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A half-dozen precedential decisions lead this month's case collection. The Board refused to consider certain statements made in the prosecution history of a cited registration because Applicant had failed to submit the prosecution file into evidence, and in any case the statements were made in a different context. The Board affirmed a Section 2(a) refusal of the mark WHITE JASMINE & Design, finding the word "White" to be deceptive for Applicant's tea. In a rare, contested concurrent use proceeding, it awarded the junior user concurrent use registrations for three marks for hotel and motel services, in the entire United States except for the State of Arizona. The Board affirmed a refusal to register the color black applied to packaging, as a trademark for flowers, finding the mark to be aesthetically functional under Section 2(e)(5). It nixed a stipulation that would have allowed service of Board papers via email while preserving the five extra days for response provided in the case of service by mail. And the Board granted a motion to compel a party to serve an expert written report because the witness was considered to be a "retained" expert. In nonprecedential cases, the Board found CHAMPARTY for "alcoholic beverages except beers" not confusable with the opposer's common law certification mark CHAMPAGNE for sparkling wine. It dismissed an opposition to IN & OUT CAR WASH for car washing services, finding it not likely to cause confusion with or dilute the mark IN-N-OUT BURGERS for restaurant services, and not confusable with IN & OUT for vehicle repair and painting services. The Board reversed a Section 2(e)(2) refusal of KAPALUA for retail store services, finding that the mark primarily designates Applicant's services rather than the geographic location of its resort development. And it affirmed two refusals of GREEN SEAL for adhesive tape, finding it to be deceptive under Section 2(a) and deceptively misdescriptive under Section 2(e)(1).

(F-478) In re Sela Products, LLC, Serial No. 77629624, USPQ 2d_ (TTAB, March 26, 2013) [precedential]. In this appeal from two Section 2(d) refusals to register the mark FORZA for metal mounting brackets for televisions, speakers, and custom audio/video accessories, including cables and wires, Applicant Sela contended that the Board should consider certain statements made in the file history of one of the cited registrations. But there were two problems: Sela never made that file history of record during the prosecution of its own application, and even if it had, the statements were mere opinions submitted in a wholly different context and of no probative value here. The Board affirmed the first Section 2(d) refusal, finding Sela's mark likely to cause confusion with the registered mark FORZA POWER TECHNOLOGIES for surge protectors and other electrical items "for home and office use only" [POWER TECHNOLOGIES disclaimed]. However, the Board reversed a second Section 2(d) refusal, finding Applicant's mark not likely to cause confusion with the registered mark FORZA MILAN! ACM 1899 & Design, shown here, for various goods, including optical and electrical cables and sound and image recording and transmission apparatus. The Board concluded that any similarities between Sela's mark and the cited mark (which refers to the world-renowned football club, A.C. Milan)were outweighed by the differences in appearance and commercial impression (and in the case of soccer aficionados, connotation).

(F-501) In re White Jasmine LLC, 105 USPQ2d 1385 (TTAB 2013) [precedential]. The Board affirmed a Section 2(a) refusal of the mark WHITE JASMINE & Design, finding the word "White" to be deceptive for Applicant's tea. For the sake of completeness, the Board considered and affirmed the PTO's alternative refusal based on its requirement that "White Jasmine" be disclaimed. Deceptiveness: The PTO put Applicant in hot water by submitting a considerable batch of Internet evidence establishing that "white jasmine" is a type of tea. The Board noted that a mark may be found deceptive based on a single embedded term. White tea is a subcategory of two types of tea: white tea and jasmine tea. Applicant admitted that its tea does not contain white tea leaves. Consequently, WHITE JASMINE misdescribes Applicant's tea. The Board found it quite likely that consumers would believe that Applicant's tea contains white tea. And the PTO's evidence showed that consumers perceived that white tea has desirable health benefits; therefore, the misdescription is material to the purchasing decision. Disclaimer: The Board agreed that WHITE JASMINE is deceptively misdescriptive under Section 2(e)(1), found Applicant's Section 2(f) evidence unconvincing, and affirmed the refusal to register due to applicant's failure to comply with the Section 6 disclaimer requirement.

(F-508) America's Best Franchising, Inc. v. Roger Abbott, 106 USPQ2d 1540 (TTAB 2013) [precedential]. In a rare, contested concurrent use proceeding, the Board awarded junior user ABF concurrent use registrations for the three marks shown here, for hotel and motel services, in the entire United States except for the State of Arizona. The Board ruled that although Abbott was the first user of the mark 3 PALMS, his inaction over a considerable time amounted to an abandonment of his right to expand beyond his original trading area, "especially since ABF was the first to seek federal registration. " Abbott licensed his 3 PALMS mark to a single hotel in Scottsdale, Arizona, but he contended that Internet marketing had necessarily expanded his territory nationwide, or at least significantly beyond Arizona. Abbott first used his 3 PALMS mark in April 2004, whereas ABF began use in 2008 in Florida, unaware of Abbott's use. It first learned of Abbott's use inmid-2008, and subsequently reached service agreements with hotels in Indiana, South Carolina, Georgia, Michigan, and California. The question was whether confusion may be avoided by a geographic restriction, and the Board answered yes. It found that PALMS is a weak formative and that the localized nature of hotel services would make confusion unlikely between hotels in different locations. The fact that both parties advertise online is not enough to result in a likelihood of confusion.

(F-515) In re Florists' Transworld Delivery, Inc., Serial No. 77590475, USPQ 2d (TTAB, March 28, 2013) [precedential]. The Board affirmed two refusals to register the color black applied to packaging for flowers, finding the mark to be aesthetically functional under Section 2(e)(5), and if not functional, then lacking in acquired distinctiveness. Section 2(e)(5) Functionality: In In M-5 Steel Mfg. Inc. v. O'Hagin's Inc., 61 USPQ2d 1086 (TTAB 2001), the Board recognized that there are two forms of functionality: utilitarian functionality and aesthetic functionality. A design feature that does not meet the Inwood test for utilitarian functionality is still prohibited from registration if the exclusive appropriation of that feature would put competitors at a significant non-reputation related disadvantage. Functionality: The Board agreed that the color black "serves an aesthetic function" when used for floral packaging; the evidence showed that color communicates particular messages in the presentation of flowers. The Board concluded that the PTO had demonstrated prima facie that competitors in the industry need to use the color black in connection with floral arrangements and flowers. Acquired Distinctiveness: For the sake of completeness, the Board addressed the refusal to register on the ground that the mark lacks acquired distinctiveness. The Board was not impressed with Applicant's evidence and affirmed the refusal under Sections 1,2, and 45, finding insufficient proof under Section 2(f).

(1-34) McDonald's Corporation v. Cambrige Overseas Development Inc., 106 USPQ2d 1339 (TTAB 2013) [precedential]. The parties to this opposition proceeding filed a stipulation to accept service by e-mail while retaining the five additional days afforded by Rule 2.119(c) for filing and/or serving responsive documents, applicable for service by first-class mail. No can do, said the Board, and it rejected the stipulation. Rule 2.119(b)(6) allows service of papers by electronic transmission when the parties so agree. But they cannot also take advantage of the five-extra-days-for-mailing provision of Rule 2.119(c). That five-extra-days rule applies only to service by firstclass mail, Express Mail, or overnight courier. See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42442, 42250 (August 1, 2007) ("as for agreed use by parties of e-mail or fax for forwarding service copies, the office confirms that Section 2.119(c) would not apply to service by electronic transmission (email or fax) under Section 2.119(b)(6)."). The Board pointed out that a stipulation such as that filed here would run afoul of Rule 2.127, which states that the time for filing reply briefs and motions under FRCP 56(d) "will not be extended. " The Board noted that the parties could stipulate that they would accept service by first-class mail but with a courtesy e-mail copy sent simultaneously. Then the fiveextra-days-for-mailing would apply.

(1-35) RTX Scientific, Incorporated v. Nu-Calgon Wholesaler, Inc., 106 USPQ2d 1492 (TTAB 2013) [precedential]. The Board granted Respondent's motion to compel Petitioner to serve a written expert report pursuant to FRCP 26(a)(2)(B), ruling that the question of whether a party's witness is "retained or specially employed to provide expert testimony" does not depend on whether the party controls the expert's time or compensates the expert. Rather it turns on whether the expert opinion testimony "arises from his enlistment as an expert and not from an on-the-scene involvement in any incidents giving rise to the litigation. " Respondent moved to compel a written expert report signed by Mr. Holder under FRCP 26(a)(2)(B). Petitioner admitted that Mr. Holder is a third-party witness capable of giving expert testimony, but asserted that it did not retain Mr. Holder, that he was not specially employed by Petitioner, that he had not been and would not be compensated, and that he had not prepared any written report. In Board proceedings, an expert is typically recruited not on the basis of personal knowledge of an event, but because of his or her particular knowledge of a relevant field. Mr. Holder had no "on-the-scene" involvement in any incidents giving rise to the proceeding, and therefore he was a "retained" expert witness and his report must be provided.

(F-456) Comité Interprofessionel du Vin de Champagne and Institut National de l'Origine et de la Qualité v. Shlomo David Jehonadav, Opposition No. 91195709 [not precedential]. Bursting opposers' bubble, the Board dismissed this Section 2(d) opposition to registration of CHAMPARTY for "alcoholic beverages except beers, " finding it not likely to cause confusion with the common law certification mark CHAMPAGNE for sparkling wine. The Board concluded that, although the goods overlap, the marks are simply too different. It found it unlikely that "customers of average perceptual abilities would mistake one mark for the other or find the marks to be significantly similar" even if used for identical goods. The English word "party" is a salient feature of the applied-for mark. That portion of the mark is "likely to counteract the visual similarities between the two marks in the perception of consumers. " Moreover, the marks are not likely to give rise to phonetic confusion. As to meaning, CHAMPAGNE is a term well known as a type of sparkling wine. CHAMPARTY has no literal meaning. Opposers suggested that CHAMPAGNE is often associated with celebrations and thus PARTY might suggest a connection with CHAMPAGNE, but the Board was unimpressed. There was no evidence that CHAMPAGNE is more closely connected with celebrations that any other alcoholic beverage.

(F-464) In-N-Out Burgers v. Fast Lane Car Wash & Lube, L.L.C., Opposition No. 91183888 [not precedential]. The Board dismissed this opposition to registration of the mark IN & OUT CAR WASH for car washing services (CAR WASH disclaimed), finding it not likely to cause confusion with or to dilute Opposer's mark IN-N-OUT BURGERS for restaurant services, and not likely to cause confusion with IN & OUT for vehicle repair and painting services. Opposer failed to prove that its restaurant marks were famous for Section 2(d) purposes, and failed to establish that its repair and painting services were related to Applicant's car wash services. Opposer claimed use of its mark since 1948, registering the mark first in 1978 and subsequently in various forms. At the time of trial, Opposer operated 262 restaurants, exclusively in the states of California, Nevada, Utah, Arizona, and Texas, and Opposer had acquired a registration for the mark IN & OUT for motor vehicle body repairing and painting. Applicant Fast Lane began using the IN & OUT CAR WASH mark in April 2005, and owns two car wash facilities, in Joplin and Springfield, Missouri. Dilution: Opposer failed to prove its marks to be famous for Section 2(d) purposes, and perforce could not meet the higher standard under Section 43(c). Likelihood of Confusion: Balancing the relevant du Pont factors, the Boaid ruled that Opposer had failed to prove a likelihood of confusion.

(F-510) In re Kapalua Land Company, Ltd., Serial No. 76670962 [not precedential]. The Board reversed a Section 2(e)(2) refusal to register the mark KAPALUA for retail store services, finding that the primary significance of the mark is to designate the source of Applicant's services rather than the geographic location of its resort development. Applicant owns the Kapalua Resort on the island of Maui. Its parent company adopted "KAPALUA" as the name for its resort, and it was the first to apply that name to the resort's location. Applicant argued that KAPALUA had no geographical significance before it chose the name; that it has extensively promoted its real estate properties, hotel services, and golf services under the mark; and that it has maintained quality control over use by others. The Examining Attorney submitted numerous third-party Internet references to "Kapalua," but Applicant showed that most pertained to the resort and other services rendered under the mark. The Board found the geographic significance of KAPALUA to be subsidiary to the function of the word as a service mark. "[T]he greater weight of the evidence shows that KAPALUA did not signify a geographic place before applicant adopted the term to designate the origin of its services and it continues to serve the function of designating source. Second, there is no record evidence of any manufacturer or other commercial enterprise in a place named ?Kapalua' outside of applicant's ownership or control."

(F-512) In re Kitaru Innovations Inc., Serial No. 85211019 [not precedential]. The Board affirmed two refusals of the mark GREEN SEAL for "adhesive tape and adhesive packaging tape and tape dispensers for home and office use," finding the mark to be deceptive under Section 2(a) and deceptively misdescriptive under Section 2(e)(1). Applicant Kitaru maintained that it uses the term "Green Seal" to color code a line of adhesive tape products that also includes "Black Seal," "Blue Seal" and "Double Blue Seal," and further that it uses this term in connection with the imagery of a sea mammal. But those arguments didn't stick. Section 2(e)(1) Deceptive Misdescriptiveness: A mark is deceptively misdescriptive if it misdescribes the goods, and if consumers are likely to believe the misrepresentation. The Board found that the record evidence showed "overwhelmingly" that the word "green" informs consumers that the tape products are environmentally friendly. The Board affirmed the refusal, noting that the image of a seal is not included in the applied-for mark. Section 2(a) Deceptiveness: The evidence showed that consumers are eager to recycle as well as to purchase products made of recycled materials, such that whether an adhesive product is environmentally friendly or green would be material to the purchasing decision.

This month 's "Inside this Issue " was written by John L. Welch, Of Counsel to Lando & Anastasi, LLP, in Cambridge, Massachusetts, and Ann Lamport Hammitte, Partner in the same firm. Mr. Welch and Ms. Lamport Hammitte have handled many trademark matters before the PTO and the Trademark Trial and Appeal Board (TTAB) over the past three decades. We also thank our other Expert Commentators, Beth Chapman and Gary D. Krugman, for reviewing "Inside this Issue. " Ms. Chapman, a member of the law firm of Obion, Spivak, McClelland, Maier & Neustadt, PC., of Alexandria, Virginia, was an Administrative Trademark Judge from 1998 to 2005, when she retired from the PTO after 32 years of service. Mr. Krugman is a member of the law firm of Sughrue, Mion, Zinn, MacPeak & Seas, PLLC, of Washington, D.C., and was a Member of the TTAB from 1982 to 1989.

Table of Cases

Alphabetical

Alveologic, LLC F-497

America's Best Franchising, Inc. v. Roger Abbott, 106 USPQ2d 1540 (TTAB 2013) F-508

Avant Garde Marketing Solutions, Inc F-490

C.F.M. Distributing Company, Inc. v.

Theresa Costantine, as Personal Representative of the Estate of Richard Costantine F-507

Charles & Keith International Pte Ltd F-479

Chestek F-488

Christopher E. Falls F-496

CityCenter Land, LLC F-469

Comité Interprofessionei du Vin de Champagne and Institut National de l'Origine et de la Qualité v. Shlomo David Jehonadav F-456

Coventry First, LLC F-495

Culinary Entertainment, Inc F-459

DeWilde, Ricko F-505

Eagle Marine Services, Ltd F-482

Empresa Cubana Del Tabaco d.b.a Cubatabaco v. General Cigar Co., Inc 1-33

Falls, Christopher E F-496

Felt Racing, LLC F-453

Florists' Transworld Delivery, Inc., USPQ2d (TTAB, March 28, 2013) F-515

G-Force, Inc F-487

Giordano, Rocco v. Ferdinand Offray, IV F-457

Good Sports, Inc F-460

Gould, Terri Yenko v. General Marketing Capital, Inc. and Supercar Collectibles Limited F-513

GP Global Limited F-489, F-492

Graphcast, Inc F-500

Gumbo Bar Franchising LLC F-461

H&M Hennes & Mauritz AB v. Undivided Design, LLC F-468

Harry Fox & Associates, Inc F-467

Hot Stuff Foods, LLC F-504

In-N-Out Burgers v. Fast Lane Car Wash & Lube, L.L.C F-464

J 2 Z F-458

Kapalua Land Company, Ltd F-510

Kitaru Innovations Inc F-512

Lone Wolf Distributors, Inc F-471

Lotus Group, LLC F-465

Mason F-480

McCrane, Inc F-486

McDonald's Corporation v. Cambrige Overseas Development Inc., 106 USPQ2d 1339 (TTAB 2013) 1-34

Moo Publishing Corp F-494

Natalie Scantlin F-481

Nations Outfitters F-485

Nettadoz Enterprises v. Cintron Beverage Group, LLC 1-36

New Dominion, LLC F-483

Nordic Naturals, Inc F-514

Northern Oil and Gas, Inc F-451

NTA Enterprise, Inc F-450

Omega Alpha Pharmaceuticals Inc F-511

Original Maryland Fried Chicken, LLC v. Theresa Costantine, as Personal Representative of the Estate of Richard Costantine F-507

PBM Products, LLC F-502

Primerica, Inc F-470

Pro-Tek Chemical, Inc F-466

Richard E. Swan F-452

Ricko DeWilde F-505

Rocco Giordano v. Ferdinand Offray, IV F-457

RTX Scientific, Incorporated v. Nu-Calgon Wholesaler, Inc., 106 USPQ2d 1492 (TTAB 2013) 1-35

Ryan M. Wiederstein F-506

Scantlin, Natalie F-481

Sela Products, LLC, _ USPQ2d _ (TTAB, March 26, 2013) F-478

Shehadeh Forever Inc F-472

SKJ Ventures, LLC F-475

Sokol and Company F-454, F-474

SoleMates, LLC F-477

Star-Brite Distributing, Inc F-484

Stoncor Group, Inc. v. Specialty Coatings, Inc F-503

Swan, Richard E F-452

Symphonic Source F-463

Terri Yenko Gould v. General Marketing Capital, Inc. and Supercar Collectibles Limited F-513

TomTom International B.V. F-476

Tribune Broadcasting Company F-455

Tri-Coastal Design Group, Inc F-499

University of Miami F-498

UpSTART, Inc F-473

Weitzen F-491

Western New York State Nursery & Landscape Association, Inc F-462

White Jasmine LLC, 105 USPQ2d 1385 (TTAB 2013) F-501

Wiederstein, Ryan M F-506

Worship Artistry, LLC F-493

Zinpro Corporation F-509

Numerical

Final (F) Decisions

Likelihood of Confusion Cases:

F-450 In re NTA Enterprise, Inc.

F-451 In re Northern Oil and Gas, Inc.

F-452 In re Richard E. Swan

F-453 In re Felt Racing, LLC

F-454 In re Sokol and Company

F-455 In re Tribune Broadcasting Company

F-456 Comité Interprofessionei du Vin de Champagne and Institut National de l'Origine et de la Qualité v. Shlomo David Jehonadav

F-457 Rocco Giordano v. Ferdinand Offray, IV

F-458 In re J 2 Z

F-459 In re Culinary Entertainment, Inc.

F-460 In re Good Sports, Inc.

F-461 In re Gumbo Bar Franchising LLC

F-462 In re Western New York State Nursery & Landscape Association, Inc.

F-463 In re Symphonic Source

F-464 In-N-Out Burgers v. Fast Lane Car Wash & Lube, L.L.C.

F-465 In re Lotus Group, LLC

F-466 In re Pro-Tek Chemical, Inc.

F-467 In re Harry Fox & Associates, Inc.

F-468 H&M Hermes & Mauritz AB v. Undivided Design, LLC

F-469 In re CityCenter Land, LLC

F-470 In re Primerica, Inc.

F-471 In re Lone Wolf Distributors, Inc.

F-472 In re Shehadeh Forever Inc.

F-473 In re UpSTART, Inc.

F-474 In re Sokol and Company

F-475 In re SKJ Ventures, LLC

F-476 In re TomTom International B.V.

F-477 In re SoleMates, LLC

F-478 In re Sela Products, LLC, _ USPQ2d _ (TTAB, March 26, 2013)

F-479 In re Charles & Keith International Pte Ltd

F-480 In re Mason

F-481 In re Natalie Scantlin

F-482 In re Eagle Marine Services, Ltd.

F-483 In re New Dominion, LLC

F-484 In re Star-Brite Distributing, Inc.

F-485 In re Nations Outfitters

Descriptive Cases:

F-486 In re McCrane, Inc.

F-487 In re G-Force, Inc.

F-488 In re Chestek

F-489 In re GP Global Limited

F-490 In re Avant Garde Marketing Solutions, Inc.

F-491 In re Weitzen

F-492 In re GP Global Limited

F-493 In re Worship Artistry, LLC

F-494 In re Moo Publishing Corp.

F-495 In re Coventry First, LLC

F-496 In re Christopher E. Falls

F-497 In re Alveologic, LLC

F-498 In re University of Miami

F-499 In re Tri-Coastal Design Group, Inc.

F-500 In re Graphcast, Inc.

Miscellaneous Cases:

F-501 In re White Jasmine LLC, 105 USPQ2d 1385 (TTAB 2013)

F-502 In re PBM Products, LLC

F-503 Stoncor Group, Inc. v. Specialty Coatings, Inc.

F-504 In re Hot Stuff Foods, LLC

F-505 In re Ricko DeWilde

F-506 In re Ryan M. Wiederstein

F-507 C.F.M. Distributing Company, Inc. v. Theresa Costantine, as Personal Representative of the Estate of Richard Costantine

F-507 Original Maryland Fried Chicken, LLC v. Theresa Costantine, as Personal Representative of the Estate of Richard Costantine

F-508 America's Best Franchising, Inc. v. Roger Abbott, 106 USPQ2d 1540 (TTAB 2013)

F-509 In re Zinpro Corporation

F-510 In re Kapalua Land Company, Ltd.

F-511 In re Omega Alpha Pharmaceuticals Inc.

F-512 In re Kitaru Innovations Inc.

F-513 Terri Yenko Gould v. General Marketing Capital, Inc. and Supercar Collectibles Limited

F-514 In re Nordic Naturals, Inc.

F-515 In re Florists' Transworld Delivery, Inc., USPQ2d (TTAB, March 28, 2013)

Interlocutory (I) Decisions

1-33 Empresa Cubana Del Tabaco d.b.a Cubatabaco v. General Cigar Co., Inc.

1-34 McDonald's Corporation v. Cambrige Overseas Development Inc., 106 USPQ2d 1339 (TTAB 2013)

1-35 RTX Scientific, Incorporated v. Nu-Calgon Wholesaler, Inc., 106 USPQ2d 1492 (TTAB 2013)

1-36 Nettadoz Enterprises v. Cintron Beverage Group, LLC

Goods and Services in Conflict1

Group I (International Classes 1-5)

(R) All-purpose cleaning preparations for household applications and degreasers for industrial and commercial use v.

all-purpose cleaning preparations; degreasing preparations not used in manufacturing process for floors and surfaces F-466

(R) Petroleum based fuel additive v.

non-chemical additives for oils and fuels F-484

(NR) Pocket knives; knives, namely, folding knives, caper knives, knives with gut hook, sports knives for skinning, bowie knives, throwing knives and fillet knives; swords; hand tools, namely, pruners; multi-function hand tools containing cutting blades and knives, screwdrivers, pliers, can and bottle openers, files and accessory screwdriver bits v.

slide action pistol frames F-471

Group II (International Classes 6-13)

(R) Automatic voltage regulators, uninterruptible power supplies, surge protectors, rechargeable batteries, and battery chafers, all for home and office use only v.

metal mounting brackets for speakers, metal wall and ceiling television/display mounts, metal satellite mounting brackets/bases; custom audio/video installation and accessory items, namely, speakers, speaker enclosures, speaker systems, cable connectors and adapters, audio interconnect and adapter cables, video interconnect and adapter cables, speaker wire, coaxial cable, communication cable, optical cable, computer cable, signal splitters, light dimmers and home automation control modules, audio/video/home automation touch pads and panels, signal grounding devices, coaxial cable clips, satellite multi-switches, remote controls for audio/video and home automation devices, television antennas, coaxial cable boots, audio video selectors, audio video distribution devices, audio video multi-zone controllers, modular wall jacks and wall switch plates, volume, controls, speaker switchers, infrared controls, infrared receivers and emitters, infrared repeaters and extenders F-478

(R) Automobiles, vans, airplanes, motorbikes, motorcycles, racing cars, bicycles, boats, personal watercraft, namely, recreational jet boats, land vehicles, power boats, go carts, all terrain vehicles, non-motorized scooters, motorized scooters v.

bicycles and bicycle structural parts F-453

Group III (International Classes 14-21)

(R) Jewelry v.

jewelry F-477

Group IV (International Classes 22-28)

(R) Clothing, namely, t-shirts and caps v.

clothing for motorcycle enthusiasts, namely, tee shirts, sweat shirts, hooded sweat shirts, tank-tops, sleeveless shirts, hats, caps, underwear, jackets, bandannas, gloves F-460

(R) Clothing, namely, women's sleepwear, robes, loungewear v.

clothing, namely t-shirts, tank tops, collared golf shirts, sweaters, jackets, jogging suits, sweat shirts, sweat pants, short pants, swim wear, dress shirts, skits [sic], blouses, dress pants, caps, hats and bandanas, headwear, shoes F-469

(R) Headwear; footwear; and clothing, namely, t- shirts, shirts, cardigans, blouses, jackets, pants, skirts, dresses, belts, hats, scarf, gloves, tunics, knit wear, namely, heavy knitwear; shorts, sweatshirts, underwear, lingerie, bras, hot pants, suspenders, leggings, tights, socks, swimwear, bikinis, bandanas, tank tops, slippers, mittens; clothing, namely trousers, T-shirts, coats, jackets, cardigans, skirts, dresses, blouses, overalls, underwear, jumpers, vests, fur coats and jackets, pants, hoods, shorts, blazers, men's suits, women's suits, evening gowns, tops, jeans, belts, shoulder wraps, gloves, mittens, scarves, ties, wraps, dressing gowns, night gowns, pajamas, sleepwear, bathing suits, swimwear, bikinis, socks, stockings, hats, caps, shawls, berets, and veils; headwear; footwear v.

T-shirts F-468

(R) Shoes v.

gloves; headwear; jackets; neckwear; pullovers; shirts F-450

(R) Toys, namely toy garden tools and playsets comprised of toy garden tools v.

children's educational toys for developing fine motor, oral language, numbers, counting, colors and alphabet skills sold in a fabric bag which has a clear vinyl window for viewing small trinkets and toys securely contained within the bag itself; children's multiple activity toys; electric action toys; electronic action toys; electronic learning toys; pull toys; push toys; stacking toys; toy tools; toy vehicles F-459

Group V (International Classes 29-34)

(R) Bakery goods v.

mixes for bakery goods F-474

(R) Cattle v.

beef; meat F-47 5

(R) Energy drinks; canned fresh fruits, fresh fruits, and fruit juices and fruit nectars v.

light beverages, namely, energy drinks F-465

(R) Hot sauce and sauces v.

seasoned coating for meat, fish, poultry F-454

(R) Sparkling wine v.

alcoholic beverages except beers F-456

Group VI (International Classes 35-42)

(R) Online counseling, advice and support to individuals on the subject of reduction and elimination of personal debt v.

providing temporary use of a Web-based software application, marketed exclusively through the proprietary's [sic] sales force of independent contractor sales representatives and accessible only through proprietary's [sic] company-branded website, for assimilating financial information, namely, financial data provided directly by the customer and financial data obtained directly from the customer's consumer credit report, to permit the customer to formulate and calculate debt payoff plans. F-470

(R) Acquisition of oil and gas assets, namely, acquiring oil and gas assets on behalf of shareholders; oil and natural gas production services; and exploration, searching, and prospecting of oil and gas; analysis services for oil and gas exploration v.

oil production services and oil exploration F-451

(R) Charitable services, namely, providing training in the field of diversity training, leadership, community services, youth development, education and performing arts v.

educational services, namely, providing entrepreneurship programs to high school students in a multiple year program F-47 3

(R) Computer programming for others; computer software design for others; rental of computers and software; consultation services and technical research in the field of computer technology; maintenance of computer software; and retail and wholesale store services featuring computer software, computer hardware, computer packages, kits, computer parts, fittings and accessories and related printed materials v.

cloud computing featuring software for use in customer relationship management (CRM) database management, deduplication, and data cleansing F-463

(R) Conducting and organizing of beauty pageants; organization and production of live shows; presentation of live show performances and presentation of live performances by a musical band; conducting and organizing entertainment beauty contests; education and entertainment services in the nature of content preparation, production of live or recorded audio, visual or audiovisual material through film or videotape, and distribution of motion picture films, television and radio programs for others; entertainment services provided by means of the Internet, namely, providing a web site featuring musical performances, musical videos, related film clips, photographs, and other multimedia materials featuring beauty pageant and entertainment information about musicians, actors, celebrities; providing news in the nature of current event reporting; providing information on education and entertainment v.

arranging of contests; entertainment in the nature of beauty pageants; entertainment services, namely, conducting contests F-480

(R) Electronic data transfer, namely, services to disseminate real-time sports and motor sports data via computer v.

television broadcasting in the field of news and current events F-455

(R) Installation, construction, maintenance and repair of transmission facilities, energy equipment, and energy systems; maintenance and repair of the electrical or mechanical systems of others to eliminate or reduce electric power interruptions, fluctuations, transients, and harmonics; land development services, namely, planning and laying out of power plants; power plant construction; drilling and pumping oil and natural gas; installation of home security systems and computer programming services for others; power quality analysis, design, and engineering through the selection, operation, and installation of devices or equipment to reduce or eliminate electric power interruptions, fluctuations, transients, and harmonics in the electrical or mechanical systems of others; engineering and design of transmission facilities, energy equipment, energy systems for others; oil and natural gas exploration; monitoring of home security systems; consultation services in the field of development, control, use and conservation of electrical energy and natural gas v.

analysis services for oil field exploration; exploration and searching of oil and gas; gas exploration; geophysical exploration for the oil, gas and mining industries; oil field exploration; oil prospecting; oil prospecting, namely, well logging and testing; performing oil well diagnostics; petroleum exploration; providing technology information in the oil and gas industry F-483

(R) Restaurant and bar services v.

restaurant services featuring sandwiches F-472

(R) Restaurant services v.

bar and restaurant services F-461

(R) Ship agent services, namely, monitoring of maritime vessel services; arranging for insurance; arranging for insurance for vessels; arranging for legal services and medical services for maritime vessel crew members; contracting for maintenance and repair of vessels; contracting with others for the benefit of vessels and their owners; attending to loading and unloading of vessels; marine insurance underwriting; financing services in the field of vessels; administration of payroll for others; and freight and cargo brokerage; cargo handling; freight transportation by sea and air; chartering of vessels; brokerage of vessels; ship bunkering arrangement; delivery of mail, food, grocery products and parcels to vessels in port v.

operation of port facilities for others; booking and scheduling cargo transportation for others and stevedoring services; cargo handling; storage of goods for others F-482

(NR) Motor vehicle body repairing and painting v.

automobile cleaning and car washing; automobile washing; car washing; vehicle washing F-464

Group VII (Goods and services in more than one group)

(R) Firearms; vests for use in wearing removable bullet proof panels, nylon ballistic cases for use in carrying weapons and ammunition, and backpacks, bags and pouches which can be attached to nylon ballistic outer carriers v.

firearm attachments, namely, modular external rail systems for M-16, M4 and AR15 rifles for use by military and law enforcement professionals F-452

(R) Handbags; tote bags v.

baseball caps; baseball caps and hats; cap visors; caps; hats F-481

(R) Luggage, backpacks, fanny packs, all purpose sport bags, tool packs sold empty and umbrellas; all purpose sport bags; all-purpose athletic bags; all-purpose carrying bags; athletic bags; backpacks; bags and holdalls for sports clothing; carry-on bags; luggage; roll bags; small backpacks; sports bags; tool bags sold empty; umbrellas v.

cases for weapons in the nature of firearms for use by law enforcement, military and security personnel; cases for personal defense spray; firearm accessories, namely magazine pouches for use by law enforcement, military and security personnel and combat cases, field cases, duty cases, and modular cases for use by law enforcement, military and security personnel, all in the nature of carrying cases; tactical packs, assault packs, and field packs for use by law enforcement, military and security personnel, all in the nature of carrying cases; messenger bags and shoulder bags for use by law enforcement, military and security personnel F-467

(R) Mail order retail catalog services featuring clothing, furniture, home furnishings and accessories, dining room items and kitchenware, bedroom linens and accessories, patio, garden and yard furnishings, stationery, art prints, jewelry and leather goods v.

spectacles, eyeglasses; sunglasses; chains, cords, frames and cases for the aforesaid goods; magnetic encoded cards, namely, gift cards with stored value and customer loyalty cards; credit and debit cards; electronic calculators; cases, sacks, bags, covers and clips; all for use with electronic devices, mobile telephones, MP3 players, computers, personal digital assistants; mouse pads; wrist rests for use with computers; jewelry, costume jewelry, necklaces, bracelets, earrings; medallions; horological and Chronometrie instruments, wrist watches; key rings of precious metal; cuff links, ornamental pins, tie clips, tie pins, precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes, namely, charms in precious metals or coated therewith; handbags for ladies and men; articles made of leather or imitation leather, namely, cases, bags, beach bags, traveling bags, pouches in the nature of bags, card cases, namely, business card cases and credit-card cases made of leather or imitation leather; leather and imitations of leather, umbrellas, handbags, briefcases, purses, purses of precious metals; traveling trunks, wallets, coin purses, key cases, leather shoulder belts; footwear; socks and stockings; head scarves, neck scarves, shoulder scarves, shawls, ties, bow-ties, gloves, foulards, headwear, headgear, footwear for men and women, shoes, slippers, boots, lingerie, brassieres, panties, lingerie tops, undershirts, underpants; skirts, dresses, shorts; blouses, tee-shirts, poloshirts, shirts, cardigans, chemises, vests, blouses, trousers, pants, neckties, coats, wind resistant jackets and wind resistant tops, sweaters, pullovers, waistcoats, jackets, overcoats, blazers, hunting jackets, gabardines, bermudas, ponchos, stoles, hats, caps, suspenders, neckerchiefs, pajamas, mittens, bathing costumes, blousons, bathrobes, sports footwear, tracksuits, ready-made linings for clothing, namely, finished textile linings for clothing, swim wear, thermal jackets, thermal underclothing, belts for clothing, bathing trunks, beach shoes, boots, sports shoes, underwear, sportsclothing, namely, shorts, shirts, and pants; the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in a retail store, in a wholesale outlet or from a general merchandise catalogue by mail order or from a general merchandise website on the global or local telecommunications networks in the field of clothing, leather goods, jewelry, footwear, headgear, eyewear, electronic goods, computer peripherals, accessories for use with computers and electronic goods; compilation of mailing lists; ordering services by means of mail, telephone and all other communication and telecommunication, direct mail advertising, business advisory and business management services, advertising services, display services for merchandise, publicity services, marketing and promotional services, market analysis and research, import/export agencies, procurement, namely, buying of goods in the field of clothing, leather goods, jewelry, footwear, headgear, eyewear, electronic goods, computer peripherals, accessories for use with computers and electronic goods on behalf of a business, window dressing; organization and supervision of incentive schemes, loyalty schemes and bonus schemes for others; business services for franchises, namely, offering business management assistance in the establishment of a retail store; provision of business assistance and business supports, namely, advice and consultancy in the operation and establishment of franchises; management of business projects for others relating to franchise; marketing and business developments of franchise; provision of business information relating to franchise F-479

(R) Plants; landscape construction services; and landscape gardening, landscape gardening design for others, interior landscape design and gardening services and interior plant care services v.

arranging and conducting trade show exhibitions in the field of gardening and landscaping F-462

(R) Retail store services featuring golf equipment v.

house mark for a full line of clothing, footwear, headwear F-458

(R) Spectacles, spectacle frames, tinted glasses, sunglasses; jewelry of precious metal and stones, imitation jewelry, cuff links, tie pins, precious stones, imitation precious stones, Chronometrie instruments, namely, watches and pouches for watches sold together, and clocks; leather and imitations of leather and goods made of these materials and not included in other classes, namely, boxes of leather or of leather board in the nature of carrying cases, envelopes of leather for packaging; leather or imitation leather shopping bags, school bags, attaché cases, leather cases, briefcases, fine leather goods, namely, pocket wallets, purses, key-holders, card holders, namely, credit card wallets, credit card cases; trunks and traveling bags, namely, trunks, valises, traveling bags, garment bags for travel, vanity-cases for travel sold empty, rucksacks, hand-bags for traveling, beach bags for traveling, shoulder bags for traveling, textile tote bags for traveling, suit cases, canvas traveling sacks, luggage, drawstring pouches for traveling, and pouch bags for traveling composed of leather, textile, and felt; umbrellas; parasols; and walking sticks, namely, canes, walking-stick seats; clothing and underwear, namely, shirts, sweaters, sweatshirts, vests, pants, skirts, dresses; dress bodies, namely, corsets; suits, waistcoats; waterproof clothing, namely, waterproof jackets, waterproof coats, waterproof trousers; coats, pullovers, trousers, dresses, jackets, shawls, stoles, sashes for wear, scarves, neck ties, ties, braces in the nature of suspenders, gloves, belts, stockings, tights, socks, bathing suits, bath robes; footwear, namely, shoes and boots; headgear, namely, hats, caps and kerchiefs; and advertising, business management, business administration; office functions v.

online retail store services featuring clothing; retail apparel stores F-485

(R) Wireless communication apparatus; namely, computer programs for modems, wireless local loop telephones, cellular telephones, Personal Communication Services (PCS) handsets, Personal Digital Assistants (PDAs); Personal Digital Assistant PDA devices processors, namely, handheld digital devices having programmable capacity and capacity to communicate by electronic, digital, microwave, broadband, analog, radio, and satellite using voice, graphics, video, data, sensory, infrared, ultraviolet, and laser audio transmissions in the nature of electronic personal organizers, mobile phones, smartphones, portable and pocket-size personal computers, palmtop computers in the nature of electronic personal organizers, personal navigational global positioning systems (GPS), handheld and portable multimedia players, smart computers having context, user and location awareness and which may be outfitted and adaptable with modem, memory, PC MCIA slots, disk drives, keyboard, and monitor, mobile digital devices with computer notebook functionality and connectivity in a handheld portable micro-sized form and which may be adaptable and fitted with modem, memory, PC MCIA slots, disk drives, keyboard, and monitor in the nature of electronic personal organizers, mobile phones, smartphones, portable and pocketsize personal computers, palmtop computers in the nature of electronic personal organizers, personal navigational Global Positioning Systems (GPS), handheld multimedia players, smart computers having context, user and location awareness smart computers having context, user and location awareness and which may be outfitted and adaptable with modem, memory, PC MCIA slots, disk drives, keyboard, and monitor, wireless digital devices in the nature of mobile and handheld phones, smartphones, imaging smartphones, hands-free phones, handheld multimedia players, electronic personal organizers, electronic personal information management organizers, portable and pocket-size personal computers, palmtop computers in the nature of electronic personal organizers, smart computers having context, user and location awareness and which may be outfitted and adaptable with modem, memory, PC MCIA slots, disk drives, keyboard, monitor, pocket printer, pocket camera, and pocket video camera, remote devices in the nature of portable micro sized computers with notebook functionality for the mobile enterprise having capabilities of remote desktop, remote email and transparency access to data, portable personal navigational Global Positioning Systems (GPS), smart computers having context, user and location awareness and with integrated multidimensional data, sound, video and graphics, portable multimedia player, public kiosks in the nature of computer terminals, and portable computer terminals both allowing dial-up connectivity and personal computer access, communication devices having capacity for acquisition, multiplexing, transmission, encoding, compression, filtering, transforming, decompression, decoding, demultiplexing and reception of communications data in the nature of smart phones, portable computers, portable interactive learning computers, electronic organizers, and voice-over software for transmitting and receiving communication signals, games and other data, parts and components thereof and accessories therefor; integrated circuits containing chipsets for spread spectrum modulation and demodulation, error correction encoding and decoding, voice coding and preprogrammed memories containing processor instructions; computers, notebook computers, laptop computers, portable computers, handheld computers, interactive computer kiosks used in retail, entertainment and hospitality establishments; computer programs for controlling access to and use of standalone computers, namely, network access server hardware and operating programs for use with stand-alone kiosk computers which may provide Internet access points, microcomputers, computer hardware, namely, semiconductors, microprocessors, integrated circuits, computer chips, computer motherboards, computer daughterboards, computer graphics boards, computer interface boards, computer accelerator board, circuit boards; computer workstations, namely, processors, central processing units, controllers, namely, electrical controllers, ethemet controllers; graphic cards; multi-output computer cards that feature an analog mixer, allowing a computer-based recording system to behave more like a traditional analog one; multimedia chipsets with integrated graphics and storage for desktop and notebook computer environments, computer chipsets for use in transmitting data to and from a central processing unit, computer peripherals, computer keyboards, computer printers, computer monitors, computer driver utilities programs for graphics; integrated circuits for spread spectrum modulation and demodulation error correction encoding and decoding, voice coding and preprogrammed memories containing processor instructions; software programmable microprocessors; hand-held devices, namely cellular telephones, digital telephones, Personal Digital Assistants (PDAs), tablet PCs, electronic personal organizers, handheld personal computers, MP3 players, handheld joy sticks and remote controls for playing interactive video games; extended multimedia software recorded on magnetic media featuring games and stories, children's educational software featuring instruction in the field of graphics, animation, interactive communications, movies and music videos; mobile computers, mixed-signal integrated circuits, personal electronics hardware with digital media playback and recording capabilities; wireless local loop telephones; software and hardware for management, storage, communications and network management of digital media and enhancement of graphical and video display; software for interactive multimedia disc players which allows the contents of multimedia to be transmitted across global communications networks; telematic systems namely, wireless mobile PC devices designed for use in moving vehicles that can provide entertainment, mobile telephony, vehicle monitoring, navigational information; satellite navigational systems, namely a global positioning system; entertainment systems comprising entertainment handsets, television displays and high definition television displays, chrome programmable and three-dimensional video engines, hardware digital accelerators supporting displays, namely, rotating monitors and multiple screen configurations, featuring real-time video effects and filtering; consumer electronics systems comprised of modems, base transceiver stations and portable stations, switching platforms, access nodes and data cards for scrambling, descrambling, encoding and decoding of voice, data, image and video transmissions, entertainment hardware and software that can record, create and play content, namely, video game software, interactive video games of virtual reality comprised of computer hardware and software; television sets, high definition television (HDTV) sets, set top boxes, hardware for graphic displays; hardware for storage, transmission, reception, reproduction, operation, processing, generation of video, graphics, electronic messages, voice messages, data, sensory signals, sound and images; computer software for use in providing multiple user access to a global computer information network for searching, retrieving, transferring, manipulating and disseminating a wide range of information; computer firmware, namely, computer utility software and other computer software used to maintain and operate computer system all stored in a computer's read only memory or elsewhere in the computer's circuitry, operating system software; BIOS software; computer networking hardware, telecommunications and data networking hardware, namely devices for transporting and aggregating voice, data, and video communications across multiple network infrastructures and communications; parts and fittings for use with wireless telephones, computer and telecommunications networking software for wireless network communications and connectivity, networking servers, computer network adapters, networking switches, routers, hubs, wireless and wired modems, computer communication and networking products, namely, parallel communication interface adapters, serial communication cards, synchronous communication cards, telephony cards; mobile telephones, computer software for use in performance and display of graphics and digital media; computer software for visual, voice and touch activated devices for generating, storing, transmitting and receiving communication signals and other data; semiconductors, integrated circuits, electronic subassemblies, subassemblies comprising single board computers, serial and parallel interface cards, disc and tape controller cards, parts and fittings for all of the aforementioned goods not included in other classes; downloadable specification sheets, data sheets, computer reference manuals, user guides and documents providing instruction in the use and operation of various electronic digital devices; computer hardware, namely, computer semiconductors, computer chips, microprocessors, computer data processors, integrated circuits, computer chipsets for use in transmitting data to and from a central processing unit, computer main boards, computer motherboards, computer interface boards, circuit boards, multimedia accelerators boards, computer graphic cards, serial and parallel interface cards for data processing equipment in the form of printed circuits, computer cards for connecting portable devices to computer networks, central processing units, computer routers, computer hubs, computer servers, computer network adapters, computer switches, audiovisual receivers and converters, network access server hardware, switches, routers, hubs, modem, video graphic controllers, sound cards, video display cards, electric power supplies, computer thermal and cooling devices, computer input, output and storage devices, hard drives for computers, computer memories, blank computer discs, computer disk drives, computer accessory organizer storage cases, magnetically encoded communication debit cards, microcomputers, laptop computers, notebook computers; handheld devices, namely, personal digital assistants, PC tablets, hand-held high-definition computer monitors for viewing video programming, electronic personal organizers, Personal Digital Assistants (PDA's), MP3 players; computer monitors, computer keyboards, computer mice, computer printer, computer scanner, computer peripherals and parts thereof; computer video conferencing equipment, namely, terminals, videophones, video processors, communications software for interacting over wireless, circuit switched or packet switched voice, or packet switched video networks; video output game machines for use with televisions; interactive remote controls for computer game equipment; computer hardware for telecommunications; radio, telephone, television, computer, Internet, global positioning system (GPS), microwave, satellite, broadband, radar, infrared, Wi-Fi, digital and analog signal transmitters; telecommunication devices, namely, Communication Services (PCS) handsets, telephones, cellular telephones, digital telephones, smart phones; sensory-activated interactive computer kiosks used in retail, entertainment and hospitality establishments; computer programs for controlling access to and use of stand-alone network access server computers; computer software, namely, software to manipulate, disseminate, search and retrieve information; computer operating software; computer firmware, namely, data synchronization programs; application development tool programs; computer software for the automatic configuration of computer networks; software for communication and telecommunication in local or global communications and computer networks; diagnostic test software; security software for information access control and secure communications; software for use in database management; computer utility software for use with computers; telecommunications equipment, namely, devices for transmission and collecting voice, data and video communications; computer peripherals; computer software to maintain and operate computer systems; computer software for wireless network communications and connectivity; entertainment software, namely, computer game software; electronic publications, namely, instructional manuals featuring instruction in the field of computers, telephony, education, graphics, animation, interactive communications, computer games, movies and music videos; downloadable software featuring instruction in the use and operation of various electronic digital devices; computer training manuals recorded on computer media; computer operation manuals in electronic format and printed instructional manuals sold as a unit v. computer hardware and software for use with satellite and GPS navigation systems for navigation purposes; computer software featuring route planners and electronic maps for navigation and digital dictionaries for translation purposes; software for travel information systems for providing or displaying travel advice and information regarding petrol stations, car parks, restaurants, car dealers and other travel and transport related information; software for information management for the transport and traffic sector; software for viewing electronic maps; downloadable electronic maps; software for operating route planners; route planners in the form of hand-held personal computers; location, orientation and navigation, and global positioning systems (GPS) consisting of computers, computer software, transmitters, global positioning system receivers (GPS) and satellite receivers, network link for interface systems, patch cables, and parts and accessories therefor; holders for hand-held computers; satellite and radio transmitter and receiver apparatus technology, namely, processors, mobile telephones and receivers; telecommunications installations, networks and apparatus, namely, mounting racks especially fitted for telecommunications hardware and telecommunication switches; computer terminals, all in particular for the use of navigation systems, route planners, and digital maps; secure and nonsecure telecommunications services, namely, transmission and delivery of digital data, photographs, audio files, data, information and image signals by means of computers, cable radio and satellite transfer, all in particular for navigation systems, route planners and the use of electronic maps; telecommunication services, namely, providing of temporary access to non-downloadable software providing map images and geographical and itinerary information obtained with the aid of a global positioning system (GPS) to enable others to determine locations or directions accurately; secure and insecure telecommunication services for the electronic transfer and temporary storage of digital data, photographs, audio files, data, information and image signals, all in particular for navigation systems, route planners and the use of electronic maps; technical consultancy in connection with the aforementioned services; providing of navigation and information services, namely, information relating to traffic and traffic jams; all the aforesaid services also provided via a communications network or a cellular telephone or wireless navigation system F-476

Part I - Final Decisions

Trademark Trial and Appeal Board - Selected Final Decisions. (Note: " USPQ2d (TTAB)" in heading indicates decision has been initially recommended for publication as citable precedent in a printed volume. Name in [ ] indicates writer of Board's opinion.) After this issue has circulated, remove the staples and file the pages containing abstracts with "F" numbers (PART I) behind the FINAL tab in your binder and after the pages from the previous issue of this volume.

Likelihood of Confusion Cases:

(F-450) In re NTA Enterprise, Inc., S.N. 77712818, unpubl'd. Refusal to register affirmed, March 5, 2013. Blynn L. Shideler of The BLK Law Group for appellant; Susan A. Richards for TMEO. Holtzman, Taylor, and [Hightower], Administrative Trademark Judges (11 pages). Available in slip opinion only.

(F-451) In re Northern Oil and Gas, Inc., S.N. 85188046, unpubl'd. Refusal to register affirmed, March 5, 2013. Benjamin Armitage of Clise, Billion & Cyr, P. A. for appellant; Fong Hsu for TMEO. Cataldo, [Wolfson], and Adlin, Administrative Trademark Judges (8 pages). Available in slip opinion only.

F-452) In re Richard E. Swan, S.N. 85209952, unpubl'd. Refusal to register affirmed, March 5, 2013. Cheryl A. Clarkin of Barlow, Josephs & Holmes, Ltd. for applicant; Colleen Kearney for TMEO. Zervas, Wellington, and [Hightower], Administrative Trademark Judges (16 pages).

SPARTAN RAIL (RAIL disclaimed), subject of an application to register by Richard E. Swan for "firearm attachments, namely, modular external rail systems for M-16, M4 and AR15 rifles for use by military and law enforcement professionals" in International Class 13, is likely to cause confusion with the previously registered marks SPARTAN GUNWORKS (GUNWORKS disclaimed) for "firearms" in International Class 13 and SPARTAN ASSAULT SYSTEMS (ASSAULT SYSTEMS disclaimed) for "vests for use in wearing removable bullet proof panels" in International Class 9, "nylon ballistic cases for use in carrying weapons and ammunition" in International Class 13, and "backpacks, bags and pouches which can be attached to nylon ballistic outer carriers" in International Class 18. Registration had been finally refused under Section 2(d) of the Trademark Act.

Swan submitted third-party registrations as attachments to a request for remand and with his reply brief. Swan sought remand on the basis that Examining Attorney Kearney did not point out that the third-party registrations were not usebased in her denial of the request for reconsideration but did so in her appeal brief. The Board denied the request for remand. The Board is not convinced that the circumstances warrant suspension and remand; however, to avoid prejudice to Swan based on this unique circumstance, the Board considers the evidence.

The Board finds SPARTAN to be the dominant element of all three marks. SPARTAN is arbitrary, and the disclaimed terms RAIL, GUNWORKS, and ASSAULT SYSTEM are descriptive. Descriptive matter has less significance in creating a mark's commercial impression. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000).

The Board observes that the marks share the same structure. The Board finds that consumers are likely to think that Swan's products are a line extension from the same source as the cited registrations.

Because SPARTAN is arbitrary, the Board finds that the marks have similar commercial impressions. See In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997).

The Board finds the marks similar in sound, meaning, and commercial impression.

Swan submitted SPARTAN registrations for explosives and fireworks as well as third-party registrations and Internet evidence to show that explosives and fireworks are related to firearms. Swan argued that SPARTAN is commonly used in connection with related goods and thus is entitled to a narrow scope of protection.

The probative value of third-party trademarks depends on their usage. Palm Bay at 1693. Because the record includes no evidence about the extent of third-party uses, the probative value of this evidence is minimal. Han Beauty, Inc. v. AlbertoCulver Co., 236 F.3d 1333, 57 USPQ2d 1557, 1561 (Fed. Cir. 2001).

Swan argued that the coexistence of SPARTAN marks shows that the Office has recognized that SPARTAN is entitled to a narrow scope of protection. The Board is not persuaded. Each case must be decided on its own merits. In re Nett Designs Inc., 236 F.3d 139, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).

The Board observes that the SPARTAN GUNWORKS goods are firearms. Because Swan's firearm attachments are for use with rifles, the Board finds the goods complementary. Goods with complementary uses have generally been found sufficiently related that confusion would be likely if they were marketed under similar marks. See In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

The Examining Attorney submitted third-party registrations covering firearms and firearm attachments. Third-party registrations have probative value to the extent that they suggest that the identified goods may emanate from a single source. See In re Davey Prods. Pty. Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009).

The Board finds the goods related.

Registrant's Class 13 SPARTAN ASSAULT SYSTEMS goods are nylon ballistic cases for use in carrying weapons and ammunition. Because Swan's firearm attachments are for use with rifles, the Board finds the goods complementary.

The Examining Attorney submitted Internet evidence showing retailers of firearms and firearm attachments as well as firearm attachments and gun cases. The Board finds that the goods travel through the same channels. Swan's goods are limited to those for use by military and law enforcement professionals, but there are no restrictions in the cited registrations, so those goods may also be offered to military and law enforcement professionals. See Octocom Sys., Inc. v. Houston Computer Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).

Swan argued that consumers of both its goods and registrants' goods are knowledgeable with respect to the weapons industry. Even careful, sophisticated purchasers are not immune from source confusion. See In re Cynosure, Inc., 90 USPQ2d 1644, 1647 (TTAB 2009).

Accordingly, the Board affirms the refusal to register Swan's mark SPARTAN RAIL.

(F-453) In re Felt Racing, LLC, S.N. 85415875, unpubl'd. Refusal to register affirmed, March 5, 2013. Eric L. Tanezaki of Stetina Branda Garred & Bracker for appellant; Shaunia Carlyle for TMEO. Bucher, Wellington, and [Masiello], Administrative Trademark Judges (8 pages). Available in slip opinion only.

(F-454) In re Sokol and Company, S.N. 85165569, unpubl'd. Refusal to register affirmed, March 8, 2013. David G Brezina of Ladas & Parry LLP for appellant; Gene V.J. Maciol, H, for TMEO. Quinn, Cataldo, and [Masiello], Administrative Trademark Judges (13 pages). Available in slip opinion only.

(F-455) In re Tribune Broadcasting Company, S.N. 85168362, unpubl'd. Refusal to register affirmed, March 8, 2013. Michael P. Hendershot and Salvador K. Karotti for appellant; Michele-Lynn Swain for TMEO. Cataldo, Wolfson, and [Lykos], Administrative Trademark Judges (10 pages). Available in slip opinion only.

(F-456) Comité Interprofessionei du Vin de Champagne and Institut National de VOrigine et de la Qualité v. Shlomo David Jehonadav, Opp. No. 91195709, unpubl'd. Opposition dismissed, March 8, 2013. Peter M. Brody of Ropes & Gray LLP for opposer; Sergei Orel of Law Office of Sergei Orel LLC for applicant. Holtzman, Mermelstein and [Masiello], Administrative Trademark Judges (13 pages).

Shlomo David Jehonadav filed an application to register CHAMPARTY for "alcoholic beverages except beers." Comité Interprofessionei du Vin de Champagne and Institut National de l'Origine et de la Qualité (CV&IN) opposed registration on the ground of likelihood of confusion with the common law certification mark CHAMPAGNE for "sparkling wine." Jehonadav denied the salient allegations.

CV&IN contended that CHAMPAGNE is a common law certification mark and that under French law they are charged with the control, promotion, and protection of that mark in the United States. CV&IN have thus shown that they are not mere intermeddlers and have established standing. See Cunningham v. Laser GolfCorp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000).

The Board finds the goods legally identical. The Board presumes that Jehonadav's goods include all goods of the type described, including sparkling wines identical to those certified by CV&IN. Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d. 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The Board presumes that those goods move in all channels of trade normal for those goods and are available to all classes of purchasers for those goods, including the trade channels and customers of CV&IN's certified producers. Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973).

CV&IN argued that CHAMPARTY is similar to CHAMPAGNE because the terms differ only by virtue of the last three letters and thus are confusingly similar. The Board finds it unlikely that consumers would mistake one mark for the other, even if they were used in connection with identical goods. The Board observes that a salient feature of CHAMPARTY is PARTY, which forms the latter part of the mark. The Board concludes that customers would notice the distinct impression made by this feature of the mark and the suggestion of the word PARTY. The Board finds that PARTY, which is absent from CHAMPAGNE, is likely to counteract the visual similarities between the two marks.

The Board finds that the marks are also unlikely to give rise to phonetic confusion. The Board observes that although there is no single correct pronunciation for a coined mark like CHAMPARTY, consumers will likely pronounce the latter portion of the mark as the common word PARTY. The second syllable of CHAMPAGNE rhymes with "pane, " a sound that is not likely to be confused with PARTY. The Board finds that if CHAMPAGNE is pronounced according to French standards, it has a sound that is nearly unique in the U.S. market. Finally, if consumers perceive CHAMP in CHAMRARTY, they will pronounce it in a manner substantially different from the first syllable of the word CHAMPAGNE.

As to meaning, the Boand notes that CHAMPAGNE is well known to U.S. consumers as a type of sparkling wine. CHAMPARTY, by contrast, is without any literal meaning. CV&IN argued that PARTY suggests a connection with CHAMPAGNE, which is associated with celebrations. The Board notes the lack of evidence that CHAMPAGNE is more closely associated with celebrations than any other alcoholic beverage.

The Board finds the marks dissimilar in appearance, sound, and meaning.

CV&IN argued that consumers will view CHAMPARTY as a brand extension of CHAMPAGNE. The Boand observes that there is no support for this allument in the recond and no other reason for consumers to perceive a relationship between the marks.

CV&IN's claim that CHAMPAGNE is famous was supported only by the conclusory statements of CV&IN's witnesses and a small selection of advertisements. The Board concludes that the record contains insufficient evidence of fame to have a bearing on its assessment of the strength of CHAMPAGNE. Lacoste Alligator S.A. v. Maxoly Inc., 91 USPQ2d 1594, 1597 (TTAB 2009).

Finally, the Board is unpersuaded by CV&IN's effort to show that Jehonadav intended to trade on the goodwill of CHAMPAGNE. The Board observes that there is no direct evidence to support this argument, and the mere feet that the marks share some features does not support such an inference.

Accordingly, the Board dismisses CV&IN's opposition to Jehonadav's mark CHAMPARTY.

(F-457) Rocco Giordano v. Ferdinand Offray, IV, Opp. No. 91200621, unpubl'd. Opposition dismissed, March 8, 2013. Daniel R. Fuchs for opposer; Ferdinand Offray, IV, pro se. Cataldo, Lykos, and [Kuczma], Administrative Trademark Judges (7 pages). Available in slip opinion only.

(F-458) In re J 2 Z, S.N. 77934568, unpubl'd. Refusal to register affirmed, March 12, 2013. George A. Pelletier, Jr., of Cantor Colburn LLP for applicant; Barbara A. Rutland for TMEO. Quinn, [Grendel], and Adlin, Administrative Trademark Judges (15 pages).

2 GOLF & MORE & design (the mark consists of 2 GOLF & MORE and a design element; shown here), subject of an intent-to-use application to register by J 2 Z for "house mark for a full line of clothing, footwear, headwear," is likely to cause confusion with the previously registered mark 2GOLF for "retail store services featuring golf equipment," and a disclaimer of GOLF is required. Registration had been finally refused under Sections 2(d) and 6(a) of the Trademark Act.

In determining whether confusion is likely, the Board considers all relevant du Pont factors. The Board considers the appearance, sound, connotation, and commercial impression of the marks in their entireties. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). The test is not whether the marks can be distinguished in a side-by-side comparison but whether their overall commercial impression is similar enough that confusion as to source is likely. See Midwestern Pet Foods, Inc. v. Société Des Produits Nestle S.A. ,685 F.3d 1046, 1053, 103 USPQ2d 1435, 1449 (Fed. Cir. 2012). The focus is on the recollection of the average purchaser, who normally retains a general, rather than specific, impression of trademarks. See In re Association of the United States Army, 85 USPQ2d 1264, 1269 (TTAB 2007). Although marks are to be compared in their entireties, it is nonetheless reasonable, when a mark consists of different elements, to accord more sourceidentifying significance to the dominant portion. See In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004).

The Board finds that the dominant feature of J 2 Z's mark is the large stylized numeral 2 appearing above the highly descriptive words GOLF & MORE. Because the cited mark is depicted in standard characters, it may be displayed in any manner or form. See Trademark Rule 2.52. The Board finds that if the 2 in both marks is featured as a dominant element, both would create a commercial impression in which 2 would be perceived as the source indicator.

The Board finds that J 2 Z's & MORE does not distinguish the mark's sound or connotation. As to 2GOLF or 2 GOLF, there is no correct pronunciation of trademarks. See In re Viterralnc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012).

The Board finds that 2 is highly distinctive as applied to the goods and services, and its presence in both marks along with other non-distinctive wording supports a finding that the marks are similar.

The Board finds the marks similar in sound, appearance, and meaning.

The issue of likelihood of confusion must be determined on the basis of the goods and services as set forth in the involved application and the cited registration, not in light of what such goods and services are shown or asserted to actually be. See Packard Press Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1354 (Fed. Cir. 2000). If the goods and services are identified broadly in the application at issue and in the cited registration, it is presumed that they encompass all goods and services of the nature and type identified. See Canadian Imperial Bank of Commerce, National Association v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987).

The Board presumes that J 2 Z's broadly described clothing and headwear includes clothing and headwear used in connection with playing golf. The Board observes that J 2 Z's website confirms this and that J 2 Z acknowledged this in its brief. Examining Attorney Rutland submitted Internet evidence showing retailers selling clothing and headwear together with golf equipment. Particular goods and the service of selling those goods at retail are related goods and services. See In re Hyper Shoppes, 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).

The Board finds that the trade channels and classes of purchasers of the respective goods and services, which are unrestricted in the identifications, are similar and related.

The Board finds that the purchasers of the parties' respective goods and services include ordinary consumers, who would exercise a normal degree of care in making their purchasing decisions.

The Board finds that 2 is highly distinctive as applied to the goods and services at issue and that the cited mark is entitled to a broad scope of protection.

The Board concludes that a likelihood of confusion exists.

A requirement for a disclaimer of unregistrable matter is appropriate when that matter is merely descriptive of the goods. See In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087 (Fed. Cir. 2005). The Board finds that J 2 Z's goods are for use in connection with playing golf and that GOLF is merely descriptive. See In re Chamber of Commerce of the United States of America, 675 F.3d 1297, 102 USPQ2d 1217 (Fed. Cir. 2012). The Board affirms the refusal based on J 2 Z's failure to disclaim GOLF.

Accordingly, the Board affirms the refusals to register J 2 Z's mark 2 GOLF & MORE & design.

(F-459) In re Culinary Entertainment, Inc., S.N. 85131684, unpubl'd. Refusal to register affirmed, March 12, 2013. Janine Guzman of Pietrantoni Mendez & Alvarez LLC for appellant; Tasneem Hussain for TMEO. Kuhlke, [Wellington], and Masiello, Administrative Trademark Judges (9 pages). Available in slip opinion only.

(F-460) In re Good Sports, Inc., S.N. 85162578, unpubl'd. Refusal to register affirmed, March 14, 2013. Mario G. Ceste of the Law Office of Mario G. Ceste LLC for appellant; John D. Dali er for TMEO. Bucher, [Bergsman], and Wellington, Administrative Trademark Judges (7 pages). Available in slip opinion only.

(F-461) In re Gumbo Bar Franchising LLC, S.N. 85204197, unpubl'd. Refusal to register affirmed, March 14,2013. Raman Dewan of Jackson Walker L.L.P. for appellant; Evin L. Kozak for TMEO. Holtzman, Kuczma, and [Masiello], Administrative Trademark Judges (10 pages). Available in slip opinion only.

(F-462) In re Western New York State Nursery & Landscape Association, Inc., S.N. 85204700, unpubl'd. Refusal to register affirmed, March 14, 2013. Rebecca M. Stadler of Del Vecchio and Stadler LLP for appellant; Jennifer Hazard Dixon for TMEO. [Cataldo], Shaw, and Greenbaum, Administrative Trademark Judges (13 pages). Available in slip opinion only.

(F-463) In re Symphonic Source, S.N. 85443743, unpubl'd. Refusal to register affirmed, March 14, 2013. William H. Dietrich of Slater & Matsil, LLP for appellant; Jason Paul Blair for TMEO. Bucher, Zervas, and [Wolfson], Administrative Trademark Judges (13 pages). Available in slip opinion only.

(F-464) In-N-Out Burgers v. Fast Lane Car Wash & Lube, L.L.C, Opp. No. 91183888, unpubl'd. Opposition dismissed, March 14, 2013. Robert J. Lauson of Lauson and Tarver LLP for opposer; Richard L. Schnake of The Law Firm of Neale & Newman LLP for applicant. Quinn, [Cataldo], and Hightower, Administrative Trademark Judges (36 pages).

Fast Lane Car Wash & Lube, L.L.C. (FLC) filed an application to register IN & OUT CAR WASH (CAR WASH disclaimed) for "automobile cleaning and car washing; automobile washing; car washing; vehicle washing" in International Class 37. In-N-Out Burgers (INB) opposed registration on the grounds of dilution and priority and likelihood of confusion with its previously registered marks, including IN & OUT for "motor vehicle body repairing and painting" in International Class 37. FLC denied the salient allegations.

Both parties agreed and the Board accepts that a number of INB's pleaded registrations are valid and subsisting. INB has established standing with regard to the marks protected thereby and the goods or services recited therein. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 945, 55 USPQ2d 1842 (Fed. Cir. 2000).

Because INB established ownership of these registrations, priority is not an issue. See King Candy Co. v. Eunice King 's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).

The Board concentrates on INB's IN & OUT for "motor vehicle body repairing and painting, " which is most similar to FLC's mark. The Board states that if likelihood of confusion is found between these marks, it will be unnecessary to determine whether confusion is likely as to the remainder of INB's marks. Conversely, if likelihood of confusion is not found, the Board would also find that confusion is not likely with INB's remaining marks.

The Board concentrates on INB's IN & OUT but addresses INB's assertions regarding fame of its IN-N-OUT marks as to restaurant services and menu items. Fame, if it exists, plays a dominant role in the process of balancing the du Pont factors. Bose Corp. v. QSC Audio Prods., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002). Fame may be measured indirectly by the volume of sales and advertising expenditures of the goods and services identified by the marks at issue, by the length of time those indicia of commercial awareness have been evident, by widespread critical assessments and through notice by independent sources of the products and services identified by the marks, as well as by the general reputation of the branded products and services. Bose at 1305-06. Because of the extreme deference accorded a famous mark in terms of the wide latitude of legal protection it receives and the dominant role that feme plays in the likelihood of confusion analysis, it is the duty of the party asserting that its mark is famous to prove it clearly. Leading Jewelers Guild, Inc. v. UOWHoldings, LLC, 82 USPQ2d 1901, 1904 (TTAB 2007).

INB's vice president and general counsel, Arnold Wensinger, testified (i) that INB operates 262 restaurants in California, Nevada, Utah, Arizona, and Texas; (ii) that INB sells gift cards, apparel, and collectibles through its store locations, catalogs, and website; (iii) that INB's sales per location are the highest in the United States; (iv) that even though INB sales are strong, they are not near the level of sales of a restaurant chain such as McDonalds; and (v) that INB's merchandise sales in Missouri and Arkansas represent less than 1 percent of its gross merchandise sales.

The Board notes that INB did not submit evidence to support Wensinger's testimony regarding sales. Wensinger's testimony did not provide evidence of market share, thus it is difficult for the Board to determine whether the sales are substantial for the purpose of determining fame. The Board concludes that INB's sales are made to a limited market share of the general consuming public in the United States.

Wensinger testified that INB's advertising budget is $10 million per year and that it has spent a $6.5 million per a year on conventional advertising nationwide for 10 years.

The Board notes that INB's radio and television advertising is limited to local geographic areas and its interstate billboards are in close proximity to the stores they promote. The Board observes that consumers must be within the physical range of INB's marketing efforts for exposure to the advertisements.

Wensinger testified that INB has 2 million likes on Facebook. The Board observes that this evidence does not indicate where those fans are located and what share of the relevant consuming public they represent.

Wensinger testified that word-of-mouth advertising for INB's stores is worldwide. The Board notes that this testimony is wholly unsupported and speculative.

The Board finds that the record demonstrates that INB is the subject of very favorable and unsolicited attention from media sources and celebrities. The Board notes that although the evidence indicates that INB has received favorable mention and recognition beyond its regional presence, it does not indicate how significant that recognition is with the general consuming public.

The Board concludes that INB enjoys a devoted following and business success within its areas of operation but has not shown a level of recognition for its mark that would justify the heightened scope of protection afforded truly famous marks.

The Board considers the inherent distinctiveness of the mark, namely, where it fits in the continuum from generic to fanciful. See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 189 USPQ2d 759, 764 (2d Cir. 1976). Highly distinctive marks are entitled to a broader scope of protection, whereas generic marks enjoy little or no protection, according to the Board.

The Board finds that the marks are suggestive in that they indicate that the services are performed quickly. Consequently, any similarity of the marks is less likely to cause confusion than if the marks were arbitrary or fanciful. Sure-Fit Prods. Co. v. Saltzson Drapery Co., 254 F.2d 158, 117 USPQ 295, 297 (CCPA 1958).

In support of its argument that INB's marks are weak, FLC submitted third-party IN AND OUT marks for a wide variety of goods and services. The probative value of these registrations is limited because FLC presented no evidence concerning the extent to which these third-party marks are used in commerce. See Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005). The Board observes that none of these registrations recites goods or services that are similar to those at issue.

The Board considers the appearance, sound, connotation, and commercial impression of the marks in their entireties. See In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988). The Board notes that IN & OUT CAR WASH incorporates IN & OUT. Likelihood of confusion has frequently been found when one mark incorporates the entirety of another mark. See Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975). The Board finds the marks similar in appearance and sound.

The Board also finds that the marks share the same connotation of quick services.

FLC argued that CAR WASH distinguishes its mark because IN & OUT is weak; however, CAR WASH is generic for FLC's services and thus is incapable of functioning as a source indicator. In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987). The Board concludes that, notwithstanding the suggestive nature, IN & OUT is the dominant wording in FLC's mark.

The Board finds the marks similar in sound, appearance, and meaning.

Likelihood of confusion must be determined on the basis of the services as they are identified. See Paula Payne Prods, v. Johnson Publ'g Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973). Services need not be similar or even competitive to support a holding of likelihood of confusion. It is sufficient if they are related in some manner or the conditions surrounding their marketing are such that they could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that the services originate from the same producer. Miss Universe L.P. v. Community Mktg. Inc., 82 USPQ2d 1562, 1568 (TTAB 2007).

INB submitted 24 third-party registrations and Internet evidence to demonstrate that car-washing services originate from the same source as vehicle body repairing and painting services. Nine of these registrations are not based on use in commerce and thus have no probative value. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). The remaining registrations are based on use in commerce. Thirdparty registrations, however, have limited probative value because they are not evidence of what happens in the marketplace or that customers are familiar with them. AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (CCPA 1973).

The Internet evidence has limited probative value because printouts of Web pages cannot be used to prove the truth of what has been printed. See Trademark Trial and Appeal Board Manual of Procedure § 704.08(b). The Board explains that the Internet evidence does not prove that these entities actually provide car-washing and cleaning services as well as car repair and painting services but simply that the third parties responsible for the Internet postings state that such services are available therefrom.

Finally, the Board observes that INB's own witness testified that the primary business of a car wash is distinct from the primary business of a paint and body shop.

Normally, when a recitation of services is unlimited, the Board presumes that the services move in all channels of trade that are normal therefor and are available to all the usual purchasers thereof. Because the Board finds that the services are unrelated, it cannot make this presumption. Çf. Genesco Inc. v. Marti, 66 USPQ2d 1260, 1268 (TTAB 2003).

FLC argued that the absence of actual confusion for seven years suggests no likelihood of confusion. It is not necessary to show actual confusion to establish likelihood of confusion. See Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 223 USPQ 1025 (Fed. Cir. 1990).

The Board concludes that despite the similarities between the parties' marks, there is insufficient evidence that their services are related or offered in common channels of trade to the same classes of consumers to find a likelihood of confusion.

To prevail on its claim of dilution, INB must prove that its mark became famous prior to FLC's first use. Trademark Act § 43(c)(1). The Board observes that because INB has not established that its marks are famous, it cannot prevail in its dilution claim.

Accordingly, the Board dismisses INB's opposition to FLC's mark IN & OUT CAR WASH.

(F-465) In re Lotus Group, LLC, S.N. 85033857, unpubl'd. Refusal to register affirmed, March 15, 2013. Chris Ditico of Raj Abhyankerof PC for applicant; Linda Orndorff for TMEO. Bucher, [Wolfson], and Masiello, Administrative Trademark Judges (14 pages).

LOTUS ENERGY DRINK (ENERGY DRINK disclaimed), subject of an application to register by Lotus Group, LLC (LG) for "light beverages, namely, energy drinks" in International Class 32, is likely to cause confusion with the previously registered marks BLUE LOTUS LIFESTYLE for "energy drinks" in International Class 32 and LOTUS for "canned fresh fruits" in International Class 29, "fresh fruits" in International Class 31, and "fruit juices and fruit nectars" in International Class 32. Registration had been finally refused under Section 2(d) of the Trademark Act.

In determining whether confusion is likely, the Board considers all relevant du Pont factors. The fundamental inquiry goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F 2d 1098, 192 USPQ 24, 29 (CCPA 1976). Goods need not be similar or even competitive, so long as they are related in some manner and are likely to be encountered by the same persons, who might have the mistaken belief that they emanate from the same source. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984).

The Board finds that LG's goods and registrant's BLUE LOTUS LIFESTYLE goods both include energy drinks and thus are legally identical.

Regarding LOTUS, the Board finds that the Internet evidence submitted by Examining Attorney Orndorff shows that fruit juices and energy drinks are closely related and sold in the same stores to the same classes of consumers. The Board concludes that energy drinks and fruit juices can be manufactured by a single source and that the channels for the goods are the same. See In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009).

The Examining Attorney submitted 30 third-party registrations for both energy drinks and fruit juices. Thirdparty registrations, although not evidence that the marks shown therein are in commercial use or that the public is familiar with them, nevertheless have probative value to the extent that they suggest that the listed goods are of a type that may emanate from a single source. In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217- 8 (TTAB 2001).

LG argued that consumers are likely to exercise a high degree of care when selecting the goods. The Board notes the lack of supporting evidence.

When marks would appear on virtually identical and otherwise closely related goods, the degree of similarity necessary to support a finding of likely confusion declines. In re Microsoft Corp., 68 USPQ2d 1195, 1198 (TTAB 2003). The Board considers the appearance, sound, connotation, and commercial impression of the marks in their entireties. Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F 3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). The test is not whether the marks can be distinguished in a side-by-side comparison but whether their overall commercial impression is similar enough that confusion as to source is likely. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).

Although marks are to be considered in their entireties when determining the commercial impression they create, nothing is improper in giving more or less weight to a particular feature of a mark if that feature is found to have greater significance than another. National Data Corp at 751. The focus is on the recollection of the average purchaser, who normally retains a general, rather than specific, impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).

The Board finds that LOTUS is arbitrary with respect to the goods and thus is inherently strong and entitled to a broad scope of protection. The Board observes that LOTUS is the dominant portion of LG's mark. It is the first part of the mark and is likely to be remembered. Presto Products, Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). LOTUS is also the only word that is not generic and therefore the only term capable of identifying the source of the goods and not merely the goods themselves. See In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997). The Board finds the marks similar in sound, meaning, and appearance.

Comparing LOTUS ENERGY DRINK to BLUE LOTUS LIFESTYLE, the Board applies a similar analysis. LG argued that BLUE LOTUS is a unitary term denoting a type of lotus flower that was found in the tombs of ancient Egyptian pharaohs. The Board finds that, even were this true, LOTUS ENERGY DRINK and BLUE LOTUS LIFESTYLE could be perceived as variants of a single brand because LOTUS is the pivotal element. The Board finds the marks similar in sound and appearance.

The Board concludes that the shared term LOTUS creates an overlap of the connotations of the marks.

LG argued that there is no evidence of actual confusion despite concurrent use for two years. Lack of evidence of actual confusion is insignificant in an ex parte proceeding because registrants have no opportunity to be heard. In re Jeep Corporation, 222 USPQ 333, 337 (TTAB 1984).

Accordingly, the Board affirms the refusals to register LG's mark LOTUS ENERGY DRINK.

(F-466) In re Pro-Tek Chemical, Inc., S.N. 85227983, unpubl'd. Refusal to register affirmed, March 15, 2013. Scott D. Swanson of Dykas & Shaver LLP for appellant; Cimmerian Coleman for TMEO. Seeherman, Adlin, and [Gorowitz], Administrative Trademark Judges (12 pages). Available in slip opinion only.

(F-467) In re Harry Fox & Associates, Inc., S.N. 85292481, unpubl'd. Refusal to register affirmed, March 15, 2013. Barry W. Sufrin of Drinker Biddle & Reath LLP for appellant; Emily K. Carlsen for TMEO. Seeherman, Grendel, and [Hightower], Administrative Trademark Judges (12 pages). Available in slip opinion only.

(F-468) H&M Hennes & Mauritz AB v. Undivided Design, LLC, Opp. No. 91194864, unpubl'd. Opposition sustained, March 15, 2013. Mark I. Peroff and Alpa V. Patel of Manatt Phelps & Phillips LLP for opposer; Matthew M. Boley of Parsons Kinghorn Harris for applicant. [Cataldo], Gorowitz, and Hightower, Administrative Trademark Judges (11 pages). Available in slip opinion only.

(F-469) In re CityCenter Land, LLC, S.N. 77626840, unpubl'd. Refusal to register affirmed, March 19, 2013. Michael J. McCue of Lewis and Roca LLP for appellant; Ameen Imam for TMEO. [Bergsman], Wellington, and Ritchie, Administrative Trademark Judges (10 pages). Available in slip opinion only.

(F-470) In re Primerica, Inc., S.N. 77931208, unpubl'd. Refusal to register affirmed, March 19, 2013. Kimberly L. Myers of Rogers & Hardin LLP for applicant; Sean Crowley for TMEO. Seeherman, [Zervas], and Shaw, Administrative Trademark Judges (19 pages).

PRIMERICA DEBTWATCHERS, subject of an application to register by Primerica, Inc. (PI) for "providing temporary use of a Web-based software application, marketed exclusively through the proprietary's [sic] sales force of independent contractor sales representatives and accessible only through proprietary's [sic] company-branded website, for assimilating financial information, namely, financial data provided directly by the customer and financial data obtained directly from the customer's consumer credit report, to permit the customer to formulate and calculate debt payoff plans" in International Class 42, is likely to cause confusion with the previously registered mark DEBTWATCHERS & design (shown here) for "online counseling, advice and support to individuals on the subject of reduction and elimination of personal debt" in International Class 36. Registration had been finally refused under Section 2(d) of the Trademark Act.

In determining whether confusion is likely, the Board considers all relevant du Pont factors. Key considerations are the similarities between the marks and the similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). To determine whether the marks are confusingly similar, the Board considers their appearance, sound, connotation, and commercial impression. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The Board observes that Pi's mark incorporates the wording of the registered mark in its entirety. The addition of a house mark or other matter has been found sufficient to distinguish the marks under circumstances where the appropriated matter is highly suggestive or merely descriptive or has been frequently used or registered by others in the field for the same or related goods or services. See Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005). The Board does not find that DEBTWATCHER is highly suggestive of Pi's services or has been frequently used or registered by others for the same or related services. The Board considers the definition of "watcher" and concludes that, in the context of a Web-based software application, DEBTWATCHER suggests only that the user can watch or monitor his or her debt by using the software; it does not suggest that the user can calculate a payoff plan.

The Board also considers (i) a third-party registration for DEBTWATCHER for "providing information online to subscribers regarding the credit worthiness of businesses," (ii) the search results for a search for "debtwatcher" and "financial" using the Google search engine, and (iii) a list of trademark applications and registrations that include "debt" and "watcher." The Board finds that the search results and the list have little or no probative value. The former lacks context from which the Board may discern how a term is actually used on the Web page. See In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1715 (TTAB 2011). The latter lacks identifications of goods or services of the applications and registrations from which the Board may determine whether they are in related fields. See In re Jump Designs LLC, 80 USPQ2d 1370, 1372 (TTAB 2006). Because a single registration is insufficient to establish frequency, the Board finds that the addition of PRIMERICA to DEBTWATCHER is insufficient, taken alone, to distinguish Pi's mark.

The Board is not persuaded that PRIMERICA is the dominant term, noting that it is featured on Pi's website in smaller letters and in a different color, resulting in clear emphasis on the term DEBTWATCHERS, with PRIMERICA functioning as the house mark. The Board also finds that registrant's design does not distinguish the marks because it would not be articulated as part of the mark and is not prominent in forming a commercial impression. The Board concludes that the marks are similar in sound, appearance, meaning, and commercial impression.

With respect to the similarity of the parties' services, the Board finds that the services are closely related. Services need not be similar or even competitive to support a holding of likelihood of confusion. It is sufficient if they are related in some manner or the conditions surrounding their marketing are such that they could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that the services originate from the same producer. See In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).

The Board considers websites that offer debt calculators and online counseling to individuals on the subject of reduction and elimination of personal debt. The Board finds that third parties provide similar services under the same mark, the services are ultimately marketed to the same class of purchasers, and the consumers are not sufficiently sophisticated to distinguish the sources. (The Board adds that if the consumers were financially sophisticated, they would not require assistance of the types provided by PI and registrant in determining how to pay off debts.) The Board specifically notes that use of Pi's service does not preclude use of registrant's services: A consumer may use Pi's calculator and then use registrant's online counseling for advice on prioritizing payoff. The Board rejects Pi's argument that Examining Attorney Crowley must show "something more" to establish that the services are related. PI cited In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059 (Fed. Cir. 2003), but the "something more" requirement of Coors applies only if food, beverages, and restaurant services are at issue.

With respect to channels of trade, the Board notes that Pi's identification of services includes the limitation that Pi's services are marketed exclusively through its sales force of independent-contractor sales representatives and accessible only through its company-branded website. Because the parties' services are directed to the same purchasers, the Board finds that consumers exposed to both parties' services would likely believe that there is some association or relationship between the sources of the parties' marks.

The Board notes that Pi's marketing limitation would not reduce the potential for "reverse confusion," that is, if a consumer had a preference for not using a product associated with PI, no mechanism ensures that the consumer would nonetheless continue to select registrant's services despite seeing the similar term DEBTWATCHER. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). In rejecting Pi's argument that the specifics of its website would prevent confusion, the Board notes that the issue of likelihood of confusion must be determined on the basis of the services as set forth in the involved application and the cited registration, not in light of what such services are shown or asserted to actually be. Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).

Accordingly, the Board affirms the refusal to register Pi's mark PRIMERICA DEBTWATCHERS.

(F-471) In re Lone Wolf Distributors, Inc., S.N. 85058680, unpubl'd. Refusal to register reversed, March 20, 2013. Robert G Hyta of Wells St. John P.S. for appellant; Jessica Powers Lu deman for TMEO. Quinn, [Bergsman], and Lykos, Administrative Trademark Judges (12 pages).

TIMBER WOLF, subject of an intent-to-use application to register by Lone Wolf Distributors, Inc. (LWD) for "slide action pistol frames" in International Class 13, is not likely to cause confusion with the previously registered marks TIMBER WOLF for "pocket knives" in International Class 8 and TIMBER WOLF and TIMBER WOLF & design (shown here) for "knives, namely, folding knives, caper knives, knives with gut hook, sports knives for skinning, bowie knives, throwing knives and fillet knives; swords; hand tools, namely, pruners; multi-function hand tools containing cutting blades and knives, screwdrivers, pliers, can and bottle openers, files and accessory screwdriver bits" in International Class 9. Registration had been finally refused under Section 2(d) of the Trademark Act.

Because the description of the goods is unclear, the Board considers extrinsic evidence to shed light on the meaning of "slide action pistol frame." When the description of goods for a cited registration is unclear, it is improper to consider the description in a vacuum and attach all possible interpretations to it when the applicant has presented extrinsic evidence showing that the description of goods has a specific meaning to members of the trade. In re Trackmobile Inc., 15 USPQ2d 1152 (TTAB 1990).

The Board finds that a slide action pistol frame is the structural unit of a pistol that connects the barrel with the grip and slides when fired and must be retrofit to specific handgun models. Even in the absence of testimony from someone in the business, the Board finds that the purchaser of a retrofit gun component is likely to be a sophisticated consumer and gun enthusiast. This discrete class of purchasers would be highly familiar with the nature, use, and purpose of LWD's product. Sophisticated consumers exercise greater care. Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992). The Board also finds that the product is unusual and notes that the Examining Attorney Powers Ludeman was unable to introduce even a single reference to a pistol frame. The Board concludes that degree of care exercised by consumers for slide action pistol frames weighs strongly against a finding of likely confusion.

Goods need not be similar or even competitive to support a holding of likelihood of confusion. It is sufficient if they are related in some manner or the conditions surrounding their marketing are such that they could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that the goods originate from the same producer. Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399. 1410 (TTAB 2010). The Board considers evidence from vendor websites and eight use-based third-party registrations for products that include both knives and gun components. The Board notes that no evidence was introduced that includes any reference to a "pistol frame" of any kind.

With respect to channels of trade, the Board concludes that guns and knives move in the same channels of trade and are sold to the same classes of consumers. In the absence of evidence with respect to the sales of knives and gun parts in general or slide action pistol frames in particular, the Board declines to infer that the channels of trade for knives and slide action pistol frames are similar.

Although it finds the parties' marks identical, the Board concludes that, because of the high degree of consumer care and the differences in the nature of the goods and their channels of trade, there is no likelihood of confusion.

Accordingly, the Board reverses the refusal to register LWD's mark TIMBER WOLF.

(F-472) In re Shehadeh Forever Inc., S.N. 85218264, unpubl'd. Refusal to register affirmed, March 30, 2013. Denise Olrich for appellant; Priscilla Milton for TMEO. [Quinn], Bergsman, and Lykos, Administrative Trademark Judges (10 pages). Available in slip opinion only.

(F-473) In re upSTART, Inc., S.N. 85277668, unpubl'd. Refusal to register affirmed, March 20, 2013. Barbara A. Barakat of Wilmer Cutler Pickering Hale and Dore for appellant; Evelyn Bradley for TMEO. [Quinn], Greenbaum, and Masiello, Administrative Trademark Judges (10 pages). Available in slip opinion only.

(F-474) In re Sokol and Company, S.Nos. 85171394 and 85171408, unpubl'd. Refusals to register affirmed, March 21, 2013. David Brezina of Ladis and Parry LLP for applicant; Gene V.J. Maciol, H, for TMEO. Holtzman, Wolfson, and [Kuczma], Administrative Trademark Judges (17 pages).

WHOOPIE DO! (WHOOPIE disclaimed, stylized, Fig. 1) and SOLO WHOOPIE DO! (WHOOPIE disclaimed, stylized, Fig. 2), subjects of applications to register by Sokol and Company (SAC) for "mixes for bakery goods" in International Class 30, are likely to cause confusion with the previously registered mark WHOOP DE-DOO for "bakery goods" in International Class 30. Registration had been finally refused under Section 2(d) of the Trademark Act.

With respect to the similarity of the goods, the issue of likelihood of confusion must be determined on the basis of the goods as set forth in the involved application and the cited registration. The Board explains that the relatedness of the products is demonstrated by 46 third-party registrations that recite both bakery goods and mixes for bakery goods and that are owned by dozens of different registrants that concentrate their businesses on the sale of bakery products and bakery mixes and are not mass retailers selling all types of products. The Board concludes that it is common for the same entity to provide bakery goods and baking mixes under the same mark and that consumers are likely to believe SAC's and registrant's goods emanate from the same source. Thirdparty registrations, although not evidence that the marks shown therein are in commercial use or that the public is familiar with them, nevertheless have probative value to the extent that they suggest that the listed goods are of a type that may emanate from a single source. See In re Davey Products Pty Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009).

Neither identification of goods is restricted, so the Board presumes that the goods move in all normal channels of trade and would be purchased by all potential buyers. See In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). SAC argued that the purchasers of mixes requiring preparation are a particular subset of consumers distinguishable from the purchasers of ready-to-eat foods. The Board rejects that argument and notes that no evidence shows that these subsets of consumers are mutually exclusive.

With respect to the similarity of registrant's mark and SAC's WHOOPIE DO! mark, the test is not whether the marks can be distinguished in a side-by-side comparison but whether their overall commercial impression is similar enough that confusion as to source is likely. San Fernando Elec. Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977). When marks would appear on virtually identical and otherwise closely related goods, the degree of similarity necessary to support a finding of likely confusion declines. Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004).

The Board observes that SAC's and registrant's marks contain three syllables, WHOOP followed by EE or DEE and ending in DO. The Board finds the stylization and grammatical differences (a hyphen as opposed to an exclamation mark) are insufficient to distinguish SAC's mark. The word portion of a mark is more likely to be remembered and relied on by purchasers in referring to goods than the design features; therefore, the word portion is accorded more weight. In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987). Registrant's standard-character mark may be displayed in any lettering style, including the font style and size in which SAC's marks are shown. In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1284 (TTAB 2009). The Board finds the marks similar in sound and appearance.

With respect to meaning, the Board considers the dictionary definitions of WHOOP DE DOO and "whoopee. " The Board finds that WHOOPIE is an alternative spelling of "whoopee" and concludes that the marks are similar in meaning. To the extent the meaning of SAC's mark is distinguishable by reference to the bakery good known as a "whoopie pie," the Board finds that distinction offset by the strong similarities in the sound, appearance, and meanings of the marks. Inasmuch as WHOOPIE DO! may be considered a play on the phrase WHOOP DE DOO, the Board concludes that the commercial impressions of the marks are the same.

The Board rejects SAG's argument that WHOOP is merely descriptive of bakery goods and widely used to describe them, rendering registrant's mark weak and consequently entitled to a narrower scope of protection. In re Central Soya Co, Inc., 220 USPQ 914, 917 (TTAB 1984). The Board notes that WHOOP in registrant's mark is not disclaimed and that none of the third-party registrations submitted by SAC shows WHOOP as a stand-alone term in any trademark referring to bakery goods.

With respect to the similarity of registrant's mark and SAC's SOLO WHOOPIE DO!, the Board considers the additional argument that the inclusion of SAC's SOLO house mark distinguishes the marks. The addition of a trade name or house mark does not generally avoid confusion. In re Fiesta Palms, LLC, 85 USPQ2d 1360, 1364 (TTAB 2007). The Board finds that registrant's mark is not so highly descriptive or suggestive that the addition of SAC's house mark is sufficient to avoid a likelihood of confusion. See Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005). Moreover, even weak marks are entitled to protection against registration by a subsequent user of similar marks for closely related goods. King Candy Company v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974).

The Board further observes that SAC's house mark, SOLO, is displayed in a smaller and different font from the rest of the mark, in a rectangle, offset to the left side, separate from the wording of the mark, and that WHOOPIE DO! is prominently featured. According to the Board, the addition of SOLO does not alter the meaning or commercial impression of the mark, and consumers would likely assume that SOLO identifies what had previously been an unidentified, anonymous source. The Board concludes that the commercial impression of SAC's mark is similar to that of registrant's mark.

Accordingly, the Board affirms the refusal to register SAC's marks WHOOPIE DO! and SOLO WHOOPIE DO!.

(F-475) In re SKJ Ventures, LLC, S.N. 85242271, unpubl'd. Refusal to register reversed, March 21, 2013. Sabrina G Stavish of Sheridan Ross PC for appellant; Laurie R. Kaufman for TMEO. Cataldo, [Bergsman], and Adlin, Administrative Trademark Judges (13 pages). Available in slip opinion only.

(F-476) In re TomTom International B. V, S.N. 79091666, unpubl'd. Refusal to register affirmed, March 22, 2013. David R. Haarz of Harness Dickey & Pierce PLC for applicant; Katherine S. Chang for TMEO. [Bucher], Taylor, and Hightower, Administrative Trademark Judges (14 pages).

TOMTOM VIA is the subject of an application to register by TomTom International B.V. (TTI) for "computer hardware and software for use with satellite and GPS navigation systems for navigation purposes; computer software featuring route planners and electronic maps for navigation and digital dictionaries for translation purposes; software for travel information systems for providing or displaying travel advice and information regarding petrol stations, car parks, restaurants, car dealers and other travel and transport related information; software for information management for the transport and traffic sector; software for viewing electronic maps; downloadable electronic maps; software for operating route planners; route planners in the form of hand-held personal computers; location, orientation and navigation, and global positioning systems (GPS) consisting of computers, computer software, transmitters, global positioning system receivers (GPS) and satellite receivers, network link for interface systems, patch cables, and parts and accessories therefor; holders for hand-held computers; satellite and radio transmitter and receiver apparatus technology, namely, processors, mobile telephones and receivers; telecommunications installations, networks and apparatus, namely, mounting racks especially fitted for telecommunications hardware and telecommunication switches; computer terminals, all in particular for the use of navigation systems, route planners, and digital maps" in International Class 9; "secure and non-secure telecommunications services, namely, transmission and delivery of digital data, photographs, audio files, data, information and image signals by means of computers, cable radio and satellite transfer, all in particular for navigation systems, route planners and the use of electronic maps; telecommunication services, namely, providing of temporary access to non-downloadable software providing map images and geographical and itinerary information obtained with the aid of a global positioning system (GPS) to enable others to determine locations or directions accurately; secure and insecure telecommunication services for the electronic transfer and temporary storage of digital data, photographs, audio files, data, information and image signals, all in particular for navigation systems, route planners and the use of electronic maps; technical consultancy in connection with the aforementioned services" in International Class 38; and "providing of navigation and information services, namely, information relating to traffic and traffic jams; all the aforesaid services also provided via a communications network or a cellular telephone or wireless navigation system" in International Class 39. TTI's mark is likely to cause confusion with the previously registered mark VIA TELECOM & design (TELECOM disclaimed; shown here) for "wireless communication apparatus; namely, computer programs for modems, wireless local loop telephones, cellular telephones, Personal Communication Services (PCS) handsets, Personal Digital Assistants (PDAs); Personal Digital Assistant PDA devices processors, namely, handheld digital devices having programmable capacity and capacity to communicate by electronic, digital, microwave, broadband, analog, radio, and satellite using voice, graphics, video, data, sensory, infrared, ultraviolet, and laser audio transmissions in the nature of electronic personal organizers, mobile phones, smartphones, portable and pocket-size personal computers, palmtop computers in the nature of electronic personal organizers, personal navigational global positioning systems (GPS), handheld and portable multimedia players, smart computers having context, user and location awareness and which may be outfitted and adaptable with modem, memory, PC MCIA slots, disk drives, keyboard, and monitor, mobile digital devices with computer notebook functionality and connectivity in a handheld portable micro-sized form and which may be adaptable and fitted with modem, memory, PC MCIA slots, disk drives, keyboard, and monitor in the nature of electronic personal organizers, mobile phones, smartphones, portable and pocketsize personal computers, palmtop computers in the nature of electronic personal organizers, personal navigational Global Positioning Systems (GPS), handheld multimedia players, smart computers having context, user and location awareness smart computers having context, user and location awareness and which may be outfitted and adaptable with modem, memory, PC MCIA slots, disk drives, keyboard, and monitor, wireless digital devices in the nature of mobile and handheld phones, smartphones, imaging smartphones, hands-free phones, handheld multimedia players, electronic personal organizers, electronic personal information management organizers, portable and pocket-size personal computers, palmtop computers in the nature of electronic personal organizers, smart computers having context, user and location awareness and which may be outfitted and adaptable with modem, memory, PC MCIA slots, disk drives, keyboard, monitor, pocket printer, pocket camera, and pocket video camera, remote devices in the nature of portable micro sized computers with notebook functionality for the mobile enterprise having capabilities of remote desktop, remote email and transparency access to data, portable personal navigational Global Positioning Systems (GPS), smart computers having context, user and location awareness and with integrated multidimensional data, sound, video and graphics, portable multimedia player, public kiosks in the nature of computer terminals, and portable computer terminals both allowing dialup connectivity and personal computer access, communication devices having capacity for acquisition, multiplexing, transmission, encoding, compression, filtering, transforming, decompression, decoding, demultiplexing and reception of communications data in the nature of smart phones, portable computers, portable interactive learning computers, electronic organizers, and voice-over software for transmitting and receiving communication signals, games and other data, parts and components thereof and accessories therefor; integrated circuits containing chipsets for spread spectrum modulation and demodulation, error correction encoding and decoding, voice coding and preprogrammed memories containing processor instructions" in International Class 9. TTI's mark is likely to cause confusion with the previously registered mark VIA for "computers, notebook computers, laptop computers, portable computers, handheld computers, interactive computer kiosks used in retail, entertainment and hospitality establishments; computer programs for controlling access to and use of standalone computers, namely, network access server hardware and operating programs for use with stand-alone kiosk computers which may provide Internet access points, microcomputers, computer hand ware, namely, semiconductors, microprocessors, integrated circuits, computer chips, computer motherboards, computer daughterboards, computer graphics boards, computer interface boards, computer accelerator board, circuit boards; computer workstations, namely, processors, central processing units, controllers, namely, electrical controllers, ethemet controllers; graphic cards; multi-output computer cards that feature an analog mixer, allowing a computer-based recording system to behave more like a traditional analog one; multimedia chipsets with integrated graphics and storage for desktop and notebook computer environments, computer chipsets for use in transmitting data to and from a central processing unit, computer peripherals, computer keyboards, computer printers, computer monitors, computer driver utilities programs for graphics; integrated circuits for spread spectrum modulation and demodulation error correction encoding and decoding, voice coding and preprogrammed memories containing processor instructions; software programmable microprocessors; hand-held devices, namely cellular telephones, digital telephones, Personal Digital Assistants (PDAs), tablet PCs, electronic personal organizers, handheld personal computers, MP3 players, handheld joy sticks and remote controls for playing interactive video games; extended multimedia software recorded on magnetic media featuring games and stories, children's educational software featuring instruction in the field of graphics, animation, interactive communications, movies and music videos; mobile computers, mixed-signal integrated circuits, personal electronics hardware with digital media playback and recording capabilities; wireless local loop telephones; software and hardware for management, storage, communications and network management of digital media and enhancement of graphical and video display; software for interactive multimedia disc players which allows the contents of multimedia to be transmitted across global communications networks; telematic systems namely, wireless mobile PC devices designed for use in moving vehicles that can provide entertainment, mobile telephony, vehicle monitoring, navigational information; satellite navigational systems, namely a global positioning system; entertainment systems comprising entertainment handsets, television displays and high definition television displays, chrome programmable and three-dimensional video engines, hardware digital accelerators supporting displays, namely, rotating monitors and multiple screen configurations, featuring real-time video effects and filtering; consumer electronics systems comprised of modems, base transceiver stations and portable stations, switching platforms, access nodes and data cards for scrambling, descrambling, encoding and decoding of voice, data, image and video transmissions, entertainment hardware and software that can record, create and play content, namely, video game software, interactive video games of virtual reality comprised of computer hardware and software; television sets, high definition television (HDTV) sets, set top boxes, hardware for graphic displays; hardware for storage, transmission, reception, reproduction, operation, processing, generation of video, graphics, electronic messages, voice messages, data, sensory signals, sound and images; computer software for use in providing multiple user access to a global computer information network for searching, retrieving, transferring, manipulating and disseminating a wide range of information; computer firmware, namely, computer utility software and other computer software used to maintain and operate computer system all stored in a computer's read only memory or elsewhere in the computer's circuitry, operating system software; BIOS software; computer networking hardware, telecommunications and data networking hardware, namely devices for transporting and aggregating voice, data, and video communications across multiple network infrastructures and communications; parts and fittings for use with wireless telephones, computer and telecommunications networking software for wireless network communications and connectivity, networking servers, computer network adapters, networking switches, routers, hubs, wireless and wired modems, computer communication and networking products, namely, parallel communication interface adapters, serial communication cards, synchronous communication cards, telephony cards; mobile telephones, computer software for use in performance and display of graphics and digital media; computer software for visual, voice and touch activated devices for generating, storing, transmitting and receiving communication signals and other data; semiconductors, integrated circuits, electronic subassemblies, subassemblies comprising single board computers, serial and parallel interface cards, disc and tape controller cands, parts and fittings for all of the aforementioned goods not included in other classes; downloadable specification sheets, data sheets, computer reference manuals, user guides and documents providing instruction in the use and operation of various electronic digital devices" in International Class 9. TTI's mark is likely to cause confusion with the previously registered mark VIA TELECOM (TELECOM disclaimed) for "computer hardware, namely, computer semiconductors, computer chips, microprocessors, computer data processors, integrated circuits, computer chipsets for use in transmitting data to and from a central processing unit, computer main boards, computer motherboards, computer interface boards, circuit boards, multimedia accelerators boards, computer graphic cards, serial and parallel interface cards for data processing equipment in the form of printed circuits, computer cards for connecting portable devices to computer networks, central processing units, computer routers, computer hubs, computer servers, computer network adapters, computer switches, audiovisual receivers and converters, network access server hardware, switches, routers, hubs, modem, video graphic controllers, sound cards, video display cards, electric power supplies, computer thermal and cooling devices, computer input, output and storage devices, hard drives for computers, computer memories, blank computer discs, computer disk drives, computer accessory organizer storage cases, magnetically encoded communication debit cards, microcomputers, laptop computers, notebook computers; handheld devices, namely, personal digital assistants, PC tablets, hand-held highdefinition computer monitors for viewing video programming, electronic personal organizers, Personal Digital Assistants (PDA's), MP3 players; computer monitors, computer keyboards, computer mice, computer printer, computer scanner, computer peripherals and parts thereof; computer video conferencing equipment, namely, terminals, videophones, video processors, communications software for interacting over wireless, circuit switched or packet switched voice, or packet switched video networks; video output game machines for use with televisions; interactive remote controls for computer game equipment; computer hardware for telecommunications; radio, telephone, television, computer, Internet, global positioning system (GPS), microwave, satellite, broadband, radar, infrared, Wi-Fi, digital and analog signal transmitters; telecommunication devices, namely, Communication Services (PCS) handsets, telephones, cellular telephones, digital telephones, smart phones; sensory-activated interactive computer kiosks used in retail, entertainment and hospitality establishments; computer programs for controlling access to and use of stand-alone network access server computers; computer software, namely, software to manipulate, disseminate, search and retrieve information; computer operating software; computer firmware, namely, data synchronization programs; application development tool programs; computer software for the automatic configuration of computer networks; software for communication and telecommunication in local or global communications and computer networks; diagnostic test software; security software for information access control and secure communications; software for use in database management; computer utility software for use with computers; telecommunications equipment, namely, devices for transmission and collecting voice, data and video communications; computer peripherals; computer software to maintain and operate computer systems; computer software for wireless network communications and connectivity; entertainment software, namely, computer game software; electronic publications, namely, instructional manuals featuring instruction in the field of computers, telephony, education, graphics, animation, interactive communications, computer games, movies and music videos; downloadable software featuring instruction in the use and operation of various electronic digital devices; computer training manuals recorded on computer media; computer operation manuals in electronic format and printed instructional manuals sold as a unit" in International Class 9. Registration had been finally refused under Section 2(d) of the Trademark Act.

In determining whether confusion is likely, the Board considers all relevant du Pon? factors. The fundamental inquiry goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).

TTI stipulated that its goods and services are related to registrant's Class 9 goods. The Board finds the goods legally identical.

When marks would appear on virtually identical and otherwise closely related goods, the degree of similarity necessary to support a finding of likely confusion declines. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987). The Board finds TTI's mark confusingly similar to the cited marks in terms of connotation and commercial impression. To determine whether the marks are confusingly similar, the Board considers their appearance, sound, connotation, and commercial impression. Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test is not whether the marks can be distinguished in a side-byside comparison but whether their overall commercial impression is similar enough that confusion as to source is likely. The focus is on the recollection of the average purchaser, who normally retains a general, rather than specific, impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Although marks are to be considered in their entireties when determining the commercial impression they create, nothing is improper in giving more or less weight to a particular feature of a mark if that feature is found to have greater significance than another. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). The word portion of a mark is more likely to be remembered and relied on by purchasers in referring to goods or services than the design features; therefore, the word portion is accorded more weight. The Board also notes that disclaimed, descriptive matter is usually less significant. Examining Attorney Chang argued that the dominant portion of each mark is VIA, to which TTI has added its house mark TOMTOM, and that the addition of a house mark to otherwise identical product marks is more likely to add to the likelihood of confusion than to distinguish the marks. In re Dennison Mfg. Co., 229 USPQ 141, 144 (TTAB 1986). The Board agrees and distinguishes Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313, 1315-17 (TTAB 2005), on the ground that VIA is not highly suggestive. The Board concludes that consumers acquainted with TTI's house mark, on first encountering TTI's mark, would be inclined to view VIA as its distinctive product mark. Moreover, the Board notes that, given TTI's prominent positioning in the market for GPS devices, consumers who subsequently encounter registrants' cited marks would be vulnerable to reverse confusion.

With respect to the sixth du Pont factor, TTI argued that the existence of a consent agreement between the unrelated registrants of the cited VIA marks exposes a serious weakness in those registrations that permits TTI's mark to register as well. The Board considers the consent agreement together with all the other evidence. Trademark Manual of Examining Procedure § 1207.01(d)(viii). The Board rejects the argument. The Board finds that the cited VIA marks are strong conceptually and commercially, notwithstanding the consent agreement.

Accordingly, the Board affirms the refusal to register TTI's mark TOMTOM VIA.

(F-477) In re SoleMates, LLC, S.N. 85262439, unpubl'd. Refusal to register affirmed, March 22, 2013. Fritz L. Schweitzer, Jr., of St Onge Steward Johnston & Reens LLC for appellant; Anthony Rinker for TMEO. Seeherman, [Cataldo], and Lykos, Administrative Trademark Judges (9 pages). Available in slip opinion only.

(F-478) In re Sela Products, LLC, S.No. 77629624, _ USPQ2d _ (TTAB, March 26, 2013). Refusal to register affirmed in part and reversed in part. Ryan L. Lobato of McAfee & Taft for appellant; Daniel Capshaw for TMEO. [Seeherman], Zervas, and Shaw, Administrative Trademark Judges (24 pages).

FORZA, subject of an intent-to-use application to register by Sela Products, LLC (Sela) for "metal mounting brackets for speakers, metal wall and ceiling television/display mounts, metal satellite mounting brackets/bases" in Class 6 and "custom audio/video installation and accessory items, namely, speakers, speaker enclosures, speaker systems, cable connectors and adapters, audio interconnect and adapter cables, video interconnect and adapter cables, speaker wire, coaxial cable, communication cable, optical cable, computer cable, signal splitters, light dimmers and home automation control modules, audio/video/home automation touch pads and panels, signal grounding devices, coaxial cable clips, satellite multi-switches, remote controls for audio/video and home automation devices, television antennas, coaxial cable boots, audio video selectors, audio video distribution devices, audio video multi-zone controllers, modular wall jacks and wall switch plates, volume, controls, speaker switchers, infrared controls, infrared receivers and emitters, infrared repeaters and extenders" in Class 9, is likely to cause confusion with the registered mark FORZA POWER TECHNOLOGIES (POWER and TECHNOLOGIES disclaimed) for "automatic voltage regulators, uninterruptible power supplies, surge protectors, rechargeable batteries, and battery chatters, all for home and office use only" but not with the registered mark FORZA MILAN! & design (shown here as Fig. 1, 1899 and MILAN disclaimed; colors red, black, orange, and white claimed as features) for "optical cables, electric cables and apparatus for recording, transmission or reproduction of sound or images. "

Registration had been finally refused under Section 2(d) of the Trademark Act.

The Board notes that Sela and registrant of FORZA POWER TECHNOLOGIES provided translation statements stating that FORZA translates into English as "force, " whereas registrant of FORZA MILAN! & design offered a translation of FORZA as "go."

Initially, the Board considers several procedural issues. In its appeal brief, Sela attempted to rely on several statements made by the owner of the FORZA POWER TECHNOLOGIES registration. Examining Attorney Capshaw argued that the registration file was never made of record. Sela maintained that the file of an application that is subject of a Board inter partes proceeding is of record without any action by the parties and that the Examining Attorney functions as a quasi-opposer.

The Board construes Sela's argument as contending (i) that if the owner of the FORZA POWER TECHNOLOGIES mark were an opposer relying on that registration, then the registration would be considered of record and (ii) that the Examining Attorney, having cited that registration against Sela, must be considered the equivalent of an opposer and thus the cited registration must be considered to be of record for this appeal. The Board explains that there is no equivalent rule for ex parte proceedings that makes the file of a cited registration of record, and numerous examples show where the Board has refused to take judicial notice of reconds residing in the PTO. In re Jonathan Drew, Inc., 97 USPQ2d 1640, 1644 n. 11 (TTAB 2011). The Board also explains that although an ex parte proceeding is not analogous to an opposition, even if the Board considered the examining attorney a quasiopposer, the file of an opposer's pleaded registration must be made of record.

The Board finds the same reasoning applicable to Sela's argument that it would be unfair to allow the Examining Attorney to assert that a registration is highly relevant while simultaneously refusing to consider statements made by the owner of the cited registration. The Board explains that Sela could have submitted the file of the cited registration and the Board would have considered it. Moreover, the Board explains that the statements by the then-applicant for FORZA POWER TECHNOLOGIES are not binding judicial admissions because a decisionmaker may not consider a party's opinion relating to the ultimate legal conclusion of likelihood of confusion as a binding admission of feet. See Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 154 (CCPA 1978). The Board stresses that the owner of FORZA POWER TECHNOLOGIES made its statements in the context of the citation of FORZA for a hydrogen fuel cell power generator, which constitutes goods very different from those at issue in the present case.

Turning to the issue of likelihood of confusion, the Board explains that it considers all relevant du Pont factors. In comparing Sela's mark with the FORZA POWER TECHNOLOGIES registered mark, the Board finds that the term FORZA is the dominant portion of the registered mark and the element with source-identifying significance. The Board finds that although consumers may note the additional words POWER TECHNOLOGIES in registrant's mark, they would be likely to view the marks FORZA and FORZA POWER TECHNOLOGIES as variations of a single party's marks.

TUming to the goods, the Board explains that the Examining Attorney has submitted pages from registrant's website showing that registrant offers surge protectors specifically advertised for home theater, stereo equipment, and audio/ video equipment such as TVs, DVD players, sound systems, entertainment systems, coaxial antenna, and satellite. In addition, the Examining Attorney submitted pages from a large number of third-party websites advertising both surge protectors and the types of audio and video accessories identified in Sela's application. In addition, the Board explains that third-party registrations indicate that a single mark has been adopted for surge protectors, audio and video cables, and other audio and video accessories. The Board finds that the similarity of the Class 9 goods favors a finding of likelihood of confusion.

The Board notes that the evidence showing the relatedness of Sela's Class 9 goods to registrant's identified surge protectors is not as substantial. The Board, however, finds that the evidence shows the complementary nature of the goods in that a purchaser can encounter both surge protectors and wall mounts in the course of purchasing a television, audio, or home-theater system. The Board determines that the combination of the website evidence and third-party registration evidence, as well as the complementary nature of the goods, is sufficient to show that the goods are related.

Sela argued that the channels of trade are different because the general public would be the purchasers of registrant's goods, whereas Sela's goods would be sold to professional custom-installation specialists and commercial contractors rather than to private consumers. The Board points out that Sela's goods are not restricted to sales to custom-installation specialists and commercial contractors. Moreover, the Board explains that even if it accepted Sela's position that its goods would be sold only to custom-installation specialists and commercial contractors, commercial contractors must still be considered purchasers of surge protectors such as those identified in the registration. The Board notes that although registrant's goods are identified as being for office and home use only, that does not mean that direct purchasers of the goods would be limited to homeowners and office workers.

The Board acknowledges that contractors must be considered to be more sophisticated about their industry and related goods than the general public. The Board finds that, given the evidence that companies sell the goods identified in both classes of the application and surge protectors under the same mark, contractors' knowledge of the industry would reinforce their belief that the goods emanate from the same source if sold under confusingly similar marks.

Sela argued that the registered mark is weak. The Board notes that only two third-party registrations for FORZA marks are for different goods from those at issue. The Board finds that the scope of protection to which the cited registration is entitled extends to prevent the registration of FORZA for the goods at issue. The Board determines that Sela's mark is likely to cause confusion with the FORZA POWER TECHNOLOGIES registration.

The Board turns to the FORZA MILAN! & design mark. Based on the information of record, the Board notes that there is no doubt that those who are familiar with world soccer would recognize this mark as connoting the Italian soccer club AC Milan. The Board notes that the registration contains a translation statement for FORZA as meaning "go, " so the meaning of the entire phrase would be in the nature of the cheer "Go Milan." The Board also finds that the marks are distinguishable even for those who are unaware of the soccer meaning of the registered mark.

The Board finds that consumers will see FORZA as part of the phrase FORZA MILAN!, whereas those who are not soccer aficionados or who do not know Italian will see the phrase as different from FORZA due to the imperative connotation of the exclamation point. The Board also finds that the design element in the registered mark is large and noticeable and includes literal elements. Consequently, the Board finds that the marks are different in appearance, commercial impression, and connotation and that these differences outweigh any similarities due to the presence in both marks of the word FORZA. The Board finds that the dissimilarity of the marks in their entireties makes it unlikely for confusion to result from Sela's use of its mark.

Accordingly, the Board affirms the refusal to register Sela's FORZA mark with respect to the FORZA POWER TECHNOLOGIES registration and reverses the refusal to register based on the FORZA MILAN! & design registration.

(F-479) In re Charles & Keith International Pte Ltd, S.N. 79094940, unpubl'd. Refusal to register affirmed, March 26, 2013. Christina M. Licursi of Wolf, Greenfield & Sacks, P.C. for applicant; Patty Evanko for TMEO. Kuhlke, [Kuczma], and Gorowitz, Administrative Trademark Judges (14 pages).

CHARLES & KEITH (stylized; shown here), subject of an application to register by Charles & Keith International Pte Ltd (CKJ) for "spectacles, eyeglasses; sunglasses; chains, cords, frames and cases for the aforesaid goods; magnetic encoded cards, namely, gift cards with stored value and customer loyalty cards; credit and debit cards; electronic calculators; cases, sacks, bags, covers and clips; all for use with electronic devices, mobile telephones, MP3 players, computers, personal digital assistants; mouse pads; wrist rests for use with computers" in International Class 9; "jewelry, costume jewelry, necklaces, bracelets, earrings; medallions; horological and Chronometrie instruments, wrist watches; key rings of precious metal; cuff links, ornamental pins, tie clips, tie pins, precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes, namely, charms in precious metals or coated therewith" in International Class 14; "handbags for ladies and men; articles made of leather or imitation leather, namely, cases, bags, beach bags, traveling bags, pouches in the nature of bags, card cases, namely, business card cases and credit-card cases made of leather or imitation leather; leather and imitations of leather, umbrellas, handbags, briefcases, purses, purses of precious metals; traveling trunks, wallets, coin purses, key cases, leather shoulder belts" in International Class 18; "footwear; socks and stockings; head scarves, neck scarves, shoulder scarves, shawls, ties, bow-ties, gloves, foulards, headwear, headgear, footwear for men and women, shoes, slippers, boots, lingerie, brassieres, panties, lingerie tops, undershirts, underpants; skirts, dresses, shorts; blouses, teeshirts, polo shirts, shirts, cardigans, chemises, vests, blouses, trousers, pants, neckties, coats, wind resistant jackets and wind resistant tops, sweaters, pullovers, waistcoats, jackets, overcoats, blazers, hunting jackets, gabardines, bermudas, ponchos, stoles, hats, caps, suspenders, neckerchiefs, pajamas, mittens, bathing costumes, blousons, bathrobes, sports footwear, tracksuits, ready-made linings for clothing, namely, finished textile linings for clothing, swim wear, thermal jackets, thermal underclothing, belts for clothing, bathing trunks, beach shoes, boots, sports shoes, underwear, sportsclothing, namely, shorts, shirts, and pants" in International Class 25; "the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in a retail store, in a wholesale outlet or from a general merchandise catalogue by mail order or from a general merchandise website on the global or local telecommunications networks in the field of clothing, leather goods, jewelry, footwear, headgear, eyewear, electronic goods, computer peripherals, accessories for use with computers and electronic goods; compilation of mailing lists; ordering services by means of mail, telephone and all other communication and telecommunication, direct mail advertising, business advisory and business management services, advertising services, display services for merchandise, publicity services, marketing and promotional services, market analysis and research, import/export agencies, procurement, namely, buying of goods in the field of clothing, leather goods, jewelry, footwear, headgear, eyewear, electronic goods, computer peripherals, accessories for use with computers and electronic goods on behalf of a business, window dressing; organization and supervision of incentive schemes, loyalty schemes and bonus schemes for others; business services for franchises, namely, offering business management assistance in the establishment of a retail store; provision of business assistance and business supports, namely, advice and consultancy in the operation and establishment of franchises; management of business projects for others relating to franchise; marketing and business developments of franchise; provision of business information relating to franchise" in International Class 35, is likely to cause confusion with the previously registered marks CHARLES KEATH, LTD. for "general merchandise mail order catalogs" in International Class 16 and CHARLES KEATH for "mail order retail catalog services featuring clothing, furniture, home furnishings and accessories, dining room items and kitchenware, bedroom linens and accessories, patio, garden and yard furnishings, stationery, art prints, jewelry and leather goods" in International Class 35. Registration had been finally refused under Section 2(d) of the Trademark Act.

CHARLES & KEITH

CKJ's Class 35 "bringing together ... of a variety of goods, enabling customers to conveniently view and purchase those goods . . . from a general merchandise catalogue by mail order ... in the field of clothing, leather goods, jewelry, footwear, headgear, eyewear, electronic goods, computer peripherals, accessories for use with computers and electronic goods" is virtually identical to registrant's Class 35 "mail order retail catalog services featuring clothing, furniture, home furnishings and accessories, . . . jewelry and leather goods," according to the Board. CKI's "general merchandise catalogue by mail order" is related to registrant's mail order catalogs, according to the Board. Confusion is likely to occur from the use of similar marks for goods and for services that deal with or are related to those goods. Steelcase Inc. v. Steelcare Inc., 219 USPQ 433, 435 (TTAB 1983).

CKI's Class 9 sunglasses, chains, cords, frames, and cases for sunglasses are the type of goods that could be offered in registrant's catalogs and sold in connection with registrant's catalog services. See In re Hyper Shoppes, 837 F.2d 463, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988). The Board adds that purchasers would expect CKI's Class 9 gift cards to be offered by registrant's catalog services.

CKI admitted to overlap of the parties' catalog services; however, CKI argued that the distinction between CKI's goods and other services is more substantial. CKI submitted supporting evidence with its appeal brief. Materials submitted after the appeal is filed are untimely. Trademark Rule 2.142(d). The Board does not consider the late evidence. It is sufficient if likelihood of confusion is established for any item within each class. See In re Wacker Neuson SE, 97 USPQ2d 1408, 1409 (TTAB 2010) citing Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).

Given that the goods and services are legally identical and otherwise closely related and that there is no limitation as to trade channels or classes of purchasers in either parties' description of goods and services, the Board presumes that the goods travel in the same channels of trade to the same classes of purchasers. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012).

To determine whether the marks are confusingly similar, the Board considers their appearance, sound, connotation, and commercial impression. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 567 (CCPA 1973). The Board finds CHARLES & KEITH (stylized) and CHARLES KEATH similar in appearance and sound. CKI's ampersand does little to avoid confusion. See Wenatchee-Beebe Orchard Co. v. H. W. Butler & Bro., Inc., 126 USPQ 296 (TTAB 1960). This similarity in sound is significant because similarity in sound alone may be sufficient to support a finding of likelihood of confusion. See RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980).

Based on the ampersand, CKI argued the marks have different commercial impressions. To the extent that the marks identify a person or persons, they have similar connotations, according to the Board. The Board finds that the similarity in sound and appearance between the marks outweighs the minimal significance of CKI's ampersand.

Turning to CHARLES KEATH, LTD., LTD. is a business entity indicator that signifies the name of a business. Business entity indicators are generic and without trademark significance. See In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998).

Similarity in appearance, sound, or meaning may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988). The Board finds that any differences between the marks are overcome by their similarities in sound and appearance.

CKI submitted five CHARLES registrations to show that registrant's marks are weak. Evidence of third-party use of similar marks on similar goods and services is relevant to show the weakness of a mark, but third-party registrations are not evidence that the marks depicted therein are in use or that the public is aware of them, and they are thus of no probative value as to the weakness of the cited marks. See Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992). Third-party registrations may demonstrate the meaning of a word in the same way dictionary definitions illustrate how a term is perceived in the trade. See The Institut National des Appellations D'Origine v. Vintners International Co. Inc., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992).

According to the Board, the third-party registrations reveal that the cited marks are the only marks other than CKI's that combine CHARLES with a name that sounds similar to KEITH. The Board states that the third-party registrations do not affect the meaning of the marks or support a finding that the cited marks are weak.

When marks would appear on virtually identical and otherwise closely related goods or services, the degree of similarity necessary to support a finding of likely confusion declines. ShenMfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004).

Accordingly, the Board affirms the refusal to register CKI's mark CHARLES & KEITH (stylized).

(F-480) In re Mason, S.N. 77959377, unpubl'd. Refusal to register affirmed, March 27, 2013. Louis G Paul of Louis G Paul & Associates, PLLC for appellant; Ernest Shosho for TMEO. Bucher, [Taylor], and Wellington, Administrative Trademark Judges (10 pages). Available in slip opinion only.

(F-481) In re Natalie Scantlin, S.N. 85362985, unpubl'd. Refusals to register affirmed, March 27, 2013. Charles G McCloskey of Charles C McCloskey LLC for applicant; Simon Teng for TMEO. [Cataldo], Taylor, and Shaw, Administrative Trademark Judges (14 pages).

THE PONYTAIL CAP (CAP disclaimed), subject of an application to register by Natalie Scantlin for "baseball caps; baseball caps and hats; cap visors; caps; hats" in International Class 25, is merely descriptive and is likely to cause confusion with the previously registered mark PONYTAIL CAP & design (the mark consists of PONYTAIL CAP over a design of a silhouette of a lady's head wearing a ponytail cap; shown here) for "handbags; tote bags" in International Class 18. Registration had been finally refused under Sections 2(d) and 2(e)(1) of the Trademark Act.

The Board notes that Scantlin's THE PONYTAIL CAP incorporates the wording in registrant's mark. THE does not create a significant difference. Accord Jay-Zee, Inc. v. Hartfield-Zodys, Inc., 207 USPQ 269 (TTAB 1980). The marks are similar in that both contain PONYTAIL CAP, and registrant's design reinforces PONYTAIL CAP, according to the Board. When a mark comprises a word and a design, the word is accorded greater weight because it would be used to request the goods. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). The Board finds that PONYTAIL CAP is the dominant term in both marks.

Scantlin submitted third-party registrations for PONYTAIL marks and CAP marks, but not for PONYTAIL CAP marks, for clothing items. Because the registrations do not contain PONYTAIL CAP, the Board is not persuaded that registrant's mark is weak or otherwise entitled to a narrow scope of protection. Evidence of weakness or dilution consisting solely of third-party registrations is entitled to little weight in determining the strength of a mark; such registrations do not establish that the third-party marks are in use or that consumers are accustomed to seeing them. See AM F Inc. v. Am. Leisure Prods., Inc., Ill USPQ 268, 269 (C.C.P.A. 1973). The Board finds the marks more similar than different in appearance, sound, connotation, and commercial impression.

Examining Attorney Teng made of record nine use-based, third-party registrations showing that various entities have adopted a single mark for goods that are identified in the application and the registration. Third-party registrations that individually cover a number of different items and are based on use in commerce suggest that the listed goods may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993). Evidence from registrant's website and social media site indicates that registrant offers hats designed for women with ponytails, in addition to handbags and tote bags.

Scantlin argued that because the goods are classified in different international classes, confusion is unlikely. The determination concerning classification of goods is a purely administrative determination unrelated to the determination of likelihood of confusion. Jean Patou, Inc. v. Theon, Inc., 29 USPQ2d 1771, 1774 (Fed. Cir. 1993).

Scantlin argued that the goods move in different channels of trade and would be encountered by different classes of consumers. The Board must look to the goods as identified in the application and the registration. See Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Neither identification of goods includes restrictions as to price, target market, or manner in which the goods are offered for sale. Accordingly, both parties' goods must be presumed to move in normal channels of trade to all classes of consumers. See In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). The Board concludes that confusion is likely.

A term is merely descriptive if it immediately conveys information concerning a quality, characteristic, or function of a product in connection with its use. See In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978). A term need not immediately convey an idea of each specific feature of the goods to be considered merely descriptive; it need describe only one significant property. Whether a term is merely descriptive is determined in relation to the goods. See In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).

The Examining Attorney submitted a definition of "ponytail" and an open source online encyclopedia entry for "cap" as well as Web page articles and advertisements.

The Board finds that THE PONYTAIL CAP immediately describes Scantlin's goods as particularly suited for individuals with ponytails. The Board states that Scantlin's broadly recited goods must be presumed to include headwear that accommodates ponytails.

Material from the Internet is acceptable in ex parte proceedings as evidence of potential public exposure to a term. See In re Fitch IBCA, Inc., 64 USPQ2d 1058 (TTAB 2002).

Scantlin pointed out that the goods do not feature a ponytail. That a term may have other meanings in different contexts is not controlling. In re Bright-Crest, Ltd. at 593. The Board finds that the mark is merely descriptive of Scantlin's goods.

Accordingly, the Board affirms the refusals to register Scantlin's mark THE PONYTAIL CAP.

(F-482) In re Eagle Marine Services, Ltd., S.N. 85041968, unpubl'd. Refusal to register affirmed, March 28, 2013. Anthony Mulatta of Kilpatrick Townsend and Stockton LLP for appellant; Kathleen M. Vanston for TMEO. Quinn, Mermelstein, and [Kuczma], Administrative Trademark Judges (12 pages). Available in slip opinion only.

(F-483) In re New Dominion, LLC, S.N. 85225322, unpubl'd. Refusal to register affirmed, March 28, 2013. Joseph D. Fincher of Hall Estill Hardwick Gable Golden & Neis for applicant; Thomas M. Manor for TMEO. Zervas, [Wolfson], and Adlin, Administrative Trademark Judges (15 pages).

NEW DOMINION, LLC A NATURAL RESOURCE PRODUCER (LLC disclaimed), subject of an intent-to-use application to register by New Dominion, LLC (ND) for "analysis services for oil field exploration; exploration and searching of oil and gas; gas exploration; geophysical exploration for the oil, gas and mining industries; oil field exploration; oil prospecting; oil prospecting, namely, well logging and testing; performing oil well diagnostics; petroleum exploration; providing technology information in the oil and gas industry" in International Class 42, is likely to cause confusion with the previously registered mark DOMINION for, inter alia, "installation, construction, maintenance and repair of transmission facilities, energy equipment, and energy systems; maintenance and repair of the electrical or mechanical systems of others to eliminate or reduce electric power interruptions, fluctuations, transients, and harmonics; land development services, namely, planning and laying out of power plants; power plant construction; drilling and pumping oil and natural gas; installation of home security systems" in International Class 37 and "computer programming services for others; power quality analysis, design, and engineering through the selection, operation, and installation of devices or equipment to reduce or eliminate electric power interruptions, fluctuations, transients, and harmonics in the electrical or mechanical systems of others; engineering and design of transmission facilities, energy equipment, energy systems for others; oil and natural gas exploration; monitoring of home security systems; consultation services in the field of development, control, use and conservation of electrical energy and natural gas" in International Class 42. Registration had been finally refused under Section 2(d) of the Trademark Act.

The Board does not consider ND's late-filed evidence. Trademark Rule 2.142(d). The Board does not consider the list of registrations that ND submitted with its October 2011 response. Examining Attorney Manor objected to the listing in his final Office action. See In re Hoefflin, 97 USPQ2d 1174, 1177 (TTAB 2010).

In determining whether confusion is likely, the Board considers all relevant du Pont factors. The decision must be based on the entire marks, not just part of the marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Nonetheless, different features may be analyzed. Price Candy Company v. Gold Medal Candy Corporation, 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955).

The Board considers registrant's DOMINION. Because no evidence shows that DOMINION has a recognized meaning in connection with registrant's services, the Board finds it arbitrary and therefore inherently strong. The Board finds that NEW DOMINION is the dominant portion of ND's mark. When one incorporates the entire arbitrary registered mark of another into a composite mark, inclusion in the composite mark of a significant non-suggestive element does not necessarily preclude the marks from being so similar as to cause a likelihood of confusion. Coca-Cola Bottling Co. of Memphis, Tennessee, Inc. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975).

ND claimed that it uses its mark with NDL & design (Registration No. 4018928). The Board notes, "In determining the applicant's right to registration, only the mark as set forth in the application may be considered; whether or not the mark is used with an associated house mark is not controlling. " Frances Denney v. Elizabeth Arden Sales Corp., 263 F.2d 347, 120 USPQ 480, 481 (CCPA 1959). The Board finds the marks similar in sight, sound, meaning, and commercial impression.

Services need not be similar or even competitive, so long as they are related in some manner and are likely to be encountered by the same persons, who might have the mistaken belief that they emanate from the same source. In re Home Builders Assn, of Greenville, 18USPQ2d 1313, 1317 (TTAB 1990). The Board states that ND's "gas exploration; oil field exploration" overlaps with registrant's "oil and natural gas exploration" and "drilling and pumping oil and natural gas. " Compare Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981).

Registrant is a utility, and ND drills for oil and gas using a "new method known as de-watering. " ND claimed to be the preeminent dewatering expert. The Board points out that both parties provide the same services. The fact that ND may be known for using a different method of extraction is irrelevant.

The Examining Attorney submitted use-based, third-party registrations showing that a single entity may provide utility services and oil and gas exploration services. The registrations do not demonstrate that the marks involved are in actual use, but they suggest that utility services and oil or gas exploration services may emanate from a single source. In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff'd, 864 F.2d 149 (Fed. Cir. 1988).

Because there are no limitations as to trade channels in the application or the registration, and because the recitations cover identical services, the services would be offered through the same channels of trade to all usual purchasers. See Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987).

ND asserted that because its services are specialized and registrant's are not, ND will market its services to different customers. The Board must look to the services as identified in the application and the cited registrations. See Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).

As to purchaser sophistication, the evidence suggests that oil exploration is an expensive, high-risk operation. Even sophisticated purchasers are not immune from source confusion. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), citing Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970).

ND claimed that both marks have been in use since 2000 without confusion. Uncorroborated statements of no known instances of actual confusion are of little evidentiary value. In re Majestic Distilling, 65 USPQ2d at 1205, citing In re Bissett-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973).

Accordingly, the Board affirms the refusal to register ND's mark NEW DOMINION, LLC A NATURAL RESOURCE PROVIDER.

(F-484) In re Star-Brite Distributing, Inc., S.N. 77762719, unpubl'd. Refusal to register affirmed, March 29, 2013. John Christopher of Christopher & Weisberg PA for applicant; William T. Verhosek for TMEO. Kuhlke, [Taylor], and Shaw, Administrative Trademark Judges (19 pages).

The mark shown here as Fig. 1 (the mark consists of translucent blue to be used for a container body and not the cap; the dotted lines are intended to show the position of the mark and are not part of the mark as shown; the color translucent blue is claimed as a feature of the mark), subject of an application to register by Star-Brite Distributing, Inc. (SBD) for "non-chemical additives for oils and fuels" in International Class 4, is likely to cause confusion with the previously registered Supplemental Register mark shown here as Fig. 2 (the mark consists of the color blue as applied to the goods visible through a transparent tube; the dotted outline of the goods is intended to show the position of the mark and is not a part of the mark; the drawing is lined for the color blue, and color is claimed as a feature of the mark) for "petroleum based fuel additive" in International Class 4. Registration had been finally refused under Section 2(d) of the Trademark Act.

Examining Attorney Verhosek objected to evidence (i.e., hyperlinks to the Wikipedia entry for "petroleum" and to third-party websites) referenced by SBD for the first time with its appeal brief. The evidence is untimely. Trademark Rule 2.142(d). Links to websites are insufficient to make such evidence of record. See Calypso Technology Inc. v. Calypso Capital Management LP, 100USPQ2d 1213, 121619 (TTAB 2011). The Board sustains the objection.

The Board denies SBD's request for reconsideration in its brief. Requests for reconsideration should be filed before the deadline for filing an appeal. See Trademark Rule 2.64(b).

In determining whether confusion is likely, the Board considers all relevant du Pont factors. As pointed out in In re Cook Medical Technologies LLC, 105 USPQ2d 1377, 1380 (TTAB 2012), in the seminal case on color trademarks, Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 34 USPQ2d 1161 (1995), the Supreme Court indicated that the practical problem of deciding an issue of shade confusion is no more difficult than determining whether differences in word marks would be likely to cause confusion. Qualitex at 1164-65. The Board compares the color blue with the color translucent blue.

Goods need not be similar or even competitive, so long as they are related in some manner and are likely to be encountered by the same persons, who might have the mistaken belief that they emanate from the same source. See In re Accelerate s.a.l, 101 USPQ2d 2047, 2050 (TTAB 2012).

The Examining Attorney made of record use-based thirdparty registrations to show that SBD's identification of goods encompasses the more specific goods of the cited registration, namely., that SBD's non-chemical additives could be petroleum based. He also made of record evidence from thirdparty websites showing that enzyme fuel treatments, as nonchemical-based fuel additives, and petroleum-based fuel additives have the same purpose of treating fuels and oils and are marketed to the same consumers, who use such products in their engines and vehicles. He also made of record usebased third-party registrations showing that a single entity adopted a single mark for both parties' types of goods. See In re Mucky Duck Mustard Co., 6 USPQ2d at 1467, 1470 n.6 (TTAB 1988). The Board finds that SBD's goods encompass registrant's goods and that both types of additives improve fuel quality in engines.

Because there are no limitations as to channels of trade or classes of purchasers, the Board presumes that both parties' goods move in normal channels of trade to all classes of purchasers. See Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973). Given that SBD's fuel additives are for use in the engines of yard and garden machinery and of cars and trucks, the Board concludes that SBD's consumers include the general public. The Board states that the trade channels and the classes of purchasers overlap.

SBD argued that its goods are sold in brick-and-mortar stores and online and are marketed to marine owners, unlike registrant's. The Board looks to the registration and not to extrinsic evidence about the actual goods, customers, or channels of trade. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981), citing Kalart Co., Inc. v. Camera-Mart, Inc., 119 USPQ 139 (CCPA 1958).

The similarity of non-literal design marks must be decided primarily on the basis of visual similarity. General Foods Corp. v. Ito Yokado Co., Ltd., 219 USPQ 822, 828 (TTAB 1983). The test is not whether the marks can be distinguished in a side-by-side comparison but whether their appearance and commercial impression is similar enough that confusion as to source is likely. Cook Medical Technologies, 105 USPQ2d at 1381, citing San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977).

The Board compares the marks as they appear in the drawings and also considers the descriptions of the marks. The Trademark Manual of Examining Procedure (TMEP) specifies that the color location statement must include the generic name of the color and may include a reference to a commercial color identification system. The description of the mark must be clear and specific, use ordinary language, and identify the mark as consisting of the particular color as applied to the goods. If the applicant is claiming a shade of color, the shade must be described in ordinary language. TMEP § 1202.05(e).

The Board looks at both parties' specimens (Fig. 3). Because the Board decides this ex parte appeal on the information on the face of the registration, registrant's mark covers all shades of blue. The Board finds that registrant's and SBD's colors are identical, noting that consumers can see the color of registrant's goods through the transparent tubes. See Smithkline Beckman Corp. v. Pennex Products Co., Inc., 605 F. Supp 746, 225 USPQ 963 (E.D. Pa. 1985). Regarding placement of the colors, the Board observes that they almost completely comprise both parties' goods; SBD's container caps are not blue, but they are smaller than the containers and do not distinguish the marks.

The Board states that because registrant's "blue" is not limited to a certain shade of blue, it encompasses "translucent blue. " Because the marks are similar in appearance, the Board finds they have similar commercial impressions.

SBD argued that consumers of fuel additives are knowledgeable, so slight differences in the products would distinguish the products. The Board notes the lack of supporting evidence. Based on the inexpensive cost of fuel additives, the Board believes that consumers would exercise ordinary care. Even knowledgeable purchasers can be confused when very similar marks are used with overlapping goods. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) citing Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970).

To the extent that any doubt exists, the Board resolves all doubt in favor of the prior registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).

Accordingly, the Board affirms the refusal to register SBD's translucent blue color mark.

(F-485) In re Nations Outfitters, S.N. 85121702, unpubl'd. Refusal to register affirmed, March 29, 2013. Jeffrey P. Doss of Lightfoot Franklin & White LLC for appellant; Amy C. Kelly for TMEO. [Bucher], Kuhlke, and Wellington, Administrative Trademark Judges (9 pages). Available in slip opinion only.

Descriptive Cases:

(F-486) In re McCrane, Inc., S.N. 85276221, unpubl'd. Refusal to register affirmed, March 5, 2013. Edward S. Wright for appellant; Ronald McMorrow for TMEO. Wellington, Shaw, and [Masiello], Administrative Trademark Judges (7 pages).

SOF, subject of an application to register by McCrane, Inc. (McCrane) for "exercise weights" in International Class 28, is merely descriptive and therefore is not registrable. Registration had been finally refused under Section 2(e)(1) of the Trademark Act.

Examining Attorney McMorrow made of record Internet advertisements for "soft" exercise weights, indicating that the purpose of the soft coating is to afford the user a more comfortable grip or to avoid damaging surfaces that come into contact with the weights.

A term is merely descriptive if it immediately conveys information concerning a quality, characteristic, or function of a product in connection with its use. In re Gyulay, 820 F 2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). A slight misspelling does not tum a descriptive word into a nondescriptive mark if it will be perceived as the equivalent of the descriptive term. In re ING Direct Bancorp, 100USPQ2d 1681, 1690 (TTAB 2011).

The spelling of a descriptive term may be so altered that the resulting mark would not be perceived as the equivalent of the original word but merely suggestive of it; however, even extensively altered descriptive terms may be found merely descriptive. Andrew J. McPartland, Inc. v. Montgomery Ward & Co., 76 USPQ 97 (CCPA 1947), cert, denied, 333 U.S. 875, 77 USPQ 676 (1948). The courts have found misspelled words merely descriptive when the pronunciation of the resulting designation was not the same as the descriptive term from which it was derived. American Druggists' Syndicate v. United States Industrial Alcohol Co., 2 F.2d 942 (D.C. Cir. 1924).

According to the Restatement of Unfair Competition, the misspelling or corruption of a descriptive word will not ordinarily alter the descriptive character of the designation. Unless the alteration is sufficient to avoid encumbering use of the original word, the variation remains descriptive. In the attempt to register a mark that is a mere misspelling or contraction of a descriptive term, there is an inherent "evil," which is "the possibility of harassment by the registrant of the descriptive term, by means of threats of infringement suits and the like, of others in the field who use the descriptive term to describe their products. " Armour and Co. v. Organon, Inc., 245 F.2d 495, 114 USPQ 334, 337 (CCPA 1957). A business should not be allowed to appropriate a term the primary meaning of which is one that "others may employ with equal truth, and with equal right, for the same purpose. " Standard Paint Company v. Trinidad Asphalt Manufacturing Company, 220 U.S. 446, 454 (1911).

Considering the visual and phonetic similarities between SOF and the descriptive "soft," the Board finds "a risk of infringement for others using the original term. " McCrane could colorably allege that SOFT trademarks infringe on McCrane's rights.

Accordingly, the Board affirms the refusal to register McCrane's mark SOF.

(F-487) In re G-Force, Inc., S.N. 85301113, unpubl'd. Refusal to register affirmed, March 6, 2013. Clement Cheng of Newhope Law PC for appellant; Nelson B. Snyder III for TMEO. [Bergsman], Wellington, and Lykos, Administrative Trademark Judges (7 pages). Available in slip opinion only.

(F-488) In re Chestek, S.N. 85072195, unpubl'd. Refusal to register affirmed, March 14, 2013. Pamela S. Chestek, pro se; Laura Kovalsky for TMEO. [Quinn], Bucher, and Hightower, Administrative Trademark Judges; Bucher, dissenting (12 pages).

PROPERTY, INTANGIBLE, subject of an application to register by Chestek for "on-line journals, namely, blogs featuring information on intellectual property law" in International Class 41, is merely descriptive but has acquired distinctiveness under Section 2(f) of the Trademark Act. Registration had been finally refused under Section 2(e)(1) of the Trademark Act.

The issue before the Board is whether PROPERTY, INTANGIBLE is inherently distinctive. Chestek argued that PROPERTY, INTANGIBLE has no defined meaning and that the word order and the comma transform a unitary phrase into an arbitrary designation. Chestek urged that the mark is suggestive because it comprises an unnatural, incongruous combination. Chestek submitted unpublished Board opinions, a definition of "property," statements from intellectual property attorneys, and information related to Google searches for Chestek's blog.

A term is merely descriptive if it immediately conveys information concerning a quality, characteristic, or function of a service in connection with its use. In re Bayer Aktiengesellschaft, 488 F. 3d 960, 82 USPQ2d 1828 (TTAB 2007). Whether a term is merely descriptive is determined in relation to the services. In re Chamber of Commerce of the USA, 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). The question is not whether someone presented with only the mark could guess what the services are; rather, the question is whether someone who knows what the services are will understand the mark to convey information about them. In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).

The Board states that "intangible property" is commonly used and has a well understood meaning in the legal field. Chestek acknowledged that the target audience for her blog is intellectual property attorneys. See In re Cox Enterprises Inc., 82 USPQ2d 1040, 1042 (TTAB 2007), citing In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987). No imagination or multistage reasoning process is required for intellectual property attorneys to discern that the blog features information about a type of intangible property. See In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778 (Fed. Cir. 2003). PROPERTY, INTANGIBLE and "intangible property" create similar commercial impressions. See In re Dairimetics, Ltd., 169 USPQ 572, 573 (TTAB 1971).

When the primary difference between the marks is the transposition of the elements and the transposition does not change the commercial impression, the similarity between the marks may be a basis on which to find a likelihood of confusion. Çf. In re Wine Soc'y of Am. Inc., 12 USPQ2d 1139 (TTAB 1989). Punctuation generally is not enough to create a different commercial impression. See DuoProSS Meditech Corp. v. Inviro Medical Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012).

Examining Attorney Kovalsky submitted evidence showing uses of reverse word order such as "item, type of" and "last name, first name. "

Chestek noted the absence of evidence showing use of "Property, intangible." The fact that Chestek may be the first and only user of a merely descriptive designation does not justify registration if the only significance conveyed by the term is merely descriptive. See In re Nat'I Shooting Sports Found., Inc., 219 USPQ 1018 (TTAB 1983). That a term is "malformed" or otherwise not found in a dictionary is not controlling if the term has a recognized meaning. See Cummins Engine Co., Inc. v. Continental Motors Corp., 359 F.2d 892, 149 USPQ 559, 561 (CCPA 1966).

The Board is not persuaded by the declarations of intellectual property attorneys. The declarants state that PROPERTY, INTANGIBLE serves as a source indicator, but only one asserted that "imagination is required to reach a conclusion as to the nature of the services. "

Accordingly, the Board affirms the refusal to register Chestek's mark PROPERTY, INTANGIBLE. The application will proceed under Section 2(f).

Bucher, Administrative Trademark Judge, dissenting:

of the services are indicated by the mark. In re Abcor Development, 588 F.2d 811, 200 USPQ 218 (CCPA 1978). A thin line separates a suggestive mark from a merely descriptive one. In re Atavio, 25 USPQ2d 1361 (TTAB 1992). The distinction is often made on an intuitive basis rather than as a result of precisely logical analysis susceptible to articulation. See In re George Weston Ltd., 228 USPQ 57, 58 (TTAB 1985). The Board must focus on the mark exactly as presented. In re Wisconsin Tissue Mills, 173 USPQ 319, 320 (TTAB 1972). Bucher agrees with Chestek that even if the unitary phrase "intangible property" is descriptive of the contents of the blog, PROPERTY, INTANGIBLE creates a distinct commercial impression.

The examining attorney bears the burden of showing that a mark is merely descriptive, and Bucher finds that Examining Attorney Kovalsky failed to cite to any reported cases that are on point. Logically, according to Bucher, the mark is not analogous to phone book listings of "Last name, first name" or to "Item, type of. " It is not analogous to "the mere insertion of surprising, punctuation," according to Bucher, or to reported cases of a simple reversed order word, nor is it a case of a misspelled term.

Rolling this designation across one's tongue creates a momentary aural awkwardness bordering on the poetic, according to Bucher. PROPERTY, INTANGIBLE breaks apart a unitary term and creates an incongruity that requires a multistage reasoning process or imagination for readers of Chestek's blog to ascribe any particular significance to the phrase. This manipulation of the presentation results in a suggestive mark. See Aluminum Fabricating Co. v. Season All Window Corp., 259 F.2d 314, 119 USPQ 61 (2d Cir. 1958). The meaning of "intangible" as "elusive" provides a double entendre, according to Bucher. Readers of the blog struggle along with the author over complex intellectual property ownership disputes.

The declarations of intellectual property attorneys indicate that readers of the blog perceive PROPERTY, INTANGIBLE as an inherently distinctive source indicator. To the extent that any doubt exists, the Board is wont to publish the mark for opposition. See In re Morton-Norwich Products, Inc., 209 USPQ 791 (TTAB 1981).

A fear of the majority may be that a reversal will open the floodgates to simple marks having only the formulation, for example, of "Item, type of" in connection with industrial supplies. Bucher states that unless the applicant could articulate a double entendre or demonstrate an incongruity in the combination of the words, a reversal in this case does not create a slippery slope requiring the publication of all such future marks.

Accordingly, Bucher would reverse the refusal to register Chestek's mark PROPERTY, INTANGIBLE.

Judge Bucher reiterates that a mark is suggestive if a multistage reasoning process or the utilization of imagination, thought, or perception is required to determine what attributes (F-489) In re GP Global Limited, S.N. 85399516, unpubl'd. Refusal to register affirmed, March 14, 2013. James R Broder of Roeder & Broder LLP for appellant; Jenny Park for TMEO. Quinn, Holtzman, and [Bergsman], Administrative Trademark Judges (7 pages). Available in slip opinion only.

(F-490) In re Avant Garde Marketing Solutions, Inc., S.N. 77735279, unpubl'd. Refusal to register affirmed, March 19, 2013. Theodore F. Shiells of Shiells Law Firm P.C. for appellant; Steven M. Perez for TMEO. [Bucher], Holtzman, and Adlin, Administrative Trademark Judges (14 pages).

CASH VALUE, subject of an intent-to-use application to register by Avant Garde Marketing Solutions, Inc. (AGMS) for "customer loyalty services and customer club services, for commercial, promotional and/or advertising purposes featuring the ability for customers to earn rewards with a value equivalent to cash when applied to purchase goods or services from a participating merchant subject to compliance with any conditions imposed by the merchant; promoting the goods and services of others by means of the issuance of loyalty rewards cards which offer customers the ability to earn rewards with a value equivalent to cash when applied to purchase goods or services from a participating merchant subject to compliance with any conditions imposed by the merchant; providing incentive award programs for customers and employees for the purpose of promoting and rewarding loyalty through the distribution of prepaid stored value cards having a value equivalent to cash when applied to purchase goods or services from a participating merchant subject to compliance with any conditions imposed by the merchant; providing incentive award programs for customers for frequent use of participating businesses through the issuance and processing of loyalty coupons having a value equivalent to cash when applied to purchase goods or services from a participating merchant subject to compliance with any conditions imposed by the merchant" in International Class 35, is merely descriptive and therefore is not registrable. Registration had been finally refused under Section 2(e)(1) of the Trademark Act.

A term is merely descriptive if it immediately conveys information concerning a quality, characteristic, or function of a product in connection with its use. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). Whether a term is merely descriptive is determined in relation to the services for which registration is sought and the context in which the term is used. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978). The question is whether someone who knows what the services are will understand the mark to convey information about them. In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003).

Examining Attorney Perez supplied definitions of CASH and VALUE, website evidence from a range of types of merchants and service providers, and a listing of third-party registrations in which the recitations of services use "cash value" in the context of loyalty programs.

The Board agrees with the Examining Attorney that CASH VALUE immediately conveys a key characteristic of AGMS's rewards. As opposed to rewards systems having a point structure or offering retail discounts, consumers obtain rewards with a value measurable in standard denominations of money, explains the Board. "Value equivalent to cash" appears throughout AGMS's recitation of services. This is the definition of "cash value," and hence CASH VALUE is a significant characteristic of AGMS's rewards programs, according to the Board. The Board points to third-party registrations that recite services similar to AGMS's and that support the finding that CASH VALUE has become a term of art in the field of customer loyalty programs.

The Board sees from the website evidence that merchants and service providers use CASH VALUE to describe rewands with a value equivalent to cash. Consumers understand immediately that the programs provide "cash value" rewards that apply toward purchases from a participating merchant but that are not necessarily redeemable for cash in hand. The Boand agrees with the Examining Attorney that "cash value" encompasses value that may be used in the same manner as cash.

The Board rejects AGMS's narrow view that "cash value" refers only to value that is directly and without limitation exchangeable for an equivalent amount of currency and coin. The Board clarifies that consumers are accustomed to loyalty programs designed to encourage additional purchases from a defined network of merchants.

The Board states that the sheer range of third-party uses of "cash value" in the context of customer loyalty programs demonstrates that others use "cash value" to describe their programs and have a need to continue doing so.

Accordingly, the Board affirms the refusal to register AGMS's mark CASH VALUE.

(F-491) In re Weitzen, S.N. 85291176, unpubl'd. Refusal to register affirmed, March 19, 2013. Andrew Mark Weitzen, pro se; David Taylor for TMEO. Seeherman, [Ritchie], and Hightower, Administrative Trademark Judges (9 pages).

PARTNERSHIP DANCING, subject of an application to register by Weitzen for "educational and entertainment services, namely, conducting classes, workshops and events in the field of dance and distribution of course materials in connection therewith, and education consulting related thereto" in International Class 41, is merely descriptive and therefore is not registrable. Registration had been finally refused under Section 2(e)(1) of the Trademark Act.

A term is merely descriptive if it immediately conveys information concerning a quality, characteristic, or function of a service in connection with its use. See In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). That a term may have other meanings in different contexts is not controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). A mark is suggestive if a multistage reasoning process or the utilization of imagination, thought, or perception is required to determine what attributes of the services are indicated by the mark. In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003).

Examining Attorney Taylor submitted evidence showing third-party use of PARTNERSHIP DANCING to describe services associated with the instruction or discussion of dancing with partners. The Board observes that Weitzen's specimen of use (shown here) uses PARTNERSHIP DANCING to refer to his service. Weitzen admitted that "partner dancing" is merely descriptive. Weitzen claimed that the evidence shows incidental use of PARTNERSHIP DANCING or shows the term misused to refer to "partner dancing. " Weitzen submitted definitions of PARTNER and PARTNERSHIP.

The Board states that Weitzen may believe that PARTNERSHIP DANCING is an incorrect use of English and that it is Weitzen's sole province to use PARTNERSHIP DANCING to refer to, in his own way, a form of what he calls "partner dancing." The record shows that others are doing the same. Given the numerous instances of third-party use, the Board finds that consumers would perceive PARTNERSHIP DANCING as descriptive. The Board disagrees that PARTNERSHIP DANCING has an inexorably different connotation from "partner dancing" because a "partnership" is a joining of partners.

Weitzen submitted statements from experienced dancers who have only heard PARTNERSHIP DANCING in reference to Weitzen's system. That evidence does not detract from the fact that the term is widely used to describe dancing with partners, according to the Board, and that those who encounter the term with regard to Weitzen's services will immediately understand it to be descriptive.

Accordingly, the Board affirms the refusal to register Weitzen's mark PARTNERSHIP DANCING.

(F-492) In re GP Global Limited, S.N. 85345544, unpubl'd. Refusal to register affirmed, March 21, 2013. James P. Broder of Boeder & Broder LLP for appellant; Pamela Y. Willis for TMEO. [Bucher], Zervas, and Lykos, Administrative Trademark Judges (10 pages).

FRAGRANCE PODS (FRAGRANCE disclaimed), subject of an intent-to-use application to register by GP Global Limited (GPG) for "room fresheners" in International Class 5, is merely descriptive. Registration had been finally refused under Section 2(e)(1) of the Trademark Act.

A term is merely descriptive if it immediately conveys information concerning a quality, characteristic, or function of a product or service in connection with its use. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). Whether a term is merely descriptive is determined not in the abstract but in relation to the goods for which registration is sought and the context in which the term or phrase is being used or is intended to be used on or in connection with those goods. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978). The question is whether someone who knows what the goods are will understand the mark to convey information about them. In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003).

FRAGRANCE is disclaimed. The Board considers the dictionary definition of "pod" as a detachable unit having a special function (e.g., space capsules, jet engine pods). The Board finds that the term carries with it the idea of a compact, streamlined enclosure (e.g., protective compartment for an automobile's instrument gauges). The Board next considers third-party registrations using POD for air and room fresheners (e.g., SCENT POD, DOOR POD, and POD FRESHENERS). The Board finds that the registrations at issue refer to scented candles and automatic room fresheners in a unit with a compact or streamlined design.

The Board notes that GPG did not specify what kind of device its room fresheners would be and concludes from the record that it may well include a "pod-like structure. " Under the circumstances, the Board finds it disingenuous for GPG to argue that "a room freshener could be a scented spray" and holds that Examining Attorney Willis need not prove the alternative. The Board presumes that GPG's product might well combine some degree of electronic technology with a replaceable source of fragrance and that PODS is merely descriptive.

When two or more descriptive terms are combined, the determination of whether the composite mark also has a descriptive significance turns on the question of whether the combination of terms evokes a new and unique commercial impression. If each component retains its descriptive significance in relation to the goods, the combination results in a composite that is itself descriptive. See In re Petroglyph Games Inc., 91 USPQ2d 1332 (TTAB 2009).

When the mark involves more than a single term, the Board must consider whether the mark is merely descriptive as a whole and not just based on the individual elements. Common words may be descriptive when standing alone, but when used together in a composite mark, they may become a valid trademark. See Concurrent Technologies Inc. v. Concurrent Technologies Corp., 12 USPQ2d 1054, 1057 (TTAB 1989).

The Board finds no new, unique, or incongruous meaning arising from GPG's combination of FRAGRANCE and PODS. According to the Board, FRAGRANCE is a highly descriptive term for the involved goods, and it is used as an adjective describing the noun, PODS, which is not an unusual name for room fresheners. The Board concludes that no imagination is required to determine the significant characteristics of the named goods. GPG argued that it is the first to use this particular combination of terms to describe room freshener. The Board finds the allument insufficient. The fact that an applicant may be the first and only user of a merely descriptive designation does not justify registration if the only significance conveyed by the term is merely descriptive. See In re Nat'I Shooting Sports Found., Inc., 219 USPQ 1018 (TTAB 1983).

Accordingly, the Board affirms the refusal to register GPG's mark FRAGRANCE PODS.

(F-493) In re Worship Artistry, LLC, S.N. 85392899, unpubl'd. Refusal to register reversed, March 21, 2013. Angela Holt of Bradley Arant Boult Cummings, LLP for appellant; Michael Webster for TMEO. Zervas, Greenbaum, and [Masiello], Administrative Trademark Judges (9 pages).

WORSHIP ARTISTRY, subject of an application to register by Worship Artistry, LLC (WA) for "educational and entertainment services in the field of music instruction offered through online, nondownloadable videos and instructor assistance; providing a website featuring non-downloadable instructional videos in the field of music instruction" in International Class 41, is not merely descriptive. Registration had been finally refused under Section 2(e)(1) of the Trademark Act.

A term is merely descriptive if it immediately conveys information concerning a quality, characteristic, or function of a product or service in connection with its use. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). Whether a term is merely descriptive is determined not in the abstract but in relation to the services for which registration is sought and the context in which the term or phrase is being used or is intended to be used on or in connection with those services. In re Abcor Development Corp., 588 F. 2d 811, 200 USPQ 215, 218 (CCPA 1978). A mark is suggestive if a multistage reasoning process or the utilization of imagination, thought, or perception is required to determine what attributes of the services are indicated by the mark. In re George Weston Ltd., 228 USPQ 57 (TTAB 1985). A suggestive mark is registrable.

The Board considers the dictionary definition of WORSHIP and of ARTISTRY as well as Internet evidence showing that "worship music" describes a genre of music. The Board rejects Examining Attorney Webster's argument that WORSHIP ARTISTRY identifies a quality or characteristic of WA's instruction services in worship music artistry. According to the Board, worship is not equivalent to worship music, and the logical leap from one to the next is the very type of imagination, thought, or perception that, if required to reach a conclusion as to the nature of the services, would render the mark suggestive and not merely descriptive. In re George Weston Ltd. at 58.

The Board also rejects the argument that ARTISTRY is merely descriptive because it is frequently used in connection with musical performance and instruction. The Board finds that, to the extent that ARTISTRY describes an attribute of a talented person or of that person's inherent artistic ability, it describes something that cannot be taught by a music teacher. Thus it is not descriptive of music instruction services.

The Examining Attorney argued that WORSHIP identifies a field of music, and the resulting mark is analogous to, for example, "hip-hop artistry" or "R&B artistry" or "violin artistry. " The Board disagrees, noting that, in the Examining Attorney's examples, the genre word, in itself, describes a type of musical performance or another type of art. In contrast, the Board finds that WORSHIP is not one of the performing arts, and one must look outside the mark to find a connection between WORSHIP and a type of music.

Finally, the Board notes that the entire phrase WORSHIP ARTISTRY literally means artistic skill in worshipping. Because WA's identified services are not instruction in worshipping but instruction in music, the Board concludes that the mark as a whole is not merely descriptive.

Accordingly, the Board reverses the refusal to register WA's mark WORSHIP ARTISTRY.

(F-494) In re Moo Publishing Corp., S.N. 77950319, unpubl'd. Refusals to register affirmed, March 26, 2013. Zeynel M. Karcioglu of Jacobs & Burleigh LLP for appellant; Jason F. Turner for TMEO. Grendel, Shaw, and [Masiello], Administrative Trademark Judges (12 pages).

MEDICAL OFFICE (stylized; shown here), subject of an application to register by Moo Publishing Corp. (Moo) for "general feature magazine in the field of medicine" in International Class 16, is merely descriptive and has not acquired distinctiveness and therefore is not registrable. Registration had been finally refused under Sections 2(e)(1) and 2(f) of the Trademark Act.

A term is merely descriptive if it immediately conveys information concerning a quality, characteristic, or function of a product in connection with its use. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). A mark is suggestive if the utilization of imagination, thought, or perception is required to determine what attributes of the goods are indicated by the mark. In re George Weston Ltd., 228 USPQ 57 (TTAB 1985).

The Board finds that the dictionary definitions submitted by Examining Attorney Turner establish that MEDICAL OFFICE means the place where the practice of medicine is performed professionally. The Board also finds that "general feature magazine in the field of medicine" would include magazines containing articles about MEDICAL OFFICE(s). A term that merely describes the subject matter of a publication is merely descriptive of the publication. See In re Waverly Inc., 27 USPQ2d 1620 (TTAB 1993).

Moo argued that the mark is not descriptive because the publication is not directed at medical office professionals or doctors. The Board notes that this limitation is not included in the identification of goods. Whether a particular term is merely descriptive is determined in relation to the goods or services for which registration is sought. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978).

The Examining Attorney provided evidence showing that publications are sometimes bundled for marketing directly to medical offices. The Board concludes that a magazine that is suitable for inclusion in a bundle of subscriptions intended for doctors' offices may be described as a MEDICAL OFFICE magazine.

Finally, the Examining Attorney argued that MEDICAL OFFICE is merely descriptive because Moo's magazines provide medical office directory information. The Board concludes that a publication that contains a directory of medical service providers may aptly be described as a MEDICAL OFFICE publication.

The Board finds MEDICAL OFFICE merely descriptive.

The amount and character of evidence required to establish acquired distinctiveness depends on the facts of each case and particularly on the nature of the mark sought to be registered. See Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823, 829, 166 USPQ 34, 39 (CCPA 1970). In the case of a highly descriptive mark, purchasers would be less likely to perceive the mark as a source indicator; accordingly, more evidence is typically required to demonstrate acquired distinctiveness. See In re Bongrain Int'l Corp., 894 F.2d 1316, 1318, 13 USPQ2d 1727, 1729 (Fed. Cir. 1990).

To support its claim of acquired distinctiveness, Moo submitted the declaration of its president and CEO, including information regarding Moo's radio advertising since 2007 for both the mark and its Russian counterpart, television advertising since 2010, circulation, and raw sales.

The Examining Attorney criticized this evidence for three reasons. First, in the application, Moo's date of first use is 2010, which is substantially later than the 2007 date in the declaration. Second, a stylized mark cannot be displayed on the radio. Third, Moo's stylized Russian mark is not the same as the mark at issue.

The Board agrees and gives little weight to the advertising prior to 2010. The Board notes that, in view of the highly descriptive nature of the mark, use since 2010 is a very short time in which to develop market recognition. In re Packaging Specialists, Inc., 221 USPQ 917, 920 (TTAB 1984). The Board also notes that it is unclear to what extent sales and marketing efforts should be ascribed to the mark or its Russian counterpart. Finally, Moo's raw sales and advertising figures, offered without context, are insufficient to demonstrate acquired distinctiveness. Bose Corp. v. QSC Audio Products, Inc., 293 F.3d 1367, 63 USPQ2d 1303, (Fed. Cir. 2002).

The Board notes that the record lacks any media recognition regarding Moo's goods, customer testimonials, or other evidence to show how MEDICAL OFFICE points uniquely to Moo.

Accordingly, the Board affirms the refusal to register Moo's mark MEDICAL OFFICE (stylized).

(F-495) In re Coventry First, LLC, S.N. 77625177, unpubl'd. Refusal to register affirmed, March 28, 2013. Jamie B. Bischoff and Troy E. Larson of Ballard Spahr LLP for appellant; Christopher Buongiorno for TMEO. Kuhlke, Mermelstein, and [Hightower], Administrative Trademark Judges (8 pages). Available in slip opinion only.

(F-496) In re Christopher E. Falls, S.N. 85104958, unpubl'd. Refusal to register affirmed, March 28, 2013. Christopher E. Falls, pro se; Kaelie E. Rung for TMEO. Holtzman, [Shaw], and Masiello, Administrative Trademark Judges (7 pages). Available in slip opinion only.

(F-497) In re Alveologic, LLC, S.N. 85306982, unpubl'd. Refusal to register affirmed, March 28, 2013. Sherry Flax of Saul Ewing LLP for appellant; Martha L. Fromm for TMEO. [Grendel], Kuhlke, and Masiello, Administrative Trademark Judges (14 pages).

OSTEOPERFORATION, subject of an intent-to-use application to register by Alveologic, LLC (AL) for "dental and medical drill bits for cutting teeth or bone; dental instruments, namely, dental root files used in root canal therapy procedures; dental instruments, namely, root canal therapy instruments used to shave the inside of a root canal; drilling jigs for surgical and dental applications; drills for dental applications; drills for dental use; orthodontic appliances; orthodontic machines and instruments; surgical apparatus and instruments for medical, dental or veterinary use" in International Class 10 and "dental services, namely, performing restorative and cosmetic procedures; oral surgery and dental implant services; orthodontic services" in International Class 44, is merely descriptive and therefore is not registrable. Registration had been finally refused under Section 2(e)(1) of the Trademark Act.

To be merely descriptive, the mark need not describe all of the goods and services identified in each of the classes in the application; it need only be merely descriptive of one of them in each class. See In re Chamber of Commerce of the United States of America, 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). A term is merely descriptive if it immediately conveys information concerning a quality, characteristic, or function of a product or service in connection with its use. Chamber of Commerce at 1219. If one must exercise mature thought or follow a multistage reasoning process to determine what product or service characteristics the term indicates, the term is suggestive rather than merely descriptive. In re Tennis in the Round, Inc., 199 USPQ 496, 497 (TTAB 1978).

A term need not immediately convey an idea of each specific feature of the goods or services to be considered merely descriptive; it need describe only one significant property. Chamber of Commerce at 1219. The question is not whether someone presented with only the mark could guess what the goods and services are; rather, the question is whether someone who knows what the goods and services are will understand the mark to convey information about them. In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002). The fact that a term may have different meanings in other contexts is not controlling. See In re IP Carrier Consulting Group, 84 USPQ2d 1028, 1034 (TTAB 2007).

When two or more descriptive terms are combined, the determination of whether the composite mark also has descriptive significance turns on the question of whether the combination of terms evokes a new and unique commercial impression. If each component retains its descriptive significance in relation to the goods or services, the combination results in a composite that is itself descriptive. See DuoProSS Meditech Corp. v. Inviro Medical Devices Ltd., _ F.3d _, 103 USPQ2d 1753 (Fed. Cir. 2012).

The Board finds that OSTEOPERFORATION is a composite consisting of two merely descriptive components: OSTEO and PERFORATION. The Board concludes that OSTEO describes a feature of AL's goods, namely, that they are used for cutting bone. AL argued that the term is not descriptive because OSTEO has other meanings. The Board notes that descriptiveness is based on the significance of the term in connection with the goods, not in the abstract. The Board finds that PERFORATION means the act of perforating or the state of being perforated. Because AL's goods include drills, the Board concludes that PERFORATION describes a feature of the goods.

The Board finds that combination of these two merely descriptive terms into the composite OSTEOPERFORATION does not negate the mere descriptiveness of the mark. AL's goods are used for bone perforation, thus OSTEOPERFORATION merely describes the goods.

Examining Attorney Fromm submitted Internet evidence showing OSTEOPERFORATION used as a descriptive term of art in the medical, dental, and orthodontic fields. The Board finds that the Internet evidence showing merely descriptive use of OSTEOPERFORATION as a term of art in connection with orthodontic and general medical surgical procedures establishes the mere descriptiveness of the term as applied to AL's goods.

AL submitted TESS printouts showing third-party registrations of OSTEO-formative marks that were found to be inherently distinctive. The Board notes that the registrability of AL's mark must be determined based on the evidence; the existence of other marks that might share some of the same characteristics as AL's mark is not dispositive. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001).

The Board finds OSTEOPERFORATION merely descriptive of AL's goods.

For the same reasons, the Board finds OSTEOPERFORATION descriptive of AL's services, which use the technique of osteoperforation.

Accordingly, the Board affirms the refusals to register AL's mark OSTEOPERFORATION.

(F-498) In re University of Miami, S.N. 85090781, unpubl'd. Refusal to register affirmed, March 29, 2013. John Christopher of Christopher & Weisberg PA for appellant; James W. MacFarlane for TMEO. [Taylor], Masiello, and Hightower, Administrative Trademark Judges (9 pages).

LAUNCH CAMP, subject of an intent-to-use application to register by University of Miami (UM) for "business consulting services, namely, providing business advice to entrepreneurs" in International Class 35 and "educational services in the nature of business development instruction" in International Class 41, is merely descriptive and therefore is not registrable. Registration had been finally refused under Section 2(e)(1) of the Trademark Act.

A term is merely descriptive if it immediately conveys information concerning a quality, characteristic, or function of a service in connection with its use. In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986). A term need not immediately convey an idea of each specific feature of the services to be considered merely descriptive; it need describe only one significant property. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).

Whether a term is merely descriptive is determined not in the abstract but in relation to the services for which registration is sought, the context in which the term or phrase is being used, and the impact that the term is likely to have on the average purchaser of such services. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978). Finally, a combination of descriptive terms may be registrable if the composite creates a unitary mark with a separate, nondescriptive meaning. In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968). The combination of descriptive words, however, does not necessarily create a nondescriptive word or phrase. In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988).

Examining Attorney MacFarlane submitted dictionary definitions and Internet evidence in support of his argument that LAUNCH CAMP is merely descriptive. UM admitted that its services include a summer program of instruction relating to the organization and operations of a business. According to the Board, the evidence shows that LAUNCH directly describes an attribute of UM's services, namely, the subject matter of how to launch a business. The Board notes that CAMP also describes a feature of UM's services, namely, services provided in the context of an educational summer camp.

The Board finds that when LAUNCH CAMP is viewed in connection with UM's services, nothing is incongruous or requires the gathering of further information for the merely descriptive significance of the mark to be readily apparent. See In re Abcor Development Corp., Inc., 588 F. 2d 811, 200 USPQ 215 (CCPA) (Rich, I, concurring).

UM's website indicates that UM offers instruction in the form of a summer camp to teach students how to start their own businesses. The Board concludes that when consumers encounter LAUNCH CAMP in this context, it immediately informs them that UM's services feature instruction in the area of launching a business in an educational camp setting.

UM contended that the combination of LAUNCH and CAMP creates an incongruity because LAUNCH means "to send forth," whereas CAMP means "to stay put." The fact that a term may have different meanings in other contexts is not controlling. See Bright-Crest, Ltd., 204 USPQ at 593 (TTAB 1979). Moreover, when considering combined terms, the distinct meaning created by the combination must be well recognized by the public and readily apparent from the mark itself to escape mere descriptiveness. See In re Brown-Forman Corp., 81 USPQ2d 1284, 1287 (TTAB 2006).

Accordingly, the Board affirms the refusal to register UM's mark LAUNCH CAMP.

(F-499) In re Tri-Coastal Design Group, Inc., S.N. 85333459, unpubl'd. Refusal to register reversed, March 29, 2013. Tedd S. Levine for appellant; James W. Stein for TMEO. Quinn, Greenbaum, and [Masiello], Administrative Trademark Judges (5 pages). Available in slip opinion only.

(F-500) In re Graphcast, Inc., S.N. 85392933, unpubl'd. Refusal to register affirmed in part, reversed in part, March 29, 2013. Olivia M. Fleming of Barnes & Thornburg, LLP for appellant; Kathleen M. Vanston for TMEO. [Zervas], Wellington and Masiello, Administrative Trademark Judges (8 pages). Available in slip opinion only.

Miscellaneous Cases:

(F-501) In re White Jasmine LLC, S.No. 77115548, 105 USPQ2d 1385 (TTAB 2013). Refusal to register affirmed. Trida L. Schulz of Foley & Lardner LLP for appellant; Christine C. Martin for TMEO. Holtzman, [Bergsman], and Adlin, Administrative Trademark Judges (27 pages).

WHITE JAMSINE & design (shown here as Fig. 1), subject of an application to register by White Jasmine LLC (WJ) for "beverages made of tea; black tea; flavourings of tea; spice blends; spices" in Class 30, is deceptive as well as deceptively misdescriptive and is without acquired distinctiveness and therefore is unregistrable.

Registration had been finally refused under Sections 2(a) and 2(e)(1) of the Trademark Act.

Examining Attorney Martin provided evidence demonstrating that WHITE JASMINE refers to a type of white tea scented or flavored with jasmine. In response, WJ provided evidence to show that the term identifies a particular scent. The Board finds this evidence relevant because scent is one of the qualities consumers perceive in tea and tea beverages. In addition, the Board infers that if consumers recognize WHITE JASMINE as a fragrance, they recognize it has a flavor. The Board also finds that the examples of competitors' use of the term as the name of their goods is persuasive evidence that the relevant consumers perceive the term as the name of a type of tea.

The Examining Attorney maintained that the mark is deceptive because the mark indicates that the goods contain white tea. The Board explains that it is well established that a mark may be found deceptive on the basis of a single deceptive term embedded in a larger mark. The Board explains that the test for whether a mark consists of or comprises deceptive matter is as follows: (i) Is the term misdescriptive of the character, quality, function, composition, or use of the goods? (ii) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods? (iii) If so, is the misdescription likely to affect a significant portion of the relevant consumers' decision to purchase? In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988), aff'g 8 USPQ2d 1790 (TTAB 1987).

In this case, the Board explains that WHITE JASMINE refers to a type of tea and that white jasmine tea is a subcategory of two types of tea: white tea and jasmine tea. The Board explains that the word "white" immediately describes, without conjecture or speculation, a significant ingredient of tea. The Board reasons that tea purchasers will clearly understand that because white tea is a type of tea, the word "white" in the term WHITE JASMINE designates that the tea is white tea or contains white tea. Consequently, the Board finds that the term misdescribes tea that is not white tea.

Next, the Board finds that it is likely that customers of WJ's products would believe that its tea is white tea. Turning to the final prong of the deceptiveness test, the Board explains that the Examining Attorney provided evidence that white tea is more desirable because it provides health benefits. The Board finds that the evidence establishes that consumers perceive that white tea has desirable health benefits, and the misdescription is material to consumers interested in purchasing or drinking white tea to obtain these health benefits. Consequently, the Board finds that the term WHITE JASMINE is deceptive.

For the purpose of completeness, the Board considers the disclaimer requirement in the alternative. The Examining Attorney maintained that WJ must disclaim the wording WHITE JAMSINE because the wording is generic or deceptively misdescriptive in the context of WJ's goods. As a component part of its prior conclusion that WHITE is deceptive in the context of this mark, the Board explains that it found WHITE misdescriptive of WJ's goods. The Board explains that based on the record, there is clear evidence to support a further finding that the relevant public would believe WJ's goods are white jasmine tea. In addition, the Board notes that it is undisputed that WJ's goods do not consist of or contain that type of tea. The Board finds that WHITE JASMINE is deceptively misdescriptive, and the requirement for a disclaimer on that basis is affirmed.

Next, the Board considers whether WHITE JASMINE has acquired descriptiveness. The Board explains that deceptively misdescriptive marks may be registrable with a showing of acquired distinctiveness. In this case, the Board finds that WJ's use since December 2003, although indicative of its commercial success, is not persuasive considering the nature of the subject matter sought to be registered and the widespread third-party use of that term. Moreover, the Board finds WJ's sales and advertising figures insufficient to show acquired distinctiveness.

Accordingly, the Board affirms the refusal to register WJ's WHITE JASMINE mark.

(F-502) In re PBM Products, LLC, S.Nos. 77368754 and 77385593, unpubl'd. Request for reconsideration denied, March 5, 2013. Theodore A. Breiner of Breiner & Breiner LLC for appellant; Simon Teng for TMEO. [Cataldo], Wellington, and Shaw, Administrative Trademark Judges (9 pages). Available in slip opinion only.

(F-503) Stoncor Group, Inc. v. Specialty Coatings, Inc., Opp. No. 91187787, unpubl'd. Request for reconsideration denied, March 5, 2013. Charles N. Quinn of Fox Rothschild LLP for opposer; Thomas Hoxie of Hoxie and Associates LP for applicant. Quinn, Holtzman, and [Lykos], Administrative Trademark Judges (5 pages). Available in slip opinion only.

(F-504) In re Hot Stuff Foods, LLC, S.N. 77392514, unpubl'd. Refusal to register reversed, March 8, 2013. Gregory Golla of Merchant & Gould PC for appellant; Bridgett G. Smith for TMEO. Seeherman, [Bergsman], and Kuczma, Administrative Trademark Judges (4 pages).

HOT STUFF PIZZA & design (PIZZA disclaimed; Fig. 1) is the subject of an application to register by Hot Stuff Foods, LLC (HSF) for "food products, namely, pizza; egg rolls, bread sticks and bakery goods" in International Class 30, "franchising services, offering technical assistance in the establishment and operation of restaurants, carry-out food shops, and food kiosks; food kiosk services" in International Class 35, and "restaurant services and carry-out restaurant services" in International Class 43. The amendment to the drawing is not a material alteration of the mark. Registration had been finally refused on the ground that the amended drawing constitutes a material alteration of the original drawing.

When HSF filed its statement of use, it also filed an amended drawing (Fig. 2). Examining Attorney Smith argued that the marks create different commercial impressions. The amended drawing depicts a vastly different-looking slice of pizza, according to the Examining Attorney. The original mark is a stylized version of a slice of pizza; the amended mark is a plain, basic depiction of a slice of pizza. The Examining Attorney explained that an analysis of the mark as a plain slice of pizza is very different from an analysis of the pizza with toppings.

An applicant may amend the drawing of the mark if the amendment does not materially alter the mark. Trademark Rule 2.72(a)(2). The test is whether the mark would have to be republished after the alteration to fairly present the mark for opposition. If one mark is sufficiently different from another mark as to require republication, it would be tantamount to a new mark appropriate for a new application. Visa International Service Association v. Life-Code Systems, Inc., 220 USPQ 740, 743-44 (TTAB 1983).

The Board states that the amended drawing does not represent a substantial and thus material change to the original drawing. The Board states that the two marks create the same commercial impression: HOT STUFF PIZZA superimposed on a pizza slice. The Board finds that HOT STUFF PIZZA is the dominant part of the mark. The modified mark contains the essence of the original mark, according to the Board.

Accordingly, the Board reverses the refusal to register HSF's mark HOT STUFF PIZZA & design.

(F-505) In re Ricko De Wilde, S.N. 85125004, unpubl'd. Refusal to register reversed, March 14, 2013. Scott J. Major of Millen White Zelano & Branigan PC for appellant; Marc J. Leipzig for TMEO. [Bucher], Kuhlke, and Hightower, Administrative Trademark Judges (13 pages). Available in slip opinion only.

(F-506) In re Ryan M. Wiederstein, S.N. 85193002, unpubl'd. Refusal to register affirmed, March 14, 2013. Timothy J. Zarley of Zarley Law Firm, P.L.C. for appellant; Saima Makhdoom for TMEO. Zervas, Cataldo, and [Gorowitz], Administrative Trademark Judges (7 pages). Available in slip opinion only.

(F-507) C.F.M. Distributing Company, Inc. v. Theresa Costantine, as Personal Representative of the Estate of Richard Costantine, Opp. No. 91185766, and Original Maryland Fried Chicken, LLC v. Theresa Costantine, as Personal Representative of the Estate of Richard Costantine, Opp. Nos. 91187377 and 91187378, unpubl'd. Oppositions sustained, March 20,2013. Amber N. Davis of Beusse Wolter Sanks Mora & Maire P.A. for GF.M. Distributing Company, Inc. and Suzanne D. Meehle of The Meehle Law Firm, P.A. for Original Maryland Fried Chicken, LLC; Neil A. Saydah of the Saydah Law Firm for applicant. [Bucher], Holtzman, and Taylor, Administrative Trademark Judges (44 pages).

Richard Costantine, who is now deceased and represented by his widow, Theresa Costantine (RTC), filed applications to register MARYLAND FRIED CHICKEN: COMPLETE DINNERS TO GO! & design (MARYLAND FRIED CHICKEN: COMPLETE DINNERS TO GO disclaimed; the mark is described as a large vertical rectangle containing an oval with a stylized design of a sign within the oval composed of a small vertical rectangle with a checkerboard pattern and stylized designs of a small chicken and a large chicken and COMPLETE DINNERS TO GO! superimposed over the rectangle and with a horizontal rectangle containing MARYLAND FRIED CHICKEN and with the bottom legs of the sign terminating in a stylized design of a flower patch composed of flowers and bordered by bricks; color is not claimed as a feature of the mark; Fig. 1) and the design of two chickens ("little chicken standing next to big chicken"; Fig. 2) for "restaurant services, including sit-down service of food and take-out restaurant services" in International Class 43. GF.M. Distributing Company, Inc. (CFM) opposed the application to register MARYLAND FRIED CHICKEN: COMPLETE DINNERS TO GO! & design, and Original Maryland Fried Chicken, LLC (OMFC) opposed both applications. CFM and OMFC claimed (i) that RTC's marks are likely to cause confusion with their marks; (ii) that RTC is not the rightful owner of the marks; (iii) that RTC committed fraud by filing the applications; (iv) that if RTC had any rights in the marks, they were abandoned; (v) that if RTC had any rights in the marks, they were lost through naked licensing and an absence of quality control; and (vi) that if RTC had any rights in the marks, they were lost through extensive thirdparty use of the marks. RTC denied the salient allegations.

Preliminary Matters

The Board considers RTC's motion to strike.

RTC argued that the discovery deposition of Anthony Costantine should be excluded pursuant to Trademark Rule 2.120(j)(l). RTC argued (i) that Anthony is not an officer, director, or managing agent of Richard Costantine's estate and is not a witness designated by RTC and (ii) that RTC did not consent to the use of his deposition as evidence.

The Board agrees with CFM and OMFC that Anthony has played a key role in this proceeding on behalf of RTC and that he is a named principal in several entities with claims to the marks. RTC's counsel had the opportunity to object to Anthony's testimony but failed to do so. The Board denies the motion.

RTC alleged that CFM's Notices of Reliance were filed in an untimely manner and should be stricken. CFM tried to file the Notices of Reliance on time, but the USPTO website could not process the volume of documents. CFM immediately attempted to correct the situation. The Board notes that RTC received the filings without delay, so there was no harm to RTC. The Board denies the motion.

CFM did not include an exhibit with the documents that it submitted. The Board grants RTC's motion to strike.

The Board considers RTC's motion to amend the dates of use. RTC claimed a date of first use of 1980 and has asked to amend the date to 1961. The earlier dates must be established by clear and convincing evidence. See Bass Pro Trademarks LLC v. Sportsman's Warehouse, Inc., 89 USPQ2d 1844, 1856 (TTAB 2008).

The Board states that the probative value of the record is reduced by a variety of factors, including imperfect memories of business activities that happened years ago; events that are not supported by documentation; testimony contradicted by documentary evidence; deaths of material witnesses; and the fact that RTC's principal remaining witness, Theresa Costantine, claimed to know nothing of the business and then offered memories of which she had claimed to have no knowledge. The Board finds that RTC's affidavits and testimony feil to provide clear and convincing support for an amendment to the dates of use.

Background

The Board is faced with an extended family spat that has been building for decades over the ownership of source indicators for restaurants selling pressure-fried chicken. The disagreements arise from a string of Maryland Fried Chicken restaurants begun in the 1960s in Florida. The parties agree that in the context of fast food restaurants, MARYLAND FRIED CHICKEN retains substantially no source-indicating capacity. Nonetheless, the parties have been in constant disagreements over a variety of chicken images, alone and with MARYLAND FRIED CHICKEN.

The Constantine/Costantine Family

The Board offers an abbreviated family tree (Fig. 3).

The 50-year Narrative

Albert Constantine opened Constantine's restaurant in 1959 at 2740 South Orange Blossom Trail in Orlando, Florida, offering "Maryland fried chicken. " In 1961, Albert and W.H. Truesdell filed a Florida trademark application for MARYLAND FRIED CHICKEN under an address in Maitland, Florida.

Albert's brothers, Angelo (Angel) R. Costantine (19232002) and Richard J. Costantine, Sr., (1927-2008) moved to Florida and allegedly bought out Truesdell's interest in the business. A "chattel mortgage" from 1962 shows Angelo, Albert, and Richard "doing business as Constantine's Restaurant." Albert erected a 35-foot-high Maryland Fried Chicken sign in front of the restaurant. The imagery of the sign is portrayed in Fig. 1 and in third-party composite marks implicated herein.

Maryland Fried Chicken, Inc. (MFCI) was created in 1963; the documents of record demonstrate no ownership interest in this entity by Angelo or Richard. In 1964, MFCI registered MARYLAND FRIED CHICKEN & design (MARYLAND FRIED CHICKEN and the representation of the chicken disclaimed; Fig. 4) for "carryout restaurants" claiming use in commerce since 1963. MFCI initiated a franchise system beginning with outlets in the Orlando area. Fig. 5 is a 1967 photo showing CONSTANTINE'S RESTAURANT and MARYLAND FRIED CHICKEN as service marks. RTC argued that this photo of Richard's wife, Theresa, taken in front of Constantine's Restaurant is a piece of the proof of RTC's use of the marks since 1967. RTC, however, has been unable to provide documentation that Richard was an officer, director, or owner of MFCI or that he or Angelo had a property interest in the original restaurant (or any other individual restaurant from the 1960s to mid-1970s).

RTC suggested that "the Company was operated by Albert, Richard, and Angelo Costantine." The Board observes that growing divisions among the brothers were apparent from the mid-1960s. Two corporations were formed in May 1967. The first, National Restaurant Supply Inc. (NRSI), was formed by Angelo and Richard to distribute packaging. RTC contended that NRSI retained ownership of the five Maryland Fried Chicken restaurants then in existence, but nothing in the record verifies that contention. The second, Maryland Fried Chicken of S.O.B.T., Inc., was allegedly formed by Theresa, Robert, and Michael. The Board sees no evidence of trademark assignments from MFCI to NRSI or to Maryland Fried Chicken of S.O.B.T., Inc. or to Richard, Theresa, or Angelo. The Board points out that there are many unanswered questions about the purposes and roles of the two corporations, what tangible or intangible properties they may have owned, and how the entities related to MFCI. As of May 1967, the Board finds Albert in control of MFCI and in possession of a claim to the chain of title in the only existing Federal trademark registration owned by the family, MARYLAND FRIED CHICKEN & design (Fig. 4).

The next corporate iteration of MFCI was a Delaware corporation. Albert seems to have retained an interest in the Delaware corporation inasmuch as in 1971, he signed the Sections 8 and 15 affidavits on MARYLAND FRIED CHICKEN & design (Fig. 4) as president of MFCI.

In 1971, the original restaurant was transferred from MFCI to Albert Constantine. In 1985-1986 Albert, in connection with the 20-year renewal of MARYLAND FRIED CHICKEN & design (Fig. 4), recorded a nunc pro tunc assignment to himself that he declared had been effective as of 1972. If the documents are to be trusted, as of 1971-1972, Albert considered himself the sole owner of the original restaurant and of MARYLAND FRIED CHICKEN & design (Fig. 4).

The record contains claims that Albert Constantine established a chain of Maryland Fried Chicken restaurants that earned him millions before he sold the franchise operation in 1975 and that the Costantine brothers built a franchise system of Maryland Fried Chicken restaurants in the 1960s and 1970s and then sold the company. Documents in the record suggest that the truth is even more complicated, according to the Board. The record suggests that in 1975, the Maryland Fried Chicken enterprise was experiencing financial difficulties. The Board points to testimony about the company going bankrupt in the 1970s. In 1975-1976, CFM agreed to handle the distribution of fest food products and other supplies to MFCI restaurants; NRSI was no longer in business.

There is no indication in the record that Richard Costantine was involved with the business from the mid-1970s until 1979. In 1979, Richard and Theresa Costantine leased a Maryland Fried Chicken restaurant in Leesburg, Florida. The conveyance detailed the restaurant contents but did not indicate a transfer of the goodwill associated with the restaurant. Richard and Theresa's son Robert was involved in opening the Leesburg restaurant, and their sons Michael and Anthony have been part of the Leesburg restaurant for years. The record contains declarations and testimony that the Leesburg restaurant has been operating since the 1960s, but the Board notes the lack of supporting documentation. The record contains documentation that a different restaurant was in that location from 1961 through 1966. A different Maryland Fried Chicken restaurant was operated there until 1976. Anthony testified that Richard and Theresa never expanded beyond the Leesburg restaurant location (i.e., at any time since 1979-1980).

In 1985-1986, Albert Constantine recorded his nunc pro tunc assignment (allegedly as of 1972) to himself and then immediately renewed MARYLAND FRIED CHICKEN & design (Fig. 4) as the sole owner.

In 1995, Albert assigned his interest in the Federal registration to Edith Swain. In 1997-1998, Edith Swain and Richard Heavilon filed applications for THE ORIGINAL MARYLAND FRIED CHICKEN, THE ORIGINAL MARYLAND FRIED CHICKEN (stylized), and AUS ORIGINAL MARYLAND FRIED CHICKEN for "restaurant services." Also in 1997, CFM filed a cancellation, resulting in the cancellation of MARYLAND FRIED CHICKEN & design (Fig. 4). Despite the alleged transfer of ownership to Swain, Albert appeared pro se in this action.

The record contains a 2002 Florida Secured Transaction Registry document filed on behalf of MFCI and signed by Michael, Anthony, and Richard Costantine.

In 2005, Swain assigned her half interest in THE ORIGINAL MARYLAND FRIED CHICKEN (stylized) to Robin S. Heavilon of Blackshear, Georgia.

In 2006, Robert Costantine, through OMFC, opened his own Maryland Fried Chicken restaurant in Apopka, Florida.

In 2008, Richard Costantine d.b.a. Maryland Fried Chicken filed applications to register MARYLAND FRIED CHICKEN: COMPLETE DINNERS TO GO! & design (Fig. 1) and the design of two chickens (i. e., "little chicken standing next to big chicken"; Fig. 2), both with a date of first use of 1980, which is consistent with the enlacement and 1979-1980 reopening of the Leesburg Maryland Fried Chicken restaurant by Richard and Theresa.

Later in 2008, Richard Costantine passed away and Theresa was appointed as the personal representative of his estate.

In February-March 2009, Robert Costantine opened a Maryland Fried Chicken restaurant in Mount Dora, Florida, in Lake County. Richard sued Robert because of the proximity of the Mount Dora site to the Leesburg restaurant. Robert argued that no one entity or individual retained exclusive rights in the Maryland Fried Chicken logos. Following a temporary injunction by an Orange County, Florida, court, Robert signed a settlement agreement whereby OMFC and Robert Costantine agreed not to place a Maryland Fried Chicken restaurant in Lake County. Robert testified that he signed the agreement "to make [his] mother happy."

In June 2009, MTM Enterprises Group, LLC (MTM), a franchising company owned by Anthony and Michael Costantine and their previous attorney in this case, Matthew McKinney, filed an application to register "modern chicks design" (Fig. 6) based on a claim of use in commerce since May 2009. The record contains testimony that Theresa gave MTM a license, but there is no supporting documentation. This application has been suspended awaiting the outcome of "little chicken standing next to big chicken."

The Opposers in Focus

Robert Costantine, president of OMFC, helped his father, Richard, set up the Leesburg, Florida, restaurant in 1979-1980. He opened a Maryland Fried Chicken restaurant in Apopka, Florida, in 2006, and that restaurant is still in operation. When Robert and OMFC tried to open a second location in Mount Dora in 2008, his father sued him because the Mount Dora site is only 13 miles from the Leesburg restaurant. This single action of Richard suing his son Robert is the only evidence of Richard policing the marks. The settlement agreement prohibits Robert from establishing another restaurant within Lake County.

CFM was formed with the support of the owners of MFCI. Since the early 1970s, CFM has served as the commissary and exclusive distributor of goods and materials bearing the marks of Maryland Fried Chicken restaurants. In the mid-1970s, CFM began distributing its proprietary coleslaw and breading mix, food containers, disposable paper, plastics, T-shirts, and chemical cleaners emblazoned with the Maryland Fried Chicken logos.

CFM has continuously provided fast food products and supplies to Maryland Fried Chicken restaurants (30 nationwide and 12 in Florida), each of which is independently owned and operated, some for more than 40 years. The Board notes that RTC's Leesburg restaurant has purchased boxes and other supplies from CFM bearing Maryland Fried Chicken logos for 30 years.

Legal Analysis

CFM and OFCM raised claims of priority and likelihood of confusion, fraud, and abandonment through a pattern of naked licensing and widespread uncontrolled use by third parties. The Board sees the complaints as reflections of a long-term, complex, extended family battle over the ownership of property rights. The Board turns to an analytical framework drawing on evidentiary factors identified in Wrist-Rocket Manufacturing Co. v. Saunders, 379 F. Supp. 902 (D. Neb. 1974), aff'd in part and rev'd in part, 516 F.2d 846, 186 USPQ 5 (8th Cir. 1975), cert, denied, 423 U.S. 870 (1975). In deciding which party, if any, owns the marks, the Board considers (i) contractual expectation, (ii) responsibility for the quality of the goods and services, and (iii) consumer perception.

The Board presents a pictorial representation of the transactions, the constantly changing alliances, and the extended period over which the events have unfolded (Fig. 7).

RTC's supporters claim that Richard was the "only one [of his three brothers] who continuously carried the family tradition and the same delicious Maryland Fried Chicken secret recipe to the people for nearly fifty years. " The Board, however, finds that RTC has not established a clear, uninterrupted chain of title for ownership of the marks. The Board finds that Richard's name was not attached to recorded ownership of any bundles of the extended family's sticks for much of the 50-year period, except for the same rights exercised by 30 other restaurant owners to use the marks at a single restaurant location. Otherwise, there is substantially no evidence that Richard or Theresa maintained a formal relationship with the third-party restaurant owners from the mid-1960s to the present.

Many witnesses refer to the Maryland Fried Chicken restaurant owners as franchisees, but the Board finds that to be a misuse of a legal term of art. The Board notes the absence of a "franchisor" and points to a system without franchise fees or contractual obligations and with splintered centers of ownership; handshake deals; and independent restaurateurs, each of whom carried out his own vision in his own restaurant.

The Board considers contractual expectation. The parties agree that Albert Constantine was the force behind Maryland Fried Chicken in Central Florida in the early 1960s. Fifty years later, the Board finds that no one has a clear, uninterrupted chain of title for ownership of the marks.

The Board notes that each restaurant owner pays for and places local advertising.

The Board considers the process of opening a new Maryland Fried Chicken restaurant and finds no indication that RTC approved any of the recent third-party restaurants. The owner of the Winter Garden restaurant testified that for 30 years he has never paid compensation to RTC, sought permission from RTC, or been visited or audited by RTC.

The parties agree that when someone wants to open a new restaurant, he or she contacts the nearest current restaurant owner for approval. The Board observes that sometimes CFM acts as the intermediary and tries to coordinate the new location with owners of nearby restaurants; however, CFM "has never licensed, or had negotiations to license, assign, or otherwise grant rights to third parties to use the MFC trademarks." Rather, CFM fills a vacuum created by the absence of an effective franchising system. CFM is the latest and longest-lasting entity derived from Albert Constantine's initiatives 50 years ago.

The Board considers responsibility for the quality of the goods and services. The Board finds no simple answer to which party maintains the quality and uniformity of the product. Since the mid-1970s, CFM has provided paper products, fast food products, and other restaurant supplies imprinted with the marks to substantially all of the Maryland Fried Chicken outlets. The Board observes that for 40 years, CFM has been responsible for the most consistent use of the logos as applied to goods-intrade as seen by the public. The Boand points out that CFM's limited control of the marks on restaurant supplies does not ensure consistent quality among the restaurants.

RTC has been using the applied-for marks in the Leesburg restaurant since 1980 and buys products from CFM that RTC uses in its store. Except for the litigation against Robert, Richard did not control use of the mark by third-party restaurateurs. OMFC has used similar marks on its services in the Apopka restaurant since 2006 but has no claim to any larger rights.

The Board finds that since the 1970s, no one has maintained responsibility for the quality of Maryland Fried Chicken food or services. Each restaurant serves whatever its owner desires, and the taste of the chicken varies widely. CFM provides a breading mix, but individual restaurant owners use it differently. Maryland Fried Chicken restaurants sell fried chicken, barbequed chicken, steak, pork, Brunswick stew, pizza, or seafood. Some Maryland Fried Chicken restaurants specialize in Greek, Mexican, or Asian cuisine.

Maryland Fried Chicken restaurants look different, both inside and out, and use different signage.

The Board considers consumer perception and finds that members of the public in the southeastern United States, especially Central Florida, have faced decades with products and services bearing visually similar Maryland Fried Chicken marks. With each outlet having such diverse qualities, the Board finds that the logos do not identify a single source.

Conclusions

The Board states that the uncontrolled use of a mark by many different parties is anathema to the role and function of a source indicator. Through conscious acts of commission by various family members, any property rights that existed in the 1960s have been splintered, according to the Board. Repeated and inconsistent transfers of alleged bundles of sticks by constantly realigned individuals and groups has created total confusion about who was in charge of this one-time family enterprise.

The Board states that the parties have lost their trademark rights against the world and against each other. The current hodge-podge arrangement is not optimal, but the Board finds the status quo preferable to the scenario in which a single player, like RTC, is given the imprimatur of a Federal registration and the appearance of exclusivity.

The Board concludes that RTC was not the owner of the marks at the time the applications were filed; the applications are deemed void ab initio. The Board states that the traditional concepts of priority and likelihood of confusion are of little help and does not reach the questions of whether RTC committed fraud.

Accordingly, the Board sustains the oppositions to the registration of RTC's marks MARYLAND FRIED CHICKEN: COMPLETE DINNERS TO GO! & design and the design of two chickens.

(F-508) America's Best Franchising, Inc. v. Roger Abbott, Cone. Use No. 94002407, 106 USPQ2d 1540 (TTAB 2013). Concurrent use awarded. Mark L. Seigel of The Seigel Law Firm LLC for applicant; Paul D. Supnik for registrant. Quinn, Lykos, and [Adlin], Administrative Trademark Judges (31 pages).

America's Best Franchising, Inc. (ABF) seeks concurrent use registrations for the 3 PALMS marks shown here (HOTEL, RESORT, and HOTELS & RESORTS disclaimed) for "hotel and motel services. " ABF amended each application to identify Roger Abbott (Abbott) as an exception to its exclusive right to use the marks in commerce. ABF claims exclusive right to use the marks in the area comprising the entire United States except the state of Arizona, where Abbott uses his mark.

Abbott filed an answer denying that ABF is entitled to concurrent use registrations. Abbott asserted that he has adopted and continuously used the service mark 3 PALMS in the United States in connection with hotel services. Abbott admitted that currently he has licensed the mark in connection with only a single hotel, located in Scottsdale, Arizona, but he asserted that the Internet marketing, advertising, and promotion of hotels by necessity has expanded his territory nationwide. Abbott also alleged that ABF knew or should have known of his use of 3 PALMS prior to adopting its marks and that the marks are confusingly similar.

The Board explains that there is no dispute between the parties regarding the fact that Abbott was the first to use 3 B\LMS. The Board further states that Abbott has not offered hotel services under 3 PALMS outside of the Scottsdale location but has made fairly extensive use of the mark on the Internet. The Board notes that although Abbott has designated information regarding his promotional efforts as highly confidential, the evidence shows that Abbott promotes his hotel via advertisements on prominent Internet search engines and travel-related websites and through listings in various directories accessible online. Moreover, the Board finds that Abbott has received unsolicited media attention and has shown fairly substantial advertising expenses. Abbott testified that 50% of his customers come from outside Arizona. Abbott also asserted that he has intended to expand his use of 3 B\LMS to other hotels, although his purchase offers have all been rejected.

ABF first used its mark in Central Florida and subsequently reached service agreements with other locations across the United States. ABF promotes its services and 3 PALMS hotels at trade shows and through its own website, along with limited direct advertising to consumers. The Board also points out that neither party is aware of any actual confusion between their respective 3 PALMS marks.

The Board explains that two conditions precede the issuance of concurrent registrations: (i) The parties must be presently entitled to concurrently use the mark in commerce, and (ii) there must be no likelihood of confusion, mistake, or deception in the marketplace with regard to the source of the goods resulting from the continued concurrent use of the trademark. In re Beatrice Foods Co., 429 F.2d 466, 166 USPQ 431, 435-36 (CCPA 1970). The Board finds that the evidence of record shows that ABF adopted its marks in good faith in the geographic area of Central Florida, without knowledge of Abbott's prior use. The Board also explains that ABF began using its mark prior to the filing date of Abbott's geographically unrestricted application.

Next, in comparing the marks for the purposes of likelihood of confusion, the Boand finds that the services are identical and are offered in the same channels of trade. In comparing the marks themselves, the Board notes that because the literal elements are identical in part and both parties' marks include representations of palm trees, consumers might well be confused if the marks were to be used in the same geographic area.

The Board explains that the question before it is whether likelihood of confusion would be avoided by a geographic restriction. The Board finds that ABF has established that PALMS is used by a number of third parties for hotel services and that many PALM marks for hotels coexist without any geographic restrictions. The Board also points out that the evidence establishes that a number of hotels not only use the word PALMS but do so with a design including palm trees. The Board finds Abbott's mark quite weak as a result of widespread third-party use throughout the country.

In addition, the Board finds that a geographic restriction would make confusion unlikely, especially where purchasers have been conditioned, when faced with hotel marks containing the terms PALM or PALMS or palm tree designs, to consider other factors when choosing a hotel. In fact, the Board notes that it has often found that a geographic restriction is sufficient to avoid confusion between identical or highly similar marks that are used for identical or highly similar goods or services.

Abbott argued that the relevant territory is the entire country because both parties cater to those who travel to different locations to use the services and because the parties' marketing efforts overlap on the Internet, which is the channel of distribution for the parties' services. The Board disagrees, reasoning that hotel services are by definition rendered in a particular geographic location. The Board finds that a hotel's physical location is among its most salient features. The Board reasons that consumers, already conditioned to focus less on PALMS and palm trees than on other features of the parties' marks, will also be unlikely to be confused because those searching for an Arizona hotel will not encounter any of ABF's 3 PALMS hotels.

Because Abbott has not expanded beyond the single Scottsdale location and the record does not establish that Abbott's 3 PALMS hotel enjoys a reputation beyond Arizona, the Board reasons that the fact that both parties' services are promoted and offered online is not enough to result in a likelihood of confusion. The Board also points to the lack of actual confusion as somewhat relevant. The Board finds that overlapping Internet use for several years shows a reasonable opportunity for confusion to have occurred. The lack of any reported instances of confusion weighs against a finding of likelihood of confusion.

The Board explains that it must determine the geographic territory to which each party is entitled. The Board reasons that ABF has established rights in the territory claimed in its involved applications, namely, the entire United States except the state of Arizona. The Board finds that Abbott's use of 3 PALMS has been static since his date of first use and notes that no documentary evidence shows Abbott's 3 PALMS-specific expansion efforts or even his expansion intentions. In contrast, the Board notes that ABF has established that it has expanded significantly while Abbott's business remained static. Under these circumstances, the Board finds that Abbott, through inaction over a considerable period of time, abandoned his right to expand use of the mark outside of his trading area and therefore cannot preclude an innocent user from filling the territorial void left by Abbott. The Board finds that ABF's previous business activities and expansions, to the point of using 3 PALMS for hotels throughout most regions of the United States, entitles it to the territory requested in its involved applications, especially because ABF was the first to seek Federal registration.

Accordingly, the Board grants ABF's concurrent registrations for the 3 PALMS marks for the identified services in the United States, excluding the state of Arizona.

(F-509) In re Zinpro Corporation, S.N. 85369372, unpubl'd. Refusal to register affirmed, March 22, 2013. Edmund J. Sease of McKee Voorhees & Sease PLC for appellant; Brian Pino for TMEO. [Bucher], Kuhlke, and Hightower, Administrative Trademark Judges (10 pages). Available in slip opinion only.

(F-510) In re Kapalua Land Company, Ltd., S.N. 76670962, unpubl'd. Refusal to register reversed, March 26, 2013. Martin E. Hsia of Cades Schutte LLP for appellant; Simon Teng for TMEO. Kuhlke, Wolfson, and [Hightower], Administrative Trademark Judges (12 pages).

KAPALUA (KAPALUA means "two borders" in the Hawaiian language), subject of an application to register by Kapalua Land Company, Ltd. (KLC) for "on-line retail store services featuring clothing, headwear, jewelry, wallets, bags, backpacks, furniture and other household goods, personal care products, stationery, gifts, souvenirs, and golf related items; and retail store services featuring clothing, headwear, footwear, jewelry, handbags, purses, wallets, bags, backpacks, umbrellas, furniture and other household goods, personal care products, stationery, gifts, souvenirs, toys and golf related items, " is not primarily geographically descriptive and thus is registrable. Registration had been finally refused under Section 2(e)(2) of the Trademark Act.

The test for determining whether a word is primarily geographically descriptive requires a showing (i) that the mark's primary significance is a generally known geographic location and (ii) that the relevant public would be likely to make a services/place association. In re Brouwerij Nacional Balashi NV, 80 USPQ2d 1820, 1821 (TTAB 2006). The Board relies on the facts in each case. See In re Chalk's Int'l Airlines Inc., 21 USPQ2d 1637, 1639 (TTAB 1991). The examining attorney has the burden of establishing a prima facie case that a mark is primarily geographically descriptive. See In re Roy J. Mankovitz, 90 USPQ2d 1246, 1251 (TTAB 2009).

The Board considers whether the primary significance of KAPALUA is the name of a generally known geographic location. KLC submitted Internet printouts and other evidence, including declarations from its vice president and chief financial officer. The Board finds that KAPALUA had no geographical significance before KLC chose it for the name of its resort on Maui; that KLC has extensively promoted its KAPALUA real estate properties, hotel services, and golf services; and that KLC has maintained quality control over use of the mark by others.

The Board agrees with KLC that Examining Attorney Teng "did not argue during the prior prosecution of the Application that Applicant lacked exclusive ownership and/or control of an allegedly larger land area referred to by others as ?Kapalua.'" The Board appreciates that the USPTO is an agency of limited resources. In re Pacer Tech., 338 F.3d 1348, 67 USPQ2d 1629, 1632 (Fed. Cir. 2003). Nonetheless, the Board cannot find that the evidence establishes the existence of a geographic area outside of KLC's control called "Kapalua."

The Board must determine whether the primary significance of KAPALUA is to designate KLC's services or the geographic location of the resort. In re Pebble Beach Co., 19 USPQ2d 1687, 1688 (TTAB 1991). The Board finds the geographic significance of KAPALUA subsidiary to the function of the word as a service mark. Although the Examining Attorney submitted third-party references to Kapalua, KLC demonstrated that most such references pertain to KLC's resort and services. Information in the record, for example, indicates that Kapalua Beach is open to the public (as are all Hawaiian beaches) and that the beach was named by and is owned by KLC as part of the resort.

A Wikipedia article states that "Kapalua is a census-designated place (CDP) in Maui County, Hawai'i, United States. " The fact that a location is a CDP may weigh in support of a finding that a term is primarily geographically descriptive; however, Hawaii is the only state with no incorporated places recognized by the U.S. Census Bureau. Consequently, "[a]ll places shown in the data products for Hawaii are CDPs." The Board adds that the Wikipedia entry discusses the Kapalua Resort in several places. The Board does not find the census designation dispositive.

In rare cases, the Board has found that a designation coined and promoted as a mark but incidentally designating a particular location may not be primarily a geographic descriptor. In re Pebble Beach Co. at 1688. The greater weight of the evidence shows that KAPALUA did not signify a geographic place before KLC adopted KAPALUA to designate the origin of its services, and it continues to designate source. The Board adds that there is no evidence of any manufacturer or other commercial enterprise in a place named Kapalua outside of KLC's control.

Neither the fact that an applicant coins a name for a geographic area nor that the applicant owns and controls access to or use of that property changes the nature of a term that is primarily geographically descriptive. Cf. Grand Canyon West Ranch, LLC v. Hualapai Tribe, 88 USPQ2d 1501, 1506 (TTAB 2008).

Having found that the Examining Attorney has not demonstrated that the primary significance of KAPULUA is a generally known geographic location, the Board need not reach the second prong of the geographic descriptiveness test.

KLC owns other KAPALUA registrations, on the Supplemental Register and the Principal Register, for various goods and services, some of which issued on a showing of acquired distinctiveness. The Board states that the registrations are not conclusive on the question of geographic descriptiveness. The Board must decide each case on its own record. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). The Board resolves any doubts in the applicant's favor. In re Int'l Taste Inc., 53 USPQ2d 1604, 1606 (TTAB 2000). When the mark is published, any person who has a legitimate interest in use of KAPALUA may file an opposition. In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1144 (Fed. Cir. 1987).

Accordingly, the Board reverses the refusal to register KLC's mark KAPALUA.

(F-511) In re Omega Alpha Pharmaceuticals Inc., S.Nos. 77486429 and 77486441, unpubl'd. Refusal to register reversed, March 26, 2013. Scott Hemingway of Hemingway & Hansen LLP for appellant; Darryl Spruill for TMEO. [Kuhlke], Bergsman, and Shaw, Administrative Trademark Judges (4 pages). Available in slip opinion only.

(F-512) In re Kitaru Innovations Inc., S.N. 85211019, unpubl'd. Refusals to register affirmed, March 26, 2013. Joseph A. Sebolt of Sand & Sebolt for appellant; Michael Webster for TMEO. [Bucher], Cataldo, and Adlin, Administrative Trademark Judges (19 pages).

GREEN SEAL, subject of an application to register by Kitaru Innovations Inc. (KI) for "adhesive tape and adhesive packaging tape and tape dispensers for home and office use" in International Class 16, is deceptive and deceptively misdescriptive and therefore is not registrable. Registration had been finally refused under Sections 2(a) and 2(e)(1) of the Trademark Act.

To establish that a mark is deceptively misdescriptive pursuant to Section 2(e)(1) of the Act, it must be shown (i) that the mark misdescribes a characteristic or quality of the relevant goods and (ii) that prospective purchasers are likely to believe that the misdescription actually describes the relevant goods. In re Quady Winery Inc., 221 USPQ 1213, 1214 (TTAB 1984). For a term to misdescribe goods, it must be merely descriptive of a significant aspect of the goods that the goods could plausibly possess but in fact do not. In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1051 (TTAB 2002). Examining Attorney Webster submitted dictionary definitions, Internet evidence, and third-party registrations in support of his argument that GREEN refers to environmentally friendly tape products. The Board finds that this evidence shows overwhelmingly that GREEN indicates to consumers that goods are environmentally friendly. The Board concludes that consumers encountering GREEN SEAL will understand the term to refer to the fact that this tape is an environmentally friendly product.

KI made no claim that its products are environmentally friendly but argued that it merely uses GREEN to denote one of several different products in a product line that includes Black Seal, Blue Seal, and Double Blue Seal. The Boand notes that the question before it is how consumers will react to GREEN SEAL. The applied-for mark must stand on its own. See In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259, 1260-61 (Fed. Cir. 1988), aff'd8 USPQ2d 1790 (TTAB 1987).

KI also aigued that GREEN SEAL refers to a green sea mammal shown on the product packaging (shown next page). The Board notes that this image is not part of the mark and cannot negate the misdescriptiveness of the mark in relation to the goods.

The Board concludes that the first prong of the deceptive misdescriptiveness test is satisfied.

Regarding the second prong, the Board finds that the evidence shows that GREEN is commonly used to describe environmentally friendly adhesive and packaging tape. The Board concludes that based on the mark and the goods at issue, consumers would be likely to believe the misrepresentation that KI's goods are environmentally friendly.

Accordingly, the Board affirms the refusal to register GREEN SEAL as deceptively misdescriptive under Section 2(e)(1) of the Act.

To establish that a mark is deceptive pursuant to Section 2(a) of the Act, in addition to the foregoing test, it must be shown that the misdescription is likely to materially affect the decision to purchase the goods. In re Budge Mfg. Co. at 1259 and 1260. The Board notes that GREEN is being used ever more frequently; the Internet entries are contemporaneous with the prosecution of this application, and the third-party registrations all issued within a two-year period. The Board observes that the urgency for consumers to recycle and purchase products made of recycled materials, to use biodegradable products, and to avoid toxic substances has never been greater. The Board concludes that the advertisements and blogs in the record show that a segment of the relevant consumers would be more inclined to purchase environmentally friendly adhesive tape and packaging products. The Board concludes that this misdescription is likely to materially affect the decision to purchase KI's goods. The Boand affirms the refusal to register GREEN SEAL as deceptive.

Accordingly, the Board affirms the refusals to register KI's mark GREEN SEAL.

(F-513) Terri Yenko Gould v. General Marketing Capital, Inc. and Supercar Collectibles Limited, Cane. No. 92052197, unpubl'd. Petition to cancel dismissed, March 26, 2013. George E. Bullwinkel for petitioner; Robert D. Buyan of Stout, Uxa, Buyan & Mullins for respondent. [Quinn], Cataldo, and Hightower, Administrative Trademark Judges (28 pages).

Terri Yenko Gould (Gould) petitioned to cancel a registration owned by Supercar Collectibles Limited (SCL), which was later assigned to General Marketing Capital, Inc. (GMCI), for the mark YENKO for "toy cars" in International Class 28. The petition was based on the grounds that the mark falsely suggests a connection with the estate of Donald Frank Yenko, in violation of Section 2(a) of the Trademark Act, and that the mark misrepresents the source of the goods, in violation of Section 14. GMCI and SCL (G&S) denied the pleaded claims and set forth several affirmative defenses, including that Gould abandoned the mark and that the petition is barred by laches, waiver, or acquiescence due to Gould's 14-year delay in asserting her rights.

Evidentiary Dispute

G&S filed a motion to strike portions of Tom Clary's and Lester Quam's testimony as expert testimony prohibited by an earlier Board order. Gould contended that the testimony is not expert testimony but opinion testimony from lay witnesses. The Board deems the testimony admissible as lay opinion testimony and denies G&S's motion.

The Parties

Gould is the daughter of Yenko and the executor of his estate. From the 1960s until 1981, Yenko designed and modified 800 Chevrolet automobiles into "muscle cars." Yenko's

company \fenko Sportscars, Inc. (YSI), registered YENKO & design (shown here) in 1972 for "sports cars." Yenko did not produce vehicles after 1981 and did not offer replacement parts or memorabilia. Yenko was killed in a plane crash in 1987, and YSI was liquidated.

YSI's YENKO & design expired in 1992. In 1998, a group of YENKO car enthusiasts started a collector's club, Yenko Sportscar Club, with the approval of Gould.

In the 1980s, Jeffrey Leonard founded GMCI to provide YENKO parts and memorabilia. In the 1990s, SCL began selling scale models of YENKO Chevrolets. SCL registered YENKO in connection with model cars in 1997. GMCI currently owns the registration at issue and seven other YENKO marks.

Standing

To establish standing, Gould must prove that she has a "real interest" in this cancellation proceeding and a reasonable basis for her belief in damage. To plead a real interest in this case, Gould must establish a direct and personal stake in the outcome. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1027 (Fed. Cir. 1999). If Gould establishes standing with respect to any pleaded ground for cancellation, she has the right to assert any other ground with a reasonable basis in fact. See Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 188 (CCPA 1982).

With respect to the Section 2(a) ground for cancellation, Gould is not required to prove proprietary rights in her name for standing purposes; even the owner of an abandoned mark may have standing. See Estate of Biro v. Bic Corp., 18 USPQ2d 1382, 1385 (TTAB 1991). In asserting a Section 2(a) claim, Gould has standing by virtue of her identity. See Petróleos Mexicanos v. Intermix SA, 97 USPQ2d 1403,1405-06 (TTAB 2010). Gould testified that she is the daughter of Yenko and the executor of his estate. The Boand states that Gould has standing.

Preliminary Remarks

G&S alleged that the YENKO mark was abandoned due to nonuse. The Board observes that other than the Yenko family's "permission, " given to a car collectors club to use the Yenko name, there has been no activity to preserve the Yenko name. The Board observes that Gould did not claim residual goodwill in the abandoned mark; however, given the lack of activity by Gould for more than 30 years, the Board finds it unlikely that Gould could establish residual goodwill in the Yenko name. The Board finds, insofar as proprietary rights are concerned, that Yenko discontinued use of the mark in 1981 and, accordingly, abandoned the mark with intent not to resume use. See Crash Dummy Movie, LLC v. Mattel, Inc., 601 F.3d 1387, 94 USPQ2d 1315 (Fed. Cir. 2010).

The Trademark Act states that nonuse for three consecutive years shall be prima facie evidence of abandonment. The statutory presumption of abandonment applies to registered marks and to common law marks. Miller Brewing Company v. Oland's Breweries [1971]Limited, 548 F.2d 349, 192 USPQ 266, 267 (CCPA 1976). Evidence of nonuse of the mark for three consecutive years constitutes a prima facie showing of abandonment and shifts the burden to the party contesting the abandonment to produce evidence to disprove the facts showing three years of nonuse or evidence of an intent to resume use. Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390, 1393 (Fed. Cir. 1990).

The existence of a club of YENKO car enthusiasts, by itself, foils to defeat the statutory presumption of abandonment after more than 30 years of nonuse. General Motors Corp. v. Aristide & Co., Antiquaire de Marques, 87 USPQ2d 1179, 1183 (TTAB 2008).

The Board recognizes that automobiles are long-lasting products and that the goodwill value of a mark for automobiles may persist long after production has ceased. See Emergency One, Inc. v. American FireEagle, Ltd., 228 F.3d 531, 56 USPQ2d 1343, 1348 (4th Cir. 2000). The Board observes that Yenko produced only 800 cars. More than three decades of nonuse on automobiles presents a persuasive case. See L. & J.G. Stickley, Inc. v. Canal Dover Furniture Co., 79 F.3d 258, 38 USPQ2d 1202 (2d Cir. 1996).

The Board states that Gould's abandonment of the mark raises questions about the viability of the pleaded claims. The Board considers the merits of the substantive claims for the sake of completeness.

Misrepresentation of Source

A party may, pursuant to Section 14(3) of the Trademark Act, petition to cancel a mark if the mark is used by the registrant in a manner that misrepresents the source of the goods. A claim of misrepresentation of source can be asserted as a ground for cancellation at any time. Misrepresentation of source refers to situations in which source is deliberately misrepresented by or with the consent of the registrant in that goods or services originate from a manufacturer when the goods or services originate from another party. Österreichischer Molkerei-und Kasereiverband Registriete GmbH v. Marks and Spencer Limited, 203 USPQ 793, 794 (TTAB 1979). Gould must establish "blatant misuse of the mark by respondent in a manner calculated to trade on the goodwill and reputation of petitioner." Otto Int'l Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1863 (TTAB 2007), quoting McDonnell Douglas Corp. v. National Data Corp., 228 USPQ 45, 47 (TTAB 1985). Willful use of a confusingly similar mark is not sufficient. McDonnell Douglas Corp. v. National Data Corp. at 47.

The Board finds that G&S took adequate steps prior to adopting YENKO to confirm that any prior rights in the mark had been abandoned. The Board finds that testimony by G&S demonstrates a well-founded belief that YENKO was abandoned when G&S first used the mark. The Board states that the Section 14(3) claim foils.

False Suggestion of a Connection

Section 2(a) of the Trademark Act provides that registration may be denied or canceled if a mark consists of matter that may falsely suggest a connection with persons, living or dead. A person may be a corporation or other entity. The Board must decide whether the mark pointed uniquely to petitioner at the time the registration issued, not when the petition to cancel was filed. Hornby v. TJX Cos. Inc., 87 USPQ2d 1411, 1426 (TTAB 2008).

The following test determines the propriety of a Section 2(a) refusal: (i) The mark must be shown to be the same as or a close approximation of the person's previously used name or identity; (ii) it must be established that the mark would be recognized as such; (iii) it must be shown that the person in question is not connected with the goods of the applicant; and (iv) the person's name or identity must be of sufficient fame that when it is used as part or all of the mark on the applicant's goods, a connection would be presumed by someone considering purchasing the goods. Boston Red Sox Baseball ClubLP v. Sherman, 88 USPQ2d 1581, 1593 (TTAB 2008).

The Board finds insufficient proof that in 1997 YENKO pointed uniquely and unmistakably to Donald Frank Yenko and that the Yenko name was of sufficient fame or reputation that, when YENKO was used on toy cars in 1997, a connection with Yenko was presumed. The Board states that Gould's claim fails for lack of proof.

Laches

Section 19 of the Trademark Ac? provides that "[i]n all inter partes proceedings equitable defenses of laches, estoppel, and acquiescence, where applicable may be considered and applied." The defense is available against each of Gould's pleaded grounds for relief. See Treadwell's Drifters, Inc. v. Marshak, 18 USPQ2d 1318, 1320-21 (TTAB 1990). The elements of laches are (i) unreasonable delay in assertion of one's rights and (ii) material prejudice to another attributable to that delay. Bridgestone /Firestone Research Inc. v. Automobile Club de L'Ouest de la France, 245 F.3d 1359, 58 USPQ2d 1460, 1462 (Fed. Cir. 2001).

Laches begins to run from the time action could be taken against the registration of the mark, regardless of when use of the mark began. Thus laches begins to run no earlier than the date the mark is published for opposition and no later than the issue date of the registration. National Cable Television Assoc., Inc. v. American Cinema Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1431-32 (Fed. Cir. 1991).

Delay

In determining whether Gould is guilty of laches, it must be shown that she knew or should have known that she had a cause of action but did not assert her rights. Bridgestone/ Firestone Research, Inc. v. Automobile Club de L'Ouest de la France at 1462.

G&S's application was published for opposition in 1996; the registration issued in 1997. Gould is charged with constructive notice of the registration since 1996. The record shows that Gould had notice of G&S's use in 1998 when Yenko family members attended the first annual car reunion, at which G&S had a vendor booth to sell toy cars. Gould did not assert her rights for 14 years. The Board finds that 14 years is an unreasonable and substantial delay and notes Gould's failure to explain the delay.

Prejudice

Delay in asserting a trademark right does not necessarily result in conditions sufficient to support the defense of laches. Prejudice may arise from an unreasonable delay and economic prejudice based on loss of time or money or opportunity. A party asserting laches may strengthen its showing of prejudice by showing that during the delay its business grew. See Christian Broadcasting Network Inc. v. ABS-CBN Int'l, 84 USPQ2d 1573 (TTAB 2007). G&S does not need to show reliance on the delay or that Gould, by inaction, lulled G&S. Bridgestone /Firestone Research, Inc. v. Automobile Club de L'Ouest de la France at 1463.

The co-founder of SCL testified that he "researched the trademark, saw that it had expired and went about registering the trademark so we could go about things correctly. " Leonard testified that he has spent 20 to 25 years cultivating the mark, including the investment of time, effort, money, engineering, and inventory. The Board finds that the record supports a finding of economic prejudice to G&S during the unreasonable delay of Gould. Accordingly, the Board finds that G&S has established the affirmative defense of laches.

Morehouse Defense

The Morehouse defense is an equitable affirmative defense that may be asserted in an inter partes proceeding. It is based on the principle that an opposer cannot be damaged within the meaning of Section 13 by registration of a mark for particular goods or services if applicant owns an existing registration for a substantially identical mark for substantially identical goods. See Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 166 USPQ 715 (CCPA 1969). G&S's mark is identical to G&S's other registered YENKO marks, but the goods are different. The Board states that the defense does not apply.

Accordingly, the Board denies Gould's petition to cancel G&S's mark YENKO.

(F-514) In re Nordic Naturals, Inc., S.N. 77131419, unpubl'd. Refusals to register affirmed in part, reversed in part, March 27, 2013. Meredith M. Wilkes of Jones Day for appellant; Nelson B. Snyder III, for TMEO. Kuhlke, Cataldo, and [Shaw], Administrative Trademark Judges (26 pages).

CHILDREN'S DHA (DHA disclaimed), subject of an application to register by Nordic Naturals, Inc. (NN) for "nutritional supplements containing DHA" in International Class 5, is not deceptive but is generic, and the identification of goods must reflect that the goods are formulated for children. Registration had been finally refused based on the requirement for an amendment to the identification of goods and on the grounds that the mark is deceptive under Section 2(a) of the Trademark Act and generic under Section 2(e)(1). In the event the mark is not generic, registration had been refused on the ground that the mark is merely descriptive, and NN has not demonstrated acquired distinctiveness under Section 2(f).

According to an Office Action, DHA is the abbreviation for docosahexaenoic acid, an omega-3 fatty acid essential for the growth and functional development of the brain.

The Board does not consider NN's late-filed evidence. Trademark Rule 2.142(d).

Whether CHILDREN'S DHA Is Deceptive

The USPTO has the bunden of putting forth a prima facie case that a trademark falls within the prohibition of Section 2(a). In re Budge, 857 F.2d 773, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988). The following test determines whether a mark comprises deceptive matter: (i) Is the term misdescriptive of the character, quality, function, composition, or use of the goods? (ii) If so, are prospective purchasers likely to believe that the description actually describes the goods? (iii) If so, is the misdescription likely to affect a significant portion of the relevant consumers' decision to purchase? In re Budge, supra.

NN stated that the goods are "designed for use by children. " Because the goods contain DHA and are formulated for children, CHILDREN'S DHA cannot misdescribe a character, quality, or function of the goods, according to the Board. The Board reverses the refusal to register the mark under Section 2(a).

Regarding the identification of goods, Examining Attorney Snyder alternatively required NN to amend the identification of goods to indicate that the goods are formulated for children. He argued that the formulation of the goods for children is material to the consumer, and therefore, the identification of goods must be amended to remove any ambiguity between the mark and the goods, as required by the TRADEMARK Manual of Examining Procedure § 1203.02(e)(ii).

The Board observes that CHILDREN'S makes the product more appealing and would materially affect the purchasing decision. CHILDREN'S is material to consumers, so amendment of the identification is necessary. See In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1698-99 (TTAB 1992). The Board affirms the requirement that NN amend the identification of goods.

Whether CHILDREN'S DHA Is Generic or Merely

Descriptive

The Examining Attorney has the burden of proving genericness by "clear evidence." See In re Hotels.com, 573 F.3d 1300, 91 USPQ2d 1532, 1533 (Fed. Cir. 2009). The critical issue is to determine whether the record shows that members of the relevant public primarily use or understand the term sought to be registered to refer to the category or class of goods in question. In re Women's Publishing Co. Inc., 23 USPQ2d 1876, 1877 (TTAB 1992). Determining genericness is a twostep inquiry: First, what is the genus or category of the goods at issue? Second, is the designation sought to be registered understood by the relevant public primarily to refer to that genus or category of goods? H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 530 (Fed. Cir. 1986). Evidence of the public's understanding of a term may be obtained from any competent source, including testimony, surveys, dictionaries, trade journals, newspapers, and other publications. In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1143 (Fed. Cir. 1987).

The Board finds that the genus of the goods is adequately defined by the description of goods. Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991). NN stated that the goods "are commonly known and referred to as they have been listed in the identification of goods. "

The Examining Attorney argued that the genus should be defined as nutritional supplements that are for children and that contain DHA. The Board states that this definition is unnecessarily narrow. A mark may be refused registration if it is generic for any of the goods within the genus. See In re Wm. B. Coleman Co., 93 USPQ2d 2019 (TTAB 2010).

The Board must determine whether CHILDREN'S DHA is understood by the relevant public primarily to refer to NN's genus of goods. Marvin Ginn, supra. The relevant public for goods sold in the marketplace is limited to actual or potential purchasers of the goods. Magic Wand at 1552-53. The Board finds that the relevant public consists of parents or other adults seeking nutritional supplements containing DHA for children.

The Board finds clear evidence that the relevant public understands that CHILDREN'S DHA identifies nutritional supplements containing DHA formulated for children. The Examining Attorney submitted dictionary definitions of CHILDREN and DHA. The Board finds that CHILDREN'S DHA refers to an essential fatty acid for children. In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1112 (Fed. Cir. 1987).

The Examining Attorney submitted printouts from thirdparty websites showing CHILDREN'S DHA in connection with nutritional supplements for children. The Board is persuaded that consumers perceive the term as generic and that competitors need to use the term. Continental Airlines v. United Airlines Inc., 53 USPQ2d 1385, 1395 (TTAB 1999). The Examining Attorney included websites selling NN's products, which use CHILDREN'S DHA to refer to the goods. The Board states that the commercial impression conveyed by the websites is that NN is the brand of nutritional supplements and CHILDREN'S DHA identifies the type of supplement.

NN countered that the mark is CHILDREN'S DHA, not CHILDREN'S DHA SUPPLEMENT. The fact that "supplement" is not present in the mark is not sufficient to avoid a genericness refusal, according to the Board. The Board points to numerous examples in the record of "children's DHA," without "supplement," for supplements containing DHA. See In re Abcor Development Corp., Inc. 588 F.2d 811, 200 USPQ 215, 219 (CCPA 1978). The Examining Attorney submitted three third-party registrations that demonstrate that DHA is shorthand for nutritional supplements, according to the Board.

NN submitted evidence to show that the mark is not generic. The evidence relies on the claim that NN was one of the first manufacturers to offer DHA supplements for children. The fact that an applicant may be the first and only user of a generic designation does not justify registration if the only significance conveyed by the term is merely descriptive. See In re Greenliant Systems Ltd., 97 USPQ2d 1078, 1083 (TTAB 2010).

NN submitted form affidavits from employees of retail stores selling the supplements. The Board points to defects that limit the probative value of the affidavits. See Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1723 (TTAB 2010). The Board adds that the affidavits suggest that NN is the original maker of children's DHA supplements and nothing more.

The Board finds that CHILDREN'S DHA is generic for nutritional supplements containing DHA. In re Reed Elsevier Properties, Inc., 77 USPQ2d 1654 (TTAB 2005).

Implicit in the holding that CHILDREN'S DHA is generic for NN's goods is a holding that it is merely descriptive, according to the Board. The generic name of a thing is the ultimate in descriptiveness. Marvin Ginn, supra.

Acquired Distinctiveness

For the sake of completeness, the Board considers whether the mark has acquired distinctiveness. NN has the burden to establish a prima facie case of acquired distinctiveness. See Yamaha Inti Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988). The amount and character of evidence required to establish acquired distinctiveness depends on the facts of each case. See Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823, 829, 166 USPQ 34, 39 (CCPA 1970). The ultimate test is NN's success, rather than its efforts, in educating the public to associate the mark with a single source. In re Redken Labs., Inc., 170 USPQ 526, 529 (TTAB 1971).

NN asserted that it has had great commercial success with CHILDREN'S DHA, that it has enjoyed a substantially exclusive use of the mark for more than 10 years, and that it has invested considerable resources in promoting the mark.

The Board is not convinced. First, NN's use of the mark since 2000 is not conclusive, considering the nature of the mark and the widespread third-party use of CHILDREN'S DHA to refer to supplements for children. See In re Packaging Specialists, Inc., 221 USPQ 917, 920 (TTAB 1984). Second, NN's sales information, purchase orders for product samples, advertising expenditures, and samples of advertising does not conclusively establish that consumers understand CHILDREN'S DHA to refer solely to NN's goods.

Accordingly, the Board reverses the refusal under Section 2(a) on the ground that the mark is deceptive, affirms the requirement that the identification of goods be amended, affirms the refusal under Section 2(e)(1) on the ground that the mark is generic, and affirms the refusal under Section 2(e)(1) on the ground that the mark is merely descriptive and that the Section 2(f) showing is insufficient.

(F-5I5) In re Florists' Transworld Delivery, Inc., S.No. 77590475, USPQ2d (TTAB, March 28, 2013). Refusals to register affirmed. Scott J. Major of Millen, White, Zelano & Branigan, PC for appellant; Hanno Rittner for TMEO. Seeherman, Bucher, and [Zervas], Administrative Trademark Judges, Bucher concurring (25 pages).

The black box mark (shown here as Fig. 1), subject of application to register by Florists' Transworld Delivery, Inc. (FTD) for "flowers and live cut floral arrangements," is functional as well as ornamental or decorative and has not established acquired distinctiveness.

Registration had been finally refused under Sections 2(e)(5) and 1, 2, and 45 of the Trademark Act.

The mark is described as follows: "[T]he mark consists of the color black as applied to a substantial portion of the outside surface of a box which serves as a container or packaging for the goods and in part forms a background to design and literal elements applied thereto. The dotted lines show placement of the mark and form no part of the mark. " FTD also provided a specimen (shown here as Fig. 2).

The Board recognizes that there are two forms of functionality: utilitarian functionality and aesthetic functionality. M-5 Steel Mfg. Inc. v. O'Hagin's Inc., 61 USPQ2d 1086 (TTAB 2001). The Board explains that a feature is considered to be functional in a utilitarian sense if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982). The Board further explains that the Federal Circuit considers four factors when considering utilitarian functionality: (i) the existence of a utility patent that discloses utilitarian advantages of the design, (ii) advertising materials in which the utilitarian advantages of the design are touted, (iii) the availability of alternative designs for competitors, and (iv) facts indicating that the design results from a comparatively simple or cheap method of manufacturing a product, bi reMorton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9, 15 (CCPA 1982).

A feature that would not be considered as utilitarian functional under Inwood is still prohibited from registration if the exclusive appropriation of that feature would put competitors at a significant non-reputation-related disadvantage. Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161 (1995).

In the present case, Examining Attorney Rittner stated that the color black serves both utilitarian and aesthetic functions when used for floral packaging. The Examining Attorney asserted that the Supreme Court finds appropriate the use of the aesthetic functionality doctrine in cases like this one where color, by its nature, makes it difficult to evaluate the functionality issue from a purely utilitarian standpoint. The Board explains that because the Examining Attorney approached the refusal under the aesthetic functionality doctrine, the Board confines its analysis to that approach and treats the Examining Attorney's comments as a concession that the color is not functional under Inwood.

The Board finds that the record reflects that color has significance and communicates particular messages in the floral industry. The Board further agrees that the evidence shows that the color black communicates elegant, classical, or luxurious floral packaging. Moreover, the Board finds that black has significance on somber occasions such as in the context of death and is used as floral packaging in bereavement bouquets. Moreover, the Board notes that black is a traditional Halloween color and is used as a color in Halloween floral bouquets or on containers for Halloween bouquets.

The Board finds that the Examining Attorney has demonstrated prima facie that there is a competitive need for others in the industry to use the color black in connection with floral arrangements and flowers. To rebut the Examining Attorney's prima facie case, FTD submitted a number of third-party registrations composed of a single color as applied to boxes or containers for a variety of products, including plants, flowers, and jewelry. The Board, however, finds that the evidence does not indicate that the packaging is used for specific occasions or for an appearance of elegance or sophistication. The Board reasons that this evidence suggests that other packaging is appropriate and is used for such occasions. Consequently, the Board finds that FTD's black mark is functional.

The Board also considers the question of acquired distinctiveness to render a full decision on the issues presented on appeal. In support of its claim of acquired distinctiveness, FTD submitted the declaration of its officer stating that the mark has been used exclusively and continuously for at least two years and that FTD has sold in excess of 1.8 million units of the goods under the mark since December 2008. The declaration also stated that FTD has prominently promoted the mark in its mailers and that FTD began advising consumers to look for the black box as a symbol of highquality FTD flowers.

The Board explains that the black boxes depicted include designs and wording that provide other matter that the consumer may consider as source indicators for the goods. Moreover, the Board notes that FTD used the "look for" statements for only one year prior to the declaration.

FTD also submitted four statements of customers who say they have come to recognize the color black on packaging as identifying FTD's flowers and floral arrangements and as distinguishing them from competitors' goods. The Board explains that the declarations do not account for the other matter that appears on the boxes and do not indicate geographic diversity among FTD customers. In addition, the Board finds that four statements are insufficient to be probative of the issue of acquired distinctiveness. The Board finds that FTD has not demonstrated that its mark has acquired distinctiveness.

Bucher, Administrative Trademark Judge, concurring:

In this concurrence, Judge Bucher reasons that there are two distinct challenges with evaluating the registrability of putative marks involving non-traditional types of indicators: (i) the infinite variety of non-literal features that merchants and manufacturers may choose to claim as source indicators and (ii) the penchant of any tribunal to choose a cubby hole for analysis and shove each new case into the most recent, handy compartment seemingly countenanced by a higher court for similar fact patterns. Bucher states that tribunals are sometimes wont to apply constricting labels, and this has led to inevitable confusion in legal analysis. Bucher advocates a clear-eyed analysis that begins each new case with "first principles" drawn from trademark jurisprudence.

Bucher reasons that when one is faced with a putative source indicator, such as the configuration of a product or its packaging or any product feature that enhances the attractiveness of the product, it is logical to ask as a first question whether the public interest is best served by refusing to permit a particular feature to be taken from the public domain. Bucher reasons that this issue is, at root, a public policy question that turns on whether the non-traditional indicator should remain permanently available for competitors to use freely. Bucher maintains that if one sifts through the relevant case law, it is clear that the best enunciation of this standard is focused on whether competitors can still compete effectively or, alternatively, whether they will suffer a significant non-reputational disadvantage.

Bucher reasons that in cases of configurations, the largely mechanical factors enunciated in Morton-Norwich work well to make the correct factual determination as to whether the innovator's competitors can still compete effectively. When it comes to making determinations in overall color cases, Bucher reasons that applying factors that were derived in the context of designs of three-dimensional products has the Board repeatedly forcing a square peg into a round hole. Nonetheless, Bucher reasons that in every case, the first principles remain the same. Bucher explains that, especially when confronting product features that enhance the attractiveness of the product, such as trade dress, surface design, and overall color, being forced in advance to choose a label such as utilitarian functionality, aesthetic functionality, or ornamentation presents the possible peril of stumbling badly over first principles.

Bucher explains that with this approach, the fact finder will need to determine whether aesthetic features run afoul of the Trademark Act.

As to acquired distinctiveness, Bucher reasons that, provided the question of whether others in the field can compete effectively is decided in favor of the innovator, there is still the question of whether potential consumers have been conditioned to recognize the claimed feature as indicating a single source. Bucher explains that under the principle of deferred recognition, the focus turns to whether the innovator has been successful in creating acquired distinctiveness on the part of consumers in the relevant marketplace.

Part II - Interlocutory Decisions

Trademark Trial and Appeal Board - Selected Interlocutory Decisions. (Note: " USPQ2d (TTAB)" in heading indicates decision has been initially recommended for publication in full in a printed volume. In decisions signed by three members, name in [ ] indicates primary drafter.) After this issue has circulated, remove the staples and file the pages containing abstracts with "I" numbers (PART II) behind the INTERLOCUTORY tab and after the pages from the previous issue of this volume.

(1-33) Empresa Cubana Del Tabaco d.b.a Cubatabaco v. General Cigar Co., Inc., Cane. No. 92025859, unpubl'd. Respondent's motion for summary judgment granted, March 14, 2013. Quinn, Cataldo, and Zervas, Administrative Trademark Judges [Pologeorgis] (17 pages).

[Background: In 1997, Empresa Cubana Del Tabaco d.b.a Cubatabaco (ECT) filed a petition to cancel General Cigar Co., Inc.'s (GCC) previously registered marks COHIBA and COHIBA (stylized; shown here) for "cigars" in International Class 34.

COHIBA

In 2011, ECT filed an amended petition to cancel alleging the following claims: (i) abandonment, (ii) fraud, (iii) GCC's registrations were obtained in bad faith, (iv) priority and likelihood of confusion, (v) relief under Articles 7 and 8 of the General Inter-American Convention for Trademark and Commercial Protection (IAC), (vi) GCC improperly obtained its registrations to capitalize on and exploit the reputation of ECT's COHIBA, (vii) relief pursuant to Article 6bis of the Paris Convention, (viii) likelihood of confusion under the "well-known" marks doctrine, and (ix) a stand-alone priorityof-use claim. GCC denied the salient allegations. The Board states that GCC's amended petition to cancel and ECT's answer are the operative pleadings.

In 1998, the Board suspended this proceeding pending the determination of a civil action. The Board reviews the disposition of the civil action in light of the pleadings for this case.

Federal Action

In 1997, ECT filed a complaint in the U.S. District Court for the Southern District of New York alleging that GCC's use of COHIBA constituted trademark infringement under the Trademark Act and international conventions and unfair competition and misappropriation under New York law. ECT requested that the district court cancel GCC's registrations. In 2002, the district court dismissed ECT's claims under Articles 7 and 8 of the IAC and Article 6bis of the Paris Convention because the international conventions did not confer a right to sue for unfair competition separate from the Trademark Act. See Empresa Cubana Del Tabaco, d.b.a. Cubatabaco v. Culbro Corporation and General Cigar Co., 213 F. Supp. 247, 281-84 (SDNY 2002) (ECT v. CC and GCC). The district court granted, in part, ECT's motion for partial summary judgment, finding that GCC had abandoned COHIBA through nonuse from 1987 to 1992 and ordered the registration canceled. See ECT v. CC and GCC at 267-71.

In 2004, the district court dismissed ECT's claims for New York common law unfair competition and misappropriation, finding that bad faith was an essential element of the claims and that there was no evidence that GCC selected or used COHIBA in bad faith. See Empresa Cubana Del Tabaco, d.b.a. Cubatabaco v. Culbro Corporation, 70 USPQ2d 1650 (SDNY 2004) (ECT v. CC). The district court dismissed ECT's claims for violation of the Federal Trademark Dilution Act and the New York antidilution statute and for trade dress infringement, deceptive trade practices, trade dress dilution, and false advertising. See ECT v. CC at 1692-93, 1694-96.

The district court found in favor of ECT on its claim for trademark infringement under Section 43(a) of the Trademark Act. ECT v. CC at 1692. It concluded that by 1992, when GCC applied for its second COHIBA registration, ECT had acquired priority rights in COHIBA under the well-known or famous marks doctrine. ECT v. CC at 1692. It based this finding on its previous holding that GCC had abandoned COHIBA. See ECT v. CC and GCC at 269. The district court found that by 1992 COHIBA had become famous in the United States and associated with GCC's cigars. The district court stated that ECT had superior rights in the mark that precluded GCC from obtaining its second COHIBA registration. ECT v. CC at 1692. The district court found a likelihood of confusion between ECT's COHIBA and GCC's COHIBA. ECT v. CC at 1689.

The district court ordered the cancellation of GCC's second COHIBA registration, enjoined GCC from further use of COHIBA, and ordered GCC to recall all COHIBA goods. ECT v. CC, supra. GCC appealed to the Second Circuit; ECT cross-appealed.

In 2005, the Second Circuit reversed the district court's finding of likelihood of confusion. See Empresa Cubana Del Tabaco, d.b.a. Cubatabaco v. Culbro Corporation, General Cigar Co., Inc. and General Cigar Holdings, Inc., 399 F.3d 462, 73 USPQ2d 1936 (2d Cir. 2005) (ECTv. CC, GCC, and GCH). The reversal was based on the Cuban Asset Control Regulations (CACR), which embody the terms of the United States' economic embargo on Cuba. The CACR prevents Cuban entities such as ECT from selling cigars in the United States. ECT v. CC, GCC, and GCH at 1938. The Second Circuit held that "absent a general or specific license" from the Department of the Treasury's Office of Foreign Assets Control (OFAC), Section 515.201(b) of the CACR "prohibits the transfer of property rights, including trademark rights, to a Cuban entity by a person subject to the jurisdiction of the United States. " ECT v. CC, GCC, and GCH at 1944. It also found that forbidden property transfers include transfers by operation of law. ECT v. CC, GCC, and GCH at 1945-46.

The Second Circuit found it unnecessary to decide whether the Trademark Act incorporated the "famous marks" doctrine because Section 515.201(b)(2) of the CACR bars ECT's acquisition of COHIBA through the famous marks doctrine. ECT v. CC, GCC, and GCH at 1946. The Second Circuit held that ECT was not authorized to acquire any rights in COHIBA under any general license in effect previously or at the time of the opinion. ECT v. CC, GCC, and GCH at 1947. The court concluded that the special license granted to ECT by OFAC, which allowed ECT to sue GCC in U.S. courts, "does not authorize transfers of property barred by the Regulations" and thus could not support acquisition of COHIBA by ECT. ECT v. CC, GCC, and GCH, supra.

The Second Circuit rejected the argument that ECT was entitled to obtain cancellation of GCC's COHIBA and an injunction preventing GCC from using the mark on the basis of consumer confusion. The Second Circuit held that "granting [ECT] the injunctive relief sought would effect a transfer of property rights to a Cuban entity in violation of the embalo. There is no contest that, as matters stand, [GCC] has the full panel of property rights in the COHIBA mark, including the right to exclude or limit others seeking to use the mark in the United States... As it is exactly this brand of property right transfer that the embalo prohibits, we cannot sanction a grant of injunctive remedy to [ECT] in the form of the right, privilege and power to exclude [GCC] from using its duly registered mark. .. . [T]his limitation on judicial authority applies equally to [ECT's] Lanham Act and Paris Convention claims" (emphasis provided). ECT v. CC, GCC, and GCH at 1947.

The Second Circuit found that, inasmuch as GCC was the owner and sole rightful user of COHIBA in the United States, ECT could not obtain relief on the basis that GCC's use of COHIBA causes confusion in the United States. ECT v. CC, GCC, and GCH at 1949. The Second Circuit concluded that ECT's claims against GCC's COHIBA cannot succeed as a matter of law. ECT v. CC, GCC, and GCH, supra.

The Second Circuit found that Article 6bis of the Paris Convention and Sections 44(b) and 44(h) of the Trademark Act ào not require cancellation of GCC's mark or an injunction against use of the mark. ECT v. CC, GCC, and GCH at 1950. It also affirmed the district court's dismissal of GCC's claims under Articles 7, 8, 20, and 21 of the IAC and Article 10bis of the Paris Convention. ECT v. CC, GCC, and GCH at 1950-53. The Second Circuit affirmed the district court's dismissal of ECT's other claims.

The Second Circuit remanded the case to the district court for entry of an order (i) dismissing ECT's remaining claims and (ii) vacating those portions of the district court's order that canceled GCC's registration, enjoined GCC from use of COHIBA, and required recall of COHIBA-labeled products and corrective notices. ECT v. CC, GCC, and GCH at 1954. The Second Circuit's judgment was issued as a mandate after the U.S. Supreme Court denied ECT's petition for a writ of certiorari. See Empresa Cubana Del Tabaco, aka Cubatabaco v. General Cigar Company, Inc., 547 U.S. 1205 (2006). The district court then issued an order dismissing all remaining claims. Empresa Cubana Del Tabaco v. Culbro Corp., No. 97 Civ. 8399 (SDNY May 15, 2006).

In 2006, GCC moved to amend the district court's final order of dismissal to include an instruction to the Commissioner of Patents and Trademarks to dismiss this proceeding and to abandon ECT's COHIBA application. The district court denied GCC's motion to amend. Empresa Cubano Del Tabaco dba Cubatabaco v. Culbro Corporation and General Cigar Co., 478 F. Supp.2d 513 (SDNY 2007). On appeal, the Second Circuit affirmed, finding that GCC's request was based on estoppel. Empresa Cubano Del Tabaco dba Cubatabaco v. Culbro Corporation, General Cigar Co., Inc., and General Cigar Holdings, Inc., 541 F.3d 476, 88 USPQ2d 1125, 1128 (2d Cir. 2008).

This case comes before the Board for consideration of (i) GCC's motion for summary judgment on the grounds that ECT lacks standing and ECT's claims are precluded by the doctrines of res judicata and collateral estoppel and (ii) ECT's motion to use testimony from a civil action in opposition to GCC's motion for summary judgment.]

GCC's Motion for Summary Judgment

The Board considers GCC's motion for summary judgment, more specifically, the portion grounded on ECT's lack of standing. Summary judgment is an appropriate method of disposing of cases in which there is no genuine dispute of material fact, thus leaving the case to be resolved as a matter of law. See Fed. R. Civ. P. 56(a). The party moving for summary judgment has the initial burden of demonstrating the absence of any genuine dispute of material fact. See Celotex Corp. v. Catrett, All U.S. 317, 322-324 (1986). The evidence must be viewed in a light most favorable to the nonmovant, and all justifiable inferences are to be drawn in the nonmovant's favor. See Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993). If the party moving for summary judgment carries its initial burden, and the nonmoving party fails to make a sufficient showing on an essential element of its case with respect to which it would have the burden of proof at trial, judgment as a matter of law may be entered in favor of the moving party. See Fed. R. Civ. P. 56(c).

The Board considers whether GCC has shown that there is no genuine dispute of material fact as to ECT's lack of standing. Standing is a threshold issue that must be proven by a plaintiff in every inter partes case. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999). The purpose of the standing requirement is to prevent litigation when there is no justiciable controversy between the parties. Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 189 (CCPA 1982).

To establish standing, ECT would need to show at trial that it has a protectable commercial interest in COHIBA and that it would be damaged by GCC's COHIBA. Chemical New York Corp. v. Conmar Form Systems, Inc., 1 USPQ2d 1139, 1142 (TTAB 1986).

GCC maintained that because ECT is legally prohibited from selling COHIBA cigars in the United States or acquiring any interest in COHIBA in the United States, ECT does not have the commercial interest required to confer standing.

ECT contended that because its COHIBA application has been refused registration based on GCC's COHIBA registrations, standing is conferred on ECT.

Standing is generally conferred on a plaintiff whose pleaded pending application has been refused registration based on defendant's subject registration. See Great Seats Ltd. v. Great Seats, Inc., 84 USPQ2d 1235, 1237 (TTAB 2007). The Board states that ECT cannot avail itself of such circumstances. The Board makes the following points: (i) ECT was barred by law from acquiring any property interest in COHIBA in the United States during the period between the abandonment of GCC's earlier registration and the filing date of the application resulting in the later registration; (ii) GCC has the full panel of property rights in COHIBA, including the right to exclude or limit others seeking to use the mark in the United States; (iii) GCC's right to COHIBA has been established as against ECT; and (iv) GCC has a right to use COHIBA in the United States because it owns the mark in the United States. This case is controlled by precedents that hold that when a previous final judgment determines that a party does not own a property interest in a mark, the party lacks standing to challenge another's registration of the same mark. See Stephen Slesinger, Inc. v. Disney Enters., Inc., 98 USPQ2d 1890, 1895 n.15 (TTAB 2011).

The Board finds no genuine dispute of material feet that ECT lacks a legitimate commercial interest in COHIBA in the United States; therefore, ECT's belief in damage is unfounded. The Board states that ECT has no standing as a matter of law and, therefore, that GCC is entitled to judgment. See Coup v. Vomado Inc., 9 USPQ2d 1824 (TTAB 1988).

The Board need not reach the merits of GCC's second ground for summary judgment. The Board states that ECT's motion to use testimony from the civil action is moot.

Accordingly, the Board grants GCC's motion for summary judgment.

(1-34) McDonald's Corporation v. Cambrige Overseas Development Inc., Opp. No. 91208437, 106 USPQ2d 1339 (TTAB 2013). Stipulation denied. [Pologeorgis], Interlocutory Attorney (4 pages).

[Background: Cambrige Overseas Development Inc. (COD) filed an application to register the mark MACVISION for "LED light bulb and LED desk lamp" in International Class 11. McDonald's Corporation (McDonald's) opposed registration on the ground of likelihood of confusion with its family of MAC marks used in connection with restaurant services and sandwiches for consumption on or off premises. COD denied the salient allegations.]

On January 9, 2013, the parties filed a stipulation to accept service by email but retain the additional five days afforded under Trademark Rule 2.119(c) to file or serve any responsive documents that would be provided if the original filing were served by first-class mail. The Board explains that Trademark Rule 2.119(b)(6) provides that service of papers may be made by electronic transmission when mutually agreed upon by the parties. The Board finds that inasmuch as the parties have stipulated to service by email, they may not take advantage of the five additional days for service provided under Trademark Rule 2.119(c).

The Board reasons that by stipulating to accept service by email but retain the five additional days for service provided under 2.119(c), the parties have impermissibly circumvented the provisions of this rule. The Board notes that such a stipulation would violate the provisions in Trademark Rule 2.127, which state that the time for filing reply briefs and motions under Fed. R. Civ. P. Rule 56(d) will not be extended.

Alternatively, the Board explains that the parties may stipulate to accept service by first-class mail but also serve simultaneously a courtesy email copy of any filing in this proceeding. The Board notes that this would allow the parties to take advantage of the five additional days for service without violating the provisions of Rule 2.119(c).

(1-35) RTX Scientific, Incorporated v. Nu-Calgon Wholesaler, Inc., Cane. No. 92055285, 106 USPQ2d 1492 (TTAB 2013). Respondent's motion to compel expert report granted. [Baxley], Interlocutory Attorney (15 pages).

[Background: RTX Scientific, Incorporated (RTX) filed a petition to cancel Nu-Calgon Wholesaler, Inc.'s (NCW) registration for the design mark (shown here, color blue claimed) for "cleaning preparation for air conditioning or refrigeration coils" in International Class 3. As grounds for the petition to cancel, RTX alleged that the mark is merely descriptive, functional, and generic. NCW denied the salient allegations.

On October 26, 2012, RTX filed an expert disclosure statement with the Board wherein it identified Roger Holder as an "unretained expert" and indicated that on October 10, 2012, it served on NCW an expert disclosure statement in accordance with Trademark Trial and Appeal Board Manual of Procedure § 401.03 and Fed. R. Civ. P. 26(a)(2)(C).

This case now comes before the Board for consideration of NCW's motion to exclude Holder's expert testimony or compel a written expert report under Fed. R. Civ. P. 26(a)(2)(B) prepared and signed by Holder.]

Initially, the Board explains that it does not make hypothetical evidentiary rulings. To the extent that NCW moves to exclude Holder's testimony, the Board denies the motion as premature.

Turning to the motion to compel an expert report, the Board finds that NCW made a good faith effort to resolve the parties' dispute prior to seeking Board intervention. In support of the motion to compel, NCW argued that RTX has provided only limited information regarding Holder and his expected testimony. NCW contended that RTX has not provided the more detailed written report required of a witness retained or specially employed to provide expert testimony in the case or one whose duties as the party's employee regularly involve giving expert testimony under Fed. R. Civ. P. 26(a)(2)(B).

RTX admits that Holder is a third-party witness capable of providing expert testimony; however, RTX argued that it did not retain Holder and that Holder is not specially employed by RTX. RTX maintained that Holder has not been compensated by RTX and has not prepared any report for RTX. RTX argued that district courts distinguish between retained and unretained expert witnesses and that Rule 26(a)(2)(B) does not require written reports with regard to unretained expert witnesses. RTX maintained that NCW can seek information from Holder by the subpoena process.

In response, NCW argued that it will be unfairly surprised and prejudiced by allowing unretained expert witness testimony without a written report and that the Board does not distinguish between retained and unretained experts.

The Board explains that when a testifying expert is used in a Board proceeding, the party's planned use of the expert witness is largely governed by Fed. R. Civ. P. 26(a)(2). The Board explains that the 2010 amendment to the rule makes it clear that there is a distinction between an expert witness required to provide a report and one who is not. The Board explains that under Fed. R. Civ. P. 26(a)(2)(B), an expert disclosure must be accompanied by a written report, prepared and signed by the witness, if the witness is one retained or specially employed to provide expert testimony in the case or one whose duties as the party's employee regularly involve giving expert testimony. The Board states that the courts distinguish between retained and specially employed experts, who must provide written reports, and unretained experts, who do not. The Board explains that in Downey v. Bob's Discount Furniture Holdings, Inc., 633 F.3d 1, 7-7 (1st Cir. 2011), the court noted that where an expert comes to the case as a stranger and draws opinion from facts supplied by others, in preparation for trial, he can reasonably be viewed as retained or specially employed for that purpose within the purview of Fed. R. Civ. P. 26(a)(2)(B). The court also acknowledged the difference between such witnesses and an on-the-scene expert during treatment, such as a treating physician.

The Board explains that Board inter partes proceedings are based on a plaintiffs stated belief of damage arising from registration of a mark. Unlike tort or personal injury cases, the Board explains, there are usually no specific incidents that give rise to those proceedings. The Board finds that inter partes Board proceeding experts are typically recruited on the basis of experience in the relevant trade or industry and not on the basis of personal knowledge or on-the-scene involvement in any sequence of events that give rise to the Board proceedings. The Board finds that such an expert is retained under Fed. R. Civ. P. 26(a)(2)(B), and that rule requires a written report.

In this case, the Board finds that Holder is expected to testify as an expert regarding the functionality of NCW's trade dress and the lack of distinctiveness of NCW's trade dress. The Board explains that RTX's disclosures indicate that Holder had no on-the-scene involvement in or personal knowledge of any incidents giving rise to this proceeding but rather will offer expert testimony regarding the use of the color blue for alkaline coil cleaners in the HVAC industry. The Board finds that Holder is a retained expert witness, and RTX must provide a written report regarding his intended expert testimony. The Board notes that Fed. R. Civ. P. 26(a)(2)(B) and case law do not require a party to have control over the expert's time and testimony or to compensate the expert to determine that the witness is retained.

Accordingly, the Board grants NCW's motion to compel and requires that RTX serve a written report in compliance with Fed. R. Civ. P. 26(a)(2)(B), prepared and signed by Holder, or amend its expert disclosures to delete Holder as an expert witness.

(1-36) Nettadoz Enterprises v. Cintron Beverage Group, LLC, Opp. Nos. 91200692 and 91200807, unpubl'd. Applicant's motion for summary judgment granted; opposer's cross-motion for partial summary judgment denied, March 29, 2013. Quinn, Kuhlke, and Mermelstein, Administrative Trademark Judges [Kim] (10 pages). Available in slip opinion only.

Part III - Petition Decisions

Commissioner for Trademarks - Selected Petition Decisions. (Note: " USPQ2d (Comm'r Pats, and Trademarks)" in heading indicates that the decision is under consideration for publication. Name in [ ] indicates primary drafter.) After this issue has circulated, remove the staples and file the pages containing abstracts or tables with "P" numbers (PART III) behind the PETITION tab and after the pages from the previous issue of this volume.

Footnote

1 R = Related; NR=Not Related. Since relatedness determinations are often inextricably entwined with other factors in the decision, some of the indications herein represent the editor's interpretation of the decision rather than express language in the opinion.

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