Friday, October 19, 2018

AMERICAN VETERINARY NURSES ASSOCIATION Geographically Descriptive of Veterinary Services, Says TTAB

The Board affirmed a Section 2(e)(2) refusal of the mark AMERICAN VETERINARY NURSES ASSOCIATION, finding it to be primarily geographically descriptive of "veterinary medicine services." Applicant argued that the term AMERICAN has multiple different connotations and therefore that the mark as a whole is merely suggestive of the services. The Board disagreed. In re National Association of Veterinary Technicians in America, Inc., Serial No. 87228944 (September 14, 2018) [not precedential] (Opinion by Judge George C. Pologeorgis).

The Section 2(e)(2) bar requires proof of the following:

1. the primary significance of the term in the mark sought to be registered is the name of a place generally known to the public;
2. the source of the services is the place named in the mark; and
3. the public would make an association between the services and the place named in the mark by believing that the services originate in that place.

"The addition of highly descriptive matter to a geographic term does not detract from the mark’s primary significance as being geographically descriptive."

Applicant feebly argued that AMERICAN is a nebulous term because it could mean: (1) an association of veterinary nurses living in the United States; (2) an association of veterinary nurses from the United States (but perhaps no longer living in the United States); or (3) an association for veterinary nurses who speak English (vs. Chinese, French, etc.). The Board was unconvinced. "Even if this ambiguity is accepted, both interpretations are still a geographic meaning of the term, as opposed to any other type of meaning."
The Board noted that the words AMERICA or AMERICAN are sometimes found not to be primarily geographically descriptive, provided the word takes on an arbitrary meaning: for example, THE AMERICAN GIRL for shoes; AMERICAN PLAN CORPORATION for insurance brokerage services); THE GREAT AMERICAN BASH for wrestling exhibitions. There, "the mere introduction of a subtle nuance may remove a mark from the primarily geographically descriptive category. That is, the overall commercial impression is no longer primarily geographic due to a new double meaning or another suggestive meaning." The Board, however, saw no new or double meaning here. "

Applicant’s mark contains a geographical component, “AMERICAN,” that is primarily geographically descriptive of the services within the meaning of Section 2(e)(2) of the Trademark Act. Indeed, if Applicant’s arguments were accepted, virtually every use of the term AMERICAN would become suggestive. In this case, the mark presents a textbook example of the unadorned use of the term AMERICAN to primarily denote the United States as the origin of services.

Applicant also contended that is use of VETERINARY NURSES is distinctive and exclusive, but the Board again disagreed, pointing to third-party websites using the same phrase. Even if applicant were the first and only user of that phrase, it is still merely descriptive of the services.

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

Read comments and post your comment here.

TTABlog comment: AMERICAN BASH seems geographically descriptive to me. Isn't the bash held in America?

Text Copyright John L. Welch 2018.

Thursday, October 18, 2018

TTAB Test: Is "S&M" Merely Descriptive of Sex Therapy Services?

[This is a family blog, but perhaps your children shouldn't read this one. Nor should you read it to them. Unless you're prepared to answer a lot of questions.] The USPTO refused to register the mark S&M, in standard character form, for "sex therapy services," finding the mark to be merely descriptive under Section 2(e)(1). Applicant maintained that it has never provided services that involve sadomasochism. How do you think this came out? In re Therapy by Amanda LLC, Serial No. 87771775 (September 21, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).

The Board relied on, inter alia, a dictionary definition of sex therapy ("treatment of sexual disorders that have psychological causes, employing psychiatric counseling, behavior modification and education") and on applicant's own website ("Sex Therapy: Let’s address any concerns you might have about pleasure, sexual functioning, intimacy, or bedroom activities. We embody a sex-positive philosophy and are fully welcoming to all lifestyles, genders, kinks, and more.").

S&M is an abbreviation for "sadism and masochism or "sadomasochism," defined as: "1. Interaction, especially sexual activity, in which one person enjoys inflicting physical or mental suffering on another person, who derives pleasure from experiencing pain. 2. Gratification, especially sexual, gained through inflicting or receiving pain; sadism and masochism combined."

S&M is synonymous with sadism and masochism or sadomasochism which is an approach to sexual interaction that may be treated through, or otherwise discussed in, sex therapy and, therefore, S&M is merely descriptive of a subject treated by Applicant’s services.

Applicant argued that "there is no evidence that the services at issue are ever associated in any way with 'sadism and masochism,'" but the Board pointed to several websites, including applicant's own website stating that Applicant addresses any concerns potential patients have about "pleasure, sexual functioning, intimacy, or bedroom activities," including all lifestyles and "kinks." Noting the definition of "kink" as "a bizarre or unconventional sexual preference or behavior," the Board concluded that "kinks" could include S&M. [I thought "kinks" was a British rock band - ed.].

Finally, as to applicant's assertion that it has never provided services that involve sadomasochism, the Board pointed out that, even if that is true, the determination of whether Applicant’s mark is merely descriptive must be based on the recitation of services set forth in the application.

Because the services at issue are sex therapy services and sex therapy services may include counseling about S&M, the mark S&M used in connection with those services merely describes an approach to sexual interaction that Applicant might treat or otherwise discuss.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Perhaps applicant intended S&M to stand for "Sex and Magic." But an applicant's intent is irrelevant to consumer perception, isn't it?

Text Copyright John L. Welch 2018.

Wednesday, October 17, 2018

TTAB Dismisses SUPERCORE Opposition: No Likelihood of Confusion with U-CORE and No Intent to Deceive in Misuse of the “R” Symbol

[This guest post was written by Kira-Khanh McCarthy, a 2L at University of Notre Dame Law School]. In a 30-page opinion, the Board dismissed this Section 2(d) and Section 29 opposition to registration of the mark SUPERCORE in light of WFI Global’s registered mark U-CORE, both marks in standard characters and both for insulating materials and polyurethanes. Upon balancing the relevant du Pont factors, the Board found there was no likelihood of confusion. In addition, the Board ruled that while Applicant had misused the federal registration symbol, there was no evidence that it intended to deceive the public. WFI Global, LLC v. MCNS Polyurethanes USA Inc., Opposition No. 91227865 (September 28, 2018) [not precedential] (Opinion by Judge Geogre C. Pologeorgis).

Likelihood of Confusion: The Board proceeded with a lengthy likelihood of confusion analysis discussing all relevant du Pont factors. It found that the parties’ goods are “identical in part and therefore presumably move in the same trade channels and [are] offered to the same classes of purchasers.” Third-party registration evidence showed that the term “CORE” is suggestive of insulation products and, although WFI Global had achieved some commercial success, the fifth du Pont factor “only slightly favors Opposer, if at all.”

As to the marks, the Board found them to be “more dissimilar than similar in appearance, sound, meaning and commercial impression.” It focused especially on “the suggestive nature of the shared ‘—CORE’ component…as well as the suggestive nature of the ‘U—’ prefix in Opposer’s mark,” the designation “U—” being a recognized term in the fenestration industry.

Accordingly, the Board concluded that Opposer had failed to establish its Section 2(d) claim by a preponderance of the evidence.

Misuse of the Registration Symbol: Improper use of registration notice with an unregistered mark, if done with the intent to deceive, will be grounds for refusing an otherwise registrable mark. Copeland’s Enters. Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295, 1298 (Fed. Cir. 1991).

WFI Global pointed to evidence that Applicant improperly used the registration symbol with the SUPERCORE mark on proposed advertising materials before the mark had been registered. There was also evidence that Applicant continued to use the registration symbol with its mark even after being put on notice of alleged improper use (by the filing of the Notice of Opposition).

Applicant contended that it took remedial action as soon as it was informed that it should not use the trademark registration symbol prior to actual registration of its mark. Moreover, Applicant asserted that it was “unfamiliar with U.S. trademark procedures and the use of appropriate symbols” and it “never intended to deceive the public or any other person or entity in the trade into believing that its mark was registered.”

The Board found that Opposer failed to present evidence that Applicant expressly intended to deceive the public. In addition, it noted that “Applicant’s confusion regarding the proper use of the registration symbol falls within the ambit of the types of misunderstandings that the Office lists in the TMEP as ‘common reasons for improper use…that do not indicate fraud.’” See TMEP Section 906.02. Therefore, the Board dismissed the Section 29 claim.

Conclusion: Finding no likelihood of confusion and no intent to deceive while misusing the federal registration symbol, the Board dismissed the opposition.

Read comments and post your comment here.

TTABlog comment: I guess you could say that opposer's claims were defenestrated.

The Defenestration of Prague

Text Copyright Kira-Khanh McCarthy and John L. Welch 2018.

Tuesday, October 16, 2018

TTAB Test: Is The Design/Stylization of This USA SUPPLEMENTS Mark Inherently Distinctive?

This patriotic applicant sought registration of the word+design mark shown below for "dietary and nutritional supplements" [USA SUPPLEMENTS disclaimed]. Examining Attorney Ira Goodsaid issued a final refusal on the ground that Applicant’s mark, as a whole, is primarily geographically descriptive of the identified goods. By its disclaimer, applicant conceded that USA SUPPLEMENTS is geographically descriptive. But are the stylized lettering and the design element inherently distinctive so that the mark is registrable on the Principal Register? How do you think this came out? In re United States of America Supplements, LLC, Serial No. 87737243 (September 18, 2018) [not precedential] (Opinion by Judge George C. Pologeorgis).

As the Board stated in In re Sadoru Group, Ltd., 105 USPQ2d 1484, 1486 (TTAB 2012):

A display of descriptive or otherwise unregistrable matter is not registrable on the Principal Register unless the design features of the asserted mark create an impression on the purchasers separate and apart from the impression made by the words themselves, or if it can be shown by evidence that the particular display which the applicant has adopted has acquired distinctiveness.

As to the literal portion of the mark, the Board concluded that "the block-style lettering comprising the wording USA SUPPLEMENTS does not convey to the consumers any source-indicating function." The Board distinguished four cases cited by applicant that involved more stylized and distinctive marks, including these two:

As to the design element, the Board observed that "common geometric shapes such as circles, ovals, rectangles, triangles, diamonds and stars, when used as backgrounds for the display of word or letter marks, are not regarded as trademarks for the goods to which they are applied absent evidence of distinctiveness of the design alone." Here, the design element, consisting of two stacked parallelograms, "merely serves as a background carrier for the literal portion of Applicant’s mark."

Although applicant did not make a claim of acquired distinctiveness under Section 2(f), the Board searched the record for any evidence of same. Finding none, it understandably concluded that the applied-for mark had not achieved acquired distinctiveness.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Is this a WYHA?

Text Copyright John L. Welch 2018.

Monday, October 15, 2018

TTAB Test: Is "I.W. SUISSE" Confusable with the SWISS Certification Mark, Both for Watches?

The USPTO refused registration of the mark I.W. SUISSE for "Clocks and watches; Parts for watches; Watch bands and straps; all of which are of Swiss origin as defined by the Swiss Ordinance governing the use of the appellation 'Switzerland' or 'Swiss' for watches, timepiece dial faces, and parts for timepieces made in Switzerland," finding the mark likely to cause confusion with the registered certification mark SWISS for “Horological and chronometric instruments, namely, watches, clocks and their component parts and fittings thereof” in Class A. According to the registration, "[t]he certification mark, as used by persons authorized by the certifier, certifies geographical origin of the goods in Switzerland." How do you think this came out? In re Pearl 9 Group LLC, Serial No. 86539117 (October 11, 2018) [not precedential] (Opinion by Judge Lorelei Ritchie).

The Board first pointed out that applications and procedures for certification marks "shall conform as nearly as practicable to those prescribed for the registration of trademarks." Section 1054 of the Trademark Act. The Board has observed that classification as a certification mark "has very little effect on our determination as to whether or not there is a likelihood of confusion."

The test for determining likelihood of confusion with respect to certification marks is the same as that applied to trademarks, i.e., the du Pont analysis. However, because the certification mark owner does not itself use the mark, the question of whether there is a likelihood of confusion is based on a comparison of the mark as applied to the goods or services of the certification mark users. (citations omitted). Other issues relating to the goods and services, including the channels of trade and purchasers therefor, are determined from the standpoint of the users as well. (quoting In re Accelerate s.a.l., 101 USPQ2d 2047, 2049 (TTAB 2012)).

Because the identified goods are legally identical, the Board must presume that they travel in the same channels of trade to the same classes of consumers.

As to the marks, the Board noted the dictionary definitions of SUISSE (the French name for Switzerland) and SWISS (a native or inhabitant of Switzerland). "Thus, the term SUISSE is understood as referring to the country of Switzerland, from which SWISS things come." Applicant conceded that the terms are "no doubt related," but they are not identical, since SWISS refers to the people, whereas SUISSE refer to the region. The Board was not impressed, finding the terms to be highly similar in commercial impression: "clocks, watches, and their component parts that are Swiss, because they originate from Switzerland."

Observing that there is no correct pronunciation of a trademark that is not a recognized word, the Board found that SUISSE may be pronounced the same as SWISS.

Citing CAFC and Board precedent, Applicant argued that the first term in its mark is most likely to be remembered and noticed. It maintained that "I.W." stands for "International Watchman," the name of its company, and that International Watchman is a well-knows and very successful watch brand. The Board, however, pointed out that addition of a house mark does not necessarily avoid likelihood of confusion, and may enhance it.

Finally, applicant argued that the cited mark SWISS is weak because it is "merely descriptive." The Board pointed out, however, that Section 2(e)(2), which bars registration of marks that are primarily geographically descriptive, specifically exempts "indications of regional origin." Section 4 of the Trademark Act provides for registration of certification marks, "including indications of regional origin."

The Board concluded that consumers are likely to perceive I.W. SUISSE as a variant of the certification mark SWISS for the same goods, and so it affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: The SWISS certification mark registration survived a challenge in 2012 on five grounds, including genericness, in Swiss Watch International, Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d 1731 (TTAB 2012) [precedential]. [TTABlogged here].

Text Copyright John L. Welch 2018.

Friday, October 12, 2018

TTAB Test: Is YAMSAFER (Arabic) Merely Descriptive of Travel Agency Services?

Almosafer Travel petitioned to cancel a registration for the mark YAMSAFER for travel agency services, on the ground of mere descriptiveness. The registration states that the English translation of YAMSAFER, an anglicized version of an Arabic word, is YOU THE TRAVELER. Does the doctrine of foreign equivalents apply to Arabic? How do you think this came out? Almosafer Travel and Tourism Company v. Yamsafer Inc. dba Yamsafer, Cancellation No. 92063145 (October 5, 2018) [not precedential] (Opinion by Judge Thomas W. Wellington).

Under the doctrine of foreign equivalents, foreign words from common, modern languages are translated into English to determine, inter alia, descriptiveness. The doctrine applies when ordinary American consumers, including those proficient in the foreign language, would stop and translate the word into English.

Data from the U.S Census Bureau indicated that Arabic is one of the top ten commonly spoken foreign languages in the United States as of 2017. More than 924,000 people speak Arabic at home, of whom more than 500,000 also speak English "very well" or better. Therefore the doctrine of foreign equivalents is applicable.

The Board then turned to the question of the meaning of YAMSAFER. Neither party introduced a translation of the Arabic term from an authoritative source. Respondent admitted in its discovery responses that YAMSAFER means "you the traveler" and two other admissions indicated that YAMSAVER is "a transliteration of 'the same or nearly identical Arabic word' that means 'traveler.'"

The word "traveler" is merely descriptive of the intended consumer of respondent's travel services. The Board saw little meaningful difference whether YAMSAFER means "traveler" or "you the traveler," since "the same essential information with descriptive significance will be conveyed to the relevant consumers, namely that the involved services are for 'travelers' or for 'you the traveler.'"

The Board concluded that petitioner had overcome the presumption that the registration is valid, and had proven by a preponderance of the evidence that "consumers of Respondent's travel agency services who are knowledgeable of Arabic would immediately understand YAMSAFER to convey information about a feature of those services, namely, that travelers are the intended recipients of the services." Therefore the mark is merely descriptive of the services, and the Board granted the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: Is YAMSAFER generic for travel agency services? Petitioner argued that it identifies a "key aspect" of the services, but the Board declined to reach that issue. Note that the Board refused to take judicial notice of printouts from the "Google Translate" website.

If a person knowledgeable were knowledgeable in Arabic (or any foreign language), wouldn't the meaning of the foreign term be recognized and understood by that person even without translating it into English? 

Text Copyright John L. Welch 2018.

Thursday, October 11, 2018

CAFC Renders Split Decision in CORN THINS and RICE THINS Appeal: Affirming Mere Descriptiveness But Remanding on Genericness

The CAFC issued a spit decision in this appeal from the TTAB's February 21, 2017 ruling [TTABlogged here] sustaining oppositions to registration of CORN THINS for "crispbread slices predominantly of corn, namely popped corn cakes," and RICE THINS for "crispbread slices primarily made of rice, namely rice cakes" [CORN and RICE disclaimed]. The appellate court upheld the Board's findings that the marks are merely descriptive of the goods and lack acquired distinctiveness. However, the Board vacated the Board's conclusion that the mark are not generic for the goods, remanding the case for reconsideration of the genus selected by the Board for its analysis. Real Foods Pty., Ltd. v. Frito-Lay North America, Inc., Appeals No. 2017-1959, 2017-2009 (Fed. Cir. October 4, 2018) [precedential].

Mere Descriptiveness: Substantial evidence supported the Board's finding that the marks are "highly descriptive" of the goods. The terms "corn" and "rice" are descriptive because "they identify 'ingredients, " which are "qualities or properties" of the goods. The term "thins" describes physical characteristics of the goods. The composite terms do not create a different commercial impression; they immediately convey information of a quality or characteristic of the products.

Appellant Real Foods urged that the marks are double entendres, but the CAFC agreed with the Board that the marks have no additional suggestive meaning, since the word "thins" has been used with food products that are thin in shape. The existence of several third-party registrations for marks containing the word "thins" was of limited probative value, because each trademark application must be examined on its own merits.

Acquired Distinctiveness: Substantial evidence supported the Board's finding that Real Foods had failed to prove that the applied-for marks have acquired distinctiveness. According to the Board, Real Foods "has done little or no advertising," and its sales figures "while  not  insignificant,  are  not  high." Moreover, the use of the term "thins" is not limited to applicant. Opposer Frito Lay's survey, showing less than 10% recognition of the mark as a source indicator, established the "limited recognition of CORN THINS as a mark."

Genericness: The Board identified the genus of the goods as "popped corn cakes" for CORN THINS and "rice cakes" for RICE THINS. The CAFC pointed out, however, that "[A] term can be generic for a genus of goods or services if the relevant public understands the term to refer to a key aspect of that genus." Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 1367 (Fed. Cir. 2018).

Furthermore, the question of registrability must be decided on the basis of the identification of the goods set forth in the application, regardless of the actual nature of the applicant's goods. In re Cordua at 602.

The TTAB improperly narrowed the genus of the goods at issue. The Applications initially identified the goods as “[c]rispbread slices predominantly of corn,” J.A. 53, and “crispbread slices primarily made of rice,” J.A. 209. During the opposition proceedings, Real Foods moved to amend the goods as “crispbread slices predominantly of corn, namely popped corn cakes” and “crispbread slices primarily made of rice, namely rice cakes,” J.A. 279 (emphases added), and the TTAB granted Real Foods’ motion to amend, Frito-Lay, 2017 WL 914086, at *21. In its Opinion, the TTAB defined the genus of the goods strictly by reference to the newly added portion of the amended language, identifying the genus as “popped corn cakes” for the CORN THINS mark and “rice cakes” for the RICE THINS mark. Id. at *4.

The Board failed to consider that the applications popped corn cakes and rice cakes are types of crispbread slices, "which, in turn, the record defines as types of crackers." This was error. "[C]orn cakes and rice cakes are the species, not the genus." The Board provided no reasoning for choosing the narrowed identification of goods as the genus.

The CAFC therefor remanded the case to the Board "to reconsider its selected genus and conduct is genericness analysis in light of that genus."

Read comments and post your comment here.

TTABlog comment: Even though the marks were unregistrable under Section 2(e)(1), Frito-Lay still had standing to pursue its genericness claims, since the subject "marks" were eligible for registration on the Supplemental Register.

BTW, if Real Foods had amended its applications to only "popped corn cakes" and "rice cakes," would this appeal have come out differently? The CAFC seems determined to widen the goal posts when it comes to genericness.

Text Copyright John L. Welch 2018.

Wednesday, October 10, 2018


[This guest post was authored by John S. Strand, Trademark & Litigation Shareholder at Wolf Greenfield.] As we’ve noted before on this blog, third-party registrations and uses may help an applicant overcome a Section 2(d) refusal under Juice Generation and Jack Wolfskin, but it depends on the quantity and quality of those registrations and uses. Here, the mark at issue was DIAMONDS ON THE ROCKS for “jewelry, namely diamond jewelry.” Applicant attempted to overcome a Section 2(d) refused based on a registration for SILVER ON THE ROCKS for “jewelry made in whole or significant part of silver.” Ultimately, the Board stranded the Applicant on the rocks and upheld the Examining Attorney’s rejection, even after applicant presented five common law uses of the phrase ON THE ROCKS. In re Don Vintache Inc., Serial No. 86186795 (Sept. 27, 2018) [not precedential] (Opinion by Judge Francie R. Gorowitz).

The goods and channels of trade: The Board found the involved goods and channels of trade are at least “in-part identical” because the Examining Attorney put forth evidence to show “that both ‘jewelry made in … significant part of silver’ and ‘diamond jewelry’ may encompass silver jewelry containing diamonds.”

The marks: The Board found that the marks at issue differed only in the highly descriptive or generic element – “silver” versus “diamonds.” The Board found the phrase “ON THE ROCKS” to be the dominant, unitary portion of the mark, defined as “(of a drink) served undiluted and with ice cubes” and “(of a relationship or enterprise) experiencing difficulties and likely to fail.”

The Board rejected the Applicant’s attempts to isolate the word “ROCKS” from the unitary phrase “ON THE ROCKS.”

Strength of the cited mark: Applicant contended that the phrase “ON THE ROCKS” was highly diluted. It did not introduce any other registrations, but instead introduced web pages from five different web sites related to various jewelry stores. The Board found that “merely five potential uses of the phrase ‘ON THE ROCKS,’ [was] not sufficient to establish that the phrase carries a suggestive or descriptive connotation in the jewelry industry and thus is weak.” The Board continued by expressly finding that this evidence was “easily distinguishable” from the evidence presented in Juice Generation and Jack Wolfskin.

Interestingly, if the Board would not have found the phrase “ON THE ROCKS” to be unitary, the Board likely would have had to evaluate the strength of the cited mark based on 15 different registrations for jewelry items containing the word “ROCKS” that the Applicant introduced.

Conclusion: The Board found DIAMONDS ON THE ROCKS likely to cause confusion with the cited registered mark SILVER ON THE ROCKS, and so it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Well, would you have appealed?

Text Copyright John L. Welch 2018.

Tuesday, October 09, 2018

Precedential No. 32: Giving "Great Weight" to Two Consent Agreements, TTAB Reverses Section 2(d) Refusal of AMERICAN CONSTELLATION for Cruise Ship Services

Giving "great weight" to two consent agreements, the Board reversed a Section 2(d) refusal of AMERICAN CONSTELLATION, finding the mark not likely to cause confusion with the registered mark CONSTELLATION, both for cruise ship services. The Examining Attorney maintained that these were "naked" consents because they did not state the steps the parties would take to avoid confusion, but the Board pointed out that such terms are not essential for the consents to have probative value. In re American Cruise Lines, Inc., 128 USPQ2d 1157 (TTAB 2018) [precedential] (Opinion by Judge Marc A. Bergsman).

Purchaser Care: Because the services involved are identical, the Board must presume that the channels of trade and the classes of consumers are the same. See In re Viterra. Applicant asserted that selecting a cruise is not an impulse purchase, but is "based on careful research and investigation in light of the purchaser's travel goals and travel budget." Applicant supported this assertion with the testimony of one its officers, and by a statement from Registrant's CEO in one of the consent agreements. The Examining Attorney contended these two (self-serving) statements must be corroborated by additional evidence, but the Board disagreed: the Examining Attorney "disregards that the statements were made by two people who work in the cruise ship industry" and even if the statement of applicant's officer were deemed less persuasive, "the statement of Registrant's officer certainly must be considered probative evidence on this point."

The Board found that customers for the involved services exercise a heightened degree of care when selecting cruise ship services.

The Marks: The Board found that the marks have a similar meaning and convey a similar commercial impression "because the name AMERICAN CONSTELLATION means and engenders the commercial impression of an American star or group." The fact that the cited mark is contained in the applied-for mark increases the similarity between the two.

Consent Agreements: In the second consent agreement, the parties set forth reasons why they believe there will be no likelihood of confusion: they provide cruise ship services in different parts of the world; applicant agreed not to refer to its ship as CONSTELLATION, but always as AMERICAN CONSTELLATION; cruise ship customers exercise heightened care when selecting a cruise; customers know that applicant uses "American" as a house mark; there has been no actual confusion during ten years of coexistence; and confusion is unlikely, since other cruise lines operate many ships under names that share a common term (e.g., LEGEND and LEGEND OF THE SEAS).

The Examining Attorney maintained that the consent agreements were not probative because they were "naked": i.e., they do not describe the arrangements to avoid confusion and do not contain any agreement regarding efforts to avoid confusion. The Board, however, found that the the second consent agreement was "clothed" because it included four reasons why applicant and registrant believed confusion was not likely.

A provision in the consent agreement that the parties agree to make efforts to prevent confusion or to cooperate and take steps to avoid any confusion that may arise in the future may render the agreement more probative, but it is not an essential provision for the agreement to have probative value. *** [N]o authority requires that parties explicitly agree to make efforts to prevent confusion or to cooperate and take steps to avoid any confusion that may arise in the future as a prerequisite to giving some weight to a consent agreement.

In sum, "[w]hile the inclusion of provisions to avoid any potential confusion are preferred and probative in consent agreements, they are not mandatory."

The Board pointed out that the provision that applicant and registrant operate in different areas of the world is not probative, since that restriction is not reflected in the application or cited registration. However, the remaining four (sic) provisions "are probative that the consent agreement reflects the reality of no likelihood of confusion in the marketplace." Therefore the subject consent to use and register "weighs heavily" against a likelihood of confusion.

"[C]lothed” consent agreements where “competitors have clearly thought out their commercial interests” should be given great weight, and the USPTO should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason, that is, unless the other relevant factors clearly dictate a finding of likelihood of confusion.

See In re Four Seasons Hotels Ltd., 26 USPQ2d at 1073 (quoting In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969 (Fed. Cir. 1985)); see also du Pont, 177 USPQ at 568 ("A mere assumption that confusion is likely will rarely prevail against uncontroverted evidence from those on the firing lot that it is not.")

Conclusion: The Board found that confusion between the subject marks is not likely, and so it reversed the refusal to register.

Read comments and post your comment here.

TTABlog comment: "Naked consent agreements are effective only in nudist colonies." David Perlsack Perlsack on Trademarks, 3rd ed. 2017.

BTW: The Board lists six reasons that were included in the consent agreements (pp. 11-12), but points out that one is not probative and the remaining "four" are probative (p. 14). Either the Board is mis-counting or I am.

Text Copyright John L. Welch 2018.

Monday, October 08, 2018

TTAB Test: Which Of These Three Section 2(d) Refusals Was Reversed?

It has been said that one can predict the outcome of a Section 2(d) appeal 95% of the time just by looking at the marks and the goods or services. Presented for your consideration are three recent TTAB decisions in Section 2(d) appeals. One refusal was reversed. Which one? [Answer in first comment].

In re Norková, Serial No. 79199465 (September 28, 2018)  [not precedential] (Opinion by Judge Christopher Larkin). [Section 2(d) refusal of ZIPZAP for "“drying racks for laundry; clothes pegs" in view of the identical mark registered for "scissors, in particular hair cutting scissors, manicure scissors, sheet-metal shears, poultry shears, cable scissors; tree pruning shears; nippers, nail nippers, cuticle nippers; files; utility knives and pliers"].

In re Treehouse Pictures, LLC, Serial No, 87142861 (September 28, 2018) [not precedential] (Opinion by Judge George C. Pologeorgis) [Section 2(d) refusal of the TREEHOUSE PICTURES & Design for “Film production; television show production" [PICTURES disclaimed] in view of the registered mark TREEHOUSEDIRECT for "Entertainment services, namely, the provision and distribution of prerecorded television programs and films via a global computer network"].

In re Paradyce Clothing Company, Inc., Serial No. 87562296 (October 1, 2018)  [not precedential] (Opinion by Judge Frances Wolfson) [Section 2(d) refusal of PARADYCE for various clothing items, in view of the registered mark PAR-A-DICE HOTEL-CASINO for overlapping clothing items].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2018.