TTABlog Test: TTABlog Test: Three Recent Section 2(d) Appeals - How Did They Come Out?

I think I've been making these TTABlog Tests too easy. I'm not giving any hints on this one. Here are three recent decisions in appeals from Section 2(d) refusals. How do you think these came out? [Answers in first comment].

In re Wesco Group, LLC, Serial Nos. 87930506 and 87930522(May 19, 2020) [not precedential] (Opinion by Judge David K. Heasley) [Section 2(d) refusals of LUMABASE and LUMABASE PERFORMANCE COATINGS for, inter alia, degreasing and cleaning solvents, paint and paint thinners, automotive paints and protective coatings, alcohol for cleaning purposes, and automotive cleaning preparations [PERFORMANCE COATINGS disclaimed], in view of the registered marks ILLUMIBASE for "Refinish coating compositions in the nature of tint bases and tint bases sold as an integral component of automotive paints" and LUMA for "Cleaning agents and preparations; Cloths impregnated with a detergent for cleaning; Laundry detergents; Washing preparations and laundry bleach"].

In re Outdoor Cap Company, Inc., Serial No. 88013497 (May 19, 2020) [not precedential] (Opinion by Judge Thomas W. Wellington). [Section 2(d) refusal of the marks shown below left for "headwear" in view of the registered marks shown below right for "shirts; t-shirts"].

In re Marshfield Consulting LLC, Serial No. 88099557 (May 19, 2020) [not precedential] (Opinion by Judge Christopher Larkin). [Section 2(d) refusal of MARSHFIELD CONSULTING for "Business technology software consultation services; Consulting services in the field of software as a service (SAAS)" [CONSULTING disclaimed], in view of the registered mark shown below for, inter alia, "Information technology consulting and advisory services," "Consulting and advisory services in the fields of design, selection, implementation, use and integration of computer hardware and software systems for others,' and "Software consulting and advisory services in the field of electronic medical records." [CLINIC INFORMATION SERVICES disclaimed].

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TTABlog comment: How did you do? Any WYHAs here?

Text Copyright John L. Welch 2020.

Rejecting Abandonment and Fraud Claims, TTAB Denies Petition to Cancel DEVIL'S CANYON VINEYARD Registration

The Board denied petitioner's claims of abandonment and fraud aimed at a registration for the mark DEVIL'S CANYON VINEYARD for wine. Petitioner Brew4U claimed that Respondent Icon Design never sold any wine under the mark and did not obtain a COLA certificate from the Alcohol and Tobacco Tax and Trade Bureau (TTB). Respondent asserted that it used the trademark for bottles of wine shipped to its customers to promote its brand development business. Brew 4U, LLC v. Icon Design Group, Cancellation No. 92067639 (May 18, 2020) [not precedential] (Opinion by Judge Linda A. Kuczma).

Respondent Icon Design, based in Napa, California, provides label and packaging design and other brand creation services to clients in the wine industry. It is not a winery or a seller or re-seller of wine, since it does not manufacture, produce or distribute wine. However it "has wine produced and bottled that is given to others to promote [its] business."

Petitioner Brew 4U is a craft brewery in the San Francisco Bay area that has used the mark DEVIL'S CANYON BREWING COMPANY since 2001 in connection with beer. Its application to register the mark was blocked by respondent's registration. Since that registration was more than five years old, the grounds on which it could be canceled were limited by Section 14 of the Lanham Act. Petitioner relied on two available claims: abandonment and fraud.

Abandonment: Evidence of nonuse of a mark for three consecutive years constitutes a prima facie showing of abandonment. See Section 45. Respondent admitted that it has never made or sold wine, does not operate a winery, has no license in connection with its goods, and has no COLA registration corresponding to its mark that would support the sale of wine in interstate commerce under 27 USC Section 203(a). Therefore, Brew4U contended, respondent abandoned the mark because there was no evidence of any bona fide use of the mark for wine.

However, respondent "has wine produced and bottled that is given to others to promote [its] business," the wine being labeled with respondent's mark. In its discovery responses (which petitioner submitted into evidence) respondent provided the names of nine individuals to whom it has delivered wine within the past three years. It stated that it "currently" delivers its wine "direct to consumer delivery." There was limited documentary evidence to support respondent's discovery responses, but the documents were consistent with the responses.

Petitioner Brew4U  maintained that this activity was insufficient to confer trademark rights in connection with wine because it was not the type of commercial use that is typical in the wine industry and does not rise to bona fide trademark use for wine, citing the Board’s decision in Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043 (TTAB 2017), and its non-precedential decision in Modern House Wines LLC v. Hidden Wineries Inc., 2017 WL 3718268, 2017 TTAB LEXIS 290 (TTAB 2017), as instructive on this point.

The Board, however, distinguished those two cases. In Tao Licensing the Board ruled that the distribution of samples of vodka did not confer trademark rights because the evidence showed that the respondent was not "using or even ready to use the mark in the ordinary course of trade," especially since there were no sales in the following two years. In Modern House Wine, there were no sales and no other evidence supporting use of the mark.

This case differs from Tao Licensing and Modern House Wine which were based on the respondents’ failure to use their marks in connection with the sale of goods. Here, the evidence supports Respondent’s use of its mark on wine distributed as a promotional item in connection with its brand development and package design services. Petitioner has not established that such use is not in the ordinary course of trade.

The Board observed that "a party need not be a manufacturer of goods in order to own and register a trademark."

"[A]any person in the normal channels of distribution including a manufacturer, a contract purchaser who has the goods manufactured for him, and a retailer or merchant ... can be the owner of a trademark “in commerce” if he applies or has someone in his behalf apply his own trademark to goods to which he has acquired ownership and title and sells or merely transports such goods in commerce as his own product with the mark, as applied thereto, serving to identify the particular product as emanating from the shipper or seller in his own capacity." In re Expo ‘74, 189 USPQ 48 (1975).

Promotional gifts, such as respondent's bottles of wine bearing its mark, may qualify as "transportation" under the definition of "use in commerce" in the Lanham Act. "In other words, a for-profit sale of goods is not required for a statutory use of a mark in commerce. See Capital Speakers Inc. v. Capital Speakers Club of Washington D.C. Inc., 41 USPQ2d 1030, 1034 n.3 (TTAB 1996)."

Petitioner's evidence failed to establish abandonment, but instead showed that Respondent has used its mark and not abandoned it.

Fraud: Petitioner's fraud claim was based on the assertion that Icon Design knew it was not selling or manufacturing wine when it filed its Statement of Use and when it filed its Section 8 Declaration. However, petitioner failed to provide sufficient evidence to show that Icon Design made any false representation regarding use. Moreover, there was no evidence of an intention to deceive the USPTO.

Therefore the fraud claim was quickly denied.

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TTABlogger comment: Under Section 45, "use in commerce" requires that "the goods are sold or transported in commerce." Note the "or."

BTW, the Board ruled in Stawski v. Lawson that the interestate shipment of wine without a COLA approval was unlawful and therefore not "use in commerce." TTABlogged here.

PS: See Wine Law Expert Paul Reidl's comment on whether COLA approval was required.

Text Copyright John L. Welch 2020.

TTABlog Test: Is DARBYSHIRE Primarily Merely a Surname Under Section 2(e)(4)?

The USPTO refused registration of the mark DARBYSHIRE for audio books, fictional works, and digital on-demand printing services, deeming the mark to be primarily merely a surname under Section 2(e)(4). The Examining Attorney relied on LexisNexis records showing that 537 persons in the USA have that surname. Applicant contended that the surname is "extremely rare." How do you think this came out? In re Gwabboh LLC, Serial No. 88106129 (May 18, 2020) [not precedential] (Opinion by Judge Mark Lebow).

The Board found that DARBYSHIRE is a rare surname, but it observed once again that even a rare surname is not registrable if "the relevant purchasing public for Applicant's [goods and] services is more likely to perceive Applicant's proposed mark as a surname rather than as anything else." In re Beds & Bars, Ltd., 122 USPQ2d 1546, 1551 (TTAB 2017); see also In re Eximius Coffee, 120 USPQ2d 1276, 1281 (TTAB 2016) (“Section 2(e)(4) makes no distinction between rare and commonplace surnames . . . and even a rare surname is unregistrable if its primary significance to purchasers is a surname.”).

The Examining Attorney also submitted excerpts from several websites referring to various purportedly notable individuals named Darbyshire. When applicant argued that these website were not commonly known, the Examining Attorney contended that applicant had failed to show that these website are uncommon. Not so fast, said the Board. It is the Examining Attorney's burden to make a prime facie case. Nonetheless, the Board decided to consider the websites "for whatever value they may have."

The Board agreed with applicant that this evidence was insufficient to prove that consumers in this country are familiar with DARBYSHIRE as a surname.

To begin with, one would first have to be familiar with DARBYSHIRE as a surname to engage in search for its history and origins, or to search for notable persons having that name. Second, the evidence is inadequate to show that the “notable” persons referred to on those websites, predominantly from the United Kingdom, are notable to the ordinary purchaser in the United States. Third, given the nature and content of the websites, we cannot presume that U.S. purchasers have been exposed to the several personal and business websites listed. On this record, we find that DARBYSHIRE is rarely encountered as a surname and is unlikely to be perceived by the public as having surname significance.

Applicant stated that DARBYSHIRE is not the surname of anyone associated with its business, a neutral factor in the surname analysis. The Examining Attorney provided so-called "negative dictionary" evidence showing that DARBYSHIRE cannot be found in the The Oxford Dictionary or The Columbia Gazetteer of the World, leading the Board to conclud that the term has no other recognized meaning or significance than as a surname.

Finally, there was no evidence as to whether DARBYSHIRE has the structure or pronunciation of a surname, but the Board took judicial notice of the fact that "shire" is "an administrative subdivision especially: a county in England" (e.g., Oxfordshire and Yorkshire). The Board therefore found that DARBYSHIRE "tends to evoke a place name rather than a surname."

The Board concluded that the evidence failed to establish that the primary significance of DARBYSHIRE is merely that of a surname. Resolving any doubt in favor of applicant, the Board reversed the refusal.


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TTABlogger comment: Isn't Darbyshire a place in a Trollope novel? Or is that Derbyshire?

Text Copyright John L. Welch 2020.

TTAB Dismisses Counterclaim on Summary Judgment for Failure to Prove SNAPCHAT is Generic

The Board dismissed Applicant NfoSnap's counterclaim alleging that the mark SNAPCHAT is generic for "computer application software for mobile phones, portable media players, and handheld computers, namely, software for sending digital photos, videos, images, and text to others via the global computer network," due to failure of proof. NfoSnap submitted evidence regarding the genericness of “snap” and “chat” as separate terms, but failed to raise "a genuine dispute as to the genericness of the combination SNAPCHAT in the face of NfoSnap’s own evidence to the contrary." Snap Inc. v. NfoSnap, Inc.., Opposition No. 91238805 (April 23, 2020) [not precedential].

NfoSnap applied to register the mark NFOSNAP for "computer software to allow controlled access for one or multiple users to scan an optical code with a portable computer or imaging device to access custom and interactive content." Snap, Inc. opposed, claiming likelihood of confusion with, and likelihood of dilution of, its registered mark SNAPCHAT. Snap, Inc. moved for summary judgment on NfoSnap's counterclaim for cancellation on the ground of genericness, and NfoSnap filed a cross-motion for summary judgment on the counterclaim.

The Board observed that when the party moving for summary judgment does not bear the burden of proof at trial, it may discharge its initial burden of production by either submitting affirmative evidence that negates an essential element of the nonmoving party’s claim or by demonstrating that the nonmoving party’s evidence is insufficient to establish an essential element of the claim. As to its genericness claim, NfoSnap bore the ultimate burden to prove genericness by a preponderance of the evidence.

One asserting genericness must "identify the genus of goods or services at issue and demonstrate that the relevant public understands the designation primarily to refer to that genus of goods or services."

The inquiry “into the public’s understanding of a mark requires consideration of the mark as a whole. Even if each of the constituent words in a combination mark is generic, the combination is not generic unless the entire formulation does not add any meaning to the otherwise generic mark.” In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005).

The registration for the mark SNAPCHAT, it is presumptively valid under Section 7(b) of the Lanham Act, and that presumption alone was enough to shift the burden of production to NfoSnap. Snap argued that the evidence submitted by NfoSnap was insufficient to prove that the the relevant public understands SNAPCHAT, as a whole, to primarily refer to the genus of goods at issue.

The genus of good at issue was appropriately identified in Snap's registration: "computer application software for mobile phones, portable media players, and handheld computers, namely, software for sending digital photos, videos, images, and text to others via the global computer network." NfoSnap's evidence, however, addressed only the component terms rather than the mark SNAPCHAT as a whole.

NfoSnap contended, however, that "the same evidence shows that [SNAPCHAT] is generic" because the compound term that "does not create a different commercial impression from the parts [and] is nothing more than the sum of its parts and is not capable of identifying and distinguishing a single source and therefore the sum of the parts remains generic." Not good enough, said the Board:

The relevant public’s use or understanding of SNAPCHAT is critical to a determination of the mark’s genericness and requires consideration of the mark as a whole. See In re Steelbuilding.com, 75 USPQ2d at 1421. Accordingly, in order to survive Snap’s motion for summary judgment, NfoSnap may not simply rest on a showing that the constituent terms are generic or argument that such evidence is sufficient to raise a genuine dispute of material fact. See Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986)

NfoSnap did offer some evidence in an effort to show that SNAPCHAT as a whole is generic: dictionary definitions and online references. However, the Board found that this evidence "uniformly refer[s] to Snap and demonstrate[s] that SNAPCHAT as a whole does indeed have a meaning beyond the generic meanings of the constituent terms."

The Board concluded that because NfoSnap  "fail[ed] to make a showing sufficient to establish the existenceof an element essential to [its] case” for which it bears the burden of proof at trial, see Celotex Corp., 477 U.S. at 322, Snap is entitled to judgment as a matter of law on NfoSnap’s counterclaim."

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TTABlogger comment: Not a snap judgment but a judgment that was a snap?

Text Copyright John L. Welch 2020.

TTABlog Test: Three Recent Section 2(d) Appeals - How Did They Come Out?

Some ten years ago, a TTAB judge said to me that one can predict the outcome of a Section 2(d) case 95% of the time just by looking at the marks and the goods or services. Here are three recent decisions in appeals from Section 2(d) refusals.  How do you think these came out? [Answers in first comment].

In re Hyperloop Transportation Technologies, LLC, Serial No. 86556581 (May 14, 2020) [not precedential] (Opinion by Judge Karen Kuhlke). [Section 2(d) refusal of HYPERLOOP for "Providing transportation services and a transportation system, namely, transport of passengers in low friction tubes," in view of the identical mark registered for “transportation services, namely, high-speed transportation of goods in tubes"].

In re Centennial Media LLC, Serial No. 88035215 (May 12, 2020) [not precedential] (Opinion by Judge Christopher Larkin). [Section 2(d) refusal of WOMEN & WEED for "Magazines in the field of marijuana and medical marijuana for women, sold directly to consumers at newsstands and retail outlets" in light of the registered mark WOMEN OF WEED for "Association services, namely, promoting the interests of a membership comprised of women in the cannabis and hemp industries and the cannabis and hemp movements for the purposes of personal, social, professional, and business development thereof; Business networking," and for "Social club services, namely, arranging, organizing, and hosting social events, get-togethers, and parties for club members"].

In re Guidos Burritos LLC, Serial No. 87931059 (May 12, 2020) [not precedential] (Opinion by Judge Linda A. Kuczma) [Section 2(d) refusal of GUIDO'S BURRITOS and Design (shown below) for "Clothing, namely, t-shirts and hoodies" and for "Mexican Restaurant and Tequila Cantina" [BURRITOS disclaimed], in view of the registered mark GUIDO'S for “restaurant services"].

 

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TTABlog comment: How did you do? Any WYHAs here?

Text Copyright John L. Welch 2019.

TTAB Dismisses "DM" Cancellation Because Petitioner Failed to Prove Standing

The Board denied a petition to cancel the mark shown below for various clothing items because Petitioner Dr. Martens failed to prove its standing. Petitioner claimed, inter alia, likelihood of confusion with its registered mark DM'S for footwear, relying on various documents by way of notice of reliance, including a copy of its website and a Wikipedia entry describing petitioner. It attached a photocopy of its registration to the petition for cancellation. The Board found, however, that these documents did not support petitioner's claim of standing. Dr. Martens International Trading GmbH v. Dejon Marquis Muldrow, Cancellation No. 92067439 (May 12, 2020) [not precedential] (Opinion by Judge Marc A. Bergsman).

Petitioner Dr. Martens contended that "[a]s the owner of The DM’S Mark, Petitioner unquestionably has a ‘real interest’ in challenging the registration of Registrant’s DM Mark. Accordingly, there is no dispute that Petitioner has standing." [Apparently the applicant did not raise the issue - ed.].

The Board, however, pointed out that attachment of a photocopy of a registration to the petition for cancellation does not make the registration of record. See Trademark Rules 2.122(c) [documents attached to a pleading are not in evidence] and 2.122(d) [but a status and title copy or the electronic records of a pleaded registration submitted with the petition is accepted into the record].

Petitioner alleged that it has used the DM'S mark since 1992, but it failed to produce any evidence to make that fact of record.

As to the Wikipedia entry regarding Petitioner, an excerpt from Petitioner’s website, copies of news articles regarding Petitioner, and excerpts from Petitioner’s Facebook and Instagram accounts, that Internet evidence is admissible only to show what has been printed. It does not establish the truth of  what has been printed. Safer Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1040 (TTAB 2010). See also WeaponX Performance Prods. Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1038 (TTAB 2018) (although Internet evidence is admissible, it is “hearsay and may not be relied upon for the truth of the matters asserted therein.”).

Statements in petitioner's notice of reliance describing certain documents purporting to show the relatedness of the involved goods were not made by a sworn witness, but by petitioner's attorneys, and therefore were not evidence. Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018), quoting Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005).

The Board therefore found that petitioner had failed to introduce any testimony or evidence sufficient to prove standing. And so it denied the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: A single testimonial declaration authenticating and identifying the various documents was all that was needed. If petitioner seeks review of this decision by way of a civil action under Section 1071(b), will it have the opportunity to include evidence of its standing? I believe so.

Text Copyright John L. Welch 2020.

TTABlog Test: Are GOLD CROWN and DIAMOND CROWN Confusingly Similar for Cigars?

J.C. Newman opposed an application to register the mark GOLD CROWN for cigars, cigar boxes, and the like, claiming a likelihood of confusion with its registered mark DIAMOND CROWN for cigars and various smoking articles. The goods are identical or closely related, but what about the marks? Opposer claimed the DIAMOND CROWN is "renowned," whereas Applicant Fairmont Holdings Media maintained that "CROWN" is a weak formative due to substantial third-party use. How do you think this came out? J.C. Newman Cigar Company v. Fairmont Holdings, Inc., Opposition No. 91239345 (May 12, 2020) [not precedential] (Opinion by Judge Frances Wolfson).

Applicant submitted 13 third-party registrations for marks including the word CROWN or CORONA for cigars: BLACK CROWN, UNDERCROWN, SHROUDED CROWN, ZINO PLATINUM CROWN (3), LA CORONA, GRAN CORONA, ENGLISH CORONAS, CORONA CLASSICO, and J.R. SPECIAL CORONA. [I count only 11 - ed.]. The Board found that "four iterations" of the term CROWN, coupled with the meaning of crown (e.g., "a mark of honor") show that "buyers of CROWN branded cigars likely perceive the term as suggesting the cigars are of a high or superior quality." Therefore the term "CROWN" is conceptually weak for cigars.

As to commercial strength, Opposer Newman contended that its mark "is renowned in the cigar market and among consumers of cigars." It has sold DIAMOND CROWN cigars since 1995, and the brand allegedly is "among the best selling Super Premium cigars on the market." Sales have been in the several millions for the past four years, but opposer did not provide any evidence of market share. The cigar has received a number of awards and media recognition. The Board concluded that the mark has "achieved some marketplace recognition."

Applicant Fairmont argued that the term "CROWN" is "diluted" because of "[prevalent] third party use of the term 'CROWN' in the cigar industry." It provided website pages from six third-party retailers advertising cigars under marks containing the word CROWN. Numerous cigars are sold under "CROWN"- formative marks: "NOBLE CROWN, SHROUDED CROWN, BLACK CROWN, and RED CROWN, which share the grammatical structure of Opposer’s mark, as well as TRIPLE CROWN COLLECTION, CROWN ACHIEVEMENT, DREW ESTATE UNDERCROWN SHADE, CROWNED HEADS, and ZINO PLATINUM CROWN SERIES." One distributor sells both parties' cigars.

The Board concluded that "[t]he prevalent use of “CROWN” as part of many third-party marks demonstrates that CROWN is a commercially weak component of cigar marks, thus weakening the overall commercial strength of Opposer’s mark."

By encountering third party cigar brands utilizing the term “CROWN” under identical marketing conditions, consumers have been educated to distinguish among these cigar marks based upon their other, source-identifying, features. Accordingly, the fifth DuPont factor is neutral, while the sixth factor favors a finding of no likelihood of confusion.

Comparing the marks, the Board found find that they differ in their commercial impressions, "in light of the conceptual and commercial weakness of the term 'CROWN," the fact that 'gold' is also a color and could be perceived as such by consumers encountering Applicant’s mark, and given that the distinguishable terms in the parties’ marks are the first term in each mark, i.e., 'GOLD' and 'DIAMOND,' further establishing that it is these terms that are the dominant elements of each respective mark."

The Board concluded that the marks, considered in their entireties, are more dissimilar than similar.

Opposer's sophistication argument was quickly snuffed out by the Board, since the identification of goods in the cited registrations and opposed application contain no limitations as to price. The Board must make its determination in view of the least sophisticated consumer. In any case, even careful purchasers may be confused by the use of similar marks on identical goods.

Finally, the lack of evidence of actual confusion was neutral, since that may be attributable to the fact that applicant displays its mark with its house mark. In any case, the involved products have been concurrently used for only a relatively short period of time.

Balancing the relevant du Pont factors, the Board found the difference in the marks to be sufficient to make consumer confusion unlikely.

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TTABlogger comment: What do you cigar-smoking readers think?

Text Copyright John L. Welch 2020.

Professor J. Thomas McCarthy Comments on the JUST DREW IT! Dilution Ruling

Professor J. Thomas McCarthy has been critical of the TTAB's dilution decisions (few that there are), and he left a few comments on this blog regarding the recent ruling in Nike, Inc. v. Jamin Caldwell and Courtney Miles: [TTABlogged here].

J. Thomas McCarthy

Why did the TTAB , after finding likelihood of confusion, go on to plunge the dagger in again and find dilution? As usual, the Board just assumed away the statutory requirement of dilution that there be proof of a likelihood that the challenged use "impairs the distinctiveness of the famous mark." They assume that if the accused mark is likely to create an association with the famous mark, then there must be a likelihood of impairment to the distinctiveness of the famous mark. This ignores the Supreme Court’s recognition in Victoria’s Secret that proof of association is not proof of blurring: "'[b]lurring' is not a necessary consequence of mental association. (Nor, for that matter, is ‘tarnishing.’)"

Picking up on the dilution point in the previous comment, my view is that the reason so many dilution claims are made both in federal courts and the TTAB is because the mark owners' litigators are fearful of being sued for malpractice if the case is lost and they include an anti-dilution claim. An increasing number of District Court judges are throwing out a dilution count on a Rule 12(b)(6) motion because the "famous mark" allegation is just not plausible. The is dangerous to the mark owner's case because it suggests to the judge that the rest of the plaintiff's case is equally implausible.

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TTABlogger comment: Professor McCarthy and I have at least one thing in common - we both have degrees in "electrical engineering."

Text Copyright John L. Welch 2020.

TTABlog Test: Is LORD LION WINERY for Wine Confusable With LORD LYON for Beer?

The USPTO refused to register the mark LORD LION WINERY, in standard character form, for "wine" [WINERY disclaimed] on the ground of likelihood of confusion with the registered mark LORD LYON for "beer." Applicant argued that "lion" and "Lyon" have different meanings and are distinguishable, and it pointed to various data and evidence in maintaining that "it is unusual for wine and beer to be produced by the same source under the same mark," How do you thing this came out? In re Lord Lion Winery LLC, Serial No. 87808799 (April 11, 2020) [not precedential] (Opinion by Judge Michael B. Adlin).

The Marks: The Board observed that the marks are almost identical in sound because LORD LION and LORD LYON would be pronounced the same. The disclaimed word WINERY in applicant’s mark "is relatively insignificant in our analysis because LORD LION comes first." As Examining Attorney Lakeisha S. Munn Lewis pointed out, the close similarity in sound is particularly important because wine and beer "are often offered and requested orally, such as in a bar or restaurant." Moreover, since consumers often shorten marks for convenience, "servers or customers are at least as likely to refer to one of Applicant’s specific wines as LORD LION, which sounds identical to LORD LYON."

Applicant argued that "Lyon" is "unmistakably a surname" that “most consumers would associate [it] with Scotland,” perhaps specifically with “the Court of Lord Lyon,” a “standing court in Scotland that regulates coats of arms and heraldry.” In contrast, "lion" means "the apex predator whose natural habitat is almost exclusively the grasslands and savannahs of Africa." The Board did not disagree that the two words may have different meanings.

The Board observerd, however, that "this difference in meaning is only part of the story," noting that the evidence showed that "Lion" may also be a surname in the United States. Moreover, LION is preceded by LORD, it invokes the commercial impression of a person, not an animal as the applicant suggests. "Some consumers, especially those hearing the marks or not perceiving their slight difference in appearance, would believe the marks have the exact same meaning."

The Board concluded that the marks are "quite similar." "To the extent they convey different meanings or commercial impressions, these differences could only be understood by those viewing the marks closely and carefully."

The Goods: Internet evidence showed that many third parties use the same mark for wine and beer. A Vine Pair article entitled "Grape and Grain: Nine Winemakers That Are Also Brewing Craft Beer” states this as a trend: increasingly "lines are being crossed, and so too are loyalties to any one beverage." Furthermore, a large number of use-based third-party registrations demonstrate that the same marks are registered in connection with both beer and wine. The Board found that this evidence proves that beer and wine are related, a finding "consistent with the records developed in other cases." The evidence also showed that beer and wine travel in the same trade channels to the same consumers.

The Board was unmoved by applicant's attacks on the evidence. Applicant claimed that "it is unusual for wine and beer to be produced by the same source under the same mark," noting that the examining attorney provided only 32 third-party registrations for marks covering both beer and wine, even though there are (allegedly) 51,716 registrations in Class 33 (which covers wine). The Board pointed out that, "even if Applicant’s evidence accurately reflects the state of the register, it may reveal nothing more than the repeated and consistent refusal of applications covering beer based on existing registrations of similar marks for wine."

Similarly, Applicant also relie on evidence that there are more than 8,702 wineries in the United States, and claimed that the Office's evidence of "only" 29 wineries/breweries shows that only a small percentage of wineries produce both wine and beer. The Board, however, found that "the relatively voluminous evidence of third-party use of the same marks for both wine and beer is enough to establish a relationship between the goods, even if only a relatively small percentage of wineries also produce beer and a relatively small percentage of breweries also produce wine."

Finally, Applicant reliee on 13 "pairs" of registrations for identical or similar marks owned by different owners, in which one mark is registered for beer and the other for wine. The Board observed that "[p]roving that marks coexisted on the Register 'does not prove that they coexisted during that time without confusion in the marketplace." In re Thomas, 79 USPQ2d 1021, 1028 (TTAB 2006). Furthermore, we do not know whether there are licenses or coexistence agreements, much less the terms thereof, which could explain the coexistence of these registrations."

In any case, the Board observed once again that each application for registration must be considered on its own merits. In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).

Conclusion: The Board affirmed the Section 2(d) refusal.

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TTABlogger comment: You knew this would be the result, didn't you?

Text Copyright John L. Welch 2020.

Nike Crushes Pro Se Applicants in JUST DREW IT! Opposition

The TTAB sustained this opposition to registration of the proposed mark JUST DREW IT! for athletic apparel, finding a likelihood of confusion with, and likely dilution of, Nike's famous mark JUST DO IT for clothing, footwear, bags, and a variety of ancillary products. Pro se Applicants Jamin Caldwell and Courtney Miles submitted no testimony or evidence. Let's face, they never stood a chance. Nike, Inc. v. Jamin Caldwell and Courtney Miles, Opposition No. 91240394 (April 28, 2020) [not precedential] (Opinion by Judge Albert Zervas).

Fame: The applicants admitted that Nike's JUST DO IT mark is famous within the meaning of Lanham Act Section 43(a), the dilution provision. Admission of dilution fame also means that the JUST DO IT mark is strong and famous for likelihood-of-confusion purposes, since dilution fame requires a stronger showing than Section 2(d) fame. When fame is established under Section 2(d), it "plays plays a ‘dominant role in the process of balancing the DuPont factors,’ ... and ‘[f]amous marks thus enjoy a wide latitude of legal protection.’”

Despite applicants' admission regarding fame, the Board reviewed Nike's evidence of fame, concluding that JUST DO IT is a household name or phrase. [In my household, when the Brat Brothers would complain about doing their homework, I would say "Just Do It!" - ed.]. The Board also noted that it has previously found the mark famous on a similar record. Nike Inc. v. Maher, 100 USPQ2d 1018, 1024-27 (TTAB 2011) (JUST JESU IT). [That fact, I submit, should have no probative value here since Applicants Jamin Caldwell and Courtney Miles were not parties to that proceeding - ed.].

Likelihood of Confusion: The goods identified in the opposed application overlapped with Nike's goods (shirts, pants, hats and caps, etc.). The Board must presume that those overlapping goods travel through the same trade channels to the same classes of consumers. Moreover, there were no price limitations on the goods, and these are the type of inexpensive goods that are purchased without a great deal of care.

As to the marks, each consists of three short words, beginning with JUST and ending with IT. Each is unspecific as to what the IT may be. Applicants stated that IT may refer to a drawing or work of art. The exclamation point at the end of applicant's mark does not change the meaning or commercial impression.

The main dissimilarity between the marks is that the middle word in Opposer’s mark is DO while the middle word in Applicants’ mark is DREW. But both DO and DREW are verbs, with DO being more general, in that it conveys performing an action of some unspecified type. The verb DREW is more specific, and is the past tense of the verb to draw. Thus, the command JUST DO IT could implore the listener to DO something, such as to DRAW something, depending on the circumstances. In short, while DO and DREW look different, their meanings -- and sound too -- are not necessarily significantly different.

Applicants pointed out that JUST in Nike's mark means "to act without hesitation" while in their mark it means "moments ago or recently." The Board, however, found that these subtle differences do not detract from the overall similarity in meaning, sound and commercial impression. The marks are more similar than dissimilar, which is "particularly significant in this case given how famous and strong Opposer's mark is."

And so the Board concluded that confusion is likely and it sustained the Section 2(d) claim.

Dilution by Blurring: Unlike its usual approach, the Board proceeded to consider opposer's dilution claim even though it had already found likelihood of confusion.

Applying the six factors under Section 43(c)(2)(B)(i-vi), the Board found that applicant's mark will cause consumers to "conjure up" Nike's famous mark. N.Y. Yankees, 114 USPQ2d at 1507. The JUST DO IT mark is either inherently distinctive or has high acquired distinctiveness. Nike enforces its rights vigorously and has substantially exclusive use of its mark. The JUST DO IT mark enjoys the highest level of fame. The factors of applicants' intent and evidence of actual association were neutral.

The Board concluded that "[a]ll of the factors weigh in favor of finding a likelihood of dilution or are neutral. Therefore, dilution is likely."

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TTABlogger comment: How about JUST BLOG IT! for informational services?

Text Copyright John L. Welch 2020.

TTABlog Test: Are These Two Stylized "BN" Marks for Jewelry Confusingly Similar?

Blue Nile, Inc. opposed an application to register the mark shown below left, claiming a likelihood of confusion with its registered mark shown below right, both marks for jewelry. Applicant Brent Neale LLC described its mark as the stylized letter "B" and "N" superimposed. Opposer Blue Nile's registration did not include a description of the mark. Blue Nile contended that its mark is famous and that the letter "B" is prominently featured and eye-catching in both marks. How do you think this came out? Blue Nile, Inc. v. Brent Neale LLC, Opposition No. 91239053 (May 7, 2020) [not precedential] (Opinion by Judge Marc A. Bergsman).

Since the involved goods are the same the Board must presume that they travel through the same channels of trade to the same classes of purchasers. See, e.g., In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). Blue Nile contended that jewelry buyers are careful in their purchases, but the Board pointed out that the identifications of goods in the pleaded registration and the opposed application are not limited to expensive or designer jewelry. '[T]he applicable standard of care for a likelihood-of-confusion analysis is that of the least sophisticated consumer. See Stone Lion Capital Partners, 110 USPQ2d at 1163 (precedent requires consumer care for likelihood-of-confusion decision to be based “on the least sophisticated potential purchasers”).

The Board noted the lack of evidence of actual confusion, but for this fact to be probative, there must have been a reasonable opportunity for confusion to occur. Under the seventh and eight du Pont factors - and unlike the second, third, and fourth factors - the Board must consider any evidence of  actual market conditions. In re Guild Mtg. Co., 2020 USPQ2d 10279 (TTAB 2020). The goods of the parties are designer or "high quality" jewelry, and neither party displays its mark as a standalone mark (except on the jewelry itself).

[T]he parties use their respective stylized BN marks in conjunction with their Blue Nile and Brent Neale trade names. Thus, when consumers are shopping for jewelry, the parties are promoting the trade names Blue Nile and Brent Neale, and, to a lesser extent rather, the stylized BN trademarks. In this regard, when consumers are shopping via social media, they encounter the parties through the trade names, not the marks at issue in the opposition. In addition, the parties do not advertise, market or sell their jewelry through the same retailers so that it is unlikely that consumers will encounter the marks of the parties at the same time. For these reasons, we find that there has not been a reasonable opportunity for confusion to occur and, therefore, these DuPont factors are neutral.

Blue Nile's registered mark is an arbitrary designation for jewelry and therefore is inherently strong. Blue Nile claimed that its mark is famous based on use of the mark since 2012, more than $212 million in advertising, ten million website visitors annually, two million purchasers, industry awards, and media coverage. The Board, however, was not impressed.

The persuasiveness of Opposer’s evidence is dramatically reduced because, with the exception of the stylized BN mark appearing on the jewelry itself, every example of Opposer’s use of the stylized BN mark includes Opposer’s trade name, Blue Nile.

The Board found that Blue Nile failed to proved that the stylized BN mark is famous, or even commercially strong.

Opposer has proven that it has a successful jewelry business and that it uses more than one mark. Based on the foregoing, we find that Opposer’s stylized BN mark lies in the middle of the spectrum from very strong to very weak. See Joseph Phelps Vineyards, 122 USPQ2d at 1734. Nevertheless, Opposer’s stylized BN mark is entitled to the broad scope of protection normally accorded an arbitrary mark.

Turning to a comparison of the marks, the Board observed once again that when the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likelihood of confusion. Of course, the proper test is not a side-by-side comparison of the marks; instead "the proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks."

For stylized letter marks, the Board must consider both the visual and oral impacts of the mark, not just the latter. In re Burndy Corp., 300 F.2d 938, 133 USPQ 196, 197 (CCPA 1962) (the marks, design marks based on the letter “B” have “great dissimilarities between them which can be fully appreciated only from seeing them.”). The Board surveyed prior decisions in Textron Inc. v. Maquinas Agricolas “Jacto” S.A., 215 USPQ 162, 163-64 (TTAB 1982), and observed:

[H]ighly stylized, highly contrasting letter/design combinations tend to fall on the “no likelihood” side of the adjudicative balance and rather clear portrayals of the letters involved in the compared marks tend to result in “likelihood of confusion” findings.

The Board found that the letter marks at issue here "are so highly stylized that they are akin to design marks and they are not similar." It disagreed with Blue Nile's assertion that the letter "B" is prominent and eye-catching in both mark:. applicant's mark prominently features the letters "BN." In any event the marks are so highly stylized that consumers will distinguish them based on appearance.

And so the Board dismissed the opposition.

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TTABlogger comment: If I saw Blue Nile's registered mark by itself, I'm not sure I would recognize that it included an "N."

Text Copyright John L. Welch 2020.