Wednesday, November 22, 2017

Profs. Beebe and Hemphill: "The Scope of Strong Marks: Should Trademark Law Protect the Strong More Than The Weak?"

Professors Barton Beebe and C. Scott Hemphill of New York University School of Law challenge trademark orthodoxy in their new article, "The Scope of Strong Marks: Should Trademark Law Protect the Strong More Than The Weak?," 92 N.Y.U. Law. Rev. 1390 (November 2017). [pdf here]. It is a black letter principle of trademark law that the stronger the mark, the greater the scope of protection it is accorded. Not so fast, say the professors.

In this article, we challenge this conventional wisdom. We argue that as a mark achieves very high levels of strength, the relation between strength and confusion turns negative. The very strength of such a superstrong mark operates to ensure that consumers will not mistake other marks for it. Thus, the scope of protection for such marks ought to be narrower compared to merely strong marks. If we are correct, then numerous trademark disputes involving the best-known marks should be resolved differently—in favor of defendants. Our approach draws support from case law of the Federal Circuit—developed but then suppressed by that court—and numerous foreign jurisdictions.

* * * *

It makes strong intuitive sense that as a trademark grows increasingly famous, the likelihood that consumers will confuse similar marks with it declines. Consider the example of Coca-Cola. Having been exposed to the Coca-Cola logo countless times, the average consumer is likely sensitized to even the slightest differences between the distinctive appearance of the logo and closely similar logos.

* * * *

The Article examines the underpinnings of American courts’ mistaken analysis, explains the errors, and urges essential reforms in this core area of trademark doctrine in order to advance the overarching policy goal of trademark law, which is not to enable the strongest to grow even stronger, but rather to promote effective competition.

Read comments and post your comment here.

TTABlog comment: So as a mark becomes superstrong, it gains anti-dilution protection but gets less likelihood-of-confusion protection. Let's think about that.

Text Copyright John L. Welch 2017.

Tuesday, November 21, 2017

TTAB TEST: Is "UNI/FORM" Merely Descriptive of Clothing?

The USPTO refused registration of the mark UNI/FORM in standard character form, finding it to be merely descriptive of clothing, namely, belts, shorts, t-shirts, etc. On appeal, applicant contended that the mark is merely suggestive of its goods, which are "non-standardized, individual and voluntarily purchased medium to high price-point clothing." Applicant also claimed that UNI/FORM is a double entendre, referring to "UNIque FORMula," and furthermore is incongruous. How do you think this came out? In re John Patrick Allen, Serial No. 86800623 (November 16, 2017) [not precedential] (Opinion by Judge Marc A. Bergsman).

Examining Attorney Annie M. Noble submitted a dictionary definition of "uniform" as "the distinctive clothing worn by members of the same organization or body or children attending certain schools" [This brings back painful memories of eight years of wearing a tan shirt and blue tie at St Leo's School on Chicago's South Side - ed.] or "an identifying outfit or style of dress worn by the members of a given profession, organization, or rank."

The Board noted, however, that the term "is broadly applied to include personal styles of dress so that most clothing in Applicant's description could be part of a uniform," referring to several media articles describing "uniform dressing," i.e., a personal "style uniform" that some women employ to simplify their lives by wearing the same look every day.

Applicant conceded that uniforms are a type/subset of clothing, but he pointed out that his mark is UNI/FORM, not UNIFORM. The Board was not impressed: "the addition of punctuation marks would not ordinarily change the term into a non-descriptive one." E.g., 3-0's for thirty-inch car rims, HA-LUSH-KA for haluska, AL-KOL for alcohol.

Applicant's assertion that his clothing items were "non-standardized, individual and voluntarily purchased medium to high price-point clothing" was pointless, since there was no such limitation in the identification of goods.

As to the double entendre argument, the Board observed that such a double meaning must be readily apparent from the mark itself, and the supposed second meaning "UNIque FORMula" was not. As to incongruity, the Board found none.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: How did you do? Is  this a WYHA?

Text Copyright John L. Welch 2017.

Monday, November 20, 2017

TTAB Test: Is TRAILERSHARING Merely Desctiptive of Trailer Rental Services?

The USPTO refused registration of the marks TRAILERSHARING under Section 2(e)(1), finding it merely descriptive of trailer rental services. It refused registration of U-HAUL TRAILER SHARING, U-HAUL TRAILERSHARING, U-HAUL TRAILER SHARE and U-HAUL TRAILERSHARE without a disclaimer of the word TRAILERSHARE and variations thereof. On appeal, Applicant U-Haul argued that because its services are offered for a fee, the ordinary meaning of "sharing" does not apply, and thus the term is at most suggestive. How do you think this came out? In re U-Haul International, Inc., Serial Nos. 86757544, 86757575, 86757589, 86757631 and 86757635 (November 17, 2017) [not precedential] (Opinion by Judge Michael B. Adlin].

Examining Attorney Michael J. Souders relied on dictionary definitions of "trailer" (a nonmotorized vehicle designed to be pulled behind a motor vehicle) and "share" (to allow someone to use or enjoy something that one possesses), as well as on U-Haul's online statement that it "is built on a model of sharing, where customers move each rental from one area to another to be shared continuously." The term "sharing" is also used by others with other types of vehicle rental, like "car sharing" (Wikipedia: "Carsharing or car sharing … is a model of car rental where people rent cars for short periods of time, often by the hour."), "truck sharing," and "RV sharing."

The Board had no doubt that "trailer sharing" is merely descriptive of a quality, feature, function, characteristic or purpose of applicant's services. "Indeed, all forms of the term at issue – TRAILERSHARING, TRAILER SHARING, TRAILERSHARE, and TRAILER SHARE – convey that Applicant 'shares' or rents 'trailers.'"

Applicant contended that "sharing" means "to allow another to use's one's  possession as part of a non-financial arrangement." According to applicant, it is using the term "as a metaphor, suggesting a more informal, personal and non-pecuniary relationship, rather than describing a financial transaction."

The Board was unmoved. First, applicant's services "allow someone to use or enjoy [trailers] that [Applicant] possesses." That is the dictionary definition of "sharing." The definition makes no mention of whether a financial payment is involved. Second, applicant's position is belied by its own specimen of use, which has the heading "Trailer Sharing" and states that its services "are built on a model of sharing," but goes on to refer to rentals for fees and asserts that "[s]hared use of U-Haul trailers reduces the cost ...."  The Board pointed out that evidence of the context in which the mark is used is probative of the reaction of prospective purchasers.

Furthermore the record included numerous example of the use of "sharing" by the media and by third parties to describe vehicle rentals for money.

Third-party registration evidence as to the treatment of the word "share" was inconclusive. However,  even if some prior registrations have some characteristics similar to applicant's mark, the Board is not Bound by the actions of examining attorneys in other cases.

And so the Board affirmed the Section 2(e)(1) refusal of TRAILERSHARING, and allowed applicant 30 days within which to submit an appropriate disclaimer in the other four cases.

Read comments and post your comment here.

TTABlog comment: So U-Haul will receive four registrations, but with everything other than U-Haul disclaimed in the marks. Was it worth it? Please share this post with your friends - for free.

Text Copyright John L. Welch 2017.

Friday, November 17, 2017

TTAB Test: Which Of These Three Section 2(d) Refusals Was Reversed?

Here we go again! I hear the trumpets blow again! Oh, nevermind. You may recall that a TTAB judge once remarked that one can predict the outcome of a Section 2(d) appeal 95% of the time just by looking at the marks and the goods or services. Here for your consideration are three TTAB decisions rendered two days ago in Section 2(d) appeals. One was reversed. Which one? [Answer in first comment].

In re Lonely Hearts Club Limited, Serial Nos. 79174419 and 79176727 ((November 15, 2017) [not precedential] (Opinion by Judge Karen Kuhlke) [Section 2(d) refusal to register the marks LONELY, in standard character and design form, for  "Clothing, namely, lingerie excluding socks and stockings." in view of the registered mark LONELYSHOES for "Footwear, ballet shoes in the nature of flat shoes, slippers, shoes, half-boots, sandals, clogs being footwear, soles, socks and stockings"].

In re James Robinson, Serial No.86914326 (November 15, 2017) [not precedential] (Opinion by Judge Cindy B. Greenbaum) [Section 2(d) refusal of LEAF BY OSCAR in view of the registered mark OSCAR, both for cigars].

In re Q’Sai Co., Ltd., Serial No. 79157321 (November 15, 2017) [not precedential] (Opinion by Judge Lorelei Ritchie) [Section 2(d) refusal of the mark Q’SAI for fruit juice, concentrates for making fruit juice, vegetable juices, and food products, in view of the registered mark SAI for "soft drinks, namely, noncarbonated soft drinks; beauty beverages, namely, energy drinks containing mineral supplements"].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2017.

Thursday, November 16, 2017

TTAB Test: Is CAREBOARD Confusable with ECAREBOARD for Patient Information Systems?

The USPTO refused to register the mark CAREBOARD for computer hardware and software for monitoring hospital patients, staff, and equipment, finding the mark likely to cause confusion with the registered mark ECAREBOARD for interactive computer platforms for providing information to patients. Applicant argued on appeal that the letter "E" distinguishes the marks, and that the goods/services are different because its goods are medical workstations whereas registrant's services are provided via the cloud. How do you think this came out? In re West-Com Nurse Call Systems, Inc., Serial No. 86935321 (November 14, 2017) [not precedential] (Opinion by Judge Linda A. Kuczma).

The Marks: The Board observed that the difference between the two marks is the single letter "E," which describes a feature or characteristic of registrant's services, namely, that they are electronic or Internet-related. "Indeed, the 'E' prefix is commonly recognized and understood as a designation for the Internet, particularly when followed by a separately identifiable term such as 'CAREBOARD.'" Therefore the prefix "E" is less significant in creating the overall impression of Registrant's mark. The Board concluded that the marks convey the same overall commercial impression and are "very similar."

The Goods/Services: Applicant's argument that its goods are clearly different from registrant's platform services "misses the mark." The goods and services need only be related in such a way that confusion as to source would likely arise. Here, the goods and services could be marketed to the same customers, namely, hospitals providing a patient information board for communication purposes. The respective websites of applicant and registrant contain highly similar promotional information. "In other words, the identified goods and services are marketed to the same consumers ... and provide the same functions, namely, providing patents with information on their care while hospitalized.

Applicant’s potential customers are likely to believe that Applicant’s electronic indicator board that is integrated into nurse-call systems used for equipment and patient monitoring and its computer hardware and software for gathering and transmitting real time equipment and patient monitoring data and staff information, used in hospitals and other healthcare facilities, are related products emanating from Registrant or that Applicant’s goods and Registrant’s services are associated with the same source.

Moreover, third-party registrations showed that the goods and services here at issue - software and platforms - are of a kind that may emanate from a single source under a single mark.

Finally, applicant argued that the purchasers of the involved goods and services would be sophisticated. The Board, however, observed once again that under these circumstances, where the marks are nearly identical, even sophisticated purchasers may be confused.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: How did you do? Do you think this is a WYHA?

Text Copyright John L. Welch 2017.

Tuesday, November 14, 2017

CAFC Affirms TTAB's Section 2(d) Refusal of SENSI for Diapers: Extrinsic Evidence of Meaning Irrelevant

In a nonprecedential per curiam opinion, the U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's decision (here) that upheld a Section 2(d) refusal of the mark SENSI for diapers. The Board found the mark likely to cause confusion with the registered mark SENSI-CARE for diaper rash ointments. On appeal, Applicant Arista did not challenge most of the Board's du Pont analysis, focusing only on the similarity or dissimilarity of the marks as to connotation and commercial impression. In re P.T. Arista Latindo, Appeal No. 2017-1292 (November 13, 2017) [not precedential].

Arista disputed the Board's refusal to consider certain "extinsic" evidence, namely, use of the tagline "Sensible way of living" on Arista's website. According to Arista, customers seeing SENSI in that context would assume that SENSI means "sensible" in its mark, whereas in the context of the cited mark it means "sensitive." The Board was unmoved:

When determining the meaning of two marks, it is the marks themselves, as set forth in the application and cited registration, not extrinsic evidence, which determines likelihood of confusion. Indeed, it is well-established that the Board must only compare the mark in the prior registration with the mark in the application. “Registrability is determined based on the description in the application, and restrictions on how the mark is used will not be inferred.” In re Shell Oil Co., 992 F.2d 1204, 1207 n.4 (Fed. Cir. 1993).

It is well-established, the Board observed, that one may not resort to trade dress to prove that the commercial impressions of two marks are different, since the trade dress may be changed at any time.

The Board found nothing in the application indicating that SENSI should be understood to mean "sensible." And nothing in the marks or goods of the application and the cited registration provided a basis for concluding that the identical term used in the marks have "disparate definitions or connote different commercial impressions."

And so the court concluded that substantial evidence supported the Board's decision.

Read comments and post your comment here.

TTABlog comment: Is this a WYHA? You may recall that in the recent FIRST TUESDAY case (TTABlogged here), the CAFC ruled that the Board did not err in considering the explanatory text appearing on applicant's specimens of use in determining the issue of descriptiveness. So sometimes it's okay to look at external evidence. But not to distinguish marks under Section 2(d).

What about looking at extrinsic evidence (trade dress) to show that two marks create a confusingly similar commercial impression? The Specialty Brands case in footnote 1 says that this is permitted.

Text Copyright John L. Welch 2017.

Monday, November 13, 2017

TTAB Test: Are Distilled Spirits and Brewpub Services Related for Section 2(d) Purposes?

The USPTO refused to register the mark BSB for "distilled spirits," finding it likely to cause confusion with the registered mark shown below, for "brewpub services; taproom services; taproom services featuring beer brewed on the premises." On appeal, the Board found that the similarity in the marks (the letters BSB) outweighed the differences.  But what about the goods and services? How do you think this came out? In re Heritage Distilling Company, Inc., Serial No. 86896656 (November 9, 2017) [not precedential] (Opinion by Judge Marc A. Bergsman).

The Board noted that the fact that taprooms and brewpubs serve food and beverages is not enough to make those goods and services related. According to Coors Brewing and Jacobs v. Int'l Multifoods, something more is needed. The CAFC observed in Coors:

It is not unusual for restaurants to be identified with particular food or beverage items that are produced by the same entity that provides the restaurant services or are sold by the same entity under a private label. Thus, for example, some restaurants sell their own private label ice cream, while others sell their own private label coffee. But that does not mean that any time a brand of ice cream or coffee has a trademark that is similar to the registered trademark of some restaurant, consumers are likely to assume that the coffee or ice cream is associated with that restaurant. The Jacobs case [Jacobs v. International Multifoods Corp., 668 F.2d 1234, 212 USPQ 641 (CCPA 1982)] stands for the contrary proposition, and in light of the very large number of restaurants in this country and the great variety in the names associated with those restaurants, the potential consequences of adopting such a principle would be to limit dramatically the number of marks that could be used by producers of foods and beverages.

The Board has found the requisite "something more" in cases where: (1) the applicant's mark made clear that its restaurant specialized in registrant's type of goods (e.g., GOLDEN GRIDDLE PANCAKE HOUSE confusable with GOLDEN GRIDDLE for table syrup); (2) registrant's wines were sold in applicant's restaurant (OPUS ONE); and (3) registrant's mark was found to be "a very strong, unique mark" (MUCKY DUCK).

The examining attorney submitted excerpts from ten third-party websites showing use of the same mark for distilled spirits and restaurant or bar services, and from applicant's own website where it offers "Black Shirt Bourbon." Applicant argued that this evidence was inadequate because it did not constitute a sufficient sample of the market. According to applicant, there are more than 1300 craft distilleries and 5000 craft breweries in this country, and only a handful of brewpubs and taprooms distill their own spirits.

The Board agreed with applicant: "the evidentiary record does not support finding that consumers are likely to conclude that spirits and taproom and brewpub services with similar marks emanate from the same source." It noted that in Coors the CAFC found that the degree of overlap between the sources of restaurant services and beer was de minimis.

The Board concluded that the USPTO had failed to satisfy the "something more" requirement, and so it ruled that the involved goods and services are not related and it reversed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: How did you do? Is BSB pronounced "bizbee"?

Text Copyright John L. Welch 2017.

Friday, November 10, 2017

TTAB Orders Cancellation of CROC-TAIL Registration: Nonuse and Abandonment

The Board granted a petition for cancellation of a registration for the mark CROC-TAIL & Design for “alcoholic beverages, namely, ready to drink mixed alcoholic drinks; alcoholic beverages containing more than one and two-tenth % of alcohol by volume, namely, ready to drink mixed drinks based on distilled spirits,” on the ground of abandonment and nonuse. In prior TTAB rulings in the case, the Board held that a Section 66(a) registration may be cancelled even though the International Registration is still viable (TTABlogged here), and it granted Saddle Springs' motion to add a fraud claim (TTABlogged here). SaddleSprings, Inc. v. Mad Croc Brands, Inc., Cancellation No. 92055493 (November 8, 2017) [not precedential] (Opinion by Judge Karen Kuhlke).

Respondent sells an energy drink called MAD CROC, mostly to distributors for resale in bars and restaurants. It obtained its U.S. Registration for the CROC-TAIL & Design mark on February 20, 2007. Because the registration issued under Section 66(a), the earliest date on which the three-year presumption of nonuse/abandonment may be triggered is three years after the registration date.

Mad Croc contended that, although it did not sell alcoholic beverages to the consuming public, sales of the goods were made by its licensees - i.e., bars that prepare the CROC-TAIL brand alcoholic drink - according to respondent's guidance and instructions pursuant to verbal agreements with the licensees. Furthermore, since it did not itself sell alcoholic beverages, it did not need any governmental certification or permit. Mad Croc's witness testified that Respondent does not sell any alcoholic beverages.

The Board concluded that the mark was not in use in commerce and was abandoned:

The cocktails sold at third-party bars and restaurants are not Respondent’s goods and these third parties are not related companies, as contemplated by the Trademark Act. Moreover, Respondent’s activities were clearly directed at promoting the sales of its energy drink sold under the MAD CROC mark. Finally, Respondent’s asserted activities do not evidence an intent to commence or resume use. In view of the lack of use for over three years since the date of registration and no intent to commence use, Petitioner has established its abandonment/nonuse claims.

The Board declined to reach the fraud claim.

Read comments and post your comment here.

TTABlog comment: MAD CROC is not a registered trademark, according to my search of the USPTO records. Why not?

Text Copyright John L. Welch 2017.

Wednesday, November 08, 2017

TTABlog Reaches its 13th Anniversary!

The TTABlog was launched on November 8, 2004, with a blog post entitled "Leo Stoller Loses Again" (here). Remember him? Here we are, thousands of blog posts (and nearly 10,000 tweets) later.  Thank you to all you readers!  Maybe I'll see you at INTALM !

Read comments and post your comment here.

Text Copyright John L. Welch 2017.

Tuesday, November 07, 2017

TTAB Orders Cancellation of AMIGOS FOODS Registration, Third-Party Evidence Fails

The Board granted a petition for cancellation of a registration for the mark AMIGOS FOODS for "Wholesale distributorships featuring meat products" [FOODS disclaimed], on the ground of likelihood of confusion with Petitioner's identical, common law mark AMIGOS FOODS for "Prepared Tortillas, Taco Sauce, Picante Sauce (Hot Sauce) and Taco Shells" and "Manufacturing and Packaging Food to the Order and Specification of Others." Respondent argued that AMIGOS FOODS is extremely weak in view of numerous third-party registrations and uses, but the Board found that evidence inadequate. Durrset Amigos, Ltd. d/b/a Amigos Foods v. Amigos Meat Distributors, L.P., Cancellation No. 92060896 (November 3, 2017) [not precedential] (Opinion by Judge T. Jeffrey Quinn).

There was no dispute that Petitioner has standing and priority of use. Petitioner first used the AMIGOS FOODS mark in 2001, nine years before Respondent's first use date.

The Board found the marks to be identical, or (as actually used by Petitioner) nearly so, and this factor weighed heavily in Petitioner's favor. The Board observed that, although the involved services are not identical, "manufacturing and packaging of food products, and their distribution, are part and parcel of the process of getting food from producers to the grocery store."

A grocery store purchasing agent, when ordering food to be produced and packaged from Petitioner under the mark AMIGOS FOODS, will be likely to mistakenly believe, upon encountering Respondent's distribution services of meat products under the mark AMIGOS FOODS, that the services are rendered by the same entity or that there is some affiliation or connection between them.

And so the Board found that the similarity of the services favors a finding of likely confusion.

The Board next found that the channels of trade overlap, since each party renders services "through grocer pipelines." The purchasers are the same: grocery stores. There was no evidence that different purchasing agents are responsible for different lines of products (e.g., private label Mexican food items versus meat). However, the buyers are likely to be relatively sophisticated, and this factor favored Respondent.

Invoking the CAFC's Juice Generation and Jack Wolfskin rulings, Respondent submitted 45 third-party registrations and applications for mark that include AMIGO or AMIGOS for goods or services "somewhat related to food," according to Respondent. It also provided Internet search results showing more than 90 restaurants with names that included AMIGOS, a Google search of "amigos" and "food" showing more than 90 websites and other examples of various AMIGO marks in use in connection with "food-related goods and services." The Board was not impressed.

First, the evidence did not show extensive registration or use of AMIGOS marks "coexisting for the same or similar services as those involved herein." None showed use of AMIGOS in connection with the manufacture and packaging of food products.

Second, Juice Generation and Jack Wolfskin are distinguishable because there the involved marks were not identical.

Respondent has not pointed to any record evidence to support a finding that multiple third parties use any AMIGOS mark, let alone AMIGOS FOODS for services similar to manufacturing and packaging food to the order and specification of others. (citation omitted). Indeed, Mr. Moreno [Respondent’s General Manager] stated that other than Petitioner, he is not aware "of any companies by the name Amigos Foods."

To the extent that this evidence did demonstrate any weakness in Petitioner's mark (which the Board found not to be the case), that weakness is outweighed by the other du Pont factors.

The Board rejected Petitioner's claim of actual confusion because the testimony of its witness, Mr. Moreno, as to what its employees encountered was hearsay. Finally, the Board found Petitioner's survey evidence to be of little probative value due to the poor design of the surveys.

On balance, the Board found that the relevant du Pont factors weighed in favor of a finding of likelihood of confusion, and so it granted the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: Some TTAB decisions give a narrow reading to Juice Generation and Jack Wolfskin. This is one of them. I'd like to see one of those cases go up to the CAFC.

Text Copyright John L. Welch 2017.