Precedential No. 26: TTAB Affirms Phantom Mark Refusal of "SHAPE XXXX" for Educational Journals

The Board affirmed a refusal to register SHAPE XXXX for educational publications and services on the ground that the term is a phantom mark that comprises more than one mark. A miscellaneous statement in the application indicated ed that "[t]he 'XXXX' in the mark denotes the unabbreviated name of a state of the United States and Puerto Rico." The crux of the issue was whether all permutations of SHAPE XXXX legally constitute "one mark." In re Society of Health and Physical Educators, Serial No. 87107590 (August 16, 2018) [precedential] (Opinion by Judge Marc A. Bergsman).

Under the Trademark Act, “a trademark application may only seek to register a single mark.” In re Int’l Flavors & Fragrances, Inc., 51 USPQ2d 1513, 1516 (Fed. Cir. 1999). A mark that contains a changeable or phantom element resulting in more than one mark must be refused registration. In re Primo Water Corp., 87 USPQ2d 1376, 1378 (TTAB 2008). One reason for this rule is that a trademark registration must provide adequate notice to potential users of the same or a similar mark. In re Int’l Flavors & Fragrances Inc., 51 USPQ2d at 1517-18 ("The registration of such [phantom] marks does not provide proper notice to other trademark users, thus failing to help bring order to the marketplace and defeating one of the vital purposes of federal trademark registration.") Whether a changeable element is permissible depends on whether the various possibilities represent a single mark. Id. at 1517.

In Int’l Flavors & Fragrances, the CAFC found that the mark LIVING XXXX FLAVORS violated the one-mark-per-application requirement. The application stated that the variable element "XXXX" "indicated 'a botanical or extract thereof, to wit: ‘flower’, ‘fruit’, ‘yellow sunset orchard’, ‘osmanthus’, ‘fragrance’, ‘raspberry’ and the like,” because the variable element encompassed too many combinations and permutations to make constructive notice meaningful." Recently, in In re Constr. Research & Tech. GmbH, 122 USPQ2d 1583 (TTAB 2017), the TTAB found the marks NP - - - and SL - - - , in which the variable element “represents up to three numeric digits,” to be phantom marks, in part because the possible range of meanings that could arise from the digits was unclear.

In contrast, the CAFC found the mark 1-888-M-A-T-R-E-S-S to be the legal equivalent of the mark (212) M-A-T-T-R-E-S, in which the term (212) was defined as a changeable element: "it is apparent . . . that the missing information in the mark is an area code, the possibilities of which are limited by the offerings of the telephone company." In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1813 (Fed. Cir. 2001). (Dial-A-Mattress I). The Board, in a case involving the mark 1-800-MATTRESS (the numerals representing a changeable area code), reversed a phantom mark refusal, stating "[i]t is immediately apparent that the phantom portion consists of a three-number combination which is an area code. There is no ambiguity. It is a telephone mnemonic." In re Dial-A-Mattress Operating Corp., Serial No. 76290744, 2004 WL 1427390, at *3 (TTAB June 15, 2004) (nonprecedential). (Dial-A-Mattress II).

Together, these decisions teach that when an applicant seeks to register a mark with a variable element, we must decide whether the permutations of the variable element affect the commercial impression so as to result in more than one mark. Put differently, if such a mark is to be registered, the possible variations of the mark must be legal equivalents. See Dial-A-Mattress I, 57 USPQ2d at 1813 (“Although the registration of the ‘(212) M-A-T-R-E-S-S’ mark is a ‘phantom’ mark, … ‘1-888-M-A-TR-E-S-S’ is the legal equivalent of the ‘(212) M-A-T-T-R-E-S-S’ mark.”); Dial-AMattress II, 2004 WL at 1427390, *4 (1- --- --- --- -MATTRESS was approved for registration because, inter alia, the different variations of the mark were legal equivalents).

Here, the applied-for mark is capable of 51 variations. Although the scope or definition of the variable element is specified in the subject application at issue (in a "miscellaneous statement" that would not appear on any registration certificate), that statement "only confirms that this application is not for a single mark and that this variation would inhibit effective searching because the 51 geographic locations are not listed in any searchable portion of the application." [The Board noted that even if the 51 locations were stated in the description of the mark, that field "is not generally searched when looking for similar marks."].

The crux of the issue, however, is whether all permutations of SHAPE XXXX, where XXXX is a state name or Puerto Rico, may be considered to be one mark (e.g., whether SHAPE MICHIGAN is the same mark as SHAPE OHIO).

Two marks are the "same marks" if they are legal equivalents. "A mark is the legal equivalent of another if it creates the same, continuing commercial impression such that the consumer would consider them both the same mark. Whether marks are legal equivalents is a question of law …. No evidence need be entertained other than the visual or aural appearance of the marks themselves. Dial-A-Mattress I, 57 USPQ2d at 1812 (citing Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866, 1868 (Fed. Cir. 1991)."

[I]n a phantom mark in which the changeable elements are arbitrary or fanciful, it is correspondingly likely that the various permutations of the mark will result in different commercial impressions and therefore constitute different marks. In contrast, where the changeable elements are generic or merely descriptive, it is conceivable that the permutations of the mark may constitute a single mark. However, there can be no hard and fast rule, because even generic and descriptive matter may contribute to the commercial impression of a mark in certain circumstances.

The Board found that SHAPE XXXX is not one mark because the different permutations thereof are not legal equivalents.

Even though geographic terms are generally considered not to be inherently distinctive, they are capable of acquiring distinctiveness. Thus, for example, SHAPE MICHIGAN signifies educational services emanating from Michigan while SHAPE OHIO signifies services emanating from OHIO. The distinction is important in this case where geographic terms are capable of acquiring distinctiveness, which would further distinguish the marks.

Each variation of SHAPE XXX would have a different appearance and pronunciation. The range of variation is "undoubtedly broader" than that of the three-digit variable area code of the Dial-A-Mattress cases. Even there may be more area codes than the number of states plus Puerto Rico, "the area codes were not only numerical and fixed in length, but also were part of a telephone number mnemonic, and so varied less in appearance and pronunciation. See, e.g., Dial-A-Mattress II, 2004 WL 1427390, at *3."

The Board also noted that applicant conceded that it had not yet used SHAPE XXXX with all 51 variations of state names and Puerto Rico. "This emphasizes the problem with Applicant’s phantom mark application, as it has filed a use-based application where all the variations of the changeable element are not in use." [Were all the Dial-A-Mattress area codes in use? - ed.].

And so the Board affirmed the refusal.

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TTABlog comment: On its face, the 1-XXX-M-A-T-T-R-E-S-S mark tells you that the variable element is an area code. SHAPE XXXX, on its face, tells you nothing about what the XXXX might be. What other variable marks might pass muster? When XXXX is a year? How about THE TOP TEN TTAB DECISIONS OF 20XX?

Text Copyright John L. Welch 2018.

WYHA? COLORGANICS for Hair Care Products Confusable With KOLORGANICS for Cosmetics, Says TTAB

Wrapping up WYHA Week (TM) .... The Board affirmed a Section 2(d) refusal to register the mark COLORGANICS for various hair care products, finding the mark likely to cause confusion with the registered marks KOLORGANICS and KOLORGANIQUE for various make-up products. Applicant SMA argued that the K versus the C "creates a distinct and different commercial impression," but it provided no evidence in support and the Board was not impressed. In re SMA Srl, Serial No. 86714378 (August 13, 2018) [not precedential] (Opinion by Judge Cynthia C. Lynch).

The Marks: The letters C and K produce the same sound, as evidenced by dictionary evidence providing pronunciation guidance, and so the marks COLORGANICS and KOLORGANICS would sound identical when consumers call for the goods.  Both marks appear to be a combination of the word “organics” and the word “color," and they have the same connotation and commercial impression.

 As to the cited mark KOLORGANIQUE, it is uncertain how consumers will pronounce the last syllable:

One possible pronunciation of the last syllable – ik – sounds almost identical to the last syllable of Applicant’s mark, while another possible pronunciation – eek – sounds a bit different, but still results in a similar sounding mark overall. Regardless of the relatively insignificant variation in pronunciation of the last syllable, consumers who hear the marks spoken by others might not notice, or could easily forget, the difference.

The Board found that the marks sound quite similar and resemble each other, and engender the same connotation and commercial impressions as combinations of the words "color" and "organic."

The Board concluded that the first du Pont factor weighed in favor of a finding of likelihood of confusion.

The Goods: Examining Attorney Siddharth Jagannathan provided "substantial evidence of consumer exposure to goods of this type emanating from the same sources under the same marks." Applicant maintained that the goods are different and serve different purposes, but the Board observed that, "in the broader sense, the goods at issue serve a similar purpose as personal care products." In any event, the goods need not be identical or serve the same purpose to be related.

The Board found the marketplace evidence persuasive and it concluded that the goods are related for Section 2(d) purposes.

Trade Channels and Customers: The marketplace evidence demonstrated that cosmetics and hair care products are promoted and sold together through the same websites, reaching the same classes of consumers. The Board therefore found that the trade channels and classes of consumers overlap.

Conclusion: The Board found confusion likely, and so it affirmed the refusal to register.

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TTABlog comment: What a week!

Text Copyright John L. Welch 2018.

WYHA? TTAB Finds "OPTIMUM BENEFITS PACKAGE" Confusable With "OPTIMUM" for Insurance Underwriting Services

Continuing with WYHA? Week (TM) .... The Board affirmed a Section 2(d) refusal of the mark OPTIMUM BENEFITS PACKAGE for "insurance administrative services, insurance brokerage services, insurance underwriting services in the field of life, health, accident, disability and longterm care insurance" [BENEFITS PACKAGE disclaimed], finding the mark likely to cause confusion with the registered mark OPTIMUM for "underwriting, brokerage and management of all types of life insurance and reinsurance; and actuarial consulting services." Applicant argued that Examining Attorney Howard Smiga improperly focused on the word OPTIMUM while discounting the significance of BENEFITS PACKAGE. The Board disagreed. In re John M. Fickewirth Associates Insurance Services, Inc., Serial No. 87026036 (August 15, 2018) [not precedential] (Opinion by Judge George C. Pologeorgis).

The Services: both the application and the cited registration encompass life insurance underwriting and brokerage, and are therefore the involved services are identical in part.

Trade Channels and Purchasers: Since there are no restrictions in the application or cited registration, the Board must presume that the involved services, to the extent they overlap, travel in the same channels of trade to the same classes of consumers.

The Marks: The only difference between the marks is the inclusion of the disclaimed phrase BENEFITS PACKAGE in applicant's mark. Applicant contended that the examining attorney's analysis was faulty and that the addition of BENEFITS PACKAGE suffices to distinguish the marks. Not so, said the Board. There is nothing wrong in giving more weight to a particular feature of a mark, provided that the ultimate conclusion rests on a consideration of the marks in their entireties. The disclaimed term is less likely to make an impact on the minds of consumers.

The Board noted that likelihood of confusion has often been found when the applicant's mark incorporates the cited mark. Moreover, the first part of a mark is the part most likely to be remembered by consumers when making their purchasing decisions. And the degree of similarity between marks needed to support a finding of likely confusion is diminished where, as here, the involved services are in part identical.

The Board concluded that the marks are substantially similar.

Decision: The Board found confusion likely and so it affirmed the refusal.

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TTABlog comment: Would you have?

Text Copyright John L. Welch 2018.

WYHA? TTAB Finds FREESTYLE for Comforters Confusable With FREESTYLE for Pillows

The Board affirmed a Section 2(d) refusal of FREESTYLE for "comforters, namely, comforters and comforter sets and comforter sets sold in a bag," finding the mark likely to cause confusion with the identical mark registered for "pillows." Applicant pointed to nine third-party registrations in class 20 for marks incorporating the word "freestyle," but the Board was not impressed. Examining Attorney Meredith Maresca relied on other third-party registrations to show the relatedness of the goods. In re BCP Home Inc., Serial No. 87202411 (August 13, 2018)[not precedential] (Opinion by Judge Marc A. Bergsman).

Strength of the Cited Mark: The description of goods in the nine third-party registrations proffered by applicant were not as close to registrant's pillow as are applicant's comforters and comforter sets. Moreover, there was no evidence of usage of these third-party marks. "This is a far cry from the large quantum of evidence of third-party use and third-party registrations that was held to be significant" in Jack Wolfskin and in Juice Generation.

Similarity of the Marks: They are identical.

Similarity of the Goods: The examining attorney submitted ten third-party registrations covering comforters and pillows, as well as numerous websites showing the same mark identifying pillows, comforters, and comforter sets. The Board therefore concluded that the goods are related. This evidence also established that the involved goods travel in the same marketing channels to the same consumers.

Conclusion: The Board found confusion likely, and so it affirmed the refusal.

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TTABlog comment: Well, would you have appealed?

Text Copyright John L. Welch 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.

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.

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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.

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.

Responsibilities:

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.

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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.

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.

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.

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

Text Copyright John L. Welch 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.

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TTABlog comment: Is this a WYHA?

Text Copyright John L. Welch 2018.