Wednesday, May 31, 2023

TTAB Posts June 2023 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled nine (9) oral hearings for the month of June 2023. All of the hearings will be held via video conference. Briefs and other papers for each case may be found at TTABVUE via the links provided.

June 14, 2023 - 11 AM:
Mi-Box Moving and Mobile Storage Inc. v. Mybox Inc., Opposition No. 91265197 [Opposition to registration of MYBOX for "Modular metallic buildings; transportable metal buildings; prefabricated metal buildings; relocatable metal buildings, "Custom manufacture of modular components of modular buildings, transportable buildings, prefabricated buildings, and relocatable buildings," and "Rental of portable buildings, namely, portable modular buildings, transportable buildings, prefabricated buildings, and relocatable buildings," on the ground of likelihood of confusion with the registered mark MI-BOX for "Moving and storage services, namely, rental, storage, delivery and pick up of portable storage units."]

June 15, 2023 - 1 PM: Robyn Roche-Paull v. Mom2Mom Global, DBA, Breastfeeding in Combat Boots, Cancellation No. 92071516 [Petition to cancel a registration for the mark BREASTFEEDING IN COMBAT BOOTS for "Providing breastfeeding information," on the grounds of nonownership, fraud, and likelihood of confusion with the identical mark allegedly used first by the petitioner for the same services.]

June 21, 2023 - 11 AM: Perfectionately Yours, LLC v. Charles F. Coleman, Jr. , Opposition No. 91241854 and Cancellation No. 92075733 [Opposition to registration of BLACK BRILLIANCE (Stylized), and petition to cancel a registration for BLACK BRILLIANCE in standard form, for clothing and for various educational and entertainment services, on the grounds of nonownership, nonuse, fraud, and and likelihood of confusion with the identical mark allegedly used first by the plaintiff for the same goods and related services.]


June 21, 2023 - 2 PM: JetBlue Airways Corporation v. Airblue Limited, Opposition No. 91239609 [Opposition to registration of AIRBLUE for credit card services and air transportation services, on the grounds of likelihood of confusion with, and/or likely dilution of, the mark JETBLUE, and various BLUE-formative marks, for identical services.]

June 27, 2023 - 11 AM: LogMeIn, Inc. and GoTo Technologies USA, Inc. v. Telus Corporation and GoCo Technology Limited Partnership , Opposition No. 91265230 [Opposition to registration of GOCO for various unified communication services in view of the registered mark GOTO for overlapping and/or related services.] 

June 27, 2023 - 2 PM: Billy Stott v. Split Decision Music, LLC, Opposition No. 91249613 [Opposition to registration of SPLIT DECISION for "Entertainment services in the nature of live visual and audio performances, namely, musical rock band" on the grounds of nonownership, fraud, and and likelihood of confusion with the identical mark allegedly used first by the opposer for the same services.]

June 28, 2023 - 11 AM: In re Qx World Kft., Serial No. 79280195 [Section 2(d) refusal to register the mark OMNIS for downloadable computer software for data collection for use of medical, veterinary and cosmetic devices in International Class 9, medical imaging and rehabilitative devices, including biofeedback devices, in International Class 10, and retail and wholesale store and new product commercialization services featuring computer software and devices for medical, veterinary and cosmetic use in International Class 35, in view of the registered mark DAKO OMNIS for, inter alia, recorded and downloadable software for identifying and diagnosing immunodeficiency diseases and cancer and processing digital images in International Class 9, medical diagnostic instruments and apparatuses in International Class 10, and medical research and installation, integration, maintenance, and updating of software for use in medical analysis, diagnosis and research in International Class 42, .and OMNIS HEALTH for, inter alia, blood glucose meters in International Class 10, retail store services featuring the sale of diabetic supplies and devices in International Class 35, and providing information in the field of health, healthcare and wellness in International Class 44.]

June 28, 2023 - 1 PM: Servi-Tek, Inc. v. Jimmy's Contractor Services, Inc. , Cancellation No. 92071703 [Petition for cancellation of a registration for the mark SERV-TECH for "Roofing services; Roofing consultation; Roofing contracting; Roofing installation; Roofing repair; Roofing services, namely, waterproofing" on the ground of likelihood of confusion with the common law mark SERVI-TEC for "janitorial services; building maintenance services."  


June 29, 2023 - 1 PM: Rockport IP Holdings, LLC, The Rockport Company, LLC v. Joshua George Savoy, Oppositions Nos. 91252440 and 91255819 [Opposition to registration of the mark shown below left for various clothing items, including footwear, in view of the registered mark shown below center, and the common law mark shown below right, for footwear., and "counter-opposition" to registration of the third mark.]

Read comments and post your comment here.

TTABlog comment: See anything interesting? Any WYHO?s

Text Copyright John L. Welch 2023.

Tuesday, May 30, 2023

Precedential No. 16: TTAB Finds Guitar Shape for Hotel to be Inherently Distinctive

The Board reversed a refusal to register "trade dress consisting of a three-dimensional building in the shape of a guitar" (shown below), for "casinos" and "hotel, restaurant and bar services," finding the proposed mark to be inherently distinctive. The examining attorney had accepted the Seminole Tribe's alternative claim of acquired distinctiveness under Section 2(f), but the Tribe chose to pursue its claim that the building shape is an inherently distinctive source indicator. In re Seminole Tribe of Florida, 2023 U.S.P.Q.2d 631 (TTAB 2023) [precedential] (Opinion by Judge Melanye K. Johnson).

In Two Pesos, the Supreme Court held that proof of secondary meaning is not required for trade dress that is inherently distinctive, and it upheld the finding that the décor of Taco Cabana's Mexican restaurants was inherently distinctive. In Wal-Mart, the Court distinguished "product design" trade dress from "product packaging," ruling that the former is protectable "only upon a showing of secondary meaning." The Court ruled that the clothing designs at issue constituted product design. As to the trade dress in Two Pesos, the Court observed:
Two Pesos is inapposite to our holding here because the trade dress at issue [in Two Pesos], the décor of a restaurant, seems to us not to constitute product design. It was either product packaging — which, as we have discussed, normally is taken by the consumer to indicate origin — or else some tertium quid that is akin to product packaging and has no bearing on the present case. (Emphasis by the Board).

The Board then turned to decisions that analyzed the inherent distinctiveness of trade dress used with a variety of services, not just building designs. In Chippendales, the CAFC affirmed the Board's finding that the "Cuffs & Collar" trade dress for erotic dancers was not inherently distinctive because it was "inspired by the ubiquitous Playboy bunny suit," but it also ruled that the Board erred in suggesting that any costume in the adult entertainment industry would lack inherent distinctiveness.

Under Chippendales it is appropriate for the Board to consider "whether a consumer would immediately rely on Applicant's Guitar Design to differentiate Applicant's Services from the services of others who offer casinos or hotel, restaurant and bar services." This "set the stage" for the Board's finding in Frankish that the "fanciful, prehistoric animal design" of the cab of a monster truck is "akin to product packaging for an applicant's monster truck services, and therefore, inherently distinctive." The Board found the design to be "unique" and "unusual" in the monster truck field, and the evidence scant, at best, that the design is "a 'mere refinement' of anything, let alone a -commonly-adopted' and 'well-known form' in the monster truck field."

The Board found the proposed mark be "tertium quid" akin to product packaging. Focusing on the uniqueness of the Tribe's building design in the relevant industry, it concluded that applicant’s building design is inherently distinctive for the Tribe's services.

The Board's conclusion was "further supported" by the Seabrook test for inherent distinctiveness: "whether the trade dress is a “common” basic shape or design; whether it is unique or unusual in a particular field; or whether it is a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods."

We find that Applicant’s Mark is not a common design; rather, it is unique, and not a mere refinement of a commonly-adopted and well-known form of ornamentation for Applicant’s Services. Given the uniqueness of Applicant’s three-dimensional Guitar Design trade dress as applied to Applicant’s Services, we find Applicant’s Mark is of a type that consumers would immediately rely on to differentiate Applicant’s Services from casinos or hotel, restaurant, and bar services offered by others, and that it therefore constitutes inherently distinctive trade dress.

Read comments and post your comment here.

TTABlogger comment: Since the examining attorney had already accepted the Tribe's Section 2(f) claim, why did it bother to pursue the claim of inherent distinctiveness? Steve Feingold explained why he did that in the Chippendales matter: "Why You Should Think Twice Before Accepting a 2(f) Registration"

P.S. Hat tip to FOB Miriam Richter.

Text Copyright John L. Welch 2023.

Friday, May 26, 2023

Free Webinar June 7th: Strand and Welch "Trademark Year in Review" (New York CLE Credit)

On June 7th from 12:00 - 1:00PM, Wolf Greenfield will host a webinar entitled “Trademark Year in Review: Key Developments in the Courts and at the TTAB.” John Strand and John Welch will provide a summary and analysis of the past year’s most important trademark cases in the courts and at the TTAB. CLE Credit is available in New York. Register here.

Mr. Strand will focus on recent and upcoming court rulings, while yours truly will discuss .... wait for it .... TTAB developments!

Read comments and post your comment here.

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

By my count, the TTAB has affirmed about 83% of the Section 2(d) refusals it has reviewed on appeal this year. How do you think these latest three appeals came out? Results will be found in the first comment.

In re ZF Friedrichshafen AG
, Serial No. 79322731 (May 18, 2023) [not precedential] (Opinion by Judge Angela Lykos). [Refusal to register KING OF THE ROAD for "Batteries; rechargeable batteries; electric batteries; vehicle batteries; car batteries; batteries for electronic cigarettes; battery boxes; battery jars; battery chargers" and for "Lighting apparatus for vehicles; lights for vehicles; lights for automobiles; lighting installations for air vehicles; lamps; electric lamps; light bulbs; light bulbs for directional signals for vehicles; light diffusers; LED light bulbs; lighting apparatus and installations, namely, lighting apparatus for vehicles and lighting installations" in view of the identical mark registered for "mirrors for land vehicles."

In re Falicie E. Dirosier, Serial No. 90074262 (May 18, 2023) [not precedential] (Opinion by Judge Christopher Larkin) [Refusal to register the mark shown below, for "Bar soap," in view of the registered mark MOOD SWING for "hair styling preparations."]In re Nature Cravings Pet Treats LLC, Serial Nos. 90139331 (May 19, 2023) [not precedential] (Opinion by Judge Peter W. Cataldo) [Refusal to register BARKING BUDDHA for "Consumable pet chews; Edible pet treats; Pet beverages; Pet food; Pet treats in the nature of bully stick" in view of the registered mark BUDDHA BISCUITS (in standard form) for "Edible organic pet treats for dogs" [BISCUITS disclaimed].

Read comments and post your comment here.

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

Text Copyright John L. Welch 2023.

Thursday, May 25, 2023

TTAB Reverses Functionality Refusal of Rocking Chair Design But Finds Acquired Distinctiveness Lacking

The Board reversed a Section 2(e)(5) functionality refusal of a product configuration mark (shown below) comprising the side of a rocking chair (not including the high back and curved base). Applying the Morton-Norwich factors, and giving some weight to applicant's design patents, the Board concluded that the USPTO failed to make a prima facie case of functionality. However, Applicant JBL failed to prove that this design has acquired distinctiveness, and so registration was refused on the Principal Register, but the Board accepted JBL's alternative amendment to the Supplemental Register. In re JBL International, Inc., Serial No. 88941388 (May 22, 2023) [not precedential] (Opinion by Judge Thomas W. Wellington).

There were no utility patents of record, nor any evidence showing that JBL touted any utilitarian advantages of this product design. Nor was there any evidence that JBL’s product design serves to minimize the cost or simplify the manufacture of its rocking chairs.

JBL pointed to its ownership of seven design patents for rocking chairs of the same or a very similar configuration. The Board noted that "[o]ur law recognizes that the existence of a design patent for the very design for which trademark protection is sought 'presumptively . . . indicates that the design is not de jure functional.'" And so, the design patents constituted evidence weighing against a finding of functionality, but the Board pointed out that they are not dispositive of the issue.

The examining attorney contended that evidence of third-party rocking chairs “shows that [applicant's design] is one of a few superior designs available." The Board was not impressed: "while the Examining Attorney points out that some of the third-party rocking chairs have 'an arm-rest connected to the chair’s back and front legs with an angled rear leg' or 'an armrest and front leg that meet at an approximate 90-degree angle,' there is no explanation how these design traits are 'superior' or how they are utilitarian because they are 'essential to the use or purpose' of the rocking chairs." Instead, the evidence showed that "there are several alternative functionally equivalent designs available to Applicant's competitors. Indeed, some of the third-parties' rocking chairs bear little resemblance in product design to Applicant's." [see example below]

And so, the Board found that the USPTO had failed to make a prima facie case of functionality.

Turning to the issue of acquired distinctiveness, the Board applied the Converse factors, with JBL relying on its length of use (since 2010), sales figures (very little meaningful evidence), and advertising and promotion (ditto). It did not offer any evidence of "look for" advertising, but pointed to its registered logo (below) depicting a rocking chair.The Board noted, however, that the logo does not feature the elements of the design at issue, nor was there any evidence regarding the extent of consumer exposure to this mark.

Finally, there was no direct evidence of consumer perception of the proposed mark, nor any evidence of copying or of unsolicited media attention.

And so, the Board concluded that JBL fell short of meeting its high burden to prove acquired distinctiveness for its product design. The Board did, however, accept JBL's amendment to the Supplemental Register, which amendment was made in the alternative during prosecution of the subject application.

Read comments and post your comment here.

TTABlogger comment: In my view, the existence of a design patent should have no bearing on the issue of whether the proposed mark is functional in a trademark sense because the respective standards for functionality are different. See Sarah Burstein, Faux Amis in Design Law, 105 TMR 1455 (2015). [pdf here].

Text Copyright John L. Welch 2023.

Wednesday, May 24, 2023

Sustaining Tumblr's Opposition, TTAB Finds "TUMBLOG" Generic for .... Guess What?

In a rare opposition based on genericness, the Board sustained Tumblr's challenge to an application to register TUMBLOG for "[p]roviding customized on-line web pages and data feeds featuring user-defined information, which includes blog posts, new media content, other on-line content, and on-line web links to other websites," deeming the proposed mark to be generic for the recited services. The Board, without explanation, applied a "preponderance of the evidence" standard, ignoring CAFC case law requiring "clear evidence" of genericness. Tumblr, Inc. v. Mark David-Dale Kindy, Opposition No. 91252639 (May 19, 2023) [not precedential] (Opinion by Judge Jonathan Hudis).

There was no dispute that Applicant Kindy's recitation of services adequately defined the genus at issue. The Board found the relevant consumers to be "members of the general public who do or may take advantage of the services provided by blogging websites, including customized web pages and data feeds provided by such websites." "The critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question."

Kindy, appearing pro se, admitted that "the term 'tumblelog' and its contraction 'tumblog' are generic, or at best highly descriptive, for a microblog or a short-form blog," and that use of those terms in connection with blogging platforms has been "prevalent" for many years. Dictionary materials and news articles, in addition to Kindy's admissions, led the Board to the inescapable conclusion that TUMBLOG is a generic term for Kindy’s services.

Opposer Tumblr submitted the expert testimony of a linguistics expert with regard to the derivation of the term "tumblog." "Generally, the testimony of a linguistics expert has been accepted on questions such as to how a term or mark will be perceived or pronounced." Her testimony corroborated the other evidence on this point.

The Board, however, did not accept her testimony on the ultimate factual issue of genericness. "The Board is the ultimate arbiter of whether TUMBLOG is generic based on our assessment of the record as a whole, and we will not substitute the opinion of a witness, even an expert witness, for our evaluation of the facts."

Ultimately, the evidence pointed to one conclusion:

The relevant public also understands a “tumblog”, a contraction from “tumblelog” whose etymology is from the terms “tumble” and “log,” to be an alternative generic term for a microblog, that is, a specific form of a blog whose content is typically shorter, allowing users to exchange smaller elements of textual content (paragraphs or short sentences), images, video links, or links to other websites.

And so, the Board sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: On the issue of the appropriate standard for proof of genericness, see Michael Hall's TTABlog article here.

Text Copyright John L. Welch 2023.

Tuesday, May 23, 2023

TTABlog Test: Which of These Three Section 2(d) Oppositions Was/Were Dismissed?

Here are three recent decisions in Section 2(d) oppositions. At least one of the oppositions was dismissed. See if you can guess how they came out just based on looking at the marks and the involved goods and services. Answer(s) in the first comment.

Agile Sports Technologies, Inc. v. Lashion Robinson, Opposition No. 91265207 (May 18, 2023) [not precedential] (Opinion by Judge Martha B. Allard). [Opposition to registration of HUDL for "Downloadable music files" (Class 09); "Music production services" (Class 41) and "Online social networking services; licensing services, namely, licensing of music and the provision of information, advice and consultancy relating to the licensing of music" (Class 45), in view of various registered HUDL and HUDL-formative marks for, inter alia, "providing access to information, audio, and video via websites."]

LeetCode, LLC v. MeetCode Technology (Hong Kong) Co., Limited, Opposition No. 91270134 (May 18, 2023) [not precedential] (Opinion by Judge Thomas W. Wellington) [Opposition to registration of MEETCODE for, inter alia, "Career advancement consulting services in the field of information technology,""Business education and training services," and "Computer programming services," in view of the registered mark LEETCODE for overlapping services.]

Sferra Fine Linens, LLC v. Sfera Joven S.A., Opposition No. 91267498 (May 18, 2023) [not precedential] (Opinion by Judge Michael B. Adlin) [Opposition to registration of the mark SFERA in the form shown below, for perfumery and cosmetics (Class 3), leather handbags and wallets (Class 18), and clothing (Class 25), in view of the registered mark SFERRA for table linen, bed sheets, lap robes, bath towels, and the like (Class 24).]

Read comments and post your comment here.

Text Copyright John L. Welch 2023.

Monday, May 22, 2023

Ted Davis Outline: "Recent Developments in United States Trademark and Unfair Competition Law"

Thank you, Ted Davis, for permitting me to post a link (here) to your article, "Recent Developments in United States Trademark and Unfair Competition Law." This article is a companion to the Ted's presentation at the 2023 Annual Meeting of INTA in Singapore.

Read comments and post your comment here.

Friday, May 19, 2023

TTABlog Test: Is CLAIM WATCHER Confusable With CLAIM WATCH & Design for Certain Insurance Claim Services?

So far this year, the Board has affirmed a mere 83% of the Section 2(d) refusal it has reviewed - a drop from its 89% average over the past decade. Here's the latest decision. The USPTO refused to register CLAIM WATCHER for “Health benefit plan services, namely, insurance administration services, namely, assisting others with adjusting insurance claims in the nature of repricing health insurance claims” (Class 36) and for “Legal services, namely, legal consulting and defense relating to health insurance claims" (Class 45) (CLAIM disclaimed), finding confusion likely with the registered mark shown below, for "Tracking and monitoring the status of insurance claims for business purposes." How do you think this appeal came out? In re Homestead Strategic Holdings, Inc., Serial No. 90263580 (May 17, 2023) [not precedential] (Opinion by Judge Christopher Larkin).

The Board found the term CLAIM WATCH to be the dominant element in the cited mark. Applicant feebly argued that the highly stylized letter “P” dominates the cited mark “because it represents ‘Parker,’ the last name associated with the Cited Registration’s owner, ‘James G. Parker Insurance Associates.’” Of course, that argument was useless, since the Board must consider the mark as depicted in the application drawing, without any reference to external materials.

Considering the marks in their entireties, the Board found them to be similar in appearance, sound, connotation, and commercial impression.

As to applicant's Class 36 services, the Board found the recitation to be vague and so it relied on external materials in construing the services to include "any form of negotiation by a third-party insurance administrator (on behalf of a health benefit plan) with a health care provider to adjust the provider’s health insurance claim to the plan." The Class 45 services are limited to the defense of health insurance claims, "including the sort of consulting and defense provided by applicant in the context of claims asserted by a health care provider against a health care plan or its members." The Board concluded that applicant's identification cannot reasonably be construed to cover the prosecution of “health insurance claims” against a health insurer by an insured because the recitation specifically relates to consulting and defense, not prosecution.

As to registrant's services, there is no restriction on the nature of the “insurance claims” that are the subject of the tracking and monitoring services, and so they must be construed to include the tracking and monitoring of the status of health insurance claims.

Nonetheless, there is a distinct difference between tracking and monitoring the status of a claim and assisting others in the repricing of health insurance claims. Moreover, the limiting language “for business purposes” further narrows the registrant’s services to encompass only those “insurance claims” submitted “for business purposes” and the registrant’s “tracking and monitoring” of the “status” of such claims.

The Board saw nothing in the USPTO's evidence indicating that the marks at issue would be exposed to the same consumers" when used with the respective services of applicant and registrant, "or that consumers have become accustomed to seeing the same marks used in connection with those sets of services." 

The finding of dissimilarity under the second DuPont factor was deemed to outweigh the similarity of the marks, and so, the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: What do you think?

Text Copyright John L. Welch 2023.

Thursday, May 18, 2023

TTABlog Test: Which of These Three Section 2(d) Oppositions Was/Were Dismissed?

A TTAB judge once told me that one can predict the outcome of a Section 2(d) case 95% of the time by just looking at the involved goods and services and the marks. Maybe he or she was referring to ex parte cases only. Anyway, let's see how you do with the three oppositions summarized below. At least one of them was dismissed. Answer(s) in the first comment.

Herve Brin v. PSBC Limited, Opposition No. 91267498 (May 15, 2023) [not precedential] (Opinion by Judge Cindy B. Greenbaum) [Opposition to registration of POUPETTE ST BARTH for perfumery and personal care products (ST BARTH disclaimed), in view of the registered marks ST BARTH (in standard characters) and LSB LIGNE ST BARTH and Design (LIGNE disclaimed), for overlapping products.]

CC Serve Corporation v. Apex Bank, Opposition No. 91254295 (May 12, 2023) [not precedential] (Opinion by Judge Christen M. English). [Opposition to registration of ASPIRE BANK & Design for "banking and financing services" (BANK disclaimed) in view of the registered mark ASPIRE for "credit card services."]

Daniel J. Fountenberry v. Life of Ease LLC Opposition No. 91270132 (May 8, 2023) [not precedential] (Opinion by Judge Michael B. Adlin) [Opposition to registration of the mark V COTEACHER & Design for writing instruments, educational toys for teaching math principles, and for educational services, namely web-based learning instruction, in view of the registered mark COTEACHER for “licensing of software in the framework of software publishing."]

Read comments and post your comment here.

Text Copyright John L. Welch 2023.

Wednesday, May 17, 2023

In a Split Decision, TTAB Finds SIREN'S BLEND for Coffee Confusable With the Starbucks Logo, But Not Confusable for Clothing

In an exhaustive and exhausting 69-page decision, the Board sustained-in-part and dismissed-in-part Starbucks' opposition to registration of the mark SIREN'S BREW ("BREW" disclaimed), finding confusion likely with the Starbucks design logo with regard to applicant's "coffee beans," but not as to applicant's "shirts; sweat shirts." Starbucks' dilution claim failed because Starbucks did not prove its logo to be famous for dilution purposes. This blog post will attempt to hit the highlights. Starbucks Corporation v. Mountains and Mermaids, LLC, Oppositions Nos. 91250027 and 91250160 (May 8, 2023) [not precedential] (Opinion by Judge Cynthia C. Lynch).

Starbucks claimed common law rights in the mark SIREN for coffee and "associated merchandising goods," asserting five bases for priority, none of which it successfully established: (1) Current use of SIREN’S BLEND for coffee tacked onto alleged prior rights in SIREN’S NOTE BLEND for coffee; (2) Prior trade name use of Siren Retail Group, which allegedly has offered “premium coffee-related experiences” since 2016; (3) Prior alleged use of the word mark SIREN “in connection with many goods and services, including coffee-related goods and services and apparel;” (4) Prior alleged use of SIREN in “branding and promotional efforts in a manner analogous to trademark use;”and (5) alleged public association of “Siren” with Starbucks as a nickname.

Starbucks thus had to rely on its registered logo marks for its priority claim, two of the registrations covering coffee and clothing (including the mark shown in the lower right corner above). Since the involved goods overlap, the Board must presume that they travel in the same normal channels of trade to the same classes of consumers.

Starbucks claimed that its logo is famous, but it did not provide sales and advertising figures tied to that particular mark. The Board found the mark to be commercially strong for coffee-related products, but not at the farthest end of the strength spectrum. As to clothing, the Board made no such finding.

Applicant attempted to show that third-party uses of "siren" weakened the Starbucks' mark, but the Board was unimpressed: "there are only a handful of third-party uses of 'siren' in connection with coffee-related goods and services, and they appear mostly to be small, local businesses. As to clothing, however, third-party uses were entitled to some probative weight.

Turning to a comparison of the marks, the Board poured through the record and found "substantial evidence of public exposure to Opposer’s Design Logo marks associated with and characterized as a siren, and that the Design Logo often is referred to by consumers as the Siren or the Starbucks Siren."

The Board found the word SIREN'S to be dominant in applicant's mark, since it is the first word in the mark and since BREW is descriptive of coffee. The Board found the marks to be similar in connotation and commercial impression.

As to clothing, however, the meaning of BREW is "more open-ended and and subject to various interpretations, none of which are descriptive of or generic for the clothing goods." "The SIREN’S BREW mark used on clothing still gives the meaning and impression of the brew of a siren, but that brew could be a beer, tea, coffee, any other brewed beverage, or indeed any concoction of unusual ingredients." In light of the narrower scope of protection merited by the Starbucks mark for clothing, the Board found the marks dissimilar in this context.

And so, the Board found confusion likely as to applicant's coffee beans, but not as to its clothing items.

As to Starbucks' dilution claim, the evidence fell short of establishing fame by the relevant date for dilution purposes. "The record is simply too thin to establish, by a preponderance of the evidence, that Opposer’s marks were famous as of March 2018."

Read comments and post your comment here.

TTABlogger comment: When a party has multiple registered marks, it seemingly seldom can segregate its sales and advertising figures by mark. Keep that in mind when challenging the strength of your opponent's marks.

Text Copyright John L. Welch 2023.