INTA 2017

Barcelona 4 Eibar 2: Pelton and Welch in Attendance as Lionel Messi Scores a Brace

First row upper deck, just above the "S" in "Sempre"

MTB XIII Hosts and Hostess

Pelton Welch Coleman Schwimmer Chestek Oppedahl

Barcelona: MTB XIII

USPTO Seeks Comments on Possible New Streamlined Cancellation Procedure

The USPTO is requesting comments on a possible new streamlined version of a trademark cancellation proceeding designed to enable a third-party to more efficiently challenge a registration based on abandonment or nonuse. See the Federal Register Notice here.

SUMMARY:

The United States Patent and Trademark Office (“USPTO”) seeks comments from stakeholders, mark owners, and all those interested in the maintenance of an accurate U.S. Trademark Register, on the establishment of a streamlined version of the existing inter partes abandonment and nonuse grounds for cancellation before the USPTO's Trademark Trial and Appeal Board (“TTAB”).

DATES:

To ensure consideration, comments should be submitted no later than August 14, 2017.

Read comments and post your comment here.

Text Copyright John L. Welch 2017.

Precedential No. 12: Return of the Phantom Mark Refusal

The Board affirmed refusals to register the marks NP--- and SL --- for "sealant compounds for joints," finding them to be "phantom" marks and thus ineligible for registration. The "variable designation ---" in each mark "represents up to three numeric digits." Applicant unsuccessfully maintained that, because the variable element is limited in number of combinations, the marks will be readily searchable and will provide adequate notice to other trademark users. In re Construction Research & Technology GmbH, Serial Nos. 86433989 and 86434029 (May 17, 2017) [precedential] (Opinion by Judge Wellington).

Under the Trademark Act, an application may seek registration of only one mark. "A mark that contains a changeable or phantom element resulting in possibly more than one mark is generally refused registration." In re Primo Water Corp. 87 USPQ2d 1376, 1378 (TTAB 2008). The CAFC explained the reasoning for this rule:

[T]he mark, as registered must accurately reflect the way it is used in commerce so that someone who searches the registry for the mark, or a similar mark, will locate the registered mark. ‘Phantom’ marks . . . encompass too many combinations and permutations to make a thorough and effective search possible. The registration of such marks does not provide proper notice to other trademark users, thus failing to help bring order to the marketplace and defeating one of the vital purposes of federal trademark registration. In re Int’l Flavors & Fragrances Inc., 51 USPQ2d 1513, 1517-18 (Fed. Cir. 1999).

Applicant pointed to In re Dial-A-Mattress Operating Corp., 57 USPQ2d 1807, 1813 (Fed. Cir. 2001), and In re Data Packaging, 172 USPQ 396 (CCPA 1972), in asserting that the inclusion of a phantom element does not always preclude registrability of a mark. In Dial-A-Mattress, the CAFC concluded that (212) M-A-T-T-R-E-S (the "(212)" portion of the mark being depicted in broken lines to indicate that "the area code will change") was registrable because the variable element comprised "an area code, the possibilities of which are limited by the offerings of the telephone companies." In Data Packaging, the CCPA held that a mark consisting of a colored, narrow, annular band in a specific location on a computer tape reel was registrable, even though not limited to a particular color, because "the description of [the] mark ... is neither indefinite nor unduly broad. A competing manufacturer can ascertain from reading the description of the mark ... exactly what design appellant regards as a his trademark and can govern its selection of its own mark accordingly, with no fear of inadvertent infringement." 172 USPQ at 398.

The TMEP states that a mark with a changeable element may be registrable if the element is limited in possible variations such that adequate notice is given to allow an effective Section 2(d) search. As an example, the mark T. MARKEY TRADEMARK EXHIBITION 2*** would be registrable, where the asterisks represent elements to indicate different years. TMEP Section 1214.01 (Apr. 2017).

Unlike those marks, the applied-for marks do not pass muster. One is left to guess not only what combination "up to three digits" will be used, but also "what permutations of those combinations will be used." There are at least a thousand possible marks in each case, "which is nothing if not overly broad." Moreover, it is unclear what significance, if any, each possible number combination might have. For example, they could represent "the number of a particular series or version of a product, a physical characteristic or something else of utilitarian significance to the potential consumer.

That is, Applicant is seeking to register multiple marks and the public cannot predict what marks will be covered by any resulting registrations. In sum, by way of the phantom element in each of the two applied-for marks, Applicant is improperly seeking to register not two, but over two thousand different marks and, in each case, this would be in violation of the one mark per application requirement of the Trademark Act and would run counter to the policy underlying the rule against registering phantom marks.

The marks here at issue "contrast sharply" with the mark in Dial-A-Mattress. There, "it was clear from the drawing itself" that the phantom element represented a telephone area code." [Emphasis by the Board]. Any change in area code would have no impact on the overall meaning or commercial impression. Here, however, the missing information could be much more wide-ranging than area codes, and could be interpreted differently, depending on the context.

Similarly, in Data Packaging the design mark was described with sufficient definiteness and the number of potential marks was not overly broad, so that competitors were on notice and could govern the selection of their marks accordingly.

Here, we find that if Applicant’s marks are allowed to register, there would be insufficient constructive notice to the public regarding the extent of protection that should be accorded to these marks, and the USPTO would be unable to adequately fulfill its duty to conduct searches and determine registrability of these marks.

The Board therefore affirmed the refusals under Section 1 and 45 of the Trademark Act.

Read comments and post your comment here.

TTABlog comment: Suppose the digits had to be in a certain color? Would that make a difference?

Text Copyright John L. Welch 2017.

Precedential No. 11: TTAB Affirms Section 2(d) Refusal of Hockey Logo, Finding No Consent to Registration, 13th Factor Outweighed

The Board affirmed a Section 2(d) refusal of the mark shown below left, for "arranging and conducting ice hockey programs for injured and disabled members and veterans," finding it likely to cause confusion with the mark shown below right, entertainment and association services related to hockey. Applicant did not dispute that the marks are similar and the services related. Instead it contended that the registrant had consented to registration of the applied-for mark, and that under In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012), the 13th du Pont factor should be considered in light of applicant's ownership of the slightly different color logo mark shown farther below, for the same services. In re USA Warriors Ice Hockey Program, Inc., Serial No. 86489116 (May 16, 2017) [precedential] (Opinion by Judge Bergsman).

Du Pont 13: Applicant argued that this case is analogous to Strategic Partners [TTABlogged here], where the Board reversed a Section 2(d) refusal based on applicant's ownership of a substantially similar mark that had co-existed with the cited registered mark for more than five years. The Board there observed that the thirteenth du Pont factor (i.e., any other established fact probative of the effect of use) "accommodates the need for flexibility in assessing each unique set of facts." It concluded that the thirteenth factor "outweighs the others and leads us to conclude that confusion is unlikely." Id. at 1400.

The Board pointed out, however, that in Strategic Partners, the co-existing registrations were each more than five years old and thus immune to attach under Section 2(d). See Section 14 of the Trademark Act. [Note: the Board did not call the registrations "incontestable." Hooray for that! - ed./]. Here, however, applicant's existing registration has co-existed with the cited registration for less than five years, and is still subject to possible cancellation under Section 2(d). This is a "key factual distinction from Strategic Partners. While the 3 and one-half year co-existence of the involved registrations is a relevant consideration, it does not outweigh the other du Pont factors here.

Finally, the Board noted once again that the issuance of the registration to applicant does not require approval of the second mark. The Board is not bound by the decision of a Trademark Examining Attorney in another case.

Consent: Applicant pointed to display of its registered mark on opposer's website, accompanied by a short discussion of applicant's organization. However, there was no written consent agreement, and the Board will not infer that the registrant consented to registration based on its apparent knowledge of the previously-registered, slightly different mark.

The Board pointed to In re Opus One Inc., 60 USPQ2d 1812, 1821 (TTAB 2001), where there was likewise no indication that applicant sought a consent to register, or that applicant was even aware of the application to register:

registrant’s conduct, particularly the fact that registrant has not objected to applicant’s use of the mark, reasonably might also be attributable to a belief on registrant’s part that applicant is using the mark pursuant to registrant’s approval and permission, and that registrant has the right to require applicant to cease using the mark in the event that the quality, nature or extent of applicant’s restaurant services were to change in a way detrimental to registrant’s interests.

The Board concluded that, because "Applicant's evidence lacks the weight Applicant attributes to it without an actual written consent to registration," applicant failed to prove registrant's consent to registration.

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

Read comments and post your comment here.

TTABlog comment: Why need a registration anyway?

Text Copyright John L. Welch 2017.

TTAB Finds PLAZMA and PLAZMA REACTIVE PUMP Deceptive and Deceptively Misdescriptive for Supplements

The Board affirmed refusals of the marks PLAZMA and PLAZMA REACTIVE PUMP for "dietary and nutritional supplements; dietary and nutritional supplements for endurance sports; dietary supplements," finding the marks deceptive and, alternatively, deceptively misdescriptive under Section 2(e)(1). In re Monsterops LLC, Serial Nos. 86295483 and 86295490 (May 15, 2017) [not precedential]. (Opinion by Judge Larkin).

Section 2(a) Deceptiveness: Section 2(a) prohibits registration of a mark that comprises (i.e., includes) deceptive matter. A mark may be deemed deceptive on the basis of a single term embedded in the mark. Section 2(a) deceptiveness is an absolute bar to registration.

The test for deceptiveness has three required elements:

1. Is the term misdescriptive of a character, quality, function, composition, or use of the goods;
2. If so, are prospective purchasers likely to believe that the misdescription actually describes the goods; and
3. If so, is the misdescription likely to affect the purchasing decision of a significant portion of relevant consumers.
In re Tapco Int'l Corp. 122 USPQ2d 1368, 1371 (TTAB 2017) (citing In re Budge, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988)).

The Board found, and applicant did not dispute, that consumers will understand "PLAZMA" to have the meaning of its phonetic equivalent, "plasma." In the context of the goods, "plasma" means the liquid portion of blood in which cells are suspended. Examining Attorney Shaila E. Lewis argued that PLAZMA misdescribes the goods because, as shown by third-party website evidence, plasma in protein form is a known ingredient in dietary and nutritional supplements, and the word "protein" by itself is used to refer to plasma protein. Applicant admitted that its goods do not contain plasma protein.

Applicant contended that the use of the term PLAZMA refers to the "mode of action" by which the goods provide "rapid absorption into blood  plasma and enhanced uptake into working muscle," pointing to its product label and related materials. The Board was not impressed. The issue of deceptiveness must be determined based on the marks themselves, not on the basis of extrinsice materials.

Based on the evidence of record showing that third parties tout the inclusion of plasma protein in their products, the Board found that consumers are likely to believe the misrepresentation.

And finally, as to materiality, plasma is hailed as providing an "edge" to bodybuilders and athletes, enabling them to train harder and more efficiently, recover more rapidly, and achieve greater muscle mass and endurance. The Board therefore found that the involved misdescription is material for purposes of Section 2(a).

And so the Board affirmed the deceptiveness refusal.

Section 2(e)(1) Deceptive Misdescriptiveness: For completeness, the Board also considered the alternative Section 2(e)(1) deceptive misdescriptiveness refusals. The relevant test consists of the first two parts of the Section 2(a) deceptiveness test, and does not include a materiality requirement. In view of the Board's findings above, it affirmed these refusals as well.

Finally, in connection with the alternative Section 2(e)(1) refusals, the Board required disclaimer of the term PLAZMA, because a mark refused under this provision is eligible for registration on the Principal Register under Section 2(f) or on the Supplemental Register.

Read comments and post your comment here.

TTABlog comment:What if the word PLAZMA were used within quotation marks? Or with an asterisk, followed by an explanation on the label?

Text Copyright John L. Welch 2017.

TTAB Test: Is "PPL" Merely Descriptive of Pre-Paid Legal Services?

The USPTO refused registration of the mark PPL, finding it to be merely descriptive of "business administration of legal expense plan services .... [and] reward programs to promote the sale of pre-paid legal expense plans." Applicant Pre-Paid Legal Services, Inc. argued that PPL would not be viewed as referring to "pre-paid legal" because there are other possible definitions of the abbreviation or acronym. How do you think this came out? In re Pre-Paid Legal Services, Inc., Serial No. 86423483 (May 11, 2017) [not precedential] (Opinion by Judge Ritchie).

Examining Attorney Kathy Wang contended that PPL is an acronym for "pre-paid legal" services, which is a feature of characteristic of applicant's services. The Board observed that an acronym mark is considered merely descriptive if:

1. The applied-for mark is an abbreviation or acronym for specific wording;
2. The specific wording is merely descriptive of the recited services; and'
3. The relevant consumers will recognize the abbreviation or acronym as the merely descriptive wording it represents.

The Examining Attorney provided website evidence and online dictionary entries, persuading the Board that PPL is a recognized acronym or abbreviation for "pre-paid legal."

The term "pre-paid legal" immediately conveys to customers a significant feature of applicant's business administration and reward services, and so the phrase is merely descriptive of the services.

Applicant maintained consumers will not view PPL as referring to "pre-paid legal" since there are 71 other meanings for PPL at acronymfinder.com, and PPL received 0 out of 5 stars on that website. It pointed to Baroness v. American Wine Trade, wherein CMS was found to be not merely descriptive of wine. [TTABlogged here]. The Board noted, however, that there the acronym CMS did not "directly and immediately convey the meaning of the three varietals," cabernet, merlot, and syrah. Instead, some thought was required to discern the derivation of that mark. Moreover, the mark at issue here must be considered in relation to the recited services, not in a vacuum.

Considering the entire record, the Board found the applied-for mark to be merely descriptive of applicant's services, and so it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Is this a WYHA?

Text Copyright John L. Welch 2017.

Applying Claim Preclusion Based on District Court Default, TTAB Enters Judgment Against ENTREPRENEURESS Applicant

In this Sections 2(d) and 43(c) opposition to registration of the mark ENTREPRENEURESS for educational and entertainment services relating to women entrepreneurs and business professionals, the Board entered judgment in favor of opposer on the ground of claim preclusion. Opposer had sued the applicants for trademark infringement and, after Dushawn Thomas was dismissed as a defendant, the federal court entered a default judgment against D. Nicole Enterprises LLC. The Ninth Circuit affirmed. The Board ruled that Ms. Thomas was in privity with the LLC and that claim preclusion applied to her. Entrepreneur Media, Inc. v. D. Nicole Enterprises, LLC and DuShawn Thomas, Opposition No. 91212882 (May 11, 2017) [not precedential].

The district court enjoined the LLC and its officers from applying to register the mark ENTREPRENEURESS. When the LLC assigned the subject service mark application to Ms. Thomas, its CEO, the court ordered her to appear before it and show cause why she should not be held in contempt of the court's injunction as a result of the assignment.

Meanwhile in the opposition proceeding, the LLC moved to join Ms. Thomas as a defendant, and the Board granted the motion over Opposer's objection. See Western Worldwide Enterprises Group, Inc. v. Qindao Brewery, 17 USPW2d 1127, 1138 n. 4 (TTAB 1990).

Opposer did not specifically raise the doctrine of res judicata as the basis for judgment, but the Board took up the issue anyway.

A default judgment is a judgment "on the merits" and so may have claim preclusive effect. See, e.g., Lawlor v. Nat'l Screen Service Corp., 349 US 311 (1955). For claim preclusion to apply, the following elements must be present:

(1) the parties (or their privies) must be identical;
(2) there must be an earlier final judgment on the merits of the claim; and
(3) the second claim must be based on the same set of transactional facts as the first.

The Board found that all three element were satisfied here.

Identity (or Privity) of Parties: Applicant argued that the district court's judgment is inapplicable to Ms. Thomas because she was dismissed as a party defendant. The Board, however, found the LLC and Ms. Thomas to be legally identical since she is the assignee of the opposed mark and CEO of the LLC. An assignee stands in the shoes of the assignor. And as CEO of the LLC, Ms. Thomas and the LLC are in privity for purposes of claim preclusion. See The John W. Carson Foundation v. Toilets.com, Inc., 94 USPQ2d 1942 (TTAB 2010). In addition, the district court's injunction applied not only to the LLC but to its "officers."

Final Judgment on the Merits: As indicated, a default judgment is a final judgment on the merits.

Same Transactional Facts: "The marks and claims at issue in this proceeding were also at issue in the Civil Action."

And so the Board entered judgment in favor of opposer, and it denied applicant's motion to suspend this proceeding pending a resolution o the district court's contempt proceeding.

Read comments and post your comment here.

TTABlog comment: Ms. Thomas and the LLC appeared pro se.

Text Copyright John L. Welch 2017.

TTAB Test: How Would You Rule in These Three TTAB Appeals Decided Two Days Ago?

Here are three appeals decided by the TTAB two days ago: a Section 2(e)(1) mere descriptiveness refusal, a Section 2(e)(4) surname refusal, and a Section 2(d) likelihood of confusion refusal. Put on your judicial robes and see if you can figure out how these recent appeals came out. [Answers will be found in first comment].


In re Bedgear LLC, Serial No. 86690878 (May 10, 2017) [not precedential] (Opinion by Judge Greenbaum). [Section 2(e)(1) mere descriptiveness refusal of INDEPENDENT SUSPENSION for "Mattresses and parts thereof, mattress foundations and parts thereof, mattress toppers, pillows, back rest pillows, kids pillows and sleeping bags." Applicant argued that "independent suspension" will bring to mind cars rather than bedding, thus rendering the proposed mark suggestive and incongruous.]

In re Falcon, Serial No. 86673659 (May 10, 2017) [not precedential] (Opinion by Judge Lykos). [Section 2(e)(4) surname refusal of HUSMAN  “Hats; Long-sleeved shirts; Shirts; Sweat shirts; T-shirts.” Applicant contended that HUSMAN is a rare surname (938 listings), and that her mark is a coined term representing a play on the words "husband" and "man" to refer to an unmarried man in a committed relationship.].

In re Cruz, Serial No. 86845373 (May 10, 2017) [not precedential] (Opinion by Judge Gorowitz). [Section 2(d) refusal of PA’DENTRO for "Liquor and liqueur beverages, namely, flavored tequila and ready to drink tequila-based beverages; Tequila," in view of the registered mark ADENTRO for "wines." Applicant argued that the involved goods are completely different because Applicant’s tequila “is a liquor exclusive to Mexico…made from 100% Blue Agave” with an alcohol content ranging from 35% to 55%, whereas Registrant sells a domestic wine made with Spanish varietals using old world wine making techniques.].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2017.

CAFC and TTAB Registration Decisions: July 2015 to April 2017

Here is a bit of reading material for your trip to the INTA annual meeting in Barelona: "Decisions of the Trademark Trial and Appeal Board and the Federal Circuit on Registrability Issues: July 2015 to April 2017." This paper (pdf here) categorizes and summarizes the precedential opinions of the CAFC and TTAB over the last twenty-two months. I will be discussing a number of these cases in my presentation on Wednesday morning, May 24th. An expanded discussion of many of the decisions (i.e, the decisions published in the USPQ between July 2015 and June 2016) appears in "The Sixty-Ninth Year of Administration of the U.S. Trademark (Lanham) Act of 1946," published in February by The Trademark Reporter (TTABlogged here).

Read comments and post your comment here.

Text Copyright John L. Welch 2017.