Wednesday, June 19, 2019

Precedential No. 14: Cross-Examination of US-Based Testimony Declarant Must be by Oral Deposition, Not Written Questions, Says TTAB

In this cancellation proceeding involving a registration for the mark CAPTAIN CANNABIS for comic books, the Board faced the question of whether a witness located in the United States, whose testimony was submitted by affidavit or declaration under Rule 2.123(a)(1), may be cross-examined by written questions. No, said the Board, only by oral cross-examination. Laverne J. Andrusiek v. Cosmic Crusaders LLC, Cancellation No. 92064830 (June 14, 2019) [precedential] (Order by Interlocutory Attorney Yong Oh (Richard) Kim)).

Petitioner Andrusiek moved for leave to take the cross-examination of two witnesses, both located in the United States, on written questions. It pointed to the expense and inconvenience of oral depositions because the witnesses were in Tampa, Florida, while petitioner is located in the State of Washington.

In opposition to the motion, Respondent Cosmic Crusaders pointed to Rules 2.123, and 2.124, which do not provide for such cross-examination. The Trademark Rules allow a party to take the testimony by affidavit or declaration under Rule 2.120, by oral examination under Rule 2.123, or by written questions under Rule 2.124. [If the witness is located abroad, the testimony may be taken either by affidavit or declaration or by written questions, unless the parties stipulate to oral examination or the Board grants a motion for good cause].

Where, as here, testimony is presented by affidavit or declaration, Trademark Rules 2.123(a)(1) and (a)(2) make clear that the methods of cross-examination permitted depend on where the witness is located. “[I]f such witness is within the jurisdiction of the United States,” any adverse party may “take ... oral cross-examination of that witness ....” Trademark Rule 2.123(a)(1). “[I]f such witness is outside the jurisdiction of the United States,” any adverse party may “conduct cross-examination by written questions as provided in § 2.124 ....” Id.

The Board noted that the Rules do not require that oral cross-examination be conducted in person. It may be conducted by telephone or other remote means either through stipulation or on motion for good cause. See Fed. R. Civ. P. 30(b)(4). "[N]othing in the language of Rule 30 requires a showing of necessity, financial inability or other hardship to obtain an order to proceed via telephone, ... leave to take telephonic depositions [is] liberally granted in appropriate cases." Hewlett-Packard Co. v. Healthcare Pers. Inc., 21 USPQ2d 1552, 1553 (TTAB 1991). The Board construed Petitioner Andrusiek's motion as, alternatively, seeking leave to take oral cross-examination by telephone or other remote means.

Since it is Respondent who has insisted on oral cross-examination, the Board sees neither harm nor prejudice to Respondent in permitting Petitioner to conduct such cross-examination by remote means should Petitioner elect to do so.

Finally, the Board pointed out that respondent will bear the expense of producing the witness, but petitioner must schedule and bear the expense of the court reporter. See Barclays Capital Inc. v. Tiger Lily Ventures Ltd., 24 USPQ2d 1160, 1166-67 (TTAB 2017). Redirect or recross must be taken at the same time as the cross-examination.

Read comments and post your comment here.

TTABlog comment: Depositions by written questions are pretty useless anyway

Text Copyright John L. Welch 2019.

Tuesday, June 18, 2019

WYHA? IZAKAYA KOPAN RAMEN & Design Confusable with KOPAN for Restaurant Services, Says TTAB

The Board affirmed a refusal to register the mark IZAKAYA KOPAN RAMEN & Design (shown below) for restaurant services [IZAYAKA and RAMEN disclaimed], finding a likelihood of confusion with the registered mark KOPAN for, inter alia, restaurant services. Applicant Chang argued that the parties' respective restaurants differ dramatically in style of food and atmosphere, but the Board pooh-poohed that argument, observing that there are no such limitations in the application or cited registration. In re Chang, Serial No. 87503270 (June 12, 2019) [not precedential] (Opinion by Judge Lorelei Ritchie].

Since the involved services are "legally identical," they are presumed to travel in the same channels of trade to the same class of consumers. These factors "weigh heavily in favor of a finding of  likelihood of confusion."

Applicant stated that the word KOPAN has no significance, nor is it a term of art in the relevant field. He noted that KOPAN does not have a relevant translation in Korean, Chinese, or Japanese. His appeal brief stated that "it has recently come to light that KOPAN as used in the mark is a fanciful term that combines the words Korea and Japan." He offered no evidence in support of that assertion, and in any case his argument that KOPAN is "fanciful" was of no help to his cause. Even if KOPAN is suggestive, it is still inherently distinctive and protectable.

As to the marks, Applicant Chang conceded that "izayaka" means "gastropub" in Japanese and that "ramen" is descriptive of the food items on the menu. Both words were disclaimed by Chang, and therefore these two words have less significance in the Section 2(d) analysis. The design of a bowl with chopsticks merely emphasizes the literal element in the applied-for mark. Since the mark in the cited registration is in standard character form, it could be presented in the same size, font, and color as applicant's mark.

The Board found that the marks have the same connotation and commercial impression. "To the extent consumers may understand the term 'KOPAN' as completely fanciful, Applicant's mark may be perceived as an extension of Registrant's restaurant services." Of course, when the services are identical, as here, a lesser degree of similarity in the marks is necessary to support a finding of likely confusion.

Balancing the relevant du Pont factors, and concluding that the marks are "similar in sight and sound and especially in connotation and commercial impression," the Board affirmed the Section 2(d) refusal to register.

Read comments and post your comment here.

TTABlog comment: To me, "kopan" seems to describe a method of cooking wherein one uses two pans side-by-side. But we know that side-by-side comparison is not the proper test under Section 2(d). So nevermind.

Text Copyright John L. Welch 2019.

Monday, June 17, 2019

TTAB Sustains Opposition to MEZQUILA for Alcoholic Beverage, Finding No Bona Fide Intent

The Board sustained this opposition to registration of the mark MEZQUILA for "alcoholic beverages except beer," finding that "Applicant's intent at the time they filed their application was merely to reserve a right in the MEZQLA mark in case they decided to begin developing an associated product at some future time." Los Santos, LLC v. Johnny D. Gabriel and Rosalie Gabriel, Opposition No. 91223574 (June 20, 2019) [not precedential] (Opinion by Judge Susan J. Hightower).

The inquiry as to bona fide intent is "not into Applicant's subjective state of mind alone." Rather, the determination must be made objectively, based on evidence in the form of "real life facts" and "the actions of the applicant." There must be "a good faith intention to eventually use the mark in a real and legitimate commercial sense."

The Board noted Rosalie Gabriel's testimony that she was unaware of any efforts she herself made with regard to MEZQUILA at any time. The Board found it unnecessary to decide whether the lack of bona fide intent by one of two joint applicants renders the application invalid, because it concluded that her co-applicant and husband, Johnny D. Gabriel, also lacked a bona fide intent to use the mark in commerce.

Lack of Documentary Evidence: An opposer may establish a prima facie case of lack of bona fide intent by establishing that the applicant has no documentary evidence to support its claim. The burden of production then shifts to the applicant to come forward with evidence "adequately explaining or outweighing the failure to provide such documentary evidence."

The subject application was filed on January 29, 2015. The earliest documents provided by applicants were dated November 2015. The fact that these documents were created well after the filing date is not dispositive of the issue, since such documentation may corroborate the claim of a bona fide intent to use the mark as of the filing date.

Here, however, no documents preceded the filing date of the notice of opposition (August 31, 2015). Moreover, regarding the application, Mr. Gabriel testified that "I thought that it would be a good idea to have it [MEZQUILA] trademarked as a brand name in case I wanted to bring in my own Tequila" [to his retail stores]. And applicants filed an I-T-U application in 2000 for the same mark, which application went abandoned after they failed to file a statement of use, suggesting that "Applicants had the idea to use the term for many years but had not done so." [In a footnote, the Board quoted Mr. Gabriel: "I have never distilled or produced tequila in my life."].

Under the circumstances, the Board concluded that "no documentary evidence supports an objective bona fide intent to use the mark in commerce as of the application filing date." The burden of production therefore shifted to applicants to provide evidence overcoming opposer's prima facie case.

Applicant's evidence of bona fide intent: Applicant's argued that Mr.Gabriel 82 years old) does business "the old fashioned way:" over the phone or in person, without texts of emails. Mr. Gabriel testified that he met with two distilleries in February 2015 and traveled to Mexico in September 2015 to visit another distillery, regarding the MEZQUILA product. Not good enough, said the Board.

This record at most supports a finding that Applicants had two meetings within seven months after the application was filed in which inquiries concerning distillation of a MEZQUILA product were raised and immediately dropped. Considering all the record evidence, we find that these meetings do not explain or outweigh Applicant' failure to provide persuasive documentary evidence of an objective intent to use the mark MEZQUILA in commerce as of the application filing date in January 2015.

In November 2015, applicants took steps that resulted in their offering MEZQUILA brand tequila in retail liquor stores in 2017. The Board, however, found that "these goods were offered in an attempt merely to reserve a right in the MEZQUILA mark rather than in the ordinary course of trade."

These sales produced no income for applicants or their business partners. Johnny Gabriel received no royalties from the distillery or the importer/distributor. The distiller testified that he entered into the agreement as a favor to Gabriel because the latter wanted "to be sure that the trademark belongs to him."

Conclusion: The Board found that opposer had established by a preponderance of the evidence that applicants lacked a bona fide intent to use the MEZQUILA mark as of the application filing date, and so it sustained the opposition.

Read comments and post your comment here.

TTABlog comment: Opposer sells its product under the SANTO mark, and its application to register SANTO MEZQUILA was blocked by the application here challenged. The Board declined to reach opposer's claims of genericness, mere descriptiveness, geographically deceptive misdescriptiveness, and deceptive misdescriptiveness.

Text Copyright John L. Welch 2019.

Friday, June 14, 2019

TTABlog Test: Is PRINCE KONG for Games and Toys Confusable with KING KONG & Design for Toys and KING KONG (Stylized) for Bicycles?

[This guest post was written by Kira-Khanh McCarthy, a rising-3L at University of Notre Dame Law School.] Examining Attorney Alison Keeley refused registration of the mark PRINCE KONG (in standard characters) for, inter alia, games, toys, and elbow pads and guards, finding the mark likely to cause confusion with the registered marks KING KONG & Design (below left) and KING KONG (Stylized) (below right) for toys and for bicycles and body protectors for bicycle sports, respectively. On appeal, Applicant contended that the registered KING KONG marks are weak and deserved a narrow scope of protection, and that “PRINCE” and “KING” have distinct enough meanings that consumers would be readily able to differentiate between them. Do you think the Board was convinced by these arguments? In re Shin-Kyu Choi, Serial No. 87386932 (June 7, 2019) [not precedential] (Opinion by Judge Robert H. Coggins).

Similarity of the Goods, Channels of Trade, and Classes of Customers:

The Board determined that Applicant’s goods are “identical or legally identical to the goods in the registrations” and therefore it quickly presumed that the channels of trade and classes of purchasers are the same. Applicant did not appear to challenge this issue. This factor weighed in favor of finding for confusion.

Strength of the Registered Marks:

Applicant strongly disputed the strength of the registered marks, alleging that the terms KING KONG and KONG are extensively used in the marketplace and are thus are diluted and weak terms. As evidence, Applicant cited third-party registrations and also pointed to statements made by the First Registrant during prosecution which alluded to the weakness of KING KONG. The Board rejected both of these arguments. Firstly, Applicant fell short of a successful “crowded field” argument: “[i]n this case there is no evidence of third-party usage, there is only a handful of third-party registrations – only two of which contain the full literal element of the cited mark [and] [t]hose two third-party registrations are not for the same goods identified in either cited registration.” Secondly, the Board noted that a “party’s earlier contrary opinion may be considered relevant and competent” to a limited extent, but that it is no substitute for the Board reaching its own ultimate conclusion. See Interstate Brands, Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 154 (CCPA 1978). Accordingly, the Board found this factor to be neutral.

Similarity of the Marks:

Applicant did not dispute the assertion that the words “KING KONG” are the dominant element of each mark. However, it did argue that “PRINCE” and “KING” have separate meanings and are consequently dissimilar. The Board rejected this argument, maintaining that: "[t]he marks have the same structure: two words, the second being KONG . . . they share the commonly placed second word KONG which is preceded by the title of a royal male (i.e., either KING or PRINCE) . . . [and] the marks share not only a royal connotation but a direct familial relationship."

Applicant conceded that KING KONG is a famous and iconic character featured in the film of that name and in many sequels. The Board noted that in "Son of Kong," "the character King Kong had a son - known as a prince."

Finding more similarities than differences between the marks, the Board found that this factor weighed in favor of finding of likely confusion.


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

Read comments and post your comment here.

TTABlog comment:  The stylized version seems like an optical illusion. Sometimes I see it as KING KONG, sometimes not.

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

Thursday, June 13, 2019

Recommended Reading: NYU Law Professors Beebe and Fromer, "Immoral or Scandalous Marks: An Empirical Analysis"

Professors Barton Beebe and Jeanne C. Fromer of New York University School of Law have published a new article on Section 2(a) "immoral or scandalous" refusals: "Immoral or Scandalous Marks: An Empirical Analysis," N.Y.U. Journal of Intell. Prop. & Ent. Law, Vol. 8, No. 2 (Spring 2019). (link here). The article reports the results of a "systematic empirical study of how the United States Patent and Trademark Office (PTO) has applied the immoral-or-scandalous prohibition in practice."

On the basis of these empirical findings, we conclude that the § 2(a) bar on the registration of immoral-or-scandalous matter violates the Free Speech Clause and is unconstitutional. As a preliminary matter, many of the marks subject to an immoral-or-scandalous refusal are instances of high-value speech. Section 2(a)’s immoral-or-scandalous-marks provision fails to satisfy even the “intermediate scrutiny” applied to commercial speech under Central Hudson Gas & Electric Corp. v. Public Service Commission of New York because it is not narrowly drawn and is arbitrarily applied. Furthermore, the provision is unconstitutionally vague and has been applied in a viewpoint-discriminatory manner.

Read comments and post your comment here.

TTABlog comment: Two earlier articles by these co-authors have made an appearance at the TTABlog: "The Scope of Strong Marks: Should Trademark Law Protect the Strong More Than The Weak?," 92 N.Y.U. Law. Rev. 1390 (November 2017). [pdf here]; and "Are We Running Out Of Trademarks: An Empirical Study of Trademark Depletion and Congestion", 131 Harv. Law Rev. 948 (February 2018). [pdf here].

Text Copyright John L. Welch 2019.

Wednesday, June 12, 2019

Precedential No. 13: TTAB Affirms Failure-to-Function Refusal of UNLIMITED CARRYOVER for Telecommunication Services

The Board affirmed the USPTO's refusal to register the term UNLIMITED CARRYOVER for telecommunication services, finding that the phrase, as used on applicant's specimen of use (shown right), failed to function as source indicator for the recited services. In re TracFone Wireless, Inc., Serial No. 87221529 (June 10, 2019) [precedential] (Opinion by Judge Susan J. Hightower).

The Board observed that the critical question in determining whether a purported mark serves as a source indicator is whether the term would be perceived as a mark by relevant consumers. To make that determination, one must look to how the term is actually used in the marketplace.

Examining Attorney Allison Holtz contended that, as displayed on the specimen of use, UNLIMITED CARRYOVER does not identify the source of the services and distinguish them from others, due to the placement of the phrase on the specimen and because the phrase is informational and common. The Board agreed.

[T]he wording UNLIMITED CARRYOVER is last in a list of apparent features of Applicant’s “No-Contract Plans with Talk, Text, Data and Unlimited Carryover® starting at $15.” The phrase is set in the midst of other clearly informational matter, far from the TRACFONE logo. This suggests that UNLIMITED CARRYOVER too is informational matter.

The Board saw nothing in the specimen to suggest that "Unlimited Carryover" identifies the source of telecommunications services, "any more than the other listed components of Applicant's plans: 'Talk,' 'Text,' and 'Data.'" Instead, the phrase "will be perceived as part of the services rather than as a mark designating the source of the services."

The Board observed that the inherent nature of the phrase is merely informational. Several examples of  use of the term "carryover" by Applicant TracFone and by a third party supported a finding that UNLIMITED CARRYOVER "will be perceived as informational slogan which conveys information about carrying over unlimited data from on telecommunications billing cycle to the next rather than as a service mark."

While the record may not support a finding that UNLIMITED CARRYOVER is a widely used phrase, it does support a finding that the meaning of the phrase simply provides information about the services, and Applicant’s manner of use underscores and illustrates that meaning, and how it would be perceived by consumers as such.

TracFone pointed to its ownership of a registration on the Supplemental Register for the same mark for essentially the same services. The specimen for that registration is identical to the specimen here. [Thus the use of the registration symbol on the specimen - ed.]. The Board was not impressed.

The specimens for the registration on the Supplemental Register are not of record, and Applicant’s argument is circular. The registration also is more than eight years old; consumer perception of UNLIMITED CARRYOVER may have changed with the passage of time.

The Board further observed that each case must be decided on its own merits. "The Board must make its own findings of fact, and that duty may not be delegated by adopting the conclusions reached by an examining attorney in another application. [citations omitted]. This is particularly the case when the prior registration is nearly a decade old and involves the rapidly evolving field of telecommunications."

Further, an applicant may not resort to Section 2(f) to register a term that does not identify source and is merely informational because such a term does not meet the statutory definition of a mark [Section 45 of the Lanham Act] and is therefore unregistrable. [Contrast this with merely ornamental matter - ed.].

Conclusion: Considering the entire record, the Board found that TracFone's specimen of use was insufficient to show use of UNLIMITED CARRYOVER as a service mark for the identified services.

Read comments and post your comment here.

TTABlog comment: Suppose TracFone had provided survey evidence that the phrase serves as a source indicator? Would that be considered de facto secondary meaning, as in the case of a generic term, and thus non-probative?

Text Copyright John L. Welch 2019.

Tuesday, June 11, 2019

WYHA? TTAB Affirms Two Refusals to Register Based on Insufficient Specimens

[This guest post was written by Kira-Khanh McCarthy, a rising-3L at University of Notre Dame Law School.] Last week, the Board affirmed two Section 1 and 45 refusals to register on the ground that the respective specimens were unacceptable for registration.

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In In re TEK Group Int’l, the applicant sought to register ZEPOXY for, inter alia, oil and gas wellbore machine tools. TEK submitted two specimens: a tradeshow brochure (below) and a customer-facing quotation and offer for sale. Both specimens were rejected because they failed to show the applied-for-mark in use in commerce. In re TEK Group Int’l, Serial No. 87722507 (June 5, 2019) [not precedential] (Opinion by Judge Marc A. Bergsman). 

Examining Attorney Charles L. Jenkins, Jr. rejected Applicant’s tradeshow brochure because it failed to show the applied-for-mark in use in commerce. Agreeing, the Board reasoned that, “Applicant’s trade show brochure did not cross the line from mere advertising to an acceptable display associated with the goods because there is no information regarding how to place an order and, thus, it is not a point-of-sale display.” As an alternative specimen, TEK submitted a customer-facing quotation and offer for sale. TEK asserted that because its products are shipped in bulk it would be impractical to attach the mark to the products or their packaging. See TMEP § 904.03(k). The Board rejected TEK’s arguments due to lack of supporting proof in the record. The USPTO may accept nontraditional specimens only in rare circumstances, when an applicant meets its burden of proof by providing strong evidence that its products are sold in bulk and would therefore be too difficult to place its mark “on the goods, packaging for the goods, or displays used in association with the goods.” The Board found that TEK did not meet this burden.

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In In re Pure Storage, the applicant attempted to register FLASHBLADE for, inter alia, computer hardware and downloadable software. Pure Storage submitted specimens from its website showing its product and how to order it. The specimens were unacceptable because they were seen as mere advertising. In re Pure Storage, Inc., Serial No. 86895203 (June 6, 2019) [not precedential] (Opinion by Judge Cynthia C. Lynch).

Examining Attorney Michael Kazazian rejected Applicant’s website pages showing the product and how to order it, finding the pages to be mere advertising. In particular, he reasoned that Pure Storage’s “specimen does not include a way of ordering the goods; information and links are provided to contact Applicant to receive a ‘demo’ or an ‘evaluation’ but a demo or evaluation is not the means for ordering goods, pricing information, etc. . . .” Pure Storage argued that their products are customizable and required “a significant amount of customer input and information in connection with the purchase.” After providing the requisite information, consumers would have insight into product pricing. Furthermore, the “Request a Demo” button on Pure Storage’s webpage should provide the information consumers needed to make a purchase. The Board, however, found that these website features did not contain sufficient ordering means and information to qualify as a display associated with the goods. “[A] specimen fails to qualify as a point-of-sale display if it contains more limited information, and would require a prospective customer to ‘contact applicant to obtain preliminary information necessary to order the goods’ before the prospective customer could actually place an order.” Because Pure Storage’s website did not provide consumers with enough information to order the goods, the Board affirmed the rejection of the specimens of use.

Read comments and post your comment here.

KKM Comment: It seems that post-Siny [TTABlogged here], applicants will have more difficulty getting non-traditional specimens approved. Applicants should think twice before submitting non-traditional specimens that do not  provide enough information to allow consumers to order the goods.

Text Copyright Kira-Khanh McCarthy 2019.

Monday, June 10, 2019

Precedential No. 12: TTAB Finds NATIONAL MIDGET SERIES Merely Descriptive, Not Generic, for Auto Racing

The Board sustained an opposition to registration of the mark NATIONAL MIDGET SERIES, finding it merely descriptive of, but not generic for, "entertainment services, namely, arranging and conducting automobile racing events and sanctioning, supervising, and officiating of automobile races" [SERIES disclaimed]. Applicant USAC asserted a Morehouse defense based on its ownership of a registration for the mark NATIONAL MIDGET CHAMPIONSHIP for the same services, but the Board pointed out that this "prior registration" defense is unavailable on the issue of whether a descriptive mark has acquired distinctiveness "because of the overriding public interest in precluding the registration of a merely descriptive designation." Performance Open Wheel Racing, Inc. v. United States Auto Club Inc., 2019 USPQ2d 208901 (TTAB 2019) [precedential] (Opinion by Judge Marc A. Bergsman).

Genericness: The Board found the genus of services at issue to be defined by applicant's recitation of services, a genus that includes "the subcategory of automobile racing for midget cars." [Wikipedia: "Midget cars ... is a class of racing cars. The cars are typically very small with a very high power-to-weight ratio and typically use four cylinder engines."] The relevant public comprises automobile racing fans, racetrack owners and  promoters, professional drivers, midget car owners and builders, and automobile racing associations. The question, then, was how relevant consumers perceive the term NATIONAL MIDGET SERIES when used in connection with applicant's services.

The Board observed that the word "national" has been found to be descriptive, but it was not convinced by the evidence that the word is generic for the services. Although each of the three constituent words, when combined, retains its descriptive or generic meaning in connection with automobile racing services, "not each of the terms has been shown to be generic for the services and, accordingly, we cannot say that the meaning of the whole is generic based on the dictionary definitions alone."

The parties submitted conflicting testimony as to whether NATIONAL MIDGET SERIES is a phrase commonly used by other organizations to describe goods or services similar to those of applicant. Noting that the determination of genericness is a fact-intensive inquiry, the Board found that the record evidence failed to establish that NATIONAL MIDGET SERIES is "used or understood by the relevant purchasing public" to refer to the genus of services at issue.

In this case, Opposer’s witness testimony names only Opposer as another entity in the industry that uses this phrase, and that use is in conjunction with Applicant. Opposer’s witness testimony as to consumer perception is simply conclusory without basis. This unconvincing testimony is further undermined by Applicant’s witnesses who testify the phrase is not used by others. Finally, the use of NATIONAL MIDGET SERIES introduced by Opposer is inconclusive as it could be perceived as trademark use and not as the name of the genus.

The Board concluded that opposer had failed to meet its burden of showing by a preponderance of the evidence that the relevant public uses or perceive NATIONAL MIDGET SERIES to be generic for applicant's services.

Acquired Distinctiveness: Because Applicant USAC sought registration under Section 2(f) of the Trademark Act, applicant "has conceded that NATIONAL MIDGET SERIES is merely descriptive." [Actually, I think it conceded only that the term is not inherently distinctive - ed.]. The Board found the term to be "highly descriptive," concluding that the mark "as a whole is even more descriptive of Applicant's services than its individual components standing alone." Applicant USAC's burden to establish acquired distinctiveness was therefore "commensurately high."

USAC relied on evidence of use of the phrase since 1956, its sanctioning of events in nearly every state, recognition by major sports publications, television broadcasts with about 700 active subscribers and 15,000 views per month, more than two million Facebook views, fan support, and strategic partnerships with Oakley, Toyota, and AMSOIL. Not enough, said the Board.

USAC's long use of the phrase was not dispositive of the issue. Opposer has sanctioned NATIONAL MIDGET SERIES events since 2004, and has co-sanctioned events with USAC. Third-party witnesses confirmed that Opposer has used the phrase for the same services since 2004, weighing against a finding that USAC's use was substantially exclusive.

Moreover, USAC's evidence regarding the number of events it sanctioned was unclear, and the proof of the number of fans who attended the races was ambiguous. Its advertising expenditures were de minimis, and there was no evidence as to how it advertises. USAC provided no context for its social media advertising and its evidence of media recognition was unconvincing. Finally, the number of television subscribers was "relatively small," and there was no evidence regarding how many viewers watch the live (non-subscription) broadcasts of the events.

Weighing all the evidence, the Board found that Applicant USAC failed to meet its burden of proof to establish acquired distinctiveness.

Morehouse Defense: This "prior registration" defense is an equitable defense "analogous to laches or acquiescence," and it is not available in proceedings "predicated on whether a merely descriptive mark has acquired distinctiveness because of the overriding public interest in precluding the registration of a merely descriptive designation." End of story.

Read comments and post your comment here.

TTABlog comment: The Morehouse "defense" should be called the "Lesshouse defense." It is the toothless tiger of trademark law. I can attest to that from recent personal experience. The defense almost never applies, except when it is not needed: i.e., when the marks and goods/services are virtually identical, in which case the proponent would have little or no need for a second registration anyway.

Text Copyright John L. Welch 2019.

Friday, June 07, 2019

TTAB Sustains Opposition to Basket Weave Design for Footwear

The Board sustained an opposition to registration of the product configuration mark shown below, for footwear in class 25, on the ground of ornamentality and lack of acquired distinctiveness. In September 2013, the Board reversed a refusal to register the applied-for mark, finding the design not to be aesthetically functional under Section 2(e)(5), and not to be mere ornamentation in view of its acquired distinctiveness. [TTABlogged here]. The Board there emphasized that its ruling on non-functionality was "based on a very narrow reading of the proposed mark, and the scope of the protection to which it is entitled." The application was then published for opposition, and this proceeding ensued. Marc Fisher, LLC v. Bottega Veneta, Opposition No. 91214253 (June 4, 2019) [not precedential) (Opinion by Judge Cindy B. Greenbaum).

The opposed application states that the mark "consists of a configuration of slim, uniformly-sized strips of leather, ranging from 8 to 12 millimeters in width, interlaced to form a repeating plain or basket weave pattern placed at a 45-degree angle over all or substantially all of the goods." Because the applied-for mark is a product configuration, it may be registered only upon a showing of acquired distinctiveness. Thus applicant sought registration under Section 2(f).

The Board acknowledged the Board's finding in 2013 that "applicant has a heavy burden to demonstrate that its applied-for weave design would be recognized as a trademark" because the record demonstrated frequent use of woven leather designs, "and particularly designs in plain weave," for handbags and shoes. The Board also observed that applicant has the "ultimate burden of persuasion" as to acquired distinctiveness, which it must meet by a preponderance of the evidence.

Based on Mr. Fisher’s testimony and Opposer’s evidence, discussed below, concerning the history of weave designs for shoes, Mr. Fisher’s personal experience with using weave designs for shoes that he designed and manufactured in the 1980s and 1990s, and the third-party uses to which he testified, including the 21 third-party shoes Opposer made of record, we find that Applicant’s burden is heavy, indeed.

Although the prosecution file of the opposed application is automatically of record in this opposition, the Board did not consider the declarations in the file to be testimony because they were not executed during the assigned testimony period. See Robinson v. Hot Grabba Leaf, LLC. The exhibits attached to the declarations were at least ten years old and therefore have little or no probative value regarding recent customer perception. They also suffered from a hearsay problem.

Opposer's founder, Marc Fisher, "consistently and repeatedly testified that the proposed mark is a woven leather basket weave that commonly was used on footwear in the 1980s and 1990s and continues to be used on footwear ...." Opposer submitted 21 third-party shoes having a weave design that "falls within the parameters of the applied-for mark."

Applicant contended that some of these shoes did not fall squarely within the description of applicant's mark: for example, the strips might be 6 or 7 millimeters instead of 8. Mr. Fisher testified that a one millimeter difference would not be noticed: "A millimeter is like a thread."

In other words, because ordinary footwear consumers do not typically bring a ruler with them when they shop for shoes, and there is no evidence that they are able to recognize the width of leather strips within millimeters, they will rely on a general impression and will likely not be able to distinguish whether a particular shoe has strips of leather that are a few millimeters within range of Applicant’s claimed width of 8-12 millimeters.

Similarly, consumers would not be able to tell whether the leather strips are precisely at a 45 degree angle. And the phrase "all or substantially all" is "open to debate as to its limiting effect." The Board observed that these third-party shoes do not have to be identical to the applied-for mark in order to have probative value on the issue of acquired distinctiveness.

The Board recognized that it was reaching a different conclusion than that reached in 2013, but it pointed out that the record evidence is different here. "Simply put, we are not bound by the 2013 decision."

Applicant claimed that the third-party shoes are knock-offs or infringements of its design. The Board disagreed based on the evidence, which defied applicant's claim that its use of the design is, or has ever been, substantially exclusive. Moreover, applicant has taken no action to police its mark, and the existence of these third-party shoes make it less likely that consumers associate the design with applicant.

Applicant pointed to its use of the design since 1975, claiming it to be its "signature" design. The Board observed, however, that "long and continuous use alone is insufficient to show secondary meaning where the use is not substantially exclusive." Likewise, applicant's sales and advertising figures may demonstrate the popularity of the products but without more, they do not prove that the design serves as a source indicator.

Notably, applicant provided no evidence of "look for" advertising, which undermined its Section 2(f) claim. Nor did it provide consumer testimony, relying instead on the testimony of one of its managers as to the popularity of its products. The Board, however, found her testimony about consumer perception to be mere hearsay.

Finally, the Board noted applicant's ownership of a registration for the same mark in class 18 (which registration issued after the 2013 decision). Although Rule 2.41(a)(1) allows the USPTO to accept an applicant's ownership of an active prior registration for the same mark as evidence of acquired distinctiveness, provided that the goods are "sufficiently similar," the Rule states that additional evidence may be required "in appropriate cases." Applicant provided no evidence that handbags and footwear are "sufficiently similar" such that the prior registration "would even be a factor for us to consider."

Based on the record as a whole, the Board concluded that applicant had failed to overcome opposer's prima facie case of lack of acquired distinctiveness, and it therefore sustained the opposition. The Board found it unnecessary to reach opposer's claim if aesthetic functionality.

Read comments and post your comment here.

TTABlog comment: Ouch! Quite a change in fortune for this applicant. Is its Class 18 registration for handbags now vulnerable? Note that it reached its fifth anniversary on May 13, 2019.

Text Copyright John L. Welch 2019.

Thursday, June 06, 2019

Applying Doctrine of Foreign Equivalents, TTAB Finds GUEPARDO and CHEETAH Confusingly Similar for Vehicle Wheels and Tire Equipment

[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 GUEPARDO, in standard characters and also in the design form shown below, both for vehicle wheels, finding the marks likely to cause confusion with the registered mark CHEETAH for, inter alia, tire bead seating equipment. Although the Spanish word “guepardo” translates to “cheetah” in English, Applicant Compass Automotive argued that the doctrine of foreign equivalents should not apply because a substantial portion of consumers would not stop and translate the foreign term into its English equivalent. However, because the marks are exact equivalents and because the relevant du Pont factors weighed in favor of finding for confusion, the Board rejected Applicant’s arguments. In re Compass Automotive, Inc., Serial Nos. 87473737 and 87533115 (May 30, 2019) [not precedential] (Opinion by Judge Karen Kuhlke).

Similarity of the Goods/Channels of Trade/Consumers: Examining Attorney Odessa Bibbins contended that the goods are related because they are complementary. Compass Automotive alleged that the goods are not related because they are not often used together. The Board rejected Applicant’s argument, observing that “[w]hile a particular wheel and tire bead seating equipment may not be used ‘often’ together, tire bead seating equipment and wheels are used together each time any tire is seated and sealed against the rim of any wheel.” Furthermore, the Board noted that the goods are sold in the same channels of trade and offered to the same consumers, as evidenced by examples from retailer websites. And so, these du Pont factors supported a finding of likelihood of confusion.

Sophistication of Purchasers: Compass Automotive made a strong claim that consumers would take great care when making purchases of both the Applicant’s and Registrant’s goods. Neither vehicle wheels nor tire bead seating equipment would likely be impulse purchases. Notwithstanding, the Board noted that this alone “is not sufficient evidence of record upon which to make a determination that this factor would outweigh the other du Pont factors[,]” and even “sophisticated buyers are not immune from confusion.” Therefore, the Board found this factor to be neutral.

Similarity of the Marks: The Board observed that the marks are clearly different in appearance and sound. However, considering the doctrine of foreign equivalents, the Board found that CHEETAH is an exact translation of the Spanish word GUEPARDO. Applicant asserted that the doctrine of foreign equivalents should not apply because “[a]lmost 88% of the U.S. population does not speak Spanish at home” and thus “[a] substantial number of ordinary American purchasers would not ‘stop and translate’ the foreign term into its English equivalent.” The Board rejected this argument, finding that Spanish is a common modern language and that the marks are exact equivalents. "[T]he doctrine of foreign equivalents applies where the ‘ordinary American purchaser . . . who is knowledgeable in the foreign language’ would stop and translate the mark." See In re Thomas, 79 USPQ2d 1021, 1024 [emphasis added]. Here, "[t]here is also nothing in the 'marketplace circumstances or the commercial setting in which the mark is used' to indicate that purchasers would be unlikely to translate the mark."

Moreover, Applicant’s use of a cheetah in its design form mark "reinforce[s] the connotation and commercial impression engendered by the word portion of the mark."

Conclusion: Balancing the relevant du Pont factors and relying heavily on the doctrine of foreign equivalents, the Board found for a likelihood of confusion and affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: It seems that the best, and perhaps only, way to avoid application of the doctrine of foreign equivalents is to show that the foreign term does not translate exactly and only into the English term at issue.

BTW, is there a presumption that consumers will stop and translate unless the applicant submits evidence that proves they won't?

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