Wednesday, January 16, 2019

CAFC Vacates and Remands Guild Mortgage Decision: TTAB Failed to Consider 8th DuPont Factor

The CAFC vacated the TTAB's decision affirming a Section 2(d) refusal of the mark GUILD MORTGAGE COMPANY & Design for "mortgage banking services, namely, origination, acquisition, servicing, securitization and brokerage of mortgage loans" [MORTGAGE COMPANY disclaimed] in view of the registered mark GUILD INVESTMENT MANAGEMENT for "Investment advisory services" [INVESTMENT MANAGEMENT disclaimed]. The appellate court concluded that the Board had "failed to consider pertinent evidence and argument under DuPont factor 8," and it remanded the case to the Board for reconsideration of its determination in light of all the evidence. In re Guild Mortgage Co., Appeal No. 2017-2620 (Fed. Cir. January 19, 2019) [precedential].


The CAFC pointed out that "i]n every case turning on likelihood of confusion, it is the duty of the examiner, the board and this court to find, upon consideration of all the evidence, whether or not confusion appears likely.” DuPont, 476 F.2d at 1362 (emphasis in original). "In discharging this duty, the thirteen DuPont factors 'must be considered' 'when [they] are of record.'" In re Dixie Rests., Inc., 105 F.3d 1405, 1406 (Fed. Cir. 1997) (quoting DuPont, 476 F.2d at 1361).

DuPont factor 8 requires consideration of "the length of time during and conditions under which there has been concurrent use without evidence of actual confusion."  Guild argued that it has coexisted with the Registrant for more than 40 years without any evidence of actual confusion. Its President and CEO attested that Guild has never received any communications from third-parties regarding any confusion, nor has it received any charge of infringement from the registrant.

The Board's opinion provided no indication that it considered the 8th DuPont factor or the evidence and argument directed thereto.

In this case, although Guild did not submit declarations from the owner of the registered mark or other parties testifying as to the absence of actual confusion, Guild nonetheless presented evidence of concurrent use of the two marks for a particularly long period of time —over 40 years —in which the two businesses operated in the same geographic market—southern California—without any evidence of actual confusion. Further, the Board has found that Guild’s and Registrant’s services are similar and move in the same channels of trade, which is relevant when assessing whether the absence of actual confusion is indicative of the likelihood of confusion. The Board erred in its analysis by failing to consider this evidence and argument as to factor 8. Because this evidence weighs in favor of no likelihood of confusion, we do not deem the Board’s error harmless.

The CAFC made "no assessment as to the evidentiary weight that should be given to Guild’s CEO’s declaration." The Board was directed to "reconsider its likelihood of confusion determination in the first instance in light of all the evidence."


Read comments and post your comment here.

TTABlog comment: The CAFC noted that in Majestic Distilling, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003), the court considered 16 years of concurrent use with no evidence of confusion, but still found confusion likely. In Majestic the court also observed that, under DuPont factor 7 ("the nature and extent of any actual confusion'), the lack of evidence of actual confusion, by itself, has "little evidentiary value" in the ex parte context. Factor 8 requires a separate consideration.

Text Copyright John L. Welch 2019.

Tuesday, January 15, 2019

The Top Ten TTAB Decisions of 2018 (Part II)

This is the second of two posts; the first five selections were posted here. Additional commentary on each case may be found at the linked TTABlog posting. The cases are not necessarily listed in order of importance (whatever that means).


Curtin v. United Trademark Holdings, Inc., Opposition No. 91241083 (December 28, 2018) [not precedential]. [TTABlogged here]. In a controversial nonprecedential ruling, the Board denied the Rule 12(b)(6) motion of Applicant United Trademark Holdings to dismiss this opposition to registration of the mark RAPUNZEL for dolls and toy figures. Opposer Rebecca Curtin, a professor at Suffolk University Law School in Boston, alleged that United's mark fails to function as a trademark under Sections 1, 2, and 45 of the Trademark Act on the grounds that it is purely informational and highly descriptive, if not generic, of the goods. United asserted that Professor Curtin lacked standing because she is not a competitor and "has not used the mark in connection with the manufacture or sale of dolls." Professor Curtin maintained that, as a consumer of dolls, "she has purchased and continues to purchase said goods, and that registration of the applied-for mark by Applicant would constrain the marketplace of such goods sold under the name 'Rapunzel,' raise prices of  'Rapunzel' dolls and toy figures, and deny consumers, such as herself, the ability to purchase 'Rapunzel' dolls offered by other manufacturers." The Board deemed these allegations sufficient to establish that she has a direct and personal interest in the outcome of the proceeding, meeting the "liberal threshold" established in Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). The Board observed that "[c]onsumers, like competitors, may have a real interest in keeping merely descriptive or generic words in the public domain."


In re Peace Love World Live, LLC, 127 USPQ2d 1400 (TTAB 2018) [precedential] (Opinion by Judge Marc A. Bergsman). [TTABlogged here]. The Board showed no ♥ for this applicant, affirming a refusal to register the mark I LOVE YOU, in standard character form, for bracelets, finding that phrase is merely ornamental and therefore fails to function as a trademark. The crucial question, of course, was whether the applied-for mark would be perceived as a source indicator. In assessing a failure-to-function refusal, and particularly whether a mark is merely ornamental, the Board may consider whether the mark is a common expression. Moreover, the size, location, dominance and significance of the mark are relevant to the determination. The Board found that the phrase I LOVE YOU is "essentially the bracelet itself." It "conveys a term of endearment comprising the bracelet and, thus, it is ornamental. It does not identify and distinguish the source of the bracelet, especially where there is so much jewelry decorated with the term I LOVE YOU in the marketplace." To add insult to injury, the Board also affirmed a Section 2(d) refusal on the ground of likelihood of confusion with the registered mark I LUV U for "jewelry, namely, necklaces, bracelets, rings and charms; pendants; earrings."

Applicant's specimen of use

In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181 (TTAB 2018) [precedential] (Opinion by Judge Frances Wolfson; concurring opinion by Judge Lorelei Ritchie). [TTABlogged here]. The Board affirmed a Section 2(d) refusal to register the mark shown below, for "Wine of French origin protected by the appellation of the origin Cité de Carcassonne" [CITÉ DE CARCASSONNE disclaimed], finding it likely to cause confusion with the registered mark CHATEAU LAROQUE for "Wines having the controlled appellation Saint-Emilion Grand Cru" [CHATEAU disclaimed]. The Board concluded, not surprisingly, that both the applied-for mark and the cited mark are dominated by the word LAROQUE. Applicant Aquitaine and the examining attorney jousted over whether the Board must consider only "reasonable variations" of the cited, standard character mark. The Board held that "when we are comparing a standard character mark to a word + design mark for Section 2(d) purposes, we will consider variations of the depictions of the standard character mark only with regard to 'font style, size, or color' of the 'words, letters, numbers, or any combination thereof.'" Judge Ritchie concurred in the result but disagreed with the majority’s rationale. Specifically, Judge Ritchie found "the pronouncement of the majority that it will not consider ‘design features’ to be both unnecessary and ultimately unhelpful." "Given the definition of 'chateau,' consumers may certainly expect a picture or design of a house or chateau to be depicted with Registrant’s CHATEAU LAROQUE."



In re FCA US LLC, 126 USPQ2d 1214 (TTAB 2018) [precedential] (Opinion by Judge Anthony R. Masiello). [TTABlogged here]. The Board affirmed a Section 2(d) refusal to register the mark MOAB for “Motor vehicles, namely, passenger automobiles, their structural parts, trim and badges’” finding it likely to cause confusion with the registered mark MOAB INDUSTRIES for “Automotive conversion services, namely, installing specialty automotive equipment” [INDUSTRIES disclaimed]. While the subject application was pending (and suspended), the federal court in Arizona ruled in favor of Applicant FCA US LLC (f/k/a Chrysler Group LLC) in a trademark infringement and unfair competition action brought by the cited registrant, but the Board found that the court rulings had no estoppel effect on the Board’s determination of this ex parte appeal. At the district court, registrant failed to prove that FCA's use of the mark MOAB in connection with its "JEEP WRANGLER MOAB Special Edition" vehicles "was likely to cause confusion on the part of reasonably prudent customers for [Registrant’s] upfitted vehicles." FCA here argued that “The Board … should defer to the more fulsome record upon which the District Court relied to draw its conclusions.” The Board, however, observed that "although there is some overlap between Applicant’s defense and counterclaims in the federal court action and the basis of refusal of Applicant’s application, they also raise discrete issues. In other words, the issues are not identical."


In re Pitney Bowes, Inc., 125 USPQ2d 1417 (TTAB 2018) [precedential] (Opinion by Judge Cynthia C. Lynch). [TTABlogged here]. Overturning the examining attorney’s rejection of Pitney's specimen of use, the Board reversed a refusal to register the mark shown here , for various mailing services.
The examining attorney maintained that Pitney’s webpage specimen described a self-service kiosk that consumers use to mail and ship items but did not clearly indicate that applicant itself provided the subject services. The Board, however, ruled that "Applicant’s explanation of the specimen and how Applicant provides the outsourced mailing services referenced on the specimen resolved the ambiguity, and the refusal should not have been maintained." For advertisement specimens such as applicant’s webpage, "[i]n order to create the required 'direct association,' the specimen must not only contain a reference to the service, but also the mark must be used on the specimen to identify the service and its source." "Both precedent and examination guidance make clear that in assessing the specimens, consideration must be given not only to the information provided by the specimen itself, but also to any explanations offered by Applicant clarifying the nature, content, or context of use of the specimen that are consistent with what the specimen itself shows."

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Text Copyright John L. Welch 2018-19.

Monday, January 14, 2019

The Top Ten TTAB Decisions of 2018 (Part I)

The TTABlogger has once again bravely (?) chosen the ten TTAB decisions that he considers to be the most important and/or interesting from the previous calendar year (i.e., 2018). This is the first of two posts; the first five selections are set out below. Additional commentary on each case may be found at the linked TTABlog posting. The cases are not necessarily listed in order of importance (whatever that means).


In re American Cruise Lines, Inc., 128 USPQ2d 1157 (TTAB 2018) [precedential] (Opinion by Judge Marc A. Bergsman). [TTABlogged here]. Giving “great weight” to two consent agreements, the Board reversed a Section 2(d) refusal of AMERICAN CONSTELLATION, finding the mark not likely to cause confusion with the registered mark CONSTELLATION, both for cruise ship services. The examining attorney maintained that these were “naked” consents because they did not state the steps the parties would take to avoid confusion, but the Board pointed out that such terms, although preferred, are not essential for the consents to have probative value. “[N]o authority requires that parties explicitly agree to make efforts to prevent confusion or to cooperate and take steps to avoid any confusion that may arise in the future as a prerequisite to giving some weight to a consent agreement.” The Board found that the second consent agreement was “clothed” because it included four reasons why applicant and registrant believed confusion was not likely. “Clothed”‘ consent agreements in which “‘competitors have clearly thought out their commercial interests’ should be given great weight, and the USPTO should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason, that is, unless the other relevant factors clearly dictate a finding of likelihood of confusion.”




In re Serial Podcast, LLC, 126 USPQ2d 1061 (TTAB 2018) [precedential] (Opinion by Judge David K. Heasley]. [TTABlogged here]. The Board affirmed a refusal to register the term SERIAL in standard character form, finding it to be generic for "entertainment in the nature of an ongoing audio program featuring investigative reporting, interviews, and documentary storytelling." However, the Board reversed refusals to register two design forms of the mark, shown below, finding that these two marks had acquired distinctiveness, but requiring a disclaimer of the word "SERIAL" in each mark. Applicant argued that use of the term “serial” as a noun is antiquated and archaic, and that the term in modern usage is an adjective describing a characteristic of audio programs. The Board, however, rejected the noun/adjective distinction, pointing out that both nouns and adjectives may be generic. Even though some articles refer to applicant’s podcast by its name Serial, "that amounts, at most, to 'de facto secondary meaning'’ in a generic term," and does not entitle applicant to registration. Because the applied-for mark is at best highly descriptive, "more substantial evidence" than media references was required to establish acquired distinctiveness. As to the word + design marks, the Board found, based on evidence of parodying and copying by third parties, that the composite logos have achieved public recognition as source indicators for applicant’s services.


Stawski v. Lawson, 129 USPQ2d 1036 (TTAB 2018) [precedential] (Opinion by Judge David K. Heasley). [TTABlogged here]. Concluding that Applicant Scott Stawski was not entitled to concurrent use registrations for the marks PROSPER ESTATE and PROSPER RIDGE for wines, the Board dissolved this concurrent use proceeding. Stawski claimed rights to his marks in nine states, as an exception to John Gregory Lawson's registration for the mark PROSPER for wines, but Stawski failed to show prior, lawful use of his marks (and he also failed to prove that confusion is not likely). Stawski had to prove "technical use of his trademarks" in commerce prior to Registrant Lawson’s February 29, 2012 filing date: i.e. use sufficient to support a trademark registration. The Lanham Act's concurrent use provision expressly requires "lawful use in commerce" prior to the filing date of an excepted user’s application or registration. 15 U.S.C. § 1052(d). “Use in commerce” means “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” 15 U.S.C. § 1127. Applicant Stawski failed to establish that his use satisfied the "in commerce" requirement, and hevalso failed to prove that, if his use was in commerce, it was lawful. Thus he did not satisfy the jurisdictional requirement of Section 2(d). The Board squarely ruled, for the first time, that failure to obtain a Certificate of Label Approval (COLA) from the Alcohol and Tobacco Tax and Trade Bureau (TTB) renders the use of a mark unlawful and thus insufficient to support a trademark registration.


In re Forney Industries, Inc., 127 USPQ2d 1787 (TTAB 2018) [precedential] (Opinion by Judge Linda A. Kuczma). [TTABlogged here]. 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. Forney maintained that the applied-for mark is not a “color mark” but should be treated as product packaging. The Board disagreed: reviewing applicant’s drawing, which showed the mark surrounded by dashed lines, the Board concluded that the mark should be treated as a color mark, consisting of multiple colors applied to product packaging. The Board noted that Qualitex (green press pad) and Owens-Corning (pink insulation) involved a single color applied to a product. The question here was whether multiple colors applied to product packaging can be inherently distinctive. Citing Wal-Mart and In re General Mills, and finding no legal distinction between a single color mark and one consisting of multiple colors "without additional elements, e.g., shapes or designs,” the Board said no: 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."


In re Minerva Associates, Inc., 125 USPQ2d 1634 (TTAB 2018) [precedential] (Opinion by Judge Linda A. Kuczma). [TTABlogged here]. Reversing a refusal to register the mark AWLVIEW for, inter alia, warehouse inventory management software, the Board overturned the USPTO’s rejection of applicant’s specimen of use. Because the mark appears on the login and search screens of applicant’s downloadable software when the software is in use, the Board concluded that the specimen “shows the applied-for mark used in connection with the goods . . . and would be perceived as a trademark identifying the source of those goods.” According to Section 904.03(e) of the Trademark Manual of Examining Procedure (Oct. 2017), an acceptable specimen for software “might be a photograph or printout of a display screen projecting the identifying trademark for a computer program.” The Board noted that, again according to Section 904.03(e), “[i]t is not necessary that purchasers see the mark prior to purchasing the goods, as long as the mark is applied to the goods or their containers, or to a display associated with the goods, and the goods are sold or transported in commerce. See, e.g., In re Brown Jordan Co., 219 USPQ 375 (TTAB 1983) (holding that stamping the mark after purchase of the goods, on a tag attached to the goods that are later transported in commerce, is sufficient use)."

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Text Copyright John L. Welch 2018-19.

Friday, January 11, 2019

TTABlog Test: Is "INCOGNITO" for Footwear Confusable with "STS INCOGNITO & Wolf Design" for Clothing?

The USPTO refused registration of the mark INCOGNITO for "footwear; footwear for men; footwear for women; shoes; shoes for men and women," finding it likely to cause confusion with the registered mark STS INCOGNITO & Wolf Design, shown below, for "hats; hooded sweatshirts; jackets; shirts; t-shirts." The goods are surely related, but are the marks close enough to cause confusion? How do you think this came out? In re Primeway International LLC, Serial No. 87059786 (January 9, 2019) [not precedential] (Opinion by Judge Frances Wolfson).


The Board found the wolf design (a wolf in sheep's clothing making a menacing expression) and the letters STS to be the "most visually prominent feature" of the cited mark. "The wolf design and letters STS immediately draw one’s attention and engage the viewer before he or she may notice the smaller word 'incognito' in quotation marks below the picture of the wolf." In this regard, the Board pointed to four oft-cited cases: In re Covalinski, In re White Rock Distilleries, Inc., Parfums de Coeur Ltd. v. Lazarus, and Steve’s Ice Cream v. Steve’s Famous Hot Dogs, in all of which a word mark and a word+design mark were found not confusable because the design portion was the "most visually prominent feature."


The examining attorney argued that the design portion of the cited mark merely emphasizes the word INCOGNITO, since the wolf has disguised itself as a sheep. The Board disagreed. "The phrase 'wolf in sheep’s clothing' refers to a threat that may appear to be benign, and the term 'incognito,' defined as 'with one’s identity concealed,' does not imply anything about whether the entity concealing its identity is a threat."

The Board also rejected the arguments that consumers are less likely to remember strings of letters than real words and would tend to shorten the cited mark to INCOGNITO. "Here, to the extent that consumers would shorten Registrant's mark, they are at least as likely to recall STS as they are to recall 'INCOGNITO' because of the prominence of STS relative to 'INCOGNITO,' and because STS appears first when reading the mark, as would be usual, from left to right."

The Board concluded that the marks are not similar in meaning or commercial impression, and only somewhat similar in appearance and pronunciation. This factor "weighs heavily in applicant's favor." Indeed, the Board concluded that it was dispositive.

The Board also considered the relatedness of the goods and their channels of trade and likely consumers. To show relatedness, the examining attorney relied on webpages from several retailers, but the Board found this evidence not to be very strong.

All of the websites offer clothing and footwear on different web pages. A consumer searching for shoes on the Target website will not be exposed to clothing because the web pages do not include any links from clothing to footwear or vice versa or images of other goods. Likewise, consumers searching on the Nike or Adidas websites for shoes or for clothing may not be aware that each offers both items, because not all of the pages include tabs that link to both clothing and footwear.

The Board found that the "similarity of the goods factor"  weighs only slightly in favor of a finding of likelihood of confusion.

The relevant purchasers of the involved goods comprise the general public. The only evidence as to channels of trade was the webpage evidence. However, "[i]nternet evidence alone is insufficient to prove that the goods may be encountered in overlapping channels of trade by the same classes of consumers." See In re St. Helena Hosp., 113 USPQ2d 1082, 1087-88 (Fed. Cir. 2014). The Board found this factor to be neutral.

As indicated, the Board found the first du Pont factor to be dispositive, and so it reversed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2019.

Thursday, January 10, 2019

On Remand, TTAB Reverses Course, Finds ALEC BRADLEY STAR INSIGNIA for Cigars Confusable with INSIGNIA for Wine

On remand from the CAFC, the Board granted a petition for cancellation of a registration for the mark ALEC BRADLEY STAR INSIGNIA for "cigars, tobacco, cigar boxes, cigar cutters and cigar tubes," finding the mark likely to cause confusion with the registered mark INSIGNIA for wines. The CAFC (here) concluded that the Board had applied an "incorrect standard for fame," and it remanded the case to the TTAB for determination utilizing the correct standard. [TTABlogged here]. Joseph Phelps Vineyards LLC v. Fairmont Holdings, Inc., Cancellation No. 92057240 (January 3, 2019) [not precedential] (Opinion by Judge Francie R. Gorowitz)


The CAFC pointed out that, unlike for dilution, fame for likelihood of confusion purposes is not an "all-or-nothing" proposition. Consequently, the Board "did not properly apply the 'totality of the circumstances' standard, which requires considering all the relevant factors on a scale appropriate to their merits.

In a concurring opinion, Judge Pauline Newman pointed out two additional issues that should be reviewed on remand. First, the Board failed to consider the actual usage of respondent's mark, with the words ALEC BRADLEY separated from STAR and INSIGNIA, in a different font and size. [See specimens of use above]. Second, the issue of relatedness of the goods should be further considered, since the Board found that the evidence "suggests that the goods are sold in the same channels of trade to the same purchasers." Again, the Board treated this factor as an all-or-nothing proposition, but the evidence of relatedness should be considered on a "sliding scale."

On remand, the Board found that the INSIGNIA mark "has achieved a high level of fame with connoisseurs of fine wine, particularly of Cabernet Sauvignon-based wines," but a lesser degree of fame with other wine consumers.

We conclude that the mark has achieved, overall, a significant level of fame among consumers of wine. While we have no context for sales figures and website visitors, the figures we have been provided are not insignificant. In addition, the long use of the mark, repeated receipt of awards for INSIGNIA branded wine, and the references in specialized and general circulation publications, considered together, establish fame.

As to the marks, the Board considered the actual manner of use of respondent's mark on its specimen of use, noting that respondent's registration makes no claim to any font, style, color, or size of display, and therefore is not limited to any particular presentation. Judge Newman had observed that "the dominance of the word INSIGNIA as used on Fairmont's products is indeed an issue," and that "the actual use of the ALEC BRADLEY STAR INSIGNIA mark presents a different impression to the consumer than the standard character mark . . . .”

The Board concluded that "the similarities in the marks outweigh any dissimilarities.

Turning to the goods, "the evidence of use of the same mark on both cigars and wine is not extensive," but it suggested that "cigars and wine can be used together and that the same mark can be used for both products." The evidence further suggested that the cigars and wine are sold in the same channels of trade to the same purchasers. The Board concluded that the goods "are sufficiently related for likelihood of confusion purposes, involving a famous mark."

The Board recognized that the parties target sophisticated customers, but the Board must consider the parties’ goods as they are identified in the relevant registrations. Neither registrations restricts the goods to “expensive” or “high-end” products, and therefore the Board must consider all potential consumers of wine and cigars, even the unsophisticated purchasers of cheap wine and cigars.

Considering “the totality of the circumstances standard,” i.e., “consider[ation of] all the relevant factors on a scale appropriate to their merits,” as directed by the CAFC, and "taking into proper
consideration the evidence of fame, which bears on both the relationship of the marks and the relationship of the goods," the Board found confusion likely and it therefore granted the petition for cancellation.
 
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TTABlog comment: Wine and cigars related? The marks are similar? Gimme a break, CAFC!

Text Copyright John L. Welch 2019.

Wednesday, January 09, 2019

Precedential No. 40: TIVOTAPE and TIVOBAR for Lighting Fixtures Dilute Famous TIVO Mark, Says TTAB

In a rare dilution decision, the Board sustained TiVo's oppositions to registration of TIVOTAPE and TIVOBAR for electric lighting fixtures and related goods, finding the marks likely to dilute by blurring the famous mark TIVO for computer hardware and software. The Board found that the TIVO mark had become famous before Applicant Tivoli's first use dates, and remained famous at the time of trial. TiVo Brands, LLC v. Tivoli, LLC, 129 USPQ2d 1097 (TTAB 2018) [precedential] (Opinion by Judge Frances Wolfson).


TiVo pioneered the creation and development of the digital video recorder or "DVR" in 1999. Applicant Tivoli entered the lighting business in 1972, and owns registrations for TIVOLI, TIVOLED, TIVOFLEX and TIVOLITE for lighting fixtures, controllers, and LEDlights. It also claimed common law rights in the marks TIVOFLUTE, TIVOFLEX, TIVOCOVE, TIVOCUE, and TIVOGRAZE for lighting goods. Tivoli first used the TIVOTAPE mark on May 30, 2010, and TIVOBAR on September 21, 2015.

Before the TTAB, a plaintiff must plead and prove the following to establish a claim for dilution by blurring under Section 43(c):

1. Plaintiff owns a famous mark that is distinctive;
2. Defendant is using a mark in commerce that allegedly dilutes plaintiff's famous mark;
3. Defendant’s use of its mark began after plaintiff’s mark became famous; and
4. Defendant’s use of its mark is likely to cause dilution by blurring.

Nike, Inc. v. Palm Beach Crossfit Inc., 116 USPQ2d 1025 (TTAB 2015) (citing Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d 1713, 1723-24 (Fed. Cir. 2012)).

The Board narrowed its focus to opposer’s use and registration of the mark TIVO, both with and without the design element, for its DVR product, since it is this product that allegedly had achieved dilution fame.

In order to prove that a mark is famous, a party "must show that, when the general public encounters the mark 'in almost any context, it associates the term, at least initially, with the mark’s owner.'" Coach Servs., 101 USPQ2d at 1725 (quoting Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1180-81 (TTAB 2001)). In this regard, the Board may consider all relevant factors, including the following listed in Section 43(c)(2)(A):

(i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.
(ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark.
(iii) The extent of actual recognition of the mark.
(iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.

"Perhaps the most significant of the four elements set forth in the Act to determine fame is the extent of actual public recognition of the mark as a source-indicator for the goods or services in connection with which it is used." Nike Inc. v. Maher, 100 USPQ2d 1018, 1024 (TTAB 2011). The Board found that third-party recognition of the TIVO mark "tips the balance" in favor of our finding the mark to be famous for dilution purposes. The evidence showed that the TIVO mark was referenced in major news and entertainment outlets, and by politicians, and celebrities, since January 2000. The Board therefore found that, by 2010, "the extent of actual recognition of the mark was pervasive and widespread," and TIVO had become a “household term [with] which almost everyone is familiar.” Toro Co., 61 USPQ2d at 1181.

Tivoli argued that TiVo should be required to prove fame as of 1971, when Tivoli began using its TIVOLI mark, from which its later TIVO-formative marks are derived. The Board noted that the dilution statute, when referring to defendant's first use of its mark, does not limit the use to the goods in the subject application, but the "involved" mark may not change over time: "in order for the defendant to “tack” on its earlier use, the mark must be essentially the same at the time it is first used as at the time when it is used in association with the goods or services identified in the subject application or registration."

The Board also considered whether a plaintiff alleging dilution must show that its mark is famous at the time of trial, finding it to be an issue of first impression. The Board concluded that the answer is yes.

To find otherwise would allow a mark that has lost its fame to continue to enjoy the widest penumbra of protection available accorded by the extraordinary protection of the dilution statute. This approach also accounts for any significant changes in the marketplace between the date of Applicant’s first use of its mark and trial.

The Board found that the mark TIVO was famous both as of 2010 and at the time of trial.

Turning to the issue of whether the applied-for marks dilutes the TIVO marks, the Board considered the six non-exclusive factors set forth in Section 43(c)(B)(i)-(vi).

As to the similarity of the marks, the Board applies the same test as in the Section 2(d) context: "the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression." It found that the first and distinctive term TIVO dominates applicant's mark because consumers are less likely to focus on the descriptive portions TAPE and BAR. The similarity between the marks sufficient to “trigger consumers to conjure up” Opposer’s famous mark and associate Applicant’s marks with Opposer’s mark.

The Board found that TIVO is inherently distinctive for TiVo's goods and services, and that TiVo is the substantially exclusive user of the mark. Tivoli relied on a number of third-party registrations, but none was for the mark TIVO alone, and there was no proof that any of the third-party marks are in use. Tivoli also argued that its own marks show the weakness of the TIVO mark, but the Board was not persuaded because "they are not for TIVO alone and too few in number to show that Opposer’s use is not substantially exclusive."

As to the factor that requires a determination as to the level of fame, the Board observed that "the likelihood of an association between the famous mark and the defendant’s mark [is] proportional to the extent of the mark’s fame." Opposer TiVo’s evidence of fame mostly concerned the years before 2010, and the Board inferred that the "degree of consumer recognition has somewhat weakened over time." Nonetheless, it found that TIVO is publicly associated with opposer's digital video recorders such that it “is now primarily associated with the owner of the mark even when it is considered outside of the context of the owner’s goods and services.” Toro, 61 USPQ2d at 1180-81.

There was no evidence that Applicant Tivoli intended to create an association with the TIVO mark, no evidence of an actual association between the applied-for marks and the TIVO mark, and no evidence of actual public association between them.

Viewing the record evidence, the Board concluded that the applied-for marks TIVOTAPE and TIVOBAR marks are likely to dilute the distinctive quality of the famous TIVO, and so the Baord sustained the oppositions.

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TTABlog comment: Should Tivoli's other registrations have been given more weight? To what extent do they dilute the strength/fame of TIVO?

Text Copyright John L. Welch 2019.

Tuesday, January 08, 2019

Finding Aesthetic Functionality, TTAB Affirms Refusal to Register Copper Color for Irrigation Drip Tubes

The Board affirmed a refusal to register the color "copper" for "flexible, plastic tubes used in subsurface drip irrigation systems," finding the proposed mark to be aesthetically functional under Section 2(e)(5). Moreover, assuming that the color "copper" is not functional for the goods, the Board found that the proposed mark lacked acquired distinctiveness under Section 2(f). In re Rain Bird Corporation, Serial No. 85044106 (January 3, 2019) [not precedential] (Opinion by Judge Robert H. Coggins).


Functionality: The Board observed that a color may be a source indicator (e.g., the green-gold dry cleaning press pads in Qualitex and the pink fiberglass insulation of Owens-Corning), or it can be functional (e.g., the black outboard motors in Brunswick and the black boxes for floral arrangements in Florists’ Transworld (FTD)). [Or it can be neither - ed.].

A product feature such as color can be found functional if it serves a purpose that is so significantly useful or important to the class of consumers that competitors need it to compete effectively, and exclusive use of the feature by one producer would place competitors at a substantial non-reputation-related disadvantage. Brunswick, 32 USPQ2d at 1122-23; see also Qualitex, 34 USPQ2d at 1163-65; FTD, 106 USPQ2d at 1791; M-5 Steel Mfg. Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086, 1096 (TTAB 2001); TMEP § 1202(a)(vi).

Applicant Rain Bird did not dispute that the color "brown" is functional for drip irrigation tubing used above ground, but it argued that for its subsurface irrigation systems, "the Copper Color mark literally disappears beneath the ground, extinguishing any purported aesthetically functional aspect of the shiny metallic COPPER Mark."

Rain Bird tube above three competitors' tubes

The record showed, however, that Rain Bird's copper-colored subsurface tubing is in fact marketed for use above ground.The evidence also showed that drip tubing sold by competitors may also be used above ground.

[E]ven though Applicant has purposely drafted a description omitting above ground use, for which use it admits the color brown is functional, we note that subsurface tubing is a good which is used above ground. We have interpreted the nature of Applicant’s subsurface goods in light of what the record shows the subsurface goods to include, which is tubing that may be used above ground.

Despite Rain Bird's "tactical decision to carve above-ground use out of the identification of goods," the Board found that “flexible, plastic tubes used in subsurface drip irrigation systems” includes drip
tubing that may be used above ground, since such use is "an ordinary aspect of the goods." Rain Bird's drip tubes will be viewed by consumers as being usable above ground when they are offered in the same marketplace with above ground irrigation tubes.

Rain Bird claimed that its "copper" mark “stands out from the aesthetically functional brown” colors used on other tubing that otherwise “seamlessly blends into the surface landscape.” Definitions of "copper" generally supported the conclusion that copper is a shade of brown. Rain Bird's competitors use various shades of brown, including some that resemble copper, for their drip tubing to blend with the landscape.

Providing a variety of browns, include shades of what may be called “copper,” serves the function of allowing irrigation tubing to blend into a variety of landscapes  and mulch. Issuing the applied-for registration to Applicant would unfairly hinder competitors’ use of a color that is commonly used for drip tubing. Considering the record as a whole, we find that registration of Applicant’s proposed mark would put its competitors at a significant non-reputation based disadvantage, as in Brunswick and FTD.

Acquired Distinctiveness: For the sake of completeness, the Board also  we considered Rain Bird's claim that the proposed mark may be registered on the basis of acquired distinctiveness.. Of course, a single color applied to a product can never be inherently distinctive, but it may be registered on the Supplemental Register or on the Principal Register under Section 2(f). "By their nature color marks carry a difficult burden in demonstrating distinctiveness and trademark character."

As shown in the multiple images of drip tubing . . . , most of the drip tubing of record is some shade of brown. It would be difficult to name each shade of brown as it appears in the record, but some appear to be copper colored. In view thereof, Applicant’s use of copper, which is a shade of brown, is unlikely to be seen as an indication of source.

The Board found that Rain Bird had failed to demonstrate the “substantially exclusive” use required by the statute. And even though Rain Baird had proven some "look for" packaging and advertising, it submitted no data regarding same to place the advertising in context.

On balance, weighing together the[Converse] factors for which there is evidence, we determine that Applicant has not met its difficult burden of demonstrating the existence of secondary meaning. Applicant’s evidence, taken altogether, fails to demonstrate that the relevant purchasing public has grown to recognize the primary significance of its proposed copper-colored mark as identifying the source of its products. For these reasons, we find that Applicant has not carried its “unusually high burden” of proving that its proposed mark has acquired distinctiveness. In re Owens-Corning Fiberglas, 227 USPQ at 424; FTD, 106 USPQ2d at 1794.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: My drip tubes look like the third one in the picture above. How about yours?

Text Copyright John L. Welch 2019.

Monday, January 07, 2019

Precedential No. 39: TTAB Denies Concurrent Use Registrations For Wine Because Applicant Failed to Prove Prior Lawful Use in Commerce

Concluding that Applicant Scott Stawski was not entitled to concurrent use registrations for the marks PROSPER ESTATE and PROSPER RIDGE for wines, the Board dissolved this concurrent use proceeding. Stawski claimed rights to his marks in nine states, as an exception to John Gregory Lawson's registration for the mark PROSPER for wines, but Stawski failed to show prior, lawful use of his marks, and also failed to prove that confusion is not likely. Scott Stawski v. John Gregory Lawson, 129 USPQ2d 1036 (TTAB 2018) [precedential] (Opinion by Judge David K. Heasley).


To obtain the desired concurrent use registrations for his marks, Applicant Stawski was required to show (1) that he made lawful use of the marks in commerce before February 29, 2012, the filing date of the application that issued as Lawson's registration, and (2) that the concurrent use of his two marks with Lawson’s mark is not likely to cause confusion.

Lawful Prior Use in Commerce: Stawski had to prove "technical use of his trademarks" in commerce prior to Registrant Lawson’s February 29, 2012 filing date: i.e. use sufficient to support a trademark registration. Priority was not the issue, but rather whether Stawski could satisfy the jurisdictional requirement for a concurrent registration. "[E]evidence of analogous use, as opposed to technical trademark use, which could be considered when establishing priority for the purposes of likelihood of confusion, will not be considered in this concurrent use proceeding."

The Lanham Act's concurrent use provision expressly requires "lawful use in commerce" prior to the filing date of an excepted user’s application or registration. 15 U.S.C. § 1052(d). “Use in commerce” means “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” 15 U.S.C. § 1127.

Applicant Stawski failed to establish that his use was "in commerce," and likewise failed to prove that, if his use was in commerce, it was lawful. Thus he failed to meet the jurisdictional requirement of Section 2(d).

Use in Commerce: Stawski's selection of the trademarks in 2007 did not constitute use of the marks in commerce, nor did his 2007 registration of “Prosper Estate Vineyards” as an assumed business name, or his 2007 registration of PROSPER-formative domain names, or his 2009 registration of domain names that connect to a website.

Stawski knew that his grapevines would not mature for ten years after their planting in 2008, and that his vineyard would not become the source of commercially marketable wine for more than a decade. Although he did not have a product ready to market, Stawski attempted “to establish the reputation and brand identity of the vineyard and the Prosper Estate and Prosper Ridge wine labels” by placing the labels on bottled wine purchased from a third party. However, critical details and corroboration regarding these purchases was lacking, and there was no evidence that Stawski made any sales to customers. The Board noted that, “[w]hile actual sales are not required for statutory use in commerce,  . . .  in the context of test marketing, whether the goods are sold can help inform whether the activity is in the ordinary course of trade.” Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1054 (TTAB 2017). The Board deemed Stawski's evidence regarding the distribution of samples to be "vague, equivocal, mostly undated," and he failed to prove bona fide use in the ordinary course of trade.

The Board found that Stawski's placement of labels on wine ordered from the third-party vintner served "merely as a placeholder, until he had a product ready to market."  His minimal distribution under the private labels "tacitly acknowledges that his 'activity was preliminary and exploratory, and [he] was not yet ready to introduce the product in the ordinary course of trade.'" Tao Licensing v. Bender Consulting, 125 USPQ2d at 1054.

The Board concluded that Applicant Stawski had failed to carry his burden of proving prior use in commerce by a preponderance of the evidence, as required by Section 2(d).

Lawful Use: Registrant Lawson further contended that Stawski's purported use of his marks was not lawful because he did not comply with the regulations promulgated by the Alcohol and Tobacco Tax and Trade Bureau (TTB) concerning the labeling of wine that is introduced into interstate commerce. More specifically, Stawski (as he admitted) did not obtain from TTB the required Certificate of Label Approval (COLA) for his wines.

The Board ruled that, because Stawski did not obtain prior COLA approval, he could not prove that his use of the marks was lawful, as required by Section 2(d).


Likelihood of Confusion: For the sake of completeness, the Board went on to consider the issue of likelihood of confusion. Under Section 2(d), a concurrent use registration may issue only when "confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used . . . ."

Applying the relevant du Pont factors, the Board found that Stawski's addition of the nondistinctive geographic elements, “RIDGE” and “ESTATE,” to the registered mark PROSPER did not diminish the strong similarity between the marks.

Stawski argued that Lawson's channels of trade are limited because Lawson had few assets and is unlikely to expand his business. The Board found that discussion to be premature.

In a concurrent use proceeding, however, consideration of the parties’ respective wherewithal, business activity, and planned expansion, among other factors, is relevant only in determining the extent of their respective geographic territories. See, e.g., Boi Na Braza v. Terra Sul, 110 USPQ2d at 1394 (listing factors, and citing Weiner King, 204 USPQ at 830). We do not reach those factors unless and until the applicant carries his burden of proving the two conditions precedent: that there was prior lawful use in commerce and that the geographic territorial division he proposes would be likely to avoid consumer confusion.

Since Lawson's registration is geographically unrestricted, the Board must consider him "as having rights to use his mark in the entire United States, but for that territory where Applicant could show actual use prior to Registrant’s filing date."

Because the involved goods are identical, the Board must presume that they would be marketed to the same classes of customers―ordinary adult wine drinkers and purchasers―through the same channels of trade. See In re Viterra, 101 USPQ2d at 1908. Moreover, there are no limitations as to price or quality, and so there is no reason to believe that purchasers would be particularly discriminating or careful in distinguishing the parties' products.

The question, then, was whether a geographical restriction would suffice to prevent confusion. In this regard, the Board considered two ways in which wine may be distributed: directly to consumers, or through distributors to wine retailers. Consumers seeking to purchase directly would encounter the marks of both parties on the Internet and in national publications that review wine. "[O]rdinary wine consumers and purchasers encountering these highly similar marks on identical products could easily infer, mistakenly, that the brands are related or affiliated, even if they originate from different regions." The Board observed that, even if the parties’ wines were marketed in different parts of the country and did not appear on the same store shelves, "that would not suffice to allay the likelihood of confusion."

Thus, we find that even if there were a geographic division of territories, the parties would still have overlapping classes of customers, whose susceptibility to confusion, engendered by the marked similarity of the parties’ marks on identical goods, would not be appreciably reduced.

Conclusion: The Board ruled that Applicant Stawski was not entitled to concurrent registration of his marks, and so it dissolved the concurrent use proceeding.


Read comments and post your comment here.

TTABlog comment: As far as goods are concerned, is a concurrent use registration possible in the Internet age? Won't there always be an overlap in channels of trade?

Text Copyright John L. Welch 2019.

Friday, January 04, 2019

Precedential No. 38: TTAB Finds Allegations of Abandonment Legally Sufficient Under Iqbal/Twombly

Respondent Firebrand LLC moved to dismiss this petition for cancellation of its registration for the mark FIREBRAND for a "newsletter dealing with brand and product development" and for "business consultation services," asserting that Petitioner Lewis Silkin LLP had failed to state a claim for abandonment under the Iqbal/Twombly standard. Petitioner Silkin alleged that "On information and belief, Respondent is not using Respondent’s Mark on or in connection with Respondent’s Goods and Services with no intent to resume such use." The Board found these allegations to be legally sufficient, and so it denied respondent's motion. Lewis Silkin LLP v. Firebrand LLC, 129 USPQ2d 1015 (TTAB 2018) [precedential].


The standard of notice pleading requires that the complaint “state a claim to relief that is plausible on its face.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)) (“the Iqbal/Twombly standard”). “Threadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice.” Ashcroft v. Iqbal, 556 U.S. at 678.

The CAFC has not applied the Iqbal/Twombly standard to an abandonment claim, but the TTAB has on three occasions considered the legal sufficiency of an abandonment claim under that standard. The Board did not find that the standard "required more than the traditional pleading of nonuse plus intent not to resume." See Dragon Bleu (SARL) v. VENM, LLC, 112 USPQ2d 1925, 1931 (TTAB 2014); SaddleSprings Inc. v. Mad Croc Brands Inc., 104 USPQ2d 1948, 1950 (TTAB 2012); and Johnson & Johnson v. Obschestvo s Ogranitchennoy, 104 USPQ2d 2037 (TTAB 2012).

Under Section 45 of the Lanham Act, a mark shall be deemed to be abandoned "[w]hen its use has been discontinued with intent not to resume such use." The Board found that Respondent Silkin's allegation of “no intent to resume use” is equivalent to the statutory language of “intent not to resume use” for an abandonment claim. See Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 13 USPQ2d 1307, 1312 (Fed. Cir. 1989). In Johnson & Johnson, the Board found that a counterclaim “sufficiently pleaded a ground for partial cancellation by alleging abandonment of the mark as to particular goods through nonuse with no intent to resume use.”

The Board concluded that Silkin's allegations that respondent is not using the mark and services, and has no intent to resume use, were legally sufficient "in the context of the Board’s narrow jurisdiction limited to trademark registrability." The Board rejected the argument that the pleader must include additional allegations demonstrating how it will prove the allegations of nonuse plus intent.

We see no purpose to such detailed pleading requirements for an abandonment claim, besides unnecessarily complicating the pleadings. As noted above, there is no list of activities which always show trademark use, and thus there is no list of activities whose cessation would always show trademark nonuse. Actual intent not to resume use (as opposed to the statutory period of nonuse which gives rise to the presumption of intent not to resume use) does not exist in a vacuum, but also must relate to the use in  commerce of the mark. The Board is reluctant to see pleadings devolve into wrangling over whether specific factual allegations offered to demonstrate nonuse and intent not to resume use are sufficient to support the abandonment claim. These matters addressing what activities constitute use in commerce under the Trademark Act are best, and traditionally, left to trial.

The Board noted that there has been an increase in parties arguing that "every pleading must demonstrate that the party undertook a reasonable inquiry or investigation before filing its pleading."  The Board "strongly" disagreed that this is a pleading requirement.

FRCP 8(a)(2) and (e) state that a pleading must include “a short and plain statement of the claim showing that the pleader is entitled to relief” and must be “construed so as to do justice.” Whether the plaintiff will be able to prove its abandonment claim is "irrelevant to assessment of the legal sufficiency of the complaint." Guess? IP Holder LP v. Knowluxe LLC, 116 USPQ2d 2018, 2019 (TTAB 2015).

Finding the petition for cancellation to be legally sufficient, the Board denied respondent's FRCP 12(b)(6) motion to dismiss.

Read comments and post your comment here.

TTABlog comment: When it comes to proving, as opposed to pleading, abandonment, Section 45 facilitates that proof by stating that "Nonuse for 3 consecutive years shall be prima facie evidence of abandonment."

Text Copyright John L. Welch 2019.

Thursday, January 03, 2019

TTABlog Quarterly Index: October - December 2018

Happy New Year! E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. You may also follow the TTABlog on Twitter: @TTABlog.


Section 2(d) - Likelihood of Confusion:


Section 2(e)(1) - Mere Descriptiveness:


Section 2(e)(2) - Primarily Geographically Descriptive:


Section 2(e)(4) - Primarily Merely a Surname:
Section 2(f) - Acquired Distinctiveness:


Concurrent Use:
Dilution:
Fraud:
Nonuse/Specimen of Use/Failure to Function:
Misuse of ® Symbol:
Standing:


Discovery/Evidence/Procedure:
CAFC Opinions:


Other:
Text Copyright John L. Welch 2018.