Tuesday, June 28, 2016

TTAB Affirms 2(e)(4) Surname Refusal of "DICKMAN'S" for Pickles

The Board affirmed a Section 2(e)(4) refusal of the mark DICKMAN'S for jams, jellies, pickles, and other class 29 goods, finding the mark to be primarily merely a surname. Applicant Enumclaw Farms argued that the number of persons with the surname DICKMAN is an inconsequential portion of the US population, but the Board found that the evidence sufficiently demonstrated that consumers are likely to perceive the mark as a surname. In re Enumclaw Farms LLC, Serial No. 85942195 (June 24, 2016) [nor precedential].

As usual, The Board applied the test set forth in In re Benthin. Applicant stated that "DICKMAN'S is not the proper surname of anyone connected with Applicant," but rather the mark was selected arbitrarily. Applicant conceded that "dickman" has no dictionary meaning.

Examining Attorney John S. Yard submitted LexisNexis results indicating that 1729 persons have the surname DICKMAN. He also submitted more than 100 news articles referring to individuals having that name. Applicant provided data from the 2000 census, revealing 5682 occurrences of the surname DICKMAN, ranking the name as the 5,601st for common surnames.

Finally, the Examining Attorney contended that DICKMAN has the structure of a surname, since "-MAN" is an extremely common suffix in surnames: e.g., Bachman, Goodman, Herman. Moreover, he maintained, the possessive form of the word does not diminish its surname significance, but rather reinforces it.

Applicant pointed out the the Examining Attorney had not provided evidentiary support for his assertion regarding these other names, but the Board deemed the other evidence sufficient to support the refusal. It found that the applied-for mark will be perceived by consumers as primarily merely a surname.

The fact that the number of persons with the surname represents a small percentage of the total U.S. population is inconsequential so long as the evidence sufficiently demonstrates that consumers are likely to primarily understand DICKMAN’S as a surname. In this case, the Examining Attorney has made such a prima facie showing. The evidence shows that the primary and almost exclusive manner in which the public is exposed to the term “dickman” is in the context of it being a surname.

The Board agreed with the Examining Attorney that the possessive ending of the mark reinforced its surname significance because consumers will believe that the identified goods are prepared and sold by someone with the surname "Dickman."

And so the Board affirmed the refusal

Read comments and post your comment here.

TTABlog comment: What do you think? Do you know any Dickmans?

Text Copyright John L. Welch 2016.

Monday, June 27, 2016

CAFC Affirms TTAB: MAYARI Not Confusable With MAYA for Wine

Concluding that substantial evidence supported the Board's finding that the marks MAYARI and MAYA, both for wine, are sufficiently dissimilar to avoid confusion, the CAFC affirmed the Board's dismissal of this Section 2(d) opposition. Although the goods are identical, the channels of trade and classes of consumers are presumed to be the same, and the application and registration encompass inexpensive wines purchased with no more than ordinary care, the first du Pont factor was dispositive. Oakville Hills Cellar, Inc., dba Dalla Valle Vineyards v. Georgallis Holdings, LLC, Appeal No. 2016-1103 (Fed. Cir. June 24, 2016) [precedential].

The CAFC reviews the Board’s legal conclusions without deference and its factual findings for substantial evidence. In re Pacer Tech., 338 F.3d 1348, 1349 (Fed. Cir. 2003). Likelihood of confusion is a question of law based on underlying findings of fact. In re Chatam Int’l Inc., 380 F.3d 1340, 1342 (Fed. Cir. 2004). The determination of likelihood of confusion is based on the factors set forth in DuPont, 476 F.2d at 1361. In assessing the likelihood of confusion, the marks must be considered in their entireties as to appearance, sound, meaning, and commercial impression.

Although the word MAYA has established meanings, there was insufficient evidence to support opposer's assertion that consumers would perceive MAYARI as MAYA- and -RI. "Even assuming that consumers were to dissect MAYARI into separate components, Oakville failed to demonstrate to the Board why the dissection would be 'MAYA-RI,' not 'MAY-ARI' or 'MA-YARI.'"

As to sound, there was no evidence that consumers would emphasize "MAYA" in pronouncing MAYARI.

The evidence supported the Board's finding that MAYA is a familiar word, whereas MAYARI has no recognized meaning to U.S. consumers. The Board did not err in finding that "most customers would likely perceive MAYA as a female personal name or the name of the pre-Columbian civilization" and would "perceive MAYARI as a coinage without meaning."

Accordingly, the Board correctly found that the unfamiliar MAYARI is distinguishable from the familiar MAYA, and that the marks, considered in their entireties, are dissimilar as to appearance, sound, meaning, and overall commercial impression. We also conclude, on this record, that the Board did not err in balancing all relevant DuPont factors and in determining that the dissimilarity of the marks was sufficient to preclude a likelihood of confusion.

The court observed once again that "a single DuPont factor may be dispositive in a likelihood of confusion analysis, especially when that single factor is the dissimilarity of the marks."

Read comments and post your comment here.

TTABlog comment: That pronunciation thing is always a problem for the opposer. How would you prove the common pronunciation of a coined term?

Text Copyright John L. Welch 2016.

Friday, June 24, 2016

USPTO Proposes Changes in Section 8 Affidavit/Declaration Requirements

On Wednesday, June 22nd, the USPTO published a Notice of Proposed Rulemaking entitled "Changes in Requirements for Affidavits or Declarations of Use, Continued Use, or Excusable Nonuse in Trademark Cases," Federal Register, Volume 81, No. 120, pp. 40589-40594 [pdf here]. "Specifically, the USPTO proposes to require the submission of information, exhibits, affidavits or declarations, and such additional specimens of use as may be reasonably necessary for the USPTO to ensure that the register accurately reflects marks that are in use in the United States for all the goods/services identified in the registrations, unless excusable nonuse is claimed in whole or in part." Comments must be received by the USPTO by August 22, 2016, preferably submitted electronically to TTABFRNotices at uspto.gov, or submit comments at the Federal Register website, here.

In order to assess and promote the accuracy and integrity of the trademark register, the United States Patent and Trademark Office (USPTO or Office) proposes to amend its rules concerning the examination of affidavits or declarations of continued use or excusable nonuse filed pursuant to section 8 of the Trademark Act, or affidavits or declarations of use in commerce or excusable nonuse filed pursuant to section 71 of the Trademark Act. *** A register that does not accurately reflect marks in use in the United States for the goods/services identified in registrations imposes costs and burdens on the public. The proposed rules will allow the USPTO to require additional proof of use to verify the accuracy of claims that a trademark is in use in connection with particular goods/services identified in the registration.

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

Thursday, June 23, 2016

TTAB Test: Are “INDI” and “INDY” Confusable for Clothing Items?

The USPTO refused registration of the mark INDI for various clothing items, including shirts and headwear, finding the mark likely to cause confusion with the registered mark INDY for “t-shirts” and “hats.” The goods are, in part, legally identical, but what about the marks? How do you think this came out? In re Strong Current, Ltd., Serial No. 86440263 (June 16, 2016) [not precedential].

The Examining attorney relied on the similarity of the marks in sound and appearance. Applicant conceded that the marks are likely to be pronounced identically and look similar. The Board agreed.

The Board, however, found pivotal the differences in connotation and commercial impression. The primary meanings of INDY are (1) “a form of auto racing” involving a banked, regular, typically oval track, and (2) a nickname for the city of Indianapolis. The mark INDI, with its fanciful spelling, has no such significance. Consequently, consumers are unlikely to assume that the involved goods come from the same source.

And so the Board reversed the refusal.

Read comments and post your comment here.

TTABlog comment: How did you do? I think the marks are confusable. BTW: Guess who owns the INDY registration?

Text Copyright John L. Welch 2016.

Wednesday, June 22, 2016

Fame of Empire State Building Design Mark Yields TTAB Dilution Victory

The Board sustained an opposition to registration of the mark NYC BEER & Design (shown below left), for beers, concluding that the mark is likely to dilute Opposer’s famous design mark depicting the Empire State Building (shown below right). ESRT Empire State Building, L.L.C. v. Michael Liang, Opposition No. 91204122 (June 17, 2016) [not precedential].

Applicant Liang described his mark as including “a building resembling the Empire State Building” and he acknowledged that the building is famous. Opposer relied on, inter alia, two registration for its design mark for entertainment services (the observation deck) and real estate management and leasing services. The registrations described the mark as consisting of “the shape of the exterior of a skyscraper with a pointed, spindled top.”

Since the opposed applications were filed under Section 1(b) based upon intent-to-use, Opposer needed to prove that its marks became famous prior to the filing date of the applications.

The Board observed that fame for likelihood of confusion purposes differs from dilution fame; the latter is not determined in the context of certain goods or services, but rather the dilution claimant ‘must show that when the general public encounters the mark ‘in almost any context, associates the term, at least initially, with the mark’s owner.’”

The evidence established that the Empire State Building was completed in 1 931 and for 40 years was the tallest building in the world. It has been featured in hundreds of movies, including King Kong and Sleepless in Seattle. It features a 103rd floor observation deck visited by millions of guests per year. Opposer’s marks have been used with a wide variety of goods and services, and numerous licenses have acknowledged Opposer’s rights in the marks, with full attribution. Its annual sales revenues and advertising expenditures in connection with the marks are “very significant.” The marks receive extensive media exposure in print, radio, television, and the Internet. The Board therefore found the marks to be famous under Section 43(c)(2)(A).

Turning to the six non-exhaustive factors of Section 43(c)(B)(i)-(vi) for assessing the likelihood of dilution by blurring, Applicant’s witness stated that the building depicted in applicant’s mark is the Empire State Building, and there was no evidence to indicate otherwise. Nor was there any evidence that the marks lack inherent distinctiveness. Opposer’s use of its marks is “substantially exclusive.

There was no direct evidence, such as a survey, showing the level of recognition of the mark, but opposer’s activities in branding, co-sponsorship, and licensing of its design mark support its “its efforts to create maintain recognition not only of the Empire State Building, but of its activities under the mark.” There was no evidence that applicant intended to create an association with Opposer’s mark, nor any evidence of actual association, but as to the latter, applicant has not yet commenced us of his mark.

The Board concluded that applicant’s mark is likely to cause dilution by blurring of Opposer’s design mark. The Board declined to analyze Opposer’s Section 2(a) false association and Section 2(d) likelihood of confusion claims.

Read comments and post your comment here.

TTABlog comment: There are so few TTAB dilution decisions, why wasn't this precedential?

Text Copyright John L. Welch 2016.

Tuesday, June 21, 2016

Precedential No. 17: BLACK MEN ROCK Confusable With BLACK GIRLS ROCK!, Says TTAB

In a case that "illustrates the efficiency of the Board's Accelerated Case Resolution procedure ('ACR')," the Board sustained a Section 2(d) opposition to the mark BLACK MEN ROCK & Design for "caps, hats, jackets, t-shirts" and for "education services, namely, providing live and on-line classes, seminars, workshops in the field of personal development." The Board found the mark likely to cause confusion with the registered mark BLACK GIRL'S ROCK! for "tee shirts," "charitable services, namely organizing volunteer programs for at-risk teenage women of color," and "entertainment, namely, a continuing award show broadcast over television; arranging and conducting of concerts; and entertainment services in the nature of live musical performances." Beverly A. Bond v. Michael Taylor, Opposition No. 91213606 (June 16, 2016) [precedential].

Each party had filed an unsuccessful summary judgment motion, leading the Board to encourage the parties to stipulate to resolution of the proceeding via the ACR procedure. In order to take advantage of ACR, the parties must stipulate that the Board may resolve any genuine disputes of material fact "in the context of something less than a full trial."

The parties agreed to use the Board's ACR procedure, and the Board approved the stipulation of the parties as follows:

• the Parties will principally rely upon the evidence submitted in connection with the two previously filed motions for summary judgment, and any supplemental declarations;

• the Parties may supplement their previously filed briefs on the motion for summary judgment, but will limit any supplemental briefs to ten pages;

• the Parties will forgo reply briefing;

• the burden of proof to establish her case by a preponderance of the evidence remains with Opposer and

• the Board may resolve disputes as to any material fact which the Board may find to exist and may issue a final ruling after considering the parties’ ACR submissions.

The Goods/Services: The goods of the parties are in part identical, and these identical goods are presumed to travel in the same channels of trade to the same classes of purchasers.

As to the services, the Board found that opposer's charitable services are related to applicant's educational services. It noted that applicant's recitation of services is not limited to "black girls." Moreover, opposer testified that men participated in her programs. However, the evidence was insufficient to show that the services of the parties are offered in the same trade channels.

The Marks: While there are differences in the marks,  "the connotations and commercial impressions are similar and the similarities outweigh the differences."

Both marks connote that the subject of the services ("black girls" and "black men") are "very good, impressive, or exciting." Thus, Opposer’s and Applicant's marks suggest that the programs offered by Opposer and Applicant improve the self-images of the participants. Both the design in Applicant's mark, consisting of the silhouette of a man with his arms outstretched in a sign of victory, and the exclamation point in Opposer's mark emphasize the positive outcome the programs hope to have on the participants.

The Board concluded that confusion is likely, and it therefore sustained the opposition.

Read comments and post your comment here.

TTABlog comment: In an ACR proceeding, may the parties stipulate that the Board's factual findings will have no collateral estoppel effect?

Text Copyright John L. Welch 2016.

Monday, June 20, 2016

Precedential No.16: Filing of Cancellation Petition Tolls Section 14 As To Adddition of New Claim

Ashland Licensing (owner of the mark VALVOLINE) petitioned to cancel two registrations for the mark MAXOLINE, in standard and design forms, for "lubricants for automobiles," within five years of issuance of each of the registrations, on the grounds of likelihood of confusion and abandonment. After the five-year anniversary dates, Ashland filed a motion to add a claim for nonuse. The Board ruled that the commencement of a cancellation proceeding tolls Trademark Act Section 14 for the purpose of adding claims against a challenged registration. Ashland Licensing & Intellectual Property LLC v. Sunpoint International Group USA Corp., Cancellation No. 92057294 (June 7, 2016) [precedential].

Section 14: Section 14 of the Lanham Act provides that, prior to the fifth anniversary date of a registration, a party may plead any ground for cancellation of a registration. However, a petition to cancel after that date must be restricted to certain grounds enumerated in Section 14 (genericness, fraud, abandonment, functionality, and a few others). Nonuse is not one of the enumerated exceptions.

In The Williamson-Dickie Mfg. Co. v. Mann Overall Co., 359 F.2d 450, 149 USPQ 518 (CCPA 1966), the CCPA ruled that in an opposition filed prior to the fifth anniversary of the opposer’s pleaded registration, Section 14 does not bar a Section 2(d) counterclaim to cancel the pleaded registration even though more than five years had then passed since issuance of the registration.

The Board found that the issue in this case "presents a variation on the same theme," and it held that "so long as the cancellation proceeding commences within five years of the date of registration, the five-year limitation under Trademark Act Section 14 is tolled by the commencement of a cancellation action for the purpose of adding claims against the registration by that petitioner."

The Board observed that its ruling "will aid the Board in its work." If tolling were not allowed, that might discourage settlement discussions between the parties, and it might encourage "foot-dragging" during discovery by a party "who finds the risk of a motion to compel may be less than the potential risk of additional claims."

In sum, the petitioner who learns of further grounds for cancellation, and acts without undue delay, may seek to add those grounds, even if the subject registration has passed its fifth anniversary during the pendency of the cancellation proceeding. With this decision we see no contravention of the legislative purpose of Trademark Act Section 14 in limiting the risk of cancellation of registrations. A petition to cancel has been filed before the five-year anniversary date of the registration, and so the registration already is at risk. To hold that the availability of additional claims will vary with the speed with which petitioner obtains discovery responses jeopardizes the Board’s orderly disposition of its cases.

Timeliness of Motion: The Board next examined whether Petitioner Ashland acted in a timely fashion. Ashland maintained that it learned of the facts supporting the nonuse claim during a June 10, 2014 deposition, and thus the information was not known to Ashland at the time of filing the petition for cancellation. Respondent contended that the proposed amendment was untimely since Ashland did not bring its motion until almost one year later. The Board, however, noted that proceedings "largely were suspended, or there was good cause to believe that proceedings would be suspended, from the time Petitioner learned of the new information." And so the Board ruled that Ashland did not unduly delay in bringing its motion to amend.

Proper Pleading: Finally, the Board pointed out that Ashland had not properly pleaded its nonuse claim. Ashland alleged that the registered marks were not in use at the time of filing of the underlying applications. However, the applications were filed under Section 1(b), based on intent to use, and so no use was required prior to filing.

The Board pointed out that in an inter partes proceeding, the Board will consider evidence of use that occurred after the filing of the statement of use but within the original or extended period for filing the statement of use. Embarcadero Techs., Inc. v. Delphix Corp., 117 USPQ2d 1518, 1523 (TTAB 2016). Therefore a proper allegation of nonuse should state that the marks were not in use as of those later dates. The Board allowed Ashland 15 days to file an amended petition for cancellation.

Read comments and post your comment here.

TTABlog comment: I propose calling a registration that is more than five years old, a "mature" registration (to avoid the misnomer "incontestable" that is often used).

Text Copyright John L. Welch 2016.

Friday, June 17, 2016

Fourth Circuit Affirms Issue Preclusion Ruling Based On TTAB Priority Finding

On June 13, 2016, the U.S. Court of Appeals for the Fourth Circut affirmed the ruling of the U.S. District Court for the District of Maryland [TTABlogged here], which had dismissed Keith A. Ashe's suit for trademark infringement on the ground of issue preclusion based on a prior decision of the TTAB [TTABlogged here] on the issue of priority of use. Ashe v. PNC Financial Services Group, Inc., Appeal No. PWG-15-144 (4th Cir. June 13, 2016).

The district court applied the Supreme Court's holding in B&B Hardware v. Hargis that "a court should give preclusive effect to [Trademark Board] decisions if the ordinary elements of issue preclusion are met." Ashe v. PNC Financial Services Group, Inc., Case No.: PWG-15-144 (D. Md. November 17, 2015).

The district court found that the determination of priority of use by the TTAB in an opposition is the same as the determination of priority of use for purposes of an infringement claim. Furthermore, that issue was resolved in the TTAB proceeding, the issue was critical and necessary to the TTAB's judgment, the judgment was final, and Ash has a full and fair opportunity to litigate the issue before the Board. Thus all five requirements for issue preclusion were met.

The appellate court, in a four-page per curiam opinion, concluded that the district court did not in dismissing as barred by collateral estoppel.

The district court concluded, and PNC argues on appeal, that the issue of priority in a trademark opposition case before the TTAB is always identical to the issue of priority in a federal trademark infringement case. In contrast, Ashe argues that the Supreme Court in B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 1299 (2015), held that the issue of priority will, at least sometimes, be different.

Even assuming that B & B Hardware stands for the proposition that, when considering the issue of priority, courts must determine whether the actual use of a mark is the same as the use stated in a trademark application, Ashe has alleged no actual use of the mark other than those uses described in his trademark application. Consequently, in this case, the issue of priority decided by the TTAB was identical to the issue of priority presented to the district court.

Therefore, the Fourth Circuit affirmed the district court 's decision.

Read comments and post your comment here.

TTABlog comment: I can't think of a situation where the issue of priority would be different before the Board and the district court. Can you?

Text Copyright John L. Welch 2016.

Thursday, June 16, 2016

TTAB Test: In which of these Three Cases Did the Board Find No Likelihood of Confusion?

Supposedly one can predict the outcome of a Section 2(d) case 95 percent of the time just by looking at the marks and the goods. In one of these three recent decisions - two oppositions and one ex parte appeal - the Board found no likelihood of confusion. Let's see how you do in figuring out which one it was. [Answer will be found in first comment].

In re Liquivita, LLC, Serial No. 86265014 (May 20, 2016) [not precedential]. Section 2(d) refusal of LIQUIVITA LOUNGE & Design (shown below) for various medical services and therapies [LOUNGE disclaimed], in view of the mark LIQUI-VITE for "multivitamin dietary food supplement."

Abercrombie & Fitch Trading Co. v. FUB LLC, Opposition No. 91208221 (May 20, 2016) [not precedential]. Section 2(d) refusal to register F&A for "baseball caps; shorts; t-shirts," in view of various marks comprising or containing the term A&F for clothing items.

Shoichi Matsumoto v. David Beaulieu, Opposition No. 91217806 (May 16, 2016) [not precedential]. Section 2(d) opposition to registration of NO RECIPE REQUIRED in standard character form, for "providing an online website that provides cooking and culinary information," in view of the registered mark NO RECIPES for"on-line journals, namely, blogs featuring recipes, cooking and travel information."

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.

Wednesday, June 15, 2016

Yesterday's TTABlog Webcast Recording on TTAB Developments Now Available

In case you missed yesterday's TTABlogger Webcast on TTAB Developments, here's a link to the presentation. You will have to file out the email form and then click the REGISTER button to get access to the presentation. Thank you for all who tuned in yesterday to the live show.

Read comments and post your comment here.

TTABlog comment: One correction - on slide 22, the final date for nominations to TPAC should be July 25, 2016, not 2015.

Text Copyright John L. Welch 2016.

TTAB Grants Rule 2.132 Motion to Dismiss IODINE Opposition for Failure to Prosecute

The Board dismissed this opposition to registration of the mark IODINE for various goods and services, granting applicant's Rule 2.132(a) motion for judgment for failure to prosecute because opposer had filed no evidence and taken no testimony. Opposer failed to show "good and sufficient cause" why judgment should not be entered against it. Iodine Software, LLC v. Iodine, Inc., Opposition No. 91217516 (June 13, 2016) [not precedential].

After opposer's testimony period closed on January 24, 2016, application filed a motion to dismiss  under Rule 2.132(a), which provides that "If the time for taking testimony by any party in the position of plaintiff has expired and that party has not taken testimony or offered any other evidence, any party in the position of defendant may ... move for dismissal on the ground of the failure of the plaintiff to prosecute. *** In the absence of a showing of good and sufficient cause, judgment may be rendered against the party in the position of plaintiff. "

In its (untimely) response to the motion, opposer stated that it had agreed with applicant's settlement proposal as of February 16, 2016 and applicant's counsel had confirmed that they were awaiting further instructions from applicant. Opposer asked the Board to deny the motion and to allow the parties time to complete the settlement.

The Board then asked for "documentation of the settlement," but opposer supplied only a statement that its attorney had sent the latest settlement proposal to applicant on March 28, 2016, and that the parties were still negotiating.

Applicant responded that the parties had not reached settlement and that the negotiations did not constitute good and sufficient cause to avoid judgment.

The Board observed that the "good and sufficient cause" standard is equivalent to the "excusable neglect" standard under FRCP 6(b)(1)(B) for re-opening of the testimony periods. [A very difficult standard to meet - ed.]. The Board, as usual, turned to the four-factor test in Pioneer Inv. Serv. Co. v. Brunswick Assoc. Ltd., 507 U.S. 380 (1993).

The third Pioneer factor is the most important: the reason for the delay, including whether it was within the reasonable control of the moving party. Here, attempts at settlement did not excuse opposer's failure to act within the prescribed time limit. Opposer should have sought an extension of time or a suspension of its discovery period prior to the close of same. Opposer failed to explain why it allowed its testimony period to lapse. "Opposer brought this case and, in so doing, took responsibility for moving forward on the established schedule." In short, opposer's failure to act was within its reasonable control.

Moreover, under the second Pioneer factor, the delay in proceedings, "has a significant potential impact on this case." The proceeding is over unless the Board reopens the testimony periods, which would delay resolution of the case by several months "and runs counter the Board's interest in an expeditious adjudication of its cases."

There was no evidence of bad faith on opposer's part, nor any specific prejudice to applicant beyond mere delay.

On balance, however, the Board found that opposer had failed to show excusable neglect that would warrant proceeding any further with the case.

And so the Board granted the motion and dismissed the opposition with prejudice.

Read comments and post your comment here.

TTABlog comment: Once the testimony period closes, a party is up the creek without a paddle.

Text Copyright John L. Welch 2016.