Tuesday, January 16, 2018

Precedential No. 38: TTAB Excuses Failure to Plead Compulsory Counterclaim in Answer

Here's another 2017 precedential interlocutory ruling that slipped under the TTABlog radar. In this consolidated opposition and cancellation proceeding, the Board considered whether an answer may be amended to add an omitted counterclaim "when justice so requires," or whether under FRCP 15 a compulsory counterclaim must be pleaded in the original answer (unless based on newly discovered grounds). The Board ruled that the failure to plead a compulsory counterclaim in an original answer is not a per se bar to its later assertion in the same proceeding. Jive Software, Inc. v. Jive Communications, Inc., Opposition No. 91218826 (parent) (December 20, 2017) [precedential].


This proceeding began with an opposition filed on October 14, 2014. Applicant Jive Communications filed its answer on November 5, 2014, without any counterclaim. Beginning on December 12, 2014, the parties sought and obtained numerous suspensions of the opposition in view of settlement negotiations, and the proceeding remained in suspension until May 11, 2017.

Each of the parties then filed two petitions for cancellation. Shortly thereafter, Applicant Jive Communications also filed a motion for leave to amend its answer in the opposition to add a counterclaim for cancellation, and it also sought to amend its answer as a matter of course in one of the cancellation proceedings brought by opposer, to add a counterclaim for cancellation of two of opposer's registrations. Applicant also moved to consolidate all five proceedings.

Opposer Jive Software challenged applicant's amendments and its two petitions for cancellation on the ground that the new claims were compulsory counterclaims that should have been raised in applicant's original answer and therefore were time barred.

The Board observed that, under Trademark Rule 2.106(b)(3)(i),  a "defense attacking the validity of a registration pleaded in an opposition is a compulsory counterclaim if grounds for the counterclaim exist at the time when the answer is filed or are learned during the course of the opposition proceeding."

The purpose of the compulsory counterclaim rule is to avoid multiple proceedings. The Rule states that "[i]f grounds for a counterclaim are known to the applicant when the answer to the opposition is filed, the counterclaim shall be pleaded with or as part of the answer. If grounds for a counterclaim are learned during the course of the opposition proceeding, the counterclaim shall be pleaded promptly after the grounds therefor are learned." The Board observed that the language of the Rule "does not suggest that the answer may never be amended to include an omitted counterclaim."

The Trademark Rules explicitly provide that “[p]leadings in [Board proceedings] may be amended in the same manner and to the same extent as in a civil action in a United States district court.” Trademark Rule 2.107(a) (oppositions), 2.115 (petitions for cancellation). Federal Rule 15(a), made applicable to inter partes proceedings by Trademark Rule 2.116(a), further provides that “leave [to amend a pleading] shall be freely given when justice so requires.”

The Board has ruled on motions to amend to add an omitted compulsory counterclaim under the Trademark Rules, in view of the flexible standard of Fed. R. Civ. P. 15(a), allowing amendment when justice so requires, even in cases where the counterclaim was not included in the original answer and was not based on newly discovered evidence. [see cited cases].

To be clear, Trademark Rules 2.106(b)(3)(i) and 2.114(b)(3)(i) do not require that, after a defendant’s initial answer, amendment to add an omitted compulsory counterclaim must be denied where the movant has not demonstrated that the counterclaim is based on newly-acquired evidence.

* * * * * * * *

The rules require compulsory counterclaims to be pleaded in the answer, if known, but under Fed. R. Civ. P. 15(a), where justice requires, answers may be amended to add an omitted compulsory counterclaim, subject to the same rules applicable to other amendments to pleadings.

Turning to the circumstance of this case, the Board found that Applicant Jive Communications did not unduly delay by waiting two years after filing its answer to introduce the counterclaim. Applicant’s delay in attempting to amend its answer and assert its counterclaim was limited to the brief period of time during which the case was not suspended. Neither party pointed to any evidence of prejudice caused by the short delay.

Although it would have been better practice for Applicant to plead the counterclaim with its original answer, Applicant’s forbearance from filing an amendment as a matter of course, or later with a motion for leave to amend was not unreasonable.

Moreover, the Board observed, it would be unfair to deem Applicant’s motion to amend untimely just because a few weeks passed after the answer was filed and before proceedings were formally suspended. Opposer Jive Software would not be prejudiced by the amendment, whereas a refusal to allow a compulsory counterclaim "could preclude Applicant from raising those claims in any subsequent proceeding between these parties."

Taking all circumstances into account, and applying the liberal standards of Rule 15, the Board ruled in favor of applicant on the subject motion to amend and it deemed the its two petitions for cancellation to be timely. The Board also ordered consolidation of the proceedings in view of their common claims of priority and likelihood of confusion as to the parties’ marks.

Read comments and post your comment here.

TTABlog comment: Lack of prejudice seems to be the key, provided one doesn't wait too long.

Text Copyright John L. Welch 2018.

Friday, January 12, 2018

Precedential No. 37: Applying Revised Rules, TTAB Denies Motion for Judgment on the Pleadings as Untimely

Here's a 2017 ruling that slipped under the TTABLog radar. In this precedential order, the Board denied an FRCP 12(c) motion for judgment on the pleadings, directed at applicant's counterclaims, because the motion was untimely. The Board followed its established practice of applying to motions for judgment on the pleadings the same deadline applicable to summary judgment motions under recently amended Rule 2.127(e)(1). Shared, LLC v. SharedSpaceofAtlanta, LLC, Opposition No. 91228478 (December 21, 2017) [precedential].


A motion for judgment on the pleadings, like a summary judgment motion, is "a pretrial device intended to save the time and expense of a full trial when a party is able to demonstrate, prior to trial, that there is no genuine dispute of material fact to be resolved, and the moving party is entitled to judgment on the substantive merits of the controversy as a matter of law."

According to TBMP § 504.01 (June 2017), a motion for judgment on the pleadings should be filed "[a]fter the pleadings are closed, but within such time as not to delay the trial." More significantly, FRCP 12(c) states that "After the pleadings are closed — but early enough not to delay trial — a party may move for judgment on the pleadings." The Board’s "established practice" has been to apply to such motions the deadline that applies to summary judgment motions as set forth in Trademark Rule 2.127(e)(1).

Before January 14, 2017, the deadline for filing a summary judgment was, according to Rule 2.127(e)(1), "prior to the commencement of the first testimony period, as originally set or as reset." That Rule was amended as of January 14, 2017, and clarified on July 21, 2017, to provide that a summary judgment motion "must be filed before the day of the deadline for pretrial disclosures for the first testimony period, as originally set or as reset." [Emphasis supplied].

Applying the new summary judgment deadline to the subject FRCP 12(c) motion, the Board ruled that a motion for judgment on the pleadings must likewise be filed before the day of the deadline for pretrial disclosures for the first testimony period, as originally set or as reset.

Here, the deadline for opposer’s pretrial disclosures, as reset in the Board’s July 26, 2017 order, was August 7, 2017 (fifteen days before the opening of opposer's testimony period on August 22). Opposer’s motion filed August 19, 2017 was therefore untimely, and so the Board denied the motion.

Read comments and post your comment here.

TTABlog comment: Well, that's a neatly wrapped little package.

Text Copyright John L. Welch 2018.

Wednesday, January 10, 2018

TTAB Test: Are These Two Stylized "P" Marks Confusingly Similar for Cigars?

The USPTO refused registration of the mark shown below left, finding it likely to cause confusion with the mark shown below right, both for cigars. On appeal, applicant argued that the customers for its "high-end" cigars are sophisticated and selective, and furthermore that four third-party registrations for marks containing the letter "P" demonstrate that the cited mark is weak. How do you think this came out? In re Plasencia 1865, LLC, Serial No. 87147187 (January 9, 2018) [not precedential] (Opinion by Judge Karen Kuhlke).


Of course, because the goods in the application and cited registration are identical, the Board must presume that they travel in the same channels of trade to the same classes of consumers. Applicant's argument regarding the nature of its cigars and the sophistication of its consumers was irrelevant, since no such limitations appear in the application at issue. Moreover, the was no evidence that consumers of cigars, in general, are sophisticated or careful in selecting these products, and in any event the Board must consider the "least sophisticated potential purchasers" in making its determination.

As to the marks, both include a conventional typeface that is "not particularly distinctive." The most significant distinction is the slightly different position of the letter P within the circle, but the Board found the overall visual differences to be minor. The marks are similar in pronunciation and, to the extent they have any meaning, the meanings would be the same. Any differences in how the marks are actually used - i.e, always with another trademark - are irrelevant.

The four registered marks cited by applicant different from the marks at issue in significant ways because they included design or additional lettering or words, and are not for the letter P by itself or in a design. (see opinion, page 7). Without evidence of actual use, these four registrations have no impact on the issue of the weakness of the cited mark

Applicant submitted photographs showing that two cigar brands use the term "SERIES P," but there was no evidence that the letter P has any significance or meaning in connection with cigars. The cited mark, on this record, is apparently arbitrary and therefore inherently distinctive for cigars.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: My favorite cigar brand is "It's a Girl!"

Text Copyright John L. Welch 2018.

TTAB Issued 36 Precedential Rulings in 2017

The TTAB issued three dozen (36) precedential opinions in calendar 2017. Among the more interesting ones, the Board considered the registrability of the color yellow for a cereal box, again deemed PRETZEL CRISPS generic for pretzel crackers, and affirmed two refusal under the flag/insignia prohibition of Section 2(b). It rejected three product configuration marks due to functionality under Section 2(e)(5), continued to downplay the rareness factor in Section 2(e)(4) surname refusals, and dealt with two phantom mark refusals, affirming one and reversing one.


Section 2(a) - Deceptiveness:
Section 2(b) - Flag, Coat of Arms, or Other Insignia:
Section 2(d) - Likelihood of Confusion:

Section 2(e)(1) - Mere Descriptiveness
    Section 2(e)(4) - Primarily Merely a Surname::
    Section 2(e)(5) - Functionality::
    Section 2(f): Acquired Distinctiveness:
    Abandonment/Nonuse:



    Application Requirements/Lawful Use/Specimen of Use:
    Certification Mark Control:

    Failure to Function/Phantom Mark:

    Fraud:
    Genericness:
    Discovery/Evidence/Procedure:
    Text Copyright John L. Welch 2017-2018.

    Monday, January 08, 2018

    The Top Ten TTAB Decisions of 2017 [Part II]

    This is the second of two posts; the first five selections were posted here. Additional commentary on each case may be found at the linked TTABlog postings. The cases are not necessarily listed in order of importance (whatever that means).



    Estudi Moline Dissey, S.L. v. BioUrn Incorporated, Cancellation No. 92061508, 123 USPQ2d 1268 (TTAB 2017) [precedential] [TTABlogged here]. Addressing the revised Trademark Rules of Practice that came into effect on January 14, 2017, the Board found that petitioner had served its discovery requests too late. Rule 2.120(a)(3) now requires that written discovery requests be served early enough in the discovery period that responses will be due no later than the close of discovery. A responding party must serve its responses (by email) within 30 days of service of the requests. Here, the last day to serve discovery (31 days before the end of the discovery period, not counting the day of service) was February 19, 2017. Because that was a Sunday, petitioner concluded that, under Rule 2.196, it had until the next business day, Monday, February 20, to timely serve its discovery requests. Not so, said the Board. In light of the revision of Rule 2.120(a)(3), Rule 2.196 no longer applies to the deadline for service of written discovery requests. Nonetheless, because this case was commenced under the old rules, the current dispute arose during the transition to the new rules, and the dispute involves a scheduling matter, the Board exercised its discretion to reopen discovery for the limited purpose of allowing respondent time to respond to petitioner’s (tardy) written discovery requests.


    In re United Trademark Holdings, Inc., 122 USPQ2d 1796 (TTAB 2017) [precedential] (Opinion by Judge Marc A. Bergsman). [TTABlogged here].  Affirming a Section 2(e)(1) refusal of LITTLE MERMAID, the Board found the mark merely descriptive of “dolls,” concluding that consumers will not perceive LITTLE MERMAID as a source identifier but instead will “understand the mark to describe the public domain character in the Hans Christian Andersen fairy tale, as well as a young or little mermaid.” The Board observed that its case law draws a distinction between “situations where the character is in the public domain and where the applicant owns intellectual property rights in the work from which the character arose.” [E.g., SUPERMAN]. A fictional public domain character like the Little Mermaid is not necessarily linked to a specific entity. “[P]rospective purchasers expect dolls labeled as LITTLE MERMAID to represent the fairy tale character and, thus, [the mark] describes the purpose or function of the goods (i.e., to represent the Little Mermaid of the fairy tale).” Other doll makers have a competitive need to use the name LITTLE MERMAID to describe their products.




    In re Shabby Chic Brands LLC
    , 122 USPQ2d 1139 (TTAB 2017) [precedential] (Opinion by Judge Thomas Shaw) [TTABlogged here]. The TTAB affirmed a Section 2(b) refusal of the mark shown below left, for various goods including furniture, dinnerware, and fabrics, on the ground that the mark comprises a design that simulates a governmental insignia of the United Kingdom, namely, the Prince of Wales’ emblem, shown below right. Section 2(b) bars registration of a mark that “[c]onsists of or comprises the flag or coat of arms or other insignia ... of any foreign nation, or any simulation thereof.” The Government of the United Kingdom identified the emblem as “[t]he official emblem of the Prince of Wales” when it notified WIPO in 2005, under the Paris Convention, that this emblem is a ‘state emblem’ of the United Kingdom. The emblem is included in the USPTO database and may form the basis of a Section 2(a) or 2(b) refusal. The Board concluded that the Prince of Wales’ emblem is an “insignia of national authority” on a par with a coat of arms. In determining whether the mark is a “simulation” of the emblem, the Board must consider the “first impression gathered from a view of such mark without a careful analysis and side-by-side comparison ....” The Board concluded that that the similarities in the commercial impressions of the marks outweighed their differences and it found that the applied-for mark is a simulation of the Prince of Wales’ emblem. Applicant also asserted that its mark has co-existed with the Prince of Wales' emblem for 13 years without objection or confusion, but the Board pointed out that absence of objection or confusion is irrelevant, since Section 2(b) is an absolute bar, and confusion plays no part in the analysis.


    In re Empire Tech. Dev. LLC, 123 USPQ2d 1268 (TTAB 2017) [precedential] (Opinion by Judge Christopher Larkin) [TTABlogged here]. Affirming a refusal to register COFFEE FLOUR on the Supplemental Register, the Board found the term to be generic for “flour made by processing and blending together coffee cherry skins, pulp, and pectin for use, alone or in combination with other plant and milk based products, as a dry ingredient in food and beverage products for consumer use.” After an exhaustive review of the evidence, the Board concluded that relevant consumers understand the term to refer to flour made from the skin, pulp, and pectin of the coffee cherry portion of the coffee plant. “Applicant itself has communicated this meaning of the term ‘coffee flour’ to the public, and the articles in the record, from which we can infer the public’s understanding of the term, show that this message has been received and understood.” The Board noted that this appeal involves the rare situation in which an applicant has created a new genus of goods by being the first (and apparently the only) producer and seller of a new product. Professor McCarthy has noted the branding challenges involved: “If the public adopts as the generic name of the thing the word that the seller thinks is a mark, then it is no longer a mark at all....” He suggests that the creator adopt two new words - the mark and the generic name.



    Tao Licensing, LLC v. Bender Consulting Ltd. d/b/a Asian Pacific Beverages, 125 USPQ2d 1043 (TTAB 2017) [precedential] (Opinion by Judge Cynthia C. Lynch) [TTABlogged here]. The Board granted a petition for cancellation of a registration for the mark TAO VODKA for “alcoholic beverages except beer” (VODKA disclaimed) on two grounds: nonuse and likelihood of confusion with petitioner’s registered and famous mark TAO for restaurant and nightclub services. Nonuse: Respondent conceded that, prior to filing its Statement of Use, it had not sold any goods under the mark TAO VODKA, but it contended that the distribution of samples to three entities – a restaurant, a distributor, and a shareholder of a related entity – sufficed. The Board concluded that the “sharing of these samples ... was more in the nature of a preliminary advisory consultation than bona fide use of the TAO VODKA mark in the ordinary course of trade.” Likelihood of confusion: The Board found the “something more” required to establish that alcoholic beverages and restaurant services are related, in the facts that Petitioner uses its TAO mark to promote alcoholic beverages and sometimes engages in joint promotional efforts with vodka manufacturers, and in respondent’s “eyebrow-raising activities” in choosing its mark after petitioner refused to purchase its vodka, including adoption of a font very similar to the font used by petitioner, showing that respondent itself “believed that consumers would view respondent’s vodka and petitioner’s services as related.”



    Read comments and post your comment here.

    TTABlog comment: Do you have other cases to suggest?

    Text Copyright John L. Welch 2017-18.

    Friday, January 05, 2018

    The Top Ten TTAB Decisions of 2017 [Part I]

    The TTABlogger has once again chosen the ten TTAB decisions that he considers to be the most important and/or interesting from the previous calendar year (i.e., 2017). This is the first of two posts, the first five selections being set out below. Additional commentary on each case may be found at the linked TTABlog postings]. The cases are not necessarily listed in order of importance (whatever that means).



    In re General Mills IP Holdings II, LLC, 124 USPQ2d 1016 (TTAB 2017) [precedential] (Opinion by Judge Anthony R. Masiello). [TTABlogged here]. Affirming a refusal to register the color yellow appearing on packaging for "toroidal-shaped, oat-based breakfast cereal" (i.e., CHEERIOS®), the TTAB found that the alleged mark lacks acquired distinctiveness and therefore fails to function as a trademark. Although Applicant General Mills submitted voluminous evidence to support its Section 2(f) claim, the Board was convinced by proof of third-party use of yellow packaging for cereal products, that consumers "do not perceive the color yellow as having source significance for the goods." The Board pointed out that, "[b]y their nature color marks carry a difficult burden in demonstrating distinctiveness and trademark character." In re Owens-Corning Fiberglas Corp., 227 USPQ 417, 424 (Fed. Cir. 1985). The presence in the market of yellow-packaged cereals from various sources – including cereals that are not made of oats or are not toroidal in shape –undermined any possible source significance for the color yellow. General Mills pointed to its survey evidence purporting to show that 48.3% of respondents associated the yellow box with the CHEERIOS® brand. The Board, however, saw a hole in the survey, namely that the wording of the survey questions suggested that the respondents could name only one brand.


    Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 124 USPQ2d 1184 (TTAB 2017) [precedential] (Opinion by Judge Lorelei Ritchie). [TTABlogged here]. On remand from the CAFC, the TTAB again ruled that PRETZEL CRISPS is generic for pretzel crackers. In a May 2015 ruling, the CAFC vacated the Board’s earlier decision with instructions to apply the correct legal standard, namely the two-part test set forth in the Marvin Ginn decision. The CAFC concluded that the Board had failed to consider evidence of the relevant public’s understanding of the term PRETZEL CRISPS as a whole. Furthermore, the Board was directed to give “appropriate consideration to the proffered survey evidence.” The Board weighed the dictionary definitions of “pretzel” and “crisp,” results of LexisNexis database searches of “pretzel crisps,” media references, negative dictionary evidence, and consumer feedback. The “Teflon” survey results submitted by the parties were deemed irrelevant because the Teflon format is not appropriate for a term that is not inherently distinctive, and in any case the survey methods were flawed. The Board found that Frito-Lay had proven by a preponderance of the evidence that PRETZEL CRISPS is generic for “pretzel crackers.” Assuming arguendo that PRETZEL CRISPS is not generic, the Board also found Princeton Vanguard’s evidence of acquired distinctiveness insufficient under Section 2(f).



    In re Beds & Bars Limited, 122 USPQ2d 1546 (TTAB 2017) [precedential] (Opinion by Judge T. Jeffrey Quinn). [TTABlogged here]. In yet another decision downplaying the surname rareness factor, the Board affirmed a Section 2(e)(4) refusal of the mark BELUSHI’S for various travel, hotel, and restaurant services, finding it to be primarily merely a surname. Although BELUSHI is an “exceedingly rare” surname (only five people in the U.S. are named BELUSHI), “the celebrity of John Belushi and the continuing media attention on Jim Belushi support a finding that a substantial portion of Americans know BELUSHI to be a surname.” Applicant focused on the rarity of the surname, arguing that “because there are only five people in the entire United States with the surname Belushi, substantially no one will be adversely affected by the registration of Applicant’s mark BELUSHI’S.” The examining attorney pointed to the fame and publicity of the Belushi brothers, John and Jim, in the television and film industries, which greatly increases the public’s awareness of BELUSHI as a surname. The Board observed that that “[e]ven a rare surname may be held primarily merely a surname if its primary significance to purchasers is that of a surname.” It found that BELUSHI “is so well-known as a result of media publicity that it would be immediately recognized as a surname.”


    In re University of Miami, 123 USPQ2d 1075 (TTAB 2017) [precedential] (Opinion by Judge Susan J. Hightower). [TTABlogged here]. The Board reversed two refusals to register the mark shown below, for various products and services, finding that the design comprised neither a mutilation of the mark as actually used, nor a phantom mark. The applied-for mark, which “consists of an ibis wearing a hat and a sweater,” depicts the mascot of the University of Miami, Sebastian the Ibis. Mutilation: An applicant must submit a drawing that is a “substantially exact representation of the mark” as used. See Rule 2.51(a). Here the mark in the drawing differed from the mark as used in several ways: in use, a stylized letter “U” appeared in the center of the hat; the word “Miami” was displayed on the front of the sweater, and the sweater had striping along the side and shoulders. The Board found that the applied-for design mark creates a separate and distinct commercial impression from the letter “U” and the word “Miami” that appear on the specimens of use, and further that the stripes on the sweater are merely a minor alteration. The Board concluded that “the overall display on the specimens creates the commercial impression of a personified ibis.” Phantom Mark: Neither the drawing nor the mark description identified a changeable or missing element. The extra elements that appear within the ibis design on the specimens of use are not “integral to Applicant’s mark.” In short, applicant was not seeking to register multiple marks.


    Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477 (TTAB 2017) [precedential] (Opinion by Judge Karen Kuhlke). [TTABlogged here]. Because Opposer Luxco failed to prove its claims of genericness, lack of legitimate control, and fraud, the Board dismissed this opposition to registration of the mark TEQUILA as a certification mark for “distilled spirits, namely, spirits distilled from the blue tequilana weber variety of agave plant.” A certification mark that certifies regional origin as well as the qualities and characteristics associated with that origin “will not be deemed to have become a generic term as applied to particular goods unless it has lost its significance as an indicator of origin for those goods.” Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1887 (TTAB 2006). The Board reviewed dictionary definitions of “tequila,” encyclopedia and website references, several expert reports, advertising and bottle labels for Tequila, recipes, news articles, retail signage, and consumer survey results. It found that the record evidence was, at best, mixed, and “tends to show that Tequila has significance as a designation of geographic origin.” In short, Luxco did not meet its burden to prove genericness by a preponderance of the evidence, and so the Board dismissed that claim. It further found that CRT exercised legitimate control over the mark, and there was nothing in the record - “not one iota of evidence” - to support the claim that CRT made a false statement or intended to deceive the USPTO.


    Read comments and post your comment here.

    TTABlog comment: Thoughts? Should I go to 11 instead of 10?

    Text Copyright John L. Welch 2017-18.

    Wednesday, January 03, 2018

    TTAB Dismisses "DONQ" Opposition, Finding Applicant's Goods and Services Unrelated to "DON Q" Rum

    The Board dismissed this opposition to registration of the mark DONQ for a variety of food and non-alcoholic beverages in Classes 29, 30 and 32, and for food and beverage services, finding that opposer failed to proved the relatedness of applicant's goods and services to the registered marks DON Q and DONQ COCO for rum [COCO disclaimed] for Section 2(d) purposes, and failed to prove fame for dilution purposes. Destileria Serralles, Inc. v. Kabushiki Kaisha Donq d/b/a Donq Co., Ltd., Opposition No. 91204129 (December 28, 2017) [not precedential] (Opinion by Judge George C. Pologeorgis)


    Likelihood of Confusion: The Board found that opposer's DON Q mark and Applicant's DONQ mark are, at a minimum, similar in appearance, connotation, and commercial impression, regardless of how a consumer may pronounce the marks. It also found that opposer's DONQ COCO mark similar to applicant's mark in appearance, sound, commercial impression, and connotation.

    Fame of Don Q: DONQ rum is the number one selling spirit in Puerto Rico and one of the top ten rums sold nationally. Opposer generated significant nationwide sales, advertised nationally, and spent significant amounts on advertising. However, opposer failed to submit any evidence as to how its sales and advertising figures compare to others in the field, or to provide any context for its market share. The Board concluded that the evidence fell short of establishing that the DON Q mark resides on the "very strong" end of the spectrum for likelihood of confusion purposes. The mark has achieved a "marginal degree of fame," and therefore the 5th du Pont factor was deemed neutral. [I think this is an incorrect application of the 5th factor, which should measure "strength," not "fame." If a mark has achieved a moderate degree of fame, doesn't that mean it has some strength? - ed.].

    The Goods and Services: Opposer relied on third-party registrations to show the relatedness of the involved goods and services. However, the Board noted that most of the third-party registrations are owned by "well-recognized distillers of alcohol" (e.g., Captain Morgan, Jack Daniels, Jim Beam).

    The fact that distillers of major alcohol brands have lent their well-recognized marks to a wide range of products does not mean that all of the products they sell are related. We further note that an overwhelming majority of the third-party registrations are for goods and services unrelated to those identified in Applicant’s involved application.

    Therefore, the third-party registrations are entitled to "diminished probative value." Similarly, Internet evidence of third-party use by these well-known distillers has limited probative value.

    Moreover, opposer failed to show that lesser known distillers in a more limited alcoholic beverage field would normally expand to the goods and services identified by applicant.

    In sum, the Board concluded, consumers are not likely to perceive a common source for the involved goods and services, and so the Board dismissed the Section 2(d) claim.

    As to opposer's dilution, claim, since opposer failed to prove fame for Section 2(d) purposes, it perforce could not meet the higher standard for dilution fame.

    Read comments and post your comment here.

    TTABlog comment: The 5th du Pont factor should be "strength" of the mark, not "fame" of the mark. It seems to me that the Board here treated likelihood-of-confusion fame as an all-or-nothing proposition. The recent CAFC decision in Joseph Phelps said that was improper.

    Text Copyright John L. Welch 2018.

    Tuesday, January 02, 2018

    TTAB Posts January 2018 Hearing Schedule

    The Trademark Trial and Appeal Board (TTAB) has scheduled five (5) oral  hearings for the month of January 2018. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. Briefs and other  papers for these cases may be found at TTABVUE via the links provided.



    January 11, 2018 - 11 AM: Standard Tools and Equipment Co. v. Dropship LLC DBS Tool USA, Opposition No. 91222920 [Section 2(d) opposition to registration of TOOL USA.COM & Design for "Manually operated hand tools, namely, hammers, trowels, sanding wire wool, drill accessories, namely, bits for hand drills" [TOOLS and USA.COM disclaimed] in view of the mark TOOLS USA, registered on the Supplemental Register for "equipment catalogs for vehicle repair shops" [TOOLS disclaimed], and the registered mark TOOLS USA & Design [TOOLS USA disclaimed] for  "equipment catalogs for vehicle repair shops"].



    January 11, 2018 - 2 PM: Trek Bicycle Corporation v Celestron Acquisition LLC, Oppositions Nos. 91213696, 91213957, and 91213962 [Section 2(d) oppositions to registration of TREKGUIDE for "Barometers; Magnetic compasses; Thermometers, THERMOTREK for "electric hand warmers," and TREKCEL for "Transformers; Portable electrical power chargers for cell phones, smart phones, tablet computers, MP3 players and wireless headsets," in view of the registered mark TREK and formatives thereof for bicycles and cycling accessories].


    January 18, 2018 - 11 AM: In re NuWave LLC, Serial No. 86761651 [Refusal to register the product configuration shown below for "electric induction cooktops" on the ground that the applicant's evidence failed to establish that the configuration has acquired distinctiveness under Section 2(f).


    January 18, 2018 - 2 PM: In re Branded LLC, Serial Nos. 86529647 [Refusal to register TWEEDS for "shirts; sweaters" on the ground of genericness].



    January 24, 2018 - 10 AM: In re FabFitFun, Inc., Serial No. 86847381 [Section 2(d) refusal of the mark I'M SMOKING HOT for cosmetics and personal care products SMOKIN' HOT SHOW TIME for"cosmetics; mascara"].

    Read comments and post your comment here.

    TTABlog note: Any predictions? See any WYHA?s?

    Text Copyright John L. Welch 2018.

    Friday, December 29, 2017

    TTABlog Quarterly Index: October - December 2017

    E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz.


    Section 2(d) - Likelihood of Confusion:

    Section 2(e)(1) - Mere Descriptiveness:
      Section 2(e)(5) - Functionality:
      Section 2(f) - Acquired Distinctiveness:
      Misuse of Registration Symbol
        Genericness:
        Nonuse/Abandonment/Specimen of Use/Failure to Function:
        Discovery/Evidence/Procedure::
        CAFC Decisions:
        Recommended Reading:
        Other:
        Text Copyright John L. Welch 2017.

        Thursday, December 28, 2017

        TTAB Test: Are Frozen Pizza and Restaurant Services Related For Section 2(d) Purposes?

        The USPTO refused registration of the mark URBAN PIE PIZZA CO. & Design, shown below left, for "frozen pizza not sold or distributed through restaurants" [PIE PIZZA CO. disclaimed], finding the mark likely to cause confusion with the registered marks URBAN PI & Design (one design, adding the words "creative pizza," shown below right), for restaurant services. Applicant argued that the USPTO did not provide the "something more" needed to show that frozen pizza is related to restaurant services, and furthermore it contended that the weakness of the word URBAN supports a finding that the marks are not similar. How do you think this appeal came out? In re Palermo Villa, Inc., Serial No. 86836045 (December 20, 2017) [not precedential] (Opinion by Judge Cynthia C. Lynch).


        The goods/services: The evidence submitted by Examining Attorney Carol Spils suggested that pizzerias often offer frozen versions of their pizzas that are sold through retail stores (including Sbarro's, California Pizza Kitchen, and the beloved UNO brand pizza). The examining attorney also submitted "a sizable number" of third-party registrations identifying frozen pizza and restaurant services under the same mark.

        The Board found applicant's statistical arguments regarding the rareness of one entity offering both frozen pizza and restaurant services to be flawed and unsupported by probative evidence. Similarly, applicant's arguments based on TESS search results were faulty. The fact that many registration for restaurant services do not include frozen pizza, and vice versa, begs the question. The issue is whether consumers are exposed to entities that offer both. Moreover:

        There is no requirement for goods to be found related that all or even a majority of the sources of one product must also be sources of the other product. Therefore, evidence showing only that the source of one product may not be the source of another product does not aid applicant in its attempt to rebut the evidence of the examining attorney.

        The Board also noted that "registrants may have registered the omitted goods/services in a separate registration or may have begun use on those goods/services at a later date."

        The Board concluded that the record amply supports the relatedness of frozen pizza and restaurant services, and this evidence contributes to the required "something more."

        The marks: Applicant pointed to 12 use-based third-party registrations for marks containing the word URBAN for restaurant, bar, or brewpub services. However, applicant provided no evidence of third-party use. Moreover, none of the registrations contain the term URBAN PIE or URBAN PI. "Thus, while the evidence may suggest that consumers can distinguish among marks that contain URBAN along with other matter, the record does not support such a finding as to marks containing the term URBAN PI(E) as a whole."

        Comparing the marks at issue, the Board found them to be very similar. In all three marks, the phrase URBAN PIE/URBAN PI dominates. Applicant argued that "PIE" is "easily distinguishable" from "PI," but the Board noted that PI looks very similar to PIE and sounds identical. Also PI, in the cited marks, appears on a circular design of a pizza or pizza pan, and thus the context gives it the connotation of "pizza pie."

        The Board concluded that the marks have a similar look, sound, meaning, and commercial impression.

        And so the Board affirmed the refusal.

        Read comments and post your comment here.

        TTABlog comment: What do you think?

        Text Copyright John L. Welch 2017.

        Wednesday, December 27, 2017

        DESIGNED WITH YOU IN MIND Fails to Function As a Service Mark, Says TTAB

        The Board affirmed a refusal to register the applied-for mark DESIGNED WITH YOU IN MIND under Sections 1, 2, 3, and 45 of the Trademark Act, finding that the phrase is a "common informational message that fails to function as a service mark" for "wholesale distributorship services featuring consumer goods, namely, floor covering such as rugs and mats, flooring material such as laminates, bedding linens, animal beds, and bathroom accessories." Applicant Dynamix pointed to eight registrations for the identical phrase for various goods and services, but to no avail. In re Home Dynamix, LLC, Serial No. 87116576 (December 21, 2017) [not precedential] (Opinion by Judge David K. Heasley).


        Informational phrases or slogans commonly used in advertising or promotions are not typically perceived as source indicators. They do not identify and distinguish one person's goods or services from those others, and they are merely informational and fail to indicate source.

        The critical inquiry for the Board was this: Would the phrase DESIGNED WITH YOU IN MIND be perceived as a source indicator or as a common informational phrase or slogan? "That perception turns on the proposed mark's wording and the nature and context of its use in the marketplace."

        Examining Attorney Emma Sirignano pointed out that in applicant's specimens of use, the phrase DESIGNED WITH YOU IN MIND is subordinated to applicant's more prominent HOME DYNAMIX mark. Newspaper excerpts retrieved from LEXIS showed use of the phrase by others in an informational manner, including examples from flooring showroom and wholesale businesses.

        Applicant Dynamix argued that none of the examples cited by the examining attorney use the phrase in the context of wholesale distributorships for home products. Applicant caters to wholesale buyers, namely retailers, and not to retail consumers. The retailers, applicant contended, would perceive the phrase as a source indicator.

        The Board found that applicant failed to rebut the examining attorney's evidence. A typical use of the phrase is to convey the idea that the goods are suitable for the intended customers. Applicant's specimens of use confirmed this informational interpretation: the slogan appears in small print in the phrase "Rugs|Mats|Linens - Designed With You In Mind™." The phrase would be perceived as modifying the list of home furnishings that precede it. The use of the "TM" symbol merely indicates applicant's intent that the phrase function as a mark, but does not transform the phrase into a trademark.

        The term "YOU" could refer to retailers or to the end users, but they have a common interest in obtaining goods that are suitable for the intended purpose. The third-party evidence demonstrated the general use of the phrase in advertising directed to both consumers and businesses. Consumers and competitors would view the phrase as informational matter that all competitors may use.

        Dynamix questioned how the examining attorney "could possibly know what consumers are 'accustomed to perceiving' without the benefit of any consumers surveys on the subject." The Board pointed out, however, that examining attorneys "with their limited resources, are not expected to conduct market surveys." If the examining attorney, as here, submits dictionary definitions, specimens of use of the applied-for mark, newspaper articles, and third-party Internet evidence, to support the refusal, the burden shifts to the applicant to show otherwise.

        Applicant submitted copies of eight registrations for the slogan DESIGNED WITH YOU IN MIND for various goods and services. Nonetheless, the determination in this case must be made on the available evidence at the time of examination. The Board is not privy to the record in these other cases and, in any event, is not bound by the actions of examining attorneys in allowing those marks to register.

        In the case of those eight registrations, unlike the present case, we are left to guess what the evidentiary record was: whether the specimens displayed the term under a more prominent mark; whether the term was set in the midst of a description of goods and services; whether dictionary definitions, newspaper articles, or third-party Internet evidence demonstrating common use was adduced. In short,"We do not know what records were before the Examining Attorneys in other cases. Thus, there is little persuasive value in the third-party registrations." In re Best Software Inc., 58 USPQ2d 1314, 1316 (TTAB 2001).

        Here, the examining attorney's evidence demonstrates that businesses and consumers are generally accustomed to encountering the applied-for slogan and would not perceive it as a source indicator but rather as a common informational message.

        And so the Board affirmed the refusal

        Read comments and post your comment here.

        TTABlog comment: Consistency is the hobgoblin of small minds.

        Text Copyright John L. Welch 2017.