TTABlog Test: How Did These Three Recent TTAB Appeals Come Out?

Here are three decisions issued by the TTAB two days ago, the first a Section 2(e)(1) mere descriptiveness refusal, the second a Section 2(d) likelihood of confusion refusal, and the third a genericness refusal.How do you think they came out? Answers in first comment.

In re One Plus Two Inc., Serial Nos. 87462239 and 87462270 (November 20, 2019) [not precedential] (Opinion by Judge Jonathan Hudis). Section 2(e)(1) mere descriptiveness refusals of RICH & CREAMY and Design and RICH & SPICY for "alcoholic beverages, except beer" [CREAMY and SPICY disclaimed].  Applicant contended that, inter alia,, the term RICH in each mark is too vague and nebulous to be merely descriptive of applicant’s goods, and that RICH creates a double entendre connotation, since one meaning of "rich" is "suggestive of wealth."

In re Gerald Green, Application Serial No. 87682609 (November 20, 2019) [not precedential] (Opinion by Judge Marc A. Bergsman). [Section 2(d) refusal of the mark 2GS for "“apparel, namely, shirts; clothing, namely, pants, jackets, sweaters, footwear; hats; accessories, namely, belts, neck wear, wrist wear, ankle wear, facewear," in view of the registered mark 2GS MADEMOISELLE for "clothing, namely, pants, coats, dresses; footwear, headgear, namely, hats; leather or imitation leather clothing, namely, pants, coats, dresses; sports shoes; boots and high shoes for riding; leggings; gaiters; shirts; polo shirts; tee-shirts; vests; jackets; waterproof jackets; belts; gloves; caps; scarves; sashes for wear; ties; socks." Applicant Green argued that "Registrant’s mark offers sophisticated apparel and gear associated with horse-back riding," and that purchasers of those goods will exercise great care in their purchasing decisions.

In re Electronic Payments Inc., Serial No. 87049492 (November 20, 2019) [not precedential] (Opinion by Judge Karen Kuhlke). Refusal to register ELECTRONIC PAYMENTS for various credit card and gift card processing services provided to merchants, on the grounds of genericness. Applicant asserted that although its services are provided prior to or after the transfer of funds, its identified services are not part of the actual processing of electronic payments.

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

Text Copyright John L. Welch 2019.

Finding Distilled Spirits and Malt Related, TTAB Sustains 2(d) Opposition to BLACKLAND DISTILLERY

The Board sustained an opposition to registration of BLACKLAND DISTILLERY for "distilled spirits" [DISTILLERY disclaimed], finding a likelihood of confusion with the registered mark BLACKLANDS MALT for "malt for brewing and distilling" [MALT disclaimed]. The parties stipulated many facts and proceeded under the Board's ACR regime. The key issue under Section 2(d) was, of course, the relatedness of the goods. Opposer also claimed that applicant's mark is primarily geographically descriptive under Section 2(e)(2), but that claim failed due to the obscurity of "Blacklands" as a place or location. Blacklands Malt, LLC v. M Distillery, Inc., Opposition No. 91243647 (November 18, 2019) [not precedential] (Opinion by Judge Peter W. Cataldo).

Likelihood of Confusion: Opposer introduced evidence that third-party brewers and distillers state in their advertising, packaging and labels that their beers and spirits are produced with Opposer’s malt. Opposer also introduced evidence that it licenses its mark, or portions thereof, to third-party brewers for use in such beers as “Smoak on the Blacklands.” Opposer also provided evidence that a third-party craft distiller was opening one of the largest malting facilities in the world. And finally, it submitted  copies of four use-based, third-party registrations for marks identifying both “malt for brewing and distilling” and various beers.

There was no evidence that opposer is a source of beer or distilled spirits. Nevertheless, the Board found that the evidence did support opposer's allegation that "Opposer and its goods are inextricably entwined in the alcoholic-beverages industry.

The Board therefore concluded that "the parties’ goods are related inasmuch as Opposer’s malt is a
necessary and primary ingredient in distilled spirits, including distilled spirits of the types produced by Applicant." 

The parties stipulated that distilled spirits and malt are not sold through the same trade channels, and that ninety-eight percent of opposer's sales of malt were to commercial entities. Although malt purchasers are not impulse buyers, applicant's purchasers presumably include ordinary consumers who may not exercise a high degree of purchasing care. The Board therefore deemed this du Pont factor to be neutral of weighing slightly against a finding of likelihood of confusion.

Balancing the relevant factors, the Board found confusion likely and it sustained the Section 2(d) claim.

Geographical Descriptiveness The first prong of the test for geographical descriptiveness is a showing that the primary significance of the mark is a generally known geographic location. Opposer failed to satisfy that prong. [Can a prong be satisfied? - ed.].

The parties stipulated that the boundaries of the “Blackland Prairie Ecoregion” in Texas are unclear, and there was little evidence in the record that established any recognized boundaries for the Blackland Prairie. It was also unclear whether applicant operated in or near that region. The parties stipulated that many of their own customers are not familiar with the significance of the term.

The scant evidence in this case, along with the parties’ stipulations, do not necessarily evidence that the Blackland Prairie is a geographic location known generally to the relevant American purchasing public. As such, the term does not convey a readily recognizable geographical significance to the average American consumer, but rather simply denotes the name of an obscure or vaguely defined geographic area.

Therefore the Board dismissed opposer's Section 2(e)(2) claim.

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TTABlog comment: Sometimes, when your are in the middle of a blog post, you realize that the case is not that interesting. I'll call that a WYHBT? Would You Have Blogged This? This case may be one of them.

Text Copyright John L. Welch 2019.

Precedential No. 32: Finding Bakery Shops and Bread Buns Related, TTAB Affirms 2(d) Refusal of COUNTRY OVEN

In a bit of snoozer, the Board affirmed a Section 2(d) refusal of COUNTRY OVEN for "Self-serve retail bakery shops; Retail bakery shops; bakery services, namely, online retail bakery shops" and "Bakery services, namely, the manufacture of bakery products to the order and/or specification of others" in view of the identical mark registered for "bread buns." Applicant argued that “something more” than the fact that bakeries sell bakery products is required to prove the relatedness of the goods and services, but the Board ruled otherwise. In re Country Oven, Inc., 2019 USPQ2d 443903 (TTAB 2019) [precedential] (Opinion by Judge Angela Lykos).

Because the involved marks are identical, a lesser degree of similarity between the involved goods and services is necessary to support a finding of likely confusion. In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 123 USPQ2d 1744 (Fed. Cir. 2017). The Board observed that it is “common knowledge that retail bakery shops sell bakery products.” Moreover, Examining Attorney Matt Einstein submitted third-party use-based registrations for marks covering both applicant’s services and goods that encompass bakery products. Such third-party registrations “are relevant to show that the goods and services are of a type that may emanate from a single source under one mark.” In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).

Applicant argued that “bread buns” are a specific type of product like hamburger buns or hot dog buns, and thus are not covered by the third-party registrations for "bakery goods." The Board observed, however, that “a registration that describes goods broadly is presumed to encompass all goods or services of the type described. See Stone Lion, 110 USPQ2d at 1161.” The Board found that the terms “bakery goods” and “bakery products” in the registrations encompass “bread buns.” Likewise, the term “buns” is broad enough to include all types of buns, including “bread buns.”

The Examining Attorney also provided several examples of use of the same mark for bakery shops and bakery products. In addition, applicant’s website uses the mark COUNTRY OVEN in connection with bakery products.

Applicant next contended that more evidence than that bakeries sell bakery products is needed to support a finding of likelihood of confusion, pointing to the “something more” requirement in In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059 (Fed. Cir. 2003) (restaurant services and beer) and In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082 (Fed. Cir. 2014) (stating that the “something more” requirement applies whenever “the relatedness of the goods and services is not evident, well-known or generally recognized.” 113 USPQ2d at 1087).

The Board, however, concluded that Coors and St. Helena support a finding that bakery services and bakery products are related because those decisions recognized that there can be a “clear relationship” between services and products even without additional evidence.

Here, because the relationship between baked goods, including bread buns, and bakeries is the opposite of obscure, unknown, or generally unrecognized, the relevant line of case law holds that confusion may be likely to occur from the use of the same or similar marks for goods, on the one hand, and for services involving those goods, on the other. See, e.g., Detroit Athletic, 128 USPQ2d at 1052 (“[W]e have held that confusion is likely where one party engages in retail services that sell goods of the type produced by the other party . . . .”).

The Board found the evidence of record sufficient to show that applicant’s services and the goods of the cited registration are “clearly related.” Moreover, the evidence demonstrated that bread buns are sold through retail bakery shops, and so this du Pont factor also favored a finding of likelihood of confusion.

Considering the relevant evidence and arguments, the Board found that the identical nature of the marks, the closely-related nature of the goods and services, and the overlapping channels of trade and classes of consumers required affirmance of the Section 2(d) refusal to register.

Read comments and post your comment here.

TTABlog comment: I confess that I never heard of something called a "bread bun." I would think if you crossed a bread with a bun, you would get a "brun."

Text Copyright John L. Welch 2019.

Fame Plays Dominant Role in OLD NAVY and BACCARAT Section 2(d) Opposition Victories

In two recent section 2(d) oppositions, the fame of the opposer's marked played a dominant role in the Board's Section 2(d) analysis. "Famous marks are accorded more protection precisely because they are more likely to be remembered and associated in the public mind that a weaker mark." Recot Inc. v. Becton, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000). In one of the two oppositions the involved marks were identical (BACCARAT), and in the other the goods were overlapping (clothing).

Baccarat S.A. v. Stefan H. Laux, Opposition No. 91227407 (November 8, 2019) [not precedential] (Opinion by Judge Marc A. Bergsman). The Board sustained this opposition to registration of the mark BACCARAT for vodka, finding a likelihood of confusion with the identical mark for crystal and glassware.

The evidence established that opposer's predecessors began producing product in 1764 in the French town of Baccarat. Opposer established an import agency in New York in 1892. Its wares have been exhibited in numerous competitions, including World Fairs, and have won many awards. They are celebrated for their artistry, design, and historical value in art, fashion, and museum exhibits. Unsolicited media publicity demonstrated the renown of these products. Some dictionaries list BACCARAT as a trademark, and several encyclopedias include entries for BACCARAT glass.

Based on the combination of Opposer’s long use of the BACCARAT mark in the United States, commercial success, including a 13% market share, extensive licensing and partnerships with other products, and very favorable publicity (e.g., “one of the oldest and most preeminent luxury brands,” “eponymous crystal brand,” “the world’s finest crystal works,” etc.), we find that Opposer’s BACCARAT mark is famous for crystal glass products for purposes of the likelihood of confusion analysis.

Applicant Laux submitted the results of a survey purporting to rebut opposer's evidence, but the survey did not restrict the participants to purchasers of crystal products. In short, the survey "was testing for dilution fame rather than for likelihood of confusion." "T]he proper legal standard for evaluating the fame of a mark under the fifth DuPont factor is the class of customers and potential customers of a service or product, not the general public." Palm Bay Imports, Inc v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 73 USPQ2d 1689, 1695 (Fed. Cir. 2005). The choice of an overly-broad universe skewed the survey results and rendered them non-probative.

As for the involved goods, the Board observed that opposer has produced "hundreds" of different decanters, bottles, pitchers, and glasses for wine and spirits, including crystal vodka shot glasses and service sets. Moreover, it expanded its product line over the years to include light fixtures, candelabras, lamps, and jewelry. It has produced lines of glass bottles for brand name perfumes (e.g., Christian Dior) and bottles and decanters for such liquor products as Remy Martin, Courvoisier, and Grey Goose (vodka), and also for Evian bottled water.

In light of the fame of Opposer's mark and the expansion of its product line, the use of the identical mark in connection with vodka may well be perceived as another of Opposer’s commercial activities capitalizing on its BACCARAT mark. See Harley-Davidson Motor Co. v. Pierce Foods Corp., 231 USPQ 857, 862 (TTAB 1986). This leads us to consider what, in our view, is the crux of the likelihood of confusion issue in this case, namely, whether persons having knowledge of the long used and extensively promoted BACCARAT mark for crystal products, and having encountered the expansion of Opposer’s commercial activities as noted above, are apt to assume, erroneously, that BACCARAT vodka emanates from the same source.

The Board therefore found that the involved goods are related.

Finally, the Board noted that Applicant Laux's identification of goods includes no limitation as to channels of trade. Since opposer's products are sold on Amazon.com and through major retail stores such as Macys and Neiman Marcus, the Board found that Laux's vodka and opposer's crystal products are sold to some of the same classes of customers.

Concluding that confusion is likely as to the source of Applicant Laux's vodka, the Board sustained the opposition under Section 2(d), declining to reach opposer's Section 43(c) dilution and Section 2(a) false association claims.

Old Navy (Apparel), LLC v. Gregory C. Blissman, Opposition No. 91234507 (November 14, 2019) [not precedential] (Opinion by Judge Cynthia C. Lynch). The Board sustained this opposition to registration of the mark OLD IVY for various clothing items, finding a likelihood of confusion with the mark OLD NAVY, registered for overlapping clothing items.

Because the involved goods are in part identical, the Board presumed that those items travel in the same channels of trade to the same classes of consumers. Applicant Blissman admitted that the OLD NAVY mark is famous, and in any case opposer provided evidence of its sales in the billions of dollars, widespread advertising and promotion of the brand, and its status among the leading apparel retailers. Blissman's evidence of two third-party registrations for marks containing the word "OLD" in the clothing field (OLD COUNTRY and OLD GLORY), without evidence of use, was too minimal to prove that opposer's mark is weak. And so the Board found that OLD NAVY is famous for likelihood of confusion purposes.

Turning to the marks, the Board noted that when the involved goods are identical, a lesser degree of similarity between the marks is needed to support a finding of likely confusion. Here, both marks begin with the word OLD and include a second two-syllable word ending in "VY." These common elements create a visual and aural similarity that outweigh the differences between the marks.

As to meaning or connotation, Applicant Blissman provided some limited evidence that, in the context of clothing and unlike the mark OLD NAVY, "old ivy" may point to a particular style, calling to mind the Ivy League, where one's wardrobe represents the affiliation with an elite university but at the same time involves "dressing down when the authority figure such as your father would normally dress up." Nonetheless, the Board found that "given the renown of OLD NAVY and the partially identical wording and similar overall structure of the marks . . . consumers likely could view OLD IVY as a variation of OLD NAVY, perhaps used to promote clothing with a more traditional style." The Board concluded that this first du Pont factor "weighs somewhat in favor of a likelihood of confusion."

In light of the fame of opposer's mark and the overlap in goods, the Board found the marks sufficiently similar under Section 2(d) and it sustained the opposition. It again declined to reach the opposer's dilution claim.

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TTABlog comment: How about OLD AIR FORCE or OLD MERCHANT MARINE for clothing? or BACKGAMMON for vodka?

Text Copyright John L. Welch 2019.

CAFC Remands GALPERTI Case to TTAB for Application of Proper Fraud Analysis

The U.S. Court of Appeals for the Federal Circuit remanded the TTAB's decision in Galperti, Inc. v. Galperti S.r.L., Cancellation No. 92057016 (August 13, 2018) [not precedential] (Opinion by Judge Angela Lykos), in which the Board denied a petition for cancellation of a registration for the mark GALPERTI for "Ironmongery in the form of metal hardware, namely, flanges, ring-shaped fittings of metal, and forgings." The CAFC ruled that the Board had properly rejected petitioner's Section 2(d) claim due to failure to prove priority, but it concluded that the Board had not applied the proper legal analysis to petitioner's fraud claim. Galperti, Inc. v. Galperti S.R.L., 2019 USPQ2d 435065 (Fed. Cir. 2019) [not precedential].

Likelihood of Confusion: Petitioner/Appellant argued that the CAFC's decision in Converse, Inc. v. Internationial Trade Commission, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018), which issued after the Board's opinion, "mandates that Appellee's priority date [in 2006] is irrelevant and the proper question is whether Appellant demonstrated use prior to April 15, 2008 - Appellee's U.S. Registration date." The court did not agree, pointing out that Converse involved an infringement action, not a priority claim. Converse concerned only whether infringement occurred before or after registration, concluding that with respect to infringements that came before registration, a mark owner must establish (without the benefit of the registration presumption) that its mark acquired secondary meaning prior to the first infringing use.

The CAFC declined to extend Converse "far beyond its facts." Such a holding would not only conflict with a significant body of law, but also with Section 7(c) of the Lanham Act ("the filing of the application to register such mark shall constitute constructive  use") and Section 66 (when a U.S. registration is based on an international registration under the Madrid Protocol, the foreign registration "shall constitute constructive use of the mark, conferring the same rights as those specified Section 7(c)"). [Appellee claimed priority based on an Italian registration].

The court also ruled that the Board did not abuse its discretion in refusing to consider appellant's trade name use because the issue was not raised in the pleadings nor tried by consent. And so the court affirmed the Board's conclusion that appellant failed to prove priority.

Fraud: The challenged registration issued under Section 2(f) based on appellee's averment in the underlying application that it had made "substantially exclusive" use of the mark GALPERTI for the five years prior to September 26, 2007. However, from 2005 to late 2006 the parties were involved in a trademark dispute in Texas relating to both parties' use of the same mark. Ms. Dina Galperti, who signed the Section 2(f) declaration, was aware of appellant and its use of the GALPERTI mark at that time.

The Board correctly concluded that she and appellant were "well aware of" Appellant, its use of the GALPERTI mark, and its "presence in the U.S. marketplace." Nevertheless, the Board concluded that appellee's claim of "substantially exclusive" use was not false. That, the CAFC found, was a misapplication of its precedent.

The Board looked to our decision in L.D. Kichler Co. v. Davoil, Inc., 192 F.3d 1349 (Fed. Cir. 1999), for guidance on the bounds of the phrase “substantially exclusive.” Board Op. at *30. As Kichler explains, an applicant’s claim is not defeated by merely any other usage of the mark. 192 F.3d at 1352. Such a strict interpretation would deprive the word “substantially” of any meaning. Id. Rather, when evaluating whether an applicant has had “substantially exclusive” use of a mark, we look to whether any use by a third party was “significant,” or whether it was merely “inconsequential or infringing.” Id.

The Board correctly stated that appellee's awareness of the presence of others in the marketplace "does not make the September 26, 2007 averment of  'substantially exclusive' use of the GALPERTI mark per se false." However, that was not the end of the matter.

The Board failed to conduct the next, necessary, step: analyzing whether Appellant’s use of the mark was “significant” enough to make Appellee’s claim false, or whether it was “inconsequential” such that Appellee’s claim of “substantially exclusive” use was not false.

Therefore the CAFC vacated the fraud portion of the Board's decision and remanded the case for further consideration consistent with the court's ruling. "On the issue of falsity, the Board should consider the significance of Appellant's use of the GALPERTI mark to determine whether Appellee's claim of  'substantially exclusive use' was false."

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TTABlog comment: Of course, even if the statement were false, appellant would still have to prove that appellee had an intent to deceive the USPTO. BTW: how does this ruling jibe with the Board's opinion in Quirk, Inc. v. Village Car Company, 120 USPQ2d 1146 (TTAB 2016) [precedential] [TTABlogged here], in which the Board held that a cancellation petitioner's fraud claim must fail when the petitioner does not establish Section 2(d) priority? The Quirk decision was cited neither by the Board nor the CAFC.

Text Copyright John L. Welch 2019.

On Remand, TTAB Denies Abandonment Claims But Finds That "ADD A ZERO" Fails to Function as a TM for Shirts and Caps

On remand from the CAFC, the TTAB denied Petitioner adidas's claim that Respondent Church abandoned it marks ADD A ZERO (in standard character and design form), but the Board agreed that the phrase itself fails to function as a source indicator for shirts and caps. However, the Board found that the word+design form (shown below) is unitary and does function as a trademark. adidas AG v. Christian Faith Fellowship Church, Cancellation No. 92053314 (November 13, 2019) [not precedential] (Opinion by Judge Cindy B. Greenbaum).

In 2015, the Board granted adidas's petition for cancellation on the ground on nonuse, finding that the sale of two caps to an out-of-state resident at the Church's bookstore prior to rhe filing date of the underlying application was de minimis and therefore insufficient to satisfy the "use in commerce" requirement of the Lanham Act. The Board declined to consider adidas's abandonment and failure-to-function claims. adidas AG v. Christian Faith Fellowship Church, Cancellation No. 92053314 (TTAB September 14, 2015) [not precedential]

In 2016, the CAFC reversed the TTAB decision, ruling that the Church's sale of the two hats was regulable by Congress under the Commerce Clause and therefore constitutes “use in commerce” under the Lanham Act. The CAFC remanded the case to the Board for consideration of adidas’s other grounds for cancellation: abandonment-and failure-to-function. Christian Faith Fellowship Church v. adidas AG, 120 USPQ2d 1640 (Fed. Cir. 2016) [precedential]. [TTABlogged here].

Abandonment: Petitioner adidas relied on the lack of any sales of caps and the minimal sales of shirts during the four-year period from the issuance of the registrations (November 21, 2006) to the date of filing of the petition for cancellation (November 23, 2010). The Church's receipt journal listed the sale of one hoodie in 2007, one crew shirt in 2019, and no caps. However, the Church's executive pastor, secretary, and treasurer, Mr. Mason, testified that the Church offered shirts and hats continuously during that time period except for 2008, when the bookstore was closed for renovation. In addition, the Church launched its online bookstore in December 2010 and it sold three shirts that month and a number of shirts and caps thereafter.

Petitioner addidas pointed to the presumption of abandonment that arises under Section 45 if a mark has not been used during a three-year period. However, the Board found no three-year period in which the marks were not used for shirts. Nothing in the record suggested that the sale of two shirts was not bona fide use of the marks in trade. As the CAFC ruled, there is no de minimis test for "use in commerce," and so the sale of two shirts was sufficient use to defeat the abandonment claim as to shirts.

As to caps, the lack of sales for four years did establish a prima facie case of abandonment, but the Church rebutted that presumption because any nonuse that occurred in 2008 was excusable due to the closure of the bookstore for renovation. Moreover, the evidence of increasing sales beginning in December 2010, when the Church launched its online bookstore, was evidence of the Church's intent to resume use during the nonuse period.

Therefore the Board dismissed adidas's abandonment claims.

Failure to Function: adidas argued that "add a zero" is a commonly-used fundraising slogan that the Church used as an informational message to its members in connection with its building fund. Therefore relevant consumers would not perceive the phrase as a source indicator for the Church's goods. Numerous new articles, webpages, and blog posts demonstrated that "add a zero" is widely used in connection with fundraising. Mr. Mason testified that the phrase was used in support of the Church's building campaign.

The Board found adidas's evidence sufficient to establish that "the slogan 'add a zero' is informational and would be understood as such by the relevant public."

Respondent is not entitled to exclusively appropriate the slogan to itself and thereby attempt to prevent competitors from using it to promote the sale of their own caps and shirts. It has been noted that “as a matter of competitive policy, it should be close to impossible for one competitor to achieve exclusive rights” in common phrases or slogans. 1 J.THOMAS MCCARTHY,MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 7:23 (5th ed. September 2019).

Therefore, the Board granted the petition for cancellation of the Church's registration for the standard character mark ADD A ZERO.

As to the word+design mark, however, the Board found cancellation of the registration to be inappropriate. "Notwithstanding the informational nature of the wording, the specific combination, placement and shading of the wording and design elements of this special form mark create an integrated whole with a single and distinct three-dimensional commercial impression; that is, the mark is unitary."

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TTABlog comment:  adidas's applicaton to register ADIZERO was blocked by the Church's registratons, which is why adidas petitioned for cancellation. What do you think adidas might do next?

Text Copyright John L. Welch 2019.

CAFC Affirms TTAB: BEAST MODE SOCCER Confusable with BEAST MODE for Clothing

In a nonprecedential opinion, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the TTAB's March 9, 2018 decision (here) finding a likelihood of confusion between appellant's mark BEAST MODE SOCCER for "T-shirts" and "Sporting goods and equipment for soccer training, namely, balls" [SOCCER disclaimed], in view of the registered mark BEAST MODE, for "t-shirts" and "Men's, women's and children's clothing, namely, shirts, sweatshirts; headwear, namely, hats, caps." Appellant David Copeland-Smith challenged the Board's findings with respect to the first and sixth du Pont factors - the similarity of the marks and the strength of the cited mark - but the court found that substantial evidence supported the Board's factual findings and it concluded that the Board had properly affirmed the Section 2(d) refusal to register. In re David Copeland-Smith, 2019 USPQ2d 433159 (Fed. Cir. 2019) [not precedential].

First du Pont Factor: Copeland-Smith argued that the Board failed to consider the mark BEAT MODE SOCCER as a whole. He claimed that the word SOCCER distinguishes his mark from the cited mark and that the Board arbitrarily diminished the impact of the word SOCCER.

The court, however, determined that the Board properly accorded less weight to the descriptive or generic term "soccer," properly considered the mark as a whole, and properly found that the term BEAST MODE is dominant and makes the marks similar in sound, appearance, meaning, and commercial impression.

Copeland-Smith contended that commercial impression of the cited mark is associated with its owner, former NFL player Marshawn Lynch, and that his own mark "contains absolutely no association with soccer, because [Lynch] is not associated with soccer, only football." The Board considered those arguments and found them unpersuasive, since BEAST MODE has many meanings not associated with Lynch, and since the cited registration has no restriction to football-themed clothing and no limitations on channels of trade.

Substantial evidence supports the Board’s findings that, looking at the mark as a whole, the generic word SOCCER is the only thing that distinguishes Copeland-Smith’s mark from Lynch’s,and that generic word is dwarfed by the term BEAST MODE. Thus, having considered Copeland-Smith’s arguments with respect to DuPont factor 1, we conclude that substantial evidence supports the Board’s finding that the marks are sufficiently similar to cause a likelihood of confusion

Sixth du Pont Factor: This factor considers the number and nature of similar marks on similar goods, which bears on the strength or weakness of the cited mark. Copeland-Smith pointed to a definition of "beast mode" from the Urban Dictionary (a slang term for a high level of effort or energy in exercise or sport), 31 third-party uses, three third-party registrations, and 14 third party applications for marks that include the term "Beast Mode."

The court noted that the Board closely considered this evidence and found that much of it had limited probative value. The third-party applications had no probative value for determining actual third-party use. None of the registrations identified articles of clothing. Likewise, the third-party usage evidence concerned goods and services other than clothing. Ten of the third-party websites did have some relevance, but this volume of evidence "'does not appear to approach the quantum of evidence of use' in prior case in which marks were found to be weak."

The Board parsed this evidence carefully, and the its finding was supported by substantial evidence.

Weighing of the Factors: The Board found that du Pont factors 1, 2, 3, 4, 6, 7, and 8 weighed in favor of a finding of likelihood of confusion. The court upheld the Board's conclusion.

We have considered Copeland-Smith’s challenges regarding DuPont factors 1 and 6, and we conclude that the Board’s findings were supported by substantial evidence. We also credit the Board’s factual findings regarding the other five DuPont factors, which Copeland-Smith has not challenged in this appeal. Like the Board, we conclude based on the DuPont factors that Copeland-Smith’s mark is likely to cause confusion with Lynch’s mark.

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TTABlog comment:  Some unsophisticated consumers may think that the "football" Lynch played was soccer.

Text Copyright John L. Welch 2019.

TTABlog Test: Are CRUCIBLE COOKWARE and LE CREUSET Confusable under the Doctrine of Foreign Equivalents?

[This guest post was written by Amanda B. Slade, an associate in the Trademark Group at Wolf, Greenfield & Sacks, P.C.]. The USPTO refused registration of the mark CRUCIBLE COOKWARE (standard characters, COOKWARE disclaimed) for a variety of cooking utensils and kitchenware, including trivets, pot lids, whisks, frying pans, and cast iron skillets, on the ground of a likelihood of confusion with several registered LE CREUSET marks for, inter alia, kitchen utensils, trivets, whisks, pots, and frying pans. On appeal, the Board found that the goods, channels of trade, and classes of consumers were identical and that LE CREUSET is a famous mark. The pivotal issue was whether the marks are similar in meaning under the doctrine of foreign equivalents. The Board decided the issue unanimously. How do you think this came out? In re A.F. Djurberg AB, Serial No. 87/677,215 (Nov. 8, 2019) [not precedential] (Opinion by Judge Michael B. Adlin).

The cited registrations contain the translation statement: “The English translation of ‘LE CREUSET’ in the mark is ‘THE CRUCIBLE’,” triggering the doctrine of foreign equivalents inquiry. The doctrine may apply when assessing a mark’s “appearance, sound, connotation, and commercial impression.” In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973).

Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine similarity of connotation with English word marks. The doctrine is applied when it is likely that “the ordinary American purchaser would ‘stop and translate [the term] into its English equivalent.” The “ordinary American purchaser” in this context refers to the ordinary American purchaser who is knowledgeable in the foreign language. 

In re Thomas, 79 U.S.P.Q.2d 1021, 1024 (TTAB 2006) (citing Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377 (Fed. Cir. 2005)).

Preliminarily, the Board found that the doctrine of foreign equivalents may apply, since “more than 1.3 million people in the United States speak French at home.” The Examining Attorney’s data from the French Embassy’s Cultural Services section (based on U.S. Census data) was sufficient to support this conclusion. Therefore, because an “appreciable segment” of the U.S. population speaks French,  the applicability of the doctrine of foreign equivalents was critical to the likelihood of confusion analysis.

The Board then concluded that ordinary American purchasers who speak French would “stop and translate” LE CREUSET, which translates to “the crucible” or “the melting pot.” In English, “crucible” is defined as “a vessel of very refractory material (such as porcelain) used for melting and calcining a substance that requires a high degree of heat.” Accordingly, the Board stated that LE CREUSET’s “single, clear, specific, literal and direct meaning” and the mark’s correct French spelling weighed in favor of applying the doctrine.

Interestingly, the Board did not factor into its analysis the reverse translation of "crucible" (from  English to French) or the fact that “crucible” has multiple meanings. In In re Perez, the Board considered the Spanish translation of an English word in affirming a refusal to register EL GALLO in light of a prior registration for ROOSTER, both for produce. See U.S.P.Q.2d 1075, 1076 (TTAB 1991). The fact that “in the dictionary listing for ‘rooster’, only one Spanish word is given, namely ‘gallo’” supported the doctrine’s application. See id. Moreover, translation evidence showing a term’s varied meaning typically indicates the doctrine of foreign equivalents should not be applied. See generally T.M.E.P. § 1207.01(b)(vi)(B).

Here, Google translate provides a second French translation of “crucible” as “l' épreuve,” which can mean “test, trial, proof, examination, print, [or] crucible.” This translation ties to “crucible’s” alternative English definition: “a severe test.” See Crucible, MERRIAM-WEBSTER DICTIONARY (last visited Nov. 11, 2019), https://www.merriam-webster.com/dictionary/crucible. The Board’s failure to address these dual meanings is likely due to the fact that one of the definitions directly relates to the goods in question. Hence, the subject decision highlights that applying the doctrine of foreign equivalents is context dependent: demonstrating that a term has multiple meanings may not be sufficient to avoid the doctrine’s application where one of the definitions has a clear connection to the underlying goods or services.

Conclusion: “The marks’ identical connotation is likely to result in consumer confusion, notwithstanding the marks’ differences in appearance and sound . . . . The refusal to register Applicant’s mark under Section 2(d) of the Trademark Act is affirmed.”

Read comments and post your comment here.

TTABlog comment: How did you do? [If you can't take the heat, get out of the crucible - ed.]


Text Copyright Amanda B. Slade 2019.

Webcast of NUSL Panel Discussion: "The Original Sin of Trademark Law: Failure to Function" (Nov. 5, 2019)

Here is a link to the webcast recording of the November 5th panel discussion at Northeastern Law School, entitled "The Original Sin of Trademark Law: Failure to Function." Thank you to my co-panelists, to the attendees, and to Northeastern Law School and the Boston Intellectual Property Patent Law Society (BPLA) for hosting this event.

Montgomery, McKinnon, Jarvis, Welch, Roberts

What can we learn from the recent increase (see https://ttablog.blogspot.com/2019/08/2019-precedential-opinions.html) in failure-to-function (FTF) refusals at the USPTO? For example, in recent months the TTAB has affirmed refusals to register words (e.g., SCOOP for ice cream), phrases (e.g., QUESTION OF THE DAY for a trivia website) and even a design (graphic tool for use with disk jockey software.) Is the USPTO falling back on a core principle to encompass a variety of vulnerabilities (such as mere descriptiveness, non-use as a mark, unacceptable specimens)? Is there a goal simply to make it more difficult to register dubious marks?  What are the strategic implications for applicants and challengers? This panel will cover a range of views and insights from trademark lawyers, brand owners and academia.

Moderator:

• Susan Barbieri Montgomery, Executive Professor of Law and Business, Northeastern University

Panelists:

• Daniel McKinnon, Head of Global Brand Protection and Senior Counsel, New Balance
• Josh Jarvis, Partner and Co-Chair, Trademark, Copyright & Unfair Competition Practice, Foley Hoag LLP
• John L. Welch, Author, TTABlog and Counsel, Wolf Greenfield & Sacks PC
• Alexandra Roberts, Associate Professor, University of New Hampshire School of Law

Moderator:

• Susan Barbieri Montgomery, Executive Professor of Law and Business, Northeastern University

Read comments and post your comment here.

Text Copyright John L. Welch 2019.

WYHA? TTAB Affirms Refusal of PREVENTION CHAIN for Swine Disease Prevention Services: Specimens Failed to Show Use as a Mark

The Board affirmed a refusal to register the purported mark PREVENTION CHAIN for educational and informational services concerning "the treatment and management of infections in swine and other animals," finding that Applicant Boehringer's specimens failed to show use of the term as a source indicator for the services. "At best, the mark identifies a process or concept of swine disease prevention." Would You Have Appealed? In re Boehringer Ingelheim Vetmedica, Inc., Serial No. 87072333 (November 6, 2019) [not precedential] (Opinion by Judge David Mermelstein).

During examination, the USPTO must analyze the specimens of use to determine whether the purported mark would be perceived as a source indicator. A term that is used only to designate a process or method is not a trademark for services.

Applicant Boehringer's two specimens were website pages. The first consisted of the beginning of an article entitled, "Prevention Chain™ Approach for Systematic Disease Control in Large Farms," which discussed the "Infection/Prevention Chain Concept" and "Infection and Prevention Chain™ thinking." The second specimen was a chart showing steps in the "Production Chain," the "Infection Chain," and the "Prevention Chain." [excerpt below].

The Board agreed with Examining Attorney Tejbir Singh that "the proposed mark PREVENTION CHAIN identifies only a concept of disease prevention among swine."

The first specimen variously identifies PREVENTION CHAIN as an “approach,” a “concept,” and a manner of “thinking” about disease prevention. Nowhere, however, is PREVENTION CHAIN used to identify either educational services or providing veterinary information. Likewise, the second specimen uses PREVENTION CHAIN as the title of a process of swine disease prevention, but not in connection with any of the identified services. While Applicant’s specimens might themselves be characterized as educational or informational materials, they do not evidence use of PREVENTION CHAIN to advertise or sell the educational or informational services identified in the application. It is not enough that the proposed mark merely appear on educational or informational materials. The mark must identify those services and indicate their source.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Trademarks 101: just because you coin a term and put it on your website or in an article doesn't mean it's a source indicator.  If it were your money, would you have appealed this one?

Text Copyright John L. Welch 2019.