Hot Topics in Trademark LawPart 1

by: James Blaufussjblaufuss@uspatent.com

General Topics• Use in Commerce

– Fraud– Specimens of Use– Evidence of Intent to Use

• Likelihood of Confusion– Concurrent Registrations– Coexisting Registrations

• Trademarks and the Internet

• Items of Note

Use in Commerce

Use in Commerce – Historical Perspective

• Before 1989 “Token Use” was acceptable

– The Lanham Act defined “use in commerce” as use “on goods when [the Mark] is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto and the goods are sold or transported in commerce.” Nothing in this earlier definition required use

to be genuine, commercial, or bona fide.

Use in Commerce – Historical Perspective

• Everyone, including the PTO and TTAB, accepted token use as sufficient to establish and maintain trademark rights

• “Token” registrations enjoyed all the legal presumptions a registration is entitled to

• However, courts were loathe to enforce “token” registrations against third parties

Use in Commerce – Historical Perspective

Historical Problems:• Commercially invisible registrations

• “Deadwood” clogging the Register

• Legal uncertainty

• “Blackmail” based on banked trademarks

• After 1984, a foreign Applicant could obtain a US registration without use of the mark in the US (or anywhere in the world) See Crocker National Bank v. Canadian Imperial Bank of Commerce, 223 USPQ 909 (TTAB 1984)

Trademark Law Revision Act of 1988• Intent to Use applications added• Registration term reduced from 20 to 10 years• “Use” in commerce redefined to require “bona

fide use of [or intent to use] a mark in the ordinary course of trade, and not made merely to reserve a right in a mark”

• This definition applies to sworn statements in:– Use based applications– Intent to Use applications– §8 affidavits– renewal application affidavits

Medinol Ltd. v. Neuro Vasx, Inc. 67 USPQ2d 1205 (TTAB 2003)

• Mark registered for stents and catheters • Registrant only used the mark on catheters• The TTAB canceled the registration in lieu of

deleting stents from the registration• “[Registrant’s] knowledge that its mark was

not in use on stents – or its reckless disregard for the truth – is all that is required to establish intent to commit fraud in the procurement of a registration” Medinol at 1209

• “The appropriate inquiry is not into the registrant’s subjective intent, but rather into the objective manifestation of that intent”

“Curing” Fraud

Zanella v. Nordstrom, Opposition No. 91177858 (2008)

• Correction of a false statement regarding use, if made before a registration has been challenged, creates a rebuttable presumption that the registrant did not intend to commit fraud

• In this case, registrant corrected its registrations by omitting the unused items from the §8 Declaration

Not “Fraud”

Kathleen Hiraga v. Sylvester J. Arena, 90 USPQ2d 1102 (TTAB 2009)

• Fraud asserted because Applicant had not used the mark in commerce by the claimed first use date

• TTAB: a false statement regarding the first use date does not constitute fraud "because the first use date is not material to the Office's decision to approve a mark for publication“

• TTAB: "the critical question in this case is whether the mark was in use in connection with the identified goods as of the filing date of his use-based application"

“Fraud” Limited?

G&W Laboratories v. G W Pharma, 89 USPQ2d 1571 (TTAB 2009)

• Opposer relied on two registrations for G & W, each registration in classes 5 and 35, but the opposer never used the marks for class 35 services

• “a multiple-class application can be viewed as a series of applications for registration of a mark in connection with goods or services in each class, combined into one application. As a general matter, the filer of such an application is in the same position it would be had it filed several single-class applications instead”

• “each class of goods or services in a multiple class registration must be considered separately when reviewing the issue of fraud, and judgment on the ground of fraud as to one class does not in itself require cancellation of all classes in a registration”

In re Bose Corp 91 USPQ2d 1938 (Fed. Cir. 2009)

• TTAB canceled Bose’s mark for fraud in the §8/9 renewal that attested continued use of discontinued tape players 88 USPQ2d 1332 (TTAB 2007)

– Affiant knew that Bose had discontinued selling tape players when signing §8/9 renewal

– At the time of the §8/9 renewal, Bose continued to repair previously sold tape players

– Transportation of tape players for repairs did not constitute use in commerce

– Affiant's belief that transportation of repaired goods constituted use was not reasonable

In re Bose Corp continued…• The CAFC reversed the TTAB’s fraud ruling

– The TTAB “erroneously lowered the fraud standard to a simple negligence standard” “[b]y equating ‘should have known’ with subjective intent”

– The CAFC found “no substantial evidence that Bose intended to deceive the PTO in the renewal”

• The CAFC held that the registration needed to be restricted to reflect commercial reality

In re Bose Corp continued…• But, the CAFC did not close the door on fraud

– “because direct evidence of deceptive intent is rarely available, such intent can be inferred from indirect and circumstantial evidence. But such evidence must still be clear and convincing, and inferences drawn from lesser evidence cannot satisfy the deceptive intent requirement” at 1941

– The CAFC distinguished its earlier Torres decision where Applicant changed its mark but submitted its older, registered mark, as a specimen with its renewal application A §9 renewal requires the submission of a

specimen showing current use

Current TTAB Rulings in Light of Bose

Enbridge v. Excelerate Energy Limited Partnership, Opposition No. 91170364 (October 6, 2009) [precedential]

• Applicant admitted that it had never used the mark for one of the listed services– Applicant characterized the statement in its

application as “an inadvertent, honest mistake”– Applicant also characterized its subsequent

amendment [after the opposition was filed] as correcting “its error in good faith”

• TTAB: “whether applicant knowingly made this representation of use with the intent to deceive the USPTO remains a genuine issue of fact to be determined at trial”

Current TTAB Rulings in Light of Bose

Societe Coop. Vigneronne Des Grandes Caves Richon-Lezion v. Albrecht-Piazza, Opp. No. 91190040 (9-2009) • The TTAB required the counterclaimant to

amend its fraud-based petition for cancellation in view of the Bose decision

• The TTAB did not accept counterclaimant’s "knew or should have known" allegation

• Actual knowledge required to support a fraud allegation

Current TTAB Rulings in Light of BoseAsian and Western Classics B.V. v. Lynne Selkow, 92 USPQ2d 1478 (TTAB 2009)Requirements to plead fraud:• “any allegations based on ‘information and belief’

must be accompanied by a statement of facts upon which the belief is founded”

• “it must be asserted that the false statements complained of were made willfully in bad faith with the intent to obtain that to which the party making the statements would not otherwise have been entitled”

• “A party making a fraud claim is under a heavy burden because fraud must be “proven ‘to the hilt’ by clear and convincing evidence,” leaving nothing to speculation, conjecture, or surmise; any doubt must be resolved against the party making the claim.”

• “The factual question of intent is particularly unsuited to disposition on summary judgment.”

Specimens of Use

In re Anderson, Serial No. 76497832 (August 4, 2009)

• Application to register TOMORROW for more than 100 items in classes 1 and 3, including inter alia, photographic chemicals, food preservative compositions, after-shave gel, baby oil, boot cream and dish detergents

• The Examining Attorney required additional specimens of use due to the wide range of unrelated goods

• Applicant did not file specimens and appealed• He lost

Submitted Specimens of Use – In re Anderson

Evidence of Bona Fide Intent to Use

L.C. Licensing v. Berman, 86 USPQ2d 1883 (TTAB 2008)

• Opposition sustained on the grounds of likelihood of confusion and lack of a bona fide intent to use

• Applicant admitted he had no documents evidencing his intent to use

• Applicant attested to his intent for at least some of the goods

• “The mere assertion of an intent to use the mark without corroboration of any sort, whether documentary or otherwise, is not likely to provide credible evidence to establish a bona fide intention to use the mark”

Evidence of Bona Fide Intent to Use

Intel Corp. v. Emeny, Opposition No. 91123312 (May 15, 2007)

• Applicant’s listed goods included more than 200 items of clothing, search engine services and digital transmission services

• Applicant failed to produce any objective evidence of a bona fide intent to use his mark:– No evidence of any business plans– No evidence of any suppliers for the recited

goods • The “failure to produce any object evidence of

Intent to Use” is sufficient to rule for opposer

Evidence of Bona Fide Intent to Use

Honda v. Winkelman, 90 USPQ2d 1660 (TTAB 2009)

• §44(e) application based on a German Registration

• Applicant’s interrogatory responses stated that he “has not had activities in the US and has not made or employed a business plan, strategy, arrangement or methods there,” and “has not identified channels of trade that will be used in the US”

• Summary judgment granted because there was no evidence of bona fide intent to use the mark in the US

Evidence of Bona Fide Intent to Use

Montblanc v. United Brands, Opposition No. 91185637 (2009) • The Board granted summary judgment that

Applicant lacked a bone fide intent to use• The Board held that the absence of any

documentary evidence regarding an Applicant’s bona fide intention to use a mark in commerce is sufficient to prove that an Applicant lacks such intention … unless other facts are presented which adequately explain or outweigh the lack of documentary evidence

Evidence of Bona Fide Intent to Use

DC Comics v. Silver, Opposition No. 91176744 (August 21, 2009) • Opposition sustained because Applicant lacked a

bone fide intent to use• Applicant stated on deposition that he had not formed

a business at the time of filing, he had no experience in marketing or manufacturing the goods, was unaware of any relevant FDA regulations and had no specific education to develop the goods and further had not engaged an engineer or marketing firm since filing

• Applicant had “no documents concerning any efforts to exploit or commercialize any product under [the Mark]”

Likelihood of Confusion• Concurrent Registrations• Coexisting Registrations

Concurrent Registrations

Frisch's v. Big Boy, Concurrent Use No. 94002189 (August 11,2009)

• Consent agreement, Frisch’s entitled to register BIG BOY for “tarter sauce, pies and restaurant services” for Indiana and Kentucky and certain counties in Tennessee and Ohio.

• The16 registrations owned by Big Boy were restricted to the rest of the US

• TTAB: The parties agreement will minimize or eliminate the possibility of any confusion that might otherwise be caused by the parties’ respective uses of their marks

Frisch's v. Big Boy, Cont.

© 2009 TTABlog

Frisch's v. Big Boy, Cont.

• The TTAB observed that: “while stipulated agreements are not binding on the Board, there can be no better assurance of the absence of a likelihood of confusion, mistake, or deception than the parties' careful consideration of their commercial interests ”

• The parties agreed that “neither party will use or advertise its marks in the other party's territory”

• The parties stated that they “do not know of any instances of actual confusion caused by the parties' respective uses of their marks”

Frisch's v. Big Boy, Cont.

• The parties agreed in their non-compete agreement to, inter alia:– Use the rights so as to not materially detract

from the BIG BOY reputation– Maintain the reputation for the distinctive

standards, qualities and attributes of BIG BOY products and services

– Not permit gambling or other adult themes or activities or atmosphere (such as a “Hooters”)

– Share the cost of defending BIG BOY rights (percentage based on number of restaurants)

Concurrent Registrations

Overwaitea v. Urban Fare, Concurrent Use No. 94002254 (Sept. 9, 2009) • In judgment by default, Canadian Applicant

granted registration of URBAN FARE for retail grocery store services everywhere but MN

• MN registrant had previously registered URBAN FARE in MN for soups, chicken and vegetable stocks and broths

• Applicant established there is no likelihood of confusion because it operates two stores in Vancouver a mere 24 miles from the US border (in Washington)

Concurrent Registrations

In re Davey Products, Serial No. 77029776 (August 7, 2009)

• Applicant filed to re-register its mark after prior registration lapsed under §8

• New application was rejected in view of two registrations for related goods that co-existed with Applicant’s prior registration– Both cited registrations existed when Applicant’s

original registration issued• “the co-existence of two confusingly similar

marks … does not justify the addition to the Register of what may be yet another confusingly similar mark”

Partial CancellationIdeasOne v. Nationwide Better Health, 89 USPQ2d 1952 (TTAB 2009) • Applicant sought to register mark for dietary

supplements but was blocked by Registrant’s similar mark for consulting services in the field of healthcare

• Applicant alleged that Registrant had never used its mark for dietary supplements and sought a limitation to Registrant’s Registration

• §18 provides an avenue of relief for a party … who faces a cited registration with the no longer permitted identification of goods … and believes that a restriction may serve to avoid a likelihood of confusion – Partial cancellations are also applicable for descriptions of

goods that are too broad or ambiguous

Mark Coexistence

Hormel v. Spam Arrest, Cancellation No. 92042134 (November 21, 2007)

• Hormel lost petition to cancel a registration for SPAM ARREST for computer software, namely software designed to eliminate unsolicited commercial electronic mail

• Registrant and Board acknowledge that Hormel’s SPAM mark was famous, yet the Board found that “spam” is a generic term for unsolicited commercial e-mail

• The Board gave “great weight” to the fame of SPAM, but “that fame does not extend to computer software”

Mark Coexistence

In re Wente Bros., Serial No. 77314718 (August 6, 2009) • Applicant filed for ANDIAMO for wine and was

rejected over the identical mark for restaurant services

• Examiner: restaurants commonly serve wine and wineries commonly feature restaurants

• Reversed, TTAB: The law requires “something more than that … identical marks are used for food products and for restaurant services”

• The evidence lacked that “something more” • “The statute refers to likelihood, not the mere

possibility, of confusion”

Mark Coexistence

In re Constellation Wines U.S., Serial No. 78803750 (April 2008)

• Affirmation of a §2(d) refusal to register mark for wine, finding the mark confusingly similar to similar mark for restaurant services

• Here, the examining attorney provided that “something more”:– 3rd-party registrations for both identifications

under the same mark– Articles, advertisements and direct evidence of

restaurants offering ‘private label’ wines under the name and mark of the restaurant

Mark CoexistenceCNL Tampa v. Palazzolo, Opposition No. 91163724 (March 2007)

• PELAGIA for “clothing…” was not confusingly similar to the identical mark for “restaurant services”

• Opposer claimed that clothing “is within the natural scope of expansion for restaurant services” citing 102 3rd-party registrations encompassing both restaurant services and clothing

• 3rd-party registrations “may have some probative value to the extent that they serve to suggest that the listed goods and/or services are of a type that may emanate from a single source,” but the Board refused to draw the inference that these goods and services are “legally related products”– Need that “something more”

Mark Coexistence

In re Hyundai Motor America, Serial No. 78889340 (Sept. 2009) • Application for mark for automobiles refused

based on registration of mark for tires– Examining Attorney followed In re Jeep Corp.

holding tires closely related to automobiles– On appeal, the Examining Attorney argued that

the evidence of record supported registration• TTAB reversed refusal, distinguishing in re

Jeep Corp. on its facts and finding no per se rule to overturn

In re Hyundai Facts• Nothing in the record established a single source for both

tires and automobiles• “Virtual separation” of the channels of trade: only 2-4% of

aftermarket tires sold at dealerships• Consumers of both goods exercise a high degree of care

– Automobiles are expensive– Only specific tires can be used with particular automobiles

• Sidewall markings on tire often prominently display manufacturer’s name

• Several marks coexist for both goods (both real world and 3rd-party registrations);– Ford EXPLORER and EXPLORER tires by Kelly Tires– Honda PILOT and PILOT tires by Michelin– Dodge CHARGER and CHARGER tires by Kelly Tires