TTAB Finds SOLAR CONCIERGE Merely Descriptive of, and Lacking Acquired Distinctiveness for, ..... Guess What?

The USPTO rejected Dana Redden's application to register the proposed mark SOLAR CONCIERGE for "financial consultation in the field of financing of solar energy projects and financial consulting regarding solar energy." [SOLAR disclaimed]. The Board found the mark to be merely descriptive under Section 2(e)(1) and rejected Redden's Section 2(f) claim of acquired distinctiveness. In re Dana Redden, Serial No. 97299114 (July 24, 2024) [not precedential] (Opinion by Judge Michael B. Adlin).

The Board had no doubt that SOLAR CONCIERGE is merely descriptive because it "immediately conveys that as a 'concierge' in the solar energy field, Applicant provides assistance in connection with acquiring or managing a solar energy system, including related financial issues.

The evidence showed that some of Redden’s competitors use the term "solar concierge" in their marks or trade names. Those third-party uses are consistent with the dictionary definitions of the constituent words, and in combination each word retains its merely descriptive significance for the services.

Indeed, it is highly descriptive, as it conveys exactly what dictionary definitions predict it would convey – assisting others in obtaining and managing a solar energy system, including the financial aspects thereof. This is clear from the third-party service mark, trade name and descriptive uses discussed above, and from Applicant’s prior Supplemental Register registration, as well as her disclaimer of “SOLAR” and Section 2(f) claim in her original application.

Because the proposed mark is highly descriptive, Redden bore a "heavy burden" to prove acquired distinctiveness. Redden relied solely on her use of SOLAR CONCIERGE mark for 12 years. The Board found that she fell "far short" of establishing acquired distinctiveness for the proposed mark, "which is commonly used by third parties."

[D]espite Applicant’s use of the term over the years, there is no evidence that consumers or the media understand “solar concierge” as an identifier of Applicant’s services. There is merely evidence that Applicant has used and promoted her proposed mark, unaccompanied by evidence of how widespread the use is, how many consumers have been exposed to the proposed mark, or any indicia of recognition that the proposed mark identifies Applicant’s solar energy consultation services.

The Board concluded that the "plentiful evidence of third party service mark, trade name and descriptive use" of "solar concierge, and the lack of sales and advertising figures, unsolicited media attention, and quantification of consumer impact, was "fatal" to her Section 2(f) claim.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2024.

Sustaining Opposition, TTAB Finds RYDE OUT Confusable with RYDE for Supplements and Energy Drinks

Opposer British American Tobacco ("BAT") ran roughshod over Applicant Ruff Ryders' application to register the mark RYDE OUT for dietary and nutritional supplements and for energy drinks. The Board found confusion likely with BAT's mark RYDE for the same goods. Neither party claimed use of its mark, but BAT established priority based on the constructive first use date of its pending application, which claimed convention priority from a Jamaican application filed in September 2019. British American Tobacco (Brands) Limited v. Ruff Ryders, Inc., Opposition No. 91275212 (July 22, 2024) [not precedential] (Opinion by Judge Michael B. Adlin).

The identity of the goods and their presumed overlapping channels of trade and classes of purchasers weighed "heavily" in favor of finding a likelihood of confusion. Furthermore, the identity of the goods reduces the degree of similarity between the marks necessary to support such a finding.

Ruff Ryders argued that the word "ryde," the phonetic equivalent of "ride," is merely descriptive of the goods because it means "to continue without interference" and "be supported and usually carried along by," thus conveying the connotation that BAT's goods "will help consumers continue without interference or be supported or carried along." The Board was unmoved: "there is nothing that "immediately conveys knowledge of a quality, feature, function, or characteristic" of the goods.

Ultimately, we find that because Opposer’s mark is slightly suggestive, it is conceptually slightly weak, somewhat reducing the scope of protection to which it is entitled. Nonetheless, the mark remains inherently distinctive and it is not so weak as to be unentitled to protection against confusingly similar marks.

The Board found the marks to be "more similar than dissimilar" as to appearance, sound, connotation and commercial impression. "Competing uses of a peculiar misspelling of “ride” for identical goods is likely to cause confusion."

Ruff Ryders claimed that RYDE OUT is a unitary mark and has a meaning distinct from "ride" alone: it is the phonetic equivalent of "ride out," which means "to succeed in surviving or getting through (something dangerous or harmful that cannot be stopped or avoided)." The Board acknowledged that RYDE OUT may convey a different meaning and create a different commercial impression than RYDE alone, but it found this difference to be "outweighed by the marks' similar appearance and sound."

Moreover, Ruff Ryders promotes the term RYDE OUT in connection with motorcycle events, and it essentially conceded that it "came up with the idea of the RYDE OUT energy drink as a compliment to the ‘Ride Out’ or ‘Ryde Out’ motorcycle lifestyle synonymous with [Applicant]."

The Board concluded that "[t]he goods are identical in part and presumed to travel in the same channels of trade to the same classes of consumers. The marks are more similar than dissimilar and Opposer’s is inherently distinctive and conceptually strong enough to be entitled to protection against Applicant’s. Confusion is likely."

Finally, the Board point out that BAT’s priority is "merely contingent" because it is based solely on its pleaded application filed under Sections 1(b) and 44(d) of the Act. "[N]o final judgment shall be entered in favor of an applicant under section 1051(b) of this title before the mark is registered, if such applicant cannot prevail without establishing constructive use pursuant to section 1057(c) of this title.” 15 U.S.C. § 1068; § 1068; Spirits Int’l, 99 USPQ2d at 1549.

And so, the opposition was sustained on the ground of likelihood of confusion, contingent upon BAT establishing its constructive use through registration of the mark in its pleaded application.

Read comments and post your comment here.

TTABlogger comment: Do you think that RIDE OUT would be found confusable with RYDE?

Text Copyright John L. Welch 2024.

TTAB Sustains Nike's Opposition to "4IR", Finding Confusion Likely with "AIR" For Shirts

Footwear behemoth Nike, Inc. ran over pro se Applicant Timothy Jinks in this opposition to registration of the mark 4IR for "shirts." The Board found confusion likely with Nike's common law mark AIR for various types of shirts. Not a single DuPont factor weighed in applicant's favor. NIKE, Inc. v. Timothy Jinks, Opposition No. 91278263 (July 9, 2024) [not precedential] (Opinion by Judge Thomas W. Wellington).

Applicant Jinks did not submit any testimony or evidence, and did not file a trial brief.  Of course, he was not required to do so. It was up to Nike to prove its case.

Jinks admitted that Nike "has continuously used marks consisting of or incorporating the word AIR in connection with footwear and apparel in interstate commerce for decades." He did not dispute that Nike had priority of use for its AIR marks, nor did he dispute the inherent distinctiveness of AIR.

The Board focused its analysis on Nike’s prior common law rights in the mark AIR, in various stylized fonts, on apparel, including shirts. [See example above].

The Board observed that because the involved goods are legally identical, it must be presumed that they travel in the same trade channels. [Does that presumption apply to Nike's common law marks? -ed.]. "[G]iven the goods are legally identical in part, the DuPont factors involving relatedness of the goods and their trade channels weigh heavily in favor of likely confusion."

Based on Jinks's admissions, Nike's sales figures, and long use of the AIR mark, the Board found the mark to be "commercially strong in connection with apparel, including shirts," and meriting "a broader scope of protection than marks without any demonstrated commercial strength."

Turning to a comparison of the marks, the Board agreed with Nike that the numeral "4" may be presented in a variety of manners that closely approximate the letter "A."

Indeed, Applicant seeks to register its mark in standard character format, meaning that, if registered, it is conferred rights in the mark depicted in any font style, size or color. Trademark Rule, 2.52(a), 37 C.F.R. § 2.52(a). In other words, we must anticipate Applicant’s mark being displayed in a manner that where the numeral 4, in 4IR, can appear in a manner such that the overall mark will look quite similar to Opposer’s AIR mark. Thus, we find that the marks are similar in appearance.

Finally, the Board observed that, if Jinks were to use a stylized version of his 4IR mark in which the number 4 closely resembles the letter A, consumers might mistakenly believe that to be another fanciful use by Nike of its AIR mark on apparel. "In sum, the first DuPont factor weighs in favor of finding confusion likely."

Read comments and post your comment here.

TTABlogger comment: What if Jinks filed to register his mark with a stylized "4" that did not look like the letter "A"?

Text Copyright John L. Welch 2024.

TTAB Easily Finds TREEBNB Confusable with AIRBNB for Temporary Housing Services

Lightning struck the Bolts in their attempt to register the mark TREEBNB & Design for, inter alia, "Arranging temporary housing accommodations." The Board found confusion likely with the registered mark AIRBNB for the identical services. Although one DuPont factor weighed in their favor, the Bolts' application was uprooted by the remaining relevant factors. Airbnb, Inc. v. Seth Bolt and Victoria Bolt, Opposition No. 91273632 (July 17, 2024) [not precedential] (Opinion by Judge Karen S. Kuhlke).

By way of background, the Bolts “provide short-term rentals in treehouses, mirror cabins and domes at their Whitwell, Tennessee and Walhalla, South Carolina properties, along with chef, massage and yoga personal services for overnight guests in Tennessee.”

The DuPont factors regarding the relatedness of the services and the channels of trade weighed "strongly" in favor of a finding of likely confusion, but the purchaser-care factor weighed slightly in the other direction. [I think that renting a treehouse is not an impulse purchase, though I have never rented one - ed.].

As to the commercial strength of the AIRBNB mark, opposer relied on a "fame" survey. media references in the press and in travel and lifestyle publications, its long-standing use of the mark, and opposer's enforcement activity. In the survey, 32.7% of all the respondents named AIRBNB when asked, unaided, to list all companies, websites, or mobile apps they are aware of that offer finding, listing, and reserving rental properties. The record also included many references to and reviews of accommodations available through AIRBNB specifically pertaining to treehouses.

The Board found that AIRBNB "is on the 'very strong' end of the 'spectrum from very strong to very weak.'" Joseph Phelps Vineyards, 857 F.3d at 1325. "Opposer’s AIRBNB is entitled to a broad scope of protection against confusingly similar marks, therefore increasing the likelihood of confusion with Applicants' mark."

Turning to the marks, the Board observed that the terms AIRBNB and TREEBNB have the same structure: a one syllable word preceding the term BNB. This identical structure engenders a similar commercial impression.

[G]iven the commercial strength of AIRBNB in this field and the offering of tree houses on the AIRBNB platform, consumers would view TREEBNB as a subset of AIRBNB’s services or, as Opposer characterizes it, “consumers would believe Applicants’ TREEBNB services are an expansion of Airbnb’s existing use of [their] Airbnb brand in the treehouse space.”

As a final blow, an Eveready-type survey indicated a 37.5 percent level of confusion between the involved marks.

Read comments and post your comment here.

TTABlogger comment: I refuse to say that the Bolts were barking up the wrong tree.

Text Copyright John L. Welch 2024.

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

So far this year, the rate of TTAB affirmance of Section 2(d) refusals is a stunning 94%. Here are three recent TTAB decisions in Section 2(d) appeals. How do you think they came out? [Answers in first comment.]

In re Creative Systems and Design, LLC, Serial No. 97340379 (July 12, 2024) [not precedential] (Opinion by Judge Robert Lavache) [Section 2(d) refusal of the mark QUANTEX for "Hand tools, namely, ratchet wrenches, sockets, extensions, drive tools, socket sets, open end wrenches, combination wrenches, adjustable wrenches, pipe wrenches, screwdrivers, nut drivers, hex drivers, torque wrenches, and hand drills," in view of the registered mark shown below, for "Electric lamps; Headlights for automobiles; Lamps; LED light assemblies for street lights, signs, commercial lighting, automobiles, buildings, and other architectural uses; LED light bulbs; Light bulbs for directional signals for vehicles; Lighting apparatus, namely, lighting installations; Lights for vehicles; Lighting apparatus for vehicles."]

In re Elite Gold LTD., Serial Nos. 97160619 and 97213291 (July 17, 2024) [not precedential] (Opinion by Judge Mark A. Thurmon). [Section 2(d) refusal of the marks ROMA, in standard characters, for "cookies and biscuits; all of the foregoing not for sale at wholesale or for foodservice use" and the word-and-design mark shown below left, for "biscuits, crackers, cheese-flavored biscuits; cheese biscuits; baked cheese-flavored crackers; all of the foregoing not for sale at wholesale or for foodservice use," in view of the marks ROMA, in standard characters, for "pies namely key lime; cookies; cakes; pizza crust; and desserts namely tiramisu all for foodservice use," and the word-and-design marks shown below right, for "food products; namely, flour, pasta, bread, biscuits, yeast, salt, mustard, vinegar, spices, tomato sauce, sauces excluding apple and cranberry, pizza, spaghetti, coffee, tea, and sugar, for sale at wholesale to pizza parlors, restaurants and delicatessens for their in-house preparation of meals."]

In re Mario Enrique Santillan Aguirre, Serial No. 90859041(July 19, 2024) [not precedential] (Opinion by Judge Thomas L. Casagrande) [Section 2(d) refusal to register the mark MÁXIMO SANTANA for "Mezcal; Distilled agave liquor; Distilled blue agave liquor," in view of the registered mark SANTANA for "wines."]

Read comments and post your comment here.

TTABlog comment: Predictions? See any WYHA?s

Text Copyright John L. Welch 2024.

Precedential No. 15: TTAB Affirms Section 2(d) Refusal of UPC for Computer Components, Rejecting "Something More" Requirement When Only Goods are Involved

In a precedential decision, the Board affirmed a refusal to register the mark UPC for, inter alia, display panels as components of computers and smart phones, finding confusion likely with the identical mark registered for charging cables and power connectors. Applicant Samsung argued that "something more" is required to show relatedness of the goods than the mere fact that some third-party manufacturers sell both types of goods. The Board was not impressed. In re Samsung Display Co., Ltd., Serial No. 90502617 (July 17, 2024) [precedential] (Opinion by Judge Robert H. Coggins).

Since the marks are identical, the first DuPont factor weighed "heavily" in favor of likelihood of confusion. Moreover, in such case, a lesser degree of similarity between the goods is needed to support that finding.

Turning to the second DuPont factor - the similarity and nature of the goods - Examining Attorney Katrina Yang maintained that the goods are related because they are "sold together as part of the same finished product," with the goods often "highlighted or called-out in advertising as being a prominent feature of finished products," especially the display panels and power cable of computer monitors. Many third-party websites highlighted the display panel or screen as an important feature and a selling point. Other websites specify many of the individual components in a laptop computer, including the display and the power cables.

The Board therefore found that "the goods are related because they are each incorporated and used in the same finished electronic products."

Citing Coors Brewing and St. Helena Hospital, Samsung argued that "the fact that some monitors and television manufacturers also sell power cables does not alone imply that consumers will assume that all monitors and televisions have the same source of origin as the power cables. Therefore, “something more” is required to show relatedness between monitors or televisions and power cables."

The Board, however, pointed out that Samsung's reliance on that theory was misplaced. Those two cases involved the relatedness of goods and services, "limiting the requirement for “something more” to circumstances where goods are used in the rendering of services and the relatedness of the goods and services is not evident, well known, or generally recognized." [Coors Brewing involved beer and restaurant services, while St. Helena Hospital concerned hospital-based lifestyle programs and printed materials dealing with fitness.]

As to the third and fourth DuPont factors - the “similarity or dissimilarity of established, likely-to-continue trade channels,” and "conditions under which and buyers to whom sales are made, i.e. ‘impulse’ v. careful, sophisticated purchasing" - Samsung argued that its goods, as components, are sold exclusively to manufacturers of finished products, whereas registrant's goods are finished products themselves and may be purchased separately by retail consumers. The Board noted that Samsung's identification of goods contains no such limitation, and in fact its components may be available to end users and hobbyists who wish to build, repair, or customize their own electronic products. Similarly, registrant's identification of goods is not limited to sales to consumers.

The relevant classes of consumers overlap and, although some purchasers may be sophisticated, others are not, such as hobbyists and gamers who build or repair their own electronic devices. There was no evidence that these ordinary consumers would exercise more than ordinary care.

And so, the Board affirmed the refusal to register

Read comments and post your comment here.

TTABlogger comment: I guess the Board's clarification of the "something more" requirement made this decision precedential.

Text Copyright John L. Welch 2024.

TTAB Sustains Instagram's 2(d) Opposition to INSTASIZE for Photo Editing Software

In a 95-page opinion, the Board sustained this opposition to registration of the mark INSTASIZE for "Downloadable mobile applications for photo editing," finding confusion likely with the registered mark INSTAGRAM for "Downloadable computer software for modifying the appearance and enabling transmission of photographs." The Board found the goods legally identical, the INSTAGRAM mark famous, and the marks more similar than dissimilar. In addition, the extent of potential confusion (the twelfth DuPont factor) and evidence of the effect of use (the thirteenth DuPont factor) weighed in favor of Instagram. This blog post will attempt to hit the high points, if there are any. Instagram, LLC v. Instasize, Inc., Opposition No. 91253078 (July 15, 2024) [not precedential] (Opinion by Judge Martha B. Allard).

Instasize argued that the parties’ apps perform different functions – its app is for photo editing while opposer’s app is for photo sharing – and that, as a result, the goods are not identical or even related, and consumers would not be confused. The Board pointed out, however, that it must base its decision on the language of the identifications of goods and not “real world conditions.” Likewise, applicant's argument that the apps travel in different channels of trade was irrelevant, since there are no such imitations in the application or registration and the identical goods presumably trave in the same trade channels. 

The Board noted that the parties offer their respective apps for free, and consumers of low-cost products “have long been held to a lesser standard of purchasing care," and also that "the least sophisticated consumers of the parties’ mobile apps are likely to exercise a lesser degree of care."

Turning to the strength of the INSTAGRAM mark, opposer's evidence indicated that it has 2 billion (2,000,000,000) users worldwide. Although the data was not limited to the United States, "it is reasonable to infer that a substantial portion of active accounts holders are based in the United States, particularly in light of the fact that Opposer is a U.S.-based company." The evidence also directly showed substantial revenues and advertising expenditures in the U.S.

Opposer’s somewhat dated marketing reports and survey evidence demonstrated that INSTAGRAM has been shown to be a strong brand. And the Board gave Opposer's enforcement activities some probative weight.

Instasize argued that the INSTA element of opposer's mark is weak, since it means instant, and GRAM  is also weak, since it means “the idea of recording something in your life." It pointed to 16 third-party registered marks containing the term INSTA, but the Board pooh-poohed 11 of them because they were not for identical goods (and tossed out a twelfth as not being based on use). [This makes no sense to me. If the third-party registrations show that insta means instant, whey isn't that relevant to consumer perception? Do consumers forget the meaning just because the term is not being used for an identical product? - ed.] The remaining five registrations were not enough to make a dent in the INSTAGRAM mark. 

As to Instasize's evidence of numerous third-party uses of "INSTA" in app names, opposer countered with its evidence of secondary meaning and the Board accepted opposer's expert testimony based on a 2016 research study. The Board concluded that INSTAGRAM is "famous for a mobile app for modifying the appearance and enabling the transmission of photographs, images, audio-visual content and video content."

As to the marks, Instasize started behind the 8-ball since a lesser degree of similarity is required between the marks when the goods are identical. To make matters worse, the Board found INSTA to be the dominant element of both marks. 

Instagram repeatedly promoted its app for use with INSTAGRAM. The Board concluded that Instasize's mark "conveys a meaning and commercial impression that its app is intended to be used to resize photos for sharing on Opposer’s INASTAGRAM app." A consumer survey showing a net rate of 44.0% confusion was "strongly probative of a likelihood of confusion." 

In sum, "[c]onsumers encountering Applicant’s mark are thus likely to mistakenly believe that INSTASIZE is an app sponsored or approved by Opposer for use with Opposer’s INSTAGRAM app." And so, the Board sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: This was a shellacking.

Text Copyright John L. Welch 2024.

TTABlog Test: Is WHOLESALEHOME Merely Descriptive of Dusting Cloths?

The USPTO refused registration of the proposed mark WHOLESALEHOME for "Cloth for wiping or dusting, deeming the mark to be merely descriptive under Section 2(e)(1). The Examining Attorney based the refusal on the connection between the mark and the nature of the means through which the goods are sold (i.e., wholesale). Applicant Ababoo argued that only a direct connection between the mark and the goods themselves will support a Section 2(e)(1) refusal. How do you think this came out? In re Ababoo LLC, Serial No. 90874152 (July 11, 2024) [not precedential] (Opinion by Judge Mark A. Thurmon).

The proposed mark WHOLESALEHOME "will be found merely descriptive if the individual components are merely descriptive, they retain their descriptive meaning in relation to the identified goods, and the combination does not form a mark which has a distinctive nondescriptive meaning of its own as a whole."

Examining Attorney Jeri Ficke maintained that the mark "immediately and directly describes to consumers potential features of applicant's wiping and dusting cloths, namely, their marketing environment and their intended area of use." The Board observed:.

If a sufficiently direct connection exists between a meaning of the mark to relevant consumers, on one hand, and the nature of the Applicant’s business, as it relates to the sale of the goods, on the other hand, such a connection can support a Section 2(e)(1) merely descriptive refusal. See, e.g., In re Major League Umpires, 60 USPQ2d 1059, 1062 (TTAB 2001) (finding the mark MAJOR LEAGUE UMPIRES for baseball gear was merely descriptive because the Applicant was a business created and owned by former Major League baseball umpires).

On the other hand, in In re Recreational Equip., Inc., 2020 USPQ2d 11386 (TTAB 2020). the Board held that the connection between a cooperative business and the applicant was too general to support a mere descriptiveness refusal of CO-OP for bicycles.

The Board noted that applicant's own website showed that it sells home products at wholesale. "These are specific details about Applicant’s business, similar to the scenario in the Major League Umpires case. There is a clear and specific connection between the proposed WHOLESALEHOME mark and Applicant’s business. That connection supports the refusal."

The evidence submitted by the Examining Attorney shows that relevant consumers are likely to understand Applicant’s proposed WHOLESALEHOME mark as describing Applicant’s store or business. To summarize that evidence, cleaning cloths are a home product or within the category of home goods. Selling such goods at wholesale is nothing new, so the concept is known to consumers. And Applicant is trying to register a term that consumers will recognize as a type of store that sells home goods at wholesale, which is exactly what Applicant does. The connection between the proposed mark and Applicant’s business is direct and specific.

The Board concluded that the combination of WHOLESALE and HOME does not result in a unitary mark with a separate, nondescriptive meaning. "Rather, each component retains its descriptive significance in relation to the goods such that the combination is descriptive." The absence of a space between WHOLESALE and HOME is of no consequence.

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: Done and dusted.

Text Copyright John L. Welch 2024.

TTABlog Test: Must "DAILY" be Disclaimed in DAILY MIND for Mental Health Services

The USPTO refused to register the mark DAILY MIND for various mental health services, absent a disclaimer of the word "DAILY." The examining attorney maintained that "daily" describes a "feature or characteristic [of the mark], namely, the frequency in which the services are available or provided." Applicant SonderMind argued that the mark is unitary and that consumers "would not single out the word ‘DAILY’ or perceive it as describing the frequency in which the services are offered or available to consumers." How do you think this appeal came out? In re SonderMind Inc., Serial No. 97005621 (July 12, 2024) [not precedential] (Opinion by Judge Thomas W. Wellington).

In support of the refusal, the Examining Attorney relied upon the defined meaning of DAILY as “occurring, made, or acted upon every day” and also pointed to six third-party uses of the term in connection with mental health therapy services, including uses of “daily therapy” [e.g., "Rogers Behavioral Health website offering 'you or your child in daily therapy for several weeks'"(sic)].

SonderMind, based on the definitions of "daily" and "mind," argued that "the combined phrase has several meanings, none of which are immediately descriptive of Applicant’s mental health therapy services, including: (1) a memory that occurs every day, (2) an intention that is acted on every date, (3) an opinion that is made every day, and (4) a mood that occurs every day."

In response, the examining attorney pointed out that "all of applicant’s proposed alternate meanings demonstrate that consumers are likely to understand the wording DAILY as describing the feature or characteristic of 'occurring every day.'"

The Board sided with the SonderMind:

Here, we find consumers encountering DAILY MIND in connection with Applicant’s services will perceive the proposed mark in a unitary manner, and will not attribute a separate, merely descriptive meaning to the term DAILY, by itself. That is, grammatically, consumers will understand the word DAILY as modifying the word MIND and, taken together, as conveying suggestive, but not descriptive, meanings in connection with the services.

According to the Board, "DAILY MIND conveys various suggestive messages, e.g., 'a mood that occurs each day' or 'that Applicant’s services will help consumers create positive intentions they can focus on every day.'" Acknowledging that each of these meanings involves a "daily" occurrence, as the examining attorney pointed out, the Board nonetheless found that "the overall meanings conveyed by entire mark are only suggestive of Applicant’s services and not merely descriptive of them. Simply put, Applicant’s use of DAILY in the phrase DAILY MIND creates a suggestiveness that is not found in the third-party examples of the descriptive phrase 'daily therapy.'"

DAILY is “inseparable” from the entire mark, and the proposed mark DAILY MIND “has a distinct meaning of its own independent of the meaning of its constituent elements.”

And so, the Board rejected the disclaimer requirement and reversed the refusal.

Read comments and post your comment here.

TTABlogger comment: This decision makes no sense to my mind. Nor can I understand why the applicant made such a big deal out of disclaiming "daily."

Text Copyright John L. Welch 2024.

Cleveland Guardians Attack CLEVELAND SPIDERS for Clothing: Summary Judgment Motion Fails on Fraud, Succeeds in Part on Nonuse

Major League Baseball's Cleveland Guardians trace their history back to a 19th Century team called the Cleveland Spiders. Applicant Adam Barrington's application to register the mark CLEVELAND SPIDERS and the two marks shown immediately below, for various clothing items, was met with an opposition by the Guardians, who alleged, inter alia, fraud, nonuse, and likelihood of confusion with the registered marks CLEVELAND and C for clothing. The Guardians then moved for summary judgment on the fraud and nonuse claims, with limited success. Cleveland Guardians Baseball Company, LLC v. Adam Barrington, Opposition No. 91277995 (June 21, 2024) [not precedential].

Fraud: Applicant Barrington conceded that he never used two of his marks on sweaters, headbands, shorts, or team uniforms, and further that he used the marks on jackets, coats, and pants only after the filing of the corresponding two applications. The Guardians asserted that "[t]here can be no dispute that, at a minimum, [Applicant] acted with reckless disregard for the truth of the statements being submitted."

Barrington asserted that "[i]t was the Trademark Examiner . . . who wrote the more specific list of clothing items that is now recited in the Application.” Acting pro se, he "was simply following the lead and instructions of the Examiner, and Applicant had absolutely no ‘intent to deceive’ when filing, as alleged by Opposer.”

The Board concluded that the Guardians failed to show the absence of a genuine dispute of material fact for trial. "[A]t a minimum, there exist genuine disputes of material fact as to Applicant’s subjective deceptive intent to commit fraud on the Office. Opposer has not introduced any direct evidence of Applicant’s intent to deceive the Office, and Applicant has essentially denied such intent in his submitted affidavit."

And so, the Board denied the summary judgment motion as to the fraud claim.

Nonuse: The Board observed that "an entire application is not deemed void ab initio if the applicant made use on any of the listed goods at the time the use-based application was filed. Barbara’s Bakery, Inc. v. Landesman, Opp. No. 9115782, 2007 TTAB LEXIS 9, at *19 (TTAB 2007). Instead, the application is amended to delete the goods on which the mark had not been used."

Based on Barrington's concessions, the Board found that the Guardians has satisfied their burden to show that there were no genuine disputes of material fact remaining for trial with regard to its nonuse claim, and so the Board granted its motion for partial summary judgment as to nonuse vis-a-vis headbands, shorts, team uniforms, jackets, coats, and pants. It ordered that those goods be deleted from the subject applications.

Read comments and post your comment here.

TTABlogger comment: A rather feeble attempt at summary judgment, don't you think? Seems like MLB teams think that all they have to do is throw their gloves on the TTAB field and they'll win. How many people do you think would confuse CLEVELAND SPIDERS with CLEVELAND? BTW: the Guardians included a Section 2(a) false connection claim. How many people would connect the mark CLEVELAND SPIDERS with the CLEVELAND GUARDIANS? What do you think a survey would show?

Text Copyright John L. Welch 2024.