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SPECIAL TO THE NATIONAL LAW JOURNAL After the groundbreaking dilution decision in Toro Co. v. ToroHead Inc., 61 U.S.P.Q.2d 1164 (TTAB 2001), the year 2002 at the Trademark Trial and Appeal Board (TTAB) proved to be something of a letdown. Although the board dealt with several substantive and procedural issues under the Federal Trademark Dilution Act, 15 U.S.C. 1125(c) (Lanham Act �43(c)), it has yet to grab the bull by the horns by sustaining a dilution claim. Meanwhile, prodded by its principal reviewing court, the U.S. Court of Appeals for the Federal Circuit, the board accorded famous marks broad protection under the 5th du Pont likelihood of confusion factor: the fame of the prior mark. In re E.I. du Pont de Nemours & Co., 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973). On the issue of generic marks, the board is beginning to display some understandable uneasiness in applying the Federal Circuit’s differing analyses for compound words and phrases. Implementation of the Supreme Court’s ruling in Wal-Mart Stores Inc. v. Samara Bros. Inc., 529 U.S. 206 (2000) (product configurations cannot be inherently distinctive) went smoothly, but reconciling its decision in TrafFix Devices Inc. v. Marketing Displays Inc., 523 U.S. 23 (2001) (redefining trademark functionality) with Federal Circuit precedent proved to be more troublesome. In all, the TTAB issued some 729 decisions in 2002, both final and interlocutory, and ex parte and inter partes. It deemed 28 of the decisions citable, or about 1 in 26-a ratio consistent with the board’s practice in recent years. The following 10 decisions, six of them citable, are arguably of most significance and/or interest to the everyday trademark practitioner. U S West Inc. v. Hatten Communications Holding Co., Opposition No. 110,126 (Sept. 25, 2002) (not citable). U S West’s dilution claim failed despite proof of revenues exceeding $8 billion annually since 1991 and advertising expenditures of more than $54 million per year. Brand-awareness studies showed that U S West is recognized by 99% of consumers in its 14-state region of operation. The board found the mark “U S West” to be “very famous” within the opposer’s 14-state area, but ruled that fame in only that one region is not sufficient for purposes of � 43(c): “While a mark may be famous for dilution purposes even if it is not famous in every part of the United States, we find that a mark which is famous only in one area of the United States which contains but 13% of the overall United States population does not qualify as being included in that ‘select class of marks’ for which the FTDA was intended to apply.” The board passed up a good opportunity to define further the metes and bounds of � 43(c) when it opted not to reach the opposer’s dilution claim in Houghton Mifflin Co. v. Tabb, Opposition No. 110,282 (April 3, 2002) (not citable). It found “Curious George” to be a famous mark meriting a wide latitude of protection under the 5th du Pont factor, and it sustained Houghton Mifflin’s likelihood-of-confusion claim against the mark “Furious George,” used for musical recordings and live band performances. Considering the board’s apparent inclination to avoid a dilution claim when accompanied (as it usually is) by a � 2(d) likelihood-of-confusion claim (15 U.S.C. 1052(d)), it may be quite a while before the TTAB gives full consideration to a � 43(c) claim. ‘Roadrunner’ sideswiped Time Warner Entertainment Co. v. Jones, 65 U.S.P.Q.2d 1650 (TTAB 2002) (citable). In this � 2(d) opposition, applicant Karen L. Jones had no more luck than a certain coyote in her attempt to register “Roadrunner Maps” and an accompanying design (“maps” disclaimed) for “road maps.” The board found the applicant’s mark-which included a cartoonlike roadrunner figure-likely to cause confusion with the opposer’s “Road Runner” word mark and related design marks registered for a variety of goods, including children’s books, coloring books and activity books. In a thorough discussion of the du Pont factors that left Jones standing in a cloud of dust, the board deemed the “Road Runner” mark famous for purposes of the 5th du Pont factor, the parties’ marks confusingly similar and the applicant’s goods to be within the natural area of expansion of products for which Time Warner might license its marks. In re Martin Container Inc., 65 U.S.P.Q.2d 1058 (TTAB 2002) (citable). In the genericness realm, the board affirmed a � 23 refusal to register “container.com” on the Supplemental Register for sale and rental of metal shipping containers. The applicant conceded that the word container is generic for its services but contended that the instant case was governed by In re Dial-A-Mattress Operating Corp., 57 U.S.P.Q.2d 1807 (Fed. Cir. 2001), in which the mark 1-888-M-A-T-R-E-S-S was held to be registrable for telephone sales of mattresses. Distinguishing that precedent, the board pointed out that, rather than a mnemonic phrase comprising a toll-free number featuring a misspelled word, “container.com” is a compound word comprising a correctly spelled generic term followed by the top-level domain indicator “.com,” which has no source-identifying significance. In re Robert’s American Gourmet, Serial No. 75/600,461 (July 2, 2002) (not citable). In an unheralded genericness case that exposed the fault lines in the Federal Circuit’s compound word/phrase dichotomy, the board affirmed a refusal to register “St. Johns Wort Tortilla Chips” for “herbal and natural snacks, namely tortilla chips, tortillas shells, containing St. Johns Wort.” Robert’s did not dispute that “tortilla chips” is generic for its product, and the board found that “St. Johns Wort” is the generic name for a “critical ingredient” of the goods. On that basis, the board concluded that the phrase is generic, although there was no proof that “St. Johns Wort Tortilla Chips” as a whole has been used in a generic sense-proof that is required by In re American Fertility Society, 51 U.S.P.Q.2d 1832 (Fed. Cir. 1999), if a phrase is to be deemed generic. Presumably (and puzzlingly), had the applicant been seeking to register the compound word “StJohnsWortTortillaChips,” the board’s analysis would have been legally correct under In re Gould Paper Corp., 5 U.S.P.Q.2d 1110 (Fed. Cir. 1987). In re Holland Co., Serial No. 75/568,851 (May 14, 2002) (not citable). The board affirmed a refusal to register a rather mundane product configuration for “outdoor cooking grills” on the ground that the design was not inherently distinctive and had not acquired secondary meaning. In its brief on appeal, the applicant wisely withdrew its claim of inherent distinctiveness in light of Wal-Mart. As to acquired distinctiveness, the board observed that the burden of proof is “heavier” in a case involving a product configuration. Holland’s marketing of its grills for more than five years, its advertising expenditures of more that $3 million and affidavits from its president and sales representative as to the uniqueness of the design were not sufficient to satisfy � 2(f). Newborn Brothers and Co. v. Dripless Inc., Opposition No. 113,471 (Aug. 16, 2002) (not citable). Dismissing an opposition to registration of a mark consisting of the color yellow for “caulking guns,” the board applied the functionality test set forth in In re Morton-Norwich Products Inc., 213 U.S.P.Q. 9 (C.C.P.A. 1982). Newborn claimed the mark was functional in both the utilitarian and aesthetic senses, but the board disagreed. Asserting that the Federal Circuit in Valu Engineering Inc. v. Rexnord Corp., 61 U.S.P.Q.2d 1422 (Fed. Cir. 2002), had concluded that the Supreme Court’s TrafFix decision “did not alter the Morton-Norwich analysis,” the board found no convincing evidence of utilitarian functionality: There was no patent of record relating to the applicant’s use of the color yellow; its advertising did not tout any utilitarian advantage of the color yellow; other colors are available; and painting caulking guns yellow is not a comparatively simple or cheap method of manufacture. Turning to the issue of aesthetic functionality, the board followed TrafFix and Qualitex v. Jacobson Prod. Co., 514 U.S. 159, 165 (1995) in applying the competitive-need test, concluding that Newborn had not established a competitive need for the color yellow. Stars and fireworks forever In re Pyro-Spectaculars Inc., 63 U.S.P.Q.2d 2022 (TTAB 2002) (citable). In one of the year’s few cases involving a � 2(e)(4) (15 U.S.C. 1053(e)(4)) refusal to register a surname, the board reversed a refusal to register “Sousa” for fireworks and pyrotechnic and laser light shows. The examining attorney maintained that the mark is primarily merely a surname, relying, among other things, on 4,528 listings in the Phonedisc Powerfinder and 20,250 Nexis articles. The applicant argued that Sousa is much more than a surname because it identifies the American composer John Philip Sousa and his patriotic music. The board, while acknowledging that the examining attorney had made a prima facie case, deemed the Nexis evidence showing the present-day recognition and continuing fame of John Philip Sousa to be more meaningful as to the primary significance of Sousa today. Even more important was the nature of the applicant’s goods and services, which buyers would associate with patriotic events, leading to an immediate association of Sousa with the famous “March King.” In re Hayes and Clodfelter, 62 U.S.P.Q.2d 1443 (TTAB 2002) (citable). The board relied on In re International Flavors & Fragrances Inc., 51 U.S.P.Q.2d 1513 (Fed. Cir. 1999), to block a quasi-”phantom” mark. Ralph E. Hayes Jr. and Gregory K. Clodfelter sought to register on the Supplemental Register a mark consisting of “the colors red, green, and amber used as a color scheme for respective rectangular color blocks on reporting charts to correspond with performance ratings within selected categories of performance.” The application stated that the drawing “shows a representative pattern of the colors claimed but no claim is made to a particular pattern of the three colors.” The board concluded that the applicants were seeking to register multiple marks in a single application and it therefore affirmed the examining attorney’s requirement for an acceptable description of the mark reflecting only the mark as shown on the drawing page. In re Ruffin Gaming LLC, Serial No. 75/889,614 (Aug, 20, 2002) (citable). A sharply divided board panel affirmed a � 2(e)(1) mere-descriptiveness refusal to register the mark “Fisherman’s Wharf” for various hotel, restaurant, nightclub and casino services. Finding this case most analogous to In re Busch Entertainment Corp., 60 U.S.P.Q.2d 1130 (TTAB 2000), in which the mark “Egypt” was held to be merely descriptive of the theme or motif of an amusement park, the majority ruled that “Fisherman’s Wharf” will evoke a well-known section of San Francisco that serves as a theme or motif for the applicant’s services. In dissent, Administrative Trademark Judge Albin F. Drost found this case strikingly different from Busch: In the latter, “Egypt” described the subject matter being presented, whereas the record here “indicates that applicant intends to use its mark on a San-Francisco-themed casino and hotel complex, not a Fisherman’s Wharf-themed casino.” Old Nutfield Brewing Co. v. Hudson Valley Brewing Co., 65 U.S.P.Q.2d 1701 (TTAB 2002) (citable). The board again showed little sympathy for parties that fail to pay attention to the Trademark Rules. In a case presenting “the recurring question of whether the plaintiff’s failure to receive an answer (when one has in fact been filed) establishes excusable neglect for the plaintiff’s failure to present its case,” the board held that it does not. The opposer failed to put in testimony, but four months later moved to reopen its testimony period, claiming that it had received neither the applicant’s answer nor a notice of default. The board noted that issuance of a default notice is not automatic, and ruled that it was up to the opposer to do something-e.g., file a motion for default judgment, or at least call the board to ascertain the status of the matter when it did not receive the answer. Thus the neglect was not excusable under Federal Rule of Civil Procedure 6(b)(2) or Trademark Rule 2.132(a). In 2002, the TTAB again faced a raft of challenging issues as it attempted to cope with the latest Supreme Court and Federal Circuit edicts, and as it gradually develops its own precedents under � 43(c). The board’s rulings have a direct impact on everyday trademark practice, and the wise practitioner will continue to keep an eye on its pronouncements. John L. Welch is counsel to the home office of Boston’s Foley Hoag. A frequent author and lecturer in the trademark field, he is a contributing editor of Allen’s Trademark Digest.

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