Precedential No. 7: TTAB Reverses Failure-to-Function Refusal of Lizzo's "100% THAT BITCH" for Clothing Items

Attempts to register common slogans, internet memes, and informational material regularly hit the failure-to-function wall at the USPTO. But the Office has the burden of proof, and here its evidence fell short with regard to two refusals of the mark 100% THAT BITCH for certain clothing items, including t-shirts and baseball hats. The Board concluded that the evidence failed to show that the proposed mark is a common expression in such widespread use that it fails to function as a mark for the identified goods. In re Lizzo LLC, 23 USPQ2d 139 (TTAB 2023) [precedential] (Opinion by Judge Peter W. Cataldo).

Applicant Lizzo LLC is the trademark holding company of the popular singer and performer known as Lizzo. The proposed mark was inspired by a lyric in Lizzo’s song, “Truth Hurts.” The examining attorney maintained that 100% THAT BITCH "is a commonplace expression widely used by a variety of sources to convey an ordinary, familiar, well-recognized sentiment."

In analyzing whether a proposed mark functions as a source identifier, the critical issue is consumer perception. The Board and its reviewing courts have held that slogans, phrases or terms that consumers perceive as “merely informational in nature . . . are not registrable.” A widely used message will be understood as conveying an ordinary concept or sentiment, rather than serving as a source indicator.

“Where the evidence suggests that the ordinary consumer would take the words at their ordinary meaning rather than read into them some special meaning distinguishing the goods and services from similar goods and services of others, then the words fail to function as a mark.” In re Ocean Tech., Inc., 2019 USPQ2d 450686, at *3 (TTAB 2019) (internal punctuation omitted) ["100% REAL CALLINECTES CRAB FROM NORTH AMERICA & Design"].

The examining attorney relied on an Urban Dictionary definition of 100% That Bitch ("Slang. A woman whom EVERYONE wants to be. Everyone is extremely jealous of her."); lyrics from Lizzo's song, which includes the line "I just took a DNA test, turns out I’m 100% that bitch;" internet articles in which Lizzo admitted that she did not coin the term, but rather adopted it from an internet meme; and screenshots from websites offering various shirts and hats featuring the wording 100% THAT BITCH. Some of the evidence was from applicant's own website, and some evidence made reference to Lizzo's song.

Applicant argued that 100% THAT BITCH "functions precisely the way a trademark is supposed to function, namely, it identifies Lizzo as the source of goods," and that others use the term to trade off of Lizzo’s fame, notoriety, and goodwill in order to sell unauthorized merchandise, often making express reference to Lizzo and her song. 

The Board acknowledged that "[p]rominent ornamental use of a proposed mark, as shown in the examples of record, is probative in determining whether a term or phrase would be perceived in the marketplace as a trademark or as a widely used message.” However, that was not the end of the story.

Significantly, much of this evidence references Lizzo, her music and song lyrics from the single “Truth Hurts.” The remainder of the evidence displays 100% THAT BITCH used in context in internet articles discussing Lizzo, her song “Truth Hurts,” and the origin of the song lyric comprising the mark at issue. This lessens the weight we otherwise may have accorded the ornamental nature of those uses in showing that the phrase fails to function as a trademark.

Applicant and the examining attorney agreed that 100% THAT BITCH conveys a feeling of female strength, empowerment and independence. "But more importantly, considering the entirety of the record, we find that most consumers would perceive 100% THAT BITCH used on the goods in the application as associated with Lizzo rather than as a commonplace expression."

Although Lizzo did not originate the phrase, and in fact gave a writing credit to the person who did create it, "lyrics from songs are more likely to be attributed to the artists who sing, rap or otherwise utter them, rather than the songwriters, who may be different individuals receiving varying degrees of writing credit." The evidence showed use of the phrase beginning in 2017, the year of her song. Thus the USPTO did not establish that the mark was "'widely used, over a long period of time and by a large number of merchandisers' before Lizzo popularized it." See D.C. One Wholesaler, Inc., 120 USPQ2d at 1716.

We acknowledge that to some degree consumers and potential consumers have been exposed to use of the proposed mark 100% THAT BITCH in a non-source-identifying (i.e., ornamental) manner on the same and similar goods to those of Applicant. We find, however, that that circumstance is outweighed by references in most of those uses to Lizzo and/or her music.

And so, the Board reversed the refusal to register.

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TTABlogger comment: Last night, Lizzo won a Grammy for Song of the Year for the song "About Damn Time." Will that phrase be registrable?

Text Copyright John L. Welch 2023.

Precedential No. 6: TTAB Requires Explanation of Cancellation Respondent's Deletion of Goods

After the commencement of this proceeding for cancellation of a registration for the mark DISO for various electronic devices, on the grounds of fraud and abandonment, the registration was subject to a USPTO audit regarding respondent's Section 8 Declaration of Use, which resulted in deletion of many of the identified goods, leaving only "earphones and headphones; portable media players, namely MP3 players." Observing that a registrant may not, by deleting goods from a registration, moot a proceeding to avoid a judgment as to the deleted goods, the Board allowed respondent twenty days to explain the reason for its deletions. Ruifei (Shenzhen) Smart Technology Co., Ltd. v. Shenzhen Chengyan Science and Technology Co., Ltd., Cancellation No. 92077931 (January 12, 2023) [precedential].

Trademark Rule 2.134(b) applies when a respondent permits its registration to be cancelled under Section 8 during the pendency of a cancellation proceeding. Under that rule, "an order may be issued allowing respondent a set time ... in which to show cause why such cancellation .... should not result in entry of a judgment against respondent ...." If respondent shows that the cancellation was the result of an inadvertence or a mistake, judgment will not be entered against it. If the reason was abandonment of the mark, and such abandonment was not made for purposes of avoiding the proceeding, judgment will be entered only on the ground of abandonment.

Here, only certain goods were deleted from the registration. In Orange Bang (116 USPQ2d 1102 (TTAB 2015)), the Board found that the deletion of the specific goods that were subject to the cancellation petition was an attempt to moot the proceeding, and so the Board granted the petitions to cancel with regard to the deleted goods. 

Respondent's deletion of goods resulted from a post-registration audit, but applied to only some of the goods subject to the cancellation petition.
 

Nonetheless, Petitioner’s claims of abandonment and fraud related to nonuse rely in part on nonuse of the mark on the now-deleted goods, and therefore the same concerns raised in Orange Bang and the policies underlying Trademark Rule 2.134(b) apply. Namely, by deleting certain goods subject to this cancellation, Respondent may not moot this proceeding and avoid judgment as to the deleted goods. As set forth in TBMP § 602.02(b), we require Respondent’s response regarding the deletion of goods as it relates to abandonment.

Therefore, the Board ordered respondent to show cause "why its deletion of certain goods in the subject registration should not be deemed the equivalent of a partial cancellation of the registration by request of Respondent without Petitioner’s consent, and should not therefore result in judgment against Respondent on Petitioner’s abandonment claim as to the deleted goods."

If respondent shows that it allowed partial cancellation of goods because the mark had been abandoned as to those goods, and not to avoid judgment here, judgment will be entered only and specifically on the ground of abandonment as to the deleted goods.

If respondent shows that the deletion was not made to avoid judgment and shows "good and sufficient cause" why judgment should not be entered against it on abandonment, respondent will be allowed time to choose whether to proceed with its abandonment claim and its fraud claim, including as to the deleted goods, or whether this proceeding as to the deleted goods should be dismissed without prejudice.

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TTABlogger comment: Got that? So you can't avoid judgment in a cancellation proceeding by deleting goods from the registration, unless it was an accident, which seems rather unlikely.

Text Copyright John L. Welch 2023.

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

The TTAB recently 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 Garden Artisans LLC, Serial No. 88705122 (January 24, 2023) [not precedential] (Opinion by Christopher Larkin). [Mere descriptiveness refusal of GARDEN ARTISANS for, inter alia, bird baths, metal arbors, ceramic figures, and works of art made of glass. The applicant argued that the mark, considered as a whole, creates a different commercial impression than the words considered on their own, resulting in a suggestive mark: "the GARDEN ARTISANS mark conjures the idea that a person's garden is like a canvas and the person is like an artist painting on that canvas,"and so “consumers of the goods sold under the mark are to purchase Applicant’s goods so that they can create their own canvas (i.e. garden)."]

In re Nicholas Shane Kouns, dba, Advanced Illness Management Services, Serial No. 88390117 (January 30, 2023) [not precedential] (Opinion by Judge Marc A. Bergsman) [Mere descriptiveness refusal of ADVANCED ILLNESS MANAGEMENT SERVICES for "Downloadable computer application software for mobile phones, namely, software for authorising [sic] access to data bases; Downloadable computer software for authorising [sic] access to data bases" [ADVANCED ILLNESS MANAGEMENT disclaimed]. The applicant maintained that the mark is not merely descriptive because applicant’s database access authorization software does not provide medical services such as advanced illness management services.]

In re Rows GmbH, Serial No. 79299493 (January 31, 2023) [not precedential] (Opinion by Judge Christen M. English). [Mere descriptiveness refusal of ROWS for, inter alia, downloadable software for creating and sharing spreadsheets. Applicant argued that ROWS does not describe a function of the software, which is to create and share spreadsheets and that "[r]egistration … would not (1) inhibit competition in the sale of particular goods or services; or (2) deny freedom of the public to use the word ROWS, creating the possibility of harassing infringement suits."]

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

Text Copyright John L. Welch 2022.

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

Here are three recent appeals from Section 2(d) refusals. As previously mentioned, a former TTAB judge once told me that one can predict the outcome of a Section 2(d) case 95% of the time just by looking at the marks and the goods/services. How do you think theses three cases came out? [Results in first comment].

In re Iona College, Serial Nos. 90069213 and 90069574 (January 24, 2023) [not precedential] (Opinion by Judge Cindy B. Greenbaum) [Section 2(d) refusal of GAEL NATION and GAELNATION for intercollegiate sports entertainment services, in view of the registered mark GAELS for "educational services, namely providing courses of instruction at the college and post graduate level; and organizing and conducting sports competitions and sports events."]

In re Gym Rats Only, Serial Nos. 90272589 and 90272606 (January 24, 2023) [not precedential] (Opinion by Judge Marc A. Bergsman). [Section 2(d) refusal of GYMRATS ONLY and GRO GYMRATS ONLY EST 2020 & Design for, inter alia, "providing a web site featuring information on exercise and fitness," in view of the registered mark GYMRATTS for, inter alia, "Educational services, namely, providing online instruction in the field of fitness and nutrition."]

In re USAPARK LLC, Serial No. 88808668 (January 25, 2023) [not precedential] (Opinion by Judge Christopher Larkin). [Section 2(d) refusal of the mark shown below, for parking lot services, in view of the registered mark USA PARKING (PARKING disclaimed)for "vehicle parking services."]

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TTABlog comment: How did you do? I see maybe a half-reversal!

Text Copyright John L. Welch 2023.

TTAB Posts February 2023 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled six (6) oral hearings for the month of February 2023. Five of the hearings will be held via video conference; the third one listed below will be in person at Arizona State University. Briefs and other papers for each case may be found at TTABVUE via the links provided.

February 7, 2023 - 1 PM: Eden Foods, Inc. v. The Ethnic Group LLC dba Edenic Blends, Opposition No. 91267822; [Section 2(d) opposition to EDENIC BLENDS & Design for "Vitamin and mineral supplements; none of the foregoing containing CBD" in view of the registered mark EDEN and an alleged family of EDEN-formative marks, for natural and organic food and beverage products, including dietary food supplements.]

February 9, 2023 - 1 PM: National Academy of Television Arts and Sciences and Academy of Television Arts and Sciences v. Kraferd, Opposition No. 91231183 [Opposition to registration of the mark EMMY for various health, disability, and life insurance services, on the grounds of lack of bona fide intent, and likelihood of confusion with and likely dilution of the registered marks EMMY and EMMYS for television awards and related programming and print materials.]

February 16, 2023 - 10:30 AM: Audemas Piquet Holding S.A. v. Haas Outdoors, Inc., Consolidated Oppositions Nos. 91242213 and 91242238 [Opposition to registration of MOSSY OAK and MOSSY OAK & Design for "Jewelry; Watches" on the grounds of likely confusion with and likely dilution of the registered mark ROYAL OAK, in standard character and stylized form, for watches and jewelry.]

February 23, 2023 - 4:10 PM (Live at Arizona State University): El Burro, Inc. v. Knuckle Sandwich LLC, Cancellation No. 92075933 [Opposition to registration of  EL BURRO BURRACHO, on the ground of likelihood of confusion with the registered marks EL BURRO and EL BURRO TACOS & BEER & Design, all for restaurant services.]

 

February 28, 2023 - 12 PM: ZeroDensity Yazilim Anonim Sirketi v. Apple Inc., Consolidated Oppositions Nos. 91266285 and 91266754 [Opposition to registration of REALITY COMPOSER [REALITY disclaimed] and REALITY CONVERTER for "Downloadable application development software" on the grounds of mere descriptiveness and likelihood of confusion with an alleged family of REALITY-formative registered marks for downloadable application development software.]

February 28, 2023 - 2 PM: Great Knives Manufacture Co., Ltd. v. Universal Sewing Supply, Inc., Cancellation No. 92073334 [Petition for cancellation of a registration of GOLDEN EAGLE for "arts and crafts notions, namely, nippers, and scissors" on the ground of fraud, nonownership, and likelihood of confusion with the identical common law mark for "thread-cutting nippers."]

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TTABlog comment: See anything interesting?

Text Copyright John L. Welch 2022.

Precedential No. 5: TTAB Finds ICE MONSTER & Design Confusable With MONSTER ENERGY for Restaurant Services

Frequent TTAB litigant Monster Energy prevailed in this opposition to registration of the mark ICE MONSTER & Design for "restaurants, coffee shops, ices parlors, snack bars with take-out for flavored and fruit ice products, and specifically excluding frozen yogurt" [ICE disclaimed], finding the mark likely to cause confusion with the registered mark MONSTER ENERGY for restaurant services. The Board found the MONSTER ENERGY mark to be famous for energy drinks but not for restaurant services. Nonetheless, the Board found the marks to be "very similar," the services legally identical in part, and the trade channels and classes of consumers presumably the same. Monster Energy Company v. Chun Hua Lo, 2023 USPQ2d 87 (TTAB 2023) [precedential] (Opinion by Judge Elizabeth A. Dunn).

The Board observed that Monster's broad recitation of "restaurant services" encompasses the applicant's restaurants with take-out for flavored and fruit ice products. Applicant argued that Monster "uses its cafeteria mostly to feed its employees," but the pointed out once again that the issue of likelihood of confusion must be decided on the basis of the recitation of services in the cited registration, regardless of actual marketplace usage. Because the services are legally identical in part, the Board must presume that they travel in the same trade channels to the same classes of consumers.

Turning to the strength of the mark MONSTER ENERGY, the Board found that MONSTER is the more dominant term because of its "hyberbolic quality." "MONSTER ENERGY as applied to restaurant services suggests either a monster of energy or an energetic monster ...." In addition, the first word in a mark "generally creates the strongest commercial impression.". [I think neither term is dominant - ed.]. In either case, the mark is arbitrary and conceptually strong.

With regard to commercial strength, the Board found the mark MONSTER ENERGY to be famous for energy drinks for purposes of likelihood of confusion. But Monster's evidence of fame related to energy drinks, not restaurant services. Its use for restaurant services "has not resulted in any notable commercial strength ...." Monster operates one restaurant, Monster Bistro Café, in its headquarters building, for employees and visitors to the building. The Board found no evidentiary basis for finding MONSTER ENERGY to be commercially strong for restaurant services. [Is the mark MONSTER ENERGY used for the restaurant? - ed.].

The Board also considered whether the strength of the MONSTER ENERGY mark for energy drinks "would impart strength to its mark when used for restaurant services." Monster argued that consumers would perceive energy drinks as closely related to the flavored and fruit ice products offered at applicant's restaurants. The Board acknowledged Monster's "limited" evidence that some takeout restaurants that offer ice products may also offer MONSTER ENERGY drinks, but it concluded that the fame of MONSTER ENERGY drinks does not extend to applicant's recited services.

Comparing the marks at issue, the Board found the "hyperbolic term" MONSTER to be dominant in both marks. Moreover, the term ICE is not only disclaimed, but as presented in the opposed mark may indicate the specialty of the restaurant, "while the term MONSTER alone indicates the mark." [Really? ed.]. The Board also accorded the literal element ICE MONSTER greater weight than the design element because "[t]he blue rectangle suggests an ice cube and so reinforces the term ICE." Monster's mark, on the other hand, is registered in standard character form, and could be employed in the same color and stylization as the applicant's mark.

Considering the marks as a whole, we find the common term MONSTER, especially when applied to legally identical restaurant services, creates the same commercial impression, and this impression does not alter with the addition of the terms ENERGY, ICE, and the background design or stylization of Applicant’s mark.

Applicant pointed to the ninth DuPont factor, which considers "the extent to which applicant has a right to exclude others from use of its mark on its goods," arguing that use of his mark in Taiwan since 1996 and its recent arrival in Hawaii, and his aggressive action in policing the mark in this country, demonstrates his right to exclude others. The Board, however, was unmoved.

DuPont factor eleven does not consider the strength or fame of the applicant’s mark in the same way the scope of protection is determined for the prior user under DuPont factor five. The factor may be useful to determine how marketplace realities and consumer perception defined by applicant’s common law use and consequent right to exclude other users affects the likelihood of confusion. While the factor may consider any successful trademark enforcement activity in which the applicant has engaged, the purpose is not to assess the scope of protection of the applicant’s mark (as in the fame analysis for the prior user’s mark), but to discern the marketplace reality and consumer perception of Applicant’s use. In this way, when relevant evidence of an applicant’s right to exclude is offered under DuPont factor eleven, it may impact the weight given to other DuPont factors in our ultimate weighing of the factors.

Here, the involved services are identical, and so prior decisions involving merely related goods are not applicable. Moreover, the testimony regarding applicant's use of his mark was withdrawn, leaving no probative evidence on the issue.

Finally, under the 13th DuPont factor, Monster maintained that the applicant adopted his mark in bad faith, but its only evidence was an admission that "he was familiar with Monster before he selected and began using Applicant's mark in the U.S." However, the CAFC and the Board have repeatedly held that "mere knowledge of a prior similar mark is insufficient to demonstrate bad faith adoption."

Balancing the relevant DuPont factors, the Board found confusion likely and it sustained the opposition.

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TTABlogger comment: I think the two marks are unitary and not confusingly similar.

Text Copyright John L. Welch 2023.

Precedential No. 4: Foreign Cancellation Petitioner Fails to Meet Lexmark Test for "Standing" But TTAB Allows Time to Amend Petition

The requirement that a plaintiff in a TTAB proceeding plead and prove its entitlement to a statutory cause of action (formerly called "standing") is a low threshhold, but a critical one. Petitioner Ahal Al-Sara Group sought cancellation of a registration for the mark shown below for various cleaning products, claiming abandonment and fraud, but it failed to identify an interest that falls within the "zone of interests of the Trademark Act" and thus failed to sufficiently plead its entitlement to a statutory cause of action. The Board, however, gave the petitioner twenty days within which to serve and file an amended petition for cancellation. Ahal Al-Sara Group for Trading v. American Flash, Inc., 2023 USPQ2d 79 (TTAB  2023) [precedential].

Petitioner alleged that Respondent American Flash relied on the subject registration in a cancellation proceeding in Saudi Arabia involving petitioner's FIGHTER FLASH mark. American Flash moved for dismissal for lack of "standing," pointing out that petitioner is a Saudi Arabian company that has no sales in the United States, does not compete with American Flash in this country, does not manufacture goods here, and has not filed a U.S. trademark application for its mark or any variation thereof.

The Board looked to Section 45 of the Trademark Act, which (according to the Supreme Court in Lexmark) includes an "unusual, and extraordinarily helpful detailed statement of the statute's purpose" and which identifies the interests protected through the regulation of "commerce within the control of Congress." Accordingly, a plaintiff must plead facts that, if proved, demonstrate a "real interest" that affects U.S. commerce, including interstate commerce and commerce with foreign nations. Here, the petition relied only on challenges to petitioner's foreign marks in foreign proceedings.

Petitioner has not pleaded a presence in the United States. Petitioner does not contend that its interests involve selling or manufacturing goods within the United States, and Petitioner has not filed any U.S. trademark applications to register FIGHTER FLASH or AMERICAN FLASH or any variations thereof. Nor does Petitioner plead an intent to enter the U.S. market in the future, or any other facts that if proved, would demonstrate an interest related to or affecting U.S. commerce falling within the scope of protection under the Trademark Act.

The Board therefore concluded that petitioner failed to plead its entitlement to a statutory cause of action. However, consistent with its general practice, the Board allowed petitioner twenty days to cure its defective pleading.

For the sake of completeness, the Board took a look at petitioner's two pleaded claims: fraud and abandonment. It found the abandonment claim to be adequately pled, but it dismissed the fraud claim. Petitioner alleged that American Flash committed fraud by stating a false first date of use. The Board pointed out, however, that the dates of use stated in an application are not material to the Office's decision to approve an application for publication. As long as the mark at issue was in use prior to the filing date, the erroneous statement of first use dates cannot be fraudulent. Here, petitioner itself alleged that respondent used its mark before the filing date of its underlying application. End of story.

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TTABlogger comment: So, will the petitioner now plead an intention to enter the U.S. market?

Text Copyright John L. Welch 2023.

Bob Cumbow: "The Most Important Trademark Fact You Probably Don’t Know"

A recent article by my friend, Bob Cumbow of Miller Nash in Seattle, Washington, caught my eye, and I'm delighted that he allowed me to re-publish it here. I often cringe at use of the word "trademark" as a verb, and Bob's article explains what the problem is.

The Most Important Trademark Fact You Probably Don’t Know

Client: “I’ve been in business for a couple of years now, and I want to trademark my company’s name.”

Trademark Lawyer: “What do you mean you want to ‘trademark’ it?”

Client: “I want to get a trademark on it.”

Lawyer: “Do you mean you want your company’s name to be a trademark?”

Client: “Yes, how do I get that?”

Lawyer: “Congratulations. You already did.”

This kind of conversation occurs almost every time a client or prospective client calls a trademark lawyer for the first time. Most businesspeople do not know that by choosing a business or product name and using it in connection with providing goods or services to customers, they become trademark owners and acquire enforceable trademark rights. They think that they must “get” a trademark by filing an application with the U.S. Patent and Trademark Office (USPTO), and if the trademark they want is “available” some nice person at the USPTO will “grant” it to them.

In the U.S. Supreme Court’s opinion in Matal v. Tam (2017), holding a portion of the nation’s statutory trademark law unconstitutional, Justice Alito wrote: “It is unlikely that more than a tiny fraction of the public has any idea what federal registration of a trademark means.” It certainly is not the way you “get” a trademark. To do that, you come up with a trademark—or brand or business name or product name or logo, call it what you will—put it on your product or use it to promote your service, and provide that product or service to your customers.

It's a fundamental principle of U.S. trademark law that trademark ownership arises from using a chosen mark in offering and providing goods or services to the public. It’s critically important for people in business to know and understand that they are already trademark owners. Yet this process is widely misunderstood by business people, by the news media who report on trademark disputes and invariably get the law wrong, and even by many lawyers who don’t practice trademark law.

Of course, it doesn’t help clear up this widespread misunderstanding when the USPTO itself includes on its website a section heading and link saying “Apply for a trademark”; or when the Trademark Trial & Appeal Board (which fastidiously insists on being call the “T-T-A-B” not the “T-TAB”) turns around and calls trademarks whose owners are seeking registration “applied-for marks.” Even the highest authorities are not immune from lazy uses of language that perpetuate and reinforce the public’s misunderstanding of what trademarks are and the difference between owning a trademark and registering it.

Client: “But wait—if I already have a trademark why do I need registration?”

Lawyer: “Actually, you don’t necessarily need registration. It’s not legally required. However, there are significant advantages to federal trademark registration.”

Among the benefits of federal registration are:

• The presumption that your trademark is valid puts you in the best position to protect and enforce your trademark rights against users of the same or similar marks for similar goods or services. 
• You are entitled to use the “®” registered-trademark notice, discouraging would-be adopters of similar marks. 
• Your mark appears in the records of the USPTO and will be found by others who are searching to determine if they can adopt the same or similar mark themselves. 
• The USPTO will refuse registration to any later applicant seeking to register a mark too much like yours.
• Registration entitles you to list your trademark with the U.S. Customs & Border Patrol, protecting you against the import and export of counterfeit and infringing goods. 
• Registration enables you to enroll your trademark in the Amazon Brand Registry and to better protect and enforce your trademark against online imitators.

The USPTO’s website is designed to enable trademark owners to file their own applications for trademark registration. However, it’s not a good idea to do so without first consulting a trademark attorney. The registration process is filled with traps for the unwary, such as properly identifying the owner of the mark, clearly describing the goods or services with which the mark is used, placing your goods and services in the proper class (out of 45 internationally recognized classifications), and paying the proper filing fee. In fact, businesses that do not have their headquarters or principal place of business in the United States are required to hire a U.S. attorney to apply for registration of their marks.

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Text Copyright Robert C. Cumbow 2023.

TTAB Sustains PRINCESS ROYAL Opposition as a Sanction for Non-Compliance with Discovery Order

Fed up with pro se Applicant Pickin' Cotton's antics, the Board granted a motion for entry of judgment as a sanction for the applicant's "deliberate failure to comply with the Board's discovery order and to make the requisite effort to satisfy Opposer's discovery needs." The Board concluded that "any sanction less than judgment is likely to be ineffective and this futile." LT Overseas North America, Inc. v. Pickin’ Cotton Communications, LLC, Opposition No. 91267259 (January 23, 2023) [not precedential].

Opposer LT Overseas relied on its registered ROYAL marks for various food products, in opposing registration of the mark PRINCESS ROYAL for seasonings and spices, on the ground of likelihood of confusion. Applicant Pickin' Cotton did not respond to the LT's initial discovery demands, and so LT filed a motion to compel. In response to the motion, Pickin' Cotton provided responses, of sorts.

The Board exercised its discretion to review those responses and found them to be "deficient on their face." They consisted of "boilerplate" responses and objections, and failed to state whether Pickin' Cotton was withholding any documents. The Board ordered Pickin' Cotton to serve supplemental responses, warning that failure to comply could result in appropriate sanctions.

When it received the supplemental responses, LT moved for the sanction of judgment on the basis that the supplemental discovery responses contained the same type of general boilerplate objections as the original responses, claimed that some documents were "privileged" even though the Board had overruled such an objection, renewed an already-overruled objection on the ground of "proportionality," and impermissibly stated that Pickin' Cotton would produce "nonprivileged documents ... to the extent that such documents exists [sic], are within Applicant's possession, custody or control, and are located after a reasonable search." The supplemental document production consisted of a one-page document of questionable authenticity.

Trademark Rule 2.120(h)(1) states that when a party fails to comply with a discovery order, the Board may issue any appropriate order, including those provided in FRCP 37(b)(2). The Board noted that entry of judgment is a "harsh sanction," but it found Pickin' Cotton's responses to be "incomplete, truncated and non-responsive." In fact, "the supplemental responses are remarkably ambiguous to the point of providing no responsive information."

Pickin' Cotton's supplemental responses to LT's 44 production requests included another set of boilerplate objections along with the evasive and unacceptable languages set out above. The Board found the responses to be "lacking in substance" and "wholly inadequate." "More to the point, the responses reflect a distinct and obvious disregard for the Board's discovery order."

The one-page document was insufficient on its face. It is "exceedingly brief" and "merely lists enumerated phrases that lack detail and substantive context, and is not associated or correlated with any specific document requests." It is "so lacking in content and so ambiguous, evasive and cryptic as to be non-responsive." Although Pickin' Cotton repeatedly referred to its "business plan," no such document was provided.

The Board noted that this is an uncomplicated Section 2(d) opposition. Nothing in the record indicated that "the seasonings and spices business is of such a nature that would preclude timely and fully responding to straightforward, typical inquiries regarding matters such as creation of the applied-for mark, the goods, channels of trade and distribution, and marketing."

And so, the Board entered judgment against applicant, sustaining the opposition.

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TTABlogger comment: Good to see.

Text Copyright John L. Welch 2023.

E.D. Texas Denies Motion to Stay Infringement Action in Favor of TTAB Proceeding

O&M Halyard brought a civil action against Sri Trang US, Inc., claiming trademark infringement and dilution of two registered trademarks for medical gloves, one mark consisting of the color purple and the other the color gray. Sri Trang then filed at the TTAB petitions for cancellation of the two registrations. The Board suspended the cancellation proceeding pending the outcome of the litigation. Sri Trang then moved to stay the litigation in favor of the TTAB proceeding, but the court denied the motion because the defendants "have not shown that any potential efficiencies to be gained by awaiting the TTAB decision warrant a stay." O&M Halyard, Inc. v. Sri Trang USA, Inc, et al. , Civil No. 4:22-CV-622-SDJ (E.D. Texas January 18, 2023).

The court took guidance from the Second Circuits decision in Goya Foods, Inc. v. Tropicana Products, Inc., 846 F.2d 848 (2d Cir. 1988) regarding the doctrine of "primary jurisdiction" on behalf of an administrative agency. That doctrine is "relatively narrow" in scope, applying only in lawsuits involving an issue committed by Congress in the first instance to an agency's determination - e.g., the validity of a commercial rate or practice - and involving technical questions uniquely within the agency's expertise. 

The Goya court concluded that "the basic framework of federal registration differs from other statutory regimes that implicate primary jurisdiction because the Lanham Act allows a litigant disappointed with a TTAB decision to file an action in federal district court that is 'intended to be a trial de novo.'" Furthermore, courts have a long-standing familiarity in resolving suites under both the Lanham Act and the common law of trademark infringement and unfair competition.

The Second Circuit developed the following guidance regarding whether a court should stay an action pending the outcome of a TTAB "registration action."

On the one hand, if the district court action "involves only the issue of whether a mark is entitled to registration," the doctrine of primary jurisdiction “might well be applicable” because the benefits of awaiting the TTAB's decision would rarely be outweighed by the need for a prompt adjudication. *** On the other hand, if the district court action concerns infringement, "the interest in prompt adjudication far outweighs the value of having the views of the [USPTO]."

Here, the civil action "involves issues well beyond trademark registration" because it includes questions of trademark infringement and dilution. The district court therefore concluded that "the interest in prompt adjudication of this case substantially outweighs the value of having the view of the TTAB on the question of registration of O&M Halyard's marks. The doctrine of primary jurisdiction is therefore inapplicable and Sri Trang's motion must fail."

The court also denied the motion because a stay "would unnecessarily delay the resolution of this case without providing any meaningful narrowing of the issues before the Court."

Because the TTAB lacks authority to resolve all the issues raised in this case, the parties will wind up back in this Court regardless of the TTAB outcome. Under similar circumstances, courts routinely reject requests to stay proceedings pending the outcome of parallel TTAB actions.

Finally, Sri Trang neither asserted nor demonstrated any hardship or inequity if a stay is not granted. On the other hand, there is a "fair possibility" that a stay would harm O&M Halyard by preventing a prompt resolution of its claims.

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Text Copyright John L. Welch 2023.