Wednesday, May 29, 2024

"ASSHOLES LIVE FOREVER" Fails-to-Function as a Service Mark for Online Retail Store Services, Says TTAB

Last year, the Board affirmed a refusal to register the proposed mark ASSHOLES LIVE FOREVER, in the stylized form shown below, for various goods in 14 classes, finding that the phrase fails to function as a trademark. [TTABlogged here]. The same applicant met the same fate in this attempt to register that same phrase for "Online retail store services featuring clothing, jewelry, bags, gifts, home goods, hats, blankets, mugs, belts, branded gift bags, floor mats, keychains, novelty toys for playing jokes, and pillows." In a 41-page opinion, the Board concluded that the phrase is used to convey a commonplace, informational message that consumers would not perceive as a source indicator. In re Kirill’s Big Brain, LLC, Serial No. 97359799 (May 22, 2024) [not precedential] (Opinion by Judge Wendy B. Cohen).

The Board observed that "[t]he critical inquiry in determining whether a proposed mark functions as a trademark is how the relevant public perceives the term sought to be registered." Univ. of Ky., 2021 WL 839189, at *13. "Where the evidence suggests that the ordinary consumer would take the words at their ordinary meaning rather than read into them some special meaning distinguishing the goods and services from similar goods and services of others, then the words fail to function as a mark." In re Ocean Tech., Inc., Ser. No. 87405211, 2019 WL 6245131, at *4 (TTAB 2019) (internal punctuation omitted).

The Examining Attorney argued that ASSHOLES LIVE FOREVER "is commonly used as a rallying cry of sorts for those who self-describe as or otherwise embrace the 'asshole' moniker. The phrase is one of celebration and means that they will be noticed and remembered and that they or those like them will always exist." In support of that argument, the Examining Attorney submitted examples of use of the phrase ASSHOLES LIVE FOREVER by third-parties, including on clothing, water bottles, mugs, bracelets, and wall hangings [??? - ed.], and as a blog post title and a song title.

The applicant argued that the USPTO's evidence was too limited, but the Board pointed out that "the Examining Attorney need only establish a reasonable predicate that the phrase fails to function as a mark; the Examining Attorney is not required 'to prove to a moral certainty' that the phrase would not be perceived as a source-indicator. Brunetti, 2022 WL 3644733, at *19."

Applicant feebly asserted that the evidence showed use of ASSHOLES LIVE FOREVER "in an ornamental fashion, but that was the Examining Attorney's point: the phrase "would be perceived as a common message whether described as a parody, meme or lament; it does not indicate the source of Applicant’s services. A consumer is likely to buy the goods or services that prominently display the phrase because of the message conveyed. Eagle Crest, 2010 WL 3441109, at *3."

Applicant also argued that the examples provided by the Examining Attorney are not for online retail store services but are instead ornamental uses on clothing and other goods. The Board, however, observed that "[t]he test is not whether the proposed mark is used on goods or in connection with services but whether, upon seeing the proposed mark, the consumer will view it as conveying a message or as a source-indicator."

Applicant made a number of additional arguments in an attempt to overcome the Office's evidfence, pointing to third-party references to ASSHOLES LIVE FOREVER as a brand and to purported copying by infringers. The Board rejected the copying argument and was unmoved by the third-party references: "even though some of the evidence also refers to ASSHOLES LIVE FOREVER as a brand, this evidence indicates general consumer recognition of the phrase for the message conveyed. Simply calling ASSHOLES LIVE FOREVER a brand cannot transform an otherwise unregistrable designation into a registrable mark."

The entirety of the evidence of record indicates that there are several third-party uses of the phrase on various goods that do not appear to be associated with Applicant, thereby suggesting that the broader class of consumers would perceive only the common meaning of the phrase. See Mayweather, 2020 WL 6689736, at *3. Thus, “even if there were evidence that some consumers associated the phrase with Applicant, that alone would not entitle Applicant to appropriate for itself exclusive use of an otherwise common informational phrase and thereby attempt to prevent competitors or others from using it….” Wal-Mart Stores, 2019 WL 193990, at *12.

Applicant further argued that some of the USPTO's evidence post-dated its first use and thus represented infringing products, but it cited no authority for the proposition that the Office’s evidence must be disregarded because it post-dates Applicant’s first use. "The Board’s failure-to-function cases do not impose such a requirement, and they have invariably considered evidence of third-party use that post-dated use or the filing dates of the subject applications."

Read comments and post your comment here.

TTABlogger comment: The Board distinguished the "100% THAT BITCH" case, where "much of the evidence of third-party use specifically [sought] to associate the goods … with Lizzo." Here, the third-party evidence made no reference to the applicant.

Text Copyright John L. Welch 2024.

Tuesday, May 28, 2024

CAFC Affirms TTAB Dismissal of Consolidated Cancellations Due to Lack of Entitlement to a Statutory Cause of Action

The CAFC affirmed the Board's dismissal of two petitions for cancellation on the ground of lack of entitlement to a statutory cause of action under Section 1064 of the Trademark Act. The appellant, a limited partner of the Paul Hobbs Winery, challenged registrations for the marks ALVAREDOS-HOBBS and HILLICK AND HOBBS on two grounds (likelihood of confusion and fraud) but it failed to satisfy the Lexmark test because appellant lacked a direct commercial interest in the PAUL HOBBS mark being asserted, and because any injury appellant might suffer was too remote. Luca McDermott Catena Trust v. Fructuoso-Hobbs SL, Appeal No. 2023-1383 (Fed. Cir. May 23, 2024) [Precedential].

The CAFC first looked to whether the appellant had Article III standing ("constitutional standing"), and then turned to the question of appellant's entitlement to a statutory cause of action.

Article III Standing
To establish constitutional standing, Appellant “must show (i) that [it] suffered an injury in fact that is concrete, particularized, and actual or imminent; (ii) that the injury was likely caused by [Appellees]; and (iii) that the injury would likely be redressed by judicial relief.” TransUnion LLC v. Ramirez, 594 U.S. 413, 423 (2021) (citing Lujan v. Defs. of Wildlife, 504 U.S. 555, 560–61 (1992)).

The court had "little doubt" that the appellant's alleged injury - the diminishment of the value of its investment in Hobbs Winery - satisfied the "injury-in-fact" requirement. "Such a monetary injury is undoubtedly 'concrete.' Indeed, the Supreme Court has long recognized that 'traditional tangible harms,' such as monetary harms, 'readily qualify as concrete injuries under Article III.'" TransUnion LLC, 594 U.S. at 425; see Spokeo, Inc. v. Robins, 578 U.S. 330, 340 (2016). Furthermore, the appellant's injury is "particularized" because it affects the appellant personally and individually, and the injury is "actual or imminent," not just "conjectural or hypothetical."

The causation requirement was satisfied because "[t]he allegedly unlawful registrations of Appellees’ marks cause a diminishment of value in Appellant’s Hobbs Winery ownership interest." And "there can be no doubt that Appellant’s injury would be redressed by a favorable decision."

The CAFC was therefore satisfied that the appellant met its burden as to Article III standing.

Entitlement to a Statutory Cause of Action

The question, then, was "whether Appellant falls within the class of plaintiffs who Congress has authorized to seek cancellation of Appellees' trademark registrations under 15 U.S.C. § 1064." The Board concluded that it did not. The CAFC agreed.

[W]e apply the analytical framework set forth by the Supreme Court in Lexmark, which provides two requirements to establish an entitlement to a statutory cause of action. 572 U.S. at 129; see Corcamore, 978 F.3d at 1305 (holding that Lexmark controls the statutory cause of action analysis under § 1064). First, Appellant must show that its interests fall within the “zone of interests” that Congress intended to protect in enacting the relevant statute. Lexmark, 572 U.S. at 129. Second, Appellant must show that its injuries are proximately caused by Appellees’ alleged violation of that statute. Id. at 132. In other words, Appellant must establish that its harm is not “too remote” from Appellees’ alleged unlawful conduct. Id. at 133.

The Lexmark analysis has "no meaningful, substantial difference" from the test traditionally applied by the CAFC: whether a trademark challenger has demonstrated "a real interest in cancelling the [registered trademarks at issue] and a reasonable belief that the [registered trademarks] are causing it damage." Each of the tests is meant to exclude only the claims of "mere intermeddlers."

A petition can satisfy the "zone of interests" requirement by showing that it has a "legitimate commercial interest" vis-a-vis the challenged mark. The court concluded that, because the only basis for the appellant's challenge is its minority interest in the owner of the mark, and not its own commercial activity, "it is not within the zone of interests entitled to seek cancellation of those marks under Section 1064."

That conclusion is supported by the Supreme Court’s guidance that Congress’s intent in enacting the Lanham Act was to provide a cause of action to persons engaged in commerce, not consumers, as well as our case law proscribing "mere intermeddlers" from seeking cancellation of challenged marks. * * * [N.B.: registrations are cancelled, not marks - ed.]. While Appellant, who, after all, owns up to 21.6% of Hobbs Winery, is not properly called an “intermeddler,” it indeed lacks the direct commercial interest in the registration at issue that the trademark laws contemplate as providing a basis for a cause of action

Finally, the CAFC observed that, even if the appellant's claims fell within the zone of interests of Section 1064, it could not satisfy the proximate causation requirement. The applicant's injury is derivative: absent injury to Hobbs Winery's mark, there can be no injury to appellant. In sum, the appellant's injury, like that of the landlord or the electric company mentioned in Lexmark, is too remote to provide the appellant with a cause of action under Section 1064.

Read comments and post your comment here.

TTABlogger comment: This decision does not bode well for Professor Curtin's appeal of the Board's RAPUNZEL decision. (TTABlogged here). BTW: Why didn't the winery appear as the petitioner here?

Text Copyright John L. Welch 2024.

Friday, May 24, 2024

The Top Ten Losing TTAB Arguments: 2001 Edition

In 2001, I first created my list of "The Top Ten Losing TTAB Arguments" in an article published in Allen's Trademark Digest. (pdf here). The article provided my commentary on the top ten losers, with exemplary cases. The 2024 list is slightly different. I do not claim that all of these arguments are automatic losers, but as to the 2024 list specifically, I think five of them are always losers (1, 2, 5, 7, and 10), three are nearly always losers (4, 8, and 9), and two are usually losers (3 and 6).

Read comments and post your comment here.

Text Copyright John L. Welch 2024.

TTABlog Test: Which of These Three Recent 2(d) Refusals Was/Were Reversed?

So far this year, the rate of affirmance for Section 2(d) refusals is just over 90%. The annual refusal rate typically hovers around 90%. Here are three recent TTAB decisions, at least one of which was reversed. How do you think they came out? Answers in first comment.

In re Rise Above, Serial No. 88735273 (May 13, 2024) [not precedential] (Opinion by Judge Peter W. Cataldo) [Section 2(d) refusal of the mark shown below, for various charitable services for promoting exercise, healthy eating, fitness and exercise training, and character enrichment to native youth, in view of the registered mark RISE ABOVE, for services including charitable services in the field of promoting exercise, healthy eating, fitness and exercise training, and character enrichment.]

In re Ayres Group, Serial No. 97246717 (May 13, 2024) [not precedential] (Opinion by Judge Christen M. English) [Section 2(d) refusal to register the mark shown below left, for "wine; red wine; rose wine; white wine all of the foregoing being marketed and sold at an associated hotel and related website," in view of the registered marks shown below right, for "wines."]

In re Pegasus Protein LLC, Serial No. 88616931 (May 21, 2024) [not precedential] (Opinion by Judge Mark Lebow) [Section 2(d) refusal of PEGASUS PROTEIN for "Powdered nutritional supplement drink mix containing protein powder" [PROTEIN disclaimed] in view of the registered mark PEGASUS for "Topical preparations, namely, sprays, gels and creams for enhancing sexual arousal; sexual enhancement supplements."]

Read comments and post your comment here.

TTABlog comment: See any WYHA?s

Text Copyright John L. Welch 2024.

Thursday, May 23, 2024

The Last Two Slides from My INTA Presentation

Thank you for attending the INTA presentation yesterday. Because of my own technical incompetence, the last two slides in my presentation yesterday were given short shrift. A few people said they would like to see them, so here they are. If you click on each one, you will get a larger picture.

Read comments and post your comment here.

TTABlogger comment: See you next year, I hope.

Text Copyright John L. Welch 2024.

Wednesday, May 22, 2024

Ted Davis: "Annual Review of U.S. Federal and State Case Law and T.T.A.B. Developments"

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 2024 Annual Meeting of INTA Atlanta."

Read comments and post your comment here.

Tuesday, May 21, 2024

"DREAM DECIDE DO" Fails to Function as a Trademark for Stationery and Printed Works, Says TTAB

The phrase DREAM DECIDE DO may sound like it came from a Taylor Swift song, but it wasn't a hit with the TTAB. The Board affirmed a refusal to register the proposed mark, finding that it fails to function as a source indicator for "Stationery; Blank notepads; Blank paper notebooks; Printed day planners; Printed desktop planners; Printed motivational cards; A series of printed books, printed articles, printed handouts and printed worksheets in the field of motivation and personal development." In re Financial Success Media, LLC, Serial No. 97087569 (May 10, 2024) [not precedential] (Opinion by Judge Cheryl S. Goodman).

The Board's assessment of whether the proposed mark functions as a trademark is based on whether the relevant public, i.e., purchasers or potential purchasers of the identified goods, would perceive DREAM DECIDE DO as a source identifier for those goods. "We look to the specimens and other evidence of record showing how the designation is actually used in the marketplace."

Examining Attorney Kim Teresa Moninghoff submitted marketplace evidence showing use of the phrase "Dream Decide Do” by third parties in connection with clothing, podcasts, career events, book teasers, and planners, and in blogposts and other social media. She argued that DREAM DECIDE DO is widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment, and is “commonly used as a motivational or coaching tool to convey the steps to achieving one’s dreams.”

Applicant pointed to the lack of evidence of use of DREAM DECIDE DO for planners or its other 16 goods. The Board, however, observed that the evidence showed individuals and businesses using this slogan in a non-trademark manner. "In prior cases, we have found evidence of usage by various businesses, or on other products and services, not limited to any particular sector, or particular goods, to be probative of informational use."

Moreover, "ornamental use of phrases on planners by third-parties, or variants of the designation, while not determinative, is relevant to the determination of whether DREAM DECIDE DO functions as a mark."

Applicant also criticized the amount of evidence as insufficient to establish widespread use. The Board was unmoved. "Although the volume of evidence in this case is not as large as in other Board cases, there is no specific rule as to the exact amount or type of evidence necessary to prove informational use."

Concluding that "[t]his common use by third parties of DREAM DECIDE DO and its variants, renders it less likely that the public would perceive the phrase as identifying a single commercial source," the Board affirmed the refusal to register."

Read comments and post your comment here.

TTABlogger comment: Do you think DREAM DECIDE DO could serve as a source indicator for an ice cream parlor? An ice cream flavor? The BLACK CARD case suggests that whether a mark fails to funciton depends on the goods/services involved.

Text Copyright John L. Welch 2024.

Monday, May 20, 2024

TTAB Finds CINNAMON DONUT STOUT to be Generic for . . . Guess What?

I don't drink a lot of beer - I want to keep my weigh down. But I don't think I would ever want a glass of CINNAMON DONUT STOUT. The Board was not enamored with the idea, either. It affirmed a refusal to register, on the Supplemental Register, the term CINNAMON DONUT STOUT for "beer" [STOUT disclaimed], finding it to be generic for the goods under Sections 23(c) and 45. Examining Attorney Raul Cordova "proffered clear and convincing evidence that beer is offered in a variety of flavors that describe the central, or key, aspect of the beer." In re Blake Farms Hard Apple Cider, LLC, Serial No. 90504414 (May 16, 2024) [not precedential] (Opinion by Judge Melanye K. Johnson).

Not surprisingly, the Board found the genus of the goods to be "beer" and the relevant purchasers to be "ordinary adult members of the public who are beer drinkers." As to the meaning of the proposed mark, applicant's specimen of use states: "Made with Blake’s Cider Mill famous donuts & locally sourced cold brew coffee, this stout has notes of rich chocolate, vanilla and cinnamon."

The Examining Attorney submitted third-party website evidence that included the terms "cinnamon donut" in the name of a beer. Based on that evidence, the Board found that "flavored beer is a type of beer within the genus “beer” defined by Applicant’s identification of goods."

When a term “directly names the most important or central aspect or purpose of [an] applicant’s goods” and would be understood by the relevant consumers as referring to a category of those goods, the term is generic. In re Cent. Sprinkler Co., 49 USPQ2d 1194, 1199 (TTAB 1998) [ATTIC for sprinklers]. *** Here, flavor, including flavors resulting in beer tasting like another food or beverage, is an important and central aspect for beer. Specifically, the flavor “cinnamon donut” refers to a key, or central, aspect of Applicant’s Goods as well as the goods of several third parties.

The Board further noted that an adjective may serve as a generic term. See Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1366 (TTAB 2013) [FOOTLONG for sandwiches]. "The primary significance of 'cinnamon donut' is as a generic adjective for cinnamon donut beer, and the fact that CINNAMON DONUT STOUT is not the common name of one type of beer does not mean that the term is registrable."

Here, the term “cinnamon donut” immediately describes the most important or central aspect of Applicant’s Goods — the “cinnamon donut” flavor. Thus, “cinnamon donut” is a term that identifies a category of beer.

The Board concluded that the Examining Attorney met the USPTO's burden of proving genericness by "clear and convincing evidence." In re Cordua Rests., 118 USPQ2d at 1635. And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: WYHA? Perhaps you would prefer a Blueberry Muffin? Note that last year, in Uman Diagnostics, a precedential decision, the Board ruled that the standard for proof of genericness is a "preponderance of the evidence." See Michael Hall's article here. Here the Board said the standard is "clear and convincing." What gives?

Text Copyright John L. Welch 2024.

Friday, May 17, 2024

Chestek PLLC Files Cert Petition for Supreme Court Review of CAFC Decision Upholding Domicile Address Requirement

Chestek PLLC has filed a petition for writ of certiorari, asking the Supreme Court to review the CAFC's decision [TTABlogged here] upholding the TTAB's affirmance [TTABlogged here] of a refusal to register the mark CHESTEK LEGAL for "legal services," based on Applicant Chestek PLLC's failure to provide its "domicile address." Chestek PLLC v. Vidal, No. 223-1217 (filed May 13, 2024) (petition here) (S. Ct. docket here).

As noted, the USPTO refused to register the mark CHESTEK LEGAL based on Chestek PLLC's failure to provide its "domicile address." Chestek listed a post office address, but under Trademark Rules 2.32(a)(2) and 2.189 a post office box is not a street address. Conceding that it failed to comply with the domicile address requirement, Chestek argued on appeal to the CAFC that the Rules were unlawfully promulgated under the Administrative Procedure Act (APA), but the Board disagreed and the CAFC sided with the Board.

The CAFC observed that Section 553(b)(A) of the APA "does not require the formalities of notice-and-comment for 'interpretative rules, general statement of policy, or rules of agency organization, procedure, or practice.'" Chestek argued that the domicile address requirement is not an "interpretative" rule but rather a "substantive" rule requiring notice-and-comment. Alternatively, Chestek argued that notice-and-comment is required even for interpretative rules. The CAFC was not persuaded.

The court concluded that the USPTO's requirement is not a substantive rule because it "does not alter the substantive standards by which the USPTO evaluates trademark applications, e.g., a mark's use in commerce or distinctiveness." As to the alternative argument, Chestek offered no support for displacing the procedural exceptions to notice-and-comment rulemaking contained within Section 553(b).

The petition for certiorari states the Question Presented as: "Whether the PTO is exempt from notice-and-comment requirements when exercising its rulemaking power under 35 U.S.C. § 2(b)(2)."

Read comments and post your comment here.

TTABlogger comment: The deadline for filing an amicus brief is June 14th.

Text Copyright John L. Welch 2024.

Thursday, May 16, 2024

TTAB Affirms Refusal to Register Muffler Configuration Due to Lack of Acquired Distinctiveness

Rarely does the Board find that a product configuration clears the hurdles of functionality and acquired distinctiveness to reach the registrability finish line. Here, the first hurdle was set aside because the Board declined to consider the functionality issue. Applicant Don Emler failed to clear the second hurdle. In re Don Emler, Serial No. 90688260 (May 13, 2024) [not precedential] (Opinion by Judge Mark A. Thurmon).

Emler applied to register a product configuration for motorcycle mufflers, and particularly only "the slanted line at the connection between the canister portion of the muffler" and the outlet end cap, which Emler refers to as a "Slashcut" design. Emler sought registration of this single feature under Section 2(f), since a product configuration can never be inherently distinctive (Wal-Mart).

The Board observed that Emler's burden of proof to establish acquired distinctiveness "is particularly heavy where an applicant seeks to establish the distinctiveness of a product design, which consumers are predisposed to view as useful or appealing, not source-indicating."

The question, then, was whether the Slashcut or slanted line "has become distinctive to motorcycle consumers." The Board noted that, although the identified goods are limited to motorcycle exhaust components, the application does not include any limitation as to the type of motorcycle. "This broad scope is important here, because there are many kinds of motorcycles, ranging from scooters to high-performance racing motorcycles to off-road motorcycles." Therefore, the relevant consumers include all motorcycle riders and owners.

Emler claimed exclusive use of the Slashcut design element since 2005, with sales of about 15,000 units per year. "With almost twenty years of sales and no competitors using the same design, it is at least plausible that the proposed mark has become distinctive within its primary market segment."

Emler submitted several declarations from individuals engaged in motorcycle-related businesses, attesting that they recognize the Slashcut design as a source identifier. The Board found the declarations to be probative, but it saw "a theme running through all of Applicant’s evidence:" the evidence related to mufflers used primarily with off road or motocross motorcycles.

Applicant’s evidence may be somewhat probative of acquired distinctiveness within the off road and motocross motorcycle segment. The declarations are detailed and specific to each declarant, and the declarants are highly experienced persons within the off road and motocross communities. But therein lies the problem. Applicant’s evidence is limited to the off road and motocross market segment, but the Application is not. The Application identifies motorcycle exhausts more generally, and includes, therefore, street motorcycle exhausts, too. For this reason alone, we find Applicant has failed to show acquired distinctiveness for the proposed mark.

Furthermore, the slanted line or Slashcut "is likely just one example of a visible angled line somewhere on the exterior of the motorcycle. It is not a prominent feature, even of the muffler itself, and when viewed within the context of a motorcycle with many different parts, the challenge of proving acquired distinctiveness will be daunting."

The Board advised Emler that if he continues to pursue trademark protection for the proposed mark, he would have to present a substantially stronger record than he presented here. 

Read comments and post your comment here.

TTABlogger comment: Should Emler file a new application limiting the identification of goods to mufflers for off-road and motocross motorcycles?

Text Copyright John L. Welch 2024.

Wednesday, May 15, 2024

TTAB Orders Cancellation of "THE PLIMSOULS" Registration on Ownership and Likelihood of Confusion Grounds, Rejects Abandonment Claim

In another of those battles between a rock band and one of its members, the Board again sided with the band, granting a petition for cancellation of a registration for THE PLIMSOULS for "entertainment in the nature of live performances by a musical band." The Board ruled that the band was entitled to challenge the registration, had not abandoned the mark, and had proved its claim of ownership of the mark and likelihood of confusion based on its prior use of the same mark for the same services. The Plimsouls v. Edward David Munoz, Cancellation No. 92076883 (May 8, 2024) [not precedential] (Opinion by Judge Michael B. Adlin).

"The Plimsouls" band was formed in California in 1979 with four band members, Respondent Munoz being one of the four equal partners. After their "heyday" in the early 1980’s, the Plimsouls had alternating periods of activity and inactivity: "typical of bands that last as long as ours has,” said Peter Case. During its breaks from performing, the band continued to release recordings in new digital formats including compact disc and electronic downloads, licensed its music for streaming, managed its copyrights, and collected royalties.

Entitlement to a Statutory Cause of Action: The Board observed that a band is entitled to seek cancellation of a registration for its own name, "especially when that registration is owned by another performer that plays not only the same type of music but the same exact songs." Respondent Munoz asserted that the petitioner had failed to provide any evidence that it was a legal entity, but the Board pointed out that under California law, "the association of two or more persons to carry on as co-owners a business for profit forms a partnership, whether or not the persons intend to form a partnership." Moreover, "[a] person who receives a share of the profits of a business is presumed to be a partner in the business."

In short, Petitioner has used THE PLIMSOULS for live musical performances over the years, plans to continue doing so, and in any event has been an ongoing for-profit concern (partnership) that has collected royalties on its songs and recordings for the last 40+ years. There is no evidence that the Plimsouls partnership ever dissolved. The band is entitled to request cancellation of the involved registration for its name.

Abandonment: The Board framed the question as "whether the continued sale and streaming of Petitioner's recorded music throughout these periods would lead consumers encountering another 'Plimsouls' group performing live, such as Respondent's, to perceive Respondent’s group as originating from the same source as Petitioner’s band."

Respondent Munoz argued that Petitioner abandoned the mark because "none of the members of The Plimsouls besides [Respondent] have performed live under that name since 2007 and they have not engaged in any commercial activity at all with respect to the mark since they released an album in 2012." The Board found otherwise:

We disagree, notwithstanding that there have been multiple three-year periods in which the Plimsouls did not perform live, because the group was still using the mark for, inter alia, a number of recordings, and earning royalties from those recordings. ***

Since 2012 the group continued to license its music for streaming, manage its copyrights and collect royalties. Since releasing its first EP in 1981, the band continuously sold its recordings. "Courts have repeatedly found that these types of activities by musical groups disprove claims of abandonment."

Ownership: The Board found it "crystal clear" that the parties intended to form, and jointly benefit from, a partnership consisting of four members: Case, Ramirez, Pahoa, and Respondent Munoz. Each of the partners had an "equal say." Respondent not only continued to earn royalties from the band’s partnership after he registered THE PLIMSOULS mark in his own name, but he also joined with his partners in managing the band’s copyrights.

Respondent had and continues to have his cake (royalties from the band). But he cannot eat it too (exclusively own the band’s mark), when the record reveals the parties’ joint intention and expectation since 1979 that they would own the mark THE PLIMSOULS together, in partnership.

The evidence was also crystal clear that the public associates the mark THE PLIMSOULS with the group, not just Munoz, its lead guitarist. Furthermore, the public will look to Petitioner, the band they know from recordings, concerts, Valley Girl [performance] and press reports, to stand behind the quality of goods or services offered under THE PLIMSOULS."

The Board concluded that Respondent Munoz "did not solely own THE PLIMSOULS and as a result Respondent’s application was void ab initio."

Likelihood of Confusion: The Board had "little doubt" that confusion is likely. "Petitioner’s sound recordings, which remain on sale, and Respondent’s 'Plimsouls' performances 'draw upon the same source of consumer goodwill.'" See Wonderbread 5, 115 USPQ2d at 1301-02 (“when the parties are claiming rights in the same mark for the same goods or services, likelihood of confusion is inevitable”).

Conclusion: "Petitioner owns the mark THE PLIMSOULS, Respondent does not, and Respondent’s use of that mark will only cause further confusion."

Read comments and post your comment here.

TTABlogger comment: Never heard of them. By the way, the name was a play on the English word for sneakers, "plimsolls." Never heard of them either.

Text Copyright John L. Welch 2024.