District Court Overturns USPTO's Genericness Refusal of SPECTACLES for "Smart Glasses"

In a 60-page Memorandum Opinion and Order, the U.S. District Court for the Central District of California reversed the USPTO's refusal to register the mark SPECTACLES [in standard character and stylized form] for "smart glasses" on the ground of genericness, but upheld the finding of mere descriptiveness. The TTAB had affirmed the refusal [TTABlogged here], leading to this Section 1071 civil action for de novo review. Applicant Snap Inc.'s claim of acquired distinctiveness failed, but the court remanded the applications to the Office "to permit supplemental registration of SPECTACLES both as a word and stylized mark." Snap Inc. v. Vidal, Case No. 2:22-cv-00085-SK (C.D. Cal. Sept. 27, 2024).

Genericness: The parties agreed that the relevant "product category" based on Snap’s applications and its product specimens is "smart glasses." The question, then, was "whether 'consumers in fact perceive' SPECTACLES 'as the name' for that product class as such or 'as a term capable of distinguishing among members of the class.'"

The court found that the USPTO’s evidence - including Snap's use of the term, linguistic evidence, competitor usage, and media usage - proved only that "spectacles" is a descriptive—not generic—term for smart glasses. Furthermore, the Office's Teflon survey suffered from at least four design flaws (discussed in detail by the court), that rendered it non-probative.

[T]he surveys’ absolute numbers of respondents who classified SPECTACLES as a generic name are not reliable enough to find empirically that relevant consumers perceive the mark as a product name for smart glasses. Those seemingly high figures obscure the respondents who sorted SPECTACLES into the “generic” column because they thought it named smart glasses from those who did so because in their minds it could just as well have described the product.

The court concluded that the Office failed to prove "by clear and convincing evidence" that the term SPECTACLES is "primarily understood by most consumers of smart glasses as a generic name for that product." Instead, the evidence establishes that those consumers overwhelmingly understand the term to be a "description of the product’s prominent eyewear form rather than a generic name for smart glasses."

Descriptiveness/Acquired Distinctiveness: The court rejected Snap's contention that the term "Spectacles" is a double entendre, or that it is merely suggestive of smart glasses. "Snap has not proven that consumers need to employ any imagination to instantaneously associate SPECTACLES with one of the most essential aspects of smart glasses—its eyewear design."

The court noted that Snap’s seven years of continuous use of the SPECTACLES mark is prima facie evidence of secondary meaning. See 15 U.S.C. § 1052(f). Likewise, the limited evidence of advertising expenditures and gross sales revenues is "superficially probative of secondary meaning, too."

The PTO does not contest Snap’s claim that it has spent tens of millions of dollars on advertising between 2016 and 2022, including with billboards, vending machines, and both print and digital advertising. * * * Nor does the PTO deny Snap’s claim that it has sold (as of trial) an estimated 300,000 units of its products, not even including SPECTACLES 4, generating more than $37 million in gross revenues

But given the highly descriptive nature of the SPECTACLES mark, the court found that "this circumstantial evidence combined still fails to meet Snap’s burden." The sales and advertising figures lacked industry context, and the raw sales figures "may only point to product popularity or rapid market gains."

Snap has not produced enough evidence to prove even by a preponderance standard that SPECTACLES carries enough secondary meaning to be included immediately on the principal register. Still, the mark can acquire such source-identifying significance if for no other reason than the term’s arcane etymology and alternative dictionary meanings. SPECTACLES should thus be eligible for supplemental registration.

Conclusion: The court remanded the applications to the USPTO "so that the agency can take the necessary actions for amendment or approval of those applications to permit supplemental registration of SPECTACLES both as a word and stylized mark."

Read comments and post your comment here.

TTABlogger comment: Several things caught my eye. First, the court annoyingly misuses "trademark" as a verb (pages 3, 5n.3, and 6). Second, the court applied a "clear and convincing" standard of proof for genericness, citing the Federal Circuit'sCordua decision. Note that last year the Board switched to a preponderance of the evidence standard. In footnote 4, the district court recognized that change but explained that "because that change was announced only after Snap filed suit here, the PTO has agreed not to dispute in this case—while preserving its right to do so in another—that it must prove genericness by clear and convincing evidence. Also note that here, the court stated that even if it applied the lower standard it would not have found genericness. See footnote 17 at page 41.

Text Copyright John L. Welch 2024.

"Sunflower in Lapel" for Legal Services Lacks Acquired Distinctiveness, Says TTAB

The Board upheld a refusal to register the mark shown below, for providing podcasts, CLE, and on-line videos in the field of intellectual property law, and for legal advisory services in the field of trademark law, on the ground that the proposed mark "fails to function as a service mark because it is nondistinctive trade dress and Applicant has not established that it has acquired distinctiveness for Applicant’s services." In re Erik M. Pelton & Associates, PLLC, Serial No. 97325462 (September 26, 2024) [not precedential] (Opinion by Judge Robert Lavache).

Applicant's mark comprises "a sunflower lapel pin uniform feature, with yellow petals forming the outside of the sunflower and a brown center outlined in black; the dotted lines in the image are not part of the mark but to show placement of the sunflower uniform feature on a suit lapel."

Applicant asserted that its proposed mark falls under the “tertium quid" rubric, and the Board agreed: the lapel pin is not applicant's product Applicant, nor is it packaging or "dressing" for goods. Therefore, "the proposed mark is best characterized as trade dress akin to product packaging for services."

The Board noted that product packaging trade dress and trade dress for services can be inherently distinctive, but here inherent distinctiveness was not at issue because Applicant sought registration under Section 2(f). Consequently, "the proposed mark’s lack of inherent distinctiveness is deemed an established fact."

Applicant faced a "heavy burden because the mark consists of a lapel pin, and the evidence of record shows what may generally be taken for granted: lapel pins, including those featuring are common accessories for professional attire in many fields, including the legal industry."

Because of the manner in which lapel pins are commonly used, consumers are predisposed to view lapel pins as ornamental accessories, so they are less likely to perceive them (particularly those featuring typically decorative elements like flowers) as indicators of source for legal services and related entertainment and educational services.

Applicant pointed to its use of the mark for at least five years, website photos, social media posts, photographs of attorneys wearing the pin, and several other items. The Board observed that "where the proposed mark is not inherently distinctive because it is comprised of common features in the relevant field or is typically used or perceived as ornamentation, length of use alone generally is not sufficient to satisfy the elevated burden of proving acquired distinctiveness."

The Board acknowledged that applicant has made some effort to use the proposed mark as a service mark, including some "look for advertising" and inclusion of the sunflower motif on business cards and applicant's website. However, the evidence fell short of satisfying applicant’s heavy burden in establishing that its proposed mark has acquired distinctiveness.

Here, we have little information to enable us to discern the scale or impact, and thus the success, of Applicant’s efforts in educating the relevant public about its proposed mark For instance , the record does not include any customer surveys or declarations from actual purchasers attesting to their association of Applicant's proposed mark with Applicant as the source of its services any specific evidence of sales figures or numbers of clients any conference attendance estimates indicating how many people may have encountered the proposed mark; any indication of the geographic reach of Applicant’s activities; or any data relating to Applicant’s website traffic, course participation or podcast listenership.

The information provided by the applicant suggested that the exposure of the proposed mark to relevant consumers as been limited, and therefore the Board affirmed the refusal to register due to lack of acquired distinctiveness.

Read comments and post your comment here.

TTABlogger comment: I sympathize with Erik. I tried to grow sunflowers this summer and they failed to acquire distinctiveness.

Text Copyright John L. Welch 2024.

Precedential No. 24: TTAB Rejects Law School Amicus Brief, Denies Partial Summary Judgment, and Tosses Out Six Affirmative Defense

In a merciless three-pronged, precedential interlocutory ruling, the Board (1) denied a law school clinic's dubious motion for leave to file an amicus brief, (2) denied Applicant Herman Jones's hopeless motion for partial summary judgment on his nonuse counterclaims, and (3) jettisoned Opposer Monster Energy's improper and ill-pled affirmative defenses. So who's the bully here? Monster Energy Company v. Herman Jones, Opposition No. 91284247 (September 23, 2024) [precedential].

Frequent TTAB litigant Monster Energy Company opposed Jones's application to register the mark MONSTER SQUAD DEL MAR (in standard characters) for "Training services in the field of Health and Wellness/fitness," claiming likelihood of confusion with, inter alia, the following two registered marks: MONSTER ARMY in standard characters, and M MONSTER ARMY & design, shown below, both for "Providing a web site featuring entertainment information and news on athletes; organizing and conducting educational programs and activities in the nature of classes, workshops, and sports competitions for athletes in the field of athlete development; athlete development program, namely, athlete training and mentoring in the field of wake, ski, surf, snowboard, motocross, mountain bike, BMX, and skate."

Jones filed counterclaims seeking partial cancellation of those two registrations (the "Counterclaimed Registrations") on the ground of nonuse prior to the expiration of the time for filing the statements of use, for all of the services except for the mentoring portion of the athletic development program. ("Contested Services").

No Amicus Brief: The George Washington University Law School Intellectual Property & Technology Law Clinic ("GWULC") filed a motion for leave to file an amicus brief, (See TBMP Section 538), contending that its proposed brief presented “arguments of law relating to trademark bullying, abusive enforcement of service mark registrations, likelihood of confusion, and public policy issues that will aid the Board in resolving this case,” and also argument based on “[uncontested] factual matters in support of Applicant.” Although the Board usually seems to bend over backwards in favor of law school clinics, this time it found the proposed brief to be "replete with partisan argument," and otherwise did not aid the Board "in resolving any 'doubtful' issues of law concerning Applicant’s motion for partial summary judgment."

The nonuse issues before us are straightforward and of the type the Board considers on a regular basis. GWULC’s proposed brief and its exhibits do not address issues of law which are not already adequately briefed by the parties. Rather, Applicant tries to paint Opposer as a bad actor – a trademark bully – that is not entitled to relief here because of the alleged bullying.

GWULC’s proposed brief also urged the Board to sua sponte issue an order to show cause for imposition of sanctions against Monster under Fed. R. Civ. P. 1119 "in the nature of 'sanction[ing Opposer] and cancel[ing] its marks.'" [Reminder: Registrations are cancelled, not marks - ed.]. The Board pointed out, however, that GWULC, as a non-party, may not move for (1) sanctions, (2) an order to show cause for the imposition of sanctions, or (3) dismissal of Opposer's opposition.

And so, the Board denied GWULC's motion.

No Partial Summary Judgment: The Board gave short shrift to Applicant Jones's motion for partial summary judgment. Jones argued that summary judgment was appropriate on his nonuse counterclaims because Monster’s "Contested Services" are “nothing more than ordinary and routine activity for the promotion of Opposer’s own products: energy drinks.” With respect to the “athlete development program, namely, athlete training . . . in the field of wake, ski, surf, snowboard, motocross, mountain bike, BMX, and skate” portion of the Contested Services, Jones argued that Monster "produced no evidence in discovery that it has ever trained athletes under the [marks of the Counterclaimed Registrations],” and the Contested Services "have never been advertised or sold."

The Board, however, found that genuine disputes of material fact exist as to whether Monster advertised and rendered the Contested Services prior to the filing of its statements of use, and also whether those services were "performed to the order of, or for the benefit of someone other than Opposer and have been qualitatively different from anything necessarily done in connection with the sale of Opposer’s goods."

No Affirmative Defenses: Monster offered six purported affirmative defenses to Jones's counterclaims, accompanied with a "reservation of right" to identify additional affirmative defenses at a later date. None of that survived.

Monster's first affirmative defense - failure to state a claim - was tossed out because failure to state a claim is not an affirmative defense. Likewise, Monster's attempted "reservation of right" is never allowed, since it fails to give the adversary fair notice of anything.

Monster's second and third defenses - laches and acquiescence - were based on Jones's failure to challenge the registrations while Monster has used the mark in 2005. However, a cancellation claim concerns registration of a mark, not use, and so Monster's allegations based on use were insufficient to support these defenses. Moreover, Monster failed to allege any damage resulting from the purported delay or any underlying facts regarding Jones's actions or omissions.

The fourth defense - unclean hands based on Jones's "fraudulently" alleging priority - failed to meet the heightened pleading requirement of FRCP 9(b). As to the fifth defense - equitable estoppel - Monster failed to allege any misleading conduct on the part that reasonably led Monster to infer that Jones would not assert a counterclaim, nor did Monster allege that it relied on any such conduct, causing material prejudice. Finally, with respect to Monster’s sixth affirmative defense - waiver - Monster failed to plead that Jones intentionally relinquished or abandoned his known rights.

Read comments and post your comment here.

TTABlogger comment: Maybe this is a good case for teaching law students some of the things not to do in a TTAB proceeding. TTABlog Tip: a good way to get rid of bogus affirmative defenses right off the bat is to ask for Board participation in the discovery/settlement conference, whereby the Board participant will review the pleadings and, in my experience, knock out unbaked affirmative defenses.

Text Copyright John L. Welch 2024.

TTABlog Quarterly Index: July - September 2024

E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. Please report any broken or inoperative links, as well as any errors and omissions, to the TTABlogger at jwelch at wolfgreenfield.com.

Section 2(a) - Deceptiveness:

• TTABlog Test: Is LEATHER MAN LTD & Design Deceptive for Belts Not Made of Leather? [No]

Section 2(c) - Consent of Living Individual

• TTAB Affirms Section 2(c) Refusal of TRUMPINOCCHIO for Shirts due to lack of Consent by ... Guess Who?

Section 2(d) - Likelihood of Confusion:

• TTABlog Test: Are these two "I * NY" Confusable for Backpacks and Clothing?
• TTABlog Test: How Did These Three Section 2(d) Appeals Turn Out?
• TTAB Dismisses Section 2(d) Opposition to NOMAD for Barbecue Grills due to Lack of Proof of Relatedness with Electronic Goods
• TTABlog Test: Is KID CHRISTIAN for Sweatshirts Confusable with CHRISTIAN for Wrestling Entertainment Services? [Yes]
• TTAB Renders Split Decision in MRS. CLAUS Section 2(d) Appeal
• TTABlog Test: Which of these Three Section 2(d) Refusals Was/Were Reversed?
• TTABlog Test: Which of these Three Section 2(d) Refusals Was/Were Reversed?
• TTABlog Test: Is "ACUITI" Confusable with "QIACUITY" for Medical Testing Services? [Yes]
• TTABlog Test: Are Mascara and Clothing Related for Section 2(d) Purposes? [Yes]
• TTAB Reverses Section 2(d) Refusal of OCTAVE for Mental Health Services Due to Ambiguity in Cited Registration
• TTABlog Test: Is UGLY DOG SALOON for Restaurant and Bar Services Confusable with UGLY DOG for Distilled Spirits? [Yes]
• TTABlog Test: Is "LIP TAR" Confusable with "THE LIP BAR" for Lip Gloss? [Yes]
• EAGLE PARK DISTILLING for Alcoholic Beverages Not Confusable with EAGLE RARE for Bourbon Whiskey, Says TTAB
• TTAB Reverses Section 2(d) Refusal of "LendingOne & Design" Over LENDERS ONE Due to Differences in Mortgage Lending Services
• TTAB Reverses Section 2(d) Refusal of NAMASTE COUTURE BY APRIL STOLF over NAMASTE for Jewelry
• Precedential No. 20: Supplemental Registration for PERMITS.COM Cancelled by Prior User of PERMIT.COM Despite No Acquired Distinctiveness
• TTABlog Test: Three Recent Section 2(d) Appeals - Outcome?
• Precedential No. 19: Red-White-and-Blue Mark Not Confusable with Red-Top Mark for Fence Posts, Says TTAB

• Precedential No. 18 (Part II): TTAB Grants Petition to Cancel BLOOKE Registration for Bicycles
• TTABlog Test: Which of These Section 2(d) Refusals Was/Were Reversed?
• With Amended First Use Date, RESORT WEAR SEASPICE Registration Survives Section 2(d) Attack
• Sustaining Opposition, TTAB Finds RYDE OUT Confusable with RYDE for Supplements and Energy Drinks
• TTAB Sustains Nike's Opposition to "4IR", Finding Confusion Likely with "AIR" For Shirts
• TTAB Easily Finds TREEBNB Confusable with AIRBNB for Temporary Housing Services
• TTABlog Test: How Did These Three Section 2(d) Likelihood of Confusion Appeals Turn Out?
• Precedential No. 15: TTAB Affirms Section 2(d) Refusal of UPC for Computer Components, Rejecting "Something More" Requirement When Only Goods are Involved
• TTAB Sustains Instagram's 2(d) Opposition to INSTASIZE for Photo Editing Software
• TTABlog Test: Three Recent Section 2(d) Appeals For Your Consideration

Section 2(e)(1) - Mere Descriptiveness:

• TTABlog Test: Is BRAINCARE Merely Descriptive of Goods and Services Related to Analysis of Brain Waves? [Yes]
• TTAB Finds SOLAR CONCIERGE Merely Descriptive of, and Lacking Acquired Distinctiveness for, ..... Guess What?
• TTABlog Test: Is WHOLESALEHOME Merely Descriptive of Dusting Cloths?
• TTABlog Test: Must "DAILY" be Disclaimed in DAILY MIND for Mental Health Services
• TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?
• Precedential No. 13: TTAB Reverses Requirement to Disclaim "ARCHITECT" in KORN FERRY ARCHITECT for HR Services

Section 2(e)(2) - Primarily Geographically Descriptive:

• TTABlog Test: Is AMERICAN CLOUD Primarily Geographically Descriptive of Cloud-Based Computer Services? [Yes]

Section 2(e)(4) - Primarily Merely a Surname:

• TTABlog Test: Is "SIMON FAMILY WINES" Primarily Merely a Surname for Wines? [Yes]

Failure-to-Function:

• "A CHANCE TO LIVE LONGER" Fails to Function as a Source Indicator for Medical Information, Says TTAB

Fraud:

• Precedential No. 18 (Part I): Fraud! TTAB Grants Petition to Cancel BLOOKE Registration for Bicycles
• Cleveland Guardians Attack CLEVELAND SPIDERS for Clothing: Summary Judgment Motion Fails on Fraud, Succeeds in Part on Nonuse
• TTAB Says Chutter Still Good Law: Reckless Disregard in Obtaining or Maintaining a Registration is Enough for Fraud

Genericness:

• TTAB Finds LOTERIA Generic for Gaming Machines

Use/Nonuse/Specimen of Use:

• Precedential No. 18 (Part II): TTAB Grants Petition to Cancel BLOOKE Registration for Bicycles - Nonuse
• TTAB Dismisses REEFER MAN Opposition Due to Unlawfulness of Opposer's Pleaded Applications
• Precedential No. 17: TTAB Rules that Retail Offering of One's Own Goods Qualifies as a "Service" Under the Trademark Act
• Precedential No. 16: "GABBY'S TABLE" Specimen Fails to Show Use of Mark for Recited On-Line Store Services
• Cleveland Guardians Attack CLEVELAND SPIDERS for Clothing: Summary Judgment Motion Fails on Fraud, Succeeds in Part on Nonuse
• https://thettablog.blogspot.com/2024/07/precedential-no-14-ttab-affirms-two.html

Discovery/Evidence/Procedure:

• Precedential No. 23: TTAB Refuses to Grant Partial Summary Judgment Against Applicant Who Doesn't Own the Mark
• Precedential No. 22: Failure to Respond to Requests for Admissions Leads to Cancelled Registration
• Precedential No. 21: TTAB Grants Motion to Bifurcate VELCRO Cancellation into two Phases

CAFC:

• TTABlog Test: Are These Design/Stylized Marks for Clothing and Purses Confusable?
• CAFC Tosses Out TTAB's Dismissal of COGNAC Opposition Due to Flawed Application of the DuPont Factors to a Certification Mark
• CAFC Affirms TTAB in Genericness Refusal of MODULAR GABION SYSTEMS for . . . . Guess What?

Recommended Reading:

• Recommended Reading: Prof. Michael Grynberg, "Trademarks as Comics"
• Recommended Reading: The Trademark Reporter, July-August 2024 Issue

Other:

• TTAB Posts October 2024 Hearing Schedule
• TTAB Posts September 2024 Hearing Schedule
• (Corrected) Current Roster of TTAB Administrative Trademark Judges
• Three Administrative Trademark Judges Added to TTAB Roste
• TTAB Posts August 2024 Hearing Schedule
• Three Administrative Trademark Judges Added to TTAB Roster
• TTAB Posts July 2024 Hearing Schedule

Text © John L. Welch 2024.

TTAB Posts October 2024 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled three (III) oral hearings for the month of October 2024. As indicated below, two of the hearings will be held virtually and the third will be in-person at the USPTO's Madison East Building in Alexandria, Virginia. Briefs and other papers for each case may be found at TTABVUE via the links provided.

October 1, 2024 - 10 AM [Virtual]: Morris Bart, III and Morris Bart, LLC v. Laborde Earles Law Firm, LLC, Serial No. 97325462 [Opposition to registration of ON MY SIDE for legal services, in view of opposer's registered mark I’M ON YOUR SIDE for legal services.]

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October 3, 2024 - 2 PM [In person]: Garan Services Corp. v. Jesus Villa, Cancellation No. 92074777 [Petition for cancellation of a registration for the mark HALFANIMAL for "Beanies; Hats; Pants; Shorts; Sweat pants; Sweat shirts; Sweat shorts; Sweat suits; T-shirts; Wind resistant jackets" on the grounds of abandonment and false suggestion of a connection with Petitioner Garan (under Section 2(a)).]

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October 3, 2024 - 12 PM [Virtual]: Right Connection, Inc. v. Desirous Parties Unlimited, Inc., Opposition Nos. 91282220 [Opposition to registration of the mark TRYST for "Entertainment services in the nature of hosting social entertainment events; Arranging and conducting nightclub entertainment events; Arranging, organizing, conducting, and hosting social entertainment events" on the grounds of fraud and nonownership.]

Read comments and post your comment here.

TTABlog comment:  Any predictions? 

Text Copyright John L. Welch 2024.

TTABlog Test: Are these two "I * NY" Confusable for Backpacks and Clothing?

The USPTO refused to register the mark shown below left, for "Back packs; fanny packs; tote bags" and for "“Clothing, namely, aprons, t-shirts, sweatshirts, and hats," finding confusion likely with the registered mark shown below right, for, inter alia, backpacks and t-shirts. The goods are in-part identical and those goods presumably travel in the same trade channels to the same classes of consumers. But what about the marks? How do you think this appeal came out? In re Damselfly Global LLC, Serial No. 97669661 (September 23, 2024) [not precedential] (Opinion by Judge Mark Lebow).

The Board began with a consideration of the strength of the cited mark, noting that in an ex parte appeal the strength of the cited mark “is normally treated as neutral because the record generally includes no evidence as to fame.” However, applicant itself provided some evidence that registrant’s mark is commercially strong.

Applicant argues . . . that “consumers are likely to pronounce [Registrant’s] I LOVE NY Marks [as I LOVE NEW YORK] because that’s how the extremely popular and widespread marketing campaign pronounces, and has always pronounced, the I LOVE NY Marks.” Applicant thus affirmatively acknowledges an “extremely popular and widespread marketing campaign” supporting the cited mark.

As to the inherent strength of the cited mark, applicant provided third-party registration evidence that  suggested that "the “I ♥” format is often registered, but with additional elements that were considered to have distinguished them overall." However, there was no evidence regarding use of those marks. 

In sum, we find that the frequent registration of marks containing an “I ♥” format shows that these sorts of affinity marks are somewhat weak conceptually, and that Registrant’s particular mark reflecting affinity with New York thus has some commercial weakness. *** We also account for Applicant’s acknowledgement that Registrant’s mark has some commercial strength.

Turning to the marks, the Board found no dominant element in either mark. "They are both unitary in nature, conveying a single and distinct commercial impression that is distinct from the constituent words “I” and “NY” that they contain."

The Board acknowledged that there may be some difference in sound, but "given the structure and contents of the mark, and the fact that flowers are often associated with love, pronouncing the mark as 'I LOVE NEW YORK' is at least as reasonable as pronouncing it as 'I FLOWER NEW YORK' or 'I ROSE NEW YORK.'" [FWIW: I think I would pronounce it as I LOVE FLOWERS IN NEW YORK - ed.]

The Board found the connotations and commercial impressions of the marks to be similar in that they are "presented in the same structure and use a design element to convey a message about affinity with New York. Just as Registrant depicts the heart in different colors to add to the message, the flower could be seen as an extension of the message, or simply a variant of Registrant’s mark."

The Board concluded that, "notwithstanding the small visual differences resulting from the substitution of a flower design for a heart design, the overall appearance, sound, connotation and commercial impression of the marks are far more similar than dissimilar."

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: What if the you replaced the flower design with the N.Y. Mets logo?

Text Copyright John L. Welch 2024.

TTABlog Test: Is AMERICAN CLOUD Primarily Geographically Descriptive of Cloud-Based Computer Services?

The USPTO refused to register the proposed mark AMERICAN CLOUD (in standard character form) for various cloud-based computer services [CLOUD disclaimed], finding the mark to be primarily geographically descriptive under Section 2(e)(2). Applicant acknowledged that its services originate in the United States but argued that the primary significance of the term AMERICAN is not geographic because it "shows [Applicant’s] commitment to 'American' values dealing with freedom, innovation and persistence." And it pointed to other Board and court decisions that it contended should have been taken into account. How do you think this appeal came out? In re American Cloud, LLC, Serial Nos. 97582004 & 97582005 (September 19, 2024) [not precedential] (Opinion by Judge Thomas L. Casagrande).

For a mark to be deemed primarily geographically descriptive under Section 2(e)(2), it must be shown that (1) the mark's primary significance is a generally known geographic location; (2) the goods or services do originate in that place; and (3) the relevant public would be likely to make a goods/place association - that is, would be likely to believe that the goods or services originate in the place named in the mark. A presumption that the third element―the goods/place or services/place association―is satisfied arises when the named place is neither obscure or remote, the primary significance of the term is geographic, and the goods or services originate in the named place.

Examining Attorney George Pelletier II submitted dictionary definitions of "American:" e.g., "[o]f or relating to the United States of America or its people, language, or culture." Applicant, pointing to statements at its website, insisted that it primarily uses "American" in a non-geographic way because it “shows [Applicant’s] commitment to ‘American’ values dealing with freedom, innovation and persistence." The Board was unimpressed: "we fail to see how these vague laudatory statements detract from the primary geographic significance of the term 'AMERICAN' in the proposed mark AMERICAN CLOUD." Furthermore, applicant displays the mark adjacent a stylized version of the American flag (see above) with the stars replaced by a cloud design. "This flag logo reinforces the geographic significance of the term 'AMERICAN' in Applicant’s proposed mark."

Because America is a universally-known place, the primary significance of the term “AMERICAN” in this case is geographic, and Applicant’s services are rendered in America, the Examining Attorney appropriately presumed that consumers will make the services/place association.

Applicant mainly relied on Board and court decisions involving other marks, for other goods or services, based on other evidentiary records. Again, the Board was unimpressed. It observed that the question at hand, "like so many factual questions in trademark law, concerns consumer perception," and in answering that question the Board "depend[s] on evidence that bears on how consumers would perceive the mark at issue in connection with the goods or services at issue."

Findings in other cases concerning other marks, other goods or services, and on different evidence―some made decades ago―have no bearing on what findings we make on the evidence in this case concerning this mark and these services

The Board concluded that the examining attorney "applied the governing principles correctly," and it therefore found "Applicant’s 'other cases' argument entirely unconvincing."

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Is this an American WYHA?

Text Copyright John L. Welch 2024.

Recommended Reading: Prof. Michael Grynberg, "Trademarks as Comics"

Michael Grynberg is a professor of law at Depaul College of Law in Chicago, where he focuses on intellectual property. He also likes comic books and comic strips. Putting those two interests together, he created a graphic "article" called "Trademarks as Comics," in which, among other things, he seeks to answer the question, "what can sequential art teach trademark law?" The article may be downloaded here.

Read comments and post your comment here.

Precedential No. 23: TTAB Refuses to Grant Partial Summary Judgment Against Applicant Who Doesn't Own the Mark

In this opposition to registration of the mark VICE REI for "Wine; Spirits; Liqueurs; Anise liqueur," the Board denied Opposer Alfred Sarmento's motion for partial summary judgment grounded on non-ownership of the International Registration on which the opposed application was based. WIPO had cancelled the International Registration after the Portuguese Trademark Office ruled that Applicant Maria Manuela Pinho de Carvalho did not own the mark. Nevertheless, the Board gave its blessing to the transformation of the U.S. request for extension of protection into a national application with a Section 1(b) intent-to-use basis. Alfred Sarmento v. Maria Manuela Pinho de Carvalho, Opposition No. 91281917 (September 20, 2024) [precedential].

Sarmento (who is now the owner of the Portuguese registration) opposed Carvalho's application on four grounds: likelihood of confusion, non-ownership, and lack of bona fide intent, and on the purported ground that the application was void ab initio under Section 70(c) of the Trademark Act and Article 9quinquies of the Madrid Protocol based on an allegedly improper transformation from an extension of protection. He filed the subject motion for partial summary judgment on the non-ownership and the improper transformation claims.

Improper Transformation: The Board observed that Applicant Carvalho properly followed the procedures for transformation of a request for extension of protection under Section 70(c) of the Lanham Act, and it then held that Sarmento's contention that the mark was improperly transformed "cannot form the basis of an inter partes challenge to the registrability of the mark."

The Office’s Madrid Processing Unit (MPU) is charged with processing a request for transformation. Processing a request for transformation is a ministerial act, and there is no substantive examination of the document(s) or the permissibility of the circumstances that prompted the request for transformation. This processing does not include a decision on the legal sufficiency or the legal effect of the document(s) offered for the MPU’s consideration.

The Board therefore stuck this claim from the notice of opposition.

Non-ownership: The challenged application is based on Carvalho's alleged bona fide intent to use the mark in commerce under Section 1(b). There is no statutory requirement that a Section 1(b) applicant be the owner of the mark at the time of filing. The applicant must aver only that it believes itself (himself) to be entitled to use the mark in commerce and has a bona fide intention to do so. "Therefore, a claim that Applicant was not the rightful 'owner' of the mark as of the effective filing date of the involved intent-to-use application is not available." See Hole In 1 Drinks, Inc. v. Michael Lajtay, 2020 USPQ2d 10020, at *5 (citing Norris v. PAVE: Promoting Awareness, Victim Empowerment, 2019 USPQ2d 370880, at *4 (TTAB 2019)).

And so, the Board also struck this claim from the notice of opposition.

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TTABlogger comment: Something seems askew here. Carvalho had no right to obtain the IR in the first place. Why should she have the right to pursue a Section 66(a) application (and then transform it) based on that dead letter?

Text Copyright John L. Welch 2024.

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

The TTAB affirmance rate for Section 2(d) appeals is running at 90% so far this year. Here are three recent decisions. How do you think they came out? No hint this time.

In re Casa Bonita Foods Inc., Serial No. 97497611 (September 19, 2024) [not precedential] (Opinion by Judge Cindy B. Greenbaum). [Section 2(d) refusal of the mark CASA BONITA for "Tortillas; Corn-based snack foods; Tortilla chips; Tortilla shells" in view of the identical mark registered for "restaurant services."]

In re Silgan Containers LLC, Serial Nos. 97016113 and 97016116 (September 20, 2024) [not precedential] (Opinion by Judge Mark Lebow) [Section 2(d) refusals of the marks CHILL-CUP and CHILL-CUPS for "Disposable metal cups; cups; mugs; bottles, sold empty; drinking glasses; water bottles sold empty; insulated beverage containers; drinking bottles for sports" in view of the registered mark CHILL CUPS (Stylized, as shown on the specimen of use) for "cork coasters."]

In re Summer Soles, LLC, Serial No. 97287607 (September 20, 2024) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Section 2(d) refusal of the mark FIELDS OF GREEN for "Facial moisturizers containing matcha" in view of the identical mark registered for "nutritional supplement containing barley green."]

Read comments and post your comment here.

TTABlogger comment: See any WYHA?s?

Text Copyright John L. Welch 2024.

TTAB Dismisses Section 2(d) Opposition to NOMAD for Barbecue Grills due to Lack of Proof of Relatedness with Electronic Goods

The Board dismissed this opposition to registration of the mark NOMAD in the form shown below, for "barbecue grills," concluding that, although the marks are "very similar," opposer failed to prove likelihood of confusion with its mark NOMAD in standard characters for a variety of goods, including power cables, battery chargers, watch bands, wallets, mouse pads, and key chains (but not for barbecue grills). Nomad Goods, Inc. v. Nomad Grill LLC, Opposition No. 91273170 (September 18, 2024) [not precedential] (Opinion by Judge Thomas L. Casagrande).

The Goods: The Board noted that not one of opposer’s registrations identifies barbecue grills, and opposer’s CEO acknowledged that it “does not now sell barbe[c]ue grills.” But "the parties’ goods don’t have to be identical or competing for this factor to weigh in favor of a conclusion that confusion is likely."

Opposer did not argue that the goods are identical or competing, but contended that barbecue grills are related to the goods in the registrations of record. One way a party may show that non-competing goods are related is by showing that the goods are “intrinsically related.” Opposer, however, did not claim any inherent or intrinsic relationship between barbecue grills and the goods identified in its registrations (which are largely electronics-focused but include watch bands and wallets). Nor did the Board see one.

Nonetheless, consumers may still perceive the goods to be related if “the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.” One way to show relatedness this way is to submit “advertisements showing that the relevant goods are advertised together … by the same manufacturer or dealer.” Another way is to show that third parties have registered, or use, the same mark for both types of goods.

Opposer did not provide evidence that any third-party uses the same mark for both barbecue grills and any of the goods listed in its registrations. However, opposer did provide two third-party registrations that identify both barbecue grills and one or more of the goods identified in Opposer’s registrations, namely, watch bands & straps, or electrical cables for use in connections, or USB cables for cellphones and wireless chargers.

This is a paltry foundation upon which to construct an argument that any of the goods in Opposer’s registrations are related to barbecue grills. We find that Opposer has not proved that barbecue grills are related to any of the goods in the five NOMAD registrations owned by Opposer that are properly of record.

Opposer also argued that barbecue grills “would be a natural expansion for Opposer,” but the Board had no difficulty rejecting this conclusory argument. "Opposer directs us to nothing other than its COO’s say-so that expanding from portable electronics chargers, connectors, and accessories would be natural. This is patently insufficient." For example, opposer points to nothing about the technology required to execute the required expansion. Moreover, the nature and purpose of barbecue grills is to cook food, a nature and purpose shared by none of opposer’s goods. And opposer’s third-party registrations "give little indication that any others have expanded in that way."

Reviewing Opposer’s meager showing, as noted above, we have no difficulty on this record finding that barbecue grills would not fall within the zone of natural expansion of an entity selling the sorts of goods reflected in Opposer’s registrations.

Strength of Opposer's Marks: Opposer emphasized how its website advertising targets people with "mobile lifestyle[s]" and its ads link its products to many kinds of outdoor activities. With regard to inherent strength, the Board found that "[i]n view of the products identified in the registrations of record and the way Opposer presents them to the public, Opposer’s NOMAD mark is suggestive."

As to commercial strength, Opposer provided no sales data, no advertising data, no market share or brand awareness data, no evidence of licensing activity, and no evidence of third-party awareness of the mark. Thus, opposer failed to prove "any significant degree of commercial strength."

To summarize our findings on the fifth and sixth factors, Opposer’s mark, which we find to be suggestive, possesses the conceptual strength of any mark registered without a required showing of acquired distinctiveness. In other words, it’s conceptually stronger than a descriptive term that acquired distinctiveness, but conceptually weaker than an arbitrary mark. However, we have found that Opposer has failed to prove any degree of commercial strength. For its part, Applicant has not shown that significant third-party registration and/or use of NOMAD in the relevant market decreases the level of strength we otherwise would attribute to Opposer’s mark.

Conclusion: The Board found that the marks are nearly identical, but the goods are unrelated, and these two factors "ordinarily are the weightiest ones." Many factors were neutral: purchaser sophistication, the strength of Opposer’s mark, the lack of evidence of actual instances of consumer confusion, Applicant’s intent, and the parties’ consent agreements with third parties. The other factors weighing in favor of opposer were the trade channels and classes of customers, which overlap "to some indeterminate degree."

If we were merely counting beans, Opposer has more factors than Applicant. But we are convinced that the goods at issue here, as set forth in the registrations of record and the application, are so far apart that, notwithstanding the near identity of the marks, consumers are unlikely to be confused.

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TTABlogger comment:  Judge Casagrande's typically down-to-earth discussion of the strength of opposer's mark and of the relatedness of the goods makes this opinion worth a read.

Text Copyright John L. Welch 2024.