Monday, September 25, 2023

A NEW KIND OF SODA Fails to Function as a Trademark for Beverages, Says TTAB

The Board upheld a refusal to register the proposed mark A NEW KIND OF SODA on the Supplemental Register, for "Non-alcoholic sparkling fruit juice beverages; non-alcoholic water-based beverages," finding that the phrase fails to function as a trademark under Sections 1, 2 and 45 of the Trademark Act. Evidence of third-party use of the phrase "a new kind of soda," mixed in with applicant's own usage, took the fizz out of applicant's arguments. In re Olipop Inc., Serial No. 90381174 (September 21, 2023) [not precedential] (Opinion by Judge Thomas V. Shaw).

Based on the Internet evidence submitted by Examining Attorney Edward Fennessy, the Board found that "the phrase 'a new kind of soda' is commonly used in the beverage industry to identify sodas that differ from previous types or 'generations' of soda products. For example, Wave, Maine Root, Shrub, Booch Pop, No-Cal, GINSENG UP, Holy Cross, and even Dr Pepper [in 1904] have been described as 'a new kind of soda.'"

Because consumers are accustomed to seeing “a new kind of soda” commonly used in beverage advertising—much less the phrase “a new kind of ___” used in advertising in general—they would not perceive it as a mark identifying the source of Applicant’s goods but rather as merely conveying an informational message. Eagle Crest, 96 USPQ2d at 1229.

Applicant argued that “none of the goods in these references are even remotely similar to Applicant’s healthy tonic goods, and none use A NEW KIND OF SODA, which provides a wholly different commercial impression in Applicant’s specific context.” According to Applicant, it "does not use A NEW KIND OF SODA to mean ‘recent,’ but rather ‘unique,’ comparing its healthy qualities to the traditionally unhealthy qualities of soda, which is apparent given Applicant’s marketplace context." The Board was unimpressed: "consumers likely will view OLIPOP soda as one soda in a long line of 'new' sodas that have evolved to suit changing consumer tastes."

Applicant introduced copies of fifteen third-party registrations for marks comprised of the phrase “A NEW KIND OF ___, but only two of the registrations, A NEW KIND OF DEODORANT and A NEW KIND OF DEALERSHIP, have "the same simple declaratory structure" as Applicant’s mark. "These two registrations do not outweigh the Examining Attorney’s evidence." Moreover, as we practitioners have been repeatedly informed, prior actions by examining attorneys in other cases "have little evidentiary value and are not binding upon the USPTO or the Board."

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: What about A NEWER KIND OF SODA?

Text Copyright John L. Welch 2023.

Friday, September 22, 2023

TTABlog Test: Is "DEATH FROM ABOVE" Confusable With "HUNT FROM ABOVE" for Hunting Stands?

The USPTO refused to register the mark DEATH FROM ABOVE for hunting stands, finding confusion likely with the registered mark HUNT FROM ABOVE for "hunting stands for use in trees; seats especially adapted for hunting stands for use in trees." The goods overlap, but what about the marks? Applicant argued that consumers are more likely to focus on the distinctions between the words DEATH and HUNT because they appear as the first portions of the two marks. How do you think this came out? In re Heartland Climbers, LLC, Serial No. 90885309 (September 15, 2023) [not precedential] (Opinion by Judge Angela Lykos).

The overlap in goods and the presumption that those overlapping goods travel in the same trade channels to the same classes of consumer really put applicant under the gun, so to speak.

As to the marks, the Board disagreed that consumers are likely to focus on the words “Death” and “Hunt.” "There is no mechanical test to select the dominant element of a mark."

DEATH FROM ABOVE and HUNT FROM ABOVE are both unitary marks because the words “Death” and “Hunt” do not create a commercial impression separate and apart from the marks as a whole; that is, “Death” and “Hunt” are so integrated into the marks that they cannot be regarded as separable.

Furthermore, the marks convey the same idea, meaning or commercial impression: consumers are likely to recognize both phrases as referring to goods that facilitate hunting from an elevated vantage point.

Given the similarities between the marks and identity of the goods, consumers familiar with the mark HUNT FROM ABOVE are likely to perceive Applicant’s mark DEATH FROM ABOVE as a variant mark denoting a product line extension into a specific type of hunting stand.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: That was easy, wasn't it? Like shooting fish in a barrel (from above). The Board's argument about applicant's mark being seen as a "variation" of registrant's product line seems to me to be an end-run around the strict requirements for proving a family of marks.

Text Copyright John L. Welch 2023.

Thursday, September 21, 2023

Precedential No. 27: TTAB Renders Split Decision in Appeal From Section 2(d) Refusal of IMPACT for Various Healthcare Services

In a dubiously precedential decision, the Board affirmed-in-part and reversed-in-part a refusal to register the mark IMPACT for various healthcare-related services in Classes 35, 44, and 45. The USPTO had refused registration in view of the mark IMPACT in the Stylized form shown below (without color), registered for "Consulting services in the field of patient relationship management for healthcare workers” in Class 35 and “Training in patient-centered, evidence-based community health worker-centered healthcare” in Class 41. In re OSF Healthcare System, 2023 USPQ2d 1089 (TTAB 2023) [precedential] (Opinion by Judge Christopher C. Larkin).

The Board first set forth a few standard ground rules for its decision. It observed that "[b]ecause each class in Applicant’s multi-class application is, in effect, a separate application, we consider each class separately, and determine whether [the Examining Attorney] has shown a likelihood of confusion with respect to each." It also noted that "'it is sufficient for finding a likelihood of confusion if relatedness is established for any [service] encompassed by the identification of [services] within a particular class in the application.'"

Applicant's Class 35 Services: Applicant's services include business consulting services that are encompassed by registrant's "consulting services in the field of patient relationship management." Finding the services to be legally identical, and presuming that they travel in the same trade channels to the same classes of purchasers, the Board found confusion likely and it affirmed the refusal.

Applicant's Class 44 Services: These services include "Healthcare and medical coordination with individuals and organizations related to improving community healthcare services." There was no match in the cited registration but the Examining Attorney contended that, based on third-party registrations and websites, these services are related to the services of "Training in patient-centered, evidence-based community health worker-centered healthcare" in the cited registration.

The Board found that only one of the websites appeared to offer both services, and none of the third-party registrations were on point. Thus the evidence was insufficient to support the Section 2(d) refusal, and so the Board reversed as to applicant's Class 44 services.

Applicant's Class 45 Services: Again, the Examining Attorney relied on third-party websites and registrations in maintaining that Registrant's training services are related to applicant's "Charitable services, namely, providing case management services in the nature of coordinating preventative healthcare and wellness program services for vulnerable populations to improve access to healthcare, quality of care, and health outcomes related thereto." For completeness, the Board also considered registrant's consulting services.

The Board found that at most two of the websites and none of the registrations supported the Section 2(d) refusal. Although the Board recognized that, in cases involving identical marks, "the services need not be shown to be closely related for there to be a likelihood of confusion, it found this evidence insufficient to establish relatedness. And so the Board reversed this refusal.

Read comments and post your comment here.

TTABlogger comment: This decision is so completely fact-bound that, in my opinion, it is useless as citable precedent and does not merit the precedential label. Honk if you agree.

Text Copyright John L. Welch 2023.

Wednesday, September 20, 2023

Applying Contractual Estoppel, TTAB Grants Motion for Partial Summary Judgment in BYLT Oppositions

In one of two oppositions consolidated by the Board, opposer sought to block registration of the marks BYLT BASICS and BYLT PREMIUM BASICS, each for “hoodies, jackets, pants, shirts, briefs as underwear, jogging pants, men’s underwear, short-sleeve shirts, underwear; all of the foregoing excluding motorcycle related clothing and apparel.” Opposer claimed likely confusion with its registered mark B.Y.L.T. for various clothing items and sports drinks. Applicant successfully moved for partial summary judgment as to this opposition on the ground of contractual estoppel based on a litigation settlement agreement. BYLT Performance LLC v. BYLT, LLC, Oppositions Nos. 91274047 and 91276608 (September 14, 2023) [not precedential].

While opposing the motion for partial summary judgment, opposer also asked for time to take discovery, under FRCP 56(d). However, it's motion was untimely. Moreover, when such a request accompanies an opposition to a summary judgment motion, the Board will deem the request as moot.

As to the subject of the summary judgment motion, applicant maintained that that the parties entered into an agreement that prohibits Opposer from opposing the two trademark applications identified above.

Specifically, Applicant explains by way of background that to resolve a prior trademark infringement action between the parties in the United States District Court for the Central District of California, Case No. 8:18-cv-02194 (JVS-KES), the parties entered into a Settlement Agreement, which explicitly states that so long as Applicant abandoned its earlier-filed trademark application Serial No. 87912445, Opposer would not oppose Applicant’s other pending applications for BYLT BASICS and BYLT PREMIUM BASICS.

Opposer contended that this was essentially a coexistence agreement, which is unenforceable because numerous instances of actual confusion occurred since the agreement was executed. Opposer further claimed that Applicant did not comply with certain packaging requirements set forth in the agreement. Therefore, opposer argued, the Board should not enforce the agreement as a matter of public policy because the agreement was purportedly "not accomplishing what it was intended to do." Opposer argued that the Board should declare the agreement “rescinded, voided, or cancelled."

The Board observed that the equitable doctrine of contractual estoppel applies in Board proceedings when one party has agreed not to challenge registration of another’s mark. "While it does not lie within the jurisdiction of the Board to enforce a contract between parties, Vaughn Russell Candy Co. v. Cookies in Bloom, Inc., 47 USPQ2d 1635, 1638 n.6 (TTAB 1998), whether Opposer is contractually barred from opposing registration of Applicant’s involved applications clearly falls within the jurisdiction of the Board."

In particular, the Board may “consider the agreement, its construction or its validity if necessary to decide the issues properly before it … including the issue of estoppel.”

The Board pointed out that it is Board practice to interpret an agreement based not on the subjective intention of the parties, but on the objective words of their agreement. There was no genuine dispute that "Section 2 of the parties’ agreement clearly and unambiguously states that as long as Applicant files the express abandonment of its trademark application Serial No. 87912445 for the mark BYLT, Opposer agrees not to oppose, challenge, contest, or otherwise interfere with Applicant’s (as Plaintiff in the civil action) pending applications for BYLT BASICS or BYLT PREMIUM BASICS." Applicant complied with that requirement.

The Board noted that the agreement did not state any goal related to avoiding likely or actual confusion. "Specifically, there is no section in the agreement allowing for 'rescind[ing], void[ing], or cancel[ing]' the agreement due to actual confusion or other circumstance, as Opposer suggests."

Likewise, with respect to Opposer’s allegations that Applicant failed to comply with labelling requirements set forth in the agreement,the agreement is clear and unambiguous that only one precondition exists to invoke the consequence that Opposer may not oppose the applications identified in the agreement; that is, Applicant’s express withdrawal of application Serial No. 87912445 is the only condition for binding Opposer’s promise not to oppose.

And so, the Board dismissed Opposition No. 91274047, with prejudice.

Read comments and post your comment here.

TTABlogger comment: You may remember the NAKED condom case, an unnecessarily complicated case involving contractual estoppel: TTABlogged here.

Text Copyright John L. Welch 2023.

Tuesday, September 19, 2023

TTAB Finds AUSTRALIAN BOTANICAL SOAP (Stylized) Geographically Descriptive of . . . SOAP

The Board upheld a Section 2(e)(2) refusal to register the mark AUSTRALIAN BOTANICAL SOAP in the stylized form shown below, for body soaps and various other Class 3 products [SOAP disclaimed], finding that the proposed mark is primarily geographically descriptive of the goods. Applicant claimed acquired distinctiveness based on several years of use in the United States and sales representing some 17 million bars of soap, but the Board found the evidence insufficient. In re Apperley Holdings Pty. Ltd., Serial No. 79277754 (September 11, 2023) [not precedential] (Opinion by Judge Thomas V. Shaw).

To support a Section 2(e)(2) refusal, the Office must show that: 

  • (1) the primary significance of the term in the mark sought to be registered is the name of a place generally known to the public; 
  • (2) the source of the goods or services is the geographic region named in the mark; and 
  • (3) the public would make an association between the goods or services and the place named in the mark, that is, believe that the goods or services for which the mark is sought to be registered originate in that place. 

The Board first noted that Section 2(e)(2) still applies "if merely descriptive matter is included and the mark as a whole retains its primarily geographic significance." 

The Board unsurprisingly found that "the primary significance of AUSTRALIAN is geographic, i.e., the adjective form of AUSTRALIA, a place generally known to the American public." The addition of the term BOTANICAL SOAP does not detract from the geographical significance of the mark as a whole, since the disclaimed word SOAP is the generic name of the goods and the word BOTANICAL is at least descriptive of goods, like applicant's, made from plant-based ingredients.

Applicant's goods are made in Australia and its headquarters are there, so there was no dispute regarding the second element of the test. 

As to the required goods/place association, the Board observed that "[w]hen there is no question that the geographical significance of a term is its primary significance, and the geographical place is neither obscure nor remote, a public association of the goods with the place is presumed if an applicant’s goods originate in the place named in the mark."

Applicant argued that Australia "is not particularly known for cleaning products, nor is it shown that purchasers particularly care if cleaning products come from a country or continent." The Board deemed this argument "misplaced as a matter of law. Australia need not be known for Applicant’s goods if they are, as here, made there."

Applicant also argued that "Australian" could have more than one meaning: "For example, whether the product may be made in a fashion or manner first developed or used in Australia, the product includes ingredients that are 'Australian Botanical' products, the product uses ingredients favored by Australian wildlife such as the koala or kangaroo, or, as argued by the Examining Attorney, the product is made in Australia." The Board was unimpressed: "Applicant’s mark need not specify exactly which meaning of 'Australian' is intended for its goods because all of the suggested meanings have geographic significance." Furthermore, there was no evidence that AUSTRALIAN "refers to a non-geographic characteristic of the goods, i.e., that consumers would view the term AUSTRALIAN as anything but a geographic place."

Finally, the Board observed that the minimal stylization of the mark "does not creates a commercial impression separate and apart from the impression made by the wording itself."

Turning to the issue of acquired distinctiveness, the Board found that the proposed mark is "highly geographically descriptive," and therefore  a concomitantly high amount of evidence is needed to show secondary meaning. Applicant averred that it has sold some 19 million bars of soap, beginning in 2019. Again, the Board was not impressed: "Applicant’s use of the mark for only a few years—since 2019—suggests that the mark is unlikely to have acquired distinctiveness in the minds of consumers." Moreover, "although the volume of product sold is not insignificant, the numbers lack any context comparing them to soap sales generally (or even soap sales within a subcategory such as 'botanical' soaps), which would be required to show that the mark has acquired distinctiveness."

And so, the Board concluded that applicant failed to prove acquired distinctiveness, and it affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA?

Monday, September 18, 2023

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

The rate of affirmance for Section 2(d) refusals is running at 85% or so this year. That's about 5% lower than usual. Here are three recent TTAB decisions. How do you think they came out?

In re Pour Moi Limited
, Serial No. 79318691 (September 7, 2023) [not precedential] (Opinion by Judge Jennifer E. Elgin). [Section 2(d) refusal of POUR MOI for various clothing items in view of the identical mark registered for "Non-medicated skin care preparations and cosmetics for the face and body."]

In re Chick-A-Boom, LLC, Serial No. 90667527 (September 13, 2023) [not precedential] (Opinion by Judge Michael B. Adlin) [Section 2(d) refusal of CHICK-A-BOOM, for restaurant services, in view of the registered marks CHK-A BOOM for "providing of food and drink via online ordering, takeout services, and delivery services" and CHICKABOOM for "processed meat, namely, chicken."]

In re Destiladora del Valle de Tequila SA de CV, Serial No. 90269534 (September 15, 2023) [not precedential] (Opinion by Judge Robert H. Coggins) [Section 2(d) refusal to register DESPERADOS (in standard characters) for “Distilled agave liquor; Distilled blue agave liquor," in view of the registered marks shown below, for "beers."]

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2023.

Friday, September 15, 2023

TTAB Finds Polishing Disc Configuration Non-Functional but Lacking Acquired Distinctiveness

Applicant Buff and Shine cruised past a Section 2(e)(5) functionality refusal but failed to garner the Section 2(f) checkered flag in its attempt to register the product configuration shown below as a trademark for "machine parts, namely, polishing discs for rotary machines, random-orbit machines, and other surface preparation machines for vehicles." In re Buff and Shine Manufacturing, Inc., Serial No. 88737597 (September 12, 2023) [not precedential] (Opinion by Judge Thomas W. Wellington).

According to the application, "The mark consist[s] of a three-dimensional configuration of a polishing disc that includes a repeating pattern of hexagonal (or honeycomb) shapes on a front surface of the disc. The broken lines on the outer image and within the honeycomb pattern indicate placement of the mark on the goods and is not a part of the mark."

Functionality: The Board considered the ever-popular Morton-Norwich factors, deemed "helpful in determining whether a particular design is functional:" 

  • (1) the existence of a utility patent disclosing the utilitarian advantages of the design; 
  • (2) advertising materials in which the originator of the design touts the design’s utilitarian advantages; 
  • (3) the availability to competitors of functionally equivalent designs; and 
  • (4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product.

As to the first factor, there were no pertinent utility patents of record, but there was a design patent owned by the applicant. Citing In re Becton, Dickinson, the Board found the design patent to be some evidence of non-functionality, but not dispositive of the issue. The Board noted a prior utility patent application owned by applicant, but found that the claims had no bearing on the proposed mark. [Note: Becton, Dickinson says that you should look at the specification as well as the claims - ed.]

As to the second factor, the evidence included advertising for Applicant’s product stating that the "hex pattern" is a means of keeping the polishing pad cooler when polishing surfaces. The Board found that. although the goods have "the ability to dissipate heat, this is attributed to the fact the pads are textured, and not a result of the repeating hexagonal design. In other words, the design is not 'essential to the use or purpose' of the polishing pads."

As to the third factor, the evidence showed alternative, functionally-equivalent designs that are available to applicant’s competitors,. "Although not essential to our decision, this weighs in favor of finding the proposed mark is not functional."

As to the fourth factor, the examining attorney did not refute applicant's assertion that its product design does not help minimize the cost or simplify the manufacture of polishing discs.

And so, the Board reversed the Section 2(e)(5) refusal.

Acquired Distinctiveness: Since product designs are never inherently distinctive, applicant had to prove acquired distinctiveness under Section 2(f). Buff and Shine did not submit customer survey evidence or any declarations from actual purchasers, nor any evidence regarding the amount of sales or proof of its relevant market share.

Buff and Shine claimed use of the proposed mark since at least 2009, but it offered no "look for" advertising directing consumer attention to the design. Third-party Internet references to applicant's products did not refer to the repeated hexagonal design as an indicator of source, but at best touted that "a particular design that works well in this configuration." Statements made by consumers referred to applicant's "Hex-Logic” mark but not to the repeating pattern on the product.

In sum, the totality of the evidence falls woefully short of showing that the consuming public has come to understand the hexagonal design as an indicator of source. Noticeably absent is any statement, solicited or unsolicited, from a consumer of polishing discs attesting to the belief that the repeating hexagonal design is an indicator of source with respect to Applicant’s goods.

And so, the Board concluded that applicant had failed to prove acquired distinctiveness, and it affirmed the refusal to register on the ground that the proposed mark fails to function as a trademark.

Read comments and post your comment here.

TTABlogger comment: Not many proposed product design marks clear the functionality hurdle, but even when they do, there's still a big hill to climb.

Text Copyright John L. Welch 2023.

Thursday, September 14, 2023

Precedential No. 26: Listing of Application on ESTTA Cover Sheet Suffices for Claim of Common Law Rights in Opposition to Section 66(a) Application

Opposer Sterling Computers opposed IBM's Section 66(a) applications to register the marks STERLING and IBM STERLING for various Class 42 services. In its notice of opposition, opposer claimed a likelihood of confusion with its marks STERLING, in standard character and design form, and STERLING COMPUTERS. On its ESTTA cover sheet, opposer listed pending applications for all three marks, as well as common law rights in the mark STERLING COMPUTERS. When it filed an amended notice of opposition, opposer added common law rights in its STERLING marks. IBM objected because those added common law rights were not included on the ESTTA cover sheet. The Board, however, sided with opposer, holding that identification of the applications for the STERLING marks was enough to notify WIPO's International Bureau of its common law rights that are coterminous with those of its identified applications. Sterling Computers Corporation v. International Business Machines Corporation, Opposition No. 91273403 (September 8, 2023) [precedential] (Order by Judge Jennifer E. Elgin).

Under the Madrid Protocol Treaty, the USPTO is obligated to notify the International Bureau (IB) of WIPO of either (1) a refusal based on the filing of an opposition, or (2) the possibility that an opposition may be filed, within 18 months of the filing of a request for extension of protection under Section 66(a). The USPTO provides the IB with the required information regarding an opposition by forwarding a copy of the ESTTA cover sheet completed by the opposer when an opposition is filed. See CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959 (1960) (TTAB 2011).

Under the Trademark Act and applicable rules, the grounds for the opposition are limited to those stated on the ESTTA cover sheet, regardless of the claims made in the notice of opposition itself. Moreover, additional grounds may not be added under any circumstances. "Thus, an opposer is not permitted to amend its pleading to include 'common law rights not previously identified on the ESTTA cover sheet.'" Destileria Serralles, Inc. v. K.K. Donq Co., 125 USPQ2d 1463, 1466-67, n. 11 (TTAB 2017) (granting motion to strike evidence and denying construed cross-motion to amend likelihood of confusion claim to assert common law rights in a mark for “rum cakes, chocolates and bar services” as beyond the scope of IB notification where pleaded registration only for “rum”).

Opposer argued that the listing of its pending used-based applications for its STERLING marks on the ESTTA cover sheet satisfied the requirement of Trademark Rules 2.104(c) and 2.107(b) that the IB be notified of opposer's common law rights in these marks. The Board agreed, noting that, unlike in Destileria, here the added common law rights are "coterminous with the services and dates of use recited in the use-based applications identified on the ESTTA cover sheet."

The Board noted that, on the ESTTA form, if a pleaded mark is the subject of a registration, the registration number may be entered in one text box, and if a mark is the subject of a pending application, the serial number may be entered in another box. In each case, the relevant information is automatically retrieved from the USPTO database. The form states: "If the asserted mark is not the subject of a U.S. Registration or pending application," then the mark should be entered in a third box.

The Board holds that identification of a use-based application or registration under Trademark Act Section 1(a) on the ESTTA cover sheet as grounds for an opposition against a Section 66(a) application based on likelihood of confusion claim is sufficient to satisfy the requirement to notify the IB of plaintiff’s reliance on common law rights that are coterminous with that pleaded use-based application or registration under Trademark Rules 2.104(c) and 2.107(b).

Therefore, the Board denied IBM's motion to strike the added allegations regarding opposer's common law rights in the STERLING marks.

Read comments and post your comment here.

TTABlogger comment: IBM's Section 66(a) application was based on an original filing in Mauritius. Now, why do you think it filed first in Mauritius? (Flag of Mauritius shown below).

Text Copyright John L. Welch 2023.

Wednesday, September 13, 2023

Precedential No. 25: TTAB Deems Grace Period Petition for Cancellation Moot When Registrant Failed to Renew

The Board dismissed a petition for cancellation (of a registration for the mark ROD & CUSTOM for "magazines about automobiles") that was filed during the six-month grace period for (second) renewal of the challenged registration. When the registrant did not file its renewal application, the registration automatically expired as of its twentieth anniversary date, and so the later-filed petition for cancellation was deemed moot. Thomas C Taylor v. Motor Trend Group, LLC, Cancellation No. 92081731 (September 8, 2023) [precedential].

Registrant Motor Trend's Section 8 Declaration of Use and Section 9 Renewal application for its 20-year old registration were due on October 22, 2022. However, Section 8(a)(3) and Section 9(a) of the Trademark Act provide for a six-month grace period within which to file the declarations. The subject petition for cancellation was filed on March 1, 2023, within the grace period for renewal. The Board promptly instituted the cancellation proceeding, since the USPTO records indicated that the registration was still viable. Motor Trend failed to file its renewal papers by the grace period deadline of April 22, 2023. The USPTO records were updated on May 5, 2023 to indicate that the registration had expired and was cancelled.

On May 11, 2023, the Board issued an order under Rule 2.134(b), requiring Motor Trend to show cause why its failure to renew should not be deemed the equivalent of a cancellation by request without the consent of the petitioner, resulting in judgment for petitioner. Motor Trend responded by moving to dismiss the proceeding as moot. The Board agreed with Motor Trend, ruling that "if a combined Sections 8 and 9 affidavit is not filed by the end of the grace period, a registration expires by operation of law as of the last day of its ten-year term, and no rights in the registration exist after that date." Therefore, the subject registration expired on October 22, 2022.

Respondent’s registration expired prior to the filing of the petition to cancel because there was no renewal filing made within the statutory period (including the grace period), even though Office records were not updated until later to show the expiration. As a result, Petitioner’s petition to cancel for abandonment was filed after the expiration date of the registration and is therefore moot.

Read comments and post your comment here.

TTABlogger comment: It's a good idea to avoid judgment and the res judicata effects thereof.

Text Copyright John L. Welch 2023.

Tuesday, September 12, 2023

TTABlog Test: Which of These Section 2(d) Refusals Was/Were Reversed?

Here are three recent appeals from Section 2(d) refusals. At least one of the refusals was reversed. How do you think these came out? Answers will be found in the first comment.

In re Belgravia Wood Limited
, Serial No. 90640925 (September 8, 2023) [not precedential] (Opinion by Judge George C. Pologeorgis). [Section 2(d) refusal of HOLIDAZZLE for "Electric lights for Christmas trees; Christmas lighting, namely, electric holiday lights; electric holiday lights," in view of the registered mark DAZZLE for "LED (light emitting diode) lighting fixtures; LED (light emitting diodes) lighting fixtures for use in display, commercial, industrial, residential, and architectural accent lighting applications; LED and HID light fixtures; LED light strips for decorative purposes."] 

In re My Happi Gift LLC, Serial No. 97118213 (September 8, 2023) [not precedential] (Opinion by Judge Marc A. Bergsman) [Section 2(d) refusal of YANI L’ADORE, for “Business card holders in the nature of wallets; Card wallets; Clutch bags; Crossbody bags; Tote bags; Wallets,” in view of the registered mark YANNI for "tote bags." The English translation of L'ADORE is "love." The registrant is John Yanni Christopher, an allegedly famous musician.]

In re Lindsay Hoopes, Serial Nos. 90498749 and 90498755 (September 8, 2023) [not precedential] (Opinion by Judge Christen M. English) [Section 2(d) refusals to register NAPANAC and NAPAÑAC for "Brandy; Fortified wines; Spirits" in view of the registered geographical certification mark NAPA GREEN for wine derived from grapes grown in Napa Valley, California, and for promoting sustainable winery practices in Napa Valley, and in view of the registered certification mark NAPA VALLEY for wine.]

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2023.