Thursday, June 04, 2020

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

I've been making these TTABlog Tests too easy lately. This time I'm not giving any hints. Here are three recent decisions in appeals from Section 2(d) refusals. How do you think these came out? [Answers in first comment].

In re Maryhill AB, Serial No. 88102714 (May 28, 2020) [not precedential] (Opinion by Judge George C. Pologeorgis) [Section 2(d) refusal of the mark shown below, for "“Baguettes; Bread; Bread rolls; Breadcrumbs; Buns; Cake batter; Cake doughs; Cake mixes; Cakes; Crushed oats; Dough; Food starch; Pancakes; Processed cereals; Tarts; Unleavened bread in thin sheets; Waffles; Wheat flour; Wheat germ for human consumption; Yeast; Biscuits; Cookies,” in view of the registered mark BREAD FOR EVERYONE for "bread" [BREAD disclaimed]].

In re Primelife Research, LLC, Serial No. 88216774 (May 29, 2020) [not precedential] (Opinion by Judge Cynthia C. Lynch) [Section 2(d) refusal of PRIMELIFE RESEARCH & Design for "Dietary supplements; Dietary supplements for human consumption; Dietary and nutritional supplements" [RESEARCH disclaimed], in view of the registered mark COLOSTRUM PRIME LIFE for “Dietary and nutritional supplements" [COLOSTRUM disclaimed]].

In re Delta Faucet Company, Serial No. 88071960 (June 2, 2020) [not precedential] (Opinion by Judge Peter W. Cataldo). [Section 2(d) refusal of BOWERY for "bathroom accessories, namely,
towel bars, towel rings and toilet tissue holders," in view of the registered mark BOWERY HILL for, inter alia, bathroom furniture].

Read comments and post your comment here.

TTABlog comment: How did you do? Any WYHAs here?

Text Copyright John L. Welch 2020.

Wednesday, June 03, 2020

TTABlog Test: Must "FARM" Be Disclaimed in MONSALVAT FARM for Honey and Maple Syrup?

The USPTO refused registration of the mark MONSALVAT FARM (in standard character and design form) for honey, maple syrup, beeswax, and alpaca hair, because applicant refused to disclaim the word FARM. Applicant argued that FARM is too ambiguous to convey any immediate information about an ingredient, quality, or characteristic of the goods. Furthermore MONSALVAT FARM is incongruous and unitary, Monsalvat being a fictional magical castle while "farm" is much more mundane. How do you think this came out? In re Monsalvat Farm Holdings LLC, Serial Nos. 88073251, 88073254, 88075987, and 88075991 (May 29, 2020) [not precedential] (Opinion by Judge David K.Heasley).

Examining Attorney Kevin G. Crennan maintained that FARM merely describes the provider of the goods and is therefore merely descriptive of them. He relied on a dictionary definition of "farm," 39 website excerpts showing us of "farm" to describe the same products as those of applicant, and 25 third-party registrations for those products, which registrations include a disclaimer of "farm."

Applicant contended that FARM merely vaguely suggests something about the goods, since FARM is defined as a tract of land devoted to agricultural services and provides no immediate information about the goods. It argued that the third-party websites do not show descriptive use, and that third-partiy disclaimers of "farm" are irrelevant, since each case must be decided on its own merits. In particular, applicant argued that the Board does not know why the word was disclaimed in those cases.

The Board observed that the type of provider of the goods is a feature or characteristic of the goods for purposes of mere descriptiveness. In re E.I. Kane Inc., 221 USPQ 1203 (TTAB 1984), and cases cited therein. "The rule serves the fundamental purposes of descriptiveness refusals: it protects competitors' freedom to describe the type of providers they are." The arguments that "farm" is too vague to be descriptive and that the word must convey an immediate and particular meaning about the goods were rejected in those cases.

The varied third-party uses of "farm" is relevant because they refer to the identified goods as "farm products" or emanating from a farm. The third-party registrations, together with dictionary definitions and third party uses, confirm that FARM is merely descriptive of the goods.

Applicant asserted that MONSALVAT "is popularly known as the fictional magical castle and resting place of the holy grail in Richard Wagner's opera Parsifal." Thus MONSALVAT FARM "[gives] rise to a fanciful and incongruous notion of a lofty and holy site like Monsalvat having some relationship to a humble and utilitarian farm." In applicant's design mark (above), this lofty and holy imagery is reinforced by the inclusion of a depiction of the holy grail as a chalice bearing a Templar's cross. Therefore, applicant argued, because MONSALVAT farm is unitary and incongruous, it need not be disclaimed.

The Examining Attorney and applicant sparred over how many consumers are familiar with the fictional castle in the opera, but in any event, the Board concluded that the marks are not unitary. Consumers will immediately understand FARM as a separate term. In the design marks, the two words are "not so merged together that they cannot be regarded as separate." Nor are they separate on applicant's specimen of use (first above).

The words in question - MONSALVAT FARMS - have the same meaning whether considered individually or as a whole, neither changes the other, nor is the whole any more (or less) than the sum of its parts. As the Examining Attorney succinctly puts it "[i]n the end, a farm is a farm."

And so the Board affirmed the disclaimer requirement.

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA? I thought the "incongruous" argument was useless.

Text Copyright John L. Welch 2020.

Tuesday, June 02, 2020

Precedential No. 20: TTAB Rejects "ERA" Family of Marks Claim, but Finds PRO ERA Confusable With NEW ERA for Caps

Hip-hop collective Pro Era applied to register the mark PRO ERA for various clothing items, including hats and caps, but was foiled by Opposer New Era Cap, who for decades has extensively used, promoted, and protected its registered mark NEW ERA in connection with caps. The Board rejected Opposer's claim to ownership of a family of ERA-formative mark, but found the NEW ERA mark to be conceptually strong with a "relatively high degree of fame or commercial strength," and similar overall to the PRO ERA mark in sound, appearance, connotation, and commercial impression. New Era Cap Co., Inc. v. Pro Era, LLC, Opposition No. 91216455 (May 29, 2020) [precedential] (Opinion by Judge Angela Lykos).

Family of Marks: Opposer New Era's claim to a family of marks was based on its use and promotion of marks such as DRYERA, COOLERA, SOLARERA, WINTERERA, DIAMOND ERA, and MICROERA in connection with hats and caps, prior to Pro Era's filing date. The Board noted that  although the USPTO may register several individual marks that include a family element, it does not register “families” of prefixes, suffixes, or other components of a mark. "Thus, an opposer relying on a family of marks is relying on common law rights in the alleged family."

The seminal case on the family of marks issue is J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891-92 (Fed. Cir. 1991: "[a] family of marks is a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the trademark owner."

J&J Snack Foods pointed out that it is not enough to merely use a series of marks. The relevant public must recognize that the common characteristic is an indicator of source for the goods or services.

Recognition of the family is achieved when the pattern of usage of the common element is sufficient to be indicative of the origin of the family. It is thus necessary to consider the use, advertisement, and distinctiveness of the marks, including assessment of the contribution of the common feature to the recognition of the marks as of common origin.

In order to rely on an ERA family of marks, New Era had to prove the existence of the family of marks prior to Pro Era's priority date. See Hester Indus. Inc. v. Tyson Foods Inc., 2 USPQ2d 1645, 1647 (TTAB 1987); TPI Holdings, 126 USPQ2d at 1419-20.

The Board, with little discussion, found New Era's testimony on this issue to be vague and ambiguous, and in part relating to its use of marks only after applicant Pro Era's constructive first use date. Consequently, the Board concluded that New Era had failed to carry its burden to prove that it owned a family of ERA-formative marks.

Family of Marx

Likelihood of Confusion: Opposer has used its mark NEW ERA since the 1930s in connection with caps, and has enjoyed a long-standing relationship with Major League Baseball and professional football, as well as other sports. It promotes its goods in various ways, including during broadcasts of sports events. The mark "enjoys a vibrant media following" and has received recognition in nationwide media. New Era aggressively polices the mark against infringement. Applicant Pro Era pointed out the absence of survey evidence, but the Board observed that such evidence is not required to prove whether a mark is famous.

Pro Era argued that third-party registrations weakened the NEW ERA mark but the Board was unmoved, since there were only four relevant marks and no evidence of actual use: far short of the extensive third-party evidence in Jack Wolfskin and Juice Generation.

The Board concluded that the NEW ERA mark "falls on the much higher end of the commercial strength spectrum." In short, "Opposer's NEW ERA mark is a strong mark entitled to a broad scope of protection."

The fact that the involved goods overlap weighed heavily in New Era's favor. Moreover, as to the marks, the Board noted that a lesser degree of similarity is needed to support a finding of likely confusion when the goods are (in part) identical.

White Sox, circa 1959

Applicant argued that PRO ERA is an abbreviation for "Progressive Era" and so the marks have different meanings and connotations. However, there was no evidence that consumers are likely to so perceive the PRO ERA mark. Moreover, the word PRO could be seen as an abbreviation for "professional."

The Board acknowledged that consumers are likely to focus on the first part of a trademark, but here the marks are similar in structure and end with the same word. The word PRO has a laudatory connotation and is therefore less likely to form a strong impression on consumers seeking to distinguish similar marks. Give the strength of the NEW ERA mark, consumers are likely to see the PRO ERA brand as an extension of the NEW ERA product line.

The Board concluded that the marks are similar in appearance, sound, connotation, and commercial impression.

Pro Era contended that the "focused needs" of the intended consumers of the goods are distinct and divergent. The Board, however, pointed out that there are no limitations in the opposed application or cited registration that would make those distinctions relevant.

In contrast, as to the lack of evidence of actual confusion, the Board looked to the marketplace conditions and noted that applicant's clothing items are sold as collateral items to its music services, at concerts, on its website, and in various social media platforms. Opposer New Era likewise has a strong media presence, and markets limited edition caps at music festivals. Both applicant and opposer have been involved in the SXSW Music Festival.

The Board found insufficient evidence to allow it to determine the extent of use of applicant's mark. There was no evidence indicating that the goods of the parties are of inferior quality, which makes it less likely that instances of confusion will be reported. Therefore the Board found this factor to be neutral.

Balancing the relevant du Pont factors, the Board found confusion likely, and it sustained the opposition.

Family of Marx

Read comments and post your comment here.

TTABlogger comment:

I don't see why this opinion is precedential. Seems to be just a re-hash of the same old "family of marks" doctrine.

Monday, June 01, 2020

TTAB Posts June 2020 (Video) Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-BEE) has scheduled nine (9) oral hearings for the month of June 2020. All of the hearings will be held via video conference. Briefs and other papers for each case may be found at TTABVUE via the links provided.

June 4, 2020 - 11 AM: In re Justice Without Borders, Serial No. 87870907 [Section 2(d) refusal of the mark JWB JUSTICE WITHOUT BORDERS & Design, shown below, for "providing legal advice, legal support services, and litigation services in support of migrant workers in the fields of labor exploitation and human trafficking, not including services associated with international humanitarian relief projects or providing medical or health care assistance to victims of disasters and/or conflicts in underdeveloped countries," in view of the registered mark JWB in typed form for "legal services for on-line global computer network'].

June 9, 2020 - 11 AM: In re The Half Baked Bus, LLC, Serial No. 88099422 [Section 2(d) refusal of HALF BAKED BUS, in standard form, for "Cosmetic preparations for skin care other than tanning accelerators; Cosmetics and cosmetic preparations other than tanning accelerators; Skin cream other than tanning accelerators; Skin moisturizer other than tanning accelerators," in view of the registered mark HALF BAKED for "cosmetics, namely, sun tan accelerator lotion"].

June 9, 2020 - 1 PM: In re Branded LLC, Serial Nos. 87214622 and 87214637 [Section 2(e)(1) mere descriptiveness refusal of TWEEDS for "Bed sheets, pillow cases, comforters, bedspreads, pillow shams, bed ruffles, duvet covers, comforter covers, mattress pads, bed blankets, towels, wash cloths, fabric shower curtains, draperies and fabric valances” and "shoes; belts; swimwear"].

June 10, 2020 - 1 PM:, inc. v. Dolly Wendell, Opposition No. 912379415 [Section 2(d) opposition to the mark YOUR WORK FORCE IS YOUR SALESFORCE for "Education services ... in the fields of networking, relationship building, collaboration, leadership, management, education, sales, communication, corporate and personal assessment and measurement, and professional and personal development" and for related  printted publications [SALESFORCE disclaimed] in view of the allegedly famous, registered mark SALESFORCE for software and business services provided to professionals, particularly sales and marketing professionals].

June 16, 2020 - 10 AM: In re Slumbersac Trading Company Limited, Serial No. 88278672 [Section 2(d) refusal of the mark shown below for babies and children's clothing and bedding , in view of the registered mark DREAM BABY for, inter alia, childen's safety products, child restraining devices, covers for baby strollers, spoons, teething rings, and baby bottles].

June 18, 2020 - 2 PM: In re NODUS International Bank Inc., Serial Nos. 88033302, 88033653, and 88034989 [Section 2(d) refusal of the marks NODUSBANK, NODUSLINE, and NODUSBANK INTERNATIONAL & Design for banking and financing services, in view of the registered mark NODUS for software goods and services used for processing electronic payments].

June 18, 2020 - 3 PM: Method Pharmaceuticals, LLC v. Pharma 101, LLC, Cancellation No. 92068970 [Petition for cancellation of a registration for the mark ESTRATEST for "male and female hormone tablet" on the ground of abandonment].

June 24, 2020 - 1 PM: In re Timber Pizza Company, LLC, Serial Nos. 87215848 and 87215852 [Section 2(d) refusals of TIMBER PIZZA CO. and TIMBER PIZZA CO. and Design for"restaurant and bar services; Providing of food and drink via a mobile truck" [PIZZA CO. disclaimed] in view of the registered marks TIMBERS in standard characters for “restaurant services” and U.S. Registration No. 3521939 for the mark TIMBERS FAST-FOOD & DELI for "restaurant services, namely, fast-food restaurants and delicatessens" [FAST-FOOD & DELI disclaimed]. 

June 25, 2020 - 1 PM: In re FHC Associates Inc., Serial No. 88303462 [Section 2(e)(4) surname refusal of MANIO CASHMERE for "Bathrobes; Beanies; Cardigans; Gloves; Hats; Ponchos; Scarves; Shawls; Sweaters; Clothing wraps; Men's dress socks; all the foregoing made wholly or substantially in part of cashmere' [CASHMERE disclaimed]].

Read comments and post your comment here.

TTABlog comment: Any predictions? See any WYHA?s ? By the way, why arent't these video hearings publicly accessible?

Text Copyright John L. Welch 2020.

Friday, May 29, 2020

TTABlog Test: Three Ex Parte Decisions - How Did They Come Out?

Here are three ex parte appeals decided yesterday by the Board: a Section 2(d) likelihood of confusion case, a Section 2(e)(1) mere descriptiveness refusal, and a Section 2(e)(4) surname ruling. How do you think they came out? [Answers in first comment].

In re MassDrop, Inc., Serial No. 87869354 (May 28, 2020) [not precedential] (Opinion by Judge Michael B. Adlin). [Section 2(d) refusal of the mark DROP for various clothing items "excluding gloves and not specifically for skiing or snowboarding," in view of the identical mark registered for "glovesfor use in skiing and snowboarding." Applicant argues that ski and snowboard glove consumers are "sophisticated" and "very particular" about their purchases.].

In re InfoSecurity Infrastructure, Inc., Serial No. 88013497 (May 28, 2020) [not precedential] (Opinion by Judge Thomas W. Wellington). [Section 2(e)(1) mere descriptiveness refusal of DUTIES AUDIT for "business risk assessment services." Applicant stated that" the word 'duties' pertains to the question: ‘Have the customer organization’s directors and officers fulfilled their legal duties regarding compliance with all information security and privacy related laws and regulations?'"].

[Imagine a picture of an audit]

In re Delta Faucet Company, Serial No. 88072028 (May 28, 2020) [not precedential] (Opinion by Judge Jonathan Hudis). [Section 2(e)(4) surname refusal of LOWRY for "plumbing products, namely, faucets." The examining attorney found 35,616 Lexis/Nexis hits. Applicant pointed to Urban Dictionary definitions of the terms LAWRY, LAWRY’S and LAWRIES as "a person or persons who are unpleasant, jealous or simply hate others"].

Read comments and post your comment here.

TTABlog note: How did you do? See any WYHA?s here?

Text Copyright John L. Welch 2020.

Thursday, May 28, 2020

Precedential No. 19: TTAB FInds "REAL MICHIGAN" for Hard Cider Confusable With "MICHIGAN APPLES" Geographic Certification Mark

In a rare case involving a geographic certification mark (sometimes called a certification mark of regional origin), the Board affirmed a Section 2(d) refusal of the mark REAL MICHIGAN for hard cider (MICHIGAN disclaimed), finding it likely to cause confusion with the two registered geographic certification marks shown below, for apples. Although in a typical Section 2(d) analysis, a geographic term is usually accorded less weight, that is not the case when considering a geographic certification mark. A geographic certification mark is deemed distinctive because it serves to designate and certify the particular geographic origin of the relevant goods or service, and should not be considered “weak” or subject to a narrower scope of protection. In re St. Julian Wine Company, Inc., Serial No. 87834973 (May 27, 2020) [precedential] (Opinion by Judge Angela Lykos).

The Board pointed out that "certification marks indicate that goods or services provided by persons other than the mark owner adhere to specified standards set by the mark owner, whereas trademarks indicate the source of the goods or services." Geographic certification marks certify that an authorized user's goods or services originate in a specific geographic region. Here, the certification statement on each of the cited registrations is as follows: "[t]he Certification mark, used by persons authorized by certifier, certifies that the goods bearing the mark consist of apples grown in the State of Michigan."

Section 2(e)(2), which bars registration of primarily geographically descriptive marks absent a showing of acquired distinctiveness under Section 2(f), 15 U.S.C. § 1052(f), does not apply to geographic certification marks.

As to the involved goods, the Board noted that apples are a necessary component of hard cider, and s hard cider could be made from apples certified with registrant's mark. The Board therefore found "a commercial relationship between Applicant’s 'hard cider' and Registrant’s identified goods and that the goods are related, meaning that this DuPont factor weighs in favor of finding a likelihood of confusion."

As to the marks, the Board noted that "[s]pecial considerations apply with regard to the first DuPont factor and geographic certification marks." A registered certification mark containing a geographic designation that functions to certify regional origin is not considered geographically descriptive under Section 2(e)(2).

Rather, a geographic certification mark is deemed distinctive because it serves to designate and certify the particular geographic origin of the relevant goods or services. Consequently, a registered geographic certification mark should not be considered 'weak' or subject to a narrower scope of protection. Thus, we consider the “Michigan” component of the phrase MICHIGAN APPLES in the involved marks as inherently distinctive because it indicates the certification of the geographic source of the apples.

Applicant argues that the dominant portion of its mark is the initial word REAL, which serves to distinguish the marks. It contended that its mark "suggests a geographical area and a product that is not artificial" whereas the cited certification marks "suggest a geographical area and a fleshy round fruit (apple or apple-flavored) product." Not surprisingly, the Board found that the involved marks convey a similar connotation and commercial impression: designating goods from the State of Michigan. The Board acknowledged that the marks differ in sound and appearance, but those differences are outweighed by the similarities  in connotation and commercial impression.

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

Read comments and post your comment here.

TTABlogger comment: Despite the temptation, I am not going to say "how do you like them apples?" Anyway, is this a WYHA?

Text Copyright John L. Welch 2020.

Wednesday, May 27, 2020

TTABlog Test: Is JIOKIA Confusable with NOKIA for Electronic Mail Services?

Nokia saw no jokia when Somasundaram Ramkumar applied to register the mark JIOKIA for electronic mail and other online services. Claiming that its mark NOKIA is famous, Nokia opposed on the ground of likelihood of confusion and likelihood of dilution by blurring. The Board decided only the Section 2(d) issue. How do you think this came out? Nokia Corporation v. Somasundaram Ramkumar, Opposition No. 91238114 (May 22, 2020) [not precedential] (Opinion by Judge Michael B. Adlin).

Nokis is one of the world’s leading providers of telecommunications products and services. Applicant Ramkumar is an individual who has filed a number of applications to register telecommunications and Internet-related marks in the United States. He also has applied to register other marks associated with Opposer (HMD, HMDGLOBAL and LUMIA),and marks associated with other major providers of telecommunications products and services (AMAZON, ANDROID and ANDROIDONE).

Ramkumar submitted no testimony or evidence. Nokia submitted evidence of staggering sales figures and widespread notoriety. The Board found, and applicant did not contest, that the mark NOKIA is famous for Section 2(d) purposes. As we know, fame, when found, plays a dominant role in the du Pont analysis.

Because the marks at issue end in the same four letters, "they will most likely rhyme when spoken and in any event will sound quite similar. It is even possible that one of these marks might be taken for the other when encountered aurally if a listener does not hear the first part of one of the marks well or in its entirety." The marks also look similar because of the same last four letters. Neither mark has any meaning or connotation.

The Board concluded that the first du Pont factor favored Nokia.

Nokia argued Ramkumar's actions "strongly suggest" bad faith. The Board observed that it need not decide that issue in order to sustain the opposition. [What does applicant's intent have to do with consumer perception of the marks? - ed.]. The Board also declined to reach Nokia's dilution claim.

And so the Board sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: TTABlog tip: try to prove that your mark is famous.

Text Copyright John L. Welch 2020.

Tuesday, May 26, 2020

TTAB Dismisses "ZEN SPA & Design" Cancellation Petition for Failure to Prove Genericness

The Board dismissed this petition for cancellation of a 2009 registration for the mark ZEN SPA & Design, shown below, for "Health spa services for health and wellness of the body and spirit offered at a health resort" [SPA disclaimed] because the Petitioner Jessica Cosmetics failed to prove genericness. Petitioner alleged both mere descriptivenes and genericness but because the challenged registration is more than five years old, it cannot be attacked on the ground of descriptiveness. That left genericness, and the Board found that the mark as a whole is not generic. Jessica Cosmetics International, Inc. v. Zen Spa Enterprises, Inc., Cancellation No. 92060934 (May 22, 2020) [not precedential] (Opinion by Deputy Chief Judge Mark A. Thurmon).

Petitioner argued that the term "ZEN SPA" is generic and that the design element of the registration is irrelevant. However, "[p]etitioner gets the cart before the horse," said the Board.

The essential question in this case is not whether the literal element ZEN SPA is generic, but whether the mark as a whole is distinctive. If the design elements create a separate, distinctive commercial impression, then the mark is distinctive regardless of what the literal element means. Montecash LLC v. Anzar Enters., 95 USPQ2d 1060, 1062-63 (TTAB 2010).

The Board found the design element of the mark to be distinctive. "That is the end of the story."

A finding that the term ZEN SPA is generic for Respondent’s services would result in no relief, and for that reason, we will not opine on that issue. The only possible consequence of a finding that ZEN SPA is generic would be a disclaimer, but that relief was not sought by Petitioner and would not be available if it had been sought. See Montecash, 95 USPQ2d at 1065 (“by seeking entry of a disclaimer for a purportedly generic term that forms part of a mark that is not generic in its entirety, and that has resided on the Principal Register for more than five years, [petitioner] has failed to state a claim upon which the Board will grant relief.”)

The only possible basis for cancellation that petitioner advanced is genericness. Because the design elements create a separate commercial impression, petitioner had to show that these elements are generic in order to prevail. However, petitioner did not present any evidence or argument to support such a finding.

The Board observed that petitioner’s claim is similar to the claim that the Board dismissed in the Montecash case, which involved the mark shown below.

There the Board found it clear that the word-plus-design mark was not generic as a whole. As here, the petitioner in Montecash asserted only that the word portion of the mark was generic.

And so the Board dismissed the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: So what does this mean for others who want to use the term "Zen Spa" for health spa services? Should they be concerned about this registration? Or would they be okay if they just avoided using a similar design element?

Text Copyright John L. Welch 2020.

Friday, May 22, 2020

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

I think I've been making these TTABlog Tests too easy. I'm not giving any hints on this one. Here are three recent decisions in appeals from Section 2(d) refusals. How do you think these came out? [Answers in first comment].

In re Wesco Group, LLC, Serial Nos. 87930506 and 87930522(May 19, 2020) [not precedential] (Opinion by Judge David K. Heasley) [Section 2(d) refusals of LUMABASE and LUMABASE PERFORMANCE COATINGS for, inter alia, degreasing and cleaning solvents, paint and paint thinners, automotive paints and protective coatings, alcohol for cleaning purposes, and automotive cleaning preparations [PERFORMANCE COATINGS disclaimed], in view of the registered marks ILLUMIBASE for "Refinish coating compositions in the nature of tint bases and tint bases sold as an integral component of automotive paints" and LUMA for "Cleaning agents and preparations; Cloths impregnated with a detergent for cleaning; Laundry detergents; Washing preparations and laundry bleach"].

In re Outdoor Cap Company, Inc., Serial No. 88013497 (May 19, 2020) [not precedential] (Opinion by Judge Thomas W. Wellington). [Section 2(d) refusal of the marks shown below left for "headwear" in view of the registered marks shown below right for "shirts; t-shirts"].

In re Marshfield Consulting LLC, Serial No. 88099557 (May 19, 2020) [not precedential] (Opinion by Judge Christopher Larkin). [Section 2(d) refusal of MARSHFIELD CONSULTING for "Business technology software consultation services; Consulting services in the field of software as a service (SAAS)" [CONSULTING disclaimed], in view of the registered mark shown below for, inter alia, "Information technology consulting and advisory services," "Consulting and advisory services in the fields of design, selection, implementation, use and integration of computer hardware and software systems for others,' and "Software consulting and advisory services in the field of electronic medical records." [CLINIC INFORMATION SERVICES disclaimed].

Read comments and post your comment here.

TTABlog comment: How did you do? Any WYHAs here?

Text Copyright John L. Welch 2020.

Thursday, May 21, 2020

Rejecting Abandonment and Fraud Claims, TTAB Denies Petition to Cancel DEVIL'S CANYON VINEYARD Registration

The Board denied petitioner's claims of abandonment and fraud aimed at a registration for the mark DEVIL'S CANYON VINEYARD for wine. Petitioner Brew4U claimed that Respondent Icon Design never sold any wine under the mark and did not obtain a COLA certificate from the Alcohol and Tobacco Tax and Trade Bureau (TTB). Respondent asserted that it used the trademark for bottles of wine shipped to its customers to promote its brand development business. Brew 4U, LLC v. Icon Design Group, Cancellation No. 92067639 (May 18, 2020) [not precedential] (Opinion by Judge Linda A. Kuczma).

Respondent Icon Design, based in Napa, California, provides label and packaging design and other brand creation services to clients in the wine industry. It is not a winery or a seller or re-seller of wine, since it does not manufacture, produce or distribute wine. However it "has wine produced and bottled that is given to others to promote [its] business."

Petitioner Brew 4U is a craft brewery in the San Francisco Bay area that has used the mark DEVIL'S CANYON BREWING COMPANY since 2001 in connection with beer. Its application to register the mark was blocked by respondent's registration. Since that registration was more than five years old, the grounds on which it could be canceled were limited by Section 14 of the Lanham Act. Petitioner relied on two available claims: abandonment and fraud.

Abandonment: Evidence of nonuse of a mark for three consecutive years constitutes a prima facie showing of abandonment. See Section 45. Respondent admitted that it has never made or sold wine, does not operate a winery, has no license in connection with its goods, and has no COLA registration corresponding to its mark that would support the sale of wine in interstate commerce under 27 USC Section 203(a). Therefore, Brew4U contended, respondent abandoned the mark because there was no evidence of any bona fide use of the mark for wine.

However, respondent "has wine produced and bottled that is given to others to promote [its] business," the wine being labeled with respondent's mark. In its discovery responses (which petitioner submitted into evidence) respondent provided the names of nine individuals to whom it has delivered wine within the past three years. It stated that it "currently" delivers its wine "direct to consumer delivery." There was limited documentary evidence to support respondent's discovery responses, but the documents were consistent with the responses.

Petitioner Brew4U  maintained that this activity was insufficient to confer trademark rights in connection with wine because it was not the type of commercial use that is typical in the wine industry and does not rise to bona fide trademark use for wine, citing the Board’s decision in Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043 (TTAB 2017), and its non-precedential decision in Modern House Wines LLC v. Hidden Wineries Inc., 2017 WL 3718268, 2017 TTAB LEXIS 290 (TTAB 2017), as instructive on this point.

The Board, however, distinguished those two cases. In Tao Licensing the Board ruled that the distribution of samples of vodka did not confer trademark rights because the evidence showed that the respondent was not "using or even ready to use the mark in the ordinary course of trade," especially since there were no sales in the following two years. In Modern House Wine, there were no sales and no other evidence supporting use of the mark.

This case differs from Tao Licensing and Modern House Wine which were based on the respondents’ failure to use their marks in connection with the sale of goods. Here, the evidence supports Respondent’s use of its mark on wine distributed as a promotional item in connection with its brand development and package design services. Petitioner has not established that such use is not in the ordinary course of trade.

The Board observed that "a party need not be a manufacturer of goods in order to own and register a trademark."

"[A]any person in the normal channels of distribution including a manufacturer, a contract purchaser who has the goods manufactured for him, and a retailer or merchant ... can be the owner of a trademark “in commerce” if he applies or has someone in his behalf apply his own trademark to goods to which he has acquired ownership and title and sells or merely transports such goods in commerce as his own product with the mark, as applied thereto, serving to identify the particular product as emanating from the shipper or seller in his own capacity." In re Expo ‘74, 189 USPQ 48 (1975).

Promotional gifts, such as respondent's bottles of wine bearing its mark, may qualify as "transportation" under the definition of "use in commerce" in the Lanham Act. "In other words, a for-profit sale of goods is not required for a statutory use of a mark in commerce. See Capital Speakers Inc. v. Capital Speakers Club of Washington D.C. Inc., 41 USPQ2d 1030, 1034 n.3 (TTAB 1996)."

Petitioner's evidence failed to establish abandonment, but instead showed that Respondent has used its mark and not abandoned it.

Fraud: Petitioner's fraud claim was based on the assertion that Icon Design knew it was not selling or manufacturing wine when it filed its Statement of Use and when it filed its Section 8 Declaration. However, petitioner failed to provide sufficient evidence to show that Icon Design made any false representation regarding use. Moreover, there was no evidence of an intention to deceive the USPTO.

Therefore the fraud claim was quickly denied.

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TTABlogger comment: Under Section 45, "use in commerce" requires that "the goods are sold or transported in commerce." Note the "or."

BTW, the Board ruled in Stawski v. Lawson that the interestate shipment of wine without a COLA approval was unlawful and therefore not "use in commerce." TTABlogged here.

PS: See Wine Law Expert Paul Reidl's comment on whether COLA approval was required.

Text Copyright John L. Welch 2020.