TTAB Refuses to Take Judicial Notice of WIkipedia Entry, Affirms Section 2(d) Refusal of FREEBIRD BY STEVEN for Clothing

The Board affirmed a Section 2(d) refusal to register FREEBIRD BY STEVEN for "shoes," finding the mark likely to cause confusion with the registered mark FREE BIRD for various clothing items. Applicant attached to its appeal brief a definition of "Free Bird" from a Wikipedia entry, and asked the Board to take judicial notice of same. The Board declined. In re Steven Madden, Ltd., Serial No. 85313681 (November 29, 2013) [not precedential].

Since the Wikipedia evidence was attached to applicant's brief, it was untimely. However, the Board may take judicial notice of dictionary definitions, encyclopedia entries, standard reference works, and commonly known facts. But Wikipedia entries are not so reliable. "Because Wikipedia is a source whose accuracy may be questioned, it is not a source from which the Board may take judicial notice." Wikipedia evidence must be offered at a time when the other party will have an opportunity to challenge the evidence. See In re IP Carrier Consulting Group, 84 USPQ2d 1028 (TTAB 2007). [TTABlogged here].

Turning to the 2(d) refusal, the Board found "Freebird" to be the dominant element in Madden's mark. It is the first word in the mark and furthermore would be seen as "the product mark identifying the source of a specific item," while "by Steven" would be seen as a house mark for a range of products. "Consumers could well think that 'by Steven' identifies the source of the FREE BIRD products or that registrant has licensed applicant to manufacture shoes under the FREEBIRD brand."

Applicant Madden argued that "by Steven" serves to distinguish the marks because Steven Madden is "almost synonymous with shoes." The evidence demonstrated that Steven Madden is a renowned shoe designer and entrepreneur but, the Board noted, there was no evidence that consumers think of him when they see a mark that includes the term "by Steven" in connection with clothing or shoes. In any case, the fame of the mark is only one of the duPont factors. "A junior party's fame cannot excuse likelihood of confusion created by its use of a mark similar to one already in use."

Next, Madden feebly argued that the term "free bird" is highly suggestive for women's apparel, based on the term's reference to the Lynyrd Skynyrd song, "Free Bird," a song that "refers to the relationships between men and women." Madden pointed out that "bird" is an English slang term for "girl."

The Board was not impressed. First, it perceptively noted that "British slang is not American slang." [Hear, hear! - ed.]. Moreover, the Board failed to see that a reference to relationships between men and women "has anything to do with shoes and clothing."

And so the Board found the marks at issue to be similar in appearance, sound, meaning, and commercial impression.

Not surprisingly, third-party registration and website evidence, submitted by Examining Attorney Zachary Bello, as well as applicant's own evidence, demonstrated that applicant's shoes and registrant's shirts, pants, etc., are related and are sold through the same channels of trade.

Madden disagreed, maintained that registrant's goods are inexpensive ($10-12 wholesale) and may be purchased only online at registrant's website, by clothing distributors, whereas Madden's shoes are relatively expensive (well more than $100 retail).

The Board once again pointed out that its Section 2(d) determination must be made on the basis of the goods as identified in the opposed application and the cited registration. Because there are no limitations as to trade channels or customers in the application or registration, the Board must presume that the goods move in all normal channels of trade to the usual classes of consumers. Nor are there any restrictions on the prices of the goods.

Balancing the relevant duPont factors, the Board found confusion likely and it affirmed the refusal.

Read comments and post your comment here.

TTABlog note: "I'm as free as a bird now, And this bird you can not change."

Text Copyright John L. Welch 2013.

Part 2: Tips for Effectively Searching the USPTO Database Using TESS - California IP Bar Webinar: Dec. 10 at Noon (PST)

On Tuesday, December 10 at noon (PST), the State Bar of California Intellectual Property Section (Trademark Interest Group) will present the second part of its three-part webinar series on "Tips for Effectively Searching the USPTO Database Using TESS." Part 2 will cover design mark and non-traditional mark searching.  [Part 3 will be presented on January 14; Part 1 is available on-demand here.] One hour of participatory MCLE credit available. Register here.

Tips for Effectively Searching the USPTO Database Using TESS
State Bar of California Intellectual Property Section Trademark Interest Group
Moderator: Mary A. Harris

Speakers:

Ed Timberlake is a former Trademark Examining Attorney at the U.S. Patent & Trademark Office, and former Copyright Examiner at the U.S. Copyright Office. He now has his own practice, Timberlake Law. Ed’s practice focuses entirely on trademarks and copyrights, primarily providing advice, preparing and filing applications, and maintaining registrations.

Alex Butterman is an attorney specializing in trademark and copyright law with the Washington, D.C. intellectual property boutique firm of Staas & Halsey LLP. Alex has been representing a diverse group of businesses in a variety of industries and commercial sectors since 1995 while working in several IP boutique law firms and as an Attorney Advisor (“Trademark Examining Attorney”) at the U.S. Patent and Trademark Office (USPTO).

Alex and Ed will discuss design searching basics using the Design Code Manual, and searching for nontraditional marks.

Test Your TTAB Judge-Ability: Which One of these Section 2(d) Refusals Was Reversed?

It has been said that that the outcome of most Section 2(d) likelihood of confusion cases may be predicted just by looking at the marks and the identified goods/services, without more. So try your adjudicatory skills on these four appeals. [Answer in first comment].



In re Grain Audio, LLC, Serial No. 85528202 (November 22, 2013) [not precedential]. [Refusal of GRAIN AUDIO for audio speakers, amplifiers, receivers, and other audio equipment [AUDIO disclaimed], in view of the registered mark EGRAIN for, inter alia, radio transmitters and audio
receivers].

In re Sunton Enterprises Inc., Serial No. 85253147 (November 25, 2013) [not precedential].[Refusal of AY LAZZARO for "handbags; trunks," in view of the registered mark LAZARO for "handbags, briefcases, briefcase-type portfolios, wallets"].

In re Jay at Play International Hong Kong Limited, Serial Nos. 76709622 and 76709776 (November 26, 2013) [not precedential]. [Refusals of CUDDLEUP FRIENDS and CUDDLEUPPETS for "plush stuffed animals integrally attached to blankets," in light of the registered mark CUDDLE-UPS for "plush toys, namely, soft cushioned animal figures"].

In re The Works Gourmet Burger Bistro, Inc., Serial No. 76704958 (November 29, 2013) [not precedential]. [Refusal to register THE WORKS for "Clothing, namely, t-shirts, tank tops, vests, jackets,sweatshirts, hats and baseball caps related to restaurant services and food products," in view of the registered mark WORKS for "clothing, namely, t-shirts related to motorsports, motorsports racing jerseys, and motorcycle racing pants"].

Read comments and post your comment here.

TTABlog note: See any WYHA?s here?

Text Copyright John L. Welch 2013.

WYHA? TTAB Finds FLUTTER FAERIES for Dolls Confusable with FLITTER FAIRIES for Fantasy Toy Characters

The Board affirmed a Section 2(d) refusal to register the mark FLUTTER FAERIES for "doll accessories; dolls," finding the mark likely to cause confusion with the registered mark FLITTER FAIRIES for "fantasy toy characters" [FAIRIES disclaimed]. The marks, though slightly different, have the same meaning, and third-party websites and registrations confirmed the relatedness of the goods. Would you have appealed? In re Wahl, Serial No. 85485701 (November 20, 2013) [not precedential].


The Board, not surprisingly, found the minor visual and aural dissimilarities in the marks to be outweighed by their strong similarities as to connotation and overall commercial impression.

As to the goods, applicant Wahl feebly argued that her goods comprise "half butterfly, half fairy dolls," and may include "a cocoon for the doll to live in, as well as removable butterfly wings." In contrast, she asserted, the cited mark is used with a flying fantasy toy [see video above] that has battery-operated moving wings and "comes with a wand to help it fly." The Board, however, observed for the zillionth time that it must consider the goods as identified in the involved application and registration, regardless of any evidence as to actual use.

Examining Attorney Jennifer D. Richardson submitted Internet evidence showing that "fantasy character dolls" are a subset of "dolls," and that consumers "are accustomed to encountering 'dolls' and 'doll accessories' in the same trade channels in the marketplace as toys generally." Third-party registrations also suggested that the involved goods are of a type that may emanate from a single source under a single mark.

The Board therefore found that the involved goods overlap, and, in view of the lack of restrictions in the identifications of goods, must be presumed to travel in the same channels of trade to the same classes of customers. In short, the involved goods are to be considered "closely related."

Wahl argued that the cited mark is commercially weak in light of a number of third-party registrations for marks such as FLUTTERBYE FAIRY, FLUTTER FLICKER, and FLITTER DOODLES, but that argument flew into a wall. The Board pointed out that registrations are not evidence of actual use, and so one cannot conclude that consumers are familiar with these third-party marks. Moreover, the correct focus is on the cited mark FLITTER FAIRIES, and only one registration contains the word "Flitter" (FLITTER DOODLE); however, and the goods of that registration (craft kits containing coloring supplies and glitter) are quite different from registrant's identified goods. While a number of the third-party marks include the word "Flutter" or "Fairies," none of the marks are similar to the marks at issue here, some are for goods unrelated to dolls and toys (e.g, FLUTTER PRO for artificial fishing lures), and some are for marks that include other distinguishing matter (HORSEFAIRIES, for example).

The involved goods are relatively inexpensive and the board was not convinced that purchasers of these goods will be "at all sophisticated or discerning consumers." It considered this duPont factor to be neutral.

Finally, the lack of an evidence of actual confusion is of little probative weight in an ex parte context, where the registrant has no opportunity to weigh in on the issue. In any case, of course, "actual confusion is not necessary to show a likelihood of confusion."

Balancing the relevant duPont factors, the Board found confusion likely and it affirmed the refusal to register.

Read comments and post your comment here.

TTABlog note: I realize that, although the chances are about one in ten that a likelihood of confusion refusal will be reversed, the cost of filing an appeal and preparing an appeal brief may not be great. The applicant has likely already submitted arguments against the refusal, and these arguments may be re-packaged in an appeal brief at relatively little cost. So some may say, why not give it a shot?

Text Copyright John L. Welch 2013.

ALI Webinar Dec. 10: "Trademarks, Trade Dress and False Advertising: Recent Developments for Business and IP Lawyers"

Yours truly, aka the TTABlogger, will team up with Prof. Ken Germain in an ALI Webinar entitled "Trademarks, Trade Dress and False Advertising: Recent Developments for Business and IP Lawyers." When? Tuesday, December 10th, 1:00 - 2:30 PM, Eastern Standard Time. Registration here.


Prof. Ken Germain

Business and IP lawyers who need to stay current with the recent trends in trademark, trade dress, and false advertising law should register today for this CLE program. Our faculty of experienced practitioners will give an overview of the latest developments, while focusing on decisions of the United States Supreme Court, United States Court of Appeals for the Federal Circuit, regional Courts of Appeals and the United States Patent and Trademark Office Trademark Trial and Appeal Board.

Topics include:

• recent federal registration decisions (fraud, proof of lack-of-bona fide intent)
• possible resuscitation of a dead “generic term”
• likelihood of confusion (consumer and non-consumer),
• distinctiveness of mark,
• sponsored links fair use and limits of nominative fair use
• equitable defenses (especially laches) and remedies
• and more!

.

Test Your TTAB Judge-Ability: Is This "Statue of Liberty" Design Mark Scandalous Under Section 2(a)?

Advanced Armament sought registration of the mark shown below for "silencers for firearms," but the examining attorney refused registration under Section 2(a), maintaining that the mark is scandalous and disparaging of the Statue of Liberty. The Board viewed the question as whether a substantial composite of the general public "would perceive applicant's mark to be a scandalous adaptation" of the beloved Statue. Applicant argued that the evidence showed that public sentiment is deeply divided on gun rights and gun control in general, but it revealed little about "silencers." How do you think this came out? In re Advanced Armament Corp., LLC, Serial No. 77770899 (November 29, 2013) [not precedential].

The examining attorney relied on various Internet pages and media articles regarding use of guns and/or silencers, and other material regarding the Statute of Liberty. Several articles and blog posts were submitted to show that the depiction of guns with the Statute of Liberty was offensive. Other materials, she argued, suggested that there has been a "shift in public opinion after recent high-profile gun violence" and that "new stricter laws against guns reflect negative public perception of firearms."

Applicant contended that its mark depicts the statue's "serene face" and is not vulgar. It asserted that the mark must be considered "in the context of the marketplace and as applied to only the goods or services in the application for registration." Contrary to the examining attorney's position, it urged, none of the evidence made a connection between silencers and criminal activities. As to the images submitted by the examining attorney, it noted that some comments were positive (e.g., "You only have Liberty as for (sic) long as you can defend it. Awesome image.") Other images were employed in a different context (e.g., immigration policy or gun control) and were intended to be provocative. Finally Applicant pointed to several declarations from retailers who stated that the logo was greeted enthusiastically, and that they were unaware of any negative reaction from customers.

The Board observed that, based on the evidence of record, "it is not uncommon for persons to adopt and/or register marks incorporating the Statute of Liberty holding an object, e.g., a cup of coffee or a football, in place of the torch." Such marks are clearly intended to generate "a sense of patriotism, Americana, or perhaps of New York City." The applied-for mark does not depict the statute in a threatening pose; in fact, the depiction may be viewed as "consistent with" the Constitutional right to bear arms.

The Board was not "free of doubt" that the mark will be perceived as scandalous by a substantial composite of Americans. The record was mixed as to whether the mark will be viewed as offensive or as a gesture of patriotism. Moreover, the Board was not convinced that the evidence regarding objection to firearms equated to objection to silencers.

The mixed record in this case leaves us with doubt about whether applicant’s mark gives "offense to the conscience or moral feelings" or is "shocking to the sense of decency or propriety" in the minds of a substantial composite of Americans. This leads us to the conclusion that it would be prudent, under the circumstances, to permit the mark to proceed to publication and, if a person, entity, or group "find[s] the mark to be scandalous . . . , an opposition proceeding can be brought and a more complete record can be established." See Mavety Media, 33 F.3d 1367, 31 USPQ2d at 1928.

And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlog note: In a footnote, the Board recognized that, due to the limited resources of the PTO, it is not always possible for an examining attorney to find evidence involving public reaction to a mark.I suspect the evidence would have been mixed anyway. On the other hand, a "substantial composite" of Americans does not, as the Board observed, mean a majority.

Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability: Is BLAZING SILKS Deceptive for Non-Silk Clothing?

Spina Technology applied to register the mark BLAZING SILKS for a "full line of clothing," including t-shirts, dresses, neckties, etc., but Examining Attorney Dominic R. Fathy refused registration, maintaining that the mark is deceptive under Section 2(a). Spina argued that the word "silks" (plural) refers to the brightly colored garments of a horse jockey or harness driver, and therefore is not deceptive. Who won this two-horse race? In re Spina Technology Corp., Serial No. 85456039 (November 15, 2013) [not precedential].

Although Applicant Spina did not explicitly state that its goods are not made of silk, it did state that "the public, in viewing the applicant’s mark, will not be deceived into believing that the goods contain silk." That statement, coupled with Spina's s failure to contest the examining attorney’s position on this point, were sufficient for the Board to conclude that applicant’s goods are not made of silk.

Spina asserted that it uses the term SILKS in the mark BLAZING SILKS "to evoke the image of a horse race (and a play on the famous movie BLAZING SADDLES)." The public, it asserted, will not be deceived into believing that the goods contain silk. Instead, consumers will understand the equine-related meaning of SILKS and will associate the applied-for mark with jockeys and horse racing, not with the fabric "silk."

The Board noted that silk has been in use for clothing since 3500 BC, and it concluded that "silk" immediately describes a significant feature of clothing. Consumers will understand that the term "silk," when used in a mark for clothing, indicates that the clothing is made of silk or at least includes silk.

The Board considered Spina's argument that "silks" has a different meaning from "silk," i.e., that it refers to "silks" used in horse racing. However, that different meaning "does not detract from the deception conveyed by the term when used for clothing." Website evidence showed that the term "silks" originated "from the fact that horse jockeys' jerseys actually were made of silk." The Board agreed with the Examining Attorney that "even if the term SILKS can refer to jerseys worn by jockeys, it further reinforces the importance of silk because of the fact that the jerseys were famously composed in significant part of silk fiber material."

In any case, there was no evidence as to how many consumers would even be aware of the meaning of "silks" as used in horse racing, nor was there any evidence that the movie "Blazing Saddles" is famous or that consumers would think of that movie when encountering applicant's mark.

In short, the meaning of "silk" in the horse racing context is simply "overwhelmed by the commonly used and understood meaning" when used in connection with such common clothing items as neckties and dresses.The word "blazing" connotes silk made in bright colors. Therefore, BLAZING SILKS, as a whole, misdescribes clothing that is not made of silk.

Given the attractiveness and desirability of silk in clothing, it is very likely that consumers would believe that applicant's clothing is made of silk, and furthermore that misdescription would be material to the purchasing decision of a significant portion of relevant customers.

Accordingly, the Board found the applied-for mark to be deceptive when used in connection with clothing not made of silk, and it affirmed the Section 2(a) refusal.

Read comments and post your comment here.

TTABlog note:Well, how did you do?

Text Copyright John L. Welch 2013.