We will be discussing two Trademark Trial and Appeal Board cases during our weekly SoCal IP Institute meeting on Monday, December 19, 2011. Brief synopses are presented below.

Holmes Oil Co. v. Myers Cruizers of Mena, Concurrent Use No. 94002400, (T.T.A.B. Dec. 7, 2011) (attached).  The parties were involved in an opposition proceeding but stipulated to a voluntary concurrent use proceeding before the TTAB wherein Holmes sought the right to use the following mark:

The mark was to be registered for services including convenience stores.  The parties agreed that Holmes should be entitled to register and use the mark everywhere but in Arkansas, the location where Myers used the mark “MYERS CRUIZZER’S DRIVE IN,” and that Myers should be entitled to use their marks anywhere throughout the U.S. for restaurant services.

During the concurrent use proceeding, the parties jointly sought for the TTAB to implement their agreement and to allow the Holmes’ mark to register.  The terms of the agreement were confidential, but reviewed by the TTAB.  While the TTAB expressed some concern about the specificity of the agreement in dealing with instances of actual confusion, the TTAB approved the agreement finding that a confusion between the two marks was unlikely.  Accordingly, registration of the Holmes application was approved.

Tatuaje Cigars v. Nicaragua Tobacco Imports, Opp. No. 91185180 (T.T.A.B. Nov. 22, 2011 (non precedential) (attached). NTI sought registration of the mark TATTOO for goods including cigars and various related goods in class 34.  The opposer, Tatuaje, opposed on the ground that the mark resembled their registration for the mark TATUAJE for goods including cigars.  The only question before the TTAB was whether the marks were sufficiently similar to present a likelihood of confusion.

The TTAB examined the marks for their sight, sound, meaning and overall commercial impression.  Tatuaje primarily contended that there is a likelihood of confusion under the doctrine of foreign equivalents because the word “tatuaje” translates from Spanish into “tattoo” in English.  NTI argued that there was no evidence that a consumer would “stop and translate” the marks and, therefore, the doctrine of foreign equivalents did not apply.  The TTAB agreed with Tatuaje and found that the doctrine of foreign equivalents did apply.  The opposition was sustained.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, December 19, 2011 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Amanda Jones by 9 am Monday morning.