TTAB Seeks Applicants for Attorney Advisor (Interlocutory Attorney) Position

The USPTO is seeking applications for the position of Attorney Advisor (and more specifically, Interlocutory Attorney) at the TTAB. The detailed announcement may be found here.

Job Title: Attorney Advisor (Trademark)
Department: Department Of Commerce
Agency: Patent and Trademark Office
Job Announcement Number: TTAB-2018-0007

This position is located in the Trademark Trial and Appeal Board (TTAB). The TTAB is an administrative tribunal within the U.S. Patent and Trademark Office (USPTO) that hears and decides trial level adversary proceedings involving two or more parties. These include oppositions (party opposes an application to register a mark after publication in the Gazette), cancellations (party seeks to cancel an existing registration), and concurrent use proceedings. The TTAB also hears and decides appeals from final refusals issued by USPTO Trademark Examining Attorneys following examination of applications to register marks.

* * * * * * * * As an Interlocutory Attorney in the TTAB, the duties are, but not limited to::

• Analyzing the legal issue in question, developing the strategy to deal with the legal issue, and determining the content and means of delivery of the completed analysis of the legal issue.
• Managing interlocutory matters in oppositions, cancellations and concurrent use cases at the TTAB.
• As a recognized expert in the procedural and substantive aspects of the law, mentors and coaches others.
• Independently deciding and issuing orders on all procedural and substantive motions that are not potentially dispositive of the proceeding, such as motions to amend pleadings, motions to compel and motions to strike evidence.
• Consulting with and drafting decisions for Administrative Trademark Judges on all procedural and substantive motions that are potentially dispositive of the proceeding, such as motions to dismiss, motions for judgment on the pleadings, and motions for summary judgment.
• Working with Administrative Trademark Judges and the top management of the TTAB, as well as the top management and/or attorneys of other private and public organizations

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Text Copyright John L. Welch 2016.

TTAB Affirms Section 2(a) Deceptiveness Refusal of P6 CHROME for Nutritional Supplements

The Board affirmed a Section 2(a) refusal of the mark P6 CHROME, in standard characters, for "dietary and nutritional supplements that do not contain chromium," finding that the mark is deceptive because it misdescribes the goods as containing chromium and that misdescription would likely affect purchasing decisions. Applicant claimed, to no avail, that the word "chrome" merely refers to the color of its packaging. In re Woodbolt Distribution LLC d/b/a Nutrabolt, Serial No. 86627384 (April 18, 2018) [not precedential] (Opinion by Judge Michael B. Adlin).

A mark is deceptive under Section 2(a), and therefore barred from registration, when:

• (1) it misdescribes the character, quality, function, composition or use of the goods;
• (2) prospective purchasers are likely to believe that the misdescription actually describes the goods; and
• (3) the misdescription is likely to affect the purchasing decision of a substantial portion of consumers.

Prong 1: Dictionary definitions submitted by both Examining Attorney Carol Spils and applicant established that "chrome" means chromium. Applicant's assertions during prosecution established that its goods do not contain chromium. Therefore the first prong of the test was met.

Applicant argued that "chrome" has more than one meaning, but the Board pointed out that the term must be considered in the context of the goods at issue. The record includes extensive evidence that many dietary and nutritional supplements contain chromium and are sold under marks which contain the term “CHROME.” 

As to applicant's packaging, many consumers - some of whom will be exposed only to Applicant’s mark and not its “bright metallic trim packaging” - will misperceive the term CHROME as a description of an ingredient in Applicant’s goods.

Prong 2: The evidence that many third-party dietary and nutritional supplements contain chromium also serves to establish the second prong of the test.

The Board agreed with Applicant that dietary and nutritional supplements “are not impulse purchases," but this does not mean purchasers will not believe that Applicant’s goods contain chromium. In fact, sophisticated purchasers are more likely than average consumers to know that chromium is believed to have potential health benefits and that many supplements include chromium and are sold under marks containing the term CHROME.

Prong 3: Evidence from multiple sources indicated that chromium is at least believed to have health benefits. Many third-party supplements are promoted as containing chromium. Therefore, this prong of the test is satisfied as well.

Although some consumers “would not necessarily believe that chromium would be a beneficial ingredient,” the Board had "no hesitation in finding that the requisite 'substantial portion' of prospective supplement consumers would find Applicant’s supplements more desirable because of the perceived representation that they contain chromium." "Indeed, were it otherwise, the market would be unlikely to support so many chromium supplements, let alone so many which are sold under marks that include the terms CHROME or CHROMIUM, which identify one of the products’ ingredients and thus their claimed potential benefits."

Conclusion: All three prongs of the test having been met, the Board affirmed the refusal.

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TTABlog comment: Is this a WYHA?

Text Copyright John L. Welch 2018.

Precedential No. 13: TTAB Denies Motion to Strike Pre-Trial Disclosures of Authenticating Witnesses

The Board denied Opposer Kate Spades’s motion to strike Applicant’s pretrial disclosures and to exclude three subsequently-filed testimony declarations, rejecting Spade's assertion that Applicant Thatch failed to timely supplement its initial disclosures to identify the three declarants. Because the testimony related to third-party use of marks similar to applicant's marks, Thatch's identification of the witnesses after trial had begun was sufficient and timely. Kate Spade LLC v. Thatch, LLC, 126 USPQ2d 1098 (TTAB 2018) [precedential] (Order by Interlocutory Attorney Elizabeth A. Dunn).

In its initial disclosures, Applicant Thatch stated it might use at trial "[d]ocuments reflecting third party use and registration of marks similar to Applicant's." During Spade's trial period, Thatch supplemented its initial disclosures to name one Nart-anong Chinda as well as "third-party witnesses to be determined" to authenticate use of third-party marks. Thatch also served Opposer Spade with documents demonstrating third-party use.

Subsequently, in its pre-trial disclosures, Thatch identified Ms. Chinda as a trial witness, as well as Gabrial Mann and Medhi Neyestanki, to testify and introduce exhibits regarding third-party use. Thatch then filed the testimony declarations of these three witnesses. Opposer Spade argued that applicant's disclosures were untimely and deprived it of the opportunity to seek discovery from these witnesses.

The Board turned to FRCP 37(c)(1) in determining whether Thatch's pre-trial disclosures were proper and adequate. Under that rule, the Board applies a five-factor test to determine whether to strike pretrial disclosures"

“1) the surprise to the party against whom the evidence would be offered; 2) the ability of that party to cure the surprise; 3) the extent to which allowing the testimony would disrupt the trial; 4) importance of the evidence; and 5) the nondisclosing party’s explanation for its failure to disclose the evidence.” Great Seats v. Great Seats Ltd., 100 USPQ2d 1323, 1327 (TTAB 2011).

Supplemental Initial Disclosures: The Board observed that Ms. Chinda testified merely as an authenticating witness, and such testimony "does not add substantively to the evidence." Because her identity was promptly disclosed after she collected the third-party evidence, the supplemental initial disclosure was sufficient. Likewise the subsequent pre-trial disclosure regarding her testimony was timely, and therefore the Board denied Spade's motion to strike.

The other two witnesses, however, were not identified until Thatch's pre-trial disclosures. Applying the Great Seats factors, the Board noted that evidence of third-party use and registration "can be powerful evidence of [a] term's weakness," and so the fourth factor favored Applicant Thatch. Since there is no duty to investigate third-party use during discovery, nor is there a duty to disclose every exhibit a party plans to use at trial, the fifth factor favored Thatch.

As to the first factor, Opposer Spade "knew of the two third party users, and was aware of the subject matter ultimately covered by the testimony of Mr. Mann and Mr. Neyestanki. Even if Opposer was not aware of every fact set forth in their declarations, the record reflects that it was aware of the pertinent information therein." Alhough Thatch listed third-party use as a category in its initial disclosures, Opposer Spade did not seek discovery thereon, nor did it claim surprise when it received Thatch's supplemental initial disclosure. Instead it waited three months to challenge applicant's pre-trial disclosures.

Spade argued that cross-examination is not sufficient to challenge the testimony of these two witnesses, and that discovery is needed. The Board was not persuaded:

Based on the limited nature of the testimony regarding third party use, broad discovery is unnecessary. Opposer is free to challenge the evidence about third party use. Any need for Opposer to have learned about Applicant’s evidence earlier could have been addressed months ago and Opposer has only its own inaction to blame. Accordingly, the second and third factors favor Applicant.

The Board concluded that, on balance, Applicant Thatch's failure to disclose these two witnesses until its pre-trial disclosures was "substantially justified and harmless," and so the motion to strike the pre-trial disclosures as to these two witnesses was denied.

Read comments and post your comment here.

TTABlog comment: What would be the point of taking discovery as to third-party uses if the other side can delay its investigation until after discovery closes?

Text Copyright John L. Welch 2018.

TTAB Affirms Refusal of Bottle Shape for Mezcal: Lacks Inherent Distinctiveness and Fails to Function as a Trademark

The Board affirmed a refusal to register the "product packaging mark" shown below for "mezcal," finding that the proposed mark is not inherently distinctive and fails to function as a trademark under Sections 1, 2, and 45 of the Trademark Act. In re AGPCH, S.A. de C.V., Serial No. 87125518 (April 18, 2018) [not precedential] (Opinion by Judge Cynthia C. Lynch).

Unlike product design, product packaging may be inherently distinctive. In determining whether a particular packaging is inherently distinctive, the Board considers the factors set forth in Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 196 USPQ 289, 291 (CCPA 1977), any one of which factors may be dispositive:

• whether the proposed mark is a "common" basic shape or design.
• whether it [is] unique or unusual in a particular field;
• whether it is "a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods" or "a mere refinement" thereof.

The Board first considered the relevant field within which to consider applicant's packaging. Applicant argued that the field should be limited to "mezcal" and should not encompass alcoholic beverages or beverages generally. Examining Attorney Melissa S. Winter contended that the field should be broadened to "the beverage industry as a whole." The Board found the "distilled spirits market" to be the most reasonable category of goods for comparison purposes, sine retailers group distilled spirits together in presenting them to consumers.

Both applicant and the Examining Attorney submitted evidence of other bottle designs:

The Board concluded that applicant's design "cannot be considered unique or unusual in the field, and constitutes a mere refinement of a commonly-adopted and well-known form of ornamentation for liquor bottles." The first bottle above has "an overall design almost identical to Applicant's 'gourd-shaped' bottle ... with a spherical stopper and what Applicant calls a 'capsule' that spreads down over the neck of the bottle."

The next three bottles - for mezcal, vodka, and liqueur - show the prevalence of hourglass-shaped bottles, two of them having a round stopper like applicant's. Other third-party bottles have spherical stoppers and vertical ribs. Many bottles contain neck rings and capsules. The Board found that the differences in applicant's design from these other bottles are "mere minimal refinements of common designs, rather than significant differences from them." Even if applicant is the only current user of its exact combination of features, "this fact alone does not imbue the design with source-identifying significance."

The two prior cases cited by Applicant - involving Procter & Gamble's cat food can and Creative Beauty's perfume bottle - each include evidence that the designs there at issue received awards or other recognition. Here, applicant relies only on "its bare contention that the design it intends to use is unique in the field."

We find that Applicant’s bottle design gives its product an attractive appearance, and that consumers would not be predisposed to view this relatively commonplace decorative bottle design as source-indicating. *** Ultimately, we find Applicant’s bottle design a commonly-adopted and well-known form in the industry, and the slight differences from third-party bottles merely refine the common design in unremarkable ways or with other common bottle features.

The Board concluded that, under the second and third Seabrook factors, the packaging design at issue is not inherently distinctive. And so the Board affirmed the refusal to register.

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TTABlog comment: Is the winning of awards a good indicator of inherent distinctiveness?

Text Copyright John L. Welch 2018.

TTAB Test: Are Aerated Waters Related to Orange Juice for Section 2(d) Purposes?

The USPTO refused to register the mark LOVE AT FIRST SIP, in standard character form, for "mineral and aerated waters; none of the foregoing flavored with juices," finding the mark likely to cause confusion with the identical mark registered for "orange juice beverages." Applicant argued that the number of third-party registrations that cover mineral or aerated water and orange juice is "de minimus" [sic], How do you think this came out? In re S.C. Valvis Holding S.A., Serial No. 79195691 (April 17, 2018) [not precedential] (Opinion by Judge Lorelei Ritchie).

Applicant pointed to a third-party registration for the same mark for vodka, contending that LOVE AT FIRST SIP is weak. The Board, however, observed that "a single registration ... is not enough to narrow the scope of protection of the cited registration."

To demonstrate the relatedness of the goods, Examining Attorney Andrea B. Cornwell relied on a number of use-based third-party registrations that cover both aerated or mineral water and orange juice, but applicant argued that this evidence was de minimis since only 80 out of 2260 live registrations for aerated or mineral water also identify orange juice. The Board, however, found that applicant's listing of registrations had little probative value since it did not indicate whether the same entity owns separate registrations for these goods.

The examining attorney also submitted examples of recipes that include both orange juice and some form of sparkling or carbonated water (e.g., an orange spritzer). Applicant argued that there is no per se rule that all food products appearing in the same recipe are related for Section 2(d) purposes.

The Board has found two ingredients to be complementary when sold in the same stores to the same consumers for the same related or complementary end use. See In re Davia, 110 USPQ2d 1810, 1816 (TTAB 2014). The Board concluded that the beverages at issue here are related and complementary, often being used in recipes as natural ingredients. "[W]here, as here, they are offered under identical marks, consumers are likely to assume that they derive from a single source."

Balancing the relevant du Pont factors, the Board found confusion likely, and it affirmed the refusal.

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TTABlog comment:  Can you think of two beverages that are not combined in some drink recipe?

Text Copyright John L. Welch 2018.

TTAB Test: Is KRANKY KOOKYS for Cookies Confusable With KRANKY for Chocolate Covered Corn Flakes?

The USPTO refused registration of KRANKY KOOKYS for "individually baked cookies decorated with icing showing an image of a frowning face and sold individually" [COOKIES disclaimed], finding the mark likely to cause confusion with the registered mark KRANKY for "chocolate covered corn flakes." Applicant Dwayne Roscoe argued that the unusual spelling of KOOKYS and the alliteration in his mark, coupled with the care with which consumers purchase desserts, require reversal of the refusal. How do you think this came out? In re Dwayne A. Roscoe, Serial No. 87047156 (April 13, 2018) [not precedential] (Opinion by Judge Susan J. Hightower).

The Marks: The Board found KRANKY to be the dominant element of applicant's mark. KOOKYS is an alternative spelling for the disclaimed word "cookies." [It is? - ed.]. Applicant conceded that KOOKYS is descriptive of the goods but contended that it is a "highly colored term which draws attention of a particular group of consumers, and the intentional mis-spelling [sic] further draws attention to 'KOOKYS.'"

The Board agreed that consumers will give some weight to KOOKYS because of its alternative spelling and its alliteration with KRANKY. However, the Board found the overall impression of KRANKY KOOKYS to be very similar to the cited mark KRANKY. Therefore, the first du Pont points in favor of a finding of likely confusion.

The Goods: Examining Attorney Stefan M. Oehrlein submitted evidence demonstrating that cereal and packaged cookies may emanate from the same source under the same mark: e.g., ANNIE'S, Girl Scouts THIN MINTS, and KASHI. The Board concluded that the second du Pont favors a likelihood of confusion finding.

Consumer Sophistication: The Board found that cookies sold individually "are highly likely to be purchased on impulse." Applicant's specimen of use showed his goods displayed at a checkout counter, near candy and lottery tickets. Likewise, inexpensive sweetened cereal is likely to be purchase on impulse. There was no evidence that purchasers of these goods exercise particular care. [Personally, I always carefully check each cookie to make sure there are no raisins - ed.].

Applicant's Prior Registration: Applicant pointed to his prior registration for KRANKY KOOKYS for bakery goods, now cancelled due to an oversight. That registration, he argued, issued in 2009 and co-existed with the cited registration without confusion.

The Board was not moved, implying "that's the way the cookie crumbles." It pointed out that each case must be decided on its own facts and record. The Board made no mention was of the 13th du Pont factor, or of In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012). There, the Board reversed a Section 2(d) refusal of ANYWEAR for clothing in light of the applicant's prior registration of ANYWEARS for footwear, the now-expired registration having co-existed with the cited registration for ANYWEAR BY JOSIE NATORI & Design for more than five years. [TTABlogged here].

Conclusion: And so the Board affirmed the refusal.

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TTABlog comment:What is an "individually baked cookie?" Baked by an individual? Baked one at a time in a tiny oven?

Text Copyright John L. Welch 2018.

TTAB Test: Is "THE MASTER CLASS" Generic For Educational Services in the Field of Beauty?

The USPTO refused to register THE MASTER CLASS, finding it to be generic for “providing educational demonstrations in the field of make-up application; providing seminars, workshops, and training in the field of beauty." Applicant Mario Dedivanovic argued that THE MASTER CLASS is not generic for his services because there is no definition of "Master Class" that refers to makeup or beauty. "A generic term for the said services would likely be 'beauty classes', 'beauty training', 'beauty workshops', 'beauty seminars." How do you think this came out? In re Mario Dedivanovic, Serial No. 86777733 (April 13, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).

The Board found the genus of goods to be "educational services in the fields of makeup application and beauty." The relevant consumers are cosmeticians as well as ordinary consumers interested in learning about the proper application of cosmetics.

The Board first noted that the word “the” in the proposed mark does not affect the analysis because it does not have any trademark significance. The dictionary definition of “Master Class” is “a lesson for advanced students given by someone who is an expert.”

Examining Attorney Andrew Leaser submitted five third-party registrations that included disclaimers of MASTER CLASS for various educational services, 53 examples of third parties using the term “Master Class” to identify their educational services in the field of makeup, and 16 news articles referring to the term “Master Class” in connection with educational services relating to makeup application and beauty.

The evidence discussed above shows that the relevant public perceives “Master Class” as a generic term for educational services in the field of makeup application and beauty. That is, the designation “Master Class” “tell[s] you what the thing is.” In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 219 (CCPA 1978) (Rich, J., concurring)

The Board observed that, although the broad category of services in this appeal may be educational services, "there are clearly narrower categories within this broad category directed to a particular field" See, e.g., In re Central Sprinkler Co., 49 USPQ2d at 1197 (the relevant public will understand the term “Attic” as referring to sprinklers for fire protection of attics)).

The Board concluded that THE MASTER CLASS serves as a generic designator of Applicant’s educational services in the field of makeup application and beauty and it therefore found that the term is the name of a category of educational services.

For the sake of completeness, the Board also considered the USPTO's alternative refusal on the ground of mere descriptiveness, assuming arguendo that the phrase is not generic. In light of the record evidence, the Board first found that MASTER CLASS is highly descriptive.

Applicant Dedivanovic claimed five years of continuous and substantially exclusive use of THE MASTER CLASS, with revenues of $1,725,400 generated from 11 events conducted in 2013 through 2016. An additional class in 2017 generated another $944,000 in revenues. He has 150,000 followers on Twitter, 2 million followers on Instagram, and 43,000 on Facebook.

Because THE MASTER CLASS is highly descriptive, Applicant’s five-year use declaration was insufficient by itself to establish acquired distinctiveness. The third-party uses shows that Applicant was not the substantially exclusive user of the term.  And although Applicant’s services have enjoyed commercial success, "sales success is not necessarily indicative of acquired distinctiveness, but may be attributed to many other factors," the most likely being Applicant’s claims that he “has secured a place among the world’s best and most well known makeup artists” with an elite celebrity clientele, whose “work has graced the pages of countless magazines.”

The Board was not convinced that relevant purchasers associate THE MASTER CLASS, without the accompanying MD or MARIO DEDIVANOVIC "house marks," solely with Applicant.

The modest media coverage did not demonstrate that THE MASTER CLASS has acquired distinctiveness because the news articles use the terms “Master Class” or “Masterclass” generically, not as a trademark.

And so the Board found that Applicant failed to establish that that the designation THE MASTER CLASS has acquired distinctiveness for applicant's services.

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TTABlog comment: How did you do?

Text Copyright John L. Welch 2018.

Precedential No. 12: TTAB Rejects Functionality Claim But Finds Truck Light Configuration Lacks Acquired Distinctiveness

The TTAB sustained an opposition to registration of the product design shown below left, for "Electric lighting fixtures, namely, lights for vehicles," and granted a petition for cancellation of a registration for the product design shown below right, for "Lighting products for vehicles, namely, a combined stop-turn-tail lamp," finding that the two designs lacked acquired distinctiveness under Section 2(f). The Board first rejected plaintiff's claim of functionality under Section 2(e)(5), and it ultimately declined to reach plaintiff's fraud claim. Grote Industries v. Truck-Lite Co., LLC, Opposition No. 91196923 and Cancellation No. 92053498 (March 30, 2018) [precedential] (Opinion by Judge Susan J. Hightower).

Functionality: A product design or feature is de jure functional under Section 2(e)(5) “if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982)). In making a determination regarding functionality, the Board is guided by the analysis set forth in In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 USPQ 9, 15-16 (CCPA 1982).

Morton-Norwich identifies the following inquiries or categories of evidence as helpful in determining whether a particular design is functional: (1) the existence of a utility patent disclosing the utilitarian advantages of the design; (2) advertising materials in which the originator of the design touts the design’s utilitarian advantages; (3) the availability to competitors of functionally equivalent designs; and (4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product. Morton-Norwich, 213 USPQ at 15-16.

The Board first reviewed a utility patent owned by Defendant Truck-Lite, entitled "Combined Stop/Turn/Tail/Clearance Lamp Using Light Emitting Diode Technology." [pdf here]. The claims of that patent require "at least one light emitting diode,” but not necessarily the six diodes of the applied-for marks. Moreover, although other aspects of the lamp assembly are claimed, the specific pattern of the lights is not claimed.

The Board agreed with defendant Truck-Lite that its so-called "Penta-Star Pattern" is "only incidentally disclosed" in the ’172 patent. Moreover, Truck-Lite presented evidence that the Penta-Star Pattern was chosen for aesthetic reasons from among other six-diode designs. The Board noted that "although the design is the 'preferred embodiment" for the light, any number of diodes can be used, and further that the patent "does not disclose any utilitarian aspect of the specific placement of the optical elements."

Reviewing Truck-Lite’s advertising, the Board concluded that defendant does not promote utilitarian advantages arising from the Penta-Star Pattern.

As to alternative designs, Truck-Lite pointed to a number of allegedly "functionally-equivalent" lights on the market, but the Board found this factor to be neutral. Although the evidence indicated that competing lights meet applicable federal safety standards without employing the six-diode LED light pattern, it did not establish whether the different patterns offer varying advantages in terms of cost, voltage, longevity, etc.

Finally, the evidence suggested that use of the Penta-Star Pattern makes Truck-Lite’s product more expensive and complex to manufacture.

The Board found the design to be non-functional:

In sum, we find that (1) no patent specifically discloses the benefits of the Penta-Star Pattern; (2) the relevant advertising does not suggest a benefit arising from the pattern per se; (3) there appear to be alternative designs that satisfy federal regulations; and (4) there is no clear benefit as to either cost or ease of manufacture attributable to the pattern.

Plaintiff Grote also asserted that the Penta-Star Pattern is aesthetically functional. A proposed mark will be deemed aesthetically functional if there is a “competitive need” for the feature. See, e.g., Brunswick Corp. v. British Seagull Ltd., 32 USPQ2d 1120, 1122 (Fed. Cir. 1994) (the color black for outboard boat engines found to be functional because it served the non-trademark purpose of reducing the apparent size of outboard boat engines).

The Board was not impressed: "Grote’s argument that consumers want to be able to find matching replacement lights would apply to any design, even one whose light array design is solely arbitrary and whimsical and is known by customers to be a source identifier. Thus, this argument ultimately proves nothing." The Board found that Grote failed to prove a prima facie case of aesthetic functionality.

Acquired Distinctiveness: Of course, a product configuration cannot be inherently distinctive, but may be registered upon a showing of acquired distinctiveness under Section 2(f). Wal-Mart Stores Inc. v. Samara Bros. Inc., 529 U.S. 205, 54 USPQ2d 1065, 1069 (2000).

Truck-Lite submitted sales figures ($192 million through 2015), trade show attendance data (40-50 shows per year), and print and media statistics (reaching 400,000 customers per year). The Board pointed out, however, that a product's commercial success is not by itself indicative of customer recognition of a product configuration as an indicator of source because such success may merely indicate the popularity of the product itself.

The Board found that the record, viewed in its entirety, contained insufficient probative evidence that the primary significance of Truck-Lite’s design is to identify the source of its lights in the minds of consumers. "What is needed – and what is missing from this record – is probative evidence demonstrating that the design presently serves as an indicator of source in the minds of the consuming public."

The Board noted that "look-for" advertising may be crucial in product configuration cases, but Truck-Lite's advertising did not call attention to the six diode configuration, let alone tell consumers to "look for" that pattern to identify a Truck-Lite product.

Concluding that the evidence was insufficient to show that the configuration at issue indicates source or that consumers so recognize it, the Board sustained the opposition and granted the cancellation petition.

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TTABlog comment: Reminiscent of the Hershey candy-scoring case.

Text Copyright John L. Welch 2018.

TTAB Test: Is DATA ATOM Confusable with ATOMIC DATA for Computer Support Services?

The USPTO refused registration of the mark DATA ATOM for various computer services, finding the mark likely to cause confusion with the registered mark ATOMIC DATA, in standard character and design form, for overlapping computer services. Applicant argued that the marks differ in sound and appearance, and further that "atomic data" is a widely used generic or descriptive term entitled to little protection. How do you think this came out? In re Cloud Crowding Corp., Serial No. 86191213 (April 11, 2019) [not precedential] (Opinion by Judge Christopher Larkin).

The Board first considered whether ATOMIC DATA is a weak mark and therefore not entitled to a broad scope of protection, or whether the words have a particular meaning that imbues the mark with a different connotation and commercial impression than applicant's mark.

Applicant relied on a declaration from a corporate officer stated that "atomic data" is a widely recognized generic term that refers to "data elements that represent the lowest level of detail." The Board, however, gave no weight to those assertions since applicant did not establish that the declarant is qualified as an expert regarding the meaning or trademark significance of the term, or that he has personal knowledge about its use in the industry. The declarant did authenticate several webpages confirming his stated meaning of the term.

Significantly, the Board found no evidence of use of "atomic data" for the services identified in the application and cited registration.

While Applicant’s evidence suffices to show that the phrase "atomic data" has a particular meaning as the lowest or most elemental level of information, we cannot find, on this record, that the cited mark ATOMIC DATA is weak "and would be entitled to a very limited scope of protection."

Turning to the issue of the word order, the question was whether the two marks convey different commercial impressions. The Board observed that "[f]rom the standpoint of the average purchaser of the legally identical computer-related consulting and support services, DATA ATOM and ATOMIC DATA both connote data at the elemental level."

The Board concluded that the similarity in meaning "is more significant than, and outweighs, the modest dissimilarities in sound and appearance." It therefore affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2018.

Precedential No. 11: Despite Court Non-Infringement Ruling, TTAB Affirms 2(d) Refusal of MOAB for Automobiles and Parts

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 FKA 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. In re FCA US LLC, Serial No. 85650654 (April 10, 2018) [precedential] (Opinion by Judge Anthony R. Masiello).

Estoppel: At the district court, registrant failed to prove that Applicant’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."

The district court was aware of the pending trademark application and of the USPTO's refusal to register, but observed that "[T]he USPTO finding of potential confusion is entitled to very little weight inasmuch as the USPTO would not have had access to most of the evidence which is before the court.”

Applicant here argued that “The Board … should defer to the more fulsome record upon which the District Court relied to draw its conclusions, and the District Court’s careful consideration of likelihood-of-confusion factors …” 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 the lawsuit, applicant secured a finding that "specific alleged marketplace activities did not infringe Registrant’s rights in the mark MOAB INDUSTRIES." However, in the registration context, "likelihood of confusion is determined by the marks,  the goods and services, and the usages disclosed in the application and the cited registration. Evidence of actual marketplace usages that seeks to limit or alter the usages encompassed by the marks, goods and services, or usages listed in the application and registration are not considered in assessing likelihood-of-confusion in the registration context."

Applicant FKA seeks to register MOAB alone, whereas the courts considered use of the mark MOAB together with the terms JEEP and WRANGLER. The court did not consider automobiles in general, but rather only “expensive” “highway-legal, off-road enhanced performance vehicle[s]” that are “upfitted … to enhance their off-road capabilities” and are “intended for off-highway use under difficult to extreme circumstances.” And applicant also seeks registration for “structural parts, trim and badges” of passenger automobiles," goods that were not considered in the lawsuit.

FKA requested that the Board apply issue preclusion in the present appeal, but the court pointed out that the USPTO was not a party to the lawsuit. "The Federal Circuit has long held that a determination in district court litigation does not bind the USPTO in a later ex parte proceeding."

In sum, at least some of the issues raised in this appeal are different from those raised in the lawsuit and require different analyses that could result in different determinations. "As the Supreme Court said of the trademark registration process as compared to infringement litigation, 'it is a separate proceeding to decide separate rights.'"

Section 2(d): The Board found that customers may expect automotive structural parts to emanate from the same source as automotive conversion services. Furthermore, customers would expect that sellers of new automobiles would provide installation of specialty automotive equipment. And the evidence showed that OEM structural parts, like those of applicant, may be obtained through an independent installer like registrant. Therefore, this relationship between the goods and service favors a finding of likely confusion.

As to trade channels, there may be little overlap between applicant's finished automobiles and registrant's upfitted autos, but registrant's service "is, itself, a trade channel for automotive structural parts, and so this weighs in favor of a finding of likely confusion.

With regard to the conditions of sale, registrant's customers would be careful and sophisticated automotive enthusiasts but applicant's automobile customers would include ordinary drivers with no particular automotive sophistication. Those customers would exercise care in purchasing automobiles, with particular attention to the source of the goods, but as to parts or trim they would employ less care. Thus the facts relevant to this factor are mixed.

Turning to the marks, the Board not surprisingly found them similar in commercial impression. The term MOAB (a geographic location in Utah known for its off-road trails) may have some suggestiveness vis-a-vis applicant's vehicles and registrant's services, but the impact of this fact on the likelihood of confusion is "minor."

Expert testimony offered by applicant in the lawsuit, on the issue of actual confusion, was given little weight by the Board since the expert did not test the impact of the mark MOAB that applicant seeks to register, he limited the universe of respondents to individuals considering the purchase of off-road vehicles, and he employed an unfair survey test for confusion.

Balancing the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal to register under Section 2(d).

Read comments and post your comment here.

TTABlog comment: It would be good to see the Board draw the same lines between civil actions and inter partes Board proceedings.

Text Copyright John L. Welch 2018.

TTAB Test: Is "VOLKS PILS" For Beer Confusable With "VOLK" for Vodka?

The USPTO refused registration of the mark VOLKS PILS for "beer, lager" [PILS disclaimed], finding it likely to cause confusion with the registered mark VOLK for vodka. Applicant Marshall Brewing pointed to some 50 pairs of registrations for the same or similar marks for beer and vodka, owned by different entities, as proof that the goods are not related. How do you think this came out? In re Marshall Brewing Company, LLC, Serial No. 87019347 (April 9, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).

The Marks: The Board wasted little time in finding the marks confusingly similar, concluding that the addition of the letter "S" and the descriptive term "Pils" to the cited mark failed to distinguish the marks at issue.

The Goods: Examining Attorney Leslie Ann Thomas-Riggs submitted 12 use-based registrations covering both beer and vodka, as well as Internet evidence showing that beer, lager, and vodka may originate from a common source. News articles discussed the expansion by brewers into the distilling of spirits, including vodka.

Applicant Marshall pointed out that "beer" appears in the identification of goods in 14,009 live, use-based trademark registrations in class 32, and vodka in 1,980 use-based registrations in class 33. However, only 35 registrations cover both beer and vodka. The Board found this evidence of little probative value since it did not indicate whether the same entity has separate registrations for vodka and beer.

Applicant also submitted 109 pairs of third-party registrations for the same or similar marks owned by different entities, for beer and vodka. However, the Board found that half the registration pairs were for marks that were not similar. As to the other half, those registrations did not rebut the Examining Attorney's evidence because "[t]here is no requirement for goods to be found related that all or even a majority of the sources of one product must also be sources of the other product." Here, the evidence clearly demonstrates that there are entities that are the source of both vodka and beer.

The Board therefore concluded that the goods are related for Section 2(d) purposes.

Conditions of Sale: Because there are no limitations in the application and cited registration, the Board must presume that the goods travel in all normal channels of trade and are offered to all the usual classes of consumers for those goods. Potential customers are ordinary consumers who purchase and drink alcoholic beverages and include consumers who may buy inexpensive beer, lager, or vodka on impulse.

Conclusion: Balancing the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Are all alcoholic beverages related under Section 2(d)? There is no per se rule saying so!

Text Copyright John L. Welch 2018.