Third-Party Uses and Registrations Show Weakness of Cited Mark ASCENT; TTAB Reverses 2(d) Refusal of ASCENT FEDERAL CREDIT UNION

The Board reversed a Section 2(d) refusal of ASCENT FEDERAL CREDIT UNION for "Credit union services, namely, providing checking and savings accounts, mortgage lending, savings and loan services, bill payment, financing, ATM banking services, individual retirement accounts, payroll tax debiting services, and electronic banking via the global computer  network, excluding providing lease financing for private student loans" [FEDERAL CREDIT UNION disclaimed], finding confusion not likely with the registered mark ASCENT (Stylized) for "providing lease financing for private student loans." Applicant Weber State successfully relied on third-party use and registration evidence in arguing that ASCENT is a weak source indicator in the field of banking and financial services. In re Weber State Federal Credit Union, Serial No. 88675314 (September 14, 2021) [not precedential] (Opinion by Judge Robert H. Coggins).

The Services: Because the services recited in the registration are ambiguous (leasing?), the Board looked to extrinsic evidence regarding the services. Registrant's website indicated that registrant, in effect, offers student loans. 

The Board then concluded that the involved services are related. "Indeed, but for the exclusionary language in Applicant’s identification of services, Applicant's broadly worded 'loan' and 'financing' services would necessarily include the student loans which Registrant offers." Moreover, third-party website  and registration evidence demonstrated that credit unions offer student loans.

Weber State argued that the Examining Attorney ignored the exclusion of "lease financing of student loan services" from its recitation of services. The Board observed, however, that consumers are unaware of this limitation in the application and it is "not controlling of public perception."

Applicant further contended that its consumers exercise a high degree of care in their purchasing decisions, but there was no supporting evidence. Moreover, credit union members are part of the general population. "Even assuming that current or prospective students seeking to borrow money for school would exercise caution in obtaining student loans, there is no evidence that checking or savings account holders, i.e., Applicant’s customers, are particularly discriminating."

And so, the Board concluded that "the services are related, travel in the same channels of trade, and are offered to the same customers who exercise only ordinary care." 

Strength of the Cited Mark:  In support of its argument that ASCENT is a weak mark, applicant relied on 15 examples of third-party internet use of marks containing ASCENT to advertise banking and financial services on the internet, as well as on 12 use-based third-party registrations for marks that include the word ASCENT for various financial services in Class 36. 

The Board found that the services "offered and registered by third parties under ASCENT-formative marks are similar to Registrant’s student loan services so that we may consider those third-party marks under the fifth and sixth DuPont factors." It concluded that the evidence "establishes that ASCENT-formative marks are both conceptually and commercially weak and, therefore, are entitled to a narrow scope of protection."

Moreover, as to conceptual strength, the use of ASCENT by different financial service providers "indicates that ASCENT in this context suggests increasing, raising, or advancing one’s financial goals."

This is reinforced by the multiple mountain-related ASCENT logo marks which also suggest climbing toward one’s goals. The dictionary definition of “ascent” further supports the concept of rising, mounting, or advancing wealth. Thus, we find that ASCENT-formative marks have conceptual weakness in association with financial services.

As to commercial strength, the evidence was "powerful" that "consumers encountering marks in the financial field have become conditioned to distinguish marks incorporating ASCENT-formative terms based on minute differences including the addition of descriptive and generic terms such as 'financial advisors,' 'financial network,' 'financial management,' 'financial strategy,' 'processing,' etc."

The Board concluded that the cited mark falls on the lower end of the spectrum from very strong to very weak, and that "minute differences between ASCENT-formative marks used in association with financial services are sufficient to distinguish them."

The Marks: Finally, as to the marks, although both contain the word ASCENT, the Board found that, in light of the the evidence of record, the additional wording FEDERAL CREDIT UNION. "which designates Applicant’s entity," would enable consumers to distinguish the marks based on that difference.

Conclusion: "The ubiquity of ASCENT in the financial industry and the additional wording present in Applicant’s mark outweigh the similarities between the services, trade channels, and consumers." And so, the Board reversed the refusal to register. 

Read comments and post your comment here.  

TTABlogger comment: Should ASCENT have been registered in the first place?

Text Copyright John L. Welch 2021.

TTABlog Test: Is PARMA COFFEE Primarily Geographically Descriptive of Coffee and Other Food Items?

The USPTO refused to register the proposed mark PARMA COFFEE for "chocolate; chocolate-based beverages; cocoa; cocoa-based beverages; coffee extracts; coffee and coffee substitutes; honey; honey substitutes; natural sweetener; sugar; tea; tea extracts; tea-based beverages; preparations for making coffee-based beverages” [COFFEE disclaimed], deeming it primarily geographically descriptive under Section 2(e)(2). Applicant conceded that Parma is an Italian city "well known for its architecture, music, art, ham and cheese," but not for the products identified in the application. How do you think this came out? In re A. ZETA S.R.L., Serial No. 88300086 (September 21, 2021) [not precedential] (Opinion by Judge Thomas W. Wellington).

The test for geographical descriptiveness under Section 2(e)(2) has three required elements:

1.  The mark is the name of a place known generally to the public;
2.  The goods for which registration is sought originate in that geographic place; and
3.  Purchasers would be likely to believe that the goods originate in that geographic place.

The inclusion of the generic term COFFEE in applicant's mark does not alter the Section 2(e)(2) analysis.

Under the first element of the test, the relevant inquiry is whether Parma is a generally known geographic location, not whether Parma is "known for" the identified goods. The evidence submitted by Examining Attorney Erin Falk established that "the primary meaning of Parma is to signify the city in northern Italy," a generally known geographic location. 

As to the second element, the Board noted that applicant is an Italian corporation with an Italian address. Applicant did not contend that its goods do not come from Parma. Applicant admitted that its goods are being "developed" in Parma, and so the Board concluded that the goods originate in Parma.

As to the third element, since the geographic location named by the mark is not obscure, a goods/place association may be presumed from the fact that the goods originate in Parma. "Accordingly, because Applicant’s goods are admittedly 'developed' in Parma, Italy, we presume that there is a goods/place association amongst the consuming public." 

Applicant pointed to six third-party registrations for the mark PARMA for various goods and services, as well as its own EU registration for the proposed mark. The Board once again pointed out that each application must be examined on its own record, regardless of any earlier mistake the Office may have made in registering another mark. The EU registration, the Board observed, is irrelevant. 

And so, the Board affirmed the refusal to register.  

Read comments and post your comment here.  

TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2021.

TTABlog Test: Which of These Three Section 2(d) Refusals Was Reversed?

The Board recently decided the appeals from the three Section 2(d) refusals described below. One of the refusals was reversed. How do you think these came out? [Answer in first comment].

In re Stella & Chewy's LLC, Serial No. 88916952 (September 20, 2021) [not precedential] (Opinion by Thomas Shaw) [Section 2(d) refusal of CRAV'N BAC'N BITES for "edible pet treats" [BAC'N BITES disclaimed] in view of the registered mark CRAVIN' CHICKEN DINNER for "pet food; pet treats" [CHICKEN DINNER disclaimed]. Applicant argued that consumers will not encounter the products together in the marketplace because its goods are bacon treats for dogs whereas the registrant's products are chicken dinners for cats.]

In re Keygo LLC, Serial No. 88588055 (September 15, 2021) [not precedential] (Opinion by Judge Thomas W. Wellington) [Section 2(d) refusal of URBAN GREEN in the stylized form shown below, for "towels; wrapping cloth for general purposes; children’s towels; cotton base mixed fabrics; cotton fabric; kitchen towels; washcloths; all of the foregoing goods made from environmentally friendly materials" [GREEN disclaimed], in view of the registered mark urbangreen for various types of furniture "made from environmentally friendly materials" [FURNITURE disclaimed]. Applicant argued that the terms "urban" and "green" are weak formatives for goods in classes 20 and 24.]

In re Weber State Federal Credit Union, Serial No. 88675314 (September 14, 2021) [not precedential] (Opinion by Judge Robert H. Coggins) [Section 2(d) refusal of ASCENT FEDERAL CREDIT UNION for "Credit union services, namely, providing checking and savings accounts, mortgage lending, savings and loan services, bill payment, financing, ATM banking services, individual retirement accounts, payroll tax debiting services, and electronic banking via the global computer  network, excluding providing lease financing for private student loans" [FEDERAL CREDIT UNION disclaimed], in view of the registered mark ASCENT (Stylized) for "providing lease financing for private student loans." Applicant relied on third-party use and registration evidence in arguing that ASCENT is a weak formative in the field of banking and financial services.]

 Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2021.

TTABlog Test: Is MICHELLE MAE for Wholesale Clothing Confusable With MICHELLE MAY NEW YORK for Jewelry?

The USPTO refused to register the proposed mark MICHELLE MAE for "clothing sold wholesale, namely, hoodies, kimonos, shirts, and vests," on the ground of likelihood of confusion with the registered mark MICHELLE MAY NEW YORK for "jewelry" (NEW YORK disclaimed). Applicant argued that the term "NEW YORK" distinguishes the marks, and that the classes of consumers do not overlap because applicant's clothing is sold at wholesale to sophisticated customers. How do you think this appeal came out? In re Ashley Lacer, Serial No. 88692683 (September 15, 2021) [not precedential] (Opinion by Judge Michael B. Adlin).

The Marks: Since the term "NEW YORK" is geographically descriptive, it is of less significance in the likelihood of confusion determination. Personal name marks are common in the fashion industry, often identifying designers. "Thus, clothing consumers exposed to Applicant’s mark may very well assume that the mark identifies a designer because the mark appears to be a personal name name; this may be especially true of the 'wholesale' consumers exposed to Applicant’s mark, as they would likely have more exposure to and knowledge of the common use of personal names to identify fashion designers." 

Moreover, consumers could view applicant's mark as a shorthand version of registrant's mark, or conversely see registrant's mark as a version of applicant's mark that identifies where the goods are made. 

Thus the first DuPont factor weighs in favor of likelihood of confusion.

The Goods: Examining Attorney John S. Yard submitted website pages showing that clothing and jewelry are offered under the same marks and travel in the same trade channels: e.g., Chico's, Banana Republic, Ann Taylor, Kate Spade, Vera Wang, and Calvin Klein offer clothing and jewelry. Wholesalers OrangeShine, Fashion Bella, and Judson & Co. do likewise. Indeed, registrant sells both jewelry and clothing (including vests). "In short, the Examining Attorney’s third party use evidence establishes a relationship between the goods."

In addition, the Examining Attorney submitted more than 20 use-based third party registrations showing the same mark registered for clothing and jewelry. 

Applicant contended that the classes of consumers do not overlap because she sells at wholesale. The Board, however, pointed out that the cited registration is not restricted to retail sales. And the website evidence showed that wholesalers sell both clothing and jewelry under the same mark.

Finally there was no evidence supporting applicant's argument that her customers are "sophisticated" and "must be approved by applicant to place orders and such customers are only allowed to purchase items in bulk, which results in an expensive price." In any case, there is no price limitation in the application at issue, and the Board must base is decision on the "least sophisticated potential purchasers" for the goods, "which could encompass inexpensive wholesale shirts or hoodies, perhaps shirts or hoodies purchased by small souvenir shops or street vendors in relatively low 'bulk' quantities."

 Conclusion: Finding that he marks are similar, the goods are related, and the channels of trade and classes of consumers overlap," the Board affirmed the refusal to register. 

Read comments and post your comment here.  

TTABlogger comment: Is this a WYHA? When clearing a mark for clothing, do you check jewelry marks?

Text Copyright John L. Welch 2021.

Third Circuit Rules That TTAB Decision Has No Claim Preclusive Effect on "THE EBONYS" Section 43(a) Claim

[Caveat: Marty Schwimmer and Yours Truly represented David Beasley in this appeal]. In a long-running dispute over the band name THE EBONYS, the U.S. Court of Appeals for the Third Circuit reversed the order of the New Jersey district court dismissing David Beasley's Section 43(a) infringement claim on the ground of claim preclusion. The appellate court ruled that because the jurisdiction of the TTAB is limited to the issue of registrability and does not extend to "use" of a mark or allow for broader remedies, the earlier TTAB judgments against Beasley "do not carry claim preclusive effect against subsequent Article III infringement proceedings under section 43(a)." David Beasley v. William H. Howard, Appeal No. 20-1119 (3rd Cir. September 17, 2021) [precedential].

In 1969, David Beasley formed "The Ebonys" in Camden, New Jersey. The Ebonys were one of several bands that offered a style of rhythm and blues dubbed the "Philadephia Sound." William Howard joined the band in the mid-1990s. In 2012, Howard obtained a federal registration for the band name, without Beasley's authorization. In 2013, Beasley filed a pro se petition for cancellation of the registration on the ground of fraud, but he failed to prove his case and the Board dismissed the petition. In 2017, Beasley filed another petition for cancellation, but that was summarily dismissed by the Board on the ground of claim preclusion. [TTABlogged here].

Claim preclusion, sometimes called res judicata, protects a defendant from the risk of "repetitious suits involving the same cause of action" once "a court of competent jurisdiction has entered a final judgment on the merits." The preclusive effect of the prior judgment extends not only to the claims that were brought, but also to claims that could have been raised and decided in the prior action, even if not actually litigated.  

In April 2019, Beasley filed a handwritten, pro se complaint [pdf here] in the U.S. District Court for the District of New Jersey, asserting a claim under Section 43(a). Howard moved to dismiss on the ground of claim preclusion and the court granted the motion, reasoning that Beasley's claim "turned on 'facts and legal theories [that] were actually litigated" in connection with Beasley's 2017 petition for cancellation. [district court order here].

Beasley appealed to the Third Circuit. The appellate court summarized the case and its decision as follows:

Beasley limits this appeal to whether the District Court properly dismissed his section 43(a) infringement claim, so its central issue is whether Beasley’s prior losses in cancellation proceedings before the TTAB preclude his section 43(a) claim before the District Court. We hold that they do not. Despite the factual similarities between Beasley’s petitions for cancellation and the complaint he filed in the District Court, the jurisdictional limits on the TTAB that accompany its role as the primary venue for narrow questions of trademark registration ensure that proceedings before it do not carry claim preclusive effect against subsequent Article III infringement proceedings under section 43(a).

The appellate court rejected Howard's argument that Beasley could and should have pursed his claims in the district court in the first instance, since a cancellation claim could be included in a civil action. The court pointed out that this "would oblige a plaintiff wishing to avoid claim preclusion not only to assert every available claim, but also to choose the forum with the broadest jurisdiction in which to do so."

 

Granting claim preclusive effect to TTAB proceedings against subsequent infringement suits would penalize trademark holders who promptly oppose or seek to cancel an invalid mark, rather than delay litigation until that party could assert all possible causes of action in the District Court. A rule encouraging such delay would moreover stand in tension with sections 14(1) and 15 of the Lanham Act, 15 U.S.C. §§ 1064(1), 1065, which urge prompt opposition and cancellation petitions by providing that trademark registrations over five years old are generally incontestable and cannot be challenged.

The appellate court observed that, as Beasley conceded, issue preclusion applies to any fraud claim that Beasley may assert in the district court. And so the court affirmed the dismissal of "any claim that Howard defrauded the PTO."

The court also rejected Howard's argument that the district court's dismissal order should be affirmed because Howard's right to exclusive use of the mark is incontestable. The court pointed out that Section 15 of the Lanham Act "makes clear that incontestability only applies 'except to the extent, if any, to which the use of a [registered mark] infringes a valid' state or common law trademark 'continuing from a date prior to the date of registration.'" In other words, incontestability is not a defense against a claim brought by a prior common law user.

And so, the Third Circuit affirmed in part and reversed in part, remanding the case to the district court for further proceedings.

Read comments and post your comment here.  

TTABlogger comment: The Third Circuit noted that its decision aligns with two other circuits: the Ninth Circuit in V.V.V. & Sons Edible Oils Ltd. v. Meenakshi Overseas, LLC, 946 F.3d 542 (9th Cir. 2019) [TTABlogged here], and the Second Circuit in Jim Beam Brands Co. v. Beamish & Crawford Ltd., 937 F.2d 729, 736 (2d Cir. 1991).

Text Copyright John L. Welch 2021.

TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?

The TTAB recently ruled on the appeals from the three Section 2(e)(1) mere descriptiveness refusals summarized below. Let's see how you do with them. Answer will be found in the first comment.



In re UDP Labs, Inc., Serial No. 88573702 (September 8, 2021) [not precedential] (Opinion by Judge Peter W. Cataldo). [Mere descriptiveness refusal of BED METRICS (in standard characters, METRICS disclaimed) for "Computer hardware; downloadable computer software for the collection, processing, analysis, measuring, monitoring, tracking and distribution of biometric data; electronic sensors for monitoring movement, respiration, and heart rate," and "Software as a Service (SaaS) services featuring software for the collection, processing, analysis, measuring, monitoring, tracking and distribution of biometric data." Applicant conceded that the mark "is immediately descriptive of goods or services that measure a bed," but it argued that the mark "does not tell the user the goods collect biometric data from a person, analyze it and provide health recommendations."]

In re Deirdre C. Glascoe, Serial No. 88374879 (September 13, 2021) [not precedential] (Opinion by Judge Cynthia C. Lynch). [Mere descriptiveness refusal of SCIENTIFIC STUDY OF GOD in standard characters for “Scientific research." Applicant maintained that the proposed mark "is not about humans studying GOD, it’s about GOD studying human behavior, encoding His study results in His logo – the mark, SCIENTIFIC STUDY OF GOD…."]

 

In re DRYPZ, LLC, Serial No. 88711363 (September 13, 2021) [not precedential] (Opinion by Judge Thomas Shaw). [Mere descriptiveness refusal of DRYPZ, in standard characters, for "Therapeutic services, namely, intravenous hydration therapy, intravenous electrolyte replacement therapy, intravenous vitamin infusion therapy, intravenous hangover alleviation therapy, intravenous amino acid therapy, intravenous micronutrient therapy, intramuscular vitamin therapy, lipotropic injection therapy, oxygen therapy, wellness treatments in the nature of therapeutic intravenous drip services and booster shots." Applicant argued that the proposed mark "is suggestive because DRYPZ “could involve several different products or services, such as plumbing, coffee shops, irrigations systems, and fashion."]

Read comments and post your comment here.

TTABlog comment: How did you do? See any WYHAs here? P.S.: No, that is not a drawing of Rudy Giuliani.

Text Copyright John L. Welch 2021.

TTAB Affirms Section 2(e)(5) Functionality Refusal of Mark Consisting of the Transparency of Plastic Food Packaging Trays

The Board affirmed a refusal to register, on the Supplemental Register, a mark whose "essence" is "the transparent nature of the goods," for "Rigid plastic overwrap trays for packaging of uncooked meals," finding that the proposed mark is de jure functional under Section 2(e)(5). The Board, after sorting through the convoluted and messy prosecution history and the disjointed and confusing briefing by applicant, determined that applicant was not attempting to claim a "color" but rather the absence of color. In re Converter Manufacturing, LLC, Serial No. 87587855 (September 14, 2021) [not precedential] (Opinion by Judge Christopher Larkin).

Examining Attorney Gene V.J. Maciol, II, submitted webpages discussing the functional benefits of transparent packaging for foods. One webpage stated that nearly one-third of shoppers gauge the freshness of a product by its appearance rather that its "use-by" date. Applicant argued, however, that for uncooked meat, opaque trays are desirable so that the consumer does not see any juices flowing (or purging) freely in the package, and therefore a clear tray is less functional than an opaque tray.

Applicant pointed to the first three Morton-Norwich factors to show that its proposed mark is not functional. First, there are no applicable utility patents. Second, applicant has not advertised any utilitarian advantages over other designs. And third, there are many alternative designs available.

The Examining Attorney disputed the applicant's argument because not all meats "purge," vacuum-packed meats are not susceptible to "purging," and meat-packers would desire the clear packaging in order to increase sales.

The Board pointed out that applicant's argument regarding the "anti-functional" nature of its transparent packaging was unsupported by sworn statements or other evidence. In short, "[a]ttorney argument is no substitute for evidence." Moreover, the argument was counter-intuitive:

Applicant would be acting contrary to its own economic self-interest in offering transparent overwrap trays if “packers of uncooked meats seek to obscure their customers’ view of juices which issue from uncooked meats,” 13 TTABVUE 5, and “seek to use opaque trays, through which neither the juices nor a juice-engorged pad can be viewed by their customers.” Id. It would be irrational for Applicant to “def[y] the common sense in this industry,” id., by producing transparent trays rather than focusing solely on the production of opaque trays to satisfy the claimed demand of meat packers for only such packaging. Yet Applicant has not only developed its transparent packaging as an alternative to opaque packaging, but has sought to register the transparent packaging as its trademark. Applicant’s actions belie its claim that its product is “anti-functional.”

Finally, applicant's "anti-functional" argument was contradicted by its own marketing brochure, which touts the utilitarian benefits of "Clarity," "Efficiency," and "Strength." Under the heading "Clarity," applicant states that the "crystal clear" color "allows you to make your product the STAR of the package." This is "a clear reference to the fact that the transparent nature of this particular overwrap tray in Applicant’s product line enables the packers’ customers, the ultimate consumers of the uncooked meats, to see the products prior to purchase."

Thus, contrary to applicant’s unsupported arguments, "at least some meat packers want to make their meats 'the STAR of the package' by showing the goods to their customers, and for those packers, Applicant touts the transparent nature of its goods as a functional benefit."

The Board found this advertising to be strong evidence of functionality. The brochure "persuasively demonstrates that the claimed mark is functional because 'it is essential to the use or purpose' of the trays in displaying the packers' uncooked meat products ...." (quoting TrafFix, 58 USPQ2d at 1006). With functionality established under the Inwood test, it was unnecessary to undergo a full Morton-Norwich analysis.

Therefore the proposed mark is not eligible for registration on the Supplemental Register, and so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: If this "mark" were to register, where would you put the R-in-a-circle symbol?

Text Copyright John L. Welch 2021.

"NAMX" Not Confusable with "NYMEX" for Electronic Financial Services, Says TTAB

In this nearly-six-year-old opposition proceeding, the Board rejected the New York Mercantile Exchange's Section 2(d) claim, concluding that confusion is not likely between opposer's NYMEX mark and applicant's mark NAMX, both for various electronic financial services. "The conditions under which sales are made (i.e., the degree of purchaser care) and the dissimilarity of the marks" outweighed the other DuPont factors. New York Mercantile Exchange, Inc. v. North American Monetary Exchange Corporation, Opposition No. 91225279 (September 10, 2021) [not precedential] (Opinion by Judge Marc A. Bergsman).

The Services: The Board found applicant’s “clearing and reconciling financial transactions” and “currency exchange services” to broad enough to encompass opposer’s “providing … electronic exchange markets for trading, clearing, confirming transactions and other services in the field of commodity futures, options and other derivatives.”

Because the services are in part legally identical, the Board presumed that those services travel in the same trade channels to the same classes of consumers.

Conditions of Sale: Opposer's NYMEX services are rendered to individuals and companies that trade precious and industrial metals and energy contracts, as well as those desiring to hedge risk, create security interests in metals, or invest in metals for the future. The Board concluded that "[t]he consumers who encounter both Opposer’s mark and Applicant’s mark are highly sophisticated, careful individuals who exercise a high degree of purchasing care."

Strength of Opposer's NYMEX Mark: Opposer contended that NYMEX is a strong and famous mark, but its evidence fell short of the latter target.

Opposer’s testimony and evidence regarding the use of its NYMEX mark prove that NYMEX is a commercially strong, but not famous mark. First, we note that Opposer did not introduce any evidence of unsolicited media discussing the renown of Opposer’s NYMEX mark. Second, the representative samples of Opposer’s advertising focus on the CME GROUP mark and CME GROUP logo, not the NYMEX mark. This throws doubt on LaPierre’s testimony that Opposer spends a million dollars a year advertising the NYMEX service mark. Based on Opposer’s testimonial and evidentiary showing, it appears that a million dollars a year is primarily spent advertising CME GROUP and the CME GROUP logo with a nod to NYMEX.

The Marks: "Opposer’s consumers are sophisticated consumers who recognize the mark [NYMEX] as an abbreviation of New York Mercantile Exchange." Applicant's mark NAMX is "an arbitrary combination of letters with no apparent meaning based on the record before us as the letters do not correspond identically to the first letter in each of the words of the Applicant’s name." The Board therefore concluded that the marks have different meanings and engender different commercial impressions. 

Opposer argued that the marks look alike, but the Board disagreed. "Opposer’s mark NYMEX engenders the commercial impression NY MEX or New York Mercantile Exchange in part because NY is a well-known abbreviation for New York. On the other hand, Applicant’s mark NAMX is an arbitrarily arranged combination of letters with no apparent meaning." Furthermore, opposer's mark begins with "NY", which will catch the consumer's attention and will distinguish the marks.

The Board also disagreed with opposer's contention that the marks sound alike. The Board noted that there is no correct pronunciation of a mark that is not a common word.

Nevertheless, because consumers recognize the letters NY in Opposer’s mark NYMEX as the well-known abbreviation for New York, to the extent it is pronounced, consumers will say “New York Mex” or “NY Mex.” On the other hand, based on standard English pronunciation, it is likely that consumers will pronounce Applicant’s mark, if they say it at all, as Nam X or Name X because they will turn Nam into something they recognize. However, it is just as likely that consumers will refer to NAMX by its letters (i.e., N-A-M-X).

The Board found the marks to be more dissimilar than similar.

Conclusion: The Board dismissed the opposition.

Read comments and post your comment here.

TTABlogger comment: I wonder what a survey regarding pronunciation would have yielded?

Text Copyright John L. Welch 2021.

TTABlog Test: Which of These Three Section 2(d) Refusals Was Reversed?

The Board recently decided the appeals from the three Section 2(d) refusals described below. One of the refusals was reversed. Let's see how you do. [Answer in first comment].

In re Michael-David, LLC, Serial No. 88662293 (August 28, 2021) [not precedential] (Opinion by Judge Marc A. Bergsman) [Section 2(d) refusal of NORTHCOAST WINE CO. for "wine" in view of the registered marks NORTH COAST BREWING, in standard character form, and the two word-plus-design marks shown immediately below, for "beer, ale, lager, stout and porter," the three cited registrations being owned by the same entity.]

In re James Bay Distillers, Ltd., Serial No. 88510595 (September 9, 2021) [not precedential] (Opinion by Judge Thomas Shaw) [Section 2(d) refusal of the mark GALLOPING GOOSE for "Distilled spirits" in view of the registered mark GALLOPING GOSE for "beer" [GOSE disclaimed].

In re Tangled Roots Beverage Company LLC, Serial No. 88685983 (September 9, 2021) [not precedential] (Opinion by Judge Cindy B. Greenbaum) [Section 2(d) refusal of the word-plus-design mark shown below, for "beer," in view of the registered mark PAINTBOX for "alcoholic beverages except beers."]

  Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2021.

"Advanced Practice Before the TTAB," IP Institute, USC Gould School of Law, September 22, 2021 (11:30 AM (PST))

The USC Gould School of Law will hold its virtual IP Institute on September 21-23, 2021, featuring a "sophisticated discussion of emerging issues and best practices in copyright, patent, trademark, trade secret and related fields." Speakers and panelists will include federal judges, leading academicians, in house counsel, national officials, and top practitioners. [Brochure here]. Yours truly, the TTABlogger, will join a panel entitled "Advanced Practice Before the TTAB," with TTAB Judge Christoper Larkin, former TTAB Judge (and now Assistant Professor at Southern Illinois University School of Law) Lorelei Ritchie, TTAB Interlocutory Attorney Mary Beth Myles, and moderator Raffi Zerounian. The panel discussion will being at 11:30 AM (PST) for one hour.

Although practice before the Trademark Trial and Appeal Board (TTAB) may feel familiar for federal court practitioners, there are many traps for the unwary. This panel will discuss advanced practice tips for litigation before the TTAB, including non-obvious practical do’s and don’ts of TTAB practice and insights into how counsel can best present a case before the TTAB. The panel will touch on the Trademark Modernization Act and the recent uptick in questionable trademark application filings by non-US parties.

Read comments and post your comment here.

Text Copyright John L. Welch 2021.

Precedential No. 23: TTAB Refuses to Allow Withdrawal of Express Abandonment of Opposed Application

In a straightforward application of Trademark Rule 2.68, the Board denied Applicant Grüne Erde's motion for relief from judgment after Grüne Erde had filed an express abandonment of its opposed multi-class application for the mark shown below. The Board had deemed the application abandoned in its entirety without prejudice (since the opposers had consented to the withdrawal) and it dismissed the opposition without prejudice. Grüne Erde claimed that it had mistakenly failed to limit the abandonment to its Class 3 goods, the only target of the opposition, and it asked the Board to allow it to withdraw the abandonment. No dice, said the Board. Rwachsberg Holdings Inc. and Apollo Health and Beauty Care Inc. v. Grüne Erde Beteiligungs GmbH, 2021 USPQ2d 926 (TTAB 2021) [precedential].

FRCP 60(b)(1) provides that a party may be relieved from a final judgment, order, or proceeding because of "mistake, inadvertence, surprise, or excusable neglect." However, Rule 2.68 "unequivocally states that '[a] request for abandonment or withdrawal may not be subsequently withdrawn.'" Therefore, Grüne Erde's requested withdrawal of its express abandonment was impermissible.

End of story.

Read comments and post your comment here.  

TTABlogger comment: So does Grüne Erde file a new application? 

BTW: Why didn't the Federal Rule supersede Trademark Rule 2.68? Rule 2.116 states: "(a) Except as otherwise provided, and wherever applicable and appropriate, procedure and practice in inter partes proceedings shall be governed by the Federal Rules of Civil Procedure."

Text Copyright John L. Welch 2021.