JERSEY GIRL WHISKEY for Distilled Spirits Confusable with JERSEY GIRL for Beer and Wine, Says TTAB

Despite the applicants' energetic efforts, the Board upheld a Section 2(d) refusal of JERSEY GIRL WHISKEY for "distilled spirits" [WHISKEY disclaimed], finding confusion likely with the registered mark JERSEY GIRL for "wines" and the word-and-design mark shown below (in both color and black-and-white versions), for various beer products [BREWING CO. and ESTD 2014 disclaimed]. The Board found the marks to be "very similar in appearance, connotation and overall commercial impression in light of the shared, dominant wording JERSEY GIRL." And although there is no per se rule that all alcoholic beverages are related, the Board once again found that to be the case here. In re Louis Leonetti and Brandon Leonetti, Serial No. 97321068 (November 26, 2024) [not precedential] (Opinion by Judge George C. Pologeorgis).

Examining Attorney Cayla Keenan relied on 16 third-party websites demonstrating that retailers sell both distilled spirits and wine or beer under the same mark. Applicants argued that the goods "are different, being made via a different process and containing different ingredients," but even if true, the Board observed, that argument misses the mark. Applicants also pointed out, to no avail, that whiskey, beer, and wine are subject to different governmental regulations, but the Board noted that "[m]ore importantly, consumers are accustomed to encountering them under the same marks, without regard to any underlying regulatory schemes."

Next, applicants claimed that the Office's evidence was limited to "big box stores." Not so, said the Board. Applicants pointed to a document called "Executive Order on Promoting Competition in the American Economy," as further proof that the goods are not related, but the Board was unimpressed: "protecting the 'vibrancy of the American markets for beer, wine, and spirits,' as argued by Applicants, was not necessarily the aim of this order, and has no bearing on the registrability of trademarks."

Finally, applicants relied on 140 pairs of TSDR printouts of third-party registrations, purporting to show that the USPTO has registered the same mark to different parties for "distilled spirits," including whiskey, on the one hand, and beer or wine, on the other. In only 60 of the cases were the registrations still alive, based on use in commerce, and covering marks sufficiently similar to one another to be probative. The Board found that that these 60 third-party registrations did not justify the registration of Applicants’ mark.

[W]e lack important marketplace information such as (i) whether the “paired” registrants entered into any coexistence agreements, (ii) whether the marks themselves have actually coexisted in the marketplace without confusion *** and (iii) whether the marks coexist in a crowded field such that consumers have been conditioned to distinguish among the specific marks based on minute differences.

Applicants did not offer any evidence regarding the extent to which the third-party marks are used in commerce, or of consumers’ familiarity with them. “[W]here the ‘record includes no evidence about the extent of [third-party] uses . . . [t]he probative value of this evidence is thus minimal.”

Ultimately, we find that Applicants’ “sets” or “pairs” of prior third-party registrations, although significant in number, do not rebut the Examining Attorney’s arguments and corresponding evidence that the goods at issue are related for the reasons explained above. We therefore find, based on the record, that Applicants’ goods are related to Registrant’s goods.

The Board then found that the channels of trade and classes of consumers for the involved goods overlap, and it found no evidence that these consumers will exercise more than ordinary care. And so, the Board affirmed the refusal.

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TTABlogger comment: In these alcoholic beverages case, an applicant's principal hope seems to be the weakness of the Office's evidence of third-party registration and use. See In re Thor Tech, Inc. [TTABlogged here] (two third-party registrations, expensive goods, and lack of proof of overlapping channels of trade.)

Text Copyright John L. Welch 2024.

November 2024 Update of TMEP Now Available

The November 2024 version of the Trademark Manual of Examining Procedure (TMEP) is now available on the USPTO website (here).

Another Strategic Partners Argument Fails: TTAB Affirms Refusal of "REACH & Design" for Vehicle Parts

The Board upheld a Section 2(d) refusal to register the mark shown below, for vehicle radiators and air conditioner parts, finding confusion likely with the registered mark REACH for "Motor vehicles, namely, automobiles, trucks, vans, sport utility vehicles and structural parts therefor; trucks and structural parts therefor; vans and structural parts therefor." Applicant Reach International argued that, under the Strategic Partners approach, its prior registration for a similar mark should serve to overcome the refusal. The Board, however, found that Reach overreached. In re Reach International, Inc., Serial No. 97335655 (November 25, 2024) [not precedential] (Opinion by Judge Mark A. Thurmon).

In Strategic Partners, the Board faced "the unique situation presented by the coexistence of applicant’s existing registration with the cited registration for over five years, when applicant’s applied-for mark is substantially similar to its existing registered mark, both for identical goods.” Strategic Partners, 102 USPQ2d at 1400. The applicant owned a registration for the mark ANYWEARS, which was substantially similar to the mark ANYWEAR that applicant sought to register, for the same goods (footwear).

Here, Applicant Reach owned a registration for the mark shown immediately below. That registration issued in 2005 but expired in 2016 when it wasn't renewed.

Examining Attorney Nathaniel Pettican argued that, unlike in Strategic Partners, the applicant's earlier registration had co-existed on the Trademark Register for only four years (not five) and furthermore that the earlier registration here had expired. The Board, however, agreed with Reach that, under the case law, five years of co-existence is not required. But a live registration is necessary in order to invoke Strategic Partners.

The Strategic Partners holding is based, in part, on the view that the owner of the cited registration in that case faced no new or different harm if a substantially similar mark was registered again for the same goods. The prior registration owned by the applicant in Strategic Partners had been registered for more than five years, which meant the owner of the cited registration could no longer petition to cancel the applicant’s prior registration.

In this case, Applicant does not own a prior registration. "The cited registration stands alone, at least with respect to any registrations owned by this Applicant. If the registration of Applicant’s new version of its mark causes harm to the owner of the cited registration, that will be a new harm, not duplicative of any existing situation."

[W]e have found no Board decision applying this holding to a case where the applicant’s prior registration was cancelled, nor does Applicant cite to any. In at least three recent decisions (all nonprecedential), the Board distinguished Strategic Partners for the same reason we do here: because the prior registration was cancelled.

The Board further noted "another important distinction" between this appeal and the “unique situation” in Strategic Partners. Reach is currently seeking registration in two classes (International Classes 7 and 11), but its cancelled registration identified goods only in International Class 7. In short, the subject application includes goods that did not appear in the deceased registration. 

The Board swiftly found the marks similar, the goods related, and the rade channels overlapping. And so, it affirmed the refusal.

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TTABlogger comment: Strategic Partners provides a very small loophole in the USPTO's Section 2(d) net.

Text Copyright John L. Welch 2024.

TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Overturned on Appeal?

The TTAB affirmance rate for Section 2(d) appeals continues to run at about 90% so far this year. Here are three recent Board decisions, at least one of which reversed the refusal. How do you think they came out?

In re Agrinova Science S.A., Serial No. 97636947 (November 12, 2024) [not precedential] (Opinion by Judge Jennifer L. Elgin). [Section 2(d) refusal of the mark AGRINOVA SCIENCE & Design for, inter alia, fertilizer, compost, and agricultural chemicals and for on-line retail store services featuring chemicals of all kinds for use in agriculture, horticulture and forestry [SCIENCE disclaimed], in view of the registered mark AGRINOVA for "Fresh agricultural products, namely, vegetables, fruits, herbs, living grass, natural turf, and seeds, none of the foregoing including potatoes."

In re iPayed, LLC, Serial No. 90855472 (November 21, 2024) [not precedential] (Opinion by Judge Christen M. English) [Section 2(d) refusal of the mark shown below, for "bank tendering, namely, tendering of money; banking; electronic banking via a global computer network; home banking; online banking; savings bank services" [EBANK disclaimed], in view of the registered mark IPAY for, inter alia, "providing financial information" and "financial planning and investment advisory services."]

In re A JW Production, LLC, Serial No. 97426636 (November 21, 2024) [not precedential] (Opinion by Judge Thomas W. Wellington). [Section 2(d) refusal of the mark ONE DROP CONFERENCE for "Business and direct sales training, and distributing course materials in connection therewith; educational services, namely, developing, arranging, and conducting business conferences, seminars, classes, workshops, training, and programs in the fields of business, leadership,and entrepreneurship, none of which relate to humanitarian projects" [CONFERENCE disclaimed], in view of the registered mark ONE DROP for “business management, planning, and development of humanitarian projects for improving quality of life and living conditions of underprivileged populations” and for “charitable fund raising; financing of humanitarian projects for improving quality of life and living conditions of underprivileged populations."

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TTABlogger comment: How did you do?

Text Copyright John L. Welch 2024.

Precedential No. 28: TRIPLEYE Not Confusable With 3RD EYE for Optical Monitoring Software and Services, Says TTAB

In a rather straightforward, yet precedential decision, the Board dismissed a Section 2(d) opposition to registration of the mark TRIPLEYE for optical monitoring software and equipment and related technical services, finding confusion unlikely with the registered mark 3RD EYE for vehicle surveillance and detection systems and related hardware, software and software-based services. The Board found the differences in sound, appearance, connotation, and commercial impression between the marks to be the most important factor in reaching its conclusion. The Heil Co. v. Tripleye GmbH, Opposition No. 91277359 (November 20, 2024) [precedential] (Opinion by Judge Lawrence T. Stanley, Jr.).

Evidentiary Rulings: Opposer Heil was knocked back on its heels by two evidentiary rulings. First, the Board tossed out its claim to a "family of marks" because Heil did not make that allegation in its notice of opposition and the issue was not tried by implied consent. Second, the Board upheld Applicant Tripleye's objection to Heil's last-minute attempt to change the sales figures that it provided during discovery. Tripleye was dealt an early blow when the Board refused to take judicial notice that "autonomous vehicles are (or will be when they reach the market) expensive purchases," due to the vagueness of the statement and the lack of unquestionable evidence in support.

Motion to Amend: Tripleye, in an attempt to side-step the Section 2(d) claim, had filed a Rule 2.133 motion to amend its application by limiting the goods and services to use with "Level 4 or Level 5 autonomous vehicles." The Board denied the motion because the proposed amendment "does not introduce a substantially different issue for trial," since Heil's registrations are broadly worded and cover the goods and services in Tripleye's application even if so amended.

Likelihood of Confusion: Turning to the substantive issue, the likelihood of confusion, Heil argued that its mark is commercially strong but its proofs were underwhelming. Although claiming use of the mark 3RD EYE since 2004, its sales figure were limited to the 2019-2022 time period and lacked industry context. It provided evidence of a few media articles, promotion at a single trade show, and an unimpressive media presence.

We cannot place Opposer’s 3RD EYE mark on the high end of the fame/commercial strength spectrum amongst a “significant portion of the relevant U.S. consumers” in the vehicle surveillance and detection system industry. *** Perhaps on a more developed record we would find otherwise. As a result, the fifth DuPont factor is neutral.

As to the sixth DuPont factor, the Board found - based on 26 third party registrations - that the word EYE "is a common element of marks for “cameras.” Third-party use evidence likewise showed such use of the word EYE, but none of the marks were similar to Heil's mark overall.

Under the sixth DuPont factor, the evidence of third-party marks reflects weakness of the word EYE but not of Opposer’s mark as a whole. However, consumers apparently distinguish among coexisting EYE-formative marks based on other elements, and EYE is the only shared component of Opposer’s and Applicant’s marks. The sixth DuPont factor thus weighs against likely confusion.

Most significantly, the Board found the mark TRIPLEYE and 3RD EYE to be "different enough" in sound, appearance, connotation, and commercial impression to avoid a likelihood of confusion.

[T]he marks TRIPLEYE and 3RD EYE convey different connotations and commercial impressions. TRIPLEYE has a meaning of “three eyes,” suggesting three cameras in this context, whereas 3RD EYE, as a phrase, has a specific understood meaning and connotation and will be viewed as a unitary mark, calling to mind an additional eye that provides extra-ordinary perception, including for example the “mind’s eye” or “inner eye.” Opposer asks us to take too far a leap by ignoring the understood meaning of the phrase “third eye.” These differing connotations and commercial impressions are consistent with distinctions between the parties’ goods, as indicated by the record.

The goods in the opposed application and in Heil's registrations are in-part identical (e.g., "cameras"), and those goods presumably travel through the same trade channels to the same classes of consumers. The recited services are closely related: "Applicant’s Class 42 services cover the design of software that performs the identical purpose or function of Opposer’s software (i.e., controlling and monitoring vehicles). Thus, consumers can seek out Applicant’s services, or purchase Opposer’s software, to accomplish the same purpose." These services are offered to "many of the same industries as Opposer, such as 'mining and construction,' 'logistics,' and 'marine and ports.'" The Board acknowledged that, with regard to the involved services, consumers "will exercise at least a somewhat heightened degree of consumer care."

In conclusion, the Board found that, as to Thirdeye's goods, the dissimilarity of the marks, together with the weakness of the weakness of the only shared element, the word EYE, outweighed the other DuPont factors. As to the services, those findings, along with "the elevated degree of care in making purchasing decisions under the fourth Dupont factor," outweighed the other factors.

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TTABlogger comment: A well written run-through of the DuPont factors

Text Copyright John L. Welch 2024.

TTAB Affirms Refusal of ENDURELITE in view of ENDUROLETE for Supplements, Rejecting Strategic Partners Argument

The Board affirmed a refusal to register the mark ENDURELITE, finding confusion likely with the registered mark ENDUROLETE, both for dietary and nutritional supplements. The marks are "extremely similar," the goods identical in-part, and the channels of trade and classes of consumers for those goods are presumably identical. Applicant argued that, under Strategic Partners, its ownership of a registration for the mark ENDURELITE FUELING FAST & Design (shown immediately below) justifies registration of the standard character mark. The Board disagreed. In re Endurelite Supplements, LLC, Serial No. 90708132 (November 15, 2024) [not precedential] (Opinion by Judge Thomas W. Wellington).

Examining Attorney Kevin Flebbe and Applicant argued over the applicability of In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012). [TTABlogged here]. There the applicant sought to register the mark ANYWEAR in slightly stylized form, for footwear, and its ownership of a registration for ANYWEARS in standard character form was enough to sidestep a likelihood of confusion refusal.

Here, as in Strategic Partners, the prior registration was more than five years old and therefore was "not subject to attack by the owner of the cited registration on a claim of priority and likelihood of confusion." Furthermore, the identical word ENDURELITE appears in both marks.

On the other hand, unlike in Strategic Partners, the marks are not "substantially similar" since the prior mark includes a design and additional wording. Also, Applicant here is seeking to register the mark ENDURELITE for goods that include “dietary and nutritional supplements,” which is "a significant expansion upon the more specifically-described nutritional supplements listed in Applicant’s existing prior registration." In Strategic Partners, the Board noted, the goods covered by both the applicant’s existing prior registration and in its application were identical: "footwear."

In view of the above, we find the existence of Applicant’s prior registration only weighs slightly in favor of finding confusion unlikely. We hasten to add, however, that there are significant differences between the circumstances present in this appeal with those in Strategic Partners, and we certainly do not find ourselves in the “unique position” where the thirteenth DuPont factor “outweighs the other [factors].” Id. at 1399.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: Well, that Hail Mary pass failed to connect.

Text Copyright John L. Welch 2024.

TTAB Remands Failure-to-Function Refusal to USPTO for Consideration of Descriptiveness and Deceptiveness

Applicant Litehouse, Inc. filed an appeal from a failure-to-function refusal of the proposed mark VEGGIES IN EVERY BITE for "pasta, macaroni and cheese, pasta sauce, pizza, pizza crust, croutons, frozen meals consisting primarily of pasta or rice." The Board, perhaps fed up with the steady stream of such refusals, suspended the appeal and remanded the application to the Examining Attorney for further examination. In re Litehouse, Inc., Serial No. 97501419 (November 8, 2024) [not precedential] (Opinion by Judge Angela Lykos).

The Office maintained that VEGGIES IN EVERY BITE “is so widely used by numerous third parties to convey a message that food is nutritional such that it fails to function as a trademark under Sections 1, 2, 3,2 and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052, 1053, 1127."

Rule 2.142(f)(1) provides: "If, during an appeal from a refusal of registration, it appears to the Trademark Trial and Appeal Board that an issue not previously raised may render the mark of the appellant unregistrable, the Board may suspend the appeal and remand the application to the examining attorney for further examination to be completed within the time set by the Board."

[T]he Board remands the application to the Examining Attorney to consider whether to:

● refuse registration under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that Applicant’s mark is merely descriptive of the identified goods;

● issue an information request pursuant to Trademark Rule 2.61(b), 37 C.F.R. § 2.61(b), asking Applicant relevant information about the goods, including, but not limited to, whether the goods will contain vegetables;

● refuse registration, if appropriate, under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that Applicant’s mark is deceptively misdescriptive; and

● refuse registration, if appropriate, under Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a), on the ground that Applicant’s mark is deceptive.

(Emphasis supplied).

The procedure following remand is laid out in Rules 2.142(f)(3) and 2.61-2.63. Ultimately, if one or more new refusals is/are made final, the case will return to the Board for further appeal briefing, etc.

The Examining Attorney is reminded that the scope of the remand is limited solely to whether to also refuse registration on the additional grounds summarized above. The Examining Attorney should not issue a new ground for refusal or requirement not specified in this order, nor should the Examining Attorney supplement the record on other issues or advance any new arguments regarding the original refusal. See TBMP § 1209.01. Likewise, Applicant’s response to any nonfinal Office action issued on remand must be limited to the matters raised in that Office action.

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TTABlogger comment: Earlier this year, in the ZPILE case, the Board suggested that the Office should have applied the "distinctiveness continuum" rather than a failure-to-function approach in light of the evidence before the Board. TTABlogged here.

Text Copyright John L. Welch 2024.

"SURVIVAL + Greek Cross Design" Fails to Function as a Trademark for First Aid Kits, Says TTAB

The Board upheld a refusal to register the proposed mark shown below for "first aid kits" [SURVIVAL disclaimed] on the ground that the supposed mark "would be perceived as merely informational matter and thus fails to function as a trademark" for the identified goods. The Board found that each of the elements of the mark - the white Greek cross on a green background, the word SURVIVAL, and the red rectangle - is non-distinctive both alone and in combination. In re Tyrrells Administration Pty Ltd, Serial No. 97002256 (November 15, 2024) [not precedential] (Opinion by Judge Robert Lavache).

“The critical question in determining whether [a proposed mark] functions as a trademark is the commercial impression it makes on the relevant public, i.e., whether the term sought to be registered would be perceived as a mark identifying the source of the goods ....” Peace Love World Live, 2018 TTAB LEXIS 220, at *7; see also GO & Assocs., 90 F.4th at 1359 (noting that the relevant analysis focuses on “how the mark is used in the marketplace and how it is perceived by consumers").

The Greek Cross: The Board agreed with Examining Attorney Anna Oakes that the white Greek cross on a green background "is a universal symbol for first aid and is commonly used by those in the first aid field." Applicant Tyrells argued that there are many symbols connoting "first aid," but that didn't help. The evidence showed that the white Greek cross on a green background is recognized as one of them.

SURVIVAL: The Board found that "third parties in the field of first aid kits, some of whom are presumably Applicant’s competitors, commonly use the term SURVIVAL to refer to first aid kits that contain materials and components for supporting the continuation of life, i.e., for survival." The Board concluded that "potential purchasers of first aid kits will recognize the term SURVIVAL as identifying a category of first aid kits or a key aspect of them." In sum, SURVIVAL is generic for first aid kits.

Red rectangle: Applicant claimed the red rectangle (but not the "white and blue outlining") as part of its proposed mark. The Board found the rectangle to be nondistinctive:

[T]here is nothing striking, unique, or distinctive about the color or shape of the rectangle that contains the word SURVIVAL, or the manner in which that word is placed or stylized within the rectangle. Further, we find that the color red actually renders the rectangle less distinctive, as the record contains numerous examples showing that red is commonly used on first aid kits or in connection with first aid generally.

The Combination: The Board again agreed with the Examining Attorney that "there is nothing in the combination such that the mark, as a whole, serves indicate the source of Applicant’s first aid kits and distinguish them from those of others."

Finally, Tyrells pointed to the two marks below, registered for first aid kits, as justification for registration of its mark. The Board was unmoved.

While both of these registrations cover first aid kits, their existence on the register does not justify registration of Applicant’s proposed mark where the evidence of record shows that the relevant public would perceive the Greek cross, and the mark as a whole, as something other than an indicator of source. We reiterate here, as many prior Board decisions have, that “[e]ach application for registration must be considered on its own merits.”

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TTABlogger comment: WYHA?

Text Copyright John L. Welch 2024.

TTABlog Test: Three Section 2(d) Appeals - Affirmed or Reversed?

A TTAB judge once said to me that one can predict the outcome of a Section 2(d) appeal about 95% of the time just by looking at the marks and the goods/services. Of course, if you just said "affirmed" you'd be right about 90% of the time. Anyway, here are three recent Board decisions. How do you think they came out? Answer in first comment.

In re Fertinagro Biotech International, S.L., Serial No. 79328903 (November 12, 2024) [not precedential] (Opinion by Judge Jennifer L. Elgin). [Section 2(d) refusal of the composite mark shown below for "Soil fertilizers; fertilizers" in view of the registered mark FERTUM for "chemical preparations for use in agriculture, horticulture and forestry, namely, chemical additives for use in the manufacture of fertilizer; fertilizers; manures."]

In re Washington Trust Bank, Serial No. 97542874 (November 13, 2024) [not precedential] (Opinion by Judge Albert J. Zervas) [Section 2(d) refusal of the mark CLEARLY CASH BACK for "banking services; credit card services, namely, issuance of credit cards; credit card services, namely, providing cash and other rebates for credit card use as part of a customer reward program and customer use incentive program" [CASH BACK disclaimed], in view of the registered mark CLEARLY BETTER BUSINESS CHECKING for "banking services" [BETTER BUSINESS CHECKING disclaimed].

In re Making Connections Professional Services, LLC, Serial Nos. 97472548 and 97472577 (November 14, 2024) [not precedential] (Opinion by Judge Mark A. Thurmon). [Section 2(d) refusal of the mark MAKING CONNECTIONS PROFESSIONAL SERVICES, in standard character and logo form, for "Consulting services in the field of marketing of educational training; Business consultation in the field of education leadership development; Business consulting, management, planning and supervision; Business management consultation in the field of executive and leadership development; Business management consulting; Business management supervision; Business organization consulting; Personnel management consultation; Professional business consultation; Professional business consulting" [PROFESSIONAL SERVICES disclaimed] in view of the registered mark MAKING CONNECTIONS THAT COUNT for "On-line business networking services.]"

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TTABlogger comment: See any WYHA?s?

Text Copyright John L. Welch 2024.

Precedential No. 27: TTAB Dismisses Empresa Cubana's Pan-Am Article 8 Claim, But With Leave To Re-Plead

In a precedential decision of interest to the many aficianados of the Pan-American Convention, the Board granted a Rule 12(b)(6) motion to dismiss Petitioner Empresa Cubana's claim for cancellation under Article 8 of the Convention. Empresa's allegations fell just short of stating a proper claim, but the Board gave Empresa twenty days to re-plead. Empresa Cubana del Tabaco d.b.a. Cubatabaco v. Kretek International, Inc., Cancellation No. 92082877 (November 14, 2024) [precedential].

Empressa sought cancellation of the registrations for the two marks shown above, for "cigars," claiming likelihood of confusion Under Section 2(d) with several of its marks, and violation of Article 8 of the Pan-American Convention. The Article 8 claim was founded on Empresa's pending application for the mark shown below.

Article 8 provides, in pertinent part:

When the owner of a mark seeks the registration . . . of the mark in a Contracting State other than that of origin of the mark and such registration . . . is refused because of the previous registration . . . of an interfering mark, he shall have the right to apply for and obtain the cancellation or annulment of the interfering mark upon proving, in accordance with the legal procedure of the country in which cancellation is sought, the stipulations in Paragraph (a) and those of either Paragraph (b) or (c) below:

(a) That he enjoyed legal protection for his mark in another of the Contracting States prior to the date of the application for the registration . . . which he seeks to cancel; and

(b) That the claimant of the interfering mark, the cancellation of which is sought, had knowledge of the use, employment, registration or deposit in any of the Contracting States of the mark for the specific goods to which said interfering mark is applied, prior to adoption and use thereof or prior to the filing of the application or deposit of the mark which is sought to be cancelled; . . . . 46 Stat. 2907. (Emphasis by the Board).

Respondent Kretek argued that (1) Empresa's Article 8 claim was "premature" because the USPTO had not cited Kretek's registrations as grounds for refusal of Empresa's pending application, but had only suspended the application pending resolution of this cancellation proceeding; and (2) Empresa had not alleged a sufficient factual basis as to Kretek's knowledge of Empresa's mark prior to Kretek's adoption and use of its marks or prior to the underlying applications for the challenged registration.

Premature?  As to whether Emrepesa's claim was premature, the question was whether Empresa's application had been "refused" because of Kretek's registrations. In the Lacteos case, the Board found that a "potential for refusal" based on an opposition proceeding sufficed to satisfy Article 8.

Building on Lacteos, where “the potential for refusal” is sufficient to bring a counterclaim for cancellation, we now hold that where a Trademark Examining Attorney suspends prosecution of a plaintiff’s application for registration pending the disposition of a legal proceeding involving plaintiff’s likelihood of confusion claim against a defendant’s registration that has been identified as presenting a bar to registration of the plaintiff’s mark, the requirement in the Article 8 Preamble for “the potential for refusal” is satisfied.

Knowledge? Having decided that Empresa's claim was timely, the Board then turned to the specific allegations of the claim:

Petitioner must allege that: (1) it seeks registration in the U.S. of a mark which originated in another Contracting State; (2) during ex parte examination by the USPTO, registration to Petitioner has either been refused or the Examining Attorney has identified a potential for refusal because of Respondent’s Registrations; (3) Petitioner enjoyed legal protection for its mark in another Contracting State prior to the date of Respondent’s applications for Respondent’s Registrations; and (4) Respondent had knowledge of the use or registration in any of the Contracting States of Petitioner’s mark for the identical goods to which Respondent’s marks are applied, prior to adoption and use of Respondent’s marks or prior to the filing of Respondent’s applications for Respondent’s Registrations. See Lacteos, 2020 TTAB LEXIS 13, at *12-13. (Emphasis supplied).

After reviewing Empresa's allegations in detail, the Board found that Empresa had stated a factual basis for its claim. In particular, as to whether Kretek "had knowledge of the use, employment, registration or deposit in any of the Contracting States," the Board found sufficient the allegations that Kretek's marks are "a blatant and obvious copying" of Empresa's mark meant to "capitalize upon and exploit" the fame of its designs used in connection with its "renowned COHIBA cigars."

Leave to Re-plead: Nevertheless, the Board granted the motion to dismiss because Empresa did not include the required allegation that registration "has either been refused or the Examining Attorney has identified a potential for refusal" because of Kretek's registrations. The dismissal was without prejudice, however, and the Board allowed Empresa twenty days within which to file and serve a "supplemental petition for cancellation" that includes that allegation.

Read comments and post your comment here.

TTABlogger comment: For a helpful explanation of the Pan-American Convention, see Professor Christine Haight Farley's TTABlog article here.

Text Copyright John L. Welch 2024.