Trademark Blogs

N.D. Fla. District Court Upholds TTAB's "BUSHWACKER" Decision

TTABLog - 14 hours 25 min ago
The U.S. District Court for the Northern District of Florida, in a Section 1071 review of the TTAB's decision in Sandshaker Lounge and Package Store, LLC v. Quietwater Entertainment, Inc., Cancellation No. 92051644 (January 31, 2013) [not precedential], granted the summary judgment motion of defendant Quitewater and upheld the Board's dismissal of the opposition. [Complaint here]. Sandshaker Lounge and Package Store, LLC v. Quietwater Entertainment, Inc., Civil Action No. 3:1cv114/MCR/CJK (N.D. Fla. September 5, 2014).

Sandshaker sought to cancel a registration for the mark BUSHWACKER for "entertainment services in the nature of a festival featuring live musical groups," on the ground of likelihood of confusion, claiming that it had previously used the identical mark for frozen drinks and for musical events, all of the parties' activities occurring in Pensacola Beach, Florida.

The district court concluded that Plaintiff Sandshaker lacked ownership rights in the BUSHWACKER mark due to its acquiescence in use of the same name by other businesses for their own drinks, prior to Defendant's Quietwater's first music festival. Therefore Sandshaker could not establish the priority of use necessary for a likelihood of confusion claim.

It is undisputed that Murphy and Sandshaker knowingly allowed other businesses in the area to use the same name for their own drinks prior to and after 1988. Campbell admitted it was too late for Sandshaker to attempt to claim exclusive use of the term for its drink. This knowing acquiescence to use of the name by other unrelated establishments is relevant to the TTAB’s finding that Sandshaker did not have trade identity rights sufficient to create priority.
The district court dismissed all five counts of the complaint, including trademark infringement, dilution.

Read comments and post your comment here;

Text Copyright John L. Welch 2014.
Categories: Trademark Blogs

CAFC Affirms TTAB Decision in Flying Birds Section 2(d) Opposition

TTABLog - 15 hours 14 min ago
On September 15, 2014, in a nonprecedential ruling, the U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's decision in Retail Royalty Company v. Michael R. Longshore, Opposition No. 91192917 (January 21, 2014) [not precedential]. [TTABlogged here]. The Board found the two design marks shown below, for overlapping clothing items, to be confusingly similar . The CAFC agreed. Longshore v. Retail Royalty Co., Appeal No. 2014-1448 (Fed. Cir. September 15, 2014) [not precedential].

Longshore, appearing pro se, argued that the marks are distinguishable because his mark depicts a dove whereas Retail Royalty's mark depicts a bird of prey. The CAFC ruled that the Board's conclusion, based on a visual comparison of the marks, was supported by substantial evidence.

Longshore maintained that his goods are "inspirational wear," while Retail Royalty's mark is used only for women's clothing. The CAFC, however, pointed out that the Section 2(d) determination must be based on the goods as identified in the involved application and registration. Here, there are no corresponding limitations in either. And so the Board did not err in presuming that the involved goods travel in the same channels of trade to the same classes of consumers.

Finally, with regard to a third-party registration for the mark HOLLISTER CALIFORNIA & Design, which depicts a bird in silhouette (below), the Board correctly concluded that the probative value of this registration was limited given the lack of evidence of actual usage of the mark.

Read comments and post your comment here;

Text Copyright John L. Welch 2014.
Categories: Trademark Blogs


TTABLog - 16 hours 10 min ago
Delta Air Lines applied to register the mark ATLANTA'S HOMETOWN AIRLINE for "transportation of goods, passengers and travellers by air" [AIRLINE disclaimed], but the USPTO refused registration under Section 2(d) in view of the registered mark CHICAGO'S HOMETOWN AIRLINE, owned by United Air Lines, for "transportation of persons, property and mail by air" [AIRLINE disclaimed]. Delta argued that the term "hometown airline" is inherently weak, and that purchasers will be inclined to focus on the first word of each mark and will recognize the differences between the two cities. So, did Delta arguments achieve lift-off? How do you think this came out? In re Delta Air Lines, Inc., Serial No. 85196441 (August 27, 2014) [not precedential].

The Board perceptively pointed out that the "crux" of the issue is not "whether Chicagoans or Atlantans or even United States consumers in general are likely to confuse the city of Chicago with the city of Atlanta. Rather, the question is whether the sources of the respective airline passenger services doing business under these similar taglines are likely be confused."

Delta urged that the Board look at the word "hometown" from the viewpoint of the airline: an airline
can have headquarters in only one location, its "hometown." Therefore, when "hometown airline" is coupled with two very distinct cities, the composite phrases distinguish the services of United Airlines (Registrant, with its home in Chicago) from the services of Delta Air Lines (Applicant, with its home in Atlanta).

The evidence of record, however, did not establish that relevant consumers know or care that United is headquartered in, Chicago, Delta in Atlanta, American in Fort Worth and Southwest in Dallas.The Board therefore agreed with Examining Attorney Toby Ellen Bulloff that these two mark "could well create for prospective consumers the impression that a single anonymous source had chosen the same laudatory or nostalgic tagline for multiple cities."

Moreover, the Board additionally noted, the term "hometown" could be seen as referring to the hometown of the airline customer, in that an airline may have a hub in a given city and the airline thus might be considered the "hometown airline" for that city.

As to the argument that "hometown airline" is weak, Applicant Delta cited a number of co-existing registrations for marks that include the word "hometown," for banks, newspapers, and grocery stores. The Board found these registrations of little relevance to airlines, and noted that the cited mark is the only registered mark for airline services that incorporates the "hometown airline" phrase. The fact that the cited registration issued under Section 2(f) does not mean that the registered mark is not entitled to protection against registration of a "highly-similar mark for closely-related services."

The Board concluded that confusion is likely, and it affirmed the refusal to register. It also affirmed the PTO's requirement that applicant disclaim the word "Atlanta's."

Read comments and post your comment here.

TTABlog note:  So what do you think? As an Atlanta White Sox fan, I am somewhat confused.

Text Copyright John L. Welch 2014.
Categories: Trademark Blogs

Caterpillar Conquers BIG CAT in TTAB 2(d) Opposition

TTABLog - 16 hours 12 min ago
The fame of the mark CAT for construction equipment brought victory to Opposer Caterpillar Inc. in its Section 2(d) opposition to registration of BIG CAT, in standard character and design form, for "gas well equipment, namely, well bore fluid redistribution equipment comprised of a sealing body insertable into a well bore with ports allowing fluid to be pumped from one geological stratum to another, pumps, valves, and pipes." Although the products of the parties are expensive and would be purchased with care and sophistication, the remaining relevant duPont factors pointed in Caterpillar's direction. Caterpillar Inc. v. Big Cat Energy Corporation, Opposition No. 91193704 (September 3, 2014) [not precedential].

Caterpillar relied on a slew of registrations for the mark CAT, in standard character and design form, as well as on common law use of the mark CAT for a whole litter of goods and services, including goods and services used in the oil and gas industry. It asserted that its mark CAT is often associated with "big machines," "big projects," and other big things, and it made a big deal out of the claim that the company is often referred to as "BIG CAT."

The Board found that opposer's CAT marks are famous, "in no small measure because ... CAT branded equipment is pervasive on natural gas well sites throughout the entire life-cycle of the well." In short, "there exists a relationship between Applicant's hydrological technology and Opposer's listed heavy machinery, engines and generator sets."

The Board found "compelling," Caterpillar's arguments that the involved marks are confusable not only at the point-of-sale, but also in the post-sale context of "dealing with produced water from well sites."

Given the renown of the CAT marks generally, in the oil and gas industry specifically, and the ubiquitous presence of CAT-branded equipment at gas well sites, we agree that it is likely that during the life of the well, a range of persons, including miscellaneous contractors, well owners, and/or operators might well be confused regarding the source of Applicant’s technology upon exposure to the BIG CAT marks on a well site inundated with Caterpillar’s CAT-branded products and services.
From the record evidence, the Board found that the CAT mark "has reached an extraordinary level of fame, not only in the oil and gas industry, but also with respect to the general consuming public."Of course, when present fame is a dominant factor in the Section 2(d) analysis.

Not surprisingly, the Board found the word "cat" to be the dominant portion of applicant's marks, and it agreed with Caterpillar that potential customers of applicant will consider the BIG CAT marks as merely variations of opposer's CAT marks. Moreover, the record included many examples of use of the term "Big Cat" to refer to Caterpillar.

Third-party "cat"  marks offered by applicant were of little relevance, but even if they were, the Board noted that "third-party registration or use cannot justify the registration of what possibly may be another confusingly similar mark." The lack of actual confusion evidence was likewise non-probative, in part because applicant operates only in a limited geographic area in Wyoming and has had comparatively minimal sales and promotional activity.

The Board acknowledged that the involved products and services are quite expensive and would be purchased with care. But even sophisticated customers may be confused by very similar marks. This duPont factor slightly favored applicant.

Balancing the relevant duPont factors, and giving opposer's CAT marks the broad scope of protection to which they are entitled, the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

TTABlog note: The Board declined to reach Caterpillar's dilution claim. Is there any chance that CAT could be a "household word" for Caterpillar's products and services? [In my household, "cat" means the neighbor's pest.] I don't think so.

Text Copyright John L. Welch
Categories: Trademark Blogs

SUNNY HAZE Confusable With PURPLE HAZE for Beer, Says TTAB

TTABLog - 16 hours 13 min ago
The Board sustained this Section 2(d) opposition to registration of SUNNY HAZE for "beer; brewed malt-based alcoholic beverage in the nature of a beer," finding the mark likely to cause confusion with the registered mark PURPLE HAZE for beer, ale, lager, and malt liquor. Of course it all came down to the marks and, while noting the facts that HAZE is the second word in each mark and that HAZE may have some meaning in the context of beer, the Board concluded that applicant's mark appears to be a variant of opposer's. Abita Brewing Company, LLC v. Mother Earth Brewing, LLC., Opposition No. 91203200 (September 11, 2014) [not precedential].

Objections to opposer's survey: Applicant objected to opposer's likelihood of confusion survey because it did not include respondents from the limited number of markets in which applicant sells its products, and it did not present the marks in the manner in which consumers would have seen them in the marketplace (i.e., on beer bottles or cans, accompanied by the respective house mark). The Board, however, pointed out that applicant seeks a nationwide, geographically unrestricted registration, and so the universe of survey respondents was not overbroad. Likewise, marketplace conditions are irrelevant when the Board is considering the likelihood of confusion of two marks, SUNNY HAZE and PURPLE HAZE, in standard character form.

The marks: As we know, when the goods are, at least in part, identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. Applicant argued that the words PURPLE and SUNNY, appearing as the first term in the respective marks, are dominant, and that the marks when viewed in their entireties evoke different images. The Board, however, found that the placement of the word HAZE does not distinguish the marks because SUNNY HAZE appears to be a variant of PURPLE HAZE. And even if HAZE has some meaning in the context of beer, as discussed below, "it is not so weak that consumers would  give greater significance to PURPLE and SUNNY and ascribe a different source to each brand of beer."

Applicant asserted that "haze" is descriptive of a characteristic of beer, and is used in the beer industry to measure beer clarity. Furthermore, PURPLE HAZE calls to mind the Jimi Hendrix song of the same name, along with psychedelic imagery associated with marijuana and LSD, imagery that SUNNY HAZE does not evoke.

The Board found no evidence that the general beer-drinking public would be familiar with the technical definition "haze." They would be aware, however, of the ordinary dictionary definition of "haze" (Webster's: "a cloudy appearance in a transparent liquid or solid"). According to opposer's website, PURPLE HAZE beer has a "subtle purple color and haze," and so the term does have some significance that consumers would recognize. (In addition, applicant pointed out that "purple" describes opposer's beer.) With regard to the Jimi Hendrix song, the evidence did not establish that the general beer-consuming public would make the connection between the mark PURPLE HAZE for beer and the song.

In any case, "at least those consumers who view the mark as having a descriptive feature and do not make the Jimi Hendrix association would see the marks PURPLE HAZE and SUNNY HAZE as more similar than they are different, as both identify a color or mood and both share the word HAZE." Moreover, even if the marks connote two different types of haze, a "purplish or dark haze" and a "bright, golden haze," they both connote types or colors of haze. And as to the ordinary dictionary meaning of "haze," it applies to both marks.

And so the Board concluded that this first duPont factor favored a finding of likely confusion.

Other factors: Opposer's evidence demonstrated that PURPLE HAZE beer has enjoyed some sales success, but it did not prove the widespread recognition required for fame under Section 2(d). The limited number of third-party registrations and Internet uses submitted by applicant were of little probative value vis-a-vis the strength of the PURPLE HAZE mark. Applicant argued that its craft beer is purchased with care, but neither the involved application or registration is limited to craft beer, nor are they limited as to price of channels of trade. In any case, even sophisticated purchasers are not immune to confusion when similar marks are used on identical goods. Finally, the lack of proof of actual confusion was of no probative value given the limited time of concurrent use of the mark, and the limited geographic distribution of applicant's product.

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

Read comments and post your comment here;

TTABlog note:  No mention that one who is drinking beer may have a more hazy recollection of each mark.

Text Copyright John L. Welch 2014.
Categories: Trademark Blogs

Precedential No. 37: TTAB Affirms Rejection of Web Page Specimen for Computer Services

TTABLog - 16 hours 26 min ago
The TTAB has re-designated as precedential its three-year old decision in In re Chengdu AOBI Information Technology Co., Ltd., Serial No. 77723547 (May 31, 2011), wherein the Board affirmed a refusal to register the mark IObit on the Supplemental Register for computer programming, software design, data conversion, web site hosting, computer maintenance, and other related services. The Examining Attorney had deemed the specimen of use (below) unacceptable because it did not show use of the mark for any of the identified services.


The specimen of use was a screenshot from applicant's website. The only mentions of services on the web page were as follows:

Our sincere commitment to all our customers is that we will continue delivering innovative system utilities that are as simple to use as they are powerful and reliable. We also promise that we will keep providing the first-class free software and online service, for personal or non-commercial use.

We pursue the genuine ambition of becoming one of the world's top utility producers and Windows system service providers on the Internet.
The Board found these vague references to services to be insufficient to show use of the mark IObit for the recited services.

In fact, we cannot determine from this specimen whether the "online service" refers to a separate service, or is merely part of the free software product. Nor is applicant’s stated ambition to be a Windows system service provider an indication that applicant is providing a service now, and this statement certainly does not show that applicant is offering any of the services specified in the application.
The Board also reviewed other specimens that applicant had submitted, but applicant did not even argue that they were acceptable since they were either illegible or referred to products, not services.

Read comments and post your comment here;

TTABlog note:  This decision appears as Example No. 20 in the USPTO's new Examination Guide for Service Mark specimens (here).

Text Copyright John L. Welch 2014.
Categories: Trademark Blogs

Seats Available: TTAB Comes to Boston: October 3rd

TTABLog - 17 hours 28 min ago
We now have an overflow room available for the TTAB hearing and morning TM session. Law School students admitted free! On Friday, October 3rd, the USPTO's Trademark Trial & Appeal Board (TTAB) and Patent Trial & Appeal Board (PTAB) will hold hearings in the Moot Court Room on the campus of Northeastern University School of Law. This monumental event is jointly sponsored by the Boston Patent Law Association and Northeastern University School of Law. Details and registration here. Summary of TTAB case here.

The morning program will focus on trademarks at the TTAB, Chief Judge Rogers will explain "Why the TTAB is not like the PTAB or District Court," followed by John L. Welch, TTABlog and Lando & Anastasi, sharing his views on "The Top 8 or 9 Losing TTAB Arguments." A three judge panel of the TTAB will hear the final argument in an inter partes proceeding, and Susan Montgomery and John Welch will then lead a question-and-answer period among the attendees. The luncheon keynote speaker is Kevin Johnson, Associate General Counsel, The Gillette Company, who will discuss "Brand Intellectual Property." The afternoon session will turn to patents, led off by Claire Laporte of Foley Hoag, speaking on "Emerging Issue in AIA PTAB Proceeding: Obviousness." A hearing before a three judge panel of the PTAB will be followed by a reception.

Read comments and post your comment here.

TTABlog comoment:  In my memory, I think this is possibly the most significant double-header since Wilbur Wood started both ends of a twin-bill for the Chicago White Sox against the Yankees in 1973 (he lost both games).

Text Copyright John L. Welch 2014.
Categories: Trademark Blogs

The House That Solitude Built

Duets Blog - Fri, 09/19/2014 - 09:34

Ever tried to search for directions on your so-called “smart” phone by the name of your intended destination?   What if it directed you to the museum you searched, but unwittingly not the museum you intended to visit…in the same area?  As if there were not enough things to be afraid of in New Jersey like Snookis or bridge closures, that could very well happen to you in the borough of High Bridge.

This is the historic Solitude House in High Bridge, New Jersey.


This is also a historic house in Hampton, New Jersey referred to as Solitude House and operated by Union Forge Heritage Association (“UFHA”).  UFHA owns a federal trademark registration for SOLITUDE HOUSE MUSEUM for “museums.”  Their Facebook page identifies the house as Solitude Heritage Museum.  More on that page in a minute.

As I probably don’t have to tell you, they are not the same house.

Hampton, NJ and High Bridge, NJ are 4.9 miles apart.

The borough filed a trademark application for SOLITUDE HOUSE for services listed as “historic house and museum” claiming a first use date of December 31, 1776. I’m guessing that it wasn’t offering services as a historic house and as a museum as of that first use date, December 31, 1776, nor was it a use in interstate commerce since that requirement comes from the Commerce Clause in the Constitution, which was not ratified in New Jersey until 1787. But I digress.

Prior to filing the application, the borough petitioned to cancel UFHA’s registration through the Trademark Trial & Appeal Board on what appears to be a likelihood of confusion claim and possibly a void ab initio claim regarding UFHA’s right to register the mark, although not plead as such.

Apparently UFHA leased the Solitude House for High Bridge (the first one up there) and operated it as a museum, but their leasing deal ended in 2012 and an agreement to renew was not reached. If the lease agreement did not address ownership rights in any trademarks related to the property, generally the tenant would have all rights in a mark that they created and indicated the tenant as the source of the services. So there’s a tip here to make sure that even lease agreements properly establish ownership of trademark rights.

Back to the Facebook page, UFHA posted the following:


“There has not been a Solitude House Museum before or since” – that language implies that they have abandoned the trademark without intention to resume use, which would result in cancellation of the mark.

So, what can you take away from the Solitude House trademark issue? If you are working on a lease where naming rights of a property may ever be an issue, or there’s a name already associated with the property, you should consider adding trademark language to the lease agreement providing for which party would own the trademark. If you’re not working on a lease, this issue might give you some pause about doing a clearance search with an attorney before using a mark. And at the very least the Solitude House might make you consider searching by address and writing down your directions so there’s no chance of “re-routing” you to the wrong place.

Categories: Trademark Blogs

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

TTABLog - Fri, 09/19/2014 - 03:58
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 or services, without more. Well, your would-be honor, try your skills on these five recent 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 Special Fruit NV, Serial No. 79112203 (September 17, 2014) [not precedential]. [Refusal to register BERRY FRESH & Design (shown below) for "fresh fruits and vegetables" [BERRY FRESH disclaimed] in view of three marks registered on the Supplemental Register: BERRY FRESH for "independent sales representatives in the field of assorted fresh berries specifically, fresh blueberries, blackberries, raspberries and strawberries" [BERRY disclaimed]; BERRY FRESH PRODUCE for "fresh fruits; fruits, namely, assorted fresh berries specifically, fresh blueberries, blackberries, raspberries and strawberries" [BERRY PRODUCE disclaimed]; and Berry Fresh, in standard character form, for "fresh fruits; fruits, namely, assorted fresh berries, specifically, fresh blueberries, blackberries, raspberries and strawberries" [BERRY disclaimed]].

In re Progressive Foam Technologies, Inc., Serial No. 85738691 (September 17, 2014) [not precedential]. [Refusal to register the mark PROGRESSIVE FOAM & Design for "construction materials, namely, exterior building insulation made of polystyrene, expanded polystyrene, or other foamed thermoplastic, shaped to conform with other building products such as siding, roofing, decking, or fencing" [FOAM disclaimed], in view of the registered mark PROGRESSIVE INSULATION & WINDOWS & Design for "home energy assessments leading to and including installation of advanced insulation systems to create a more energy efficient home thermal envelope" [INSULATION AND WINDOWS disclaimed]].

In re Universal Entertainment Corp., Serial No. 85872412 (September 17, 2014) [not precedential]. [Refusal to register PROSPEROUS YEAR for "slot machines and replacement parts therefor, video slot machines and replacement parts therefor; gaming machines and replacement parts therefor; gaming machines with liquid crystal displays and replacement parts therefor; mechanical reel type slot machines with liquid crystal displays and replacement parts therefor" in view of the registered mark PROSPEROUS LIFE for "gaming machines"].

In re United Fibers LLC, Serial No. 85721638 (September 16, 2014) [not precedential].[Refusal to register GREEN DEPOT & Design (shown first below) for "recycling" [GREEN disclaimed], in view of the registered mark GREENDEPOT & Design (second below) for "on-line retail store services featuring home improvement products; retail stores featuring home improvement products"].

In re East Meadow Corp. d/b/a Uncle Guiseppe’s Marketplace, Serial No. 85540708 (September 16, 2014) [not precedential]. [Refusal to register the mark UNCLE GIUSEPPE'S MARKETPLACE & Design (shown first below) for "ready-made sauces" [MARKETPLACE disclaimed], in view of the registered mark GIUSSEPPE'S, in stylized form, for "pre[-]prepared prepackaged frozen entrees consisting primarily of pasta and sauces for sale in food stores"].

Read comments and post your comment here.

TTABlog Note: Hey Joe, see any WYHA's here?

Text Copyright John L. Welch 2014.
Categories: Trademark Blogs

Precedential No. 36: TTAB Reverses Refusal of Service Mark Specimen for Financial Services

TTABLog - Thu, 09/18/2014 - 08:02
The Board has re-designated as precedential its ruling in In re McGowan Publishing Company, Inc.,, wherein the Board reversed a refusal to register the mark CASHFLOW UNITS for "investment products, namely, wealth management and performance tracking, and providing financial advisory and financial portfolio management services." The Examining Attorney had deemed the specimen web page (shown below) unacceptable because it did not display the mark in association with the recited services. The Board, however, found that links labeled with the mark, for documents used in the rendering of the services, supplied the required association. In re McGowan Publishing Company, Inc., 111 USPQ2d 2000 (TTAB 2013) [precedential].

According to the Trademark Examining Attorney, the specimen "contains only general information about The McGowan Group Asset Management Company (the Applicant), and makes no specific reference to ‘wealth management and performance tracking’ or the provision of ‘financial advisory and financial portfolio management services.'" Applicant argued that the web page "features links to two of Applicant's specific investment products ... offered clearly under the mark CASHFLOW UNITS." 

The question for the Board was "whether consumers will associate CASHFLOW UNITS with such services." The Board noted that there was, "unfortunately," no evidence regarding the reaction of consumers to applicant's use of the mark.

Reviewing the specimen web page, the Board observed that the disclosures at the bottom of the page inform the reader that applicant is a "federally Registered Investment Advisory Firm," which means that it is registered with the SEC as an entity that, according to several financial dictionaries, "for compensation, engages in the business of advising others, either directly or through publications or writings, as to the value of securities or as to the advisability of investing in, purchasing or selling securities." The wording "McGowan Group Asset Management" at the top of the page "informs the view that CASHFLOW UNITS are part of an asset management service."

Immediately below CASFLOW UNITS appear (1) the "MGAM Wrap Program Assets Discretionary Advisory Agreement" and (2) the "MGAM RIA Disclosure." The agreement is applicant's contract with the investor, and the disclosure notifies the client that applicant has complied with conflict of interest rules. "In other words," said the Board, "these are documents used by applicant in rendering its services."

The Examining Attorney contended that the specimen web page displays only links to the two documents, not the documents themselves. Moreover, the agreement is merely a document used in the normal course of business, and providing such an agreement is not a service. The document is not disseminated to the public as advertising, and it shows only potential use (when the blanks are filled in). In short, it is not an "investment product."

The Board, however, concluded that "a client or prospective client of applicant's investment advisory services would view the mark on the web page in close proximity to links for documents used in rendering those services." The link to the agreement "functions as an offer to enter into an arrangement for the provision of 'Advisory' services relating to the client's assets. Thus the links to these documents creates an association between the mark and the offered services activity."

The Board therefore reversed the refusal to register.

Read comments and post your comment here;

TTABlog comment:  Doesn't make much sense to me. Looking at the specimen, I have no idea what CASHFLOW UNITS is supposed to refer to. There is no indication that the mark CASHFLOW UNITS appears on the contract or on the disclosure document. The service mark for the advisory services seems to me to be McGowanGroup or maybe "MGAM." CASHFLOW UNITS seems to refer to some particular fund that the company is peddling. Note the "TM" next to CASHFLOW UNITS, not "SM."

BTW: take a gander at the USPTO's new Examination Guide for Service Mark specimens (here). This case appears as example no. 17. Perhaps when the Examination Guide was promulgated, the Board decided to go back and make this decision precedential.

Text Copyright John L. Welch 2014.
Categories: Trademark Blogs

TTAB Will Hear Final Argument in ASHCON Opposition In Boston, October 3rd

TTABLog - Thu, 09/18/2014 - 07:34
As part of the "TTAB and PTAB Come to Boston" program in Boston on October 3rd [here], the Board will hear final arguments in Diamond Power International v. Clyde Bergemann, Inc., Opposition No. 91201996. [Pleadings and other filings downloadable here.] The TTAB panel will consist of Chief Judge Gerard Rogers, Judge Susan Hightower and Judge Linda Kuczma.

Applicant Bergemann seeks to register the mark ASHCON for "consulting services in the field of custom manufacturing of industrial equipment for power plants, mainly bottom ash dewatering systems," in class 40, and for "consulting services in the field of design and development of industrial equipment for power plants, mainly bottom ash dewatering systems," in class 42. Opposer Diamond Power claims a likelihood of confusion under Section 2(d) with its registered ASH and ASH-formative marks for ash-conveying equipment. Opposer also claims that ASHCON is merely descriptive of applicant's services under Section 2(e)(1).

Read comments and post your comment here;

Text Copyright John L. Welch 2014.
Categories: Trademark Blogs

Honey Badger Don’t Care, but the Owner of the Trademark Rights Do Care.

Duets Blog - Thu, 09/18/2014 - 06:32

We truly live in an amazing time, where nearly any person with access to a computer can obtain a nearly infinite amount of knowledge, create and distribute ideas and works of art to the entire world. Also, there are lots of cat videos and angry rants.

YouTube is perhaps the most well-known and effective means of sharing content with the world. According to YouTube, there are more than 1 billion unique monthly users watching over 6 billion hours of video per month. Every minute, 100 hours are uploaded to YouTube.

In spite of the sheer size of competition, some videos just have that special something that causes them to go viral. Examples include David After Dentist, Charlie Bit My Finger!, and of course, the Honey Badger (slightly NSFW due to some occasional mild language):

In case you’ve never seen the video (and your employer blocks access to YouTube – smart for productivity, bad for morale…), the video consists of a clip from a nature documentary regarding the honey badger. The appeal of the video is the narrator, “Randall,” a character who is sarcastic, snarky, excitable  – basically, the complete opposite of what you would expect from a nature documentary narrator: calm demeanor, scientific knowledge, and a British accent.

Although the honey badger don’t care about a lot of things, be they bee stings or cobra venom, the creator of the video (Christopher Gordon) does care about at least one thing: trademark infringement. Gordon saw the success of the video and wisely sought to monetize it. He created an online store and registered his HONEY BADGER DON’T CARE mark in connection with clothing, audio books and computer game software, mugs, ornaments and plush dolls, and has a pending application to register the mark in connection with stickers and book series publications.

As with most internet sensations, Gordon isn’t the only person attempting to cash in on the popularity of the video. It’s easy to print a catch phrase on a search and, as a result, a lot of internet companies have been selling “Honey Badger Don’t Care” shirts and products. Gordon has relied on his trademark registrations to send out cease and desist letters and, just recently, filed a lawsuit against online retailers LOL Shirts and Tanga. Although the shirts are still viewable, the sites appear to have taken down the option to sell them.

Although Gordon appears to have had some success in enforcing his rights based upon the goods identified in his registrations, he may also be discovering the limits of his own rights. Gordon sent a cease and desist letter to the company Accoutrements, who sells the Honey Badger breath mints shown below:


Accoutrements responded late last month by filing a declaratory judgment action. Regardless of how many times viewers watch his YouTube videos, trademark rights are still based upon use. Trademark law recognizes that third-parties can use even identical trademarks so long as the goods or services are sufficiently unrelated (think Delta airlines, faucets, and dental insurance). In fact, a handful of third-parties were able to obtain federal registrations for HONEY BADGER-based trademarks for other goods, including: HONEY BADGER for wine and other alcoholic beverages (except beer), HONEY BADGER RACING for decals, HONEYBADGER for signal jammers, and HONEY BADGER for barbecue sauces. Sadly though, the lawyer who applied to register HONEY BADGER AT LAW abandoned his application to register the mark in connection with legal services.

Gordon no doubt feels like he “owns” the Honey Badger Don’t Care catchphrase because these companies and individuals are exploiting the popularity his ‘honey badger’ video. It seems likely that the only reason these companies have chosen the name “honey badger” is because of the widespread success of Gordon’s video. The video vaulted the honey badger into our common consciousness. However, just because a use of a mark may cause consumers to remember another mark used on different goods does not create a likelihood of confusion for trademark infringement purposes. Consequently, Gordon may have success with his lawsuit against the clothing retailers, but he may have more difficulty in the declaratory judgment action with the mint company. To be completely honest , I’m not sure either company is making enough money off these mints and t-shirts to justify anything other than an out-of-court settlement of the claims.

Before selling any products, business owners should conduct a basic knockout clearance search – even if they do not plan to register the mark. This is especially true if they have picked a name or mark based upon a popular internet video or meme. The honey badger lawsuits show that there is a market for licensed goods based at least in-part on popular internet videos. And where there’s a way to make money, there’s a chance that someone already has registered or common law trademark rights. It’s better to conduct some clearance and know any potential concerns before you invest time and money into a product. The last thing you want coming after you is a honey badger, especially a honey badger at law.

Categories: Trademark Blogs

Is The Development Dimension Of WIPO Incompatible With Its Role Of IP Protection?

IP Watch - Thu, 09/18/2014 - 04:43
The World Intellectual Property Organization is a successful United Nations agency if success is measured by its generated income and the number of international registrations of intellectual property titles. However, in its role as a norm-setting United Nations agency, the organisation has been struggling for the past year as member countries have quite a different view on its core objectives.
Categories: Trademark Blogs

Top Officials Proposed For WIPO; Tied To Director’s Term

IP Watch - Wed, 09/17/2014 - 11:46
After months of consideration and an application process that attracted 360 applicants, the World Intellectual Property Organization secretariat has made public its proposed names for the top posts at the UN agency for the next six years. Only four out of eight names are newcomers, and all will be tied to the term of service […]
Categories: Trademark Blogs

Silicon Valley x Fashion District = Blurred Lines

Duets Blog - Wed, 09/17/2014 - 06:21

Growing up in the 80s, it’s amazing how both fashion and technology have evolved since Scrunchies and Commodore 64s – although a quite separate evolution. I can’t recall a fashionable pager (really, go try to find one), or a chic mp3 player (I had an Archos Jukebox, look at that brick). That all changed once Apple focused on form as much as function when it released the iPod.

People love fashion because it is an extension or reflection of their personality, and a part of their personal brand. People love tech gadgets because they are also extensions of themselves, allowing people to work more efficiently, connect globally, and learn about themselves and their environment by processing information more quickly. But with the exception of a case for these technological tethers that reflects our personal brand, little has been done to the devices to make these devices “fashionable.”  Sure some corners have been rounded, it might be sleek, and maybe there is a great user interface with some clever icons, but not much else reflects the user’s personality.

With the recent advent of wearable tech, naturally a new opportunity for interweaving design and technology has emerged.  Are they electronic devices or are they jewelry?

This meshing of design and technology hit the runway earlier this month at New York Fashion Week and also with Apple’s introduction of its Apple Watch product.  Several designers over the past year have announced collaborations with tech companies to make new wearable tech gizmos more fashion friendly:

  • Opening Ceremony announced a collaboration with Intel for a bracelet called the MICA (which apparently stands for “My Intelligent Communication Accessory”)
  • Diane von Furstenburg has been experimenting with designs for Google Glass frames
  • Ralph Lauren debuted a smart shirt at tennis’ US Open, held in New York during Fashion Week, which takes biometric data for athletes

For a gadget nerd like me, it’s comforting that the fashion community generally has viewed this as, well, “nerdy” and “dorky.” Good to know that geek thankfully is still not quite chic.  In light of the lucrative design patent wins from Apple and Lululemon’s aggressive assertion of its design patent rights, the fashion industry should be on notice that design patents can help protect their inventive designs against substantially similar ones from their competitors. Where some of these new wearable tech products are collaborations with tech companies, it is critical that these joint development projects have underlying agreements clearly outlining ownership rights in the wearable tech.  When I asked my Magic 8-Ball whether we would be seeing any patent cases involving fashion brands about these wearable tech devices, it said “you may rely on it, yes” and I agree.

So to our branding gurus, there’s clearly a lot of collaboration going on between fashion brands and tech companies, and campaigns to bring public awareness to that collaboration. Do you think the consumer will buy the product because of the fashion brand alone, or will they need some indicia of source of the underlying technology like the Tory Burch / FitBit collaboration? Or, from the other perspective, does wearable tech need a fashion brand with a following to help sell it?

Are you buying wearable tech?


Categories: Trademark Blogs

Food Invention Reality Show

TM Blog of TM Lawyer's Mind - Tue, 09/16/2014 - 19:45
Eyeworks TV, the producers behind Extreme Weight Loss on ABC and Bar Rescue on Spike, THIS WEEK ONLY, is holding an audition in Redondo Beach for entrepreneurs with food related inventions for a new show. The show is just like Shark Tank on ABC, but for food inventions.  If interested contact:

Kelly Klecha
Casting Assistant
Eyeworks TV

Los Angeles Trademark Lawyer
Categories: Trademark Blogs

Hershey Files Trademark Lawsuit against Candy Importer

Intellectual Property News - Tue, 09/16/2014 - 17:58

IPNews® - The Hershey Company is waging a trademark war against candy importer LBB Imports LLC accusing it of infringing its trademarks for famous brand names including Reese's and Kit Kat.

Hershey has argued that LBB is violating both its trademarks and trade dress. The candy maker is asking the court to block the infringement, order LBB to destroy the products involved and pay for corrective advertising to fix the harm done to Hershey.  To continue reading, click: Hershey Files Trademark Lawsuit against Candy Importer

Categories: Trademark Blogs

For Experts, Questions Still Abound On IP And Standard-Setting

IP Watch - Tue, 09/16/2014 - 07:52
BRUSSELS – Intellectual property experts at the annual conference of the European Policy for Intellectual Property Association (EPIP) discussed a range of topics including IP rights and standard-setting. The conclusion? Many questions remain unanswered.
Categories: Trademark Blogs

Personal Brand: Beware of what Facebook is doing

Duets Blog - Tue, 09/16/2014 - 07:29

- Aaron Keller, Managing Principal, Capsule

There was a time, back in the day, when you could just “Google” yourself and that was the best way to assess the value of your personal brand. Simple quantifiable way to see how many mentions you had on Google’s interwebs (the reference is intentional). And, you could dig deeper into each link to see what others were saying about you.

Then, we entered an era of social media and the digital landscape shifted, even for the brilliant minds at Google. Managing your personal reputation now included not allowing old high school friends to upload and tag photos you believed were forgotten in albums (yes, the arcane way of storing embarrassing photos from childhood). And, while Facebook is one of the largest, you also needed to be aware of and perhaps even managing your reputation in LinkedIN, Twitter, Instagram, Vine and perhaps Pinterest (just to get started).

It has become a bit overwhelming so you question, “why should I care?” Well, unless you’re a billionaire and old enough to give a rats asterisk about your reputation in the digital universe, it matters (think owner of LA basketball team). It matters because your reputation helps get you a job, income and food on the table. It matters because you can spend decades being true to your values and then find someone has attached something false to your name. Decades of living by certain standards can be undone in a simple mention in the digital universe.

Then the small things, people and brands who sit facing backwards on your coattails and use your reputation to build their own brand. This can be as simple as a person referencing how well they know you in order to get a job with an ex-colleague of yours. And, it can apparently show up in the world of social media. Here’s a recent example brought to my attention by a gentleman (Scott Petinga) considering a class action suit against a gigantic brand in social media.

Are you sure you LIKE something? When you see someone’s name come up (see the image below) as Liking a particular brand, it may surprise you that they may NOT have actually clicked LIKE as it clearly indicates. I was first made aware of this tricky method by Facebook by Scott Petinga. So, I started to look for it and asked my wife if she found brands claiming I LIKED them, but seemed a bit odd based on her view of my reputation (Personal Brand).

Here’s the first. Cub Foods. I have nothing against Cub Foods, but our firm, helped rebrand Byerly’s, hence I haven’t found a need to LIKE Cub Foods. Certainly not a big ding on my personal brand, but it is a shady method to influence my friends with a false statement. And, it makes me wonder, how many times does my name come up as LIKING something I have not and what other brands is my name attached to in the Facebook universe?

This has led to a request, if you’re a friend of mine on FB, please tell me if you see my name attached to a brand you wouldn’t expect. Send it my way. And, I suggest you do the same in your personal network to see what Facebook is up to with this shady method.

And, if it makes you angry enough, contact Scott Petinga and get yourself on his class action lawsuit.

Thank you for reading and if your reputation is important to you, start looking into this behavior.

Categories: Trademark Blogs

‘Google’ Not A Generic Term Yet, US Court Says

IP Watch - Tue, 09/16/2014 - 06:38
Googling may be a ubiquitous fact of life, but the company behind the term still has trademark rights, a US court has found.
Categories: Trademark Blogs