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Intellectual Property Admin Notes 01/12/2009
TTAB    ICANN    BPAI


Headlines

Trademark Trial & Appeal Board Decisions:
TTAB - Potential purchasers would find combination incongruous.
TTAB - Term was likely to be seen as variant of registered mark.
TTAB - No showing that term was common name for type of chair.
TTAB - Two mental steps needed to connect mark and services.
Domain Name Disputes:
WIPO - Respondent played on complainant's fame to lure users.
Board of Patent Appeals and Interferences Decisions:
BPAI - No showing that surfaces were passively germiphobal.
BPAI - Use of process to form layers would have been obvious.  Top


TTAB Decisions

TTAB - Potential purchasers would find combination incongruous.
In re Williams (not citable 12/30/08)  Full Summary  Decision
Williams filed an application to register the mark "Hybrid Heave" for an energy storage and recovery system for active heave comprised primarily of a machine flywheel and a motor generator for generating electricity.  The examining attorney refused registration on the basis of mere descriptiveness and the Board reversed.  It was clear that the involved complex system employed multiple technologies.  Therefore, while the term "hybrid" might literally describe the system because it incorporated multiple technologies, it provided little, if any, useful information.  In addition, the relationship between "Heave," as used in the mark, and the identified goods was indirect at best.  Potential purchasers would find the combination of "Hybrid" and "Heave" in the mark incongruous, if not nonsensical.  Any attempt to make sense of the combination would require a multistage mental process.

TTAB - Term was likely to be seen as variant of registered mark.
In re R&M Materials Handling, Inc. (not citable 12/22/08)  Full Summary  Decision
RM applied to register the mark "EZ Lift" for manually operated hoists suspended by means of an overhead structure used in manufacturing, construction, and utilities applications.  The examining attorney refused registration on the basis of a likelihood of confusion with the registered mark "McKissick Easy-Lift" for overhead bridge crane blocks and the Board affirmed.  It was clear that registrant's crane blocks could be used as part of RM's hoists.  Thus, RM's hoists and registrant's blocks were complementary products.  As for the marks, consumers were likely to view "Easy-Lift" in registrant's mark as a product mark, such that when they viewed "EZ Lift," they would see it as a variation of registrant's mark, in which registrant had used only the product mark without the house mark.  RM's omission of the name "McKissick" in its mark was not sufficient to differentiate the marks.

TTAB - No showing that term was common name for type of chair.
In re Future First LLC (not citable 12/22/08)  Full Summary  Decision
Future sought to register the mark "Banana Chair" for a chair.  The examining attorney refused registration on the basis of mere descriptiveness and the Board reversed.  The Board could not conclude from the evidence of record that the Office had met its burden of showing that the term "banana chair" was the common commercial name for a particular type of chair.  In addition, the Board found that the term was not merely descriptive because, as the examining attorney argued, "Banana Chair" described the shape of the chair.  Although the chair had a curved shape that could suggest the curve of a banana, the chair did not, in fact, look like a banana.  Accordingly, the mark was not merely descriptive.

TTAB - Two mental steps needed to connect mark and services.
In re Clear Channel Outdoor, Inc. (not citable 12/18/08)  Full Summary  Decision
Clear sought to register the mark "Taxi Entertainment Network" for rental of advertising space in broadcast media and preparing and placing ads in broadcast media for others.  The examining attorney refused registration on the grounds of mere descriptiveness and due to a likelihood of confusion with the registered "Taxi" marks (one with a diamond design) for advertising agency and graphic art design services.  The Board affirmed as to the latter basis, but reversed as to the former basis.  Regarding the likelihood of confusion, the marks were similar in appearance, sound, connotation, and commercial impression.  The evidence was sufficient to establish that registrant's advertising agency services encompassed Clear's identified services.  As to the issue of descriptiveness, it would take at least two mental steps to connect the mark with a significant feature of Clear's services.  Top

Domain Name Disputes

WIPO - Respondent played on complainant's fame to lure users.
Johansson v. Dare (12/16/08)  Full Summary  Decision
The essence of Dare's position was that the posting of the "contest" in question on his website was a tongue-in-cheek exercise, which was intended to parody a typical Hollywood movie promotion in an interactive and humorous way.  However, this explanation did not jive with the facts.  The "contest" ran only for a few days in August 2008, while the domain name was registered by Dare as long ago as April 2007.  Further, while Dare claimed to have received emails from an anonymous source offering him compensation to devise a promotional concept in support of the United States release of Johansson's new movie, that correspondence was allegedly received some sixteen months after Dare acquired the domain name.  Dare had played on Johansson's famous reputation in order to lure Internet users to his website.  Top

BPAI Decisions

BPAI - No showing that surfaces were passively germiphobal.
Ex parte Pensel (not binding 9/15/08)  Full Summary  Decision
The examiner rejected various claims of the '365 application on the basis of obviousness and the Board reversed.  The examiner concluded that it would have been obvious to one skilled in the art to to utilize Yan's surface texture on Davidson's stent.  However, the examiner had failed to provide an evidentiary foundation to support the assertion that one skilled in the art would consider a surgical microscope to read on Davidson's stent or Yan's prosthesis usable for mammary or other implants.  Regarding the rejections based on the Burrell references, Burrell I expressly taught that it was possible for microorganisms to grow on the surface of the devices.  Thus, Burrell I expressly taught that the coating for medical devices was not passively germiphobal.  Moreover, neither reference expressly taught a surface that was structured such that undesirable substances could not adhere.

BPAI - Use of process to form layers would have been obvious.
Ex parte White (not binding 9/16/08)  Full Summary  Decision  
The examiner rejected various claims of the '285 application on the basis of obviousness and the Board affirmed.  The examiner found that it would have been obvious to use Dorfman's consolidation process to form Reddy's metal plates in order to fabricate metal layers with desired shapes.  The Board agreed with this conclusion.  Dorfman's disclosures that tungsten copper was used to form heat sinks for electronic devices, had excellent conductivity, and that solid state sintering was used to form objects from tungsten copper powder supported using the solid state consolidation process to form Reddy's metal plane heat sinks for use in electronic devices.  In addition, it would have been obvious to modify the method of making a thermal management device for electronic devices as taught by Reddy in view of Dorfman by using Trenkler's ultrasonic vibration technique.  Top


In re Williams (not citable 12/30/08)  Decision  Short Summary
Williams filed an application to register the mark "Hybrid Heave" for an energy storage and recovery system for active heave comprised primarily of a machine flywheel and a motor generator for generating electricity.  The examining attorney refused registration on the basis of mere descriptiveness and the Board reversed.

The examining attorney argued that the term "Hybrid" was merely descriptive of the identified goods because they combined two or more technologies and that "Heave" was merely descriptive of the environment in which the goods were used (i.e., where the ocean was moving up and down).  The goods at issue were used in offshore oil and gas drilling operations aboard ships specially designed to perform drilling while anchored.  Those operations included heave compensators so as to cause the drill string to move in relation to the heave of the vessel.  It was clear that the involved complex system employed multiple technologies.  Therefore, while the term "hybrid" might literally describe the system because it incorporated multiple technologies, it provided little, if any, useful information.  The explanation of the system also illustrated the nature of the relationship between the active heave of the waves and the ship, on one hand, and the energy storage and recovery system, on the other hand.  The relationship between "Heave," as used in the mark, and the identified goods was indirect at best.  The mark, when viewed in its entirety and as applied to the involved goods, was suggestive.  Potential purchasers would find the combination of "Hybrid" and "Heave" in the mark incongruous, if not nonsensical.  Any attempt to make sense of the combination would require a complex, multistage mental process  Top


In re R&M Materials Handling, Inc. (not citable 12/22/08)  Decision  Short Summary
RM applied to register the mark "EZ Lift" for manually operated hoists suspended by means of an overhead structure used in manufacturing, construction, and utilities applications.  The examining attorney refused registration on the basis of a likelihood of confusion with the registered mark "McKissick Easy-Lift" for overhead bridge crane blocks and the Board affirmed.

It was clear that registrant's crane blocks could be used as part of RM's hoists.  Thus, RM's hoists and registrant's blocks were complementary products.  The record also established that material handling equipment companies, including RM, sold hoists, cranes, and parts for each.  The products moved in the same channels of trade and were sold to the same classes of purchasers.  As for the marks, they were similar in terms of sight, sound, meaning, and commercial impression to the extent that they both included the term "Easy-Lift" or its phonetic equivalent "EZ Lift."  Nevertheless, the marks were different because the registered mark incorporated the term "McKissick."  In the Board's view, the similarities between the marks outweighed the differences.  Consumers were likely to view "Easy-Lift" in registrant's mark as a product mark, such that when they viewed "EZ Lift," they would see it as a variation of registrant's mark, in which registrant had used only the product mark without the house mark.  RM's omission of the name "McKissick" in its mark was simply not sufficient to differentiate the marks.  The record did not show that "Easy-Lift" was so highly suggestive that RM's omission of "McKissick" created significant differences in the marks.  Even though the factor of the degree of consumer care favored RM, it was not sufficient to outweigh the other factors favoring a finding of a likelihood of confusion.  Top


In re Future First LLC (not citable 12/22/08)  Decision  Short Summary
Future sought to register the mark "Banana Chair" for a chair.  The examining attorney refused registration on the basis of mere descriptiveness and the Board reversed.

Future's owner, Dean, stated that he invented a legless rocking chair having a curved bottom, which he began marketing in 1974 under the "Banana Chair" mark.  These chairs were designed for lounging, watching television, or playing video games.  The examining attorney contended that the term "banana chair" was the common commercial name for a curved, legless rocking chair that was not associated with any one particular source.  The examining attorney submitted documents in which the term "banana chair" was used for furniture that seemed similar to Future's product.  The ads in question were from Utah, Dean's home state.  The Board could not conclude from the evidence of record that the Office had met its burden of showing that the term "banana chair" was the common commercial name for a particular type of chair.  In addition, the Board found that the term was not merely descriptive because, as the examining attorney argued, "Banana Chair" described the shape of the chair.  Although the chair had a curved shape that could suggest the curve of a banana, the chair did not, in fact, look like a banana.  Top


In re Clear Channel Outdoor, Inc. (not citable 12/18/08)  Decision  Short Summary
Clear sought to register the mark "Taxi Entertainment Network" for rental of advertising space in broadcast media and preparing and placing ads in broadcast media for others.  The examining attorney refused registration on the grounds of mere descriptiveness and due to a likelihood of confusion with the registered "Taxi" marks (one with a diamond design) for advertising agency and graphic art design services.  The Board affirmed as to the latter basis, but reversed as to the former basis.

Regarding the likelihood of confusion, the Board concluded that Clear's mark was similar to the cited marks.  While there were differences between the marks, the Board nonetheless found that the marks were similar in appearance, sound, connotation, and commercial impression.  In particular, the dominant portion of the applied-for mark was "Taxi" inasmuch as the descriptive wording "Entertainment Network" was subordinate in nature.  The dominant portion of Clear's mark was identical to the entire word portion of registrant's "Taxi" marks.  Due to the shared term "Taxi," Clear's mark was similar to both registered marks.  In addition, the evidence was sufficient to establish that registrant's advertising agency services encompassed Clear's identified services.  Unfortunately for Clear, it neglected to provide any evidence regarding the decision-making process used by its purportedly technologically savvy customers, the role that trademarks played in that process, or how observant and discriminating they were in practice.

As to the issue of descriptiveness, the examining attorney argued that "Taxi" described the fact that the ads would be seen in taxicabs.  As to the other wording, the examining attorney asserted that it described the fact that the ads would be placed in broadcast media.  Although the record demonstrated that "Taxi" and "Entertainment Network," as individual components of the mark, described features or characteristics of Clear's services, the examining attorney did not prove that consumers, upon seeing the entire mark, would perceive it as merely describing a feature or characteristic of Clear's advertising services.  It would take at least two mental steps to connect the mark with a significant feature of Clear's services.  Top


Johansson v. Dare (WIPO 12/16/08)  Decision  Short Summary
Scarlett Johansson is a famous actress and celebrity who claims common law trademark rights in her name.  Dare registered the "scarlettjohansson.com" domain name in April 2007.  In August 2008, the domain name pointed to a site featuring a picture of Johansson with text enquiring if the visitor was "up to a threesome with Scarlett."  The text went on to indicate that the "threesome" referred to a movie date with Johansson, the contest winner, and a friend of the winner.  Further text explained that the site was aimed at promoting the United States release of Johansson's new movie, Vicky, Cristina, Barcelona.  Johansson states that she never agreed to participate in the contest.  As of the date of the complaint, the domain name resolved to a search engine with links related to the actress.  Dare claims that he was contacted via email by an anonymous source offering to pay him to devise a promotional concept in support of the upcoming film release.  Johansson's counsel sent Dare a cease and desist letter in August 2008, but no response was received.

The essence of Dare's position was that the posting of the "contest" in question on his website was a tongue-in-cheek exercise, which was intended to parody a typical Hollywood movie promotion in an interactive and humorous way.  However, this explanation did not jive with the facts.  The "contest" ran only for a few days in August 2008, while the domain name was registered by Dare as long ago as April 2007.  Further, while Dare claimed to have received emails from an anonymous source offering him compensation to devise a promotional concept in support of the United States release of Johansson's new movie, that correspondence was allegedly received some sixteen months after Dare acquired the domain name.  The false "contest" that Dare posted on his website in August 2008 therefore did not provide any explanation for the choice of a domain name that Dare appeared to have registered in April 2007.  Moreover, Dare had provided no evidence of how the domain name was used in the period between April 2007 and early August 2008.  Dare's claim that someone sent him an anonymous email offering him money to devise a promotional campaign for a movie seemed incredible.  The panel noted that there was nothing on the site in question to make it clear that the site was not associated with Johansson.  Dare had played on Johansson's famous reputation in order to lure Internet users to his website.  As to the issue of bad faith, the panel found it likely that Dare had in mind some ultimate commercial gain from the creation and posting of the "contest" site.  Top


Ex parte Pensel (not binding 9/15/08)  Decision  Short Summary
The examiner rejected various claims of the '365 application on the basis of obviousness and the Board reversed.

The claims are directed to a medical device comprising a surgical microscope with a passively germiphobal surface created by having a plurality of elevations or indentations spaced from one another to achieve a lotus blossom effect.  The examiner concluded that it would have been obvious to one skilled in the art to to utilize Yan's surface texture on Davidson's stent.  However, the examiner had failed to provide an evidentiary foundation to support the assertion that one skilled in the art would consider a surgical microscope to read on Davidson's stent or Yan's prosthesis usable for mammary or other implants.  Stated differently, the examiner had not identified a teaching of a surgical microscope in either Davidson or Yan.  Regarding the rejections based on the Burrell references, Burrell I expressly taught that it was possible for microorganisms to grow on the surface of the devices.  In addition, Burrell I did not teach a surface having indentations or elevations.  To the contrary, Burrell I taught that the structure of the medical device's surface was intended to enhance to release of metal as ions, atoms, molecules, or clusters into an appropriate solvent.  Nevertheless, the examiner relied on Burrell II for the sole purpose of its teaching of a coating surface having valleys and peaks.  However, as discussed above, Burrell I expressly taught that the coating for medical devices was not passively germiphobal.  Moreover, neither reference expressly taught a surface that was structured such that undesirable substances could not adhere.  Top


Ex parte White (not binding 9/16/08)  Decision  Short Summary
The examiner rejected various claims of the '285 application on the basis of obviousness and the Board affirmed.

The invention involves a method of fabricating a thermal management device comprising the steps of using a solid state consolidation process to deposit a plurality of first layer materials exhibiting a high degree of thermal conductivity and separating the first layer materials with a different, second material having a desired physical property.  The examiner found that Reddy disclosed every feature of claim 1 except the solid state consolidation process.  The examiner also found that Dorfman disclosed sintering or consolidating metal materials into desired shapes.  Based on these findings, the examiner concluded that it would have been obvious to use Dorfman's consolidation process to form Reddy's metal plates in order to fabricate metal layers with desired shapes.  The Board agreed with this conclusion.  Dorfman's disclosures that tungsten copper was used to form heat sinks for electronic devices, had excellent conductivity, and that solid state sintering was used to form objects from tungsten copper powder supported using the solid state consolidation process to form Reddy's metal plane heat sinks for use in electronic devices.  Moreover, the teachings of Dorfman and Reddy together would have suggested the claimed "layers" feature.  In addition, it would have been obvious to modify the method of making a thermal management device for electronic devices as taught by Reddy in view of Dorfman by using Trenkler's ultrasonic vibration technique to sinter together the powdered materials because such a technique produced a high strength product.  Top


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