TTAB Test: Is ATHLETE INTELLIGENCE Merely Descriptive of Wearable Monitoring Devices?

The USPTO refused registration of the mark ATHLETE INTELLIGENCE, in standard character form, for wearable monitoring devices and systems. Applicant argued that the mark is merely suggestive of the goods because "multistep reasoning" would be need to extract any information from the mark, and further argued that the mark is a double entendre. How do you think this came out? In re i1 Sensortech, Inc., Serial No. 87249539 (November 9, 2018) [not precedential] (Opinion by Judge Angela Lykos).

Examining Attorney Andrew Leaser submitted dictionary definitions of "athlete" and "intelligence," one of the definitions of "intelligence" being "information." Competitors use "intelligence" to describe biometric data or information collection products for athletes.

Within the context of Applicant’s Class 9 and Class 10 goods, purchasers will immediately recognize that the word ATHLETE in Applicant’s mark designates the person wearing Applicant’s “monitoring device and system … comprised of electronic sensors”, and that INTELLIGENCE refers to the gathering of information measuring an individual athlete’s biometrics, positioning and speed, physiology as well as the magnitude and effects of any physical impacts.

The Board concluded that applicant's mark immediately conveys a feature and purpose of the goods: they are designed to collect intelligence from athletes, such as information and data, regarding the performance, health and medical safety of athletes." Applicant's website supports this finding.

Applicant offered various other meanings of its mark, but the Board observed that the marks must be considered in the context of the goods. "[T]he question of whether a proposed mark is merely descriptive is not determined by asking whether one can guess, from the mark itself, what the goods are, but rather by asking, when the mark is seen on or in connection with the goods, whether it immediately conveys information about their nature." Here, no imagination or thought is required to discern the nature of applicant's goods.

As to the double entendre argument, applicant relied on an article on degenerative brain disease suffered by athletes who have sustained multiple concussions. Since concussions are in the news, according to applicant, ATHLETE INTELLIGENCE could be perceived as a reference to or "play" on the idea of preserving the intelligence of an athlete engaged in contact sports.

The Board pointed out that the double connotations of the mark "must be associations that the public would make fairly readily." Both meanings must be readily apparent from the mark itself, without reference to other indicia. The record did not support "a finding that [the] alternative meaning of a 'play' on an athlete's intelligence is well-known or readily apparent such that this alternative meaning might be called to mind."

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TTABlog comment:  Mere descriptiveness is not a guessing game. How did you do?

Text Copyright John L. Welch 2018.r

TTAB Awards Junior User USA Minus Oregon in GREENFIELD Concurrent Use Proceeding

In this concurrent use proceeding, the Board ordered restriction of a registration for the mark GREENFIELD for various healthcare services, to the state of Oregon. Applicant successfully sought concurrent use registrations for the marks GREENFIELD ASSISTED LIVING and GREENFIELD SENIOR LIVING for assisted living facilities in the remainder of the United States. Greenfield Senior Living, Inc. v. Greenfield Health System, LLC, Concurrent Use Proceeding No. 94002722 (November 7, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).

Applicant began use of its marks in 2002 and 2005, more than seven years before registrant filed its application to register. It has expanded to five states, expended more than $100 million in expansion efforts, and spent hundreds of thousands of dollars on advertising and marketing.

Registrant's services are offered at two locations in Portland, Oregon. Applicant's uncontroverted testimony indicated that it adopted its marks in good faith without knowledge of registrant or its mark.

The question, then was what are the "registrable rights" of the parties as to the parts of the United States in which they have not used their respective marks?

The senior user is prima facie entitled to a registration covering the entire United States. "Such a prior user, who applies for a registration before registration is granted to another party, is entitled to a registration having nationwide effect no less than if there were no concurrent user having registrable rights." Those rights should be limited "only to the extent that any other subsequent user, who can establish the existence of rights earlier than the prior user's application for registration, can also prove a likelihood of confusion, mistake, or deception." In re Beatrice Foods Co., 429 F.2d 466, 166 USPQ 431, 436 (CCPA 1970)). However, this presumption in favor of the senior user can be overcome.

The Board first considered the likelihood of confusion issue, and concluded that confusion would not be likely if an appropriate geographic restriction were imposed. The lack of actual confusion over the 15 years of coexistence was relevant to this determination. Moreover, it is not necessary that all possible confusion be eliminated. And the fact that both parties' services are advertised online is not enough to result in a likelihood of confusion, particularly since there was no evidence that registrant has expanded beyond two locations in Oregon or that it enjoys a reputation beyond Oregon.

The next issue was the appropriate geographic restriction. Actual use in an area is not necessary to establish rights there. The inquiry should focus on a number of factors, including the party's past business activity, previous expansion (or lack thereof), and planned expansion. Applying those criteria, the Board found that "the general policy of favoring the first to register is inapplicable and that all other relevant factors favor Applicant. Indeed, Applicant, as the prior user [in its territory], would likely prevail, on the facts present herein, in a petition to cancel the registered mark [actually, the registration, not the mark - ed.], had such a course of action been taken."

Registrant (appearing pro se), did not present any evidence as to its promotional efforts or expansion plans. The Board found that registrant, through inaction over a considerable time period, has abandoned its right to expand use of its mark beyond its trading area. It therefore cannot preclude applicant from "filling the territorial void left by Registrant."

The Board concluded that "the purpose of the statute is best served by granting Applicant registrations for the entire United States except for Registrant's trading area, i.e., the state of Oregon."

Read comments and post your comment here.

TTABlog comment: In concurrent use proceedings involving service marks, Internet usage doesn't seem to matter much since the services are typically rendered locally. What about Software as a Service?

Text Copyright John L. Welch 2018.

A Few New Orleans Photos From INTALM

TTABlog Celebrates 14th Anniversary!

The TTABlog was launched on November 8, 2004, with a blog post entitled "Leo Stoller Loses Again" (here). Remember him? Here we are, thousands of blog posts (and more than 10,000 tweets) later.  Thank you to all you readers!  Greetings from INTALM in New Orleans!



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Text Copyright John L. Welch 2018.

TTAB Test: Is MISEL DISEL Confusable with DIESEL for Pre-Shave Liquids?

Diesel S.p.A. opposed an application to register MISEL DISEL for "smooth shave enhancer, namely, pre-shave liquid," claiming a likelihood of confusion with its registered mark DIESEL for, inter alia, pre- and after shave creams and lotions. The goods are essentially identical, or at least closely related, but what about the marks? How do you think this came out? Diesel S.p.A. v. Misel Disel, LLC, Opposition No. 91225389 (November 5, 2018) [not precedential] (Opinion by Judge David Mermelstein).

The Marks:The Board spent little time discussing the similarity or dissimilarity of the marks. It found the word DISEL to be "highly similar" to the word DIESEL: they look similar and applicant' mark is likely to be pronounced the same as DIESEL because it looks like a misspelling of the common word"diesel." Although applicant's mark begins with MISEL, and the first word in a mark is the portion that consumers notice first [DUH! - ed.], MISEL is itself similar to DISEL and invites a rhyming pronunciation of MISEL similar to "diesel:" i.e., mee-zul dee-zul. Because of the rhyme, MISEL does not creat a separate commercial impression from DISEL. The Board concluded that the marks are "substantially similar."

The Goods: The Board spent more time coming to the conclusion that the goods are in part identical or closely related. Applicant's goods comprise a "smooth shave enhancer," whatever that is. The Board found that it is encompassed by opposer's "pre- and after shave creams and lotions." But even if the goods did not overlap, they are closely related.

The Board presumed that the overlapping goods travel in the same, normal trade channels to the same classes of consumers. The items are relatively low-priced and would be purchased "without such careful consideration as would alleviate confusion."

Applicant argued that the fame of the DIESEL mark (for apparel) works against Opposer, but the Board pointed out that the fame of a mark is never a negative factor: "no mark is too famous to be confused." Indeed, the more well-known a mark, the easier it will be to find a likelihood of confusion under the du Pont factors. However, the Board agreed with applicant that the fame of DIESEL in the apparel field does not suggest that purchasers are more likely to believe that Opposer is the source of applicant's products.

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

Read comments and post your comment here.

TTABlog comment: How did you do? FWIW: I would pronounce applicant's mark MISSLE DISSLE.

Text Copyright John L. Welch 2018.

TTAB Test: Is COCOON BY SEALY Confusable With SLEEP COCOON for Mattresses and Pillows?

The USPTO refused registration of the mark COCOON BY SEALY in standard character and design form (shown below), finding the mark likely to cause confusion with the registered mark SLEEP COCOON, both for mattresses and pillows (SLEEP disclaimed). Applicant contended that the "famous" SEALY house mark distinguishes its mark from the cited mark. How do you think this came out? In re Cocoon International Sales, LLC, Serial Nos. 87102115 and 87102130 (November 1, 2018) [not precedential] (Opinion by Judge Linda A. Kuczma).

Because the goods are identical, they presumably travel through the same, normal channels of trade to the same consumers. Applicant contended that its mattresses are priced between $399 and $1149 and its pillows at $49 each, and so consumers thereof will be "sophisticated." The Board noted, however, that the application and cited registration do not limit the goods as to price. Although mattresses are typically not purchased on impulse, mattresses and pillow are purchased by all types of consumers, and so "it is difficult to conclude that all of the respective consumers are sophisticated or that any care taken in the purchase of the goods would mitigate the likelihood of confusion resulting from the use of similar marks on identical goods."

Moreover, applicant did not prove that purchases of pillows are sophisticated, and the Board must consider the least sophisticated purchaser. In any case, even sophisticated consumers are not immune to source confusion when encountering similar marks and identical goods.

As to the marks, the Board found COCOON to be the more dominant portion of registrant's mark, the word SLEEP having been disclaimed. [I think neither word is dominant - ed.]. As to applicant's design mark, COCOON is clearly dominant.

Applicant contended that its registered and "famous" house mark SEALY is sufficient to distinguish the marks. The Board noted that its precedents hold that addition of a house mark generally does not avoid confusion, and may actually aggravate the situation.

However, the addition of a house mark may be impactful when there are "recognizable differences" in the marks, or the marks are "highly suggestive or merely descriptive or play upon commonly used or registered terms."

In this case, even if “SEALY” is a famous house mark, that does not dictate a finding of no likelihood of confusion. When we consider that Applicant’s identified goods are identical to Registrant’s goods and that their respective marks contain the identical term “COCOON” which is mildly suggestive of the goods, the addition of Applicant’s house mark in the nature of a tag line after the term “COCOON” does not eliminate the likelihood of confusion. Consumers familiar with Registrant’s SLEEP COCOON mark for its mattresses and pillows are likely to believe that there is some association or sponsorship with Applicant’s COCOON BY SEALY mattresses and pillows.

The Board observed that the Trademark Act protects against "reverse confusion," when a "significantly larger or prominent junior user, such as Applicant, is perceived as the source of a smaller, senior user's goods such that the 'senior user may experience diminution or even loss of its mark’s identity and goodwill due to extensive use of a confusingly similar mark by the junior user' for related goods."(quoting In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1752 (Fed. Cir. 2017) (quoting In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993))).

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

Finally, applicant argued that the cited mark is weak in view of four existing registrations for marks containing the word COCOON for bedding and bedding accessories (three owned by the same entity). The Board found that this evidence fell far short of the "voluminous" and "extensive" evidence presented in Jack Wolfskin and Juice Generation. Moreover, third-party registrations, standing alone, have limited probative value because they are not evidence that the marks have actually been used in commerce.

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

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2018.

TTAB Test: Is SONIA for Sauces Confusable with SONIA SONI LIFE IS A RECIPE for Spices?

The USPTO refused registration of the mark SONIA for "sauces; chili sauce; hot sauce," finding a likelihood of confusion with the registered mark SONIA SONI LIFE IS A RECIPE for "spices, spice blends; spice rubs." Applicant argued that the marks are distinguishable because SONIA is a weak element in the cited mark in light of various third-third party registration and applications for marks containing the letters "S," "O," "N," and "A" in the food classes, and third party use of those and other marks. How do you think this came out. In re Productos Verde Valle, S.A. de C.V., Serial No. 87137207 (November 2, 2018) [not precedential] (Opinion by Judge Albert Zervas).

Goods: Based on third-party registrations and Internet excerpts submitted by Examining Attorney Parker Howard, the Board found the goods to be related and complementary: not only are the goods sold by third parties under the same mark, but "[t]he evidence also shows that spices may be a key ingredient in sauces, or may be interchangeable in a recipe, for example, using hot sauce instead of chili powder."

Since there are no limitations on channels of trade or classes of consumers in the application or cited registration, the Board presumed that the goods travel in the normal channels for those goods, including online and in grocery and specialty food stores, to ordinary consumers. The goods are relatively inexpensive items that are purchased without a great deal of care.

Third-Party Marks: As indicated, applicant relied on third-party uses and registrations in the food classes to argue that that the cited mark is entitled to a narrow scope of protection: SONYA,  SOHNA, SANIA, SONIA'S SWEETS, and SONA for various food items. The Board found SOHNA, SANIA, and SONA to be so different in commercial impression from SONYA that they had no probative value. The remaining two uses - SONYA for apples and and SONIA’S SWEETS for tea and soy sauce - "do not evidence such a widespread and significant use of the name 'SONIA,' or its phonetic equivalent 'SONYA,' in the food and food flavoring industries that we can conclude that the cited mark is so weak that the public would be able to distinguish the source of Registrant’s goods from those of Applicant by the differences in their respective marks."

The Marks: The Board found the marks to be similar in appearance, sound,  connotation, and commercial impression. It deemed SONIA SONY to be the more prominent portion of Registrant's mark, since LIFE IS A RECIPE "imparts a connotation that simply highlights use of the spices sold under the cited mark." The first name SONIA "is a notable component of SONIA SONI given its location as the first part of the mark and, thus, the first word to appear on any label or to be articulated when pronouncing the mark." Furthermore, registrant might emphasize the word SONIA by displaying it in larger, bolder typeface.

The Board observed that customers are "likely to believe that Applicant’s mark is simply a shortened version of Registrant’s mark, because of 'the penchant of consumers to shorten marks.'"

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: If a mark is registered in standard character form, should the registrant later be able to claim that the registration covers a use in which, as the Board suggests here, one word of the mark is used in a way that it dominates the other words in prominence?

Text Copyright John L. Welch 2018.

Three Section 2(d) TTAB Cases: How Do You Think They Came Out?

Here are three recently decided Section 2(d) cases: one opposition and two appeals. See if you can "guess" how they came out. [Answer in first comment].

In re I.L.L.A. S.P.A., Serial No. (October 30, 2018) [not precedential] (Opinion by Judge Robert H. Coggins) [Refusal to register OLLIA-TECH for "Non-stick coatings for pans, cookware, baking trays, small electric kitchen apparatus and utensils; and Frying pans; skillets; earthenware saucepans; saucepans; pots for cooking; household utensils, namely, graters; kitchen utensils, namely, splatter screens," in view of the registered mark OLIA DESIGN for “glass wares, namely, decorative, and handcraft art objects of glass; beverage glassware; mugs; cups and mugs” [DESIGN disclaimed] Applicant maintained that the marks are pronounced differently and have different connotations ("tech" versus "design."]

Vineyard 29, LLC v. 29 Wine Company, LLC, Opposition No. 91227774 (October 29, 2018) [not precedential] (Opinion by Judge Jyll Taylor) [Opposition to registration of HIGHWAY 29 for wine in view of the registered mark 29 for wine. Applicant pointed to five other entities using "29" as part of a mark].

In re 8415927 Canada, Inc., Serial Nos. 87056710 and 87056720 (October 25, 2018) [not precedential] (Opinion by Cindy R. Greenbaum) [Refusal to register the mark DIVE PRIME SEAFOOD in standard character and the design form shown below left for "bar services; restaurant services; take-out restaurant services" [PRIME SEAFOOD disclaimed]  in view of the registered marks DIVE COASTAL CUISINE in standard character and the design form shown below right for restaurant services [COASTAL CUISINE disclaimed]. Applicant cited 22 third-party registrations for restaurant mark containing the word DIVE, and also contended that the word has differing meanings in the respective marks.]

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2018.

TTAB Posts November 2018 Hearing Schedule

The Trademark Trial and Appeal Board (T-T-A-B) has scheduled six (6) oral hearings for the month of November 2018. The hearings will be held in the Madison Building in Alexandria, Virginia. Briefs and other papers for these cases may be found at TTABVUE via the links provided.



November 7, 2018 - 10 AM: In re WGVS USA, LLC, Serial No. 87205484 [Section 2(e)(1) mere descriptiveness refusal of WORLD'S GREATEST VIDEOS for "Providing a web site that gives computer users the ability to upload and share user-generated videos, on a wide variety of topics and subjects; Entertainment services, namely, conducting contests and sweepstakes by broadcasting audio and video clips over the Internet or other communications network; and Audio and video broadcasting services over the Internet or other communications network featuring the uploaded, posted, shown, displayed, and tagged videos of others; electronically transmitting information, audio, and video clips"].

November 8, 2018 - 11 AM: Moonlite Bar-B-Q Inn, Inc. v. Moonlight Brewing Company, Opposition No. 91222542 [Section 2(d) opposition to registration of MOONLIGHT BREWING COMPANY for beer [BREWING COMPANY disclaimed] in view of the registered mark MOONLITE for restaurant services, food items, and ancillary goods].

November 13, 2018 - 1 PM: Peter Piper, Inc. v. OTG Experience, LLC, Opposition No. 91230289 [Section 2(d) opposition to registration of PETER PIPER for "Motor vehicles, namely, automobiles that accepts orders for, dispenses and packages for delivery  various food and retail items; Order fulfillment services; Wholesale and retail store services featuring mobile vending machines for order fulfillment; leasing and rental of mobile vending machines; Mobile vending in the field of convenience store items; and Mobile automated machine that accepts orders for, dispenses and packages for delivery various food and retail items; Vending machines, mobile vending machines, and automatic vending machines," and the mark and PETER PIPER SMARTRUCK for the services listed above, in view of the registered mark PETER PIPER PIZZA for pizza, restaurant services, and video game arcades].

November 13, 2018 - 2:30 PM: In re Synthon Holding B.V., Serial No. 87464096 [Section 2(d) refusal to register SYNTHON, in standard character form, for various pharmaceutical-related goods and services in International Classes 5, 35, 40, 42 and 45, in view of the registered mark SYNTHEON  for services in in International Classes 40 and 42 for design, development and testing of medical devices].

November 14, 2018 - 10 AM: Trek Bicycle Corporation v. Natural Balance Foods Limited, Opposition No. 91221706 [Section 2(d) opposition to registration of TREK & Design for snack bars in view of the registered mark TREK for bicycles, bicycle parts and accessories, and various other good, including powders for making energy drinks].

November 14, 2018 - 1 PM: In re ETA SA Manufacture Horlogère Suisse, Serial Nos. 87224039 and 87275493 [Refusals to register the two marks shown first below, for "watch movements" in view of the registered mark shown further below, for "Clocks and watches, movements for watches and clocks; cases for watches and clocks, dials for watches and clocks; watch bracelets and watch straps; watch crowns"].

Read comments and post your comment here.

TTABlog note: Any predictions? See any WYHA?s? Anything interesting?

Text Copyright John L. Welch 2018.

H New Media Law Seeks TM Paralegal for Miami Office

H New Media Law is seeking a trademark paralegal to manage a U.S. and International trademark portfolio at its Miami office at 1110 Brickell Avenue. Great pay and benefits. Send resume to Frank Herrera (fherrera at hnewmedia dot com)..

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Twin TTAB Test: Is ALLEN HOTEL Confusable With ETHAN ALLEN for Lodging Services? Is it Geographically Descriptive?

The USPTO refused registration of ALLEN HOTEL for “hotel accommodation services” [HOTEL disclaimed], finding the mark to be primarily geographically descriptive under Section 2(e)(2), and likely to cause confusion with the registered mark ETHAN ALLEN for, inter alia, inn and motel services. Applicant argued that the commonality of “ALLEN” is an insufficient basis for the Section 2(d) refusal, and that there are many geographical locations named “Allen” besides Allen Street in New York City. How do you think this came out? In re Allen Street Owner LLC, Serial No. 87138386 (October 26, 2018) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Likelihood of Confusion: The examining attorney maintained that ALLEN is the dominant portion of applicant’s mark, since “hotel” is disclaimed, and further that “Allen” could be perceived as a surname in both marks. Applicant asserted that ETHAN ALLEN is a well-known furniture company, and therefore consumers are likely to view ETHAN ALLEN as indicating “a hotel that promotes the Ethan Allen lifestyle” featuring ETHAN ALLEN furniture. The Board took judicial notice that Ethan Allen was an early American patriot, the leader of the “Green Mountain Boys” of Vermont.

The Board found that the marks have different meanings and commercial impressions: "ETHAN ALLEN suggests either the widely recognized historical figure, or a hotel emphasizing the Ethan Allen style aesthetic and containing Ethan Allen furnishings." ALLEN HOTEL, however, would be seen as the given name of surname of someone associated with the hotel. Nothing in the record suggested that ALLEN HOTEL would be percieved as a variant of the ETHAN ALLEN mark.
The Board concluded that the differing connotations and commercial impressions of the marks outweighed any similarities in sound and appearance. And so it reversed the Section 2(d) refusal.

Geographical Descriptiveness: The examining attorney issued this refusal after applicant stated that its services will be rendered between Orchard and Allen Streets in New York City. The first prong of the Section 2(e)(2) test requires that the primary significance of the term at issue be the name of a place generally known to the public.

The examining attorney relied on a map showing that “Allen St.” is a street in New York City, a photo of the street, a Wikipedia entry, and two website excerpts discussing “Allen Street Hotel.” According to Wikipedia, the street was named after Brigadier General William Henry Allen, the youngest person to command a ship in the War of 1812. Applicant did not dispute that Allen Street is a geographic location, but contended that it is not well known. Moreover, “ALLEN” by itself has no independent significance, since there are “at least 25 geographic locations named ‘ALLEN’ in the United States.”

The Board agreed with applicant that there are numerous geographic locations named “Allen,” and found that the record did not support a conclusion that applicant’s location is the most prominently associated with the name “Allen.” The Board, therefore, was not convinced that “Allen” primarily identifies a geographic location in New York City that is “known generally to the American purchasing public.”

In this case, the record reflects that Allen has non-geographic significance and can refer to numerous geographic locations. Additionally, the quantity and nature of the evidence regarding Allen Street in New York City does not establish that it is generally known to United States consumers. We lack persuasive evidence showing, for example, that Allen Street has a well-known historical significance, is a popular tourist destination, or has a widely recognized reputation for some other reason. Rather, we find a similarity to the situation in Societe Generale des Eaux Minerales, 3 USPQ2d at 1452, where the Court stated, “[t]here can be no doubt that the PTO has established that Vittel is in fact the name of a small town in the Voges mountain region of France ... but how many people in this country know that?”

And so the Board reversed the Section 2(e)(2) refusal.


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TTABlog comment: Suppose applicant had applied to register THE ALLEN HOTEL. Would that have made the path easier?

Text Copyright John L. Welch 2018.