Precedential No. 19: TTAB Affirms Section 2(e)(5) Functionality Refusal of Wind Turbine Configuration

The TTAB affirmed a Section 2(e)(5) refusal to register the product configuration shown below, for "Wind turbines; Windpowered electricity generators," finding the design to be functional because "it is essential to the use or purpose of the product." Applicant's own utility patent took the wind out of its sails. Assuming arguendo that the design was not de jure functional, the Board also considered and rejected applicant's claim that the applied-for mark had acquired distinctiveness under section 2(f). In re Change Wind Corp., Serial No. 86046590 (July 20, 2017) [precedential] (Opinion by Judge Peter W. Cataldo).

Section 2(e)(5) of the Trademark Act bars registration of a proposed mark that "comprises any matter that, as a whole, is functional." A product design or product feature is considered to be functional for trademark purposes (i.e., de jure functional) if it is: (1) “essential to the use or purpose of the article;” or if it (2) “affects the cost or quality of the article.” TrafFix Devices Inc. v. Mktg. Displays Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001) (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982)).

In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 USPQ 9, 15-16 (CCPA 1982), sets forth four nonexclusive types of evidence that may be helpful in determining the issue of functionality: (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.

However, the Supreme Court in TrafFix made it clear that there is no need to consider alternative designs if the product configuration at issue is functional under the Inwood standard. "Thus, there is no requirement that all of the categories of evidence identified in Morton-Norwich appear in every case in order to make a functionality refusal. In re Heatcon, Inc., 116 USPQ2d 1366, 1370 (TTAB 2015)."

Here, in considering the functionality of the configuration as a whole, we may consider the functional role of the individual features of the design—the conical housing and the helical wings—to determine whether the applied-for mark is functional and thus, unregistrable.

Utility Patent: In TrafFix, the Supreme Court stated that a utility patent is strong evidence that the features an applicant claims are functional. Applicant submitted its U.S. Patent 9,103,321, directed to an "on or off grid vertical access wind turbine and self-contained rapid deployment autonomous battlefield robot recharging and forward operating base horizontal axis wind turbine.”

The Board found that the features contained in the applied-for mark (helical wings and housing enclosing frame structure) are "specified in the twenty-one claims of the invention:"

A wind turbine, comprising: a frame structure; a housing enclosing said frame structure . . . helical swept wings that rotate to capture wind throughout a circumference of the rotary wing assembly from both windward and leeward sides so that a torque input spreads evenly to mitigate damaging harmonic pulsations that would otherwise arise without the torque input spreading evenly . . .

Applicant contended that the patent describes certain advantages associated with "the mechanical gear drive train system and with components that are NOT found in the design sought to be registered." The Board disagreed:

However, both the disclosures and the claims of the patent reveal that the shape of the housing and he use of helical wings and their placement are not merely arbitrary, ornamental, or incidental, but serve an essential function in the invention for the VAWT and that these features are necessary for its use.

The Board pointed out that the protective housing enclosing the structural frame  and the helical wings "are features of the invention as set forth in the specified claims." The patent specification indicates the utilitarian advantages these features. The preferred embodiment of the invention is shown in patent Figures [See Fig. 1A above] that are essentially the same as the drawing of the applied-for mark.

The patent thus plainly discloses the functional role of the three components disclosed and claimed in Applicant’s drawing of the mark: the conical tower, the helical wings, and the boundary fences affixed to the helical wings. These features are necessary elements of the invention and are essential to the functioning of Applicant’s wind turbine.

Because applicant's utility patent "demonstrates the utilitarian advantages of the VAWT design at issue," the Board found that the product configuration is functional under Section 2(e)(5).

Advertising: The Board found the advertising evidence in the record to be "inconclusive" on the issue of functionality, because it did not "explicitly" tie the touted benefits of applicant's products to the aspects of the turbine depicted in the trademark drawing . "While we think that some consumers may connect the listed advantages as flowing from the external design aspects depicted in the application, some may not."

Alternative Designs: Because the Board found the applied-for design to be functional under the Inwood test, there was no need to consider design alternative. Nonetheless, the Board reviewed the evidence provided by applicant, but found that the alternative "are all merely variations of a single basic VAWT design." Indeed, the Board observed, "[i] is probative of functionality that others in the industry use similar designs; they do not have to be identical."

It is apparent there are only a limited number of variations in these design elements which maintain the functional advantages inherent in those design elements and in the overall VAWT design. To allow Applicant to register a design incorporating one of that quite limited number of superior designs as a trademark clearly would hinder competition.

Cost of Manufacture: Because the utility patent and the advertisements discloseduse-related benefits, the lack of cost savings does not undermine the finding of functionality. A product feature can be found functional if its affects either the quality or cost of the product. "In
other words, evidence that a design costs more, or has no impact on cost, is irrelevant if the design is found to work better." In any case, the Board found applicant's evidence of purported cost savings
to be inconclusive as to whether the savings were attributable to the design features depicted in the trademark drawing or to the turbine’s internal workings.

Conclusion on Functionality: That Board found that the evidence, viewed as a whole, establishes that the subject design is functional under Section 2(e)(5) because it is essential to the use or purpose of the product. Applicant has failed to rebut the evidence that supports this conclusion, "specifically, the utility patent and the possible adverse effect on competition because of the similarity of Applicant’s design to those of other VAWTs."

Acquired Distinctiveness: Of course, a product configuration that is functional under Section 2(e)(5) cannot be registered. Nonetheless, for the sake of completeness, the Board considered applicant's Section 2(f) claim of acquired distinctiveness.

Applicant asserted five years of exclusive use, and provided declaration evidence that it has spent $48,750 for sales consulting and $3,000 in marketing expenditures for a trade show booth. Applicant was also mentioned a few times in media, and it features a picture of the product on its website, where it claims $12 million in pre-production orders for its $59,000 wind turbine. Finally, applicant pointed to its "look for" advertising, depicted below:

The Board observed that five years of is not alone sufficient to establish acquired distinctivenesss for a product configuration. As to applicant's "look for" advertising, there was no evidence regarding extent of exposure to, or effect on, relevant consumers. Likewise, there was no evidence of the effect of the the trade show and website promotion on consumer perception. The pre-production sales figure may indicate commercial success of the product, but it does not show that consumers view the design as a trademark. The evidence regarding media coverage on Fox News and on a radio show failed to indicate the subject matter of the coverage, and the sole newspaper article focuses on the advantages of the design, not on any configuration mark.

And so the Board blew away applicant Section 2(f) claim.

Ruling: In sum, the Board affirmed the Section 2(e)(5) functionality refusal, and also affirmed the USPTO's rejection of applicant's claim of acquired distinctiveness.

Read comments and post your comment here.

TTABlog comment: Hat tip to Examining Attorney Jeffrey S. DeFord, who handled the prosecution, through seven requests for reconsideration, and the appeal, over a period of three-and-one-half years. And to the Board panel for digging into the details of this utility patent

Text Copyright John L. Welch 2017.

TTAB Affirms Genericness Refusal of CHOCOLATE GLAÇAGE for .... Guess What?

The TTAB affirmed a refusal to register CHOCOLATE GLAÇAGE on the Supplemental Register, finding the phrase to be generic for "icing and glaze for cakes, pies, donuts, and bakery goods." For icing on the cake, the Board also affirmed a refusal based on applicant's failure to provide a translation of the word GLAÇAGE. In re Lawrence Foods, Inc., Serial No. 86937640 (July 20, 2017) [not precedential] (Opinion by Judge George C. Pologeorgis).

Examining Attorney Odette Bonnet submitted a dictionary definitions of "chocolate," and the Board took judicial notice of this dictionary definition of GLAÇAGE: "glaçage (France): Icing or glazing with an egg wash."

The Examining Attorney also provided examples recipes and menus that included the phrase "chocolate glaçage to designate chocolate icing or glaze for bakery goods, primarily cakes. A summary printout of Google search results submitted by applicant also showed the phrase in reference to recipes for making icing.

The record shows that the compound term CHOCOLATE GLAÇAGE is understood by the relevant public – that is, bakers and buyers of cakes, pies, donuts, and bakery goods with icing and glaze – primarily to refer to the genus of Applicant’s goods. The genericness of the phrase, considered as a whole, is established by ... clear and convincing evidence ....

Applicant feebly claimed that "no important website" uses the phrase, and a mere 7,840 Google hits actually evidence "low use." The Board pointed out that even if applicant were the first and only user of the phrase, the issue is what the public would understand the phrase to mean, not whether the public uses the phrase.

The correct inquiry thus is whether the relevant public would understand, when hearing or reading the term CHOCOLATE GLAÇAGE, that it refers to “icing and glaze for cakes, pies, donuts, and bakery goods.” The record demonstrates such an understanding among bakers and buyers of cakes and other bakery goods with icing and glaze.

As to the translation requirement, applicant, after agreeing that the doctrine of foreign equivalents does not apply, "incorrectly assumes that if the doctrine of foreign equivalents does not apply, a translation is unnecessary. To the contrary, one is not dependent on the other.

Application of the doctrine of foreign equivalents is a matter of substantive trademark law, while the requirement for translation of the wording in the mark is an administrative requirement for registration under Rule 2.32(a)(9). Applicant’s argument also puts the cart before the horse: The translation of foreign wording in the mark usually must be considered before determining whether the relevant public would “stop and translate” it when considering the mark.

Observing that a translation is of critical importance because it provides public notice of the meaning of the words in applied-for matter, the Board found the requirement for translation of GLAÇAGE for the record to be appropriate.

Read comments and post your comment here.

TTABlog comment: WYHA?

Text Copyright John L. Welch 2017.

TTAB Dismisses Section 2(e)(1) Opposition to BLUE COLLAR BREWERY Due to Lack of Standing

The Board put an end to Blue Collar Brewery, Inc.'s attempt to prevent Brew Collar Brewery, LLC from registering the mark BLUE COLLAR BREWERY for beer making kits and related goods [BREWERY disclaimed], finding that opposer failed to establish standing. The Board also dismissed opposer's claim that the opposed mark is deceptively misdescriptive under Section 2(e)(1), since applicant had disclaimed the purportedly deceptive word BREWERY. Two years ago, the Board tossed out opposer's bogus fraud claim on partial summary judgment. [TTABlogged here]. Blue Collar Brewery, Inc. v. Blue Collar Brewery, LLC, Opposition No. 91219820 (July 18, 2017) [not precedential] (Opinon by Judge Linda A. Kuczma).

Evidentiary ruling: Opposer objected to applicant's submission of certain webpages via notice of reliance because the pages did not include the url or the date. Citing the TBMP [which, by the way, is not the law - ed.], the Board dubiously found that these omissions were merely procedural, and opposer should have objected earlier so that applicant could correct the deficiencies.

Standing: Standing is a "threshhold issue" that must be established in every inter partes case. The hurdle is low: "a plaintiff must demonstrate that he possesses a 'real interest' in a proceeding beyond that of a mere intermeddler, and “a reasonable basis for his belief of damage."

For purposes of a claim under Section 2(e)(1) that a mark or term is deceptively misdescriptive, a plaintiff "need only show that it is engaged in the manufacture or sale of the same or related goods as those listed in the defendant’s involved application or registration and that the product in question is one which could be produced in the normal expansion of plaintiff’s business."

Opposer here claimed that BREWERY is deceptively misdescriptive of applicant's goods, and it need only to show an equal right to use the word for the goods in question. It need not prove proprietary rights in the term.

Opposer does not explain, either in its Notice of Opposition or otherwise, how it is or will be damaged by registration of Applicant’s mark. Neither does Applicant’s Answer and Affirmative Defenses include any ad missions regarding Opposer’s alleged business activities or Opposer’s interest in either BREWERY or the mark BLUE COLLAR BREWERY. Likewise, Opposer does not address its standing to bring the instant opposition in its Trial Brief.

The record lacked any evidence regarding "the nature of opposer's commercial activities or its interest in Applicant’s BLUE COLLAR BREWERY mark." And so the Board dismissed the opposition for lack of standing.

Deceptive Misdescriptiveness: Even had opposer proved standing, the Board would have dismissed the opposition on the merits. Marks that contain registrable matter in addition to deceptively misdescriptive components may be registered with an appropriate disclaimer of the deceptively misdescriptive matter. Here BREWERY is disclaimed, so it does not matter whether it is deceptively misdescriptive under Section 2(e)(1).

Accordingly, Opposer has failed to show that Applicant’s mark as a whole is deceptively misdescriptive or that consumers are likely to believe any misrepresentation occasioned by the wording BREWERY, BLUE COLLAR or BLUE COLLAR BREWERY contained in Applicant’s mark.

And so the Board dismissed the opposition.

Read comments and post your comment here.

TTABlog comment: BREWERY is part of the mark, and consumers aren't aware of any disclaimer of BREWERY. So why should a disclaimer of BREWERY avoid the Section 2(e)(1) bar?

Text Copyright John L. Welch 2017.

TTAB Okays Concurrent Use Agreement Regarding FRASCA for Restaurant Services

Accepting an agreement reached by the parties, the TTAB found that applicant Frasca Food and Wine (FFW) is entitled to a concurrent use registration for the mark FRASCA for bar and restaurant services, covering the entire United States except for the states of Illinois, Indiana, and Michigan. It ordered that Registrant's prior registration be geographically restricted to those three states. Frasca Food and Wine, Inc. v. Dunlay's Rocsoe, LLC Concurrent Use No. 94002752 (July 14, 2017) [not precedential] (Opinion by Judge Lorelei Ritchie).

The Concurrent Use Agreement (dated March 10, 2016) stated that FFW has used the mark FRASCA in Boulder, Colorado, since July 2004. FFW applied to register the mark, limited geographically, in May 2016, naming Dunlay's as an excepted user.

Registrant Dunlay's had registered the mark FRASCA in January 2011, claiming a first use date of May 17, 2006 for its Chicago restaurant.

The Board commenced this concurrent use proceeding on June 29, 2017. It then suspended the proceeding, reviewed the Concurrent Use Agreement, and found it acceptable. The parties agreed and stated that there have been no incidents of confusion in ten years of co-existence, and that they operate substantially different restaurants, offer substantially different products at different price points, and market to different consumers through separate trade channels." They agreed not to use the mark in the other's territory. And they addressed the issue of "overlapping market activities," avoid confusion, and address and resolve any issues that arise

Concurrent use agreements that include information as to why the parties believe confusion is unlikely, evidencing the parties’ business-driven belief that there is no likelihood of confusion,and providing provisions to avoid any potential confusion, are entitled to great weight in favor of a finding that confusion is not likely. In re Four Seasons Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071 (Fed. Cir. 1993); Bongrain Int’l (Am.) Corp. v. Delice de France Inc., 811 F.2d 1479, 1 USPQ2d 1775 (Fed. Cir. 1987).

And so each party will end up with a geographically-restricted registration for FRASCA.

Read comments and post your comment here.

TTABlog comment: Since Dunlay's registration reached its fifth anniversary in January 2016, wasn't it immune to a Section 2(d) challenge by a prior user? See Sections 15 and 33(b)(5) of the Trademark Act.

Text Copyright John L. Welch 2017.

TTAB Orders Cancellation of MG-IP Registration for Legal Services Due to Confusion with M & G

The Board granted Merchant & Gould's petition for cancellation of a registration for the mark MG-IP, finding the mark likely to cause confusion petitioner's previously-used mark M&G, both for legal services. Petitioner failed to get its registrations for the mark M&G into the record, but was able to prove and prior common law rights in the mark. Merchant & Gould P.C. v. MG-IP Law, P.C., Cancellation No. 92057850 (July 14, 2017) [not precedential] (Opinion by Judge Susan J. Hightower).

Priority: Applicant MG-IP Law P.C. first used its mark in April 2006. The challenged registration issued in 2012. Petitioner Merchant offered testimony regarding its use of the M&G mark since at least 1994, including in a stylized form on its office door since 2002. And so petitioner had priority of use.

Likelihood of confusion: Because the involved services are identical, the Board presumed that they travel in the same channels of trade to the same classes of consumers.

As to the strength of petitioner's M&G mark, there was no evidence that M&G has any suggestive or descriptive significance. The Board concluded that the mark is inherently distinctive and has conceptual strength.

With regard to marketplace strength, the Board found the M&G mark to be "at least somewhat commercially strong in the legal services market," based on sales, advertising, and length of use.

Respondent pointed to three third-party registrations, but the Board found them to be of little probative value.  As to 16 uses of MG in connection with legal services, the Board gave them some probative value , but only one was in the field of intellectual property, which is where the parties' services overlap.

In sum, considering the conceptual and commercial strength of Petitioner’s mark and the relatively weak evidence of similar marks in use for legal services under the fifth and sixth du Pont factors, we accord Petitioner’s mark the normal scope of protection to which inherently distinctive marks are entitled.

Turning to the marks, the Board observed once again that when the involved services are identical, a lesser degree of similarity between the marks is required to support a finding of likely confusion.

Although the term "IP" slightly distinguishes the marks in appearance and sound, the term is highly descriptive of the services offered by the parties and is accorded less weight.

Considered as a whole, the marks look and sound similar. As to meaning, the subject registration is for MG-IP alone. Its meaning is not limited to connoting Respondent’s full name and it may be considered to be arbitrary or connote the same meaning as Petitioner’s mark M&G when used with its full name Merchant & Gould.

The Board concluded that the marks are highly similar in sound, appearance, meaning, and overall commercial impression.

As to conditions of purchase, the Board found the services, although not limited to sophisticated buyers, to be costly. But even sophisticated buyers may be confused by similar trademarks. And so the Board deemed this factor to be neutral.

As to actual confusion, the Board pooh-poohed a purported incident involving one of petitioner's partners. However, it found probative, despite various objections from respondent, a likelihood of confusion survey that showed 25,2% confusion between the parties logos (shown below).
.

The fact that petitioner often uses it full name adjacent the M&G mark did not diminish the source-identifying significance of the latter, but may reinforce its reference to Merchant & Gould.

Laches: In a cancellation proceeding, absent evidence that petitioner had actual notice, the date of registration is the operative date for determining laches. With actual notice, the date of publication for opposition (June 19, 2012) is the operative date.

The challenged registration issued on September 4, 2012, and the petition to cancel was filed approximately one year later, on September 12, 2013. Respondent argued that petitioner had actual notice since at least 2008, since both law firms had offices in the same part of Virginia, were members of the same organizations, and attended the same conferences. The Board noted, however, that the firms were not listed by their initialisms, and it concluded that petitioner did not have actual notice prior to the registration date.

The Board concluded that the delay was a mere one year, not an unreasonable delay for laches purposes.

Conclusion: And so the Board granted the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: Twenty-five percent of respondents confused the logos? What universe do they live in?

Even if petitioner had actual knowledge, the laches period would run from the publication date of June 19, 2012, so that would make the delay only slightly longer, and surely still not long enough to support a laches defense.

Text Copyright John L. Welch 2017.

TTAB Sustains Opposition to PYNK for Magazines: Applicant Not Sole Owner of Mark

The TTAB sustained this opposition to registration of the mark PYNK & Design (shown below) for a women's fashion and lifestyle magazine, finding that applicant BleuLife Media was not the exclusive owner of the PYNK logo mark at the time of filing, and declaring the subject application void ab initio. Pynk Branded, LLC v. BleuLife Media & Entertainment, Inc., Opposition No. 91220320 (July 14, 2017) [not precedential] (Opinion by Judge Albert Zervas).

In 2010 or 2011, applicant asked Latresa Moore to start a new magazine, a female version of applicant's "Bleu" magazine. A magazine was created in 2011 (see below). By 2013, the relationship between Moore and opposer's owner, Mr. Johnson, had soured, apparently due to issue of non-payment. Ms. Moore incorporated opposer in September 2013. Johnson filed the subject application in December 2013.

Opposer currently has an Instagram webpage where it advertises a PYNK magazine, as well as a THINK PYNK website. Applicant  operates a PYNK magazine website.

The sole ground for opposition was ownership: i.e., that applicant was not the owner of the PYNK logo mark at the time of filing the subject application. "Essentially, Opposer’s claim is that it is the owner of the mark, not Applicant."

An application filed by one who is not the owner of the mark sought to be registered is void ab initio. *** Opposer, as plaintiff, bears the burden of establishing by a preponderance of the evidence that Applicant was not the owner of the PYNK logo mark at the time of filing the involved application, that is, on December 13, 2013.

The Board found that opposer met its burden of proof: the evidence showed that applicant was not the sole owner of the mark at the time that it filed the opposed application. Opposer, or Ms. Moore, had at least a partial interest in the mark on December 13, 2013.

Moore testified that she was the owner of the mark, that she operated the magazine, and that Johnson made no contribution to the creation of the logo. In email correspondence contemporaneous with the filing of the application, Johnson acknowledged Moore's interest in the mark. ("For me this entire ordeal has been about two issue (sic). One, credit for the foundation of starting PYNK together ...").

Johnson relied on certain statements on the "inside sleeve" of the magazine, referring to him as the publisher of both PYNK and BLEU magazines, and calling Moore "PYNK's popular publicist," but the Board found these statements not to be conclusive on the issue.

The Board ruled that Ms. Moore had not established her claim that there was an "understanding that each entity would walk away from the business with their separate Intellectual properties and assets." The Board found it "not possible to delineate what particular 'intellectual properties and assets' remained and with whom."

At a minimum, however, opposer established that Ms. Moore had at least some ownership rights in the mark as a result of her operation of the magazine. "In sum, Opposer has demonstrated by a preponderance of the evidence that Applicant was not the exclusive owner of the PYNK logo mark at the time of filing the involved application. Accordingly, the application is void ab initio."

Read comments and post your comment here.

TTABlog comment: Now what happens?

Text Copyright John L. Welch 2017.

TTAB Finds MANHATTAN for Upholstered Furniture Confusable with MANHATTAN CABINETRY for Custom Furniture

The TTAB affirmed this refusal to register the mark MANHATTAN for "upholstered furniture," finding the mark likely to cause confusion with the registered mark MANHATTAN CABINETRY for "custom designed and crafted furniture" [CABINETRY disclaimed]. Applicant argued that the identification of goods in the registration is unclear, and therefore that external evidence may be considered regarding the actual use of the marks, but the Board found no vagueness. In re Williams-Sonoma, Inc., Serial No. 86092589 (June 28, 2017) [not precedential]. (Opinion by Judge Albert Zervas).

The goods of applicant and the cited registrant overlap, since upholstered furniture may be hand crafted, and hand crafted furniture may be upholstered. Third-party evidence showed that the involved goods are sold in the same channels of trade under the same mark. And applicant itself offers "made to order" and "special order" furniture.

Applicant contended that a maker of custom designed furniture works closely with its customers, and this distinguishes the goods. The Board, however, observed that "consumers of both Applicant’s and registrant’s goods are ultimately purchasing furniture which suits their unique needs."

Applicant contended that the cited mark is entitled to a narrow scope of protection because the word MANHATTAN is a geographic term, and the cited registration was obtained under Section 2(f). The Board pointed out, however, that "[h]aving acquired distinctiveness, the mark MANHATTAN CABINETRY is entitled to the same trademark protection as any other validly registered trademark." Moreover, there was no evidence that MANHATTAN is a weak term for furniture.

The Board found the marks to be substantially similar: "any distinction in the marks caused by the additional term CABINETRY is outweighed by the overall similarity resulting from the shared identical term MANHATTAN."

The Board agreed with applicant that customers for custom designed and crafted furniture might involve some deliberation and would care in the purchasing decisions. But consumers of applicant's furniture (an upholstered chair may cost as little as $119.99), would exercise no more than ordinary care. [But what about the goods that overlap with registrant's goods? - ]

Applicant pointed to the lack of actual confusion despite 17 years of co-existence on the mark, but the Board pointed out that likelihood of confusion is the test. "[W]hile examples of actual confusion may point toward a finding of a likelihood of confusion, an absence of such evidence is not compelling in support of a finding of no likelihood of confusion." In any case, there was no evidence of the extent of use of the involved marks, or whether there have been meaningful opportunities for confusion to have occurred.

Finally, applicant pointed to a third-party registration for MANHATTAN LOFT, now expired, which co-existed with the cited registration. However, the Board is not bound by the actions of examining attorneys in other cases, and in any event, that mark is not as close to the cited mark as MANHATTAN.

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

Read comments and post your comment here.

TTABlog comment: Applicant wanted the Board to consider the regsitrant's specimen of use, but the Board pointed out that the specimen was not of record, and the Board does not take judicial notice of records in the USPTO.

Text Copyright John L. Welch 2017.

VANILLA JAVA PORTER Lacks Acquired Distinctiveness for Beer, Says TTAB

The Board affirmed a refusal to register the mark VANILLA JAVA PORTER for beer [PORTER disclaimed] on the ground that applicant, who was seeking registration under Section 2(f) of the Trademark Act, failed to prove acquired distinctiveness. In re Detroit Rivertown Brewing Company, LLC, Serial No. 86640818 (July 10, 2017) [not precedential] (Opinion by Judge Susan J. Hightower).

Applicant conceded that VANILLA JAVA PORTER is not inherently distinctive by amending its application to seek registration under Section 2(f). Thus the only issue for the Board was the sufficiency of applicant's evidence of acquired distinctiveness.

Applicant submitted an affidavit from its president stating that the mark has been in use for 10 years, the beer has been sold in 20 states and the District of Columbia, sales have exceeded $5 million dollars, advertising expenditures have totaled more than $250,000, the beer has been mentioned in numerous media articles, it is the flagship beer of one of the fastest growing craft breweries in the United States, and the first 20 Google hits for "Vanilla Java Porter" refer to applicant and its beer.

The Board observed that more evidence of acquired distinctiveness is required when a mark is so highly descriptive. It deemed VANILLA JAVA PORTER to be a highly descriptive mark, pointing to dictionary definitions of the constituent words and to applicant's own website description:

With a beautifully crafted, copper cored, English Style Porter at its heart, Atwater’s Vanilla Java Porter tips its hat to the modern audience with the addition of vanilla and coffee that is locally brewed cold to eliminate burnt flavors. The beer, vanilla & coffee tumble together, enhancing the smooth nature of each.

Although under Section 2(f) the USPTO may accept five years of “substantially exclusive and continuous use” as prima facie evidence of acquired distinctiveness, it not required to do so. "For highly descriptive marks, passage of time alone may be insufficient to establish secondary meaning."

We find VANILLA JAVA PORTER to be such a phrase. Because it is so highly descriptive of Applicant’s goods, ten years of use – even if it has been substantially exclusive, which we assume without deciding – is insufficient to establish prima facie that the phrase has acquired distinctiveness.

As to the sales, advertising, and other evidence, [t]his evidence does not establish “the effectiveness of such use to cause the purchasing public to identify the mark with the source of the product.'"

And so the Board affirmed the refusal under Section 2(e)(1).

Read comments and post your comment here.

TTABlog comment: One applicant was hit with the "highly descriptive" tag, it was all over.

Text Copyright John L. Welch 2017.

FURNITUREBOBS Confusable With BOB'S DISCOUNT FURNITURE, Says TTAB

Okay, this sounds rather straightforward doesn't it? The services are identical: retail furniture stores. Therefore a lesser degree of similarity between the marks is needed to support a finding of likely confusion. The marks FURNITURE BOBS and BOB'S DISCOUNT FURNITURE are not to be considered side-by-side, but rather as if encountered separately. Registrant disclaimed DISCOUNT FURNITURE, and the word FURNITURE in applicant's mark is surely descriptive. But what about third-party uses and registrations of BOB and FURNITURE? In re Horizon Merchant, Inc., Serial No. 86736229 (July l0, 2017) [not precedential] (Opinion by Judge Jyll Taylor).

Applicant maintained that the cited mark BOB'S DISCOUNT FURNITURE is very weak when considered in the light of third-party registrations and uses of marks in the furniture industry, which evidence shows that consumers are able to distinguish these businesses on the basis of small differences between the marks.

The Board found, however, that the 29 registrations cited by applicant, that contained variants of "Bob" (including Robert and Roberta), were of little probative value because the two marks at issue here are much closer to each other than the third-party registered marks. The three dozen third-party uses, however, were more interesting.

Of the third-party uses, eleven included both "Bob" or "Bob's" and "Furniture." Of those, six included additional terms that distinguished the marks and altered their commercial impressions: BOB’S FURNITURE & BEDDING, BOB’S FURNITURE REPAIR SERVICE, BOB’S FURNITURE & AUCTION, BOB MILLS FURNITURE, BOB’S FURNITURE HOSPITAL and BOB LOFTIS FURNITURE. [Five of them seem pretty relevant to me - ed.].

The remaining five uses - BOB’S FURNITURE, BOB’S NEW & USED FURNITURE, BOB’S FURNITURE OUTLET, BOB’S FURNITURE AND BOB’S FAMILY FURNITURE - "do not evidence such a widespread and significant use of the terms 'BOB'S' and "FURNITURE' in the furniture industry that we can conclude that the cited mark is so weak that the public would be able to distinguish the source of Applicant's services from those of Registrant by the slight differences in their respective marks."

The Board noted that in Jack Wolfskin there were at least 14 relevant third-party uses and registrations, and in Juice Generation there were 26.

The Board recognized that there is a "certain degree of weakness in the cited mark, but even weak marks are entitled to protection against similar marks for identical goods and/or services.

And so the Board found confusion likely and it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: What do you think? Do you need at least 14 third-party uses and registrations to make an effective attack on the strength of the cited mark? Applicant here came close to meeting that standard, depending on which third-party uses and registrations that you count.

Text Copyright John L. Welch 2017.

TTAB Test: Is "IVE" for Protective Work Gloves Confusable with "EB & IVE" for Clothing?

The USPTO refused registration of the mark IVE for "protective work gloves," finding it likely to cause confusion with the registered mark EB & IVE for various clothing items. Applicant argued that its goods are sold at wholesale to sophisticated buyers, and that "eb and ive" brings to mind "ebony and ivory," while its mark has no such connotation. How do you think this came out? In re Ironclad Performance Wear Corp., Serial No. 86737035 (July 6, 2017) [not precedential] (Opinion by Judge Thomas W. Wellington).

The Board deemed the marks to be more similar than dissimilar, finding no evidence to support applicant's "ebony and ivory" argument. To the extent consumers would so view registrant's mark, they would also be likely to view "ive" as short for "ivory." [Huh? - ed.]. Indeed, consumers may believe IVE is an offshoot of the EB & IVE brand.

As to the goods, the Board focused on the following in the cited registration: "jackets; ... tops; [and] wearable garments and clothing, namely, shirts." Examining Attorney Jeanine Gagliardi relied on sixteen third-party websites showing clothing and work gloves sold under the same mark. [E.g., L.L. Bean and Orvis]. In fact, Applicant Ironclad itself sells clothing and work gloves. In addition, the examining attorney submitted 20 use-based, third-party registrations for marks covering protective work gloves and clothing.

The third-party website and registration evidence established a relationship between applicant's protective work gloves and registrant's clothing items.

Ironclad feebly argued that it sells its good to stores like Home Depot, where consumers seek out "technical goods," whereas registrant offers its products online and to boutique stores in Australia. Of course, the Board found this argument irrelevant because its determination of likely confusion must be based on the goods as identified in the application and cited registration, regardless of the actual trade channels.

With similar result, Ironclad asserted that its goods are sold to sophisticated purchasers who buy in bulk after negotiating the terms of the deal. Again, the Board pointed out, there are no such restrictions in applicant's identification of goods. Moreover, protective gloves may be purchased for general outdoor work and are not restricted to industrial use, and so there was no reason why the least sophisticated purchaser would exercise a high level of care.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2017.