TTAB Grants Petition to Cancel VIVACE Registration for Microneedling Device: Manufacturer Owns the Mark, Not Distributor

In a 55-page decision, the Board granted a petition for cancellation of registrations for the mark VIVACE for a "radio frequency microneedling device" on the ground of non-ownership. and the mark THE VIVACE EXPERIENCE for "providing personalized beauty spa services, namely, cosmetic body care and microneedle services" on the ground of likelihood of confusion with Petitioner's common law mark VIVACE for microneedling devices. This blog post will attempt to hit the high points. Sung Hwan E&B Co. Ltd. d/b/a SHEnB Co. Ltd. v. Aesthetics Biomedical, Inc., Cancellation No. 92074719 (February 14, 2025) [not precedential] (Opinion by Judge Cheryl S. Goodman). (Oral Argument held on June 12, 2024).

The VIVACE mark: Petitioner SHEnB is a South Korean company that develops, markets and sells “various innovative products related to skin aesthetics and obesity based on radiofrequency (RF) technologies.” Respondent Aesthetics Biomedical ("ABM") entered into an exclusive distributorship agreement with SHEnB in February 2016 to sell and market the VIVACE micro-needle device and disposable tips in the United States

SHEnB established first use of the VIVACE trademark at least as early as late February 2014, prior to entering into the distribution agreement between itself and ABM by its shipments in commerce of the devices to doctors for the clinical trials.

Plowing through the facts, the Board concluded that ABM failed to rebut or overcome the presumption that SHEnB, the manufacturer, owns the mark.

SHEnB established first use of the VIVACE trademark at least as early as February 2014, prior to entering into the distribution agreement with ABM, by its shipments in commerce of the devices to doctors for the clinical trials. Therefore, the Wrist-Rocket factors for determining ownership did not apply. (Wrist-Rocket Mfg. Co. v. Saunders, 379 F. Supp. 902 (D. Neb. 1974), aff’d in part and rev’d in part, 516 F.2d 846 (8th Cir. 1975)).

Moreover, even if the Wrist-Rocket factors did apply, some factors supported SHEnB and some supported ABM:

Petitioner created and first affixed the VIVACE mark to the micro-needling device, and as the manufacturer controlled the manufacturing quality and uniformity of the goods. The factor relating to the labeling of the device, is a draw, and is neutral. *** The factor relating to advertising favors Respondent but this is not unusual for a domestic distributor that knows the market; this alone does not give rise to trademark rights.

From 2016 through November 2017, SHEnB’s agents responded to queries and complaints forwarded by ABM and repaired the devices. The purchase agreement identified ABM as providing the warranty and warranty service. This factor weighed in favor of ABM. However, the record evidence was insufficient to determine public perception as to the source of the goods at the time of filing of the VIVACE trademark application.

The Board concluded that because ABM was not the owner at the time it filed its use-based application (in May 2017), the VIVACE registration was and is void ab initio. 15 U.S.C. § 1051(a) ("The owner of a trademark used in commerce may request registration ....").

THE VIVACE EXPERIENCE: Respondent ABM was first to use this mark, but not before SHEnB had used the VIVACE mark. The Board found the marks to be similar in appearance, sound, meaning and commercial impression.

Although we acknowledge that Respondent’s mark has some differences in appearance and pronunciation due to the inclusion of the other wording, these differences are not as significant as the similarities in sound and appearance created by the identical common shared term VIVACE. In Respondent’s mark, VIVACE contributes more to the commercial impression of the mark than the suggestive term EXPERIENCE and the definite article THE.

ABM’s witness acknowledged that THE VIVACE EXPERIENCE services are offered in conjunction with SHEnB’s VIVACE micro-needling device. Consequently, the Board found these goods and services to be related.

And so, the Board found confusion likely, and it ordered cancellation of the registration for THE VIVACE EXPERIENCE.

Read comments and post your comment here.

TTABlogger comment: Not much sympathy here for the distributor.

Text Copyright John L. Welch 2025.

TTABlog Test: Is SELECT BY LANDRY'S Primarily Merely a Surname for a Customer Reward Program?

The USPTO refused to register the mark SELECT BY LANDRY'S, in standard character form, for a "Customer incentive award program, namely, a restaurant and entertainment customer loyalty program that provides discounts and related benefits to reward repeat customers," deeming the proposed mark to be primarily a surname under Section 2(e)(4). Examining Attorney Sahar Nasserghodsi required a disclaimer of SELECT, but the applicant maintained that the USPTO routinely treats the term SELECT as a distinctive term for marks registered in connection with incentive award programs, and therefore the mark as a whole is not primarily merely a surname. In re Landry’s Trademark, Inc., Serial Nos. 97746646 and 98024609 (February 14, 2025) [not precedential] (Opinion by Judge George C. Pologeorgis).

The word mark: The Board, as usual, applied the Benthin factors (In re Benthin Management GmbH, (Serial No. 74340080), 1995 WL 789509, at *2-3 (TTAB 1995)). The surname LANDRY appears more than 101,000 times in the Lexis+ surname database, leading the Board to conclude that LANDRY "is not rarely used or encountered as a surname, and the public has been exposed to and will perceive LANDRY as a surname." LANDRY has no recognized meaning other than as a surname, and no one associated with the applicant is named LANDRY, but it does have the structure and pronunciation of a surname.

Taking into consideration all relevant evidence of the public’s perception which is of record and applying the relevant Benthin factors to such evidence, we find that the primary significance of LANDRY’S to the purchasing public is that of a surname.

But that was not the end of the story. The Board then considered whether "the primary significance of the mark as a whole in connection with the recited services is that of the surname." (Emphasis added).

The Examining Attorney, relying on dictionary definitions, third-party disclaimers, applicant's disclaimer of SELECT CLUB in a prior registration, and two Board decisions, argued that the term SELECT is merely descriptive of applicant’s identified services and therefore does not detract from the surname significance of the proposed mark. Applicant Landry's asserted that SELECT has multiple meanings, that a multi-step reasoning process is required to glean any relevant meaning from the term, and that the USPTO "routinely treats the term SELECT as a distinctive term for marks registered in connection with incentive award programs."

The Board observed that the addition of a generic or merely descriptive term to a surname does not immunize the proposed mark from a Section 2(e)(4) refusal. (E.g., WEISS WATCH COMPANY in In re Weiss Watch Company, Inc., 123 USPQ2d 1200 (TTAB 2017)). The mark will be evaluated as to its primary significance as a whole. "A key element in this determination is the relative distinctiveness of the additional term(s) in the mark."

The Board sided with the Examining Attorney that SELECT is merely descriptive of Applicant's services: "the use of SELECT in the term SELECT BY LANDRY’S describes a set of desirable benefits available not to all customers but a select group of customers, and would be immediately so perceived by the relevant consumers." As to the third-party registrations, the Board found them insufficient to cast doubt on the other evidence of record. In any case, the Board is not bound by previous decisions of other examining attorneys.

The Board then found the entire mark SELECT BY LANDRY'S to be primarily merely a surname, and so it affirmed the Section 2(e)(4) refusal.

The Composite Mark: Applicant also sought to register the word-plus-design mark shown above, for the same services. The Examining Attorney did not refuse registration under Section 2(e)(4). [See TMEP Section 1211.01(b)(ii) regarding a surname combined with a design element]. However, applicant was required to disclaim the word SELECT. Based on the finding of descriptiveness, the Board affirmed the disclaimer requirement, but allowed applicant thirty days within which to submit the required disclaimer.

Read comments and post your comment here.

TTABlogger comment: The Office also objected to the phrase "and other benefits" in the recitation of services as being indefinite. The Board disagreed, since that phrase appears in other registrations as well in the ID Manual, for other services.

Text Copyright John L. Welch 2025.

TTABlog Test: Are Pizza Parlors and Baked Goods Related Under Section 2(d)?

The USPTO refused to register the mark PIZZERIA SAPIENZA, in standard character and logo form, for "restaurant and catering services; pizza parlor" [PIZZERIA disclaimed] on the ground of likelihood of confusion with the registered mark SAPIENZA for "bakery products, namely, cream puffs, cannoli, eclairs and assorted pastries." Keeping in mind that the Office must show "something more than that similar or even identical marks are used for food products and for restaurant services," how do you think this came out? Do bakeries sell pizza, you might ask? Do pizza parlors sell cannoli? In re Amore Food Group LLC, Serial Nos. 97524502 and 975588431 (February 12, 2025) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).

The Board found it proper to give the generic term "pizzeria" less weight in considering applicant's mark, agreeing with Examining Attorney William Verhosek that "purchasers would be more inclined to use SAPIENZA when referring to the services as opposed to the generic term PIZZERIA that describes every pizza restaurant in America."

In logo mark, "the pizza design, while creating some degree of visual distinction, does not overwhelm, detract from or change the commercial impression of the literal elements."

As to the sound of the marks, the word “Sapienza” "dictates the pronunciation of each mark and the modest [??? - ed.] difference in sound from addition of the generic word 'Pizzeria' does not overcome the identical sound of the dominant word 'Sapienza.'"

The Board concluded that "Applicant’s marks contain the entire registered mark SAPIENZA. Addition of the generic word 'Pizzeria,' and design of a pizza and modest stylization to the words in the composite mark, does not meaningfully distinguish the marks."

Turning to the second DuPont factor, the Examining Attorney submitted website evidence of ten businesses offering pizza parlor services as well as pastries. He also made of record a number of third-party use-based registrations, owned by different parties, identifying goods and services that include one or more of Applicant’s services and one or more of Registrant’s goods. Moreover:

There is a specific connection between Applicant’s pizza parlor services and Registrant’s cannoli because both are of Italian origin, satisfying the “something more” requirement. [Oh please, gimme a break! ed.].

As to channels of trade and classes of customers, the third party uses showed that the involved goods and services may be offered by the same businesses to the same customers: namely, "persons seeking restaurant or pizza parlor services and bakery goods such as cannoli or pastries." The channels of trade and consumers therefore overlap.

Bakery goods are low cost items, and eating at a pizzeria is not expensive; the Board therefore found that the goods and services are subject to impulse buying, increasing the risk of likelihood of confusion.” [Even an impulsive customer like me can tell pizza from a cannoli -ed.]

Finally, the lack of evidence of actual confusion was not probative because there was no evidence of meaningful opportunities for confusion to occur.

For most of the 30 years of use, Applicant’s predecessor operated a single pizzeria in Albany, located in upstate New York, a different part of the state from Registrant’s Elmont location on Long Island. Applicant opened a second pizzeria in 2018, but this was located in North Carolina. There is no evidence that Registrant has a presence in the upstate New York or North Carolina markets."

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: Here's an example of the Board's formulaic approach to Section 2(d), with the deck stacked against the applicant. The cannoli = "something more" argument didn't grab me. How about you?

Text Copyright John L. Welch 2025.

RTC RICH TRAPPERS CLUB Logo Not Confusable with RTC for Clothing, Says TTAB

Despite the overlap in goods and the presumed overlap in channels of trade and classes of consumers [which the Board sometimes weighs "heavily" against the applicant], the Board reversed a refusal to register the mark shown below for "Clothing, namely, pants, shirts; footwear; headwear; all of the foregoing excluding apparel for collegiate institutes and not related to educational services and the promotion thereof” and for “On-line wholesale and retail store services featuring clothing; all of the foregoing excluding apparel for collegiate institutes and not related to educational services and the promotion thereof," finding confusion unlikely with the registered mark RTC for "Hats; Hooded sweat shirts; Scarves; Scrubs not for medical purposes; Shirts; Sweat pants; T-shirts." In re Rich Trappers Club LLC, Serial No. 97774077 (February 11, 2025) [not precedential] (Opinion by Judge Elizabeth K. Brock).

Applicant feebly argued that Registrant, Renton Technical College, is “a technical college that sells simple clothing bearing the name of its institution for students and faculty.” The Board noted, however, that the cited registration contains no such restrictions, and the Board must give “full sweep” to the identification of goods "regardless of a registrant’s actual business."

As we have explained in innumerable decisions, the Board may not consider arguments “about how the parties’ actual goods, services, customers, trade channels, and conditions of sale are narrower or different from the goods and services identified in the applications and registrations.”

Since there are no restrictions in the registration, Applicant’s restriction of its own identification of goods "does not impose a meaningful limitation." See In re Detroit Ath. Co., 903 F.3d 1297, 1308 (Fed. Cir. 2018) (“Even if true [that Registrant athletic club sells clothing only to members and in one store], this assertion is, once again, irrelevant.”).

As to applicant's Class 25 goods, both the subject application and the cited registration include "shirts," and applicant's class 35 services are closely related to registrant's goods. See Detroit Ath. Co., 903 F.3d at 1307 (finding clothing and sports apparel retail services related as “confusion is likely where one party engages in retail services that sell goods of the type produced by the other party”).

Turning to the marks, the examining attorney maintained that the letters RTC are dominant in both marks. The Board disagreed, and further disagreed that applicant’s mark is confusingly similar to the cited mark in appearance, sound, meaning, and commercial impression.

While the Examining Attorney correctly states that, in general, in a likelihood of confusion analysis, wording is given greater weight than a design element in a composite mark, in this case, for the reasons explained, we find that the bundle of money character [I had to look twice - ed.] is entitled to at least as much weight as the RTC wording, which in turn reflects the meaning RICH TRAPPER$ CLUB. We do not find that the RTC element is dominant, as it merely reinforces the phrase RICH TRAPPER$ CLUB and the character depiction of that phrase.

As to sound, "it is likely that consumers would refer to the mark as RICH TRAPPER$ CLUB because it is so tied to the prominent design element, explains the RTC acronym, and captures the overall meaning of the mark; this is not true of the RTC acronym alone."

As to meaning and connotation, the Board pooh-poohed the examining attorney’s assertion that it is “plausible” that purchasers will believe that RTC in the Cited Registration means RICH TRAPPER$ CLUB.

Finally, as to overall commercial impression, "the three components of Applicant’s mark—the bundle of money character, RTC, and RICH TRAPPER$ CLUB—work in concert to create the overall commercial impression." The Board concluded that applicant’s mark creates a commercial impression distinct from Registrant’s RTC mark."

Read comments and post your comment here.

TTABlogger comment: I find this result rather surprising, but not necessarily wrong. It's surprising because the goods overlap, the service are related, and the proposed mark encompasses the cited mark in its entirety, and prominently so. Usually that's a recipe for a Board affirmance.

Text Copyright John L. Welch 2025.

TTAB Upholds Four Section 2(c) Refusals of Anti-Trump Marks Due to Lack of Consent

In the wake of last year's TRUMP TOO SMALL Supreme Court decision [TTABlogged here], the Board unsurprisingly affirmed Section 2(c) refusals of the following marks, due to lack of consent from Donald J. Trump: MAKE AMERICA GREAT AGAIN DUMP TRUMP! 2020 for clothing, the same mark for facial masks, DUMP TRUMP AND LOCK HIM UP and INDICT THE TRUMP ORGANIZATION, both for blogs featuring information about Donald Trump. Applicant Matthew A. Handal, who filed an amicus brief in the TRUMP TO SMALL case, had asked for Trump's consent, without success. In re Matthew A. Handal, Serial Nos. 88931066, 88936129, 90340590, 90340613 (February 10, 2025) [not precedential] (Opinion by Judge Christopher C. Larkin).

Applicant Handal's argument that Section 2(c) is unconstitutional was mooted when the Supreme Court's ruling in Vidal v. Elster came down. He conceded that Donald Trump is famous as a political figure and celebrity, and the Board found that the word "TRUMP" in the first three proposed marks refer to President Donald Trump, "a 'particular living individual' within the meaning of the names clause of Section 2(c), triggering the need to obtain his written consent to register those marks." [Trump was president when the applications were filed in 2020 - ed.].

As to the fourth mark, INDICT THE TRUMP ORGANIZATION, Handal contended that "Section 2(c) does not [apply] to corporations that have been named after individuals, or have individuals with [the] same name as owners or executives." The Board noted that Handal cited no authority for that proposition and the Board found none.

The names clause in Section 2(c) has been applied for more than 70 years to marks containing a name and other matter. *** We see no reason, based on the text of the names clause in Section 2(c) or otherwise, why Applicant’s proposed mark INDICT THE TRUMP ORGANIZATION, which includes a surname as part of the name of a juristic person, must be treated differently.

Handal next claimed that the word TRUMP in this proposed mark "refers to deceased persons, Elizabeth Christ Trump and Fred Trump," not Donald Trump. The Board pointed out, however, that this argument was belied by Handal's own conduct and evidence. The recitation of services specifically refers to Donald Trump, and Handal's request for written consent from Donald Trump was an admission "that the word TRUMP in the proposed mark INDICT THE TRUMP ORGANIZATION is the name of the particular living individual Donald Trump."

In addition, Handal submitted a Wikipedia entry captioned "The Trump Organization," which entry states: "The Trump Organization is a group of about 500 business entities of which Donald Trump is the sole or principal owner."

And so, the Board affirmed all four refusals.

Read comments and post your comment here.

TTABlogger comment: WYHA? WYHAFC? [Would You Have Asked For Consent?]

Text Copyright John L. Welch 2025.

TTAB Vacates DR. DOCTOR Section 2(d) Affirmance: Cited Registration Had Been Cancelled

In the TTABlog Test of February 7th, we included the Board's affirmance of a Section 2(d) refusal of the mark DR. DOCTOR for fruit juice and energy shots, in view of the registered mark DR DR for "beverages, namely, carbonated and noncarbonated flavored sodas and drinking water." In re Juiceland IP Holdings, LLC, Serial No. 97830521 (February 5, 2025) [not precedential] (Opinion by Judge Wendy B. Cohen). The Board has vacated that decision because the cited registration had expired before the Board rendered its decision [pdf here].

Read comments and post your comment here.

Text Copyright John L. Welch 2025.

TTAB Denies "DISORDERLY FASHION" Nonuse Cancellation Petition: It's Hard to Prove a Negative

The Board tossed out Avalon Apparel's petition for cancellation of Brandon R. Kilson's registration for the mark DISORDERLY FASHION (in standard characters, FASHION disclaimed) for “Clothing, namely, neck warmers; Belts; Bottoms as clothing; Coats; Headwear; Hooded sweatshirts; Jackets; Shoes; Tops as clothing." Avalon claimed nonuse, abandonment, and fraud, but its proofs were, in a fashion, disorderly. Kilson, appearing pro se, did not submit evidence or testimony, nor did he file a brief, but his rope-a-dope approach proved to be successful. Avalon Apparel, LLC v. Brandon R. Kilson, Cancellation No. 92080171 (January 30, 2025) [not precedential] (Opinion by Judge Martha B. Allard).

More particularly, Avalon claimed "(1) nonuse of the mark as of the filing date of the statement of use of the subject registration’s underlying application; (2) abandonment based on nonuse of the mark in commerce for a period of more than three consecutive years, without an intent to resume use; and (3) fraud."

Nonuse: Avalon focused on Kilson's specimen of use, claiming that it failed to show technical trademark use, "but rather [is] what appears to be a business card and a sticker PLACED on a garment for the purposes of taking the photograph submitted to the USPTO." The Board was unimpressed:

While these possible defects in the specimens could ultimately lead to evidence to support Petitioner’s nonuse claim, the problem is that, without more, such as deposition testimony establishing that [the] mark was not in use on the identified goods at the time the statement of use was filed, Petitioner’s arguments seeking to discredit the specimens is not sufficient to establish nonuse.

Abandonment: To prove the nonuse element of abandonment, Avalon submitted the testimony of its own counsel on two topics: (1) Kilson’s failure to respond to certain discovery requests, and (2) counsel's own investigation into Kilson’s use of the mark.

Avalon argued that "a reasonable inference to be drawn from Kilson's failure to respond to interrogatories and production requests is that he has no evidence of use.” Again, the Board was unmoved: "for us to draw any conclusions about Respondent’s failure to respond to Petitioner’s document requests and interrogatories, Petitioner must have filed a motion to compel their responses." [Note: Avalon did not serve requests for admission - ed.]

As to the investigation, Avalon's counsel testified that he conducted searches of various state (Pennsylvania) and local (Philadelphia) records and found no reference to Kilson or his business. Avalon again argued that this lack of evidence "is sufficient to create a rebuttable presumption that Respondent has abandoned its rights in the DISORDERLY FASHION Mark." Not good enough, said the Board:

As an initial matter, these searches are insufficient to establish a prima facie showing of abandonment because there is no evidence that Respondent is required to register his mark with any of these local or state agencies/entities whose databases Petitioner searched.

Moreover, each search was conducted on the same day, i.e., on or about March 13, 2024, and so they failed to show that Kilson did not use his for the identified goods for a period of at least three consecutive years.

Avalon's counsel also testified that Kilson did not obtain a Federal Trade Commission (FTC) Registration Number (“RN Number”), and that "this is the type of database that may show historical filing information and, as a result, may show filings made over three years ago." The Board, however, took judicial notice of the FTC's FAQ page, which states that an RN number is not required.

After consideration of all of Petitioner’s evidence, we find that the evidence does not establish Respondent’s nonuse of his mark for a three-year period or that Respondent otherwise discontinued use of his mark with no intent to resume use.

Fraud: Since Avalon failed to show that the statements made in Kilson’s statement of use were false, let alone made with the intent to deceive the USPTO, the claim of fraud failed.

Read comments and post your comment here.

TTABlogger comment: Absent admissions by the other side, you usually have to take testimony to prove nonuse and/or intent not to resume use.

Text Copyright John L. Welch 2025.

Eleven Third-Party Uses of "Cowbell" Not Enough to Overcome Cited COWBELL CREAM ALE Registration

The Board upheld a Section 2(d) refusal to register the mark shown immediately below, for "Beer, ale, lager, stout, porter, craft beers, pale beer, flavored beers" [BLYTHE and BREWING CO. disclaimed], finding confusion likely with the registered mark COWBELL CREAM ALE for "Ales" [CREAM ALE disclaimed]. Since the goods overlap, the Applicant Blyth started out behind the 8-ball. Moreover, both of the involved marks are dominated by the word COWBELL. Blyth tried to end-run the cited registration by citing eleven third-party uses of COWBELL-containing marks, but the Board wanted more cowbell. In re Blyth Cowbell Brewing Inc., Serial No. 87411623 (February 7, 2025) [not precedential] (Opinion by Judge Martha B. Allard).

Given the disclaimers and the dominance of the word COWBELL, the Board found the marks to be "similar" overall, especially when one considers "(1) 'the fallibility of memory over a period of time;' and (2) that the 'average' purchaser 'normally retains a general rather than a specific impression of trademarks.'"

Blyth maintained that the cited mark is entitled only to a narrow scope of protection, pointing to eleven third-party uses of COWBELL-containing marks, including two for cream ales and nine for beers. Examining Attorney Chioma Oputa made no attempt to discredit this evidence but instead argued that the uses were too few in number to support Blythe's argument.

The Board found that the evidence consisting of 11 third-party uses "reflects a more modest amount of evidence than that found convincing" in Jack Wolfskinand Juice Generation, "wherein 'a considerable number of third parties’ use [of] similar marks was shown.'" The Board then concluded that "at best the term COWBELL is somewhat commercially weak."

Thus, we consider the first, second and third DuPont factors dispositive and even considering the slight commercial weakness of the COWBELL term, it is not enough to outweigh the other factors.

Read comments and post your comment here.

TTABlogger comment: In the recently blogged 12 Cosmetics case, the Board found 10 third-party registrations to be probative of the weakness of the term "twelve." But that was for conceptual weakness, not commercial weakness. See the difference?

Text Copyright John L. Welch 2025.

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

It's early, but so far in 2025 the Board has reversed one out of five Section 2(d) likelihood-of-confusion refusals on appeal. Here are three recent decisions. How do you think they came out? [Answer in first comment].

In re PT. Modiva International, Serial No. 79357814 (January 30, 2025) [not precedential] (Opinion by Judge Christoper C. Larkin) [Section 2(d) refusal of the mark DEOREX in the stylized form shown below, for "Preparations for dyeing and tinting of hair, namely, hair dye, hair coloring and dyes; Hair shampoo; Personal deodorants; Make-up kits comprised of cosmetics, lipsticks, beauty masks; Cosmetics; Skincare cosmetics; Cosmetic creams; Lipsticks; Beauty masks; Perfumes; Perfume, eau de Cologne and aftershaves; Antiperspirant soap” in view of the registered mark DEODOREX for “dietary and nutritional supplements."]

In re AM Hospitality, LLC, Serial No. 97604912 (February 4, 2025) [not precedential] (Opinion by Judge Angela Lykos). [Section 2(d) refusal of the mark LAUGHING BUDDHA RAMEN for "Restaurant services" [RAMEN disclaimed],  in view of the registered mark LAUGHING BUDDHA COMEDY for “Education services, namely, providing live and on-line workshops in the field of comedy; Presentation of live comedy shows" [COMEDY disclaimed]].

In re Juiceland IP Holdings, LLC, Serial No. 97830521 (February 5, 2025) [not precedential] (Opinion by Judge Wendy B. Cohen). [Section 2(d) refusal of the mark DR. DOCTOR "fruit juice; fruit juice beverages; vegetable-fruit juices; vegetable juice; non-alcoholic drinks, namely, energy shots" in view of the registered mark DR DR for "beverages, namely, carbonated and noncarbonated flavored sodas and drinking water."] [Note: this decision was vacated on February 10, 2025 because the cited registration had expired before the Board rendered its decision (pdf here)].

Read comments and post your comment here.

TTABlogger comment: How did you do?

Text Copyright John L. Welch 2025.

TTAB Finds MENTCHEES Generic for .... Guess What?

The Board sustained on opposition to registration of the proposed mark MENTCHEES "for Toy figures; Modeled plastic toy figurines; Molded toy figures," on the ground of genericness. Alternatively, the Board found MENTCHEES to be merely descriptive of the goods and lacking in acquired distinctiveness. Chazak Kinder Inc. v. Mitzvah Kinder, Inc., Opposition No. 91272685 (January 28, 2025) [not precedential] (Opinion by Judge Angela Lykos)

The determination of the issue of genericness requires a two-step inquiry as set forth by the CAFC in Marvin Ginn: "First, what is the genus of goods or services at issue? Second, is the term sought to be registered ... understood by the relevant public primarily to refer to that genus of goods or services?"

The Board found the genus to be the identification, "Toy figures; Modeled plastic toy figurines; Molded toy figures," noting that this is "sufficiently broad to encompass the subgenus or narrower category of toy figures, modeled plastic toy figurines, and molded toy figures dressed in traditional Jewish attire and/or coiffed with traditional Jewish hairstyles." See, e.g., In re Empire Tech, Dev. LLC, 123 USPQ2d 1544 (TTAB 2017) (COFFEE FLOUR held generic for a type of flour made from coffee cherry skins, pulp, and pectin).

The Board next found the relevant public to be comprised of ordinary consumers who purchase toy figures, including those "seeking toy figurines dressed in traditional Jewish attire and/or coiffed with traditional Jewish hairstyles."

The question, then, was "whether the designation MENTCHEES is understood by the relevant purchasing public as primarily referring to toy figures, modeled plastic toy figurines, molded toy figures dressed in traditional Jewish attire and/or coiffed with traditional Jewish hairstyles."

There were no English or Yiddish dictionary definitions of MENTCHEES, or its phonetic equivalent, in the record. However, third-party websites of retailers such as Walmart, Eichlers, Judaica Plaza, Toys4You, Judaica Place and Binyan Blocks showed "use of the term 'mentchees,' or the phonetic equivalent thereof, as a designation for the subcategory of toy figures, modeled plastic toy figurines, molded toy figures dressed in traditional Jewish attire and/or coiffed with traditional Jewish hairstyles."

[T]he evidence shows that “mentchee” or its phonetic equivalent is now part of the U.S. English vernacular to denote a subtype of “toy figure; modeled plastic toy figurines; molded toy figure.” The fact that some of the usage is in the singular as opposed to the plural form of the word that Applicant seeks to register is of no significance.

And so, the Board concluded that the relevant consuming public "primarily views the proposed mark MENTCHEES as a generic designation for 'Toy figures; Modeled plastic toy figurines; Molded toy figures' which includes the subgenus of such items dressed in traditional Jewish attire and/or coiffed with traditional Jewish hairstyles."

For completeness, the Board considered the alternative ground of mere descriptiveness and lack of secondary meaning. [The genericness issue was not raised in the pleadings but was tried by implied consent]. The Board wasted no time in finding the term to be "highly descriptive" of the goods.

Applicant submitted no Section 2(f) evidence, but argued that Section 2(f) "does not apply because its application was not filed under this basis." The Board was unmoved. "As a legal matter, merely descriptive marks can only be registered on the Principal Register upon a showing of acquired distinctiveness."

The evidence discussed above showing third-party use of the term “mentchees” or its phonetic equivalent to refer to Applicant’s goods satisfies Opposer’s initial burden of showing that Applicant has not made substantially exclusive use of its mark. The burden therefore shifts to Applicant to come forward with evidence of acquired distinctiveness. Because Applicant submitted no evidence to support a finding of acquired distinctiveness, we are compelled to sustain Opposer’s alternate claim that Applicant’s mark is merely descriptive and lacks acquired distinctiveness.

Read comments and post your comment here.

TTABlogger comment Suppose a term is generic within one small geographic area, say South Boston. Is that enough for a finding of genericness?

Text Copyright John L. Welch 2025.

Three Recent Inter Partes Proceedings: The Bigger They Are ....

Here for your consideration are three recent Board decisions in David v. Goliath inter partes proceedings. David hung in there and won each time. Are there any lessonse to be drawn?

Monster Energy Company v. Country Innovation & Supply LLC, Opposition No. 91270179 (January 30, 2025) [not precedential] (Opinion by Judge Catherine Dugan O'Connor) [The Board dismissed this Section 2(d) opposition to registration of the mark BEAST HACK (standard characters) and the two word-and-design marks shown below, for hats, clothing, baseball and softball training aids, and hand grips, in view of the mark UNLEASH THE BEAST! and several other BEAST-FORMATIVE marks for apparel and accessories. The Board found the term "BEAST" to be "both conceptually and commercially weak in the fields of apparel and sports/fitness" and the marks dissimilar in appearance, sound, connotation and commercial impression.]

Monster Energy Company v. Howard Vernick and Coulter Ventures, LLC d/b/a Rogue Fitness, Cancellation No. 92072010 (January 30, 2025) [not precedential] (Opinion by Judge Cynthia C. Lynch) [The Board denied Monster Energy's petition for cancellation of a 2013 registration for the mark shown below, for "Athletic training services; Consulting services in the fields of fitness and exercise; Personal fitness training services and consultancy; Physical fitness training of individuals and groups; Training services in the field of sport specific movement." Monster claimed that the mark had been abandoned, but the Board found that the mark "remained in bona fide use in the ordinary course of Vernick’s trade during the alleged period of nonuse." Moreover, the Board noted that "even if Vernick were deemed to have discontinued use during the alleged period of nonuse, we would find that he retained the requisite intent to resume use to avoid abandonment."]

Audemars Piguet Holding S.A. v. Tenegroup Ltd, Opposition No. 91244316 (January 31, 2025) [not precedential] (Opinion by Judge Wendy B. Cohen) [The Board dismissed this six-year-old opposition to registration of the mark OAK AND LUNA for jewelry and retail clothing store services. Opposer Audemars Piquet claimed likelihood of confusion with its registered mark ROYAL OAK for watches and clocks, likelihood of dilution, and fraud. The Board construed the fraud claim as one for nonuse with respect to some of applicant's goods and services, and granted that nonuse claim. As to the likelihood of confusion claim, the dissimilarity of the marks was dispositive. As for dilution, the Board found that Audemars failed to prove its mark famous even for its Section 2(d) claim, and so it could not meet the more stringent test for fame vis-a-vis dilution.]

Read comments and post your comment here.

TTABlogger comment: How many defendants have the wherewithal to withstand an attack by Goliath? The poorest defendants may get pro bono assistance. But what about the smaller companies that can't qualify for such assistance?

Text Copyright John L. Welch 2025.