Friday, August 16, 2019

WORLD'S BEST DOWN Incapable of Functioning as a Trademark for Bedding Containing Down, Says TTAB

The Board affirmed a refusal to register, on the Supplemental Register, the phrase WORLD'S BEST DOWN for bedding containing down [DOWN disclaimed], finding that the phrase is "incapable of distinguishing goods and cannot function as a trademark or indicator of source." The evidence established that "World's Best Down" is "a common advertising phrase used to tout the high quality of down in bedding and other products." In re Eddie Bauer Licensing Services LLC, Application Serial No. 87471896 (August 14, 2019) [not precedential] (Opinion by Judge Marc A. Bergsman).

Applicant Eddie Bauer argued that WORLD'S BEST DOWN does not convey any ordinary or familiar concept: an individual "may commonly say 'DRIVE SAFELY' before someone else gets into a car, but "would not commonly say to a third party 'WORLD'S BEST DOWN' before the third party gets into a bed with down filled bedding." [Whatever works! - ed.].

Moreover, Eddie Bauer asserted that it has used WORLD'S BEST DOWN as a source indicator since 2008, and its use is not informational but puffery or exaggerated praise for its products. Finally, it pointed to more than 50 "World's Best" formative marks that are registered (mostly on the Supplemental Register) with disclaimers.

Examining Attorney Steven W. Ferrell, Jr., issued the refusal to register before applicant had submitted its specimen of use, and he relied on the nature of the term rather than the manner in which the mark is used. The Board therefore limited its analysis to the nature of the phrase. Nonetheless, it considered Eddie Bauer's manner of use in determining how the phrase would be perceived by consumers.

Under the case law, slogans and other terms that are "merely informational in nature, or ... common laudatory phrases or statements that would be ordinarily used in business or in the particular trade or industry, are not registrable." For example, ONCE A MARINE, ALWAYS A MARINE is an informational slogan expressing support or admiration of the Marines. I ♥ DC is merely an expression of affection or enthusiasm for the city of Washington, D.C. And DRIVE SAFELY is an everyday, commonplace admonition.

The question is, how would the phrase be perceived by consumers? The Examining Attorney submitted numerous website pages from third parties using the term "World's Best Down" in connection with bedding and other products. This evidence, the Board found, shows that "the term 'World’s Best Down' is a common advertising phrase used to tout the high quality down in bedding and other products." Eddie Bauer uses the phrase "in the manner of a superiority claim that should be available to all manufacturers of down products."

The Board concluded that consumers will not perceive the phrase as a trademark; the phrase "is incapable of distinguishing goods and cannot function as a trademark or indicator of source."

As to the third-party registrations cited by Eddie Bauer, the Board once again observed that it is not bound by the decisions of Examining Attorneys in other cases. Each case must be decided on its own merits.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment:What about World's Best TTABlog?

Text Copyright John L. Welch 2019.

Thursday, August 15, 2019

Precedential No. 22: PIERCE-ARROW for Autos Confusable With PIERCE ARROW SOCIETY, Says TTAB

Although the PIERCE-ARROW automobile was last produced in 1938, the Board sustained this opposition to registration of the mark PIERCE-ARROW for automobiles, finding a likelihood of confusion with the registered collective membership mark PIERCE ARROW SOCIETY for "indicating membership in a national organization whose aim is to foster and preserve interest in Pierce Arrow Motor Cars." However, a "false suggestion of a connection" claim under Section 2(a) was denied because the Society failed to show that The Pierce Arrow Society is famous or has any reputation, and failed to show that the mark PIERCE-ARROW points uniquely and unmistakably to the Society. The Pierce-Arrow Society v. Spintek Filtration, Inc., Opposition No. 91224343 (August 12, 2019) [precedential] (Opinion by Judge Albert Zervas).

Opposer is a non-profit organization founded in 1957. It operates the Pierce-Arrow Museum in Hickory Corners, Michigan, has published a monthly magazine about the automobile, and displays PIERCE-ARROW automobiles at the Annual Flea Market in Hershey, Pennsylvania. The Society assists members in preserving and restoring their autos, publishes service bulletins, facilitates the sale of autos and parts, and sells some parts directly to owners of PIERCE-ARROW automobiles.

The Society is not a legal successor to The Pierce-Arrow Motor Company, nor did it acquire any of its assets or any rights in the PIERCE-ARROW mark.

Section 2(a) False Suggestion of a Connection: Section 2(a) bars registration of a mark that may falsely suggest a connection with "persons, living or dead, institutions, beliefs, or national symbols .  . . ." To support such a claim, the opposer must establish that:

1. The mark is the same as, or a close approximation of, the name or identity previously used by another person or institution;
2. The mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution;
3. The person or institution named by the mark is not connected with the activities performed by the applicant under the mark; and
4. The fame or reputation of the person or institution is such that, when the mark is used with the applicant’s goods or services, a connection with the person or institution would be presumed. Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps., 217 USPQ at 508-10.

The Board found that PIERCE-ARROW is a close approximation of opposer's name. The article "The" and the word "Society" have no source identifying significance. The Board also found that Applicant Spintek is not connected with the Society. Thus elements 1 and 3 of the Section 2(a) test were met.

However, as to the second element, the Society failed to show that PIERCE-ARROW points uniquely and unmistakably to it. Although the Society maintained that the mark would be recognized as the name of the antique automobiles and that it is the "de facto successor" to the motor car company, the Board was not impressed. It observed that when the company ceased to exist, its rights were extinguished. See In re Wielinski. There was no assignment of any interest in these rights to any another entity. The Society did not prove that it may claim rights in the name or identity of the defunct company. The use of marks containing the words  PIERCE-ARROW as collective memberships marks did not effectuate a transfer of the goodwill associated with PIERCE-ARROW for automobiles.

Likewise, the Society did not satisfy the fourth element of the Section 2(a) test: it failed to show that it has any fame or reputation. The Board noted that there are only 2,400 Pierce-Arrow automobiles in existence, that the Society has only 1,000 members, and that its advertising is limited. The Society failed to establish how may individuals visit the flea market and museum. Moreover, the Society failed to show that the defunct company enjoyed a fame or reputation that was transferred to opposer.

And so, because the Society did not satisfy all four elements of the test, the Board dismissed its Section 2(a) claim.

Section 2(d) Likelihood of Confusion: The likelihood of confusion analysis involving a collective membership mark and a trademark is not based on confusion as to the source of the goods or services provided by the organization; rather the issue is whether relevant consumers are likely to believe that the trademark owner's goods "emanate from or are endorsed by or in some other way associated with the collective organization." Carefirst of Md. Inc. v. FirstHealth of the Carolinas, Inc., 77 USPQ2d 1492, 1512-13 (TTAB 2005).

Thus, we consider whether Applicant’s goods and the indication of membership in an organization whose aim is to foster and preserve interest in PIERCE-ARROW motor cars are sufficiently related that, if similar marks were used in connection with them, such prospective purchasers of Applicant’s automobiles and current or prospective members of Opposer’s organization would be likely to believe that Applicant’s automobiles are sponsored by or in some way affiliated with Opposer’s organization.

As to the marks, the Board not surprisingly found PIERCE ARROW to be the dominant portion of the Society's, and it deemed the marks "highly similar" in appearance, sound, connotation, and commercial impression. As to the goods and services, the respective identifications in the application and the pleaded registration "reflect a clear and immediate relationship." "Opposer's collective membership mark identifies its organization's focus on PIERCE ARROW automobiles. Applicant Spintek's goods are PIERCE-ARROW automobiles." Notably, the identification in the Society's registration does not specify whether the motor cars in which its members are interested are new or used, and so it encompasses applicant's automobiles.

As to trade channels and classes of consumers, the Board agreed with Applicant Spintek that the trade channels differ, but it found that the consumers of the Society's services overlap with the (potential) purchasers of Spintek's goods:

Members of Opposer’s organization may not own only antique automobiles, they may also own modern automobiles. Thus, once Applicant promotes its automobiles, it is likely that the same individuals will be exposed to both Applicant’s and Opposer’s marks for their respective goods and services.

Finally, as to the conditions of sale, Spintek argued that automobiles are costly and are purchased with care, but the Board noted that the Society's annual membership fee is a mere $45, suggesting less care by consumers in their decisions to join the Society. In any case, even sophisticated purchasers are not necessarily knowledgeable in the field or trademarks and are not immune from source confusion when very similar marks are in use.

The Board concluded that consumers are likely to assume a connection or affiliation with or sponsorship by the Society if Spintek's mark is used for automobiles. Therefore the Board sustained the opposition on the ground of likelihood of confusion under Section 2(d).

Read comments and post your comment here.

TTABlog comment: Arguably, Pierce-Arrow aficianados will know that Spintek's automobiles are not the originals, and buyers of the new autos will know that the Society is focused on the originals. Won't they?

Text Copyright John L. Welch 2019.

Wednesday, August 14, 2019

AIPLA Trademark Roundtable in Boston: Sept. 17th

The American Intellectual Property Law Association (AIPLA) and Foley Hoag LLP are hosting a trademark roundtable discussion in Boston on September 17th, from 11:45 AM -2:00 PM, at the Foley Hoag offices. Details and registration information here. Registration fee is $20 and lunch will be served! How can you beat that?

The roundtable will feature USPTO officials Meryl Hershkowitz (Deputy Commissioner for Trademark Operations, United States Patent and Trademark Office) and Larry Stanley (Interlocutory Attorney, Trademark Trial and Appeal Board).

Topics will cover a range of USPTO trademark operations, procedures, and policies, including the recent and upcoming changes to representation of foreign applicants, specimen requirements, and other initiatives intended to secure the integrity of the trademark register.

The format will be an open roundtable discussion. Attendees may also submit questions/topic proposals in advance by contacting my friend and Foley Hoag partner Joshua Jarvis (see the link above).

TTABlog Test: Are These Two Four-Legged Animal Design Marks Confusable for Clothing?

Another test for you. Abercrombie & Fitch opposed an application to register the mark RED DEAR & Design, shown below left, for various clothing items, claiming a likelihood of confusion with its two registered "Moose logo" marks shown below right, for overlapping clothing items. Applicant Shnittger, appearing pro se, stipulated to several facts, including Abercrombie's ownership and the validity of the registrations, and a congruence of consumers. Shnittger also admitted that the marks depict "profiles of full-bodies, four-legged animals with antlers in silhouette form." But what about the words "Red Dear?" Shnittger argued that no one company should be allowed to associate any "antlered" animal with its brand. How do you think this came out? Abercrombie & Fitch Trading Co. v. Isabella Elisabeth Shnittger, Opposition No. 91218738 (August 12, 2019) [not precedential] (Opinion by Judge Michael B. Adlin).

The Board first addressed Abercrombie's claim that its marks are famous. Opposer's evidence, filed under seal, showed that it has been "quite successful" in selling clothing under its marks, but its sales and advertising figures and website visits were not placed in context vis-a-vis other brands of clothing, nor was it clear to what extent consumers were exposed to the pleaded marks as opposed to Abercrombie's various other marks.

Nonetheless, the evidence established that the pleaded marks are "renowned" in the clothing field and are "commercially quite strong."

Of course, the overlapping goods are presumed to travel through the same trade channels to the same classes of consumers. As a result, a lesser degree of similarity between the marks at issue is necessary to support a finding of likely confusion.

Turning to the marks, the Board acknowledged that there are differences between the animals at issue, but the marks are "sufficiently similar in terms of their commercial impressions that clothing consumers who encounter them would be likely to assume a connection between the parties."

Here, at least some consumers familiar with Opposer’s marks who later encounter Applicant’s mark will not remember which direction Opposer’s animal was facing, what its antlers looked like specifically or how its mouth was depicted. Rather, because of the fallibility of memory, they will have the “general rather than a specific impression” that Applicant’s mark, like Opposer’s, features a “full-bodied, four-legged anima[l] with antlers in silhouette form.”

As to the words "Red Dear" in Schnittger's mark, they are dwarfed by the deer design. Moreover, since the word "Dear" is the phonetic equivalent of "deer," it might call to mind Abercrombie's marks, which might also appear to some as a deer. [That's a stretch! - ed.]. For what it's worth, Applicant Schnittger admitted that "a moose is part of the deer family biologically . . . ."

The Board cited several prior cases in which the addition of words to a design was not enough to avoid confusion. For example:

The Board concluded that the differences between Abercrombie's and Schnittger's marks were insufficient to overcome the similarities when these "profiles of full-bodied, four-legged animals in silhouette form" are used on identical goods.

The Board therefore found confusion likely and it sustained the opposition, declining to reach Opposer's dilution claim. [In any event, since Abercrombie failed to prove fame in the likelihood of confusion context, it perforce could not meet the higher standard for dilution fame - ed.].

Read comments and post your comment here.

TTABlog comment: Oh, deer! How prominent must the words RED DEAR be to change the outcome?

Text Copyright John L. Welch 2019.

Tuesday, August 13, 2019

TTABlog Test: Are These Two "CANNONBALL" Marks Confusable for Beer?

The USPTO refused to register the mark CANNONBALL CREEK BREWING COMPANY GOLDEN, COLORADO and Design, as shown below, for “beer” [BREWING COMPANY GOLDEN, COLORADO disclaimed], finding the mark likely to cause confusion with the registered mark CANNONBALL DOUBLE IPA for “ale; beer; brewed malt-based alcoholic beverage in the nature of beer” [DOUBLE IPA disclaimed]. The goods are legally identical and the Board must presume that the overlapping goods travel in the same trade channels to the same classes of consumers. What about the marks? Too close? How do you think this came out? In re Hutchinson and Stengl, Serial No. 86809909 (August 9, 2019) [not precedential] (Opinion by Judge George C. Pologeorgis).

Of course, when the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. The Board found the marks to be similar in appearance and sound to the extent that the word CANNONBALL is the first literal element in the marks. Often it is the first part of a mark that is most to be impressed upon the mind of the consumer and remembered. "However, that general rule is not applicable here. In this case, the word CANNONBALL is likely to be read in conjunction with the word CREEK, that word being visually the largest element in Applicant’s mark."

Although applicant's mark contains a prominent design element, it is the verbal portion of the mark that is most likely to indicate the origin of the goods. It is the verbal portion that consumers will use in referring to or ordering the goods.

The disclaimed portion of each mark is less significant because of its descriptive nature. Therefore, the dominant portion of applicant’s mark is CANNONBALL CREEK and the dominant element of the cited is CANNONBALL. Nonetheless, the Board found the connotations and commercial impressions of the marks to be "quite dissimilar" because of the presence of the word CREEK in applicant's mark.

The circumstances of this case are very similar, if not identical, to those in Champagne Louis Roederer S.A. v. Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d 1459 (Fed. Cir. 1998). In that case, the Federal Circuit affirmed the Board’s holding that the second word in applicant’s mark CRYSTAL CREEK served to create a totally different commercial impression from the one created by opposer’s mark CRISTAL when the marks were contemporaneously used on wine.

CANNONBALL CREEK evokes the name of a particular waterway or stream. This "wave" design in applicant's mark reinforces that meaning and commercial impression, as does the relatively larger size of the word CREEK. The cited mark, CANNONBALL, conveys the impression of something fired from a cannon.

The Board concluded that "the differences in connotation and commercial impression between the marks outweigh their similarities and are therefore sufficient to distinguish the marks so that confusion between the marks is not likely."

And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlog comment: I guess adding the word CREEK is a ticket to registration.

Text Copyright John L. Welch 2019.

Monday, August 12, 2019

TTABlog Test: Is "KP QUIK STOP & Design" Confusable With KWIK STOP for Convenience Stores?

The USPTO refused to register the mark KP QUIK STOP & Design for retail convenience stores, finding it likely to cause confusion with the registered mark KWIK STOP for "Retail convenience store services featuring gasoline, other petroleum products and alcoholic beverages." The services are identical, but what about the marks? Applicant PCS Petroleum argued that the registered mark is weak and therefore should be given a limited scope of protection. How do you think this came out? In re PCS Petroleum LLC, Serial No. 87728983 (August 8, 2019) [not precedential] (Opinion by Judge George C. Pologeorgis).

Because the involved services overlap, the Board must presume that they travel in the same trade channels to the same classes of consumers. Thus the second and third du Pont factors favored affirmance of the refusal.

The Board next considered the strength of the cited mark under the fifth and sixth du Pont factors. There was no evidence of fame of the cite mark in this ex parte appeal (and the Examining Attorney is under no obligation to demonstrate such fame). The Board therefore found the fifth factor to be neutral.

As to the sixth factor, the number and nature of similar marks for similar services, the Board observed that "third-party registrations and use of similar marks can bear on the strength or weakness of a registrant’s mark in two ways: commercially and conceptually."

First, if a mark, or an element of a mark, is used extensively in commerce by a number of third parties, that could undermine its commercial strength, as the consuming public may have become familiar with a multiplicity of the same or similar marks, and can distinguish them based on minor differences. *** Second, if there is evidence that a mark, or an element of a mark, is commonly adopted by many different registrants, that may indicate that the common element has some non-source identifying significance that undermines its conceptual strength as an indicator of a single source.

Applicant PCS submitted numerous use-based third-party registrations for marks consisting of or containing the term QUICK or its phonetic equivalents, for services similar to those of the cited registration: for example, QUICK STUFF, KWIK BUCKS, and KWICK PANTRY, and KWIK FILL. Although there was no evidence of the extent of use of these marks, they are relevant to show that a particular term "has a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak." Juice Generation, 115 USPQ2d at 1675 (quoting 2 McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:90 (4th ed. 2015).

PCS also submitted proffered evidence demonstrating third-party use of the terms QUICK STOP, QUIK STOP, QWICK STOP and KWIK STOP for similar services. Again, this evidence did not establish the extent to which consumers have been exposed to such actual uses, but " the nontrivial amount and geographic extent throughout the United States of such third party uses of the phrase QUICK STOP or its phonetic equivalents demonstrates that the phrase is highly suggestive of such services, leading us to the conclusion that that phrase is weak."

The Board found "a mark comprising, in whole or in part, the phrase “QUICK STOP” or phonetically equivalent variations thereof, used in connection with convenience store services is highly suggestive of such services and therefore, weak. As such, the cited mark is entitled to only a restricted scope of protection."

In other words, Registrant’s KWIK STOP mark is not entitled to such a broad scope of protection that it will bar the registration of every mark comprising, in whole or in part, the term “KWIK STOP” or variations thereof; it is, nevertheless, sufficient to bar the registration of marks “as to which the resemblance to [Registrant’s mark] is striking enough to cause one seeing it to assume that there is some connection, association or sponsorship between the two.”

Turning to the first du Pont factor, the similarity or dissimilarity of the marks, the Board found that although there are differences in appearance and sound, the marks convey the same connotation and commercial impressions. However, in view of the weakness of the cited mark and the limited scope of protection to which it is entitled, the Board found that "the inclusion of the design element, as well as the arbitrary letters KP, in Applicant’s mark are sufficient to distinguish the marks for likelihood of confusion purposes, notwithstanding our finding that the services at issue are identical in part."

The Board therefore reversed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Evidence of third-party use and registration is often the make-or-break issue in these 2(d) appeals.

Text Copyright John L. Welch 2019.

Friday, August 09, 2019

TTABlog Test: Is "KERRIDGE COMMERCIAL SYSTEMS" Primarily Merely a Surname?

The USPTO refused to register the mark KERRIDGE COMMERCIAL SYSTEMS for various goods and services, all for use in the distribution, wholesale, merchant and retail industries [COMMERCIAL SYSTEMS disclaimed], finding the mark to be primarily merely a surname under Section 2(e)(4). The evidence showed at least 193 results for the surname "Kerridge" from 18 different U.S. states, but Applicant argued that this is an insignificant portion of the U.S. population. How do you think this came out? In re Kerridge Commercial Systems Limited, Application Serial No. 87383302 (August 6, 2019) [not precedential] (Opinion by Judge Elizabeth A. Dunn).

Kerridge, England

Evidentiary issues: The Examining Attorney submitted a screenshot purporting to show that KERRIDGE is the name of applicant's founder, but because the document lacked a date and a URL, the Board refused to consider it. See In re I-Coat Company, LLC, 126 USPQ2d 1730, 1733 (TTAB 2018) and In re Mueller Sports Medicine, Inc., 126 USPQ2d 1584, 1587 (TTAB 2018). Applicant submitted two webpages to its brief on appeal (one referencing Kerridge, England), but the submission was untimely and the Board ignored it. The Examining Attorney asked the Board to take judicial notice of an online search for the term KERRIDGE and a dictionary excerpt; as to the former, the Board does not take judicial notice of online search results, and as to the latter the Board was "reluctant to exercise this discretion where, as here, Applicant has no opportunity to counter the evidence." [Odd. The Board often takes judicial notice of dictionary definitions - ed.].

Surname Significance: In determining whether the purchasing public would perceive a purported mark as primarily merely a surname, the Board may consider: 1) whether the applicant adopted a principal's name and used it in a way that revealed its surname significance; 2) whether the term has a nonsurname "ordinary language" meaning; and 3) the extent to which the term is used by others as a surname. In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir. 1985).

The record establishes that the term KERRIDGE is a surname. A search of revealed at least 193 results for "Kerridge" from 18 different U.S. states. Applicant argued that this is an insignificant portion of the U.S. population of more than 300 million people. The Board observed, however, that "[t[he relative rareness of a name is not necessarily relevant 'given the large number of different surnames in the United States, even the most common surnames would represent but small fractions of such a database.'"

In fact, even surnames less common than KERRIDGE have been found to be primarily merely a surname in certain cases. See In re Beds & Bars Limited, 122 USPQ2d 1546 (TTAB 2017) (5 individuals named BELUSHI); In re Adlon Brand GmbH & Co. KG, 120 USPQ2d 1717, 1720 (TTAB 2016) (75 individuals named ADLON); In re Eximius Coffee, LLC, 120 USPQ2d at 1280 (233 people with the surname ALDECO).

Applicant pointed out that there is no evidence showing that anyone named Kerridge is associated with the company. However, while such a connection would weigh in favor of the refusal, the lack thereof does not reduce the likelihood that relevant consumers would perceived the term as a surname.

Examining Attorney Doritt Carroll asserted that KERRIDGE is similar to other surnames such as BERRIDGE, DERRIDGE, FERRIDGE, and SERRIDGE but the Board noted that these surnames were not shown to "very common." In any event, the question of whether a term has the structure and pronunciation of a surname is a “decidedly subjective” inquiry. In re Eximius Coffee, L.L.C, 120 USPQ2d at 1280. Thus this evidence, "at best, offers some corroboration of the evidence that the primary significance of KERRIDGE is as a surname."

Applicant urged that KERRIDGE is similar in sound and appearance to such common words as porridge, courage, and carriage, and to geographic terms such as Cambridge and Woodbridge, but the Board rejected the notion that KERRIDGE would be mistaken for these words or would have the same "ordinary word" significance.

As to the additional wording, COMMERCIAL SYSTEMS, the Board recognized that it must determine "whether the primary significance of the mark as a whole in connection with the recited goods and services is that of the surname." Citing Earnhardt v. Kerry Earnhardt, Inc., 123 USPQ2d at 1413. A critical element in the determination is the relative distinctiveness of the second term in the mark. Id.; accord, In re Weiss Watch Co., 123 USPQ2d at 1206.

Where, as here, descriptive wording is appended to a surname, the combination when viewed as a whole in the context of the Applicant's goods will generally be considered to be primarily merely a surname under Section 2(e)(4). See, e.g., Azeka Bldg. Corp. v. Azeka, 122 USPQ2d at 1482 n.9 (TTAB 2017) (AZEKA'S RIBS primarily merely a surname for barbeque sauce).

Noting that applicant disclaimed COMMERCIAL SYSTEMS and did not contest the issue of descriptiveness, the Board concluded that KERRIDGE COMMERCIAL SYSTEMS is primarily merely a surname, and so it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment:Would CARRIAGE COMMERCIAL SYSTEMS be considered confusingly similar?

Text Copyright John L. Welch 2019.

Thursday, August 08, 2019

Precedential No.21: TTAB Finds MALAI Generic for Ice Cream

Finding that relevant consumers would understand the term MALAI to refer to a key aspect of "ice cream, gelato, dairy-free ice cream, frozen yogurt, frozen desserts, ice cream sandwiches, sorbet, freezer pops, and ice cream sundaes," the Board affirmed a refusal to register on the ground of genericness. In re Twenty-Two Desserts, LLC, 2019 USPQ2d 292782 (TTAB 2019) [precedential] (Opinion by Judge Frances Wolfson).

The Board applied its standard two-part test for determining whether a term is generic: (1) what is the genus (class or category) of the goods or services at issue; and (2) does the relevant public understand the term primarily to refer to that genus. Princeton Vanguard, 114 USPQ2d at 1830 (citing Marvin Ginn, 228 USPQ at 530); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1462 (TTAB 2014). "Any term that the relevant public uses or understands to refer to the genus of goods, or a key aspect or subcategory of the genus, is generic." Citing Royal Crown Co., Inc. v. The Coca-Cola Co., 127 USPQ2d 1041, 1046-1047 (Fed. Cir. 2018); In re Cordua Rests., Inc., 118 USPQ2d 1632, 1638 (Fed. Cir. 2016). The USPTO must present "clear evidence" of genericness to support such a refusal. See In re, 91 USPQ2d 1252, 1253 (Fed. Cir. 2009); Cordua, 118 USPQ2d at 1533.

There was no dispute that applicant's identification of goods adequately defines the genus at issue. The relevant consuming public comprises ordinary consumers who purchase and eat ice cream products. The question, then, was how does the relevant public perceive the term MALAI in the context of applicant's goods?

Examining Attorney Jason Paul Blair relied on a dictionary definition of "malai" (an Indian cooking ingredient) and a Wikipedia entry for "Ras Malai" as a type of dessert, in maintaining that that the word MALAI “is commonly used in the English language as a genus of rich, high-fat creams commonly used in Indian and South Asian culinary dishes, especially dishes with a sweet taste.” He also submitted articles, recipes, and material from several Internet sources that identify "malai" as a cream.

The Board agreed with the examining attorney that the record evidence showed that "'malai' has an independent meaning in English for a specific cooking ingredient, cream." Moreover, "malai" has been used to identify a creamy food principally made from malai, including items that fall within - i.e., are a sub-group or type of - the goods broadly identified in the subject application: for example, "malai kulfi," a type of Indian ice cream.

The record contains clear evidence that consumers would understand the proposed mark MALAI to refer to a type of ice cream made principally with malai. Applicant’s proposed mark MALAI is thus incapable of distinguishing the source of the products.

Applicant argued that the doctrine of foreign equivalents should not be applied to the term MALAI because consumers would not stop and translate it, but the Board pointed out that the examining attorney did not rely on that doctrine, but rather on evidence that the word "malai" itself has a meaning in English that is relevant to the goods at issue. See, for example, Cordua, 118 USPQ2d at 1537 (noting that the USPTO found that "churrasco" is used in English to refer to grilled meat).

Applicant also contended that the primary meaning of "malai" is "the best of choicest part of a thing - i.e., the cream of the crop." The Board, however, saw nothing in the record to support the contention that consumers will apply that meaning to "malai" with regard to the goods at issue. Moreover, because applicant was seeking registration on the Supplemental Register, it conceded that that the term is merely descriptive of the goods, and therefore "arguments regarding other meanings for [MALAI] and double entendre are inapplicable." In re Rosemount Inc., 86 USPQ2d 1436, 1439 (TTAB 2008).

Finally, applicant argued that a generic name of an ingredient is not necessarily generic for a product containing that ingredient. The Board agreed that there is no per se rule that the name of any ingredient in a product will necessarily be generic; but where, as here, the public understands the ingredient name "to refer to a key aspect or category of the genus of the goods, it is generic for those goods." See Royal Crown, 127 USPQ2d at 1046; see also In re Empire Tech. Dev. LLC, 123 USPQ2d 1544 (TTAB 2017) (COFFEE FLOUR generic for flour made from coffee berries); In re Demos, 172 USPQ 408, 409 (TTAB 1971) (“CHAMPAGNE” merely names principal ingredient of applicant’s salad dressing and is unregistrable); In re Hask Toiletries, Inc., 223 USPQ 1254 (TTAB 1984) (HENNA ‘N’ PLACENTA generic for hair conditioner because “henna” and “placenta” refer to the two key ingredients of the product and the combination created no new significance).

The Board therefore affirmed the refusal to register on the Supplemental Register under Section 23 of the Lanham Act.

Read comments and post your comment here.

TTABlog comment: What does this wave of genericness and failure-to-function decisions signify? Overreaching by applicants? Over-zeal on the part of the USPTO?

Text Copyright John L. Welch 2019.

Wednesday, August 07, 2019

Fame of VOLVO Mark Brings Section 2(d) Victory over WOLVOL for Computers

The Board sustained this opposition to registration of the mark WOLVOL for laptop computers and related goods, finding a likelihood of confusion with the registered mark VOLVO for a variety of goods and services, including computers and video screens. The Board found the mark VOLVO to be famous for automobiles, and further found that this fame "transfers to computer and video screen[s]." Volvo Trademark Holding AB v. Wolvol Inc., Opposition No. 91207836 (July 29, 2019) [not precedential] (Opinion by Judge Cynthia C. Lynch).

The Goods: Because the involved goods overlap, the Board presumed that they travel in the same trade channels to the same classes of consumers. These du Pont factors weighed heavily in favor of a finding of likely confusion.

Fame: Volvo submitted sales and advertising figures as well as evidence regarding length of use of the mark, its numerous registrations, consumer exposure to the mark, and unsolicited media attention. Most of the evidence related to Volvo vehicles, but some related to technical aspects such as safety technologies and laser traffic monitoring devices. In any case, "[c]onsidering the volume and nature of the fame evidence," the Board found that "the fame of VOLVO extends beyond just vehicles and transfers to computer and video screen goods that we find most relevant to this proceeding. Cf. Recot, 54 USPQ2d at 1897 (erroneous to find that fame 'extends no farther than the products with which the marks are currently used' because fame 'is a dominant factor in the likelihood of confusion analysis for a famous mark, independent of the relatedness of the goods."

My first Volvo - 1927

VOLVO is a conceptually strong mark "to those unfamiliar with the dead language Latin." Opposer stated that the Latin word VOLVO means "I am rolling." Most customers would likely be unaware of this meaning. The word VOLVO "probably would be perceived either as a fanciful term or, for those familiar  with Latin, as a slightly suggestive word" in this context. As to commercial strength, there was no evidence of any use or registration of VOLVO or similar marks for similar goods or services. [Note that applicant submitted no evidence. - ed.].

The Marks: Since the involved goods are legally identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. Moreover, a famous mark "casts a long shadow which competitors must avoid."

WOLVOL contains four of the five letters of VOLVO in the same order. The beginning "V" and "W" sound similar. The Board found the overall sounds of the marks to be similar. The common string OLVO engenders a visual similarity in the marks. The connotations and commercial impressions are not a significant point of distinction. The Board found that this factor favored opposer.

Conditions of Purchase: Given the ubiquity of computers, consumers would exercise nothing more than ordinary care in their purchasing decisions.

Conclusion: The Board found confusion likely, and so it sustained the opposition. It declined to reach Volvo's dilution claim.

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TTABlog comment: My Latin is a bit rusty, but I thought "volvo" meant "I revolve." A Man Called Ove would never drive a Volvo.

Text Copyright John L. Welch 2019.

Tuesday, August 06, 2019

CAFC Affirms TTAB: Appellant Waived Arguments by not Raising Them at the Board

The CAFC affirmed the TTAB's decision finding a likelihood of confusion between the two marks shown immediately below for athletic clothing. On appeal, Applicant Hylete argued that the Board erred by considering only Opposer Hybrid's design mark and not its  "composite common law mark" comprising the stylized "H" design above the phrase "Hybrid Athletics" and several dots (shown further below). The court, however, found that Hylete had waived this argument because it was not raised prior to the appeal. Hylete LLC v. Hybrid Athletics, LLC, Appeal No. 2017-2057 (August 2, 2019) [precedential].

Before the Board, Hylete had argued that its mark was a "highly stylized design logo" that was "substantially dissimilar" from Hybrid's logo. The Board, however, found that both marks are stylized versions of the letter "H" that have similar commercial impressions, and it concluded that confusion is likely.

At the CAFC, Hylete argued that the Board erred in failing to compare Hylete's "H" mark with  Hybrids's "composite common law mark" instead of just Hybrid's common law "H" mark. Hylete posed the issues on appeal as a "single question: is Hylete's mark sufficiently similar to [Hybrid's] composite common law mark to be likely to cause confusion on the part of the consumer ...."

Hybrid responded by pointing out that the "composite common law mark" arguments were never raised before the Board and were therefore waived. The CAFC agreed.

Absent exceptional circumstances, federal appellate courts do not consider issues "not passed upon below," or entertain arguments not made before the lower tribunal. Golden Bridge Tech., Inc. v. Nokia, Inc., 527 F.3d 1318, 1322  (Fed. Cir. 2008); Finch v. Hughes Aircraft Co., 926 F.2d 1574, 1576 (Fed. Cir. 1991). The CAFC has found it appropriate to consider issues raised for the first time on appeal in limited circumstances:

We have articulated limited circumstances in which considering arguments made for the first time on appeal is appropriate: (1) "[w]hen new legislation is passed while an appeal is pending, courts have an obligation to apply the new law if Congress intended retroactive application even though the issue was not decided or raised below"; (2) "when there is a change in the jurisprudence of the reviewing court or the Supreme Court after consideration of the case by the lower court"; (3) "appellate courts may apply the correct law even if the parties did not argue it below and the court below did not decide it, but only if an issue is properly before the court"; and (4) "where a party appeared pro se before the lower court, a court of appeals may appropriately be less stringent in requiring that the issue have been raised explicitly below." Golden Bridge, 527 F.3d at 1322–23 (quoting Forshey v. Principi, 284 F.3d 1335, 1353–57 (Fed. Cir. 2002)).

Hylete did not dispute that it failed to raise the "composite common law mark" issue at the Board. Instead, it contended that the Board "sua sponte" raised the issue in its final decision (here) and that the Board applied an incorrect legal standard in comparing the marks. The CAFC observed, however, that Hylete failed to assert that the Board had compared the wrong marks when Hybrid sought reconsideration of the Board's decision. Instead, it had focused on the two "H" marks.

Hylete was on notice of Hybrid's common law rights from the time when the notice of opposition was filed, and Hybrid subsequently submitted evidence of use of its mark. Hylete could have raised the "composite common law mark" in the opposition proceeding. "Thus, none of the exceptional circumstances in which it is appropriate to consider arguments for the first time on appeal are present here, and declining to consider Hylete's new arguments does not result in injustice. See Golden Bridge, 527 F.3d 1323."

The CAFC therefore held that Hylete had waived its "composite common law mark" arguments. The court declined to address the Board's analysis with regard to Hybrid's "H" mark, since the only issues raised on appeal related to the "composite common law mark." The CAFC accordingly affirmed the Board's decision.

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TTABlog comment: Seems to me that in the "composite common law mark," the stylized "H" still creates its own, separate commercial impression.

Text Copyright John L. Welch 2019.

Monday, August 05, 2019

USPTO Examination Guide: Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants

The USPTO has issued Examination Guide 4-19 (August 2019), entitled "Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants." (pdf here). Effective August 3, 2019, amended Rule 2.11 requires foreign applicants, registrants, or parties to a trademark proceeding to be represented by a U.S. attorney. Furthermore, the USPTO may require such applicants, registrants, or parties to: (1) furnish information or declarations necessary to the proper determination of whether the applicant, registrant, or party is subject to the requirement for a U.S. attorney, and (2) to state whether assistance was received in a trademark matter before the USPTO and, if so, to disclose the name(s) of the person(s) providing such assistance and whether any compensation was given or charged.

In addition, all applications must include the applicant’s domicile address, and foreign applicants must appoint a U.S. attorney for the application to meet the requirements for a complete application.  Foreign applicants submitting an application using the TEAS Plus filing option will be required to designate a U.S. attorney in the application in order to complete the submission of the application.

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TTABlog comment: This new rule applies retroactively to pending TTAB matters. A foreign party will be notified of the requirement to appoint counsel and the case will be suspended pending such appointment.

Text Copyright John L. Welch 2019.

Ubiquitous "Uncle Sam" Image Fails to Function as a Trademark , Says TTAB

The Board affirmed a refusal to register the purported mark shown below for a variety of goods in classes 28, 29, 30, 32, and 33, finding that it fails to function as a source indicator because it would be perceived as a merely ornamental use of the well-known Uncle Sam imagery rather that as a trademark. In re Uncle Sam GmbH, Application Serial No. 79187215 (July 31, 2019) [not presidential] (Opinion by Judge Marc A. Bergsman).

Examining Attorney Samuel R. Paquin contended that the purported mark does not function as a mark "because of the iconic nature and cultural significance of this specific version of Uncle Sam." Consumers will therefore not interpret that image as indicating source.

This design was created by James Montgomery Flagg in 1917 as a recruiting poster. Although Uncle Sam has been referred to has a "symbol of patriotism" and a "personification of the government of the United States," it has never been found to be an official insignia under Section 2(b) of the Lanham Act.

The USPTO has registered versions of the image for a variety of goods and services. The examining attorney submitted depcitions of Uncle Sam used in advertising - to convey the message that Uncle Sam wants the consumer to "try" the advertised goods or services. Applicant GmbH supplied an example of how the subject image will be used with its goods, conveying the same message:

GmbH argued that its proposed use of the image is consistent with the long history of use of the image for advertising purposes. The Board agreed, but found that applicant's proposed use would not likely be perceived as identifying and distinguishing its products and indicating their source.

In other words, the Flagg image of Uncle Sam, which because it extensively has been used to advertise a wide variety of goods and services, has taken on the characteristics of a common basic shape or design. See Wiley v. Am. Greetings Corp., 762 F.2d 139, 226 USPQ 101, 103-04 (1st Cir. 1985) (mark consisting of “a red heart, permanently affixed to the “left breast of a teddy bear,” even if such a combination could be deemed unique, is simply a mere refinement of a red heart motif which is a commonly adopted and well-known means of ornamentation for teddy bears, other stuffed animals and toys in general).

As to the third-party registrations for marks including the Uncle Sam image, the Board pointed out once again that it is not bound by the PTO's allowance of prior registrations. Each case must be decided on its own record. "We are not estopped or disqualified from applying the statute because ... an examining attorney (or attorneys) may have overlooked a relevant statutory provision and, perhaps erroneously, allowed an application to register." In re United Trademark Holdings, Inc., 122 USPQ2d 1976 (TTAB 2017).

The record evidence did include the file histories of two prior registrations, but the Board observed that "[i]f any lesson can be gleaned from these two registrations [see marks below], it is that interplay of words and the image of Uncle Sam may form the basis of registration."

And so the Board affirmed the refusal.

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TTABlog comment: BTW: Wiley v. American Greetings is a case I won thirty-four years ago. I was eight years old at the time.

Text Copyright John L. Welch 2019.