Precedential No. 27: TTAB Dismisses PepsiCo's "TORTRIX" Opposition Due to Inadequate Pleading of Misrepresentation of Source, Lack of Bona Fide Intent, and Fraud

In this opposition to registration of the mark TORTRIX for "corn-based snack foods," the Board ruled that a claim for misrepresentation of source under Section 14(3) of the Lanham Act is available not just to a cancellation petitioner, but also to an opposer. However, it dismissed Opposer PepsiCo's Section 14(3) claim due to the insufficiency of its allegations. The Board also dismissed PepsiCo's inadequately pleaded claims of fraud and lack of bona fide intent, but it allowed PepsiCo thirty days to file an amended notice of opposition. PepsiCo, Inc. v. Arriera Foods LLC, 2022 USPQ2d 856 (TTAB 2022) [precedential].

Section 14(3) Misrepresentation of Source: The Board began with the observation that Section 14(3) does not expressly provide that misrepresentation of source is an available claim in an opposition. Section 14(3) says the claim may be brought "if the registered mark is being used" to misrepresent source. However, the Board saw "nothing in the nature of a misrepresentation of source claim that would limit it to registered marks."

Public policy further supports allowing a claim of misrepresentation of source in an opposition. It would be judicially inefficient to limit misrepresentation of source claims to cancellation proceedings as a plaintiff with facts supporting multiple claims, including misrepresentation of source, would not be able to bring all of its claims in a single opposition proceeding potentially leading to piecemeal litigation. * * * The potential harm to a plaintiff also might be compounded if it were required to wait until a mark registers to assert misrepresentation of source.

Recognizing the requirement of "use" in Section 14(3), the Board held that "misrepresentation of source is an available ground for opposition: (1) against a use-based application (either filed as use or amended to allege use) under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a); or (2) a non-use based application, provided that the opposer alleges sufficient facts to support use of the applied-for mark in commerce."

Applicant Arriera Foods contended that Pepsico had failed to sufficiently allege its entitlement to a statutory cause of action because it did not allege any interest in a U.S. trademark. The Board, however, pointed out that ownership of a trademark is not a required element in pleading entitlement to a cause of action (See Australian Therapeutic). The CAFC in Meenaxi v. Coca-Cola held that misrepresentation of source "extend[s] to the improper use of marks that cause commercial injury[.]" According to Meenaxi, a plaintiff may plead "entitlement based on reputational injury or lost states provided that the plaintiff establishes a reputational interest in the United States."

PepsiCo did not plead lost sales but did claim injury to its reputation in the United States, and further claimed that it will not be able to register its TORTRIX mark in the United States if the involved application matures to registration. It alleged that it has for years used the mark TORTRIX in Central and South America for corn-based snack foods, and owns several registrations for that mark in a number of countries.

The Board found that PepsiCo had failed to plead "a plausible entitlement to relief." PepsiCo's allegations that Arriera "intends to make, or is making, blatant misuse" of the TORTIX mark were mere speculation.

Opposer has not pleaded any facts to support that Applicant is actually using the TORTRIX mark that would “raise [the] right to relief above the speculative level.” Twombly, 550 U.S. at 555. Nor has Opposer pleaded any facts to support how its use of the TORTRIX mark in Central and South America has resulted in the mark having a reputation among consumers in the United States.

And so, the Board concluded that PepsiCo had failed to adequately plead its entitlement to a cause of action under Section 14(3).

Moreover, PepsiCo failed to plead a proper cause of action under section 14(3) because it did not allege "unequivocal facts" to support its claim that Arriera is using its mark in commerce or has engaged in "specific acts or conduct" that amounts to deliberately passing off its goods as those of PepsiCo. Nor did PepsiCo allege that its mark TORTRIX has a reputation among relevant U.S. consumers, but only that it uses the mark in Central and South America. And so, the Board granted Arriera's motion to dismiss the Section 14(3) cause of action for failure to state a claim upon which relief can be granted.

Lack of Bona Fide Intent: PepsiCo also alleged that any use of the TORTRIX mark in the United States would be "unlawful" because it would violate Section 14(3) and/or Section 43(a), and so Arriera cannot have a bona fide intent to use the mark. The Board pointed out, however, that use of, or an intent to use, a mark is unlawful only when there has been a prior determination that the party is not in compliance with a relevant statute, or when there is a per se violation of a statute.

PepsiCo did not allege that there had been a prior determination regarding legality of the intended use. As to per se illegality, the Board pointed out that, in a proceeding under Section 14(3), the Board does not decide where use of a mark is "lawful." And as to Section 43(a), the Board has no jurisdiction over such a claim.

And so, the Board found that PepsiCo failed to adequately plead a lack-of-bona-fide-intent claim.

Fraud: PepsiCo alleged that Arriero, in its application, made three false statements with the intent to deceive the USPTO: that Arriero is "entitled to use the mark;" that it had a bona fide intention to use the mark in commerce; and that no other person had a right to use a confusingly similar mark. PepsiCo further alleged that Arriero "knew or should have known" that these statement were false. Not good enough, said the Board.

A pleading of fraud requires an allegation that the defendant “knowingly” made a specific false statement. Asian and W. Classics, 92 USPQ2d at 1479. Opposer has not alleged sufficient facts to support that Applicant had knowledge of and relied upon false, material facts in presenting its application for registration.

PepsiCo did not allege any facts to support the claim that Arriero was not entitled to use the mark in the United States or that it subjectively believed it was not entitled to use. Nor did it allege any facts to support the lack of bona fide intent claim. As to the third purportedly false statement, PepsiCo did not allege that it or anyone else was using the TORTRIX mark in commerce, or that Arriero knew of any superior rights, or that it "either subjectively believed, or had no reasonable basis not to believe that a likelihood of confusion would result from its use of the TORTIX mark."

And so, the Board dismissed the fraud claim.

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TTABlogger comment: What a train wreck! Will PepsiCo file an amended notice of opposition. It had better lay out the facts, if it has any.

Text Copyright John L. Welch 2022.

Precedential No. 26: TTAB Denies "HAPPIEST HOUR" Cancellation Petition for Failure to Prove Priority Via Technical or Analogous TM Use

Petitioner JNF LLC was undoubtedly unhappy with the result of its petition to cancel a registration for the mark HAPPIEST HOUR for bar and restaurant services. JNF claimed prior use of THE HAPPIEST HOUR for the identical services, but it failed to prove priority. Its evidence regarding its first rendering of services under the mark was "characterized by contradictions, inconsistencies, and indefiniteness." Its claim of use analogous to trademark use failed because its prior publicity "was not sufficiently clear, widespread and repetitive."  JNF LLC v. Harwood International Incorporated, 2022 USPQ2d 862 (TTAB 2022) [precedential] (Opinion by Judge David K. Heasley).

Registrant Harwood International enjoyed a constructive first use date of October 6, 2014, the filing date of its underlying application. Opposer JNF had filed an application to register its mark, with a claimed first use date "at least as early as October 10/00/2014." The Board noted that, when a specific day is not given, the USPTO, for examination purposes, presumes that the first use date is the last day of the month stated. TMEP Section 903.06 (2022).

After the registration was cited against JNF's application, JNF amended its alleged first use date to September 7, 2014 and then filed this petition for cancellation, "claiming prior use based on the amended date."

Technical Trademark Use: Normally, a cancellation petitioner must prove priority by a preponderance of the evidence. But when a party claims a first use date earlier that what it alleged in its application, "that is considered a change in position, contrary to the admission it made against interest at the time it filed the application; in these circumstances its proof of the earlier date must be clear and convincing." Hydro-Dynamics v. Putnam, 1 USPQ2d at 1773-74 (heavier burden imposed where applicant seeks to prove date of first use earlier than stated in its application) (citing Elder Mfg. Co. v. Int’l Shoe Co., 194 F.2d 114, 92 USPQ 330, 332 (CCPA 1952) and Stanspec Co. v. Am. Chain & Cable Co., 531 F.2d 563, 567, 189 USPQ 420, 424 (CCPA 1976)).

Declaration testimony may be considered clear and convincing evidence.  However, "[s]uch testimony should not be characterized by contradictions, inconsistencies, and indefiniteness, but should carry with it conviction of its accuracy and applicability." Elder Mfg. v. Int’l Shoe, 92 USPQ at 332; Baker v. Lebow, 66 USPQ at 236; see also Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1036 (TTAB 2010).

Petitioner JNF submitted two testimonial declarations, one from its CEO and the other from a friend of the CEO. Petitioner claimed that its restaurant had a "soft opening" in September 2014, with the mark THE HAPPIEST HOUR displayed on signage, but its evidence was "contradictory, inconsistent, and indefinite." Several press releases were issued at that time, but they did not constitute service mark use. Moreover, several restaurant reviews published in late October 2014 suggested that the restaurant opened on October 31, 2014.

Advertising and preparatory measures, such as taking reservations, may precede the rendering of services, but they are not the same as rendering those services." (Emphasis by the Board). The statutory language of Section 45 requires that the services be "rendered" under the mark in order to qualify as service mark use. See Couture v. Playdom, 113 USPQ2d at 2043-44; accord Lyons v. Am. Coll. of Veterinary Sports Med. & Rehab., 123 USPQ2d at 1029 (“mere preparation and publication of future plans do not constitute use in commerce”); Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 90 USPQ2d 1301, 1307 (Fed. Cir. 2009) (“Mere adoption (selection) of a mark accompanied by preparations to begin its use are insufficient for claiming ownership of and applying to register the mark.”); Mars Generation v. Carson, 2021 USPQ2d 1057, at *21.

The Board observed that "[t]estimony regarding events from years before, uncorroborated by documents showing use of the mark before the critical date, is insufficient to prove a prior date of use by clear and convincing evidence. Am. Hygienic Labs. Inc. v. Tiffany & Co., 12 USPQ2d 1979, 1984 (TTAB 1989). And so it found that JNF had failed to prove prior service mark use.

Analogous Use: Mere advertising without the rendering of services would not constitute "technical trademark use" that would support an application to register, but in some circumstances it could be sufficient to prove priority in an inter partes proceeding. Malcolm Nicol & Co. v. Witco Corp., 881 F.2d 1063, 11 USPQ2d 1638, 1639 (Fed. Cir. 1989); L. & J.G. Stickley, Inc. v. Cosser, 81 USPQ2d 1956, 1968 (TTAB 2007); Shalom Children’s Wear Inc. v. In-Wear A/S, 26 USPQ2d 1516, 1519 (TTAB 1993).

However, the party claiming analogous use must show prior use sufficient to create an association in the minds of the purchasing public between the mark and the petitioner’s services. See T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879, 1883 (Fed. Cir. 1996). And it must do so by a preponderance of the evidence.

JNF's evidence consisted of a Sept. 7, 2014 press release, a September 2, 2014 New York Times article, and an August 24, 2014 article at Grubstreet.com. As to the press release, there was no information as to who received it or how many potential customers it reached. As to the two articles, they were not advertisements, and the mark was buried in the body of the articles. The Board was unimpressed.

Petitioner’s prior publicity was not sufficiently clear, widespread and repetitive to create the required association in the minds of the potential purchasing public between the mark as an indicator of a particular source and the service to become available later.

And so, the Board concluded that JNF failed to prove prior analogous use by a preponderance of the evidence.

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TTABlogger comment: No chance of a concurrent registration for the NY outfit. That would require techinical trademark use before the registrant's filing date.

Text Copyright John L. Welch 2022.

TTABlog Test: Is "THE CHIRO PLACE" Confusable With "THE CHIRO SPOT" for Chiropractic Services?

The USPTO refused to register the proposed mark THE CHIRO PLACE, in standard form ("CHIRO" disclaimed), finding confusion likely with the registered mark THE CHIRO SPOT ("CHIRO" disclaimed), both for chiropractic services. Applicant argued that the term "CHIRO" is "diluted," pointing to several third-party websites using the term and to twelve existing registrations for marks containing the term "CHIRO" for chiropractic and related services. How do you think this came out? In re The Chiro Place, Inc., Serial No. 90119392 (September 20, 2022) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Since the services are identical, the Board presumed that they are offered in the same channels of trade to the same classes of consumers. Turning to the marks, the Board first considered the strength of the cited mark.

As to inherent strength, applicant submitted a dictionary definition of "chiro" (chiropractic) and cited 12 third-party registrations for marks that include CHIRO, four of which disclaimed CHIRO and two of which existed on the Supplemental Register. Website evidence showed use of CHIRO by third parties in connection with chiropractic services.

The Board noted that the third-party registrations "show the Office's treatment of CHIRO as a descriptive or generic term allowing for registration of CHIRO marks if there are sufficient differences." There was no evidence of third-party use or registration relating to the term SPOT, but the Board found SPOT to be "a highly suggestive reference to the place, location, or area where Registrant's services are performed." Consequently, THE CHIRO SPOT "as a whole is highly suggestive [and] entitled to a narrower scope of protection."

Nevertheless, the Board observed, even weak marks are entitled to protection against confusingly similar marks.

Turning to the marks themselves, the Board found PLACE and SPOT to be the dominant portion of the respective marks. Although these terms are not similar in appearance and sound, they appear in the same position in the two marks and are "highly similar in connotation." Therefore the marks are similar in commercial impression. In sum, the Board found the marks to be "more similar than dissimilar.".

Applicant feebly pointed to the lack of evidence of actual confusion, but the Board observed once again that the lack of such evidence carries little weight in the ex parte context, where the registrant has no chance to be heard. In any event, the parties offered their services in different geographic locations (Colorado and Tennessee), suggesting that there has not been an opportunity for confusion to occur.

And so, the Board affirmed the refusal.

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TTABlogger comment: Do you agree with this one?

Text Copyright John L. Welch 2022.

TTAB Upholds Section 2(a) False Connection Refusal of US SPACE FORCE for License Plate Frames, Umbrellas

The Board affirmed a Section 2(a) refusal of the proposed mark US SPACE FORCE for a variety of goods in ten classes, including license plate frames, umbrellas, pillows, and toy spacecraft, finding that the mark falsely suggests a connection with the U.S. Space Force, a branch of the U.S. Armed Forces and a U.S. governmental institution. Applicant Foster APC feebly argued that this provision of the Lanham Act is unconstitutional, but that argument never took flight. In re Thomas D. Foster, APC, Serial No. 87981611 (September 19, 2022) [not precedential] (Opinion by Judge Thomas W. Wellington).

Section 2(a), in pertinent part, bars registration of a mark that "consists of or comprises . . . matter which may . . . falsely suggest a connection with persons . . . institutions . . . ." The U.S. government, as well as government agencies and instrumentalities, are considered juristic persons or institutions within the meaning of the statute. "[T]he rights protected under the § 2(a) false suggestion provision are not designed primarily to protect the public, but to protect persons and institutions from exploitation of their persona."

To establish that a proposed mark falsely suggests a connection with a person or institution, it must be shown that:

• (1) The mark is the same as, or a close approximation of, the name or identity previously used by another person or institution; 
• (2) The mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution; 
• (3) The person or institution named by the mark is not connected with the activities performed by the applicant under the mark; and 
• (4) The fame or reputation of the person or institution is such that, when the mark is used with the applicant’s goods or services, a connection with the person or institution would be presumed.

Applicant Foster did not argue that the proposed mark is not the same as the name of the U.S. Space Force branch of the U.S. Armed Forces. Foster claimed that its (intent-to-use) filing date preceded the formation of the U.S. Space Force, and therefore the "previously used" requirement of the first element was not met. The Board pointed out, however, that this is not a question of priority as in a likelihood of confusion context. In fact, Section 2(a) may be violated even if the name in question was never used as a trademark (e.g., see the ROYAL KATE case). In any event, the military branch was the actual prior user.

The Board noted that the U.S. Space Force received "considerable attention since it was announced in 2018," and has been prominently featured in major new publications. Nonetheless, Applicant Foster argued that its proposed mark does not point "uniquely and unmistakably" to the U.S. Space Force. 

First it pointed to a Netflix series called "Space Force," a parody of the actual U.S. Space Force. The Board, however, sided with Examining Attorney Tracy Cross in finding that the parody actually shows the fame of the actual U.S. Space Force. As one commentator observed, "a parody, to be effective, virtually requires that it parody a well-known trademark."

Foster also pointed to a 1987 cartoon series called "Starcom: the U.S. Space Force," which aired in 1987. However, that show was not very successful and was cancelled after one season," and so the Board found it unlikely that any significant portion of the public would associate Foster's mark with that cartoon series.

Foster submitted the results of a Google survey in which 22.5% of respondents said that US SPACE FORCE points to a branch of the military, 22.2% said Donald J. Trump, 20.6% said NASA, 10.2% said a Netflix television show, and 24.6% said "none of these." The Board found the survey to be flawed and non-probative. In any case, the results showed that abut 65% of the respondents believed the term US SPACE FORCE pointed to the U.S. Government in one form or another.

We agree with the Examining Attorney to the extent that various governmental entities, including the broad term U.S. Government to President Trump to the agency U.S. Space Force, can all be characterized as government instrumentalities and used interchangeably for purposes of explaining the origin and creation of the latest military branch of the U.S. Armed Forces, namely, the U.S. Space Force.

Finally, relying on Matal v. Tam and In re Brunetti, Foster contended that the false connection provision of Section 2(a) is unconstitutional. The Board observed, however, that the constitutionality of this provision was considered and confirmed in 2020 in In re Adco Industries (The TRUMP-IT case) [TTABlogged here].

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Earlier this year, this same applicant overcame a Section 2(a) false connection refusal of SPACE COMMAND for similar goods. [TTABlogged here].

Text Copyright John L. Welch 2022.

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

So far this year, the Board has affirmed 135 of the 144 Section 2(d) refusals on appeal (just about 94%). Here are three decisions that came down late last week. How do you think they came out? [Results in first comment].

In re Zena E. M. Conway, Serial Nos. 88801050 (September 15, 2022) [not precedential] (Opinion by Judge Angela Lykos) [Section 2(d) refusal of the mark Y/NG GR8TNESS (“GREATNESS” disclaimed) in view of the registered marks YNG and YNG+, all for educational services in the fields of business and personal development.]

In re vivawave Co., Ltd., Serial No. 88848727 (September 15, 2022) [not precedential] (Opinion by Judge Michael B. Adlin). [Section 2(d) refusal of MOOD NARRATIVE for various cosmetics, in view of the registered mark NARRATIVE COSMETICS ("COSMETICS" disclaimed) for "theatrical make up.”]

In re GFactor Enterprises, LLC, Serial No. 90286664 (September 15, 2022) [not precedential] (Opinion by Judge Cheryl S. Goodman) [Section 2(d) refusal of the mark shown below left, for "Hats; Shirts; Hoodies; Knit face masks being headwear," in view of the registered mark shown below right, for "Clothing for men, women and children, namely, shirts, golf shirts, T-shirts, sweatshirts, tank tops, sweaters, jeans, vests, jackets, coats, parkas, underwear, scarves."]

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TTABlog comment: How did you do? See any WYHAs?

Precedential No. 25: TTAB Applicant's 41-Page ACR Brief Stricken As Too Long, But Re-Filing of 25-Page Brief Allowed

For some reason, the Board has re-designated as precedential an interlocutory order in this Section 2(d) opposition involving an application to register the mark RASASVADA for alcohol and spirits. The Board had accepted the parties' stipulation to proceed under the Accelerated Case Resolution (ACR) regime. Facing the Board was the question of whether the normal 55-page final brief limit applied, or whether the summary judgment limit of 25 pages applied, since the parties had stipulated to submission of the case "through ACR briefing in a cross-motion for summary judgment format." The Board said "25." Rasa Vineyards, LLC v. Rasasvada, LLC, 2022 U.S.P.Q.2d 769 (TTAB 2022) [May 9, 2022, re-designated as precedential, August 17, 2022] (Order by Interlocutory Attorney Catherine Faint)

When Applicant filed a 41-page brief (including table of contents), Opposer Rosa Vineyards moved to strike, requesting that applicant be required to re-submit a brief that satisfied the 25-page limit of Rule 2.127(a) for summary judgment briefing. Applicant argued that the stipulation regarding ACR did not recite a page limit, and that Rule 2.128(b) should govern. The Board sided with Rosa Vineyards.

The parties clearly stipulated to submission of their briefs in summary judgment format and the page limits of a motion for summary judgment apply. Applicant’s brief exceeds the 25 page limit including a table of contents and will therefore receive no consideration. See Mattel Inc. v. Brainy Baby Co., 101 USPQ2d 1140, 1141. (TTAB 2011) (overlength brief on motion for summary judgment will not be considered). In view thereof, Opposer’s motion to strike Applicant’s brief as overlength is granted and the brief will receive no consideration.

The Board, however, allowed Applicant one day to re-submit a brief limited to 25 pages, and applicant did so. [One day? - ed.]

Read comments and post your comment here.

TTABlogger comment: Note that the parties also stipulated that motions could be resolved by telephone conference, without suspension of the proceeding.

Text Copyright John L. Welch 2022.

TTAB Finds "EQ LEARNING" Deceptively Misdescriptive of Employment Counseling Services

The Board affirmed a Section 2(e)(1) refusal of the proposed mark EQ LEARNING, finding it to be deceptively misdescriptive for employment counseling and related educational services. A dictionary definition and third-party website evidence regarding the meaning of EQ, coupled with the applicant's own responses to a Rule 2.61 request for information, proved fatal to the application to register. In re Res-Care, Inc., Serial No. 90309408 (September 14, 2022) [not precedential] (Opinion by Judge Angela Lykos). 

Section 2(e)(1) prohibits registration on the Principal Register of designations that are deceptively misdescriptive of the identified goods (absent a showing of acquired distinctiveness under Section 2(f).) A mark is considered deceptively misdescriptive if (1) it misdescribes a quality, feature, function, or characteristic of the goods or services with which it is used; and (2) consumers would be likely to believe the misrepresentation. In re Dolce Vita Footwear, Inc., 2021 USPQ2d 479, at *9 (TTAB 2021). [Note: if the misdescription is material to the purchasing decision, the proposed mark is deceptive under Section 2(a) and is completely barred from registration].

Examining Attorney E. Reeves submitted an entry from THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE showing that “EQ” is an abbreviation for “emotional intelligence." She also made of record third-party websites using the term EQ in connection with employment counseling and educational services as signifying the ability to manage social interactions, emotions and conflict at work.

Taken together, this evidence demonstrates that the abbreviation EQ modifies the noun LEARNING to indicate a type employment counseling and instruction. Thus, EQ LEARNING merely describes a significant characteristic or feature that the services could plausibly possess.

The Examining Attorney made an information request under Rule 2.61(b), which included the following question: "Will applicant’s educational services teach emotional intelligence?" Applicant responded: "No."

Thus the first prong of the test was met . The next question was whether a reasonably prudent consumer would be likely to believe the misrepresentation. The Examining Attorney provided evidence showing that competitors in the field promote the benefits of employment counseling and education services designed to improve the consumer’s EQ or “emotional intelligence.”

This evidence shows that consumers are accustomed to encountering in the marketplace career counseling and education services touting the advantages of the acquisition of knowledge and learning skills pertaining to EQ or emotional intelligence. It is therefore likely that the reasonably prudent consumer (i.e. job seekers, and those looking for career advice or advancement) will be deceived by Applicant’s misrepresentation.

Applicant argued that consumers will recognize EQ as a reference to the "evidenced-informed Talent Delivery Model (TDM)- Employability Quadrants (EQ)" that applicant uses." The Board was unconvinced because prospective consumers would likely be unfamiliar with Applicant’s “evidenced-informed Talent Delivery Model (TDM)- Employability Quadrants (EQ),” and unlikely to attribute any meaning to Applicant’s mark other than "emotional intelligence."

And so, the Board affirmed the refusal.

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TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2022.

TTAB Trifusal: ALEMBIC PHARMACEUTICALS Refusals Affirmed - Likelihood of Confusion, Failure-to-Function, and Nonuse

The USPTO refused to register the proposed mark ALEMBIC PHARMACEUTICALS for generic prescription drugs [PHARMACEUTICALS disclaimed], on three grounds: likelihood of confusion with the registered mark ALEMBIC HERBALS & Design for various medicines [HERBALS disclaimed], failure-to-function as a trademark, and nonuse. The Board found the involved goods to be overlapping and the marks "very similar." Applicant's specimens of use displayed ALEMBIC PHARMACEUTICALS only as a trade name, not as a trademark, resulting in the two additional refusals. In re Alembic Pharmaceuticals, Inc., Serial No. 88660605 (September 13, 2022) [not precedential] (Opinion by Judge Thomas Shaw).

Section 2(d) The likelihood of confusion analysis was straightforward. The Board found the goods to be in-part legally identical "inasmuch as Registrant’s broadly-worded 'medicines for human purposes for . . . the treatment, mitigation and prevention of diseases and disorders' could include Applicant’s more specialized 'generic prescription drugs, approved by the U.S. Food and Drug Administration . . . filled by a retail pharmacy licensed to sell prescription drugs,' given that the goods are for treating similar illnesses." Applicant's attempt to limit the goods based on actual marketplace conditions was, as usual, rebuffed by the Board, since there were such limitations in the application or cited registration."

As to the marks, ALEMBIC is the dominant term in each: it is the first word in each mark and the other words are disclaimed. The design element in the cited mark is subordinate to the literal portion. The Board found the marks to be "very similar, particularly in connotation and commercial impression."

The Board agreed with applicant that consumer will exercise a high degree of care in purchasing the involved goods. However, the lack of evidence of actual confusion had little probative value in this ex parte context, and in any case there was insufficient proof regarding sales of the products to determine whether there had been a reasonable opportunity for confusion to occur.

And so, the Board affirmed the Section 2(d) refusal.

Failure-to-Function and Nonuse: Applicant submitted three specimens of use. In addition to packaging, applicant submitted a "printer's proof" of a label. Not only is a "printer's proof" not an acceptable specimen, but the term Alembic Pharmaceuticals appeared only as part of a trade name on the labels and packaging, thusly:

The Board agreed with Examining Attorney Chioma (Bata) Oputa that "ALEMBIC PHARMACEUTICALS, as used on applicant’s packaging, is a trade name that identifies applicant as a business entity rather than a mark that identifies applicant’s goods and distinguishes them from those of others."

Applicant also submitted two webpages, but those were not proper specimens for applicant's goods because they "contain no ... information 'calculated to consummate a sale,' but rather were merely advertising and therefore unacceptable to show use of applicant's mark in commerce.

Simply put, we find nothing in the record which persuades us that purchasers and prospective purchasers of Applicant’s products would perceive the term ALEMBIC PHARMACEUTICALS, as it is used on the goods, as anything other than Applicant’s trade name.

Conclusion: And so, the Board affirmed all three refusals.

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TTABlogger comment: Is this a triple WYHA?

Text Copyright John L. Welch 2022.

M.D. Florida Finds Dog Bone-Shaped Dock Connector Functional, Grants Judgment on the Pleadings Denying Trade Dress Claim

Plaintiff E-Z Dock's expired utility patent [pdf here] sunk its claims of trade dress infringement and unfair competition based on alleged trademark rights in a dog bone-shaped floating dock connector. Finding the product configuration to be de jure functional, the U.S. District Court for the Middle District of Florida granted Defendant Snap Dock's motion for judgment on the pleadings under FRCP 12(c). E-Z Dock, Inc. v. Snap Dock, LLC, Civil Action No. 2:21-cv-450-SPC-NPM (M.D. Florida, September 9, 2022).

On a motion for judgment on the pleadings, courts generally accept as true all material facts alleged by the nonmoving party. However, in some circumstances, exhibits "can overcome the presumption that the nonmoving party's allegations are true." Snap Deck attached to its answer/counterclaim a copy of E-Z Dock's expired utility patent no. 5,281,055, entitled "Floating Dock," which discloses E-Z Dock's modular floating dock system, "including the coupler at issue."

The court observed that "a utility patent is critical to the non-functionality element of a trade dress claim based on the patented product." See TrafFix ("A utility patent is strong evidence that the features claimed therein are functional" (emphasis added)). [Note: the '055 patent did not claim the dog-bone shape, it merely disclosed it - ed.]

The invention disclosed in the ‘055 Patent is a floating dock “comprised of uniform floating docking sections coupled together with rubber male-type anchors which fit into female-type receiving sockets on the docking sections.” ***The idea of floating docking modules was not novel, as evidenced by the prior art mentioned in the ‘055 Patent. ***. The central advance of the ‘055 Patent was the coupling system—that is, the anchors (or couplers) and corresponding sockets that turned floating docking modules into a novel product.

The patent "explain[ed] the functionality of the shape": to ensure that the anchors will remain secure and the docking sections will not separate. EZ-Dock pointed to the statement in the patent that the socket shape "can vary appropriately," but the court was not moved: "the dog bone shape of the couplers is the reason EZ-Dock's inventions works." The court noted that TrafFix teaches that the existence of an alternative design does not render a functional design non-functional. [Note, however, that in TrafFix, the design at issue was claimed in the expired patent - ed.]

The court concluded that E-Z Dock could not satisfy the non-functionality element of its trade dress claim. "EZ-Dock cannot enjoy the protection of a full patent term, then use the Lanham Act to extend its monopoly on the patented design." [Actually, the patent didn't "cover" a dog-bone shaped connector - ed.].

And so, the court entered judgment in favor of Snap Dock.

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TTABlogger comment: There's a big difference between what is disclosed in a patent and what is claimed. There is also a big differences between what is de facto functional (i.e., it has a function), and what is de jure functional for trademark purposes. The court ignored those differences. By the way, can you think of alternative shapes that would work just as well? Maybe a "T" shape?

Text Copyright John L. Welch 2022.

TTABlog Test: Is HI-FI Confusable With HIGH FIDELITY for Overlapping Marketing Services?

The USPTO refused registration of the proposed mark HIFI, in standard character and stylized form, for "Branding services, namely, consulting, development, brand strategic positioning, management and marketing of brands for businesses and/or individuals" and for "Branding design services, namely, graphic design services for creating graphic elements of corporate logos," in view of the registered mark HIGH FIDELITY & Design for "Advertising, marketing and publicity services." The Board found the services to be overlapping, but what about the marks? How do you think this appeal came out? In re HIFI Brands, LLC, Serial Nos. 88905094 and 88905116 (September 9, 2022) [not precedential] (Opinion by Judge Melanye K. Johnson).

Applicant argued that the mark HIFI has a different meaning than HIGH FIDELITY, and that HIFI is not an abbreviation for "high fidelity." The evidence submitted by Examining Attorney Candace W. Hays showed otherwise.

The Board observed that, although the marks differ in sound and appearance, the "propensity of consumers to shorten marks" makes the marks more similar than dissimilar. As a result, "the marks would be remembered by consumers as 'hifi.'" 

There was no evidence that HIFI and the cited mark have different meanings when used in connection with the involved services, and it found the overall impressions of the involved marks to be similar.

As to applicant's stylized mark, the degree of stylization "is not notable apart from the literal element "hifi," and does not serve to distinguish it from Registrant's Mark." The Board concluded that the similarities of the two stylized marks as to meaning and overall commercial impression outweigh any dissimilarities.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2022.