Friday, November 21, 2014

Title of Book Is Registrable With Acquired Distinctiveness, Says TTAB

The Board ruled that the title of a single book or a single DVD is properly refused registration under Section 2(e)(1) on the ground of mere descriptiveness, but is registrable under Section 2(f). Here, however, applicant failed to prove acquired distinctiveness, and so the Section 2(e)(1) refusal was affirmed. In re King Productions, Inc., Serial No. 76703458 (November 19, 2014) [not precedential].

The Examining Attorney refused registration under Sections 1, 2, and 45 of the Trademark Act on the ground that the title of a work fails to function as a trademark. Applicant for some reason focused on the issue of whether the specimens of use were acceptable, but that was not the basis for the refusal.

The Board observed that, although the registration of a title has often been refused registration under Sections 1, 2, and 45, the proper basis for refusal is Section 2(e)(1) because the title describes the work. A title is capable of registration if it is used for a second work (i.e., as the title of a series), and courts have  protected the title of a single work once secondary meaning has been established. So a title is capable of functioning as a trademark.

Of course, a Section 2(e)(1) refusal can be overcome by a showing of acquired distinctiveness under Section 2(f). And so the question here became whether applicant's mark had acquired distinctiveness.

Applicant had a "significant burden" under Section 2(f) because a title is highly descriptive of a book or DVD. Was there "sufficient public exposure of ROCK YOUR BODY in such a manner that consumers would view ROCK YOUR BODY not merely as a title of the book and DVD, but as  a trademark indicating source?"

Applicant sold only 884 sets of the book and DVD. Its website showed the mark used with apparel and workshops, which would convey to consumers that ROCK YOUR BODY plays a role beyond that of a title, but the evidence failed to show the extend of exposure of the website (e.g., the number of hits or visitors). The Board found that evidence insufficient to establish acquired distinctiveness, and so it affirmed the refusal under Section 2(e)(1).

Read comments and post your comment here

TTABlog note: Was the applicant aware that the Board would turn this appeal into a hunt for acquired distinctiveness?

Text Copyright John L. Welch 2014.

Thursday, November 20, 2014

TTAB No Brainer? "GO PRO OR GO HOME" Confusable With "GO PRO" for Clothing

Applicant Go Pro Workouts trotted out several of the most frequent losing TTAB arguments in this Section 2(d) opposition to registration of GO PRO OR GO HOME for various clothing items. The Board not surprisingly found the mark likely to cause confusion with the registered mark GO PRO for overlapping clothing items. Gary Hale v. Go Pro Workouts, LLC, Opposition No. 91211810 (November 18, 2014) [not precedential].

The parties agreed to Accelerated Case Resolution (ACR), which resulted in a faster, although perhaps less expensive, defeat for applicant.

Because the goods overlap, the Board presumed that they travel through the same, normal channels of trade to the same classes of consumers. Applicant argued that opposer sells only clothing, while opposer's goods are ancillary to its sports training services. So, applicant maintained, its customers are athletes who train with applicant. That argument, the Board found, had little merit because the Board must make its determination based on the goods identified in the opposed application, regardless of what other goods and services applicant offers. Here there were no limitations on the channels of trade or classes of consumers.

Applicant further contended that its goods are purchased with an enhanced degree of care because a visitor to its website must register for a workout or nutritional plan before he or she can purchase any clothing item. The Board again pointed out there was corresponding limitation in applicant's identification of goods, and even if there were there was no evidence that purchasers of opposer Hale's products exercise extra care, and they may be confused by the marks.

As to the marks, applicant attempted to distinguish them by pointing to the dietary supplements and sports training services that it provides in connection with its mark, as if that significantly change the meaning of the mark. The Board again observed that applicant's supplements and training services are not part of this proceeding.

The Board found the marks to be similar in sound, appearance, meaning, and commercial impression. Notably, opposer's GO PRO s mark is contained in its entirety in applicant's mark and appears as the first part of the latter mark.

Applicant's assertion that GO PRO is in common use in the marketplace was not supported by the evidence. Applicant pointed to some three years of concurrent use of the involved marks with no evidence of actual confusion, but the Board pooh-poohed that argument. Three years is a relatively short period of time, and the fact that both parties' goods are sold on the Internet does not establish that there has been a meaningful opportunity for confusion to occur. Moreover, evidence of actual confusion is notoriously difficult to obtain, and the test is likelihood of confusion, not actual confusion.

To the extent that applicant argued that opposer's use of his mark was minimal and therefore confusion was unlikely, the Board noted that the rights flowing from a federal registration "do not vary with the size of the registrants."

The Board concluded that, even if GO PRO is a weak mark, it is entitled to protection, since "likelihood of confusion is to be avoided, as much between 'weak' marks as between 'strong' marks, or as between a 'weak' and 'strong' mark."

Read comments and post your comment here

TTABlog note: In short, the Board told applicant to GO HOME.

Text Copyright John L. Welch 2014.

Wednesday, November 19, 2014

ALI Webinar Dec 4th: "Trademarks, Trade Dress and False Advertising: Recent Developments for Business and IP Lawyers"

Yours truly, aka the TTABlogger, will team up again with Prof. Kenneth B. Germain in an ALI Webinar entitled "Trademarks, Trade Dress and False Advertising: Recent Developments for Business and IP Lawyers." When? Thursday, December 4th, 1:00 - 2:30 PM, Eastern Standard Time. Registration here.

Prof. Ken Germain

This practical program is specifically designed for business and IP lawyers who need to stay current with the recent trends in trademark, trade dress, and false advertising laws. Join us as our expert faculty provides a concise update and review of the latest cases from the United States Supreme Court, United States Courts of Appeals (including the Federal Circuit) and the U.S. Patent and Trademark Office Trademark Trial and Appeal Board.

Topics include:
  • recent federal registration decisions on issues such as dilution-by-blurring, fraud, proof of lack-of-bona fide intent, disparagement, and specimens of use.
  • possible resuscitation of a dead “generic term”
  • likelihood of confusion, distinctiveness of marks, sponsored links
  • dilution vs. confusion
  • what's new in trade dress/product design and functionality
  • injunctive relief, whether trademark causes deserve a presumption of irreparable harm
  • monetary remedies: damages and attorney's fees under Lanham Act sec 35(a)
  • consumer surveys: still in vogue or under suspicion
  • insurance coverage for 'advertising injury' claims

Test Your TTAB Judge-Ability on these Three Section 2(d) Appeals

I once heard a TTAB judge state that the outcomes of most Section 2(d) likelihood of confusion cases can be predicted just by looking at the marks and the identified goods/services, without more. Try your adjudicatory skills on these three recently decided appeals, keeping in mind that, by my estimate, about 85% of Section 2(d) refusals are affirmed by the Board. [Answer in first comment].

In re Wildgame Innovations, LLC, Serial No. 85651686 (November 17, 2014) [not precedential]. [Refusal to register the mark FLEXTONE GAME CALLS DIRTY LIL’ HEN for "hunting game calls" [GAME CALLS and HEN disclaimed] in view of the registered mark DIRTY LITTLE DOE, also for hunting game calls [DOE disclaimed].

In re SuperShuttle International, Inc., Serial No. 85765129 (November 14, 2014) [not precedential]. [Refusal to register MyECar, in standard character form, for "transportation services, namely, airport ground, charter, and door-to-door transportation services of passengers by motor vehicles, and not car leasing or reservation services for vehicle rental," in view of the mark ECAR, registered for vehicle leasing, rental, and reservations services, and for automobile dealership services.

In re Brar Business Enterprises, Serial No. 85641460 (November 13, 2014) [not precedential]. [Refusal to register SLICE OF ITALY for "bar services, restaurant services, restaurants featuring home delivery; take-out restaurant services" [ITALY disclaimed], in view of the registered mark A LITTLE SLICE OF ITALY for pizza.]

Read comments and post your comment here.

TTABlog query:  How did you do? Any WYHAs here?

Text Copyright John L. Welch 2014.

Tuesday, November 18, 2014

Despite Lack of Documentation, Applicant Had Bona Fide Intent to Use "HARD CANDY" for Luggage, Says TTAB

In this dispute over the mark HARD CANDY, opposer claimed that the opposed application was void ab initio because applicant lacked a bona fide intent to use the mark in connection with the identified goods (leather goods) when the application was filed (March 27, 2009). Opposer relied on applicant's "pattern" of filing several dozen Section 1(b) applications for various goods, only to abandon them by failing to submit a Statement of Use. And it pointed to applicant's lack of pre-filing documentation that pertained to leather goods. The Board found, nonetheless, that applicant did have an intention to expand its line of products to leather goods. Hard Candy Cases, LLC v. Hard Candy, LLC, Opposition No. 91195328 (November 13, 2014) [not precedential].

Applicant relied on a pre-filing email to a potential licensing representative, in which it stated its goal of extending HARD CANDY into a "lifestyle brand." The only products specifically mentioned, however, were cosmetics. Applicant's witness testified that applicant had some communications with the potential representative in which handbags were discussed. Several post-filing emails did refer to leather goods, including one that concerned a meeting with Walmart, to whom applicant had sold cosmetic products since 2008.

The Board found that applicant's documentation and testimony were consistent and supportive. It was applicant's intention in talking to potential licensees and representatives to build a lifestyle brand. "In fact, ... the crux of Applicant's efforts was expansion into those product lines which Walmart would agree to purchase and sell, whether leather goods, jewelry, watches or perhaps something else."

Applicant ultimately succeeded in expanding its use of HARD CANDY into 'other categories such as sunglasses, cosmetic bags and apparel,' ... and that would not have happened unless Applicant intended it to happen.

Although applicant's intention to sell leather goods hinged on Walmart's agreement to buy them, that still qualified as a bona fide intention to use the mark. Moreover, post-filing documentation is admissible to corroborate the existence of a pre-filing bona fide intent.

Although applicant intention may have been focused more on expansion generally than on leather goods specifically, "that does not mean that Applicant's intent to use its mark on leather goods (and other products) was not bona fide." Given applicant's experience and demonstrated ability to expand its product line, its expansion into leather goods is entirely credible.

Finally, as to the dozens of abandoned trademark applications, the Board recognized that this may, in some circumstances, evidence a lack of bona fide intent. However, intent to use applications are often abandoned, for a variety of legitimate reasons. Here, it is undisputed that applicant did expand its business line from cosmetics to other products, and at the time of filing it intended to expand into leather goods.

And so the Board dismissed the opposition.

Read comments and post your comment here

TTABlog note: Reminds one of the ROLL-X case, in which the applicant had a bona fide intent to use the mark on x-ray tables, although it lacked pre-filing documentation. There, the filing of the ROLL-X application was consistent with an extension of applicant's product line, and applicant had the capacity to manufacture and market the goods. [TTABlogged here].

Text Copyright John L. Welch 2014.

Monday, November 17, 2014

TTAB Test: Is "THE EGG" Merely Descriptive of Facial Toning Devices?

The USPTO refused to register the mark THE EGG for "facial toning machines for cosmetic use" on the ground of mere descriptiveness under Section 2(e)(1). Examining Attorney Paul Moreno pointed out that applicant's machines or devices are egg-shaped, but applicant maintained that this is not a significant feature of the products. How do you think this came out? In re Flageoli Classic Limited, LLC, Serial No. 85811333 (October 30, 2014) [not precedential].

The Examining Attorney provided a (rather circular) definition of the word egg: "Something having the ovoid shape of an egg." He also submitted webpages showing that applicant and others refer to components of their facial toning machines as being "egg-shaped." in particular, applicant stated that its "handheld units store inside egg-shaped divider" and that "this device includes two hand-held, egg-shaped probes that are gently pressed to the skin."

The Board observed that "a word which describes the form or shape of a product falls under the proscription of Section 2(e)(1) of the Trademark Act." For example: V-RING for directional antennas, the primary components of which were shaped in the form of a "v" and a "ring;" CHAMBERED PIPE for an exhaust system consisting of a series of small tuning chambers; MATCHBOX SERIES for toys sold in boxes having the size and appearance of matchboxes; BEEFLAKES for frozen, thinly sliced beef; TOOBS for bathroom and kitchen fixtures in the shape of tubes; STRAIGHTS for straight legged jeans; WING NUT for for electrical connectors having winged projections for leverage while screwing; V-FILE for a card filing device in which the opening between the cards was in the form of a "v;" TTABLOG for blogs in the shape of the TTAB. [I made up that last one - ed.].

Of course, the word THE does not add any source-identifying significance to EGG. The Board therefore concluded that THE EGG is merely descriptive of the identified goods under Section 2(e)(1) because it "immediately and directly informs prospective purchasers and users of the shape or form of Applicant’s goods."


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TTABlog query: Over-easy? Or egg on your face?

Text Copyright John L. Welch 2014.

Friday, November 14, 2014

TTAB Test: Are "TOKYO MOTORS" And "TOKYO RODS" Confusable For Retail Auto Parts Services?

David Becklean applied to register the mark TOKYO MOTORS for "business services, namely, retail store services featuring automobile parts, accessories, and aftermarket parts" [MOTORS disclaimed], but the USPTO refused registration, finding the mark likely to cause confusion with the registered mark TOKYO RODS for "online retail and wholesale store services featuring Japanese automobile parts and accessories; advertising of Japanese automobiles and parts for Japanese automobiles for others via the Internet; providing Japanese automotive information via a global computer network relating to vehicles for sale and vehicle parts and accessories" [RODS disclaimed]. How would you rule? In re Becklean, Serial No. 85748394 (November 13, 2014) [not precedential].

The Board agreed with Examining Attorney Charles L. Jenkins, Jr., that TOKYO is the dominant part of each mark, and that consumers will focus on that word as the first part of each mark. The Board did not buy applicant's arguments that the two marks create very different commercial impressions: "while 'rods' may conjure the term hotrod' or a vehicle modified for speed, the mark TOKYO RODS remains suggestive of a retail automotive parts and accessories source, albeit one with an emphasis on Japanese cars and performance. Likewise, Applicant’s TOKYO MOTORS will be understood by consumers as indicating a retail source for Japanese automobile parts and accessories."

And so the Board found the marks to be very similar in sound, appearance, and meaning.

Applicant "curiously" argued that "the relevant field is crowded with registered marks utilizing the term 'MOTORS' for retail services related to sales of automobiles and automobile parts and accessories." That argument actually supported the refusal, but the Board already decided that TOKYO is the dominant part of each mark.

Applicant's services are broad enough to encompass those of the cited registration. Moreover, third-party use-based registrations showed that both "retail" and "online retail" store services featuring automotive parts and accessories may be offered under the same mark.

The Board therefore affirmed the refusal.

Read comments and post your comment here

TTABlog note: Well, how did you do?

Text Copyright John L. Welch 2014.

Thursday, November 13, 2014

TTAB Test: Feast Your Eyes on this 2(d) Refusal of BLUE SANTA STEW HOLIDAY FEAST

The USPTO refused registration of the word + design mark shown below, in view of the the registered mark HOLIDAY FEAST, both for pet foods. Are the marks different enough for reversal? How would you rule? In re Blue Buffalo Company, Ltd., Serial No. 85935706 (October 31, 2014) [not precedential].

Because the goods overlap, the Board must presume that they travel through the same channels of trade to the same classes of consumers. The goods are inexpensive items that may be purchased on impulse. Of course, since the goods are legally identical, a lesser degree of similarity between the marks is needed to support a likelihood of confusion refusal.

Applicant argued that that any similarity between the mark is of minimal importance because HOLIDAY FEAST is descriptive of the goods. [What holidays do pets celebrate? - ed.] The Board pointed out, however, that the cited mark is registered on the Principal Register without any disclaimer, and so "any argument that the registered mark is descriptive is improper and unavailing in the context of an ex parte proceeding such as this." Under Section 7(b) of the Trademark Act, the cited mark is presumed to be distinctive.

Moreover, there was no evidence of third-party use of HOLIDAY FEAST in connection with pet food. And so this is not a case similar to Knight Textile, where common use of the term ESSENTIALS, even though registered, was sufficient to distinguish the mark NORTON MCNAUGHTON ESSENTIALS for women’s clothing. [TTABlogged here].

To the extent that HOLIDAY FEAST is suggestive of "a grandiose meal for their pets or pet food that has a seasonal flavoring," the same suggestive meaning occurs with both marks and serves to strengthen the similarity between them.

The Board found that the commercial impressions of the two marks were not different enough to avoid a likelihood of confusion:

Both marks engender a holiday-themed fancy meal, albeit in a playful manner inasmuch as it is for pet food. Applicant’s mark accentuates the Christmas season with the wording SANTA STEW that is prominently displayed in larger letters in the center of the mark. This is further enhanced with Christmas holiday design elements, e.g., a Santa cap, a wreath-like border, etc. However, Christmas is but one holiday, and we can envision consumers familiar with Registrant’s HOLIDAY FEAST mark for pet food, encountering Applicant’s mark on pet food, and mistakenly believing that the latter is merely a Christmas-themed variation (“Santa Stew”) in a line of Registrant’s HOLIDAY FEAST pet food.

Finally, the addition of applicant's house mark did not avoid a likelihood of confusion. The Board pointed out that there is no per se rule that addition of a house mark will suffice to distinguish two marks, and in fact "such addition may actually be an aggravation of the likelihood of confusion as opposed to an aid in distinguishing the marks so as to avoid source confusion."

The Board therefore affirmed the refusal to register.

Read comments and post your comment here

TTABlog note: So how did you do?

Text Copyright John L. Welch 2014.

Wednesday, November 12, 2014


Joseph Barton applied to register BARTON FAMILY WINERY for "wine" [WINERY disclaimed], but the USPTO refused registration under Section 2(d) on the ground of likelihood of confusion with the registered mark THOMAS BARTON for "alcoholic beverages, namely, wines." Applicant avoided a Section 2(e)(4) refusal by seeking registration under Section 2(f), but what about the 2(d) refusal? How would you rule? In re Barton, Serial No. 85554813 (November 7, 2014) [not precedential].

Because the goods are identical, the Board must presume that they travel through the same distribution channels to the same classes of consumers. Moreover, when the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

Because both marks include the the designation BARTON, the marks are similar in appearance and pronunciation. In each mark, BARTON will be perceived as a surname, "perhaps identifying the same wine-producing family."

[C]onsumers familiar with Registrant’s wines are likely to believe that Registrant is now producing a line of wines bearing only its surname, and that Registrant is designating its own 'Barton family' as the maker of the wines produced under the mark BARTON FAMILY WINERY. The fact that the cited mark also includes the name THOMAS does not sufficiently distinguish it from Applicant’s mark.

Moreover, BARTON is the first word in applicant's mark, and it is not improper to give more weight to the name BARTON since it is not uncommon for wine producers to use the phrase FAMILY WINERY. "Here, the mark BARTON FAMILY WINERY could well be interpreted as a broad reference to wines emanating from THOMAS BARTON as part of the Registrant’s Barton family wine business."

Applicant submitted six third-party registrations for marks containing the word BARTON, but only two were based on use. The other four were registered under Section 66(a) with no use requirement, and they had no probative value. As to the two used-based registrations, owned by the same entity (one for whiskey and the other for whiskey and distilled spirits, excluding wine), "they are not evidence that the marks are in use on a commercial scale or that the public has become familiar with them." In short, these prior registration do not the show "a crowded field or that Registrant’s mark is weak."

The Board concluded that confusion is likely and it affirmed the refusal.

Read comments and post your comment here

TTABlog note: Well, how did you do?

Text Copyright John L. Welch 2014.

Tuesday, November 11, 2014

TTAB Test: Are "RightChoice" and "ClearChoice" Confusingly Similar for Dental Implant Services?

Clear Choice Holdings opposed an application to register the mark RightChoice, in standard character form, for "dental implant services," claiming a likelihood of confusion with the registered marks CLEARCHOICE  DENTAL IMPLANTS, CLEARCHOICE DENTAL IMPLANT CENTER, and ClearChoice and Star Design, also for dental implant services [DENTAL IMPLANTS and DENTAL IMPLANT CENTER disclaimed]. Are the marks too close? How do you think this came out? ClearChoice Holdings, LLC v. Dale D. Goldschlag, D.D.S., P.C., Opposition No. 91191371 (October 17, 2014) [not precedential].

Of course, when the services are identical, the Board must presume that the channels of trade and the classes of consumers are the same. Moreover, in such a case, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

The Board found the dominant element of Opposer's marks to be the term "Clear Choice." The shooting star in opposer's design mark, if anything, "highlights the term 'Clear Choice' by dotting the letter 'I' and, thus, indicating that by selecting opposer, the 'Clear Choice' in dental implant services, the consumer is making the correct choice." [Huh? The shooting star design does all that? - ed.].

In appearance and sound, the Board concluded, RightChoice and ClearChoice or CLEARCHOICE are similar: "each prefaces the word 'Choice' with a one-syllable word that describes the selection or 'choice' that the customer should make as wise (i.e., a 'Clear' choice or the 'Right' choice.)" In short, the words "Right" and "Clear" have the same meaning and provide the same commercial impression, especially when used with "Choice."

The Board concluded that the similarities between the marks outweigh their differences, and that the marks are similar in their entireties with regard to appearance, sound, connotation, and commercial impression.

Although applicant provided no evidence regarding purchaser care or sophistication, even assuming a high degree of care, the Board found this du Pont factor to be outweighed by the others. Moreover, even careful consumers may be confused when similar marks are used in connection with identical services.

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

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TTABlog comment: Well, how did you do? Note this prior Board decision in the REAL CHOICE versus CLEARCHOICE case [TTABlogged here].

Text Copyright John L. Welch 2014.

Monday, November 10, 2014

WYHA? "CURBSIDE EXPRESS" Merely Descriptive of Grocery Delivery Services, Says TTAB

As a rule of thumb, if an opinion in a Section 2(e)(1) appeal is seven pages or less, the chances are very high that it's a "WYHA?" In this one, the USPTO refused registration of the mark CURBSIDE EXPRESS, deeming it merely descriptive of "retail and on-line grocery store services featuring home delivery." The Board's opinion is just over six pages. Looking at the record evidence, would you have appealed? In re Phoenix Intangibles Holding Company, Serial No. 85849629 (November 7, 2014) [not precedential].

Examining Attorney Marilyn D. Izzi relied on website evidence referring to "curbside + liftgate" and "curbside delivery" as services in which items are transported to the curb of the customer, and the customer is then responsible for unloading the item from the back of the truck and carrying it into his or her home or office. Alternatively, the item is unloaded by the deliverer and deposited on the curb.

A dictionary definition of "express" not surprisingly indicated that it means "to send something using a service that will deliver it very quickly." And third-party registrations with disclaimers of "express" confirmed that descriptive meaning.

Considering the mark as a whole, the Board had no doubt that "the mark would immediately convey to customers the information that a feature of Applicant’s service is the availability of a speedy delivery of the purchased groceries to the customer’s home (without the promise that they would actually be carried directly into the home)."

And so the Board affirmed the refusal.

Read comments and post your comment here

TTABlog note: Well, would you have?

Text Copyright John L. Welch 2014.