Griff Thomas Reports On "Drain Cap" TTAB Oral Hearing

R. Griffith "Griff" Thomas, Editor-in-Chief of Allen’s Trademark Digest, has filed the following report regarding the recent TTAB oral hearing in In re WCM Industries, Inc.

On Tuesday, January 14, 2020, the Board conducted a live oral hearing at the United States Patent and Trademark Office in the East Wing of the Madison Building, in Alexandria, Virginia. The TTAB heard arguments in In re WCM Industries, Inc, S.N. 87555014, involving WCM Industries, Inc.’s (WCM) application to register a three-dimensional product configuration of a bathtub overflow drain cap for “Plumbing products, namely, a bathtub overflow drain cap” in International Class 11.

Trademark Examining Attorney Heather A. Sales had refused registration under Trademark Act Section 2(e)(5) because the mark was found to be functional, and also under Sections 1, 2, and 45 because the product design was nondistinctive. WCM Section 2(f) evidence of acquired distinctiveness was found insufficient. The parties’ briefs and other papers may be found HERE.

The two issues argued on appeal were: (1) Whether the applied-for mark, a three-dimensional product configuration for the identified goods, is de jure functional under Section 2(e)(5) of the Lanham Act; and (2) Whether WCM’s submitted evidence, declarations and advertisements were sufficient to show acquired distinctiveness under Section 2(f).

The TTAB Panel consisted of Judges Karen S. Kuhlke, Robert H. Coggins, and Thomas Wellington.

Scott W. Johnston, Merchant & Gould PC, argued for WCM Industries, Inc. and Heather A. Sales for the Trademark Examining Office. The Board allowed each side 20 minutes to present its case. WCM reserved four minutes for rebuttal.

The Judges seemed content to let WCM’s counsel get through his argument before starting in with questions. During WCM’s opening argument, the Board confirmed that relevant consumers included plumbers and average residential buyers. The Board asked a number of questions about why the portions of the drain cap and opening were not delineated by appropriate solid and dotted lines to indicate the portions that are not claimed. WCM argued that nothing in its utility patents indicates that the shape of the drain hole is essential, makes the drain work better, or is more desirable. WCM relied on the Board’s non-precedential decision in In re 3M Company, S. Nos. 77701886 and 77701928 (May 10, 2012), to support its position. In that case, the Board reversed a Section 2(e)(5) refusal of the configuration of a hand sanitizing container shown below. [TTABlogged here].

Examining Attorney Sales argued that the subject design is functional because, as shown by WCM’s utility patents, the design made the product better (U.S. Patent No. 0079654 Device for Concealing a Plate Associated with Overflow Plumbing) and provides cost saving to manufacture (U.S. Patent Pub. No. US 2018/0044899 Device for Providing Improved Drainage). Moreover, WCM’s advertising supported the functionality refusal.

Turning to acquired distinctiveness, WCM argued that its extensive use, massive sales, and significant advertising, and a multitude of customer and industry declarations proved that WCM’s mark has acquired distinctiveness and serves to identify the source of WCM’s overflow cap.

The Board quizzed both sides about the more than 100 declaration statements submitted by WCM and completed by manufacture representatives and other plumbing industry consumers, asserting recognition of the mark as source indicator. WCM contended that the declarations constitute overwhelmingly persuasive evidence regarding acquired distinctiveness. WCM was questioned about potential bias, while the Examining Attorney was challenged about the claim that the statements were just fill-in-the blank forms. WCM insisted the numerous declarants had no direct communication or business relationship with WCM and were not biased. Examining Attorney Sales agreed that the surveys were not just fill-in-the-blank forms. Finally, Applicant WCM argued that the drain has been in use for 19 years and has been seen and recognized a huge number of times by tub users, and thus has acquired distinctiveness

The Board asked many more questions of WCM and the panel seemed split, with one judge agreeing with Applicant WCM, one agreeing with the USPTO, and the third undecided. It will be interesting to see whether WCM’s application will go down the TTAB drain or whether the appeal will hold water.

Read comments and post your comment here.

TTABlog comment:

Text Copyright John L. Welch and R. Griffith Thomas 2020.

TTABlog Test: Which One of These Three Section 2(d) Refusals Was Reversed?

A (currently serving) TTAB Administrative Trademark Judge once said to me that one can predict the outcome of a Section 2(d) appeal 95% of the time just by looking at the marks and the involved goods or services. Here are three recent decisions in appeals from Section 2(d) refusals. One refusal was reversed? How do you think these came out? [Answers in first comment].

In re Hidive LLC, Serial No. 87819793 (January 24, 2020) [not precedential] (Opinion by Judge Christen M. English). [Section 2(d) refusal of DUBCAST for "Transmission and delivery of television programs via the internet; Transmission of information in the audiovisual field; Electronic transmission and streaming of digital media content for others via global and local computer networks; Video broadcasting and transmission services via the Internet, featuring films and movies; Video-on-demand transmission services; Video-on-demand transmission services via the Internet," in view of the registered mark DUBLAB (in standard form) for "broadcasting programs via a global computer network"].

In re Marathon Tours, Inc., Serial No. 86086458 (January 23, 2020) [not precedential] (Opinion by Judge Lorelei Ritchie) [Section 2(d) refusal of ANTARCTICA MARATHON for "Travel services, namely, organizing and arranging travel, travel tours, excursions, and sightseeing travel tours; providing travel guide and travel information services; making transport reservation," and "Travel services, namely, making hotel reservations for others," in view of the registered mark ANTARCTIC ICE MARATHON & 100K and Design (shown below) for “Athletic and sports event services, namely, arranging, organizing, operating and conducting marathon races" [ANTARCTIC ICE MARATHON & 100K” and the geographic representation of Antarctica disclaimed].

In re KC Investment Inc., Serial No. 87897588 (January 16, 2020) [not precedential] (Opinion by Deputy Chief Judge Mark A. Thurmon).[Section 2(d) refusal of DADDY GANG for various clothing items, in view of the registered mark GOOD DAD GANG for overlapping clothing items].

Read comments and post your comment here.

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

Text Copyright John L. Welch 2020.

Two New Judges Appointed to Trademark Trial and Appeal Board

Chief Judge Rogers has announced that two new Administrative Trademark Judges have been appointed to serve on the Trademark Trial and Appeal Board. They will commence their duties on February 3, 2020. By my count, this brings the total number of judges to 27, including Chief Judge  Rogers and Deputy Chief Judge Mark Thurmon.

Melanye K. Johnson comes to the Board from her post as Senior Counsel, Office of General Counsel at the U.S. Department of Health and Human Services (HHS). She was in that position for the last 10 years and was the lead attorney for trademark matters. In that position, Judge Johnson was responsible for domestic and foreign trademark applications and registrations for the National Institutes of Health and other HHS operating and staff divisions. Prior to entering public service, Judge Johnson was a Senior Counsel at E.I. du Pont de Nemours and Company for six years. In that position, she served in the company’s 20-person trademark and copyright practice group. She was responsible for prosecuting applications to register marks, for litigation matters, for matters pending before the TTAB, and for licensing and settling disputes. Judge Johnson was one of two principal architects of the company’s Brand Protection Center created to combat counterfeiting of company products, and collaborated with peer companies, U.S. Customs and Border Protection and the International Anti-Counterfeiting Coalition. Judge Johnson’s career in IP law began over 20 years ago. She has held positions in private practice and completed a Judicial Clerkship at the U.S. Court of Appeals for the Sixth Circuit. She is an honors graduate of the University of Michigan and earned her law degree from the Ohio State University Moritz College of Law.

Mark Lebow comes to the Board from his position as a partner with the IP firm of Ladas & Parry. He was the founding partner of the New York-based firm’s office in Alexandria, Virginia. Previously, he was a partner in the Alexandria IP law firm of Young & Thompson. Between the two, Judge Lebow spent approximately 20 years managing domestic and international trademark matters for many clients. His practices involved prosecution of applications to register marks, TTAB trial proceedings, infringement litigation and handling of domain name disputes. Before settling into his career as an IP attorney, Judge Lebow defended and prosecuted criminal cases, but switched to civil matters after earning an LL.M. from the John Marshall Law School in Chicago, with high honors. His career as a civil attorney included negotiation of technology and licensing agreements and representation of both foreign and domestic parties. Most recently, Judge Lebow was a member of the INTA Trademark Office Practices Committee (US subcommittee). He is a graduate of Florida Atlantic University and earned his J.D. from Hofstra University School of Law.

Read comments and post your comment here.

Text Copyright John L. Welch 2020.

DENIM & CO. Is Deceptive for Non-Denim Clothing, Says TTAB Panel Majority

A divided Board panel affirmed two refusals to register the standard character mark DENIM & CO. for various clothing items made of materials other than denim, on the grounds of deceptiveness under Section 2(a) and, alternatively, deceptive misdescriptiveness under Section 2(e)(1).  In re QVC, Inc., Serial No. 86670074 (January 21, 2020) [not precedential] (Majority opinion by Judge Cynthia C. Lynch; dissent by Judge Marc A. Bergsman).

Deceptiveness: A mark is deceptive under Section 2(a) if:

1. it consists of or comprises a term that misdescribes the character, quality, function, composition, or use of the goods;
2. prospective purchasers are likely to believe that the misdescription actually describes the goods; and
3. the misdescription is likely to affect the purchasing decision of a significant or substantial portion of relevant consumers.

The panel majority (Judge Lynch and Judge David Mermelstein) found that DENIM & CO. misdescribes the goods. Applicant QVC contended that DENIM refers not to the material content of the goods but to a "comfortable, casual and relaxed lifestyle." The Board didn't buy it. It found that, considering the mark as a whole, DENIM refers to the fabric. QVC's evidence that it refers to a lifestyle was "minimal and unpersuasive," and was "dwarfed by overwhelming evidence" of use of DENIM to refer to the fabric from which denim clothing is made.

QVC did not argue that the addition of "& CO." to DENIM changed the connotation of the mark, but since the dissenting opinion made that point, the panel majority addressed it. It found that CO. is an abbreviation for "company," and that the mark "gives the impression of a business enterprise connected with denim fabric."

The panel majority next found that the misrepresentation was believable. QVC contended that the following limitation in the identification of goods prevents consumers from believing the misdescription:

… sold through interactive television and interactive online media wherein the clothing products offered for sale are modeled and whereby detailed information regarding such clothing products is provided including information as to the fabrics and materials from which such clothing products are made.

The majority, however, found this language ineffective to foreclose deceptiveness. The definition of "interactive" could include any television show or website that allows a consumer to order merchandise. The fact that the clothing is "modeled" does not prevent a consumer from believing the misdescription. Similar arguments about fabric content disclosure have been made and rejected in prior cases. Even as to interactive channels of trade, consumers may focus on the DENIM & CO. mark without paying attention to the fabric content disclosure. Moreover, evidence of QVC's advertising showed no fabric content disclosures, or disclosures that were ambiguous.

As to the third prong of the test, consumers desire denim clothing because it is strong and durable, easy to clean, and comfortable. QVC touts some of the advantages of denim at its website. The Board was therefore convinced that "whether clothing is denim is material to the purchasing decision of a significant portion of the relevant consumers."

All three prongs of the Section 2(a) test having been met, the Board affirmed the deceptiveness refusal.

Deceptive Misdescriptiveness: In the interest of completeness, the Board also considered the Section 2(e)(1) refusal, despite the fact that its Section 2(a) deceptiveness finding is an absolute bar to registration. Since the two prongs of the Section 2(e)(1) test are the same as the first two prongs of the Section 2(a) test, the Board found the mark to be deceptively misdescriptive, and it therefore affirmed the alternative requirement of a disclaimer of DENIM.

Dissenting Opinion: Judge Bergsman maintained that DENIM & CO. has a meaning and engenders a commercial impression that is not deceptive: denim and other materials. Furthermore, the majority failed to give proper weight to the explanatory information in the identification of goods, which makes it clear that the clothing products are not made of denim. The apparel includes "detailed information regarding ... the fabrics and materials from which such clothing products are made."

Judge Bergsman opined that, based on QVC's long and successful use of the mark, consumers are likely to regard DENIM & CO. as "identifying all clothing Applicant sells and not [likely to] believe the mark refers only to clothing made of denim."

Read comments and post your comment here.

TTABlog comment: Nothing in the identification of goods requires that the consumer pay attention to the detailed information. Maybe QVC should say "sold only to consumers who do not think the goods contain denim?"

PS: I expect this one to be appealed, don't you?

Text Copyright John L. Welch 2020.

LIBERTY BANKERS LIFE INSURANCE COMPANY Not Confusable With BANKERS LIFE, Says TTAB

Despite partly identical services and overlapping customers and channels of trade, the Board dismissed this opposition to registration of the two word+design marks shown below, for "underwriting and administration of life insurance, health insurance, and annuities," finding the marks not likely to cause confusion with the registered mark BANKERS LIFE for "insurance underwriting services." Purchaser sophistication, lack of actual confusion, and the differences between the marks proved fatal to the opposition. CDOC, Inc. v. Liberty Bankers Life Insurance Company and The Capitol Life Insurance Company, Oppositions Nos. 91236945 and 91237330 (January 16, 2020) [not precedential] (Opionion by Judge Marc A. Bergsman).

Purchasing Conditions: The Board found that, in view of "the nature of the services and the personalized nature of the parties' marketing efforts," purchasers of the parties' insurance and annuity products will exercise a relatively high degree of purchasing care. "These type of services are not the kind that reasonably prudent purchasers buy without researching the underwriters to some degree." And so the Board found that this factor weighed in favor of applicant.

No Actual Confusion: The lack of any evidence of actual confusion also weighed in applicant's favor:

Since 2007, the parties have been selling the same services to the same target demographic (i.e., Americans at or near retirement age, as well as those already in retirement). Both parties, especially Opposer, are well known and well regarded in the financial services industry. Under these circumstances, not one of the 15,000 agents selling insurance for the parties have reported one instance of actual confusion. 

Strength of Opposer's Mark: Evidence of third-party use and registration of marks containing the word BANKER led the Board to conclude that opposer's mark is suggestive but inherently protectable. In light of extensive advertising and promotional efforts and media references, the Board found the mark to be commercially strong. It concluded that, "[a]lthough BANKERS LIFE is suggestive, the commercial strength of the mark places it on the strong side of the spectrum especially without a significant showing of third-party use or registration of the term 'Bankers Life.'"

The Marks: The Board deemed the phrase LIBERTY BANKERS LIFE to be the dominant element of applicant's marks, given its position as the leading part of the literal portion of the marks. Moreover, the large American flag design reinforces or highlights the word “Liberty” by implying financial freedom or freedom from a financial problem. The evidence showed that applicant's marks are sometimes shortened to LIBERTY BANKERS LIFE, but not BANKERS LIFE.

Even though the parties’ marks all contain the term “Bankers Life,” Applicants’ additions of the word “Liberty” and the stylized design of the American flag create marks that are sufficiently distinct from Opposer’s mark BANKERS LIFE because, as discussed above, the term “Bankers Life” is suggestive.

Conclusion: Finding confusion unlikely, the Board dismissed the oppositions.

Read comments and post your comment here.

TTABlog comment: What about the least sophisticated purchaser? This sophisticated purchaser factor seems often to be a make-weight, with the Board either giving it favorable weight when it wants to find confusion likely, or pooh-poohing it on the ground that even sophisticated purchasers can be confused by similar marks for similar goods/services.

PS: Compare this decision with the recent one finding ACCELETERM confusable with LINCOLN TERMACCEL for insurance services [TTABlogged here]. Are they reconcilable?

Text Copyright John L. Welch 2020.

TTABlog Test: Is MAGNUS Primarily Merely a Surname for Whiskey?

The USPTO refused to register the mark MAGNUS for "whiskey, gin and distilled spirits," finding the mark to be primarily merely a surname under Section 2(e)(4). Examining Attorney Kevin G. Crennan relied on search results showing thousands of individuals with the surname MAGNUS, and on evidence of applicant's promotion of its connection to Joseph Magnus, an historical distiller. Applicant pointed to twelve existing registrations for the word MAGNUS that were not refused registration under Section 2(e)(4). How do you think this came out? In re Jos. A. Magnus & Co., LLC, Serial No. 87618554 (January 15, 2020) [not precedential] (Opinion by Judge Thomas W. Wellington).

Results from three searches turned up several thousand individuals with the surname MAGNUS. The Board found that this evidence "shows that the relevant public has some exposure to MAGNUS as a surname."

Applicant argued that Joseph Magnus is a "past figure" and not a founder of the company, and that no person named MAGNUS is or has been involved in the business. The Board was unmoved:

We find it significant that Applicant has made and continues to prominently make a connection with a person having the surname MAGNUS. Applicant touts this connection directly in its communications with relevant consumers. Applicant’s actions and the actual name of its company clearly reinforce the surname significance of MAGNUS .

The Board found "no meaningful difference between Applicant’s promotion of a connection with a person having the surname MAGNUS and other cases where we held that a party’s promotion of its founder having the surname as establishing public exposure to that surname."

Moreover, there was no evidence that Joseph Magnus had any notoriety with consumers (other than possibly through Applicant’s promotion), let alone the level of fame that has been found to overcome surname refusals in "historical figure" cases (e.g., SOUSA and DAVINCI).

As to non-surname meanings of MAGNUS, the Examining Attorney maintained that "magnus" has no recognized meaning other than as a surname. Applicant pointed to the Latin word "magnus," which means "great" in English. The Board, however, saw no evidence that this meaning "is well-recognized or would pertain to distilled spirits."

Applicant submitted copies of twelve live, third-party registrations for the standard character mark MAGNUS in connection with various goods and services. The Examining Attorney argued the each application must be examined on its own merits, and there was no showing that any of these twelve cases included "a fact pattern that is similar and significant to the instant refusal, namely, the Applicant’s use of MAGNUS as a surname on its website, in its marketing materials, and on its goods."

The Board agreed that each case must be decided on its own merits, and "without knowing more, or in fact anything, about the underlying facts and circumstances in those cases, we cannot say that the registrations demonstrate Office practice with respect to the surname significance of MAGNUS,"

Moreover, in this case, Applicant promotes a connection with an individual with the surname MAGNUS; the same may not have been true with the 12 third-party registrants. Without being privy to the prosecution records of those registration files, it is not possible to ascertain whether the examining attorneys determined that there was no connection between the registrants and individuals having the surname MAGNUS or if there was additional evidence that is not before us in this proceeding. In other words, the examining attorneys may have reached the determination that MAGNUS is not primarily merely a surname based on evidence not of record in this proceeding.

As to the structure and pronunciation of MAGNUS, the Board agreed with applicant that they may suggest a Latin word to some American consumers. However, the Board noted that this is "a fairly subjective matter and is certainly not conclusive that consumers encountering MAGNUS on Applicant’s goods would not perceive the term as a surname." The Board deemed this factor neutral.

Conclusion: The Board found that consumers will perceive MAGNUS as a surname "because Applicant strongly promotes a connection between itself and an individual having the surname MAGNUS." "This, in itself, is highly persuasive that the public would perceive [the mark] as a surname." In re Weiss Watch, 123 USPQ2d at 1202, quoting Darty, 225 USPQ at 653

Read comments and post your comment here.

TTABlog comment: Alternative meanings were the applicant's only hope. Would each of you who recognizes the Latin word "magnus" raise your manus?

Text Copyright John L. Welch 2020.

TTABlog Test: Is ORIGINAL GRAIN Merely Descriptive of Restaurant Services?

The USPTO refused registration of the mark ORIGINAL GRAIN in the form shown below, finding it to be merely descriptive of restaurant services. The Examining Attorney contended that "“the term original grain immediately informs consumers that the Applicant’s restaurant services feature fare made from or with original grains." Alternatively, she argued that ORIGINAL GRAIN would be perceived as puffery as applied to the Applicant’s restaurant services. How do you think this appeal came out? In re Original Grain, LLC, Serial No. 87511343 (January 23, 2020) [not precedential] (Opinion by Judge Christopher Larkin).

The Board has held that “a mark for restaurant services which comprises the generic name of a food which is the specialty of the house is merely descriptive of the restaurant services . . . .” The extensive evidentiary record included online articles regarding the offering of grains in restaurants as healthy, Internet webpages displaying various grain products, including grain bowls, and numerous articles from searches of the words “original grain," and applicant's own menu ("choice of original grains" to "build-a-bowl"). The Examining Attorney asserted that "Applicant’s restaurant features grains and original grains, including whole grain bread, multi-grain bread and toast, grain bowls and grain bases." Moreover, “[o]thers in the food and beverage industry also used the term ‘original grain’ to describe foods containing whole grains or unprocessed grains.”

Applicant put forth various arguments: that the phrase is incongruous, that it is a double entendre, that the Examining Attorney's evidence was vague and the asserted meaning of the phrase  "obscure and vague."

Not surprisingly, the Board found that the stylized lettering and the modest design elements of the subject mark do not materially impact its meaning, and so the Board focused on the literal portion.

The Board found that the word GRAIN "immediately and accurately describes a feature or characteristic of Applicant’s restaurant services, namely, that they include menu items containing the food group known as grains." As to the word ORIGINAL, the Board disagreed with the Examining Attorney:

[T]he attribution of this dictionary meaning to ORIGINAL as it appears in the proposed mark is unsupported by the record, most significantly Applicant’s promotional materials and menus. These materials do not communicate, as “puffery” or otherwise, that Applicant’s menu items involving grains are “prepared from the Applicant’s new or ‘original’ recipes for grains,” id., or are otherwise the “earliest” or the “first in time,” or new or unique to Applicant.

The Board concluded that the word ORIGINAL is not used by applicant "in the laudatory sense argued by the Examining Attorney on her second descriptiveness theory, and that the mark, as a whole, is not merely descriptive under that theory."

As to the Examining Attorney’s first theory, "we must determine what else, if anything, ORIGINAL means when it modifies GRAIN in the applied-for mark." The Board found the evidence "insufficient
to show that ORIGINAL GRAIN as used in connection with restaurant services would immediately, and with the required degree of particularity, be understood essentially as a synonym for 'whole grains' or 'unrefined grains.'" Furthermore, applicant’s use of the term “original grains” to identify base options in creating food bowls "do not communicate that whole grains or unrefined grains are the 'specialty of the house' or the 'principal attraction' of the ORIGINAL GRAIN restaurant.

Multiple reviews of applicant's restaurant supported the Board's conclusion that ORIGINAL GRAIN does not immediately describe the “specialty of the house” or the “principal attraction” of the restaurant. The reviews did not mention whole grains or refined grains

The record shows that ORIGINAL GRAIN may be suggestive of wholesome grain-based menu items or healthy eating based on the grains served at Applicant’s restaurant, but ORIGINAL GRAIN does not immediately describe, with the required degree of particularity, that menu items containing whole grains or unrefined grains are the “specialty of the house” or its “principal attraction.”

Acknowledging that any doubt as to descriptiveness must be resolved in favor of the applicant, the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlog comment: How did you do? The opinion is a primer on the basics of mere descriptiveness.

Text Copyright John L. Welch 2020.

TTABlog Test: Are Flavored Gelatins Related to Wine-Based Aperitifs?

The USPTO refused registration of the mark GEL-SHOTZ in the stylized form immediately below, for "flavored and sweetened gelatins,” finding confusion likely with the registered mark GEL SHOTS for "aperitifs with a wine base." The Board wasted little time in finding the marks to be similar, but what about the goods? Are they related for Section 2(d) purposes? How do you think this came out? In re Gel Shotz, Inc., Serial No. 87387430 (January 15, 2020) [not precedential] (Opinion by Judge Angela Lykos).

Applicant argued that the marks are "sufficiently distinct" because of the hyphen between GEL and SHOTZ, the spelling of "shotz" with the letter "z' instead of the letter "s,' and the stylized lettering. The Board disagreed, noting that the cited mark is registered in standard character format and could be displayed in a font identical to applicant's font, that the hyphen does not change the meaning of applicant's mark, and the pronunciation of the marks is presumably the same.

Applicant maintained that the goods are unrelated because its “[f]lavored and sweetened gelatins” are “boxes of gelatin-style desserts that can be used to mix with alcohol or without, and can be used in baking for flavoring pies, cupcakes and fondant” whereas Registrant’s goods consist of “one-liter bottles or gallon size jugs of wine based alcohol.”

The evidence submitted by Examining Attorney Jared M. Mason, however, showed that gelatins and wine-based aperitifs are "complementary products designed to be mixed together in the same recipes to make alcohol infused gelatin in a shot-sized serving." Applicant’s own website and packaging provides recipes for making flavored gelatin shots. "[I] is foreseeable that consumers of these types of goods may substitute other types of alcoholic beverages such as Registrant’s 'aperitifs with a wine base.'"

The Board concluded that the goods at issue are are complementary products that could be purchased and used together to make shot-sized alcohol infused gelatin.

As for channels of trade, the Board observed that in some states , wine and wine products are sold in grocery stores where gelatin is also sold." Thus the channels of trade and classes of consumers overlap.

Finally, the fact that applicant's predecessor owned a now-defunct registration for a "substantially similar" mark was of no moment, since "a cancelled or expired registration has no probative value other than to show that it once issued and it is not entitled to any of the statutory presumptions of Section 7(b) of the Trademark Act."

Balancing the relevant du Pont factors, the Board found confusion likely and it affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: I suspect that you got this one right. Is this a WYHA?

Text Copyright John L. Welch 2020.

TTAB Dismisses Appeal from Specimen Refusal Because Applicant Failed to Address the Refusal

The Board dismissed this appeal from a refusal to register the mark FINLISTICS CLIENTIQ for “Business development consulting services, namely, providing temporary use of non-downloadable software for analyzing, calculating, measuring, modeling, and forecasting business and financial performance,” because applicant failed to address the ground for refusal: an inadequate specimen of use. For the sake of completeness, the Board considered and agreed with Examining Attorney Crystal Yi's specimen refusal. In re Finlistics Solutions Corp., Serial No. 87722652 (January 7, 2020) [not precedential] (Opinion by Deputy Chief Judge Mark A. Thurmon).

(click on photo for larger picture)
The Board cited its recent ruling in In re Rainier Ent., 2019 USPQ2d 463361, *3 (TTAB 2019): "because Applicant failed to address the [specimen refusal] both before the Examining Attorney and in its appeal brief, dismissal of the appeal is appropriate."

As to the specimen refusal, applicant submitted the specimen shown above, which displays the FINLISTICS CLIENTIQ mark. However, "it is not clear what services are being promoted. There is a reference to delivery of 'facts, figures and forecasts to make a strong business case and show value throughout the buyer’s journey,' but that statement is too ambiguous to support the recitation ...."

[W]e read the application as referring to software used via the Internet to provide business consultation services that include the specific types of actions listed above. The specimen makes no direct mention of software for taking any of these actions, though it does suggest that at least some type of analysis will be performed. The specimen refers in only the most general way to the services identified in the application. That is not sufficient.

The Board deemed the specimen "too vague to constitute a valid service mark use in the advertising or promotion of the services." It further found that the specimen fails to show that the services were actually being rendered when the application was filed. "Advertising of services constitutes trademark use only if the services are being rendered at the time. Couture, 113 USPQ2d at 2044. The specimen fails to show whether any services were actually rendered on or before the filing date of the application, and therefore, it is insufficient to support this use-based application."

Read comments and post your comment here.

TTABlog comment: I think one would have to say that the discussion of the specimen issue was mere dictum. So of what value is nonprecedential dictum?

Text Copyright John L. Welch 2020.

TTAB Denies Cancellation Petition: SHUSTOV Registrant Overcame Prima Facie Case of Abandonment

Following an oral hearing on December 12, 2019, the Board denied a petition for cancellation of a registration for the mark SHUSTOV & Design (shown below) for various alcoholic beverages. Although petitioner GSH established a prima facie case of abandonment based on respondent's lack of use of the mark during the three-year period following registration, respondent successfully established its bona fide intent to commence use of the mark in commerce. GSH Trademarks Limited v. Sia"Baltmark Invest", Cancellation No. 92066594 (January 10, 2020) [not precedential] (Opinion by Judge George C. Pologeorgis).

Under Section 45 of the Lanham Act, a mark is deemed abandoned "When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment." Because a trademark registration is presumed valid (Section 7(b)), the party seeking its cancellation must rebut this presumption by a preponderance of the evidence.

If plaintiff can show three consecutive years of nonuse, it has established a prima facie showing of abandonment, creating a rebuttable presumption that the registrant has abandoned the mark without intent to resume use. The burden of production (i.e., going forward) then shifts to the respondent to produce evidence that it has either used the mark or that it has intended to resume use (e.g., a convincing demonstration of  "excusable non-use" that would negate any intent not to resume use of the mark). The burden of persuasion remains with the plaintiff to prove abandonment by a preponderance of the evidence.

Respondent's underlying application was filed under Section 66(a), and therefore it was not required to allege or declare use of its mark in commerce at the time of filing. However, once a registration issued from a Section 66(a) request for extension of protection, it is treated in the same way as any other registration (Section 69(b)), and the registrant must use the mark in commerce in order to avoid abandonment.

Here, the earliest date on which the three-year period could trigger the three-year statutory presumption of nonuse in this case was the registration date, i.e., March 24, 2014.

The Board found that petitioner had established a prima facie case of abandonment based on various Internet materials, including search results, that failed to show sales in commerce of respondent's goods under the subject mark during the three year period following issuance of the registration. Respondent did not provide any evidence that it did use the mark during that period.

In order to rebut petitioner's prima face case of abandonment, respondent was required to "produce evidence to establish its intent to begin use by showing 'special circumstances which excuse [its] nonuse.'" The Board noted that this is the same standard that is applied to determine whether a mark once in use has been abandoned.

To prove excusable nonuse, Respondent must produce evidence showing that, under its particular circumstances, its activities are those that a reasonable business, that had a bona fide intent to use the mark in United States commerce, would have undertaken.

Respondent's witness testified that within the three-year period, it entered into a license agreement with a New Jersey company to assist with the production, transport, importation, distribution, sales and marketing of the goods identified in the registration under the subject mark. In addition, respondent's importer filed a COLA labeling application, which was promptly approved.

Moreover, the evidence showed a continuing effort, after the three-year period, to commence use of the subject mark. A contract was entered for the sale of cognac. Shipping documents showed importation of product in November 2017. Another COLA labeling application was submitted in September 2017. The Board found that these actions "taken by Respondent and its agents within a relatively short time after the conclusion of the three-year statutory period of nonuse corroborate the existence of Respondent’s intent to commence use of its registered mark during the three-year nonuse period."

The Board acknowledged that the COLA-approved labels did not display the subject mark, but the mark did appear on respondent's packaging (see above). Although respondent's testimony regarding a license agreement was not supported by the submission of the agreement itself, the Board found that that the testimony was clear and convincing and was not been contradicted by any other evidence.

Finally, petitioner argued that respondent showed only "token use" of the mark rather than any sustained effort to begin use. The Board disagreed as to the facts, and pointed out that "t[]he issue before us is not whether Respondent has made proper use of its mark in U.S. commerce but whether Respondent had a bona fide intent to commence use of its subject mark during the three-year nonuse period."

The Board found no basis "for finding that Respondent’s activities were not those which would be taken by a reasonable business with a bona fide intent to commence use of a mark in U.S. commerce." And so it denied the petition for cancellation.

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TTABlog comment: Note that petitions are denied, not "dismissed", registrations are cancelled, not marks.

Text Copyright John L. Welch 2020.

TTAB Affirms Nine Failure-to-Function Refusals for Geometric Shapes Displayed on Gaming Machines

Applicant IGT's appellate gamble didn't pay off, as the Board affirmed nine (IX) failure-to-function refusals of certain geometric shapes as trademarks for gaming machines. The shapes appear on the displays of video poker machines sold by IGT. The Board found that the proposed marks were not inherently distinctive and lacked acquired distinctiveness. In re IGT, Serial Nos. 87448071, 87448088, 87448100, 87448105, 87448113, 87448123, 87448129, 87448137, 87448145 (January 10, 2020) [not precedential] (Opinion by Deputy Chief Judge Mark A. Thurmon).

The Board observed that there are actually four alleged marks at issue, but three of the four are presented in a black and white version and a color version. One of the alleged marks is presented in black and white, in color, and in black and white with shading to indicate contrasting colors. That adds up to nine.

Examining Attorney Frank Latucca maintained that each of the shapes involved "a common background shape" with "nothing to suggest a consumer would view it as identifying a brand." 

The Board began its evaluation of the shapes "by noting what they are not." They are not part of, or background to, distinctive composite trademarks. Rather they serve as frames for information relevant to the video poker game being played. "The game information presented within the shapes is not distinctive. No other allegedly distinctive elements are joined with the shapes."

In In re Serial Podcast, LLC, 126 USPQ2d 1061 (TTAB 2018), the Board noted, “Most common geometric shapes, such as circles, squares, triangles, ovals, and rectangles, when used as backgrounds for the display of word marks, are not considered inherently distinctive, and have difficulty acquiring distinctiveness.”

The Examining Attorney provided samples of other video gaming displays that use similar common geometric shapes as borders for information. The manner in which applicant's shapes and colors are used was an additional reason that these designs are not inherently distinctive marks: as borders for information about the game being played. The presentation of other branding on the displays further reduced the likelihood that consumers will immediately recognize the shapes (and colors) as distinctive trademarks.

The Board concluded that the shapes are not inherently distinctive.

The Board then considered the issue of acquired distinctiveness. Applicant IGT claimed a long period of use (20 years) and submitted evidence of its sales volume to establish that it is a leading manufacturer of video poker machines. Advertising showed the promotion of Applicant’s video poker machines within the gaming industry, and IGT claimed that the shapes at issue have received unsolicited media attention.

The Board was not persuaded. It found that these designs fail to satisfy a basic requirement: "There must be something about the exposure that leads relevant consumers to view the symbol as a trademark." The Board looked to In re Chevron Intellectual Prop. Grp. LLC, 96 USPQ2d 2026 (TTAB 2010), for guidance. There a pole spanner design used with gasoline pumps was found not to have acquired distinctiveness. First, the Board noted that for common shapes and designs, very strong evidence of acquired distinctiveness is needed. Second, even 20 years of use and hundreds of millions of exposures to the design were not sufficient to prove acquired distinctiveness.

In In re General Mills IP Holdings II, LLC, 124 USPQ2d 1016, 1018 (TTAB 2017), the color yellow for cereal was found to lack acquired distinctiveness despite use on Cheerios boxes for seventy years. The decision was based in part on the fact that the yellow boxes also featured the CHEERIOS trademark. and so "there was little reason for consumers to rely on the yellow color of the box as a source identifier."

The same logic was applicable to the Chevron case described above and to the present appeals. Applicant’s video poker machines are branded products, making these appeals analogous, in this sense, to both the General Mills and Chevron decisions. Consumers seeing the common geometric shapes that Applicant now claims as trademarks are unlikely to view such features as brands when other prominent branding is present on the machines.

Moreover, IGT's advertising did not call the attention of consumers to these shapes as source identifiers, but simply showed the video poker products and touted the features of those products. Similarly the media references did not make any mention of the specific shapes and colors that IGT claims as marks.

This evidence falls far short of proving acquired distinctiveness. At most, it suggests that some consumer may recognize an IGT video poker machine from its overall look and sounds. That is a far cry from showing that a specific feature on the display is a distinctive trademark. The specimens of record clearly show prominent branding on these machines. It is hardly surprising that someone familiar with these machines can easily spot them on a casino floor.

The Board concluded that the proposed marks fail to function as source indicators, and so it affirmed the refusals to register under Sections 1, 2 and 45 of the Trademark Act.

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TTABlog comment: I'll bet you could guess how these would come out.

Text Copyright John L. Welch 2020.