Friday, July 01, 2022

TTABlog Quarterly Index: April - June 2022

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Section 2(a) - False Association: Section 2(d) - Likelihood of Confusion:

Section 2(e)(1) - Deceptive Misdescriptiveness Section 2(e)(1) - Mere Descriptiveness: Section 2(e)(4) - Primarily Merely a Surname: Failure-to-Function: Fraud:

Disclaimer Practice: Specimens of Use/Nonuse/Non Ownership: Procedural Issues/Discovery:
CAFC Decisions: Recommended Reading: Other: Text Copyright John L. Welch 2022.

Thursday, June 30, 2022

Former Red Sox Nemesis Bucky Dent Applies to Register "BUCKY F'ING DENT" for Entertainment Services

Russell Earl "Bucky" Dent was a light-hitting shortstop for the New York Yankess when, in 1978, he hit a three-run homer that gave the Yankees a 3–2 lead in the AL East division tie-breaker game against the Boston Red Sox. The Yankees went on to win that game, and then the World Series over the Los Angeles Dodgers. Boston Red Sox fans still refer to him ruefully as "Bucky Fucking Dent." Apparently seeking to cash in on that celebrity, Mr. Dent has filed applications to register both BUCKY DENT and BUCKY F'ING DENT for, inter alia, entertainment services in the nature of live appearances by a former professional baseball player, and for clothing (Serial Nos. 97462500, 97462515, 97462865, and 97462897, filed June 16, 2022).

The TTABlogger, being a White Sox fan, fondly remembers Mr. Dent as a rookie shortstop for the Pale Hose. He was traded to the Bronx Bombers in 1977. Not only did he win the World Series with the Yankees in 1978, but he hit .417 and was named the World Series MVP!

Read comments and post your comment here.

TTABlogger comment: I wonder whether some Red Sox fan will oppose just for spite? Note that Mr. Dent is planning a road trip to Fenway Park. Good luck with that!

Text Copyright John L. Welch 2022.

Wednesday, June 29, 2022

TTAB Posts July 2022 (Video) Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled five (5) oral hearings for the month of July 2022. The hearings will be held via video conference. Briefs and other papers for each case may be found at TTABVUE via the links provided.

July 7, 2022 - 1 PM:
In re Di-Namic Records, Serial No. 87399929 [Refusal to register the mark THIS IS FOR MY GIRLS for "entertainment information; musical composition for others; production of musical sound recording," on the ground that the specimens of use do not evidence an association between the mark and the recited services.]


July 12, 2022 - 1 PM: In re Responsiveads, Inc., Serial No. 88453313 [Refusal to register ResponsiveAds for advertising, marketing and promotional services and for marketing software, on the ground of mere descriptiveness and lack of acquired distinctiveness.]


July 13, 2022 - 10 AM: New Enchantment, LLC v. MedSpa S.R.L., Cancellations Nos. 92067467 and 92071795 [Petitions for cancellation of two registrations for the mark MIAMO for cosmetics, dietetic foods, and related products, and for medical, human hygiene, and beauty services, in view of the registered mark MII AMO for, inter alia, cosmetics and spa services.]

July 14, 2022 - 11 AM:
In re C.E. Shepherd Company, LLC, Serial No. 88636382 [Refusal to register MODULAR GABION SYSTEMS for "Gabions of steel wire"on the grounds of genericness or, alternatively, mere descriptiveness and lack of acquired distinctiveness.]

July 26, 2022 - 1 PM: Mystery Ranch, Ltd. v. Terminal Moraine Inc. dba Moraine Sales, Opposition No. 91250565 Opposition to registration of the mark DANA DESIGN in the form shown below, for backpacks, shoulder bags, and similar gear, on the grounds that the mark falsely suggests a connection with Dana Gleason, the owner of opposer, under Section 2(a), and the mark comprises the name of a living individual without his consent, under Section 2(c).]

Read comments and post your comment here.

TTABlog comment: Any predictions? See any WYHAs or WYHOs or WYHPs?

Text Copyright John L. Welch 2022.

Tuesday, June 28, 2022

TTAB Finds Two KR Design Marks For Cosmetics Confusingly Similar

The Board affirmed a Section 2(d) refusal of the mark shown below left, for "non-medicated skin serums; facial concealer; pre-moistened cosmetic wipes; and skin moisturizer," finding confusion likely with the registered mark shown below right for, inter alia, cosmetics. Applicant Krete LLC argued that the marks are "clearly distinguishable," but the Board pointed out that "it is not necessary for the marks to be indistinguishable to be found similar." Kretet also pointed to its ownership of a registration for a similar mark for non-medicated skin serums, but the Board was unimpressed. In re Krete LLC, Serial No. 90369855 (June 24, 2002) [not precedential] (Opinion by Judge Peter W. Cataldo).

Examining Attorney Julie Choe submitted dictionary definitions of "cosmetics" as well as a definition provided by the U.S. Food and Drug Administration (FDA). The Board concluded that Krete's goods fell within those definitions. "Simply put, Registrant’s goods include cosmetics and sub-types of cosmetic and cosmetic components, and Applicant’s goods are types of cosmetics." Seven third-party websites offered, under the same trademark or trade name, goods identified in both the involved application and cited registration.

Krete maintained that its goods are specialty, high end products available in exclusive trade channels, but there were no such limitations in its application. Nor were there any limitations on channels of trade or classes of consumers in the cited registration.

With respect to the marks, the Board found that the "relatively modest geometric designs in the applied-for mark and cited mark do not significantly contribute to the mark’s commercial impression, but rather are subordinate to the letters 'KR' in both marks." The Board observed once again that when a mark is comprised of both literal elements and a design, the literal elements is usually accorded greater weight, in part because consumers are likely to remember and use the letters to request the goods.

Krete pointed to the numeral "7" in the cited mark as a distinguishing element, but the Board found no evidence the consumers would view that design element as the number "7." [Looks like a "7" to me - ed]. Nor was there evidence to support Krete's assertion that its mark is a play on the periodic table of elements, signifying that its goods are "scientific, pure, and clinical."

Turning to Krete's prior registration, Krete invoked the Strategic Partners precedent, but that case applies only in very narrow circumstances. The Board noted that "[i]n this case, Applicant’s prior registration issued in 2021 and thus is not contestable, for a mark with similar elements identifying some of the goods at issue herein." [Huh? "not contestable"? not incontestable? Something is wrong here, not the least of which is using the term "contestable" or "incontestable" to describe a registration - ed.]. While the Board was sympathetic to Krete's position, it concluded that the existence of the prior registration did not outweigh the other DuPont factors.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: There is no such thing as an "incontestable" registration. Nowhere in the Lanham Act is the word "incontestable" used in connection with a registration. It is the right to use a registered mark that may become incontestable. See Sections 15 and 33 for proper usage of the term.

Text Copyright John L. Welch 2022.

Monday, June 27, 2022

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

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

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

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

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2022.

Friday, June 24, 2022

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

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

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

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

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

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

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

Text Copyright John L. Welch 2022.

Thursday, June 23, 2022

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

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

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

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

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

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

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

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

Read comments and post your comment here.

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

Text Copyright John L. Welch 2022.

Wednesday, June 22, 2022

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

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

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

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

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2022.

Tuesday, June 21, 2022

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

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

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

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

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

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

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

And so, the Board sustained the opposition.

Read comments and post your comment here.

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

Text Copyright John L. Welch 2022.

Friday, June 17, 2022

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

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

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

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

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

Read comments and post your comment here.

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

Text Copyright John L. Welch 2022.