Friday, February 21, 2020

MANIMAL Not Confusable With GARANIMAL for Children's Clothing, Says TTAB

[This guest post was authored by John L. Strand, Shareholder in the Trademark and Litigation Groups at Wolf Greenfield]. Applicant Manimal, LLC sought to register the mark MANIMAL for a wide variety of clothing, including “children’s clothing.” Opposers Garan Incorporated and Garan Services Corp. are the makers of children’s clothing and the owners of several registrations containing the mark GARANIMAL, but the Board focused its Section 2(d) analysis only on Registration No. 0954125 for the block mark GARANIMAL for “children’s shirts and pants.” After going through the DuPont factors, the Board ultimately found that the MANIMAL mark was not likely to cause confusion with GARANIMAL. In an interesting discussion, the Board also found that applicant did not abandon the mark MANIMAL when it entered into a consent agreement allowing another company to use the mark MANIMALS for a variety of clothing items, including children’s clothing. Garan Incorporated v. Manimal, LLC, Opposition No. 91232774 (Feb. 13, 2020) (not precedential) (Opinion by Judge Marc A. Bergsman).

Section 2(d) Likelihood of Confusion Analysis: The Board dutifully analyzed each of the DuPont factors in concluding there was not likely to be confusion, but the discussions of the similarity of the goods, the strength of Opposers’ mark, and the similarity of the marks stood out.

Regarding the similarity of the goods, the applicant sells mostly athletic gear for adults, particularly wrist-wraps such as that shown above from applicant’s website. As Opposers sell children’s clothing, applicant tried to argue that the goods are “not related.” But as the Board has repeatedly stated, it “must consider the goods as the parties describe them in the application and registrations at issue.” Here, even though applicant may focus on adult clothing, it is seeking a registration including “children’s clothing,” including pants and shirts, which directly overlaps with Opposers’ listed goods.

As to the strength of the GARANIMAL mark, ultimately the Board found the marks to be “commercially strong, but not famous.” (This finding also ended Opposers’ Section 45(c) dilution claim.) The Board started its analysis with the inherent strength of the GRANIMAL mark, finding it to be “inherently strong” as a coined, fanciful term. The Board then dismissed the eight clothing registrations applicant identified with either “animals” or “-imals” as suffixes, finding, as the Board often will do, that eight registrations were a “far cry” from the “quantum of evidence of third-party use and third-party registrations that was held to be significant in both Jack Wolfskin … and Juice Generation … .”

Opposers presented several seemingly strong pieces of evidence concerning the commercial strength of its marks, including use of the mark since 1972, “substantial” sales and advertising expenditures, and a reference to the GARANIMAL clothing in a third-party book. Despite this evidence, the Board found the Opposers did not “clearly” establish fame given, in part, that it provided no market share information or distribution information about the third-party book.

Finally, although the Board did not rely on the eight other “-imals” registrations when analyzing the strength of the GARANIMAL mark, it did rely on these other marks to conclude, “Opposers must believe that various ‘animal’ or ‘imals’ suffix marks can be used and registered side by side without causing confusion provided there are minimal differences between the marks.” This admission, along with other evidence not discussed here, led the Board to conclude “that the marks are not similar in appearance, sound, connotation or commercial impression.”

Balancing the DuPont factors, the Board ultimately found “the dissimilarity of the parties’ marks outweighs the other applicable DuPont factors,” and concluded “Applicant’s mark MANIMAL for men’s, women’s and children’s clothing listed in the description of goods is not likely to cause confusion with Opposers’ GARANIMAL marks for clothing.”

Abandonment: During prosecution of the application at issue, the Examining Attorney cited another application for the mark MANIMALS that covered a wide variety of clothing, including infant and toddler clothing, as a potential Section 2(d) bar. Applicant traversed this potential bar by submitting a consent agreement with other application’s owner (the other application eventually did issue as a registration). In that agreement, the other applicant agreed to amend it description of goods to read “shirts featuring animals with humanoid characteristics,” and gave consent for this applicant to use and register MANIMAL.

Opposers argued that the consent agreement was merely a “naked consent” as this applicant had no right or ability to control the nature of the other party’s goods. Analyzing the portion of Section 45 that deals with abandonment, the Board observed that even if there was a “naked consent,” the Opposers still had to show that the agreement “caused Applicant’s mark to lose its significance as a trademark.” As Opposers put forth no such evidence––there was not even any evidence the third-party was still using MANIMALS––and applicant introduced evidence showing continuous use of its MANIMAL mark, the Board dismissed Opposers’ abandonment claim.

With that, the Board dismissed the opposition in its entirety.

Read comments and post your comment here.

TTABlog comment: Seems like the Board ran an end-run around Jack Wolfskin and Juice Generation .

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

Thursday, February 20, 2020

TTAB Affirms 2(e)(3) Geographical Deceptiveness Refusal of EMPORIO ITALIA for Bedding

In a rare Section 2(e)(3) decision, the Board affirmed a refusal to register the proposed mark EMPORIO ITALIA for "bed sheets; pillow cases; comforters; bedspreads," finding the mark to be primarily geographically deceptively misdescriptive. Applicant argued that the mark merely suggests goods of high quality or style, and that, because of the high price of Italian bedding, only a few consumers make a connection between Italy and bedding. The Board disagreed on both counts. In re Branded LLC, Serial No. 87749455 (February 14, 2020) [not precedential] (Opinion by Judge Christen M. English).

Section 2(e)(3) bars the registration of a mark that is primarily geographically deceptively misdescriptive of the identified goods or services. A mark qualifies as primarily geographically deceptively misdescriptive if:

  1. the primary significance of the mark is a generally known geographic location;
  2. the goods do not come from the place named in the mark, but the relevant public would be likely to believe that the goods originate there; and
  3. the misrepresentation is a material factor in the purchaser’s decision to buy the goods in question.

The involved application stated that "The English translation of 'EMPORIO ITALIA' in the mark is 'EMPORIUM ITALY.'" There was no dispute that the doctrine of equivalents applied here. The Board found not only that those proficient in Italian would stop and translate the mark, but also that "non-Italian speaking American consumers would readily perceive the mark as 'Emporium Italy' because the English translation is substantially similar in appearance and sound to Applicant’s mark EMPORIO ITALY."

As to the first prong of the test, the Board found that, considering the mark in its entirety, the primary significance of EMPORIO ITALIA is a generally known geographic location (Italy).

The evidence shows that Italy is not an obscure, remote or minor geographic location, but rather a European country with a population of more than 58 million and exports of more than $506 billion. Moreover, . . . the evidence establishes a connection between Italy and the goods covered by Applicant’s application – “bed sheets; pillow cases; comforters; bedspreads.” The word “emporia” meaning “emporium” in English is defined as “a place of commerce; trading center; marketplace” and “a large store with a wide variety of things for sale,” and merely reinforces the geographic significance of the term “Italia.”

Examining Attorney Jonathan Ryan O’Rourke submitted Internet and gazetteer evidence showing that bedding and textiles are among Italy’s main exports. The examining attorney thus met the initial burden of establishing a goods-place association between Applicant’s goods and Italy.

Applicant maintained that its mark is “suggestive, arbitrary, or fanciful, such as when a geographic mark may indicate that a product is stylish or of a high quality, i.e. HYDE PARK or NANTUCKET for clothing, and FIFTH AVENUE for a car.” The Board was unimpressed: “Because there is an association between the geographic location in Applicant’s mark and Applicant’s goods, Applicant’s mark is not suggestive, arbitrary or fanciful for Applicant’s goods.”

Applicant argued that there can be no goods-place association because Italian bedding is expensive, and “only … a very small group of people are aware of Italy producing very exclusive and expensive bedding.” However, applicant offered no evidence “that the price point of Italian bedding would affect whether consumers perceive an association between Applicant’s goods and Italy.” Moreover, the articles from national and regional newspapers in general circulation demonstrated the general public’s “exposure to an association between Italy and Applicant’s goods.”

The Board concluded that there is a goods-place association between Applicant’s goods and Italy.

The second prong of the test was met because applicant stated that “[t]he goods will come from or will originate from India. The goods are not and will not be manufactured, packaged, shipped from, sold in or have any other connection with the geographic location named in the mark.”

Finally, as to third factor, the Board concluded that applicant’s misrepresentation would be a material factor in the purchaser’s decision to buy applicant’s goods.

The dictionary definitions, gazetteer entry, third-party websites and articles summarized above establish that “Emporio Italia” means “Emporium Italy”; that Italy is a well populated European country with a large economy; that bedding and textiles used in bedding, as identified by Applicant, are principal and traditional products of Italy; and that Italy is well-known for producing high-quality bedding and textiles used in bedding. We infer from this evidence that a substantial portion of customers in the market for “bed sheets; pillow cases; comforters; bedspreads” will be motivated to purchase Applicant’s goods because of the mistaken belief that the goods originate in Italy.

Read comments and post your comment here.

TTABlog comment: WYHA?

Text Copyright John L. Welch 2020.

Wednesday, February 19, 2020

MR1109, MR1108, and MR1107 Fail to Function As Trademarks for Electric Motors, Says TTAB

[This guest post was authored by John L. Strand, Shareholder in the Trademark and Litigation Groups at Wolf Greenfield.] The Board continues its roll with failure-to-function, this time affirming a refusal to register the proposed character marks MR1109, MR1108, and MR1107 for “permanent magnetic motors,” one shown below. The Board found the proposed marks were merely model designations and, therefore, the terms would not be seen source identifying marks. In re HD Medical Electronic Products Inc., Serial Nos. 87207915, 87207919, and 87207921 (Feb. 7, 2020) [not precedential] (Opinion by Judge Christopher Larkin).

As the Board explained, the key issue in failure-to-function cases is whether the proposed marks would be perceived as source indicators for the applied for goods. Here, the evidence the Examining Attorney Christina Calloway put forth that the proposed marks were merely model designations was seemingly overwhelming, including several screen shots from the Applicant’s website that specifically called out the proposed character marks as “item model number[s]” and “manufacturer part number[s].” One example is below:

(click on image for larger picture)

Applicant attempted to overcome the rejections by producing images of the motors at tradeshows, and of the product packaging in which the numbers were called out, but even some of those photographs identified the marks as a “part number”; the Applicant helpfully provided the red circle annotations:

The Board made quick work of the Applicant’s arguments that consumers viewed the character marks as something beyond model numbers, finding the “record is simply devoid of any evidence that anyone other than Applicant considers the proposed marks to be source-identifiers rather than indicators of product compatibility in automotive production and repair.” (Ed. note – The Applicant sometimes used the TM symbol after the model numbers, but that usage is just further evidence of the Applicant’s belief, not how consumers view the character marks.)

On appeal, the Applicant attempted to argue that because it had used the model numbers continuously since 2008, the marks had acquired distinctiveness pursuant to Section 2(f). But the Board made quick work of this argument on appeal because, even after the Examining Attorney twice suggested to the Applicant that it submit evidence to support a Section 2(f) claim during prosecution, the Applicant neither amended its applications nor sought to submit supporting evidence. Accordingly, as the Applicant first raised the argument on appeal, the Board found it untimely and gave it “no consideration.”

With that, the Board affirmed the three refusals to register.

Read comments and post your comment here.

TTABlog comment: WYHA?

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

Tuesday, February 18, 2020

Precedential No. 5: Opposer Proves Standing Through Trade Name Use by Its Wholly Owned Subsidiary

In this long-running battle over the mark CINGULAR for cell phones and related products, the Board bifurcated the issues so that it could first rule on whether opposer has standing to bring the proceeding. Applicants claimed that opposer had stopped using the mark CINGULAR when it became AT&T, but the Board found that "[o]pposer is the owner of a majority share in a company named AT&T Mobility II LLC, which in turn holds a 100% interest in New Cingular, which uses the term CINGULAR in its trade name." AT&T Mobility LLC v. Mark Thomann and Dormitus Brands LLC, 2020 USPQ2d 43785 (TTAB 2020) (February 10, 2020) [precedential] (Opinion by Judge Frances Wolfson).

To establish standing, an opposer must prove that it has a “real interest” in the proceeding beyond that of a mere intermeddler, and a “reasonable basis” for its belief of damage. Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). Opposer's four claims included a claim of false suggestion of a connection under Section 2(a). The Board noted that if opposer established its standing under Section 2(a), it was entitled to "rely on any available statutory grounds for opposition set forth in the Trademark Act." See A&H Sportswear Co. v. Yedor, 2019 USPQ2d 111513, *3 (TTAB 2019).

For a Section 2(a) claim, standing “does not rise or fall on the basis of a plaintiff’s proprietary rights in a term; rather, a Section 2(a) plaintiff has standing by virtue of who the plaintiff is, that is, the plaintiff’s personality or ‘persona.’” Estate of Biro v. Bic Corp., 18 USPQ2d 1382, 1385 (TTAB 1991).

We see no categorical legal bar precluding a corporate or institutional plaintiff from claiming, in a Board proceeding, a false suggestion of a connection with its trade name, where, as here, its allegations of standing are based on alleged injury from an unauthorized use of a mark that falsely suggests a connection with its persona.

in 2007, opposer legally changed its name from Cingular Wireless LLC to its current name of AT&T Mobility LLC. Opposer claimed that it may rely on use of the name CINGULAR by its controlled subsidiary, New Cingular Wireless PCS, LLC ("New Cingular"). Opposer had the burden "to show that New Cingular uses the term and that its corporate relationship with Opposer qualifies Opposer to claim the benefit of New Cingular’s use."

The Board first considered whether New Cingular uses the term CINGULAR. Applicant contended that Opposer abandoned the CINGULAR marks when it stopped using them after “making the switch” to AT&T; that Opposer’s CINGULAR registrations have expired; that New Cingular does business as AT&T Mobility and does not use its legal name (New Cingular Wireless PCS, LLC) except on formal legal documents; and that “[c]ustomer-facing interactions are under the name AT&T Mobility.”

The Board, however found that the evidence supported opposer’s contention that New Cingular uses the term “Cingular” in its trade name.

The name appears, in some cases prominently, on contracts or licenses. It would be viewed by those with whom New Cingular has entered into these agreements, such as professionals interested in the construction of cell towers as well as retail consumers purchasing cell phone wireless services under the AT&T Next program.

The evidence demonstrated that New Cingular conducts significant business in wireless communications using the trade name “New Cingular Wireless PCS, LLC.” The Board therefore concluded that "New Cingular uses CINGULAR as part of its trade name, and that the trade name is known to the relevant public."

The next question was whether use of CINGULAR by new Cingular established opposer’s standing? The Board observed that the parent corporation of a wholly owned subsidiary “can reasonably believe that damage to the subsidiary will naturally lead to financial injury to itself.” Univ. Oil Prods. Co. v. Rexall Drug & Chem. Co., 463 F.2d 1122, 174 USPQ 458, 459 (CCPA 1972). Opposer established that it owns a majority interest in AT&T Mobility II LLC, which owns a 100% interest in New Cingular. "Accordingly, Opposer has established the necessary relationship to New Cingular such that it 'can reasonably believe that damage to the subsidiary will naturally lead to financial injury to itself,'" and opposer thus proven that it has standing to pursue its false connection claim under Section 2(a).

The Board then set a schedule for discovery and trial of the substantive issues in the case.

Read comments and post your comment here.

TTABlog comment: Now AT&T has to prove its claims: (1) false suggestion of a connection under Section 2(a), (2) misrepresentation of source under Section 14(3), (3) lack of a bona fide intention to use the marks as of the filing dates of the underlying applications; and (4) that the applications are void ab initio due to an invalid assignment under Section 10(a)(1).

Text Copyright John L. Welch 2020.

Friday, February 14, 2020

TTAB Affirms Ornamentality Refusal of Green Y-Shaped Design on Harvester Machines

Applicant CLAAS KGaA failed to harvest any registrations from its applications to register the marks shown below, for forage harvesters and combine harvesters, respectively. The proposed marks each comprise "a stylized letter ‘Y’ positioned on both lateral outer contours of the harvester cladding downstream from the vehicle cab in the longitudinal direction of the harvester." The color green is claimed as a feature of the marks. The Board agreed with Examining Attorney April L. Rademacher that the marks are merely ornamental and fail to function as trademarks for the goods. In re CLAAS KGaA mbH, Serial No. 87112755 Serial No. 87112787 (February 20, 2020) [not precedential] (Opinion by Judge Christopher Larkin).

The Board observed that "[t] he critical inquiry in determining whether a designation functions as a mark is how the designation would be perceived by the relevant public.” Relevant considerations include the commercial impression made by the design, the practices of the trade, and any evidence of distinctiveness. Since applicant did not claim that either mark has acquired distinctiveness, only the first two considerations came into play, and the issue at hand was whether the proposed marks are inherently distinctive.

Applicant argued that harvesters and other large farm equipment are not typically ornamented (unlike shirts, hats, bags, jewelry, or other fashion items). Visual presentation is not crucial to the decisions of purchasers. Therefore, the markings on these products are more recognizable as trademarks than other types of goods.

Applicant maintained that "most manufacturers brand their equipment with names, logos, color and other schemes that are large, often covering major portions of the side of the harvester, tractor or other product." Thus applicant is following the customary practice in the industry.

The Examining Attorney contended that consumers typically do not perceive larger designs as trademarks. She noted applicant's admission that harvesters are often ornamented by different colors or designs, and she asserted that "consumers are use [sic] to seeing trademarks for these types of goods, including applicant’s own goods, is of lettering, which maybe [sic] large, but is small when compared to the size of applicant’s goods.”

The Board observed there was no evidence of the commercial impression actually made by the proposed marks. The evidence did show, however, that applicant has branded machines with the combination of the unusual shade of green (claimed in this mark) with the word CLAAS in large, thick, red letters.

The record shows that Applicant’s equipment consistently displays the shade of green that is claimed as part of the proposed marks, but the Federal Circuit has observed that “color is usually perceived as ornamentation. While ornamentation is not incompatible with trademark function, unless the design is of such nature that its distinctiveness is obvious, convincing evidence must be forthcoming to prove that in fact the purchasing public does recognize the design as a trademark which identifies the source of the goods." In re Gen. Mills IP Holdings, LLC, 124 USPQ2d 1016, 1018 (TTAB 2017) (quoting In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417, 422 (Fed. Cir. 1985) (internal quotation omitted)).

The Board found that applicant's "Y" designs "are simple and nondescript, especially when compared to the design marks in the third-party registrations that Applicant made of record to show that 'marks similar to that of Applicant have been registered often at the PTO.'" (see the four marks shown below)

The Board concluded that the juxtaposition of the green design on the CLAAS product shown above, with the color white bearing the CLAAS mark, "appears to be purely aesthetic, and there is nothing in the record to suggest that the placement of the green “Y” designs on the goods will serve any purpose other than ornamentation."

As to applicant's arguments regarding the conventions in the trade, the Board found no evidence to support those arguments. The record "shows that farm equipment commonly bears colors and designs, but does not show that those combinations of colors and designs . . . would automatically be recognized as source-identifiers, not ornamentation."

Finally, the third-party registrations made of record by the Examining Attorney "indicate that colors and designs appearing in various manners on farm equipment may be capable of functioning as marks, and may thus be registrable on the Supplemental Register, or may actually function as marks through the acquisition of distinctiveness, and may thus be registrable on the Principal Register.  Applicant seeks Principal Register registrations based on the inherent distinctiveness of its proposed marks, however, and we find, on the basis of the record as a whole, that consumers are not likely to view Applicant’s green 'Y designs' as marks rather than as ornamentation."

And so the Board affirmed the refusals.

Read comments and post your comment here.

TTABlog comment: Since the marks at issue were not color marks per se, but color in a particular shape, they cleared the Qualitex hurdle and were capable of being inherently distinctive.

Text Copyright John L. Welch 2020.

Thursday, February 13, 2020

Precedential No. 4: TTAB Affirms 2(a) False Association and 2(c) Consent Refusals of TRUMP-IT Logo for Utility Knives

The Board affirmed two refusals to register each of the word+design marks shown below, for "utility knives," finding that the marks create a false association with President Trump under Section 2(a), and further finding that because President Trump did not consent to use of his name, the marks also violated Section 2(c). The Board pointed out that it has no authority to rule on the constitutionality of the Trademark Act, but it considered and rejected applicant's claim that Sections 2(a) and 2(c) are unconstitutional. In re ADCO Industries – Technologies, L.P., 2020 USPQ2d 53786 (TTAB 2020) [precedential] (Opinion by Judge Marc A. Bergsman).

Rule 2.61(b) Requirement: The Board reversed a refusal based on applicant's non-responsive response to a Rule 2.61(b) request for information regarding the relationship, if any, between Applicant and President Trump. Instead, the Board chose to presume from the evasive response that there was no such relationship.

Section 2(a) False Association: In addition to protection of consumers, Section 2(a) is intended to protect a person from losing the right to control his or her identity. The evidence submitted by Examining Attorney Amy L. Kertgate established that "Donald Trump, the President of the United States, is a well-known figure," and therefore his identity "is an interest that Section 2(a) of the Trademark Act is design to protect."

The fact that Donald Trump has never used the term “Trump-It” as his name or identity does not obviate the false suggestion of a connection refusal. A term may be considered the identity of a person even if the person has not used the term. All that is required is that the mark sought to be registered clearly identifies a person (in this case, Donald Trump).

The marks at issue here include design elements that call to mind Donald Trump: both marks display his renowned hair wave and one mark includes a play on Trump’s campaign slogan “Make America Great Again.” Moreover, Trump's companies use the name “Trump” as a trademark for a wide variety of goods and services. He licenses rights to the name and the Trump name appears on buildings that he and his companies own.

The Board found that applicant's marks are a close approximation of Donald Trump's name or identity "because the marks’ design elements and wording evoke Donald Trump." As further, albeit unnecessary, support for this conclusion was the fact Donald Trump is associated with numerous goods and services.

In light of the variety of goods that are sold under the Trump name, the Board concluded that "consumers encountering utility knives bearing Applicant’s mark, shown below, will perceive Applicant’s utility knives to be just one more product for which Donald Trump has licensed the use of his name."

Considering all of the evidence of record before us, we find that (i) Applicant’s marks are a close approximation of Donald Trump’s name and identity; (ii) Applicant’s marks point uniquely and unmistakably to Donald Trump; (iii) Donald Trump has no connection with Applicant; and (iv) Donald Trump’s name and identity is of sufficient fame and reputation that when Applicant’s marks are used on utility knives, a connection with Donald Trump would be presumed. Therefore, we find that the Examining Attorney established that Applicant’s marks for utility knives falsely suggest a connection with Donald Trump.

Section 2(c): In pertinent part, Section 2(c) bars registration of a mark that "[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent." Whether consent  is required depends on "whether the public would recognize and understand the mark as identifying a particular living individual." A "name" does not have to be a full name, but can be a first name, surname, shortened name, pseudonym, stage name, title, or nickname.

While with lesser-known figures there may have to be evidence showing that the consuming public connects them with the manufacturing or marketing of the goods at issue, well-known individuals such as celebrities and world-famous political figures are entitled to the protection of Section 2(c) without having to evidence a connection with the involved goods or services.

As applicant admits, Donald Trump is a well-known political figure and a celebrity. Therefore the Board found that because Applicant’s marks include Donald Trump’s name and likeness, his consent to register was required. And so the Board affirmed the Section 2(c) refusal.

Constitutional Issues: Although The Board has no power to strike down a statutory provision as unconstitutional, recent case law suggests that it may address constitutional issues. In fact, parties are required to raise constitutional issue if the issues are to be preserved for appeal. See In re DBC, 545 F.3d 1373, 89 USPQ2d 1123, 1127-28 (Fed. Cir. 2008) (requiring a party to raise a constitutional challenge to the agency “gives [the] agency an opportunity to correct its own mistakes … before it is haled into federal court,” and “it promotes judicial efficiency, as ‘[c]laims generally can be resolved much more quickly and economically in proceedings before [the] agency than in litigation in federal court’”)

Here, applicant claimed that refusal of a registration based on Section 2(a) false association and on Section 2(c) constitutes an impermissible restriction of the right to freedom of speech protected under the First Amendment. The Board disagreed.

Section 2 does not prevent an applicant from using any slogan it chooses on its merchandise or in its advertising. It provides only that the mark itself must meet certain criteria in order to be registrable. Moreover,,even if considered a restriction on speech, the "false association" provision withstands constitutional review because (unlike the restrictions in Tam and Brunetti) it furthers the goal of prevention of consumer deception in source-identifiers and is well within Congressional authority.

Likewise, Section 2(c) protects consumers against source deception. "Such a prohibition, not on use, but only on registration, is comfortably within Congress’s authority to protect the public against misleading or deceptive source-identifiers, and thus stands outside the speech rights protected by the First Amendment."

And so the Board upheld the Section 2(a) and Section 2(c) refusals to register.

Read comments and post your comment here.

TTABlog comment: WYHA? I want to see a case involving a 2(a) or 2(c) refusal where the mark incorporates a political message that uses the President's name. Then what happens under the First Amendment?

Text Copyright John L. Welch 2020.

Wednesday, February 12, 2020

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

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

In re Thomas Barnette, Serial No. 87425197 (January 29, 2020) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Section 2(d) refusal of YOUR EDUCATIONAL TOUR, YOUR WAY for "Organization of travel for educational purposes; Travel agency services, namely, making reservations and bookings for transportation for students and teachers participating in educational travel tours; Travel guide and travel information services relating to travel for educational purposes," in view of the registered mark TOUR YOUR WAY & Design for "chauffeur and transportation services for tours"].

In re Frantoio Ulivi Di Liguria S.r.l., Serial No. 79250730 (February 5, 2020) [not precedential] (Opinion by Judge Lorelei Ritchie). [Section 2(d) refusal of the mark DUA &  Design, shown below left, for, inter alia, "pesto sauce; condiments, namely, vinegar and sauces; flavored vinegar" in light of the registered mark DUA BELIBIS & Design, shown below right, for “savory sauces used as condiments” as well as “vinegar"].

In re Toyota Jidosha Kabushiki Kaisha , Serial No. 87734664 (February 6, 2020) (Opinion by Judge Thomas W. Wellington). [Section 2(d) refusal of SKYDRIVE for, inter alia, aircraft; structural parts for aircraft; flying cars and structural parts therefor; roadable aircrafts; structural parts for roadable aircrafts; and structural parts for vertical take-off and landing aircraft capable of road travel, in view of the registered mark SKY DRIVE for "speedometer speed sensors"].

Read comments and post your comment here.

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

Text Copyright John L. Welch 2020.

Tuesday, February 11, 2020

Precedential No. 3: TTABlog Test: Is "J HUTTON" Primarily Merely a Surname for Eyewear?

The USPTO refused registration of the proposed mark J HUTTON for “Eyewear, eyewear frames and sunglasses," finding the mark to be primarily merely a surname under Section 2(e)(4). Applicant Colors in Optics argued that the mark is not a surname but rather a reference to a specific individual due to the inclusion of the initial “J” in the mark. How do you think this appeal came out? In re Colors in Optics, Ltd., 2020 U.S.P.Q.2d 48321 (T.T.A.B. 2020). [precedential] (Opinion by Deputy Chief Judge Mark A. Thurmon).

Applicant did not challenge the evidence submitted by Examining Attorney Susan Stiglitz that HUTTON is used as a surname in the United States, and it admitted that Hutton is the surname of a person associated with Applicant, Jade Hutton. In fact, Applicant submitted a consent to the use of her name in the mark. However, applicant pointed to third-party registrations for various registered marks consisting of surnames preceded by one or more initials, which registrations issued without a Section 2(f) claim of acquired distinctiveness.

Applicant did not dispute that HUTTON is primarily merely a surname. It contended that the mark as a whole refers to and identifies Jade Hutton, an individual. The Board, however, observed that "[p]erhaps that was Applicant’s intention, but the question is not what J HUTTON means to Applicant. The question is what it means to relevant consumers."

The Board distinguished the J.J. YELEY case [TTABlogged here], in which a well-known NASCAR driver sought to register his name as a trademark for a host of goods. Mr. Yeley submitted a declaration explaining how the mark J. J. YELEY was used, noting that many other NASCAR drivers used their names as trademarks. The evidence established that J. J. YELEY had a recognized meaning as a mark due to his popularity as a race car driver. The Board reversed the surname refusal, concluding that “the primary significance of J. J. YELEY is a personal name and the identity of the race car driver.” The Board also noted it decision in In re P.J. Fitzpatrick, Inc., 95 USPQ2d 1412, 1413 (TTAB 2010) [TTABlogged here], where it found that the mark P.J. FITZPATRICK, INC. was “an entire personal name, not ‘merely’ a surname”).

J.J. Yeley

Here, the evidence showed that Jade Hutton is the name of a person associated with Applicant, but there was no evidence that consumers identify Ms. Hutton as "J Hutton." The Board found this case to be indistinguishable from In re I. Lewis Cigar Mfg. Co., 205 F.2d 204, 98 USPQ 265, 267 (CCPA 1953), in which S. SEIDENBERG & CO'S was found to be primarily merely a surname, the court stating: "It seems to us that 'Seidenberg' is clearly a surname which can have no other meaning or significance than that of a surname. Nor do we believe that the addition of the single initial is sufficient to remove it from that category."

As the Board noted in Fitzpatrick, “if a mark consists of two initials (or more) coupled with a surname, it typically will convey a commercial impression of a personal name, and thus generally will not be primarily merely a surname.” 95 USPQ2d at 1413. As the Board further explained however, “there is no per se rule” regarding the addition of initials to surnames. Yeley, 85 USPQ2d at 1154; see also Fitzpatrick, 95 USPQ2d at 1413 (noting I. Lewis did not set out a per se rule).

In some cases, adding one initial to a surname may lead consumers to perceive the mark as a personal name, while in others even adding two initials may not create such an impression. "In all cases involving a surname preceded by one or more initials, it is the factual record that matters most, because only from such a record can we make reliable findings about consumer perception."

The Examining Attorney made a prima facie showing that J HUTTON is primarily merely a surname, and applicant provided no evidence of consumer perception of the proposed mark. The third-party registration evidence submitted by applicant showed that "the combination of one or more initials with a surname may be found, depending on the evidence in the case, to indicate that the public would not perceive such a designation as primarily merely a surname, but those registrations are not evidence of how consumers will perceive the mark at issue in this appeal."

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: How about "JAY HUTTON?"

I think "J WELCH" would not be perceived as primarily merely a surname. "L WELCH," maybe, but not "J WELCH."

Text Copyright John L. Welch 2020.

Monday, February 10, 2020

Precedential No. 2: TTAB Finds CHARLESTON HARBOR TOURS Geographically Descriptive of . . . Guess What?

The Board sustained an opposition to registration of CHARLESTON HARBOR TOURS for "Arranging of travel tours and cruises; Boat transport; Conducting boat charters; Conducting power boat charters; Conducting sightseeing travel tours by boat; Conducting sightseeing travel tours for others; Travel tour conducting; Travel tour guide services; Yacht and boat charter services" on the ground that the proposed mark is primarily geographically descriptive under Section 2(e)(2). Wayback Machine evidence, authenticated by testimony from an official of the Internet Archive, was admitted to prove the dates of publication of various website pages. Spiritline Cruises LLC v. Tour Management Services, Inc., 2020 U.S.P.Q.2d 48324 (TTAB 2020) [precedential] (Opinion by Judge Cynthia C. Lynch).

Hearsay objection: Opposer Spiritline offered "screenshots from particular websites on certain dates from the past that are indicated as archive dates on the printouts." Applicant objected to the Wayback Machine printouts "as lacking foundation, lacking proper authentication, hearsay, and double-hearsay." The Board adopted the approach of a number of courts and overruled the objections because a witness from the Internet Archive testified about how the Wayback Machine website works and how reliable its contents are.

Like other Internet evidence that displays a URL and a date, Wayback Machine printouts "generally can be admissible under notice of reliance as self-authenticating Internet evidence, but such Internet evidence is admissible only for what it shows on its face."

Opposer seeks to rely on the Wayback Machine evidence in this case not only for what these pages show on their face, but also to establish that third-party websites displayed “Charleston Harbor Tours” on various dates in the past. Accordingly, Opposer needed to, and properly did, use appropriate witness testimony to authenticate the printouts and lay the foundation to support that intended evidentiary use.

Here, the Wayback Machine evidence was authenticated by Christopher Butler, Office Manager of the Internet Archive, who described the documents as "True and accurate copies of printouts of the Internet Archive’s records of the HTML files or PDF files for the URLs and the dates specified in the footer of the printout (HTML) or attached coversheet (PDF)."

As to applicant's hearsay objection, "to the extent the Wayback Machine printouts are offered to show how the webpages appeared on particular dates – the 'truth' of the capture as of the archive date – Mr. Butler’s testimony establishes that the printouts qualify under the business records exception. See Fed. R. Evid. 801(c), 802."

He established that the printouts attached to his affidavit come from the Internet Archive’s regularly conducted activity. Mr. Butler explained that the Internet Archive’s automated web crawlers surf the Internet and automatically store copies of webpages by creating unaltered copies of webpages as they appear on a given day (reflected on the face of the archived webpage record). When a screenshot is captured using the Wayback Machine, the screenshots will display the URL of the web page archived by the Wayback Machine along with the date the screenshot was captured by the crawler and archived. And the webpages are not offered to prove the truth of any matter asserted in the underlying webpage contents, so there is no hearsay problem in that regard.

Other witnesses provided corroborating testimony to support the authenticity of certain of the Wayback Machine evidence and the accuracy of the captures as of the dates in question.

Section 2(e)(2): A mark is primarily geographically descriptive if: (1) the primary significance of the mark is the name of a place that is generally known; (2) the goods or services originate in the place identified in the mark; and (3) the relevant purchasers would associate the identified services with the place named, i.e., the public would believe that the services come from the place named. See In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889, 891 (CCPA 1982);

Applicant sought registration under Section 2(f), and therefore it was established that the proposed mark lacks inherent distinctiveness because it is primarily geographically descriptive. However, the question was how descriptive, since the answer to that question "is helpful in laying a foundation for our discussion of acquired distinctiveness." The Federal Circuit has held that "'the applicant’s burden of showing acquired distinctiveness increases with the level of descriptiveness; a more descriptive term requires more evidence of secondary meaning.'" Royal Crown, 127 USPQ2d at 1047 (quoting In re, 415 F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)). The Board saw no reason why that same principle should not apply to Section 2(e)(2).

The evidence established that Charleston, South Carolina is a well-known tourist destination and thus CHARLESTON "is the name of a place known generally to the public.” See Newbridge Cutlery, 113 USPQ2d at 1448-49. Likewise, the evidence established that CHARLESTON HARBOR is well-known. And it was undisputed that applicant's service emanate from Charleston and include tours of Charleston Harbor.

In assessing the degree of descriptiveness, especially because Charleston Harbor is a widely recognized place associated with the particular services at issue, and because numerous third parties in the tour and charter industry refer to Charleston Harbor, we find CHARLESTON HARBOR highly geographically descriptive in this context.

The word TOURS is, of course, generic for applicant's services and "because 'tours' are associated with places, it contributes to the primarily geographic significance of the mark as a whole." The Board has repeatedly held that Section 2(e)(2) is still applicable when "generic matter is included if the mark as a whole retains its primarily geographic significance."

The Board concluded that, considering the proposed mark in its entirety, "CHARLESTON HARBOR TOURS is primarily geographically descriptive under Trademark Act Section 2(e)(2), and highly so."

Acquired Distinctiveness: Because CHARLESTON HARBOR TOURS is highly descriptive, "the standard for establishing acquired distinctiveness becomes commensurately high." Royal Crown Cola, 127 USPQ2d at 1047; In re Bongrain Int’l Corp., 894 F.2d 1316, 13 USPQ2d 1727, 1728 n.4 (Fed. Cir. 1990) (“[T]he greater the degree of descriptiveness the term has, the heavier the burden to prove it has attained secondary meaning.”)

The ultimate burden of proving acquired distinctiveness rested with Applicant Tour Management. Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988). Considering the entire record, the Board concluded that "consumers do not recognize 'Charleston Harbor tours' as indicating a single source for the recited services."

The Board found the Opposer Spritline's Wayback Machine evidence and testimony and the third-party corroborative testimony "show fairly pervasive use of the same wording in the proposed mark by others in the industry during the relevant timeframe." This evidence undermined applicant's claim of substantial exclusivity and created "a serious problem for Applicant, because it interferes with the relevant public’s perception of the designation as an indicator of a single source." See, e.g., Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ 939, 940-41 (Fed. Cir. 1984) (“When the record shows that purchasers are confronted with more than one (let alone numerous) independent users of a term or device, an application for registration under Section 2(f) cannot be successful, for distinctiveness on which purchasers may rely is lacking under such circumstances.”)

Even without that evidence, the Board would have "discretion to find Applicant’s use since 2003 insufficient where, as here, the proposed mark is highly primarily geographically descriptive." Applicant provided evidence of its advertising efforts, promotional expenditures, and sales under the mark for 2003 to 2015, noting that it served some 9,000 consumers per month during peak tourist season. However it offered no survey or other direct evidence of consumer perception of CHARLESTON HARBOR TOURS as a source indicator. The Board was not impressed.

Ultimately, we find that the evidence demonstrates that consumers would perceive CHARLESTON HARBOR TOURS not primarily as a source-indicator for Applicant, but rather as a common geographic place name accompanied by a generic term, used by different entities in the industry to refer to the origin and location of services such as those recited by Applicant.

And so the Board sustained the opposition.

Read comments and post your comment here.

TTABlog comment: Hat Tip to FOB Phil Summa for "bringing home the bacon."

Text Copyright John L. Welch 2020.

TTAB Issues Slightly Revised Standard Protective Order

The TTAB has issued a revised Standard Protective Order (here). Pursuant to Trademark Rule 2.116(g), this standard protective order is automatically imposed in all Board proceedings. The Board, after discussions with stakeholders, decided not to change the Order with respect to in-house counsel: in-house counsel are still not permitted to view information designated "Confidential – For Attorneys’ Eyes Only (Trade Secret/ Commercially Sensitive)."

NEW Standard Protective Order: An updated Standard Protective Order (SPO) is in place for all TTAB proceedings except those that have a stipulated protective agreement, approved by the Board, entered into the proceeding. Over the past two years, TTAB and stakeholders engaged in a discussion of possible changes to the SPO. The discussion focused on whether to allow in-house counsel access to materials designated "Confidential - For Attorneys' Eyes Only" (Trade Secret/Commercially Sensitive). The results were evenly split. As a result, there are no substantive changes from the SPO that was previously in effect. The New SPO is amended with minor changes to wording for readability and clarity. The New SPO is effective February 5, 2020.

Read comments and post your comment here.

TTABlog comment:

Text Copyright John L. Welch 2020.

Friday, February 07, 2020

TTAB Affirms Genericness Refusal of FIDGET CUBE for Stress Relief Exercise Toys

The Board affirmed a refusal to register FIDGET CUBE on the Supplemental Register, for “stress relief exercise toys” [FIDGET disclaimed], finding the term to be “the generic name of the subgenus or subcategory of Applicant’s identified goods.” Applicant argued that it was first to use the term "fidget cube" and that other terms are available to competitors, but the overwhelming evidence established that "fidget cube" is a type of stress relief toy. In re Antsy Labs LLC aka Antsy Labs, Serial No. 87157508 (February 5, 2020) [not precedential] (Opinion by Judge George C. Pologeorgis).

Examining Attorney Lourdes Ayala relied on dictionary definitions of the constituent words, third-party registrations disclaiming “fidget,” and Internet product reviews, online retailer advertisements, and online articles referring to “fidget cubes.”

Applicant argued that it was the first to use the term “fidget cube,” but that, of course, does not immunize the term from genericness. “The law does not permit ‘anyone to obtain a complete monopoly on use of a descriptive [or generic] simply by grabbing it first.’” Applicant, according to the Board, “had the obligation . . . to educate the public promptly to use some name other than the term it wants to call its mark.”

Similarly, applicant's argument that "fidget cube" is not in the dictionary, and that the PTO's evidence was suspect because the Examining Attorney relied on the less popular BING search engine rather than GOOGLE. Applicant also pooh-poohed the citation of blog entries, since there was "no evidence that consumers even read blogs." [Ouch! - ed.]. The Board was unimpressed. "[W]e are unaware ... any precedential decision that articulates a blanket prohibition on evidence taken from Internet forums or blogs." [Right on! - ed.].

Several of the articles attributed to applicant the creation of a new type of stress-relieving toy, but those articles "did not demonstrate trademark or brand usage of the designation FIDGET CUBE with Applicant's identified goods." They simply state that applicant "was the creator or inventor of the original version of the product known as fidget cube."

[T]he record demonstrates extensive third-party use of the designation FIDGET CUBE as the generic name of a particular type of stress-relieving toy after Applicant began using such designation in commerce. Moreover, while Applicant argues that its policing efforts have caused third parties to cease use of the designation FIDGET CUBE, the record indicates otherwise.

Applicant argued that there are other names for the product - fidget dice, infinity cube, fidget box, stress cube, stress block, and dodecahedron - and therefore competitors have no need to use the term FIDGET CUBE to describe their products. Irrelevant, said the Board: there can be more than one generic term for a particular genus of goods or services.

Likewise irrelevant was an arbitration decision by WIPO in a doman name dispute, in which the sole panel member found that applicant had common law rights in FIDGET CUBE. The Board observed that courts have found that a WIPO decision "has no collateral estoppel or res judicata effect and is entitled to no deference from the court."

And so the Board affirmed the refusal to register under sections 23(c) and 45 of the Trademark Act.

Read comments and post your comment here.

TTABlog comment: A well-written and convincing decision.

Text Copyright John L. Welch 2020.