Annual Review of The Trademark Trial and Appeal Board Decisions

May 2003 – Presentations

RECENT TRADEMARK DEVELOPMENTS

UNITED STATES COURT OF APPEALS FOR

THE FEDERAL CIRCUIT

TRADEMARK TRIAL AND APPEAL BOARD

COMMISSIONER FOR TRADEMARKS

Cases Reported in

The United States Patents Quarterly

Volumes 63, 64, and 65

 

July 2002 through March 2003

 

David J. Kera

Oblon, Spivak, McClelland, Maier & Neustadt, P.C. 

Alexandria, Virginia

 

© 2003 David J. Kera

COURT OF APPEALS FOR THE FEDERAL CIRCUIT

EX PARTE

LIKELIHOOD OF CONFUSION

In re Majestic Distilling Co., 65 USPQ2d 1201 (CAFC 2003)

Application to register RED BULL for tequila. Refused because of likelihood of confusion with registered mark RED BULL for malt liquor. TTAB affirmed Examiner.

CAFC reviews determination of likelihood of confusion as question of law based on underlying facts. Reviews TTAB ultimate legal conclusion de novo and underlying findings of fact under substantial evidence standard. CAFC asks whether reasonable person might find evidentiary record supports TTAB's conclusion. CAFC takes entire record into account including evidence that detracts from TTAB's finding as well as evidence that justifies it. Possibility that inconsistent conclusions may be drawn from the same record does not render a TTAB finding unsupported by substantial evidence.

Likelihood of confusion determined by focusing on whether purchasing public would mistakenly assume that Applicant's goods originate from same source as, or are associated with, goods in cited registration. Case by case determination. DuPont factors used. Any one of the duPont factors may control a particular case. 177 USPQ 563 (CCPA 1973)

Drawing of mark in application was typed. Could potentially be represented in any manner. When word marks are identical but neither suggestive nor descriptive of the goods, similarity of marks factor weighs heavily against Applicant.

Even when goods or services are not competitive or intrinsically related, use of identical marks can lead to assumption there is a common source.

Substantial evidence supported TTAB conclusion. Malt liquor and tequila are similar goods sold in same trade channels. Low-priced products subject to impulse buying raises risk of likelihood of confusion. Purchasers held to a lesser standard of care.

Likelihood of confusion is not precluded by fact registered mark is not famous. Uncorroborated statements of no known instance of actual confusion of little evidentiary value. Lack of evidence of actual confusion carries little weight especially in ex parte appeal.

Consent agreement between owner of cited registration and third parties does not raise presumption that registrant consented to Applicant's use of its mark. Vindication of Applicant's asserted position of priority was more appropriately raised in proceeding designed to evaluate position. Balance favored the finding of likelihood of confusion. TTAB decision affirmed.

COURT OF APPEALS FOR THE FEDERAL CIRCUIT

INTER PARTES
LIKELIHOOD OF CONFUSION

Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d 1303 (CAFC 2002)

Opposition based on trademarks ACOUSTIC WAVE and WAVE for audio equipment and other goods against application to register POWER WAVE for amplifiers. TTAB dismissed opposition. CAFC reversed.

In re E. I.duPont de Nemours & Co., 177 USPQ 563 (CCPA 1973) sets out factors relevant to citing whether likelihood of confusion exists. duPont factors present questions of fact. Findings are tested for substantial evidence. Ultimate question of whether likelihood of confusion exists is question of law to which CAFC applies plenary review.

Determination of likelihood of confusion does not require examination and findings for each duPont factor. Different factors may play dominant roles depending on the evidence. If an opposer's mark is famous it plays dominant role because famous marks enjoy wide legal protection. More likely to be remembered and associated with new mark. Fame may be measured indirectly. Sales and advertising statistics may be accepted as indicia of fame. Fame and similarity or relationship of goods interact when assessing likelihood of confusion. Record supported a finding of consumer identification of marked product apart from Bose house mark. Survey is not required to find that a mark is famous. Party claiming fame for product mark used in tandem with famous house mark can be put to test to prove entitlement to benefits of fame for product mark. Product marks of Bose were found famous. Large market share of product sales or large percentages of advertising expenditures buttress claims to fame of product mark. Evidence support relationship of WAVE products to Applicant's amplifiers. Similar trade channels.

Root element WAVE showed strong similarity of parties' marks. Meaning of word POWER severely limited distinguishing ability. Marks are confusingly similar. Likelihood of confusion was established.

 

LIKELIHOOD OF CONFUSION

PRIORITY

Herbko International Inc.v. Kappa Books Inc., 64 USPQ2d 1375 (CAFC 2002)

TTAB's grant of summary judgment to cancellation Petitioner reversed because Petitioner did not have priority. Petitioner's mark CROSSWORD COMPANION for books and Registrant's mark CROSSWORD COMPANION & Design for crossword puzzles on scrolls. Petitioner's first sale of books in 1993. Respondent's application in June 1994. Petitioner's second sale of books in 1995. TTAB ruled that Petitioner's rights started in 1993.

Court reviews TTAB's summary judgment without deference. All reasonable factual inferences drawn in favor of non-moving party.

Party petitioning for cancellation on ground of likelihood of confusion must show priority and likelihood of confusion caused by registered mark. Priority requires showing of proprietary rights arising from prior registration, prior trademark use, prior trade name use, prior use analogous to trademark use, or any other use sufficient to establish proprietary right. Prior user must show use sufficient to create association in mind of purchasing public between mark and Petitioner's goods. It does not required direct proof of association. Activities must reasonably be expected to have substantial impact on purchasing public.

Title of single book cannot serve as a source identifier. As matter of law, publication of single book cannot create association between the book's title and the source of the book. Kappa's substantial sales in 1993 pertained only to first CROSSWORD COMPANION volume and were insufficient to form needed association. There was no other evidence of association such as use of mark as a trade name. TTAB erred in holding Kappa established priority with its mark. In view of court's case law prohibiting proprietary rights for single book titles, TTAB erred in holding on summary judgment that Kappa established proprietary rights sufficient to show priority over Applicant's CROSSWORD COMPANION mark.

On likelihood of confusion issue, word portion of Respondent's mark identical to Petitioner's claimed mark and design part of Respondent's mark did not diminish substantial identity of marks in their entireties. Goods were very similar and sold through same trade channels to same class of customers. There was a likelihood of confusion. Summary judgment for Petitioner was reversed because of failure of proof of priority.

TRADEMARK TRIAL AND APPEAL BOARD

EX PARTE

LIKELIHOOD OF CONFUSION

In re Island Oasis Frozen Cocktail Co., 64 USPQ2d 1158 (TTAB 2002) (non-precedential)

Application for ISLANDER for non-alcoholic bases and concentrates for making frozen alcoholic and non-alcoholic drinks, etc. Refused by Examiner on basis of likelihood of confusion with ISLANDER COFFEE HOUSE for restaurant services. Generic words COFFEE HOUSE were disclaimed but still must be considered in comparison of mark in its entirety with Applicant's mark. ISLANDER given greater weight in comparison. Words COFFEE HOUSE lent different significance in commercial impression of registered mark than any meaning or impression conveyed by Applicant's mark. Examiner introduced no evidence from which Board could conclude that Applicant's goods would be sold in coffee house restaurants.

No per se rule for finding likelihood of confusion between restaurant services and specific food or beverage products.

No evidence from which Board could conclude that purchasers would believe that Applicant's goods came from Opposer's restaurant. Reversed.

DESCRIPTIVE

In re Best Software Inc., 63 USPQ2d 1109 (TTAB 2002)

Trademark BEST! IMPERATIV HRMS for computer software for human resource payroll, W-2, and tax processing and employee management Requirement for disclaimer of BEST on ground of mere descriptiveness. Ground for refusal BEST was laudatory word which attributed quality or excellence to the goods. Unregistrable without proof of acquired distinctiveness. Holding BEST was merely descriptive. Disclaimer required.

Applicant had ownership of registration for BEST! without claim of acquired distinctiveness. Affidavit of incontestability acknowledged. Argued that goods of registration encompassed goods of present application. Trademark Act states that incontestability applies specifically to use of mark rather than registration. Board said ownership of incontestable registration does not allow applicant to obtain by that fact another registration of same or similar mark for somewhat different goods. Incontestable status of mark does not alter analysis for registrability in later applications for similar mark.

 

INADEQUATE DESCRIPTION OF GOODS

DESCRIPTIVE

FAILURE TO PROVIDE INFORMATION

In re SPX Corp., 63 USPQ2d 1592 (TTAB 2002)

Trademark E-AUTODIAGNOSTICS for electronic engine analysis system comprising a handheld computer and related computer software. Refusal based on inadequate description of goods. Refusal was also based on mere descriptiveness and failure to provide information concerning Applicant's goods.

Evidence submitted with Applicant's brief was untimely. Record should be complete prior to filing appeal.

Identification of goods was adequate to indicate scope of registration which might issue. Requirement for more definite description reversed.

Mark is merely descriptive if it immediately conveys knowledge of ingredients, qualities, or characteristics of goods. Determination made in relation to goods on which the mark is used or proposed to be used from the standpoint of average prospective purchaser. Dictionary definitions are proper evidence. Articles in foreign publications are not relevant in absence of indication whether articles had any public exposure in the United States. "Auto diagnostics" was recognized term for goods for engine analysis, including computers. Not necessary that term appear in dictionary or newspaper article in exact manner of mark for trademark to be found merely descriptive. Telescoping two words into one word does not avoid descriptiveness. The letter "E" does not change the descriptive significance because the prefix indicated electronic nature of product. Mark was merely descriptive.

Applicant ignored Examiner's requirement to supply information describing nature, purpose, and trade channels of goods. Request was reasonable. Refusal for failure to comply with requirement affirmed.

 

DESCRIPTIVE

In re Fitch IBCA Inc., 64 USPQ2d 1058 (TTAB 2002)

PORTFOLIO UPDATE for financial services, namely – providing information on securities, research and surveillance of securities via a global computer information network. Evidence submitted by Applicant with its brief was untimely and not considered.

Examining Attorney submitted excerpts of articles from Lexis/Nexis database showing use of term "Portfolio Update" and copies of internet websites showing use of "portfolio update" or similar terms as topic headings.

Evidence of actual use of phrase on websites has greater probative value than search summaries, which may indicate only that two words in an overall phrase appear separately in the website literature. Search engine results and website contents are equally accessible and constituted evidence that public may be exposed to phrase "portfolio update".

Usual tests for determining whether PORTFOLIO UPDATE was merely descriptive. Evidence supported conclusion that term PORTFOLIO UPDATE merely describes significant aspect of Applicant's service, namely updating information relevant to client's securities portfolio. Descriptive significance was readily perceivable.

 

DESCRIPTIVE

In re Tower Tech Inc., 64 USPQ2d 1314 (TTAB 2002)

Application to register SMARTTOWER for cooling towers and accessories. Refused on basis mark was merely descriptive of goods. Evidence from Lexis/Nexis database showed general use of term "smart" in relation to many computer-operated or otherwise automated items. Automated systems were used as parts of cooling towers. Purchasers would readily perceive smart to mean the tower was a highly automated device. tower would be perceived as referring to cooling towers. Two words separately had readily understood meaning and when combined in term SMARTTOWER merely described cooling towers that were highly automated. No unique or incongruous meaning. Purchasers of commercial and industrial cooling towers and accessories would likely be aware of their operation. Refusal affirmed.

 

GENERICNESS

In re American Academy of Facial Plastic and Reconstructive Surgery, 64 USPQ2d 1748 (TTAB 2002)

Application to register facial plastic surgery & Design for training in plastic facial and reconstructive surgery techniques, association services, and for indicating membership in an association of facial plastic and reconstruction surgeons refused on ground mark was generic term. Generic terms are terms the relevant public understands primarily to refer to the class of Applicant's goods or services. Incapable of functioning as trademark. Not registrable on the Principal Register under Section 2(f) or on the Supplemental Register.

Two part test. What is class of goods or services and does relevant public understand the designation primarily to refer to that class of goods or services? Test is primary significance term has to relevant public. Examining Attorney has burden of proving term is generic by clear evidence. Evidence of public's understanding can be obtained from any competent source including dictionaries, research databases, newspapers, and other publications. When mark is a phrase, Examiner must prove evidence of meaning of composite mark as a whole. Evidence show that words "facial plastic surgery" were generic indicating field of specialty in which services were rendered.

Even if phrase not found to be generic, it was very highly descriptive and evidence of acquired distinctiveness was insufficient. The greater the degree of descriptiveness of a term, the heavier the burden of proof of acquired distinctiveness. Possible to register a composite word and design mark even if the literal portion consists of a generic name if the wording is displayed in very distinctive lettering or is accompanied by distinctive design. Design or display must create impression separate from impression made by words. Ordinary geometric shapes are generally nondistinctive. Mere decorative features do not identify goods and do not function as trademarks. No showing of acquired distinctiveness for simple underlining of word SURGERY as design feature.

Proof of secondary meaning cannot transform generic term into a subject for trademark registration.

Even if mark eligible, application could not be transferred to Supplemental Register. After decision on appeal application will not be reopened except for entry of a disclaimer or petition to Commissioner, which will be granted only upon showing of sufficient cause for consideration of any matter not already adjudicated.

 

GENERICNESS

In re Martin Container Inc., 65 USPQ2d 1058 (TTAB 2002)

Application to register CONTAINER.COM for buying, selling, and renting metal shipping containers. Application refused on Principal Register on ground was merely descriptive and after transfer to Supplemental Register, application refused on ground mark is generic term. For registration on Supplemental Register mark must be capable of distinguishing Applicant's goods or services. CONTAINER.COM found incapable of identifying source of services. Addition of top level domain name indicator, .COM, which also had no source-identifying significance, did not create a term capable of identifying and distinguishing services.

 

GENERICNESS

In re CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002)

Application to register BONDS.COM for providing information regarding financial products and services via global computer network and providing electronic services via global computer network. Application on Supplemental Register. Refused on ground designation was generic and incapable of registration.

Generic terms are common names that relevant purchasing public understands primarily as describing (denoting) class of goods or services being sold. Incapable of indicating a particular source. Cannot be registered as trademarks. Examiner bears the burden of proving that a term is generic.

The class of services was information and electronic commerce services regarding financial products and relevant public would understand the term BONDS.COM referred to the category of services. Bonds was name of one of the financial products which constituted the subject matter of Applicant's services and term was therefore also generic name for the information services and electronic commerce services. Those wishing to provide internet information services and electronic commerce services involving bonds have to use and are entitled to use generic term. Term which is generic name of a particular category of goods is likewise generic for any services which are directed to or focused on that class of goods.

Top level domain name indicator like ".com" does not turn otherwise unregistrable designation into distinctive registrable trademark or service mark. Combining generic term with top level domain indicator does not create a term capable of identifying and distinguishes services. Public would not understand BONDS.COM to have any meaning apart from the combined meaning of the individual terms.

Fact that Applicant owned a Supplemental Registration for STOCKS.COM for providing information about investment securities for online investors and professional traders did not compel different result. Uniform treatment under the Trademark Act is an administrative goal but the task of TTAB is to determine whether Applicant's particular mark is generic on the record before it. Each case decided on its own merits. Neither the current Examining Attorney nor the TTAB was bound by the prior action of the Examining Attorney who examined the application for STOCKS.COM. Refusal affirmed.

 

GENERICNESS

In re American Institute of Certified Public Accountants, 65 USPQ2d 1972 (TTAB 2003)

Uniform CPA Examination for printed matter, namely, practice accounting examinations; accounting exams; accounting information booklets; and prior accounting examination questions and answers. Requirement for disclaimer of CPA EXAMINATION as generic term. Applicant's examinations were used by Board of Accountants of all fifty states, D.C., Guam, Puerto Rico, and U. S. Virgin Islands.

CAFC encourages PTO to achieve uniform standard for assessing registrability of marks. Board must assess each mark on the record of public perception submitted with the application.

Applicant's entire mark initially refused as descriptive and possible generic. Amendment to Section 2(f) implicitly admitted composite mark lacked inherent distinctiveness. Amendment to Section 2(f) was not admission that composite mark was generic. Amendment to 2(f) may avoid disclaimer when requirement is based on descriptiveness of term. Section 2(f) does not aid Applicant when term to be disclaimed is generic.

Class of goods identified by Applicant included exams, practice exams, booklets, collections of questions and answers, and information for college and professional level accounting and for CPA and non-CPA purposes. Relevant public included would-be CPA's and state certifying boards plus CPA's, various entities marketing or distributing booklets, etc., and those involved in administration or grading of examinations.

PTO cannot find multi-word phrase to be generic when only evidence is that components individually are generic. State Boards of Accountancy referred to the CPA examinations in a generic fashion. Even if TTAB accepted Applicant's argument that particular members of relevant public would know that there is one source for UNIFORM CPA EXAMINATION, they would likely perceive "CPA examination" as generic term. Evidence persuaded TTAB that relevant public primarily perceived "CPA exam", "CPA examination", and variations as generic even if sizable subset of public knew association between Applicant and the UNIFORM CPA EXAMINATION. CPA EXAMINATION was generic and requirement for disclaimer was affirmed.

 

SURNAME

In re Pyro-Spectaculars Inc., 63 USPQ2d 2022 (TTAB 2002)

Application for SOUSA for fireworks and entertainment services featuring pyrotechnics. Refusal on basis SOUSA was primarily merely a surname. Decisions concerning historical names draw a line between names so widely recognized they are almost exclusively associated with historical figures and names which are semi-historical in character. A term is primarily merely a surname if primary significance to purchasing public is that of a surname. Initial burden is on PTO to establish prima facia case. Then burden shifts to Applicant to rebut showing made by the Examiner. Examining Attorney made prima facia case SOUSA was primarily merely a surname. John Philip Sousa was band leader and composer. Nexis evidence showed existence of present day recognition and fame of Sousa.

Even more important than present recognition of John Philip Sousa was nature of Applicant's goods and services. Goods and services would be associated by potential purchasers with patriotic events. Immediate association of Sousa would be with the famous composer. Primary significance of SOUSA as used in connection with Applicant's goods and services was name of specific person well known in American history for patriotic music. Any connotation of Sousa as surname would be secondary in significance. Applicant rebutted primary facia case established by examiner. Refusal reversed.

TRADEMARK TRIAL AND APPEAL BOARD

INTER PARTES

LIKELIHOOD OF CONFUSION

Interlego AG v. Abrams/Gentile Entertainment Inc., 63 USPQ2d 1862 (TTAB 2002)

LEGO for a wide variety of toys v. MEGO for children's toys. Priority not an issue because Opposer's introduced certified status and title copies of LEGO registrations. Evidence demonstrated Opposer's use of LEGO in U.S. since 1975 on wide variety of toys.

Goods were at least in part legally identical. When goods are at least in part legally identical degree of similarity of marks necessary to support likelihood of confusion declines. LEGO and MEGO extremely similar. Many purchasers of toys are children who are less likely to notice slight difference in the marks. MEGO not yet used and public not educated to pronounce mark as "me go". More logical pronunciation is MEG O. Close similarity in sound.

Consumers would not know derivation of mark MEGO and would regard both marks as lacking any connotation. Use of MEGO likely to result in confusion. Any possible doubt would be removed because LEGO very famous toy mark. Famous trademarks enjoy a very broad scope of protection. Opposition sustained.

 

LIKELIHOOD OF CONFUSION

FAMILY OF MARKS

Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782 (TTAB 2002)

Alleged family of authority marks for apparel, sporting equipment and retail store services versus the Personal Computer Authority and PC Authority & Design for retail store services featuring computer hardware, software, accessories, networking products and peripheral devices. Opposer alleged ownership of a large number of registrations for marks which contained the word AUTHORITY.

Opposer was largest sporting goods retailer in the United States and one of top fifty to one hundred retailers of all types. Annual sales over one billion dollars a year with advertising expenditures of seventy million dollars in 1998. Opposer's strongest arguments were prior use of trade name The Sports Authority and registration of marks THE SPORTS AUTHORITY and THE SPORTS AUTHORITY logo. Dominant element of Opposer's mark was AUTHORITY. However, considered in their entireties, Applicant's and Opposer's marks had different pronunciations and different appearances. Connotations similar only to extent each conveyed sense that Opposer and Applicant were authorities in their fields. Goods and services of Applicant different from goods and services of Opposer. There was no similarity or relationship between the goods even though electronic sporting goods and equipment had computer parts. Different channels of trade and different classes of customers. Nothing in the record to suggest that, even though same consumer could purchase products from both parties, consumer would consider goods likely to emanate from the same source or have the same sponsorship.

Little evidence to show level of brand awareness of Opposer's marks. No survey evidence and no statistics regarding household penetration or brand awareness. Insufficient evidence to show that Opposer's mark was famous.

Parties had operated in the same geographical market for approximately five years without any evidence of confusion. Potential confusion de minimis. Not a case for presumption that fame of Opposer's mark alone could be dispositive. Fame factor of duPont favored Opposer but all other relevant factors favored Applicant. Opposer's family of marks argument was insufficiently supported by the evidence. Furthermore, any strength attaching to the family of AUTHORITY marks was limited to retailing of sporting goods and equipment, footwear, apparel, etc. No evidence to support argument that family would be recognized as extending beyond those goods and services. No likelihood of confusion. Opposition dismissed. Opinion has numerous rulings on evidence and procedure.

 

LIKELIHOOD OF CONFUSION

Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002)

ROAD RUNNER and ROAD RUNNER & Design for a variety of goods v. ROADRUNNER MAPS & Design (Maps disclaimed) for road maps. Preliminary ruling – party to proceeding generally has no obligation to identify fact witnesses or trial evidence prior to the trial.

Priority not an issue in view of Opposer's status and title copies of pleaded registrations.

Fame of Opposer's ROAD RUNNER mark played dominant role. Popularity of cartoon character created demand for ROAD RUNNER merchandise. Road Runner character licensed for use on wide variety of products. Also licensed for promotional use. Evidence established ROAD RUNNER was famous mark. Fame established by indirect evidence length of time of use, advertising, requests for licenses.

Marks are compared for similarity in their entireties under criteria of appearance, sound, and connotation and similarity or dissimilarity in overall commercial impression. The test is not side-by-side comparison but whether sufficiently similar that confusion of source of goods likely to result. Focuses on recollection of average purchaser who normally retains general, rather than specific, impression of trademarks. One feature may be more significant than other features of mark. Applicant's mark was similar to marks depicted in two of Opposer's registrations.

ROADRUNNER legally equivalent to ROAD RUNNER. Disclaimed word MAPS in Applicant's mark did not distinguish it from ROAD RUNNER. MAPS likely to be viewed as identification of goods rather than means of distinguishing source. Depiction of a cartoon road runner bird by Applicant was basically similar to depiction by Opposer.

Goods of Applicant did not have to be identical to goods of Opposer. Goods were related. The greater the similarity of the marks, the lesser the degree of similarity of the goods required to support likelihood of confusion. Description of goods, "maps," covered all types of road maps, not just the types Applicant actually marketed. Road maps were related to Opposer's goods. Also road maps were within natural area of expansion of products for which Opposer might license use of Road Runner mark.

No limit on trade channels or customers in application or Opposer's registrations. Presumption was goods traveled in all normal trade channels. Parties' goods were marketed through the same retail chains to consumers, who purchased without a great degree of care.

Evidence of actual confusion not required to establish likelihood. Further, no evidence of opportunity for actual confusion to have occurred. Applicant's mere prior knowledge of Road Runner character did not establish adoption of mark in bad faith.

Any doubt about likelihood of confusion would be resolved against Applicant. Opposition sustained on ground of likelihood of confusion. Opposition on ground of false suggestion of connection dismissed for lack of sufficient evidence.

The opinion is also notable for numerous rulings on questions of procedure and evidence.

 

DESCRIPTIVE

Callaway Vineyard & Winery v. Endsley Capital Group Inc., 63 USPQ2d 1919 (TTAB 2002)

Opposition against application to register COASTAL WINERY for wines. Basis mere descriptiveness. Opposer motion for summary judgment. Mark merely descriptive if it describes ingredient, quality, characteristic, function, feature, purpose, or use of relevant goods. Mark suggestive if some imagination, thought, or perception is required to determine nature of goods. Descriptive term immediately tells something about the goods. Determination made in relation to goods of application. Sufficient if term describes one significant attribute.

Opposer showed absence of any genuine issue of material fact and that COASTAL WINERY, used on varietal wines, would immediately describe place or establishment where applicant produces its wine.

"Coastal winery" frequently used to denote place or establishment where wine is made.

Equitable defenses of laches, est