TTAB Affirms FLIPPABLE FIRMNESS Refusal: Specimens Do Not Show Use With Retail Store Services

The Board affirmed a refusal to register the proposed mark FLIPPABLE FIRMNESS for "Online retail store services featuring bed frames, foundations, mattresses, pillows, toppers, and bed sheets" on the ground that the specimens of use do not show use of the mark in connection with the services identified in the application. Examining Attorney Monica R. Reid agreed that Applicant Layla offers retail store services, but the term FLIPPABLE FIRMNESS refers only to a "touted feature" of a mattress product. In re Layla Sleep, Inc., Serial No.88359361 (June 24, 2002) [not precedential] (Opinion by Judge Robert H. Coggins).

The Board agreed with the Examining Attorney, finding that "[t]here is nothing on any specimen that refers to, or even suggests, that there is such a thing as a FLIPPABLE FIRMNESS online retail store service." The text surrounding the term supported that finding. "The web pages advertise the advantages of a FLIPPABLE FIRMNESS mattress – that is, a mattress a consumer can flip to obtain different levels of firmness or support – and the Google Display Ads list it as a feature. In each of the substitute specimens, the mark is preceded by “with” (or its abbreviation)."

We recognize that the first substitute specimen includes an interactive link leading to Applicant’s website, the second substitute specimen contains a “visit site” button, and the third substitute specimen contains an add-to-cart button (presumably as does the original specimen based on Applicant’s explanation of what happens when a consumer scrolls the webpage). However, none of the specimens creates the required direct association between FLIPPABLE FIRMNESS and online retail store services. Instead, the mark simply promotes Applicant’s goods by describing a feature thereof.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: WYHA?

Text Copyright John L. Welch 2022.

IMAGINELABORATORIES.COM Confusable With IMAGINATION LABS For Telecommunication Consulting Services, Says TTAB

The Board affirmed Section 2(d) refusals to register the proposed marks IMAGINELABORATORIES.COM, IMAGINELABORATORY.COM and IMAGINELABS.NET for telecommunications technology consulting services, finding confusion likely with the registered mark IMAGINATION LABS for, inter alia, "telecommunications consultation and advice." Applicant, appearing pro se, pointed to its existing registration for IMAGINATION ARTS LAB, over which the cited registration issued, but the Board once again observed that it is not bound by the decision of an examining attorney in a prior application with a different records. In re Imagine Labs LLC, Serial Nos. 88931892, 88931930, and 88931972 (June 21, 2022) [not precedential (Opinion by Judge Karen Kuhlke).

Applicant argued that the difference between the words IMAGINATION and IMAGINE distinguished the marks": "Having imagination and not actively imagining is equal to not having any imagination. Therefore the act of imagining something is vastly different than the inherent ability of imagination in every human mind." [Huh? - ed.]. Applicant also contended that because its marks are domain names and the cited mark is a "Brand Service name" there is no cause for confusion. [Huh? - ed.]. The Board, not surprisingly, found that the similarities in the marks outweighed their differences.

With regard to applicant's prior registration, the Board noted that in "unusual circumstances" an applicant's prior registration may deserve weight in the confusion analysis. See In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012). However, invocation of that precedent requires that the marks and the services be identical or nearly so. That was not the case here.

Applicant argued that the registrant does not actually offer all of the services listed in the cited registration, but the Board pointed out once again that it must make its decision based on the services as recited in the registration, not on the actual use of the registered mark. In light of third-party registration and usage evidence, the Board found the services to be related and offered in the same channels of trade.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: Is this a WYHA? Or should we give this pro se applicant a pass?

Text Copyright John L. Welch 2022.

TTAB Denies RESET Cancellation Petition Due to Failure to Show Relatedness of Opiod Treatment Software and Medical Sensors

The Board denied a petition for cancellation of registrations for the mark RESET for "Software for the treatment of substance use disorder" and RESET-O for "Software for the treatment of opioid use disorder, namely, software for collecting information and data from and for delivering information and therapy to patients with opioid use disorder," finding that Opposer Masimo failed to prove likelihood of confusion with its registered marks SET, RAINBOW SET, and RD RAINBOW SET for patient sensors and monitors. The Board found the marks to be "marginally more similar than dissimilar," but the evidence did not establish that the involved goods are related. Masimo Corporation v. Pear Therapeutics, Inc., Cancellation No. 92073785 (June 17, 2022) [not precedential] (Opinion by Judge Thomas W. Wellington).

Petitioner’s SET-formative marks were found to be inherently strong in connection with the sensors and monitors used in the medical field. As to commercial strength, the respondent's third-party registration evidence failed to demonstrate commercial weakness of the term SET, and so the Board deemed the the sixth DuPont factor to be neutral.

The Board found the involved marks to be "marginally more similar than dissimilar in appearance, sound, meaning and commercial impression, and so this factor slightly favored Masimo.

Masimo contended that the goods are "highly related" because "Respondent's software allows doctors and clinicians to 'monitor the patient’s progress in a substance abuse program through a mobile app and clinician-facing dashboard,' and Petitioner’s monitors and sensors 'are used in connection with monitoring those using prescribed opioids, and are in development for use monitoring persons in treatment for opioid addiction." The Board, however, found Masimo's evidence to be "tangential at best." "Petitioner’s evidence shows that its sensors and monitors can be used by medical personnel to monitor patients who have been prescribed opioids in order to prevent respiratory issues. Respondent’s software, on the other hand, is used for the treatment of substance and opioid abuse disorders."

As Respondent points out in its argument, there is only a vague “generalized opioid user ‘connection’” between these goods. The evidence does not show, for example, that these are the types of goods that consumers would expect to emanate from a common source or that those purchasing software for treating opioid and substance abuse would also be consumers of Petitioner’s monitors and sensors, even if the latter goods are used to prevent adverse medical conditions that may result from opioids. Again, we are mindful that the mere fact that the involved goods can be classified as within the medical field does not mean the goods are related.

Masimo did not establish its sensors and monitors sold under its marks are marketed to consumers who are involved in the treatment of substance or opioid abuse disorders. Furthermore, given the inherent nature of the involved goods, "those looking to purchase these different goods constitute two distinct groups of sophisticated purchasers."

The Board concluded that, because there was "no real demonstrated relationship" between the parties' goods, and because there was no evidence demonstrating that these goods are offered in the same channels of trade to the same classes of consumers, it could not find that confusion is likely. And so it denied the petition for cancellation.

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TTABlogger comment: I agree with this one. How about you?

Text Copyright John L. Welch 2022.

TTABlog Test: Is "GOLDN PAYDIRT" Merely Descriptive of Gold and Other Precious Metals?

The USPTO refused to register the proposed mark GOLDN PAYDIRT for ""Gold; Gold bullion; Gold ore; Gold and its alloys; Gold, unworked or semi-worked; Gold, unwrought or beaten; Palladium; Palladium and its alloys; Precious metals; Precious metals and their alloys; Precious metals, unwrought or semi-wrought; Silver; Silver bullion; Silver ore; Alloys of precious metal; Platinum; Unworked or semi-worked gold," finding the mark to be merely descriptive of the goods. Examining Attorney Jesse A. Maihos maintained that the mark describes a feature of applicant's goods, which comprise "paydirt that is golden in color and contains gold and minerals." Applicant Walrus Rodeo argued that "[t]here is no guarantee of gold. It is suggestive that there might be gold in there." How do you think this came out? In re Walrus Rodeo LLC, Serial No. 88728723 (June 13, 2022) [not precedential] (Opinion by Judge David K. Heasley).

Walrus Rodeo explained that its goods are novelty items: bags of dirt through which consumers can sift in hopes of striking gold. The mark GOLDN PAYDIRT should not be taken literally, according to applicant, but “as a figurative and thus suggestive indicator of the rewards offered to the consumer.”

The Board, however, agreed with the Examining Attorney. As indicated in the application, the goods must contain some amount of gold or other precious metal. Walrus Rodeo's advertising states: “Guaranteed Real Native Gold Inside!” and “When used correctly, all paydirt will contain randomly varied amounts of gold." The term "paydirt" is defined as "earth or ore that yields a profit to a miner." Applicant's competitors use the term in the same sense as applicant, as evidenced by ten third-party websites.

And so, the Board affirmed the refusal.

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TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2022.

Precedential No. 16: TTAB Unsurprisingly Finds "NATURE MADE" Confusable With "MADE IN NATURE" for Fruit and Snack Products

In a 61-page opinion, the Board sustained three oppositions to registration of the mark NATURE MADE for various foods and beverages, including snack bars containing dried fruits and fruit juice, on the ground of likelihood of confusion with the registered mark MADE IN NATURE for dried fruits and vegetables, snack products, and fresh fruit. The Board took the parties to task for various procedural/evidentiary missteps, tossed out Applicant Pharmavite's Morehouse defense, and painstakingly applied the DuPont factors to find Opposer's mark NATURE MADE to be conceptually weak but commercially moderately strong, the involved marks highly similar, the goods overlapping or related, and the channels of trade and classes of consumers identical or overlapping. Made in Nature, LLC v. Pharmavite LLC, 2022 USPQ2d 557 (TTAB 2022) [precedential] (Opinion by Judge Jonathan Hudis).

Procedural/Evidentiary Missteps: The Board chastised the parties for over-designating documents and testimony as confidential, filing duplicative evidence by different methods of introduction (e.g., via notice of reliance and again via exhibits to deposition testimony), submitting unnecessary and unrelated portions of deposition transcripts, creating an inappropriately large record ("Judges are not like pigs, hunting for truffles buried ... [in the record]"), and inadequately referencing the pages of TTAB docket entries.

Morehouse Defense: Pharmavite raised the (typically useless) Morehouse defense in its brief, but the Board found that Opposer had not been put on proper notice of the defense and further that the issue was not tried by implied consent. In any case, the defense - which holds that an opposer cannot be damaged if the applicant already owns a registration for the same mark for the same goods [in which case, why need another registration? - ed.] - did not apply here because the goods in Pharmative's exiting registrations (supplements) were not identical or substantially the same as those here involved.

Likelihood of Confusion: The Board began with a consideration of the strength of Opposer's MADE IN NATURE mark. As to inherent or conceptual strength, the Board whittled down Pharmavite's third-party registration evidence to a mere 90 registrations for marks that include MADE or NATURE for goods related to Opposer's products, but only eight of those marks included both words. Nonetheless, the Board found that MADE IN NATURE is highly suggestive. As to commercial strength, Pharmavite did not provide any evidence of use of similar marks for similar goods. Opposer's evidence established that its marks have acquired marketplace recognition, albeit not fame, and have moderate commercial strength.

The Board found the marks to be similar in appearance, sound, meaning, and commercial impression: indeed, "highly similar." Some of the goods in Pharmavite's applications are identical to or encompassed within opposer's registrations, and others are similar or related. There was no evidence supporting Pharmavite's claims that the goods would be purchased with more than ordinary care.

Purchasers of Opposer’s MADE IN NATURE products are members of the general public who do not typically spend much time making purchasing decisions for these types of products, who make their purchasing decisions for these products without the assistance of others (such as seller representatives), and often on impulse. The extent of potential confusion, should Applicant’s opposed Applications be allowed to proceed to registration, is significant.

And so, the Board sustained the opposition.

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TTABlogger comment: A good discussion and analysis of many DuPont factors, although nothing really new.

Text Copyright John L. Welch 2022.

TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?

A TTAB judge once told me that one can predict the outcome of a Section 2(d) case 95% of the time by looking just at the marks and the goods. Here are three more Section 2(d) appeals for your consideration. How do you think they came out? [Results in first comment].

In re Kenzo Ltd., Serial No. 79272212 (May 23, 2022) [not precedential] (Opinion by Judge Peter W. Cataldo) [Section 2(d) refusal of the mark shown below left, for "wine," in view of the registered mark show below right, for "vodka."]

In re Weber Maschinenbau GmbH Breidenbach, Serial No. 79281976 (June 13, 2022) [not precedential] (Opinion by Judge Angela Lykos). [Section 2(d) refusal of WEBER WEPACK for "Packaging machines for foodstuffs; robots for food packaging; conveyors for packaging food portions and food products; conveyor belts for food packaging machines; machines for separating and isolating packaged foodstuffs; machines for labeling and lettering food packaging; parts and fittings for the aforesaid goods," in view of the registered mark WEPACKIT for "packaging machines"]

In re Mary Louise Jones, Serial No. 88723679 (June 15, 2022) [not precedential] (Opinion by Judge Melanye K. Johnson) [Section 2(d) refusal of MARY’S EDIBLES, for "Nutritional supplements in the form of gummies," in view of the registered mark MARY’S MEDICINALS for "transdermal patches featuring herbal supplements and neutraceuticals for nausea, insomnia, anxiety, inflammation, pain relief and an improved sense of well-being."]

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TTABlog comment: How did you do? See any WYHAs?

Text Copyright John L. Welch 2022.

TTABlog Test Is "YOU'RE AN IDIOT" for Card Games Confusable With "YOU MUST BE AN IDIOT" for Board Games?

Each of the parties to this Section 2(d) cancellation proceeding filed a motion for summary judgment. Respondent stipulated to petitioner's priority, as well as to all of the essential DuPont factors except the first factor: the similarity or dissimilarity of the marks. The Board granted one of the motions, but which one? Are the marks YOU'RE AN IDIOT and YOU MUST BE AN IDIOT confusingly similar or not? R & R Games, Inc. v. TwoPointOh Games, Cancellation No. 92076580 (May 23, 2022) [not precedential].

The Board began by noting that the filing of cross-motions for summary judgment does not mean that there is no genuine dispute of material fact or that a trial is unnecessary. Each moving party bears the burden of proof on its own motion, and on each motion all doubts and inferences are resolved in favor of the non-movant.

Petitioner contended that the commercial impressions of the marks are identical and that any minor differences in punctuation and sentence structure are irrelevant. Both marks comprise a short declarative phrase that calls a game participant an IDIOT. Both marks are "implied conditionals" in which the "linking verbs" mean the same thing. Both marks begin with YOU and end with IDIOT, the word IDIOT being the dominant element. Petitioner further claimed that consumers are accustomed to encountering new product bearing substantially similar trademarks from the same source: e.g., game sequels and expansion packs.

Respondent perceptively pointed out that both marks do not begin with the term YOU, argued that it is irrelevant whether certain elements in each of the marks mean the same thing, and asserted that Petitioner's evidence regarding new product naming actually showed that identical marks were used.

The Board sided with the Petitioner:

Respondent’s mark YOU’RE AN IDIOT is extremely similar in appearance and sound to Petitioner’s mark YOU MUST BE AN IDIOT! as they end with the same distinctive AN IDIOT and begin with related wording. *** The term “MUST” in Petitioner’s mark merely indicates the absence of any doubt that the person on the receiving end of the message is “an idiot.”

Furthermore, noting that the focus of the Section 2(d) inquiry is on the recollection of the average purchaser who normally retains a general rather than a specific impression of marks, the Board found the marks to be "the same, or nearly so, in meaning and impression as they constitute essentially the same insult – telling a person, in this case a particular player in the game, that they are 'foolish or stupid.'"

Finding no genuine dispute on the issue of likelihood of confusion, the Board entered judgment summarily in favor of petitioner.

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TTABlogger comment: That wasn't difficult, was it?

Text Copyright John L. Welch 2022.

Rejecting Abandonment and Fraud Claims, TTAB Denies Petition for Cancellation of "POLICE GAZETTE" Logo

In a mere 13 pages, the Board denied a petition for cancellation of a registration for the word-plus-design mark shown below, for "magazines in the field of current events and sports," rejecting pro se Petitioner Steven Westlake's claims of abandonment and fraud. Steven Westlake v. Edgar Alexander Barrera and Richard K. Fox Publishing Company, Cancellation No. 92067884 (June 10, 2022) [not precedential] (Opinion by Judge Frances S. Wolfson).

Abandonment: Petitioner Westlakc claimed that Respondent Barrera abandoned his registration by failing to use the mark in commerce “since at least December 31, 2013.” As proof, Westlake submitted the results of an online search conducted on April 14, 2019, which returned a “404 Not Found” page. In response, Barrera introduced three testimonial declarations wherein each declarant stated that the specimens attached to Respondent's Section 8 Declaration of use (January 29, 2016) and to his renewal application (February 3, 2020) for the subject registration were authentic, and that the statement regarding use "were true and accurate.” The Board found this evidence adequate to show that Respondent did not abandon the mark.

Fraud: Westlake asserted that Barrera committed fraud by submitting digital renderings as his specimens of use and then falsely claimed that the mark was in use. Barrera did not address the specimen issue directly, but instead pointed to the testimony declarations regarding use.

The Board, noting that fraud must be proven "to the hilt," found that Westlake failed to provide clear and convincing evidence to prove his claim. Even if the specimens of use submitted with the underlying application were improper, that does not prove that the mark was not in actual use at the filing date. Moreover, there was no proof of an intent to deceive the USPTO. 

Conclusion: The Board denied the petition for cancellation.

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TTABlogger comment: The Board ignored Respondent's supposed affirmative defenses of lack of "standing" and failure to state a claim because neither is a true affirmative defense. The former is to be proven by petitioner as part of his case, and the latter challenges the sufficiency of the pleading rather than stating a defense to a properly pleaded claim. Remember an affirmative defense is a response that says, "Yes, but . . . . ."

Not the most well-written opinion I've ever read. I think the Board should have said that a false statement was made, it was material to the allowance of the mark for registrations, the USPTO relied on the false statement, but there was no proof of an intent to deceive. We've seen cases like this before. E.g., this one.

Text Copyright John L. Welch 2022.

Attorney Argument Isn't Evidence: CAFC Affirms TTAB's "PARMA COFFEE" Decision

The CAFC gave this applicant the boot in its appeal from the TTAB's decision [TTABlogged here] affirming a Section 2(e)(2) geographical descriptiveness refusal of PARMA COFFEE for, inter alia, coffee and chocolate. Because Parma is a well-known geographic location, and because Applicant Zeta's goods were admittedly "developed" in Parma, Italy, the Board presumed "that there is a goods/place association amongst the consuming public." The CAFC found that substantial evidence supported the Board's decision. In Re A. ZETA S.R.L, Appeal No.2022-1178, 2022 BL 201237 (Fed. Cir. June 10, 2022).

On this appeal, Zeta argued that its goods do not "originate" in Parma, but the court concluded that because Zeta did not make this argument before the Board, it was waived. "Moreover if we were to consider this argument, the record lacks any evidence to support it; mere argument cannot suffice." [Emphasis supplied].

Finally, Zeta feebly argued that the USPTO has registered numerous other marks containing city names, and therefore to deny Zeta its registration would be inconsistent. The court noted that many of the third-party registrations were raised by Zeta for the first time on appeal. The few that were in the record had little probative value since each mark must be evaluated on the basis of the application at issue.

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TTABlogger comment: The statement that attorney argument is not evidence seems to be appearing more frequently in Board decisions. It is found in three decisions by the Board so far this month: the MULLET genericness reversal (TTABlogged here), and two Section 2(d) cases: the BLACK DIAMOND ex parte decision (here), and the HEADSTRONG opposition (here).

Text Copyright John L. Welch 2022.

Precedential No. 15: TTAB Dismisses Opposition to Section 66(a) Application: Nonownership Claim Unavailable

The Board has re-designated as precedential its April 2001 decision dismissing an opposition to registration of the mark SPINTIRES for computer games and software. Opposer Saber Interactive alleged only one claim: nonownership. However, the opposed application was based on a request for extension of protection under the Madrid Protocol (Section 66(a)), and nonownership is not an available ground for opposition against an application not based on actual use. Saber Interactive Incorporated v. Oovee Ltd, 2022 U.S.P.Q.2d 514 (T.T.A.B. 2022).

Applicant Oovee moved for summary judgment on the ground that Saber was not entitled to a statutory cause of action. The Board put that motion aside, exercising its discretion to review Saber's claims to determine their sufficiency.

In opposing a Section 66(a) application, an opposer's claims must be listed on the ESTTA filing form. Trademark Rule 2.104(c), 37 C.F.R. § 2.104(c); see also CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1963 (TTAB 2011). The opposition may not be amended to add an entirely new claim. Trademark Rule 2.107(b), 37 C.F.R. § 2.107(b); see also O.C. Seacrets, Inc. v. Hotelplan Italia S.p.A., 95 USPQ2d 1327 (TTAB 2010).

The only claim Opposer Saber included on the ESTTA form and in its pleading was nonownership under Section 1 of the Trademark Act. However, Board precedent holds that "[o]wnership of a mark arises through use of the mark.” Therefore, a claim based on lack of ownership is not available when the application is not based on use of the mark in commerce. Hole In 1 Drinks, Inc. v. Lajtay, 2020 USPQ2d 10020, *5 (TTAB 2020) (application based on intent to use under Section 1(b) of the Trademark Act, 15 U.S.C. § 1(b)); see also Norris v. PAVE, 2019 USPQ2d 370880 (TTAB 2019).

An application under Section 66(a) is not based on use, but rather on an international registration owned by the applicant and a bona fide intent to use. Therefore, a claim based on lack of ownership is not available against Applicant Ovee's Section 66(a) application.

And so, the opposition was dismissed with prejudice.

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TTABlogger comment: This ruling should have claim preclusion effect if Saber files a petition for cancellation.

Text Copyright John L. Welch 2022.