Nike sued competitor Already (dba Yums) in New York federal court for infringement of its registered trade dress in the super popular Air Force 1 footwear, an example of which is shown above. Yums filed counterclaims for declaratory relief that there was no infringement and that Nike’s Air Force 1 trade dress was invalid, seeking cancellation of the USPTO federal registration in the process. Upon conducting discovery, Nike determined that Yums’ conduct did not rise to the level of infringement and issued a fairly broad covenant not to sue — by which Nike agreed not to file any claim for trademark infringement or related claims “based on the appearance of any of [Yums'] current and/or previous footwear product designs, and any colorable imitations thereof, regardless of whether that footwear [was] produced, distributed, offered for sale, advertised, sold, or otherwise used in commerce before or after the Effective Date” of the covenant. The covenant also covered Yums’ distributors and customers.

Naturally, the court dismissed Nike’s claims and Nike subsequently sought to dismiss defendants’ counterclaims. In an aggressive move, Yums opposed, claiming it had the right to proceed with its request for cancellation of the Nike trade dress registration.

On January 9, 2013, the Supreme Court affirmed the Second Circuit’s dismissal of defendants’ counterclaim. The broad scope and breadth of the covenant not to sue removed any “case or controversy” between the parties, such that the court no longer had subject matter jurisdiction over the matter. Nevertheless, Yums could still pursue cancellation at the Trademark Trial and Appeal Board.

Practice Notes :

Setting aside the interesting procedural issues in this case, we believe Already v. Nike highlights the following practical considerations for trademarks owners and practitioners:

1. Seek trade dress registration when you can: regardless of the result in this particular case — and whether Yums successfully seeks to cancel Nike’s trade dress registration– companies sometimes overlook seeking proactive protection for their unique packaging or product design or the distinctive appearance and characteristics of their product or service offerings.

2. Refrain from pursuing a potential infringer unless you are reasonably certain your claims rely on strong, compelling senior rights and that any of your underlying registrations are not vulnerable to cancellation. Of course, it’s always possible certain facts will not be revealed until discovery is conducted, but it’s a good idea to slow down and carefully weigh all the facts available before throwing valuable corporate resources into a trademark dispute that could backfire.

3. When issuing a covenant not to sue, make it sufficiently broad in scope, as in this case. Also keep in mind Justice Kennedy’s dissent: covenants not to sue should not routinely be used in an effort to moot litigation that a trademark owner initiated.

The TTAB recently released a non-precedential opinion cancelling registration of this mark,

and rejecting registrant’s parody defense. Where will this opinion fall in the lineup of parody cases?

The opinion arose out of Polo Ralph Lauren Corporation’s cancellation proceeding against Thread Pit, Inc.’s registration of the above-referenced mark in connection with t-shirts and collared polo shirts. Thread Pit sells $5 t-shirts on line. Based on the facts supporting fame in the opinion, I think you know what Ralph Lauren sells. Ralph Lauren alleged likelihood of confusion and dilution and that its mark:

is famous.

The Board’s opinion gave short shrift to Respondent’s argument, “[i]f Petitioner’s Polo Player mark is so famous and recognized, it is unlikely that consumers would believe goods bearing Registrant’s mark came from the same source.” The Board referred to this argument as academic hogwash and failed to even footnote Chewy Vuiton, a 4th Circuit case; in fact, the Board went out of its way to mention its reviewing court, which as we all know, is not the 4th Circuit. The Board stated: “Respondent’s argument . . . is counter to legal precedent of the Board and the Board’s primary reviewing court, the Court of Appeals for the Federal Circuit. As stated by the Federal Circuit: While scholars might debate as a factual proposition whether fame heightens or dulls the public’s awareness of variances in marks, the legal proposition is beyond debate. The driving designs and origins of the Lanham Act demand the standard consistently applied by this court – namely, more protection against confusion for famous marks.”

After an analysis of the parties’ goods (identical), channels of trade (same), classes of purchasers (same), and similarity of marks (similar in commercial impression), the Board returned to the parody defense. Ralph Lauren’s pony definitely came out ahead.

“Parody is not a defense if the marks are otherwise confusingly similar” the Board wrote, quoting Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d, 1581, 1592 (TTAB 2008). This argument seems reasonable and even supported by statute: parody is a defense as long as your parodying mark is not a source indicator says the Lanham Act. In that way, the Lanham Act allows traditional trademark principals such as likelihood of confusion, prior use, and restraints on trade to trump first amendment concerns. But the Board didn’t go that far in explaining its reasoning. Instead, the Board relied more fully on a different basis. Basically, the Board did not believe Respondent was parodying Ralph Lauren’s pony but was instead parodying “a lifestyle.” Indeed, Respondent argued it was parodying the “social elite as embodied by the sport of polo, which is perceived to be a sport reserved for the elite. The rider falling off the horse is the parody of that elite, luxury lifestyle. And of the humor in seeing someone fall off a horse, somewhat like slapstick comedy.” Where Respondent lost its way was in its failure to connect the POLO brand, a symbol of that “elite lifestyle,” to the rest of its argument. Isn’t the Ralph Lauren polo player emblazoned on an $85 polo shirt a symbol of the “elite lifestyle” Respondent is parodying? And wasn’t that the target of Respondent’s parody? Failing to take the argument one step further left the field open for the Board to say, “parodying a lifestyle is not a parody of a trademark” and rely on Elvis Presley, a case with a substantially dissimilar parody versus trademark set of facts.

Even if Respondent had connected those dots, would the Board have been able to rely on the recent TTAB decision in Crackberry to reject the parody argument? In Crackberry, full opinion here, the parody defense didn’t work because the applicant’s services, “online retail store services featuring consumer electronics and telecommunications products,” were found to be “closely related” to the opposer’s handheld devices. As such, the opposer’s goods were not a “juxtaposition of the similar and dissimilar.” In other words, you can’t parody a product when you provide support services for it—that would be akin to making fun of the popular kids while simultaneously ironing their cheerleading uniforms. The Crackberry Board, the Board cited Chewy Vuiton where a $10 dog chew toy was found to be a legitimate parody of Louis Vuitton’s $1190 handbags.

Would Respondent’s $5 t-shirt have been a sufficient “juxtaposition of the similar and dissimilar” when compared to Ralph Lauren’s $85 polo shirt?

Practice pointer: Parody is tough to argue successfully. You better make the judges laugh, and you better have an actual paradoxical product or service, otherwise, you’re just infringing. Cobalt thinks a good tag line making your point clear wouldn’t hurt either:

Watch the 1% Fall

Fiat Group Automobiles S.p.A. v. ISM, Inc., 94 USPQ2d 1111 (TTAB 2010) [precedential]

While FIAT is quite a well-known brand in Europe and other regions of the world, cars made by the Italian company aren’t all available in the U.S.… yet (Fiat reportedly has plans to bring more of its small car models to the U.S. market by the end of 2010). In truth, unless they are foreign car aficionados, most American consumers might not have heard of the brand, at least not extensively; at best, some may remember the tiny Fiat 500 fondly from European movies from the 50s and 60s (or the Pixar film “Cars;” Luigi, the tire shop owner was a 1959 Fiat 500). I personally remember (not so fondly!) the Fiat shown below as my very first car but, again, I grew up in a European country.

In the present case, Fiat filed an opposition at the Trademark Trial and Appeal Board (“TTAB”) against an applicant who filed to register the mark PANDA in conjunction with “automobiles,” based on, among other claims, dilution of Fiat’s “internationally famous” identical mark. Fiat owned a pending intent-to-use application at the PTO for the mark (not a registration) and used it internationally in conjunction with its hugely popular Fiat PANDA model, However, the Italian company was not using the mark in the U.S. commerce quite yet.

Applicant filed a motion to dismiss under FRCP 12(b)(6) for failure to state a claim upon which relief can be granted, arguing that Opposer Fiat had “no reasonable basis for damage in the absence of an allegation of ‘continuing prior use of any form of ‘Panda’ in the United States.’”

While the TTAB notes that activity solely outside of the U.S. is generally ineffective to create or maintain rights in marks within the U.S., it recognizes the possibility “in unusual cases” that activity outside of the U.S. could result in a mark becoming well-known within the U.S., even without actual use in commerce in the U.S.

Here, the TTAB found that Fiat failed to allege “any particular type of use or specific facts which could be proved at trial as demonstrating widespread recognition of its mark in the United States.” The TTAB gave Fiat 30 days to amend its dilution claim accordingly.

Practice Note: Pleading the dilution claim properly was key in this case. The TTAB makes clear that a foreign company seeking to oppose a U.S. mark but hasn’t yet started to use its mark in the U.S. market will need more than mere fame outside of the U.S. to be successful. In this case, the TTAB required:
1) specific pleading of intent to use;
2) filing of an application for registration; AND
3) some basis for concluding that recognition of the mark in the U.S. is “sufficiently widespread as to create an association of the mark with particular products or services, even if the source of the same is anonymous and even if the products are not available in the United States.”
Luckily for Fiat, it was given a second chance to meet all three requirements.

The Trademark Trial and Appeal Board has sustained Opposer, shoe maven Kenneth Cole’s contention that LE TIGRE for clothing is confusingly similar to Applicant’s use of LE TIGRE for pens.

Cole failed to establish that its LE TIGRE mark was famous. The Board pointed out that Cole had not provided sales data or advertising information sufficient to show that the mark was famous. Nevertheless, Cole did provide the Board with evidence of its vast licensing program and unsolicited newspaper articles relating to its LE TIGRE brand, as well as an article entitled “Licensing Seen as a Key to Strong Brand Presence.”

The rather rambling decision serves as a reminder that procedure is as important as argument at the TTAB. Not until page 12 of the 23-page report does the Board begin to address the merits of the case, spending the prior pages addressing issues related to the admissibility of evidence and objections raised by both parties.

On the basis of its 23 year use of the mark LE TIGRE for clothing, coupled with its licensing program and the fact that numerous leather companies also have lines of writing instruments, the Board determined the weight of the evidence suggested consumers would likely believe pens and clothing bearing the LE TIGRE mark emanated from the same source.

The case underscores the convergence of industry that companies and their lawyers are facing when trying to clear trademarks for use. Given the diversity that some companies maintain in their product offerings, the ability to predict whether a mark is confusingly similar is becoming more difficult.

Practice Note The lengthy discussion in this case related to procedure is worth noting, if only as a reminder to check (and re-check) what is admissible under a notice of reliance and what requires a deposition; and further, how to properly time objections

Gary Benson might not remember Serpentine Fire, but he sure felt the heat when the Trademark Trial and Appeal Board sided with Maurice White and rejected Benson’s application to register “WE NEED A REBIRTH OF THE EARTH. EARTH, WIND, AND FIRE (and Design)”.

Benson applied to register the foregoing mark for arranging concerts with ecological themes. The examining attorney must have had her Reasons for passing the application to publication (perhaps she was living in a Fantasy), but in September, Maurice White, singer for the multi-platinum band, opposed the application on the grounds of likelihood of confusion with the band’s trademark for EARTH, WIND & FIRE. While the band was no longer actively producing records, they were still touring due to the incredible Devotion of its fans. The TTAB agreed to Rock That decision in favor of EWF. Sorry, Benson, That’s the Way of the World.

Practice Note: What is interesting about this case (besides the author’s age-revealing bad puns) is primarily procedural in nature. First, the Board notes that Applicant (representing himself) filed an answer that was “argumentative in nature, and does not actually respond to the notice of opposing by affirming or denying opposer’s allegations.” This is a violation of Rule 8(b) of the Federal Rules of Civil Procedure. The TTAB is generally more lenient to non-represented clients and often it does not make financial sense to file a motion asking the Board to strike the answer. That said, attorneys should review improperly filed answers to make certain information is not contained in the answer that is inappropriate (such as letters written in consideration of settlement). Even if the Board grants the applicant leave to refile its answer, the record is cleaner for the Opposer.

The decision also points out another important procedural misstep. Once an Opposition has proceeded to the trial stage, edits to the identification of goods by the Applicant will not generally be accepted unless agreed to by the Opposer (there are some exceptions). TBMP § 514.03. Such an amendment can therefore be used as a bargaining chip with Opposers in cases where the Applicant could refile and likely prevail, thus its significance should not be overlooked.

The Board also notes the applicant tried to introduce evidence in the case by attaching it to his brief. Notwithstanding the Board’s leniency toward pro per parties, it generally does not allow parties to blatantly disregard its rules. The consequence of improperly introduced evidence is to give it no consideration.

Finally, the Board here – and in many other cases – gives great weight to the fact that the Opposer’s mark is fully incorporated into Applicant’s mark. Clients should be advised that “adding” elements to an existing mark (especially one that is arbitrary or fanciful) is not likely to reduce confusion between a client’s mark and an existing mark.

Major League Baseball is calling foul on Don Mattingly and has let him know with their own sentiment: an opposition. MLB is not happy with Mattingly’s choice of logo, claiming in large part that the logo is confusingly similar to its well-recognized MLB logo.

This is not the first inning. In fact, MLB took its original swing against Mattingly’s company, Mattingly Hitting Products, Inc., in mid 2007, when it filed an opposition at the U.S. Patent and Trademark Office. Proceedings were suspended, however, until last month, when Mattingly filed his answer.

Mattingly, aka “Donnie Baseball,” who both began and ended his career with the New York Yankees and was purported to be as popular as Babe Ruth, had a career batting average of .307 and over 220 RBIs. Mattingly also holds the MLB Grand Slam record, His logo contains his retired number, 23, which Mattingly also used for his restaurant, Mattingly’s 23 (which closed down in the late 90s). Mattingly, also maintains an eBay store, called Don Mattingly’s 23.

Mattingly’s logo in question, features the trademark “23” in the shadow image of a player taking a swing. The MLB logo shows a shadow image of a player facing the same direction, and poised for a swing, begging the question of how many ways one can depict a hitter.

Surely, this matter is not over ‘til it’s over, but of note (and also called into question on the TTABlog), is Mattingly’s attorney’s first affirmative defense that “Opposer may have failed to mitigate losses and damages.” Must be American League rules, because that’s a new one for us.

In re General Technologies, Inc., Serial Nos. 77052472 and 77052485 (July 23, 2009)

While never inherently distinctive, a color can function (and register) as a trademark if the applicant can show that the color has acquired secondary meaning and that it is not functional; meaning that the purchasing public identifies the color with the source of applicant’s products or services.

As this case illustrates, applicant’s burden to proof is notoriously difficult to meet, especially when it comes to use of color on a product. Two years ago, the company 3M attempted to register the color purple for sandpaper and failed as well (Saint-Gobain Corp. v. 3M Company, 90 USPQ2d 1425 (TTAB 2007)).

The landmark cases in this area are: In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) (color pink registrable for fiber glass insulation) and Qualitex Co. v. Jacobson Products Co., Inc, 514 U.S. 159 (1995 (green-gold color registrable for dry cleaning press pads). Color can also function as a service mark, which tends to be easier to prove; for example, Tiffany & So. owns a trademark registration for their color blue in conjunction with retail services; UPS owns the color brown for shipping services.

Acquired distinctiveness can be established by direct evidence (like testimonies or consumer surveys) or circumstantial evidence (like years of use or sales and advertising figures) and there is no fixed rule as to the amount of proof necessary. In this case, the TTAB found that the evidence proffered by applicant (use of the color for 10 years) was insufficient to support acquired distinctiveness of the maroon color in conjunction with applicant’s industrial products. Applicant provided no evidence that the public identified or recognized applicant’s maroon anchors. The TTAB found that there was “nothing in the record that show[ed] the the alleged mark [was] being promoted as a source indicator” and affirmed the refusal to register the color as a trademark.

Practice Note: If you are seeking registration of a non-traditional trademark (such as color, sound or trade dress), use it and feature it as a trademark. In the case of color, this might include identifying and highlighting the trademark significance of the color on the company’s web site and in advertising as applied to the goods. This case confirms that, especially in the case of a product color, consumer perception is key.

OpBiz, LLC hearts The TTAB, which ruled recently that OpBiz’ application to register HEART for “cocktail lounges, restaurant and bar services” was not confusingly similar to the registration KOKORO for “restaurant service.” In deciding the matter, the TTAB underscored a position it has taken in the past, namely, that the doctrine of foreign equivalents may not apply when the foreign word has more than one meaning. In this case, although the KOKORO registration identified the translation as “heart,” evidence submitted by the Applicant showed the term has multiple meanings. It was not sufficient for the examiner to rely solely on the translation identified in the application.

The case does not present particularly new law, but is a cavalcade of great procedural reminders. First, the Board finds a good deal of evidence otherwise submitted by the examining attorney was not timely filed, holding her to the same rigorous standard to which it holds the applicant (TBMP 1207.01 (2d ed. Rev. 2004)).

Next, in considering whether the evidence can come in under the judicial notice standard, the Board determines that the examiner has not met her burden. Her dictionary references do not rise to the level of online dictionaries for which the Board will take judicial notice (see, eg, In re Hotels.com L.P., 87 USPQ2d 1100, 1103 (TTAB 2008)). The Board also reminds the examining attorney that her Wikipedia submissions are “not proper subject matter for judicial notice because of its inherent lack of trustworthiness” and are not admissible because the applicant had no opportunity to rebut the evidence. ( see, In re IP Carrier Consulting Group, 84 USPQ2d 1028, 1032 (TTAB 2007)).

With the examining attorney’s record fairly gutted, the Board reviewed the issue under both a likelihood of confusion standard (for which confusion is arguably found) and a doctrine of foreign equivalent standard. Because the mark KOKORO has multiple meanings, and the examiner did not submit evidence that Japanese is routinely spoken in U.S. households, the Board ultimately found for Applicant and reversed the decision of the examiner.

Practice Note: In addition to the foregoing, the final lesson here is “Thank Your Paralegal.” As with many TTAB decisions, the case itself does not particularly espouse new law, but the decision nevertheless is worth reading because the Board reminds us how important procedure, protocol, and immaculate record keeping can be to the final decision. The examiner in this case raises the objection that the evidence submitted by applicant in the appeal should not have been considered because it was not filed prior to the appeal. In fact, there was a computer glitch and the evidence was filed, but did not get uploaded to the TDR. A thorough review of the paralegal’s record-keeping convinced the Board of this fact and the evidence submitted was sufficient for the Board to render a decision in favor of the applicant. The Board also found that the Examiner had been negligent in not notifying the Applicant that she had never received the exhibits, notwithstanding the fact that they were referenced in the Office Action Responses.

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It’s tempting to do, but according to the Federal Circuit, use just ain’t use in commerce until it’s a bona fide offer for sale to the actual intended purchasing public. Theoretical ability to provide the service, brochures that never got sent, and business plans showing intent are not sufficient to establish use.

Aycock Engineering, Inc., founded under a previous name in the 1940’s, was created for the purpose of offering a chartered air transportation service under the mark AIRFLITE. The business plan suggested that the company would need at least 300 air taxi operators in the U.S. to make a go of the enterprise.

In March of 1970, through brochures and letters advertising the AIRFLITE service, Aycock invited all FAA certified air taxi operators to join his AIRFLITE service. In August of 1970, Aycock filed a service mark application to register AIRFLITE, and attached as specimens of use the brochures he used to entice pilots to join his network. Ultimately, in 1974 after a lengthy prosecution fight with the examiner, Aycock’s mark was registered on the Supplemental Register for “[a]rranging for individual reservations for flights on airplanes.”

Aycock continued to market his service to the pilots who would charter his planes, but never actually marketed the service to the general public, notwithstanding his establishment of a customer toll-free number listed on the brochure and a collection of 12 pilots (far short of the 300 the business plan said were necessary to run the service). The evidence did not show that Aycock ever arranged a flight for a passenger.

In 2001, Airflite, Inc. (“Petitioner/Appellee”) filed a petition to cancel Aycock’s registration on the ground of nonuse. The TTAB found that Aycock has failed to offer the services listed in the application and on appeal, the Federal Circuit affirmed.

Although the court addressed numerous factors that led it to affirm the TTAB ruling, its primary focus was on the offer of the service listed in the application. It noted the service was simply not offered to those who would ultimately buy it – the purchasing public. It was not enough to establish a toll-free number and collect pilots to ferry people as intended. Neither was it sufficient to use the mark on the brochure that could eventually go to consumers. The fact that Aycock had never marketed the actual service to the intended consumer was sufficient to establish nonuse of the mark for those services, and subsequently, to cancel his registration.

Practice Note: Many practitioners tell their clients that printing business cards and creating stationery is sufficient to show use in commerce. Still others advise that the creation of brochures that contain a price list are sufficient to establish use. This case suggests (and this firm has always maintained) that there is a distinction between use anywhere and actual bona fide use in commerce. Use in commerce, to be above reproach, must be a bona fide offer for sale of the product for which you are claiming use to the target consumer.

If we didn’t learn the Trademark Trial and Appeal Board was prickly when it comes to procedure from the Blue Man case, we just got another lesson. The Board is handing out some more tough love on counsel. In the precedential decision, Syngenta Crop Protection, Inc. v. Bio-Chek, LLC (Opposition No. 91175091, March 12, 2009), the Board tossed out Opposer’s 2(d) claim on the ground that it had improperly submitted its registration. Without considering its registration for AGROMETER, Opposer was unable to produce sufficient evidence at common law to show priority over applicant’s AGMETER mark, and thus was unable to sustain the 2(d) opposition.

Opposer submitted a photocopy of its licensor’s original registration certificate, dated 2004. A photocopy of a registration certificate may not be adequate proof of the current status of a registered mark. Under Trademark Rule 2.122(d)(2), a trademark registration document submitted should be “issued by the Patent and Trademark Office and show both the current status of and current title to the registration.” The 2004 copy did not confirm the status of the mark in 2007 or 2008.

In addition, Opposer, did not properly introduce the registration, as specified in the Trademark Rules. It did not attach the copy to the opposition; neither did it did not introduce it during testimony; and because applicant never admitted or stipulated to the current ownership and validity of the registration, the registration was not authenticated by waiver.

Because the Board did not consider the registration as prima facie evidence of ownership and first use, the Opposer was forced to rely solely on proof of its prior common law rights, which, the Board established, it had not done sufficient to establish priority.

To make matters worse, the Opposer improperly submitted notices of reliance for some of its documents, such as press releases, internet articles, and sales and marketing materials it wanted to produce. The Board noted that notices of reliance are strictly limited and may be used to introduce only discovery deposition, interrogatory responses, admission or written disclosures of an adverse party, and printed publications or official records. Other evidence must be authenticated by testimony. Accordingly, much of Opposer’s evidence common law evidence was not considered.

As a result of the limited evidence Opposer was allowed to submit, the Board found that it has not established priority and dismissed the case.

Practice Note: This case presents a veritable cavalcade of interesting issues and can serve as a laundry list for what not to do. That said, it’s important to note that even good and careful attorneys can get tripped up on the rules regarding submission of documents and evidence in a TTAB proceeding. There but for the grace of a good associate go any of us.

Non-trademark attorneys, more accustomed to fighting in federal court assume (and tell their clients), that the process at the TTAB mirrors that of federal court proceedings. While the basis of that statement is true, there are myriad distinctions that must be taken into account, as this case illustrates. Counsel should learn those distinctions and advise clients that availing itself of TTAB proceedings is no “walk in the park,” and federal court methods cannot simply be cloned. The good news is, failures by parties work both ways. If your opponent has been sloppy in its submission of evidence, the TTAB has shown that it will not consider it. Careful reading of pleadings, discovery, and motions can be a gold mine for a summary judgment motion.

Procedurally, the Opposer in this case can do what Blue Man Group did in its own matter and appeal the decision in district court. In all likelihood, like Blue Man, it will be able to properly introduce its evidence and – at the very least – establish priority in its mark. Then the question will hinge on confusion.

Finally, this case underscores the importance of a valid federal registration for clients’ important marks. When push comes to shove, a registration, properly introduced, saves time and money, because it is prima facie evidence of a first use date. Moreover, after 5 years of continuous use of the mark after a registration is issued, the mark’s registration becomes incontestable, except under limited circumstances (fraud, abandonment, genericness).

A U.S. District Court in California recently granted summary judgment in favor of Boy Scouts of America (“BSA”) in a trademark infringement suit concerning the mark YOUTHSCOUTS. In Wrenn v. Boy Scouts of America, 2008 U.S. Dist. LEXIS 91913 (N.D. Cal. Oct. 28, 2008), the Court found BSA’s Congressional Charter provides special protection to its exclusive use of “emblems, badges, descriptive or designating marks, and words or phrases.” In addition, the protection afforded by congress provides BSA “need not demonstrate” that the mark YOUTHSCOUTS is likely to cause confusion with BSA’s CUB SCOUTS, EAGLE SCOUT, BOY SCOUTS OF AMERICA, and SEA SCOUTS trademarks. While the Court, “for the sake of completeness,” undertook a traditional trademark infringement analysis under Ninth Circuit precedent, this case was ultimately decided in BSA’s favor through application of the “special protection[s]” afforded by Congress whereby specific trademarks are removed from the general trademark process.

Mr. Wrenn, the plaintiff, is the founder of the National Counsel of Youthscouts, a non-profit founded in 2002 when plaintiff’s daughter was denied the right to become a member of her twin brother’s Cub Scout troop. Mr. Wrenn filed a trademark application for YOUTHSCOUTS with the USPTO. Thereafter, BSA filed a notice of opposition to the YOUTHSCOUTS application with the Trademark Trial and Appeal Board (“TTAB”) (Opp. No. 91157313). In response to the TTAB action, Mr. Wrenn sought to cancel or amend numerous BSA marks on the grounds that the terms “Scouts” and “Scouting” are generic. The TTAB issued a ruling that BSA had valid and incontestable rights to marks CUB SCOUTS, EAGLE SCOUT, and BOY SCOUTS OF AMERICA. Plaintiff also filed a declaratory judgment action in the District Court.

The District Court reviewed the history of BSA and its Congressional Charter. In 1916, Congress passed a charter providing special protections for BSA. The original Congressional Charter provided: “The corporation shall have the sole and exclusive right to use, in carrying out its purposes, all emblems and badges, descriptive or designation marks, and words or phrases now or heretofore used by the Boy Scout of America in carrying out its program.” In 1998, the charter was changed slightly and now provides: “The corporation has the exclusive right to use emblems, badges, descriptive or designating marks, and words or phrases the corporation adopts.”

Ultimately, the District Court granted Defendant BSA’s Motions for Summary Judgment and Judgment on the Pleadings. In doing so, the Court found that “BSA need not demonstrate the likelihood of confusion because it has been granted special protection by Congressional charter,” citing The Last Best Beef, LLC v. Dudas, 506 F. 3d 333, 339 (4th Cir. 2007) and S.F. Arts & Athletics, Inc. v. U.S. Olympic Committee, 483 U.S. 522, 531 (1987).

PRACTICE POINTER: A list of Patriotic and National Organizations recognized by Congress can be found here. If your client is on this list, its Congressional Charter may serve it well in a trademark infringement action.

In re Innovative Technologies Corp. of America, Inc., Serial No. 78691831 (September 15, 2008)

In this recent decision, the Board held that the mark HAIR OF THE DOG for clothing was not likely to be confused with the registered mark LES CHEVEUX DU CHIEN for “custom manufacture of clothing, personal accessories in the nature of jewelry, stoles, scarves, linens, and home décor items.”

The Board found that, while the cited mark, LES CHEVEUX DU CHIEN, translated to “hair of the dog” in English, the marks were “clearly different in appearance and pronunciation,” and did not have “the same idiomatic meaning.” Indeed, the idiom “hair of the dog” in English refers to a hangover cure. This idiomatic meaning, the Board found, was the “predominant meaning” and the “most likely commercial impression” of applicant’s mark HAIR OF THE DOG. On the other hand, the Board noted, a French speaker would “likely see the mark LES CHEVEUX DU CHIEN and perceive it literally as a statement about a dog’s hair.”

The marks, considered as a whole, did not mean the same thing, and, therefore, were not foreign equivalents. The Board further noted that, unlike MARCHE NOIR and BLACK MARKET, the marks HAIR OF THE DOG and its “literal” translation in French LES CHEVEUX DU CHIEN did not have the same idiomatic meaning in both languages. Accordingly, the Board reversed the refusal to register HAIR OF THE DOG.

Comment:

This author is a native French speaker. While in agreement that these two marks are not likely to be confused (if only because of the distinctions between the goods, channels of trade and consumers), she has a très petit bone to pick with the TTAB.

Yes, the marks have different meanings; but not (just) because “hair of the dog” is an idiom and “les cheveux du chien” is not. While the French word “chien” does mean “dog,” the word “cheveux” in LES CHEVEUX DU CHIEN simply does not translate to dog hair in French–or any animal hair for that matter; it means human hair (as in the hair growing on a person’s head). So, when seeing the mark LES CHEVEUX DU CHIEN, a French speaker would not, as the Board stated, “perceive it literally as a statement about a dog’s hair;” a French speaker may, however, perceive it as a statement about a dog wearing a wig (the correct literal French translation for “hair of the dog,” by the way, is “les poils du chien”). Who knew the French had two words for “hair”? Not the applicant apparently; they did not raise this argument in their appeal brief.

Would the Board’s analysis have been different if applicant had presented expert testimony that “les cheveux du chien” did not mean “hair of the dog,” not only idiomatically, but literally? It’s hard to tell. For example, in the recent TTAB decision applying the doctrine of foreign equivalents, In re La Peregrina Limited, 86 USPQ2d 1645 (TTAB 2008) the Board held that the mark LA PEREGRINA was confusingly similar with PILGRIM for jewelry and found that declarations from bilingual individuals, asserting that they would not translate LA PEREGRINA into its English equivalent, were insufficient to rebut the PTO’s evidence.

Practice Pointer:

When responding to a likelihood of confusion refusal based on the doctrine of foreign equivalents, this case reminds us that: 1) if applicant’s mark has any idiomatic meaning, this defense should be raised; and 2) that applicant or applicant’s attorney should try to check with a native speaker whether the marks really mean the same thing in both languages. Dictionaries are helpful, but as this case illustrates, they are not foolproof. While a bilingual expert may or may not sway the Board, knowing whether the words are literal equivalents may at least be helpful in mounting additional arguments against the refusal.

In re Hudson Fairfax Group LLC, Serial No. 76662560 (November 21, 2008)

In this non-precedential decision, the TTAB found that that a web page displaying the words “India Continuum Fund” (shown below) was acceptable to show use of the applied-for mark CONTINUUM for financial investment services.

The Board held that, because the word “India” was geographically descriptive (as the location of the investments) and the word “fund” was generic, the word CONTINUUM was not “a mutilation of applicant’s mark,” even though the words “India” and “fund” appeared in the same size and font type as the mark CONTINUUM on the specimen page. In short, the Board found that CONTINUUM and INDIA CONTINUUM FUND created a similar commercial impression.

To say that this is a surprising result is an understatement!

The TMEP is clear that “the drawing of the mark must be a substantially exact representation of the mark . . . as shown by the specimen.” TMEP § 807.12(a) citing 37 C.F.R. §2.51(a), emphasis added. In addition, the mark on the drawing must be a complete mark, as shown on the specimen of use. When the representation on a drawing is missing an essential and integral portion, it is sometimes referred to as “mutilation,” which was ground for refusal of CONTINUUM in this case. The determinative factor is “whether or not the subject matter in question makes a separate and distinct commercial impression apart from the other element(s).” TMEP § 807.12(a).

In the specimen submitted by applicant in this case, the word CONTINUUM did not stand out in any way from the words “India” and “fund” (same font, size, color, etc.), which, arguably, creates a unitary mark (INDIA CONTINUUM FUND) that has a distinctive commercial impression from the mark CONTINUUM by itself. Longstanding TTAB case law supports this position. For example in In re Semans, 193 USPQ 727 (TTAB 1976), the Board found that the term “KRAZY,” displayed on the specimen on the same line and in the same script as the expression “MIXED-UP” did not in itself function as a registrable trademark apart from the unitary phrase “KRAZY MIXED-UP.” The recent case In re Yale Sportswear Corp., 88 USPQ2d 1121 (TTAB 2008) is also instructive: the mark UPPER 90 for clothing was refused registration because the specimen of use did not match the drawing. The specimen was a hangtag that included a degree symbol after “90,” a difference that “substantially change[d] the overall impression of the mark.”

If a degree symbol is sufficient to create a distinct commercial impression of the mark, why aren’t the words INDIA and FUND?

Practice Pointer: Regardless of this odd decision, make sure your clients submit specimens of use that are substantially exact representations of their marks, as filed. Small variations are generally fine (like punctuation; although an exclamation point has been held to change the commercial impression of a mark). Whenever possible, the mark should stand out from the words surrounding it, i.e. using a different font, size and/or color. For example, in In re Servel, Inc., 181 F.2d 192 (C.C.P.A. 1950) the Board reversed the refusal to register the term SERVEL as a mutilation of the mark SERVEL INKLINGS, where the specimen displayed an insignia between the words “SERVEL“ and “INKLINGS,“ and “INKLINGS” was printed in a large and different kind of type.