Precedential No. 27: TTAB Suspends LATEA Opposition In View of Arbitration Clause

The Board suspended this opposition proceeding in view of an LLC operating agreement that called for arbitration of any dispute between the members of the LLC arising out of or relating to the agreement. The particular dispute centered on the issue of ownership of the mark LATEA and whether Applicant TJ Food Service transferred its ownership of the mark to the LLC when it became a member thereof. Yufan Hu v. TJ Food Service, LLC, Opposition No. 91230600 (August 8, 2017) [precedential].

The Arbitration Clause: Opposer Hu filed a motion for summary judgment on the ground that the Board lacked jurisdiction in view of the arbitration clause. That clause stated that "Any dispute, claim, or controversy among the Members of the Company [the LLC] or between a Member and the Company arising out of or related to this agreement shall be settled by arbitration in Tippecanoe County, Indiana."

Section 2 of the Federal Arbitration Act (the "FAA") provides that an agreement to arbitrate "shall be valid, irrevocable, and enforceable ...." The Supreme Court has recognized that this statute "requires that we rigorously enforce agreements to arbitrate." "[A]ny doubts concerning the scope of arbitrable issues should be resolved in favor of arbitration."

The Board found that the arbitration clause here is broad. At issue was whether Applicant TJ contributed the LATEA mark to the LLC in exchange for an equity position in the company, or whether it contributed a mere nonexclusive license.

The Board concluded that, since applicant' contribution was made pursuant to the operating agreement - which authorized a member's contribution of any cash, property, labor, or services to obtain an equity position in the LLC - the nature of applicant's contribution "arguably falls within the purview of the arbitration clause." The agreement does not expressly exclude Lanham Act claims or any statutory claims. The Board therefore was not persuaded that the parties' trademark ownership dispute is excepted from the arbitration clause.

Arbitrability of Trademark Ownership: The next question for the Board was whether trademark ownership can be arbitrated. Administrative proceedings are not necessarily exempt from the FAA even when there is a federal statute enabling a federal agency to resolve the dispute. The focus is on the intent of Congress, in this case as expressed in the Lanham Act.

The Board noted that the Act provides the Board with authority to determine the right to register marks, and does not contain language expressly exempting such determinations from being decided by arbitration. See Trademark Act Sections 13, 14, 17, and 18.

The question presented in this case is whether Applicant transferred any ownership rights in the subject mark to WNH when it relied on the value of the mark as part of its capital contribution. Because one cannot register a mark that it does not own, the ownership issue is central to deciding the registrability of the mark in dispute. [citations omitted]. Accordingly, the issue of whether the WNH Operating Agreement is determinative of ownership rights in the mark is arbitrable.

Conclusion: The Board deemed it appropriate to honor the arbitration clause with regard to the dispute over trademark ownership (a question turning on the parties' intent). It therefore suspended the opposition proceeding for 60 days, with the proceeding to be resumed unless an arbitration has been commenced on the ownership issues. If arbitration occurs, the parties were required to report to the Board the decision of the arbitrator on the arbitrability and ownership issues so that the Board may decide how to proceed.

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TTABlog comment: On August 23, 2017, applicant notified the TTAB that it had commenced a civil action in Tippecanoe Superior Court No. 2 in Tippecanoe County, Indiana in July 2017 against opposer and two other defendants, seeking an order requiring the parties to arbitrate all claims, including the claim of ownership. Accordingly, on September 14, 2017, the Board suspended the opposition proceeding.

Text Copyright John L. Welch 2017.

TTAB Finds QLED Generic for ...... Guess What?

The Board affirmed a refusal to register QLED on the Supplemental Register, finding it to be generic for smartphones, computers, and related goods. However, the Board allowed applicant to delete those goods from the application so that registration will issue for the remaining goods (for example, software for mobile phones). In re LG Electronics, Inc., Serial No. 86472855 (September 13, 2015) [not precedential] (Opinion by Cindy B. Greenbaum).

The Board found the genus to be adequately described by the "disputed goods:" Mobile phones; Smart phones; Laptop computers; Computers; Tablet computers; Wearable computers; etc. The “relevant public” is limited to actual or potential purchasers of the identified goods. [Duh! - ed.]. Generally, an abbreviation, initialism or acronym is not generic unless the wording it stands for is “substantially synonymous” with the generic wording which it represents. 

Based on a number of Internet excerpts Examining Attorney Q Queen maintained that QLED is an acronym for and substantially synonymous with the generic term “quantum dot light emitting diode.” Applicant complained that some of the evidence is from industry publications and press releases and reported mere rumors of products that have not yet been released. The Board, however, found no problem with this forward-looking evidence. "Obviously, some members of the relevant consuming public would research the types of TVs, smartphones, etc. that currently are available, and the expected next generation of these items, and would encounter materials like those cited above, some of which are consumer-focused." The Board noted that "Sony is selling QLED smartphones, and companies such as Samsung, LG Display and QD Visions have been developing products with QLED displays for at least the last six or seven years."

Applicant also maintained that QLED “is not a designation for a key aspect for a designation of the goods.” The Board disagreed, pointing out that the bulk of the evidence uses QLED or "quantum dot light emitting diode" interchangeably to refer to a particular type of display technology, and as an alternative to LCD and OLED display technology, for TVs, computer screens, monitors, smartphones, and the other disputed goods, all of which have displays.

Therefore, the Board affirmed the refusal as to the "disputed goods," but allowed the application to proceed to registration on the Supplemental Register for the remaining goods:

Software for mobile phones, namely, software for wireless content delivery; Software for computers, namely, software for wireless content delivery; Computer application software, namely, software for wireless content delivery; Downloadable electronic publications in the nature of magazines in the field of information technology; Remote control apparatus for televisions; Wristbands adapted or shaped to contain or attach to handheld digital electronic media players; Computer software for wireless data communication for receiving, processing, transmitting and displaying information relating to fitness, body fat, body mass index; Software for television, namely, software for wireless content delivery; Digital Versatile Disc (DVD) players; Audio-Video receivers for home theaters in International Class 9.

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TTABlog comment: QED?

Text Copyright John L. Welch 2017.

TTAB Enters Judgment Summarily in #TIDALTUESDAY Opposition On Ground of Nonuse

The Board granted Opposer Tidal Music's motion for summary judgment, concluding that Applicant Rose Digital had failed to prove use of the applied-for mark #TIDALTUESDAY for advertising and promotional services at the time it filed the challenged application. Rose pointed to its promotion of "the coming of the '#TidalTuesday' product" and its active development of website and product presentations. Not good enough, said the Board. Tidal Music AS v. The Rose Digital Entertainment LLC, Opposition No. 91232127 (September 8, 2017) [not precedential].

In an application based on use in commerce under Section 1(a), the applicant must use the mark in commerce on or in connection with all the goods and services listed in the application as of the application filing date. If the applicant has not used the mark on any of the goods or services, then the application is void ab initio.

Applicant maintained that "The Rose Digital Entertainment has not started releasing original content under the #TidalTuesday mark," but is "promoting the coming of the '#TidalTuesday' product," and "actively developing website product presentations." It provided screenshots of its Twitter and Facebook pages," but the Facebook page showed no activity and the Twitter page displayed only several posts of the term "TIDALTUESDAY" and nothing more.

The Board observed that use of a service mark occurs when it is (1) used or displayed in the sale or advertising of services and (2) the services are rendered in commerce. "No matter how earnest, the mere preparation to use a mark in the rendering of services is insufficient."

Applicant failed to submit any evidence that would raise a factual dispute as to its lack of use of the mark. "Employment of a mark to promote a service not yet rendered is not use of a mark in commerce under the statute."

In particular, the forward-looking nature of Applicant’s statements, e.g. “planning,” “developing,” and “coming soon,” demonstrates that Applicant has yet to use the mark in connection with any services and is still planning and developing a strategy to use the mark. Indeed, Applicant’s concessions made in its answer and the corresponding statements made in its response to the present motion for summary judgment do not show any dispute whether Applicant has used the mark in commerce in connection with any of the services listed in the application.

The mere mention of a term on the Internet, without advertising and rendering of the services, does not constitute use of a service mark in commerce. The advertising must "relate to an existing service which has already been offered to the public."

And so the Board found that applicant had not used the applied-for mark as of its filing date, and it granted the motion for summary judgment.

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TTABlog comment: If the mark has been used on some of them, then the application is not totally void. See Grand Canyon West Ranch, LLC v. Hualapai Tribe, 78 USPQ2d 1696 (TTAB 2006),

Text Copyright John L. Welch 2017.

TTAB Test: Is FARM TO TABLE Merely Descriptive of Wines?

The USPTO refused to register the mark FARM TO TABLE, finding it merely descriptive of "wines" under Section 2(e)(1), and also concluding that it failed to function as a trademark under Sections 1, 2, and 45 of the Trademark Act. Applicant argued that the mark "cannot describe wine because 'fresh' wines available literally from farm to table would be unaged and undrinkable grape juice." How do you think this came out? In re Fowles Wine Pty Ltd., Serial No. 79157017 (September 15, 2017) [not precedential] (Opinion by Peter W. Cataldo).

The Examining Attorney submitted Internet web pages and articles from major newspapers, referencing the term "farm to table" in connection with wines, wine pairing, and wine and food events. Applicant Fowles provided a table listing 19 third-party registrations for FARM TO TABLE formative marks for food items and related services (but not including wine).

Failure to Function: “[N]ot every designation adopted with the intention that it performs a trademark function and even labeled as a trademark necessarily accomplishes that purpose…." The crucial question is whether consumers perceive the designation as a mark.

[T]he evidence excerpted above shows that FARM TO TABLE is commonly used in an informational manner in connection with local produce, meats, wines and events featuring these products that are prepared and served together.

Moreover, applicant's own use of the term at its website - displaying FOOD WINES – FARM TO TABLE in large letters above the wording "Farm to Table wines are bright, delicious, and made to match with fresh produce shared among good friends" - conveys that its wines are part of the trend toward locally sourced foods and wines rather than an indicator of source.

In sum, FOOD TO TABLE "functions solely to convey an informational message regarding Applicant’s wines, rather than identifying the source thereof."

Mere Descriptiveness: Based on the evidence discussed above, the Board found FOOD TO TABLE to be merely descriptive of wines because it describes a feature or characteristic thereof, namely that they are locally sourced. The Board rejected applicant's argument that FARM TO TABLE cannot describe wine because "fresh" wines would be unaged and undrinkable grape juice. "FARM TO TABLE wines are not necessarily freshly pressed and unaged, but rather made from grapes grown in the same area as the wineries at which they are pressed and aged, and often are suitable to be paired with local foods. misapprehends the meaning of FARM TO TABLE as applied to wines."

As to the third-party registrations cited by Applicant Fowles, none listed wines among the goods or services. In any event, the Board is not bound by the prior actions of examining attorneys involving different marks, different goods or services, and different evidentiary records.

Conclusion: And so the Board affirmed both refusals.

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TTABlog comment: How did you do?

Text Copyright John L. Welch 2017.

TTAB Denies Fraud Claim But Sustains SUNDICATORS Section 2(d) Opposition

The Board sustained this Section 2(d) opposition, finding applicant's mark SUNDICATORS likely to cause confusion with opposer's mark SUN/DICATORS, both for sun awareness products that measure UV radiation and alert the user to reapply sunscreen or retreat indoors in order to prevent overexposure. But the Board dismissed opposer's fraud claim due to lack of proof of applicant's intent to deceive the USPTO with its false statements regarding use of its mark. Pretty Pale, Inc. v. JADS Int’l, LLC, Opposition No. 91222470 (September 15, 2017) [not precedential] (Opinion by Angela Lykos).

Likelihood of Confusion: The Board had little difficulty finding the goods related and the marks confusingly similar. Applicant JADS asserted that Opposer Pretty Pale did not have bona fide use of its mark in commerce prior to its filing date. It argued that "Opposer had 'a registered domain name, a paucity of business cards, embryonic literature, and unmarked products in "swag bags,"' and that this does not constitute “evidence of proper marking of the product to qualify as trademark usage."

The Board pointed out, however, that "Priority can be shown in marks for goods given away as promotional items." Moreover, goods need not be sold "in order to come within the ambit of the statute." They can be given away. Opposer's testimony established that she gave away the products at events such as the Oscars, the Golden Globes and the Teen Choice Awards, and that the mark SUN/DICATORS appeared on the product or its packaging.

Fraud: "Fraud in procuring a trademark registration occurs when an applicant knowingly makes false, material representations of fact in connection with its application with intent to deceive the USPTO." See In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1941 (Fed. Cir. 2009). A party alleging fraud in the procurement of a registration bears the heavy burden of proving fraud with clear and convincing evidence. Bose, 91 USPQ2d at 1939 (quoting Smith Int’l, Inc. v. Olin Corp., 209 USPQ 1033, 1044 (TTAB 1981)).

Although Applicant JADS filed an amendment to allege use, it admitted in discovery that it had not "sold, offered for sale or otherwise distributed any products or services under or in connection" with its mark, and had not used its mark in interstate commerce." The Board found no question that applicant’s CEO/President, Mr. Levine, "made false statements in his signed declaration submitted with the AAU, and that such statements were material. Thus, the pivotal issue is whether Opposer has shown that Applicant had the requisite intent to deceive the USPTO."

JADS contended that through an “innocent mistake of what constituted legal trademark usage in commerce by [Applicant] and its original attorney, [A]pplicant submitted as a specimen of use a prototype package bearing the mark … [and] acting in good faith, did not intend to deceive the USPTO." It pointed out that opposer "failed to adduce any evidence of Applicant’s intent to deceive by taking the testimony deposition of Applicant’s President, Andrew Levine, who signed the AAU or Applicant’s former attorney."

The Board observed that the statements made by applicant in its answer and in its final brief cannot be considered as evidence on its behalf. On the other hand, Opposer Pretty Pale bore the burden of proof on the issue of fraud, and Applicant JADS "is not obligated to rebut allegations of fraudulent intent."

The Board concluded that the evidence was in sufficient to support the inference of an intent to deceive the USPTO. Although the Board may infer deceptive intent from an a party's testimony coupled with other factual findings - see Nationstar Mortg. LLC v. Ahmad, 112 USPQ2d 1361 (TTAB 2014) - here, there was no from Mr. Levine or anyone else associated with JADS. Nor were there any admissions in the record regarding intent.

Opposer misunderstands the critical significance of Mr. Levine’s testimony in establishing intent, given his role as the signatory of Applicant’s AAU. While intent to deceive can be inferred from indirect and circumstantial evidence, such evidence must still be clear and convincing, and inferences drawn from lesser evidence cannot satisfy the deceptive intent requirement. Bose, 91 USPQ2d 1941. Standing alone, Mr. Levine’s false representations fall short of qualifying as “clear and convincing” indirect or circumstantial evidence so as to justify an inference sufficient to satisfy the intent to deceive requirement. Similarly, we cannot draw the inference based on the filing of Applicant’s subsequent application the level of intent qualifying as fraud. “[A]bsent the requisite intent to mislead the PTO, even a material misrepresentation would not qualify as fraud under the Lanham Act warranting cancellation.” Bose, 91 USPQ2d at 1940 (citing King Auto., Inc. v. Speedy Muffler King, Inc., 667 F.2d 1008, 212 USPQ 801 (CCPA 1981)).

And so the Board dismissed opposer's fraud claim.

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TTABlog comment: Apparently fraud cannot be proven without testimony and/or admissions from the accused party. It's happened only once at the TTAB since Bose. See the Nationstar case cited above.

Text Copyright John L. Welch 2017.

TTAB Test: How Would You Decide These Three Recent Section 2(d) Appeals?

Here are three Section 2(d) appeals decided two days ago. Third-party use and registration evidence played a significant role in each case. At least one of the appeals resulted in reversal of the involved refusal(s), but not all three. Applying your jurisprudential skills and/or well-honed instincts, how do you think these came out? [Answers in first comment].


In re DCT LSPD, LLC, Serial No. 87019660 (September 13, 2017) [not precedential] (Opinion by Judge Marc A. Bergsman). [Section 2(d) refusal of LONE STAR PEDIATRIC DENTAL & BRACES and Design (shown below) for dental services, in view of the registered mark LONE STAR for "medical services"].

In re RSRK Inc, Serial No. 86806911 and 86806949 (September 13, 2017) [not precedential] (Opinion by Judge Thomas Shaw). [Section 2(d) refusals of ER SHOT THERAPY and EMERGENCY RELIEF SHOT THERAPY for "analgesics" [ER SHOT and EMERGENCY RELIEF SHOT found merely descriptive and disclaimable] in view of the registered mark FIRST AID SHOT THERAPY for "clinical shots which are clinical and medical beverages in nature to address acute and chronic conditions, namely, upset stomach, allergies, pain, migraine, headache, hangover; [and] therapeutics shots in the nature of beverages which are clinical and medicinal in nature to address acute and chronic conditions, namely, upset stomach, allergies, pain, migraine, headache, hangover ...." [SHOT disclaimed]].

In re Honestly Cranberry, LLC, Serial No. 86868625 (September 13, 2017) [not precedential] (Opinion by Judge Linda A. Kuczma). [Section 2(d) refusal to register HONESTLY CRANBERRY for dried cranberries [CRANBERRY disclaimed], in view of the registered mark HONESTLY BETTER, in the stylized form shown below, for retail grocery store services and processed food products, including "processed, frozen, preserved, canned, dried, and candied fruits" [BETTER disclaimed]].

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TTABlog comment: How did you do?

Text Copyright John L. Welch 2017.

TTAB Test: Is "GUILTY OF EVERYTHING GOE" Confusable With GOE SURF WEAR & Design for Clothing and Gear?

The USPTO refused registration of the mark GUILTY OF EVERYTHING GOE for backpacks, clothing, and skateboards, finding the mark likely to cause confusion with the registered mark shown below, for athletic apparel [SURF WEAR disclaimed]. Third-party registrations and usage convinced the Board that the goods are overlapping and/or related, and travel in the same channels of trade (retail websites devoted to clothing, athletic apparel, and spots equipment). But what about the marks? How do you think this came out. In re Mathis Ventures LLC, Serial No. 86849413 (September 8, 2017) [not precedential] (Opinion by Judge Peter W. Cataldo).

The Board observed that the word GOE in applicant's mark appears to be an acronym for GUILTY OF EVERYTHING, whereas GOE in the cited mark is the surname of the registration's owner. However, there is no evidence that consumers would perceive GOE as an acronym in applicant's mark, and no evidence that consumers would perceive GOE as a surname.

In view of registrant's disclaimer of SURF SHOP, the Board found the term GOE and the diamond design to be the dominant portion of the cited mark, and accordingly entitled to more weight in the Section 2(d) analysis. [Do consumers know SURF SHOP is disclaimed? - ed.]. In applicant's mark, however, GUILTY OF EVERYTHING appears to be arbitrary and distinctive, and is of at least equal prominence to the word GOE.

As a result, when the marks GUILTY OF EVERYTHING GOE and [the cited mark] presented in its very specific design format are viewed in their entireties, they are more dissimilar than similar in appearance and sound and convey different connotations, namely, that Applicant’s mark acknowledges and celebrates even disreputable actions while the registered mark indicates surf wear originating from an individual named Goe.

Although the goods are related and appear to travel in the same channels of trade, the marks are only "somewhat similar," and therefore the Board the confusion is not likely and it reversed the refusal.


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TTABlog comment: Let's GOE surfin' now, Everybody's learnin' how, Come on a safari with me ......

Text Copyright John L. Welch 2017.

TTAB Test: Is BRASSERIE KUNZ Primarily Merely a Surname?

The USPTO refused to register the mark BRASSERIE KUNZ for "restaurant services, namely, providing of food and beverages for consumption on and off the premises" [BRASSERIE disclaimed], finding it to be primarily merely a surname and therefore barred by Section 2(e)(4). Examining Attorney Ingrid C. Eulin submitted evidence that Applicant is affiliated with the well-known chef, Gray Kunz. Applicant argued that KUNZ has a non-surname meaning when translated from the German. How do you think this came out? In re Kunz Management LLC, Serial No. 86773122 [not precedential] (Opinion by Judge Lorelei Ritchie).

Gray Kunz
The USPTO's evidence indicated that about 7,500 people in the USA have the surname KUNZ. A search on Whitepages.com revealed 12,237 exact matches. Applicant did not claim that KUNZ is a rare surname, and the Board agreed.

Significantly, well-known chef Gray Kunz is affiliated with applicant. It appears that he formed Kunz Management LLC in 2006. Applicant did not deny the affiliation.

Applicant asserted that there is an ordinary meaning of Kunz - i.e., "Konrad" - and it submitted a link to a website. [Isn't Konrad a surname, too? - ed]. However, merely providing a website link is insufficient to make the material of record, and so the Board declined to consider whatever material may be found at the link.

Relying on the Board's Isabelle Fiore decision, applicant also submitted a German-English dictionary entry indicating that the phrase "Hinz and Kunz" is translated as "every Tom, Dick and Harry," and the term "von Hinz zu Kunz" is translated as "from pillar to post; from one place to another."  In Fiore, the mark FIORE was found not to be primarily a surname. There, the Board considered evidence that the mark has a known meaning in Italian - as "flower." Here, however, the translations offered by applicant are not direct translations of KUNZ or BRASSERIE KUNZ. There is no indication of what KUNZ means by itself. In short there was no evidence that consumers would understand KUNZ as anything other than primarily merely a surname.

Considering the mark as a whole, the Board noted that BRASSERIE is generic for, or at least merely descriptive of, restaurant services. Nothing about the combination of BRASSERIE and KUNZ changes the meaning of the component terms.

Finally, the examining attorney submitted evidence showing that it is common for restaurants to be named after the owner or chef. In fact, the addition of BRASSERIE may enhance the perception of KUNZ as a surname.

The Board therefore found that BRASSERIE KUNZ would be perceived as primarily merely a surname, and it affirmed the refusal.

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TTABlog comment: Under more recent case law, the fact that someone named KUNZ is associated with applicant pretty much sealed the deal, although this opinion does not emphasize that aspect. BTW: suppose KUNZ did have a direct translation into English. Wouldn't KUNZ still be perceived as a surname by the 98% of Americans who don't speak German?

Text Copyright John L. Welch 2017.

Precedential No. 26: Licensee Cannot Establish Priority Based On Licensor's Use

In a case of first impression, the TTAB ruled that a licensee cannot establish priority based on use of the subject mark by her licensor. Consequently, the Board dismissed Plaintiff' Julie A. Moreno's oppositions to registration of the marks shown immediately below, and denied her petition for cancellation of a registration for the word mark CASANOVA, all for boxing equipment. Moreno claimed prior rights in the mark CASANOVA for boxing gloves based on her licensor's use of the mark since 1972, well before Pro Boxing's priority dates. Julie A. Moreno v. Pro Boxing Supplies, Inc., Oppositions Nos. 91214580 and 91214877, Cancellation No. 92058878 (September 8, 2017) [precedential] (Opinion by Cindy B. Greenbaum)

Plaintiff Moreno is the exclusive US licensee of Deportes Casanova of Mexico City. Moreno alleged that Deportes owns a Mexican registration for a mark highly similar to the mark shown above right. She claimed priority for herself and for Deportes Casanova based on common law use of the latter's mark CASANOVA since at least 1972.

Moreno and Deportes Casanova entered into a license agreement on July 23, 2013, granting Moreno the exclusive right to use the mark CASANOVA and the design mark, and to protect the marks by "all appropriate legal means."

Standing: Pro Boxing challenged Moreno's standing to bring these proceedings, claiming that the license was invalid because it did not contain a control provision. The Board disagreed, finding quality control to be inherent in the agreement because Moreno was buying the licensed products from Deportes Casanova and simply re-selling them.

Priority: There was no question that the marks at issue are confusingly similar. The critical issue to be determined was priority. Defendant Pro Boxing relied on the filing dates of its applications in March 2013 as its priority dates. Because Moreno did not use the licensed mark before Pro Boxing's constructive first use dates, she based her priority claim on the common law use of the mark CASANOVA by non-party Deportes Casanova.

Although the Board has not previously addressed this precise issue, it has encountered cases in which a licensor and licensee were joint plaintiffs, and each was required to establish its own priority. However, whether a licensee can assert priority based on use by the licensor of the licensed mark, as Moreno claimed, was an issue of first impression for the Board.

Of course use of a mark by a licensee inures to the benefit of the licensor. Moreno provided no support for the converse principle: "that use of a mark by the controlling trademark owner inures to the benefit of the licensee," nor was the Board aware of any supporting authority. The Board found such a proposition troubling:

Allowing a licensee to claim priority for itself in an inter partes proceeding based on the licensor’s use of the mark (whether through the license or otherwise), could result in a licensee being able to claim de facto ownership of the licensed mark.

The license was clear, however, that Moreno obtained no ownership rights in the mark.

The Board found that Moreno, as a mere licensee, could not rely on her licensor's use to establish priority. Therefore she could not prevail on her Section 2(d) claim. And so the Board dismissed the oppositions and denied the petition for cancellation.

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TTABlog comment: The solution: have Deportes Casanova be the plaintiff in a new proceeding.

Text Copyright John L. Welch 2017.

Precedential No. 25: On Remand, TTAB Again Finds PRETZEL CRISPS Generic For Pretzel Crackers

In May 2015, the CAFC (opinion here) vacated the TTAB's decision (here) finding the term PRETZEL CRISPS to be generic for "pretzel crackers," and it remanded the case to the Board for application of the correct legal standard, namely the two-part test set forth in its Marvin Ginn decision. The CAFC concluded that the Board had failed to consider evidence of the relevant public's understanding of the term PRETZEL CRISPS as a whole. On remand, the TTAB has again ruled that PRETZEL CRISPS is generic for pretzel crackers. Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, Opposition No. 91195552 and Cancellation No. 92053001 (September 7, 2017) [precedential] (Opinion by Judge Lorelei Ritchie).

Frito-Lay petitioned for cancellation of Princeton Vanguard's Supplemental Registration for the mark PRETZEL CRISPS for "pretzel crackers" [PRETZEL disclaimed], and it opposed PV's application to register that same mark on the Principal Register. In February 2014, the TTAB ruled in favor of Frito-Lay. In reaching its decision, the Board gave controlling weight to dictionary definitions of the constituent words, evidence of use by the public, including use by the media and by third-parties in the food industry, and applicant Princeton Vanguard's own use of the term. The Board found that when "pretzel" and "crisps" are combined, no additional meaning results, and therefore the purported mark PRETZEL CRISPS may be analyzed via its constituent terms, in accordance with In re Gould, using "the ordinary grammatical construction."  [TTABlogged here].

The CAFC, however, concluded that the Board had failed to consider evidence of the relevant public's understanding of PRETZEL CRISPS in its entirety. [TTABlogged here]. The Board "stated in passing" that had it analyzed PRETZEL CRISPS as a phrase it would have reached the same conclusion because "the words strung together as a unified phrase also create a meaning that we find to be understood by the relevant public as generic for 'pretzel crackers.'" The court, however, found "no evidence that the Board conducted the necessary step of comparing its findings with respect to the individual words to the record evidence demonstrating the public's understanding of the combined term PRETZEL CRISPS."

Regardless of whether the mark is a compound term or a phrase, the applicable test is the same and the Board must consider the record evidence of the public’s understanding of the mark as a whole. Am. Fertility, 188 F.3d at 1348-49. Our decision in Gould merely provides additional assistance in assessing the genericness of compound terms where it can be shown that “the public understands the individual terms to be generic,” and the joining of those terms into one compound word provides no additional meaning. Id. It is not a short-cut and does not supplant the two-part test set forth in Marvin Ginn.

The CAFC therefore concluded that the Board applied the incorrect legal standard. On remand, the Board was directed to consider the evidence concerning the relevant public's understanding of the term PRETZEL CRISPS in its entirety. Furthermore, the Board must give "appropriate consideration to the proffered survey evidence."

Genericness: The test for genericness has two parts: (1) what is the genus of the goods; and (2) does the relevant public understand the designation at issue primarily to refer to that genus? There was no dispute that the category of goods here at issue is adequately defined by PV's identification of goods: "pretzel crackers." The relevant public comprises ordinary consumers who purchase and eat pretzel crackers. The focus, then, was on the relevant public's understanding of the term PRETZEL CRISPS.

The Board considered the dictionary definitions of "pretzel" and "crisp," the results of LexisNexis database searches of "pretzel crisps," media references, negative dictionary evidence, and consumer feedback.

The search results contained many references to the term "pretzel crisps" in lower case letters, while upper case letters were used for other terms that were "presumably considered by the authors to be brand names." On the whole, this evidence indicated "that consumers reading these articles may see Defendant as a potential source of 'pretzel crisps,' or 'pretzel crackers,' but would not view the applied-for mark “PRETZEL CRISPS” as a trademark identifying the source of the goods" Similarly, emails and product reviews used upper case letters for some words - often to indicate brands - but not for "pretzel crisps."

The Board found several declarations submitted by Defendant to be of limited probative value because the declarants were distributors of PV's products, not consumers. Moreover, although PV has used PRETZEL CRISPS as a source identifier, it has also used the term "pretzel crisps" to identify the type of goods, "which has contributed to and otherwise reflects a generic understanding of the term."

Each party submitted the results of a "Teflon" survey conducted to test how consumers perceive the term PRETZEL CRISPS. The Board, however, found these surveys to be irrelevant, because the Teflon survey format is not appropriate for a term that is not inherently distinctive. Because PRETZEL CRISPS is at least merely descriptive of the goods, the survey results merely reflect what the CCPA referred to as "de facto secondary meaning." See Weiss Noodle Co. 129 USPQ at 414.

Moreover, even if the survey results were relevant, they were not probative due to methodological flaws in the two surveys, and even if they were probative, the survey results overall supported a finding of genericness.

Considering all relevant evidence and arguments, the Board found that Frito-Lay had proven by a preponderance of the evidence that PRETZEL CRISPS is generic for "pretzel crackers."

Acquired Distinctiveness: For the sake of completeness, the Board also considered PV's claims that the term PRETZEL CRISPS had achieved acquired distinctiveness under Section 2(f). Frito-Lay established at least a prima facie case that PRETZEL CRISPS is highly descriptive of pretzel crackers. The burden shifted to PV to present evidence to overcome Frito-Lay's showing. Since the Board found the term “PRETZEL CRISPS”to be generic for “pretzel crackers,” it considered, for purposes of the alternative Section 2(f) analysis, that the term is "close to the genericness boundary on the continuum." Consequently, PV had a "heavy burden of showing acquired distinctiveness."

PV pointed to its extensive sales and advertising, unsolicited media coverage, and its survey results, but the Board found that evidence inadequate. A secondary meaning survey (the "Mantis survey") proffered by PV concluded that 38.7% of participants associated the term “PRETZEL CRISPS” with “only one company.” While the parties disagreed as to whether that fraction is sufficient to establish secondary meaning., the Board observed that "it has been stated that numbers in this range are 'marginal.'"

While this evidence regarding sales and advertising is impressive, it is significantly undercut by the evidence discussed previously that the relevant public and many survey respondents, including more than half the respondents to the Mantis survey, perceive the term “pretzel crisps” as referring to a product that may derive from multiple sources. Ultimately, the question is not the extent of advertising and promotion, but the success of it in establishing brand recognition.

The Board found that PV,s evidence of acquired distinctiveness was insufficient to establish acquired distinctiveness under Section 2(f).

Conclusion; The Board granted the petition for cancellation of PV's Supplemental Registration No. for PRETZEL CRISPS, and it sustained the opposition to registration. The Board also found, assuming arguendo that PRETZEL CRISPS is not generic,that the requirements for registration  under Section 2(f) were not satisfied.

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TTABlog comment: Compare the recent decision by the U.S. District Court for the Eastern District of Virginia, in which the court found persuasive a Teflon-type survey in ruling that BOOKING.COM is not generic for travel agency and hotel reservations services. [TTABlogged here]. Instead, the court deemed the term to be merely descriptive of the services, and then found that plaintiff had demonstrated secondary meaning as to hotel reservation services, but not as to travel agency services. If you were PV, would you seek review of the PRETZEL CRISPS decision via Section 1071(b) in a district court? or via 1071(a) at the CAFC?

Text Copyright John L. Welch 2017.