Friday, October 11, 2019

TTABlog Test: How Did These Three Recent Section 2(d) Appeals Come Out?

A TTAB judge once told me that in 95% of Section 2(d) cases, one can predict the outcome just from looking at the marks and the involved goods/services. Here are three recent decision in Section 2(d) appeals. How do you think these came out? [Answer in first comment].

In re Brite and Clean, Inc., Serial No. 87384194 (October 7, 2019) [not precedential] (Opinion by Judge Thomas W. Wellington). [Section 2(d) refusal of BRITE & CLEAN & Design for "Cleaning preparation; water stain removal cleaning preparations; shower cleaning preparation; window cleaning preparation; bathroom cleaning preparation; glass cleaning preparation; cleaning preparation in powder form; cleaning wipes impregnated with a cleaning preparation; none of the foregoing for use with eyeglasses" in view of the registered mark CLEAN AND BRIGHT for "all-purpose cleaners"].

In re Sergei Orel, Serial No. 87545405 (October 4 2019) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Section 2(d) refusal of ARATTA or "Alcoholic beverages, except beer; Sparkling wines; Vodka; Wine" in view of the registered mark AURATA for "grape wine; still wine; table wines; white wine; wine; wines"].

In re Ballast Capital Advisors LLC, Serial No. 87509097 (October 2, 2019) [not precedential] (Opinion by Judge Marc A. Bergsman). [Section 2(d) refusal of the mark BALLAST CAPITAL ADVISORS & Design for "financial planning and investment advisory services" [CAPITAL ADVISORS disclaimed] in view of the registered marks BALLAST POINT VENTURES, in standard character and design form, for "financial services, namely, venture capital, financial and investments consulting, financial and investments advice and financial and investments banking" [VENTURES disclaimed] and the mark BALLAST for "real estate investment services"].

Read comments and post your comment here.

TTABlog comment: How did you do? See any WYHAs? BTW, why would one include both "wine" and "wines" in the identification of goods?

Text Copyright John L. Welch 2019.

Wednesday, October 09, 2019

TTAB Finds THE VITAMIN SHOPPE Generic for . . . . Guess What?

Despite applicant's 40 years of use of the phrase "THE VITAMIN SHOPPE," the Board affirmed four refusals to register the mark THE VITAMIN SHOPPE & V Design (in four variations) for vitamins and related retail store services, due to applicant's failure to comply with a requirement for disclaimer of that phrase. In re Vitamin Shoppe Procurement Services, Inc., Serial Nos. 86905555, 86905614, 86905620, 86905628 (October 4, 2019) [not precedential] (Opinion by Deputy Chief Judge Mark A. Thurmon).

Determining genericness requires a two-step inquiry: what is the genus of the goods or services at issue, and does the relevant public understand the term at issue to refer to that genus? The Board found the genus of services to be a "health and wellness store that primarily sells dietary and nutritional supplements." The genus for the goods "includes the types of products Applicant sells in its health and wellness stores." The marks, when used on goods, are house marks that identify the store in which the goods are sold. "[I]t follows that if the phrase THE VITAMIN SHOPPE is generic for the type of store operated by Applicant, the phrase is also generic when used on the goods at issue here."

Examining Attorney Mark S. Tratos submitted nearly 100 examples of generic use of "vitamin shop" from news reports, business reports, and books. "This evidence clearly and convincingly shows that a vitamin shop is a type of store."

Applicant argued that the word "shoppe" is different enough from "shop" to cause different understandings of the two phrases. But dictionary evidence equated the two words and there was no evidence that consumers understand the word 'shoppe' as used by Applicant to mean anything other than a shop or store." Two examples showed use of "The Vitamin Shoppe" to refer specifically to Applicant, but two is "not enough to indicate that the primary meaning of 'The Vitamin Shoppe' is as a trademark."

Applicant pointed to its ownership of six registrations for marks that include the phrase "The Vitamin Shoppe," including two registrations for the phrase by itself. Irrelevant, said the Board. Each application must be examined on its own record. See, e.g., In re Cordua Restaurants [CHURRASCOS in stylized form found to be generic for restaurant services despite registration of the word in standard character form].

Applicant contended that its Thermos-style survey evidence proved that "The Vitamin Shoppe" is a trademark, but the Board pointed out that this is not a situation where a coined term or phrase is alleged to be generic. Instead the question here is the opposite: whether a generic phrase has become a distinctive mark. The Board has held that consumer surveys are irrelevant in this context. See, e.g., In re Hitari. Consequently, the Board was "inclined to give little, if any, weight to the survey offered by Applicant."

The evidence of consumer use in the record shows that the phrase “the vitamin shop” is generic. Applicant points out that none of this evidence shows use of the phrase “The Vitamin Shoppe” in a generic fashion. Dictionary evidence covers that gap by showing that “shoppe” is a different spelling of “shop” and that any different meaning of the “shoppe” variant is not relevant here. In short, the other evidence of record shows clearly and convincingly that “The Vitamin Shoppe” is generic for the goods and services identified in the applications at issue here.

For the sake of completeness, the Board evaluated the survey evidence, despite the precedent that a survey is not relevant here.

In a Thermos-type survey, participants are asked what they would call a particular type of product or service. The Thermos survey may provide inconclusive results if a product or service has more than one generic name. "A Thermos-type survey can be useful in identifying potentially generic terms, and it may even show what generic terms are more frequently used by consumers. Beyond that, a Thermos survey may prove nothing."

Applicant's survey deviated from the Thermos model, and the Board found the methodology flawed and the results inconsistent and "perplexing." Data concerning the actual responses was not provided. The Board therefore found that the survey evidence "falls far short of raising doubts as to the genericness of the phrase 'The Vitamin Shoppe.'"

Finally, as to applicant's use of "The Vitamin Shoppe" for more than 40 years, the Board pointed out that "even long and successful use of a term does not automatically convert a generic term into a non-generic term." It concluded that the disclaimer requirements were appropriate because "Applicant does not have exclusive rights to the phrase 'The Vitamin Shoppe.'"

To allow registration without a disclaimer would place Applicant’s competitors at risk if they identify their stores a “vitamin shop,” or “the vitamin shop.” That result is unacceptable given the evidence of record.

The Board observed that this is "the risk one takes when it uses a generic term to identify its goods or services."

The Board therefore affirmed the disclaimer requirement.

Read comments and post your comment here.

TTABlog comment: Do you see an appeal in your crystal ball? Would you consider a civil action for review of the Board's decision, bolstered by a better survey?

Text Copyright John L. Welch 2019.

TTABlog Test: Is "RAINFOREST NUTRITION" Confusable With "RAINFOREST ANIMALZ" for Nutritional Supplements?

The USPTO refused to register the mark RAINFOREST NUTRITION for dietary and nutritional supplements [NUTRITION disclaimed], finding a likelihood of confusion with the registered mark RAINFOREST ANIMALZ for "nutritional supplements." The goods overlap and presumably travel in the same trade channels to the same classes of consumers. But what about the marks? Applicant argued that RAINFOREST is a weak formative in light of numerous third-party uses and registrations. How do you think this came out? In re Simpson Industries, Inc., Serial No. 87635385 (October 7, 2019) [not precedential] (Opinion by Judge Michael B. Adlin).

The overlap in goods, trade channels, and classes of consumers weighed "heavily" in favor of a finding of likely confusion. Moreover, when the goods are in-part identical, a lesser degree of similarity between the marks is needed to support a likelihood of confusion finding.

As to the marks the Board observed that the dominant portion of applicant's mark, RAINFOREST, is identical to the first term of the cited mark, and so the marks look and sound more similar than dissimilar. However, the marks convey different meanings: applicant's mark suggests nutritional benefits derived from rainforests, whereas the registered mark suggests that its RAINFOREST-related supplements are animal-shaped.

The Board then turned to a consideration of the commercial and conceptual strength of the cited mark and of the term RAINFOREST. Applicant's evidence showed that third parties "widely use the marks' shared term RAINFOREST for nutritional supplements, including in food and beverage form, either as a trademark, or to describe the goods." Moreover, a number of retail stores offer supplements under "Rainforest" trade names.

Applicant also submitted use-based third-party registrations for RAINFOREST/RAIN FOREST marks for supplements or related food or beverage products. These registrations tend 'to show the sense in which [the term RAINFOREST] is used in ordinary parlance.'"

The Board agreed with applicant that the widespread use of RAINFOREST for supplements and certain other ingestible products should not be surprising because "plants, chemicals and other materials derived from rainforests have medicinal or other health benefits."

The Board found from this evidence that the term RAINFOREST is commercially weak in this field. Some of the evidence also showed use of the term in a descriptive manner, which establishes conceptual in addition to commercial weakness. The registration evidence corroborates the use evidence in showing that RAINFOREST is conceptually weak.

The Board balanced the similarities against the differences and ultimately found that the marks are not likely to be confused.

[C]onsumers are used to seeing the term RAINFOREST in connection with dietary and nutritional supplements, whether it is used as a trademark or descriptively/suggestively, and Applicant’s mark will thus be perceived as just one more of the many uses of RAINFOREST/RAIN FOREST for dietary or nutritional supplements or related goods. Given the established weakness of the shared term RAINFOREST, “the closer [Applicant’s] mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection.” Juice Generation, 115 USPQ2d at 1674.

The Board therefore reversed the refusal to register.

Read comments and post your comment here.

TTABlog comment: I count 13 third-party uses and five registrations. In Juice Generation there were 26 third-party uses or registrations of marks containing the phrase PEACE AND LOVE, and in Jack Wolfskin, there were 16 paw print designs. So the count in this case is at the lower end of the spectrum.

Text Copyright John L. Welch 2019.

Tuesday, October 08, 2019

TTABlog Test: Is INTEGRATED PERFORMANCE CARE SYSTEMS Confusable With This Word+Design Mark for Chiropractic Services?

The USPTO refused to register the mark INTEGRATED PERFORMANCE CARE SYSTEMS for, inter alia, chiropractic services [CARE SYSTEMS disclaimed], finding a likelihood of confusion with the registered word+design mark shown below, for chiropractic services. Applicant Donald Dudley appealed. Did Dudley do right? In re Donald Dudley, Serial No. 87655327 (October 4, 2019) [not precedential] (Opinion by Judge Cynthia C. Lynch).

Because the services are in part identical, the Board must presume that they travel in the same channels of trade to the same classes of purchasers. These factors weighed "heavily" in favor of a finding of likelihood of confusion.

As to the cited mark, the Board found the top portion to be "dominant for a number of reasons." It is the first part of the mark and is more likely to be impressed upon the minds of consumers and remembered. "The pictorial element occupies a prominent central place in the mark, and consists of a male silhouette reminiscent of Leonardo da Vinci's Vitruvian Man." That element looks like the letter "I" and thus the top portion could be viewed as "VIP," standing for VICTORY INTEGRATED PERFORMANCE. "So, VIP in this mark has a laudatory connotation about special treatment from the services, as well as the initialism connotation."

Although the literal portion of a mark is normally accorded greater weight, here "the bold lettering VIP, incorporated with the prominent design features, forms the part of the mark most likely to be remembered by consumers and used to call for the services." "In fact, some consumers could perceive the less prominent INTEGRATED PERFORMANCE, or VICTORY INTEGRATED PERFORMANCE, as a marketing slogan or tagline, rather than the primary identifier of source.

The Board also found the wording INTEGRATED PERFORMANCE that appears in both marks to be suggestive of the services: it suggests "the balance and unified functioning that patients may achieve through the services."

The Board concluded that, considering the marks in their entireties, "the differences between the marks is dispositive of no likelihood of confusion, even though the services, channels of trade, and classes of consumers overlap."

And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2019.

Monday, October 07, 2019

Precedential No. 30: TTAB Denies Abandonment Counterclaim for Failure to Prove No Intent to Resume Use

Denying Respondent Tru Development's abandonment counterclaim, the Board granted Petitioner Double Coin's petition for cancellation of a registration for the mark ROAD WARRIOR for tires, finding a likelihood of confusion with the registered mark WARRIOR, in the stylized form shown below, for automobile tires. Tru was unable to prove nonuse of the WARRIOR mark for three consecutive years, and failed to carry its burden of proof to establish that Double Count intended not to resume use of the mark during the period of nonuse. Double Coin Holdings, Ltd. v. Tru Development, Cancellation No. 92063808 (October 1, 2019) [precedential] (Opinion by Judge Jonathan Hudis).

Likelihood of Confusion: In a cancellation proceeding in which both parties own registrations, priority is an issue. Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1474 (TTAB 2014). Double Coin established priority from a date "well prior" to Tru's constructive first use date of November 13, 2014, the filing date of its underlying application.

The Board found the goods of the parties to be in part legally identical, and presumed that those goods travel in the same channels of trade to the same classes of purchasers. Cai v. Diamond Hong, Inc., 127 USPQ2d 1797, 1801 (Fed. Cir. 2018); In re Viterra, Inc., 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).

As to the marks, the Board deemed the word "road" to be weak highly suggestive of, and a weak source identifier for, tires. Observing that adding a generic, descriptive, or highly suggestive term to the entire mark of another is generally not sufficient to avoid confusion, the Board found that ROAD WARRIOR "looks, sounds, and conveys the impression of being a line extension of WARRIOR," and that the marks at issue are "similar in their entireties in appearance, sound, connotation and overall commercial impression."

There was no evidence that consumers exercise a higher than ordinary degree of purchasing case in buying tires, and so this du Pont factor was neutral. Tru pointed to the lack of evidence of actual confusion, but the Board found that there had not been a reasonable opportunity for confusion to occur, since Double Coin had "temporarily withdrawn" its tires from the United States market. In any case, "it is unnecessary to show actual confusion in establishing likelihood of confusion." Giant Food, Inc. v. Nation’s Foodservice, Inc., 218 USPQ 390, 396 (Fed. Cir. 1983).

Balancing the relevant du Pont factors, the Board found a likelihood of confusion.

Laches: Tru's affirmative defense of laches fell flat. There was no evidence that Double Coin had actual knowledge of Tru's use of the ROAD WARRIOR mark, and so the date of issuance of the challenged registration (September 1, 2015) was the applicable date for the beginning of the laches period. Double Coin's cancellation petition was filed a mere 8 months later, and no case law supports a finding that this amount of time is unreasonable. The Board therefore found that this is "an insufficient period to be considered undue or unreasonable for laches to apply." Moreover, Tru failed to show that it suffered economic prejudice resulting from Double Coin's delay in petitioning for cancellation.

Abandonment: Section 45 of the Lanham Act states that abandonment of a mark occurs when its use "has been discontinued with an intent not to resume such use." Furthermore, "'Use' of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark." The concept of "nonuse" should be "interpreted with flexibility to encompass a variety of commercial uses." See Lewis Silkin LLP v. Firebrand LLC, 129 USPQ2d 1015 (TTAB 2018). Section 45 further states that "Nonuse for 3 consecutive years shall be prima facie evidence of abandonment."

In August 2015, Double Coin announced that it intended to halt shipments of tires to the United States due to high tariffs that had been imposed on Chinese goods. The article also stated that Double Coin's parent was seeking production facilities outside of China, including possibly the United States, in order to bring its tires sales back to the United States. Double Coin's expert witness testified, without rebuttal, that the approach taken by Double Coin to avoid the high tariffs was undertaken in other industries, such as the furniture industry.

The question for the Board was "whether Double Coin's decision to discontinue sales in the United States in response to the imposition of tariffs, in-and-of-itself, was 'excusable,' that is, a reasonable business judgment under the circumstances."

To prove excusable nonuse, the registrant must produce evidence showing that, under his particular circumstances, his activities are those that a reasonable businessman, who had a bona fide intent to use the mark in United States commerce, would have undertaken. Rivard v. Linville, 133 F.3d 1446, 45 USPQ2d 1374, 1376 (Fed. Cir. 1998).

The evidence of record failed to show that Double Coin had discontinued use of its mark for "three consecutive years," and so there was no prima facie abandonment under Section 45 of the Lanham Act. Therefore the burden of proving abandonment remained with Tru.

Double Coin had discontinued use of its mark for two-and-one-half years, but did it intend not to resume use? In addition to its statements in the article discussed above, Double Coin (1) was active in opening a new facility in Thailand to avoid the tariffs on some tires, (2) was active in seeking lower tariffs on other tires, (3) renewed it importation of certain tires in January 2018, (4) prepared new price lists simultaneously with the resumed importation of certain tires from China, and (5) maintained its website during the period of non-use.

Finding this case similar to Crash Dummy Movie, LLC v. Mattel, Inc., 94 USPQ2d 1315 (Fed. Cir. 2010), the Board found Double Coin's efforts to be sufficient to show that its cessation of use of the WARRIOR mark was "unaccompanied by any intent not to resume use."

When it announced discontinuation of sales in the United States due to the imposition of high tariffs, Double Coin also publicly stated that it intended to find an alternative source of manufacture, including possibly in the United States. *** Double Coin subsequently followed through on its intention to build a new factory to source the goods outside China by building a factory in Thailand, which Double Coin’s expert Ms. Coates explained “included finding a suitable location, obtaining operating permits, building the actual factory, acquiring and installing manufacturing equipment, hiring and training workers, beginning production, and achieving quality standards for export to the U.S.” *** These are not the statements and acts of an entity that intended to leave the U.S. market permanently, never to return.

The Board therefore found that Tru failed to prove abandonment by a preponderance of the evidence.

Conclusion: The Board denied the counterclaim for abandonment and granted the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: Good discussion of the abandonment issue but in the end not a difficult conclusion.

Text Copyright John L. Welch 2019.

Friday, October 04, 2019

Precedential No. 29: TTAB Dismisses Opposition to Section 1(b) Application, Ownership Is Not an Issue

PAVE: Promoting Awareness, Victim Empowerment filed a Section 1(b) application to register the mark SafeBAE for “Providing emotional counseling and emotional support services for victims of sexual violence." Shael Norris opposed, claiming that she is the owner of the mark and therefore that the opposed application was void ab initio. The Board, however, ruled that a Section 1(b) applicant need not be the "owner" of the mark, but need only have a bona fide intention to use the mark. And so the Board dismissed the opposition. Shael Norris v. PAVE: Promoting Awareness, Victim Empowerment, 2019 USPQ2d 370880 (TTAB 2019) [precedential] (Opinion by Judge Thomas W. Wellington).

The parties agreed that the sole issue before the Board was "which party owns the mark." However, "a claim that an applicant is not the rightful 'owner' of the applied-for mark is not available when the application is not based on use of the mark in commerce."

Section 1(a) of the Act provides that "[t]he owner of a trademark used in commerce may request registration of its trademark." [Emphasis supplied]. In the standard declaration for a use-based application, the applicant avers: "The signatory believes that the applicant is the owner of the trademark/service mark sought to be registered. The mark is in use in commerce on or in connection with the goods/services in the application." Thus, under Section 1(a), if the applicant is not the "owner" of the mark, the application is void ab initio.

On the other hand, under Section 1(b) of the Act, an applicant "who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark." There is no statutory requirement that the filer of an intent-to-use application be the owner of the mark at the time of filing. The standard declaration for an intent-to-use application states that: "The signatory believes that the applicant is entitled to use the mark in commerce. The applicant has a bona fide intention to use the mark in commerce on or in connection with the goods/services in the application." [Emphasis supplied].

Therefore the Board found no statutory basis for opposer's claim of non-ownership, and so it dismissed the opposition.

The Board observed that a Section 1(b) application may be challenged based on the lack of a bona fide intent to use the mark in commerce. "By analogy to non-ownership claims, where the application is based on intent to use under Section 1(b) of the Trademark Act, and two parties are claiming superior rights based on shared circumstances, the question is which entity or individual had the bona fide intent." Here, however, opposer neither alleged or argued this issue, and although there was some evidence suggesting that applicant did have a bona fide intent to use the mark, the Board declined to consider the issue because it "cannot be confident that the parties have provided ... a full record upon which to make the required findings."

Read comments and post your comment here.

TTABlog comment: So now what? Does the opposer seek judicial review by way of civil action, where it can bring up the lack-of-bona-fide intent issue?

PS: I note that when one is filling out a TEAS application, the first box to be filled out is "Owner of Mark." Perhaps that should say "Applicant"?

BTW: that annoying term "applied-for-mark" appears again. A registration is being applied-for, not a mark. How about saying the "opposed mark" in this case.

Text Copyright John L. Welch 2019.

Thursday, October 03, 2019

TTABlog Test: How Did These Three Recent Section 2(d) Appeals Come Out?

September 30th was the last day of the USPTO fiscal year. Here are three of the five TTAB decisions issued on that day in Section 2(d) appeals. I'm not giving any hints, so you're on your own. How do you think these appeals came out? [Answer in first comment].

In re Arizona Elk Society, Serial No. 87782453 (September 30, 2019) [not precedential] (Opinion by Judge Elizabeth A. Dunn). [Section 2(d) refusal of HEALING THROUGH HUNTING for "conducting guided outdoor expeditions" in view of the registered mark HEALING ON THE HUNT for "organizing hunting, fishing, and outdoor trips for wounded combat veterans to help heal"].

In re Intrepid Studios Inc., Serial Nos. 87561113 and 87561116 (September 30, 2019) [not precedential] (Opinion by Judge Thomas Shaw). [Section 2(d) refusal of INTREPID STUDIOS, in standard character and design form, for "Computer game software; Downloadable electronic game software for use on computers; Downloadable software for video games and massively multiplayer online role-playing games (MMORPGs); [and] Video game software" [STUDIOS disclaimed] in view of the registered mark INTREPID PICTURES, in standard character and design form, for "Production and distribution of motion pictures" [PICTURES disclaimed]].

In re Kyle Meade, Serial No. 88141931 (September 30, 2019) [not precedential] (Opinion by Judge Thomas Shaw). [Section 2(d) refusal of the mark ACCIAL CAPITAL [CAPITAL disclaimed] in view of the registered mark AXIAL in standard character and design form, all for financial advisory services].

Read comments and post your comment here.

TTABlog comment: How did you do? See any WYHAs?

Text Copyright John L. Welch 2019.

Wednesday, October 02, 2019

Precedential No. 28: TTAB Affirms Genericness Refusal of Packaging Design for Socks

The TTAB affirmed a refusal to register the packaging design shown below, for "socks," finding the design to be generic for the goods because consumers would primarily regard the design as a common type of packaging rather than as a source indicator. The Board also considered and rejected Applicant Odd Sox's alternative claim of inherent distinctiveness. (Odd Sox did not contend that the design had acquired distinctiveness.) In re Odd Sox LLC, 2019 USPQ2d 370879 (TTAB 2019) [precedential] (Opinion by Judge Karen Kuhlke).

The subject application described the alleged mark as a "three-dimensional configuration of product packaging for displaying a single pair of socks hanging side by side." The socks, two fasteners, and the hook are shown in dashed lines and are not part of the mark.

Genericness: The CAFC in Sunrise Jewelry Mfg. Corp. v. Fred S.A., 50 USPQ2d 1532, 1535 (Fed. Cir. 1999), held that the term "generic name" in Section 14(3) of the Lanham Act must be read broadly "to encompass anything that has the potential but fails to serve as an indicator of source, such as names, words, symbols, devices, or trade dress." TTAB precedent teaches that a product design may be "so common in the industry that it cannot be said to identify a particular source." Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1554 (TTAB 2009). The Board here ruled that this standard applies to product packaging.

The Board deemed it appropriate to apply a two-step approach to the determination of genericness similar to the approach applied for word marks: first, determine the genus of goods at issue; second, determine whether the relevant consumers regard the matter sought to be registered as a category or type of trade dress for the goods. See H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 228 USPQ 528, 530 (Fed. Cir. 1986); Sunrise Jewelry at 1536.

There was no dispute that the genus at issue is defined by the identification of goods: "socks." The relevant consumers are "those who purchase or wear socks." [or both? ed.].

As to the primary significance of the subject design, the Board observed that competitor use is evidence of genericness. Closely reviewing the evidence submitted by Examining Attorney Tara L. Bhupathi, the Board found it clear that:

rectangular packaging enabling the hanging of socks from front-to-back and side-by-side is so common in the industry that such packaging is not capable of indicating source, and rectangular packaging enabling the hanging of a single pair of socks side-by-side is at most a minor variation of the common form of packaging.

Moreover, the fact that the "possibilities for the trade dress are limited" provides an additional basis for finding that consumers will not likely view the subject packaging as indicating source. The evidence showed that the placement of socks side-by-side and front-to-back may be useful to sellers and appealing to consumers. For example, the socks may be placed together to form a single image.

The Board therefore found that consumers of socks would primarily regard applicant's design as a common type of packaging rather than as a source indicator, and therefore the design is generic.

Inherent Distinctiveness: For the sake of completeness, the Board considered applicant's claim of inherent distinctiveness. Although product design can never be inherently distinctive (Wal-Mart), product packaging can be. The subject trade dress was categorized and described as packaging.

The Board applied the CAFC's four-part Seabrook test to determine whether the design is inherently distinctive:

1) whether it is a “common” basic shape or design;
2) whether it is unique or unusual in the particular field;
3) whether it is a mere refinement of 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
4) whether it is capable of creating a commercial impression distinct from the accompanying words.

The evidence convinced the Board that applicant's alleged mark is a common basic shape or design for sock packaging and therefore the design is not inherently distinctive.

[T]he record includes multiple examples of rectangular packaging of varying lengths with toes flattened facing forward and heels flattened facing backward. The evidence establishes that an elongated rectangle from which to hang a pair or pairs of socks is a common shape in the socks industry, and Applicant’s particular packaging is not unique or unusual in the field of socks.

The Board observed that even if applicant were the only user of this packaging design, it still would not be inherently distinctive because "[t]his is not a circumstance where the packaging's 'intrinsic nature serves to identify a particular source of the product.'" Two Pesos v. Cabana 23 USPQ2d at 1083.

The evidence shows that packaging displaying pairs of socks side-by-side is a common basic shape or design and is not unique or unusual in this field, and the attribute of displaying only a single pair of socks would not be “perceived or marked off” as distinct from the other similar packaging. E S Robbins, 30 USPQ2d at 1542.

Conclusion: The Board affirmed both refusals.

Read comments and post your comment here.

TTABlog comment: Isn't this genericness refusal the equivalent of a failure-to-function refusal when a phrase is so commonly used that it is incapable of being a source identifier? Yet such phrases are not deemed "generic."

Text Copyright John L. Welch 2019.

Tuesday, October 01, 2019

TTAB Dismisses "OCALA HORSE PROPERTIES" Cancellation Petition Due to Lack of Standing

Standing is a hurdle that TTAB plaintiffs almost always clear. Not this time. The Board dismissed this petition for cancellation of a registration for the mark OCALA HORSE PROPERTIES for “Real estate agencies; Real estate brokerage" because the named petitioner failed to establish "that it is a juristic association under the laws of Florida that could assert the claims alleged or the relief requested in this cancellation proceeding without the participation of individual members in the lawsuit." Citizens for the Fair Use of "Ocala Horse Properties" v. Ocala Horse Properties, LLC, Cancellation No. 92061767 (September 26, 2019) [not precedential] (Opinion by Judge Jyll Taylor).

Standing is a threshold requirement that the plaintiff must prove in every inter partes proceeding. Section 14 of the Lanham Act states that "[a]ny person who believes that he is or will be damaged … by the registration of a mark” may file a petition to cancel the registration. The term "person" includes "a juristic person,"which includes an association. See Lanham Act Section 45. According to the TMEP, an "association" is a recognized juristic entity when it is organized under state laws or federal statutes that govern this form of organization. TMEP Section Section 803.03(c) (2019).

Petitioner identified itself as a Florida association comprised of seven real estate businesses who claimed the rights to use "Ocala horse properties" in their businesses.

An association has standing if it proves that: (1) its members would otherwise have standing to sue in their own right; (2) the interest it seeks to protect are germane to the organizations’ s purpose; and (3) neither the claim asserted nor the relief requested requires the participation of individual members in the lawsuit. See Jewelers Vigilance Comm., Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2025 (Fed. Cir. 1987).

Petitioner satisfied prongs (1) and (2) of the test. [Can you satisfy a prong? ed.] The individual "members" of petitioner testified that, as real estate agents in Ocala, Florida, they would be harmed if they were not allowed to use the term "OCALA HORSE PROPERTIES" in connection with their businesses.

However, Petitioner failed to satisfy the third prong: it failed to show that it is an association under the law of Florida. In fact, the testimony of its purported members belied such a showing. There was no written agreement between the participants in the group, nor had the group conducted any business. There were no meetings of the group and no communications among the "members."

Under the circumstances, we find that the organization known as Citizens for the Fair Use of “Ocala Horse Properties” has not demonstrated that it is a juristic association under the laws of Florida that could assert the claims alleged or the relief requested in this cancellation proceeding without the participation of individual members in the lawsuit. Indeed, instead of referring to the single entity of an association, the parties in the record refer to plaintiff in the plural, as Petitioners. Accordingly, Petitioner, Citizens for the Fair Use of “Ocala Horse Properties,” “an asserted Florida association,” has not proven standing to bring the petition.

And so the Board dismissed the proceeding for lack of standing.

Read comments and post your comment here.

TTABlog comment: Curiously, there was no discussion of what Florida law is or how one satisfies Florida law.

Text Copyright John L. Welch 2019.

Monday, September 30, 2019

TTAB Posts October 2019 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled seven (7) oral hearings for the month of October 2019. Four of the hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. The first hearing listed below will be held at Northwestern Pritzker School of Law in Chicago. The hearings for the last two listed cases will be held at Gaylord National Resort & Convention Center in National Harbor, Maryland. Briefs and other papers for these cases may be found at TTABVUE via the links provided.

October 3, 2019 - 1:45 PM: Entertainment Content, Inc. v. Career Sports & Entertainment, Inc., Opposition No. 91223121 [Section 2(d) opposition to registration of the mark JUSTICE NETWORK for television programming services and video production and distribution, in view of the registered marks JUSTICE CENTRAL and JUSTICECENTRAL.TV for video and audio programming and transmission service].

October 8, 2019 - 10 AM: In re SF Investments, Inc., Serial No. 87661190 [Section 2(e)(2) refusal to register SMITHFIELD for meat, lard, and offal on the ground that the mark is primarily geographically descriptive of the goods].

October 9, 2019 - 1 PM: Spiritline Cruises LLC v. Tour Management Services, Inc., Opposition No. 91224000 [Opposition to registration of CHARLESTON HARBOR TOURS for "Arranging of travel tours and cruises; Boat transport; Conducting boat charters; Conducting power boat charters; Conducting sightseeing travel tours by boat; Conducting sightseeing travel tours for others; Travel tour conducting; Travel tour guide services; Yacht and boat charter services" on the grounds of genericness, mere descriptiveness and lack of acquired distinctiveness, and non-ownership].

October 15, 2019 - 11 AM: In re Hidive LLC, Serial No. 87819793 [Section 2(d) refusal of DUBCAST for "Transmission and delivery of television programs via the internet; Transmission of information in the audiovisual field; Electronic transmission and streaming of digital media content for others via global and local computer networks; Video broadcasting and transmission services via the Internet, featuring films and movies; Video-on-demand transmission services; Video-on-demand transmission services via the Internet," in view of the registered mark DUBLAB (in standard character form) for "broadcasting programs via a global computer network"].

October 17, 2019 - 1 PM: In re Flex Ltd., Serial No. 87648828 [Refusal to register INTELLIGENCE OF THINGS for "Supply chain management services; business management services, namely, managing logistics, reverse logistics, supply chain services, supply chain synchronization, supply and demand forecasting, and product distribution processes for others," on the ground that it fails to function as a service mark, but rather comprises a commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment].

October 24, 2019 - 10:15 AM: In re Omniome, Inc., Serial No. 87661190 [Section 2(e)(1) mere descriptiveness refusal of SEQUENCING BY BINDING for "reagents for analysis of biological analytes; research laboratory analyzers for analysis of biological analytes for non-medical purposes devices for analysis of biological analytes for medical purposes; analysis of biological analytes; development of new technology for others for analysis of biological analyte"].

October 24, 2019 - 11 AM: In re La Mamba, LLC., Serial No. 87791970 [Section 2(d) refusal of PARC & LEX in the design form shown below, for “Clothing, namely, t-shirts, sweatshirts, skirts, pants, jeans, coats, dresses, underwear, tops and bottoms; headwear; footwear,” in view of the registered mark PARK & LEX for "Jewelry, namely, necklaces, bracelets and earrings"].

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TTABlog note: Any predictions? See any WYHA?s?

Text Copyright John L. Welch 2019.

Friday, September 27, 2019

TTAB Says Series of PREDICTIVE ENTREPRENEUR Educational Lectures Is Not a Single Work

Returning once again to failure-to-function land, the TTAB reversed a refusal to register the mark PREDICTIVE ENTREPRENEUR for educational services including seminars in the field of business and entrepreneurship. The Board rejected the USPTO's position that the course offered by Applicant Meredith Madsen would be perceived as a single work and therefore fails to function as a trademark. In re Meredith Madsen, Serial No. 87054308 (September 24, 2019) [not precedential] (Opinion by Judge Jonathan Hudis).

The title of a single creative work, such as a book, is not considered a trademark and is therefore unregistrable. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§ 1051, 1052, and 1127; In re Cooper, 254 F.2d 611, 117 USPQ 396, 400 (CCPA 1958). In In re Posthuma, 45 USPQ2d 2011, 2014 (TTAB 1998), the Board extended the “title of a single work” refusal from books to live theatrical productions: "Whatever the changes made to this live theater production, it still remains a single work, thus, these often subtle changes do not transform the show into a 'series' of shows, thereby turning the unregistrable title into a registrable service mark."

The examining attorney relied on Posthuma and on applicant’s specimen of use, a course flyer, in maintaining that the educational course that applicant offers in connection with the Florida Atlantic University School of Business under the mark PREDICTIVE ENTREPRENEUR "is but one course in a series of other courses (e.g., DISRUPTIVE TECHNOLOGY and HOW TO ESTABLISH FOREIGN BUSINESS), on the broader topic of entrepreneurship, and will be perceived as the title of a single work." The Board disagreed.

Single creative works include works in which the content does not change, whether that work is in printed, recorded, or electronic form. A theatrical performance is a single creative work because the content of the play, musical, opera, or similar production does not significantly change from one performance to another. In re Posthuma, 45 USPQ2d at 2014; TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) §1202.08(a) (2019).

The Board observed that educational services such as university courses are different from scripted
theatrical performances. In fact, the TMEP specifies that “[l]ive performances by musical bands, television and radio series, and educational seminars are presumed to change with each presentation and, therefore, are not single creative works.” TMEP § 1202.08(b) (emphasis added by the Board).

Applicant Madsen stated, without challenge by the examining attorney, that she has “provided at least seven different lectures for the educational services recited in this application with different subject  matter for each lecture relating to the mark Predictive Entrepreneur.” The Board therefore found that the examining attorney failed to meet her burden of proof.

And so the Board reversed the refusal.

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TTABlog comment: Noted trademark guru David Perslack recently said to me, "I haven't seen so many failure-to-functions in such a short time since my honeymoon."

Text Copyright John L. Welch 2019.