Last Call! Free TTABlog Webinar: "TTAB Update: Rules, Rulings and Ruminations" (Sept. 26th at Noon)

I have been told by many that I have a face for radio and a voice for blogging. Nonetheless, Yours Truly will present a webinar on recent TTAB developments on September 26th from 12 to 1 PM EST, sponsored by Wolf, Greenfield & Sacks, P.C. "Admission" is free. Register here.


The webcast will emanate from the Federal Reserve Building in beautiful downtown Boston. Among the topics to be covered are the following:

• Application of the 2017 TTAB rule changes.
• The pending challenge to the constitutionality of Section 2(a)’s bar to registration of scandalous marks.
• The expanding definition of genericness.
• The probative value of evidence of third-party use and registration.
• Payment of USPTO attorney fees in review by civil action.
• Laches, abandonment, failure-to-function and functionality (utilitarian and aesthetic)

If you have questions, send them to me at jwelch @ wolfgreenfield dot com.
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Precedential No. 30: Rejecting Opposer's Over-Counting of Interrogatories, TTAB Grants Motion to Compel Responses

In a less than scintillating ruling, the Board order consolidation of two oppositions involving the same marks and parties and common issues of law and fact. The Board then granted Applicant YogaGlo's motion to compel responses to its interrogatories, overruling opposer's objection that the number of interrogatories exceeded Rule 2.120(d)'s limit of 75, including subparts. One Jeanswear Group Inc. v. YogaGlo, Inc., 127 USPQ2d 1787 (TTAB 2018) [precedential].

Consolidation: In response to opposer's motion to consolidate, applicant feebly argued that one proceeding involved fewer active applications and registrations than the other, that opposer asserted different rights in the two cases, and in any case that consolidation should await a ruling on its motion to compel.

The Board, however, observed that the parties are the same and the marks identical, both oppositions assert likelihood of confusion with the same four registered marks, and common questions of law and fact are involved. Much of the discovery and evidence would be the same in both cases. Without consolidation, "duplicative and/or piecemeal discovery and prosecution" in the two proceedings would likely continue.

The fact that additional pending applications are included by opposer in one case does not preclude consolidation, since applications are evidence only of their filing dates, not evidence of use of the marks.

Motion to Compel: Applicant served 17 numbered interrogatories in one of the proceedings, in response to which opposer served a general objection that the number of interrogatories exceeded the limit of 75, including subparts. Opposer claimed that applicant's interrogatories 1-4 each inquire as to the "total of  29 separate products" identified in the pleaded registrations, and each of those four interrogatories contain several subparts. Opposer counted those four interrogatories as follows:

The Board is not bound by a party's numbering or designation system. Instead, the Board will look at the substance of each interrogatory to see "whether it actually asks multiple distinct questions (e.g., sales figures and advertising expenditures), in which case each question is counted as a single interrogatory, or whether it asks a single question, or all relevant facts and circumstances concerning a single issue, applicable to all pleaded marks or all asserted goods and services (such as, sales figures for each of a party's marks for multiple years), in which case it is counted as a single interrogatory."

A propounding party may request that each interrogatory be answered with respect to each involved mark of a party and the interrogatories will be counted the same as if pertaining to only one mark. The count is not driven by the number of goods and services named. (Thus the Rules do not provide for additional interrogatories where more than one mark is pleaded or attacked, whether in a single or a consolidated proceeding).

The Board concluded that applicant's interrogatories 1-4 "arguably comprise at most 9 subparts." Adding the remaining interrogatories (which, according to opposer, comprised 30 subparts), the total fell well within the 75-interrogatory limit.

And so the Board granted the motion to compel and ordered opposer to serve its responses within 30 days.

Read comments and post your comment here.

TTABlog comment: Note that under the 2017 Rule changes, productions requests and admission requests are also now limited to 75. Happy counting!

Text Copyright John L. Welch 2018.

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

It has been said that one can predict the outcome of a Section 2(d) appeal 95% of the time just by looking at the marks and the goods or services. Presented for your consideration are three recent TTAB decisions in Section 2(d) appeals. One was reversed. Which one? [Answer in first comment].


In re Currie, Serial No. 87221626 (September 17, 2018) [not precedential] [Section 2(d) refusal to register the mark show below, for "amplifiers" [TONE AMPLIFIER disclaimed], in view of the registered mark ULTRATONE for "Audio equipment, namely, keyboard amplifiers and public address (PA) systems”].

In re DIYAUTOFTW LLC, Serial No. 87330708 (September 17, 2018) [not precedential] [Section 2(d) refusal of the mark shown below left [DIY AUTO disclaimed], for "Providing an Internet website that features information about automotive maintenance and repair service," in view of the registered mark shown below right, for "repair of automobiles, namely, do-it-yourself vehicle repair shop" [DIY AUTO REPAIR SHOPS disclaimed]].

In re Mystic B.V., Serial No. 79195133 (September 18, 2018) [not precedential] [Section 2(d) refusal of the mark shown below for "clothing for watersports namely swimsuits, rash guards, long johns; sporting shoes for watersports, rains shoes, neoprene boots, neoprene shoes, watersport helmets; rain coats, thermal underwear, windsurf jackets, kite pants, spray tops clothing and wetsuits," in view of the registered mark MYSTIC for "clothing, namely, shirts"].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2018.

PHILLIP GAVRIEL for Jewelry Fails to Prove Priority Over and Likelihood of Confusion With MANSUR GAVRIEL for Handbags, Says TTAB

The Board dismissed this Section 2(d) opposition to registration of the mark MANSUR GAVRIEL, in standard character form, for handbags, wallets, and the like, first finding that opposer failed to prove priority, and then concluding, for the sake of completeness, that applicant's' mark was not confusingly similar to opposer's mark PHILLIP GAVRIEL for jewelry. The Board gave weight to the lack of actual confusion and to applicant's evidence of third-party use and registration of marks using common surnames, for clothing and accessories (e.g., ANNE KLEIN and CALVIN KLEIN). Royal Chain, Inc. v Mansur Gavriel LLC, Opposition No. 91214740 (September 17, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).


Failure to Prove Priority: As part of its direct testimony, opposer relied on a registration for the mark PHILLIP GAVRIEL in standard character form to prove priority . Unfortunately it failed to timely renew the registration, and the registration expired after opposer's testimony period. Therefore opposer could no longer rely on the presumptions stemming from the registration, and it had to base its claim of priority on common law rights. Unfortunately, opposer's evidence failed to prove use of the mark prior to applicant's constructive use date, and so the Board dismissed the opposition on that ground.

Likelihood of Confusion: For purposes of completeness, the Board went on to consider the likelihood of confusion issue.

The evidence established that "jewelry and handbags are accessories to a woman’s fashion ensemble and, as such, they are complementary products." Moreover, the presumed trade channels for applicant's handbags overlap with those for opposer's jewelry. Likewise, applicant's handbags presumably include products sold at all price ranges, including the price ranges for opposer's jewelry.

Opposer claimed that a number of trade show attendees and buyers have inquired as to any affiliation or relationship between MANSUR GAVRIEL and PHILLIP GAVRIEL. The Board noted, however, that "[t]his sort of ambiguous inquiry is not probative of actual confusion." See, e.g., Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1334 (TTAB 1992) (inquiries as to corporate affiliations is not evidence of confusion because, without more, they “indicate that these persons were aware that [the companies at issue] were two different entities”); Elec. Water Conditioners, Inc. v. Turbomag Corp., 223 USPQ 162, 164 (TTAB 1994) (“That questions have been raised as to the relationship between firms is not evidence of actual confusion of their trademarks.”).

Instead, the Board found that opposer's mark PHILLIP GAVRIEL has garnerned significant unsolicited media attention. The involved marks have been in concurrent use since 2013. The Board found that "there has been a reasonable opportunity for confusion to have occurred," and therefore that the lack of actual confusion weighed in applicant's favor.

As for the marks, each comprises a given name and a surname. The Board has found, when identical goods are involved, that marks sharing a common surname but different given names were similar. Here, however, applicant introduced copies of third-party registrations and Internet evidence to show the coexistence of companies using common surnames for clothing and accessories: e.g., ANNE COLE and KENNETH COLE, ANDREW WANG and VERA WANG. The Board drew the following inferences from this evidence.

• There is no per se rule that marks consisting of identical surnames and different given names are similar and likely to cause confusion;

• The USPTO has registered marks with identical surnames and different given names in the field of clothing and clothing accessories; and

• A number of different trademark owners have accepted, over a long period of time, that various marks with identical surnames and different common names can be used and registered side-by-side without causing confusion provided that there are differences between the marks and goods in the field of clothing and clothing accessories

The Board found the marks to be more dissimilar than similar in appearance, sound, connotation, and commercial impression, and so it dismissed the opposition.

Read comments and post your comment here.

TTABlog comment: Perhaps the Board recognized that opposer, by seeking review via civil action, could get its registration into evidence, and so the Board went beyond the priority issue. However, are its findings and conclusion regarding Section 2(d) mere dicta?

Text Copyright John L. Welch 2018.

TTAB Finds BOYY Merely Descriptive and Confusable with BOY, Both for Clothing

The Board affirmed Section 2(d) refusals to register the mark BOYY for sunglasses and clothing, finding the mark confusingly similar to the mark BOY, registered under Section 2(f) for partly identical clothing items. Applicant tried various arguments to overcome the refusal based on its existing registration for BOYY, issued in 2007 [and mistakenly referred to as "incontestable" by the Board] for bags and purses, but to no avail. To add insult to injury, the Board went on to find BOYY merely descriptive of applicant's goods. In re Boyy Inc., Serial Nos. 87298620, 87298664, and 87298682 (September 14, 2018) [not precedential] (Opinion by Judge Christopher Larkin).

The Board had little trouble finding the marks confusingly similar. Likewise, the mere descriptiveness refusal was straightforward, since the applied-for mark describes the intended users of the goods (male children).

In attempting to overcome the likelihood of confusion refusals, applicant pointed to its existing registration for the mark BOYY in class 18 for bags and the like, claiming that it was "merely moving into a natural area of expansion." It urged that its applied-for mark and its registered mark are legal equivalents, and therefore it is entitled to claim priority of its earlier mark. Furthermore, it asserted, the owner of the cited mark could not be damaged by the issuance of the new registration (Morehouse). The Board was unimpressed.

The Board pointed out that these arguments for the most part are not available in ex parte cases. The natural zone of expansion doctrine applies primarily in inter partes proceedings as a way to establish priority. In the ex parte context the concept is usually applied to determine whether the goods in the application are within the natural zone of expansion of the goods in the cited registration, not whether the applicant may register its mark over the cited mark because the applicant owns a prior registration for related goods.

As to the Morehouse argument (no damage to registrant), the Board pointed out that this defense does not apply in an ex parte context.

However, the prior registration must be considered under the 13th du Pont factor. As the Board recently stated in Inn at St. John's [TTABlogged here], where "an applicant owns a prior registration that is over five years old and the mark is substantially the same as in the applied-for application, this can weigh against finding that there is a likelihood of confusion."

In Strategic Partners [TTABlogged here], the Board reversed a refusal to register the mark ANYWEAR in stylized form for footwear over the registered mark ANYWEAR BY JOSIE NATORI for clothing, in light of applicant's ownership of an "incontestable" registration [I think the Board means a registration more than five years old - ed.] for ANYWEARS for footwear, which registration had co-existed with the cited registration for more than five years. The Board observed in Strategic Partners that the case "involves a unique situation presented by the coexistence of applicant's existing registration with the cited registration for over five years, when applicant's applied-for mark is substantially similar to its existing registered mark, both for identical goods." The Board then ruled that the 13th du Pont factor outweighed the others.

Here, however, there are two important differences. First the cited mark and the earlier registered mark have coexisted for less than five years. Second, the goods in applicant's prior registration are not identical or legally identical to the goods in the three applications at issue.

Therefore, the 13th du Pont factor weighs "only slightly in favor of a finding of no likelihood of confusion."

Read comments and post your comment here.

TTABlog comment: Compare this decision on the 13th du Pont factor to last month's LA CHULA decision [TTABlogged here], where the 13th du Pont factor was determinative despite less than five years of co-existence.

Text Copyright John L. Welch 2018.

Free TTABlog Webinar: "TTAB Update: Rules, Rulings and Ruminations" (Sept. 26th at Noon)

Yours Truly will present a webinar on recent TTAB developments on September 26th from 12 to 1 PM EST, sponsored by Wolf, Greenfield & Sacks, P.C. "Admission" is free. Register here.


The webcast will emanate from the Federal Reserve Building in beautiful downtown Boston. Among the topics to be covered are the following:

• Application of the 2017 TTAB rule changes.
• The pending challenge to the constitutionality of Section 2(a)’s bar to registration of scandalous marks.
• The expanding definition of genericness.
• The probative value of evidence of third-party use and registration.
• Payment of USPTO attorney fees in review by civil action.
• Laches, abandonment, failure-to-function and functionality (utilitarian and aesthetic)

If you have questions, send them to me at jwelch @ wolfgreenfield dot com.
.

Finding No Abandonment Despite 6 Years of Nonuse, TTAB Dismisses NEW MAN Cancellation Petitions

After its 2010 acquisition of four NEW MAN (stylized) registrations for clothing, and securing a registration on its own in 2013, Respondent did not put the marks into use until 2016, and then only on a minimal basis. Nonetheless, Respondent convinced the Board that it had no intent not to resume use of the marks, and furthermore that its post-2016 sales sufficed to avoid abandonment. Garan Services Corp. v. Newman and Belle Etoile, Cancellations Nos. 92059231, 92059244, 92059248, 92059249, and 92059393 (September 14, 2018) [not precedential] (Opinion by Judge Francie R. Gorowitz).

The Assigned Marks: The marks covered by the first four registrations were not in use when respondent acquired them in 2010. (Petitioner did not claim that Respondent’s predecessor-in-interest had abandoned the marks. If that were true, it would have invalidated the transfer to Respondent.) There was no evidence that Respondent used any of the five marks prior to 2016.

Under Section 45, a mark is abandoned "[w]hen its use has been discontinued with intent not to resume such use." Nonuse for 3 consecutive years constitutes a prima facie case of abandonment. Therefore, as to the four assigned marks petitioner met its burden to establish a prima facie case, and the burden of proof shifted to respondent. The ultimate burden of persuasion, however, remained on petitioner.

Respondent may overcome petitioner's prima facie case by showing that its nonuse was excusable, i.e., that it took steps "that a reasonable business with a bona fide intent to use the mark in U.S. commerce would have undertaken." The registrant must prove that it had a plan to resume use within a "reasonably foreseeable future."

Respondent's managing director declared that the company was actively searching for US trade partners at professional trade shows, and it hired a US based consultant to analyze the market. In November 2012, Respondent was forced to postpone its plans due to financial difficulties. It informed the consultant that "it is reasonable and already very ambitious to aim for PE 2014. That postpones our project, without placing it into question but giving us more opportunities to succeed." Discussions with the consultant continued in 2013, and from October 2015 until February 2016, respondent was involved in advanced negotiations to sell NEW MAN brand goods at retail in the USA. Those negotiations stalled due to the institution of the subject cancellation proceedings.

Taken as a whole, this evidence of Respondent’s continuing efforts supports its assertion that it maintained an intent to commence use of the marks within the reasonably foreseeable future throughout the nonuse period from June 2010 to the end of 2015.

Use in 2016: Respondent began use of the mark in January 2016 and shipped goods to a New York City boutique (Les Canebier) in March 2016. Petitioner argued that these sales were minimal: "These sales were not a bona fide use made in the ordinary course of trade. They were just a feeble attempt to avoid losing right to the NEW MAN marks." The Board sided with respondent:

[E]ven though the sales documentation introduced provides evidence of minimal sales, the amount of sales is not determinative. If the sales are made in the ordinary course of trade and not for the purpose of reserving rights in the marks, they satisfy the use requirement and defeat a claim of abandonment. See Christian Faith Fellowship Church v. adidas AG, 841 F.3d 985, 120 USPQ2d 1640, 1645 (Fed. Cir. 2016) (“The sale of two ‘ADD A ZERO’– marked hats to an out-of-state resident is regulable by Congress under the Commerce Clause and therefore constitutes ‘use’ in commerce. ... It makes no difference under our cases that any actual or threatened effect on commerce in a particular case is minimal.”)

Therefore the Board found that respondent did not abandon its rights in the four assigned marks.

The Fifth Mark: The fifth registration issued in 2013. Respondent shipped goods in January 2016, one month before the three-year presumption date. "Since use was made within three years of the date of registration, Petitioner did not make a prima facie case of abandonment with respect to the mark and goods in Registration No. 4284412."

Conclusion: The Board dismissed the petitions for cancellation (except for certain goods that respondent had deleted when it renewed three of the registrations).

Read comments and post your comment here.

TTABlog comment: Proving abandonment ain't easy. See the recent MOMBACHO case, TTABlogged here.

Text Copyright John L. Welch 2018.

TTAB Test: Is "BIRTHPLACE OF THE AMERICAN BIKER" Merely Descriptive of Clothing?

Biker Clothing Company petitioned to cancel a registration for the mark BIRTHPLACE OF THE AMERICAN BIKER for "Clothing, namely, t-shirts, sweaters, scarves, bandanas, jackets," on the grounds of fraud and mere descriptiveness. In its brief, Petitioner argued that the phrase fails to function as a trademark, but the Board refused to consider that unpleaded claim. The fraud claim went nowhere. But what about Section 2(e)(1)? How do you think this came out? Biker Clothing Company, LLC v. Worldwide Dynamics Inc., Cancellation No. 92064143 (September 11, 2018) [not precedential] (Opinion by Judge Thomas W. Wellington).

specimen hangtag
Fraud: Petitioner claimed that, given the fame of the annual Hollister, California motorcyle rally, respondent committed fraud when it filed its underlying application by authorizing its attorney to declare that it was the owner of the mark and that no one else had the right to use it.

The Board pointed out that fraud is always difficult to prove, and a fraud claim "based on a purportedly false declaration statement in an application may be even more difficult to establish given the subjective nature of these statements." See 6 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 31.75-76 (5th ed. 2018); see also, e.g., Daniel J. Quirk, Inc. v. Village Car Co., 120 USPQ2d 1146, 1149 (TTAB 2016) (“Fraud will not lie against an applicant who holds an honest, good faith belief in its right to register a mark and signs an application with the statutorily prescribed ownership statement, which is phrased in terms of subjective belief.”).

Petitioner's proofs fell "far short" of the clear and convincing evidence required to prove fraud. Even if others have used the phrase, there was no evidence that anyone else asserted trademark rights in the phrase. "Simply put, Petitioner has not shown that another person had rights superior to Respondent’s rights at the time Respondent signed the declaration and that Respondent knew of such rights. Accordingly, Petitioner’s fraud claim fails."

Mere Descriptiveness: Petitioner's testimony and evidence demonstrated that "Birthplace of the American Biker" has been very closely associated with the annual Hollister, California motorcycle rally. "The phrase is used on advertisements for the rally and ornamentally on clothing, including t-shirts, that are commonly used by purchasers to commemorate the annual rallies."

As a result of the demonstrated close relationship of the phrase “Birthplace of the American Biker” with the annual Hollister motorcycle rally, and given the commemorative significance of this phrase in connection with clothing, we find the registered mark is merely descriptive of a key feature or characteristic of the goods. Specifically, consumers viewing “Birthplace of the American Biker” on or in connection with Respondent’s clothing, even on a hangtag or label, will immediately understand it as conveying the information that the clothing commemorates the annual Hollister motorcycle rally.

Conclusion: The Board concluded that petitioner had overcome the prima facie validity of the registration, and it granted the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: It seems to me that failure-to-function would have been a more appropriate ground, as in the I ♥ DC case.

Text Copyright John L. Welch 2018.

Precedential No. 29: Multiple Colors Applied to Product Packaging Cannot Be Inherently Distinctive, Says TTAB

In a case of first impression, the Board ruled that a color mark consisting of multiple colors applied to product packaging cannot be inherently distinctive. Consequently, since Applicant Forney Industries did not seek registration under Section 2(f) in the alternative, the Board affirmed a refusal to register the mark shown below, comprising the colors "red into yellow with a black banner located near the top as applied to packaging" for applicant's metal hardware, welding equipment, safety goods and marking products. In re Forney Industries, Inc., 127 USPQ2d 1787 (TTAB 2018) [precedential] (Opinion by Judge Linda A. Kuczma).

Nature of the Mark: Applicant maintained that the applied-for mark is not a "color mark," but should be treated as product packaging and therefore capable of being inherently distinctive. However, the Board, based on the application drawing, agreed with Examining Attorney Emily K. Carlsen that the mark is a color mark, consisting of multiple colors applied to product packaging.

Here, the drawing shows Applicant’s mark surrounded by dotted or broken lines, indicating the mark’s placement on product packaging. The mark description confirms this understanding. It states that the dotted lines are used to “merely depict placement of the mark” on the packing backer card. 37 C.F.R. §2.52(b)(4) (requiring mark description to explain the purpose of the broken lines); see also TMEP § 807.08. The particular shape of the product packaging (which varies as revealed by the specimens) is not claimed as part of the mark. The only elements claimed by Applicant, as amended, in the applied-for mark are the colors as applied to “the packer backing card.”

On Forney's specimens of use, the mark appears in "widely-differing shapes." And so the Board concluded that the mark should be treated as a color mark, consisting of multiple colors applied to product packaging.

Registrability of the Mark: The Examining Attorney maintained that color marks are never inherently distinctive, citing Qualitex (green press pad) and Owens-Corning (pink insulation). The Board observed, however, that those two cases are distinguishable. They involved a single color, and the color was applied to a product.

Here, by contrast, the issues presented are: (A) whether there is a different rule for inherent distinctiveness for color marks applied to product packaging than for color applied to a product itself; and (B) whether the rule that single-color marks cannot be inherently distinctive applies to color marks consisting of more than one color.

Wal-Mart and Qualitex make clear that "a particular color on a product or its packaging" can never be inherently distinctive. Wal-Mart, 54 USPQ2d at 1068. Recently, in In re General Mills, the Board held that although a "color applied to a product or its packaging may function as a trademark ... color can never be inherently distinctive as a source indicator."

The Board saw no legal distinction between a single color mark and one consisting of multiple colors "without additional elements, e.g., shapes or designs." It agreed with the analysis of the Tenth Circuit in Forney Indus., Inc. v. Daco of Mo., Inc., 120 USPQ2d 1035 (10th Cir. 2016) that, because there was no consistent shape, pattern, or design to the mark there at issue (which was similar to the mark here), applicant failed to establish an inherently distinctive trade dress.

We agree with the Tenth Circuit’s analysis of the relevant case law, and hold that a color mark consisting of colors applied to product packaging cannot be inherently distinctive, and may be registered on the Principal Register only upon adequate proof of acquired distinctiveness. Under that legal standard, we find that Applicant’s color mark which is not combined with a distinctive well-defined shape, pattern or other distinctive design is not inherently distinctive.

Conclusion: Colors alone cannot be inherently distinctive. Even if they could be, nothing in the record presented in this case indicates that Applicant Forney’s multiple color mark would be perceived as inherently distinctive. Because applicant did not request registration under § 2(f) in the alternative, acquired distinctiveness is not at issue.

And so the Board affirmed the refusal to register under Sections 1, 2, and 45 of the Trademark Act.

Read comments and post your comment here.

TTABlog comment: So multiple colors on a product can be inherently distinctive?

Text Copyright John L. Welch 2018.

CAFC Affirms TTAB: DETROIT ATHLETIC CO. for Sports Apparel Retail Services Confusable with DETROIT ATHLETIC CLUB for Clothing

The CAFC's opinion in In re Detroit Athletic Co., Appeal No. 2017-2361 (Fed. Cir. Sept. 20, 2018) [precedential] is a primer on much of the law of Section 2(d) as applied by the TTAB. The appellate court upheld the Board's affirmance of a refusal to register the mark DETROIT ATHLETIC CO. for sports apparel retail services [ATHLETIC CO. disclaimed] in view of the registered mark DETROIT ATHLETIC CLUB for various clothing items [ATHLETIC CLUB disclaimed], both marks being in standard character form.

The Board concluded that "because the marks are similar, the goods and services related, and the channels of trade and consumers overlap," consumers are likely to be confused by the marks. The CAFC ruled that the Board's conclusion was supported by substantial evidence.

The Marks: The court agreed that the marks are identical in structure and have a similar appearance, sound, connotation, and commercial impression. "These similarities go a long way toward causing confusion among consumers." The fact that the marks begin with the same two words is "particularly significant because consumers typically notice those words first." The "lead words are their dominant portion and are likely to make the greatest impression on consumers." This "weighs heavily" in the du Pont analysis.

Contrary to appellant's argument, the Board did not ignore the words COMPANY and CO. but rather  considered the marks in their entireties, and it did not err in focusing on the dominant portions of the marks.

The Goods and Services: The goods in the cited registration are general in nature and cover all types of clothing (including athletic uniforms and sweatshirts). Applicant's services relate to sports apparel and the clothing items sold comprise a subset of the goods of the registration. Thus the involved goods and services "substantially overlap."

The evidence showed that several third-parties apparel retailers sell clothing bearing their own marks as well as apparel bearing the names and logos of sports teams. This suggest that "consumers are accustomed to seeing a single mark associated with a source that sells its own branded clothing (as does the Detroit Athletic Club) as well as sports-teams-branded clothing (as does DACo.)."

Applicant maintained that consumers would have little trouble distinguishing between appellant's clothing store and registrant's private social club. The court found that irrelevant because the focus must be "on the goods and services described in the application and registration, and not on real-world conditions." (emphasis by the court).

Trade Channels: Because the registration includes no restrictions on channels of trade or classes of consumers, the Board did not err in finding that registrant's trade channels are broad enough to encompass applicant's trade channels. Even if, as applicant maintained, registrant sells its clothing only in its gift shop to club members, that is irrelevant, since the du Pont analysis must consider the channels specified in the application and registration, not those of the real world. Moreover, "the owner of an unrestricted registration is entitled to change its current trade channels at any time," and it cannot be assumed that registrant will never sell clothing online or through third-party distributors.

Lack of Actual Confusion: The court observed that the relevant test is likelihood of confusion, not actual confusion. Evidence that consumers are not confused is relevant but not dispositive, particularly in an ex parte context. Moreover, applicant's evidence - a brief consumer affidavit and several Internet search results and online reviews -  did not establish a lack of consumer confusion in commercially meaningful contexts. Substantial evidence therefore supported the Board's dismissal of applicant's evidence as non-probative.

Conclusion: The Board appropriately balanced the relevant du Pont factors. It was not required to consider every factor, but rather may focus on dispositive factors. Moreover, the Board was not required to address each item of evidence offered by applicant as to registrant's actual services, since "it is the scope of the club's registration that is relevant in this context, not its actual practices."

And so the CAFC affirmed the Board's ruling.

Read comments and post your comment here.

TTABlog comment: When considering the du Pont factors, don't forget that the TTAB is not the real world.

Text Copyright John L. Welch 2018.

Free TTABlog Webinar: "TTAB Update: Rules, Rulings and Ruminations" (Sept. 26th at Noon)

Yours Truly will present a webinar on recent TTAB developments on September 26th from 12 to 1 PM EST, sponsored by Wolf, Greenfield & Sacks, P.C. "Admission" is free. Register here.


The webcast will emanate from the Federal Reserve Building in beautiful downtown Boston. Among the topics to be covered are the following:

• Application of the 2017 TTAB rule changes.
• The pending challenge to the constitutionality of Section 2(a)’s bar to registration of scandalous marks.
• The expanding definition of genericness.
• The probative value of evidence of third-party use and registration.
• Payment of USPTO attorney fees in review by civil action.
• Laches, abandonment, failure-to-function and functionality (utilitarian and aesthetic)

If you have questions, send them to me at jwelch @ wolfgreenfield dot com.
.

USPTO Files Petition for Writ of Certiorari in Brunetti "FUCT" Case

On September 7, 2018, the USPTO filed at the Supreme Court a Petition for a Writ of Certiorari (pdf here) in Iancu v. Brunetti, seeking the Court's review of the judgment of the U.S. Court of Appeals for the Federal Circuit in In re Brunetti, 125 USPQ2d 1072 (Fed. Cir. 2017) [TTABlogged here]. The CAFC ruled in Brunetti that the Section 2(a) bar on registering immoral or scandalous marks is an unconstitutional restriction of free speech. The CAFC therefore reversed the decision of the TTAB that had affirmed the USPTO's refusal to register the mark FUCT for athletic apparel on the ground that the mark is vulgar and therefore scandalous.

In its petition, the Government poses the following question:

QUESTION PRESENTED
Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a), provides in pertinent part that a trademark shall be refused registration if it “[c]onsists of or comprises immoral * * * or scandalous matter.” The question presented is as follows:

Whether Section 1052(a)’s prohibition on the federal registration of “immoral” or “scandalous” marks is facially invalid under the Free Speech Clause of the First Amendment.

The Government argues that Matal v. Tam is not controlling because the bar on scandalous marks is not viewpoint discriminatory. Rather, restrictions on profanity and sexual images are viewpoint neutral. Neither of the lead opinions in Matal v. Tam concluded that strict scrutiny applies to viewpoint-neutral limitations on the registrability of trademarks.

The Government contends that Section 2(a)'s ban on registration of scandalous marks does not abridge the right to freedom of speech because it does not restrict the terms or images that may be used as trademarks. The CAFC therefore erred in treating the ban as an affirmative restriction on speech.

The court also erred, says the Government, in deeming the government-subsidy decisions inapplicable, in failing to recognize that the trademark-registration scheme operates only in the commercial sphere, and in dismissing the Government's legitimate justifications for denying the benefits of registration to sexually explicit content.

Registration of a trademark does not signal government endorsement of any particular product, service, mark, name, or registrant. But the government’s registration of a scandalous term as a trademark, which results in publication of that mark on the Principal Register and allows the registrant to use the mark with the ® symbol, would convey to the public that the United States regards scandalous images and terms as appropriate source identifiers in commerce. Congress could also reasonably conclude that commercial actors are more likely to choose marks for which the advantages of federal registration are available, and it could reasonably decline to provide this incentive to the use of sexual imagery and other scandalous marks. Those government interests are fully sufficient to justify Section 1052(a)’s exclusion of such marks from the federal trademark-registration program.

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TTABlog comment: I wonder how Supreme Court nominee Kavanaugh feels about Brunetti's mark?

Text Copyright John L. Welch 2018.

Precedential No. 40 (2017): TTAB Strikes Evidence of Common Law Rights Not Listed By Madrid Opposer On ESTTA Cover Sheet

Fellow Bostonian Keith Toms has called to my attention a precedential TTAB interlocutory order issued on December 28, 2017. [The opposition was dismissed the same day, in a lengthy opinion discussed here]. In its order, the Board struck opposer's evidence regarding common law rights in its DON Q marks for certain goods (other than rum, the subject of opposer's pleaded registrations) because opposer did not list those alleged rights when it completed the ESTTA cover sheet for this opposition to applicant's Section 66(a) request for extension of protection under the Madrid Protocol. Destileria Serralles, Inc. v. Kabushiki Kaisha Donq DBA Donq Co., Ltd., 125 U.S.P.Q.2d 1463 (TTAB 2017) [precedential].

The Board pointed out once again that "Madrid applications are treated differently in many key respects from other applications." The USPTO, in order to meet its obligations under the Madrid Protocol, has promulgated specific regulations and requirements to accommodate the Madrid system.

[T]he USPTO must ... notify the International Bureau (“IB”) of the World Intellectual Property Organization, informing it of certain information required under U.S. law implementing the Madrid Protocol. This notice must be sent within strict time limits, and any USPTO failure to fully and timely notify the IB may result in the opposition being limited by the information sent or dismissed in its entirety. CSC Holdings, LLC v. SAS Optimhome, 99 USPQ2d 1959, 1960 (TTAB 2011) [TTABlogged here]

The ESTTA cover sheet "performs an integral function in cataloguing and reporting to the IB information on oppositions filed against Madrid applications." The ESTTA sends to WIPO only the information that is entered on the ESTTA electronic form. The system is fully automated, and "Board personnel do not review or edit the information provided on the electronic form to ensure that it is complete." Id.

ESTTA allows the opposer to identify the grounds for opposition, as well as the registrations and/or pending applications of which it claims ownership, and on which it relies as a basis for its opposition. ESTTA also permits an opposer to identify common law rights in a mark or marks, and the goods and/or services associated therewith as a basis for its asserted claims.

The Board ruled that opposer’s failure to identify on the ESTTA cover sheet its common law rights in "other goods and services" (including rum cakes, chocolates and bar services) precluded opposer from relying on such common law rights in connection with its likelihood of confusion and dilution claims.

Indeed, if an opposer is precluded from amending its pleading to add an additional claimed registration to support a previously asserted likelihood of confusion claim under Section 2(d) of the Trademark Act [See Rule 2.107(b) and accompanying Notice of Proposed Rulemaking], it would follow that an opposer also could not add common law trademark rights not previously identified on the ESTTA cover sheet. By doing so, an opposer would be impermissibly expanding, not clarifying, the scope and/or basis of its Section 2(d) claim.

The Board, construing applicant's objection to the evidence as a motion to strike, granted the motion and refused to consider opposer’s common law rights in its DON Q marks for these additional goods or services, and it further refused to allow opposer to amend its pleading to add said common law rights.

Read comments and post your comment here.

TTABlog comment: Suppose that during discovery, one uncovers facts that would support a finding of abandonment or fraud? If you can't add those claims in a Section 66(a) opposition, will you be forced to appeal by way of civil action in order to bring in these claims?

Text Copyright John L. Welch 2018.