TTABlog Test: Is BOOTYMAXX for Vitamins Confusable WIth BOOTYMAXTV for Non-Pornographic Videos?

Chris Combs opposed Willie Sonley's application to register BOOTYMAXX for "vitamins," claiming a likelihood of confusion with his previously used common law mark BOOTYMAXTV for "non-pornographic videos of women shaking and moving their derrieres (‘booty’)." Although Opposer Combs failed to establish standing, the Board went on to consider the likelihood of confusion issue anyway. Here's the question for you: who kicked whose butt on the Section 2(d) issue? Chris Combs v. Willie Sonley, Opposition No. 91235814 (March 31, 2020) [not precedential] (Opinion by Judge Marc A. Bergsman).

Standing: To prove his standing, Opposer Combs had to show that he had a "real interest" in the proceeding and a "reasonable" basis for its belief of damage. Combs argued that he had a real interest and personal stake in the proceeding because he demonstrated prior use of a similar mark. Not enough, said the Board. Combs failed to prove that he has a reasonable belief that the registration of Applicant’s mark will damage him.

Opposer did not prove that [he] filed an application for BOOTYMAX or BOOTYMAXTV and the USPTO refused to register Opposer’s mark because of Applicant’s application, nor did Opposer testify that he believed that there is a likelihood of confusion between the parties’ marks when used on or in connection with the respective goods and services. It is not enough that Opposer plead that the registration of Applicant’s mark will damage Opposer, Opposer must prove that he believes the registration of Applicant’s mark will damage Opposer.

Therefore the Board dismissed the opposition.

Likelihood of Confusion: For purposes of completeness, the Board went on to consider the issues of likelihood of confusion and priority. Applicant did not submit any evidence or testimony, but he could rely on his filing date as his constructive first use date. Opposer Combs testified that he "uses and has utilized the name 'BOOTYMAX' as part of [his] BOOTYMAXTV website to identify [his] business name for the services [he] offers on [his] website currently and at least as early as August 31, 2010." He supported his testimony with website screenshots displaying the mark BOOTYMAXTV prior to the filing date of Applicant’s application. The Board found that Combs had priority of use for the mark BOOTYMAXTV for "non-pornographic videos of women shaking and moving their derrieres (‘booty’)."

As to the marks, the Board found them similar in appearance, sound, connotation and commercial impression. The extra X in applicant's mark is not likely to be noticed by consumers. As to opposer's mark, the term "TV" is highly suggestive of posting videos, and so consumers are likely to focus on the term BOOTYMAX.

As the goods and services, there was "no testimony or other evidence proving vitamins and posting videos of women’s derrieres are related." Opposer Combs argued that Applicant Salley’s website offers “Natural Butt Enhancements Supplements” as “cream and pills ‘to tone, lift and enhance your booty,’” with marketing materials that associate the goods with “get[ting] a bigger butt.” However, opposer did not authenticate that Salley is the owner of the website, and even if he were, Combs "did not prove that consumers would associate the source of vitamins specializing in enhancing one’s butt with the source of online videos featuring women’s derrieres." In short, "[i]t is simply not enough to argue that Applicant’s vitamins and Opposer’s videos involve women’s derrieres."

Opposer Combs provided no testimony or evidence regarding channels of trade or classes of consumers, and so these du Pont factors favored applicant.

The Board concluded that applicant's mark BOOTYMAXX for vitamins is not likely to cause source confusion vis-a-vis opposer's mark BOOTYMAXTV for "nonpornographic videos of women shaking and moving their derrieres (‘booty’)."

Read comments and post your comment here.

TTABlog comment: I think Combs had standing, though he wound up on his booty. The Board said that Combs didn't prove his belief that he would be damaged by registration of BOOTYMAXX. How does one prove what one believes other than by saying so? Isn't the question whether Combs's belief was reasonable, not whether he had the belief?

Text Copyright John L. Welch 2020.

Reversing Section 2(e)(1) Refusal, TTAB Finds "MINKY COUTURE" Has Acquired Distinctiveness for Blankets

The Board reversed a Section 2(e)(1) refusal to register mark MINKY COUTURE for "Baby
blankets; Bed blankets; Children’s blankets, all made using minky fabric" [MINKY disclaimed], finding that the mark had acquired distinctiveness under Section 2(f). The Board agreed with the examining attorney that the mark is merely descriptive of the goods but, applying the Section 2(f) factors of In re Virtual Indep. Paralegals, it concluded that applicant provided "sufficient circumstantial evidence of acquired distinctiveness despite the absence of direct evidence of consumer recognition." In re Minky Couture, Serial No. 87589711 (April 2, 2020) [not precedential] (Opinion by Judge Frances Wolfson).

Evidentiary issues: In connection with its 2(f) claim, applicant included in its brief a quotation from a law review article, and claimed that 'social media followings and 'likes' are distinguishable from ordinary website visits as they require additional action on the part of a customer or potential  customer." The Board refused to consider the "evidence" because applicant provided only a hyperlink to the article, and furthermore because the "submission" was untimely. 

The Board also refused to take judicial notice of the article, or of applicant's assertion of a difference between social media sites and websites.

[A]lthough we may agree that “social media followings and likes” require affirmation action on the part of the viewer, we are not convinced that simply because someone follows or “likes” a social media platform, they are a potential consumer, or that such actions are inherently different from ordinary website visits where users take additional action to pursue their interest in the advertised goods or services. We also point out that the number of likes or followers should be put into context, and that user comments appearing on an applicant’s social media sites may provide insight into consumers’ perceptions of the mark.

Mere Descriptiveness: Applicant maintained that "couture" is not descriptive of its goods, since the term used as a noun is defined in Dictionary.com as "the occupation of a couturier; dressmaking and designing." The examining attorney relied on the definition of "couture" as an adjective, meaning "being, having, or suggesting the style, quality, etc., of a fashion designer; very fashionable." The Board found that, based on these definitions alone, “couture” would not be perceived as descriptive of  baby, bed, and children’s blankets, since they are not clothing or related articles. The Board did not stop there, however.

The examining attorney submitted three third-party registrations for marks containing the term "couture," registered for, inter alia, "bed blankets" wherein the term “couture” has been disclaimed. (JUICY COUTURE (Reg. No. 3941099); SUITE COUTURE (Reg. No. 4114112); and CUDDLE COUTURE (Reg. No. 4502516)). Furthermore, she also submitted excerpts from six websites where the word is used descriptively in connection with blankets, and six on-line retailers with "couture" in their company names, selling blankets. The term is used to describe the products as being of a fashionable quality and characteristic.

The Board concluded that "[t]he evidence supports a finding that Applicant’s mark MINKY COUTURE immediately informs the consumer that the goods are made from minky fabric and have a fashionable quality, and therefore is merely descriptive."

Acquired Distinctiveness: The Board was first required to determine the degree of descriptiveness of the mark because the more descriptive the mark, the more evidence required to establish acquired distinctiveness. See, e.g., Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1048 (Fed. Cir. 2018) ("[H]igher levels of descriptiveness require a more substantial showing of acquired distinctiveness."). The Board concluded, with little explanation, that MINKY COUTURE is not "highly descriptive" and so an elevated showing of acquired distinctiveness is not required.

Applicant's evidence established use of the mark since June 2010, with sales increasing from $500k per year to $15M, with five retails stores in Utah, and with a retail website. Applicant's goods are sold in third-party boutiques and it has partnered with other companies in promotional drives. Sales have exceeded one million units. Advertising included direct mail, radio broadcasting, television advertising (including 83 NFL games) and highway billboards. Applicant has more than 100,000 Facebook "likes" and more than 100,000 "followers." Its Instagram account has more than 85,000 followers

The Board considered the Section 2(f) factors set forth in Virtual Indepenedent Paralegals, as follows:

• Factor One – There is no direct evidence of consumer recognition such as consumer surveys, customer declarations, or posts from Facebook or other social media expressing a potential or actual customer’s perception as to the source of “minky couture” blankets.

• Factor Two - Applicant has been in business for nearly a decade, selling blankets under the mark, and Applicant’s use is substantially exclusive. On the other hand, a number of third parties also use the term “couture” to describe their business as being one selling designer or highly fashionable blankets or bedding. 

• Factor Three - Applicant’s advertising has been multi-leveled. Applicant utilizes social media as well as traditional forms such as print, radio and television broadcasting, but also more unusual avenues such as billboard advertising and partner promotions using Applicant’s blankets as sales incentives. 

• Factor Four - Sales have been steadily increasing and reached approximately $15 million in 2018. Although the record does not contain specific customer numbers, the number of blankets sold averages 7,000 per year, with the average price of a blanket being about $100. 

• Factor Five - There is no evidence of intentional copying.

• Factor Six - A modest amount of unsolicited media coverage has been produced. Applicant’s founder/owner was recognized as a regional “Entrepreneur of the Year” and she has been interviewed in the news, where Applicant’s product embodying the mark was publicized.

Conclusion: The Board concluded that applicant provided sufficient circumstantial evidence that, despite the absence of direct evidence of consumer recognition, established acquired distinctiveness. And so the Board reversed the refusal.

Read comments and post your comment here.

TTABlog comment: Strangely, the Board cites Virtual Independent Paralegals for the six considerations under Section 2(f), but in that case the applicant relied only on its use of the proposed mark for five years and submitted no other evidence of acquired distinctiveness. That case did, however, recite the six factors, citing In re Snowizard, Inc., 129 USPQ2d 1001, 1005 (TTAB 2018) (quoting Converse, Inc. v. Int’l Trade Comm’n, 907 F.3d 1361, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018)).

Text Copyright John L. Welch 2020.

TTABlog Test: Is "ARTIZEN" Merely Descriptive of Essential Oils?

The USPTO issued a Section 2(e)(1) refusal of the mark ARTIZEN, in standard character and stylized form, finding it to be merely descriptive of essential oils and related products. On appeal, applicant argued that ARTIZEN has a double meaning, that consumers will see the play on the word "zen," and therefore that the mark creates "a suggestive significance and separate and distinct commercial impression" such that any descriptive significance is lost. How do you think this came out? In re Choice Traders LLC, Serial Nos. 87770413 and 87950215 (March 31, 2020) [not precedential] (Opinion by Judge David K. Heasley).

The Board observed that essential oils are "essential" not because they are necessary, but because they carry the fragrance or "essence" of the plants from which they are extracted. The examining attorney maintained that because the extraction and distillation of these oils requires skilled handiwork by artisans, the oils are commonly described in the marketplace as "artisanal" or "artisan." She submitted a number of Internet examples of use of the phrase "artisan essential oils." The examining attorney further argued that applicant's misspelling of "artisan" does not eliminate its descriptive nature.

Applicant maintained that its ARTIZEN mark is an inventive and incongruous play on words that projects more than one meaning. "While consumers may pronounce 'ARTIZEN' in a way that sounds similar to 'ARTISAN' they will also see the play on word (sic) with the addition of 'ZEN' instead of 'SAN.'" ***  "Accordingly, the double meaning of the mark ARTIZEN as a whole creates a suggestive significance and separate and distinct commercial impression apart from the mark sounding similar to 'ARTISAN' such that any descriptive significance of the mark is lost."

The Board observed that "a novel spelling does not overcome evidence of mere descriptiveness if purchasers would perceive the different spelling as the equivalent of the descriptive term." The issue, then, was whether relevant purchaser "would tend to perceive ARTIZEN as simply a misspelling of 'artisan,' or as more than simply a misspelling, conveying a different, suggestive commercial impression."

Finding this to be a close case, the Board sided with applicant.

The marks do not immediately describe any specific characteristic or feature of Applicant’s goods. Consumers are not likely to perceive ARTIZEN, as used in connection with Applicant’s goods, as just a misspelling, but rather as a play on words—suggesting that its essential oils, if used in aromatherapy or other uses, will evoke a zenlike feeling of calm relaxation.

The Board likened this case to the MufFuns (stylized) and THE FARMACY cases, each of which involved a play on words. "As with 'THE FARMACY,' Applicant's marks are inventive and just clever enough, being an obvious play on “artisan” and “zen.” As with 'MUFFUNS,' Applicant's marks suggest the zenlike calm and relaxation one can attain from its redolent essential oils."

Conclusion: The Board therefore reversed the refusal to register

Read comments and post your comment here.

TTABlog comment: Was the second meaning obvious to you? It wasn't to me.

Text Copyright John L. Welch 2020.

Precedential No. 14: On Remand from CAFC, TTAB Considers 8th DuPont Factor, Affirms Section 2(d) Refusal of GUILD MORTGAGE COMPANY

On remand from the U.S. Court of Appeals for the Federal Circuit, the Board again affirmed a Section 2(d) refusal to register the mark GUILD MORTGAGE COMPANY & Design for "mortgage banking services, namely, origination, acquisition, servicing, securitization and brokerage of mortgage loans" [MORTGAGE COMPANY disclaimed] in view of the registered mark GUILD INVESTMENT MANAGEMENT for "Investment advisory services" [INVESTMENT MANAGEMENT disclaimed]. In January 2019, the CAFC vacated the Board's earlier decision (here) because the Board had "failed to consider pertinent evidence and argument under DuPont factor 8," which requires consideration of "the length of time during and conditions under which there has been concurrent use without evidence of actual confusion." [CAFC decision TTABlogged here]. In re Guild Mortgage Company, Serial No. 86709944 (March 31, 2020) [precedential]

The Board found that the similarities between the marks in connotation and overall commercial impression outweighed the difference in sight and sound, and so the first du Pont factor favored a finding a likelihood of confusion. It deemed insufficient Applicant's evidence that the cited mark is conceptually weak because of some "specific significance" to consumers with regard to registrant's services.

As to the involved services, third-party registrations covering both mortgage banking and investment advisory services convinced the Board that they are related. Furthermore, the same consumers may seek mortgage banking and investment advisory services, and therefore the channels of trade and classes of consumers overlap.

As to the degree of purchaser care, the Board must make its determination based on the least sophisticated consumer. Stone Lion Capital, 110 USPQ2d at 1163. Nonetheless, it found expect that
"consumers may exercise a certain degree of care in investing money, if not perhaps in seeking a mortgage loan for which they simply wish to get funded." Therefore, consumer sophistication weighed slightly against finding a likely confusion.

Turning to the eighth du Pont factor, the CAFC concluded that the Board "erred by failing to address Guild’s argument and evidence," stating that:

Guild . . . presented evidence of concurrent use of the two marks for a particularly long period of time – over 40 years – in which the two businesses operated in the same geographic market – southern California – without any evidence of actual confusion. Further, the Board has found that Guild’s and Registrant’s services are similar and move in the same channels of trade, which is relevant when assessing whether the absence of actual confusion is indicative of the likelihood of confusion. 

The Board first noted that, as to the second, third, and fourth du Pont factors, the analysis must be based on the recitations of services as set forth in the application and the cited registration, and it may not consider evidence of how Applicant and Registrant are actually rendering their services in the marketplace.  The eight du Pont factor, however, requires consideration of the actual market conditions. [wording emphasized by the Board].

In this regard, the Board considered the affidavit of Applicant's president and CEO, who asserted that Applicant has used its mark since 1960, beginning in San Diego, California, and has since "expanded its mortgage lending business nationwide."  Applicant claimed to be currently licensed in 46 states and the District of Columbia, with more than 250 offices and satellites. However, it did not provide specifics as to use of its mark in any particular geographic area. Applicant also submitted some evidence regarding the registrant and its use of the cited mark.

In summary, the evidence demonstrates that Applicant has been doing business in San Diego, California for over forty years, and from a more recent (unspecified) date, nationwide. The evidence further indicates that Registrant has been conducting business from its principal location in Los Angeles, California for much of that time. While both Applicant and Registrant apparently conduct business in various states, the evidence does not indicate any specific geographical areas of overlap between the consumer markets for the business conducted by Applicant and the business conducted by Registrant.

The Board took judicial notice that the addresses of Applicant and Registrant are 126.3 miles apart, and that San Diego has a population of 1,426,976 and Los Angeles a population of 3,990,456. The Board therefore found Applicant and Registrant "are separated both by a noticeable driving distance, and by a separate consumer base." It observed that, although these cities may be generally be generally characterized as being located in "Southern California, there was "no evidence of record that there is any actual, meaningful overlap in the markets for the services offered by Applicant and those offered by Registrant in these two distinct, non-adjacent cities."

Finally, the Board noted that in an ex parte context, there is no opportunity to hear from the Registrant as to whether it is aware of any reported instances of confusion. "We therefore are getting only half the story." See, e.g., In re Opus One, Inc., 60 USPQ2d 1812, 1817 (TTAB 2001). Therefore, the Board must give limited probative value to evidence bearing on the eighth du Pont factor in an ex part appeal, unlike in an inter partes proceeding in which the adverse party has an opportunity to present argument and evidence.

Thus, while we note again the evidence that both Applicant and Registrant conduct their business in California and possibly in some of the same other states nationwide, there is a lack of evidence that in the actual marketplace, the same consumers have been exposed to both marks for the respective services, such that we could make a finding as to the “length of time during and conditions under which there has been concurrent use without evidence of actual confusion.” Upon full consideration, we find the eighth du Pont factor to be neutral. [Emphasis by the Board].

Conclusion: Balancing the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Compare this result to the Board's recent concurrent use decision regarding the HANSCOMB CONSULTING mark (TTABlogged here), in which the Board accepted testimony that was unspecific and unsupported by documentation in concluding that the excepted user had demonstrated prior and continuous use of its HANSCOMB mark in many locations throughout the country.

Text Copyright John L. Welch 2020.

TTAB Posts April 2020 Hearing Scheduling

The Trademark Trial and Appeal Board has scheduled one final hearing for the month of April 2020. For obvious reasons, the hearing will be held by video conference. Briefs and other papers for the case may be found at TTABVUE via the link provided.

April 28, 2020 - 1 PM: Jean Leon S.L. v.  La Scala Restaurants, Corp., Opposition No. 91241804 [Section 2(d) opposition to registration of JEAN LEON’S LA SCALA for "Restaurant and café services; Restaurant services, including sit-down service of food and take-out restaurant services; Restaurant services, namely, providing of food and beverages for consumption on and off the premises," in view of the registered mark JEAN LEON for "wines"].

Read comments and post your comment here.

Text Copyright John L. Welch 2020.

TTAB Quarterly Index: January - March 2020

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. You may also follow the TTABlog on Twitter: @TTABlog.


Section 2(a) - Deceptiveness:

• DENIM & CO. Is Deceptive for Non-Denim Clothing, Says TTAB Panel Majority

Section 2(a) - False Association:

• Precedential No. 4: TTAB Affirms 2(a) False Association and 2(c) Consent Refusals of TRUMP-IT Logo for Utility Knives

Section 2(c) - Consent to Register:

• Precedential No. 4: TTAB Affirms 2(a) False Association and 2(c) Consent Refusals of TRUMP-IT Logo for Utility Knives

Section 2(d) - Likelihood of Confusion:

• TTABlog Test: At Least One of These Three Section 2(d) Refusals Was Reversed!
• PRECEDENTIAL No. 13: TTAB Finds Two Different Shades of Green Not Confusable for Medical Gloves
• "FULL OF FLAVOR FREE OF GUILT" for Vegetable-Based Snacks Not Confusable WIth "GUILT FREE" for Frozen Confections, Says TTAB
• TTABlog Test: Three Recent Section 2(d) Appeals - How Did They Come Out?
• JUSTICE NETWORK Confusable With JUSTICE CENTRAL For Television Services, Says TTAB
• Precedential No. 12: Finding Clothing and Books Related, TTAB Sustains 2(d) Opposition to ENGIRLNEER
• TTAB Rejects Fraud Claim, Finds SHADI.COM Confusable With SHAADI.COM For Marriage Matchmaking Services
• TTABlog Test: Is "MONFRÈRE FASHION" Confusable With "MY BROTHER" for Clothing?
• TTABlog Test: Are Phonograph Records and Audio Equipment Related Under Section 2(d)?
• TTABlog Test: Which One of These Three Section 2(d) Refusals Was Reversed?
• MANIMAL Not Confusable With GARANIMAL for Children's Clothing, Says TTAB
• TTABlog Test: Which One of These Three Section 2(d) Refusals Was Reversed?
• TTABlog Test: Which One of These Three Section 2(d) Refusals Was Reversed?
• LIBERTY BANKERS LIFE INSURANCE COMPANY Not Confusable With BANKERS LIFE, Says TTAB
• TTABlog Test: Are Flavored Gelatins Related to Wine-Based Aperitifs? [Yes]
• TTAB Finds PATIO BY THE SPADES Confusable With KATE SPADE for Clothing and Handbags
• Despite Purchaser Sophistication, TTAB Upholds Section 2(d) Refusal of HARDROK EQUIPMENT INC.
• Despite Weakness of Opposer's Mark, TTAB Finds SHARED SPACE Confusable WIth SHARED for Coworking Spaces
• "M" for Mattresses Confusable with Three Stylized "M" Marks for Furniture, Says TTAB
• TTAB Reverses "GROW WITH US" Refusal, Finding Live Plants Not Related to Horticulture Supplies

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

• TTABlog Test: Is "PERFORMANCE" Merely Descriptive of Dietary Supplements?
• TTABlog Test: Is FETAL LIFE Merely Descriptive of Fetal Health Signal Monitors?
• TTABlog Test: How Did These Four Appeals From Mere Descriptiveness Refusals Turn Out?
• TTABlog Test: Is MOBILIZER Merely Descriptive of Massage Apparatus?
• Divided TTAB Panel Reverses 2(e)(1) Refusal of Double Entendre "LEDGERDOMAIN" for Blockchain Software
• TTABlog Test: Is ORIGINAL GRAIN Merely Descriptive of Restaurant Services? [No]
• WYHA? TTAB Finds "APPLE SUGAR" Merely Descriptive of Sweeteners Including Fruit Skins

Section 2(e)(1) - Deceptive Misdescriptiveness:

• TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?
• DENIM & CO. Is Deceptive for Non-Denim Clothing, Says TTAB Panel Majority

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

• Precedential No. 2: TTAB Finds CHARLESTON HARBOR TOURS Geographically Descriptive of . . . Guess What?
• TTAB Finds "SMITHFIELD" Primarily Geographically Descriptive of Meat, Lard, and Offals

Section 2(e)(3) - Primarily Geographically Deceptively Misdescriptive:

• TTAB Affirms 2(e)(3) Geographical Deceptiveness Refusal of EMPORIO ITALIA for Bedding

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

• TTABlog Test: Is CHALLEN Primarily Merely a Surname for Musical Instruments?
• Precedential No. 3: TTABlog Test: Is "J HUTTON" Primarily Merely a Surname for Eyewear? [Yes]
• TTABlog Test: Is MAGNUS Primarily Merely a Surname for Whiskey? [Yes]

Section 2(e)(5) - Functionality:

• TTAB Affirms Section 2(e)(5) Functionality Refusal of Bathtub Drain Cap Configuration
• TTAB Orders Cancellation of Both Registrations in Trash Bag Trade Dress Clash

Abandonment:

• Precedential No. 10: Section 66(a) Registrant With No Use of Mark Defeats Abandonment Claim
• TTAB Denies Cancellation Petition: SHUSTOV Registrant Overcame Prima Facie Case of Abandonment

Bona Fide Intent:

• Precedential No. 7: TTAB Grants Cancellation Petition, Respondent Did Not Individually Have Bona Fide Intent to Use the Mark

Fraud:

• TTAB Rejects Fraud Claim, Finds SHADI.COM Confusable With SHAADI.COM For Marriage Matchmaking Services

Genericness:

• TTAB Orders Cancellation of Both Registrations in Trash Bag Trade Dress Clash
• TTAB Affirms Genericness Refusal of FIDGET CUBE for Stress Relief Exercise Toys
• AMERICAN UNIVERSITY Bests "AMERICAN UNIVERSITY OF KUWAIT" in TTABowl

Nonuse/Specimen of Use/Failure to Function:

• Precedential No. 11: TTAB Affirms Refusal Based on Applicant's Failure to Pay Sufficient Fees
• MR1109, MR1108, and MR1107 Fail to Function As Trademarks for Electric Motors, Says TTAB
• TTAB Affirms Ornamentality Refusal of Green Y-Shaped Design on Harvester Machines
• Precedential No 1: TTAB Affirms Trifusal of Motion Mark for Sightseeing Tour Services
• AMERICAN UNIVERSITY Bests "AMERICAN UNIVERSITY OF KUWAIT" in TTABowl
• TTAB Dismisses Appeal from Specimen Refusal Because Applicant Failed to Address the Refusal
• TTAB Affirms Nine Failure-to-Function Refusals for Geometric Shapes Displayed on Gaming Machines

Concurrent Use:

• Precedential No. 8: TTAB Dissolves Concurrent Use Proceeding Because Plaintiff's Proposed Territory Overlapped With Defendant's Use

Discovery/Evidence/Procedure:

• Precedential No. 9: TTAB Dismisses Faulty Counterclaim and Affirmative Defense Based on the Pan-American Convention
• 
  
• Precedential No. 5: Opposer Proves Standing Through Trade Name Use by Its Wholly Owned Subsidiary
• TTAB Dismisses Appeal from Specimen Refusal Because Applicant Failed to Address the Refusal

CAFC Decisions:

• CAFC Affirms TTAB: "THE JOINT" Is Merely Descriptive of Restaurant and Nightclub Services

Recommended Reading:

• The Trademark Reporter's 2020 "Annual Review of U.S. Trademark Cases"

Other:

• Current Roster of TTAB Judges (March 2020)
• TTAB Posts March 2020 Hearing Schedule
• TTAB Issues Slightly Revised Standard Protective Order
• TTAB Posts February 2020 Hearing Schedule
• In 2019, How Often Did the TTAB Affirm Section 2(e)(1) Mere Descriptiveness Refusals?
• Three Attorneys Join TTAB Interlocutory Attorney Team
• In 2019, What was the Rate of TTAB Affirmance of Section 2(d) Refusals to Register?
• The Top Ten TTAB Decisions of 2019 (Part II)
• The Top Ten TTAB Decisions of 2019 (Part I)
• Griff Thomas Reports On "Drain Cap" TTAB Oral Hearing
• Two New Judges Appointed to Trademark Trial and Appeal Board
• TTAB Posts January 2020 Hearing Schedule

Text Copyright John L. Welch 2020.

TTABlog Test: Is "PERFORMANCE" Merely Descriptive of Dietary Supplements?

The USPTO issued a Section 2(e)(1) refusal to register the proposed mark PERFORMANCE, finding it merely descriptive of "Energy bars; energy chews; energy gummy; effervescent tablets for making a dietary supplement drink; supplement for boosting energy; supplement for boosting the body's production of nitric oxide; joint protection supplement; supplement for body fat reduction; powdered creatine; creatine capsules; creatine tablets; nutritional candy." Examining Attorney Andrea B. Cornwell maintained that PERFORMANCE "merely describes a feature or purpose of Applicant’s goods, in that its supplements and energy foods are for improving one’s athletic performance." Applicant Shaklee argued, inter alia, that the mark is merely suggestive, since it "evokes a range of different products and not merely those identified in the identification of goods." How do you think this came out? In re Shaklee Corporation, Serial No. 87528703 (March 24, 2020) [not precedential] (Opinion by Judge David K. Heasley).

The Examining Attorney relied on dictionary definitions of "performance," on 17 websites excerpts showing common use of "PERFORMANCE" to describe supplements and energy foods that supposedly improve athletic performance (some describing a category of "performance" supplements, on other websites that describe the function or purpose of supplements as enhancing athletic performance, and on 34 registrations for relevant goods and in which the word was disclaimed.

Applicant Shaklee argued that PERFORMANCE "evokes an array of products, ranging from car parts to sports equipment," that seventeen third-party websites is "de mimimus" (sic!), and that no competitor calls its product "PERFORMANCE." It also pointed to seven registrations for relevant products, in which the word was not disclaimed. Finally Shaklee pointed to its prior 2(f) registration for PERFORMANCE for "powdered concentrate for making an electrolytic soft drink" and two registrations for SHAKLEE PERFORMANCE for that powdered concentrate and for various supplements.

The Board agreed with the Examining Attorney. It found that applicant's goods goods fall within the category of “performance” supplements. Contrary to Shaklee's argument, the mark must be considered in the context of the involved goods, not in the abstract. Furthermore, "performance" describes the purpose or function of the goods.

[A consumer] would immediately perceive that nutritional supplements bearing the mark PERFORMANCE are intended to improve athletic performance. That is why third-party competitors such as Gatorade and Kaged Muscle use the term “performance” descriptively: nutritional supplements are perceived as performance-enhancing. And that is why 34 third parties have registered marks for nutritional supplements with “performance” disclaimed.

As to Shaklee's prior registrations, the PERFORMANCE registration issued under Section 2(f), and thus conceded the word's descriptiveness in the context of the goods. The SHAKLEE PERFORMANCE registrations may have issued without disclaimers because it was assumed that the SHAKLEE portion would distinguish its products from others. In any case, each application must be examined on its own record, and the Board is not bound by prior decisions of examining attorneys in other applications.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: How was your performance?

Text Copyright John L. Welch 2020.

TTABlog Test: At Least One of These Three Section 2(d) Refusals Was Reversed!

Some ten years ago, a TTAB judge said to me that one can predict the outcome of a Section 2(d) case 95% of the time just by looking at the marks and the goods or services. Here are three decisions issued last week in appeals from Section 2(d) refusals. At least one refusal was reversed. Let's see how you do. [Answers in first comment].

In re Lit Hookah LLC, Serial No. 87904592 (March 24, 2020) [not precedential] (Opinion by Judge Christopher Larkin). [Section 2(d) refusal of the mark shown immediately below, for "glass hookahs, including whole hookahs and hookah parts such as the bowl, down-stem and hoses to be utilized to smoke tobacco and other herbal products without electronic components," in view of the registered mark LIT HOOKAH LOUNGE & BAR for "hookah lounge services" [HOOKAH LOUNGE & BAR disclaimed].

In re Tintoria Piana U.S., Inc., Serial No. 87776775 (March 25, 2020) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Section 2(d) refusal to register PIANA HYDRO for "textile fibers" in view of the registered marks LORA PIANA and formatives thereof for textiles, fabrics, and yarns].

In re LEMA, Serial No. 87892342 (March 26, 2020) [not precedential] (Opinion by Judge Angela Lykos). [Section 2(d) refusal of DADA CHAPEL for "Beer, ale, lager, stout and porter" and for "Spirits and liqueurs," in view of the registered mark shown immediately below, for "wines"].

Read comments and post your comment here.

TTABlog comment: How did you do? Any WYHAs here?

Text Copyright John L. Welch 2019.

PRECEDENTIAL No. 13: TTAB Finds Two Different Shades of Green Not Confusable for Medical Gloves

In an rare Section 2(d) refusal involving color marks, the Board reversed a refusal to register, on the Supplemental Register, the color green (below left) as applied to “Medical examination gloves” in view of the registered mark shown below right (also on the Supplemental Register), for the color green as applied to the exterior of “Gloves for medical use; Protective gloves for medical use." Applicant Medline described its proposed mark as "“the color green (Pantone 2274C)," while the cited registration refers to another shade, “the color green Pantone 7488U." The Examining Attorney maintained that the marks should have been described in ordinary language as the color "green," but the Board disagreed. It then found that the two shades of green "would be viewed and remembered, at most, as distant relatives in the green family," and it concluded that confusion as to source is "not likely." In re Medline Industries, Inc., Serial No. 87680078 (March 25, 2020) [precedential] (Opinion by Judge Christopher Larkin).

The Board observed that this case is "unusual" because the TTAB has issued only one predecential decision involving the issue of likelihood of confusion between two single-color marks in the nearly 25 years following the Supreme Court’s seminal decision in Qualitex: namely, In re Cook Med. Techs. LLC, 105 USPQ2d 1377 (TTAB 2012) ["teal" for applicant's medical devices confusable with registrant's "blue" for catheters). [TTABlogged here].

Strength of the Cited Mark: Applicant Medline argued that many third parties "use different shades of green for medical gloves," that more than 40 different green medical gloves are available,” and that many of those are more similar in color to the cited mark than is its mark. Therefore, it asserted, “[i]n such a crowded field, ‘customers will not likely be confused between any two of the crowd and may have learned to carefully pick out one from the other.’” The Examining Attorney asserted that  these third-party uses were not probative because there was no showing that any of the manufacturers or providers of those gloves use the color green as an identifier of source. The Board sided with the Examining Attorney.

In Cook Medical, the Board found the absence of evidence of use or registration of color marks in the medical field tended to show that the mark there cited (the color "blue" for catheters) "is unique or at least not coexisting with similar marks in the field." Thus Cook Medical teaches that what is relevant is "the existence of third-party marks, not simply the presence in the marketplace of third-party goods bearing some shade of the color at issue." [Emphasis added by me].

The Board’s treatment of this factor in Cook Medical is consistent with the Federal Circuit’s analysis of the sixth DuPont factor in cases involving more traditional forms of marks such as words and designs. See, e.g., Omaha Steaks, 128 USPQ2d at 1693 (“[t]he purpose of introducing evidence of third-party use is to show that customers have become so conditioned by a plethora of such similar marks that customers have been educated to distinguish between different [such] marks on the bases of minute distinctions.”) (internal quotations and quotation marks omitted omitted)).

The Board observed that none of the third-party green medical gloves proffered by Medline are displayed in a way that identifies or refers to green or a particular shade of green as a trademark, and so "it is very unlikely that the colors or shades of green used by third parties on medical gloves would be perceived as marks." The Board therefore found the sixth du Pont factor to be neutral.

Thirteenth du Pont Factor: Nonetheless, under the thirteenth du Pont factor, the Board may consider "[a]ny other established fact probative of the effect of use.” DuPont, 177 USPQ at 567. Noting that the cited registration is on the Supplemental Register, the Board found that "the third-party non-trademark uses of shades of green on medical gloves tend to impair the cited Supplemental Register mark’s ability to acquire distinctiveness, and to limit its scope of protection if it did acquire distinctiveness," and therefore the evidence of third-party use of the color green by third parties "corroborates the weakness of the cited mark and its limited potential scope of protection," and "weighs against a likelihood of confusion."

Similarity of the Marks: The Board chose to consider the issue of the similarity of the marks "from the perspective of both purchasers of bulk medical supplies and the end users of the goods, as post-sale confusion as well as point-of-sale confusion is recognized."

Although the Examining Attorney asserted that the “applied-for mark is the color green” and the “cited mark is the color green,” neither the cited registration nor the application describes the claimed color simply by a “general term.” The registration describes the claimed mark as “the color green Pantone 7488U,” while Medline's application states that its mark is “the color green (Pantone 2274C).” The Examining Attorney argued that the colors should have been described in ordinary language, as the color "green," and that each mark is simply a shade of green. The Board disagreed.

“[M]arks designating commercial color identification systems, such as PANTONE . . . may appear in connection with a color identifier in the description of the mark, because greater precision in identifying the color may be critical in accurately describing the mark and such third-party use is an intended use of commercial color identification-system terminology.” TMEP § 808.02.

Because the drawings in the application and cited registration are in color and show the particular shades of green claimed, and because both refer to Pantone designations to identify a specific shade of green, the Board concluded that it "cannot simply read one color claim to encompass the other claimed color, as in Cook Medical."

Against the backdrop of the prominent display of the claimed marks on the goods, and acknowledging the inherent subjectivity of our determination, we find that there are significant differences in visual appearance between Registrant’s shade of green and Applicant’s shade of green. As shown in the registration drawing, Registrant’s claimed shade is a bright, attention-grabbing hue that is squarely within the green color family and would be perceived and recalled as such. *** Even when not viewed in proximity (or in comparison) to Registrant’s mark, Applicant’s claimed mark, as shown in the application drawing, appears as a subdued, pale shade that would be perceived as somewhere on the outer periphery of the green color family.

Observing that Cook Medical (quoting Professor McCarthy) refers to the issue of the similarity of two color marks  as “really nothing more than a subjective ‘eyeball test,’” Cook Med., 105 USPQ2d at 1381 (quoting MCCARTHY § 7:45), the Board found that the marks at issue "would be viewed and remembered, at most, as distant relatives in the green family."

[C]onsumers with an imperfect or even dim recollection of Registrant’s bright shade, and who have been exposed to the use of multiple other shades of green on medical gloves and are then exposed to Applicant’s pale shade, are not likely to view the two shades as similar, or to view gloves bearing them as being the product of one and the same producer.

And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Much of the Board's extensive discussion involved comparing, contrasting, and distinguishing Cook Medical from the instant scenario.

Text Copyright John L. Welch 2020.

TTABlog Test: Is FETAL LIFE Merely Descriptive of Fetal Health Signal Monitors?

The USPTO refused to register the proposed mark FETAL LIFE for fetal health signal monitors and related goods, finding the mark to be merely descriptive under Section 2(e)(1). Applicant argued that the term has several meanings and is at most suggestive of a function, feature or characteristic of its goods. How do you think this came out? In re Fetal Life, LLC, Serial No. 87938891 (March 24, 2020) [not precedential] (Opinion by Judge Peter W. Cataldo).

Applicant got off on the wrong foot when it attempted to submit into evidence, via its brief, certain Google brand search results. Not only was the submission untimely, but applicant did not submit the actual web pages, only summaries.

Also in its brief applicant asked that, in the event that the Section 2(e)(1) refusal was upheld, the subject mark be registered on the Supplemental Register. However, the Examining Attorney correctly pointed out that the application was filed under the intent-to-use provision of Section 1(b), and no amendment to allege use was file. Therefore the mark is ineligible for registration on the Supplemental Register, and the Board gave applicant's request no consideration.

As to the merits, the Examining Attorney argued that the proposed mark merely describes a function or purpose of the goods, namely, that they monitor or sense the existence of a fetal human being (i.e, "life"). The Examining Attorney relied on four websites from medical and medical technical trade journals wherein the term “fetal life” is used in the context of various aspects of prenatal health.

This evidence shows use of the term “fetal life” in connection with the challenges of detecting, monitoring and assessing health signals from fetuses. Further, we agree with the Examining Attorney that Applicant’s goods may be used, inter alia, to detect and monitor various fetal health signals.

However, the Board agreed with Applicant that the Examining Attorney’s evidence was insufficient to show that FETAL LIFE merely describes a particular function or feature of Applicant’s goods. As to the four journal articles, they are technical in nature and there was no evidence regarding their readership of circulation.

“Fetal life” is a nebulous term in these four articles. It is impossible to determine whether its use in them simply represents use of the term in context, or indicates use of the term to describe some particular aspect of neonatal health. As a result, the Examining Attorney’s slim record evidence fails to demonstrate that “fetal life” describes a significant feature, aspect or characteristic of the recited goods or their purpose such that the mark FETAL LIFE as a whole may be merely descriptive of thereof. To the extent that Applicant’s goods may be used, inter alia, to detect or monitor “fetal life,” imagination or additional thought is required to reach that conclusion.

Noting that doubts as to mere descriptiveness are to be resolved in an applicant's favor, the Board reversed the refusal.

Read comments and post your comment here.

TTABlog comment: Seems descriptive to me. A proposed mark can be merely descriptive even if no one else uses it, and the Examining Attorney is not required to show that the phrase is already in use. Looking at the mark in the context of the goods, I think it conveys immediate information that the purpose of the goods is to check on the life of the fetus.

Text Copyright John L. Welch 2020.

"FULL OF FLAVOR FREE OF GUILT" for Vegetable-Based Snacks Not Confusable WIth "GUILT FREE" for Frozen Confections, Says TTAB

Opposer Yarnell Ice Cream's Section 2(d) opposition melted away when the Board found this Applicant Outstanding Foods free of guilt in seeking to resister the mark FULL OF FLAVOR FREE OF GUILT for "vegetable based food products, namely, vegetable based snack foods; meat substitutes" [FULL OF FLAVOR disclaimed]. The Board ruled that Yarnell failed to prove a likelihood of confusion with the registered mark GUILT FREE for frozen confections.The Board's 47-page decision was sprinkled with several interesting issues. Yarnell Ice Cream, LLC v. Outstanding Foods, Inc., Opposition No. 91244684 (March 7, 2020) [not precedential] (Opinion by Judge Marc A. Bergsman).

Trial by Consent: Yarnell submitted into evidence 15 additional registrations for GUILT FREE or various other products, including soft drinks and cookies, and it provided testimony that its mark is licensed for use for diverse food products. Applicant touched on these other registrations and uses in its briefing, but it objected to consideration of products other than Yarnell's frozen confections.

The Board found that, although Applicant did not object to the submission of these unpleaded registrations, Yarnell had not fairly apprised Applicant that it would rely on these additional registrations.The Board therefore refused to consider them.

Goods and Trade Channels: Yarnell pointed to a single website showing vegetable-based snacks and frozen confections being sold under the same mark. However, there was "no testimony or evidence showing what sort of commercial impact these products have made." Yarnell relied on the fact that the parties' goods are "snacks," but that was not enough to convince the Board that the involved goods are related.

As to channels of trade, the Board must presume that "both parties offer their vegetable based snacks or frozen confections in all channels of trade normal for those products and they are available to all classes of consumers for those products." The Board found, however, that this factor "only weighs slightly" in Yarnell's favor "because there is no evidence that the same consumers will encounter the products in the same marketing milieu (i.e., that they are sold in close proximity to one another)."

The Board did agree with Yarnell that the involved goods are low cost items that are purchased with less care than expensive products.

Strength of Opposer's Mark: As to the inherent or conceptual strength of Yarnell's mark, the Board found that "When Opposer uses GUILT FREE in connection with frozen confections or frozen dairy confections, it suggests that a person may enjoy the frozen treat [without] remorse, shame or guilt due to the calories in the frozen treat." Applicant submitted 25 third-party registrations incorporating the word “Guilt” used in connection with food, and 13 Internet website "using marks that engender the 'Guilt Free' commercial impression."

Although Yarnell licenses others to use the GUILT FREE mark, those uses are in a manner that is "unlikely to point to Applicant as the source of the products." "Based on the commercial impression engendered by the term 'Guilt Free' and the third-party registrations and use of marks incorporating variations of the word 'Guilt' to engender the commercial impression of a food a person can eat without remorse, we find that Opposer’s mark GUILT FREE is suggestive." [With regard to these third-party items, doesn't Omaha Steaks require that the goods be related to Opposer's goods? The Board just got through saying that snacks and frozen confections are not related, and then it essentially finds the opposite, since the third party goods include various snacks like popcorn, gummy candies, and potato chips - ed.].

As to commercial strength, the Board found that, in view of Yarnell's evidence of sales of GUILT FREE frozen confections and its advertising and marketing efforts, the mark has "made little, if any, commercial impact."

The Marks: The Board found that the marks at issue engender similar commercial impressions and sound alike [sound alike? - ed.], but there are obvious differences:

Applicant’s mark FULL OF FLAVOR FREE OF GUILT is more of an advertising tagline or slogan consisting of two terms, “Full of Flavor” followed by “Free of Guilt.” Applicant’s mark rolls off the tongue because of the alliteration of the letter “F” and the uniform, rhythmic structure and cadence of the two terms thereby distinguishing Applicant’s mark from Opposer’s mark when compared in their entireties.

Concluding that marks conveying a "guilt free" commercial impression in connection with food items should be accorded a narrow scope of protection, the Board found the marks sufficiently different to avoid confusion.

Conclusion: The Board dismissed the opposition.

Read comments and post your comment here.

TTABlog comment: You may remember Yarnell from its recent failed attempt to overturn a trifusal of the mark SCOOP for frozen confections promoted and distributed by a mascot of that name. [TTABlogged here].

Text Copyright John L. Welch 2020.