Friday, April 19, 2024

TTAB Sustains 2(e)(1) Opposition, Finding WOOLWAX Merely Descriptive of Lubricants

The Board sustained this opposition to registration of the proposed mark WOOLWAX for "corrosion inhibitors in the nature of a coating; rust preventatives in the nature of a coating" and for  "all purpose lubricants," on the ground of mere descriptiveness under Section 2(e)(1). Applicant Kellsport sought registration under Section 2(f), thereby conceding that the mark is not inherently distinctive. To prove acquired distinctiveness, it relied on a declaration of at least five years of continuous and substantially exclusive use. Not good enough, said the Board. Eureka Chemical Company v. Kellsport Industries Inc., Opposition No. 91274117 (April 17, 2024) [not precedential] (Opinion by Judge Wendy B. Cohen).

The issues before the Board were two-fold: "whether Applicant’s proposed mark is so highly descriptive of the goods that Applicant is subject to a higher burden of proof to demonstrate acquired distinctiveness, and whether Applicant has met that burden."

Highly Descriptive?: Opposer Eureka Chemicals argued that wool wax, "the wax secreted by the sebaceous glands of sheep, is synonymous with lanolin and is highly descriptive of Applicant’s goods." In support, Eureka submitted third-party website excepts and online dictionary and encyclopedia definitions for woolwax and lanolin. One of the websites stated "Sheep’s wool is the source of one of the most useful natural lubricants, called woolwax or lanolin."

Applicantt Kellsport's specimen of use described various applications for its WOOLWAX product; it states that "Almost anything that has a moving metal part can be lubricated and protected with Woolwax®." Its website states: "WOOLWAX® contains more raw woolwax (lanolin) than any competitive product," and "'Woolwax® is made from lanolin. Also known as wool grease, wool fat, woolwax. Lanolin comes from sheep’s wool.'"

As all this evidence shows, wool wax is at least highly descriptive. Consumers encountering the proposed mark WOOLWAX will clearly understand that, in the context of Applicant’s goods, the mark refers to coatings and lubricants made of wool wax.

Acquired Distinctiveness: The Board observed that "[w]hen proposed marks are highly descriptive, a statement of use for at least five years, or even longer, is generally insufficient to show acquired distinctiveness." The Board then looked to the Converse factors in determining whether Kellsport had cleared that high Section 2(f) hurdle.

Kellsport claimed use of the mark since 2013, but its evidence was questionable. In any case, "that length of time is not persuasive given the highly descriptive nature of WOOLWAX." Kellsport's evidence regarding advertising expenses were unaccompanied by any sample advertisements, and there was no evidence as to how often the advertisements appeared or how many consumer were exposed thereto.

In sum, there is no evidence regarding the impact or extent of the advertising or marketing efforts. Without further information as to the nature, kind, and extent of its advertising and marketing expenditures or context, Applicant’s statements are of little probative value.

Kellsport's evidence regarding its sales was vague Its sales and advertising figures, without any context in the trade, "are not so impressive as to support a finding" that WOOLWAX has acquired distinctiveness.

"Given the highly descriptive nature of Applicant’s proposed mark, Applicant is obliged to adduce a great deal more evidence to meet its burden of proof." And so, the Board sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: WYHA?  

Text Copyright John L. Welch 2024.

Thursday, April 18, 2024

TTABlog Test: Are Cigarettes and Cigars Related to Alcoholic Beverages Under Section 2(d)?

Opposer Nemiroff IP opposed an application to register the mark NEMIROFF for cigars cigarettes, and various other tobacco-related products and accessories, claiming likelihood of confusion with its identical mark NEMIROFF for "alcoholic beverages, namely, brandy, vodka, liqueurs and distilled spirits featuring honey." Are the goods sufficiently related? How do you think this came out? Nemiroff Intellectual Property Establishment v. RAM Development Associates LLC, Opposition No. 91244891 (April 11, 2024) [not precedential] (Opinion by Judge Thomas W. Wellington).

Oddly, Opposer pleaded 35 registrations, 27 of which have been cancelled. It also argued that applicant's proposed mark violates the false connection provision of Section 2(a), but the Board refused to consider that unpleaded claim. Applicant submitted no evidence or testimony and did not file a brief, leaving opposer with the burden to prove its case.

The Board focused on one of the pleaded, live registrations, as noted above. Because the involved marks are identical, the first DuPont factor "weighs heavily in favor of a likelihood of confusion."

Turning to the second DuPont factor, the similarity of the goods, opposer argued that the involved goods are related because tobacco products and alcohol are "complementary" in that they are marketed together for "simultaneous consumption." It submitted website evidencing same, as well as four third-party registrations covering both types of products. Furthermore, the evidence showed that applicant’s tobacco products include alcohol-infused cigarettes and cigarillos.

The aforementioned evidence demonstrates a complementary relationship between the parties’ goods, namely, alcoholic beverages, including vodka and spirits and tobacco products, including cigarettes and cigars. These goods are marketed and touted as goods that can be “paired” with each other, and they may be found in the same trade channels, such as liquor stores and duty-free shops.

Under the fifth DuPont factor, opposer's evidence and testimony indicated that NEMIROFF brand vodka has been sold in this country for 20 years, has been advertised and promoted in a broad range of national media, and was ranked as the third best-selling vodka in the global duty free and travel retail market sector. The Board found the amount spent on advertising and marketing (designated "confidential") was "particularly impressive."

Based on the record, we find Opposer’s NEMIROFF mark is commercially strong and should be accorded a broader scope of protection than marks without any demonstrated commercial strength. Thus, the fifth DuPont factor weighs in Opposer’s favor.

Because the marks at issue are identical, opposer's mark is commercially strong mark, and the goods are related in a complementary manner and may be offered for sale in the same trade channels, the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: Are beer and pretzels complementary and related? vodka and tonic? vodka and orange juice?

Text Copyright John L. Welch 2024.

Wednesday, April 17, 2024

4th Circuit Upholds District Court and TTAB: Timberland Boot Design Lacks Acquired Distinctiveness

The U.S. Court of Appeals for the Fourth Circuit affirmed-in-part the decision of the U.S. District Court for the Eastern District of Virginia, concluding that the lower court did not err in finding that Timberland’s product configuration mark (shown immediately below) lacked acquired distinctiveness and was therefore unregistrable. The district court had also found the configuration to be de jure functional. [TTABlogged here], but the appellate court declined to reach the functionality issue. TBL Licensing v. Vidal, Appeal No. 23-1150 (4th Cir. April 15, 2024).

click on image for larger picture

Timberland's proposed mark is directed to eight specific features of its boot, including a "bulbous toe box," a "tube-shaped ankle collar," a "two-toned outsole," and an hourglass-shaped rear heel panel.

After taking discovery, the parties agreed to allow the district court to "resolve any factual disputes without the need for a trial," and both parties moved for summary judgment.

Citing Wal-Mart, the court observed that trademark law does not protect "product designs that lack distinctive meaning as a source identifier." That same principle applies to trademark registration.

On distinctiveness, the issue we face is not whether the public recognizes the entire product as Timberland’s perhaps iconic boot; rather, we must decide whether the district court reversibly erred in concluding that the subset of design features that TBL selectively sought to register lacks distinctiveness in the public’s view.

The Court observed that "[a] party seeking to establish secondary meaning in a product design bears a 'formidable burden of proof.'" The Fourth Circuit assesses secondary meaning through a number of factors: (1) advertising expenditures; (2) consumer studies linking the mark to a source; (3) record of sales success; (4) unsolicited media coverage of the product; (5) attempts to plagiarize the mark; and (6) the length and exclusivity of the mark’s use.

Timberland did not challenge the district court's rejection of its survey evidence. Timberland had used grayscale photographs of the boots, rather than the drawing from the trademark application, "improperly suggesting that the boot was a Timberland." Furthermore, the survey questions "nudged" the recipients to name only a single company associated with the boot.

The lower court found that Timberland's advertising did not call attention to the features that were the subject of its trademark application, but rather depicted the entire boot. Likewise, unsolicited media coverage included features that did not appear in the trademark application (for example, the tree logo burned into the boot). Timberland's impressive sales figures were not given much weight because there was no evidence as to why consumers bought the boot - i.e. no connection with the particular features of the proposed mark. And there was no evidence that competitors sell similar looking boots to trick consumers regarding the source of their products.

Moreover, Timberland's claim of acquired distinctiveness was undercut by its previous statements that only the wheat-yellow color of the boot identified that the boots came from Timberland.

The record was "replete with pictures of boots marketed and sold in the United States that appear 'substantially similar' to the design TBL sought to register, which suffices to prevent TBL from proving it exclusively used that design." The district court made no error in finding that Timberland "came up short in showing that its use of the design was substantially exclusive."

In conclusion, the district court did not clearly err in finding that TBL failed to carry its burden of proving that the boot design it sought to register has acquired a distinctive meaning. For that reason alone, TBL could not register the design described in its application, regardless of whether or not that design, as a whole, is functional. Accordingly, without deciding the functionality issue, the district court’s judgment is AFFIRMED.

Read comments and post your comment here.

TTABlogger comment: I refuse to say that Timberland got the boot.

Text Copyright John L. Welch 2024.

Tuesday, April 16, 2024

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

A TTAB judge once said to me that one can predict the outcome of a Section 2(d) appeal 95% of the time just by looking at the marks and the involved goods/services. Here are the three such appeals recently decided by the TTAB. How do you think these three came out? No hints this time. [Answers in first comment.]

In re Suarez Industries, Inc., Serial No. 97602779 (April 10, 2024) [not precedential] (Opinion by Judge Michael B. Adlin). [Section 2(d) refusal of EDENPURE for household cleaners in view of the registered mark EDEN'S PURE for body care products.]

In re Oracle's Apothecary, LLC, Serial No. 90399653 (April 11, 2024) [not precedential] (Opinion by Judge Mark Lebow). [Section 2(d) refusal to register ORACLE’S APOTHECARY for online retail store services featuring, inter alia, smudge sticks [APOTHECARY disclaimed] in view of the registered mark ORACLE HEALING & Design for Online retail store services featuring, inter alia, healing crystals [HEALING disclaimed].]

In re Deidra O. Babers and Leon Babers, Jr., Serial No. 90775501 (April 12, 2024) [not precedential] (Opinion by Judge Melanye K. Johnson). [Section 2(d) refusal to register the mark KINGDOM KUTS & Design for "Barber shop services; Barber services; Barbering services" [KUTS disclaimed] in view of the registered mark THE KINGDOM BARBERSHOP for “Barbershops; Hair cutting; Hair cutting services; Hair salon services, namely, hair cutting, styling, coloring, and hair extension services" [BARBERSHOP disclaimed].]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2024.

Monday, April 15, 2024

Precedential No. 5: TTAB Finds SAGEFORTH Confusable With SAGE CENTRAL for Medical Information Services, Dismisses Section 18 Counterclaim Without Prejudice

The Board sustained this Section 2(d) opposition to registration of the mark SAGEFORTH for "providing information in the field of psychological counseling, assessments, diagnosis, and treatment," in view of the registered mark SAGE CENTRAL for "providing health and medical information about postpartum depression and treatment." The only somewhat interesting part of the decision concerned the Board's dismissal (without prejudice) of applicant's counterclaim to restrict four additional pleaded registrations that the Board did not include in its Section 2(d) analysis. Sage Therapeutics, Inc. v. SageForth Psychological Services, LLC,, Opposition No. 91270181 (April 12, 2024) [precedential] (Opinion by Judge Mark A. Thurmon).

Likelihood of Confusion: The Board focused on opposer's mark SAGE CENTRAL, mechanically finding applicant's mark SAGEFORTH to be similar in appearance, sound, meaning, and commercial impression. "The common 'sage' element of the marks anchors them in a way to the same theme and creates a risk that consumers will mistakenly assume connections between the services provided under the marks."

As to the services, applicant's broad identification, with no limitations on the type of mental health issues covered, "include[s] providing information relating to any type of mental health condition that falls within the scope of psychological care." The involved services are therefore legally identical, and so the overlapping services are presumed to be offered through the same trade channels to the same classes of consumers.

Evidence of third-party registration and use of the word "sage" in connection with the provision of information regarding mental health led the Board to find that "'sage' is somewhat conceptually weak as a source-identifier within the mental health field." The Board concluded that SAGE CENTRAL "is less conceptually strong than an arbitrary mark. but suggestive marks are inherently distinctive and entitled to protection."

When we consider all the relevant DuPont factors, and assign appropriate weights to the factors, Opposer has proven its Section 2(d) claim by a preponderance of the evidence.

Counterclaim for Restriction: Applicant's counterclaim targeted four registrations for the mark SAGE THEREAPEUTICS in various forms, all for a "House mark for pharmaceutical preparations." Applicant sought to restrict those registrations to "a house mark for pharmaceutical preparations that treat post-partum depression."

In order to prevail on its Section 18 counterclaim for restriction, applicant would have to prove two elements: (1) the proposed amendment avoids a likelihood of confusion finding; and (2) the proposed amendment is supported by the evidence. Wellcome Found. Ltd. v. Merck & Co., 46 USPQ2d 1478, 1479 (TTAB 1998) (citing Eurostar v. “Euro-Star” Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1271 (TTAB 1994)); TBMP § 309.03(d).

In Eurostar, the Board held that "in a case involving likelihood of confusion, we should not exercise our authority under Section 18 to permit an action to restrict an application or registration where such a restriction is divorced from the question of likelihood of confusion.” Eurostar, 34 USPQ2d at 1270. Here, the Board concluded that the counterclaim "cannot avoid the likelihood of confusion finding we made to sustain the opposition, and we therefore see no purpose in addressing it now."

The Board deemed the counterclaim to be moot, since the four targeted registrations were not included in the Section 2(d) analysis. Dismissing the Section 18 counterclaim but without prejudice, the reasoned:

[I]t remains possible that Opposer here might assert the same four registrations in an infringement proceeding challenging Applicant’s use of its mark. In that scenario, we see no reason why Applicant should not retain the right to bring a counterclaim against any of the registrations asserted against it, which could include the four house mark registrations it challenged through its counterclaim in this proceeding.

The Board considered its ruling to be a "modest extension" of its Section 18 precedent:

We thus hold that a Section 18 counterclaim should be denied without prejudice if the Board sustains a Section 2(d) opposition based on registrations that are not challenged by the counterclaim. This modest extension of the Eurostar holdings is consistent with the policies and concerns behind that decision. Section 18 should not be used to force the Board into conducting likelihood of confusion analyses that cannot have a real impact on the registrability of a mark.

Read comments and post your comment here.

TTABlogger comment: Do you agree that the marks look alike? sound alike? have the same meaning? BTW, if the counterclaim is moot, is the Section 18 discussion mere dictum?

Text Copyright John L. Welch 2024.

Friday, April 12, 2024

CAFC Partially Remands "HERE COMES THE JUDGE" Appeal to TTAB for Production of AEO Materials

Well, here's a bit of "inside baseball." You may recall that, about a year ago, Michael P. Chisena was on the losing end of three oppositions brought by the Major League Baseball Players Association (MBPLA) and New York Yankee outfielder Aaron Judge. [TTABlogged here]. Chisena, now appearing pro se, appealed to the CAFC. He then filed a motion for access to Attorneys-Eyes-Only material that he was not allowed to see when he was represented by counsel before the Board. The court granted a limited remand so that the Board may consider the issue but limited the potential production to materials cited in the trial briefs at the TTAB and/or in the TTAB's decision. Michael P. Chisena v. Major League Baseball Players Association, Aaron Judge, Appeal No. 2023-2073 (Fed. Cir., Nov. 8, 2023).


In its remand order, the CAFC stated: "the court finds it appropriate to remand to allow the Board to consider whether the protective order should be modified to allow Mr. Chisena access to appellees’ AEO-designated material referenced in either the trial briefs or the Board’s final decision to ensure he has a fair opportunity to prosecute his case on appeal."

On April 10, 2024, the Board issued an order [here] requiring the parties to "meet and confer in good faith to (i) identify the AEO-designated materials to which the parties’ trial briefs or the Board’s final decision referred, and (ii) determine which of those AEO-designated materials, if any, can be redesignated as 'CONFIDENTIAL' by agreement of the parties."

"Prior to their meeting, the parties must review Section 412.01(a) of the TBMP and authorities discussed therein, regarding the proper designation of confidential matter. The parties are reminded that the Board’s standard protective order provides for two tiers of protected information:" CONFIDENTIAL (shielded from public access) and CONFIDENTIAL - ATTORNEYS EYES ONLY (shielded from public access, restricted from any access by the parties, and available for review by outside counsel for the parties and, subject to the provisions of paragraphs 4 and 5 (of the Board's Standard Protective Order), by independent experts or consultants for the parties).

Over the seventy days following the meet-and-confer, the parties must report seriatim to the Board with regard to their agreements and disagreements regarding what should be produced. Chisena may also challenge the AEO designations made by the opposers. The Board suggested that Chisena may want to enlist a lawyer to help him in this process.

Read comments and post your comment here.

TTABlogger comment: Suppose Chisena had not been represented by counsel before the TTAB. Would the Board have required the opposers to similarity produce AEO materials that had not been provided to Chisena?

Text Copyright John L. Welch 2024.

Thursday, April 11, 2024

"MEET THE BLOGGERS" Postponed Until 2025

Marty Schwimmer and yours truly, the TTABlogger, have decided to postpone our next MEET THE BLOGGERS get-together until next year. For some reason, I think it will be in Philadelphia. Does that ring a bell? In any event, we hope to see y'all in Atlanta next month.

MEET THE BLOGGERS - San Diego 2005
(Click on photo for larger picture)

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2024.

S.D. Ohio District Court, Despite Default, Stays Infringement Action in Favor of Pending TTAB Proceeding

The U.S. District Court for the Southern District of Ohio stayed this trademark infringement action even though Defendant Goatlift had defaulted by not filing an answer to the complaint. The court had serious doubts that Goatlift's mark posed a likelihood of confusion, and therefore whether Plaintiff 1661 was entitled to judgment. Instead of deciding that issue, the court chose to stay the lawsuit in favor of an opposition pending between the parties (Opposition No.91264548). 1661, Inc. d/b/a GOAT v. Goatlift, LLC, Case No. 2:24-cv-78 (S.D. Ohio, March 27, 2024).

The court noted that it has discretion to stay an action pending the resolution of an administrative proceeding. In making that ruling, it should consider if any prejudice would result from the stay, whether it would simplify the issues, and whether a stay is convenient at the particular stage of the litigation.

The court first found that a stay would not harm Plaintiff 1661:

Unlike here, the TTAB docket demonstrates that both parties have been actively involved in the opposition proceedings, with briefing on each application to be completed within approximately one month. Yet, Plaintiff waited until January of this year - over three years - to file its civil suit in this Court. Given that Plaintiff proceeded before the TTAB for three years before filing suit, Plaintiff will not be prejudiced by waiting for a conclusion of those proceedings.

Second, the stay will simplify the issues because issue preclusion may apply in the civil action pursuant to B&B Hardware. If the Board finds confusion likely, and if that decision is not appealed or is affirmed on appeal, Plaintiff 1661 will be entitled to judgment in this civil action. If a Board finding that confusion is unlikely is upheld, 1661 will not be entitled to judgment. "Either way, a final TTAB decision will be binding on this Court."

Third, a stay is convenient at this stage of the litigation. Since plaintiff's success on the merits is not "guaranteed," the court would need to perform a full likelihood of confusion analysis (a test Plaintiff did not even cite in its motion for default judgment).

Thus, although the civil action is at the default judgment stage, this is one of the rare instances where it is more convenient to stay the litigation in favor of the administrative proceeding.

All three factors favored a stay, and so the court directed the clerk of the court to stay the case.

Read comments and post your comment here.

TTABlogger comment: If Defendant Goatlift is actively contesting the opposition proceeding, why did it default in the civil action?

Text Copyright John L. Welch 2024.

Wednesday, April 10, 2024

Divided 9th Circuit Says District Court Has Power to Adjudicate TM Applications

Section 1119 of the Trademark Act gives a federal district court the power to "determine the right to registration, order cancelation of registrations, in whole or in part, restore canceled registrations, and otherwise rectify the register with respect to the registrations of any party to the action." Does it give a court power to invalidate pending trademark applications? A divided panel of the U.S. Court of Appeals said yes in BBK Tobacco & Foods LLC d/b/a HGI v. Central Coast Agriculture, Inc., Appeals Nos. 22-16190 and 16281 (9th Cir. April 2, 2024).

BBK, a seller of smoking-related products under the mark RAW, alleged that Central Coast infringed the RAW trademark by selling cannabis products under the mark RAW GARDEN. The district court granted BBK's summary judgment motion on its infringement claim, as well as on its counterclaim to invalidate four of Central Coast's pending trademark applications (on the ground of lack of bona fide intent).

The Ninth Circuit panel affirmed the invalidation of the four Central Coast pending applications, ruling that when an action involves infringement of a registered trademark, a district court also has jurisdiction to consider challenges to the trademark applications of party to the action. The dissenting judge opined that federal courts lack authority to cancel pending applications.

The panel majority concluded that the district court's power to "determine the right to registration" and to "rectify the register" includes the power to decide disputes over trademark applications. The Trademark Act describes an application as a request for registration, and therefore a challenge to an application "necessarily affects the applicant's right to a registration."

The plain language of Section 1119 thus grants a district court jurisdiction to consider challenges to the trademark applications of a party to the action if the action involves a registered trademark.

Permitting the district court to adjudicate trademark applications when a registration is involved "advances the interest in resolving all registration disputes in a single action." Section 1119 does not require a district court to address such claims when "the interest in efficiency or other considerations counsel against adjudicating a right to registration."

The dissenting judge contended that the Trademark Act's text, structure, and context confirm that district courts are not allowed "to interfere with the PTO's approval process and to prematurely cancel pending trademark registration applications. (emphasis in original).

The judge pointed out that "[a]s a historical matter, courts have seemingly always deferred to patent and trademark tribunals to review trademark applications in the first instance." Congress has created specific procedure and protections within the USPTO to adjudicate trademark applications. That system should not be interfered with lightly.

The phrase "determine the right to registration" in Section 1119 does not authorize cancelling registrations. It refers to the court's authority to determine "the ownership, scope, priority, and use of trademarks, which may entitle a party to registration of the mark." Section 1119 gives a court the power to decide "who has rights to a mark."

The term "otherwise" in the phrase "otherwise rectify the register," is a "big deal." The canon noscitur a sociis (a word is known by the company it keeps) instructs that all terms in Section 1119 be read similarly. Each of the other powers in Section 1119 refer to control over completed registrations. So should "right to registration" be read.

And so, the dissenting judge would not reach the issue of cancellation of Central Coast's four pending applications.

Read comments and post your comment here.

TTABlogger comment:The majority does not cite any court precedent for its position. There does not seem to be any other court of appeals decision on point. What do you think? Some lower courts have suggested that a district court has authority over applications for marks that are sufficiently related to the marks at issue in the infringement lawsuit.

Text Copyright John L. Welch 2024.

Tuesday, April 09, 2024

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

A TTAB judge once said to me that one can predict the outcome of a Section 2(d) appeal 95% of the time just by looking at the marks and the involved goods/services. Here are the three such appeals recently decided by the TTAB. How do you think these three came out? No hints this time. [Answers in first comment.]

In re Pace 49, Inc., Serial No. 90873297 (April 4, 2024) [not precedential] (Opinion by Judge Mark Lebow). [Section 2(d) refusal of PACE KLEENGROW for “Algicides, fungicides, bactericides, disinfectants, and virucides for greenhouse structures and equipment and public areas surfaces; Pesticide for ornamental crops in greenhouses and in greenhouse recirculated irrigation systems,” in view of the registered mark CLEANGROW for “Water treatment chemicals for use in greenhouse and hydroponic systems; chemical products for preventing scale; nutrients for hydroponic and soil medias; fertilizers, namely, hydroponic fertilizers, fertilizers for use in greenhouse and hydroponic systems, and multi-phase liquid-based fertilizers."]

In re Cuts Clothing, Inc., Serial No. 90880357 (April 4, 2024) [not precedential] (Opinion by Judge Thomas W. Wellington). [Section 2(d) refusal to register VERSAKNIT for "textile fabrics for the manufacture of clothing" in view of the registered marks VERSAFLEX for “Non-woven textile fabrics” and VERSATECH for "Woven fabric for use in the manufacture of apparel and other related uses.”]

In re Premium Economy Concepts LLC, Serial No. 90014041 (April 5, 2024) [not precedential] (Opinion by Judge Christopher C. Larkin). [Section 2(d) refusal to register DRT MOTORSPORTS for "bolt-on styling parts including bumpers, fenders, doors, grills, tire carriers, and hood scoops for off-road recreational vehicles" [MOTORSPORTS disclaimed], in view of the registered mark DRT STYLE for "automotive accessories, namely, fender flares."]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2024.

Monday, April 08, 2024

TTAB Orders Cancellation of TEEN EARTH Registration Due to Nonuse With Intent Not to Resume Use

Speaking of proving nonuse/abandonment, here's an instructive opinion right on point. The Board granted a petition for cancellation of a registration for the mark TEEN EARTH for "entertainment in the nature of beauty pageants" on the ground of abandonment. Petitioner Carousel, owner of the registered mark MISS EARTH for identical services, carried its burden to prove nonuse of the TEEN EARTH mark for a period of more than three years with an intent not to resume use. Carousel Productions, Inc. v. Michael R. Stafford, Cancellation No. 92076712 (April 4, 2024 [not precedential] (Opinion by Judge Michael B. Adlin).

The parties filed more than 100 pages of objections, responses to objections, and replies to responses, with regard to the trial testimony and evidence. The Board observed that "[w]hile the parties’ objections may provide a great example of overkill to those searching for one, they are otherwise unhelpful." Judge Adlin pointed out that:

Fortunately, there is no need for us to rule on the parties’ many repetitive, but not outcome determinative, evidentiary objections. We are able to, inter alia: identify hearsay and apply its exceptions; determine whether witnesses have provided a “proper foundation” or sufficiently authenticated documents; assess relevance; and, more generally, apply the Federal Rules of Evidence and Trademark Rules.

Petitioner Carousel is a Philippines corporation that operates the international MISS EARTH beauty pageant. Respondent Stafford is the assignee of the subject registration, which was obtained by former U.S. franchisees of Carousel.

The Board acknowledged the difficulty a party has in trying to prove a negative:

[W]e should point out that by their nature, "nonuse claims such as Petitioner’s in this case are typically difficult or impossible to prove by direct evidence. Indeed, in a country of hundreds of millions of people and substantial, constantly churning commerce, which comprises a large portion of North America, obtaining negative evidence from, for example, each potential pageant contestant, audience member or other potential witness that could encounter the pageant services in question would not be feasible. If doing so were required, it would be essentially impossible to ever prove nonuse abandonment.

Consequently, a prima facie case of nonuse may be established inferentially based on proven facts.

Petitioner Carousel searched for but could not find any evidence of use of TEEN EARTH by the original owners of the registration or by Respondent Stafford during the three years prior to the filing of the petition for petition for cancellation (on March 15, 2021). Those owners stated that in 2018 they decided to no longer “do the TEEN EARTH pageants” and to turn them over to Stafford. The Board saw this as "about as unequivocal a statement of discontinuance of use of a mark with an intention not to resume use as there could be."

Thus, the original owners "discontinued use of the mark with an intent not to resume use shortly after filing their TEEN EARTH application that issued as the involved Registration." As Carousel pointed out "there is no other reasonable explanation as to why he would file to register TEEN EARTH [in late 2017] except to try to reserve a right to the mark to which he was not entitled and despite having no intent to resume use of the mark himself."

The burden then shifted to Stafford to rebut Carousel's prima facie case. He submitted some evidence of use of the mark TEEN EARTH in 2019 but then disavowed that evidence in his trial brief. Stafford's purported use of the mark in 2021 did not cure the abandonment that had already occurred.

And so, the Board granted the petition for cancellation:
When we consider the record in its entirety, we find that it "is consistent with a subjective desire to reserve a right in the [TEEN EARTH] mark." Exec. Coach Builders, 123 USPQ2d at 1192. That is not sufficient to overcome Petitioner’s prima facie showing of abandonment. In fact, when Respondent acquired the mark and Registration by assignment in 2021, the mark had already been abandoned, and thus the transaction was nothing more than a “naked” assignment without accompanying goodwill. Auburn Farms, 51 USPQ2d at 1441.14

Read comments and post your comment here.

TTABlogger comment: Note that petitioner also took discovery in order to ferret out the facts.

Text Copyright John L. Welch 2024.