TTABlog Test: Are Candy and Nuts Related for Section 2(d) Purposes?

The USPTO refused to register the mark CREME DE LA CREME for raw and processed nuts, including candied nuts, "supplied to grocery chains and wholesale grocers," finding confusion likely with the mark CRÈME DE LA CRÈME registered (on the Supplemental Register) for "candy.” Applicant Hines Nut argued that the cited mark is laudatory, commonly used, and therefore weak and entitled to a narrow scope of protection. How do you think this appeal came out? In re Hines Nut Company, Ltd., Serial No. 90672644 (December 5, 2023) [not precedential] (Opinion by Judge David K. Heasley).

Hines provided no evidence to support its assertion that "crème de la crème" is widely used. The Board, however, agreed that the term is laudatory, noting that "cream of the cream" in French means "the very best." The Board also observed that "[o]n the whole, '[i]t is well-established that a mark registered on the Supplemental Register would be categorized as weak . . . .'" 

It is also well settled that a mark registered on the Supplemental Register can be cited as a basis for refusing registration of another mark under Section 2(d) of the Act. Moreover, "[i]n the ex parte context, the Office does not and cannot question the validity of a mark in a registration cited against another under Section 2(d)." And the Board pointed out that "there is no categorical rule that citation of registrations on the Supplemental Register is limited to registrations of 'substantially identical' marks for 'substantially similar goods,' or that a different test for likelihood of confusion should be applied in such cases."

The Board found under the sixth DuPont factor that "the cited mark is laudatory and conceptually weak, but is still presumed valid and enforceable under Section 2(d)."

Applicant Hines did not argue that consumers would distinguish the marks based on their slight dissimilarity. Instead, it maintained that in view of the weakness of the cited mark, confusion is unlikely due to differences in the goods and channels of trade.

Examining Attorney Shari Gadson did not cite any third-party registrations, she did provide nine third-party websites—LaurasCandy.com, NutsToYou.com, SwissColony.com, HarryandDavid.com, OliveandCocoa.com, OhNuts.com, NassauCandy.com, RoyalWholesaleCandy.com, and WeaverNut.com—showing that these entities offer candy and nuts under the same mark.

Hines asserted that this Internet evidence focused on nuts that are covered in chocolate or sold in connection with chocolate. The Board noted, however, that the subject application includes "candied nuts. "Similarity of any item identified in a Class supports a finding of confusing similarity as to that entire class." Moreover, the third-party evidence "also showed single sources offering candy on the one hand and plain, raw, uncandied nuts on the other, under a single mark."

Hines pointed to the limitation in its identification of goods that narrows its channels of trade to nuts "supplied to grocery chains and wholesale grocers." It argued that registrant sells candy under its mark solely for fundraising purposes, “and thus, a consumer searching for products in connection with the Cited Mark would not come across the applied-for mark where the goods are sold wholesale/retail." However, there were no limitations as to channels of trade in the cited registration, and so the Board must presume that registrant’s candy goods "move in all channels of trade normal for such goods and are available to all the usual prospective purchasers of goods of that type."

Applicant’s limitation in its identification of goods does not avoid an overlap with Registrant’s channels of trade or classes of customers. Registrant’s candies, like Applicant’s nuts, could be “supplied to grocery chains and wholesale grocers.”

The Board "consider[s] confusion by end purchasers, as well as intermediate wholesalers and retailers, such as grocery chains."

On consideration of all relevant arguments, evidence, and applicable law, we find the cited registered mark CRÈME DE LA CRÈME conceptually weak. Nonetheless, we find it very similar to the applied-for mark, CREME DE LA CREME, for related goods that would travel through overlapping channels of trade. On balance, we find a likelihood of confusion under Section 2(d).

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Could Hines petition to restrict the cited registration under Section 18 to avoid likely confusion?

Text Copyright John L. Welch 2023.

CAFC Upholds TTAB's Judgment on the Pleadings Based on Dissimilarity of Marks in VERITÉ Opposition

The CAFC affirmed the TTAB's decision [TTABlogged here] granting a motion for judgment on the pleadings (FRCP 12(c)) on the ground that Applicant Grands Domaines' word-and-design mark shown below, for "wines made from grapes from Côtes de Provence in accordance with adapted standards," is not confusingly similar to Opposer Jackson Family Farms' common law mark VERITÉ for wine and its registered mark VERITÉ for "alcoholic beverages except beers." Jackson Family Farms, LLC v. Grands Domaines Du Littoral, Appeal No. 2023-1675 (Fed. Cir. December 5, 2023) [not precedential].

The Board concluded there was "no genuine dispute of material fact that the marks at issue are distinct in appearance," and so "a likelihood of confusion cannot exist as a matter of law," even when considering all other DuPont factors to weigh in favor of Jackson Family Farms.

On this appeal, Jackson argued that the marks are similar because the "VÉRITÉ mark appears as the first term of [a]pplicant’s three-word mark VÉRITÉ DU TERROIR" and therefore VÉRITÉ is the dominant portion of applicant’s mark. It further argued that sixteen of the twenty-two words on applicant's label were disclaimed and thus entitled to less weight in the likelihood of confusion analysis. The CAFC, however, agreed with the Board that Jackson’s focus on the word “VÉRITÉ” ignored other, more prominent portions of applicant’s mark and did not consider the mark as a whole.

The Board did not err in determining that CHATEAU LA GORDONNE, not VÉRITÉ, is the dominant part of applicant’s mark. As the Board explained, CHATEAU LA GORDONNE is displayed in a larger font and different coloring relative to other elements of the label. Therefore, the Board did not err in attributing greater weight to the dominant CHATEAU LA GORDONNE portion of applicant’s mark when analyzing the similarities of the two marks.

Jackson contended that CHATEAU LA GORDONNE is a house mark and VÉRITÉ DU TERROIR is "its own unitary composite product name," and therefore the presence of the CHATEAU LA GORDONNE portion does not avoid confusion as a matter of law because both marks contain the term VÉRITÉ. The court, however, pointed out that there was no support for the assertion that CHATEAU LA GORDONNE is a house mark that "can be stripped out for likelihood of confusion purposes." "The Board was correct to consider the presence of CHATEAU LA GORDONNE and the fact that it is the dominant portion of the mark."

Jackson cited several cases finding similarity between marks when one mark entirely encompasses the other, but the court pointed out that those cases "involved situations in which the only differences between the marks was the addition of a few words to the dominant portion of the mark." [E.g., “STONE LION CAPITAL” and “LION CAPITAL”; JOSE GASPAR GOLD and GASPAR's ALE. Here, the differences in marks "includes the addition of over twenty words, some of which are more prominently displayed than VÉRITÉ." "The Board’s conclusion that the marks are dissimilar was not erroneous."

Finally, Jackson argued that the disclaimed words in applicant's mark should be given no consideration, but the court pointed out that, although those elements may receive less weight in considering the similarity of the marks, they cannot be ignored. Moroever, the word GORDONNE was not disclaimed.

The CAFC found "nothing inherently improper about making a likelihood of confusion determination solely based on dissimilarity of the marks at the pleading stage." It agreed with the Board's conclusion that "a likelihood of confusion between the marks could not exist as a matter of law, even when taking all of the other DuPont factors to weigh in favor of opposer."

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2023.

TTAB Finds "STREAM THEATERS" Generic For .... Guess What?

The Board affirmed a refusal to register the proposed mark STREAM THEATRES on the Supplemental Register for, inter alia, the streaming of audiovisual material during in-person events at movie theaters and other venues [STREAM disclaimed], finding the term to be generic for the services. "Consumers, in the context of Applicant's services . . . would understand the term STREAM THEATRES to refer to theatres where entertainment is streamed." In re Christian J. A. O. Faloye and John C. R. Cato, Serial No. 90260733 (December 1, 2023) [not precedential] (Opinion by Judge Karen S. Kuhlke).

Examining Attorney Caroline Wood first refused registration under Section 2(e)(1) on the ground of mere descriptiveness. Applicants then filed an Amendment to Allege Use and requested registration on the Supplemental Register, leading the Examining Attorney to refuse registration under Sections 23(c) and 45 on the ground of genericness.

The Board found that that the identification of services in the application appropriately set forth the genus of services at issue. The record included definitions of the words STREAM, STREAMING, and THEATRE and excerpts from third-party websites using the terms “stream[ing]” and “theater[re].

Applicant principally relied on the limitation restricting its services to "in-person" events that take place at theaters and other venues, pointing out that the Examining Attorney's evidence showed us of the terms only in connection with streaming to private venues. The Board agreed that this evidence was "not fully on point."

However, while the evidence of usage presented by the Examining Attorney references a different streaming type of service (streaming to private venues), it does show that streaming, a key aspect of Applicants’ services, is generic for the service of streaming. These uses do serve to show how a consumer would understand the word STREAM in connection with a service that provides streaming to refer to a key aspect of the services. Similarly, the evidence shows consumers’ understanding of activity in a theater being streamed to private venues -- “stream theater” is used generically to refer to that service. Here, the service is the reverse, streaming content at the theater, but use of these words together in this context also refers to the activity (stream) and venue (theatre).

Applicant argued that none of the evidence showed use of its mark "as a whole," but the Board observed that it "may consider the understood meanings of portions of Applicants' [proposed mark] as a step in the process towards our ultimate finding of whether the proposed mark, as a whole, is generic for Applicants' services." 

The Board found that the dictionary definitions combined with applicants' specimens sufficed to establish that STREAM THEATRES "would be understood by consumers to refer to the genus of the services, providing streaming at in-person events in a theater." 

Applicants have already disclaimed the word STREAM on the Supplemental Register. What remains is the word THEATRES and the combination STREAM THEATRES. THEATRE is generic for a key aspect of the services, i.e., they are provided at in-person events at movie theatres and other venues.

The Board rejected applicants' contention that that the proposed mark presents an incongruous combination or a meaning "beyond their generic meanings that tell a consumer streaming takes place in a theater." Furthermore, even if applicants were the first or only users of the term, that does not support registration of generic wording. And the “fact that there is no evidence of third-party use of the precise term [STREAM THEATRES] is not, by itself, necessarily fatal to a finding of genericness.”

Overall, the evidence shows STREAM THEATRES names the services or at a minimum refers to the key aspects of the services, streaming in a theater.  Thus, Applicants’ proposed mark is generic for the identified services.

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2023.

KEEP AMERICA GREAT! Fails to Function as a Trademark for Ornamental Novelty Pins, Says TTAB

Not surprisingly, the Board upheld a refusal to register the proposed mark KEEP AMERICA GREAT! for ornamental novelty pins, finding that the phrase is "a political and cultural message one that is too commonly used, often ornamentally, in connection with novelty pins and other products for it to be perceived as a trademark." In re America in Harms Way, Serial No. 87976064 (November 30, 2023) [not precedential] (Opinion by Judge Michael B. Adlin).

Examining Attorney Michael Furda based the refusal primarily on third-party use, including use by the media, of KEEP AMERICA GREAT!. He contended that the phrase "has been widely used by many different sources as a political informational message to convey support for ideas espoused by Donald Trump."

Applicant focused mainly on former President Trump ’s use of, and attempts to protect, the proposed mark, as well as the related Trump campaign slogan MAKE AMERICA GREAT AGAIN. "However, Applicant does not directly grapple with the evidence that (1) 'many different sources' use the proposed mark KEEP AMERICA GREAT!, or (2) the phrase is not used only by former President Trump and his campaigns, but is also, more broadly, 'associated with' him."

Moreover, Mr. Trump is not the only user of the proposed mark. The Biden camp acquired the domain name "keepamericagreat.com" for a web site that "features what it says are promises made by Mr. Trump that were broken." And many other candidates used the slogan in the 2018 mid-term elections,

Numerous vendors also use the proposed mark on goods, often ornamentally, with no evidence of any affiliation with Mr. Trump and no indication that KEEP AMERICA GREAT is a proprietary term. At the same time, many third parties use the phrase to express specific support for Trump campaigns,

The diverse collection of buttons and pins (and other products), offered in inconsistent forms and styles, by apparently unrelated sellers/competitors, indicates that the proposed mark is widely used by many, without direction from former President Trump or his campaigns. Some third-party users appear to have primarily commercial motives, while others transmit political or cultural messages in connection with their offers for sale.

The Board observed that the question at hand is whether consumers would perceive the phrase as identifying the source or origin of applicant’s novelty pins. To make this determination, the Board looked to the specimens of use to see how the designation is used in the marketplace.

[T]he back of Applicant’s pins indicate that they are a “PRODUCT OF KEEP AMERICA GREAT!,” and the involved application indicates that “KEEP AMERICA GREAT! is Applicant’s DBA. Thus, Applicant’s ornamental novelty pins purport to identify Applicant as their source. However, “[m]ere intent that a phrase function as a trademark is not enough in and of itself to make it a trademark.” 

The Board was unimpressed by applicant's evidence. 

Put simply, when consumers are exposed to so many different sources of  'KEEP AMERICA GREAT!' hats, stickers, pins, buttons, songs, flags, clothes, signs and other products, the phrase cannot identify any particular source of these goods. The phrase is instead a political and cultural message, used by people who share political and cultural views to affiliate themselves with, and promote, former President Trump and his beliefs.

Applicant argued that it was the first user of KEEP AMERICA GREAT! in commerce, but the Board pointed out that, even if true, that would be irrelevant. "The problem is that the phrase does not function as a mark, and therefore it cannot be protected as such, no matter when it was first used, or by whom."

Finally, the Board proclaimed that "Applicant should not be able to deny competitors (who according to the record also use the phrase) the right to use it freely.

Read comments and post your comment here.

TTABlogger comment: Another one bites the dust. Surely, this is a WYHA?

Text Copyright John L. Welch 2023.

Lack of Actual Actual Confusion Leads to Dismissal of FICO Challenge to FIDO for Fraud Prevention Software and Services

In a 79-page opinion in this nearly eight-year-old proceeding, the Board dismissed Fair Issac's challenges to registration of the mark FIDO, finding confusion unlikely with the registered mark FICO, both marks for goods and services in the field of fraud prevention. The Board found that the differences in the marks outweighed their similarities, but most significant was the lack of actual confusion despite nine years of co-existence in the marketplace. Judge Bergsman's opinion (paper no. 172 in TTABVUE, the first 15 pages of which set out the parties' respective goods and services) runs smoothly through the DuPont factors and is well worth a read. This blog post will attempt to hit the highlights. Fair Isaac Corporation v. FIDO Alliance, Inc., Consolidated Oppositions Nos. 91225634 and 91249276 and Cancellation No. 92071706 (December 1, 2023) [not precedential] (Opinion by Judge Marc A. Bergsman).

The parties stipulated that Fair Isaac had standing to bring its claims, but the Board ruled early on that the "parties may not stipulate to a plaintiff's standing [i.e., entitlement to bring an opposition and/or cancellation proceeding] in the absence of supporting facts." The Board then found that Fair Isaac had established its "standing." Fair Isaac also proved its priority.

The Board began by noting that "[i]f confusion is likely even between just one good or service at issue in an affected International Class in an asserted registration and one good or service in an application, that is enough to sustain an opposition as to the goods or services in the affected class in the application."

However, the Board found the differences between FICO and FIDO to be "significant enough to outweigh the similarities and that the difference in the resulting commercial impression weighs against a finding that confusion is likely."

In sum, while the marks are similar in some parameters examined in the abstract, FIDO has a connotation that FICO does not and has a different second consonant sound (and may also be pronounced by some with a different first vowel sound). While each trademark case is unique and must be decided on its own facts, the evidence here calls to mind our decision in In re Reach Electronics, Inc., 175 USPQ 734 (TTAB 1972) ("'REAC' and 'REACH' are literally words apart from each other. The one letter difference referred to by the examiner is quite significant herein because 'REACH' is a commonly used dictionary word which possesses a meaning unlike 'REAC' which is and would be recognized as a play on ‘react’ or ‘reactor’. And by reason thereof, 'REACH' would be readily distinguishable from 'REAC' in appearance, and it does not sound like 'REAC' when spoken.")

As to the goods and services, the Board concluded that, although they are "related in the general sense in that they both play a role in combatting fraud, Opposer’s directly and Applicant’s indirectly," they differ in nature. Fair Isaac’s goods and services examine transactions after the fact based on data; applicant’s services "simply restrict[] access to computer systems to people in possession of particular objects or credentials (irrespective of whether the access is for the purpose of engaging in a commercial transaction or some other purpose)."

The Board applied the Mason factors in rejecting Fair Isaac's zone-of-natural expansion claim, observing that that "the claimed expansion would require technology that is different from the data-driven predictive technology that is explained in Opposer’s promotional material and referenced in the identifications of services in its registrations." 

The Board further found that, although the trade channels and classes of customers overlap, the customers for the goods and services are "quite sophisticated, careful purchasers" who are therefore "less prone to casual purchasing behavior, which in turn decreases the potential for source confusion."

[W]hile the evidence under the DuPont factor that assesses both the “buyers to whom sales are made” and also “[t]he conditions under which” those sales are made (“i.e., ‘impulse’ vs. careful, sophisticated purchasing”) pull in opposing directions, the evidence here convinces us that sophisticated purchasing is the overriding consideration. This factor, on balance, supports a finding that confusion is not likely.

Fair Isaac contended that the FICO mark is famous, but its evidence did not address the fraud prevention market, and so the Board accorded the mark "no more and no less than the normal strength accorded any inherently-distinctive registered mark."

The lack of actual confusion evidence weighed heavily against Fair Isaac. The Board deemed it "significant that two such sophisticated, large, national companies have been out in the marketplace dealing with the same types of corporate customers and, in some instances, the same companies, and yet neither is aware of any evidence that, at any time over the last nine years, any of their actual or potential customers has been confused as to the source of the parties’ respective goods and services."

The Board found DuPont factors 9-12 to be neutral. Under the 13th factor, Fair Isaac argued that applicant's adoption of the FIDO mark was in bad faith because applicant was aware that the FICO mark was well known in connection with credit scores. The Board, however, pointed out that "adoption of a mark with knowledge of a senior user’s mark, even if the senior user’s mark was listed in a trademark search, does not amount to bad faith (i.e., an intent to confuse)." 

The factor we think is most significant on the evidence and in the circumstances of this case is that there are no known instances of confusion. Also significant is the difference in the marks’ connotations and the sophistication of the corporate consumers and care that the highly-placed individuals who purchase (or, in Applicant’s case, license) the business-oriented products and services here. The fact that there is only a modest relationship between the goods and services also supports our conclusion. These factors outweigh the overlap in trade channels and customers and the modest relationship between the goods and services.

Read comments and post your comment here.

TTABlogger comment: Looking at just the goods and services, one might have guessed that Fair Issacs would win.

Text Copyright John L. Welch 2023.

TTABlog Test: Are these Two Design Marks Confusable (for Rice)?

Global Commodities petitioned for cancellation of a registration for the mark shown below left, claiming likely confusion with its registered mark shown below right, both for "rice." Since the goods are identical, a lesser degree of similarity between the marks is needed to support the Section 2(d) claim, but are the marks close enough to cause source confusion? Global Commodities, Inc. v. Capital Distributors, LLC and Capital Imports, LLC., Cancellation No. 92078857 (November 29, 2023) [not precedential] (Opinion by Judge Mark A. Thurmon).

The Board found petitioner's "fawn" design mark to be inherently distinctive. Three third-party registrations submitted by respondents, without any evidence of actual use, were "insufficient in number to be probative of any conceptual weakness of Petitioner’s fawn mark for rice."

As to commercial strength, there was no brand awareness evidence in the record and nothing to place the petitioner's sales figures in context. Evidence of third-party use of "deer" design marks, albeit without sales data, was "sufficient to show that a deer design has been adopted and used as a trademark for rice to a nontrivial extent." There was also evidence of four other rice products on the market that feature deer in their packaging. The Board concluded that petitioner’s fawn mark is commercially weak in the market for rice, reducing the scope of protection to be accorded.

Turning to a comparison of the marks, The Board found them to be "not similar in appearance:"

Petitioner’s fawn mark shows an animal with visible spots on its side and curved antlers. The mark creates a sense of motion or action, as the fawn is leaping or running. The entire mark is the fawn in motion. Respondents’ impala mark shows an animal standing and most of the red outline of a heart above the animal. There are no spots on this animal and it is not in motion. The animal appears alert, but is not leaping or running. This animal has no antlers or horns.

The Board acknowledged that the marks feature "somewhat similar animals." Petitioner argued that respondents’ mark is a deer, not an impala, and asserted that "[m]ost people cannot tell the difference between an Impala and a deer, because both of these animals are so similar. Anyone seeing Capital’s mark will think that it is a deer." [FWIW: I agree. I think of an Impala as a Chevrolet - ed.]. The Board was unmoved.

We find few similarities in these two marks, regardless of what kind of animal consumers believe is shown in Respondents’ mark. Even if consumers think both animals are deer, they are not similar. One mark shows a juvenile animal—the spots on the side are consistent with Petitioner’s animal being a young deer—while the other mark shows what appears to be a mature animal.

The marks also differ visually in terms of the motion or lack of motion perceptible from the appearance of the marks. Petitioner’s young deer is in motion, either running or leaping. Its body is elongated and its legs extended in front and behind the animal. None of these features are found in Respondents’ mark, which features a stationary animal, with an alert look. One mark is in motion, while the other is not. Consumers are likely to recall such a striking difference.

Finally, the red heart outline featured prominently above the animal in Respondents’ mark is absent from Petitioner’s fawn mark. Respondents’ claim color, so the red color is part of their mark. The addition of a visually significant feature is also something consumers are likely to recall.

The Board found the remaining DuPont factors to be neutral. It concluded that the first DuPont factor outweighed the facts that the goods and channels of trade factor are identical. Adding the weakness of petitioner's mark made the result "clear." And so, the Board denied the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: How did you do?

Text Copyright John L. Welch 2023.

TTAB Posts December 2023 Hearing Schedule

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

December 5, 2023 - 2 PM: Omegle.com, LLC v. Bad Kittty's Dad, LDA, Oppositions Nos. 91249511 and Cancellation No. 92072561 [Section 2(d) challenges to registration of the mark OMETV for, inter alia, internet video chat rooms, in view of opposer's registered mark OMEGLE for online chat services.]

December 12, 2023 - 2 PM: In re Cuts Clothing Inc Serial No. 90880357 [Section 2(d) refusal to register VERSAKNIT for "textile fabrics for the manufacture of clothing" in view of the registered marks VERSAFLEX for “Non-woven textile fabrics” and VERSATECH for "Woven fabric for use in the manufacture of apparel and other related uses.”]

December 13, 2023 - 1 PM: Tiarra Hamlett and Michael Hamlett Jr. v. Bronx Native composed of Giancarlos Martinez, Roselyn Grullon and Amaurys Grullon, Cancellation No. 92077944 [Petition for cancellation of a registration for the mark BRONX NATIVE for various clothing items [BRONX disclaimed], in view of the registered mark THE BRONX BRAND for overlapping clothing items [BRAND disclaimed]].

Read comments and post your comment here.

TTABlog comment: See anything interesting? Predictions?/span>

Text Copyright John L. Welch 2023.

CAFC Sends Back TTAB's "GET ORDAINED" Decision: Board Ignored Its Own Policy Regarding Waiver of Unargued Claims

Well, this is a strange one. The CAFC reversed the Board's decision sustaining an opposition to registration of GET ORDAINED for retail store services and ecclesiastical services, remanding the case for further consideration. The Board found the phrase so commonly used that consumers will not perceive it as a source indicator pointing uniquely to the applicant. Alternatively, the Board found the phrase to be merely descriptive and lacking secondary meaning. [TTABlogged here]. However, Opposer AMM had made no argument regarding applicant's retail store services, and so the court sent the case back to the TTAB to consider why the Board did not apply its usual waiver-of-argument policy with respect to those services. Universal Life Church Monastery Storehouse v. American Marriage Ministries, Appeal No. 2022-1744 (Fed. Cir. November 22, 2023).

The CAFC was unable to square the Board's decision with the usual waiver practice. Despite the failure of AMM to refer to its Class 35-specific claims in its briefs, the Board went ahead and adjudicated those claims without explaining why it did not consider them waived.

In sum, we determine that (1) the Board has an established practice of considering unargued claims to be waived, (2) AMM did not refer to or argue any Class 35- specific claims in its trial briefs, and (3) the Board considered the Class 35-specific services but did not explain why it did not consider these claims to be waived in view of its established waiver practice. We accordingly hold that the Board acted arbitrarily and capriciously by departing from its established practice without providing a reasoned explanation for the departure.5 For that reason, we vacate the Board’s decision as to ULC Monastery’s Class 35-specific services.

The CAFC did not decide whether the Board may have a basis "for deeming AMM’s opposition to ULC Monastery’s Class 35 application not to be waived, or for excusing any waiver." If the Board on remand decides to "reconsider" ULC Monastery’s retail store services, the Board should ensure that its analysis has a basis in the record. 

The Board’s decision laid out a summary of the relied-on evidence of record. Opposition Decision, 2022 WL 500926, at *4–7. While this evidence relates to ULC Monastery’s ecclesiastical services, the Board did not explain its pertinence to ULC Monastery’s online retail store services. Moreover, the Board’s findings specific to online retail store services lack any citations to the record. Id. at *7, 11, 13. On remand, for its mere descriptiveness and failure-to-function analyses with respect to ULC Monastery’s online retail store services, the Board should “assure that the requisite findings are made, based on evidence of record” and “explain the reasoning by which the findings are deemed to support” the Board’s decision. 

Read comments and post your comment here.

TTABlogger comment: It appears that the parties will agree to dismiss the claims regarding the retail store services. BTW, the CAFC says "forfeiture" would be a more appropriate term than "waiver," since the latter is "the intentional relinquishment or abandment of a known right."

Text Copyright John L. Welch 2023.

Precedential No. 34: TTAB Dismisses Monster Energy's Section 2(d) Claim On Summary Judgment Due to DIssimilarity of Design Marks

Deeming the first DuPont factor to be dispositive, the Board granted Applicant Critical Role, LLC's motion for summary judgment, dismissing Opposer's Monster Energy's Section 2(d) claim. Monster alleged a likelihood of confusion between its registered "Claw" design mark for various goods and services, and applicant's "Circled MV" design mark for goods and services in eight classes. Monster's unchallenged dilution claim remains pending, since dilution may exist "regardless of the presence or absence of actual or likely confusion.” 15 U.S.C. Section 1043(c)(1). Monster Energy Company v. Critical Role, LLC, 2023 USPQ2d 1382 (TTAB 2023) [precedential].

The Board characterized Monster's mark as "three downward jagged and crooked lines of approximately equal size that resemble claw scratches and are connected at right angles." Critical Role's mark (which it described as the "stylized letters ‘V’ and ‘M’ oriented vertically within a circle") "consists of smooth lines, with two lines curving down to follow the shape of a background circle, two shorter lines which are diagonal and meet in the middle of the design, and two additional, diagonal lines which appear above the other lines and extend from the background circle to meet in the middle of the design."

Unlike Applicant’s mark, there is nothing circular in Opposer’s Claw Mark, and Applicant’s mark does not resemble claw scratches. When the marks are perceived in their entireties, these clear visual distinctions between the marks create very different commercial impressions. * * * The letter M as presented in the marks is stylized with such different shapes and types of lines that the marks as a whole do not resemble one another. With marks this different, confusion is unlikely.

And so, the Board granted the motion for summary judgment as to Monster's Section 2(d) claim.

Critical Role did not move for summary judgment as to Monster's Section 43(c) dilution-by-blurring claim but it maintained that the ruling on the Section 2(d) claim rendered the dilution claim moot. Not so, said the Board, pointing to Section 43(c)(1), which states that a claim for dilution is available "regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury."

The Board therefore resumed the proceeding with respect to the dilution claim.

Read comments and post your comment here.

TTABlogger comment: Since the marks are not similar for Section 2(d) purposes, how can they be similar for Section 43(c) purposes? The standard is the same. See Nike, Inc. v. Peter Maher and Patricia Hoyt Maher, 100 USPQ2d 1018 (TTAB 2011). It seems that summary judgment on the dilution claim is in the offing.

Text Copyright John L. Welch 2023.

Precedential No. 33: TTAB Reverses Failure-to-Function Refusal of "FOLLOW THE LEADER" for Credit Card and Travel Services

The Board rendered a rare reversal of a failure-to-function refusal, finding the USPTO's evidence insufficient to establish that the phrase FOLLOW THE LEADER is incapable of serving as a source indicator for credit card incentive program, credit card financial, travel information, ticket reservation, travel advisory, salon and spa reservation, and concierge services. Although FOLLOW THE LEADER is in common use in various contexts, the phrase may convey different meanings in those contexts, and it does not have a commonly understood meaning applicable to the applicant’s services. In re Black Card LLC, 2023 USPQ2d 1376 (TTAB 2023) [precedential] (Opinion by Judge Jonathan Hudis).

Sections 1, 2, 3, and 45 of the Lanham Act provide the statutory basis for a refusal to register subject matter that does not function as a trademark or service mark. A threshold question in evaluating the registrability of a trademark or service mark is whether the proposed mark meets the source indication requirement. As the Supreme Court has recognized, “the lead criterion for registration is that the mark in fact serve as a ‘trademark’ to identify and distinguish goods [or services].” Jack Daniel’s Props., Inc. v. VIP Prods. LLC, 143 S. Ct. 1578, 2023 USPQ2d 677, at *5 (2023) (cleaned up).

Of course, "[t]he critical inquiry in determining whether a proposed mark functions as a … [service mark] is how the relevant public perceives the term sought to be registered.” Univ. of Ky. v. 40-0, LLC, 2021 USPQ2d 253, at *25 (TTAB 2021). The evidence may show that the proposed mark “is a common term or phrase that consumers of the … services identified in the application are accustomed to seeing used by various sources to convey ordinary, familiar, or generally understood concepts or sentiments.” In re Brunetti, 2022 USPQ2d 764, at *12. “The more commonly a phrase is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a … [service mark].” Id. (citing In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)).

On the other hand, not every common term or phrase warrants refusal on failure to function grounds. The refusal is strictly dependent on the evidence presented to show how consumers would perceive the proposed mark. The totality of the evidence must be sufficient to show that the phrase sought to be registered is used in such a way that it cannot be attributed to a single source of the goods or services at issue. 

To determine whether a phrase sought to be registered functions as a source indicator, the Board looks to evidence showing how the phrase is used in the marketplace by the applicant and by others.

The Examining Attorney argued that FOLLOW THE LEADER is "commonly used to encourage customers to follow the leader in a particular field and conveys that the applicant is the leader in the services listed in the application and should be followed because of this alleged fact .…" The evidence comprised a dictionary entry, articles, blogs, company websites, consumers goods, and other materials showing use of the phrase in connection with children's games, business decision- making, guided travel tours, governmental and political leadership, personal decision-making, and artwork on consumer items.

Applicant Black Card maintained the proposed mark provides no generalized informational message, and it asserted that there is no blanket rule that commonly used phrases are not registrable.

The Board observed that "[t]he record need not necessarily include evidence of third-party use in connection with the specific services at issue for the evidence to support the failure to function refusal." However, the evidence must demonstrate that the proposed mark "would convey a generally understood sentiment or meaning to the consumers of [Black Card's] services such that they would not perceive it as signifying the source of the services."

The Board found that the phrase FOLLOW THE LEADER may convey different meanings depending on context. "For example, FOLLOW THE LEADER can refer to business decisions made to align with the industry leader, a manager’s impact on employees or the business, politicians’ or government workers’ often negatively portrayed allegiance or compliance with a political figure or political leadership, tour groups being led by a tour guide, or personal decision-making, whether based on following a role model or following the crowd."

Thus, the phrase as issue here is unlike the phrase INVESTING IN AMERICAN JOBS in In re Wal-Mart Stores, 129 USPQ2d at 1153-56, where the evidence of Wal-Mart's own use and of common use of across different industries and manufacturing contexts "informed consumer perception of the phrase for the applicant’s retail store services and promotional services for goods made or assembled by American workers."

Concluding that the Office's evidence fell short, the Board reversed the refusal to register:

The evidence as a whole does not demonstrate use for services or in contexts from which we may reasonably infer that FOLLOW THE LEADER has a commonly understood meaning applicable to Applicant’s services that would render it incapable of being perceived as a source indicator for those services.

Read comments and post your comment here.

TTABlogger comment: What if the involved goods were t-shirts?

Text Copyright John L. Welch 2023.