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Since the turn of the century (Jan. 1, 2000, for ourpurposes), the Trademark Trial and Appeal Board (TTAB) has rendered more than 1,600 decisions in ex parte appealsfrom final refusals to register and in inter partes opposition and cancellationproceedings. Although most board dispositions involve a relativelystraightforward application of standard TTAB doctrine to the particular factpattern at hand, the new century has already yielded noteworthy rulings in anumber of areas — for example, the application of the federal dilution statutein the TTAB context, the analysis of trade dress distinctiveness andfunctionality and the recognition of new e-commerce terminology asnondistinctive. At the same time, the board’s effort to manage its growingdocket of cases has led to a less forgiving attitude toward noncompliance withthe Trademark Rules of Practice. The TTAB currently deems about one in 25 decisions to becitable as precedent; those citable cases are then published in the U.S.Patent Quarterly. Of the 60 or so citable decisions of this century, thefollowing 10 arguably are of most practical significance to the TTABpractitioner. In Toro Co. v. ToroHead Inc., 61 U.S.P.Q.2d 1164(TTAB 2001). In December 2001, the TTAB issued its long-awaited first decisionapplying the provisions of the Federal Trademark Dilution Act of 1995 (FTDA).The Torodecision is significant not just for its direct impact on TTABproceedings, but also for its potential impact on federal court litigationunder the FTDA: One of the reasons Congress amended the FTDA in 1999 to permitdilution claims in TTAB opposition and cancellation proceedings was the beliefthat the board “would give guidance to litigants and the Trademark Bar,through precedent, with respect to such issues as what qualifies as a ‘famous’mark, and what constitutes dilution, whether by blurring or tarnishment.”H.R. Report No. 106-250, 106th Cong., 1st Session (1999), at 6. In Toro,the TTAB delivered a clear message: Dilution is an “extraordinaryremedy” reserved for “truly famous” marks. An augmented panel of the board held that the mark ToroMRand accompanying design for “very low reluctance, thin film magneticreading and writing heads for sale to [original equipment manufacturers] ofhigh performance computer disk drives” is not likely to cause confusionwith and does not dilute the opposer’s Toro mark registered for variousproducts and services relating primarily to lawn and ground care. The boardfound confusion unlikely because of the dissimilarity of the respectiveproducts and services and the differences in channels of trade. As to dilution, the board provided a lengthy discussion of �43(c) of the trademark act and its evidentiary requirements, concluding, amongother things, that the opposer’s evidence — use since 1914, annual sales ofmore than $1 billion, annual advertising expenditures of more than $35 million,26 federal registrations and brand dominance in various markets — was notsufficient to prove the Toro mark famous under the FTDA. CANINE CONFUSION In Recot Inc. v. M.C. Becton, 56 U.S.P.Q.2d 1859(TTAB 2000). On remand from the U.S. Court of Appeals for the Federal Circuit(54 U.S.P.Q.2d 1894 (Fed. Cir. 2000)), the board found a likelihood ofconfusion between the mark Frito Lay for snack foods and Fido Lay for edibledog treats. Mindful of the Federal Circuit’s instruction that “the fame ofthe mark must always be accorded full weight when determining the likelihood ofconfusion,” the board, with obvious reluctance, ruled that thedissimilarity of the parties’ goods was not sufficient to outweigh theevidentiary elements favoring the opposer: the fame of the Frito Lay mark, thesimilarity of the two marks and the nature of the goods as impulse-purchaseitems. Subsequently in Toro, the board did not accord theToro mark such a broad scope of protection in the likelihood of confusionanalysis. It considered the recognition and renown of the Toro mark to be astrong factor in the Toro Co.’s favor, but one that was outweighed by thedissimilarities in the goods and services, the sophistication of the purchasersof ToroHead’s goods and the differences in channels of trade. It will beinteresting to see how the TTAB, in light of its narrow reading of the dilutionremedy, treats the fifth DuPontfactor (the fame of the mark) in futurelikelihood-of-confusion analyses, and how the Federal Circuit addresses theboard’s treatment of these issues. See In re E.I. du Pont de Nemours &Co., 476 F.2d 1357, 1361 (CCPA 1973). • In re Styleclick.com Inc., 57 U.S.P.Q.2d 1445 (TTAB2000). While acknowledging that various “e-” prefix marks have beenregistered in past years, the board stepped into the new cyber-century when itobserved that the prefix “e-” is “commonly recognized andunderstood by virtually everyone as a designation for the Internet.” Itconcluded that “[w]hen this non-source-identifying prefix is coupled withthe descriptive word ‘fashion,’ the mark E FASHION, as a whole, is merelydescriptive for Applicant’s goods and/or services” (relating to retrievalof fashion information). In a companion case, In re Styleclick.com Inc.,58 U.S.P.Q.2d 1523 (TTAB 2001), the board employed the same reasoning to findthe mark Virtual Fashion merely descriptive for software and electronicretailing services in the field of fashion. • In re Creative Beauty Innovations Inc., 56U.S.P.Q.2d 1203 (TTAB 2000). In this packaging trade dress case, the boardruled that the applicant’s container for bath products (having both concave andconvex sides, and a cap elongated on one side) is an inherently distinctivetrademark. The TTAB reviewed the state of the law in the aftermath of Wal-MartStores Inc. v. Samara Bros. Inc., 529 U.S. 206 (2000) — which held thatproduct design can never be inherently distinctive — and concluded that theU.S. Supreme Court did not adopt the 2nd Circuit’s Abercrombietest ( Abercrombie& Fitch Co. v. Hunting World Inc., 189 U.S.P.Q. 759 (2d Cir. 1976)) tothe exclusion of the CCPA’s Seabrooktest ( Seabrook Foods Inc. v.Bar-Well Foods Ltd., 196 U.S.P.Q. 289 (CCPA 1977)) in determining theinherent distinctiveness of trade dress other than product design. Instead, theboard deemed the tests complementary and found the applicant’s award-winningdesign to be unique and unusual under Seabrook, and fanciful or arbitraryunder Abercrombie. • M-5 Steel Mfg. Inc. v. O’Hagin’s Inc., 61U.S.P.Q.2d 1086 (TTAB 2001). In this case involving elements of bothutilitarian and aesthetic functionality, the board found unregistrable threeproduct configuration marks for “metal roofing tiles and metal ventilatingducts and vents for tile or concrete roofs.” The applicant’s designsmirrored the shapes of roof tiles sold by various manufacturers, thereby makingthe vents unobtrusive when installed in place of the tiles. Guided by the SupremeCourt decisions in Qualitex, 514 U.S. 159 (1995), and TrafFix,532 U.S. 23 (2001), and likening the case to Brunswick Corp. v. BritishSeagull Ltd., 32 U.S.P.Q.2d 1120 (Fed. Cir. 1994), in which the color blackfor outboard motors was held to be functional and unregistrable, the boardconcluded that registration of the applicant’s designs “would hindercompetition by placing competitors at a substantial competitivedisadvantage.” SPELLING COUNTSIn re Who? Vision Systems Inc., 57 U.S.P.Q.2d 1211(TTAB 2000). The applicant failed in its attempt to register the markTactilesense for fingerprint imaging systems because it erroneously spelled themark as Tacilesense on the application drawing page, although the mark wascorrectly set forth on the first page of the application. The board concludedthat, in accordance with recent amendments to the Trademark Rules of Practice,the “mark sought to be registered” is now defined as the markdepicted on the drawing page. The applicant’s proposed amendment of the drawingpage from Tacilesense to Tactilesense was unacceptable because it would effecta material alteration of the mark: The former term has no recognizable meaningwhile the latter term is comprised of two actual words having suggestivesignificance. • In re Upper Deck Co., 59 U.S.P.Q.2d 1688 (TTAB2001). The board exorcised a quasi-”phantom” mark when it affirmed arefusal to register a “hologram device” as a mark for trading cards.The application stated that the applicant did not claim as features of the markits size, shape, content or positioning on the cards. The board ruled that theapplicant was seeking to register more than one mark, in violation of theFederal Circuit’s holding in In re International Flavors & FragrancesInc., 51 U.S.P.Q.2d 1513 (Fed. Cir. 1999). As the board noted,”phantom” marks fail to provide constructive notice to the public ofa registrant’s ownership of a mark because “they cover too manycombinations and permutations to allow an effective search of theregister.” • In re Thomas H. Wilson, 57 U.S.P.Q.2d 1863 (2001).Despite an imaginative argument by the applicant, the board affirmed a � 2(d)refusal to register Pine Cone Brand and accompanying design (the word Brand andthe pictorial representation of fresh fruit being disclaimed) for freshoranges, lemons and grapefruits, finding it likely to cause confusion with themark Pine Cone registered in 1925 for various canned fruits and vegetables. The applicant contended that the board is required, underthe administrative law doctrine of “reasoned decision-making,” to actconsistently with the office’s 1933 issuance of a registration for the verysame mark (for fresh fruit) that the applicant sought to register, despite theexistence of the same Pine Cone registration upon which the board here relied.The board found the reasoned decision-making doctrine inapposite because the1933 decision was not a fully adjudicated decision made by an administrativelaw judge or by equivalent policy-making and adjudicative personnel. In otherwords, the board is not bound by decisions of examining attorneys made in othercases. • PolyJohn Enterprises Corp. v. 1-800-Toilets Inc.,61 U.S.P.Q.2d 1860 (TTAB 2002). In this unfortunately named case, the board, inview of its growing docket of active cases, expressed a desire to deter thefiling of motions that result from a party’s failure to understand the Rules ofPractice. It denied PolyJohn’s request to extend discovery and trial dates andgranted the applicant 1-800-Toilet Inc.’s motion for judgment. PolyJohn failedto take testimony or offer any evidence during its testimony period, butcontended that it believed that 1-800-Toilets, when agreeing to extensions oftime for discovery responses, was also agreeing to extend the testimony periods.The board pointed to the clear language of Rule 2.120(a) that the discoveryperiod is not automatically reset when a party’s time to respond to outstandingdiscovery is extended. • Central Mfg. Inc. v. Third Millenium Technology Inc.,61 U.S.P.Q.2d 1210 (TTAB 2001). The board sanctioned the opposer’s president,Leo Stoller, on the ground that, in filing requests for extension of time tooppose on the basis of non-existent settlement negotiations, Stoller”acted in bad faith and for improper purposes, i.e., to obtain additionaltime to harass the applicant, to obtain unwarranted extensions of theopposition period, and to waste resources of applicant and the Board.”Noting that Stoller and his various corporations appear regularly before theTTAB, the board found that he “has engaged in a pattern” ofsubmitting papers to the board that are based on “false statements andmaterial misrepresentations.” As a sanction, however, the board merelyrequired Stoller to include, with any future extension requests allegingconsent, “written agreement from the applicant as to the truth of theallegation.” Stoller was also the subject of another unusual sanction forsimilar reasons in an uncitable interlocutory decision in S Industries Inc.v. S & W Sign Co., Opposition No. 102,907 (TTAB Dec. 16, 1999). Notingthat “[t]he lack of credibility of Mr. Stoller is a matter of publicrecord,” the board ordered him to copy by hand Rule 11 of the FederalRules of Civil Procedure and certain sections of the Trademark Rules ofPractice, and to file a signed copy thereof with the board. These 10 decisions outside the TTAB mine run reflect themany challenging issues the board must face as it copes with the latest SupremeCourt and Federal Circuit edicts, advances in technology, newly mintedterminology and a burgeoning case load. The TTAB serves an important role inshaping trademark law, and practitioners will be wise to keep abreast of therulings of the board as the 21st century unfolds. John L. Welch is counsel to Boston’s Foley, Hoag &Eliot, www.fhe.com. Afrequent author and lecturer in the trademark field, he is a contributingeditor toAllen’s Trademark Digest.

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