Friday, June 14, 2024

J. Michael Keyes:: "Just Do It" Doesn't Fly When Submitting Survey Evidence to the TTAB"

Nike, Inc. was recently victorious in an opposition to registration of the mark DON’T JUST DO IT, GET IT DONE for various clothing items. The Board found likelihood of confusion with and likelihood of dilution of the famous JUST DO IT mark for overlapping clothing items. [TTABlogged here]. Nike submitted the results of a fame survey, but the Board refused to consider that evidence. Mike Keyes, a consumer survey expert and IP litigator at Dorsey & Whitney LLP, provides his comments below.

"Just Do It" Doesn't Fly When Submitting Survey Evidence to the TTAB

Nike recently opposed the trademark application "Just Don't Do It, Get It Done" for various apparel products alleging that it would infringe and dilute Nike's "Just Do It" trademark. Nike, Inc. v. Lorenzo, 2024 TTAB LEXIS 201 (Trademark Trial & App. Bd, May 21, 2024). Nike submitted a massive amount of evidence to support its claims. The TTAB held that Nike ran away with this one. Just about all of the DuPont confusion factors and the dilution factors favored Nike. It clearly lived up to its Greek Goddess origins ("Nike" is the Greek Goddess of victory, as you may recall).

Although Nike's evidence may have been the size of a mini Mt. Olympus, the TTAB refused to consider a consumer survey Nike proffered. Why?

Because when a party submits survey evidence to the TTAB, it needs to establish that the survey was conducted according to generally accepted scientific principles.

Here, Nike simply submitted the results of an "historic events survey" from 1999. No testimony established important first-hand details such as: (1) the identity of the individual who conducted the research and his or her professional bona fides; (2) what sampling procedure was used; (3) how the data was collected; or (4) a myriad of other principles that are hallmarks of valid and reliable survey research.

Although the submission appeared to include a page of "data results" and a copy of the survey questionnaire, those are not proxies for a fulsome, detailed explanation of how the survey was conducted in the first instance.

The Takeaway. As the TTAB reminds us, survey research "is not a freestanding piece of evidence, but instead is offered as the basis for expert opinion testimony." Nike, 2024 TTAB LEXIS 201, *14. If you are going to do it, just do it with a proper witness who can testify with first-hand knowledge as to how the study was conducted and the significance of the data set. Only then will the survey gods be pleased with your offering.

Read comments and post your comment here.

TTABlogger comment: You may subscribe to Mike Keyes newsletter, "Lanham Act Surveys for Lawyers" here).

Text Copyright John L. Welch and Michael Keyes 2024.

Thursday, June 13, 2024

TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?

So far this year, the Board has affirmed about 90% of the Section 2(e)(1) mere descriptiveness refusals reviewed on appeal. Here are three more. How do you think they came out? [Results in first comment].

In re Skechers U.S.A., Inc. II, Serial No. 90701471 (June 10, 2024) [not precedential] (Opinion by Judge Peter W. Cataldo). [Mere descriptiveness refusal of WORKOUT WALKER for footwear and a host of apparel items. Applicant argued that the mark is incongruous because walking is not perceived as exercise.]

In re The Vita Coco Company, Inc., Serial No. 97081204 (June 7, 2024) [not precedential] (Opinion by Judge Christen M. English) [Refusal to register THE HANGOVER SHOP for “On-line retail store services featuring drinks, beverages, snack foods, prepared meals, and headache treatment preparations" (SHOP disclaimed). Applicant argued  that the Examining Attorney conducted a “multistep reasoning process to conclude that the term ‘hangover’ in Applicant’s mark actually means ‘hangover relief,” pointing to the evidence showing that “the vast majority of the actual terms being used are ‘hangover relief,’ ‘hangover cure,’ and ‘hangover remedy’ – and not ‘hangover’ alone.]

In re Ralph Birchard Lloyd, Serial No. 97464017 (May 31, 2024) [not precedential] (Opinion by Judge Thomas W. Wellington) [Mere descriptiveness refusal of the proposed mark DISINFECTION AS A SERVICE for "Providing automated disinfection and sanitization services for medical devices, rooms, plumbing fixtures, and laundry, such services using chemical disinfectants, UV radiation, air filtration, and combinations." Applicant argued that "the mark cannot describe the function or purpose of Applicant’s services with any degree of precision, because the terms DISINFECTION and SERVICE are capable of several different possible meanings, such that the meaning of the mark cannot immediately be ascertained."]

Read comments and post your comment here.

TTABlog comment: How did you do? See any WYHA?s

Text Copyright John L. Welch 2024.

Wednesday, June 12, 2024

Precedential No. 12: TTAB Rejects Sovereign Immunity Claim in Opposition to Virginia College System Marks

In this opposition to registration of the mark MOUNTAIN GATEWAY COMMUNITY COLLEGE for educational services and various clothing items, Applicant Virginia Community College Systems moved for summary judgment, asserting that the Board lacked subject matter jurisdiction due to state sovereign immunity. The Board denied the motion, ruling that sovereign immunity does not apply to opposition proceedings. Mountain Gateway Order, Inc. v. Virginia Community College System, Opposition Nos. 91283412 (parent) and 91283416 (June 6, 2024) [precedential].

Opposer did not dispute that applicant is a state agency, and so the question was "whether Applicant enjoys sovereign immunity."

State sovereign immunity sometimes applies "when 'a private party [] haul[s] a State in front of an administrative tribunal' within a federal agency in an adversarial proceeding bearing strong similarities to civil litigation." Fed. Maritime Comm’n v. S.C. State Ports Auth., 535 U.S. 743, 760 n.11, 63 USPQ2d 1321 (2002)

However, States may not assert sovereign immunity where a federal agency exercises its superior sovereignty in agency enforcement actions instituted upon information supplied by a private party to ensure State compliance with federal law, even if some aspects of civil litigation procedure are applied. Regents of Univ. of Minn. v. LSI Corp., 926 F.3d 1327, 2019 USPQ2d 219331 (Fed. Cir. 2019).
The Board observed that states that apply for trademark registration "are subject to the same registration provisions of the Trademark Act as any other applicant, including that a State’s application is subject to opposition proceedings." 

It noted that state sovereign immunity does not apply to Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB). Regents of Univ. of Minn. v. LSI Corp., 926 F.3d 1327, 2019 USPQ2d 219331 at *1-(Fed. Cir. 2019).
While opposition proceedings may have some procedural attributes different from IPR proceedings, their salutary purpose is comparable. Oppositions protect the public interest in the integrity of the federal trademark register by providing a means to consider and decide the right to registration, a matter of public interest. Traditional civil action-type remedies are unavailable in opposition proceedings. Gen. Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1591 (TTAB 2011).
The Board reasoned that, if state entities were not subject to opposition proceedings, the USPTO would be precluded from exercising “ample means of ensuring that [States] comply with the [Trademark] Act and other valid federal rules governing [trademark registrability]."
Applicant chose to apply for federal trademark registrations that would evidence its presumed nationwide exclusive rights to use marks in commerce, 15 U.S.C. § 1057(b), a choice with consequences for the public. Applicant’s status as a juristic person under the Trademark Act, and the public interest in the integrity of the trademark registration system, dictate that Applicant is subject to opposition proceedings and that sovereign immunity does not apply to opposition proceedings.

Read comments and post your comment here.

TTABlogger comment: FWIW: MGCC's sports teams are nicknamed the "Roadrunners." They ran off the road in this one.

Text Copyright John L. Welch 2024.

Tuesday, June 11, 2024

Precedential No. 11: TTAB Upholds 2(a) False Connection Refusal of LEATHERNECKS for Motorcycle Club Membership

The Leathernecks Motorcycle Club was thwarted in its attempt to register the collective membership mark LEATHERNECKS in the design form shown immediately below. The Board found that the mark, which indicates membership in a motorcycle club, falsely suggests a connection with the United States Marine Corps in violation of Section 2(a) of the Trademark Act. In re Leathernecks Motorcycle Club International, Inc., Serial No. 90498154 (June 6, 2024) [precedential] (Opinion by Judge Cindy B. Greenbaum).

Section 2(a), in pertinent part, prohibits registration of “matter which may … falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols." The U.S. government, as well as government agencies and instrumentalities, are considered juristic persons or institutions within the meaning of Section 2(a). See Section 45 of the Act. The USMC, a service within the U.S. Department of the Navy, "is one such juristic person or institution." See In re Cotter & Co., 1985 TTAB LEXIS 50, at *8 (T.T.A.B. 1985) (finding the United States Military Academy is an institution and West Point "has come to be solely associated with and points uniquely to the United States Military Academy”).

In determining whether the subject mark runs afoul of Section 2(a), the Board applied the Notre Dame test, requiring the USPTO to prove that:

  1. the term “Leathernecks” in Applicant’s mark is the same as, or a close approximation of, the USMC’s name or identity, as previously used by or identified with the USMC:
  2. the term “Leathernecks” in Applicant’s mark would be recognized as such because it points uniquely and unmistakably to the USMC; 
  3. the USMC is not connected to or otherwise affiliated with Applicant; and 
  4. the USMC is of sufficient fame or reputation that, when the term “Leathernecks” is used to indicate membership in a motorcycle club, a connection with the USMC would be presumed.

The Club argued that Section 2(a) does not apply to collective membership marks but the Board disagreed. Section 4 of the Act, which provides for registration of collective marks, states that "Applications and procedures under this section shall conform as nearly as practicable to those prescribed for the registration of trademarks." Nothing in Section 4 exempts collective membership marks from Section 2(a). The Board pointed to Section 1304.03 of the TMEP [not the law - ed.], which states that an application for registration of a collective service mark "must meet all the criteria for registration of other marks on the Principal Register."

Turning to the elements of the Notre Dame test, the Club did not contest the first element, conceding that "Leatherneck" is a nickname for a member of the USMC.

Examining Attorney Kevon L. Chisolm submitted a dictionary definition and a Wikipedia entry for the term "leatherneck," along with various other items of evidence to show that the word "leathernecks" points uniquely and unmistakably to the USMC. The Club argued that "leatherneck" is also a slang term referring to the British Royal Marines, submitted several third-party registrations for Leatherneck marks, and asserted that many companies unrelated to the USMC are using the Leatherneck name.

The Board pointed out, however, that "[t]he requirement that 'Leathernecks' point uniquely and unmistakably to the USMC does not mean 'Leathernecks' must be exclusively used to identify the USMC. Jackson Int’l Trading, 2012 TTAB LEXIS 246, at *6; Hornby v. TJX Cos., 2008 TTAB LEXIS 19, at *55 (TTAB 2008)."

Rather, the question is whether, as used to identify membership in Applicant’s motorcycle club, the relevant public would view the term “Leathernecks” as pointing only to the USMC, or whether they would perceive it to have a different meaning.

For a collective membership mark, the relevant public comprises the persons for whose benefit the mark is displayed: here, "at a minimum, current and prospective members of Applicant, including individuals and entities associated with the U.S. military." The Board found that "the relevant public would understand the term 'Leathernecks' to point uniquely and unmistakably to the USMC, especially when all of Applicant’s present members 'are active duty or honorably discharged U.S. Marines, or U.S. Navy Corpsman who have served with the Fleet Marine Force."

The Club's evidence of third-party use and registration was not probative because they involved goods and services unrelated to a motorcycle club. See, for example, Hornby, 2008 TTAB LEXIS 19, at *55-56 (finding evidence of third-party registrations of the term “TWIGGY” for goods unrelated to children’s clothing had “no probative value”).

As to the third Notre Dame element, The Club did not claim any connection or affiliation with the USMC. As to the fourth, the Board found that "the USMC is of sufficient fame or reputation that, when the term 'Leathernecks' in Applicant’s mark is used to indicate membership in a motorcycle club, a connection with the USMC would be presumed."

First, Applicant’s name, “Leathernecks,” is a nickname adopted by the USMC and recognized by the relevant public to refer to the USMC. Second, Applicant’s members affix the mark to their vests, above other USMC indicia (the EGA, which Applicant refers to as the “Semper Fi” banner, and the letters “USMC”). Third, Applicant’s display of the collective membership mark in the colors gold and scarlet closely resembles the marks in ten registrations with the USMC listed as the owner where the marks are for gold and red rocker patches with other U.S. Marine indicia, all of which are meant to be affixed to clothing (including vests and jackets worn by motorcycle clubs). And fourth, Applicant’s entire membership presently consists of active duty and honorably discharged U.S. Marines and U.S. Navy Corpsman. Indeed, creating a connection with the USMC appears to be Applicant’s intent in adopting “Leathernecks” as the name of its club.

The four horsemen elements of the Notre Dame test having been met, the Board affirmed the Section 2(a) refusal.

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2024.

Monday, June 10, 2024

Precedential No. 10: TTAB Denies Section 18 Petition to Restrict Beer Registration to Micro-Brewed Craft Beer

In an attempt to side-step a Section 2(d) refusal of the mark shown below, for "gin," Petitioner Iron Balls International petitioned to restrict Respondent Bull Creek's registration for the mark IRON BALLS for "beer" to "“micro-brewed craft beer." The Board concluded that the proposed restriction would not avoid a likelihood of confusion, and so it denied the petition. Iron Balls International Ltd. v. Bull Creek Brewing, LLC, Cancellation No. 92079099 (June 4, 2024) [precedential] (Opinion by Judge David K. Heasley).

Section 18 of the Trademark Act, in pertinent part, gives the Director of the USPTO the authority to "modify the application or registration by limiting the goods or services specified therein, [and] otherwise restrict or rectify with respect to the register the registration of a registered mark." See Embarcadero Techs., Inc. v. RStudio, Inc., 2013 WL 2365029, at *2 (TTAB 2013).

A party seeking to restrict a registrant’s broadly worded identification of goods under Section 18 must plead and prove “(1) that the registrant is not using its mark on goods or services that would be excluded by the limitation, and (2) that the limitation would result in the avoidance of a finding of a likelihood of confusion.”

Issue Preclusion?: An earlier application filed by petitioner for the same mark, also for gin, was refused registration in view of the same registration at issue here, and the TTAB affirmed that refusal. The Board agreed with Bull Creek that, as a result, issue preclusion applied to the issue of the similarity of the marks; however, petitioner’s proposed restriction of goods "raises new issues as to other DuPont factors."

In assessing Petitioner’s Section 18 claim, we must consider precisely the issue we did not decide in the ex parte proceeding, namely, whether “gin” is related to “micro-brewed craft beer.” As Petitioner argues, its proposed restriction from “beer” to “micro-brewed craft beer” could also affect other DuPont factors, such as the channels of trade, the relevant consumers’ sophistication and care, the commercial strength of Respondent’s mark, and the extent of potential confusion. The doctrine of issue preclusion does not bar litigation of these issues.

Micro-brewed Craft Beer?: The Board next turned to the question of whether Respondent Brew Creek's goods are micro-brewed craft beer. Sifting through the evidence, the Board found significant the fact that Bull Creek represented itself as a "craft brewery" and displayed the "Independent Craft Brewer Seal" on its labels. The Board concluded that relevant purchasers would see respondent as a "brewer with a limited, small batch output" and would consider it to be a "craft microbrewery" and its goods "micro-brewed craft beer."

Avoid Likely Confusion?: The final and key question was whether the requested restriction of the goods identified in the registration would avoid a finding of likelihood of confusion. As stated above, issue preclusion barred re-litigation of the first DuPont factor: the similarity of the marks. 

Turning to the strength of Bull Creek's registered mark, the Board found the term IRON BALLS to be arbitrary and conceptually strong. As to commercial strength, petitioner failed to provide evidence of any weakness in the mark but, the Board noted, "even if strong that does not appreciably affect the likelihood of confusion analysis." The Board concluded that the mark is "entitled to the normal scope of protection to which inherently distinctive marks are entitled."

As to the goods, the Board observed that the proposed restriction to micro-brewed craft beer "does not affect the nature of the beer Respondent produces; it simply means that is is provided by a small producer." "Even with the restriction, an average consumer encountering Petitioner’s and Respondent’s similarly-branded alcoholic beverages in overlapping channels of trade could still mistakenly assume that the goods had a common origin."

Furthermore, the proposed restriction would not "change the class of customers for the parties' goods: adult members of the general public who purchase and consume alcoholic beverages," nor would it alter the trade channels for the goods. The respective identifications of goods do not set any price points, so there is no basis on which to conclude that consumers of the goods "will be particularly sophisticated, discriminating, or careful in making their purchases."

Conclusion The Board concluded that "even if Respondent’s goods could be characterized as 'micro-brewed craft beer,' and even if its identification of goods were so restricted, the restriction would not avoid a likelihood of confusion."

Read comments and post your comment here.

TTABlogger comment: Although the Board referred to the petition as one for partial cancellation, I think that is a misnomer: a petition under Section 18 seeks restriction of a registration, not removal (or cancellation) of any items from the registration. See the TTABlog post here. - ed.].

Text Copyright John L. Welch 2024.

Friday, June 07, 2024

TTAB Deems STUDENT ALLY Generic for . . . . Guess What?

You probably guessed it, didn't you? I once knew a student named Ally, so that threw me off. The Board, in a 35-page opinion, upheld a refusal to register, on the Supplemental Register, the proposed mark STUDENT ALLY, finding the term to be generic for "Providing training for University administration on compliance with governmental regulations, claims investigations, evidence collection and location-based student safety emergency alert systems." It concluded that "STUDENT ALLY would be understood by the relevant consumers to refer a key aspect of Applicant’s services: that is, training to foster support for students, particularly those who are targets of discrimination or are otherwise marginalized." In re Student Ally, Inc., Serial No. 90046632 (June 5, 2024) [not precedential] (Opinion by Judge Jennifer L. Elgin).

Examining Attorney Michael Eisnach submitted dictionary definitions and a raft of examples of Applicant’s own use and of third-party use. The Board found that “[n]othing is left for speculation or conjecture in the alleged trademark,” because the phrase “immediately and unequivocally describes the purpose, function and nature” of Applicant’s services.

Applicant argued that these materials show use of the phrase STUDENT ALLY in a “trademark sense.” The Board observed, however, that such use does not render the phrase non-generic. "Applicant’s intent to exclusively appropriate the phrase as its trademark is not at issue. The issue is whether STUDENT ALLY is recognized as a trademark for the identified training services by the relevant public."

Applicant’s generic uses strongly imbue its trademark uses with an overall generic meaning, and are strong evidence that the relevant public of university administrators views STUDENT ALLY, as a whole, to refer to a key aspect or function of Applicant’s services.

Applicant also attempted to distinguish its services from those reflected in the USPTO's evidence, asserting that "[t]he term 'Student Ally' and 'student ally' as cited are used for very different student programs by universities and colleges, and have no common meaning." It pointed out that “there is no competition between the various cited ‘Student Ally’ programs and Applicant’s services of providing training for university administration in the specified areas.”

The Board was not moved, noting that applicant's services are identified broadly, and include training on "governmental regulations, claims investigations, evidence collection and location-based student safety emergency alert systems.” 

The evidence indicates that at least six of these universities offered training on governmental legislation and regulations as part of their services.  The evidence also shows that Title IX investigators may be known as “student allies.” And almost all of the third party university evidence, broadly speaking, concerns student safety and well-being.

The Board pointed out that the “fact that there is no evidence of third-party use of the precise term” STUDENT ALLY for applicant’s precise training services “is not, by itself, necessarily fatal to a finding of genericness.” Mecca Grade Growers, 2018 TTAB LEXIS 64, at *24; see also In re Empire Tech. Dev. LLC, 2017 TTAB LEXIS 232, at *60 (TTAB 2017) (it is a “well-settled principle that being the first and only user of a generic term even if the public associates it with the first user does not make an otherwise generic term non-generic.”).

“To allow trademark protection for generic terms, i.e., names which describe the genus of goods [or services] being sold, even when these have become identified with a first user, would grant the owner of the mark a monopoly, since a competitor could not describe his goods [or services] as what they are.” In re Pennington Seed, Inc., 466 F.3d 1053, 1058 (Fed. Cir. 2006) (quoting Merrill Lynch, 1828 F.2d at 1569).

Read comments and post your comment here.

TTABlogger comment: The Board declined to address the USPTO's failure-to-function refusal, but then genericness is a type of failure-to-function, isn't it?

Text Copyright John L. Welch 2024.

Thursday, June 06, 2024

TTAB Reverses Section 2(d) Refusal of "CREATIVE HOME IDEAS" in view of Weakness of Two Cited Marks

In a dubious decision, the Board reversed a Section 2(d) refusal of the mark CREATIVE HOME IDEAS for various home decor products, including pillows, curtains, and rugs [HOME Disclaimed], finding confusion unlikely with the registered marks CREATIVE HOME [HOME disclaimed] and HOMEIDEAS for overlapping and related goods. In light of applicant's third-party registration evidence and the ordinary meanings of CREATIVE, HOME, and IDEAS, the Board accorded the cited registrations an "attenuated scope of protection." In re YMF Carpets, Inc., Serial No. 90822795 (June 4, 2024) [not precedential] (Opinion by Judge Karen S. Kuhlke).

The Board observed that "[g]enerally, the existence of third-party registrations cannot justify the registration of another mark that is so similar to a previously registered mark as to create a likelihood of confusion, or to cause mistake, or to deceive." However, under Jack Wolfskin and Juice Generation, a large number of registrations may indicate "that a mark or a portion of a mark has a normally understood descriptive or suggestive connotation, leading to the conclusion that the term or mark component is relatively conceptually weak."

Here, the Board considered 18 third-party registrations for various combinations of the terms CREATIVE or IDEAS. However, only three included the word CREATIVE for goods that are similar to the goods in the registrations and two included the word IDEAS for goods that are similar to those goods. Nonetheless, the Board noted that the word HOME describes the nature of the goods and is disclaimed in both applicant's mark and one of the cited registrations. Furthermore, CREATIVE and IDEAS are general terms that "suggest an attribute (creative) or recommendations (ideas) for home decoration."

Overall, we find these marks are comprised of weak terms, and the combination of the terms in various forms does not measurably increase their distinctiveness. We therefore accord these registrations an attenuated scope of protection.

Comparing the marks, the Board found their connotations and commercial impressions to be "sufficiently different." CREATIVE HOME connotes a place, whereas CREATIVE HOME IDEAS "focuses on what kind of ideas are being offered for the home." "In the case of HOMEIDEAS, that mark presents as a single word or, even viewed as separate words, as a single thought, in contrast to the CREATIVE HOME IDEAS mark that is a phrase modified by the word CREATIVE."

The Board concluded that, "despite the identical and closely related goods, in view of the weakness of the marks, Applicant’s mark is sufficiently different so as to obviate likely confusion."

Read comments and post your comment here.

TTABlogger comment: The third-party registration discussion was rather murky. BTW, I don't know why, but I've grown to hate the word "obviate."

Text Copyright John L. Welch 2024.

Wednesday, June 05, 2024

TTAB Sustains Nike's Confusion and Dilution Claims Against "DON'T JUST DO IT, GET IT DONE" for Clothing

Footwear behemoth Nike, Inc. ran roughshod over Applicant Barbara Lorenzo in her attempt to registered the mark DON’T JUST DO IT, GET IT DONE for various clothing items. The Board sustained Nike's likelihood of confusion and likelihood of dilution claims based on the famous JUST DO IT mark for overlapping clothing items. One may wonder how this application got past the examination stage. Nike, Inc. v. Barbara Lorenzo, Opposition No. 91286066 (May 21, 2024) [not precedential] (Opinion by Judge Jennifer L. Elgin).

Likelihood of Confusion: A claim of fame under Section 2(d) must be clearly proven. Nike's evidence established ues of the JUST DO IT mark since 2018, with staggering sales figures and advertising expenditures, substantial interactions on social media, and frequent unsolicited media attention. The Board concluded that the mark JUST DO IT "is not only famous, but remarkably so. It is entitled to the highest level of protection against confusion. This factor weighs heavily in favor of finding a likelihood of confusion." 

The overlap in goods and the presumed overlap in channels of trade and classes of consumers "not only weigh heavily in favor of finding a likelihood of confusion under these factors, but also reduces the degree of similarity between the marks necessary to find a likelihood of confusion."

Not surprisingly, Applicant Lorenzo focused her argument on the differences between the marks, but the Board was not impressed.

We are not persuaded by Applicants’ argument that the differences between the numbers of words, letters, syllables, vowels, consonants and spaces are sufficient to distinguish the marks. A determination of likelihood of confusion is not made on a purely mechanical basis, counting the number of words, syllables, or letters that are similar or different.

The Board concluded that the marks are more similar than dissimlar. Thus, all the DuPont factors favored a finding of likelihood of confusion, and so the Board sustained that claim.

Likelihood of Dilution: Usually the Board declines to reach a dilution claim if it has already found confusion likely. Not this time.

The Board found that the testimony and evidence "are more than sufficient to prove that JUST DO IT is famous for purposes of dilution," and establish that the mark became famous "well before Applicant’s 2022 filing date."

All of the factors in regard to the Section 43(c) dilution by blurring claim weigh in Opposer’s favor or are neutral. Accordingly, we find that Applicant’s mark is likely to dilute Opposer’s JUST DO IT Mark under Trademark Act 43(c)(2)(B), 15 U.S.C. § 1125(c)(2)(B).

Read comments and post your comment here.

TTABlogger comment: Nike submitted the results of a fame survey, but the Board refused to consider them. More about that in an upcoming blog post.

Text Copyright John L. Welch 2024.

Tuesday, June 04, 2024

Precedential No. 9: TTAB Denies HOLLYWOOD HOTEL Summary Judgment Motion, Finding No Claim Preclusion

The Board denied Applicant Zarco Hotels' FRCP 12(b)(6) motion to dismiss this opposition to registration of the mark HOLLYWOOD HOTEL for hotel and restaurant services, ruling that claim preclusion, based on an earlier opposition, did not apply. The Board first construed the motion as one for summary judgment and then concluded that Opposers' claims of likelihood of confusion and geographical descriptiveness were not decided in the prior opposition (which was sustained on the ground of nonownership) [TTABlogged here], and therefore those claims could be brought in this proceeding. Hollywood Casinos, LLC and Penn Entertainment, Inc. v. Zarco Hotels Inc., 2024 USPQ2d 985 (TTAB 2024) [precedential].

The parties relied on matters outside the pleadings and "clearly treated the motion as one for summary judgment," and so the Board so treated it as well. See FRCP 12(d); Haider Cap. Holding Corp. v. Skin Deep Laser MD, LLC, 2021 USPQ2d 991, at *1-2 (TTAB 2021) (construing motion to dismiss as motion for summary judgment where basis is claim preclusion and moving party relies on matter outside of pleadings); Urock Network, LLC v. Sulpasso, 115 USPQ2d 1409, 1410 n.5 (TTAB 2015) (motion to dismiss considered as one for summary judgment where it asserts claim preclusion)./

The "Prior Opposition" was based on a claim of likelihood of confusion with two registered marks. The opposer moved to amend the notice of opposition to add a geographical descriptiveness claim but the Board denied the motion as untimely. The Board ultimately sustained the opposition on the ground that the applicant was not the owner of the mark at the time the opposed application was filed; it did not reach the likelihood of confusion claim. The CAFC affirmed.

Under the doctrine of claim preclusion, a second action is barred by if (1) the parties (or their privies) are identical; (2) there has been an earlier final judgment on the merits of a claim; and (3) the second claim is based on the same set of transactional facts as the first. Jet, Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 55 USPQ2d 1854, 1856 (Fed. Cir. 2000). Furthermore, if a party cannot appeal the outcome of an earlier action, then the second action is not barred by claim preclusion. See AVX Corp. v. Presidio Components, Inc., 923 F.3d 1357, 2019 USPQ2d 171683, at *4-5.

Opposer Hollywood Casinos was successful in asserting the nonownership claim in the Prior Opposition and obtained the relief it requested (denial of the application). Because the Board did not decide the likelihood of confusion claim, Hollywood could not cross-appeal on that issue, nor on the issue of the attempted geographical descriptiveness claim. Consequently, Opposer Hollywood Casinos "lacked statutory entitlement to appeal the prior decision of the Board."

Applicant Zarko conceded that the likelihood of confusion claim was not barred in its entirety, but argued that this claim should be limited to the two registered marks in the Prior Opposition. The Board disagreed. 

Because Opposers’ original likelihood of confusion claim is not extinguished, Opposers’ amended likelihood of confusion claim based upon their additional registrations and common law rights that could have been raised in the Prior Opposition also is not extinguished. There is no reason why claim preclusion would apply to only the latter claim and not the former.

As to the geographical descriptiveness claim, although the Board refused to add that claim in the Prior Proceeding, there was no decision on the merits regarding that claim. That refusal was not appealable since Hollywood Casinos obtained all the relief it sought, and so claim preclusion cannot apply.

The Board therefore denied Zarko's construed motion for summary judgment.

Read comments and post your comment here.

TTABlogger comment: The Board said that, because Hollywood Casino was the victor in the prior proceeding, it could not appeal any adverse ruling because it lacked "statutory entitlement" to appeal. Should that be "Article III standing" rather than statutory entitlement?

Text Copyright John L. Welch 2024.

Monday, June 03, 2024

Precedential No. 8: TTAB Strikes "Trademark Bullying" Affirmative Defense in DOOR DABZ Opposition

Trademark bullies breathed a sigh of relief when, in this opposition to registration of the mark shown below for delivery of medical cannabis via car service, the Board rejected Applicant Greenerside's affirmative defense of unclean hands. Opposer DoorDash alleged likelihood of confusion with eight registered DOORDASH marks for various goods and services, including food delivery. Greenerside asserted that DoorDash has misused its trademarks in a "longstanding and habitual practice of trademark bullying" by opposing a "significant number of applications" on "dubious, weak or exaggerated" grounds. The Board granted DoorDash's motion to strike that defense. DoorDash, Inc. v. Greenerside Holdings, LLC, 2024 USPQ2d 935 (TTAB 2024) [precedential].

FRCP 12(f)(2), in pertinent part, allows the Board to strike from a pleadings "any insufficient or impermissible defense." The Board pointed out that "[a]n unclean hands defense must be supported by specific allegations of misconduct by a plaintiff that, if proved, would prevent the plaintiff from prevailing on its claim." Of course, the misconduct must be related to plaintiff's claim.

The Trademark Act does not refer to “trademark bullying” explicitly or even implicitly. Rather, it provides for a trademark owner to protect its mark from confusing uses that may infringe upon an owner’s rights through court litigation, and for parties who believe they would be damaged by the registration of a mark on the Principal Register to oppose or petition to cancel such registration before the Board.

Courts have awarded sanctions in trademark cases as a result of "over-aggressive trademark enforcement" accompanied by no reasonable basis for recovery. Greenerside argued essentially that DoorDash's Section 2(d) claims "overreach" and therefore constituted unclean hands.

The Board has previously considered assertions of "unclean hands" based on "overzealous enforcement" but found that this defense "does not apply to a registrant "seek[ing] to protect its rights in its registered marks, and preclud[ing] the registration of what it believes to be a confusingly similar mark."

Here, the Board found that DoorDash is "merely exercising its right to protect its marks." The Board observed:

A defense, as with any pleading, must contain sufficient factual matter to give rise to a particular defense. *** There must be more than threadbare recitals supported by conclusory statements. *** Applicant’s mere characterization of Opposer’s prior opposition activity as "bullying," or assertion of "dubious, weak or exaggerated" claims, does not constitute a sufficient allegation of facts to support an unclean hands defense.

And so, the Board granted the motion to strike and, "as the allegations do not support the pleaded affirmative defense," denied Greenerside the opportunity to re-plead.

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TTABlogger comment: The reason for denying Greenerside the right to re-plead seems strange to me. I can see the Board saying that Greenerside tried twice and that's enough. But saying that its allegations fell short seems like a reason to consider the possibility of re-pleading.

Text Copyright John L. Welch 2024.