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Hot Topics in Trademark Law – Part 1
 

Hot Topics in Trademark Law – Part 1

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  • Most case names presented on the slides have been truncated for brevity Note brief digression into historical fraud issues to put current cases in context
  • The Trademark Law Revision Act of 1989 revised the Lanham Act. Before 1989, the US was one of three countries that did not permit Intent to Use trademark applications. All US Applicants were required to swear that they had made use of the mark on the goods (or with the services) in interstate commerce, and to submit a specimen of such use. Trademark Applicants would file a new trademark application, slap a label on an existing product and ship a case across state lines to a friendly retailer. This was sufficient for filing and for a Section 8 Affidavit for renewal every 20 years, the prior registration term. Because of the definition of use, this type of activity was not fraud. Many companies had very elaborate and sophisticated programs for banking unused trademark registrations.
  • Applicant admitted that its description of goods was in error but asserted the error was an oversight. Argument was simple: Applicants would otherwise have no incentive to tell the truth to the PTO because if they get caught, they can delete goods that were never used and end up with what they were entitled to with no penalty for their actions. The TTAB observed that, in almost all cases, a party caught making a false statement will argue that there was no “intent” to defraud the PTO. (Registrant) will not now be heard to deny that it did not read what it had signed.
  • The Board reasoned that a multi-class registration is like a series of one-class registrations
  • The TTAB canceled Bose’s mark in its entirety
  • Also note that the CAFC relied on precedence that predates the 1988 revisions to the Lanham Act that revised the definition of use in commerce. Is it intellectually honest for the CAFC to ignore the distinction in the definition of use in commerce and use case law and standards enunciated on what constitutes use or misrepresentation of use in an era in which “token use” was the accepted norm? Torres v. Cantine Torresella S.r.l. , 1 USPQ2d 1483 (Fed. Cir. 1986). The TTAB in Medinol relied on the CAFC holding in Torres to justify a “should have known” standard. In Torres , Applicant’s registered mark was LAS TORRES below a design depicting three castle-like towers. During the renewal timeframe, Applicant dropped LAS and altered the design of the three towers. The altered mark was in use for 5 years at the time of renewal. Applicant admitted the alteration of the mark in an unsworn statement in opposition to the motion for summary judgment. In addition, Applicant was not using the mark on all the listed goods at the time of renewal. Applicant did not consider the change material and did not believe that the filing of the renewal application was fraud. This was rejected due to the requirement for a specimen showing current use. “ The decision whether the current usage is not materially different from the mark as registered despite the change must rest with the Board, not the trademark owner” because it is the practice of the PTO to allow renewal of a somewhat different mark so long as the difference(s) are not material. Compare with Bose where the CAFC rejected the PTO’s argument that Bose’s submission was made with reckless disregard for the truth satisfies the intent to deceive requirement because no court had interpreted “use in commerce” to exclude the repairing and shipping of repaired goods.
  • In this Section 2(d), 2(e)(1) and dilution-based opposition, Opposer moved for summary judgment on the ground of fraud, claiming that Applicant had never used the applied-for mark ENERGY BRIDGE for various services recited in the subject use-based application. Applicant admitted that it had never used the mark for one of the listed services, the transmission of oil, but disputed the lack-of-use charge as to other services. The Board applied the CAFC's fraud standard set out in In re Bose , 91 USPQ2d 1938 (Fed. Cir. 2009), in denying the motion because there existed genuine issues of material fact regarding whether Applicant "knowingly made this representation of use with the intent to deceive the USPTO." Applicant characterized "the statement in its application that it provided 'transmission of oil' as 'an inadvertent, honest mistake,'" and maintained that its subsequent amendment of its recitation of services [after the opposition was filed] "corrected its error in good faith." [Note: these assertions made by Applicant appear in its opposition brief, without any citation to supporting testimony or affidavit evidence.]. That was enough for the Board: Based on the record before us, and applying the standard set forth in In re Bose , we conclude that opposer has failed to meet its burden of establishing that there is no genuine issue that Applicant had the intent to deceive the USPTO when it stated in its application that it was using its ENERGY BRIDGE mark for “transmission of oil” as of the filing date of the application. At a minimum, whether Applicant knowingly made this representation of use with the intent to deceive the USPTO remains a genuine issue of fact to be determined at trial.
  • The counterclaim alleges that opposer filed a registration renewal declaration asserting continued use with all the existing goods but, based on information and belief, at the time the declaration was filed, Applicant was no longer selling some of the goods listed in the registration. The TTAB stated that "pleadings of fraud made 'on information and belief' where there is no separate indication that the pleader has actual knowledge of the facts supporting a claim of fraud also are insufficient." TTAB cited circa 1980 case law stating “There is no fraud if a false misrepresentation is occasioned by an honest misunderstanding or inadvertence without a willful intent to deceive ”
  • So the question is, in the fraud context, what kind of facts must be plead to support a statement made on "information and belief?" In the ordinary (non-TTAB) case, the pleader is the victim of the fraud and so is able to set forth specific facts that constituted the fraud. In these TTAB fraud cases, the pleader is not the victim of the fraud and is not likely to have first-hand knowledge of the pertinent facts. Even after investigation, it will likely not be completely clear that a false statement regarding use has been made to the PTO.
  • In response to the refusal, Applicant submitted specimens consisting of several sheets of paper displaying circles bearing only the mark TOMORROW and, respectively, the words “cosmetics” and “chemicals.” The examining attorney rejected the substitute specimens stating that “they are not acceptable as evidence of actual trademark use because their appearance suggests that they are not actual labels used with all the recited goods.” TMEP §904.01(a) provides, in pertinent part, that: “If more than one item of goods, or more than one service, is specified in an application in one class, it is usually not necessary to have a specimen for each product or service. However, if the range of items is wide or contains unrelated articles, the examining attorney may request additional specimen(s) under 37 C.F.R. §2.61(b).” 37 C.F.R. §2.61 provides that “[t]he examiner may require Applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application.”
  • … the specimens consist of … duplicated photos of bottles. Although … the photos display the mark, there is absolutely no association between the proposed mark and any of the recited goods … . Applicant has not demonstrated any connection between the proposed mark and any of the recited goods … in Classes 1, 3 … . These specimens fail to demonstrate what the goods … are and how prospective consumers would perceive the proposed mark as a source-indicator for Applicant’s recited goods … .
  • Applicant also testified that “there is no business model associated with this until I receive permission to go ahead and use it and then the business model will be produced.”
  • Applicant admitted that he wanted to “make sure that nobody else could take advantage of those marks.” Applicant had no evidence of even a single business contact with any potential partner who could supply the goods that Applicant would sell under the mark. The Applicant included “an unreasonably broad listing of goods and services.” Applicant also filed eight other similarly broad applications.
  • A lack-of- bona-fide -intent ground was added by Honda after it took discovery and learned that Winkelmann had no documentation to substantiate his intent. 44(e) Applicant (and 44(d) and 66(a) Applicants) must verify a bona fide intent to use the mark in commerce using the same “objective, good faith analysis” as it applied under 1(b) for a US Applicant. Applicant’s only documents produced comprised printouts from his website (in German) and copies of his German, European and WIPO trademark registrations and correspondence with the USPTO. Applicant did not identify "the portions of the record ... that demonstrate that he manufactures vehicles in Germany or elsewhere." To raise a genuine issue of material fact, Applicant must rely on specific facts that establish the existence of an ability and willingness to use the mark in the United States to identify its claimed “vehicles for transportation” at the time of the filing of the application. NOTE: There is a Catch-22 with a Madrid-based Section 66 application, a notice of opposition filed against a Section 66(a) application may not be amended to add grounds for opposition. [This ban on post-filing additions to the opposition grounds stems from the Madrid Protocol’s requirement that all grounds for opposition be included in the notification of opposition when it is timely transmitted to WIPO. See Madrid Protocol Article 5(2)(a) and MPIA Section 68(c)(2)].
  • After taking discovery, Opposer Montblanc moved for leave to amend its notice of opposition to add an additional ground for opposition: that at the time of filing the opposed application, Applicants lack of a bona fide intent to use the mark MONT BLANC in commerce for the identified goods. Opposer simultaneously moved for summary judgment on that ground. As to the motion to amend, the Board found it timely because it was based primarily on information discovered during the deposition of Applicant’s representative on May 1, 2009, and the motion was filed fewer than three weeks later. The Board noted that "as a general rule, the factual question of intent is particularly unsuited to disposition on summary judgment." The Board found it probative that United "has not demonstrated that it has any experience in the field of electronics manufacturing or sales, despite the listing of 132 goods in that field.” Applicant maintained that it had and has the requisite intent to use the mark, but that it has been unwilling to bring the products to market pending resolution of these proceedings. Applicant has countered the motion and the documentary evidence produced by opposer with statements of subjective intent and unsupported statements that Applicant "has taken steps and continues to take steps … pending resolution of this proceeding." *** This is not sufficient to raise a genuine issue of material fact. Applicant had filed multiple applications for famous marks which share many of the same goods, e.g., BOSS, CATERPILLAR, DIESEL and PUMA.
  • Silver's argument in his brief that he had the ability to bring the goods to market were directly contradicted by his deposition testimony, stating that he had no experience or training in the relevant field.
  • Original BIG BOY franchisor went bankrupt. BIG BOY party in this case purchased the previous franchisor out of bankruptcy The deal included a transfer of rights in Frisch's “core territory” in exchange for cash and Frisch's rights outside of its core territories including franchise rights in Florida, Oklahoma, Texas, Kansas, North Carolina, South Carolina, Alabama, Arkansas, Mississippi, Louisiana and Missouri. The original BIG BOY franchisor had many different franchisees who each operated under different names. Of these, only Frisch's still maintained franchise rights to the "Big Boy" name, and many of the other former franchise owners (Shoney's, for example) expanded into areas that were once the territory of another franchise holder. The current Big Boy Restaurants International has been expanding its Bob's Big Boy name into territories formerly held by franchisees.
  • Per BIG BOY’s (International) website, the Big Boy brand is both unique and powerful with worldwide recognition and positive acceptance. The Big Boy brand is: Symbolized by the iconic Big Boy character and loved by generations of customers Signature food items like the original double-decker hamburger, onion rings, shakes and malts and strawberry pie According to Wikipedia, The Big Boy sandwich was clearly the inspiration for McDonald's Big Mac , which was developed much later
  • Applicant agreed that it will always display the name "Frisch's" in close proximity to each display of its mark on packaging, in marketing materials and displays, and in signage in Applicant's territory What about websites?
  • At the time of the agreement, Frisch operated 126 BIG BOY restaurants v. 159 restaurants for the franchisor This agreement illustrates a major problem facing concurrent users. In spite of the parties assertions of no likelihood of confusion, people will associate both party’s goods with the BIG BOY mark, both positive and negative, but, other than the agreement, the parties have no recourse or control over each other.
  • Applicant submitted the declaration of its director of merchandising, stating that: It operates two stores (with a third on the way) in Vancouver, British Columbia, and has used the URBAN FARE mark since 2002; Vancouver is a mere 24 miles from the US border ; Applicant's stores have customers who are US citizens and residents; Its print, TV, and radio advertisements reach the USA, but that Minnesota is not part of the "expected distribution, viewing or listening area for those advertisements." He also declared that, prior to its Applicant 's filing date, the Minnesota company had used the mark URBAN FARE in Minnesota, for soups and broths; that Applicant is unaware of any sales of those goods outside Minnesota; that Applicant has no intention of opening an URBAN FARE grocery store in or near Minnesota; and that Applicant is not aware of any actual confusion; and that confusion is not likely.
  • The TTAB considered the tangled ownership histories of the two cited registrations. For most of their existence, they were owned by different entities, leading Applicant to argue that the two cited registrations are more similar to each other than is its mark, and that "if the two cited registrations can have co-existence on the Register for most of their existence, then Applicant's mark likewise can co-exist and should be registered." Nothing doing, said the Board: the co-existence of two confusingly similar marks on the Register and owned by different owners (which marks arguably should not have been registered over each other) "does not relieve the Board of its duty to determine the registrability of the Applicant's mark on the record before it, nor does it justify the addition to the Register of what may be yet another confusingly similar mark."
  • A Petition for Partial Cancellation: the petitioner must plead that the proposed restriction would avoid a likelihood of confusion and that respondent is not using its mark for the services being excluded This is an underused tool
  • “ famous” vs. “FAMOUS” “ [B]ecause the word 'spam' in respondent's mark will be viewed as having its generic meaning of unsolicited commercial electronic mail, the marks as a whole are different in connotation and commercial impression." The Board also found that Hormel failed to prove that the involved marks are "essentially the same," as required by Toro Co. v. ToroHead Inc. , 61 USPQ2d 1164 (TTAB 2001), since the marks differ in connotation and commercial impression. Origin of “spam” SPAM was one of the few meat products excluded from British food rationing that began during WWII Monty Python used this as the context for their “Spam” sketch, where the menu at a café consists entirely of dishes containing one or more portions of Spam The repetitious nature of the Monty Python sketch, in which the customer becomes more and more exasperated by the appearances of “Spam” in every menu item and eventually chanting of “SPAM” overrides the other dialogue gave rise to the term spam as the common term for unsolicited bulk electronic messages. Hormel does not object to the term, but insists that it be spelled in the lower case to distinguish it from its trademark In 1998, the New Oxford Dictionary of English added a second definition of “Irrelevant or inappropriate messages sent on the Internet to a large number of newsgroups or users.”
  • As will be apparent with future slides, this decision seems inconsistent with other decisions. Perhaps the Examiner was penalized for lack of evidence?
  • The Examiner in In re Wente Bros. should have copied the evidence from this Application
  • TTAB stated that accepting Opposer’s arguments would be tantamount to “creating a per se rule that the same or similar marks for restaurant services and clothing is likely to cause confusion. Thus, not only would the senior user of a mark for restaurant services have prior rights for that mark for clothing, but the senior user of a mark for clothing would have prior rights for that mark for restaurant services” Taken to its absurd extreme, if 3 rd -party registrations alone are considered sufficient to prove that goods and services are related, then virtually all consumer products and services would be related. Accordingly, a per se rule regarding the relatedness of goods and services is contrary to trademark law which requires that each case be decided on the basis of all of the relevant facts in evidence.
  • The Examining Attorney maintained his final refusal based on Jeep, but he also submitted website evidence supporting Applicant's position. At the oral hearing, both he and Applicant Hyundai argued for reversal of the refusal.
  • The Board pointed out that it must look at the record evidence "to determine whether these goods are related as closely under trademark law as tires are when securely mounted on auto wheels." Merely because two products are attached or used together does not necessarily mean they are closely related. Consumers do not purchase an automobile without tires, and then later go looking for tires. Nothing in this record points to a single source for automobiles and tires. Accordingly, there is no reason to presume such a perception on the part of consumers of automobiles. Judge Zervas concurred in a separate opinion, opining that the refusal should be reversed on the ground that the Examining Attorney did not make out a prima facie case. Judge Zervas pointed to Section 1207.01 of the TMEP , which requires the Examining Attorney to provide evidence "showing that the goods and services are related to support a finding of likelihood of confusion." Since the Examining Attorney did not provide such evidence, the mark should not have been refused registration.

Hot Topics in Trademark Law – Part 1 Hot Topics in Trademark Law – Part 1 Presentation Transcript

  • Hot Topics in Trademark Law Part 1 by: James Blaufuss [email_address]
  • General Topics
    • Use in Commerce
      • Fraud
      • Specimens of Use
      • Evidence of Intent to Use
    • Likelihood of Confusion
      • Concurrent Registrations
      • Coexisting Registrations
    • Trademarks and the Internet
    • Items of Note
  • Use in Commerce
  • Use in Commerce – Historical Perspective
    • Before 1989 “Token Use” was acceptable
      • The Lanham Act defined “use in commerce” as use “on goods when [the Mark] is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto and the goods are sold or transported in commerce.”
        • Nothing in this earlier definition required use to be genuine, commercial , or bona fide .
  • Use in Commerce – Historical Perspective
    • Everyone, including the PTO and TTAB, accepted token use as sufficient to establish and maintain trademark rights
    • “ Token” registrations enjoyed all the legal presumptions a registration is entitled to
    • However, courts were loathe to enforce “token” registrations against third parties
  • Use in Commerce – Historical Perspective
    • Historical Problems:
    • Commercially invisible registrations
    • “ Deadwood” clogging the Register
    • Legal uncertainty
    • “ Blackmail” based on banked trademarks
    • After 1984, a foreign Applicant could obtain a US registration without use of the mark in the US (or anywhere in the world) See Crocker National Bank v. Canadian Imperial Bank of Commerce , 223 USPQ 909 (TTAB 1984)
  • Trademark Law Revision Act of 1988
    • Intent to Use applications added
    • Registration term reduced from 20 to 10 years
    • “Use” in commerce redefined to require “ bona fide use of [or intent to use] a mark in the ordinary course of trade, and not made merely to reserve a right in a mark”
    • This definition applies to sworn statements in:
      • Use based applications
      • Intent to Use applications
      • §8 affidavits
      • renewal application affidavits
  • Medinol Ltd. v. Neuro Vasx, Inc. 67 USPQ2d 1205 (TTAB 2003)
    • Mark registered for stents and catheters
    • Registrant only used the mark on catheters
    • The TTAB canceled the registration in lieu of deleting stents from the registration
    • “ [Registrant’s] knowledge that its mark was not in use on stents – or its reckless disregard for the truth – is all that is required to establish intent to commit fraud in the procurement of a registration” Medinol at 1209
    • “ The appropriate inquiry is not into the registrant’s subjective intent, but rather into the objective manifestation of that intent”
  • “Curing” Fraud
    • Zanella v. Nordstrom, Opposition No. 91177858 (2008)
    • Correction of a false statement regarding use, if made before a registration has been challenged, creates a rebuttable presumption that the registrant did not intend to commit fraud
    • In this case, registrant corrected its registrations by omitting the unused items from the §8 Declaration
  • Not “Fraud”
    • Kathleen Hiraga v. Sylvester J. Arena , 90 USPQ2d 1102 (TTAB 2009)
    • Fraud asserted because Applicant had not used the mark in commerce by the claimed first use date
    • TTAB: a false statement regarding the first use date does not constitute fraud "because the first use date is not material to the Office's decision to approve a mark for publication“
    • TTAB: "the critical question in this case is whether the mark was in use in connection with the identified goods as of the filing date of his use-based application"
  • “Fraud” Limited?
    • G&W Laboratories v. G W Pharma , 89 USPQ2d 1571 (TTAB 2009)
    • Opposer relied on two registrations for G & W, each registration in classes 5 and 35, but the opposer never used the marks for class 35 services
    • “ a multiple-class application can be viewed as a series of applications for registration of a mark in connection with goods or services in each class, combined into one application. As a general matter, the filer of such an application is in the same position it would be had it filed several single-class applications instead”
    • “ each class of goods or services in a multiple class registration must be considered separately when reviewing the issue of fraud, and judgment on the ground of fraud as to one class does not in itself require cancellation of all classes in a registration”
  • In re Bose Corp 91 USPQ2d 1938 (Fed. Cir. 2009)
    • TTAB canceled Bose’s mark for fraud in the §8/9 renewal that attested continued use of discontinued tape players 88 USPQ2d 1332 (TTAB 2007)
      • Affiant knew that Bose had discontinued selling tape players when signing §8/9 renewal
      • At the time of the §8/9 renewal, Bose continued to repair previously sold tape players
      • Transportation of tape players for repairs did not constitute use in commerce
      • Affiant's belief that transportation of repaired goods constituted use was not reasonable
  • In re Bose Corp continued…
    • The CAFC reversed the TTAB’s fraud ruling
      • The TTAB “erroneously lowered the fraud standard to a simple negligence standard” “[b]y equating ‘should have known’ with subjective intent”
      • The CAFC found “no substantial evidence that Bose intended to deceive the PTO in the renewal”
    • The CAFC held that the registration needed to be restricted to reflect commercial reality
  • In re Bose Corp continued…
    • But, the CAFC did not close the door on fraud
      • “because direct evidence of deceptive intent is rarely available, such intent can be inferred from indirect and circumstantial evidence. But such evidence must still be clear and convincing, and inferences drawn from lesser evidence cannot satisfy the deceptive intent requirement” at 1941
      • The CAFC distinguished its earlier Torres decision where Applicant changed its mark but submitted its older, registered mark, as a specimen with its renewal application
        • A §9 renewal requires the submission of a specimen showing current use
  • Current TTAB Rulings in Light of Bose
    • Enbridge v. Excelerate Energy Limited
    • Partnership , Opposition No. 91170364 (October 6, 2009) [precedential]
    • Applicant admitted that it had never used the mark for one of the listed services
      • Applicant characterized the statement in its application as “an inadvertent, honest mistake”
      • Applicant also characterized its subsequent amendment [after the opposition was filed] as correcting “its error in good faith”
    • TTAB: “whether applicant knowingly made this representation of use with the intent to deceive the USPTO remains a genuine issue of fact to be determined at trial”
  • Current TTAB Rulings in Light of Bose
    • Societe Coop. Vigneronne Des Grandes Caves
    • Richon-Lezion v. Albrecht-Piazza, Opp. No. 91190040 (9-2009)
    • The TTAB required the counterclaimant to amend its fraud-based petition for cancellation in view of the Bose decision
    • The TTAB did not accept counterclaimant’s "knew or should have known" allegation
    • Actual knowledge required to support a fraud allegation
  • Current TTAB Rulings in Light of Bose
    • Asian and Western Classics B.V. v. Lynne Selkow ,
    • 92 USPQ2d 1478 (TTAB 2009)
    • Requirements to plead fraud:
    • “ any allegations based on ‘information and belief’ must be accompanied by a statement of facts upon which the belief is founded”
    • “ it must be asserted that the false statements complained of were made willfully in bad faith with the intent to obtain that to which the party making the statements would not otherwise have been entitled”
    • “ A party making a fraud claim is under a heavy burden because fraud must be “proven ‘to the hilt’ by clear and convincing evidence,” leaving nothing to speculation, conjecture, or surmise; any doubt must be resolved against the party making the claim.”
    • “ The factual question of intent is particularly unsuited to disposition on summary judgment .”
  • Specimens of Use
    • In re Anderson , Serial No. 76497832 (August 4, 2009)
    • Application to register TOMORROW for more than 100 items in classes 1 and 3, including inter alia, photographic chemicals, food preservative compositions, after-shave gel, baby oil, boot cream and dish detergents
    • The Examining Attorney required additional specimens of use due to the wide range of unrelated goods
    • Applicant did not file specimens and appealed
    • He lost
  • Submitted Specimens of Use – In re Anderson
  • Evidence of Bona Fide Intent to Use
    • L.C. Licensing v. Berman , 86 USPQ2d 1883 (TTAB 2008)
    • Opposition sustained on the grounds of likelihood of confusion and lack of a bona fide intent to use
    • Applicant admitted he had no documents evidencing his intent to use
    • Applicant attested to his intent for at least some of the goods
    • “The mere assertion of an intent to use the mark without corroboration of any sort, whether documentary or otherwise, is not likely to provide credible evidence to establish a bona fide intention to use the mark”
  • Evidence of Bona Fide Intent to Use
    • Intel Corp. v. Emeny , Opposition No. 91123312 (May 15, 2007)
    • Applicant’s listed goods included more than 200 items of clothing, search engine services and digital transmission services
    • Applicant failed to produce any objective evidence of a bona fide intent to use his mark:
      • No evidence of any business plans
      • No evidence of any suppliers for the recited goods
    • The “failure to produce any object evidence of Intent to Use” is sufficient to rule for opposer
  • Evidence of Bona Fide Intent to Use
    • Honda v. Winkelman , 90 USPQ2d 1660 (TTAB 2009)
    • § 44(e) application based on a German Registration
    • Applicant’s interrogatory responses stated that he “has not had activities in the US and has not made or employed a business plan, strategy, arrangement or methods there,” and “has not identified channels of trade that will be used in the US”
    • Summary judgment granted because there was no evidence of bona fide intent to use the mark in the US
  • Evidence of Bona Fide Intent to Use
    • Montblanc v. United Brands, Opposition No. 91185637 (2009)
    • The Board granted summary judgment that Applicant lacked a bone fide intent to use
    • The Board held that the absence of any documentary evidence regarding an Applicant’s bona fide intention to use a mark in commerce is sufficient to prove that an Applicant lacks such intention … unless other facts are presented which adequately explain or outweigh the lack of documentary evidence
  • Evidence of Bona Fide Intent to Use
    • DC Comics v. Silver , Opposition No. 91176744 (August 21, 2009)
    • Opposition sustained because Applicant lacked a bone fide intent to use
    • Applicant stated on deposition that he had not formed a business at the time of filing, he had no experience in marketing or manufacturing the goods, was unaware of any relevant FDA regulations and had no specific education to develop the goods and further had not engaged an engineer or marketing firm since filing
    • Applicant had “no documents concerning any efforts to exploit or commercialize any product under [the Mark]”
  • Likelihood of Confusion
    • Concurrent Registrations
    • Coexisting Registrations
  • Concurrent Registrations
    • Frisch's v. Big Boy , Concurrent Use No. 94002189 (August 11,2009)
    • Consent agreement, Frisch’s entitled to register BIG BOY for “tarter sauce, pies and restaurant services” for Indiana and Kentucky and certain counties in Tennessee and Ohio.
    • The16 registrations owned by Big Boy were restricted to the rest of the US
    • TTAB: The parties agreement will minimize or eliminate the possibility of any confusion that might otherwise be caused by the parties’ respective uses of their marks
  • Frisch's v. Big Boy, Cont.
    • © 2009 TTABlog
  • Frisch's v. Big Boy, Cont.
    • The TTAB observed that: “while stipulated agreements are not binding on the Board, there can be no better assurance of the absence of a likelihood of confusion, mistake, or deception than the parties' careful consideration of their commercial interests ”
    • The parties agreed that “neither party will use or advertise its marks in the other party's territory”
    • The parties stated that they “do not know of any instances of actual confusion caused by the parties' respective uses of their marks”
  • Frisch's v. Big Boy, Cont.
    • The parties agreed in their non-compete agreement to, inter alia :
      • Use the rights so as to not materially detract from the BIG BOY reputation
      • Maintain the reputation for the distinctive standards, qualities and attributes of BIG BOY products and services
      • Not permit gambling or other adult themes or activities or atmosphere (such as a “Hooters”)
      • Share the cost of defending BIG BOY rights (percentage based on number of restaurants)
  • Concurrent Registrations
    • Overwaitea v. Urban Fare , Concurrent Use No. 94002254 (Sept. 9, 2009)
    • In judgment by default, Canadian Applicant granted registration of URBAN FARE for retail grocery store services everywhere but MN
    • MN registrant had previously registered URBAN FARE in MN for soups, chicken and vegetable stocks and broths
    • Applicant established there is no likelihood of confusion because it operates two stores in Vancouver a mere 24 miles from the US border (in Washington)
  • Concurrent Registrations
    • In re Davey Products , Serial No. 77029776 (August 7, 2009)
    • Applicant filed to re-register its mark after prior registration lapsed under §8
    • New application was rejected in view of two registrations for related goods that co-existed with Applicant’s prior registration
      • Both cited registrations existed when Applicant’s original registration issued
    • “the co-existence of two confusingly similar marks … does not justify the addition to the Register of what may be yet another confusingly similar mark”
  • Partial Cancellation
    • IdeasOne v. Nationwide Better Health , 89 USPQ2d 1952 (TTAB 2009)
    • Applicant sought to register mark for dietary supplements but was blocked by Registrant’s similar mark for consulting services in the field of healthcare
    • Applicant alleged that Registrant had never used its mark for dietary supplements and sought a limitation to Registrant’s Registration
    • §18 provides an avenue of relief for a party … who faces a cited registration with the no longer permitted identification of goods … and believes that a restriction may serve to avoid a likelihood of confusion
      • Partial cancellations are also applicable for descriptions of goods that are too broad or ambiguous
  • Mark Coexistence
    • Hormel v. Spam Arrest , Cancellation No. 92042134 (November 21, 2007)
    • Hormel lost petition to cancel a registration for SPAM ARREST for computer software, namely software designed to eliminate unsolicited commercial electronic mail
    • Registrant and Board acknowledge that Hormel’s SPAM mark was famous, yet the Board found that “spam” is a generic term for unsolicited commercial e-mail
    • The Board gave “great weight” to the fame of SPAM, but “that fame does not extend to computer software”
  • Mark Coexistence
    • In re Wente Bros., Serial No. 77314718 (August 6, 2009)
    • Applicant filed for ANDIAMO for wine and was rejected over the identical mark for restaurant services
    • Examiner: restaurants commonly serve wine and wineries commonly feature restaurants
    • Reversed, TTAB: The law requires “something more than that … identical marks are used for food products and for restaurant services”
    • The evidence lacked that “something more”
    • “ The statute refers to likelihood, not the mere possibility, of confusion”
  • Mark Coexistence
    • In re Constellation Wines U.S. , Serial No. 78803750 (April 2008)
    • Affirmation of a §2(d) refusal to register mark for wine , finding the mark confusingly similar to similar mark for restaurant services
    • Here, the examining attorney provided that “something more”:
      • 3 rd -party registrations for both identifications under the same mark
      • Articles, advertisements and direct evidence of restaurants offering ‘private label’ wines under the name and mark of the restaurant
  • Mark Coexistence
    • CNL Tampa v. Palazzolo , Opposition No. 91163724 (March 2007)
    • PELAGIA for “ clothing… ” was not confusingly similar to the identical mark for “restaurant services”
    • Opposer claimed that clothing “is within the natural scope of expansion for restaurant services” citing 102 3 rd -party registrations encompassing both restaurant services and clothing
    • 3 rd -party registrations “ may have some probative value to the extent that they serve to suggest that the listed goods and/or services are of a type that may emanate from a single source,” but the Board refused to draw the inference that these goods and services are “legally related products”
      • Need that “something more”
  • Mark Coexistence
    • In re Hyundai Motor America , Serial No. 78889340 (Sept. 2009)
    • Application for mark for automobiles refused based on registration of mark for tires
      • Examining Attorney followed In re Jeep Corp . holding tires closely related to automobiles
      • On appeal, the Examining Attorney argued that the evidence of record supported registration
    • TTAB reversed refusal, distinguishing in re Jeep Corp. on its facts and finding no per se rule to overturn
  • In re Hyundai Facts
    • Nothing in the record established a single source for both tires and automobiles
    • “ Virtual separation” of the channels of trade: only 2-4% of aftermarket tires sold at dealerships
    • Consumers of both goods exercise a high degree of care
      • Automobiles are expensive
      • Only specific tires can be used with particular automobiles
    • Sidewall markings on tire often prominently display manufacturer’s name
    • Several marks coexist for both goods (both real world and 3 rd -party registrations);
      • Ford EXPLORER and EXPLORER tires by Kelly Tires
      • Honda PILOT and PILOT tires by Michelin
      • Dodge CHARGER and CHARGER tires by Kelly Tires