The Top 9 or 10 TTAB Decisions of the Past Year or So

Transcription

1 The Top 9 or 10 TTAB Decisions of the Past Year or So John L. Welch Lando & Anastasi, LLP 1

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3 Two New Judges Susan M. Richey has been named Deputy Chief Administrative Trademark Judge. Cheryl S. Goodman was appointed an Administrative Judge. 3

4 What is the Likelihood of TTAB Affirmance of a Section 2(d) Refusal? For the calendar year 2014, I counted 242 Section 2(d) refusals, of which 221 were affirmed and 21 reversed. That's an affirmance rate of nearly 91%. [In %, in %]. 4

5 What about Affirmance of a Section 2(e)(1) Mere Descriptiveness Refusal? Of the 98 Section 2(e)(1) mere descriptiveness refusals, 85 were affirmed and 13 reversed, for an affirmance rate of approximately 84%. That is consistent with estimates that I and others have made in past years. 5

6 Pro Football, Inc. v. Blackhorse (E.D. Va.) A divided TTAB panel granted a petition for cancellation of six registrations for marks comprising or containing the word REDSKINS, for entertainment services, finding that the marks, at their respective dates of registration, ( ) disparaged Native Americans. Amanda Blackhorse 6

7 Pro Football, Inc. v. Blackhorse (E.D. Va.) This is the second time the TTAB has considered a petition for cancellation of these registrations. In the first case, the United States Court of Appeals for the District of Columbia Circuit ultimately ruled that the claims of the Native American petitioners were barred by laches. Six new petitioners who had recently reached the age of majority brought this proceeding. 7

8 Pro Football, Inc. v. Blackhorse (E.D. Va.) Judge Bergsman dissented, pointing to the lack of evidence that the term was disparaging when used in connection with sports teams. Pro Football filed a civil action in the U.S. District Court for the Eastern District of Virginia for review of this decision under 15 U.S.C. 1071(b). 8

9 Pro Football, Inc. v. Blackhorse (E.D. Va.) The U.S. Government has intervened as of right, for the limited purpose of defending the constitutionality of Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a). The court has scheduled a bench trial for June 26-June 30. Summary judgment papers will be due by April 15 th. 9

10 Belmora LLC v. Bayer Consumer Care AG (E.D. Va.) The Board granted Bayer's petition to cancel Belmora's registration for the mark FLANAX for "orally ingestible tablets of Naproxen Sodium for use as an analgesic," on the ground that the mark is being used by Belmora to misrepresent the source of its goods, in violation of Section 14(3) of the Trademark Act. 10

11 Belmora LLC v. Bayer Consumer Care AG (E.D. Va.) Bayer admittedly had no use of the FLANAX mark in the USA. The Board dismissed Bayer s Section 2(d) and fraud claims for that reason. However, the Board agreed with Bayer that Section 14(3) does not include a use requirement. It found that Bayer met the CAFC's liberal standard for standing because Bayer established that "it has an interest in protecting its Mexican FLANAX mark." 11

12 Belmora LLC v. Bayer Consumer Care AG (E.D. Va.) Bayer's likelihood of confusion claim under Article 6bis of the Paris Convention was jettisoned because the Convention is not self-executing and Section 44 of the Trademark Act does not afford the owner of a foreign trademark a separate basis for cancellation under a "famous mark" theory. 12

13 Belmora LLC v. Bayer Consumer Care AG (E.D. Va.) Belmora appealed the Section 14(3) ruling, and Bayer cross-appealed the 6bis ruling. Bayer has also brought claims for unfair competition under federal and state law. E.D. Va. reversed the TTAB on ruling that Bayer lacked standing to bring the 14(3) claim. 13

14 Belmora LLC v. Bayer Consumer Care AG (E.D. Va.) Does the Lanham Act allow the owner of a foreign mark that is not registered in the United States and further has never used the mark in United States commerce to assert priority rights over a mark that is registered in the United States by another party and used in United States commerce? The answer is no. 14

15 In re Tam The Board affirmed a Section 2(a) refusal to register the mark THE SLANTS for "entertainment in the nature of live performances by a musical band," finding that the mark, when used in connection with applicant's services, would be perceived as disparaging to a substantial composite of the reference group, namely persons of Asian descent. 15

16 In re Tam In his complaint that the PTO improperly went outside the "four corners" of his application in order to consider his manner of use of the mark, applicant ignored the first prong of the applicable test for disparagement. The "manner of use" necessarily requires looking beyond the contents of the application itself. 16

17 In re Tam 17

18 In re Tam Applicant's musical group promotes this "likely meaning" of the mark in its advertising and on its website, displaying the words THE SLANTS adjacent a depiction of an Asian woman accompanied by stylized rising sun imagery and a stylized dragon. 18

19 In re Tam The Board deemed it important to note that a finding that THE SLANTS is disparaging does not depend on applicant's ethnicity but on the circumstances relating to his use of the mark. "An application by a band comprised of non-asian Americans called THE SLANTS that displayed the mark next to the imagery used by applicant... would also be subject to a refusal under Section 2(a). 19

20 In re Tam Notice of Appeal Docketed by CAFC Opening brief (after extension) USPTO brief (after extensions) Reply brief Joint Appendix Oral argument 20

21 1071(b) Civil Action or CAFC Appeal? Section 1071 (b)(3) provides, in pertinent part, the following: In any case where there is no adverse party... unless the court finds the expenses to be unreasonable, all the expenses of the proceeding shall be paid by the party bringing the case, whether the final decision is in favor of such party or not. [Emphasis supplied]. 21

22 1071(b) Civil Action or CAFC Appeal? Shammas v. Focarino, 109 USPQ2d 1320 (E.D. Va. 2014): the applicant/plaintiff must pay the USPTO's expenses (including attorney and paralegal fees). [Win or lose, said the court, although this case involved only "lose."] 22

23 1071(b) Civil Action or CAFC Appeal? If there were any doubt as to the scope of the term expenses, the inclusion of the word all in the statute makes clear the breadth of the term. The court awarded the USPTO $32, in attorney salaries, $3, in paralegal salaries, and $ in photocopying expenses. 23

24 Nationstar Mortgage LLC v. Ahmad For the first time since In re Bose (August 2009), the Board sustained a claim of fraud, finding that applicant had not used the mark NationStar for certain brokerage services prior to the filing of his use-based application to register. 24

25 Nationstar Mortgage LLC v. Ahmad Ahmad testified that he chose the name in after checking corporate records and the USPTO databases. Opposer Nationstar Mortgage contacted Ahmad in early April 2006, and within days, Ahmad himself filed the application at issue under Section 1(a). 25

26 Nationstar Mortgage LLC v. Ahmad Ahmad was not a real estate broker, insurance broker, or mortgage insurance broker, each of which requires a state license. Ahmad s testimony regarding use was of grave concern to the Board because it was so lacking in conviction and credibility as to be virtually incapable of corroboration. 26

27 Nationstar Mortgage LLC v. Ahmad The Board distinguished the case from In re Bose in that here the applicant made false statements about his own industry and his own activities, knowing that he did not have the appropriate licenses. 27

28 Nationstar Mortgage LLC v. Ahmad [I]n Bose,... the corporate representative who signed the declaration of use believed that repairing damaged, previously-used tape recorders and players and returning them to customers met the use in commerce requirement. 28

29 Nationstar Mortgage LLC v. Ahmad Here the applicant made false statements about his own industry and his own activities, knowing that he did not have the appropriate licenses. 29

30 Nationstar Mortgage LLC v. Ahmad Although while the opposition was pending, Ahmad was allowed to amend his filing basis to Section 1(b) intent-touse, the Board had pointed out, that fraud cannot be cured once an opposition has been filed. 30

31 Where we at? 31

32 What is the fraud standard? Bose tells us that negligence, and even gross negligence, is not enough. There must be an intent to deceive. Is reckless disregard for the truth a sufficient basis for a finding of fraud? Don't know yet.

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34 Additional Reading Theodore H. Davis Jr. and Lauren Brenner, Allegations of Fraudulent Procurement and Maintenance of Federal Registrations Since In re Bose Corp., 104 TMR 933 (2014).

35 Are Foreign Owners Fraudproof? How can you ever prove fraud by a foreign owner, who will claim misunderstanding of US law and probably can t be deposed (other than by written questions) in a TTAB proceeding?

36 Fraud for thought In terrorem effect of fraud? Knock-out at discovery/settlement conference? How about a Rogers hearing?

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38 Ava Ruha Corporation v. Mother's Nutritional Center, Inc. Respondent pleaded laches as an affirmative defense to Petitioner s claims of fraud, dilution, and likelihood of confusion 38

39 Ava Ruha Corporation v. Mother's Nutritional Center, Inc. Laches is not a defense that is available against a fraud claim because of the public interest in prohibiting and removing registrations obtained by fraud. 39

40 Ava Ruha Corporation v. Mother's Nutritional Center, Inc. In order to establish the defense of laches, a party must show that there was undue or unreasonable delay by the other party in asserting its rights, and prejudice resulting from the delay. 40

41 Ava Ruha Corporation v. Mother's Nutritional Center, Inc. In a cancellation proceeding, laches is calculated from a date "no earlier than the date the involved mark was published for opposition (if there was actual knowledge), and no later than the issue date of the registration (when Plaintiff is put on constructive notice, see 15 U.S.C. Section 1072)." 41

42 Ava Ruha Corporation v. Mother's Nutritional Center, Inc. Here, the petitioner had actual knowledge of the respondent's service mark use prior to the date when the applications that issued as the challenged registrations were published for opposition. 42

43 Ava Ruha Corporation v. Mother's Nutritional Center, Inc. The period of delay was just over three years and two months. The Board concluded that this length of delay "could support a defense of laches." 43

44 Ava Ruha Corporation v. Mother's Nutritional Center, Inc. Petitioner claimed progressive encroachment as the reason for delay, but [f]or purposes of an attack on a registration, there can be no 'progressive encroachment' where the alleged encroachment is within the scope of the registration at issue." 44

45 Ava Ruha Corporation v. Mother's Nutritional Center, Inc. Because there was no dispute that Respondent changed its economic position during the period of delay [15 stores added], the Board found as a matter of law that Respondent would be subject to economic prejudice if the challenged registrations were cancelled. 45

46 Ava Ruha Corporation v. Mother's Nutritional Center, Inc. Therefore, the Board concluded that Petitioner Ava Ruha's delay in bringing its cancellation claims was unreasonable and prejudicial to Respondent, and thus laches was established. 46

47 Ava Ruha Corporation v. Mother's Nutritional Center, Inc. With regard to Petitioner's dilution claim, because a dilution claim involves a personal interest of the petitioner in protecting the strength of its mark rather than a general interest of the public in avoiding confusion, the defense of laches is available to a defendant. 47

48 Ava Ruha Corporation v. Mother's Nutritional Center, Inc. As to likelihood of confusion, laches will not apply when confusion is inevitable. Although Petitioner failed to raise this issue, and although relevant evidence had not yet been introduced, the Board decided that the public interest in avoiding consumer confusion would be served by considering the issue. 48

49 Ava Ruha Corporation v. Mother's Nutritional Center, Inc. The Board then ordered that proceedings be resumed on the issues of fraud and likelihood of confusion, with Petitioner having the burden to prove inevitable confusion lest the Section 2(d) claim be barred by laches. 49

50 In re Thor Tech, Inc. TERRAIN for recreational vehicles, namely, towable trailers is not likely to cause confusion with the identical mark registered for motor land vehicles, namely, trucks. 50

51 In re Thor Tech, Inc. Applicant submitted 50 pairs of thirdparty registrations for the same or very similar marks, owned by different entities, for vehicles and recreational vehicle trailers. [The Examining Attorney had submitted seven third- party registrations for marks the covered both goods, but only two were probative.] 51

52 In re Thor Tech, Inc. This suggested to the Board that "businesses in these two industries believe that their respective goods are distinct enough that confusion between even identical marks is unlikely. The Board found that this "pattern of registrations" rebutted the PTO s evidence and, coupled with the sophistication of the customers, it led to reversal of the refusal. 52

53 In re King Productions, Inc. [not precedential] Many cases say that the title of a single work, such as a book, must be refused registration under Sections 1, 2, and 45 of the Trademark Act because the title fails to function as a trademark. 53

54 In re King Productions, Inc. [not precedential] Here, the Board ruled that the title of a single book or a single DVD is properly refused registration under Section 2(e)(1) on the ground of mere descriptiveness. That means that the mark is registrable upon a showing of acquired distinctiveness under Section 2(f). 54

55 In re King Productions, Inc. [not precedential]. Applicant had a "significant burden" under Section 2(f) because a title is highly descriptive of a book or DVD. The question: Was there "sufficient public exposure of ROCK YOUR BODY in such a manner that consumers would view ROCK YOUR BODY not merely as a title of the book and DVD, but as a trademark indicating source?" 55

56 In re King Productions, Inc. [not precedential]. Applicant sold only 884 sets of the book and DVD. Its website showed the mark used with apparel and workshops, which would convey to consumers that ROCK YOUR BODY plays a role beyond that of a title, but the evidence failed to show the extend of exposure of the website (e.g., the number of hits or visitors). 56

57 Covidien LP v. Masimo Corp. Application for the color pink (Pantone PMS 806) for connectors and lead wires for use with patient monitoring devices Registration for the color red for patient monitoring sensors and cables. 57

58 In re Cook Medical TEAL for guiding sheath for vascular device BLUE for catheter

59 In re Cook Medical TTAB found confusion likely Goods were complementary and therefore closely related applicant's originally described its mark as the color "blue/teal" the narrow shape of the products may make it more difficult to differentiate between the shades of blue.

60 In re Cook Medical The Board noted that Cook did not avail itself of Section 18 of the Act Of course, the Board will not entertain such a Section 18 claim unless the proposed modification will serve to avoid a finding of likelihood of confusion between the marks. Alternatively, Cook could have sought a consent from the registrant.

61 Covidien LP v. Masimo Corp. Masimo moved to dismiss the petition under FRCP 12(b)(6), arguing that Covidien had failed to state a claim upon which relief can be granted. Masimo urged that restriction under Section 18 is permitted only when the description of the mark in the registration is "ambiguous or overly broad. 61

62 Covidien LP v. Masimo Corp. The Board also reads 18 as allowing for, and thus encompassing, relief where a plaintiff alleges that a feature of the description of the mark renders the description not specific to the mark actually used by the defendant. 62

63 Covidien LP v. Masimo Corp. TMEP (e). If the applicant is claiming a shade of color, the shade must be described in ordinary language, for example, maroon, turquoise, navy blue, reddish orange. This is required even if the applicant also describes the color using a commercial coloring system. 63

64 Covidien LP v. Masimo Corp. PMS 185? 64

65 In re Fiat Group Fiat sought to register the mark FIAT 500 for [as amended] "retail store services and online retail store services featuring a wide variety of consumer goods of others" 65

66 In re Fiat Group However, its application (and IR) said "advertising services; business management; business administration; office functions [the class heading for International class 35]. 66

67 In re Fiat Group TTAB affirmed the refusal to register because the amended I.D. exceeded the scope of the original recitation of services - even though Fiat copied the class heading, and even though retail store services fall within class

68 In re Fiat Group Board applied the "Ordinary-Meaning" Test of TMEP Section (a): the PTO will look to the ordinary meaning of the words for the purposes of determining the scope of the identification." 68

69 In re Fiat Group The Board concluded that business management does not include retail store services. The US does not follow the classheading-includes-all policy of some countries. 69

70 Turdin v. Trilobite, Ltd Turdin (the junior user and second filer) sought a concurrent use registration for NYC and CT, but the Board ruled that Defendant was entitled to an unrestricted registration. 70

71 Turdin v. Trilobite, Ltd Defendant Trilobite (based in Ohio) had never performed its video production serviced in either NYC or CT, but it did have customers in NYC and sent letters and invoices to NYC. Turdin had the burden to show that use of his mark TRILOBITE PICTURES would not likely result in confusion. 71

72 Turdin v. Trilobite, Ltd The Board found that confusion was likely in NYC, relying on First Niagara to resolve the question of use. In other words, technical trademark use is not required here. 72

73 Turdin v. Trilobite, Ltd The Board next ruled that confusion was also likely in CT. Although Defendant had no use in CT, Turdin failed to overcome Defendant s testimony there is "quite an overlap of people who live in the Connecticut area and work in New York, so I find that sometimes I don't know if they're in Connecticut actually or in New York.". 73

74 Boi Na Braza, LLC v. Terra Sul Corp. The Board ruled that plaintiff BNB (the junior user, first filer) was entitled to a concurrent use registration for the entire United States, except New Jersey and New York. 74

75 Boi Na Braza, LLC v. Terra Sul Corp. Defendant claimed that it had used its mark CHURRASCARIA BOI NA BRASA in New Jersey, New York, and elsewhere and that plaintiff BNB's mark should be denied registration or restricted to plaintiff's three areas of actual use: Dallas, Atlanta, and Cincinnati. 75

76 Boi Na Braza, LLC v. Terra Sul Corp. Plaintiff BNB claimed that it first used its mark in 1999, in good faith and without knowledge of Terra Sul's use, prior to the filing dates of any of Terra Sul's applications. It thus met the "jurisdictional requirement" for a concurrent use proceeding. 76

77 Boi Na Braza, LLC v. Terra Sul Corp. The parties had co-existed for 15 years without credible evidence of actual confusion, and that fact weighed heavily against a finding that confusion would be likely in geographically restricted territories 77

78 Boi Na Braza, LLC v. Terra Sul Corp. Furthermore, the Board and other tribunals "have often found that confusion can be avoided when restaurant services in particular are offered under identical marks but in geographically restricted territories." Moreover, by definition, restaurant services are rendered in particular geographic locations. 78

79 Boi Na Braza, LLC v. Terra Sul Corp. Actual use in a territory is not necessary to establish rights in that territory. Generally, a prior user is entitled to a registration covering the entire United States, limited only to the extent that the junior user can establish that no likelihood of confusion exists and that it has concurrent rights in its actual area of use plus its area of natural expansion. 79

80 Boi Na Braza, LLC v. Terra Sul Corp. However, this presumption may be overcome if a senior user "remains static" and the junior user is the first to file for registration. In other words, there is a policy of encouraging prompt registration of marks, and the concurrent use provision of Section 2(d) exhibits no bias in favor of the prior user. 80

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