Wednesday, October 01, 2014

Precedential No. 39: Toothbrush Base Design Lacks Acquired Distinctiveness, Says TTAB, Affirming Refusal

The Board affirmed a refusal to register the configuration of the "base assembly" of an electric toothbrush (depicted below), ruling that applicant's evidence of acquired distinctiveness was inadequate. Although applicant's sales figures were "not insubstantial," the absence of detailed information regarding advertising expenditures and the lack of "look-for" advertising were major reasons for the evidentiary failure. In re Koninklijke Philips Electronics N.V., Serial No. 85092079 (September 26, 2014) [precedential]


As we know, product configurations cannot be inherently distinctive. Applicant sought registration under Section 2(f), contending that its prior registration of a similar mark (Rule 2.41(b)), its long and continuous use of the applied-for mark, high sales figures, and evidence of infringement of its mark by competitors constituted a prima facie showing of acquired distinctiveness. The Board, however, agreed with Dannean J. Hetzel that applicant's evidence was insufficient.

As to applicant's prior registration, because it had been cancelled it could not serve as the basis for acquired distinctiveness.

Proof of five years of continuous and exclusive use of a mark may be accepted to establish a prima facie case under Section 2(f), but it is generally not enough when a product design is at issue. Here, applicant established more than ten years of use of the alleged mark, with "not insubstantial" sales of the base assembly product (between three and five million units per year, for revenues of between $91 and $108 million for the years 2006-2012). But high sales figures do not always mean that a mark has acquired distinctiveness because "they are not probative of purchaser recognition of a configuration as an indication of source."

This is especially true given Applicant’s lack of submission of advertising expenditures identifying types of media through which its goods are advertised and attaching typical advertisements for Applicant’s goods, which Trademark Rule 2.41(a) indicates should be provided, so that we may determine the nexus, if any, between the sales success and advertising efforts and Applicant’s product design.

The crucial question, of course, was whether consumers will perceive the product design as a source indicator: i.e., will they associate the design with a single source? "Look-for" advertising "may be particularly probative" on that issue. Advertising that merely depicts a product or touts a feature, however, does not qualify.

Here, there was no evidence of "look-for" advertising. Applicant submitted advertising and packaging of three of its competitors who depicted applicant's base assembly in order to sell replacement brushheads "designed to fit" applicant's base unit, but that evidence did not demonstrate that applicant's base assembly design functions as a source indicator.


Finally, applicant's evidence of infringement was not helpful because "[c]opying is only evidence of secondary meaning if the defendant's intent in copying is to confuse consumers and pass off his product as the plaintiffs." The depiction of applicant's product in comparative advertising does not show an intent to copy and therefore this evidence was not probative of acquired distinctiveness.

Having considered all the evidence, the Board affirmed the refusal.

Read comments and post your comment here

TTABlog comment: The Board notes that "secondary meaning" and "acquired distinctiveness" are sometimes used interchangeably. But I think "secondary meaning" should refer only to word marks, since only words have "meaning." What do you think?

Text Copyright John L. Welch 2014.

TTAB Posts October 2014 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled 5 (five) oral hearings for the month of October, as listed below. Except for the first (in Boston), the hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]. Briefs and other papers for these cases may be found at TTABVUE via the links provided.


October 3, 2014 - 10:30 AM (Northeastern University School of Law): Diamond Power International v. Clyde Bergemann, Inc., Opposition No.  91201996 [Opposition to registration of the mark ASHCON for "consulting services in the field of custom manufacturing of industrial equipment for power plants, mainly bottom ash dewatering systems," in class 40, and for "consulting services in the field of design and development of industrial equipment for power plants, mainly bottom ash dewatering systems," in class 42, on the grounds of likelihood of confusion under Section 2(d) with several registered ASH and ASH-formative marks for ash-conveying equipment, and mere descriptiveness under Section 2(e)(1).].


October 8, 2014 - 11 AM: In re Flatiron Partners, LLC, Serial No. 85699903 [Section 2(d) refusal to register FLATIRON PARTNERS for "managing hedge fund portfolios directed to high wealth, sophisticated individual investors and to sophisticated non-hedge fund corporate entities" in view of the registered mark FLATIRON CAPITAL (standard character) for"financing and loan services"].


October 28, 2014 - 10 AM: In re Michelin North America, Inc., Serial No. 85077031 [Refusal to register 1-800-TIRE-911 for vehicle tire and maintenance services and emergency roadside assistance services, on the ground that the term is merely informational and fails to function as a service mark].


October 28, 2014 - 2 PM: In re PC Laptops, LLC, Serial Nos. 77780768 and 77780823 [Refusal to register PC LAPTOPS for "computers, laptops, and portable computers" and for "retail store services in the field of computer hardware and software," on the grounds of genericness and, alternatively, mere descriptiveness under Section 2(e)(1)].



October 30, 2014 - 2 PM: In re PHNJ, LLC, Serial No. 85690501 [Section 2(e)(1) mere descriptiveness refusal of MEMORY CARE LIVING for "management of health care clinics for others" ].


Read comments and post your comment here.

TTABlog note: Any predictions?

Text Copyright John L. Welch 2014.

Tuesday, September 30, 2014

TTABlog Quarterly Index: July - September 2014

E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. You may also follow the blog on Twitter (here). And don't forget to leave your comments! [Note that E-mail subscribers may gave to go to the blog to see comments]. Finally, please report any broken or inoperative links, as well as any errors and omissions, to the TTABlogger at jwelch at lalaw.com.


Section 2(a) - Deceptiveness:
Section 2(a) - False Association:
Section 2(a) - Immoral or Scandalous:
Section 2(b) - Governmental Symbols:
Section 2(d) - Likelihood of Confusion:
Section 2(e)(1) - Deceptive Misdescriptiveness:
Section 2(e)(1) - Mere Descriptiveness:
Section 2(e)(2) - Primarily Geographically Descriptive:
Section 2(e)(3) - Primarily Geographically Deceptively Misdescriptive:
Section 2(e)(4) - Primarily Merely a Surname:
Genericness:
Standing:
Ownership:
Non-Use/Specimen of Use:
Discovery/Evidence/Procedure:
Recommended Reading:
CAFC:
Other:
Text Copyright John L. Welch 2014.

Monday, September 29, 2014

Precedential No. 38: TTAB Deems "BEAUTV" Use-Based Application Void Ab Initio Due To Non-Use

The Board sustained, on two grounds, an opposition to registration of the mark BeauTV, in standard character form, for "providing information about beauty." It declared the application void ab initio because pro se Applicant Bonnie Tseng failed to prove use of the mark for the recited services prior to the filing of her use-based application to register. And the Board found a likelihood of confusion with opposer's registered service mark THE BEAUTY CHANNEL for providing a website and audio-visual materials in the field of beauty. Opposer overcame an early stumble when it failed to properly submit four of its seven registrations into evidence. United Global Media Group, Inc. v. Bonnie Tseng, Opposition No. 91200786 (September 24, 2014) [precedential].


Four registrations not in evidence: Opposer relied on five registrations (and two pending applications) in its notice of reliance, attaching photocopies of the registration certificates, each accompanied by a page from the PTO assignment database indicating that the registration had not been assigned. However, mere copies of the registration certificates did not comport with Rule 2.122(d), which allows a party to make a registration of record by, inter alia, submitting printouts from the PTO electronic records showing status and title. As to four of the registrations, opposer's submissions did not establish status, and therefore they were not properly made of record. [The Board also noted that the mere inputting of a registration number when prompted by ESTTA, when filing an opposition, does not make the registration of record].

As to the fifth registration, because its date of issuance (March 29, 2011) was "substantially contemporaneous" with the filing of the notice of opposition (July 20, 2011), the copy of the registration was sufficient to make that registration of record. See TBMP Section 704.03(b)(1)(A); Royal Hawaiian Perfumes, Ltd. v. Diamond Head Prods. of Haw., Inc., 204 USPQ 144, 145 (TTAB 1979).

The Board noted that, although applicant had admitted in her answer that opposer owned the pleaded registrations, that did not suffice to make the registrations of record. Opposer did not include allegations regarding the validity of its registrations, and the Board refused to find that Applicant Tseng had admitted "what, at best, might be considered an implied allegation in opposer's pleading, i.e., validity and status of the registrations it claimed to own."

As to the two pending applications that opposer identified in its notice of opposition, those applications issued to registration while this proceeding was pending. The Board pointed out that in such circumstances an opposer may make the registrations of record without having to amend the notice of opposition to assert reliance on the registrations. Opposer submitted, via notice of reliance, the electronic records from the PTO database for those two registrations, showing status and title.

Application void ab initio: In response to opposer's discovery requests, applicant failed to provide any documentation evidencing use of the applied-for mark prior to the filing date. Opposer had thus established a prima facie case of nonuse. Applicant nonetheless submitted a number of documents via notice of reliance (to which opposer objected). Applicant's submissions, however, were either inadmissible (e.g., invoices, letters, and other personal documents not available to the public) or failed to show use of the applied-for mark, or both. [One item comprised pages from applicant's website, where the term "BeauTV" appeared only in the copyright notice and the URL. Neither constitutes use of the term as a service mark].

In sum, the Board found that applicant had not used her mark for the recited services at the time she filed her use-based application, and therefore the application is void ab initio.


Likelihood of confusion: For the sake of completeness, the Board also considered opposer's Section 2(d) claim. The Board focused on opposer's registered mark THE BEAUTY CHANNEL as the mark most similar to applicant's mark, noting that if confusion is not likely as to that mark, then there is no need to consider the other two registered marks (BEAUTY EVERYWHERE and SYNCHRONIZING BEAUTY).

The Board first found that applicant's services (providing information about beauty) encompassed those of opposer. It therefore presumed that the channels of trade and classes of consumers are the same for both marks.

As to the similarity of the marks BeauTV and THE BEAUTY CHANNEL, the Board found that consumers would likely understand applicant's mark to be a "telescoped" form of "BEAUTY TV." The terms TV and CHANNEL have a similar significance in the marks, and so consumers will perceive the marks as "having the same meaning and engendering the same commercial impression." The Board concluded that the similarities in the marks outweigh their differences.

Balancing the relevant duPont factors, the Board found confusion likely and it sustained opposer's Section 2(d) claim.

Read comments and post your comment here;

TTABlog note: It may not have been BeauTTAB, but all's well that ends well. Opposer won the opposition, applicant's hollow application was rejected, and the Board laid down the law regarding how to plead a registration.

Text Copyright John L. Welch 2014.

Friday, September 26, 2014

Overflow Seats Available: TTAB Comes to Boston: October 3rd

There are some seats still available in the overflow room (video) for the TTAB hearing and morning TM session. Law School students admitted free! On Friday, October 3rd, the USPTO's Trademark Trial & Appeal Board (TTAB) and Patent Trial & Appeal Board (PTAB) will hold hearings in the Moot Court Room on the campus of Northeastern University School of Law. This monumental event is jointly sponsored by the Boston Patent Law Association and Northeastern University School of Law. Details and registration here. Summary of TTAB case here.


The morning program will focus on trademarks at the TTAB, Chief Judge Rogers will explain "Why the TTAB is not like the PTAB or District Court," followed by John L. Welch, TTABlog and Lando & Anastasi, sharing his views on "The Top 8 or 9 Losing TTAB Arguments." A three judge panel of the TTAB will hear the final argument in an inter partes proceeding, and Susan Montgomery and John Welch will then lead a question-and-answer period among the attendees. The luncheon keynote speaker is Kevin Johnson, Associate General Counsel, The Gillette Company, who will discuss "Brand Intellectual Property." The afternoon session will turn to patents, led off by Claire Laporte of Foley Hoag, speaking on "Emerging Issue in AIA PTAB Proceeding: Obviousness." A hearing before a three judge panel of the PTAB will be followed by a reception.

Read comments and post your comment here.

TTABlog comoment:  In my memory, I think this is possibly the most significant double-header since Wilbur Wood started both ends of a twin-bill for the Chicago White Sox against the Yankees in 1973 (he lost both games).

Text Copyright John L. Welch 2014.

Finding Beer and Wine Closely Related, TTAB Affirms 2(d) Refusal of "5 GOLDEN RINGS" for Beer

The Board affirmed a Section 2(d) refusal to register the mark 5 GOLDEN RINGS for "beer; malt liquor," finding the mark likely to cause confusion with the registered mark GOLD RING for wines. The Board deemed the marks to be similar in sound, appearance, meaning, and connotation, and third-party registration and Internet evidence convinced the Board that the goods are "closely related." The Bruery, LLC, Serial No. 85656671 (September 24, 2014) [not precedential].


Applicant submitted a Wikipedia entry for  the carol, "The Twelve Days of Christmas," arguing that the phrase "five golden rings" engenders a different commercial impression than the cited mark GOLD RING because the former is "so intrinsically associated with Christmas that it is difficult to read it without elongating the vowels." Unfortunately, applicant submitted that bit of evidence with its appeal brief, and the Board sustained Examining Attorney Natalie Polzer's objection that the submission was untimely.

The Board found that, considering the marks as a whole, the addition of the number "5" and the pluralization of "rings" in the applied-for mark were insufficient to outweigh the similarities in the marks.

As to the goods, applicant contended that consumers would not be easily confused between its craft brewed products and registrant's wine. The Board pointed out, however, that the issue is not whether consumers would confuse the goods, but whether they would be confused as to the source of the goods. Moreover, applicant's identification of goods is not limited to "craft" beer.

The examining attorney submitted numerous use-based third-party registrations showing that the same entity has registered a single mark for both beer and wine. Moreover, Internet evidence demonstrated that many third parties produce and offer both beer and/or malt liquor and wine. And it is not uncommon for craft/microbreweries to also produce wine, sometimes under the same house mark. The Board therefore found that the goods are "closely related." [Why doesn't the Board just take judicial notice of these facts and declare that beer and wine are per se related for Section 2(d) purpose. That would save everyone a lot of time and agony. - ed.]


The presumed channels of trade channels for beer and wine overlap, and in fact the record showed that both goods are sold in liquor stores and by online retailers. [Doh! Judicial notice?]

Finally, applicant maintained that wine and craft beers are rarely purchased on impulse and that consumers of these goods are highly educated [really?] and able to distinguish different brand names. The Board perceptively noted that not all consumers of these goods are highly educated. The goods may be inexpensive and purchased by the public at large. Moreover, consumers who are sophisticated and knowledgeable about alcoholic beverages are not necessarily sophisticated or knowledgeable about trademarks. [And what about consumers who have imbibed an alcoholic beverage, and are then less careful about the next purchase? - ed.].

Considering the pertinent duPont factors, the Board found confusion likely, and it affirmed the refusal.

Read comments and post your comment here.

TTABlog note:  Had applicant submitted the Wikipedia evidence in timely fashion, would that evidence have made a difference? Or is this like the recent PURPLE HAZE case, where the Board observed that those consumers who were unaware of the Jimi Hendrix classic would find the mark confusable with SUNNY HAZE?

Text Copyright John L. Welch 2014.

Thursday, September 25, 2014

Test Your TTAB Judge-Ability: Is BLACK BELT for Ammunition Confusable with BLACK BELT for Pepper Spray?

The USPTO refused registration of the mark BLACK BELT for ammunition, finding a likelihood of confusion with the identical mark registered for pepper spray. Are the goods related for Section 2(d) purposes? Where do you think the examining attorney looked for evidence of relatedness? How do you think this came out? In re RA Brands, L.L.C., Serial No. 85721641 (September 23, 2014) [not precedential].


The Board first addressed a procedural issue: applicant included with its brief a substantial amount of evidence not previously submitted. The evidence consisted of webpages corresponding to excerpts that the the examining attorney had made of record with his denial of applicant's request for reconsideration, after the appeal had been filed. Although evidence first submitted with an appellant's brief is usually rejected, the Board found applicant's expanded excerpts to be admissible, since "the Examining Attorney had the opportunity to consider the entire websites from which he submitted certain webpages, [and] there is no unfair surprise to him in our considering Applicant's evidence." Indeed, the Board observed, it would be unfair to applicant not to consider this evidence.

As to the marks, the Board found that BLACK BELT is not a strong mark because it is suggestive: "it conveys the idea of being able to defend oneself or being good at self-defense." [Hmmm, not very suggestive of ammunition or pepper spray in my book - ed.].

There was substantial evidence that the trade channels for the goods are the same: for example, the websites of Wal-Mart, Dick's Sporting Goods, and various firearm-oriented outlets offer both types of products.


As to the similarity of the goods, however, the evidence was weak. The examining attorney submitted a large number of third-party registrations in an attempt to show that the registrants had adopted a single mark for both ammunition and pepper spray. However, only one company (with several registrations) adopted a single mark for both types of goods. "The fact that one company has registered the same mark for both ammunition and pepper spray is insufficient to show that ammunition and pepper spray may emanate from a single source."

The examining attorney also argued that the goods are related because they are both used for self-defense and are complementary. The Board pointed out, however, that "simply because a term can be found to generally describe both goods does not necessarily make them related." [But it was enough to make the mark suggestive? - ed.]

The only evidence (a registration) that might show the goods to be complementary involved products for police and security personnel, and they would be sophisticated purchasers presumably familiar with the practices in the trade and likely to know that companies do not make both ammunition and pepper spray.

Therefore, despite the identity of the marks and channels of trade, the Board found that the PTO had failed to meet its burden of proof, and so it reversed the refusal.

Read comments and post your comment here;

TTABlog note:  To me, black belt suggests black shoes.

Text Copyright John L. Welch 2014.

Wednesday, September 24, 2014

ZAFRAN Deceptive and Deceptively Misdescriptive for Sauces and Salsas, Says TTAB

The Board affirmed refusals to register ZAFRAN and CUSTOM CULINARY ZAFRAN for "sauces and salsas" [CULINARY disclaimed], on grounds that the marks are both deceptive under Section 2(a) and deceptively misdescriptive under Section 2(e)(1)]. Both applications contained the statement that "the English translation of ZAFRAN is saffron" and applicant stated that its goods do not contain saffron. In re Griffith Laboratories International, Inc., Serial Nos. 85332209 and 85332239


According to the evidence, saffron is known as the "king of spices" and is "the world’s most expensive spice." It is widely used in many cuisines, including Italian, French, Indian, Persian, European, Arab, and Turkish. Saffron is said to have a unique flavor for which there is no substitute. It also has religious and medical uses. Examining Attorney Brian Neville submitted evidence of use of "zafran" in the United States, meaning saffron, including a dish containing "zafran sauce" sold by an Italian restaurant in New York City.

Section 2(a) Deceptiveness: The Board applied the CAFC's test for Section 2(a) deceptiveness:

(1) Is the term misdescriptive of the character, quality, function, composition or use of the goods?
(2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods?
(3) If so, is the misdescription likely to affect a significant portion of the relevant consumers’ decision to purchase?

Applicant conceded, and the evidence established, that "zafran" is a synonym for, or an alternative spelling of "saffron." If "saffron" is deceptive for applicant's goods, then so is "zafran." A mark that includes a deceptive term is deceptive under Section 2(a).

The Board found that, because saffron in used in a number of sauces and salsa, but not in applicant's, it is misdescriptive of applicant's goods. Moreover, consumers are likely to believe that applicant's goods contains saffron. Finally, the "king of spices" would be a desirable ingredient because of its unique flavor  and its medicinal properties.

The Board concluded that ZAFRAN is deceptive for applicant's goods, and therefore it affirmed the Section 2(a) refusal.

Section 2(e)(1) Deceptive Misdescriptiveness: For the sake of completeness, the Board considered the alternative refusal. It noted that deceptive marks (Section 2(a)) are unregistrable, whereas deceptively misdescriptive marks may be registered on the Supplemental Register, or on the Principal Register with a showing of acquired distinctiveness under Section 2(f).

The test for deceptive misdescriptiveness consists of the first two points or questions of the deceptiveness test. The Board already answered those two questions in the affirmative, and so it affirmed the Section 2(e)(1) deceptive misdescriptiveness refusal as well.

Read comments and post your comment here;

TTABlog note:  Although evidence attached to an appeal brief is usually rejected as untimely (or duplicative), the Board may take judicial notice of dictionary definitions, and it did so here with regard to the definition of "saffron" submitted by applicant.

Text Copyright John L. Welch 2014.

Tuesday, September 23, 2014

TTAB Reverses Section 2(b) Refusal of WORLD LITERACY DAY With Flags

In a rare Section 2(b) decision, the Board reversed a refusal to register the mark shown below, for various goods and services, finding that the mark does not consist of or comprise the flags of the United States or foreign nations. "[T]he flags are not being displayed as flags, but rather are incorporated into the design as torsos of individuals," signifying "the international aspect of Applicant's goods and services," said the Board. In re 3P Learning Pty Ltd., Serial No. 85641327 (September 16, 2014) [not precedential].


Section 2(b) of the Trademark Act, in pertinent part, prohibits registration of a mark that "[c]onsists of or comprises the flag or coat of arms or other insignia of the United States ... or of any foreign nation, or any simulation thereof." The examining attorney maintained that the flags in applicant's mark "remain in their usual rectangular shape with the same proportions and designs of their countries [sic] usual flags." She pointed out that the flags are not highly stylized or changed, and contended that even in black and white they are readily recognizable.

Paris Convention: Applicant argued that its mark has been registered in two Paris Convention countries that, "like the United States, prohibit marks containing flags of member countries," and therefore it should be allowed to register here. The Board pointed out, however, that the Paris Convention, and particularly Article 6ter, provides a "baseline for protection, but it does not impose a cap on how restrictive a country may be in prohibiting registration of symbols, including flags."

"[T]he Paris Convention is essentially a treaty between the various member countries by which each member country accords to citizens of the other contracting countries the same trademark and other rights accorded to its own citizens by its domestic law. The underlying principle is that foreign nationals should be given the same treatment in each of the member countries as if they were citizens of that country. The Paris Convention is not premised upon the idea that trademark laws of each member nation shall be given extraterritorial application, but on exactly the converse principle that each nation’s law shall only have territorial application.” International Finance Corp. v. Bravo Company, 64 USPQ2d at 1601-02."

In short, "how others jurisdictions apply the Paris Convention Article 6ter under their domestic laws, in any particular case, is not instructive."

2(b) or not 2(b)?:  The Board acknowledged that the flags in applicant's mark are not "stylized in such a manner to blur the flag design." But use of the flags as the torsos of individuals "is not a traditional flag design."

In assessing a mark in view of the Section 2(b) prohibition, the Board must consider "the commercial reaction that it imports to viewers." Although generally recognizable, the flags in the applied-for mark "do not have the commercial impression of national flags but rather as designations of individuals from various nations."

The Board distinguished the applied-for mark from the example provided by the examining attorney (below), in which the flag is attached to a guitar that functions as a flag pole. Here, the flags are not being displayed as flags but instead appear as torsos of individuals, signifying the international nature of applicant's goods and services.


And so the Board reversed the refusal.

Read comments and post your comment here;

Text Copyright John L. Welch 2014.

Monday, September 22, 2014

On Summary Judgment, TTAB Finds NAUGHTY GIRL Not Merely Descriptive of Wine

The Board granted Respondent's motion for summary judgment, finding the mark NAUGHTY GIRL to be not merely descriptive of "fortified wines; wines and fortified wines." [sic!]. Petitioner contended that "drinking respondent’s wine, which has a slightly higher alcohol content than some wines, will make women 'naughty.'" Judges Seeherman, Taylor, and Ritchie were not swayed. Alvi's Drift Wine International v. von Stiehl Winery, Cancellation No. 92058100 (September 12, 2014) [not precedential}.


Respondent asserted that NAUGHTY GIRL does not immediately convey any knowledge about the ingredients, qualities, functions, features or characteristics of wine. Its vice president averred that the mark was chosen because it is "playful, humorous and imaginative,” not because it will actually make a person a "naughty girl.'" Dictionary definitions of "naughty" and "girl" made no reference to wine, and a LEXIS/NEXIS search failed to disclose a single article using "naughty girl" to describe an ingredient, quality, characteristic, function, feature, purpose or use of wine.

Petitioner argued that the evidence, and particularly respondent’s claim that "the effect of the NAUGHTY GIRL wine might be fun and excitement," created a genuine dispute of material fact that precludes the entry of summary judgment. According to petitioner, respondent's intent in choosing the mark NAUGHTY GIRL was to describe the wine's effect: "after someone drinks a few glasses of high alcohol wine, it is a fine line between 'fun and excitement' and 'act[ing] like a naughty girl.' ... Registrant is also navigating a slippery slope between 'playful' and 'act[ing]' like a “naughty girl.'"

Petitioner submitted pages from a blog which included the following item: "When I saw this wine at the Wisconsin Cheese Chalet, the place I bought my chocolate cheese, I knew I had to try it. It was calling the party girl in me because they had a whole party girl display going by this wine. Here are the bottle toppers that started the whole 'naughty girl' craze." Another entry, entitled “boob wine stoppers," included the same photo as the first entry, and stated: "These are crazy boob party girl wine stoppers...they made me buy Naughty Girl wine."


The Board found the mark to be at most suggestive of the goods. Petitioner's evidence showed "only that one blogger appreciates respondent’s product, not that there is anything about the term that is descriptive."

Moreover, even if one could conclude from petitioner’s evidence that some altered state of behavior may follow ingesting the goods, there is no evidence to show that the term NAUGHTY GIRL or its constituent words, conveys any information about an ingredient, quality, characteristic, function, feature, purpose or use of wine. Rather, a multi-stage thought process would be necessary: 1) respondent’s wine has a higher alcohol content; 2) drinking fortified wine may make one inebriated; 3) inebriated people act inappropriately; 4) people who act inappropriately may be considered naughty; 5) NAUGHTY GIRL describes the result on the drinker of using the wine. Even if one were to follow that thought process, because it obviously takes a multi-stage reasoning process, the mark is not merely descriptive but is at most suggestive.

In short, petitioner failed to rebut respondent's evidence, and so the Board granted the motion for summary judgment.

Read comments and post your comment here;

TTABlog note:  Is this a WYHP? What about that label?

Text Copyright John L. Welch 2014.

Sunday, September 21, 2014

N.D. Fla. District Court Upholds TTAB's "BUSHWACKER" Decision

The U.S. District Court for the Northern District of Florida, in a Section 1071 review of the TTAB's decision in Sandshaker Lounge and Package Store, LLC v. Quietwater Entertainment, Inc., Cancellation No. 92051644 (January 31, 2013) [not precedential], granted the summary judgment motion of defendant Quitewater and upheld the Board's dismissal of the opposition. [Complaint here]. Sandshaker Lounge and Package Store, LLC v. Quietwater Entertainment, Inc., Civil Action No. 3:1cv114/MCR/CJK (N.D. Fla. September 5, 2014).


Sandshaker sought to cancel a registration for the mark BUSHWACKER for "entertainment services in the nature of a festival featuring live musical groups," on the ground of likelihood of confusion, claiming that it had previously used the identical mark for frozen drinks and for musical events, all of the parties' activities occurring in Pensacola Beach, Florida.

The district court concluded that Plaintiff Sandshaker lacked ownership rights in the BUSHWACKER mark due to its acquiescence in use of the same name by other businesses for their own drinks, prior to Defendant's Quietwater's first music festival. Therefore Sandshaker could not establish the priority of use necessary for a likelihood of confusion claim.

It is undisputed that Murphy and Sandshaker knowingly allowed other businesses in the area to use the same name for their own drinks prior to and after 1988. Campbell admitted it was too late for Sandshaker to attempt to claim exclusive use of the term for its drink. This knowing acquiescence to use of the name by other unrelated establishments is relevant to the TTAB’s finding that Sandshaker did not have trade identity rights sufficient to create priority.

The district court dismissed all five counts of the complaint, including trademark infringement, dilution.

Read comments and post your comment here;

Text Copyright John L. Welch 2014.

CAFC Affirms TTAB Decision in Flying Birds Section 2(d) Opposition

On September 15, 2014, in a nonprecedential ruling, the U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's decision in Retail Royalty Company v. Michael R. Longshore, Opposition No. 91192917 (January 21, 2014) [not precedential]. [TTABlogged here]. The Board found the two design marks shown below, for overlapping clothing items, to be confusingly similar . The CAFC agreed. Longshore v. Retail Royalty Co., Appeal No. 2014-1448 (Fed. Cir. September 15, 2014) [not precedential].


Longshore, appearing pro se, argued that the marks are distinguishable because his mark depicts a dove whereas Retail Royalty's mark depicts a bird of prey. The CAFC ruled that the Board's conclusion, based on a visual comparison of the marks, was supported by substantial evidence.

Longshore maintained that his goods are "inspirational wear," while Retail Royalty's mark is used only for women's clothing. The CAFC, however, pointed out that the Section 2(d) determination must be based on the goods as identified in the involved application and registration. Here, there are no corresponding limitations in either. And so the Board did not err in presuming that the involved goods travel in the same channels of trade to the same classes of consumers.

Finally, with regard to a third-party registration for the mark HOLLISTER CALIFORNIA & Design, which depicts a bird in silhouette (below), the Board correctly concluded that the probative value of this registration was limited given the lack of evidence of actual usage of the mark.


Read comments and post your comment here;

Text Copyright John L. Welch 2014.

Seats Available: TTAB Comes to Boston: October 3rd

We now have an overflow room available for the TTAB hearing and morning TM session. Law School students admitted free! On Friday, October 3rd, the USPTO's Trademark Trial & Appeal Board (TTAB) and Patent Trial & Appeal Board (PTAB) will hold hearings in the Moot Court Room on the campus of Northeastern University School of Law. This monumental event is jointly sponsored by the Boston Patent Law Association and Northeastern University School of Law. Details and registration here. Summary of TTAB case here.


The morning program will focus on trademarks at the TTAB, Chief Judge Rogers will explain "Why the TTAB is not like the PTAB or District Court," followed by John L. Welch, TTABlog and Lando & Anastasi, sharing his views on "The Top 8 or 9 Losing TTAB Arguments." A three judge panel of the TTAB will hear the final argument in an inter partes proceeding, and Susan Montgomery and John Welch will then lead a question-and-answer period among the attendees. The luncheon keynote speaker is Kevin Johnson, Associate General Counsel, The Gillette Company, who will discuss "Brand Intellectual Property." The afternoon session will turn to patents, led off by Claire Laporte of Foley Hoag, speaking on "Emerging Issue in AIA PTAB Proceeding: Obviousness." A hearing before a three judge panel of the PTAB will be followed by a reception.

Read comments and post your comment here.

TTABlog comoment:  In my memory, I think this is possibly the most significant double-header since Wilbur Wood started both ends of a twin-bill for the Chicago White Sox against the Yankees in 1973 (he lost both games).

Text Copyright John L. Welch 2014.

Friday, September 19, 2014

Test Your TTAB Judge-Ability on these Five Section 2(d) Appeals

I once heard a TTAB judge say that the outcome of most Section 2(d) likelihood of confusion cases can be predicted just by looking at the marks and the identified goods or services, without more. Well, your would-be honor, try your skills on these five recent appeals, keeping in mind that, by my estimate, about 85% of Section 2(d) refusals are affirmed by the Board. [Answer in first comment].


In re Special Fruit NV, Serial No. 79112203 (September 17, 2014) [not precedential]. [Refusal to register BERRY FRESH & Design (shown below) for "fresh fruits and vegetables" [BERRY FRESH disclaimed] in view of three marks registered on the Supplemental Register: BERRY FRESH for "independent sales representatives in the field of assorted fresh berries specifically, fresh blueberries, blackberries, raspberries and strawberries" [BERRY disclaimed]; BERRY FRESH PRODUCE for "fresh fruits; fruits, namely, assorted fresh berries specifically, fresh blueberries, blackberries, raspberries and strawberries" [BERRY PRODUCE disclaimed]; and Berry Fresh, in standard character form, for "fresh fruits; fruits, namely, assorted fresh berries, specifically, fresh blueberries, blackberries, raspberries and strawberries" [BERRY disclaimed]].


In re Progressive Foam Technologies, Inc., Serial No. 85738691 (September 17, 2014) [not precedential]. [Refusal to register the mark PROGRESSIVE FOAM & Design for "construction materials, namely, exterior building insulation made of polystyrene, expanded polystyrene, or other foamed thermoplastic, shaped to conform with other building products such as siding, roofing, decking, or fencing" [FOAM disclaimed], in view of the registered mark PROGRESSIVE INSULATION & WINDOWS & Design for "home energy assessments leading to and including installation of advanced insulation systems to create a more energy efficient home thermal envelope" [INSULATION AND WINDOWS disclaimed]].


In re Universal Entertainment Corp., Serial No. 85872412 (September 17, 2014) [not precedential]. [Refusal to register PROSPEROUS YEAR for "slot machines and replacement parts therefor, video slot machines and replacement parts therefor; gaming machines and replacement parts therefor; gaming machines with liquid crystal displays and replacement parts therefor; mechanical reel type slot machines with liquid crystal displays and replacement parts therefor" in view of the registered mark PROSPEROUS LIFE for "gaming machines"].


In re United Fibers LLC, Serial No. 85721638 (September 16, 2014) [not precedential].[Refusal to register GREEN DEPOT & Design (shown first below) for "recycling" [GREEN disclaimed], in view of the registered mark GREENDEPOT & Design (second below) for "on-line retail store services featuring home improvement products; retail stores featuring home improvement products"].


In re East Meadow Corp. d/b/a Uncle Guiseppe’s Marketplace, Serial No. 85540708 (September 16, 2014) [not precedential]. [Refusal to register the mark UNCLE GIUSEPPE'S MARKETPLACE & Design (shown first below) for "ready-made sauces" [MARKETPLACE disclaimed], in view of the registered mark GIUSSEPPE'S, in stylized form, for "pre[-]prepared prepackaged frozen entrees consisting primarily of pasta and sauces for sale in food stores"].


Read comments and post your comment here.

TTABlog Note: Hey Joe, see any WYHA's here?

Text Copyright John L. Welch 2014.