Friday, June 11, 2021

Precedential No. 16: WYHA? TTAB Affirms Mere Descriptiveness Refusal of ONLINETRADEMARKATTORNEYS.COM as Claim of Acquired Distinctiveness Fails

For some reason that completely escapes me, the Board has re-designated as precedential its February 2021 decision affirming a Section 2(e)(1) mere descriptiveness refusal of the proposed mark ONLINETRADEMARKATTORNEYS.COM for "legal services," Applicant Saucer Summers claimed acquired distinctiveness under Section 2(f) but its submissions were woefully inadequate to satisfy the heightened burden of proof for this highly descriptive mark. In re Sausser Summers, PC, Serial No. 88626569 (February 16, 2021, re-designated as precedential, June 8, 2021) (Opinion by Judge Christopher Larkin).


The Board was first required to determine the degree of descriptiveness of the proposed mark, because "the greater the degree of descriptiveness the term has, the heavier the burden to prove it has attained secondary meaning." Royal Crown Cola Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1048 (Fed. Cir. 2018) (quoting In re Boston Beer Co., 198 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999) (internal quotation omitted)). 

Examining Attorney Andrea B. Cornwell relied on dictionary definitions and evidence of third-party use of the term "online trademark attorney(s)" or close variants. Applicant described its business model as "a law firm that runs completely online," thereby keeping its overhead low, so that it "provides copyright and trademark registration services on a flat rate basis." 

The Board found that "“on the scale ranging from generic to merely descriptive,” Royal Crown Cola, 127 USPQ2d at 1048, ONLINETRADEMARKATTORNEYS.COM is much closer to the generic end of the scale than to the merely descriptive end, making it highly descriptive of the 'legal services' identified in the application." 

Sausser Summers relied on both its verified statement that the proposed mark has been in substantially exclusive and continuous use for at least five years, and on its evidence of acquired distinctiveness. As to the five-year claim, the Board noted that Section 2(f) provides that the USPTO may accept such a statement as prima facie evidence of acquired distinctiveness, but the Office is not required to do so. The Board ruled that, in view of the highly descriptive nature of the proposed mark, the Examining Attorney "was well within her discretion to reject Applicant's claim of five years of substantially continuous use as insufficient to prove acquired distinctiveness." 

As to applicant's evidence, the Board applied the Converse factors to determine whether the proposed mark had achieved acquired distinctiveness. Applicant offered neither consumer survey evidence, nor declarations from clients attesting to their association of the proposed mark with the applicant. It submitted testimonials from 125 clients, but only a tiny fraction even mentioned the proposed mark; the vast majority referred to applicant by its law firm name. In sum, the testimonials were nonprobative. 

The fact that applicant may have exclusive use of the domain name is of little probative value as to exclusivity of use in light of the evidence that "multiple third parties describe their legal services as being provided by "online trademark attorneys." 

Sausser Summers claimed "vast and worldwide advertising" resulting in the expenditure of "a substantial amount in advertising each year," but the Board pooh-poohed these "grandiose claims": "It strains credulity that a business striving to keep overhead low and charging low flat fees would (or even could) engage in 'vast and worldwide advertising' and 'spend[ ] a substantial amount in advertising each year.' In the absence of supporting evidence, we cannot find that Applicant has advertised extensively." 

Sausser Summers also claimed that it “has advertised in print magazines, social media platforms, internet ads, and various other sources across the U.S. and in other countries” and “has placed ads via social media platforms, and places advertisements via Googleads on a daily basis,” but it failed to provide any evidence regarding the duration and extent of exposure of any of these materials. It submitted only a single print advertisement from the July 2019 edition of the Charleston Business Magazine, a publication apparently directed to businesses located in Charleston, South Carolina, the city in which Sausser Summers has its "brick-and-mortar world address."

Here, we have no useful information regarding even Applicant’s efforts to establish such an association through its advertising and promotion, and we cannot infer anything about its success based on its evidence under this Converse factor.

Sausser Summers did not reveal the amount of revenue garnered from its legal services, nor did it state the number of clients served. Although applicant was listed for several years as one of the top-filing firms in the U.S., that was under the firm name, not under the proposed mark. There was no probative evidence of intentional copying of the proposed mark by others, and no probative evidence regarding unsolicited media coverage.

Considered as a whole, Applicant’s evidence on the Converse factors falls far short of carrying Applicant’s heavy burden of showing that its highly descriptive proposed mark ONLINETRADEMARKATTORNEYS.COM has acquired distinctiveness for legal services.


And so, the Board affirmed the refusal to register. 

Read comments and post your comment here.

TTABlogger comment: Another disaster! WYHA? By the way, the Board stated that the refusal to register was under Sections 2(e)(1) and 2(f) of the Trademark Act, but Section 2(f) is not a basis for refusal. Section 2(f) provides a way to overcome other refusals, including Section 2(e)(1).

Text Copyright John L. Welch 2021.

Thursday, June 10, 2021

Precedential No. 15: On Remand, TTAB Reverses COOKINPELLETS.COM Genericness Ruling, But Affirms Mere Descriptiveness and Lack of Acquired Distinctiveness

In July 2020, the CAFC remanded to the TTAB the Board's decision that found the proposed mark COOKINPELLETS.COM to be generic for "Processed wood fuel in the nature of pellets for use in barbecue grills," and alternatively merely descriptive of those goods. [TTABlogged here]. The TTAB has now reversed its original finding of genericness, but has affirmed the mere descriptiveness refusal. The evidence established that COOKINPELLETS is generic for the goods, but the addition of ".COM" created enough doubt on that issue to justify the reversal. However, as to applicant's Section 2(f) claim, applicant failed to meet the elevated burden of proof applicable when considering acquired distinctiveness for such a highly descriptive term. In re GJ & AM, LLC, 2021 USPQ2d 617 (TTAB 2021) [precedential] (Opinion by Judge Marc A. Bergsman).


In ordering remand, the CAFC directed the Board to consider its original rulings in light of the Supreme Court’s decision in USPTO v. Booking.com B.V., 2020 USPQ2d 10729 (2020). There, the Court rejected a per se rule that a "generic.com" is always generic or always non-generic. The determination of genericness turns on "whether consumers in fact perceive [the] term as the name of a class or, instead, as a term capable of distinguishing among members of the class."

Genericness: The meanings of the terms "cooking," "pellets," and ".com" were not in dispute, nor did applicant contest that "cookin" and "cooking" mean the same thing. The Board then closely reviewed the evidence: applicant's own use of COOKINPELLETS and COOKINPELLETS.COM, third-party commercial use of the terms, use in on-line forums, news articles, and Internet search results. The Board concluded that "Cooking Pellets" is "indisputably generic": "the combination of "cooking" and "pellet" does not result in a term that purchasers ... will understand as anything other than a cooking fuel." The terms are "as generic in the compound COOKINPELLETS as they are individually, and the compound term itself is generic."

As to the proposed mark COOKINPELLETS.COM, the individual words "cookin" and "pellets" retain their generic meaning because the compression of the terms does not create an incongruous term, nor does it invoke a unique commercial impression." In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1112 (Fed. Cir. 1987). Nonetheless, applicant argued that relevant consumers perceive COOKINPELLETS.COM as its brand name," and the evidence showed that some third-parties use or understand COOKINPELLETS (with or without a space) and COOKINPELLETS.COM as capable of serving as a source indicator.

Although this evidence of consumer perception is limited, on the specific facts and record before us, we find it is sufficient to create doubt about whether consumers would perceive COOKINPELLETS.COM as a whole as generic, or rather as capable of indicating source and thus eligible for registration on the Supplemental Register or on the Principal Register under Section 2(f) if Applicant can show it has acquired distinctiveness. We are constrained to resolve that doubt in favor of Applicant. See, e.g., In re Waverly Inc., 27 USPQ2d 1620, 1624 (TTAB 1993).

And so, the Board reversed the genericness refusal.

Acquired Distinctiveness: Applicant claimed that its proposed mark has acquired distinctiveness under Section 2(f), a claim that served a concession that the term is not inherently distinctive. See Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009). The Board then turned to a determination of the degree of descriptiveness, since the more descriptive a term, the more proof required under Section 2(f). Royal Crown, 127 USPQ2d at 1047 (quoting Steelbuilding.com, 75 USPQ2d at 1424); see also Nazon v. Ghiorse, 119 USPQ2d 1178, 1187 (TTAB 2016).

Based on the evidence regarding genericness, the Board concluded that COOKINPELLETS.COM is "closer to the generic than suggestive line" and is highly descriptive. The Board then applied the CAFC's Converse analysis to applicant's evidence: use of the proposed mark since 2007, approximately 250,000 units sold for $3M in revenue, $25,000 spent for advertising, promotion of mark on social media an on its website, and a ranking for several years as the best-selling and highest-rated pellet on Amazon.com.

The Board was not impressed. Long use of a term does not necessarily establish acquired distinctiveness. See, for example, Apollo Med. Extrusion Techs., 123 USPQ2d at 1855 (25+ years not sufficient to prove acquired distinctiveness); Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d at 1766 (19 years use insufficient to prove acquired distinctiveness). The sales figures were modest and were not placed in context (market share), and the advertising figures lacked information as to the extent of exposure. There was no survey evidence, no evidence of intentional copying, and minimal media coverage.

After considering all of the factors for which there is evidence in determining whether Applicant’s mark COOKINPELLETS.COM has acquired distinctiveness, we find that Applicant has failed to meet its burden of showing that the highly descriptive term COOKINPELLETS.COM has acquired distinctiveness. Specifically, because Applicant did not submit any testimony or evidence defining the size of the market or otherwise providing context as to how the raw numbers Applicant provided compare in the marketplace, we analyze the evidence regarding consumer recognition, Applicant’s modest advertising expenditures, and modest sales in a vacuum.

 

And so, the Board affirmed the mere descriptiveness refusal.


Read comments and post your comment here.

TTABlogger comment: I predicted this result when the CAFC ordered remand. Sometimes even a blind squirrel ....

Text Copyright John L. Welch 2021.

Wednesday, June 09, 2021

Precedential No. 14: Indefinite Recitation of Services and Failure to Adequately Respond to Information Request Sink SHIFTMAG Application

Applicant SICPA Holding SA ran into double trouble when it applied to register the mark SHIFTMAG for "security consulting in the nature of professional consulting on magnetic stripe color shifting smart designs based on liquid crystal technology for visual card authentication, embed protection and brand identity customization.” In a dubiously precedential opinion, the Board agreed with Examining Attorney Brian Pino that SICPA's recitation of services was fatally indefinite, and the Board also upheld a second refusal based on SICPA's failure to respond timely and adequately to a Rule 2.61(b) request for information. In re SICPA Holding SA, 2021 USPQ2d 613 (TTAB 2021) [precedential] (Opinion by Judge Michael B. Adlin).

Indefiniteness: Examining Attorney Pino maintained that, because of the indefiniteness of the recitation of services, they cannot be properly classified. SICPA argued that its is a "one-of-a-kind business entity," that the services it offers are "not in the ID Manual," and that "[n]ot everything in the world is in the ID Manual." 

The Board sided with the USPTO, observing that specificity is required "to provide public notice and to enable the USPTO to classify the goods and services properly ...." In re Fiat Grp Mktg. & Corp. Commc’ns. S.p.A.A., 109 USPQ2d 1593, 1597 (TTAB 2014). Moreover, "[i]t is within the discretion of the PTO to require than one's goods be identified with particularity." In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541, 1544 (Fed. Cir. 2007) (quoting In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89, 91 (CCPA 1980)).

In In re Omega, the CAFC upheld a requirement that the term "chronographs" be identified more specifically because the term could refer to "watches" in class 14 or to time recording instruments in class 9. Similarly, here the term "security" in SICPA's recitation of services is ambiguous: "it is unclear whether the term refers to data security, as suggested by the services relating to 'card authentication and identification,' or to physical security." SICPA claimed that it "does not do data security," but that did not make the identification less ambiguous. Moreover, it was not clear from SICPA's examples of use whether it was offering a product or a product feature, rather than a service.

While Applicant’s product may very well be “one of a kind,” that does not excuse Applicant from complying with the requirement to identify its goods or services with sufficient particularity and in an understandable way. Goods and services implementing emerging technologies, by their very nature, may not to be represented in the ID Manual. Nonetheless, the Trademark Rules and decisional law require an applicant to identify its goods or services in a clear manner that permits proper classification. Applicant did not do so here, however.


Request for Information: Under Rule 2.61(b), "[t]he Office may require the applicant to furnish such information . . . as may be reasonably necessary to the proper examination of the application." "Equivocal, vague or evasive responses are unacceptable." In re AOP LLC , 107 USPQ2d 1644, 1651 (TTAB 2013). Failure to comply with a request for information is an independent ground for refusal of an application. In re Cheezwhse.com Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP , 67 USPQ2d 1699, 1701 (TTAB 2003). 

Of the five requests made by the Examining Attorney, SICPA failed to respond to two of them until its final brief. "But that was too late."
 

The Rule’s purpose is thwarted , proceedings are unduly prolonged, and the expenditure of agency resources is needlessly increased if the information is not provided until examination is over and the application is on appeal before the Board.


And so, the Board affirmed the second refusal. 

Read comments and post your comment here.

TTABlogger comment: What a disaster! The Board noted that, as to the information requirement, SICPA could have asked for remand to the USPTO in order to respond to the two unanswered requests.

Text Copyright John L. Welch 2021.

Tuesday, June 08, 2021

North Carolina District Court Finds PRETZEL CRISPS Generic, Orders Cancellation of Registration

In the latest twist in this long-running saga, the United States District Court for the Western District of North Carolina has found the term PRETZEL CRISPS to be generic for pretzel crackers. The court therefore upheld the decision of the TTAB [here] ordering cancellation of the PRETZEL CRISPS Supplemental Registration. The court observed that there was no dispute that the product was "hugely successful, due in no small part to Plaintiffs’ extensive marketing efforts and the PRETZEL CRISPS trademark registration they received and have enforced to clear the field of similarly named products. However, no matter how much commercial success the product enjoys, Plaintiffs are not entitled to monopolize the common name of the product being sold." Snyder's Lance, Inc. and Princeton Vanguard, LLC v. Frito-Lay North America, Inc., (W.D.N.C. June 7, 2021).


Judge Kenneth Bell first considered whether the combination of the generic terms "pretzel" and "crisps" creates any additional meaning for consumers from which they can distinguish Plaintiff's product." He concluded that it did not, and therefore that PRETZEL CRISPS is generic. 

The court did not rest its decision on that finding alone. Judge Bell reviewed in detail all the evidence submitted by the parties, including the dictionary definitions, usage by competitors and others in the field, media reference, plaintiff's own usage, press releases, business references, social media, and consumer surveys. [Of the two surveys submitted by plaintiff, one was "inconclusive" and the other supported a genericness finding.]

Summarizing the evidence on the genericness of the mark, considered as a whole, the Court finds that the combination of the acknowledged generic elements of the compound mark “yields no additional meaning to consumers capable of distinguishing the goods” and, independently, usage by competitors, media references and consumer surveys (as well as some use by Plaintiffs) reflects that, on balance, consumers primarily perceive “pretzel crisps” to be a common/generic name.

Read comments and post your comment here.


TTABlogger comment: The NYU article blogged here last Friday includes a discussion of the Teflon survey in the PRETZEL CRISPS case.

Text Copyright John L. Welch 2021.

Monday, June 07, 2021

Recommended Reading: "The Role of Consumer Uncertainty in Trademark Law: An Experimental and Theoretical Investigation"

Barton Beebe, Roy Germano, Christopher Jon Sprigman, and Joel H. Steckel, scholars at New York University (the first three at the law school), have published an important article on the topic of trademark survey evidence: "The Role of Consumer Uncertainty in Trademark Law: An Experimental and Theoretical Investigation". For those of you contemplating the commissioning of a survey (and who isn't?), this is a must read. [download here].


Abstract

Nearly every important issue in trademark litigation turns on the question of what consumers in the marketplace subjectively believe to be true. To address this question, litigants frequently present consumer survey evidence, which can play a decisive role in driving the outcomes of disputes. But trademark survey evidence has proven to be highly controversial, not least because it is notoriously prone to expert manipulation. In this Article, we identify and present empirical evidence of a related, but more fundamental problem with trademark survey evidence: while all the leading survey formats in trademark law test for whether consumers hold a particular belief, they do not test for the strength or the varying degrees of certainty with which consumers hold that belief. In short, by treating the question of consumer beliefs as essentially binary, the formats do not test for belief strength. Yet as the social science literature has long recognized, the strength with which consumers hold particular beliefs shapes their behavior in the marketplace, and thus it should also shape, we believe, how trademark disputes play out in the courtroom. Through a series of experiments using the three leading trademark survey formats (the so-called Teflon, Eveready, and Squirt formats), we show the remarkable degree to which these formats as conventionally designed overlook—or suppress—crucial information about consumer uncertainty. We further demonstrate how a low-cost, easily-administered, and relatively simple modification in these formats can reveal that information. We discuss both the practical and theoretical implications of our findings. As a practical matter, trademark survey evidence that shows only weakly-held beliefs (or that does not even test for belief strength) should not, without more, satisfy a litigant’s burden of persuasion on the issue addressed by the survey. Furthermore, in line with courts’ growing efforts in intellectual property cases to tailor injunctive relief, survey evidence showing only weakly-held mistaken beliefs may provide courts with the opportunity to fashion more limited forms of relief short of an outright injunction. As a theoretical matter, we explain how trademark survey formats that reveal the true extent of consumer uncertainty in the marketplace may finally force trademark law and policy to confront normative questions it has long left unanswered going to exactly what kind of harm trademark law is meant to forestall.

 

Read comments and post your comment here.

TTABlogger comment: Once again, the empirical strikes back.

Text Copyright John L. Welch 2021.

Friday, June 04, 2021

Catch-all Thirteenth DuPont Factor Saves HANA BANCORP & Design from Section 2(d) Refusal

The Board reversed a Section 2(d) refusal to register the mark HANA BANCORP & Design (shown first below) for various business, financial, and banking services [BANCORP disclaimed], finding no likelihood of confusion with the registered mark HANA FINANCIAL & Design (shown second below) for financial services [FINANCIAL disclaimed]. Although the first, second and third DuPont factors weighed in favor of a finding that confusion is likely, the catch-all thirteen DuPont factor was dispositive. In re Hana Financial Group Inc., Serial No. 86019890 (June 2, 2021) [not precedential (Opinion by Judge Jonathan Hudis).

The thirteenth DuPont factor allows for consideration of "any other established fact probative of the effect of use." DuPont, 177 USPQ at 567. Applicant argued that its mark HANA BANCORP & Design is nearly identical to the marks shown in four federal registrations that it claimed to own, including the mark HANA BANK & Design for "banking" and HANA GROUP & Design for business management services:

The Board noted that these registration are owned by Hana Bank, but since Hana Bank is a wholly-owned subsidiary of Hana Financial Group, Inc., applicant may rely on them for purposes of the 13th DuPont factor.

The Board looked to In re Strategic Partners, Inc., 102 USPQ2d 1397, 1399-1400 (TTAB 2012) [TTABlogged here] for guidance. Strategic Partners (involving the mark ANYWEAR (stylized) and a prior registration for ANYWEARS (standard characters) for footwear) set out the following non-exclusive factors to be considered with regard to the significance of a prior registration owned by an applicant:

  • There is no “meaningful difference” between the marks in applicant’s prior registration and its present application – that is, there is no material difference between the marks;
  • The services are at least in-part identical; and 
  • Both the applicant’s prior registration and the cited registration are more than five years old and thus immune from attack on likelihood of confusion grounds.


Here, the Board found no "meaningful difference" between the proposed mark and the two registered marks, and it further found the services to be identical or closely related. Although the HANA GROUP and Design registration and the cited HANA FINANCIAL and Design registration have coexisted for only 2-½ years, that was but one fact to be considered.

We find, under the circumstances of this case, where (1) a prior registration, for a mark with no material difference from Applicant’s pending mark, existed in excess of five years for identical and related services; and (2) the younger prior registration, again for a mark with no material difference from Applicant’s pending mark, existed in excess of two years for identical and related services, the thirteenth DuPont factor overcomes the other DuPont factors that otherwise might support a finding that confusion is likely.


And so, the Board reversed the refusal.

Read comments and post your comment here.

TTABlogger comment: Seems to open the door to registration a bit more than Strategic Partners did.

Text Copyright John L. Welch 2021.

Thursday, June 03, 2021

California Lawyers Association Webinar June 15: "Trademark Cases To Remember From A Year To Forget"

The IP Section of the California Lawyers Association (f/k/a the California Bar Assn.) will host a webinar on June 15th from 1:00 PM to 2:30 PM (Pacific Standard Time), entitled "Trademark Cases To Remember From A Year To Forget." Martin B. "Marty" Schwimmer and Yours Truly will share the spotlight in what we hope to be an informative and entertaining presentation. CLE credit is available. Details and registration here.

The TTAB is where the rubber hits the road in terms of trademark registrability. Speakers shall peruse a formidable pile of failure-to-function cases that have made the trademark practitioner’s journey more problematical. The TTAB’s latest surname decision raised the bar to registration, and it decisions on Section 2(e)(5) functionality continue to trip up would-be registrants of product configurations. Speakers will address SCOTUS’ Lexmark decision on “standing,” and the TTAB’s consideration as to whether a plaintiff is “entitled to bring a cause of action.”

Turning to the contours of trademark enforceability, the speakers will discuss SCOTUS’ decision in the genericness case involving the mark BOOKING.COM and the Tiffany v. Costco lawsuit involving Costco’s use of the term “Tiffany Setting,” and will consider how functionality limits the protection of product configuration, including protection of Gorilla Glue blister packs, the POCKY-brand chocolate cookie sticks, and a rainbow of adhesives in a dental adhesive gun.

The speakers will review appellate cases targeting the RedBubble online marketplace and the issue of intermediate liability, parody and free speech, as it relates to the BAD SPANIELS dog toy case, and the recent Nike “Satan Shoes” dispute.


Read comments and post your comment here.

Text Copyright John L. Welch 2021.

TTABlog Test: Is "SOUND ART CREATION NASH STUDIO" Primarily Merely a Surname?

The USPTO refused to register the proposed mark SOUND ART CREATION NASH STUDIO, in standard character form, for applicant’s music production services, audio or video studio services, non-downloadable music and sound effects, and related goods and services, deeming the mark to be primarily merely a surname under Section 2(e)(4). Applicant argued that ‘NASH’ as a surname "represents only 0.0375% of the surnames in this country,” making it a “relatively rare surname in the United States.” It further contended that that the wording “sound art creation” is “a dissonant amalgamation of disparate noun concepts” and is suggestive and not descriptive. How do you think this appeal came out? In re Nash Studio Inc., Serial No. 79284379 (May 27, 2021) [not precedential] (Opinion by Judge Cheryl S. Goodman).


Surname?: The examining attorney submitted LEXISNEXIS evidence showing "NASH" appearing 124,244 times as a surname, Wikipedia evidence identifying NASH as a surname of “Irish, English, Welsh or Jewish origin,” and Wikipedia pages providing a list of “notable people” with the surname NASH, including Johnny Nash, an American singer and songwriter, American poet Ogden Nash, Joe Nash, a former NFL professional football player, Steve Nash, a former professional basketball player  (and currently coach of the Brooklyn Nets), and singer-songwriter Graham Nash. So-called "negative dictionary evidence" indicated that NASH that does not identify any ordinary language meaning for the term.

As to applicant's argument regarding rareness, the Board observed that “[t]he issue to be determined under the statute is whether the public would perceive the surname significance as the mark’s primary significance, not whether the surname is rarely encountered.”

It is reasonable to conclude from the nationwide telephone database and Wikipeda evidence of “notable persons,” that NASH has had measurable public exposure as a surname and would be perceived as such.

Applicant maintained that a search of “Nash” in Wikipedia shows many other meanings for “Nash” than a surname, including the nickname of Nashville, Tennessee, which applicant claimed to be the primary significance to the purchasing public. The Board pointed out, however, that applicant failed to make this evidence of record, and it refused to take judicial notice of a Wikipedia entry.

In sum, the Board found that NASH "is an actual, relatively common surname and that no other meaning exists," and it concluded that the primary significance of NASH to the purchasing public is primarily merely that of a surname.

Additional Wording?: The next issue was whether the proposed mark as a whole primarily signifies a surname to relevant consumers. Dictionary definitions and website evidence convinced the Board that "studio" describes applicant's goods and services and that "sound art creation" is a descriptive term of art in the field. 

The next question was "whether the addition of the wording SOUND ART CREATION and STUDIO detracts from or displaces the surname significance of the name NASH in the mark SOUND ART CREATION NASH STUDIO." The Board was unconvinced by applicant's argument that SOUND ART CREATION NASH STUDIO "will be viewed by consumers as suggestive of its music related goods and services and that NASH evokes either a 'coined term' or 'an ambiguous place-name, given the lack of contextual use as a surname.'"

Taken together, the primary significance of the mark SOUND ART CREATION NASH STUDIO is that the goods and services feature sound art creation and are provided by or offered through a studio connected to a person named NASH. Indeed, SOUND ART CREATION happens in the NASH STUDIO. There is nothing in the combination of SOUND ART CREATION NASH STUDIO that diminishes or transforms this immediate connotation.|

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: Will applicant seek review in a district court, where it can add evidence? Would you?  

Text Copyright John L. Welch 2021.

Wednesday, June 02, 2021

TTAB Posts June 2021 (Video) Oral Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled six (6) oral hearings for the month of June 2021. The hearings will be held via video conference. Briefs and other papers for each case may be found at TTABVUE via the links provided.



June 1, 2021 - 1  PM:
Gang Cao v. Apple Inc., Opposition No. 91239006 [Opposition to registration of LIVE PHOTOS for "Computer software for recording and displaying images, video and sound" on the grounds of genericness and mere descriptiveness.]


June 2, 2021 - 1 PM: STX Financing, LLC v. Stacey Michelle Terrazas, Opposition No. 91240829 [Opposition to registration of the marks BAD MOMS UNLIMITED and BAD MOMS BIBLE for audio books, printed matter, clothing, and charitable foundation services, on the ground of lack of bona fide intent, and likelihood of confusion and dilution of opposer's allegedly famous BAD MOMS mark for various goods and services.]


June 3, 2021 - 12 PM: Talis Clinical, LLC v. Talis Biomedical Corporation, Opposition No. 91245179 [Section 2(d) opposition to registration of TALIS for "Medical analysis services in the nature of analyzing clinical data for purposes of providing medical diagnostic information and for guiding patient treatment for overall population health and improved patient outcomes," on the ground of likelihood of confusion with the identical common law mark for "Medical software for collecting, organizing, and analyzing patient data, and providing clinical guidance, and monitoring and support services in the fields of selection, implementation, and operation of hardware, software systems and secure data storage and access."]


June 9, 2021 - 2 PM: In re Wave Neuroscience, Inc., Serial No. 88796115 [Section 2(e)(1) mere descriptiveness refusal of WAVE NEUROSCIENCE for for goods and services in International Classes 009, 010, 042 and 044, all related to the analysis of neurological disorders and brainwave activity.]

 

June 16, 2021 - 11 AM: In re Cellular Sales Management Group,LLC, Serial No. 88470232 [Requirement for disclaimer of CELLULAR SALES in the mark shown below, for "online and physical retail store services in the field of cell phones, electronic tablets and accessories for cell phones and tablets."]


June 22, 2021 - 2 PM: Robert W. Beissel III v. Havana Sun, LLC, Cancellation No. 92068415 [Petition for cancellation of a registration for HAVANA SUN for suntan lotions; sun block; sun screen; and other suncare products, on the ground of likelihood of confusion with the registered mark HAVANA TAN for suncare products, along with a counterclaim for abandonment.]


Read comments and post your comment
here.

TTABlog comment: Since TTAB hearings are supposed to be public, shouldn't these video hearings be available for everyone to (at least) hear?

Text Copyright John L. Welch 2021.

Tuesday, June 01, 2021

Precedential No. 13: TTAB Affirms Section 2(d) Refusal of NBA Star Joel Embiid's "TRUST THE PROCESS" For Shoes

Is TRUST THE PROCESS for shoes confusable with TRUST THE PROCESS for clothing? You betcha! Joel Embiid of the NBA's Philadelphia 76ers was blocked in his attempt to register TRUST THE PROCESS for shoes, the Board affirming a Section 2(d) likelihood of confusion refusal based on the identical mark registered for shirts and sweatshirts (and owned by television host Marcus Lemonis). Mr. Embiid tried various moves to overcome the refusal but the Board, in a typically well-written opinion by Judge Larkin, shut down every one of them. In re Joel Embiid, 2021 USPQ2d 577 (TTAB 2021) [precedential[ (Opinion by Judge Christopher Larkin).

Joel Embiid

Those who follow NBA basketball know that "the process" was a term created several years ago to refer to the plan of the Philadelphia 76ers to rebuild their roster into a winning combination after years of NBA misery. One aspect of the process in its early stage was to lose as many games as possible in order to garner high draft picks in the annual NBA player draft. Fans of the team indicated that they would "trust the process." Joel Embiid is perhaps the key component of the rejuvenated team, and he is known individually as "The Process."

Marcus Lemonis is the host of the CNBC program “The Profit,” and is known for the mantra “People/Process/Product.”

Marcus Lemonis

Although the involved marks are identical, Mr. Embiid contended that the marks engender different commercial impressions: i.e., his mark TRUST THE PROCESS is uniquely associated with him when used in connection with shoes, while the cited mark TRUST THE PROCESS is uniquely associated with Marcus Lemonis when used in connection with shirts and sweat shirts.

The Board agreed with Examining Attorney Lindsey H. Ben that the Federal Circuit’s decision in i.am.symbolic is "analogous and instructive in our consideration of Applicant’s evidence of fame outside the four corners of his application and the cited registration."

[T]here is nothing in Applicant’s identification of “shoes” that would change the meaning of the mark as referring to Applicant in the context of the goods, and nothing in Registrant’s identification of “Clothing, namely, shirts and sweat shirts” that would change the meaning of the mark as referring to Marcus Lemonis, or the television program The Profit that he hosts, in the context of the goods as identified. *** There is nothing on the face of Applicant's mark, such as his image or signature, which ties the mark to him, and nothing in the record that in the context of shoes, TRUST THE PROCESS would necessarily mean Applicant.

 The undisputed fact that Mr. Embiid may be known by the nickname "The Process" does not establish that the public knows him by another nickname, even if the nicknames contain common elements.

In the final analysis, even if both Applicant and Mr. Lemonis were known in their respective professions as “Trust the Process,” the record does not show that consumers would associate the mark TRUST THE PROCESS only with them for the respective non-souvenir general consumer goods identified in the cited registration and the application, or that consumers would differentiate the source of the non-souvenir consumer goods sold under the two TRUST THE PROCESS marks based on their respective owners.


The Board therefore found that the involved marks “are identical in appearance, sound, connotation, and commercial impression,” In re Country Oven, 2019 USPQ2d 443903, at *3 (TTAB 2019), and so the first DuPont factor "'weighs heavily' in favor of a likelihood of confusion." i.am.symbolic, 123 USPQ2d at 1748 (quoting In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003).

With respect to the goods, the Board again agreed with the Examining Attorney that because there are no restrictions in the identification of goods in either the application or the cited registration, it is impermissible to “import restrictions into the identification[s] based on alleged real world conditions,” New Era Cap Co. v. Pro Era, LLC, 2020 USPQ2d 10596, at *16 (TTAB 2020) (citing Stone Lion, 110 USPQ2d at 1162), or to consider extrinsic evidence regarding Mr. Embiid and Mr. Lemonis themselves.

The Board unsurprisingly found that shoes and shirts are sold together on the websites of clothing companies, and are found together in numerous registrations. Moreover, the channels of trade and classes of customers plainly overlap.

In an attempt to show the weakness of the cited mark, Mr. Embiid submitted, "at most," evidence of three third-party registrations and no evidence of third-party use of PROCESS-formative marks for clothing, “a far cry from the large quantum of evidence of third-party use and third-party registrations that was held to be significant in both Jack Wolfskin and Juice Generation." Inn at St. John’s, 126 USPQ2d at 1746. The Board therefore found that the cited mark is not conceptually weak and is to be accorded "the normal scope of protection."

Finally, under the 13th catch-all DuPont factor, Mr. Embiid pointed to his ownership of a registration for THE PROCESS for various clothing items, relying on the Board's Strategic Partners decision (ANYWEARS (Stylized) registrable in view of existing registration for ANYWEAR for identical goods). The Board, however, readily distinguished that case, noting that here "there are meaningful differences between Applicant’s registered mark THE PROCESS mark and his applied-for mark TRUST THE PROCESS, and Applicant’s mark THE PROCESS has been registered for fewer than five years and accordingly 'may still be challenged in a cancellation proceeding under Section 2(d).' Country Oven, 2019 USPQ2d 443903, at *18."

In sum, the Board found that the first, second, and third DuPont factors supported a finding of a likelihood of confusion, and the fourth, sixth, eighth, and thirteenth factors were neutral. Concluding that confusion as to source is likely, the Board affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlogger comment: For Mr. Embiid, "The Process" didn't work this time.

Text Copyright John L. Welch 2021.

Friday, May 28, 2021

Llama Design Mark Fails to Function as a Trademark for Video Game Software, Says TTAB

The Board affirmed a refusal to register the design mark shown below for "downloadable video game software" on the ground that it fails to function as a trademark under Llanham Act Sections 1, 2, and 45. The mark comprises "a fanciful cartoonish image of a llama with the design of a treasure chest on the side portion of its saddle." The Board agreed with Examining Attorney Lleslie I. Richards that Applicant Epics's only specimen did not show use of the design as a source indicator. In re Epic Games, Inc., Serial No. 88233723 (May 26, 2021) [not precedential] (Opinion by Judge Albert Zervas). 

According to Epic, it introduced the llama item into its Fortnite video game in March 2018. The llama item is known to players, streamers, and fans as the "Loot Llama,” “Supply Llama,” or just “the Llama.” In game play, the Llama item serves a function familiar to many players (e.g., a resource cache), but is portrayed in a unique and unusual way. A player opens the llama item by pressing on the hand symbol. When opened, the llama disappears completely and the objects within fall to the ground, along with confetti. 

The examining attorney argued that the llama appears only as a character in the game, not as a source identifier. "[t]he only specimen showing the entire proposed mark appears to be under the ‘NEWS’ tab on applicant’s website, which appears to provide information or news about applicant’s goods. On that specimen, the mark merely floats around the background of the screen multiple times as a character appearing in the game." 

Epic disagreed that the llama is a character in its game. “[t]he Llama does not move, speak, or otherwise interact in any way with players or other objects. The Llama has no personality because it is an inanimate object within Fortnite. Lacking any personality, Applicant’s Llama simply does not meet the definition of the word 'character.'"


In Epic's specimens of use, only the "V3.3 Patch Notes webpage" (above) shows the mark intact and in its entirety.

The repetition of the llama on the specimen in varying sizes, portions and vividity detracts from Applicant’s claim that the single llama depicted in its drawing would be recognized as its mark. In addition, consumers considering the source of the webpage can look to the term FORTNITE which appears at the top left portion of the specimen. We thus find that the applied-for mark displayed on the V3.3 Patch Notes webpage is not used in a manner showing trademark use and does not function as a mark. 

 

The testimony of Epic's witness and the screenshots displayed in his declaration did not persuade the Board that consumers encountering llama design as depicted on the V3.3 Patch Notes specimen would perceive it as an indicator of source.

First, the applied-for design is not depicted in the first image; the saddlebag on the home screen differs from that on the drawing page. Second, the llama in the loading screen appears in what seems to be a scene from the video game and is not used in a manner to indicate source. Third, there is no claim of trademark rights through the designation “TM.” 


Epic argued that its evidence showed that the llama design had achieved acquired distinctiveness, but the Board observed that this was beside the point:

Applicant submitted a webpage as a specimen of use for “downloadable video game software,” and hence must meet the requirements for demonstrating that the webpage demonstrates use of the proposed mark as a source indicator for such goods. Its specimens of use do not show use of the llama as a mark to demonstrate that it functions as a source indicator for such goods.

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: The refusal did not apply to Epic's class 41 “entertainment services, namely, providing online video games," so this was not a total lloss for Epic. As to class 9, perhaps Epic may try again with better specimens of use?

Text Copyright John L. Welch 2021.