Wednesday, July 27, 2016

TTAB Test: Should the Stylization of This Descriptive Term Support a Principal Registration?

The USPTO refused to register the mark JIUJITEIRO in the stylized form show immediately below, for various items of athletic apparel, including martial arts uniforms. Applicant One Nation conceded that the term (which means "a pracitioner of Brazilian jiu-jitsu") is merely descriptive of the goods by offering to disclaim the word "JIUJITEIRO," but the Examining Attorney refused to enter the disclaimer, maintaining that a mark may not be disclaimed in its entirety. Applicant appealed. How do you think this came out? In re One Nation Enterprises, Serial No. 86260948 (July 25, 2016) [not precedential].

The Board pointed out that the Examining Attorney was correct in asserting that a mark may not be disclaimed in its entirety. However, if the mark is in a stylized form that is distinctive, the mark may be registered on the Principal Register with a disclaimer of its literal element. The issue is whether the stylization creates an inherently distinctive commercial impression apart from the word itself.

The determination of whether a particular stylization is inherently distinctive is "necessarily somewhat subjective, and depends on the particular nature of the mark at issue." Applicant cited the JACKSON HOLE and CONSTRUCT-A-CLOSET cases as examples of marks found registrable on the Principal Register with disclaimer of the literal portion, but the Board found that those two cases did not strongly support applicant's position: in JACKSON HOLE the particular arrangement of the words was important, and in CONSTRUCT-A-CLOSET, letters were used as design elements.

The Examining Attorney pointed to the FRUTTA FRESCA and LA LINGERIE cases as examples of marks whose stylization was not sufficiently distinctive, but the Board noted that those cases provided only weak support for the USPTO's position because the marks were in ordinary, readable typefaces, and so the consumer would see little or nothing more than the generic words themselves.

Applicant's mark, in contrast, is not displayed in a font. Instead, it bears the appearance of an idiosyncratic hand-written cursive script. The literal element is not ready discernable on first impression.

While marks in many cursive scripts would surely fall closer to the [FRUTTA FRESCA and LA LINGERIE] marks ... in distinctiveness (or the lack of it), the fact that many cursive scripts are easily readable and indistinctive does not mean that all must be so. We think that in this case the stylization of Applicant’s mark is sufficient to create a distinctive commercial impression apart from the literal element of the mark, and sufficient to justify registration notwithstanding the descriptiveness of the disclaimed term. The stylization of Applicant’s mark is in essence a recognizable and distinctive design in its own right, regardless of the literal meaning conveyed by the word so displayed.

The Board concluded that applicant's mark is registrable on the Principal Register with a disclaimer of the word JIUJITEIRO.

Read comments and post your comment here.

TTABlog comment: How did you do? The mark looks like TINY I. FEIRO to me. I guess the lesson is the less legible the cursive script, the more likely it is inherently distinctive. Why would anyone want to use an illegible script mark?

Text Copyright John L. Welch 2016.

Tuesday, July 26, 2016

TTAB Reverses 2(d) Refusal of Salvation Army Mark, Finding Unity of Control

The Board reversed a Section 2(d) refusal to register the mark shown below, for charitable fundraising services, on the ground that the applicant and the owners of the registrations cited by the Examining Attorney "are governed by a central authority, which exercises unity of control over the entities' trademarks." As a result, the Board concluded, there will be no likelihood of confusion as to the source of the entities' services. In re The Salvation Army, Serial No. 86150336 (July 8, 2016) [not precedential].

The Examining Attorney based his refusal to register on thirteen existing registrations owned by three different entities incorporated in different states. Each of the registrations, for various charitable services, includes the words THE SALVATION ARMY. The Examining Attorney withdrew two additional citations because applicant, it turned out, is the owner thereof.

The Board observed that because the issue here is likelihood of confusion as to source, it would consider whether there exists "such unity of control over the marks ... that the public will view the identified services as emanating from a single source."

Applicant explained that it is one of The Salvation Army regional offices (in Illinois). The Salvation Army, "while decentralized into separate regional organizations, ... is under the unitary control of the Salvation Army USA through the National Commander USA and the Commissioners Conference USA." Relying on In re Wella A.G., 5 USPQ2d 1349 (TTAB 1987), applicant maintained that the regional entities follow directives from a single source. And it pointed out that the USPTO, has already allowed the aforementioned 13 registrations to co-exist.

The Examining Attorney contended that this arrangement fails to satisfy the requirements of Wella because the entities here are "sister entities" that are "not even owned by a single parent." Moreover, there is no evidence regarding how one entity controls the activities of another. And there is no consent agreement as found in the file history of the two withdrawn registrations.

In Wella, parent company Wella A.G. was refused registration of a particular mark in view of several registrations owned by its U.S. subsidiary. The CAFC vacated the TTAB's decision and remanded the case to the Board to consider whether the public would likely believe that the source of the Wella A.G. product is the U.S. subsidiary, or whether consumers perceive only a single source for all the Wella products, namely, Wella A.G.

The Board then reversed the refusal, observing that the CAFC views the concept of "source" as encompassing more than "legal entity." A declaration from a Wella U.S. executive stated that Well A.G. owned substantially all the stock of Wella U.S. and "thus controls that activities and operations of Wella U.S., including the selection, adoption and use of the trademarks." Although no details were given regarding this control, the Board found the declaration sufficient to establish that "control over the use of all the 'WELLA' trademarks in the United States resides in a single source."

The Board observed that the issue of "unity of control" must be considered on the facts of each case, and does not hinge on any particular organizational structure. "[M]erely because an arrangement does not fall within a set type of organization does not preclude a finding that there is unity of control."

Here the evidence showed that The Salvation Army is a worldwide organization headquartered in London; the United States affiliate is divided into four regions under the control of the National Command in a quasi-military structure. Moreover, applicant already owns three registrations for marks with the wording "The Salvation Army," which registrations have coexisted with the other registrations.

Under the unique facts of this case, the Board found that there would not be a likelihood of confusion as to source.

As the Federal Circuit stated, the question is "whether under the circumstances there was in fact any likelihood of confusion" and “to explain what that confusion would be.” In re Wella, 229 USPQ at 277. Based on this record and the unique organizational structure of the Salvation Army, it is not possible to explain what that confusion would be.

Read comments and post your comment here.

TTABlog comment: Seems a bit "loosey-goosey" to me. Oh, Wella!

Text Copyright John L. Welch 2016.

Monday, July 25, 2016

TTABlog Note: Converting an Opposition to a Concurrent Use Proceeding

Two recent decisions illustrate when an applicant may, and when it may not, successfully move to amend its opposed, geographically unrestricted application to one for concurrent use registration. In the first, the Board granted the motion and instituted a concurrent use proceeding. In the second the Director of the USPTO upheld the Board's denial of the motion to amend.

Renata Foucré, Erin Hartman and Heather Marlow v. Early Recognition Is Critical, Inc., Opposition No. 91225035 (July 22, 2015) [not presidential]. In this Section 2(d) opposition to registration of the mark HUCK CANCER for "organizing and conducting flying disc tournaments to raise awareness for cancer," Applicant Early Recognition moved to amend the opposed application to one seeking concurrent use registration. The Board observed that:

An applicant whose geographically unrestricted use-based application is the subject of an opposition proceeding may file a motion to amend its application to one for a concurrent use registration, reciting oppose(s) as exception(s) to the applicant’s claim of exclusive use, together with a motion to terminate the opposition in favor of a concurrent use proceeding. If the opposer does not consent to the amendment, the amendment may be approved and entered, and a concurrent use proceeding instituted, provided that applicant consents to entry of judgment against itself in the opposition with respect to its right to a geographically unrestricted registration. TBMP §§ 514.03 and 1113. In such cases, judgment will be entered against the applicant in the opposition, with respect to applicant’s right to an unrestricted registration, the amendment will be approved, and a concurrent use proceeding involving the amended application will be instituted in one Board action. TBMP § 1113.01.

Early Recognition claimed the right to exclusive use of the subject mark for the entire United States, except for the County of San Francisco within the state of California. It consented to entry of judgment against itself as to an unrestricted registration, and moved to terminate the opposition in favor of a concurrent use proceeding.

Concluding that Early Recognition met the jurisdictional and procedural requirements for a concurrent use proceeding, the Board granted the motion, entered judgment against it in the opposition, dismissed the opposition with prejudice, and instituted a concurrent use proceeding.

Hanscomb Limited v. Hanscomb Consulting, Inc., Opposition No. 91216132 (Director of USPTO, June 29, 2016). On the eve of the testimony period, Applicant Hanscomb Consulting's moved to amend its application to register the mark HANSCOMB CONSULTING for certain business consultation services, in order to seek a concurrent use registration. The Board denied the motion because the opposed application was based on intent-to-use, not actual use. Said the Board (here):

[I]ntent-to-use applications, are subject to concurrent use proceedings only after an acceptable allegation of use under Trademark Rules 2.76 or 2.88 has been filed. See Trademark Rule 2.99(g); see also TBMP §1103.01(a) (2015) (emphasis added). Further, applicants may not file an amendment to allege use in an application under Trademark Act § 1(b) that is the subject of an opposition in an effort to qualify for concurrent use registration. TBMP § 1105.

Hanscomb Consulting then filed a petition to the Director, seeking waiver of Rule 2.76(a)(1), so that it could file its amendment to allege use. The Director observed that a provision of the Rules may be waived when (1) an extraordinary situation exists, (2) justice requires, and (3) no other party is injured. The Director concluded that none of the conditions was met here.

This was not an extraordinary situation because established procedures govern the conversion of an opposition to a concurrent use proceeding. Those procedures do not apply here. The appropriate course is for the applicant to abandon the application and file a new application seeking concurrent use registration. Judgment will be entered against applicant in the opposition, but would not preclude such a restricted new filing,

The Director rejected applicant's claim that it would be severely prejudiced by the Board's ruling, pointing out that the loss of applicant's "priority date" based on its filing is irrelevant, since applicant admitted that it was not entitled to nationwide rights and since applicant's constructive use date "has little (if any) significance in a concurrent use proceeding," where applicant must demonstrate actual use of its mark.

Finally, the Director determined that opposer would be prejudiced should the petition be granted: "the delay required by examination of the AAU, and resolution of any use-based refusals or requirements, would affect opposer as well as petitioner."

And so the petition was denied.

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

Friday, July 22, 2016

TTAB Enters Judgment as Sanction For Non-Compliance With Its Orders

The Board had it up to here with Plaintiff Gary W. Stuckle's lack of cooperation in this opposition proceeding. His transgressions included failing to adhere to the Board's scheduling orders, repeatedly interposing groundless objections to Defendant Gregory Merkel's discovery requests, and ignoring two Board orders requiring verified interrogatory answers and proper responses to document requests. The Board entered judgment against Stuckle as a sanction, under Trademark Rule 2.120(g)(1) and Fed. R. Civ. P. 37(b)(2)(A)(vi). Gary W. Stuckle v. Gregory Merkel, Opposition No. 91203258 (July 20, 2016) [not precedential].

Plaintiff Stuckle asserted two registrations, one for FLYING MERKEL and the other the design+word mark shown above. Merkel counterclaimed to cancel the registrations on several grounds. Stuckle withdrew his notice of opposition but Merkel opted to purse his counterclaims.

The Board has patiently informed Stuckle of his obligations many times, even going so far as to direct Stuckle to Board resources, and to provide detailed guidelines for proper discovery responses, certificates of service, and verification of answers to interrogatories. Moreover, the Board previously warned Stuckle twice – in the November 25, 2015, order granting Merkel’s motion to compel and in the February 10, 2016, order following the conference preceding Merkel’s motion for sanctions – that if he failed to comply with the Board’s orders then Merkel’s remedy would lie in a motion for sanctions under Trademark Rule 2.120(g)(1).

Despite the Board's warning, Stuckle still failed to provide proper discovery responses and continued to ignore Board deadlines.

After careful consideration of Stuckle’s arguments and explanations, and given the continuing nature of Stuckle’s violations despite multiple prior admonitions from the Board, we conclude that any sanction short of judgment would be futile and unfair to Merkel,who, despite diligent efforts, has been unable to move the case forward due to Stuckle’s intransigence.

And so the Board granted the counterclaim for cancellation of Stuckle's regsitrations.

Read comments and post your comment here.

TTABlog quiz: Who was Fred "Bonehead" Merkle?

Text Copyright John L. Welch 2016.

Thursday, July 21, 2016

TTAB Test: Is "HOME BREWING CO." Merely Descriptive of Beer?

It's not easy to pick a viable trademark for beer, as the Wall Street Journal noted in a recent article, "Hopportunity Cost: Craft Brewers Brawl Over Catchy Names as Puns Run Dry." This applicant sought to register the mark HOME BREWING CO. for beer [BREWING CO. disclaimed], but the Board found the mark to be merely descriptive under Section 2(e)(1). Applicant appealed, arguing that the word home is not descriptive but merely suggests "the sense of community and familiarity, as well as the notions of homeliness and comfort that one associates with their home." How do you think this came out. In re The Homebrewer, LLC, Serial No. 86273728 (July 19, 2016) [not precedential].

Applicant argued that the word "home" means a place of residence, whereas the goods listed  in the application will be produced and sold from a business location, not a residential unit, and by a business, not a family. Therefore the word "home" is not descriptive, but merely suggestive of "the sense of community and familiarity, as well as the notions of homeliness and comfort that one associates with their home." Moreover, "homebrew" and "homebrewing" are popular terms of art in the craft beer industry, and consumers will know that applicant's products are not homebrewed because it is illegal to sell beer produced from one's home

Examining Attorney Jeffrey S. DeFord relied on a Wikipedia entry for "Homebrewing" as the brewing of beer and other beverages in small quantities "as a hobby for personal consumption, free distribution at social gatherings, amateur brewing competitions or other non-commercial reasons."

The Board concluded that the Wikipedia evidence alone established that the applied-for mark "immediately informs prospective  purchasers as to a quality, feature, or characteristic of the identified goods, namely that the target market for Applicant's goods are 'home brewing' enthusiasts seeking to replicate at home the various ... types of beer offer by Applicant, who are seeking a specific taste for their beer." Citing several prior decisions (GASBUYER, SYSTEMS USER, MOUNTAIN CAMPER), the Board observed that "[a] term that alludes to the group to whom an applicant directs its goods or services is merely descriptive."

The inclusion of the non-source indicator "Co." does not "mitigate" the Board's finding of mere descriptiveness.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: How did you do? BTW, the attorney for applicant is Candace L. Moon of San Diego. She has applied to register the mark CRAFT BREW ATTORNEY for legal services (Serial No. 86504533), relying on Section 2(f). The application has been opposed by 11 law firms or attorneys. Ms. Moon's plight is mentioned at the end of the Wall Street Journal article.

Text Copyright John L. Welch 2016.

Wednesday, July 20, 2016

TTAB Test: Is FIRST TUESDAY Merely Descriptive of Lottery Services?

The USPTO refused to register the mark FIRST TUESDAY under Section 2(e)(1) of the Trademark Act, deeming the mark merely descriptive of "lottery cards; scratch cars for playing lottery games" and for "lottery services." Applicant North Carolina Lottery appealed, arguing that, based solely on the mark itself, the phrase merely suggests a particular day, but "leaves it to the consumer's imagination what happens on that particular day." How do you think this came out? In re North Carolina Lottery, Serial No. 86411401 (July 12, 2016) [not precedential].

Examining Attorney Lindsey Ben maintained that the proposed mark is merely descriptive of a feature of the goods and services, namely, new scratch-off lottery games that begin on the first Tuesday of every month. Applicant argued that "mental thought and multi-step reasoning" was required to glean the meaning of the mark.

[t]o connect the mark FIRST TUESDAY to Applicant’s lottery services and lottery cards, a consumer must be told that Applicant issues new instant scratch-off games on the first Tuesday of every month. Absent this knowledge, an ordinary consumer would not be able to discern the meaning of the phrase "first Tuesday."

The Board observed that when considering the context in which a mark is being used, it may look at labels, packaging, advertising, and the like to determine how the purchaser encounters the mark in the marketplace. Applicant's specimens of use [see example above] and its website indicate that new scratch tickets are available on the first Tuesday of each month. The Board therefore found that FIRST TUESDAY merely describes a feature or characteristic of lottery cards and lottery services. No mental thought or multi-step reasoning is required to reach a conclusion about these goods and services.

The lack of use of the phrase by competitors is irrelevant to the issue of mere descriptiveness. Nor does the fact that applicant may be the first or only user of a descriptive designation justify registration.

Finally, the Board noted once again that a mark must be considered not in a vacuum, but in the context of the goods or services with which it is used. Consumers encountering FIRST TUESDAY for lottery cards and lottery services will understand that it describes "an important feature" of applicant's goods and services: i.e., that new scratch tickets are offered on the first Tuesday of the month.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: How did you do? Is this a WYHA?

Text Copyright John L. Welch 2016.

Tuesday, July 19, 2016

"BJNI" Not Geographically Descriptive of Mineral Waters, Says TTAB

Have you ever heard of Bjni? Me neither. The Board reversed a Section 2(e)(2) refusal to register BJNI, in the stylized form shown below, finding the mark not primarily merely geographically descriptive of "mineral and carbonated waters." In re Vili Group Inc., Serial No. 86285733 (July 14, 2016) [not precedential].

The first prong of the standard test under Section 2(e)(2) requires that the primary significance of the mark be the name of a place generally known to the public. The Examining Attorney maintained that Bjni is a generally known geographic place, namely, Bjni, Armenia. Applicant did not dispute that Bjni is a geographic location, or that its goods originate in Bjni, but it contended that Bjni is not generally known and that Bjni is a village so small that consumers in this country "would not recognize it as indicating the geographical source of the actual water products to be sold under the BJNI name."

The Examining Attorney relied on a Wikipedia entry (here) describing Bjni as a village in Armenia with a population of just over 3000 people. The entry discusses Bjni's history and a medieval fortress and church, but makes no mention of mineral water. Travel websites mention the fortress and the church. Several mention mineral springs in Bjni, but only applicant's website (here) focuses on Bjni as a village known for its mineral spring water.

The Board found that the record evidence failed to support the refusal because it did not establish that Bjni is a generally known geographic location. Nearly all the evidence came from obscure foreign sources and was not probative of consumer perceptions in this country.

The brief Wikipedia entry has some probative value, but without additional evidence the Board could not find that Bjni is a generally known location. See In re Newbridge Cutlery, 113 USPQ2d 1445, 1450 (Fed. Cir. 2015) (the record must include substantial evidence to support a conclusion that the mark identifies a place "known generally to the relevant American public.").

And so the Boar reversed the refusal.

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.

Monday, July 18, 2016

Precedential No. 21: Marijuana Sale Illegal, TTAB Affirms HERBAL ACCESS Refusal for Retail Services

The Board affirmed a refusal to register the mark HERBAL ACCESS for "retail store services featuring herbs," on the ground that the mark is being used in connection with the sale of a substance (marijuana) that is illegal under federal law. The fact that the provision of a product within a given state may be lawful is irrelevant in connection with federal registration of a trademark or service mark. In re Morgan Brown, Serial No. 86362968 (July 14, 2016) [precedential].

To qualify for federal registration, a mark must be in "lawful" use, and so any goods or services for which the mark is used must not be illegal under federal law. If provision of the product or service is unlawful under federal law, it is irrelevant that use under state law may be lawful.

The USPTO generally presumes that use of an applicant's mark is lawful under federal law. Registration will not be refused unless either:

(1) a violation of federal law is indicated by the application record or other evidence, such as when a court or a federal agency responsible for overseeing activity in which the applicant is involved, and which activity is relevant to its application, has issued a finding of noncompliance under the relevant statute or regulation; or

(2) when the applicant’s application-relevant activities involve a per se violation of a federal law.

Examining Attorney Jeffrey J. Look relied on an asserted per se violation of federal law, namely, the provision of marijuana.

Applicant's specimen of use featured two photographs of his retail store, depicting a green cross [a symbol of the organized medical marijuana industry] on the door and on the window. His website displayed a map with the wording "Marijuana for the Masses," and depicted a marijuana plant with the text: "Call or stop by today and find out why people consider our marijuana to be the best of the best!" This evidence supported the conclusion that applicant "is engaged in the provision of marijuana via the retail services provided at the facility shown in the specimen and advertised on the website." [Doh! - ed.].

Thus applicant's services include the provision of an illegal substance in violation of the federal Controlled Substances Act (CSA), 21 USC Sections 812, 841(a)(1), and 844(a), and constitute a per se violation of federal law. Use of applicant's mark therefore includes unlawful activity under the CSA.

Applicant Brown argued that he is seeking to register his mark for the sale of herbs, not for marijuana, and that the sale of herbs is not illegal. The Board, however, observed that "[t]he mere fact that lawful use is also contemplated by the identification does not aid Applicant's cause." According to the Board, "it was entirely proper for the Trademark Examining Attorney to look to evidence such as the Applicant's specimen of use and website to ascertain that the word 'herbs' in the description of services encompasses marijuana."

Applicant Brown did not address or directly rebut the evidence that marijuana is an herb or that he sells marijuana, but he instead feebly argued that the evidence did not show the use of the mark specifically in connection with one particular herb: marijuana. However, the CAFC has rejected attempts to avoid a refusal "where a particular good or service falls within the generalized identification and the evidence shows that applicant's actual usage involves the specific good or service that is the subject of the refusal."

The Board concluded that, because the subject mark is being used in connection with the sale of a specific substance that falls within both the recitation of services and the prohibitions of the CSA, Applicant Brown's services include the sale of a good that is illegal under federal law, and therefore encompasses a use that is unlawful.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Is this a WYHA? Matthew Swyers represented applicant.

Text Copyright John L. Welch 2016.

Friday, July 15, 2016

Further Comments of Professor McCarthy Regarding TTAB Dilution Analysis

Professor McCarthy responds below to the comments on this TTABlog post regarding his criticism of the TTAB's dilution analysis.

I don’t agree with the commenters who argue that the T.T.A.B. is correct in thinking that "association" automatically proves that it is likely (probable) that the famous mark will be harmed and lose strength. I disagree with the argument that the existence of ANY other similar mark on ANY goods or services creates actionable "dilution" – once there was one, now there are two. First, the plaintiff would have to prove it’s mark is unique – the one and only trademark use of this designation – on any goods or services. Second, this would create a true "right in gross," which everyone has always said is what dilution law does not do. (That's a monopoly on the word as a mark.) The statute says that plaintiff must prove that the "association" created by the accused mark "impairs the distinctiveness of the famous mark." The Supreme Court said in Victoria’s Secret that association does not prove impairment.

Plaintiff must articulate some scenario in which there a likelihood that the strength of the plaintiff’s mark will be lessened. For example, Judge Furman found no dilution by a parody of Louis Vuitton expensive handbags even though there was association: "Significantly, it is not enough to show—as Louis Vuitton indisputably can—that members of the public are likely to 'associate' the defendant’s mark with the plaintiff’s mark (or that the defendant promotes such association)….. [T]he operative question is whether the kind of association [defendant] creates here is likely to impair the distinctiveness of Louis Vuitton’s marks." Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., 117 U.S.P.Q. 2d 1537, 1545, 2016 WL 70026, *7, (S.D.N.Y. 2016).

In the 2016 T.T.A.B. Omega case, OMEGA watch alleged that collegiate fraternity Alpha Phi Omega’s use of its name in Greek letters ( ΑΦΩ) on shirts would dilute the OMEGA mark in English or as the Greek letter Ω. The Trademark Board denied applicant's motion for summary dismissal of the opposition to its application for the three Greek letters. In my opinion, the Board should have found that there is no plausible situation under which the Greek lettered name of the fraternity on T-shirts would be likely to impair the distinctiveness of the OMEGA or Ω marks for watches. If so trivial a registered use can be held likely to damage the OMEGA mark for watches, then the watch company truly would have a monopoly on all commercial use of a letter from the Greek alphabet. To me, that would expand trademark law beyond all reasonable bounds. I think there could be "blurring" only if when people see the OMEGA watch mark, they will think of the Alpha Phi Omega name and that will impair the strength of the OMEGA mark. Omega v Alpha Phi Omega, 118 U.S.P.Q. 2d 1289, 1300 (T.T.A.B. 2016)

Read comments and post your comment here.

Text Copyright 2016.

NYIPLA Seminar: "Hot Topics In Intellectual Property Law" - July 20th in NYC

The New York Intellectual Property Association will host a seminar entitled "Hot Topics in Intellectual Property Law" on Wednesday July 20, 2016, from noon to 5 PM, at the Princeton Club, 15 West 43rd Street, New York City. NY and NJ CLE credits are available, including ethics credits. Register here.

With regard to developments at our favorite tribunal, TTAB Chief Adminstrative Trademark Judge Gerard F. Rogers will discuss the proposed new Board rules and fee changes.


12:00 - 12:45 - Registration and Lunch

12:45 - 1:00 - Welcome Remarks

1:00 - 1:30  - Keynote Address - State of the Union in Fashion Law
Professor Barbara Kolsun, Adjunct Professor of Fashion Law at Cardozo and Co-Director of Cardozo’s FAME program (Fashion, Art, Media and Entertainment)

1:30 - 2:00 -  Evidentiary Considerations for Evaluating “Disparaging Marks” Under Section 2(a)
Dyan Finguerra-DuCharme, Partner, Pryor Cashman LLP
Scott Greenberg, Senior Counsel, Locke Lord LLP
Robert L. Raskopf, Partner, Quinn Emmanuel LLP

2:00 - 2:30 Shammas & Nantkwest: A Critical Look at Expense-Shifting Provisions and the De Novo Review of Agency Rulings
Charles E. Miller, Member, Eaton & Van Winkle LLP

2:30 - 2:45 Refreshment break

2:45 - 3:15 Criminal Prosecution In Counterfeit Trademark and Trade Secret Cases
William P. Campos, Assistant U.S. Attorney, Intellectual Property Crimes Coordinator, Business and Securities Fraud Unit, U.S. Attorneys’ Office of the Eastern District of New York

3:15 - 3:45 New Rules and New Fees… What Changes Are Afoot at the TTAB?
Honorable Gerard F. Rogers, Chief Administrative Trademark Judge, Trademark Trial and Appeal Board

3:45 - 4:15 Exploring a Trademark Safe Harbor
Patricia Chang, Legal Specialist, Etsy

4:15 - 4:45 Ethical Considerations in Trademark Practice – EARN ETHICS!
Kathleen E. McCarthy, Partner, King & Spalding LLP

4:45 - 4:50 Closing Remarks


BOXME Not Confusable With BOX for Data Storage Services, Says TTAB

The Board dismissed an opposition to registration of the mark BOXME for "storage services for archiving data bases, images, and other electronic data," finding the mark not likely to cause confusion with the registered mark BOX, and variations thereof, for "on-line content storage, archival, management and collaboration services" offered "in the cloud." Third-party registration and usage evidence of BOX-containing marks convinced the Board that BOX is conceptually weak, and the Board found the marks sufficiently different to avoid confusion. Box, Inc. v. Hakem Ikbariyeh, Opposition No. 91202576 (July 7, 2016) [not precedential].

Counterclaims: The Board dismissed pro se applicant Hakem Ikbariyeh's genericness and mere descriptiveness counterclaims. The evidence did not establish that relevant consumers understand BOX to refer to cloud-based storage services. The overwhelming majority of uses include BOX with one or more terms rather than by itself.

As to mere descriptiveness, the evidence came closer but still fell short. The third-party evidence showed that "BOX is not arbitrary, or particularly distinctive, but instead reveals something about cloud-based storage, sharing and synching solutions, at least metaphorically, in that these types of cloud-based solutions serves as a figurative 'box' in which content is stored and from which it is accessed." However, the evidence did not show that BOX immediately conveys knowledge about the services at issue. In fact, in most of the third-party registrations containing the discrete word "box," the word is not disclaimed.

Likelihood of Confusion: The Board found the services to be identical, and it therefore presumed that they travel through the same trade channels to the same class of consumers.

As to the marks, Applicant Ikbariyeh introduced 16 third-party registrations for marks containing the word BOX for products or services identical, similar, or closely related to those at issue, including the marks DROPBOX, BLUE BOX, DATABOX, RECEIPT BOX, POSTBOX, TREASURE BOX, and MY MAILBOX. Third-party uses included 24 Hour Box, DROPBOX, Digital Evidence Box,  inbox storage, and OneTimeBox.

The Board found that opposer's mark consists of a commonly used word with a well understood meaning, whereas applicant's mark is not a word and thus has no meaning. To the extent consumers view applicant's mark as two words, "box" and "me," applicant's mark creates a different commercial impression from opposer's mark. The Board found it "more likely that consumers could perceive Applicant's services as one more offering by another distinct source under a mark which contains the word 'box.'"

The Board found the voluminous evidence in the record to be "powerful on its face," citing Juice Generation.  Although opposer has been successful, any consumer recognition of opposer "is offset by the widespread use of the term 'box' and the box metaphor in the parties' industry."

In short, we agree with Applicant that Opposer’s BOX mark is conceptually weak, and that the evidence of commercial weakness is stronger than the limited evidence Opposer has offered to show consumer recognition or marketplace strength. Accordingly, while the parties’ marks are in some ways similar, we find that they are different enough, given the weakness of Opposer’s mark, that consumers will be able to distinguish between them.

And so the Board dismissed the opposition.

Read comments and post your comment here.

TTABlog comment: Thinking outside the box?

Text Copyright John L. Welch 2016.

Thursday, July 14, 2016

TTAB Test: Which One Of These Three Section 2(d) Refusals Was Reversed?

I once heard a TTAB judge say that the outcome of most Section 2(d) likelihood of confusion cases can be predicted just by looking at the marks and the identified goods/services, without more. Well, try that approach on these three recent appeals. Which one resulted in a reversal? [Answer in first comment.]

In re McCrane, Inc., Serial No. 85728534 (July 6, 2016) [not precedential]. [Section 2(d) refusal of HUMANX, in the form shown below, for exercise and fitness equipment, in view of the registered mark HUMAN X (in standard characters), for "athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; boxing shorts; rash guards; tee shirts"].

In re Touratech AG, Serial No. 86288721 (July 6, 2016) [not precedential]. [Section 2(d) refusal the mark DriRide for motorcycle parts and accessories, arranging motorcycle travel tours, and motorcycle rentals, in view of the registered mark DRIRIDER for clothing for motorcyclists].

In re Summit Entertainment, LLC, Serial No. 77921988 (June 29, 2016) [not precedential]. [Section 2(d) refusal of ECLIPSE for, inter alia, all-purpose carrying bags, back packs, and messenger bags, "all relating to motion pictures and entertainment," in view of the registered mark ECLIPS & Design, shown below, for "trunks and travelling bags, namely, tote bags"].

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Text Copyright John L. Welch 2016.