Tuesday, May 24, 2022

TTAB Affirms Section 2(e)(4) Surname Refusal of VESS for Educational Services

Although the Examining Attorney accepted applicant's claim of acquired distinctiveness under Section 2(f), the applicant maintained its right to contest the Section 2(e)(4) refusal of its mark VESS for various educational services. The Board, however, agreed with Examining Attorney Maureen J. Reed that VESS is primarily merely a surname, and so it affrrmed the refusal. In re Education First, Inc., Serial No. 87875275 (May 18, 2022) [not precedential] (Opinion by Judge Christopher Larkin).

The Board spent the first 12 pages of the decision explaining the history of the prosecution of this application. Turning to the substance of the surname, the Board applied the standard Benthin test, focusing first on what has become the most important factor, the "frequency of, and public exposure to" the proposed mark as a surname.

Census bureau data showed that 2300 people have the surname VESS, and online articles, webpages, and pages from Wikipedia and Linkedin referred to persons with the surname VESS. Applicant argued that the online evidence is hearsay, but the Board pointed out that the Federal Rules of Evidence (which define hearsay and govern when it is and is not admissible at a hearing or trial) “do not apply in ex parte appeals." Even it they did, the evidence submitted by the Examining Attorney was not offered for the truth of the matter stated (i.e., so-and-so did such-and-such), but only to show that the public was exposed to use of VESS as a surname.

The Board also rejected the argument that the USPTO must show that persons named VESS are famous or prominent. See In re tapio GmbH [TTABlogged here]. The Board noted that "[i]n the final analysis, however, whether or not 'Vess' is a 'rare' surname is of little importance because ''[e]ven a rare surname may be held primarily merely a surname if its primary significance to purchasers is that of a surname.'"

Applicant claimed that "vess" has other meanings, pointing to the Urban Dictionary. However, because the Urban Dictionary is a collaborative website, the Board requires corroboration of the entries (as it does with Wikipedia). The Board agreed with the Examining Attorney that "vess" does not have an "ordinary language" meaning "of the sort that would be found in a standard dictionary of American English."

Applicant also claimed that "vess" is a fanciful term that it coined as an acronym for the Spanish phrase “Vida Equilibrada Sentido y Sabiduría.” However, there was no evidence that consumers are familiar with the Spanish-language phrase, much less with the claimed abbreviation "V.E.S.S."

Finally, the Examining Attorney furnished evidence that VESS has the structure and pronunciation of a surname, namely, inclusion of the surnames “Hess,” “Ness,” “Bess,” “Gess,” and “Ress” in the LEXISNEXIS Public Records database, all of which surnames have the same four-letter, one-syllable structure as “Vess,” and when pronounced are quite similar in sound to “Vess.”

The Board therefore affirmed the Section 2(e)(4) refusal, but in light of the accepted Section 2(f) claim, the application will now be published for opposition.

Read comments and post your comment here.

TTABlogger comment: FWIW: I've never met anyone named Vess, Hess, Ness, Bess, Gess, or Ress.

Text Copyright John L. Welch 2022

Monday, May 23, 2022

TTAB Upholds Rejection of Specimens for "IT'S ABOUT THE FABRICS" for Performance Fabrics

The Board affirmed the USPTO's refusal to register the proposed mark IT'S ABOUT THE FABRICS for performance fabrics, finding that on applicant's specimens of use the phrase refers to a component of clothing rather than to fabric offered by itself. Moreover, applicant's website specimens of use were not acceptable because they provided only a means of getting information about applicant’s clothing items and not a means for ordering its fabrics. In re Striker Brands LLC, Serial No. 88519404 (May 19, 2022) [not precedential] (Opinion by Judge Cheryl S. Goodman).

All three of applicant's specimens of use included the phrase IT’S ABOUT THE FABRICS, the TM designation, and an identification of fabrics of specific types. Applicant argued that the specimens constituted point-of-sale displays, and further that the third specimen did not refer to the end products, but rather "merely gives details as to what the fabrics are made of, how the fabrics are made, the benefits of the fabrics, and the differences between the fabrics associated with the Applied-For Mark and other fabrics."A link labeled "Click here to inquire about our fabrics" led to information about applicant's fabrics.

Reviewing the submitted specimens, the Board agreed with Examining Attorney Jared M. Mason that the specimens identify a component of clothing, rather than raw fabric goods.

As used on Applicant’s first, second and third specimens, IT’S ABOUT THE FABRICS creates a direct association between integral features built into the finished clothing items, namely performance fabric and their features. The specimens indicate that Applicant’s clothing uses high performance fabrics in its finished clothing goods that contain, for example, Hydrapore laminate for protection from extreme elements, ultraviolet protection factor for protection from ultraviolet rays, and Permanent Cooling Technology with an automatic cooling function to make the wearer feel cooler.

In sum, "applicant’s use of ITS ABOUT THE FABRICS supports a finding that consumers who encounter the mark will perceive it as referring to an integral component of the finished clothing items, namely specialized performance fabrics built into the clothing, and not a reference to the raw materials--fabric--used for the manufacture of clothing."

As to applicant's (third) website specimen, "[i]nformation that we would consider essential to a purchasing decision is absent." See In re Siny Corp. [TTABlogged here].

There is no information at all regarding the price, or even a range of prices, for fabric goods. There is no information regarding the weight or thickness of the fabric or the dimensions in which a bolt of the fabric would be available. There is There is no information at all regarding the price, or even a range of prices, for fabric goods. There is no information regarding the weight or thickness of the fabric or the dimensions in which a bolt of the fabric would be available.

And so, the Board affirmed a refusal to register.

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2022.

Friday, May 20, 2022

TTAB Reverses Section 2(a) False Association Refusal of "WILL AND KATE PHOTOGRAPHY" for Photography Services

The Board reversed a Section 2(a) refusal of the mark WILL AND KATE PHOTOGRAPHY for "photograph services" [PHOTOGRAPHY disclaimed], rejecting the USPTO's position that the mark may falsely suggest a connection with William Windsor, aka Prince William, Duke of Cambridge, and Kate Middleton, aka Catherine, Duchess of Cambridge. The evidence failed to establish that "WILL AND KATE" points uniquely and unmistakably to William Windsor and Kate Middleton. In re Will and Kate Photography LLC, Serial No. 90568132 (May 18, 2022) [not precedential] (Opinion by Judge Peter W. Cataldo).

Section 2(a), in pertinent part, bars registration of "matter which may . . . falsely suggest a connection with persons, living or dead . . . ." Here, the USPTO had to show that:

(1) Applicant’s mark is the same as, or a close approximation of, the name or identity previously used by another person(s) or institution, in this case William Windsor and Kate Middleton;
(2) Applicant’s mark would be recognized as such, in that it points uniquely and unmistakably to William Windsor and Kate Middleton;
(3) William Windsor and Kate Middleton are not connected with the services offered by Applicant under the mark; and
(4) the fame or reputation of William Windsor and Kate Middleton is such that, when Applicant’s mark is used with Applicant’s services, a connection with them would be presumed. 

Under the first factor, based on various webpage references to "Will and Kate," the Board found that "Will and Kate" is a name or identity of William Windsor and Kate Middleton." Noting that the word "photography" is generic, the Board then found that applicant's mark is a close approximation of William Windsor's and Kat Middleton's names or identities.

The next question was whether the proposed mark will be recognized by purchasers of applicant's photography services as pointing uniquely and unmistakably to William Windsor and Kate Middleton. Applicant submitted twelve webpages evidencing that other businesses use the name "Will and Kate" because (like applicant) they are owned by people who happen to be named Will and Kate.

The Board pointed out that the evidence does not point to "widespread" use of "Will and Kate" to refer to William Windsor and Kate Middleton. In fact the evidence suggests that the two are commonly referred to as "William and Kate."

The Examining Attorney pointed out that applicant displays a crown and the phrase "We Treat You Like Royalty" in promoting its services. Applicant responded that this slogan is commonly used by event service providers. The Board sided with Applicant, concluding that applicant's mark does not point uniquely to William Windsor and Kate Middleton.

Given the number of third-party uses of “Will and Kate” formatives for a variety of goods and services, relevant consumers will perceive the designation as identifying couples or pairs of individuals named “Will and Kate.” Applicant’s use of its mark is similar to the use prevalent among these third parties. Accordingly, the requirement that the name or identity serve to point uniquely to a single entity has not been satisfied.

As to the third element of the Section 2(a) test, applicant conceded that William Windsor and Kate Middleton are not connected with its services. As to the fourth, the Examining Attorney asserted that Kate Middleton is known for her photography, and therefore a connection with applicant would be presumed. The Board, however, found the evidence insufficient to prove that William Windsor and Kate Middleton "will be associated with Applicant's photography services, despite their fame and Kate Middleton's interest in photography."

And so, the Board reversed the refusal.

Read comments and post your comment here.

TTABlogger comment: Suppose that a sub-set of Americans, namely British-Americans, would make the association. Would that be enough to sustain the refusal?

Text Copyright John L. Welch 2022.

Thursday, May 19, 2022

TTAB Affirms "EVERLAST" Refusal on Res Judicata and Section 2(d) Grounds

The Board affirmed the USPTO's refusal to register the mark EVERLAST & Design for "wet well mounted pumping stations; wastewater pumping stations; sewage pumping stations" on two grounds: res judicata, since the Board had already affirmed the same refusal of the same mark for the same goods; and likelihood of confusion (again) with the same registered mark EVERLASTING for "valves for controlling the flow of fluids." In re Smith & Loveless, Inc., Serial No. 88497482 (May 16, 2022) [not precedential] (Opinion by Judge Christopher Larkin).

On June 26, 2019,  the Board affirmed a Section 2(d) refusal to register applicant's mark, finding confusion likely with the EVERLASTING mark. (Opinion here). In that appeal, the Board refused to consider evidence of third-party registrations and website evidence that was not made of record during prosecution of the application. Undaunted, on July 2, 2019, the applicant applied to register the same mark for the same goods (asserting in this appeal that the second application was filed "so that full consideration to Applicant's arguments could be had."

Examining Attorney David A. Brookshire issued the same Section 2(d) refusal, and applicant filed this appeal. The Board remanded the case to the Office for consideration of the applicability of res judicata (a/k/a claim preclusion) based on the prior appeal. The Examining Attorney then added the ground of res judicata to the final refusal.

The primary additions to the record on this second appeal were the third-party evidence of applicant and some additional third-party webpages made of record by the Examining Attorney.

Res judicata: Under the doctrine of res judicata, "a judgment on the merits in a prior suit bars a second suit involving the same parties or their privies on the same cause of action." The Board found last year's SolarWindows decision [TTABlogged here] to be procedurally on point. There, two years after a Board decision upholding a mere descriptiveness refusal of POWERCOATINGS for certain chemicals, the applicant filed a new application for the same mark and goods. The Board affirmed the second refusal on the ground of res judicata, ruling that certain new arguments made by the applicant did not "demonstrate the required material change of circumstances or conditions" that would avoid res judicata, since those arguments could have been made in the first appeal.

Similarly, here the additional evidence was admittedly available when the prior application was pending, and so it did not constitute a material change of circumstances that would justify not applying res judicata. "A losing party does not get a second bite of the apple simply because they can find [] new and arguably more persuasive evidence to present in the second proceeding." Here, the evidence was not even "new."

Likelihood of Confusion: The Board went on to consider the Section 2(d) issue, including the additional evidence, since the CAFC has warned that "particular caution is warranted" when applying claim preclusion. The Board came to the same conclusion as previously.

Applicant relied primarily on two third-party registered marks: Teksan, everlasting company (stylized) and EVERLAST SPAS. However the impact of third-party registrations on the commercial strength of a mark depends on the usage of the mark, and the evidence submitted by applicant did not show use of these marks.

As to the inherent strength of the cited mark EVERLASTING, the "handful" of third-party registrations had little probative value: they were a "far cry from the large quantum of evidence" held to be "significant" in the Jack Wolfskin and Juice Generation cases.

In sum, the third-party evidence was insufficient to show that the cited mark is either commercially or conceptually weak or is entitled to only a narrow scope of protection. As to the remaining DuPont issues, the Board saw no reason to change its findings from those in the first decision.

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

Read comments and post your comment here.

TTABlogger comment: Let's hope this second affirmance will be everlasting.

Text Copyright John L. Welch 2022.

Wednesday, May 18, 2022

Twitter Poll Results: "After attending the INTA Annual Meeting in DC, did you test positive for Covid?"

I ran a Twitter poll for the last several days, asking this question: After attending the INTA Annual Meeting in DC, did you test positive for Covid? The results are set out below. I take no position regarding the statistical significance of these results, but look forward to comments regarding same.

If these poll results hold true for the entire 6,800 people in attendance, that would mean more than 1,750 attendees tested positive for Covid. The ramifications of that number of infections are troublesome, to say the least.

A few side notes: Several people have told me that, based on conversations with others, they think the positive rate was even higher: closer to 50%. One of the surprising things I heard is that the opening speaker, at the end of his speech, told his listeners that each of them should hug eight other people in the room. Not a good idea, I think.

Read comments and post your comment here.

Text Copyright John L. Welch 2022.

Tuesday, May 17, 2022

TTABlog Test: Is "DIGITAL VISUAL OBSERVER" Merely Descriptive of Drone Managing and Tracking Software?

The USPTO refused registration of the proposed mark DIGITAL VISUAL OBSERVER for software and hardware for managing, controlling, and tracking drones, including collision avoidance and object detection, finding the mark merely descriptive of the goods and services. Examining Attorney Megan Mischler contended that the mark describes features of the goods and services that perform the functions of a person who is a member of a drone crew tasked with visually monitoring a drone in flight. Applicant Skydio argued that because its drones monitor themselves, there is no "observer," and furthermore that the mark is incongruous and/or a double entendre. How do you think this came out? In re Skydio, Inc., Serial No. 88928113 (May 10, 2022) [not precedential] (Opinion by Judge Peter W. Cataldo).

Dictionary definitions and third-party webpages submitted by the Examining Attorney established that a "Visual Observer" is "a member of a drone crew tasked with maintaining visual line of sight with the drone during operation. The VISUAL OBSERVER serves as a second set of eyes, monitoring the drone in flight during operation by the remote pilot in command (PIC)." The Board found that DIGITAL VISUAL OBSERVER describes "an electronic, computer readable and controllable, or DIGITAL, version of an individual tasked with determining a drone’s location and air traffic hazards, or VISUAL OBSERVER. with determining a drone’s location and air traffic hazards, or VISUAL OBSERVER."

Applicant’s computer hardware, software, drones and its services of providing software for observation, detection and collision avoidance perform, inter alia, the functions of a computer readable or DIGITAL version of a human VISUAL OBSERVER. The proposed mark DIGITAL VISUAL OBSERVER merely describes a feature or characteristic of, at least, Applicant’s computer hardware, software, drones and the services of providing use of non-downloadable software, all used for maintaining the position of drones and avoiding collisions and other air traffic hazards.

Applicant Skydio argued that its goods and services use cameras and software that "allow the drone itself to monitor its own surroundings in order to automatically avoid collisions and detect objects." The Board was not impressed. "Applicant acknowledges that its goods and services allow drones to detect objects and avoid collisions. These are some of the functions performed by a human VISUAL OBSERVER."

The Board saw no incongruity in Skydio's proposed mark, nor did it perceive a double entendre: the mark "immediately describes computer hardware and software, either downloadable or available as a service, as well as drones, that feature the ability to monitor a drone in flight to fix its position and avoid collisions and other air traffic hazards."

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2022.

Monday, May 16, 2022

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

The Board continues to run at an affirmance rate of about 95% for Section 2(d) appeals. Here are three more for your consideration. How do you think they came out? [Results in first comment].

In re Daniel Novela, Serial No. 90134566 (May 10, 2022) [not precedential] (Opinion by Judge Melanye K. Johnson) [Section 2(d) refusal of CASA DE NOVELAS for "eyewear retainers; Eyewear, namely, sunglasses, eyeglasses and ophthalmic frames and cases therefor" [CASA disclaimed], in view of the registered mark NOVELLA for "Ophthalmic lenses for eyeglasses."]

In re Milstead Technologies, LLC, Serial No. 88933287 (May 10, 2022) [not precedential] (Opinion by Judge Angela Lykos). [Section 2(d) refusal of SALEQUICK.COM & Design for "Application service provider (ASP) featuring e-commerce software for businesses for use as a payment gateway that authorizes processing of credit cards, gift cards debit cards or direct payments to merchants," in view of the registered mark QUICKSALE for "providing electronic processing of electronic funds transfer, ACH, credit card, debit card, electronic check and electronic payments."]

In re Flexa Network Inc., Serial No. 90002396 (May 13, 2022) [not precedential] (Opinion by Judge Marc A. Bergsman). [Section 2(d) refusal of FLEXA CAPACITY for "Providing electronic processing of collateralized cryptocurrency payments via a secure global computer network; collateralized cryptocurrency exchange services," in view of the registered mark CAPACITY for, inter alia, "electronic payment, namely, electronic processing and transmission of bill payment data" and "exchange services in the nature of execution, clearing, reconciling and settlement of trade and financial transactions via a global network involving . . . securities . . . and/or related financial instruments."]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2022.

Friday, May 13, 2022

In Light of Third-Party Use of "CLOVER," TTAB Reverses Two Section 2(d) Refusals of CLOVER CLUB Marks For Restaurant Services, But Affirms Two

In a 47-page opinion discussing many third-party uses of CLOVER and CLOVER-formative marks, the Board affirmed two and reversed two Section 2(d) refusals of Loew's Hotel's applications to register four marks for ""Bar and restaurant services, namely, providing cocktails and small dishes in an outdoor lounge setting attached to a high-end hotel." The Board found confusion likely between the cited mark CLOVER for restaurant and bar services, and Loew's standard character mark CLOVER CLUB and its stylized or composite mark shown first below; but not likely with regard to the marks shown second and third below. [Loew's disclaimed CLUB, EST. 2019, and MADE IN TEXAS in the marks.] In re Loew’s Hotels, Inc., Serial Nos. 88425357, 88433338, 88433342, and 88433348 (May 11, 2022) [not precedential] (Opinion by Judge Christopher Larkin).

The Board found that applicant's services were encompassed within the broad recitation of services in the cited registration. Consequently, the Board presumed that the involved services are offered in the same, normal channels of trade, to the same classes of consumers.

Turning to the sixth DuPont factor, the number and nature of similar marks in use for similar services, Loew's argued that the word "CLOVER" is in common use in connection with restaurants, food and beverages, lounges, pubs, cafes, and other drinking and dining establishments. It provided evidence of 27 such uses, and pointed to Juice Generation as the most closely analogous case. There, the CAFC held that the Board had given inadequate consideration to a similar number of third-party uses of PEACE & LOVE for restaurant services and food items as evidence of the weakness of the opposer's marks.

The Board noted that although Loew's evidence "tells us little" about the extent of exposure and use of the third-party marks, the CAFC held in Juice Generation that such evidence is still "relevant to show that a term 'may have a normally understood and well-recognized descriptive or suggestive meaning leading to the conclusion that that [term] is relatively weak'" and that "'consumers have been educated to distinguish between marks on the basis of minute distinctions.'"

"Evidence of third-party use can be 'powerful on its face' even though 'specifics' as to the extent and impact of use of the third-party marks may not have been proven."

As to the similarity of the third-party marks to the Loew's marks, the Board looked for guidance from the Juice Generation decision. There, all of the third-party marks contained "peace" and "love" followed by a third, product-identifying term, and most of them were three-word phrases. Only a portion of the collection of marks cited by Loew's had that high degree of similarity: three consisted of CLOVER alone, and two of THE CLOVER. Other marks included other words. In total, ten of the marks were identical or most similar to the CLOVER mark, but  the CLOVER-formative marks were still probative. The Board concluded that CLOVER is a weak mark for restaurant services.

With respect to the similarity of the involved marks, the Board compared the marks in their entireties, giving greater weight in that comparison to the word CLOVER in applicant's marks, since that is the dominant portion of the marks. It unsurprisingly found CLOVER CLUB to be quite similar to the cited mark CLOVER. As to the second mark, the Board found that neither the disclaimed word CLUB nor the disclaimed phrase "Estd. 2019" sufficiently distinguished the mark from the cited mark

As to the third and fourth marks, the Board found that the "tongue-in-cheek phrase MADE IN TEXAS imbues the CLOVER CLUB-based mark with a geographic connotation, and a connotation of club-type food that would be typical of Texas." And so the Board concluded that the first DuPont factor favored Loew's for these two marks.

Finally, Loew's dubiously argued that the customers for restaurant servicers are "sophisticated and savvy in selecting their food and dining choices." However, there was no evidence to support that argument. Loew's recitation of services is limited to a "high-end hotel," and the Board observed that this is "to say the least, a unique identification of services, but not one that includes "high-end" restaurant services or prices." Loew's "small plates" are priced between $8 and $24, and its beverages range in price from $6 for a beer to $28 for whiskey. "They strike us as prices that could be paid by a substantial portion of the consuming public, not just patrons of expensive restaurants." 

Loew's own description of its restaurant is directed to the general public, not simply to guests at a "high-end" hotel: for example, it solicits people who want to have "[b]eers with friends." In short, the least sophisticated purchaser of Loew's services will exercise nothing more than ordinary care in the purchasing decision. 

And so, the Board reversed two of the refusals but affirmed the other two.

Read comments and post your comment here.

TTABlogger comment: So Loew's winds up with two narrow registrations for narrowly recited services. It apparently has no rights in the term CLOVER CLUB alone. Not exactly a resounding victory, but as they say: you win some, you Loew's some.

Text Copyright John L. Welch 2022.

Thursday, May 12, 2022

TTAB Affirms Refusal of "PVPW" for Delivery of Bottled Water, Due to Unacceptable Specimens of Use.

Finding that Applicant's specimens of use did not show a direct association of the proposed mark with the recited services, the Board affirmed a refusal to register PVPW for "water supplying, namely, delivery of bottled water to homes, offices and stores." The purported mark is molded into the bottom of applicant's water bottles (see photo below right) and there was no evidence that purchasers would encounter the mark and perceive it as a source indicator. In re Peak Valley Pure Water, LLC, Serial No. 87686193 (May 10, 2022) [not precedential] (Opinion by Judge Elizabeth A. Dunn).

Examining Attorney Ingrid C. Eulin contended that the letters molded on the bottles would be visible to the consumers only "after purchase, delivery and installation of the purchased bottled water in the water dispensing unit.” She noted that the mark PEAK VALLEY and not PVPW appears on applicant's website, and also that entities in the water delivery field do not typically employ terms molded on the bottom of water bottles as source indicators.

Applicant argued that because the bottles are used to deliver the water, there is a necessary direct association between the mark and the services so that the mark on the bottles constitutes an acceptable specimen, particularly since the bottles may be “stored and transported on [their] side” and “may be inverted during use” with water dispensers.

The Board agreed with applicant that goods used in the rendering of services may display the mark and may serve as source indicators for the services. Furthermore, the record showed that water bottles used in performing the services display the mark for the delivery services. However, the Board disagreed with the contention that consumers will find that the molded term PVPW indicates the source of the water delivery services.

Applicant’s business involves not just water delivery but the sale of the same bottles used in delivery. Applicant’s bottles display prominent PEAK VALLEY labels and its website advertises “Delivery Services Peak Valley Water 5 gal. bottles.” Competitors in the water delivery industry display their marks on prominent water bottle labels and their website advertisements. There is no evidence that the mark is perceptible to the prospective consumer when the water bottles are being delivered. There is no evidence that consumers perceive, or even encounter, molded marks on the bottom of water bottles as indicators of source for water delivery services using the bottles. Based on these facts, we agree that the PWPV mark does not have a direct association with water delivery services.

The Board distinguished the Eagle Fence (alternately colored strands of wire) and Red Robin (bird costume) cases, where the marks were clearly viewable during performance of the respective services (fence rental services and entertainment services).

On this record and in the absence of any evidence that the prospective consumer would encounter the PVPW mark on the bottom of the bottle and perceive PVPW as indicating the source of the water delivery service, we find that Applicant’s bottles with a mark molded on the bottom have no direct association with Applicant’s water delivery services, and so are not acceptable specimens.

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TTABlogger comment: Would you think that four letters molded into the bottom of a water bottle would be a trademark? I would likely think it's some kind of environmental code or maybe a product/model number.

Text Copyright John L. Welch 2022.

Wednesday, May 11, 2022

Precedential No. 13: TTAB Reverses Disclaimer Requirement of "KID" in two Lego Marks Found to be Unitary

In what may be one of the biggest wastes of time in the history of trademark jurisprudence, the Board reversed the USPTO's requirements that LEGO disclaim the word KID, in both Latin and non-Latin characters, in the two marks shown below, for various goods and services primarily aimed at children. The Board found the two marks to be unitary, and therefore disclaimer of KID was not required. Now, does anyone think that Lego, by avoiding these disclaimers, will be able to stop others from using the word KID in connection with child-related goods and services? What's the point? In re Lego Juris A/S, 2022 USPQ2d 443 (TTAB 2022) [precedential] (Opinion by Judge Cynthia C. Lynch).

The Board observed that a composite mark is unitary if the elements of the mark "are so merged together that they cannot be viewed as separable elements, . . .  rendering a disclaimer unnecessary." In re EBS Data Processing, Inc., 212 USPQ 964, 966 (TTAB 1981).

Several factors inform the unitariness analysis: the physical connection of the potentially unregistrable component to other elements of the proposed mark by lines or other design features; the relative location of the respective elements of the proposed mark; and the significance of the terminology as used on or in connection with the goods or services. Dena v. Belvedere, 21 USPQ2d at 1052; see also TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1213.05 (July 2021).

The Board found that, in each mark, the elements "merge together in a way that conveys a unitary impression." It perceptively noted that the words MONKIE and KID are physically connected to the design of a monkey’s head. The Board was unmoved by the examining attorney’s argument that the monkey head "functions as a space" that separates those two words.

Connecting elements with a design feature tends to show unitariness. Dena v. Belvedere, 21 USPQ2d at 1052. This conclusion is bolstered by the curled tail over the letter I in KID, which gives the sense that the monkey’s body is hidden behind the word KID, with the tail peeking over the top. A similar tail design also appears at the bottom right, connected to the Chinese lettering joined to the edge of the D in the word KID and to the edge of the underlining beneath MONKIE KID and the monkey head design.

What about the fact that the words MONKIE and KID are in different colors? Again, the Board was unimpressed: "The monkey head design incorporates both red and yellow, and this color scheme, like the design itself and its placement, serves to bring the words MONKIE and KID together, reinforced by the underlining of both words and the design in alternating red and yellow. We find the elements of the mark as a whole are 'so merged together that they cannot be regarded as separate.' Dena v. Belvedere, 21 USPQ2d at 1052."

The Board concluded that the monkey-related design elements and the connection of the various features "give the impression of a 'monkey kid' creature." Consumers are likely to understand KID, and its foreign equivalent, to refer to that MONKIE KID creature. In short, "a registrable term and an unregistrable term are joined together [with design elements] so as to form a mark which has a distinct non-descriptive meaning of its own …." In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983).

And so, the Board reversed the refusals to register.

Read comments and post your comment here.

TTABlogger comment: Why precedential? What's new here? FWIW, I think the use of red for the word KID makes it stand out with a separate commercial impression.

Text Copyright John L. Welch 2022.