Tuesday, March 20, 2018

TTAB Sustains HONEY PIG Opposition Despite Ten Years of Parties' Coexistence

In a 36-page opinion, the Board sustained a Section 2(d) opposition to registration of the mark HONEY PIG, in standard character form, for restaurant services in view of opposer's prior use of the logo mark shown immediately below, for the same services. Applicant essentially conceded that opposer had priority and did not contest confusingly similarity, but it argued that the coexistence of opposer's mark with a similar registered mark (shown further below) owned by applicant should be dispositive under the thirteenth du Pont factor. LP Global, Inc. v. Seoul Gool Dae Gee, Inc., Opposition No. 91221967 (March 13, 2018) [not precedential] (Opinion by Judge Christopher Larkin).

Applicant pointed to its registration of the mark shown below, for restaurant services [the English equivalent of the Korean "Gooldaegee" is "honey pig"], arguing that its ownership of that registration "presents a unique situation." It cited In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012) [TTABlogged here], arguing that the existence of the registration, Opposer’s inaction against it, and the coexistence of the parties’ marks, outweighed the other duPont factors. In Strategic Partners, the Board reversed a refusal to register the slightly stylized mark ANYWEAR for footwear on the basis of a registration of ANYWEAR BY JOSIE NATORI and design for clothing. The applicant’s primary argument was that it owned an incontestable registration of ANYWEARS for footwear.

Applicant's registered logo mark

The Board, however, found Strategic Partners distinguishable. First, it was an ex parte case, and the Board found no prior ruling in which Strategic Partners was applied in an inter partes context. Second, Strategic Partners was not concerned with the absence of actual confusion, which in an inter partes case may be taken into account under the 7th, 8th, and 12th factors. Third, the applied-for and the registered marks here differ far more than the corresponding marks in Strategic Partners.

Applicant’s composite mark has been registered for more than eight years and it has coexisted with Opposer’s mark for more than 10 years, and both periods are longer than their counterparts in Strategic Partners. Nevertheless, given the differences between Applicant’s applied-for and registered marks, and the lack of evidence regarding the extent of use of the registered mark, we find that if, in this inter partes case, the “co-existence of Applicant’s prior registration and [Opposer’s mark] is a relevant consideration, it does not outweigh the other DuPont factors in this case.” USA Warriors Ice Hockey Program, 122 USPQ2d at 1793.

Finally, turning to applicant's claim regarding lack of actual confusion, the Board noted that applicant's restaurant is in Annandale, Virginia, and opposer's in Duluth, Georgia.

Even assuming that the parties’ restaurants to some degree “‘attract the travelling public’” to their respective locations, America’s Best Franchising Inc. v. Abbott, 106 USPQ2d 1540, 1552 (TTAB 2013) (quoting Brennan’s, Inc. v. Brennan’s Rest., LLC, 360 F.3d 125, 69 USPQ2d 1939, 1944 (2d Cir. 2004)), we find that the “lack of evidence of actual confusion, despite contemporaneous use of the parties’ marks for a period of [10] years, is not significant given the circumstances of the parties’ respective uses.”

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: Strategic Partners is a real outlier. Applicant dropped its Morehouse defense, presumably because its registered mark and its applied for mark are too different, so why should a Strategic Partners argument be successful?

Text Copyright John L. Welch 2018.

Monday, March 19, 2018

Precedential No. 8: Webpages Alone Insufficient to Prove Priority, Says TTAB

The Board dismissed this Section 2(d) opposition to registration of the mark WEAPON X MOTORSPORTS for various automotive parts, automotive body kits, and conversions services, finding that Opposer failed to prove priority. Opposer relied on several Internet webpages in attempting to show prior use of the mark WEAPONX, but the factual statements made on those webpages are hearsay and opposer failed to provide corroborating testimony. WeaponX Performance Products Ltd. v. Weapon X Motorsports, Inc., Opposition No. 91221553 (March 14, 2018) [precedential] (Opinion by Judge George C. Pologeorgis).

Objection to Testimony: Opposer objected to two testimony declarations submitted by applicant as exhibits to its notice of reliance rather than as separate declarations, thereby supposedly denying opposer the opportunity to cross-examine the witnesses. The Board noted that the two witnesses were properly identified in applicant's pre-trial disclosures.

Although the better practice would have been for Applicant to file and serve separately copies of the Messrs. Herndon and Polter testimony declarations, instead of attaching them as exhibits to its notice of reliance, Applicant’s failure to do so is of no consequence. Opposer was still served with copies of the testimony declarations (which Opposer does not contest) filed during Applicant’s testimony period. Pursuant to Trademark Rule 2.123(c), Opposer could have elected to cross-examine these witnesses by filing and serving its notice of election to cross-examine, but it did not do so.

Observing that opposer's objection "elevates form over substance," the Board overruled it.

Priority: Applicant was unable to show actual use of its mark earlier than its filing date of October 29, 2013, but it was entitled to rely on that date as its constructive first use date.

Opposer relied solely on its Internet evidence submitted with its notice of reliance. However, Internet evidence is admissible only for what it shows on its face, not for proof of any matter stated therein. "[A]ssertions appearing in the printouts submitted by Opposer under notice of reliance cannot be used to demonstrate its priority without testimony corroborating the truth of this matter." Opposer failed to provide such testimony.

Reviewing the Internet evidence, the Board pointed out that entries made by opposer on online community board forums cannot be taken as true. Screenshots bearing the domain name www.weaponxperformance.com that display the mark WEAPONX, on their face do not prove that Opposer was the owner of the websites or that the mark displayed on the websites was being used by Opposer for the goods and services identified on the webpage. A press release on a third-party website stating “WeaponX Performance announced today that its revolutionary new spark plug is now available to consumers on its new Web site, www.weaponxperformance.com” is not evidence of the truth of the matters stated in the press release. 

In sum, Opposer has not proven it is the owner of the mark pleaded in the notice of opposition, and, even if it did prove ownership, it has not demonstrated it has priority. Accordingly, Opposer cannot prevail on its claim of likelihood of confusion

Even if it had proven priority, the Board observed, opposer did not provide any evidence that it sold any of the pleaded goods or rendered any of the services. Therefore, the Board could not assess the likelihood of confusion between the marks at issue and opposer failed to prove its Section 2(d) claim.

Abandonment: Finally, the Board considered opposer's unpleaded abandonment claim, which the Board found was was tried by consent. Opposer argued that applicant's failure to demonstrate use of its mark from 2001 to 2012 amount to abandonment. However, since opposer itself failed to show prior rights in its pleaded mark, applicant's constructive first use date sufficed and the assertion that Applicant did not use its mark prior to that date is irrelevant. And so the Board dismissed the abandonment claim.

Read comments and post your comment here.

TTABlog comment: I think it's fair to say that this case was a mess. How simple would it have been for opposer to put in declaration testimony confirming its prior use?

Text Copyright John L. Welch 2018.

Friday, March 16, 2018

TTAB Test: Is "S-LON" Confusable With "C-LON" for Thread?

The USPTO refused registration of the mark S-LON for "yarns and threads for use in making beaded jewelry," finding the mark likely to cause confusion with the registered mark C-LON for "threads made of nylon." The goods overlap, but are the marks too close? How do you think this appeal came out? In re M & Y Trading, Serial No. 86879006 (March 14, 2018) [not precedential] (Opinion by Judge Susan J. Hightower).

Applicant agreed that its identification of goods encompasses nylon thread. The Board must presume that these overlapping goods travel through the same, normal channels of trade to the same classes of consumers.

As to the marks, applicant contended that each mark contains only “one letter with source identifying capacity” and that the different initial letters S and C sufficiently distinguish the marks in appearance, sound and pronunciation, connotation, and commercial impression. The Board did not agree.

Considered in their entireties, the marks are highly similar in appearance. With respect to sound, it is well-established that “there is no correct pronunciation of a trademark, and consumers may pronounce a mark differently than intended by the brand owner.”  *** Although there is no “correct” way to verbalize the two coined terms before us, we find the most likely pronunciation of Applicant’s mark to be “ess-lon,” which is similar to Registrant’s mark “cee-lon.” Particularly given the overlapping nature of the goods at issue, it is likely that consumers will view C-LON and S-LON as variations of each other; perhaps denoting different varieties of threads, but nonetheless pointing to a
common source.

As for connotation and overall commercial impression, there was no evidence to support applicant' assertion that the element "–LON" conveys to consumers that the threads in question are made of nylon. Even if it did, "this shared significance serves to heighten the similarity in meaning between the marks."

We are mindful that because the marks would appear on goods that are overlapping and legally identical, the degree of similarity necessary to support a conclusion of likely confusion declines. See Viterra, 101 USPQ2d at 1908; In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016). We find the marks in their entireties to be highly similar in appearance, sound, connotation and commercial impression. The first du Pont factor thus weighs heavily in favor of a finding that confusion is likely.

Applicant argued that consumers engaged in handcrafts are particular about the materials that they use in fabricating their craft products and are careful in their purchasing decisions. The Board, however, found no supporting evidence in the record. In fact, registrant's C-LON threads are sold for as little as two dollars, and thus "may be subject to impulse purchase, including by consumers new to beaded jewelrymaking." The Board is required to make its decision based on the least sophisticated potential purchasers. In any event, even sophisticated purchasers “are not immune from source confusion where similar marks are used in connection with related [goods or] services."

The Board therefore affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: Do you agree with the decision?

Text Copyright John L. Welch 2018.

Thursday, March 15, 2018

Precedential No. 7: TTAB Denies Motion to Strike Disclosure Notice and Preclude Expert Testimony

In this consolidated cancellation proceeding involving registrations for the marks MONSTER SEAL A FLAT, MONSTER UP, and UNLEASH THE BEAST for "tire sealing compound," Respondent Martin moved to strike Petitioner Monster Energy Company’s notice of expert disclosure and to preclude the testimony of the named expert. The Board denied both motions, finding the notice to be timely and pointing out that Respondent may request additional time to take discovery of the expert. Monster Energy Company v. William J. Martin, 125 USPQ2d 1774 (TTAB 2018) [precedentail] (Order by Interlocutory Attorney Jennifer Krisp).

The Notice: The deadline for Monster's notice of expert disclosure was July 4, 2017 (ninety days before the close of commencement of the first testimony period on October 2, 2017). See Rule 2.120(a)(2)(iii) and FRCP 26(a)(2). Because July 4th is a holiday in the District of Columbia, the due date was extended to the next day. See Trademark Rule 2.120(a)(2)(iii)). On July 5, 2017, Monster Energy filed with the TTAB its notice of expert disclosure (and it served its expert report on the same day). The notice stated the correct proceeding number, but Monster's law firm entered the wrong proceeding number at the time of electronic filing. [NB - the Rules require service of the disclosure, not filing - ed.]. On July 6th, The firm informed the Board of the error and on July 7th the Board entered the notice in the correct case and assigned it a date of July 5. [NB - the notice was properly and correctly served on Respondent on July 5th, so this seems like a wholly unnecessary exercise to this writer - ed].

Respondent Martin claimed that the notice was untimely filed. [If filing wasn't required, how could it be untimely? - ed.]. Martin did not state that he did not receive the notice (correctly captioned) on July 5th.

In the context of discovery, the Board has made clear that an “obvious typographical error” should not operate to derail the discovery process, and that it expects parties who become aware of such an error to cooperate so as to avoid unnecessary delay and increased costs. Cadbury UK Ltd. v. Meenaxi Enter., Inc., 115 USPQ2d 1404, 1407 (TTAB 2015) (parties are expected to demonstrate good faith and cooperation during discovery; a party cannot avoid discovery obligations due to an obvious typographical error in discovery requests).

The Board therefore considered the (unnecessary) filing as timely, and it denied Martin's quixotic motion to strike the notice.

Respondent's Discovery: Pointing to a seeming clash of the applicable Rules, Respondent Martin asserted that because the amended Rules require written discovery request be served at least thirty-days prior to the close of discovery (set to close on August 3rd) - see Rule 2.120(a)(3) and Estudi Moline Dissey, S.L. v. BioUrn Inc., 123 USPQ2d 1268, 1270 (TTAB 2017) - he would be denied the right to written discovery of Monster's expert if the Board found the July 5th expert disclosure (and the expert report) acceptable. Moreover, Rule 2.120(a)(3) provides "the time to respond may be extended upon stipulation of the parties, or upon motion granted by the Board, or by order of the Board, but the response may not be due later than the close of discovery." Not to worry!

The requirement in Trademark Rule 2.120(a)(3) that discovery requests be served early enough in the discovery period so that responses are due no later than the close of discovery does not, and is not intended to, preclude or encumber the opportunity to take discovery of an expert, regardless of whether the party makes an expert disclosure on or after the deadline therefor, provided that the Board is informed of the disclosure and finds it appropriate under the circumstances, so that it can issue an order that allows time for the discovery to occur.

* * *

Trademark Rule 2.120(a)(2)(iii) provides the Board wide latitude in managing a proceeding following any party’s disclosure of plans to use expert testimony, including but not limited to, suspending proceedings to allow for discovery of the expert and for any other party to disclose plans to use a rebuttal expert.

The Board therefore found no reason to preclude the expert’s testimony on the basis of Rule 2.120(a)(3), since Respondent Martin may request additional time for discovery.

The Board then suspended the proceeding under Trademark Rule 2.117(a) in light of a pending civil action between the parties.

Read comments and post your comment here.

TTABlog comment: A reader once asked whether an order issued by an interlocutory attorney can be precedential.

Text Copyright John L. Welch 2018.

Wednesday, March 14, 2018

Precedential No. 6: TTAB FInds MECHANICALLY FLOOR-MALTED Generic for ... Guess What?

The Board affirmed the USPTO's refusal to register the term MECHANICALLY FLOOR-MALTED, in standard characters, finding it to be generic for "malt for brewing and distilling" in International Class 31 and "processing of agricultural grain' in International Class 40. Applicant Mecca, relying primarily on the CAFC's Princeton Vanguard decision, contended that the Examining Attorney Dawn Feldman Lehker’s evidence did not include use of the exact term "mechanically floor-malted" as a generic designation for the identified goods or services. The Board pointed out, however, that Mecca was misreading the precedent. In re Mecca Grade Growers, LLC, Serial No. 86358219 (March 12, 2018) [precedential] (Opinion by Judge Angela Lykos).

Mere Descriptiveness: Applicant Mecca first argued that the applied-for term is not merely descriptive of the goods or services, but the Board concluded that the term immediately conveys to prospective consumers characteristics of both the goods and the services.

The explanatory text from Applicant’s specimen of use states that it produces a specific type of malt known as “floor-malted” malt and that Applicant’s grain processing services substitute mechanization for traditional floor-malting techniques.

By combining the old world approach to floor-malting with today’s modern technology, we have designed a malting machine capable of producing the finest quality, consistent malt available. We call this proprietary process: “Mechanical Floor-Malting.”

Moreover, the record showed it is "not uncommon" for artisan brewers to market their beer as “floor malted”  or for malt producers to use a mechanized version of floor malting,

Applicant argued that the juxtaposition of "mechanical" with "floor malting" creates an incongruity, but the evidence showed that "that mechanical assistance has been used in the past for some time in order to facilitate the floor malting process."

And so the Board affirmed the Section 2(e)(1) mere descriptiveness refusal.

Genericness: Applicant Mecca argued in the alternative that its proposed mark was registrable on the Supplemental Register. “In order to qualify for registration on the Supplemental Register, a proposed mark ‘must be capable of distinguishing the applicant’s goods or services.’” In re Emergency Alert Sols. Grp., LLC, 122 USPQ2d 1088, 1089 (TTAB 2017) (quoting 15 U.S.C. § 1091(c)). “Generic terms do not so qualify.” Id.

“The critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question.” Princeton Vanguard, 114 USPQ2d at 1830 (quoting Marvin Ginn, 228 USPQ at 530).

Making this determination “involves a two-step inquiry: First, what is the genus of goods or services at issue? Second, is the term sought to be registered ... understood by the relevant public primarily to refer to that genus of goods or services?” Marvin Ginn, 228 USPQ at 530. See also Princeton Vanguard, 114 USPQ2d at 1829 (“there is only one legal standard for genericness: the two-part test set forth in Marvin Ginn”).

The USPTO has the burden of proving genericness by “clear and convincing evidence." In re Cordua, 118 USPQ2d at 1635.

The Board agreed with the Examining Attorney that the genus of goods and services is defined by applicant's identification of goods and services. See Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) (“[A] proper genericness inquiry focuses on the description of [goods or] services set forth in the [application or] certificate of registration.”). The relevant purchasing public comprises purchasers and users of malt for brewing and distilling, and persons and
entities that have or obtain grain and need to have it malted.

The Board explained that Applicant's reliance on Princeton Vanguard was misplaced. "The fact that there is no evidence of third-party use of the precise term 'mechanically floor-malted' is not, by itself, necessarily fatal to a finding of genericness."

According to Princeton Vanguard, "[T]here is only one legal standard for genericness: the two-part test set forth in Marvin Ginn. … Regardless of whether the mark is a compound term or a phrase, the applicable test is the same and the Board must consider the record evidence of the public’s understanding of the mark as a whole. Am. Fertility, 188 F.3d at 1348-49."

Princeton Vanguard explicitly did not overturn In re Gould, in which dictionary definitions and explanatory text in the applicant's specimen sufficed to establish genericness. By remanding the Princeton Vanguard case to the Board for full consideration of dueling surveys, the CAFC merely underscored that all evidence bearing on public perception must be given appropriate consideration.

Here, as in In re Gould, the record consists of dictionary and industry specific evidence demonstrating the use of the words, ”mechanical,” “mechanically,” “malt,” “malting,” “malter,” “malted,” “floor-malting,” “floor-malted,” and “floor-malter,” and demonstrating how these words may be used together. These examples clearly show the meanings that relevant consumers attribute to those words when they are used separately and when they are used together. The purchasers in this case are not members of the general public who might not be familiar with the processing of grain for brewing or distilling. Here, the customers are those in the brewing and distilling business who are likely to know exactly what MECHANICALLY FLOOR-MALTED malt is and the process for producing this type of malt, regardless of the grammatical form of the word “mechanical” or whether “floor-malted” is spelled with a hyphen. 

The Board observed that "an applicant’s own website or marketing materials may be probative, or even, as in Gould, 'the most damaging evidence,' in indicating how the relevant public perceives a term." On its specimen website page, Applicant Mecca "admits that 'floor-malted' refers to a type of malt (available not only from Applicant but from others) for brewing and distilling and that 'floor-malting' is a process performed by others." As to the services, Mecca concedes that floor-malted malt may be produced using machinery.

The record as a whole establishes that with regard to the International Class 31 goods, consumers would understand the designation “mechanically floor-malted” to signify a specific kind of “[m]alt for brewing and distilling.” Similarly, with respect to the International Class 40 services, this evidence also shows that consumers would understand Applicant’s proposed mark as a whole to identify “[p]rocessing of agricultural grain.”

In short, the record showed that the mark Mecca seeks to register will be understood by the relevant public primarily as referring to the identified genus of goods and services. The fact that the term is an adjective rather than a noun "does not render it less generic." In re Central Sprinkler Co., 49 USPQ2d 1194, 1199 (TTAB 1998) (ATTIC for fire sprinklers); see also Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1366 (TTAB 2013) (FOOTLONG for sandwiches).

Regardless of whether Mecca is the first and only user of the designation, it is not entitled to register a generic term. The test is not whether relevant consumers use the term to identify the genus, but whether consumers perceive the term as such.

The Board therefore concluded that MECHANICALLY FLOOR-MALTED is incapable of functioning as a mark for the subject good and services, and it affirmed the refusal to register on the Supplemental Register.

Read comments and post your comment here.

TTABlog comment: This phrase is a sub-genus of a sub-genus. The line between genericness and mere descriptiveness seems a bit fuzzy in these cases.

Text Copyright John L. Welch 2018.

Tuesday, March 13, 2018

Recommended Reading: Prof. Eric Goldman, "Emojis and the Law"

Eric Goldman, Professor at Santa Clara University School of Law, Director of the law school's High Tech Law Institute, and well known blogger (Technology and Marketing Law Blog), considers the problematic role played by emojis in modern day discourse, in his paper, "Emojis and the Law." [Download pdf here]. The article is "forthcoming" in Volume 83 of the Washington Law Review, but Eric has made available his latest draft.


Emojis are an increasingly important way we express ourselves. Though emojis may be cute and fun, their usage can lead to misunderstandings with significant legal stakes—such as whether someone should be obligated by contract, liable for sexual harassment, or sent to jail.

Our legal system has substantial experience interpreting new forms of content, so it should be equipped to handle emojis. Nevertheless, some special attributes of emojis create extra interpretative challenges. This Article identifies those attributes and proposes how courts should handle them.

One particularly troublesome interpretative challenge arises from the different ways platforms depict emojis that are nominally standardized through the Unicode Consortium. These differences can unexpectedly create misunderstandings.

The diversity of emoji depictions isn’t technologically required, nor does it necessarily benefit users. Instead, it likely reflects platforms’ concerns about intellectual property protection for emojis, which forces them to introduce unnecessary variations that create avoidable confusion. Thus, intellectual property may be hindering our ability to communicate with each other. The Article will discuss how to limit this unwanted consequence.

Read comments and post your comment here.

Text Copyright John L. Welch 2018.

Monday, March 12, 2018

TTAB Test: Which Of These Three Section 2(d) Refusals Was Reversed?

It has been said that one can predict the outcome of a Section 2(d) appeal 95% of the time just by looking at the marks and the goods or services. Presented for your consideration are three recent TTAB decisions in Section 2(d) appeals. One refusal was reversed. Which one? [Answer in first comment].

In re David Copeland-Smith, Serial No. 85498107 ((March 9, 2018) (Opinion by Judge Albert Zervas) [not precedential]. [Oral argument in this appeal was heard at Tulane Law School on February 28, 2018. Section 2(d) refusal of BEAST MODE SOCCER for "T-shirts" and "Sporting goods and equipment for soccer training, namely, balls" [SOCCER disclaimed], in view of the registered mark BEAST MODE, owned by NFL player Marshawn Lynch, for "t-shirts" and "Men's, women's and children's clothing, namely, shirts, sweatshirts; headwear, namely, hats, caps"].

In re Raphael Dal Bo AG, Serial No, 79204613 (March 9, 2018) (Opinion by Judge Lorelei Ritchie) [not precedential] [Section 2(d) refusal of the mark RAPHAEL DAL BO LA VITA È BELLA for “alcoholic beverages except beers," in view of the registered mark VITABELLA for "Alcoholic beverages containing fruit; aperitifs, liqueurs; pre-mixed alcoholic beverages, other than beer-based; spirits; wine; red wines; rose wines; sparkling wines; white wines"].

In re Biowish Technologies International Inc., Serial No. 86739178 (March 7, 2018) (Opinion by Judge Michael B. Adlin]. [not precedential] [Section 2(d) refusal of the mark BIOWISH GARD’N FRESH for "fruit and vegetable wash," in view of the registered mark GARDEN FRESH for "cleaning preparations for household purposes"].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2018.

Friday, March 09, 2018

The Trademark Reporter's 2018 "Annual Review of U.S. Trademark Cases"

The Trademark Reporter has published its Annual Review of U.S. Trademark Cases: "The Seventieth Year of Administration of the Lanham Act of 1946," by Theodore H. Davis, Jr. and yours truly, John L. Welch. (download pdf here). The issue is dedicated to the late Arthur J. Greenbaum.

In his Introduction, Ted Davis observes that in Matal v. Tam, a case that will be remembered "fondly or otherwise," the Supreme Court invalidated a federal intellectual property statute for only the second time, the first beingThe Trademark Cases in 1879. The latter decision had significant consequences: trademark owners lacked federal protection until passage of the Trademark Act of 1905. Tam is not likely to have such a dramatic impact, since few provisions of the Lanham Act are viewpoint discriminatory. Some content-based restrictions, however, are or may be on the ropes: for example, the scandalousness provision of Section 2(a).

Ted also notes the TTAB's strong stand, in view of the federal Controlled Substances Act, against registration of marks used (or intended to be used) for marijuana-related products and services. An unexpected flurry of surname refusal cases under Section 2(e)(4) signaled a shift in the Board's focus to consumer perception rather its previous, more mechanical approach. And the Board continues to reject fraud claims, in contrast to the more receptive approach of the federal courts on that issue.

Finally, Ted notes that the Supreme Court has failed to resolve the issue that has long split the lower courts: whether a prevailing plaintiff in a trademark suit must show willful misconduct by the defendant infringer in order to obtain an accounting of profits.

* * * * * * * *
Again I thank The Trademark Reporter for granting leave to provide a link to this issue, which is Copyright © 2018 the International Trademark Association and reprinted with the permission of The Trademark Reporter®, 108 TMR 1 (January-February 2018).

Read comments and post your comment here.

Text Copyright John L. Welch 2018.

Thursday, March 08, 2018

TTAB Sustains Opposition to "REMEMBER THIS NAME" - Fails to Function as a Mark for Legal Services

The Board sustained an opposition to registration of the slogan REMEMBER THIS NAME for legal services on the ground that the phrase does not function as a service mark. Applicant Lundy Law failed to provide direct testimony or survey evidence regarding consumer perception of the slogan as a source indicator. Larry Pitt Associates, P.C. v. Lundy Law, LLP, Opposition No. 91210158 (March 6, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).

Procedural Issues: The Board denied Lundy's motion to introduce into evidence, well after the close of trial and briefing, a single Facebook posting due to the lateness of the request, the lack of significant probative value, and the prejudice to opposer in delaying further this five-year old proceeding.

The Board limited the testimony of each party's expert witness to legal marketing issues, and refused to consider any assertions regarding how consumers would perceive applicant's mark, observing that the opinion of purported experts may not "serve as a substitute for the Board's judgment on the legal claim" before it.
Finally the Board jettisoned various items of proposed evidence, ruling that they were not eligible for submission via notice of reliance: including a written analysis of Lundy's advertising, video and audio recordings of use of REMEMBER THIS NAME by third-parties and by Lundy, and email communications involving Lundy. The Board noted that the documents that are eligible for a notice of reliance are registrations owned by a party, Internet materials, and discovery responses. See Rule 2.122(e)(1), (e)(2), (g), and (k).

Standing: Opposer Larry Pitt did not discuss the threshold issue of standing, but the Board found from the evidence that the parties are competitors in the field of personal injury law.

Failure to Function: The critical issue in determining whether a designation functions as a mark is how the relevant consumers perceive the purported it. "The mere fact that a designation appears on the specimen of record does not make it a trademark."

There is no question that REMEMBER THIS NAME may be considered a slogan, tagline, or a “call to action” used in Applicant’s advertising. The issue is whether REMEMBER THIS NAME as used by Applicant performs the function of a service mark by signifying to purchasers the source of the legal services being offered by Applicant.

The Board observed that 1-800-LUNDY LAW is the prominent element of applicant's advertising, while REMEMBER THIS NAME is the least prominent.

[The definition of trademark] contemplates use in such a manner as to fulfill that function and clearly does not contemplate that the public will be required or expected to browse through a group of words, or scan an entire page in order to decide that a particular word, separated from its context, may or may not be intended, or may or may not serve, to identify the product [or service] of the manufacturer or dealer. Ex parte National Geographic Society, 83 USPQ 260 (Comm’r. Pat. 1949).

Applicant Lundy Law did not provide any direct testimony regarding consumer perception of REMEMBER THIS NAME as used in its advertising. The Board found that "[t]he impression created by Applicant’s use of REMEMBER THIS NAME is an advertising message, informational slogan or a 'call to action' rather than an expression to identify and distinguish Applicant’s legal services." Although such a phrase could serve as a service mark, it must be used in such a way that it is perceived as an indicator of source of the services being advertised.

In this case, however, Applicant’s use of REMEMBER THIS NAME does not rise to the level of a service mark because there is nothing in the record demonstrating that the phrase REMEMBER THIS NAME creates a commercial impression separate and apart from the other material with which it appears in Applicant’s advertising.

And so the Board sustained the opposition.

Read comments and post your comment here.

TTABlog comment: Shirley, applicant needed a survey to show consumer perception. BTW this case was argued at Tulane Law School on February 28, 2018. One week later, the decision!

Text Copyright John L. Welch 2018.

Wednesday, March 07, 2018

Playboy Bunny Fails to Save GND Logo Mark From Section 2(d) Refusal, Says TTAB

Playboy Enterprises failed to pull a rabbit out of its hat in this appeal from a Section 2(d) refusal of the mark shown below, for various entertainment services including video game-related services. The Board,  however, found the mark likely to cause confusion with the registered mark GND for "provision of Internet website featuring news and information relating to current affairs, business, sports and entertainment."  In re Playboy Enterprises International, Inc., Serial No. 86745640 (March 5, 2018) [not precedential] (Opinion by Judge Albert Zervas).

The Marks: Playboy claimed that its mark "evokes the unique image of video gaming in conjunction with" its Rabbit Head Design, and further that the x-shape in the mark suggest the direction pads of video game controllers. Moreover, the combination of the letters GND with its allegedly iconic Rabbit Head Design purportedly calls to mind Playboy’s history and its association with the phrase “Girl Next Door.” Therefore, confusion would not be likely. The Board was not impressed.

We find that purchasers will give more weight to the letters than the design elements in considering the mark in its entirety, because the letters are large in size, the pentagon-shaped arrows function as a background for each letter, and the “rabbit head design” is not likely to be articulated verbally in this mark.

There was no evidence that the letters GND would be recognized as referring to Applicant Playboy. Furthermore, Playboy's own use of the mark indicates that it intends the letters “G,” “N” and “D” to mean “Gamer Next Door,” not “girl next door.”

Even if consumers perceive the "rabbit head design" as a house mark and GND as a service mark, there still would be likely confusion, since addition of a house mark "does not obviate confusion." Indeed, the Board noted, "this could engender reverse confusion" with registrant's mark.

In sum, the Board found Playboy's mark to be more similar than dissimilar to the cited mark.

The Services: The Board found the services to be overlapping since both applicant and registrant provide a website and registrant's entertainment information may include information about video game tournaments, events, and competitions. Similarly, Playboy's continuing programming about the gaming industry may be identical to the contents of registrant's website. Third-party use and registration evidence confirmed the relatedness of the involved services. The Board presumed that the purchasers and trade channels are the same for the overlapping services.

Conclusion: Confusion is likely, and so the Board affirmed the Section 2(d) refusal.

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TTABlog comment: Not exactly a hare-raising decision.

Text Copyright John L. Welch 2018.