Inside This Issue

Abstract

Echospin, LLC (Echospin) filed an intent-to-use application to register the orange design mark shown here as Fig. 1 for "software for the collection, storage, processing, modification, organization, transmission, and sharing of data and information, including digital media" in International Class 9 and "computer service, namely, acting as an application service provider in the field of information processing to host computer application software for the collection, storage, processing, modification, organization, transmission, and sharing of data and information, including digital media" in International Class 42. Apple, Inc. (AI) opposed registration on the grounds of likelihood of dilution, priority, and likelihood of confusion with its previously registered marks: (i) APPLE (Reg. No. 1078312) for "computers and computer programs recorded on paper and tape" in International Class 9; (Reg. No. 2079765) for "communication filed by computer, namely, electronic transmission of data and documents via computer, delivery of messages by electronic transmission" in International Class 38; (Reg. No. 2808567) for "computer consultation, design, testing, research and advisory services; research and development of computer hardware and software; maintenance and repair of computer software applications; updating of computer software; computer programming services; providing information concerning computers and computer software over computer networks and global communication networks; computer services, namely, hosting web sites and providing web site operation and management services to others; computer services, namely, providing search engines for obtaining data on computer networks and global communication networks; leasing of computers, computer peripherals and computer software" in International Class 42; and (ii) the apple design shown here as Fig. 2 (Reg. No. 11 14431) for "computers and computer programs recorded on paper and tape" in International Class 9; (Reg. No. 2715578) for "computers hardware; computer hardware, namely, server, desktop, laptop, notebook and subnotebook computers; hand held and mobile computers; computer monitors; personal digital assistants; portable digital audio players; electronic organizers; computer keyboards, cables, modems; audio speakers; computer video control devices, namely, computer mice, a full line of computer software for business, home, education, and developer use; computer programs for personal information management; database management software; electronic mail and messaging software; database synchronization software; computer programs for accessing, browsing and searching online databases; operating system software; application development tool programs; blank computer storage media; fonts, typefaces, type designs and symbols recorded on magnetic media; 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 software for use as a programming interface; computer software for use in network server sharing; local and wide area networking software; computer software for matching, correction, and reproduction of color; computer software for use in digital video and audio editing; computer software for use in enhancing text and graphics; computer software for use in font justification and font quality; computer software for use to navigate and search a global computer information network, as well as to organize and summarize the information retrieved; computer software for use in word processing and database management; word processing software incorporating text, spreadsheets, still and moving images, sounds and clip art; computer software for use in authoring, downloading, transmitting, receiving, editing, extracting, encoding, decoding, playing, storing and organizing audio, video, still images and other digital data; computer software for analyzing and troubleshooting other computer software; children's educational software; computer game software; computer graphics software; Web site development software; computer program which provides remote viewing, remote control, communications and software distribution within personal computer systems and across computer network; computer programs for file maintenance and data recovery; computer peripherals; instructional manuals packaged in association with the above" in International Class 9; (Reg. No. 2753069) for "application service provider (ASP), namely, hosting computer software applications of others; computer services, namely, displaying the web sites and images of others on a computer server; computer diagnostic services; installation of computer software; updating of computer software; maintenance of computer software; computer hardware development; integration of computer systems and networks; monitoring the computer systems of others for technical purposes and providing back-up computer programs and facilities; computer consultation, design, and testing services; consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others; computer data recovery; computer programming for others; research and development of computer hardware and software; website design, creation and hosting services; computer services, namely, designing and implementing web sites for others; computer services, namely, providing search engines for obtaining data on a global computer network; providing use of on-line non-downloadable software for communications via local or global communications networks, including the Internet, intranets, and extranets; computer consultation, namely, analyzing data to detect, eradicate, and prevent the occurrence of computer viruses; computer consultation, namely, services relating to the protection of computer hardware, computer software, computer networks and computer systems against computer viruses, attacks, or failures; computer consultation, namely, services for optimizing the performance and functionality of computer software and communications networks; technical support services, namely, troubleshooting of computers, computer software, telecommunications, and the Internet systems; leasing of computers, computer peripherals and computer software; leasing computer facilities, providing information in a wide variety of fields over computer networks and global communication networks; computer services, namely, creating indexes of information, web sites and other information sources available on computer networks; providing information concerning a wide range of text, electronic documents, databases, graphics and audiovisual information" in International Class 42; (Reg.

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In the first of ten precedential decisions this month, the Board sustained a dilution claim for the first time in seven years, relying in part on the results of a "welldesigned" survey. Finding that an Applicant desired only to reserve a right in a trademark, the Board sustained an opposition based on his lack of bona fide intent to use the mark. It affirmed a Section 2(d) refusal of a mark for certain utility software in light of the identical mark for computer maintenance services, but it reversed a refusal to register a mark for personal headlamps over the identical mark for electric lighting fixtures. The Board affirmed a refusal of CLOTHING FACTS for clothing because the mark on the specimens was viewed as informational matter and not as a sourceidentifier, and it likewise affirmed a refusal to register OSMODEX for pharmaceutical consultation services because the mark on the specimen did not create the required direct association with the services. The Board ruled that a mark consisting of two or more initials coupled with a surname generally will not be primarily a surname. A cancellation petitioner barely cleared the standing hurdle, but then failed to prove his abandonment and fraud claims. The Board invoked Rule 2.107(b) in disallowing the addition of a new claim for relief in an opposition involving a Section 66(a) Request for Extension of Protection. And the Board granted a motion to compel proper interrogatory answers after the other party invoked Rule 33(d) by referencing documents in Russian.

(F-98) National Pork Board and National Pork Producers Council v. Supreme Lobster and Seafood Company, Opposition No. 91166701 [precedential]. For the first time in seven years the TTAB sustained a dilution claim, finding the mark THE OTHER RED MEAT for "fresh and frozen salmon" to be dilutive of the registered mark THE OTHER WHITE MEAT for "association services namely, promoting the interests of members of the pork industry." Advertising expenditures, tracking studies, consumer surveys, and media references convinced the Board that THE OTHER WHITE MEAT is femous; moreover, its fame was well-established prior to the filing date of the involved application. As to blurring, the Board looked to the non-exclusive factors set out in Section 43(c)(2)(B). Based upon the results of a "well-designed" survey, it found that "a sizeable segment of the target population sees the two marks as similar." The inherent distinctiveness of Opposer's mark and the feet that Opposer's use of the mark is "virtually exclusive" supported a finding of dilution by blurring. Voluminous evidence established that Opposer's mark "has become part of the fabric of popular culture. " And finally, the Board surmised that "applicant's principals may have believed it was permissible for applicant to create such an association," another factor favoring Opposer.

(F-105) The Saul Zaentz Company ciba Tolkien Enterprises v. Joseph M. Bumb, Opposition No. 91156452 [precedential]. In this, the third episode in the Registration Quest of Joseph M. Bumb, the Board sustained an opposition to registration of the mark MITHRIL for various jewelry items, finding that Mr. Bumb "lacked the requisite bona fide intention to use the MITHRIL mark in commerce when he filed his intentto-use application to register that mark. " Opposer had standing to oppose because it licensed use of the mark MITHRIL MINIATURES for collectible figurines. Bumb admitted that, other than his ITU application and documents pertaining to several domain names, he had no documentation "relating to his adoption of or intent to use the MITHRIL mark in commerce. " His trial testimony (taken by Opposer) established that "he adopted the MITHRIL mark because of its significance in the Tolkien works" and that his intent was "at most, merely to reserve a right in the term MITHRIL by registering the domain names and filing a trademark application, without the requisite bona fide intent to actually use the mark in commerce. " The burden shifted to Bumb to rebut Opposer's evidence, but he presented neither testimony nor evidence at trial. And so the Board concluded that the application was void ab initio.

(F-70) In re Mo Technologies, LLC, 95 USPQ2d 1498 (TTAB 2010) [precedential]. In this questionably precedential decision, the Board affirmed a Section 2(d) refusal to register the mark ACTI VECARE for "software, namely, a software feature that automatically analyzes and repairs or optimizes performance settings for personal computers, sold as a component of personal computer performance and maintenance utility software, " finding it likely to cause confusion with the registered mark ACTIVE CARE for "technical support services namely, troubleshooting of electronic communications computer hardware and software problems by telephone, by e-mail, by fax and on-site; installation, maintenance and updating of electronic communications computer software" [CARE disclaimed]. The Board agreed with Iolo that there is no per se rule that computer-related goods and services are related, but that did Applicant little good. "Here, based on the identifications themselves, we find that applicant offers a product that is complementary in function and purpose to the software installation, maintenance and updating services offered by registrant. Specifically, an optimizing software feature would be among the software tools that a computer technician might use when installing, maintaining or updating electronic communications computer software."

(F-76) In re Princeton Tectonics, Inc., 98 USPQ2d 1509 (TTAB 2010) [precedential]. In this precedential ruling, the Board reversed a Section 2(d) refusal to register the mark EPIC for "personal headlamps," finding the mark not confusingly similar to the identical mark for "electric lighting fixtures. " The Board took a dim view of the third-party registrations introduced by the PTO, deeming them not probative and pointing out that "examining attorneys must review the registrations carefully to ensure that each registration presented is probative and that the number of registrations is sufficient, along with other types of evidence, to establish that the types of goods at issue are related. " The Examining Attorney first feebly argued that personal headlamps and electric lighting fixtures are related because both emit light. Next, she argued that registrant's identified goods encompass applicant's goods because "a fixture can include a personal headlamp, as such goods are placed in a fixed position on one's head or helmet. " The Board was understandably not impressed. She also submitted six third-party registrations and copies of several webpages, but the Board emasculated them. Only one registration "arguably includes headlamps," but one registration is not enough to show the goods are related.

(F-95) In re T. S. Designs, Inc., 96 USPQ2d 1669 (TTAB 2010) [precedential]. The Board affirmed a refusal to register the mark CLOTHING FACTS in standard character form for various clothing items, on the ground that the mark as it appears on the specimens of use (shown here) functions as informational matter and not as a source-identifier. The Examining Attorney agreed that the "Clothing Facts" label "is reminiscent of the 'Nutrition Facts' label required for food products by the United States Food and Drug Administration (USFDA)." The Board appreciated that the specimen involves a "humorous play on the US FDA's ubiquitous nutrition labeling device," designed "to communicate applicant's commitment to social justice and environmental stewardship. " "However, in this context, we agree with the Trademark Examining Attorney that prospective consumers will view the designation Clothing Facts, as used on the entire label device, as informational matter, not as a source identifier for the shirts. The likelihood that consumers will so perceive these words on the label is enhanced because the label contains two clear source identifiers, namely 'tsdesigns.com' and 'printing t-shirts for good,' the latter specifically bearing the informal 'TM' designation, while the phrase Clothing Facts does not."

(F-96) In re Osmotica Holdings Corporation, 96 USPQ2d 1666 (TTAB 2000) [precedential]. In yet another precedential specimen-of-use case, the Board affirmed a refusal to register the mark OSMODEX for "consultation services regarding controlled release drug delivery technology for pharmaceutical companies," on the ground that the mark does not function as a service mark. The Board observed that: "It is not enough that the mark and a reference to the services both appear in the same specimen. In order to create the required 'direct association,' the specimen must not only contain a reference to the service, but also the mark must be used on the specimen to identify the service and its source. See In re Aerospace Optics Inc., 78 USPQ2d, 1861, 1862 (TTAB 2006)." "The statement referenced by applicant on the web page, as well as the web page statement that we highlighted in the web page reproduction, are at most oblique references to consulting services and would only be so construed if the reader already knew that applicant offered such services. Certainly, this is not the required direct association between OSMODEX and applicant's consulting services."

(F-97) In re PJ. Fitzpatrick, Inc., Serial No. 77256618 [precedential]. The TTAB reversed a Section 2(e)(4) refusal to register the mark PJ. FITZPATRICK, INC. for various construction services, finding the mark not to be primarily a surname. The Board attempted to clarify prior case law by stating that "if a mark consists of two initials (or more) coupled with a surname, it typically will convey a commercial impression of a personal name, and thus generally will not be primarily a surname. " The case that particularly needed clarification was the CCPA's decision in In re I. Lewis Cigar Mfg. Co. , 98 USPQ 265 (CPA 1953), in which the court found the mark "S. Seidenberg & Co. 's" to be primarily merely a surname. The Board observed that in Lewis Cigar, "the court did not find as a matter of law that a single initial added to a surname could never convey something other than surname significance. " It depends on the facts. Here there are two initials, not one, and "a segment of society uses multiple initials in lieu of given names, a fact not before the court in Lewis Cigar." According to the Board, Lewis Cigar suggests "that the coupling of two initials and a surname creates a full name and therefore a registrable mark." Of course, the term "INC. " has no effect on the Section 2(e)(4) question.

(F-108) Anosh Toufigh v. Persona Parfum, Inc., Cancellation No. 92048305 [precedential]. After clearing the standing hurdle, Petitioner experienced the agony of defeat when the Board dismissed his petition for cancellation of a registration for the mark ECSTASY for "parfum, eau de toilette, and cologne. " The Board ruled that Petitioner's evidence fell short of proving abandonment, and his proof of fraud was nonexistent. Standing: Toufigh contended that his application was refused in view of the subject registration. He failed to submit a copy of the office action, but did testify that he filed the application, which was enough. "[P]rior cases have found standing to be established by the fact that the petitioner's application has been refused registration on the basis of the registrant's registration." Abandonment: The Board drew no conclusions from Respondent's failure to respond to discovery, nor from its failure to submit evidence. There was no evidence that Toufigh checked respondent's website "over a period of at least three years" and, in any event, Respondent need not market via the Internet. Toufigh's testimony that he was unaware of Respondent's brand was not probative, since he was not qualified as an expert. Fraud: Toufigh submitted no evidence that Respondent's mark was not in use when it filed its Statement of Use. Ergo, fraud was not established.

(1-12) O.C. Seacrets, Inc. v. Hotelplan Italia S.p.A., Opposition No. 91190886 [precedential]. Opposer sought to amend its Notice of Opposition to add a new ground (lack of bona fide intent), but it ran into one big problem: the opposed application is a Section 66(a) Madrid Request for Extension of Protection and Rule 2.107(b) prohibits such an amendment in a Madrid opposition. Opposer claimed that it was merely clarifying an existing ground, but the Board disagreed and it denied the motion. Opposer alleged that "Applicant lacks a bona fide intent to use SECRETS LINE ... and therefore, has committed fraud on the U.S. Patent and Trademark Office." Its proposed amendment would replace that allegation with this: "In violation of 15 U.S.C. 1141(f) Applicant lacked a bona fide intent to use SECRETS LINE ...(for certain goods and services)" Opposer argued that the claim that Applicant lacked a bona fide intent was an element of its original fraud claim, and that the proposed amendment is therefore a permissible clarification of an existing ground. The Board found that argument unpersuasive: "[A]pplicant was apprised of only one ground by Paragraph 13 of the original notice of opposition, that of fraud. *** We will not parse an asserted ground to see if any of the elements that go to pleading that ground would independently state a separate ground."

(1-13) Johnson & Johnson and RoC International S.A.R.L. v. Obschestvo s Ogranitchennoy; Otvetstvenn Ostiu "WDS", Opposition Nos. 91182207 and 91184467 [precedential]. Applicant WDS responded to certain interrogatories by referencing its business records, pursuant to FRCP 33(d). The documents were in Russian. Opposers moved to compel supplemental responses that did not reference the Russian documents. The Board found that "applicant's burden to ascertain the answers from its business records is far less than opposers' burden of surmising an answer, and that opposers' burden is dramatically increased because the documents are in Russian. " "Applicant's approach clearly thwarts the exchange of discoverable information as Fed. R. Civ. P. 33(d) contemplates because 'it forces the responding party first to translate all documents, then to wade through each document in an effort to identify responsive information, and then to guess which of that information was intended by the responding party as comprising the balance of the answer to a given interrogatory.'" Finally, "[b]y requiring written responses ... in English, the Board is only requiring applicant and its counsel to summarize and explain what they found (when they reviewed the documents for production) and why the responses are contained in the documents. " And so the Board granted the motion to compel.

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, an experienced TTAB practitioner and intellectual property attorney and 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, David J. Kera, Beth Chapman, and Gary D. Krugman, for reviewing "Inside this Issue. " Mr. Kera and Ms. Chapman are members of the law firm of Obion, Spivak, McClelland, Maier & Neustadt, PC, of Alexandria, Virginia. Mr. Kera was a Member (now called an Administrative Trademark Judge) of the TTAB from 1975 to 1981. Ms. Chapman was an Administrative Trademark Judge from 1998 to 2005, when she retired from the USPTO 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.

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-68) In re Sofrane, S.N. 77384952, unpubl'd. Refusal to register affirmed, June 9, 2010. Donald L. Dennison of Dennison, Schultz & MacDonald for appellant; Barney L. Charlon for TMEO. [Quinn], Hairston, and Kuhlke, Administrative Trademark Judges (10 pages). Available in slip opinion only.

(F-69) In re RealKidz Inc., S.Nos. 77398503 and 77398544, unpubl'd. Refusal to register affirmed, June 9, 2010. John G. Posa of Gifford, Krass, Sprinkle, Anderson & Citkowski, P.C., for appellant; Benjamin U. Okeke for TMEO. Bûcher, [Holtzman], and Zervas, Administrative Trademark Judges (11 pages).

REAL KIDZ CLOTHING & des. ("clothing" disclaimed; color is not claimed as a feature of the mark; the mark includes an 8-pointed star; Fig. 1) and REALKIDZ CLOTHING & des. ("clothing" disclaimed; color is not claimed as a feature of the mark; the mark includes an 8-pointed star; Fig. 2), subjects of applications to register by RealKidz Inc. (RK) for "clothing, namely skirts, pants, tops, dresses and everyday wear, namely denim jeans and sweatsuits" in International Class 25, are likely to cause confusion with the previously registered mark FOR REAL KIDS for "bras, panties, tops, camisoles, shorts, sleepshirts, pajamas, gowns, robes, slippers, leggings, slips, chemises, underwear, tank tops, pantaloons, lingerie" in International Class 25. Registration had been finally refused under Section 2(d) of the Trademark Act.

Because there are no restrictions in the applications or the cited registration, the Board assumes that the goods are sold in some of the same channels of trade to some of the same purchasers. Genesco Inc. v. Martz, 66 USPQ2d 1260 (TTAB 2003). Purchasers of everyday wearing apparel would not be expected to exercise a high degree of care in their purchasing decisions. See, Kimberly-Clark Corp. v. H. Douglas Enter., Ltd., 774 F.2d 1144, 227 USPQ 541 (Fed. Cir. 1985).

To determine whether the marks are confusingly similar, the Board considers their appearance, sound, connotation, and commercial impression. See, Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). 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. See, Century 21 Real Estate v. Century Life, 970 F. 2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).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. 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 Board finds the marks similar in sound: REAL KIDS and REAL KIDZ are essential elements of both parties' marks. The only additional word in RK's marks is CLOTHING, which is disclaimed and generic. National Data at 751. Registrant's FOR is a preposition with no particular significance.

The Board finds the marks similar in meaning: Registrant's FOR REAL KIDS suggests the wearers of the clothing, and RK's marks could suggest a type of clothing or clothing to be worn by "real kids. "

The Board states that the differences in appearance are not so significant that they are likely to be remembered. RK's marks include design elements, continues the Board, but REAL KIDZ is the predominant visual element of both. The word portion of a mark, rather than the design features, is more likely to be remembered and relied upon by purchasers in referring to goods; therefore, that portion is accorded more weight. See, CBS, Inc. v. Morrow, 708 F. 2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983). FOR REAL KIDS is registered in typed form, so the Board must consider all reasonable manners in which it could be depicted. See, Phillips Petroleum v. CJ. Webb, 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971). Registrant could depict its mark in a display very similar to RK's. The marks are similar in sound, meaning, and commercial impression, according to the Board, and the similarities outweigh the differences.

Accordingly, the Board affirms the refusal to register RK's marks REAL KIDZ CLOTHING & des. and REALKIDZ CLOTHING & des.

(F-70) In re Iolo Technologies, LLC, S.N. 77399654, _ USPQ2d _ (TTAB, June 9, 2010). Refusal to register affirmed. Doyle B. Johnson of Reed Smith LLP for appellant; Karen P. Severson for TMEO. Holtzman, Cataldo, and [Ritchie], Administrative Trademark Judges (11 pages).

ACTIVECARE, subject of an application to register by Iolo Technologies, LLC (Iolo) for "software, namely a software feature that automatically analyzes and repairs or optimizes performance settings for personal computers, sold as a component of personal computer performance and maintenance utility software, " is likely to cause confusion with the previously registered mark ACTIVE CARE for "technical support services namely, troubleshooting of electronic communications computer hardware and software problems by telephone, by e-mail, by fax and on-site; installation, maintenance and updating of electronic communications computer software" and therefore is unregistrable. 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 Board compares the marks. The Board notes that the only difference is that Iolo's mark is a single compound word and the registrant's mark is two words. The Board explains that this difference has no trademark significance. Moreover, the Board notes that Iolo does not contest that the marks are substantially identical. The Board finds that this factor weighs strongly in favor of a likelihood of confusion.

The Board stresses that the more similar the marks at issue, the less similar the goods or services need to be for the Board to find a likelihood of confusion. In re Shell Oil Co., 26 USPQ2d 1688-1689 (Fed. Cir. 1993). In comparing the respective marks, the Board explains that it reads Iolo's identified goods as including a software feature that analyzes and repairs or optimizes all possible performance settings related to personal computers, including communications settings. The Board further finds that the cited registration covers troubleshooting of communications software for all types of computers, including personal computers. Iolo argued that there is no per se rule that computer-related goods and services are related. The Board agrees and notes that it must analyze the situation at hand. In this case, the Board finds that Iolo offers a product that is complementary in function and purpose to the software installation, maintenance, and updating services offered by registrant. Specifically, the Board reasons that an optimizing software feature would be among the software tools that a computer technician might use when installing, maintaining, or updating electronic communications computer software.

The Board reasons that the evidence submitted by Examining Attorney Severson supports the conclusion that the goods and services at issue are likely to be perceived by consumers as deriving from the same source. Specifically, the Board points out that the Examining Attorney has submitted copies of use-based, third-party registrations covering goods and services of the type in both the application and cited registration. In addition, the Board points out that the Examining Attorney also submitted evidence from several websites to show that various types of optimization software such as those identified by Iolo and technical support servicers such as those identified by the registration are advertised to consumers under the same mark. The Board notes that although these third-party identifiers are not necessarily specific about the nature of their technical support services or optimization software, they tend to support the relatedness shown by the parties' identifications.

Turning to the channels of trade, the Board explains that nothing prevents registrant's technical support services for troubleshooting of computer hardware and software problems from being promoted in the same channels of trade and to the same classes of consumers as Iolo's performance optimization software. Furthermore, the Board finds that because computer owners are the likely purchasers of both registrant's services and Iolo's products, registrant's and Iolo's target customers are the same.

Iolo urged the Board to consider consumer sophistication as a factor. The Board, however, explains that Iolo has submitted no evidence that either its consumers or those of the registrant would be sophisticated. Moreover, the Board notes that even sophisticated buyers are not immune from source confusion when the marks at issue are substantially identical.

Accordingly, the Board affirms the refusal to register Iolo's ACTIVECARE mark.

(F-71) In re Brass-Craft Manufacturing Company, S.N. 77513091, unpubl'd. Refusal to register affirmed, June 9, 2010. Edgar A. Zarins of Masco Corporation for appellant; Emily K. Carlsen for TMEO. Hairston, [Bûcher], and Zervas, Administrative Trademark Judges (11 pages). Available in slip opinion only.

(F-72) In re U.S. Top Importers, Inc., S.N. 77425141, unpubl'd. Refusal to register affirmed, June 11, 2010. JungJin Lee of Lee, Lee & Associates, P.C., for appellant; Doritt Carroll for TMEO. Hairston, [Zervas], and Walsh, Administrative Trademark Judges (11 pages). Available in slip opinion only.

(F-73) The Greens/Green Party USA v. Green Party of the United States, Opp. No. 91178037, unpubl'd. Opposition sustained, June 11, 2010. Henry B. Robertson for opposer; Ronald W. Citkowski of Gilford, Krass, Sprinkle, Anderson, et. al., for applicant. Walters, Holtzman, and [Ritchie], Administrative Trademark Judges (9 pages). Available in slip opinion only.

(F-74) In re H. H.H.: Heroes Helping Heroes, Inc., S.N. 77049193, unpubl'd. Refusal to register affirmed, June 14, 2010. Roberta Jacobs-Meadway of Eckert Seamans Cherin & Mellott, L.L.C, for appellant; Christopher L. Buongiorno for TMEO. Hairston, Walsh, and [Taylor], Administrative Trademark Judges (23 pages).

HELPING KIDS HELP THEMSELVES BY HELPING OTHERS, subject of an intent-to-use application to register by H.H.H.: Heroes Helping Heroes, Inc. (HHH) for "nonprofit after school development programs for at-risk youth involving education, namely tutoring for elementary school, middle school and high school curriculum; programs featuring information about college preparation and opportunities; career counseling; teaching life skills through community outreach education programs and conducting basketball practices and games for at-risk youth" in International Class 41, is likely to cause confusion with the previously registered mark HELPING KIDS HELP THEMSELVES for "printed materials, namely, books, workbooks, posters, handouts, and catalogs featuring books, workbooks, posters and handouts, all in the fields of self-esteem and self-awareness, stress management, school success, creativity, friends and family, conflict resolution, social skills, social action and social responsibility, leadership development and character education, mental and physical health, and special needs; printed educational, instructional and teaching materials in the fields of self-esteem and self-awareness, stress management, school success, creativity, friends and family, conflict resolution, social skills, social action and social responsibility, leadership development and character education, mental and physical health, and special needs" in International Class 16; for "retail and wholesale mail order services and online ordering services in the fields of children's and young adult's books and printed educational, instructional and teaching materials in the fields of self-esteem and self-awareness, stress management, school success, creativity, friends and family, conflict resolution, social skills, social action and social responsibility, leadership development and character education, mental and physical health, and special needs" in International Class 35; and for "prerecorded compact discs featuring books that feature information in the fields of self-esteem and self-awareness, stress management, school success, creativity, friends and family, conflict resolution, social skills, social action and social responsibility, leadership development and character education, mental and physical health, and special needs; electronic publications in the nature of books, electronic books, and e-books, all recorded on computer media, featuring information in the fields of self-esteem and self -awareness, stress management, school success, creativity, friends and family, conflict resolution, social skills, action and social responsibility, leadership development and character education, mental and physical health, and special needs" 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 Pont factors. Key considerations are the similarities between the marks and the similarities between the goods and services. See, Federated Foods, Inc. v. Fort Howard Paper Co., 544 F. 2d 1098, 192 USPQ 24 (CCPA 1976). Likelihood of confusion must be based on an analysis of the marks as applied to the goods and services recited in an applicant's application vis-à-vis the goods and services recited in the registration, not on what the evidence shows the goods and services to be. Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992). Goods or 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 if the conditions surrounding their marketing are such that the goods or services 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 or services originate from the same producer. In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). Likelihood of confusion may result from the use of similar marks by different parties in connection with goods and with services related to those goods. Wet Seal Inc. v. FD Management Inc., 82 USPQ2d 1629, 1639-49 (TTAB 2007).

The Board reads HHH's "teaching life skills" to encompass teaching self-esteem and self -awareness, stress management, school success, conflict resolution, social skills, social action and social responsibility, leadership development, and character education, all of which are covered by registrant's materials. The Board finds that HHH's after-school programs that teach life skills through community outreach education are complementary to registrant's publications and educational and instructional material. The Board observes that the curriculum for HHH's program could feature registrant's materials. The Board adds that evidence submitted by Examining Attorney Buongiorno supports a finding that HHH's services are likely to be perceived as originating from the same source as registrant's goods. The Examining Attorney made of record 20 use-based, third-party registrations for marks used in connection with goods and services of HHH's and registrant's type. Third-party registrations suggest that the listed goods and services are of a type that may emanate from a single source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993). The Board finds that the parties' goods and services are related.

In the absence of limitations as to channels of trade and classes of purchasers, the Board must presume that HHH's programs and registrant's materials travel in the usual trade channels to the usual classes of consumers. See, In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). The Board notes that both parties market their services and goods via the Internet. The Board finds that the channels of trade and the classes of consumers overlap.

HHH argued that registrant is a publisher, not a provider of educational programs to children, and HHH runs an afterschool program for at-risk youth and does not publish books or any printed material. The Board reiterates that the test is not whether the goods and services are the same; it is whether they are sufficiently related that consumers would expect them to emanate from a common source. See, Albert Trostel, supra.

HHH asserted that the trade channels and consumers are not related because registrant targets educators through retail and wholesale services, whereas HHH targets at-risk youth. The Board points out that there are no such restrictions as to channels of trade or classes of purchasers. See, In re BercutVandervoort & Co., 229 USPQ 763, 764 (TTAB 1986).

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 563 (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. 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 the marks similar in sound, appearance, meaning, and commercial impression. HELPING KIDS HELP THEMSELVES is registrant's entire mark and is aurally and visually a significant part of HHH's mark, according to the Board. The Board observes that the HELPING KIDS HELP THEMSELVES portion of HHH's mark is identical in sound and appearance to the cited mark and is the first and dominant component of HHH's mark. See, Presto Products, Inc. v. NicePak Products Inc., 9 USPQ2d 1895, 1897 (TIAB 1988). Given the syntax and structure of HHH's mark, the Board finds that the addition of BY HELPING OTHERS fails to distinguish the marks: It is subordinate to and clarifies HELPING KIDS HELP THEMSELVES.

HHH contended that the cited mark coveys a message that the goods are designed to help the user and are purchased for selfish reasons, whereas HHH 's mark conveys a message of helping others. The Board determines that both marks convey the message that the goods and services foster self-help.

HHH argued that the cited mark is weak and is not entitled to broad protection, the common elements being so weak that the additional wording in HHH's mark is sufficient to distinguish it. HHH made of record third-party registrations for HELPING KIDS and HELPING _____ HELP THEMSELVES marks. Third-party registrations are not evidence that the marks shown therein are in commercial use or that the public is familiar with them. See, AMF Incorporated v. American Leisure Products, Inc. , 177 USPQ 268, 269 (CCPA 1973). The Board observes that the HELPING KIDS marks are not as similar to the cited mark as is HHH's mark. Several registrations cover goods and services that are different in nature from the goods and services at issue, continues the Board. The HELPING _____ HELP THEMSELVES marks are not as similar as the marks at issue; in HHH's mark, each term in the phrase is identical to the cited registration, but each of the third-party marks contains a distinct term in the HELPING _____ HELP THEMSELVES formula, according to the Board.

HHH made of record Internet evidence showing third-party use of HELPING KIDS HELP THEMSELVES as the tide of a book and two news articles and of HELPING _____ HELP THEMSELVES as book and article titles. The evidence has little probative value, according to the Board, because of the limited third-party use (33 instances) and because HHH presented no evidence concerning the extent to which the third-party designations are used in commerce or to which the public is familiar with them. See, Sports Authority Michigan, Inc. v. PC Authority Inc. , 63 USPQ2d 1782 (TTAB 2001). The record does not establish that the phrases HELPING KIDS or HELPING _____ HELP THEMSELVES have been diluted. See, Broadway Chicken Inc. , 38 USPQ2d 1559 (TTAB 1996). The Board finds that HHH's evidence does not establish widespread use of similar marks for educational, instructional, and teaching materials such that the registered mark is weak.

Even so, the Board finds that the phrases HELPING KIDS and HELPING _____ HELP THEMSELVES are suggestive; therefore, registrant's mark is not entitled to the broadest scope of protection. Nonetheless, registrant's mark is entitled to protection from HHH's very similar mark for closely related services. See, In re Colonial Stores, Inc., 216 USPQ 793 (TTAB 1992).

Accordingly, the Board affirms the refusal to register HHH's mark HELPING KIDS HELP THEMSELVES BY HELPING OTHERS.

(F-75) Message in a Bottle, Inc. f/k/a Gold Shells, Inc. v. Keith CangiareUa, Opp. No. 91162780, unpubl'd. Opposition sustained in part, June 15, 2010. Peter H. Smith for opposer; Keith CangiareUa, pro se. [Seeherman], Cataldo, and Taylor, Administrative Trademark Judges (34 pages).

Keith CangiareUa filed an application to register the mark MESSAGE IN A BOTTLE for "novelty, favor, and souvenir bottie [sic] containing messages and greetings, invitations, promotional materials of others, and advertising materials of others; kits comprised of bottles, paper for creating promotional messages, advertising messages, greetings, messages and invitations and packaging and boxes for mailing. " Message in a Bottle, Inc. f/k/a Gold Shells, Inc. (MB) opposed registration of the mark, alleging likelihood of confusion pursuant to Section 2(d) of the Trademark Act with its previously registered mark MESSAGE IN A BOTTLE ("message" disclaimed) for "receiving communications from others, recording such communications in written or printed form, and transmitting such communications to others." CangiareUa counterclaimed to cancel MB's registration. MB further alleged (i) that the mark was assigned to it in October 2004 by its predecessor-in-interest, MB's CEO Roger Rojas; (ii) that since October 1999, MB or Rojas has continuously used the mark in connection with the identified services and for "novelty, favor, and souvenir bottles containing messages and greetings"; (iii) that MB has used or has made constructive use of its mark through the filing of its underlying application since prior to any date upon which CangiareUa can rely; (iv) that because the marks are identical and the respective goods and services are substantially similar, confusion is likely; and (v) that in view of the identity of the marks and the substantially similar nature of the uses thereof, CangiareUa's mark consists of and comprises matter that may disparage and falsely suggest a connection with MB and thus is not registrable under Section 2(a) of the Act. In his answer, CangiareUa admitted that he did not use MESSAGE IN A BOTTLE prior to MB's January 6, 1997, filing date of MB's application that matured into its registration and that his first use in commerce was June 10, 1998. CangiareUa asserted various affirmative defenses, including unclean hands and that MB lacks standing, and he asserted a counterclaim based on the ground of fraud. MB denied the salient allegations of the counterclaim.

Objections, Standing, and Counterclaim

The Board addresses certain objections.

Although the ownership by MB of its registration of the identical mark MESSAGE IN A BOTTLE normally would be a sufficient basis to demonstrate standing, it appears to the Board that CangiareUa is claiming that MB has no standing to bring this opposition because he believes that MB had to have been in existence prior to the filing of his application to challenge the application or that the pleaded mark and registration had to have been assigned to MB at the time that his application was published for opposition on June 29, 2004. The Board explains that Section 13 of the Act provides that any person who believes that he would be damaged by the registration of a mark may file an opposition, and it notes that MB is the record owner of MESSAGE IN A BOTTLE and was so at the time it filed its notice of opposition. The Board further notes that as of July 7, 2003, prior to the publication for opposition of Cangiarella's mark and MB's filing of its requests for an extension of time to oppose, MB was licensed to use the mark. The Board concludes that this evidence is sufficient to show that MB had and has a reasonable basis for believing that it will be damaged by the registration of Cangiarella's mark and that is not a mere intermeddler. See, Lipton Industries, Inc. v. Ralston Purina Co., 670 F. 2d 1024, 213 USPQ 185 (CCPA 1982).

Cangiarella seeks to cancel MB's pleaded registration on the ground of fraud, alleging that MB misidentified its services during the prosecution of its application: Based on Cangiarella's discussion of the difference between a trademark and a service mark, Cangiarella asserted that MB's activities are more in the nature of offering goods rather than services, that MB did not advise the PTO that it was transmitting messages using "novelty, favor and souvenir bottles, " and that MB is not rendering "telecommunications" services.

To constitute fraud on the PTO, a statement must be (i) false, (ii) a material representation, and (iii) made knowingly. Torres v. Cantine Torresella S.r.L, 808 F. 2d 46, 1 USPQ2d 1483, 1484 (Fed. Cir. 1986). The charge of fraud must be proven "to the hilt" with clear and convincing evidence. There is no room for speculation, inference, or surmise, and any doubt must be resolved against the charging party. Smith International Inc. v. OUn Corp., 209 USPQ 1033, 1044 (TTAB 1981).

The Board explains that Cangiarella's claims about the misclassification of MB's services, even if true, falls far short of establishing fraud because there is a material legal distinction between a "false" representation (which may be occasioned by a misunderstanding, an inadvertence, a mere negligent omission, or the like) and a "fraudulent" one (involving an intent to deceive). In re Bo se Corp., 530 F. 3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009). The Board points out that the explanatory notes for International Class 38 services, even today, state that "Class 38 includes mainly services allowing at least one person to communicate with another by a sensory means. Such services include those which . . . transmit messages from one person to another. " MB submitted evidence that its activities involve receiving messages from a party, transcribing the message on special paper, putting the message in a bottle, and sending the message to another party. The Board allows that it cannot find that the classification of the Class 38 services was material to the allowance of Cangiarella's application, adding that the Examining Attorney was well aware of the nature of MB's services at the time that the mark was approved for registration in Class 38; if the Examining Attorney believed that Class 38 was not acceptable, he could have changed the classification. See, Trademark Manual of Examining Procedure § 1401.03(b).

When the Board considers all evidence of record and the parties' arguments, including those not specifically discussed in this case, it finds that Cangiarella did not prove that MB or its predecessor committed fraud in obtaining or maintaining its registration. Accordingly, the Board dismisses Cangiarella's counterclaim to cancel MB's registration.

Priority and Likelihood of Confusion

Priority is not at issue in this proceeding.

In determining likelihood of confusion, the Board considers all relevant du Pont factors as set forth in In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). Key considerations are the similarities between the marks and the similarities between the goods or services. See, Federated Foods, Inc. v. Fort Howard Paper Co. , 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). The Board first observes that the marks are identical, a fact that Cangiarella conceded and a du Ibnt factor that strongly favors a finding of likelihood of confusion.

Goods or 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 goods or services originate from the same producer. In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). Likelihood of confusion must be found if there is likely to be confusion with respect to any item that comes within the identification of goods in the application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F. 2d 1335, 209 USPQ 986, 988 (CCPA 1981).

As previously discussed, MB renders its services through placing communications in novelty, favor, or souvenir bottles, and the description in its registration encompasses transmitting communications in this manner. Likelihood of confusion may result from the use by different parties in connection with goods, on the one hand, and services that deal with or are related to those goods, on the other hand. Wet Seal Inc. v. FD Management Inc., 82 USPQ2d 1629, 1639-49 (TTAB 2007). The Board determines that the complementary nature of MB's services and Cangiarella's goods is obvious because the bottles are used as a primary feature in the rendering of the services.

It is clear to the Board that the parties offer their respective services and goods to the same classes of consumers, and those seeking to obtain such services and goods may do so by an Internet search.

The consumers for the parties' services are the general public, who cannot be considered to be particularly sophisticated with regard to the goods and services in this case; moreover, the goods and services are relatively inexpensive.

MB did not argue that its mark is famous, and it did not submit evidence that would prove such fame.

The third-party registrations submitted by the parties are not dispositive in this case.

MB submitted evidence of what it characterized as actual confusion, consisting of received emails. The Board finds that fault can be determined with each piece of evidence and testimony. Moreover, the Board needs no such evidence to conclude to conclude that CangiareUa's use of his mark for his identified goods is likely to cause confusion with MD's mark, although MD's evidence reinforces such conclusion.

The Board, when it considers all of the relevant du Pont factors and the evidence and arguments before it, finds that CangiareUa's use of the mark MESSAGE IN A BOTTLE for his identified goods is likely to cause confusion with MD's identical mark for its identified services.

False Suggestion of a Connection and Disparagement

MD claimed that its principal testified to receiving calls from persons asking for CangiareUa and, thus, that a false implication of a connection exists between the parties. MD, however, did not explain how its evidence meets the requirements of In University of Notre Dame du Lac v. JC. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 217 USPQ 505, 509 (Fed. Cir. 1983). The Board finds that MD's evidence of record is not sufficient to prove a false suggestion of a connection; particularly, MD did not show that MESSAGE G? A BOTTLE points uniquely to MD's persona or identity, and it did not show that its name or identity is sufficiendy famous or has a reputation such that when CangiareUa's mark is used on his goods or services, consumers would presume a connection with MD.

MD relied on an email that it claimed is evidence of consumer hostility having been visited on MD when intended for CangiareUa and that if CangiareUa is allowed to register MD's mark for his recited goods, more such disparagement of MD's mark can be expected. The Board explains that the referenced email complained that MD engaged in a bait-andswitch shipping policy by advertising free shipping and then charging for it and that CangiareUa threatened to expose this conduct on electronic bulletin boards.

Section 2(a) of the Act prohibits registration of a mark that comprises matter that may disparage persons, living or dead, institutions, beliefs, or national symbols or bring them into contempt or disrepute. Two elements of a claim of commercial disparagement exist: (i) The communication reasonably would be understood as referring to the plaintiff and (ii) the communication is disparaging, that is, would be considered objectionable or objectionable by a reasonable person of ordinary sensibilities. Greyhound Corp. v. Both Worlds Inc. , 6 USPQ2d 1635, 1639 (TTAB 1988). MD pointed to no cases wherein disparagement has been found because of complaints about the services provided by the defendant under the mark and, again, such damage would appear to go to a claim of likelihood of confusion rather than disparagement. Thus, the Board dismisses MD's claims of false suggestion of a connection and disparagement.

The Board does not consider MD's claim of fraud.

Conclusion

The Board denies CangiareUa's counterclaim to cancel MD's registered mark MESSAGE IN A BOTTLE. The Board grants MD's opposition to registration of CangiareUa's applied-for mark MESSAGE IN A BOTTLE solely with respect to the issue of likelihood of confusion.

(F-76) In re Princeton Tectonics, Inc. , S.N. 77436425, _ USPQ2d _ (TTAB, June 16, 2010). Refusal to register reversed. George A. Smith of Howson & Howson LLP for appellant; Jennifer M. Hetu for TMEO. Bucher, Zervas, and [Walsh], Administrative Trademark Judges (12 pages).

EPIC, subject of an intent-to-use application to register by Princeton Tectonics, Inc. (PT) for "personal headlamps" in International Class 1 1, is unlikely to cause confusion with the previously registered mark EPIC for "electric lighting fixtures" in International Class 11 and therefore is unregistrable. Registration had been finally refused under Section 2(d) of the Trademark Act.

In determining whether confusion is likely, the Board considers the relevant du Pont factors. Although PT argued that EPIC is a weak mark, the Board notes that the marks are identical and that there is no basis for finding that the mark is weak. The Board notes that the only du Pont factor at issue is the relatedness of the goods.

The Board explains that there is no real dispute as to the scope of the goods identified in the application. The Board states that PT explained that its goods are lights that an individual would wear on the head while bicycling at night, while exploring caves, or while engaged in other sports or recreational pursuits. The Board notes that the identification could also cover lights attached to helmets used in mining and other industrial activities.

Examining Attorney Hetu contended that personal headlamps and electric lighting features are related because the primary purpose of both types of goods is to emit and provide light. The Examining Attorney argued that registrant's light fixtures are broad enough to encompass PT's goods.

The Board initially states that the mere fact that both types of goods at issue emit and provide light is not a sufficient basis to conclude that the goods are related. The Board explains that the Examining Attorney provided six third-party registrations and copies of Web pages to attempt to show that the goods are actually related. The Board explains that only one of the registrations arguably includes personal headlamps and reasons that one third-party registration is not sufficient to establish that personal headlamps and lighting fixtures are goods that may emanate from a single source.

In addition, the Board notes that this third-party registration also identifies a diversity of household goods. The Board finds that this diversity of goods diminishes the probative value in establishing that any two items identified in the registration are related. Consequently, the Board determines that the third-party registrations are not probative of whether the goods are related. The Board explains that examining attorneys must review third-party registrations carefully to ensure that each registration presented is probative and the number of registrations is sufficient, along with other types of evidence, to establish that the goods are related.

Turning to the website evidence, the Board notes that this evidence generally fails to identify the particular types of goods at issue or is from sources that sell a broad range of varied and unrelated goods online.

Accordingly, the Board reverses the refusal to register PT's mark EPIC

(F-77) In re Fiesta Palms, LLC, S.N. 77380007, unpubl'd. Refusal to register affirmed, June 17, 2010. Scott Hervey of Weintraub Genshlea Chediak for appellant; Martha L. Fromm for TMEO. [Quinn], Walters, and Taylor, Administrative Trademark Judges (12 pages).

SKY CASINO ("casino" disclaimed), subject of an application to register by Fiesta Palms, LLC (FP) for, as amended, "casino services, excluding casino services provided in airports or on airplanes" in International Class 41 , is likely to cause confusion with the previously registered mark SKY CASINOS INTERNATIONAL WE MAKE TIME FLY! &. des. ("casinos international" disclaimed; shown here) for "entertainment services in the form of card games and other similar games of chance made playable via electronic gamesets, which services shall be offered on air flights; and rental of electronic gamesets used to play card games and other casino games on air flights" in International Class 41 . Registration had been finally refused under Section 2(d) of the Trademark Act.

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. 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. See, In re National Data Corp., 753 F. 2d 1056, 224 USPQ 749 (Fed. Cir. 1985). When both words and a design comprise the mark, the words are normally accorded greater weight because the words are likely to make an impression upon purchasers, would be remembered by them, and would be used by them to request the services. In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987).

The Board determines that the dominant feature in the registered mark is the literal portion and that SKY CASINOS INTERNATIONAL WE MAKE TIME FLY is dominated by the words SKY CASINOS, which are more prominently displayed, appearing in large, bolder, thicker letters, whereas the other words are in a small, thin font below the more prominent portion. The Board notes that the dominant portion of registrant's mark is virtually identical to the entirety of FP's mark SKY CASINO, the only difference being the singular form of CASINO in FP's mark. The Board points out that the generic word "casino(s)" is disclaimed in both marks.

The Board concludes that the marks are similar in sound and appearance. Moreover, they share similar meanings and overall commercial impressions: SKY CASINO suggests a casino high in the air, whether in a tall building or on an airplane.

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 the services 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. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991). Likelihood of confusion must be based on analysis of the marks as applied to the services recited in an application vis-à-vis the services recited in the registration. In re Shell Oil Co. , 992 F. 2d 1204, 26 USPQ2d 1687, 1690 n.5 (Fed. Cir. 1993); In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006).

Examining Attorney Fromm provided Internet excerpts regarding the emergence of casino gambling services on air flights and the fact that air flights featuring casino games are planned by land-based casino entities. The Board determines that the respective services are related. Although FP specifically excluded from its recitation of services casino services rendered in airports or on airplanes, the Board points out that consumers will perceive the services as related, with similar marks being used for land-based casino services, on the one hand, and in-flight entertainment in the form of casino games, on the other hand.

The Board concludes that purchasers who are familiar with registrant's entertainment services in the form of card games and other similar games of chance made playable via electronic gamesets on air flights, and the rental services related thereto under registrant's mark, would be likely to mistakenly believe, upon encountering FP's mark for casino services (excluding casino services provided in airports or on airplanes), that the services originated with or are somehow associated with or sponsored by the same entity.

To the extent that any doubts exist about likelihood of confusion, the Board resolves such doubt in favor of the prior registrant. In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).

Accordingly, the Board affirms the refusal to register FP's mark SKY CASINO.

(F-78) In re Gothic Dog, Inc. , S.N. 77195065, unpubl'd. Refusals to register affirmed, June 21, 2010. Daniel C. DeCarlo and Josephine Brosas of Lewis Brisbois Bisgaard & Smith LLP for appellant; Marc J. Leipzig for TMEO. Quinn, Grendel, and [Zervas], Administrative Trademark Judges (21 pages).

GOTHIC DOG, subject of an application to register by Gothic Dog, Inc. (GD) for "pet jewelry" in International Class 14, is merely descriptive and is likely to cause confusion with the previously registered marks GOTHIC (stylized; shown here) for "finger rings" and GOTHIC for "jewelry. " Registration had been finally refused under Sections 2(d) and 2(e)(1) of the Trademark Act.

Mere Descriptiveness

A mark is merely descriptive if it consists merely of words that are descriptive of the qualities, ingredients, or characteristics of the goods. In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004), quoting, Estate of P.D. Beckwith, Inc. v. Commissioner, 252 U.S. 538 (1920). The test is whether the mark immediately conveys information concerning a quality, characteristic, function, ingredient, attribute, or feature of the product. In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986). A term need not immediately convey an idea of each specific feature of the applicant's goods 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 goods for which registration is sought, the context in which the term or phrase is being used or is intended to be used on or in connection with those goods, and the impact that the term or phrase is likely to have on the average purchaser of such goods. In re Abcor Dev. Corp., 588 F. 2d 811, 200 USPQ 215 (CCPA 1978).

Examining Attorney Leipzig contended that GOTHIC is descriptive of a style of jewelry and that GOTHIC DOG describes that GD provides gothic-styled jewelry for pets, including dogs. He provided, inter alia, dictionary definitions for "dog" and "gothic" and various Web pages. GD submitted an article from Trendhunter Magazine that emphasizes the GOTHIC aspect of CD's goods; CD's Web page that depicts a dog and jewelry and includes the phrase, "A Girl's Best Friend for Man's Best Friend"; and one of GD's Web pages that offers skull-and-crossbones and cross jewelry for sale.

The evidence establishes that there is a style of jewelry identified as GOTHIC, according to the Board, and some gothic jewelry websites offer the same skull-and-crossbones and cross designs depicted on GD's website. DOG identifies the animals that wear GD's jewelry, continues the Board, and GD promotes its goods for dogs. The Board finds GOTHIC DOG merely descriptive.

GD argued that it does not provide jewelry in the form of a gothic dog or jewelry featuring a gothic dog. GD pointed out that there are several definitions of "gothic," none of which relates to pet jewelry, and that there is nothing in the definition of "dog" that suggests relationship to pet jewelry. The Board disagrees, pointing out that as demonstrated by Web pages that identify different styles of jewelry, the style of jewelry is a significant feature of the goods. The fact that GD's goods are intended for dogs is significant, according to the Board; consumers generally shop for goods specific to the type of pet. To the extent that GD contended that a definition for "gothic" or "dog" must refer to pet jewelry for the designation to be merely descriptive, the Board clarifies that a dictionary definition need not refer to the goods directly for a mark to be merely descriptive.

GD argued that GOTHIC DOG is a combination mark, that the ultimate issue is the commercial impression that the mark creates on the average reasonably prudent buyer, and that GOTHIC DOG creates a commercial impression separate and apart from its components in that it suggests a gothic dog (describing the dog rather than the jewelry as gothic) rather than gothic jewelry emphasis in original). A term that is created by combining two or more unregistrable words may achieve registration if, in combination, a new and different commercial impression is achieved or the term imparts a bizarre or incongruous meaning in connection with the goods. In re National Shooting Sports Foundation, 219 USPQ 1018 (TTAB 1983). The Board finds no new and different commercial impression in the combination of GOTHIC and DOG and concludes that GOTHIC DOG immediately describes that GD's goods include jewelry of a gothic design for dogs.

Likelihood of Confusion

The Board reiterates that GOTHIC DOG has a descriptive connotation for pet jewelry; however, because the Board must accord the cited registration the presumptions of Section 7(b), for purposes of the likelihood of confusion analysis the Board considers the cited marks highly suggestive rather than merely descriptive. The registrations are entitled to a very limited scope of protection due to the highly suggestive nature of the marks, clarifies the Board, but they are entitled to some protection.

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 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. 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 observes that DG's mark differs from the cited marks only by the addition of DOG. The Board accords less weight to DOG than to GOTHIC. DG's Wfeb page prominently features an image of a dog, the Web page speaks only of dogs as animals that would wear DG's goods, and DG promotes its goods as "for Man's Best Friend. " DOG identifies the animal that is to wear the jewelry and is highly descriptive, according to the Board. GOTHIC is the first word in DG's mark and therefore is more likely to be remembered. Presto Products, Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895(TTAB 1988). The Board states that GOTHIC is the dominant term in DG's mark, and it is identical to the cited registered marks.

The Board finds registrant's GOTHIC and DG's GOTHIC DOG similar in appearance and sound. As for meaning, because DOG is highly descriptive in the context of pet jewelry, the Board finds that the addition of DOG does not significantly change the meaning of DG's mark with regard to registrant's marks.

The Examining Attorney submitted Web pages that show pet jewelry offered for sale on the same Web pages as jewelry for humans. The Board states that the Web pages establish that pet jewelry and jewelry are marketed in such a manner that they would be likely to be encountered by the same persons in situations that would give rise to a mistaken belief that they originate from the same producer. The Examining Attorney submitted third-party registrations that list pet jewelry and other kinds of jewelry, including finger rings, under one mark. Third-party registrations, although not evidence that the marks shown therein are in commercial use or that the public is familiar with them, 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 Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff'd, 864 F.2d 149 (Fed. Cir. 1988). The Board states that the Examining Attorney has established that pet jewelry, jewelry, and finger rings are related.

DG made arguments regarding the high pricing of the parties' goods. Because there are no restrictions in the descriptions of goods, the Board must consider the goods to include inexpensive products that may be purchased by nondiscerning customers. See, In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986). When products are inexpensive and subject to impulse purchase, the risk of consumer confusion increases because purchasers are held to a lower standard. See, Recot, Inc. v. M. C. Becton, 214 F. 3d 1332, 54 USPQ2d 1894 (Fed. Cir. 2000).

Accordingly, the Board affirms the refusals to register DG's mark GOTHIC DOG.

(F-79) Franciscan Vineyards, Inc. v. BeauxKat Enterprises LLC, Opp. No. 91181755, unpubl'd. Opposition sustained, June 21, 2010. Linda Kurth and Jack Rannels of Baker and Rannels for opposer; Justin D. Clark of Romero Park & Wiggins for applicant. [Quinn], Holtzman, and Walsh, Administrative Trademark Judges (22 pages).

BeauxKat Enterprises LLC (BE) filed an intent-to-use application to register the mark BLACK RAVEN BREWING COMPANY ("brewing company" disclaimed) for "beer" in International Class 32. Franciscan Vineyards, Inc. (FV) opposed registration of the mark, alleging likelihood of confusion pursuant to Section 2(d) of the Trademark Act with its previously registered marks that include RAVENSWOOD, RAVENS, and RAGIN RAVEN, all for "wine" as well as for clothing and sauces. BE denied the salient allegations.

Objections, Standing, and Priority

The Board first addresses certain objections.

Because FV properly made its pleaded registrations of record and has shown that it is not a mere intermeddler (see, Lipton Industries, Inc. v. Ralston Purina Co., 670 F. 2d 1024, 213 USPQ 185 (CCPA 1982)), it has established its standing to oppose registration of BE's application. Moreover, priority is not at issue in this proceeding.

Likelihood of Confusion - The Goods

In determining likelihood of confusion, the Board considers all relevant du Brnt factors as set forth in In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). Key considerations are the similarities between the marks and the similarities between the goods. See, Federated Foods, Inc. v. Fort Howard Paper Co. , 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).

The Board determines that the respective goods are related to that extent that wine and beer are alcoholic beverages and, although acknowledging that wine and beer are specifically different products that would not be confused for each other, the Board explains that this is not the test as set forth in Octocom Systems Inc. v. Houston Computers Services, Inc., 918 F. 2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).

Using the PTO 's TESS database, FV submitted a printout of a search summary listing 267 third-party registrations of marks that list both "wine" and "beer" in the identification of goods. Although a TESS printout is not sufficient to properly make the registrations of record, FV also submitted copies of 50 third-party registrations that include both "wine" and "beer" in the identification of goods. The Board admonishes FV that it should have been more careful in its selection of the registrations: Several of the registrations are canceled, several are based on foreign filings, and at least one registration indicates that the goods do not include "wine. " Thus, it appears to the Board that of the submitted registrations, 30 are subsisting, use-based registrations that list both "wine" and "beer. " Third-party 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 Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).

Given the lack of restrictions in the identifications of goods, the Board presumes that the goods travel through all ordinary trade channels including, for both wine and beer, liquor stores, grocery stores, bars, and restaurants. The Board further presumes that the goods would be offered to the same consumers. See, Schieffelin & Co. v. Molson Companies Ltd. , 9 USPQ2d 2069, 2073 (TTAB 1989). The Board notes that the record also includes excerpts from 14 printed publications, including Food & Wine, Bon Appétit, Wine Spectator, and Gourmet, showing that wine and beer are advertised or discussed in the same magazines.

The Board explains that when the proper evidence is of record, its precedential authority specifically holds beer and wine to be related products. See, In re Sailerbrau Franz Sailer, 23 USPQ2d 1719 (TTAB 1992).

Fame of the Cited Marks

Fame, if it exists, plays a dominant role in the process of balancing the du Pont factors. Bos e Corp. v. QSC Audio Products, Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002); Recotlnc. v. M.C. Becton, 214 F.3d 1322, 1327, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000). Famous or strong marks enjoy a wide latitude of legal protection, and a famous mark casts a long shadow that competitors must avoid. Kenner Parker Toys, Inc. v. Rose Art Industries, Inc. , 963 F.2d 135, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).

FV claimed that its products are well known and have achieved great recognition and that it enjoys enviable sales. FV's annual wholesale sales over the last seven years average around $65 million, and its annual advertising and promotional expenses for its marks have exceeded $400,000. FV's sales of a variety of gift items bearings its marks during the period 1999 through 2003 amounted to $666,000, and in 1998, the sales amounted to $453,000. FV also submitted approximately 200 articles published from 1999 through 2009 wherein reference is made to its RAVENSWOOD wines and/or winery.

The Board explains that although FV's numbers are not insignificant, there is no testimony or evidence regarding whether FV's sales and advertising numbers are large or small vis-à-vis other comparable wines; moreover, FV did not break down the sales and advertising figures for each mark. The Board notes that the articles have limited probative value because they do not establish recognition of any of FV's marks by the relevant purchasing public.

The Board concludes that although FV's RAVENSWOOD mark may enjoy some renown, the record falls short of establishing that the mark is contemplated by case law; furthermore, the record also falls short in showing that any of FV's other marks, including RAVENS, is famous.

The Marks

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, 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. 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 (TIAB 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. See, In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). The Board explains that although evidence indicates that FV's principal mark is RAVENSWOOD, the Board will focus its likelihood of confusion comparison between BE's BLACK RAVEN BREWING COMPANY mark and FV's RAVENS mark, the mark that is closest to BE's mark.

The Board determines that BLACK RAVEN clearly dominates the BREWING COMPANY portion of BE's mark. The subordinate role of the generic, disclaimed words BREWING COMPANY is confirmed by the evidence showing BE's logo mark wherein these words are in a small font at the bottom of the logo. The Board points out that consumers in general are inclined to focus on the first word or portion in a trademark. Presto Products, Inc. v. Nice-Pak Products, Inc. , 9 USPQ2d 1895, 1897 (TTAB 1988).

The Board states that the dominant portion of BE's mark, BLACK RAVEN, is similar to the entirety of FV's mark RAVENS, and thus the marks look and sound similar. As for meaning, the word "raven" is defined, in pertinent part, as "a large, black, omnivorous and occasionally predatory bird: glossy black." BE's promotional materials and FV's advertising materials show a logo that depicts a black bird. The Board finds that the marks convey substantially similar, if not virtually identical, meanings. Finally, the Board finds that the marks engender similar overall commercial impressions of a raven bird, which, as shown by the dictionary definition, is black in color.

Although FV did not plead or prove a "family" of RAVEN marks, the Board surmises that the fact that FV itself has used variations of marks that include RAVEN(S) increases the likelihood that BLACK RAVEN, even when coupled with the generic designation BREWING COMPANY, would be perceived as another variation. See, Humana Inc. v. Humanomics Inc., 3 USPQ2d 1696, 1700 (TTAB 1987). Finally, the Board explains that the absence of actual confusion is not dispositive in this case. /. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965).

Conclusion

When the Board considers all of the relevant du Pont factors and the evidence and arguments before it, the Board finds that BE's use of the mark BLACK RAVEN BREWING COMPANY for "beer" is likely to cause confusion with FV's mark RAVENS for "wine."

Accordingly, the Board sustains FV's opposition to registration of BE's applied-for mark BLACK RAVEN BREWING COMPANY.

(F-80) Capital Restaurant Concepts, Ltd. (now, Capital Restaurant Holdings, Inc.) v. DeConna Ice Cream Company, Inc., Cane. No. 92029900, unpubl'd. Petition to cancel granted, June 21, 2010. Simor L. Moskowitz and Matthew J. Cuccias of Jacobson Holman, PLLC, for opposer; Craig W. Turner of Craig W. Turner, PA, for applicant. [Bûcher], Cataldo, and Mermelstein, Administrative Trademark Judges (7 pages). Available in slip opinion only.

(F-81) In re PBC Supply, Inc. , S.N. 77515674, unpubl'd. Refusal to register affirmed, June 24, 2010. Gregory C. Smith of Garvey, Smith, Nehrbass & North, L.L.C, for appellant; Tasneem Hussain for TMEO. Quinn, [Grendel], and Kuhlke, Administrative Trademark Judges (14 pages).

PHENTRASLIM PLUS, subject of an intent-to-use application to register by PBC Supply, Inc. (PBC) for "natural herbal dietary supplement," is likely to cause confusion with the previously registered mark PHENTRAMIN for "pharmaceutical, namely, weight control aids, limited solely to dietary supplements formulated for weight control." In addition, Examining Attorney Hussain refused registration of the mark based on PBCs failure to comply with a requirement that PBC disclaim the word PLUS. Registration had been finally refused under Sections 2(d) and 6 of the Trademark Act.

Section 6 of the Act provides that the PTO may require an applicant to disclaim an unregistrable component of its mark. A merely descriptive term is unregistrable on the Principal Register pursuant to Section 2(e)(1) of the Act. A laudatory term is deemed to be merely descriptive under Section 2(e)(1).

The Examining Attorney made of record a definition of "plus" as, inter alia, "favorable, desirable, or advantageous." The Board determines that purchasers would attribute this ordinary dictionary to the term PLUS as applied to PBCs goods i.e., that the term merely touts the superior quality, excellence, or desirability of the goods). The Examining Attorney also made of record copies of eight third-party registrations for marks that include the term PLUS and wherein PLUS has been disclaimed.

Based on the record before it, the Board finds that PLUS is a laudatory term as applied to PBCs goods and that the Examining Attorney's requirement that PBC disclaim the term is proper. Accordingly, the Board affirms the refusal to register PBCs mark PHENTRASUM PLUS absent a disclaimer of PLUS.

The Board first determines that PBCs identified goods encompass and thus are legally identical to the cited goods, that is, the cited goods are dietary supplements for weight control, and PBCs broadly identified "dietary supplements" must be deemed to include the same goods.

The Examining Attorney also made of record six third-party registrations that include the respective goods in their identifications. Third^party 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 Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).

The Board concludes that PBCs goods are similar to and, indeed, legally identical to the cited goods.

Because no limitations or restrictions as to channels of trade or classes of purchasers exist in either identification of goods, the Board presumes that the goods are marketed in all normal channels of trade and to all normal classes of purchasers for such goods. In re Elbaum, 211 USPQ 639 (TTAB 1981). Because of the legal identity of the goods, the Board also presumes that the goods are or will be sold in the same trade channels and to the same classes of purchasers. In re Smith andMehaffey, 31 USPQ2d 1531 (TTAB 1994).

The Board first determines that PHENTRA is an arbitrary and coined term as applied to the goods. The suffix -SLIM is suggestive at most, and the laudatory word PLUS lacks distinctiveness. -SLIM and PLUS therefore contribute much less to the source-indicating significance of PBCs mark than does the unusual and highly distinctive prefix PHENTRA-. The Board continues that PHENTRA dominates the commercial impression of PBCs mark and its function as a source indicator.

Although the Board finds that the marks differ somewhat in appearance, it finds the differences to be outweighed by the visual similarity between the marks resulting from the fact that both marks begin with the coined and oddly spelled prefix PHENTRA-. The Board finds that the marks differ in sound to the extent that registrant's mark has three syllables, whereas PBCs mark includes the word PLUS as a fourth syllable, and to the extent that the -SLIM and -?G? suffixes are not identical. The Board, however, notes that both marks begin with the identical-sounding prefix PHENTRA- and the third syllables in both marks are near-rhymes based on the same vowel sound. The Board thus finds that the points of aural similarity between the marks outweigh the points of dissimilarity.

The Board reasons that whatever meaning purchasers might attach to the term PHENTRA-, it would have the same meaning in both marks as applied to the same goods. On balance, the Board finds the meanings to be similar in terms of connotation. FinaUy, the Board finds that the marks are highly similar in terms of commercial impression: Both marks start with the coined prefix PHENTRA-, followed by a single syllable that sounds very similar in both marks, and PBCs addition of the term PLUS to its mark does not distinguish the marks as source indicators.

Accordingly, the Board affirms the refusal to register PBCs mark PHENTRASLIM PLUS pursuant to Section 2(d) of the Act.

(F-82) In re PBC Supply, Inc. , S.N. 77515674, unpubl'd. Refusal to register affirmed, June 24, 2010. Gregory C. Smith of Garvey, Smith, Nehrbass & North, L.L.C, for appellant; Tasneem Hussain for TMEO. Quinn, [Grendel], and Kuhlke, Administrative Trademark Judges (14 pages).

PHENTRATRIM PLUS, subject of an intent-to-use application to register by PBC Supply, Inc. (PBC) for "natural herbal dietary supplement," is likely to cause confusion with the previously registered mark PHENTRAMIN for "pharmaceutical, namely, weight control aids, limited solely to dietary supplements formulated for weight control. " In addition, Examining Attorney Hussain refused registration of the mark based on PBCs failure to comply with a requirement that PBC disclaim the word PLUS. Registration had been finally refused under Sections 2(d) and 6 of the Trademark Act.

The Examining Attorney made of record a definition "plus" as, inter alia, "favorable, desirable, or advantageous." The Board determines that purchasers would attribute this ordinary dictionary to the term PLUS as applied to PBCs goods (i.e., that the term merely touts the superior quality, excellence, or desirability of the goods). The Examining Attorney also made of record copies of eight third-party registrations for marks that include the term PLUS and wherein PLUS has been disclaimed.

The Examining Attorney also made of record six third-party registrations that include the respective goods in their identifications. Third-party 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 Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).

The Board concludes that PBCs goods are similar to and, indeed, legally identical to the cited goods.

The Board first determines that PHENTRA is an arbitrary and coined term as applied to the goods. The suffix -TRIM is suggestive at most, and the laudatory word PLUS lacks distinctiveness. -TRIM and PLUS therefore contribute much less to the source-indicating significance of PBCs mark than does the unusual and highly distinctive prefix PHENTRA-. The Board continues that PHENTRA dominates the commercial impression of PBCs mark and its function as a source indicator.

Although the Board finds that the marks differ somewhat in appearance, it finds the differences to be outweighed by the visual similarity between the marks resulting from the fact that both marks begin with the coined and oddly spelled prefix PHENTRA-. The Board finds that the marks differ in sound to the extent that registrant's mark has three syllables, whereas PBCs mark includes the word PLUS as a fourth syllable, and to the extent that the -TRIM and -MIN suffixes are not identical. The Board, however, notes that both marks begin with the identical-sounding prefix PHENTRA- and the third syllables in both marks are near-rhymes based on the same vowel sound. The Board thus finds that the points of aural similarity between the marks outweigh the points of dissimilarity.

The Board reasons that whatever meaning purchasers might attach to the term PHENTRA-, it would have the same meaning in both marks as applied to the same goods. On balance, the Board finds the meanings to be similar in terms of connotation. Finally, the Board finds that the marks are highly similar in terms of commercial impression: Both marks start with the coined prefix PHENTRA-, followed by a single syllable that sounds very similar in both marks, and PBCs addition of the term PLUS to its mark does not distinguish the marks as source indicators.

Accordingly, the Board affirms the refusal to register PBCs mark PHENTRATRIM PLUS pursuant to Section 2(d) of the Act. (F-83) In re Longworth Industries, Inc., S.N. 77499697, unpubl'd. Refusal to register affirmed, June 25, 2010. C. Robert Rhodes of Womble Carlyle Sandridge & Rice, PLLC, for appellant; Andrea Koyner Nadelman for TMEO. Hairston, Grendel, and [Cataldo], Administrative Trademark Judges (11 pages).

WELLNESS GEAR ("gear" disclaimed), subject of an intentto-use application to register by Longworth Industries, Inc. (LI) for, as amended, "apparel, namely, shorts, running tights, shirts, in particular sweatshirts, turtlenecks, t-shirts, and tank tops, and pants, in particular sweatpants" in International Class 25, is likely to cause confusion with the previously registered mark WELLNESS for "clothing, particularly hosiery" in International Class 25. Registration had been finally refused under Section 2(d) of the Trademark Act.

The Board grants Examining Attorney Koyner Nadelman's request that it take judicial notice of the definition of hosiery as "stockings, socks, and tights, collectively." See, In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006); In re IP Carrier Consulting Group, 84 USPQ2d 1028, 1030 n.4 (TTAB 2007).

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 the goods 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. In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The Board determines that registrant's broadly identified "hosiery" is presumed to include Li's more narrowly identified "running tights" and would appear to be related on its face to the remainder of Li's goods, inasmuch as both are apparel items that may be worn and used together. The Examining Attorney made of record a number of usebased third -party registrations to demonstrate that various entities have adopted a single mark for the respective goods. Third-party 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 Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).

LI argued that the Board should limit registrant's goods as well as its own based upon limitations not present in the respective identifications. LI contended that the cited goods are infused with supplements to promote relaxation and are offered through mass market retailers and department stores containing goods from many different trademark owners, whereas its mark is associated with clothing with therapeutic, support, and performance features related to the alleviation of joint pain and muscle development. The issue of likelihood of confusion must be determined on the basis of the goods as set forth in the involved application and cited registration. See, Octocom Systems Inc. v. Houston Computer Services Inc. ,918 F. 2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The Board may not limit or restrict the hosiery listed in the cited registration as to specific type or trade channel.

Because no restrictions exist in either identification of goods as to the channels of trade or the classes of consumers, the Board must presume that the respective goods move in all normal channels of trade to all classes of potential consumers, including those of each other's goods.

The Board concludes that purchasers familiar with registrant's mark WELLNESS used in connection with hosiery would be likely to mistakenly believe, upon encountering Li's mark WELLNESS GEAR for related clothing items, that the goods originated with or are somehow associated with or sponsored by the same entity. To the extent that any doubts exist about likelihood of confusion, the Board resolves such doubt in favor of the prior registrant. In re Hyper Shoppes (Ohio), Inc. , 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).

Accordingly, the Board affirms the refusal to register Li's mark WELLNESS GEAR.

(F-84) Valentino U.S.A., Inc. v. Florence Fashions (Jersey) Limited, Opp. Nos. 91094961 and 91095203; Cane. Nos. 92029390 and 92029476, unpubl'd. Oppositions sustained and petitions to cancel granted, June 2515, 2010. G. Franklin Roth well, Anna M. Sterba, and Jenny L. Workman of Roth well, Figg, Ernst & Manbeck P.C. for opposer/ petitioner; Linda K. McLeod and Stephanie H. Bald of Finnegan, Farabow, Garrett & Dünner, L.L.P., for applicant/respondent. Quinn, Holtzman, and [Kuhlke], Administrative Trademark Judges (48 pages).

Florence Fashions (Jersey) Limited (FFL) is the owner of the following applications and registrations: (i) intent-to-use App. No. 74188334 for GIANNI VALENTINO for "bath robes; boots; ski boots; boots for sports; coats; dressing gowns; gloves; hosiery; jackets; jerseys; jumpers; knitted pullovers; knitted cardigans; mittens; leggings, overcoats; pants; pullovers; pajamas; sandals; scarves; mufflers; knitted caps; knitted vests; shawls; shirts; shoes; skirts; slippers; socks; sweaters; swimsuits; trousers; underwear; waistcoats; ties; neckties; bow ties; cravaths [sic]; night gowns; bed jackets; negligees; and headwear" in International Class 25; (ii) intentto-use App. No. 74188331 for GIOVANNI VALENTINO for "attaché cases; bandoliers; briefcases; garment bags for travel; handbags; straps for luggage; thongs; pocket wallets; drawstring pouches; purses; rucksacks; satchels; cosmetic cases sold empty; cases for men's toiletries sold empty; valises; animal hides; trunks for travelling; umbrellas; parasols; walking sticks; whips; harnesses; and saddlery; all made of leather or imitation of leather" in International Class 18 and "shoulder belts; namely, belts which run across the body from front to back and which are attached to belts about the waist" in International Class 25; (iii) Reg. No. 2130804 for GIANNI VALENTINO "attaché cases; bandoliers, briefcases; garment bags for travel; handbags; straps for luggage; thongs; music cases, namely, a type of brief case designed to carry musical scores; pocket wallets; drawstring pouches; purses; rucksacks; satchels; school bags; travelling bags; individual pieces of luggage and luggage sets; cosmetic cases sold empty; cases for men's toiletries sold empty; valises; animal hides; trunks for travelling; umbrellas; parasols; walking sticks; whips; harnesses; and saddlery; all made of leather or imitation of leather" in

International Class 18; and (iv) Reg. No. 2103658 for GIOVANNI VALENTINO for "bath robes; boots; boots for sports; coats; overcoats; dressing gowns; bed jackets; gloves; hosiery; jackets; knitted pullovers; pullovers, jerseys, sweaters, jumpers, knitted cardigans; leggings, mittens; trousers; pants; pajamas; shoes; sandals; scarves; mufflers; shawls; knitted caps; knitted vests; shirts; skirts; slippers; socks; swimsuits; underwear; waistcoats; ties; neckties; cravats; bowties, night gowns, negligees; and headwear" in International Class 25. The applications and registrations all include the statement that "GIANNI VALENTINO" or "GIOVANNI VALENTINO" is a "living individual whose consent is of record."

Valentino U.S.A., Inc. (VUSA) brought the proceedings before the Board on the ground that FFL's applied-for and registered marks so resemble VUSA's previously used marks VALENTINO and VALENTINO GARAVINO for a variety of clothing and accessory items, including coats, dresses, sweaters, hosiery, gloves, handbags, belts, and footwear, as to be likely to cause confusion pursuant to Section 2(d) of the Trademark Act. VUSA alleged that it is authorized as the exclusive licensee in the United States to use the registered marks discussed in connection with the listed goods therein; the Board notes that the registered marks are, for the most part, similar to the alleged common law marks VALENTINO and VALENTINO GARAVANI, except in three instances wherein the letter V or a V logo is part of the mark. FFL denied the salient allegations and, in each case, asserted the affirmative defense that VUSA is "estopped from opposing [or cancelling defendant's applications and registrations] herein as the result of a 1979 Agreement limiting [plaintiffs] rights to the pleaded marks, and allowing use of the term 'valentino' in marks for, inter alia, clothing and leather goods." FFL, however, did not present argument on this estoppels defense, and the Board considers it waived. In addition, FFL averred that any similarity between the marks would be the result of the respective uses of VALENTINO, registered by numerous third parties in clothing, clothing-related, and other fields.

Objections, Background, Standing, and Priority

The Board addresses certain objections.

VUSA is a fashion company engaged in the sale of a variety of clothing, handbags, footwear, and accessory items, and it is the wholly owned subsidiary of Valentino S.p.A., which, in turn, is the wholly owned subsidiary of Valentino Fashion Group S.p.A. Valentino S.p.A. is the owner of several U.S. registrations for a variety of clothing, leather goods, and accessory items, and VUSA is the exclusive user and licensee of the VALENTINO marks in the United States. The VALENTINO marks are derived from the name of fashion designer Valentino Garavani.

FFL is a fashion company engaged in the sale of clothing, leather goods, and accessory items, which products are designed by Giovanni Valentino, and FFL's marks VALENTINO and GIANNI VALENTINO are the name of the designer, Gianni being the diminutive of Giovanni. Giovanni Valentino comes from a family with a history in the fashion industry, beginning with his grandfather Vincenzo Valentino. Mario Valentino, Giovanni's father, carried on the grandfather's business using the marks VALENTINO and MARIO VALENTINO in connection with leather goods and clothing in the United States.

VUSA has shown that it uses the marks VALENTINO and VALENTINO GARAVANO in connection with various clothing items, handbags, footwear, and accessories, and it has demonstrated a real interest in preventing and canceling registration of FFL's marks; thus, standing is not at issue in this case.

The Board will confine its analysis to the asserted common law marks VALENTINO and VALENTINO GARAVANI, and it begins with the question of priority. Because VUSA is not the owner of the pleaded registrations, it must establish that it acquired trademark rights in the VALENTINO marks; that they are distinctive, either inherently or through acquired distinctiveness; and that its use of the marks predates FFL's first actual or constructive use date of July 25, 1991. In an earlier proceeding, FFL attempted to establish an earlier date of first use as 1977; the Board denied FFL's motion to amend its answer to assert an earlier date of first use. The evidence presented by FLL to establish 1977 as the first use date, some 14 years prior to the filing date of its intent-to-use applications and the date of first use alleged in its registrations, does not convince the Board; therefore, VUSA must establish use prior to FFL's constructive use date of July 25, 1991.

The Board explains that this circumstance is one that VUSA may have thought was an obvious type of situation in which to assert common law rights inasmuch as the mark is a given name and not a surname and, as such, VUSA was not on notice that such a defense would be attempted at trial; moreover, the Board did not disabuse VUSA of this assumption. In any event, the Board first finds that VALENTINO GARAVANI is obviously not primarily merely a surname and, as a personal name, it is considered to be inherently distinctive in Board proceedings. Brooks v. Creative Arts By Calloway LLC, 93 USPQ2d 1823 (TTAB 2009). The Board further finds that the record does not establish that VALENTINO is primarily merely a surname because VUSA's marks are derived from a designer's first name. Finally, the Board finds that even if VALENTINO is primarily a surname, the record discussed in this case establishes that VALENTINO has acquired distinctiveness in connection with clothing, handbags, footwear, and accessory items prior to FFL's 1991 constructive first-use date.

The testimony of a single witness may be sufficient to prove priority but should not be characterized by contradictions, inconsistencies, and indefiniteness; rather, it should carry conviction of its accuracy and applicability. Where the oral testimony of a single witness, testifying long after the events happened, is relied upon to prove priority, such testimony, although considered, should be most carefully scrutinized. If it does not carry conviction of its accuracy and applicability, it should not be permitted to thus successfully attack the presumed validity of a registered trademark.

The Board determines that VUSA's testimony is not characterized by "contradictions and inconsistencies"; rather, the testimony clearly establishes that VALENTINO and VALENTINO GARAVANI were used in connection with the sale of various clothing items, handbags, footwear, and accessory items and that VUSA's predecessor, Valentino Couture Inc. , was the entity that used the marks in connection with the sale of such goods. The Board notes that even FFL's witness testified that VUSA and its predecessor have sold products in the United States and that VUSA's predecessor and a third party, Mario Valentino, have sold and advertised products in the same channels of trade.

Notwithstanding the limitations of VUSA's evidence, the inescapable conclusion from the testimony, the magazine advertisements over three decades, and the books dedicated to a designer and his fashion, the Board concludes that VUSA's processor began selling clothing under the VALENTINO mark sometime in the 1960s and later extended its line to bags, footwear, and accessory items. The Board cannot reasonably conclude that a company continued to advertise in nationally distributed magazines for decades and entered into a consent to use agreement despite making no sales. Keeping in mind both FFL's objections based on hearsay and lack of personal knowledge and the Board's task to view the record as a whole, the Board finds that the record establishes that VUSA's predecessor-in-interest sold (i) under the mark VALENTINO, coats, dresses, gloves, and stockings at least as early as 1970 and knitwear at least as early as 1983 and (ii) under the mark VALENTINO GARAVANI, handbags, shoes, and belts at least as early as 1989. In view thereof, the Board concludes that VUSA has established priority of use as to the marks VALENTINO and VALENTINO GARAVANI.

Likelihood of Confusion

Fame, if it exists, plays a dominant role in the process of balancing the du Pont factors. Bos e Corp. v. QSC Audio Products, Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002); Recotlnc. v. M.C. Becton, 214 F.3d 1322, 1327, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000). The fame of a mark may be measured indirectly, among other things, by the volume of sales and advertising expenditures of the goods traveling under the mark and by the length of time those indicia of commercial awareness have been evident. Bose Corp. v. QSC Audio Products, Inc. , 293 F. 3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002).

VUSA submitted several printed publications showing use of the VALENTINO marks in magazine advertising, mentioned in the press and books about the designer and namesake Valentino Garavani, together with testimony about various awards bestowed to Mr. Garavani. The Board observes that although 16 years have passed since the filing of the first of the consolidated proceedings and 19 years have passed since the filing date of the applications, VUSA limited its evidence to the time period predating 1991. Relying on McCormick & Co. v. Summers, 354 USPQ 668 (CCPA 1966), VUSA provided no evidence of sales or advertising expenditures after 2002, explaining that it did not provide evidence of the fame of its marks after 1991 because it believed its burden was to show that its marks were strong as of FFL's priority date. The Board responds that McCormick concerned the timing for an applicant to establish acquired distinctiveness. The Board generally looks to the volume of sales and the advertising expenditures over time and within the context of market share and manner of consumer exposure to make a determination regarding fame of the mark. Although VUSA did not provide any sales figures and the testimony and documentary evidence of its advertising plan for one year has litde probative value and is woefully inadequate to find fame, the Board finds that VUSA's marks appear to have some strength in connection with clothing, bags, footwear, and accessories, based on decades of, at least, magazine advertisements and frequent references in the press. Moreover, Valentino Garavani, VUSA's namesake, has received substantial recognition over the years as demonstrated by the numerous awards bestowed upon him by organizations in the fashion industry and by being the subject of numerous books about his career in and impact on the fashion industry.

The Board concludes that VUSA has not met its burden to show that it owns a famous mark.

The issue of likelihood of confusion must be determined on the basis of the goods as set forth in the involved applications and the cited registrations. See, Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). For purposes of the Board's analysis, the Board determines that FFL's Class 25 goods in its application and its registration are identical, at least in part. Moreover, the record reveals that VUSA uses its mark VALENTINO GARAVANI in connection with shoes, handbags, and belts and that FFL's application and registration include "handbags" and "purses" in the identification of goods; therefore, for purposes of the Board's analysis, FFL's Class 18 goods are identical, at least in part. The Board further finds that FFL's applied-for "shoulder belts" are complementary to and, as such, commercial related to (at a minimum) VUSA's belts.

In view of the lack of any limitations in the parties' identifications of goods, the Board presumes that FFL's trade channels include all types of stores, from high-end fashion boutiques and department stores to discount retailers, and that FFL's customers range from the more discriminating purchaser to the general consumer. As for VUSA, the record reveals that VUSA sells in the high end of the market and specializes in luxury goods; its customers are described as "very high end consumer, sophisticated, with pretty high disposable income [and] aspiration customers, still very sophisticated; they want to buy luxury goods but have less disposable income. " The Board determines that the overlap in trade channels and possible customers is limited to the higher end of the market.

The Board observes that FFL's marks GIOVANNI and GIANNI VALENTINO incorporate VUSA's VALENTINO mark in its entirety; however, the Board reasons that even in this market, consumers may not be familiar with Valentino Garavani's full name. Moreover, consumers in the lower end of the clothing market have nonetheless been exposed to VUSA's mark VALENTINO through magazine advertisements, in the press, and in outiet malls. With regard to FFL's marks, the Board cannot determine that one element dominates over another but rather finds that the full name will be taken as a whole.

The Board reasons that when presented with identical goods under the respective marks VALENTINO and G IOVANNI VALENTINO or GIANNI VALENTINO, consumers are likely to perceive these two marks as the same name with one being the shortened form of the other. The Board concludes that the points of similarities in sound, appearance, and connotation outweigh the dissimilarities and that the marks VALENTINO and GIOVANNI VALENTINO and GIANNI VALENTINO have the same overall commercial impressions. The Board further reasons that consumers are likely to focus on the VALENTINO portion of the marks and, again, not remember that it is GARAVANI, not GIOVANNI or GIANNI, when confronted with FFL's marks. The Board concludes that the marks VALENTINO GARVANI and GIOVANNI VALENTINO and GIANNO VALENTINO are similar as to sound, appearance, connotation, and commercial impression.

FFL argued that VUSA's names and marks have been weakened by the widespread use, promotion, and sales of the same or similar goods under third-party VALENTINOformative marks in the marketplace for same or similar goods. The Board reviews FFL's evidence attesting to this argument and determines that such evidence is not sufficient to distinguish between and among designers using the mark VALENTINO based on other differences or that the PTO 's decision to register so many VALENTINO-formative marks for identical or closely related leather goods and clothing likewise shows that the addition of other terms to the common VALENTINO element more than suffices to distinguish the marks and avoid a likelihood of confusion.

The Board is unable to conclude that consumers have become conditioned to recognize that several other entities use the mark VALENTINO for accessories or clothing items such that they are conditioned to look for other elements to distinguish the marks. Carl Karcher Enterprises Inc. v. Stars Restaurant Corp., 35 USPQ2d 1125, 1130-31 (TTAB 1995). Similarly, in this case, some of the third-party marks are not as similar, and there is insufficient evidence regarding the extent of third-party use. Finally, the Board observes that the references in the press to other VALENTINO'S are primarily to Mario Valentino, particularly when mention is made of both VUSA and Mario Valentino.

Although FFL argued that the relevant customers in this case are sophisticated purchasers of expensive luxury items, the Board finds no evidence of record to support a finding that the more disposable income an individual consumer has, the more discerning that person is in their purchasing decision. See, Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 954 E2d 713, 21 USPQ2d 1388, 1392 (Fed. Cir. 1992). FFL further argued that despite decades of concurrent use by the parties, there is no evidence of actual confusion. The Board responds that the record does not show that the sales have been extensive or in overlapping trade channels such that there has been a meaningful opportunity for confusion to occur.

Finally, VUSA asserted that FFL adopted its marks in bad faith; however, nothing in the record even infers bad faith. In fact, FFL's marks are simply the name of the designer behind the brand.

Conclusion

In balancing the relevant du Pont factors, the Board concludes that because FFL's marks GIOVANNI VALENTINO and GIANNI VALENTINO are similar to VUSA's marks VALENTINO and VALENTO GARAVANI, because the goods are identical in part and otherwise closely related, and because an overlap exists in the channels of trade and the classes of purchasers, confusion is likely. The Board resolves any doubt in favor of the prior user. See, Hewlett-Packard Co., v. Packard Press, Inc., 281 USPQ2d 1001, 1003 (Fed. Cir. 2002).

Accordingly, the Board sustains VUSA's oppositions to FFL's applied-for marks GIANNI VALENTINO and GIOVANNI VALENTINO, and it grants VUSA's petitions to cancel FFL's registered marks GIANNI VALENTINO and GIOVANNI VALENTINO.

(F-85) Krueger International, Inc. v. Okamura Corporation, Opp. No. 91174281, unpubl'd. Opposition sustained, June 25, 2010. Charles S. Blumenfield of Blumenfield & Shereff , LLP, for opposer; George W. Lewis of Jacobson Holman PLLC for appUcant. Walters, [Holtzman], and Wellington, Administrative Trademark Judges (12 pages).

Okamura Corporation (Okamura) filed an intent-to-use application to register BARON for "furniture, namely, office furniture, school furniture, furniture for house, chairs, armchairs, desks, tables, lockers, index cabinets, filing cabinets, shelves for filing-cabinets, racks, display racks, screens, shelves for storage, stools, sofas, seats, benches, sideboards, chests of drawers, showcases, sales and display counters, furniture partitions, furniture of metal" in International Class 20. Krueger International, Inc. (Krueger) opposed registration on the ground of likelihood of confusion with its previously registered marks BARRON for "tables and other office furniture" and BARRON (Supplemental Register) for "tables." Okamura denied the salient allegations.

Krueger's Supplemental Register registration of BARRON is sufficient to establish a direct commercial interest in its mark and its standing. See, Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000).

A Supplemental Register registration is not afforded any statutory presumptions under Section 7(b) and therefore is incompetent to establish priority. See, In re Federated Department Stores Inc. , 3 USPQ2d 1541, 1543 (TTAB 1987). Under Otto Roth & Co. v. Universal Foods Corp., 640 F. 2d 1317, 209 USPQ 40, 43 (CCPA 1981), a plaintiff relying on an unregistered mark cannot prevail on a likelihood of confusion claim unless the term is shown to be distinctive. The Board notes that the mark is registered, albeit on the Supplemental Register. The Court in Towers v. Advent Software Inc., 913 F.2d 942, 16 USPQ2d 1039, 1042 (Fed. Cir. 1990), cited as an exception to Otto Roth the situation in which a plaintiff owns a Supplemental Register registration. Likelihood of confusion can be found even if a term is merely descriptive and does not identify source: Registration on the Supplemental Register is sufficient, and a showing of trade identity rights in the form of secondary meaning is unnecessary. In re Research & Trading Corp., 793 F. 2d 1276, 230 USPQ 49 (Fed. Cir. 1986). In view of Krueger's Supplemental Register registration, the Board finds that Krueger is not required to prove that BARRON was distinctive prior to Okamura's use of BARON.

Regarding priority, Krueger's senior product manager testified, with sales figures, that Krueger began producing and selling BARRON tables in 1989. The Board observes that the earliest date on which Okamura can rely is its 2005 filing date.

Krueger is a contract manufacturer of furniture for institutional customers. Krueger's lines of furniture comprise desks, chairs, tables, storage units, wall systems, and BARRON contract tables. The Board finds that Okamura's office furniture, school furniture, and tables encompass Krueger's contract tables or tables for institutional use. The Board adds that Krueger's tables are closely related to Okamura's chairs, desks, wall units, and other items of furniture. Krueger's product manager for contract and powered tables testified that companies market collections of different furniture pieces under the same mark. Because the goods are in part identical and otherwise closely related and because there are no restrictions in the application, the Board must presume the channels of trade and the purchasers overlap.

In determining the strength of a mark, the Board may consider inherent strength and market strength. See, Tea Board of India v. Republic of Tea Inc. , 80 USPQ2d 1881, 1899 (TTAB 2006). The Board states that Krueger's registration of BARRON on the Supplemental Register is an admission that the term was not distinctive at the time of registration. See, Quaker State Oil Refining Corporation v. Quaker Oil Corporation, 453 F.2d 1296, 172 USPQ 361, 363 (CCPA 1972) . Nevertheless, the Board states that the mark has acquired distinctiveness: Kruger has used BARRON with its contract tables for 20 years. The mark is prominently displayed on stickers applied to the tables, on the BARRON segment of Krueger's website, and on promotional materials. More than 100 varieties of BARRON tables are available. BARRON tables are sold throughout the United States. Krueger submitted evidence of its sales, promotional expenditures, and market share for 1989 through 2008 showing that BARRON tables are successful and that the market share is significant. The Board finds that BARRON has achieved some degree of strength and recognition in the marketplace and that the mark functions as a significant indicator of source. The Board finds that BARRON is entitled to a broad scope of protection.

The Board finds that BARON and BARRON create the same commercial impression and are identical in sound. Similarity in sound alone has been held sufficient to support a finding of likelihood of confusion. See, Krim-Ko Corp. v. CocaCola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968). The Board adds that the marks are virtually identical in appearance.

Although purchasers for the parties' tables are sophisticated, even careful purchasers can be confused when virtually identical marks are used in connection with identical and closely related goods. See, Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1841-42 (Fed. Cir. 1990).

Accordingly, the Board sustains Krueger's opposition to Okamura's mark BARON.

(F-86) In re Guesthouse International, L.L.C. , S.N. 77622341, unpubl'd. Refusal to register affirmed, June 28, 2010. Andrea C Barach of Bradley Arant Boult Cummings, LLP, for appellant; Hannah M. Fisher for TMEO. Walters, [Bergsman], and Wellington, Administrative Trademark Judges (16 pages).

BOOMERANG HOTELS & des. ("hotels" disclaimed; Fig. 1), subject of an application to register by Guesthouse International, L.L.C. (GI) for "hotel, motel and temporary lodging services; temporary lodging reservation services for others" in International Class 43, is likely to cause confusion with the previously registered mark BOOMERANG GRILLE & des. ("grille" disclaimed; Fig. 2) for "restaurant services" in International Class 42. Registration had been finally refused under Section 2(d) of the Trademark Act.

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. The focus is on the recoUection 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 determines that BOOMERANG HOTELS & des. is similar to BOOMERANG GRILLE & des. in that both marks share the term BOOMERANG. 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. See, In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). If a mark comprises both a word and a design, the word is normally accorded more weight because it would be used by purchasers to request the services. See, In re Appetito Provisions Co. , 3 USPQ2d 1553, 1554 (TTAB 1987). The Board determines that BOOMERANG is the dominant element of both marks and that the disclaimed terms HOTELS and GRILLE, respectively, are descriptive when used in connection with the respective services.

GI argued that the marks convey different commercial impressions, asserting that its mark suggests "the notion of 'welcoming back guests and keeping them coming back,'" whereas the cited mark conveys a "general Australia outdoor theme. " The Board responds that GI did not make of record the specimens supporting the cited registration; moreover, in comparing the two marks, the Board finds nothing to differentiate their commercial impressions. In fact, notes the Board, because of the visual and aural similarity of the marks, they engender the same commercial impression and, to the extent that a boomerang might suggest repeat business, this would be equally applicable to hotel and restaurant customers.

GI asserted that the distinctiveness of BOOMERANG alone has been diluted by common public use. The evidence of record that the Board reviews consists of a hit list from a Google search, submitted by GI, displaying restaurants with the word BOOMERANG as part of the name. The Board advises that, generally, a list of Internet search results has little probative value because the list does not show the context in which the term is used on the listed Web pages. See, In re Bayer Aktiengesellschaft, 488 E3d 960, 967, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007); In re Tea and Sympathy, Inc., 88 USPQ2d 1062, 1064 n.3 (TTAB 2008). The Board determines that in this case, the hit list submitted by GI has sufficient context to show that BOOMERANG is used as part of restaurant names, and thus the Board does not outright disregard the evidence and considers it for whatever probative value it may have. In re Fitch IBCA Inc., 64 USPQ2d 1058, 1060 (TTAB 2002). Nonetheless, with respect to the market strength of registrant's mark, the probative value of the references in the Google search hit list is minimal. As to the inherent strength of registrant's mark, nothing shows that BOOMERANG has any descriptive significance when used in connection with restaurant services; rather, at most, BOOMERANG may suggest that the restaurant has an Australian theme. The Board finds that BOOMERANG is inherently distinctive when used in connection with restaurant services. Finally, the Board finds no basis upon which to conclude that consumers encounter the mark BOOMERANG so often that they have learned to distinguish between the different marks.

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. In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). Examining Attorney Fisher submitted numerous use-based third-party registrations for restaurant services and hotel services. Third-party 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 services are of a type that may emanate from a single source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). The Examining Attorney also submitted excerpts from hotel websites advertising both hotel and restaurant services.

Although GI argued that consumers do not expect restaurants to be associated with hotels, the Board is not persuaded and opines that GI is suggesting that there should be a. per se rule that hotel services are not related to restaurant services. GI provided no evidence to support its contention that consumers do not expect "stand alone" restaurants to be associated with hotels.

Because no limitations or restrictions as to channels of trade or classes of purchasers exist in either identification of services, the Board presumes that the services are marketed in all normal channels of trade and to all normal classes of purchasers for such services. In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992). Moreover, because the descriptions of services do not contain any limitations pertaining to conditions of sale, the Board presumes that the respective descriptions of services include all types of restaurant, hotel, motel, and temporary lodging services, including upscale establishments and budget operations that may serve consumers who may not exercise a high degree of care. See, In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986).

Accordingly, the Board affirms the refusal to register GI's mark BOOMERANG HOTELS & des.

(F-87) Apple, Inc. v. Echospin, LLC, Opp. No. 91171592, unpubl'd. Opposition sustained, June 29, 2010. Joseph Petersen and Robert N. Potter of Kilpatrick Stockton LLP for opposer; Jon Lowy, pro se, for Echospin, LLC, Bücher, Walsh, and [Ritchie], Administrative Trademark Judges (25 pages).

AI properly made of record its pleaded registrations for APPLE and its apple design mark, establishing AI's standing. See, Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000). In view of AI's ownership of valid and subsisting registrations, the Board states that there is no issue regarding AI's priority. King Candy, Inc. v. Eunice King's Kitchen, Inc., 496 F. 2d 1400, 182 USPQ 108 (CCPA 1974).

In determining whether confusion is likely, the Board considers all relevant du Pont factors. The Board states that AI must establish a likelihood of confusion by a preponderance of the evidence. The key consideration is the cumulative effect of differences in the essential characteristics of the goods or services and differences in the marks. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). The Board focuses on AI's Reg. No. 2715578 because it covers the most relevant mark and the most relevant goods and services.

The Board considers whether AI's mark is famous. Fame, if it exists, plays a dominant role in the process of balancing the du Pont factors. Kenner Parker Toys Inc. v. Rose Arts Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992). Famous marks are accorded more protection because they are more likely to be remembered and associated in the public mind than a weaker mark. Kenner Parker at 1453. A famous mark is one with extensive public recognition and renown. See, Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 E3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005). One asserting that its mark is famous must clearly prove fame. Kenner Parker at 1453.

AI explained that it designs, manufactures, and markets personal computers, portable digital music players, and mobile communication devices and sells related software, services, and peripherals and networking solutions. AI sells its products worldwide through its online stores, retail stores, direct sales force, and third-party wholesalers, resellers, and value-added resellers. The Board may consider AI's sales and related revenue. Bose Corp. v. QSC Audio Products Inc., 293 F. 3d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir. 2002). AI's net sales for 2008 totaled $39 billion, net income was nearly $5 billion, net sales for the United States totaled more than $18 billion, advertising expenses were $486 million, and research and development expenditures totaled $1.1 billion. AI submitted dozens of news articles discussing the reputation and fame of its brand.

AI submitted evidence of high consumer recognition based on magazine survey evidence. Business Week magazine ranks AI among the 100 Top Brands. AI's director of legal testified that the APPLE logo is featured on every AI product and is heavily promoted. The Board concludes that APPLE and the apple design are famous marks.

The Board observes that Echospin identified "software for the collection, storage, processing, modification, organization, transmission, and sharing of data and information, including digital media" and "computer service, namely, acting as an application service provider in the field of information processing to host computer application software for the collection, storage, processing, modification, organization, transmission, and sharing of data and information, including digital media." Registrant's goods and services include "computer programs for personal information management" ; "database management software" ; "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 software for use as a programming interface"; "computer software for use in network server sharing" ; "local and wide area networking software"; and "computer software for computer software for use to navigate and search a global computer information network, as well as to organize and summarize the information retrieved. " The Board finds the goods and services legally identical.

Because there are no limitations as to trade channels or classes of purchasers, the Board presumes that the goods and services are marketed in all normal trade channels to all normal classes of purchasers. Packard Press Inc. v. Hewlett-Packard Co., 227 F. 3d 1352, 56 USPQ2d 1351 (Fed. Cir. 2000).

Because the parties' goods and services are legally identical, the Board presumes that they will be sold in the same trade channels to the same classes of purchasers. Brown Shoe Co. v. Robbins, 90 USPQ2d 1752 (TTAB 2009).

When marks would appear on virtually identical and otherwise closely related goods and services, the degree of similarity necessary to support a finding of likely confusion declines. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992). To determine whether the marks are confusingly similar, the Board considers their appearance, sound, connotation, and commercial impression. Palm Bay at 1689, 1692.

Echospin admitted that its mark is meant to depict an orange, not an apple. Echospin clarifies that it picked the orange logo to make the distinction that Echospin is the noAPPLE, the opposite of APPLE, an alternative to APPLE, and an improvement over APPLE. The Board takes this as an admission that Echospin's mark is shaped like a fruit. The Board observes that witness testimony oenfirms the admissions. 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 Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977). The focus is on the recollection of the average purchaser, who normally retains a general rather than specific impression of trademarks. Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980). The Board observes that both marks are simple, abstract representations of whole pieces of fruit. The Board adds that the fruit composes the entirety of both marks. AI's mark contains a bite in the upperright section of the fruit, continues the Board; Echospin's mark contains a series of small, white circles in the same area, creating a similar commercial impression of a missing piece. AI's apple has a short, detached leaf at the top, pointed to the right, observes the Board; Echospin's orange has two short, detached leaves at the top, one of which is similar in size and direction to that in AI's mark. The Board deems that although the marks appear different, they have similar connotations and commercial impressions.

Accordingly, the Board sustains AI's opposition to Echospin's mark.

(F-88) Telefonos de Mexico, S. A.B. de CV. v. Andres Guiterrez Estrada, Opp. Nos. 91183487 and 91183509, unpubl'd. Oppositions sustained, June 30, 2010. Julie B. Seylor of Abelman Frayne & Schwab for opposer; Andres Guiterrez Estrada, pro se. Hairston, [Walsh], and Ritchie, Administrative Trademark Judges (24 pages).

Andres Guiterrez Estrada filed intent-to-use applications to register the marks AUDITORIO TELMEX (the translation of "auditorio" is "auditorium"; "auditorio" disclaimed) for, respectively, "arena services, namely, providing facilities for sports, concerts, conventions and exhibitions" in International Class 43 and "entertainment in the nature of ballet performances, of visual and audio performances, namely, musical band, rock group, gymnastic, dance, and ballet performances, of live performance by a musical band(s), and of rock groups; live performances featuring prerecorded vocal and instrumental performances viewed on a big screen; performance hall rental services; planning arrangement of showing movies, shows, plays or musical performances; presentation of Uve show performances and of musical performances; booking of seats for shows and booking of theatre tickets; rental of portable theatre seating; entertainment in the nature of visual and audio performances, and musical, variety, news and comedy shows; providing facilities for movies, shows, plays, music or educational training; entertainment in the nature of dance performances" in International Class 41. Telefonos de Mexico, S. A.B. de CV. (TDM) opposed registration of the marks, alleging likelihood of confusion pursuant to Section 2(d) of the Trademark Act with its common law use of the mark TELMEX in the United States in connection with certain telecommunications and other services. Estrada denied the salient allegations.

Standing, Priority, and Background

Standing is not at issue in this proceeding.

TDM pleaded and established use of its TELMEX mark in the United States in connection with "telephone calling card services" prior to the September 2, 2007, filing date of the opposed applications; thus, TDM has established its priority as to both classes of services and both proceedings.

TDM is a major telecommunications company based in Mexico and has used its mark TELMEX in connection with its telecommunications services since 1947. It has used and is using the mark throughout all of Mexico on billboards, in the streets, on pay phones, on repair vans, in printed media, and on the Internet. Moreover, TDM provides telecommunications services in several countries in Central and South America. TDM began selling telephone calling cards under its TELMEX mark in the United States in 2000, and it currently sells approximately six million cards per year in various denominations and throughout various retail outlets. TDM sponsors a large arena under the AUDITORIO TELMEX mark in Guadalajara, Mexico, where events such as the Latin American MTV Music Awards have been broadcast and where major artists such as The Doors, Placido Domingo, Bob Dylan, Rod Stewart, and Ricky Martin have performed.

Estrada has resided in Mexico since 1980; however, despite TDM's ubiquitous use of the TELMEX mark throughout Mexico for the 30 years Estrada has resided in Mexico and despite of the fact that Estrada lives within 10 miles of the AUDITORIO TELMEX arena - one of the top arenas of the world - he essentially denied any prior knowledge of TDM's use of TELMEX. The Board concludes that Estrada has been evasive and disingenuous in the prosecution of his applications and in these proceedings before the Board. As an example, in TDM's second set of interrogatories, in response to TDM's question of whether Estrada has ever used phone service in Mexico, including home phone, public phone, or cell phone, and the beginning and ending dates of such use, Estrada responded, "Cell phone only, since June 14, 2005. " Moreover, Estrada stated that he had never used a phone booth, pay phone, or other public phone.

Likelihood of Confusion

Because Estrada disclaimed AUDITORIO, which is at least highly descriptive of his services, TDM's TELMEX mark is identical to the dominant and only distinctive element in Estrada's mark, the coined term TELMEX. The Board finds that the respective marks are similar in appearance and sound; the presence of AUDITORIO does little, if anything, to diminish the similarities. More important, the common element, TELMEX, is dominant in projecting both the connotation and the commercial impression of both marks: TELMEX is a coined term that is inherently distinctive, and to the extent that it projects either a connotation or a commercial impression, they are identical in the respective marks.

The fame or renown of TDM's TELMEX marks in Mexico is relevant to the issue of bad faith in the Board's likelihood of confusion analysis; thus, the Board discusses the fame or renown of the marks. If TDM were able to show that its TELMEX mark is famous in the United States, fame might play a dominant role in the Board's analysis because famous marks enjoy a broad scope of protection. Bose Corp. v. QSC Audio Products, Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002); Recotlnc. v. M.C. Becton, 214 F.3d 1322, 1327, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000). Although the Board has information regarding the sales of TDM's calling cards in the United States, it has no information regarding its U.S. competitors in the calling card business in the United States to place the evidence into context. The Board notes that even without that information, the numbers alone suggest that TDM does not have significant market share; moreover, TDM's other evidence, consisting of five articles that appeared in U.S. publications and that mention the AUDITORIO TELMEX arena, are insufficient in quality and quantity to establish the fame of either TELMEX or AUDITORIO TELMEX in the United States. The Board hastens to add that the record does establish that TELMEX is a strong, inherently distinctive mark in the United States.

TDM submitted 19 third-party registrations that cover all of the respective services to show that the services are related; however, the Board notes that none of the registrations is based on use in commerce and that all issued under Section 66 of the Trademark Act as extensions of protection to the United States based on an international registration. Thus, the registrations lack probative value: The Board will not consider them. In re 1st USA Realty Professionals Inc., 84 USPQ2d 1581, 1583 (TTAB 2007). Nonetheless, TDM provided evidence that its telephone calling cards display promotions for events and activities that TDM sponsors, including sporting and other entertainment events. The Board reasons that these promotions create an association between the telecommunications services and the entertainment services.

TDM also provided evidence that it offers a wide range of telecommunications services in the United States, including voice, data, video, and Internet services, all under the TELMAX mark and in addition to its telephone calling card services. The Board reasons that this evidence shows an association of the TELMAX mark with a broad range of telecommunications services, including Internet services.

Finally, TDM provided evidence that events such as the 2008 Latin American MTV Music Awards have been televised from its AUDITORIO TELMEX arena into the United States over the Internet. The Board reasons that this evidence points to an association between arena services and entertainment services, on the one hand, and the telecommunications services associated with the TELMEX mark, on the other hand.

The Board concludes that the evidence before it is sufficient to show that TDM's arena and entertainment services are related to its telephone calling card services. In the absence of further evidence, the Board declines to go any further than to conclude that the respective services are sufficiently related.

Bad Faith

The Board considers bad faith in its likelihood of confusion analysis under the 13th du Pont factor. L. C. Licensing Inc. v. Berman, 86 USPQ2d 1883, 1890 (TTAB 2008). The Board explains that in this case, although it would find a likelihood of confusion even without consideration of bad faith, it finds a significant degree of bad faith in Estrada's adoption of the AUDITORIO TELMEX mark.

As the Board previously noted, TDM has used the TELMEX mark for more than 60 years in Mexico in connection with its telecommunications services and such use has been pervasive throughout Mexico. The TELMEX mark is inherently distinctive and apparently unique. Estrada has resided in Mexico for nearly 30 years, leading to the inescapable conclusion that Estrada filed his applications with the full knowledge of TDM's TELMEX and AUDITORIO TELMEX marks. The Board does not find Estrada's claims to the contrary credible in the least. The Board continues that evasive and disingenuous responses to TDM's discovery requests, as previously discussed, provide evidence of Estrada's continuing bad faith subsequent to his adoption of the mark; his responses show not only bad faith but a general lack of respect for the application and opposition proceeding.

The Board does not hesitate to conclude that Estrada acted in bad faith in the adoption of his AUDITORIO TELMAX mark and through the prosecution of his applications and the proceedings before the Board. Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992).

Conclusion

Accordingly, the Board sustains TDM's oppositions to registration of Estrada's marks AUDITORIO TELMEX when used in connection with his arena services that Estrada identified in his Class 43 application and the entertainment services that he identified in his Class 41 application. In concluding so, the Board notes particularly that the marks are highly similar, that TDM's mark is inherently distinctive, that the services of the parties are related, and that Estrada has acted in bad faith.

Descriptive Cases:

(F-89) In re Enzo Biochem, Inc., S.N. 77562153, unpubl'd. Refusal to register affirmed, June 15, 2010. Laura E. Smith for appellant; Timothy J. Finnegan for TMEO. Hairston, [Grendel], and Taylor, Administrative Trademark Judges (11 pages).

GFP CERTIFIED, subject of an intent-to-use application to register by Enzo Biochem, Inc. (Enzo) for "assays and reagents for genomic, cellular and diagnostic applications for clinical or medical laboratory use" in International Class 1, 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 deemed to be merely descriptive of goods if it forthwith conveys an immediate idea about an ingredient, quality, characteristic, feature, function, purpose, or use of the goods. See, In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).

The evidence includes several dictionary, acronym dictionary, and encyclopedia entries submitted by Enzo and Examining Attorney Finnegan as well as an instruction manual and a product data sheet for the goods. The Board states that Enzo's kit includes two reagents for the detection of Annexin V in the two different kinds of cells i.e. , nonfluorescent cells and fluorescent cells, including GFP [green fluorescent protein] cells). The Apoptosis Detection Reagent detects Annexin V in nonfluorescent cells, and the Necrosis Detection Reagent (Red), detects Annexin V in fluorescent cells i.e. , cells with a mitochondria-associated GFP signal).

The Board finds that GFP directly informs the knowledgeable users of Enzo's goods of the type of cell, a "GFP-expressing" cell, with which one of the reagents in Enzo's kit is specifically designed to work.

Contrary to Enzo's argument, the Board states that it is not dispositive that the kit also detects Annexin V in types of cells (fluorescent and nonfluorescent) other than and in addition to cells expressing GFP A term need not immediately convey an idea of each specific feature of the applicant's goods to be considered merely descriptive; it need describe only one significant property. See, In re H. U.DD.L.E. , 216 USPQ 358 (TTAB 1982). The Board explains that a significant feature and function of Enzo's product is that it enables the detection of Annexin V in GFP-expressing cells. The Board finds that GFP is merely descriptive of the goods.

Accordingly, the Board affirms the refusal to register Enzo's mark GFP CERTIFIED.

(F-90) In re Snowizard, Inc., S.N. 77524268, unpubl'd. Refusal to register affirmed, June 16, 2010. Kenneth L. Tolar for appellant; James Ringle for TMEO. [Seeherman], Walters, and Zervas, Administrative Trademark Judges (10 pages).

COOKIE DOUGH, subject of an application to register by Snowizard, Inc. (SI) for "food flavorings," is merely descriptive and thus is unregistrable. 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, function, ingredient, attribute, or feature of a product in connection with which it is used. 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 applicant's goods to be considered merely descriptive; it need describe only one significant property. See, In re H U.D.D.L.E., 216 USPQ 358 (TTAB 1982). Whether a term is merely descriptive is determined not in the abstract, but in relation to the goods for which registration is sought, the context in which the term or phrase is being used or is intended to be used on or in connection with those goods, and the impact that it is likely to have on the average purchaser of such goods. See, In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).

Examining Attorney Ringle made of record a Google search showing the use of "cookie dough" as a flavor for ice cream, a Web page from Ben & Jerry's wherein "chocolate chip cookie dough ice cream" is listed as the second most popular ice cream flavor and wherein the listed flavor "cookie dough" is the only flavor that does not have an ® or (TM) symbol. Finally, the Examining Attorney submitted pages from SI's website wherein the description for "cookie dough" is "The delicious and playful taste of cookie dough just like Mom used to make, but without the mixing bowl. "

The Board determines that the evidence of record shows that "cookie dough" is a term used to describe a flavor, and therefore consumers will understand, when they see the mark used in connection with food flavorings, that this is the taste of the flavoring. The Board points out that Si's own description of its "cookie dough" flavoring shows Si's expectation that "cookie dough" would be understood as describing the flavor. The Board considers Si's argument that "cookie dough" is the raw batter that is baked to form cookies but does not identify a particular flavor because cookies can have a wide variety of flavors. SI pointed to the listing of "chocolate chip cookie dough" ice cream on the Ben & Jerry's website and the eight "cookie dough" flavors listing on the Donna B. website, and it argued that one could not sell different flavors of raw dough if all dough had the same flavor.

The Board points to the decision in In re Patent & Trademark Services Inc., 49 USPQ2d 1537 (TTAB 1998) wherein PATENT & TRADEMARK SERVICES, INC. was found merely descriptive for legal services were so broadly described that the applicant's mark would give no specific description of the types of services that the applicant performed . The Board in that case stated that "the fact that the phrase does not specify exactly which patent and trademark services applicant offers does not mean that applicant is entitled to exclusively appropriate the phrase." Patent & Trademark Services at 1539. The Board explains that the same reasoning applies in the case before it: "Cookie dough" is used by third parties to describe the flavoring of their products.

Finally, the Board notes that in its brief SI explained that its product is purchased by snowball vendors or snowball vendors and not to the general public. The Board explains that although SI may be limited its sales to this class of customers, its identification of goods is not so restricted; thus, the Board must determine the question of mere descriptiveness with respect to anyone who may purchase food flavorings, including the public at large. As such, COOKIE DOUGH is merely descriptive of food flavorings.

Accordingly, the Board affirms the refusal to register Si's mark COOKIE DOUGH.

(F-91) In re Deslauriers, Inc., S.Nos. 77614485 and 77614491, unpubl'd. Refusal to register affirmed and refusal to register reversed, June 16, 2010. F. William McLaughlin of Wood, Philips, Katz, Clark & Mortimer for appellant; Cory Boone for TMEO. Bucher, [Cataldo], and Taylor, Administrative Trademark Judges (9 pages).

GROUT SAMPLE BOX and GSB, subjects of applications to register by Deslauriers, Inc. (DI) for "cardboard containers including divider inserts" in International Class 16, were refused registration on the ground that the marks are merely descriptive under Section 2(e)(1) of the Trademark Act. GROUT SAMPLE BOX is merely descriptive and thus is unregistrable; GSB is not merely descriptive and thus is registrable.

A term is merely descriptive if it immediately conveys information concerning a quality, characteristic, function, ingredient, attribute, or feature of a product in connection with which it is used. 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 applicant's goods to be considered merely descriptive; it need describe only one significant property. Whether a term is merely descriptive is determined not in the abstract, but in relation to the goods for which registration is sought, the context in which the term or phrase is being used or is intended to be used, and the impact that it is likely to have on the average purchaser. See, In re Bright-Crest, Ltd. , 204 USPQ 591, 593 (TTAB 1979).

In support of the refusal to register the mark GROUT SAMPLE BOX, Examining Attorney Boone made of record dictionary definitions of "grout" ("a thin mortar used to fill cracks and crevices in masonry"), "sample" ("a portion, piece, or segment that is representative of a whole"), and "box" ("a container typically constructed with four sides perpendicular to the base and often having a lid or cover"). The Examining Attorney also provided a Screenshot from DI's website oentaining information about "grout sample box, " information from DI's patent for the recited goods, and third -party advertisements wherein the goods under the GROUT SAMPLE BOX mark are described as "cardboard box designed to be used to mold grout test samples" and as "a mold to form 4 3x3x6 mortar samples and as a transport/ shipping container. "

Based on the dictionary definitions made of record by the Examining Attorney, the Board finds that DI's mark merely describes a container, or box, used to create or transport representative samples of a thin mortar commonly known as grout. DI did not dispute these definitions of the wording comprising the mark, but argued that neither the words themselves nor the combination thereof in its mark are descriptive of its goods. The Board points out that DI's argument is contradicted by its own patent for these goods and that DI's goods under the GROUT SAMPLE BOX mark are described in a third-party Internet advertisement as a cardboard box used to mold grout test samples.

The Board concludes that the evidence of record supports a finding that, as applied to DI's goods, GROUT SAMPLE BOX would immediately describe, without conjecture or speculation, a significant characteristic or feature of the goods. Accordingly, the Board affirms the refusal to register DI's mark GROUT SAMPLE BOX.

In support of the refusal to register the mark GBS, the Examining Attorney relied on evidence submitted in support of the refusal to register the mark GROUT SAMPLE BOX and argued that GBS is an acronym used interchangeably with GROUT SAMPLE BOX and that the terms are "synonymous. " However, upon careful examination of this evidence, it is unclear to the Board whether DI and third parties utilize GSB as shorthand when referring to GROUT SAMPLE BOX or whether such examples actually display GSB as a source indicator.

The Board determines that in this case, the Examining Attorney failed to support a finding that GSB would immediately describe, without conjecture or speculation, a significant characteristic or feature thereof. Simply because the evidence of record shows that GBS is derived from the term GROUT SAMPLE BOX, it does not necessarily show that the initialism GSB would be understood by consumers of DI's goods as merely describing DI's cardboard containers including dividers.

Accordingly, the Board reverses the refusal to register DI's mark GSB.

(F-92) In re Fazzari Restaurant Group LLC, S.N. 77109197, unpubl'd. Refusal to register reversed, June 22, 2010. Andrew S. McConnell of Boyle Fredrickson, S. G, for appellant; Ann Sappenfield for TMEO. Walters, Walsh, and [Bergsman], Administrative Trademark Judges (7 pages). Avaliable in sUp opinion only.

(F-93) In re ZeroNines Technology, Inc., S.N. 77404271, unpubl'd. Refusal to register affirmed, June 22, 2010. Christopher M. Parent of Brownstein Hyatt Farber Schreck, LLP, for appellant; Kathleen M. Vanston for TMEO. Quinn, [Bucher], and Taylor, Administrative Trademark Judges (23 pages).

ALWAYS AXAILABLE, subject of an intent-to-use application to register by ZeroNines Technology, Inc. (ZNT) for "computer services, namely, creating indexes of information, sites and other resources available on computer networks" in International Class 42, is merely descriptive and thus is unregistrable. 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, function, ingredient, attribute, or feature of a service in connection with which it is used. In re Bayer Aktiengesellschaft, 488 F. 3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007). A term need not immediately convey an idea of each specific feature of the applicant's services to be considered merely descriptive; it need describe only one significant property. In re Gyulay, 820 F.2d 1216, 3 USPQ 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 or is intended to be used, and the impact that it is likely to have on the average purchaser. In re Omaha National Corp., 819 F. 2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987). 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 the mark indicates. See, In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978).

Examining Attorney Vanston made of record dictionary definitions of "always" ("at all times") and "available" ("accessible") to show that ALWAYS AVAILABLE clearly means "accessible at all times. " The Board agrees, finding that these terms separately have a descriptive significance in relation to ZNT's services. A term that merely combines two descriptive words is not registrable if the individual components retain their descriptive meaning in relation to the services and the combination results in a composite mark that is itself descriptive. See, In re King Koil Licensing Co. Inc., 79 USPQ2d 1048 (TTAB 2006). The Board finds the term ALWAYS AVAILABLE immediately describes a significant characteristic of the named services. Abcor, 200 USPQ at 219.

The question remains whether the newly coined combination of descriptive components creates a unitary mark having a unique, incongruous, or otherwise non-descriptive meaning in relation to the services such that it renders the combination registrable as a mark. In addition to dictionary definitions, the Examining Attorney submitted excerpts to show that in the computer field generally, the combined term means that the software solutions or online computer services are available through computer networks that are accessible at all times, allowing the customer uninterrupted access to its applications and data.

Based on this evidence, the Board agrees with the Examining Attorney that ALWAYS AVAILABLE is used routinely to describe computer services always accessible to the user and, thus, immediately conveys information about a significant and valued feature of many types of computer services. Specifically, the Board finds that ZNT itself touts the uninterrupted access its customers will enjoy at all times and finds no reason that the average consumer would perceive any novel, incongruous, or non-descriptive meaning for the combination of these two words.

Companies large and small value uninterrupted access to critical data in spite of the reality of server crashes or network problems, whether small emergencies or catastrophic events. The Examining Attorney argued that it is clear from ZNT's own recitation of services, as further described on its website, that a major selling point is that its customers are provided seamless functionality despite any kind of disaster. ZNT's website refers to ALWAYS AVAILABLE as its "motto," and a motto ostensibly understandable to its customers without reliance on "imagination, thought, or perception."

Finally, the Examining Attorney argued that ALWAYS AVAILABLE is already being used descriptively by a variety of third parties offering competing versions of business continuity technology, particularly service providers offering fail-safe network architecture that involves multi-casting and cloud computing. Although "cloud computing" ("a general term for anything that involves delivering hosted services over the Internet. ... The name cloud computing was inspired by the cloud symbol that's often used to represent the Internet in flowcharts and diagrams.") is a relatively new and rapidly evolving technology, the Examining Attorney placed into the record numerous definitions and blogs offering a basic primer on this emerging combination of software, infrastructure, and services.

ZNT's own blog demonstrates the use of ALWAYS AVAILABLE in the ordinary sense of these words as meaning "virtually 100% availability," not as a source indicator. However, the Board is convinced by ZNT's own Web pages (Fig. 1 and Fig. 2) that ZNT's recited services provided under the mark ALWAYS AVAILABLE, by providing synchronous identical processing on multiple cloud nodes geographically separated by thousands of miles, does indeed rely upon cloud computing technologies.

ZNT made another argument for registrability. It introduced into record more than two dozen third-party registrations and argued that the registrations demonstrate that the PTO routinely finds composite marks beginning with the words ALWAYS ______ to be suggestive rather than merely descriptive. The Board is not persuaded, explaining that the totality of ZNT's evidence of third-party registrations having marks that include the leading term ALWAYS, is not persuasive of a different result in this case: The fact that other, very different marks may contain the term ALWAYS for different goods or services does not address whether ALWAYS AVAILABLE is merely descriptive within the context of ZNT's computer services.

The Board instructs that each case must be decided on its own facts, and a term that is merely descriptive, such as ALWAYS AVAILABLE, should not be registered on the Principal Register simply because similar marks appear on the Register. In re Scholastic Testing Service, Inc., 196 USPQ 517 (TTAB 1977). In any event, concludes the Board, it is not bound by the prior action of individual Examining Attorneys. See, In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).

Accordingly, the Board affirms the refusal to register ZNT's mark ALWAYS AVAILABLE.

(F-94) In re Cemco, Inc., S.N. 77432339, unpubl'd. Refusal to register reversed, July 2, 2010. Theodore A. Breiner of Breiner & Breiner, L.L.C., for appellant; Jeri Fickes for TMEO. Seeherman, Hairston, and [Kuhlke], Administrative Trademark Judges (11 pages).

KOOLER KIOSK, subject of an intent-to-use application to register by Cemco, Inc. (Cemco) for "water cooler attachment for storing, holding and displaying articles" in International Class 20, is neither merely descriptive nor deceptively misdescriptive and therefore is registrable. Registration had been finally refused under Section 2(e)(1) of the Trademark Act.

Examining Attorney Fickes objected to Cemco's reference to new third-party registrations not properly made of record. The Board states that all of the third-party registrations were part of the record except those pertaining to Board cases cited by Cemco. The Board states that reference to third-party marks that were the subject of a Board case is part of Cemco's legal argument. The Board overrules the objection.

A mark is merely descriptive if it consists merely of words descriptive of the qualities, ingredients, or characteristics of the goods. See, In re MBNA America Bank N. A., 340 F. 3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003). Whether a mark is suggestive or merely descriptive depends on whether it immediately conveys knowledge of the ingredients, qualities, or characteristics of the goods with which it is used or whether imagination, thought, or perception is required to reach a conclusion about the nature of the goods. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987) citing In re Qwik-Print Copy Shops, Inc., 616 F.2d 523, 205 USPQ 505, 507 (CCPA 1980).

Combining descriptive words does not necessarily create a nondescriptive phrase. In re Associated Theatre Clubs Co. , 9 USPQ2d 1660, 1662 (TTAB 1988). If each component retains its merely descriptive significance, the combination is merely descriptive. In re Oppedahl & Larson LLP, 373 F. 3d 1 171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004), quoting, Estate of PD. Beckwith, Inc. v. Commissioner, 252 U.S. 538, 543 (1920). The mark, however, is registrable if the combination creates a unitary mark with a unique, nondescriptive meaning or if the composite has a bizarre or incongruous meaning as applied to the goods. See, In re Colonial Stores Inc., 394 F 2d 549, 157 USPQ 382 (CCPA 1968).

To establish that a mark is deceptively misdescriptive pursuant to Section 2(e)(1) of the^cr, 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).

The Examining Attorney argued that the mark merely describes the function of the goods as a kiosk for coolers and that if the cooler attachment will not operate as a kiosk, the mark deceptively misdescribes the goods. KOOLER directly identifies the items to which the goods are attached, continued the Examining Attorney. The Examining Attorney pointed to definitions of "kiosk" and submitted Internet examples of KIOSK used to describe a small structure used to house information and notices. She submitted pictures of kiosks and Web pages showing a patent for a collapsible multifunctional kiosk: "A refreshment dispenser is capable of being supported within the hollow, central cavity of the kiosk, and a trash receptacle is also capable of being supported within the hollow, central cavity. " The Examining Attorney contended that if the attachments allow the coolers to display advertisements or community notices or offer products for sale, in effect, they are converting the coolers into kiosks. Unless some undisclosed feature of the goods would render them unable to be used for such purposes, the Examining Attorney argued that the mark is merely descriptive. If there is such a feature, she continued, the mark is deceptively misdescriptive.

Cemco explained that its goods are attached to a water cooler and allow for storing and displaying articles on the water cooler e.g., family pictures). Cemco pointed out that the mark can suggest different meanings, for example, a kiosk that is "cooler" i.e., more trendy) than other kiosks.

A thin line separates a suggestive mark from a merely descriptive one, and the determination of the category into which a mark falls is frequently a difficult matter involving a good measure of subjective judgment. In re Recovery, Inc. , 196 USPQ 830, 831 (TTAB 1977). Any doubt must be resolved in favor of the applicant. See, In re Merrill Lynch, Pierce, Fenner, and Smith Inc. , 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987), citing In re Aid Laboratories, Inc., 221 USPQ 1215, 1216 (TTAB 1983).

The Board states that none of the Examining Attorney's examples is the same type of item as Cemco's and explains that Cemco's goods are more in the nature of a caddy. The Board does not read the term "attachment" to include something akin to the patent application. KIOSK, according to the Board, suggests the attribute of holding and displaying articles but with a more expansive, professional feeling and has an atmospheric element that is not directly descriptive. The Board finds that KIOSK suggests the attributes of a kiosk rather than describing the nature of the goods. The Board concludes that KOOLER KIOSK is not merely descriptive.

In view of the finding that KIOSK is suggestive, the Board states that KIOSK does not misdescribe the goods. The Board finds that KOOLER KIOSK is not deceptively misdescriptive.

Accordingly, the Board reverses the refusal to register Cemco's mark KOOLER KIOSK.

Miscellaneous Cases:

(F-95) In re T. S. Designs, Inc., S.N. 77251039, USPQ2d _ (TTAB, June 9, 2010). Refusal to register affirmed. Edward W. Rilee of MacCord Mason PLLC for appellant; Benjamin U. Okele for TMEO. [Bûcher], Kuhlke, and Walsh, Administrative Trademark Judges (7 pages).

CLOTHING FACTS, subject of an application to register by T.S. Designs, Inc. (TSD) for "long-sleeved shirts; polo shirts; short-sleeved shirts; and t-shirts" in International Class 25 does not function as a trademark and is therefore unregistrable. Registration had been finally refused under Sections 1,2, and 45 of the Trademark Act.

TSD's original specimen (Fig. 1) was identified as a label reminiscent of the "Nutrition Facts" label required for food products by the U.S. Food and Drug Administration (FDA). TSD did not applied to register the entire label, but rather only the designation CLOTHING FACTS. The Board explains, however, that it cannot assume that prospective consumers would make an association between TSD's label and the FDA label device or that any such association would result in recognition of the words CLOTHING FACTS as a mark. Examining Attorney Okele argued that consumers will not perceive this designation as a source indicator, but, rather, a clever device intended to inform prospective consumers about the environmental awareness and ecological consciousness involved in the manufacture of TSD's clothing.

TSD responded that the mark would be readily recognized by customers as a secondary source or sponsorship for CLOTHING FACTS printed apparel. The Examining Attorney cited In re Volvo Cars of N Am., Inc., 46 USPQ2d 1455, 1460-61 (TTAB 1998) and In re Manco, Inc., 24 USPQ2d 1938, 1942(TTAB 1992), as designations that were perceived as serving a different purpose than identifying the source of goods.

The Board must look closely at the manner wherein TSD used the wording CLOTHING FACTS. The original specimen was a reproduction of a label sewn onto the neckline of a Tshirt (see, Fig. 1 and Fig. 2), whereas substitute specimens display the same image printed directly onto the back and front of the T-shirt (shown here as Fig. 2).

The Board appreciates that the imagery involves a play on the FDA's ubiquitous nutrition labeling device and is designed to communicate TSD's commitment to social justice and environmental stewardship. The Board, however, reasons that consumers will view the designation CLOTHING FACTS as informational matter rather than a source identifier for the shirts. The Board reasons that this likelihood is enhanced by the fact that the label contains two clear source identifiers, namely, "tsdesigns.com" and "printing t-shirts for good," the latter specifically bearing the informal TM designation whereas the phrase CLOTHING FACTS does not.

Although TSD attempted to rely on the theory of "secondary source, " no factual parallel exists herein to reported decisions wherein ornamental material on the clothing inherently tells the public the source of the goods. Similarly, the Board reasons that no showing of acquired distinctiveness for this matter exists.

Accordingly, the Board affirms the refusal to register TSD's mark CLOTHING FACTS.

(F-96) In re Osmotica Holdings Corporation, S.N. 77314455, _ USPQ2d _ (TTAB, June 9, 2010). Refusal to register affirmed. F. Michael Sajovec of Myers, Bigel, Sibley & Sajovec for appellant; Lourdes D. Ayala for TMEO. Quinn, [Walters], and Zervas, Administrative Trademark Judges (8 pages).

OSMODEX, subject of an application to register by Osmotica Holdings Corporation (OHC) for "consultation services regarding controlled release drug delivery technology for pharmaceutical companies" in International Class 42, does not function as a service mark and therefore is unregistrable. Registration had been finally refused under Sections 1, 2, 3, and 45 of the Trademark Act.

Examining Attorney Ayala argued that OHCs specimen did not show the mark in relation to consultation services. In response, OHC submitted a substitute specimen from its website (shown here). The Examining Attorney contended that, as used in the specimen, OSMODEX merely identifies OHCs technology rather than the services recited in the specimen. The Examining Attorney maintained that the term "Osmotica" is used in connection with the only reference to "consulting" in the specimen, whereas OSMODEX is used merely to refer to one of OHCs many technologies.

OHC argued that the terms "platform technology" and "resolve" clearly convey to the drug-development consumer that OHC offers consultation services in this area. The Board explains that the question of whether the specimens demonstrate that OHC offers the identified consulting services is not at issue. Instead, the Board explains that the sole question is whether the term OSMODEX serves as a service mark to identify and distinguish OHCs recited consulting services.

The Board notes that to show service mark use, a specimen must show use of the mark in a manner that would be perceived by the relevant public as identifying the specified services and indicating their source. In re Universal Oil Products Co. , 476 F. 2d 653, 177 USPQ 456 (CCPA 1973). The Board explains that it is not enough that the mark and a reference to the services both appear in the same specimen. To create the required direct association, the specimen must contain a reference to the service and the mark must be used on the specimen to identify the service and its source. See, In re Aerospace Optics Inc. , 78 USPQ2d 1861, 1862 (TTAB 2006).

The Board points out that a term may be used to identify both a process and services rendered in connection therewith. The Board explains that whether a process term is also used as a service mark is determined by the specimens and other evidence of record in the application. In this case, the Board notes that OSMODEX is used in its specimen to refer to its innovative drug-delivery technologies, which are analogous to processes. The Board finds that the mark would be perceived by the relevant public as identifying only OHCs drug-delivery technology and not as identifying its consulting services. The Board reasons that the statement referenced by OHC on the Web page is at most an oblique reference to consulting services and would only be so construed if the reader already knew that OHC offered such services. The Board finds that a direct association between OSMODEX and OHCs consulting services does not exist.

Accordingly, the Board affirms the refusal to register OHCs mark OSMODEX.

(F-97) In re P.J. Fitzpatrick, Inc., S.N. 77256618, _ USPQ2d _ (TTAB, June 11, 2010). Refusal to register reversed. Timothy D. Pecsenye of Blank Rome LLP for appellant; Kimberly Frye for TMEO. Kuhlke, Walsh, and [Bergsman], Administrative Trademark Judges (9 pages).

RJ. FITZPATRICK, INC. , subject of an application to register by RJ. Fitzpatrick, Inc. (PJF) for "roofing services; installing siding; installation of doors and windows; building construction services; construction, maintenance and renovation of property; installation of gutters and gutter systems" in Class 37, is not primarily merely a surname and therefore is registrable. Registration had been finally refused under Section 2(e)(4) of the Trademark Act.

The Board explains that it must determine whether the addition of the initials PJ. and the entity designation INC. to FITZPATRICK creates a mark that is more than primarily a surname. In other words, the Board explains that it must determine the primary significance of PJ. FITZPATRICK, INC. to the purchasing public. Michael S. Sachs Inc. v. Cordon ArtB.V, 56 USPQ2d 1132, 1136 (TTAB 2000).

The Board points out that the law is settled that the mere addition to a surname of an entity designation such as INC. does not transform the surname into a mark. In contrast, the Board notes that the addition to FITZPATRICK of the leading initials PJ. is more significant. The Board explains that a segment of American society uses initials rather than given names.

In this case, the Board finds that the initials PJ. coupled with FITZPATRICK would be perceived as the given name. Thus, the Board explains that PJ. FITZPATRICK, INC. cannot be primarily merely a surname because it composes an entire personal name rather than merely a surname. The Board notes that in In re Lewis Cigar Mfg. Co. , 205 F 2d 204, 98 USPQ 265, 267 (CCPA 1953), which found that a single initial before the term "Seidenberg" did not create a meaning other than that of a surname, the Court essentially stated that there should be no distinction between marks consisting of two initials coupled with a surname and marks consisting of a given name coupled with a surname in terms of finding one coupling to be primarily merely a surname and the other not. The Board clarifies that a mark consisting of two initials coupled with a surname typically will convey a commercial impression of a personal name and thus generally will not be primarily merely a surname.

Moreover, the Board notes that in Lewis Cigar, the Court did not find as a matter of law that a single initial added to a surname could never convey something other than surname significance. In this case, the Board notes (i) that two initials are used rather than one and (ii) that the record shows that a segment of society uses multiple initials in lieu of given names - a fact not before the court in Lewis Cigar.

Accordingly, the Board reverses the refusal to register PJF's mark PJ. FITZPATRICK, INC..

(F-98) National Pork Board and National Pork Producers Council v. Supreme Lobster and Seafood Company, Opp. No. 91166701, _ USPQ2d _ (TTAB, June 11, 2010). Opposition sustained. Christopher P. Beali of Levine, Sullivan, Koch & Schulz, LLP, John L. Beard of Faegre & Benson LLP, and David W. Grace of Loeb & Loeb for opposers; Jennifer R. Quinn, Jennifer L. Zordani, Amy M. Gardner, and Ethan E. Trull of Ungaretti & Harris for applicant. [Bucher], Grendel, and Ritchie, Administrative Trademark Judges (59 pages).

Supreme Lobster and Seafood Company (SLSC) filed an application to register the mark THE OTHER RED MEAT for "fresh and frozen salmon" in International Class 29. National Pork Board (NPB) and National Pork Producers Council (NPPC) opposed registration on the grounds of likelihood of confusion and dilution with their previously used and registered marks (i) THE OTHER WHITE MEAT for "association services namely, promoting the interests of members of the pork industry" in International Class 42; for "cookbooks, brochures about pork, pens, pencils, crayons, bumper stickers, and stickers" in International Class 16; for "shirts, t-shirts, sweatshirts, aprons, jackets, and hats" in International Class 25; and for "providing an Internet website featuring food preparation/cooking information regarding pork and accompanying recipes" in International Class 43 and (ii) the mark shown here as Fig. 1 for "promoting the interests of the members of the pork industry" in International Class 35 and "providing an Internet website featuring information about cooking and accompanying recipes" in International Class 43.

Preliminarily, the Board explains that NPB and NPPC have established their standing. The Board states that NPB has submitted status and tide copies of its registrations, whereas NPPC has demonstrated its use over a long period of years and retained an economic and contingent interest in the mark. SLSC argued that commodity slogans function merely as generic labels or marketing campaigns. The Board notes that the involved mark is a slogan designed to promote the consumption of pork and pork products in the United States. The Board further explains that NPB and NPPC have placed at least 17 third-party registrations for promotional slogans owned by commodity promotion agencies regulated by the U.S. Department of Agriculture. SLSC argued that consumers will be misled and deceived by commodity promotion slogans.

The Board explains that the registered marks are neither certification marks certifying that pork products meet certain quality standards nor products mark for identifying a brand of pork. The Board explains that the registrations are for promoting the interests of members of the pork industry. The Board further explains that the fact that the primary focus of such an association's endeavor is national advertising designed to promote the consumption of a particular commodity does not disqualify the mark or slogan under the Lanham Act's statutory definition of a mark.

The Board next turns to the issue of dilution. The Board explains that when an application to register a mark is challenged on the grounds of dilution under Section 43(c) of the Act, the Board looks at three elements: (i) whether the opposer's mark is famous, (ii) whether the opposer's mark became famous prior to the date of the application to register the applicant's mark, and (iii) whether the applicant's mark is likely to blur the distinctiveness of the opposer's famous mark.

In determining whether THE OTHER WHITE MEAT is famous, the Board notes that there is no doubt that the pork products promoted by the slogan make up a meaningful portion of the quantity of meat sold in the United States. SLSC contended that NPB and NPPC provided only imprecise statements regarding advertising expenditures rather than substantiated evidence of actual advertising expenditures. The Board explains that the record shows that NPPC and NPB have spend more than $550 million on promotional activities over the more than 20-year life of the mark. The Board further notes that it is not critical whether consumers can name NPPC or NPB . The Board states that it is sufficient that consumers associate the mark with a single albeit anonymous source.

The Board states that NPB's consumer surveys demonstrate a high degree of customer and general public recognition of the mark. The Board points out that tracking studies have shown consumer recognition of the mark above the 85 percent level and current source recognition at nearly 70 percent. The Board further notes that researchers found that only four nationally known slogans ranked higher than THE OTTTER WHITE MEAT. Additionally, the Board points out that the record shows extensive references to the mark in popular culture.

The Board concludes that the evidence demonstrates that THE OTHER WHITE MEAT is a famous mark. The Board notes that the phrase is among the most well-known advertising slogans in the United States, given awareness rates of 80 to 85 percent of the general adult population and rates of correct source recognition at nearly 70 percent of the population. The Board reasons that awareness and recognition at this level has supported a finding of fame in those rare instances where this Board has found a likelihood of dilution. See, 7-Eleven Inc. v. Wechler, 83 USPQ2d 1715, 1727-28 (TTAB 2007).

Turning to the next element, the Board explains that the majority of the evidence in the record about the renown of NPPC and NPB 's slogan predates the involved application filing date of February 4, 2004. Thus, the Board finds that the feme of THE OTHER WHITE MEAT was well established prior to the date that the application was filed.

Next, the Board considers the likelihood of blurring by SLSCs THE OTHER RED MEAT mark. The Board considers the statutory, nonexclusive factors for determining the likelihood of blurring in a dilution case set out by the Trademark Dilution Revision Act Section 43(c)(2)(B). The Board examines the degree of similarity between the mark or trade name and the famous mark. In this case, the Board notes that the difference involves only the third of the four words, in both cases an adjective referring to a color of meat. The Board notes that NPPC and NPB's dilution survey shows that more than 35 percent of the survey respondents associate SLSCs slogan with their slogan in an unaided survey response. The Board finds that this degree of association demonstrates that a sizeable segment of the target population sees the two marks as highly similar.

Turning to the degree of distinctiveness of the famous mark, the Board notes that the mark is entitled to a presumption of inherent distinctiveness. Moreover, the Board explains that the mark is merely suggestive of a healthy attribute of the commodity being promoted by the pork industry, namely, the color of some cuts of pork after being cooked. The Board finds the mark to be inherently distinctive.

The Board points out that the record shows that NPPC and NPB's use of the mark is virtually exclusive. In addition, the Board finds that the evidence provided by NPPC and NPB shows that the mark is extremely well recognized by a broad spectrum of consumers and that this degree of recognition among the general consuming public of this famous mark also supports the conclusion that dilution by blurring is likely upon the introduction of SLSCs slogan into the marketplace.

The Board also finds that the evidence shows that SLSCs CEO was aware of NPPC and NPB's mark. Although the Board is reluctant to conclude bad faith on the part of SLSC, the Board reasons that SLSCs principals may have believed it was permissible for SLSC to create an association with the famous mark. The Board finds that this factor favors NPPC and NPB.

Finally, the Board explains that it is impossible to present any evidence of actual association between the marks in the marketplace in a situation where SLSC has not yet engaged in any actual use of the junior mark. The Board finds that this factor is neutral.

After considering all the relevant factors, the Board finds a likelihood of dilution by blurring. Thus, the Board does not reach NPPC and NPB's likelihood of confusion claim.

Accordingly, the Board affirms NPPC and NPB's opposition to SLSCs THE OTHER RED MEAT mark.

(F-99) In re G&R Brands, LLC, S.N. 77417467, unpubl'd. Refusal to register affirmed, June 14, 2010. Dana B. Robinson for appellant; David C. Reihner for TMEO. Quinn, [Walsh], and Cataldo, Administrative Trademark Judges (15 pages).

HAVANA TIME ("Havana" disclaimed), subject of an intentto-use application to register by G&R Brands, LLC (GR) for, inter alia, "hand-rolling tobacco grown from Cuban seed tobacco; pipe tobacco grown from Cuban seed tobacco; roll your own tobacco grown from Cuban seed tobacco; rolling tobacco grown from Cuban seed tobacco; smoking tobacco grown from Cuban seed tobacco; cigars made from Cuban seed tobacco; cigarettes made from Cuban seed tobacco; and filter-tipped cigarettes made from Cuban seed tobacco" in International Class 34, is primarily geographically deceptively misdescriptive and thus unregistrable. Registration had been finally refused under Section 2(e)(3) of the Trademark Act.

The Board does not consider GR's attachment because it was untimely filed.

The USPTO must deny registration under Section 2(e)(3) if (i) the primary significance of the mark is a generally known geographic location, (ii) the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark, and (iii) the misrepresentation was a material factor in the consumer's decision. In re California Innovations Inc. , 329 F. 3d 1334, 66 USPQ2d 1853, 1858 (Fed. Cir. 2003).

GR pointed to third-party registrations for HAVANA marks for tobacco products grown from Cuban seeds. GR asserted that because its seeds are newly exported from Cuba, HAVANA is merely descriptive, not deceptively misdescriptive. An applicant may not overcome a Section 2(e)(3) refusal by amending its identification of goods from "cigars" to "cigars made from Cuban seed tobacco" and disclaiming the geographic term. Corporación Habanos S.A. v. Anncas Inc. , 88 USPQ2d 1785, 1793 (TTAB 2008). Tobacco products made from seeds exported from Cuba cannot be described as being from Cuba. Corporación Habanos S.A. v. Anncas Inc., supra.

The Board considers the first California Innovations factor. GR argued that TIME cancels the geographical meaning of HAVANA. HAVANA TIME, according to GR, captures a new sort of time like Miller Time or Island Time and does not refer to Havana the place but to the qualities associated with the place. The Board states that nothing about the mark alters the primary geographical meaning of HAVANA as applied to tobacco products. The Board concludes that the primary significance of HAVANA TIME is that of the name of a generally known geographic location.

As for the second California Innovations factor, the Board states that GR effectively conceded that HAVANA TIME tobacco will not be grown in Cuba and that HAVANA TIME tobacco products will not be made in Cuba. The Board concludes that GR's tobacco products will not come from Cuba. The Board also concludes that consumers would believe that the products come from Cuba. The Examining Attorney submitted evidence that establishes an association between Havana and tobacco by identifying Havana as a port through which tobacco is exported, according to the Board. GR argued that because of the Cuban embargo, U.S. consumers would understand that the products do not come from Cuba. The Board is not persuaded. In re Bacardi & Co. Ltd. , 48 USPQ2d 1035 (TTAB 1997).

As for the third California Innovations factor, the Board observes that implicit in GR's argument that tobacco products from Cuban seeds are equivalent to tobacco products grown in Cuba is the recognition that consumers value tobacco produced in Cuba. The Examining Attorney provided evidence that Cuba produces and exports tobacco products and provided pages from three websites that offer Cuban cigars for sale. The Board infers from the advertising on these sites that consumers value Cuban tobacco. The Board takes judicial notice of reference works that support the proposition that consumers value Cuban tobacco and that the Cuban origin of the products would be material to the decision to purchase.

Accordingly, the Board affirms the refusal to register GR's mark HAVANA TIME.

(F-1 00) In re Best Lab Deals Inc., S.N. 77705840, unpubl'd. Refusal to register affirmed, June 15, 2010. Lisa N. Kaufman of Office of Lisa N. Kaufman for appellant; Zachary R. Bello for TMEO. [Seeherman], Bûcher, and Kuhlke, Administrative Trademark Judges (8 pages). Available in sup opinion only.

(F-101) In re Foster's Wine Estates Americas Company, S.N. 77018496, unpubl'd. Refusal to register affirmed, June 16, 2010. Gary D. Krugman of Sughrue Mion, LLP, for appellant; Karen K. Bush for TMEO. [Bucher], Grendel, and Cataldo, Administrative Trademark Judges (10 pages).

CELLAR 360 filed an intent-to-use application to register by Foster's Wine Estates Americas Company (FWE) for "wine" in International Class 33. Examining Attorney Bush refused registration under Sections 1,2, and 45 of the Trademark Act on the ground that the specimen does not show the applied-for mark in use in commerce as a trademark for its identified goods.

FWE's specimen of use, the front and back covers and two centerfold pages of a catalogue mailed to prospective customers, is shown here.

The specimen shows the CELLAR 360 designation prominently on the top, right edge of the front cover, which cover has a picture of two wine bottles and two poured glasses of wine. The mailer also provides FWE's contact information such as a website, telephone and fax numbers, email address, etc. , on the centerfold page captioned "Guide to Ordering and Services. " On this page, the "How to Order" section provides prospective customers with additional information about payment options, shipping terms, return information, etc.

FWE based most of its briefing and time at oral argument on Land's End Inc. v. Manbeck, 797 F.Supp. 501, 24 USPQ2d 1314 (E.D Va. 1992), as modified by In re Sones, 590 F. 3d 1282, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009). The Board and its reviewing courts have long recognized a clear "line of demarcation" between mere advertising materials, which have been found unacceptable as specimens showing use of a mark for goods, and point-of -purchase promotional materials, which have been found acceptable as a display associated with the goods. See, In reAnpath Group, Inc. , 95 USPQ2d 1377 (TTAB 2010). In keeping with the Land's End/Sones line of cases, FWE argued that its specimen is precisely the type of material that should be acceptable as a display associated with the goods. By contrast, the Examining Attorney argued that the designation as seen on the specimens functions only as a service mark associated with the consumers' ordering and purchasing of wine; the Board agrees.

FWE minimized the difference between the nature of specimens for a trademark and for a service mark. It did not argue that these specimens are labels, tags, product inserts, or point-of-sale material; rather, it agreed that they are catalogues mailed or made available in other ways, to its prospective customers. The Examining Attorney concluded that prospective purchasers would clearly view the term as identifying the source of FWE's retail services, but would not perceive CELLAR 360 as a trademark for wine.

FWE argued that its applied-for term is the essence of the function of a trademark, that is, to engender an association in the minds of consumers between a product and a single source. The Board disagrees that its determination in this appeal turns upon whether the listed wines are produced by FWE: The factual question before the Board is basically whether consumers will recognize CELLAR 360 as a source indicator for particular bottles of wine. In reflecting on how one measures the goodwill associated with a particular bottle of wine, the Board reasons that it is the vineyard, the winery, and/or the product mark that serves as the consumer's promise of the consistent quality of a bottle of wine. Whether ordered through FWE's website, one of the many competing online websites, or even purchased at one's local brick-and-mortar purveyor of wines, it is the product mark on the label that will be relied upon by the consumer.

FWE conceded that the designation CELLAR 360 does not appear on the labels of its bottles of wine. The Board explains that the fact that FWE already has a service mark registration for the CELLAR 360 designation is not by itself fatal to FWE's position in this case. By contrast, the fact that the applied-for term may serve as a service mark to identify retail or online stores services, does not necessarily show that the term is also a trademark for FWE's goods. In re Supply Guys Inc., 86 USPQ2d 1488, 1493 (TTAB 2008).

The Board explains that what precludes registration of CELLAR 360 is simply that it is not used as a trademark on the specimen of record. Unlike the thrust of FWE's argument, this is not merely a matter of measuring on the front cover of the catalogue the proximity of the applied-for term to the imagine on another wine label. A critical element in determining whether this term functions as a trademark is the impression the term makes on the relevant public. The Board concludes that CELLAR 360 will be seen as a service mark for retail store services featuring wines, but not as a trademark for wine.

Accordingly, the Board affirms the refusal to register FWE's mark CELLAR 360.

(F-102) In re Diapulse Corporation of America, S.N. 76699368, unpubl'd. Refusal to register affirmed, June 23, 2010. Myron Amer of Myron Amer, P.C., for appellant; David S. Miller for TMEO. [Hairston], Grendel, and Mermelstein, Administrative Trademark Judges (5 pages). Available in slip opinion only.

(F-103) In re Liberty Hardware Mfg. Corp. , S.N. 77413789, unpubl'd. Refusal to register affirmed, June 25, 2010. Edgar A. Zarins of Masco Corporation for appellant; Daniel Capshaw for TMEO. Holtzman, Cataldo, and Ritchie, Administrative Trademark Judges (7 pages). Available in slip opinion only.

(F-104) In re Leonard's Bakery, Ltd., S.N. 77556405, unpubl'd. Refusal to register affirmed, June 28, 2010. Seth M. Reiss of Seth M. Reiss, AAL, ALLLC, for appellant; Brian P. Callaghan for TMEO. Bucher, [Kuhlke], and Walsh, Administrative Trademark Judges (14 pages).

PAO DOCE WRAPS, subject of a Supplemental Register application to register by Leonard's Bakery, Ltd. (LB) for "bakery products" in International Class 30, is generic and therefore is not registrable. Registration had been finally refused under Section 23 of the Trademark Act.

The Board overrules Examining Attorney Callaghan's objection to excerpts from the PTO manual of acceptable identifications attached to LB 's brief. The material is akin to a standard reference work of which the Board may take judicial notice. Sprague Electric Co. v. Electrical Utilities Co. , 209 USPQ 88 (TTAB 1980).

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 whether the public primarily understands the mark to refer to LB 's category of goods. In re Women's Publishing Co. Inc., 23 USPQ2d 1876, 1877 (TTAB 1992). Determining genericness is a two-step 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. International 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 explains that the evidentiary burden differs depending on the type of mark. When a mark is a compound term, the Examining Attorney may establish that it is generic by producing evidence that each word is generic and that the separate words retain their generic significance in a compound that has a meaning identical to the meaning common usage would ascribe to those words as a compound. In re Gould Paper Corp. , 834 F. 2d 1017, 5 USPQ2d 1 1 10, 1 1 1 1-12 (Fed. Cir. 1987). For marks in the nature of a phrase, the PTO must provide evidence of the meaning of the mark as a whole. In re American Fertility Society, 188 F. 3d 1341, 51 USPQ2d 1832, 1837 (Fed. Cir. 1999).

The Examining Attorney contended that PAO DOCE is a Portuguese sweet bread and WRAPS is generic for "food wraps" that hold various ingredients together for baking or eating.

The parties agree that the genus of goods is adequately defined by the identification of goods, "bakery products." Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991). The Board observes that LB 's specimen of use clarifies that the goods in this genus include pao doce filled with various items. See, In re Stereotaxis Inc. , 429 F. 3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005), quoting, Application of Richardson Ink Co., 511 F 2d 559, 185 USPQ 46, 48 (CCPA 1975).

As for the public's understanding of the term, the Board clarifies that the relevant public consists of the ordinary consumer interested in purchasing bakery products, including LB's PAO DOCE WRAPS. The Board finds clear evidence that the relevant public would understand PAO DOCE WRAPS to identify LB's bakery product.

The Board explains that the dispute centers on the effect of WRAPS on PAO DOCE and which standard to apply. The Board states that the record shows that PAO DOCE is a unitary generic term for a type of bakery product and that WRAPS is generic for goods within the genus bakery products. Therefore, PAO DOCE WRAPS is a compound of two generic terms. In re Eddie Z 's Blinds and Drapery, Inc., 74 USPQ2d 1037, 1041-42 (TTAB 2005). Thus, Gould-type evidence showing the generic nature of the two terms is sufficient to establish that the terms retain their generic significance when joined to form a compound that has a meaning identical to the meaning common usage would ascribe to those words as a compound. Gould at 1111-12.

LB argued that a registered mark shall not be deemed to be the generic name of goods solely because such mark is also used as a name of a unique product. In re Montrachet S.A., 11 USPQ2d 1393 (Fed. Cir. 1989). LB argued that it is entitled to use PAO DOCE WRAPS to distinguish its unique line of bakery products. The Board states that although the fact that a designation is used in connection with a unique product cannot be the basis for finding a term generic, that is not the basis for finding PAO DOCE WRAPS generic; this finding is based on the composition of the mark.

Accordingly, the Board affirms the refusal to register LB's PAO DOCE WRAPS.

(F-105) The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, Opp. No. 91156452, _ USPQ2d _ (TTAB, June 28, 2010). Opposition sustained. Carole F. Barrett, Blake J. Lawit, and Sarah J. Givan of Howard Rice et al. for opposer; Joseph M. Bumb, pro se. [Grendel], Walsh, and Cataldo, Administrative Trademark Judges (22 pages).

Joseph M. Bumb (Bumb) filed an intent-to-use application to register the mark MITHRIL for "jewelry, namely, rings, bracelets, pendants, charms, necklaces, earrings, pins, tie pins and tie clasps, brooches, cufflinks, money clips, all made of precious metal and alloyed precious metal. " The Saul Zaentz Company dba Tolkien Enterprises (Zaentz) opposed registration on the grounds that it owns various trademarks based on Tolkien works, including the mark MITHRIL; that Bumb lacked the requisite bona fide intent to use the mark in commerce at the time he filed the application, which is therefore void under Section 1(b) of the Trademark Act; and that the mark is likely to cause confusion with Zaentz's previously registered MITHRIL mark.

The Board explains that MITHRIL is the name of a mythical precious metal that figures prominently in Tolkien works. The Board further finds that Zaentz has established its standing through demonstrating that one if its licensees has marketed collectible miniature figurines depicting characters from the Tolkien works.

The Board next explains that a person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the Principal Register. The Board further explains that an applicant's mere statement of subjective intention to use the mark, without more, would be insufficient to establish its bona fide intention to use the mark in commerce. Lane Ltd. V Jackson International trading Co. , 33 USPQ2d 1355 (TTAB 1994).

In this case, the Board notes that Bumb registered "mithrilsilver" domain names prior to filing his application but has never taken any steps to construct or operate a website under the domain names. The Board further explains that Bumb has admitted that, aside from documents filed with the USPTO pertaining to the trademark application and domain name registration, he has no documents relating to his adoption of or intent to use the MITHRIL mark in commerce. The Board determines that this lack of documentary evidence suffices to establish Zaentz's prima facie case that Bumb lacked the requisite bona fide intent to use the mark in commerce as of the filing date.

The Board further finds that Bumb's statements during his testimony deposition help establish Zaentz's prima facie case. The Board explains that Bumb testified that he adopted the MITHRJL mark because of its significance in the Tolkien works. Moreover, the Board explains that Bumb's testimony demonstrates that his intention as of the filing date was at most to reserve a right in the term MITHRIL by registering domain names and filing the trademark application. The Board finds that Bumb's testimony and absence of documentary evidence to support his claim of bona fide intent to use the mark as of the application filing date establish Zaentz's prima facie case of no bona fide intent.

The Board explains that the burden shifts to Bumb to rebut the prima facie case by producing evidence that would establish that he had the requisite bona fide intent to use the mark when filing the application. The Board, however, notes that Bumb presented no testimony or other evidence at trial. Bumb asserted that he voluntarily complied with the cessation of development of his MITHRIL product line after receiving a cease and desist letter from Zaentz. The Board notes that although the cease and desist letter might explain a decision, made after the filing date, to cease development of the product line until after Bumb's rights in the mark had been resolved, the letter does not help to establish that Bumb had a bona fide intent to use the mark when he filed the application.

Accordingly, the Board sustains Zaentz's opposition to Bumb's registration of the mark MITHRIL.

(F-106) The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, Opp. No. 91156518, unpubl'd. Opposition sustained, June 28, 2010. Carole F. Barrett, Blake J. Lawit, and Sarah J. Givan of Howard Rice et al. for opposer; Joseph M. Bumb, pro se. [Grendel], Walsh, and Cataldo, Administrative Trademark Judges (20 pages).

Joseph M. Bumb filed an intent-to-use application to register the mark LOTR for "jewelry, namely, rings, bracelets, pendants, charms, necklaces, earrings, pins, tie pins and tie clasps, brooches, cufflinks, money clips, all made of precious metal and alloyed precious metal. " The Saul Zaentz Company dba Tolkien Enterprises (Zaentz) opposed registration of the application, alleging (i) that it owns various trademarks based on characters, places, things, and events described in the well known works of J. R. R. Tolkien that include The Fellowship of the Ring, The Two Towers, and The Return of the King (the "Lord of the Rings Trilogy") and its prequel, The Hobbit, and that these marks include the mark LORD OF THE RINGS and, by extension, the acronym LOTR; (ii) that Bumb lacked the requisite bona fide intent to use the mark LOTR at the time he filed the application to register the mark, rendering the application void ab initio under Section 1(b) of the Trademark Act; and (iii) that Zaentz is the prior user of the mark LORD OF THE RINGS and, by extension, the acronym LOTR, that Bumb's use of the mark he seeks to register is likely to cause confusion with Zaentz' previously used LORD OF THE RINGS and LOTR marks, and that registration of the mark is barred under Section 2(d) of the Trademark Act. Bumb denied the salient allegations.

Zaentz is a film production company that acquired from the Tolkien estate the exclusive worldwide performance, motion picture, and ancillary rights in and to the Lord of the Rings Trilogy. Upon acquiring such rights, Zaentz has used and licensed the use of various trademarks based on name, objects, places, and events depicted in and derived from the Lord of the Rings Trilogy on a wide variety of goods and services. From 2001 through 2003, Zaentz' licensee, New Line Cinema, produced and distributed a serious of three feature films based on the books of the Lord of the Rings Trilogy: The Fellowship of the Ring, The Two Towers, and The Return of the King, movies that grossed approximately $100 billion in theaters. More than 300 of Zaentz' licensees and sub-licensees have marketed thousands of different products, including jewelry, under the Lord of the Rings Trilogy marks as part of Zaentz' extensive and highly successful merchandising program based on the movies. Suffice to say, the sales and advertising expenditures of Zaentz are very substantial.

The record establishes that LOTR is commonly used and recognized as an acronym for LORD OF THE RINGS in connection with the Lord of the Rings Trilogy.

Standing is not at issue in this proceeding. The Board determines that Zaentz has established its rights in the phrase mark LORD OF THE RINGS via copies of its numerous existing registrations of the mark and that Zaentz has common law rights in the phrase mark LORD OF THE RINGS derived from its use and its licensing of others to use the mark essentially as a house mark on a wide variety of licensed products to indicate that the products are authentic merchandise. The Board further determines that the record clearly establishes that the public and the press common use the acronym LOTR interchangeably with LORD OF THE RINGS in referring to the Lord of the Rings Trilogy.

The determination of whether an applicant has a bona fide intent to use the mark in commerce is a fair, objective determination based on all the circumstances. Lane Ltd. v. Jackson International Trading Co., 33 USPQ2d 1351, 1355 (TTAB 1994). The requirement that an applicant must have a bona fide intent to use the mark in commerce must be read in conjunction with the revised definition of "use in commerce" in Section 45 of the Act. On August 17, 2001, prior to his September 12, 2001, filing date of his intent-to-use application, Bumb registered the domain name "lotrjewelry.com"; however, he has never taken any steps to construct or operate a website under the domain name. Bumb admitted that aside from the documents filed with the PTO pertaining to his trademark application and to his registration of the domain name, has no documents relating to his adoption of or intent to use the LOTR mark.

The Board finds that Bumb's lack of any documents to support his claim of bona fide intent suffices to establish, prima facie, that he lacked a bona fide intent to use the mark in commerce when he filed his application. See, Research in Motion Ltd. v. NBOR Corp. 92 USPQ2d 1926 (TTAB 2009). Thus, the Board determines that Bumb has no documentary evidence to support his bona fide intent claim. See, Research in Motion Ud. at 193 1 . The Board concludes that Bumb lacked the requisite bona fide intent to use the LOTR mark in commerce when he filed his application to register that mark, that the application therefore is void ab initio under Section 1(b) of the Act, and that Zaentz has established this ground of opposition to registration of Bumb's mark.

Accordingly, the Board sustains Zaentz' opposition to registration of Bumb's mark LOTR.

(F-107) Kim Laube & Company, Inc. v. Loving Pets Corporation, Opp. No. 91183002, unpubl'd. Opposition dismissed with prejudice, June 28, 2010. Glenn J. Dickinson of Nordman Cormany Hair & Compton LLP for opposer; John E. Russell of Allmark Trademark for applicant. Seeherman, [Bergsman], and Wellington, Administrative Trademark Judges (11 pages).

Loving Pets Corporation (LPC) filed an intent-to-use application to register the mark NATURE'S CHOICE for "pet treats composed of the rawhide and bones of domesticated animals" in International Class 31 . Kim Laube & Company, Inc. (Laube) opposed registration of the application, alleging priority and likelihood of confusion with its mark NATURE'S CHOICE for "animal beauty care products, namely, shampoos and conditioners; and stain removers. " LPC denied the salient allegations.

Laube made of record copies of its three pleaded registrations printed from the PTO database showing the current status and tide of the registrations, as well as copies of two pending applications filed July 9, 2008, for the marks NATURE'S CHOICE and NATURE'S CHOICE & des. , both for "non-medicated grooming preparations for dogs, cats horses, puppies, kittens, ferrets, livestock, zebras, lions, tigers, bears, otters, deer and llamas, namely, shampoos, conditioners, pet colognes, hair care products, skin care products and preparations for removing pet stains" in International Class 3. The Board observes that the pleaded registrations do not provide a basis for Laube's standing because they were expired and therefore were inactive, when Laube filed its notice of opposition. Anderson Clayton & Co. v. Krier, 478 F 2d 1246, 178 USPQ 46, 47 (CCPA 1973).

The Board explains that because the date of expiration of Laube's registrations are not dependent on the date the Office undertook the ministerial function of entering the cancellation into the PTO database, its pleaded registrations were not valid when Laube filed the opposition. Land O' Lakes Inc. v. Hugunin, 88 USPQA2d 1957, 1959 (TTAB 2008). The Board further explains that Laube cannot rely on the common law use pleaded in its notice of opposition because it has presented no evidence of its use of the mark. As to Laube's pending applications, the Board observes that Laube presented its July 9, 2008, pending applications through a notice of reliance; however, it did not file a motion to amend its notice of opposition to claim ownership of the applications. LPC argued that the applications did not establish Laube's priority because Laube's applications were filed after LPCs application.

Because Laube may not rely on impleaded applications, the Board must determine whether Laube's reliance on the applications was tried by implied consent. See, Riceland Foods Inc. v. Pacific Eastern Trading Corp. , 26 USPQ2d 1883, 1884 (TTAB 1993). Because LPC did not object to the introduction of Laube's impleaded registrations and because LPC argued that the pending applications failed to prove Laube's priority, the Board finds that Laube's reliance on the applications was tried by implied consent. The Board deems the pleadings to be amended to include Laube's applications. See, Fed. R. Civ. P 15(b).

The evidence submitted through Laube's notice of reliance shows that Laube's applications were published for opposition on May 5, 2009. LPCs application was not cited as a bar to registration of Laube's applications; thus, Laube's applications were published for opposition. It is sufficient to prove standing if the circumstances are such that it would be reasonable for al plaintiff to believe that the existence of the defendant's registration would damage it.

Accordingly, the Board finds that Laube has established its standing.

For purposes of determining priority of use, the Board explains that because LPC did not submit evidence of earlier use, LPCs date of first use is May 10, 2006, the filing date and therefore the constructive use date of its intent-to-use application. The Board further explains that establishing Laube's first use date is more complex: Laube took no testimony regarding the use of the marks, Laube's cancelled registrations are not evidence of use and Laube may not rely on the filing dates of its underlying applications and the dates of first use alleged therein Kellogg Co. v. Western Family Foods, Inc. , 209 USPQ 440, 442 (TTAB 1980), and Laube's applications have no probative value other than to show that the applications were filed V VigiLanz Corp., 94 USPQ2d 1399, 1403 n.4 (TTAB 2010)).

Section 7(c) of the Trademark Act provides that Laube's applications give Laube an inchoate constructive date of first use as of their filing date, but this constructive use is contingent upon their registration. Laube argued that the Board should take judicial notice of the registrations that issued from its applications on July 9, 2009, after the close of its testimony period. The Board responds that the mere fact that the applications were made of record does not dictate that the resulting registrations are automatically of record whenever they issue. Finally, Laube argued that the Board should consider its new registrations because LPC treated the registrations as being of record. However, the Board does not deem statements made by LPC in its brief to be admissions thatLaube's registrations are properly of record; rather, LPCs statements simply acknowledged that Laube contended that its applications have registered, while at the same time LPC attacked the probative value of the underlying registration. Under the circumstances of this case, the Board does not consider LPC to have treated the registrations as being properly introduced into evidence.

The Board concludes that Laube has failed to prove that it has a proprietary interest in its NATURE'S CHOICE marks prior to that of LPC, and therefore Laube's Section 2(d) claim fails.

Accordingly, the Board dismisses with prejudice Laube's opposition to registration of LPCs mark NATURE'S CHOICE.

(F-108) Anosh Toufigh v. Persona Parfum, Inc. , Cane. No. 92048305, _ USPQ2d _ (TTAB, June 30, 2010). Petition to cancel dismissed. Jay H. Geller of Jay H. Geller, P.C, for petitioner; Persona Parfum, Inc., pro se. Seeherman, Cataldo, [Ritchie], Administrative Trademark Judges (11 pages).

Anosh Toufigh (Toufigh) filed a petition to cancel Persona Parfum, Inc. 's (PP's) registration of the mark ECSTASY for "parfum, eau de toilette, and cologne" on the grounds of abandonment and fraud. PP denied the salient allegations.

In determining whether Toufigh has established standing, the Board notes that Toufigh has testified that he attempted to register the mark ECSTASY for bath crystals and related goods but was refused registration based on PP's registration. The Board notes that mere allegations alone do not establish standing. See Lipton Industries, Inc. v. Ralston Purina Co. , 670 F. 2d 1024, 213 USPQ 185, 188 (CCPA 1982). The Board points out that Toufigh did not submit a copy of the Office action or testify about such refusal in his testimony. The Board explains that it must determine whether Toufigh can establish his standing based solely on his testimony that he filed an application for an identical mark for goods that are similar to those in PP's registration.

The Board explains that PP has shown that it has a real interest in the proceeding by the fact that it has filed an application to register the trademark ECSTASY. The Board notes that prior cases have found standing to be established by the fact that a petitioner's application has been refused registration on the basis of a registrant's registration. Nevertheless, the Board explains that evidence of such a refusal is not a requirement to establish standing. Rather, the Board continues, it is sufficient if the circumstances are such that it would be reasonable for a petitioner to believe that the existence of the respondent's registration would damage him, for example, a reasonable belief that there is a likelihood of confusion between the marks or that a presence on the Register of the respondent's mark may hinder the petitioner in using or registering his mark. Therefore, the Board finds that Toufigh has shown that he has a reasonable belief of damage and a real interest in this proceeding. Thus, the Board finds that Toufigh has established his standing.

Turning to the issue of abandonment, the Board explains that a plaintiff must establish the elements of nonuse and an intent not to resume use unless it can show three years of nonuse, which ? rima facie establishes abandonment. To show nonuse, the Board explains that Toufigh submitted his own testimony regarding his investigation into the use of the mark. Toufigh argued that he checked PP's website, called the corporate number listed on the website, and did Google searches for the product but could find no evidence of PP using the mark.

Toufigh further alleged that PP did not respond to his discovery requests, as set forth in its motion to compel. The Board notes that the motion to compel was denied as premature and was not renewed by Toufigh. The Board further notes that Toufigh has not been able to point to any admissions by PP that would assist in making the case of nonuse for three consecutive years. The Board explains that it cannot draw any conclusions from PP's failure to respond to Toufigh's discovery requests.

Toufigh argued that PP has not submitted any evidence into the record. The Board notes that Toufigh must first make his case by showing that PP has not used the mark on the identified goods for at least three consecutive years or by showing nonuse with no intent to resume use. The Board notes that there is no evidence that Toufigh checked PP's website over a period of at least three years. The Board further notes that Toufigh noted no other type of investigation into other possible sales channels beyond calling the listed number for PP's corporate office.

In conclusion, the Board finds that Toufigh has not established a prima facie case that PP has not used its mark for at least three consecutive years. Thus, the Board dismisses the petition to cancel on this basis.

Turning to the claim of fraud, the Board notes that Toufigh has averred that PP made an intentionally false statement during the prosecution of its application by stating that the mark was in use on the goods identified in the application. The Board states that Toufigh has not submitted any evidence that shows PP's mark was not in use on its goods on the date that PP filed its statement of use. Thus, the Board finds that Toufigh's claim of fraud fails.

Accordingly, the Board dismisses Toufigh's petition to cancel PP's ECSTASY mark.

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.

(1-12) O.C Seacrets, Inc. v. Hotelplan Italia S.p. A., Opp. No. 91190886, _ USPQ2d _ (TTAB, June 7, 2010). Opposer's motion to amend notice of opposition denied. Seeherman, Holtzman, and Cataldo, Administrative Trademark Judges [Dunn] (7 pages).

[Background: On July 1, 2009, O.C. Seacrets, Inc. (OCS) filed a notice of opposition on the grounds of false suggestion of a connection, priority and likelihood of confusion, and fraud. On March 9, 2010, Hotelplan Italia S.p. A. (HI) filed a motion for judgment on the pleadings regarding the fraud claim. On March 29, 2010, OCS filed a response, stating that it did not oppose entry of judgment on the fraud claim, together with a combined motion to amend the notice of opposition to assert a claim that HI lacked a bona fide intent to use the mark on certain goods and services and for summary judgment on that claim. On April 2, 2010, the Board entered judgment in favor of HI on the fraud claim and notified the parties that Hi's time to respond to the motion for summary judgment would be addressed after the Board decided the motion to amend.

This case now comes before the Board for consideration of OCS's motion to amend the notice of opposition opposing an application based on Trademark Act Section 66(a).]

The Board explains that it liberally grants leave to amend pleadings at any stage of a proceeding when justice so requires, unless entry of the proposed amendment would violate settled law or be prejudicial to the rights of the adverse party or parties. The Board explains that in the case of an opposition against a Section 66(a) Madrid application, the Board must determine whether the proposed amendment of the notice of opposition violated Trademark Act Section 68(c)(3). The Board explains that under Section 68(c)(3), following the filing of an opposition to a Madrid application and the Director's notification to the International Bureau of "all grounds" for the refusal of an extension of protection based on the opposition, no further grounds for refusal may be transmitted. The Board explains that the USPTO has promulgated Trademark Rule 2. 107(b), which provides that, once filed, an opposition to a Section 66(a) application may not be amended to add to the grounds for opposition or to add to the goods or services subject to opposition.

In the initial notice of opposition, the Board explains that OCS stated that "applicant lacks a bona fide intent to use SECRETS LINE in connection with the goods or services listed in the opposition and therefore has committed fraud on the USPTO, " whereas the amended notice of opposition stated, "in violation of 15 U.S.C. 1141(f) applicant lacked a bona fide intent to use SECRETS LINE in connection with the following goods and services at the time it filed its application for extension of protection."

The Board explains that the original notice of opposition sets forth the ground of fraud based on Hi's alleged lack of a bona fide intent to use its marks on all the goods and services listed in the application, whereas the proposed amended notice of opposition sets forth the ground that HI lacked a bona fide intent to use its mark on certain goods and services listed in its application at the time it filed its application. The Board notes that the ground of fraud has been omitted from the amended notice of opposition. The Board reasons that the amended notice presents a different and additional ground from those in the original notice of opposition, namely, that HI lacked a bona fide intent to use the mark on certain of the goods and services listed in the identification at the time the application was filed.

OCS argued that the claim that HI lacks a bona fide intent to use was an element of the original fraud claim and that the proposed amendment was therefore a permissible clarification of an existing ground. The Board, however, finds that the initial pleading sets out quite clearly that fraud was alleged as the ground for opposition.

The Board explains that although the particular basis for OCS's claim of fraud in this case was the allegation that HI falsely stated that it had a bona fide intent to use its mark on all of its identified goods and services, HI was apprised of only one ground by Paragraph 13 of the original notice of opposition, that of fraud. The Board states that fraud was the ground against which HI defended in its motion for judgment on the pleadings and the ground upon which judgment for HI was entered by the Board in its April 2, 2010, order. The Board explains that it will not parse an asserted ground to see if any of the elements that go to pleading that ground would independently state a separate ground. The Board finds that the proposed amended notice of opposition impermissibly raises a new ground for opposition to a Madrid application.

Accordingly, the Board denies OCS's motion for leave to amend its notice of opposition.

(1-13) Johnson & Johnson and RoC Internatonal S.A.R.L. v. Obschestvo s ogranitchennoy; otvetstvennostiu "WDS", Opp. Nos. 91182207 and 91184467, _ USPQ2d _ (TTAB, June 16, 2010). Opposer's motion to compel sustained. [Faint], Interlocutory Attorney (10 pages).

[Background: During discovery, Obschestvo s ogranitchennoy; otvetstvennostiu "WDS" (WDS) responded to interrogatories by referencing its business records, pursuant to FED. R. CIV. P 33(d). The documents were written in Russian with no English translation.

This case now comes before the Board for consideration of Johnson and Johnson's (JJ's) and RoC International S.A.R.L. 's (RTs) motion to compel WDS to supplement its responses to interrogatories.]

JJ and RI argued that WDS's invocation of the Fed. R. Crv. P. 33(d) option to produce business records in response to interrogatories is improper in this case and creates an undue burden because the produced records are in a foreign language. JJ and RI seek to compel WDS to supplement its answers to each interrogatory so that they are answered separately and fully under FED. R. CIV. P 33(b)(3).

WDS contended that it is only obligated under Fed. R. Civ. P. 34(b) to produce its business records as they are kept in the usual course of business but is under no obligation to provide an English translation. WDS argued that it has met the FED. R. CRV. P. 33(b)(3) and FED. R. CIV. P 33(d) requirements by twice providing supplemental responses, including responses that do not solely reference documents produced by WDS, and a table describing the documents produced along with their corresponding Bates numbers. JJ and RI contended that even the supplemented interrogatory responses do not point to specific responsive documents by Bates number.

The Board states that a party seeking to invoke Fed. R. Civ. P. 33(d) must meet three conditions: (i) It must identify documents that the responding party knows to contain the responsive information and may not merely agree to provide access to a voluminous collection of records that may contain the responsive information; (ii) it may not rely on the option to produce business records unless it can establish that providing written responses would impose a significant burden on the party; and (ii) even if the responding party can meet the above two requirements and can identify particular documents in which the inquiring party will find its answers, the inquiring party must not be left with any greater burden than the responding party when searching through and inspecting the records. No Fear, Inc. v. Rule 54 USPQ2d 1551 (TTAB 2000).

The Board further notes that the deteirnination and weighing of the parties' respective burdens is only necessary and appropriate if the responding party already has established that it would be unduly burdensome for it to provide written answers to the interrogatories and if its responses to the interrogatories have specified in sufficient detail the business records from which the answers to the interrogatories can be ascertained. The Board emphasizes that the third requirement, if at issue, often will not be met because the responding party will have greater familiarity with its own records and will generally have a lesser burden than the inquiring party when searching through the relevant records.

In this case, the Board finds that WDS has failed to establish that it would be unduly burdensome for it to provide separate and full written answers to the interrogatories at issue. The Board points out that WDS has made no specific mention of what burden it faces in providing written answers, relying instead on its having satisfied its burden by supplementing its answers and providing the Bates number table. The Board further explains that WDS is not entitled to invoke FED. R. CIV. P 33(d) because it has failed to comply with the requirement that the responding party specify the records from which the answer to the interrogatory may be ascertained in sufficient detail to permit the interrogating party to locate and identify the records from which the answer may be ascertained.

The Board states that the business records at issue were produced in response to document requests and would require JJ and RI to translate each document and then attempt to ascertain what portion of any document may contain an answer to a particular interrogatory. The Board notes that the fact that the documents are in the Russian language further complicates matters. The Board explains that where a responding party makes the decision to produce documents in lieu of responding directly to an interrogatory, a duty is imposed on the party to provide documents from which the response to the interrogatory is clearly ascertainable. The Board finds that referencing documents written in a foreign language does not completely fulfill this duty.

Thus, the Board also finds unacceptable WDS's supplemental answers that still refer to unidentified documents in Russian. The Board notes that although WDS may have provided partial written answers to portions of certain interrogatories, doing so does not entitle WDS to provide the rest of the answer in an unidentified document located somewhere in an accompanying document production, particularly where the documents are in a foreign language. The Board finds that WDS's approach clearly thwarts the exchange of discoverable information because it forces the responding party to translate all documents, to wade through each document in an effort to identify responsive information, and then to guess which information was intended to compose the balance of the answer for a given interrogatory.

Consequently, the Board finds WDS's invocation of FED. R. CIV. P 33(d) to be inappropriate. The Board notes that it need not even reach the third prerequisite; however, for the sake of completeness, the Board considers the third prerequisite (i.e., whether the parties would face substantially the same burden in ascertaining the answers to the interrogatories from WDS's business records). The Board finds that WDS's burden is far less than that of JJ and RI, particularly because the documents are in Russian. The Board explains that the documents are in a foreign language with which WDS is more conversant, and WDS is more likely to know where in its records the determinative answers are contained. The Board states that by requiring responses to the interrogatories in English, it is only requiring WDS to summarize and explain what was found and why the responses are contained in the documents.

Accordingly, the Board grants JJ and RFs motion to compel and orders WDS to supplement its answers to each named interrogatory.

(1-14) E. & J. Gallo Winery v. Thomas M. Scott, Cane. No. 92044282, unpubl'd. Petitioner's motion for summary judgment granted in part, denied in part, June 30, 2010. Walters, Walsh, and Ritchie, Administrative Trademark Judges [Coggins] (14 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.

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