Trademark Review - Flanax, What Your Heart Desires and Tourbillon (May 2014)

by Knobbe Martens

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TTAB Cancels Registration for a Mark Found to Misrepresent Source of the Goods

Bayer, the maker of ALEVE brand naproxen sodium pain reliever in the U.S., sells the same product in Mexico under the mark FLANAX.  Bayer does use the FLANAX mark in the U.S., and does not have a U.S. trademark application or registration for the mark.  Belmora began selling FLANAX products in the U.S. several years after Bayer began selling FLANAX in Mexico, and Belmora obtained a U.S. registration for FLANAX in 2005.  Bayer petitioned the Trademark Trial and Appeal Board to cancel Belmora LLC’s U.S. registration for FLANAX on several grounds, but succeeded on the ground that Belmora had misrepresented the source of its product under Section 14(3) of the Trademark Act.

Belmora challenged Bayer’s standing because it does not use the FLANAX mark in the U.S.  The Board found that Bayer established standing by showing that it has an interest in protecting its Mexican FLANAX mark, and that if Belmora is using the mark to suggest that its products  are associated with Bayer then Bayer loses the ability to control its reputation and suffers damage.

To show misrepresentation of source, Bayer had to establish “blatant misuse of the mark by respondent in a manner calculated to trade on the goodwill and reputation of petitioner.”  The Board found the evidence “readily establishes” misrepresentation of source by Belmora.  

The Board found sufficient evidence to establish that Bayer’s FLANAX is the top-selling pain reliever in Mexico and that Belmora was aware of Bayer’s use of FLANAX in Mexico when it adopted the mark in the U.S.  The Board also found that the owner of Belmora fabricated evidence prior to his deposition and testified untruthfully about that evidence and adoption of the mark.

Further, the Board found that Belmora copied Bayer’s FLANAX logo as used in Mexico as shown on the packaging below:


Finally, the Board found that in marketing FLANAX, Belmora “invoked the reputation of [Bayer’s] FLANAX mark” by making statements such as the following from a telemarketing script: “I’m with Belmora LLC, we’re the direct producers of FLANAX in the US.  FLANAX is a very well known medical product in the Latino American market, for FLANAX is sold successfully in Mexico, Centre [sic] and South America.”

Bayer Consumer Care AG v. Belmora LLC, Cancellation No. 92047741 (TTAB April 17, 2014) [precedential].

Opposition Tossed for Failure to Submit Current Status and Current Ownership of Pleaded Registration

Sterling Jewelers opposed registration of the mark WHAT YOUR HEART DESIRES by Romance & Co.  Following the close of Sterling’s testimony period, with Sterling having submitted no evidence and taken no testimony, Romance brought a motion for involuntary dismissal of the opposition for failure to prosecute.

Romance alleged that Sterling did not submit a proper copy of its pleaded registration into evidence.  Sterling attached only a photocopy of its registration to the notice of opposition.  Rule 2.122(d)(1), however, clearly requires that the current status of and current title to the registration also be made of record.  Thus, the Board held that the submitted photocopy was not sufficient.  Sterling could have entered the current status and title of its registration by notice of reliance or through testimony, but it did not. Sterling requested the Board grant it leave to submit further evidence regarding current status and title, which the Board denied because Sterling did not demonstrate that its failure to submit any evidence or take any testimony was the result of excusable neglect.  

Sterling also argued that because Romance admitted in its answer that Sterling is the “listed owner of record” of the registration, the ownership of the registration is not in question.  The Board did not construe Romance’s admission as establishing current ownership of the registration.  Rather, the Board viewed the admission as merely establishing that opposer is identified as the owner on the photocopy attached to the notice of opposition.

Because Sterling failed to submit any evidence supporting its claim of likelihood of confusion, failed to prove any common law rights in its pleaded mark or that it currently owns the pleaded registration or that the registration is valid, the Board granted the applicant’s motion for dismissal of the opposition.

Sterling Jewelers Inc. v. Romance & Co. Inc., Opposition No. 91207312 (TTAB March 27, 2014) [precedential].

Swatch Cannot Register A Mark Consisting of the Name and Drawing of a Watch Part

Swatch sought to register the mark:

for “jewellery, horological and chronometric instruments.”  In its application, Swatch described the mark as containing the term “TOURBILLON” below a design of a “tourbillon.”  Swatch disclaimed the exclusive right to use the term TOURBILLON for horological and chronometric instruments, but did not enter that disclaimer as to jewelry.  The Examining Attorney refused registration on the ground that the mark in its entirety merely describes the goods. 

A tourbillon is a feature or component of horological or chronometric instruments.  Thus, the Board agreed that the term is highly descriptive of a watch having a tourbillon.  The applicant argued, however, that TOURBILLON is not descriptive of jewelry.  The Examining Attorney maintained that watches are a category of jewelry and thus, the term is equally descriptive of jewelry.  The Board agreed with the Examining Attorney, finding the evidence sufficiently established that watches are readily perceived to be a category of jewelry.  

The Board was not bothered that this interpretation creates a redundancy in the identification of goods, pointing out that “redundancy in an identification does not limit or otherwise adversely affect the evidentiary value of a registration certificate.”

The Board also ruled that the design element of the mark represents a tourbillon and is also merely descriptive of the identified goods.  Even though the design is not an exact representation of the component of the element in Swatch’s goods, it still conveys an immediate idea of a feature of the goods and lacks any additional fanciful, arbitrary or suggestive matter.

In re The Swatch Group Management Services AG, Case no. 85485359 (TTAB April 18, 2014) [precedential].

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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