Tuesday, January 24, 2017

The Top Ten TTAB Decisions of 2016 [Part 2]

Here is the second half of the TTABlog's "top ten" list of 2016 TTAB decisions. Part 1 may be found here. If you would have selected other cases for the top ten, please say so in the comments.



Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC, 118 USPQ2d 1413 (TTAB 2016) [precedential]. [TTABlogged here]. ). The Board granted this petition for cancellation of a registration for the mark NOBLE HOUSE for furniture, ruling that Respondent Floorco had abandoned the mark. The Board held that use of a wholly-owned subsidiary’s registered mark by a parent entity does not inure to the benefit of the subsidiary when the parent controls the nature and quality of the goods. Respondent Floorco asserted that it had been marketing and advertising NOBLE HOUSE brand furniture as available for sale. However, it was not Floorco that was marketing and advertising the products, but its parent corporation, Furnco. Moreover, the latter controlled the nature and quality of the furniture that may have been sold. The Board noted that in most cases the affairs of a subsidiary are controlled by the parent, and so no license or other agreement is needed regarding a mark owned by the parent and used by a subsidiary. Here, however, Furnco chose its subsidiary, Floorco, to be the owner of the registration, but parent Furnco did not meet the definition of a related company under the Lanham Act – i.e., an entity whose use of the mark is controlled by the registrant with respect to the nature and quality of the goods. Therefore, as to the abandonment issue, the parent’s use of the mark cannot be deemed use of the mark by the subsidiary, and “cannot show that Respondent intended to resume use of the NOBLE HOUSE mark.”


Intex Recreation Corp. and Intex Marketing Ltd. v. The Coleman Company, Inc., 117 USPQ2d 1799 (TTAB 2016) [precedential]. [TTABlogged here]. The Board ordered Applicant Coleman to produce unredacted versions of the documents it had previously produced, rejecting Coleman’s argument that the redacted portions were irrelevant or contained confidential material. Coleman maintained that the redacted portions concerned product lines not at issue in this proceeding, and “highly proprietary” competitive information. The Board saw no compelling reason for Coleman not to disclose purportedly irrelevant information in a document that contains relevant information. Unilateral redaction would deprive the receiving party of the full context of the relevant information, fuel mistrust about the propriety of the redaction, and incentivize parties to hide as much as they dared to hide. It would increase the potential for discovery disputes, resulting in wasteful expenditure of time and resources, and would place “an unnecessary and substantial burden” on the Board in conducting in camera review of each disputed document. Coleman should have designated the disputed documents under the appropriate tier of confidentiality. If Coleman believed the standard order was inadequate, it should have sought modification of the order.


D.C. One Wholesaler, Inc. v. Jonathan E. Chien, 120 USPQ2d 1710 (TTAB 2016) [precedential].. [TTABlogged here]. The Board sustained an opposition to registration of the mark “I ♥ DC” in design form, for various clothing items, and ordered cancellation of a registration (on the Supplemental Register) for a slight variation of that mark, for backpacks, clothing, and stuffed toys, on the ground that the marks fail to function as trademarks. Plaintiff argued that “I ♥ DC” is a common slogan used in an informational sense, and that consumers are accustomed to seeing the phrase on goods from multiple sources. The evidence demonstrated that apparel bearing the phrase is available from many suppliers, as is other merchandise prominently displaying the phrase, such as mugs, teddy bears, aprons, etc. Plaintiff also showed that designs consisting of “I ♥” followed by other terms (RUGBY, KETCHUP, JESUS, etc.) are common in the souvenir industry. Defendant testified that he did not create the design and that the logo “has been out since the ‘60s for anyone to use.” The Board concluded that consumers purchase the product because of this ornamentation, which appears as informational matter not associated with a particular source. Because of the informational nature and the ubiquity of the phrase, it does not convey source even when used on a hangtag.



Daniel J. Quirk, Inc. v. Village Car Company, 120 USPQ2d 1146 (TTAB 2016) [precedential].
[TTABlogged here]. The Board dismissed a petition for cancellation of registrations for the marks QUIRK and QUIRK AUTO PARK for “automobile dealership” because petitioner failed to prove its claim of fraud on the USPTO. Petitioner asserted that respondent’s underlying applications were executed fraudulently because respondent (admittedly) knew of and failed to disclose petitioner’s allegedly prior rights in the marks QUIRK and QUIRK WORKS TO SAVE YOU MONEY for auto dealerships. However, petitioner failed to establish its prior rights, and that alone was fatal to its fraud claim. The Board nonetheless proceeded to consider the issue of fraudulent intent, concluding that petitioner failed to demonstrate that respondent intended to deceive the USPTO. As we all know, fraud must be proven “to the hilt” with clear and convincing evidence. Fraud will not lie against a party who holds an honest and good faith belief in its right to register a mark and who verifies the statutorily prescribed ownership statement, which is phrased in terms of subjective belief. There was nothing in the record to indicate that respondent’s belief that - because petitioner’s use was intrastate – it had prior rights in the mark, was not an honest belief.


In re Florists' Transworld Delivery, Inc., Serial No. 85164876 (May 11, 2016) [precedential]. [TTABlogged here]. The Board affirmed a refusal to register SAY IT YOUR WAY for “creating an on-line community for registered users ...,” finding that Applicant FTD failed to show use of the mark with the recited service. Reviewing FTD’s specimen of use, the Board ruled that FTD did not offer this social-networking service as a separable service to others, but rather as merely incidental to its primary services. The Board pointed to TMEP Section 1301.04(h)(iv)C), which cautioned examining attorneys to carefully examine webpages from social-networking websites to make sure that the mark in question is being used with the recited services. FTD argued that it had created its own virtual sub-community within Twitter, but the Board was unmoved. “Applicant has done nothing more than use the Twitter online community forum to engage in social-networking for its own benefit, and to advertise its online retail store services, which are rendered over its own corporate website ....” Moreover, to the extent that FTD provides information regarding flowers or conducts events to promote the sale of flowers, those activities did not appear to constitute a separate “registrable service,” but were also merely incidental to its primary services.



Read comments and post your comment here.

Text Copyright John L. Welch 2016-17.

Monday, January 23, 2017

The Top Ten TTAB Decisions of 2016 [Part 1]

The TTABlogger has once again chosen the ten TTAB decisions that he considers to be the most important and/or interesting from the previous calendar year (i.e., 2016). This is the first of two posts, the first five selections being set out below. Additional commentary on each case may be found at the linked TTABlog postings]. The cases are not necessarily listed in order of importance (whatever that means).


In re Morgan Brown, 119 USPQ2d 1350 (TTAB 2016) [precedential] and In re JJ206, LLC, dba JuJu Joints, 120 USPQ2d 1568 (TTAB 2016) [precedential]. [TTABlogged here and here]. This pair of decisions may prove to be the opening gambits in an evolving area of trademark law. In Brown, the Board snuffed out an application to register the mark HERBAL ACCESS for “retail store services featuring herbs” because the mark was being used in connection with the sale of a substance (marijuana) that is illegal under the federal Controlled Substances Act (CSA). The Board observed that, "to qualify for a federal service mark registration, the use of a mark in commerce must be 'lawful.' *** Thus, any goods or services for which the mark is used must not be illegal under federal law." In JJ206, the Board affirmed refusals to register POWERED BY JUJU and JUJU JOINTS for "smokeless marijuana or cannabis vaporizer apparatus," rejecting applicant's defense that the goods are sold only in states where marijuana is legal. Citing Brown the Board ruled that if the goods on which the mark is intended to be used are unlawful, there can be no bona fide intent to use the mark in lawful commerce. Applicant pointed to the Department of Justice's "Cole Memo," which sets out government priorities in the federal enforcement of the CSA against marijuana-related conduct, but the Board asserted that the Cole Memo "does not an cannot override the CSA."


In re Eximius Coffee, LLC, 120 USPQ 2d 1276 (TTAB 2016) [precedential]. [TTABlogged here]; In re Integrated Embedded, 120 USPQ2d 1504 (TTAB 2016) [precedential]. [TTABlogged here]; and In re Adlon Brand GmbH & Co. KG c/o FUNDUS FONDS-Verwaltungen GmbH;, 120 USPQ2d 1717 (TTAB 2016) [precedential]. [TTABlogged here]. In these three decisions, the Board charted a new course for Section 2(e)(4) surname refusals, focusing on consumer perception rather than applying a more mechanical approach under the traditional Benthin factors. Finding the marks ALDECOA and THE BARR GROUP to be primarily merely surnames, the Board emphasized the fact that persons with the surnames at issue were active in the involved businesses. In the third case, a divided Board panel affirmed a refusal of the mark ADLON for hospitality services. Although ADLON is a rare surname, the panel majority observed that it has no meaning or significance other than as a surname. Judge Quinn dissented, contending that ADLON is an extremely rare surname that consumers would perceive as a coined term having no meaning. Recently, retiring Judge Seeherman suggested a different approach in her concurring opinion in In re Bonhams & Butterfields Auctioneers Corp., Serial Nos. 85443480 and 85443485 (December 29, 2016) [not precedential], where she urged that the degree of rareness of the surname should be the first consideration in the Section 2(e)(4) analysis. [TTABlogged here].


In re Hodgdon Powder Company, Inc., 119 USPQ2d 1254 (TTAB 2016) [precedential]. [TTABlogged here]. In a rare “color mark” decision, the Board reversed a refusal to register a mark comprising the color “white” for “preformed gunpowder charges for muzzleloading firearms,” finding that Applicant Hodgdon Powder had proven acquired distinctiveness under Section 2(f). Of course, under Wal-Mart and Qualitex, single color marks are never inherently distinctive. Hodgdon stated that the color white for its gunpowder served no purpose other than to identify Hodgdon’s products, that the color white is not a natural by-product of the manufacturing process, and that no one else in the industry uses the color white for gunpowder. The Board concluded that the color white “is an anomaly contrary to consumers' expectations regarding the appearance of the product.” Hodgdon filed a declaration attesting to substantially exclusive and continuous use of the color white for at least the five years preceding the filing date of its application. Its advertising stated that the products, sold under the mark WHITE HOTS, is “The Only White Gunpowder.” The Board found Hodgdon’s advertising to be “effective ‘look for’ advertising.” Reviewing the totality of the evidence, the Board concluded that the color white for Hodgdon’s products had acquired distinctiveness.


In re Loggerhead Tools, LLC, 119 USPQ2d 1429 (TTAB 2016) [precedential]. [TTABlogged here]. The Board affirmed a refusal to register a motion mark “depicting the product configuration of a hand tool in which six rectangular-shaped jaw-like elements of the circular head of a hand tool radially move in and out,” for “hand tools, namely, gripping tools in the nature of wrenches and wire crimpers for sale through mass merchandisers to retail consumers,” on the ground of Section 2(e)(5) functionality. The Supreme Court has stated that a product feature is functional, and thus cannot serve as a trademark, if “it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” See TrafFix and Inwood. Treating the mark like a product configuration mark, the Board applied the ever-popular four-part test of Morton-Norwich. Reviewing Loggerhead’s utility patent for an “Adjustable Gripping Tool” and its design patent for a “Hydrant Tool,” the Board found that the design patent did not cover the motion described in the trademark application and so did not overcome the “strong conclusion” that the utility patent’s disclosure of the utilitarian advantages of the proposed mark indicated functionality. The USPTO pointed to numerous examples of advertising touting the utilitarian advantages of the tool. The Board found Loggerhead’s evidence of alternative designs unpersuasive, and a conclusory statement by its president that its device “was not the most cost-effective combination among the various alternatives available” to be unavailing. Concluding that the mark affects the quality of the tool, the Board affirmed the refusal.


In re Bay State Brewing Company, Inc., 117 USPQ2d 1958 (TTAB 2016) [precedential]. [TTABlogged here]. Although consent agreements are frequently entitled to great weight in its du Pont analyses, the Board was unmoved by such an agreement in its affirmance of a Section 2(d) refusal of the mark TIME TRAVELER BLONDE for “beer” (BLONDE disclaimed), in view of the registered mark TIME TRAVELER for “beer, ale and lager.” The Board found that the agreement between applicant and registrant “does not comprise the type of agreement that is properly designed to avoid confusion and does not fully contemplate all reasonable circumstances in which the marks may be used by consumers calling for the goods.” The agreement required that each party use its mark in connection with its house mark, that applicant use TIME TRAVELER or the word TRAVELER only in the mark TIME TRAVELER BLONDE, that the word BLONDE be displayed in at least equal prominence with TIME TRAVELER, and that each party use a trade dress not confusingly similar to the trade dress of the other. Particularly troublesome was the “Geographical Limitation” provision, stating that applicant will not use its applied-for mark “outside of New England and the State of New York,” while registrant’s use was not geographically limited.


Read comments and post your comment here.

Text Copyright John L. Welch 2016-17.

Friday, January 20, 2017

TTAB Test: Is "DEUTSCHER FUSSBALL-BUND" Merely Descriptive of Clothing and Soccer Gear?

The USPTO refused registration of the mark shown below, for varous clothing items and for soccer gear because applicant refused to disclaim the term DEUTSCHER FUSSBALL-BUND (translated as GERMAN SOCCER FEDERATION). Applicant did disclaim that phrase for soccer-related services, but it argued that the third-party registration evidence supported registration. In re Deutscher Fußball-Bund (DFB) e.V., Serial No. 79144840 (January 18, 2017) [not precedential].


Applicant is the governing body of football (soccer) in Germany, and is in charge of the league system and the national teams. Germany's national teams have been quite successful, including wins at the World Cup in 1954, 1974, 1990, and 2014. [Some say that international football is a simple game: you run around for 90 minutes and then the Germans win!]. The subject mark is displayed along with applicant's goods, and "perhaps on the goods themselves."


Examining Attorney Matthew J. McDowell based the disclaimer requirement on the finding that DEUTSCHER FUSSBALL-BUND describes not the goods themselves, but the source of the goods. He relied on a now-cancelled registration owned by applicant for a different logo for the same or similar goods, in which applicant disclaimed DEUTSCHER FUSSBALL-BUND. [Was the disclaimer voluntary or required? - ed.]. He also submitted a number of third-party registrations in which similar terms were disclaimed for like goods: e.g., MAJOR LEAGUE SOCCER, INTERNATIONAL KENDO FEDERATION, INTERNATIONAL BOBSLEIGH & SKELETON FEDERATION, KUNG FUT KUNG FU FEDERATION, THE SHUFFLEBOARD FEDERATION, ATHLETIC ASSOCIATION, BASKETBALL ASSOCIATION.

Applicant seized on a registration owned by the Mexican Football Federation in which the term FEDERACION MEXICANA DE FUTBOL ASSOC. was not disclaimed, applicant maintaining that this was the most pertinent or analogous third-party registration.

The Board found that the prior disclaimer of DEUTSCHER FUSSBALL-BUND in applicant's now-expired registration, and its disclaimer as to the services here, constituted a concession that the term is merely descriptive of at least some of the goods. [What if the disclaimer was voluntarily and unnecessarily supplied by applicant in the earlier registration? - ed.].

Furthermore the overwhelming majority of the third-party registrations include disclaimers or 2(f) claims for terms like the one at issue here. Even if the Board agreed that the Mexican Federation registration was the most analogous, it was only one of 17 registrations cited by the examining attorney.

While Applicant has established that the Office has not required disclaimers or Section 2(f) showings for analogous terms in every single case, the record reveals that at the very least the Office has been relatively consistent in treating terms such as GERMAN SOCCER FEDERATION as merely descriptive of Applicant’s goods or analogous goods.

The Board's decision in In re Major League Umpires, 60 USPQ2d 1059 (TTAB 2001), supported the refusal to register. "It is well-established that a term which describes the provider of goods or services is also merely descriptive of those goods and services.... Certainly, ‘doctor’s diet’ for a diet plan would be understood by consumers as describing a diet designed or provided by a doctor, even though ‘doctor’ does not describe the qualities or mechanics (e.g., low fat, low carbohydrate) of the diet plan." Id. at 1060.

In Major League Umpires, the mark MAJOR LEAGUE UMPIRE conveyed the information that the clothing and protective equipment was designed by major league umpires. Here, the term DEUTSCHER FUSSBALL-BUND indicates that applicant, or a related company or individual, designed applicant' goods, and that the soccer-related goods are the same as, or at least similar to, those used by the German National team.

The Board therefore affirmed the disclaimer requirement.

Read comments and post your comment here.

TTABlog comment: If there is and can be only one German Soccer Foundation, is DEUTSCHER FUSSBALL-BUND merely descriptive of the source of the goods, or does it also serve as a source indicator? There can be more than one sets of major league umpires selling clothing and umpiring gear, and each set should be able to use the term MAJOR LEAGUE UMPIRE.

Text Copyright John L. Welch 2017.

Thursday, January 19, 2017

Fame of adidas 3-Stripes Mark Yields Section 2(d) Summary Judgment

The Board entered judgment summarily in this opposition to registration of the mark shown below left, for "Athletic footwear; Bowling shoes; Footwear; Footwear for track and field athletics; Golf shoes; Headwear; Jackets; Pants; Running shoes; Shirts." The Board found confusion likely with the registered mark shown below right, for "footwear." The fame of the adidas 3-stripes mark, acknowledged by applicant, was a key to victory. In other words, 3-stripes and you're out! adidas AG and adidas America, Inc. v. Etonic Holdings, LLC, 121 USPQ2d 1188 (TTAB December 22, 2016) [not precedential].



Opposers relied on several registrations as well as on common law rights, but the Board focused on the registered mark shown above, which it found to be the closest of the registered marks. Standing and priority were not in issue, nor was there any dispute that the involved goods are in part identical. The Board must presume that these identical goods are marketed in the same channels of trade to the same classes of consumers. The applicant and registration have no limitations as to cost of the goods, and so they include relatively inexpensive footwear bought on impulse.

As we know, fame plays "a dominant role" in the du Pont analysis. "A famous mark has extensive public recognition and renown and enjoys a broad scope of protection or exclusivity of use."

The evidence established that the 3-stripes mark has been in use on footwear since 1952, that products bearing the mark are sold in more than 300 retailers, that opposers sold billions of dollars worth of footwear in the period 2006-2013, the vast majority of which bore the 3-stripes mark. Advertising expenditures have been very substantial.

Opposers sponsor various sporting events, including the World Cup, and the Boston Marathon. They outfit the NBA as well as various college sports teams. Such stars as Justin Bieber, Kay Perry, and David Beckham have been featured in advertising. The mark has been noted in media coverage and is co-branded with other high profile brands. Opposers have vigorously enforced their rights in the mark.

The Board therefore found no genuine dispute that the 3-stripes mark is famous for opposer's footwear and is entitled to a broad scope of protection.

As to the marks, the Board noted that applicant's mark may appear anywhere on its footwear, including the sides thereof. The three stripes in applicant's mark may be displayed at the same direction and angle as the adidas mark. Because two of the stripes in applicant's mark are not connected to the perpendicular element, "the overall impression of Applicant's mark is one of three stripes, rather than the letter 'E.' The perpendicular element "does not distinguish the parties' respective marks in a significant manner."

The Board found no genuine dispute that the overall commercial impressions created by the marks are highly similar.

The Board found that the relevant du Pont factors favor opposers, and no genuine dispute of material fact remained for trial. Therefore it granted opposers' motion for summary judgment under Section 2(d). The Board declined to reach opposers' dilution claim, lack of bona fide intent, and contract claims.

Read comments and post your comment here.

TTABlog comment: If the goods are in part identical, what's the need for a dilution claim? The test for similarity of the marks is the same under dilution and Section 2(d) anyway.

Text Copyright John L. Welch 2017.

Wednesday, January 18, 2017

TTAB Test: Is BEACH HUGGY for Pillows Confusable With HUGGY PETS for Decorative Pillowcases?

The USPTO refused registration of the mark BEACH HUGGY for "pillows," finding the mark likely to cause confusion with the registered mark HUGGY PETS for "decorative pillowcases for children." The examining attorney also required disclaimer of the word "BEACH." How do you think this appeal came out? In re Comfort Revolution, LLC, Serial No. 86564232 (January 13, 2017) [not precedential].


Disclaimer requirement: The evidence showed that applicant's goods are pillows for use at the beach. The Board rejected applicant's nebulous contention that the word BEACH merely conveys a level of comfort and relaxation that may be attained at the beach, and it found the disclaimer requirement appropriate.

Likelihood of confusion The Board found the involved goods to be "related on their face" as complementary products, confirmed by third-party registration evidence and third-party websites where pillows and pillowcases are offered for sale under the same trademark. The channels of trade include the same stores, both online and brick and mortar. Applicant's goods, which are broadly identified, encompass pillows for children. In any case, adults are ultimately the consumers for pillows marketed to appeal to children.

As to the marks, the words BEACH and PETS are conceptually weaker than the word HUGGY because each of those two words describes or suggests the purpose or a feature of the goods.


Applicant argued that the differences in the wording and the placement of the words suffice to distinguish the marks, but the Board was not persuaded in view of the dominance of the word HUGGY.

Applicant’s mark gives the commercial impression of a pillow that is useful for hugging at the beach, while the mark in the cited registration conveys a huggable pet in the form of a stuffed pillowcase. Consumers are thus drawn to the "huggable" element of the respective pillows/pillowcases.

Applicant's use of the word HUGGY could lead consumers to believe that the registrant has expanded its product line to include different themes and uses. Viewing the marks in their entireties, the Board found that the similarities outweigh the differences.

The Board therefore concluded that confusion is likely, and it affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: I would have reversed the 2(d) refusal. Isn't the word "huggy" suggestive and weak for a pillow?

Text Copyright John L. Welch 2017.

Tuesday, January 17, 2017

Last Call for Free Webinar: A Guide to TTAB Practice for Foreign Trademark Owners - January 19th, 10-11 AM EST

Yours truly, The TTABlogger, will present a webinar entitled "Friendly Shores: A Guide to TTAB Practice for Foreign Trademark Owners," on Thursday, January 19th from 10 to 11 AM EST, sponsored by Wolf, Greenfield & Sacks, P.C. "Admission" is free. Register here.


The webcast will emanate from the Federal Reserve Building in beautiful downtown Boston. Among the topics to be covered are the following:

  • The requirement of “use” in U.S. Trademark law.
  • Vulnerability of U.S. registration based on foreign rights
  • Ex parte appeals before the TTAB
  • TTAB jurisdiction in inter partes proceedings
  • The four phases of oppositions and cancellations
  • Court review of TTAB decisions

If you have questions, send them to me at jwelch at wolfgreenfield dot com.
.

TTAB Orders Cancellation of PORTÓN Registration, Confusable with PATRON

The TTAB sustained a petition for cancellation of the mark PORTÓN for "Distilled spirits; brandy; pisco," finding the mark likely to cause confusion with the registered mark PATRON for tequila and distilled spirits. The Board found that "a substantial number of non-Spanish speakers will perceive both terms, in the context of the goods that include tequila and pisco, as Spanish words, and any recognition of the English word 'patron' will not sufficiently distinguish the marks." Patron Spirits International AG v. Pisco Porton, LLC, Cancellation No. 92059527 (January 4, 2016).


The involved goods are legally identical and presumably sold through the same channels of trade to the same classes of consumers. As to conditions of purchase, since there are no pertinent limitations in the identifications of goods, the Board must consider all purchasers, even the less discerning.


As to the marks, the similarities in structure and spelling create similarity in sound. The aural similarity "is significant because both parties’ beverages are sold in the sometimes noisy atmosphere of a bar or crowded restaurant."

As to connotation, Petitioner argued that to the vast majority of Americans, the marks would have no meaning “other than as a trademark with a Spanish-language overtone” and “will leave identical commercial impressions.” Respondent asserted that Spanish-speaking customers would recognize the differences in meaning between “patron” (customer or guess) and “portόn” (gate), and others would perceive “portόn” “as a foreign looking and foreign sounding word but would not perceive it in a manner similar to how they would perceive the ordinary English word ‘patron.’” Petitioner replied that in the context of tequila, “patron” would be perceived as a Spanish word.

The Board agreed with petitioner. It found that “a substantial number of non-Spanish speakers will perceive both terms, in the context of the goods that include tequila and pisco, as Spanish words, and any recognition of the English word “patron” will not sufficiently distinguish the marks.”

The Board concluded that marks are similar in appearance, sound, meaning and overall commercial impression, and that this similarity, where the goods are legally identical, outweighs the dissimilarities.

The Board did not accept petitioner’s claim of fame but, based on media articles referring to PATRON tequila, it did find that PATRON has commercial strength for tequila and is entitled to a “broader scope of protection.”

Balancing the relevant du Pont factors, the Board found confusion likely and it granted the petition to cancel.

Read comments and post your comment here.

TTABlog comment: What if the registration had been limited to distilled spirits sold in quiet bars and restaurants?

Text Copyright John L. Welch 2017.

Friday, January 13, 2017

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

Supposedly one can predict the outcome of a Section 2(d) case 95% of the time just by looking at the marks and the goods. Here are four (IV) recent Section 2(d) appeals. Which one resulted in a reversal? [Answer will be found in first comment].


In re SBE Licensing, LLC, Serial No. 86135841 (January 5, 2017) [not precedential]. [Section 2(d) refusal of THE PERQ and Design (below left) for "restaurant, café, coffee, tea, and juice bar services," in view of the registered mark PERQS, in standard character and design form (below right), for "coffee supply services for offices"].


In re MT Enterprises LLC, Serial No. 86420598 (January 6, 2017) [not precedential]. [Section 2(d) refusal to register (on the Supplemental Register) the mark The No Pull Harness & Leash in One, in standard character form, for "Animal harnesses for dogs; Animal leashes; Dog leashes; Leashes for animals; Pet products, namely, pet restraining devices consisting of leashes, collars, harnesses, restraining straps, and leashes with locking devices" [HARNESS & LEASH disclaimed], in view of the registered mark NO-PULL for "halters for domesticated animals”].


In re Clipper City Brewing Co., LP, Serial No. 86353682 (January 10, 2017) [not precedential]. [Section 2(d) refusal of BLACKBEARD’S BREAKFAST for "beverages, namely, beers, ales, and malt liquors," in view of the registered mark shown below, for "beers" ["Ale", "Virgin Islands Ale Co.", "St. Thomas", "Tortolas", "St. John", "St. Croix" and "Caribbean Sea" disclaimed.].


In re Eyefluence, Inc., Serial No. 86249068 (January 10, 2017) [not precedential]. [Section 2(d) refusal of EYEOS for "Computer hardware and software for providing a user interface involving eye tracking and/or eye movement for wearable devices," in view of the identical mark registered for various eyewear products, including eyeglasses, sunglasses, and frames].


Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2017.

Thursday, January 12, 2017

Current Roster of TTAB Administrative Trademark Judges

With the appointment of Robert H. Coggins to the Trademark Trial and Appeal Board and the retirement of Judge Ellen J. Seeherman, the Board’s membership remains at twenty-six (26) Administrative Trademark Judges. The current roster is set forth below, beginning with Chief Judge Gerard F. Rogers and Deputy Chief Judge Susan M. Richey, and then proceeding alphabetically.


Rogers, Gerard F. (Chief Judge): Appointed to TTAB in 1999; Prior Professional Experience: Trademark Examining Attorney; Assistant to the Assistant Commissioner for Trademarks; TTAB Staff Attorney; Education: B.A., University of Massachusetts Amherst; J.D. magna cum laude, New England School of Law.

Richey, Susan M. (Deputy Chief Judge): Appointed to TTAB in 2014; Prior Professional Experience: Professor and Associate Dean, Univ. of New Hampshire School of Law, 1996-2014; Private practice (Los Angeles, California, 1983-1996); Education: B.A., University of Baltimore; B.S., College of William and Mary; J.D., University of Maryland.

Adlin, Michael B.: Appointed to TTAB in 2012; Prior Professional Experience: TTAB Interlocutory Attorney; USPTO Office of External Affairs; Private Practice; Education: B.A., Duke University; J.D., Boston University School of Law.

Bergsman, Marc A.: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; Trademark Managing Attorney; TTAB Interlocutory Attorney; Private Practice (Washington, D.C.); Education: B.A., Miami University of Ohio; J.D., Cleveland Marshall College of Law, Cleveland State University.

Cataldo, Peter W.: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Canisius College; J.D., Albany Law School.

Coggins, Robert H.: Appointed to TTAB in 2017: Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.S., Davidson College; J.D., Wake Forest University School of Law.

Goodman, Cheryl S.: Appointed to TTAB in 2014: Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., University of Illinois; J.D., Florida State College of Law.

Gorowitz, Francie R.: Appointed to TTAB in 2012; Prior Professional Experience: Private Practice (Los Angeles, California); Trademark Examining Attorney; Education: B.A., State University of New York at Cortland; J.D., Albany Law School.

Greenbaum, Cindy B.: Appointed to TTAB in 2012; Prior Professional Experience: Private Practice (New York and Washington, D.C.); Trademark Examining Attorney; TTAB Interlocutory Attorney; TTAB Managing Interlocutory Attorney (2006-2011); Education: Wharton School, University of Pennsylvania; J.D., New York University School of Law.

Heasley, David K.: Appointed to TTAB in 2015; Prior Professional Experience: Private Practice (Washington, D.C.); Education: B.A., The Johns Hopkins University: J.D., University of Maryland School of Law.

Hightower, Susan J.: Appointed to TTAB in 2012; Prior Professional Experience: Private Practice (Austin, Texas); Education: B.A., Austin College; M.A., University of Texas; J.D., Stanford Law School.

Kuczma, Linda A.: Appointed to TTAB in 2011; Prior Professional Experience: Private Practice (Chicago, Illinois); Education: B.S., St. Mary's University; J.D., Loyola University Chicago School of Law.

Kuhlke, Karen: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice (Washington, D.C.); Education: B.A., University of Kansas; M.A., Columbia University; J.D., Georgetown University.

Larkin, Christopher: Appointed to TTAB in 2016; Prior Professional Experience: Private practice (Los Angeles, CA; New York, NY); Education: B.A., Stanford University: J.D., Columbia Law School.

Lykos, Angela: Appointed to TTAB in 2010; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice; Education: B.A., M.A., The Johns Hopkins University; J.D., Duke University Law School.

Lynch, Cynthia C.: Appointed to TTAB in 2015: Prior Professional Experience: Private Practice; Attorney-Advisor at the International Trade Commission; USPTO Assistant Solicitor: USPTO Administrator for Trademark Policy and Procedure; Education: B.A., University of North Carolina; J.D., University of Virginia School of Law.

Masiello, Anthony R.: Appointed to TTAB in 2012; Prior Professional Experience: Trademark Examining Attorney; Private Practice (Boston, New York, and Washington, D.C.); Education: Harvard College; J.D., Harvard Law School.

Mermelstein, David: Appointed to TTAB in 2006: Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; TTAB Supervisory Interlocutory Attorney; Education: B.A., New College, Hofstra University; J.D., American University.

Pologeorgis, George C: Appointed to the TTAB in 2015; Prior Professional Experience: TTAB Interlocutory Attorney; TTAB Attorney in the Office of Trademark Quality Review and Training; Trademark Examining Attorney; Private Practice; Education: B.A. University of Pennsylvania; J.D., George Washington University National Law Center.

Quinn, T. Jeffrey: Appointed to TTAB in 1988; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Tulane University; J.D., Tulane University School of Law.

Ritchie, Lorelei: Appointed to TTAB in 2008; Prior Professional Experience: Private Practice; Arbitrator and judge pro tem, Orange and Los Angeles Counties, California; Intellectual Property Manager, UCLA; Adjunct Professor of Law, Loyola Law School, Los Angeles; Assistant Professor, Florida State University School of Law; Education: A.B., Stanford University; J.D., Columbia University.

Shaw, Thomas: Appointed to TTAB in 2011; Prior Professional Experience: Associate Solicitor at the USPTO; Managing Attorney; Senior Attorney; Trademark Examining Attorney; Education: B.A., George Washington University; J.D., University of Miami School of Law.

Taylor, Jyll: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., University of North Carolina at Chapel Hill; J.D., Howard University School of Law.

Wellington, Thomas W.: Appointed to TTAB in 2007; Prior Professional Experience: TTAB Interlocutory Attorney; Trademark Examining Attorney; Private Practice; Education: B.A., University of Maryland at College Park; J.D., American University Washington College of Law.

Wolfson, Frances: Appointed to TTAB in 2010; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice; Education: B.A., U.C. Santa Barbara; J.D., U.C.L.A.

Zervas, Albert: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice (New York and Washington, D.C.); Education: B.A. and J.D., University of Virginia.

Text Copyright John L. Welch 2017.

Robert H. Coggins Appointed As TTAB Administrative Trademark Judge; Ellen J. Seeherman Retires

Robert H. Coggins has been appointed to the position of Administrative Trademark Judge at the Trademark Trial and Appeal Board. Judge Ellen J. Seeherman retired from government service in December 2016. With the appointment of Mr. Coggins and the retirement of Judge Seeherman, the number of TTAB judges remains at 26 (including the Chief Judge and Deputy Chief Judge).


Mr. Coggins served as an Interlocutory Attorney at the TTAB for more than ten years, prior to which he served for eight years as an Attorney-Advisor for the USPTO’s Trademark Examining Operation. During his tenure as an examining attorney, Mr. Coggins completed a three-month career development detail at the TTAB, and a six-month work detail in Patent Technology Center 2100 assisting in the review of international patent applications.

Mr. Coggins earned a Bachelor of Science degree in Biology from Davidson College and a Juris Doctor degree from Wake Forest University School of Law.

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Text Copyright John L. Welch 2017.

Wednesday, January 11, 2017

TTAB Test: Which Of These Three Mere Descriptiveness Refusals Was Reversed?

By my recent estimation, somewhere around 90% of all Section 2(e)(1) mere descriptiveness refusals that reached the TTAB in 2016 were affirmed on appeal. Well, here are three appeals that were decided within the past month. One refusal was reversed. Which one, pray tell? [Answer will be found in first comment].


In re GMR, LLC, Serial No. 86338948 (January 9, 2017) [not precedential]. [Refusal of BLACKJACK CHAT for "Computer game software; computer game programs; electronic game programs and for "Etertainment services, namely, providing online computer and electronic games through a social networking website."


In re Panasonic Avionics Corp., Serial No. 86499954 (January 5, 2017) [not precedential]. [Refusal of FLIGHTLINK for "Meteorological forecasting; providing meteorological information; providing weatherinformation; weather forecasting; weather information services; weather reporting"].


In re Watered Up, LLC, Serial Nos. 86310513; 86310537; 86310550 (December 30, 2016) [not precedential]. [Refusal of AQUA CRISPS, in standard character and design forms, "for tapioca-based snack foods; tapioca chips"].


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TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.

Tuesday, January 10, 2017

In 2016, How Often Did the TTAB Affirm Section 2(d) Refusals? 2(e)(1) Mere Descriptiveness Refusals?

I reviewed the TTAB's FOIA page in an attempt to determine, or at least estimate, the percentage of Section 2(d) likelihood-of-confusion refusals and Section 2(e)(1) mere descriptiveness refusals, that were affirmed/reversed by the Board during the calendar year 2016. The highly unscientific results are set out below.


Section 2(d): I counted 249 Section 2(d) refusals, of which 228 were affirmed and 21 reversed. That's an affirmance rate of about 91.5%. [A high water mark for the last few years].

Four of the opinions were deemed precedential, all affirmances: TIME TRAVELER BLONDE; JAWS; HOUSEBOAT BLOB; and MT. RAINIER Logo;

NB: Some cases involved an applied-for mark in standard character and stylized or design form, and I counted that situation as one refusal.

Section 2(e)(1) mere descriptiveness: Of the 91 Section 2(e)(1) mere descriptiveness refusals, 82 were affirmed and 9 reversed, for an affirmance rate of approximately 90%, again on the upper end of the spectrum for recent years.

Two of the opinions were deemed precedential, both affirmances: IMÁGENES ESCONDIDAS and HOUSEBOAT BLOB.

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Text Copyright John L. Welch 2017.