A Critique of Cases from the Trademark Trial and Appeal Board, July 1998 – March 1999

RECENT TRADEMARK DEVELOPMENTS:

UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT,
TRADEMARK TRIAL AND APPEAL BOARD,
COMMISSIONER OF PATENTS
AND TRADEMARKS

Cases Reported in
The United States Patents Quarterly
Volumes 47, 48, and 49

July 1998 through March 1999

1. EX PARTE CASES
   1. Court of Appeals for the Federal Circuit
      No Case Reported
   2. Trademark Trial and Appeal Board
      1. Likelihood of Confusion
         1. Likelihood of Confusion Found
            In re Southern Belle Frozen Foods Inc
            48 USPQ2d 1849 (TTAB 1998)
            SEAFOOD ROYALE for frozen seafood likely to cause confusion with SHRIMP ROYALE for packaged cooked meal containing shrimp.
            In re L.C. Licensing Inc.
            49 USPQ2d 1379 (TTAB 1998)
            LIZSPORT for fragrances and toiletries likely to cause confusion with LIZ for fragrances, toiletries, and cosmetics.
      2. Mere Descriptiveness
         1. Descriptiveness Found
            In re Shiva Corp.
            48 USPQ2d 1957 (TTAB 1998)
            TARIFF CONTROL for computer programs and hardware and manuals to control wide area network usage merely descriptive.
            In re Patent and Trademark Services Inc.
            49 USPQ2d 1537 (TTAB 1998)
            PATENT & TRADEMARK SERVICES, INC. For legal representation in area of intellectual property merely descriptive.
            In re Dos Padres Inc.
            49 USPQ2d 1860 (TTAB 1998)
            QUESO QUESADILLA SUPREME for cheese merely descriptive.
      3. Laudatory Term
         1. Laudatory Term Descriptive
            In re Boston Beer Co. L.P.
            47 USPQ2d 1914 (TTAB 1998)
            THE BEST BEER IN AMERICA for beer was laudatory term and therefore merely descriptive.
      4. Generic Term
         1. Expression Generic
            In re Central Sprinkler Co.
            49 USPQ2d 1194 (TTAB 1998)
            ATTIC for automatic sprinklers was generic adjective.
            In re Web Communications
            49 USPQ2d 1478 (TTAB 1998)
            WEB COMMUNICATIONS for consulting services for establishing web sites was generic term.
      5. Geographical Descriptiveness
         1. Expression Geographically Descriptive
            In re Carolina Apparel
            48 USPQ2d 1542 (TTAB 1998)
            CAROLINA APPAREL for retail clothing store services was primarily geographically descriptive.
            In re U.S. Cargo, Inc.
            49 USPQ2d 1702 (TTAB 1998)
            U.S. CARGO for towable trailers for carrying cargo was primarily geographically descriptive.
      6. Geographical Deceptive Misdescriptiveness
         1. Expression Geographically Misdescriptive
            In re Barcardi & Co. Ltd.
            48 USPQ2d 1031 (TTAB 1997)
            Marks containing HAVANA or HABANA for rum, distilled spirits, and rum drinks were primarily geographically deceptively misdescriptive.
            In re Wada
            48 USPQ2d 1689 (TTAB 1998)
            NEW YORK WAYS GALLERY for backpacks, duffle bags, etc. not made in New York was primarily geographically deceptively misdescriptive.
      7. Trade Dress
         1. a. Trade Dress Not Distinctive
            In re Benetton Group S.p.A.
            48 USPQ2d 1214 (TTAB 1998)
            Green rectangle used as background for word mark for clothing and footwear not shown to be distinctive.
            In re File
            48 USPQ2d 1363 (TTAB 1998)
            Tubular lights running length of bowling alleys for entertainment services in nature of bowling alley not distinctive.
      8. Configuration of Goods
         1. Functional and Not Distinctive
            In re Edward Ski Products Inc.
            49 USPQ2d 2001 (TTAB 1998)
            Configuration of ski mask was de jure functional. Additionally, acquired distinctiveness not proven
      9. Failure to Function as Mark
         1. Expression Not a Mark
            In re Brass-Craft Manufacturing Co.
            49 USPQ2d 1849 (TTAB 1998)
            Directions for use of plumbing supplies did not function as trademark.
            In re Eilberg
            49 USPQ2d 1955 (TTAB 1998)
            Internet domain name on lawyer's letterhead did not function as service mark.
      10. Phantom Mark
          1. Phantom Mark Not Registrable
             Specimens Did Not Conform to Drawings
             In re International Flavors & Fragrances Inc.
             47 USPQ2d 1314 (TTAB 1998)
             Applications for Phantom marks, with X's showing where names of herbs, fruits, plants, or vegetables would be in complete designations, for essential oils and fragrances for use in manufacturing refused on ground specimens did not show exact marks of drawings.
      11. False Suggestion of Connection, Mere Descriptiveness, Lack of Trademark Significance
          1. No False Suggestion or Lack of Trademark Significance. Descriptive Goods for Some
             In re Wielinski
             49 USPQ2d 1754 (TTAB 1998)
             DIAMOND T & Design for trucks, parts, and accessories did not falsely suggest connection with defunct company. DIAMOND T for t-shirts did not falsely suggest connection and was a trademark. DIAMOND T for magazines whose subject matter was old DIAMOND T trucks of defunct company was descriptive.
      12. Dismissal of Appeal
          1. Failure to File Brief
             In re Live Earth Products Inc.
             49 USPQ2d 1063 (TTAB 1998)
             Failure to file an appeal brief resulted in dismissal of ex parte appeal. Brief due sixty (60) days from filing of notice of appeal.
2. INTER PARTES CASES
   1. Court of Appeals for the Federal Circuit
      1. Likelihood of Confusion
         1. Likelihood of Confusion Not Found
            Champagne Louis Roederer S.A. v. Delicato Vineyards
            47 USPQ2d 1459 (CAFC 1998)
            Applicant's CRYSTAL CREEK for wine not likely to cause confusion with Opposer's CRISTAL and CRISTAL CHAMPAGNE & Design for champagne.
      2. Failure to State Claim for Relief
         1. Claim Not Stated
            Young v. AGB Corp.
            47 USPQ2d 1752 (CAFC 1998)
            Opposition by manufacturer of statues of animals failed to state claim upon which relief could be granted in opposition against one of his statues as service mark for restaurant on ground registration would impede additional sales of statues.
   2. Trademark Trial and Appeal Board
      1. Likelihood of Confusion
         1. Likelihood of Confusion Found
            Life Corp. v. Carefree Trading Corp.
            47 USPQ2d 1151 (TTAB 1998) (Unpublished)
            Restaurant's LIFE for face masks for cardiac pulmonary resuscitation likely to cause confusion with cancellation petitioner's LIFE CORPORATION, LIFE CORPORATION OXYGEN PAC & Design, and LIFE-02 for emergency first aid resuscitators and inhalators.
            Uncle Ben's Inc. v. Stubenberg International Inc.
            47 USPQ2d 1310 (TTAB 1998)
            Applicant's BEN'S BREAD for bread mixes likely to cause confusion with opposer's UNCLE BEN'S for food products.
            Penguin Books Ltd. v. Eberhard
            48 USPQ2d 1280 (TTAB 1998)
            Applicant's Design of Penguin for computer programs and manuals for maintenance management likely to cause confusion with opposer's marks PENGUIN and Design of Penguin for books. Applicant's petition to cancel unpleaded registration of opposer for PENGUIN for books dismissed.
            Ultratan Suntanning Centers Inc. v. Ultra Tan International AB
            49 USPQ2d 1313 (TTAB 1998)
            Applicant's ULTRATAN for tanning-related products likely to cause confusion with opposer's ULTRATAN & Design for tanning salons.
            Miguel Torres S.A. v. Casa Vincola Gerardo Cesari S.r.L.
            49 USPQ2d 2018 (TTAB 1998)
            Applicant's DUE TORRI & Design of Towers and Banner with designation 2 TORRI for wines likely to cause confusion with opposer's TORRES & Design of Three Towers for brandy and wine and TRES TORRES for brandy. Opposition, on inter parties record, reached different conclusion from ex parte appeal.
      2. Likelihood of Confusion Found in Part
         1. Likelihood of Confusion for Goods in One Class
            Fossil Inc. v. Fossil Group
            49 USPQ2d 1451 (TTAB 1998)
            Applicant's FOSSILSCAPES THE FOSSIL GROUP STONESCAPES & Design for fossil-backed clocks likely to cause confusion with opposer's FOSSIL for watches. Applicant's mark for ornamental fossils and marble tabletops not likely to cause confusion with opposer's mark for different goods.
      3. Likelihood of Confusion Not Found
         1. No Likelihood of Confusion
            Brewski Beer Co. v. Brewski Brothers Inc.
            47 USPQ2d 1281 (TTAB 1998)
            Respondent's BREWSKI BROTHERS for clothing not likely to cause confusion with petitioner's BREWSKY'S service mark and trade name for bar services and respondent's mark not abandoned. Respondent's counterclaim for cancellation dismissed. Petitioner's mark not abandoned by invalid license.
            Hard Rock Cafe Licensing Corp. v. Elsea
            48 USPQ2d 1400 (TTAB 1998)
            Applicant's COUNTRY ROCK CAFE & Design for jewelry, beverage glassware, clothing, and restaurant and nightclub services not likely to cause confusion with opposer's HARD ROCK CAFE & Design for restaurant and prepared take-out food services.
      4. Likelihood of Confusion - Priority of Use -Summary Judgment
         1. Applicant's Use Prior - Summary Judgment
            Corporate Document Services Inc. v. I.C.E.D. Management Inc.
            48 USPQ2d 1477 (TTAB 1998)
            Applicant won summary judgment dismissing opposition on ground its use of COPY CLUB was earlier than opposer's use of THE COPY CLUB.
      5. Likelihood of Confusion - Motion to Dismiss
         1. Notice of Opposition Not Dismissed
            Pro-Football Inc. v. Nocona Leather Goods Co.
            48 USPQ2d 1543 (TTAB 1998) (Unpublished)
            Applicant's motion to dismiss opposition on ground opposers failed to state claim because opposers could not prove priority of use denied. Allegations pleaded in notice of opposition were sufficient to assert opposers' priority.
      6. Likelihood of Confusion - Judgment on the Pleadings
         1. Motion for Judgment on Pleadings Denied
            Chatam International Inc. v. Abita Brewing Co.
            49 USPQ2d 2021 (TTAB 1998)
            Applicant's motion for judgment on the pleadings on ground opposer pleaded use of PURPLE HAZE to promote sale of alcoholic beverages consisting of sake and opposer's CHAMBORD liqueur denied. Opposer pleaded use of PURPLE HAZE in manner analogous to trademark use. Sufficient to plead a proprietary right.
      7. Likelihood of Confusion - Summary Judgment
         1. Likelihood of Confusion - Agreement Summary Judgment Granted
            Vaughn Russell Candy Co. v. Cookies in Bloom Inc.
            47 USPQ2d 1635 (TTAB 1998)
            Applicant entered into written agreement it would stop using part of its mark. Material amendment of drawing not permitted. Applicant could no longer make lawful use of opposed mark. Summary judgment for opposer.
      8. False Suggestion of Connection Likelihood of Confusion Res Judicata
         1. Cross-Motions for Summary Judgment Motion to Amend Notice of Opposition
            Institut National Des Appellations v. Brown-Forman Corp.
            47 USPQ2d 1875 (TTAB 1998)
            Two separate opposers, agency of French government and private organization of wine and spirits growers, producers, and merchants from Cognac region of France opposed application to register CANADIAN MIST AND COGNAC for alcoholic beverage. Applicant's mark did not falsely suggest association because COGNAC did not point uniquely to one persona. COGNAC could be valid certification mark. Could be likelihood of confusion between trademark and certification mark. Prior judgment against mark MIST AND COGNAC was not res judicata in opposition against different mark.
      9. Trade Dress - Ornamentation
         1. Claimed Mark Merely Ornamental
            Goodyear Tire & Rubber Co. v. Vogue Tyre & Rubber Co.
            47 USPQ2d 1748 (TTAB 1998)
            Applicant's Gold Annular Stripe on a black sidewall tire was merely ornamental feature, not a trademark.
      10. Product Configuration
          1. Functionality - Distinctiveness
             Goodyear Tire and Rubber Co. v. Interco Tire Corp.
             49 USPQ2d 1705 (TTAB 1998)
             Applicant's tread design for a tire was not functional but applicant did not prove design had acquired distinctiveness as a trademark.
      11. Genericness
          1. Amendment of Pleading Not Allowed
             Micro Motion Inc. v. Danfoss A/S
             49 USPQ2d 1628 (TTAB 1998)
             Opposition sustained on ground designation MASSFLO for flowmeters for measurement of flow of mass of fluids was generic term. Opposer's motion, filed with brief, to add mere descriptiveness as additional ground of opposition denied because applicant not on notice that issue was tried.
      12. Evidence on Motion for Summary Judgment
          1. Evidence Issues
             Raccioppi v. Apogee Inc.
             47 USPQ2d 1368 (TTAB 1998)
             Extensive discussion of evidentiary issues on motion for summary judgment.
      13. Motions - Evidence - Discovery
          1. Issues of Evidence, Discovery, Trial Testimony
             Jain v. Ramparts Inc.
             49 USPQ2d 1429 (TTAB 1998)
             Extensive discussion of motion practice, discovery, and trial evidence. Natural person residing in foreign country cannot be compelled to come to United States for a discovery deposition. To obtain trial testimony of adverse witness residing in foreign country, party seeking testimony must resort to letters rogatory.
   3. COURT OF APPEALS FOR DISTRICT OF COLUMBIA CIRCUIT
      1. Likelihood of Confusion - Jury Trial
         1. Issues of Fact Triable to Jury
            Material Supply International Inc. v. Sunmatch Industrial Co.
            47 USPQ2d 1341 (CA DC Cir. 1998)
            Party seeking in District Court review of TTAB decision, where jury issues also tried, entitled to jury determination of which party owned mark. District Court should have waited for jury determination and then should have decided review of TTAB decision on basis of jury's factual finding.
   4. COMMISSIONER OF PATENTS AND TRADEMARKS
      1. Petition to Award Filing Date
         1. Granted
            In re Atlantic Scientific Corp.
            47 USPQ2d 1959 (Comm. 1998)
            Change of Practice - Filing date will not be denied merely because goods or services are described in method of use clause.
         2. Denied
            In re Cyber-Blitz Trading Services
            47 USPQ2d 1638 (Comm. 1998)
            Application filed under Section 44 must allege bona fide intention to use mark in commerce.
      2. Extension of Time to File Statement of Use
         1. Extension Granted
            In re Moisture Jazz Inc.
            47 USPQ2d 1762 (Comm. 1997)
            Change of Practice - Petition to grant extension of time to file statement of use will not be dismissed as moot solely because applicant did not file further requests for extension while petition was pending. Three-year deadline cannot be waived.
      3. Petition to Divide Application
         1. Petition Granted
            In re Little Caesar Enterprises Inc.
            48 USPQ2d 1222 (Comm. 1998)
            Applicant was allowed to divide goods out of application outside of time period provided by Rule 2.87(c). Potential opposer consented.
      4. Petition to Revive Application
         1. Petition Granted in Part
            In re Worldstyle Inc.
            49 USPQ2d 1959 (Comm. 1998)
            Application abandoned for failure to respond to Office Action rejecting specimens filed with statement of use for one class of two class application. Specimens for second class were acceptable. Application revived for that class.
      5. Section 8 Declaration - Late Specimen
         1. Late Specimen Accepted
            In re Metaux Precieux S.A. Metalor
            48 USPQ2d 1798 (Comm. 1998)
            Change of Practice - Specimen for Section 8 D eclaration may be accepted after close of sixth year if it shows dominant feature of mark and was in use during sixth year.

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   Endnotes