TTABlog Test: Which of These Three Recent Section 2(d) Appeals Resulted in Reversal(s)?

So far this year, the Board has reversed 7 of the more than 130 Section 2(d) refusals that it has reviewed. Here are three recent Board decisions. At least one of the refusals was reversed. Which one(s)? [Results in first comment].

In re Public Joint Stock Company Acron, Serial No. 79301495 (August 4, 2022) [not precedential] (Opinion by Judge Cheryl S. Goodman) [Section 2(d) refusal of the mark ACRON in the sylized form shown below, for "Gardening; landscape gardening; horticulture services; aerial and surface spreading of fertilizers and other agricultural chemicals; plant nursery services," in view of the registered mark ACRON in standard form, for "Construction, namely construction consultancy, construction planning."]

In re Everfresh Beverages Inc., Serial No. 88900190 (August 2, 2022) [not precedential] (Opinion by Judge Mark Lebow). [Section 2(d) refusal of LA CROIX GUAVA SAO PAULO for "sparkling water" [GUAVA disclaimed], in view of the registered mark SAO PAULO STRAWBERRY LEMON for "non-alcoholic beverages containing fruit juices; fruit flavored beverages; fruit-flavored drinks; fruit based beverages; fruit based beverages enhanced with antioxidants; [and] fruit flavored beverages enhanced with antioxidants" [STRAWBERRY LEMON disclaimed].]

In re SBOX Holdings LLC, Serial No. 88886981 (August 10, 2022) [not precedential] (Opinion by Judge Cynthia C. Lynch) [Section 2(d) refusals of CAMBIO for "jewelry" and "retail store services featuring jewelry," in view of the registered mark CAMBIARE for "jewelry."]

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

Text Copyright John L. Welch 2022.

Precedential No. 21: TTAB Orders Cancellation of OLD SCHOOL Registrations Due to Abandonment - Intent to Sell Mark Is Not Intent to Use

In an exhaustive and exhausting opinion, the Board granted petitions to cancel two registration for the mark OLD SCHOOL for various clothing items, on the ground of abandonment. The Board found that the registrant, despite claiming attempts to sell or license the mark, had discontinued use of the mark with an intent not to resume use. Vans, Inc. v. Branded, LLC, 2022 USPQ2d 742 (TTAB 2022) [precedential] (Opinion by Judge Marc A. Bergsman).

Under Section 45 of the Trademark Act, a mark shall be deemed abandoned "[w]hen its use has been discontinued with intent not to resume use. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. 'Use' of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark." [Emphasis added]. Abandonment is a question of fact; a petitioner has the burden to prove abandonment by a preponderance of the evidence.

Nonuse:  The Board combed through the record evidence in great detail [the opinion includes 250 footnotes citing to the record]. It noted that Branded "failed to introduce any credible documents showing use of the OLD SCHOOL mark to identify clothing or sale of clothing." Nor was there any evidence of advertising. Respondent's testimony regarding use was unpersuasive because of its inconsistencies, contradictions, and unspecific nature. Petitioner Vans thus established nonuse of the mark since 2008, a period of more than three years and thus prima facie evidence of abandonment. 

 

Petitioner’s prima facie case of abandonment eliminates its burden of establishing the intent element of abandonment as an initial part of its case and creates a rebuttable presumption that Respondent had no intent to commence or resume use of the OLD SCHOOL trademark. See Rivard v. Linville, 133 F.3d 1446, 45 USPQ2d 1374, 1376 (Fed. Cir. 1998); Imperial Tobacco, 14 USPQ2d at 1393. The presumption shifts the burden to Respondent to introduce evidence that it intended to commence or resume use of its OLD SCHOOL trademark during the period of non-use. See Rivard v. Linvell, supra; Cerveceria India Inc. v. Cerveceria Centroamerica, S.A., 10 USPQ2d 1064, 1068 (TTAB 1989), aff’d, 892 F.2d 1021, 13 USPQ2d 1307 (Fed. Cir. 1989).

Intent Not to Resume Use: A respondent, in order to prove an intent to commence or resume use, must provide evidence "with respect to either specific activities undertaken during the period of nonuse, or special circumstances which excuse nonuse." See Cerveceria, 10 USPQ2d at 1069. Here, Respondent Branded never intended to use the mark itself, but claimed that it always intended to license or sell it.

However, Branded could not prove its intent to resume use of its mark on the basis of its intent to sell the mark, "especially where the evidence that it 'used' the mark at all is so vague, inconsistent and unreliable."

[H]olding a mark with no use, with only an intent to sell the mark at some time in the future, is not proof of present use or intent to resume use. Under these circumstances, the buyer, not the seller, would be the party resuming use and such use would not relate back to the seller and establish the seller’s intent to resume use. Rather, any use commenced by the buyer of a mark not associated with a business or relevant portion thereof could, at best, establish only the buyer’s going-forward priority rights based on its own, and proper, first use of the mark.

 

The Board held that "an intent to sell a trademark separate and apart from an ongoing business supports finding an intent not to resume use (i.e., no intent to resume use) by the seller." Indeed, such an intent is evidence of "trafficking in trademarks," which the Trademark Act seeks to prevent by deeming such an assignment invalid and the involved application or registration void.

Respondent Branded also claimed that there were efforts to license the mark. The Board observed that a bona fide license of a mark "involves use of a mark by the licensee that inures to the benefit of the licensor," and constitutes "use" attributable to the trademark owner. See Moreno v. Pro Boxing Supplies, Inc., 124 USPQ2d 1028, 1035 (TTAB 2017) (“It is well-settled that use of a mark by a licensee inures to the benefit of the trademark owner.”); Quality Candy Shoppes/Buddy Squirrel of Wisc., Inc. v. Grande Foods, 90 USPQ2d at 1392.

However, because of the generality and vagueness of its testimony, the Board concluded that Branded failed to establish that it had an acceptable intent to resume use rather than an attempt to "reserve a right in the mark until the right deal to license [or] sell it outright came along." 

Branded contended that it had been policing its marks, which showed its intent to resume use, However, there was no evidence of the issuance of cease-and-desist letters, nor of the commencement of any litigation. Branded filed a single trademark opposition in 2009, but then filed none for the next nine years, until after this proceeding had commenced. The found this evidence of enforcement efforts "not persuasive."

Conclusion: The Board found that Petitioner Vans established by a preponderance of the evidence that Branded failed to use its OLD SCHOOL mark after acquiring the mark in 2008, and intended not to resume use. Therefore, Branded abandoned the mark in the two registrations involved in these proceedings.

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TTABlogger comment: Is "intent not to resume use" (Section 45) the same thing as "no intent to resume use"?

Text Copyright John L. Welch 2022.

Precedential No. 20: TTAB Finds "SMART BEZEL" Merely Descriptive of Electronic Sensor Modules for Home Automation Systems

The Board affirmed a Section 2(e)(1) refusal to register the proposed mark SMART BEZEL, finding it to be merely descriptive of electronic sensor modules for controlling and integrating home automation systems, lighting systems, and smart heating systems [SMART disclaimed]. Applicant Zuma Array contended that its goods are not bezels and so the mark cannot describe the goods. The Board, however, found the mark to be descriptive of a use or purpose of the modules, and thus ineligible for registration without proof of acquired distinctiveness. In re Zuma Array Limited, 2020 USPQ2d 736 (TTAB 2022) [precedential] (Opinion by Judge Christopher Larkin).

Zuma acknowledged that "smart" is defined as "using a built in microprocessor" and the word "bezel" refers to "the outer frame of a computer screen, mobile phone or other electronic device." However, it asserted, "none of the applied for goods ... feature a 'bezel' at all." Examining Attorney Michael FitzSimons maintained that the proposed mark immediately conveys information about the goods because Zuma's sensors are designed to be incorporated into the bezels of various electronic appliances and lighting and heating systems, "to render the bezels ... capable of performing automatic operations for processing data or achieving greater versatility."

The Board noted "with some surprise" that neither Zuma nor the Office discussed the nature of "electronic sensor modules." The Board took judicial notice that a "module" is "a usually packaged functional assembly of electronic components for use with ... other assemblies." It then observed that a proposed mark that describes the intended use or purpose of the goods with which it is used is merely descriptive.

Applicant Zuma's website states that "swap[ping] out a standard for a Smart Bezel (TM)" enables homeowners to access a wide range of built-in sensors to support environmental, presence and life safety operations." Thus, the word BEZEL refers to the type of device on which Zuma's sensors will be used.

The commercial context of Applicant’s use of its proposed mark on its website “demonstrates that a consumer would immediately understand the intended meaning of” SMART BEZEL for electronic sensor modules, N.C. Lottery, 123 USPQ2d at 1710, namely, that the modules are used to create a “smart bezel.”

Finally, the Board pointed out once again that even if Zuma were the first and only usee of the proposed mark, the mark may still be shown to be merely descriptive of the identified goods.

And so, the Board affirmed the refusal.

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TTABlogger comment: My computer monitor has a dumb bezel.

Text Copyright John L. Welch 2022.

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

Last week, the TTAB ruled on the appeals from the three Section 2(e)(1) mere descriptiveness refusals summarized below. Let's see how you do with them. Results will be found in the first comment.

In re Eric Fessell, Serial No. 90263552 (August 4, 2022) [not precedential] (Opinion by Judge Elizabeth A. Dunn). [Mere descriptiveness refusal of MOTHER NATURE for books featuring a fictional hero, namely, Mother Nature (class 16); clothing (Class 25); and videos and animations of the fictional character, Mother Nature (Class 41).]

In re MVN Entertainment L.P., Serial No. 90047473 (August 4, 2022) [not precedential] (Opinion by Judge Frances S. Wolfson). [Mere descriptiveness refusal of POWER PONY for "Ride on toys and accessories therefor; Rideable toy vehicles; Ride on toys having a seating portion removably attached to an electrically powered wheeled device."]

In re Brumis Imports, Inc., Serial No. 90174988 (August 5, 2022) [not precedential] (Opinion by Peter W. Cataldo). [Mere descriptiveness refusal of KTCHN. for kitchen knives and cutlery (Class 8) and for cookware, storage containers, kitchen tools, and the like (Class 9).]

 

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

N.D. Ohio Retains Jurisdiction over Plaintiff's Cancellation Claim After Granting Summary Judgment Aganst its Infringement and Unfair Competition Claims

Plaintiff Gerlach, Inc. asserted four claims in this civil action: unfair competition under the Lanham Act, trademark infringement, deceptive trade practices, and a claim for cancellation of two of defendant's registrations under Section 1119 of the Trademark Act. After the court entered summary judgment in favor of defendant on the first three claims, defendant argued that the court was then divested of jurisdiction over the cancellation claim. The court disagreed. Gerlach, Inc. v. Gerlach Maschinenbau GmbH, Case No 5:19-cv-0601 (August 5, 2022).

The court pointed out that jurisdiction is determined at the time the complaint is filed, and it had jurisdiction over all four claims at that time. A court may lose jurisdiction if, because of post-filing events, there is no longer a case or controversy. This principle does not apply here, however, because a live case or controversy remained as to the fourth count.

Section 119 provides that "in any action" involving a registered mark, the court may determine the right to registration. Based on the word "in any action," courts recognize that Section 1119 does not provide an independent source of federal jurisdiction. Usually a claim for cancellation is made as a counterclaim, but in any case nothing in Section 1119 or the case law disturbs the principle that jurisdiction is determined at the outset of a case, or otherwise divests the court of jurisdiction after summary judgment is granted on the claim(s) that gave the court jurisdiction in the first place.

Cases cited by the defendant hold that once the other claims are dismissed, a cancellation claim cannot stand. But in those cases the other claims were dismissed at the git-go: for example, for lack of standing or failure to state a claim under FRCP 12(b)(6). Nothing in those cases alters the rule that jurisdiction is determined at the outset of a case and there is no requirement to re-determine jurisdiction following summary judgment.

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TTABlogger comment: The court also rejected defendant's assertion that the case should be dismissed in favor of the pending, suspended cancellation proceeding before the TTAB. No dice. This case involves additional registrations.

Text Copyright John L. Welch 2022.

Precedential No. 19: TTAB Affirms Section 2(b) Refusals of Orange County "Unofficial" Insignia

Every five years or so, like clockwork, the Board decides a Section 2(b) case. This time it affirmed refusals to register the two proposed marks depicted below, for various governmental services (e.g., maintaining parks and libraries), on the ground that they constitute insignia of a governmental entity, i.e., a "municipality." The Board rejected the argument that Orange County is not a municipality, and also rejected the argument that because Orange County already has an "official" seal, these design cannot be insignia of the county. County of Orange, 2022 USPQ2d 733 (TTAB 2022) [precedential] (Opinion by Judge Martha B. Allard).

Section 2(b) is a complete bar to registration of a mark that "[c]onsist of or comprises the flag or coat of arms or other insignia of . . . any State or municipality ...." It is based on the idea that "official government insignia . . . should not be registered as symbols of origin for commercial goods and services." 3 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 19:78 (5th ed. 2022).

Insignia? The Board first focused on the "Circular Mark" on the left. It observed that the term "insignia" has multiple meanings, including "a distinguishing mark or sign" and "an emblem." The Circular Mark has not gone through the two-step process set out in the California Government Code to make it an "official seal" of Orange County. In fact, Orange County has an "official" seal, shown immediately below. The Board pointed out, however, that formal adoption as an "official" seal is not a requirement of Section 2(b).

Evidence submitted by Examining Attorney Christina Calloway showed that the Circular Mark is displayed prominently on the county's website, which provides links to various services offered by the county, such as business licenses and payment of property tax bills. It is also displayed on the website for the Clerk-Recorder's office, which manages many official government documents such as marriage licenses and death certificates. The Mark appears prominently on signage for county offices, in cluding the county courthouse, appears on the wall of the meeting room of the County Board of Supervisors, and on maps depicting the location of county offices.

[W]e find that the prominent and repeated display of the proposed Circular Mark to denote traditional government records, functions, and facilities would reasonably lead members of the general public to perceive the proposed mark as an “insignia” of Applicant within the meaning of Section 2(b) of the Trademark Act. As shown above, the proposed mark serves as “a distinguishing mark or sign” and an “emblem” of Applicant’s authority.

Municipality?: The Board took judicial notice of a definition of the term "municipality" as "A city, town, or other local political entity with the powers of self government." Applicant acknowledged that the Californa Constitution provides that a county may have some such powers: for example, a county may make and enforce local ordinances, may sue and be sued, and may levy and collect taxes. And a county may adopt a charter. The Board therefore concluded that Orange County is a "municipality" for purposes of Section 2(b)

Applicant argued that state law should control because applicant was created and is governed by California law. The Board disagreed: “[I]n the absence of a plain indication to the contrary, it is to be assumed when Congress enacts a statute that it does not intend to make its application dependent on state law.” Dickerson v. New Banner Inst., Inc., 460 U.S. 103, 119 (1983) (cleaned up; citation omitted)." 

The Badge Mark: Unsurprisingly, as to applicant's other mark, the "Badge Mark," the same analysis applied.

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TTABlog comment: So a county is a municipality? Who knew?

Text Copyright John L. Welch 2022.

Precedential No. 18: TTAB Denies LAGUNA CANDLES Cancellation Petition, Finding Acquired Distinctiveness and No Claim Preclusion

Petitioner Flame & Wax found itself on the short end of the candlestick when the Board denied its petition for cancellation of a registration for the mark LAGUNA CANDLES for "aromatherapy candles; candles; scented candles" (CANDLES disclaimed), finding that the mark had acquired distinctiveness and therefore was not primarily geographically descriptive of the goods. The Board rejected petitioner's invocation of the doctrine of claim preclusion based on its earlier successful opposition to respondent's prior application to register the same mark, also on the ground of geographic descriptiveness, finding that this cancellation proceeding involved a different set of transactional facts. Flame & Wax, Inc. v. Laguna Candles, LLC, 2022 USPQ2d 714 (TTAB 2022) [precedential] (Opinion by Judge Albert Zervas).

Acquired Distinctiveness: Because the challenged registration was issued under Section 2(f), inherent distinctiveness was not an issue. See Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) (“where an applicant seeks registration on the basis of Section 2(f), the mark’s descriptiveness is a nonissue; an applicant’s reliance on Section 2(f) during prosecution presumes that the mark is descriptive.”). A registration may be cancelled if the mark lacks distinctiveness either when registered or at the time of trial. Neapco Inc. v. Dana Corp., 12 USPQ2d 1746, 1747 (TTAB 1989). The Board construed the petition as alleging geographical descriptiveness and acquired distinctiveness at the time of trial.

A cancellation petitioner bears the initial burden to establish a prima facie case of no distinctiveness. If it does so, then the burden shifts to the respondent to submit evidence and argument in its favor. However, the ultimate burden of proof remains with the petitioner. Cold War Museum, 92 USPQ2d at 1620.

The Board first was required to determine the degree of geographical descriptiveness of the mark LAGUNA CANDLES. See, for example, In re Boston Beer Co., 198 F.3d 1370, 1373 (Fed. Cir. 1999) (“[T]he greater the degree of descriptiveness the term has, the heavier the burden to prove it has attained secondary meaning” (quoting In re Bongrain Int’l (Am.) Corp., 894 F.2d 1316, 13 USPQ2d 1727, 1727 n.4 (Fed. Cir. 1990)). Relevant inquiries include evidence that the place named in the mark is very well known, and that third parties in the same industry use the geographic place name in connection with their goods. Spiritline Cruises, 2020 USPQ2d 48324, at *6.

There was no evidence of third-party uses, or newspaper or magazine articles referring to third-party use, of "Laguna." "Even the Orange County Wikipedia pages do not contain much information about Laguna Beach." Respondent's website states that it is located in Laguna Beach, while the petitioner presented testimony that Laguna Beach is often referred to as "Laguna." The Board concluded that the degree of geographic descriptiveness of LAGUNA CANDLES is "modest."

Because petitioner relied on outdated evidence (evidence submitted in the earlier opposition some nine years previously), the Board found that petitioner failed to make a prima facie case that overcame Respondent's claim of five years of continuous and substantially exclusive use. Moreover, even had petitioner made out a prima facie case, it did not overcome respondent's evidence that its sales and gross income figures have incresaed from 2011; from then until the trial, respondent sold 324,318 "units" and has received press coverage in several national magazines.

The Board concluded that petitioner had failed to carry its burden of proof.

Claim preclusion: In 2013, the TTAB sustained Flame & Wax's opposition to the same mark for candles on the ground of geographical descriptiveness [TTABlogged here]. Four months later, respondent filed a new application, claiming acquired distinctiveness under Section 2(f) based on continuous and substantially exclusive use of the mark for five years. Flame & Wax asserted that the prior TTAB decision established that the proposed mark is primarily geographically descriptive of petitioner's goods.

Claim preclusion requires (1) an identify of parties (or their privies), (2) an earlier final judgment of a claim on the merits, and (3) a second claim based on the same set of transactional facts as the first. Jet Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 55 USPQ2d 1854, 1856 (Fed. Cir. 2000).

The decision in the opposition named Candrice Hendricks as the defendant, but she is not a principal of the respondent LLC. Not to worry. Because of the family nature of the business and because respondent did not dispute privity, the Board deemed the first Jet factor to be satisfied. As to the second factor, the decision in the opposition was on the merits.

As to the third factor, the Board observed that after an adverse final decision, an applicant may make a second attempt to register a mark if circumstances have changed. In re Honeywell Inc., 8 USPQ2d 1600, 1601-02 (TTAB 1988); In re Oscar Mayer & Co., 171 USPQ 571 (TTAB 1971). The Board found no case, however, in which an applicant claims acquired distinctiveness in a second application filed only four months after a successful opposition.

The Board noted the additional evidence in this proceeding that was not present in the first proceeding: the challenged registration enjoys a presumption of validity under Section 7; a five-year declaration under Section 2(f) was included in the new application; the mark had been in use for seven more years; respondent's sales increased; and respondent had received additional press coverage.

The Board found that these facts "establish a recognizable change of circumstances from the time of trial in the Prior Opposition and the time of trial in the cancellation." And so, it concluded that the third Jet factor was not satisfied.

Fraud: Petitioner also claimed that respondent committed fraud on the USPTO when it represented in its second application that it was entitled to register the mark when it knew that the Board had already ruled that the mark was not registrable. The Board pointed out, however, that the examining attorney knew of the prior application and knew, or should have known, of the prior Board decision, and so respondent's statement "was not material to the regsitrability of the mark."

Moreover, petitioner failed to prove that respondent had a deceptive intent in making its representation. Respondent disclosed the prior application to the examining attorney, which suggests there was no deliberate concealment. Also, respondent may have believed that the change of circumstances permitted a second application.

PS: the cancellation petition was filed two days before the fifth anniversary of the registration, and five years and two months after the underlying application was published for opposition. So laches seems like a pretty good defesnes here.

And so, petitioner's fraud claim was denied.

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TTABlogger comment: The Board declined to reach respondent's affirmative defense of laches, but perhaps petitioner's delay may account for the Board seemingly leaning heavily in Respondent's favor.

PS: The petition for cancellation was filed two days before the 5th anniversary of the registration, and 5 years and two months after the underlying application was published for opposition.

Text Copyright John L. Welch 2022.

E.D. Pa. Dismisses PELOTON Complaint for Review of TTAB Decision Due to Lack of Personal Jurisdiction

Peloton Cold Brew filed a civil action for review of an adverse TTAB decision, under Section 1071(b) of the Trademark Act. [Complaint here]. The Board had entered judgment against Cold Brew as a discovery sanction [here], ordering cancellation of Cold Brew's registration for the mark PELOTON for "beverages made of coffee." The district court concluded that personal jurisdiction over Defendant Peloton Interactive was lacking, and so it dismissed the complaint. Peloton Cold Brew, Inc. v. Peloton Interactive, Inc., Civil Action No. 21-3579 (E.D. Pa. August 2, 2022).

As the Supreme Court has stated, “Federal courts ordinarily follow state law in determining the bounds of their jurisdiction over persons.” Daimler AG v. Bauman, 571 U.S. 117, 125 (2014). The Pennsylvania long-arm statute authorizes its courts to exercise personal jurisdiction to "the fullest extent allowed under the Constitution of the United States."

The court observed that there are two types of personal jurisdiction - general and specific. Plaintiff Cold Brew relied on general jurisdiction, which requires that a corporation's "affiliations with the state are so 'continuous and systematic' as to render [it] essentially at home in the forum state." The district court agreed with that defendant that the court lacked general jurisdiction over it.

The Supreme Court ... has determined that general jurisdiction over a corporate defendant under the Constitution is limited except in exceptional cases to the places where it is “fairly regarded as at home.” Daimler, 571 U.S. at 137 and 139 n.19. The two places, the paradigm fora, are the state of defendant’s incorporation and the state where defendant has its principal place of business.

Defendant Peloton Interactive, Inc. is a Delaware corporation with a principal place of business in New York. The court observed that, even if defendant has stores and warehouse, as plaintiff claimed, that is not enough to establish an exceptional case.

The court went on to consider specific jurisdiction, which requires that (1) defendant has purposely directed specific activities into the forum, (2) plaintiff's claim arises out of or is related to one of those activities, and (3) the assertion of jurisdiction comports with fair play and substantial justice.

Plaintiffs seeks review of the decision of the Trademark Trial and Appeal Board which cancelled Plaintiff's [registration]. The Trademark Trial and Appeal Board is located and acted in Virginia. That is the state where specific jurisdiction lies. Nothing concerning the adjudication in Virginia arose out of or related to defendant’s activities in Pennsylvania. Consequently, plaintiff cannot establish specific jurisdiction in this court.

And so the court dismissed the complaint.

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TTABlogger comment: Now what?

Text Copyright John L. Welch 2022.

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

So far this year, the Board has affirmed 112 of the 119 Section 2(d) refusals on appeal. How do you think these three recent appeals came out? [Results in first comment].

In re P&P Imports LLC, Serial No. 90110212 (August 2, 2022) [not precedential] (Opinion by Judge Frances S. Wolfson) [Section 2(d) refusal of the mark BATTLE STRIKE for “equipment sold as a unit for playing projectile shooting games" in view of the identical mark registered for "computer game programmes; downloadable computer game software via a global computer network and wireless devices; downloadable computer programs featuring positionable game piece figures for use in the field of computer games; electronic game software accessible via computers, wired and wireless electronic devices; interactive game software."]

In re Congo, LLC, Serial No. 88952001 (August 2, 2022) [not precedential] (Opinion by Judge Christopher Larkin). [Section 2(d) refusal of CONGO for "wholesale and retail store services featuring energy drinks, protein shakes, and dietary and nutr[i]tional supplement products; wholesale distributorships featuring energy drinks, protein shakes, and dietary and nutr[i]tional supplement products; Transportation logistics services, namely, arranging the transportation of dietary and nutritional products, energy drinks, protein shakes for others, expressly excluding any transportation services in the oil industry” in view of the registered mark CONGO APPLE PEAR for “Non-alcoholic beverages containing fruit juices; fruit flavored beverages; fruit-flavored drinks; fruit based beverages; fruit based beverages enhanced with antioxidants; fruit flavored beverages enhanced with antioxidants" [APPLE PEAR disclaimed]].

 
In re Mark Feldberg, Serial No. 90406741 (August 2, 2022) [not precedential] (Opinion by Judge Peter W. Cataldo) [Section 2(d) refusal of INFLATION DEFENDER for "Financial services, namely, hedge fund investment services and trading funds for others" [inflation disclaimed] in view of the registered mark INFLATION DEFENSE for "“Platform as a service (PAAS) featuring computer software platforms for financial services, namely, providing an online platform for accessing, reviewing, selecting and allocating funds to investments, exchange-traded funds, equity securities and/or fixed-income instruments."]

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

Text Copyright John L. Welch 2022.

TTAB Denies Cancellation Petition for Failure to Prove Acquired Distinctiveness of Petitioner's Common Law Marks

The Board denied a petition for cancellation of a registration for the mark THE NATURAL DOG FOOD MARKET & Design for "retail store services featuring a wide variety of consumer goods of others," finding that Petitioner failed to prove priority of use of its common law marks NATURAL DOG COMPANY, in standard character and design forms, for, inter alia, dog food and dog treats. Natural Dog Acquisition LLC v. Pet Go Round of Greensboro, Cancellation No. 92074028 (August 2, 2022) [not precedential] (Opinion by Judge Albert Zervas).

Respondent established a first use date of December 2013. Petitioner claimed a first used date in 2008. Although Petitioner owned three registrations for its marks, it had disclaimed the words NATURAL DOG COMPANY in one registrations, claimed acquired distinctiveness in another (with a disclaimer of DOG COMPANY), and accepted a Supplemental Registration in the third. Thus, it had conceded that NATURAL DOG COMPANY was not inherently distinctive.

Under the rule of Otto Roth [Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981)], a party opposing registration of a trademark due to a likelihood of confusion with his own unregistered term cannot prevail unless he shows that his term is distinctive of his goods, whether inherently or through the acquisition of secondary meaning or through “whatever other type of use may have developed a trade identity.” Otto Roth, 640 F.2d at 1320, 209 USPQ at 43. The Otto Roth rule is applicable to trademark registration cancellation proceedings as well.

Based on third-party uses and registrations and on dictionary definitions, the Board concluded that "DOG COMPANY, considered as a whole, is a highly descriptive term for a characteristic of Petitioner’s Common Law Goods." Petitioner sunk its own claim that its marks acquired distinctiveness in 2008 by testifying that its sales that year were $256; furthermore there were no advertising expenditures during 2008-2010. Its sales figures prior to 2014 (totaling $514,798) were "unimpressive." The Board concluded that "even if Petitioner’s use was substantially exclusive and continuous for the six years prior to 2014, due to the limited evidence and its lack of persuasiveness, we are not persuaded that Petitioner’s highly descriptive mark had acquired distinctiveness before 2014."

And so, Petitioner failed to prove priority, resulting in denial of its petition.

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TTABlogger comment: Is this a WHYP?

Text Copyright John L. Welch 2022.