JUST SAY IT for Books Confusable with and Dilutive of Nike's JUST DO IT, Says TTAB

Finding Nike's slogan JUST DO IT to be "exceedingly" famous for both Section 2(d) and Section 43(c) purposes, the Board sustained this opposition to registration of the mark JUST SAY IT in the design form shown below, for books and downloadable e-books in the field of "promoting healthy lifestyles encompassing physical, social, emotional and spiritual aspects of positive human oral communications.” The parties opted for ACR and applicant stipulated that JUST DO IT is famous for dilution purposes and became famous before her filing date. From there it was all downhill for applicant. Nike, Inc. v. Cheryl Bauman-Buffone, Opposition No. 91234556 (March 20, 2019) [not precedential] (Opinion by Judge Michael B. Adlin).

Fame: Noting applicant's admission regarding fame for dilution purposes, the Board nonetheless considered the degree of fame under Section 2(d), since "likelihood of confusion fame varies along a spectrum from very strong to very weak." Noting that Nike has spent $5 billion in advertising the JUST DO IT slogan, that it has been called "one of the most famous and easily recognized slogans in advertising history," that its advertising has featured various well-known athletes, etc., the Board found JUST DO IT to be a "household name" and "exceedingly famous."

The Marks: The Board found the marks to be "more similar than dissimilar, in how they look and sound and in the meaning they convey."

The main dissimilarity between the marks is that the middle word in Opposer’s mark is DO while the middle word in Applicant’s mark is SAY. But both DO and SAY are verbs, with DO being more general, in that it conveys performing an action of some unspecified type.13 The verb SAY is more specific, and means to speak.14 Thus, the command JUST DO IT could implore the listener to SAY something, depending on the circumstances. Furthermore, we do not need evidence to know that “saying” is often a precursor to “doing.” For example, people often talk about or “say” what their intentions are before performing or “doing” the act. The common expression “actions speak louder than words” also suggests that there is some relationship between the two terms. In short, while DO and SAY look and sound different, their meanings are not necessarily significantly different in the context of being commanded to take some action. See generally, Nike, Inc. v. Maher, 100 USPQ2d at 1022-23 (finding JUST JESU IT confusingly similar to JUST DO IT).

The Goods: Applicant goods are focused on "healthy lifestyles encompassing physical ... aspects of positive human oral communications." The Board presumed that the "physical" aspects of oral communications could encompass a variety of physical activities, including activities for which Nike's goods could be used.

Keeping in mind that fame plays a dominant role in the Section 2(d) analysis, the Board observed that Nike uses its slogan for more than just sports clothing and equipment. It also provides information regarding healthy lifestyles and the physical aspects thereof - not through books or e-books, but through its mobile training applications. And Nike also uses the slogan in connection with "social, emotional and spiritual aspects of human communications." [E.g., the Colin Kapernick ad campaign].

The Board observed that consumers might believe that applicant's books and e-books "are an extension of Opposer's JUST DO IT advertising campaigns."

Other du Pont Factors: There was insufficient evidence to show any overlap in channels of trade, but the classes of consumers overlap in part. The fact that Nike uses its mark on a variety of goods also weighed in its favor.

Conclusion Regarding Section 2(d): The Board sustained the Section 2(d) claim.



Dilution by Blurring: Applying the non exclusive factors of Section 1125(c)(2)(B)(i-vi), the Board wasted little time in finding the marks to be similar and Nike's mark to be inherently distinctive. Nike is the "substantially exclusive" user of its mark. And the slogan enjoys the "highest level of fame."

There was no evidence that applicant intended to create an association with the JUST DO IT mark, nor any evidence of any actual association by consumers.

The Board concluded the dilution is likely, and so it sustained the Section 43(c) claim.

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TTABlog comment: The opinion seems like one long stretching exercise. What do you think?

Text Copyright John L. Welch 2019.

Current Roster of TTAB Judges

With the recent appointment of three (3) new TTAB Judges, the Trademark Trial and Appeal Board's membership now stands at twenty-five (XXV) Administrative Trademark Judges. The current roster is set forth below, beginning with Chief Judge Gerard F. Rogers and then proceeding alphabetically.

Rogers, Gerard F. (Chief Judge): Appointed to TTAB in 1999; Prior Professional Experience: Trademark Examining Attorney; Assistant to the Assistant Commissioner for Trademarks; TTAB Staff Attorney; Education: B.A., University of Massachusetts Amherst; J.D. magna cum laude, New England School of Law.

Adlin, Michael B.: Appointed to TTAB in 2012; Prior Professional Experience: TTAB Interlocutory Attorney; USPTO Office of External Affairs; Private Practice; Education: B.A., Duke University; J.D., Boston University School of Law.

Bergsman, Marc A.: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; Trademark Managing Attorney; TTAB Interlocutory Attorney; Private Practice (Washington, D.C.); Education: B.A., Miami University of Ohio; J.D., Cleveland Marshall College of Law, Cleveland State University.

Cataldo, Peter W.: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Canisius College; J.D., Albany Law School.

Coggins, Robert H.: Appointed to TTAB in 2017; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.S., Davidson College; J.D., Wake Forest University School of Law.

Dunn, Elizabeth A.: Appointed to TTAB in 2019; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Boston University; J.D., American University Washington College of Law.

English, Christen M.: Appointed to TTAB in 2019; Prior Professional Experience: Private Practice; TTAB Interlocutory Attorney; Education: B.A., Boston College; J.D. Catholic University Columbus School of Law.

Goodman, Cheryl S.: Appointed to TTAB in 2014; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., University of Illinois; J.D., Florida State College of Law.

Greenbaum, Cindy B.: Appointed to TTAB in 2012; Prior Professional Experience: Private Practice (New York and Washington, D.C.); Trademark Examining Attorney; TTAB Interlocutory Attorney; TTAB Managing Interlocutory Attorney (2006-2011); Education: Wharton School, University of Pennsylvania; J.D., New York University School of Law.

Heasley, David K.: Appointed to TTAB in 2015; Prior Professional Experience: Private Practice (Washington, D.C.); Education: B.A., The Johns Hopkins University; J.D., University of Maryland School of Law.

Hightower, Susan J.: Appointed to TTAB in 2012; Prior Professional Experience: Private Practice (Austin, Texas); Education: B.A., Austin College; M.A., University of Texas; J.D., Stanford Law School.

Hudis, Jonathan: Appointed to TTAB in 2019; Prior Professional Experience: Private Practice (Washington, D.C. and Alexandria, Virginia); Education:  B.A., State University of New York at Albany: J.D., Brooklyn Law School.

Kuczma, Linda A.: Appointed to TTAB in 2011; Prior Professional Experience: Private Practice (Chicago, Illinois); Education: B.S., St. Mary's University; J.D., Loyola University Chicago School of Law.

Kuhlke, Karen: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice (Washington, D.C.); Education: B.A., University of Kansas; M.A., Columbia University; J.D., Georgetown University.

Larkin, Christopher: Appointed to TTAB in 2016; Prior Professional Experience: Private Practice (Los Angeles, CA; New York, N.Y.); Education: B.A., Stanford University; J.D., Columbia Law School.

Lykos, Angela: Appointed to TTAB in 2010; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice; Education: B.A., M.A., The Johns Hopkins University; J.D., Duke University Law School.

Lynch, Cynthia C.: Appointed to TTAB in 2015: Prior Professional Experience: Private Practice; Attorney-Advisor at the International Trade Commission; USPTO Assistant Solicitor: USPTO Administrator for Trademark Policy and Procedure; Education: B.A., University of North Carolina; J.D., University of Virginia School of Law.

Mermelstein, David: Appointed to TTAB in 2006: Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; TTAB Supervisory Interlocutory Attorney; Education: B.A., New College, Hofstra University; J.D., American University.

Pologeorgis, George C: Appointed to TTAB in 2015; Prior Professional Experience: TTAB Interlocutory Attorney; TTAB Attorney in the Office of Trademark Quality Review and Training; Trademark Examining Attorney; Private Practice; Education: B.A., University of Pennsylvania; J.D., George Washington University National Law Center.

Ritchie, Lorelei: Appointed to TTAB in 2008; Prior Professional Experience: Private Practice; Arbitrator and Judge pro tem, Orange and Los Angeles Counties, California; Intellectual Property Manager, UCLA; Adjunct Professor of Law, Loyola Law School, Los Angeles; Assistant Professor, Florida State University School of Law; Education: A.B., Stanford University; J.D., Columbia University.

Shaw, Thomas: Appointed to TTAB in 2011; Prior Professional Experience: Associate Solicitor at the USPTO; Managing Attorney; Senior Attorney; Trademark Examining Attorney; Education: B.A., George Washington University; J.D., University of Miami School of Law.

Taylor, Jyll: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., University of North Carolina at Chapel Hill; J.D., Howard University School of Law.

Wellington, Thomas W.: Appointed to TTAB in 2007; Prior Professional Experience: TTAB Interlocutory Attorney; Trademark Examining Attorney; Private Practice; Education: B.A., University of Maryland at College Park; J.D., American University Washington College of Law.

Wolfson, Frances: Appointed to TTAB in 2010; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice; Education: B.A., U.C. Santa Barbara; J.D., U.C.L.A.

Zervas, Albert: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice (New York and Washington, D.C.); Education: B.A. and J.D., University of Virginia.

Text Copyright John L. Welch 2019.

TTABlog Test: Is BIKESTYLE Merely Descriptive of Cycling Apparel?

[This guest post was written by Amanda B. Slade, an associate in the Trademark Group at Wolf, Greenfield & Sacks, P.C.]. The USPTO refused registration of the mark BIKESTYLE, in standard character form, for cycling apparel including gloves, arm and leg warmers, pants, cycling shorts, cycling jerseys, shirts, rainwear, and hats, deeming the mark to be merely descriptive under Section 2(e)(1) On appeal, Applicant DashAmerica argued that because “consumers must engage in multiple steps of reasoning to understand how Applicant’s mark relates to Applicant’s goods,” its mark is suggestive rather than merely descriptive. How do you think this came out? In re DashAmerica, Inc., Serial No. 87564276 (Mar. 13, 2019) [not precedential] (Opinion by Judge Peter W. Cataldo).

Descriptiveness: During prosecution of the application, Examining Attorney Jonathan R. Falk concluded that the mark’s “wording merely describes a characteristic of applicant’s goods, specifically, a type of fashion made for riding a bicycle.” The Examining Attorney relied on dictionary definitions of “cycling” (“the act, sport, or technique of riding or racing on a bicycle, motorcycle, or similar vehicle”), “bike,” and “style” (“a particular fashion”). In response, DashAmerica contended that its BIKESTYLE mark “does not refer to ‘fashion made for riding a bicycle’ . . . but rather to all aspects that embody the interests of cyclists, and, in turn, the cyclists' way of life.” As a result, Applicant asserted, BIKESTYLE “does not make consumers immediately think ‘clothing,’ but instead invites them to pause for a moment to understand how the word relates to the company’s goods . . . .” The Examining Attorney was unpersuaded and maintained the refusal.

The Board agreed with the Examining Attorney and affirmed the refusal to register.. The opinion centered on three main conclusions. First, in its brief, Applicant asserted that “in evaluating descriptiveness, the Examining Attorney improperly split BIKESTYLE into the components BIKE and STYLE.” By dissecting “the mark into isolated elements,” the Examining Attorney allegedly failed to make a determination based on the mark’s overall impression. However, the Board underscored that “[i]n considering a mark as a whole, the Board may weigh the individual components of the mark to determine the overall impression or the descriptiveness of the mark and its various components.” In re Oppedahl & Larson LLP, 71 U.S.P.Q.2d 1370, 1372 (Fed. Cir. 2004). Because the combination of BIKE and STYLE did not evoke “a new and unique commercial impression,” the Board found that the “composite mark BIKESTYLE also has a merely descriptive significance.”

Second, Applicant DashAmerica argued that “‘style’ has numerous meanings, many of which could apply here.” Applicant noted that, in addition to “a particular fashion,” “‘style’ can also be defined as a ‘quality of imagination and individuality expressed in one’s actions and tastes’ or ‘a mode of living.’” The Board rejected this line of reasoning, stating, “That a term may have other meanings in different contexts is not controlling.” In re Bright-Crest, Ltd., 205 U.S.P.Q. 591, 593 (T.T.A.B. 1979). The fact that “‘style’ may possess additional meanings in other contexts [did] not diminish the descriptive significance of the term in connection with the goods at issue.”

Finally, Applicant claimed that “there is no evidence of record that any third party uses ‘bikestyle,’ ‘bike style,’ ‘bicycle style,’ ‘cycling style,’ to describe any apparel, footwear, or any other goods to be used for either the sport of cycling or riding a bicycle in general.” The Board emphasized that it is unnecessary for the USPTO to demonstrate that others have used the mark or term to describe cycling apparel. There is simply “no requirement that the Office prove actual competitor use or need; it is well established that even if an applicant is the only user of a merely descriptive term, this does not justify registration of that term.” In re Carlson, 91 U.S.P.Q.2d 1198, 1203 (T.T.A.B. 2009).

For these reasons, the Board determined that “the mark BIKESTYLE immediately describes a characteristic [or] feature of Applicant’s various items of cycling apparel, namely, that it is apparel fashioned for bicycling or bike fashion, without the need for multistage reasoning” and issued a final decision refusing registration. 

Request for Judicial Notice or To Reopen Prosecution: The opinion raises interesting procedural issues as well. Applicant had attached copies of third-party registrations to its reply brief and asked that the Board take judicial notice of the registrations or, in the alternative, suspend the appeal and reopen prosecution to allow their introduction. However, the Board stated that “[t]he Board does not take judicial notice of applications or registrations; they must be proved by competent evidence.” See, e.g., In re Jonathan Drew Inc., 97 U.S.P.Q.2d 1640, 1644 n.11 (T.T.A.B. 2011). Additionally, the Board reiterated that “the proper procedure for an applicant . . . to introduce evidence after an appeal has been filed is to submit a timely written request with the Board to suspend the appeal and remand the application for further examination.” See 37 C.F.R. § 2.142(d). The request must also include a showing of good cause (i.e. “a satisfactory explanation as to why the evidence was not filed prior to appeal”). As Applicant failed to provide such an explanation, Applicant’s request for remand was denied.

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TTABlog comment: The Chinese "Flying Pigeon" (depicted above) is the world's most popular vehicle; more than 500 million have been manufactured (according to Wikipedia).

Text Copyright John L. Welch and Amanda B. Slade 2019.

Three New Judges Appointed to TTAB

Chief Judge Roger has announced that two Interlocutory Attorneys at the Trademark Trial and Appeal Board have been promoted to the position of Administrative Trademark Judge. In addition, a prominent attorney in private practice will be joining the Board. By my count, this brings the total to 25, including the Chief Judge.

Elizabeth A. Dunn has served the TTAB for many years as its senior Interlocutory Attorney and been instrumental in mentoring other Interlocutory Attorneys. She is a former Trademark Examining Attorney, a recipient of the Department of Commerce Bronze Medal for her performance in that position, and honed her focus on quality examination practices as a Senior Attorney supervising Examining Attorneys in one of the Trademark operation’s law offices. Her USPTO experience is varied and includes completion of a work project in the Office of the Solicitor and a Career Development Detail in the Office of the Commissioner for Trademarks. Judge Dunn is a cum laude graduate of Boston University and earned her law degree from the Washington College of Law at American University.

Christen M. English has served the TTAB as an Interlocutory Attorney for the last six years. Prior to joining the Board she spent eleven years with the law firm of Drinker Biddle & Reath, LLP, first as an Associate and later as Counsel. Her 20-year career as a trademark lawyer includes prior associate positions in the IP practices of Cooley LLP and the firm now known as Kelley Drye & Warren, LLP. During this career, Judge English counseled clients large and small and worked in secondment for the in-house legal department of a Fortune 50 company. The Board has benefitted from her diverse experience with these firms. Judge English is a summa cum laude graduate of Boston College and earned her law degree magna cum laude from the Catholic University Columbus School of Law.

Jonathan Hudis joins the Board from his position as a partner with the Washington, D.C. office of the firm of Quarles & Brady LLP, which he joined in 2015. His 30-year long career specializing in Trademark, Copyright, Trade Secret and Unfair Competition law included more than 20 years as a litigator of IP cases with the firm now known as Oblon, McClelland, Maier & Neustadt, LLP. Apart from his long and distinguished career in private practice, Judge Hudis has been a frequent public speaker and has served as the editor of the American Bar Association (ABA) publication titled A Legal Strategist’s Guide to Trademark Trial and Appeal Board Practice, now in its third edition. From 2014-2017, he served on the USPTO’s Trademark Public Advisory Committee (TPAC) and was a member of the Information Technology and TTAB sub-committees. Apart from his public service on TPAC, Judge Hudis has held many leadership positions in the ABA-IPL and AIPLA. Judge Hudis is a magna cum laude graduate of the State University of New York at Albany, and earned his law degree from Brooklyn Law School.

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Text Copyright John L. Welch 2019.

TTABlog Test: Is DAILY FILL Confusable with DAILY'S For Gas Station Convenience Store Services?

First Coast Energy opposed an application to register the mark DAILY FILL for "retail store services featuring convenience store items and gasoline," claiming a likelihood of confusion with the registered mark DAILY'S for the same services. The parties opted for ACR and stipulated to a many things, leaving one critical issue to be resolved: the similarity of the marks. How do you think this came out? First Coast Energy, L.L.P. v. Dhukani Holdings, LLC, Opposition No. 91231925 (March 8, 2019) [not precedential] (Opinion by Judge Susan J. Hightower).

Since the services are identical, the Board must presume that they travel in the same channels of trade to the same classes of consumers. The transactions involved in the parties' services are "commonplace and relatively inexpensive," and are often prompted by impulse or immediate need.

Strength of Opposer's Mark: The evidence indicated that opposer's mark has some consumer recognition, at least in Florida, where the mark has been in use for more than 15 years. Its annual gross revenues at its 37 stores, all in Florida, amounted to  $369 Million. Customers transact business with opposer 73,000 times per day. It spends about $1.1 Million annually for marketing, primarily targeted at the Jacksonville market.

The mark DAILY'S, registered without a 2(f) claim, is presumed to be inherently distinctive. Applicant pointed to three third-party registrations for marks incorporating the word DAILY for convenience store services, but provided no evidence as to use of those marks. According to the Board, these registrations are probative but insufficient to affect the strength of opposer's mark.

The Board therefore accorded to opposer's mark "the normal scope of protection afforded to inherently distinctive marks."

Similarity of the Marks: Applicant argued that the marks engender different commercial impressions: "DAILY FILL is a common expression for a quantity that satiates for a 24-hour period. DAILY'S is a possessive that implies a business owned or operated by a person named Daily."

The Board acknowledged that use of the possessive in opposer's mark may contribute to the perception that it is a surname, but "marks may not be meaningfully distinguished by the use of the same term in possessive form." [E.g., BINION and BINION'S ROADHOUSE; WIN-WAY DOLLAR STORE and WINN'S].

The Board noted that there was no evidence that anyone associated with opposer has the surname "Daily," and the dictionary definition of the term did not refer to it as a surname. The Board's analysis "must take into account the fact that 'daily' also is a common word that is suggestive in association with the identified services and could be perceived as conveying this meaning even in possessive form."

Moreover, there was no evidence that DAILY FILL is a common expression. The leading word DAILY is in the "position of prominence" and is likely to be noticed and remembered by consumers and so to play a dominant role in the mark.

The fact that opposer's mark "is essentially subsumed" in applicant's mark increases the overall similarity of the marks.

For all these reasons, we find that consumers of retail store services featuring convenience store items and gasoline, who are likely to shop on impulse and retain only a general impression of marks, would be likely to assume a connection between the parties due to the similarity of the marks DAILY’S and DAILY FILL, considered in their entireties. The first du Pont factor also supports a finding that confusion is likely.

Conclusion: The Board sustained the opposition.

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TTABlog comment: I think DAILY FILL is a unitary term, and DAILY does not dominate. What do you think?

Text Copyright John L. Welch 2019.

WYHA? TTAB Rejects Applicant's Attack on Cited Registration That Was "Wrongly Issued"

The Board affirmed a refusal to register the mark WATER BABIES in the design form shown below, for various swimming instruction services, finding a likelihood of confusion with the registered mark WATERBABIES for "swimming instruction." Applicant maintained that the refusal was improper because its application had priority and the USPTO should have refused registration to the WATERBABIES mark. The Board disagreed. In re Water Babies Limited, Serial No. 79147272 (February 21, 2019) [not precedential] (Opinion by Judge David K. Heasley).

The Board dealt with a similar situation in In re House Beer, LLC, 114 USPQ2d 1073 (TTAB 2015) [TTABlogged here], where it observed that Section 2(d):

makes no reference to the filing date of the application underlying the registration cited as the basis for the refusal. If the mark is registered, it may be cited as grounds for refusing registration. … Applicant asks us to find that a refusal that is clearly authorized by Section 2(d) is invalid because certain examination procedures were not followed during the independent examinations of Applicant’s application and the Underlying Application. We cannot give the internal examining procedures of the USPTO such primacy over statutory law. … [T]he owner of the cited registration is not a party to the appeal now before us, and we can neither cancel nor ignore the registration. Id. at 1076-77.

Examining Attorney John M.C. Kelly pointed out that the cited registration is entitled to a presumption of validity under Section 7(b) and can be cited under Section 2(d) as a ground for refusal. Applicant cannot effectively challenge the registration's validity in an ex parte appeal. In fact, the House Beer case was cited against this same applicant in another appeal involving the same cited registration. Applicant now argued that the instant case was different because here the USPTO errors took place during examination of the application at issue in this appeal. The Board was unmoved.

Nonetheless, the applicable principles remain the same. Regardless of any procedural irregularities in the cited Registration’s path to registration, once registered, it was and is entitled to a presumption of validity under 15 U.S.C. § 1057(b). In re Solid State Design Inc., 125 USPQ2d 1409, 1410 (TTAB 2018). It cannot be collaterally attacked in this ex parte proceeding. In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018).

The Board then turned to the Section 2(d) refusal. Applicant feebly argued that the marks are dissimilar due to the color, font, and "bubble" over the letter "i," and because of the lack of a space in the cited mark, which prevents the mark from being displayed on two lines like applicant's. The Board, not surprisingly, found the marks highly similar, and since the services are in part identical, it affirmed the Section 2(d) refusal.

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TTABlog comment: Well, would you have appealed?

Text Copyright John L. Welch 2019.

TTABlog Test: Are These "ALL STAR" Logo Marks Confusable for Auto Part Services?

The USPTO refused registration of the mark ASM ALL STAR MOTORSPORTS & Design (shown first below), for catalog and online auto parts services, finding a likelihood of confusion with the two registered word+design marks shown next below, the first for "Wholesale and retail store services featuring automotive headlights," and the second for "Wholesale distributorship in the field of high performance and racing automotive parts and accessories." [MOTORSPORTS, AUTO LIGHTS, and PERFORMANCE disclaimed in the respective marks.] ALL STAR seems like a weak formative, doesn't it? How do you think this came out? In re Karapetian, Serial No. 87034208 (March 14, 2019) [not precedential] (Opinion by Judge Lorelei Ritchie).

The Marks: The Board observed that the term ASM in applicant's mark "appears to simply be an initialism for 'All Star Motorsports' and thus reinforces that wording in the mark." On its website, applicant displays the phrase with the first letters highlighted.

As to the first cited mark, the literal element is emphasized, as it is in applicant's mark. The "star" design in applicant's mark "emphasizes the 'All Star' aspect of its mark." The Board took judicial notice that "All Star" is somewhat suggestive of automotive services "that are promoted as best in class." However, there was no admissible evidence that the term is weak. The Board concluded that the applied-for mark is confusingly similar to the first cited mark.

The second cited mark is dominated by the term ALLSTAR, since PERFORMANCE is disclaimed. The Board found that "the term 'ASM' in applicant's mark, which is likely to be perceived as an acronym," does not distinguish these marks. Both marks contain "star" designs, which emphasize the term ALL STAR. There was no evidence that star designs are weak in this field.

The Board again concluded that, despite some dissimilarities in sight and sound, these two marks are confusingly similar.

The Services: Although applicant had tried to swerve around the two cited registrations by excluding "auto lights, high performance and racing parts," the Board still found auto part retail and wholesale services to be related based on Internet and third-party registration evidence. This same evidence demonstrated the similarity of the channels of trade.

Conditions of Sale: Even assuming that relevant consumers may exercise some care in purchasing auto parts, especially wholesale purchasers, the Board once again noted that even sophisticated purchasers are not immune to source confusion when the involved goods or services are similar. The Board found that this factor weighed slightly in applicant's favor.

Conclusion: The Board found confusion likely and it affirmed the refusal based on both cited registrations.

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TTABlog comment: Applicant referred in its brief to third-party registrations for marks containing the term "ALL STAR," but failed to make of record copies. The Board sustained Examining Attorney Angela Duong's objection to consideration of that third-party evidence.

Text Copyright John L. Welch 2019.

TTABlog Test: Are Snack Bars Related to Energy Drink Powder and Bicycles?

Trek Bicycle opposed an application to register the mark TREK & Design (shown below) for nut, grain, and dried fruit-based snack bars, alleging a likelihood of confusion with the registered marks TREK for bicycles, bicycle parts and accessories, for retail store services, and for various other goods, including powders for making energy drinks, TREK STOP for vending machine services in the field of bicycle parts and energy bars, and TREK BICYCLE STORE for retail store services. The marks are similar given the dominance of TREK in all the marks. But are the respective goods and services related? How do you think this came out? Trek Bicycle Corporation v. Natural Balance Foods Limited, Opposition No. 91221706 (March 13, 2019) [not precedential] (Opinion by Judge Frances Wolfson).

Strength of Opposer's Mark: The Board found that Opposer’s mark TREK has received significant public exposure in connection with bicycles and bicycle accessories, but it is not famous or commercially strong for food or beverages.

As to the conceptual strength of the marks, applicant argued that TREK is weak, since it is a term used in the snack food industry in combination with the term mix," for a type of snack food that consists of a combination of nuts, fruits, seeds, chocolate chips and the like, known as "TREK MIX."

The evidence supports applicant's contention that "trek mix" has a meaning in the snack food industry as denoting a sweet and/or salty high-energy mixture of seeds, nuts, dried fruits, chocolate and the like. We agree that the term "trek" may therefore have some meaning in relation to snack foods that decreases its conceptual strength as a trademark for snack foods. However, the fact that “trek mix” may impart a particular meaning to a snack bar (such as that it is a trail mix or trek mix based product), this purported meaning does not carry over to TREK bicycles, on-line retail store services, or powders for making energy drinks.

Furthermore, the word “trek” has another meaning connected with hiking and outdoor activity: “to make one’s way arduously.” "Conceptually, the duality of these meanings points to TREK as being suggestive in connection with snack bars, energy drinks, and retail bicycle services."

The Board concluded Opposer’s TREK marks may not be considered strong for any goods other than bicycles, bicycle parts, and retail stores featuring bicycles. It accorded the TREK mark "the scope of protection to which suggestive marks are entitled, keeping in mind the mark’s wider scope of protection in the bicycle industry."

Given the dominance of the word TREK in the applied-for mark, the Board found it to be similar in appearance, sound, connotation and commercial impression to Opposer’s TREK and TREK STOP marks, and thus the first du Pont factor "strongly favors" a finding of likelihood of confusion.

 

The Goods, Services, Customers, and Trade Channels:

The Board agreed with applicant that snack bars do not fall within Opposer’s "natural realm of expansion." Furthermore, even though opposer owns a TREK registration for powdered drinks, and a TREK STOP registration for the distribution of vending machines that dispense snack bars, opposer did not prove that these goods and services are related to applicant's snack bars.

Nonetheless, the evidence and testimony showed an overlap of trade channels and classes of consumers under buying conditions that "strongly favor a finding of likelihood of confusion." Opposer’s registrations for “online retail and wholesale store services featuring a wide range of consumer products except footwear all provided via the Internet,” “retail stores featuring bicycles,” and “powders used in the preparation of sports drinks and energy drinks” "have probative value to the extent that they serve to suggest that a bicycle retail store may sell a wide variety of consumer products over the Internet, sell powdered drinks both online and at retail stores, and distribute snack bars via vending machines." In addition, opposer established that it is common for bike shops to sell snack bars and that snack bars are a significant food source for cyclists

Although we agree with Applicant that common sales by mass retailers are generally insufficient to show relatedness, here there are common trade channels in a niche market (snack food sold in bike shops) and the common sales are directed to a discrete class of purchasers (cycling enthusiasts). We thus find Opposer’s limited activities, coupled with its dominance in the bicycle industry, sufficient to make confusion likely, at the least as to a perception of sponsorship or affiliation between the parties were both to use similar marks for their respective goods.

Thus, although the second du Pont factor - the similarity or dissimilarity of the goods - favors a finding of no likelihood of confusion, the third factor - the identity of specific channels of trade (bike shops) and classes of consumers (cyclists) for the parties’ goods and services - is "particularly significant" and favors finding of likelihood of confusion.

Conclusion: The Board found confusion likely and so it sustained the opposition.

[I]f consumers already familiar with Opposer’s TREK powder mix for sports and energy drinks, Opposer’s TREK retail store services, and Opposer’s well-known TREK mark for bicycles were to encounter Applicant’s snack bars sold under its TREK and design mark in one of Opposer’s or a third-party’s bike store, they would likely consider Applicant’s goods to be produced, sponsored, or affiliated with Opposer.

Read comments and post your comment here.

TTABlog comment: Last year, opposer Trek won another Section 2(d) opposition (here), involving the marks TREKGUIDE for "Barometers; Magnetic compasses; Thermometers, THERMOTREK for "electric hand warmers," and TREKCEL for "Transformers; Portable electrical power chargers for cell phones, smart phones, tablet computers, MP3 players and wireless headsets"

Text Copyright John L. Welch 2019.

TTAB Finds GNARLY MARLEY'S Confusable With BOB MARLEY and MARLEY for Clothing and Retail Services

The Board sustained a Section 2(d) opposition to registration of the mark GNARLY MARLEY'S for various clothing items and for retail clothing and gift store services, finding the mark likely to cause confusion with the registered mark BOB MARLEY and the common law mark MARLEY for clothing and ornamental patches. This post will hit some of the highlights of the 42-page opinion. Fifty-Six Hope Road Music Limited v. Sandal Factory, Inc., Opposition No. 91212582 (March 8, 2019) [not precedential] (Opinion by Judge Marc A. Bergsman).

Procedural issues: The Board pointed out that an unpleaded registration may not be used as a basis for a party’s opposition. Since Opposer Fifty-Six Hope did not plead ownership of its registration for  MARLEY for clothing, it had to rely on its common law rights in that mark.

The Board also observed that evidence submitted outside of the trial periods, including evidence attached to briefs – is untimely and will not be considered. Evidence that was timely filed during the parties’ trial periods need not and should not be resubmitted.

Furthermore, Parties should recognize that attaching previously filed evidence to a brief (and citing to the attachments, rather than to the original testimony or notices of reliance) is neither a courtesy or a convenience to the Board. A party should instead cite to the record using the TTABVUE docket entry number and the electronic page number where the document or testimony appears.

Opposer Fifty-Six Hope complained that Applicant Sandal Factory did not respond to Opposer’s second set of requests for production of documents, contending that the Board "should enter an adverse inference against Applicant that if the requested documents were produced, they would not be favorable to Applicant." Fifty-Six Hope did not file a motion to compel production, however, and the Board refused to draw any adverse inference from Applicant’s failure to respond.

The goods and services: The Board found Sandal Facctory’s goods to be identical to those of opposer, and its services related to opposer’s goods.

The marks: Because "Marley" is primarily merely a surname, the common law MARLEY trademark is not inherently distinctive. However, BOB MARLEY is registered on the Principal Register without a claim of acquired distinctiveness and is entitled to a presumption of validity under Section 7(b). Moreover, it is presumably inherently distinctive.

There was no dispute that Bob Marley is famous; his fame as a musician "positively affects the sale of BOB MARLEY and MARLEY branded merchandise." The evidence established that Opposer’s MARLEY trademarks are commercially strong. Third-party registration evidence did not persuade the Board of any weakness in MARLEY. The Board concluded that Fifty-Six Hope's MARLEY trademarks are entitled to a broad scope of protection.

As to applicant's mark GNARLY MARLEY'S mark, the word "gnarly" is an adjective defined, inter alia, as a slang term for "cool, good." The adjective "Gnarly" modifies "Marley," and therefore "Marley" is the dominant part of Applicant’s mark "because 'Gnarly' describes a quality of 'Marley's,' as adjectives are designed to do." Moreover, the average purchaser is an ordinary consumer, and is likely to shorten GNARLY MARLEY’S to MARLEY’S

It stretches credulity to contend that at least some consumers in GNARLY MARLEY’S retail store purchasing MARLEY t-shirts or BOB MARLEY products are not going to believe that there is an affiliation, connection or association as to the origin, sponsorship, or approval of the goods and services.

The Board noted that the combination of GNARLY MARLEY’S and Rastafarian indicia, including smoking marijuana, emphasize the reference to Bob Marley. Trade dress may provide evidence of whether a word mark projects a confusingly similar commercial impression.

The Board therefore found that the mark GNARLY MARLEY’S "is similar to Opposer’s BOB MARLEY and MARLEY marks in their entireties in terms of appearance, sound, meaning, and commercial impression."

Lack of Actual Confusion: By the time of trial there had been five years of concurrent use of the parties’ marks. Neither party introduced any testimony or evidence regarding actual confusion. However, the absence of actual confusion evidence is meaningful "only if the record indicates appreciable and continuous use by Applicant of its mark for a significant period of time in the same markets as those served by Opposer under its marks." The Board found that there has not been a reasonable opportunity for confusion to have occurred.

“Applicant’s only retail store is located at 1913 Overseas Hwy., Islamorada, Florida." The GNARLY MARLEY’S retail store is approximately 1200 square feet. "The GNARLY MARLEY’S Goods are offered for sale and/or will be offered for sale at Applicant's GNARLY MARLEY’S retail stores." Applicant does not have a GNARLY MARLEY website, nor does in advertise its GNARLY MARLEY’S goods or services on its Sandal Factory website. Applicant’s GNARLY MARLEY’S customers are tourists that shop at the GNARLY MARLEY’S retail store while visiting the Florida Keys.

Conclusion: The Board concluded that confusion is likely and it sustained the opposition, declining to reach opposer's dilution and Section 2(a) false association claims.

Read comments and post your comment here.

TTABlog comment: [Insert Bob Marley pun here].

Text Copyright John L. Welch 2019.

On Summary Judgment, TTAB Dismisses Cancellation Petition Predicated on Respondent's Untimely Section 8 Declaration

The Board dismissed this petition for cancellation on summary judgment, ruling that the USPTO's acceptance of an untimely Section 8 Declaration is not a ground for cancellation. Respondent Direct Impulse missed the deadline to respond to a post-registration office action rejecting its Section 8 Declaration, but the Office then accepted a later, corrected filing well after the renewal grace period had expired. Bonehead Brands, LLC v. Direct Impulse Design, Inc., Cancellation No. 92068333 (February 13, 2019) [not precedential].

Petitioner Bonehead contended that the subject registration was automatically cancelled when Direct Impulse failed to file a proper Section 8 Declaration prior to expiration of the grace period for renewal. The Board, however, ruled that "[a]n allegation that a registrant made an untimely or deficient declaration under Section 8, or that the USPTO should not have renewed a registration, is not an available ground for cancellation under Section 14(3)."

Respondent's 10-year Section 8 Declaration of Use (and its Renewal Application) was due on December 12, 2016. On May 11, 2016, Respondent filed a combined declaration under Sections 8 and 9. On August 2, 2016, the Post Registration branch issued an Office Action accepting the Section 9 portion of the combined filing but rejecting the specimen submitted in support of the Section 8 declaration on the ground that it was a printer's proof and therefore did not show use of the registered mark in commerce. Respondent was give six months to file a substitute specimen and verification, but it did not file a response to this Office Action

On April 3, 2018, and well beyond the six-month renewal grace period that expired on June 12, 2017, the Post Registration Branch issued another Office Action , reiterating its rejection. On April 11, 2018, Bonehead filed its petition to cancel Respondent’s registration on the ground of abandonment, based on Respondent’s failure to file a timely, acceptable Section 8 declaration. Two days later, on April 13, 2018, Respondent filed a combined Section 8 and 9 declaration with a substitute specimen and verification, which the USPTO accepted on April 17, 2018, issuing a notice of renewal for the involved registration.

Bonehead’s petition for cancellation was  predicated on the allegation that the registration had been technically cancelled due to Respondent’s failure to file a timely response to the August 2, 2016 Office Action or to otherwise file an acceptable Section 8 declaration before the expiration of the grace period. The Board disagreed:

Contrary to Petitioner’s assertion, a registration is not considered “technically” or  automatically cancelled or “abandoned” by virtue of a registrant’s purported failure to file a timely or acceptable Section 8 declaration. Section 8 of the Trademark Act, 15 U.S.C. § 1058, provides that “[e]ach registration shall remain in force for 10 years, except that the registration of any mark shall be canceled by the Director unless the owner of the registration files in the United States Patent and Trademark Office affidavits that meet the requirements of subsection (b)….” Failure to file a timely Section 8 declaration does not result in an automatic cancellation of the registration; rather, an action must be taken by the Director of the USPTO for the registration to be cancelled. In this case, the Director did not cancel the involved registration, but rather accepted the April 13, 2018 filing and renewed the registration.

The Board pointed out that there is “no mechanism under Section 8 by which a third party can seek the cancellation of a registration in an inter partes proceeding based on an allegedly deficient or untimely filing.” Furthermore, the Board does not have jurisdiction to review the USPTO’s acceptance of the April 13, 2018 filing or the supposed failure of the Director of the USPTO to cancel the registration pursuant to Section 8.

Any petition to cancel a registration more than five years old must be based on one of the specifically enumerated grounds of Section 14(3) of the Trademark Act, 15 U.S.C. § 1064(3). * * * An allegation that a registrant made an untimely or deficient declaration under Section 8, or that the USPTO should not have renewed a registration, is not an available ground for cancellation under Section 14(3).

Petitioner Bonehead claimed that Respondent had abandoned its mark, but there were no allegations of nonuse or loss of significance as a mark.

Finding no material fact in dispute, the Board granted Respondent’s motion for summary judgment.

Read comments and post your comment here.

TTABlog comment: Bonehead also claimed that once its cancellation petition was filed, the USPTO should not have accepted the Section 8 Declaration, but the Board pointed out that Respondent was required to maintain its registration throughout the pendency of the proceeding and failure to file the Declaration could result in an adverse judgment.

Text Copyright John L. Welch 2019.

TTAB Affirms Refusals of SOUTHFACE VILLAGE for Applicant's Internet Portal: Not a Registrable Service

The Board affirmed two refusals of the mark SOUTHFACE VILLAGE, in standard character and design form, for "providing an Internet portal offering information in the fields of real estate concerning the purchase and sale of new homes and condos," agreeing with Examining Attorney Michelle E. Dubois that the provision of such information is not "separate and distinct from Applicant’s other services because it is not qualitatively different from anything necessarily done in connection with the performance of those services." In re Timber Creek at Okemo Number II, LLC, Serial No. 86094929 and Serial No. 86094995 (March 8, 2019) [not precedential] (Opinion by Judge Christopher Larkin).

Although the Trademark Act defines "service mark," it does not define the term "services." However, applicant and the Examining Attorney agreed that "for an activity to be a 'service' within the contemplation of the Act, it (1) must be a real activity, (2) must be performed to the order of, or for the benefit of, someone other than the applicant, and (3) must be qualitatively different from anything necessarily done in connection with the sale of the applicant’s goods or the performance of another service."

Here, the only issue involved the third element of the test: whether the identified service is "qualitatively different from anything necessarily done in connection with the performance of Applicant’s other services."

Applicant’s webpage urged visitors to “Contact Us” and to provide personal information relevant to a possible purchase of property at the development. (Okemo” is a mountain in Vermont that is the home of a ski resort.) The Examining Attorney submitted third-party webpages showing that real property developers provide similar online access to information about their developments in the course of selling their properties.

Applicant could not sell the new homes and condos that it develops at SouthFace Village without "offering information . . . concerning the purchase and sale of" those new homes and condos, and its original specimen shows that its Internet portal is simply a means for providing such information. Applicant’s purported service of "providing an Internet portal offering information in the fields of real estate concerning the purchase and sale of new homes and condos" is thus not a service that is separate and distinct from Applicant's other services because it is not qualitatively different from anything necessarily done in connection with the performance of those services. Cf. Landmark Commc’ns, 204 USPQ at 695 (the mere advertising of one’s own product is not a separate service); In re Dr. Pepper Co., 836 F.2d 508, 5 USPQ2d 1207, 1209 (Fed. Cir. 1987) ("activities which are ‘necessarily done’ in connection with the sale of one’s goods are the quintessential ‘routine or ordinary’ activities associated with the sale of one’s goods").

Applicant acknowledged that "[t]he potential consumer or the actual purchaser of Applicant's homes and condos uses [Applicant's] internet portal to gain additional information regarding the services performed" by applicant in the course of developing properties at SouthFace Village.

Applicant's substitute specimens included a live webcam for viewing the properties under development, but the Board again found that "providing such information through the webcam in Applicant’s substitute specimen 'is merely ancillary to applicant’s primary business,' and 'part and parcel of developing and offering [Applicant’s] homes for sale.'"

And so the Board affirmed both refusals to register.

Read comments and post your comment here.

TTABlog comment: Last year the Board affirmed refusals to register the same two marks for building construction and maintenance services because applicant's specimens of use failed to show use of the mark with any of the identified services. (TTABlogged here).

Text Copyright John L. Welch 2019.

TTABlog Test: Is "NEW SILK ROAD" Deceptive for Clothing Not Made of Silk?

The USPTO refused registration of the mark NEW SILK ROAD for clothing, on the ground that the mark is deceptive under Section 2(a) because the goods are not primarily made of silk. Applicant Tang argued that consumers would understand the mark to refer to the historical Silk Road, not to the contests of the clothing. How do you think this came out? In re Tang, Serial No. 87630035 (March 8, 2019) [not precedential] (Opinion by Judge Karen Kuhlke).

According to In re Budge, The test for deceptiveness requires that the following three elements be met:

1. Is the term misdescriptive of the character, quality, function, composition or use of the goods?
2. If so, are prospective purchasers likely to believe that the misdescription actually describes the goods?
3. If so, is the misdescription likely to affect the purchasing decision of a significant portion of relevant consumers?

The Examining Attorney maintained that SILK is misdescriptive of the goods because they are not primarily made of silk, that consumers are likely to believe the misdescription, and that the misdescription is material because clothing primarily made of silk is more appealing and desirable.

Applicant Tang relied on a Wikipedia entry for "Silk Road" in asserting that the word SILK would not be considered by itself, but instead the unitary phrase NEW SILK ROAD would be perceived as a reference to the historical Silk Road:

The Silk Road or Silk Route was an ancient network of trade routes that were for centuries central to cultural interaction originally through regions of Eurasia connecting the East and West and stretching from the Korean peninsula and Japan to the Mediterranean Sea.

In a 5-page opinion, the Board agreed with Applicant Tang. Although a mark may be deceptive even if only a portion is deceptive (e.g., WHITE JASMINE for tea that did not include white tea, SILKEASE for clothing not made of silk), "[m]isdescriptiveness of a term may be negated by its meaning in the context of the whole mark inasmuch as the combination is seen together and makes a unitary impression." Budge Mfg., 8 USPQ2d at 1261.

We find THE NEW SILK ROAD [sic] to be more in the nature of COPY CALF and PARIS BEACH CLUB in that the term SILK in the phrase NEW SILK ROAD cannot be separated from the meaning derived from the whole mark NEW SILK ROAD. While it may be that the “Silk Road derived its name precisely because silk was a major trade product along such routes” (Ex. Att. Br. 6 TTABVUE 11), the meaning and commercial impression of the SILK ROAD is not limited to trading in silk products. The Silk Road is a historical trading route known for trade in many products, as well as expanding economic, cultural and technological exchange around the world.

The Board therefore found that the mark NEW SILK ROAD is not deceptively misdescriptive of applicant's clothing, and therefore is not deceptive under Section 2(a).

Read comments and post your comment here.

TTABlog comment:  Perhaps the Board should have said that the mark is not misdescriptive of the goods, let alone deceptively misdescriptive. In any event, I think NEW SILK ROAD does imply that the goods are made of silk.

Text Copyright John L. Welch 2019.