TTAB Affirms Two More Failure-to-Function Refusals

In failure-to-function cases, the key question is how the the alleged mark will be perceived by relevant consumers. To make this determination, the Board looks at the applicant's specimens of use as well as marketplace evidence. The more commonly a phrase is used, the less likely it will serve as a source indicator. Moreover, terms that are merely informational in nature are generally not registrable. Here are two very recent decisions in what seems to have become a steady stream of failure-to-function cases.

In re Lisa Brewer Buffaloe, Serial No. 87880862 (September 18, 2019) [not precedential] (Opinion by Judge Elizabeth A. Dunn). The Board affirmed a refusal to register the alleged mark JOHN 15:11 PUBLICATIONS, finding that the phrase fails to function as a trademark for "Downloadable e-books, audio books, multimedia files, and electronic publications in the field of literary works featuring inspirational and religious fiction and non-fiction, all of the foregoing not featuring the bible verse John 15:11" and "Printed books in the field of literary works featuring inspirational and religious fiction and non-fiction, all of the foregoing not featuring the bible verse John 15:11".

JOHN 15:11 refers to a well-known Biblical verse that states: "These things I have spoken to you so that My joy may be in you, and that your joy may be made full." The evidence submitted by Examining Attorney Samuel R. Paquin demonstrated that this verse is the subject of inspirational and religious publications, sermons by religious leaders, and spiritual discussions, and is recognized by the public because it is encountered on a wide variety of items.

Based on this record, we are persuaded that public perception of the term JOHN 15:11 PUBLICATIONS is shaped by the ready availability of hundreds of JOHN 15:11 publications online as well as the recognition of the Bible verse JOHN 15:11 to the public, as shown by the broad market for goods from light switches to coasters bearing the verse. We find that JOHN 15:11 PUBLICATIONS as used by Applicant merely provides information about the identified goods, and is not perceived as indicating a single source for Applicant’s print and electronic religious and spiritual publications.

The fact that the phrase JOHN 15:11 is displayed in the manner of a trademark does not mean that the public perceives it as a trademark. Also, the addition of the word PUBLICATIONS (which is disclaimed) does not alter the significance of JOHN 15:11.

Note that the identified goods exclude publications "featuring the Bible verse John 15:11." The Board declined to reach the issue of deceptive misdescriptiveness under Section 2(e)(1).

In re Scherr’s Cabinets & Doors, Inc., Serial No. 87685028 (September 18, 2019) [not precedential] (Opinion by Judge Thomas Shaw). The Board affirmed a failure-to-function refusal of CABINETS ASSEMBLED BY YOU for "cabinets being furniture for residential and commercial properties" [CABINETS disclaimed].

Examining Attorney Edward Fennessy submitted a number of Internet excerpts establishing that "assembled by you" is commonly used by manufacturers and retailers of cabinetry and furniture. Furthermore, excerpts from Applicant's own website reinforced the informational meaning of the purported mark: for example, "Scherr's Cabinets & Doors manufactures high-quality custom cabinet doors, dovetail drawer boxes, and cabinets-assembled-by-you."

The addition of the word CABINETS to the common phrase ASSEMBLED BY YOU does not diminish the informational nature of the entire phrase.

Because consumers are accustomed to seeing ASSEMBLED BY YOU used by many different manufacturers and retailers of ready-to-assemble furniture and cabinets, they would not view the phrase CABINETS ASSEMBLED BY YOU as a trademark indicating that Applicant is the sole source of cabinets bearing the mark. Applicant is not entitled to appropriate the phrase to itself and thereby attempt to prevent competitors from using it to promote the sale of their own products.

Applicant argued that its specimens of use clearly show the phrase used as a trademark, with the TM symbol appearing after the phrase. The Board was unimpressed. "Submission of an otherwise acceptable specimen, such as a label, bearing the proposed mark will not obviate the refusal; the mere fact that the matter appears on a technically good specimen does not mean that it would be perceived as a mark."

And so the Board affirmed the refusal.

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TTABlog comment: Is either of these a WYHA?

Text Copyright John L. Welch 2019.

TTABlog Test: Is This Word+Design Mark for Whiskey Confusable with "OUTLAW" for Alcoholic Beverages?

The USPTO refused to register the word+design mark shown below, for "whiskey," finding it to be confusingly similar to the registered mark OUTLAW for "alcoholic beverages." The goods overlap, but what about the marks? Applicant Mystic Mountain argued that the design portion of its mark dominates, that the term "outlaw" is weak, and that consumers of alcohol are careful in their purchasing decisions. How do you think this came out? In re Mystic Mountain Distillery LLC, Serial No. 87014045 (September 17, 2019) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Since registrant's "alcoholic beverages" encompass "whiskey," the involved goods are in part legally identical. The Board must presume that these goods travel in the same channels of trade to the same classes of consumers. Moreover, when the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

Turning to the marks, Applicant Mystic Mountain relied on five third-party registrations and eight third-party uses of the term "OUTLAW" in connection with whiskey and other alcoholic beverages. However, the list of third-party uses appeared for the first time in Applicant's brief and so the Board refused to consider them, observing: "Applicant has the responsibility to make sure that the record is complete prior to filing a notice of appeal."

As to the five registrations, three were for marks the referred to historical figures or notable individuals - SHERIFF HENRY PLUMMER'S OUTLAW BREWING, JESSE JAMES AMERICA'S OUTLAW BOURBON WHISKEY, and JESSE JAMES AMERICA'S OUTLAW BEER - and therefore those marks created different commercial impressions than Mystic Mountain's mark. The other two registrations fell "well short of the 'voluminous' and 'extensive' evidence that was found probative in Jack Wolfskin or in Juice Generation. The Board therefore found this factor to be neutral.

Comparing the marks, the Board noted that for word+design marks, the words are normally accorded greater weight "because the words are likely to make an impression upon purchasers, would be remembered by them, and would be used by them to request the goods and/or services."

Mystic Mountain argued that the design is the dominant portion of its mark, but the Board disagreed. Although the design features are prominently displayed, the Board found that the literal portion of the mark is entitled to greater weight. Moreover, lesser weight is given to the generic or descriptive words WHISKEY and HANDCRAFTED SMALL BATCH, which have been disclaimed.

Thus the distinctive portion of Applicant's mark is comprised of the words MYSTIC MOUNTAIN, BRAD LEE SCHROEDER, and OUTLAW. The Board concluded that the term OUTLAW "is the most dominant, given that it is the wording that is most prominently displayed, MYSTIC MOUNTAIN is a house mark, and BRAD LEE SCHROEDER, in even smaller type, appears to identify a person that is endorsing or is in some way associated with Applicant's product."

The presence of the house mark does not suffice to distinguish two otherwise similar product marks, "unless there are recognizable differences in the shared product marks, or unless the product mark is descriptive or highly suggestive as applied to the parties' goods and/or services." The Board found neither exception applicable here.

The Board concluded that the design in Applicant's mark "simply reinforces the term OUTLAW," and the disclaimed terms are entitled to little weight. The term OUTLAW is not so weak that the addition of the house MYSTIC MOUNTAIN or the name BRAD LEE SCHROEDER suffices to avoid confusion.

In sum, the Board found the involved marks to be similar, albeit not identical, in sound, appearance, and meaning, and in overall commercial impression. Therefore, this du Pont factor supported a finding of likelihood of confusion.

Finally, although Mystic Mountain contended that consumers of alcohol, especially whiskey, are "particular in their choices," there was no evidence to support that contention. Moreover, there were no restrictions in the application or cited registration as to price point or consumers, and so the Board must assume that the goods will be sold to all consumers, including those exercising only ordinary care, at all price points. The Board must consider the degree of care that would be exercised by the least sophisticated consumer.

Balancing the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: What do you think?

Text Copyright John L. Welch 2019.

TTAB Affirms Refusal of THERAFIT Because it Identifies a Component, Not Applicant's Bed Sheets

The Board affirmed a refusal to register the mark THERAFIT for "bed sheets," agreeing with Examining Attorney David I that applicant's specimen failed to show the mark in use in connection with the goods. Instead, the Board found that "[t]he mark will be perceived as identifying the elastic component of the bed sheets and not the overall finished sheets without regard to any of their particular features." In re Ther-A-Pedic Associates, Inc., Serial No. 86983542 (September 13, 2019) [not precedential] (Opinion by Judge Frances Wolfson).

Applicant's specimen of use (above) depicted packaging for the goods and displayed the phrase "with THERAFIT technology." The critical issue, of course, was how the word THERAFIT would be perceived by the relevant consuming public. In order to function as a trademark, "Applicant's mark must be associated with the goods and signify to purchasers the source of the goods sold or offered for sale."

The Board found that the relevant size and placement of the wording, including the mark THERAPEDIC followed by the registration symbol, "gives the impression" that the THERAPEDIC mark "identifies the sheet set as a whole." The relatively small size and placement of THERAFIT "contribute to it being perceived as identifying the elastic feature of the sheets, rather than the sheets themselves." Also, the design element incorporating the term "fit" suggests the elasticized corners of the fitted sheets.

Applicant argued that the goods fall in class 24 (the classification for the finished product), since the elastic cannot be "disassociated" from the sheets. The Board was unmoved. "Classification is assigned according to the goods as identified in the application, and is not indicative of whether the specimen shows use of the designation as a trademark for the identified goods."

The Board concluded that consumers "will not directly associate the proposed mark with the involved goods such that it would indicate the source of the goods."

Read comments and post your comment here.

TTABlog comment: According to TMEP § 1402.05(a), "Components or ingredients sold as part of a finished product are classified in the class of the finished product, since the components or ingredients have been incorporated into other finished goods." So perhaps THERAFIT is registrable as a component of bed sheets?

Text Copyright John L. Welch 2019.

Precedential No. 27: TTAB Excludes Evidence Due to Spoliation, But Declines to Enter Judgment as a Sanction

In yet another ruling regarding the spoliation of evidence, the Board refused to consider certain of Petitioner Busy Beauty's Instagram photographs and data, finding that it had failed to preserve the corresponding electronically stored information (ESI). Although Petitioner  was "at least careless" in its data preservation, there was no proof that it intended to deprive Respondent of this information, and so the Board declined to enter the severe sanctions of an adverse inference or adverse judgment. Busy Beauty, Inc. v. JPB Group, LLC,  2019 USPQ2d 338392 (TTAB 2019) [precedential].

Busy Beauty petitioned to cancel Respondent JPB Group's registration for the mark BUSY BEAUTIES for hair care and skin care preparations, claiming priority of use of, and likelihood of confusion with, its alleged prior common law rights in the mark BUSY BEAUTY since 2016 for women's shaving gel. During discovery, Petitioner admitted that it had deleted from its Instagram account all posts prior to October 1, 2018, when it overhauled the account.

Respondent JPB Group sought sanctions under FRCP 37, claiming that Petitioner had "knowingly and willfully" deleted the Instagram posts. FRCP 37(e) governs the issue of spoliation of ESI and provides for the issuance of an array of possible sanctions, but "no greater than necessary to cure the prejudice" to the party seeking the information. Only upon clear and convincing proof of intent to deprive another party of the information are the sanctions of adverse inference or adverse judgment appropriate.

A party that moves for spoliation sanctions must establish the following:

(1) the ESI should have been preserved; (2) the ESI was lost; (3) the loss was due to a party’s failure to take reasonable steps to preserve the ESI; and (4) the ESI cannot be restored or replaced through additional discovery. Fed. R. Civ. P. 37(e); see also Steves & Sons, Inc., 327 F.R.D. at 104.

The Board found that Petitioner should have preserved the Instagram posts in question because "evidence of use of a mark in social media, in connection with testimony and other evidence showing the context of use and the extent of consumer exposure and advertising expenditures, may be relevant to prove or rebut priority, the relatedness of goods, or the strength of the mark, for example."

Neither party disputed that the Instagram posts were "lost," and there was nothing in the record to show that Petitioner took reasonable steps to preserve the information at the outset: for example, by implementing a litigation hold.

Finally, although Petitioner provided copies of the photos appearing in the lost posts as well as content data (code listing comments, user names, and timestamps), this material did not provide the full context of the posts, including captions, hashtags, dates of posting, and geo-tags, nor did it show which comments and captions were associated with each photo. The Board therefore concluded that the lost ESI could not be restored or replaced through additional discovery.

Thus Respondent met the threshold requirements of FRCP 37, the question then being what sanction was appropriate.

Respondent sought the entry of judgment or, alternatively, an adverse inference regarding the content of the lost Instagram posts. However, these "very severe sanctions" are available only when "the party that lost the information acted with the intent to deprive another party of the information's use in the litigation." Fed. R. Civ. P. 37(e)(2) Advisory Committee Notes (2015 Amendment). Negligence or gross negligence does not suffice.

Petitioner asserted that the picture posts were removed as part of an overhaul and update of its Instagram account to coincide with its launch of new products. It also pointed to its efforts to provide Respondent with the deleted material. Respondent offered no evidence to support its claim of willfulness. The Board concluded that Respondent had failed to prove by clear and convincing evidence that Petitioner deleted the posts with the intent to deprive Respondent of this information.

Nonetheless, if a party has been prejudiced by the loss of information, the Board may award "appropriate sanctions" that are "reasonable and just." Here, the Board found the prejudice to Respondent to be "minimal." Respondent did not explain why information regarding the strength of Petitioner's mark, its channels of trade, and the conditions of sale could not be derived from Petitioner's marketing materials, products, e-commerce website and Amazon.com product pages.

Moreover, because Respondent's registration contained no limitation on channels of trade or classes of consumers, information regarding Petitioner's channels of trade or customers "may ultimately be of minimal importance" and any additional benefit to Respondent from the lost information "is purely speculative."

The Board therefore granted Respondent's motion only to the extent that Petitioner was precluded from relying on the pre-October 2018 Instagram photos and data for any purpose.

Read comments and post your comment here.

TTABlog comment: Petitioner argued that Respondent was required to make a good faith effort to resolve the dispute before filing its motion for sanctions, but the Board disagreed. This was not a motion to compel that would be subject to the requirements of Trademark Rule 2.120(f)(1).

Text Copyright John L. Welch 2019.

Precedential No. 26: TTAB Dismisses Cancellation Proceeding Due to Petitioner's Fabrication of Evidence

Finding that Petitioner Optimal Chemical had perpetrated a fraud on the Board through fabricated evidence and untruthful testimony, the TTAB invoked its inherently authority to sanction Optimal by dismissing its petition for cancellation. Optimal Chemical Inc. v. Srills LLC,2019 USPQ2d 338409 (TTAB 2019) [precedential] (Opinion by Judge George C. Pologeorgis).

In seeking cancellation of seven registrations for the mark BULLY and formatives thereof, for insecticides, pesticides, fungicides, and herbicides, Optimal Chemical relied on its alleged prior common law use of various BULLY marks for pest-control products. 

Spoliation: Respondent Srills LLC asserted that Optimal effectively destroyed relevant evidence by blocking access to certain webpages that Optimal had submitted in attempting to prove priority of use. Spoliation refers to "the destruction or material alteration of evidence or the failure to preserve property for another's use as evidence in pending or foreseeable litigation." Silvestri v. Gen. Motors Corp., 271 F. 3d 583, 590 (4th Cir. 2001). FRCP 37(e) deals with destruction of electronically stored information (ESI). Four elements must be met before sanctions may be considered:

(1) the ESI should have been preserved; (2) the ESI was lost; (3) the loss was due to a party’s failure to take reasonable steps to preserve the ESI; and (4) the ESI cannot be restored or replaced through additional discovery. Fed. R. Civ. P. 37(e); see also Steves & Sons, Inc. v. JELD-WEN, Inc., 327 F.R.D. 96, 104 (E.D. Va. 2018).

The website pages at issue were relied upon in a summary judgment motion filed by Optimal, but by the time Srill's response was due, the pages had been rendered inaccessible. Optimal maintained that it excluded portions of its website from recordation and archival to prevent or minimize security risks to the website. The Board concluded that Optimal's blocking access to this portion of its website was a form of spoliation. However, because there was no evidence of bad faith on the part of Optimal, the Board opted for the lesser sanction of refusing to consider this particular website evidence.

Fabrication: Respondent Srills called into question various invoices submitted by Optimal, as well as website screenshots and an advertisement, all purporting to show Optimal's use of its marks since 2005. Optimal's own press releases contradicted that evidence, as did third-party testimony, including testimony that the sales reflected on the invoices never happened.

The Board found that Srills had established "by clear and convincing evidence that Petitioner participated in a pattern of submitting testimony and evidence which is inaccurate, fabricated, altered, and untruthful in order to demonstrate priority of use, an integral element of its claims of likelihood of confusion." The Board further found that Optimal's actions regarding these documents and this testimony tainted its entire case.

Petitioner’s pattern of litigation misconduct in this proceeding constitutes fraud on the Board and is deserving of such a severe sanction. Although there is other evidence of record that is not subject to Respondent’s construed motion for sanctions, the credibility and authenticity of such evidence has been severely tainted and, therefore, we do not consider it.

The Board, invoking its inherent authority to sanction Optimal, granted Srill's motion for sanctions and dismissed the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: Petitioner was represented by counsel. How did this happen?

Text Copyright John L. Welch 2019.

Precedential No. 25: TTAB Grants Section 2(a) Cancellation Petition: SCHIEDMAYER for Pianos Falsely Suggests a Connection with Petitioner

The Board granted a petition for cancellation of a registration for the mark SCHIEDMAYER for "pianos, namely, upright pianos, grand pianos, and digital pianos," finding that the mark falsely suggests a connection with Petitioner in violation of Section 2(a). The Board rejected Respondents' laches defense, finding that although Petitioner's delay of nearly seven and one-half years before filing its petition for cancellation was unreasonable, Respondents failed to prove any material damage resulting from the delay. Schiedmayer Celesta GmbH v. Piano Factory Group, Inc. and Sweet 16 Musical Properties, Inc., 2019 USPQ2d 341894 (TTAB 2019) [precedential] (Opinion by Judge Michael B. Adlin).


Petitioner manufactures and sells a keyboard instrument known as a celesta. A celesta is similar to a piano, but rather than striking wires the celesta keys strike a metal plate to make sounds. Nonetheless, a celesta resembles a piano and is played as a piano would be played. Petitioner and its CEO, Ms. Schiedmayer, are connected to the original German Schiedmayer family and business known for offering keyboard instruments for some 200 years.

Respondents are Los Angeles piano dealers that retail, but do not manufacture, pianos. They added the SCHIEDMAYER name plate to "no-name" pianos (also known as "stencil pianos") from China, a practice not uncommon in the keyboard instrument field. Respondents sold about 29 SCHIEDMAYER brand pianos from 2007-2018.

Section 2(a): In order to prove its false connection claim under Section 2(a), Petitioner had to show that SCHIEDMAYER is "unmistakably associated with a particular personality or 'persona.'" Univ. of Notre Dame Du Lac v. J.C. Gourmet Food Imps. Co., Inc., 703 F.2d 1372, 217 USPQ 505, 509 (Fed. Cir. 1983).

To make this showing, Petitioner must establish that: (1) the mark is the same as, or a close approximation of, Petitioner’s previously used name or identity; (2) the mark would be recognized as such, in that it points uniquely and unmistakably to Petitioner; 3) Petitioner is not connected with the activities performed by Respondents under the mark; and 4) Petitioner’s name or identity is of sufficient fame or reputation that when Respondents use the mark in connection with their goods or services, a connection with Petitioner would be presumed. Id.; Bos. Athletic Ass’n, 117 USPQ2d at 1495; Bondarchuk, 82 USPQ2d at 1842; Hornby v. TJX Cos., Inc., 87 USPQ2d 1411, 1424 (TTAB 2008); Buffett v. Chi- Chi’s, Inc., 226 USPQ 428, 429 (TTAB 1985).

Because "celesta" merely describe Petitioner's primary product and GmbH is merely its German entity designation, "'Schiedmayer'" is Petitioner's name and identity." The record evidence, including encyclopedia entries, Internet search results, and media mentions, demonstrated that "Petitioner and its instruments are known to and by the public as 'Schiedmayer.'" Respondent's registration is for that same name.

The record evidence also demonstrated that SCHIEDMAYER points uniquely and unmistakably to Petitioner. Respondents' use of SCHIEDMAYER is "strong evidence that they seek to draw a connection between their goods and Petitioner, the prominent source of SCHIEDMAYER keyboard musical instruments in the United States." In fact, Petitioner is the only entity that SCHIEDMAYER could possibly identify. Respondents conceded that they are not connected to Petitioner in any way.

Finally, the evidence established that SCHIEDMAYER is famous in the United States in connection with keyboard musical instruments. The Board rejected Respondents' argument that, although Petitioner may have some level of fame for celestas and glockenspiels, that fame does not carry over to pianos. It noted that the difference between pianos and these keyboard instruments are "internal, mechanical, and perhaps not even noticeable or known by some consumers." In light of Respondents' use of SCHIEDMAYER, the Board "'may draw an inference that [Respondents] inten[d] to create a connection with' Petitioner, and that the public would make the false association. In re Peter S. Herrick, P.A., 91 USPQ2d at 1509 (citing In re N. Am. Free Trade Ass’n, 43 USPQ2d 1282, 1285 (TTAB 1997) (quoting Univ. of Notre Dame, 217 USPQ at 509))."

The Board found that Petitioner had satisfied all four elements of the Section 2(a) test, and that Respondents' mark falsely suggests a connection with Petitioner.

Laches: The defense of laches requires proof of (1) unreasonable delay in asserting one’s rights against another; and (2) material prejudice to the latter resulting from the delay. Lincoln Logs, 23 USPQ2d at 1703. "[L]aches begins to run from the time action could be taken against the acquisition by another of a set of rights to which objection is later made. In an opposition or cancellation proceeding the objection is to the rights which flow from registration of the mark." Nat’l Cable Television Ass’n v. Am. Cinema Editors, Inc., 937 F.2d 1572,
19 USPQ2d 1424 (Fed. Cir. 1991).

Here, the petition for cancellation was filed nearly seven and one-half years after the challenged registration issued: "fairly long, and in the absence of extenuating circumstances or an excuse, unreasonable." Petitioner provided no excuse for its delay, and so the Board found the period of delay unreasonable.

However, Respondents failed to prove material damage resulting from the delay. Their only evidence was a "general recollection" that Respondents sold at most 17 SCHIEDMAYER-labeled pianos between issuance of the registration and the filing of the cancellation petition.

Respondents’ claim of prejudice rings hollow where the only direct, marginal expense incurred in selling SCHIEDMAYER-labeled pianos is buying the SCHIEDMAYER labels from trophy or decal makers. Indeed, virtually all of the money Respondents spent to offer SCHIEDMAYER-labeled pianos related to acquisition of the no-name pianos themselves, which could just as easily be labeled something else.

In sum, Respondents failed to show "any meaningful economic or other damage" or any significant change of position resulting from Petitioner’s delay. Consequently, they failed to meet their burden of establishing that the petition is barred by laches.

Conclusion: The Board granted the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: I love that Billy Joel tune, "Celesta Man."

Text Copyright John L. Welch 2019.

ABA-IPL Trademark Day: September 18, 2019 at the USPTO

ABA-IPL Section and the U.S. Patent and Trademark Office (USPTO) will host the 7th Annual ABA-IPL Trademark Day on Wednesday, September 18, 2019 at the USPTO headquarters in Alexandria, Virginia. [Register here]. Some of the topics for new trademark practitioners include an introduction to TTAB practice and a review of best practice tips; topics for experienced practitioners include sessions on non-traditional marks and on how to make effective arguments at the TTAB. The afternoon session will feature a live TTAB Inter Partes or Ex Parte Hearing. CLE credit will be available for this one-day program, involving two tracks of programming: one track covering topics for new practitioners and the other covering topics for experienced practitioners. [More details in this flyer].

Speakers will include Commissioner for Trademarks Mary Boney Denison and Chief Administrative Trademark Judge Gerard F. Rogers, TTAB Judge Michael Adlin, and TTAB Interlocutory Attorneys Catherine Faint and Elizabeth Winter. A more detailed agenda may be found here. 
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Last Call: AIPLA Trademark Roundtable in Boston: Sept. 17th

The American Intellectual Property Law Association (AIPLA) and Foley Hoag LLP are hosting a trademark roundtable discussion in Boston on September 17th, from 11:45 AM -2:00 PM, at the Foley Hoag offices. Details and registration information here. Registration fee is $20 and lunch will be served! How can you beat that?

The roundtable will feature USPTO officials Meryl Hershkowitz (Deputy Commissioner for Trademark Operations, United States Patent and Trademark Office) and Larry Stanley (Interlocutory Attorney, Trademark Trial and Appeal Board).

Topics will cover a range of USPTO trademark operations, procedures, and policies, including the recent and upcoming changes to representation of foreign applicants, specimen requirements, and other initiatives intended to secure the integrity of the trademark register.

The format will be an open roundtable discussion. Attendees may also submit questions/topic proposals in advance by contacting my friend and Foley Hoag partner Joshua Jarvis (see the link above).
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Single Book Title Fails to Function as a Trademark, Says TTAB

The Board affirmed a refusal to register THE NEUROTIC PARENT’S GUIDE (in standard characters, with GUIDE disclaimed), finding that it fails to function as a trademark for "Publications, namely, books on the subjects of colleges and college admissions." Rejecting a recent non-precedential Board decision [TTABlogged here] indicating that a single book title is merely descriptive and therefore eligible for registration via Section 2(f), the Board stated: "The title of a single work is ... unregistrable even if an applicant submits proof of acquired distinctiveness." In re Rothman, Serial No. 85945757 (September 10, 2019) [not precedential] (Opinion by Judge David K. Heasley).

The TTAB has (almost always) followed the principle laid down by the CAFC in Herbko v. Kappa Books that the title of a single work is not registrable as a trademark. "The policy behind this is clear. Because a trademark can endure for as long as the trademark is used, at the point that copyright protection ends, others have the right to use the underlying work, they must also have the right to call it by its name."

Although the title of a single work is unregistrable, the name for a series of works is eligible for registration because it functions as a trademark: it indicates that each work in the series comes from the same source. Examples are THE MAGIC SCHOOL BUS, ENCYCLOPEDIA BROWN, HARDY BOYS ADVENTURES, and NANCY DREW.

Applicant Judith Rothman argued that her book and her blog, The Neurotic Parent, constitute a series of works and therefore the proposed mark is registrable. Examining Attorney Amy E. Thomas maintained that, to be a series, the works must be in the same medium. The Board disagreed: "[t]he issue is not whether the creative works appear in the same medium; it is whether they would tend to be associated with a single source in the mind of the relevant public."

The problem here "lies with the titles and the contents of the blog and book." (emphasis by the Board). The mark THE MAGIC SCHOOL BUS was followed by additional words on each different work: for example, THE MAGIC SCHOOL BUS above the phrase AT THE WATERWORKS in smaller type. Thus the words THE MAGIC SCHOOL BUS created a separate impression from the complete title.

Here, Applicant Rothman is not seeking to register the common characteristic in the titles. She seeks to register the title of the book THE NEUROTIC PARENT'S GUIDE.

The book title, as shown in Applicant’s specimen of use, does not prominently display the words THE NEUROTIC PARENT in a way that would make a commercial impression separate and apart from THE NEUROTIC PARENT’S GUIDE. That is the opposite of the holding in the THE MAGIC SCHOOL BUS case.

With regard to contents, the Board noted that in the SCHOOL BUS series, each book varied in content: e.g., a trip to a cloud or to the center of the earth. "Those variations in content are important in establishing a series. If the content were the same, albeit in different formats, the work would be considered a single creative work, not a series."

As to Rothman's book and blog, she contended that although both concerned colleges and college admissions, the book includes some blog posts but also additional, unpublished creative content. However, she failed to provide evidence to support that contention, and so the Board was unable to find that the book and blog constitute a series."

Conclusion: "While it is possible for titles of creative works in different media to form a series, the evidence of record in this case does not show that the applied-for mark is the title of the claimed series, or that the content of the creative works differs sufficiently to create a series."

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: What's next for Ms. Rothman? File a new application for "a series of works ..." and submit more evidence? Could she add evidence in an appeal by way of civil action?

Text Copyright John L. Welch 2019.

TTAB Affirms Rejection of Specimens That Do Not Associate the Mark with the Goods

The Board affirmed a refusal to register the alleged mark SLEEP HYGIENE CYCLE on the ground that Applicant's specimens of use failed to show use of the mark with the identified goods: nutritional supplements. In re Physician's Seal, LLC, Serial No. 87169253 (September 6, 2019) [not precedential] (Opinion by Judge Thomas W. Wellington).

Examining Attorney Alicia Collins Edwards maintained that the term REMFRESH appears prominently on Applicant's website, not the proposed mark, but Applicant argued that when one scrolls down the page, the phrase "Sleep Hygiene Cycle" appears in the nature of a tagline. Applicant also submitted a photograph of the insert to its packaging, but the Examining Attorney rejected that specimen as well, asserting that "the average consumer viewing the mark as shown on the [second] specimen would view it as information about goods sleep habits being provided ... rather than attributing thereto the special significance of a trademark to distinguish the applicant's goods from the goods of others." She also pointed out that product inserts are generally not acceptable as trademarks.

The Board found the "key issue" to be not the format of the specimens, but the the manner in which SLEEP HYGIENE CYCLE is used on the specimens. The Board agreed with the Examining Attorney that consumers "will not directly associate the proposed mark with the involved goods in a manner that would indicate the source of the goods."

As to the product insert, the phrase appears in the middle of the "Frequently Asked Questions" portion, embedded in the response to "What is the best way to support my sleep." According to the Board, [t]his is far from the prominent use needed to clearly associate the proposed mark with the identified goods. More importantly, the proposed mark only points to a suggested program for getting better sleep, not the underlying goods."

As to the first specimen, Applicant pointed to In re Dell,Inc., 71 USPQ2d 1725 (TTAB 2004), where the mark QUIETCASE was not the primary mark displayed on the webpage specimen. The Board pointed out, however, that the mark QUIETCASE was clearly identifying the "internal cases for computer hardware." Here, there is no such direct association with Applicant's supplements. "At most, consumers will perceive the proposed mark as being used in connection with the offering of advice for obtaining better sleep which is given in conjunction with Applicant's REMfresh-brand products."

Ultimately, the first and second specimens do not demonstrate use of the mark on or in connection with the goods in commerce because they do not directly associate the mark with the goods. Because the requirement to submit an acceptable specimen showing use of the mark in commerce has not been met, registration must be refused under Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051 and 1127.

And so the Board affirmed the refusal to register.

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TTABlog comment:  WYHA?

Text Copyright John L. Welch 2019.

TTAB Sustains Section 2(e)(1) Opposition, Finding "IR DEFENSE" Merely Descriptive of Protective Beauty Serums

In this Section 2(e)(1) opposition, the Board agreed with Opposer Christie Brinkley Skincare that Applicant Alumier's alleged mark IR DEFENSE is merely descriptive of "beauty serums that provide protection against infrared radiation" [IR disclaimed]. Alumier pointed to Opposer Brinkley's own application for the same mark for cosmetics that provide IR protection, where Brinkley feebly argued that IR DEFENSE is not merely descriptive. The Board brushed aside that argument. Christie Brinkley Skincare, LLC v. Alumier Europe Ltd., Opposition No. 91229847 (September 6, 2019) [not precedential] (Opinion by Judge Michael B. Adlin).

Dictionary definitions, a thesaurus entry, an Internet article, and Alumier's own identification of goods left the Board with no doubt that IR DEFENSE is merely descriptive of Alumier's product.

Opposer Brinkley, in its own application to register IR DEFENSE, argued that the term is not merely descriptive for its sun-protective cosmetics because its goods "cannot immediately be identified simply by viewing the subject mark." [LOL - ed.]. The Board pointed out that that is not the correct test for mere descriptiveness.

Indeed, "[t]he question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them." DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, 64 USPQ2d at 1316-17).

Here, consumers who know what Alumier's goods are will immediately understand that the proposed mark directly describes their stated purpose: to defend a user's skin against IR radiation. The Board observed that the term should remain available for others to describe their competing products and services.

And so the Board sustained the opposition.

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TTABlog comment: Brinkley also owns applications for RECAPTURE DAY + IR DEFENSE and RECAPTURE 360 + IR DEFENSE, in both of which IR DEFENSE is disclaimed. Those applications were blocked by Alumier's application for IR DEFENSE.

Text Copyright John L. Welch 2019.

TTABlog Test: How Did These Three Recent Section 2(d) Appeals Come Out?

Here are three very recent TTAB decisions in Section 2(d) appeals, decided on the same day. I'm not giving any hints, so you're on your own. How do you think these appeals came out? [Answer in first comment].

In re Smith & Wesson Corp., Serial No. 87390227 (September 4, 2019) [not precedential] (Opinion by Judge Albert Zervas). [Section 2(d) refusal of M&P SHIELD for knives, can openers, hatchets, and machetes, in view of the registered mark SHIELD for "knives"].

In re EP Family, Corp., Serial Nos. 87561113 and 87561116 (September 4, 2019) [not precedential] (Opinion by Judge Thomas W. Wellington). [Section 2(d) refusal of the mark CHA4TEA in standard character and stylized form (below left) for "Instant tea; Tea," in view of the registered mark CHA FOR TEA and design (below right) for "Food preparation services; preparation of food and beverages; provision of food and drink in restaurants; restaurant services, including sit-down service of food and take-out restaurant services; restaurant services, namely, providing of food and beverages for consumption on and off the premises; serving of food and drink/beverage" [CHA and FOR TEA disclaimed].

In re Monsieur Touton Selection Ltd., Serial No. 87874805 (September 4, 2019) [not precedential] (Opinion by Judge Peter W. Cataldo). [Section 2(d) refusal of the mark PACIFIC VIEW VINEYARDS for wine [VINEYARDS disclaimed], in view of the registered mark PACIFIC VISTA for wine].

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TTABlog comment: How did you do? See any WYHAs?

Text Copyright John L. Welch 2019.