TTAB Posts March 2021 (Video) Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled five (V) oral hearings for the month of March 2021. The hearings will be held via video conference. Briefs and other papers for each case may be found at TTABVUE via the links provided.

March 11, 2021 - 10 AM: In re Grupo Bimbo, S.A.B. de C.V., Serial No. 87408465 [Refusal to register the purported mark ARTESANO for "pre-packaged sliced bread," on the ground of genericness or, alternatively, mere descriptiveness (and lack of acquired distinctiveness].

March 17, 2021 - 2 PM: In re Monrovia Nursery Company, Serial No. 88559348 [Section 2(d) refusal to register COLORIFIC for "Live plants, namely, Echinacea and excluding fresh vegetables, for sale online and in garden centers and mass merchants" in view of the identical mark registered for "fresh vegetables"].

March 18, 2021 - 1 PM: In re L-Nutra, Inc., Serial No. 88171365 [Section 2(e)(1) mere descriptiveness refusal of FASTING BAR for "Nutritionally balanced prepared meals for medical use consisting primarily of grains, nuts and vegetables; nutritional meal replacement snacks adapted for medical use."]

March 23, 2021 - 11 AM: Jeffrey Kaplan v. Faulding Healthcare (IP) Holdings, Inc., Cancellation No. 92060205 [Petitioner for cancellation of two registrations for the mark  SEA & SKI for suntan lotions, on the ground of abandonment].

March 31, 2021 - 11 AM: In re Ultra Pro International, LLC, Serial No. 87570853 [Section 2(d) refusal to register CHROMAFUSION for plastic protective sleeves for trading cards in view of the registered marks CHROME, TOPPS CHROME, and BOWMAN CHROME for "trading cards."

Read comments and post your comment here.

TTABlog comment: Any predictions? See any WYHA?s

Text Copyright John L. Welch 2021.

TTABlog Test: Which One of These Mere Descriptiveness Refusals Was Reversed?

The TTAB recently decided the appeals from the three Section 2(e)(1) mere descriptiveness refusals summarized below. Actually, two involved disclaimer requirements. One of the refusals was reversed. Which one? [Answer will be found in the first comment.]


In re Pan American Properties, Corp., Application Serial No. 88277015 (February 10, 2021) [not precedential] (Opinion by Judge Elizabeth A. Dunn). [Mere descriptiveness refusal of SANGRIIITA. (in standard characters) for "alcoholic beverages except beers; prepared alcoholic cocktail." Applicant argued that because it owns registrations for SANGRIIIA and GASOLINA SANGRIIIA, consumers will perceived SANGRIIITA as a member of that family of marks and not as descriptive term referring to a cocktail known as a sangrita].

 

In re Viromare Design LLC, Serial No. 87705193 (February 19, 2021) [not precedential] (Opinion by Judge Peter W. Cataldo). [Requirement for disclaimer of PASTA THE ORIGINAL PASTA DONUT in the mark POP PASTA THE ORIGINAL PASTA DONUT for "pasta, non-pastry, non-fried prepared pasta pressed in the shape of a donut and baked, hand-held non-pastry, non-fried prepared pasta product made by shaping and baking pasta." Applicant argued that it coined the term "pasta donut," and further that the mark as a whole is unitary.]

In re Walmart Apollo, LLC, Application Serial No. 88040421 (February 22, 2021) [not precedential] (Opinion by Judge Karen S. Kuhlke). [Requirement for disclaimer of TECH in the mark SUPER TECH for air filters for automobiles. Applicant maintained that "'tech' is primarily an abbreviation for 'technical' or 'technician'" and in the context of Applicant’s goods "conveys that purchasers of the underlying goods are 'super technicians' or, more specifically, super automotive technicians."]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2021.

TTABlog Test: Is MS. INTERNATIONAL Confusable With MISS INTERNATIONAL for Beauty Pageant Services?

The USPTO refused to register the mark MS. INTERNATIONAL for beauty pageant services featuring women "26 years of age and up" [INTERNATIONAL disclaimed], finding a likelihood of confusion with the registered mark MISS INTERNATIONAL for beauty pageant services featuring "single women" [two registrations, INTERNATIONAL disclaimed]. The Board found that the services overlap and presumably travel in the same trade channels to the same classes of consumers. But what about the marks? They are pretty close, aren't they? In re Ms. America Pageant, Serial No. 87820883 (February 22, 2021) [not precedential] (Opinion by Judge Christen M. English).

The Board first considered the strength of fame of the cited mark. The record evidence included:

• approximately 15 third-party use-based registrations incorporating the term “international” for beauty pageants wherein the term “international" has been disclaimed or the mark is registered on the Supplemental Register;
• approximately 10 third-party use-based registrations for marks incorporating both the terms “Miss” and “international” for beauty pageants wherein the term “international” has been disclaimed or the mark is registered on the Supplemental Register;
• more than 15 marks in use for beauty pageants incorporating the term “international”
• more than 60 marks in use for beauty pageants incorporating the terms “Miss” and “international”; and
• approximately 8 marks in use for beauty pageants incorporating the terms “Ms.” and “international.”
  
  

As to commercial strength, in addition to the registrations listed above, "the evidence shows that it is common for beauty pageant marks to comprise or incorporate a female courtesy title and the geographic indicator 'international.'" The Board therefore found that the mark MISS INTERNATIONAL is "conceptually and commercially very weak."

As to the marks, the Board found them to be similar in appearance and sound, but different in meaning and commercial impression:

Because the word “Ms.” is intentionally ambiguous as to a woman’s marital status, it can be substituted grammatically for the word “Miss” to refer to an unmarried woman, but the meanings of the terms are specifically different and culturally significant. In addition, the ubiquitous third-party use and registration discussed in the preceding section demonstrates that in the beauty pageant industry, the female courtesy titles “Miss” and “Ms.” refer to different competition categories and eligibility requirements. Accordingly, the words convey different shades of meaning to consumers of beauty pageant services.

This DuPont factor weighed slightly in favor a finding of likely confusion.

With regard to customer sophistication, the Board agreed with the Examining Attorney that contestants and advertisers will be "sophisticated" [i.e., discerning or careful - ed.] in choosing their pageants, "[b]ut not all of the general public spectating beauty pageants will have a familiarity with the beauty pageant industry or otherwise be sophisticated about beauty pageants." 

Since the two pageants have been in operation for the past ten years without any evidence of actual confusion, that factor weighed "somewhat" in Applicant's favor.

Under the eleventh DuPont factor, Applicant established extensive and continuous use of its mark for ten years, but because "there is ubiquitous use and registration of marks for beauty pageants incorporating a female courtesy title and the term “International,” including the third-party mark INTERNATIONAL MS, this factor is neutral or only slightly favors Applicant.

The Board concluded that "the extreme weakness of the cited mark and absence of actual confusion despite nearly ten years of 'extensive' and 'continuous' contemporaneous use are controlling here. It therefore found confusion not likely, and so it reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: You've seen one pageant, you've seen them all.

Text Copyright John L. Welch 2021.

TTABlog Test: Is QUERCUS COFFEE for Coffee Confusable With QUERCUS for Wine?

The USPTO refused to register the mark QUERCUS COFFEE for coffee [COFFEE disclaimed], finding a likelihood of confusion with the registered mark QUERCUS for wine. Not surprisingly, the Board found the marks to be "highly similar." But what about the goods? Are wine and coffee related? In re Quercus Coffee LLC, Serial No. 88484601 (February 16, 2021) [not precedential] (Opinion by Judge Jyll Taylor).

Examining Attorney Crystal Yi maintained that coffee and wine are indeed related because they commonly emanate from a single source under the same name. She made of record a number of websites offering both products under the same mark: H & L (stylized), Harry & David, Hoodsport, Biltmore and Biltmore Estate, Fly Creek, Cherry Republic, Devils Gulch Ranch, Nocking Point NP, PB Pepper Bridge Winery and Vampire. She also submitted twenty use-based, third-party registrations showing registration of the same mark by a single entity for both coffee and wine. This evidence convinced the Board that coffee and wine are related for Section 2(d) purposes.

Applicant feebly argued that confusion is not likely because the goods are not identical. The Board brushed aside that assertion and, noting that the applicant and cited registration have no limitations on channels of trade or classes of consumers, found that the goods travel in overlapping trade channels (online and specialty food stores and wineries) to the general public.

Applicant insisted that the involved consumers are "well educated and not likely to purchase on impulse." However, there were no such limitations in the application or cited registration, and the Board must therefore make its determination based on the least sophisticated purchaser. Moreover, coffee and wine may be relatively inexpensive, "ranging from $15-$25 for roasted coffee and some wines offered at similar prices." Thus these products may be subject to impulse buying. 

In any case, "with identical or similar marks used on such goods, even a careful, sophisticated consumer of these goods is likely to believe that the goods emanate from a common source."

Applicant pointed to the lack of evidence of fame for the QUERCUS mark, but the Board pointed out that the registrant has no opportunity to prove fame in an ex parte proceeding, and so fame is a neutral factor in the DuPont analysis. For the same reason,  the lack of evidence of actual confusion is of little probative value.

The Board concluded that confusion is likely and it therefore affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: Specialty shop and wineries shouldn't count, I think. If you are in one of those, you expect the house mark to appear on everything. Not so in a supermarket.

Text Copyright John L. Welch 2021.

Recommended Reading: Professors Farley on Genericness, Boyle and Jenkins on University Brand Bullies

In my role as a trademark thought leader (LOL!), I recommend two recent articles that caught my interest and I think will catch yours. Professor Christine Haight Farley of American University's Washington College of Law explains why she is less than thrilled with the Supreme Court's "booking.com" decision. Professors James Boyle and Jennifer Jenkins of Duke University School of Law examine the phenomenon of brand bullies cloaked in academic robes. Links to their respective articles are found below.

Christine Haight Farley, Trademark Law’s Monopoly Problem: The Supreme Court on Generic Terms as Trademarks, Landslide Magazine, Vol. 13, No. 3, January/February 2021. ["Generic.coms present an even greater risk of monopoly powers than a Generic Corp. does. As the dissent in the Fourth Circuit correctly stated, '[t]his case addresses a problem that Booking.com chose to bring upon itself.' The adoption of a generic term as a trademark always involves a problem of the applicant’s own creation. Now, however, in the case of a generic.com, the applicant gets to have it both ways without having to make the usual trade-off between trademark rights and instant communication of the business offerings. Whereas the doctrine of trademark genericity follows the saying that you can’t have your cake and eat it too, the Booking.com rule allows a generic.com that purchases a pricey cake to grab the key to the bakery."]

 

James Boyle and Jennifer Jenkins, Mark of the Devil: The University as Brand Bully, Fordham Intellectual Property, Media & Entertainment Law Journal (Forthcoming). ["We lack both an empirical account of major aspects of the landscape, and a rigorous case study giving individualized, almost ethnographic, information about what the accused academic trademark bullies think they are doing. What are their legal arguments and how would impartial experts assess those claims? What is their intellectual property world-view, their idea of the role that trademarks have in the university’s mission? In this article, we attempt to provide an answer to those questions."]

Read comments and post your comment here.

Text Copyright John L. Welch 2021.

TTAB Seeks Applicants for Attorney Advisor (Interlocutory Attorney) Position

The USPTO is seeking applications for the position of Attorney Advisor (and more specifically, Interlocutory Attorney) at the TTAB. The detailed announcement may be found here. Applications are due by February 25, 2021.

This position is located in the Trademark Trial and Appeal Board (TTAB). As an Interlocutory Attorney in the TTAB, the duties are, but not limited to:

• Analyzing the legal issue in question, developing the strategy to deal with the legal issue, and determining the content and means of delivery of the completed analysis of the legal issue.
• Managing interlocutory matters in oppositions, cancellations and concurrent use cases at the TTAB.
• Serving as a recognized expert in the procedural and substantive aspects of the law, mentoring and coaching others.
• Independently deciding and issuing orders on all procedural and substantive motions that are not potentially dispositive of the proceeding, such as motions to amend pleadings, motions to compel and motions to strike evidence.
• Consulting with and drafting decisions for Administrative Trademark Judges on all procedural and substantive motions that are potentially dispositive of the proceeding, such as motions to dismiss, motions for judgment on the pleadings, and motions for summary judgment.
• Working with Administrative Trademark Judges and the top management of the TTAB, as well as the top management and/or attorneys of other private and public organizations

Text Copyright John L. Welch 2021.

Precedential No. 2: "BURNS NIGHT" Whiskey Opposition Survives Rule 12(b)(6) Motion to Dismiss

The Scotch Whisky Association opposed an application to register the mark BURNS NIGHT for "Malt whisky; Whiskey" on two grounds: geographically deceptive misdescriptiveness under Section 2(e)(3), and deceptiveness under Section 2(a). The Board had denied Applicant ASW's Rule 12(b)(6) motion to dismiss for failure to state a claim, but on reconsideration granted the motion in part. It ruled that the Association had failed to plead a claim under Section 2(e)(3) and under the "wines and spirits" provision of Section 2(a), but did sufficiently plead a claim under the general deceptiveness portion of that Section. The Scotch Whisky Association Ltd. v. ASW Distillery, LLC, Opposition No. 91252682 (February 16, 2021) [precedential]. 

Section 2(a): ASW argued that the Board erred in allowing opposer's claim under the more general deceptiveness provision of Section 2(a) because, it asserted, only the portion that specifically pertains to wines and spirits should apply here, and the Association failed to satisfy that portion. Section 2(a), in pertinent part, reads as follows:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

(a) Consists of or comprises … deceptive … matter; … or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after [January 1, 1996].

The Board disagreed. First, it observed that "the plain language of the general deceptiveness provision does not exclude wines and spirits, and that provision has previously been held to apply to spirits." See In re Spirits Int'l, N.V., 562 F.3d 1347, 90 U.S.P.Q.2d 1489 (Fed. Cir. 2009). As to ASW's argument that the addition of the "wine and spirits" provision in 1996 made the general provision inapplicable, the Board pointed out that this language was added as a result of the implementation of TRIPS in order to provide "[a]dditional [p]rotection" for wines and spirits. Congress did not say that this addition rendered the general portion of the Section 2(a) descriptiveness provision inapplicable. Nor did Congress overrule the decision in Scotch Whiskey Ass’n v. U.S. Distilled Prods. Co., 952 F.2d 1317, 21 .U.S.P.Q2d 1145, 1146-7 (Fed. Cir. 1991), which applied the general provision in a case involving the mark MACADAMS for whisky. 

The Board agreed, however, that opposer failed to state a claim under the "wines and spirits" portion of Section 2(a), which specifically refers to a "geographical indication" that "identifies a place."

The Notice of Opposition alleges only that the involved mark BURNS NIGHT “is highly evocative of Scotland when used on a whisky product” because the mark refers to celebration of Scottish poet Robert Burns’ birthday (1 TTABVUE 5, paragraph 7). While Opposer, in the ESTTA cover form of the notice of opposition, alleges that the mark is a “[g]eographic indication which, if used on or in connection with wine or spirits, identifies a place other than the origin of the goods” (1 TTABVUE 1), the mere general mention of a claim in the ESTTA cover form for a complaint is insufficient to plead that claim. See Embarcadero Techs. Inc. v. RStudio Inc., 105 U.S.P.Q.2d 1825, 1827 n.2 (T.T.A.B. 2013).

The Board nevertheless found these allegations sufficient to plead a claim under the general deceptiveness provision of Section 2(a).

Robert Burns

Section 2(e)(3): A mark is primarily geographically deceptively misdescriptive when (1) the primary significance of the mark is a generally known geographic location, (2) the goods or services do not originate in the place identified in the mark, and (3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark, and the misrepresentation is a material factor in a significant portion of the relevant consumer’s decision to buy the goods or use the services. See In re Miracle Tuesday, LLC,  695 F.3d 1339, 1343, 104 U.S.P.Q.2d 1330, 1332 (Fed. Cir. 2012).

ASW contended that a required element for a Section 2(e)(3) claim is missing from the Notice of Opposition: that the primary significance of the mark is a generally known geographic location. The Board agreed, and so it dismissed this claim.

Conclusion: The Board granted the request for reconsideration as to the "wines and spirits" and the Section 2(e)(3) claim but denied it otherwise. The association was allowed twenty days "to file an amended notice of opposition in accordance with the foregoing." [Presumably meaning that the Association may add the required geographical language to its rejected claims].

Read comments and post your comment here.

TTABlogger comment: Do you think BURNS NIGHT has a geographical connotation? I never even heard of it.

Text Copyright John L. Welch 2021.

TTABlog Test: Is CAVIAR & CASHMERE Deceptive for Skin Care Products?

The USPTO issued a trifusal(TM) for the proposed mark CAVIAR & CASHMERE for "non medicated skin care and related personal care and cosmetic products," finding the mark to be deceptive under Section 2(a), or alternatively, not registrable under Sections 2(e)(1) and 6(a) without disclaimer of the deceptively misdescriptive term CAVIAR. Applicant, pointing to the Board's CANINE CAVIAR decision (TTABlogged here), contended that consumers will not believe that the goods actually contain caviar, but rather will see the phrase as indicating superiority and luxury. How do you think this came out? In re Chase Investments, Inc., Serial No. 88042209 (February 11, 2021) [not precedential] (Opinion by Judge Michael B. Adlin).

Section 2(a) Deceptiveness: Section 2(a), in pertinent part, bars registration of a mark that is deceptive as to the goods or a feature or ingredient thereof. Specifically, a mark is deceptive when:

(1) it misdescribes the character, quality, function, composition or use of the goods;

(2) prospective purchasers are likely to believe that the misdescription actually describes the goods; and

(3) the misdescription is likely to affect the purchasing decision of a substantial portion of consumers.

Examining Attorney Christina M. Sobral submitted "evidence from a number of sources, showing that caviar is perceived as having benefits for the skin, and that many skin care products include caviar as an ingredient." Here search of Sephora’s website for “caviar” yielded 68 skincare and related products, and the same search of Ultra Beauty’s website yielded 72. 

Applicant admitted that its products do not contain caviar, but it pointed out that the word caviar means not only the salted roe of a sturgeon or other large fish, but also “something considered the best of its kind." Applicant also noted several registrations for mark containing the word "caviar," including MYOXY CAVIAR for skin care creams and lotions.

According to applicant, caviar is seldom if ever used in skin care products, and in any case CAVIAR & CASHMERE is : (1) a double entendre, suggesting “the chic, luxuriousness of cashmere and caviar; caviar;” (2) incongruous, because caviar “is not a common ingredient in skin care; care;” and (3) unitary, because it “has 6 syllables and appears in a pleasing symmetrical structure both portions beginning with ‘CA’ and relating to luxury goods.”

The Board found that a many skin care products contain caviar and, since applicant's products do not, the term CAVIAR is misdescriptive of them. 

We recognize that both “caviar” and “cashmere” are luxury goods, and that because they do not appear to have anything in common, the proposed mark CAVIAR & CASHMERE in its entirety could convey, at least in the abstract, “a feeling of superiority and luxury.” Nonetheless, because our task is not to consider the mark in the abstract, but in the context of skincare goods (which according to the record often include caviar), we find that at least one meaning of the proposed mark is misdescriptive. 

Moreover, even if CAVIAR & CASHMERE conveys “a feeling of superiority and luxury” to some consumers, that may reinforce the message that the products contain caviar, a luxury good used in skincare products. 

As to the double entendre and unitary marks arguments, the Board was unmoved. As to the former argument, "even if the proposed mark calls to mind the chic, luxuriousness of cashmere and caviar, consumers would still immediately misunderstand the nature of Applicant’s goods and assume they contain caviar when they do not." As to the latter, there was no evidence that the alliteration creates a commercial impression that is more than merely misdescriptive.

Because caviar is a fairly common ingredient in skincare products, consumers would believe that “caviar” identifies an ingredient in Applicant’s goods. In other words, consumers are likely to believe the misdescription. This contrasts with the CANINE CAVIAR case, where the evidence showed that caviar is almost never used in pet food.

Finally, because the evidence established that caviar is perceived as beneficial for the skin, “the misdescription would make the product or service more appealing or desirable to prospective purchasers.” Therefore, the misdescription is likely to affect the purchasing decision

The three prongs of the deceptiveness test having been met, the Board affirmed the Section 2(a) refusal.

Deceptive Misdescriptiveness and Disclaimer: Because the word "caviar" is misdescriptive of the goods, the Board affirmed the refusals to register under Sections 2(e)(1) and 6(a) in the absence of a disclaimer of CAVIAR.

Read comments and post your comment here.

TTABlogger comment: What would you call it if the Board issued six refusals? Here is a case where the Board affirmed five refusals (or a "quintfusal"?)

Text Copyright John L. Welch 2021.

TTABlog Test: Is BEENDER Confusable With TINDER for Dating App Software?

Pooria Shahin applied to register the mark BEENDER (in standard character form) for "computer application software for mobile phones, namely, software for social introduction and dating," but Match Group, LLC opposed, claiming a likelihood of confusion with, and likely dilution of, its registered mark TINDER (standard form) for overlapping goods. The Board found the TINDER mark to be "very strong" for likelihood of confusion purposes, but not famous for purposes of dilution. But what about the marks? How do you think this came out? [See results of Twitter poll, below] Match Group, LLC v. Pooria Shahin, Opposition No. 91241077 (February 11, 2021) [not precedential] (Opinion by Judge Marc A. Bergsman).

Strength of the TINDER mark: Revenue and usage data, and especially the unsolicited references to TINDER in news articles posted on the Internet, led the Board to find that "TINDER falls on the very strong side of the spectrum of very strong to very weak and, thus, TINDER is entitled to a broad scope of protection."

The Goods: The TINDER registration covered "downloadable software in the nature of a mobile application for internet-based dating and matchmaking," but applicant Shahin (appearing pro se) argued that the involved goods are different:

beender was created because of inadequacy and sketchiness of online dating apps, where you are introduced to strangers. As the opposing party describes in its written argument, TINDER® tries “to decrease creepiness of communicating with strangers”, whereas beender is an app designed to facilitate approaching people you meet in person, and not strangers.

The Board, however, pointed out once again that it must "look to the description of goods in the application and registration, not to extrinsic evidence about the scope of the goods" and, in any case, "Applicant’s argument does not present any meaningful distinction between his software and Opposer’s software: that is, both products seek to make meeting people easier or less difficult."

The Marks: The Board noted that when the involved goods are (in part) identical, a lesser degree of similarity between the marks is required to support a findig of likelihood of confusion. (FWIW, Applicant's drawing depicted the mark in lower case letters (beender), but he did not claim any special form for the mark.)

A mark displayed in standard form is not limited to any particular depiction of the mark. For example, Applicant Shahin displays his mark as follows:  

Opposer, whose registered mark is depicted in standard character form, may display its mark thusly:

[Does this point make any sense? - ed.].

"Under these circumstances, including the renown of Opposer’s mark and the identity of the services, the marks are similar, albeit not identical in appearance."

The Board also found that "beender" could be pronounced as "bender," since the word "been" is pronounced as "ben." [That pronunciation never crossed my mind. I think applicant's mark would be pronounced "bean-der." - ed.] . Despite no apparent supporting evidence, the Board concluded:

[O]n this record, it strains credulity to reject finding that a significant segment of consumers will pronounce Applicant’s mark as rhyming with Opposer’s mark and instead find that consumers will use some alternative pronunciation (although some might).

The Board bent over even further toward opposer when it considered the meanings of the marks. Applicant Shahin maintained that "beender" is a term he coined, derived from the phrase "been there, done that." The Board, however, noted that some dictionaries define "bender" as a slang term meaning “a drinking spree,” and the Urban Dictionary, one website, and one blog post refer to a "tinder bender" as a "string of dates." According to the Board, some users "may believe that beender is a shortened form of 'Tinder Bender." [Where's the proof? - ed.]

Opposer’s contention that “no evidence in the record suggests BEENDER has a commercial meaning different from Opposer’s TINDER® mark” and “consumers are more apt to believe [beender] is an extension or variation of, or otherwise related to, [Opposer’s] famous TINDER® app” is not frivolous. [Doesn't opposer have the burden of proof? - ed.]

The Board therefore sustained the Section 2(d) claim.

Dilution: Opposer's evidence of fame for dilution purposes fell short because it failed to show that the mark is famous to the general public, as opposed to users of mobile dating apps (i.e., niche fame). And so opposer's dilution claim was dismissed.

Read comments and post your comment here.

TTABlogger comment: I'm not convinced. How about you? The results of a Twitter poll that ran for five days:

Text Copyright John L. Welch 2021.

TTAB Reverses Failure-to-Function Refusal of "SAY YES TO WHAT’S NEXT" for Clothing and Religious Books.

The Board said "No" to the USPTO's refusal to register the phrase SAY YES TO WHAT'S NEXT for clothing, religious books, and "Entertainment and educational services, namely, the presentation of seminars, workshops and panel discussions, and ongoing television and radio shows all in the field of women aging and how to improve quality of life in the last quarter of life." The Examining Attorney maintained that the phrase fails to function as a source indicator because it is "a commonplace message or expression” . . . "that merely conveys an ordinary, familiar, well-recognized sentiment." The Board, however, found the USPTO's evidence insufficient. In re Lori Allen Enterprises, LLC, Serial No. 88546889 (February 12, 2021) [not precedential] (Opinion by Judge Cheryl S. Goodman).

“A critical element in determining whether a term or phrase is a trademark is the impression the term or phrase makes on the relevant public.”  “[E]vidence of the public’s perception may be obtained from ‘any competent source, such as consumer surveys, dictionaries, newspapers and other publications.”’

There was no record evidence of applicant's actual use of the mark, and so the Board looked to how others used the phrase in the marketplace. “The more commonly a phrase is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark.”

The examining attorney maintained that this phrase "is widely used by the general public as an affirmation encouraging perseverance and positivity in the face of change” and that "multiple third parties” in a “variety of industries and businesses” use this term or expression as “an affirmation of encouragement to overcome obstacles and embrace change.”

The examining attorney submitted twelve examples of use of the phrase "say yes to what's next." Three were from the same "parenting coach's women/tween group."  The examples  showed use of the phrase “in the context of career, personal, and parenting coaching (3), faith/ministry (2) information about leadership, success, and personal growth (4), and an advertisement about a beverage (1)." Another example came from a career coach website and a post about virtual small business coaching for women entrepreneurs.

The Board observed that evidence of use "by media and businesses in a variety of industries may be probative, and it is not necessary that the evidence show use by competitors of Applicant." However, "the evidence must be sufficiently widespread to show that the public would not perceive it as a trademark."

The Board concluded that the USPTO's evidence fell short:

The record evidence does not show use in connection with any of the type of goods (religious books and women’s clothing) or services (workshops, seminars, panels, radio and television shows related to women’s aging and improving quality of life) identified by Applicant, although it does show de minimis use in connection with ministry/faith groups and programs related to women’s growth and success. In this case, the Examining Attorney’s evidence does not rise to the level of demonstrating that use of “say yes to what’s next” is so common or widespread that the consuming public would view it as a common place expression or sentiment. See Eagle Crest, 96 USPQ2d at 1230 (voluminous evidence of third-party use). Therefore, based on the present record, the Examining Attorney has not met his burden to establish that Applicant’s applied-for mark, SAY YES TO WHAT’S NEXT, fails to function as a mark.

And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: How many third-party uses is too many? PS: I think the term "applied-for mark" should be banished.

Text Copyright John L. Welch 2021.

Rocker Switch Actuator Configurations Lack Acquired Distinctiveness, Says TTAB

The Board affirmed refusals to register the two product configuration marks shown below (claimed design shown in solid lines), for "“actuators for rocker switches," on the ground that Applicant Carling Technologies failed to prove that the designs had acquired distinctiveness under Section 2(f). Although Carling's design patent ensured exclusive use of the designs for fourteen years (2002-2016), the Board pointed out that long and exclusive use of a proposed mark does not necessarily mean that acquired distinctiveness has been attained. In re Carling Technologies, Inc., Serial Nos. 88279409 and 88279448 (January 8, 2021) [not precedential] (Opinion by Judge Christopher Larkin).

Under Wal-Mart, product configurations, of course, cannot be inherently distinctive. In determining whether Carling's designs enjoyed acquired distinctiveness, the Board first had to determine the degree of descriptiveness of the designs, Royal Crown Cola Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1048 (Fed. Cir. 2018), and then apply the factors set forth in Converse, Inc. v. ITC, 909 F.3d 1110, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018).

Carling admitted that, once its design patent expired, third parties were “quickly popping up at an alarming rate” to sell rocker switches with actuators that Applicant admits resembled its own. Because there were a significant number of examples in the record, "registrations of the claimed marks 'may not issue except upon a substantial showing of acquired distinctiveness.'"

Carling submitted declarations from two non-parties attesting to the source-identifying significance of the design, but the Board found the declarations to be problematic for two reasons: first, the declarations were obviously prepared by Carling or its counsel, and "the form nature of the declarations reduces their evidentiary value;" and second, the two declarants were not representative of the universe of purchasers of the goods. 

Because many similar-looking actuators are on the market, Carling's 14-years of exclusive use had little probative value. Carling provided copies of advertisements but no data regarding the geographic scope or amount of the advertising nor the amount of expenditures. None of the advertisements directed customers to "look for" the subject design as a source indicator. Although the actuators were depicted in Carling's advertisements, the proposed design marks did not stand out.

Given the emphasis in the industry, and in Applicant’s own materials, on the non-source identifying features of the goods, “for consumers to have any realistic chance of recognizing the applied-for mark[s] in Applicant’s advertising, separate and apart from” the multiple other products, the Carling house mark, and even the other features of the Contura V rocker switches and actuators themselves, “Applicant’s advertising would have to ‘direct[ ] the potential consumer in no uncertain terms to look for’ the applied-for mark[s].”

Carling's sales figures (about $3M per year) were "muddled" because they did not segregate actuators from switches. Moreover, Carling did not place the sales figures in context with others in the industry. In any case Carling's sales may merely reflect the popularity of its products rather than recognition of its proposed marks.

Carling argued that competitors had copied its design and that actual confusion had occurred (consumers had returned defective switches made by others to Carling). The Board pointed out, however, that the confusion evidence related to entire switches, not actuators, and the copying also involved entire switches."[W]e cannot find from this evidence that the particular features of the actuators for which Applicant seeks registration are recognized as Applicant’s marks." Carling's inaction vis-a-vis policing the proposed marks against supposed infringers cut against its claim of acquired distinctiveness.

Although this evidence of copying and product returns had some probative value, it lacked the specificity to show that "the copyists and consumers recognize the specific actuator features for which Applicant seeks registration as Applicant’s marks."

Considering the entire record, the Board concluded that Carling had failed to prove acquired distinctiveness.

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TTABlogger comment: Should the 14-year period of design patent exclusivity count toward acquired distinctiveness? Should the designs fall into the public domain once the patent expired?

 Text Copyright John L. Welch 2021.