TTAB Orders Cancellation of Three Registrations for Bag Closure Configuration Marks Due to Section 2(e)(5) Functionality

In a case argued at Suffolk Law School in Boston on April 4, 2017, the Board granted a petition for cancellation of three registrations for the product configurations shown immediately below, on the ground of Section 2(e)(5) functionality: on the left, a "horizontal stripe adjacent the bag top" for "plastic bags;" in the center, the configuration of flexible plastic reclosable fastener strips (the "zipper flange" mark); and on the right, "a continuous colored stripe extending for the length of plastic film tubing and plastic film sheeting having a continuous reclosable strip on the surface" (the "rollstock" mark) for "reclosable film tubing and plastic film sheeting, not for wrapping." Poly-America, L.P. v. Illinois Tool Works Inc., Cancellation No. 92056833 (October 18, 2017) [precedential] (Opinion by Judge Peter W. Cataldo).

Standing: Of course, standing is a threshold issue that must be proven by a plaintiff in every inter partes case. The plaintiff must show that it has a "real interest," i.e., a direct and personal stake, in the outcome of the proceeding and a reasonable basis for its belief of damage. Ritchie v.Simpson, 50 USPQ2d at 1023 (Fed. Cir. 1999).

The evidence showed that petitioner, a manufacturer and supplier of plastic film and garbage bag products, is planning to sell reclosable food storage bags with colored closures. Although petitioner is not intending to sell flexible plastic reclosable fastener strips or film tubing and sheeting, it seeks to manufacture or purchase those goods for purposes of manufacturing reclosable food storage bags. Petitioner submitted evidence that it risked a suit for infringement of all three of the subject trademark registrations. The Board concluded that petitioner established its standing to challenge the three registrations.

Functionality: A product configuration or product feature is considered to be functional under Section 2(e)(5) if it is (1) "essential to the use or purpose of the article," or if it (2) "affects the cost or quality of the article." TrafFix Devices Inc. v. Mktg. Displays Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001) (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982)). In making its determination under Section 2(e)(5), the Board is guided by the analysis of In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 USPQ 9, 15-16 (CCPA 1982). However, the Supreme Court in TrafFix ruled that if functionality is properly established under Inwood, further inquiry as to the Morton-Norwich factors is unnecessary.

The first Morton-Norwich factor considers whether a utility patent discloses the utilitarian advantages of the design at issue. Petitioner submitted expired U.S. Patent No. 3,054,334, issued on September 18, 1962, entitled "Bag Closure," issued to respondent's predecessor for an "article such as a pouch or similar container having a new and improved resilient type fastener structure." The stated object of the patent is to provide a resilient fastener that would reduce the risk of accidental separation of the fastener. In one embodiment, a pair of flanges assist in the separation of the two strips that form the seal. The patent states that "[e]xcellent results may be obtained" when the strips are of a clear color while one or both of the flanges are colored red.

Claim 6 of the patent specifically recites that "said flange being colored differently than the strips to facilitate identification of the flange and assist in separation of the strips." The Board found that this language "defines the same features of the registered trademarks as described by Respondent, namely, the colored stripe on the reclosable fastener strips shown in each of the three registrations."

Respondent argued that the patent did not describe any utilitarian advantages with regard to the registered marks, and further that the inventor came to understand that "his initial belief was incorrect" and that there never was any functionality to the "Color Line Trademark."

The Board was wholly unimpressed because respondent's predecessor, in arguing against the Patent Examiner's rejection  of the color line feature as lacking utility, asserted that it "affords an advantage." Moreover, the predecessor touted the value of the color line: it "serves a practical purpose. It immediately identifies the point of opening." The predecessor listed the '434 patent in its advertising brochures and submitted the brochures in the underlying application for the color line trademark registration.

Simply put, its predecessors having availed themselves of the protection of the ’434 patent until its expiration, Respondent’s convenient change of heart falls far short of convincing us that the features described in the sixth claim were never functional and may now be the subject of trademark protection.

Respondent contended that, even if the Color Line Trademark "may have been intended to have some functional benefits when first conceived a trademark can become non-functional over time."  However, there was no explanation as to how the Color Line Trademark became non-functional over time, and respondent's reliance on Eco Mfg. LC v. Honeywell Int’l Inc., 357 F.3d 649, 653 [69 USPQ2d 1296] (7th Cir. 2003), was misplaced. There, the court never decided the ultimate issue of functionality of the "trademarked" round thermostat (although it did suggest three different ways in which the design could be functional).

In sum, the mere argument that one of the inventors of the '434 patented invention conveniently changed his mind about the functionality of the color strip was not sufficient to outweigh petitioner's proofs. It is irrelevant that the invention claimed in the '434 patent was a closure mechanism. "The fact that the color was part of a larger claim does not reduce its significance, particularly in light of the reliance by Respondent's predecessor on the color recited in claim 6."

Because petitioner established functionality under Inwood based upon claim 6 of the '434 patent, it was unnecessary for petitioner to provide evidence that consumers recognize color as a functional feature of the involved goods. Nor was it necessary to present evidence under all four Morton-Norwich factors. Once petitioner established a prima facie case of functionality, it was respondent's burden to provide sufficient evidence of non-functionality. Respondent did not do so.

Therefore the Board concluded that respondent's registered trademarks are functional under Section 2(e)(5) and it ordered that the three registrations be cancelled.

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TTABlog comment: Pretty much open-and-shut, would you say?

Text Copyright John L. Welch 2017.

TTAB Test: Is BAZAAR HOME a Double Entendre, or Merely Descriptive of Retail Furniture Services?

The USPTO refused registration of the mark BAZAAR HOME, finding it merely descriptive of "Retail and online retail store services featuring furniture, home décor items, bedding and kitchenware." On appeal, applicant argued that BAZAAR HOME is a double entendre: it might refer to a very strange dwelling or a Middle-Eastern themed marketplace. How do you think this came out? In re Jeco, Inc., Serial No. 86972193 (October 18, 2017) [not precedential] (Opinion by Judge Anthony R. Masiello).

Examining Attorney Katherine S. Chang submitted dictionary definitions of BAZAAR (a marketplace of shopping quarter, especially in the Middle East) and HOME (a house, apartment, or other shelter), as well as five registrations for household goods in which the word HOME was disclaimed. According to the examining attorney, the combination creates no new commercial impression or incongruity, and no imagination is needed to understand the nature of the services.

As to applicant's double entendre argument, the Board noted that the mark must be considered in the context of applicant's services, and the impression created by the purported double entendre "must be sufficiently strong as to be appreciated in the context of Applicant's services."

We are not persuaded that the words BAZAAR HOME create a double entendre that the public would appreciate. Applicant has not shown that the public would think a “bazaar home” is a strangely designed dwelling or an eldercare facility that conducts charitable activities. These propositions are novel and irrelevant in the context of retail store services, and there is no reason to believe that they would occur to customers in a home products store.

The word "bazaar" has entered the English lexicon, and "its etymology does not create a double entendre any more than would patisserie for a bakery or bistro for a restaurant." And the similarity in sound between BAZAAR and "bizarre" is not relevant, since a similarity to an entirely different word, which is not part of the mark, does not alter the meaning of BAZAAR or of the mark as a whole.

In short, the Board saw no double entendre.

The Board concluded that the juxtaposition of BAZAAR and HOME does not alter the meaning of either term nor created an incongruity. Both words have a clear meaning in the context of a home products store. In the context of applicant's services, "one must strain the imagination to reach the alternative meanings that Applicant proposes." "The clear meaning of the mark as a whole would be immediately apparent without the exercise of 'imagination, thought, and perception to reach a conclusion about the nature of the ... services.'"

And so the Board affirmed the Section 2(e)(1) refusal.

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TTABlog comment: How did you do?

Text Copyright John L. Welch 2017.

Finding Sound Equipment Related to Repair and Retail Services, TTAB Affirms SOUNDSCAPE Refusal

Applicant Soundscape, Inc. pulled out all the stops but its arguments for reversal of this Section 2(d) refusal failed to move the TTAB. The Board affirmed the refusal to register the mark SOUNDSCAPE for various sound equipment and electronic devices, finding the mark likely to cause confusion with the identical mark registered for repair and installation services and retail store services relating to high fidelity equipment. In re Soundscape, Inc., Serial No. 76620682 (October 16, 2017) [not precedential] (Opinion by Judge Anthony R. Masiello).

The cited registration identifies the type of retail stores that would sell the sound equipment identified in the application at issue. The evidence revealed "at least one" retailer that offers its own brand of sound equipment alongside others. There are no limitations as to trade channels in the application or cited registration, and so the Board "must anticipate the possibility that Applicant's goods will be sold in retail stores like Registrant's." Applicant argued that its goods are "for professional and commercial applications," but there was no such limitation in its trademark application.

Applicant contended that registrant's services are rendered to a local market via a single store in Baltimore. The Board pointed out, however, that this limitation cannot be read into the registration; the registration is evidence of registrant's right to exclusive use of its mark in nationwide commerce. Similarly as to applicant's claim that it sells almost exclusive by phone, catalog, and internet channels, nothing in its application would restrict sales of the goods from being sold through a showroom or with retailers like registrant.

Next, applicant asserted that its own customers are sophisticated and that customers in registrant's stores are assisted by knowledgeable salespeople. Again the Board noted that there are no such limitations in the application and many of applicant's goods are ordinary consumer items. Moreover, there was no evidence that retail store personnel provided sophisticated guidance.

Applicant then claimed that there is an oral coexistence agreement with registrant, and the two have coexisted for many years without confusion. However, applicant provided no information upon which the Board could assess the supposed agreement. There was no corroboration from registrant as to the agreement's terms, or even its existence. Similarly an ex parte assertion regarding lack of confusion carries little weight absent details regarding the use and absent corroboration by the other party.

Finally, applicant pointed to its ownership of a decades-old registration for the mark SOUNDSCAPE for "outdoor loudspeakers," arguing that this case is similar to In re Strategic Partners, Inc. There, the Board reversed a refusal to register ANYWEAR for footwear because applicant already owned a registration for the plural ANYWEARS for footwear, which earlier registration had coexisted with the cited registration for more than five years. Here, in contrast, the goods in the involved application are substantially broader than the "outdoor speakers" of the prior registration.

And so the Board affirmed the refusal to register.

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TTABlog comment: Would you have thought any of applicant's arguments had a prayer of succeeding?

Text Copyright John L. Welch 2017.

TTAB Finds SUNBELT ORGANIC Confusable With SUNBELT and SUNBELT BAKERY For Some Food Items

Applicant Coastal Sunbelt sought to register the mark SUNBELT ORGANIC, in standard form and in several design forms, for "organic foodstuffs, namely, salsa" and "processed organic fruits and vegetables" [ORGANIC disclaimed]. Opposer claimed a likelihood of confusion with the registered marks SUNBELT and SUNBELT BAKERY (including in the design form shown further below) for granola, granola bars, snack bars, cereal, cookies and snack cakes [BAKERY disclaimed]. Of course the marks are similar, but what about the goods? McKee Foods Kingman, Inc. v. Coastal Sunbelt Produce, LLC, Opposition No. 91224476 (October 13, 2017)[not precedential] (Opinion by Judge Marc A. Bergsman).

The parties stipulated that 16 third-parties "offer for sale" various combinations of the involved goods under the same mark. (Only one sold salsa). The Board therefore inferred that the goods of the parties may emanate from the same source.

The Board found that consumers are likely to believe that organic fruits and vegetables are different lines of products sold by a company specializing in healthful foods. Fruits, vegetables, and granola may be sold in the same section or different sections of grocery stores. However, there was no evidence as to where salsa may be found.

The evidence indicated that many of opposer's products contain fruit, and furthermore consumers may combine fruit with other items in opposer's line. The Board concluded that applicant's fruits and vegetables are related to opposer's products. However, there was insufficient evidence to find salsa related thereto.

The products of the parties are sold in the same channels of trade to the same classes of consumers. Purchasers who exercise a high degree of care in purchasing organic products may not exercise the same degree of care when purchasing granola products.

Opposer provided the results of an Eveready-type survey purportedly showing a 20-23.4 percent confusion level vis-a-vis organic fruit. That outcome is sufficient to support an inference that confusion is likely as to these goods. However, because there was no check on the accuracy of the survey and no attempt to verify that any of the respondents actually participated in the survey, the probative value of the survey was minimized.

The Board therefore sustained the opposition as to the four applications covering fruits and vegetables, and dismissed the opposition as to the two salsa applications.

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TTABlog comment: So the opposer winds up with rather broad coverage for the term SUNBELT.

Text Copyright John L. Welch 2017.

TTAB Rejects 5-Year Acquired Distinctiveness Claim Due To Lack of Continuous Use

In a rare opposition based on the ground of Section 2(e)(2) geographical descriptiveness, the Board rejected applicant's Section 2(f) claim of acquired distinctiveness based on five years of use, finding that applicant's use had not been continuous during that period. John Edward Guzman d/b/a Club Ed Surf School and Camp v. The New Santa Cruz Surf School, LLC, Opposition No. 91220843 (October 13, 2017) [not precedential] (Opinion by Judge Albert Zervas).

Applicant New Santa Cruz sought to register the mark SANTA CRUZ SURF SCHOOL for surfing instruction and related website services [SURF SCHOOL disclaimed]. Applicant overcame the Section 2(e)(2) refusal when the USPTO accepted its claim of acquired distinctiveness based solely on a statement of substantially exclusive and continuous use of the mark for at least the prior five years.

Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), provides that “proof of substantially exclusive and continuous use” of a designation “as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made” may be accepted as prima facie evidence that the mark has acquired distinctiveness as used in commerce with the applicant’s goods or services. Applicant's declaration under Section 2(f) was dated November 25, 2014.

The Board pointed out that when the term at issue is "highly descriptive," a statement of five years’ use alone will be deemed insufficient to establish acquired distinctiveness. Here there was no evidence that SANTA CRUZ SURF SCHOOL is highly descriptive of applicant' services, and so the Board found that "the designation has an ordinary level of descriptiveness and that a declaration attesting to substantially exclusive and continuous use of a designation as a mark in commerce for the five years before the date on which the claim of distinctiveness is made may establish acquired distinctiveness of Applicant’s designation."

Exclusive Use: Dylan Greiner, owner of applicant's predecessor-in-interest testified that no other entity was using the applied-for mark after his company acquired the mark in 2000 or 2001. In December 2013, Applicant New Santa Cruz acquired the mark from Greiner's company. Opposer Guzman provided no probative evidence to show use of the phrase by others, and so opposer did not carry its burden on this point.

Continuous Use: Dylan Greiner owned and operated Santa Cruz Surf School, Inc. in Santa Cruz, California from 2009 to approximately August 16, 2013, when he was arrested and imprisoned. As to the acquisition of the business by applicant in December 2013, "the Business Sale Agreement provides insight into the condition of the business purchased by Mr. Meyberg:"

The business has not been operating for several months. The business currently does not have a physical business  location due to cancellation of the commercial lease. The insurance policy which is required to operate the business was cancelled. The website is not operating and has an outstanding bill. Numerous independent contract[or]s who taught lessons were never paid their last pay check. The business operating permit will expire at the end of December 2013 and the City of Santa Cruz’s Parks and Recreation Department’s Heads have expressed their intent to not renew the operating permit. The vehicle trailer is not registered. The business’ reputation and good will has been substantially diminished.

The Board found this document admissible under an exception to the hearsay rule for "Statements in Documents That Affect an Interest in Property." Fed. R. Evid. § 803(15).

The Board concluded that the Santa Cruz Surf School was not in operation from at least the time of Mr. Greiner’s arrest until the purchase of the surf school by Applicant, a period of four months in the fall of 2013. Moreover, there was no documentary evidence that applicant’s predecessor and applicant offered surfing lessons or the rental of surfboards during a period of more than than one year after Mr. Greiner’s arrest. The Board concluded that the mark was not used from approximately August 16, 2013 until after November 5, 2014 for the identified services.

As to the website services, the Business Sale Agreement states that the website was not operating and had an outstanding bill. The Board therefore concluded that the applied-for mark was not in continuous use for five years preceding the date of the Meyberg declaration.

Other Evidence: Putting aside the Section 2(f) declaration, the Board looked to the evidence of record to see whether it supported a claim of acquired distinctiveness. "At best, Applicant’s evidence reflects use of SANTA CRUZ SURF SCHOOL from approximately 1997 until trial, with an interruption of more than one year from late 2013 through 2014. The passages of time, by itself, may be insufficient to support the Section 2(f) claim.

The Board concluded that "Applicant and its predecessors-in-interest have provided the services identified in the involved application to only a limited number of customers on an irregular basis. We therefore conclude that Applicant has not satisfied its burden of demonstrating that SANTA CRUZ SURF SCHOOL has acquired distinctiveness."

And so the Board sustained the opposition on the ground that SANTA CRUZ SURF SCHOOL is primarily geographically descriptive under Section 2(e)(2) and has not acquired distinctiveness.

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TTABlog comment: Note that the 15-month period of nonuse was not considered as abandonment abandonment of the mark, presumably because it was too short a time, and there was an intent to resume use.

Text Copyright John L. Welch 2017.

GREATER OMAHA Not Confusable With OMAHA STEAKS for Meat, Says TTAB

In a 74-page opinion, the Board dismissed an opposition to the mark GREATER OMAHA & Design, shown below left, finding the mark not likely to cause confusion with the registered mark OMAHA STEAKS, both for meat. However, it sustained petitions to cancel registrations for the marks shown below center and right, finding the marks to be confusable with the registered marks OMAHA STEAKS and OMAHA STEAKS ANGUS, respectively. Omaha Steaks International, Inc. v. Greater Omaha Packing Co., Inc., Consolidated Opposition No. 91213527 and Cancellations Nos. 92059629 and 92059455 (September 30, 2017) [not precedential] (Opinion by Judge Jyll Taylor).

GREATER OMAHA & Design: Plaintiff Omaha Steaks, Inc. claimed that its OMAHA STEAKS mark is famous, but its evidence lacked context and failed to convey the extent to which customers recognize the mark. It sales figures were impressive, but there was no indication as to how they translate into market share. The Board was uncertain as to which of the OMAHA STEAKS marks was being advertised and how they are perceived by customers.

In view of the extreme deference accorded to famous marks, a party claiming fame must "clearly prove it." Plaintiff demonstrated a "reasonable degree of recognition," but the evidence was insufficient to support a finding that the marks are famous, "particularly in light of the fact that Petitioner's OMAHA STEAKS marks are not inherently distinctive."

Defendant asserted that the OMAHA STEAKS marks are extremely weak due to third party use and registration of marks and names in which the first word is OMAHA, for beer or food services. Moreover, the city of Omaha, Nebraska, is widely known as a geographic source of beef. In addition, defendant has used the GREATER OMAHA mark for 96 years, has sold its products to plaintiff since the 1950s, and its sales have increased to nearly $1.7 billion in 2015. Therefore, defendant contended, consumers have been conditioned to associate GREATER OMAHA with defendant, further proving the weakness of the OMAHA STEAKS mark.

Citing Jack Wolfskin and Juice Generation, the Board found that the designation OMAHA, when used in a mark, "may be perceived as an indication of the geographic location of the producer of the goods or the geographic origin of the goods themselves. Because many companies may be located in OMAHA, the power of this term to indicate a single commercial source is reduced." Consequently, a mark comprising the word OMAHA for the involved goods and/or services is entitled to only a narrow scope of protection.

Turning to the marks, defendant's mark is dominated by the phrase GREATER OMAHA, while plaintiff's is dominated by OMAHA, since STEAKS has been disclaimed. Even though defendant disclaimed all of the words in its mark, the words cannot be ignored, and the words GREATER OMAHA can still be dominant.

The Board found the word GREATER to be a "prominent point of difference that causes Defendant's marks to differ in appearance and sound from Plaintiff's mark." The additional wording in each mark also contributes to the differences between the marks.

In short, although there are similarities between the marks, the marks are specifically different in sound, appearance and meaning. When the geographically descriptive term “Omaha” is viewed with the evidence of third-party uses of OMAHA trademarks and trade names, these differences outweigh the similarities, resulting in different overall commercial impressions.

The Other Two: The Board found that defendant's registered marks are dominated by the words OMAHA HEREFORD and OMAHA NATURAL ANGUS, respectively. Although the word OMAHA in plaintiff's marks is weak, the Board did not find any elements to distinguish defendant's marks form plaintiff's marks.

Laches: Plaintiff delayed for 46 months before filing its petition for cancellation of the OMAHA NATURAL ANGUS registration. However, the Board found laches inapplicable for two reasons: first, plaintiff's delay was excusable because defendant had not been in the retail market space until it recently contemplated a move in that direction; and second, confusion between the marks is inevitable.

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TTABlog comment: Hat tip to Friend of the Blog and fellow Bostonian, Steve Samuels, for his efforts on behalf of Greater Omaha.

Text Copyright John L. Welch 2017.

Precedential No. 32: TTAB Defers Decision on Motion to Strike Testimony Declaration

In this consolidated proceeding concerning the mark LEHMAN BROTHERS, Tiger Lily Ventures Ltd. moved to strike certain testimony and evidence submitted by Barclays Capital Inc. during the latter's case-in-chief, on both procedural and substantive grounds. The Board struck some of Barclays' evidence but refused to rule regarding the admissibility of two testimonial declarations, deferring that question until trial.  Barclays Capital Inc. v. Tiger Lily Ventures Ltd., Oppositions Nos. 91219477, 91219478, and 91219549 (September 20, 2017) [precedential].

The Board found that Tiger Lily's procedural objections were timely, since they were promptly raised after the close of Barclays' initial testimony period, while there was still an opportunity to cure. Tiger Lily objected to the descriptions of the evidence included in four notices of reliance. Rule 2.122(g) requires that a notice of reliance indicate generally the relevance of the evidence and associate it with one or more of the issues in the proceeding. 

The Board found two of Barclays' notices of reliance to be acceptable, but the other two to be inadequate in part because they failed to indicate which pages of certain exhibits related to which du Pont factor, or which element of Barclays' dilution claim, or which element of its false association claim, or which defense to a particular claim made by Tiger Lily. And so the motion to strike was granted in part, but with leave to amend the notices of reliance within 20 days.

The Board also granted Tiger Lily's motion to strike from the record certain press releases of Barclays (not publications in general circulation), but denied a motion to strike several financial reports downloaded from the LEXIS/NEXIS online database, noting however that such reports have limited probative value and cannot be used to prove the truth of facts stated therein.

Substantive Ruling: Tiger Lily objected to the admissibility of two testimonial declarations, but the Board pointed out that such objections are considered by the Board only at final hearing. In particular, Tiger Lily contended that the declarations of Barclays' in-house counsel and of a paralegal at its outside counsel's firm should be stricken because of bias and lack of credibility. Tiger Lily suggested that the testimony is inappropriate under 37 C.F.R. Section 10.63 (now Section 11.307) which states that an attorney must withdraw from representation of a party if it appears that the attorney is likely to appear as a witness or becomes a witness for that party.

Tiger Lily maintained that the issue should be decided now because, under Rule 2.123(c), a "cost-shifting burden" has been imposed on the party who wishes to cross-examine the declarant. In the face of clear precedent against an attorney giving evidence, Tiger Lily argued, it would unnecessarily burden the cross-examining party by inflating the costs of the deposition process, costs that could be saved by an early ruling.

The Board was unmoved. It noted that even with oral testimony, the cross-examining party must pay its own travel expense and attorney fees. Thus the new costs to the cross-examining party are the court reporter and the cost of the venue. This minor cost-shifting was determined "to support the goal of the final rule to create litigation efficiencies by 'minimiz[ing] the ability of a party seeking cross-examination to thwart the other party's efforts to rein in the cost of litigation by opting for testimony by affidavit.'"

Moreover, Tiger Lily need not cross-examine the declarants in order to lodge its objections. It could forego cross examination and still raise the matter in its final brief. "Thus there is not necessarily a cost-shifting burden incurred solely for raising substantive objections."

The fact that a party may choose to submit its testimony by way of declaration or affidavit does not affect how evidence is presented to the Board: outside its presence followed by submission to a panel of judges for decision.

Rule 2.123(f) states that "[o]bjections to the competency of a witness or to the competency, relevancy, or materiality of testimony ... may not be considered until final hearing." Accordingly the Board deferred until final hearing the decision on the motion to strike the two declarations. 

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TTABlog comment: The cost-shifting of Rule 2.123(c) was also the subject of the recent precedential decision in United States Postal Service v. RPost Communication Limited, Opposition No. 91210479 (August 31, 2017) [TTABlogged here].

Text Copyright John L. Welch 2017.

TTABlog Road Trip: AIPLA Annual Meeting, Washington, D.C., October 21st

Yours truly, the TTABlogger, will be heading down to our Nation's Capital for the 2017 Annual Meeting of the American Intellectual Property Law Association (AIPLA) in Washington, D.C. (Register here). The "Year In Review" will be presented on Saturday morning, October 21st. My topic? Wait for it .............. TTAB Developments! (Brochure here).

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Text Copyright John L. Welch 2017.

TTAB Test: Which Of These Three Section 2(d) Refusals Was Reversed?

It has been said that one can predict the outcome of a Section 2(d) appeal 95% of the time just by looking at the marks and the goods or services. Presented for your contemplation are three recent TTAB decisions in Section 2(d) appeals. One was reversed. What do you think? [Answer in first comment].


In re Nikon Corporation, Serial No. 86828751 ((October 6, 2017) [not precedential] [Section 2(d) refusal to register the mark MMD (in standard characters) for “laser scanners for industrial inspection and for geometrical measurement, and not for use with land surveying equipment; software for collection and interpretation of data in the operation of laser scanners, not for use with land surveying equipment,” in view of the registered mark shown below for "levelling rods; surveying chains; surveying compass needles; surveying instruments; surveying machines and instruments; transits; tripods”].

In re Ruby A. Bacardi, Serial No. 86809072 (October 3, 2017) [not precedential] [Section 2(d) refusals of the marks THIRTEEN 1330 and 1330 for "Clothing, namely, dresses, skirts, blouses, shirts, pants, and jackets," in view of the registered mark LOGAN 1330 for various clothing items].

In re Benchmark Brewing LLC, Serial No. 86586142 (September 29, 2017) [not precedential] [Section 2(d) refusal of the mark BENCHMARK BREWING COMPANY for "taproom services" [BREWING COMPANY disclaimed] in view of the word + design mark shown below for "restaurant services [RESTAURANT disclaimed]].

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TTABlog comment: How did you do?

Text Copyright John L. Welch 2017.

TTAB Test: Is "PERSON" Merely Descriptive of Wearable Electronic Devices?

The USPTO refused registration of the applied-for mark PERSON, finding it merely descriptive of  wearable computers, wearable electronic devices, smart watches, and other goods. The examining attorney maintained that the term "describes a significant feature of these goods for wear on the human body, distinguishing them from a wearable device for, for example a dog or horse." How do you think this appeal came out? In re Caleb Suresh Motupalli, Serial No. 86573858 (October 2, 2017) [not precedential] (Opinion by Judge Thomas W. Wellington).

The examining attorney's evidence of mere descriptiveness was minimal. She submitted two examples of third-party use of the term "person" in connection with wearable electronic devices, and dictionary definitions of "person" (a human being) and "consumer" (a person who buys goods and services). Internet excerpts showed the term "wearable computing" to mean "electronic devices that are worn on the body or clothes."  From this evidence the examining attorney concluded that the applied-for mark "describes the intended use of the goods."

Applicant Motupalli, appearing pro se, argued that the examining attorney took too broad an approach; "if PERSON is descriptive for this reason then it is descriptive of virtually all goods, as long as the goods are used by humans." The examining attorney agreed that "Applicant has correctly stated the policy."

On the scant evidence of record, the Board found that PERSON, by itself, does not "convey any meaningful information regarding a quality, feature, function, characteristic or purpose of the identified goods." The term is extremely broad: a "person" will be the consumer for all goods and service imaginable.

There is insufficient evidence demonstrating that consumers would readily understand it in connection with the identified goods as conveying the information that the intended end user is a human being. The “immediate idea” of a quality, feature, function, or characteristic of the goods or services conveyed by a descriptive term “must be conveyed forthwith with a ‘degree of particularity.’”

The Board found that PERSON does not convey such an "immediate idea" with "a degree of particularity." The term is "too vague as to what or how a "person" is being referred to - whether it is the consumer, the end user of the goods, or if the term is somehow an expression of the goods being worn 'on the person' - rendering the mark at least suggestive, not merely descriptive, of the goods and thus registrable on the Principal Register."

And so the Board reversed the Section 2(e)(1) refusal.

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TTABlog comment: How did you do?

Text Copyright John L. Welch 2017.

Precedential No. 31: TTAB Dismisses Section 2(d) Claim Due to Lack of Use of Opposer's Foreign Mark in USA

Because opposer failed to allege use of her mark SULBING in the United States, the Board dismissed her claim of likelihood of confusion under Section 2(d). The Board observed that the "well known mark" doctrine does not provide a basis for a Section 2(d) claim, nor does the United States-Korea Free Trade Agreement. However, opposer's claim that the opposed application was void ab initio due to non-use survived the motion to dismiss. Sun Hee Jung v. Magic Snow, LLC, Opposition No. 91226056 (September 20, 2017) [precedential].

Opposer Sun Hee Jung alleged, in a second amended notice of opposition, that she filed applications with the USPTO to register her marks (containing the word SULBING) under Sections 1(b) or 66(a) of the Trademark Act, and that her marks had become famous to Korea-Americans in the United States and had acquired secondary meaning by means of her website, social media, and persons traveling between Korea and this country. However, she did not allege that her marks were in use in the United States. [Note: her applications were filed after applicant's filing date, and so the applications could not provide priority].

Section 2(d) expressly requires that an opposer establish either a mark registered in the United States or "a mark or trade name previously used in the United States." Opposer was relying on the so-called "well-known mark" doctrine, under which "a party asserts that its mark, while yet unused in the United States, has become so well known here that it may not be registered by another." Fiat Grp. Autos. S.p.A. v. ISM Inc.,  94 USPQ2d 1111, 1113 (TTAB 2010).

The Board pointed out, however, that this doctrine "provides no basis for a Section 2(d) ground for opposition because it does not establish use of the mark in the United States as required by the statutory language of the section." See Bayer Consumer Care AG v. Belmora LLC, 90 USPQ2d1587, 1592 n.4 (TTAB 2009). The Board does not recognize the well known marks doctrine as a basis for establishing priority in inter partes proceedings, and so opposer's pleading of priority under Section 2(d) was insufficient.

The Board therefore dismissed the Section 2(d) claim with prejudice, observing that further attempts to plead the claim would be futile.

Opposer also invoked the United States-Korea Free Trade Agreement ("KORUS"), but it was not clear whether she meant to assert an independent cause of action, or whether this was part of her claim of priority and likelihood of confusion under the "well known mark" doctrine. In any event, KORUS (like the Paris Convention) is not self-executing and does not provide an independent cause of action in Board proceedings. If KORUS was invoked in support of opposer's Section 2(d) claim, it failed, for the reasons discussed above, to establish priority.

Finally, turning to opposer's non-use claim, the Board observed that an application may be opposed on the basis that the mark was not in use in commerce on the identified goods or services at the time that the use-based application was filed, or at the time an allegation of use was filed in a Section 1(b) application.

Opposer alleged that applicant Magic Snow had only one store, located in Virginia, at the time it filed its allegation of use, that applicant's sales were made in person to individuals at its store, and that such use was not in regulable commerce: i.e., applicant's use was intrastate and not in "commerce" as defined by the Trademark Act.

The Board, however, pointed out that goods need not cross state lines in order that Congress may regulate that activity under the Commerce Clause. Christian Fellowship Church v. adidas AG, 120 USPQ2d 1640, 1646 (Fed. Cir. 2016). Similarly, services need not be rendered in more than one state to satisfy the use-in-commerce requirement. Larry Harmon Pictures Corp. v. Williams Restaurant Corp., 18 USPQ2d 1292, 1295 (Fed. Cir.  1991).

Opposer alleged that Magic Snow's services are limited to intrastate commerce, but it failed to allege that "Applicant's rendering of its services, in the aggregate, does not have an effect on commerce that is regulable by Congress." Therefore, the Board found that opposer had failed to adequately plead her non-use claim, and it granted the motion to dismiss.

However, the Board allowed applicant twenty days within which to re-plead her non-use claim.

Read comments and post your comment here.

TTABlog comment: Does opposer have a claim under Section 43(a)? The Fourth Circuit ruled that Bayer had such a claim even though its mark FLANAX is not used in the United States.

BTW, even if properly pleaded, opposer's non-use claim seems doomed to failure on the merits. What do you think?

Text Copyright John L. Welch 2017.

Precedential No. 30: Party that Cross-Examines Testimony Declarant Bears The Expenses

In this opposition to registration of the mark CERTIFIED EMAIL for various email services, Opposer USPS submitted the testimony declarations of four witnesses, all located in the Washington, D.C. area. Applicant RPost served a notice to take oral cross-examination of these witnesses at its attorney's offices in Santa Monica, California. USPS moved to quash the notice of election and to require RPost to conduct the oral cross-examinations in Washington, D.C. The Board granted the motion. United States Postal Service v. RPost Communication Limited, Opposition No. 91210479 (August 31, 2017) [precedential].

USPS contended that Santa Monica is not a "reasonable time and place" for the depositions, pointing to Rule 2.123(c), due to the expense, inconvenience, and lost time. RPost pointed out that, although Rule 2.120(b) requires that discovery depositions be taken in the Federal judicial district in which the individual resides, Rule 2.123(c) does not contain such a provision.

The Board noted that rule 2.123(a)(1), effective on January 14, 2017, allows testimony in declaration or affidavit form, subject to the right of an adverse party to "elect to take and bear the expense of oral cross-examination of that witness." The witnesses must be made "available" for cross-examination.

In its Notice of Final Rule making prior to implementation of the new rules, the Board stated that the phrase "reasonable time and place" in Rule 2.123(c) must be read in conjunction with Rule 2.123(a)'s edict that the deposing party "bear the expense of oral cross-examination." The intent of that provision was to add "no burden" on the proferring party in terms of additional travel or attorney expense in connection with producing its witness for oral cross-examination. However, the cross-examining party bears the expense of the court reporter and any accommodations for the taking of the deposition.

Here, opposer's witnesses would each miss two or more days of work to travel to Santa Monica. Had the direct testimony of these witnesses been taken in Washington, D.C., RPost's counsel would have had to travel there to conduct cross-examination. Thus conducting its elected cross-examination in Washington, D.C. would not impose any additional burden on RPost. Therefore Santa Monica is not a "reasonable ... place" for the cross-examination.

The Board further noted that RPost could accept opposer's proposal that the cross-examination be conducted by videoconference or telephone, which would satisfy some of RPost's concerns.

The Board therefore granted the motion to quash and allowed RPost ten days to file a new notice of election of cross-examination of the declarants in Washington, D.C. or any place mutually agreed upon.

Read comments and post your comment here.

TTABlog comment: Currently, a party cannot automatically conduct cross-examination by telephone or videoconference, but must either obtain the other party's consent or file a motion with the Board for permission to do so. Perhaps the rules should be changed to allow cross-examination by phone or videoconference as of right if the party so chooses.

Text Copyright John L. Welch 2017.