Friday, March 31, 2023

TTAB Posts April 2023 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled eight (8) oral hearings for the month of April 2023. Five of the hearings will be held via video conference; three will be held "in-person" in Alexandria, VA. Briefs and other papers for each case may be found at TTABVUE via the links provided.



April 11, 2023 - 1 PM [Virtual]:
In re Panini America, Inc., Serial No. 88949961 [Refusal to register  SIGNATURE SERIES for "Collectible trading cards; Sports trading cards," on the ground of genericness, or alternatively, merely descriptiveness and lack of acquired distinctiveness.  ].

April 12, 2023 - 1 PM [Virtual]: In re Garan Services Corp., Serial No. 90433219 [Section 2(d) refusal of PATCH for "Entertainment services, namely, providing on-line interactive children's stories," in view of the registered mark PATCH: THE STEAMPUNK PIRATE BEAR for "Downloadable children's books."]


April 12, 2023 - 1:30 PM [Virtual]: In re Garan Services Corp., Serial No. 90433386 [Section 2(d) refusal of STRIPES for "Entertainment services, namely, providing on-line interactive children's stories," in view of the identical mark registered for "Publication of books, of magazines, of journals, of newspapers, of periodicals, of catalogs, of brochures; Publication of electronic newspapers accessible via a global computer network."]

April 20, 2023 - 9:30 AM [In-Person]: In re Walker Edison Furniture Company LLC, Serial No. 88948009 [Refusal to register HOME ACCENT FURNISHINGS for various items of furniture, on the ground of genericness [FURNISHINGS disclaimed].]



April 20, 2023 - 12 PM [In-Person]:
In re Post Foods, LLC, Serial No. 88857834 [Refusal refusal to register the proposed color mark shown below, consisting of the colors "yellow, green, light blue, purple, orange, red and pink" for "breakfast cereals" under Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127 on the ground that the color mark is not inherently distinctive and lacks acquired distinctiveness.]


April 25, 2023 - 10 AM [In-Person]: In re Kohler Co. Serial No. 88796957 [Refusal to register POWERZONE for "shower heads" for failure to function as a trademark as used on the submitted specimens.]


April 26, 2023 - 2 PM [Virtual]: In re People Online, Inc., Serial No. 90489798 [Section 2(e)(1) mere descriptiveness refusal of PEOPLE ONLINE for various Internet-related software and services.]


April 27, 2023 - 12 PM [Virtual]: Campari America LLC v. Skyyguard, Corp., Opposition No. 91246989 [Section 43(c) opposition to registration of SKYYGUARD & design for "General residential and commercial roofing contracting services" on the grounds of likelihood of dilution of the registered mark SKYY for vodka, lack of bona fide intent, and nonuse.]

Read comments and post your comment here.

TTABlog comment: See anything interesting? Any WYHA?s

Text Copyright John L. Welch 2023.

Thursday, March 30, 2023

TTABlog Test: Which of These Three Section 2(e)(1) Mere Descriptiveness Refusals Was/Were Reversed?

The Board has affirmed the first 15 Section 2(e)(1) refusals that it reviewed this year. Here are three more. At least one was reversed. How do you think these three cases came out? [Results in first comment].



Centerfield Nine Corporation, Serial No. 90399980 (March 24, 2023) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Mere descriptiveness refusal of DEALER-FIRST BLACKJACK for “Entertainment services, namely, conducting live table games of chance and conducting games of chance via a computer network" [BLACKJACK disclaimed]. Applicant argued that the proposed mark "neither describes what action, or game move, is performed first, nor the plurality of actors among whom the Dealer is first” requiring the consumer “to mentally fill in multiple blanks."]

Next Phase Enterprises, LLC, Serial No. 90632171 (March 28, 2023) [not precedential] (Opinion by Judge Angela Lykos) [Mere descriptiveness refusal of FOODIE COLLECTIVE for "Cheese; Frozen appetizers and entrees consisting primarily of meat, fish, poultry or vegetables.” Applicant argued that its proposed mark merely "suggests quality food that a ‘foodie’ would love," and that its products are "directed to the entire universe of cheese and frozen item consumers -- not merely a subset of ‘foodie’ consumers," and so "[t]his incongruous mismatch between the mark and the intended users makes FOODIE COLLECTIVE ‘suggestive’ -- not ‘merely descriptive.’"]


In re Imperative Care, Inc., Serial No. 90192571 (March 28, 2023) [not precedential] (Opinion by Judge Frances S. Wolfson) [Mere descriptiveness refusal of ADVANCED FIBER TECHNOLOGY for “Medical catheters for use in the peripheral, coronary, and neuro vasculature; Component parts of medical catheters" [FIBER TECHNOLOGY disclaimed]. Applicant contended that the term ADVANCED is ambiguous in that it at most “ connotes a vague desirable characteristic but does not describe any of Applicant’s Goods with immediacy or particularity."]



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here.

TTABlog comment: How did you do? See any WYHA?s

Text Copyright John L. Welch 2023.

Wednesday, March 29, 2023

TTABlog Test: Is EVERWILD For Distilled Spirits Confusable With EVERCLEAR for Alcoholic Beverages?

Luxco, Inc. opposed applications to register EVERWILD (in standard form) and EVERWILD SPIRITS & design, both for "distilled spirits," claiming likely confusion with its registered mark EVERCLEAR for alcoholic beverages except beer. The Board found the involved goods to be legally identical, but what about the marks? How do you think This came out? Luxco, Inc. v. Everwild Spirits, LLC, Opposition No. 91268045 (March 24, 2023) [not precedential] (Opinion by Judge Thomas W. Wellington).

The Board observed that "[t]he legal identity of the goods and their channels of trade and classes of purchasers weighs heavily in favor of finding a likelihood of confusion." 

Turning to the strength of the cited mark, the Board noted that because EVERCLEAR is registered on the Principal Register, it is presumed to be inherently distinctive. However, the Board found that the mark has "some conceptual weakness due to its suggestive meaning." Commercial strength, however, was a different story. Based on one hundred years of use, impressive sales figures, and high brand recognition, the Board found the mark to be "very well-known and a commercially very strong mark and thus entitled to a broad scope of protection."

Comparing the marks, the Board concluded that "[t]he shared prefix EVER renders the marks similar to one another in sight and sound," and it noted "the dearth of evidence of others using an EVER-formative mark in connection with distilled spirits or wine." The differences in the marks "weighs somewhat in favor of finding confusion likely." [somewhat? - ed.]

Balancing the DuPont factors, the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: I don't buy it. Note that Luxco did not offer a likelihood of confusion survey.

Text Copyright John L. Welch 2023.

Tuesday, March 28, 2023

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

The Board has affirmed 36 of the first 38 Section 2(d) refusals that it reviewed this year. Here are three more. At least one was reversed. How do you think these three cases came out? [Results in first comment].



In re 77 Enterprises LLC, Serial No. 87639234(March 24, 2023) [not precedential] (Opinion by Judge Marc A Bergsman) [Section 2(d) refusal of 77 SPORTBAR for “bar and restaurant services, namely providing of food and beverages for consumption on the premises; restaurant and sports bar services with televisions on premises,” in view of the registered mark 77 SOCIAL CLUB and design for “catering services; restaurant and bar services."]

In re Panini America, Inc., Serial No. 90004362 (March 22, 2023) [not precedential] (Opinion by Judge Peter W. Cataldo). [Section 2(d) refusal of KABOOM! for “Collectible sports trading cards; Sports trading cards,” in view of the identical mark registered for "Comic books; magazines featuring printed stories in illustrated form and comic book stories and artwork, namely, comic magazines; printed periodicals in the nature of magazines in the field of comic book stories and artwork; series of comic book style novels; series of non-fiction books in the field of comic books."

In re Florentina Iulia Vaida, Serial No. 990029026 (March 24, 2023) [not precedential] (Opinion by Judge Cindy B. Greenbaum, with dissent by Judge Robert H. Coggins) [Section 2(d) refusal of the mark VA & design (below left) for numerous goods in five International Classes, including jewelry handbags, sweaters, t-shirts, and footwear, in view of the mark VA (Stylized) (below right) registered for, inter alia, jewelry handbags, sweaters, t-shirts, and footwear.]


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here.

TTABlog comment: How did you do? See any WYHA?s

Text Copyright John L. Welch 2023.

Monday, March 27, 2023

TTAB Launches Pilot Program for Final Pretrial Conferences, Requiring Detailed Joint Pretrial Order

In another step that will make TTAB proceedings as complicated and expensive as civil litigation, the TTAB has announced its implementation of a pilot program for holding a Final Pretrial Conference in selected cases. [Announcement here]. The Board will focus on cases with large or unwieldy records, "overly contentious" proceedings, and cases in which the parties or counsel are unfamiliar with TTAB practice. The parties will be required to file a detailed Final Joint Pretrial Order [Model Format here] setting forth the issues, witnesses, exhibits, objections, etc., etc.



The United States Patent and Trademark Office (USPTO), Trademark Trial and Appeal Board (TTAB) has begun a pilot program for holding Final Pretrial Conferences in certain inter partes (trial) cases to better manage and streamline opposition and cancellation proceedings that proceed to trial. The goal of the pilot is to save time and resources of parties and the TTAB, and to foster the effective and efficient presentation of evidence.

***

The conference will be scheduled by the TTAB and held sometime after the close of discovery but before the usual deadline for the Plaintiff’s Pretrial Disclosures. During the conference, the ATJ and IA will review with the parties their proposed FPC Order. Once final, the FPC Order will limit what the parties may pursue at trial.


Stakeholders may provide feedback regarding the pilot program and the FPC Order template, via TTABFeedback@uspto.gov.


Read comments and post your comment here.

TTABlogger comment: I am not looking forward to this program. The only time it might be helpful would be in a really complicated case (rare). Mostly, it will drive up costs and benefit the party with deep pockets. On the other hand, the FPC Order template could be  useful during the course of a proceeding to help a party organize its case and focus on what it needs to prove and how it's going to prove it.

Text Copyright John L. Welch 2023.

Friday, March 24, 2023

TTABlog Test: Is "THE HARRIMAN HOTEL" Primarily Merely a Surname for Hotel Services?

The USPTO refused to register THE HARRIMAN HOTEL for hotel, real estate, and health spa services, deeming the mark to be primarily merely a surname under Section 2(e)(4). Applicant argued that HARRIMAN is a rare surname (ranking 6694th in the 2010 Census list of surnames occurring 100 or more times), and that, because William Averell Harriman is an historical figure, HARRIMAN would not likely be perceived by consumers as primarily a surname but rather would be seen as referring specifically to him. How do you think this came out? In re Harriman Hotel, LLC, Serial No. 90096825 (March 22, 2023) [not precedential] (Opinion by Judge Albert Zervas).

The Board first considered "the frequency of, and public exposure to, [HARRIMAN] as a surname … keeping in mind that ‘[t]he relevant question is not simply how frequently a surname appears . . . but whether the purchasing public for Applicant’s services is more likely to perceive Applicant’s proposed mark as a surname rather than as anything else." See, for example, Beds & Bars, 122 USPQ2d at 1551 (BELUSHI found to be primarily merely a surname even though only five people in the United States had the surname “Belushi”).

Examining Attorney Vivian Micznik First submitted evidence regarding William Averell Harriman, who "held positions of prominence during the not too distant past, and thus may be known to a segment of the U.S. population." Harriman was a prominent and accomplished businessman and politician who served as chairman of the Union Pacific Railroad, Governor of New York, Ambassador to the United Kingdom, Ambassador to the Soviet Union, Secretary of Commerce, Assistant Secretary of State and a Democratic presidential candidate in 1956. He also was the founder of Sun Valley Idaho, a winter sports destination.

The Board noted applicant’s statement on its website that it "honors those contributions and his legacy by proudly affixing his name to this stunning new hotel that calls his precious Sun Valley home," which statement suggests that "consumers are or will be exposed to Mr. Harriman’s name on Applicant’s website and that consumers hence are likely to view HARRIMAN, as it appears in Applicant’s proposed mark, as a surname."

The Board concluded that the evidence supports a finding that HARRIMAN is likely to be perceived primarily as a surname.

Turning to the historical name issue, the Board observed that "[t]he decisions addressing historical names generally draw a line between widely recognized names that are almost exclusively associated with a specific historical figure (are thus not considered primarily a surname)." Applicant's evidence in support of this argument was mostly "not of a recent vintage or mentions Mr. Harriman in passing, and hence is not particularly helpful to Applicant."

The Board also noted that others in the Harriman family attained some notoriety, including a wife, father, and brother. The Board therefore found that the term “Harriman” does not point only to one, historical figure.

Applicant also pointed to several geographical locations, including Harriman State Park in New York, Harriman State Park in Idaho, and Harriman Glacier in Alaska, to show that the term has non-surname meanings. However, there was no evidence that these localized uses would be known generally to U.S. consumers.

Finally, the Board found that the words THE and HOTEL do not change the surname significance of the proposed mark: "Combining a surname, such as HARRIMAN, with the generic name for the services, i.e., HOTEL, and adding the term THE, does not overcome the proposed mark’s surname significance."

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: What an incredible career!

Text Copyright John L. Welch 2023.

Thursday, March 23, 2023

TTABlog Test: Is CAMP WALDO for Summer Camps Confusable with THE WALDO SCHOOL for Primary Schools?

The USPTO refused to register the proposed mark CAMP WALDO for "summer camps" [CAMP disclaimed] on the ground of likely confusion with the registered mark THE WALDO SCHOOL for "educational services in the nature of primary schools" [SCHOOL disclaimed]. Evidence of third-party registration and use by entities that offer both summer camps and educational services convinced the Board that the involved services are related. As to the marks, applicant argued that "Waldo" is a weak formative, pointing to twenty or so schools with names that include the word "Waldo," including schools in Waldo, Maine and Waldo, Florida. How do you think this came out? In re Appalachian Headwaters, Inc., Application Serial No. 90448759 (March 21, 2023) [not precedential] (Opinion by Judge Marc A. Bergsman).

The third-party website evidence established that educational services and summer camp services are offered via the same websites to the same consumers. And so, the Board found the involved services "are offered in the same channels of trade to the same consumers and, therefore, this DuPont factor weighs in favor of finding a likelihood of confusion."

Turning to the strength of the cited mark, the Board found THE WALDO SCHOOL to be inherently distinctive, noting that it is registered on the Principal Register without a claim of acquired distinctiveness and therefore is entitled to the benefits accorded registered marks under Section 7(b).

As to commercial strength, only one of the registrations that applicant submitted covered educational services, and that was owned by the cited registrant. As to third-party website evidence, there were "three WALDO school names where Waldo refers to the name of the city where the school is located, seven Waldo-formative school names located in cities other than Waldo of which Waldo is a given name in five of the schools (e.g., Waldo Pafford Elementary School), and 11 RALPH WALDO EMERSON school names."

The Board noted, however, that Ralph Waldo Emerson is the name of the renowned American essayist and poet, and is a unitary term or name that engenders a different commercial impression than the singular name "Waldo" because it points uniquely to a singular, well-known individual.

Likewise, the marks where WALDO is a given name (e.g., WALDO PAFFORD ELEMENTARY SCHOOL) creates a different commercial impression than WALDO alone. Second, the WALDO schools located in cities named Waldo has a geographic significance that does not necessarily apply with Registrant’s mark THE WALDO SCHOOL. Finally, the entities using WALDO and WALDO-formative names are generally in disparate geographic locations indicating that consumers are unlikely to encounter multiple WALDO educational facilities and, thereby distinguish among them by looking at features other than the name "Waldo."


Nonetheless, these third-party uses cannot be ignored; they negatively affect the cited mark in that the mark is "not entitled to such a broad scope of protection that THE WALDO SCHOOL will be a bar to every application consisting in whole, or in part, of the name WALDO." The registered mark will bar "only the registration of marks as to which the resemblance to [THE WALDO SCHOOL] is striking enough to cause one seeing it to assume that there is some connection, association, or sponsorship between the two."

Comparing the marks, and noting the applicable disclaimers, the Board found WALDO to be the dominant element in both marks. "The peripheral differences between the marks in this appeal – CAMP WALDO versus THE WALDO SCHOOL – fail to distinguish the marks." The Board concluded that the similarities in the marks outweigh the differences.

Applicant argued that consumers sending their children to summer camp will exercise a high degree of care because “they are selecting a place to which they will send their child unaccompanied for a substantial period of time” and "understand the identity of the provider of the service.” The Board was not impressed, observing that applicant's argument is based on the incorrect premise that all summer camps are overnight camps. Examining Attorney Julie Watson's evidence of third-party use was not limited to overnight camps. And so the Board found this DuPont factor to be neutral.

Balancing the relevant DuPont factors, the Board found confusion likely and it affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlogger comment: Where's Camp Waldo? Hinton, West Virginia. Where's The Waldo School? Jersey City, NJ.

Text Copyright John L. Welch 2023.

Wednesday, March 22, 2023

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

A TTAB judge once told me that one can predict the outcome of a Section 2(d) case 95% of the time by just looking at the involved goods and services and the marks. Maybe he or she was referring to ex parte cases only. Anyway, let's see how you do with the three oppositions summarized below. Answer(s) in the first comment.

Volvo Truck Corporation v. Mac Tíre Clothing LLC , Opposition No. 91264810 (March 13, 2023) [not precedential] (Opinion by Judge Marc A. Bergsman) [Opposition to registration of MAC TÍRE CLOTHING for various clothing items, including shirts and hats [CLOTHING disclaimed], in view of the registered marks MACK for trucks and for "sweaters including fleece pullovers, polo shirts, T-shirts, shirts including dress shirts, caps including knit caps and fleece caps, sport jackets, sweatshirts, pants, namely, jogging pants, coats, neckwear; outerwear, namely, leather jackets; jeanswear, namely, jeans, work coveralls of denim, jean jackets, jean shirts" and MACK TRUCKS and design for "shirts and hats."]

Greater Orlando Aviation Authority v. Sanford Airport Authority, Oppositions Nos. 91234602 and 91235774 (March 14, 2023) [not precedential] (Opinion by Judge Martha B. Allard). [Section 2(d) opposition to registration of ORLANDO SANFORD INTERNATIONAL AIRPORT, in standard character form [INTERNATIONAL AIRPORT disclaimed] and in the logo form shown first below [ORLANDO SANFORD and INTERNATIONAL AIRPORT disclaimed], for "airport services," in view of the mark ORLANDO INTERNATIONAL AIRPORT, in standard character form and in the registered logo form shown second below [INTERNATIONAL AIRPORT disclaimed] for "airport services."].



San Diego Comic Convention v. Erik Yacko, Opposition No. 91263787 (March 17, 2023) [not precedential] (Opinion by Judge Thomas W. Wellington) [Section 2(d) opposition to the word-plus-design mark shown below, for "conducting entertainment exhibitions in the nature of comic book and pop culture conventions" in view of the registered mark COMIC-CON for “education and entertainment services, namely, organizing and conducting conventions in the fields of animation, comic books and popular art."].

Read comments and post your comment here.

Text Copyright John L. Welch 2023.

Tuesday, March 21, 2023

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

Here are three recent appeals from Section 2(d) refusals. As previously mentioned, a former TTAB judge once told 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 involved goods and services. How do you think theses three cases came out? [Results in first comment].



Better Life Nutritional Supplements, LLC, Serial No. 90389844 (March 13, 2023) [not precedential] (Opinion by Judge Cindy B. Greenbaum) [Section 2(d) refusal of WAKE-UP CALL for "Dietary supplements; Nutritional supplements," in view of the registered mark WAKE UP CALL for "Skin care products, namely, non-medicated skin serum."

Speymalt Whiskey Distributors Ltd, Serial No. 79296030 (March 16, 2023) [not precedential] (Opinion by Judge Peter W. Cataldo) [Section 2(d) refusal of THE CAIRN for “Spirits and liqueurs; whisky and whisky-based liqueurs; but insofar as whisky and whisky-based liqueurs are concerned, only Scotch whisky and Scotch whisky-based liqueurs," in view of the registered mark CAIRN BREWING for "beer" [BREWING disclaimed] and CAIRN BREWING & Design, shown below, for "taproom services, taproom services featuring craft beer" (KENMORE WASHINGTON BREWING disclaimed).]

In re Jon Wayne Heating & Air Conditioning, Inc., Serial No. 87065528 (March 16 2023) [not precedential] (Opinion by Judge Thomas W. Wellington) [Section 2(d) refusal of the mark JW (Stylized), shown below, for "an extensive list of services, including contractor, repair, installation, maintenance, and technical support services in the fields of heating, ventilation, air conditioning, plumbing, insulation, solar energy, and home automation," in view of the registered mark JW HOME IMPROVEMENT for various handyman services, including custom carpentry and building repair and maintenance [HOME IMPROVEMENT disclaimed]].

Read comments and post your comment here.

TTABlog comment: How did you do? See any WYHA?s

Text Copyright John L. Welch 2023.

Monday, March 20, 2023

TTAB Orders Cancellation of Safety Helmet Registrations Due to Lack of Acquired Distinctiveness

In a whopping 163-page opinion, the Board granted a petition for cancellation of two registrations for the configuration of safety helmets, rejecting Petitioner Honeywell's Section 2(e)(5) functionality claim but sustaining Honeywell's claim of lack of acquired distinctiveness. The Board noted that "[t]he Respondent’s failure to comply with its discovery and disclosure obligations plays a pivotal role in our determination." [This blog post will summarize the high points of the decision.]. Honeywell Safety Products USA, Inc. v. ERB Industries, Inc., Cancellation No. 92070774 (March 13, 2023) [not precedential] (Opinion by Judge Angela Lykos).

The marks consist of the "three dimensional configuration of two ridges located along the center of a safety helmet," one helmet with a surrounding brim and the other with a short brim at the front. (referred to as the "Ridge Designs").

Discovery Sanctions: The Board made certain adverse inferences against Respondent ERB for failure to comply with a Board order compelling interrogatory answers, including inferences that Respondent ERB did not conduct any look-for advertising and did not conduct any survey to show acquired distinctiveness.

Section 2(e)(5) Functionality: Honeywell alleged that the Ridge Designs are "essential to the use or purpose of the registered goods, in that they function to help absorb impact and increase stability” and put “competitors at a significant competitive disadvantage since there are only a limited number of ways to design a safety helmet to absorb impact in a cost-effective manner." The Board framed the issue as follows:

[W]e must determine whether the Ridge Designs as depicted in the ’481 and ’482 registrations are essential to their use or purpose or affect the cost or quality of the product [the Supreme Court's Inwood standard], that is, whether allowing the trademark registrations to continue to exist will hinder competition. In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 USPQ 9, 12-15 (CCPA 1982). In other words, the issue is whether the designs of both safety helmets work better in the configurations at issue.


If functionality is established under Inwood, further inquiry under the Morton-Norwich factors is unnecessary. See TrafFix, 58 USPQ2d at 1006.

After an exhaustive review of the evidence, the Board concluded that Honeywell "failed to meet its burden under the preponderance of the evidence standard [to] rebut the presumption that Respondent's Ridge Designs are valid and nonfunctional under Inwood." The Board noted that it might have found otherwise on a more developed record.

The Board then turned to the Morton-Norwich factors:

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

There was no relevant patent or patent application, and so the first factor favored Respondent ERB. As to the second factor, there was no evidence of advertising touting the utilitarian benefits of the Ridge Designs. As the the third, the record included many alternative designs, thus favoring ERB. And finally, there was no proven benefit to the Ridge Designs in terms of ease or cost of manufacture.

And so, the Board concluded that Honeywell had failed to make a prima facie case of invalidity under Section 2(e)(5).

Lack of Acquired Distinctiveness: Of course, product designs cannot be inherently distinctive and are registrable as trademarks only upon a showing of acquired distinctiveness under Section 2(f). The party seeking to cancel a registration for lack of acquired distinctiveness bears the initial burden to make a prima facie case.

To satisfy this initial burden, the party seeking cancellation must “present sufficient evidence or argument on which the board could reasonably conclude' that the party has overcome the record evidence of acquired distinctiveness—which includes everything submitted by the applicant during prosecution. The burden of producing additional evidence or argument in defense of registration only shifts to the registrant if and when the party seeking cancellation establishes a prima facie showing of invalidity. The Board must then decide whether the party seeking cancellation has satisfied its ultimate burden of persuasion, based on all the evidence made of record during prosecution and any additional evidence introduced in the cancellation proceeding.


In making its determination regarding acquired distinctiveness, the Board looked to the CAFC's Converse factors:

  • (1) association of the trade[mark] with a particular source by actual purchasers (typically measured by consumer surveys); 
  • (2) length, degree, and exclusivity of use;
  • (3) amount and manner of advertising; 
  • (4) amount of sales and number of customers; 
  • (5) intentional copying; and 
  • (6) unsolicited media coverage of the product embodying the mark.
The Board found "minimal direct evidence" that consumers perceive the Ridge Designs as source indicators, giving Respondent ERB's testimony from its own employees little weight and noting the absence of survey evidence. ERB's claim of long use (2004 and 2008) was not necessarily persuasive in the context of a product configuration.

With regard to exclusivity of use, the record failed to support a finding that "other marketplace uses are significant enough to conclude that Respondent’s marks have not been in substantially exclusive use." The Board noted that on a more developed record it might find otherwise.

ERB's evidence regarding advertising and promotional expenditures were both questionable and lacking in marketplace context. As to look-for advertising, in addition to the adverse inference drawn by the Board, there was no attempt in ERB's advertising to call attention to the Ridge Designs as source indicators. ERB's sales figures were not impressive, and they also lacked marketplace context. And there was no evidence of intentional copying or of media coverage.

The Board concluded that Honeywell had made a prima facie case that the Ridge Designs lacked acquired distinctiveness. The burden then shifted to Respondent to provide "additional evidence or argument" in this cancellation proceeding. Petitioner Honeywell, however, bore the ultimate burden of proof by a preponderance of the evidence.

ERB failed to produce any additional evidence or argument to overcome Honeywell's prima facie showing, and so the Board found that Honeywell had "satisfied its ultimate burden of persuasion under the preponderance of the evidence standard"

And so, the Board ordered that the two registrations be cancelled.


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TTABlogger comment: Exhaustive and exhausting.

Text Copyright John L. Welch 2023.