Heck Freezes Over: USPTO Fails to Prove Gin Related to Beer Under Section 2(d)

The USPTO fumbled the ball here in what should have been a fairly easy run for a touchdown. The Board reversed a refusal to register the mark shown below left, for "gin," finding that the USPTO failed to prove confusion likely with the mark on the right, for various beers. The Board found the marks to be "more similar than dissimilar," but the USPTO's feeble evidentiary showing regarding the relatedness of gin and beer led the Board to weigh the second DuPont factor as dispositive in favor of Applicant Cobblestone Brands. In re Cobblestone Brands Ltd, Serial No. 97453097 (December 19, 2024) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.).

The Marks: Applicant disclaimed AMERICAN GIN, while the cited registration includes disclaimers of BREWING CO and DALLAS TX. Cobblestone argued that the design elements of the marks are the dominant features but the Board gave that assertion a bumpy ride, finding FOUR CORNERS to be dominant in both. Although the design elements are "noticeable," "it will be the words rather than colors or designs in the marks that will be used to call for and discuss Applicant’s and Registrant’s goods."

Although we recognize that there are differences between the marks when viewed on a side-by-side basis, when compared in their entireties we find them more similar than dissimilar in appearance, sound, meaning, and commercial impression due to presence of the identical dominant phrase FOUR CORNERS in both marks.

The Goods: The Office relied on "a smattering of third-party Internet evidence" to show the relatedness of gin and beer: a mere three websites offering the goods under the same mark. The Board found that evidence "unconvincing."

While there is no threshold number, three examples are a relatively small amount given the number of breweries and distilleries in the United States and the Internet resources for research easily available on the subject to examining attorneys. *** [O]n the record before us, there is simply insufficient evidence of third parties using the same mark in connection with beer and gin, or evidence that a maker of gin also actually produces beer, or that the goods are complementary.

The Examining Attorney pointed to prior Board decisions finding various alcoholic beverages related, but the Board was unimpressed: "Put simply, the Examining Attorney cannot evade the burden to prove relatedness by bootstrapping upon previous factual findings made in other decisions on different records." In any event, the evidence here "pales in comparison to the evidence in those cases."

Trade Channels: The Office also failed to prove that the trade channels overlap. "Although the consolidation of production, distribution, and/or sale in the beer, wine, and spirits markets suggests that there may be some overlap in trade channels, we cannot make such a finding on this record." [Seems like the Board could take judicial notice that gin and beer are sold in the same retail stores. - ed.].

Conclusion: The applicant wins! The applicant wins!

Read comments and post your comment here.

TTABlogger comment: As I recently said in my comment on the JERSEY GIRL case [TTABlogged here], "In these alcoholic beverages case, an applicant's principal hope seems to be the weakness of the Office's evidence of third-party registration and use."

Text Copyright John L. Welch 2024.

Recommended Reading: The Trademark Reporter's Theme Issue on Artificial Intelligence

The November-December 2024 (Vol. 114 No. 6) issue of the Trademark Reporter is devoted to artificial intelligence and its impact on trademark and related intellectual property law. [pdf here]. Willard Knox, Editor-in-Chief, summarizes the contents as follows (and below): "The TMR devotes this issue to the realm of artificial intelligence (“AI”). Whether one believes that AI is mostly hype or as seismic a change as the smartphone, there is no doubt that AI will evolve and improve, fundamentally changing one’s professional and private lives in ways one can only begin to imagine. The preeminent authors of the articles in this curated collection describe the present relationship between AI and trademarks (and complementary intellectual property) and explore what the future may bring to this emerging and evolving area of the law."

Editor’s Note: Theme Issue—Artificial Intelligence, by Pamela Chestek. The editors of The Trademark Reporter are pleased to devote this issue to the realm of artificial intelligence (“AI”). The issue looks, narrowly and broadly, at what impact AI may have on trademarks—the choice of trademarks, the effect of AI on consumer choice, and AI’s impact on jurisprudence.

AI and the “Death of Trademark” by Michael Grynberg. The author of this 2020 article, published before the introduction of ChatGPT by its creator, Open AI, in November 2022, imagines an artificial intelligence (“AI”) assistant able to make product choices for consumers—a capability that the author considered hypothetical but that has now been fully realized in today’s AI models. The author posits that trademarks will take a lesser role in product selection, perhaps even becoming superfluous.

Trademarks in an Algorithmic World, by Christine Haight Farley. The author of this 2023 article takes the next step (following the article “AI and the ‘Death of Trademark’” by Michael Grynberg) and points out that that the very foundation of modern trademark law, the “search costs theory,” may no longer apply when artificial intelligence agents are making product choices for consumers.

Trademark Confusion Revealed: An Empirical Analysis, by Daryl Lim. The author of this article considers the possibility of using empirical analysis to train artificial intelligence models that would allow courts to reach more consistent and accurate results on likelihood of trademark confusion and that would, in turn, allow trademark counselors to better predict likely outcomes before ever reaching the courts.

Large Legal Fictions: Profiling Legal Hallucinations in Large Language Models, by Matthew Dahl, Varun Magesh, Mirac Suzgun, and Daniel E. Ho. The authors of this article analyze the extent of legal hallucinations by different Large Language Models when evaluating district court cases and point out that hallucinations are inevitable as the artificial intelligence model tries to maintain fidelity to the training corpus, the user’s prompt (which may assume incorrect information), and the law itself, three areas that may be in conflict.

Trademark Search, Artificial Intelligence, and the Role of the Private Sector, by Sonia K. Katyal and Aniket Kesari. The authors of this article explore the realm of private trademark search providers already using artificial intelligence and their effect on trademark selection and propose that not just consumers but also trademark owners should be considered relevant economic actors in the trademark ecosystem, with a significant interest in selecting trademarks that will not be rejected by trademark offices.

Generating Rembrandt: Artificial Intelligence, Copyright, and Accountability in the 3A Era—the Human-Like Authors Are Already Here—a New Model, by Shlomit Yanisky-Ravid. The author of this article suggests that a new ownership model for works generated by artificial intelligence based on the existing work-made-for-hire copyright laws should be adopted in the “3A era” of automated, autonomous, and advanced technology.

Copyright Thickness, Thinness, and a Mannion Test for Images Produced by Generative Artificial Intelligence Applications, by Molly Torsen Stech. The author of this article searches for an answer to the conundrum of copyright ownership of works generated through the use of, or assistance from, artificial intelligence, and suggests taking a cue from the jurisprudence of the copyrightability of photographic works as considered in Mannion v. Coors Brewing Co.

Read comments and post your comment here.

TTABlog comment: Once again, I thank The Trademark Reporter for allowing me to provide this issue to you all. This issue of the TMR is Copyright © 2024, the International Trademark Association, and is made available with the permission of The Trademark Reporter®.

TTABlog Test: Three Section 2(d) Appeals - Affirmed or Reversed?

A TTAB judge once said to me that one can predict the outcome of a Section 2(d) appeal about 95% of the time just by looking at the marks and the goods/services. Of course, if you just said "affirmed" you'd be right about 90% of the. time. Anyway, here are three recent Board decisions. No hints this time How do you think they came out? [Answer in first comment].

In re Brumis Imports, Inc., Serial No. 90605980 (December 16, 2024) [not precedential] (Opinion by Judge Christen M. English). [Section 2(d) refusal of the mark BKLYN REFINERY for, inter alia, shampoo, body wash, and shower gel [BKLYN disclaimed], in view of the mark THE REFINERY for, inter alia, the same goods.]

In re Gymeni Fitness Technology LLC, Serial No. 97428010 (December 16, 2024) [not precedential] (Opinion by Judge Christen M. English) [Section 2(d) refusal of the mark GYMENI for "caps, t-shirts, sweatshirts, athletic shorts" in view of the registered mark GYMINI for, inter alia, tee-shirts, shorts, and sports caps.]

In re Zoom Video Communications, Inc., Serial No. 97747222 (December 16, 2024) [not precedential] (Opinion by Judge Martha B. Allard). [Section 2(d) refusal of the mark ZOOM CALENDAR for calendaring software and related services [CALENDAR disclaimed] in view of the registered mark ZOOM REHEARSE for software as a service (SAAS) that provides, among other things, electronic calendaring.]

Read comments and post your comment here.

TTABlogger comment: See any WYHA?s?

Text Copyright John L. Welch 2024.

Three Recent Inter Partes "Disasters" - Don't let this Happen to You

When a decision in an inter partes proceeding is 13 pages long or less, you can expect that someone or something went off the rails real quick. Here are three recent decisions falling within that category. I think there are some very basic lessons to be extracted.

Dongguan Mibang Network Technology Co., Ltd. v. Ontek Solutions, Opposition No. 91283885 (December 9, 2024) [not precedential] (Opinion by Judge Thomas L. Casagrande). [Opposition to registration of the mark GEJOY in the stylized form shown on the specimen of use (below), for "Bracelets made of seagrass" on the ground of, inter alia, likelihood of confusion with the common law and registered mark GEJOY for "Carnival masks; Knee guards for athletic use; Ornament hooks for Christmas trees; Play balloons; Hand-held party poppers; Hangers for Christmas tree ornaments." Opposer neither attached its registration to the Notice of Opposition nor presented any evidence during its trial period. Furthermore, the applicant did not admit any of opposer's allegations. The Board therefore found that opposer had failed to prove its entitlement to a cause of action (f/k/a standing) and it dismissed the opposition.]

Metabev LLC v. VSWC LLC, Cancellation No. 92083154 (December 12, 2024) [not precedential] (By the Board). [Petition for cancellation of a registration for the mark META WINE for "wine" on the ground of abandonment. Registrant failed to respond to petitioner's admission requests and did not move to amend or withdraw its admissions or to reopen its time to respond. It was therefore deemed to have admitted that it "“ha[s] not used [Respondent’s] Mark in connection with any goods or services after June 30, 2020” and that it “ha[s] no current plans to use or resume the use of the mark." The Board granted petitioner's motion for summary judgment.]

Curve Therapeutics Ltd. v. Shan X. Wang, Opposition No. 91276501 (December 13, 2024) [not precedential] (Opinion by Judge Peter W. Cataldo). [Opposition to registration of CURVE BIOSCIENCES for cancer detection kits in view of the "applied-for" (sic) mark CURVE THERAPEUTICS for various medical goods and services. The Board refused to consider evidence attached to opposer's brief, as well as evidence submitted with a prior summary judgment motion but not submitted during opposer's testimony period. With no evidence in the record, opposer failed to prove its entitlement to a statutory cause of action, and so the Board dismissed the opposition.]

Read comments and post your comment here.

TTABlogger comment: Can any of the losing parties seek review by way of civil action and then add evidence to overcome these defects?

Text Copyright John L. Welch 2024.

INTA Files Proposed Amicus Brief in Peju's Appeal: SDNY Erred in Applying Issue Preclusion Based on TTAB Decision

The International Trademark Association (INTA) has filed a proposed amicus brief with the U.S. Court of Appeals for the Second Circuit in Peju's appeal from the decision of the U.S. District Court for the Southern District of New York in Cesari S.R.L. v. Peju Province Winery L.P., Civil Action No. 17 Civ. 873 (NRB) (S.D.N.Y. Dec. 11, 2017) [pdf here]. The district court granted Plaintiff Cesari's motion for partial summary judgment on its trademark infringement claim, ruling that preclusion applied to the issue of likelihood of confusion based on a 2004 TTAB decision. In its brief, INTA states: "In light of B & B Hardware and this Court’s precedents, the District Court erred by applying issue preclusion to justify its refusal to consider such evidence." The proposed amicus brief may be downloaded here.

 

INTA's brief supports neither party and it takes no position on whether "the proffered marketplace distinctions would be sufficient to avoid confusion in the case at issue," Rather, "INTA urges this Court to rule that, under B & B Hardware, a prior TTAB decision based on a likelihood of confusion should be given preclusive effect only where, the TTAB received, considered, and resolved the dispute based on evidence of actual marketplace usage—which is not the case here."

Read comments and post your comment here.

TTABlogger comment: Previous TTABlog discussions of the Peju case may be found here and here.

Text Copyright John L. Welch 2024.

TTAB Dubiously Finds that Vertical Light Beams atop Guitar-Shaped Building Fail to Function as a Source Indicator

In a less than enlightening decision, the Board affirmed a refusal to register the proposed mark shown below as a service mark for "casinos" and "hotel, restaurant and bar services," finding that the mark "is not an inherently distinctive source identifier and therefore, fails to function as a service mark for Applicant’s services." According to the Board, it must consider the proposed mark in the abstract, unconnected to a building, and in that light the mark is merely a refinement of a "commonplace promotional practice." In re Seminole Tribe of Florida, Serial No. 90318831 (December 13, 2024) [not precedential] (Opinion by Judge Mark A. Thurmon).

The proposed mark, according to the application, "consists of six parallel, vertical beams of light representing guitar strings, extending 20,000 feet in the air from the top of a guitar-shaped building. The guitar-shaped building is not part of the mark and merely shows the placement of the mark." [You will recall that the guitar shape of the hotel building was found to be inherently distinctive product packaging trade dress in the Board's Seminole seminal ruling in In re Seminole Tribe of Florida, 2023 U.S.P.Q.2d 631 (TTAB 2023). [TTABlogged here]]. Here, the Board emphasized that "the drawing depicts, and the description of the mark refers to, a guitar-shaped building, but both do so only to make clear that the guitar-shaped building is not part of the applied-for mark."

Applicant's Specimen of Use

Considering the proposed mark to be merely beams of light, the Board noted the evidence of four other uses of vertical light beams: the 911 Memorial in New York City, the illumination in Washington, DC, at the Covid-19 ceremony, a promotion for a Chicagoland McDonald's restaurant, and a single light beam at the Luxor Hotel in Las Vegas.

The Board then determined that applicant's light beams constitute product design, not product packaging [unlike the guitar shape of the hotel building] and it pointed out that product design can never be inherently distinctive. It then reached the same conclusion regarding lack of inherent distinctiveness by applying the Seabrook test:

We cannot say that such practices are particularly common for casinos and hotels, as we have only one example of such a use in the record (the Luxor in Las Vegas). *** We find the evidence of record is sufficient to show that projecting light beams skyward is a common promotional practice and that Applicant’s light beams—divorced from any guitar indica—are merely a refinement of that practice. As such, the applied-for mark is not inherently distinctive.

"Because the applied-for mark does not function as an inherently distinctive mark for casino, hotel, restaurant and bar services, we affirm the failure to function refusal." [Isn't this a non sequitur? -ed.].

Read comments and post your comment here.

TTABlogger comment: This whole decision makes no sense to me. I don't understand how the Board can accept one part of the mark description "vertical beams of light" and then ignore the rest of the description. Applicant is not seeking to register a mark in the abstract, but only for hotel and casino services rendered in a building. A registration would not give it the right to challenge light beams on a McDonalds or at the Mall in DC. 

Text Copyright John L. Welch 2024.

Does "FIRST LOOK" Fail to Function as a Source Indicator for Retail Membership Club Services?

Failure-to-function is the original sin of trademark law. If consumers don't or won't perceive a term as indicating source, then the term is not a trademark (or service mark). The USPTO refused to register the proposed mark FIRST LOOK on the Supplemental Register, for "Membership club services in the nature of providing discounts to members in the field of retail of luxury goods," on the ground of failure-to-function. Examining Attorney Jacob Magit maintained that consumers would perceive “FIRST LOOK” "as merely informational, indicating that the benefits of Applicant’s membership club services include the opportunity for members to purchase goods before they are available to the general public. How do you think this appeal came out? In re The RealReal, Inc., Serial No. 97232753 (December 11, 2024) [not precedential] (Opinion by Judge Mark Lebow).

"One way a proposed mark fails to function is if consumers will view it as a merely informational slogan or phrase instead of something that 'point[s] out distinctively the origin of the goods [or services] to which it is attached.'" In re Brunetti, 2022 USPQ2d 764. “Matter may be merely informational and fail to function as a trademark if it is a common term or phrase that consumers of the goods or services identified in the application are accustomed to seeing used by various sources to convey ordinary, familiar, or generally understood concepts or sentiments.” Id.

The examining attorney relied on dictionary definitions of the constituent words, a Wikipedia entry, and Internet evidence showing use of the term FIRST LOOK by at least 31 third parties in their promotion of retail membership services in a variety of fields.

As the evidence clearly shows, FIRST LOOK is a widely-used term used to describe a particular benefit of membership services, namely, a benefit that provide members with a first look at new products or services, often with the opportunity to purchase them at exclusive membership discounts.

Applicant acknowledged in its brief that "businesses seem to use 'FIRST LOOK' to identify a benefit/perk as part of their respective membership programs." Moreover, applicant displays the wording FIRST LOOK together with EARLY ACCESS and the phrases "Shop the Best Luxury First" and "Get 24-hour advanced access to new arrivals."

In addition to several other feeble arguments, applicant contended that most of the Office's evidence did not show how potential purchasers in the field of luxury goods would perceive FIRST LOOK.  The Board disagreed, noting that the evidence "spans a variety of industries, including those that arguably fall within the field of luxury goods, such as the evidence from Tommy Hilfiger, Williams Sonoma, Crate & Barrel and others."

And so, the Board affirmed the refusal under Sections 1, 2, 3 and 45 of the Act.

Read comments and post your comment here.

TTABlogger comment: Compare this case to the FIRST YEAR DOWN reversal blogged a few days go. There the applicant did not shoot itself in the foot by its own usage, and the Board pooh-poohed the third-party uses because of lack of information regarding sales, etc.  Here, there was no such information, but the number of third-party users was greater.

Text Copyright John L. Welch 2024.

Peju Pursues Appeal of SDNY Decision Misapplying B&B Hardware On Issue Preclusion

Six years ago we discussed here the decision of the U.S. District Court for the Southern District of New York in Cesari S.R.L. v. Peju Province Winery L.P., Civil Action No. 17 Civ. 873 (NRB) (S.D.N.Y. Dec. 11, 2017) [pdf here], in which the court granted Plaintiff Cesari's motion for partial summary judgment on its trademark infringement claim, ruling that preclusion applied to the issue of likelihood of confusion based on a 2004 TTAB decision. Several commenters, and yours truly, criticized that ruling. After battles over other issues, the case has now made its way to the Second Circuit and Peju has just filed its opening brief. [pdf here].

According to the Supreme Court in B&B Hardware, issue preclusion applies to TTAB adjudications: "s]o long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before the district court, issue preclusion should apply." Peju argued that "their actual marketplace usage of LIANA is materially different from that with the TTAB adjudicated," pointing out that the actual usage is limited to wines from grapes grown in Northern California, wines purchased by sophisticated customers, new world wines, wines priced between $40 and $60 per bottle, and wines sold on specific websites and at specific wineries. The district court, however, found this to be a "distinction without a difference in this context."

You will recall that, in her concurrence in B&B, Judge Ginsburg observed that "for a great many registration decisions issue preclusion will obviously not apply," because the Board's decisions often involve "a comparison of the marks in the abstract and apart from their marketplace usage." That is what happened here, Peju argues.

In addition to the B&B issue, Peju has raised several others in its appeal. Here is a Peju's "Statement of Issues Presented":

1. Whether the district court erred when it granted partial summary judgment in favor of Cesari in Peju I, finding a likelihood of confusion between PPW’s LIANA trademark and Cesari’s LIANO trademark based on issue preclusion in reliance on a thirteen-year-old Board summary judgment decision that was the product of a proceeding in which the Board (i) deprived Peju of its due process rights when it sua sponte converted Cesari’s motion for judgment on the pleadings into a motion for summary judgment without giving Peju notice and an opportunity to present evidence; and (ii) did not evaluate the marketplace usage of the two marks that were before the district court?


2. Whether the district court erred when it found, in its post-trial decision, that Peju’s trademark infringement was willful based solely on its prior partial summary judgment decision (Peju II), in which it found Peju acted in “bad faith” in the context of a laches affirmative defense?


3. Whether the district court, in its post-trial decision on disgorgement of Peju’s profits, erred when it declined to equitably adjust the disgorgement sum downward?


4. Whether the district court erred when it found this was an “exceptional case” under 15 U.S.C. § 1117(a)?

Read comments and post your comment here.

TTABlogger comment: Hat tip to FOBs and Peju counsel Joel MacMull and Marty Schwimmer.

Text Copyright John L. Welch 2024.

TTABlog Test: Is SWAG GOLF for Clothing Confusable with SWAG for Belt Buckles?

Curious readers sometimes ask for follow-ups on cases that I list in my oral argument posts. Well, here's one: an opposition to registration of the mark SWAG GOLF for "Clothing for athletic use, namely, padded shirts; Clothing, namely, khakis; Belts for clothing; Bottoms as clothing; Embroidered clothing, namely, shirts, hats; Hoodies; Jerseys; Tops as clothing; Wearable garments and clothing, namely, shirts" [GOLF disclaimed], on the ground of likelihood of confusion with the registered mark SWAG for, inter alia, belt buckles. How do you think it came out? [Hint: the opinion was only eleven pages long]. Kuldisak, LLC d/b/a Swag Golf v. RASL Enterprises Inc., Opposition No. 91276063 (December 9, 2024) [not precedential] (Opinion by Judge Mark Lebow).

The Marks: Not surprisingly, the Board found the word SWAG to be the dominant element in applicant's mark, since it's the first word in the mark and GOLF is disclaimed. Moreover, applying its "nose-of-wax" approach, the Board noted that applicant "could display its standard character mark SWAG GOLF with emphasis on SWAG, as shown below, which would also enhance the marks’ similarity:"

And so, the Board found the first DuPont factor to favor opposer.

The Goods: The Board focused on the "Belts for clothing" in the opposed application, and it took judicial notice of the American Heritage Dictionary’s definition of "buckle": "[a] clasp for fastening two ends, as of straps or a belt, in which a device attached to one of the ends is fitted our coupled to the other."

Based on the identifications of goods themselves and the above-noted dictionary definition, we find that Applicant’s identified "belts for clothing" and Opposer’s "belt buckles" are inherently related and complementary. *** We, accordingly, find that Applicant’s and Opposer’s goods are related, and that the second DuPont factor weighs in favor of a likelihood of confusion.

Conclusion: And so, the Board sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: A real yawner! Somehow, one expects cases that go to oral argument to be cutting edge, or at least interesting. Not so here.

Text Copyright John L. Welch 2024.

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

The outcome of a Section 2(d) opposition is obviously more difficult to predict than a Section 2(d) appeal. Priority, strength of the opposer's mark, a crowded field, and lack of actual confusion may come into play, for example, and the parties may enter into stipulations or make admissions that significantly affect the result. By my estimate, Section 2(d) oppositions have been sustained about 80% of the time so far this year, which may indicate how the deck is stacked against applicants in the likelihood-of-confusion analysis. Here are three recent Board decisions in relatively uncomplicated cases, at least one of which was a dismissal of the opposition. How do you think they came out? [Answer in first comment].

RLP Ventures, LLC v. Heising-Simons Foundation, Opposition No. 91246949 (December 5, 2024) [not precedential] (Opinion by Judge Mary Beth Myles). [Opposition to registration of AMERICAN MOSAIC JOURNALISM PRIZE for "Nonprofit services, namely the awarding of fellowships and monetary prizes in the field of journalism" [JOURNALISM PRIZE disclaimed] in view of the mark MOSAEC for information and entertainment services and charitable fundraising services.]

The Lip Bar, Inc. v. Suzanne Lang Fragrance Inc., Opposition No. 91277112 (December 4, 2024) [not precedential] (Opinion by Judge Melanye K. Johnson). [Opposition to registration of LIP LAB in view of the registered mark THE LIP BAR [LIP disclaimed], both for lip-related cosmetics.]

Frontier Distribution LLC v. Mountain View Fruit Sales Inc., Opposition No. 91269392 (November 29, 2024) [not precedential] (Opinion by Judge Elizabeth A. Dunn). [Opposition to registration of SIMPLY GROWN ORGANIC for "organic fresh fruit" [GROWN ORGANIC disclaimed] in view of the registered mark SIMPLY ORGANIC, for spices and seasonings [ORGANIC disclaimed].]

Read comments and post your comment here.

TTABlogger comment: How did you do?.

Text Copyright John L. Welch 2024.

TTAB Dismisses FIRST YEAR DOWN Opposition: Failure-to-Function and Fraud Claims Fail

The Board tossed out this opposition to registration of the mark FIRST YEAR DOWN for infant and children's wear, finding that Opposer TaShae Watson's evidence fell short of proving her failure-to-function and fraud claims. Watson asserted that "First Year Down" is merely a commonplace phrase or message used by many sellers to celebrate first birthdays, and not a source indicator, and she charged that Applicant' Uzzo's specimens of use were fake. TaShae Watson v. Anthony Uzzo, Opposition No. 91277679 (December 5, 2024) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).

Failure-to-Function: “Matter that is widely used to convey ordinary or familiar concepts or sentiments, or social, political, religious, or similar informational messages that are in common use, would not be perceived as indicating source and is not registrable as a mark.” In re Team Jesus LLC. The Board therefore considered how FIRST YEAR DOWN is used in the marketplace and how it is perceived by consumers.

Applicant Uzzo stated that he used the mark FIRST YEAR DOWN on hangtags (above), and the words "First Year Down by Little Sweetees" on sewn-in labels and packaging.

Watson submitted evidence that she and other online sellers offer baby clothing or other goods displaying the slogan FIRST YEAR DOWN or 1st Year Down: including declarations from two other online sellers, screenshots of Etsy pages from those two sellers and others, and an Amazon.com page. However, the witnesses provided no information regarding sales volume, number of user views, customers, or the like.

Uzzo conceded that the phrase FIRST YEAR DOWN has been used ornamentally, but he argued that this "does not prevent the words from functioning as a trademark, particularly when he has used the mark consistently in other ways, such as on hang tags, collar labels and his Etsy page."

The Board found Watson's evidence to be "relatively weak and scant" to other cases where the Board found a phrase was so commonly used that it would not be considered a source indicator,

Opposer has presented no dictionary definitions, news articles, or social commentary evidencing that the phrase has found its way into the American English vernacular or popular culture, even that of families with young children. Rather, Opposer’s evidence consists of a limited quantity of products sold on online marketplaces. Although online marketplaces offering goods of third-party sellers can provide relevant evidence of consumer perception, in this case, the relatively small number of uses with an unknown magnitude of sales is insufficient to meet Opposer’s burden of proof, particularly in the absence of other evidence showing use of the phrase.

The Board was "not unsympathetic" to the plea of Opposer Watson and the declarants that they should be free to use the phrase "First Year Down" or "1st Year Down" as an ornamental feature on clothing. However, the Board expressed "no opinion on the ability to use such phrases ornamentally, and not as source indicators, even if Applicant’s mark is registered."

Fraud: Opposer Watson submitted declarations of two friends who purchased bodysuits from applicant’s Etsy site that did not have a hang tag or any other tag or label bearing the phrase “FIRST YEAR DOWN." She claimed Uzzo submitted fake specimens showing garments without the slogan on the front and with hang tags that are not actually used, to conceal the merely ornamental nature of the slogan.

The Board noted that "the testimony submitted by Opposer, a sample of two purchases, does not foreclose the possibility of products also shipped with the branded stickers" on the packaging. Applicant Uzzo explained how some items might have been shipped without the mark affixed, and he provided documentary evidence to corroborate his explanation.

The Board concluded that the evidence "does not come close to proving that Applicant submitted a fake specimen, let alone by clear and convincing evidence."

Applicant submitted testimony that the Specimen showed the mark as actually used on the goods, including at the time the Application was filed. Opposer has not undermined this testimony, either through cross-examination or other evidence. Thus, Opposer has failed to prove by clear and convincing evidence that Applicant made a false representation regarding the Specimen, and the fraud claim must fail.

Read comments and post your comment here.

TTABlogger comment: Watch for an announcement of the commemorative TTABlog t-shirt: TWENTIETH YEAR DOWN.

Text Copyright John L. Welch 2024.