Wednesday, August 24, 2016

Double WYHA? RENTED.COM Merely Descriptive and Confusable with RENT.COM for Real Estate Services

The USPTO refused registration of the mark RENTED.COM for "Computer services, namely, providing search platforms to allow users to request content from and receive content to a computer or mobile device in relation to real estate," finding the mark both merely descriptive of the services under Section 2(e)(1) and likely to cause confusion with the registered mark RENT.COM, in standard character and design form, for providing online real estate information and providing a website for promotion of rental properties." The Board affirmed the refusals. Would You Have Appealed? In re VacationFutures Inc., Serial No. 86634983 (August 22, 2016) [not precedential].

Mere Descriptiveness: Applicant VacationFutures did not address the Section 2(e)(1) refusal in its appeal brief, but the Board reviewed the refusal anyway. Internet evidence submitted by Examining Attorney Seth A. Rappaport showed, not surprisingly, that the terms "rent," "rental" or "rented" are commonly used as descriptors in connection with services identical or similar to Applicant’s services. Of course, ".com" has no source-identifying significance. Only in exceptional circumstances does the addition of ".com" to an unregistrable term yield a registrable result.

Here, no such exceptional circumstances exist. The “RENTED” portion of the applied-for mark is unregistrable by itself, and the addition of the “.COM” gTLD does not create a witty double entendre or add any other significance capable of identifying source or acquiring distinctiveness.

And so the Board affirmed the mere descriptiveness refusal.

Likelihood of Confusion: The Board found the applied-for mark to be "highly similar to Registrant's mark or to the dominant portion of Registrant's marks, with respect to sound, appearance and commercial impression."

Applicant argued that the cited marks are weak, noting that RENT.COM is registered on the Supplemental Register. The Board, however, pointed out that "marks deemed 'weak' or merely descriptive are still entitled to protection against the registration by a subsequent user of a similar mark for closely related goods and/or services." That applies to marks registered not only on the Principal Register, but those on the Supplemental Register as well.

Evidence of third-party use demonstrated that "the same entity commonly markets and provides the relevant services under the same mark, and that the [involved] services are sold or provided through the same trade channels and to the same classes of consumers in the same fields of use." The Board noted for the umpteenth time that when the marks at issue are highly similar, a lesser degree of similarity between the involved goods or services is necessary to support a finding of likely confusion.

The Board therefore found confusion likely and it affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: Well, would you have?

Text Copyright John L. Welch 2016.

Monday, August 22, 2016

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

People are saying that one can predict the outcome of a Section 2(d) case about 95 percent of the time just by looking at the marks and the goods/services. In one of these three recent appeals the Board reversed a likelihood of confusion refusal. Let's see how you do in figuring out which one it was. [Answer will be found in first comment].

In re Folino Estate, LLC, Serial No. 86356824 (August 19, 2016) [not precedential]. [Refusal of the mark FOLINO ESTATE & Design (below left) for wine, bar and restaurant services, and catering services, in view of the registered mark FOLIN CELLARS & Design (below right) for wine].

In re Tax Refund Services, Inc., Serial No. 86670858 (August 18, 2016) [not precedential]. [Refusal to register the mark shown below left for "tax filing services," in view of the registered mark TRS in standard character and design form (below right) for tax advisory services.

In re Mannatech, Inc., Serial No. 86447383 (August 17, 2016) [not precedential]. Refusal of the mark NUTRIVERUS & Design (below left) for "dietary and nutritional supplements sold through a multi-level marketing program," in view of the registered mark NU VERUS & Design (below right) for "liquid nutritional supplement; nutritional supplements; vitamin and mineral supplements].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.

Friday, August 19, 2016

TTAB Dismisses Opposition, Rejecting Opposer's Improper Declaration Evidence

The Board granted applicant's Rule 2.132 motion for involuntary dismissal in this opposition to registration of the mark SHENANDOAH VALLEY CAMPGROUND for "providing campground facilities." Opposer alleged that the mark is merely descriptive under Section 2(e)(1) and primarily geographically descriptive under Section 2(e)(2). During its testimony period, however, opposer submitted only a declaration of its manager, along with one exhibit. Shenandoah Valley Campgrounds, LLC v. Falling Waters, Inc., Opposition No. 91221846 (August 17, 2016).

Rule 2.132(a) provides for the dismissal of an opposition on the ground of failure to prosecute if plaintiff's testimony period has expired and it has not taken testimony or offered any other evidence.

Testimony may be submitted by way of affidavit or declaration only upon agreement of the parties. Likewise, documents attached to a declaration or affidavit may be accepted into evidence only if the parties have so agreed. Here there was no such agreement.

Opposer feebly argued that the declaration was "impeachment evidence," but the Board observed that the declaration "was intended to introduce witness statements and evidence and is therefore, testimony." [Impeach what? Applicant hadn't testified yet? - ed.].

Because there was no agreement between the parties to allow testimony by way of declaration, Opposer's declaration and accompanying exhibit were improper and inadmissible.

The Board therefore granted applicant's motion to strike the declaration and exhibit. Since Opposer did not submit any admissible evidence or testimony in support of its asserted claims, and since applicant had not made any admissions in its answer (except as to standing), the Board granted the motion for involuntary dismissal.

Read comments and post your comment here.

TTABlog comment: This is a judgment on the merits, and so a petition for cancellation would be barred by claim preclusion.

Text Copyright John L. Welch 2016.

Thursday, August 18, 2016

TTAB Test: Three Mere Descriptiveness Refusals For Your Perusal

By my estimation, somewhere around 85% of all Section 2(e)(1) mere descriptiveness refusals that reach the TTAB are affirmed on appeal. Well, here are three appeals that were decided during the past week. How do you think they came out? [Answers in first comment]. Do you see any WYHA?'s here?

In re Currency Cases LLC, Serial No. 86391147 (August 12, 2016) [not precedential]. [Refusal of CURRENCY CASES for "Storage apparatus that attaches to mobile device with adhesive"].

In re Classic Capital, Inc., Serial No. 86334513 (March 21, 2013) [not precedential]. [Refusal of CLASSIC CAR CAPITAL, for "consumer lending and financing services for classic, vintage and historical cars"].

In re K & G Concepts LLC., Serial No. 85940179 (August 15, 2016) [not precedential]. [Refusal of SMOOTH WRAP for "cigarillos; cigars; flavored tobacco; hand-rolling tobacco; leaf tobacco; roll your own tobacco; tobacco, cigars and cigarettes" [WRAP disclaimed].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.

Wednesday, August 17, 2016

Finding Institutional Chicken Related to Frozen Fish, TTAB Affirms RED LABEL 2(d) Refusal

The Board affirmed this Section 2(d) refusal to register the mark RED LABEL for "chicken for sale to foodservice institutions," finding it likely to cause confusion with the identical mark registered for "frozen fish and seafood." Applicant Tyson Foods argued that its customers are sophisticated and would distinguish between the source of goods distributed under a mark from the source of goods manufactured or produced under a mark. The Board was not impressed. In re Tyson Foods, Inc., Serial No. 86533628 (August 9, 2016) [not precedential].

Of course, the identity of the marks weighed heavily in favor of a finding of likely confusion: when the marks are identical, a lesser degree of similarity between the involved goods is needed to support a Section 2(d) bar to registration.

There could be little dispute that the goods are similar in nature, since chicken, fish, and seafood may be used interchangeably as appetizers or entrees, or in salads and sandwiches. [Really? I think they taste quite different - ed.]. Tyson, however, focused on the fact that its goods are not directed to retail consumers but to foodservice institutions, and thus involve purchasers more sophisticated than the general public.

Because applicant Tyson limited its identified class of purchasers, the only overlap in purchasers is foodservice institutions. Tyson argued that foodservice purchasers are sophisticated and exercise a high degree of care when purchasing goods. The Board agreed that "it stands to reason that institutional investors will exercise greater care in making their purchases than the general purchasing public."

Examining Attorney Brittney L. Cogan provided excerpts from various commercial websites offering chicken and fish or seafood under the same mark to foodservice institutions. She also submitted third-party registrations covering all three products sold to such institutions. Tyson, however, asserted that although these products may be distributed by the same company, sophisticated foodservice buyers "are not likely to think that such goods are manufactured or produced by the same company even if the goods are identified by the same mark."

Tyson conceded that there may be a few exceptions - i.e., entities that both manufacture or produce, and distribute, poultry and seafood to food service institutions. Moreover, it conceded that foodservice buyers "buy directly from manufacturers or wholesale distributors."

The Board concluded that some sources distribute all of these food products under the same brand, while others both produce and distribute food products. "The cited third-party evidence serves to suggest that the identified goods are of a type that emanate from a single source."

Finally, the Board observed once again that even sophisticated buyers are not immune from source confusion, especially when the marks, "as used on their identified goods, so resemble one another as to be likely to cause confusion ...." [That begs the question, doesn't it? - ed.].

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: If a distributor called Joe Blow's offered to deliver chicken on one day, and the next day someone offered to sell directly seafood under the Joe Blow's mark, I would think the seafood producer and the chicken distributor service were related, wouldn't you? I can see why Tyson got knocked out.

Text Copyright John L. Welch 2016.

Tuesday, August 16, 2016

TTAB Test: Are These Ice Cube Marks Confusable for Soft Drinks?

The USPTO refused registration of the mark shown below left, for "flavored bottle water, flavored enhanced water, flavored water, purified bottled drinking water, bottled artesian water, drinking water with vitamins, distilled drinking water," finding the mark likely to cause confusion with the registered mark shown below right, for "soft drinks." Both marks depict an ice cube and fruit. Based on dictionary definitions of "soft drink," the Board concluded that the goods are in part identical. But what about the marks? How do you think this came out? In re Juice of New York, Serial No. 85908633 (August 12, 2016) [not precedential].

The dictionary evidence defined "soft drink" as "a beverage that is not alcoholic or intoxicating and is usually carbonated, as root beer or ginger ale." According to the Board, flavored waters are encompassed within "soft drinks." [Are applicant's waters carbonated? - ed.].

As to the marks, the Board found them to be similar in appearance "in a number of ways." Both marks represent an ice cube juxtaposed with a form of fruit. Moreover, "the numerous circular grapes in Applicant's mark resemble the many round lobes of the berry in Registrant's mark." The registered mark has no color claim, and so it might be used in colors that resemble those of applicant's mark. Of course, the presence of the wording JUICE INC. is a point of difference.

Registrant's mark has no sound, whereas the sound of JUICE INC. is a point of difference.

As to meaning, the unusual idea of a combination of fruit with an ice cube in both marks constitutes a "substantial degree of similarity in meaning."

The concept of juice is expressed literally in Applicant’s mark, and not in the cited mark. However, we view this as a very weak point of distinction in meaning between the two marks, inasmuch as both marks are for use in connection with goods that may be flavored with juice; and because the idea of juice from fruit is at least suggested by the representation of fruit in Registrant’s mark.

The Board found that, although there are a number of differences in the marks, they are outweighed by the "surprising similarity inherent in the unusual juxtaposition of an item of fruit with a cube of ice." The Board concluded that "overall, Applicant's mark creates the commercial impression of being a rough or rudimentary depiction or imitation of Registrant's more realistically rendered mark."

Applicant pointed out that it owns the copyright in its mark, but the Board pointed out that ownership of a graphic design is legally separate from the right to register that design as a trademark.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: How did you do? I would have reversed.

Text Copyright John L. Welch 2016.

Monday, August 15, 2016

TTAB Test: Is "AMERICAN BARRISTER" Descriptive of Legal Services?

The USPTO refused to register the mark AMERICAN BARRISTER for legal services, deeming the mark to be merely descriptive under Section 2(e)(1) and primarily geographically descriptive under Section 2(e)(2). Applicant Robert J. Olejar's specimens of use indicated that he is both a British barrister and an American attorney at law. How do you think this came out? In re Robert J. Olejar, Serial No. 86302887 (August 11, 2016) [not precedential].

The Board first observed that refusals for mere descriptiveness and geographical descriptiveness should preferably be made in the alternative. The Board proceeded to analyze the two refusals as if made in the alternative.

Mere Descriptiveness: The definitions of record indicated that "barrister" is "a lawyer in England or Wales who is allowed to speak in the higher law courts." The Board found no evidence that "barrister" has a descriptive meaning in association with legal services rendered in the United States.

Because there is no evidence that legal services are rendered by “barristers” in the United States, we find that the phrase AMERICAN BARRISTER, considered as a whole, presents an incongruity that renders the mark suggestive. At least some imagination, thought, or perception is required to deduce what service characteristics the term indicates: that Applicant is an American lawyer offering legal services in the United States who also is qualified as a barrister in Great Britain.

Geographic Descriptiveness: The Board noted that marks incorporating the term "American" present "a special challenge" under Section 2(e)(2). TMEP Section 1210.02(b)(iv) points out that there is no simple or mechanical rule in dealing with these marks: "The introduction of a nuance, even a subtle one, may remove a mark from the primarily geographically descriptive category."

According to the Board:

If the term is used in a way that primarily denotes the United States as the origin of the goods or services, then it is primarily geographically descriptive. [E.g., MONOGRAMS AMERICA for embroidery stores.] *** Conversely, if a composite mark does not primarily convey geographically significance overall, or if AMERICA or AMERICAN is  used in a nebulous or suggestive manner, then is not primarily geographically descriptive. [E.g., THE AMERICAN GIRL for shoes].

The Board concluded that the word AMERICAN in the applied-for mark will be perceived as primarily referring to a personal characteristic rather than geographical location. Considering the incongruity of the mark, the Board was not persuaded that consumers would made an association between the services and the place named.

And so the Board reversed both refusals.

Read comments and post your comment here.

TTABlog comment: How did you do? I expected the mere descriptiveness refusal to be upheld. Applicant's website is here. It seems to me that the Board considered the mark in the abstract, rather than in the context of Applicant's actual services. Compare the recent HERBAL ACCESS marijuana case.

Text Copyright John L. Welch 2016.

Friday, August 12, 2016

TTAB Test: Is "GUINEA" Merely Descriptive of Collectible Coins?

The USPTO refused to register the mark GUINEA for, inter alia, collectible coins, deeming the mark merely descriptive under Section 2(e)(1). Applicant East India pointed out that a "guinea" is a  gold coin issued in England from 1663 to 1813, and it contended that "guinea" is an obscure foreign term. Examining Attorney Maria-Victoria Suarez pointed out that one of applicant's products is a replica of the historic guinea. How do you think this came out? In re The East India Company Holdings Pte. Ltd., Serial No. 85505335 (August 10, 2016) [not precedential].

Applicant maintained that the guinea coinage was never circulated in the United States, and that the Examining Attorney relied mainly on foreign websites to explain the meaning of the term "guinea." The Board was not impressed, particularly because the relevant American consumers are coin collectors, not the general public.

Moreover, the Examining Attorney established that:

[e]ven after the coin ceased to circulate, the name guinea was long used to indicate the amount of 21 shillings (£1.05 in decimalised currency). The guinea had an aristocratic overtone; professional fees and payment for land, horses, art, bespoke tailoring, furniture and other luxury items were often quoted in guineas until a couple of years after decimalisation in 1971. It was similarly used in Australia until that country went to decimal currency in 1966.

Applicant's website offers a "2015 One Guinea Gold Proof Coin," and states that "the Guinea is one of the world's most famous coins." The Board observed that applicant's website alone is sufficient to establish that the term "guinea" immediately conveys to coin collectors that the product being offered is a replica of a guinea coin.

The Board brushed aside applicant's claim of ownership of an EU registration, which served as the basis for the U.S. filing, pointing out that once an application is filed in the USA it must meet the eligibility requirements for registration.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Was this a WYHA? I think so.

By the way, as I recall, in Trollope's Palliser novels, Plantagenet Palliser was focused on the issue of the decimalization of British coins.

Text Copyright John L. Welch 2016.

Thursday, August 11, 2016

TTAB Test: Is "TOON KICKER" Merely Descriptive of Pontoon Motor Mounts?

The USPTO issued a Section 2(e)(1) refusal of the mark TOON KICKER, finding it to be merely descriptive of "outboard motor mounts, namely, brackets specifically design for connection to pontoon boats for mounting of secondary outboard motors." The Examining Attorney pointed to several uses of "toon" referring to a "pontoon" boat, and references to "kicker" as a small outboard motor. Applicant Lermayer submitted third-party registrations for marks containing the word "toon" that were issued without a disclaimer or a Section 2(f) claim. How do you think this came out? In Lermayer Outdoors, Inc., Serial No. 86128066 (August 3, 2016) [nor precedential].

The Board noted that except for only one reference in a blog, the Examining Attorney's uses of "toon" were part of various trademarks. Use of a term in a trademark does not prove that the term in merely descriptive. It may show that the term has significance within an industry, and that significance may be a suggestive one. There was no dictionary evidence that "toon" is an abbreviation of "pontoon." Moreover, the term appears in several registered marks, without disclaimer.

Clearly TOON is derived from “pontoon”, but these third parties might well have chosen to use TOON in their trademarks because it is suggestive of pontoon, not because it is the equivalent of pontoon. The only evidence we have of any non-trademark usage of “toon” is a single blogpost, but that is simply not sufficient for us to say that “toon” is an alternative term for “pontoon” or is an accepted abbreviation for that word.

The Board concluded that the USPTO had failed to carry its burden to show that TOON KICKER is merely descriptive. Although KICKER has a recognized meaning as an auxiliary motor, that descriptive meaning is subsumed when used in the mark TOON KICKER.

Because of the odd phraseology, a consumer seeing this mark for brackets designed to mount secondary outboard motors to pontoon boats would have a mental “hiccup” to understand the purpose of the goods. *** The mental steps a consumer would have to go through to transpose TOON KICKER brackets into “brackets for kickers used on pontoons” is enough to put TOON KICKER on the suggestive side of the “fine line” between descriptive and suggestive marks.

And so the Board reversed the refusal.

Read comments and post your comment here.

TTABlog comment: What if the goods were outboard motors rather than mounts? Would that make a difference on the descriptiveness issue?

Text Copyright John L. Welch 2016.

Wednesday, August 10, 2016

TTAB Test: Can the TTAB Order the Parties to Mediate?

In this Section 2(d) cancellation proceeding, Respondent Cooper moved to compel the parties to mediate. The Board denied Cooper's motion, pointing out that, although the Board encourages settlement, the Board does not compel parties to mediate. Cooper then petitioned the Director seeking reversal of the Board's denial. How do you think this came out? Rhythm Holding Limited v. Raymond W. Cooper, Cancellation No. 92060118 (August 9, 2016).

Cooper contended that the Board "adopted a per se rule" that it does not compel mediation, and therefore abused its discretion because the parties had all but settled the matter, with the exception of the monetary amount to be received by Cooper. Plaintiff Rhythm observed that the parties once discussed settlement, including an offer and counter offer which were rejected, but there was no outstanding proposal.

Cooper maintained that the Board has the authority to compel mediation under Fed. R. Civ. P. 16, which addresses pretrial conferences, scheduling and management, and which is generally applicable to Board proceedings pursuant to Trademark Rule 2.116(a), 37 C.F.R. § 2.116(a).

The Director, however, found Cooper's s reliance on Rule 16 to be misplaced. Rule 16 does not expressly require compulsory mediation, though the provisions permit flexibility to facilitate settlement.

The Board does not require settlement, that the parties engage in settlement discussions or compel mediation. Rather, the Board encourages settlement, and several aspects of Board practice and procedure, including its discovery practice and its usual willingness to suspend proceedings for reasonable times while parties negotiate for settlement, serve to facilitate the resolution of cases by agreement. TBMP § 605.01. Were the parties mutually to agree to enter into mediation, the Board similarly would facilitate their endeavors.

It is clear that no Board rule exists requiring mediation be compelled; that, as acknowledged by [Cooper], the Board has not compelled mediation as part of its practice; and the federal rule relied upon by [Cooper] does not require that mediation be compelled. Thus, the Board did not abuse its discretion or commit clear error in denying [Cooper]’s motion to compel mediation.

Read comments and post your comment here.

TTABlog comment: The petition to the Director was filed on April 27, 2015 (not 2016, as stated by the Director) and decided in August 2016. Does this give you any ideas as to how to de-rail an inter partes proceeding for months and months?

Cooper's reference to Petitioner as a "trademark troll" drew a rebuke from the Director, who noted that "[a] party making unsubstantiated accusations runs the risk of being found to have acted improperly. Fed. R. Civ. P. 11(b)."

Still to be decided is Cooper's motion to compel telephonic communications between the parties. Will that one go to the Director as well?

Text Copyright John L. Welch 2016.