into the record, showing that consumers perceive the term “BFFLZ” to mean “Best Friends for Life.” Thus, the Board affirmed refusal, concluding “that with legally identical goods travelling in the same channels of trade, and similar marks with similar connotations, there is a likelihood of confusion.”

79075796

03/20/2012 BOARD`S DECISION: AFFIRMED

N

OMICRON and OMICRON & Design for “designing electronic measurement, testing and analysis equipment used for testing, analyzing, monitoring, developing and implementing electronic devices of electric power supply systems; designing measurement, testing and analysis software for testing, analyzing, monitoring, developing and implementing electronic devices of electric power supply systems”refused under 2(d) for conflict with OMICRON for ‘computer consulting services in the fields of computers, software, information technology, e-business and networking,” Given similarity of marks and services, Board affirmed: “because the software identified in applicant’s applications and the cited registration can encompass the same type of software, and because the third-party registrations and third-party use demonstrate that computer consulting in the field of software and software design services can emanate from a single source, we find that the services, as identified in applicant’s applications and the cited registration, are related.”

85192286

03/23/2012 BOARD`S DECISION: AFFIRMED

N

MAP YOUR FUTURE for ‘financial administration of retirement plans’ refused under Section 2(d) for likelihood of confusion with MAPPING YOUR FUTURE for “providing information about money management via a global computer network”. “[I]n view of the near identity of the marks and the related and complementary nature of the services, we find that confusion is likely between applicant’s mark for its identified services and the mark in the cited registration”

76692673

03/19/2012 BOARD`S DECISION: REVERSED

Y

TTAB reverses 2(d) refusal on Ex Parte appeal: GRAND HOTELS NYC (for ‘hotel services’ with “HOTELS NYC” disclaimed) not confusingly similar to GRAND HOTEL (for ‘hotel and restaurant services’ with “HOTEL” disclaimed). Applicant submitted multiple 3rd party registrations containing GRAND HOTEL for hotel services; the declaration of a private investigator that confirmed use of the phrase by several others; and website advertisements of 10 hotels. “Because of the highly suggestive nature of the mark “Grand Hotel,” the proliferation of registered “Grand Hotel” marks and the unregistered uses of “Grand Hotel” marks, the mark “Grand Hotel,” itself, is entitled to only a very narrow scope of protection or exclusivity of use.  Further, because of the highly suggestive nature of GRAND HOTEL and the number of third-party GRAND HOTEL marks, we conclude that consumers are able to distinguish between different GRAND HOTEL marks based on small differences in the marks, including the addition of a geographic term.  Accordingly, we find that applicant’s mark GRAND HOTELS NYC for hotel services is not likely to cause confusion with Registration No. 1250067 for GRAND HOTEL for hotel services.”

77902555

03/23/2012 BOARD`S DECISION: REVERSED

N

Refusal of CHINA FREE & Design for ‘vitamin and mineral supplements’ (with “CHINA FREE” disclaimed) on grounds under Sect. 2(a) that the mark consists of or comprises matter which may disparage or bring into contempt or disrepute persons, institutions, beliefs or national symbols. Applicant’s untimely evidence submitted during appeal not considered. Issue on appeal – whether mark disparages the People’s Republic of China. Refusal reversed: Board “cannot find clear evidence on this record that applicant’s motivation is to disparage China.”

77955361

03/19/2012 BOARD`S DECISION: REVERSED

N

Standard character and logo applications for “440” for “metal fences and gates and structural component parts thereof for ranching use” were refused under Section 2(d) with registered mark 440-XH for “steel in the form of metal powder and compacted metal powder and wrought products, namely wire, rod, bar, strip, billet, and other shapes.” Board found goods different – registrant’s mark did not contain “finished products” – and channels of trade different. Applicant also demonstrated that the overlapping portion was weak in registrant’s industry. Registrant’s goods purchased by sophisticated consumers. Result: refusal reversed.

75574825

03/19/2012 BOARD`S DEC: AFFD IN PART/RVRSD IN PART

N

Applition for SOFTSPIKES for ‘cleats for footwear in sports’ refused as generic and alternatively as insufficient 2(f) evidence. Mark found not generic: “in the face of applicant’s substantial showing that SOFTSPIKES is recognized as an indicator of source, that SOFTSPIKES would be perceived by the relevant public primarily as a generic term for applicant’s plastic golf cleats.”  Mark found to have acquired distinctivness. Excellent roadmap of the type and amount of evidence necessary to show 2(f).

77836610

03/20/2012 BOARD`S DEC: AFFD IN PART/RVRSD IN PART

Y

TENNIS INDUSTRY ASSOCIATION genericness refusal reversed, but 2(f) found evidence insufficient (“the greater the degree of descriptiveness, the greater the evidentiary  burden on the user to establish acquired distinctiveness”).

77660948

03/19/2012 APPEAL TO CAFC

City of Houston commenced appeal to CAFC

92052337

03/19/2012 SUSPENDED PENDING DISP OF CIVIL ACTION

N

Petitioner commenced civil action after commencement of trial period and 2+ yrs after commencement of the proceeding. Despite frustration of Defendant and Board; proceeding suspended pending disposition of civil action.

92053674

03/24/2012 RESPONSE DUE 30 DAYS (DUE DATE)

N

Petition to cancel consisted of ESSTA cover sheet and  letter. Defendant filed a 12(b)(6) motion to discmiss for failure to state claim. Petition found to lack any claim of damage or harm, and thus lacks standing. Petition also fails to adequetly set forth grounds for cancellation. Motion to dismiss granted; Petitioner allowed 30 days to amend pleading.

92054545

03/22/2012 TRIAL DATES RESET

N

Defendant moved to dismiss the petition for cancellation for failure to state a claim upon which relief can be granted, and for failure to plead fraud with particularity; Petitioner moved to amend pleadings. Amended pleaded allowed and found to survive 12(b)(6), so defendant’s motions to dismiss denied.

91202392

03/20/2012 TRIAL DATES RESET

N

Opposer moved to strike applicant’s affirmative defenses of laches, waiver, estoppel, and acquiescence. Defenses of laches and acquiescence stricken b/c they run from time the application is published. Regarding defenses of estoppel and waiver, they are stricken as merely “conclusory statements that fail to put opposer on notice as to the specific theory or defense that applicant is asserting.”

91176027

03/19/2012 BOARD`S DECISION: SUSTAINED

N

Apple opposed VIDEO POD for “video projectors” (“VIDEO” disclaimed) on 2(d) and 2(e)(1) grounds. Evidence: Board accorded no weigth to anonymous blogger statements; other documents produced by Applicant for first time during testimony excluded. Descriptiveness: Board finds “that the evidence supports the conclusion that the term “Video Pod” is merely descriptive of a pod-shaped video player.” Likelihood of confusion: Board found Opposer’s IPOD mark famous and “a conceptually strong mark” and sustained the Opposition under 2(d).

91184456

03/20/2012 BOARD`S DECISION: SUSTAINED

Y

Opposition to L’OREAL PARIS (for ‘aloe vera drinks’) sustained based likelihood of confusion with Opposer’s L’OREAL and L’OREAL PARIS marks for cosmetics. Board found Opposer’s marks famous. Applicant found to have history of filing intent-to-use marks correlating to well known brands, indicating bad faith. Applicant also found to be lacking bonafide intent to use the mark in commerce.

92054000

03/23/2012 BOARD`S DECISION: GRANTED IN PART Petition to cancel granted as to two reistrations surrendered by Defendant; petittion to cancel dismissed as moot as to third registration that was not renewed

91198657

03/20/2012 EXTENSION OF TIME; GRANTED; SUSPENDED Opposer’s motion to extend discovery granted; “Board finds that there is no evidence of negligence or bad faith on the part of opposer and opposer has not abused the privilege of extensions.”

91188800

03/22/2012 P`S MOTION TO AMEND PLEADINGS GRANTED; TRIAL DATES RESET

N

Opposer’s motion to amend pleadings granted. Board sua sponte reviewed all pleaded claims and found dilution and false suggestion of a connection claims deficient.

94002502

03/22/2012 RESPONSE DUE IN (60) DAYS

N

Concurrent use conset agreement denied by Board with suggestions on how to correct it.

92054925

03/22/2012 RESPONSE DUE TWENTY DAYS

N

Finding defendant’s failure to timely file an answer inadvertent, Board set aside notice of default. Board sua sponte noted that the dilution claim (registration is incontestible) not possible and the abandonment claim not properly pleaded and thus found petition to cancel failed to state a claim. Petitioner given 20 days to amend petition.

92054462

03/22/2012 PROCEEDINGS RESUMED

N

Defendant moved for relief from final judgment, a default. Board granted the motion – “the Board finds that  respondent has a meritorious defense to the petition for  cancellation inasmuch as the answer presents a plausible  response to petitioner’s allegations and denies the pleaded  ground of abandonment”
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