Monday, July 06, 2015

Precedential No. 17: TTAB Refuses to Vacate HOUNDSTOOTH MAFIA Decision

An augmented Board panel denied the opposers' request to reopen, vacate, and dismiss without prejudice the TTAB's 2013 precedential decision [TTABlogged here] which dismissed an opposition to registration of the mark HOUNDSTOOTH MAFIA, in the design form shown below, for "shirts, hats." Opposers claimed Section 2(d) likelihood of confusion and Section 2(a) disparagement and false association, based on alleged trademark rights arising out of the University's and Coach Bear Bryant's use of a houndstooth pattern in conjunction with athletic services. A subsequent civil action for review of the Board's decision resulted in settlement and entry of a consent judgment, which in part ordered that the Board's decision be vacated.  The Board of Trustees of The University of Alabama and Paul W. Bryant, Jr. v. William Pitts, Jr. and Christopher Blackburn, Opposition No. 91187103 (June 23, 2015) [precedential].

The Board indicated that an augmented panel of five Administrative Trademark Judges, including the Chief Judge and the Deputy Chief Judge, was employed because of the importance of the issue and the frequency with which such requests for vacatur are made.

The civil action under Section 21(b)(1) for review of the TTAB's decision was filed in the U.S. District Court for the Northern District of Alabama. In settling the case, the parties submitted to the court a Final Consent Judgment, which would result in assignment to the University of applicants' rights in the HOUNDSTOTH MAFIA mark, including the opposed application. The consent judgment recited certain agreed-upon facts that "might be understood to stand in contradiction to those found by the Board" - for example, that the houndstooth pattern enjoys "widespread association with the University." The parties agreed that the Board's Order should be vacated.

The district court issued the Final Consent Judgment in May 2014, ordering that the Board's decision be vacated and that the "Register of Trademarks" allow the opposed application to proceed to registration. Opposers then filed with the Board their "Request to Reopen, Vacate and Dismiss Without Prejudice." Although applicants did not file an opposition to the motion, the Board chose to consider the motion on the merits in view of the "policies and public interest implicated by a request to vacate a precedential opinion based on a settlement."

When a dispute involving registrability becomes moot after a Board decision, due to settlement during an appeal, the appellate court will typically dismiss the appeal as moot and remand the case to the Board to allow the parties to move for vacatur of the Board's decision. In U.S. Bancorp, the Supreme Court, interpreting 28 U.S.C. Section 2106, held that "mootness by reason of settlement does not justify vacatur of a judgment under review," absent "exceptional circumstances." However, because the TTAB is not an Article III appellate court, U.S. Bancorp does not apply to a Board decision. Furthermore, opposers did not invoke FRCP 60(b) in seeking relief from the Board's judgment. The Board therefore undertook the initial task of determining the authority under which Opposers' request fell.

Section 21(b)(1) of the Lanham Act empowers a district court to adjudge that applicant's entitlement to a registration, whether a registration should be canceled, or such other matters as the issues may require. That section also provides that a district court "shall authorize the Director to take any necessary action, upon compliance with the requirements of law." [Emphasis supplied by the Board].

The Final Consent Judgment, however, does not reference any record evidence and "does not appear to involve adjudication," and "does none of these things a court is empowered to judge or directed to inform the Director of, following adjudication." It does not order that applicants are entitled to a registration and does not order cancellation of any registration. The Board saw no other "issues" as to which the court determined any facts, and it concluded that vacatur of the precedential Board opinion is not a "necessary action" under Section 21(b))1).

The court's directive that the PTO allow the application to proceed to registration did not require that the Board's decision be vacated and the opposition dismissed: it was not a "necessary action," because the assignment of the application was sufficient to allow the application to proceed to registration on behalf of the University. The Board's decision, which dismissed the opposition, did not stand  in the way of registration.

Concluding that 28 U.S.C. Section 2106 was not implicated, noting that Rule 60(b) was not invoked, and ruling that Section 21(b)(1) did not require vacatur, the Board then considered the matter in view of its "general equitable authority," under which it undertakes to balance the equities.

The Board saw no exceptional circumstances or any public interest that would require vacatur. The district court did not determine that the Board decision was wrong in any way. The Final Consent Judgment stated that the Board's order was erroneous in unspecified "material respects." In short, the Board concluded that the consent judgment did not represent an adjudication of any of the facts or issues before the court.

The Board's decision was deemed precedential in order to provide guidance to trademark practitioners on the issues decided. The consent judgment did not point to any error in the Board's decision, and nothing suggested the existence of any public interest that would be advanced by vacatur and that would outweigh the the Board's determination that the decision had precedential value.

And so the Board denied the motion.

Read comments and post your comment here

TTABlog comment: Had the opposers invoked FRCP Rule 60, the result would likely have been the same. Under that Rule, the sixth ground for relief, "any other reason that justifies relief," was pertinent here. Surely the Board would have ruled that relief was not justified.

Text Copyright John L. Welch 2015.

Thursday, July 02, 2015

Precedential No. 16: MARAZUL and BLUE SEA Confusable for Seafood, Says TTAB

The Board affirmed a Section 2(d) refusal to register the mark MARAZUL for "fish and seafood products, namely, frozen and fresh processed fish and seafood, and imitation crab meat," finding the mark likely to cause confusion with the registered mark BLUE SEA for "non-live fish and frozen fish." The Board also affirmed a refusal based on the applicant's failure to comply with Examining Attorney Jason F. Turner's requirement that it provide a translation of the mark. In re Aquamar, Inc., Serial No. 85861533 (June 25, 2015) [precedential].

Translation Requirement: The Examining Attorney provided evidence that the term "mar azul" is a Spanish term meaning "blue sea," and he required Applicant to submit an English translation of all foreign wording in the mark, under Rule 2.32(a)(9). Applicant did not address that evidence, but instead insisted that MARAZUL is a "unitary and inseparable and arbitrary term coined by Applicant having no direct English translation." The Examining Attorney then supplied additional evidence, including a page from Applicant's website, stating that its seafood products are the first "designed to truly target the U.S. Hispanic market with authentic bilingual packaging." Its specimens of use (see above) illustrated its use of bilingual packaging.

The translation requirement was made final, and Applicant never provided he required translation, maintaining it its appeal brief that MARAZUL is an "arbitrary, coined, unitary term and brand created by Applicant and ... has not direct English translation."

The Board rejected Applicant's argument that MARAZUL is a unitary, unseparable term, finding no evidence that combining "mar" and "azul" into a single term results in a mark having a commercial impressions different from the separated terms MAR and AZUL. Moreover, in light of Applicant's bilingual packaging, its claim that MARAZUL is an arbitrary, coined term was inconsistent with the record evidence and "not credible."

Therefore the Board affirmed the refusal based on Applicant's non-compliance with the translation requirement.

 Likelihood of Confusion: Because the involved goods are in part identical, the Board presumed that they travel in the same channels of trade to the same classes of consumers. Not only did these facts weigh heavily in favor of a finding if likely confusion, but they also reduced the degree of similarity between the marks necessary to support such a finding.

The record evidence established that the meanings of the marks are identical. Under the doctrine of foreign equivalents, foreign words from common languages such as Spanish are translated into English for purposes of determining likelihood of confusion with an English word mark. The doctrine applies when it is likely that "the ordinary American purchaser would 'stop and translate [the term] into its English equivalent." See In re Thomas.

The Board found that ordinary purchasers of fish would stop and translate the term MARAZUL into English. "In fact, that is essentially Applicant's stated intention, as MARAZUL-branded fish is 'designed to truly target the U.S. Hispanic market with authentic bilingual packaging." The appearance of several Spanish words displayed on Applicant's packaging next to their English equivalents, increased the likelihood that consumers will translate MARAZUL, as does the display of MARAZUL in blue with a nautical-themed logo, together with the phrase "productos del mar."

The Board acknowledged that meaning alone is not the only consideration when comparing two marks in the assessing likelihood of confusion, but the exact equivalence in meaning of MARAZUL and BLUE SEA outweighed the differences in appearance and sound.

And so the Board also affirmed the Section 2(d) refusal.

Read comments and post your comment here

TTABlog comment: I think branding live fish would be quite difficult, since they are so slippery. By the way, this case illustrate the old adage, when the Examining Attorney requires you to jump, you just ask "how high?"

Text Copyright John L. Welch 2015.

Wednesday, July 01, 2015

TTAB Posts July 2015 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled six (6) oral hearings for the month of July, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner). Briefs and other papers for these cases may be found at TTABVUE via the links provided.

July 9, 2015 - 2 PM: In re Peter Tesher, Serial No. 85405171 [Section 2(e)(1) mere descriptiveness refusal of COLLEGE BIDS for "On-line trading services in which a seller posts items to be sold at a set price; online trading services in which a seller posts items to be sold in an auction-style format where bidding is done electronically; and providing evaluative feedback and ratings of sellers' goods and services, the value and prices of sellers' goods, buyers' and sellers' performance, and delivery and overall trading experience in connection with the foregoing, all for commercial purposes," and refusal based on failure to disclaim COLLEGE as to feedback and ratings services.]

July 14, 2015 - 2 PM: In re Shanon Preston, Serial No. 85864287 [Section 2(d) refusal to register the mark UNRATED for"Clothing sold only through owner's online store, namely, anti-sweat underwear, hats, jackets, pants, rash guards, shirts, shorts, sleepwear, sports bra, sweat pants, sweat shirts, swim wear, t-shirts, tops, underwear, yoga pants," on the ground of likelihood of confusion with the registered mark UNR8ED for "footwear."]

July 14, 2015 - 2:30 PM: In re Shanon Preston, Serial No. 85864264 [Section 2(d) refusal to register the mark GET CENSORED for "Clothing sold only through owner's online store, namely, hats, jackets, pants, rash guards, shirts, shorts, sleepwear, sports bra, sweat pants, sweat shirts, swim wear, t-shirts, tops, underwear, and yoga pants" on the ground of likelihood of confusion with the registered mark CENSORED for jeans, shirts, shorts, and other clothing items.]

July 15, 2015 - 11 AM: In re Johnson & Johnson, Serial No.77684321 [Refusal to register the mark BEST FOR BABY for "Toiletries, namely, baby bath skin cleansers and washes, and baby lotion," on the ground that applicant's specimens do not establish trademark use.]

July 21, 2015 - 2 PM: In re Epiq Systems, Inc., Serial Nos. 85979129 and 85978692 [Refusal to register the marks DMX MOBILE and DOCUMATRIX MOBILE for "Consulting in the field of technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems; Leasing of computer software that stores and manages documents, digital media, text, sound, and images, all in the fields of electronic discovery, internal corporate matters, compliance, second requests, litigation, investigations, and document management for purposes of responding to discovery" and "Consulting in the field of technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems; leasing of computer software that stores and manages documents, digital media, text, sound and images in the fields of electronic discovery, internal corporate matters, compliance, second requests, litigation, investigations and document management" [MOBILE disclaimed] on the ground that applicant's specimens do not show the mark in actual use in commerce for the identified services.]

July 28, 2015 - 2 PM: In re Ovo Joint Venture LLC, Serial No. 85551871 [Section 2(e)(1) deceptive misdescriptiveness refusal of the mark OVO [translated as "egg"] for "Adult sexual stimulation aids ...."]

Read comments and post your comment here.

TTABlog note: Any predictions? See any WYHA?s here?

Text Copyright John L. Welch 2015.

Monday, June 29, 2015

TTABlog Quarterly Index: April - June 2015

E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. You may also follow the blog on Twitter (here). And don't forget to leave your comments! [Note that E-mail subscribers may have to surf to the blog to see comments]. Finally, please report any broken or inoperative links, as well as any errors and omissions, to the TTABlogger at jwelch at wolfgreenfield dot com.

Section 2(a) - Disparagement:
Section 2(d) - Likelihood of Confusion:
Section 2(e)(1) - Mere Descriptiveness:
Section 2(e)(4) - Primarily Merely a Surname:
Section 2(f) - Acquired Distinctiveness:
Application Requirements:
Concurrent Use:
Failure to Function/Specimen of Use:
CAFC Decisions:
Recommended Reading:

Text Copyright John L. Welch 2015.

"MATTRESS OVERSTOCK & Design" Not Confusable With "OVERSTOCK.COM," Says TTAB

The Board dismissed this Section 2(d) opposition to registration of the mark MATTRESS OVERSTOCK, in the design form shown below, for "retail store and on-line retail store services featuring furniture and sleep products" [MATTRESS OVERSTOCK disclaimed], finding the mark not likely to cause confusion with the registered mark OVERSTOCK.COM for online wholesale and retail store services featuring general consumer merchandise, including furniture, linens, and pillows. Although the services overlapped, the term OVERSTOCK, which is used by third parties to describe their retail store services, is "conceptually very weak," and consequently "the fact that the two marks share this term has little significance.", Inc. v. J. Becker Management, Opposition No. 91203624 (June 15, 2015) [not precedential].

I prepared a long summary of this opinion, only to delete it accidentally while it was still in draft form. Since I don't have the time (or will) to spend another two hours on this case, so I will just say the following.

The evidentiary issues discussed at the beginning of the opinion are worth reviewing. Most of opposer's evidence, though admissible, was not probative because it was hearsay. In other words, various documents were admitted for what they showed on their faces, but not for the statements made in the documents. For example, opposer's 2012 10-K statement was admissible by way of notice of reliance under Safer, but without testimony it could not be used to prove the facts stated therein. In other words, Safer eliminated the need for testimony establishing when and from where a document had been downloaded from the Internet, but testimony is still needed if the document is offered to prove the statements made in the document. Consequently, opposer's sales and revenue figures set forth in the annual report were hearsay because no witness confirmed their provenance or accuracy.

On the substantive side, because of the evidentiary deficiencies in opposer's proofs, it was unable to show that its mark was "famous" under Section 2(d) and entitled to a broad scope of protection. The inherent weakness of the word "overstock" for retail services was critical to the Board's finding of no likelihood of confusion.

Read comments and post your comment here

TTABlog comment: Think about the preclusion issue here. In a subsequent infringement action, is stuck with the findings regarding the strength of its mark? The dissimilarity of the marks? Seems to me the answer is yes.

Text Copyright John L. Welch 2015.

Friday, June 26, 2015

TTAB Test: Are KNOTTY BRUNETTE and NUTTY BREWNETTE Confusingly Similar for Beer?

Applicant sought to register the mark KNOTTY BRUNETTE for "beer, ale and lager," but the USPTO refused registration, finding the mark likely to cause confusion with the mark NUTTY BREWNETTE for beer. The goods are, in part, identical, but what about the marks? How do you think this came out? The Board panel was divided on the question. In re Twin Restaurant IP LLC, Serial No. 85934428 (June 24, 2015) [not precedential].

Applicant lamely argued that there would be no confusion because its KNOTTY BRUNETTE beer is sold only in Applicant’s Twin Peaks restaurants, which feature "sexy wait staff," and so consumers will understand the mark to be a homophone for "naughty brunette." The Board pointed out, however, that because the goods identified in the application are in part identical to those of the cited registration, it must presume that those goods travel through the same, normal channels of trade (including restaurants not owned by applicant) to the same classes of consumers.

The panel majority found the first du Pont factor - the similarity or dissimilarity of the marks - to be dispositive. Although the marks have slight differences in sound when pronounced correctly, it must be remembered that there is no correct pronunciation of a trademark [What about APPLE or BLACK CAT? - ed.]. Therefore the Board must assume that a consumer could pronounce the marks in the same way.

However, the Board majority found the "obvious" differences in appearance, connotation, and commercial impression to be critical. The primary connotation of the registered mark NUTTY BREWNETTE is the flavor of the beer. The phrase connote a "nutty brew" or nutty flavored beer. The Board recognized that the registered mark is also a double entendre for “nutty brunette” to denote "a dark-haired female with a 'nutty' or 'silly, strange, or foolish' personality." Nonetheless, "the appearance and primary connotation and commercial impression of the mark projects a nutty flavored type of beer."

In Applicant’s mark, "knotty" is a homophone for "naughty," conveying the meaning of "relating to or suggesting sex in usually a playful way." "Applicant’s mark is more likely to project the connotation of a 'naughty brunette,' that is to say, a dark-haired woman displaying a playful type of sexiness."

Moreover, both the adjectives “knotty” as well as its homophone “naughty” are entirely devoid of any connotation of nut or nut-like flavoring. Thus, the marks have their own unique humorous play on words that project separate meanings and distinct commercial impressions. As a result, when confronted with both marks, prospective consumers are unlikely to assume that Applicant’s and Registrant’s respective goods originate from the same source

The panel majority concluded that the dissimilarities in the marks outweighed the other du Pont factors, and so the Board REVERSED the refusal to register.

Judge David Bucher dissented, pointing out that similarity in sound alone may be sufficient to establish that two marks are confusingly similar.

Inside a noisy bar, as the night wears on, and the bartender and patron trade verbal exchanges ... any aural differences in the short vowel sounds of only the first of these four syllables will likely not be readily distinguishable – and especially to southern ears.

Judge Bucher also saw a similarity in connotation and he questioned the majority's assumption that a consumer would "retain fine connotations from one tavern to the next."

Yet the majority acknowledges similar sounding marks, each having one or even several double entendres! Let’s see, was that dark-haired female of several weeks ago an extremely difficult personality ("knotty"), strange ("nutty"), or playfully sexy ("naughty"). Or if the brew has an earthy flavor profile – in a wild, Euell Gibbons kind of way – was it due to the (knotty) bark or nuts?

When the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion, Judge Bucher reminded. And in cases of doubt in the 2(d) ex parte context, the benefit of the doubt goes to the registrant.

Read comments and post your comment here

TTABlog note: I side with Judge Bucher on this one. He sounds like he has real marketplace experience. Personally, I like the taste of NASTY BROONETT.

Text Copyright John L. Welch 2015.

Thursday, June 25, 2015

041 BACARO & Design Confusable With BACARO for Restaurant Services, Says TTAB

The Board affirmed a refusal to register the mark 041 BACARO & Design, shown below, for "Restaurant and bar services [BACARO disclaimed]," finding it likely to cause confusion with the mark BACARO, registered for the same services. Applicant argued that BACARO means "Venetian Bar" and therefore is descriptive or generic for the services, but the Board refused to consider that argument because it constituted an improper collateral attack on the validity of the cited registration. In re G2D Management, LLC, Serial No. 85703129 (June 22, 2015) [not precedential].

In addition to its futile arguments regarding descriptiveness and genericness of the cited mark, applicant also argued that the cited mark is weak because consumers are accustomed to seeing the term BACARO in restaurant names. In support of that contention, applicant submitted the results of two Google brand searches and copies of pages from a tour company website offering tours of Venice "bacari." However, the Google listing provided little information regarding each establishment, some references were ambiguous or irrelevant, and a few referred to foreign restaurants. In short, this evidence "failed to establish such widespread use of 'bacaro' for restaurants or bars that consumers would be accustomed to distinguishing marks using the term on the basis of other components of the marks."As to the tour guide pages, the eateries named were located in Italy. Although the pages were in English, and thus presumably available to U.S. customers, the record did not show the extent of exposure to the website or that "bacaro" applied to bars in the USA.

Examining Attorney Tracy Cross submitted copies of pages from the websites of both applicant and registrant, showing that each recognizes the Italian origins of "bacaro." This, however, did not demonstrate that BACARO is weak, but "merely underscores the foreign regional nature of the term 'bacaro.'" Applicant's disclaimer did not affect that conclusion, the Board noting that an applicant's voluntary disclaimer of a term has no effect on the the issue of likelihood of confusion.

Turning to a consideration of the marks, the Board found that, despite the large size of the numbers "041," the term BACARO is a "salient feature" of applicant's mark and is of equal prominence with the numbers. "Moreover, consumers are more likely to remember a pronounceable term such as 'bacaro' rather than an arbitrary string of numbers." The Board also pointed out that, because the cited mark is in standard character form, the registrant could display its mark in the same font style as applicant's mark.

Bearing in mind that the marks will be used for identical services, the Board found the marks "more similar than dissimilar and not so different as to avoid a likelihood of confusion."

Read comments and post your comment here

TTABlog note: Do you hear the rumblings of an oncoming cancellation proceeding? Justice is supposed to be blind, so would you say that here the Board was Venetian blind?

Text Copyright John L. Welch 2015.

Wednesday, June 24, 2015

TTAB Test: Is GROCERY GEAR Merely Descriptive of Reusable Grocery Bags?

The USPTO refused to register the mark GROCERY GEAR in the stylized form shown below, finding it to be merely descriptive of "reusable grocery bags." Applicant Penny Johnson appealed, arguing that the lack of evidence of third-party use of GROCERY GEAR in a descriptive manner established that the mark is not merely descriptive. How do you think this came out? In re Penny Johnson, Serial No. 86017471 (June 22, 2015) [not precedential].

Examining Attorney Karen Severson relied on dictionary definitions of "grocery" (food bought at a store) and "gear" (equipment, paraphernalia), noting that the word "grocery" appears applicant's identification of goods. The scant Internet evidence showed us of "fabulous grocery gear" in connection with reusable grocery bags, and "Grocery Gear: Keep your cool" for a "collapsible cooler used to carry groceries." Three third-party registrations disclaimed "grocery" and three disclaimed "gear" for reusable bags or shopping bags.

The Board found that this evidence established the descriptive meaning of GROCERY and GEAR for applicant's goods. The combination of the two words, it concluded, did not evoke any new or unique commercial impression.

Applicant itself has described its goods as “reusable grocery bags,” and the manner in which Applicant promotes its goods, i.e., “pack & transport grocery system,” consumers would understand that the applied-for mark describes the purpose and/or a feature of the goods, namely, that they are bags intended to carry items from a grocery store."

As for applicant's argument that no third-party uses the phrase GROCERY GEAR, the Board pointed out that a term may be merely descriptive even if the applicant is the first and only user of same. The Board also noted that "some" of the evidence showed third-party use of "grocery gear."

The Board found nothing incongruous in the mark, and the stylization of the mark did not detract from its descriptiveness. Although any doubt regarding mere descriptiveness must be resolved in favor of the applicant, the Board had not doubt here in affirming the refusal to register.

Read comments and post your comment here

TTABlog note: I think "gear" is too vague a term to be descriptive here. A bag is not "gear," by my way of thinking. The word tells you nothing more about the goods than what you would know by looking at them: obviously a bag for carrying groceries. What do you think?

Text Copyright John L. Welch 2015.

Tuesday, June 23, 2015

TTAB Reverses Rejection of TRULICITY Specimen of Use: Display in Ordinary Text Enough

The Board reversed a refusal to register the mark TRULICITY for "pharmaceutical preparations for the treatment of diabetes, finding that applicant's specimen "demonstrates use of the mark that Applicant seeks to register with the meaning of the Trademark Act. In re Eli Lilly and Company, Serial No. 85183667 (June 18, 2015) [not precedential].

The examining attorney maintained that the specimen of use (shown below) "shows the proposed mark as part of [a] logically connected and continuous sentence ...." He noted that the word TRULICITY is in the same size and style of font as the surrounding wording and is not "set out from the surrounding text." One viewing the specimen of use, he contended, would have to search through the text even to find the mark.

(Click on photo for larger picture)

Applicant pointed out that TRULICITY is the only coined term on the specimen, appearing just before the generic name of the goods. It has an initial capital "T" and is accompanied by the "TM" designation. The Board, applicant argued, should not apply a mechanical test but instead should consider the commercial impression made by the mark.

The Board observed that "a trademark ... need not be displayed in any particular size or degree of prominence." The key question is whether it will be understood as indicating the origin of the goods. The Board paraphrased the specimen as stating: "This package contains either Trulicity brand dulaglutide or a placebo." This conveys "exactly the message that a trademark is supposed to convey, i.e., that the package contains Trulicity brand goods." [The Board noted that goods bearing this particular label are delivered to highly sophisticated users, i.e., medical or scientific professionals and subjects under their care.]

Cases cited by the examining concerned whether a mark was in "use" at all, or concerned descriptive or highly suggestive wording that might be perceived as informational. TRULICITY, the Board pointed out, is a fanciful, coined term.

Even though it may be embedded in other text, there is no danger that this coined term will be interpreted as merely descriptive or informational matter. It is also the only coined designation in the text of the label, and is set out with a “TM” symbol, further indicating it is a trademark. As such, its only purpose is to provide a unique identifier to a product that is otherwise identified only by a generic name and technical, explanatory information. Its placement on the product label is sufficient to “make it known to purchasers,” and its placement immediately adjacent to the generic name of the goods allows customers to “associate it with the goods.”

The Board concluded that TRULICITY, as used, meets the statutory definition of a trademark. Although display of the mark may be understated, it is up to applicant to decide how it wishes to display the mark to customers in the scientific research field.

Read comments and post your comment here

TTABlog comment: I don't particularly like this decision. I think a trademark should stand out from surrounding text. According to this decision, a TM symbol and an initial cap may be enough. I would require bold font and all caps.

Text Copyright John L. Welch 2015.

Monday, June 22, 2015

WYHA? TTAB Affirms Mere Descriptiveness Refusal of MORINGA SKIN for Body Lotions

The Board, in a three-page opinion, affirmed the USPTO's refusal to register the mark MORINGA SKIN for "lotions for face and body care containing moringa" [MORINGA disclaimed], finding it to be merely descriptive of the goods. The evidence established that moringa oil, derived from the seeds of the Moringa oleifera tree, has many uses, including uses in the skin care industry. In re j. debeaute, Serial No. 85967716 (June 18, 2015) [not precedential].

Applicant feebly contended that MORINGA SKIN is suggestive rather than descriptive because it is not clear whether the phrase revers to the skin of a person or the skin of a moringa fruit: "It takes some thought to realize that applicant's lotions contain moringa extracts and are used for the skin."

The Board pointed out once again that the determination of mere descriptiveness is not a guessing game. The mark must be considered in the context of the identified goods.

The question, however, "'is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods and services are will understand the mark to convey information about them.'"

The Board concluded that a consumer of lotions would readily recognize the MORINGA SKIN immediately conveys information about the goods: they are skin-care products containing moringa. Therefore the mark is merely descriptive of applicant's goods.

Read comments and post your comment here

TTABlog note: Well, would you have?

Text Copyright John L. Welch 2015.

Friday, June 19, 2015

TTABlogger Returns to Boston and Wolf Greenfield

Sometimes you can go home again. On Monday, June 22nd, I will head back across the Longfellow Bridge from Cambridge to Boston [the only direction available these days] to become Counsel to Wolf, Greenfield & Sacks, P.C., in Boston. [Some of you may recall that when I first came to Boston, I was a partner at WGS for 12 years.] This blog will continue on its merry way for the foreseeable future. I look forward to collaborating with my long-time friend, Doug Wolf, my co-chair on the Trademarks and Unfair Competition Committee of the Boston Patent Law Association (BPLA), Christina Licursi, my ex-partner [in a law firm sense] Ed Perlman, and my new and old colleagues at WGS. [New email address: jwelch at wolfgreenfield dot com.]