Newsletter - Volume 62, March 2011
Something More, Something Less
TTAB Finds no Likelihood of Confusion between Food and Catering Services in
In re Giovanni Food Co., Inc., Serial No. 77796257 (February 18,
2011).
The Trademark Trial and Appeal Board ("the Board") reversed the United States
Patent and Trademark Office's decision to refuse an application for JUMPIN'
JACKS based on a likelihood of confusion with prior registered mark, JUMPIN
JACK'S. In this precedential decision, In re Giovanni Food Co., Inc.,
the Board deemed the marks nearly identical, but the goods and services
unrelated under the "something more" test.
Giovanni Food Co. filed an application to register the trademark JUMPIN' JACKS,
in standard characters, for "barbeque sauce" in International Class 30. The
Examining Attorney refused the mark under section 2(d) of the Trademark Act,
concluding that JUMPIN' JACKS was confusingly similar to prior registration,
JUMPIN JACK'S, for "coffee-house services; and catering services." The
Examining Attorney focused the refusal on the prior mark's "catering services."
The Board disagreed, holding that "catering services" and "barbecue sauce" were
not related enough to create confusion, though the marks were nearly identical.
The Board and Examining Attorney agreed with respect to the marks, both noting
that JUMPIN JACK'S and JUMPIN' JACKS were identical except for the placement of
the apostrophe. The Board also found the connotation and commercial impression
of the marks similar as nothing in the record suggested that use of JUMPIN'
JACKS on barbeque sauce and JUMPIN JACK'S on catering services would result in
differing meanings. Most importantly, the applicant did not dispute the
similarity of marks.
The goods "barbecue sauce" and "catering services" were not related, though,
according to the Board. Goods and services need not be similar to result in a
finding of likelihood of confusion (Helene Curtis Industries Inc. v. Suave Show
Corp., 13 USPQ2d 1618 (TTAB 1989)), but the Board noted that no per se
rule exists listing certain goods and services as "related." Lloyd's Food
Products, Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir.
1993). In addition, the Board turned to Jacobs v. International Multifoods
Corp., 668 F.2d 1234 (CCPA 1982), for further analysis, which held
that the USPTO must show "something more" for likelihood of confusion above and
beyond identical marks covering foods products and restaurant services. Though Jacobs
involved "restaurant services" rather than "catering services," the Board
decided this "something more" requirement would be an appropriate test.
The Examining Attorney supported her conclusion that "barbeque sauce" and
"catering services" were related by submitting third-party registrations for
single marks covering both "catering services" and "barbeque sauce" in addition
to third-party website excerpts for barbeque restaurants offering catering
services and retail barbeque sauce. These particular goods and services often
originated from a singular source, according to the Examining Attorney. The
Board, however, stated that the "something more" test was satisfied when either
1) applicant's mark made clear that its services (restaurant or catering, in
this case) specialized in the registrant's type of goods (See In re Golden
Griddle Pancake House Ltd., 17 USPQ2d 1074, (TTAB 1990)), or 2) when
the mark in question was found to be a "very unique, strong mark," (See In re
Mucky Duck Mustard Co, Inc., 6 USPQ2d 1467, 1469 (TTAB 1988) (MUCKY
DUCK for mustard found confusingly similar to MUCKY DUCK for restaurant
services).
The Board reasoned as follows:
The mere fact that some restaurants that specialize in barbeque also
provide catering services and sell barbeque sauce is not sufficient to
establish a relationship between catering services in general and barbeque
sauce. See Coors Brewing, 68 USPQ2d at 1064. There is no evidence that
registrant's catering services specialize in barbeque. See Azteca, 50
USPQ2d 1209; Golden Griddle, 17 USPQ2d 1074.
The Board also stated that "jumpin jacks" was not a "very strong, unique" term,
under the Mucky Duck test, and ordered the likelihood of confusion
refusal to be withdrawn.
The Board failed to explain why "jumpin jacks" was not a "very strong, unique"
term for the relevant goods and services under the Mucky Duck test,
but simply arrived at the conclusion and proceeded to the holding. It would
have been interesting to hear the Board's analysis on this point, as how would
the USPTO or TTAB establish a standard to determine whether a term is "very
strong," "unique," or both.
—Amanda R. Peluse
Substantial Reform to U.S. Patent Law Passes in the Senate as the "America Invents Act"
On March 8, 2011, the U.S. Senate passed patent reform bill S. 23, entitled the
"America Invents Act" a bill that includes several substantial reforms to
longstanding patent law. The bill now moves to the House of Representatives for
further consideration. At present, there is no timetable for the House to take
up the bill.
The America Invents Act includes many substantial reforms to current U.S. patent
law. A few of the highlights of the bill include the following:
1. Change to First-to-File System
The current filing system awards patents to the "first-to-invent" which has lead
to complicated issues when the first-to-file on a particular invention is not
the first-to-invent. An amendment moving to a first-to-file system would reward
inventors who are diligent in initiating the patent process and would harmonize
the U.S. filing system with the majority of patent systems around the world.
2.Supplemental Examination Process
The "supplemental examination" provision would enable patent owners to request
the USPTO to consider, reconsider, or correct information believed to be
relevant to the patent that may not have been disclosed or not fully considered
during the original examination of the application. In terms of information not
previously disclosed to the USPTO, this provision would potentially eliminate
inequitable conduct allegations during litigation when the supplemental
examination is concluded prior to litigation, as the newly disclosed materials
could not be used to support such a claim.
3. USPTO Fees
The bill gives the USPTO the authority to set patent and trademark fees without
the prior approval of the Congress. The bill also ends the current system of
diverting fees paid to the USPTO into a general fund and directs the collected
fees into a fund for use by the USPTO for future expenditures, e.g. technology
upgrades, hiring and training of new patent examiners.
4. Third Party Prior Art Submissions during Prosecution
The bill would enable third parties to submit prior art for consideration during
patent application examination.
5. Post-Grant Review Proceedings
Post-grant review could be requested on any grounds within the first 9-months of
the patent grant, which should quickly address patents that should not have
issued, reducing litigation later in the life of the patent.
6. Ban on Tax Strategy Patents
Tax strategy patents, e.g. strategies for reducing, avoiding, or deferring tax
liabilities, would no longer be considered as patentable subject matter.
The bill includes a number of additional, interesting provisions including
further filing fee reductions for "micro-entities," amendment to the adverse
effects of failing to disclose the best mode, modification to the inter partes
re-examination process, and a gate-keeping function for judges in patent
damages issues. We now await the House's version of patent reform.
—Sean Swidler
Disclaimer: The contents of this newsletter are presented for information purpose only, and as such are not intended to constitute legal advice and should not be construed as such or acted upon without seeking advice of legal counsel. This information is not intended to and shall not create an attorney-client relationship of any kind or nature with IpHorgan Ltd. Please contact the firm with queries, concerns or for further details regarding the information presented herein. The entire contents are current only as of the date of the newsletter and are not to be interpreted as the opinions of our clients past, present, pending or future. (c)2011, IpHorgan Ltd. All Rights Reserved.
Newsletter Volume 72, January 2012
