TTAB Test: Is "HOPNOTIC" for Beer Confusable With "HPNOTIQ" for Liqueur?

Heaven Hill Distilleries petitioned to cancel Cricket Hill's registration for the mark HOPNOTIC for "beer" on the ground of likelihood of confusion with the registered mark HPNOTIQ for "liqueur." Heaven Hill proved priority, and since all beverages are related at the TTAB [as a practical matter], it all came down to the marks. How do you think this came out? Heaven Hill Distilleries, Inc. v. Cricket Hill Brewing Co., Inc., Cancellation No. 92060811 (Sept. 23, 2016) [not precedential].

Relatedness of the Goods: Beer and liqueur are sold in the same channels of trade to the same classes of consumers. Moreover, brand extension have become more frequent in the alcoholic beverage industry. Even if consumers are aware of the difference in the manufacture of beer and liqueur, they may assume that there is a licensing arrangement concerning the two.

Conditions of Purchase: Beer is an inexpensive drink and may be purchased on impulse. Liqueurs are more expensive, but are still relatively inexpensive items. A cocktail containing HPNOTIQ liqueur may cost as little as $5.00.

Strength of Petitioner's Mark: The Board concluded that consumers would understand petitioner's mark to be the equivalent of "hypnotic," an arbitrary term for liqueurs. In addition to the inherent strength of the mark, the evidence established that the mark HPNOTIQ is a "big brand" with larger sales than popular brands like Chambord and Cointreau. And there was no evidence of third-party use or registration of a mark having a "hypnotic" or "hypnosis" formative. The Board therefore concluded that HPNOTIQ is a strong, but not famous, mark.

The Marks: Consumers who make impulse purchases are not likely to notice the different spellings of the marks. Even if consumers notice the "O" in respondent's mark, they will see HOPNOTIC as a variation of the HPNOTIQ mark that suggests a connection between "hops" and beer.

The marks are also similar in pronunciation. In a noisy bar, a waiter or bartender may not be able to distinguish between the two. Although when the customer is served the error would be corrected, there still would be initial confusion. Even putting aside the similarity in sound, the similarity in meaning dictates a finding in favor of petitioner regarding this du Pont factor.

The Board concluded that, when the marks are considered in their entireties, they are similar in appearance, pronunciation, meaning and commercial impression.

Lack of Confusion Evidence: Respondent argued that the lack of actual confusion despite twelve years of concurrent use, was dispositive. The Board, however, pointed out that there was almost no evidence of the extent of respondent's use of its mark, and so it was not possible to determine whether there has been a reasonable opportunity for confusion to occur. In any case, it is not necessary to show actual confusion in order to prove likelihood of confusion.

After considering all the relevant du Pont factors, the Board found confusion likely and it granted the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: How did you do? In the real world, do you think anyone would be confused as to the source of these two products?

Text Copyright John L. Welch 2016.

Mark Your Calendar: USPTO's National Trademark Expo: October 21-22

Mark your calender for the USPTO's National Trademark Expo to be be held on October 21^st and 22^nd at the Andrew W. Mellon Auditorium, 1301 Constitution Ave. NW, Washington, D.C. More information here.

 

The Expo is open to any owner of a federally-registered trademark. This free, family-fun, educational event includes exhibitors, kids programs, costumed characters, seminars, and more. The Andrew W. Mellon Auditorium is a very brief walk from the Federal Triangle Station of the Washington Metropolitan Area Transit Authority (WMATA) subway station and provides very convenient access.

The theme of the 2016 Expo is “Movement and Energy.” Space is limited. Those interested in applying should submit the 2016 Application to exhibit.

Read comments and post your comment here.

Copyright John L. Welch 2016.

Precedential No. 26: Finding a Repeating Pattern Not Distinctive, TTAB Affirms Failure To Function Refusal of Hookah Ornamentation

The Board affirmed a refusal to register the proposed mark shown below, consisting of a repeated diamond pattern applied to the lower third of the cylinder of "electronic hookahs," deeming it to be a non-distinctive, merely ornamental design that lacks acquired distinctiveness under Section 2(f). In re Fantasia Distribution, Inc., Serial No. 86185623 (September 21, 2016) [precedential].

The Board noted that the refusal to register is consistent with TMEP Section 1209.19 (April 2016), incorporating a 2015 USPTO examination guide that addressed the potential lack of inherent distinctiveness of repeating patterns because they often serve an ornamental function. Analogous to color and product design, repeating patterns are often used to make products more attractive, and so consumers would not be predisposed to equate the pattern with source. The Board did not rule out the possibility that a repeating pattern could be inherently distinctive, but in most cases it would not be. "A pattern may function as a mark only 'if it is arbitrary and distinctive and its principal function is to identify and distinguish the source of the goods to which it is applied ....' See In re Soccer Sport Supply Co., 184 USPQ 345, 347 (CCPA 1975)."

Inherent Distinctiveness: To assess the inherent distinctiveness of the pattern, the Board followed Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 196 USPQ 289 (CCPA 1977), adapting its factors to the following:

• the nature of Applicant's goods and whether there is an industry practice of ornamenting such goods;
• the nature of the pattern, including whether any element of the pattern might be perceived as source indicating if it were standing alone;
• how common the pattern is, whether is is composed of common or unusual repeating shapes, whether such shapes repeat in a common or unusual manner, and whether the overall pattern is similar to, or a mere refinement or variation of, a common or well-known form of ornamentation;
• the manner in which the repeating pattern appears on the product, including the size and location of the pattern on the product and how much of the product is covered by the pattern; and
• whether the pattern creates a distinct commercial impression apart from any accompanying wording and design elements.

Examining Attorney April Roach submitted evidence regarding three other brands of electronic hookahs that display patterns placed at one end of the device, in a manner similar to applicant's pattern, contending that this evidence demonstrated that such placement of ornamental designs is a common practice in the industry. The Board rejected applicant's contention that the evidence must show other diamond patterns, pointing out that even if applicant's is the first and only user of a diamond pattern, that fact alone "does not imbue the design with source-identifying significance, where Applicant's design merely repeats an ordinary shape in an unremarkable pattern and places it on the goods in an unremarkable way."

Applicant's basic diamond pattern blends with other elements of the trade dress and does not make a distinct commercial impression. It appears in a location often used for ornamentation in this industry.

The Board concluded that applicant's repeating diamond pattern is not inherently distinctive. It "plays a significant role in giving the devices and attractive appearance," and consumers would not be predisposed to view the pattern as source-indicating.

Acquired Distinctiveness: Of course, an ornamental element may be registrable as a trademark on the Principal Register upon proof of acquired distinctiveness. The Board found, however, that applicant's proofs fell short. There was no evidence of "look for" advertising, and the handful of Internet references to applicant's diamond pattern did not indicate its significance. The evidence showed that applicant's are sold in packaging that hides the diamond pattern from view. Moreover, the wording and pattern color signify the flavor of the hookah, and thus the diamond pattern blends with the other elements of trade dress rather than standing out on its own.

The Board therefore concluded that the proposed mark lacks acquired distinctiveness.

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

Read comments and post your comment here.

TTABlog comment: It seems to me that if ornamentation at the lower end of the hookah is common in the industry, this may indeed be a way of distinguishing source.

Maybe applicant should try to register this at the U.S. Pattern and Non-Trademark Office.

Text Copyright John L. Welch 2016.

TTAB Test: How Did These Four Section 2(d) Appeals Turn Out?

I once heard a TTAB judge say that the outcome of most Section 2(d) likelihood of confusion cases may be predicted just by looking at the marks and the identified goods/services, without more. Well, try that approach on these four recent appeals that were decided two days ago, keeping in mind that about 85% of Section 2(d) appeals result in affirmance of the refusal. How do you think these came out? [Answer in first comment.]


In re Universal Entertainment Corp., Serial No. 79161731 (September 21, 2016) [not precedential]. [Section 2(d) refusal of GODDESSES HERA for gaming machines, slot machines, and the like, in view of the registered mark HERA’S GOLD for computer game software and gaming].

In re Peag, LLC, Serial No. 86019875 (Se, 2016) [not precedential]. [Section 2(d) refusal of EPIC BY JLAB, in the stylized form below, for "ear buds," in view of the registered mark EPIC for "loudspeakers."

In re Oncor Corporation aka DMK Cosmetics, Serial No. 86131491 (September 21, 2016) [not precedential]. [Section 2(d) refusal of A2Z for"skin care products, namely skin cleansers,non-medicated exfoliating gels for skin, non-medicated acne treatment preparations," in view of the registered mark HEALTHA2Z for pharmaceuticals for the treatment of various conditions, including acne, and for other drugs].

In re The Line and Dot LLC, Serial No. 86170528 (September 21, 2016) [not precedential]. [Section 2(d) refusal of LUMIÈRE for "women's clothing, namely blouses tops dresses, pants and sweaters," in light of the registered mark LUMIERE PLACE for "Blouses; Coats; Foul weather gear; Gloves; Headwear; Jackets; Jogging suits; Pants; Polo shirts; Robes; Shirts; Shorts; Socks; Sweat pants; Sweat shirts; Sweaters; Swimwear; T-shirts; Tank tops; Vests; Wristbands"].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.

Christopher Larkin Appointed As TTAB Administrative Trademark Judge

Christopher Larkin has been appointed to the position of Administrative Trademark Judge at the Trademark Trial and Appeal Board. His appointment brings the total number of TTAB judges to 26.

Christopher Larkin comes to the Board from his position as a partner in the Los Angeles law firm of Seyfarth Shaw LLP. He has been a partner there since 2002 and at other firms for the preceding 15 years. Previous law firm partner positions include those at the Los Angeles firms of Small Larkin and Graham & James. Before taking on his first partnership position, Mr. Larkin served as an associate in the firms of Graham & James and Townley & Updike (in New York). In all of these law firm positions, spanning 35 years of law practice, Mr. Larkin has been involved in a wide-ranging intellectual property practice, focused primarily on such matters as trademark clearance, prosecution, counseling, licensing and litigation. The litigation practice has involved proceedings in state and federal courts, including federal appellate courts, and before the Trademark Trial and Appeal Board.

Mr. Larkin has also served many years as a Lecturer in Law at the University of Southern California Law School, teaching Internet Law, Trademark Law and Trademark Law in Practice. His professional affiliations are many and varied, and include a number of leadership positions on committees of the International Trademark Association (INTA). He was the author of the INTA amicus curiae brief to the United States Supreme Court in Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995). Mr. Larkin has been a frequent author, lecturer and presenter on trademark topics for more than 20 years and has co-chaired six Practising Law Institute programs on practice before the USPTO and TTAB in trademark matters.

A Phi Beta Kappa graduate of Stanford University, Mr. Larkin earned his J.D. from Columbia Law School in New York, where he was a Harlan Fiske Stone Scholar and a Young B. Smith Prize recipient.

Read comments and post your comment here.

Text (except for quoted material) Copyright John L. Welch 2016.

Erik Pelton's Report on Sept. 16th TPAC Meeting

A tip of the fedora to FOTTABlog Erik M. Pelton, who once again provides a report (here) on the latest meeting of the Trademark Public Advisory Committee (a/k/a TPAC). Note particularly the slides provided at the end of Erik's blog post.

With regard to our favorite tribunal, TTAB Chief Administrative Trademark Judge Gerard Rogers reported the following:

• The latest TTAB pendency statistics were reviewed (see slides), showing that pendency times in general continue to decrease.
• New proceeding filings at the TTAB are up considerably in FY2016, including Notice of Opposition filings up 11%.
• New TTAB Judge Christopher Larkin begins work this week.
• The TTAB rulemaking package will be issued this month, with an effective date of January 14, 2017.
• The new rules will apply to all cases, with judges having discretion where needed in applying them to pre-existing cases.
• The new rules retain the Board processes considered significant by the Supreme Court last year in B&B Hardware.

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

TTAB Denies Unclean Hands Defense, Grants AACHI Cancellation Petition

In are rare decision discussing the affirmative defense of unclean hands, the Board granted a petition for cancellation of a registration for the mark AACHI AAPPAKADAI & Design for "restaurant and catering services" [AAPPAKADAI disclaimed], finding the mark likely to cause confusion with petitioner's registered mark AACHI for various food products. The Board dismissed respondent's fraud defense since the validity of a pleaded registration may be attacked only via a counterclaim for cancellation. But the Board entertained respondent's unclean hands defense, ultimately finding it wanting. Aachi Spices & Foods v. Kalidoss Raju, Cancellation No. 92058629 (September 13, 2016) [not precedential].

Unclean hands The Board dismissed all eleven of respondent's so-called affirmative defenses, including laches, "fair use," and fraud. The unclean hands defense merited the most attention. The Board observed that "[t]he equitable doctrine of unclean hands prevents a plaintiff from relying on its registration if it made a false statement during the prosecution of its application for registration or maintenance of its registration."

Petitioner, in obtaining its two registrations, stated that "aachi" means "distinguished lady" in English. Respondent asserted that that statement was false, since "aachi" should properly be translated as "grandmother." According to respondent, had petitioner provided a proper translation, the PTO would have conducted a search of all marks that contained the words grandmother, mother, and grandma, and would have found hundreds of trademarks. The PTO may then have refused registration of petitioner's mark.

However, the evidence showed that "aachi" has several meanings (e.g., distinguished lady, elderly woman, grandmother, etc.), and so the Board could not find that petitioner made a false statement in its translation. Moreover, it was not clear that the examining attorney would have translated the word as "grandmother," nor was there any evidence that an appreciable number of consumers would be aware that the Tamil word "aachi" means "grandmother." Finally, respondent did not provide any evidence to support its assertion that there are numerous marks comprising the words "grandmother," etc.

Likelihood of Confusion: Although finding that the word AAPPAKADAI is the dominant part of respondent's mark, the Board found the involved marks to be similar in appearance, sound, connotation, and commercial impression. Consumers may believe that AACHI AappaKadai is the restaurant and catering line of the AACHI food products company

To show the relatedness of the involved goods and services, petitioner introduced 450 use-based, third-party registrations covering both food products and restaurant and/or catering services. Excerpts from 31 websites demonstrated that restaurant and grocery store services, and particularly Indian restaurant and grocery services, move in the same channels of trade to the same classes of consumers.

The Board noted that under Jacobs v. International Multifoods Corp., a party must show something more than that similar or even identical marks are used for food products and restaurant services, in order to establish likelihood of confusion. Applicant's evidence of third-party use and registration, along with the fact that the involved marks share a similar arbitrary term, satisfied that requirement.

Read comments and post your comment here.

TTABlog comment: For some reason, this case reminded me of former Mets pitcher Bob Apodoca.

Text Copyright John L. Welch 2016.

TTABlog Tweets and Re-Tweets

If you are not a Twitter subscriber, you missed these recent TTABlog tweets and re-tweets @TTABlog.

Gainesville, Florida

Massachusetts district court denies preliminary injunction motion in HEALTH NEW ENGLAND trademark dispute (here).

Beneath Louis Vuitton’s inability to take a joke, a serious First Amendment question. (here)

Looking for a basic primer on Design Patents? Try this.

Why granting TM protection to hashtags is bad. Harvard Journal of Law and Technology (here).

WIPO. At a glance: How the International Trademark System works – http://ow.ly/3ECC303CqHa

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

TTAB Test: Is PROBOKNOW Merely Descriptive of a Legal Services Website?

The USPTO refused registration of the mark PROBOKNOW, in standard character form, deeming it merely descriptive of "Operating an online marketplace for providers and consumers of free and affordable legal services." The PTO maintained that the mark is the phonetic equivalent of "pro bono."Applicant argued that PROBOKNOW will not be recognized as "pro bono," but rather as a merely suggestive portmanteau of the terms "pro bono" and "knowledge." Moreover, said applicant, the mark is a double entendre. How do you think this came out? In re Proboknow, LLC., Serial No. 86790769 (September 14, 2016) [not precedential].

The Board first observed that PROBOKNOW is a novel spelling of the phonetically equivalent “pro bono.” "The novel spelling of a mark that is the phonetic equivalent of a merely descriptive word or term is also merely descriptive if purchasers would perceive the different spelling as the equivalent of the descriptive word or term."

Examining Attorney David I. Dubin submitted dictionary definitions of the term "pro bono," which made clear that the term “pro bono” merely describes legal services provided to clients who are unable to pay. Internet evidence also indicated that “pro bono” is a well-recognized term in the field of law describing legal work performed for the public good to clients who are unable to pay. Applicant's website states that it services enable 'new attorneys to gain the experience they need by connecting them with those in need." Thus prospective customers would immediately know that the services are intended for providers and consumers of free, or pro bono, legal services.

As to applicant's argument that PROBOKNOW would be perceived as a melding of "pro bono" and "knowledge," there was no evidence to support that theory, nor is such an interpretation evident from applicant's manner of use of the mark. Moreover, even if consumers perceive the mark as applicant asserts, the mark would still be descriptive of applicant's services.

As to the double entendre argument, both meanings of the mark are descriptive of the services, and therefore there is no double entendre.

Finally, even if applicant is the first and only user of the term PROBOKNOW, it is still merely descriptive of the services, because it immediately describes an essential function, feature or characteristic of the identified services.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: How did you do? PS: the Board did acknowledge once again that "there is a thin line between terms that are merely descriptive and those that are suggestive." That should make applicant feel better.

Text Copyright John L. Welch 2016.

Precedential No. 25: Issue Preclusion Applies to Standing, Says TTAB

In November 2015, the Board dismissed a cancellation petition brought by NH Beach Pizza LLC because NH failed to prove standing. [TTABlogged here]. NH then filed a new petition for cancellation on the same ground as the prior petition. Respondent moved for summary judgment on the basis of collateral estoppel (issue preclusion) because the issue of standing had already been decided against Petitioner NH. The Board granted the motion and dismissed the new petition. NH Beach Pizza LLC v. Cristy’s Pizza Inc., Cancellation No. 92062824 (August 29, 2016) [precedential].

Under B & B Hardware, Inc. v. Hargis Indus., Inc., issue preclusion bars the re-litigation of the same issue in a second action.

The application of issue preclusion requires: (1) identity of an issue in the current and a prior proceeding; (2) actual litigation of that issue in the prior proceeding; (3) that determination of the issue was necessary in entering judgment in the prior proceeding; and (4) that the party with the burden of proof on that issue in the second proceeding had a full and fair opportunity to litigate the issue in the prior proceeding.

There was no factual dispute that would preclude entry of summary judgment.

As to the first element, Petitioner pled the same basis for its standing as in the first proceeding: that it uses "the generic term ‘beach pizza’” to promote its goods and that respondent claimed that this usage caused actual consumer confusion.

As to the second element, the issue of standing was actually litigated and decided in the prior proceeding. The fact that the basis for the decision was NH's failure to provided evidence of its standing does not change the fact that the issue was actually litigated.

NH wrongly asserted that the original case was dismissed "without prejudice." The Board noted that the case was "dismissed." In any event, even in a case dismissed without prejudice, the issue decided is subject to issue preclusion. Claim preclusion may not apply, but issue preclusion will bar the re-litigation of the same standing argument in a second proceeding.

The Board pointed out that NH could have rectified its evidentiary deficiencies by pursuing an appeal of the Board’s decision pursuant to Section 21(b) of the Trademark Act, 15 U.S.C. § 1071(b), which would have allowed NH an opportunity to submit new evidence regarding its standing. [As I suggested in the first blog posting - ed.].

The third factor was met because the standing determination was necessary to the Board's prior decision. "Indeed, it was the reason that the Board dismissed the Prior Action."

Finally, the fourth factor was satisfied because Petitioner NH was fully represented in the prior proceeding and had a full and fair opportunity to introduce testimony or other evidence on the issue of its standing. .

And so the Board dismissed the petition for cancellation with prejudice.

Read comments and post your comment here.

TTABlog comment: Double ouch!

Text Copyright John L. Welch 2016.

TTAB Test: Are These Design Marks Confusable for Jewelry?

Omega SA opposed an application to register the mark shown to the right, for jewelry, claiming a likelihood of confusion with its registered and common law marks (shown below) for watches and watch parts, for jewelry. The Board found the goods to be identical and/or closely related (not surprisingly), and Opposer's marks to be famous for Section 2(d) purposes. But are the marks confusingly similar? Well, close enough to result in a divided panel decision. Omega SA (Omega AG) (Omega LTD.) v. Derral Leon Reynolds, Opposition No. 91197643 (September 12, 2016) [not precedential].

The panel majority observed that "[t]he Lanham Act's tolerance for similarity between competing marks varies inversely with the fame of the prior mark." [Strike One?] Moreover, when the involved goods are identical, a lesser degree of similarity between the marks is needed to support a finding of likely confusion. [Strike Two?] And in his application, Applicant Reynolds stated that his mark consists of "the Greek letter Alpha nestled inside of the Greek letter Omega." [Strike Three?]

Consumers will likely pronounce Opposer's marks as "omega." Applicant, by his statement, considers the letter "Ω" to be a readily discernable part of  his mark. "If he articulates the 'omega' component of his mark, as he does in the description of his mark, it is likely that his consumers will also articulate the 'omega' component of his mark." [That seems like a nonsequitur to me - ed.].

The panel majority found that the Greek letter "Ω" is readily recognizable in Applicant's mark, surrounding the "A" or "alpha." Thus the involved marks are similar in appearance because they both include "Ω".  Even when consumers note the "alpha" element in applicant's mark, they are likely to see the mark as a variation of opposer's well known Omega marks.

Balancing the relevant factors, the panel majority found confusion likely and so it sustained the opposition.

Dissent: Judge Francie R. Gorowitz dissented, concluding that the marks are so different that confusion is unlikely. She asserted that the majority put too much weight on applicant's description of his mark, when the important issue is the public's perception of the mark and not applicant's description. She opined that consumers would not likely perceive the curve around the "A" as the letter omega, but rather would see the mark as a capital "A" with a slight design element.

Read comments and post your comment here.

TTABlog comment: I agree with the dissent. To me, applicant's mark looks like a capital "A" with an arc around it. What do you think?

Text Copyright John L. Welch 2016.