Apple, Inc. Survives Section 2(d) Opposition Challenge to APPLE MUSIC by Tacking On Prior Use of APPLE by Apple Corps

The Board dismissed this Section 2(d) opposition to registration of APPLE MUSIC for various entertainment-related services, including the production and distribution of sound recordings, finding that Apple, Inc. proved priority over Opposer Charles Bertini's use of the common law mark APPLE JAZZ for entertainment services. Bertini's earliest date of use was in 1985, whereas Apple, Inc. was permitted to tack on use of the mark APPLE by the Beatles record company, Apple Corps, and thus established priority as of August 1968. Charles Bertini v. Apple, Inc., Opposition No. 91229891 (April 16, 2021) [not precedential] (Opinion by Judge Thomas Shaw).

Objections: The Board first ruled on several interesting evidentiary objections. It rejected Apple Inc.'s hearsay objections to certain articles submitted by Bertini, because the articles were more than twenty years old and therefore fell within the exception of FRE 902(6). It likewise rejected Bertini's' objection to historical testimony by a witness who began working at Apple Corps only in 2007, the Board observing that "where a corporation has been in existence for a considerable period of time, there may not be an individual currently with the organization that could relate vital statistics of the business based upon personal knowledge" and therefore "proper recourse may be made to historical documents and similar documents maintained by the corporation over the years, in the normal operation thereof or even to biographical matter, provided the material is made of record subject to the scrutiny and cross-examination of the adverse party."

 

Is APPLE JAZZ Primarily Geographically Descriptive?: Apple, Inc. feebly argued that Bertini could not establish priority because APPLE JAZZ is primarily merely geographically descriptive under Section 2(e)(2). Bertini admitted that he chose the mark APPLE JAZZ because of his connection with the Cortland region of New York, known for its apples. The Board, however, found that the word "apple" in Bertini's mark does not have a geographical connotation. The Cortland area is sometimes referred to as "apple country," but Bertini's mark is not APPLE COUNTRY JAZZ. In his mark, "apple" primarily refers to the fruit. 

Use by Apple Corps: Apple, Inc. has used the mark APPLE MUSIC since 2015, when it launched the APPLE MUSIC streaming service. It asserted that it acquired trademark rights in the mark APPLE from Apple Corps. in connection with sound recordings and films, and that it therefore has priority for the services recited in its application that are "closely related to the production and distribution of sound recordings."  Based on the evidentiary submissions, the Board found that Apple Corps continuously used the mark APPLE in connection with musical sound recordings and films since 1968.

In 2007, Applicant Apple, Inc. acquired all of Apple Corps’ trademark and service mark rights in its APPLE marks, including two registrations. It then granted back to Apple Corps a license to continue using the marks, which use inured to Apple, Inc.’s benefit.

Tacking?: In Hana Financial, the Supreme Court observed that "in limited circumstances, a party may clothe a new mark with the priority position of an older mark. This doctrine is called 'tacking,' and lower courts have found tacking to be available when the original and revised marks are 'legal equivalents' in that they create the same, continuing commercial impression." Moreover, one may tack on the priority position of a mark acquired by assignment.

Two marks are "legal equivalents" if they "create the same, continuing commercial impression so that consumers consider both as the same mark." Hana Fin., 113 USPQ2d at 1367. The Board noted that "[t]he standard for tacking is very strict and tacking in general is permitted only in 'rare instances.'" Sometimes the addition of a single word makes a difference  [e.g., AMERICAN MOBILPHONE and AMERICAN MOBILPHONE PAGING], sometimes not  [e.g., AMERICAN SECURITY and AMERICAN SECURITY BANK]. The Board found this case to be more like the latter.

The addition of the term MUSIC does not create a different commercial impression because it is generic when used in connection with sound recordings and the production and distribution of sound recordings. Consumers would know they were dealing with a music company, particularly because Applicant’s licensee, Apple Corps, has used variations of the APPLE mark, with APPLE as the dominant element, to identify its musical recordings, which inures to Applicant’s benefit, and because Applicant uses APPLE MUSIC to identify its service of publishing and distributing sound recordings.

Apple Corps' long use of APPLE-formative marks, as well as its apple design, suggests that customers are "already accustomed to seeing slight variations in Apple Corps' APPLE mark." It would not be unexpected for the company to modernize its mark by adding the word MUSIC.

Tacking also requires that the goods or services marketed under the earlier mark be "the same or similar" as the goods or services marketed under the later mark. The Board found that the sound recordings identified in the two registration acquired from Apple Corps are “the same or similar” for purposes of tacking as the production and distribution of sound recordings identified in Apple Inc.’s opposed application.

Conclusion: Finding that Apple, Inc. enjoys priority, the Board dismissed the opposition.

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TTABlogger comment: How do you like them apples? Mr. Bertini had obtained partial summary judgment that APPLE MUSIC and APPLE JAZZ are confusingly similar. Little good it did him.

Text Copyright John L. Welch 2021.

Fourth Circuit Affirms E.D.Va.: VAGISAN Confusable With VAGISIL for Feminine Hygiene Products

The U.S. Court of Appeals for the Fourth Circuit affirmed the E.D.Va's May 23, 2019 decision [TTABlogged here] reversing the TTAB's dismissal of Combe Incorporated's Section 2(d) opposition to registration of the mark VAGISAN for various feminine hygiene products. The Board had found that Combe failed to prove likely confusion with the registered mark VAGISIL for overlapping products. Combe Incorporated v. Dr. August Wolff GmbH & Co. KG Arzneimittel, Appeal No. 19-1674 (Fourth Cir. April 13, 2021) [unpublished].

The district court was persuaded by survey evidence, sales figures, advertising, and unsolicited media recognition that VAGISIL is commercially famous. Due to their "close similarities in sight, sound, and meaning," the court concluded that the marks are "sufficiently similar" to confuse consumers. Moreover, the results of Combe's confusion survey was "powerful evidence of actual confusion."

 

 

Before the Fourth Circuit, Wolfe argued that the district court erred in assessing four of the confusion factors: strength or distinctiveness of the VAGISIL mark, similarity of the two marks, actual confusion, and sophistication of the consumer. The appellate court concluded that the district court’s determinations were not clearly erroneous as to any of these factors.

Given that the district court did not clearly err as to any of its individual assessments of the challenged factors, we have no basis for reconsidering its overarching assessment that the factors demonstrated a reasonable likelihood of confusing the Vagisil and Vagisan marks. The court did not err in entering judgment in favor of Combe and ordering appropriate relief. For these reasons, the judgment of the district court is AFFIRMED.

   

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TTABlogger comment: Survey evidence the key.

Text Copyright John L. Welch 2021.

CAFC Upholds TTAB: Affirms Order for Cancellation of MOBILEBLACKBOX Registration for Audio Speakers on the Ground of Nonuse

In a brief, nonprecedential opinion, the CAFC affirmed the TTAB's decision of November 23, 2018 (pdf here) granting a petition for cancellation of a registration for the mark MOBILEBLACKBOX (Stylized) for "audio speakers for computers" and "analog and digital audio signal transmitters" on the ground that the mark was not in connection with the goods prior to the filing of the underlying application. Matey Michael Ghomeshi v. Strongvolt, Inc.., Appeal No. 2019-1850 (Fed. Cir. April 12, 2021) [not precedential] (Andrew Hirschfield, Director of the USTPO, Intervenor).

The Board found that Mr. Ghomeshi's purported sales of headphones did not qualify as "audio speakers," and even if they did, the only receipts proffered by Mr. Ghomeshi were for “samples.” He did not provide evidence that the mark was used on headphones or their packaging. Mr. Ghomeshi’s advertisement, which displayed the registered mark with headphones, was undated and did not include a means for ordering headphones.

As to analog and digital audio signal transmitters, the Board first concluded that a series of undated documents showing some transmitters bearing the mark and others not bearing the mark lacked probative value. A single receipt reflecting a sale of a transmitter did not show use prior to filing, r display the mark on the goods.

After the Board's decision, the petitioner corporation was dissolved. Mr. Ghomeshi argued that, as of its dissolution, petitioner StrongVolt "did not satisfy the statutory requirements to contest his registration." The CAFC rejected that argument, observing that there was no evidence that StrongVolt had stopped using its BLKBOX mark during its winding up period, during which period it had the right to litigate its claims. Moreover, since the dissolution came after the Board's decision, the court saw no reason to disturb the decision.

The CAFC found no error in several procedural rulings by the Board. Moreover, substantial evidence supported the Board’s conclusion that Mr. Ghomeshi failed to use his mark in commerce with audio speakers for computers prior to filing his registration, and it saw no error in the Board's rejection of his evidence of use of the mark for audio signal transmitters.

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TTABlogger comment: Seems like Mr. Ghomeshi should file a new application. Perhaps an I-T-U.

Text Copyright John L. Welch 2021.

TTAB Finds CERTIFIED BISON Generic for . . . . Guess What?

The Board affirmed a refusal to register CERTIFIED BISON on the Supplemental Register  for "bison meat; prepackaged meals consisting primarily of bison meat and vegetables, all of the aforementioned bison meat being certified" [BISON disclaimed] on the ground of genericness under Section 23(c). The Board concluded that consumers will perceive CERTIFIED BISON as a subcategory or subgenus of bison meat. "In other words, relevant consumers perceive the wording CERTIFIED BISON as the subgenus and key aspect of bison meat that meets certain criteria." In re Golden Bison Consolidated, LLC , Serial No. 87980485 (April 12, 2021) [not precedential] (Opinion by Judge George C. Pologeorgis).

The Board agreed with Examining Attorney Giancarlo Castro that the genus of goods is adequately defined by the identification of goods. The relevant consumers are members of the public who purchase bison mean or meals primarily containing bison meat [not me - ed.], and institutional purchasers such as restaurants. 

The Examining Attorney relied on websites that use the word "certified" in connection with meat products, including "GAP certified bison" and "USDA certified bison." Applicant's website sets out "(1) which quality assurances are ensured by Applicant’s certified bison seal; (2) what ranching and animal welfare standards are met under Applicant’s certified bison seal; and (3) what food safety inspections, testing, and verification are required for Applicant’s 'Certified Bison.'" 

 Applicant contended that bison meat is not "certified" or otherwise graded by the USDA, and that "USDA Certified Bison" simply does not exist. It maintained that the third-party websites do not use "certified bison" as a stand-alone term and that the word "certified" is at most descriptive of its products. 

The issue before the Board was whether the Internet materials submitted by the Examining Attorney, along with the dictionary definition of the "certified" submitted by Applicant ("genuine, authentic") constitute "clear evidence" that "the addition of the term CERTIFIED to the generic wording BISON results in a generic designation in relation to the identified goods." The Board found that they do.

[I]t is clear that relevant consumers of meat products have been exposed to the concept that meat products may be certified, whether they are certified as organic, grass fed, raised in a particular manner or genuine. Moreover, Applicant’s identification of goods, as well as it s own web site , specifically states that its bison meat products are certified.

The Board found of "no consequence" the fact that Applicant certification is not based on U.S. governmental or industry wide standards, but rather on its own criteria or the criteria of a purported affiliated entity. 

Applicant’s reliance on the Supreme Court’s decision in the Booking.com case was off base. There the Court was considering whether a composite designation comprised of a purportedly generic term and a top level domain name is capable of functioning as a service mark for online hotel reservation services. The question in this case is whether the combination of the term "certified" with the generic term "bison" renders the composite designation generic for Applicant’s goods. 

Booking.com is distinguishable because it is technically impossible for there to be more than one “booking.com,” whereas here, the record shows several uses of “certified bison” and reveals that certain meat products are commonly identified as “certified.”

The Board concluded that CERTIFIED BISON, taken as a whole, identifies "a subgenus and key aspect of bison meat and, therefore, is the generic name of Applicant’s goods. Therefore it affirmed the refusal to register.

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TTABlogger comment: Seems to me that genericness is the wrong pigeonhole here. Mere descriptiveness seems more appropriate.  

Text Copyright John L. Welch 2021.

TTABlog Test: Is CHROMAFUSION for Plastic Sleeves for Trading Cards Confusable WIth CHROME for Trading Cards?

The USPTO refused to register the mark CHROMAFUSION for plastic protective sleeves for trading cards and gaming cards, "having an opaque side and a translucent side" ... " for use in card game competitions and tournaments," finding confusion likely with the registered mark CHROME for trading cards. The Examining Attorney submitted evidence that the goods involved are of types that are sold through the same trade channels, but Applicant Ultra Pro argued that its protective sleeves are unsuitable for trading cards [despite use of that term in its identification of goods] because they are opaque on one side. How do you think this came out? Are the marks close enough for confusion? In re Ultra Pro International, LLC, Serial No. 87570853 (April 2, 2021) [not precedential] (Opinion by Judge Frances S. Wolfson).

 
Examining Attorney Jacqueline A. Jones objected to the inclusion of evidence attached to Ultra Pro's brief. The Board, as usual, found the evidence to be either duplicative of evidence already in the record, or untimely. In any case, the excluded evidence did not affect the outcome of the case. 

The Board found the involved goods to be complementary.  As to Ultra Pro's argument about the opacity of one side of its protective sleeves was irrelevant, the Board made this curious statement: "[I]n evaluating whether the goods are related or complementary, we must base our determination on the goods as identified in the application and cited registrations, rather than what occurs in the marketplace." [Actually the opacity limitation does appear in Ultra Pro's application - ed.].

The evidence showed that both applicant’s and registrant’s types of goods are sold online by the same third-party vendors under a single mark: e.g., Pokémon Center sells card sleeves and cards under the mark POKÉMON TCG.

As to the marks, the Board found them to be "somewhat similar in appearance and pronunciation due to the shared element 'CHROM.' Nonetheless, they convey substantially different connotations and overall commercial impressions." 

"Whereas the term 'chrome' is defined as 'chromium plate as a decorative or protective finish on motor-vehicle fittings and other objects,' ... the term 'chroma' is defined as 'purity or intensity of color'" or as the saturation of a color. Moreover, the Board found that the term CHROMA is not separable from the remainder of applicant’s mark. "Rather, together with the word FUSION, it forms part of a unitary, compound mark."

A unitary mark has certain observable characteristics. Specifically, its elements are inseparable. In a unitary mark, these observable characteristics must combine to show that the mark has a distinct meaning of its own independent of the meaning of its constituent elements. In other words, a unitary mark must create a single and distinct commercial impression. This test for unitariness [includes an examination of] … the meaning of the words and how the meaning relates to each other and to the goods....

CHROMAFUSION brings to mind "a confluence of intense colors merged together," and thus engenders a very different overall commercial impression than the mark CHROME.

The Board found this first duPont factor to be dispositive: "Applicant’s mark is so different from Registrant’s marks that confusion is unlikely."

And so the Board reversed the refusal.

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TTABlogger comment: How did you do? Did you play your cards right? Do you find the Board's opinion somewhat opaque?

Text Copyright John L. Welch 2021.

E.D. Va. District Court Upholds TTAB Affirmance of Functionality of Bathtub Overflow Drain Cap

In another action for review under Section 1071(b) of the Trademark Act, the U.S. District Court for the Eastern District of Virginia (a/k/a the Rocket Docket) wasted no time in upholding the TTAB's decision finding the product configuration of a bathtub overflow drain cap to be de jure functional under Section 2(e)(5). The court granted the Commissioner of Patent's motion for summary judgment and denied Applicant WCM's cross-motion. WCM Industries, Inc. v.Anderw Hirschfield, Case No. 1:20-cv-00558 (E.D. Va. April 6, 2021).

 In its March 17,  2020 decision [TTABlogged here] the Board found that applicant's own utility patents were "sufficient to make the determination of functionality." Reviewing applicant's patents, the Board found that "the product configuration mark results from the utilitarian snap on feature. The size of the cover is dictated by the curvature of the tub, the depth of the side walls is dictated by the requirement to be able to snap on and allow water flow but not too deep as that is aesthetically unpleasant."

Applicant argued that its utility patents protect the functional aspects of the interior of the cover, not the outward face and sidewall, which provide an aesthetically pleasing design. The Board nixed that argument:

The overall configuration is directed by utilitarian concerns of an overflow cover that is used to cover the round overflow pipe and plate while allowing water to flow through the drainage hole. The product configuration makes the overflow cover easier to install (no screws, rounded configuration snaps on to cylindrical retainer nut) and safer (no screws so smooth rounded surface to avoid abrasion on the skin). In addition, the drainage opening encompassed by the sidewall allows for the circular overflow cover to snap onto the circular retainer nut.

The district court observed that "The Supreme Court has articulated a preference against granting trade dress status because 'product design almost invariably serves purposes other than source identification." TrafFix Devices, Inc. v. Mktg. Displays, Inc., 523 U.S. 23, 29 (2001). The first hurdle to trademark protection for a product shape is functionality. "The proper avenue for the protection of a functional article is patent law, not trademark law." 

The court applied the Morton-Norwich factors, noting that the first two "carry the most weight:" (1) utility patents and (2) advertising touting the utilitarian benefits of the design. As to the first factor, "the products design is present in Plaintiff's utility patents for their overflow drain system as a whole." 

Moreover, Plaintiff WCM had "used these utility patents to protect their Innovator line of product, including the design of the Overflow Cap Mark, in litigation." In one case, a representative of WCM testified that the cap has the "functional purpose" of preventing items from entering the drainpipe." [That's de facto functionality (i.e., utility), not de jure functionality - ed.]. In a complaint filed with the ITC, WCM stated that is utility patents are directed to an assembly that is free of screws and includes a "decorative cap which snaps on to an associated nut element, eliminating the possibility of cross-threading or damaging components of the assembly. [Seems innocuous to me - ed].

As to the second factor, the record included advertising by WCM that touted the functional advantages of the design. The court noted that the inclusion of the term "Hi-Flow" in the product name "strongly suggests that its flow capacity is a practical advantage and thus that this design, in the eye of its manufacturer, has a functional benefit as well as an aesthetic one." 

The court declined to address the third Morton-Norwich factor (alternative designs), since that issue is irrelevant when the first two factors are satisfied. TrafFIx, 522 U.S. at 33-34. Finally, under the fourth factor, one of the patents indicated that the subject design is "comparatively simple or cheap to manufacture." 

Concluding that WCM had failed to satisfy its burden of proof to show that its product configuration is non-functional, the court granted the USPTO's motion for summary judgment.

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TTABlogger comment: It's very hard to overcome utility patent evidence in these product configuration cases. Not that I'm shedding any tears for the patentee.

Text Copyright John L. Welch 2021.

M.D. Florida District Court Upholds TTAB Decision Affirming Section 2(d) Refusal of VIVE HEALTH for Retail Medical Suply Services

On cross-motions for summary judgment in this civil action for review under Section 1071(b) of the Trademark Act, the U.S. District Court for the Middle District of Florida upheld the TTAB's decision finding confusion likely between Applicant's mark VIVE HEALTH for "On-line retail store services featuring a variety of medical equipment, medical supplies and home health products," in view of the registered mark VIVOHEALTH! (in standard character form) for "retail stores services  . . . featuring health and wellness products, including medical goods." Vive Health LLC v. Andrew Hirschfeld, Civ. No. 2:19-513-FtM-H.B-NPM (M.D. Florida March 23, 2021).

Although Vive Health presented little evidence to the USPTO, it hired expert witnesses and submitted "voluminous materials" in the de novo review afforded by the district court action. 

The court began by making several curious comments regarding the strength of the cited mark VIVOHEALTH! First the court stated that the VIVOHEALTH! mark is considered incontestable because "it has been in continuous use for five consecutive years subsequent to the date of such registration and is still in use in commerce." Actually, a Declaration under Section 15 is also required to achieve incontestability.

The court also asserted that "[a]n incontestable mark is generally entitled to 'strong protection.'" So say some circuits, but TTAB precedent holds that incontestability is irrelevant to the strength of mark. Safer Inc. v. OMS Investments, Inc., 94 USPQ2d 1031 (TTAB 2010) [precedential]. As a practical matter, even a weak, suggestive mark, or a mark that is in minimal use, can attain incontestability just through five years of use and the filing of a declaration. Becoming incontestable has no effect on the strength of the mark: it is the same the day before and the day after.

The court concluded, on somewhat shaky grounds, that the VIVOHEALTH! mark - "which is incontestable and as a suggestive mark, is relatively strong" - is a "strong mark."

Survey evidence regarding pronunciation of the two marks was inconclusive, with some respondents pronouncing "vive" like 'five," and others not. Some respondents pronounced "vive" with two syllables. In any event, the court found the marks to be sufficiently similar in overall commercial impression to support the Board's finding on this factor.

The court found that the services as identified in the application and cited registration overlap, and presumably travel in the same trade channels to the same classes of customers. Applicant asserted that the cited mark is used primarily only in New York [which is irrelevant here - ed.], but the court noted that applicant's own services are not geographically limited. 

Applicant pointed to a lack of evidence of actual confusion, but the court observed that lack of actual confusion is entitled to little weight in an ex parte context.

Concluding that the applicant had failed to carry its burden to prove that confusion between the involved marks is not likely, the court granted the USPTO's motion for summary judgment and dismissed the action.

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TTABlogger comment: Looks like the survey evidence bore out the common TTAB wisdom that there is no correct pronunciation of a trademark (except for common words). For example, how do you pronounce the trademark TTABlog?

Text Copyright John L. Welch 2021.

TTABlog Test: Is MALIBU SUPPER CLUB Primarily Geographically Descriptive of Restaurant Services?

The USPTO refused to register the proposed mark MALIBU SUPPER CLUB for restaurant and bar services [SUPPER CLUB disclaimed], finding the mark to be primarily geographically descriptive under Section 2(e)(2). On appeal, the applicant argued that the word Malibu "will be seen by consumers not primarily as a place, but rather as a general reference to luxury and relaxation – a “[glitzy] area that Hollywood movie stars flock to." How do you think this came out?  In re Argent Media Group, LLC, Serial No. 88780676 (April 6, 2021) [not precedential] (Opinion by Judge Frances S. Wolfson). 

 

Photos: Copyright William Maguire 2017.

Section 2(e)(2) of the Trademark Act bars registration on the Principal Register of a mark which “when used on or in connection with the goods of the applicant is primarily geographically descriptive of them." To establish that a mark is primarily geographically descriptive, the USPTO must prove three elements: 

1.  The primary significance of the term in the mark sought to be registered is the name of a place generally known to the public;
2. The services originate in the place named in the mark; and
3. The public would make an association between the goods or services and the place named in the mark by believing that the goods or services originate in that place.
   
   

In re Newbridge Cutlery Co., 776 F.3d 854, 113 USPQ2d 1445, 1448 (Fed. Cir. 2015) (internal quotations and citations omitted).

 

The evidence established that MALIBU is a generally known geographic location, as shown by gazetteer and dictionary references, that "supper club" is commonly used to identify a type of registrant, that applicant's services will (admittedly) originate in Malibu, and that consumers will immediately make a connection between the services and Malibu.

Applicant relied upon a portion of a "Pop Culture Dictionary" excerpt from dictionary.com, but the fuller reference "shows that the primary significance of 'Malibu,' even in pop culture, is to the geographic location." The full version of the dictionary entry states:

“Malibu variously refers to a wealthy beach city near Los Angeles, a coconut-flavored liqueur made with rum, and a sedan made by Chevrolet.” *** “This is not meant to be a formal definition of Malibu like most terms we define on Dictionary.com, but is rather an informal word summary that hopefully touches upon the key aspects of the meaning and usage of Malibu that will help our users expand their word mastery.”

The Board found that, in the context of the restaurant and bar services of the subject application, consumers would immediately perceive MALIBU as designating the location of applicant's restaurant. 

Applicant's third-party registrations for marks containing MALIBU were not life savers for applicant. One group involved goods and services unrelated to restaurant services. Another group contained additional distinctive wording: MALIBU PRINCESS and MALIBU GIRLS for dresses, MALIBU ROAD for clothing, MALIBU BEACH BASICS for handbags. 

 

The sole remaining registration, MALIBU for alcoholic and non-alcoholic beverages - even if the goods were considered related to applicant' services - was alone not enough to overcome the other evidence of record.

Examining Attorney James Hill submitted eleven third-party registrations that include disclaimers of the word MALIBU, five of which were for restaurant services.

Third-party registrations featuring services that are the same as or similar to Applicant’s services are probative evidence on the issue of geographic descriptiveness where the relevant word or term is disclaimed, registered under Trademark Act Section 2(f) based on acquired distinctiveness, or registered on the Supplemental Register. See Inst. Nat’l des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006); In re Finisar Corp., 78 USPQ2d 1618, 1621 (TTAB 2006).

The Board concluded the USPTO had established the elements for a Section 2(e)(2) refusal, and so it affirmed the USPTO refusal.

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TTABlogger comment: WYHA?

Text Copyright John L. Welch 2021.

TTABlog Test: How Did These Three Mere Descriptiveness Appeals Turn Out?

The TTAB recently decided the appeals from three Section 2(e)(1) mere descriptiveness refusals summarized below. Let's see how you do with them, keeping in mind that last year the Board affirmed, by my calculation, about 93% of these refusals. Answer(s) will be found in the first comment.


   

In re Tailored Management System, Inc., Application Serial No. 88857513 (March 26, 20221 [not precedential] (Opinion by Judge Michael B. Adlin). [Mere descriptiveness refusal of TAILORED MANAGEMENT SYSTEM “providing temporary use of online non downloadable computer software for insurance claims management for inputting first notice of loss, assigning claim to an adjuster, as well as performing billing and production, provide management reports, and tracking accounts receivable, related to the claim" [MANAGEMENT SERVICES (sic) disclaimed]. Applicant (based in Colleyville, Texas) argued that the proposed mark is suggestive rather than descriptive because "the term TAILORED is merely suggestive … the word TAILORED is not literally a description of the Applicant’s [ services], they don’t offer custom software services, but a standardized product. TAILORED suggests that the product will be suited for the customer’s needs, but it is not an actual description of the services."]

In re Consolidated Credit Counseling Services, Inc.., Application Serial No. 88396820 (March 29, 2021) [not precedential] (Opinion by Judge Frances S. Wolfson). [Mere descriptiveness refusal of CONSOLIDATED CREDIT for providing financial information, retirement information, and homebuyer education services. Applicant maintained that "credit is not consolidated and the term 'consolidated credit' has no meaning at all" and that the third parties using CONSOLIDATED CREDIT are "infringers of Applicant’s Mark."]

In re Rayhawk Corporation, Serial No. 8857462 (March 31, 2021) [not precedential] (Opinion by Judge Robert H. Coggins). [Mere descriptiveness refusal of LESS FRICTION for "medical services." Applicant asserted that “[t]here are no ‘less friction’ medical services or the like," and moreover, the proposed mark is a double entendre.]

Read comments and post your comment here.

TTABlog comment: How did you do? See any WYHAs here?

Text Copyright John L. Welch 2021.

Timberland Boot Design Lacks Acquired Distinctiveness, Says TTAB

Seldom does a product configuration clear the Section 2(f) hurdle, and this Timberland boot design joined the list of losers. The Board affirmed a refusal to register on the ground that the proposed configuration mark (drawing below) for "footwear, namely, lace-up boots" lacked acquired distinctiveness.   In re TBL Licensing LLC, Serial No. 86634819 (April 2, 2021) [not precedential] (Opinion by Judge Jyll Taylor).

(click on illustration for larger picture)

The boot design at issue includes a "bulbous toe box," a "tube-shaped ankle collar," a two-toned outsole," an hourglass-shaped rear heel panel, and other elements. Of course, product configurations cannot be inherently distinctive (Wal-Mart), but a non-functional product design may be registered if it has acquired distinctiveness. [The Board declined to reach the functionality refusal as well as the requirement for a new drawing and description of the mark]. Applicant Timberland had the burden to prove that "the product design sought to be registered is perceived by relevant consumers not just as the product (or features of the product), but as identifying the producer or source of the product."

Applicants face a heavy burden to establish distinctiveness and register trade dress. Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549 (TTAB 2009); see also Duraco Prods., Inc. v. Joy Plastic Enters., Ltd., 40 F.3d 1431, 1453, 32 USPQ2d 1724, 1742 (3d Cir. 1994) (“secondary meaning in a product configuration case will generally not be easy to establish”).  *** Further, in cases of trade dress or product design, the evidence provided to establish acquired distinctiveness must relate to the promotion and recognition of the specific configuration embodied in the proposed mark and not to the goods in general. 

The Board turned to the Converse factors to assess Timberland's evidence:  “(1) association of the trade[mark] with a particular source by actual purchasers (typically measured by customer surveys); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage of the product embodying the mark.” In re SnoWizard, Inc., 129 USPQ2d at 1005 (TTAB 2018) (quoting Converse, Inc. v. Int’l Trade Comm’n, 907 F.3d 1361, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018)).

As to the first factor, the Board accorded little probative value to two declarations from retailers for Timberland's boots, since the declarants are not ordinary consumers: they already know the source of the goods. Excerpts from various publications likewise were of little import since they all identify the boots as Timberland boots and do not direct the reader to any claimed trade dress.

As to the second factor, Timberland claimed that it has made this boot since 1773, except for the two-toned sole introduced in 1988.  Thus it demonstrated continuous use of the claimed design for thirty years. However, the Board found that this use was not substantially exclusive since the overall shape and appearance of third-party work-style boots "are quite similar to the boot trade dress Applicant seeks to register." In only one instance did Timberland seek to stop a third-party from selling a supposedly infringing boot.

As to the third and fourth factors, Timberland has sold more than 15 million pairs of boots over the last 15 years, amounting to at least $1.3 billion in revenue. It spent $1.5 million on marketing and adverting its lace-up boots bearing the applied-for trade dress from 2011-2016. However, none of the advertisements "highlight[ed] the product design features Applicant seeks to register or promote[d] those collective features as a source indicator. Rather, the record advertisements consistently show a picture of Applicant’s lace-up boots primarily with the tree logo visible and with the word mark TIMBERLAND and/or the tree logo design prominently featured and/or the 'original yellow' color touted."

The Board agreed with Timberland that "look-for" advertising is not required in order to prove acquired distinctiveness, but there was "little evidence that the features which Applicant claims as its mark – the bulbous toe box, ankle collar, outsole shape and color, rear heel panel, vamp from back to front, and eyelets – have been advertised, or are recognized, individually or collectively as source indicators for the identified lace-up boots."

In these circumstances, where Applicant’s advertising consistently includes the TIMBERLAND word mark and tree logo design and often touts the “original yellow” color, the absence of advertising that points out the claimed features of Applicant’s product design drastically diminishes the probative value of Applicant’s advertising expenditures and sales as contributing to any acquired distinctiveness of its product design.

As to the fifth Converse factor, Timberland alleged that competitors have "slavishly copied" its design, but there was "no evidence that any third-party copying of one or more elements of Applicant trade dress was intentional, or even if so, was due to an intent to confuse customers as to the source of the products."

Finally, as to the sixth factor, although there was considerable evidence of unsolicited media coverage, the coverage did not focus on the elements Timberland seeks to register. "Instead, much of the record media coverage highlights the classic 'wheat' or 'yellow' colored boot, and the presence of the Timberland tree logo burned into the side of the leather upper of Applicant’s boots, of which the Hypebeast article opines '"made the boot an icon.'"

Conclusion: Considering all the evidence relevant to the Converse factors, the Board found that "Applicant has not established that its proposed product design has acquired distinctiveness as a source identifier in connection with its lace-up boots."

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TTABlogger comment: I wonder why Timberland didn't offer any survey evidence? Why do you think?

Text Copyright John L. Welch 2021.