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

The TTAB recently decided the appeals from the three Section 2(d) likelihood of confusion refusals summarized below. At least one of the three refusals was reversed. How do you think they came out? [Answer will be found in the first comment.]


In re Mas Clarella SL, Application Serial No. 88079246 (May 6, 2021) [not precedential] (Opinion by Judge George C. Pologeorgis). [Section 2(d) refusal of NYMPHS OF CLARELLA in view of the registered mark THE NYMPH, both for wines. Applicant maintained that “nymph” is somewhat suggestive or even descriptive of wine because the term  has a strong association with Dionysus, the Greek god of wine, and therefore the term "OF CLARELLA" distinguishes the marks.]

In re ProBleu, Inc., Serial No. 88310811 (May 4, 2021) [not precedential] (Opinion by Judge Thomas W. Wellington). [Section 2(d) Refusal of PROBLEU for computer information security and computer network support services, in view of the registered mark BLUEPRO & Design for overlapping computer security services. Applicant argued that the transposition of the wording is significant because neither mark gives "any indication as to the goods and/or services they are selling or providing, and the ordering and appearance of the terms thus makes all the difference."]

In re Royal Realty Corp., Serial No. 88380382 (April 22, 2021) [not precedential] (Opinion by Judge Karen Kuhlke). [Section 2(d) refusal of LIVE ON POINT for "Real estate services, namely, leasing and management of buildings," in view of the registered mark ON POINT CAROLINAS REALTY for identical or related real estate services [CAROLINAS REALTY disclaimed]. Applicant argued that the real estate market is replete with uses of "on point," and further that its mark exhorts consumers to LIVE ON POINT, whereas the cited mark informs customers that registrant's services are directed to a specific geographic location.]

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TTABlog comment: How did you do? See any WYHAs here?

Text Copyright John L. Welch 2021.

TTABlog Test: Are These Two "Bull" Designs Confusingly Similar For Auto Parts?

Here's another Section 2(d) opposition involving dueling design marks, this time for overlapping and related auto parts and services. Applicant K2 refers to its mark (on the left) as "an abstract partial body view of a cattle like creature." Opposer Streetcar refers to its mark (on the right) as a "fanciful design of a bison." Confusable? You be the judge. StreetCar ORV, LLC d/b/a American Expedition Vehicles v. K2 Motor Corp., Opposition No. 91248742 (May 3, 2021) [not precedential] (Opinion by Judge David K. Heasley). 

Since the parties goods are in part identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. The Board observed that side-by-side comparison is not the proper approach for comparing the marks. Nonetheless, "the relevant consumers—motorists seeking customized structural modifications for their vehicles—are likely to perceive the parties’ marks as more similar than dissimilar."

The bovine subfamily includes cattle and bison. Both designs depict bulls. Both bulls appear in a three-quarter perspective, their feet planted, their heads lowered beneath prominent humps, as if threatening to charge. Although one faces left and one faces right, that distinction would be little noted nor long remembered—as demonstrated by analogous cases[.]

The Board found that consumers "could easily perceive Applicant's design mark as a stylistically modified version of Opposer’s design mark."

The Board also found that Opposer Streetcar's marks are "somewhat commercially strong." Applicant K2 submitted dozens of third-party registrations for marks that included a bull or a bison figure, but withouy evidence regarding the extent of use of the marks they were entitled to little evidentiary weight. Furthermore, many of the marks were not that similar to Streetcars mark, and the identified goods were as close to Streetcar's goods as are Applicant K2's.

The Board noted that "the frequent, common adoption of bull or bison designs by third parties, as evinced by their registrations, serves to show that the designs are suggestive of the rugged, strong, characteristics or qualities of auto parts." However, "suggestive registered marks are entitled to protection against registration of confusingly similar marks—especially marks used on identical or legally identical goods."

Considering all the relevant DuPont factors, the Board found confusion likely and it sustained the opposition.

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TTABlogger comment: A well-written ramble through the DuPont factors.

Text Copyright John L. Welch 2021.

In a Six-Year TTAB Tussle, Monster Energy and Toronto Raptors Claw Their Way to a Dismissal of All Section 2(d) Claims and Counterclaims.

In a 71-page decision, including a 15-page appendix listing the involved registrations and applications, the Board dismissed Monster Energy's oppositions and the applicants' counterclaim alleging likelihood of confusion between various claw-containing design and logo marks for a variety of goods and services. Opposer Monster Energy alleged a likelihood of confusion between the applicants' four "claw" marks shown first below in view of its "M-Claw" mark shown second below. Applicants counter-claimed on the ground of likelihood of confusion between the M-Claw mark and a fifth claw mark (the "Prior Claw Mark") shown third below. Monster Energy Company v. Maple Leaf Sports & Entertainment Ltd. and NBA Properties, Inc., Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458 (May 3, 2021) [not precedential] (Opinion by Judge Jonathan Hudis).

Monster Energy's Section 2(d) Claims: The Board found Monster's M-Claw mark to be inherently strong. Applicants' third-party registration evidence, without any showing of the manner or extent of use, was insufficient to weaken that inherent strength. As to commercial strength, the applicants conceded that the M-Claw mark is famous, in the likelihood of confusion context, for energy drinks, but the Board agreed with the applicants that this fame did not extend to other markets. 

Comparing the M-Claw mark with the first four of applicants'marks, the Board found them to be distinguishable:

While we find Monster’s M-Claw Mark distinctive and famous for likelihood of confusion purposes, the significant differences in appearance, sound (if any), meaning and commercial impression between Monster’s mark and Maple Leaf’s and NBA’s involved marks precludes a finding of likelihood of confusion. Kellogg v. Pack’em, 21 USPQ2d at 1145. We therefore dismiss Monster’s likelihood of confusion claims. 

Dilution:  Monster Energy also claimed dilution by blurring, but its proofs fell short of meeting the high standard for dilution fame. The Board noted that "the extent of actual recognition of Monster’s M-Claw Mark appears limited to sports drinks." Moreover, because applicants' marks are distinguishable from the M-Claw mark, "none of the former conjure up the latter."

Applicant's Counterclaim: Applicants' counterclaim "appears not as a direct assertion that confusion between its Prior Claw Mark and Monster’s M-Claw Mark is likely, but rather as an odd contingent claim." They asserted that, if the other marks are confusable, they should win on the basis of their prior use. 

The Board noted that applicants had already won, but it considered the counterclaim anyway. It found the Prior Claw mark to be inherently distinctive, but there was no proof regarding commercial success.

As to the marks, the Board found that the applicants' "Prior Claw Mark is so different from Monster’s M-Claw Mark in appearance, sound (if any), meaning and overall commercial impression so as to preclude a finding of likelihood of confusion."

And so the Board dismissed the counterclaim.

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TTABlogger comment: This proceeding began in June 2015.  I took nearly six years to reach the conclusions that were quite apparent at the outset: the marks are not confusingly similar!

Text Copyright John L. Welch 2021.

TTAB Finds DENVER MIX Generic for ..... Guess What?

Concluding that DENVER MIX "is the name of a key aspect of popcorn, specifically, the flavor of the popcorn," the Board affirmed a refusal to register the proposed mark on the ground of genericness. In the alternative, the Board found the term to be merely descriptive and lacking in acquired distinctiveness. In re Doc Popcorn, LLC, Serial No. 88151165 (April 29, 2021) [not precedential[ (Opinion by Judge Kuhlke)

Genericness: The Board found the genus of the goods to be "popcorn" and the relevant consumers to be the general public. 

Examining Attorney Mark Shiner maintained that "[i]n relation to popcorn, the evidence shows that the wording 'Denver' when used alone or together with 'mix' means the combination of white cheddar cheese popcorn and caramel popcorn." He submitted 25 examples of third-parties using the term DENVER MIX and 13 using the term DENVER aaone "to refer to a key aspect of the popcorn, specifically the flavor mixture of caramel and white cheddar."

Applicant Doc Popcorn's specimen of use described DENVER MIX as a cheddar/caramel flavor: “Snowy white kernels of Triple White Cheddar slaloming down Rocky Mountains of Caramel Bliss, creating an incredible flavor sensation.”

The Board concluded that DENVER MIX is generic for popcorn.

Acquired Distinctiveness: Doc Popcorn claimed distinctiveness under Section 2(f), thereby conceding that DENVER MIX is merely descriptive of popcorn. Moreover, in light of the record evidence, the Board concluded that the proposed mark is highly descriptive. Therefore, applicant's burden of proof was "commensurately high." 

 

The Board applied the SnoWizard/Converse factors in determining whether DENVER MIX has acquired distinctiveness. Applicant has used the mark for more than six years and spent some $6500 in advertising per year. From 2014 to 2019 its annual sales have increased from $110,000 to $220,000. Doc Popcorn did not provide any market context for those numbers. 

 

The Doc submitted declarations from seven customers and one franchisee asserted that Applicant "is the owner of the mark sought to be registered," that no others have "the right to use said mark in commerce," and that they recognize DENVER MIX "is owned by the Applicant." 

 

The Board observed that six years of use of a highly descriptive mark "is not particularly long." Moreover, the third party uses of the term were more than "inconsequential" or "infringing." In fact they were substantial enough to support a finding of genericness. The form declarations from six customers and one franchisee constitute "an infinitesimally small portion of potential consumers of popcorn."

All seven are identical in substance, having been written on preprinted forms with space saved for the declarant to add his or her location of residence, signature, printed name and date. Form declarations such as these may not "actually reflect the views of the declarants" and are entitled to "little weight."

In sum, the Board found the probative value of these declarations to be extremely limited. 

 

The Board concluded that, "[g]iven the highly descriptive nature of Applicant’s proposed mark, this record does not support a finding of acquired distinctiveness." And so, the Board affirmed both the genericness refusal and the alternative mere descriptiveness refusal.  

 

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TTABlogger comment: What is Boston Mix? Cheese popcorn, popcorn shrimp, and baked beans.

Text Copyright John L. Welch 2021.

Schwimmer and Welch: "Where to appeal a TTAB decision? The choice is complicated"

Martin B. "Marty" Schwimmer and Yours Truly co-authored an article recently published by the World Trademark Review, entitled "Where to appeal a TTAB decision? The choice is complicated." [pdf here]. The springboard for the article was the Fourth Circuit's ruling in the long-running PRETZEL CRISPS case in which the court ruled that Snyder's/Princeton Vanguard, by appealing a TTAB decision to the CAFC under Section 1071(a) of the Trademark Act, did not waive its right to appeal to the district court, under Section 1071(b), from a subsequent TTAB decision in the same case.

A party appealing an adverse TTAB decision has two options: appeal to the US Court of Appeals for the Federal Circuit (CAFC) or commence a civil action in US district court. In this guest piece, Leason Ellis LLP’s Martin Schwimmer and Wolf, Greenfield & Sacks, PC’s John L Welch unpick the recent Fourth Circuit decision in the PRETZEL CRISPS genericness case to examine the practical factors at play when making that decision.

Author Schwimmer provided this flowchart to illustrate how Section 1071 of the Trademark Act works (click on the picture for a larger image): 

 

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TTABlogger comment: We thank the World Trademark Review for granting us permission to distribute copies of this article.  

Text Copyright John L. Welch 2021.

Precedential Nos. 9 and 10: TTAB finds "CLEAR" Deceptively Misdescriptive of Non-Transparent Clothing and Handbags

The Board affirmed two Section 2(e)(1) refusals of the proposed mark CLEAR for footwear, lingerie, and other clothing items, and for handbags, purses, wallets and related items, all "excluding transparent goods," finding the term to be deceptively misdescriptive of the goods. The Board observed that consumers are not aware of the "nontransparent" limitation in the application, and not all purchases of Applicant Dolce Vita's goods are made after direct inspection of the goods. In re Dolce Vita Footwear, Inc., 2021 USPQ2d 478 and 479 (TTAB 2021) [precedential] (Opinions by Judge Jyll Taylor).

A mark is considered deceptively misdescriptive under Section 2(e)(1) if: (1) the mark misdescribes a quality, feature, function, or characteristic of the goods or services with which it is used; and (2) consumers would be likely to believe the misrepresentation. See In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988); In re White Jasmine LLC, 106 USPQ2d 1385, 1394 (TTAB 2013) (citing In re Quady Winery, Inc., 221 USPQ 1213, 1214 (TTAB 1984)). [T]he reasonably prudent consumer test is applied in assessing whether consumers are likely to believe the misrepresentation. In re Hinton, 116 USPQ2d at 1052 (citing R. J. Reynolds Tobacco Co. v. Brown & Williamson Tobacco Corp., 226 USPQ 169, 179 (TTAB 1985)).

Dictionary definitions and third-party website evidence convinced the Board that consumers "will perceive CLEAR as describing a feature" of Dolce Vita's clothing and clothing items, handbags, wallets, etc. 

As to Dolce Vita's exclusion of "non-transparent goods," the Board found that this exclusion "conclusively establishes" the CLEAR misdescribes a feature of the goods, satisfying the first element of the Section 2(e)(1) test.

Applicant’s contention that its proposed mark CLEAR does not describe a plausible feature of its goods because it has restricted its identification so that the recited goods do not include transparent footwear and clothing is unavailing. We cannot assume that consumers of Applicant’s goods will be aware that its identification is so restricted, and the restriction is not controlling of public perception. See In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1187-88 (TTAB 2018). Cf., e.g., In re Clorox Co., 578 F.2d 305, 198 USPQ 337, 340 (CCPA 1978) (“[T]he locus of potential confusion is [not] in the files of the PTO.”); In re Wada, 48 USPQ2d 1689, 1692 (TTAB 1998) (public is unaware of disclaimers that “quietly reside” in the records of the Office).

The Board observed that Dolce Vita "cannot avoid a finding of deceptive misdescriptiveness by excluding from its identification the very characteristic that its mark is misdescribing. Cf. In re ALP of South Beach, Inc., 79 USPQ2d 1009, 1010 (TTAB 2006) (“We find that the word CAFETERIA used in connection with restaurant services that explicitly exclude cafeteria-style restaurants does misdescribe the services.”)."

Next, as to the second element of the test, because the evidence showed that various types of clothing, footwear, and handbags may be transparent in whole or in part, the Board found that relevant consumers are likely to believe the misrepresentation. 

The Board rejected Dolce Vita's argument that consumers are unlikely to believe the misrepresentation because they will visually inspect the goods before purchase. Dolce Vita relied on three TTAB decisions, but the Board distinguished them: In re Econoheat, Inc., 218 USPQ 381, 383 (TTAB 1983) (SOLAR QUARTZ for space heaters), Nw. Golf Co. v. Acushnet Co., 226 USPQ 240, 242-43 (TTAB 1985) (POWER-STEP for golf clubs), and In re Robert Simmons, Inc., 192 USPQ 331, 333 (TTAB 1976) (WHITE SABLE for paint brushes made from synthetic fibers). As to WHITE SABLE, consumers are not likely to believe that paint brushes would be made from the hair or fur of a sable. As to POWER-STEP, the word STEP did not necessarily signify that the golf club shafts had a single "step." And as to SOLAR QUARTZ, there we no evidence that there was such a thing as a solar quartz heater.

Moreover, not all consumers will have the opportunity to visually inspect the goods:

If Applicant’s goods were to be promoted by word-of-mouth or on social media or in print (e.g., in fashion blogs, magazine articles, or even Applicant’s future advertising) without an image of the goods, a reasonable consumer seeking what the record shows to be a fashion trend would believe that Applicant’s goods, promoted under the proposed CLEAR mark, would feature transparent or clear attributes.

The second element of the test having been met, the Board concluded that proposed mark is deceptively misdescriptive of the goods, and so it affirmed the refusals to register.

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TTABlogger comment: Not clear why these appeals weren't consolidated.

Text Copyright John L. Welch 2021.

TTAB Posts May 2021 (Video) Oral Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled six (VI) oral hearings for the month of May 2021. The hearings will be held via video conference. Briefs and other papers for each case may be found at TTABVUE via the links provided.

May 4, 2021 - 11 AM: Rodney Green v. Tensor International Corporation, Cancellation No. 92068730 [Petition for cancellation of a registration for the mark EARTHLOCK for "Plastic sheet materials for construction; plastic mesh materials for asphalt and concrete reinforcement, and construction of civil engineering structures" and "Soil reinforcement mesh and soil stabilization mesh made of plastic; soil erosion control structures, namely, gabions [new word for me - ed.] and mattresses constructed of plastic mesh; plastic mesh material for construction of civil engineering structures" on the ground of likelihood of confusion with petitioner's common law mark EARTHLOK for soil stabilizers].

May 5, 2021 - 1 PM: Trek Bicycle Corporation v. Christina Isaacs, Opposition No. 91232164 [Opposition to registration of the mark RANGER TREK for various goods and services in classes International Classes 16, 18, 21, 25, 26, 28 and 41, and the mark RANGER TREK EXPEDITION JOURNALS & Design for goods and services in classes 16 and 41, on the ground of likelihood of confusion with the allegedly famous common law and registered mark TREK and formatives thereof for a variety of products, including clothing, backpacks, travel bags, all-purpose sports bags, flashlights, wrist watches, powder mixes for energy drinks and snack bars.]

May 11, 2021 - 1:30 PM: In re Clearly IP Holdings, SRL, Serial Nos. 88150585 and 88156396 [Section 2(d) refusal of the mark CLEARLY SPARKLING, in standard character and stylized form [SPARKLING disclaimed] for "Sparkling waters; carbonated waters; drinking waters; flavored waters; mineral waters; water beverages" in view of the registered mark CLEAR & SPARKLING in stylized form for “Carbonated waters; Drinking water; Seltzer water; Fruit-based beverages; Non-alcoholic beverages, namely, carbonated beverages”]

May 13, 2021 - 2 PM: AWP USA Inc. v. Chubb INA Holdings, Inc., Cancellation No. 92070407 [Petition for cancellation of a registration for the mark CHUBB TRAVEL SMART for "Downloadable mobile applications for planning trips, receiving travel, weather, medical, safety, health, and security information, receiving security alerts, and currency converter tool" on the ground of likelihood of confusion with the common law mark TRAVELSMART for mobile application and web-based software services for providing information related to travel insurance, claim filing, flight status checking, medical assistance, and local emergency and assistance during travels.]

 

May 18, 2021 - 11 AM: In re BFY LLC, Serial No. 88606855 [Section 2(e)(1) refusal to register the mark MULTEEZ for "Homeopathic pharmaceuticals, namely, vitamins," on the ground of mere descriptiveness.]

May 25 2021 - 1 PM: In re Herman Miller, Inc., Serial No. 88027008 [Refusal to register a three-dimensional product configuration of a chair on the ground of de jure functionality under Section 2(e)(5).]

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TTABlog comment: Since TTAB hearings are supposed to be public, shouldn't these video hearings be available for everyone to (at least) hear?

Text Copyright John L. Welch 2021.

IP Talk, Episode 2: "Keeping Tabs on the TTAB." The TTABlogger Speaks!

Former friend David Perlsack once told me that I have a face for radio and a voice for blogging. Well, proof of the former is self-evident. As to the latter, you be the judge. Here is a podcast that I recorded for Wolf Greenfield's new "IP Talk" series, in which I discuss the TTAB's jurisdiction, review some recent cases, and comment on the Trademark Modernization Act. (link).

 

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TTABlogger comment: Perhaps I should stick to blogging.

Text Copyright John L. Welch 2021.

Recommended Reading: Prof. Lorelei Ritchie, "What is 'Likely to be Confusing' About Trademark Law: Reconsidering the Disparity Between Registration and Use"

Former TTAB Judge Lorelei Ritchie, now an Assistant Professor at Southern Illinois University School of Law, has published an article in the American University Law Review, entitled "What is 'Likely to be Confusing' About Trademark Law: Reconsidering the Disparity Between Registration and Use" 70 Am. U. Law Rev. 1331 (2021). [download pdf here]. Professor Ritchie explores the differing ways in which marketplace realities are taken into consideration, or not, in the decision-making of the TTAB and the courts in trademark cases.

Abstract

Federal trademark rights in the United States are widely considered to be use-based. That is, the right derives from the use. Therefore, one might expect that federal trademark registrations would necessarily reflect the marketplace realities of the use of a mark. Based on Constitutional and statutory enablement, this is correct. It is not, however, how the trademark registration system has been implemented by the Court of Appeals for the Federal Circuit and by the U.S. Patent and Trademark Office.

In this regard, there is a perception among judges and practitioners alike that marketplace realities are not, and should not, be taken into account in the federal trademark registration process, as compared with an enforcement action in a federal district court (i.e., trademark infringement). The U.S. Supreme Court has, nevertheless, recently clarified that the right to registration is indeed coexistent with the right to use and enforce a trademark. The Court followed this logic to conclude that an administrative determination regarding registration rights may therefore have a preclusive effect in a later court action involving a claim of trademark infringement. Of course, a dilemma arises when coexistent rights are instead determined by non-coextensive factors. This Article analyzes and addresses the disparity that currently exists between trademark registration and the use on which it is presumptively based. In conclusion, the Article proposes three possible mechanisms to resolve the disparity, including (1) by Congressional legislation, or perhaps most efficiently, (2) by judicial clarification, and (3) by administrative action.

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Text Copyright John L. Welch 2021.

TTABlog Test: Is BARSKI Primarily Merely a Surname for Glassware and Related Goods?

The USPTO refused to register the proposed mark BARSKI for beverage glassware, pitchers, ice buckets, and various other items in Class 21, concluding that the mark is primarily merely a surname under Section 2(e)(4). The Examining Attorney relied on 415 entries in the Lexis.com Surname Database, references to eight individuals with that surname (including former MLB player, Chris Barski), negative dictionary evidence, and a Wikipedia entry stating that the suffix "ski" is often found in Polish names. Applicant argued that BARSKI is an extremely rare surname and the mark was derived from names of its founders, BaumgARten and ZablotSKY. How do you think this appeal came out? In re Majestic Gifts Inc., Serial No. 88682492 (April 12, 2021) [not precedential] (Opinion by Judge Cindy B. Greenbaum).

The record evidence established that “Barski” is an actual surname, but an uncommon one. No one associated with applicant bears the surname “Barski. On the other hand,"surnames of Polish origin often end with the letters “SKI”; and “Barski” has no other “ordinary language meaning."

Applicant’s argument concerning the origin of “Barski” as a combination of its founders’ surnames (neither of which includes the three-letter strings “bar” or “ski”) was unconvincing. [And irrelevant to consumer perception - ed.].

In any case, "the relevant question is whether, when applied to Applicant’s goods, the purchasing public for those goods is more likely to perceive the mark BARSKI, which is in standard characters, as a surname rather than as anything else."

The Board concluded that the evidence did not show "sufficient public exposure to the uncommon surname BARSKI from which we can conclude that consumers likely would perceive BARSKI as a surname." Cf. In re Tapio GmbH, 2020 USPQ2d 1137, at *10-11 (TTAB 2020) (highlighting evidence of “meaningful and fairly widespread public exposure” to the uncommon surname TAPIO “throughout the United States”).

Moreover, when viewed in association with the identified goods, which include barware such as beverage glassware, decanters, drinking glasses, glass beverageware, and ice buckets, we believe consumers likely would perceive BARSKI as a coined term, particularly as a clever bar-related play on the noun “brewski” (a U.S. slang term for “beer”), and that this meaning would be the primary perception of BARSKI to the public.

And so the Board reversed the refusal to register.

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TTABlogger comment: How did you do? Ready for a brewski at your neighborhood barski?

Text Copyright John L. Welch 2021.