Tuesday, August 19, 2014

Pro-Football Seeks Section 1071 Review of TTAB's "REDSKINS" Decision in E.D. Va. District Court

On August 14th, Pro-Football, Inc. filed a complaint in the U.S. District Court for the Eastern District of Virginia, seeking Section 1071(b)(1)  review of the TTAB's "REDSKINS" decision of June 18, 2014 [TTABlogged here]. As you know, a divided Board panel granted a petition for cancellation of six registrations owned by Pro-Football for marks comprising or containing the word REDSKINS, for entertainment services, finding that the marks, at their respective dates of registration, disparaged Native Americans. A pdf of the complaint may be downloaded here.

In its complaint, Pro-Football argues that the TTAB's decision " is replete with errors of fact and law, including its failure to restrict its analysis to the relevant time frame of 1967-1990, when the registrations were first issued." Pro-Football also claims that the decision violates the First and Fifth Amendments of the Constitution, and that laches bars the claims of the petitioners.

In September 2011, the America Invents Act changed the applicable venue for Section 1071(b)(1) actions, when adverse parties reside in a plurality of districts. Previously, the U.S. District Court for the District of Columbia was the proper venue, but the AIA amended that to the Eastern District of Virginia. Of course, the previous round of litigation over the REDSKINS trademark had involved the District of Columbia district court (the Harjo decisions).

Ron Coleman, prominent trademark blogger and attorney for THE SLANTS in its appeal from another TTAB disparagement ruling [TTABlogged here], provides his interesting comments on Pro-Football's complaint and the REDSKINS case in general, here at his Likelihood of Confusion blog.

Read comments and post your comment here.

TTABlog note:  If you were a betting person, where would you put your money?

Text Copyright John L. Welch 2014.

Monday, August 18, 2014

Test Your TTAB Judge-Ability on these Four Section 2(d) Refusals

Okay, you know the drill: I once heard a TTAB judge state 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/services, without more. Well, your would-be honor, try your skills on these four appeals, keeping in mind that, by my estimate, about 85% of Section 2(d) refusals are affirmed by the Board. [Answers will be found in first comment].

In re Gavin McNeill, Serial No. 85461532 (August 11, 2014) [not precedential]. [Refusal to register the design mark shown below, comprising "a black outline of a baseball hat and the word 'Cool' beneath the hat that resembles a face," for "Caps; Hats; Headwear; Jackets and socks; Sweatshirts; T-shirts; Tank tops; Tops," in view of the registered mark COOL!, in standard character form, for various clothing items, including t-shirts].

In re Hearst Communications, Inc., Serial No. 85704221 (August 11, 2014) [not precedential]. [Refusal of METROPOLITAN HOME for "case goods, namely, chests, night stands, cabinets, dining tables, coffee tables, end tables, desks, bed and headboards; upholstered furniture; all the foregoing not relating to furniture for use in patient rooms and waiting areas of healthcare facilities" [HOME disclaimed], in view of the registered mark METROPOLITAN for "furniture for use in patient rooms and waiting areas of healthcare facilities"].

In re Federacion Regional de Sociedades Cooperativas de la Industria Pesquera, Baja California, F.C.L., Serial No. 85835945 (August 14, 2014) [not precedential]. [Refusal to register the mark REY DEL MAR and Design, shown below, for "Abalones; Ark-shells; Lobsters; Oysters" [The English translation of REY DEL MAR is KING OF THE SEA], in view of the registered mark KING OF THE SEA for seafood].

In re Forshaw, Serial No. 85797042 (August 15, 2014) [not precedential]. [Refusal of CALI FO$HO for "Hats; pants; shirts" in view of the registered mark SOFOSHO for "clothing – namely-shirts, sweatshirts, shorts, T-shirts, jackets"].

Read comments and post your comment here.

TTABlog note:  See any WHYA?s here?

Text Copyright John L. Welch 2014.

Friday, August 15, 2014

TTAB Finds MYUNDIES Registration Void Ab Initio: Mark Not in Use As Of Filing Date

The Board summarily granted a petition for cancellation of a registration for the mark MYUNDIES for various clothing items, finding the registration to be void ab initio because Respondent was not using the mark on any of the goods at the time he filed the application to register. Respondent asserted that he is using the mark and has no intention to abandon it, but that did not cure the initial, fatal error. MeUndies, Inc. v. Drew Massey dba myUndies Inc., Cancellation No. 92055585 (August 13, 2014) [not precedential].

A registration may be found void ab initio under Trademark Act Section 1(a) when the mark in the underlying use-based application was not in use in commerce as of the application filing date.

Respondent Drew Massey admitted that he did not use the registered mark as of the filing date of the underlying application. He stated that he was "pro se and should have filed as ‘intend to use’ versus referring to ‘first known use’ which was done by a prior separate company."

The founder and owner of a company called "myUndies.com, Inc," which existed from 1999 to 2001, had used the mark MYUNDIES in connection with online retail services, but Respondent was not involved in
his company. Respondent contacted him regarding Respondent’s possible use of the mark, but the mark MYUNDIES had been abandoned for nearly eight years.

In response to Petitioner's summary judgment motion,Respondent merely argued that he has been and is using the mark MYUNDIES and has no intention to abandon the mark, and did not commit fraud when he filed the underlying application. The Board was unmoved.

Whether Respondent is currently using the registered mark or whether he has any current intent to resume use is not the issue. *** Similarly, it is irrelevant that Respondent represented himself and possibly misunderstood the law when he filed his use-based application. A use-based application is void if the mark is not in use on the identified goods at the time of filing, regardless of whether the applicant understood the statutory requirement for use or intended to mislead the USPTO.

The Board therefore granted Petitioner's summary judgment motion and granted its petition for cancellation.

Read comments and post your comment here.

TTABlog note: Petitioner did not claim fraud. Too bad. We are approaching the fifth anniversary of the post-Bose "no fraud" era, and this case might have opened the door.

Text Copyright John L. Welch 2014.

Wednesday, August 13, 2014

Finding Chickpeas Related to Restaurants, TTAB Sustains PITA PAL Opposition

The Board sustained a Section 2(d) opposition to registration of the mark PITA PAL - THE ART OF HEALTHY EATING & Design for "falafel; processed chickpeas; processed garbanzo beans," finding the mark likely to cause confusion with the registered mark THE ART OF EATING HEALTHY for "restaurants." Although opposer's survey evidence failed to pass mustard, the Board found the goods and services related, the marks similar, and the channels of trade overlapping. Pita Jungle – Tempe, Inc. v. Pita Pal Foods, LP, Opposition No. 91204422 (July 24, 2014) [not precedential].

The Board observed the there is no per se rule holding that restaurant services and food items are related for purposes of a likelihood of confusion determination. One claiming likelihood of confusion must show “something more.” Jacobs v. International Multifoods Corp., 668 F.2d 1234, 212 USPQ 641, 642 (CCPA 1982).

Opposer’s restaurant’s offers food “based upon a Mediterranean diet and … includes substantial amounts of hummus, falafel, chick peas and garbanzo beans as well as a lot of grains, olive oil, vegetables, fish, chicken and pita pocket bread.” The Board found that opposer had satisfied the “something more” requirement in two ways. First, “pita” describes a type of food often eaten with applicant’s goods and a type of food served at applicant’s restaurants. Thus there is an “undeniable connection” between applicant’s goods and opposer’s services. Second, Opposer’s restaurants offer takeout and catering services that feature the same food items for which Applicant seeks registration: “Applicant’s processed chickpeas and garbanzo beans (essentially hummus) and falafel are related to Opposer’s restaurant services which offer all of those foods, as well as the pita identified in Applicant’s mark, for takeout.”

The normal channels of trade for applicant’s goods and Opposer’s restaurants “are likely to overlap, as both parties would be expected to market their respective goods and services through the same advertising channels to consumers interested in hummus, falafel and related products.”

As to the marks, applicant’s mark is comprised of a slight variation of Opposer’s mark (THE ART OF HEALTHY EATING rather than THE ART OF EATING HEALTHY) combined with the term PITA PAL, in which PITA is disclaimed. In Applicant’s mark, the slogan THE ART OF HEALTHY EATING makes a separate commercial impression from the rest of the mark. Moreover, the term PITA PAL is at best suggestive of applicant’s goods.

Opposer offered the results of a survey involving the interviews of 26 or 27 customers in each of its 17 PITA JUNGLE locations, for a total of 446 interviews. Opposer’s expert concluded that applicant’s mark caused 30% of survey respondents to be confused by applicant’s mark.

The Board, however, did not find the survey to be reliable. The survey did not include any control, i.e., the survey expert did not use a “test cell” and a “control cell.” The universe of interviewees was skewed because it included only customers who were leaving opposer’s restaurant, and they were questioned immediately after being exposed to Opposer’s marks. Moreover, the extent of the expert’s experience with trademark surveys was unclear, and his qualifications were not impressive. And the key question in the survey was leading.

Giving the benefit of any doubt to the registrant, the Board found confusion likely, and it sustained the opposition.

Read comments and post your comment here.

TTABlog note:  So what do you think?

Text Copyright John L. Welch 2014.

Tuesday, August 12, 2014

Test Your TTAB Judge-Ability: Is BOATS DIRECT USA Geographically Descriptive of Boat Dealerships?

The USPTO issued a Section 2(e)(2) refusal to register the mark BOATS DIRECT USA, finding it to be primarily geographically descriptive of boat dealerships. On appeal, applicant admitted that "the term 'USA' is generally know to mean the United States of America." And since applicant is located in Key Largo, Florida, a services/place association is presumed, a presumption that applicant failed to rebut. So "USA' is geographically descriptive, but what about the mark as a whole? How do you think this came out? In re Boats Diret, LLC, Serial No. 85418867 (August 7, 2014) [not precedential].

According to Board precedent, a mark comprised of a geographic term and generic terms, highly descriptive terms, or highly suggestive and laudatory terms, is considered to be primarily geographically descriptive. [e.g., MINNESOTA CIGAR COMPANY for cigars]. So the question was whether the phrase BOATS DIRECT is generic, highly descriptive, or highly suggestive and laudatory.

The was no dispute that BOATS is generic for boats [Doh!], but what about DIRECT? The examining attorney argued that the wording merely describes the nature of applicant's services: "the direct sale of boats." But there was no evidence showing what the "direct sale of boats" means. Although applicant admitted that some of the boats it sells are "factory direct," the PTO did not establish "that the term 'BOATS DIRECT' describes a feature of applicant's dealerships in factory-direct boats." Nor did any of the submitted dictionary definitions apply the word "direct" in conjunction with "boats."

To be clear, there is no evidence supporting the Examining Attorney’s contention that the term “Boats Direct” is merely descriptive or even that it is highly suggestive and laudatory. Accordingly, we find that the phrase “BOATS DIRECT” is not highly descriptive, generic or highly suggestive and laudatory.

The Board therefore found that the applied-for mark is not primarily geographically descriptive. However, pursuant to Trademark Rule 2.142(g), the Board re-opened the application for the purpose of entry of a disclaimer of the words BOATS and USA under Section 6 of the Trademark Act.

Read comments and post your comment here.

TTABlog note:  Any thoughts?

Text Copyright John L. Welch 2014.

Monday, August 11, 2014

Test Your TTAB Judge-Ability: Which One of these Section 2(d) Refusals Was Reversed?

I once heard a TTAB judge state that the outcome of most Section 2(d) likelihood of confusion cases may be predicted just by looking at the marks and the identified goods/services, without more. Well, your would-be honor, try your skills on these four appeals, one of which resulted in a reversal. [Answer in first comment].

In re Pacific Resorts Investments Limited, Serial No. 85668227 (August 7, 2014) [not precedential]. [Refusal to register GINGER-EZE for dietary supplements containing ginger, in view of the registered mark GINEASE for dietary and nutritional supplements].

In re Les Mills International Limited, Serial No. 85652407 (August 7, 2014) [not precedential]. Refusal of GRIT for audio and video recordings, printed materials, educational services in the fields of health, nutrition, and physical fitness, in view of the registered mark GRIT FIT for physical fitness and exercise instruction and training; production of videos, and publishing of books and handbooks].

In re James Charne, Serial No. 85778933 (August 7, 2014) [not precedential]. [Refusal to register RISE OF KINGS for computer game programs, in view of the registered mark THE RISE OF THE WITCH-KING for computer game software].

In re Gold Crust Baking Company, Serial Nos. 85678105 and 85691267 (August 6, 2014) [not precedential]. [Refusal to register the marks GOLD CRUST BAKING COMPANY in standard character [BAKING COMPANY disclaimed] and design form (shown below left) [BAKING COMPANY, INC. disclaimed], for "bakery goods, namely, bread and buns," in view of the registered mark shown below right (CARIBBEAN BAKERY & GRILL disclaimed] for "restaurant services featuring Caribbean style foods"].

Read comments and post your comment here.

TTABlog note:  Answer may be found in first comment. See any WYHA?s here?

Text Copyright John L. Welch 2014.

Friday, August 08, 2014

CAFC Vacates and Remands TTAB's NIGHTLIFE TELEVISION Decision: Board Ignored Pleaded Registration

The U.S. Court of Appeals for the Federal Circuit has vacated the Board's decision in Cutino v. Nightlife Media, Inc., Opposition No. 91186025 (April 25, 2013) [not precedential], in which the Board dismissed a Section 2(d) opposition to registration of NIGHTLIFE TELEVISION for "Video-on-demand transmission services, Internet broadcasting services, broadcasting services, namely, broadcasting programs over a global computer network to mobile telephones and computers, Satellite television broadcasting, and Television broadcasting," in view of the two registered marks LONG ISLAND’S NIGHTLIFE (Stylized) [LONG ISLAND disclaimed] and NEW YORK'S NIGHTLIFE [NEW YORK'S disclaimed] for monthly magazines. The CAFC found that the Board erred in refusing to consider Opposer Cutino's pleaded NIGHTLIFE registration (for "magazines of general interest" and for "television programming services") because, the court found, applicant had admitted the current ownership and active status of that registration. The case was remanded to the TTAB for consideration of the NIGHTLIFE registration. Cutino v. Nightlife Media, Inc., Appeal No. 2013-1541 (Fed. Cir. August 7, 2014) [not precedential].

Opposer Cutino pleaded three registrations, but as to the NIGHTLIFE registration he submitted only an ordinary copy of the registration (rather than copies of the PTO database entries or a status-and-title copy of the registration). See Rule 2.122(d)(1). Therefore the Board ruled that the NIGHTLIFE registration was not of record. As to the two registered marks that were of record, the Board noted that they included words that referred to a specific geographic location, making Cutino's two marks "look and sound significantly different than applicant's mark." Moreover, Cutino failed to prove that his local-area magazines were related to applicant's broadcasting services.

The CAFC pointed out that applicant admitted in its answer that Cutino is the owner of the three pleaded marks and that the pleaded registrations identify the goods and services alleged by Cutino in his opposition. The Board, however, found that applicant's admission of Cutino's ownership of the NIGHTLIFE mark was not enough to make the registration of record.

The CAFC concluded that the Board had abused its discretion in disregarding the NIGHTLIFE registration. "The Board's own procedures and this court's precedent recognize that an opposer's registration will be deemed of record if the applicant's answer contains admissions sufficient to establish the current status of the registration and the plaintiff's ownership of the registration."

The court found that applicant's admissions in its answer were sufficient "to treat the NIGHTLIFE registration as part of the record."

While Applicant purported to admit only that Mr. Cutino is the owner of the "mark" NIGHTLIFE, Applicant did not deny that Mr. Cutino owns the corresponding pleaded registration. *** An answer that fails to deny a portion of an allegation is deemed admitted as to that portion."

Moreover, the court found that the admission regarding ownership "not only establishes current title, but also the current status of the NIGHTLIFE registration, i.e., that it is active." The court explained that one "technically does not own a registration unless it is in force and effect." And applicant's denial that the registration was "subsisting" was not a clear denial of its current status, particularly since applicant made the identical denials with regard to the other two pleaded registrations for which Cutino submitted records establishing current status.

The CAFC remanded the case to the TTAB to consider the likelihood of confusion between the registered NIGHTLIFE mark and applicant's mark.

Read comments and post your comment here.

TTABlog note:  Well, with opposer's NIGHTLIFE registration, which covers "television programming sevices," back in play, this is a whole new ballgame.

Text Copyright John L. Welch 2014.

Thursday, August 07, 2014

TTAB Reverses Mere Descriptiveness Refusal of RBAM for Engineering Consulting Services

In a rare reversal of a Section 2(e)(1) mere descriptiveness refusal, the Board found the mark RBAM not merely descriptive of management and consulting services in the field of engineering, particularly with regard to industrial, military, and marine equipment. The Board found the phrase "risk-based asset management" to be descriptive of applicant's services, but there was insufficient evidence to show that the acronym RBAM is understood by relevant customers as synonymous with that phrase. In re Life Cycle Engineering, Inc., Serial No. 85692710 (August 4, 2014) [not precedential].

Applicant refers to the "ultimate result of its services as 'a risk-based asset management strategy.'" The Examining Attorney established that third parties use the expression "risked-based asset management" to describe processes similar to those of applicant. Applicant did not claim that the phrase has an nondescriptive significance.

The question, then, was whether the acronym RBAM would be understood by relevant consumers to be synonymous with "risk-based asset management." The Acronym Finder website showed "risk-based asset management" as one of the meanings for RBAM, but did not indicate widespread exposure to or understanding of the correlation between the acronym and the phrase. With only one exception, that examples of third-party use of RBAM "never show the expression RBAM alone unless it has earlier appeared in the form 'risk-based asset management (RBAM)'" This type of usage, the Board noted, "may suggest that the writer would not expect readers to understand the acronym without explanation."

The Board also noted that the number of uses of the RBAM acronym in the record is "objectively small." Applicant's Manager of Director of Asset Management Services unequivocally averred that he was unaware of any third-party use of RBAM for similar services.

Although the Board had some doubt about the issue at hand, it resolved any doubt in favor of applicant and so reversed the refusal to register.

Read comments and post your comment here.

TTABlog note:  Do you think the acronym WYHA? has become synonymous with the phrase "Would You Have Appealed"? Is "Would You Have Appealed?" merely descriptive of anything? If not, why are we worried about the acronym anyway? Just embrace it.

Text Copyright John L. Welch 2014.

Wednesday, August 06, 2014

Napa Vintners Association Fails to Prove Standing, TTAB Dismisses 2(d) Opposition to NOPA for Wines

Standing is a threshold issue that must be proven in every inter partes proceeding. In this opposition to registration of the mark NOPA for wines, applicant Wine Vision, a Portuguese company appearing pro se, did not file a brief or introduce testimony or other evidence - you might say that NOPA used the Ropa Dopa defense - but the Napa Valley Vintners Association failed to proved its standing to oppose. How did it all go sour? Read on, MacDuff. Napa Valley Vintners Association v. Wine Vision, Lda., Opposition No. 91189310 (July 29, 2014) [not precedential].

Opposer claimed to own the common law certification marks NAPA and NAPA VALLEY for wine, and it alleged that applicant's mark NOPA would likely cause confusion under Section 2(d), comprises a geographical indication that identifies a place other than the origin of the goods under Section 2(a), is geographically deceptive under 2(a), and is geographically deceptively misdescriptive under Section 2(e)(3). Applicant admitted that "Napa" is a geographic indication for wine, but otherwise denied opposer's allegations.

Opposer argued in its brief that it had standing, claiming that it is a non-profit trade association promoting the interest of Napa Valley wineries and owner of a pending certification mark application for NAPA VALLEY for wine - but it failed to cite any evidence in support of those assertions. There was "no evidence of record that Opposer is a trade association, what its responsibilities are, who its members are or whether it certifies anything and if it does so, much less whether it owns the alleged certification mark NAPA VALLEY." Its alleged application to register was not of record, and anyway it did not plead ownership of that application. There was no evidence that opposer owns any mark.

Opposer's evidence consisted of certain sections of the Code of Federal Regulations referring to the Napa Valley viticultural area, and book excerpts referring to the Napa Valley. There was a passing book reference to the formation of the Napa Valley Vintners Association in 1943, but no evidence to establish opposer's current activities.

Applicant made no admissions that would establish opposer's standing.

Therefore the Board concluded that opposer failed to establish standing, and the opposition was dismissed.

Read comments and post your comment here.

TTABlog note:  So now what does the Association do?

Text Copyright John L. Welch 2014.

Tuesday, August 05, 2014

TTAB Dismisses ZILLOW Opposition to "LoanZilla" For Mortgage Brokerage Services

The Board dismissed a Section 2(d) opposition to registration of the mark LoanZilla for "mortgage brokerage," finding that the mark is not likely to cause confusion with the registered mark ZILLOW for a real estate information website and related services. Although the parties' services are commercially related, and although the customer classes and channels of trade overlap, the Board found the marks to be "extremely different in overall commercial impression," a difference that is "further emphasized" by the number and nature of marks incorporatinh the -ZILLA suffix in use by third parties." Zillow, Inc. v. Super T Financial Inc. DBA LoanZilla, Opposition No. 91203730 (July 22, 2014) [not precedential].

The marks: The Board perceptively recognized that the marks "are not identical," but they do share the letter string ZILL. Opposer feebly maintained that ZILL is the "most distinctive and memorable part of each mark," but the Board saw no reason to focus on ZILL as a separate element. To do so would be an "impermissible dissection of Applicant's mark."

Applicant Super T maintained that "Zilla" is a play on "Godzilla," and its logo resembles a lizard. It provided a Wikipedia entry for "-zilla," defining the term as "an English slang suffix, a back-formation derived from the English name of the Japanese movie monster Godzilla." Applicant also made of record evidence of third party use of "-zilla" formatives, as well as a number of third-party registrations of "-zilla" marks for a wide variety of goods and services. Although the registrations do not demonstrate use of the registered marks, "they do demonstrate that the suffix -ZILLA holds some special appeal for applicants."

Opposer Zillow argued that the -ZILLA evidence was irrelevant because "Godzilla" has nothing to do with mortgage brokerage services, and further because most of the evidence of third-party use was unrelated to mortgage brokerage or real estate. The Board agreed that this evidence does not show that the ZILLOW mark is weak, but it does show "the special meaning that, according to Applicant, the suffix -ZILLA has for trademark applicants."

Furthermore, the evidence of third-party use of -ZILLA marks (e.g., BUGZILLA, MOZILLA, SHOPZILLA, EVENTZILLA), although unrelated to real estate or mortgage services, suggests that "customers likely can distinguish between Opposer's mark and marks that include the suffix -ZILLA on the bases of other element in the marks. [But if they are not in relevant fields, who cares? - ed.].

The Services: Opposer Zillow's core service is the provision of a website of information related to real estate, searchable by address. One feature of the service is the provision of an estimated value for the particular parcel of real estate. Many customers have an interest in information about financing a home purchase, and Zillow provides information regarding loan rates as well as an online form for requesting a loan from participating lenders.

Zillow admitted that it does not provide mortgage brokerage services. However, for purposes of Section 2(d), services need not be similar or competitive; it is sufficient if they are related in some manner such that they would be encountered by the same persons in circumstances that could result in confusion as to source. Here, the parties' services are commercially related. Zillow provides some of the functions that customers would obtain as part of mortgage brokerage services, and one of its registrations covers "providing mortgage and home equity loan quotations to others." And its website includes advertisements for real estate professionals, including lenders and mortgage brokers.

There is a substantial overlap between the classes of customers, but the conditions of sale includes an element of care, which makes this du Pont factor lean slightly in favor of applicant.

Zillow claimed that its mark is famous, but its sales and advertising figures were not properly verified. Although the figures show substantial growth for its business, the numbers were not placed in meaningful context for comparison with similar businesses. Its other evidence of fame was unpersuasive, and so the Board found this factor to be neutral.

Zillow provides services in various fields, including finance, and this factor pointed in its favor. The absence of actual confusion was a neutral factor because there was no evidence of a meaningful opportunity for confusion to occur. Finally, although applicant admitted that it was aware of the ZILLOW mark when it adopted its mark, and had considered advertising on the ZILLOW website, that was not enough for the Board to conclude that applicant acted in bad faith.

Balancing the relevant du Pont factors, the Board found confusion unlikely and it dismissed the opposition.

Read comments and post your comment here.

TTABlog note:  This was a bit of a yawner.

Text Copyright John L. Welch 2014.