USPTO Webinar: "Failure-to-function refusals before the TTAB" - Dec. 17th at 2-3:30 ET

"Are you filing trademark applications involving catchphrases, memes, or T-shirt imagery? Are you planning to appeal a final refusal that your trademark is merely informational, ornamental, or otherwise fails to function as a source indicator under the Trademark Act?"

"If so, register for this free webinar on Tuesday, December 17, from 2-3:30 p.m. ET. Two Trademark Trial and Appeal Board (TTAB) judges will discuss the history of failure-to-function refusals and best practices for responding. We only have space for 1,000 attendees, so register early!" Register here.

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

So far this year, the Board has affirmed just over 86% of the Section 2(e)(1) mere descriptiveness refusals reviewed on appeal. That's a bit lower than the historical rate. How do you think these three recent decisions came out? [Answer is in first comment].

In re Skechers U.S.A., Inc. II, Serial No. 97173591 (November 6, 2024) [not precedential] (Opinion by Judge (Opinion by Judge Wendy B. Cohen).) [Mere descriptiveness refusal of HANDS FREE STEP-INS for "footwear." Applicant argued that HANDS FREE and STEP-INS "are the desired results of the user experience when donning footwear,” and the terms describe the user, not the goods.]

In re MDFT International, Inc., Serial No. 97004153 (December 3, 2024) [not precedential] (Opinion by Judge Karen S. Kuhlke). [Mere descriptiveness refusal of MULTIDIMENSIONAL FAMILY THERAPY for "mental health therapy services." Applicant overcame a genericness refusal.]

In re Darex, LLC, Serial No. 97623103 (December 4, 2024) [not precedential] (Opinion by Judge Robert Lavache) [Mere descriptiveness refusal of PRECISION ADJUST for "“Knife sharpeners; replacement parts for hand operated knife sharpeners; accessories for hand operated knife sharpeners, namely, specially adapted carry cases, sharpening rods, rod holders, and hand strops." Applicant argued that the term is at most suggestive: "whether PRECISION operates as a noun or adjective, its unorthodox combination with the verb ADJUST would cause relevant purchasers to mentally pause and engage in a multi-stage reasoning process to determine how the proposed mark relates to the identified goods."]

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

Text Copyright John L. Welch 2024.

TTAB Dismisses 2d Opposition to VSS GLOBAL for Vedic Educational Services, But Remands Application for Consideration of Non-Distinctiveness

Applicant Kavita Vachaknavee may have won the battle but lost the war. The Board dismissed this opposition to registration of the mark VSS GLOBAL for "Education services, namely, providing live and on-line classes, seminars and workshops in the field of Vedic philosophy and culture" [GLOBAL disclaimed] because Opposer, who claimed common law rights in the same mark for the same services, failed to prove that VSS GLOBAL is distinctive for its services. That was not the end of the story, however. Arya Samaj Greater Houston v. Kavita Vachaknavee, Opposition No. 91278867 (November 20, 2024) [not precedential] (Opinion by Judge Thomas L. Casagrande).

A party who claims likelihood of confusion based on its own unregistered mark "cannot prevail unless [s]he shows that [her[ term is distinctive of [her] goods, whether inherently or through the acquisition of secondary meaning or through whatever other type of use may have developed a trade identity." Towers v. Advent Software, Inc., 913 F.2d 942, 945 (Fed. Cir. 1990).

Applicant Vachaknavee pointed out that at least six other organizations have adopted the term VSS for their Vedic Sanskriti Schools and so, she argued, VSS is "a generic term, like, say, JHS (for Junior High School)." Opposer's president stated that "upon learning that Applicant applied to register VSS GLOBAL, Opposer 'had to oppose this filing not only to protect [Opposer] but also all Samajs using VSS.'"

These statements by the parties strongly point to VSS being a generic term for the services at issue here. *** On this record, we have no difficulty finding that VSS is not inherently distinctive for education services in the field of Vedic culture.

Opposer asserted that the term GLOBAL was added to VSS to reflect its effort to "help[ ] setup local VSS … across the globe." Not only is GLOBAL disclaimed in the subject application, but the term was also disclimed in opposer’s own application for VSS GLOBAL. The Board therefore found that GLOBAL merely describes the territorial reach of the services and thus is non-distinctive.

The Board then found that the two terms in combination "have no source-indicating meaning but, rather, retain their individual, non-distinctive meanings in the term as a whole." Consequently, "at minimum," VSS GLOBAL is not inherently distinctive for education services in the field of Vedic Hindu culture. Opposer did not argue, let alone prove, that VSS GLOBAL has acquired distinctiveness. Therefore, opposer having failed to prove prior trade identity rights in VSS GLOBAL, its claim under Section 2(d) failed.

The Board's finding of lack of distinctiveness raised the issue of whether Applicant Vachaknavee's proposed mark qualifies for registration. Indeed, she referred to VSS as a generic term, noted that at least other Sanskriti Schools use the term VSS GLOBAL for identical services, and stated that VSS GLOBAL "cannot be owned by any individual Sanskriti School."

Opposer did not raise the issues of genericness or mere descriptiveness, and so the Board turned to Trademark Rule 2.131, which provides that in a situation such as this, it "may remand the application to the trademark examining attorney for reexamination in the event the applicant ultimately prevails in the inter partes proceeding." "Upon remand, the trademark examining attorney shall reexamine the application in light of the matter referenced by the Board."

The Board remanded the application to the Examining Attorney "for further prosecution on the question of the potential non-distinctiveness of Applicant’s asserted mark as a whole," and in particular "for possible refusal as merely descriptive or generic under Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§ 1051, 1052, 1053, and 1127."

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TTABlogger comment: Did both parties get what they say they wanted, i.e., no one owns the mark?

Text Copyright John L. Welch 2024.

TTAB Posts December 2024 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled three oral hearings for the month of December 2024. As indicated below, one of the hearings will be held virtually and two will be in-person at the USPTO's Madison East Building in Alexandria, Virginia. Briefs and other papers for each case may be found at TTABVUE via the links provided.

December 10, 2024 - 11 AM [Virtual]: In re Sentry Centers Holdings, LLC, Serial No. 90039262 [Section 2(d) refusal of CONVENE for various telecommunications services, educational services in the field of business management, and architectural design and consulting services, on the ground of likelihood of confusion with the registered marks for WECONVENE, CONVENE (word-and-design), and WE CONVENE for business advisory services, project management services, consulting services, and informational services in the fields of architecture, interior design and urban planning design.]

December 10, 2024 - 2PM [In-person]: In re SuccessfulMatch.com, Inc., Serial No. 97354248 [Refusal to register the mark CERTIFIED SUGAR DADDY for social introduction and dating services and software that facilitates those services, on the ground of mere descriptiveness and lack of acquired distinctiveness].

December 12, 2024 - 1 PM [In-Person]: CPR Certification LLC v. CPR, LLC, Opposition No. 91276058 [Opposition to registration of the mark CPR CERTIFICATION for "Education services, namely, providing live and on-line classes, courses, workshops, seminars and conferences in the field of cardiopulmonary resuscitation, Automated External Defibrillator (AED), first aid," etc., on the ground of contractual estoppel.]

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TTABlog comment:  Any predictions? 

Text Copyright John L. Welch 2024.

TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Overturned on Appeal?

The TTAB affirmance rate for Section 2(d) appeals this year continues to hover around 90%. Here are three recent Board decisions, at least one of which reversed the refusal. How do you think they came out? [Answer in first comment].

In re Vermutería de Galicia, S.L., Serial No. 90385649 (November 29, 2024) [not precedential] (Opinion by Judge Cynthia C. Lynch). [Section 2(d) refusal of the word-and-design mark shown below, for "vermouth" in view of the registered mark PETRONI for "wine."]

In re AMVAC Chemical Corporation, Serial No. 97631691 (November 26, 2024) [not precedential] (Opinion by Judge Robert Lavache). [Section 2(d) refusal of the word-and-design mark shown below, for "Chemical analysis; Chemical research; Chemical research and analysis; Chemical research services" in view of the registered mark SMARTSOIL for "Printed reports, namely, computer generated reports of field soil profiles" and for "services in the field of soil and crop management by providing printed reports of soil profiles."]

In re Mark Cachia, Serial No. 88276115 (November 25, 2024) [not precedential] (Opinion by Judge Michael B. Adlin). [Section 2(d) refusal of the mark SCYTALE for advertising and promotional services, business management, and financial and investment services, in view of the identical mark registered for consulting and informational services in the field of open-source software.]

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TTABlogger comment: How did you do?

Text Copyright John L. Welch 2024.

JERSEY GIRL WHISKEY for Distilled Spirits Confusable with JERSEY GIRL for Beer and Wine, Says TTAB

Despite the applicants' energetic efforts, the Board upheld a Section 2(d) refusal of JERSEY GIRL WHISKEY for "distilled spirits" [WHISKEY disclaimed], finding confusion likely with the registered mark JERSEY GIRL for "wines" and the word-and-design mark shown below (in both color and black-and-white versions), for various beer products [BREWING CO. and ESTD 2014 disclaimed]. The Board found the marks to be "very similar in appearance, connotation and overall commercial impression in light of the shared, dominant wording JERSEY GIRL." And although there is no per se rule that all alcoholic beverages are related, the Board once again found that to be the case here. In re Louis Leonetti and Brandon Leonetti, Serial No. 97321068 (November 26, 2024) [not precedential] (Opinion by Judge George C. Pologeorgis).

Examining Attorney Cayla Keenan relied on 16 third-party websites demonstrating that retailers sell both distilled spirits and wine or beer under the same mark. Applicants argued that the goods "are different, being made via a different process and containing different ingredients," but even if true, the Board observed, that argument misses the mark. Applicants also pointed out, to no avail, that whiskey, beer, and wine are subject to different governmental regulations, but the Board noted that "[m]ore importantly, consumers are accustomed to encountering them under the same marks, without regard to any underlying regulatory schemes."

Next, applicants claimed that the Office's evidence was limited to "big box stores." Not so, said the Board. Applicants pointed to a document called "Executive Order on Promoting Competition in the American Economy," as further proof that the goods are not related, but the Board was unimpressed: "protecting the 'vibrancy of the American markets for beer, wine, and spirits,' as argued by Applicants, was not necessarily the aim of this order, and has no bearing on the registrability of trademarks."

Finally, applicants relied on 140 pairs of TSDR printouts of third-party registrations, purporting to show that the USPTO has registered the same mark to different parties for "distilled spirits," including whiskey, on the one hand, and beer or wine, on the other. In only 60 of the cases were the registrations still alive, based on use in commerce, and covering marks sufficiently similar to one another to be probative. The Board found that that these 60 third-party registrations did not justify the registration of Applicants’ mark.

[W]e lack important marketplace information such as (i) whether the “paired” registrants entered into any coexistence agreements, (ii) whether the marks themselves have actually coexisted in the marketplace without confusion *** and (iii) whether the marks coexist in a crowded field such that consumers have been conditioned to distinguish among the specific marks based on minute differences.

Applicants did not offer any evidence regarding the extent to which the third-party marks are used in commerce, or of consumers’ familiarity with them. “[W]here the ‘record includes no evidence about the extent of [third-party] uses . . . [t]he probative value of this evidence is thus minimal.”

Ultimately, we find that Applicants’ “sets” or “pairs” of prior third-party registrations, although significant in number, do not rebut the Examining Attorney’s arguments and corresponding evidence that the goods at issue are related for the reasons explained above. We therefore find, based on the record, that Applicants’ goods are related to Registrant’s goods.

The Board then found that the channels of trade and classes of consumers for the involved goods overlap, and it found no evidence that these consumers will exercise more than ordinary care. And so, the Board affirmed the refusal.

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TTABlogger comment: In these alcoholic beverages case, an applicant's principal hope seems to be the weakness of the Office's evidence of third-party registration and use. See In re Thor Tech, Inc. [TTABlogged here] (two third-party registrations, expensive goods, and lack of proof of overlapping channels of trade.)

Text Copyright John L. Welch 2024.

November 2024 Update of TMEP Now Available

The November 2024 version of the Trademark Manual of Examining Procedure (TMEP) is now available on the USPTO website (here).

Another Strategic Partners Argument Fails: TTAB Affirms Refusal of "REACH & Design" for Vehicle Parts

The Board upheld a Section 2(d) refusal to register the mark shown below, for vehicle radiators and air conditioner parts, finding confusion likely with the registered mark REACH for "Motor vehicles, namely, automobiles, trucks, vans, sport utility vehicles and structural parts therefor; trucks and structural parts therefor; vans and structural parts therefor." Applicant Reach International argued that, under the Strategic Partners approach, its prior registration for a similar mark should serve to overcome the refusal. The Board, however, found that Reach overreached. In re Reach International, Inc., Serial No. 97335655 (November 25, 2024) [not precedential] (Opinion by Judge Mark A. Thurmon).

In Strategic Partners, the Board faced "the unique situation presented by the coexistence of applicant’s existing registration with the cited registration for over five years, when applicant’s applied-for mark is substantially similar to its existing registered mark, both for identical goods.” Strategic Partners, 102 USPQ2d at 1400. The applicant owned a registration for the mark ANYWEARS, which was substantially similar to the mark ANYWEAR that applicant sought to register, for the same goods (footwear).

Here, Applicant Reach owned a registration for the mark shown immediately below. That registration issued in 2005 but expired in 2016 when it wasn't renewed.

Examining Attorney Nathaniel Pettican argued that, unlike in Strategic Partners, the applicant's earlier registration had co-existed on the Trademark Register for only four years (not five) and furthermore that the earlier registration here had expired. The Board, however, agreed with Reach that, under the case law, five years of co-existence is not required. But a live registration is necessary in order to invoke Strategic Partners.

The Strategic Partners holding is based, in part, on the view that the owner of the cited registration in that case faced no new or different harm if a substantially similar mark was registered again for the same goods. The prior registration owned by the applicant in Strategic Partners had been registered for more than five years, which meant the owner of the cited registration could no longer petition to cancel the applicant’s prior registration.

In this case, Applicant does not own a prior registration. "The cited registration stands alone, at least with respect to any registrations owned by this Applicant. If the registration of Applicant’s new version of its mark causes harm to the owner of the cited registration, that will be a new harm, not duplicative of any existing situation."

[W]e have found no Board decision applying this holding to a case where the applicant’s prior registration was cancelled, nor does Applicant cite to any. In at least three recent decisions (all nonprecedential), the Board distinguished Strategic Partners for the same reason we do here: because the prior registration was cancelled.

The Board further noted "another important distinction" between this appeal and the “unique situation” in Strategic Partners. Reach is currently seeking registration in two classes (International Classes 7 and 11), but its cancelled registration identified goods only in International Class 7. In short, the subject application includes goods that did not appear in the deceased registration. 

The Board swiftly found the marks similar, the goods related, and the rade channels overlapping. And so, it affirmed the refusal.

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TTABlogger comment: Strategic Partners provides a very small loophole in the USPTO's Section 2(d) net.

Text Copyright John L. Welch 2024.

TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Overturned on Appeal?

The TTAB affirmance rate for Section 2(d) appeals continues to run at about 90% so far this year. Here are three recent Board decisions, at least one of which reversed the refusal. How do you think they came out?

In re Agrinova Science S.A., Serial No. 97636947 (November 12, 2024) [not precedential] (Opinion by Judge Jennifer L. Elgin). [Section 2(d) refusal of the mark AGRINOVA SCIENCE & Design for, inter alia, fertilizer, compost, and agricultural chemicals and for on-line retail store services featuring chemicals of all kinds for use in agriculture, horticulture and forestry [SCIENCE disclaimed], in view of the registered mark AGRINOVA for "Fresh agricultural products, namely, vegetables, fruits, herbs, living grass, natural turf, and seeds, none of the foregoing including potatoes."

In re iPayed, LLC, Serial No. 90855472 (November 21, 2024) [not precedential] (Opinion by Judge Christen M. English) [Section 2(d) refusal of the mark shown below, for "bank tendering, namely, tendering of money; banking; electronic banking via a global computer network; home banking; online banking; savings bank services" [EBANK disclaimed], in view of the registered mark IPAY for, inter alia, "providing financial information" and "financial planning and investment advisory services."]

In re A JW Production, LLC, Serial No. 97426636 (November 21, 2024) [not precedential] (Opinion by Judge Thomas W. Wellington). [Section 2(d) refusal of the mark ONE DROP CONFERENCE for "Business and direct sales training, and distributing course materials in connection therewith; educational services, namely, developing, arranging, and conducting business conferences, seminars, classes, workshops, training, and programs in the fields of business, leadership,and entrepreneurship, none of which relate to humanitarian projects" [CONFERENCE disclaimed], in view of the registered mark ONE DROP for “business management, planning, and development of humanitarian projects for improving quality of life and living conditions of underprivileged populations” and for “charitable fund raising; financing of humanitarian projects for improving quality of life and living conditions of underprivileged populations."

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TTABlogger comment: How did you do?

Text Copyright John L. Welch 2024.

Precedential No. 28: TRIPLEYE Not Confusable With 3RD EYE for Optical Monitoring Software and Services, Says TTAB

In a rather straightforward, yet precedential decision, the Board dismissed a Section 2(d) opposition to registration of the mark TRIPLEYE for optical monitoring software and equipment and related technical services, finding confusion unlikely with the registered mark 3RD EYE for vehicle surveillance and detection systems and related hardware, software and software-based services. The Board found the differences in sound, appearance, connotation, and commercial impression between the marks to be the most important factor in reaching its conclusion. The Heil Co. v. Tripleye GmbH, Opposition No. 91277359 (November 20, 2024) [precedential] (Opinion by Judge Lawrence T. Stanley, Jr.).

Evidentiary Rulings: Opposer Heil was knocked back on its heels by two evidentiary rulings. First, the Board tossed out its claim to a "family of marks" because Heil did not make that allegation in its notice of opposition and the issue was not tried by implied consent. Second, the Board upheld Applicant Tripleye's objection to Heil's last-minute attempt to change the sales figures that it provided during discovery. Tripleye was dealt an early blow when the Board refused to take judicial notice that "autonomous vehicles are (or will be when they reach the market) expensive purchases," due to the vagueness of the statement and the lack of unquestionable evidence in support.

Motion to Amend: Tripleye, in an attempt to side-step the Section 2(d) claim, had filed a Rule 2.133 motion to amend its application by limiting the goods and services to use with "Level 4 or Level 5 autonomous vehicles." The Board denied the motion because the proposed amendment "does not introduce a substantially different issue for trial," since Heil's registrations are broadly worded and cover the goods and services in Tripleye's application even if so amended.

Likelihood of Confusion: Turning to the substantive issue, the likelihood of confusion, Heil argued that its mark is commercially strong but its proofs were underwhelming. Although claiming use of the mark 3RD EYE since 2004, its sales figure were limited to the 2019-2022 time period and lacked industry context. It provided evidence of a few media articles, promotion at a single trade show, and an unimpressive media presence.

We cannot place Opposer’s 3RD EYE mark on the high end of the fame/commercial strength spectrum amongst a “significant portion of the relevant U.S. consumers” in the vehicle surveillance and detection system industry. *** Perhaps on a more developed record we would find otherwise. As a result, the fifth DuPont factor is neutral.

As to the sixth DuPont factor, the Board found - based on 26 third party registrations - that the word EYE "is a common element of marks for “cameras.” Third-party use evidence likewise showed such use of the word EYE, but none of the marks were similar to Heil's mark overall.

Under the sixth DuPont factor, the evidence of third-party marks reflects weakness of the word EYE but not of Opposer’s mark as a whole. However, consumers apparently distinguish among coexisting EYE-formative marks based on other elements, and EYE is the only shared component of Opposer’s and Applicant’s marks. The sixth DuPont factor thus weighs against likely confusion.

Most significantly, the Board found the mark TRIPLEYE and 3RD EYE to be "different enough" in sound, appearance, connotation, and commercial impression to avoid a likelihood of confusion.

[T]he marks TRIPLEYE and 3RD EYE convey different connotations and commercial impressions. TRIPLEYE has a meaning of “three eyes,” suggesting three cameras in this context, whereas 3RD EYE, as a phrase, has a specific understood meaning and connotation and will be viewed as a unitary mark, calling to mind an additional eye that provides extra-ordinary perception, including for example the “mind’s eye” or “inner eye.” Opposer asks us to take too far a leap by ignoring the understood meaning of the phrase “third eye.” These differing connotations and commercial impressions are consistent with distinctions between the parties’ goods, as indicated by the record.

The goods in the opposed application and in Heil's registrations are in-part identical (e.g., "cameras"), and those goods presumably travel through the same trade channels to the same classes of consumers. The recited services are closely related: "Applicant’s Class 42 services cover the design of software that performs the identical purpose or function of Opposer’s software (i.e., controlling and monitoring vehicles). Thus, consumers can seek out Applicant’s services, or purchase Opposer’s software, to accomplish the same purpose." These services are offered to "many of the same industries as Opposer, such as 'mining and construction,' 'logistics,' and 'marine and ports.'" The Board acknowledged that, with regard to the involved services, consumers "will exercise at least a somewhat heightened degree of consumer care."

In conclusion, the Board found that, as to Thirdeye's goods, the dissimilarity of the marks, together with the weakness of the weakness of the only shared element, the word EYE, outweighed the other DuPont factors. As to the services, those findings, along with "the elevated degree of care in making purchasing decisions under the fourth Dupont factor," outweighed the other factors.

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TTABlogger comment: A well written run-through of the DuPont factors

Text Copyright John L. Welch 2024.

TTAB Affirms Refusal of ENDURELITE in view of ENDUROLETE for Supplements, Rejecting Strategic Partners Argument

The Board affirmed a refusal to register the mark ENDURELITE, finding confusion likely with the registered mark ENDUROLETE, both for dietary and nutritional supplements. The marks are "extremely similar," the goods identical in-part, and the channels of trade and classes of consumers for those goods are presumably identical. Applicant argued that, under Strategic Partners, its ownership of a registration for the mark ENDURELITE FUELING FAST & Design (shown immediately below) justifies registration of the standard character mark. The Board disagreed. In re Endurelite Supplements, LLC, Serial No. 90708132 (November 15, 2024) [not precedential] (Opinion by Judge Thomas W. Wellington).

Examining Attorney Kevin Flebbe and Applicant argued over the applicability of In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012). [TTABlogged here]. There the applicant sought to register the mark ANYWEAR in slightly stylized form, for footwear, and its ownership of a registration for ANYWEARS in standard character form was enough to sidestep a likelihood of confusion refusal.

Here, as in Strategic Partners, the prior registration was more than five years old and therefore was "not subject to attack by the owner of the cited registration on a claim of priority and likelihood of confusion." Furthermore, the identical word ENDURELITE appears in both marks.

On the other hand, unlike in Strategic Partners, the marks are not "substantially similar" since the prior mark includes a design and additional wording. Also, Applicant here is seeking to register the mark ENDURELITE for goods that include “dietary and nutritional supplements,” which is "a significant expansion upon the more specifically-described nutritional supplements listed in Applicant’s existing prior registration." In Strategic Partners, the Board noted, the goods covered by both the applicant’s existing prior registration and in its application were identical: "footwear."

In view of the above, we find the existence of Applicant’s prior registration only weighs slightly in favor of finding confusion unlikely. We hasten to add, however, that there are significant differences between the circumstances present in this appeal with those in Strategic Partners, and we certainly do not find ourselves in the “unique position” where the thirteenth DuPont factor “outweighs the other [factors].” Id. at 1399.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: Well, that Hail Mary pass failed to connect.

Text Copyright John L. Welch 2024.