PRECEDENTIAL No. 13: TTAB Finds Two Different Shades of Green Not Confusable for Medical Gloves

In an rare Section 2(d) refusal involving color marks, the Board reversed a refusal to register, on the Supplemental Register, the color green (below left) as applied to “Medical examination gloves” in view of the registered mark shown below right (also on the Supplemental Register), for the color green as applied to the exterior of “Gloves for medical use; Protective gloves for medical use." Applicant Medline described its proposed mark as "“the color green (Pantone 2274C)," while the cited registration refers to another shade, “the color green Pantone 7488U." The Examining Attorney maintained that the marks should have been described in ordinary language as the color "green," but the Board disagreed. It then found that the two shades of green "would be viewed and remembered, at most, as distant relatives in the green family," and it concluded that confusion as to source is "not likely." In re Medline Industries, Inc., Serial No. 87680078 (March 25, 2020) [precedential] (Opinion by Judge Christopher Larkin).

The Board observed that this case is "unusual" because the TTAB has issued only one predecential decision involving the issue of likelihood of confusion between two single-color marks in the nearly 25 years following the Supreme Court’s seminal decision in Qualitex: namely, In re Cook Med. Techs. LLC, 105 USPQ2d 1377 (TTAB 2012) ["teal" for applicant's medical devices confusable with registrant's "blue" for catheters). [TTABlogged here].

Strength of the Cited Mark: Applicant Medline argued that many third parties "use different shades of green for medical gloves," that more than 40 different green medical gloves are available,” and that many of those are more similar in color to the cited mark than is its mark. Therefore, it asserted, “[i]n such a crowded field, ‘customers will not likely be confused between any two of the crowd and may have learned to carefully pick out one from the other.’” The Examining Attorney asserted that  these third-party uses were not probative because there was no showing that any of the manufacturers or providers of those gloves use the color green as an identifier of source. The Board sided with the Examining Attorney.

In Cook Medical, the Board found the absence of evidence of use or registration of color marks in the medical field tended to show that the mark there cited (the color "blue" for catheters) "is unique or at least not coexisting with similar marks in the field." Thus Cook Medical teaches that what is relevant is "the existence of third-party marks, not simply the presence in the marketplace of third-party goods bearing some shade of the color at issue." [Emphasis added by me].

The Board’s treatment of this factor in Cook Medical is consistent with the Federal Circuit’s analysis of the sixth DuPont factor in cases involving more traditional forms of marks such as words and designs. See, e.g., Omaha Steaks, 128 USPQ2d at 1693 (“[t]he purpose of introducing evidence of third-party use is to show that customers have become so conditioned by a plethora of such similar marks that customers have been educated to distinguish between different [such] marks on the bases of minute distinctions.”) (internal quotations and quotation marks omitted omitted)).

The Board observed that none of the third-party green medical gloves proffered by Medline are displayed in a way that identifies or refers to green or a particular shade of green as a trademark, and so "it is very unlikely that the colors or shades of green used by third parties on medical gloves would be perceived as marks." The Board therefore found the sixth du Pont factor to be neutral.

Thirteenth du Pont Factor: Nonetheless, under the thirteenth du Pont factor, the Board may consider "[a]ny other established fact probative of the effect of use.” DuPont, 177 USPQ at 567. Noting that the cited registration is on the Supplemental Register, the Board found that "the third-party non-trademark uses of shades of green on medical gloves tend to impair the cited Supplemental Register mark’s ability to acquire distinctiveness, and to limit its scope of protection if it did acquire distinctiveness," and therefore the evidence of third-party use of the color green by third parties "corroborates the weakness of the cited mark and its limited potential scope of protection," and "weighs against a likelihood of confusion."

Similarity of the Marks: The Board chose to consider the issue of the similarity of the marks "from the perspective of both purchasers of bulk medical supplies and the end users of the goods, as post-sale confusion as well as point-of-sale confusion is recognized."

Although the Examining Attorney asserted that the “applied-for mark is the color green” and the “cited mark is the color green,” neither the cited registration nor the application describes the claimed color simply by a “general term.” The registration describes the claimed mark as “the color green Pantone 7488U,” while Medline's application states that its mark is “the color green (Pantone 2274C).” The Examining Attorney argued that the colors should have been described in ordinary language, as the color "green," and that each mark is simply a shade of green. The Board disagreed.

“[M]arks designating commercial color identification systems, such as PANTONE . . . may appear in connection with a color identifier in the description of the mark, because greater precision in identifying the color may be critical in accurately describing the mark and such third-party use is an intended use of commercial color identification-system terminology.” TMEP § 808.02.

Because the drawings in the application and cited registration are in color and show the particular shades of green claimed, and because both refer to Pantone designations to identify a specific shade of green, the Board concluded that it "cannot simply read one color claim to encompass the other claimed color, as in Cook Medical."

Against the backdrop of the prominent display of the claimed marks on the goods, and acknowledging the inherent subjectivity of our determination, we find that there are significant differences in visual appearance between Registrant’s shade of green and Applicant’s shade of green. As shown in the registration drawing, Registrant’s claimed shade is a bright, attention-grabbing hue that is squarely within the green color family and would be perceived and recalled as such. *** Even when not viewed in proximity (or in comparison) to Registrant’s mark, Applicant’s claimed mark, as shown in the application drawing, appears as a subdued, pale shade that would be perceived as somewhere on the outer periphery of the green color family.

Observing that Cook Medical (quoting Professor McCarthy) refers to the issue of the similarity of two color marks  as “really nothing more than a subjective ‘eyeball test,’” Cook Med., 105 USPQ2d at 1381 (quoting MCCARTHY § 7:45), the Board found that the marks at issue "would be viewed and remembered, at most, as distant relatives in the green family."

[C]onsumers with an imperfect or even dim recollection of Registrant’s bright shade, and who have been exposed to the use of multiple other shades of green on medical gloves and are then exposed to Applicant’s pale shade, are not likely to view the two shades as similar, or to view gloves bearing them as being the product of one and the same producer.

And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Much of the Board's extensive discussion involved comparing, contrasting, and distinguishing Cook Medical from the instant scenario.

Text Copyright John L. Welch 2020.

TTABlog Test: Is FETAL LIFE Merely Descriptive of Fetal Health Signal Monitors?

The USPTO refused to register the proposed mark FETAL LIFE for fetal health signal monitors and related goods, finding the mark to be merely descriptive under Section 2(e)(1). Applicant argued that the term has several meanings and is at most suggestive of a function, feature or characteristic of its goods. How do you think this came out? In re Fetal Life, LLC, Serial No. 87938891 (March 24, 2020) [not precedential] (Opinion by Judge Peter W. Cataldo).

Applicant got off on the wrong foot when it attempted to submit into evidence, via its brief, certain Google brand search results. Not only was the submission untimely, but applicant did not submit the actual web pages, only summaries.

Also in its brief applicant asked that, in the event that the Section 2(e)(1) refusal was upheld, the subject mark be registered on the Supplemental Register. However, the Examining Attorney correctly pointed out that the application was filed under the intent-to-use provision of Section 1(b), and no amendment to allege use was file. Therefore the mark is ineligible for registration on the Supplemental Register, and the Board gave applicant's request no consideration.

As to the merits, the Examining Attorney argued that the proposed mark merely describes a function or purpose of the goods, namely, that they monitor or sense the existence of a fetal human being (i.e, "life"). The Examining Attorney relied on four websites from medical and medical technical trade journals wherein the term “fetal life” is used in the context of various aspects of prenatal health.

This evidence shows use of the term “fetal life” in connection with the challenges of detecting, monitoring and assessing health signals from fetuses. Further, we agree with the Examining Attorney that Applicant’s goods may be used, inter alia, to detect and monitor various fetal health signals.

However, the Board agreed with Applicant that the Examining Attorney’s evidence was insufficient to show that FETAL LIFE merely describes a particular function or feature of Applicant’s goods. As to the four journal articles, they are technical in nature and there was no evidence regarding their readership of circulation.

“Fetal life” is a nebulous term in these four articles. It is impossible to determine whether its use in them simply represents use of the term in context, or indicates use of the term to describe some particular aspect of neonatal health. As a result, the Examining Attorney’s slim record evidence fails to demonstrate that “fetal life” describes a significant feature, aspect or characteristic of the recited goods or their purpose such that the mark FETAL LIFE as a whole may be merely descriptive of thereof. To the extent that Applicant’s goods may be used, inter alia, to detect or monitor “fetal life,” imagination or additional thought is required to reach that conclusion.

Noting that doubts as to mere descriptiveness are to be resolved in an applicant's favor, the Board reversed the refusal.

Read comments and post your comment here.

TTABlog comment: Seems descriptive to me. A proposed mark can be merely descriptive even if no one else uses it, and the Examining Attorney is not required to show that the phrase is already in use. Looking at the mark in the context of the goods, I think it conveys immediate information that the purpose of the goods is to check on the life of the fetus.

Text Copyright John L. Welch 2020.

"FULL OF FLAVOR FREE OF GUILT" for Vegetable-Based Snacks Not Confusable WIth "GUILT FREE" for Frozen Confections, Says TTAB

Opposer Yarnell Ice Cream's Section 2(d) opposition melted away when the Board found this Applicant Outstanding Foods free of guilt in seeking to resister the mark FULL OF FLAVOR FREE OF GUILT for "vegetable based food products, namely, vegetable based snack foods; meat substitutes" [FULL OF FLAVOR disclaimed]. The Board ruled that Yarnell failed to prove a likelihood of confusion with the registered mark GUILT FREE for frozen confections.The Board's 47-page decision was sprinkled with several interesting issues. Yarnell Ice Cream, LLC v. Outstanding Foods, Inc., Opposition No. 91244684 (March 7, 2020) [not precedential] (Opinion by Judge Marc A. Bergsman).

Trial by Consent: Yarnell submitted into evidence 15 additional registrations for GUILT FREE or various other products, including soft drinks and cookies, and it provided testimony that its mark is licensed for use for diverse food products. Applicant touched on these other registrations and uses in its briefing, but it objected to consideration of products other than Yarnell's frozen confections.

The Board found that, although Applicant did not object to the submission of these unpleaded registrations, Yarnell had not fairly apprised Applicant that it would rely on these additional registrations.The Board therefore refused to consider them.

Goods and Trade Channels: Yarnell pointed to a single website showing vegetable-based snacks and frozen confections being sold under the same mark. However, there was "no testimony or evidence showing what sort of commercial impact these products have made." Yarnell relied on the fact that the parties' goods are "snacks," but that was not enough to convince the Board that the involved goods are related.

As to channels of trade, the Board must presume that "both parties offer their vegetable based snacks or frozen confections in all channels of trade normal for those products and they are available to all classes of consumers for those products." The Board found, however, that this factor "only weighs slightly" in Yarnell's favor "because there is no evidence that the same consumers will encounter the products in the same marketing milieu (i.e., that they are sold in close proximity to one another)."

The Board did agree with Yarnell that the involved goods are low cost items that are purchased with less care than expensive products.

Strength of Opposer's Mark: As to the inherent or conceptual strength of Yarnell's mark, the Board found that "When Opposer uses GUILT FREE in connection with frozen confections or frozen dairy confections, it suggests that a person may enjoy the frozen treat [without] remorse, shame or guilt due to the calories in the frozen treat." Applicant submitted 25 third-party registrations incorporating the word “Guilt” used in connection with food, and 13 Internet website "using marks that engender the 'Guilt Free' commercial impression."

Although Yarnell licenses others to use the GUILT FREE mark, those uses are in a manner that is "unlikely to point to Applicant as the source of the products." "Based on the commercial impression engendered by the term 'Guilt Free' and the third-party registrations and use of marks incorporating variations of the word 'Guilt' to engender the commercial impression of a food a person can eat without remorse, we find that Opposer’s mark GUILT FREE is suggestive." [With regard to these third-party items, doesn't Omaha Steaks require that the goods be related to Opposer's goods? The Board just got through saying that snacks and frozen confections are not related, and then it essentially finds the opposite, since the third party goods include various snacks like popcorn, gummy candies, and potato chips - ed.].

As to commercial strength, the Board found that, in view of Yarnell's evidence of sales of GUILT FREE frozen confections and its advertising and marketing efforts, the mark has "made little, if any, commercial impact."

The Marks: The Board found that the marks at issue engender similar commercial impressions and sound alike [sound alike? - ed.], but there are obvious differences:

Applicant’s mark FULL OF FLAVOR FREE OF GUILT is more of an advertising tagline or slogan consisting of two terms, “Full of Flavor” followed by “Free of Guilt.” Applicant’s mark rolls off the tongue because of the alliteration of the letter “F” and the uniform, rhythmic structure and cadence of the two terms thereby distinguishing Applicant’s mark from Opposer’s mark when compared in their entireties.

Concluding that marks conveying a "guilt free" commercial impression in connection with food items should be accorded a narrow scope of protection, the Board found the marks sufficiently different to avoid confusion.

Conclusion: The Board dismissed the opposition.

Read comments and post your comment here.

TTABlog comment: You may remember Yarnell from its recent failed attempt to overturn a trifusal of the mark SCOOP for frozen confections promoted and distributed by a mascot of that name. [TTABlogged here].

Text Copyright John L. Welch 2020.

TTABlog Test: Three Recent Section 2(d) Appeals - How Did They Come Out?

About ten years ago, a TTAB judge said to me that one can predict the outcome of a Section 2(d) case 95% of the time just by looking at the marks and the goods or services. Here are three recent decisions in appeals from Section 2(d) refusals, decided on the same day. How do you think these came out? [Answers in first comment].

In re Auto Parts Avenue, LLC, Serial No. 87804250 (March 20, 2020) [not precedential] (Opinion by Judge Peter W. Cataldo). [Section 2(d) refusal of AUTO PARTS AVENUE for "Lights for vehicles; rear lights for vehicles; tail lights for vehicles" and for "Automotive door handles" [AUTO PARTS disclaimed], in view of the registered mark AUTOMOTIVE AVENUES for "Automobile dealerships; retail store services featuring automotive accessories" and "Automotive maintenance and repair" [AUTOMOTIVE disclaimed]].

In re James R. Fonda, Serial No. 86817837 (March 20, 2020) [not precedential] (Opinion by Judge Jonathan Hudis). [Section 2(d) refusal of FIRST INDEPENDENT CHURCH OF SCIENTOLOGY for "spiritual ministry services" in light of the registered mark SCIENTOLOGY for"religious and ministerial services including pastoral counseling"].

In re Immobiliare M.V. S.R.L., Serial No. 79154979 (March 20, 2020) [not precedential] (Opinion by Judge Jyll Taylor) [Section 2(d) refusal of THE ORIGINAL HOOLI and Dog Head Design (shown below) for "clothing, footwear, and headgear, namely, tops, bottoms, jackets, suits, dresses, hats and footwear, except for t-shirts" [THE ORIGINAL disclaimed] in view of the registered mark" HOOLI for “clothing, namely, t-shirts"].

Read comments and post your comment here.

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

Text Copyright John L. Welch 2019.

TTABlog Test: How Did These Four Appeals From Mere Descriptiveness Refusals Turn Out?

The TTAB recently ruled on the appeals from the four Section 2(e)(1) mere descriptiveness refusals summarized below. Let's see how you do with them, keeping in mind that the Board affirms, by my calculation, some 90% of these refusals. Answer(s) will be found in the first comment.


In re DeSean Ramsey DBA BearArms Bracelets, Serial No. 87708731 (March 18, 2020) [not precedential] (Opinion by Judge Cindy B. Greenbaum). [Mere descriptiveness refusal of BULLET BRACELET for "Bracelets; Bracelets made of paracord; Jewelry" [BRACELET disclaimed]. Applicant argued that its goods are made from spent (fired) or empty pistol shell casings and paracord, rather than actual bullets.].

In re ZF Friedrichshafen AG, Application Serial No. 79231720 (March 17, 2020) [not precedential] (Opinion by Judge Angela Lykos). [Section 2(e)(1) mere descriptiveness refusal of SOUND.AI for "Sensors for detecting sound waves; electronic control and regulating apparatus for operating motor vehicles; driver assistance systems for motor vehicles, based on the detection of sound waves; computer hardware and software for operating motor vehicles." Applicant pointed out the lack of evidence of third-party use of “sound” and “AI” together to describe any goods or services.].

In re Night Shift Brewing, Inc., Application Serial No. 87321948 (March 17, 2020) [not precedential] (Opinion by Judge David K. Heasley). [Mere descriptiveness refusal of  BEAN PORTER for "beer; porter." Applicant maintained that the mark is a double entendre because "the word BEAN evokes the city of Boston (oft nicknamed 'Beantown'), as it is located in Everett, Massachusetts, on the outskirts of the greater Boston metropolitan area, and uses BEAN PORTER in collaboration with Bean Snowboards, also located in the Boston area."].

In re Acacia Group LLC, Serial No. 87422774 (March 17, 2020) [not precedential] (Opinion by Judge Jonathan Hudis). [Mere descriptiveness refusal of REPOETF in the stylized form shown below, for various financial and advisory services. Applicant asserted, inter alia, that the stylization of its mark, with the "ETF" portion appearing like a mathematical exponent, makes it merely suggestive].

Read comments and post your comment here.

TTABlog comment: See any WYHAs here?

Text Copyright John L. Welch 2020.

TTAB Affirms Section 2(e)(5) Functionality Refusal of Bathtub Drain Cap Configuration

Yet another product configuration "mark" failed to clear the Section 2(e)(5) hurdle, as the Board affirmed a refusal of the proposed mark shown below, finding it to be de jure functional for "Plumbing products, namely, a bathtub overflow drain cap." After a detailed review, the Board found that applicant's own utility patents were "sufficient to make the determination of functionality." It declined to reach the issues of failure-to-function under Sections 1, 2, and 45, and acquired distinctiveness under Section 2(f). [Griff Thomas reported here on the oral argument in this case]. In re WCM Industries, Inc., Serial No. 87555014 (March 17, 2020) [not precedential] (Opinion by Judge Karen Kuhlke).

In Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982)), the Supreme Court stated that a design configuration is de jure functional if it is “essential to the use or purpose of the article” or if it “affects the cost or quality of the article.” In TrafFix Devices, 58 USPQ2d at 1006, the Court made it clear that if a design is functional under Inwood, there is no need to consider the existence of available alternative designs or whether there is a competitive necessity for the feature.

Applicant, in arguing for registrability, focused on "the specific shape of the opening, the smooth top, and the curvature into the perpendicular sidewalls." Reviewing applicant's patents, the Board found that "the product configuration mark results from the utilitarian snap on feature. The size of the cover is dictated by the curvature of the tub, the depth of the side walls is dictated by the requirement to be able to snap on and allow water flow but not too deep as that is aesthetically unpleasant."

Applicant argued that its utility patents protect the functional aspects of the interior of the cover, not the outward face and sidewall, which provide an aesthetically pleasing design. Moreover, it argued that the shape of the slot makes the water drain less quickly than in other configurations, and therefore the device does not work better in this shape. Applicant acknowledged the utilitarian aspect of a drainage hole [i.e., de facto functionality] in allowing overflow water to drain, but it argued that the "style of the slot is otherwise a design consideration – not a functional one." The Board was not impressed.

The overall configuration is directed by utilitarian concerns of an overflow cover that is used to cover the round overflow pipe and plate while allowing water to flow through the drainage hole. The product configuration makes the overflow cover easier to install (no screws, rounded configuration snaps on to cylindrical retainer nut) and safer (no screws so smooth rounded surface to avoid abrasion on the skin). In addition, the drainage opening encompassed by the sidewall allows for the circular overflow cover to snap onto the circular retainer nut.

The Board found that "the evidence of record, assessed in its entirety, establishes that Applicant’s design is functional because it is essential to the use or purpose of the product." The Board noted that, "while the rounded ends of the drainage hole may not be 'essential' they are too incidental to transform the overall functionality of the applied-for mark into a capable mark."

For the sake of completeness, the Board went on to consider the remaining Morton-Norwich factors. Applicant's advertising was directed to "use of a 'screwless' or 'no screw' cap," but the Board found a connection between these statements and the advantage of "the cylindrical shape with sidewalls [that[ accommodates the snap on feature attaching to a circular retainer nut." As to the alternative designs that Applicant proffered, the Board was unable to discern whether these designs "achieve the snap on utility, which requires, for example, a wall of a certain depth that snaps onto a circular nut." Finally, the evidence did not support a finding "that the cost of manufacture for Applicant’s goods gives Applicant a competitive advantage."

Examining Attorney Heather A. Sales suggested that the design is also aesthetically function, since Applicant asserted that its covers "snap on and off, making them easily interchangeable to match the décor of the room." The Board, however, found that "the issue of functionality relates more to utility than aesthetics. *** [I]t is the snap on utility which dictates, in part, the 'design' and allows overflow covers to be interchangeable to match décor."

And so the Board affirmed the Section 2(e)(5) refusal.

Read comments and post your comment here.

TTABlog comment: Even if one clears the first hurdle to registration of a product configuration (Section 2(e)(5)), a substantial second hurdle stands in the way - Section 2(f) acquired distinctiveness. Few product configurations reach the finish line.

Text Copyright John L. Welch 2020.

JUSTICE NETWORK Confusable With JUSTICE CENTRAL For Television Services, Says TTAB

[This guest post was written by John L. Strand, Shareholder in the Trademark and Litigation Groups at Wolf Greenfield]. Entertainment Content, owner of registrations for the marks JUSTICE CENTRAL and JUSTICECENTRAL.TV, opposed Cooper Holdings’ application for the mark JUSTICE NETWORK, claiming a likelihood of confusion under Section 2(d). Both parties used their respective marks in various forms of television programming. Applicant Cooper Holdings submitted 12 third-party registrations for marks continuing the word "Justice" for broadcasting-related services, in arguing that "Justice" is a weak formative. The Board concluded, however, that justice was on the side of opposer. Entertainment Content, Inc. v. Cooper Holdings, Inc., Opposition No. 91223121 (Mar. 11, 2020) (not precedential) (Opinion by Judge Linda A. Kuczma).

Similarity of Services – As is “well-settled” in oppositions based on registered marks, the Board focused on the services listed in the opposed application and those listed in the pleaded registrations. The application and registrations generally were directed to different forms of “television programming services,” but opposer’s services were narrower than applicant’s because they were limited to “programs in the field of law and courtroom legal proceedings.” However, since applicant’s recitation of “television programming services” had no limitation regarding subject matter, in the Venn diagram of the parties' service there was overlap and the Board therefore found the services “legally identical.”

Similarity of Marks – As is common when the opposer is relying on different marks and registrations for its opposition, the Board focused only on the mark it found “most pertinent” for its du Pont analysis, i.e., the JUSTICE CENTRAL mark. Ultimately, the Board found the two marks, JUSTICE CENTRAL and JUSTICE NETWORK, to be similar and it therefore weighed this factor in favor of finding a likelihood of confusion.

The Board started by finding that “’Justice’ is the dominant and first element of Applicant’s JUSTICE NETWORK mark, which is identical to the dominant first term in Opposer’s JUSTICE CENTRAL mark,” because “[c]onsumers in general are inclined to focus on the first word or portion in a trademark.” Just as important, the Board’s concluded that the word “network” is “highly descriptive, if not generic,” and so “has less source-identifying significance and is clearly subordinate.” Once it focused on the similarity of the word JUSTICE between the marks, and discounted the difference between “network” and “central,” the Board’s conclusion on this du Pont factor was largely inevitable.

Applicant Cooper Holdings pointed to two previous Board decisions – one finding no likelihood of confusion between DEER-B-GON and DEER AWAY (Safer, Inc. v. Oms Invs. Inc., 94 USPQ2d 1031 (TTAB 2010)) and the other finding no likelihood of confusion between SMART BALANCE and SMART ONES (ProMark Brands, Inc. v. GFA Brands, Inc., 114 USPQ2d 1232 (TTAB 2015) (TTablogged here) – but the Board found them to be distinguishable. In the Safer case, DEER did not have a source-indicating significance, unlike JUSTICE here. In ProMark, there was a different “marketing emphasis” between the parties’ marks, and a “long history of conflict-free co-existence of the parties’ marks, and … survey and expert testimony.” The Board did not find those elements present here.

Strength of Opposer’s Mark – Under this du Pont factor, the Board considers “[t]he number and nature of similar marks in use on similar goods,” and “addresses marks similar to an opposer’s registered mark, to demonstrate the strength or weakness of that mark.”

Cooper Holdings relied on “17 active third-party registrations for marks containing the term ‘Justice’ to show the weakness of ‘Justice’ in Opposer’s and Applicant’s marks.” The Board, however, dismissed the significance of several of these registrations: It found some to be cancelled, one not of record in the proceeding, and five to cover “inapposite goods or services.” The Board ended up analyzing in more depth 12 registrations that were “arguably probative” since they involved services related to television or webcasting, including CELEBRITY JUSTICE, JUSTICE LEAGUE, LAW & JUSTICE, HARD JUSTICE, WHEEL OF JUSTICE, THE JUSTICE HOUR, MAIN JUSTICE, CAJUN JUSTICE, BIG EASY JUSTICE, JUSTICE WOMAN, JUSTICE FOR ALL, and SIMPLE JUSTICE.

Looking more closely at these 12 registered marks, the Board found, for various reasons, that “the third-party registrations that arguably support the position taken by Applicant number only seven.” And from there – considering there was no evidence concerning use of these registered mark – the Board found that these seven registrations only evidenced “some weakness” in the parties’ marks.

Actual Confusion and Concurrent Use – Opposer Entertainment Content submitted a declaration from an associated VP in an attempt to prove the existence of actual confusion in the marketplace. However, as many times happens with such declarations, the Board largely dismissed the testimony, finding “it merely provides non-detailed conclusory testimony regarding the putative beliefs of such third-parties. His testimony does little, if anything, to establish or support actual confusion between JUSTICE CENTRAL and JUSTICE NETWORK.” The Board similarly dismissed “misdirected communication evidence,” finding that “[w]ithout direct testimony from the confused individuals, there is insufficient information to ascertain what they were thinking, or what caused their purported confusion.”

In the end, the Board found the “actual confusion” and “concurrent use” factors to be neutral.

Nevertheless, because the marks gave the “same overall commercial impression” and because the parties’ offer “overlapping services offered in the same trade channels to the same classes of customers,” the Board sustained the opposition.

Read comments and post your comment here.

TTABlog comment: There was no discussion of the commercial strength of opposer's marks.

Note that, in spite of various relevance and hearsay objections, the Board refused to exclude any evidence "outright," since the Board is "able to weigh all evidence and testimony appropriately."

Text Copyright John L. Strand and John L. Welch 2020.

Current Roster of TTAB Judges (March 2020)

With the recent appointments of Mark Lebow and Melanye K. Johnson, the Board’s membership now stands at twenty-seven (27) Administrative Trademark Judges. The current roster is set forth below, beginning with Chief Judge Gerard F. Rogers and Deputy Chief Judge Mark A. Thurmon, and then proceeding alphabetically.

Rogers, Gerard F. (Chief Judge): Appointed to TTAB in 1999; Prior Professional Experience: Trademark Examining Attorney; Assistant to the Assistant Commissioner for Trademarks; TTAB Staff Attorney; Education: B.A., University of Massachusetts Amherst; J.D. magna cum laude, New England School of Law.

Thurmon, Mark A. (Deputy Chief Judge): Appointed to TTAB in 2019; Prior Professional Experience: Private Practice; Adjunct Professor of Law, University of Texas School of Law; Assistant Professor of Law, Levin College of Law, University of Florida; Professor of Law at the Southern University Law Center, Southern University; Education: B.S., Louisiana State University; J.D. with high honors, Duke University School of Law.

Adlin, Michael B.: Appointed to TTAB in 2012; Prior Professional Experience: TTAB Interlocutory Attorney; USPTO Office of External Affairs; Private Practice; Education: B.A., Duke University; J.D., Boston University School of Law.

Bergsman, Marc A.: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; Trademark Managing Attorney; TTAB Interlocutory Attorney; Private Practice (Washington, D.C.); Education: B.A., Miami University of Ohio; J.D., Cleveland Marshall College of Law, Cleveland State University.

Cataldo, Peter W.: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Canisius College; J.D., Albany Law School.

Coggins, Robert H.: Appointed to TTAB in 2017; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.S., Davidson College; J.D., Wake Forest University School of Law.

Dunn, Elizabeth A.: Appointed to TTAB in 2019; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Boston University; J.D., American University Washington College of Law.

English, Christen M.: Appointed to TTAB in 2019; Prior Professional Experience: Private Practice; TTAB Interlocutory Attorney; Education: B.A., Boston College; J.D. Catholic University Columbus School of Law.

Goodman, Cheryl S.: Appointed to TTAB in 2014; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., University of Illinois; J.D., Florida State College of Law.

Greenbaum, Cindy B.: Appointed to TTAB in 2012; Prior Professional Experience: Private Practice (New York and Washington, D.C.); Trademark Examining Attorney; TTAB Interlocutory Attorney; TTAB Managing Interlocutory Attorney (2006-2011); Education: Wharton School, University of Pennsylvania; J.D., New York University School of Law.

Heasley, David K.: Appointed to TTAB in 2015; Prior Professional Experience: Private Practice (Washington, D.C.); Education: B.A., The Johns Hopkins University; J.D., University of Maryland School of Law.

Hudis, Jonathan: Appointed to TTAB in 2019; Prior Professional Experience: Private Practice (Washington, D.C. and Alexandria, Virginia); Education: B.A., State University of New York at Albany; J.D., Brooklyn Law School.

Johnson, Melanye K.: Appointed to TTAB in 2020; Prior Professional Experience: Corporate Counsel; Senior Counsel, Office of General Counsel at the U.S. Department of Health and Human Services (HHS); Education: B.A., University of Michigan; J.D., Ohio State University Moritz College of Law.

Kuczma, Linda A.: Appointed to TTAB in 2011; Prior Professional Experience: Private Practice (Chicago, Illinois); Education: B.S., St. Mary's University; J.D., Loyola University Chicago School of Law.

Kuhlke, Karen: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice (Washington, D.C.); Education: B.A., University of Kansas; M.A., Columbia University; J.D., Georgetown University.

Larkin, Christopher: Appointed to TTAB in 2016; Prior Professional Experience: Private Practice (Los Angeles, CA; New York, N.Y.); Education: B.A., Stanford University; J.D., Columbia Law School.

Lebow, Mark: Appointed to TTAB in 2020; Prior Professional Experience: Private Practice (Alexandria, Virginia); Education: B.A., Florida Atlantic University; J.D., Hofstra University School of Law; LL.M., John Marshall Law School.

Lykos, Angela: Appointed to TTAB in 2010; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice; Education: B.A., M.A., The Johns Hopkins University; J.D., Duke University Law School.

Lynch, Cynthia C.: Appointed to TTAB in 2015: Prior Professional Experience: Private Practice; Attorney-Advisor at the International Trade Commission; USPTO Assistant Solicitor: USPTO Administrator for Trademark Policy and Procedure; Education: B.A., University of North Carolina; J.D., University of Virginia School of Law.

Mermelstein, David: Appointed to TTAB in 2006: Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; TTAB Supervisory Interlocutory Attorney; Education: B.A., New College, Hofstra University; J.D., American University.

Pologeorgis, George C: Appointed to TTAB in 2015; Prior Professional Experience: TTAB Interlocutory Attorney; TTAB Attorney in the Office of Trademark Quality Review and Training; Trademark Examining Attorney; Private Practice; Education: B.A., University of Pennsylvania; J.D., George Washington University National Law Center.

Ritchie, Lorelei: Appointed to TTAB in 2008; Prior Professional Experience: Private Practice; Arbitrator and Judge pro tem, Orange and Los Angeles Counties, California; Intellectual Property Manager, U.C.L.A.; Adjunct Professor of Law, Loyola Law School, Los Angeles; Assistant Professor, Florida State University School of Law; Education: A.B., Stanford University; J.D., Columbia University.

Shaw, Thomas: Appointed to TTAB in 2011; Prior Professional Experience: Associate Solicitor at the USPTO; Managing Attorney; Senior Attorney; Trademark Examining Attorney; Education: B.A., George Washington University; J.D., University of Miami School of Law.

Taylor, Jyll: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., University of North Carolina at Chapel Hill; J.D., Howard University School of Law.

Wellington, Thomas W.: Appointed to TTAB in 2007; Prior Professional Experience: TTAB Interlocutory Attorney; Trademark Examining Attorney; Private Practice; Education: B.A., University of Maryland at College Park; J.D., American University Washington College of Law.

Wolfson, Frances: Appointed to TTAB in 2010; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice; Education: B.A., U.C. Santa Barbara; J.D., U.C.L.A.

Zervas, Albert: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice (New York and Washington, D.C.); Education: B.A. and J.D., University of Virginia.

Text Copyright John L. Welch 2020.

TTABlog Test: Is MOBILIZER Merely Descriptive of Massage Apparatus?

The USPTO refused to register the mark MOBILIZER for "massage apparatus and instruments," deeming the mark merely descriptive under Section 2(e)(1). The PTO's evidence consisted a dictionary definition and examples of use of the term “mobilizer” in various contexts. Applicant, of course, argued that the mark is merely suggestive of a function, feature or characteristic of its goods. How do you think this came out? In re Simple Mobility Tools LLC, Serial No. 87717065 [not precedential] (Opinion by Judge Peter W. Cataldo).

The Examining Attorney maintained that MOBILIZER "describes a feature, characteristic, purpose and use of applicant’s massage apparatus and instruments in that it describes their capacity to therapeutically mobilize joints." Pointing to a dictionary definition of the word, he asserted that "by its plain meaning the word MOBILIZER is descriptive of applicant’s massage apparatus and instruments in that they are used to make mobile and/or restore the power of motion to a joint." The Examining Attorney provided screenshots from various websites utilizing the term “mobilizer” to describe or identify Applicant’s goods as well as other exercise and mobility enhancing devices.

The Board was not impressed. The excerpts from applicant's website showed use of the term MOBILIZER as a mark and such terms as “mobility” and “mobilizing” to describe the functions and uses of Applicant’s goods. Third-party websites referred to certain devices as "mobilizers" (e.g., a "spinal mobilizer" and a "thoracic spine mobilizer") but the devices were not massage apparatus or instruments. Only four, at best, appeared to relate to massage apparatus or instruments.

Moreover, the dictionary definition of mobilizer, as the noun form of "mobilize," did not reveal a clear meaning relevant to applicant's goods.

Simply put, the majority of the Examining Attorney’s evidence shows that the term “mobilize” and derivations thereof are used to discuss various therapeutic devices and their uses. However, very little of the evidence demonstrates use of MOBILIZER to describe such devices

Finally, the Board noted that any doubt as to the descriptiveness of the mark should be resolved in favor of the applicant.

And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Seems pretty descriptive to me, in the context of the goods. And even if applicant were the first and only user of the term, that still doesn't mean it isn't merely descriptive of the goods.

Text Copyright John L. Welch 2020.

Precedential No. 12: Finding Clothing and Books Related, TTAB Sustains 2(d) Opposition to ENGIRLNEER

In an enervating but precedential ruling, the Board sustained a Section 2(d) opposition to registration of the mark ENGIRLNEER for "Cups; coffee cups, tea cups and mug; Lanyards for holding badges; Lanyards for holding keys; Hoodies; Shirts; Sweatshirts," finding a likelihood of confusion with the identical, common law mark for books and for educational and informational services in the STEM fields. Evidence of third-party registrations for marks covering various combinations of the involved goods and services convinced the Board of their relatedness for Section 2(d) purposes. Shannon DeVivo v. Celeste Ortiz, 2020 USPQ2d 10153 (TTAB 2020) [precedential] (Opinion by Judge Albert Zervas).

 

Priority: The opposed application was filed on November 18, 2017 under the Section 1(b), based on applicant's bona fide intention to use the mark in commerce. Opposer Shannon DeVivo was able to prove prior use of the mark for her STEM-related services through her declaration testimony regarding her interactive website, its downloadable book, and its depiction of several cartoon character "engirlneers" that provide educational information in STEM fields for young women and girls pursuing a career in these fields.

As to opposer's downloadable book (cover depicted above), the Board likened this case to In re Polar Music Int’l, 221 USPQ at 318, in which the CAFC found that the mark ABBA served as a trademark for the musical group ABBA's sound recordings because "[t]he public has come to expect and associate a certain quality, not just of sounds but of how the sounds are produced on the record and the physical qualities of the record itself, with the mark ‘ABBA.’”

Similarly, a publisher’s mark such as the term ENGIRLNEER located within the seal design may serve as more than just the source identifier for a physical good, a children’s book. It also may serve to inform the public that the subject matter of the book is of a certain quality and suitability. If in printed form, it may also identify the quality of the physical product.

The Board concluded that ENGIRLNEER similarly serves as a source indicator for applicant's book:

Thus, even though ENGIRLNEERS appears in the title of the book and is the group name for the characters in the book, the positioning of the term distant from the title of the book, its inclusion within a design, its prominent size, its appearance on the second page in conjunction with an invitation to the reader to “learn how to become an engirlneer,” and its appearance on the last page of the book, results in a separate and distinct commercial impression which performs the trademark function of identifying the source of Applicant’s book to consumers. 

The Board found that opposer had established prior rights in the mark ENGIRLNEER,

Likelihood of Confusion: Of course, since the involved marks are identical, a lesser degree of similarity between the goods/services is needed to support a finding of likely confusion. Third-party registration evidence as well opposer's evidence of use of her mark on T-shirts, tank tops, sweatshirts, hoodies, coffee mugs, stickers, postcards, greeting cards and tote bags (albeit after the filing date of the opposed application) led the Board to find that applicant's goods are related to opposer's goods and services. "Such goods tend to be collateral goods. See L.C. Licensing, Inc. v. Berman, 86 USPQ2d 1883, 1889 (TTAB 2008) ("It is common knowledge, and a fact of which we can take judicial notice, that the licensing of commercial trademarks on ‘collateral products’ has become a part of everyday life.")."

The Board breezed through the remaining duPont factors to reach its conclusion:

We find the marks are identical, the parties’ goods and services related, and the parties’ goods are subject to a low standard of purchaser care (impulse purchasing). The channels of trade and classes of customers are related, but only slightly. In view of our findings on these factors, we hold under Section 2(d) that there is a likelihood of confusion between Applicant’s ENGIRLNEER mark for her goods and Opposer’s identical ENGIRLNEER mark for her goods and services for which Opposer has demonstrated priority of use.

Read comments and post your comment here.

TTABlog comment: Not sure why this is precedential. It seems that if the parties invoke the ACR regimen, the chances of the decision being deemed precedential goes up by a factor of 3.1416.

Text Copyright John L. Welch 2020.