CAFC Vacates and Remands: TTAB Applied Wrong Test in Finding ZERO Not Generic for Soft Drinks

The CAFC vacated the TTAB's decision of May 23, 2016 [TTABlogged here], in which the Board found that opposers failed to prove that the term ZERO is generic for soft drinks and sports drinks. The Board also found that Applicant Coca-Cola had established acquired distinctiveness in the term ZERO for soft drinks. The appellate court, however, ruled that the Board "erred in its legal framing" of the genericness issue and erred in failing to assess the level of descriptiveness of the term ZERO. Royal Crown Company, Inc. and Dr. Pepper/Seven Up, Inc. v. The Coca-Cola Company, Appeal No. 2016-2375 (June 20, 2018) [precedential].

Opposers asserted that ZERO is either generic for, or merely descriptive of, applicant's soft drinks and sports drinks, and therefore that ZERO must be  disclaimed in the applied-for marks (including, for example, COCA-COLA ZERO).

Genericness: The court ruled that the Board "asked the wrong question" in determining the genericness of ZERO: "it failed to consider that 'a term can be generic for a genus of goods or services if the relevant public . . . understands the term to refer to a key aspect of that genus." In re Cordua Rests., Inc., 823 F.3d 594, 603 (Fed. Cir. 2016) (emphasis added). In Cordua, the CAFC also pointed out that "the test is not whether the relevant public would itself use the term to describe the genus but also whether the relevant public would understand the term to be generic." Id. at 602 (alteration in original) (quoting In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1364 (Fed. Cir. 2009)). Moreover, "a term is generic if the relevant public understands the term to refer to part of the claimed genus of goods or services, even if the public does not understand the term to refer to the broad genus as a whole." Id. at 605 (emphasis added).

In In re Cordua, we found that the term “churrasco” was generic, even for use in connection with a broad class of restaurant services, because the key public would understand the term to be referring to a specialty dish—a sub-aspect of restaurant services. Id. at 604. We made clear that “[t]here is no logical reason to treat differently a term that is generic of a category or class of products where some but not all of the goods identified in an application fall within that category.” Id. at 605 (quoting In re Analog Devices, Inc., 1988 WL 252496, at *3 (T.T.A.B. Mar. 21, 1988)). We pointed out, for instance, that the term “pizzeria” would be generic for restaurant services, even though the public does not understand the term to refer to the broad class of restaurants as a whole; the public need only understand that the term refers to “a particular sub-group or type of restaurant rather than to all restaurants.” Id.

The court explained that if the public understands ZERO, when used with a designated beverage name, refers to a sub-group or type of beverage that carries specific characteristics, then the term is generic. The Board "failed to consider whether consumers would consider the term ZERO to be generic for a subcategory of the claimed genus of beverages - i.e., the subcategory of the claimed beverages encompassing the specialty beverage categories of drinks with few or no calories of few or no carbohydrates."

The court instructed the Board to consider, on remand, whether ZERO is generic because it "refers to at key aspect of at least a sub-group or type of the claimed beverage goods."

Descriptiveness: The Board also erred by determining the issue of acquired distinctiveness without first properly determining the extent of opposers' burden of proof. Opposers asserted that ZERO was so highly descriptive that "the Board's assessment of [applicant's] evidence must be exacting."

The CAFC has long held that an applicant's burden of showing acquired distinctiveness increases with the level of descriptiveness. Steelbuilding.com, 415 F.3d at 1300; see also In re Boston Beer Co., 198 F.3d 1370, 1373 (Fed. Cir. 1999). The Board, however, did not make any finding as to the degree of descriptiveness of ZERO and thus did not view the evidence "through an exacting lens."

On remand, the Board "must make an express finding regarding the degree of the mark's (sic) descriptiveness on the scale ranging from generic to merely descriptive, and it must explain how its assessment of the evidentiary record reflects that finding."

Evidentiary Issues:  The CAFC noted several concerns with the treatment of the relevant evidence. First, opposers were not required, despite the Board's intimations otherwise, to provide direct evidence of consumer perception to support their genericness claim. Evidence regarding genericness may be obtained from any competent source, including consumer surveys, dictionaries, newspapers and other publications. Survey and/or dictionary evidence is not required.

Second, the Board's was wrong in its position that the ubiquity of applicant's ZERO product and its massive sales figures helped to outweigh opposers' evidence of genericness. Generic terms "cannot be rescued by proof of distinctiveness or secondary meaning no matter how voluminous the proffered evidence may be." Northland Aluminum, 777 F.2d at 1558 (alteration in original) (quoting  Examiner); see also Weiss Noodle Co. v. Golden Cracknel & Specialty Co., 290 F.2d 845, 847–48 (CCPA 1961). This type of evidence may be relevant to the issue of acquired distinctiveness, but not to genericness.

Finally, the Board also noted that applicant's survey evidence was of questionable probative value, since the survey was conducted more than five years before the testimony periods in these proceedings and thus could not reflect contemporary public perception, particularly in light of the evidence of third-party use in the intervening years.

Conclusion: "Because the Board applied the incorrect legal standard in assessing whether TCCC’s ZERO marks (sic) are generic, and did not adequately consider Royal Crown’s evidence with respect thereto, we vacate the Board’s dismissal of Royal Crown’s oppositions on that ground. We also vacate the Board’s acquired distinctiveness determination to allow it, in the first instance, to assess the nature of TCCC’s burden on that point and to explain how the evidence presented meets that precise burden."

Read comments and post your comment here.

TTABlog comment:  Don't recall seeing the terms "key public" or "exacting lens" before. Also, the case concerned the term ZERO by itself, not whether the entire marks are generic or lack acquired distinctiveness.

Text Copyright John L. Welch 2018.

Trademark Expo July 27-28 Includes Free CLE on Right of Publicity and on Ethics

The Smithsonian's National Museum of American History, in collaboration with the United States Patent and Trademark Office, will host the 2018 National Trademark Exposition on July 27 and 28 at the National Museum of American History, 1300 Constitution Ave. N.W., Washington, DC 20560. The exposition is a free, family-friendly event featuring educational workshops, exhibits and hands-on activities demonstrating the important role trademarks play in our economy and our lives. Children's activities, including scavenger hunts, interactive games, and trademark design workshops, will be offered both days. [more details here and at www.uspto.gov/TMExpo.]

As part of the 2018 National Trademark Exposition, two free continuing legal education (CLE) seminars will be offered to legal professionals:

Who Owns You After You Die - Inside the Estates of Deceased Celebrities
Friday, July 27, 10:15 a.m. - 11:15 a.m.

This seminar will be moderated by Kareem Abdul-Jabbar, professional basketball legend, author, and registered trademark owner, and his business manager, Deborah Morales. Panelists will include Jennifer E. Rothman, a leading expert on right of publicity and Professor of Law at Loyola Law School, Los Angeles and Priya P. Royal, managing attorney and founder of the Royal Law Firm, PLLC.

Legal Ethics Seminar
Friday, July 27, 11:15 a.m. - 12:15 p.m.

This seminar will be delivered by William R. Covey, United States Patent and Trademark Office Deputy General Counsel and Director of the Office of Enrollment and Discipline (OED). OED is responsible for registering attorneys and agents to practice before the USPTO and the presentation will cover a variety of issues, including OED rules, programs and statistics, as well as related case law.

TO REGISTER send an email with your name, bar number, and seminar you wish to attend to TMExpo@USPTO.GOV with “CLE Registration” in the subject line. Registration is limited to 100 attendees per seminar and closes on July 10. The USPTO is seeking CLE accreditation for the seminars.

Read comments and post your comment here.

Text Copyright John L. Welch 2018.

TTAB Test: Are Collectible Toy Figures Related to Plush Toys For Purposes of Section 2(d)?

The USPTO refused registration of the mark PINT SIZE HEROES in standard character and Stylized form for "Collectable toy figures," finding confusion likely with the registered mark PINT SIZE PRODUCTIONS & Design for “plush toys; stuffed and plush toys; stuffed toy animals" [PRODUCTIONS disclaimed]. On appeal, applicant argued that it was not seeking to register its mark for plush or stuffed animals, that registrant's customers are shopping for baby board books that are accompanied by stuffed toys, and that the marks are different because applicant's mark is "ironic" while the cited mark is literal. How do you think this came out? In re Funko, LLC, Serial Nos. 87171233 and 87171228 (March 15, 2018) [not precedential] (Opinion by Judge David K. Heasley).

The Goods: As to applicant's assertion that it is not seeking registration of its mark for plush toys, the Board observed that "the identifications are not mutually exclusive, as collectable toy figures can consist of stuffed and/or plush toys." Applicant itself sells plush toys that are collectable toy figures and so the good in the identifications can overlap. Applicant also argued that registrant's customers are shopping for baby books sold with accompanying stuffed toys, but the Board must consider the goods as described in the application and cited registration, without extrinsic evidence of actual use.

Examining Attorney Katerina D. Satanovsky submitted a raft of evidence to show the relatedness of the goods, including Internet web pages and some 40 use-based third-party registrations covering the types of goods at issue. The Board found these registrations to be "persuasive evidence that the identified goods are of a type that may emanate from a single source under a single mark."

Thus the second du Pont factor weighed in favor of a finding of likely confusion.

Channels of Trade: The evidence showed that toy figures and stuffed toys are offered for sale in the same channels of trade - retail toy stores like Buy Buy Baby and Disney Store - to the same classes of consumers.

The Marks: As to the standard character mark PINT SIZE HEROES, applicant contended that its mark "immediately communicates irony, especially when used in connection with collectable super-her figures. In contrast, PINT SIZE PRODUCTIONS is literal: the goods feature and are for babies and toddlers." The Board, however, found the marks to be "more similar than dissimilar, in important respects."

The first two words in the marks are the same, and the prominence of PINT SIZE is enhanced by its placement at the beginning of both marks. The pronunciation and meaning of PINT SIZE would be the same in both marks. Moreover, the marks have the same structure, with the dominant component PINT SIZE followed by a single word. "Applicant's attempt to distinguish its mark's 'ironic' commercial impression is unavailing, for if the dominant portion of both marks is the same, then the marks may be confusingly similar notwithstanding peripheral differences." Given the related nature of the goods, the applied-for mark could be taken by consumers as another line of goods produced by PINT SIZE PRODUCTIONS.

As to its stylized mark, applicant contended that the marks differ in appearance, emphasis, and pronunciation. It claimed that HEROES is the dominant part of its mark, since it is twice the size of PINT SIZE, and the letter "H" is the leftmost portion of the mark and will be the first read. The cited mark, on the other hand, emphasizes PINT SIZE. Moreover, the registered mark is in pastel colors with a child-like handwriting style. "Funko's brand is built on striking pop-culture graphics, and PSP's is built on soft, warm, cuddly graphics."

The Board, however, agreed with the examining attorney that the verbal similarity between the marks outweighs their dissimilarity in design. The "verbal portion" of a word + design mark will likely appear alone in text and will be spoken when consumers ask for the goods. Of course, applicant's mark (with no color claim) could be used in colors similar to those of the registered mark.

Applicant's suggestion that HEROES would be the first word read in its mark was belied by its own application and its appeal brief, which refer to the mark as consisting of "the stylized text "PINT SIZE HEROES.'" The smaller sized text used for PINT SIZE serves to "reinforce the connotation and commercial impression that the toy figures are PINT SIZE - i.e., very small." Therefore the term PINT SIZE is likely to make a greater impression upon consumers.

Conclusion: Finding that confusion is likely, the Board affirmed the Section 2(d) refusals.


Read comments and post your comment here.

TTABlog comment: What do you think?

Text Copyright John L. Welch 2018.

TTAB Test: Is "FOUNDIT THEFT RECOVERY" Confusable With "IFI I FOUND IT" for GPS Tracking Devices?

The USPTO refused registration of the mark FOUNDIT THEFT RECOVERY for "GPS tracking devices, namely, personal asset tracker, personal tracker, vehicle tracker" (THEFT RECOVERY disclaimed), finding it likely to cause confusion with the registered mark IFI I FOUND IT (in stylized form with design) for "electronic devices for locating and tracking lost articles using radio frequency, global positioning systems, and/or cellular communication networks." The Board found that applicant’s goods are broad enough to encompass the cited goods, making the goods legally identical in-part. But what about the marks? How do you think this came out? In re Spy Tec International Inc., Serial No. 87543668 (June 13, 2018) [not precedential] (Opinion by Judge Francie R. Gorowitz).

We know that when the involved goods are identical (in-part) a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. Moreover, "when a mark contains both words and designs, the verbal portion of the mark is normally more likely to indicate the origin of the goods to which it is affixed because it is the portion of the mark that consumers would use to refer to or request the goods."

The Board found the dominant part of the cited mark to be the literal phrase I FOUND IT. The dominant part of applicant’s mark is the term FOUNDIT since it is both the first part of the mark and the only element that is not disclaimed. "The first part of a mark is frequently the most dominant portion thereof."


Applicant argued that “the word ‘found’ in relation to Registrant’s electronic devices for locating lost articles is not very distinctive.” The Board acknowledged that the word, “found” may be weak in connection with registrant’s goods, but it pointed out once again that “even suggestive or weak marks are entitled to protection from the use of a very similar mark for legally identical
[goods].”

Viewing the marks in their entireties with the non-dominant features appropriately discounted, we find the Cited Mark and the mark FOUNDIT THEFT RECOVERY are similar in meaning and sound and that the similarities in the marks outweigh any dissimilarities. Similarity as to one element (e.g., sight, sound, or meaning) has been held sufficient to support a finding of confusing similarity. Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910, 1914 (TTAB 2000) (“It is not necessary that marks be similar in all three of the elements of sight, sound, and meaning to support a finding of likelihood of confusion.”).

And so the Board affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: Well, how did you do?

Text Copyright John L. Welch 2018.

TTAB Sustains Opposition to SCOTTSDALE TAXI: Geographically Descriptive and Lacks Acquired Distinctiveness

The Board sustained an opposition to registration of the mark SCOTTSDALE TAXI for "taxi transport" services [TAXI disclaimed], finding the mark to be "highly geographically descriptive" and lacking in acquired distinctiveness. Despite applicant's use of the alleged mark since 1994, its evidence of advertising and extent of use was inadequate and it failed to prove substantially exclusive use. Zero Transportation, LLC v. Scottsdale Taxi Sedan Service Co., Opposition No. 91218718 (June 14, 2018) [not precedential] (Opinion by Judge David Mermelstein).

Geographical Descriptiveness: In order to overcome the USPTO's refusal to register under Section 2(e)(2), applicant claimed acquired distinctiveness under Section 2(f), based solely on five years of consecutive and substantially exclusive use. Applicant thus conceded that its mark is primarily geographically descriptive and not inherently distinctive.

The Board found it readily apparent that Scottsdale, Arizona is a "is the name of a place known generally to the public." Applicant's customers would immediately make a goods/place association, because the customers and Applicant are located there, and because the services are provided there. The inclusion of the word TAXI "will not obviate a refusal under Trademark Act § 2(e)(2) if the mark as a whole retains its primarily geographic significance."

The Board concluded that the applied-for mark "is highly geographically descriptive, and that Applicant bears a commensurately high burden to prove that it has acquired distinctiveness."

Acquired Distinctiveness: Although applicant has used the term SCOTTSDALE TAXI since 1994, its evidence regarding the nature and extent of use was meager. Applicant established that it listed its business in telephone directories prior to 2008 but it failed to provide any other evidence of promotion of the term. After 2008, applicant established a website and created social media pages, but applicant provided no evidence as to how many potential customers were exposed to these efforts. Advertising expenditures were a paltry $3000 per year. Not enough, said the Board.

Moreover, opposer's evidence showed that others used the term "Scottsdale taxi" in advertising their taxi transport services. The Board concluded that applicant's use of the applied-for mark was not substantially exclusive, and that relevant consumers are not likely to view the term as a source indicator.

Applicant contended that opposer's use of the term was causing actual confusion, but the Board deemed such confusion irrelevant, observing that by choosing a highly descriptive phrase applicant ran the risk that confusion would result when competitors legitimately used the phrase to describe their own businesses. See, e.g., KP Permanent Make-Up Inc. v. Lasting Impression I Inc., 543 U.S. 111, 72 USPQ2d 1933, 1938 (2004).

Equitable Defense: Applicant argued that opposer's business behavior constituted unclean hands, but the Board declined to apply that defense (regardless of applicant's allegations) because the public interest is not served by allowing registration of primarily geographically descriptive terms.

Conclusion: The Board found that applicant failed to meet its burden to demonstrate that SCOTTSDALE TAXI has acquired distinctiveness for its services, and so the opposition was sustained.

Read comments and post your comment here.

TTABlog comment: Applicant improperly use the R-in-circle symbol in a cease-and-desist letter to opposer, bu the Board found that to be an honest mistake that caused no harm to opposer.

Text Copyright John L. Welch 2018.

Finding Beer and Wine Related, TTAB Affirms Section 2(d) Refusals of DEAD BIRD BREWING COMPANY and Dead Bird Design for Beer

The Board affirmed Section 2(d) refusals to register the mark DEAD BIRD BREWING COMPANY (standard characters) [BREWING COMPANY disclaimed] and the design mark shown below, for beer, in view of the registered mark DEADBIRD for wines. Applicant submitted evidence of several dozen registrations and uses of mark for beer owned by one entity and for wine by a different entity, but the Board was unmoved. In re Dead Bird Brewing, LLC, Serial Nos. 87140389 and 87140417 (June 13, 2018) ]not precedential] (Opinion by Judge Thomas W. Wellington).

The Marks: Not surprisingly, the Board found the words DEAD BIRD to be the dominant portion of applicant's mark DEAD BIRD BREWING COMPANY, since BREWING COMPANY is disclaimed and since DEAD BIRD is located as the first part of the mark. The word marks at issue both connote a "dead bird," and the term has no significance in connection with beer or wine. In sum, the marks are "extremely similar." Consumers may believe that the added term BREWING COMPANY "is simply being used in connection with a variant mark to designate Registrant's attempt at brewing beer, a concept that would be plausible in the minds of the relevant consumers."

As to applicant's design mark, it is the pictorial equivalent of the words "dead bird." Under the doctrine of legal equivalents, a pictorial depiction and equivalent wording are likely to make the same mental impression on purchasers. Applicant described the mark as an "upside down dead bird." Consumers are likely to use the words "the dead bird design (or mark or logo)" when describing applicant's mark, and are likely to ask for "dead bird beer" when ordering the product. The Board therefore found the similarity between this mark and the cited mark to be "very strong."

The Goods: In demonstrating the relatedness of beer and wine, Examining Attorney Amy E. Thomas relied on 24 use-based registrations covering both, on websites showing beer and wine featured in festivals, on websites showing beer and wind made and offered by a single entity under the same mark, and on websites advertising retail establishments that feature beer and wine.

Applicant acknowledged that the Board has often found beer and wine to be related for purposes of its likelihood of confusion analysis. However, applicant argued that the record here demonstrates that the goods are not related. It relied primarily on the contention that the same, or very similar, mark is used or registered by one entity for beer and by a different entity for wine (including some 60 pairs of registered marks and approximately 30 websites).

Applicant asserted that its evidence showed that the USPTO has treated inconsistently the beer-versus-wine issue, that consumers are accustomed to seeing the same mark used to indicate different sources of beer and wine, and that beer and wine makers do not view their products as creating potential trademark conflicts.

The Board found that applicant's pairs of existing registration have some probative value in that they "may reflect the views of coexisting registration owners." As to the USPTO's inconsistency, the Board again acknowledged that consistency is desirable, but nonetheless "prior decision and actions of other examining attorneys in registering other marks or approving marks for registration have little evidentiary value and are not binding on the Board." The Board's own case law suggests that the relatedness of beer and wine typically has resulted in a finding of likely confusion.

The Examining Attorney's evidence showed that there are a significant number of examples of third-party use of a single mark by the same entity for beer and wine, including several businesses that call themselves "winery and brewery." Third-party registration evidence helps corroborate that beer and wine are the type of goods that may emanate from a common source under the same mark. The evidence also showed that beer and wine may be sold together to the same consumers, including at stores, restaurants, and festivals.

We have considered the entire record and, to be clear, our determination regarding the relatedness of the involved goods is not based upon who has submitted the most third-party registrations or examples of use to support their arguments. Rather, our determination is based on finding that the respective goods are "related in some manner and/or the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the respective goods] emanate from the same source."

Consumers may be aware of coexisting marks, but that does not mean that they may not also be aware of the same mark being used in connection with beer and wine by the same entity.

Conclusion: The Board affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: Compare the PIRATE PISS case of a few days ago [TTABlogged here], where an opposer failed to prove the relatedness of beer and wine.

Text Copyright John L. Welch 2018.

TTAB Test: Is GAVIOTA for Faucets Confusable With SEAGULL for Water Purification Units?

The USPTO refused registration of the mark GAVIOTA, in standard character form, for “Luxury bathroom faucets; Water control valves for bathroom faucets; Plumbing fittings, namely, spouts for bathroom fixtures; Tub Spouts; Shower Heads; Handles for shower faucets; Plumbing fittings, namely, [and] shower control valves,” on the ground of likely confusion with the registered mark SEAGULL for "water purification units and parts thereof." The Examining Attorney maintained that "gaviota" is Spanish for "seagull." Applicant argued that the goods are unrelated and that consumers would understand its mark as referring to the southern California beach town of Gaviota and to the famous Gaviota State Park. How do you think this appeal came out? In re California Faucets, Inc., Serial No. 87029512 (June 11, 2018) [not precedential] (Opinion by Judge Thomas Shaw). [Corrected opinion issued June 20, 2018].

The Goods: Examining Attorney Louis Kolodner introduced third-party registrations and website pages to show that the involved goods are offered under the same mark. Additional evidence showed that water purification units (including Registrant's) include faucets and shower heads. Applicant pointed to the limitation of its goods to bathroom fixtures, but the Board was unmoved: registrant's goods are not limited to "producing water in a kitchen," as applicant asserted. The Board therefore found the goods to be related.

There were no limitations in the application or registration as to price of the goods, channels of trade, or classes of consumers. Both applicant's and registrant's goods are sold online and at similar price points, suggesting that the channels of trade and classes of purchasers are similar.

The Marks: Applicant's mark GAVIOTA means "seagull" in English. The record showed that Spanish is the most common foreign language spoken in the United States. Therefore the doctrine of foreign equivalents applied.

Applicant contended that the doctrine does not apply because GAVIOTA has another meaning: "the word 'GAVIOTA' predominantly refers to the southern California beach town of Gaviota, California, and the famous Gaviota State Park, as well as other tourist attractions in the Gaviota area." However, the evidence did not demonstrate that the Gaviota region or the town is well known outside of Southern California. Moreover, the record indicated that "Gaviota State Park takes its name from the Spanish word for seagull, given to the area by soldiers of the Portola Expedition who supposedly killed a seagull while camping here in 1769."

Applicant’s evidence does not establish that the alternate geographic meaning would be understood by the relevant purchasing public. Rather, given the large number of Spanish speakers in the United States and the fact that consumers who know of the Gaviota region also might know that it derives its name from the Spanish word for “seagull,” we find it likely that these Spanish speakers would “stop and translate” GAVIOTA into its English equivalent, SEAGULL.

The Board acknowledged that the application of the doctrine of foreign equivalents is only part of the analysis, since the similarity in connotation "must be weighed against the dissimilarity in appearance, sound, and all other factors, before reaching a conclusion on likelihood of confusion as to source." Noting that "seagull" is a direct translation of "gaviota," and that SEAGULL is arbitrary for the involved goods and thus a conceptually strong mark, the Board concluded that these factors outweighed the dissimilarities in appearance and sound.

Consumer sophistication: As stated above, there were no limitations in the involved application and cited registration as to classes of purchasers, and so the Board must consider all normal classes of consumers. The involved goods are sold online and therefore purchasers may include consumers who are not design or construction professionals. The Board must make its decision in light of the "least sophisticated potential purchasers, which may be ordinary consumers exercising only an ordinary degree of care." Moreover, even careful or sophisticated consumers are not immune to source confusion when similar marks are used for related goods.

Conclusion: The Board found confusion likely, and so it affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: The Board also affirmed the requirement that applicant submit an English translation of its mark, which applicant failed to do. See Rule 2.32(a)(9).

Text Copyright John L. Welch 2018.

Precedential No. 21: TTAB Extends Safer Requirements to Internet Evidence Submitted by Applicants

In yet another decision involving the admissibility of Internet evidence, the Board made clear that its recent ruling in In re Mueller Sports Medicine [TTABlogged here] extends to trademark applicants as well as examining attorneys. In Mueller, the Board held that Internet evidence submitted by an examining attorney that did not include the date of access and the pertinent URL was objectionable. Here, the evidence at issue was submitted by the applicant. However, since this applicant's faulty submission occurred prior to issuance of the Mueller decision, the Board decided to consider the evidence. Nonetheless, the Board affirmed Section 2(d) refusals of the mark INDIGO in standard character form and in the design forms shown below [AR disclaimed] for "optical lenses, namely, corrective lenses sold through eye care professionals," in view of the registered mark INDIGO for "ski glasses, ski goggles, goggles for sports, protective sport helmets; sunglasses, bags specifically adapted for protective helmets.” In re I-Coat Company, LLC, Serial Nos. 86802467, 86802618, and 86802733 (June 7, 2018) [precedential] (Opinion by Judge Peter W. Cataldo).

Internet evidence: In the past, the Board preferred, but did not require, that a webpage submitted by an applicant "be identified by the full address (url) for the web page, and the date it was downloaded, either by the information printed on the web page itself, or by providing this information in an Office action or an applicant's response." TBMP Section 1208.03; see also In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 n.6 (TTAB 2010). [The Board noted that the better practice is to print or otherwise display the URL and access date on the documents themselves. Alternatively, the URL and access date may be provided by declaration].

Website evidence submitted without the URL and access date "lacks authenticity and cannot be readily verified by the non-offering party." In In re Mueller Sports Medicine, Inc., 126 USPQ2d 1584, 1587 (TTAB 2018), the Board ruled that "to properly make such website evidence of record, a trademark examining attorney must include the URL and the date when the material was accessed, and . . . if an examining attorney fails to do so, and the applicant objects, the material will not be considered. According to the Board, it there "stated [its] intention" to hold applicants to the same standard. [In Mueller, the Board did not merely state its intention to extend the Safer requirements to applicants. It said: "we further extend these requirements to both examining attorneys and applicants in ex parte proceedings." - ed.].

In accordance with our decision in Mueller Sports Medicine, we will no longer consider Internet evidence filed by an applicant in an ex parte proceeding to be properly of record unless the URL and access or print date has been identified, either directly on the webpage itself, or by providing this information in a response, except where the examining attorney does not object.

Here, because applicant submitted its evidence during prosecution of the subject applications (with its request for reconsideration), prior to the Mueller decision, the Board chose to consider the website evidence submitted by Applicant .

Likelihood of confusion: The Board's Section 2(d) analysis was straightforward. Applicant I-Coat, in an effort to show the weakness of the word "INDIGO," submitted three third-party registrations and Internet evidence from three websites. The Board again recognized that, in determining the degree of weakness of the shared terms, it must “adequately account for the apparent force of [third-party use and registration] evidence,” regardless of whether “specifics” pertaining to the extent and impact of such use have been proven. Juice Generation, Inc. v. GS Enters. LLC, 115 USPQ2d 1671, 1674-5 (Fed. Cir. 2015). “[E]xtensive evidence of third-party use and registrations is ‘powerful on its face,’ even where the specific extent and impact of the usage has not been established.” Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 116 USPQ2d 1129, 1136 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 982 (2016) (citing Juice Generation v. GS Enters., 115 USPQ2d at 1674).

As to the three websites, the Board found that this evidence fell "well short of the volume of evidence found convincing in Jack Wolfskin and Juice Generation." The three registrations involved marks (GREAT NORTHWEST INDIGO, INDIGOFERRA, and INDIGO SCHUY) significantly different from the marks at issue. Moreover, only two of the registrations recited goods identified in the cited registration, and none of the marks are as similar to the cited mark INDIGO as are applicant's marks.

In sum the totality of applicant's evidence failed to show that INDIGO is significantly weak in connection with the involved goods.

As to the two word + design marks, the Board found the word INDIGO to be the dominant feature. The evidence established that the disclaimed term "AR" is an acronym for "anti-reflective" and identifies a feature of the goods. In addition, "AR" is displayed in much smaller type than INDIGO. The rectangle-with-folded-corner design does not create a commercial impression separate from the wording but rather serves merely as a frame therefor. Of course, it is settled that the literal portion of a word + design mark will likely be the dominant portion. And so the Board concluded that the differences between the cited mark INDIGO and applicant's word + design marks were outweighed by the similarity in appearance sound and meaning.

Third-party website and registration evidence established that registrant's sunglasses and applicant's optical lenses travel in the same channels of trade. Although applicant's goods are limited to sale "through eye care professionals," there are no limitations in the cited registration. Examining Attorney Jonathan Ryan O'Rourke submitted evidence that both corrective lenses and sunglasses are sold on the same webpages.

Assuming that the purchasers of the involved goods will be more careful purchasers - seeking vision correction and vision enhancement by eye protection - the Board observed once again that even careful, sophisticated consumers are likely to believe that such goods emanate from the same source when sold under identical or similar marks.

Conclusion: The Board found confusion likely and it affirmed the refusals to register.

Read comments and post your comment here.

TTABlog comment: The Board called applicant's evidence of third-party use and registration, "modest." I sometimes use the word "feeble" in such circumstances.

Text Copyright John L. Welch 2018.

PIRATE PISS for Beer Not Confusable With PYRAT for Rum, Says TTAB

The Board dismissed an opposition to registration of PIRATE PISS for "beer, ale and lager," finding that confusion is not likely with the registered mark PYRAT for "“distilled spirits” (and PYRAT RUM for “rum”). Opposer's evidence that beer and rum are related was inadequate, and its reliance on past Board decisions to prove that relationship was misplaced. Patrón Spirits International AG v. Conyngham Brewing Company, Opposition No. 91226939 (June 8, 2018) [not precedential] (Opinion by Judge Thomas W. Wellington).

The Goods: Opposer submitted copies of 13 third-party registrations for marks covering both beer and rum. However, only six were use-based registrations. The other seven were based on ownership of foreign registrations with no claim of use in commerce, and therefore were irrelevant.

The Board found this evidence "not very convincing." "While there is no threshold number, six relevant registrations is a relatively small number given the number of breweries and beer brands in the U.S." Moreover, registrations are not evidence that the marks have actually been used [ever? why not? - ed.] or that consumers are aware of the use. In short, "there is insufficient evidence of third parties using the same mark in connection with beer and rum, or evidence that a maker of rum also actually produces beer."

As to prior Board decisions, "[t]here is no per se rule that holds that all alcoholic beverages are related." In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1285 (TTAB 2009). Each case must be decided on its own record. "Put simply, Opposer cannot evade its burden to prove relatedness by bootstrapping upon previous factual findings made in other decisions on different records." The Board went on to note that the evidence of relatedness here "pales in comparison to the records in many of the decisions where beer was found to be related to other alcoholic beverages." If the marks at issue were identical or highly similar, less evidence of relatedness might be required, but that is not the case here.

Therefore the Board found that the second du Pont factor did not weigh in opposer's favor.

Strength of the word PIRATE: In attempting to show that PIRATE is a weak formative, applicant submitted three use-based registrations - nowhere near enough to prove its point. Registrations alone are not evidence that the marks are in use or that the consuming public is aware of them.

Opposer contended that its mark PYRAT is well known, pointing to various awards, advertisements, recipes mentioning PYRAT rum, online retail stores featuring PYRAT rum, etc. However, these materials were not accompanied by any testimony to verify the truth of the documents or put them in context. Therefore the Board found the fifth and sixth du Pont factors to be neutral.

The Marks: The word "pyrat" is an archaic alternative spelling of "pirate." It will be so understood by consumers, "albeit in an archaic spelling that will perhaps connote the golden age of piracy." The two terms will sound the same and share a visual similarity. However, the marks at issue differ in connotation and commercial impression:

Opposer’s mark simply conjures a feeling of nostalgia for “pirates” or “piracy,” and this is certainly enhanced in the context of the goods, inasmuch as there is a strong association between rum and pirates. Applicant’s mark, PIRATE PISS, on the other hand, conjures the vulgar image of urine from a pirate. In the context of Applicant’s beer, and for better or worse, the mark will likely be understood as a humorous, self-deprecating description of a quality or strength of the beer or simply just as an arbitrary vulgar expression. Nevertheless, the strong image and commercial impression of Applicant’s mark, PIRATE PISS, distinguishes it from Opposer’s PYRAT mark.

The Board therefore found that the first du Pont factor weighed in applicant's favor.

Conclusion: Given the weak record evidence regarding the relationship between rum and beer, and despite the fact that the goods travel in the same channels of trade to the same classes of consumers, the Board found no likelihood of confusion and it dismissed the opposition.

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TTABlog comment: I'm a bit surprised that Major League Baseball didn't oppose.

Text Copyright John L. Welch 2018.

Precedential No. 20: Prior Registration of 5IVE RESTAURANT Fails to Shield 5IVE STEAKHOUSE From Section 2(d) Refusal

In a precedential, ruling, the Board affirmed a Section 2(d) refusal of the mark 5IVE STEAKHOUSE & Design (below left) in view of the registered mark 5IVESTEAK (Stylized), both for "restaurant and bar services." Applicant's third-party registration evidence was unsatisfying, and its reliance on its prior registration of a similar mark lacked sizzle. In re Inn at St. John’s, LLC, Serial No. 87075988 (June 6, 2018) [precedential] (Opinion by Judge Marc A. Bergsman).

Third-party registration and usage: In an effort to show that 5IVE is a weak formative. applicant pointed to 21 registrations and applications for marks that include that word, two registrations for marks that include FIFTH for restaurant services , and one registration for 51 FIFTEEN for restaurant and bar services.

The Board pointed out that pending applications are not evidence of use of the marks. Nike Inc. v. WNBA Enters. LLC, 85 USPQ2d 1187, 1193 n.8 (TTAB 2007); Interpayment Servs. Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003). Second, only five of the submitted registrations related to restaurant and bar services, and therefore the others have limited probative value. See In re i.am.symbolic, LLC, 123 USPQ2d at 1751 Moreover, one of the five registrations had been cancelled and therefore had no probative value. In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261, 1264 (TTAB 2011). Two of the remaining four registrations were for related but not identical services and the other two covered identical services but contained the non-identical term "FIFTH."

There was no evidence of third-party usage; only evidence of "just a few" third-party registrations. The Board pointed out once again that the "“existence of [third-party] registrations is not evidence of what happens in the marketplace or that customers are familiar with them.” AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973).

Nevertheless, in determining the degree of weakness, if any, in the shared terms, we must “adequately account for the apparent force of [third-party use and registration] evidence,” regardless of whether “specifics” pertaining to the extent and impact of such use have been proven. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-5 (Fed. Cir. 2015). “[E]xtensive evidence of third-party use and registrations is ‘powerful on its face,’ even where the specific extent and impact of the usage has not been established.” Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 982 (2016) (citing Juice Generation v. GS Enters., 115 USPQ2d at 1674).

However, unlike Juice Generation, where "extensive evidence" of third-party registration and use of similar marks was deemed "powerful on its face," applicant here presented no evidence of use and at most four third-party registrations of varying probative value (two for non-identical services and two for non-identical terms). "This is a far cry from the large quantum of evidence of third-party use and third-party registrations that was held to be significant in both Jack Wolfskin v. New Millennium Sports, 116 USPQ2d at 1136, and Juice Generation v. GS Enters., 115 USPQ2d at 1674.

Therefore the Board considered this 6th du Pont factor to be neutral.

The marks: The Board again observed that when the involved services are identical, as here, a lesser degree of similarity between the marks is necessary to support a finding of likelihood of confusion. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).

The Board found the marks to be "highly similar" in appearance, sound, connotation, and commercial impression. Applicant maintained that the marks have significant differences in appearance, but the Board pointed out that the literal portion of a word + design mark is often considered the dominant feature because it is the portion that is most likely to indicate source. "In other words, the literal elements of a mark are likely to make a greater impression upon purchasers than any stylization of the words or accompanying designs, and would be remembered by them and used by them to request the services." See In re Viterra, 101 USPQ2d at 1908 and 1911 (citing CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir 1983)). Moreover, the knife-and-fork design in applicant's mark is a relatively small element of the mark and is at best suggestive of restaurant services.

Applicant's prior registration: Under the thirteenth du Pont factor, the Board may consider "any other establish fact probative of the effect of use." The Board observed that "[w]here an applicant owns a prior registration that is over five years old and the mark is substantially the same as in the applied-for application, this can weigh against finding that there is a likelihood of confusion. See, e.g., In re Strategic Partners Inc., 102 USPQ2d 1397, 1399 (TTAB 2012) (applicant’s prior registration for ANYWEARS in standard characters substantially similar to the applied-for mark ANYWEAR in stylized form for identical goods).

Applicant pointed to its prior registration for the mark shown immediately above, which has coexisted with the cited registration on the Trademark Register for more than five years. The Board, however, observed that the applied-for mark "moves closer to the cited registration" than the mark in the prior registration. The Board acknowledged that STEAK, STEAKHOUSE, and RESTAURANT are generic, or at best descriptive terms, "but such terms, in appropriate circumstances may - and here, do - contribute to the overall commercial impression created by a mark." See Juice Generation v. GS Enters., 115 USPQ2d at 1676 (Board paid insufficient heed to the word JUICE in mark for juice bar services).

Because of the similarity of the wording 5IVE STEAKHOUSE and 5IVESTEAK, the Board deemed the existence of applicant's prior registration to be a neutral factor in the Section 2(d) analysis.

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

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TTABlog comment: Note that the Board referred to applicant's prior registration as being "over five years old," without using the misleading and erroneous term "incontestable."

Text Copyright John L. Welch 2018.

TTAB Test: Are SAVORY ROASTERS and HEARTY ROASTERS Confusable for Pet Food?

The USPTO refused registration of the mark SAVORY ROASTERS for "pet food; pet treats" [SAVORY disclaimed], deeming the mark likely to cause confusion with the registered mark HEARTY ROASTERS for "pet food." Applicant argued that ROASTERS is "clearly designed to be suggestive of the goods," and thus is not the dominant portion of the marks. How do you think this appeal came out? In re DPC Pet Specialties LLC, Serial No. 86951910 (June 6, 2018) [not precedential] (Opinion by Judge Linda Kuczma).

The Goods: Because the goods are in part identical, those overlapping goods must be presumed to travel through the same, normal channels of trade to the same classes of purchasers. Moreover, as to applicant's pet treat products, Examining Attorney Gidette Cuello submitted evidence showing the same entity commonly manufactures or sells pet treats and pet food under the same mark. Thus these factors strongly favored a finding of likelihood of confusion.

The Marks: The Board found that the terms SAVORY and HEARTY do not detract from the similarities of the marks. Both words are adjectives used to favorably describe food or its attributes. While the two words may have different connotations, they have little, if any, source-identifying significance because they are descriptive or highly suggestive of pet food products - as reflected in applicant's disclaimer of SAVORY and as evidenced by the submitted dictionary definitions.

Applicant argued that "the shared element of the mark[s] - ROASTERS - is clearly designed to be suggestive of the goods being sold," and therefore that the Examining Attorney was wrong in concluding that ROASTERS is the dominant portion of applicant's mark.

The Board observed that it must consider the marks in their entireties. Although the leading descriptive elements in the marks differ visually and aurally, "consumers familiar with Registrant's HEARTY ROASTERS pet food may well conclude that Applicant's SAVORY ROASTERS pet food and pet treats are a new line of pet food from the maker of HEARTY ROASTERS pet food."

Moreover, the Board observed once again, when the goods of the parties are identical or as closely related, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

The Board concluded that the marks are sufficiently similar in appearance, sound, connotation, and commercial impression for confusion to be likely.

And so the Board affirmed the Section 2(d) refusal.

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TTABlog comment: Applicant did not provide any evidence that the term ROASTERS has descriptive significance when applied to pet food.

Text Copyright John L. Welch 2018.