Thursday, October 27, 2016

Trademark Reporter Commentary: "USPTO Snuffs Out Marijuana Dispensary Service Mark Application ...."

Seattle-based J. Michael Keyes reviews the TTAB's recent decision in In re Brown, in his pun-filled commentary entitled, "USPTO Snuffs Out Marijuana Dispensary Service Mark Application: Will All Others Go Up in Smoke, Too?" (106 Trademark Reporter 988 (September-October 2016). In Brown, the TTAB affirmed a refusal to register the mark HERBAL ACCESS for "retail store services featuring herbs," on the ground that the mark was being used in connection with the illegal sale of a substance (marijuana) in violation of the federal Controlled Substances Act (CSA).

As In re Brown tells us, federal trademark protection is currently unavailable for those businesses seeking to protect trademarks and service marks that involve the sale of marijuana. Not all arguments in favor of registration are forever snuffed out, though. There may still be some daylight to challenge the underlying basis of the TTAB’s decision regarding the application of the Controlled Substance Act to applicants who are legally exercising their right to sell marijuana under state law

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

Wednesday, October 26, 2016

TTAB Test: Which One of these Three Section 2(d) Refusals Was Reversed?

I once heard a TTAB judge say that the outcome of most Section 2(d) likelihood of confusion cases can be predicted just by looking at the marks and the identified goods/services, without more. Well, try your luck on these three appeals. Which one resulted in a reversal? [Answer in first comment.]

In re B&M Noble Co., Serial No. 86338620 (October 4, 2016) [not precedential]. [Refusal to register DUCHATEAU DOORS for "wooden doors excluding garage doors, namely, wooden interior doors and wooden entry doors; wood door frames; non-metal decorative moldings and decorative trim for use in building construction; wood moldings; doors of wood clad in aluminum"[DOORS disclaimed] in view of the registered mark CHATEAU for "non-metal garage doors"].

In re Alia Sonara Design Works, LLC, Serial No. 86338224 (September 29, 2016) [not precedential]. [Refusal to register the mark ALIA SONARA in the form shown below, for "Bow ties; boxer briefs; boxer shorts; head scarves; shoulder scarves; silk scarves; ties" on the ground of likelihood of confusion with the registered mark ALIA for "“ladies' clothing, namely jackets, skirts, blouses, tops, pants, pant suits, shirts, coats, sweaters, tunics, housecoats, jumpers, jeans, t-shirts, vests, tank tops, cullotes, tunics, and suits"].

In re Zen Marketing, LLC, Serial No. 86487195 (September 29, 2016) [not precedential]. [Refusal to register ZEN TEA TRADERS & Design (shown below left) for "Black tea; Earl Grey tea; Fruit teas; Green tea; Japanese green tea; Oolong tea; Rooibos tea; Tea; Tea for infusions" [TEA TRADERS disclaimed], in view of the registered marks ZenTea & Design for "tea" (shown below right) and MY ZEN TEA for "Tea, herbal tea, teabased beverages, coffee, sugar, spices"].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.

Tuesday, October 25, 2016

TTAB Test: Is CARS Merely Descriptive of Automobile Data Collection Software?

The USPTO refused to register the mark CARS for computer software and hardware for capturing road data and determining safe curve speeds for automobiles, on the ground of mere descriptiveness under Section 2(e)(1). Applicant contended that the term is at worst suggestive of a feature of its goods and services but does not merely describe them, pointing out that CARS is an acronym for "Curve Advisory Reporting System." How do you think this came out? In re Rieker Instrument Company, Inc., Serial No. 86197455 (October 21, 2016) [not precedential].

Examining Attorney April E. Reeves submitted evidence that "cars" is a synonym for "automobiles." [duh! - ed.] Applicant's identification of goods indicates that its products are used with automobiles. She also submitted evidence showing that “cars” is used descriptively "in the context of curve speed determination, both to refer to the type of vehicles for which safe curve advisory speed may be determined and to the automobiles used to gather data used in calculations to determine safe curve speed." The evidence also showed that "cars" is used to describe automobile-related software generally.

Applicant contended that the refusal represents an oversimplification of its goods, which comprise "a complete, indivisible hardware and software unit" "used by sophisticated state and local governments to capture speed data, with the resulting data ultimately used to achieve speed advisory signage uniformity from state to state." The Board pointed out that the goods as identified in the application control its analysis, and in any event the USPTO's evidence showed use of the word "cars" in a descriptive manner in the field of applicant's data-capturing software and hardware.

Finally, applicant asserted that CARS is a double entendre whereby the "primary significance of the CARS mark is thus derived from the meaning and overall commercial impression engendered by the CARS mark as an acronym for 'Curve Advisory Reporting System.'" However, there was no evidence that consumers recognize that acronym, or that consumers would understand CARS to refer to anything other than automobiles.

In sum, "consumers would immediately understand CARS, when used in connection with Applicant’s identified goods and services, to describe key features of the software and hardware – that their purpose involves cars and that they are used in cars."

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog note: Would the mark THE CARS be merely descriptive of a musical band if the band's recorded music is played in automobiles? Why not? WYHA?

Text Copyright John L. Welch 2016.

Monday, October 24, 2016

TTAB Enters Summary Judgment in TIGER SHARK Opposition - Lack of Bona Fide Intent

The Board granted Opposer Heinekin Asia Pacific's motion for summary judgment in this opposition to registration of the mark TIGER SHARK for beer, finding that Applicant Claypool lacked the requisite bona fide intent to use the mark in commerce when he filed his Section 1(b) application to register. Heineken Asia Pacific Pte. Ltd. v. Jonathan A. Claypool, Opposition No. 91220927 (September 26, 2016) [not precedential].

As we know, the lack of documentary evidence regarding an applicant's alleged bona fide intent is sufficient proof, absent adequate explanatory evidence, to demonstrate that applicant lacked a bona fide intention to use the applied-for mark in commerce at the time of filing. See Commodore Electronics Ltd. v. CBM Kaubshiki Kaisha, 26 USPQ2d 1503 (TTAB 1993).

Applicant Claypool admitted that he had no written plans to manufacture or sell beer under the mark, had not discussed distribution with any distributor, had not manufactured any type of beer, and had no retail marketing plan. He admitted that he had no documents regarding adoption of the mark, no labels or packaging, no advertising or marketing materials, no business plans, and no documents regarding money spent, potential consumers, or manufacturing of beer.

He stated that he has "no immediate plans to market beer, but plans to do so in 2 or 3 years, but has "no specifics in place."

Claypool asserted that he has "a simple mental memorized plan that is in fact a basic business plan," that he has been actively performing research and development regarding the production of beer, including taste testing by third parties, and that he has conducted clearance searches and has prosecuted additional mark as part of a collective plan.

Nonetheless, the only documents that Claypool submitted were his application to register, a copy of an ITU application that he filed on behalf of a third-party with whom he discussed financing for a brewery, and a TESS search report for the TIGER SHARK mark.

The Board observed that it has consistently held that neither the filing of an ITU application nor a trademark search is sufficient to establish a bona fide intent. Nor does the filing of applications for other marks suffice. In fact, the filing of multiple applications for various marks, combined with his estimate that he is two or three years from marketing a product, at a minimum casts doubt on his bona fides.

And so the Board granted the motion for summary judgment.

Read comments and post your comment here.

TTABlog comment: Oh well, he would have lost on the Section 2(d) ground anyway

Text Copyright John L. Welch 2016.

Friday, October 21, 2016

Belmora Files Petition for Writ of Certiorari in FLANAX Case

In the latest chapter in the long-running battle between Belmora LLC and Bayer over the mark FLANAX, Belmora has filed a petition for writ of certiorari from the Supreme Court. [Petition here]. Belmora seeks review of the ruling of the U.S. Court of Appeals for the Fourth Circuit in March 2016, which vacated an order of the U.S. District Court for the Eastern District of Virginia that had dismissed Bayer's claims because Bayer had never used the mark FLANAX in the United States.

Belmora owns a U.S. registration for the mark FLANAX for a naproxen sodium pain reliever, and has used the mark in this country for more than a decade. Bayer petitioned to cancel the registration, and when Belmora sought review of that decision by way of civil action, Bayer added claims for unfair competition.

The lower court dismissed Bayer's Section 43(a) false association and false advertising claims under FRCP 12(b)(6) and entered judgment on the pleadings as to Bayer's Section 14(3) claim, based on the district court's reading of the Supreme Court's Lexmark decision. [TTABlogged here].

In the petition, the "Question Presented" is stated as follows:

Whether Sections 14(3) and 43(a) of the Lanham Act allow a foreign business that has neither used nor registered its trademark in the United States to sue the owner of a U.S. trademark for conduct relating to the owner’s use of its U.S. mark.

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

Thursday, October 20, 2016

TTAB Finds Acquired Distinctiveness for Headset Configuration Mark

The Board reversed a refusal to register the mark shown below, comprising the configuration of a headset, for "headsets for RF communications ...," finding that the mark had acquired distinctiveness. Applicant showed that it income from sales of the products has been high, that it has a 60% market share, that it used "look for" advertising to promote the mark, and that it is industry practice to include distinctive designs on headsets. In re HM Electronics, Inc., Serial No. 86162961(November 17, 2016) [not precedential].

Applicant's mark did not include the over-the-head band, the ear cushion, the buttons, and the boom microphone. As we know, product configuration marks cannot be inherently distinctive. Applicant claimed acquired distinctiveness under Section 2(f). The Board noted that "[a]n application faces a heavy burden in establishing the distinctiveness of a product design."

Declarations from applicant's vice president of marketing stated that the mark has been in use for about 5 years and revenues have exceeded $35 million dollars. Applicant's headsets are the top seller in the QSR (Quick Service Restaurant) industry. Applicant has spent 1.25 million dollars in advertising. The headset was designed to be visually distinctive, and manufacturers in the field design their headsets to have unique looks. Applicant's advertising has included the caption, "Look for the unique earpiece design."

A declaration from a customer stated that the shape and look of applicant's headset is immediately associated with applicant. Applicant's Senior Engineering Manager averred that the three major headsets in the field make their headsets look visually different, so that each headset is identifiable by the look of the headset.

Industry practice was a key factor in In re Black and Decker Corp., 81 USPQ2d 1841 (TTAB 2006), in which the Board found acquired distinctiveness in a design for a key head. [TTABlogged here].

And so the Board found that applicant's evidence established acquired distinctiveness.

Read comments and post your comment here.

TTABlog comment: It's not often a product configuration passes muster at the Board. Good job by the applicant in marshaling its evidence.

PS: note that the opinion is erroneously dated "2015."

Text Copyright John L. Welch 2016.

Wednesday, October 19, 2016

On Summary Judgment, TTAB Sustains BONNIE CASHIN Opposition For Lack of Bona Fide Intent

The Board sustained an opposition to registration of the mark BONNIE CASHIN for backpacks, handbags, and clothing, finding that applicant Stephanie Lake lacked the necessary bona fide intent to use the mark in commerce when she filed her Section 1(b) application. Applicant Lake's lack of documentary evidence regarding her alleged bona fide intent was sufficient to support the Board's granting of opposer's motion for summary judgment, under Commodore Electronics Ltd. v. CBM Kaubshiki Kaisha, 26 USPQ2d 1503 (TTAB 1993). The Trustees of the Bonnie Cashin Foundation, Lucia Keller and David Baum v. Stephanie Day Lake, Opposition No. 91213081 (October 12, 2016) [not precedential].

The Board has held that when there is no evidence of an applicant's bona fide intent to use the applied-for mark in commerce when it filed its application to register, entry of summary judgment is appropriate. See Honda Motor Co. v. Winkelmann, 90 USPQ2d 1660 (TTAB 2009). [TTABlogged here]. Applicant pointed only to the declaration that her counsel signed when filing her application, but she admitted that she had not taken any steps to use the mark. Her business strategy was not finalized, she hadn't commenced advertising, and hadn't determined specific channels of trade or volume of goods to be distributed.

The Board concluded that applicant had taken no actual steps toward preparing to use the BONNIE CASHIN mark on the identified goods, and had only a subjective intent to use mark when she filed the involved application.

Prior to January 2012, when she filed her application, applicant Lake was employed by opposer, and she represented to consumers that the BONNIE CASHIN mark identified opposer as the source of the goods and services offered at its website. She testified on deposition that her first step toward launching the brand was the filing of the involved application.

In sum, the Board found no evidence that applicant has a bona fide intent to use the mark BONNIE CASHIN on the identified goods when she filed her application.

Therefore the Board sustained the opposition.

Read comments and post your comment here.

TTABlog comment: According to Wikipedia, Bonnie Cashin was "an influential American designer and is considered one of the pioneering designers of American sportswear." Stephanie Lake's book about Bonnie Cashin was published in 2016.

Text Copyright John L. Welch 2016.

Tuesday, October 18, 2016

TTABlog Road Trip: AIPLA Annual Meeting, Washington, D.C., October 27th

Yours truly, the TTABlogger, will be heading down to our Nation's Capital for the 2016 Annual Meeting of the American Intellectual Property Law Association (AIPLA) in Washington, D.C. (Register here). The Trademark Track will be presented on Thursday, October 27th. My topic? Wait for it .............. TTAB Developments! (Brochure here).

The Trademark Track will also include a review of the new TTAB Rules of Practice (which will go into effect on January 17, 2017), a panel discussion on disparaging, immoral, and scandalous trademarks (how timely!), and a discussion of USPTO Examination and TTAB Updates (by Commissioner Denison, Deputy Commissioner Marsh, and TTAB Chief Judge Rogers).

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

TTAB Test: Is CLASSIC AUTO ROD (Stylized) Merely Descriptive of Auto Dealerships?

The USPTO rejected Daniel Rechtfertig's application to register the mark shown below, for "automobile dealerships," find the mark merely descriptive under Section 2(e)(1). Applicant described the mark as "the words 'Classic Auto Rod' in a chrome-like script having a three-dimensional appearance, with the words stacked to form the word 'CAR' when read vertically." He contended that the combination of the words appearing in an "unexpected fashion," coupled with the visual elements of the design, rendered the mark at most suggestive of the services. How do you think this came out? In re Daniel Rechtfertig, Serial No. 86554004 (October 13, 2016) [not precedential].

Examining Attorney Ahsen Kahn provided various dictionary definitions and website pages demonstrating that each of the constituent words has descriptive significance in connection with automobile dealerships. Moreover, CLASSIC ROD and AUTO ROD are used descriptively to refer to a type of automobile.

The Board found that the combination CLASSIC AUTO ROD "immediately conveys that Applicant's automobile dealerships feature older hotrods." Nothing in the combination is incongruous or would require further information in order for the descriptive significance to be apparent to consumers.

Turning to the stylization of the mark, the determination of whether the display creates a separate and distinctive impression is a subjective one based on the first impression of the viewer. The Board found that neither the word arrangement nor the stylization of the lettering creates a separate and inherently distinctive impression. Despite applicant's contention, the Board did not find the word "CAR" to be readily discernible, since the letter "A" in AUTO appears to be stacked under the letter "L" in CLASSIC. In any event, the word CAR would merely describe applicant's services.

The script lettering, which applicant describes as "chrome-like," is not so striking that it creates a distinctive commercial impression apart from the wording.

The Board therefore concluded that the applied-for mark merely describes the services, and it affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.

Monday, October 17, 2016

Precedential No. 31: Family of Marks May Have Different Owners if There is Unity of Control, Says TTAB

The Board dismissed this consolidated opposition to registration of the marks MILEWISE and ALLSTATE MILEWISE for insurance services,based on claims of likelihood of confusion with opposers' family of WISE-formative marks. Applicant Allstate moved to dismiss under Rule 12(b)(6) for failure to state a claim, asserting that the pleaded marks are not owned by a single entity and therefore cannot, as a matter of law, comprise a family of marks. Allstate further asserted that Opposers failed to allege that the common characteristic of the alleged family of marks is distinctive and that the marks have been used and promoted in such a way that consumers would associate the common characteristic "WISE" with a single source. The Board ruled that the marks in a family of marks may be owned by different entities if there is "unity of control," but because opposers failed to plead unity of control the Board dismissed the opposition. Wise F&I, LLC; Financial Gap, Administrator LLC; Vehicle Service Administrator LLC; and Administration America LLC v. Allstate Insurance Company, Opposition No. 91226028 (parent)and Opposition No. 91226029 (September 23, 2016) [precedential].

Family of Marks/Unit of Control: Relying on the Wella decisions, opposers maintained that the family of marks doctrine requires only that the shared characteristic of the marks be recognized as indicative of a common origin of the goods or services, and that the common origin need not be a single entity. In Wella, the CAFC vacated a TTAB decision that affirmed a refusal to register Wella AG's mark WELLASTRATE in view of several Wella-formative marks owned by its U.S. subsidiary, pointing out that "[i]f the Wella family of marks connotes to consumers only a single source for all Wella products, namely the Wella organization, it is difficult to see how Wella A.G.'s use of the mark 'WELLASTRATE' would cause confusion as to source because of Wella U.S.'s use of the other Wella marks." On remand, the Board observed that "[c]learly, the [Federal Circuit] views the concept of 'source' as encompassing more than 'legal entity.'"

The Board therefore agreed with opposers here that "in the context of the 'family of marks' inquiry, the concept of common origin ('source') may encompass more than one entity."

In view of the [TTAB's] Wella I and Wella II decisions, it logically follows that related entities can rely on a family of marks as a basis for a Section 2(d) claim – notwithstanding the fact that the pleaded marks are not all owned by a single entity – if the complaint contains sufficient factual allegations that they are related, and that there is unity of control over the pleaded marks such that the marks are indicative of a single source, and all of the other elements for pleading a family of marks are satisfied.

With regard to "unity of control," the TTAB stated in Wella II that:

Besides the existence of a legal relationship, there must also be a unity of control over the use of the trademarks. "Control" and "source" are inextricably linked. If, notwithstanding the legal relationship between entities, each entity exclusively controls the nature and quality of the goods to which it applies one or more of the various "WELLA" trademarks, the two entities are in fact separate sources.

Here, opposers pleaded only that three of the opposing entities are subsidiaries of Opposer Wise F&I. They failed to plead that use of the marks and control of the quality of the services "are controlled by one of the Opposers such that the marks identify a single source for all of the services identified by the respective marks." In Wella II, applicant Wella AG owned substantially all of the stock of Wells (USA), and thus "control[led] the activities and operations of Wella U.S., including the selection, adoption and use of the trademarks."

The Board ruled that an allegation of "unity of control" is a necessary element for claiming a family of marks for purposes of Section 2(d) when the marks are owned by separate legal entities. Opposers failed to make such an allegation and therefore failed to state a claim under Section 2(d) based upon ownership of a family of marks.

Pleading a Family of Marks: Aside from the ownership issue, opposers failed to allege that they have used the pleaded marks in such a way as to establish a family of marks.

To assert ownership of a family of marks a plaintiff must allege, and ultimately prove: (1) prior use of marks sharing a recognizable common characteristic; (2) that the common characteristic is distinctive (i.e., not descriptive or highly suggestive or so commonly used in the trade that it cannot function as the distinguishing feature of any party’s mark); and (3) that prior to the defendant’s first use (or constructive first use) of its involved mark, plaintiff’s marks have been used and advertised in promotional material or in everyday sales activities in such a manner as to create common exposure and thereafter recognition among the purchasing public such that the common characteristic is itself indicative of a common origin of the goods or services.

Opposers failed to plead that the common element WISE is distinctive and failed to plead that they have used and advertised the marks in such a manner that the public associates not only the individual marks, but also the common characteristic of the alleged family, with a single source. For that reason also, the notices of opposition fail to state a claim upon which relief can be granted.

Leave to Amend: The Board allowed opposers 30 days within which to submit amended notices of opposition (or a single consolidated notice).

Read comments and post your comment here.

TTABlog comment: IP ownership maven Pamela Chestek summarizes the decision here at here Property, Intangible blog.

Text Copyright John L. Welch 2016.

Friday, October 14, 2016

TTAB Sustains Opposition to PROGENEALOGISTS for Genealogical Services, Finding Acquired Distinctiveness Lacking

The Board sustained pro se opposer Jeanette K. Daniels's opposition to registration of the mark PROGENEALOGISTS under Section 2(f), finding that the mark lacked acquired distinctiveness. Because the mark is "highly descriptive," applicant's fifteen years of use and its advertising and sales efforts were insufficient to establish distinctiveness. Jeanette K. Daniels v. TGN Services, LLC Opposition No. 91204462 (October 11, 2016) [not precedential].

The Board had little doubt that PROGENEALOGISTS is "highly descriptive." The word "pro" implies that the services are rendered by professionals and a "genealogist" is a person who traces or studies the descent of persons or families. In fact, applicant acknowledged that it adopted the mark largely because of its descriptiveness.

Of course, highly descriptive terms are less likely to be perceived as trademarks and more likely to be useful to competitors in describing their services. More substantial evidence of acquired distinctiveness will typically be required to prove that such a term has source-identifying significance.

Applicant submitted evidence that its business has enjoyed strong growth since 1999. It expended substantial funds developing its website, and expends thousands of dollars each month for online advertising. Since 2010, sales have nearly quintupled. Sales, advertising, and website view figures are "significant." Applicant claims more than 15 years of substantially exclusive use. It did not submit consumers studies or surveys directly evidencing acquired distinctiveness.

The Board pointed out that applicant uses the proposed mark in a descriptive matter. For example, its website states: "ProGenealogists(R) is a consortium of professional genealogists who specialize in genealogical, forensic, and family history research."

The Board noted that, although applicant's growth in sales, advertising, and website views are impressive, raw numbers do not necessarily mean that consumers have come to recognize its proposed mark as a source indicator.

The Board concluded that, in view of the high degree of descriptiveness of applicant's proposed mark, its fifteen years of use and its advertising and sales figures are insufficient to establish distinctiveness.

Moreover, the evidence showed that the terms "pro" and "genealogist" are ubiquitous in applicant's field. An application for registration under Section 2(f) cannot success if the use of the term is not substantially exclusive.

Applicant's claim that others intentionally copied its mark was brushed aside by the Board, since copying is evidence of acquired distinctiveness only if the intent was to confuse consumers and pass off the services. Here, the alleged copyists were merely using common descriptive terms in their descriptive senses.

According to the Federal Circuit, “merchants act at their peril in attempting, by advertising, to convert common descriptive names, which belong to the public, to their own exclusive use.” In re Pennington Seed, Inc., 466 F.3d 1053, 80 USPQ2d 1758, 1762 (Fed. Cir. 2006) (generic use). To allow registration of Applicant’s proposed mark would inhibit legitimate competition by in effect granting a monopoly to what is essentially very common terminology in the genealogy trade, which Applicant’s competitors have an equal right to use. Cf. In re Mars, Inc., 105 USPQ2d 1859, 1866 (TTAB 2013).

And so the Board sustained the opposition.

Read comments and post your comment here.

TTABlog comment: Once a mark is tagged with the "highly descriptive" label, the ballgame is over.

Text Copyright John L. Welch 2016.