Friday, February 23, 2024

TTAB Denies Request for Reconsideration of TORPEDO JUICE Cancellation Denial

Petitioner Oregon Grain requested reconsideration of the Board's denial of its petition for cancellation of a registration for the mark TORPEDO JUICE for "Alcoholic beverages, except beer; Gin; Liquor; Rum" [TTABlogged here]. The Board had found that Oregon failed to prove priority because it failed to prove that its common law, identical mark was distinctive as of the filing date of Respondent's underlying application. Oregon here claimed that the Board erred in ruling that the issue of the lack of distinctiveness of Oregon's mark was tried by implied consent. Oregon Grain Growers Brand Distillery Inc. v. Michael Pitsokos, Cancellation No. 92076817 (reconsideration denied February 9, 2024) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Implied Consent Not Necessary: The Board first pointed out that, despite its earlier ruling, "it was not necessary to find implied consent" to consider the issue of distinctiveness. First, the issue of priority was raised by respondent in its answer, and in any event the petitioner in a cancellation proceeding must prove priority. Second, "under the rule of Otto Roth, a petitioner cannot prevail unless it shows that its unregistered common law mark is distinctive of its goods or services." The Board noted that "plaintiffs relying on common law rights, in general, often overlook the element of proof of distinctiveness as part of the burden of establishing priority."

Accordingly, the Board did not err in considering, as an initial matter, the distinctiveness of Petitioner’s designation TORPEDO JUICE in connection with priority since distinctiveness of an asserted common law mark must be proven and addressed in our consideration of Petitioner’s prior rights in such mark.

Distinctiveness of Petitioner's Mark: The Board also concluded that it did not err in finding TORPEDO JUICE to be merely descriptive.

The evidence and testimony in the record fully support our finding that TORPEDO JUICE merely describes a feature of Petitioner’s pineapple vodka by informing purchasers that Petitioner’s goods are an alcoholic beverage that is high proof, and that its pineapple flavored vodka is based on a beverage that purportedly originated from naval sailors during World War II.

Amend Petition to Add Descriptiveness Claim?: Petitioner asserted that the issue of descriptiveness was also tried with regard to registrant’s identical mark. The Board, construing this argument as seeking an amendment to the pleadings to conform to the evidence under Fed. R. Civ. P. 15(b) based on implied consent, was unmoved.

After a thorough review of the record, we find that the issue of descriptiveness of Respondent’s mark was not tried by the implied consent of the parties and, in particular, that Respondent was never fairly apprised that Petitioner’s evidence was being offered in support of a descriptiveness claim. To the contrary, until its present request for reconsideration, Petitioner had not raised this issue. *** In its brief on the case, Petitioner states unequivocally that there are two issues in this proceeding, namely, likelihood of confusion and nonuse. Petitioner does not in any way address the issue of descriptiveness of Respondent’s mark in its brief.

And so, the Board denied the request for reconsideration and denied the request to amend the pleadings.

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TTABlogger comment: In a review of a Board decision by way of civil action under Section 1071, the plaintiff may raise new issues and add evidence. What new issue would you raise?

Text Copyright John L. Welch 2024.

Thursday, February 22, 2024

TTABlog Test: Are Nail Polish Strengtheners Related to Dietary Supplements?

The USPTO refused to register the mark TRI-FLEX TECHNOLOGY for "nail care preparations, nail strengtheners, non-medicated nail treatment preparations for cosmetic purposes, nail polish, nail color gels, nail lacquers, none of the foregoing containing collagen" [TECHNOLOGY disclaimed], finding confusion likely with the registered mark shown below, for "dietary supplements for humans containing Types I, II, and III Collagen." Are the marks confusable? Are the goods related? How do you think the appeal came out? In re Wella Operations US, LLC, Serial No. 97401927 (February 20, 2024) [not precedential] (Opinion by Judge Albert J. Zervas).

The Marks: The Board found TRI-FLEX to be the dominant element in both marks. The design in the cited mark, having "three sections of curved, flexible arms," reinforces the term TRI-FLEX. [Flexible? - ed.]. The term COLLAGEN is "generic in the context of the goods," and so it "plays a much lesser role than TRI-FLEX in the mark’s commercial impression." The Board therefore found the marks to be similar "in sound, meaning, appearance and commercial impression." [Sound? Appearance? - ed.].

The Goods: The Board focused on "nail care preparations” not containing collagen, in applicant's identification of goods. It observed that "collagen is an important contributor to nail strength; that supplements, including collagen supplements, are taken to improve nail strength." The evidence established that "consumers will consider both Applicant’s and Registrant’s goods when wanting to strengthen fingernails."

Moreover, third-party websites showed that "the same entity provides nail care products and treatments and collagen supplements and markets these goods under the same mark." The evidence convinced the Board that the goods are related.

As to channels of trade, the Board found persuasive "the FlexiNail webpage offering the involved goods as part of a single package on one webpage, and the Beauty Pie website offering such goods on the same website under the same Beauty Pie brand."

From the identifications and from the Examining Attorney’s website evidence, we find that purchasers of Applicant’s and Registrant’s identified goods, i.e., members of the general consuming public who desire stronger nails, overlap.

Conclusion: The Board concluded that confusion is likely, and so it affirmed the refusal to register.

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TTABlogger comment: What do you think? I am unconvinced.

Text Copyright John L. Welch 2024.

Wednesday, February 21, 2024

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

People are saying that one can predict the outcome of a Section 2(d) appeal about 95 percent of the time just by looking at the marks and the goods and/or services. Here are the three Section 2(d) appeals recently decided by the TTAB. How do you think these three came out? [Answers in first comment.]

In re Adorama, Inc., Serial No. 97263050 (February 9, 2024) [not precedential] (Opinion by Judge Mark A. Thurmon). [Section 2(d) refusal TURNSTILE AUDIO for “microphones, headphones, in-ear monitors not for medical purposes, audio speakers in the nature of studio monitor speakers, and other related audio equipment used in recording, live sound, post-production, and broadcasting, namely, sound recording apparatus” [AUDIO disclaimed] in view of the registered mark TURNSTYLE for "carrying cases, namely, shoulder bags, and messenger bags, all designed for carrying one or more of cameras, photographic equipment, digital audio players, cell phones, satellite telephones, personal digital assistants, electronic reading devices, tablet computers, and computer accessories.]

In re LIT Hookah LLC, Serial No. 87904603 (February 14, 2024) [not precedential] (Opinion by Judge Thomas W. Wellington). [Section 2(d) refusal of the mark shown below for "On-line retail store services featuring handmade all-glass hookahs" in view of the registered mark LIT for "Electronic cigarettes and components and parts, namely, cartomisers, atomisers, and refill cartridges."]

In re CARWIZ International d.o.o., Serial Nos. 79261503, and 79261504 (February 15, 2024) [not precedential] (Opinion by Judge Mark A. Thurmon). [Section 2(d) refusal of CARWIZ, in standard character and design form (shown below) for, inter alia, vehicle rental, in view of the registerd mark WIZZ for, inter alia, car rental.]

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

Text Copyright John L. Welch 2024.

Tuesday, February 20, 2024

CAFC Vacates and Remands BABIES' MAGIC TEA Cancellation Denial: TTAB Misapplied the DuPont Factors

The CAFC vacated the Board's decision [here] denying a petition for cancellation of a registration for the mark BABIES' MAGIC TEA for "medicated tea for babies that treats colic and gas and helps babies sleep better." The Board found no likelihood of confusion with the registered mark BABY MAGIC for various toiletry goods (including baby lotion). The CAFC ruled that the basis for the Board's finding as to the second DuPont factor was unclear, that the Board had ignored certain evidence bearing on the third factor, and that it erred in failing to weigh the first factor heavily in favor of Petitioner Naterra. Naterra International, Inc. v. Samah Bensalem, Appeal No. 2022-1872 (Fed. Cir. Feb. 14, 2024) [precedential].

The Board concluded that the marks were "more similar than dissimilar," but gave "particular weight" to the lack of "probative evidence showing the relatedness of the parties’ respective goods, . . . coupled with the somewhat weak inherent nature of [Naterra’s] BABY MAGIC mark, [and] the lack of demonstrated commercial strength (let alone fame) and similar trade channels."

With regard to the second DuPont factor (the similarity and nature of the goods), the Board rejected Naterra's expert witness testimony regarding other "umbrella" baby brand companies that purportedly sell both baby skin care products and baby ingestible product, as “unsupported by underlying evidence.” The CAFC, however, deemed this testimony to be "pertinent to the relatedness of the goods." Moreover, Respondent Bensalem's counsel admitted at oral argument that third-party evidence is "absolutely very relevant."

Because the court could not discern "whether the relevant evidence was properly evaluated" it remanded to the Board "for further consideration and explanation of its analysis under this factor."

As to the third DuPont factor (the similarity of established trade channels), the Board ignored Bensalem's admission response that stated that both parties "utilize similar channels of trade in connection with the trademarks." Noting that the Board did not identify any evidence showing a lack of similarity in trade channels, the CAFC again vacated and remanded for further proceedings, directing the Board to consider "all relevant evidence related to the second and third DuPont factors."

The Board also erred in failing to weigh the first DuPont factor (the similarity of the marks) "heavily in favor of a likelihood of confusion finding." The court found instructive its holding in Detroit Athletic, in which it found that the lead words of the marks DETROIT ATHLETIC CLUB and DETROIT ATHLETIC CO. "are their dominant portion and are likely to make the greatest impression on consumers." As in Detroit Athletic, "the first DuPont factor should 'weigh[] heavily in the confusion analysis.'"

We conclude the Board erred in weighing the first DuPont factor and failed to address relevant evidence concerning the third DuPont factor. We also cannot discern whether the Board properly addressed relevant evidence concerning the second DuPont factor. Accordingly, we vacate the Board’s decision and remand for further proceedings consistent with this opinion.

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TTABlogger comment: What do you think will be the result on remand?

Text Copyright John L. Welch 2024.

Monday, February 19, 2024

Another TTAB Footnote on Legal Citations Says USPQ Still Acceptable

We reported here on an internal Board citation program concerning the possible broadening of acceptable forms of legal citations. On the same day, the Board made a different statement regarding the program in In re MYBAGSTORES.COM, Serial No. 90726300 (February 9, 2024), in a footnote quoted first below.

As part of an internal Board pilot citation program on possibly broadening acceptable forms of legal citation in Board cases, this decision varies from the citation form recommended in the TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 101.03 (June 2023). This decision cites decisions of the U.S. Court of Appeals for the Federal Circuit and the U.S. Court of Customs and Patent Appeals by the page(s) on which they appear in the Federal Reporter (e.g., F.2d, F.3d, or F.4th) and/or the United States Patents Quarterly (USPQ).For decisions of the Board and the Director, this decision employs parallel citations to both the USPQ and to the WESTLAW database (WL). Until further notice, however, practitioners should continue to adhere to the practice set forth in TBMP § 101.03. (Emphasis added).

The Board took a more restrictive approach (see below) in In re Pro Eagle LLC, Serial No. 97738815 (February 9, 2024). I have highlighted what I perceive to be the differences.

As part of an internal Board pilot program exploring the possibility of broadening or altering acceptable forms of legal citations in Board cases, the citations in this opinion vary from the citation forms recommended in Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 101.03 (June 2023). This decision cites precedential decisions of the Court of Appeals for the Federal Circuit and the Court of Customs and Patent Appeals only by the page(s) on which they appear in the Federal Reporter (e.g., F.2d, F.3d, or F.4th). Precedential decisions of the Board and the Director will be cited only to WESTLAW (WL) and initial citations to Board decisions will include a parenthetical indicating the decision’s precedential status. There will be no citations to the United States Patents Quarterly (USPQ). Practitioners, however, should continue to adhere to the practice set forth in TBMP § 101.03 until further notice from the Board. (Emphasis added).

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TTABlogger comment: What about citations to TTAB and CAFC slip opinions?

Text Copyright John L. Welch 2024.

USPTO Seeks Candidates for Deputy Chief Administrative Trademark Judge at the TTAB

The USPTO is seeking applications for the position of Deputy Chief Administrative Trademark Judge at the Trademark Trial and Appeal Board. Applications are accepted until February 29, 2024. Further details may be found at the USA Jobs website, here.

Duties

As the Deputy Chief Administrative Trademark Judge you will have the opportunity to serve as a full voting member of the Trademark Trial and Appeal Board. You'll serve under the administrative direction of the Chief Administrative Trademark Judge, who reports to the Office of the Under Secretary and Director of the USPTO. As the DCATJ you will collaborate with various high level USPTO officials on varied agency initiatives, and with administrative trademark judges on a range of hearings, appeals and trial cases. You will work closely with a diverse team of judges, attorneys and Board managers on the full breadth of operations of the Board. You will also have the exciting opportunity to showcase your ability to develop and implement standard operating procedures (SOP) necessary for the internal operation of the Board.

If you are committed and motivated to make a positive impact and join an agency that drives economic growth, national prosperity and supports the development and collaboration among the diverse cultures of its employees, then this amazing next journey is just for you!

In this exciting role as the DCATJ:

  • You'll work closely with the CATJ to develop and deploy the strategic and policy initiatives of the Board, as needs may be identified by the Board or as strategic initiatives may be required by the Office of the Under Secretary and Director of the USPTO, to which the Board reports;
  • You'll provide leadership and guidance in executing comprehensive executive management, strategic planning, policy development, and financial functions that are essential to effective Board operations;
  • You'll develop and maintain quality, timeliness, and productivity performance standards for the administrative trademark judges, attorneys and support staff;
  • You'll collaborate with various stakeholders within the legal community including the Court of Appeals for the Federal Circuit, bar associations, etc.;
  • You'll develop procedures for program operations and oversee assignments and completion of functions;
  • You'll play a significant role in ensuring employee engagement and promoting diversity within the Board and through personnel outreach efforts;
  • You'll represent the agency by actively participating in public conferences and meetings and will prepare and deliver high-level presentations to foreign dignitaries or officials regarding the Board and its operations;
  • You'll lead the efforts in assigning panels of administrative trademark judges to adjudicate all trademark appeals and trademark opposition, cancellation, concurrent use and interference proceedings and periodically serve on such panels;
  • You'll serve as the Acting CATJ during the absence of the CATJ and serve on a variety of USPTO enterprise-level committees;
  • You'll provide expertise skills, leadership and oversight on high level performance and initiatives of the Trademark Trial and Appeal Board.

Read comments and post your comment here.

Text Copyright John L. Welch 2024.

Friday, February 16, 2024

Trade Name Use is not Trademark Use, Says TTAB

The Board affirmed a refusal to register the proposed mark EXPERIMENTAL AND APPLIED SCIENCES for “Dietary and nutritional supplements” on the ground that the mark is used solely as a trade name to identify applicant's business and therefore is not registrable. In re Hi-Tech Pharmaceuticals, Inc., Serial No. 88291540 (February 14, 2024) [not precedential] (Opinion by Judge Martha B. Allard).

A “trade name” is defined in Section 45 of the Trademark Act as “any name used by a person to identify his or her business or vocation.” 15 U.S.C. § 11. "A designation used merely as a trade name cannot be registered under the provisions of the Trademark Act." See, e.g., In re Letica Corp., 226 USPQ 276, 277 (TTAB 1985).

A designation may function as both a trade name and a trademark. “The distinction between trade name use and either trademark or service mark use is often a difficult one to make and often is nebulous in character.” In re Unclaimed Salvage & Freight Co., 192 USPQ 165, 167 (TTAB 1976).

Factors to consider include whether Applicant has used its full corporate name or entity designation, capitalized its name, utilized its name in the same lettering style as other matter, used its name in a significantly bolder or larger style of type, or displayed its name in a contrasting color. In re Univar Corp.,20 USPQ2d 1865, 1869 (TTAB 1991); see also TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 1202.01 (Nov. 2023) and cases cited therein.

Each of applicant's specimens showed the mark displayed as depicted above, in only one location — on one line of a four-line group, all sharing the same color, identical or at least nearly identical font size and style, and left-hand and right-hand justification.

We agree with the Examining Attorney that “[i]ndeed, applicant would be hard-put to present the term in a less prominent manner.” Because the proposed mark appears in a four-line stack, i.e., with the lines sharing the same left- and right-hand justification, these lines form a visual unit which reinforces the impression that the proposed mark EXPERIMENTAL AND APPLIED SCIENCES should be read in conjunction with the line above it (indicating that the manufacturer is being introduced) and the lines below (providing contact information).

The fact that Applicant does not include a corporate designation, such as “Inc.”, does not detract from its perception as a trade name, particularly where, as here, the designation immediately follows the introduction “Developed and exclusively manufactured by”, which explicitly informs the consumer that what follows is the name of an entity.

The Board therefore found that "Applicant’s designation EXPERIMENTAL AND APPLIED SCIENCES functions solely as a trade name," and so it affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA? Refusal seems as inevitable as a Caitlin Clark three-pointer

Text Copyright John L. Welch 2024.

Thursday, February 15, 2024

TTABlog Test: Is FOOTWARE Merely Descriptive of Footwear with Integrated Technology?

San Antonio Shoe, Inc. opposed Nike's application to register the proposed mark FOOTWARE for goods and service in classes 9, 38, and 42, all related to sensor and communication software, hardware, and services. Nike did not deny that "the FOOTWARE platform may be incorporated into a shoe," but it pointed out that the identification of goods and services makes no mention of shoes or footwear. How do you think this came out? San Antonio Shoe, Inc. v. Nike, Inc., Opposition No. 91263731 February 12, 2024 [not precedential] (Opinion by Judge Karen S. Kuhlke).

San Antonio argued that "[a]n ordinary consumer will understand that: (i) 'FOOT' refers to a product worn on the foot; (ii) 'WARE' refers to the advanced hardware and software technologies embedded in the product," and therefore "'footware' is merely descriptive for foot[-]worn wearable technology." Excerpts from third-party websites submitted by San Antonio included examples of consumer exposure to wearable technology in shoes and use of FOOTWARE in connection therewith.

The Board found that WARE is at least merely descriptive of computer software and hardware goods and services. The addition of FOOT "informs the consumer of a feature (or specification) of the computer software, hardware and services, that they are used in connection with footwear, the phonetic equivalent of footware."

This case presents the unusual situation where the double entendre engendered by the suffix “WARE” unambiguously informs the consumer the computer software and hardware, and computer services, the “Platform,” are for use in connection with footwear. In both meanings FOOTWARE or FOOTWEAR the term merely describes a feature of the computer goods and services.

The Board concluded that the combination of FOOT + WARE does not result in a separate distinctive meaning.

As to Nike's argument regarding the identification of goods and services, the Board observed that "[i]f the refusal of registration applies to any of the goods or services within the class, registration is refused as to the entire class." Nike admitted that its FOOTWARE platform may be incorporated in a shoe. That was enough for Section 2(e)(1) purposes:

[T]he fact that the “Platform” could be used with other networked devices and FOOTWARE may have a different meaning in a different context is not controlling. (citation omitted). Applicant’s identification of goods is broadly worded and encompasses “computer hardware modules for receiving, processing, and transmitting data in Internet of things electronic devices,” “electronic devices and downloadable computer software that allow users to remotely interact with other smart devices,” “telecommunications services, namely, transmission of data by means of telecommunications networks, wireless communications networks and the Internet,” and “cloud computing featuring software for connecting operating and managing networked devices via wireless or wired networks,” used in connection with footwear.

The Board concluded that FOOTWARE "merely describes a feature, function and purpose of the computer goods and services, namely, that they may be used with footwear or shoes." And so, the Board sustained the opposition.

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TTABlogger comment: If the shoe foots, ware it.

Text Copyright John L. Welch 2024.

Wednesday, February 14, 2024

CAFC Affirms TTAB: USPTO'S Domicile Address Requirement for Applicants Was Not Improperly Promulgated

The CAFC upheld the Board's affirmance [TTABlogged here] of a refusal to register the mark CHESTEK LEGAL for "legal services" based on Applicant Chestek PLLC's failure to provide its "domicile address." Chestek listed a post office address, but under Trademark Rules 2.32(a)(2) and 2.189 a post office box is not a street address. Conceding that it failed to comply with the domicile address requirement, Chestek argued on appeal that the Rules were unlawfully promulgated under the Administrative Procedure Act (APA), but the Board disagreed and the CAFC sided with the Board. In re Chestek PLLC, Appeal No. 2022-1843 (Fed. Cir. Feb. 13, 2024) [precedential].



Chestek argued that the domicile address requirement was improperly promulgated for two independent reasons: (1) that the USPTO failed to comply with the requirements of notice-and-comment rulemaking under 5 U.S.C. § 553 because the proposed rule did not provide notice of the domicile address requirement adopted in the final rule; and (2) that the domicile address requirement is arbitrary and capricious because the final rule failed to offer a satisfactory explanation therefor.

As to the first argument, the court observed that Section 553(b)(A) "does not require the formalities of notice-and-comment for 'interpretative rules, general statement of policy, or rules of agency organization, procedure, or practice.'" Chestek argued that the domicile address requirement is not an "interpretative" rule but rather a "substantive" rule requiring notice-and-comment. Alternatively, Chestek argued that notice-and-comment is required even for interpretative rules. The CAFC was not persuaded.

The court concluded that the USPTO's requirement is not a substantive rule because it "does not alter the substantive standards by which the USPTO evaluates trademark applications, e.g., a mark's use in commerce or distinctiveness. "As to second argument, Chestek offered no support for displacing the procedural exceptions to notice-and-comment rulemaking contained within Section 553(b).   

Turning to Chestek's assertion that the promulgation of the domicile address requirement was arbitrary and capricious, the court concluded that the Office offered sufficient justification for the requirement. The Office adopted the requirement as part of a larger scheme to require foreign applicants, registrants, or parties to a trademark proceeding to be represented by U.S. counsel. The U.S. counsel requirement was needed "because of the influx of unauthorized practice of law by foreign parties." In order to condition the requirement of U.S. counsel on domicile, the Office would need to know the applicant's domicile address, and it was reasonable for the Office to require that information.  

Finally, Chestek contended that the domicile address requirement was arbitrary and capricious because the Office did not take into account privacy concerns, such as its impact on victims of domestic violence or homeless individuals. The court was unmoved. It noted that an agency's reasonableness must be judged based on the record before it at the time of decision. The policy concerns here raised by Chestek were not raised before the Office, nor did the Office receive comments from parties expressing the privacy and other concerns raised by Chestek.

Concluding that the USPTO properly promulgated the domicile address requirement and that Chestek failed to comply with that requirement, the CAFC affirmed the Board's decision.

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TTABlogger comment: Some call this the "Where do you sleep at night?" case.

Text Copyright John L. Welch 2024.

Tuesday, February 13, 2024

TTABlog Test: Is CANTU for Vehicle Tires Primarily Merely a Surname?

Invoking Section 2(e)(4), the USPTO refused registration of the proposed mark CANTU for “Tires; vehicle wheels; air chamber tire parts for vehicles, namely, inner tubes,” finding that CANTU is primarily merely a surname. The name CANTU appears 107,752 times in the search of the Lexis-Nexis Public Records database, but applicant asserted that, under the doctrine of foreign equivalents, CANTU means "sing" or "song" in English, overriding any surname significance of the term. How do you think this came out? In re CP Comerical S/A, Serial No. 90865025 (February 9, 2024) [not precedential] (Opinion by Judge Cheryl S. Goodman).

The Board considered the usual Section 2(e)(4) factors. There was no evidence that anyone associated with applicant has the surname CANTU, a neutral factor. Negative dictionary evidence showed that CANTU has no other recognized ordinary English meaning, a factor weighing against applicant.

Examining Attorney David Brundage asserted that CANTU has the structure and pronunciation of similar surnames (Canto, Canby, Banta, Cann, Santa, Canal, Canas, Canter, Gant and Sante). The Board found only one to be similar: CANTO. Applicant provided evidence that Portuguese surnames end in "es." [NB: the Board's opinion is not very clear in explaining applicant's argument on his point]. The Board concluded that "[c]oupled with the countering evidence from Applicant regarding common endings for surnames, the Examining Attorney’s evidence CANTO is a similar surname is insufficient to show how the public perceives the structure and sound of CANTU." The Board deemed this factor neutral. 

As mentioned above, the surname CANTU appears 107,752 times in the search of the Lexis-Nexis Public Records database. The ancestry.com website Ancestry website indicated there are 430,000 United States records relating to the CANTU surname.

As demonstrated by the database evidence and the Ancestry website evidence, CANTU is used as a surname across the United States, and the general public has been exposed to the surname. We find that members of the general public are likely to encounter CANTU as a surname, and this evidence supports the Examining Attorney’s refusal that the primary significance of CANTU is as a surname.

Turning to applicant's argument that the doctrine of equivalents should be applied, Applicant and the Examining Attorney submitted various conflicting translations from Google Translate. The Board rejected applicant's position.

We find there is no evidence in the record establishing that the doctrine of foreign equivalents applies in this case. There is no evidence in the record to support CANTU is the foreign equivalent of the English word “sing” in the Sicilian and Asturian languages. Attorney argument is not evidence. The record also does not clearly support a finding that the English word “sing” is translated as CANTU in the Portuguese language. Lastly, as the Examining Attorney points out, the Google Translate result submitted by Applicant does not show that the English word “sing” is translated as CANTU in the Corsican language. 

The Board therefore found the doctrine of foreign equivalents to be inapplicable, and it concluded that the primary significance of CANTU to the purchasing public is that of a surname.

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TTABlogger comment: With that many Lexis/Nexis hits, you'd better have some pretty good evidence to get out from behind the 8-ball.

Text Copyright John L. Welch 2024.

Monday, February 12, 2024

TTAB is Considering Dropping Citations to USPQ in favor of Westlaw

In a recent Board decision, In re Pro Eagle LLC, Serial No. 97738815 (February 9, 2024), the Board announced in a footnote that it is conducting an "internal Board pilot program exploring the possibility of broadening or altering acceptable forms of legal citations in Board cases." It appears that the Board may decide to drop USPQ citations in the future. The footnote from the Pro Eagle case is quoted below.

As part of an internal Board pilot program exploring the possibility of broadening or altering acceptable forms of legal citations in Board cases, the citations in this opinion vary from the citation forms recommended in Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 101.03 (June 2023). This decision cites precedential decisions of the Court of Appeals for the Federal Circuit and the Court of Customs and Patent Appeals only by the page(s) on which they appear in the Federal Reporter (e.g., F.2d, F.3d, or F.4th). Precedential decisions of the Board and the Director will be cited only to WESTLAW (WL) and initial citations to Board decisions will include a parenthetical indicating the decision’s precedential status. There will be no citations to the United States Patents Quarterly (USPQ). Practitioners, however, should continue to adhere to the practice set forth in TBMP § 101.03 until further notice from the Board.

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TTABlogger comment: What do you think? Is this bad or good for practitioners? Why is the Board considering this change?

Text Copyright John L. Welch 2024.

TTABlog Test: Is MENSTRUATION CRUSTACEON Merely Descriptive of Microwavable Heating Pads?

The USPTO refused to register the proposed mark MENSTRUATION CRUSTACEON for "Microwavable heating pads not for medical purposes," finding the mark to be primarily merely descriptive under Section 2(e)(1). Applicant argued, among other things, that "the rhyming, incongruous qualities of MENSTRUATION CRUSTACEAN" and its "humorous, rhyming cadence" . . . "captures the consumer’s attention and identifies Applicant as the source of the goods." How do you think this came out? In re What Do You Meme, LLC, Serial No. 97406016 (February 8, 2024) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Examining Attorney Alex Seong Keam relied on dictionary definitions of the constituent words, on Applicant's specimen of use (shown above), product listings for applicant's heating pad (describing the product as "a huggable, heat-up” 14-inch “plush lobster” and “cuddly crustacean” in the shape of a lobster), third-party articles about applicant's goods, and various advertisements for creature-shaped pads for use with period or menstrual pain, including crustaceans (crab and lobster). [example below].

The Board observed that "[a] term or word which merely describes the form or shape of a product falls under the proscription of Section 2(e)(1) of the Trademark Act. [See, e.g., J. Kohnstam, Ltd. v. Louis Marx & Co., 280 F.2d 437, 126 USPQ 362, 364 (CCPA 1960) (MATCHBOX SERIES merely descriptive of toys sold in boxes having the size and appearance of matchboxes)]. Here, CRUSTACEAN "merely describes the shape or form of Applicant’s heating pad product, which in this case is a lobster, a type of crustacean."

The Board found that MENSTRUATION describes the use or purpose of Applicant’s heating pads, i.e., to relieve menstruation pain. Moreover, when the two words are combined, MENSTRUATION CRUSTACEAN "does not lose its descriptive significance."

Applicant argued that MENSTRUATION CRUSTACEAN is not descriptive because it is a unitary mark that has a “rhyming cadence” and is incongruous. According to Applicant, "rhyming 'menstruation' with 'crustacean' while euphonous, is absurd and disarming, and so the perceptual incongruity resulting therefrom transforms an otherwise descriptive mark into a mark capable of trademark significance and capable of identifying the source of the goods."

The Board noted that to be considered a unitary mark, the elements of the mark must be so merged "that the mark has a distinct meaning of its own independent of the meaning of its constituent elements." "In rare cases, alliterative marks, or those with a rhyming or other sound pattern, can encourage persons encountering the mark to perceive the mark as a whole."

As to incongruity, “it must be shown that in combination the descriptiveness of the individual words has been diminished, that the combination creates a term so incongruous or unusual as to possess no definitive meaning or significance other than that of an identifying mark for the goods.”

The Board rejected applicant's "unitary mark" contention:

We disagree with Applicant that MENSTRUATION CRUSTACEAN is a unitary mark. While the rhyming pattern employed in Applicant’s mark may assist consumers’ perception of the mark as a combination of both terms rather than just focusing on one, we find no separate distinct overall commercial impression as a result. The two words rhyme, but the rhyming quality imparts no new or different meaning to the terms.

And it also rejected the "incongruity" argument:

We also find no incongruity. Combining the merely descriptive terms “menstruation” and “crustacean” into the composite MENSTRUATION CRUSTACEAN does not negate their mere descriptiveness, nor does it create a composite that is incongruous. MENSTRUATION CRUSTACEAN merely describes the shape or form of the heating pad, which is a crustacean (lobster), and it describes the function or purpose of the heating pads which is to relieve pain from cramps during menstruation. The combination does not result in an incongruous or unusual designation with no definitive meaning or significance other than as a mark.

In sum, "consumers will still immediately understand upon seeing the mark in connection with the goods that they are used to describe a heating pad in the shape of a plush lobster that is used to relieve cramps during menstruation."

And so, the Board affirmed the refusal.

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Text Copyright John L. Welch 2024.