Friday, November 16, 2018

CAFC Vacates and Remands TTAB's OMAHA STEAKS v. GREATER OMAHA Decision

The CAFC vacated the TTAB's September 30, 2017 decision in Omaha Steaks International, Inc. v. Greater Omaha Packing Co., Inc., Consolidated Opposition No. 91213527 and Cancellations Nos. 92059629 and 92059455 [TTABlogged here] in which the Board found the mark GREATER OMAHA PROVIDING THE HIGHEST QUALITY BEEF & Design (shown below) for "meat, including boxed beef primal cuts" not likely to cause confusion with the registered mark OMAHA STEAKS for meat. The appellate court found that the Board's analysis regarding the fame of the OMAHA STEAKS mark was "legally flawed," and that the Board's consideration of third-party uses "improperly relied on marks found on dissimilar goods and services not directed to the relevant public." Omaha Steaks International, Inc. v. Greater Omaha Packing Co., Inc., Appeal No. 2018-1152 (Fed. Cir. November 15, 2018) [precedential].

Omaha Steaks challenged the Board's decision in three areas: first, it contended that the Board ignored evidence of the fame of the OMAHA STEAKS marks under the fifth du Pont factor; second, it argued that the Board relied on a much broader range of goods lacking any similarity to meat products when evaluating the sixth du Pont factor, which examines the number and nature of third-party uses of similar marks on “similar goods;” and third, it maintained that the Board’s analysis of the similarity between the marks was flawed because the Board ignored the word “BEEF” in Greater Omaha's slogan "Providing the Highest Quality Beef."

Fame: As to the evidence of fame, the court agreed with Omaha Steaks that the TTAB's discounting of the evidence of fame was "legally flawed." The Board interpreted Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 1370 (Fed. Cir. 2002), to require evidence of  “market share,” not just sales and advertising figures. Not so, said the CAFC: "Though Bose expressly approves of using market share, it does not require it."

In light of our holding in Bose, the Board took an overly restrictive view of evidence related to Omaha Steaks’ sales figures, advertising expenditures, and related evidence of the relevant public’s exposure to its branded meat products bearing on the relative fame of the mark. Accordingly, we vacate and remand to allow the Board to conduct a proper analysis of this factor.

The CAFC concluded that the Board did not err in ruling that Omaha Steaks' survey evidence was flawed and lacked probative value because the universe surveyed was too narrow. Nor did the Board err in refusing to take judicial notice of the contents of the complaints filed in various litigations identified by Omaha Steaks. "The Board is not required to scour, not just the dockets, but the multiple pleadings referenced in those dockets to determine the substance of the litigations referenced."

Third-party uses: The sixth du Pont factor considers “[t]he number and nature of similar marks in use on similar goods.” In re du Pont, 476 F.2d at 1361. Third-party use is “relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection,” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373 (Fed. Cir. 2005), because consumers have become accustomed to distinguishing between different marks "on the bases of minute distinctions." Id. at 1374.

Although the Board found the involved goods to be legally identical, it "considered a variety of services and products that include the word 'Omaha,' regardless of whether they involve meat." Although finding that this evidence was “not overwhelming," the Board deemed the evidence sufficient to support a finding that the term OMAHA "may be perceived as an indication of the geographic location of the producer of the goods or the geographic origin of the goods themselves." The Board then determined that "OMAHA" is weak as a source indicator and that marks including the word OMAHA are entitled to only a narrow scope of protection.

The Board’s analysis was flawed. As we underscored in Century 21, the “relevant du Pont inquiry is ‘[t]he number and nature of similar marks in use on similar goods.’” Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877 (Fed. Cir. 1992) (quoting Weiss Assocs., Inc. v. HRL Assocs., Inc., 902 F.2d 1546, 1548 (Fed. Cir. 1990)).

The Board cited to a list of businesses with OMAHA in their names, offering diverse products like popcorn, wine, oriental food, and alcoholic beverages. The CAFC observed that "these goods bear no relationship to meat or meat-based products. Accordingly, such goods are not 'similar' to meat products."

Greater Omaha argued that these third party products are "similar" to meat because they are food products. The court was unmoved. It found no evidence that these other products are related to meat.

GOP’s mark on meat products cannot escape a likelihood of confusion with Omaha Steaks’ prior use on meat products in the relevant market for meat purely because other “Omaha” marks are being used by third parties on popcorn, alcoholic beverages, or other food products. Independent of these third-party uses on other goods, there may still be confusion between Omaha Steaks’ marks and GOP’s new mark for consumers purchasing meat.

Because the Board's analysis under the sixth du Pont factor was "fatally flawed," the court vacated its finding and remanded the case with instructions to the Board to "reweigh the limited, relevant evidence of third-party use." [The remaining evidence consisted of third-party meat products from meat processing or packaging companies, such as B.I.G. Meats Omaha, Omaha Beef Company, and Omaha Meat Processors.]

Where's the BEEF? Omaha Steaks' third argument rested on a single sentence in the Board opinion: "Defendant’s mark is dominated by the words GREATER OMAHA; they are the first words in the mark, are visually larger than the laudatory slogan, 'PROVIDING THE HIGHEST QUALITY,' and are the words that would be used to call for the goods." The CAFC observed that the omission of the word BEEF appeared to be a typographical error, and it noted that on seven other occasions the Board correctly referred to the entire slogan.

The CAFC concluded that the Board had "adequately assessed the slogan," and in fact had found the slogan to be one of the differences in the overall appearances of the involved marks. In short, there was no error in the Board's analysis.

However, because the Board's findings regarding the strength of the term OMAHA were vacated, the Board must reconsider its conclusion under the first du Pont factor.

Conclusion: "For the foregoing reasons, we vacate the Board’s decision that there is no likelihood of confusion between Omaha Steaks’ and GOP’s marks, and we remand for further proceedings consistent with this opinion."

Read comments and post your comment here.

TTABlog comment: The CAFC's treatment of third-party uses leaves something to be desired. Don't the uses of OMAHA-containing marks for popcorn, wine, etc., show the weakness of OMAHA as a formative because they confirm that the term is used as a geographic descriptor for food that originates in Omaha, where Omaha Steaks is located?

Text Copyright John L. Welch 2018.

Thursday, November 15, 2018

TTAB Finds AIR NZ Legally Equivalent to Registered AIR NEW ZEALAND, Acquired Distinctiveness Overcomes Geographical Refusal

Applicant Air New Zealand overcame a Section 2(e)(2) geographical descriptiveness refusal of AIR NZ for various air transportation services, convincing the Board to find acquired distinctiveness under Rule 2.141(a)(1) in view of applicant's ownership of a registration for AIR NEW ZEALAND for the same mark for the same or related services. The examining attorney unsuccessfully argued that, although NZ means NEW ZEALAND, it also has other meanings and therefore the two marks are not legally equivalent. In re Air New Zealand Ltd., Serial No. 79192386 (November 9, 2018) [not precedential] (Opinion by Judge David K. Heasley).

Applicant pointed out the incongruity in the Examining Attorney's position that, for purposes of the Section 2(d) refusal, the primary significance of ‘NZ’ is New Zealand, but as to the Section 2(f) claim, AIR NZ does not convey the same commercial impression as AIR NEW ZEALAND. Applicant argued that "[I]t is inconceivable that a consumer who comes across the Applicant’s mark ‘AIR NZ’ is going to think of any other airline besides ‘Air New Zealand’ or any other airline company besides the Applicant."

Applicant's unconditional claim of acquired distinctiveness under Section 2(f), in response to the refusal to register, was a concession that its mark is primarily geographically descriptive of the services [or at lest a concession that it's not inherently distinctive - ed.].

Trademark Rule 2.41(a)(1) provides that "[i]n appropriate cases, ownership of one or more active prior registrations on the Principal Register . . . of the same mark may be accepted as prima facie evidence of distinctiveness if the goods or services are sufficiently similar to the goods or services in the application; however, further evidence may be required."

Applicant's registration for AIR NEW ZEALAND issued in 2012 based on acquired distinctiveness. Applicant maintained that AIR NZ and AIR NEW ENGLAND are legal equivalents. Under Rule 2.41, "same mark" does not mean "identical mark."

A proposed mark is the ‘same mark’ as a previously registered mark if it is the ‘legal equivalent’ of such mark,” that is, “if it creates the same, continuing commercial impression such that the consumer would consider them both the same mark." In re Dial-A-Mattress, 57 USPQ2d at 1807, 1812 (Fed. Cir. 2001).

Applicant submitted various items of evidence, including dictionary definitions of "NZ," Google brand search engine results showing that a search for "NZ" yields the result "New Zealand, and evidence that NZ is the the country code for the New Zealand Internet top level domain.

The examining attorney contended that NZ can have other meanings: "An algebra book shows NZ means 'not zero,' The Neutral Zone is an online store and uses NZ to reference its website, and Sporting Charts shows NZ is used to explain neutral zone starts." He also pooh-poohed applicant's evidence, claiming that it did not show how consumers will interpret “NZ” in connection with airline services.

The Board noted that the two marks are highly descriptive, and so the Section 2(f) hurdle is "commensurately high." There was no dispute that applicant’s prior registration and current application "recite essentially the same airline services," i.e., they are “sufficiently similar.” The issue was "whether consumers of those same airline services would view AIR NZ as conveying the same, continuing commercial impression." The Board found that they would.

"[N]icknames and even abbreviations and maps of geographical areas and the name of the geographical area that they identify are, for purposes of registration, identical, and . . . the same criteria for registration must necessarily apply thereto." In re Charles S. Loeb Pipes, Inc., 190 USPQ 238, 246 (TTAB 1975) (emphasis added by the Board).

Applicant's mark must be viewed in the context of airline services; the alternative meanings proposed by the examining attorney are not probative. "Taken as a whole, AIR NZ retains the same structure as AIR NEW ZEALAND, a structure consumers would tend to recognize and associate with Applicant."

And given the consuming public’s penchant for shortening place names, see In re South Park Cigar Inc., 82 USPQ2d 1507, 1512 (TTAB 2007), Applicant’s contraction of the country name NEW ZEALAND into the initialism NZ neither adds nor subtracts anything to or from the origin-indicating significance of AIR NEW ZEALAND. The relevant public would tend to view AIR NZ as a shorthand version of the original mark.

Conclusion: The Board found that AIR NZ is the legal equivalent of AIR NEW ZEALAND, and further that AIR NZ has acquired distinctiveness by virtue of Applicant’s prior active registration of AIR NEW ZEALAND. "Because it has acquired distinctiveness, the mark AIR NZ no longer causes the public to associate the services with a particular place, but to associate them with a particular source."

Therefore the Board affirmed the Section 2(e)(2) refusal but "the refusal on the ground that it has not acquired distinctiveness under Section 2(f) is reversed."

Read comments and post your comment here.

TTABlog comment: I disagree with the wording of the Board's conclusion. Section 2(f) is not a ground for refusal. Section 2(f) allows an applicant to overcome a refusal, such as geographical descriptivenes. So marks may be registered "under" Section 2(f) but they can't be refused under Section 2(f).

Text Copyright John L. Welch 2018.

Tuesday, November 13, 2018

TTAB Test: Is ATHLETE INTELLIGENCE Merely Descriptive of Wearable Monitoring Devices?

The USPTO refused registration of the mark ATHLETE INTELLIGENCE, in standard character form, for wearable monitoring devices and systems. Applicant argued that the mark is merely suggestive of the goods because "multistep reasoning" would be need to extract any information from the mark, and further argued that the mark is a double entendre. How do you think this came out? In re i1 Sensortech, Inc., Serial No. 87249539 (November 9, 2018) [not precedential] (Opinion by Judge Angela Lykos).

Examining Attorney Andrew Leaser submitted dictionary definitions of "athlete" and "intelligence," one of the definitions of "intelligence" being "information." Competitors use "intelligence" to describe biometric data or information collection products for athletes.

Within the context of Applicant’s Class 9 and Class 10 goods, purchasers will immediately recognize that the word ATHLETE in Applicant’s mark designates the person wearing Applicant’s “monitoring device and system … comprised of electronic sensors”, and that INTELLIGENCE refers to the gathering of information measuring an individual athlete’s biometrics, positioning and speed, physiology as well as the magnitude and effects of any physical impacts.

The Board concluded that applicant's mark immediately conveys a feature and purpose of the goods: they are designed to collect intelligence from athletes, such as information and data, regarding the performance, health and medical safety of athletes." Applicant's website supports this finding.

Applicant offered various other meanings of its mark, but the Board observed that the marks must be considered in the context of the goods. "[T]he question of whether a proposed mark is merely descriptive is not determined by asking whether one can guess, from the mark itself, what the goods are, but rather by asking, when the mark is seen on or in connection with the goods, whether it immediately conveys information about their nature." Here, no imagination or thought is required to discern the nature of applicant's goods.

As to the double entendre argument, applicant relied on an article on degenerative brain disease suffered by athletes who have sustained multiple concussions. Since concussions are in the news, according to applicant, ATHLETE INTELLIGENCE could be perceived as a reference to or "play" on the idea of preserving the intelligence of an athlete engaged in contact sports.

The Board pointed out that the double connotations of the mark "must be associations that the public would make fairly readily." Both meanings must be readily apparent from the mark itself, without reference to other indicia. The record did not support "a finding that [the] alternative meaning of a 'play' on an athlete's intelligence is well-known or readily apparent such that this alternative meaning might be called to mind."

Read comments and post your comment here.

TTABlog comment:  Mere descriptiveness is not a guessing game. How did you do?

Text Copyright John L. Welch 2018.r

Monday, November 12, 2018

TTAB Awards Junior User USA Minus Oregon in GREENFIELD Concurrent Use Proceeding

In this concurrent use proceeding, the Board ordered restriction of a registration for the mark GREENFIELD for various healthcare services, to the state of Oregon. Applicant successfully sought concurrent use registrations for the marks GREENFIELD ASSISTED LIVING and GREENFIELD SENIOR LIVING for assisted living facilities in the remainder of the United States. Greenfield Senior Living, Inc. v. Greenfield Health System, LLC, Concurrent Use Proceeding No. 94002722 (November 7, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).

Applicant began use of its marks in 2002 and 2005, more than seven years before registrant filed its application to register. It has expanded to five states, expended more than $100 million in expansion efforts, and spent hundreds of thousands of dollars on advertising and marketing.

Registrant's services are offered at two locations in Portland, Oregon. Applicant's uncontroverted testimony indicated that it adopted its marks in good faith without knowledge of registrant or its mark.

The question, then was what are the "registrable rights" of the parties as to the parts of the United States in which they have not used their respective marks?

The senior user is prima facie entitled to a registration covering the entire United States. "Such a prior user, who applies for a registration before registration is granted to another party, is entitled to a registration having nationwide effect no less than if there were no concurrent user having registrable rights." Those rights should be limited "only to the extent that any other subsequent user, who can establish the existence of rights earlier than the prior user's application for registration, can also prove a likelihood of confusion, mistake, or deception." In re Beatrice Foods Co., 429 F.2d 466, 166 USPQ 431, 436 (CCPA 1970)). However, this presumption in favor of the senior user can be overcome.

The Board first considered the likelihood of confusion issue, and concluded that confusion would not be likely if an appropriate geographic restriction were imposed. The lack of actual confusion over the 15 years of coexistence was relevant to this determination. Moreover, it is not necessary that all possible confusion be eliminated. And the fact that both parties' services are advertised online is not enough to result in a likelihood of confusion, particularly since there was no evidence that registrant has expanded beyond two locations in Oregon or that it enjoys a reputation beyond Oregon.

The next issue was the appropriate geographic restriction. Actual use in an area is not necessary to establish rights there. The inquiry should focus on a number of factors, including the party's past business activity, previous expansion (or lack thereof), and planned expansion. Applying those criteria, the Board found that "the general policy of favoring the first to register is inapplicable and that all other relevant factors favor Applicant. Indeed, Applicant, as the prior user [in its territory], would likely prevail, on the facts present herein, in a petition to cancel the registered mark [actually, the registration, not the mark - ed.], had such a course of action been taken."

Registrant (appearing pro se), did not present any evidence as to its promotional efforts or expansion plans. The Board found that registrant, through inaction over a considerable time period, has abandoned its right to expand use of its mark beyond its trading area. It therefore cannot preclude applicant from "filling the territorial void left by Registrant."

The Board concluded that "the purpose of the statute is best served by granting Applicant registrations for the entire United States except for Registrant's trading area, i.e., the state of Oregon."

Read comments and post your comment here.

TTABlog comment: In concurrent use proceedings involving service marks, Internet usage doesn't seem to matter much since the services are typically rendered locally. What about Software as a Service?

Text Copyright John L. Welch 2018.

Friday, November 09, 2018

A Few New Orleans Photos From INTALM

Thursday, November 08, 2018

TTABlog Celebrates 14th Anniversary!

The TTABlog was launched on November 8, 2004, with a blog post entitled "Leo Stoller Loses Again" (here). Remember him? Here we are, thousands of blog posts (and more than 10,000 tweets) later.  Thank you to all you readers!  Greetings from INTALM in New Orleans!

Read comments and post your comment here.

Text Copyright John L. Welch 2018.

Wednesday, November 07, 2018

TTAB Test: Is MISEL DISEL Confusable with DIESEL for Pre-Shave Liquids?

Diesel S.p.A. opposed an application to register MISEL DISEL for "smooth shave enhancer, namely, pre-shave liquid," claiming a likelihood of confusion with its registered mark DIESEL for, inter alia, pre- and after shave creams and lotions. The goods are essentially identical, or at least closely related, but what about the marks? How do you think this came out? Diesel S.p.A. v. Misel Disel, LLC, Opposition No. 91225389 (November 5, 2018) [not precedential] (Opinion by Judge David Mermelstein).

The Marks:The Board spent little time discussing the similarity or dissimilarity of the marks. It found the word DISEL to be "highly similar" to the word DIESEL: they look similar and applicant' mark is likely to be pronounced the same as DIESEL because it looks like a misspelling of the common word"diesel." Although applicant's mark begins with MISEL, and the first word in a mark is the portion that consumers notice first [DUH! - ed.], MISEL is itself similar to DISEL and invites a rhyming pronunciation of MISEL similar to "diesel:" i.e., mee-zul dee-zul. Because of the rhyme, MISEL does not creat a separate commercial impression from DISEL. The Board concluded that the marks are "substantially similar."

The Goods: The Board spent more time coming to the conclusion that the goods are in part identical or closely related. Applicant's goods comprise a "smooth shave enhancer," whatever that is. The Board found that it is encompassed by opposer's "pre- and after shave creams and lotions." But even if the goods did not overlap, they are closely related.

The Board presumed that the overlapping goods travel in the same, normal trade channels to the same classes of consumers. The items are relatively low-priced and would be purchased "without such careful consideration as would alleviate confusion."

Applicant argued that the fame of the DIESEL mark (for apparel) works against Opposer, but the Board pointed out that the fame of a mark is never a negative factor: "no mark is too famous to be confused." Indeed, the more well-known a mark, the easier it will be to find a likelihood of confusion under the du Pont factors. However, the Board agreed with applicant that the fame of DIESEL in the apparel field does not suggest that purchasers are more likely to believe that Opposer is the source of applicant's products.

Conclusion: Balancing the relevant du Pont factors, the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

TTABlog comment: How did you do? FWIW: I would pronounce applicant's mark MISSLE DISSLE.

Text Copyright John L. Welch 2018.

Tuesday, November 06, 2018

TTAB Test: Is COCOON BY SEALY Confusable With SLEEP COCOON for Mattresses and Pillows?

The USPTO refused registration of the mark COCOON BY SEALY in standard character and design form (shown below), finding the mark likely to cause confusion with the registered mark SLEEP COCOON, both for mattresses and pillows (SLEEP disclaimed). Applicant contended that the "famous" SEALY house mark distinguishes its mark from the cited mark. How do you think this came out? In re Cocoon International Sales, LLC, Serial Nos. 87102115 and 87102130 (November 1, 2018) [not precedential] (Opinion by Judge Linda A. Kuczma).

Because the goods are identical, they presumably travel through the same, normal channels of trade to the same consumers. Applicant contended that its mattresses are priced between $399 and $1149 and its pillows at $49 each, and so consumers thereof will be "sophisticated." The Board noted, however, that the application and cited registration do not limit the goods as to price. Although mattresses are typically not purchased on impulse, mattresses and pillow are purchased by all types of consumers, and so "it is difficult to conclude that all of the respective consumers are sophisticated or that any care taken in the purchase of the goods would mitigate the likelihood of confusion resulting from the use of similar marks on identical goods."

Moreover, applicant did not prove that purchases of pillows are sophisticated, and the Board must consider the least sophisticated purchaser. In any case, even sophisticated consumers are not immune to source confusion when encountering similar marks and identical goods.

As to the marks, the Board found COCOON to be the more dominant portion of registrant's mark, the word SLEEP having been disclaimed. [I think neither word is dominant - ed.]. As to applicant's design mark, COCOON is clearly dominant.

Applicant contended that its registered and "famous" house mark SEALY is sufficient to distinguish the marks. The Board noted that its precedents hold that addition of a house mark generally does not avoid confusion, and may actually aggravate the situation.

However, the addition of a house mark may be impactful when there are "recognizable differences" in the marks, or the marks are "highly suggestive or merely descriptive or play upon commonly used or registered terms."

In this case, even if “SEALY” is a famous house mark, that does not dictate a finding of no likelihood of confusion. When we consider that Applicant’s identified goods are identical to Registrant’s goods and that their respective marks contain the identical term “COCOON” which is mildly suggestive of the goods, the addition of Applicant’s house mark in the nature of a tag line after the term “COCOON” does not eliminate the likelihood of confusion. Consumers familiar with Registrant’s SLEEP COCOON mark for its mattresses and pillows are likely to believe that there is some association or sponsorship with Applicant’s COCOON BY SEALY mattresses and pillows.

The Board observed that the Trademark Act protects against "reverse confusion," when a "significantly larger or prominent junior user, such as Applicant, is perceived as the source of a smaller, senior user's goods such that the 'senior user may experience diminution or even loss of its mark’s identity and goodwill due to extensive use of a confusingly similar mark by the junior user' for related goods."(quoting In re, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1752 (Fed. Cir. 2017) (quoting In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993))).

The Board concluded that the marks are similar in sound, appearance, connotation, and commercial impression.

Finally, applicant argued that the cited mark is weak in view of four existing registrations for marks containing the word COCOON for bedding and bedding accessories (three owned by the same entity). The Board found that this evidence fell far short of the "voluminous" and "extensive" evidence presented in Jack Wolfskin and Juice Generation. Moreover, third-party registrations, standing alone, have limited probative value because they are not evidence that the marks have actually been used in commerce.

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

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2018.

Monday, November 05, 2018

TTAB Test: Is SONIA for Sauces Confusable with SONIA SONI LIFE IS A RECIPE for Spices?

The USPTO refused registration of the mark SONIA for "sauces; chili sauce; hot sauce," finding a likelihood of confusion with the registered mark SONIA SONI LIFE IS A RECIPE for "spices, spice blends; spice rubs." Applicant argued that the marks are distinguishable because SONIA is a weak element in the cited mark in light of various third-third party registration and applications for marks containing the letters "S," "O," "N," and "A" in the food classes, and third party use of those and other marks. How do you think this came out. In re Productos Verde Valle, S.A. de C.V., Serial No. 87137207 (November 2, 2018) [not precedential] (Opinion by Judge Albert Zervas).

Goods: Based on third-party registrations and Internet excerpts submitted by Examining Attorney Parker Howard, the Board found the goods to be related and complementary: not only are the goods sold by third parties under the same mark, but "[t]he evidence also shows that spices may be a key ingredient in sauces, or may be interchangeable in a recipe, for example, using hot sauce instead of chili powder."

Since there are no limitations on channels of trade or classes of consumers in the application or cited registration, the Board presumed that the goods travel in the normal channels for those goods, including online and in grocery and specialty food stores, to ordinary consumers. The goods are relatively inexpensive items that are purchased without a great deal of care.

Third-Party Marks: As indicated, applicant relied on third-party uses and registrations in the food classes to argue that that the cited mark is entitled to a narrow scope of protection: SONYA,  SOHNA, SANIA, SONIA'S SWEETS, and SONA for various food items. The Board found SOHNA, SANIA, and SONA to be so different in commercial impression from SONYA that they had no probative value. The remaining two uses - SONYA for apples and and SONIA’S SWEETS for tea and soy sauce - "do not evidence such a widespread and significant use of the name 'SONIA,' or its phonetic equivalent 'SONYA,' in the food and food flavoring industries that we can conclude that the cited mark is so weak that the public would be able to distinguish the source of Registrant’s goods from those of Applicant by the differences in their respective marks."

The Marks: The Board found the marks to be similar in appearance, sound,  connotation, and commercial impression. It deemed SONIA SONY to be the more prominent portion of Registrant's mark, since LIFE IS A RECIPE "imparts a connotation that simply highlights use of the spices sold under the cited mark." The first name SONIA "is a notable component of SONIA SONI given its location as the first part of the mark and, thus, the first word to appear on any label or to be articulated when pronouncing the mark." Furthermore, registrant might emphasize the word SONIA by displaying it in larger, bolder typeface.

The Board observed that customers are "likely to believe that Applicant’s mark is simply a shortened version of Registrant’s mark, because of 'the penchant of consumers to shorten marks.'"

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: If a mark is registered in standard character form, should the registrant later be able to claim that the registration covers a use in which, as the Board suggests here, one word of the mark is used in a way that it dominates the other words in prominence?

Text Copyright John L. Welch 2018.

Friday, November 02, 2018

Three Section 2(d) TTAB Cases: How Do You Think They Came Out?

Here are three recently decided Section 2(d) cases: one opposition and two appeals. See if you can "guess" how they came out. [Answer in first comment].

In re I.L.L.A. S.P.A., Serial No. (October 30, 2018) [not precedential] (Opinion by Judge Robert H. Coggins) [Refusal to register OLLIA-TECH for "Non-stick coatings for pans, cookware, baking trays, small electric kitchen apparatus and utensils; and Frying pans; skillets; earthenware saucepans; saucepans; pots for cooking; household utensils, namely, graters; kitchen utensils, namely, splatter screens," in view of the registered mark OLIA DESIGN for “glass wares, namely, decorative, and handcraft art objects of glass; beverage glassware; mugs; cups and mugs” [DESIGN disclaimed] Applicant maintained that the marks are pronounced differently and have different connotations ("tech" versus "design."]

Vineyard 29, LLC v. 29 Wine Company, LLC, Opposition No. 91227774 (October 29, 2018) [not precedential] (Opinion by Judge Jyll Taylor) [Opposition to registration of HIGHWAY 29 for wine in view of the registered mark 29 for wine. Applicant pointed to five other entities using "29" as part of a mark].

In re 8415927 Canada, Inc., Serial Nos. 87056710 and 87056720 (October 25, 2018) [not precedential] (Opinion by Cindy R. Greenbaum) [Refusal to register the mark DIVE PRIME SEAFOOD in standard character and the design form shown below left for "bar services; restaurant services; take-out restaurant services" [PRIME SEAFOOD disclaimed]  in view of the registered marks DIVE COASTAL CUISINE in standard character and the design form shown below right for restaurant services [COASTAL CUISINE disclaimed]. Applicant cited 22 third-party registrations for restaurant mark containing the word DIVE, and also contended that the word has differing meanings in the respective marks.]

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2018.