Trademark Blogs

Court denies request of plaintiffs in right of publicity suit to exhume the body of Aunt Jemima

Internet Cases - 12 hours 1 min ago

The great-grandsons of Anna S. Harringon, whose image formed the basis for Aunt Jemima, sued Quaker Oats Company and others for $2 billion claiming that defendants failed to pay royalties to Harrington’s estate after her death in 1955. One of the allegations in the case is that defendants played a role in Harrington’s death. Apparently, in an effort to support those allegations, plaintiffs sought an order from the US District Court for the Northern District of Illinois (where the matter is pending) allowing them to exhume the body of their great-grandmother for evidence of this malfeasance.

The court denied the request. Apart from it being just a bizarre ask, it turns out the “evidence” upon which the defendants’ role in Aunt Jemima’s death was based on a parody article from Uncyclopedia. In denying the motion, the court found the following:

The motion is primarily based on statements purportedly made by Quaker Oats executives about the death of the woman who had been identified as “Aunt Jemima.” But the source of the information is an uncyclopedia.wikia.com article, which is a parody website of Wikipedia. Uncyclopedia proudly bills itself as “an encyclopedia full of misinformation and utter lies.” See uncyclopedia.wikia.com/wiki/Uncyclopedia:About.

The court also threatened the pro se plaintiffs: “Plaintiffs must take greater care in their submissions to the Court, or else face sanctions and, if litigation abuse continues, outright dismissal of the case.”

Hunter et al. v. PepsiCo Inc. et al., No. 1:14-cv-06011 (N.D. Ill. October 21, 2014)

BTW: Some info about Anna Harrington’s grave.

Evan Brown is an attorney in Chicago advising clients on matters dealing with technology, the internet and new media.

Categories: Trademark Blogs

Little-Known Case May Dramatically Change US Patent System

IP Watch - 12 hours 10 min ago
The patent case recently argued before the US Supreme Court is relatively unknown, and for good reason. It involves no exciting new technology. It has no controversial patent claims (e.g., covering human genes). However, Teva Pharms. USA v. Sandoz, Inc. could produce major changes in America’s patent system.
Categories: Trademark Blogs

Test Your TTAB Judge-Ability on these Four Mere Descriptiveness Appeals

TTABLog - 13 hours 10 min ago
Here are four recent appeals from mere descriptiveness refusals under Section 2(e)(1). Let's see how you do with them, keeping in mind that, by my estimation, the Board affirms more than 80% of these refusals. [Answers in first comment].


In re Starkist Co,, Serial No. 85765644 (September 23, 2014) [not precedential]. [Mere descriptiveness refusal of INTERNATIONAL SELECTS for "seafood"].


In re Internet Promise Group LLC, Serial No. 85637772 (October 9, 2014) [not precedential]. [Mere descriptiveness refusal of STEP BREATHING for "Instructing others in a specific breathing technique, specifically, instructions in successive short inhalation and holding breath steps and then exhalation to enhance life force energy in the human body as part of teaching Yoga practice"].



In re Birds Eye Foods LLC, Serial Nos. 85729804 and 85729823 (October 14, 2014) [not precedential]. [Mere descriptiveness refusal of SAVORY SKILLETS and requirement for disclaimer of SAVORY SKILLETS in the mark BIRDS EYE SAVORY SKILLETS, both for frozen entrees].


In re DM CTW, LLC, Serial No. 85746575 (October 16, 2014) [not precedential]. [Mere descriptiveness refusal of THE BEST APP TO DATE for "Downloadable software applications for mobile telecommunications devices and handheld computing devices for organizing personal relationships and dating, for providing coupons, rebates, discounts, vouchers or special offerings on goods and services from participating merchants and for receiving information on events, activities and attractions"].


Read comments and post your comment here.

TTABlog note: See any WYHAs here?

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

TRIPS Council Next Week: Tobacco, Innovation, Non-Violations, Public Health Review

IP Watch - 13 hours 12 min ago
The next meeting of the World Trade Organization Council on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is scheduled to take place on 28-29 October. In addition to the regular agenda items of the Council, two additional agenda items have been submitted by members, relating to tobacco plain packaging and innovation. The first additional agenda […]
Categories: Trademark Blogs

UPOV Meetings Conclude With New Observers; Tanzania Can Become UPOV Member

IP Watch - 14 hours 30 min ago
The international body protecting new varieties of plants concluded a week-long set of meetings with a number of decisions, among which was the re-appointment of its secretary general, and the addition of an international organisation and a farmers' organisation as observers. The national legislation on plant breeders of Zanzibar was approved, opening the way for Tanzania to become a UPOV member.
Categories: Trademark Blogs

WTO Director General Presents TRIPS As Major Tool For Trade Growth

IP Watch - Tue, 10/21/2014 - 12:36
World Trade Organization Director General Roberto Azevêdo this week hailed WTO’s intellectual property agreement, saying the past two decades show it provides a balanced multilateral foundation for the growth of trade in knowledge-rich products and services.
Categories: Trademark Blogs

I DON’T GET IT

Duets Blog - Tue, 10/21/2014 - 07:27

- Abby V. Reiner, Brand Director, Wounded Warrior Project

The more people understand the depth of meaning and enormous value a so-called “simple logo” has to a non-profit organization and the people it serves, the fewer infringements and the more money goes where we all want it to go – those served by charitable institutions.

The pinnacle for most is a “cult-like” brand – one where people are near fanatical about the brand and, fortunately, want to share it with others. These are your people who “get it.” But then, are they? Nonprofits often foster deep emotional connections with supporters due to the very nature of the organization’s mission. Sure we’re all a part of the mission, we’re all in this together. But sorry, I’m the company and rightful owner of the identity and no, you cannot use company trademarks to proudly proclaim how invested you are, emotionally or financially. So while you “get” the personal and emotional side of me, you still don’t “get” the business side of me because you’re upset, and I understand why. The sad legal reality is that sometimes the well-intentioned can do more harm than good.

I’ve seen many organizations spend an exorbitant amount of time (translation, $$$) helping people to “get it.” Trying to explain the business decisions the organization made due to the economy, target markets, weather, research, strategy, alignment, market trends, social noise – the list goes on…forever. We try to describe production schedules, shipping logistics, limited resources, the dying bee population, industry trends, weather patterns, and the timing of the Chinese New Year.

The fact is, nine times out of ten, that person won’t “get it.” Why? Because they never had the capacity to “get it” in the first place. Their mind was never open to actually learning and understanding; and their own personal biases enter the picture, clouding judgment and exacerbating pessimism even further. They heard a term like “trademark bully” and decided that must be you because your organization makes “too much” money in their minds. And everyone loves a good underdog story.

Funny enough, you were that underdog at one point. An evolution most start-ups make: “Use my logo! Promote us!” to “Use my logo only with permission! Protect the brand!” A fine line exists between wanting everyone to feel a part of the mission, raising awareness, and contributing, and protecting the logo from those who use it impermissibly to promote outside interests or, worse still, for private gain.

Focus your energy on those who do “get it.” Amplify your voice through them. This is not earth-shattering guidance but rather a reminder to continue engaging your biggest fans. By all means, try to educate those who might be open to learning the real story, but you’re betting against the “get it” odds.

Get it? Yeah, me neither.

Categories: Trademark Blogs

Ebola Vaccine Candidates Centre Of Attention; Clinical Trials, IP Negotiations Start

IP Watch - Tue, 10/21/2014 - 06:57
Today, the World Health Organization gave a press briefing to update journalists on what to expect in the near future on Ebola treatments and vaccines.
Categories: Trademark Blogs

Review of “Digital Depression: Information Technology And Economic Crisis”

IP Watch - Tue, 10/21/2014 - 06:44
Information and communication technologies (ICTs), and in particular the internet, have revolutionized and disrupted all aspects of human activity, and even behaviour. This has resulted in many academic publications and much discussion, including in intergovernmental bodies, regarding various issues, including how best to govern the internet.Dan Schiller’s book helps us to understand the background of these events, which have affected economic and political power relations, and how US policies have consistently favoured capital over labour, and have resulted in transfers of vast sums from developing countries to developed countries, writes Richard Hill.
Categories: Trademark Blogs

TTAB TEST: Are AirREX and AIRTECH Confusable for Vehicle Suspension Springs?

TTABLog - Tue, 10/21/2014 - 02:15
Turkish company Aktas opposed Taiwan's Pin Hsiu Rubber's application to register the mark AirREX in the design form shown below, for, inter alia, "air springs for vehicle suspension components for cushioning driver's seats and cabs," claiming a likelihood of confusion with its registered mark AIRTECH for "air springs for vehicle suspension and for cushioning driver's seats and cabs." The Board found the goods to be, in part, legally identical. But what about the marks? Isn't AIR a rather weak formative in this field? How do you think this came out? Aktas Hava Suspansiyon Sistemleri Sanayi Ve Ticaret AS v. Pin Hsiu Rubber Co., Ltd., Opposition No. 91204375 (September 26, 2014) [not precedential].


Applicant pointed to ten prior registration for AIR-containing marks for goods related to vehicle suspension - AIR LIFT, AIR RUNNER, AZ AIR-ZENITH, AIRCRUSE, SIMILAIR, AIRPOD, AIRPLOW, AIRHAWK, AIR FORCE, and AIR CHASSIS - but it provided no direct evidence of actual use of these marks. With that lack of proof, the Board could not conclude that the field is so crowded with AIR-formative marks that consumers would distinguish the two marks in question based on small differences in the marks. In other words, the Board could not make any conclusion as to the commercial strength of opposer's mark.

However, as to the conceptual strength of opposer's mark, the third-party registrations, along with the dictionary definition of "air," led the Board to the conclusion that the word AIR "certainly has suggestive significance with respect to both Opposer's, Applicant's, and these third-party goods, namely suspension, cushioning, and wind-protection devices." The third-party registrations "serve as a reference source (much like a dictionary) for the usual connotation of the word 'Air' with respect to the goods in this field."

Because the word "Air" has suggestive significance and the word "Tech" is also suggestive ("of the level of technology incorporated into Opposer's suspension and cushioning components"), opposer's mark is not a strong one. Moreover, "Air" cannot be considered the dominant portion of AIRTECH.

The Board found that, visually and orally, the dissimilarities in the marks outweigh the differences. More importantly, the connotations are quite different. The parties "seem to agree" that applicant's mark connotes "king of the air," or something like that, whereas AIRTECH connotes air springs employing the latest technology.

In view of the relative weakness of opposer's mark, the Board concluded that the dissimilarity of the marks was the decisive factor.

And so the Board dismissed the opposition.

Read comments and post your comment here

TTABlog note: Well, what do you think?

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

USTR’s Investigations On IP Rights Against India: Is There A Tenable Case?

IP Watch - Mon, 10/20/2014 - 06:47
On 14 October, the US Trade Representative (USTR) began the out-of-cycle review (OCR) of India’s intellectual property (IP) laws, the mandate which it gave itself in the 2014 Special 301 Report. Like several years in the past, the USTR once again included India in the Priority Watch List, but this time, India’s IP laws are being subjected to the additional scrutiny through an OCR. It is to be seen whether the OCR sets the stage for naming India as a Priority Foreign Country, viewed by the USTR as worst offender of intellectual property rights, in the next Special 301 report. USTR’s inclusion of India for the OCR was a reflection of the influence that the domestic lobbies have on the country’s engagement with its partner countries, and about USTR's consistency with World Trade Organization rules, writes Biswajit Dhar.
Categories: Trademark Blogs

Cheryl S. Goodman Appointed as TTAB Judge

TTABLog - Mon, 10/20/2014 - 04:32
The USPTO has announced the selection of Cheryl S. Goodman as an Administrative Trademark Judge at the Trademark Trial and Appeal Board:


  • Cheryl Goodman has been an Interlocutory Attorney for the TTAB for over fourteen years. Her tenure as an Interlocutory Attorney included a six-month detail with the Office of the USPTO Solicitor, yielding Ms. Goodman additional insight into the USPTO’s interaction with the Court of Appeals for the Federal Circuit and the U.S. District Courts, which handle appeals seeking review of TTAB decisions. Before joining the TTAB as an Interlocutory Attorney, Ms. Goodman served the USPTO for more than five years as an Attorney-Advisor in the USPTO’s Trademark Examining Operation. During her tenure as an Examining Attorney, Ms. Goodman completed a work detail as a Staff Attorney at the Department of Commerce, assisting the Department in its preparation of a voluminous response to a Freedom of Information Act request on the Department’s trade missions.

    Ms. Goodman began her lifelong commitment to public service as a Trial Attorney in the Department of the Treasury’s Office of Thrift Supervision. A Magna Cum Laude graduate of the Florida State College of Law, Ms. Goodman earned her bachelor’s degree, Cum Laude, from the University of Illinois.

The complete roster of TTAB judges, now numbering 23, may be found here.
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Categories: Trademark Blogs

Test Your TTAB Judge-Ability On These Four Section 2(d) Appeals

TTABLog - Mon, 10/20/2014 - 02:16
I once heard a TTAB judge state that the outcomes of most Section 2(d) likelihood of confusion cases can be predicted just by looking at the marks and the identified goods/services, without more. Try your adjudicatory skills on these four appeals, keeping in mind that, by my estimate, about 85% of Section 2(d) refusals are affirmed by the Board.


In re Holland & Hart LLP, Serial No. 85709248 (October 16, 2014) [not precedential]. [Refusal to register BEYOND THE OBVIOUS for legal services, in view of the registered mark THINKING BEYOND THE OBVIOUS for business consultation services.


In re Joy Industrial Co., Ltd., Serial No. 85677182 (October 16, 2014) [not precedential]. [Refusal to register N NOVATEK & Design for bicycles and bicycle and motorcycle parts and accessories, in view of the registered mark NOVATECK for "tires, pneumatic, semi-pneumatic and solid tires for vehicle wheels, wheels for vehicles, inner tubes, wheel rims, and structural parts for all the aforesaid goods"].


In re Cardeologie, Inc., Serial No. 85826725 (October 16, 2014) [not precedential]. [Refusal to register CARDEOLOGIE for greeting cards, invitation cards, notecards, postcards, etc., and for related retail store services, in view of the registered mark CARDOLOGISTS for, inter alia, greeting cards and invitation cards]. 


In re The Rock Creek Group, LP, Serial No. 85595470 (October 6, 2014) [not precedential]. [Refusal to register THE ROCK CREEK GROUP for, inter alia, "individualized and personalized financial services provided to institutional investors, namely, sovereign wealth funds, state and local pension plans, multinational corporations, foundations and endowments," in view of the registered marks ROCK CREEK PROPERTY GROUP, LLC, in standard character and design form, for "real estate investment, management, and brokerage services" [PROPERTY GROUP, LLC disclaimed].


Read comments and post your comment here.

TTABlog Big Hint: They all came out the same way. See any WYHA's here?

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

Gibson Guitar Facing 15 Trademark Opposers

Duets Blog - Mon, 10/20/2014 - 00:15

A brand owner’s non-traditional trademark application will sometimes gain the critical attention of multiple direct competitors. Gibson Guitar’s unlucky number is apparently fifteen.

Last Thursday, Gibson’s guitar configuration application shown to the right and below was opposed by far more competitors than it has strings on the above ebony Gibson ES-339 Studio Electric Guitar:

  • U.S. Music Corporation
  • ESP Shibuya Enterprises, Inc.
  • Cordoba Music Group, Inc.
  • Collings Guitars, Inc.
  • Ed Roman Enterprises, Inc.
  • Armadillo Enterprises, Inc.
  • Schecter Guitar Research, Inc.
  • Westheimer Corporation
  • Peavey Electronics Corporation
  • Warwick GmbH & Co. Music Equipment KG
  • James Trussart Guitars, Inc.
  • JS Technologies, Inc.
  • Premier Builders Guild, LLC
  • Sadowsky Guitars, Ltd.
  • John Hornby Skewes & Co., Ltd.

The opposers contend that the shape of the guitar is either generic or lacking in distinctiveness as a result of the “rampant” use of identical or substantially similar designs by a multitude of third parties over the past half a century. They name names, decade by decade.

So, stay tuned as we follow this interesting trademark chord, anxiously awaiting to hear whether Gibson is able to play something more than a classic blues riff, perhaps on something like this 15 string bad boy:

It appears that the opposers have spent some time doing their homework; if even half of what they say can be proven, they’ll be strumming Gibson’s pain with their fingers, and killing the trademark application (not so) softly.

UPDATE: It appears we have officially reached the point where I can’t keep track of all our content, I’m reminded that Dan Kelly had a great post from 2010 dealing with the guitar head issue, enjoy:

http://www.duetsblog.com/2010/11/articles/trademarks/get-your-paper-jamz-guitars-while-you-can/

Categories: Trademark Blogs

On Summary Judgment, TTAB Finds NAUGHTY GIRL Not Merely Descriptive of Wine

TTABLog - Sun, 10/19/2014 - 06:57
The Board granted Respondent's motion for summary judgment, finding the mark NAUGHTY GIRL to be not merely descriptive of "fortified wines; wines and fortified wines." [sic!]. Petitioner contended that "drinking respondent’s wine, which has a slightly higher alcohol content than some wines, will make women 'naughty.'" Judges Seeherman, Taylor, and Ritchie were not swayed. Alvi's Drift Wine International v. von Stiehl Winery, Cancellation No. 92058100 (September 12, 2014) [not precedential].


Respondent asserted that NAUGHTY GIRL does not immediately convey any knowledge about the ingredients, qualities, functions, features or characteristics of wine. Its vice president averred that the mark was chosen because it is "playful, humorous and imaginative,” not because it will actually make a person a "naughty girl.'" Dictionary definitions of "naughty" and "girl" made no reference to wine, and a LEXIS/NEXIS search failed to disclose a single article using "naughty girl" to describe an ingredient, quality, characteristic, function, feature, purpose or use of wine.

Petitioner argued that the evidence, and particularly respondent’s claim that "the effect of the NAUGHTY GIRL wine might be fun and excitement," created a genuine dispute of material fact that precludes the entry of summary judgment. According to petitioner, respondent's intent in choosing the mark NAUGHTY GIRL was to describe the wine's effect: "after someone drinks a few glasses of high alcohol wine, it is a fine line between 'fun and excitement' and 'act[ing] like a naughty girl.' ... Registrant is also navigating a slippery slope between 'playful' and 'act[ing]' like a “naughty girl.'"

Petitioner submitted pages from a blog which included the following item: "When I saw this wine at the Wisconsin Cheese Chalet, the place I bought my chocolate cheese, I knew I had to try it. It was calling the party girl in me because they had a whole party girl display going by this wine. Here are the bottle toppers that started the whole 'naughty girl' craze." Another entry, entitled “boob wine stoppers," included the same photo as the first entry, and stated: "These are crazy boob party girl wine stoppers...they made me buy Naughty Girl wine."


The Board found the mark to be at most suggestive of the goods. Petitioner's evidence showed "only that one blogger appreciates respondent’s product, not that there is anything about the term that is descriptive."

Moreover, even if one could conclude from petitioner’s evidence that some altered state of behavior may follow ingesting the goods, there is no evidence to show that the term NAUGHTY GIRL or its constituent words, conveys any information about an ingredient, quality, characteristic, function, feature, purpose or use of wine. Rather, a multi-stage thought process would be necessary: 1) respondent’s wine has a higher alcohol content; 2) drinking fortified wine may make one inebriated; 3) inebriated people act inappropriately; 4) people who act inappropriately may be considered naughty; 5) NAUGHTY GIRL describes the result on the drinker of using the wine. Even if one were to follow that thought process, because it obviously takes a multi-stage reasoning process, the mark is not merely descriptive but is at most suggestive.
In short, petitioner failed to rebut respondent's evidence, and so the Board granted the motion for summary judgment.

Read comments and post your comment here;

TTABlog note:  Is this a WYHP? What about that label?

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

TTAB Reverses Section 2(b) Refusal of WORLD LITERACY DAY With Flags

TTABLog - Sun, 10/19/2014 - 06:49
In a rare Section 2(b) decision, the Board reversed a refusal to register the mark shown below, for various goods and services, finding that the mark does not consist of or comprise the flags of the United States or foreign nations. "[T]he flags are not being displayed as flags, but rather are incorporated into the design as torsos of individuals," signifying "the international aspect of Applicant's goods and services," said the Board. In re 3P Learning Pty Ltd., Serial No. 85641327 (as amended, September 30, 2014) [not precedential].


Section 2(b) of the Trademark Act, in pertinent part, prohibits registration of a mark that "[c]onsists of or comprises the flag or coat of arms or other insignia of the United States ... or of any foreign nation, or any simulation thereof." The examining attorney maintained that the flags in applicant's mark "remain in their usual rectangular shape with the same proportions and designs of their countries [sic] usual flags." She pointed out that the flags are not highly stylized or changed, and contended that even in black and white they are readily recognizable.

Paris Convention: Applicant argued that its mark has been registered in two Paris Convention countries that, "like the United States, prohibit marks containing flags of member countries," and therefore it should be allowed to register here. The Board pointed out, however, that the Paris Convention, and particularly Article 6ter, provides a "baseline for protection, but it does not impose a cap on how restrictive a country may be in prohibiting registration of symbols, including flags."

"[T]he Paris Convention is essentially a treaty between the various member countries by which each member country accords to citizens of the other contracting countries the same trademark and other rights accorded to its own citizens by its domestic law. The underlying principle is that foreign nationals should be given the same treatment in each of the member countries as if they were citizens of that country. The Paris Convention is not premised upon the idea that trademark laws of each member nation shall be given extraterritorial application, but on exactly the converse principle that each nation’s law shall only have territorial application.” International Finance Corp. v. Bravo Company, 64 USPQ2d at 1601-02."
In short, "how others jurisdictions apply the Paris Convention Article 6ter under their domestic laws, in any particular case, is not instructive."

2(b) or not 2(b)?:  The Board acknowledged that the flags in applicant's mark are not "stylized in such a manner to blur the flag design." But use of the flags as the torsos of individuals "is not a traditional flag design."

In assessing a mark in view of the Section 2(b) prohibition, the Board must consider "the commercial reaction that it imports to viewers." Although generally recognizable, the flags in the applied-for mark "do not have the commercial impression of national flags but rather as designations of individuals from various nations."

The Board distinguished the applied-for mark from the example provided by the examining attorney (below), in which the flag is attached to a guitar that functions as a flag pole. Here, the flags are not being displayed as flags but instead appear as torsos of individuals, signifying the international nature of applicant's goods and services.


And so the Board reversed the refusal.

Read comments and post your comment here;

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

TTAB Finds ARCATA Not Primarily Geographically Deceptively Misdescriptive of Wine

TTABLog - Sun, 10/19/2014 - 04:51
The Board reversed a Section 2(e)(3) refusal of ARCATA for wine, finding the mark not primarily geographically deceptively midescriptive of the goods. The evidence established that Arcata is a city in California that is neither obscure nor remote, and is the locus of several wineries. The question was whether "a consumer's misimpression that Applicant's goods originate in Arcata would be a material factor in his or her decision to purchase the goods." In re D’Andrea Family Limited Partnership, Serial No. 85834204 (October 15, 2014) [not precedential].


A mark is primarily geographically deceptively misdescriptive if:

(1) the primary significance of the mark is a generally known geographic location;

(2) the consuming public is likely to believe the place identified indicates the origin of the goods, when in fact the goods do not come from that place; and

(3) the misrepresentation would be a material factor in a consumer's decision to purchase the goods.
Here, the key issue was the third one: materiality. In order to establish materiality, the USPTO must show that "a substantial portion of the relevant consumers would be materially influenced in the decision to purchase the product or service by the geographic meaning of the mark."

Reviewing relevant precedents, the Board considered whether the PTO has shown "that Arcata is 'noted for' wine; that wine is a 'principal product' of Arcata; that wine is a product 'traditionally originating' in Arcada; or that for, any other reason, a substantial portion of customers for wine would be materially influenced in the decision to purchase wine by a misrepresentation that the goods originate in Arcata."

Arcata is a city of 16,000 persons, located in Humboldt County in Northwestern California. It is a college town, the home of Humboldt State University. For many years, timber dominated the economy; today a cannabis economy employs many in the area.

The Examining Attorney contended that Humboldt County is known for its distinctive wine, and that the characteristics of Humboldt County wine would be attributed to wines from Arcata. The Board observed, however, that the evidence did not support the Examining Attorney's argument. Humboldt County is not known for its wine; at most it has one viticultural area where a few dozen wineries are struggling for recognition. The three wineries located in Arcata obtain their grapes from other places. Customers would therefore not be induced to purchase applicant's wine in the belief that it was made with grapes grown in Arcata.

The Board declined to decide whether the name "Humboldt" would induce consumers to purchase wine. But the fact that Arcata is located in Humboldt County "is insufficient to persuade us that the name ARCATA would induce customers to purchase wine."

Having carefully reviewed the record, we see no indication that Arcata is "noted for" wine, that wine is a "principal product" of Arcata, or that wine is a product that customers perceive as “traditionally originating” in Arcata. Arcata does not appear to be a suitable place for growing wine grapes. Although there are three wineries located in Arcata, they acknowledge to the market (or the marketplace takes note) that their wine is made from grapes that are grown elsewhere. Although Arcata is located in Humboldt County, a place with a developing viticultural industry, Arcata itself is known as a university town.
And so the Board reversed the refusal.

Read comments and post your comment here

TTABlog comment: For a through discussion of Section 2(e)(3), see Anne Gilson LaLonde's article entitle "You Are Not Going to Believe This! Deception, Misdescription and Materiality in Trademark Law," 102 TMR 883 (May-June 2012) [pdf here].

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

Amy, Whatcha Wanna Do (About this TM)?

Duets Blog - Fri, 10/17/2014 - 11:18

As we start to think about welcoming in the weekend, why don’t we all hum this Pure Prairie League tune, while viewing this image and reading this very brief blog post:

As this image (that I snapped this morning) shows, the skyway in downtown Minneapolis is sporting a relatively new snack shop called Amy’s. I’m not sure whether it is related to this one, only a block away. The branding and signage appears pretty different, but who knows?

I’m also not sure whether either of them are related to the pair of Amy’s that have suspended their present dispute at the TTAB of the USPTO, in order to have the federal district court in Austin, Texas decide not only the right to register, but the right to use. Sound familiar?

Anyway, within the last several days, the federal court in Austin, Texas, ruled that a trial will be necessary to decide the disputed issues of fact regarding whether likelihood of confusion exists as between the different Amy’s.

So, it’s probably fair to say, the dispute will be going “for a while, maybe longer.”

If my name is Amy, and I’m wanting to start a small business, and I’m seeing this trademark mess, I’m falling out of love pretty quickly with my personal name as my business name!

If your name is Amy, what you wanna do?

Categories: Trademark Blogs

The TPP’s New Plant-Related Intellectual Property Provisions

IP Watch - Fri, 10/17/2014 - 11:06
The newly-released Trans-Pacific Partnership (TPP) intellectual property (IP) chapter would help seed conglomerates like Monsanto prevent farmers from saving and using seeds that contain patented plant materials, even when such use is for their own personal consumption. The TPP language would also prevent breeders from using plants seeds that contain patented plant materials to research and develop new varieties. Most plant variety protection (PVP) systems allow farmers to save and reuse seeds (for noncommercial purposes) and permit breeders to use protected plant varieties to research and develop new varieties. In contrast, patents on plant-related inventions, as outlined in the TPP, may have few exceptions. This new text constitutes a huge step in the wrong direction, changing the plant IP regimes of many of the negotiating countries to the detriment of their populations, writes Public Citizen.
Categories: Trademark Blogs

Test Your TTAB Judge-Ability: Is BLACK BELT for Ammunition Confusable with BLACK BELT for Pepper Spray?

TTABLog - Fri, 10/17/2014 - 10:24
The USPTO refused registration of the mark BLACK BELT for ammunition, finding a likelihood of confusion with the identical mark registered for pepper spray. Are the goods related for Section 2(d) purposes? Where do you think the examining attorney looked for evidence of relatedness? How do you think this came out? In re RA Brands, L.L.C., Serial No. 85721641 (September 23, 2014) [not precedential].


The Board first addressed a procedural issue: applicant included with its brief a substantial amount of evidence not previously submitted. The evidence consisted of webpages corresponding to excerpts that the examining attorney had made of record with his denial of applicant's request for reconsideration, after the appeal had been filed. Although evidence first submitted with an appellant's brief is usually rejected, the Board found applicant's expanded excerpts to be admissible, since "the Examining Attorney had the opportunity to consider the entire websites from which he submitted certain webpages, [and] there is no unfair surprise to him in our considering Applicant's evidence." Indeed, the Board observed, it would be unfair to applicant not to consider this evidence.

As to the marks, the Board found that BLACK BELT is not a strong mark because it is suggestive: "it conveys the idea of being able to defend oneself or being good at self-defense." [Hmmm, not very suggestive of ammunition or pepper spray in my book - ed.].

There was substantial evidence that the trade channels for the goods are the same: for example, the websites of Wal-Mart, Dick's Sporting Goods, and various firearm-oriented outlets offer both types of products.


As to the similarity of the goods, however, the evidence was weak. The examining attorney submitted a large number of third-party registrations in an attempt to show that the registrants had adopted a single mark for both ammunition and pepper spray. However, only one company (with several registrations) adopted a single mark for both types of goods. "The fact that one company has registered the same mark for both ammunition and pepper spray is insufficient to show that ammunition and pepper spray may emanate from a single source."

The examining attorney also argued that the goods are related because they are both used for self-defense and are complementary. The Board pointed out, however, that "simply because a term can be found to generally describe both goods does not necessarily make them related." [But it was enough to make the mark suggestive? - ed.]

The only evidence (a registration) that might show the goods to be complementary involved products for police and security personnel, and they would be sophisticated purchasers presumably familiar with the practices in the trade and likely to know that companies do not make both ammunition and pepper spray.

Therefore, despite the identity of the marks and channels of trade, the Board found that the PTO had failed to meet its burden of proof, and so it reversed the refusal.

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TTABlog note:  To me, black belt suggests black shoes.

Text Copyright John L. Welch 2014.
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