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.