Transcript Hot Topics in Trademark Law – Part 1

Hot Topics in Trademark Law
Part 1
by: James Blaufuss
[email protected]
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:
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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:
–
–
–
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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 Bose
Asian 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 Cancellation
IdeasOne 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 Coexistence
CNL 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