Friday, July 20, 2018

TTAB Grant MLB's Section 2(d) Petition for Cancellation of Registration for MAJOR LEAGUE ZOMBIE HUNTER & Design for Clothing

The Board granted Major League Baseball's petition for cancellation of a Supplemental Registration for the mark shown first below, for "clothing, namely, short and long sleeve t-shirts, sweatshirts,v jackets, baseball hats, and beanies," finding it likely to cause confusion with the registered mark shown second below, for "shirts." The Board found MLB's mark to be commercially strong and entitled to a broad scope of protection. Major League Baseball Properties, Inc. v. Christopher Webb, Cancellation No. 92060903 (July 18, 2019) [not precedential] (Opinion by Judge Marc A. Bergsman).

Strength of Petitioner' s Marks: Petitioner MLB claimed that its logo mark and the mark MAJOR LEAGUE BASEBALL are famous, but the Board noted that a party that claims fame must  clearly prove it. The evidence established that the MAJOR LEAGUE BASEBALL mark has been in use for 100 years and the logo for 50 years, that the marks are widely licensed, that goods bearing the marks are sold in many national retailers, and that the marks have received extensive, unsolicited media coverage. The Board concluded that the marks are "commercially strong, if not famous."

The Goods: MLB's marks are registered for shirts, which encompass Applicant Webb's t-shirts. Moreover, as to MLB's entertainment services, the Board noted that it is common for "commercial trademarks" to be licensed for collateral products. Since the goods in the application and MLB's registrations overlap, the Board must presume that they travel through the same channels of trade to the same classes of consumers.

The Marks: Since the involved goods are in part identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. The Board focused on MLB's logo mark, since "if the petition cannot be granted on the basis of this registered mark, it could not be granted on the basis of the other pleaded registrations."

The Board found that the overall commercial impressions of the two marks outweigh any specific dissimilarities that might be apparent on a side-by-side comparison.

Under these circumstances, it is not unreasonable to assume that consumers encountering Respondent’s t-shirts displaying a mark which possesses marked similarities in appearance, sound, and commercial impression as Petitioner’s mark would likely mistakenly assume that the t-shirts originate from or are sponsored by the same source. That is, consumers could assume that Petitioner modified its MAJOR LEAGUE BASEBALL mark to play on popular entertainment trends such as movies featuring zombies.

The Board noted that a party's actual use of its mark may be relevant to demonstrate that the mark projects a confusingly similar commercial impression. It observed that Respondent's actual use of its registered mark is "remarkably similar" to MLB's actual use of its mark. "Both feature a central figure with a baseball cap in white against a background that is red to the right of the figure and blue to the left, all of which is surrounded by a band of white. In addition, the wording in both marks begin[s] with MAJOR LEAGUE"

The Board concluded that the marks are similar in appearance, sound, and commercial impression.

Conclusion: Noting that there is "no excuse for even approaching the well-known trademark of a competitor," the Board granted the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: I'm not convinced that confusion is likely between the two logos. MAJOR LEAGUE SOCCER and MAJOR LEAGUE LACROSSE both co-exist with MAJOR LEAGUE BASEBALL, so the words MAJOR LEAGUE ZOMBIE HUNTER should be okay. As to the logos, I think it's a bit of a stretch to find that consumers would think that MLB is associated with the applied-for mark because of the broad-brush similarities in the logos. Dilution would seem a better fit, but MLB apparently couldn't clear the fame hurdle.

Text Copyright John L. Welch 2018.

Thursday, July 19, 2018

TTAB Test: Are Fruit-Based Beverages Related to Nutritional Supplements?

The USPTO refused to register the mark KARUNA THE ROOT OF GOOD HEALTH & Design (shown below), for "a fruit infused plant-based drink, namely, filtered water infused with a fruit flavoring and plant-based ingredients,” deeming the mark likely to cause confusion with the registered mark KARUNA for "nutritional supplements." The Board found the marks substantially similar, but what about the goods? How do you think this came out? In re Fulfill Food and Beverages, LLC, Serial No. 76719598 (July 13, 2018) [not precedential] (Opinion by Judge Lorelei Ritchie).

The Marks: The word KARUNA is the dominant portion of applicant's mark, said the Board. Not only is that word in larger font, but as the first part of the mark it is the portion most likely to be impressed upon the consumer's mind and remembered. The phrase THE ROOT OF GOOD HEALTH is suggestive of a function of the goods and would be perceived as a slogan modifying KARUNA. The tree design merely reflects the fact that the goods contain plant-based ingredients. In any case, the literal portion of a mark is generally given greater weight.

The cited mark could be depicted in the same stylization as applicant's mark. The Board concluded that the marks are substantially similar in sight, sound, and commercial impression.

The Goods: Examining Attorney John E. Michos submitted third-party websites advertising fruit-flavored beverages that include or serve as nutritional supplements, as well as third-party registrations covering both nutritional supplements and fruit-flavored beverages. "It is therefore clear that the 'fruit infused plant-based drink, namely, filtered water infused with a fruit flavoring and plant-based ingredients' identified by Applicant can include or perform the same function as the 'nutritional supplements' identified in the cited registration, and are related thereto."

Therefore the Board concluded the involved goods and are likely to travel through the same channels of trade to the same classes of consumers, namely, member of the general public who are seeking products to better their fitness and health.

Purchaser Sophistication: Applicant contended that consumers will exercise care in their purchasing decisions regarding the involved goods, but it provided no supporting evidence. Neither the opposed application nor the cited registration contain any limitations as to classes of consumers. In any event, even sophisticated consumers are not immune from confusion when both the goods and the marks are similar. Moreover, the Section 2(d) determination must be made with the "least sophisticated potential purchaser" in mind.

Conclusion: The Board found confusion likely and so it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: If you say that "even sophisticated consumers are not immune from confusion when both the goods and the marks are similar," then what impact could evidence of sophistication have in the Section 2(d) analysis?

Text Copyright John L. Welch 2018.

Wednesday, July 18, 2018

TTAB Orders Cancellation of KLIQUE CAR CLUB Registration Due to Non-Ownership

The Board granted a petition for cancellation of a registration of the mark KLIQUE CAR CLUB for "club services, namely, promoting the interests of lowrider car enthusiasts," finding that Registrant Jesse Fausto was not the owner of the mark and therefore the registration was void ab initio. The Board wasted no time in ruling in favor of petitioner, since respondent admitted that the name "belongs to the club." Klique E.L.A. Car Club v. Jesse Frausto, Cancellation No. 92063670 (July 16, 2018) [not precedential] (Opinion by Judge Frances Wolfson).

Only the owner of a mark can validly apply for, receive and retain a registration. 2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 16:35 (5th ed.). If the entity filing the application was not the owner of the mark as of the filing date, the application is void ab initio. This is a statutory requirement and cannot be waived. Trademark Act §1(a), 15 U.S.C. § 1051(a). See, e.g., Wonderbread 5 v. Gilles, 115 USPQ2d 1296, (TTAB 2015) (cancelling registration less than five years old for mark of a musical band which was issued to one member of the band when the band as a partnership was the owner).

Respondent Frausto claimed that he was authorized by the car club to file the application for registration, but the evidence made clear that the club was the owner of the mark. Frausto testified in his discovery deposition:

Q. Have you assigned the rights under the trademark to anyone in the club? Do you know what I mean by that?
A. As far as the trademark, the trademark name, it belongs to the club.
Q. Is it held in the club’s name or is it held in your personal name?
A. It’s held in my personal name for the simple reasons that I put up the funds to trademark the name. But it's just to secure it for East L.A. and that was it
. . .

Q. Have you made any kind of formal agreement between yourself as an individual and the club regarding the mark?
A. Well, regarding the mark, the club already knows that we have talked about it at this -- I am going to do that once all this is over.
Q. And by “do that,” do you mean make an agreement with them about the mark?
A. Yes.

In addition, seven club members attested that "To the best of my knowledge, Jesse Frausto did not have permission to register a trademark solely in his name for ‘Klique Car Club’. That name belongs to all of the Chapters and all of the members."

The Board found "little question" that Respondent Frausto does not own the KLIQUE CAR CLUB mark, and so it granted the petition for cancellation.

Read comments and post your comment here.

Text Copyright John L. Welch 2018.

Tuesday, July 17, 2018

Finding GUCCI Marks Exceedingly Famous, TTAB Sustains Opposition to UBERTO GUCCI Marks for E-Cigarettes

The Board sustained two oppositions filed by Gucci America, Inc., finding the marks shown immediately below, for electronic cigarettes, likely to cause confusion with the "exceedingly famous" GUCCI and GUCCI "signature" marks for a wide variety of goods and services, including leather goods, jewelry, and perfume. The opposed marks include the name "Uberto Gucci," great grandson of the founder of the GUCCI brand. Gucci America, Inc. v. UGP, LLC, Oppositions Nos. 91223733 and 91223735 (July 13, 2018) [not precedential] (Opinion by Judge Michael B. Adlin).

The Strength/Fame of Opposer's Marks: Applicant conceded that the GUCCI mark is famous. The Board found that "[i]n fact, GUCCI is a household name." The evidence established that GUCCI is "exceedingly strong, famous, and entitled to a broad scope of protection against confusion." Fame, when proven, plays a dominant role in the du Pont analysis, "independent of the consideration of the relatedness of the goods."

The Marks: Given the fame of the GUCCI and GUCCI "signature" marks (see below), "the Act's tolerance for similarity to those marks is quite low." Here, the degree of similarity between the marks is "quite high." The appearance of the phrase "by Uberto" before GUCCI in applicant's marks is of little significance. "Gucci" is an obvious and famous surname, and Uberto is an obvious Italian-sounding personal name.

Any claim that "By Uberto Gucci" would distinguish the marks was belied by the evidence. Uberto Gucci is related to Guccio Gucci, the founder of the GUCCI brand, and he is a former vice president of the Gucci Parfums Spa. Applicant admitted that the familial connection is public knowledge. It would be natural for consumers to assume that Uberto is still affiliated with the source of other GUCCI products. Moreover, the evidence showed that major fashion brands sometimes introduce "secondary" or "diffusion" product lines by adding a term to a house mark: e.g., Balmain's secondary line "Pierre Balmain."

As to applicant's shield mark, applicant admitted that the design element of this mark was created "with the 'use' of the Gucci family crest." (shown immediately above). The Board found the differences between this mark and the GUCCI word and "signature" marks to be "not particularly significant" in view of the word portion DESIGNED BY UBERTO GUCCI. In any case, the Board found the two crest designs to be similar in appearance: both feature a human figure, flowers, armor, shields, and a helmet or crown.

Finally the Board found applicant's marks to be similar to opposer's registered mark FLORA BY GUCCI. Given the fame of the GUCCI mark, consumers will likely perceive BY UBERTO GUCCI and FLORA BY GUCCI as brand or product extensions.

The Goods/Services: The evidence showed that Opposer "has a proven ability to offer, and a business practice of offering" a wide variety of goods, including cars, bikes, pens, money clips, mobile apps and other products "no more different from the clothes and handbags for which Opposer is perhaps best known than electronic cigarettes."

Therefore, it would not be a stretch, at all, for consumers to believe that Opposer -- which offers goods somewhat similar in kind or manufacturing requirements to electronic cigarettes (including essential oils and pens) -- could offer electronic cigarettes under the GUCCI Marks, given that it has already offered, if not everything under the sun, then at least an atypically wide range of products and services.

Although opposer is a famous "luxury" brand, many of the goods in its registrations (including essential oils, money clips, and pens) are without any limitations in price, type of consumer or otherwise. These relatively inexpensive items could be sold in, for example, convenience stores or drug stores that might also offer electronic cigarettes. The Board noted that its determination must be based upon the "least sophisticated purchasers" for the goods.

Consumers could well assume that BY UBERTO is a new line of GUCCI products. The inputs, know-how, and manufacturing or licensing abilities needed to offer essential oils and pens would not be substantially different from what would be required to offer an electronic cigarette.

In short, given the “known” family connection between Uberto Gucci and the famous Gucci family, Opposer’s history and fame, the nature of the goods and similarity of the marks, we find source confusion likely between, at the very least, Applicant’s mark UBERTO BY GUCCI for electronic cigarettes, and Opposer’s marks FLORA BY GUCCI for “essential oils for personal use” and “perfumes” (Reg. No. 3627729) and GUCCI for pens and moneyclips (Reg. Nos. 1093769 and 1200991).

Moreover, opposer's evidence showed that electronic cigarettes are sometimes marketed as luxury items or to style-conscious consumers, further supporting opposer's likelihood of confusion claim.

Conclusion: The Board found confusion likely, and so it sustained the oppositions.

Read comments and post your comment here.

TTABlog comment: I don't think the crests are similar, do you?

Text Copyright John L. Welch 2018.

Monday, July 16, 2018

Precedential No. 24: Finding Good Cause (Puerto Rico Hurricane), TTAB Extends Discovery Period to Allow Written Discovery

The Board granted Applicant JFC Tobacco's motion to extend discovery, filed on the last day of the discovery period, to allow it to receive responses to its late-filed written discovery requests and to respond to Opposer Trans-High's discovery demands. As to JFC's written discovery, Trans-High argued that JFC must show "excusable neglect" since it missed the written discovery deadline, but the Board ruled that the lesser, "good faith" standard applied. Trans-High Corp. v. JFC Tobacco Corp., 127 USPQ2d 1175 (July 2, 2018) [precedential] (Katie W. McKnight, Interlocutory Attorney).

Discovery in this proceeding was set to close on January 22, 2018. Trademark Rule 2.120(a)(3) requires that written discovery requests be served early enough in the discovery period so that responses thereto will be due no later than the close of discovery. Therefore the deadline for serving written discovery requests was December 23, 2017.

Applicant JFC served written discovery on January 10, 2018, and opposer promptly pointed out that this discovery was untimely. JFC sought Trans-High's consent for an extension of time for written discovery and for close of discovery, but opposer did not provide a definitive response. And so on January 22nd, JFC filed a motion to extend the close of discovery by thirty days.

JFC pointed out that it is located in Puerto Rico and it encountered some delays during the proceeding due to the hurricanes that recently devastated the region, making it difficult for counsel to reach applicant. It noted that it had not requested any other extensions of time and argued that it would be prejudiced if it did not receive responses to its discovery requests.

Opposer Trans-High contended that applicant's motion was "in fact" a motion to reopen its time to respond to written discovery, and therefore the FRCP 6(b) standard of excusable neglect applied. Trans-High maintained that JFC failed to meet that standard, or even the lower good faith standard that applies to request for extensions of time filed before the expiration of the relevant deadline.

The Board pointed out that, under Rule 2.120(a)(2)(iv), the Board may grant limited extensions of the discovery period. Under FRCP 6(b)(1)(A), the appropriate standard for allowing an extension of a specific time period prior to its expiration is "good faith." In that regard, JFC's request was timely.

The Board was not persuaded by Trans-High's argument that the higher "excusable neglect" standard applied. The Notice of Final Rulemaking (October 7, 2016) stated that the amendment to Rule 2.120(a)(3) with regarding to the timeliness of written discovery "has no impact on Board practice concerning the ability of parties to seek extensions of the discovery period." Moreover, when the time to respond is extended , discovery responses must be due no later than the close of discovery, as extended.

While the Board encourages early service of discovery instead of reliance upon motions to extend the discovery period, a party wishing to serve discovery requests at a point in the discovery period when the last day for responding to the requests would fall after the close of discovery may seek an extension of the discovery period when appropriate and if it can establish good cause for the extension. Estudi Moline Dissey, S.L. v. BioUrn Inc., 123 USPQ2d 1268, 1271 n.6 (TTAB 2017) (emphasis added).

In sum, "where the close of discovery has not yet passed, the time for serving requests is effectively reset under the good cause standard and the excusable neglect standard is inapplicable. [N.B. The key factor under the excusable neglect standard is whether the delay was within the control of the movant. JFC may have been able to meet that standard as well. - ed.].

The Board found no evidence of bad faith on JFC's part. Due to the impact of the hurricane and the difficulty for counsel to reach JFC over the holiday period in order to respond to Trans-High's discovery requests, the Board concluded that JFC had demonstrated the requisite good cause for extending both the discovery period and the time for responding to Trans-High's discovery demands.

And so the Board re-set the dates for discovery responses and for the remaining schedule of dates

Read comments and post your comment here.

Text Copyright John L. Welch 2018.

Friday, July 13, 2018

New York IP Law Association: Hot Topics in IP Law - July 17, 2018

The Trademark Law and Practice Committee of the New York Intellectual Property Law Association (NYIPLA) will host a half-day program entitled "Hot Topics in IP Law" on Tuesday, July 17th, from 12 noon to 5 PM at the Princeton Club of New York, 15 W 43rd Street, New York, New York 10036. The agenda is set out below. Registration here.

TTABlog comment: The TTABlogger will be in attendance.

Text Copyright John L. Welch 2018.

Finding Clothing Related to Athletic Training Services, TTAB Affirms 2(d) Refusal of MAVA

The Board affirmed a Section 2(d) refusal to register the mark MAVA for various clothing items, including t-shirts, pants, gym suits, athletic uniforms, and footwear, finding the mark likely to cause confusion with the identical mark registered for "personal training services in the field of athletic performance." Applicant contended that, because it owns registrations for MAVA for weight-lifting gloves and work-out gloves, it already owns "senior trademark rights in the product space." The Board did not agree. In re Zencom Global, Serial No. 87399153 (July 6, 2018) [not precedential] (Opinion by Linda A. Kuczma).

The Marks: The identity of the marks "strongly favors a finding of likelihood of confusion."

The Goods/Services: As we know, when the marks at issue are identical, a lesser degree of similarity between the involved goods/services is needed to support a finding of likely confusion. There need be "only a viable relationship between the goods and services."

Applicant's t-shirts, pants, gym suits, athletic uniforms, and footwear, and registrant's services all relate to athletic performance. Examining Attorney Claudia Garcia submitted website evidence showing that individuals and businesses provide personal training services as well as their own branded clothing. Moreover these goods and services are provided through the same channels of trade to the same class of consumers, which would include the general public. Therefore the Board concluded that the involved goods and services are related  for Section 2(d) purposes.

Eleventh du Pont Factor: This du Pont factor considers "[t]he extent to which applicant has a right to exclude others from use of its mark on its goods." Applicant argued that its prior registrations give it the right to exclude others from using its mark MAVA in its natural zone of expansion. In other words, it owns the senior federal trademark registrations "in the product space asserted in this case."

The Board, however, pointed out that the "zone of natural expansion" doctrine has limited applicability in ex parte proceedings. It typically is invoked in inter partes proceedings to claim priority. In ex parte proceedings, "the concept is considered through a traditional relatedness of goods and services approach." The co-existence of applicant's two prior registrations with the cited registration does not compel a different result.

Moreover, the Board determination must be based on the record before it, and it is not bound by the determination of an examining attorney that the cited mark was entitled to registration over applicant's marks.

Each case must be decided on its own facts, and occasionally an applicant with registrations for the same of very similar marks may be unable to obtain subsequent registrations. *** Even when one registration issues over the other and both exist side-by-side for some period of time (in this case only a little over a year), that is just one element “which is placed in the hopper with other matters which ordinarily are considered in resolving the question of likelihood of confusion, but which is not in the least determinative of said issue.”

Conclusion: The identity of the marks and the relatedness of the goods and services outweigh the point raised by applicant. Because there is a likelihood of confusion, it is not appropriate to allow applicant's mark to be published. The Board pointed out that, if applicant believes the cited registration should not have issued over its prior registrations, it may petition for cancellation.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Note that the Morehouse defense is available only in the inter partes context. See In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012) [precedential]. [TTABlogged here]. Here the goods in the prior registrations and the pending application were not that close anyway.

Text Copyright John L. Welch 2018.

Thursday, July 12, 2018

TTAB Test: Is "SECOND OPINION" Generic for Cancer Testing Services?

The USPTO refused registration, on the Supplemental Register, of the term SECOND OPINION, finding it to be generic for "medical testing for diagnostic or treatment purposes in the field of cancer." On appeal, the Board rendered a split decision. How do you think this came out? In re Chronix Biomedical, Inc., Serial No. 86612457 (July 10, 2018) [not precedential] (Opinion by Judge Michael B. Adlin; dissenting opinion by Judge Linda A. Kuczma).

Section 23(c) requires that a mark, to be eligible for registration on the Supplemental Register, must be "capable of distinguishing the applicant's goods or services." Generic terms are incapable of doing so. The ultimate test for genericness is the primary significance of the term to the relevant public. The USPTO bears the burden of making a "strong" showing, with "clear evidence" that the applied-for term is generic.

The panel agreed that the genus in question is "medical testing services for diagnostic or treatment purposes," and that the relevant purchasing public includes both patients who seek medical testing, and doctors and other health care providers who order or purchase the tests. The panel did not agree on the relevant public's understanding of the term SECOND OPINION.

The panel majority had no doubt as to the genericness of SECOND OPINION, "especially because 'the determination of whether a proposed mark is capable of achieving significance as a source identifier must be made in relation to the goods and services for which registration is sought, not in the abstract.'" Dictionary definitions are consistent with applicant's own use of the term: applicant promotes the fact that its SECOND OPINION test is intended to "help doctors" or "clinicians" decide what to do in response to prior tests or examinations.

In other words, these materials reveal that Applicant’s “second opinion” test is conducted by or at the direction of a physician/clinician in order to provide an opinion, examination or evaluation to verify or challenge another physician’s diagnosis or recommendation, or to better understand the results of a first medical test.

The panel majority concluded that the genus "medical testing services for diagnostic or treatment purposes" encompasses medical testing services that are part of providing a "second opinion." Just as the term ATTIC was found to be "more in the nature of a type of sprinkler than of a source identifier," a "second opinion is a type or purpose of medical testing: 'second opinion medical testing.'" Therefore SECOND OPINION is generic and incapable of functioning as a mark.

In dissent, Judge Kuczma contended that SECOND OPINION may be merely descriptive of the end purpose of applicant's testing, i.e., to render second opinions, but "it does not refer to any class or type of medical tests and is not generic for 'medical testing services for diagnostic or treatment purposes.'"

Judge Kuczma acknowledged that, under the case law, "a term that names the central focus or subject matter of a service or the goods to be sold in connection with a service are regarded [is] regarded as 'generic'" for the services themselves. "However, that is not what we have here."

According to the definition of “second opinion” cited in the majority opinion, SECOND OPINION is “an opinion from a second qualified person . . . on a health . . . problem.” Under this definition, Applicant’s applied-for mark does not identify, nor is it generic for, medical testing services. At most, Applicant’s applied-for mark SECOND OPINION is merely descriptive of the medical testing services for diagnostic or treatment purposes which may be considered by doctors when providing a “second opinion.”

Judge Kuczma concluded that the USPTO failed to make the requisite substantial showing that SECOND OPINION is generic.

Read comments and post your comment here.

TTABlog comment: What do you think? I side with the dissent. Blood tests are a type of procedure. A second opinion is just a way of describing a blood test done to confirm the results of the first test. Maybe it's time to re-think the ATTIC decision.

Text Copyright John L. Welch 2018.

Wednesday, July 11, 2018

Bullet-Shaped Antenna Not Aesthetically Functional, But Lacks Acquired Distinctiveness, Says TTAB

The Board granted a petition for cancellation of a registration for the product configuration mark shown below (shaped like "a bullet cartridge") for "automobile antennas," finding that the mark lacked acquired distinctiveness. The Board rejected petitioner's claim that the design is aesthetically functional because petitioner failed to prove a competitive need for use of that shape. JVMAX, Inc. v. ESR Performance Corp., Cancellation No. 92063873 (June 29, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).

Aesthetic Functionality: Petitioner claimed that the registered design is functional under Section 2(e)(5) because "[c]onsumers purchase bullet shaped antennas based on the ornamental appearance of the antennas." Therefore, the shape is "essential to the purpose of the product which is purchase[d] in large part for the way it looks."

The Board observed that a mark is aesthetically functional if there is a "competitive need" for the feature. See, e.g., Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 32 USPQ2d 1120, 1122 (Fed. Cir. 1994) (the color black for boat engines is functional because it has color compatibility with a wide variety of boat colors and it makes the engines appear smaller); In re Florists’ Transworld Delivery Inc., 106 USPQ2d 1784, 1787 (TTAB 2013) (competitors need to use black packaging for flower arrangements in order to convey an appropriate message or sentiment, and the exclusive appropriation of the color black to single entity would severely limit the availability of appropriate color choices).

Petitioner failed to establish a competitive need for use of a bullet-shaped antenna. The parties and others sell equivalent antenna with many diverse designs. Petitioner alone sells 20 to 30 different types of antenna.

Petitioner has not proven that the bullet-shaped antenna design serves an aesthetic purpose independent of any source-identifying function. Because a product design is aesthetically pleasing and commercially successful does not mean that it is aesthetically functional. See Florists’ Transworld Delivery Inc., 106 USPQ2d at 1789. “[F]unctionality hinges on whether registration of a particular feature hinders competition and not on whether the feature contributes to the product’s commercial success.” M-5 Steel Mfg. Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086, 1097 (TTAB 2001).

Therefore the Board concluded that the bullet-shaped antenna is not aesthetically functional.

Acquired Distinctiveness: Of course, a product shape can never be inherently distinctive and may be registered as a trademark only upon a showing of acquired distinctiveness. The burden of proof to show acquired distinctiveness is heavier for product designs than for word marks.

The party seeking cancellation bears the initial burden to "establish a prima facie case of no acquired distinctiveness." It must overcome the record evidence of acquired distinctiveness, including everything submitted by respondent during prosecution. The burden of production shifts to registrant only if the petitioner established a prima facie case. The ultimate burden of persuasion rests on petitioner.

The Board first determined that petitioner had established a prima facie case of no acquired distinctiveness. The Board described in detail the evidence submitted in respondent's application for registration, which included sales figures (44,780 antenna sold for total revenue of $508,900 from 2010-2014), advertising expenditures (totaling $203,000), the distribution of tens of thousands of catalogs, and 104 identical customer declarations purportedly attesting to their recognition that bullet shaped antennas come from a single source. Petitioner provided testimony from two third-parties who sold bullet-shaped antennas, one beginning in 2007.

The Board concluded that petitioner had established its prima facie case. It found that at the time of filing its application to register, respondent's use of the design was not substantially exclusive. Moreover, respondent provided no testimony or evidence that would allow its sales and revenue figures to be evaluated in context. Sales figures may show that the product is commercially popular, but they are not necessarily indicative of acquired distinctiveness. The advertising figure of $203,000 was questionable, since it represents an unlikely 40% of respondent's revenues, and the assertion was undermined by respondent's testimony that it does not keep records of advertising expenditures per product.

In addition, respondent's advertising did not show the design alone, but only with other marks, and the bullet-shaped antenna was just one of many products displayed in respondent's catalogs. There was no "look for" advertising and nothing that highlighted or emphasized this shape. Finally, the customer declarations suffered from many deficiencies, leading the Board to question whether the statements accurately reflect the declarants' personal recollections and experience, or whether they merely "signed what was put before them."

The Board then looked at the rest of the record evidence. It found that respondent's nine years of use is "significant but not necessarily conclusive or persuasive considering the mark is a product configuration." Respondent never used the "tm" or "R" symbols in connection with its antennas, and prior to the filing of its application it took no action to notify competitors that it considered the shape to be a trademark. The only action it took after the registration issued was to send cease-and-desist letters.

There was no evidence of unsolicited media coverage identifying the design uniquely and exclusively with respondent and no evidence that any alleged copiers of the design did so to trade on respondent's goodwill, as opposed to adopting a desirable design.

The Board concluded that the record, viewed in its entirety, "is insufficient to prove that the primary significance of the bullet cartridge shaped automobile antenna identifies the source of the automobile antenna."

[The Board declined to consider petitioner's fraud claim in view of its ruling of no acquired distinctiveness].

Read comments and post your comment here.

TTABlog comment: Shouldn't the Board's conclusion have been that petitioner carried its burden to prove that there was no acquired distinctiveness? See page 11: "The Board must ... decide whether the party seeking cancellation has satisfied its ultimate burden of persuasion, based on all the evidence made of record ...." Instead, the Board said respondent failed to prove acquired distinctiveness.

Text Copyright John L. Welch 2018.

Tuesday, July 10, 2018

TTAB Finds Sales to Single Customer, Though Not Substantial, Sufficient to Avoid Abandonment of MOMBACHO for Cigars

The Board dismissed a petition for cancellation of a registration for the mark MOMBACHO for cigars, ruling that Petitioner had failed to prove its claim of abandonment. The Board rejected petitioner's contention that respondent Tropical Tobacco's meager sales were merely token sales that did not qualify as bona fide use of the mark. Mombacho Cigars S.A. v. Tropical Tobacco, Inc., Cancellation No. 92062543 (July 6, 2018) [not precedential] (Opinion by Judge Cindy B. Greenbaum).

Section 45 of the Trademark Act provides that a mark shall be deemed abandoned "[w]hen its use has been discontinued with intent not to resume use ...." Nonuse for three consecutive years is prima facie evidence of abandonment. "Use of a mark means the bona fide use of such mark made in the ordinary course of trade, and not merely to reserve a right in a mark."

Petitioner had the burden to prove abandonment by a preponderance of the evidence. It presented testimony declarations of its president, of the president of the "largest cigar shop in the country," and of a cigar sales broker, all asserting that they were not aware of respondent's use of the mark MOMBACHO. Petitioner contended that respondent has a practice of "warehousing dormant marks," and it questioned the "bona fides of [Respondent's] de minimus (sic) sales from 2010 through 2015."

Respondent's President testified that sales of MOMBACHO were continuous since 2004, although sales dropped after 2010. Respondent's office manager confirmed that MOMBACHO has been sold continuously, every year. Since about December 2015, respondent has sold MOMBACHO cigars exclusively to Serious Cigars and "now that we've done an exclusive with Serious, we hope the product really picks up."

Respondent's President admitted that the brand had not been actively promoted since 2010 and did not appear on the company's website from 2010-2015. It was not a "popular" cigar brand as of 2014. Respondent submitted invoices of sales to retailers for each year from 2005 to 2016. Beginning in 2012 (the appropriate starting point for considering abandonment with respect to a use-based application filed on January 10, 2012) the invoices demonstrated sales of between two and four boxes of twenty cigars each year to Serious Cigars. Seven weeks after the petition for cancellation was filed, respondent sold 24 boxes to Serious, and then 300 more to Serious, under an exclusive agreement to retail the product.

The Board found that there was no period of three consecutive years when Respondent did not sell MOMBACHO cigars.

While Respondent’s sales from 2010 to 2015 were admittedly slow and made virtually exclusively to one client (Serious Cigars), nothing in the record supports a finding that such sales were not “bona fide use[s] of [the] mark[s] in the ordinary course of trade,” rather than “made merely to reserve a right in [the] mark[s].” 15 U.S.C. § 1127. In other words, contrary to Petitioner’s assertions, the record does not support a finding that Respondent’s MOMBACHO mark was dormant or part of a purported trademark warehousing program. On the other hand, such near exclusivity would explain why Petitioner’s witnesses were not aware that Respondent was selling MOMBACHO cigars.

Respondent pointed to differences between respondent's invoices and its stated sales figures, but the Board found the discrepancies to be insignificant. It concluded that respondent's sales revenue, "while not substantial, is sufficient to demonstrate valid use of its mark MOMBACHO in commerce." Petitioner's assertion that it was merely "token use" was rejected by the Board, citing Person’s Co. Ltd. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1481-82 (Fed. Cir. 1990) (“Although sales ... were intermittent and the inventory of the corporation remained small, such circumstances do not necessarily imply abandonment. There is also no rule of law that the owner of a trademark must reach a particular level of success, measured either by the size of the market or by its own level of sales, to avoid abandoning a mark.”)

Finding that petitioner had failed to establish abandonment by a preponderance of the evidence, the Board dismissed the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: De minimis non curat lex? Not this time. Note that respondent asserted a first use date of 2004 in its application. However, the period of time before filing was irrelevant to the abandonment issue; the question was whether the mark was subsequently abandoned.

Text Copyright John L. Welch 2018.

Monday, July 09, 2018

BUYER ENGINE Merely Descriptive of Real Estate Marketing Services, Says TTAB

[This is a guest post by Natali De Corso, a rising 2-L at Boston College Law School, and a summer associate at Wolf, Greenfield & Sacks, P.C.]. The Board affirmed a Section 2(e)(1) refusal of registration of the mark BUYER ENGINE, finding it merely descriptive of real estate marketing services in International Class 35. In re Cutting, Serial No. 87109861 (June 26, 2018) [not precedential] (Opinion by Judge Christopher C. Larkin).

Examining Attorney April A. Hesik first argued “that the record show[ed] that a feature of the services identified in the application as ‘real estate marketing services’ is the use of ‘search engines pertaining to information about real estate buyers.’” In fact, the Applicant had provided information that his “unique” services would “include a search engine and the search engine [would] pertain to information about real estate buyers.” The Board therefore agreed with the Examining Attorney.

The Examining Attorney further argued that both “BUYER” and “ENGINE” are “descriptive of search engines that feature information pertaining to potential buyers of real estate.” Based on the dictionary definitions of the words and third-party registrations of marks for similar services where “buyer” or “engine” is disclaimed, the Board again agreed.

Lastly, the Examining Attorney asserted that the words BUYER and ENGINE together constitute a “composite mark that is itself merely descriptive.” She explained that “consumers are accustomed to encountering the words ‘BUYER’ and ‘ENGINE’ in proximity to describe search engines pertaining to potential buyers of real estate,” citing internet evidence showing that search engines – such as, Trulia, and Zillow – are commonly used in real estate marketing. Consequently, she contended, BUYER ENGINE is “not incongruous” in the context of Applicant’s search engines that provide information relating to buyers.

Applicant, however, insisted that the combination of BUYER and ENGINE is “incongruous and unique” and that it “requires imagination, thought, mental, pause, and perception” to determine the meaning of the words. If the mark were REAL ESTATE BUYER SEARCH ENGINE, Applicant argued, a consumer would easily understand the meaning of the mark – but without the extra words, a consumer is left “puzzled and guessing.” This argument, the Board explained, “reflects a fundamental misunderstanding of the test for mere descriptiveness.” The important question is whether a consumer “who knows the goods and services will understand the mark to convey information about them.” Unsurprisingly then, the Board agreed with the Examining Attorney that the composite mark is merely descriptive of real estate marketing services.

The Board also found “unavailing” Applicant’s argument that the “fact that the examiner’s search revealed no similar or conflicting marks . . . further demonstrates that BUYER and ENGINE are not a common or natural pairing . . . .” The Examining Attorney, the Board explained, has no obligation to prove that others have used, or need to use, the mark. A term is not rendered distinctive simply because the Applicant may be the first or only user of the term. A term is descriptive as long as it meets the standard for descriptiveness in In re Gyulay, In re Chamber of Commerce, and DuoProSS. The Board held that the Examining Attorney showed that BUYER ENGINE met the descriptiveness standard.

Finally, Applicant cited three cases involving marks –“FRANKWURST” for wieners, “TINT TONE” for hair coloring, and “DRI-FOOT for anti-perspirant deodorant for feet – that were not found merely descriptive. The Board pointed out, first, that neither the Board nor the Attorney is bound by prior determinations of the Patent and Trademark Office “in cases involving different marks, different goods and services, and different records.” Second, BUYER ENGINE is distinguishable from these cases because the mark “does not refer in an incongruous manner to the desired end-result of applicant’s services.” Instead, the mark refers “to a significant feature of the services themselves, and in a manner that is not incongruous when applied to search engines featuring potential buyers of real estate.”

The Board therefore found that the record “clearly” demonstrated that BUYER ENGINE was merely descriptive of the services, and it affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Is this a WYHA?

Text Copyright John L. Welch and Natali De Corso 2018.