TTABlog Test: How Did These Three Failure-to-Function Appeals Turn Out?

It seems that failure-to-function refusals are increasing in frequency. Just in the last few days,the Board issued decisions in three such cases. Are trademark applicant's overreaching? Have people come to think that if they are first to file they will "own" the phrase or term? Anyway, let's see how you function as a TTAB judge. [Answers in first comment].

In re Nancy D. Greene, Serial No. 87830154 (November 18, 2020) [not precedential] (Opinion by Judge Thomas Shaw, dissent by Judge Cindy B. Greenbaum). [Refusal to register the term LEGAL LANDMINES on the Supplemental Register, on the ground of failure to function as a service mark for business coaching and educational services. The Examining Attorney argued that the phrase is "“a commonplace term, message, or expression widely used by a variety of sources in the applicant’s field that merely conveys an ordinary, familiar, well-recognized concept or sentiment, namely, that the provided coaching and educational services are for assisting businesses in avoiding concealed yet incipient crises relating to the law.”]

In re Donald E. Moriarty, Serial No. 86367823 (November 23, 2020) [not precedential] (Opinion by Judge Thomas Shaw). [Failure-to-function refusal of WORST MOVIE EVER! for "parody of motion picture films and films for television comprising comedies and dramas featuring a mashup of different motion picture films." The Examining Attorney maintained that the term "is merely a commonplace slogan used by a variety of sources and merely conveys an ordinary, familiar or well recognized concept or sentiment, that is, '[t]he applied-for mark conveys the ordinary and well recognized concept that the movie in question is the most wanting in quality, value or condition of all time.'"]

In re PIF Group LLC, Serial No. 88084519 (November 23, 2020) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Refusal to register the proposed mark SHE KNEW SHE COULD on the ground that the phrase fails to function as a trademark for a various goods in classes 14, 16, 18, 21, 25, and 28, including jewelry, blank journals, beach bags, drinking glasses, clothing, and playing cards. The Examining Attorney asserted that use of SHE KNEW SHE COULD "convey[s] the ordinary, familiar, well-recognized sentiment of female empowerment or affirmation [and] is consistent with the plain meaning of the wording that comprises the expression. … [A] female is aware that she is able."].

 
Read comments and post your comment here.

TTABlogger comment: See any WYHA?s here?

Text Copyright John L. Welch 2020.

TTABlog Test: Is DRIVEN GOLF for Golf Training Aids and Apparel Confusable with DRIVEN BY PING for Golf Clubs?

[This guest post was written by Kira-Khanh McCarthy, a law clerk in the Trademark Group at Wolf, Greenfield & Sacks, P.C.]. Applicant Driven Golf, Inc. made a bogey on its appeal from the USPTO’s final refusal to register its mark, DRIVEN GOLF [GOLF disclaimed] for golf training aids and apparel. The Examining Attorney refused registration based on: (1) a failure to submit an acceptable identification of goods and (2) a likelihood of confusion with the registered mark DRIVEN BY PING for golf clubs. As to the first refusal, Driven Golf argued that “it is not necessary that the Applicant define each and every good under the identification of goods.” As to the second refusal, Applicant asserted a dissimilarity in the nature of the goods; dissimilarity of the established, likely-to-continue trade channels; and dissimilarity of the marks. Which argument do you think won? In re Driven Golf, Inc., Serial No. 88215365 (November 19, 2020) [not precedential] (Opinion by Judge Peter W. Cataldo).

  Identification of Goods: Applicant’s identification reads as follows:

Golf training aids, namely tangible articles designed to attach to a golfer and/or golf club and improve a golfer’s swing in Class 9; and Apparel, namely T-shirts, shirts, hats, caps, sweatshirts, pants, sweat suits, hoodies and socks in International Class 25.

The Examining Attorney maintained that the identification of goods in Class 9 is indefinite because it “does not specify whether [the training aids are] electronic in nature or not” and thus the goods may be classified in either Class 9 or Class 28. Applicant contended that “the identification of goods is specific, definite, clear, accurate, and concise. Applicant promotes a series of different training aids that meet the offered description. It is not necessary that the Applicant define each and every good under the identification of goods.”

The Board recognized that the “USPTO has discretion to require the degree of particularity deemed necessary to identify with specificity the goods or services covered by the mark.” See In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541, 1544 (Fed. Cir. 2007); In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A., 109 USPQ2d 1593, 1597 (TTAB 2014). It then found that Applicant’s use of the words “aid” and “tangible articles” in its Class 9 identification is “impermissibly vague because it is impossible to determine the exact nature and classification of the goods.” For those reasons, the Examining Attorney’s refusal based on a requirement for a more definite identification of Applicant’s Class 9 goods was affirmed.

Likelihood of Confusion: Next, the Board reviewed the Section 2(d) refusal. It first considered the similarity or dissimilarity and the nature of the goods. The Examining Attorney submitted two used-based registrations “identifying, inter alia, golf clubs and various golf training aids under the same mark,” and evidence that a third party, unrelated to Applicant, provides golf instruction, golf fitness and golf videos under the name Driven Golf, Inc. Nevertheless, the Board concluded that “this very sparse record is insufficient to establish that consumers are likely to believe Applicant’s goods emanate from the same sources as those identified in the cited registration.”

Second, the Board looked at the similarity or dissimilarity of established, likely-to-continue trade channels. Pulling from its analysis on the nature of the goods, the Board found “very little evidence that the[] goods are available in the same channels of trade to the same consumers.”

While we recognize that golf clubs, golf training aids and clothing that is broadly identified to include clothing worn while golfing may be available in common trade channels, there is insufficient evidence in the record that these goods travel in the same channels of trade or may be purchased by the same classes of purchasers.

Finally, the Board considered the similarity or dissimilarity of the marks. It found that “the only similarity between the two marks is the common word DRIVEN, which appears as the first word in both marks.” Further, it agreed with the Examining Attorney (and Applicant) that the registered mark, DRIVEN BY PING, connotes PING-branded golf clubs (i.e., golf clubs made “by PING”). Meanwhile, Applicant’s mark suggests that its golf aids and clothing will be used by consumers who are “driven” to improve their golf game.

Although Applicant’s mark and that in the cited registration share a common first word, we conclude that when considered in their entireties, the marks are more dissimilar than similar in appearance, sound and particularly connotation and that, when viewed as a whole, the marks engender dissimilar commercial impressions.

And so, the Board reversed the likelihood of confusion refusal as to both classes of goods. However, the refusal based on the requirement for a more definite identification of Applicant’s goods listed in Class 9 was affirmed.

Read comments and post your comment here.

TTABlogger comment: How did you do?

Text Copyright Kira-Khanh McCarthy 2020.

Precedential No. 39: TTABlog Test: Is "CO-OP" Merely Descriptive of Bicycles Sold by a Co-op?

The USPTO refused to register the term CO-OP for "Bicycles, bicycle seats, bicycle wheels, bicycle tires, bicycle handlebars, bicycle forks, bicycle handle bar stems," finding it to be merely descriptive of the goods under Section 2(e)(1). The Examining Attorney maintained that term "co-op" merely describes something about Applicant REI, namely, that Applicant is a cooperative business. How do you think this came out? In re Recreational Equipment, Inc., Serial No. 87186780 (November 20, 2020) [precedential] (Opinion by Deputy Chief Judge Mark A. Thurmon].

Applicant REI conceded that it is indeed a co-op. The Examining Attorney relied on In re Major League Umpires, 60 USPQ2d 1059 (TTAB 2001), and, according to the Board, effectively applied a per se rule: "she found the mark merely descriptive of the source and then refused registration on the basis that the mark merely describes the goods." 

In Major League Umpires the Board broadly stated that, "[i]t is well-established that a term which describes the provider of goods or services is also merely descriptive of those goods and services." Id. at 1060 (citing In re E. I. Kane Inc., 221 USPQ 1203 (TTAB 1984) and cases cited therein). However, when that statement is read in context, "it becomes clear that Major League Umpires does not require or support the use of a per se rule."

The mark at issue there was MAJOR LEAGUE UMPIRE. The evidence established that the applicant was owned and operated by three National League umpires. In addition, these three umpires "actually designed some of the goods, a fact touted in the applicant’s advertising." The Board also found that major league umpires are among the class of purchasers of the goods, and the mark described the goods as being of a type used by major league umpires.

A careful reading of the Major League Umpires decision suggests the Board was not making a broad holding that all terms that describe something about the source of goods are per se unregistrable as merely descriptive of the goods, but rather the Board was stating that this result followed given the facts of the Major League Umpires case. The mark went well beyond simply describing something about the source of the goods. It also described characteristics of the goods.

The Board concluded “the mark MAJOR LEAGUE UMPIRE would immediately convey to such purchasers a characteristic of the gear/clothing, i.e., that it is designed by a major league umpire." Thus Major League Umpires did not apply a per se rule, but rather found the mark to be merely descriptive of the goods in at least three different ways: as to the source, the nature of the designer, and a portion of the classes of consumers.

The Board acknowledged that in some cases a proposed mark that provides specific information about the source of the goods or services will be merely descriptive.

When the mark describes a characteristic of the source, and that characteristic is used to actively promote the goods, the mark probably also describes a feature of the goods for purposes of Section 2(e)(1). See In re MBNA Am. Bank, N.A., 340 F.3d 1328, 67 USPQ2d 1778 (Fed. Cir. 2003) (emphasis on the MONTANA SERIES and PHILADELPHIA CARD marks in promotional materials signifies that they are “a significant feature of MBNA’s method of promoting and marketing these affinity credit cards as well as of the services themselves.”).

When a mark describes something about the source of the goods or services, the evidence should be carefully evaluated to determine whether the mark also describes something about the goods or services.

This principle was particularly applicable in Major League Umpires because of the nature of the goods. If the goods at issue in Major League Umpires had been luxury automobiles or fly fishing gear or sewing machines, a different result may have been reached. It is the connection between the mark and the nature of the goods that supported the Section 2(e)(1) refusal in Major League Umpires. Thus, the Major League Umpires decision should not be read as supporting a per se rule of law.

In this case, there was no evidence "showing what consumers are likely to think when they see the CO-OP mark on bicycles or bicycle components." There was no evidence of third-party use of "co-op" in connection with bicycles or parts, no descriptive use in advertising, or of such usage by consumers or the trade. Although some consumers may be aware that Applicant REI is a co-op (the largest consumer cooperative in the country), "the record does not support a finding that the mark CO-OP immediately conveys to average consumers information about a quality, feature, or characteristic of bicycles and the other goods identified in the application."

Finding the USPTO's proofs to be inadequate, the Board reversed the refusal.

Read comments and post your comment here.

TTABlog note: WYHRR? Would you have refused registration?

Text Copyright John L. Welch 2020.

WYHA? TTAB Affirms 2(e)(1) Refusal of ORIGINAL FOLDED PIZZA as Merely Descriptive of Pizzas

[This guest post was written by Kira-Khanh McCarthy, a law clerk in the Trademark Group at Wolf, Greenfield & Sacks, P.C.]. No matter how you slice it (or fold it in this case), Applicant A Pizza LLC was unable to overcome the PTO’s Section 2(e)(1) refusal to register ORIGINAL FOLDED PIZZA [PIZZA disclaimed] for pizzas. The Board considered the individual elements of Applicant’s proposed mark and found that, as a whole, ORIGINAL FOLDED PIZZA is “no more than the sum of its descriptive parts.” Would you have appealed? In re A Pizza LLC, Serial No. 88283932 (November 17, 2020) [not precedential] (Opinion by Judge Christopher Larkin).

The Board acknowledged that its analysis must be two-fold: “Indeed, we are ‘required to examine the meaning of each component individually, and then determine whether the mark as a whole is merely descriptive.’” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1758 (Fed. Cir. 2012). It then considered the parties’ arguments and evidence.

Examining Attorney Udeme U. Attang maintained that the proposed mark “is highly descriptive because it identifies a feature and characteristic of applicant’s pizza goods” and that “both the individual components and the composite result are descriptive of applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods.” As evidence, she submitted dictionary definitions of “folded” and “pizza” and argued that “when ORIGINAL is combined with those words . . . the combination ‘directly conveys information about a feature and characteristic of the goods, namely, that applicant’s pizza goods are the first of its kind and that the pizza has one part laid over another part.’” In addition, to show that pizza consumers would acquaint “folded pizza” with pizza in which one part is laid over another, she submitted evidence of third-party webpages referencing “folded pizza” in connection with calzones. 

Applicant made one sole argument: “[T]he word ‘folded’ means ‘drunk’ which adds an alternative congruous [sic] meaning to the mark – that of a drunk slice of pizza.”

When analyzing the individual components of Applicant’s proposed mark, the Board agreed with the Examining Attorney that the word ORIGINAL is merely descriptive of Applicant’s goods because it touts the “first-of-its-kind” nature of Applicant’s “original folded pizza.” Next, the Board found nothing in the record nor Applicant’s own website to support Applicant’s argument that FOLDED provided ORIGINAL FOLDED PIZZA with an alternative incongruous meaning as “a drunk slice of pizza.” (Snip from Applicant’s website immediately below.) “There is no doubt that the word FOLDED in Applicant’s proposed mark is merely descriptive of the goods because it describes the fact that certain of Applicant’s pizzas are ‘folded in half.’” [See excerpts from Applicant's website, below]. Lastly, especially given the disclaimer, PIZZA was undeniably held to be a generic for the applied-for goods.

Turning to the combination of the terms, the Board promptly concluded that ORIGINAL FOLDED PIZZA, as a whole, is merely descriptive. This was made especially clear considering that Applicant’s use of the mark on its website gave “no indication that Applicant claims ‘original folded pizza’ as its trademark.”  “Because each word in the proposed mark ‘retains its merely descriptive significance in relation to the goods, the combination results in a composite that is itself merely descriptive.’” In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016).

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Well, would you have?

Text Copyright Kira-Khanh McCarthy 2020.

TTABlog Test: Is DIMOND for Bicycle Frames Confusable with DIAMOND for Bicycle Chains?

The USPTO refused registration of the mark DIMOND for "bicycle frames, not including bicycle parts," finding a likelihood of confusion with the registered mark DIAMOND (in standard character and stylized form), owned by the same entity, for “bicycle chains." Applicant Ruster Sports contended that the fact that the goods are sold in the same industry is an insufficient relationship for likelihood of confusion. How do you think this came out? In re Ruster Sports, LLC, Serial No. 88011946 (November 16, 2020) [not precedential] (Opinion by Judge Elizabeth A. Dunn).

The Board found that the term DIMOND is likely to be perceived as a misspelling of DIAMOND. As to the goods, the evidence showed that "bicycle chains and bicycle frames both are necessary parts of any bicycle, and available to the same end consumers, cyclists/bicycle owners, through some of the same channels of commerce, namely stores that specialize in bicycles and parts therefor." And so the Board found confusion likely and it affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2020.

Recommended Reading: Profs. Beebe and Fromer, "Fake Trademark Specimens: An Empirical Analysis"

Professors Barton Beebe and Jeanne C. Fromer of NYU School of Law present the results of their empirical study regarding fraudulent specimens of use in applications originating in China. [pdf available here].

This Article reports the results of new empirical work showing that an appreciable number of U.S. trademark applications originating in China include fraudulent specimens of use, despite the law's requirement that these marks be used in U.S. commerce to proceed to registration. In particular, with respect to use-based applications originating in China that were filed at the U.S. Patent and Trademark Office (PTO) in 2017 solely for apparel goods, we estimate that 66.9% of such applications included fraudulent specimens. Yet 59.8% of these fraudulent applications proceeded to publication and then 38.9% proceeded to registration. If these applications are representative of the overall population of Chinese-origin applications in that year, then approximately 14.0% of the total use-based applications filed in 2017 were fraudulent. Fraudulent registrations worsen the problems of trademark depletion and clutter, undermine the integrity of the trademark register, and hurt legitimate businesses that would like to use these marks. We therefore recommend legislative action to make it easier for third parties and the PTO to cull these marks from the register and systematic improvement by the PTO to ensure that applications with fraudulent specimens are not registered in the first instance.

Three earlier articles by these co-authors have made an appearance at the TTABlog: "The Scope of Strong Marks: Should Trademark Law Protect the Strong More Than The Weak?," 92 N.Y.U. Law. Rev. 1390 (November 2017). [pdf here]; "Are We Running Out Of Trademarks: An Empirical Study of Trademark Depletion and Congestion", 131 Harv. Law Rev. 948 (February 2018) [pdf here]; and ""Immoral or Scandalous Marks: An Empirical Analysis," N.Y.U. Journal of Intell. Prop. & Ent. Law, Vol. 8, No. 2 (Spring 2019). (link here).

Read comments and post your comment here.

TTABlogger comment: In mid-2019, the USPTO began to require that foreign applicants be represented by United States counsel. Has that reduced the size of the problem? BTW: I have suggested that the TTAB adopt a streamlined procedure to allow a challenge to a dubious specimen of use, rather than require a challenger to institute an opposition or cancellation proceeding.

Text Copyright John L. Welch 2020.

Wolf Greenfield Seeks Trademark Associate for Boston or New York Office

Wolf, Greenfield & Sacks, P.C., is accepting applications for the position of trademark and copyright associate, New York or Boston based. To apply, go here.

"We are seeking an attorney to join our Trademark and Copyright group. Qualified applicants will have 3-5 years of experience in trademark matters, including domestic and international clearance, prosecution, and enforcement, as well as experience in managing a global trademark portfolio. The position will also involve drafting pleadings for the TTAB and Federal Court. Previous experience preparing and responding to cease and desist letters and handling other enforcement matters is preferred. Excellent writing skills, strong academic credentials, business acumen, and strong interpersonal and communication skills are required. An interest in public presentations, writing articles, and active marketing and business development are also required."

.

New Trademark and TTAB Fees Effective January 2, 2021

The United States Patent and Trademark Office (USPTO) is setting and adjusting Trademark and Trademark Trial and Appeal Board (TTAB) fees for the first time in nearly three years through its Final Rule, effective January 2, 2021 (here). A summary of the FY2021 Final Trademark Fee Rule may be found here. The changes include increases in trademark application filing fees, post-registration fees, petition fees, and TTAB fees, and a new fee for a letter of protest. 

The Changes in TTAB fees are as follows:

• Petition to cancel filed through ESTTA: $600 per class (Up from $400 per class). 
• Notice of opposition filed through ESTTA: $600 per class (Up from $400 per class). 
• Initial 90-day extension requests for filing a notice of opposition, or second 60-day extension requests for filing a notice of opposition, filed through ESTTA: $200 per application (Up from $100 per application). (There is still no fee for a first 30-day extension request for filing a notice of opposition, filed through ESTTA). 
• Final 60-day extension request for filing a notice of opposition, filed through ESTTA: $400 per application (Up from $200 per application). 
• Ex parte appeal filed through ESTTA: $225 per class (Up from $200 per class). 
• New fee for second, and subsequent, requests for an extension of time to file an appeal brief in an ex parte appeal filed through ESTTA: $100 per application (There is still no fee for a first request). 
• New fee for appeal briefs in an ex parte appeal filed through ESTTA: $200 per class. 
• New fee for requests for oral hearings: $500 per proceeding.

In addition, the USPTO is implementing partial refunds for petitions to cancel in default judgments if the cancellation involves only a nonuse or abandonment claim, the defendant did not appear, and there were no filings other than the petition to cancel.

Read comments and post your comment here.

TTABlogger comment: That should put a damper on oral hearings.

Text Copyright John L. Welch 2020.

Hell Freezes Over! TTAB Reverses Failure-to-Function Refusal of JUST ANOTHER DAY IN PARADISE

The Board reversed a failure-to-function refusal of JUST ANOTHER DAY IN PARADISE for a variety of items in nine classes, such as candles, flatware, lamps, and Christmas ornaments. The Board concluded that the record evidence failed to show that the proposed mark "is a common or familiar expression in such widespread use that it is inherently incapable of functioning as a mark." In re Rodeowave Entertainment, LLC, Serial No. 87801076 (November 13, 2020) [not precedential] (Opinion by Judge Christen M. English).

The Board observed that slogans that are merely informational in nature, or common laudatory phrases or statements that would ordinarily be used particular business or industry, are not registrable. "The more commonly a phrase is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark.”

The question of whether JUST ANOTHER DAY IN PARADISE "is inherently capable of functioning as a mark for the identified goods depends on whether the relevant public, i.e. purchasers and potential purchasers of Applicant’s goods, would perceive the phrase as identifying Applicant’s goods and their source or origin." The subject application was filed on an intent-to-use basis, and there was no evidence of applicant’s use of the phrase. However, there was evidence of third-party use in media and on a range of home décor, household goods, and clothing items. (examples depicted above and below). "Prominent ornamental use of an applied-for-mark ... 'is probative in determining whether a term or phrase would be perceived in the marketplace as a trademark or as a widely used message.'"

The nature of the message conveyed by the proposed mark is also pertinent. Familiar, commonplace expressions and slogans "used to convey social, political, patriotic, religious, and laudatory concepts are more likely to be perceived as imparting information than signifying source." (E.g., ONCE A MARINE, ALWAYS A MARINE; THINK GREEN; DRIVE SAFELY; PROUDLY MADE IN USA; WATCH THAT CHILD).

The evidence here does not demonstrate that the applied-for-mark is used in everyday parlance or that it conveys a common social, political, patriotic, religious or other informational message. In most of the media examples of record, the applied-for-mark is primarily used as the title of creative works rather than for any apparent common informational message.

The examining attorney maintained that the mark does not convey any clear or specific message, but rather is subject to a number of different interpretations; for example, "taking pleasure in small things" or "getting away from one’s troubles." [I think it conveys a sarcastic message - ed.]. The Board concluded that this potential ambiguity "makes it less likely that consumers would perceive it as conveying a particular informational message and distinguishes it from the types of well-recognized and unequivocal expressions found to be incapable of serving as source identifiers."

Although widespread use may be enough to render a term or phrase incapable of functioning as a trademark, regardless of the type of message - for example, I ♥ DC, ONCE A MARINE, ALWAYS A MARINE, DRIVE SAFELY - the use of the proposed mark "is not sufficiently widespread such that we can find it inherently incapable of serving as a source identifier even though the record does not demonstrate that the applied-for-mark is a familiar expression with a generally understood meaning."

And so the Board reversed the refusal.

Read comments and post your comment here.

TTABlogger comment:What do you think? Seems like a commonplace, unregistrable slogan to me.

Text Copyright John L. Welch 2020.

Recommended Reading: Lisa Pearson, "The Real Life of Fictional Trademarks"

The September-October issue of The Trademark Reporter [pdf of full issue here] includes Daniel R. Bereskin's article on Trademark Rights and Freedom of Competition in Canada, a commentary by Dr. Martin Viefhues on the Court of Justice of the European Union's SkyKick decision, and Yashvardhan Rana's review of the book, Internet Intermediaries and Trade Mark Rights, by Althaf Marsoof. This blog post focuses on Lisa Pearson's entertaining commentary, "The Real Life of Fictional Trademarks."

I confess that I have never seen The Dukes of Hazzard, Sponge Bob Squarepants, or Empire. Be that as it may, I am sure you will enjoy Lisa Pearson's commentary as much as I did.

Entertainment and media providers have progressed well beyond the simplistic animated worlds of Saturday morning cartoons. They have created ever more complex, immersive, and interactive universes to engage audiences. The brands appearing in those universes may be real, imaginary, or a mix. In the United States, it is not uncommon for someone to launch a real product or service under a formerly fictional trademark or service mark to capitalize on the popularity of the property in which it originally appeared. Conversely, a fictional brand name in an entertainment property may bear more than a passing resemblance to an actual brand in the material world.

Consumers, intellectual property lawyers, and even judges take delight in the mind-bending implications of brands that traverse parallel universes, real and imaginary.

Welcome to the real life of fictional trademarks.

Read comments and post your comment here.

TTABlogger comment: Again, I thank The Trademark Reporter for allowing me to make this issue available to my dear readers. This issue of the TMR is Copyright © 2020, the International Trademark Association and is made available with the permission of The Trademark Reporter®.

Text Copyright John L. Welch 2020.

TTAB Upholds Refusal to Register Pre-Mixed Cocktail Bottle: Not Inherently Distinctive and Lacks Acquired Distinctiveness

The Board affirmed a refusal to register the three-dimensional product packaging shown below, for “pre-mixed alcoholic beverages, other than beer-based," finding that the design is not inherently distinctive and rejecting applicant's claim of acquired distinctiveness. The Board concluded that, compared to bottled designs on which Examining Attorney Andrew Crowder-Schaefer relied, the differences "are mere refinements of common features for alcoholic beverage bottles." As to its Section 2(f) claim, applicant relied only on its use of the proposed mark for seven years, which the Board found insufficient to meet the applicable heavy burden of proof. In re Watermark Properties Inc., Serial No. 88578623 (November 10, 2020) [not precedential] (Opinion by Judge Michael B. Adlin).

The proposed mark comprises "a stylized cylinder bottle with a bottle cap which is three dimensional and symmetric. The sides of the bottle cap and bottle are concave, with a curve beginning at the bottle cap and ending at the bottom of the bottle." 

Inherent Distinctiveness: The Examining Attorney relied on bottles used as packaging for beverages sold in commerce, both alcoholic and non alcoholic, and primarily cylindrical and concave in shape. However, few of the caps for these bottles were concave like the body of the bottle.

Applicant maintained that the third-party bottles are different in shape from its bottle, and that third-party bottles for non alcoholic beverages are irrelevant because the goods are different. It pointed out that it has won awards for its bottle design. The Board, however, found no evidence that the awards related to any of the bottle features that Applicant sought to register.

The Board pointed out that "the Examining Attorney does not bear a heavy burden in establishing a prima facie case that a mark is not inherently distinctive. The Examining Attorney need only establish a 'reasonable predicate' to make the necessary prima facie showing.” In re Chippendales USA, Inc., 90 USPQ2d 1535, 1539-40 (TTAB 2009), aff’d, 96 USPQ2d 1681

The Board applied the ever-popular test of Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 196 USPQ 289, 291 (CCPA 1977)), to determine inherent distinctiveness of the subject trade dress. Here, the evidence of record established a "reasonable predicate" for rejecting applicant’s claim of inherent distinctiveness, and thus the Examining Attorney made a prima facie case.

In fact, Applicant’ s design is fairly commonplace, and not unique in the alcoholic beverage field, as the record reveals almost 20 cylindrical alcoholic beverage bottles with concave sides that curve inward starting at the top and ending at the bottom. Rather, to the extent Applicant’s bottle design differs from the bottles upon which the Examining Attorney relies, these differences are m ere refinements of common features for alcoholic beverage bottles. Applicant’s bottle design is therefore not inherently distinctive.

The Board rejected applicant's contention that the soft drink bottles are irrelevant. "In fact, because alcoholic beverage drinkers also must, or at least would be expected to, drink non alcoholic beverages, bottles for non alcoholic beverages are relevant , and would be expected to impact the relevant alcoholic beverage consumers’ perceptions of alcoholic beverage bottles." The Board acknowledged that many of the third-party bottles have small caps or thin necks, but those were not enough to undermine or rebut the Examining Attorney's prima facie case.

The point is that neither symmetric bottle caps, nor concave bottles curve from the bottle cap or elsewhere on the top of the bottle to the bottom are “unusual” in the field of bottles for alcoholic beverages (or soft drinks). * * *  In fact, even if Applicant is correct that its bottle is unique in the field, in the sense that there are n o other bottles exactly like it, that is not enough to establish inherent distinctiveness given the evidence of widespread third party use of highly similar bottles. In short, the Examining Attorney has established a prima facie case, which Applicant has not rebutted, that Applicant’ s bottle design is not inherently distinctive.

Acquired Distinctiveness: Because applicant's bottle design is a mere refinement of a bottle design commonly used in the alcoholic beverage industry, applicant "has a relatively heavy burden for establishing acquired distinctiveness."

Applicant has used its proposed mark for the last seven years but that "is not a significant amount of time given the nature of the proposed mark and how similar it is to third-party bottle designs." It did not provide a survey or other evidence showing that consumers associate the proposed mark with applicant.Applicant. It did not provide any evidence as to its sales, customers, or advertising, nor any evidence of intentional copying or unsolicited media coverage of the bottle design. And there was no evidence that Applicant has promoted the claimed features of its bottle design as a source identifier.

In short, because Applicant’s proposed mark is so similar to a number of third party alcoholic beverage bottles, we would require significantly more and higher quality evidence than we have here to find that the proposed mark has acquired distinctiveness. In the absence of such evidence, we find that Applicant has not established its alternative claim that the proposed mark has acquired distinctiveness.

Read comments and post your comment here.

TTABlogger comment:It seems that the Board almost never accepts mere length of time as sufficient evidence of acquired distinctiveness.

Text Copyright John L. Welch 2020.