Friday, September 18, 2020

TTABlog Test: Is GNARLED ORCHARD for Hard Cider Confusable With GNARLY HEAD for Wine?

Delicato Vineyards opposed this application to register the mark GNARLED ORCHARD for hard cider, claiming a likelihood of confusion with its registered mark GNARLY HEAD for wines. Applicant Strother maintained that the goods are fundamentally different, that wine drinkers are increasingly sophisticated, and the the marks differ in connotation and commercial impression. How do you think this came out? Delicato Vineyards v. Philip Carter Strother, Opposition No. 91244351 (September 16, 2020) [not precedential] (Opinion by Judge David K. Heasley).

Channels of Trade: Although wine and cider are different goods, the question is whether consumers would mistakenly believe that the involved goods many emanate from the same source. The evidence showed that Applicant Strother sells both wine and hard cider. Neither the application nor opposer's registration contained any limitations as to channels of trade. The Board concluded that "the DuPont factors concerning the similarity or relatedness of Applicant’s and Opposer’s goods, classes of consumers, and channels of trade weigh in favor of finding a likelihood of confusion."

Consumer Care: Strother claimed that due to the enormous growth in sophistication of wine buyers, confusion is not likely between an apple cider and a grape wine. However, as the Board previously pointed out, the question is source confusion, not product confusion. The consuming public consists of  purchasers of alcoholic beverages, and "there is no reason to believe that these customers will be particularly sophisticated." Moreover, the Board must consider the least sophisticated purchaser. [What it the purchaser is so unsophisticated that he or she can't tell wine from hard cider? - ed.]. There are no limitations in the application or registration regarding price or quality. And consumers often order these beverages by the glass with little opportunity to carefully inspect the brand names.

Strength of Opposer's Mark: Delicato's sales and advertising figures were substantial, and it has successfully expanded its brand in fifteen years across the entire country, from its original zinfandel to a variety of varietals. The Board found that Delicato had achieved a "high degree of commercial strength" under the GNARLY HEAD brand name, and therefore is entitled to "'stronger' protection—protection over a wider range of related products and services and variations on visual and aural format."

The Marks: The Board found that "GNARLY overlaps GNARLED in sight, sound, connotation, and commercial impression." Moreover, "Opposer’s GNARLY encompasses both meanings: dangerous and twisted with age. *** Thus, the words GNARLED and GNARLY overlap in connotation and commercial impression. They appear prominently as the first word in each mark."

Given this marked similarity in the marks’ dominant lead components, the differences in their suffixes, HEAD and ORCHARD, do not suffice to distinguish them. According to Opposer, GNARLY HEAD refers to the twisted heads of aged vines, such as those depicted in its advertisement .... According to Applicant, GNARLED ORCHARD refers to an orchard that is weathered and bent. Both parties seek to evoke a similar impression: twisted, fruit-bearing plants from which their fermented alcoholic beverages are made.

In view of the noisy and sometimes chaotic conditions in bars and restaurants, where beverages are often order by the glass without an opportunity to see the label, minor differences in sound may go undetected. Consumers who do discern the differences in the marks may believe that one mark is a slight variation of the other.

Conclusion: Balancing the relevant duPont factors, the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: Did you guess correctly? Do you think, in the real world, there is any likelihood of confusion here? 

Text Copyright John L. Welch 2020.

Thursday, September 17, 2020

All Ohio Annual Institute on Intellectual Property: Video Conference - October 7 & 8th

On Thursday, October 8th at 1PM, Yours Truly, The TTABlogger, will venture into the virtual wilderness of Ohio to present a webinar entitled "Meanwhile, Back at the TTAB," a review of recent developments and decisions at the CAFC and the Board. Register here. The program brochure may be downloaded here.

At 11AM on Wednesday, trademark law expert Ken Germaine will discuss recent Trademark Developments. Other speakers will review the past year in patent, copyright, advertising, and trade secret law.

Precedential No. 34: TTAB Rules That gTLD ".CAM" is Incapable of Functioning as a Source Indicator

The Board affirmed refusals to register the term ".CAM" in standard character and stylized form (shown below) on the Supplemental Register for an extensive list of services in International Classes 35, 38, 42 and 45, finding that ".CAM", in either form, is incapable of functioning as a source indicator under Section 23 of the Lanham Act. Applicant AC Webconnecting did not provide any evidence that .CAM is perceived as a service mark rather than a gTLD (generic top level domain name). In re AC Webconnecting Holding B.V., 2020 USPQ2d 11048 (September 15, 2020) [precedential] (Opinion by Judge Peter W. Cataldo).

After the applications at issue were filed, AC Webconnecting entered into a registry agreement with ICANN, whereby AC Webconnecting was designated as the Registry Operator for the .CAM gTLD. The applications at issue do not explicitly and directly recite registry operator or registrar services, but AC Webconnecting acknowledged that its Class 45 services includes domain name registration, conducting domain name searches, legal services and consulting, all related to the .CAM gTLD.

In order to qualify for registration on the Supplemental Register under Section 23, a service mark must be "capable of distinguishing" the applicant's services, a determination that hinges on consumer perception. The TTAB has previously found that a proposed mark consisting solely of a gTLD "engender(s) the commercial impression merely of a top-level domain associated with the term comprising the proposed mark." AC Webconnecting argued it does not use its mark solely as a gTLD as it is always used and will always be used by Applicant to identify Applicant as the source of its numerous, high-quality services.” However, its website consistently refers to .CAM as a gTLD and not as a mark. Moreover, excerpts from third-party websites demonstrated that .CAM is perceived only as a gTLD "intended to be used by multiple parties as part of their domain names to identify multiple websites offering a variety of goods and services."

Turning to the specific services recited in the subject application, the Board found that for at least one service in each class, the term .CAM is incapable of serving as a source indicator: domain name registration and related services in Class 45; database management services in class 35; providing access to databases, the Internet and transmission of multimedia communications via the Internet in class 38;  and web site hosting services and search engine optimization in class 42. Because the proposed marks are incapable of distinguishing source with regard to at least one service in each of the four classes, they are unregistrable as to all refused services recited in those classes.

With regard to the stylized version of .CAM, the Board observed that "for a term otherwise unregistrable to be capable of distinguishing an applicant’s goods, the presentation of the term must be sufficiently striking, unique or distinctive so as to overcome its inherent incapacity and render the mark capable of serving as a source indicator." The mark at issue here failed to meet that standard. 

"The term '.CAM' is displayed in a very slightly stylized script that is not unique or unusual and the “dot” is displayed in the color green with no additional stylization or design." The green color of dot emphasizes the nature of the designation as a gTLD and will not be perceived as creating a separate commercial impression.

In sum, the proposed stylized mark "conveys the commercial impression of a gTLD." The stylization  does not present any unique characteristics. "It does not create a commercial impression separate from the unregistrable."

The Board therefore affirmed both refusals to register.

Read comments and post your comment here.

TTABlogger comment: I think the proposed mark .CAM is capable of serving as a mark, but AC Webconnect hasn't done enough to make it one. In my view, the Board applied the wrong test. Unless no gTLD can ever be a trademark, why isn't .CAM capable of becoming one? It may "fail to function" as a trademark but is it incapable of ever doing so?

Text Copyright John L. Welch 2020.

Wednesday, September 16, 2020

TTABlog Test: Is "MF MIRANDA FRYE & Design" Confusable with "FRYE" for Jewelry?

The USPTO refused to register the word-plus-design mark shown below, for jewelry, on the ground of likelihood of confusion with the registered mark FRYE, also for jewelry. Since the goods overlap, the Board must presume that the channels of trade and classes of consumers for those goods are the same. But what about the marks? How do you think this came out? In re Miranda Frye Inc., Serial No. 88347449 (September 10, 2020) [not precedential] (Opinion by Judge Thomas W. Shaw).

The Board noted that the cited mark is in standard characters and could be displayed in a style similar to that of applicant. Nothing in the record suggested that FRYE has any significance other than as a surname.

[A] surname preceded by a given name or initials is a common, highly conventional combination of word elements, and the name MIRANDA FRYE could well be interpreted as a more specific reference to a person or company that is otherwise identified by the surname FRYE.

The Board has held that the addition of a given name to a surname is insufficient to distinguish the combination from the surname alone, for Section 2(d) purposes. For example BRUCE WINSTON similar to WINSTON for jewelry; JOSE GASPAR; SAM EDELMAN.
The Board acknowledged that the initials MF and the surname MIRANDA appear prominently in applicant's mark, and it is often the first part of a mark that is more likely to be remembered and used to call for the goods. "Taken as a whole, MF MIRANDA FRYE could be perceived as the full name and initials of the person or company identified by the surname FRYE alone."
The Board found the word FRYE to be the dominant portion of the marks, and that they are "far more similar than they are different and, overall, convey similar commercial impressions. That is to say, the marks appear to be variations of each other that nonetheless point to a common source."   

And so the Board affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlogger comment: How did you do? If FRYE is a surname, would consumer expect there to be different, unrelated people with that same surname?

Text Copyright John L. Welch 2020.

Tuesday, September 15, 2020

Recommended Reading: Prof. Christine Farley, "The Lost Unfair Competition Law"

Professor Christine Farley of American University Washington College of Law, in her article, "The Lost Unfair Competition Law," notes the oft-repeated assertion that trademark law “is but a part of the broader law of unfair competition.” But what is the broader protection that unfair competition provides? Her article "explains why we have lost sight of this answer and become confused about the scope of unfair competition law today by providing a historical examination of the drafting and enactment of the act and mysterious treaty [The Inter-American Convention], and their forgotten connection."

Professor Farley observes that unfair competition law reached its high point in 1918 in International News Service v. Associated Press. Edward S. Rogers, a major architect of the Lanham Act, was one of the few who drafted the Inter-American Convention, which contains substantial unfair competition protection. However, the legislative history of the Lanham Act "reveals a disinclination to create a federal unfair competition cause of action." Section 43(a) is often enlisted to fill the gap (although it has led to erratic results like Belmora v. Bayer, in which Section 43(a) was read to provide a cause of action to a plaintiff whose pleaded trademark had never been used in the United States). Professor Farley has some suggestions as to how reclaim the lost law of unfair competition can be reclaimed.

Part I identifies the confusion about the scope of unfair competition law that exists today. Part II traces unfair competition law from the beginnings of U.S. trademark law in the late 1800s to the 1946 Lanham Act. *** Part III tracks Edward Rogers’s contributions to the international and domestic development of unfair competition law. Part IV describes the pioneering protection of unfair competition provided by the Inter-American Convention. Part V discusses how the emergence of the Erie Doctrine in the late 1930s threatened to create a void because state laws on trademark and unfair competition were underdeveloped compared with federal law. Part VI interrogates the history of Section 44 of the Lanham Act, demonstrating that it was meant to incorporate by reference the unfair competition provisions from Inter-American Convention. This section describes how the robust unfair competition protection enabled through Section 44 continues to lie dormant, and Part VII recounts how Section 43(a) instead emerged as the vehicle for unfair competition. *** Finally, Part VIII will offer some suggestion about how, in light of this history, the unfair competition law that was lost might be reclaimed.

Read comments and post your comment here.

TTABlogger comment: Thank you to The Trademark Reporter for granting permission to the TTABlog to provide a link to this issue. Copyright © 2020 the International Trademark Association. Reprinted with the permission of The Trademark Reporter®, 110 TMR No. 4 (July-August2020).

Text Copyright John L. Welch 2020.

Monday, September 14, 2020

Decisions of the TTAB and the CAFC on Registrability Issues July 2019 to August 2020

In preparation for two webinar presentations coming up in the next four weeks, I have put together an article summarizing the precedential decisions of the TTAB and the CAFC over the past 14 months. Download pdf here: "Decisions of the Trademark Trial and Appeal Board and the Federal Circuit on Registrability Issues: July 2019 – August 2020."

Read comments and post your comment here.

Text Copyright John L. Welch 2020.

Friday, September 11, 2020

TTABlog Test: Is HERITAGE SOUTHEAST BANK Confusable With SOUTHEAST BANK (Stylized), for Banking Services?

The USPTO refused to register the mark HERITAGE SOUTHEAST BANK [BANK disclaimed], on the ground of likelihood of confusion with the mark SOUTHEAST BANK in the stylized form shown immediately below, both for banking services. As we know, when the services are identical, less similarity between the marks is required to support a Section 2(d) refusal. But how strong is "SOUTHEAST" as a formative? How do you think this came out? In re Heritage Bank, Serial No. 88540253 (September 9, 2020) [not precedential] (Opinion by Judge Frances S. Wolfson).

In an effort to show the weakness of "SOUTHEAST," Applicant submitted search results from the Federal Deposit Insurance Corporation (FDIC), for "institutions as of January 22, 2020," listing six banks: SouthEast Bank (Registrant); Heritage Southeast Bank (Applicant); Southeastern Bank (of Georgia); FIRST STATE BANK OF THE SOUTHEAST, INC. (of Kentucky); First Southeast Bank (of Minnesota); Southeast First National Bank (of Georgia). The Board was unimpressed. Even assuming that these banks are owned by different owners, there are only four (other than applicant and registrant), an insufficient number to show that the cited mark is weak.

Applicant also submitted 15 third-party registrations for marks containing the term SOUTHEAST, SOUTHWEST, or NORTHWEST. The Board found the evidence unconvincing: only six of the mark were for banking services, and only one of those included the word SOUTHEAST.

Turning to a comparison of the marks, the Board observed that likelihood of confusion is often found when one mark incorporates the entirety of another mark. "Here, Applicant’s mark incorporates the entire literal portion of Registrant’s mark, and the remainder of Registrant’s mark is simply a common lettering style in a particular color scheme." Since applicant seeks registration of a standard character mark, its mark might be displayed in a script similar to registrant’s, and in a green, blue and black color scheme.

Applicant contended that HERITAGE is the dominant word in its mark. The Board agreed that the word is prominent, but noted that it must evaluate the marks in their entireties, and it found them to be more similar than dissimilar in appearance, pronunciation, connotation and commercial impression.

In sum, we find that the non-literal components (the lettering style and color scheme) of Registrant’s mark visually distinguishes it only slightly from Applicant’s mark. Moreover, and more importantly, we find the sight, sound, connotation, and overall commercial impression of the two marks considered as a whole to be more similar than dissimilar.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

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

Text Copyright John L. Welch 2020.

Thursday, September 10, 2020

TTAB Finds BROTHERS CRAFT BREWING for Beer Confusable with BROTHERS for Bar and Restaurant Services

The Board sustained this Section 2(d) opposition to registration of BROTHERS CRAFT BREWING for "Beer, ale, lager, stout, porter, shandy" [CRAFT BREWING disclaimed] in view of the registered marks BROTHERS and BROTHERS BAR & GRILL for bar and restaurant services [BAR & GRILL disclaimed]. Applicant argued that, under Coors Brewing and Jacobs v. International Multifoods, “[t]he question of whether restaurant services and beer are sufficiently related as to cause the likelihood of confusion is subject to a well-established requirement that the Opposer show ‘something more.'" The Board agreed, but then found the "something more" in Opposer's evidence. Brothers Franchise & Development, LLC v. Three Brothers Brewing LLC., Opposition No. 91232361 (September 8, 2020) [not precedential] (Opinion by Judge Jyll Taylor).

Standing: In view of the Supreme Court's ruling in Lexmark, the Board no longer uses the rubric "standing" when analyzing the requirements of Section 13 and 14 of the Trademark Act, but whether  a party has established entitlement to a statutory cause of action by demonstrating a real interest in the proceeding and a reasonable belief of damage. See Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837 at *3 (Fed. Cir. 2020). Here, Opposer satisfied that requirement by pleading ownership of six pertinent registrations.

The Marks: As to the commercial strength of opposer's marks, the Board rejected the claim that its marks are famous, but found them to be "in the mid-range of the commercial strength spectrum." As to inherent strength, applicant relied on a number of registrations for marks containing the word BROTHERS for beer, arguing that “the term ‘Brothers’ is simply suggestive of businesses founded and/or operated by brothers or people who consider themselves brothers.” The Board found, nonetheless, that these registrations "do not support the conclusion that the term BROTHERS, alone or combined with nondistinctive matter, is inherently weak." It found opposer’s marks BROTHERS and BROTHERS BAR & GRILL to be "entitled to the ordinary scope of protection given inherently distinctive marks."

The Board deemed the word BROTHERS to be the dominant portion of the involved marks, and concluded that they are similar in appearance, sound, connotation and commercial impression due to the shared term BROTHERS.

Goods and Services: As applicant pointed out, the Board previously has required a showing of “something more” for restaurant and bar services, not just restaurant services. In previous cases, the Board has found the “something more” requirement to be met where an applicant’s mark "made clear that its restaurant specialized in registrant’s type of goods."

The record showed that opposer’s bar and restaurant services feature an extensive beer menu, and further that applicant’s beer, while currently only distributed in Virginia, is sold to distributors for further sale and distribution in trade channels that include restaurants. Thus beer is complementary to bar and restaurants services since it could be sold in opposer's bar and restaurant.

[T]he record shows the requisite “something more” to establish that beer and bar and restaurant services are related in this case. More particularly, the record confirms that Opposer’s bar services comprise the most significant portion of Opposer’s bar and restaurant services, both in the ratio of bar to restaurant services and in that the bar is a focal point in Applicant’s establishments.

The Board concluded that the involved goods and services are related.

Channels of Trade: The ordinary trade channels for beer include restaurants and bars, and consumers include bar and restaurant patrons.

Conclusion: Confusion is likely, and so the Board sustained the opposition.

Read comments and post your comment here.

TTABlogger comment:

Text Copyright John L. Welch 2020.

Wednesday, September 09, 2020

"THE NEXT MOVE IS YOURS" Fails to Function as a Service Mark for Real Estate Services, Says TTAB

The Board affirmed a refusal to register the proposed mark THE NEXT MOVE IS YOURS for "real estate agency services, real estate brokerage, real estate management, leasing of real estate," on the ground that the phrase fails to function as a mark under Section 1, 2, 3, and 45 of the Trademark Act. Applicant contended that THE NEXT MOVE IS YOURS is similar to registered slogan marks (such as EAT FRESH) in that it is often used by others, conveys information, suggests an action, and functions as a trademark. The Board was not moved. In re Douglas Elliman Realty, LLC, Serial No. 88640177 (September 4, 2020) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Third-party use

The question for the Board was "whether the relevant public, i.e. purchasers or potential purchasers of Applicant’s services, would perceive THE NEXT MOVE IS YOURS as identifying Applicant’s services and their source or origin." The relevant consuming public consists of all potential purchasers of real estate agency, brokerage, management and leasing services.

Although the subject application was based on intent-to-use, a failure-to-function refusal may be issued without considering specimens of use. The Board may consider  the evidence as to third-party use of the designation in the marketplace.

Examining Attorney Kevin G. Crennan provided evidence of third party use of the phrase not only in the real estate field but in related fields. Applicant submitted third-party registrations for other slogans and taglines (e.g., WHERE’S THE BEEF, JUST DO IT, FINGER LICKIN’ GOOD, EAT FRESH), as examples of the registrability of slogans and taglines, That evidence was, of course, irrelevant to the proposed mark at issue.

Applicant argued that THE NEXT MOVE IS YOURS requires several mental steps to discern the meaning of the phrase and does not immediately and merely provide an informational message or idea, but the numerous third-party uses gave strong support to the examining attorney's position that the phrase is a commonplace message or widely used expression in many different industries that “conveys an ordinary, familiar, well-recognized concept or sentiment.”

Here, the third-party Internet evidence in the record demonstrates general use of THE NEXT MOVE IS YOURS in advertising to consumers and to businesses in a variety of industries. This evidence shows that THE NEXT MOVE IS YOURS would be perceived not as a source identifier, but instead as a widely-used phrase, specifically, a call to action or directive that the consumer or business contact the entity that is advertising the particular service.

The Board noted that the NEXT MOVE IS YOURS has a double meaning in the context of real estate services, but it is not a "significant" double entendre since both meanings are informational. "[T]he primary significance of THE NEXT MOVE IS YOURS remains a commonly used call to action by advertisers to consumers and businesses as well as an informational slogan used by realtors and moving companies."

The Board concluded that consumers will not perceive the proposed mark as a source indicator pointing uniquely to Applicant. Instead, consumers services will perceive THE NEXT MOVE IS YOURS as a commonly used informational slogan by multiple entities.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Move along. Not much to see here.

Text Copyright John L. Welch 2020.

Tuesday, September 08, 2020

TTABlog Test: Is CLINCH PICK for Knives Confusable with CLINCH DRIVE for Wrenches?

The USPTO refused to register the mark CLINCH PICK for "Military and tactical knives; fixed bladed knives" [PICK disclaimed] on the ground of likelihood of confusion with the registered mark CLINCH DRIVE for "Hand tools, namely, wrenches" [DRIVE disclaimed]. Given the disclaimers, the marks seem pretty close. What about the goods? How do you think this came out? In re Shivworks Products Group, LLC, Serial No. 88330418 (September 4, 2020) [not precedential] (Opinion by Judge George C. Pologeorgis).

Sure enough, the Board found that, although the meanings or connotations of the words PICK and DRIVE may differ, consumers are likely to place more significance on the initial and distinctive word CLINCH. Viewing the marks in their entireties, the Board found them to be more similar than dissimilar.

As to the goods, the examining attorney maintained that both applicant’s and registrant’s goods are a type of hand tool often found in the same shopping category called "KNIVES and TOOLS," as illustrated by screenshots from several online retailers. In addition, some manufacturers offer a product called a multi-tool which commonly includes knives and wrenches as components. Furthermore, he asserted, knives and wrenches are provided "as both survival and utility goods meant to be used together for a variety of projects and situations." Thus, the involved goods are similar or complementary in terms of function and therefore are related for likelihood of confusion purposes.

The Board threw a monkey wrench into the examining attorney's argument. "While the evidence submitted by the Examining Attorney  . . .  demonstrates that Applicant’s and Registrant’s goods travel in similar trade channels and are offered to overlapping classes of consumers, the evidence of record nonetheless is insufficient to show that a single entity provides both Applicant’s and Registrant’s goods under a single mark."

The fact that the involved goods are found under the same shopping category, “KNIVES and TOOLS,” does not necessarily show that the goods are related for likelihood of confusion purposes. "Indeed, the shopping category itself delineates the goods by identifying them separately." Moreover, neither applicant or registrant offers a multi-tool with a wrench and a knife, and in any case the multi-tool examples of the examining attorney include folding knives, not fixed blade knives.

In sum, the USPTO's evidence failed to show that the involved goods are related.

And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: How did you do? Do you have a fixed blade knife in your home tool box?

Text Copyright John L. Welch 2020.

Friday, September 04, 2020

Lego's BRICKHEADZ Applications Run Into TTABrick Wall

Nothing clicked for Lego in its attempt to register the mark BRICKHEADZ, in standard character and logo form, for “computer game software” and “construction toys; toy construction blocks and connecting links therefor; toy figures." The Board blocked registration, finding the marks likely to cause confusion with the registered mark BRICKHEADZ (in standard characters), for “education services, namely, providing classes and educational children’s parties in the field of construction toys to promote, [sic] creativity, critical thinking, and social development as wells [sic] as lessons from science, technology, engineering, math, language arts and social studies.” The Board also upheld a requirement that Lego disclaim BRICK in the logo mark application. In re LEGO Juris A/S, Serial Nos. 87886005 and 87886027 (September 2, 2020) [not precedential] (Opinion by Judge Peter W. Cataldo)

Likelihood of Confusion: Lego argued that the marks have different connotations in context: for its toys, BRICKHEADS refers to the shape of the toys; for the cited services, however, BRICKHEADZ "gives the impression of referring to the tutors, teachers and mentors offering and administrating the services, i.e., they are aficionados, like "gearheads' are enthusiasts for new technology, or for motoring, 'wireheads' are hardware hackers/experts, 'deadheads' are fans of the Grateful Dead."

Lego's argument, lacked a solid base. Lego failed to provide any supporting evidence other than dictionary definitions. "Simply put, there is no evidence that the providers of Registrant’s services refer to themselves as 'brick heads,' or, more importantly, that consumers of Registrant’s services so perceive or identify them." Moreover, even if their connotations differed, the other similarities between the marks sufficed to prove their similarity. Likewise, the Lego logo mark and the cited mark "are much more similar than dissimilar in appearance, sound and connotation and, overall, convey highly similar commercial impressions."

As to the goods and services, Examining Attorney Alison Keeley built a tower of evidence, including website excerpts showing that Lego itself offers educational services to early learning, primary and secondary students in the fields of social and emotional development, science, technology, language, engineering and math. Moreover, third-party website evidence revealed the offering, under the same mark, of both computer game software and building toys as well as educational services related to the toys and software. And some 14 third-party registrations covering goods and services similar to those involved here, were made of record.

Lego claimed that, in order to prove relatedness, "something more" is required than the mere fact that the goods and services are used together. That argument collapsed because, unlike in St. Helena Hospital (involving hospital-based weight and lifestyle services and printed materials on the subject of physical activity and fitness), "the relatedness of construction toys, educational services in the field of construction toys, and broadly identified computer game software, which may include games featuring construction games and toys, is much more apparent." Here the relatedness of the goods and services "is far from obscure or generally unrecognized."

Disclaimer: Lego's specimen of use stated "The Flash LEGO BrickHeadz construction character is fun to build using colorful LEGO bricks." Third-party websites describe Lego's services and related goods as consisting in part of “bricks." Lego, of course, argued that its logo mark is unitary, but the Board took the Lego logo apart, finding that that "consumers would not view the term 'BRICK' as inseparable from the remainder of the mark."

The Board concluded that the term “BRICK” is descriptive and Lego’s mark is not unitary. Therefore, the term “BRICK” was subject to the disclaimer requirement.

Read comments and post your comment here.

TTABlogger comment: Is there an after market for used Lego blocks?

Text Copyright John L. Welch 2020.