Renown of "THE BLACK DOG" Marks Brings TTAB 2(d) Victory Over "YELLOW DOG NANTUCKET" for Clothing

In a copiously-illustrated, 54-page decision, the Board sustained Section 2(d) oppositions to registration of the mark YELLOW DOG NANTUCKET in standard character and design form (shown below right) for T-shirts [NANTUCKET disclaimed], finding the marks likely to cause confusion with Opposer's numerous registered and common law marks, including the standing dog design shown below left, the phrase THE BLACK DOG, and combinations and variations thereof, for clothing and other goods and services. The Black Dog Tavern Company, Inc. v. Juras, Oppositions Nos. 91152364 and 91153557 (December 2, 2008) [not precedential]. [TTABlog note: Because yours truly served as co-counsel to Opposer, along with General Counsel Emily LaPointe, this posting will hit just the high points, without editorial commentary.]


The Board began by finding that, based on "significant sales, extensive advertising and continuous use of Opposer's marks for almost thirty years for dining services and over two decades on a wide range of merchandise" and on the "ongoing, favorable publicity opposer's services and products have received," Opposer's marks "have achieved a degree of fame, and serve as strong indicators of source for Opposer's products and services." This factor "strongly favors a likelihood of confusion."


The Board next found the goods to be identical in part and otherwise closely related, and the channels of trade (brick-and-mortar and online stores) identical. The parties' common goods, T-shirts, are impulse items purchased with "ordinary care, at best."


Turning to the marks, the Board found "the accumulated points of similarities in appearance and commercial impression" to be "quite remarkable, including the general size and style of fonts employed in the wording positioned between the respective standing dog images."

Hence, based upon the entire record herein – with the various combinations of dog silhouettes, the word "DOG," font choices, listing popular localities in the Cape and the islands, precisely the same placement on T-shirts and other identical items of clothing, and especially in light of the renown of opposer’s marks in connection with T-shirts on the Cape and the islands – we find that the degree of similarity in commercial impressions with applicant's composite mark is strongest when comparing opposer's common law composite mark as used above, as opposed to singling out the similarities of any two registered marks.

In sum, "the confusing similarity of the marks is a factor that strongly favors a finding of likelihood of confusion in this case."


Applicant Juras argued that Opposer's marks were weakened by the existence of a dozen third-party registrations for marks containing the words "BLACK DOG," some with a depiction of a black dog. But Juras was barking up the wrong tree: the Board found that these registrations did not undermine Opposer's marks because the goods and services involved were not closely related to those of Opposer, and/or the designs involved were "quite different" from those at issue here. Third-party Internet uses of "Black Dog" were not probative since there was no evidence of the nature and extent of use of those marks.

Next, Juras pointed to the lack of proof of actual confusion, but the Board noted that likelihood of confusion, not actual confusion, is the proper test. Moreover, Juras's evidence of use of his marks was so scanty that the absence of evidence of actual confusion was "meaningless."

Opposer vehemently urged that Juras adopted his marks in bad faith. The Board deemed it unnecessary to find bad faith "in order to conclude that there is clearly a likelihood of confusion herein."

Nonetheless, in light of the renown of opposer’s marks, applicant’s professed interests in images of dogs, his years of formal education and professed business acumen, and his having lived in Nantucket for one or more high-tourist seasons, we find that his claimed ignorance of opposer’s well-known enterprise and branding success prior to adopting his marks and filing the involved applications strains credulity. As a newcomer, under this set of circumstances, applicant had a duty to select a mark that would not give rise to a likelihood of confusion. e.g., Burroughs Wellcome Co. v. Warner-Lambert Co., 203 USPQ 191, 200-01 (TTAB 1979).

Considering the relevant evidence, the Board ruled that confusion is likely, and it sustained the oppositions.

(1) Cape Cod,(2) Martha's Vineyard, (3)Nantucket.
Text Copyright John L. Welch 2008.

Despite Applicant's Concession of Most duPont Factors, Including Fame, TTAB Grants 2(d) Summary Judgment Based on Differences in Marks

Despite Applicant's concession of most of the du Pont factors, including the fame of Opposer's BIG O and BIG FOOT marks for vehicle tires, parts and accessories, the Board granted summary judgment to 67 and Latham, LLC, finding confusion unlikely with the applied-for marks A BIG RIG RESORT and DANNY'S A BIG RIG RESORT for "retail store services featuring convenience store items and gasoline." Big O Tires, Inc. v. 67 and Latham, LLC, Oppositions Nos. 91178685 and 91178688 (November 18, 2008) [not precedential].



Applicant contended that the first du Pont factor, the similarity or dissimilarity of the marks, outweighed all other factors. The Board agreed. It catalogued the marks' differences in sound and appearance, but found the "main difference" to be in their connotations:

The word "big" is defined, inter alia, as "large or great in dimensions, bulk, or extent [a big house]; also large or great in quantity, number, or amount [a big fleet]." Merriam-Webster Online Dictionary, 2008. There is nothing in the record to suggest any particular meaning of either of opposer's marks in the context of tires. The only meanings we can attribute to opposer's BIG O mark is a large letter "O" or a big tire (the letter suggesting the tire's shape). The marks BIGFOOT and BIG FOOT connote a large foot, good traction of the tire on the road, or "bigfoot," otherwise known as Sasquatch. On the other hand, the phrase "big rig" has a distinct meaning as a term separate and apart from the two individual words "big" and "rig" that make up the phrase.

Applicant submitted a dictionary definition of "big rig" as a "tractor-trailer truck."

Thus, applicant's marks A BIG RIG RESORT and DANNY’S A BIG RIG RESORT connote a place of relaxation for drivers of "big rigs"; in other words, a truck stop where drivers of tractor-trailer trucks may take a break or purchase convenience items and gasoline. The marks also play on the meaning of the word "resort" as an upscale vacation spot, "a place frequented by people for relaxation or recreation: a ski resort." The juxtaposition of such connotation to an establishment that sells fuel and convenience items to drivers of tractor-trailer trucks creates an irony that is not found in opposer's marks.

As to overall commercial impression, Opposer's marks identify an object, whereas Applicant's marks "suggest leisure, a place for long-haul truck drivers to stop and rest, a 'resort for big rigs.'"


The Board therefore concluded that the marks differ in sound, connotation, appearance, and commercial impression. These dissimilarities are so great as to outweigh the other du Pont factors, and so the Board granted Applicant's motion for summary judgment and dismissed the opposition.

Text Copyright John L. Welch 2008.

TTAB Says "CONTINUUM" Mark is Supported by Specimens Displaying "INDIA CONTINUUM FUND"

In a surprising decision, the Board reversed a refusal to register the mark CONTINUUM for financial investment services, finding that Applicant's drawing (for the word CONTINUUM in standard characters) is a substantially exact representation of the mark as shown on Applicant's specimens of use (depicted below). In re Hudson Fairfax Group LLC, Serial No. 76662560 (November 21, 2008) [not precedential].


Rule 2.51(a) requires that "the drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods and/or services." The Examining Attorney understandably contended that "the specimens show the mark as INDIA CONTINUUM FUND, and therefore that CONTINUUM, shown in the drawing, is a mutilation of that mark."


The Board, however, noted that FUND is a generic term for Applicant's services, and that INDIA is geographically descriptive because it "identifies the geographic region in which applicant invests." Thus neither INDIA nor FUND have source-identifying significance in Applicant's mark. Relying on In re Raychem Corp., 12 USPQ2d 1399 (TTAB 1989) [mark TINEL-LOCK supported by specimen displaying TRO6AI-TINEL-LOCK-RING], the Board sided with Applicant:

"... although the words INDIA and FUND appear in applicant’s specimens in the same size and type style as the word CONTINUUM, because INDIA and FUND do not have trademark significance, the word CONTINUUM for which applicant seeks registration and which appears in the drawing of the application is not a mutilation of applicant’s mark, and applicant’s specimens are acceptable to show use of the applied-for mark."

The Board therefore reversed the refusal to register.

TTABlog comment: What? I'm sorry, but this makes no sense to me. How is CONTINUUM a "substantially exact representation" of INDIA CONTINUUM FUND? Rule 2.51(a) doesn't say that the mark on the drawing must be a substantially exact representation of the dominant portion of the mark shown on the specimens. Nor does it require a substantially exact representation of the source-identifying portion of the mark shown on the specimens.

What about the TINEL-LOCK case? That makes no sense either. Moreover, in Raychem, the "independent significance" of the term "TINEL-LOCK" was "supported by applicant's use of the mark without the part number or generic designation in its advertising material." Here, there was no indication that the word CONTINUUM was used by itself in Applicant's advertising materials. Thus I submit that Raychem is distinguishable on its facts.

Text Copyright John L. Welch 2008.

Precedential No. 51: TTAB Dismisses Morehouse and Laches Defenses, Denies Summary Judgment in 2(d) Opposition

In a quasi-procedural precedential ruling, the Board denied Applicant Jim Hugunin's motion for judgment on the pleadings (which the Board treated as a motion for summary judgment in view of Hugunin's submission of evidence outside the pleadings). Once again the toothless tiger known as the Morehouse defense was rejected by the Board, this time because Applicant's prior registration for LAND O LAKES had expired. As to his laches defense, Opposer Land O' Lakes churned up enough factual issues to preclude the issuance of summary judgment. Land O' Lakes, Inc. v. Hugunin, Opposition No. 91182399 (November 20, 2008) [precedential].


The Morehouse defense: The never-popular Morehouse defends stands for the proposition that, as a matter of law, an opposer cannot be damaged by a second registration when the applicant already has an existing, unchallenged registration of the same mark for the same goods. [TTABlog query: why would applicant want a second, identical registration anyway?] Hugunin's problem was that his first registration had expired, so he couldn't claim that a new registration would cause no additional damage to Opposer.

Hugunin feebly claimed that, although his registration expired on June 7, 2006, the PTO didn't enter the cancellation until March 10, 2007, by which time Hugunin had filed his new application. The Board pointed out, however, that the registration was dead on June 7, 2006, regardless of when the PTO "undertook the ministerial function of entering the cancellation into the USPTO database."

Laches: Hugunin claimed that laches applies because Land O' Lakes did not object to his earlier registration. The Board noted that the period of existence of the now-expired registration could be considered part of the delay. However, Hugunin had to show that he suffered "material prejudice as a result of the delay," and that he failed to do:

"[A]pplicant has not shown the absence of genuine issues of material fact as to whether opposer unreasonably delayed in failing to object to the prior registration during the time that it was in existence, or whether applicant suffered material prejudice as a result of the alleged delay."

Moreover, the named registrant of the earlier registration was "Land O Lakes Tackle Company," not Mr. Hagunin. A genuine issue existed as to whether Hugunin is a successor in interest to that registrant. And more factual issues arose as to Hugunin's claim that he sent a cease-and-desist letter to LOL in December 2000.

The Board therefore denied Hugunin's motion and set a new trial schedule.

Text Copyright John L. Welch 2008.

Ron Coleman: "Tackiness not grounds for refusal to register"

At his Likelihood of Confusion blog, Ron Coleman comments (here) on the pending TTAB appeal in In re Chippendales USA, LLC, Serial No. 78666598 [Appeal from the PTO's refusal to register the apparel configuration shown below for "adult entertainment services, namely exotic dancing for women in the nature of live performances" on the ground that the design is not inherently distinctive].


The PTO has conceded that the Chippendale "outfit" is product packaging rather than product shape [Of course, if it were the latter, the design could not be inherently distinctive]. But the PTO, applying the Seabrook test, maintains that the package is not inherently distinctive. The Board will hear the appeal on December 4th at 10AM. Ron seems to think Chippendales will win.

The Las Vegas Trademark Attorney joins the party here.

Text Copyright John L. Welch 2008.

TTAB Posts December 2008 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled ten (10) hearings for the month of December, as listed below. These hearings will be held in the East Wing of the Madison Building. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]. Briefs and other papers for these cases may be found at TTABVUE via the links provided.


December 2, 2008 - 2 PM: In re SiliconSystems, Inc., Serial No. 78447267 [Section 2(e)(1) mere descriptiveness refusal of SIDRIVE for "flash based solid state digital storage media"].

December 3, 2008 - 10 AM: Mary Queen of the Third Millenium, Inc. v. The Foundation for a Christian Civilization, Inc., Opposition No. 91157073 [Opposition to registration of the apparel configuration depicted below as a mark for "clothing, namely ceremonial habit worn by distinguished religious representatives in certain ceremonies" and for "promoting public awareness of the need for healthy and religious families in the United States," on the grounds of lack of ownership, failure to function as a trademark, and likelihood of confusion].


December 3, 2008 - 11 AM: In re Franco Ferrari S.r.l., Serial No. 76545104 [Section 2(d) refusal to register the mark shown below for textile fabric, textile goods, and clothing, in view of the registered marks FRANCO FERRARO for various clothing items, and FERRARI for clothing and textile goods].


December 4, 2008 - 10 AM: In re Chippendales USA, LLC, Serial No. 78666598 [Refusal to register the apparel configuration shown below for "adult entertainment services, namely exotic dancing for women in the nature of live performances" on the ground that the design is not inherently distinctive].


December 9, 2008 - 10 AM: In re Cabot Safety Intermediate Corp., Serial No. 76903884 [Section 2(d) refusal to register the mark SEAHAWK for "protective eyewear, safety eyewear, safety goggles, and parts and components thereof" in view of the registered mark SEAHAWK for binoculars].

December 9, 2008 - 2 PM: In re Steve Dworman Enterprises, Inc., Serial No. 76674485 [Section 2(d) refusal of IT REALLY WORKS for "TV and film production for others to make infomercials" in view of the registered mark IT WORKS for "preparing and placing advertisements for others, business marketing consulting services, and developing promotional campaigns for businesses"].

December 10, 2008 - 10 AM: In Brain State Technologies, L.L.C., Serial No. 77092018 [Section 2(e)(1) mere descriptiveness refusal of BRAIN STATE CONDITIONING for "training services in the field of neurofeedback"].

December 11, 2008 - 2 PM: A.V. Imports, Inc. v. Spirits International N.V., Cancellation No. 92043340 [Petition for cancellation of a registration for the mark RUSSKAYA for vodka, on the ground of abandonment].


December 16, 2008 - 11 AM: Wal-Mart Stores, Inc. v. Loufrani, Oppositions Nos. 91150278, 91154632, and 91152145 [Two Wal-Mart oppositions to registration of the SMILEY & Design mark shown below left (face design disclaimed) for hundreds of identified goods and services, on the grounds of likely confusion with Opposer's previously-used design mark (below right) and failure to function as a mark (lack of inherent distinctiveness); Loufrani opposition to registration of the design mark shown below right for "retail department store services" on the grounds of abandonment and failure to function as a service mark].


December 17, 2008 - 2 PM: In re Udor U.S.A. Inc., Serial No. 78867933 [the product configuration shown below as a trademark for "metal spray nozzles" on the ground of functionality and, alternatively, lack of acquired distinctiveness].


Text Copyright John L. Welch 2008.

New TTABlog Trademark Jobs Posting

Experienced trademark prosecution attorney seeks opportunity in Los Angeles area. Proven track record of successfully undertaking full and immediate responsibility for trademark files. Experience includes domestic and international prosecutions, maintenance, portfolio management, counseling, licensing, TTAB, UDRP and litigation. Prosecuted over 100 federal trademark applications. Modest book. Admitted in CA. Email John Welch to set up an introduction. [Visit the TTABlog Trademark Jobs Blog (here).]

TTABlog Guest Comment: Michael E. Hall on "The PTO’s Dubious New Trademark Rule 2.85(f) Concerning Identifications in Madrid Applications"

On November 17, 2008, the USPTO issued its latest "Miscellaneous Changes to Trademark Rules of Practice," 73 CFR 67759 et seq. (pdf here). According to the PTO, these changes are intended "to clarify certain requirements for applications, intent to use documents, amendments to classification, requests to divide, and Post Registration practice; to modernize the language of the rules; and to make other miscellaneous changes. For the most part, the rule changes are intended to codify existing practice, as set forth in the Trademark Manual of Examining Procedure."


Former Examining Attorney Michael E. Hall strenuously takes issue with one of the rule changes, in the article presented below.

The PTO’s Dubious New Trademark Rule 2.85(f) Concerning
Identifications in Madrid Applications

by Michael E. Hall

The holder of an international registration issued by WIPO’s International Bureau (“IB”) may seek an extension of protection to the United States under Section 66(a) of the Trademark Act. See generally T.M.E.P. § 1904 et seq. The USPTO has taken the position that if such a Madrid application contains an identification of goods/services that is indefinite according to the USPTO’s standards for specificity in identifications, the USPTO will require the Madrid applicant to provide a definite identification that is within the scope of the international class assigned by the IB to those goods/services. The USPTO rewrote the relevant sections of the 5th edition of the T.M.E.P., issued in September 2007, to reflect its position (e.g., T.M.E.P. § 1904.02(b)) and issued Examination Guide 3-08 in July 2008 to further explain its position.

On November 17, 2008, the USPTO published its Notice of Final Rulemaking (pp. 67762-63 deal with this issue), indicating that it has re-designated Trademark Rule 2.85(g) as 2.85(f), and that new Rule 2.85(f) provides as follows:

Classification schedules shall not limit or extend the applicant’s rights, except that in a section 66(a) application, the scope of the identification of goods or services for purposes of permissible amendments (see § 2.71(a)) is limited by the class, pursuant to § 2.85(d).

This new rule, effective January 16, 2009, replaces old Rule 2.85(g), which provided that, “Classification schedules shall not limit or extend the applicant’s rights.” In its own words, the USPTO is amending the old rule “to note an exception that in section 66(a) applications, the scope of the identification of goods or services for purposes of permissible amendments is limited by the class.” (p. 67763, column 3)

In its response to comments submitted by Fross Zelnick asking the USPTO to reconsider, the USPTO justifies its position (p. 67762, column 3) by suggesting that its hands are tied by the provisions of the Madrid Protocol:

Under Article 3(2) of the Madrid Protocol, the IB controls classification in an international registration. Under section 70(a) of the Trademark Act and Articles 6(3) and 6(4) of the Protocol, a section 66(a) application and any resulting registration remains part of and dependent upon the international registration. Since the international registration is limited to those classes that the IB has assigned, no legal basis exists for registration of the mark as to goods/services that fall outside these classes under U.S. standards.

Fross Zelnick also suggested that the USPTO permit Madrid applicants to amend their identifications in the same manner as other applicants, but implement a “pseudo classification” system similar to TESS’ current “pseudo mark” search field. In response, the USPTO again made its “no legal basis” argument (p. 67763, column 1):

The Office is developing such a system, to ensure that relevant marks in section 66(a) applications will be found in a search of Office records, even if the IB and USPTO classifications differ. However, that does not change the fact that no legal basis exists for registration of the mark in the United States as to goods/services that do not fall within the class(es) that the IB has assigned. Thus, even if a pseudo-classification system is implemented for search purposes, amendment of the classification in a section 66(a) application will still be prohibited.

In short, the USPTO’s position is that “[u]nder Article 3(2) of the Madrid Protocol, the IB controls classification” and “[s]ince the international registration is limited to those classes that the IB has assigned, no legal basis exists for registration of the mark as to goods/services that fall outside these classes under U.S. standards.”

The USPTO’s “no legal basis” argument, however, is flatly contradicted by Article 4(1)(b) of the Madrid Protocol, which explicitly states: “The indication of classes of goods and services provided for in Article 3 shall not bind the Contracting Parties with regard to the determination of the scope of the protection of the mark.” Article 3(2) of the Madrid Protocol, seized upon by the USPTO in articulating its position, concerns international applications forwarded to the IB by an Office of origin. In pertinent part, Article 3(2) provides that, “The indication of classes given by the applicant shall be subject to control by the International Bureau, which shall exercise the said control in association with the Office of origin. In the event of disagreement between the said Office and the International Bureau, the opinion of the latter shall prevail.”

Accordingly, while the USPTO is correct that Article 3(2) does provide that the IB controls classification, Article 4(1)(b) squarely states that the IB’s classification of goods and services “shall not bind the Contracting Parties with regard to the determination of the scope of the protection of the mark.” It is remarkable that the USPTO does not even mention Article 4(1)(b) when it asserts that “no legal basis exists for registration of the mark as to goods/services that fall outside [the IB-assigned] classes under U.S. standards.”

The USPTO also cites WIPO’s Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol in support of its position (p. 67763, column 2):

When a particular product or service identified in an international application could be classified in more than one class, but only one of the applicable classes has been indicated, the IB assumes ‘‘that the reference is only to the product or service falling in the identified class.’’ Guide to the International Registration of Marks under the Madrid Agreement and Protocol, Para. B.II.23.02 (Jan. 2008), available on the IB Web site at http://www.wipo.int/madrid/en/guide/index.html. Therefore, the Office believes that the scope of permissible amendment of an indefinite identification must be limited by the IB-assigned class.

However, the USPTO has really plucked the quoted passage from the Guide out of context, as the complete passage shows. Section 23.02 of the Guide concerns whether the IB will issue a notice of irregularity to an Office of origin with respect to an international application, and in its entirety provides as follows (emphasis added):

If the International Bureau considers that the goods and services are not grouped in the appropriate class or classes, or if they are not preceded by the number of the class or classes, or if that number is not correct, it will make its own proposal, which it notifies to the Office of origin and copies to the applicant. Where a particular product or service could be classified in more than one class but only one of the applicable classes has been indicated, the International Bureau will not regard this as an irregularity. It will be assumed that the reference is only to the product or service falling in that class. Such an interpretation does not, however, bind a designated Contracting Party with regard to the determination of the scope of the protection of the mark.

Thus, like Article 3(2) above, Section 23.02 of the Guide deals with the interaction between an Office of origin and the IB. Section 23.02 explains that for the purpose of determining whether to issue a notice of irregularity to an Office of origin concerning the classification in an international application from that Office of origin, “[i]t will be assumed that the reference is only to the product or service falling in that class” and therefore no notice of irregularity will be issued to the Office of origin. However, lest there be any confusion, the very next sentence goes on to specifically state, complete with a cross-reference to Article 4(1)(b) in the margin next to the text, that “[s]uch an interpretation does not, however, bind a designated Contracting Party with regard to the determination of the scope of the protection of the mark.”

So, as for the USPTO’s assertion that there would be “no legal basis” for registration of a mark as to goods/services that fall outside the IB-assigned classes, the Madrid Protocol certainly does not seem to compel any such result, notwithstanding the USPTO’s strained attempts to conclude otherwise. However, may the USPTO take the position, embodied in its new Trademark Rule 2.85(f), that for Madrid applicants the scope of the identification of goods or services for purposes of permissible amendments is limited by the class?

Section 30 of the Trademark Act permits the Director to “establish a classification of goods and services, for convenience of Patent and Trademark Office administration, but not to limit or extend the applicant’s or registrant’s rights.” (emphasis added) Section 41 of the Trademark Act provides that, “The Director shall make rules and regulations, not inconsistent with law, for the conduct of proceedings in the Patent and Trademark Office under this chapter.” Is the USPTO’s new Trademark Rule 2.85(f), which explicitly limits a Madrid applicant’s rights based upon classification, even arguably consistent with Section 30 of the Trademark Act? In other words, since the IB controls classification and the USPTO may not use that classification to restrict an applicant's rights, does it not follow that the USPTO must permit a Madrid applicant to amend its indefinite identification even if the amended goods/services would ordinarily be classified by the USPTO in a class other than that assigned by the IB?



TTABlog note: The author practices trademark law in northern Virginia at the Law Office of Michael E. Hall. He may be reached at michaelemersonhall@gmail.com.

Text Copyright John L. Welch 2008.

TTAB Reverses 2(b) Refusal of Mark Containing Portion of Canadian Flag

In its first decision under Section 2(b) in decades, the Board reversed a refusal to register the mark shown immediately below, for painting services, finding that it does not contain a simulation of the flag of Canada or an insignia of Canada. In re Certa ProPainters, Ltd., Serial No. 77046679 (November 14, 2008) [not precedential].


Section 2(b) bars the registration of a mark that "consists of or comprises the flag or coat of arms or other insignia of ... any foreign nation, or any simulation thereof." [TTABlog comment: the phrase "or any simulation thereof" refers to flag, coat of arms, or insignia, not to the foreign nation. Perhaps the provision could have been better drafted.]

The term "other insignia" has not been given a broad scope, but "is considered to include only those emblems and devices that also represent such authority and that are of the same general class and character as flags or coats of arms." Incorporation of individual feature or distorted features that merely suggest flags, coats of arms, or other insignia do not bar registration.

The Board found PTO Examination Guide 2-07 helpful:

"A refusal must be issued if the design would be perceived by the public as a flag, whether or not other matter appears with or on the flag. The examining attorney should consider the following factors, in regard to both color and black-and-white drawings, to determine whether the design is perceived as a flag: 1) color; 2) presentation of the mark; 3) words or the designs on the drawing; 4) use of the mark on the specimens.

"Generally a refusal should be made where a black-and-white drawing contains unmistakable features of the flag, or contains features of the flag along with indicia of a nation..."

In 1965, the Canadian Parliament adopted the flag depicted below as the Canadian national flag.


The Board noted that Applicant's mark "does not include the entirety of the actual Canadian flag." But is it a "simulation"? Answering that question requires "a first impression gathered from a view of such mark without a careful analysis and side-by-side comparison with the [actual flag]."

Although the subject mark includes "a majority of the flag's features" but not the 1:2:1 ration of the stripes or bars, the Board must "balance these considerations against the overall visual impression made by the mark."

The Board observed that "the maple leaf and bar design does not look like the Canadian flag or a simulation of the flag." "[T]he view must still provide substantial, additional details to complete the image of the flag of Canada." In the Board's view, the design "only suggests the Canadian flag, and is not a simulation of the flag."

"Applicant's mark simply suggests the Canadian origin of its services in the same manner that a red, white and blue design with stars suggests an American product." [TTABlog note: Applicant is a Massachusetts company, so how are its services of Canadian origin?]

The Board noted that its decision is in accord with the Examination Guide, which states that "[m]arks containing elements of flags in stylized or incomplete form are not refused under Section 2(b)." Registration should not be refused, according to the Guide, if "[a] significant feature is missing of changed." As examples, the following are registrable:

obscured by other matter
significant feature changed
In Applicant's mark, the Canadian flag is "significantly changed" and the missing flag portion is replaced by wording. Therefore in this regard the mark does not run afoul of Section 2(b).

The PTO also maintained that the mark includes an official insignia of Canada: the 11-pointed maple leaf. The Board, however, found that the leaf design is not an "insignia" that is prohibited by Section 2(b). There was no evidence that this design, per se, has been adopted by Canada as an "insignia" to represent the government. Although it may serve as a national symbol of Canada (like the Statue of Liberty serves as a symbol of the USA), it does not qualify for protection as an "insignia" under Section 2(b).

The Board therefore reversed the refusal to register.

Text Copyright John L. Welch 2008.

Precedential No. 50: TTAB Grants Motion to Compel Proper Initial Disclosures

In another annoying but precedential procedural ruling, the Board granted Petitioner Influance, Inc.'s motion to compel, finding Respondent Elaina Zuker's initial disclosures to be inadequate under FRCP 26(a)(1)(A)(i). Influance, Inc. v. Elaina Zuker, Cancellation No. 92049076 (November 13, 2008) [precedential].


Respondent Zuker listed witnesses and documents (here), but did not state the address or telephone number of the witnesses or the subject matter about which each has information. As to the listed documents, Zuker did not provide their location (nor, alternatively, did she produce copies of the documents).

Moreover, as to form, Respondent's disclosures were unsigned (in violation of FRCP 26(g)), and did not bear the case number or the caption.

Respondent was ordered to provide adequate initial disclosures, in proper form, within thirty days of the Order.

Text Copyright John L. Welch.

Precedential No. 49: Failure to Serve Notices of Opposition Leads to Swift TTAB Dismissal

Opposer Schott AG shot itself in the AG when it failed to serve its notices of opposition on Applicant L'Wren Scott, as required by Rule 2.101. The Board granted Applicant's motion to dismiss and denied Schott's cross-motion for leave to amend its notices of opposition and to serve the notices. Schott AG v. L’Wren Scott, Oppositions Nos. 91184239 and 91184245 (November 13, 2008) [precedential].


Opposer Schott timely filed its oppositions by first-class mail. The oppositions were instituted, but Applicant moved to dismiss for failure to comply with the service requirements of Rule 2.101. Neither notice included a certificate of service. [See footnote 3: had Opposer filed electronically via ESTTA, it would have had to confirm that it had forwarded copies of the notices to Applicant.] Counsel for Applicant submitted a declaration stating that he never received either notice and was not aware of any attempt to serve the papers. The Board agreed that Schott clearly failed to satisfy the requirements of the Rule.

Schott argued that the purpose of this Rule is to facilitate early settlement discussions, not to prevent timely-filed oppositions. The Board agreed that service by the Opposer may have the effect of aiding settlement, but the primary purpose of the Rule is "increased efficiency, particularly in an era when many Board proceedings filed through the ESTTA system can be filed automatically by the ESTTA system."

Schott also urged that FRCP 15 is usually applied liberally to permit amendment of pleadings, particularly prior to answer. The Board pointed out, however, that a notice of opposition may be amended as of right only if the original notice of opposition was properly served. Here, the oppositions were a nullity, and there are no proper notices to amend.

The Board therefore dismissed each of the oppositions.

Text Copyright John L. Welch 2008.

Precedential No. 48: TTAB Resolves Procedural Spat Over Discovery Conference

In this annoying but precedential decision, the Board resolved a brouhaha between the parties over their failure to hold the required Rule 2.120 discovery conference. Opposer moved for sanctions and Applicant then moved to dismiss. Guthy-Renker Corp. v. Michael Boyd, 88 USPQ2d 1701 (TTAB 2008) [precedential].


The parties wrangled over whether Mr. Kroll or Mr. Schindler was the proper attorney contact for Applicant, which one Opposer's counsel should have contacted, and when. The Board ordered that (1) Applicant appoint one counsel of record, (2) the parties clarify whether they will accept service of papers by electronic transmission, and (3) the parities hold the required discovery conference on or before December 14, 2008.

Text Copyright John L. Welch 2008.