Tuesday, August 14, 2018

WYHA? LYNKD Merely Descriptive of Security Devices Controllable by Mobile Phone, Says TTAB

In a six-page decision, the Board affirmed a Section 2(e)(1) refusal to register the mark LYNKD, finding it merely descriptive of electronic monitoring and safety devices controllable by mobile phone, and related software. Applicant's own website stated that "using your smartphone . . . you can LYNK anything!" In re RPH Engineering, LLC, Serial No. 87166080 (August 9, 2018) [not precedential] (Opinion by Judge Susan J. Hightower).

Examining Attorney Jeffrey S. DeFord relied on a dictionary definition of "linked" (Connected, especially by or as if by links) and on printouts from applicant's website. Applicant did not dispute that its goods are "linked," the phonetic equivalent of LYNKD, but argued that this is not a significant feature; rather it is "merely an expected feature of technology device[s] in the age of the Internet of things." The Board was not impressed.

Essentially, Applicant contends that LYNKD is not merely descriptive of its goods because many other goods also are "linked.” This argument is unpersuasive. It is clear from the description of goods that linkage to mobile devices enabling remote control is a key feature and function of Applicant’s electronic monitoring and security devices. Whether other goods share this feature and function is not dispositive. Indeed, Applicant’s argument underscores the fact that registration would be inconsistent with the rights of competitors to use the term "linked" in marketing their own goods

That a word describing a feature of applicant's goods may also describe other goods does not make the word less descriptive. Furthermore, a term may be descriptive even if it does not describe the full scope and extent of the goods; it need describe only a single future or attribute.

Finally, applicant feebly contended that "LYNKD is a very broad term which could include many categories of goods." The Board pointed out once again that mere descriptiveness is not a guessing game; one must consider the mark in the context of the identified goods, not in the abstract.

The Board found that LYNKD immediately conveys information about the features and functions of applicant's goods. Therefore the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Well, would you have appealed?

Text Copyright John L. Welch 2018.

Monday, August 13, 2018

WYHA? LEGION OF GOOD WILL Confusable with GOODWILL for Charitable Services, Say TTAB

Sometimes not-so-good things happen to good people. The Board affirmed a refusal to register the mark LEGION OF GOOD WILL (in standard character form) for "Charitable services, namely, organizing and developing projects that aim to improve the lives of underprivileged and impoverished people; and Education services in the nature of early childhood instruction," finding it likely to cause confusion with the registered mark GOODWILL (in standard character form) for charitable services "for purposes of providing education, training, career, and other personal opportunities and services to benefit people with disabilities and disadvantaging conditions;" and "Child and adult day care service." Applicant also failed to submit verification of its specimens of use, another basis for refusal that the Board affirmed. In re Legion of Good Will aka LGW, Serial No. 87164803 (August 10, 2018) [not precedential] (Opinion by Judge George C. Pologeorgis).

Evidentiary Issues: With its appeal brief, applicant included dictionary definitions of the words in its mark, as well as webpage excerpts from its website. It also made reference in its brief to a third-party registration that had not been submitted during examination of its application. Examining Attorney Jonathon Schlegelmilch objected to all of this evidence as untimely.

The Board took judicial notice of the dictionary definitions but otherwise upheld the examining attorney's objection. The evidentiary record in an application should be complete prior to the filing of an appeal.The proper route for applicant would have been to request that the Board suspend the appeal and remand the file to the Office for further examination.

Strength of the Cited Mark: As to conceptual strength, the dictionary definitions submitted by applicant demonstrated that the GOODWILL mark "is at worst suggestive of the benevolent nature of the services at issue." There was no evidence that the cited mark is commercially weak: i.e., no evidence of third-party registration or use of similar marks. The Board therefore accorded the GOODWILL mark "the normal scope of protection to which suggestive marks are entitled."

Similarity of the Marks: The Board found the marks to be "similar in appearance and sound to the extent that Applicant’s LEGION OF GOOD WILL mark fully encompasses the registered GOODWILL mark." As to connotation, the mark GOODWILL "connotes kindness and benevolence and the applied-for mark very similarly connotes a great number or multitude of persons engaged in kindness and benevolence." Therefore, the marks are "far more similar than dissimilar in connotation or meaning." The Board observed, moreover, that consumers often use shortened forms of names, and "it is possible that Applicant and its services are referred to as 'Good Will.'" The presence of the words "LEGION OF" in applicant's mark "does not significantly diminish the strong similarities in connotation and overall commercial impression engendered by these two marks."

The Services: Registrant’s charitable services and volunteer programs, as recited in its registration, are encompassed by applicant’s projects intended to benefit the underprivileged and impoverished. Thus the class 35 services are identical in part.

As to applicant's educational services (class 41), the examining attorney introduced website evidence of entities offering, under the same marks, childhood education services like those identified in the subject application and child care services of a type identified in the GOODWILL registration. In addition, the examining attorney submitted 10 use-based third-party registrations covering services identified in the involved application and cited registration.

The Board must presume that the overlapping services travel in the same, customary channels of trade to the same classes of consumers.

No Actual Confusion: Applicant asserted the the absence of actual confusion, despite concurrent use of the marks since 1985, indicates that there is no likelihood of confusion. However, the Board pointed out once again that it is not necessary to show actual confusion in order to establish likelihood of confusion. Moreover,

[p]articularly in an ex parte proceeding, Applicant’s assertion of the absence of actual confusion is of little probative value in our determination on the issue of likelihood of confusion because the Board cannot readily determine whether there has been a significant opportunity for actual confusion to have occurred, such that the absence of confusion is meaningful. See In re Opus One Inc., 60 USPQ2d 1812, 1817-1818 (TTAB 2001); In re Kangaroos U.S.A., 223 USPQ 1025 (TTAB 1984); In re Jeep Corp., 222 USPQ 333, 337 (TTAB 1984). In those situations where the Board has recognized the absence of actual confusion as probative in an ex parte setting, there existed a “confluence of facts” which together strongly suggested that the absence of confusion was meaningful and should be given probative weight. See In re Opus One Inc., 60 USPQ2d at 1817; In re Jeep Corp., 222 USPQ at 337. Such a "confluence of facts" is not present in this record.

Conclusion: Balancing the relevant du Pont factors, the Board found confusion likely and it therefore affirmed the refusal.

Specimens of Use: Applicant ignored the examining attorney's requirement that it verify its specimens of use, as required by Rule 2.20, and applicant did not address the issue on appeal. "In consequence thereof, Applicant has failed to submit sufficient evidence of actual use of the applied-for mark in commerce as required under Sections 1 and 45 of the Trademark." And so the Board affirmed the second refusal to register.

Read comments and post your comment here.

TTABlog comment: As to actual confusion, it is often noted that the registrant may have evidence of actual confusion but has no opportunity to submit same in this ex parte exercise.

Text Copyright John L. Welch 2018.

Friday, August 10, 2018

USPTO Seeks Candidates for Deputy Chief Administrative Trademark Judge at the TTAB

The USPTO is seeking applications for the position of Deputy Chief Administrative Trademark Judge at the Trademark Trial and Appeal Board. The announcement is open until  September 28, 2018. Further details may be found at the USA Jobs website, here.

Duties: Summary

The Deputy Chief Administrative Trademark Judge (Deputy CATJ) serves as a full voting member of the Trademark Trial and Appeal Board (Board) as provided by Title 15 U.S.C. § 6, and exercises full administrative, legal, and technical authority over the Board, as supervised by the Chief Administrative Trademark Judge (CATJ). The Deputy CATJ also is responsible for working with the Chief Judge to develop and deploy the strategic and policy initiatives of the Board, as needs may be identified by the Board or as strategic initiatives may be required by the Office of the Under Secretary and Director of the USPTO, to which the Board reports.

The Office of Human Resources strongly encourages applicants applying for positions to read the vacancy announcement in its entirety before submitting application materials for this position. If you have any questions or concerns about the application procedure or processes, please contact the individual listed under 'Contact Information.' Failure to follow instructions in the announcement will result in your application not receiving consideration.


The Deputy Chief ATJ will serve as part of the Trademark Trial and Appeal Board along with the Under Secretary and Director, Deputy Director, Chief ATJ, Commissioners of Patents and Trademarks, along with Administrative Trademark Judges. Any three of the previously listed employees can comprise a legal panel of the Board to render a decision in a trademark appeal or an opposition, cancellation, concurrent use or interference proceeding.

The Deputy CATJ is also responsible for the following:

  • Working with the CATJ to develop and deploy the strategic and policy initiatives of the Board, as needs may be identified by the Board or as strategic initiatives may be required by the Office of the Under Secretary and Director of the USPTO, to which the Board reports.
  • Developing and implementing the USPTO’s rules of practice governing trademark appeals and trademark opposition, cancellation, and concurrent use proceedings.
  • Developing and implementing the Standard Operating Procedures necessary for the internal operation of the Board. Furthermore, the CATJ is responsible, by delegation, for adjudicating certain petitions to the Director of the USPTO; which responsibility may be further delegated to and shared with the Deputy CATJ, Board Senior Level attorney, or individual ATJs.
  • Serving under the administrative direction of the CATJ who reports to the Office of the Under Secretary and Director of the USPTO. The Deputy CATJ is also responsible for the comprehensive executive management, strategic planning, policy development, and financial functions essential to effective Board operations.
  • Assigning panels of administrative trademark judges to adjudicate all trademark appeals and trademark opposition, cancellation, concurrent use and interference proceedings and periodically serves on such panels. The CATJ and Deputy CATJ also develop and maintain quality, timeliness, and productivity performance standards for the administrative trademark judges, attorneys and support staff. The Deputy CATJ serves as the Acting Chief Administrative Trademark Judge during the absence of the CATJ and serves on a variety of USPTO's enterprise-level committees.
  • Interacting with the legal community, including the Court of Appeals for the Federal Circuit, bar associations, etc.; actively participates in public conferences and meetings; and makes presentations to foreign dignitaries or officials regarding the Board and its operations.

Travel Required

Occasional travel - There may be occasional travel.


Applicant's Renunciation of Underlying International Registration Results in Judgment for Opposer

WHB Licensing, owner of the mark BRAUM'S for restaurant services and various food items, opposed a Section 66(a) application (request for extension of protection) to register the mark BRAM'S, in design form, for restaurant services and various food items. Applicant Ladage Beheer BV, a Netherlands limited liability company, based its U.S. application solely on its International Registration. Applicant renounced its International Registration (effective June 18, 2018), and on July 26, 2018 the International Bureau of WIPO transmitted to the USPTO  a NOTIFICATION OF DEATH OF INTERNATIONAL REGISTRATION. The USPTO issued a Notice of Abandonment on July 28, 2018. WHB Licensing, LP v. Ladage Beheer BV, Opposition No. 91237279 (August 8, 2018) [not precedential].

Trademark Rule 7.30 states:

When the International Bureau notifies the Office of the cancellation or expiration of an international registration, in whole or in part, the Office shall cancel, in whole or in part, the corresponding pending or registered extension of protection to the United States. The date of cancellation of an extension of protection or relevant part shall be the expiration of the corresponding international registration or relevant part.

Consequently applicant's extension of protection is considered cancelled as of June 16, 2018 and the subject application stand abandoned. Rule 2.135 provides that if an applicant in an inter partes proceeding files an abandonment without the written consent of the other party, judgment shall be entered against applicant. And so the Board sustained the opposition.

Read comments and post your comment here.

TTABlog comment: Braum's has some 300 stores in operation in Oklahoma, Texas, Kansas, Arkansas, and Missouri.

Text Copyright John L. Welch 2018.

Thursday, August 09, 2018

Finding PILLOW PODS Confusable With PILLOW PAWS for Socks, TTAB Grants Cancellation Petition, Dismisses Section 18 Counterclaim

The Board granted a petition for cancellation of a registration for the mark PILLOW PODS for "socks," finding a likelihood of confusion with the registered mark PILLOW PAWS for "slipper socks, slippers, socks." Respondent's evidence of third-party use and registration of PILLOW-formative marks was not sufficiently voluminous or extensive to seriously weaken the pleaded mark. Respondent's Section 18 counterclaim, seeking to narrow the application and petitioner's registration, was rejected because the amendments would not avoid a likelihood of confusion. Principle Business Enterprises, Inc.v.DML Marketing Group, Ltd., Cancellation No. 92061653 (August 6, 2018) [not precedential] (Opinion by Judge Lorelei Ritchie).

The Goods: Because both the application and the pleaded registration include identical goods (socks), the Board must presume that they travel in the same trade channels to the same classes of customers.

Strength of Petitioner's Mark: Respondent contended that PILLOW is suggestive of petitioner's goods and therefore the pleaded mark is entitled to only a narrow scope of protection. Respondent submitted eleven (11) third-party registrations, with accompanying website evidence, for PILLOW-formative marks for socks and footwear, along with a dictionary definition of "pillow." The Board, however, found that the third-party evidence fell short of the "voluminous" and "extensive" evidence presented in Jack Wolfskin, and therefore the Board accorded this evidence minimal weight. Moreover, respondent's mark was closer to the pleaded mark than any of the third-party marks.

Nonetheless, the Board found PILLOW PAWS to be suggestive because "pillow" suggests that petitioner's goods are soft and comfortable. In short, "PILLOW PAWS is not as conceptually strong as a term that is entirely arbitrary."

The Marks: As we know, when the goods are identical, a lesser degree of similarity between the marks is needed to support a finding of likely confusion.

The Board found that the commercial impression of PILLOW PODS is very similar to PILLOW PAWS: "a 'pillow pod' is likely to be perceived by consumers with regard to Respondent’s identified socks as either a cushioned pouch, or a cushioned place to put one’s foot, very much the same as 'pillow paws' is likely to be perceived with regard to Petitioner’s identified socks and slippers as a cushioned place for one’s foot." The marks are also similar in sight and sound.

The Board ruled that this du Pont factor weighed in favor of petitioner.

Conclusion: Finding that petitioner demonstrated a likelihood of confusion by a preponderance of the evidence, the Board granted the petition for cancellation.

Section 18 Counterclaim: Respondent proposed to amend both its registration and the pleaded registration in the event that the Board found amendment necessary to avoid a likelihood of confusion. See, for example, Embarcadero Techs. Inc. v. RStudio Inc., 105 USPQ2d 1825 (TTAB 2013).

Respondent proposed to amend the its registration to "socks excluding newborn baby booties and nonslip socks," while the cited registration would be amended to "nonslip slipper socks, nonslip slippers, nonslip socks, and newborn baby booties with or without a nonslip tread."

Looking to the definitions of "sock," "slipper," and "bootie," the Board found that the amended identifications overlap: infant baby booties are a type of "sock." Furthermore, respondent sells nonslip socks under the same marks as its other socks, indicating that consumers would expect these goods to derive from a single source.

Since the proposed amendments would not avoid a likelihood of confusion, the Board dismissed the Section 18 counterclaim.

Read comments and post your comment here.

TTABlog comment: Section 18 is way under-utilized, in my opinion.

Text Copyright John L. Welch 2018.

Wednesday, August 08, 2018

TTAB Finds MASTERMIND for Beer Confusable with MASTERMIND VODKA for Spirits

Here we go again! The Board affirmed a refusal to register the mark MASTERMIND for beer, finding confusion likely with the registered mark MASTERMIND VODKA for "spirits" [VODKA disclaimed]. Applicant Fiddlehead trotted out the usual arguments, but third-party Internet evidence convinced the Board that the goods are related. In re Fiddlehead Brewing Company, LLC, Serial No. 86924382 (August 6, 2018) [not precedential] (Opinion by Judge Linda A. Kuczma).

The Marks: Noting that VODKA is disclaimed, the Board not surprisingly found MASTERMIND to be the dominant part of the cited mark. Consumers are generally more inclined to focus on the first word in any mark. The Board concluded that the marks are similar in appearance, sound, meaning and commercial impression.

Third-Party Registrations: Fiddlehead pointed to an existing registration for THE MASTERMIND'S METHOD for distilled spirits, including vodka, asserting that if that mark can coexist with MASTERMIND VODKA for spirits, then applicant's mark can also coexist with MASTERMIND VODKA. Not so fast, said the Board, pointing out that a single third-party registration has little probative value on the issue, particularly when there is no evidence that the third-party mark is in use on a commercial scale or that the public is familiar with it.

Fiddlehead also submitted thirteen pairs of registrations for similar marks for beer and other alcoholic goods, but again the Board gave this evidence little weight since there was no showing of actual use or consumer impact of the marks. Moreover, prior decisions and actions by other examining attorneys have little evidentiary weight and are not binding on the Board. Each case must be decided on its own facts.

The Goods: Examining Attorney Julie Thomas Veppumthara submitted excerpts from some 20 websites for businesses owning a brewery and a distillery. An electronic article reported that "beer breweries increasingly are distilling craft spirits." [Hearsay? - ed.]. The Board concluded that beer and spirits "are produced and sold by the same entities and are commonly sold under the same marks."

The Board noted that the CAFC and the TTAB have frequently found beer and wine and other alcoholic beverages to be related. Here, the record evidence established that the involved goods are related.

Fiddlehead asserted that the production, distribution, and sale of the involved products are highly regulated and pass through a three-tier system of delivery. Nonetheless, the Board observed, they are ultimately sold to end-consumers. Beer and spirits would be sold in some of the same trade channels to the same classes of consumers, including the general public. The third-party registration pairs submitted by Applicant Fiddlehead, to the extent considered under this du Pont factor, are outweighed by the similarity established by the examining attorney's evidence.

Other Factors: Fiddlehead argued that the involved products are "artisanal," one being brewed and one distilled, and are purchased by "connoisseurs" who know exactly what company has produced the chosen product. Unfortunately for Fiddlehead, there are no such restrictions in the application or cited registration. The Board must presume that the goods involve inexpensive or moderately priced beer and spirits. Moreover, even sophisticated purchasers are not immune to source confusion when similar marks are involved.

Finally, the absence of proof of actual confusion is of little probative value in an ex parte proceeding, where the registration has no chance to state its position or provide evidence. In any case, the test is likelihood of confusion, not actual confusion.

Conclusion: Finding confusion likely, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Fiddlesticks! What is a craft brewer to do?

Text Copyright John L. Welch 2018.

Tuesday, August 07, 2018

"COPPER 88" Merely Descriptive of Clothing Made of Fabric Containing Copper, Says TTAB

The Board affirmed a Section 2(e)(1) refusal to register the mark COPPER 88, in standard character form, finding it to be merely descriptive of "clothing made of fabric containing copper, namely, athletic sleeves, sweatshirts, pants, scarves, scrubs not for medical purposes, shorts, socks, T-shirts and underwear, shoes, gloves, hats." Applicant argued that there is no “variety of copper or copper composition referred to as COPPER 88,” that the term has no meaning in the industry, and that COPPER 88 "is suggestive of a feature of the product and requires 'mental steps' to determine 'the actual technical feature' that removes it from descriptiveness." Cu later, said the Board. In re GCool-Tech USA LLC, Serial No. 87433779 (July 30, 2018) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Examining Attorney Patrick Shanahan pointed to applicant's own website, where applicant described its goods as "[c]onsisting of 88% embedded copper nylon and 12% spandex." Applicant's Canadian website said the same thing, only in Canadian English.

Applicant argued that no competitor uses the term "copper" combined with any numbers to describe any technical feature of its products, nor do they need to use "copper 88," but the Board pointed out the irrelevancy of that argument: the USPTO is not required to prove "use" or "need" by others, and even if applicant is the first and only user of COPPER 88, that does not justify registration of a merely descriptive term.

Applicant contended that "no reasonable consumer would expect that clothing would be 88% metal," but the Board observed that that the mark must be considered in the context in which it is used, not in the abstract.

Applicant insisted that COPPER 88 is "too remote from any specific technical feature of the product" to "provide meaning to the consumer," that there is no such thing as COPPER 88, and that the term has no meaning in the industry.

The Board noted that applicant had conceded the descriptiveness of the word "copper" by including it in its identification of goods. Moreover, applicant's websites and third-party websites refer to the goods as containing embedded copper content and embedded fiber. The term "88" merely describes the percentage of embedded copper-nylon fiber in the clothing, as stated in both applicant's and third-party websites.

COPPER 88 immediately informs the consumer about the "makeup" of the clothing offered by applicant. Therefore, the Board affirmed the Section 2(e)(1) refusal.

Read comments and post your comment here.

TTABlog comment: Is this a WYHA?

Text Copyright John L. Welch 2018.

Monday, August 06, 2018

Univ. of Oklahoma Fails to Score in Opposition to "OUcare" for Medical Apparatus

The Board dismissed this opposition to registration of the mark OUCARE (Stylized) for various medical apparatus, including blood pressure monitors, lancets, and therapeutic beds, finding the mark not likely to cause confusion with the registered mark OU and formatives thereof for entertainment, and sports services, assorted clothing, and various other goods (none including medical apparatus). Furthermore, since Oklahoma failed to prove its marks famous for Section 2(d) purposes, it perforce did not meet the higher fame standard for dilution, and so the Board also dismissed OU's dilution claim. The Board of Regents of the University of Oklahoma v. K-Jump Health Co., Ltd., Opposition No. 91224288 (July 5, 2018) [not precedential] (Opinion by Judge Cindy B. Greenbaum).

Strength of OU mark: The Board found the OU mark to be distinctive and conceptually strong for educational services, but there was insufficient evidence to show that it is commercially strong. Oklahoma submitted printouts from its website, but those were of limited probative value (largely hearsay), and there was no evidence regarding consumer exposure to and recognition of the mark OU in connection with educational services. This du Pont factor slightly favored opposer.

The marks:  The fact that Oklahoma’s mark is incorporated in applicant’s mark increases the similarity between the two. The Board noted the prominence of the letters OU and their placement as the initial element of applicant’s mark. It also found that the marks "have the same arbitrary connotation and ... they create the same commercial impression, i.e., the letters 'OU.'"

Although the word "CARE" distinguished applicant's mark somewhat in appearance and sound from opposer's mark, the Board concluded that this distinction "does not significantly outweigh the overall similarity of these two marks." The Board found that the first du Pont factor weighed in favor of a finding that confusion is likely.

Goods and Services: The Board agreed with Oklahoma that the services identified in its registration are worded broadly enough to encompass educational services in the field of medicine. It also agreed that patients, medical staff, and medical students would use many of the medical apparatus identified in the application. However, there was  no evidence to support a finding that those goods and services are commercially related.

Opposer Oklahoma pointed to 12 use-based, third-party registrations of marks owned by colleges and universities, as well by the Mayo Foundation, but none of the registrations are for marks (or variants thereof) that identify both medical education services on the one hand, and medical apparatus similar to the apparatus identified in the application, on the other.

Oklahoma failed to provide any evidence that the identified goods and services travel through the same channels of trade to the same classes of consumers.

As to opposer's services, the Board inferred, despite the lack of evidence from opposer, that the relevant purchasers are likely to exercise  a high degree of care when making their purchasing decisions. Similarly, "at least some of the medical apparatus identified in the application, such as heart pacemakers and vacuum pumps for medical purposes, would be bought by purchasing departments at hospitals and nursing homes, who also would be expected to exercise a high degree of care."

However, medical apparatus such as digital thermometers and blood glucose meters could be purchased by ordinary consumers for home use. There was no evidence that the identified goods and services move through the same channels of trade to the same customers. but the Board found that to the extent there is any overlap, this factor is neutral.

Conclusion: Because Oklahoma failed to provide evidence to support a finding that goods and services are related and move in the same channels of trade, the Board found that Oklahoma failed to carry its burden of proof, and so the Section 2(d) claim was dismissed.

Dilution: Since the evidence was insufficient to support a finding of commercial strength for purposes of likelihood of confusion, it also was insufficient to support a finding of fame of dilution purposes, which requires a much more stringent showing. Therefore the Board dismissed the dilution claim.

Read comments and post your comment here.

TTABlog comment: Things were not OK for Oklahoma.

Text Copyright John L. Welch 2018.

Friday, August 03, 2018

TTAB Affirms Refusals of SOUTHFACE VILLAGE for Building Construction Services: Specimens Fail to Show Use by Applicant

The Board affirmed refusals of the mark SOUTHFACE VILLAGE, in standard character and design form, for "building construction; residential and commercial building construction; and construction maintenance of property," finding that Applicant Timber Creeks's multiple specimens failed to show use of the mark by applicant with any of the identified services. In re Timber Creek at Okemo Number II, LLC, Serial Nos. 86981587 and 86981588 (August 2, 2018) [not precedential] (Opinion by Judge Christopher Larkin).

An acceptable specimen of use for a services mark must show "some direct association between the offer of services and the mark sought to be registered therefor." When the specimens show the mark purportedly used in advertising for the services, the specimen must contain "not only a reference to the service, but also the mark must be used on the specimen to identify the service and its source."

The Board reviewed the various specimens of use submitted by applicant, and concluded that they do not show use of the applied-for marks with the recited services. The constructions services are those of a builder called "Bensonwood," not applicant. For example:

The fact that "Applicant controls the construction aspects of the services" provided by Bensonwood ... might be relevant if Bensonwood used the applied-for marks in connection with the referenced building construction services, and Applicant' claimed that Bensonwood's use of the marks inured to the Applicant's benefit because Bensonwood was a "related company" within the meaning of Section 45 of the Trademark Act, 15 USC Section 1127, but there is no indication on the specimens that Bensonwood used any marks other than its own.

In short, the specimens do not advertise building construction service provided by applicant under the applied-for marks and so the Board affirmed the refusals.

Read comments and post your comment here.

Text Copyright John L. Welch 2018.

Thursday, August 02, 2018

Clarification: TTAB's Consideration of Streamlined Cancellation Proceeding Continues

An informed source has told the TTABlogger that the TTAB has not "withdrawn" any proposal for a streamlined cancellation proceeding (for abandonment and nonuse cases) because a proposal (i.e., a Notice of Proposed Rulemaking (NPRM)) was never issued.

The USPTO has explored the possibility of such a streamlined procedure through publication of a Request for Comments in the Federal Register. After comments were received, a roundtable discussion was held at the USPTO.

Preparation of an NPRM has been deferred pending the results of a pilot program intended to: identify the types of cancellation cases involving nonuse or abandonment claims that would be most suited for a streamlined proceeding; and identify the types of procedures that could be employed in such cases, and that would be effective and efficient. There is no timeline for the issuance of an NPRM.

TTAB Test: Is EAST END Geographically Descriptive of a Houston Applicant's Alcoholic Beverages?

The USPTO refused registration of EAST END for "Alcoholic beverages, except beers, ales, stouts, ciders and wines; alcoholic beverages, namely, distilled spirits, vodka," finding the mark to be primarily geographically descriptive under Section 2(e)(2). The examining attorney relied on a variety of evidence indicating that "East End, Houston" is a district in Houston, Texas, and on applicant's website stating that applicant is located in Houston's East End.How do you think this came out? In re Buffalo Bayou Distilleries, LLC, Serial No. 86583137 (July 30, 2018) [not precedential] (Opinion by Judge Cynthia C. Lynch).

To establish that a term is primarily geographically descriptive and therefore barred by Section 2(e)(2), the USPTO must show that:

  1. the primary significance of the term is the name of a place generally known to the public.
  2. the source of the goods is the place named in the mark.
  3. the public would make an association between the goods and the place by believing that the goods originate there.

When the goods do emanate from the place named, a goods/place association may be presumed. The CAFC in Newbridge Cutlery [TTABlogged here] clarified that refusals under Section 2(d) applies "only to those marks for which the geographical meaning is perceived by the relevant public as the primary meaning and ... the geographical significance of the mark is to be assessed as it is used on or in connection with the goods."

The Board found that EAST END "clearly has geographical significance, but ... the inquiry under Section 2(e)(2) is more involved."

Applicant Buffalo Bayou argued that every town has an East end and each consumer would understand the mark EAST END as referring to the East end of his or her own town. BB submitted a list of the first ten Google brand search results for "east end usa," the first four entries being: East End, U.S. Virgin Islands East End Historic District (Newburgh, New York); East End, Arkansas; and East End (Long Island). The ninth entry referred to the district in Houston. The examining attorney submitted search results for "east end and texas" and found references to Houston's East End.The Board found that, to the extent the lists are probative, applicant's list was more persuasive since the applied-for mark contains no reference to Texas.

The examining attorney also pointed to two registrations in which "East End" is disclaimed, but it appeared that both references were to locations not in Houston.

The Board was "unconvinced that 'East End' primarily identifies a geographic location in Houston that is 'known generally to the American purchasing public.'" Quoting Newbridge.

In this case, the record reflects that “East End” can refer to numerous geographic locations, suggesting that its primary significance is not referring to the area in Houston, Texas. Also, the quantity and nature of the evidence regarding the East End of Houston does not establish that it is generally known to U.S. consumers. We lack persuasive evidence showing, for example, that the East End of Houston has a sizable population, a well-known historical significance, is a popular tourist destination, or has a widely recognized reputation for some other reason. Rather, we find a similarity to the situation in Societe Generale des Eaux Minerals de Vittel, 3 USPQ2d at 1452, where the Court stated, “[t]here can be no doubt that the PTO has established that Vittel is in fact the name of a small town in the Voges mountain region of France … but how many people in this country know that?” The first prong of the inquiry under Section 2(e)(2), that the primary significance of the term in the mark sought to be registered is the name of a place generally known to the public, is not satisfied.

And so the Board reversed the refusal.

Read comments and post your comment here.

TTABlog comment: Hat tip to FOB's John Egbert and Kevin Wilson, perennial Meet-the-Bloggers attendees.

Text Copyright John L. Welch 2018.

Wednesday, August 01, 2018

Opposer Proves Priority by Use Analogous to Trademark Use and by Shipment of Two Samples

In a 56-page opinion, the Board sustained this opposition to registration of SNACKEEZ DUO for "Beverageware; Household containers for foods; Thermal insulated containers for food or beverages; Bottles, sold empty for beverages; Cups for beverages; Insulating sleeve holder for beverage cups; Portable beverage and food container holder," finding the mark likely to cause confusion with the common law mark SNACK-DUO for food and drink containers. Although opposer's first sale of goods under its mark occurred after applicant's constructive first use date (December 5, 2014), opposer established priority based both on use analogous to trademark use and on the shipment of two samples to a retailer. Dexas International, Ltd. v. Ideavillage Products Corp., Opposition No. 91225850 (July 24, 2018) [not precedential] (Opinion by Judge David K. Heasley).

Use analogous to trademark use: Even before technical trademark use has commenced, advertising or similar pre-sale activities may establish priority if they create the necessary source association in the mind of consumers. Opposer introduced its SNACK-DUO product in Pet Business magazine (see advertisement below) and at a trade show in July 2014, and followed with two more advertisements in September 2014. Inquiries from potential customers were received and two samples were sent to one potential buyer. The first commercial sale took place in January 2015, too late to establish priority, but did show that technical trademark use occurred "within a commercially reasonable time."

After extensively analyzing the precedents cited by the parties, the Board found that Opposer had established priority by way of use analogous to trademark use:

Opposer's exposure of the SNACK-DUO mark created and cultivated the necessary association of that mark with Opposer's product among more than an insubstantial number of the purchasing public. T.A.B. v. PacTel, 27 USPQ2d at 1883. Protection of that association, otherwise known as goodwill, is consistent with both the language and purpose of the Lanham Act.

Transport of two samples: Two samples were shipped to a retail store called Camping World, one in September 2014 and one in November. Camping World subsequently placed an order and has reordered the product many times. Applicant complained that Camping World did not pay for the sample, but the Board pointed out that Section 45 of the Lanham Act states that use of a trademark occurs when goods bearing the mark are "sold or transported." An actual sale of goods is not required.

Whether the distribution of free samples to prospective purchasers constitutes bona fide use of a mark in the ordinary course of trade is a fact intensive inquiry. Here, Camping World had previously purchased other products from opposer. Its buyer not only initiated the dialogue about the SNACK-DUO product but repeatedly asked for samples by the brand name. After receiving the samples, Camping World ordered the product in the hundreds and has continued to order and sell the product.

[T]he samples served a legitimate commercial purpose, as part and parcel of the process by which Opposer's product would enter the marketplace. We find that this is bona fide use of the mark in the ordinary course of trade, and not merely to reserve a right in the mark.

Tacking: Applicant claimed that it was entitled to priority by tacking on its SNACKEEZ DUO mark to its registered SNACKEEZ mark. The Board, however, found that this defense was not pleaded, and in any case the two marks are not legally equivalent as required for tacking.

Likelihood of confusion: Applicant sent a cease-and-desist letter to opposer when opposer's SNACK-DUO product first came out, but here applicant contended that confusion is not likely. "The irony of this backpedaling is not lost on either party." Based on precedent, the Board deemed this letter to be relevant, but not controlling, on the Section 2(d) issue.

The Board found the marks to be more similar than dissimilar. "[T]he minor middle elements between SNACK and DUO are not so prominent as to diminish the strong similarity engendered by the identical elements that begin and end both marks." These identical elements suggest that same connotation and commercial impression: a container with two sections, one for food, one for something else, like a beverage. The Board noted that applicant came to the same conclusion when it sent its cease-and-desist letter.

As to the involved goods, they perform the same or similar function of holding a snack and a drink in one container. Again, applicant thought the goods were similar when it sent its letter.

The opposed application contains no limitations on channels of trade or classes of consumers, and it must be presumed that they travel in all normal channels to the same consumers. There is no reason to believe that ordinary consumers would exercise any heightened degree of care in their purchasing decisions.

Although opposer's mark is suggestive, it is inherently distinctive, and the evidence showed that the mark is entitled to a moderate degree of strength in the Section 2(d) analysis. The lack of evidence of actual confusion was not probative since the marks had been in contemporaneous use for only a short time, and it was unclear whether they have appeared in proximity to each other.

Conclusion: The Board found confusion likely and it therefore sustained the opposition.

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TTABlog comment: Good discussion of the two prongs of the priority issue. PS: Note how applicant's cease-and-desist letter came back to bite it. Better be sure of your priority before making accusations!

Text Copyright John L. Welch 2018.