Finding BOTOX Famous, TTAB Sustains Section 2(d) Opposition to GS GEMS STYLE HAIR BOTOX for Hair Care Products

The Board sustained this opposition to registration of GS GEMS STYLE HAIR BOTOX for various non-medicated hair care products [STYLE HAIR BOTOX disclaimed], finding confusion likely with the famous mark BOTOX for pharmaceutical preparations, including preparations for the treatment of wrinkles. Applicant Gems Style, appearing pro se, contended that "Hair Botox" "is a term widely recognized by the general consumer public in the United States and by the social media" that has a distinct meaning from BOTOX alone. The Board was unimpressed. Allergan, Inc. v. Gems Style Inc., Opposition No. 91241842 (October 23, 2020) [not precedential] (Opinion by Judge Marc A. Bergsman).

Fame: The Board found BOTOX to be a coined term with no recognized meaning other than as a trademark. Therefore, it is an inherently or conceptually strong mark. As to commercial strength, Allergan has used the mark since 1990, has spent half a billion dollars in advertising and promotion in that past two decades, has earned about $20 billion in the past 20 years, and enjoys 69% unaided brand awareness and 95% aided brand awareness. The Board deemed BOTOX to be a famous mark for purposes of Section 2(d), and therefore entitled to a broad scope of protection or exclusivity of use. 

The Marks: The Board noted that Applicant Gems Style "uses the BOTOX as part of the unitary term HAIR-BOTOX on its label" (shown above), making it appear that its product "is a BOTOX product specifically for hair (i.e., a hair Botox)."

Gems Style maintained that "Hair Botox" is a "unique and inseparable concept, widely recognized by relevant consumers. It pointed to third-party websites using the term "Hair Botox" for hair care treatments. The Board agreed that some consumers perceive "Hair Botox" as a hair care treatment, and it noted Gems Style's disclaimer. In essence, Gems Style asserted that GS GEM STYLE is the dominant portion of its proposed mark. The Board disagreed.

Even assuming a segment of the consuming public and hair care industry perceives “Hair Botox” to be a type of hair care treatment, because Opposer’s registered mark is both conceptually and commercially strong, consumers and potential consumers mistakenly may believe that “Hair Botox” treatments are related to, sponsored by, or somehow associated with the famous BOTOX pharmaceutical with which they are familiar.

Because BOTOX is a famous mark, Gems Style was obligated to avoid using it. "The Trademark Act’s tolerance for similarity between competing marks varies inversely with the commercial strength of Opposer’s mark."

While the marks are not identical, because Opposer’s BOTOX mark is famous, Applicant’s mark GS GEM STYLE HAIR BOTOX, in its entirety, is more similar to Opposer’s BOTOX mark than it is dissimilar in appearance, sound, connotation, and commercial impression.

The Goods: Allergan submitted copies of 60 use-based, third-party registrations covering hair care preparations and pharmaceutical preparations. Gems Style argued that the pharmaceutical preparations in those registration have nothing to do with hair, contending that "consumers and people in the hair care industry recognize that 'Hair Botox' is a product that is separate and distinct from a pharmaceutical preparation." The Board pointed out, however, that confusion of products is not the issue; it is confusion as to source.

Despite the obvious differences between the descriptions of goods, because BOTOX is a famous mark entitled to a broad scope of protection, some entities render both hair care services and medical cosmetic treatment services under the same mark so consumers may encounter both sets of products in the same marketing milieu, and the third-party registrations show that hair care products and pharmaceutical preparations may emanate from the same source, we find that the Applicant’s hair care products are related to Opposer’s pharmaceutical preparations.

Channels of Trade: Website evidence showed that third parties market both medical cosmetic treatment services, including pharmaceutical preparations such as Botox, and hair care services, including the sale of non-medicated hair care preparation, under the same mark. The Board found that Allergan "offers its pharmaceutical preparations for treating wrinkles in some of the same channels of trade to some of the same classes of consumers as non-medicated hair care preparations."

Gem Style argued that the channels of trade do not overlap because BOTOX is sold only by prescription and is administered by professionals.  The Board pointed out, however, that the evidence showed that aesthetic medical centers and “med spas” offer both hair care products, including hair care preparations, and cosmetic medical treatment services, including BOTOX injections, to the same consumers.

The Board rejected Gems Style's argument that its hair care products are sold only to licensed salons and are purchased with care, because there are no such limitations in the opposed application. The Board "cannot resort to extrinsic evidence to restrict the parties’ goods." Moreover, it noted that "the ordinary consumer may purchase Applicant’s hair care products and request a BOTOX injection at a cosmetic medical treatment facility or spa."

Conclusion: Observing once again that fame plays a "dominant role" in the likelihood of confusion analysis, the Board sustained the opposition. It declined to consider Allergan's dilution claim

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TTABlogger comment:  I think the Board should have decided the dilution claim as well. 

Text Copyright John L. Welch 2020.

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

A TTAB judge once 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 recent decisions in appeals from Section 2(d) refusals. No hints this time. How do you think these came out? [Answers in first comment].

In re Carolyn Anderson Beautiful, LLC., Serial No. 87851445 (October 21, 2020) [not precedential] (Opinion by Judge Marc A. Bergsman). [Section 2(d) refusal to register BEAUTIFUL (Stylized) for "Hair care products, namely, shampoos; hair conditioners; hair sprays; styling gels; hair fiber protectants in the form of lotions and creams; styling foams for hair; root lifters in the nature of hair creams, foams, gels, and spray liquids; volumizers in the nature of hair creams, foams, gels, and sprays; hair lotions, gels, pomades, and waxes in the nature of hair taffies; and hair waxes," in view of the registered mark BEAUTIFUL for "perfume, cologne, body creme, body lotion, body powder, perfumed soap." Applicant contended, inter alia, that the meaning and commercial impression engendered by its use of the stylized BEAUTIFUL mark and Registrant’s use of BEAUTIFUL are different because Registrant’s use of BEAUTIFUL captures the sense of smell and its use of BEAUTIFUL refers to vision.]

In re Yafa Hummus Inc., Serial Nos. 88157691 and 88157695 (October 21, 2020) [non precedential] (Opinion by Judge Karen S. Kuhlke) [Section 2(d) refusal of YAFA HUMMUS SIMPLY MEDITERRANEAN, in standard character and design form (below) for "Restaurant services; Restaurant services featuring Mediterranean cuisine, Greek cuisine, and a fusion of Mediterranean and Greek cuisine; Restaurant and café services; Restaurant and catering services" [HUMMUS, MEDITERRANEAN and SINCE 1951 disclaimed], in view of the registered mark YAFA GRILL & Design for "Restaurant and catering services" [YAFA GRILLE SHAWARMA, FALAFEL, and PITA disclaimed]. Applicant argued that the disclaimed terms are of less significance and the design elements in the marks are sufficient to distinguish them.]

In re Beavertail Products, LLC, Serial No. 88197106 (October 23, 2020) [not precedential] (Opinion by Judge Linda A. Kuczma). [Section 2(d) refusal of the mark DOA DECOYS & Design for "wild game hunting decoys" [DECOYS disclaimed] in view of the registered mark D.O.A. for "fishing lures." Applicant asserted that fishing lures are sold in different departments than are waterfowl decoys, and that the most prominent portions of its mark ,” according to Applicant, “focus on the waterfowl, the two heads and the rather large wings extending from the center shield,” which is “also is a very prominent portion of the mark.” Applicant maintained that the stylistic images of its mark are the most eye-catching aspects of the mark and distinguish it from the cited mark.]

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

Text Copyright John L. Welch 2020.

Precedential No. 35: Bad Specimen of Use and Mere Descriptiveness Sink THERMAL MATRIX for Dental Appliance Liner

In a soporific but precedential decision, the Board affirmed two of three refusals of the proposed mark THERMAL MATRIX for a "Heat responsive and malleable liner that is an integral component of an oral dental appliance used in the mouth and worn over the teeth of an individual while sleeping to reduce the effects of snoring and sleep apnea" [THERMAL disclaimed]. The Board found the mark to be merely descriptive of the goods, and further found that the specimen of use (immediately below) does not show the mark in use in connection with applicant's liners. However, the Board overturned the third refusal, concluding that the mark as depicted in the application drawing (i.e., THERMAL MATRIX) is a substantially exact representation of the mark as actually used. In re James S. Fallon, Serial No. 86882668 (October 21, 2020) [precedential] (Opinion by Judge Christopher Larkin).

Faulty Specimen: Examining Attorney Christopher Buongiorno asserted that "[t]he picture of the dental appliance on the package does not show or highlight the lining of the dental appliance in a way where consumers are likely to associate the wording in the mark as the source indicator for a liner." The Board agreed.

Where, as here, an applicant seeks registration for a component of a product rather than for the product itself, it is particularly important that the specimen contain some visual or verbal identification of the component to create the required direct association between the mark and the identified goods. See Minerva Assocs., 125 USPQ2d at 1638-39. * * * The specimen that Applicant submitted does not sufficiently identify any specific component, much less the component for which registration is sought, visually or verbally, to create the required direct association between the proposed mark and that component.

And so the Board affirmed this refusal. 

Mere Descriptiveness: Applicant Fallon argued that the Examining attorney "focused entirely on the meanings of the individual words ‘thermal’ and ‘matrix’ while overlooking the significance of the mark THERMAL MATRIX taken as a whole."

The Board found that each word in the mark is "highly descriptive" of the goods. "As shown in the webpages above, Applicant’s 'heat responsive and malleable liner' embodies 'a pattern of lines and spaces' through which the user can personalize the fit of the oral appliance through the application of heat."

The Board then considered whether the combination of the two words yields "something more than merely the sum of its descriptive parts." It pointed out that Fallon website "touts the product's 'Thermal Matrix Design,' which 'features a thermal matrix material that enables each user to personalize their device with a custom impression' through 'a simple step by step process that can be done in the comfort of your home.'"

Third-party webpages confirmed that "when Applicant’s goods are advertised and promoted by others, the same descriptive message of the proposed mark would be understood by consumers." Finally, Fallon argued (as usual) that some imagination, thought, or perception would be required before a consumer would glean any information about the product from the mark, and therefore the mark is merely suggestive. Although Fallon correctly stated the law, the facts did not cooperate.

Applicant’s own promotional materials and the third-party webpages shown and discussed above make it clear that “a consumer would immediately understand the intended meaning of” the proposed THERMAL MATRIX mark as a descriptor of a key product feature, N.C. Lottery, 123 USPQ2d at 1710, and eliminate the need for any “imagination, thought or perception” to determine the term’s significance.

Concluding that Fallon failed to rebut the USPTO's prima facie showing, the Board affirmed the Section 2(e)(1) refusal.  

Mutilation? The Examining Attorney contended that the specimen of use displays the mark as NEW THERMAL MATRIX, whereas the application drawing displays the mark as THERMAL MATRIX, since "NEW" is not a generic word but merely descriptive. Applicant Fallon asserted that consumers would not see "NEW" as part of the mark because "the letter size and style of the word 'NEW' are visually distinguishable from those of the words 'Thermal Matrix' which are located separately on the package."

The Board agreed with Fallon on this one. It found that THERMAL MATRIX, as it appears on the specimen, "comprises a separate and distinct 'trademark' in and of itself." (quoting Institut Nat’l Des Appellations d’Origine v. Vintners Int’l Co., 958 F.2d 1574, 22 USPQ2d 1190, 1197 (Fed. 1992)).

The word NEW appears in all capital letters on the specimen above the words “Thermal Matrix,” which are depicted in initial capital letters and are followed by the ™ symbol. Given the descriptive, non-source identifying nature of the word NEW acknowledged by the Examining Attorney and Applicant, and the fact that the words "Thermal Matrix" are set apart visually from the word NEW, we find that the drawing of the mark as THERMAL MATRIX is 'a substantially exact representation of the mark as used with the goods"” Trademark Rule 2.51(b), and we reverse the refusal to register based on that rule.

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TTABlogger comment: WYHA? Why is this precedential? I don't see any particularly noteworthy ruling(s) here. What would you cite this case for? Something about proper specimens when the identified good is a component of another product? Seems rather obvious that the mark has to be connected to the component.

Text Copyright John L. Welch 2020.

TTAB Finds "WA529" Primarily Geographically Descriptive of Pre-Paid Educational Financial Services

The Board affirmed a Section 2(e)(2) refusal to register the marks WA529, in standard character and design form (below), for "Pre-paid educational financial services, namely, allowing purchasers to make advance payments towards future continuing education, and providing information relating to education financing," finding the marks to be primarily geographically descriptive of the services. Applicant maintained that WA529 is a "whimsical or fanciful mark or, alternatively, at least only suggestive of" its services. The Board disagreed. In re Committee on Advanced Tuition Payment, Serial Nos. 88079982 and 88079989 (September 30, 2020) [not precedential] (Opinion by Judge George C. Pologeorgis). 

The Board first observed that "the geographical significance of the mark is to be assessed as it is used on or in connection with the goods [or services]." Newbridge Cutlery, 113 USPQ2d at 1448. "[T]he addition of highly descriptive matter to a geographic term does not detract from the mark's primary significance as being geographically descriptive." See In re U.S. Cargo, Inc., 49 USPQ2d 1702 (TTAB 1998). 

Examining Attorney Obieze Mmeje submitted dictionary definitions of the abbreviation/acronym "WA", defined as the State of Washington, a Columbia Gazetteer entry for the state, website excerpts defining a "529 plan" as a "tax-advantaged savings plan designed to encourage saving for future education costs," third-party registrations that include disclaimers of "529", and excerpts from the websites www.nc529.org, www.az529.gov, www.pa529.com, www.hi529.com; and www.virginia529.com, discussing the available 529 plans in the states of North Carolina, Arizona, Pennsylvania, Hawaii, and Virginia, respectively. Applicant's own website demonstrated that it is a state agency domiciled in the state of Washington.

The Examining Attorney therefore contended that applicant's marks "immediately and directly convey to consumers that Applicant provides 529 prepaid tuition plans in the state of Washington for residents of Washington and, thus, the marks, in their entireties, are primarily geographically descriptive of Applicant’s identified services."

Applicant argued that “WA529” is a whimsical or fanciful mark, that the mark as a whole does not suggest a geographical location, and that the Examining Attorney's dissection of the mark "“disrupts the singular, unnatural and whimsical commercial impression of the subject term." The Board found those assertions to be "inconsistent with the record."

The evidence of record leaves no doubt that the term “WA 529” (two-word term) is, at the very least, primarily geographically descriptive of Applicant’s services. The mere alteration of “WA 529” to form the designation “WA529” does not result in an inherently distinctive or fanciful mark. In considering the evidence of record we recognize that there is no use of “WA529” as one term. Nonetheless, the clear and, in fact, only connotation of the applied-for designation is as an equivalent to “WA 529” when viewed in the context of the identified services.

Applicant pointed to several registered marks containing the term 529 or WA, but each mark also included other wording that produced a distinctive commercial impression (e.g., SMART529 and WALRAA). In any event, "the bare fact that the USPTO allowed six marks to register is of little persuasive value and does not dictate the result in this case." Each application must be considered in view of the record evidence. The Board is not "estopped or precluded from applying the statute because in a prior application an examining attorney (or attorneys) may have overlooked a relevant statutory provision and, perhaps erroneously, allowed an application to register."

The Board concluded that the proposed marks "identify a well-known geographic location from where Applicant’s services originate" and that "purchasers would make a services/place association between Applicant’s services and the place named in the mark." "The addition of the descriptive, if not generic, terms '529,' and 'Washington College Savings Plans' in the composite mark, does not detract from the marks’ primary significance as being geographically descriptive."

And so the Board affirmed the refusal to register.

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TTABlogger comment: WYHA?

Text Copyright John L. Welch 2020.

TTABlog Test: Is CITRUS CLUB for Cocktail Lounge Services Confusable With CITRUS KITCHEN for Restaurant Services?

The USPTO refused to register the mark CITRUS CLUB for "cocktail lounge services" [CLUB disclaimed], finding confusion likely with the registered mark CITRUS KITCHEN, in standard character and design form, for "restaurant services" [KITCHEN disclaimed]. Applicant argued that it uses its mark at "a reservation-only rooftop cocktail lounge atop a five-star hotel in Charleston, South Carolina," that "operates exclusively in the evenings, employs a dress code, and prohibits children under the age of 21 from entering," whereas the registered mark is used at a "sole store-front physical location in Rancho Cucamonga, California . . . focused on hand-crafted, healthy meal options . . . [and] is also open during the day, closes at 8:00 pm on Monday through Saturday, does not feature a dress code, and allows children." How do you think this came out? In re Citrus Club by Dewberry 334 Meeting Street, LLC. Serial No. 87860519 (October 14, 2020) [ not precedential] (Opinion by Judge Thomas W. Wellington).

The Services: Of course, in considering the second du Pont factor, the Board looks to the services recited in the the application and cited registration, not at the real marketplace conditions. See Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The evidence showed "a close and intrinsic relationship between cocktail lounges and restaurants." Examining Attorney Taylor Duenas submitted Internet evidence showing 6 different entities advertising bar or cocktail lounge services, as well as restaurant services, and he provided more than 20 use-based, third-party registrations, each registration covering cocktail lounge and restaurant services. That sufficed to show the relatedness of the involved services.

The evidence also showed that the involved services may be offered in the same location, e.g., a cocktail lounge may be either within a restaurant or within the same hotel as a restaurant. In the latter case, the hotel may advertise both be advertised on the hotel website. [Would they likely have the same name in the same hotel? - ed.] Again, the Board brushed aside the applicant's irrelevant argument that the actual facilities of the parties are a continent apart, since applicant is seeking a nationwide registration and registrant's rights are likewise nationwide.

The Marks:  The word CITRUS is the more distinctive term in each of the marks and, as the initial element, is more likely to be noticed or remembered by consumers. The primary connotation of each mark is dictated by the term CITRUS, rather than by the disclaimed terms, CLUB and KITCHEN. As to connotation, "[t]o the extent that the term CITRUS may be suggestive in the context of cocktail lounge and restaurant services, i.e., suggesting a citrus fruit ingredient in food or drinks being served, this same meaning would be conveyed by the two marks."

In light of the the strong resemblance in sound and appearance due to the shared term CITRUS, and the overall similar connotations and commercial impressions, the Board found the marks to be similar, ans so the first du Pont factor weighed in favor of likely confusion.

Strength of the Cited Mark: Applicant argued that CITRUS and KITCHEN are weak formatives, and therefore that the cited marks are entitled to a limited scope of protection. The Board, however, found applicant's third-party registration evidence to be "wholly inadequate" to show any weakness of CITRUS for restaurant services. Most of the registered marks were for unrelated goods and services, and none was for restaurant services. In some of the registered marks, the word CITRUS is used descriptively. Applicant did not submit any evidence of third-party marks containing the word CITRUS.

In sum, although there may be a suggestive meaning to the term CITRUS in connection with cocktail lounge and restaurant services, as discussed supra, we do not find this term to be commercially weak or so inherently weak as to allow the registration of Applicant’s mark. Accordingly, the DuPont factor regarding weakness is neutral in our likelihood of confusion analysis.

Conclusion: The Board found confusion likely, and so it affirmed the Section 2(d) refusal.

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TTABlogger comment: WYHA?

Text Copyright John L. Welch 2020.

TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?

The TTAB recently ruled on the appeals from three Section 2(e)(1) mere descriptiveness refusals summarized below. Let's see how you do with them, keeping in mind that the Board affirms, by my calculation, some 90% of these refusals. Answer(s) will be found in the first comment.


In re Healthy Brands LLC, Serial No. 88101117 (October 6, 2020) [not precedential] (Opinion by Judge Marc A. Bergsman). [Mere descriptiveness refusal of HEALTHY BRANDS for "cosmetics." Applicant maintained that the proposed mark "does not convey any particular function, characteristic, attribute, or use of the associated products because there is no general agreement as to what constitutes a 'healthy' cosmetic."]

In re Appian Corporation, Serial No. 87890076 (October 14, 2020) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Mere descriptiveness refusal of INTELLIGENT CONTACT CENTER for "Computer software development tools; Computer software for application and database integration; Computer software for use in customer relationship management (CRM); Computer telephony software; Digital telephone platforms and software in International Class 9" and for "Software design and development; Business technology software consultation services; Computer software consultancy; Computer software development; Customizing computer software; Design, development and implementation of software; Maintenance of computer software in International Class 42." Applicant argued that a "'contact center’ is 'a physical location out of which customer service operations are handled or an organizational business unit that is responsible for handling customer service operations,''' whereas applicant "sells a software platform, not a physical location or a customer service department."]In re Shimano North America Holding, Inc., Serial No. 88185346 (October 16, 2020) [not precedential] (Opinion by Judge Cindy B. Greenbaum). [Mere descriptiveness refusal of FLAT-SIDE for fishing lures. Applicant maintained that the proposed mark is suggestive of the identified fishing lures because the goods feature two sides that are curved, and neither side is flat.]

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

Text Copyright John L. Welch 2020.

MILLENNIAL FALCON for Live Entertainment Services Confusable with Star Wars' MILLENNIUM FALCON, Says TTAB

In a case decided under the ACR regime, the Board sustained Lucasfilm's opposition to registration of MILLENNIAL FALCON for live entertainment and production services, finding confusion likely with the mark MILLENNIUM FALCON, registered for toy vehicles and used for entertainment services, sound recordings, live musical concerts, films, television programs, computer and video games, comic books, amusement parks, games, and clothing. Pro se Applicant Ilan Moskowitz, a/k/a Captain Contingency, argued that his mark is used as "a parody of, and satirical comment on, corporate culture, and in particular the culture of the entertainment behemoth, Disney," which he claimed "swallowed the entire Star Wars franchise in the preceding years." As usual, the Board rejected the parody argument, but the claim of parody allowed the Captain to avoid a finding of bad faith adoption under the 13th du Pont factor. Lucasfilm Entertainment Company Ltd. LLC v. Ilan Moskowitz aka Captain Contingency, Opposition No. 91244449 (October 17, 2020) [not precedential] (Opinion by Judge Mark Lebow).

The Captain objected to certain documents submitted by Lucasfilm because they were not provided to him during discovery. However, the documents were dubbed "attorney's eyes only" by Lucasfilm and therefore, under the terms of the Standard Protective Order,  the Captain (as a party and individual appearing pro se) was not entitled to access to the AEO materials. 

The Board spent little time in shooting down the Captain's parody defense. "[W]e have long held that parody is a viable defense in a likelihood of confusion analysis only if the involved marks are otherwise not found confusingly similar. Here, the marks are virtually identical." [That seems to beg the question. How can you have a parody unless the marks are similar? And doesn't a parody make them dissimilar for purposes of Section 2(d)? - ed.]. The Board found that the first du Pont factor "weighs heavily in favor of finding a likelihood of confusion."

The Board noted that Lucasfilm uses the MILLENNIUM FALCON mark "as a merchandising mark, part and parcel of the STAR WARS mythos in promoting Opposer's films and music, and has been the subject of licenses for numerous collateral products." The Board took judicial notice that "the licensing of commercial trademarks on 'collateral' products [and services] has become a part of everyday life."

The record shows that Opposer has since 1977, and more aggressively since Disney took over its producing, marketing, distribution, and sales in 2012, used its STAR WARS trademarks, characters, elements, and brands, including the fictional MILLENNIUM FALCON spaceship, with a wide variety of products and services including entertainment services, theater productions, television programs, motion picture films, comic books, books, toys, dolls, sporting goods, bags, personal-care products, linens, towels, apparel, food, online games, computer games, video games, music, and mobile applications.

Furthermore, Lucasfilm has used MILLENNIUM FALCON as the name of its spaceship in conjunction with STAR WARS films, television series, musical recordings, and live concerts. "The 'element' to which Opposer gave the name MILLENNIUM FALCON has been used in the various STAR WARS stories for so many decades, and is an integral part of the stories, to the point that it is akin to a character in the stories."

We find, similarly, that because Opposer has used MILLENNIUM FALCON as a merchandising mark with respect to a variety of goods; because consumers recognize that, in the general marketing environment, merchandising marks are used to identify a variety of goods and services; and because Opposer has used the term MILLENNIUM FALCON in connection with the promotion of its STAR WARS films, television series, musical recordings, and live concerts, we find that, in the sense discussed in the Recot and Hewlett Packard cases, Applicant’s services and Opposer’s goods and services are related.

The Captain’s musical performances necessarily include the same venues in which Lucasfilm provides its STAR WARS concerts. However, there was insufficient evidence that his other services are provided in the same channels and so the third du Pont factor slightly favored Lucasfilm.

As to the strength of the MILLENNIUM FALCON mark, the Board found it to be a fanciful, coined term and, therefore, an inherently strong mark. As to commercial strength, the Board was not persuaded that the MILLENNIUM FALCON mark enjoys the highest level of renown. However, it is "commercially very strong," and so the du Pont fame factor weighed in favor of a finding of likelihood of confusion.

The Captain pointed to a lack of evidence of actual confusion, but the Board fended off that argument, pointing out that the opposed application is based on intent-to-use, and noting that the Captain offered evidence of only a handful of performances under the MILLENNIAL FALCON Mark since 2016, mostly in one city, and he provided no attendance figures, box office receipts, or other sales information".

Turning to the catch-all 13th du Pont factor, the Bord found that the Captain adopted the mark MILLENNIAL FALCON with the intention of trading off of the MILLENNIUM FALCON mark. "Such intent is strong evidence that confusion is likely as such an inference is drawn from the imitator’s own expectation that consumers will associate his mark with Opposer’s."

May the Fourth (be with you)

However, because the evidence also showed that Applicant intended to parody the Lucasfilm mark, the Board considered the thirteenth factor to be neutral.

The Board concluded that confusion is likely, and so it sustained the opposition, declining to reach Lucasfilm's dilution claim.

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TTABlogger comment: Should an applicant's intent be a factor in determining likelihood of confusion? What if an applicant persuaded the Board that he didn't intent to cause confusion? Would that be a factor in his favor? Or is the question whether consumers would be confused regardless of the applicant's intent? 

On that point, see Thomas L. Casagrande's article, "A Verdict For Your Thoughts? Why an Accused Trademark Infringer's Intent Has No Place in Likelihood of Confusion Analysis," 101 Trademark Reporter 1447 (September-October 2011). [TTABlogged here].

Text Copyright John L. Welch 2020.

Decisions of the Supreme Court, the CAFC, and the TTAB on Registrability Issues: July 2019 – September 2020

I have been writing the monthly "Inside this Issue" section of Allen's Trademark Digest for about twenty years, and occasionally contribute an article under another section called "Keeping Tabs on the TTAB®." The upcoming November 2020 issue includes my article entitled, "Decisions of the Supreme Court, the Federal Circuit, and the Trademark Trial and Appeal Board on Registrability Issues: July 2019 – September 2020. [pdf here]. 

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Text Copyright John L. Welch 2020.

TTABlog Test: Is Beer Related to "Alcoholic Beverages Except Beer" for Section 2(d) Purposes?

We often scoff at the TTAB's pronouncements that there is no per se rule that all alcoholic beverages are related, but put your cynicism aside while you read this case. The Board sustained in part an opposition to registration of the mark EIDOLON for "spirits, excluding distilled blue agave liquor and mezcal; wine," finding confusion likely with Campari's registered mark ESPOLON for "alcoholic beverages except beers." However, the Board dismissed Campari's Section 2(d) claim against EIDOLON for "beer." Campari Mexico, S.A. de C.V. v. Grant Toland, Alexander Prenta and Russ Bennett, Opposition No. 91250805 (August 31, 2020) [not precedential] (Opinion by Judge Peter W. Cataldo).

The Marks: The parties and the Board all agreed that "both marks are not English word[s] and are therefore not immediately likely to be translated in the minds of English speakers.” To the extent the meaning of the marks are known to consumers, they are dissimilar. [ESPOLON is a Spanish word meaning "spur." EIDOLON is an obscure term derived from Greek literature]. The Board concluded that the marks are "more similar than dissimilar in appearance and sound, somewhat different in connotation and, overall, convey commercial impressions that are more similar than dissimilar." The first du Pont factor favored Campari.

Strength of the ESPOLON Mark: The Board found the mark ESPOLON to be arbitrary and inherently distinctive, and as to commercial strength, Campari had enjoyed "some commercial success and media recognition for its goods under the ESPOLON mark." Applicants stipulated that “Opposer’s ESPOLON brand is commercially strong and entitled to a broad scope of protection.”  The Board concluded that ESPOLON is a strong mark for alcoholic beverages and is entitled to a "broad scope of protection on the spectrum of 'very strong to very weak.'"

The Goods: As to Applicants' "spirits, excluding distilled blue agave liquor and mezcal; wine," the Board found these goods to be legally identical to Campari's "alcoholic beverages except beer." Applicants admitted same in their Answer to the Notice of Opposition.

As to Applicant's "beer," however, the Board was "not concerned that Opposer's goods specifically exclude beer."

To support a finding of likelihood of confusion, it is not necessary that the goods be identical or even competitive. The goods need only be “related in some manner or … the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.” *** The “question is whether, under all the circumstances, consumers encountering the goods sold under these marks would mistakenly believe that they share or are affiliated with or sponsored by a common source.”

Campari submitted evidence that two beverage retailers offer distribution and delivery of various beers, wines and spirits, including tequila and mescal. Applicants, on their Facebook page, discuss the production of various alcoholic beverages and explain how the same ingredients can be used to create wine, spirits and beer. On social media, Applicants publish educational posts on various distilled spirits and reviews of beers. Various articles suggest and review drinking establishments offering beer and wine as well as distilled spirits.

The Board, however, found that "the record evidence is tenuous with regard to establishing the relatedness of Opposer’s alcoholic beverages and Applicant’s beer." Campari relied heavily on decisions of the Board and its reviewing courts that found beer related to other alcoholic beverages.

Those decisions clearly were grounded in the evidentiary records presented therein, which appear to be more extensive than the record in the case presently before us. Certainly there is no per se rule that different types of alcoholic beverages are related, and reliance upon prior decisional law is not a substitute for presenting an evidentiary record to support the relatedness of beer and alcoholic beverages.

The Board concluded that "[t]he evidentiary showing in this case falls somewhat short of establishing that consumers are likely to believe that beer and other alcoholic beverages emanate from a common source." Therefore, it found that Campari had failed to establish that Applicants’ "beer" is related to Campari's "alcoholic beverages except beers."

Conclusion: Alas, Campari's glass was half full.

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TTABlogger comment: Do you think Campari will seek review by way of civil action, where it could submit additional evidence?

Text Copyright John L. Welch 2020.

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

A TTAB judge once 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 recent decisions in appeals from Section 2(d) refusals. No hints this time. How do you think these came out? [Answers in first comment].

In re Fast Casual Concepts Inc., Serial No. 88403075 (October 2, 2020) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Section 2(d) refusal of the mark shown immediately below, for "restaurant services" in view of the registered mark HOLY COW! for "bar and restaurant services." Applicant pointed to seven third-party uses of "HOLY COW" in connection with restaurants services in an effort to show the weakness of the cited mark, and it argued that the marks have different connotations and commercial impressions because the exclamation HOLY COW! in Registrant’s marks is a reference to a phrase used by a famous baseball announcer Harry Caray.].

In re Kendall S. Oliver, Serial No. 88453982 (September 30, 2020) [non precedential] (Opinion by Judge Cindy B. Greenbaum) [Section 2(d) refusal of the mark CAMBRIDGE FITNESS for "Health club services, namely, providing instruction and equipment in the field of physical exercise" [FITNESS disclaimed] in view of the registered mark CAMBRIDGE for "“counseling services, namely, counseling others in the field of weight reduction and control and nutrition” and the identical mark for “Sporting and cultural activities, namely, organizing competitive sporting events and community cultural events; providing sports coaching; sports instruction services." [owned by two different registrants]. Applicant submitted evidence of 15 websites involving health-related businesses with CAMBRIDGE-formative names, in arguing that CAMBRIDGE is a weak formative.].

 

In re Champlain Cable Corporation, Serial No. 87625822 (October 1, 2020) [not precedential] (Opinion by Judge Mark Lebow). [Section 2(d) refusal of EXRAD ERGOFLEX for "battery cable, insulated copper door wires covered in flexible jacket material," in view of the registered mark ERGOFLEX & Design, for "cables, electric; electric wires; electric wires and cables; electrical terminal boxes; electrical terminal blocks; connections for electric lines; couplings, electric; wire connectors; electric junction boxes; electrical plugs and sockets; plug connectors; electrical connectors; electric connectors." Applicant maintained that its goods are not encompassed by the goods in the registration, that "ergoflex" is highly suggestive of the flexibility of the goods, and that its ownership of a registration for EXRAD shows that that term is a strong umbrella brand that distinguishes the marks at issue.].

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

Text Copyright John L. Welch 2020.