Marijuana Vaporizers Are (Still) Illegal Under CSA: TTAB Affirms Two “JUJU” Refusals

[This guest post was written by Kira-Khanh McCarthy, a rising-3L at University of Notre Dame Law School.] The Board affirmed refusals to register JUJU RX and JUJU HYBRID for smokeless marijuana vaporizers, under Sections 1 and 45 of the Trademark Act. Applicant, Canopy Growth Corporation, received an assignment of the entire interest and goodwill in the applications from JJ206 LLC, and this opinion closely resembles that of a prior precedential decision for similar marks on identical goods. In re JJ206, LLC, 120 USPQ2d 1568 (TTAB 2016) [TTABlogged here]. “Applicant’s arguments in these cases mirror the unsuccessful arguments its predecessor made in the appeals of other applications identifying essentially the same goods, for which [the Board] affirmed unlawfulness refusals.” Here, the Board held that the identified goods are illegal under the federal Controlled Substances Act (CSA) and therefore any use of the marks in commerce would be unlawful. In re Canopy Growth Corporation by assignment from JJ206, LLC, Serial Nos. 86475885 & 86475899 (July 16, 2019) [not precedential] (Opinion by Judge Cynthia C. Lynch).

As in JJ206, in an intent-to-use application, “where the identified goods are illegal under the [CSA], the applicant cannot use its mark in lawful commerce, and ‘it is a legal impossibility’ for the applicant to have the requisite bona fide intent to use the mark.” 120 USPQ2d at 1569 (quoting John W. Carson Found. V. Toilets.com, Inc., 94 USPQ2d 1942 (TTAB 2010)). Under the CSA, it is unlawful to sell, offer for sale, or transport in interstate commerce drug paraphernalia, defined as “any equipment . . . primarily intended or designed for use in . . . ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under [the CSA].” 21 U.S.C. § 863.

According to the CSA, marijuana is defined as “all parts of the plant Cannabis sativa L. . . .” and it is a “controlled substance that is unlawful to possess.” Examining Attorney Robert J. Struck and the Board agreed that Applicant’s mention of “cannabis” in the identification of its goods refers to marijuana. Consequently, the identified goods fall within the definition of illegal drug paraphernalia under the CSA.

Applicant made four assertions. First, similar to JJ206, Applicant “relie[d] on state marijuana laws to claim that its intended use is lawful.” The Board again rejected this argument: “[T]he federal CSA is conclusive on the lawfulness issue for purposes of obtaining a federal trademark registration.” JJ206, 120 USPQ2d at 1571; In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016). Second, Canopy Growth also tried to draw parallels between its product and “other oral vaporizing apparatuses, like e-cigarettes,” but the Board found the comparison unsound because the identified goods are in violation of the CSA while devices such as e-cigarettes are not. Third, Applicant contended “that because the jurisdictions where it does business ‘comply with federal directives such as the Cole Memo,’ its goods should be considered lawful.” But, similar to JJ206, the Board found that the Cole Memo “does not and cannot override the CSA.,” The Board further took judicial notice that the Cole Memo was rescinded on January 4, 2018, “mooting any of Applicant’s arguments based on [its] enforcement prioritization.” Lastly, Canopy Growth restated policy arguments from JJ206, which the Board again rejected because they “fail[ed] to recognize that lawful use of a mark in commerce is a prerequisite to federal registration.”

And so, dismissing all of Applicant’s arguments, the Board found that, because the identified goods constitute illegal drug paraphernalia under the CSA, intended use of the applied-for marks is unlawful and cannot provide a basis for federal registration. The refusals to register were therefore affirmed.

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TTABlog comment: Any doubt that this is a WYHA?

Text Copyright Kira-Khanh McCarthy 2019.

TTAB Reverses Section 2(d) Refusal: Goods Unrelated and Consumers Sophisticated

On the average of twice per month, the Board reverses a Section 2(d) refusal. Here, the Board found the mark CMC for "Non-metallic underground columns for land stabilization and reinforcement that are fabricated and installed on site" not likely to cause confusion with the identical mark CMC for a "full line of metals in sheet, rod, bar, angle, round, beam, castellated beam, cellular beam, flat beam, joist, strip, tube, plate, billet, square, and wire form” and “retail store services and distributorships featuring … construction products, and accessories." For once, a "sophisticated purchaser" argument carried some weight in the Board's du Pont analysis. In re Soletanche Freyssinet, Serial No. 79194724 (July 16, 2019) [not precedential] (Opinion by Judge Albert Zervas).

The Goods/Services: The examining attorney maintained that applicant's and registrant's goods are "pieces of construction equipment for building and/or support and thus, likely to be encountered by the same purchasers and found in the same channels of trade." The Board observed, however, that there may be hundreds of "pieces of construction equipment" used for construction projects and this alone is not a basis to find the goods related.

Next, the examining attorney argued that registrant's goods could be metal rods or beams for land stabilization and reinforcement, but the Board found no evidence in support of this "theoretical representation." 

The examining attorney also argued that the the goods have complementary uses and are purchased by the same purchasers. However, the examining attorney ignored the specific limitation that applicant's goods are fabricated and installed onsite, and thus they are not used for general construction of structures. Conversely, there was no evidence that registrant's goods are used in connection with land stabilization and reinforcement. Moreover, just because goods are within or support the same structure does not mean they are related.

As to registrant's retail store services, applicant's goods are not the type of goods that are sold in retail stores, and there was no evidence that they are so sold.

Purchasing Conditions: The Board found that applicant's goods, by their very nature, are necessarily selected with care by purchasers familiar with the source of the products. Buyers either know their specific products needs or obtain them through consultation with applicant; in either case, they would exercise significant care. And so this du Pont factor favored applicant.

Conclusion: The marks are identical, but the purchasers are sophisticated and the examining attorney has not established that the goods are related. Therefore the Board reversed the refusal to register.

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TTABlog comment: By my calculation, the Board reverses one out of 10 Section 2(d) refusals that are appealed.

Text Copyright John L. Welch 2019.

TTABlog Test: Are Packaged Sprits and Rum Related to Restaurant Services Under Section 2(d)?

The USPTO refused registration of the mark MAUNA KEA RUM COMPANY for "packaged spirits; packaged rum" [RUM COMPANY disclaimed], finding a likelihood of confusion with the registered word+design mark shown immediately below for restaurant services. Applicant contended on appeal that, as to the marks, the common term "Mauna Kea" has geographical significance and therefore is weak, and as to the goods/services, that restaurants do not serve bottled spirits to patrons. How do you think this came out? In re Mauna Kea Rum Company, LLC, Serial No. 87475384 (June 27, 2019) [not precedential] (Opinion by Judge Jonathan Hudis).

The Marks: The Board found the term MAUNA KEA to be the dominant element of the applied-for mark and the cited mark. It is the first term in applicant's mark and therefore the most prominent, particularly in light of the disclaimer of RUM COMPANY, and it is the term used in calling for registrant's services. The flower design in the cited mark is of little relevance since applicant is seeking a standard character registration

The Board recognized that MAUNA KEA has geographical significance, referring to a mountain in Hawaii, but even weak marks are entitled to protection against registration of a similar mark for related goods or services.

The first du Pont factor weighed in favor a finding of likely confusion.

The Goods and Services: Applicant contended that, because the relatedness of the involved goods and services is not evident, the examining attorney must show "something more" than the mere fact that the goods and services may be used together. The Board observed that the CAFC has held that "something more" must be shown to prove the relatedness of alcoholic beverages and restaurant services, In re Coors Brewing Co., 68 USPQ2d 1059, 1063 (Fed. Cir. 2003), and it "stands to reason" that the "something more" standard should also apply to packaged rum and spirits vis-a-vis restaurants services.

Examining Attorney Jacquelyn A. Jones submitted four articles noting the growing trend of restaurant-distilleries selling packaged spirits under the same name or brand as the restaurant portion of the business. She also provided website excerpts from 12 restaurant-distilleries that sell packaged spirits. The Board found this evidence sufficient to satisfy the "something more" requirement.

Thus the record evidence belied applicant's assertion that "even distillery restaurants do not serve bottled spirits to patrons." The evidence showed that at least one trade channel for applicant's products is through restaurants. And so the Board concluded that the second and third du Pont factors weighed against applicant.

Third-Party Marks: Applicant argued that MAUNA KEA is registered for bakery goods, which are items sold in restaurants, and so there is no reason to give the cited mark a broad scope of protection beyond restaurant services. The Board, however, noted the lack of evidence that the bakery goods mark is actually in use, and further that a single registration for goods unrelated to those at issue does not weaken the cited mark. Moreover, prior decisions by examining attorneys in other cases do not bind the Board. The Board concluded that this sixth du Pont factor was neutral.

Customer Sophistication: Applicant contended that customers for the involved goods and services are "sophisticated and discriminating" and make careful purchasing decisions. No evidence supported that argument, however, and in any event the Board must consider both the discriminating and the ordinary customers for the involved goods and services.

Conclusion: Balancing the relevant du Pont factors, the Board found confusion likely and it affirmed the Section 2(d) refusal.

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TTABlog comment: So if you are trying to clear a mark for packaged liquor, be sure to check restaurant names.

Text Copyright John L. Welch 2019.

TTABlog Test: Is This Electronic Brochure an Acceptable Specimen for Billboard Monitoring Services?

[This guest post was written by Kira-Khanh McCarthy, a rising-3L at University of Notre Dame Law School.] The USPTO refused registration of the marks SMARTLINK (in standard characters) and SMARTLINK SYSTEMS (in the design form shown immediately below), for billboard monitoring services, deeming Applicant Outdoorlink’s specimens of use unacceptable. Outdoorlink provides consumers with scheduled photo capturing of roadside billboard advertisements. As specimens, it submitted a webpage printout and subsequently an electronic brochure as a substitute specimen. The Examining Attorney rejected both. She argued that “the [substitute] specimen shows use in connection with a system and software that allows customers themselves to monitor billboards, but it does not show that applicant actually provides monitoring services.” Applicant asserted that “its software captures and sends images of billboards, which ‘is part of a “monitoring” service that is provided to the user.’” How do you think this came out? In re Outdoorlink, Inc., Serial Nos. 85935503 and 85935508 (July 8, 2019) [not precedential] (Opinion by Judge Cynthia C. Lynch).

Under Section 45 of the Trademark Act, a service mark is used in commerce “when it is used or displayed in the sale or advertising of services . . . .” “Relevant to Applicant’s specimens in this case, the webpage [or e-brochure] must show the mark used or displayed as a service mark in advertising services. Showing only the mark with no reference to, or association with, the services does not show service mark usage.” The service mark must therefore “sufficiently create[] in the minds of purchasers an association between the mark[s]” and the applied-for services.

In this case, the Examining Attorney maintained that Applicant’s specimens show use in relation to a camera system and software, but not monitoring services. Specifically, she referenced language in the e-brochure specimen (shown immediately below) that implies that Applicant provides “cameras, hardware products, and software applications and not an actual service.” Outdoorlink, contrarily, pointed to references in the e-brochure that emphasized that it, not its customers, provides images of billboards in accordance with the definition of monitoring (defined as “to watch, keep track of, or check usu. [sic] for a special purpose”). Furthermore, Applicant claimed that its customers pay a monthly subscription, making it clear that it is indeed providing a service, not merely a product.

(click on picture for larger view)
The Board compared the current issue to In re JobDiva, Inc. [TTABlogged here]. In that case, the CAFC vacated the Board’s decision which held that JobDiva’s mark was not in use for personnel placement and recruitment services. JobDiva supplied software that performed these services. Although the Board found that the website screenshots provided by JobDiva contained no reference to the services “other than supplying [Applicant’s] software,” the Federal Circuit disagreed, finding that “[t]he proper question is whether [Applicant] . . . performed personnel placement and recruitment services and whether consumers would associate [Applicant’s] registered marks with personnel placement and recruitment services . . . .”

In light of that decision, the Board considered whether Outdoorlink’s e-brochure specimen “sufficiently refers to the recited services of monitoring roadside billboards for business purposes and associates the mark with such services.” The Board found that consumers would associate Outdoorlink’s marks with the respective services: (1) The e-brochure features the marks with wording that specifies how Applicant’s services work; (2) Consumers have the ability to customize when pictures of their advertisements will be taken and sent; (3) The specimen references that the images will be delivered through “Smartlink Servers” “further amplify[ing] the consumer perception of the marks associated with monitoring services;” and (4) Customers frequently interact with Applicant and would be aware that the images are stored on Applicant’s server and made available through its app or website. Finally, the Board noted that the Examining Attorney did not demonstrate that Outdoorlink’s services merely accompanied the camera system and software. “While Applicant’s specimen shows the involvement of some equipment such as cameras, and refers at one point to a ‘proven product,’ the specimen does not give the impression that the marks only – or even primarily – apply to cameras, hardware, software or other goods.” And so, the refusal to register was reversed.


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TTABlog comment: Is this a WYHRR? (Would You Have Refused Registration?).

Text Copyright Kira-Khanh McCarthy and John L. Welch 2019.

Precedential No. 18: TTAB Affirms Trifusal of SCOOP for Ice Cream: Mere Descriptiveness, Failure-to-Function, and Unacceptable Specimen

Here's the scoop: In a 49-page opinion, the Board affirmed a trifusal (TM) of the mark SCOOP for “frozen confections and ice cream promoted and distributed by a mascot named SCOOP at product promotions and distributions of the frozen confections and ice cream,” finding that the term is merely descriptive of ice cream and lacks acquired distinctiveness, that it fails to function as a source indicator, and that Applicant Yarnell's specimens of use were unacceptable. In re Yarnell Ice Cream, LLC, Serial No. 86824279 (July 9, 2019) [precedential] (Opinion by Judge Christopher Larkin).

The Identification of Goods: Applicant Yarnell claimed that Examining Attorney Melissa Sturman had engaged in "goods mutilation" because she considered the involved goods to be "ice cream," ignoring the addition language, "as promoted or distributed by a mascot named SCOOP, at product promotions and distribution of Applicant's ice cream and frozen confection." The Board therefore first determined the import of that additional language, finding guidance in the CAFC's decision in In re i.am.symbolic, 123 U.S.P.Q.2d 1744 (Fed. Cir. 2017). There, the applicant included in its identification of various goods the phrase "associated with William Adams, professionally known as 'will.i.am.'" The CAFC agreed with the Board that:

the will.i.am restriction does not: (1) limit the goods “with respect to either trade channels or class of purchasers”; (2) “alter the nature of the goods identified”; or (3) “represent that the goods will be marketed in any particular, limited way, through any particular, limited trade channels, or to any particular class of customers.”

Similarly, Yarnell's additional language "at most" specifies that the goods will be marketed in a particular way, but it does not alter the nature of the goods in any meaningful way, or restrict the nature or type of the goods, or limited the classes of consumers. The Board acknowledged that the identification of goods specifies that SCOOP is the name of applicant's mascot, but Yarnell sought to register the mark for "frozen confections and ice cream," not live performances by a mascot. Accordingly, the Board "must assess the registrability of Applicant's proposed mark for 'frozen confections and ice cream' consumed by members of the general public."

Mere Descriptiveness: In light of a dictionary definition of "scoop," third-party usage, media references, and webpages discussing how to scoop ice cream, the Board concluded that the word means "a serving portion of ice cream and frozen confections." The word "scoop" has been disclaimed in a number of third-party registrations for marks for ice cream or frozen confections. Applicant Yarnell itself uses the word "scoop," or its pictorial equivalent, to identify the serving portion of its goods.

On the basis of the record as a whole, including Applicant’s and third parties’ uses of “scoop,” we find that the applied-for mark describes “a feature, quality, or characteristic of the goods . . . for which registration is sought,” N.C. Lottery, 123 USPQ2d at 1709, namely, that they are traditionally provided in a “scoop”-sized serving portion.

The Board rejected Yarnell's contention that SCOOP is a double entendre that also refers to "information of [sic] Yarnell products" or a "news scoop," and therefore does not merely describe the goods. The Board pointed out, however, that the second meaning of a double entendre must be "apparent upon seeing the mark in connection with the goods." In re Ethnic Home Lifestyles Corp., 708 U.S.P.Q.2d 1156, 1159 (T.T.A.B. 2003). Yarnell provided no evidence that the interpretation of the mark as a "new scoop" is one "that the public would make fairly readily" because it is "readily apparent from the mark itself." In re Calphalon Corp., 122 U.S.P.Q.2d 1153, 1163 (T.T.A.B. 2017). Here, in the context of Yarnell's goods as identified in the application, "the applied-for mark describes a serving size, not hot news."

The Board therefore found that SCOOP is merely descriptive of the goods under Section 2(e)(1).

Lack of Acquired Distinctiveness: The CAFC has long held that the more descriptive a term, the more evidence of acquired distinctiveness is required under Section 2(f). The Board found that the applied-for mark has "little or no source-identifying capacity" for the identified goods. Yarnell itself advertises that its mascot will be "giving away free scoops of ice cream." Accordingly, the Board agreed with the examining attorney that SCOOP is "highly descriptive of ice cream and frozen confections."

Yarnell argued that its five years of use of the mark entitles it to a presumption of acquired distinctiveness under Section 2(f), but the Board pointed out that Section 2(f) provides no such presumption, but rather that the USPTO may accept five years of substantially exclusive and continuous use as prima facie evidence of acquired distinctiveness. It is not required to do so. See In re La. Fish Fry Prods., Ltd., 116 U.S.P.Q.2d 1262, 1265 (Fed. Cir. 2015). "The USPTO and the Board have discretion to find such a use claim insufficient, especially where, as here, the mark at issue is highly descriptive. Id."

Moreover, there was little evidence of Yarnell's use of SCOOP to identify the source of its ice cream at the public appearances of the mascot, and its mascot wore the SCOOP name tag only "at some events." There were no details as to the number of people viewing the events, and no evidence that the mascot or the mark has been featured in advertising. The Board concluded that Yarnell had failed to provide sufficient evidence to prove acquired distinctiveness, and so the Board rejected its Section 2(f) claim.

Inadequate Specimens: In Yarnell's specimens of use, the applied-for mark appeared only on the shirt worn by its human or cartoon mascot. Yarnell argued that this usage constituted a display associated with the goods. See Section 45.

As to the human mascot, Yarnell cited no case in which a live person was found to be a display associated with goods, and the Board found none. Yarnell acknowledged that typical displays are point-of-sale materials like shelf-talkers or banners. See TMEP Section 904.03(g). The Board did not "foreclose the possibility that a live personal appearance at an event or in a venue can qualify as a 'display associated' with the goods within the meaning of Section 45," but it found that neither the live mascot or the cartoon version so qualified.

An important factor in determining whether a specimen is an acceptable display is whether the mark "is displayed in such a way that the customer can easily associated the mark with the goods." In re Kohr Bros., Inc., 121 U.S.P.Q.2d 1793, 1795 (T.T.A.B. 2017) (quoting In re Osterberg, 83 U.S.P.Q.2d 1220, 1223 (T.T.A.B. 2007). The Board found Yarnell's use of the proposed mark to be "not particularly noticeable, much less eye-catching" when it appears on its trucks, and when used on the mascot's uniform it is likely to be perceived as the name of the mascot rather than as a source-identified for the goods." Moreover, several of the specimens do not appear to be "calculated to consummate a sale," as required for an acceptable point-of-sale display. (quoting In re U.S. Tsubaki, Inc., 109 U.S.P.Q.2d 2002, 2003 (T.T.A.B. 2014)).

The Board concluded that Yarnell's specimens of use were inadequate and it affirmed the refusal to register under Sections 1 and 45.

Failure-to-Function: The examining attorney maintained that because consumers are accustomed to seeing the term SCOOP as indicating the size of an ice cream serving, it fails to function as a source indicator because it would be perceived as merely conveying an informational message.The Board, relying on its findings as to the highly descriptive nature of SCOOPS and the nature of Yarnell's specimens of use, agreed with the examining attorney: "SCOOP also fails to function as a mark for the identified goods because, at most, it merely informs purchasers of the serving size of the goods."

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TTABlog comment: Yet another decision in the steady flow of failure-to-function and inadequate specimen cases. Is this a WYHA?

BTW: The TTABlogger claims trademark rights in the term "trifusal" for blogging services in the field of trademarks.

Text Copyright John L. Welch 2019.

CAFC Affirms TTAB: "ARTISAN NY & Design" Confusable With "ARTESANO NEW YORK CITY" for Clothing

In an eight-page opinion, the CAFC upheld the Board's decision (here) affirming a Section 2(d) refusal to register the word+design mark shown below for various clothing items, finding it likely to cause confusion with the registered mark ARTESANO NEW YORK CITY for overlapping clothing items. On appeal, Applicant JS ADL argued that the cited mark is weak and not entitled to a normal scope of protection, and that in assessing the similarity of the marks the Board put too much weight on the similarity between the words ARTISAN and ARTESANO. The appellate court, however, ruled that substantial evidenced supported the Board's factual findings and it saw no error in the Board's conclusion that confusion is likely. In re JS ADL, LLC, Appeal No. 2018-2017 (Fed. Cir. July 11, 2019) [not precedential].

Likelihood of confusion is a question of law, which the CAFC reviews de novo, whereas the Board's factual findings underlying that conclusion are reviewed for substantial evidence. Applicant JS ADL challenged the Board's findings as to the strength of the cited mark and the similarity of the marks, as well as the Board's ultimate holding of likelihood of confusion.

The court agreed with the Board that JS ADL failed to prove that the cited mark is weak. JS ADL presented evidence only that variants of ARTISAN and NY are suggestive or descriptive, but the weakness of individual components does not prove that the combination is weak. Moreover, JS ADL's evidence of third-party registrations that included variants of ARTISAN or NEW YORK was appropriately given little weight, especially in view of the lack of evidence that these marks were in actual use.

As to the marks, the Board did not place undue weight on the words ARTISAN and ARTESANO. Although marks must be considered in their entireties, there is nothing improper in give the more dominant features greater weight. The Board made express findings regarding other features of the marks, noting that NY and NEW YORK CITY are routinely disclaimed as geographically descriptive terms and finding that the marks both suggest clothing created by tradespersons in the City or State of New York. The Board was also entitled to find that the stitch design in JS ADL's mark is suggestive of clothing and contributes little to the commercial impression created by the mark.

Nor did the Board err when it analyzed the dominant portion of JS ADL's mark, the word ARTISAN. The Board reasonably found that the terms ARTISAN and ARTESANO are highly similar in appearance and sound. The minor distinctions in spelling and pronunciation urged by JS ADL do not show that the Board wrongly analyzed the overall commercial impression of the marks.

The CAFC therefore affirmed the Board's decision.

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TTABlog comment: Is this a double WYHA?

Text Copyright John L. Welch 2019.

CAFC Affirms TTAB: Louis Vuitton's APOGÉE for Perfume Confusable with APHOGEE for Hair Products

In a nonprecedential ruling, the CAFC has affirmed the Board's decision [TTABlogged here] finding Louis Vuitton Malletier's mark APOGÉE for perfume confusable with the registered mark APHOGEE for hair care preparations. During prosecution of its application, Louis Vuitton attempted to sidestep the refusal by narrowing its identified channels of trade to "perfumery products for non-professional use and sold only within Louis Vuitton Malletier stores, on Louis Vuitton Malletier's website and within Louis Vuitton Malletier's store-within-store partnerships with high-end retail stores within Louis Vuitton Malletier's exclusive distributor network." The CAFC concluded that substantial evidence supported the Board's finding that the channels of trade overlap. In re Louis Vuitton Malletier, Appeal No. 2018-1651 (Fed. Cir. July 5, 2019) [nonprecedential].

Only the first four du Pont factors were at issue. As to the first factor, the similarity of dissimilarity of the marks, the court found that substantial evidence supported the Board's findings that the two marks are similar in appearance, sound, and commercial impression. Louis Vuitton argued that consumers will translate the French word APOGÉE into "height," but the court observed that "nothing suggest that a consumer would not similarly translate APHOGEE into 'height' as a variant of APOGÉE."

As to the second factor, the relatedness of the goods, again substantial evidence supported the Board's finding that the goods are related. The evidence showed that perfume and hair products are complementary goods that may emanate from the same source. [E.g., Calvin Klein sells "Aqua Essenziale" in perfume and shampoo form.]

Turning to the third factor, the channels of trade, substantial evidence supported the Board's finding that the channels of trade are related. The APHOGEE registration includes no restrictions on trade channels, and thus it is presumed that its goods travel in all normal channels of trade, including traditional brick-and-mortar stores, online department stores, and high-end retail stores. Although Louis Vuitton's application is restricted as to trade channels, it does include sales in high-end stores. Moreover, extensive evidence showed that high-end stores sell a mix of perfumery and hair care products like those at issue here.

Louis Vuitton argued that its goods would not "generally" be sold within a high-end store, and its application provides for sales only through store-within-store partnerships with high-end stores. The court observed, however, that the term "store-within-store partnership" is not defined, and Louis Vuitton conceded at oral argument that "the only record evidence describing such partnerships is a picture of a display wall and an article on a pop-up store in the common space of a mall in California." Moreover, Louis Vuitton admitted at oral argument that it has a partnership with Henri Bendel in New York that "precludes interpreting a store-within-store partnership as an independent pop-up store within the general space of a mall."

Without any evidence suggesting that a “store-within-store partnership[] with high-end retail stores” differs in any significant respect from a high-end retail store, we reject the contention that a “high-end retail store” is not a channel of trade appropriate for goods covered by the applied-for mark as well as the registered mark.

As to the fourth du Pont factor, the conditions of sale, substantial evidence supported the Board's finding that this factor was neutral. The court noted that Luis Vuitton's perfume sells for $350 per 200ml bottle, while the registrants hair products retail for about $11 per 16 ounce bottle. However, neither the application at issue nor the cited registration restrict purchasers or pricing, and “nothing prevents Louis Vuitton from developing a low-cost version of its product, or registrant from developing a high-end version of its products."

Because substantial evidence supported the Board’s findings for each factor, the court affirmed the Board’s conclusion that confusion is likely.

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TTABlog comment: The court's discussion of channels of trade is not the clearest.

Text Copyright John L. Welch 2019.

“QUESTION OF THE DAY” Fails to Function as a Mark for a Trivia Website, Says TTAB

[This guest post was written by Kira-Khanh McCarthy, a rising-3L at University of Notre Dame Law School.] The Board affirmed a refusal to register the phrase QUESTION OF THE DAY, finding that it fails to function as a mark for trivia website services. The analysis closely resembled that of an earlier decision when the same applicant, Trivia Today, sought to register the marks OOPS! WRONG ANSWER. and CONGRATULATIONS! YOU ARE CORRECT! In re Trivia Today, LLC, 2019 WL 931661 (TTAB 2019) [TTABlogged here]. Similar to the above-mentioned case, here Applicant asserted that its specimen “prominently display[s] and emphasiz[es] QUESTION OF THE DAY with a pink banner/background” so that consumers know the trivia emails come from a single source. Rejecting this argument, the Board found that "because the applied-for mark is merely informational  . . . and because it is commonly used by multiple sources, it does not identify and distinguish Applicant’s services from those of others." In re Trivia Today, LLC, Serial No. 86745391 (June 28, 2019) [not precedential] (Opinion by Judge David K. Heasley).

According to the Lanham Act, to function as a service mark, the applied-for mark must “identify and distinguish the services of one person . . . from the services of others and . . . indicate the source of the services, even if that source is unknown.” 15 U.S.C. § 1127. In determining whether a phrase can function as a service mark, the inquiry lies in “how it would be perceived by the relevant public.” In re Tracfone Wireless, Inc., 2019 WL 2511861, at *2, 2019 U.S.P.Q.2d 222983 (TTAB 2019). The Board will accordingly assess the specimen of use and evidence of record showing the phrase as used.

Applicant submitted a sample trivia question, pictured above, as its specimen. It contended that because the display emphasizes QUESTION OF THE DAY in a pink banner, consumers “obviously know that the trivia email services are from the same single source.” Examining Attorney Lauren E. Burke maintained that the phrase “QUESTION OF THE DAY” is used “to convey information to consumers that a question is being presented, but does not convey any information about the entity providing the question.” The Board agreed with the Examining Attorney, observing in particular the positioning of the proposed mark in the specimen: “The phrase’s position immediately above the daily trivia question to which it alludes, and the multiple-choice answers appearing immediately under the trivia question, reinforces the perception that its function is information, rather than source-indicating.” In re Tracfone Wireless, 2019 WL 2511861, at *2 (citing In re Keep a Breast Found., 129 USPQ2d 1869, 1881 (TTAB 2017)).

Furthermore, in light of the Examining Attorney’s third-party evidence, the Board pointed out that QUESTION OF THE DAY is a commonly used phrase. “Common use of a phrase by third parties merely for the purpose of imparting information makes it less likely that the public will perceive it as identifying a single commercial source and less likely that it will be recognized by purchasers as a trademark.” In re Wal-Mart, Inc., 129 USPQ2d 1148, 1153 (TTAB 2019). Citing both In re Volvo Cars of N. Am. and McCarthy on Trademarks, the Board determined that the phrase must remain in the public domain for use by competitors. And so, the refusal to register was affirmed.

Practice Tip: Before discussing the merits of the appeal, the Board also addressed an evidentiary issue. As evidence in its request for reconsideration, Applicant submitted a list of registered and applied-for marks containing the phrase “OF THE DAY.” However, per TBMP § 1208.02, the Board agreed withe the examining attorney that a mere listing of applications and registrations does not make them part of the record. "To make third party registrations part of the record, Applicant should have submitted copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal."

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KKM comment: For all who may be wondering, the correct answer to the trivia question is Vatican City.

Text Copyright Kira-Khanh McCarthy 2019.

New York IP Law Association: Hot Topics in IP Law - July 18, 2019

The Trademark Law and Practice Committee of the New York Intellectual Property Law Association (NYIPLA) will host a half-day program entitled "Hot Topics in IP Law" on Thursday, July 18th, from 12 noon to 5 PM at the Princeton Club of New York, 15 W. 43rd Street, New York, New York 10036. The agenda is set out below. Registration here.

Keynote Address
Lesley Fair, Senior Attorney, Federal Trade Commission’s Bureau of Consumer Protection, will speak on the state of the law and good practice with regard to advertising claims.

TTAB Update
Hon. Mark A. Thurman, Deputy Chief Administrative Trademark Judge, Trademark Trial and Appeal Board, will summarize important new substantive and procedural developments at the TTAB.

Trademarks In Bankruptcy: The Supreme Court Finally Speaks
Panelists: Stuart Gordon, Rivkin Radler LLP and Richard Levy, Jr., Pryor Cashman LLP
Moderator: Scott Greenberg, Culhane Meadows, PLLC
The panel will discuss the Supreme Court’s recent decision in the Mission Product Holdings case, dealing with the survivability of trademark license agreements within bankruptcy proceedings, including the decision’s impact on legal practice and the licensing industry.

Recent Developments—Ethics In Trademark Practice
Panelists: Tamar Bessinger and Emily Weiss, Fross Zelnick Lehrman & Zissu, P.C.
The panel will discuss ethics issues in intellectual property practice.

Great White North Cheat Sheet: What You Need To Know About The Amended Canadian Trademarks Act
Stuart C. Ash, Gowling WLG, will break down the most important changes in Canada’s sweeping new trademark legislation.

Generic But Incontestable? A Trademark Paradox
Ronald D. Coleman, Mandelbaum Salsburg P.C., will cover recent case decisions that have reached conflicting outcomes regarding challenges to the validity of an incontestably registered trademark on grounds of genericness.

TTABlog comment: The TTABlogger will be in attendance!

Text Copyright John L. Welch 2019.

TTAB Sustains Opposition to HOLLYWOOD HOTEL on Non-Ownership Ground

The Board sustained an opposition to registration of HOLLYWOOD HOTEL for hotel and bar services, finding that the applicant was not the owner of the mark at the time it filed its application to register. In a 37-page opinion that thoroughly discusses the facts and applicable law, the Board deemed the application void ab initio.  Hollywood Casino LLC v. Chateau Celeste, Inc., Opposition No. 91203686 (July 2, 2019) [not precedential] (Opinion by Judge Christopher Larkin).

An application filed by a person or entity that is not the owner of the mark is a void application. The owner is the one that controls the nature and quality of the goods and services sold under the mark. Opposer had the burden to prove that applicant was not the owner at the time of filing of the opposed application.

The Board's review of relevant CAFC and Board precedent indicated that "under certain circumstances, ownership of a mark may pass from one entity to another without an assignment, and that one company may become the owner of a mark by controlling its use by a related company." Here, however, the evidence did not show that applicant became the owner of the mark in any of the was discussed in the case law.

The Board found that the facts here "closely resemble" those in Great Seats Ltd v. Great Seats, Inc., 84 USPQ2d 1235 (TTAB 2007) [TTABlogged here]. When the opposed application was filed, there were two separate companies in existence, one individual was an officer and controlling shareholder of both, and both had a common address. However, those points of commonality do not suffice to make the companies related under Section 5 of the Lanham Act. Applicant would have to show that it, not the individual, controlled the nature and quality of the services rendered by Zarco Hotels, the corporation actually using the mark.

The record shows that Zarco Hotels began use of the HOLLYWOOD HOTEL mark in 1994 and owned it by virtue of that use; that Zarco Hotels has always held itself out to, and been identified by, the public as the owner and operator of the hotel offering services under that mark; that Zarco Hotels never assigned the mark to Applicant; and that Applicant never acquired its ownership as a related company or otherwise. When the opposed application was filed, Zarco Hotels and Applicant "constituted separate legal entities, and the application was filed by the wrong one." Great Seats, 84 USPQ2d at 1241.

And so the Board sustained the opposition.

Read comments and post your comment here.

TTABlog comment: In December 2015, the Board denied opposer's summary judgment in a precedential ruling (TTABlogged here). The Board rejected an attempt by Applicant Chateau Celeste's president to change his testimony regarding licensing and control of the mark was rejected by the Board. Nonetheless, opposer's evidence established only that Applicant was not the owner of the physical property known as the Hollywood Hotel at the time the subject application to register was filed.

Text Copyright John L. Welch 2019.

TTABlog Test: Is MAIN LINE REFRESH Confusable With MAIN LINE HEALTH or MAIN LINE PLASTIC SURGERY?

The USPTO refused registration of the mark MAIN LINE REFRESH (standard characters) for “Medical consultations; Medical services; Cosmetic and plastic surgery” [MAIN LINE disclaimed], finding it likely to cause confusion with the registered mark MAIN LINE HEALTH (in standard characters and in the design form shown below, with HEALTH disclaimed) for, inter alia, medical services, and the registered mark MAIN LINE PLASTIC SURGERY & Design for cosmetic and plastic surgery services. The involved services are, in part, identical and so the Board presumed that they travel in the same trade channels to the same classes of consumers. But what about the marks? How do you think this came out? In re Morgenstern Center for Orbital and Facial Plastic Surgery Inc., Serial No. 87267085 (July 2, 2019)[not precedential] (Opinion by Judge Frances Wolfson).

Since the services overlap, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. The Board observed that the appearance of "MAIN LINE" as the leading
element in all of the marks "lends prominence to the wording and heightens the likelihood of confusion." The Board also found that "MAIN LINE" is the dominant term in the cited marks, since "HEALTH" and "PLASTIC SURGERY" are generic for or merely descriptive of the services, and since the literal portion of the marks is the part that consumers are likely to recall and to use in calling for the services. The phrase "MAIN LINE" dominates the word+design marks and the designs themselves are unpronounceable.

Applicant contended that "Main Line" is geographically descriptive and the marks are distinguishable by the remaining portions of each mark. The examining attorney provided evidence showing that "Main Line" is a generally known location in Wayne, Pennsylvania (the western suburbs of Pennsylvania). Applicant and the registrants all list their locations as Bryn Mawr, Pennsylvania, which is within the Main Line region.

Applicant submitted Yellow Page listings for some 110 medical clinics, physicians, and surgeons that use "Main Line" in their trade names.

Although telephone directory listings of names, addresses and phone numbers by themselves are insufficient to establish actual use, here the entries tell us a little about the nature of each business, and some include consumer reviews. Thus, the listings have probative value in illustrating that “Main Line” is a term widely used in connection with cosmetic and plastic surgery and related medical  services.

In light of this widespread use of the term “Main Line” in connection with medical services, the Board found the term to be weak when used in connection with medical services, and it therefore concluded that the involved marks are distinguishable based on the additional elements in each.

[A]lthough the literal elements in the marks (HEALTH and PLASTIC SURGERY) are themselves quite weak, two of the cited marks combine an arbitrary or suggestive design feature with the wording to create unique marks that are more dissimilar than similar to Applicant’s mark MAIN LINE REFRESH. As to the cited word mark MAIN LINE HEALTH, it too is distinguishable as a whole from Applicant’s mark on the basis of the differing terms “HEALTH” and “REFRESH,” resulting in different overall commercial impressions.

The Board also noted that the cited registrations have co-existed with each other, and therefore the owners thereof "appear to believe that confusion is not likely."

And so the Board reversed the refusal.


Read comments and post your comment here.

TTABlog comment: Do you think every Philadelphian got this right?

Text Copyright John L. Welch 2019.