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 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 273 decisions, of which 240 were affirmances and 33 were reversals. That's an affirmance rate of approximately 87.9%, 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 33 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 and ELDORADO RESORT 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) 
• 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.

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

Here are the first three TTAB decisions of the new year in appeals from Section 2(d) refusals. No hints today. How do you think they turned out? [Answer in first comment].

In re Monterey Tile DE, Inc., Serial No. 87627828 (January 3, 2022) [not precedential] (Opinion by Judge Christopher Larkin). [Section 2(d) refusal of the word-plus-design mark shown below for, inter alia, "non-metal tiles for countertops, walls, sinks, and floors in bathrooms and kitchens," in view of the registered mark BELLAVITA TILE registered for “Non-metal tiles for walls and floors; ceramic tiles; porcelain tiles; glass tiles.” Applicant maintained that its mark "is dominated by the design elements of the stately manor house, not by the improperly dissected, somewhat similar text elements of the mark and the cited mark[]."]

In re Probiohealth, LLC, Serial No. 88933368 (January 4, 2022) [not precedential] (Opinion by Judge Jonathan Hudis). [Section 2(d) refusal of PROBIOHEALTH for "dietary probiotic supplements for pets; nutritional probiotic supplements," in view of the registered mark BIOHEALTH & Design for "dietary and nutritional supplements." Applicant argued that BIO is conceptually weak for supplements, and the term HEALTH (by way of a dictionary definition) is merely descriptive of supplements and also conceptually weak."]

In re Sunset Songs, LLC, Serial No. 90114652 (January 4, 2022) (Opinion by Judge Linda A. Kuczma)[not precedential]. [Section 2(d) refusal of SUNSET SONGS for "Advertising and promotion services in the field of music; Preparing audio visual presentations for use in advertising; Online retail store services featuring musical sound recordings and video recordings featuring music" [SONGS disclaimed], in view of the registered mark SUNSET CREATIVE (in standard character form) for "Marketing consulting, namely, digital marketing and social media marketing; On-line advertising and marketing services; Promoting, advertising and marketing of the brands, products, services and online websites of individuals, businesses and nonprofit organizations; providing marketing consulting in the field of social media" [CREATIVE disclaimed]. Applicant pointed to five existing third-party registrations for marks containing the word SUNSET in arguing that the word "SUNSET" is a weak formative].

Read comments and post your comment here.

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

Text Copyright John L. Welch 2021.

The Top Ten TTAB Decisions of 2021 (Part II)

This is the second of two posts; the first five (5) selections were posted here yesterday. Additional commentary on each case may be found at the linked TTABlog post. The cases are not necessarily listed in order of importance (whatever that means).

The United States Olympic Committee v. Tempting Brands Netherlands B.V., 2021 USPQ2d 164 (TTAB 2021) [precedential] (Opinion by Judge Cynthia C. Lynch). [TTABlogged here]. The TTAB dismissed the Olympic Committee’s opposition to registration of the mark PIERRE DE COUBERTIN for various goods in classes 3, 9, 14, 18, 25, and 28, including perfume, sunglasses, jewelry, luggage, clothing, and sporting goods. Pierre de Coubertin is the name of a French baron who was instrumental in reviving the Olympic Games in the late nineteenth century by co-founding the International Olympic Committee and later becoming its president. The Board found that the Committee had failed to prove its claim that the proposed mark falsely suggests a connection with the Olympic Movement in violation of Section 2(a) of the Lanham Act. The Committee did not clear either of the first two hurdles of the Section 2(a) test: (1) that the mark falsely suggests a connection with a person or institution, and (2) that the mark points uniquely and unmistakably to that person or institution. “While Pierre de Coubertin certainly was associated with the Olympic Movement, this record does not demonstrate that the public would perceive Applicant’s mark as a name or identity of the Olympic Movement or Opposer, or a close approximation thereof.” Moreover, the name is associated with the person “rather than serving merely as a synonym of the Olympic institution,” and thus does not point uniquely and unmistakably to opposer.

In re Dimarzio, Inc., 2021 USPQ2d 1191 (TTAB 2021) [precedential] (Opinion by Judge Mark Lebow). [TTABlogged here]. A single-color mark on a product design is registrable only upon a showing of acquired distinctiveness. Wal-Mart (citing Qualitex). Applicant Dimarzio, Inc. fell far short of proving that its claimed color “cream” for electronic guitar pickups met that test, and so the Board affirmed a refusal to register under Sections 1, 2, and 45 of the Lanham Act. In making the Section 2(f) determination, the Board applied the CAFC’s Converse factors. Dimarzio did not offer survey evidence, but submitted “fill-in-the-blank” declarations from eight different distributors and customers; the Board found them of little, if any, probative value. Dimarzio claimed use of the proposed mark since 1979, with millions of consumers observing its guitar pickups in videos, advertisements, and musical performances. The Board pointed out, however, that long-time use of a supposed mark does not alone establish acquired distinctiveness. In fact, the evidence showed that Dimarzio’s use of the color cream on guitar pickups was not substantially exclusive. Dimarzio did not provide details regarding its purported sales or its market share, nor did it submit evidence of unsolicited media coverage. Its advertising characterized the color cream as one of many colors available, and so there was nothing to lead consumers to perceive the color cream as a mark.

In re Taverna Izakaya LLC, 2021 USPQ2d 1134 (TTAB 2021) [precedential] (Opinion by Judge Cynthia C. Lynch). [TTABlogged here]. Because the ordinary American purchaser would not stop and translate a mark comprising words from different languages, the TTAB refused to apply the doctrine of foreign equivalents and it reversed a Section 2(e)(1) mere descriptiveness refusal of TAVERNA COSTERA for "restaurant, cafe, and bar services." Applicant argued that because the first word is understood in English, it is "exceeding likely" that the average consumer would not stop to translate COSTERA, "particularly since the Spanish word COSTERA is pronounceable in English." The Board agreed: "Given that ordinary consumers would recognize the first word in Applicant’s mark not only as an English word but one that connotes a Greek café and Greek cuisine, those consumers would not be inclined to stop and translate the next word in the mark from Spanish." The Board observed that courts and the TTAB have frequently ruled that consumers would not "stop and translate" marks comprised of terms in multiple languages, "often finding that the marks combine the different languages for suggestive purposes to create a certain commercial impression:" for example, LE CASE for jewelry boxes; GLACÉ LITE for ice cream products.

McGowen Precision Barrels, LLC v. Proof Research, Inc., 2021 USPQ2d 559 (TTAB 2021) [precedential] (Opinion by Judge Mark Lebow). [TTABlogged here]. The Board granted a petition for cancellation of a registration for the trade dress of a gun barrel, on the ground of de jure functionality under Section 2(e)(5). The registered mark consists of trade dress applied to gun barrels formed with a mottled pattern of irregularly sized, rippled patches resembling a quilt. As often happens in Section 2(e)(5) determinations, respondent's own utility patent blew a hole in its case. There was no dispute that carbon fiber composite barrels provide various functional benefits to rifles. "What the parties dispute is whether the particular appearance of Respondent’s carbon fiber composite barrels is functional because it is a natural byproduct of the manufacturing process that creates the barrels, as Petitioner claims, or whether it is simply the result of Respondent's cosmetic efforts to create a trade dress that consumers associate with Respondent." The Board looked to respondent's utility patent in concluding that the appearance of the gun barrel is dictated by its function. "Simply put, the patent evidence, combined with the evidence regarding Respondent’s manufacturing process, is dispositive on the issue of functionality."

In re Maugus Manufacturing, Inc., 2021 USPQ2d 1100 (TTAB 2021) [precedential] (Opinion by Judge Cindy B. Greenbaum). [TTABlogged here]. To be registrable, a proposed trademark must function as a source indicator in the eyes of relevant consumers. Applicant Maugus Manufacturing failed to meet that basic requirement in its attempt to register the phrase DRINK MORE BEER for “non-metal and non-paper closures for containers.”  Applicant’s specimens of use showed that it uses the trademark “NNBC” to identify and distinguish the source of its closures; DRINK MORE BEER “merely identifies optional wording that may appear on one of the products, or one of the available styles for the product sold, under the NNBC mark.” The Board agreed with the examining attorney that the proposed mark, as presented on Maugus’s specimens of use, would not be perceived as identifying source, but rather would be seen as examples of how wording may appear on the products that consumers purchase. "They would not associate the wording DRINK MORE BEER stamped or embossed on the growler cap as a source identifier of the ‘non-metal and non-paper closures for containers' identified in the application.”

Read comments and post your comment here.

Text Copyright John L. Welch 2020-2021.

The Top Ten TTAB Decisions of 2021 (Part I)

The TTABlogger has once again chosen the ten (10) TTAB (Tee-Tee-Ā-Bee) decisions that he considers to be the most important and/or interesting from the previous calendar year (2021). This is the first of two (2) posts; the first five (5) selections are set out below. Additional commentary on each case may be found at the linked TTABlog post. The cases are not necessarily listed in order of importance (whatever that means).

Chutter, Inc. v. Great Management Group, LLC and Chutter, Inc. v. Great Concepts, LLC, 2021 USPQ2d 1001 (TTAB 2021) [precedential] (Opinion by Judge Marc A. Bergsman) [TTABlogged here]. In the seminal fraud case of In re Bose, the CAFC left open the question of whether “reckless disregard” for the truth is sufficient for a finding of fraud on the USPTO. The Board has now answered that question in the affirmative,  significantly lowering the bar for proof of a claim of fraud. It granted a petition for cancellation of a registration for the mark DANTANNA’S for “steak and seafood restaurant” on the ground of fraud. Plaintiff Chutter’s fraud claim was founded on defendant’s filing of a Section 15 Declaration of Incontestability in which its counsel, Mr. Taylor, falsely stated that there were no civil actions or USPTO proceedings pending against the DANTANNA’S mark and registration. Mr. Taylor testified that he did not review the document “carefully enough to see that the statement is in [t]here incorrectly.” Neither he nor Great Concepts notified the USPTO about the false statement, although they were aware of it since 2015. The Board pointed out that in Bose the CAFC held that the intent to deceive must be willful. The Supreme Court and various circuit courts of appeal have ruled that “willful” includes reckless behavior. Therefore, the Board held that “[i]n matters of trademark registration and maintenance, where the USPTO relies on declarations to be complete, accurate, and truthful . . . reckless disregard is equivalent to intent to deceive and satisfies the intent to deceive requirement.”

Fuji Medical Instruments Mfg. Co., Ltd. v. American Crocodile International Group, Inc., 2021 USPQ2d 831 (TTAB 2021) [precedential] (Opinion by Judge Thomas Shaw) [TTABlogged here]. For only the second time since the CAFC’s 2009 decision in In re Bose, the Board upheld a claim of fraud, ordering cancellation of a registration for the mark FUJIIRYOKI for massage chairs. William Shen, the CEO of Respondent ACIGI, filed the underlying application and then assigned the registration to ACIGI soon after issuance. The Board found that Shen knew he was not the owner of the mark, that his false statement of ownership was material to the registration, and that he intended to deceive the USPTO. Respondent ACIGI became Fuji’s exclusive U.S. distributor in 2005 and was still in that role when Mr. Shen filed the underlying trademark application in 2015. The Board found that Fuji was the owner of the mark and that Shen’s claim of ownership was a false and material representation. The Board further found that “contradictions, inconsistencies, and indefiniteness” in Shen’s testimony demonstrated his lack of credibility. The evidence was “clear and convincing” that Shen intended to deceive the USPTO - not only the documentary evidence but also Shen’s “grossly evasive testimony, and his self-serving claims.”

Philanthropist.com, Inc. v. The General Conference Corporation of Seventh-day Adventists, 2021 USPQ2d 643 (TTAB 2021) [precedential] (Opinion by Judge Jonathan Hudis). [TTABlogged here]. Finding that petitioner failed to demonstrate its entitlement to maintain its genericness claim (f/k/a "standing"), the Board tossed out this petition for cancellation of two registrations for the mark ADVENTIST for religious publications, film production and distribution, educational services, and religious and missionary services. Petitioner owned the domain name "adventist.com," but “[a]ll Petitioner has ever done is to hold it for future sale at an inflated price (a practice known as ‘warehousing’), or to redirect Internet users to the TTABVUE docket page for these proceedings.” The Board concluded that the petitioner did not satisfy either prong of the Lexmark test at the time of trial: its interests did not fall within the protectable zone of interests of Section 1064, and there was no reasonable basis in fact for a belief in damages proximately caused by the continued existence of the challenged registrations. “The purpose of the zone-of-interests test is to ‘foreclose[] suit … when a plaintiff’s interests are so marginally related to or inconsistent with the purposes implicit in the statute that it cannot reasonably be assumed that Congress authorized that plaintiff to sue.’” Moreover, “[t]o the extent Petitioner’s belief in damage may have existed at the time Petitioner brought these proceedings in January 2017, clearly it has not been maintained."

The Coca-Cola Company v. Meenaxi Enterprise, Inc., 2021 USPQ2d 709 (TTAB 2021) [precedential] (Opinion by Judge Cynthia C. Lynch). [TTABlogged here]. The Board ordered cancellation of registrations for the marks THUMS UP and LIMCA on the ground that Registrant Meenaxi used the marks to misrepresent the source of its soft drink products, in violation of Section 14(3). Petitioner Coca-Cola proved that it owns the two marks in India and has sold soft drinks in the United States under the marks, and it therefore was entitled to bring a statutory cause of action under Section 14(3). The Board found that Meenaxi deliberately caused consumers to believe that its products were licensed or produced by the same source as the products sold in India. Section 14(3) provides, in pertinent part, that a registration is subject to cancellation if “the registered mark is being used . . . to misrepresent the source of the goods or services . . . .” The misrepresentation “must involve a respondent deliberately passing off its goods as those of another.” The evidence showed that Coca Cola’s THUMS UP and LIMCA brands are well known in India and their reputation extends to the Indian-American population in the United States. The Board concluded that Meenaxi, a purveyor of Indian food products distributed primarily to Indian grocers in this country, “intended to cause consumers exposed to Respondent’s use of the THUMS UP and LIMCA marks to draw the logical conclusion that Respondent’s products in the United States are licensed or produced by the source of the same types of cola and lemonlime soda sold under these marks for decades in India.”

In re Dolce Vita Footwear, Inc., 2021 USPQ2d 478 and 479 (TTAB 2021) [precedential] (Opinions by Judge Jyll Taylor) [here and here]. [TTABlogged here]. The Board upheld two Section 2(e)(1) refusals of the proposed mark CLEAR for footwear, lingerie, and other clothing items, and for handbags, purses, wallets and the like, all “excluding transparent goods,” finding the term to be deceptively misdescriptive thereof. Dictionary definitions and third-party website evidence convinced the Board that consumers “will perceive CLEAR as describing a feature” of Dolce Vita’s clothing and other items. The Board rejected applicant’s contention that its proposed mark CLEAR does not describe a plausible feature of its goods because the identified goods do not include transparent footwear and clothing. “We cannot assume that consumers of Applicant’s goods will be aware that its identification is so restricted, and the restriction is not controlling of public perception.” The Board also rejected Dolce Vita’s argument that consumers are unlikely to believe the misrepresentation because they will visually inspect the goods before purchase, since not all consumers will have that opportunity.

Read comments and post your comment here.

Text Copyright John L. Welch 2020-2021.

TTAB Sustains Section 2(d) Opposition to ALZHEIMER'S NEW JERSEY WALK TO FIGHT ALZHEIMER'S & Design for Charitable Fundraising

The Board sustained this opposition to registration of the mark ALZHEIMER'S NEW JERSEY WALK TO FIGHT ALZHEIMER'S & Design on the ground of likelihood of confusion with the common law mark WALK TO END ALZHEIMER'S & Design, both marks for charitable fundraising services. The Board readily rejected the applicant's prior registration (a/k/a Morehouse ] defense. Alzheimer's Disease and Related Disorders Association v. Alzheimer's New Jersey, Opposition No. 91245121 (December 31, 2021) [not precedential] [Opinion by Judge Robert H. Coggins].

Prior Registration:The Morehouse defense is an equitable doctrine that applies when an applicant owns a prior registration for the same or substantially identical mark for the same or substantially identical goods or services as those of the opposed application. "In such case, 'the opposer cannot be further injured because there already exists an injurious registration,' and therefore the additional registration does not add to the injury."

The Board "quickly dispatch[ed] this defense because for Morehouse to be applicable, it requires that the plaintiff not be able to cancel the prior registration." The prior registration on which applicant relied issued in 2018 and thus was still vulnerable to cancellation under Section 2(d).

Likelihood of confusion: The Board's likelihood-of-confusion analysis was straightforward, summarized as follows:

We have found that the services are in-part legally identical, with overlapping channels of trade and classes of consumers; donors include members of the general public who are not sophisticated and may contribute but spare change to support Alzheimer’s-related organizations; Opposer’s mark has achieved some commercial strength, and is entitled to a slightly increased scope of protection; the marks have similar overall appearances and create similar commercial impressions when used in connection with legally identical services; there is no evidence of actual confusion, and the record does not demonstrate whether there has been a real opportunity for actual confusion to have occurred; and the record evidence is insufficient to support a contention that Applicant adopted the subject mark in bad faith.

And so, the Board sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: Opposer and Applicant were affiliated from 1985-2015, during which period applicant enjoyed a non-exclusive license to use opposer’s trademarks.

Text Copyright John L. Welch 2022.