Tuesday, May 22, 2018

Precedential No. 18: TTAB Extends Safer Rule to Internet Evidence During Ex Parte Prosecution

Observing that there are no precedential decisions regarding an examining attorney's failure to properly submit Internet evidence, the Board ruled that both applicants and examining attorneys must include the URL and the date the webpage was accessed. If an applicant does not object to the examining attorney's failure to do so, "the Board will consider the website for whatever probative value it may have." If the applicant fails to do so without objection from the examining attorney, the Board may consider the objection waived. In re Mueller Sports Medicine, Inc., Serial No. 87209946 (May 16, 2018) [precedential] (Opinion by Judge Marc A. Bergsman).

Until Safer Inc. v. OMS Inv. Inc., there was no requirement that a party include a webpage address when introducing a webpage into evidence in an inter partes proceedings. [Now codified in Trademark Rule 2.122(e)]. The TMEP adopted the Safer requirements for examining attorneys in ex parte proceedings. TMEP § 710.01(b) (October 2017). But the TMEP is not the law.

In determining whether to make those requirements the law, the Board first considered an analogous situation for guidance (namely, lists of third-party registrations):

If the applicant, during the prosecution of the application, provided a listing of third-party registrations, without also submitting actual copies of the registrations, and the examining attorney did not object or otherwise advise the applicant that a listing is insufficient to make such registrations of record at a point when the applicant could cure the insufficiency, the examining attorney will be deemed to have waived any objection to the admissibility of the list. Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) § 1207.03 (June 2017); see also TBMP § 1208.02.

Following that example, the Board ruled that "if an examining attorney fails to include the website URL and the date that the webpage was accessed but the applicant fails to lodge an objection on that ground, then the Board will consider the website for whatever probative value it may have."

Further more, the Board extended those requirements not only to examining attorneys, but to applicants in ex parte proceedings as well.

Similar to the submission of third-party registrations, Examining Attorneys have a responsibility to make sure that applicants properly submit Internet evidence. If the applicant’s response includes Internet evidence without a URL or date it was printed, the examining attorney must object to the evidence in the first Office action following the response and advise the applicant as to the proper way to make the Internet evidence of record. Otherwise the Board may consider the objection to be waived.

If the applicant files an appeal, the examining attorney should continue the objection to the evidence in his or her appeal brief.

Turning to the substantive issue in the case, the Board affirmed a Section 2(e)(1) mere descriptiveness refusal of the mark RECOIL for medical and athletic cohesive tape. Dictionary definitions, third-party website pages, and applicant's own packaging confirmed that "recoil" is used to describe the ability of applicant's tape to return to its original form.

Read comments and post your comment here.

TTABlog comment: Note the use of "will" and "may." If the applicant fails to object, the Board will consider the evidence. If the examining attorney fails to object, the Board may consider the objection waived. Does this difference make sense?

Text Copyright John L. Welch 2018.

Monday, May 21, 2018

Precedential No. 17: TTAB Grants Section 2(d) Petition for Cancellation of KEMI OYL Registration; Laches Defense Fails

The Board granted this petition for cancellation of a registration for the mark KEMI OYL for cosmetics and personal care products, finding the mark likely to cause confusion with opposer's identical mark previously used for overlapping goods. In stipulating to invoke the Board Accelerated Case Resolution procedure, the parties agreed that the sole issue for resolution was priority, but that respondent could pursue its affirmative defense of laches. Kemi Organics, LLC v. Rakesh Gupta, Cancellation No. 92065613 (May 15, 2018) [precedential] (Opinion by Judge Christopher Larkin).

Priority/Abandonment: Respondent was allowed to rely on the filing date of its underlying trademark application, which in turn claimed the priority of its U.K. filing under Section 44(d) (in 2010). While there was some question as to what exact date respondent was entitled to because respondent misstated the foreign filing date in his application, that was of no consequence since petitioner established its use before the earlier priority date.

Section 2(d) provides a ground for cancellation based upon likelihood of confusion with "a mark ... previously used in the United States ... and not abandoned .... A mark is deemed abandoned when its use has been discontinued with intent not to resume use." Respondent asserted abandonment as a defense to petitioner's claim of prior use.

Looking at the record as a whole, as required, the Board found that petitioner's documentary evidence had little or no probative value. However, its principal witness testified that petitioner sold hair and skin care product under the KEMI OYL mark for more than thirty years, that the products are sold throughout the United States, and that annual sales for the years 2010 through 2016 have been in the six-figure range.

Respondent contended that petitioner's testimony failed to establish that the KEMI OYL mark was in continuous use, but the Board pointed out that "continuous use is not required to establish priority."

Section 2(d) “does not speak of ‘continuous use,’ but rather of whether the mark or trade name has been ‘previously used in the United States by another and not abandoned.’” West Fla. Seafood, 31 USPQ2d at 1665. *** Although the record as a whole suggests sporadic past use of the KEMI OYL mark, Petitioner is only required to show “proprietary rights in its pleaded common-law mark that precede [Respondent’s] actual or constructive use of its involved mark,” Exec. Coach Builders, 123 USPQ2d at 1180, which rights were not thereafter abandoned. West Fla. Seafood, 31 USPQ2d at 1665.

The Board observed that even if petitioner abandoned the KEMI OYL mark through non-use from 2001-2005, as respondent claimed, or at some other point, it was respondent's burden to show that petitioner did not resume use before respondents priority date.

Respondent's attacks on the probative value and credibility of petitioner's witness were rejected by the Board. "[O]ral testimony of even a single witness may be adequate to establish priority ... if sufficiently probative. Such testimony should not be characterized by contradictions, inconsistencies, and indefiniteness but should carry with it conviction of its accuracy and applicability." Although the witness's testimony declaration was "far from being a model of clarity and completeness" and was not accompanied by "the type or quantity of documentary evidence that one would expect to be readily available" to show use of a supposedly famous mark, the critical portions of his testimony were clear and neither contradicted by respondent nor indefinite or internally inconsistent.

The Board found that this testimony "established, at minimum, that Petitioner used the KEMI OYL mark at least as early as 2010, prior to Respondent's constructive use date, and that Petitioner has not abandoned the mark." The Board was also persuaded by two third-party witnesses who sold petitioner's products from a time prior to respondent's constructive use date.

"Petitioner's evidence of prior use stands unrebutted." Therefore, the Board concluded, petitioner was entitled to cancellation of respondent's registration, unless respondent could establish its claim of laches.

Laches: Section 19 provides that in "all inter partes proceeding equitable principles of laches, estoppel, and acquiescense, where applicable, may be considered and applied." Laches requires undue or unreasonable delay and resulting prejudice.

Respondent's registration issued on June 3, 2014 and this proceeding was commenced on March 14, 2017. Respondent contended that petitioner was on notice of his mark on May 1, 2013, when petitioner's pending application was suspended based on respondent's (non-use based) underlying application. The Board was unimpressed, noting that respondent cited no authority for the proposition that "the prospective citation of Respondent's intent-to-use application . . . put Respondent on notice of Respondent's use of his mark." There was no evidence that the mark was in use at the time, and in fact respondent's statement of use alleged a first use date of November 1, 2013.

In the absence of evidence of Petitioner’s actual knowledge of Respondent’s actual use of his mark prior to the close of the opposition period, the June 3, 2014 date of registration is the operative date for laches. Ava Ruha Corp., 113 USPQ2d at 1580.

Although petitioner's delay was a bit less than three years, shorter and slightly longer periods of delay have sufficed to support a laches defense. The Board then turned to consideration of the reasons for the delay.

Shortly after the registration issued, the parties exchanged correspondence but after respondent provided information about his mark, petitioner was silent for two years. During that period, petitioner's pending application was abandoned and revived on three separate occasions, but ultimately went abandoned. In a letter in June 2016, petitioner stated that it had priority and accused respondent of being the infringer. There was no testimony explaining why petitioner waited another nine months or so to file its petition.

Petitioner's claim that its delay was justified by the claim that respondent's use of the marks was inconspicuous was supported by discovery responses, which indicated that his sales between 2014 and 2016 were negligible.

The Board observed that "The defense of laches is not determined by adherence to rigid legal rules; rather, we analyze laches by a consideration of the specific facts and a balancing of the respective interests and equities of the parties, as well as of the general public.” Jansen Enters. Inc. v. Rind, 85 USPQ2d 1104, 1117 (TTAB 2007). Noting respondent's negligible sales and his inaction after July 2014, the Board found petitioner's delay to be not unreasonable, and it concluded that respondent failed to prove its laches defense.

For completeness, the Board also considered respondent's claim of prejudice but found it unsupported. Resondent's sales increased 18-fold from 2015 to 2016, but that was only from about $500 to $7000, and his sales trended downward in 2017. Thus respondent did not, as he claimed, build up a  "valuable business and goodwill" during the relevant period. The Board concluded that this lack of prejudice was a further ground for denial of the laches defense.

And so the Board dismissed the petition for cancellation.

Read comments and post your comment here.

TTABlog comment:

Text Copyright John L. Welch 2018.

Friday, May 18, 2018

TTAB Shuts Down NJ Turnpike Authority's 2(d) Opposition to JERSEY BOARDWALK PIZZA logo

The Board dismissed an opposition to registration of the mark shown below right for "restaurant services," finding that the New Jersey Turnpike Authority failed to prove likelihood of confusion with its registered mark shown below left, for highway maintenance services and information services, and its common law mark shown below center for those same services and for "service areas along the Garden State Parkway that include restaurants, many of which feature pizza." New Jersey Turnpike Authority v. Jersey Boardwalk Franchising Co., Opposition No. 91219067and Cancellation No. 92059657 (May 15, 2008) [not precedential] (Opinion by Judge Cynthia C. Lynch).

Priority: Plaintiff NJTA established priority as to its highway maintenance and information services, but it failed to prove any rights in its marks for restaurant services. NJTA merely acts as a landlord for various restaurant facilities - such as Burger King and Pizza Hut - located at its service areas. In fact, its marks are not even displayed at or near the service areas.

The only item of evidence showing NJTA's use of its logo comprised a discount coupon for an Extra Value Meal that was apparently distributed in 1996, but there was no evidence as to how many were distributed. This sole piece of evidence was insufficient to establish common law rights as to restaurant services.

Strength of the Mark: NJTA contended that its mark is famous. The Board found the mark to enjoy "some degree of renown" in view of length of use, revenue figures, media coverage, and third party infringements and successful enforcement efforts. The Board concluded that the marks is "reasonably strong for highway management and maintenance and travel information services."

The Marks: Because of the strong visual resemblance between the marks, the Board found the commercial impressions of the marks to be "fairly similar," and the marks as in their entireties to be "similar."

The Services: There was no evidence that consumers would expect restaurant services and highway maintenance services to emanate from the same source.

Trade Channels: The same travelers who encounter NJTA's road maintenance and management services, or travel information services, also stop and eat at restaurants. And so there is at least a partial overlap in channels of trade and classes of consumers.

Bad Faith: Pointing to the 13th du Pont factor, plaintiff claimed that defendant chose the applied-for mark in bad faith. The Board, however, found no bad faith in defendant's creation of a New Jersey-themed motif for its restaurants, or from submission of an application to register after receiving a cease-and-desist letter, because (as defendant responded), there is no likelihood of confusion.

Conclusion: The Board concluded that source confusion is unlikely, and it dismissed NJTA's Section 2(d) claim.

Counterclaims: Defendan'ts two counterclaims, based primarily on its interpretation of New Jersey state law, were meritless. Its challenge to NJTA's ownership of the registration was barred by Section 14 of the Trademark Act, since the registrations that are more than five years old may be challenged only on certain enumerated grounds, and ownership is not one of them. [Thankfully, the Board did not refer to the registration as "incontestable" - ed.].

Read comments and post your comment here.

TTABlog comment: In a cancellation proceeding consolidated with the opposition, defendant conceded that it discontinued use of an earlier version of its pizza logo mark with intent not to resume use, and so the Board granted NJTA's petition for cancellation on the ground of abandonment.

BTW: What is stopping defendant from opening a pizza restaurant just off a NJ Turnpike exit? Would consumers think it was affiliated with or sponsored by the Turnpike Authority? I suspect so.

Text Copyright John L. Welch 2018.

Thursday, May 17, 2018

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

Here are three recently decided Section 2(d) appeals. One of the refusals was reversed. Applying your jurisprudential skills and/or well-honed TTAB instincts, how do you think these came out? [Answer in first comment].

In re Dyson Technology Limited, Serial No. 79188560 (May 8, 2018) [not precedential] (Opinion by Judge Anthony R. Masiello). [Section 2(d) refusal of CU-BEAM for "Suspended lights in the nature of LED lighting fixtures designed to be suspended from a ceiling with uplighters and/or downlighters, the aforesaid optimized to reduce eye strain and increase comfort and productivity; parts and fittings for the aforesaid goods," in view of the registered mark Q-BEAM SPOT/FLOOD for a "hand-held combination spotlight and floodlight" [SPOT/FLOOD disclaimed]].

In re Bodegas Eduardo Garrido, S.L., Serial No. 87334693 (May 14) [not precedential] (Opinion by Judge Frances Wolfson). [Section 2(d) refusal of the mark shown below left for "wine" in view of the registered mark shown below right, both for wine].

In re Henson, Serial No. 87130461 (May 14, 2018) [not precedential] (Opinion by Judge Michael B. Adlin). [Section 2(d) refusal of the mark LYKAN for athletic apparel, in view of the identical mark registered for watches and jewelry].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2018.

Wednesday, May 16, 2018

LAST CALL! Meet The Bloggers XIV: Garage Billiards, Tuesday, May 22, 8-10 PM

MEET THE BLOGGERS is returning for the 14th (XIVth) time. Perhaps the best non-INTA event ever devised by woman or man, MTB XIV will be convened on Tuesday, May 22nd, 8:00 - 10:00 PM, at Garage Billiards, 1130 Broadway, Seattle. Come and meet some of the best trademark attorneys in the world, and while you're at it say hello to the hosts of this year's event. For details, directions, a look at the sponsoring bloggers, and the RSVP link, go HERE.

Here's a pictorial stroll through memory lane, in reverse chronological order. Tara Aaron and Marc Randazza join us as hosts for this year's event.

Barcelona 2017
Pelton, Welch, Coleman, Schwimmer, Chestek, and Oppedahl

Orlando 2016

San Diego 2015

Hong Kong 2014

Dallas 2013

Washington, D.C. 2012: Pelton, Welch, Coleman, Schwimmer

San Francisco, 2011

Boston 2010. Coleman, Chestek, Schwimmer, and Welch

Seattle 2009

Berlin 2008

Coleman, Schwimmer, Welch, Chicago 2007

Toronto 2006

San Diego 2005
Click on photos for larger pictures

Read comments and post your comment here

TTAB Affirms Geographical Descriptiveness Refusal of LEIPER'S FORK DISTILLERY for Clothing

The Board affirmed a Section 2(e)(2) refusal of the mark LEIPER'S FORK DISTILLERY for "insulating sleeve holders for beverage cans," various clothing items, and alcoholic beverages, finding the mark to be primarily geographically descriptive of the goods. Applicant argued, without success, that Leiper's Fork is "an obscure location which, even if the public were aware existed, would not have led them to believe Applicant's Goods originate there." In re Leiper’s Fork Distillery, LLC, Serial No. 86894726 (May 14, 2018) [not precedential] (Opinion by Judge Lorelei Ritchie).

Leiper's Fork, a rural village in Tennessee with a population of 650 is listed on the National Register of Historic Places. Negative dictionary evidence showed no other meaning of Leiper's Fork.

A Section 2(e)(2) refusal is appropriate when:

(1) the primary significance of the mark is a generally known geographic location:

(2) the source of the goods is the geographic location named in the mark; and

(3) purchasers would be likely to believe the goods or services originate in the geographic place identified in the mark.

Primary Significance: The Board noted that, although Leiper's Fork has a small population, "it has a large draw." Leipers's Fork is a tourist destination of growing popularity. Well known musicians and artists come from Nashville to take part in the village's cultural scene. Justin Timberlake recently paid $4 million for a tract of land there. In short, "Leiper's Fork has built up a reputation that is not remote or obscure."

Leiper's Fork Distillery

Origin of the Goods:: Applicant did not dispute that it is located in Franklin, Tennessee, which neighbors Leiper's Fork. Close enough said, the Board, finding that the goods therefore originate from Leiper's Fork for Section 2(d) purposes. See In re Spirits of New Merced, 85 USPQ2d 1614 (TTAB 2007) (YOSEMITE  BEER held geographically descriptive of beer sold in Merced, California, near Yosemite National Park).

Goods/Place Association: When the first two prongs of the Section 2(d) test are met, the third may be presumed. In any case, applicant did not dispute that Tennessee is generally known for its whiskey and distilled spirits. Moreover, there is a history of whiskey production in Williamson County, where Leiper's Fork is located.

Conclusion: The Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Next time I'm in Tennessee, I'll check it out.

Text Copyright John L. Welch 2018.

Tuesday, May 15, 2018

TTAB Reverses Section 2(e)(3) Geographical Deceptiveness Refusal of LAROMANA for Brown Sugar

The Board reversed a Section 2(e)(3) refusal to register the mark LAROMANA for "brown sugar," finding the mark not to be primarily geographically deceptively misdescriptive. Although the Board agreed with the USPTO that Laromana is a known geographic location and that consumers would believe the misrepresentation that the goods come from that place, the evidence was insufficient to show that the misrepresentation would be material to the purchasing decision. In re Marcos A. Castillo, Serial No. 87117266 (May 11, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).

The Section 2(e)(3) bar to registration requires an affirmative answer to each of the following three questions (In re Miracle Tuesday LLC, 104 USPQ2d 1330, 1332 (Fed. Cir. 2012):

1. Is “the primary significance of the mark … a generally known geographic location?”;

2. Is “the consuming public … likely to believe the place identified by the mark indicates the origin of the goods bearing the mark, when in fact the goods do not come from that place?”; and

3. Would “the misrepresentation [be] a material factor in the consumer’s decision” to purchase the goods?

Primary significance? The examining attorney submitted evidence showing that La Romana is a province in the Dominican Republic along the Caribbean Sea coast, as well as the major port city of the La Romana province and the site of several resort hotels. The Board noted that the spelling LAROMANA rather than La Romana (two words) was irrelevant in the Section 2(e)(3) analysis.

Applicant Castillo submitted a translation of the mark as "THE ROMAN" and asserted that, because Spanish is widely spoken in the USA, this is the primary significance of the mark. The Board, however, pointed out that the meaning of a mark must be considered in the context of the goods, and it therefore rejected Castillo's argument, noting that there was no evidence that Senor Castillo markets brown sugar using Roman imagery:

While the term LAROMANA may have a different connotation depending on context, in the context of brown sugar, there is no allusion to the alternative meaning of “The Roman” particularly where, as here, the evidence regarding the meaning of LAROMANA as “The Roman” is so thin.

Believable misrepresentation? It is enough for the required "goods-place association" that the consumer identifies the place as a known source of the product. The evidence established that consumers recognize La Romana as a source of sugar: the economy of La Romana is driven by sugar and tourism. Castillo admitted that his sugar did not have any connection with La Romana. The Board therefore found that the evidence established a goods/place association.

Materiality?: Materiality is key to proving deceptiveness. It may be proven by showing that the place named is well known for the goods, or that the goods are a principal product of the place named, or the goods are the traditional products of the place named or an expansion thereof.

The Board found that "[a]lthough the evidence demonstrates that sugar is a principal product of La Romana, the evidence does not demonstrate the consumers are interested in purchasing sugar from La Romana or that the origin of sugar has any role in their purchasing decision." There was no evidence that La Romana was famous or well known for sugar. Nor was there evidence indicating what factors consumers consider when they buy sugar. "[T]he evidence of record does not demonstrate that a significant portion, or any portion, of the relevant consumers would be influenced, let alone materially influenced, in the decision to purchase brown sugar by the geographic meaning of LAROMANA."

Conclusion: The Board reversed the refusal.

Read comments and post your comment here.

TTABlog comment: How do you say "How sweet it is!" in Spanish?

Text Copyright John L. Welch 2018.

Monday, May 14, 2018

Precedential No. 16: TTAB Orders Cancellation of Four "GIDGET" Registrations Due to Abandonment

The Board granted a petition for cancellation of four registrations for the mark GIDGET for clothing, cosmetics, jewelry, entertainment, and various other goods and services in eight classes, ruling that respondent had discontinued use of the mark with intent not to resume use. Respondent failed to show either activities or special circumstances negating or excusing its nonuse. Yazhong Investing Ltd. v. Multi-Media Tech. Ventures, Ltd., Cancellation No. 92056548 (May 7, 2018) [precedential] (Opinion by Judge Peter W. Cataldo).

A mark is abandoned when "its use has been discontinued with intent not to resume use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment." 15 U.S.C. Section 1127.

The testimony of officers of respondent's predecessors-in-interest and of third parties established that there was no use of the GIDGET mark from at least 2008 to 2012. Because this established a prima facie case of abandonment, the burden of coming forward and rebutting the prima facie showing fell on respondent.

To support a finding of intent to resume use, an owner "must do more than simply assert a vague, unsubstantiated intent to make use of the mark at some unspecified time in the future." Respondent did not carry its burden.

Simply put, there is no credible evidence that Respondent or its predecessors made any use of the GIDGET mark apart from a few sporadic promotions of surfing events – which activity is not listed among the goods or services identified in the subject registrations – and vaguely described, unsuccessful attempts at licensing the GIDGET mark in connection with its numerous identified goods and services.

Respondent's "vaguely explained attempts" to license the mark fell far short of rebutting the presumption of abandonment. All other activities of respondent and its predecessors added up to little more than attempts to secure additional investors. There was no evidence of serious negotiations toward a license agreement. "Respondent's efforts were neither consistent nor sustained, and assertions of discussions concerning the potential use of the marks at some unknown point in the future are insufficient to show an intent to resume use."

Quite simply, the record is devoid of any evidence showing a specific and consistent plan to resume use – to the extent Respondent ever used the GIDGET mark – during a period of at least four years from 2008 through 2012.

The Board concluded that the GIDGET mark has been abandoned with no intent to resume use. And so it granted the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: I guess there will be a sequel to "Gidget Goes Hawaiian," called "GIDGET Goes Abandoned."

Text Copyright John L. Welch 2018.

Friday, May 11, 2018

Despite Phony Specimen of Use, TTAB Finds No Fraud, Dismisses COPPER 88 Opposition

The Board dismissed this opposition involving the two marks shown immediately below, for clothing embedded or infused with copper [COPPER 88 disclaimed], finding the marks too dissimilar to support a Section 2(d) likelihood of confusion claim. The Board also dismissed Opposer Tommie Copper's fraud claim, despite applicant's admission that its specimen of use were "mock ups" that were never used. Tommie Copper IP, Inc. v. Gcool-Tech Usa LLC, Opposition No. 91223768 (May 9, 2018) [not precedential] (Opinion by Judge Thomas Shaw).

Applicant's brand manager testified that applicant was not selling any goods bearing its COPPER 88 + Design mark in this country as of the filing date of the opposed application. Samples were given out to reps and his mother gave a few items to friends. The claimed dates of first use actually applied to goods offered under a different mark.

The Board found that applicant "was not selling any of its goods under the applied-for mark in the United States as of the filing date," and that applicant's statement that it was "using the mark in commerce was a false, material representation of fact to the USPTO."

The question, then, was whether applicant intended to deceive the USPTO.

Applicant's witness testified that his father (applicant's founder) "was under the mistaken impression that its use of the mark in other countries constituted use in commerce in the United States."

A: So the way that I see it, I think he got confused because he was using it. And I think he was confused. Also, I think he was confused about using CU Compression by GCool as something. So my dad’s – my dad’s not a lawyer.

Of course, the witness expressly denied that Applicant had any intent to deceive the USPTO. He agreed with with the question posed by opposer's lawyer that applicant "just didn't really understand legally what it meant to use a trademark in commerce." "I honestly think there was a lot of confusion."

The Board found no direct evidence of an intent to deceive the USPTO and insufficient evidence to warrant the inference of an intent to deceive.

As established above, at the time of filing the application, Applicant had distributed samples to prospective distributors in the United States, was developing prototype garments including “hooded sweatshirts,” was selling copper-embedded fabric under a different brand, and had sold goods in Canada under the applied-for mark.

None of those acts qualified as use in commerce, but just because applicant was wrong in thinking that these acts satisfied the requirements for filing an application does not mean that applicant had a deceptive intent. As stated in In re Bose:

There is no fraud if a false misrepresentation is occasioned by an honest misunderstanding or inadvertence without a willful intent to deceive. . . . Unless the challenger can point to evidence to support an inference of deceptive intent, it has failed to satisfy the clear and convincing evidence standard required to establish a fraud claim.

Opposer pointed to no evidence of a deceptive intent. In fact, in its questioning of the witness, opposer expressly assumed that applicant had a "mistaken belief" at the time of filing, and that it "didn't really understand" the concept of use in commerce.

And so the Board dismissed opposer's fraud claim.

Read comments and post your comment here.

TTABlog comment: What about the mock-up specimen? Did applicant think that was a real specimen? And the false first use dates?
BTW: applicant hired an attorney, who amended the application to Section 1(b) intent-to-use. How, then, could the phony specimen be material to the examination?

Text Copyright John L. Welch 2018.

Thursday, May 10, 2018

ROSSO GRANATO Merely Descriptive, Fails to Function as a Trademark for Wine, Says TTAB

The Board affirmed the USPTO's refusal to register the mark ROSSO GRANATO for wine, finding it to be merely descriptive of the goods, and further finding that it fails to function as a trademark. The Board rejected applicant's argument that the "ordinary American purchaser" would not stop and translate the mark into "red garnet," pointing out that the correct question is whether the ordinary consumer familiar with Italian would stop and translate the term. In re V & C, LLC, Serial No. 86321427 (May 8, 2018) [not precedential] (Opinion by Judge Angela Lykos).

Mere Descriptiveness: The Board has held that Italian is a common modern language for purposes of the doctrine of equivalents. Moreover, Examining Attorney Andrea P. Butler submitted evidence that American consumers of wine, especially younger ones, are more likely to seek out the meaning of foreign wording on a wine label. And so the Board agreed with her that application of the doctrine of equivalents was appropriate.

The question, then, was whether "red garnet" is merely descriptive of wine. The evidence showed that "red garnet" is commonly used to describe an attribute of wine, namely a particular shade of red. In fact some in the industry use both "rosso granato" and "red garnet" to describe a particular hue of red wine. Applicant's own website explains that "'Rosso Granato', in Italian meaning 'Red Garnet' embodies the beautiful color of this Petite Syrah and Zinfandel blend."

The Board concluded that the applied-for mark immediately conveys an attribute of applicant's wine, and therefore it is merely descriptive under Section 2(e)(1).

Failure to Function: "The critical question in determining whether a designation functions as a mark is how the designation would be perceived by the relevant public." This requires consideration of how the designation is actually used in the marketplace.

The Board found the opinion in In re APO LLC to be instructive. [TTABlogged here]. There, the Board found that AOP (an acronym for "appellation d'origine protégée," which translates as "protected designation of origin") was merely informational in nature and failed to function as a mark. In reaching that decision, the Board considered the placement of the term AOP on the wine label, as well as the applicant's own use of the term.

Here, on applicant's label (see photo above), the term ROSSO GRANATO appears on the left side along with other informational matter, below the year "2012" and above "Red Wine" and "Columbia Valley." Applicant's mark MARYHILL appears on the right side in relatively larger letters. Although a product or label may bear more than one mark, the question is whether ROSSO GRANATO will be recognized as a source indicator.

The predominance of the mark MARYHILL on Applicant’s wine label makes it unlikely that the “Rosso Granato” “will be recognized in itself as an indication of origin for the particular product . . . .” ***  Indeed, this pattern of displaying informational matter to the left is consistent with Applicant’s labeling and marketing of other wines such as the bottle of merlot reproduced below:

Thus, as in AOP, the applied-for mark appears in the midst of "clearly informational matter" and is presented in an "informational manner" to inform consumers about the color of the wine, rather than as a source identifier.

Its close proximity to the other informational matter on the label, coupled with the translation and explanatory text on Applicant’s website means that ROSSO GRANATO is likely to be perceived as merely conveying information about the color of the wine and not as a source indicator.

Finding that ROSSO GRANATO lacks source-identifying significance, the Board affirmed the failure-to-function refusal.

Read comments and post your comment here.

TTABlog comment: Applicant's only hope was a survey, I think.

Text Copyright John L. Welch 2018.

Wednesday, May 09, 2018

PET GRASS Lacks Acquired Distinctiveness for Pet Food and Pet Store Services, Says TTAB

The Board rejected this applicant's claim of acquired distinctiveness for the mark PET GRASS for grass, grass kits, food for animals, and retail pet supply services. Applicant's Section 2(f) claim constituted an admission that the mark is not inherently distinctive, ans so the only issue was whether applicant's proofs established secondary meaning. In re Bell Rock Growers, Inc., Serial No. 86747927 (May 7, 2018) [not precedential] (Opinion by Judge George C. Pologeorgis).

The Board first considered the degree of descriptiveness of the mark, since the higher the degree of descriptiveness, the higher the burden to prove acquired distinctiveness. Dictionary definitions, applicant's specimens of use (for example, the photo above) and advertisements, and third-party website evidence convinced the Board that PET GRASS is highly descriptive of applicant's goods and services.

Applicant's marketing director declared that applicant coined the term PET GRASS in 1998, has sold the product in retail stores throughout the country, enjoyed sales of more than $21.2 million in the past six years with advertising expenditures exceeding $354,000 per year, attends trade shows, advertises in trade magazines (like Modern Cat Magazine, has social media sites, enjoyed some media coverage, and won an award as a ground-breaking pet product.

The Board was not impressed. The fact applicant may have coined the term was irrelevant. Even if it were the only user of the term, the mark could still be descriptive. Use for a long period of time does not by itself prove acquired distinctiveness, nor do sales and advertising figures. Here, applicant's financial figures lacked context for comparison with competitors in the pet field, as did its social media and trade show activity. The winning of single award, and the mention of the product in two newspaper articles provided little support for the 2(f) claim.

Moreover, in view of the third-party use of "pet grass" in a descriptive manner indicates that applicant has not been the "substantially exclusive" user as required by Section 2(f). "Non-exclusive use presents a serious problem for Applicant in obtaining trademark rights in a designation that is not inherently distinctive, because it interferes with the relevant public’s perception of the designation as an indicator of a single source."

And so the Board concluded that applicant had failed to satisfy Section 2(f), and it affirmed the Section 2(e)(1) refusal to register.

Read comments and post your comment here.

TTABlog comment: How do you think a survey would have come out?

Text Copyright John L. Welch 2018.