The TTAB recently ruled, based on internal reasoning that is entirely justifiable, that if you can’t afford to litigate — as far as is necessary — against a larger, richer adversary, it probably doesn’t pay to litigate at all.  The outcome, is, however, maybe a little troubling — but, on the other other hand, not so much, both on its own terms and because it seems to me to correct a substantive wrong in the first place.  It’s like this:

As reported by John “Trademark Elite 1000″ Welch in this TTABlog post, there was — let’s put aside the underlying substantive details for now, to add to the simulated drama I am attempting to create here — a certain TTAB decision, refusing an opposition by the opposer and allowing registration, that had been appealed, see?  The opposer, ever oppositional, appealed that ruling to the U.S. Court of Appeals for the Federal Circuit.

[W]hile the appeal was pending, applicant AFP unilaterally withdrew its application to register. The CAFC then dismissed the appeal as moot and remanded the case to “allow the Board to consider a motion to vacate its decision in the first instance, in accordance with United States Bancorp Mortgage Company v. Bonner Mall Partnership, 513 U.S. 18, 29 (1994), and for any further proceedings deemed appropriate by the Board.” The Board concluded that U.S. Bancorp mandated that the Board’s decision be vacated. . .

AFP argued (without evidentiary support) that it was “forced” to withdraw its application due to the cost of litigation, but the Board found that to be irrelevant. AFP withdrew its application without [Opposer's] permission, thereby mooting the appeal. Under those circumstances, U.S. Bancorp mandated that the Board’s decision be vacated.

Indeed, to decide otherwise would be manifestly unfair because applicant’s unilateral abandonment of the subject application has frustrated opposer’s statutory right to seek review of a decision it believes to be incorrect. In view thereof, the Board’s decision is vacated.

I hear it.  And this last passage quoted by John really gets the point across.  In for a penny, in for a pound, when it comes to litigation whose outcome could, one way or another, could have precedential value to one of the parties involved — which is often going to be the case in an opposition proceeding.  Here the now-vacated decision would surely have, absent the vacatur (not “vacation”!), cast a shadow over any future prosecution of similar claims in opposition by the same mark holder.  If there is, and indeed there is, a right to review of such a decision, you can’t just take the ball and go home when you’re winning.

Well and good.  But, you know me: Read More…

Busy as we were last week licking our wounds from the aftermath of really bad weather, I missed the opportunity to wish a timely mazal tov to John “@TTABlog” Welch on the eighth anniversary of the TTABlog.  As John explains,

The first TTABlog posting went up on November 8, 2004. The subject? Former TTAB nemesis, Leo Stoller. Two-thousand four-hundred posts later, it’s still going. Thanks for reading!

When he says “it’s still going strong,” John assuredly does not mean Leo Stoller.

I try to acknowledge the significant blogmarks of those who preceded me and who are still at it, and as brilliantly as John Welch is especially.  Not that everyone appreciates my recollections, but, still, I speak truth to, uh power.

Originally posted 2011-07-15 00:16:11. Republished by Blog Post Promoter

Letters, we get letters.

Sometimes people just want to share their trademark woes with me.  Sometimes they want free advice, or cheap advice, or just a broad, powerful if round trademarky shoulder to cry on.  I am a man, and no one’s crying towel, yet — surely even a litigator can have feelings.

Carl Vennitti is no crybaby, but he has been sharing the story of nearly seven years of trademark-registration and opposition adventures with your tender-hearted blogger.  His adversary:  A little outfit called Nestlé, another brutal chocolate-pusher but also famous as maker of — yes –

HOT POCKETS.

Hot Pockets.  Carl’s mark (no, not Karl Marx!  ahem): POCKET SANDWICHES – not (as originally written) CROISSANT POCKETS, and… not too confusing at all.  Or is it?

Likely to be confused?

What do I know?  Let’s ask the TTAB, which after dealing with some flaky procedural business — deftly addressed, as was the substance of the case, by (of course) John Welch shortly after the decision issued in May of 2011 – pulled that yummy concoction (one imagines) out of the microwave and laid it before us on a stiff wax-coated paper plate.  Starved as we are for rich, IP-blawgy goodness, we reached for our heavy-duty plastic fork and knife and …

Ah, but first we must address the substantive crust of the matter before we bite into the hot, steaming mass and taste of the LIKELIHOOD OF CONFUSION analysis within.  The better to let it cool off just a tad anyway, no?

It turns out that the opposer, Nestlé, isn’t exactly quite the registrant of the trademark.  It is a licensee of some foreign outfit that owns that piece of paper.  Well, being a licensee is the same as being the real guy, right?  Well, not necessarily.  Certainly not necessarily in copyright… and also not in trademarks if you are before the TTAB.  The Board noted that, even in the related District Court litigation, it had been recognized that, in a regular court, an “exclusive licensee of a trademark has the right to enforce the trademark” — but that this rule does not apply in the specialized context of a TTAB opposition proceeding:

We do not interpret the definition of “registrant” in Section 45 of the Trademark Act, 15 U.S.C. §1127, to include exclusive licensees to the extent that they may rely on Section 7(b) presumptions [of priority based on a first-use date in the trademark registration]. Licensees may enforce trademark rights, but must establish priority through evidence of use and may not rely on their licensor’s registrations.

That’s something to know and remember, right there!  But before the inside of this hot sandwichy-type thing cools down too much, can’t we dig into the LIKELIHOOD OF CONFUSION (LOC) question?

Not so fast, hungry boy.  Look, isn’t a Hot Pocket just, you know, a hot pocket?  If it is, that’s a pretty weak trademark you have there!  How can the opposer even oppose registration if it doesn’t even have a real trademark — i.e., a distinctive one?

Applicant argues that opposer’s mark, HOT POCKETS, is merely descriptive and the evidence of record is not sufficient to establish that it has acquired distinctiveness. . . .

Based on [a] survey in the first quarter of 2004 the HOT POCKETS brand commanded 96 percent brand awareness, meaning that when asked if a consumer had heard of the HOT POCKETS brand 96 percent responded yes. . . This evidence is sufficient to establish, at a minimum[,] that HOT POCKETS had acquired distinctiveness for frozen stuffed sandwiches by the first quarter of 2004, prior to applicant’s filing date.

Ninety-six percent?  Yes, I’d agree — “at a minimum,” that’s distinctive, at least in the acquired sense, and that’s some rights you got there.

In view of the above, opposer has shown rights in the mark HOT POCKETS prior to applicant’s filing date and, thus, has established priority. We turn then to consider whether there is a likelihood of confusion.

My favorite part!  Are you going to finish yours? Read More…

First posted on July 15, 2011.
Letters, we get letters.

Sometimes people just want to share their trademark woes with me. Sometimes they want free advice, or cheap advice, or just a broad, powerful if round trademarky shoulder to cry on. I am a man, and no one’s crying towel, yet — surely even a litigator can have feelings.

Carl Vennitti is no crybaby, but he has been sharing the story of nearly seven years of trademark-registration and opposition adventures with your tender-hearted blogger. His adversary: A little outfit called Nestlé, another brutal chocolate-pusher but also famous as maker of — yes –

HOT POCKETS.

Hot Pockets. Carl’s mark (no, not Karl Marx! ahem): POCKET SANDWICHES — not (as originally written) CROISSANT POCKETS, and… not too confusing at all. Or is it?

Likely to be confused?

What do I know? Let’s ask the TTAB, which after dealing with some flaky procedural business — deftly addressed, as was the substance of the case, by (of course) John Welch shortly after the decision issued in May of 2011 — pulled that yummy concoction (one imagines) out of the microwave and laid it before us on a stiff wax-coated paper plate. Starved as we are for rich, IP-blawgy goodness, we reached for our heavy-duty plastic fork and knife and …

Ah, but first we must address the substantive crust of the matter before we bite into the hot, steaming mass and taste of the LIKELIHOOD OF CONFUSION analysis within. The better to let it cool off just a tad anyway, no?

It turns out that the opposer, Nestlé, isn’t exactly quite the registrant of the trademark. It is a licensee of some foreign outfit that owns that piece of paper. Well, being a licensee is the same as being the real guy, right? Well, not necessarily. Certainly not necessarily in copyright… and also not in trademarks if you are before the TTAB. The Board noted that, even in the related District Court litigation, it had been recognized that, in a regular court, an “exclusive licensee of a trademark has the right to enforce the trademark” — but that this rule does not apply in the specialized context of a TTAB opposition proceeding:

We do not interpret the definition of “registrant” in Section 45 of the Trademark Act, 15 U.S.C. §1127, to include exclusive licensees to the extent that they may rely on Section 7(b) presumptions [of priority based on a first-use date in the trademark registration]. Licensees may enforce trademark rights, but must establish priority through evidence of use and may not rely on their licensor’s registrations.

That’s something to know and remember, right there! But before the inside of this hot sandwichy-type thing cools down too much, can’t we dig into the LIKELIHOOD OF CONFUSION (LOC) question?

Not so fast, hungry boy. Look, isn’t a Hot Pocket just, you know, a hot pocket? If it is, that’s a pretty weak trademark you have there! How can the opposer even oppose registration if it doesn’t even have a real trademark — i.e., a distinctive one?

Applicant argues that opposer’s mark, HOT POCKETS, is merely descriptive and the evidence of record is not sufficient to establish that it has acquired distinctiveness. . . .

Based on [a] survey in the first quarter of 2004 the HOT POCKETS brand commanded 96 percent brand awareness, meaning that when asked if a consumer had heard of the HOT POCKETS brand 96 percent responded yes. . . This evidence is sufficient to establish, at a minimum[,] that HOT POCKETS had acquired distinctiveness for frozen stuffed sandwiches by the first quarter of 2004, prior to applicant’s filing date.

Ninety-six percent? Yes, I’d agree — “at a minimum,” that’s distinctive, at least in the acquired sense, and that’s some rights you got there.

In view of the above, opposer has shown rights in the mark HOT POCKETS prior to applicant’s filing date and, thus, has established priority. We turn then to consider whether there is a likelihood of confusion.

My favorite part! Are you going to finish yours? Read More…

I owe this essay to everyone who believed in creating a dream, and helped build his or her own company into the company we almost were. The following is truthful and factual, which makes it hard to dispute unless, alas, you possess, and are willing to spend, untold amounts of good money to destroy dreams and hard labor, credit, business, integrity and family, such as Nestlé’s did to me and my family.

Prior to July of 2003, V&V Enterprises, Inc., did business as Mauro Brand Products and been marketing and selling “pocket sandwiches” since coming under inspection by the USDA in 1991. Before coming under Federal Inspection with the USDA, we had marketed and sold our products as “pizza turnovers” since 1981. It was quite a traumatic change at that point, because the USDA did not have a category in which to classify our product. Their category was “Multi-Component Products”, and “Pocket Sandwiches” came under that category. We adjusted our customers to the name changes with quite a bit of explanation, but because we made such a well-accepted product, our customer base soon made the adjustment acceptable. We had slowly evolved into a food company which had enjoyed distribution of its’ Pocket Sandwiches in school food service from New York City to Los Angeles. Our years of financial struggle were over. Our commitment to children and to the disabled Americans, which we employed, and still do, was reaching the highest levels of fruition. Our commitment to those less fortunate was driving our goals. St. Jude Children’s Research Hospital became our ‘friend in need’, along with the ‘Make a Wish’ Foundation. Above and beyond our monetary contributions, Micaela, my wife of 33 years, formed a ‘club’ for making rosaries, and taking any and all donations to our beloved charities, so that more people would feel compelled to help those poor children with nowhere else to turn.

We started our company in a back room at Sorrento’s on Parkman Rd. in Warren, Ohio. Keeping both businesses under one roof was proving to be very difficult so we built a new facility right up the street so the business could grow and flourish. After a few years, our small building was virtually bursting at the seams and we needed to expand the ‘brick and mortar’ to allow for continued growth. With a ‘lease to own’ agreement, we completely renovated a former bowling alley to become a state of the art, USDA inspected food facility, which was eight times our former size, with extra acreage for future expansion. With bona fide contracts in hand, we ordered new manufacturing lines, which would easily triple our daily, single shift output. Everybody was our friend.

With multiple years of successive double-digit growth and profits, our internal team, and acquired minority business associates, felt that the timing was right for a Reverse Merger into an existing Shell; a ‘public offering’ of the company. Lawyers and professionals were hired to properly formulate a new company, which would embody all that we were and all that we could be, and the process was set into motion. As we were reaching the finish line of dreams that can come true, we received a simple letter from Nestle USA; Nestle Prepared Foods Group; Hand Held Products Division, Englewood, Colorado.

In the side pocket

They demanded that we cease and desist our current path or they would sue for Trademark Infringement, Deceptive Trade Practices and Unfair Competition, among other things. We had been making ‘pizza pockets’ since 1991, showing them at trade shows, sometimes next to the ‘Hot Pockets’ brand with no exchange of concerns, but it was now time to get rid of their annoyance.  They had told us that they had monitored us since 1998. We made a great product, which was in growing demand, and they needed to maintain market share. It was stated by Nestlé’s that we could not afford to defend ourselves and our only option would be to change our name and what we called our product.

This multi billion-dollar company was attacking our less than 1.4 million dollar company.  We were making an impact. Making a good product, hard work and dedication had gotten the attention of the world’s largest food company. We thought it was funny. Still being somewhat naive, we didn’t notice that no one else was laughing. Read More…

Who says the Commissioner of Trademarks is “Dr. No”?

To the contrary, some trademark registration applications Only Live Twice — and that’s quite enough.  John Welch, The Man with the Golden Blog, reports on a TTAB ruling that wouldn’t let this remarkable trademark registration die:

It's in the way that you use it ...

Rarely does a product configuration mark pass TTAB muster . . . but it just happened in In re Carl Walther GmbH, Serial No. 77096523 (October 26, 2010) [not precedential]. The Board reversed a refusal to register the mark shown below for “firearms; pistols; and air soft guns,” finding that Applicant Walther had established acquired distinctiveness for the product design under Section 2(f). . . .

TTABlog comment: The advertising expenditure figures were not impressive, and specific sales figures (other than for replicas) were not provided. Perhaps Walther has one person to thank for this victory: Bond, James Bond. Or maybe two: add the survey expert.

Well, I’d rather thank Bond.  (In fact, I believe I already have!)  As John notes, here the Board nodded to the survey, mumbled something not too rigorous-sounding about the result being “in line” with what they might be looking for in that sort of thing,  and then scooted along.

Though like 007 John is too discreet among proper company to make like a Walther pistol and deliver his criticisms like a brick through a plate glass window, his post does shoot the Living Daylights out of some of the rationale underlying the decision in In re Carl Walther GmbH.  As John broadly hints the famous gun’s just plain fame is probably what accomplished the mission and got the girl here.   John’s post is not For Your Eyes Only; I encourage you to read it and tell all your friends.  (UPDATE:  Start here for a more typical case involving product configurations.)  Judicial realists such as LIKELIHOOD OF CONFUSION® could conclude that the tribunal essentially saved the applicant from what may have been something less than a Thunderball of an application, in terms of the quality of proof submitted, but took judicial notice of the fact that, heck, “Well, come on, everybody knows that James Bond uses one of these beauties!”

Others have something to prove.

That sounds like the right result, in an abstract “well, is it a trademark?  does it have secondary meaning or what?” way.  It seems commonsensical.  Trademarks is easy, right?

Yes, real easy.  Go through John’s short analysis of this decision and you’ll see why it reinforces that nagging suspicion some of us have that a disturbing amount of trademark law is ultimately grounded in little more than judicial instinct, not to say whimsy, whether at the trial level or on appeal via a sort of de facto sub silentio de novo review.  (Triple-decker Latin.  Heh.)

It’s bad enough reading Circuit Court opinions in trademark cases where a whole appellate panel is winging it in three-part harmony.  But when the observation that a judge may just be making up trademark jurisprudence as she goes along occurs to LIKELIHOOD OF CONFUSION® during litigation, having gone through doing all those interesting things they teach in law school about how to prove or defend legal claims provides not even a Quantum of Solace!

Now don’t get me wrong.  ”Wet” methods are perfectly appropriate for the Free World’s greatest spy. His is a dirty job, and someone’s got to do it.  Of course the end justifies the means!  Besides, for those of us concerned with the legal end of things, James Bond’s foes are bizarre Batman-like super villains whose own supra-national status exempts them entirely from “technicalities” that might bog down saving the world.

But for the system of ordered liberty which Commander Bond’s like is empowered (by Her Majesty, of course, which makes the doctrinal difficulties here a tad easier to digest) to protect, it’s hard to be quite as enthusiastic about an area of law where judges sometimes rule as if they have… yes… a Licence to Kill.

No?

The TTABlog on what every TTAB practitioner knows: The Board still elevates form over substance in one really dumb way:

Several trademark practitioners on the INTA list-serv have asked why the Board doesn’t just take judicial notice of the information on the PTO’s own database? When one obtains a status-and-title copy of a registration, the PTO does nothing more than confirm what its database already says. So again, what’s the point?

It seems to me that at a minimum, the Board should recognize a rebuttable presumption that the PTO records are accurate and that the status and title of a registration is what the PTO’s database says it is.

I can’t argue with that. The requirement that to establish the existence of a mark, an opposer must submit a certified, status-and-title copy obtained form the PTO, is — as one of my favorite judges once said — a “horse and buggy” rule. The Board treats this, as one list-serv participant pointed out, more akin to a matter of jurisdiction (which a tribunal cannot ignore the lack of) than one of proof. In the case John writes about, the opposer submitted a photocopy of a printout from the database authenticated by an affidavit; the applicant hadn’t even raised the issue, but the Board on its own dismissed the opposition.

Why do judges (and their ilk) so frequently forget that lawyers are real people representing real clients who may very well have real legal issues that require fair adjudication, and not merely the generators of the paper from which they make their living?