Supreme Court Rejects USPTO Claim for Attorney's Fees in Patent Appeal via Civil Action

On Tuesday, the Supreme Court unanimously upheld an en banc decision of the CAFC, ruling that the USPTO is not entitled to recover its attorney's fees in an appeal from an adverse USPTO decision via a civil action under Section 145 of the Patent Statute. That statutory provision says that the applicant must pay "[a]ll the expenses of the proceedings." The Court found no reason to depart from the "American Rule" that requires each party to pay its own attorney's fees. Peter v. Nantkwest, Inc., No. 18-801 (S. Ct. December 11, 2019).

Of course,, what makes this decision interesting for trademark attorneys is that, for civil actions for review of a final refusal of a trademark application, under Section 1071(b)(1) of the Lanham Act, the Fourth Circuit ruled in Shammas v. Focarino, 114 USPQ2d 1489 (4th Cir. 2015) [TTABlogged here], that - despite statutory language virtually identical to that of Section 145 of the Patent Statute - the USPTO was entitled to recover its attorney's fees. The Supreme Court denied Shammas's petition for certiorari in 2016. [TTABlogged here].

In the BOOKING.COM case now before the Supreme Court (on the issue of genericness). the Fourth Circuit followed (seemingly with reluctance) the Shammas decision in affirming the district court's award of attorney's fees to the USPTO. [TTABlogged here].

It is probably safe to say that the next time a court gets its hands on the issue of USPTO attorney's fees under Section 1071 (b) - at least a court outside the Fourth Circuit - the result may be different.

Read comments and post your comment here.

TTABlog comment: It seems that most people expected the Supreme Court to rule this way.

Text Copyright John L. Welch 2019.

TTABlog Test: Three Recent Section 2(d) Appeals

A TTAB judge once said to me that one can predict the outcome of a Section 2(d) case 95% of the time just by looking at the marks and the goods or services. Here are three recent decisions in appeals from Section 2(d) refusals. How do you think these came out? [Answers in first comment].

In re Antonio F. Domingues and Kathy J. Bruzesse, Serial Nos. 87553246 and 87553279 (November 27, 2019) [not precedential] (Opinion by Judge Frances Wolfson). [Section 2(d) refusal of FORTTUNA FOODS, in standard character and design form, for "Cakes; Candy; Candy bars; Chocolate; Chocolate bars; Chocolate confection" [FOODS disclaimed], in view of the registered mark FORTUNA (Stylized) for, inter alia, "Candied fruit snacks, nut-based snack foods, sesame oil, quail eggs, powdered milk for food purposes, dairy-based food beverages, fruit-based food beverages." Applicants argued that the unconventional spelling of FORTTUNA distinguished the marks and that registrant sells its goods only in niche Asian markets.]

In re Killeen Mayo Car Wash, LLC, Serial No. 87597456 (December 3, 2019) [not precedential] (Opinion by Judge Judge Angela Lykos).). [Section 2(d) refusal of the word+design mark shown below, for "automobile cleaning and car washing" in view of the registered mark GALAXY for "car wash services." Applicant contended that the additional wording and the design element in its mark sufficed to distinguish it from the cited mark.]

In re La Mamba, LLC, Serial No. 87791970 (December 4, 2019) [not precedential] (Opinion by Judge Lorelei Ritchie) [Section 2(d) refusal of PARC & LEX (and design) for "Clothing, namely, t-shirts, sweatshirts, skirts, pants, jeans, coats, dresses, underwear, tops and bottoms; headwear; footwear," in light of the registered mark PARK & LEX, in standard characters, for "Jewelry, namely,necklaces, bracelets and earrings." Applicant asserted that consumers will pronounce PARC and Park differently, and that registrant's fine jewelry, inspired by New York, is sold in a different trade channel than its own mass clothing apparel made in Los Angeles.]

Read comments and post your comment here.

TTABlog comment: How did you do? Any WYHAs here?

Text Copyright John L. Welch 2019.

TTAB Affirms Failure-to-Function Refusal of INTELLIGENCE OF THINGS for Supply Chain and Engineering Services

In yet another failure-to-function case, the Board affirmed a refusal to register INTELLIGENCE OF THINGS as a service mark for supply chain management services, custom manufacture of electronics, and engineering services. Third-party uses of, and media references to, the phrase convinced the Board that INTELLIGENCE OF THINGS does not "perform the desired service mark function and does not fall withing the Act's definition of a service mark." In re Flex Ltd., Serial Nos. 86453853 and 86493735 (December 9, 2019) [not precedential] (Opinion by Judge Michael B. Adlin).

The evidence revealed that third parties use INTELLIGENCE OF THINGS to refer to "the ongoing development and next phase of the Internet of Things ("IoT") [i.e., the interconnectivity of digital devices via the Internet and to each other], and specifically its increasing use of artificial intelligence ("AI")." The Board found that INTELLIGENCE OF THINGS "would be perceived not as a mark but as a merely informational and widely used phrase." Competitors should be free to use this "widespread and increasingly important" terminology.

The evidence reveals INTELLIGENCE OF THINGS does not fall within the definition of a service mark. In fact, many third parties and media sources have a common and consistent understanding of the phrase INTELLIGENCE OF THINGS, which refers not to Applicant or its services, but instead to the merging of the Internet of Things and artificial intelligence.

The Board found it clear from the way the phrase is used that it conveys information rather than identifies source. The phrase merely identifies the technology (IoT with artificial intelligence) that applicant uses to provide its services.

INTELLIGENCE OF THINGS is "too commonly used by too many third parties for it to identify any particular goods or services or the sources thereof." Granting registration to applicant "would achieve the absurd result of hampering others in their use of the common phrase INTELLIGENCE OF THINGS for goods or services which features or are rendered through 'intelligent' IoT devices."

Applicant Flex urged the Board to adopt a new test for the failure-to-function analysis, arguing that the new test synthesizes the case law and, "not surprisingly," would result in a reversal of the subject refusal.

Applicant specifically contends that a phrase fails to function as a mark only when it "(i) has a single, well understood meaning or message, (ii) is widely used by the general public to convey the well understood meaning or message, and (iii) relates to a topic of nationwide awareness or is the type of phrase that is "uttered on a daily basis, almost automatically without thought."

The Board was unimpressed. First, the meaning of the proposed mark must be considered in relation to the services at issue, and here the evidence shows that INTELLIGENCE OF THINGS has a "consistent and well-understood meaning" in connection with applicant's services. Second, the Board is not concerned with the perception of the "general public" but with that of the purchasers of applicant's services. And third, for the same reason, the phrase need not be a "topic of nationwide awareness."

The Board concluded that because the proposed mark is merely informational and is widely used by the relevant consumers, it would not be perceived as a source indicator , and so it fails to function as a service mark under Sections 1, 2, 3, and 45 of the Trademark Act.

Read comments and post your comment here.

TTABlog comment: Is this a WYHA? Is there such a concept as THE STUPIDITY OF THINGS?

PS: note that the use of the "TM" symbol by Applicant Flex did not help, since the issue is public perception of the phrase, not whether Applicant intends or wants the phrase to function as a mark.

Text Copyright John L. Welch 2019.

CAFC Upholds TTAB Dismissal of "Goats on a Roof" Cancellation Petition Due to Lack of Standing

The CAFC pulled the plug on an appeal from a Board decision (here) that had dismissed a petition for cancellation of a registration for the mark shown below (comprising goats on a grass roof) for restaurant services. The Board ruled that Petitioner Todd C. Bank failed to allege sufficient facts that would establish his standing. The appellate court agreed and it dismissed this appeal and granted Respondent's motion for an award of costs and attorney fees, finding the appeal to be frivolous. Todd C. Bank v. Al Johnson's Swedish Restaurant & Butik, Inc., Appeal No. 2019-1880 (Fed. Cir. December 9, 2019) [not precedential].


In order to establish standing, a plaintiff in a TTAB proceeding must plead and prove facts showing that he or she has "a real interest in the proceedings and a reasonable basis for his [or her] belief of damage. "Typically, standing is not a demanding requirement." Here, Petitioner Bank failed to plead a real interest and a reasonable basis for his belief of damage.

Bank sought to cancel the registration, alleging that the mark is "demeaning to" goats, and that in turn is offensive to Bank and "denigrates the value he [and others] place[] on the respect, dignity, and worth of animals." The Board observed that, to the extent Bank relies on disparagement of himself, that argument must fail in light of the Supreme Court's ruling that the disparagement clause of the Lanham Act is unconstitutional.

In any case, Bank failed to plead a real interest in the proceeding. He provided no basis, other than the precluded disparagement claim, to suggest that he had a direct and personal stake in the outcome of the proceeding.

Bank also failed to please "a reasonable basis for his belief of damage." Although he asserted that the trade dress is "offensive to numerous persons," including himself, because it was demeaning to goats, he failed to explain how that reason survives the ruling in Tam.


Respondent moved for its costs and attorney fees, and the Board granted the motion. The court noted that Bank had filed multiple petitions with the Board regarding the subject registration, all of which had been dismissed for, inter alia, standing. Bank also filed a groundless motion for sanctions. And despite being told by the TTAB that his disparagement claim was based on an unconstitutional and stricken section of the Lanham Act, he raised the issue again on appeal. The Board therefore concluded that this appeal was frivolous.

Because Bank lacked standing to bring the original cancellation petition, the CAFC lacked jurisdiction to review the appeal, and therefore it dismissed the case.

Read comments and post your comment here.

TTABlog comment: In 2012, the "Goats on a Roof" registrations survived a similar attack brought by a photographer who claimed that the registrations would prevent him from placing goats on a grass roof and photographing them. TTABlogged here.

PS: I am informed that the prior proceedings referred to by the CAFC were cases in which Bank was the attorney, not the party, including the 2012 case just mentioned.

Text Copyright John L. Welch 2019.

Precedential No. 37: TTAB Rules that the Color Red is Generic for Saw Blades

In what appears to be the first TTAB decision finding a color to be generic, the Board granted a petition for partial cancellation of a registration for the mark shown first below (lined for the color red) for, inter alia, saw blades, and it also granted a petition for cancellation of a registration for the mark shown second below ("the color red as applied to substantially the entire surface of the goods"), for "blades for reciprocating power saws." Milwaukee Electric Tool Corp. v. Freud America, Inc., Cancellations Nos. 92059634 and 92059637 (December 2, 2019) [precedential] (Opinion by Judge Thomas Shaw).

Genericness: The question faced by the Board was "whether the color red is generic for the identified goods and thus unregistrable under Trademark Act Sections 1, 2 and 45 because it cannot function as a mark."

Section 14 of the Trademark Act states that “[t]he primary significance of the registered mark to the relevant public . . . shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.” 15 U.S.C. § 1064(3). The Court of Appeals for the Federal Circuit has held that “generic name” encompasses anything that "potentially can but fails to serve to indicate source, including trade dress." Sunrise Jewelry Mfg. Corp. v. Fred S.A., 175 F.3d 1322, 50 USPQ2d 1532, 1535 (Fed. Cir. 1999).

Thus, as a form of trade dress, a single color applied to goods may be generic for those goods if it “fails to serve as an indicator of source.” See Sunrise Jewelry Mfg. Corp. v. Fred S.A.

In a cancellation proceeding, the Board looks at  "both the time when the registrant registered its marks as well as at the present day to determine whether the mark (sic) must be cancelled." [Actually, registrations are cancelled, not marks - ed.]

The Board recently held that product packaging trade dress, like product design trade dress, may be deemed generic where it is “at a minimum, so common in the industry that it cannot be said to identify a particular source.” In re Odd Sox LLC, 2019 USPQ2d 370879 (TTAB 2019) (packaging for socks), quoting Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1555 (TTAB 2009) (generic guitar shape unregistrable).

The Board deemed it appropriate to apply a two-step inquiry (as with word marks and other kinds of trade dress), in which it first considers the genus of goods or services at issue, and second considers whether the color is understood by the relevant public primarily as a category or type of trade dress for that genus of goods or services.

As usual, the Board found the genus of goods to be adequately defined by the identifications of goods in the challenged registrations. For convenience it referred to the genus generally as “saw blades” or “reciprocating saw blades,” and it interpreted the term "saw blades" to include any type of saw blade used with any power woodworking machines.

Petitioner Milwaukee established that it used the color red on saw blades for decades before Respondent Freud first used the color.  Moreover, Milwaukee submitted evidence of more than four dozen third-party uses of the color red for saw blades. "This extensive evidence of use of the color red on saw blades by a direct competitor of Freud is evidence that purchasers of saw blades would be unlikely to differentiate between competing sources simply by viewing the color red on the saw blades. See BellSouth, 35 USPQ2d at 1558."

The Board found that the presence in the market of red saw blades from numerous sources "is incompatible with a finding that the 'primary significance of the registered mark to the relevant public' of the color red is as a source-indicator pointing solely to Freud. See 15 U.S.C. § 1064(3)."

This evidence overwhelmingly demonstrates that the color red on saw blades is so common in the industry that it cannot identify a single source for saw blades for power woodworking machines or saw blades for reciprocating power saws. What is more, because the evidence establishes that the color red was widely used by others at the time Freud filed the underlying applications for each of its subject registrations and third-party use continues to the present day, the color red was generic for power saw blades when Freud applied for both of its marks and remains so now. Neapco, 12 USPQ2d at 1747; Kasco, 27 USPQ2d at 1506 n.7.

And so the Board granted Milwaukee's petitions.

Acquired Distinctiveness: Although its finding of genericness was dispositive, the Board went on to consider, for the sake of completeness, Freud's claim of acquired distinctiveness of the color red for the "blades for reciprocating power saws" of the second registration. The Board found that Freud's proofs feel short.

The use of red by other saw blade sellers is longstanding and widespread. In light of this use by Milwaukee and third parties, Freud’s sales figures and marketing efforts, though extensive, cannot demonstrate consumer recognition of the color red as a mark for saw blades designating Freud exclusively as their source.

Fraud: Milwaukee alleged that Freud committed fraud in connection with its first registration by claiming that it was the exclusive user of the color red for saw blades, that its response to a request for information was deficient, that it failed to state the first use date for each item in the identification of goods, and that its Section 2(f) claim of acquired distinctiveness did not apply to all of the goods.

As to the exclusivity claim, the Board found that Freud "may have had a reasonable basis for believing that no one else had the right to use the mark in commerce, and its averment of that reasonable belief in its application declaration or oath was not fraudulent. Intellimedia Sports Inc. v. Intellimedia Corp., 43 USPQ2d 1203, 1207 (TTAB 1997)."

Although Freud's response to the information request was "woefully lacking," the Board found that Freud's failure to explain the uses of the color red by other entities "is not fraudulent "unless Freud knew the other entities using substantially the same mark for substantially identical goods had superior rights (assuming red could serve as a source identifier for saw blades) to Freud. See Intellimedia Sports, 43 USPQ2d at 1206." Milwaukee failed to prove by clear and convincing evidence that Freud possessed that knowledge.

As to Freud’s failure to indicate the dates of use for each item, the Board found this to be "at worst, akin to stating an erroneous date of first use, and does not constitute fraud."

Finally, as to Freud's failure to break out the individual goods in its Section 2(f) statement, Milwaukee failed to prove that Freud had an intent to deceive the USPTO, as required to establish a claim of fraud.

And so the Board rejected Milwaukee's fraud claims

Read comments and post your comment here.

TTABlog comment: Would you call this a cutting edge decision? Genericness seems to me to be the wrong pigeonhole for a proposed color mark. I think it would be better to rely on lack of exclusivity and failure to meet the high burden of showing acquired distinctiveness. But the Board has been on a genericness rampage lately.

See Professor Tushnet's point regarding the Board's resort to genericness. She notes that the first registration was more than 5 years old and therefore could not be challenged on the ground of lack of distinctiveness.

Text Copyright John L. Welch 2019.

Precedential No. 36: TTAB Deems ALLERGY CARE Generic for ... Guess What?

Applicant Haden sought a registration  on the Supplemental Register for the mark shown below, for "Medical and health care services, namely, medical treatment of allergies, asthma, immune disorders, and shortness of breath." The Board agreed with Examining Attorney Andrew Rhim that the term ALLERGY CARE is generic for the recited services, but it concluded that the mark is registrable on the Supplemental Register with a disclaimer of ALLERGY CARE. In re James Haden, M.D., P.A., Serial No. 87169404 (December 4, 2019) [precedential] (Opinion by Judge Thomas Shaw).

Because Applicant Haden sought registration on the Supplemental Register, he conceded that the proposed mark, as a whole, is "at best merely descriptive" of his services. Quaker State Oil Refining Corp. v. Quaker Oil Corp., 453 F.2d 1296, 172 USPQ 361, 363 (CCPA 1972) The question was whether it is generic.

The generic name by which a [service] is known is not a mark which can be registered on the Supplemental Register under section 23 because such a name is incapable of distinguishing applicant’s [services] from [services] of the same name . . . by others.” Clairol, Inc. v. Roux Distrib. Co., 280 F.2d 863, 126 USPQ 397, 398 (CCPA 1960).

As usual, the Board found that applicant’s recitation of services adequately defined the genus at issue. The relevant consuming public consists of "consumers seeking medical and health care services regarding allergies, asthma, immune disorders, and shortness of breath"

Dictionary definitions and Internet webpages convinced the Board that "ALLERGY CARE is a phrase commonly used by medical professionals in their advertising to refer to their practices that care for patients with allergies." The Board had not doubt that consumers "would readily understand the term ALLERGY CARE to refer to the genus of services defined by Applicant’s recitation of services."

The next question for the Board was whether applicant's mark, as a whole, is registrable on the Supplemental Register: i.e., "whether, given the background design, color, and stylization, the entire mark is capable of distinguishing Applicant’s services . . . ." If, so, a disclaimer of the generic term ALLERGY CARE would be required. See In re Wella Corp., 565 F.2d 143, 196 USPQ 7 (CCPA 1977) (Section 6 of the Trademark Act is equally applicable to the Supplemental Register.)

The examining attorney argued that "[s]tylized descriptive or generic wording is registrable only if the stylization creates a commercial impression separate and apart from the impression made by the wording itself," and that background designs comprised of common shapes are registrable only upon a showing that the design itself is distinctive.

The Board pointed out that the examining attorney's argument concerned only applications to register a mark on the Principal Register, where distinctiveness is required. For the Supplemental Register, an applicant need only show that the mark is capable of indicating source, the question being "whether the stylization of the wording and the background design are capable of ever functioning as a mark."

Applicant's mark contains a combination of colors, borders, and stylized generic wording making it more than an ordinary geometric shape or stylization alone with no ability to indicate source. Indeed, common geometric shapes with simple embellishments have registered with adequate showings of acquired distinctiveness. See, e.g., In re Raytheon Co., 202 USPQ 317, 319-20 (TTAB 1979) (evidence of record sufficient to establish acquired distinctiveness of a light-colored oval within a black rectangular carrier).

The Board found that applicant's combination of colors, borders, and stylization are capable of distinguishing the source of his services.

And so the Board affirmed the finding of genericness, but reversed the refusal to register on the Supplemental Register provided that applicant's disclaims the term with a disclaimer of ALLERGY CARE

Read comments and post your comment here.

TTABlog comment: Obviously, it was not the straightforward discussion of genericness that made this opinion precedential, but rather the Trademark 101 discussion of eligibility of the mark's eligibility for the Supplemental Register.

PS: here is the Raytheon background design mark discussed above:

Text Copyright John L. Welch 2019.

Precedential No. 35: TTAB Dismisses Appeal Because Applicant Did Not Address Drawing and Color Requirements

The USPTO refused to register the mark shown below, for "vodka," based on the applicant's failure to comply with a drawing requirement and its failure to amend the color claim in the application. The Office also refused registration under Section 2(d). Applicant argued against the Section 2(d) refusal but did not address the two requirements, either at the prosecution stage or in its appeal brief. The Board dismissed the appeal without reaching the Section 2(d) issue. In re Rainier Enterprises, LLC, Serial No. 87384516 (December 3, 2019) [precedential] (Opinion by Judge Frances Wolfson).

The failure to comply with a requirement established by the Trademark Rules is itself a proper ground for refusal of registration, even if it is the only outstanding refusal or requirement. See 15 U.S.C. § 1051(a)(4) ("The applicant shall comply with such rules or regulations as may be prescribed by the Director.").

Procedural requirements, such as the drawing and color claim requirements at issue in this case, ensure “the public’s interest in timely and adequate notice of the marks on file at the Office.” Because the granting of a filing date to an application potentially establishes a date of constructive use of the mark under Section 7(c) of the Act, 15 U.S.C. § 1057(c), a drawing that does not accurately reflect the mark due to poor imaging is potentially unfair to third parties who search Office records, because they do not have accurate information about the application. Relying on the search of Office records, a third party may innocently begin using a mark that conflicts with the mark, but be unaware of the conflict because the drawing is obscure.

Examining Attorney Andrew Crowder-Schaefer required applicant to provide a substitute drawing of the mark that clearly showed the claimed gold outline around the wording described in the mark description, and to amend the color claim in the application to clarify whether the color white was being claimed as a feature of the mark.

For marks that include color, “the drawing must show the mark in color, and the applicant must name the color(s), describe where the color(s) appear on the mark, and submit a claim that the color(s) is a feature of the mark.” Trademark Rule 2.52(b)(1), 37 C.F.R. §2.52(b)(1). Where there are white interior areas in a mark in which color is claimed, the applicant “must explain the purpose of the interior white areas on the drawing.” Trademark Manual of Examining Procedure (TMEP) § 807.07(d) (October 2018).

The Board observed that when an appellant fails to address a refusal or a requirement in its appeal brief, the Board may either affirm the refusal or it may treat the case as if no brief had been filed and therefore dismiss the appeal. "Either way, the application would stand abandoned."

In this case, because Applicant failed to address the requirements both before the Examining Attorney and in its appeal brief, dismissal of the appeal is appropriate. Cf. Trademark Rule 2.142(b)(1) (“If the brief is not filed within the time allowed, the appeal may be dismissed.”).

The Board chose to dismiss the appeal, and therefore it did not reach the Section 2(d) issue.

Read comments and post your comment here.

TTABlog comment: Not much explanation in this opinion. What difference does it make whether the appeal is dismissed instead of the refusals being affirmed? If the appeal is dismissed, may the applicant file a civil action for review of the underlying requirement? What about the Section 2(d) issue? It seems to me that if an opinion is going to be deemed precedential, it ought to be clear and instructive. To me, this one isn't.

Text Copyright John L. Welch 2019.

TTAB Dismisses Opposition to BLUE INDUSTRY for Clothing, Finding INDUSTRY to be a Weak Formative

The Board dismissed this opposition to registration of the mark BLUE INDUSTRY for various clothing items, finding no likelihood of confusion with, and no likelihood of dilution of, various INDUSTRY-formative marks owned by Opposer Pure & Simple for clothing and related retail store services. As to the Section 2(d) claim, the Board found that "[g]iven the sheer volume of third-party registrations and examples of third-party use, consumers are conditioned to look for differences between INDUSTRY formative marks to determine the source of a given product and are therefore less likely to be confused." Pure & Simple Concepts, Inc. v. I H W Management Limited DBA The Finchley Group, Opposition No. 91234659 (November 26, 2019) [not precedential] (Opinion by Judge Angela Lykos).

Third-Party Use and Registration: Opposer claimed to own a family of six INDUSTRY formative marks for clothing, promoted together on the website of its licensee. The Board pointed out, however, that a "family of marks" requires that the "family" feature be distinctive (i.e., "not descriptive or highly suggestive or so commonly used in the trade that it cannot function as the distinguishing feature of any party’s mark").

Here, applicant established that a "significant number of third parties have registered or used INDUSTRY formative marks in connection with clothing and apparel:" 74 third-party registrations for marks including the word INDUSTRY and 12 examples of advertised use.

Thus, the alleged family term, INDUSTRY, or the plural thereof, has been ubiquitously registered and used to identify clothing and apparel, making it both conceptually and commercially weak. This precludes a finding that Opposer owns a family of marks for the shared INDUSTRY element.

Turning to the sixth du Pont factor, the Board found that opposer's INDUSTRY-formative marks "all fall on the weak side of the spectrum, meaning that their scope of protection is limited." Therefore this factor weighted against opposer.

Because the term INDUSTRY is entitled only to a "restricted scope of protection," it will bar registration only of a mark "as to which the resemblance ... is striking enough to cause one seeing it to assume that there is some connection, association or sponsorship between the two." The Board found that the addition of the word BLUE was enough to distinguish applicant's mark, since "the mark as a whole does not bear a 'striking' resemblance in appearance, sound, meaning or commercial impression to any of Opposer’s pleaded registered marks."

Noting that the Board is "not concerned with the mere theoretical possibilities of confusion, deception or mistake or with de minimis situations but with the practicalities of the commercial world, with which the trademark laws deal," the Board found confusion unlikely and it dismissed opposer's likelihood of confusion claim.

Dilution by Blurring: Of course, the predicate for a dilution claim is proof that the claimant's mark has become famous. "Opposer must show that, when the general public encounters the mark 'in almost any context, it associates the term, at least initially, with the mark’s owner.' Coach Servs., 101 USPQ2d 1725, (quoting Toro, 61 USPQ2d at 1180). A famous mark is one that has become a 'household name.' Id."

The Board found that opposer's evidence of fame fell short.

[W]e did not find that Opposer owns a family of INDUSTRY formative marks for clothing.Opposer owns a family of INDUSTRY formative marks for clothing. Opposer’s testimony fails to break down by each individual mark the number of years of use and sales figures for clothing items sold under each mark. And even if Opposer’s testimony had attributed these figures to one or more particular marks, we would still find no fame for dilution purposes since there is no evidence that any of Opposer’s marks have risen to the level of consumer recognition as a household name.

And so the Board dismissed opposer's dilution claim.

Read comments and post your comment here.

TTABlog comment: If you are defending against a Section 2(d) claim, you need to put in the effort to ferret out third-party uses and registrations. This time it paid off.

Text Copyright John L. Welch 2019.

AIPLA CLE Webinar (Dec. 10): Constitutionality of Protecting Product Designs Both as Design Patents and as Trade Dress

On December 10, 2019 from 12:30 PM to 2:00 PM (Eastern Standard Time), the American Intellectual Property Law Association (AIPLA) will host a webinar entitled "Constitutionality of Protecting Product Designs Both as Design Patents and as Trade Dress." Kenneth Germain of Wood Herron & Evans LLP and Richard Stockton of Banner Witcoff will debate the issue. Register here.

Traditionally, product designs have been protected both as design patents and trade dress. But should different intellectual property law regimes protect the same features of a product consecutively or even concurrently? Both the Constitution's Patent/Copyright Clause (Art. I//8/8) and its Commerce Clause (Art. 1/8/3) probably can provide such protection. But can they both really coexist? Ken Germain asserts that the PC Cl. trumps the Commerce Cl., so that only one type of IP protection is available; Rich Stockton asserts that coexistence is allowable and appropriate. A spirited collegial debate will ensue!

Presented by: Kenneth Germain of Wood Herron & Evans LLP; Richard Stockton of Banner Witcoff

Read comments and post your comment here.

Text Copyright John L. Welch 2019.

Precedential No. 34: TTAB Denies Motion To Compel Production Of Metadata Because Opposer Didn't Ask For It

The Board denied a motion to compel Applicant Princess Race Wear to produce the "metadata" for five photographs that applicant provided during discovery, because Opposer Chix Gear did not ask for metadata in its discovery requests. Chix Gear, LLC v. Princess Race Wear Corp., 2019 USPQ2d 455321 (TTAB 2019) [precedential] (M. Catherine Faint, Interlocutory Attorney).

Applicant Princess sought to register the mark LIFE IS BETTER AT THE RACETRACK for jewelry, bags, and clothing items. Opposer Chix Gear, after receiving the five photographs (in electronic form) in response to its production requests, asked for supplemental information regarding the photographs. When Princess provided none, Chix Gear filed a motion to compel Princess to furnish the date the photographs were taken and the identity of the person who took the photographs.

In response, Princess maintained that none of Chix Gear's production requests required Princess to provide this information, and therefore there was nothing to compel.

In its reply, Chix Gear referred to the requested information as "metadata," and insisted that medatata must be provided in order to fully respond to the original production requests, and particularly its request that applicant provide "[a]ll documents evidencing Applicant’s claim that Applicant has priority over Opposer." According to Chix Gear, the request for the metadata was inherent in that document request because without the requested information "the documents cannot corroborate any alleged priority claim."

The Board observed that under FRCP 34(b)(1)(C) a party seeking discovery may specify a form for production and may request metadata. However, Chix Gear's production requests made no mention of metadata, nor did the parties discuss same. When the parties have not specified the form of production for electronically stored information [ESI], the responding party must produce it in the form in which it is "ordinarily maintained" or in a "reasonably usable form." See Trademark Rule Rule 2.116(a)(iii). The Board noted that, as to the photographs that Princess produced, "it appears on their face that they are reasonably usable as photographs and Opposer does not argue otherwise."

The Board found no legal basis for any argument that a request for metadata is "implicit" or inherent in Chix Gear's discovery request. See, e.g., India Brewing, Inc. v. Miller Brewing Co., 237 F.R.D. 190 (E.D. Wis. 2006) (while party may request production in specific electronic format, where it simply asks for "documents," production in electronic format is not required).

While Rule 34 is a starting point for resolving discovery disputes involving ESI and metadata, there is nothing inherent in the Rule requiring production of metadata where neither party has specified the form in which discovery will be provided, or where metadata has not been requested. See RICHARD L.MARCUS, 8B FED. PRAC. PROC. CIV. 3D § 2219 (Westlaw 2019).

And so the Board ruled that since Chix Gear did not request the "metadata" in its production requests, Princess need not provide it. See, e.g., D’Onofrio v. SFX Sports Grp., Inc., 247 F.R.D. 43, 48 (D.D.C. 2008) (denying motion to compel metadata where discovery request did not specifically request it).

Read comments and post your comment here.

TTABlog comment: Ask and you shall receive? Maybe not.

Text Copyright John L. Welch 2019.

Precedential No. 33: Another Failure-to-Function Refusal

In yet another in a stream of failure-to-function decisions, the Board affirmed a refusal to register the word+design mark shown immediately below, for "crabmeat," on the ground that the phrase fails to function as a trademark under Sections 1, 2, and 45 of the Lanham Act. However, the Board reversed a refusal founded on applicant's failure to comply with the examining attorney's misguided Rule 2.61 demand for information about the goods. In re Ocean Technology, Inc., 2019 USPQ2d 450686 (TTAB 2019) [precedential] (Opinion by Judge Cindy B. Greenbaum).

Failure-to-Function: A failure-to-function refusal is based on a determination as to how the proposed mark would be perceived by the relevant public. In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1862 (TTAB 2006). To make that assessment, the Board looks at the specimens of use and other evidence showing how the terms are actually used in the marketplace. In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013) (quoting Eagle Crest, 96 USPQ2d at 1229). "The more commonly a [term or expression] is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark." Id.

The examining attorney contended that the proposed mark would not be perceived as a source indicator because it is "presented in an informational manner and consists of terms that are commonly used in Applicant’s trade or industry to denote the purity, quality and ingredients of crabmeat and other food products." She provided evidence of third-party use of "the same or essentially synonymous terms to inform purchasers of the quality and ingredients of the products."

The Board found that the minimal stylization of the wording in the propose mark does not create a commercial impression separate from the words themselves, and the photographic depiction of a crab merely reinforces the informational nature of the wording. Moreover, the Board agreed with the examining attorney that proposed mark, as displayed on the specimen of use, "just conveys the contents of the package to consumers, and does not show any indication of source that may be perceived by the general public."

The specimen displays the proposed mark on the side of the product container in a manner that simply informs purchasers that the package contains all-natural, gourmet, pasteurized crabmeat. Nothing in the combination of wording, carriers, font and crab design in the proposed mark . . . results in a registrable composite. Rather, this evidence supports a finding that the proposed mark, as a whole, fails to function as a trademark for the identified goods.

Ocean Technology attempted to overcome this refusal by amending to the Supplemental Register, by claiming acquired distinctiveness, and by asserting inherent distinctiveness. However, the Board pointed out, matter that does not indicate source cannot be registered because it does not meet the statutory definition of a mark. See Sections 1, 2, and 45 of the Lanham Act; In re Boston Beer Co., L.P., 198 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA “is so highly laudatory and descriptive of the qualities of its product that the slogan does not and could not function as a trademark” and is incapable of acquiring distinctiveness under Section 2(f)); Water Gremlin, 208 USPQ at 90 (“Appellant's asserted intention to adopt the package design to indicate source may well be true, but intent or lack of intent at the time is not controlling. Nor is proof that a particular container actually functions as a means of indication of source to some purchasers. Not all designs or words which in fact indicate or come to indicate source will be restricted in use to a single merchant.”) (emphasis added by the Board).

The Board then considered four declarations submitted by applicant - not as proof of distinctiveness, but only on the issue of whether the proposed mark functions as a trademark - and it found the declarations to be of limited probative value because, among other reasons, they did not reflect the viewpoint of ordinary consumers.

In conclusion, the Board found that the proposed mark would not be perceived as identifying a particular source.

While we have given careful consideration to Applicant’s evidence of alleged consumer perception (i.e., the four declarations) solely to determine whether the proposed mark functions as a trademark, the evidence is insufficient to demonstrate that the relevant consumers recognize the proposed mark as indicating the source of the identified goods rather than as merely informational. See Eagle Crest, 96 USPQ2d at 1229. Accordingly, Applicant’s proposed mark fails to function as a trademark for Applicant’s goods.

Rule 2.61 Request for Information: Under Rule 2.61(b), an examining attorney "may require the applicant to furnish such information, exhibits, affidavits or declarations . . . as may be reasonably necessary to the proper examination of the application." The examining attorney required that Ocean Technology explain whether its goods "do or will consist of 100% real Callinectes crab." However, the wording "100% real Callinectes crab" does not appear in the proposed mark, and so there was "no justification why the requirement for information would be reasonably necessary to the proper examination of the application." The Board therefore reversed this refusal.

[Note that Ocean Technology lost a very similar appeal earlier this year in a decision that was deemed nonprecedential (TTABlogged here). There, the mark at issue did include the phrase "100% real Callinectes crab," and the Board affirmed a refusal based on noncompliance with a Rule 2.61(b) request for information. Apparently the same examining attorney made a mistake in the instant case.]

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TTABlog comment: The nonprecedential opinion in the prior case, noted above, is very similar to the opinion here, except that here the Board expressly considered applicant's declarations as evidence in support of its argument that the proposed mark functions as a trademark because consumers recognize it as such.

Text Copyright John L. Welch 2019.