Monday, March 18, 2019

TTABlog Test: Are These "ALL STAR" Logo Marks Confusable for Auto Part Services?

The USPTO refused registration of the mark ASM ALL STAR MOTORSPORTS & Design (shown first below), for catalog and online auto parts services, finding a likelihood of confusion with the two registered word+design marks shown next below, the first for "Wholesale and retail store services featuring automotive headlights," and the second for "Wholesale distributorship in the field of high performance and racing automotive parts and accessories." [MOTORSPORTS, AUTO LIGHTS, and PERFORMANCE disclaimed in the respective marks.] ALL STAR seems like a weak formative, doesn't it? How do you think this came out? In re Karapetian, Serial No. 87034208 (March 14, 2019) [not precedential] (Opinion by Judge Lorelei Ritchie).

The Marks: The Board observed that the term ASM in applicant's mark "appears to simply be an initialism for 'All Star Motorsports' and thus reinforces that wording in the mark." On its website, applicant displays the phrase with the first letters highlighted.

As to the first cited mark, the literal element is emphasized, as it is in applicant's mark. The "star" design in applicant's mark "emphasizes the 'All Star' aspect of its mark." The Board took judicial notice that "All Star" is somewhat suggestive of automotive services "that are promoted as best in class." However, there was no admissible evidence that the term is weak. The Board concluded that the applied-for mark is confusingly similar to the first cited mark.

The second cited mark is dominated by the term ALLSTAR, since PERFORMANCE is disclaimed. The Board found that "the term 'ASM' in applicant's mark, which is likely to be perceived as an acronym," does not distinguish these marks. Both marks contain "star" designs, which emphasize the term ALL STAR. There was no evidence that star designs are weak in this field.

The Board again concluded that, despite some dissimilarities in sight and sound, these two marks are confusingly similar.

The Services: Although applicant had tried to swerve around the two cited registrations by excluding "auto lights, high performance and racing parts," the Board still found auto part retail and wholesale services to be related based on Internet and third-party registration evidence. This same evidence demonstrated the similarity of the channels of trade.

Conditions of Sale: Even assuming that relevant consumers may exercise some care in purchasing auto parts, especially wholesale purchasers, the Board once again noted that even sophisticated purchasers are not immune to source confusion when the involved goods or services are similar. The Board found that this factor weighed slightly in applicant's favor.

Conclusion: The Board found confusion likely and it affirmed the refusal based on both cited registrations.

Read comments and post your comment here.

TTABlog comment: Applicant referred in its brief to third-party registrations for marks containing the term "ALL STAR," but failed to make of record copies. The Board sustained Examining Attorney Angela Duong's objection to consideration of that third-party evidence.

Text Copyright John L. Welch 2019.

Friday, March 15, 2019

TTABlog Test: Are Snack Bars Related to Energy Drink Powder and Bicycles?

Trek Bicycle opposed an application to register the mark TREK & Design (shown below) for nut, grain, and dried fruit-based snack bars, alleging a likelihood of confusion with the registered marks TREK for bicycles, bicycle parts and accessories, for retail store services, and for various other goods, including powders for making energy drinks, TREK STOP for vending machine services in the field of bicycle parts and energy bars, and TREK BICYCLE STORE for retail store services. The marks are similar given the dominance of TREK in all the marks. But are the respective goods and services related? How do you think this came out? Trek Bicycle Corporation v. Natural Balance Foods Limited, Opposition No. 91221706 (March 13, 2019) [not precedential] (Opinion by Judge Frances Wolfson).

Strength of Opposer's Mark: The Board found that Opposer’s mark TREK has received significant public exposure in connection with bicycles and bicycle accessories, but it is not famous or commercially strong for food or beverages.

As to the conceptual strength of the marks, applicant argued that TREK is weak, since it is a term used in the snack food industry in combination with the term mix," for a type of snack food that consists of a combination of nuts, fruits, seeds, chocolate chips and the like, known as "TREK MIX."

The evidence supports applicant's contention that "trek mix" has a meaning in the snack food industry as denoting a sweet and/or salty high-energy mixture of seeds, nuts, dried fruits, chocolate and the like. We agree that the term "trek" may therefore have some meaning in relation to snack foods that decreases its conceptual strength as a trademark for snack foods. However, the fact that “trek mix” may impart a particular meaning to a snack bar (such as that it is a trail mix or trek mix based product), this purported meaning does not carry over to TREK bicycles, on-line retail store services, or powders for making energy drinks.

Furthermore, the word “trek” has another meaning connected with hiking and outdoor activity: “to make one’s way arduously.” "Conceptually, the duality of these meanings points to TREK as being suggestive in connection with snack bars, energy drinks, and retail bicycle services."

The Board concluded Opposer’s TREK marks may not be considered strong for any goods other than bicycles, bicycle parts, and retail stores featuring bicycles. It accorded the TREK mark "the scope of protection to which suggestive marks are entitled, keeping in mind the mark’s wider scope of protection in the bicycle industry."

Given the dominance of the word TREK in the applied-for mark, the Board found it to be similar in appearance, sound, connotation and commercial impression to Opposer’s TREK and TREK STOP marks, and thus the first du Pont factor "strongly favors" a finding of likelihood of confusion.


The Goods, Services, Customers, and Trade Channels:

The Board agreed with applicant that snack bars do not fall within Opposer’s "natural realm of expansion." Furthermore, even though opposer owns a TREK registration for powdered drinks, and a TREK STOP registration for the distribution of vending machines that dispense snack bars, opposer did not prove that these goods and services are related to applicant's snack bars.

Nonetheless, the evidence and testimony showed an overlap of trade channels and classes of consumers under buying conditions that "strongly favor a finding of likelihood of confusion." Opposer’s registrations for “online retail and wholesale store services featuring a wide range of consumer products except footwear all provided via the Internet,” “retail stores featuring bicycles,” and “powders used in the preparation of sports drinks and energy drinks” "have probative value to the extent that they serve to suggest that a bicycle retail store may sell a wide variety of consumer products over the Internet, sell powdered drinks both online and at retail stores, and distribute snack bars via vending machines." In addition, opposer established that it is common for bike shops to sell snack bars and that snack bars are a significant food source for cyclists

Although we agree with Applicant that common sales by mass retailers are generally insufficient to show relatedness, here there are common trade channels in a niche market (snack food sold in bike shops) and the common sales are directed to a discrete class of purchasers (cycling enthusiasts). We thus find Opposer’s limited activities, coupled with its dominance in the bicycle industry, sufficient to make confusion likely, at the least as to a perception of sponsorship or affiliation between the parties were both to use similar marks for their respective goods.

Thus, although the second du Pont factor - the similarity or dissimilarity of the goods - favors a finding of no likelihood of confusion, the third factor - the identity of specific channels of trade (bike shops) and classes of consumers (cyclists) for the parties’ goods and services - is "particularly significant" and favors finding of likelihood of confusion.

Conclusion: The Board found confusion likely and so it sustained the opposition.

[I]f consumers already familiar with Opposer’s TREK powder mix for sports and energy drinks, Opposer’s TREK retail store services, and Opposer’s well-known TREK mark for bicycles were to encounter Applicant’s snack bars sold under its TREK and design mark in one of Opposer’s or a third-party’s bike store, they would likely consider Applicant’s goods to be produced, sponsored, or affiliated with Opposer.

Read comments and post your comment here.

TTABlog comment: Last year, opposer Trek won another Section 2(d) opposition (here), involving the marks TREKGUIDE for "Barometers; Magnetic compasses; Thermometers, THERMOTREK for "electric hand warmers," and TREKCEL for "Transformers; Portable electrical power chargers for cell phones, smart phones, tablet computers, MP3 players and wireless headsets"

Text Copyright John L. Welch 2019.

Thursday, March 14, 2019

TTAB Finds GNARLY MARLEY'S Confusable With BOB MARLEY and MARLEY for Clothing and Retail Services

The Board sustained a Section 2(d) opposition to registration of the mark GNARLY MARLEY'S for various clothing items and for retail clothing and gift store services, finding the mark likely to cause confusion with the registered mark BOB MARLEY and the common law mark MARLEY for clothing and ornamental patches. This post will hit some of the highlights of the 42-page opinion. Fifty-Six Hope Road Music Limited v. Sandal Factory, Inc., Opposition No. 91212582 (March 8, 2019) [not precedential] (Opinion by Judge Marc A. Bergsman).

Procedural issues: The Board pointed out that an unpleaded registration may not be used as a basis for a party’s opposition. Since Opposer Fifty-Six Hope did not plead ownership of its registration for  MARLEY for clothing, it had to rely on its common law rights in that mark.

The Board also observed that evidence submitted outside of the trial periods, including evidence attached to briefs – is untimely and will not be considered. Evidence that was timely filed during the parties’ trial periods need not and should not be resubmitted.

Furthermore, Parties should recognize that attaching previously filed evidence to a brief (and citing to the attachments, rather than to the original testimony or notices of reliance) is neither a courtesy or a convenience to the Board. A party should instead cite to the record using the TTABVUE docket entry number and the electronic page number where the document or testimony appears.

Opposer Fifty-Six Hope complained that Applicant Sandal Factory did not respond to Opposer’s second set of requests for production of documents, contending that the Board "should enter an adverse inference against Applicant that if the requested documents were produced, they would not be favorable to Applicant." Fifty-Six Hope did not file a motion to compel production, however, and the Board refused to draw any adverse inference from Applicant’s failure to respond.

The goods and services: The Board found Sandal Facctory’s goods to be identical to those of opposer, and its services related to opposer’s goods.

The marks: Because "Marley" is primarily merely a surname, the common law MARLEY trademark is not inherently distinctive. However, BOB MARLEY is registered on the Principal Register without a claim of acquired distinctiveness and is entitled to a presumption of validity under Section 7(b). Moreover, it is presumably inherently distinctive.

There was no dispute that Bob Marley is famous; his fame as a musician "positively affects the sale of BOB MARLEY and MARLEY branded merchandise." The evidence established that Opposer’s MARLEY trademarks are commercially strong. Third-party registration evidence did not persuade the Board of any weakness in MARLEY. The Board concluded that Fifty-Six Hope's MARLEY trademarks are entitled to a broad scope of protection.

As to applicant's mark GNARLY MARLEY'S mark, the word "gnarly" is an adjective defined, inter alia, as a slang term for "cool, good." The adjective "Gnarly" modifies "Marley," and therefore "Marley" is the dominant part of Applicant’s mark "because 'Gnarly' describes a quality of 'Marley's,' as adjectives are designed to do." Moreover, the average purchaser is an ordinary consumer, and is likely to shorten GNARLY MARLEY’S to MARLEY’S

It stretches credulity to contend that at least some consumers in GNARLY MARLEY’S retail store purchasing MARLEY t-shirts or BOB MARLEY products are not going to believe that there is an affiliation, connection or association as to the origin, sponsorship, or approval of the goods and services.

The Board noted that the combination of GNARLY MARLEY’S and Rastafarian indicia, including smoking marijuana, emphasize the reference to Bob Marley. Trade dress may provide evidence of whether a word mark projects a confusingly similar commercial impression.

The Board therefore found that the mark GNARLY MARLEY’S "is similar to Opposer’s BOB MARLEY and MARLEY marks in their entireties in terms of appearance, sound, meaning, and commercial impression."

Lack of Actual Confusion: By the time of trial there had been five years of concurrent use of the parties’ marks. Neither party introduced any testimony or evidence regarding actual confusion. However, the absence of actual confusion evidence is meaningful "only if the record indicates appreciable and continuous use by Applicant of its mark for a significant period of time in the same markets as those served by Opposer under its marks." The Board found that there has not been a reasonable opportunity for confusion to have occurred.

“Applicant’s only retail store is located at 1913 Overseas Hwy., Islamorada, Florida." The GNARLY MARLEY’S retail store is approximately 1200 square feet. "The GNARLY MARLEY’S Goods are offered for sale and/or will be offered for sale at Applicant's GNARLY MARLEY’S retail stores." Applicant does not have a GNARLY MARLEY website, nor does in advertise its GNARLY MARLEY’S goods or services on its Sandal Factory website. Applicant’s GNARLY MARLEY’S customers are tourists that shop at the GNARLY MARLEY’S retail store while visiting the Florida Keys.

Conclusion: The Board concluded that confusion is likely and it sustained the opposition, declining to reach opposer's dilution and Section 2(a) false association claims.

Read comments and post your comment here.

TTABlog comment: [Insert Bob Marley pun here].

Text Copyright John L. Welch 2019.

Wednesday, March 13, 2019

On Summary Judgment, TTAB Dismisses Cancellation Petition Predicated on Respondent's Untimely Section 8 Declaration

The Board dismissed this petition for cancellation on summary judgment, ruling that the USPTO's acceptance of an untimely Section 8 Declaration is not a ground for cancellation. Respondent Direct Impulse missed the deadline to respond to a post-registration office action rejecting its Section 8 Declaration, but the Office then accepted a later, corrected filing well after the renewal grace period had expired. Bonehead Brands, LLC v. Direct Impulse Design, Inc., Cancellation No. 92068333 (February 13, 2019) [not precedential].

Petitioner Bonehead contended that the subject registration was automatically cancelled when Direct Impulse failed to file a proper Section 8 Declaration prior to expiration of the grace period for renewal. The Board, however, ruled that "[a]n allegation that a registrant made an untimely or deficient declaration under Section 8, or that the USPTO should not have renewed a registration, is not an available ground for cancellation under Section 14(3)."

Respondent's 10-year Section 8 Declaration of Use (and its Renewal Application) was due on December 12, 2016. On May 11, 2016, Respondent filed a combined declaration under Sections 8 and 9. On August 2, 2016, the Post Registration branch issued an Office Action accepting the Section 9 portion of the combined filing but rejecting the specimen submitted in support of the Section 8 declaration on the ground that it was a printer's proof and therefore did not show use of the registered mark in commerce. Respondent was give six months to file a substitute specimen and verification, but it did not file a response to this Office Action

On April 3, 2018, and well beyond the six-month renewal grace period that expired on June 12, 2017, the Post Registration Branch issued another Office Action , reiterating its rejection. On April 11, 2018, Bonehead filed its petition to cancel Respondent’s registration on the ground of abandonment, based on Respondent’s failure to file a timely, acceptable Section 8 declaration. Two days later, on April 13, 2018, Respondent filed a combined Section 8 and 9 declaration with a substitute specimen and verification, which the USPTO accepted on April 17, 2018, issuing a notice of renewal for the involved registration.

Bonehead’s petition for cancellation was  predicated on the allegation that the registration had been technically cancelled due to Respondent’s failure to file a timely response to the August 2, 2016 Office Action or to otherwise file an acceptable Section 8 declaration before the expiration of the grace period. The Board disagreed:

Contrary to Petitioner’s assertion, a registration is not considered “technically” or  automatically cancelled or “abandoned” by virtue of a registrant’s purported failure to file a timely or acceptable Section 8 declaration. Section 8 of the Trademark Act, 15 U.S.C. § 1058, provides that “[e]ach registration shall remain in force for 10 years, except that the registration of any mark shall be canceled by the Director unless the owner of the registration files in the United States Patent and Trademark Office affidavits that meet the requirements of subsection (b)….” Failure to file a timely Section 8 declaration does not result in an automatic cancellation of the registration; rather, an action must be taken by the Director of the USPTO for the registration to be cancelled. In this case, the Director did not cancel the involved registration, but rather accepted the April 13, 2018 filing and renewed the registration.

The Board pointed out that there is “no mechanism under Section 8 by which a third party can seek the cancellation of a registration in an inter partes proceeding based on an allegedly deficient or untimely filing.” Furthermore, the Board does not have jurisdiction to review the USPTO’s acceptance of the April 13, 2018 filing or the supposed failure of the Director of the USPTO to cancel the registration pursuant to Section 8.

Any petition to cancel a registration more than five years old must be based on one of the specifically enumerated grounds of Section 14(3) of the Trademark Act, 15 U.S.C. § 1064(3). * * * An allegation that a registrant made an untimely or deficient declaration under Section 8, or that the USPTO should not have renewed a registration, is not an available ground for cancellation under Section 14(3).

Petitioner Bonehead claimed that Respondent had abandoned its mark, but there were no allegations of nonuse or loss of significance as a mark.

Finding no material fact in dispute, the Board granted Respondent’s motion for summary judgment.

Read comments and post your comment here.

TTABlog comment: Bonehead also claimed that once its cancellation petition was filed, the USPTO should not have accepted the Section 8 Declaration, but the Board pointed out that Respondent was required to maintain its registration throughout the pendency of the proceeding and failure to file the Declaration could result in an adverse judgment.

Text Copyright John L. Welch 2019.

Tuesday, March 12, 2019

TTAB Affirms Refusals of SOUTHFACE VILLAGE for Applicant's Internet Portal: Not a Registrable Service

The Board affirmed two refusals of the mark SOUTHFACE VILLAGE, in standard character and design form, for "providing an Internet portal offering information in the fields of real estate concerning the purchase and sale of new homes and condos," agreeing with Examining Attorney Michelle E. Dubois that the provision of such information is not "separate and distinct from Applicant’s other services because it is not qualitatively different from anything necessarily done in connection with the performance of those services." In re Timber Creek at Okemo Number II, LLCSerial No. 86094929 and Serial No. 86094995 (March 8, 2019) [not precedential] (Opinion by Judge Christopher Larkin).

Although the Trademark Act defines "service mark," it does not define the term "services." However, applicant and the Examining Attorney agreed that "for an activity to be a 'service' within the contemplation of the Act, it (1) must be a real activity, (2) must be performed to the order of, or for the benefit of, someone other than the applicant, and (3) must be qualitatively different from anything necessarily done in connection with the sale of the applicant’s goods or the performance of another service."

Here, the only issue involved the third element of the test: whether the identified service is "qualitatively different from anything necessarily done in connection with the performance of Applicant’s other services."

Applicant’s webpage urged visitors to “Contact Us” and to provide personal information relevant to a possible purchase of property at the development. (Okemo” is a mountain in Vermont that is the home of a ski resort.) The Examining Attorney submitted third-party webpages showing that real property developers provide similar online access to information about their developments in the course of selling their properties.

Applicant could not sell the new homes and condos that it develops at SouthFace Village without "offering information . . . concerning the purchase and sale of" those new homes and condos, and its original specimen shows that its Internet portal is simply a means for providing such information. Applicant’s purported service of "providing an Internet portal offering information in the fields of real estate concerning the purchase and sale of new homes and condos" is thus not a service that is separate and distinct from Applicant's other services because it is not qualitatively different from anything necessarily done in connection with the performance of those services. Cf. Landmark Commc’ns, 204 USPQ at 695 (the mere advertising of one’s own product is not a separate service); In re Dr. Pepper Co., 836 F.2d 508, 5 USPQ2d 1207, 1209 (Fed. Cir. 1987) ("activities which are ‘necessarily done’ in connection with the sale of one’s goods are the quintessential ‘routine or ordinary’ activities associated with the sale of one’s goods").

Applicant acknowledged that "[t]he potential consumer or the actual purchaser of Applicant's homes and condos uses [Applicant's] internet portal to gain additional information regarding the services performed" by applicant in the course of developing properties at SouthFace Village.

Applicant's substitute specimens included a live webcam for viewing the properties under development, but the Board again found that "providing such information through the webcam in Applicant’s substitute specimen 'is merely ancillary to applicant’s primary business,' and 'part and parcel of developing and offering [Applicant’s] homes for sale.'"

And so the Board affirmed both refusals to register.

Read comments and post your comment here.

TTABlog comment: Last year the Board affirmed refusals to register the same two marks for building construction and maintenance services because applicant's specimens of use failed to show use of the mark with any of the identified services. (TTABlogged here).

Text Copyright John L. Welch 2019.

Monday, March 11, 2019

TTABlog Test: Is "NEW SILK ROAD" Deceptive for Clothing Not Made of Silk?

The USPTO refused registration of the mark NEW SILK ROAD for clothing, on the ground that the mark is deceptive under Section 2(a) because the goods are not primarily made of silk. Applicant Tang argued that consumers would understand the mark to refer to the historical Silk Road, not to the contests of the clothing. How do you think this came out? In re Tang, Serial No. 87630035 (March 8, 2019) [not precedential] (Opinion by Judge Karen Kuhlke).

According to In re Budge, The test for deceptiveness requires that the following three elements be met:
  1. Is the term misdescriptive of the character, quality, function, composition or use of the goods?
  2. If so, are prospective purchasers likely to believe that the misdescription actually describes the goods?
  3. If so, is the misdescription likely to affect the purchasing decision of a significant portion of relevant consumers?
The Examining Attorney maintained that SILK is misdescriptive of the goods because they are not primarily made of silk, that consumers are likely to believe the misdescription, and that the misdescription is material because clothing primarily made of silk is more appealing and desirable.

Applicant Tang relied on a Wikipedia entry for "Silk Road" in asserting that the word SILK would not be considered by itself, but instead the unitary phrase NEW SILK ROAD would be perceived as a reference to the historical Silk Road:

The Silk Road or Silk Route was an ancient network of trade routes that were for centuries central to cultural interaction originally through regions of Eurasia connecting the East and West and stretching from the Korean peninsula and Japan to the Mediterranean Sea.

In a 5-page opinion, the Board agreed with Applicant Tang. Although a mark may be deceptive even if only a portion is deceptive (e.g., WHITE JASMINE for tea that did not include white tea, SILKEASE for clothing not made of silk), "[m]isdescriptiveness of a term may be negated by its meaning in the context of the whole mark inasmuch as the combination is seen together and makes a unitary impression." Budge Mfg., 8 USPQ2d at 1261.

We find THE NEW SILK ROAD [sic] to be more in the nature of COPY CALF and PARIS BEACH CLUB in that the term SILK in the phrase NEW SILK ROAD cannot be separated from the meaning derived from the whole mark NEW SILK ROAD. While it may be that the “Silk Road derived its name precisely because silk was a major trade product along such routes” (Ex. Att. Br. 6 TTABVUE 11), the meaning and commercial impression of the SILK ROAD is not limited to trading in silk products. The Silk Road is a historical trading route known for trade in many products, as well as expanding economic, cultural and technological exchange around the world.

The Board therefore found that the mark NEW SILK ROAD is not deceptively misdescriptive of applicant's clothing, and therefore is not deceptive under Section 2(a).

Read comments and post your comment here.

TTABlog comment:  Perhaps the Board should have said that the mark is not misdescriptive of the goods, let alone deceptively misdescriptive. In any event, I think NEW SILK ROAD does imply that the goods are made of silk.

Text Copyright John L. Welch 2019.

Friday, March 08, 2019

"The Trademark Office Comes to California" - April 2 (SF) and April 4 (LA)

"The Trademark Office Comes to California," set for April 2 in San Francisco, and April 4 in Los Angeles, is one of the flagship events hosted by the California Lawyers Association Intellectual Property Law Section, and it offers unparalleled value in addition to the chance to hear and meet the Commissioner and Deputy Commissioner for Trademarks, TTAB judges, and senior examining attorneys. There will also be panels presented by experienced practitioners, an interactive luncheon with table topic discussions, a networking reception, and the "TTAB Year in Review" presented by yours truly. Attendees receive 6.5 hours of CLE credit, including 1.0 hour of legal ethics. Details and registration here.

Read comments and post your comment here.

TTABlog comment: Be there or be square!

Text Copyright John L. Welch 2019.

Finding Clothing and Energy Drinks Related to Coffee, TTAB Grants KICK ASS Cancellation Petition

Kicking Horse Coffee won again at the TTAB (its prior victory was TTABlogged here), this time giving the boot to the mark KICK ASS for clothing and energy drinks. Finding the challenged mark confusingly similar to Kicking Horse's registered mark KICK ASS for coffee, the Board granted a petition to cancel Defendant Critchley's registration and sustained the opposition to his pending application. Kicking Horse Coffee Co. Ltd. v. David John Critchley, Cancellation No. 92059924 and Opposition No. 91218282 [not precedential] (Opinion by Judge Christopher Larkin).

The Marks: Not surprisingly, the Board found the marks to be identical in appearance, sound, and meaning. As to the strength of Kicking Horse's mark, the Board noted that just because the mark has achieved incontestability does not mean it is a strong mark. Defendant Critchley argued that KICK ASS is weak because it is laudatory. However, Critchley's 11 third-party registrations and two common law uses "are a relatively small number compared to the number of such marks in cases that have found weakness based on those marks." Moreover, none of the registrations covered coffee or energy drinks and only five covered clothing. Each of those five registered marks included words in addition to KICK ASS, and so "they tell us little, if anything, about the strength of KICK ASS alone for coffee, or whether KICK ASS alone for coffee, and KICK ASS alone for clothing or energy drinks, are confusingly similar."

Coffee and Energy Drinks: Critchley's identification of goods specifically excluded "coffee-flavoured energy drinks, coffee-based energy drinks, and energy drinks having coffee as an ingredient." Critchley argued that the term "coffee" in Kicking Horse's registration is limited to coffee beans and ground coffee, and does not include coffee beverages. The Board, however, found otherwise: "[t]he record shows that 'coffee' includes brewed coffee, as well as 'coffee-based beverages' sold in ready-to-drink form in which milk, sugar, or flavorings have been added to coffee." The Board took judicial notice that "cream, milk, and/or sugar are commonly added to coffee when it is consumed, and the record shows that packaged ready-to-drink coffee, including espresso, often contains milk and sugar, or other pre-added flavorings."

As to Critchley's energy drinks, the Board took judicial notice that "'energy drink' means 'a usually carbonated beverage that typically contains caffeine and other ingredients (such as taurine and ginseng) intended to increase the drinker's energy.'"

Kicking Horse submitted some 29 third-party registrations for marks covering both coffee and energy drinks, as well as Internet webpages showing coffee and non-coffee energy drinks sold under the same mark. The Board agreed with Critchley that many coffee sellers do not sell non-coffee related energy drinks, and that many energy drinks sellers do not sell coffee. Nonetheless, "multiple companies do sell both under the same mark." This use evidence is "highly probative" when coupled with the third-party registration evidence. Moreover, the fact that coffee and energy drinks serve the same general function of providing energy  is probative of the relatedness of the goods.

The Board concluded that Kicking Horse's coffee and Critchley's energy drinks are related for Section 2(d) purposes.

Coffee and Clothing: Kicking Horse again relied on third-party registration and use evidence to show the relatedness of these goods. At least 50 different companies and individuals have registered marks for both coffee and one or more of the clothing items identified in Critchley’s registration.

Critchley argued that "[i]f Kicking Horse’s definition of relatedness were accepted, then clothing would be 'related' to an overly wide variety of otherwise completely unrelated goods and services," and that "just because it is common for trademarks to be used on collateral goods like clothes does not mean that clothing is related to every other conceivable product and services as a matter of law." Critchley cited three non-precedential TTAB decisions, two precedential decisions, and one federal court decision in support of this contention, but the Board distinguished each one.

The Board also noted Critchley's admission that "customers understand that companies routinely sell, or give away, t-shirts and other promotional material bearing the mark of their primary goods or services," and that "a number of coffee companies sell t-shirts to promote their café or company name."

Critchley has failed to persuade us that we should apply a different standard for relatedness when the goods are clothing as opposed to energy drinks. More than 50 companies and individuals have registered their marks for both coffee and clothing, particularly shirts, and the record as a whole, including Kicking Horse’s use evidence and Critchley's admissions, indicates that KICK ASS clothing would reasonably be viewed by consumers familiar with KICK ASS coffee as emanating from the coffee company, even if the coffee company is not "actually in the clothing business."

Conclusion; Finding that all of the relevant du Pont factors favored Kicking Horse, the Board granted its petition for cancellation and sustained its opposition.

Read comments and post your comment here.

TTABlog comment: What is clothing not related to? What entity does not promote its products/services via a t-shirt? [The TTABlog t-shirt is coming soon].

Text Copyright John L. Welch 2019.

Thursday, March 07, 2019

The Trademark Reporter's 2019 "Annual Review of U.S. Trademark Cases"

The Trademark Reporter has published its latest Annual Review of U.S. Trademark Cases: "The Seventy-First Year of Administration of the Lanham Act of 1946," by Theodore H. Davis, Jr. and yours truly, John L. Welch. (download pdf here).

In his Introduction, Ted Davis ponders the ramifications of the Brunetti case should the Supreme Court rule, as did the Federal Circuit, that the Section 2(a) prohibition on scandalous marks is a "content-discriminatory mechanism unable to survive intermediate scrutiny." Will such a holding affect other content-based provisions of Section 2? He explains why he thinks the answer is no.

Ted finds a number of TTAB decisions to be of interest, and particularly the Board's refusal to recuse itself in a cancellation proceeding involving registrations for the mark TRUMP, in which registrations the President has an interest. Chief Judge Rogers stepped in to pen that opinion.

* * * * * * * *
Once again I thank The Trademark Reporter for granting leave to provide a link to this issue, which is Copyright © 2019 the International Trademark Association and reprinted with the permission of The Trademark Reporter®, 109 TMR 1 (January-February 2019).

Read comments and post your comment here.

Text Copyright John L. Welch 2019.

Wednesday, March 06, 2019

Finding a Bearded Skull Design Merely Ornamental for Clothing, TTAB Affirms Failure-to-Function Refusal

[This is a guest post written by Stephanie Grace Stella, an associate in the Trademark Group at Wolf, Greenfield & Sacks, P.C.]. Finding that the bearded skull design, below, fails to function as a trademark for various clothing items, the Board affirmed a refusal to register under Sections 1, 2, and 45 of the Lanham Act. The Board concluded that the bearded skull design is merely a decorative feature of Applicant’s clothing and does not function as a source identifier. In re Diesel Power Gear, LLC, Serial No. 87261073 (February 27, 2019) [not precedential] (Opinion by Judge Marc A. Bergsman).

Applicant Diesel Power sought to register the bearded skull design for vehicle accessories in International Classes 12 and 27 under Trademark Act Section 1(b), based upon Applicant’s claim of a bona fide intent to use the mark in commerce, and for various clothing items in International Class 25 under Trademark Act Section 1(a), based upon Applicant’s claim of use of the mark in commerce.

As to Class 25 only, based on Diesel Power’s use of the mark as depicted in the specimens of use, above, the Examining Attorney concluded that the bearded skull design is merely “an ornamental feature of Applicant’s clothing.” The Examining Attorney contended that “‘the proposed mark is prominently displayed on the front or as a part of a design across the front of t-shirts,’ and [thus] ‘is not likely to be perceived as a source indicator by consumers.’” Applicant responded that the mark indeed functions as a trademark because (1) “it is ‘distinctive and unique, and is not a well-known design,’” and (2) “‘consumers are familiar with the practices of the trade, in which a large version of a mark is frequently placed on a t-shirt as a source identifier.’”

Citing the Trademark Manual of Examining Procedure (“TMEP”) § 1202.03, the Board analyzed the following four factors that Examining Attorneys consider in analyzing whether ornamental features function as a trademark:
    1. The commercial impression of the proposed mark;
    2. The relevant practices of the trade;
    3. Secondary source, if applicable; and
    4. Evidence of distinctiveness.

The Board underscored the weight of the first factor, noting that “the critical question . . . is the commercial impression [the mark] makes on the relevant public, i.e., whether the [mark] sought to be registered would be perceived as a mark identifying the source of the goods.” The Board considered the size, location, dominance and significance of the bearded skull design as it appeared on the t-shirts illustrated in the specimens, and concluded:

Nothing about the bearded skull design stands out from the other wording and elements on the specimens so as to be viewed as a source-identifier. Based on these specimens of use, the commercial impression engendered by the bearded skull design is not likely to be perceived as anything other than part of thematic whole of the ornamentation on Applicant’s t-shirts. There is no probative evidence of record that purchasers perceive the bearded skull design as a trademark.

As to the second factor, Diesel Power contended without support “that it ‘is well known, companies frequently place large versions of their mark on the front of a t-shirt, either as the only mark, or as a predominating feature in conjunction with other design features.” The Examining Attorney, citing TMEP §§ 1202.03 (a) and (b), maintained that “‘where consumers have been conditioned to recognize trademarks in a certain location, as on the breast area of a shirt, ornamental matter placed in a different location is less likely to be perceived as an indicator of source.’”

While the Board noted that “[t]here is no per se rule regarding the registrability based on the size or location of a mark on clothing,” it rejected Applicant’s argument and reiterated the importance of the commercial impression the mark makes on consumers: “[Because] the bearded skull design is emblazoned across the center of the t-shirt as an integral part a larger design that will be perceive [sic] as part of thematic whole of the ornamentation on Applicant’s t-shirts, it is not displayed in the manner in which consumers have been conditioned to recognize trademarks.”

As to the third factor, the Board looked to whether Applicant had submitted any evidence that the bearded skull design functions as an indicator of secondary source. Although Applicant sought to register the mark for vehicle accessories, it did so based upon an alleged bona fide intent to use the mark in connection with those goods, and the Board found no evidence that the design had been used or registered in connection with any other goods or services. The Board thus concluded that the mark as used on clothing failed to function as an indicator of secondary source.

As to the fourth and final factor, the Board reasoned that, despite the inherent distinctiveness of the applied-for mark, “because the commercial impression engendered by the bearded skull design is not likely to be perceived as anything other than part of thematic whole of the ornamentation on Applicant’s t-shirts, Applicant has failed to make trademark use of the design.”

And so, as to Class 25 only, the Board affirmed the refusal to register.

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TTABlog comment: WYHA?

Text Copyright John L. Welch 2019.

Tuesday, March 05, 2019

Rejecting Estoppel and Parody Defenses, TTAB Finds CRABS ADJUST HUMIDITY Confusable with CARDS AGAINST HUMANITY for Card Games

In a 33-page opinion, the Board sustained this opposition to registration of CRABS ADJUST HUMIDITY, in standard character and design form, finding the mark likely to cause confusion with the registered mark CARDS AGAINST HUMANITY, both for card games and game cards.The Board rejected applicant's affirmative defenses of estoppel and bad faith, and likewise deep-sixed applicant's parody defense. Cards Against Humanity, LLC v. Vampire Squid Cards, LLC, Opposition No. 91225576 (February 28, 2019) [not precedential] (Opinion by Judge Thomas W. Wellington).

Applicant's founders created its game cards as an "expansion pack" to opposer's popular card game. In choosing the applied-for mark, applicant "wanted a phrase that would evoke [CARDS AGAINST HUMANITY] by rhyming with it, but in an absurd and surreal way." Email communications between the parties ensued, and in 2013 opposer gave applicant permission to have a first set of cards printed and sold on applicant's website.

Sales of applicant's cards peaked by Christmas 2014, and applicant began selling on and at small retailers. However, when applicant attempted to sell its cards to the Target retail chain, opposer objected. The subject application was filed in May 2015, and opposer filed a timely opposition.

Estoppel Defenses: Applicant claimed that it received opposer's approval to market its game, and did so for two years without complaint from opposer. This express consent, according to applicant, was followed by applicant's detrimental reliance. Thus the defense of estoppel was created. Applicant further contended that "an express consent to use necessarily includes a consent to register."

Opposer admitted that it gave "a limited permission to use the name Crabs Against Humidity as part of an overall design back in 2013." However, opposer asserted, that permission was limited to the specific design and applied only to a small print run to be sold at applicant's website.

The Board observed that estoppel by acquiescence requires proof of three elements: "(1) that plaintiff actively represented that it would not assert a right or a claim; (2) that the delay between the active representation and assertion of the right or claim was not excusable; and (3) that the delay caused defendant undue prejudice." For an inter partes proceeding, the period of delay does not begin to run until the subject mark is published for opposition. Here, opposer timely filed its opposition, and so there was no unexcusable delay.

As to estoppel by express consent, the Board found that defense to be unavailing. The extent of opposer's consent was ambiguous. Applicant apparently did not believe it could pursue any sales without consent. Moreover, even if opposer had unconditionally consented to applicant's use of its marks, there was no evidence that opposer consented to registration. Therefore this defense also failed.

Finally, applicant's assertion that opposer was guilty of unclean hands due to its attempt to restrain trade was beyond the Board's jurisdiction.

Likelihood of Confusion: The facts that the involved goods are identical, and therefore presumably travel through the same channels of trade to the same classes of consumers, and the goods are relatively inexpensive items that may be purchased on impulse, weighed heavily in opposer's favor. Moreover, because the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

As to the marks, the Board found them to be "quite similar." The similarity is no coincidence, since applicant admitted that it intended to invoke opposer's mark by "rhyming with it." Consumers often abbreviate or shorten marks, and the record showed that consumers do indeed abbreviate the parties's marks to CAH.

Applicant claimed that its mark is a "parody" of opposer's mark, like the "Chewy Vuitton" dog toy. However, the Board has long held that parody is a viable defense to a Section 2(d) claim only if the involved marks are not otherwise confusingly similar. [If they are not confusingly similar, why would you need the parody defense? - ed.]. Here, the marks are similar in their overall commercial impression, and so the parody defense was inapplicable.

The Board found that the differences in the literal connotations of the marks did not overcome their similarities in appearance, pronunciation, and overall commercial impression. Both marks "share a whimsical or nonsensical nature," and applicant admitted that its mark "necessarily . . . calls to mind" opposer's mark.

The Board further found that opposer's mark is "very strong." Its game has enjoyed significant sales and an impressive amount of unsolicited publicity, and the game has been a best-seller on for years.

Moreover, opposer supplied "substantial" evidence of actual confusion that had "clear probative value." Although the number of known instances of confusion were few when compared to the number of games sold, the Board found them to be at least "illustrative of how and why confusion is likely."

Finally, invoking the 13th du Pont factor, opposer alleged that applicant had proceeded in bad faith, but the Board was unconvinced. "A finding of bad faith must be supported by an intent to confuse, rather than mere knowledge of another's mark or even an intent to copy." Here, applicant had reason to believe it received approval to adopt its mark, and so the Board found this factor to be neutral.

Conclusion: Balancing the relevant du Pont factors, the Board found that opposer had proven a likelihood of confusion by a preponderance of the evidence that consumers are likely to mistakenly believe that applicant's goods originate with, or are licensed, sponsored, or approved by, opposer. "The intention of [A]pplicant was to get as close to [O]pposer's marks as possible and it is our opinion that it has succeeded to the extent that there is a likelihood of confusion." (citation omitted).

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Text Copyright John L. Welch 2019.