CAFC Affirms TTAB Entry of Judgment As Sanction for Failure to Comply with Discovery Orders

In a nonprecedential decision, the CAFC affirmed the TTAB's entry of judgment against Respondent Kris Kaszuba, granting a petition for cancellation of his registration for the mark HOLLYWOOD BEER for beer, as a sanction for Kaszuba's repeated and willful refusal to comply with Board orders requiring him to respond to discovery. [TTAB decision here]. The court also found no abuse of discretion or error in several earlier Board rulings. Kaszuba d/b/a Hollywood Group v. Iancu, 2020 USPQ2d 10887 (Fed. Cir. 2020) [not precedential].

The CAFC noted that this proceeding was "peppered with unnecessary filings," and the pleading and discovery stages were "belabored." Kaszuba never responded to Petitioner HVL's discovery requests, despite being ordered by the Board to do so, given extra time to respond, and warned that his failure to comply could result in judgment against him.

Excusable Neglect: The CAFC found no abuse of discretion in the Board's accepting an amended petition for cancellation that was filed three days late. Applying the Pioneer factors, the Board found no evidence of prejudice to Kaszuba, nor any "surprise" or disruption of the orderly administration of the proceeding, nor any bad faith. Although the reason for the delay was in Petitioner HVL's control, the Board found "excusable neglect." As the court noted, "the excusable neglect inquiry is an equitable one," and the Board duly considered the circumstances surrounding the delay.

"Standing" The court pointed out that "standing" is not the proper term for the issue of whether a petitioner has pled a statutory cause of action. Since HVL's application to register HOLLYWOOD VODKA was blocked by Kaszuba's registration, the Board did not err in concluding that HVL was entitled to bring this cancellation proceeding.

Fraud: The CAFC ruled that HVL's allegations of fraud (false statements of use and phony specimens) provided "the specific who, what, when, where, and how of material misrepresentation or omission committed before the [US]PTO." The court held that the Board did not err in concluding that HVL sufficiently pled its fraud claim.

Default Judgment: The court observed that In cases of repeated failure to comply with Board orders, and when a lesser sanction would not be effective, the Board may order appropriate sanctions under Trademark Rule 2.120(h)(1) and Fed. R. Civ. P. 37(b)(2), including entry of judgment. Kaszuba lamented being denied his "day in court," but offered no explanation for his refusal to comply with the Board's orders compelling discovery, nor any basis for concluding that the Board abused its discretion.

The record supports the conclusion that the Board did not abuse its discretion in imposing the sanction of default judgment, harsh as it may be. The Board found that no less drastic remedy would be effective and that there was a strong showing of willful evasion by Kaszuba. See J.A. 5 (“We believe [such a] situation exists here.”). In entering default judgment, the Board concluded that, rather than complying with its orders, Kaszuba "repeatedly and willfully acted in a manner to evade” the discovery requests.

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TTABlogger comment: The CAFC states that petitioner "filed an application for cancellation of Kaszuba’s mark." Actually it filed a petition for cancellation, not an application. And it sought cancellation of a registration, not a mark.[Conceivably, Kaszuba may still have common law rights in his (now unregistered) mark.] Why can't the CAFC get the terminology right?

Text Copyright John L. Welch 2020.

Precedential No. 30: TTAB Finds "GRUYERE" to be Generic for ... Guess What?

The Board consolidated four oppositions to registration of the proposed mark GRUYERE as a certification mark for "cheese," and then sustained three of them on the ground of genericness. It dismissed the fourth opposition because the opposer failed to prove its standing. The Board found that "purchasers and consumers of cheese understand the term 'gruyere' as a designation that primarily refers to a category within the genus of cheese that can come from anywhere." U.S. Dairy Export Council et al. v.Interprofession du Gruyère and Syndicat Interprofessionnel du Gruyère, Opposition No. 92132442 (August 5, 2020) [precedential] (Opinion by Judge Albert Zervas).

The Board first dealt with numerous evidentiary objections, finding it unnecessary to rule on all of them because the Board "is capable of weighing the relevance and strength or weakness of the objected-to evidence, including any inherent limitations." It then pointed out several problems with some of the evidence, noting that documents submitted in a foreign language have limited probative value absent an English translation, that materials from foreign websites are likewise of limited probative value since they do not reflect usage of or exposure of the term "gruyere" to U.S. consumers, and that a mere listing of web addresses is insufficient to make the associated webpages of record.

The evidence revealed that GRUYÈRE cheese [note the accent mark] has been made in Switzerland since 1115 AD, and the name derives from the district in which it was first made. GRUYÈRE cheese has also been produced in France for hundreds of years. Millions of pounds are imported into the United States from Switzerland every year, and some 14,000 pounds were imported from France during the period 2013-2017. The Swiss government and the E.U. have recognized the term GRUYÈRE as a Protected Designation of Origin (PDO) and the French government approved the term as a "protected geographical indication" (PGI). The joint applicants enforce the certification rules for the production of GRUYÈRE cheese in Switzerland and France, respectively.

As usual, the Board applied the two-part test of Marvin Ginn, finding the genus at issue to be "cheese" and the relevant public to be members of the general public who purchaser or consume cheese. Opposers had the burden to prove genericness by a preponderance of the evidence.

Opposers relied on dictionary definitions (e.g., "a firm tangy cheese"), media references ("Wisconsin gruyere"), trade publications ("all the countries surrounding the Alps - Germany, Austria, France and Switzerland - have a tradition of making Gruyere"), Internet evidence ("American-made Gruyere will be aged 3 months"), the Code of Federal Regulations (CFR) (provides a standard of identity for "gruyere cheese," without reference to origin), USDA statistics (showing importation of processed guyere from various countries), and witness testimony regarding importation and sale of gruyere cheese. Emmi Roth, a producer in Wisconsin, agreed not to brand its own cheese "gruyere" but supplied massive amounts of gruyere cheese for private label sale to resellers who were not restricted from use of the term gruyere.

Applicants relied on other dictionary definitions ("A kind of cheese made in Gruyère, Switzerland), their own publicity and educational efforts (e.g., visits to trade fairs), policing of the mark (letters requesting cessation of use of the term), and Emmi Roth's agreement not to use the term "gruyere" as the name for it cheeses (although applicants admitted that some of the purchasers of cheese from Emmi Roth continue to label the cheese as "Gruyère.")

The Board found that the reference materials "describe a category of cheese that may be made anywhere and evoke[s] the Swiss and (occasionally) French origin of the cheese." The evidence showed that "guyere" cheese is sold by major retailers either under their own brand names, or sometimes under a group brand name like Boar's Head. Gruyere cheese is made in this country and also imported from non-Swiss and non-French producers, and sold as "gruyere." With regard to applicants' letter-writing campaign, there was no uncontroverted evidence that the recipients of the letters stopped using the term "gruyere."

As for the media and Internet items, the Board found that lower-case references to "gruyere" evidence use of the term to refer to a type of cheese. There was no evidence that applicants' recent policing and educational efforts changed consumer understanding of the term. Contrary to applicants' arguments, the CFR references are probative, even if consumers are not aware of them, because they inform manufacturers and distributors of the name to be included on labels for cheese having certain characteristics. Case law has recognized that administrative regulations are relevant to the question of genericness. The Board noted that the regulations do not offer any alternative term for this type of cheese.

Applicants pointed to the lack of survey evidence, but the Board pointed out that a survey is not required when a coined or arbitrary mark is not involved. Moreover, the evidence of record was sufficiently persuasive that a survey was unnecessary.

Finally, applicants asserted that any doubt should be resolved in their favor, but the Board observed "there is no resolution of doubt in an applicant's favor in an opposition proceeding." In any case, the Board had no doubt on the question of genericness.

And so the Board sustained the (three) oppositions.

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TTABlogger comment: Seems like the horse left the barn a long time ago.

Text Copyright John L. Welch 2020.

Precedential No. 29: TTAB Sustains Opposition to Section 66(a) Application due to Lack of Bona Fide Intent

The Board sustained this opposition to a Section 66(a) application for the mark NESPORT for various products in classes 5, 30, and 32, including nutritional supplements, energy bars, and sports drinks, finding that Applicant Taboada lacked a bona fide intention to use the mark in commerce for the identified goods. Opposer Nestle mistakenly cited Section 1(b) as the statutory basis for its claim, rather than Section 66(a), but the Board found that this error was not fatal because the pleading had put Taboada on adequate notice. On the other hand, Taboada's lack of documentation evidencing a bona fide intent as of his filing date did prove fatal to his application. Société des Produits Nestlé S.A. v. Cándido Viñuales Taboada, Opposition No. 91232597 (August 5, 2020) [precedential] (Opinion by Judge Jonathan Hudis).

Proper Pleading?: Section 66(a) requires that an applicant for extension of protection under the Madrid Protocol declare that he has a bona fide intention to use the subject mark in commerce. Opposer Nestle's notice of opposition referenced Section 1(b) rather than Section 66(a) in its claim that Applicant Taboada lacked the requisite bona fide intent. Both statutory provisions require a verified statement of bona fide intent.

The Board observed that "[c]itation of the incorrect statutory section in Opposer’s Notice of Opposition, however, is not fatal to Opposer’s claim." Although an opposition to a Section 66(a) application may not be amended to add grounds for opposition (Rule. 2.107(b), here the Board found that the claim of lack of bona fide intent was "sufficiently pleaded ab initio."

Although Opposer cited the wrong provision of the Trademark Act, it was in this case sufficient to provide notice of the ground for opposition.The is no leapfrog from one legal claim to another.

Lack of Bona Fide Intent The Board first observed that the same case law applies to the bona fide intent issue under Section 66(a) as under 1(b). See Honda Motor Co.v. Winkelmann, 90 USPQ2d 1660, 1662 (TTAB 2009).

Applicant Taboada confirmed in discovery responses that the mark NESPORT had not been used in commerce, and that he had no advertising or promotional expenditures except for his website. He had no assignees or licensees, no agreements with potential manufacturers, no documents regarding attempted regulatory approval or attendance at trade shows, and no anticipated packaging or labels.

Taboada stated that he held off from developing his business pending the outcome of this opposition and others overseas. As support for his alleged bona fide intent, Taboada pointed to his U.S. trademark application, numerous trademark filings and domain name registrations throughout the world, his website, and documents from an Australian opposition involving Nestle.

In his testimonial declaration, Taboada discussed his 20 years of experience in sales and marketing in the food and beverage industry, and his studies in California and Spain, where he made high-level business contacts. His documentation consisted of a business plan, cost estimates, mass e-mails to U.S. manufacturers and distributors, and updates to his website, all occurring in 2018 (after the commencement of this proceeding).

The Board pointed out once again that the mere act of filing an application does not suffice to establish a bona fide intent. A lack of documentary evidence may be rebutted if the applicant can show a capacity to market and manufacture the identified goods consistent with the expansion of its existing product line. Furthermore, although evidence dated prior to applicant's filing date is the strongest evidence, evidence after the filing date may also be considered if sufficiently contemporaneous.

The Board found that Opposer Nestle made a prima facie showing of lack of bona fide intent. Taboada provided no evidence of his capacity, expertise, or infrastructure to produce and distribute the wide range of products in his application (including pharmaceuticals, teeth filling and dental impression materials, vermin control products, herbicides, and various foods and beverages). Although his application was filed in 2016, his discovery responses in 2017 indicated his lack of documentation and pertinent activities.

Nestle submitted the results of its investigation showing an absence of a social media presence for the NESPORT mark. Moreover, Taboada's various registered domain names either were not operational or merely resolved to his website, which itself did not promote or offer any of the goods identified in his trademark application. In 2016 and 2017, the website displayed only a "COMING SOON" holder page, and not until August 2018 (after discovery closed and Nestle's partial summery judgment motion had been denied), did Taboada publish any content on the website, and that was minimal.

Not until 2018 did Taboada make any real effort to commercialize the NESPORT mark via a business plan, cost estimates, and mass e-mails to U.S. manufacturers and distributors. However, the business plan lacked sufficient detail to demonstrate a bona fide intention to introduce NESPORT products into the marketplace. According to the plan, Taboada would proceed with the development of his business after securing his trademark registration.

Conclusion: The Board found that Taboada's activities in 2018 were not sufficiently contemporaneous with the filing of his trademark application, and were not sufficiently extensive or focused, to establish his bona fide intention to use the NESPORT mark in commerce in 2016, when his application was filed. Taboada's litigations with Nestle did not excuse him from his burden to rebut Nestle's prima facie case arising from his lack of documentation.

Therefore the Board sustained the opposition on that ground.

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TTABlogger comment: The bona fide intent issue seemed pretty straightforward. The discussion of the pleading issue, and the fact that this case proceeded under the ACR regime, led to the "precedential" tag apparently

Text Copyright John L. Welch 2020.

Precedential No. 28: TTAB Rejects Amendment to Goods First Made in Applicant's Appeal Brief

This rather mundane Section 2(d) appeal was apparently deemed precedential because of the applicant's attempt, in its appeal brief, to amend the identification of goods in its application, without seeking leave or requesting remand. The Board explained the proper procedure, rejected the amendment, and affirmed the refusal to register the mark shown below, for "paper tubes and cores; paperboards used for protective packaging; and recycled paperboard," not surprisingly finding a likelihood of confusion with the registered mark OX BOX for "corrugated containers" [BOX disclaimed]. In re Ox Paperboard, LLC, Serial No. 87847482 (August 5, 2020) [precedential] (Opinion by Judge Angela Lykos).

Applicant Ox Paperboard purported to amend the application to expand the listing of goods in class 16 and to add two classes. Examining Attorney Douglas M. Mondell objected on two bases: applicant did not seek to amend at any time during prosecution of this application, and the amendment is unacceptable because it exceeds the scope of the original identification. The Board addressed the first objection.

As a best practice, an applicant should seek an amendment as early as possible during prosecution. If not during prosecution, applicant should file a request for reconsideration after final refusal but before the deadline for appeal  Rule 2.63(b)(3). The next preferred alternative is to file with the Board a separate request for remand and suspension of the appeal, ideally before the filing of an appeal brief.

Embedded amendments in an appeal brief are not prohibited but are discouraged because they may be overlooked by the Board before the examining attorney files his or her brief and may needlessly delay the appeal. See TBMP Section 1205.01. If the examining attorney objects to the amendment, the Board typically treats the attempted amendment as a request for remand for further examination and it considers whether good cause has been shown for the remand.

Good cause will generally be found, for example, when the amendment is an attempt to comply with a requirement, such as an amendment to the identification of goods or services in response to a requirement for an acceptable identification, when the amendment will obviate a ground for refusal, such as an amendment to the Supplemental Register or an amendment to assert a Trademark Act §2(f) claim (15 U.S.C. §1052(f) ) in order to avoid or overcome a refusal under Trademark Act § 2(e)(1), Trademark Act §2(e)(2) or Trademark Act § 2(e)(4), 15 U.S.C. §1052(e)(1), 15 U.S.C. § 1052(e)(2)or 15 U.S.C. §1052(e)(4), or when the examining attorney consents to remand for consideration of the amendment. However, whether good cause will be found will depend, in part, on the stage of the appeal at the time the amendment is filed, including the reason given for the delay. TBMP Section 1205.01

Applicant Ox failed to demonstrate the required good cause as to why thr application should be remanded to the Office for consideration of its amendment. It did not even "request" amendment, but presumed it was entitled to amend, and it offered no explanation as to why it waited so long to "propose" the amendment. Moreover, the Board noted, even if accepted the amendment would not obviate the Section 2(d) refusal because the amended goods and services would still be related to registrant's goods.

The Board concluded that applicant failed to establish good cause for suspension of the appeal and remand of the application. Had applicant proceeded in accordance with best practice, the Board noted, the issue could have been resolved prior to issuance of this final decision. "Applicants are strongly encouraged to follow preferred practice in order to ensure the orderly administration of ex parte appeals."


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TTABlogger comment: I'm at a loss for words. Somewhere there's a pun here about being stubborn as an ox, but it's not worth finding.

Text Copyright John L. Welch 2020.

TTABlog Test: Is CHRONICLE for Beer Confusable With CHRONICLE for Restaurant Services?

The USPTO refused to register the mark CHRONICLE for beer, finding a likelihood of confusion with the identical mark registered for restaurant services. The Board observed that there is no per se rule that food products and restaurant service are related, and that "something more" is required to prove relatedness: more evidence than merely showing that restaurants sell beer under a private label. The Examining Attorney relied on 10 third-party registrations and Internet evidence of 11 establishments purporting to demonstrate that the identified eateries use a single mark for beer and for their restaurant services. How do you think this came out? In re Parallel World Brewing Company LLC, Serial No. 87403137 (August 4, 2020) [not precedential] (opinion by Judge George C. Pologeorgis).

Applicant argued that the USPTO's evidence is just the type of evidence that the CAFC rejected in In re Coors, as failing to satisfy the "something more" requirement.

although the Board had before it a few registrations for both restaurant services and beer, the very small number of such dual use registrations does nothing to counter Coors’ showing that only a very small percentage of restaurants actually brew their own beer or sell house brands of beer; instead, the small number of such registrations suggests that it is quite uncommon for restaurants and beer to share the same trademark. In re Coors, 68 USPQ2d at 1063064.

Applicant submitted data from the National Restaurant Association indicating that in 2018 there were more than one million restaurants operating in the United States. Data from the Brewers Association website indicated that 2,594 brewpub sand 4,522 microbreweries were operating in the United States in 2018.

The Board sided with the applicant, ruling that the USPTO's conclusion regarding the relatedness of the involved goods and services was not supported by substantial evidence. First, only 6 of the 11 establishments cited by the USPTO provided beer and dining services under the same mark, and those 6 appear to be brewpubs. According to applicant's evidence, even if all the brewpubs and microbreweries featured restaurant services, those establishments would amount only "approximately .007%" (sic) [[actually, I think 7,000 out of one million is 0.7% - ed.] of the total number of restaurants in the U.S. "The evidence suggest that it is not common for restaurants and beer to share the same trademark."

The Board noted that the USPTO did not submit any evidence from trade publications or articles to show that restaurants commonly serve beer and offer their services under the same mark. Nor was there evidence that applicant's beer is offered at registrant's restaurants.

The Board therefore reversed the refusal to register.

[T]he evidence of record is insufficient to satisfy the "something more" requirement under In re Coors so as to establish that Applicant’s beer and Registrant’s restaurant services, as well as the other services recited in the cited registration,are sufficiently related for likelihood of confusion purposes. This is a critical shortcoming in the evidence, because even identical marks will not cause confusion unless there is at least some degree of relatedness of the goods and services at issue.

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PS: The Board corrected its calculation error here: http://ttabvue.uspto.gov/ttabvue/ttabvue-87403137-EXA-8.pdf.

TTABlogger comment: If I ever go to a restaurant again, and I see beer offered under the same mark as the restaurant's mark, I would think, what the heck is that?

Text Copyright John L. Welch 2020.

CAFC Dismisses Royal Crown's Appeal in ZERO Oppositions Based On Coke's Disclaimer of ZERO

The CAFC dismissed an appeal from the TTAB's May 3, 2019 decision [here] dismissing the Royal Crown parties' consolidated opposition to sixteen trademarks containing the term ZERO. In the opposition, RC contended that the various ZERO-formative marks should be denied registration "absent the entry of a disclaimer of the term 'zero.'" When the case was remanded to the Board in June 2018 because the Board had applied the wrong standard for genericness [TTABlogged here], Coca-Cola filed a motion to amend each application to add a disclaimer of ZERO, which motion the Board granted. On this appeal, the CAFC ruled that there was no case or controversy to decide. Royal Crown Company, Inc., and Dr. Pepper/Seven-Up, Inc. v. The Coca-Cola Company, Appeal No. 2019-2088 (Fed Cir. August 3, 2020) [not precedential].

In its original decision, the Board had ruled that Coca-Cola's marks could be registered with a disclaimer of ZERO because they had acquired distinctiveness. The CAFC instructed the Board, on remand, to consider whether ZERO refers to a "key aspect" of the genus, and to make an express finding regarding the degree of the term's descriptiveness. Coca-Cola then filed its motion to add the disclaimers.

In this appeal Royal Crown raised three challenges: that the granting of the motion was procedurally improper, that the Board was required by the Administrative Procedure Act (APA) to render a reasoned decision on the merits, and that the disclaimers did not moot this appeal since Coca-Cola might file new ZERO applications in the future. The court, however, found that the Board did not abuse its discretion in granting the motion, and that entry of the disclaimer render this appeal moot.

Rule 2.133(a) allows the Board to grant amendments to an opposed application even with consent of the other party. RC offered no support for its argument that such motions are forbidden after trial, and the court found it "improbable" that the Board has no power to grant a motion entering a disclaimer when that is all the opposer seeks.

RC contended that because Coca-Cola did not concede whether ZERO is generic or merely descriptive, Coca-Cola may apply for other ZERO marks. The court observed that "litigation is conducted for the purpose of obtaining relief, not an advisory opinion." Although such an advisory opinion might be useful to RC, that interest is "too speculative to invoke the jurisdiction of this court."

And so the court dismissed the appeal.

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TTABlogger comment: So ends this decade long battle over the word ZERO. I'll bet the total attorney fees for this case includes a lot of zeros.

Text Copyright John L. Welch 2020.

Precedential No.27: TTAB Grants FRCP 56(d) Motion for Discovery to Avoid Summary Judgment Ambush

Petitioner Anand K. Chakayala, rather than respond to Praise Broadcastings's discovery requests, filed a motion for summary judgment in this proceeding for cancellation of a registration for the mark PRAISELIVE & Design for broadcasting services. Praise moved for discovery under FRCP 56(d) on the relevant Section 2(d) issues. The Board granted the motion, noting that one purpose of Rule 56(d) is to protect a party from being ambushed by a summary judgment motion before that party had an opportunity to obtain relevant discovery. Anand K. Chavakula v. Praise Broadcasting AKA Praise FM, 2020 USPQ2d 10855 (TTAB 2020) [precedential] (Jennifer Krisp, Interlocutory Attorney).

FRCP 56(d) provides that if a party served with a summary judgment motion shows that it cannot present essential facts to justify its opposition to the motion, the court may deny or defer the motion, allow time for discovery, or issue any other appropriate order. The party seeking discovery must state the specific reasons why it needs such discovery, and if it must set forth the specific areas of discovery that it seeks.

Praise maintained that it required discovery regarding priority and certain du Pont factors, pointing out which of its interrogatories and document requests were on point, including those that covered certain "undisputed facts" set forth by petitioner Chayakala.

The Board noted that the summary judgment motion placed in issue "any matters probative of Petitioner's asserted priority, and likelihood of confusion." It further noted that a party seeking Rule 56(d) discovery need not have previously sought discovery. Here, Praise delineated the interrogatories and document requests by which it timely sought relevant information and documents. The Board found that Praise had adequately explained "why it is unable to prepare a response to without discovery and confirms that what it needs is largely within Petitioner's possession, custody or control."

In short, Respondent’s need for Petitioner’s discovery responses is evident under the circumstances: it seeks key information regarding priority and the various du Pont factors, the responsive information and documents are in Petitioner’s possession and control, and after Petitioner stated by email that its responses would be sent, it instead moved for summary judgment. "Rule 56(f) provides nonmovants with protection from being ‘railroaded’ by premature summary judgment motions.” Opryland USA Inc., 23 USPQ2d at 1475 (quoting Celotex v. Catrett, 477 U.S. 317, 326 (1986)).

Although the Board applies Rule 56(d) rigorously, and although it noted that Praise's motion for discovery was not "ideally supported," the Board pointed out that it will not penalize a party "when the motion arises from the actions of an uncooperative or recalcitrant adversary who gridlocks discovery." Chayakala's failure to cooperate in the discovery process was troubling to the Board: "Petitioner's behavior is emblematic of how a party's failure to meet it discovery obligations can lead to avoidable motion practice that stalls a proceeding."

Chayakala was allowed twenty days to respond to the identified discovery requests, without objection on the merits of the requests,and must serve all requested documents, labeled by Bates stamping.

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TTABlogger comment: Did petitioner think he could get away with this? I think the Board should have just denied the motion for summary judgment and compelled discovery.

Text Copyright John L. Welch 2020.

Precedential No. 26: TTAB Rejects 2(f) Acquired Distinctiveness Claim for GUARANTEED RATE for Mortgage Lending Services

Conceding that the phrase GUARANTEED RATE is merely descriptive of its services, Applicant Guaranteed Rate, Inc. sought to register the phrase, and the word-plus-design mark shown below, for various mortgage lending services, under Section 2(f), claiming acquired distinctiveness. The Board, however, found the phrase to be highly descriptive - indeed, a "key aspect" - of the services and ruled that applicant had failed to carry the proportionately higher burden to establish acquired distinctiveness. And so the Board affirmed the Section 2(e)(1) refusal of the word mark and likewise affirmed the requirement that applicant disclaim the phrase in the word-plus-design mark. In re Guaranteed Rate, Inc., 2020 USPQ2d 10869 (TTAB 2020) [precedential] (Opinion by Judge Marc A. Bergsman).

Examining Attorney Andrea P. Butler submitted dictionary definitions of the component words and copious evidence of third-party use of "guaranteed rate" and closely similar terms. The Board found from this evidence that "'locking in' a mortgage rate is referred to and explained as 'guaranteed rate' ... for a particular period," and it concluded that the phrase is highly descriptive.

To determine whether the phrase has acquired distinctiveness, the Board looked to In re Snowizard, Inc., 129 USPQ2d 1001, 1005 (TTAB 2018) (quoting Converse, Inc. v. Int'l Trade Comm'n, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018).

[T]he considerations to be assessed in determining whether a mark has acquired secondary meaning can be described by the following six factors: (1) association of the [mark] with a particular source by actual purchasers (typically measured by customer surveys); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage of the product embodying the mark.

Applicant relied on evidence under the second, third, fourth and sixth Snowizard considerations, but it did not submit a consumer survey or other direct evidence. It has used the phrase in connection with mortgage services since 2000. It owns registrations for GUARANTEED RATE AFFINITY for the same same services, both of which registration issued with a claim of acquired distinctiveness for "GUARANTEED RATE."

Since 2007, applicant has spent more than $140 Million in promoting its services under the proposed mark, usually in the design format. Applicant garnered more than $3 Billion in revenues in the past 11 years and in 2016 was ranked as the fifth largest mortgage company. It has received favorable media coverage, advertised at the Super Bowl, and owns naming rights to the Chicago White Sox baseball stadium. [I still call it Comiskey Park - ed.].

The Board found applicant's advertising and sales figures to be "impressive," but was "not convinced that this evidence demonstrates consumer recognition of this highly descriptive wording as indicating a single source because of the extensive evidence of third party use." Even if use had been substantially exclusive use of the phrase GUARANTEED RATE since 2000 would not be dispositive.

It was not clear to what extent applicant uses the phrase GUARANTEED RATE standing alone. And the nature and number of third-party descriptive uses undercut applicant's claim "because it interferes with the relevant public's perception of the designation as a source indicator."

Given the number of third-party uses in the same field in which Applicant uses it, consumers are likely to perceive the term “Guaranteed Rate” when used in connection with mortgage lending services not as a trademark for one company, but rather as a term commonly used by many entities in the industry, and in common speech, to describe a feature of mortgage services.

The Board then turned to applicant's two registrations for the mark GUARANTEED RATE AFFINITY, one in standard characters and the other in the form shown below, both of which include a claim of acquired distinctiveness for GUARANTEED RATE. Trademark Rule 2.41(a) provides that "in appropriate cases" ownership of registrations of the "same mark" may be accepted as prima facie evidence of distinctiveness "if the goods or services are sufficiently similar to the goods or services in the application." However, "further evidence may be required."

The Board found the prior registrations to be insufficient to prove acquired distinctiveness, and that additional evidence is required. First, the phrase GUARANTEED RATE is so highly descriptive that reliance on prior registrations is not, in and of itself, enough to establish acquired distinctiveness. The Board observed once again that each application must be examined on its own merits, and the existence of the two prior registrations without disclaimers "are insignificant in the mix of evidence in this particular set of circumstances."

Second, the two prior registration are less than five years old and therefore could be challenged by a competitor on the ground of mere descriptiveness. The Board pointed out that its treatment of the prior registrations is not an "attack on the validity of those registrations."

The Board concluded that, despite applicant's substantial efforts, the public understands and uses the phrase "guaranteed rate" to describe a feature of applicant's mortgage lending services.

Requiring proof that an applicant has been effective in its efforts to sway public perception from primarily viewing a term in its ordinary descriptive sense to instead primarily signifying a brand works hand-in-hand with the corollary that “our society is better served if … highly descriptive or generic terms remain available for use among competitors.”

Therefore the Board affirmed the refusal to register the standard character mark GUARANTEED RATE, and affirmed the refusal of the word-plus-design mark without a disclaimer of the phrase. Applicant was allowed thirty days to submit the required disclaimer, in which case the application will proceed to publication.

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TTABlogger comment: There is a direct correlation between the degree of descriptiveness of a proposed mark and the need for survey evidence to secure registration.

Text Copyright John L. Welch 2020.

TTAB Posts August 2020 (Video?) Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled eight (8) oral hearings for the month of August 2020. Many, if not all, of the hearings will be held via video. Briefs and other papers for each case may be found at TTABVUE via the links provided.

August 6, 2020 - 2 PM: In re Redleg Rum Company Limited, Serial No. 87187265 [Section 2(d) refusal of RED LEG & Design for "spirits, rum," in view of the registered mark RED LEG BREWING COMPANY for "beer, ale, lager, stout and porter; beers" [BREWING COMPANY disclaimed].

August 11, 2020 - 11 AM: In re Charlie's Enterprises, Serial No. 88200043 [Refusal to register the mark below for "Peas, fresh; Vegetables, fresh" on the ground that applicant's specimen of use (a trailer wrap on a truck) is unacceptable].

August 11, 2020 - 11:30 AM: In re Charlie's Enterprises, Serial No. 88199740 [Section 2(d) refusal of the mark shown below for "vegetables, fresh; Fresh kale," on the ground of likelihood of confusion with the registered mark KALE YEAH! for "Salads, namely, vegetable salads containing kale," and a second refusal on the ground that applicant's specimen of use (a trailer wrap on a truck) is not acceptable].

August 12, 2020 - 10 AM: In re Friendship Retirement Corp., Serial No. 87942568 [Section 2(e)(1) mere descriptiveness refusal of CENTER FOR MODERN AGING for "providing assisted living facilities" and "continuing care retirement communities (CCRCs) in the nature of nursing home services," despite applicant's claim of acquired distinctiveness under Section 2(f)].

August 12, 2020 - 2 PM: In re Michel Mercier, Serial No. 79246019 [Section 2(d) refusal of Romy (standard characters) for "Hair brushes, hair combs, hair styling comb and brushes, rotary hair brushes, electrically heated hair brushes" in view of the registered mark ROMY for "Non-medicated soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; make-up preparations; make-up removing preparations; cosmetic preparations for baths; cleansing milk for toilets purposes; cosmetic skin-tanning preparations; cosmetic skin care preparations; depilatory preparations; nail care preparations; antiperspirants; hair dyes; shampoos; hair conditioners; hair sprays; oils for toiletry purposes; lotions for cosmetic use"].

August 13, 2020 - 1 PM: In re Creativity IP PLLC, Serial No. 88120181 [Section 2(d) refusal of CREATIVITY IP for legal services [IP disclaimed] in view of the registered mark CREATIVITY LAW for "legal services for the enforcement, licensing, use, establishment and maintenance of intellectual property rights" [LAW disclaimed]].

August 18, 2020 - 10 AM: In re Iguana Yachts, Serial No. 87868306 [Refusal to register PRO IGUANA & Design for "Boats; amphibious vehicles; professional boats and professional amphibious vehicles in the fields of security, military, rescue and transport of goods and people" on the ground that the specimens of record (office sign, business card, and press release) fail to show the mark in use in commerce].

August 25, 2020 - 2 PM: Grant Toland, Alexander Prenta and Russ Bennet v. Campari Mexico S.A. de C.V., Opposition No. 91250805 [Section 2(d) opposition to registration of EIDOLON for beer and for "Spirits, excluding distilled blue agave liquor and mezcal; Wine," in view of the registered mark ESPOLON for "Alcoholic beverages except beers" including tequila].

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TTABlog comment: Any predictions? See any WYHA?s ? By the way, why aren't these video hearings publicly accessible?

Text Copyright John L. Welch 2020.

TTABLOG TEST: Is D'AVOCADO Generic for Avocado-Based Chocolate Products?

The USPTO refused to register, on the Supplemental Register, the term D'AVOCADO for "high pressure pasteurized avocado based chocolate confections, mousses, spreads, puddings and frozen desserts," on the ground of genericness. Keeping in mind that the Board, in the past year or so, has found MALAI generic for ice cream products and BLUEBERRY MUFFIN generic for beer, how to you think this appeal came out? In re D’Avocado, LLC, Serial No. 87704536 (July 28, 2020) [not precedential] (Opinion by Judge Peter W. Cataldo).

The examining attorney required a translation of D'AVOCADO, contending that many French speakers use the term as as a generic identifier for avocado and products made of avocado. Applicant maintained D’AVOCADO is "a compound mark comprising of [sic] the English terms ‘D’ and ‘AVOCADO’ joined by an apostrophe," so that no translation is required. The Board found the USPTO's evidence to be ambiguous:"it is not clear ... whether the term 'd’avocado' translates to 'avocado' or whether the French language webpages simply adopt the English word 'avocado.'" Therefore, the Board found the translation requirement inappropriate. [Seems pretty clear to me that the term means AVOCADO, with the "d" being just a fancy, meaningless add-on - ed.].

Turning to the genericness issue, the Board as usual found the genus to be appropriately described by the identification of goods in the application, rejecting applicant's proposed "plant-based chocolate." Applicant feebly argued that the relevant consumers are English speakers in Midwest supermarkets ("from Pittsburgh to Fargo), but these restrictions did not appear in the application at issue.

As to consumer perception, the Board noted that in applicant's specimen of use and other materials, there was no use of D’AVOCADO "or other indicia to suggest the purchasing public would perceive it as a common name for the goods rather than a mark." Nothing in the USPTO's evidence showed use of the term in connection with the identified goods.

The Board found the facts of this case to be "reminiscent" of several prior decisions in which a mark combining a generic term with a foreign article or other word changed the commercial impression of the phrase: LA YOGURT for yogurt, GLACÈ LITE for ice cream and frozen desserts, LE CASE for jewelry and gift boxes (CASE disclaimed).

The Board concluded that "the sparse and inconsistent record of any meaning of 'd’avocado' in a foreign language or English, as well as the very limited evidence of consumer perception of the term, does not point to the mark as a generic name of the class of goods." The Board therefore reversed both the genericness refusal and the translation requirement.

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TTABlogger comment: I find this case reminiscent of the generic ingredient/flavor cases.

Text Copyright John L. Welch 2020.