Friday, February 15, 2019

TTABlog Test: Is "PINK COW & Design" Confusable With "RED BULL & Design" for Soft Drinks?

Red Bull GmbH opposed an application to register the mark PINK COW & Design (shown first below) for "Beers; mineral and aerated waters; soft drinks; smoothies; vegetable juice; fruit drinks and fruit juices; concentrates for making fruit drinks; syrups for making non-alcoholic beverages; excluding energy drinks," alleging a likelihood of confusion with its registered mark RED BULL & Design (second below) for "soft drinks; and sports drinks." The goods overlap ("soft drinks"), but what about the marks? Are they confusable? How do you think this came out? Red Bull GmbH v. Morganti Flavio Innovaciones Gastronomicas, S.L., Opposition No. 91223317 (January 18, 2019) [not precedential] (Opinion by Judge Susan J. Hightower).

du Pont factors 2, 3, and 4: Because the goods are identical in part, the Board presumed that those goods move in the same channels of trade to the same classes of consumers. These factors "weigh heavily" in opposer's favor. Moreover, because the involved goods are relatively inexpensive, "the risk of likelihood of confusion is increased because purchasers of such products are held to a lesser standard of purchasing care."

Strength of Opposer's Mark: The Board found Red Bull's mark to be inherently distinctive. As to commercial strength, Red Bull claimed that its mark(s) are famous. It provided "significant evidence of fame" (all under seal). Although Red Bull's evidence had some shortcomings, it "easily supports a finding that Opposer's mark is famous on the spectrum employed" in the du Pont analysis. This fifth du Pont factor heavily favored opposer. [Note, although this evidence of fame related to "energy drinks," which are expressly excluded from applicant's identification of goods, the evidence was pertinent because the Board found that energy drinks are "soft drinks." - ed.].

Similarity of the Marks: The Board found some similarity between the marks in sound and appearance, and "strong similarity" in connotation and overall commercial impression. "The verbal portion of each mark totals seven letters and comprises two short, one-syllable words denoting a color followed by a term for a bovine."

As the connotation, the Board observed that "pink is a lighter shade of red." Furthermore, "'Bull' is defined as a 'male bovine; especially: an adult uncastrated make domestic bovine,' while definitions of 'cow' included both 'the mature female of cattle' and 'a domestic bovine animal regardless of sex or age.'"

Thus, “bull” and “cow” can mean male and female bovines, respectively. But in common vernacular, a “bull” also can be a “cow,” that is, “a domestic bovine animal regardless of sex or age.” Per the record, therefore, consumers can interpret BULL and COW either as designating bovines of the opposite sex or as synonyms.

The fact that the involved marks each incorporates bovine imagery increases their similarity. "Indeed, consumers are likely to construe Applicant's mark as a feminized version of Opposer's mark."

The Board therefore found that the first du Pont factor favors a finding of likely confusion.

Conclusion: Noting that fame plays a dominant role in the du Pont analysis, and keeping in mind that any doubts must be resolved against the newcomer, the Board found confusion likely and it sustained the opposition. The Board declined to rule on Red Bull's dilution and false association claims.

Read comments and post your comment here.

TTABlog comment: What do you think? Please avoid any barnyard epithets.

Text Copyright John L. Welch 2019.

Thursday, February 14, 2019

"OOPS! WRONG ANSWER" Fails to Function as a Mark for a Trivia Website, Says TTAB

[This blog post is a collaborative effort of yours truly and members of the IP CO-LAB Clinic at Northeastern University]. The Board affirmed a refusal to register the phrase OOPS! WRONG ANSWER, finding that it fails to function as a mark for trivia website services. The Board likewise affirmed the same refusal for CONGRATULATIONS! YOU ARE CORRECT! Applicant Trivia Today feebly argued that it uses the phrases "prominently appearing by themselves or in different font colors," unlike the third-party uses cited by the examining attorney, and that the USPTO has registered other OOPS and CONGRATULATIONS marks. In re Trivia Today, LLC, Serial Nos. 86760550 and 86745338 (February 8, 2019) [not precedential] (Opinion by Judge David K. Heasley).

To function as a service mark, a proposed mark must, by definition, “identify and distinguish the services of one person ... from the services of others and … indicate the source of the services, even if that source is unknown.” Lanham Act Section 45. "The critical inquiry in determining whether a designation functions as a service mark is how it would be perceived by the relevant public." In order to assess how consumers would perceive the phrases sought to be registered, the Board looks to the specimens of use and to the evidence of record showing the phrases as used.

Examining Attorney Lauren E. Burke maintained that the applied-for marks convey information "that a question has been answered correctly or incorrectly, but do not indicate the entity asking the question." She pointed to a number of uses of the same or similar phrases from third-party websites. Applicant Trivia Today pointed to its use of varying font colors, and to several third-party registrations for marks containing CONGRATULATIONS or OOPS (none of which were in the trivia field).

The Board, however, noted that applicant sought registration of the phrases in standard character form, not in any particular colors or font. As to the third-party registered marks:

None are similar to the subject applications, where the wording of the proposed marks, CONGRATULATIONS! YOU ARE CORRECT! and OOPS! WRONG ANSWER., functions as a part of the services, indicating whether one’s answers to a trivia guessing game are correct or incorrect.

The Board concluded that the applied-for marks are merely informational and fail to identify the source of the services.

They must accordingly remain in the public domain, available to all competitors. In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1460 (TTAB 1998). As McCarthy puts it, “as a matter of competitive policy, it should be close to impossible for one competitor to achieve exclusive rights” in common phrases or slogans. 1 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 7:23 (5th ed. Nov. 2018 update).

And so the Board affirmed the refusals to register.

Read comments and post your comment here.

TTABlog comment:  Interesting point about the phrases functioning as part of the services. Compare that with registered, arguably common phrases, like JUST DO IT, or the SMILE MORE mark discussed here.

Text Copyright John L. Welch et al. 2019.

Wednesday, February 13, 2019

TTAB Dismisses 2(d) Opposition to "M" Mark for Medication Costing Software

The Board dismissed this Section 2(d) opposition to registration of the mark shown below left, for software "for providing information to medical personnel and patients regarding the cost of a patient’s prescription medication taking into account that patient’s insurance coverage," finding that opposer had failed to prove a likelihood of confusion with the two registered marks shown below right, for various medical services and publications. H. Lee Moffitt Cancer Center and Research Institute, Inc. v. Milligram, Inc., Opposition No. 91228243 (February 11, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).

Goods and Services: Opposer Moffitt failed to proved that its goods and services are related to applicant's software. Although "intuitively the 'evaluation and testing of drug and treatment effectiveness relating to cancer and other diseases' should have a connection to pharmacy services," applicant’s description of goods and services does not involve pharmacy services. There was no testimony or evidence "that other treatment or research centers provide information regarding the cost of prescription medications taking into account that patient’s insurance coverage."

As to trade channels, the Board noted that "some patients in need of cancer treatment will need prescription medications and will want a means for determining the price for the prescription medications. Accordingly, Opposer’s goods and services will be offered to some of the same consumers as Applicant’s goods and services."

Strength of Opposer's Marks: Opposer is a well-known center for cancer research, but opposer failed to show that consumers associate the stylized letter “M” design mark with Opposer or that the "M" is a well-known trademark. Moreover, opposer uses its "M" mark primarily adjacent to the phrase MOFFITT CANCER CENTER. Thus opposer failed to show that its "M" mark is commercially stronger than any other mark.

The Board considered various third-party "M" marks in the medical field and concluded that "companies create use logos incorporating the first letter of their trade name. Presumably, consumers encountering logos incorporating the first letter of an entity’s trade name are likely to associate the logos with the trade names and, that without evidence that consumers identify the letter logos as standalone marks, such marks should not entitled to a broad scope of protection." As to opposer's stand alone "M" mark, the Board placed in the middle of the spectrum between weak and very strong.

The Marks: The Board found that the involved marks are not similar, "[g]iven the conditions under which or the degree of care consumers will naturally exercise in selecting goods and services in the field of health care, cancer protection, prevention, detection and treatment."

Conclusion: Although some consumers may encounter the marks of the parties, because the marks are not similar and the goods and services are not related, the Board found no likelihood of confusion.

Read comments and post your comment here.

TTABlog comment:  Well, this was not the most exciting case I've ever read, but there you have it.

Text Copyright John L. Welch 2019.

Tuesday, February 12, 2019

TTABlog Test: Are These Two "I-10" Marks Confusable for Beer?

The USPTO refused registration of the mark shown immediately below, for beer, finding the mark likely to cause confusion with the registered mark I-10 for "beer, ale, lager, stout and porter." The goods overlap, but what about the marks? How do you think this came out? In re RPD Management, LLC, Serial No. 87573250 (February 11, 2019) [not precedential] (Opinion by Judge Peter W. Cataldo).

The Board found that the du Pont factors regarding of the goods, channels of trade and classes of consumers "weigh heavily in favor of likelihood of confusion."

As to the marks, the Board not surprisingly found "I-10" to be the dominant portion of the applied-for mark (the remaining terms appearing in the mark were disclaimed). Applicant's mark is likely to be shortened to "I-10" by consumers.

Applicant argues that the facts of this case are similar to those presented in In re Covalinski, 113 USPQ2d 1166 (TTAB 2014) [TTABlogged here], in which the Board found no likelihood of confusion between the applied-for mark (shown below) for various clothing items and the registered mark RACEGIRL for clothing items that encompassed in part the applicant’s goods.

Here, however, "the vintage wagon in Applicant's mark "clearly displays the wording emblazoned upon the sides, hood and front of the car. The design does not draw the viewer’s attention away from the wording, but rather draws attention to the wording by incorporating it into the design."

A consumer viewing Applicant’s mark cannot look at the design without noticing and reading the wording that covers large portions of the car. The largest lettering, “I-10” and “IPA” are particularly prominently displayed on the door and hood of the wagon. There is no separate design element, such as the “RR letters” in the Covalinski mark to either draw attention away from the wording or render the wording difficult to read. As a result, we find the facts of Covalinski to be distinguishable from those in the instant appeal.

The Board concluded that "the fact that each mark is dominated by the same term 'I-10' simply outweighs the points of

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: WYHA?

Text Copyright John L. Welch 2019.

Monday, February 11, 2019

Denying Cancellation Petition, TTAB Finds that Roman Atwood's "SMILE MORE" Functions as a Mark

The Board dismissed this petition for cancellation of Roman Atwood's registration for the mark SMILE MORE for various goods (stickers, backpacks, shirts) and for retail store service featuring clothing, denying petitioner's claim that the term fails to function as a mark. The evidence of a very small number of third-party uses for related goods was insufficient to undermine the source-identifying significance of the phrase. Disorderly Kids, LLC. v. Roman Atwood, Cancellation No. 92062027 (November 28, 2018) [not precedential] (Opinion by Judge Peter W. Cataldo).

YouTube personality and comedian Roman Atwood

Although Atwood's specimens of use in the underlying application displayed the mark in an ornamental fashion on his goods (e.g., the t-shirt above), his service mark specimens did not. Those specimens showed the SMILE MORE mark used with "The Official Smile More Store" and the "Roman Atwood Pranks" YouTube channel, and "clearly associate the SMILE MORE mark with Respondent."

Moreover, as to the goods, the term SMILE MORE "conveys to the public a secondary source, namely, Respondent Roman Atwood, his YouTube channel and the content he posts there, and is registrable on the Principal Register." In re Paramount Pictures Corp., 213 USPQ at 1112 (in this case, wording on a T-shirt “inherently tells the purchasing public the source of the T-shirt, not the source of the manufacturer but the secondary source.”).

Petitioner submitted evidence of a "modest number" of third-party uses of the wording "Smile More" and formatives thereof for t-shirts, hats, stickers, and the like. But the record evidence also showed that Atwood "actively and vigorously polices his SMILE MORE mark and views such uses as infringement."

Respondent has successfully prevented or stopped such uses by Café Press,, USCD Apparel and RedBubble, i.e., the very third parties Petitioner relies upon for its assertion of widespread use of “Smile More” in connection with the relevant field of goods and services. The record further establishes that fans of Respondent actively report such uses when they encounter them. In addition, the record reflects that some of the third-party users point to Respondent when advertising their “Smile More” merchandise in an attempt to associate their goods with him.

Petitioner pointed to eight registrations of SMILE MORE and SMILE-formative marks for dental services and snack foods, but none related to the goods in Atwood's registration.The Board concluded that this is "not a case in which widespread ornamental use of the phrase SMILE MORE by third parties" may influence how the mark is perceived. "To the contrary, the record evidence . . . supports a finding that SMILE MORE, as used in connection with the goods and services recited in the Registration, serves to indicate a single origin or source, namely Respondent."

The Board therefore dismissed the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: I suspect that Mr. Atwood is smiling more after this ruling.

Text Copyright John L. Welch 2019.

Friday, February 08, 2019

TTAB Reverses Descriptiveness Refusal of “CANNABIS CANNIBALS” for Cartoons Featuring Cannabis-Smoking Cannibals

[This guest post was written by Stephanie Grace Stella, an associate in the Trademark Group at Wolf, Greenfield & Sacks, P.C.]. The Board reversed a Section 2(e)(1) mere descriptiveness refusal of CANNABIS CANNIBALS for “entertainment services, namely, an ongoing series featuring animated cannabis smoking cannibals provided through network or cable TV and the internet,” finding that the mark’s primary significance is to indicate to viewers “an ongoing entertainment series and the fanciful animated fictional, principal characters of the series.” In re Jeffrey Butscher, Serial No. 87572095 (January 29, 2019) [not precedential] (Opinion by Judge Peter W. Cataldo).

The Examining Attorney concluded that the proposed mark CANNABIS CANNIBALS “merely describes the subject matter of [Applicant’s] series.” In response, Applicant Jeffrey Butscher conceded that the series features animated cannabis-smoking cannibals, but argued (1) “the mark is suggestive because viewers will have to use their imagination to discern the thematic content and genre of the show,” and (2) the Board should apply the competitors' use and competitors' need tests, relying on the Board’s 1985 decision in No Nonsense Fashions. The Board noted, however, that it has rejected the tests set forth in No Nonsense Fashions, and it reiterated that the test for descriptiveness is “whether a mark immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.”

There is no requirement that the Office prove actual competitor use or need; it is well established that even if an applicant is the only user of a merely descriptive term, this does not justify registration of that term. . . . Descriptiveness must be evaluated in relation to the particular goods [or services] for which registration is sought, the context in which it is being used, and the possible significance that the term would have to the average purchaser of the goods [or services] because of the manner of its use or intended use. [Citations and quotation marks omitted.]

Applying the appropriate test, the Board concluded that the proposed mark is not merely descriptive because “the primary significance of CANNABIS CANNIBALS to a prospective viewer indicates an ongoing entertainment series and the fanciful animated fictional, principal characters of the series.” The Board reasoned that “[to] hold to the contrary would lead to the inequitable result that this Applicant, as well as countless other applicants in the creative industries, could not register their marks because the marks identify their characters or the subject matter of the televisions shows.” The Board relied on several precedential decisions involving similar marks, including MORK & MINDY for decals ornamented with the mark, and design marks comprising drawings of Superman, Batman and the Joker for toy dolls of those characters.

The Board distinguished this case, where Applicant owns intellectual property rights in the work from which the “cannabis-smoking cannibal” characters arose, from those where the character is in the public domain. For example, in In re Carlson Dolls Co., 31 USPQ2d 1319, 1320 (TTAB 1994), the Board held that LITTLE MERMAID for dolls is merely descriptive because "a fictional public domain character like the Little Mermaid of the Hans Christian Anderson fairy tale is not necessarily linked to a specific commercial entity and may be presented in various embodiments . . . and, thus. describes the purpose or function of the goods (i.e., to represent the Little Mermaid of the fairy tale)." (quoting In re United Trademark Holdings, Inc. 122 USPQ2d 1796, 1799 (TTAB 2017).

The Board further distinguished cases such as In re Weather Channel, Inc., 229 USPQ 854 (TTAB 1986), in which the Board found THE WEATHER CHANNEL to be generic for “a television transmission whose subject matter exclusively concerns the weather because viewers would understand that term as the apt descriptive name for television channel dedicated to the weather.” The Board reasoned that, in this case, the mark CANNABIS CANNIBALS connotes “the fanciful animated, fictional subjects of Applicant’s entertainment services created by Applicant rather than a factual subject matter.”

Finally, the Board noted that the alliterative use of the letter “C” as the first consonant in both terms of the CANNABIS CANNIBALS mark, “while not dispositive in and of itself, adds to the character of the mark.”

And so the Examining Attorney’s descriptiveness refusal went up in smoke.

Read comments and post your comment here.

TTABlog comment: Stephanie is still working on her punsmanship

Text Copyright Stephanie Grace Stella and John L. Welch 2019.

Thursday, February 07, 2019

TTABlog Test: Are Automobile Dealerships and Car Washing Services Related?

White Horse Wash opposed the application of White Horse Auto to register the mark WHITE HORSE AUTO for automobile dealerships [AUTO disclaimed], claiming a likelihood of confusion with opposer's mark WHITE HORSE AUTO WASH for "automobile and vehicle washing; automobile and vehicle detailing" [AUTO WASH disclaimed]. The marks are nearly identical, but are the services related under Section 2(d)? White Horse Wash, LLC v. White Horse Auto, LLC, Opposition No. 91230312 (January 29, 2019) [not precedential] (Opinion by Judge Michael B. Adlin).

The Board noted that applicant's automobile dealership is located less than two miles from opposer’s carwash, both located in Warrenton, Virginia. [How relevant is this fact, given that applicant is seeking a nationwide registration and it can be assumed that its services could or would be offered right next door to opposer's carwash? - ed.].

The Board found probative "a meaningful number of mistaken inquiries and assumptions about these two businesses that are two miles apart in a relatively small town, and use essentially the same marks in connection with automobile-related services." It observed, however, that certain testimony of opposer's owner and employees was of minimal probative value "in the absence of testimony from the third parties themselves 'as to whether they were confused and, if so, what caused their confusion'") (quoting Corp. Fitness Programs, Inc. v. Weider Health and Fitness, Inc., 2 UPQ2d 1682, 1691 (TTAB 1987), set aside on other grounds, 7 USPQ2d 1828 (TTAB 1988)).
Of course, the fact that the parties both provide automobile-related services is not enough to establish a relationship between the services for Section 2(d) purposes. However, the Board pointed out once again that because the parties’ marks are "so highly similar," the degree of similarity between the services needed to support a finding of likelihood of confusion is reduced. Indeed, "[c]onsumers could very well perceive WHITE HORSE as an 'umbrella' mark or name for a group of local automobile-focused businesses each of which provides different goods or services." "In this case, customers who buy their used cars from Applicant’s dealership may very well encounter or use one of Opposer’s car washes."

The Board found that the channels of trade and classes of consumers "overlap to the significant extent that both parties by definition target their sales and advertising to motorists, car owners and car buyers."

Thus, they travel in primarily local trade channels, with Opposer’s customers by definition having to bring their cars to Opposer’s place of business for a wash, and most of Applicant’s customers having to visit Applicant’s place of business to negotiate for, or ultimately pick up, a car. In doing so, some are likely to encounter the other business with a similar name, simply by driving by it, or being exposed to, for example, its Warrenton focused marketing efforts, heightening the likelihood of confusion. This factor weighs in favor of finding a likelihood of confusion

The Board agreed with applicant that the likelihood of confusion is lessened because applicant’s services are significantly more expensive than opposer’s and thus "applicant’s customers are likely to exercise much more care in purchasing than Opposer’s customers." [But what about opposer's customers? - ed.]  In any case, in view of the near identity of the marks "used in the same general field in local in local trade channels," even sophisticated purchasers are likely to be confused.

And so the Board sustained the opposition.

Read comments and post your comment here.

TTABlog comment: I guess you could say that opposer had more horsepower.

Text Copyright John L. Welch 2019.

Wednesday, February 06, 2019

TTABlog Test: Is "THE OFFICIAL SEXIFIT & Design" Confusable with "IFIT" for Fitness Services?

ICON Health & Fitness opposed Procheer's application to register the mark shown immediately below, for "providing fitness instruction services in the field of dance, and physical fitness," alleging a likelihood of confusion with its registered mark IFIT for, inter alia, physical fitness instruction. The services overlap, but what about the marks? Are they confusable? ICON Health & Fitness, Inc. v. Procheer Fitness and Dance, Opposition No. 91230219 (February 1, 2019) [not precedential] (Opinion by Judge Albert Zervas).

Fame: Opposer ICON claimed that its mark is famous, pointing to sales figures for its fitness machines and other products, the number of apps that have been downloaded, the number of visits to its website and blog, its advertising in various media, the availability of its products at major retailers such as Walmart and, its trade show participation, various awards it has received, and use of the IFIT mark since the 1990s. The Board found this evidence "impressive," but much of it concerned opposer's goods and not fitness instruction services. Nonetheless, the Board found that "Opposer has established that its mark is very strong in the field of fitness instruction due to its impressive showing concerning its many fitness-related products."

Turning to the marks, the Board first noted that Opposer's mark is in standard character form, and is thus not limited to any particular font, style, color, or size of display. In applicant’s mark, the large wording SEXIFIT is the dominant part of the mark both because it is the wording in a word+design mark that consumers will use to call for the services, and because the term SEXIFIT is substantially larger than the other wording in the mark.

Of course, the first letter “I” is in the shape of a slim barbell; consumers would likely view this as part of the term SEXIFIT and not as an independent design element separating the wording SEX and FIT.

The Board found that the marks are similar in commercial impression because of applicant’s inclusion of the entirety of opposer’s mark in the applied-for mark.

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

The services, trade channels and classes of consumers overlap. Opposer’s mark is a very strong mark and there is no evidence of third-parties using similar marks. Opposer’s and Applicant’s marks are similar, and consumers are likely to exercise a relatively low degree of care when making purchasing decisions for the involved fitness instruction services.

Read comments and post your comment here.

TTABlog comment: Well, what do you think? It seems to me that applicant's mark would be perceived as SEXI-FIT, not SEX-IFIT.

Text Copyright John L. Welch 2019.

Tuesday, February 05, 2019

TTAB Finds COMBAT ROSARY Generic for . . . Guess What?

[This guest post was written by Kira-Khanh McCarthy, a 2L at University of Notre Dame Law School]. The TTAB affirmed a refusal to register COMBAT ROSARY (in standard characters, “Rosary” disclaimed) for “rosaries” on the ground of genericness. Applicant conceded that the term is merely descriptive by amending its initial application to seek registration on the Supplemental Register, but insisted that the mark is not generic after Examining Attorney Sophia S. Kim refused registration under Section 23(c) and Section 45. In re Deus Vult, LLC, Serial No. 87186211 (January 30, 2019, corrected February 11, 2019) [not precedential] (Opinion by Judge Frances Wolfson).

The Board sought to determine what is the genus of the goods at issue and whether relevant purchasers understand the designation primarily to refer to that genus of goods.

Genus of the Goods at Issue: The Examining Attorney asserted that the proper genus of the goods, as identified in the application, is “rosaries.” Applicant contended that the proper genus is “prayer beads” because “a rosary is a specific type of prayer bead (a species within the genus ‘prayer beads’).” The Board reviewed Applicant’s website and found that “Applicant’s specimen of use shows that Applicant identifies its product as a rosary, not as ‘prayer beads.’” Therefore, the Board found that there “is no need to broaden the genus to include all types of chains of beads or knots used for counting prayers.”

The Relevant Purchasers Understanding of “Combat Rosary”: Next, the Board needed to determine who are the relevant purchasers and how would those purchasers understand “combat rosary?” The Board found that dictionary definitions of “combat” and “rosary” exemplify that both words are “common English terms whose meanings would be grasped by all relevant purchasers.” Accordingly, any consumer who purchases rosaries is considered a member of the relevant public regardless of religious affiliation.

Then, to establish how the relevant public would understand the term, the Board turned to printouts from websites submitted by the Examining Attorney. While Applicant claimed that “all of the hits showing ‘COMBAT ROSARY’ branded rosaries are Applicant’s own goods,” it failed to submit any record evidence, declarations, or affidavits. Instead:

Several of the sites describe the combat rosary as a “pull chain rosary that was commissioned and procured by, believe it or not, the U.S. government and issued by the military, upon request, to soldiers serving in World War I. Some of these rosaries were also seen in WWII.” The majority of the websites are selling replicas of the originals.

The website evidence demonstrated that the public is likely to view the term “combat rosary” as generic and as “a military-issued rosary given to soldiers in combat during World Wars I and II, as well as replicas of these originals.” And so, the Board affirmed the refusal to register Applicant’s mark on the Supplemental Register.

Read comments and post your comment here.

TTABlog comment:  Is this a WYHA?, pray tell.

Text Copyright Kira-Khanh McCarthy and John L. Welch 2019.

Monday, February 04, 2019

WYHA? TTAB Finds CREATINE GUMMIES Merely Descriptive of Supplements Containing Creatine

The Board affirmed a Section 2(e)(1) refusal to register the mark CREATINE GUMMIES, finding it to be merely descriptive of "Dietary and nutritional supplements containing creatine" [GUMMIES disclaimed]. Applicant argued that the mark is incongruous and would require a multi-step reasoning process "to determine what the goods are." The Board was unimpressed. In re BPI Sports, Serial No. 87199476 (January 31, 2018) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Applicant BPI Sports feebly contended that CREATINE GUMMIES suggests “creative candies,” which is not descriptive of the product. It argued that multi-stage reasoning is required to determine what the goods are [That's not the test - ed.]. According to applicant, CREATINE GUMMIES creates an effect of surprise because gummies generally are candies for children and do not commonly contain creatine, which is harmful to children. And finally, BPI asserted that the applied-for mark is unique and incongruous because it is contradictory to the purpose of dietary and nutritional supplements.

Examining Attorney Alicia Collins Edwards submitted eight third-party registrations for dietary and nutritional supplements or vitamin supplements with disclaimers of the term "gummies." A Google brand image search for "gummies" revealed a number of vitamin and nutritional supplements in gummy form, including the one depicted above. A Wikipedia entry for "gummies" included a sub-section entitled "Vitamin Gummies." A Google search for "creatine gummies" revealed two such products.

Futhermore, Internet evidence showed that creatine, an amino acid that is produced by the body, and that creatine supplements are used by body builders and competitive athletes to help increase lean muscle mass and enhance performance.

The Board once again pointed out that the determination of mere descriptiveness must be made in the context of the goods; i.e., it is not a guessing game as to what the goods are. Because the goods contain creatine, the word CREATINE is merely descriptive of the goods. Moreover, producers of creatine supplements use the word "creatine" in the supplement name, a fact that also supports a descriptiveness finding. Internet articles provided by both the Examining Attorney and Applicant BPI showed that creatine may be offered as a type of dietary and nutritional supplement, further establishing the descriptiveness of the term in relation to Applicant’s goods.

The term “gummies” in Applicant’s mark describes the chewable form of Applicant’s vitamins/supplements, similar to gummy candy. The third-party registrations evidence the descriptive significance of the word “gummies” for vitamins and dietary and nutritional supplements. The Google searches showing third-party use of “gummy” and “gummies” by producers of dietary and nutritional supplements, and the use of the term “gummy” or “gummies” in articles relating to dietary and nutritional supplements further establish that the term “gummies” and its singular form “gummy” are at best merely descriptive of dietary and nutritional supplements.

Finally, the Board found that the combination of the two individual terms does not evoke a new and unique commercial impression apart from their descriptive meanings. Although there was no evidence of any use of the term CREATINE GUMMIES in the marketplace by anyone else, that was not relevant. "It is well-established that where an applicant is the first and only user of a descriptive term, that does not make the term registrable."

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Well, would you have?

Text Copyright John L. Welch 2019.