Precedential No. 28: TTABlog Test - Is WEALE Primarily Merely a Surname for Body Care Products?

The USPTO refused to register the proposed mark WEALE for various body care products, deeming the mark to be primarily merely a surname under Section 2(e)(4). Database and website evidence identified fewer than 150 individuals with the surname WEALE, leading the Board to find WEALE to be a "rare surname." No one associated with the applicant has that surname. There was no probative evidence that the word has a non-surname meaning. The Board found that WEALE has the structure and pronunciation of a surname. So, how did this appeal come out? In re Weale Care, LLC, Serial No. 90756950 (September 26, 2023) [precedential] (Opinion by Judge Wendy B. Cohen).

In assessing a Section 2(d) refusal, the Board considers the so-called Benthin factors (In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995)): 

• Whether the surname is rare;
• Whether anyone connected with the applicant has that surname;
• Whether the term has any recognized meaning other than as a surname e.g., an “ordinary language” meaning; and 
• Whether the term has the structure and pronunciation of a surname.

Examining Attorney Christina Sobral relied on data from the LexisNexis surname database and on several webpages referencing individuals with the surname WEALE. The Board, after weeding out duplicates and individuals outside this country, found fewer than 150 relevant references and it therefore dubbed WEALE a rare surname. 

While the fact that WEALE appears to be a rare surname weighs somewhat in Applicant’s favor, it does not end the inquiry. The statutory provision makes no distinction between rare and commonplace surnames.

The USPTO did not dispute the applicant's assertion that no one associated with applicant has the surname WEALE.

As to non-surname meanings, the applicant pointed to as dictionary entry stating that “weal” is the phonetic equivalent of “weale” and has a recognized meaning of a “happy or prosperous state that is aligned with [Applicant’s] branding.” The Board was unimpressed. "There is no evidence of record that indicates these meanings are readily recognized by the average consumer. It is not enough for Applicant to uncover a dictionary reference for the term in question."

Finally, Applicant argued that WEALE does not have the "structure and sound of a surname," but it offered no evidence on this point. [What would the evidence look like? - ed.]. The Examining Attorney likewise offered no evidence or argument on this point.

Nonetheless, we find that WEALE has the structure and pronunciation of a surname as it “would not be perceived as an initialism or acronym . . . and does not have the appearance of having been coined by combining a root element that has a readily understood meaning in its own right with either a prefix or a suffix.” In re Gregory, 70 USPQ2d 1792, 1796 (TTAB 2004). In short, WEALE sounds like a surname with the structure or format of a surname.

Seemingly placing the burden of proof on the applicant, the Board concluded:

While WEALE may be rarely encountered as a surname it possesses the structure and pronunciation of one, and there is insufficient evidence on this record of a recognized non-surname significance of the term. Thus, we cannot find, based on this record, that its rarity removes WEALE from being primarily merely a surname.

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TTABlogger comment: A strange decision, yet precedential. Shouldn't the applicant be given the benefit of the doubt, given the lack of evidence provided by the Office?

Text Copyright John L. Welch 2023.

TTABlog Test: Are Mugs, Pastries, and Coffee Shops Related to Tote Bags and Shirts for Section 2(d) Purposes?

The USPTO refused to register the mark FRANKIE ROSE for "Cups and mugs" in International Class 21, "Pastries; Sandwiches; Coffee beans; Ground coffee beans," in International Class 30, "Online retail store services featuring coffee featuring in-store order pickup, in International Class 35; and"Catering services; Coffee shops, in International Class 43, finding confusion likely with the identical mark registered for "tote bags" in International Class 18 and "shirts" in International Class 25. Applicant argued that its goods and services “are all related to food and beverage items” while Registrant’s goods are “ancillary goods to [Registrant’s] cosmetics products.” How do you think this came out? In re AVR Realty Company, LLC, Serial No. 90699970 (September 25, 2023) [not precedential] (Opinion by Judge Robert H. Coggins).

Applicant feebly argued that the connotation and commercial impression of the marks differ because when the ROSE portion of its mark is "considered in the context of coffee, [it] suggests that someone has ‘risen’ after having their coffee, i.e., from the effects of caffeine." However, there was no evidence or reason why the mark FRANKIE ROSE would have different meanings for coffee, tote bags, and shirts. Moreover, the Board noted, applicant's mark would have no such meaning when used with its non-coffee goods and services, or with decaffeinated coffee.

The Board found that the identity of the marks "weighed heavily" in favor of affirmance of the refusal.

To show the relatedness of the involved goods and services, Examining Attorney Uloma Ukaoma relied on third-party webpages - including those of Pete's coffee, Starbucks, and Dunkin' Donuts - showing use of the same mark for tote bags, mugs, coffee beans, shirts, etc.  

As to applicant's arguments about its food items versus registrant's allegedly ancillary goods for cosmetics, the Board observed that it is "not concerned with 'extrinsic evidence regarding Applicant and Registrant themselves'" and "it is not dispositive that Applicant itself might not sell shirts or tote bags, or that Registrant itself might not offer any of Applicant’s goods or services." 

Rather, . . . the evidence need only establish that the goods and services [as identified] are related in some manner, or the conditions surrounding their marketing are such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the services come from a common source.

The evidence showed that the involved goods and services "may be encountered by the same classes of consumers under the same marks in at least two common trade channels – the websites and physical locations of the coffee shops." Moreover, there were no restrictions as to channels of trade in the application or cited registration.

As to purchaser sophistication, applicant again barked up the wrong tree, attempting to narrow registrant's identified goods to the cosmetics field and insisting that cosmetics are "highly relevant to the sophistication question." Moreover, the application and registration have no limitation on price points for the goods and services at issue, "we must treat the goods as including inexpensive shirts, tote bags, mugs, coffee beans, and pasties [sic], and the services as including inexpensive coffee beverages, and therefore presume that purchasers for these goods and services include ordinary consumers who may buy inexpensive items on impulse."

The Board concluded that confusion is likely as to all of applicant's goods, and so it affirmed the refusal.

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TTABlogger comment: So, coffee is related to everything sold in Starbucks? How do you like them apples?

Text Copyright John L. Welch 2023.

Rejecting Urban Dictionary Definition, TTAB Affirms 2(e)(4) Surname Refusal of LAFOND for Jellies and Jams

Affirming a Section 2(e)(4) refusal, the Board found the proposed mark LAFOND for 'Fruit conserves; Fruit preserves; Fruit spreads; Jellies, jams; Nut butters" and for "Tea; Fruit sauces" to be primarily merely a surname. The Board agreed with Examining Attorney Claudia A. Kopenski that LAFOND is not an uncommon surname, that it has no other recognized meaning, and that the term has the look and sound of a surname. In re St. Dalfour International Incorporated, Serial No. 90527587 (September 21, 2013) [Opinion by Judge Thomas L. Casagrande].

The LexisNexis database of phone numbers included 8000 entries for the surname LAFOND. The 2010 U.S. Census data included 4112 occurrences. And so the Board concluded that "the surname LAFOND is not uncommon in the sense implicated by the Section 2(e)(4) inquiry."

Applicant argued that "[t]here are no famous, or infamous, people with the name of Lafond," but the Board pointed out that "celebrity status," "national notoriety," or "significant media attention" are not required when, as here, there are thousands of people in the Unites States with that surname.

Although if someone associated with applicant had the surname LAFOND, that would tend to show that the public is familiar with the name, the fact that no one associated with applicant has the surname LAFOND is a neutral factor.

Applicant acknowledged that there was no dictionary definition of LAFOND in the record, but it pointed to an urbandictionary.com entry defining “Lafond” as “the sweetest most loving person you will ever meet.” Although the examining attorney did not refute this evidence, the Board "tend[s] to be cautious, due to its nature, about giving it too much weight in the absence of evidence corroborating the definition at issue.

[T]he problem is that there is no corroborating evidence that gives us even a minimal degree of confidence that any significant portion of the consuming public has been exposed to or recognizes this definition. In fact, the only actual dictionaries in the record (Merriam-Webster Dictionary and Collins Dictionary) contained no definition of “lafond.” We therefore decline to give any weight to the Urban Dictionary definition cited by Applicant.

Applicant pointed to "Lafond" as a place name in Alberta, Canada, but there was no evidence that "the place name significance to the U.S. consumer is the same or greater than the surname significance, particularly in light of the fact that places are commonly named after people."

Applicant also contended that "the word ‘Lafond’ translates from French to English as ‘the bottom.'" However, applicant's proffered Google translation was for the two-word term "la fond," not "lafond." The Board noted the Collins dictionaries, which had no entry for "lafond." [Why would it matter that French speakers might translate the term when the vast majority of Americans do not speak French and would not translate the term anyway? -ed.-].

Finally, the Board found that LAFOND has the look an pronunciation of a surname, comparing it to 2,025 occurrences of the surname LAFON and 1,079 occurrences of the surname LAFONT in the LexisNexis database. [What about the 8000 entries for LAFOND? -ed.].

And so, the Board affirmed the refusal.

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TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2023.

A NEW KIND OF SODA Fails to Function as a Trademark for Beverages, Says TTAB

The Board upheld a refusal to register the proposed mark A NEW KIND OF SODA on the Supplemental Register, for "Non-alcoholic sparkling fruit juice beverages; non-alcoholic water-based beverages," finding that the phrase fails to function as a trademark under Sections 1, 2 and 45 of the Trademark Act. Evidence of third-party use of the phrase "a new kind of soda," mixed in with applicant's own usage, took the fizz out of applicant's arguments. In re Olipop Inc., Serial No. 90381174 (September 21, 2023) [not precedential] (Opinion by Judge Thomas V. Shaw).

Based on the Internet evidence submitted by Examining Attorney Edward Fennessy, the Board found that "the phrase 'a new kind of soda' is commonly used in the beverage industry to identify sodas that differ from previous types or 'generations' of soda products. For example, Wave, Maine Root, Shrub, Booch Pop, No-Cal, GINSENG UP, Holy Cross, and even Dr Pepper [in 1904] have been described as 'a new kind of soda.'"

Because consumers are accustomed to seeing “a new kind of soda” commonly used in beverage advertising—much less the phrase “a new kind of ___” used in advertising in general—they would not perceive it as a mark identifying the source of Applicant’s goods but rather as merely conveying an informational message. Eagle Crest, 96 USPQ2d at 1229.

Applicant argued that “none of the goods in these references are even remotely similar to Applicant’s healthy tonic goods, and none use A NEW KIND OF SODA, which provides a wholly different commercial impression in Applicant’s specific context.” According to Applicant, it "does not use A NEW KIND OF SODA to mean ‘recent,’ but rather ‘unique,’ comparing its healthy qualities to the traditionally unhealthy qualities of soda, which is apparent given Applicant’s marketplace context." The Board was unimpressed: "consumers likely will view OLIPOP soda as one soda in a long line of 'new' sodas that have evolved to suit changing consumer tastes."

Applicant introduced copies of fifteen third-party registrations for marks comprised of the phrase “A NEW KIND OF ___, but only two of the registrations, A NEW KIND OF DEODORANT and A NEW KIND OF DEALERSHIP, have "the same simple declaratory structure" as Applicant’s mark. "These two registrations do not outweigh the Examining Attorney’s evidence." Moreover, as we practitioners have been repeatedly informed, prior actions by examining attorneys in other cases "have little evidentiary value and are not binding upon the USPTO or the Board."

And so, the Board affirmed the refusal.

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TTABlogger comment: What about A NEWER KIND OF SODA?

Text Copyright John L. Welch 2023.

TTABlog Test: Is "DEATH FROM ABOVE" Confusable With "HUNT FROM ABOVE" for Hunting Stands?

The USPTO refused to register the mark DEATH FROM ABOVE for hunting stands, finding confusion likely with the registered mark HUNT FROM ABOVE for "hunting stands for use in trees; seats especially adapted for hunting stands for use in trees." The goods overlap, but what about the marks? Applicant argued that consumers are more likely to focus on the distinctions between the words DEATH and HUNT because they appear as the first portions of the two marks. How do you think this came out? In re Heartland Climbers, LLC, Serial No. 90885309 (September 15, 2023) [not precedential] (Opinion by Judge Angela Lykos).

The overlap in goods and the presumption that those overlapping goods travel in the same trade channels to the same classes of consumer really put applicant under the gun, so to speak.

As to the marks, the Board disagreed that consumers are likely to focus on the words “Death” and “Hunt.” "There is no mechanical test to select the dominant element of a mark."

DEATH FROM ABOVE and HUNT FROM ABOVE are both unitary marks because the words “Death” and “Hunt” do not create a commercial impression separate and apart from the marks as a whole; that is, “Death” and “Hunt” are so integrated into the marks that they cannot be regarded as separable.

Furthermore, the marks convey the same idea, meaning or commercial impression: consumers are likely to recognize both phrases as referring to goods that facilitate hunting from an elevated vantage point.

Given the similarities between the marks and identity of the goods, consumers familiar with the mark HUNT FROM ABOVE are likely to perceive Applicant’s mark DEATH FROM ABOVE as a variant mark denoting a product line extension into a specific type of hunting stand.

And so the Board affirmed the refusal to register.

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TTABlogger comment: That was easy, wasn't it? Like shooting fish in a barrel (from above). The Board's argument about applicant's mark being seen as a "variation" of registrant's product line seems to me to be an end-run around the strict requirements for proving a family of marks.

Text Copyright John L. Welch 2023.

Precedential No. 27: TTAB Renders Split Decision in Appeal From Section 2(d) Refusal of IMPACT for Various Healthcare Services

In a dubiously precedential decision, the Board affirmed-in-part and reversed-in-part a refusal to register the mark IMPACT for various healthcare-related services in Classes 35, 44, and 45. The USPTO had refused registration in view of the mark IMPACT in the Stylized form shown below (without color), registered for "Consulting services in the field of patient relationship management for healthcare workers” in Class 35 and “Training in patient-centered, evidence-based community health worker-centered healthcare” in Class 41. In re OSF Healthcare System, 2023 USPQ2d 1089 (TTAB 2023) [precedential] (Opinion by Judge Christopher C. Larkin).

The Board first set forth a few standard ground rules for its decision. It observed that "[b]ecause each class in Applicant’s multi-class application is, in effect, a separate application, we consider each class separately, and determine whether [the Examining Attorney] has shown a likelihood of confusion with respect to each." It also noted that "'it is sufficient for finding a likelihood of confusion if relatedness is established for any [service] encompassed by the identification of [services] within a particular class in the application.'"

Applicant's Class 35 Services: Applicant's services include business consulting services that are encompassed by registrant's "consulting services in the field of patient relationship management." Finding the services to be legally identical, and presuming that they travel in the same trade channels to the same classes of purchasers, the Board found confusion likely and it affirmed the refusal.

Applicant's Class 44 Services: These services include "Healthcare and medical coordination with individuals and organizations related to improving community healthcare services." There was no match in the cited registration but the Examining Attorney contended that, based on third-party registrations and websites, these services are related to the services of "Training in patient-centered, evidence-based community health worker-centered healthcare" in the cited registration.

The Board found that only one of the websites appeared to offer both services, and none of the third-party registrations were on point. Thus the evidence was insufficient to support the Section 2(d) refusal, and so the Board reversed as to applicant's Class 44 services.

Applicant's Class 45 Services: Again, the Examining Attorney relied on third-party websites and registrations in maintaining that Registrant's training services are related to applicant's "Charitable services, namely, providing case management services in the nature of coordinating preventative healthcare and wellness program services for vulnerable populations to improve access to healthcare, quality of care, and health outcomes related thereto." For completeness, the Board also considered registrant's consulting services.

The Board found that at most two of the websites and none of the registrations supported the Section 2(d) refusal. Although the Board recognized that, in cases involving identical marks, "the services need not be shown to be closely related for there to be a likelihood of confusion, it found this evidence insufficient to establish relatedness. And so the Board reversed this refusal.

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TTABlogger comment: This decision is so completely fact-bound that, in my opinion, it is useless as citable precedent and does not merit the precedential label. Honk if you agree.

Text Copyright John L. Welch 2023.

Applying Contractual Estoppel, TTAB Grants Motion for Partial Summary Judgment in BYLT Oppositions

In one of two oppositions consolidated by the Board, opposer sought to block registration of the marks BYLT BASICS and BYLT PREMIUM BASICS, each for “hoodies, jackets, pants, shirts, briefs as underwear, jogging pants, men’s underwear, short-sleeve shirts, underwear; all of the foregoing excluding motorcycle related clothing and apparel.” Opposer claimed likely confusion with its registered mark B.Y.L.T. for various clothing items and sports drinks. Applicant successfully moved for partial summary judgment as to this opposition on the ground of contractual estoppel based on a litigation settlement agreement. BYLT Performance LLC v. BYLT, LLC, Oppositions Nos. 91274047 and 91276608 (September 14, 2023) [not precedential].

While opposing the motion for partial summary judgment, opposer also asked for time to take discovery, under FRCP 56(d). However, it's motion was untimely. Moreover, when such a request accompanies an opposition to a summary judgment motion, the Board will deem the request as moot.

As to the subject of the summary judgment motion, applicant maintained that that the parties entered into an agreement that prohibits Opposer from opposing the two trademark applications identified above.

Specifically, Applicant explains by way of background that to resolve a prior trademark infringement action between the parties in the United States District Court for the Central District of California, Case No. 8:18-cv-02194 (JVS-KES), the parties entered into a Settlement Agreement, which explicitly states that so long as Applicant abandoned its earlier-filed trademark application Serial No. 87912445, Opposer would not oppose Applicant’s other pending applications for BYLT BASICS and BYLT PREMIUM BASICS.

Opposer contended that this was essentially a coexistence agreement, which is unenforceable because numerous instances of actual confusion occurred since the agreement was executed. Opposer further claimed that Applicant did not comply with certain packaging requirements set forth in the agreement. Therefore, opposer argued, the Board should not enforce the agreement as a matter of public policy because the agreement was purportedly "not accomplishing what it was intended to do." Opposer argued that the Board should declare the agreement “rescinded, voided, or cancelled."

The Board observed that the equitable doctrine of contractual estoppel applies in Board proceedings when one party has agreed not to challenge registration of another’s mark. "While it does not lie within the jurisdiction of the Board to enforce a contract between parties, Vaughn Russell Candy Co. v. Cookies in Bloom, Inc., 47 USPQ2d 1635, 1638 n.6 (TTAB 1998), whether Opposer is contractually barred from opposing registration of Applicant’s involved applications clearly falls within the jurisdiction of the Board."

In particular, the Board may “consider the agreement, its construction or its validity if necessary to decide the issues properly before it … including the issue of estoppel.”

The Board pointed out that it is Board practice to interpret an agreement based not on the subjective intention of the parties, but on the objective words of their agreement. There was no genuine dispute that "Section 2 of the parties’ agreement clearly and unambiguously states that as long as Applicant files the express abandonment of its trademark application Serial No. 87912445 for the mark BYLT, Opposer agrees not to oppose, challenge, contest, or otherwise interfere with Applicant’s (as Plaintiff in the civil action) pending applications for BYLT BASICS or BYLT PREMIUM BASICS." Applicant complied with that requirement.

The Board noted that the agreement did not state any goal related to avoiding likely or actual confusion. "Specifically, there is no section in the agreement allowing for 'rescind[ing], void[ing], or cancel[ing]' the agreement due to actual confusion or other circumstance, as Opposer suggests."

Likewise, with respect to Opposer’s allegations that Applicant failed to comply with labelling requirements set forth in the agreement,the agreement is clear and unambiguous that only one precondition exists to invoke the consequence that Opposer may not oppose the applications identified in the agreement; that is, Applicant’s express withdrawal of application Serial No. 87912445 is the only condition for binding Opposer’s promise not to oppose.

And so, the Board dismissed Opposition No. 91274047, with prejudice.

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TTABlogger comment: You may remember the NAKED condom case, an unnecessarily complicated case involving contractual estoppel: TTABlogged here.

Text Copyright John L. Welch 2023.

TTAB Finds AUSTRALIAN BOTANICAL SOAP (Stylized) Geographically Descriptive of . . . SOAP

The Board upheld a Section 2(e)(2) refusal to register the mark AUSTRALIAN BOTANICAL SOAP in the stylized form shown below, for body soaps and various other Class 3 products [SOAP disclaimed], finding that the proposed mark is primarily geographically descriptive of the goods. Applicant claimed acquired distinctiveness based on several years of use in the United States and sales representing some 17 million bars of soap, but the Board found the evidence insufficient. In re Apperley Holdings Pty. Ltd., Serial No. 79277754 (September 11, 2023) [not precedential] (Opinion by Judge Thomas V. Shaw).

To support a Section 2(e)(2) refusal, the Office must show that: 

• (1) the primary significance of the term in the mark sought to be registered is the name of a place generally known to the public; 
• (2) the source of the goods or services is the geographic region named in the mark; and 
• (3) the public would make an association between the goods or services and the place named in the mark, that is, believe that the goods or services for which the mark is sought to be registered originate in that place. 

The Board first noted that Section 2(e)(2) still applies "if merely descriptive matter is included and the mark as a whole retains its primarily geographic significance." 

The Board unsurprisingly found that "the primary significance of AUSTRALIAN is geographic, i.e., the adjective form of AUSTRALIA, a place generally known to the American public." The addition of the term BOTANICAL SOAP does not detract from the geographical significance of the mark as a whole, since the disclaimed word SOAP is the generic name of the goods and the word BOTANICAL is at least descriptive of goods, like applicant's, made from plant-based ingredients.

Applicant's goods are made in Australia and its headquarters are there, so there was no dispute regarding the second element of the test. 

As to the required goods/place association, the Board observed that "[w]hen there is no question that the geographical significance of a term is its primary significance, and the geographical place is neither obscure nor remote, a public association of the goods with the place is presumed if an applicant’s goods originate in the place named in the mark."

Applicant argued that Australia "is not particularly known for cleaning products, nor is it shown that purchasers particularly care if cleaning products come from a country or continent." The Board deemed this argument "misplaced as a matter of law. Australia need not be known for Applicant’s goods if they are, as here, made there."

Applicant also argued that "Australian" could have more than one meaning: "For example, whether the product may be made in a fashion or manner first developed or used in Australia, the product includes ingredients that are 'Australian Botanical' products, the product uses ingredients favored by Australian wildlife such as the koala or kangaroo, or, as argued by the Examining Attorney, the product is made in Australia." The Board was unimpressed: "Applicant’s mark need not specify exactly which meaning of 'Australian' is intended for its goods because all of the suggested meanings have geographic significance." Furthermore, there was no evidence that AUSTRALIAN "refers to a non-geographic characteristic of the goods, i.e., that consumers would view the term AUSTRALIAN as anything but a geographic place."

Finally, the Board observed that the minimal stylization of the mark "does not creates a commercial impression separate and apart from the impression made by the wording itself."

Turning to the issue of acquired distinctiveness, the Board found that the proposed mark is "highly geographically descriptive," and therefore  a concomitantly high amount of evidence is needed to show secondary meaning. Applicant averred that it has sold some 19 million bars of soap, beginning in 2019. Again, the Board was not impressed: "Applicant’s use of the mark for only a few years—since 2019—suggests that the mark is unlikely to have acquired distinctiveness in the minds of consumers." Moreover, "although the volume of product sold is not insignificant, the numbers lack any context comparing them to soap sales generally (or even soap sales within a subcategory such as 'botanical' soaps), which would be required to show that the mark has acquired distinctiveness."

And so, the Board concluded that applicant failed to prove acquired distinctiveness, and it affirmed the refusal to register.

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TTABlogger comment: Is this a WYHA?

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

The rate of affirmance for Section 2(d) refusals is running at 85% or so this year. That's about 5% lower than usual. Here are three recent TTAB decisions. How do you think they came out?

In re Pour Moi Limited, Serial No. 79318691 (September 7, 2023) [not precedential] (Opinion by Judge Jennifer E. Elgin). [Section 2(d) refusal of POUR MOI for various clothing items in view of the identical mark registered for "Non-medicated skin care preparations and cosmetics for the face and body."]

In re Chick-A-Boom, LLC, Serial No. 90667527 (September 13, 2023) [not precedential] (Opinion by Judge Michael B. Adlin) [Section 2(d) refusal of CHICK-A-BOOM, for restaurant services, in view of the registered marks CHK-A BOOM for "providing of food and drink via online ordering, takeout services, and delivery services" and CHICKABOOM for "processed meat, namely, chicken."]

In re Destiladora del Valle de Tequila SA de CV, Serial No. 90269534 (September 15, 2023) [not precedential] (Opinion by Judge Robert H. Coggins) [Section 2(d) refusal to register DESPERADOS (in standard characters) for “Distilled agave liquor; Distilled blue agave liquor," in view of the registered marks shown below, for "beers."]

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TTABlog comment: How did you do?

Text Copyright John L. Welch 2023.

TTAB Finds Polishing Disc Configuration Non-Functional but Lacking Acquired Distinctiveness

Applicant Buff and Shine cruised past a Section 2(e)(5) functionality refusal but failed to garner the Section 2(f) checkered flag in its attempt to register the product configuration shown below as a trademark for "machine parts, namely, polishing discs for rotary machines, random-orbit machines, and other surface preparation machines for vehicles." In re Buff and Shine Manufacturing, Inc., Serial No. 88737597 (September 12, 2023) [not precedential] (Opinion by Judge Thomas W. Wellington).

According to the application, "The mark consist[s] of a three-dimensional configuration of a polishing disc that includes a repeating pattern of hexagonal (or honeycomb) shapes on a front surface of the disc. The broken lines on the outer image and within the honeycomb pattern indicate placement of the mark on the goods and is not a part of the mark."

Functionality: The Board considered the ever-popular Morton-Norwich factors, deemed "helpful in determining whether a particular design is functional:" 

• (1) the existence of a utility patent disclosing the utilitarian advantages of the design; 
• (2) advertising materials in which the originator of the design touts the design’s utilitarian advantages; 
• (3) the availability to competitors of functionally equivalent designs; and 
• (4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product.

As to the first factor, there were no pertinent utility patents of record, but there was a design patent owned by the applicant. Citing In re Becton, Dickinson, the Board found the design patent to be some evidence of non-functionality, but not dispositive of the issue. The Board noted a prior utility patent application owned by applicant, but found that the claims had no bearing on the proposed mark. [Note: Becton, Dickinson says that you should look at the specification as well as the claims - ed.]

As to the second factor, the evidence included advertising for Applicant’s product stating that the "hex pattern" is a means of keeping the polishing pad cooler when polishing surfaces. The Board found that. although the goods have "the ability to dissipate heat, this is attributed to the fact the pads are textured, and not a result of the repeating hexagonal design. In other words, the design is not 'essential to the use or purpose' of the polishing pads."

As to the third factor, the evidence showed alternative, functionally-equivalent designs that are available to applicant’s competitors,. "Although not essential to our decision, this weighs in favor of finding the proposed mark is not functional."

As to the fourth factor, the examining attorney did not refute applicant's assertion that its product design does not help minimize the cost or simplify the manufacture of polishing discs.

And so, the Board reversed the Section 2(e)(5) refusal.

Acquired Distinctiveness: Since product designs are never inherently distinctive, applicant had to prove acquired distinctiveness under Section 2(f). Buff and Shine did not submit customer survey evidence or any declarations from actual purchasers, nor any evidence regarding the amount of sales or proof of its relevant market share.

Buff and Shine claimed use of the proposed mark since at least 2009, but it offered no "look for" advertising directing consumer attention to the design. Third-party Internet references to applicant's products did not refer to the repeated hexagonal design as an indicator of source, but at best touted that "a particular design that works well in this configuration." Statements made by consumers referred to applicant's "Hex-Logic” mark but not to the repeating pattern on the product.

In sum, the totality of the evidence falls woefully short of showing that the consuming public has come to understand the hexagonal design as an indicator of source. Noticeably absent is any statement, solicited or unsolicited, from a consumer of polishing discs attesting to the belief that the repeating hexagonal design is an indicator of source with respect to Applicant’s goods.

And so, the Board concluded that applicant had failed to prove acquired distinctiveness, and it affirmed the refusal to register on the ground that the proposed mark fails to function as a trademark.

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TTABlogger comment: Not many proposed product design marks clear the functionality hurdle, but even when they do, there's still a big hill to climb.

Text Copyright John L. Welch 2023.