Anne Gilson LaLonde Agrees with Professor McCarthy's Criticism of CAFC's Brooklyn Brewery Decision and Adds Her Own

Trademark expert Anne Gilson LaLonde, author of Gilson on Trademarks, has provided her comments on the CAFC's recent Brooklyn Brewery decision [here], with errata [here], agreeing with Professor J. Thomas McCarthy's criticism of the court's view on standing [TTABlogged here] and adding her own criticism regarding the CAFC's misinterpretation of its role in reviewing a TTAB decision.

I agree with Professor McCarthy’s sound objections to this "unprecedented and alarming" decision but would add that it is also incorrect based on both the role of the Federal Circuit and its precedent on standing.

First, the Federal Circuit reviews the TTAB's decisions on appeal, asking, essentially, whether the TTAB was correct. Therefore, its task is to determine whether the TTAB properly followed the law as it applies in Board proceedings. The Federal Circuit should be asking whether an opposer or cancellation petitioner was entitled to bring its case to the Board, not whether it is entitled to bring its case before an Article III court. See, e.g., Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 1303 (Fed. Cir. 2020) (“In this appeal, we review de novo whether SFM pleaded sufficient facts to establish entitlement to challenge Corcamore's registered trademark under § 1064. . . . To be clear, this appeal does not involve the traditional legal notions of Article III standing. This appeal focuses instead on the requirements that a party must satisfy to bring or maintain a statutory cause of action, such as a petition to cancel a registered trademark under 15 U.S.C. § 1064.”).

Second, this decision marks a big shift from the Federal Circuit's precedent on standing in TTAB appeals. It fails to mention any of the relevant case law that the Federal Circuit commonly relies on when reviewing a TTAB decision: Opposers and cancellation petitioners must have a belief in damage that has a reasonable basis, as well as having a real interest in the proceedings. See, e.g., Ghomeshi v. StrongVolt, Inc., 851 Fed. Appx. 193, 196 n.5 (Fed. Cir. 2021) (unpublished) (“To be clear, the issue in front of the Board was not whether StrongVolt had Article III standing, but whether it had satisfied the statutory requirements of 15 U.S.C. § 1064 to pursue a cancellation proceeding.”); Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356, 1376 (Fed. Cir. 2012) (“The ‘case’ and ‘controversy’ restrictions do not . . . apply to matters before administrative agencies. Instead, for an agency such as the PTO, standing is conferred by statute. Here, standing is conferred by Section 13 of the Lanham Act. . . .”); Cunningham v. Laser Golf Corp., 222 F.3d 943, 945 (Fed. Cir. 2000) (“Standing . . . requires only that the party seeking cancellation believe that it is likely to be damaged by the registration.”).

The question the Federal Circuit should have answered was whether the opposer had established a statutory cause of action under Section 13, pursuant to the Supreme Court’s guidance in Lexmark. Instead, it went beyond its remit, answering the wrong question and ending up with the wrong answer.

 

Read comments and post your comment here.

TTABlogger comment: The TTABlog post of Professor McCarthy's criticism was cited to the CAFC in a supplement to the appellant's petition for reconsideration en banc.

Text Copyright John L. Welch 2022.

TTABlog Test: Is SCOOPERFEST Confusable With SCOOPER BOWL for Ice Cream Festivals?

The Dana-Farber Cancer Institute opposed an application to register the mark SCOOPERFEST for "organizing community festivals featuring primarily ice cream and also providing entertainment," alleging a likelihood of confusion with the registered mark SCOOPER BOWL for "charitable fundraising by means of an ice cream festival." Applicant Craig Marquardo claimed that the SCOOPER BOWL mark is conceptually weak, that the parties provide their services on opposite sides of the country, and therefore that confusion is not likely. How do you think this came out? Dana-Farber Cancer Institute, Inc. v. Craig Richard Marquardo, Opposition No. 91255611 (January 20, 2022) [not precedential] (Opinion by Judge Melanye K. Johnson).

Applicant Marquardo did not submit evidence or testimony but made many factual assertions or arguments in his brief. The Board declined to consider them. See TBMP Section 801.01 (2021); Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018).

Dana-Farber's evidence established that it has hosted an annual SCOOPER BOWL ice cream festival since 1984. Currently, the event (held in Boston and New York) spans three days and serves more than 20 tons of ice cream and frozen yogurt, donated by local and national vendors. More than 40,000 people attend each year. Applicant Marquardo, a Boston native, lives in Portland, Oregon, and heads a for-profit entity that held an ice cream festival there, called "ScooperFest," in 2019.

The Board found that the involved services overlap and are legally identical in part, and presumably travel in the same channels of trade to the same classes of consumers. Applicant Marquardo admitted that the relevant consumers - "people who like to eat ice cream" - are not limited to the sophisticated. He argued, however, that the parties do not serve the same customers because they are thousands of miles apart. The Board pointed out that Marquardo is seeking a nationwide registration, and so the likelihood of confusion analysis must proceed as if the marks were in use throughout the country. Moreover, Dana-Farber's registrations are entitled to national protection.

The Board found the SCOOPER BOWL mark to be inherently distinctive, as evidenced by Dana-Farber's two registrations issued without a Section 2(f) claim. The Board did find that SCOOPER BOWL appears on its face to be somewhat suggestive of Dana-Farber's services, since ice cream may be scooped and eaten from a bowl. Also, the word bowl may allude to a large gathering of people.

As to commercial strength, Dana-Farber proved that it has sold more than one million tickets to its event, for a total of $7.1 million in revenue. It has advertised the mark and enjoyed media coverage of the SCOOPER BOWL event. Although the sales and advertising figure were "underwhelming" when compared to figures for such events as the NFL'S "Super Bowl," the Board found that Dana-Farber has achieved some commercial success and media recognition. There was no evidence of third-party use of SCOOPER BOWL or similar marks, and so the Board found the SCOOPER BOWL mark to be "somewhat strong commercially" and entitled to "a slightly broader scope of protection on the spectrum of 'very strong to very weak.'"

Turning to the marks, the Board noted that when the services are identical-in-part, a lesser degree of similarity between the marks is required to support a finding of likely confusion. It noted that both marks begin with the same word SCOOPER, and observed that the first word in a mark is "more likely to be noticed and remembered by consumers." Furthermore, the marks are similarly structured. As to connotation, both "fest" and "bowl" evoke the meaning of a gathering with a specific focus.

And so, the Board concluded that confusion as to source is likely.

Applicant Marquardo claimed that Dana-Farber gave him permission to use the "ScooperFest" name for his event, but there was no evidence of any prior agreement. Moreover, Marquardo admitted in his discovery responses that he did not have permission to use or register that mark.

The Board therefore sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: Wolf Greenfield represented Opposer Dana-Farber in this proceeding.

Text Copyright John L. Welch 2022.

TTABlog Test: Is PISSTERINE Confusable with LISTERINE for Mouthwash?

J & J opposed an application to register the proposed mark PISSTERINE for non-medicated mouthwash, claiming likelihood of confusion with, and likely dilution of, its registered mark LISTERINE for, inter alia, medicated mouthwash, toothpaste, and dental floss. J & J established that its mark is famous for Section 2(d) purposes. The goods are overlapping or related, but what about the marks? What about parody? Johnson & Johnson v. Pissterine, LLC, Opposition No. 91254670 (January 18, 2022) [not precedential] (Opinion by Judge Jyll Taylor).

Applicant did not dispute that LISTERINE does not describe or suggest any characteristics or qualities of J & J's goods. The inspiration for the term LISTERINE came from an English doctor, Joseph Lister, the first surgeon to perform an operation in a chamber sterilized with antiseptics." The Board found the mark to be arbitrary, inherently distinctive, and conceptually strong.

As to commercial strength, the LISTERINE product has been marketed continuously since 1879. J & J's advertising and sales figures were "quite impressive." The Board found the mark to be famous for oral care products and services. 

Turning to the marks, the Board noted that famous marks merit a broader scope of protection than other marks. The Board found the involved marks to be visually similar: one -word terms ending in "ERINE." The other letters "do little to distinguish the marks' appearance."

As to sound, the marks have "the same three-syllable cadence, with a rhyming first syllable and identical following syllables." As to meaning, both marks appear to be arbitrary.

Nonetheless, given the fame of Opposer’s LISTERINE mark(s) and the similarities between the marks in appearance and sound, we find the marks in their entireties to be similar.

Applicant did not submit any testimony or evidence, nor did it file a brief. In its answer, however, it did raise the issue of parody, claiming no likelihood of confusion and fair use. The Board observed that "Applicant's intention for its mark to be a parody does not necessarily negate a finding of likelihood of confusion." In short, "parody is not a defense if the marks would otherwise be considered confusingly similar." Nike, Inc. v. Maher, 100 USPQ2d 1018, 1023 (TTAB 2011) . 

J & J claimed that, under the 13th DuPont factor, the Board should find bad faith on the part of the applicant. The Board, however, pointed out that a parody "by its very nature is an attempt to create an association in the form of an outlandish imitation." 

And so, the Board concluded that the applicant's intention to create a parody, by itself, did not evidence an intention to trade on the goodwill of the LISTERINE mark. And so, the Board sustained J & J's Section 2(d) likelihood of confusion claim. It declined to reach the dilution-by-blurring claim.

Read comments and post your comment here.

TTABlogger comment: Do you really think consumers would believe PISSTERINE emanated from, or was licensed or approved by, the source of LISTERINE? I think LISTERINE qualifies as famous for purposes of dilution; a good example of a "household word." The Board should have gone the dilution-by-blurring route. As for dilution-by-tarnishment, better to avoid the potential constitutionality issue there.

Text Copyright John L. Welch 2022.

TTABlog Test: Is FLOREO (Spanish) Confusable With FLOURISH HOMES & Design for Real Estate Services?

The USPTO refused to register the mark FLOREO for "real estate management services for properties owned by third parties" and for "reservation of temporary accommodations for vacation real estate properties that are owned by third parties," finding confusion likely with the registered mark FLOURISH HOMES & Design (shown below) for "Providing temporary housing accommodations" [HOMES disclaimed]. The Board found that the services are either related or overlapping. But what about the marks? Applicant Unsalted argued that the marks differ in sound and appearance, and that the Spanish word "floreo" has many translations and meanings and in any case has not been significantly used in almost 200 years. How do you think this came out? In re Unsalted Vacations LLC, Serial No. 90312784 (January 12,  2022) [not precedential] (Opinion by Judge Christoper Larkin).

 

Unsalted's argument regarding the many meanings of "floreo" was undercut by its own advertising advertising flyer, in which it proclaims, "our belief is that together we can flourish."

Applicant’s silence is a tacit admission that its use of the word “flourish” in its flyer as a “bookend” to “Floreo” was not happenstance, but was instead intended to associate Applicant’s Spanish-language mark “Floreo” with the English word “flourish.” 

The Board acknowledged that "flourish" is not the only translation of "floreo," but "it is the translation that Applicant alludes to in its specimen." The Board found that "the existence of meanings of 'floreo' in addition to 'flourish' does not preclude the application of the doctrine of foreign equivalents to Applicant’s mark because 'flourish' is the literal and direct translation most likely to be associated with it."

The Board also noted that previous cases have suggested that when the foreign word is obscure, a consumer may not stop and translate it. However, the record here did not show that "floreo" is an obscure Spanish word. Applicant Unsalted again undermined its own argument by submitting website evidence that "[t]he term <<floreo>> is regularly used and occupies the 40.584 position in our list of most widely used terms in the Spanish dictionary,” and that "'floreo' is 'Regularly used' in Mexico, the country of origin of numerous Spanish speakers in the United States, and in the polyglot United States."

Given Applicant’s own implicit translation of the word “floreo” as “flourish” in its specimen, and the word’s presence in modern Spanish-language dictionaries, we cannot find on this record that “floreo” is used so infrequently today that a Spanish speaker in the United States would not stop and translate it.

The question, then, was whether the similarity in meaning between the marks at issue outweighed their differences in sound and appearance. The Board found that the word FLOURISH is the dominant element in the cited mark. Examining Attorney Danielle L. Anderson did not address the applicant’s arguments regarding the dissimilarity of the marks in sound, but she did dispute that the dissimilarity in appearance is sufficient to makes the marks dissimilar overall despite their similarity in meaning. She pointed out that Unsalted's proposed mark is in standard character form, and "can be displayed in any form, including the stylization and design used in the registered mark." The Board agreed.

A consumer with a “general rather than a specific impression” of the cited mark, Embiid, 2021 USPQ2d 577, at *11, who separately encounters Applicant’s mark FLOREO displayed in the same arched font as the word “Flourish” in the cited mark, could view Applicant’s mark as being similar to the cited mark as recalled in the mind’s eye of the consumer.

As to the dissimilarity in sound, "Applicant’s argument . . . assumes that the cited mark will be verbalized as 'Flourish Homes, . . . which ignores 'the penchant of consumers to shorten marks.'"

In that instance, the cited mark will be verbalized simply as “Flourish,” which is at least somewhat similar in sound to “Floreo” because both marks begin with a syllable pronounced identically in the manner of the English word “floor.” But even if the cited mark is verbalized as “Flourish Homes,” we disagree with Applicant that “FLOREO and FLOURISH HOMES have very different sounds,” 4 TTABVUE 10, because of the aural similarity between “Floreo” and the dominant word “Flourish” in the cited mark. The marks are, at most, somewhat more dissimilar than similar in sound.

The Board concluded that, although the differences in sound and appearance outweigh the similarities,"the marks are not so dissimilar in those means of comparison to make confusion unlikely where they have essentially the same meaning."

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: I would have reversed based on the differences in sound and appearance. Florio seems like a surname to me. How about you?

Text Copyright John L. Welch 2022.

Precedential No. 3: TTAB Grants Motion to Supplement Notice of Opposition to Add Post-Filing Trademark Applications

Topco Holdings opposed registration of READY4LIFE for sanitizers for personal use, alleging a likelihood of confusion with its registered marks READY FOR LIFE and SIMPLY DONE READY FOR LIFE for various personal goods and cleaning products. On August 3, 2021, after Applicant Hand 2 Hand had answered, Topco filed a motion to amend and supplement its notice of opposition to add to its Section 2(d) claim by pleading two applications filed after this opposition was commenced (March 4, 2021), and also pleading common law rights, in the mark READY FOR LIFE for "[a]nti-bacterial hand wipes for personal use" and for "disposable sanitizing personal wipes," claiming use of its mark since 2017. The Board granted the motion. Topco Holdings, Inc. v. Hand 2 Hand Industries, LLC, 2020 USPQ2d 54 (TTAB 2022) (Order by Interlocutory Attorney Katie Bukrinsky).

FRCP 15(a)(2) "encourages the Board to look favorably on motions to amend, stating that the Board 'should feely give leave when justice so requires.'" In considering a motion to amend, the Board may take into account any undue delay, prejudice to the opposing party, bad faith or dilatory motive, futility of the amendment, and the number of previous amendments. See Foman v. Davis, 371 U.S. 178, 182 (1962).

The timing of the motion to amend plays a large role in determining whether the other party would be prejudiced by amendment. Embarcadero Techs., Inc. v. Dephix Corp., 117 USPQ2d 1518, 1523 (TTAB 2016). The Board may conclude that if there is no prejudice, there is no undue delay. See Am. Express Mktg. & Dev. Corp., 94 USPQ2d at 1297 (although delay was substantial, no prejudice where proceedings were still in the discovery stage and non-movant could be afforded time in which to take discovery).

FRCP 15(d) provides that "the court may, on just terms, permit a party to serve a supplemental pleading setting out any transaction, occurrence or event that happened after the date of the pleading to be supplemented." Courts and the Board have applied the same analysis to an FRCP 15(d) motion to supplement as they apply to an FRCP 15(a) motion to amend. See, e.g., Glatt v. Chi Part Dist., 87 F.3d 190, 194 (7th Cir. 1996); Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216, 1217 (TTAB 1990).

FRCP 15(a) Motion to Amend: Topco's motion to add common law rights fell under FRCP 15(a). The Board found no evidence of bad faith or dilatory motive on Topco's part: it is not improper to seek to introduce additional support for a likelihood of confusion claim. Furthermore, this was Topco's first motion to amend. 

Although Topco cold have pleaded these common law rights in its notice of opposition, it did not unduly delay with its motion. Arguably the "added goods" are encompassed with Topco's original allegation of rights in "cleaning goods such as disposable wipes." "Opposer's new allegations clarify and amplify those alleged common law rights." Three months remained in the discovery period when Topco filed its motion, ample time for Applicant Hand 2 Hand to obtain discovery on the added allegations.

The Board concluded that "the interests of justice and judicial economy would be served by permitting all claims between the parties to be adjudicated." See Space Base, 17 USPQ2d at 1217 n. 1.

FRCP 15(d) Motion to Supplement: Topco's request to add the two applications filed after this proceeding was commenced fell under FRCP 15(d), which expressly provides for the supplementation of proceedings to allege such post-commencement events. The Board again found no bad faith, no undue delay, and no evidence that the applicant would be prejudiced by the delay in filing. Again, judicial economy would be served by allowing the amendment.

Applicant Hand 2 Hand argued that this amendment would be futile because the new filing dates were later than its filing date for the opposed applications. The Board, however, concluded that the newly pleaded applications "[a]t a minimum ... may be relevant to Opposer's entitlement to a statutory cause of action." See Toufigh v. Persona Parfum, Inc., 95 USPQ2d 1872, 1874 (TTAB 2010) (entitlement shown by petitioner’s allegation that he filed an application to register an identical mark to the one he sought to cancel).

"Affirmative Defenses": Finally, The Board sua sponte struck the applicant's "affirmative defense" of failure to state a claim because is "not a true affirmative defense." See John W. Carson Found. v. Toilets.com, Inc., 94 USPQ2d 1942, 1949 (TTAB 2010). It allowed several other purported affirmative defenses to remain in the Answer, although they were merely amplifications of the applicant's denials. See, e.g., ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1236 n.11 (TTAB 2015). And the Board struck as improper the applicant's claimed "reservation of right" to assert additional affirmative defenses, since such addition would require a motion for leave to amend. See Philanthropist.com, Inc. v. The Gen. Conf. Corp. of Seventh-Day Adventists, 2021 USPQ2d 643, at *4 n.6 (TTAB 2021).

Read comments and post your comment here.

TTABlogger comment: Only interesting point is the addition of the new applications. Not sure why opposer bothered, since it's newly added common law rights are by far more important.

Text Copyright John L. Welch 2022.

Precedential No. 2: TTAB Rejects Summary Judgment Motion Filed Three Days Too Late

The Board denied Opposer Lumber Liquidator's request for reconsideration of the denial of its summary judgment motion because the motion was untimely. A summary judgment motion must be filed before the deadline date for pre-trial disclosures, but Lumber Liquidator filed its motion three days after the deadline date. Lumber incorrectly applied Rule 2.196 in adding three days to the deadline. Lumber Liquidators Services, LLC v. Columbia Insurance Co., 2022 USPQ2d 31 (TTAB 2022) [precedential] (Order by Interlocutory Attorney Jennifer Krisp).

Rule 2.127(e)(1) states, in pertinent part, that "A motion for summary judgment must be filed before the day of the deadline for pretrial disclosures for the first testimony period, as originally set or as reset." (emphasis by the Board). Lumber's pre-trial disclosures were due on Saturday, July 3, 2021, after the Board granted a consented motion for extension of discovery and trial dates. Lumber filed its summary judgment motion on July 5, 2021. Lumber Liquidators claimed that it pre-trial disclosures were not due until July 6th, since July 3rd was a Saturday, July 4th a Sunday, and July 5th a Federal holiday. And so, Lumber argued, its motion was timely filed on the day before its pre-trial disclosures were due.

Rule 2.196, entitled "Times for taking action: Expiration of Saturday, Sunday or Federal holiday," states:

Whenever periods of time are specified in this part in days, calendar days are intended. When the day, or the last day fixed by statute or regulation by or under this part for taking any action or paying any fee in the Office falls on a Saturday, Sunday or Federal holiday within the District of Columbia, the action may be taken, or the fee paid, on the next succeeding day that is not a Saturday, Sunday or a Federal holiday. (emphasis by the Board)

The Board observed that Rule 2.196 does not use the terms "deadline" or "due date." The "day of the deadline" referred to in Rule 2.127(e)(1) may, of course, be a Saturday, Sunday or Federal holiday. Therefore, the issue at hand was "whether Rule 2.196 applies in determining the timeliness of a motion for summary judgment that is filed subsequent to 'the day of the deadline for pretrial disclosures for the first testimony period, as originally set or as reset.'" The Board said no.

Trademark Rule 2.196 is stated "so as to address and provide guidance on the timeliness of a wide range of actions during the lifecycle of an application or registration:" for example, a response to an Office action, the filing of a petition to the director, the filing of a notice of opposition, or the filing of a notice of appeal from a final refusal. Rule 2.196 defines when "the action may be taken."

Trademark Rule 2.127(e)(1) was adopted and subsequently clarified "in order to establish certainty in the litigation schedule by highlighting the separation between the discovery and trial phases of proceedings, thereby serving to avoid surprise to parties at the time when they are focused on and preparing for trial." See KID-Systeme GmbH v. Turk Hava Yollari Teknik Anonim Sirketi, 125 USPQ2d 1415, 1416 n.3, (TTAB 2018).

The Board faced a similar issue in Asustek Comput. Inc. v. Chengdu Westhouse Interactive Entm’t. Co., 128 USPQ2d 1470 (TTAB 2018), involving a motion to compel discovery. Pursuant to Rule 2.120(f)(1), such a motion must be filed "before the day of the deadline for pretrial disclosures for the first testimony period as set or re-set." The Board rejected Austek's position that, because the day before the deadline day was a Sunday, it could timely file its motion on the following day. Not so said the Board. The motion to compel had to be filed before the deadline day.

In Asustek, the Board pointed out that Rule 2.196 "does not apply to the relevant provision of Trademark Rule 2.120(f)(1), which does not fix a particular day by which a motion to compel must be filed, but instead ensures that the motion be filed before the day of another event (pretrial disclosures) occurs." The Board, anticipating that similar timeliness issues might arise with respect to a motion for summary judgment, stated that "[m]otions for summary judgment, just as motions relating to discovery, must be filed before the proceeding enters the trial phase."

In the case at hand, the Board observed that "[t]he overriding interest in assuring that all matters relating to the discovery phase are closed and resolved prior to trial is evident in and achieved from a proper application of Trademark Rule 2.196 to motions for summary judgment as well as motions to compel discovery."

Here, the trial phase of the proceeding began on July 3, 2021, the due date for the opposer's pre-trial disclosures. Rule 2.196 operates to extend that date to July 6, 2021, but "the day of the deadline" was not moved or changed. The last day for filing a motion for summary judgment was not a date "'fixed to 'the day of the deadline for' Opposer's pre-trial disclosures." (emphasis by the Board). Therefore, the last day on which either party could file a motion for summary judgment was July 2, 2021, the day before the deadline for pretrial disclosure, as reset.

Therefore, Lumber Liquidator's summary judgment motion was untimely.

Read comments and post your comment here.

TTABlogger comment: The Board issued a new scheduling order setting the date for opposer's pre-trial disclosures as Tuesday, February 25, 2022. So, will Lumber Liquidators simply re-file its summary judgment motion?

Text Copyright John L. Welch 2022.

In 2021, How Often Did the TTAB Affirm Section 2(e)(1) Mere Descriptiveness Refusals?

I have again reviewed the TTAB's FOIA page (now called the "TTAB Reading Room") in order to estimate the percentage of Section 2(e)(1) mere descriptiveness refusals that were affirmed by the Board during the last calendar year (2021). I counted 92 refusals, of which 84 were affirmed and 8 reversed. That's an affirmance rate of about 91.3%, a five-point rise from last year's 88%.
 

Only one of the mere descriptiveness reversals was precedential: namely, the TAVERNA COSTERA case [TTABlogged here], in which the Board declined to apply the doctrine of foreign equivalents because the ordinary American purchaser would not stop and translate a mark comprising words from different languages.

Here is a list of the 8 marks (with application serial numbers) involved in the Section 2(e)(1) mere descriptiveness reversals:

• SUPER TECH (88040421)
• MUSICAL TUSHIES (88286556)
• JEWELED LULLABY (88380496)
• BIG BARK (87518612)
• AQUACHAR & Design (88539430)
• FAST DRINK (87635652)
• VOTESAPP (88453022)
• TAVERNA COSTERA (88612441)

Most or all of these reversals found their way into a TTABlog post. You may find a particular post by putting the mark into the search engine box.

How does this compare with past years? Here's a bar chart (again prepared by the one-and-only Francesca ("Frankie") Householder), covering the last ten years:

Click on picture for larger, clearer image..

Read comments and post your comment here.

TTABlogger comment: Will the upward trend continue? Not likely.

Text Copyright John L. Welch 2022.

Precedential No. 1: TTAB Sustains Spotify's Dilution-By-Blurring Claim Against POTIFY for Clothing and Marijuana-Related Software and Services

In a rare dilution ruling, the Board sustained this opposition to registration of the mark POTIFY, in standard character and word-plus-design form, for clothing and for software and services related to medical marijuana dispensaries, on the ground of likelihood of dilution by blurring of the famous, registered mark SPOTIFY for downloadable software and online services. The Board found the mark SPOTIFY to be "as famous as marks comes" and dilution not just likely but "inevitable." Spotify AB v. U.S. Software, Inc., 2022 USPQ2d 37 (TTAB 2022) [precedential] (Opinion by Judge Michael B. Adlin).

Opposer Spotify, a Swedish company known for its music-streaming services, alleged both dilution of its SPOTIFY mark both by blurring and by tarnishment, but the Board ruled only on the former ground. It also declined to reach Spotify's likelihood of confusion claim.

To prevail on its dilution claims, Spotify was required to show that: "(1) it owns a famous mark that is distinctive; (2) Applicant is using a mark in commerce that allegedly dilutes Opposer’s famous mark; (3) Applicant’s use of its mark began after Opposer’s became famous; and (4) Applicant’s use of its mark is likely to cause dilution by blurring or tarnishment. N.Y. Yankees P’ship v. IET Prods. & Servs., Inc., 114 USPQ2d 1497, 1502 (TTAB 2015) (quoting Coach Servs., 101 USPQ2d at 1723-24)."

There was no dispute that the mark SPOTIFY is inherently distinctive. As to whether the mark is famous for dilution purposes, the Board considers the following factors under Section 43(c)(2)(a) of the Lanham Act:

• (i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.
• (ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark.
• (iii) The extent of actual recognition of the mark.
• (iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.
  

The Board found Spotify's advertising and publicity-related evidence to be "overwhelming." Its sales of goods and services were "quite significant" even prior to the applicant's first use date in January 2017. As to actual recognition, the Board concluded that "[i]t would be difficult to overstate the extent of public recognition of the SPOTIFY mark." The mark has been registered and the registration is "incontestable" [i.e., more than five years old and thus vulnerable to attack on limited grounds per Section 14 - ed.].

The Board therefore concluded that SPOTIFY "is exceedingly famous and entitled to protection against dilution under 15 U.S.C. Section 1125(c)."

Applicant U.S. Software primarily argued that the mark SPOTIFY was not famous prior to U.S. Software's first use date. The Board, however, saw no question that the mark was famous well before 2017, and has become even more famous since.

Turning to the question of whether the applicant's use of the POTIFY mark is likely to cause dilution by blurring, the Board considered the six factors set out in Section 43(c)(2)(B)(i-vi) of the Lanham Act.

• (i) the degree of similarity between Applicant’s mark and Opposer’s famous mark;
• (ii) the degree of inherent or acquired distinctiveness of Opposer’s mark;
• (iii) the extent to which Opposer is engaging in substantially exclusive use of its mark;
• (iv) the degree of recognition of Opposer’s mark;
• (v) whether Applicant intended to create an association with Opposer’s SPOTIFY mark; and
• (vi) any actual association between Applicant’s mark and Opposer’s mark.
  

The Board found the marks POTIFY and SPOTIFY to be "striking similar" in appearance, sound, connotation, and commercial impression. The applicant's word-plus-design mark is dominated by the word SPOTIFY. Neither SPOTIFY nor POTIFY has any meaning. The marks are used for software products that "perform analogous functions:" finding music and finding marijuana dispensaries.
 

In short, we find that the marks are highly similar in their entireties, and that Applicant’s mark will “trigger consumers to conjure up” Opposer’s famous mark. This weighs in favor of finding dilution by blurring

The SPOTIFY mark is "nothing if not distinctive." It is a coined, fanciful term registered on the Principal Register without a Section 2(f) claim. SPOTIFY is "among the most highly recognized marks in the United States." 

There was no evidence that the opposer's use of the SPOTIFY mark was "anything other than exclusive." Moreover Opposer Spotify has been vigorous in enforcing the rights in its mark.

As previously discussed, "few marks are as widely recognized in the United States as SPOTIFY." That factor weighed heavily in favor of the finding of dilution by blurring.

U.S. Sofware claimed that its choice of the mark POTIFY had nothing to do with the opposer or the SPOTIFY mark, but the Board concluded otherwise. The founder and the COO of U.S. Software were both longtime SPOTIFY users prior to choosing the POTIFY mark.
 

It defies logic and common sense that a longtime, frequent SPOTIFY user, and another longtime SPOTIFY user, jointly came up with the highly similar name POTIFY without intending to, or knowing that other users of the incredibly popular SPOTIFY service would associate POTIFY with SPOTIFY. The leap in logic and common sense Applicant asks us to take here is even more incredible when we consider that the POTIFY software and services perform many of the same functions as the SPOTIFY software and services, albeit in connection with marijuana rather than music.

In any case, the Board observed that even if it accepted the applicant's claim of innocent adoption, that would not change the ultimate result here.

Finally, although there was no direct evidence of actual association of the POTIFY mark with SPOTIFY, the Board concluded that, in view of the close similarity of the marks, "Applicant's mark will cause consumers to 'confure up' Opposer's famous mark, and 'associate the two.'" N.Y. Yankees, 114 USPQ2d at 1507. However, in view of the lack of direct evidence of association, the Board deemed this factor neutral.

The Board therefore ruled that use of the POTIFY will impair the distinctiveness of the SPOTIFY mark.

There is no question that SPOTIFY is as famous as marks come, that SPOTIFY goods and services are widely used and recognized by a large percentage of the United States population or that Opposer’s SPOTIFY mark is highly distinctive. This was the case prior to Applicant’s claimed date of first use of its mark. Moreover, there is no evidence that any United States m arks come as close to SPOTIFY as Applicant’s POTIFY mark Opposer is understandably concerned, 36 TTABVUE 16 (Sauvaget Dec. ¶ 51), and, although we need only find likely we find it inevitable that POTIFY “will diminish [SPOTIFY’s] distinctiveness. 

Read comments and post your comment here.

TTABlogger comment: I can't recall a more lopsided affair since the Bears beat the Patriots 46-10 in Superbowl XX.

Text Copyright John L. Welch 2022.

In 2021, What Was The Rate of TTAB Affirmance of Section 2(d) Refusals to Register?

Yours truly, the TTABlogger, has once again reviewed the TTAB's FOIA page (now called the "TTAB Reading Room") in order to estimate the percentage of Section 2(d) likelihood-of-confusion refusals that were affirmed by the Board in the past calendar year. I counted 274 decisions, of which 240 were affirmances and 34 were reversals. That's an affirmance rate of approximately 87.6%, or a bit less than 9 out of 10. A follow-up question is: how many were WYHAs?

None of the reversals was precedential. The only precedential Section 2(d) decision was the Joel Embiid case, In re Joel Embiid, 2021 USPQ2d 577 (TTAB 2021), affirming a refusal to register TRUST THE PROCESS for shoes.

Set out below is a list of the 34 proposed marks (with application serial numbers) involved in the Section 2(d) reversals. In the vast majority of cases, the differences in the marks or the differences in the goods/services proved to be dispositive. In several cases, the weakness of a particular term was a key factor (ASEPT, RECIPE BOX, FORAGE, KEEP THE FAITH, ASCENT, and MATCH). Prior registrations (under the 13th DuPont factor) impacted the HANA BANCORP, ELDORADO RESORT, and AXION decisions. And consumer sophistication played a role in several reversals (FLC BANK, JACQUELINE ANNE OCCASIONS, MORE DEVELOPMENT, HERVÉ).

• VALLKREE (79221380) 
• ASEPT-AIR (88265476) 
• MS. INTERNATIONAL (87820883) 
• JACOB FUCHSBERG LAW FIRM (87843998) 
• FLC BANK & Design (88134205) 
• MALDI BIOTYPER SIRIUS (79258339) 
• THE KARTRITE (88337961) 
• THE KARTRITE & Design (88338045) 
• CHROMAFUSION (87570853) 
• JACQUELINE ANNE OCCASIONS (88264864) 
• LIVE ON POINT (88380382) 
• SHAKTI WARRIOR (88459695) 
• PINCH IT! RECIPE BOX (88463841) 
• HANA BANCORP & Design (86019580) 
• PENTALABEL EKLIPSE (88288761) 
• FORAGE KITCHEN (87561681) 
• ELDORADO RESORT CASINO RENO (88514634) 
• PFANNER STRETCHFLEX (79247130) 
• KING’S RANSOM (79261464) 
• HIGH FIBE (88536980) 
• UT FIDEM KEEP THE FAITH & Design (88592284) 
• ZAHRA (88619996) 
• MIKEY WRIGHT (79287529) 
• MORE DEVELOPMENT (88943364) 
• NATURA GOURMET & Design (88451023) 
• TOTALLY SEAMLESS SOLUTION (88610652) 
• GENESIS VILLAGE & Design (88626467) 
• ASCENT FEDERAL CREDIT UNION (88675314) 
• ICEE (88683570) 
• DEVIL’S PAINT BOX IPA and Design, (88685983)
• HERVÉ (88703545) 
• ROOM 2 GROW & Design (88727081)
• AXION (88897035)
• MATCH STUDIO (88674888)

Almost all of these reversals found their way into a TTABlog post. You may find a particular post by putting the mark into the search engine box.

How does this compare with past years? Here's a bar chart (prepared by the incomparable Francesca ("Frankie") Householder of Wolf Greenfield), covering the last ten years:

Click on picture for larger, clearer image.

Read comments and post your comment here.

TTABlog comment: Unlike in the last two years year, the month of September was not so bad for appellants. In September 2019, the Board affirmed all 47 Section 2(d) refusals. In 2020, it was 45 out of 46. Last year, there were 38 affirmances and 10 reversals. Since September is the last month of the USPTO's fiscal year, a lot of decisions come down that month.

 
Text Copyright John L. Welch 2022.

E.D. Va. District Court Upholds TTAB Decision Finding "GRUYERE" Generic for Cheese

In a convincing opinion, the United States District Court for the Eastern District of Virginia has upheld the Board's decision [TTABlogged here] finding the term GRUYERE to be generic for cheese, and thus unregistrable as a certification mark. On the Dairy Export Council's motion for summary judgment, the court found that "the undisputed evidence produced by the parties in this case makes clear that the primary significance of the term GRUYERE, as understood by the relevant purchasing public in the United States, is a generic term for a type of cheese and does not refer solely to cheese from a specific geographic region." Interprofession du Gruyère et al. v. U.S. Dairy Export Council et al., Civil Action No. 1:20-cv-1174 (E.D. Va. December 15, 2021).

In a civil action for review of a TTAB decision under Section 1071(b), the parties may supplement the TTAB record with additional evidence. If they do, the district court “must make de novo factual findings that take account of both the new evidence and the administrative record.” Kappos v. Hyatt, 566 U.S. 431, 446 (2012); see also Shammas v. Focarino, 784 F.3d 219, 225 (4th Cir. 2015). "Thus, the determination of genericness in this case is made de novo, and the TTAB’s opinion is not given deference." The judge, not a jury, is the finder of fact.

Whether a proposed mark is generic is a question of fact. "Although questions of fact are not often appropriate for resolution on a motion for summary judgment, the Fourth Circuit has held that a challenge to a term’s genericness can be properly resolved on summary judgment where 'the evidence of genericness was so one-sided that no genuine issue of fact existed.'" Retail Servs., Inc. v. Freebies Publ’g, 364 F.3d 535, 546 (4th Cir. 2004)."

"The central issue in this matter is whether the term GRUYERE has become generic for a certain type of cheese and is no longer understood to refer only to cheese which comes from the Gruyère region of Switzerland and France."

A term which was once non-generic and conveyed the quality or origins of good can become generic over time through a process called genericide, which occurs when a generic term “ceases to identify in the public’s mind the particular source of a product or service but rather identifies a class of product or service, regardless of source.” Glover v. Ampak, Inc., 74 F.3d 57, 59 (4th Cir. 1996). McCarthy, the leading treatise on trademark law explains that “[t]he concepts of ‘generic name’ and ‘trademark’ are mutually exclusive.

The CAFC has stated that "the relevant public’s perception is the primary consideration in determining whether a term is generic." Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 969 (Fed. Cir. 2015). The party opposing registration has the burden to prove genericness by a preponderance of the evidence. Royal Crown Co., 892 F.3d at 1366.

The court found the evidence overwhelming that "[a]lthough the term GRUYERE may once have been understood to indicate an area of cheese production, the factual record makes it abundantly clear that the term GRUYERE has now, over time, become generic to cheese purchasers in the United States." The record included three types of evidence: (1) existing U.S. regulations permitting the use of the term GRUYERE on cheese regardless of its origin (2) commercial and government data showing the widespread sale and import of GRUYERE cheese produced outside the Gruyère region of Switzerland and France; and (3) evidence showing that the term GRUYERE is commonly used in dictionaries, media communications, and cheese industry events and materials to refer to a type of cheese without respect to where the cheese is produced.

[D]ecades of importation, production, and sale of cheese labeled GRUYERE produced outside the Gruyère region of Switzerland and France have eroded the meaning of that term and rendered it generic. The term GRUYERE has “cease[d] to identify in the public’s mind the particular source of” a given cheese “but rather identifies a class of product or service, regardless of source.” Glover, 74 F.3d at 59

And so, the court granted Defendant Dairy Export Council's motion for summary judgment.

Read comments and post your comment here.

TTABlogger comment: Interprofession du Gruyere filed a notice of appeal on January 7, 2022.

Text Copyright John L. Welch 2022.

Professor McCarthy Criticizes CAFC's Stance on Article III Standing in Brooklyn Brewery Case

Professor J. Thomas McCarthy has provided to me his comments on the CAFC's October 27, 2021 decision in the Brooklyn Brewery case, in which the appellate court largely affirmed the TTAB's denial of Plaintiff Brooklyn Brewery's petition for cancellation of a registration for the mark BROOKLYN BREW SHOP (in standard form) for beer-making kits. However, as to the Board's dismissal of Brewery's opposition to the stylized form of the mark for "sanitizing preparations for household use," the court ruled that Brewery lacked Article III standing to appeal that decision because it failed to demonstrate that it would suffer injury if the registration were granted, since the Brewery does not sell sanitizing preparations. That, in Professor McCarthy's view, was a serious error. His comments are set out below. 

 

The Federal Circuit in its 2021 Brooklyn Brewery decision stated that competition between the parties is a prerequisite to assertion of a claim of likelihood of confusion in court. The court said that although Article III constitutional standing is not required to assert a confusion-based opposition or cancellation claim in the Trademark Trial and Appeal Board, it is required to appeal or assert such a claim in a court. According to the Federal Circuit, Article III constitutional standing requires that “the challenger and registrant compete in the same line of business:” “Thus, the test for likelihood-of-confusion or descriptiveness purposes is whether the challenger and registrant compete in the same line of business and failure to cancel an existing mark, or to refuse registration of a new mark, would be likely to cause the opposer competitive injury.” Brooklyn Brewery Corp. Brooklyn Brew Shop, LLC, 17 F.4th 129, 139 (Fed Cir. 2021).

The Federal Circuit held that Opposer Brewery did not have Article III standing to appeal because it could not show a “concrete and particularized risk of interference with the rights that flow to it from registration of its own mark, or some other Article III injury.” This failure to show an Article III injury from an application to register BROOKLYN BREW SHOP for sanitizing preparations was said to arise because the opposer, who uses its registered BROOKLYN BREWERY mark for beer, could not be injured by a registration of a similar mark for sanitizing preparations, a product opposer did not make or sell. While the TTAB decided the case as a traditional question of whether confusion was likely, the Federal Circuit turned it into a constitutional Article III issue. The court did not mention the Supreme Court’s most recent Article III decision in TransUnion LLC v. Ramirez, 141 S.Ct. 2190, 2211 (2021), where the Supreme Court said of its prior Spokeo decision: “As Spokeo noted, ‘the law has long permitted recovery by certain tort victims even if their harms may be difficult to prove or measure.’” In my view, this would easily encompass claims of a likelihood confusion between non-competitors.

In my opinion, the court’s embrace in the Brooklyn Brewery case of a novel requirement of a competitive relationship is both unprecedented and alarming. I can only hope that it will not be read by this or other courts to work a sudden and far-reaching change in the legal test for likelihood of confusion. A century ago, courts did require competition between the parties for infringement by likelihood of confusion to occur. For example, in 1912 the Seventh Circuit found no infringement of the trademark BORDEN for milk by the use of BORDEN for ice cream because the goods were non-competitive. Borden Ice Cream Co v. Borden's Condensed Milk Co, 201 F. 510, 513 (7th Cir. 1912).

Under that early view of trademark law, unless there was competition between the parties, there could not be a diversion of customers and thus there could be no injury to the mark owner. Case law in the early 20th century decisively rejected the earlier precedent. For many decades since, no court, including the Federal Circuit, has held that the parties must be in competition with each other for a likelihood of confusion to occur. See McCarthy on Trademarks and Unfair Competition, §24:13 (Competition is Not Necessary for Confusion to Occur.) The Federal Circuit itself held that the “related goods test measures whether a reasonably prudent consumer would believe that noncompetitive but related goods sold under similar marks derive from the same source, or are affiliated with, connected with, or sponsored by the same trademark owner.” In re Save Venice New York, Inc., 259 F.3d 1346, 1355, 59 U.S.P.Q.2d 1778 (Fed. Cir. 2001),

The Supreme Court in the seminal Lexmark standing case held that under the Lanham Act, competition is not required for standing. The high court noted that: “By the time the Lanham Act was adopted, the common-law tort of unfair competition was understood not to be limited to actions between competitors.” Lexmark International, Inc. v. Static Components, Inc., 134 S. Ct. 1377, 1392, (2014).

One result of the Brooklyn Beer case is that the Federal Circuit will not review most TTAB decisions in which the parties are not in competition. Will this channel all TTAB appeals to a federal District Court? But if other courts adopt the same thinking, then most TTAB decisions will not be reviewable by any court. In that event, the TTAB will be the “court” of last resort.

I conclude that the language in Brooklyn Brewery is an erroneous reading of both Article III and classic trademark law. I am concerned that it has the potential to work a drastic and far-reaching change in the basic test for likelihood of confusion.

Read comments and post your comment here.

TTABlogger comment: The Brewery recently filed a petition for en banc reconsideration of the court's decision.

Text Copyright J. Thomas McCarthy 2022.