The Cupcakery suffers minor setback in lawsuit against former employee

I previously wrote (link here) about the trademark infringement lawsuit filed by The Cupcakery, LLC (“The Cupcakery”) against former employee Andrea Ballus and her company Sift: A Cupcakery, LLC (“Sift” and together with Ballus, the “Defendants”) in Nevada District Court. See The Cupcakery, LLC v. Ballus et al, Case No. 09-cv-00807 (D. Nev.).

In addition to the trademark infringement allegations regarding use of the term “Cupcakery” (which The Cupcakery claims as its exclusive trademark but which Defendants claim has become generic for a cupcake bakery), The Cupcakery also set forth a claim for common law fraud based on Ballus’ failure to disclose certain information to The Cupcakery prior to, and during the course of her employment (such as her intent to move to California, her intent to open a competing cupcake; the fact that she had registered Sift as a limited liability company with the California Secretary of State). The Cupcakery tried to argue that such omissions constituted intentional misrepresentations because there existed a “special relationship” between The Cupcakery and Ballus arising from her signing of a confidentiality agreement that gave rise to a duty to disclose such information.

However, as reported by Las Vegas Sun, the Court granted Defendants’ Motion to Dismiss The Cupcakery’s fraud claim (but with leave to amend) because Plaintiff failed to cite to any language in the confidentiality agreement that imposed a duty on Ballus to disclose the type of intentions that The Cupcakery now claims should have been disclosed (and the failure of which would rise to the level of common law fraud). A copy of the Order can be downloaded here.

The court stated the following regarding Plaintiff’s allegations regarding a “special relationship” between The Cupcakery and Ballus:

Plaintiff has failed to demonstrate that the relationship between Ballus and Plaintiff, her employer, was such that Ballus’s failure to disclose gives rise to a misrepresentation or fraud claim. While Plaintiff avers that Plaintiff signed a confidentiality agreement which may give rise to the creation of a special relationship, Plaintiff has failed to include the language of said agreement, or how this alleged agreement imposed upon Plaintiff a duty to disclose that she intended to move to California, that she had any intention to open a cupcake business, or that she had registered Sift as a limited liability company with the California Secretary of State.

The Motion to Dismiss was only directed to the fraud claim, so the court’s decision only dismissed that single claim. The case will continue forward on the more interesting (at least more interesting to me) issues regarding The Cupcakery trademark rights to the term “cupcakery” in connection with a cupcake bakery.

Meanwhile, much to my surprise given that parties usually suspend TTAB proceedings when a related district court action is pending, it appears that the opposition filed by The Cupcakery against Sift’s application to register the mark Sift: A Cupcakery is moving forward towards the trial period over the next few months. See The Cupcakery, LLC v. Sift: A Cupcakery LLC, Opposition No. 91188833 (T.T.A.B. Filed February 12, 2009). The parties may have a decision by the TTAB on the trademark questions before the district court even has the opportunity to address any trademark issues.

The SOHMER piano trademark war - a new battle front opens in Illinois District Court

A long-running battle being waged between two companies over the trademark rights to the mark SOHMER in connection with the sale of pianos just got kicked up an additional notch.

On February 15, 2001, an Illinois man named Edward Richards filed an intent-to-use trademark application with the U.S. Patent and Trademark Office (“PTO”) to register the mark SOHMER in connection with pianos. Eight days later, on February 23, 2001, a company named Burgett, Inc. (“Burgett”) filed an intent-to-use trademark application to register the identical mark SOHMER in connection with pianos.

The PTO initially refused Richards’ application on the basis of Section 2(e)(4) that the mark was primarily a surname. In order to get around this refusal, Richards filed an Amendment to Allege Use on August 19, 2002, and then amended his application to seek registration of the mark on the Supplemental Register (in order to get around the surname refusal). However, for reasons discussed herein, the PTO did not move his application onto registration, but instead suspended prosecution of Richards’ application

The PTO also initially refused Burgett’s application on the basis of Section 2(e)(4). The PTO also cited the existing of Richards’ earlier filed application as possible grounds for a Section 2(d) likelihood of confusion rejection and suspended prosecution. However, when Richards converted his application to one on the Supplemental Register, the effective filing date of the application changed to the date he filed his Amendment to Allege Use which was after the effective filing date of Burgett’s application, and thus it no longer could serve as a basis for a possible Section 2(d) refusal.

Of course, there was still the little matter of the Section 2(e)(4) refusal. The PTO made its refusal to register based on Section 2(e)(4) final. Burgett filed a request for reconsideration, which was considered after an ex parte appeal was filed to the Trademark Trial and Appeal Board and the Board remanded the case back to the PTO for consideration of the request for reconsideration. The PTO denied the request for reconsideration on November 20, 2003, and ordered the case back to the Board.

Then a funny thing happened in early 2004. Burgett’s President, Gary Burgett, filed a declaration with the PTO in February 4, 2004, that Burgett was the owner of the rights and goodwill to the mark SOHMER in connection with pianos that had been developed since 1872 by the Sohmer & Company (later Mason & Hamlin) and that the mark had become distinctive for pianos through “the substantially exclusive and continuous use of the mark in commerce by the Applicant and related companies for at least five years” preceding February 4, 2004.

While not clear from this Declaration, the basis for Burgett’s claim of ownership of the SOHMER name was the fact that Burgett’s predecessor-in-interest, Burgett Brothers Incorporated, had acquired the assets of Mason & Hamlin out of bankruptcy in 1996, including the trademark registrations owned by the bankrupt company at the time. The PTO’s Assignments records (click here) reflect the chain of title for the SOHMER marks that were still registered at the time. At the same time, it was apparently well known in the piano industry that the SOHMER factory in Pennsylvania had closed down in 1994.

Nevertheless, reviewing the Declaration at face value, Burgett declared that the SOHMER mark had been used continuously since February 1999. Of course, of the four SOHMER marks that had been registered with the PTO (word mark, design mark, SOHMER & CO., and design mark), the SOHMER word mark was canceled on December 20, 2000, for failure to file a Section 8 Declaration of Use and the SOHMER design mark was cancelled on December 2, 2001 for failure to renew. Nonetheless, the Declaration was accepted at face value and apparently enough to convince the PTO to allow the mark to be registered on the Principal Register under Section 2(f) based on a claim of acquired distinctiveness.

After the mark was published for opposition, Richards, who had assigned his own application to his company Persis International, Inc. (“Persis”), filed an opposition on October 19, 2004. Persis International, Inc. v. Burgett, Inc., Opposition No. 91162715 (TTAB Oct. 19, 2004).

The opposition progressed along for several years with Richards showing Burgett and the world that you don’t need an attorney to make an effective legal argument. Because an officer of a company can represent the company before the TTAB, Richards served as the legal representative for Persis during the entire opposition.

During discovery (which became so evasive at one point that Persis obtained sanctions against Burgett), it was discovered that Burgett’s basis for claiming that the SOHMER mark had continued to be used was a single invoice of a sale of a single piano to who it turns out was an employee (who according to affidavit testimony from that employee, purchase the piano first and was then asked if they could change the name on the front of the piano to SOHMER). Burgett’s response was that this piano was an original work in progress from the old SOHMER piano company that had closed down in 1994 – despite other evidence that showed the particular piano sold was a KNABE brand piano built in China by the Young Chang Piano Company with specifications that did not match the types of pianos produced by the Sohmer Pennsylvania factory. Burgett also provided vague information about sales figures from the years 1996 – 2006 but did not produce specific sales records.

As the time for trial before the TTAB moved closer, several new developments occurred. On March 11, 2009, Burgett decided to assign its trademark application to Samick Music Corporation (“Samick”), supposedly Burgett’s exclusive licensee of the SOHMER mark based on a license agreement entered into sometime in 2002. A further development was that Burgett’s counsel filed a motion to withdraw as counsel on the basis that Burgett no longer had an interest in the opposition proceeding. While Burgett’s attorneys were allowed to withdraw, Persis was successful at keeping Burgett as a party to the proceeding since it was the declaration of Burgett’s president that provided Persis with its strongest evidence that Burgett had committed fraud on the PTO with its declaration of continuous five years use of the SOHMER mark.

But the biggest development came in the form of Samick’s decision to file a civil lawsuit in Nevada District Court against Persis on April 15, 2009. See Samick Music Corporation v. Persis International, Inc., Case No. 09-cv-00197 (D. Nev.). A copy of the complaint can be downloaded here.

The basis for the sudden filing of a district court complaint given the long running opposition proceeding that was close to the finish line can probably be best explained by the fact that in federal court, a company must be represented by an attorney. And while Richards may have been a vociferous advocate for his company before the TTAB, federal court rules prevent him from performing the same role in this lawsuit (until such time as he gets a law degree and passes a bar exam).

Despite the strategy behind the filing, Samick’s complaint reiterates its position as the rightful successor-in-interest to the SOHMER mark in connection with pianos and attempts to demonize the efforts of Richards to apply for registration of and use the SOHMER mark in connection with pianos. Samick’s causes of action against Persis are for federal trademark infringement and unfair competition, common law trademark infringement and unfair competition, and federal trademark dilution,

The most recent development occurred on November 30, 2009, when Persis and Richards filed a lawsuit in the U.S. District Court for the Northern District of Illinois against Burgett. See Persis International, Inc. et al v. Burgett, Inc., Case No. 09-cv-07451 (N.D. Ill.). A copy of the complaint can be downloaded here.

But where the Nevada complaint laid out the story in the light most favorable to Burgett & Samick, this Illinois complaint lays out the story from the perspective of Richards and Persis.

According to this complaint, at the time Burgett acquired the aforementioned trademark registrations out of bankruptcy from Mason & Hamlin in 1996, the company had not manufactured, sold or distributed any pianos bearing the SOHMER trademark since at least 1994 nor did Burgett have any intent to resume use of the marks. Moreover, Burgett allegedly did not use the SOHMER trademark in connection with the manufacture, sale or distribution of pianos between 1996 and 2003, and accordingly, abandoned its rights to the mark. One interesting fact from the complaint is that in 1999, Burgett supposedly authorized the destruction of five original SOHMER plate pattern that had been used to manufacture the cast iron piano plates that are essentially to manufacturing SOHMER brand pianos.

According to the complaint, Richards contacted Burgett in late 2000 to discuss the possibility of purchasing one of the piano brands that Burgett had publicly announced that it was discontinuing. At that time, Burgett supposedly told Richards that the names SOHMER and GEORGE STECK were available for purchase. Richards and Burgett agreed on the sale of the GEORGE STECK mark for $100,000, and in early 2001, Richards provided an initial deposit of $33,500. However, Burgett later refused to complete the sale or return the deposit unless Richards withdrew his application for the SOHMER trademark. Burgett supposedly offered to sell Richards its rights to the SOHMER trademark, but Richards refused on the basis that Burgett had not used the SOHMER mark, had destroyed the SOHMER plates, and had even let the trademark registrations expire. [Comment—not to mention the fact that Richards had already filed a trademark application to register the mark].

The complaint then turns its focus to the 2002 license agreement with Samick licensing Burgett’s rights in the SOHMER mark to Samick. From Richards’ and Persis’ perspective, Burgett was aware that Persis was using the SOHMER mark in connection with the sale of pianos and that it had not valid trademark rights to the SOHMER mark when it entered into this license agreement with Samick. Persis publicly exhibited its SOHMER pianos at a piano trade show in July 2002. In early 2003, Samick began selling pianos bearing the SOHMER mark which Persis claims infringes its superior rights. Moreover, Burgett’s actions induced Samick’s acts of infringement.

Persis’ first cause of action against Burgett is for contributory trademark infringement based on its license agreement with Samick for the SOHMER mark despite Burgett’s knowledge that it had abandoned any rights to the SOHMER mark with no bona fide intention to resume use as well as Burgett’s knowledge of Persis’ rights to the SOHMER mark. Additional causes of action are for unfair competition under federal, state and common law, violation of Illinois’ deceptive trade practices act, and unjust enrichment and promissory estoppel (based on the $33,500 deposit that Burgett did not return).

So should Samick be able to lay claim to the reputation and goodwill of the SOHMER mark despite the clear break in use of the mark in connection with pianos or did Persis acquire legitimate rights to an abandoned trademark that it should be allowed to assert against Samick? Of course, even if Persis can show that the mark was abandoned and thus the goodwill never properly transferred to Samick, the ability of Persis to assert trademark infringement against Burgett/Samick may still depend on whether or not (and the extent to which) Persis has established its own strong common law rights in the mark since Persis' acceptance of a registration of the mark on the Supplemental Register is tantamount to an acknowledgment that Persis' trademark rights are only as strong as its common law rights. Persis' case is made even more challenging by the fact that much of the time when Persis was trying to build up a reputation in the name was during the same time that Samick was also using the same mark in connection with the same goods albeit not to take advantage of the reputation and goodwill that Persis had established in the name but instead to take advantage of the reputation and goodwill that had been established in the SOHMER name long before (even though legally abandoned).

Smiley Company Frowns On Court’s Decision to Deny Motion to Dismiss

An Illinois district court has denied a motion to dismiss filed by Franklin Loufrani and The Smiley Company SPRL (together “Smiley”) seeking dismissal of numerous counterclaims brought by Wal-Mart Stores, Inc. (“Wal-Mart”) in Smiley’s action under 15 U.S.C. § 1071(b)(1) seeking judicial review of the Trademark Trial and Appeal Board’s (“TTAB”) final decision dismissing Smiley’s opposition to Wal-Mart’s trademark application. See Loufrani et al v. Wal-Mart Stores, Inc., 2009 U.S. Dist. LEXIS 105575 (N.D. Ill. Nov. 12, 2009). For background on the long running dispute and the TTAB decision leading up to the lawsuit by Smiley, see my prior blog post here and John Welch’s post on The TTABlog®.

At the TTAB level, the Board dismissed Smiley’s opposition of Wal-Mart’s application to register its Mr. Smiley Mark (the “Wal-Mart Mark”) and sustained Wal-Mart’s opposition of Smiley’s intent-to-use applications (here and here) for Loufrani’s Smiley Face Design (the “Loufrani Mark”) on the basis that the Wal-Mart Mark had acquired a secondary meaning, the Loufrani Mark had not acquired distinctiveness and so could not be registered, and that Smiley’s use of the Loufrani Mark in certain classes of goods would create a likelihood of confusion with the Wal-Mart Mark.

Rather than appeal the TTAB’s decision to the Federal Circuit, Smiley filed a district court action under Section 21(b)(1) of the Lanham Act (15 U.S.C. § 1071(b)(1)) seeking judicial review of the TTAB’s decision. Smiley sought an order declaring its mark to be distinctive, reversing the TTAB’s decision finding a likelihood of confusion, directing the PTO to issue a Notice of Allowance for its applications, and reversing the TTAB’s decision finding that the Wal-Mart Mark had acquired distinctiveness. In response, Wal-Mart filed a six counterclaims: Count I sought a declaratory judgment that the TTAB’s decision was correct, Counts II-IV sought a declaratory judgment that Smiley’s use or licensing of the Loufrani Mark would constitute trademark infringement under federal and common law, and Counts V-VI sought a declaratory judgment that Smiley’s use or licensing of the Loufrani Mark would violate Illinois’ Deceptive Trade Practices Act and Consumer Fraud and Deceptive Business Practices Act.

Smiley moved to dismiss Counts II-VI on the basis that Counts II-VI presented no case or controversy. Smiley also argued that Counts II-IV should be dismissed because the limited scope of this Court’s review of the TTAB’s decision would make the court’s determination of the issue of trademark infringement an improper advisory opinion. Finally, Smiley moved to dismiss Count VI on that basis that Wal-Mart failed to plead that it suffered actual damages as required under the Illinois statute.

With respect to Smiley’s argument that Wal-Mart’s counterclaims presented no case or controversy, the Court, taking all of the facts in Wal-Mart’s counterclaims in the light most favorable to Wal-Mart, concluded that Wal-Mart had plead sufficient facts establishing the existence of a justiciable controversy. In each of Wal-Mart’s counterclaims, Wal-Mart alleges that if Smiley were to begin to use the Loufrani Mark (the application for which identifies hundreds of goods and services identical to goods and services offered by Wal-Mart in its retail stores), it would create a likelihood of confusion with Wal-Mart’s use of its Wal-Mart Mark.

The court, however, took the common sense approach in determining whether an actual controversy exists by noting that “the primary evidence of a substantial controversy here is the case itself: that is, that the parties have numerous claims against one another over similar smiley-face marks that both desired to register with the PTO.” The court also noted that the parties had already developed clear positions on the issue of infringement, thereby further demonstrating a substantial controversy and adverse legal interests of the parties.

With respect to Smiley’s argument that Wal-Mart’s Counts II-IV would constitute an advisory opinion, Smiley argued that Wal-Mart’s trademark infringement counterclaims inappropriately seek to have the court, in reviewing the TTAB’s decision regarding likelihood of confusion, decide whether hypothetical use of the Loufrani Mark constitutes trademark infringement.

The court noted, however, in a district court’s review of a decision by the TTAB, the district court may rule on the issues of likelihood of confusion and trademark infringement under the Lanham Act (citing CAE, Inc. v. Clean Air Engineering, Inc., 267 F.3d 660, 664, 678 (7th Cir. 2001)). The court added that, under the broad jurisdictional powers conferred by the Lanham Act upon district courts (citing Steele v. Bulova Watch Co., 344 U.S. 280, 283-84 (1952)), it may affirm the TTAB’s explicit finding of likelihood of confusion and apply it to render a declaratory judgment that Smiley’s actions would violate the Lanham Act or common law.

In addition, because the court’s review of the TTAB’s decision is both an appeal and an independent action, the parties are allowed to submit new evidence and request additional relief. Accordingly, Wal-Mart, in its counterclaims, may request additional relief not specifically rendered by the TTAB. Finally, the court noted that because Wal-Mart’s counterclaims arise out of the same transaction or occurrence as Smiley’s claims (i.e., the same trademark oppositions and the TTAB’s findings with respect to both parties), Wal-Mart’s counterclaims are compulsory under Fed. R. Civ. P. 13(a)(1).

Finally, with respect to Wal-Mart’s Count VI, the court noted that it is impossible for a claimant seeking a declaratory judgment that a future act would violate Illinois’ Consumer Fraud and Deceptive Business Practices Act to plead damages since no violation would have yet occurred. And based on Wal-Mart’s showing of a substantial controversy between Smiley and Wal-Mart as to the issue of likelihood of confusion underlying all of Wal-Mart’s counterclaims, including Count VI, the court held that Wal-Mart has adequately pled its allegations in Count VI so as to survive a Motion to Dismiss.

As such, the court denied Smiley’s Motion to Dismiss.

Bellagio Loses Bet on Specimen of Use for DUNES mark for Casino Services

The TTABlog® writes today (link here) on the Trademark Trial and Appeal Board’s decision affirming the PTO’s refusal to allow Bellagio, LLC, the MGM-Mirage subsidiary which owns the Bellagio Hotel & Casino, to register the mark DUNES for “casino services” based on a specimen of use showing the mark on a slot machine (pictured below). See In re Bellagio, LLC, Serial No. 77175007 (June 2, 2009) (not precedential).

Bellagio argued that its DUNES slot machines, which appear throughout the Bellagio casino floor (and are not themselves available for purchase by casino patrons), are used for gaming in Bellagio's casino, thus offering casino services to customers and thereby creating an association between the DUNES mark and the Bellagio.

However, the Board found that this specimen failed to provide the necessary “direct association” between the mark and the applied-for services such that the mark would be “readily perceived as identifying the source of the services.” The Board also noted that there was no evidence that “placing a mark on a slot machine is a typical manner for a casino to use its mark in connection with casino services” nor did Bellagio provide any evidence that the DUNES mark was used on other advertising to promote its casino services.

In the end, the Board found that the association that Bellagio argued customers encountering the DUNES slot machine would have in connecting such slot machines to Bellagio’s casino services offerred where the slot machine is located was not direct, but instead would require “at least one mental” step (including possibly an awareness of the fact that the Bellagio is located where the former Dunes Hotel & Casino used to stand).

The Dunes Hotel & Casino
(demolished in 1993 to make way for the Bellagio)

[Query: Do you think it would have made a difference if the services recited in Bellagio's application had been "gambling services" instead of "casino services"?]

My new favorite TTAB website - TTAB ACROSS THE BOARD

Over this past weekend, I stumbled across TTAB ACROSS THE BOARD. This may be old news for some, but I had never heard of it and I think the website is a must-know for TTAB practitioners – and will soon become their favorite TTAB related website (with the exception of The TTABlog® of course).

As most TTAB practitioners know, filings for TTAB opposition or cancellation proceedings are electronically available through the TTAB’s TTABVUE system. While there is a way to search final decision of the TTAB (link here), there is no current way to search all of the electronic filings filed in such opposition or cancellation proceedings . . . until now.

TTAB ACROSS THE BOARD, a personal project of its creator, attorney Chris Shiplett, is a searchable database of TTAB case status information and TTAB filings that is synchronized nightly with the TTAB’s records. Of course, the search function is only as good as the underlying documents – and searchability will depend on whether the PDF files filed in TTAB proceedings have readable text or are scanned in. Nonetheless, it does appear to fill in a hole where one existed (and which surprisingly the TTAB itself never bothered to implement itself – even though it would probably be in the best position to have done so).

The website also allows registered users to put cases on a “watch list” and even an RSS feed for true TTAB junkies that need to know about every single filing with the TTAB filing when it happens. The website is currently free (and hopefully can stay that way although I would imagine that the creator would appreciate some sponsorships to help defray the cost of what could soon become a popular database). Mr. Shiplett is currently seeking feedback on his website so give it a try and e-mail him with your thoughts and comments.

Iron Maiden Sues Over Comic Book Name

Iron Maiden's Eddie the Head

Daily Breeze reports on the trademark infringement lawsuit filed by the heavy metal group Iron Maiden against the creators of a comic book entitled “Iron and the Maiden” (pictured below) and promoted on the website http://www.ironandthemaiden.com/. See Iron Maiden Holdings Limited v. Iron and the Maiden, LLC, Morgan Rose, LLC, and Jason Rubin, Case No. 09-cv-3102 (C.D. Cal. Filed May 4, 2009). A copy of the complaint is available here.

Iron Maiden Holdings Limited (“Iron Maiden”) holds three federal trademark registrations for the IRON MAIDEN mark (for Clothing, Paper products (decals, posters, etc.), and Live Entertainment Services).

Iron and the Maiden Comic Book Cover

The lawsuit is actually the spillover of an ongoing opposition proceeding that has been pending at the Trademark Trial and Appeal Board since 2007. Iron and the Maiden, LLC applied to register the mark IRON AND THE MAIDEN with the PTO (for comic books, video games, and providing a website with information on comic books and games). When the application was published for opposition in June 2007, Iron Maiden filed an opposition, which has been pending since October 2007 and suspended today with the filing of the above civil action. See Iron Maiden Holdings Limited v. Iron and the Maiden, LLC and Morgan Rose, LLC, Opposition No. 91179834 (T.T.A.B. Filed October 2, 2007).

New England Patriots Lose TTAB Opposition Over 19-0 THE PERFECT SEASON

Followers of John Welch’s The TTABlog® are probably familiar with his ongoing series of decisions filed under the category of WYHA (“Would You Have Appealed?”). Well, after reading his write-up here on the TTAB’s recent precedential decision in Kraft Group LLC v. William A. Harpole, Opposition No. 91185033 (April 22, 2009) (precedential), there may be a new category – “Would You Have Opposed?”

Back on February 1, 2008, with the New England Patriots on the verge of becoming only the second team in NFL history to go undefeated, I wrote (link here) about the Section 1(b) intent-to-use applications filed on January 17, 2008, by Kraft Group, LLC (“Kraft”), the owner of the New England Patriots NFL franchise, for the marks 19-0 and 19-0 THE PERFECT SEASON. The same post also mentioned the earlier filed application to register the mark THE PERFECT SEASON 19-0 filed William Harpole on November 8, 2007, on the Supplemental Register.

Well, Harpole apparently figured out that he meant to file for registration on the Principal Register and that he could amend his application to be on the basis of intent-to-use on the Principal Register. Harpole’s application was published for opposition and Kraft promptly opposed.

In the TTAB opposition, Kraft attempted to argue that Harpole’s application was void ab initio or alternatively that the application's effective filing date must be deemed to be the date on which he amended the application to seek registration on the Principal Register (in April 2008 – well after Kraft’s applications were filed). The TTAB rejected Kraft’s arguments finding that Harpole's original application, even though it originally sought Supplemental Registration, nonetheless had all the information that was necessary to receive a filing date under Trademark Rule 2.21(a) and that the PTO’s Rules and Practices allow applicants the opportunity to provide information missing in the original application so that the mark can be registered without losing the original filing date.

Of course, one wonders why Kraft even bothered to oppose this mark at this stage – after all, by that time (as we all now know full well) all hopes of THE PERFECT SEASON 19-0 were dashed when the New York Giants defeated the New England Patriots in that year’s Super Bowl® brand championship football game. Perhaps Kraft was hoping to knock out Harpole’s application and keep its own applications alive in hopes that the team might pull off another perfect season in the three year time frame following the eventual Notice of Allowance (certainly they have a bona fide intent to achieve another perfect season, right?). Of course, as things stand, Kraft’s application will now be suspended until such time as Harpole’s application is either abandoned for failure to file a Statement of Use or until such time as Harpole files a Statement of Use and the mark registers (at which time Kraft’s application will most likely be rejected over Harpole’s then registered mark). So there is still the chance that Kraft's applications might be allowed eventually (does anybody really think that Harpole intends on putting out THE PERFECT SEASON 19-0 brand clothing?).

So I ask again, given the above – Would You Have Opposed?

And as a final sidenote, while no one has applied for 18-1 THE IMPERFECT SEASON (as noted by the TTABlog), there was no shortage of enterprising (but misdirected from a trademark perspective) persons who forsaw the possibility of the New England Patriots not having a perfect season.

One individual filed for 18-1 THE PERFECT UPSET on February 3, 2008, but the application went abandoned when no statement of use was filed. Another individual filed for 18-1 WORLD CHAMPIONS on February 4, 2008, but that application was also abandoned when no statement of use was filed. Same for 18 AND NO filed on February 4, 2008 – allowed but no statement of use. The New York Post had its three applications (mentioned in this article here) for 18-1 filed February 4, 2008 (here, here, and here), but all three have been abandoned. Which leaves only two applications pending: one company filed for 18-1 on February 4, 2008 (the application is currently suspended, but all cited pending applications have not been abandoned so it should be allowed to proceed) and the remaining applicant filed for WORLD CHUMPS 18-1 on February 21, 2008 (also suspended pending the outcome of the remaining 18-1).

And just because you don’t have a trademark registration for 18-1 for clothing goods doesn’t mean you can get out there and sell them anyway (although I don’t think any of these would qualify as 18-1™ brand clothing).

SmileyWorld's Franklin Loufrani Suffers Setback in Quest for World Domination of the Smiley Face

I have previously written (here and here) about the efforts by Franklin Loufrani to claim exclusive ownership rights over the famed “smiley face” (although admittedly those posts were primarily focused more on the efforts of Eat ‘N Park Hospitality Group, Inc. to claim exclusive rights to a “smiley face” on a cookie).

Loufrani has been embroiled in several trademark oppositions with Wal-Mart at the Trademark Trial and Appeal Board (“TTAB”) over the “smiley face”. Wal-Mart had opposed two of Loufrani’s applications (here and here) to register his Smiley design mark (pictured above). See Wal-Mart Stores, Inc. v. Franklin Loufrani, Opposition Nos. 91150278 and 91154632. Wal-mart also sought to register its own Smiley logo (pictured below), which Loufrani later opposed. See Loufrani v. Wal-Mart Stores, Inc., Opposition No. 91152145 (Filed July 23, 2002).

As reported by The TTABlog®, the TTAB handed down a decision on March 20, 2009, which sustained Wal-Mart's opposition to Loufrani’s application and dismissed Loufrani's opposition to Wal-Mart's application (an outcome that certainly did not make Loufrani smile). See Wal-Mart Stores, Inc. v. Franklin Loufrani, Oppositions Nos. 91150278, 91154632, and 91152145 (March 20, 2009) (not precedential).

The Board stated that the “smiling face” design is a “ubiquitous, non-inherently distinctive design” and a “common feature of modern American culture.” Nonetheless, the Board found that Wal-Mart had proven that its Smiley had acquired distinctiveness prior to Loufrani's priority date of June 3, 1997 – based on its “truly impressive” amount of money on advertising (including television) before Loufrani’s filing date.

Wal-Mart's Smiley on Display

Moreover, the Board found that consumers viewing Loufrani’s “smiley” would view the mark as ornamental because the word “Smiley” is the commonly used name for the “ubiquitous, non-inherently distinctive” smiley face symbol, and thus concluded that his mark was not inherently distinctive. (Loufrani’s applications were filed based on intent-to-use, so he could not argue acquired distinctiveness as Wal-Mart did).

The Board also found a likelihood of confusion between Wal-Mart’s smiley face and Loufrani’s proposed mark for 17 out of the 23 classes of goods recited Loufrani’s application (not that it mattered since the Board’s finding of non-distinctiveness applied to the entire application).

It will be interesting to see if Loufrani continues his fight given the Board’s opinion about non-distinctiveness.

In addition, given that it took a “truly impressive” amount of money for Wal-Mart to stake a claim on a “ubiquitous, non-inherently distinctive design” that has become a “common feature of modern American culture,” one wonders if Eat ‘N Park can continue to claim exclusive rights to its “smiley” cookies when most (if not all) of Eat ‘N Park’s defendants are merely decorating a cookie with that captures this famed ornamental symbol.

Does anybody out there really think that Eat ‘N Park has the same “impressive” advertising dollars to back up its claim of acquired distinctiveness? As the TTAB stated “Considering that we have already determined that the smiling face is a common feature of modern American culture, [acquired distinctiveness] will not be something easily achieved."

Sidenote:

It is surprisngly difficult to find a good JPEG of Wal-Mart's actual mark that is the subject of its trademark registration application. The above picture was from the PTO's database. But I thought I might share some of the more creative versions of the logo that I found on various websites while looking -- many of which (as you might guess) do not have a favorable opinion of Wal-Mart.

Mr. President vs. Mr. Fluffy

On a day when everyone is thinking about the Inauguration of Barack Obama as the 44th President of the United States, thanks to The TTABlog®, all I can think about is Mister Fluffy.

Silly Company! TRIX are for . . . chips?

At least that is the position that General Mills IP Holdings II, LLC, the intellectual property holding company for General Mills which owns numerous trademark registrations for the mark TRIX, is taking in an opposition filed with the Trademark Trial and Appeal Board.

On January 13, 2009, General Mills filed an opposition against the pending intent-to-use application filed by Productos Alimenticios Bocadeli S.A. de C.V. (“PAB”) for the mark QUESITRIX for “vegetable chips” (in class 29) and “grain-based chips” (in Class 30). See General Mills IP Holdings II, LLC v. Productos Alimenticios Bocadeli S.A. de C.V., Opposition No. 91188373 (T.T.A.B. Filed January 13, 2009). A copy of the Opposition can be downloaded here.

At first, it may seem like General Mills is overreaching a bit in attempting to oppose PAB’s registration application for QUESITRIX for chips when General Mills’ mark is TRIX for cereal related product.

However, if you look at General Mills’ actual opposition filing, you learn that, according to General Mills, PAB may be using packaging outside of the United States which depicts the words “QUESI” and “TRIX” on separate lines, with the word “TRIX” in a larger font than the word “QUESI.” General Mills believes that PAB intends to use similar type of packaging for its products in the United States.

A small little fact like that can make all the difference in changing the image of what at first looks like an abusive corporation overreaching in the scope of its trademark rights to the image of a company just trying to prevent the very likely possibility of consumer confusion in the marketplace given the fame of the “TRIX” brand and PAB’s likely use of its mark in commerce.

Then again, below is a picture of goods produce by PAB. If you look closely at the top row, second bag from the right, you can see the “infringing” packaging. You be the judge.

A Test of Your Generic (Trademark) Sensibility

The TTABlog® today offers up a list of Trademark Trial and Appeal Board ("TTAB") decisions addressing genericness as a test to trademark practitioners and the public on the TTAB’s seemingly schizophrenic approach to addressing genericness refusals. You may be surprised what the TTAB has found to be generic and what it has found to be merely descriptive (in which case such mark could be registered on the Principal Register upon a showing of acquired distinctiveness).

KRED faces Opposition by Kellogg’s

On August 7, 2008, Kellogg North American Company (“Kellogg”) filed a Notice of Opposition against a company named Sunshine City, LLC (“Sunshine”), which hosts a website called Ghetto University. See Kellogg North American Company v. Sunshine City, LLC, Opposition No. 91185683 (TTAB August 7, 2008).

Kellogg's, the maker of such well-known cereals as Special K, Frosted Flakes, Froot Loops and Rice Krispies, holds a plethora of trademark registrations for the marks KELLOGG’S, the letter “K”, and SPECIAL K.

Ghetto University’s Motto is Knowledge, Respect, and Diversity. From that concept came the mark KReD. On January 30, 2007, Sunshine filed an intent-to-use trademark application for the design mark KRED for various clothing items.


The heart of Kellogg’s Opposition is that because no color is claimed as a feature of the mark, the letter “K” in the KRED logo could be displayed in Red (as pictured above), and thus likely to be confused with Kellogg’s famous “K” logo. Kellogg’s further argues that because “of the jumbled appearance of the lettering and the likelihood that ‘KRED’ has no meaning to consumers, it could be understood by consumers as representing the phrase ‘K RED,’ which would trigger a connection with Kellogg and its famous ‘Red K’ equity.”

Kellogg’s maintains that that the use of the KRED mark in connection with goods that are directly competitive with or closely related to Kellogg’s goods [Ed. – Kellogg’s does sell various clothing items displaying its famous logos here] is likely to cause consumers to be confused as to origin and sponsorship of Sunshine’s clothing goods or misled into believe that such goods are approved of by Kellogg’s. Kellogg’s also argues that the KRED mark is likely to dilute the distinctiveness of Kellogg’s famous K mark.

All of the other cyclists will be green with envy when

you're riding in your cool Apple Jacks® Cycle Jersey

If Sunshine opts not to fight this opposition and wants to choose an alternative slogan, what would Kellogg's think about “Ghetto University. It’s GUR-R-REAT!”

THEY'RE GR-R-REAT!

Las Vegas Mexican Restaurant Loses TTAB Opposition

The TTABlog® reported on a decision by the Trademark Trial and Appeal Board ("TTAB") upholding an opposition brought by the owners of Zabar’s, a gourmet epicurean emporium in the Upper West Side of New York City, against the owners of Zaba's Mexican Grill, a Las Vegas-based Mexican restaurant chain. See Zabar's & Co. v. Zaba's Grill, LLC, Opposition No. 91163191 (T.T.A.B. July 10, 2008).

Zabar’s, in business since 1934, provides food catering services and retail store and mail order services in the field of gourmet foods using the name “Zabar’s” and holds several related trademark registrations for the ZABAR’S mark for such services.

Zaba’s Grill, LLC ("Zaba's") sought to register the mark ZABA’S (both word mark and design mark) for “restaurant services” claiming date of first use on October 10, 2001. Zabar's filed notices of opposition when the applications were published for opposition citing likelihood of confusion and of dilution of its famous mark as grounds for opposing registration.

The TTAB first addressed (and rejected) Zabar’s claim of fame, finding that its evidence of fame was more along the lines of niche fame and fell short of demonstrating the necessary widespread recognition of Zabar’s name with its products and services. [Ed. – I had never heard of Zabar’s before this decision, but I have seen the Zaba’s restaurants around town].

However, the TTAB did find the mark to be strong, thereby entitling the mark to a broader scope of protection than a less distinctive mark.

In analyzing the other likelihood of confusion factors, the TTAB found 1) the marks to be highly similar in appearance and sound; 2) the services to be related (because Zaba’s broad “restaurant services” could include the offering of catering services and because Zabar’s own retail store services includes food bar/café services from a café it has in its store); 3) the services were offered in similar channels of trade (i.e., the general public); and 4) consumers are not likely to exercise a high degree of care in purchasing inexpensive food items.

The TTAB also rejected as too dissimilar various third party registrations offered by Zaba’s to try and show that Zabar’s was not strong. The TTAB also dismissed the lack of any actual confusion despite over six years of coexistence by the parties on the basis that reliable evidence of actual confusion is difficult to adduce and nonetheless is not necessary to establish likelihood of confusion.

Because the factors on balance weighed in favor of Zabar’s, the Board was left with the conclusion that there exists a likelihood of confusion and sustained Zabar’s opposition to registration.

Vegas™Esq. Comments:
This is one of those cases where, upon first glance, it would seem obvious that there is no likelihood of confusion between the two marks. After all, the USPTO found no likelihood of confusion during the examination phase. And yet, when you actually start to do an analysis of each of the factors according to established legal precedents, you find that each of the factors tends to favor Zabar’s, and you are left with the inevitable conclusion that there must be a likelihood of confusion (despite a gut reaction to the contrary).

One of the arguments made by Zaba’s (and rejected by the Board) was that consumers would not be confused between the two marks because the Zaba’s mark is used in connection with a Mexican restaurant and Zabar’s a New York gourmet market and catering service. Naturally, the Board rejected this argument because Zaba’s application recites “restaurant services” and such services are not limited to Mexican restaurants and likewise Zabar’s registration is not limited to “New York style” gourmet food store and catering. However, one wonders if the TTAB might have been willing to perceive some of those factors in Zaba’s favor if the recitation of services in Zaba’s application had been more specific such as “restaurant services, namely, carry out and dine-in restaurants serving Mexican food.”

As a show of my support for the hometown team, I know where I’m going to be eating out this weekend.

Intel Files Opposition Against INTELLEQUITY service mark application

A New Jersey company named Business Development Partners, LLC (“BDP”) is seeking to register the mark INTELLEQUITY for “consulting services in the field of managing intellectual properties.”

On July 23, 2008, however, Intel Corporation (“Intel”) filed a Notice of Opposition against BDP arguing that registration should be denied because the mark is likely to cause confusion with and/or dilution of Intel’s famous family of INTEL marks. See Intel Corporation v. Business Development Partners, LLC, Opposition No. 91185394 (T.T.A.B. Filed July 23, 2008).

The crux of the likelihood of confusion argument comes down to this: “The marks INTELLEQUITY and INTEL share the first five letters such that the first two syllables of both marks are pronounced exactly the same.” So, what Intel seems to be arguing is that no one else can ever register a trademark or service mark that begins with a suggestive reference to the word “Intellectual” (because any such mark will naturally begin with “intel-“) even if the mark is used on services different from anything in which Intel involved – unless Intel has branched out into the business of consulting on how to manage IP portfolios).

As for dilution, there is no doubt that the INTEL mark is famous. However, I think there is a serious question as to whether the similarity between the INTELLEQUITY mark and the INTEL mark which gives rise to an association between the marks that impairs the distinctiveness of the Intel mark. If anything, most consumers seeing the INTELLEQUITY mark would see it as suggestive of the Intellectual Property services being offered – a unitary composite mark joining the first part of the word Intellectual with the word Equity which makes one think of monetary value of property.

It will be interesting to see if BDP opts to fight this battle. While I think the chances of success for BDP are good, it may cost a good deal of money in legal fees in order to mount a fight against a behemoth like Intel. And since the application was filed as a Section 1(b) intent-to-use application, the cheaper route may just be to switch to another name – although I hope they don’t because I personally think it’s actually a pretty good name for the services they intend to offer.

Does Intel have any plans for filing a cybersquatting action against the owners of http://www.intellequity.com.

TTAB fires another fraud salvo into the trademark legal waters

The TTABlog® reports (link here) on another precedential decision by the Trademark Trial and Appeal Board that demonstrates again the ever increasing threat faced by trademark applicants and owners (not to mention the trademark attorneys representing them) of having their trademark applications opposed and trademark registrations cancelled due to fraud. See Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (June 30, 2008) (precedential).

In this case, it was the Hualapai Tribe’s application to register the mark GRAND CANYON WEST. The Hualapai Tribe owns land on the west rim of the Grand Canyon and in 1986 developed a section of the land about 115 mile east of Las Vegas as a tourist destination which it named GRAND CANYON WEST.

The Hualapai Tribe’s application was opposed by a company named Grand Canyon West Ranch, LLC, which provides helicopter tours of the Grand Canyon from a ranch located along the access road to the Hualapai Tribe’s tourist site, thus the name GRAND CANYON WEST RANCH.

The Hualapai Tribe was able to fend off the opposition’s claims that the GRAND CANYON WEST mark was merely descriptive and/or primarily geographically descriptive by demonstrating its long-time use of the mark, the number of visitors and tour operators to its site on a daily basis, and its wide ranging marketing efforts in Las Vegas and beyond. The “Skywalk” – the famed (or infamous depending on your perspective) see-through glass bridge that extends 70 feet over the Grand Canyon to provide a view of the canyon floor from 4,000 feet – is located at GRAND CANYON WEST.

The "Skywalk"
at the Hualpai Tribe's Grand Canyon West

However, the fact that the Hualapai Tribe during prosecution amended its description of goods and services to include services on which it was not using the mark on the dates of claimed use was enough to doom this application – despite the fact that the specific wording was added as part of an Examiner's amendment after the Examining Attorney spoke with the Tribe’s attorney and the two agreed to an identification of services. In the Examining Attorney's final office action, the Examining Attorney had suggested "ARRANGING FOR RECREATIONAL TRAVEL TOURS AND PROVIDING RELATED TRANSPORTATION OF PASSENGERS BY AIR, BOAT, RAIL OR BUS." Then, in the Examiner's Amendment, the description, pursuant to authorization from the Tribe's attorney, was amended to "ARRANGING FOR RECREATIONAL TRAVEL TOURS AND PROVIDING RELATED TRANSPORTATION OF PASSENGERS BY AIR, BOAT, RAFT, RAIL, TRAM, BUS, MOTORIZED ON-ROAD AND OFF-ROAD VEHICLES, NON-MOTORIZED VEHICLES FEATURING BICYCLES, AND DOMESTIC ANIMALS." (Sidenote: while the Hulaipai Tribe's argument suggests that it was the Examining Attorney's own proposed description of services, one seriously doubts that an Examining Attorney would have proposed the additional, and very specific, forms of transportation that ultimately led to this application's downfall). Furthermore, it did not matter that this statement of goods and services was not a “verified statement" of goods and services such as in a statement of use. The TTAB decision makes clear that “false claims of use of the mark on goods or services, wherever they may appear, . . . are essential to the integrity of the application and registration process.”

Lessons learned: The growing threat of fraud is one that cannot be understated. For trademark applications, check, recheck, and check again every single aspect of a trademark application (whether use-in-commerce or intent-to-use) for accuracy, especially listing of goods and services. For trademark registrations, owners may want to consider conducting a “fraudit” to determine if any valuable registrations are prone to attack on the basis of fraud.

U.S. Supreme Court denies Rosenruist-Gestao Petition for Writ of Certiorari

The U.S. Supreme today denied the petition for writ of certiorari filed by Rosenruist-Gestao E Servicos LDA in its appeal of the Fourth Circuit’s decision holding that a foreign corporation (Rosenruist-Gestao) can be compelled to answer a Rule 30(b)(6) deposition subpoena issued pursuant to 35 U.S.C. §24 arising out of a Trademark Trial and Appeal Board ("TTAB")opposition filed by Virgin Enterprises Limited opposing Rosenruist-Gestao’s intent-to-use trademark application for the mark VIRGIN GORDA. See Rosenruist-Gestao E Servicos LDA, fka Rosenruist-Gestao E Servicos Sociedade Unipessoal LDA v. Virgin Enterprises Limited, 2008 U.S. LEXIS 4416, No. 07-1214 (U.S. May 27, 2008); see also Rosenruist-Gestao E Servicos LDA v. Virgin Enterprises Ltd., 511 F.3d 437 (4th Cir. 2007); Rosenruist-Gestao E Servicos Sociedade Unipessoal LDA v. Virgin Enterprises Limited, Opposition No. 91161535 (TTAB Filed July 29, 2004).

Previous blog posts on the dispute can be found here and here. Summaries of the Fourth Circuit’s decision can be found on Filewrapper.com and The TTABlog®.

So will this decision have the far-reaching impact foreshadowed by Fourth Circuit Judge Wilkinson(the lone dissenter in the Fourth Circuit’s decision)? Can the Fourth Circuit’s decision even be enforced by the district court? Only time will tell.

For now, attorneys involved in trademark disputes with a foreign applicant at the TTAB can have a subpoena issued by the U.S. District Court for the Eastern District of Virginia compelling the foreign company to produce a witness in response to a Rule 30(b)(6) deposition notice.

Contentious trademark opposition over MONTE CARLO spills over into federal court

On March 28, 2008, Société des Bains de Mer et du Cercle des Etrangers à Monaco (“SBM”), a société anonyme Monegasque organized under the laws of the Principality of Monaco, filed a trademark infringement lawsuit against MGM Mirage, Inc. (“MGM Mirage”) and Victoria Partners, L.P. (“Victoria Partners”) in the U.S. District Court for the Southern District of New York. See Societe Anonyme Des Bains De Mer ET Du Cercle Des Etrangers A Monaco Cercle Des Etrangers A Monaco v. MGM Mirage, Inc. et al, Case No. 08-cv-03157 (S.D.N.Y. March 28, 2008). A copy of the complaint can be downloaded here.

SBM is a holding company headquartered in Monte Carlo, Monaco, which operates several casinos and hotels, most notably Le Casino de Monte-Carlo.

The "Real" Monte Carlo Casino?

Victoria Partners, which owns and operates the european-themed Las Vegas hotel and casino Monte Carlo Resort and Casino, since it opened May 1, 1995, was originally a joint venture between Mirage Resorts International and Gold Strike LV. Circus Circus Enterprises, Inc. bought out Gold Strike, and then in 1999 changed its name to Mandalay Resort Group. Mirage Resorts International later merged with MGM Grand Inc. to form MGM Mirage. Finally, last year, Mandalay Resort Group successfully merged into MGM Mirage.

Le Casino Monte Carlo de Las Vegas

The origins of this dispute appear to stem from a service mark application (technically, a concurrent use application in light of some Montana business apparently using the same name, but that's a discussion for another post) for the mark MONTE CARLO (for casino services) filed July 12, 2001, by Victoria Partners. After the mark was published for opposition on October 19, 2004, SBM filed a notice of opposition on February 15, 2005 with the Trademark Trial and Appeal Board ("TTAB"). See Societe Anonyme Des Bains De Mer ET Du Cercle Des Etrangers A Monaco Cercle Des Etrangers A Monaco v. Victoria Partners, Opposition No. 91164390 (TTAB February 15, 2005). The grounds for opposing registration (in SBM’s amended notice of opposition) were under 2(d) likelihood of confusion and 2(a) false suggestion of a connection with SBM and the Casino de Monte-Carlo.

Much of the district court complaint is spent providing some interesting insight into the history of Monaco and the Monte Carlo quarter and SBM’s Casino de Monte-Carlo as well as providing details regarding SBM’s U.S. and worldwide promotion and marketing of its historic casino and the publicity the casino has received (especially in Hollywood movies) and regarding SBM’s sales activities in the United States (recruiting high rollers to visit its casino, opening credit lines for customers planning to gamble at its casino, providing a VIP card for guests staying at one of SBM’s hotels allowing free admission into its casino, and taking reservations for its hotels).

As one can guess, SBM objects to Victoria Partner’s use of the name Monte Carlo in connection with casinos. The causes of action are federal unfair competition (under 15 U.S.C. 1125(a)), federal trademark infringement (the complaint cites 15 U.S.C. §1114(1) although no U.S. registered trademark is cited in the complaint), federal trademark dilution (§1125(c)), cybersquatting (under 15 U.S.C. §1125(d)), deceptive trade practices under New York law (§349(h) of the New York General Business Law), false advertising under New York law (§350-e(3) of the New York General Business Law), trademark dilution under New York law (§360-l of the New York General Business Law), common law trademark infringement, and common law unfair competition.

The big question of course is what prompted SBM to suspend its TTAB proceedings in favor of a federal court action after all this time? The answer may have something to do with how SBM’s opposition was progressing.

In its notice of opposition and amended notice of opposition, SBM cites to a use-in-commerce application it filed on May 2, 2002, for the mark CASINO DE MONTE CARLO for “operating resort and gambling facilities, casino gambling; education, providing of training; entertainment; sporting and cultural activities,” based on its foreign registration of the mark in Monaco, and claiming use in commerce back to 1984 (with first use in 1863) although the “operating resort and gambling facilities, casino gambling” description was apparently pared down to just “resort hotels.” Also noteworthy is the fact that on November 7, 2001, SBM had filed an intent-to-use application for the mark CASINO DE MONTE CARLO for “education; providing of training; entertainment; sporting and cultural activities” but expressly abandoned the application July 3, 2002.

During discovery, Victoria Partners asked SBM about evidence of its use of the mark on all of the goods cited in its “use-in-commerce” application. After all, SBM claimed to be using the mark in commerce on certain services that six months earlier it had claimed it was only intending to use. After receiving an unsatisfactory answer, Victoria Partners filed a motion to compel a more complete response to its interrogatory about use. Soon after, on November 14, 2007, SBM filed another use-in-commerce application for the mark CASINO DE MONTE CARLO for casino services. The application again cites first use in commerce as 1984, but does not reference a foreign registration this time.

Then, on December 20, 2007, SBM filed an express abandonment of the 2002 application which it had cited in its notice of opposition. So, in January 3, 2008, SBM sought to amend its Amended Notice of Opposition once again to replace the citing of the 2002 application with the newly filed 2007 application. Well, it did not take Victoria Partners long, in opposing SBM’s motion to amend, to cite the “fraud” trump card. SBM likely realized that it may have harmed its position at the TTAB (i.e., fraud and/or unclean hands) and opted to start fresh at the district court.

Another reason SBM may have opted for district court could be the opposition proceeding that it is facing currently regarding a Madrid Protocol application it filed on June 15, 2005, to register the mark MONTE-CARLO BAY HOTEL & RESORT for nine classes of goods and services, including “Entertainment services, namely conducting casino games; conducting and providing facilities for special events featuring casino and gaming contests and tournaments, leasing of casino games, providing casino facilities.” On December 19, 2007, Victoria Partners filed a notice of opposition opposing SBM’s application. See Victoria Partners v. Societe Anonyme Des Bains De Mer ET Du Cercle Des Etrangers A Monaco Cercle Des Etrangers A Monaco, Opposition No. 91181442 (TTAB File December 19, 2007). SBM’s right to stop Victoria Partners from registering its mark can be addressed at the same time as SBM’s right to use the name in the U.S.

The complaint notes the worldwide publicity that the Monte Carlo Resort and Casino received when the façade of the hotel caught on fire back in January of this year (see Las Vegas Review Journal article on the fire) and even includes a screenshot from CNN coverage of the fire, showing the “Monte Carlo” sign “literally tarnished and consumed by black smoke and fire” – suggesting that SBM felt the recent negative publicity the hotel received harmed its reputation and goodwill and wanted to stop Victoria Partners altogether from using the Monte Carlo name (and not just prevent a trademark registration which is the extent of the TTAB’s powers). Of course, the complaint does not address why SBM felt no concern about likelihood of confusion for the many years beforehand.

In addition, the complaint notes a verbal message supposedly left by a representative of Victoria Partners with a representative of SBM on December 20, 2007, threatening to file a cancellation proceeding against an unidentified registration held by SBM. Strangely enough, the one registration that SBM did have for the mark CASINO DE MONTE-CARLO (a §44(e) application based on a Monaco registration), for various goods across three different classes including video games, printed matter, and board games, was voluntarily surrendered by SBM on February 13, 2008. Coincidence?

Finally, the complaint also cites to a recent letter (attached as an exhibit, but heavily redacted) that supposedly intimates that Victoria Partners was considering bringing its own trademark infringement lawsuit, which suggests that SBM may have felt it wiser to be proactive and on the offensive with respect to its position on the mark MONTE CARLO lest Victoria Partners get to court first.

Of course, the big question is why SBM waited so long to assert its rights in the first place. The Monte Carlo Resort and Casino has been operating since 1995. Victoria Partners did not even seek federal registration of the mark for casino services until six years later. (Note: Victoria Partners did file an application on June 9, 1997 to register the mark MONTE CARLO for “providing bar services, featuring, alcoholic malt beverages brewed on the premises” but the application went abandoned for failure to response to a non-final action). Certainly, the hotel’s name had come to the attention of SBM before that time.

I have three words for SBM: Vail, Bukhara, and Laches.


(Hat Tip to Marty Schwimmer at The Trademark Blog for pointing out (here) the lack of a copy of the complaint on PACER and forcing me to actually do some digging for once to unearth the current status of this long-running, contentious dispute).

TTAB upholds opposition based on applicant’s failure to show bona fide intent to use

On March 28, 2008, the Trademark Trial and Appeal Board (the “Board”) handed down a precedential decision upholding an opposition by L.C. Licensing, Inc., the owner (at the time the opposition was filed) of the word mark ENYCE and mark ENYCE and design (pictured above) both for apparel and headwear, against Cary Berman, the applicant for the mark ENYCE for custom automotive accessories. See L.C. Licensing, Inc. v. Cary Berman, Opposition No. 91162330 (TTAB March 28, 2008) (precedential) (decision here).

While a more detailed analysis of this precedential decision (which also had a 2(d) likelihood of confusion issue) can be found on The TTABlog®, what makes this decision interesting and important is that one of the grounds for sustaining the opposition was the applicant’s lack of bona fide intent-to-use when the application was filed.

L.C. Licensing maintained that Mr. Berman lacked the requisite bona fide intention to use the ENYCE mark in commerce on the identified goods. The Board, citing Lane Limited v. Jackson International Trading Company Kurt D. Bruhl Gesellschaft m.b.G. & Co. KG, 33 USPQ2d 1352 (TTAB 1994) and Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503 (TTAB 1993), stated that the determination of whether applicant had the requisite bona fide intention to use the mark ENYCE on the goods identified in the application must be a fair objective determination based on all of the circumstances and that “absent other facts which adequately explain or outweigh the failure of an applicant to have any documents supportive of or bearing upon its claimed intent to use its mark in commerce, the absence of documentary evidence on the part of an applicant regarding such intent is sufficient to prove that the applicant lacks a bona fide intention to use the mark in commerce as required by Section 1(b).”

Mr. Berman acknowledged not having any documents evidencing an intent to use the ENYCE mark on any custom automotive accessories. The Board also quoted the following deposition exchange regarding Mr. Berman’s intent to use the ENYCE mark:

Q. Did you intend – when you filed this [application] did you intend to actually use [the ENYCE mark] on all these goods?
A. Again, there is no business model associated with this until I receive permission to go ahead and use it and then the business model will be produced.
Q. That’s not the question. When you filed this application, serial number 78320850, did you intend to use the mark ENYCE on fitted car covers?
A. Perhaps –
Q. It’s a yes or no answer.
A. I don’t have any – there’s no specific intentions at this time.
Q. No. At that time though. At the time you filed the application.
A. A car bra, if you want to call that a fitted car cover.
Q. Is that a fitted car cover?
A. Yes, I guess.
Q. Shift knobs?
A. Shift knobs, yes.
Q. You intended to use ENYCE on shift knobs.
A. Yes.
Q. On brake pads?
A. Probably not.
Q. No?
A. No.
Q. You didn’t intend to use ENYCE on brake pads?
A. No.
Q. License plate holders?
A. Probably.
Q. Spoilers?
A. Probably.

The Board found no evidence which explained or which outweighed the failure of Mr. Berman to have any documents to support his claimed intent to use the ENYCE mark in connection with custom automotive accessories at the time he filed the application. Furthermore, his explanation of not wanting to create a business model until the opposition had been decided did not explain his failure to have any documents whatsoever at the time the application that would demonstrate his bona fide intent to use the mark. The Board further noted that the mere assertion of an intent to use the mark without corroboration of any sort, documentary or otherwise, is unlikely to provide credible evidence to establish a bona fide intention to use a mark.

In short, Mr. Berman’s lack of any evidence to corroborate a bona fide intent to use the mark when he filed the application supported the conclusion that Mr. Berman did not have a bona fide intent to use the ENYCE mark on custom automotive accessories when he filed his intent—to-use application.

This decision builds on the Board’s non-precedential decision last year in Intel Corp. v. Emeny, Opposition No. 91123312 (TTAB May 15, 2007) (decision here). In that case, the applicant, Steven Emeny, filed an intent-to-use application to register the mark IDEAS INSIDE for what the Board described as a “broad listing of goods and services.” When the application was published for opposition, Intel opposed registration on the grounds of likelihood of confusion and dilution over its mark INTEL INSIDE. Intel later added an additional ground for opposing registration – that the applicant did not have a bona fide intention to use the mark in connection with the recited services. While "bona fide" is not defined in the Lanham Act, the legislative history which introduced intent-to- use applications suggest that Congress intended the test of “bona fide” to be shown by “objective” evidence of “circumstances” showing “good faith.”

Intel had the initial burden to prove by a preponderance of the evidence that Emeny lacked a bona fide intent to use his mark in connection with the recited services. Intel focused on the fact that Emeny had no documentation to show his plans to use the mark. The Board found this complete absence of any clear, objective evidence to be sufficient for Intel to meet its burden that Emeny lacked the requisite bona fide intention to use the mark unless Emeny could provide an explanation as to why no such documents exist.

The Board found that the evidence in the case supported the conclusion that Emeny lacked the requisite bona fide intent. The application filed by Emeny (along with 8 others like it, which went abandoned) included “an unreasonably broad listing of goods and services.” The Board focused on the fact that there was no evidence of any business plans, nor any evidence of a single business contact with any potential partner who would supply the goods that Emeny would sell. Emeny did not divulge any business or marketing plans and admitted that he conducted no specific planning and never promoted or sold any goods under the mark. The Board concluded that he had no evidence of a bona fide intent to use the mark and upheld Intel’s opposition.

Conclusion
The important lesson for all trademark applicants is that when you file Section 1(b) intent-to-use trademark application, you had better have both a bona fide intent to use the mark for which you are filing as well as some kind of objective evidence documenting such bona fide intent.