TTAB Test: Is ULTIMATE GEL Merely Descriptive of Bedding Products?

The USPTO refused to register the mark ULTIMATE GEL, finding it merely descriptive of "Beds for household pets; Chair cushions; Mattress toppers; Mattresses; Pillows." Applicant Comfort Revolution pointed to five existing registrations for marks that include the word ULTIMATE for the same or related products, without disclaimer of ULTIMATE. Examining Attorney Brittany Cogan relied on nine third-party registrations either on the Supplemental Register, or registered under Section 2(f), or containing a disclaimer of ULTIMATE. How do you think this came out? In re Comfort Revolution, LLC, Serial No. 87357126 (December 12, 2018) [not precedential] (Opinion by Judge Linda A. Kuczma).


The Board found the word ULTIMATE to be laudatory and therefore merely descriptive of applicant's goods. "Self-laudatory or puffing marks are regarded as a condensed form of describing the character or quality of the goods." Wording like "ultimate," "best," "greatest," and the like are generally considered laudatory and descriptive of an alleged superior quality of the goods.

The word GEL describes the nature of applicant's goods. Third-party website evidence showed the use of "gel" to describe mattresses, dog beds, seat cushions,etc. Applicant's website uses the word descriptively to describe pillows. From this evidence, the Board concluded that GEL is a commonly used term for bedding products to describe a feature that includes gel to keep the user of the device cool.

Finally, the Board found that the components of the applied-for mark retain their laudatory and descriptive meaning when combined. The composite mark offers no unique, incongruous, or nondescriptive meaning in relation to the goods.

Comfort Revolution lamely contended that ULTIMATE GEL could be used to sell a wide variety of products unrelated to bedding - like hair care products and boat sealant. It argued that a consumer must gather additional information in order to perceive the significance of the phrase, and therefore the mark is at most suggestive of its goods.

The Board pointed out, however, that the determination of descriptiveness must be made in relation to the goods at issue. Whether the applied-for mark has different meanings in other contexts is simply irrelevant.

The Board had no doubt that ULTIMATE GEL is merely descriptive of applicant's bedding products, and so it affirmed the Section 2(e)(1) refusal.

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TTABlog comment: WYHA?

Text Copyright John L. Welch 2018.

TTAB Finds SEAHORSE JAPANESE CUISINE, in Chinese Characters, Confusable With SEAHORSE for Restaurant/Bar Services

The Board affirmed Section 2(d) refusals to register the two Chinese character marks shown below, for "restaurant services," finding a likelihood of confusion with the registered mark SEAHORSE for "bar, lounge services." Each application provided a statement that the characters in the mark "transliterate to 'Haima rìben liàoli," which means "seahorse Japanese cuisine" in English. Applicant Crystal Cruises argued that, even if consumers would stop and translate the marks, the visual and phonetic differences arising from the appearance of the marks and the transliterated pronunciations change the commercial impressions and outweigh the similarity in meaning. The Board disagreed. In re Crystal Cruises, LLC, Serial Nos. 86950812 & 869508411 (December 6, 2018) [not precedential] (Opinion by Judge Cynthia C. Lynch).

Under the doctrine of foreign equivalents, foreign words from common, modern languages are translated into English to determine whether they are confusingly similar to English word marks. The Board found, based on U.S. Census data, that Chinese qualifies as a common, modern language. Among foreign languages, it is the second most common primary language in U.S. homes, after Spanish.

The doctrine of equivalents is not an absolute rule, but merely a guideline, and it is applied "only when it is likely that the ordinary purchaser would 'stop and translate' [the word] into its English equivalent." Here, because the English translation is "unambiguously literal and direct," the Board found it appropriate to apply the doctrine. There was no evidence that the relevant consumer would not stop and translate the mark.

Applying the doctrine of equivalents, the Board found that SEAHORSE is the dominant element of applicant's marks. Applicant argued that "the visual and phonetic differences arising from the appearance of its marks in Chinese characters and the transliterated pronunciation change the commercial impression and outweigh the similarity in meaning." The Board noted, however, that "this argument could be made in any foreign equivalents case, almost all of which by definition involve comparing marks in different languages that typically look and sound different."

The Board concluded that the differences in sound and appearance are outweighed by the significant similarity in connotation and commercial impression.

As to the services, third-party registration and use evidence established that "restaurant services," on the one hand, and "bar and lounge services," on the other hand, are related.

The Board therefore found confusion likely and it affirmed the refusal.

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TTABlog comment: How do you say WYHA? in Chinese?

Text Copyright John L. Welch 2018.

TTAB Finds "THUNDER" Weak, Dismisses THUNDERBIRD Wine Opposition to THUNDER ROAD for Moonshine and Whiskey

This is one of those relatively rare occasions when a party gathers enough evidence of third-party use and registrations to affect the outcome of a Section 2(d) proceeding. The Board dismissed Gallo's opposition to registration of the mark THUNDER ROAD for "alcoholic beverages, namely, Tennessee sour mash whiskey and moonshine," finding the mark not likely to cause confusion with the registered mark THUNDERBIRD for "alcoholic beverages except beer." E. & J. Gallo Winery v. Thunder Road Brands, LLC, Opposition No. 91222284 (December 6, 2018) [not precedential] (Opinion by Judge Albert Zervas).

Fame: Opposer Gallo claimed that its THUNDERBIRD mark is a "very strong, if not famous, mark," relying on use of the mark since 1957 and on pertinent sales and advertising data. However, its advertising expenditures from 2009-2015 were minimal. One article called THUNDERBIRD an "old brand," one whose glory days were 30 years ago. And its financial figures lacked context. One YouTube comment stated "[i]t's been so long, I didn't think they made that crap anymore, guess they do," suggesting a lack of notoriety for the brand.

Two brand awareness studies were of limited probative value because no one with first-hand knowledge of the studies testified, and because the studies were not particularly recent.

The Board concluded that Gallo had established "a moderate degree of renown," particularly for low-priced wine with a high alcohol content, and therefore the mark has some strength and is entitled a "broader than normal scope of protection."

The Goods: Because the goods are legally identical, the Board presumed that they travel in the same channels of trade to the same classes of consumers.

Purchasing Conditions: Gallo's wine sells for $5.00, and the evidence showed that moonshine sells for $2.99 per bottle. Consumers are likely to exercise a low degree of care when making a decision to purchase these goods. [particularly after the first bottle - ed.].

Third-party Marks: Many of the third-party registrations and uses of THUNDER-formative marks involved beer, but the Board found these to be relevant "because beer is a good similar to wine, whiskey and moonshine." They are all alcoholic beverages marketed in the same trade channels to the same customers.

In all, the Board counted 25 registrations and 13 Internet uses of THUNDER-formative marks for beer, wine, and other alcoholic beverages. The Board found that these third-party registrations and uses "establish weakness of the term THUNDER as a source indicator for alcoholic beverages. See Juice Generation (at least 26 third-part uses and registrations) and Jack Wolfskin ("voluminous" third-party evidence). Thus the THUNDERBIRD mark "is not entitled to such a broad scope of protection that it is a bar to the registration of any mark comprising in part, the word 'thunder.'"

Robert Mitchum
The Marks at Issue: Although THUNDER is the first word in each mark, it is a weak source indicator, and so consumers will look to other parts of the marks to distinguish the source of the goods.

Of particular significance in our analysis is the meaning of the marks considered as a whole. A “thunderbird” is a mythical bird, while THUNDER ROAD on its face refers to the name of a road. “Thunder Road” may also be associated with the name of a movie released in 1958 starring Robert Mitchum, the father of Applicant’s principal James Mitchum, or the name of a song by Bruce Springsteen from 1975. The marks have entirely different connotations and hence different commercial impressions.

The Board concluded that the differences in the marks outweighs their similarities.

Conclusion: Balancing the relevant du Pont factors, the Board concluded that Opposer Gallo had filed to prove a likelihood of confusion, and therefor the Board dismissed the opposition.

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TTABlog comment: Here's a trivia question: on what early tv show did Chief Thunderthud appear? No googling!

Text Copyright John L. Welch 2018.

Precedential No. 34: In "Expedited Cancellation" Proceeding, TTAB Denies Petition to Cancel MYST Registration for Musical Entertainment Services

Under a recently established USPTO pilot program "to explore procedures for expediting certain cancellation proceedings to further the goal of maintaining the accuracy and integrity of the U.S. Trademark Register," the Board initiated an "expedited cancellation" proceeding involving Jeffrey E. Martin's registration for the mark MYST, in the stylized form shown below, for "entertainment services, namely live performances by a musical group." The Board dismissed the petition for cancellation because Petitioner TV Azteca failed to establish a prima facie case of abandonment based on its pleaded claim of nonuse during the three-year period immediately preceding the filing of the petition to cancel. TV Azteca, S.A.B. de C.V. v. Jeffrey E. Martin, 128 USPQ2d 1786 (TTAB 2018) (Opinion by Judge Frances Wolfson) [precedential].

Procedure: This new expedited cancellation procedure is initiated by the Board. [It is not to be confused with the "streamlined" cancellation procedure that the Board has been considering. See comment below]. Under this program, the Board identifies cancellation cases that have not resulted in disposition by default and in which the only claims are abandonment or nonuse (or both). Cases with counterclaims are ineligible for the program. [What if the respondent wants to challenge petitioner's standing? What about affirmative defenses? - ed.]. Once a case is identified as a candidate for the expedited cancellation program, the Board participates in the parties’ discovery conference to discuss voluntary stipulation to one or more of the Board's several Accelerated Case Resolution (ACR) options, including pretrial final disposition on the merits, or abbreviated trial on the merits. See TBMP §§ 528.05(a)(2) and 702.04.

The Board participated in the parties' discovery conference and the parties agreed to litigate this case as an expedited cancellation proceeding. The parties agreed to exchange initial disclosures but dispense with formal discovery. Both parties filed testimony and documentary evidence together with their main briefs, and petitioner filed a rebuttal brief.

Abandonment: As the sole ground for cancellation, Petitioner TV Azteca alleged that Respondent Martin abandoned his MYST mark by discontinuing its use "for at least three years [March 2015 to March 2018] preceding the filing of this Petition to Cancel, with no intent to resume use."

Under Section 45 of the Trademark Act, 15 U.S.C. § 1127, a mark is deemed abandoned "When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment."

“Because registrations are presumed valid under the law, the party seeking their cancellation bears the burden of proving a prima facie case of abandonment by a preponderance of the evidence.”Yazhong Investing, 126 USPQ2d at 1533; see also On-line Careline, 56 USPQ2d at 1476. If the petitioner presents a prima facie case of abandonment, the burden of production, i.e., of going forward, then shifts to the trademark holder to rebut the prima facie showing with evidence of either: (1) use of the mark during the statutory period; or (2) an intent to resume use. Rivard v. Linville, 133 F.3d 1446, 45 USPQ2d 1374, 1376 (Fed. Cir. 1998); Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1311 (Fed. Cir. 1989). The burden of persuasion, however, always remains with the petitioner.

Respondent Martin, appearing pro se, submitted several documents bearing the word MYST, but many were undated and none were dated during the March 2015 to March 2018 time period at issue. He also submitted an unsworn and therefore nonprobative statement regarding those documents. Thus Martin did not establish use of the mark MYST during the relevant period - but TV Azteca had the initial burden to show that Martin did not use his mark during that period.

In short, TV Azteca faced the unenviable task of trying to prove a negative. It focused on one particular document that had a partial date, namely, a flyer promoting a "MYST" concert on "March 25th" [no year specified] at the Pennant East in Bellmawr, New Jersey, and attempted to prove that the Pennant East had closed in 2011. Petitioner relied on several newspaper articles reporting the closing and on local certain records indicating that Pennant East had lost its liquor license, and thus any performance by Martin could not have occurred during the relevant three-year time period.

TV Azteca submitted six newspaper articles and a blog post discussing the closing of Pennant East, but Martin objected to these items as inadmissible hearsay. TV Azteca pointed to the "residual hearsay" exception of Fed. R. Evid. 807(a) for statements that have "equivalent circumstantial guarantees of trustworthiness" analogous to those of a public record and are "more probative on the point for which it is offered than any other evidence that the proponent can obtain through reasonable efforts" The Board noted that the residual hearsay exception is intended to "be used only rarely, in truly exceptional cases." Pozen Inc. v. Par Pharm. Inc., 696 F.3d 1151, 104 USPQ2d 1969, 1976 n.6 (Fed. Cir. 2012) (applying Fifth Circuit law and citing United States v. Walker, 410 F.3d 754, 757 (5th Cir. 2005)). The Board was unmoved: "Even assuming no reasonable effort could have discovered more probative evidence, the articles and blog post do not possess 'circumstantial guarantees of trustworthiness' equivalent to official records or witness testimony. We therefore sustain Respondent’s objection to the news and blog articles."

TV Azteca also pointed to certain official records in an attempt to show that Pennant East closed its doors in 2011. Again, the Board was unimpressed:

These records do not support Petitioner’s contention that Pennant East closed. Even if Pennant East twice lost its liquor license, that alone does not establish that the premises were shuttered, did not move elsewhere, or did not continue operating as an alcohol-free establishment or in violation of the licensing laws. Furthermore, even if the evidence could suggest that Pennant East closed in 2011, it is at best inconclusive as to whether Respondent discontinued use of his mark from March 2015 to March 2018.

The Board ruled that TV Azteca had failed to establish a prima facie case of nonuse.

We recognize that in attempting to prove a negative, as in proving abandonment through nonuse, “without resort to proper inferences the burdened party could be faced with an insurmountable task.” Cerveceria Centroamericana, 13 USPQ2d at 1310. But even in expedited proceedings, inferences must be based on proven foundational facts. Here, drawing all reasonable inferences available based on the evidence presented by Petitioner or contained in Respondent’s initial disclosures, we find that Petitioner has failed to establish a prima facie case of Respondent’s nonuse.

And so the Board dismissed the petition for cancellation.

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TTABlog comment: After this decision, why would a petitioner ever agree to a streamlined or expedited procedure (unless petitioner had a smoking gun)? Seems to me a petitioner needs to take discovery to prove its case, or else it will face the same nearly insurmountable task faced by TV Azteca: proving a negative.

The Board noted that it recently explored the possibility of establishing a "streamlined cancellation proceeding,” that would be initiated by a potential petitioner when it filed its petition to cancel. Under that plan, the petition would be limited to the grounds of nonuse or abandonment (or both), and the petition would be accompanied by any evidence or testimony in support of the claim(s). Counterclaims would not be permitted, very limited discovery would be allowed only when granted by the TTAB for good cause shown, proceedings would be conducted on an abbreviated schedule, there would be no oral hearing, and the TTAB would issue a decision within an expedited timeframe. The USPTO published a Request for Comments on streamlined proceedings in the Federal Register, 82 Fed. Reg. 22517 (May 16, 2017). However, consideration of the streamlined procedure is presently on hold while the Board explores the efficacy of the current pilot program, called the “expedited cancellation proceeding.” Unlike the streamlined model, the stipulations into which parties may enter in an expedited cancellation proceeding include all options available under the Board’s general ACR procedures.

Text Copyright John L. Welch 2018.

TTAB Test: Is "OVER THE FLOOR" Merely Descriptive of Rugs and Mats?

The USPTO refused to register the mark OVER THE FLOOR, finding it to be merely descriptive of "bath mats; personal exercise mats; meditation mats; gymnasium exercise mats; yoga mats; door mats; floor pads and non-skid floor mats in the nature of non-slip pads for use under rugs or carpet to prevent slippage; rugs; area rugs." Applicant argued that “the ‘mental link’ between the mark OVER THE FLOOR and Applicant’s goods as recited in the application is neither immediate nor instantaneous, and that its goods are placed on the floor, not over the floor. How do you think this came out? In re Mats & Rugs LLC, Serial No. 87594162 (December 4, 2018)[not precedential] (Opinion by Judge Jyll Taylor).

Examining Attorney Sahar Nasserghodsi relied on dictionary definitions of "over" ("above so as to cover or protect"), "floor," "rug" ("a small carpet that covers part of a floor”), and "mat," and on applicant's specimens of use, which include a “no-slip rug pad” the label for which states that the pad has “sturdy and sleek rug pad construction [that] prevents slips and falls” and “adds extra cushioning and comfort to your home.” The Board sided with the examining attorney:

It is clear that the wording “OVER THE FLOOR,” as a whole, immediately describes a characteristic, purpose or function of the identified mats, floor pads and rugs, namely, that they cover, or are placed over, the floor and provide comfort, protection and/or decoration. The combination of terms is not incongruous, and no additional information is needed for the merely descriptive significance thereof to be readily apparent to prospective purchasers of rugs, mats and other floor coverings.

Applicant maintained that its goods do not "'cover' the floor; that is, they do not hide it." Nor are they principally used to "protect" the floor. According to applicant "the principal intent … [is to] provide an aesthetic element to the space in which it is placed, . . . [and] greater comfort for feet on a hard or cold surface."

The Board was not impressed: "That Applicant’s goods are intended to be multi-functional does not detract from their protective function, or, more to the point, where they are placed in relation to flooring, even if protection is not the featured function."

Applicant asserted that the phrase OVER THE FLOOR is not in common usage or needed by competitors to describe goods placed "on the floor." Again, the Board was unimpressed: "That the phrase OVER THE FLOOR is not in common parlance is not controlling. That Applicant may be the first and only user of a merely descriptive designation does not justify registration if the only significance conveyed by the term is merely descriptive."

Finally, applicant urged than any doubt as to registrability should be resolved in its favor, but the Board had no doubt that the mark is merely descriptive of the goods.

And so it affirmed the Section 2(e)(1) refusal.

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TTABlog comment: WYHA? Can a mark be refused registration on the ground of obviousness? I mean, where else would you put a rug or mat? Under the floor?

Text Copyright John L. Welch 2018.

TTAB Test: Is SNAP FUNNEL Confusable with SNAP & POUR for Funnels?

The USPTO refused registration of the mark SNAP FUNNEL for funnels [FUNNEL disclaimed], finding the mark likely to cause confusion with the registered mark SNAP & POUR for a “funnel which snaps onto plastic containers, including automotive fluids and household cleaners and detergents.” The goods overlap, but what about the marks? Isn’t SNAP & POUR rather weak? How do you think this came out? In re Gabor Alex Stibinger, Serial No. 87144063 (December 4, 2018) (Opinion by Judge Thomas W. Wellington) [not precedential].
 

 
The Goods: Applicant’s “funnels” encompass registrant’s snap-on funnels, and so the involved goods are legally identical. Consequently, it is presumed that these overlapping goods travel in the same trade channels to the same classes of consumers. These factors weighed “heavily” in favor of a finding of likely confusion.

Strength of the Cited Mark: Applicant argued that the cited mark SNAP & POUR and the term SNAP are weak due to the existence of “a crowd” of SNAP marks for similar goods. Moreover, Applicant contended that the registered mark “describes the goods” and “is a directive –‘snap, then pour.’” The record evidence, however, did not support the “crowded field” argument. Although applicant cited dozens of third-party registrations, there was no evidence that any of the marks were in use. Registrations alone have no impact on the commercial strength of the cited mark.

Moreover, none of the  third-party registrations involved goods that are related to funnels for household use. However, the record evidence did establish that SNAP is suggestive of features of funnels: i.e., funnels can be snapped onto a container for a tight fit.

The Board disagreed with applicant's assertion that SNAP & POUR is "extremely descriptive." In this ex parte appeal, since the cited mark is registered on the Principal Register, the Board must assume that it is at least suggestive. And the Board found that the mark is suggestive of a feature of funnels. The third-party registrations submitted by applicant corroborate the suggestive nature of the term "snap."

In sum, the Board found no commercial weakness in the term SNAP or in the cited mark, but the term and the mark possess a degree of inherent weakness due to their suggestive connotations. The suggestiveness of SNAP "may decrease the significance of the involved marks' sharing of this same term."

The Marks: The Board found the marks to be more similar than not. The initial and sole source-identifying term in applicant's mark is SNAP. The addition of the generic term FUNNEL does not help distinguish the marks. [Why not? - ed.]. Both marks begin with the mark SNAP, and the first term in a mark is "more likely to be noticed and remembered by consumers and thus plays a dominant role in the mark." [I think consumers will remember SNAP & POUR, not just SNAP - ed.]

We have given consideration to Applicant’s argument that the mark SNAP & POUR conveys an instruction of use to the consumer and, at least with respect to the second part (“pour”), this directive is not expressed in Applicant’s mark. We also bear in mind our finding that the term SNAP and the mark SNAP & POUR are suggestive of the goods and thus possess some inherent weakness. However, we cannot ignore that the same suggestive meanings, i.e., that the funnels can be attached by clipping onto containers and/or are easy (a “snap”) to use, may be conveyed by both two marks.

The Board found that the marks are visually and aurally similar, and also have similar commercial impressions.

Conclusion: Noting that even weak marks are entitled to protection against registration of similar marks for identical goods, the Board affirmed the refusal.

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TTABlog comment: What do you think? Did the Board look through the wrong end of the funnel?

Text Copyright John L. Welch 2018.

TTAB Test: Is DE BEERS TRUE BRILLIANT Confusable With TRU BRILLIANCE for Jewelry?

The USPTO refused registration of the mark DE BEERS TRUE BRILLIANT for jewelry and related retail store services, finding the mark likely to cause confusion with the registered mark TRU BRILLIANCE for jewelry. The goods overlap, and applicant's services are related to jewelry. But what about the marks? How do you think this came out? In re De Beers Intangibles Limited, Serial No. 79198047 (November 28, 2018) [not precedential] (Opinion by Judge Cynthia C. Lynch).

The goods and services:Examining Attorney Hai-Ly Lam submitted persuasive evidence - both third-party registrations and uses - that consumers are accustomed to seeing jewelry and retail store services featuring jewelry under the same marks. This factor weighed heavily in favor of a finding of likely confusion, and also reduced the degree of similarity needed between the marks to establish likely confusion.

Trade channels and customers: As to the goods, because they are identical the Board must presume that they travel in the same, normal channels of trade to the same classes of consumers. As to applicant's retail store services, the third-party evidence demonstrated that jewelry and retail jewelry services are featured on the same websites and would be encountered by the same customers.

Third-party marks: Applicant De Beers claimed that the "abundance of third party uses of 'TRUE BRILLIANT' and similar variations underscore [sic] that the matter common to the marks is diluted and generic." However, only one third-party "use" was made of record, and that was not enough to show commercial weakness - i.e., it "does not show that consumers are conditioned to distinguish among marks including BRILLIANT(S), BRILLIANCE, and TRU(E)."

Applicant's substantial third-party registration evidence showed conceptual weakness, and dictionary definitions and third-party descriptive use further supported "the descriptive nature of BRILLIANT(S) and BRILLIANCE, and the suggestive nature of TRU(E) in the jewelry industry." The Board concluded that the individual terms in the cited mark are conceptually weak.

The record did not show, however,  that the combination TRU BRILLIANCE is weak. The cited mark is registered on the Principal Register with no Section 2(f) claim, and none of the third-party registrations combine the two words.

The Board found that, even though there is some degree of conceptual weakness in the individual components of the cited mark, "it is still entitled to appropriate protection against confusingly similar marks."

The Marks: Applicant, not surprisingly, argued that the inclusion of the "famous DEBEERS trademark" offsets the effect of the similar terms in the subject marks. The Board, however, found the marks to be similar overall in appearance and sound. In addition, the connotations and commercial impressions are "quite similar."

As to the DE BEERS element in applicant's mark, the Board observed that "the addition of even a famous house mark by the junior party does not obviate a finding of likelihood of confusion." Indeed, the addition of a well-known house mark may increase the likelihood of confusion, with consumers mistakenly believing that the goods offered under the registered mark emanate from the newcomer.

If an applicant’s fame were to be considered, a newcomer could unfairly wrest ownership of a prior user’s mark merely by spending more on advertising. Thus, “[a] junior party’s fame cannot excuse likelihood of confusion created by its use of a mark similar to one already in use.” * * * The Trademark Act “protects the registrant and senior user from adverse commercial impact due to use of a similar mark by a newcomer.”

Conditions of Sale: Applicant argued that the relevant purchasers are sophisticated, but the goods and services in the application and cited registrations are not limited to any particular type, quality or cost. The Board must based its decision on the least sophisticated potential purchaser. And so the Board considered this factor to be neutral.

Conclusion: The Board found confusion likely and it affirmed the refusal.

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TTABlog comment: Another "reverse confusion" case.

Text Copyright John L. Welch 2018.

TTAB Test: Is VIA SAINT JACQUES for Alsacian Wine Confusable with JACQUIN for Other Alcoholic Beverages?

Chatham International opposed an application to register the mark VIA SAINT JACQUES for goods identified as "wines with the appellation of origin Alsace," on the ground of likelihood of confusion with the registered marks JACQUIN'S, in standard character form and JACQUIN in the stylized from shown below, for brandy, gin, rum, alcoholic cordials and liqueurs, whiskey, prepared alcoholic cocktails and vodka. Well, all beverages are related, aren't they? And JACQUIN looks like JACQUES. How do you think this came out? Chatam International Inc. v. M Chapoutier, Opposition No. 91228479 (November 28, 2018) (Opinion by Judge Christopher Larkin) [not precedential]

Fame?:The Board first addressed opposer's claim of fame. In assessing the relative strength of a mark along the spectrum of strength, the Board considers both inherent strength and commercial strength. "We assess the inherent or conceptual strength of a mark in terms of where it falls on the spectrum of distinctiveness, . . . and the commercial strength of a mark by the degree of its marketplace recognition."

The Board found the mark JACQUIN'S in stylized form to be inherently distinctive and thus conceptually strong. However, the standard character mark JACQUIN was registered under Section 2(f) and thus is concededly not inherently distinctive, and therefore is conceptually weak. As to commercial strength, opposer's sales figures without contextual evidence were insufficient to show that either of its marks is commercially strong.

Opposer’s JACQUIN’S typed drawing mark is conceptually weak, while its JACQUIN stylized mark is conceptually strong, and, on this record, we can find at most that both marks have average commercial strength. Contrary to Opposer’s claim that its marks are “well-known and entitled to broader protection,” 22 TTABVUE 8, we find that they are entitled at best to a normal scope of protection. This du Pont factor is thus neutral in our analysis of likelihood of confusion.

The Marks: Opposer pointed to the common letters JACQU in the involved marks, but provided "no evidence that JACQU would be viewed by American consumers as a discernable, discrete feature of either the name JACQUES or the name JACQUIN." The Board found the marks to  be "quite dissimilar" in appearance and sound.

As to meaning, the Board declined to apply the doctrine of foreign equivalents because the constituent elements of the applied-for mark are words known to American consumers. JACQUES will be recognized as a male given name and the French form of Jacob or James. "Opposer’s marks have a secular commercial impression relating to a family business, while Applicant’s mark has a
distinct religious connotation, and Applicant’s mark consists of the familiar words VIA SAINT JACQUES, while Opposer’s marks contain forms of the unfamiliar surname JACQUIN."

In sum, "[t]he marks are quite dissimilar in appearance, sound, and connotation and commercial impression when considered in their entireties." This factor weighs strongly against a finding of likely confusion.

The Goods: The Board noted once again that there is no per se rule that all alcoholic beverages are related. Opposer's evidence of relatedness of the goods was minimal: two third-party registrations covering "“alcoholic beverages, except beer," and testimony that the involved goods fall in the same International Class and travel in the same channels of trade.

Given the specific types of alcoholic beverages here, the presence in the record of only two registrations whose broad identifications of goods cover all alcoholic beverages except beer, and the absence from the record of evidence of third-party registrations covering French wines from Alsace and distilled spirits or evidence showing that those goods actually emanate from the same source under the same mark, we find that Opposer did not show that the identified alcoholic beverages are related.

Channels of Trade: Opposer's testimony sufficed to prove that "alcoholic beverages are sold through common channels of trade to presumably overlapping ordinary purchasers," and so this factor favored a finding of likely confusion.

Third-Party Registrations: Applicant submitted 10 use-based third-party registrations for marks containing the name JACQUES (or the variant JACQUE) for various alcoholic beverages, including wines and brandy. The Board pointed out, however, that registrations alone are not probative on the issue of commercial strength. "The “real evidentiary value" of third party registrations is to show the sense in which a term is used in ordinary parlance. If a term has a relevant, well-understood meaning, it may be considered a weak formative.

The Board noted that the involved marks do not share the word JACQUES, and it concluded that applicant's evidence "at most merely corroborates Applicant’s dictionary evidence indicating that American consumers would understand JACQUES to be a first name when it appears in Applicant’s mark."

Conclusion: Balancing the relevant du Pont factors, the Board found that opposer failed to prove by a preponderance of the evidence that the mark VIA SAINT JACQUES  is likely to cause confusion as to the source or sponsorship of applicant’s goods.

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TTABlog comment: Well-written opinion worth reading.

Text Copyright John L. Welch 2018.

TTAB Enters Summary Judgment Based On Issue Preclusion: District Court Decided Ownership Issue

The Board granted Opposer 784’s motion for summary judgment, applying issue preclusion to the issue of nonownership of the mark shown below for, inter alia, restaurant services. 784 8th Street Corp. dba ZAN'S v. Denise Ruggiero, Opposition No. 91214883 (November 2, 2018) [not precedential].

The subject opposition was suspended in view of a civil action in the U.S. District Court for the Eastern District of New York, in which Opposer 784, together with Pasquale Ruggiero, filed various claims and sought a declaratory judgment regarding ownership of the ZAN's logo (above) and the word mark ZAN'S. The district court Granted plaintiffs' motion for summary judgment on the ownership claim, declaring that "Plaintiffs are the owners of the Zan's name, logo, and materials."

Opposer then moved for summary judgment at the TTAB on the grounds of fraud and nonownership. Because opposer had not served its initial disclosures, its motion for summary judgment on the ground of fraud was premature, but Trademark Rule 2.127(e)(1) makes an exception for a summary judgment motion based on issue preclusion.

Issue preclusion bars the re-litigation of the same issue in a second action and applies whether or not the second action is on the same or a different cause of action. B&B Hardware, Inc. v. Hargis Indus., Inc., 136 S. Ct. 1293, 113 USPQ2d 2045, 2051 (2015); Lukens Inc. v. Vesper Corp., 1 USPQ2d 1299, 1301 (TTAB 1986).

The application of issue preclusion requires: (1) identity of an issue in the current and prior proceedings; (2) actual litigation of that issue in the prior proceeding; (3) that determination of the issue was necessary in entering judgment in the prior proceeding; and (4) that the party with the burden of proof on that issue in the second proceeding had a full and fair opportunity to litigate the issue in the prior proceeding. NH Beach Pizza, 119 USPQ2d at 1864 (citing Montana v. United States, 440 U.S. 147, 153-54 (1979)).

As to factor 1, there was no genuine dispute that the "key issue" in this proceeding is identical to one of the issues decided in the civil action: ownership. The district court found that, although applicant Denise Ruggiero played a part in designing the Zan's logo and materials, she was an employee of plaintiffs at the relevant time.

As to factors 2 and 3, there was likewise no dispute that the issue of ownership was raised, litigated, and actually adjudged in the civil action. Furthermore, the ownership determination was necessary to the court's decision.

As to factor 4, there was no genuine dispute that applicant had a full and fair opportunity to litigate the ownership issue in the civil action.

In view of the foregoing, we find, as a matter of law, that Opposer is entitled to summary judgment based on issue preclusion. Because Applicant was an employee of Opposer when she helped create the ZAN’S Logo in the subject application, Opposer (together with Pasquale Ruggiero), not Applicant, owns the ZAN’S Logo, and the use-based subject application filed by Applicant, who did not own the subject mark, was therefore void ab initio.

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TTABlog comment: Pretty straightforward, right?

Text Copyright John L. Welch 2018.

TTAB Posts December 2018 Hearing Schedule

The Trademark Trial and Appeal Board (T-T-A-B not Tee-tab) has scheduled seven (VII) oral hearings for the month of December 2018. The hearings will be held in the Madison Building in Alexandria, Virginia. Briefs and other papers for these cases may be found at TTABVUE via the links provided.



December 4, 2018 - 10 AM: Progrexion IP, Inc. v. One Technologies, LLC, Opposition No. 91233945 [Priority contest over the mark BETTER CREDIT BETTER LIFE for the same goods and services related to credit repair and counseling].

December 4, 2018 - 2 PM: Marc Fisher, LLC v. Bottega Veneta, Opposition No. 91214253 [Opposition to registration of the product configuration mark shown below, for leather goods and shoes, on the grounds of ornamentality and lack of secondary meaning, genericness, and functionality. "The mark consists of a configuration of slim, uniformly-sized strips of leather, ranging from 8 to 12 millimeters in width, interlaced to form a repeating plain or basket weave pattern placed at a 45-degree angle over all or substantially all of the goods"].



December 5, 2018 - 2 PM: In re Catalyst Connection, Inc., Serial No. 87351233 [Section 2(d) refusal of MAKING YOUR FUTURE for “business consultation services for the manufacturing industry” and “providing training courses, workshops and webinars in the fields of employee development, leadership, sales and marketing strategies, manufacturing techniques, industry best practices and green manufacturing” in view of the registered mark MAKING THE FUTURE. TOGETHER  for goods and services including “arranging and conducting business conferences and expositions in the field of manufacturing” and “providing online non-downloadable e-books and e-newsletters in the field of manufacturing; education services, namely, providing live and on-line classes, seminars and workshops in the field of manufacturing”].

December 6, 2018 - 2:00 PM: In re RRRAWI Corp., Serial No. 86767410 [Section 2(d) refusal to register the mark MBAR for “restaurant and bar services” in view of the registered mark M BAR in the stylized from shown below, for “restaurant and bar services, excluding Italian cuisine and macrobiotic cuisine"].

December 11, 2018 - 2 PM: Bruce Kirby, Inc. v. Velum Limited, Cancellation No. 92057217 [Petition for cancellation of a registration for the mark LASER for "sailing competitions, and regattas; sailing schools"  on the grounds of nonuse and abandonment].

December 12, 2018 - 11 AM: American Express Marketing & Development Corp. v. Tung V. Bo, Oppositions Nos 91230559 and 91232714 [Oppositions to registration of AMERIXPRESS for "Import agency services" and AMERIXPRESS LLC for "Calcium supplements; Dietary supplements; Herbal supplements; Homeopathic supplements; Mineral supplements; Mineral nutritional supplements; Natural herbal supplements; Nutritional supplements; Probiotic supplements; Protein supplements; Soy protein dietary supplements; Vitamin supplements; Vitamin and mineral supplements" and for "Export agency services for the goods of others," on the grounds of likelihood of confusion with, and likelihood of dilution of, the mark AMERICAN EXPRESS  and formatives thereof for a variety of services in the fields of business, finance, communication, ticket reservation, travel, concierge, mail order and hotel services as well as printed materials in the fields of travel, dining and hotels].

December 18, 2018 - 11 AM: In re Central Dynamics, LLC, Serial Nos. 86906610 and 86906682 [Section 2(e)(1) mere descriptiveness refusals of ECONCIERGE for “Platform as a service (PAAS) featuring computer software platforms for hotels, resorts, casinos, hospitality and transportation providers to communicate with and support guests before, during and after stays regarding preferences, profiles, planning and management of stays, dining, transportation and activities; providing temporary use of online non-downloadable software for hotels, resorts, casinos, hospitality and transportation providers to communicate with and support guests before, during and after stays regarding preferences, profiles, planning and management of stays, dining, transportation and activities," and EPROPOSAL for "Platform as a service (PAAS) featuring computer software platforms for hotels, resorts, casinos, hospitality and transportation providers to create, send, monitor and track responses to requests for proposals; providing temporary use of online non-downloadable software for hotels, resorts, casinos, hospitality and transportation providers to create, send, monitor and track responses to requests for proposals"].

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TTABlog note: Any predictions? See any WYHA?s? Anything interesting?

Text Copyright John L. Welch 2018.