Test Your TTAB Judge-Ability: Is STORMWATER NEUTRAL Merely Descriptive of Environmental Consulting?

Keiser & Associates sought to register the mark STORMWATER NEUTRAL for "environmental consulting in the field of environmental service regarding engineering protocols for ascertaining and quantifying net-zero stormwater loading status following implementation of best management practices with respect to a quantifiable baseline condition for a physical stormwater drainagearea," but Examining Attorney Linda E. Blohm refused registration on the ground of mere descriptiveness under Section 2(e)(1). Keiser appealed, arguing that some degree of imagination is required to associate the mark with its services, and that competitors have no need to use the mark exact terminology in describing their own services. How do you think this came out? In re Keiser & Associates, LLC, Serial No. 85576511 (January 22, 2014) [not precedential].

The examining attorney argued that applicant's services "are for quantifying, and achieving 'stormwater neutral' loading status," that is, "the overall effect of stormwater on the environment is neither beneficial nor harmful."

The most probative evidence came from third-party websites showing use of the terminology "stormwater neutral" in the environmental field. For example:

The gardens will capture rainwater in the ponds. The water will be used by the plants in the ponds and will infiltrate into its native soil, making the site storm water neutral. (examiner.com)

These websites convinced the Board that the term "stormwater neutral" is "commonly used and understood in the environmental field to describe the treatment of stormwater runoff to neutralize its impact, thereby resulting in a site that is known as 'stormwater neutral.'"

Both applicant and the examining attorney submitted third-party registrations, but in view of the website evidence the Board saw no need to focus on "how the Office has treated (at times, inconsistently) the terms 'stormwater' or 'neutral' in the past." Moreover, the Board is not bound by the decisions of examining attorneys in other cases, but rather must decide each case on its own facts.

No imagination is required by a prospective purchaser or user to discern that a purpose or feature of applicant's environmental consulting services is to provide advice to achieve a condition known and understood as 'stormwater neutral.' That is, applicant's consulting services feature practices that render neutral the impact of runoff of stormwater.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog note:  Is this another WYHA? Sometimes when I'm in the middle of a blog post concerning a really boring case like this one, I just want to throw in the towel and quit blogging altogether.

Text Copyright John L. Welch 2014.

Test Your TTAB Judge-Ability: Are "ENDORPHINS" and "ENDORPHIN & Design" Confusable for Clothing?

Applicant Adam Khatib sought to register the mark ENDORPHINS for "hats; sweatshirts; t-shirts; tank tops," but Examining Attorney David Yontef refused registration on the ground of likelihood of confusion with the registered mark ENDORPHIN & Design (shown below) for various clothing items, including hats and t-shirts. Khatib appealed, arguing that the term ENDORPHIN is a weak-formative in view of seven existing registrations, two of which were for clothing: ENDORPHIN WARRRIOR; GOT ENDORPHINS?; ENDORPHIN SPORTS; SWIM WITH THE ENDORPHINS; EF ENDORPHIN FITNESS; ENDOMONDO FREE YOUR ENDORPHINS; AND NDORFNZ. How do you think this came out? In re Adam Khatib, Serial No. 85556033 (January 22, 2014) [not precedential].

The goods of the application and cited registration overlap, and the Board must presume that these goods travel through the same channels of trade to the same classes of consumers. The goods may be inexpensive and purchased without a great deal of care. All of these factors favored a finding of likely confusion.

As to the marks, the word ENDORPHIN is the dominant portion of the cited mark, since the stylization and design element are minimal. To the extent consumers would recognize the design as "a molecular design of the chemical endorphin," that merely visually represents the word ENDORPHIN and does not distinguish the marks. The Board concluded that the marks are sufficiently similar in appearance, sound, meaning, and connotation that confusion is likely to occur.

As to the seven registrations submitted by applicant, none of them consist of the words ENDORPHIN or ENDORPHINS alone or with a minimal design element. Five of the registrations are for services, not clothing, and the two for clothing (ENDORPHIN WARRIOR and GOT ENDORPHINS?) are for marks that create commercial impressions that are "quite different from" applicant's and registrants' marks. Moreover, third-party registrations are of limited value in the absence of evidence of use of the marks and of the public's familiarity with them.

And so the Board concluded that confusion is likely, and it affirmed the refusal to register.

Read comments and post your comment here.

TTABlog note:  So how did you do? Do you think this is a WYHA?

Text Copyright John L. Welch 2014.

Precedential No. 2: In Concurrent Use Ruling, TTAB Okays Nationwide Registration Even Though Services Never Performed in NYC or CT

In a rare, contested, concurrent use proceeding, the Board ruled that Defendant Trilobite, Ltd. was entitled to an unrestricted federal registration for its mark TRILOBITE for audio and video recording and production services. The concurrent use application of Peter Turdin, Jr., seeking registration of the mark TRILOBITE PICTURES for "motion picture film production, and animation services," and restricted to New York City and Connecticut, was refused because Turdin was unable to establish that there was no likelihood of confusion if the involved marks were concurrently used in these two areas. Turdin, Jr. v. Trilobite, Ltd., 109 USPQ2d 1473 (TTAB 2014) [precedential].

Turdin filed his application on April 4, 2009, less than a month after Trilobite's filing date. Turdin's application was suspended in view of a likelihood of confusion with Trilobite's mark. When Trilobite's applications were published, Turdin opposed on the ground of likely confusion with his mark. He then amended his application to one seeking a concurrent use registration. The Board consolidated the two oppositions and, after Turdin's application had survived publication without opposition, the Board granted Turdin's motion to convert the oppositions to a concurrent use proceeding. See TBMP Section 1113.01.

To establish his right to a concurrent use registration for Connecticut and New York City, Turdin had the burden to show that (1) he made lawful concurrent use of TRILOBITE in commerce prior to the filing date of Trilobite Ltd.s application, and (2) that confusion, mistake, or deception is not likely to result from his continued use of TRILOBITE PICTURES in the areas in which he currently uses his mark.

The evidence confirmed that Turdin began using his mark (in Connecticut) prior to Trilobite Ltd.'s filing date, and there was no evidence that his adoption of the mark was not in good faith or that he had knowledge of Trilobite's prior use of TRILOBITE. Thus Turdin satisfied the first element of the test.

A central question was whether both parties are using their marks in the same territories. If the trading territories overlap, that precludes the granting of concurrent use registrations.

Turdin established that he used his mark in Connecticut (his home state) and New York City. Trilobite Ltd. (apparently headquartered in Ohio) maintained that it works with companies that produce content for cable television shows, and has "a lot" of clients "in" New York City. Turdin argued that Trilobite's activities did not constitute use of the mark in New York City because its services are not performed there. Some of Trilobite's invoices were addressed to business in New York City, but they were not for services actually performed there.

Citing First Niagara [TTABlogged here] the Board pointed out that Trilobite's services "need not be actually performed in New York City to find, for our purposes, that it has used TRILOBITE in New York City."

[W]e find that Trilobite has used and continues to use its mark in New York City by virtue of its correspondence, contracts, billing and interaction with clients in New York City, and that it used its mark in New York City prior to Turdin’s use of his mark in New York City.

Turning to Connecticut, the evidence was insufficient to establish that Trilobite used its mark in Connecticut. Trilobite, in turn, asserted that Turdin was using his mark in other locations as well, where there is a likelihood of confusion with its mark. The Board, however, found Turdin's use outside of New York City and Connecticut to be de minimis.

The Board next considered whether there exists a likelihood of confusion from the parties use of their respective marks in New York City. Applying the duPont factors, the Board not surprisingly found the services overlapping in part (animated videos) and otherwise related, and the channels of trade and classes of customers to be the same. Turdin disclaimed the word PICTURES in his mark, and so the dominant portion of his mark is identical to the Trilobite's mark.

The Board therefore found that confusion is likely between the two marks when used in New York City.

What about Connecticut? Is Connecticut "sufficiently distinct geographically that confusion would not arise"? The Board applied the Weiner King factors to Trilobite's use of its mark: (1) previous business activity; (2) previous expansion or lack thereof; (3) dominance of contiguous areas; and (4) presently planned expansion.

There was no evidence that Trilobite Ltd. had any previous business activity in Connecticut, and no evidence of any significant business in states contiguous to Connecticut (other than in New York City). However, its president testified that there is "quite an overlap of people who live in the Connecticut area and work in New York, so I find that sometimes I don't know if they're in Connecticut actually or in New York."

Turdin had the burden to show a lack of confusion under concurrent use of the marks. He failed to persuade the Board that confusion is not likely "if Turdin is granted Connecticut as part of his concurrent use territory."

Therefore the Board ruled that Turdin's concurrent use application must be refused, and that Trilobite Ltd. is entitled to unrestricted registrations for the entire United States.

Read comments and post your comment here.

TTABlog note:  How would Turdin prove the negative: that confusion was not likely in Connecticut? Trilobite Ltd. was awarded NYC even though it never performed services there, and it won Connecticut even though it never even sent any bills or correspondence there. Although Turdin may have had the ultimate burden of proof, shouldn't Trilobite at least have the burden of coming forward with prima facie evidence showing a likelihood of confusion in Connecticut? Was the self-serving and rather vague testimony of its president enough for a prima facie case? How about some concrete proof that someone in Connecticut actually heard of Trilobite Ltd.?

Text Copyright John L. Welch 2014.

What is the Likelihood of TTAB Affirmance of a Section 2(e) Refusal?

I reviewed the TTAB's FOIA page in an attempt to determine, or at least estimate, the percentage of various Section 2(e) refusals that are affirmed by the Board in calendar year 2013. I counted 167 such decisions, of which 148 were Section 2(e)(1) mere descriptiveness rulings. Of the remaining 19, 4 were Section 2(e)(1) deceptively misdescriptive refusals, and the other 15 were scattered among Sections 2(e)(2) (primarily geographically descriptive), 2(e)(3) (primarily geographically deceptively misdescriptive), 2(e)(4) (primarily merely a surname), and 2(e)(5) (functional), as discussed below.


Starting with the Section 2(e)(1) mere descriptiveness refusals, the Board affirmed 126 out of 148, for an affirmance rate of 85.1 percent. Only one of these decision was precedential: In re Positec Group Limited, 108 USPQ2d 1161 (TTAB 2013) [precedential], deeming the mark SUPERJAWS to be merely descriptive of machine tools and hand tools, including jaws and metal vice jaws. [TTABlogged here].

All four of the Section 2(e)(1) deceptively misdescriptive cases were affirmed (WHITE JASMINE, AOP, GREEN SEAL, and BR MONOGRAM). The first two were precedential decisions: In re White Jasmine LLC, 106 USPQ2d 1385 (TTAB 2013) [TTABlogged here] and In re AOP LLC, 107 USPQ2d 1644 (TTAB 2013) [TTABlogged here].

Of the five refusals under Section 2(e)(2), geographical descriptiveness, only one was affirmed (NEWBRIDGE HOME). The four that were reversed were ASHBURN, ACHOUFFE, BLUE RIDGE, and KAPALUA. [Perhaps the PTO examining corps could use a refresher course on Section 2(e)(2)?]

The single Section 2(e)(3) refusal (primarily geographically deceptively misdescriptive) was reversed (SW3 UK).

Of the three Section 2(e)(4) surname refusals, two were affirmed (MERLO'S and MOTT'S) and one was reversed (JAKEMANS).

Finally, four of the six Section 2(e)(5) refusals were affirmed (clear plastic game package, black packaging for floral arrangements, peppermint flavor for nitroglycerin spray, and pet food container). The two reversals involved a woven leather pattern for handbags and the sound of three clicks for eyeglass frames. Three of the 2(e)(5) decisions were precedential: black floral packaging in In re Florists’ Transworld Delivery, Inc., 106 USPQ2d 1784 (TTAB 2013) [TTABlogged here]; peppermint flavor for nitroglycerin in In re Pohl-Boskamp GmbH & Co. KG, 106 USPQ2d 1042 (TTAB 2013) [TTABlogged here]; and the pet food container in In re Mars, Inc.,  105 USPQ2d 1859 (TTAB 2013) [TTABlogged here].

Read comments and post your comment here.

TTABlog note: Last year, the mere descriptiveness affirmance rate was about 82%. For last year's estimates, go here. 

Text copyright John L. Welch 2014.

Precedential No. 1: Fame of SHAPE Magazine Yields 2(d) Opposition Victory over SHAPES for Beauty Salons

The fame of the registered mark SHAPE for print and online magazines and for related online Internet content weighed heavily in opposer Weider's favor in its opposition to registration of the mark SHAPES for beauty salon, nail care, and health spa services. The Board sustained this opposition on the ground of likelihood of confusion under Section 2(d), declining to reach opposer's dilution-by-blurring claim. Weider Publications, LLC v. D & D Beauty Care Company, LLC, 109 USPQ2d 1347 (TTAB 2014) [precedential].

Opposer's SHAPE magazine focuses on health, fitness, beauty, and fashion. Its average monthly circulation of 1.65 million copies puts it in first place among women's active lifestyle magazines, and fourth among magazines directed to young women. The SHAPE.COM website receives about three million visitors per month. Across all platforms, opposer's SHAPE publications reach some six million people monthly, the vast majority of whom are women. Opposer periodically sponsors live events under its SHAPE mark, at which various beauty services are provided. Its annual revenues since 2009 have been substantial.

Applicant D&D's typical customers are, not surpisingly, women. It offers its services under the registered mark SHAPES BROW BAR. The opposed application for the mark SHAPES was filed on the basis of Section 1(b) intention to use.

The Board first considered the issue of fame, observing that fame plays a "dominant role in likelihood of confusion cases." Because of the significance of the fame factor in the duPont analysis, the party asserting fame must clearly prove it.

The Board pointed out that fame for Section 2(d) purposes is a concept distinct from fame for dilution purposes. For likelihood of confusion, the opposer need not show fame "among every segment of the U.S. population." It is enough that a "significant portion of the relevant consuming public ... recognizes the mark as a source indicator." 

Applicant D&D argued that opposer's evidence was inadequate because there was no evidence regarding "the impact of [the] SHAPE mark on the minds of consumers" (e.g., declarations from consumers or survey results) and no evidence of unsolicited media attention. Fame under Section 2(d), however, may be measured indirectly via sales and advertising figures, length of use, general reputation, and the like. There is no requirement that a party submit declarations, surveys, evidence of unsolicited media references, or other direct evidence.

The Board observed that, based on the record evidence, advertisers place a premium on advertising in SHAPE magazine. Opposer has a substantial online presence through its website and its apps for smart phones, tablets, and computers, allowing opposer to expand the reach of its brand exposure. Its magazine articles have won numerous editorial awards, and its representatives have appeared on nationally recognized television shows.

The Board therefore found that opposer's SHAPE marks (in standard character and stylized form) are, for purposes of the likelihood of confusion analysis, famous for print and online magazines and for related online Internet content.

Applicant understandably did not contest the issue of the similarity of the marks. As to the involved goods and services, the Board found helpful its decision in The Conde Nast Publications Inc. v. Vogue Travel, 205 USPQ 579 (TTAB 1979), wherein it found a likelihood of confusion between Conde Nast's magazine trademark VOGUE and the opposed mark VOGUE for travel agency services, based on the fact that the topic of travel was a significant feature of the magazine. Here, approximately 35 percent of opposer's editorial content deals with beauty and fashion related topics, and 30 percent of its advertising content is directed to that same field. In addition, the magazine has included reviews of health and beauty spas, and opposer has cross-promoted its magazine with spa operators and has offered giveaway prizes to spa destinations.

The Board found that the "logical underpinnings of Conde Nast are equally, if not more relevant in the digital age with the delivery of magazines now available via websites and mobile apps." It therefore found a close relationship between the content of SHAPE magazine and the services identified by applicant.

The Board acknowledged that the goods of opposer and the services of applicant travel in distinct trade channels. However, both applicant and opposer target the same demographic audience: women. There was no evidence that applicant's consumers are particularly deliberate in making their purchasing decisions.

Applicant pointed to use of the word "shape" in third-party applications and at third-party websites, arguing that opposer's marks are weak. The Board noted, however, that pending applications have no probative value, and it observed that the third-party uses were in unrelated fields or involved multi-word composite marks that conveyed different commercial impressions from opposer's mark. Even though SHAPE has some suggestive significance in opposer's field of interest, opposer has achieved such a degree of fame that the mark SHAPE "signifies only opposer as the source."

Finally, applicant D&D pointed to the lack of proof of actual confusion despite concurrent use of the involved marks since 2007. The Board pointed out, once again, that the test is likelihood of confusion, and proof of actual confusion is not required. In any case, applicant uses the mark SHAPES BROW BAR, not SHAPES, and the recitation of services in the opposed application is broader than that in the SHAPES BROW BAR registrations.

Balancing the relevant duPont factors, the Board found confusion likely, and it sustained the opposition on the Section 2(d) ground.

Read comments and post your comment here.

TTABlog note:  I wonder what magazines applicant B&B has laying around its beauty salons?

Text Copyright John L. Welch 2014.

ABA Webinar: TTAB Tips on Motions for Summary Judgment

The American Bar Association will host a webinar on Thursday, February 13th, commencing at 1:00 PM (EST), entitled "Trademark Trial and Appeal Board (TTAB) Tips: Motions for Summary Judgment." For more details and registration, go here.

* What are motions for summary judgment at the TTAB (form, function, possible claims)
* What is the timing of filing motions for summary judgment
* Do's and Don'ts in summary judgment motions
* What issues are appropriate for resolution summary judgment
* What is a partial motion for summary judgment
* How can accelerated case resolution (ACR) work with motions for summary judgment
* Rule 56(d) motions for additional discovery
* Participant questions on summary judgment motions and related topics

Speakers:


Hon. Michael Adlin, Administrative Trademark Judge, United States Patent and Trademark Office, Trademark Trial and Appeal Board, Alexandria, VA

Cheryl Butler, Senior Counsel for TTAB Policy and Procedure, United States Patent and Trademark Office, Trademark Trial and Appeal Board, Alexandria, VA

Cheryl Goodman, Interlocutory Attorney, United States Patent and Trademark Office, Trademark Trial and Appeal Board, Alexandria, VA

Rebeccah Gan (Moderator), Of Counsel, Young & Thompson, Alexandria, VA

Test Your TTAB Judge-Ability: Is HAUTE MESS for Hair Products Confusable with HOT MESS for Sun Tan Products?

Applicant Product Innovations Research LLC sought to register the mark HAUTE MESS for various hair care products, but the PTO refused registration, finding the mark likely to cause confusion with the registered mark HOT MESS for various sun tan products. Applicant appealed. How do you think this mess came out? In re Product Innovations Research LLC, Serial No. 77912065 (January 22, 2014) [not precedential].

Third-party website evidence showed that consumers may see the involved goods offered under the same trademark, and several third-party registrations included both types of goods. Online stores sell both types of products, and so the Board concluded that the channels of trade and classes of consumers overlap. The Board found that these duPont factors favored a finding of likely confusion.

As to the marks, the Examining Attorney argued that HAUTE MESS and HOT MESS are phonetically similar, since HAUTE is often mispronounced as HOT. Applicant argued that the terms have "verifiable pronunciations that are demonstrably different from each other." The Board recognized that the marks sound different when pronounced correctly, but the record "does support a finding that despite the verifiable pronunciation, potential customers may still pronounce HAUTE as HOT."

Nonetheless, the Board found the elements of meaning and commercial impression to be pivotal. There was no dispute that HOT MESS is a "well-known expression referring to a certain state [of] appearance or behavior." In contrast, HAUTE means "fashionable or high-class as in HAUTE COUTURE."

The obvious double entendre in applicant’s mark creates a very different meaning and humorous play on words wholly absent from registrant’s mark. In addition, registrant’s mark HOT MESS used in connection with its skin care creams directed to tanning and sun protection evokes the literal meaning of HOT (sun) and MESS (creams), or, as applicant states, "draws associations to the heat of the sun or a tanning lamp" (App. Br. p. 7) -- meanings that are wholly absent from applicant’s mark used in connection with the hair care products. While both marks may reference the slang meaning of HOT MESS, in the context of their respective goods, the shared phrase has a very different commercial impression due to each of their separate and distinct secondary meanings.

Thus considering each mark in the context of its goods, the Board found confusion not likely, and it reversed the refusal to register.

Read comments and post your comment here.

TTABlog note:  Did you mess up?

Text Copyright John L. Welch 2014.

Test Your TTAB Judge-Ability: Are These Two Avian Design Marks Confusable for Clothing?

Michael R. Longshore sought to register the mark shown below left, for various clothing items, but Retail Royalty opposed, claiming a likelihood of confusion with its registered mark shown below right, for overlapping clothing items (jackets, shirts, pants, footwear and headwear being included in both the opposed application and the registration). Did the application take flight? Or was it shot down by opposer? Retail Royalty Company v. Michael R. Longshore, Opposition No. 91192917 (January 21, 2014) [not precedential].

Applicant Longshore feebly argued that its clothing line is "inspirational wear," but there was no such limitation in his application, nor was the cited registration restricted to non-inspirational clothing. Moreover, since the goods overlap in part, the Board must presume that the involved goods move in the same channels of trade to the same classes of consumers.

Applicant argued that opposer's mark is weak because there are numerous bird marks in use for clothing, but his proof consisted of one website with no evidence regarding customers or trading area or website views. In any case, a single third-party use of a mark (HOLLISTER CALIFORNIA & Design) that includes a silhouette of a bird is not enough to show that opposer's mark is weak. And so the Board found opposer's mark to be arbitrary and inherently strong.

Turning to the marks, the Board noted for the umpteenth time that when the goods are identical, a lesser degree of similarity between the marks is needed to support a finding of likely confusion. When the marks in issue are design marks, the test for similarity is (not surprisingly) a visual one.  Moreover, side-by-side comparison of the two marks is not the test: the proper focus is on the average consumer who retains a general rather than a specific impression of the marks.

Here, specific differences between the marks are detectable when they are placed side-by-side. Even then, however, they engender similar commercial impressions: a dove in flight with wings spread. Noting that the marks are arbitrary when used for clothing, the Board found the marks to be similar in appearance and commercial impression.

And so the Board sustained the opposition.

Read comments and post your comment here.

Text Copyright John L. Welch 2014.

What is the Likelihood of TTAB Affirmance of a Section 2(d) Likelihood of Confusion Refusal?

I reviewed the TTAB's FOIA page in an attempt to estimate the percentage of Section 2(d) likelihood-of-confusion refusals that were affirmed by the Board during the calendar year 2013. I counted 260 Section 2(d) refusals, of which 219 were affirmed and 41 reversed. That's an affirmance rate of 84.1%. So let's say the odds are 5 out of 6 for affirmance. [Last year, the affirmance rate was about 90%, according to the TTABlog posting here].



Only two of the decisions were precedential: The first was In re Sela Products, LLC, 107 USPQ2d 1580 (TTAB 2013) [TTABlogged here], in which the Board affirmed a Section 2(d) refusal of the mark SFORZA for mounting brackets and accessories for speakers and televisions, in view of the registered mark FORZA POWER TECHNOLOGIES for surge protectors and other electrical items. In the same decision, however, it reversed a refusal of SFORZA over the registered mark FORZA MILAN! ACM 1899 & Design, for various goods, including optical and electrical cables and sound and image recording and transmission apparatus. In the first refusal, Sela argued that certain statements made in the file history of the cited registration should be considered by the Board, but the Board pointed out that the file history was not made of record, and even if it had been, those statements were made in a very different context: an attempt to distinguish the FORZA TECHNOLOGIES MARK over a citation of the mark FORZA for a hydrogen fuel cell power generator.

The second precedential decision was In re Midwest Gaming & Entertainment LLC, 106 USPQ2d 1163 (TTAB 2013) [TTABlogged here], wherein the Board affirmed a refusal to register the mark LOTUS for "bar services located in a casino," finding it likely to cause confusion with the identical mark registered for "providing banquet and social function facilities for special occasions; restaurant and bar services." Applicant Midwest argued that the "restaurant and bar services" of the cited registration must be considered in the context of the entire recitation of services and therefore read narrowly to be services offered in connection with "banquet and social function facilities for special occasions." The Board disagreed.

Three Section 2(d) decisions are on appeal to the CAFC:

In re St. Helena Hospital, Appeal No. 14-1009 (Serial No. 85416343, June 25, 2013). 

In re BabyCakes NYC, Inc, Appeal No. 13-1659 (Serial No. 85214746, July 23, 2013).

In re Waves Licensing, LLC, Appeal No. 14-1202 (Serial No. 85437501, September 30, 2013).

NB: Some cases involved a mark in standard character form and in stylized or design form, and I counted that situation as one refusal. Also some cases included a refusal of the mark over two different registered marks. I counted that as one affirmance when both refusals were affirmed, or one reversal if both were reversed.

Read comments and post your comment here.

Text Copyright John L. Welch 2014.

The Top Ten TTAB Decisions of 2013 [Part Two]

The second half of the TTABlog's "top ten" list of 2013 decisions includes two decision on appeal to the CAFC (In re Tam and Alcatraz v. Chesapeake), and one the subject of a Section 1071(b) civil action for review (U. of Alabama v. Pitts). Part One of the Top Ten list may be found here.



Caymus Vineyards v. Caymus Medical, Inc., 107 USPQ2d 1519 (TTAB 2013) [precedential].[TTABlogged here]. The Board denied opposer’s motion to dismiss applicant’s counterclaim for cancellation of a registration for the mark CAYMUS for wine, on the ground of fraud, ruling that applicant’s pleading was adequate to state a claim. However, the Board granted opposer’s motion to dismiss applicant’s second counterclaim, which was based on Section 2(e)(2) geographic descriptiveness, because it was barred by the 5-year statute of limitations embodied in Section 14 of the Trademark Act. As to fraud, the examining attorney had asked opposer, when an applicant, whether CAYMUS had “any geographical significance or any meaning in a foreign language.” Applicant here alleged that opposer knowingly, and with deceptive intent, failed to disclose that CAYMUS “had primarily geographic significance, and that [opposer's] grapes are grown and/or its wine is produced near or at the Caymus locale.” Opposer maintained that “CAYMUS” has no geographic, but only historical and cultural significance, but the Board pointed out that this assertion was irrelevant to whether applicant had properly stated a claim of fraud. Instead, it constituted a response on the substantive issue. With regard to applicant’s Section 2(e)(2) counterclaim: applicant maintained that because of opposer’s fraud, the Section 14 bar to cancellation should not apply to its claim of geographic descriptiveness. The Board disagreed.

The Board of Trustees of The University of Alabama and Paul W. Bryant, Jr. v. William Pitts, Jr. and Christopher Blackburn, 107 USPQ2d 2001 (TTAB 2013) [precedential].  [TTABlogged here]. In a 78-page opinion, the Board dismissed this opposition to registration of the mark depicted below for “shirts, caps” [HOUNDSTOOTH disclaimed], denying opposers’ claims of likelihood of confusion under Section 2(d), and false suggestion of a connection and disparagement, both under Section 2(a). Opposers based their opposition principally on the alleged extensive use of a houndstooth pattern that identifies Coach Paul “Bear” Bryant and the University of Alabama’s goods and educational and athletic services. Likelihood of Confusion: Although Coach Bryant was recognized for wearing patterned fedoras at the University’s football games, that fact “does not endow either Coach Bryant (including his estate) or the University with trademark rights in the Houndstooth Pattern.” False Suggestion of a Connection: The Board focused on the “key factor” in the Section 2(a) false suggestion analysis: “whether applicants’ mark is a close approximation of opposers’ name or identity…” The Board found no basis for concluding that applicants’ mark closely approximates the identity of Bryant or the university. Disparagement: Opposers contended that the mark is disparaging and brings them into contempt and disrepute because “mafia” refers to a criminal organization, but the Board disagreed.

In re Simon Shiao Tam, 108 USPQ2d 1305 (TTAB 2013) [precedential]. [TTABlogged here]. The Board affirmed a Section 2(a) refusal to register the mark THE SLANTS for “entertainment in the nature of live performances by a musical band,” finding that the mark, when used in connection with applicant’s services, would be perceived as disparaging to a substantial composite of the referenced group, namely persons of Asian descent. Relying on dictionary definitions, online articles, and applicant’s own webpage and Wikipedia entry, the PTO maintained that THE SLANTS is a highly disparaging term to people of Asian descent, that it retains that disparaging meaning when used in connection with applicant’s services, and that a substantial composite of the referenced group finds it to be disparaging. Applicant contended that the word “slant” has several meanings and is therefore not “inherently disparaging.” He challenged the propriety of the PTO’s consideration of the manner in which applicant used the mark, asserting that the refusal was “dependent on the identity of the person, rather than the content of the application,” and maintaining that the PTO improperly considered applicant’s ethnicity and his use of the mark in reaching its conclusion. Applying the two-part test of In re Lebanese Arak Corp., 94 USPQ2d 1215, 1217 (TTAB 2010), and then observing that the refusal to register does not affect applicant’s right to use the subject mark, but only his right to register, the Board affirmed the refusal.

In re Lululemon Athletica Canada Inc., 105 USPQ2d 1684 (TTAB 2013) [precedential]. [TTABlogged here]. The Board affirmed a refusal to register the mark shown below for “hooded sweatshirts; jackets; coats,” finding it to be merely ornamental and not functioning as a trademark. Because Lululemon’s application was not based on actual use, it could not claim acquired distinctiveness. Its attempt to prove inherent distinctiveness was unsuccessful, as was its assertion that the applied-for design serves as a secondary source indicator. Lululemon argued that the commercial impression of the mark is a distinctive design, and further that competitors use similar “large marks” on their clothing items. The Board observed that the large size of Lululemon’s design does not per se rule out registrability, but it found that the design “is rather simple and looks like piping.” The Board concluded that the design is “likely to be perceived by the public as merely ornamental.” Lululemon claimed that the mark serves as a secondary source indicator because it has registered and used the “same mark” on storefronts and other goods. The Board recognized that ornamentation on clothing (e.g., logos on T-shirts) may be of a “special nature which inherently tells the purchasing public the source of the T-shirt, not the source of manufacture but the secondary source,” but it found that the registered mark and the subject mark were not the same.

Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc. dba Watermark Cruises, 107 USPQ2d 1750 (TTAB 2013) [precedential]. [TTABlogged here]. The Board granted a petition for cancellation of a registration for ANNAPOLIS TOURS for “conducting guided tours of historic districts and other areas of cities,” finding the mark to be merely descriptive and lacking in acquired distinctiveness. The Board dismissed petitioner’s claims of genericness and fraud, but ruled that petitioner had met its ultimate burden to show that the mark is merely descriptive. As to genericness, the record was mixed with generic use and trademark use. The fraud claim failed because, even if respondent’s statements as to continuous and exclusive use were false, its president believed them to be true based on her own observations. As to mere descriptiveness, the Board found that petitioner had demonstrated that the subject mark is “highly descriptive,” and that, because respondent relied only on a statement of five-years of use, petitioner had satisfied its initial burden of making a prima facie showing of lack of acquired distinctiveness. The burden then shifted to respondent to “now prove acquired distinctiveness based on any ‘additional evidence or argument’ ..., keeping in mind that petitioner bears the ultimate burden of proof by a preponderance of the evidence.” The Board found respondent’s evidence insufficient and concluded that petitioner met its evidentiary burden.

Read comments and post your comment here.


Text Copyright John L. Welch 2014.

The Top Ten TTAB Decisions of 2013 [Part One]

For better or worse, yours truly, the TTABlogger, has once again chosen the ten TTAB decisions that he considers to be the most important and/or interesting from the previous calendar year. [This is the first of two posts, the first five entries being set out below. Additional commentary on each case may be found at the linked TTABlog posting]. The cases are not listed in order of importance, or in any particular order at all.



America’s Best Franchising, Inc. v. Abbott, 106 USPQ2d 1540 (TTAB 2013) [precedential]. [TTABlogged here]. In a rare, contested concurrent use proceeding, the Board awarded junior user ABF concurrent use registrations for the three marks shown below, for hotel and motel services, in the entire United States except for the State of Arizona. The Board ruled that although Roger Abbott was the first user of the mark 3 PALMS, his inaction over a considerable time amounted to an abandonment of his right to expand beyond his original trading area, “especially since ABF was the first to seek federal registration.” Abbott licensed his 3 PALMS mark to a single hotel in Scottsdale, Arizona, but he contended that Internet marketing had necessarily expanded his territory nationwide, or at least significantly beyond Arizona. Abbott first used his 3 PALMS mark in April 2004, whereas ABF began use in 2008 in Florida, unaware of Abbott’s use. It first learned of Abbott’s use in mid-2008 and subsequently reached service agreements with hotels in Indiana, South Carolina, Georgia, Michigan, and California. The question was whether confusion may be avoided by a geographic restriction, and the Board answered yes. It found that PALMS is a weak formative and that the localized nature of hotel services would make confusion unlikely between hotels in different locations. The fact that both parties advertise online did not mean that confusion was likely.

In re Florists’ Transworld Delivery, Inc., 106 USPQ2d 1784 (TTAB 2013) [precedential]. [TTABlogged here]. The Board affirmed two refusals to register the color black applied to packaging for flowers, finding the mark to be aesthetically functional under Section 2(e)(5). In In M-5 Steel Mfg. Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086 (TTAB 2001), the Board recognized that there are two forms of functionality: utilitarian and aesthetic. A design feature that does not meet the Inwood test for utilitarian functionality is still prohibited from registration if the exclusive appropriation of that feature would put competitors at a significant non-reputation related disadvantage. The Board agreed that the color black “serves an aesthetic function” when used for floral packaging; the evidence showed that color communicates particular messages in the presentation of flowers. The Board concluded that the PTO had demonstrated prima facie that competitors in the industry need to use the color black in connection with floral arrangements and flowers.

Central Garden & Pet Company v. Doskocil Manufacturing Company, Inc., 108 USPQ2d 1134 (TTAB 2013) [precedential]. [TTABlogged here]. In these complicated proceedings, Central Garden opposed Doskocil’s applications to register PETZILLA and DOGZILLA & Design, and petitioned to cancel Doskocil’s registration for DOGZILLA in standard character form, all for pet toys, claiming priority and likelihood of confusion with its twice-registered mark ZILLA for pet food and pet treats. The Board granted Doskocil’s first counterclaim for cancellation (improper assignment), dismissed its second counterclaim (likelihood of confusion), and dismissed Central’s oppositions and petition for cancellation (lack of priority). Central’s priority claim was based on the filing date of its intent-to-use application for ZILLA, but the Board, applying a strict construction of Section 10, concluded that the assignment of that application to Central’s own grandparent company violated that section, and therefore that the registration must be cancelled. With that, Central’s three likelihood of confusion claims failed. Doskocil’s Section 2(d) counterclaim against Central’s registration was a perfunctory, hypothetical claim and Doskocil argued at length that confusion was not likely, so the Board chose to “leave the parties as we found them, without reaching the merits of either party’s claim.”

City National Bank v. OPGI Management GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668 (TTAB 2013) [precedential]. [TTABlogged here]. The Board sustained a petition for cancellation of OPGI’s registration (issued under Section 44(e)) for the service mark TREASURYNET for “providing information on financial information, namely corporate treasury and loan information and commercial real estate property management information via a global computer network,” finding that OPGI had used the mark only internally and not “in commerce” and therefore had abandoned the mark. OPGI owns an intranet website whereby its employees may access an informational database identified as “TreasuryNet.” Third parties cannot directly access the information in the TREASURYNET database. OPGI relied on several decisions in which the provision of services to employees (administration of an annuity plan, in-house sales training) was deemed to be use of a mark in interstate commerce. The Board, however, pointed out that OPGI “is the real beneficiary and not its employees who are accessing the TREASURYNET database in order to perform their jobs.” The Board concluded that OPGI did not use TREASURYNET in commerce since at least the date of issuance of its registration, February 20, 2007, resulting in more than three years of nonuse and establishing a prima facie case of abandonment, which OPGI did not successfully rebut.

Embarcadero Technologies, Inc. v. RStudio, Inc., 105 USPQ2d 1825 (TTAB 2013) [precedential]. [TTABlogged here]. Prior to the close of discovery in this Section 2(d) opposition, Applicant RStudio moved under Rule 2.133 and Section 18 to narrow the descriptions of its software and related services in the opposed applications “in the event that the Board deems such amendments necessary to dismiss the opposition.” Applicant applied to register the mark RSTUDIO for goods and services identified in fairly broad terms, encompassing all types of statistical software and application development software, as well as training and design and development services. Its motion aimed to restrict its applications to the field of “advanced” statistical software using the “R” computer language and data from two dimensional datasets. Embarcadero alleged likelihood of confusion with its registered mark ER/STUDIO for “entity relationship modeling software for SQL databases.” The Board deferred ruling on the motion until final decision, ultimately finding that, taking into account applicant’s proposed amendments, there was no significant relationship between applicant’s software and services, as amended, and opposer’s software, and so it dismissed the opposition.


Read comments and post your comment here.

Text Copyright John L. Welch 2014.

Test Your TTAB Judge-Ability: Are BOW and BOWPERF Confusable for Lighting Fixtures?

Applicant Visionaire Lighting sought to register the mark BOW for "LED (light emitting diode) lighting fixtures," but Examining Attorney William T. Verhosek issued a Secion 2(d) refusal to register, deeming the mark confusingly similar to the registered mark BOWPERF for "lighting fixtures." The goods were legally identical, but are the marks that close? How do you think this came out? In re Visionaire Lighting LLC, Serial No. 85590109 (December 31, 2013) [not precedential].


Applicant Visionaire argued that its goods are used specifically in parking garages, but the Board observed that there was no such limitation in the identification of goods in the subject application, nor is the cited registration limited as to scope. Because the goods are legally identical (applicant's goods being encompassed by those of the registration), the Board must assume that they travel in the same, normal channels of trade to the same classes of customers.

Visionaire urged that its customers are "very savvy," but neither the application nor the registration is contains any limitation as to sophisticated purchasers. Nor was there any evidence that purchasers of LED lighting fixtures are better informed or more careful than ordinary consumers.

Turning to the marks, the Examining Attorney and applicant disagreed as to which portion of the BOWPERF mark is dominant. Applicant Visionaire asserted that the suffix "PERF" stands out in registrant's  mark because of its reference to perforations in registrant's goods. [Perhaps this was not a good move by applicant - ed.] The Examining Attorney maintained that BOW is dominant because consumers are generally more inclined to focus on the first part of a mark, and he also pointed to the evidence that PERF is suggestive or descriptive while there was no evidence that BOW is descriptive of the goods.

The Board agreed with the Examining Attorney because of the position of BOW as the initial element of the mark, the lack of meaning of BOW in the context of the goods, giving it greater significance as a source indicator, and the suggestiveness of PERF, which reduces its strength as a source indicator.

There is no reason to believe that BOW would be pronounced differently in the two marks. The mark BOWPERF has no apparent meaning, but applicant and the Examining Attorney "appear to agree" that PERF refers to the perforations in registrant's goods.

BOWPERF T5
Nothing in the record suggested that customers would ascribe some different meaning to BOW in applicant's mark than that of BOW in the registered mark.

The Board found that the overall commercial impressions created by the two marks are similar. Because of the admitted suggestiveness of PERF in the registered mark, "goods sold under the BOWPERF mark could be perceived as a line of BOW brand lighting fixtures having perforated features."

Balancing these pertinent duPont factors, the Board found confusion likely, and it turned out the light on the subject application.

Read comments and post your comment here.

TTABlog note:  So how did you do?

Text Copyright John L. Welch 2014.

Rendering of Hair Styling Services for Free to 4 Customers Established Priority in BLAST BLOW DRY Opposition

This Section 2(d) opposition boiled down to a question of priority of use. Applicant sought to register the mark BLAST BLOW DRY BAR & Design, shown below, for hair salon services [BLOW DRY DISCLAIMED], but opposer claimed a likelihood of confusion with its allegedly previously-used mark BLAST BLOW DRY for identical services. The Board found that opposer used its mark on December 8, 2011 (a mere two days before applicant's filing date) when it provided hair styling services, free of charge, to four persons attending a jewelry store's holiday party, with opposer’s stylists wearing clothing bearing the name BLAST BLOW DRY and distributing promotional materials during the event. That usage was sufficient to establish priority, and the Board sustained the opposition. Blast Blow Dry Bar LLC v. Blown Away LLC d/b/a Blast Blow Dry Bar, Opposition No. 91204769 (January 4, 2014) [not precedential].

Although in some cases, the rendering of services to only four persons would not constitute "use," the Board took into account "the low cost and limited nature of the parties' hair styling services, and the local nature of the parties’ businesses, which currently operate in single locations." [Opposer in Austin, Texas, and applicant in Minneapolis]. The Board also noted that three weeks later, opposer was paid for services rendered to a larger number of customers at its place of business, and use of the mark continued thereafter.

Applicant also engaged in a promotional event on that same date, December 8, 2011, which event ( a tennis program's holiday party) was attended by some 20 people not affiliated with applicant. During the event applicant demonstrated its "blow out" technique on one of applicant’s co-owners, and applicant's logo was displayed on a hard poster and on various promotional items distributed to attendees. But applicant did not couple its promotional efforts at the event "with the actual rendering of the involved services to potential customers."

That distinction is sufficient, under the facts of this case, for us to find that opposer established actual trademark use on December 8, 2011, while applicant’s purely promotional efforts before a small group of people were insufficient to establish either actual service mark use or use analogous to service mark use, leaving applicant to rely on the subsequent December 10, 2011 filing date of its involved application.

Both parties attempted to rely on use analogous to service mark use in order to establish priority. However, the Board observed, the parties’ "mere registration of their marks as domain names is not enough to establish service mark use or use analogous to service mark use where neither party operated an active website accessible through its domain name." Nor was the mere formation of a limited liability company.

Opposer distributed business cards and promotional materials, but there was no evidence regarding how many customers or potential customers were reached via these efforts. Applicant’s promotional efforts at the tennis program’s small holiday party on December 8th did not reach a sufficient number of people to constitute use analogous to service mark use.

Considered as a whole, the parties’ evidence falls short for the same reason. That is, even where the parties made open use of their names or marks, such as through a banner "on" opposer’s store or through promotional appearances at events, there is simply no evidence that these efforts reached a sufficient number of people, and we therefore cannot determine whether the parties’ efforts had an impact, much less a "substantial impact," on the purchasing public.

Therefore the Board found that neither party had established use analogous to service mark use. Since Opposer did establish actual use of its mark on December 8, 2011, it won the priority contest, and the Board sustained the opposition.

Read comments and post your comment here.

TTABlog note:  Note that "use" of a service mark requires the actual rendering of the services. Advertising and promotion may prove analogous use, provided that it is sufficiently widespread. What if you open a restaurant on day one, with signage out front, but no customer arrives until day two. Is the mark in use on day one? Is there use analogous to service mark use on day one?

Text Copyright John L. Welch 2014.

Test Your TTAB Judge-Ability on These Two "MOTHER EARTH" Design Marks for Beer

The PTO refused registration of the mark shown below left, for "beer, excluding both organic beer and beer comprised solely of organic components; brewed malt-based alcoholic beverage in the nature of a beer, excluding both organic beer and beer comprised solely of organic components" (class 32) and for "distributorships in the field of alcoholic beverages, excluding both organic beer and beer comprised solely of organic components" (Class 35) [BREWING disclaimed], finding it likely to cause confusion with the mark shown below right, for "beer comprised solely of organic components"  [BREW CO. disclaimed]. Applicant appealed. How do you think this came out? In re Mother Earth Brewing, LLC, Serial No. 77716598 (December 30, 2013) [not precedential].

The goods: Applicant argued that organic beer and non-organic beer are different, but the Board was unmoved: they are both "essentially the same goods." They use the same basic ingredients and are made by the same method. The record showed that both applicant and registrant make craft beer, organic being a subset. Craft beers are promoted together. Moreover, beer makers, both craft beer makers and mainstream beer makers, also make organic beer. [Even Anheuser-Busch makes organic beer].

In short, even if organic and non-organic beer are not identical, they are closely related for Section 2(d) purposes.

Applicant asserted that its beer is sold only at a particular store in San Diego, or at special events like the Vista Strawberry Festival, but the Board pointed out that there are no such limitations in the subject application. The Board must consider that registrant's goods travel in all the normal channels of trade for beer, which channels would include the same ones in which organic beer is sold.

Although the evidence showed that consumers of organic beer do not necessarily purchase mass-market beer, they do purchase craft beer, and craft beer falls within the applicant's identification of goods.

The marks: The literal portions of the marks are essentially identical. Applicant maintained that the design portions are sufficient to distinguish the marks, but the Board found that the designs project similar connotations and commercial impressions. Applicant's mark depicts a female head that consumers are likely to understand as personifying "mother earth," a nurturing figure. In the registered mark, the design suggest the earth as a nurturing place and the letters "ME" would be recognized as the initials for MOTHER EARTH, thereby reinforcing the connection with the words.

Moreover, "[w]hen marks consist of words and designs, the words are generally accorded greater weight because they would be used by purchasers to request the goods or services."

A patron in a bar is likely to ask for MOTHER EARTH beer, rather than the beer with the picture of a woman's head, or the beer with the tree and waterfall."

Applicant argued that MOTHER EARTH is a weak term, pointing to a dictionary definition and several third-party registrations. The Board, however, did not agree that MOTHER EARTH immediately and directly describes beer that is composed of organic ingredients. At most, it suggests that registrant's beer is made from natural ingredients. In an case, in applicant's mark the term has the same connotation.

As to third-party registrations, applicant failed to show that the registered marks are in use. At most they show that MOTHER EARTH some significance in suggesting that the product is wholesome and natural, but the limited number of registrations (three) was not enough to show that MOTHER EARTH has a strong suggestive connotation such that the design portions of the subject marks must be given greater weight.

[E]ven if purchasers note the difference in the design elements in the marks, they are not likely to view the different designs as indicating separate sources for the goods. Rather, they are likely to assume that a single source has adopted these marks as variations of each other, perhaps to differentiate its organic beer from its non-organic beer.

Applicant pointed to the lack of evidence of actual confusion, but applicant admitted that the parties are not in the same locations or channels of trade. Therefore, there has been no chance for confusion to occur. Of course, it must be presumed that registrant's goods are sold throughout the country and in all channels of trade.

Balancing the relevant du Pont factors, the Board found confusion likely as to applicant's goods in class 32.

The services: As to applicant's services, its distributorship must be for the benefit of others in order to register its service mark. If applicant is distributing only its own beer, that would not constitute a service under the Trademark Act. The Board had "some concerns" that the latter is the case. However, because the application was filed under Section 1(b) and proof of use has not yet been provided, the Board assumed that applicant is rendering a services - i.e., it is distributing non-organic beer for third parties.

Based on the complementary nature of the goods and services, the Board found them to be related. Retail establishments that are the consumers of applicant's distribution services are likely to assume that applicant also sells beer.

In fact, the distinction in the type of beer, with applicant’s distribution services being for non-organic beer and registrant’s goods being beer made of organic components, is likely to heighten the likelihood of confusion. That is, consumers could assume that a company that produces beer could use its distribution system to distribute beer for others, and that since the registrant makes an organic beer, it would choose to distribute non-organic beers for third parties, rather than organic beers that would compete more directly with its own products.

Referring to its du Pont analysis for the involved goods, the Board found confusion likely as to applicant's services, and it affirmed the refusal as to class 35.

Read comments and post your comment here.

TTABlog note:  Well, how did you do?

Text Copyright John L. Welch 2014.

Part 3: Tips for Effectively Searching the USPTO Database Using TESS - California IP Bar Webinar: Jan. 14 at Noon (PST)

On Tuesday, January 14 at noon (PST), the State Bar of California Intellectual Property Section (Trademark Interest Group) will present the third part of its three-part webinar series on "Tips for Effectively Searching the USPTO Database Using TESS." Part 3 will include searching TESS for information regarding Descriptiveness refusals, Likelihood of Confusion refusals, and competitive intelligence investigations. [Parts 1 and 2 are available on-demand here.] One hour of participatory MCLE credit available. Register here.

Tips for Effectively Searching the USPTO Database Using TESS
State Bar of California Intellectual Property Section Trademark Interest Group
Moderator: Mary A. Harris

Speakers:

Peter Bromaghim is a former USPTO examining attorney. He is an associate at Blakely, Sokoloff, Taylor and Zafman, in Los Angeles, where he focuses on domestic and international trademark prosecution and enforcement, counseling, portfolio strategy, licensing, and administrative and civil litigation.

Ed Timberlake is a former USPTO examining attorney and a former copyright examiner at the U.S. Copyright Office. He now has his own practice, Timberlake Law, where he focuses entirely on trademarks and copyrights, primarily providing advice, preparing and filing applications, and maintaining registrations.

Alex Butterman is also a former USPTO examining attorney. He specializes in trademark and copyright law at the Washington, D.C. intellectual property boutique firm of Staas & Halsey LLP. Alex has represented a diverse group of businesses in a variety of industries and commercial sectors while working in several IP boutique law firms.

Fourth Circuit Upholds District Court Affirmance of TTAB Dismissal of SWATCH Opposition versus SWAP

The U.S. Court of Appeals for the Fourth Circuit has affirmed the decision of the U.S. District Court for the Eastern District of Virginia [TTABlogged here], which upheld the Board's decision in the SWATCH v. SWAP opposition [TTABlogged here]. The Board dismissed Swatch's opposition to registration of the mark SWAP ( in stylized form) for "watch faces, ribbon watch bands, slide pendants, and beaded watch bands," finding it not merely descriptive of the goods, and not likely to cause confusion with or to dilute the registered mark SWATCH for watches, clocks, and parts. The district court entered judgment against Swatch on its six litigation claims: for reversal of the TTAB decision, and for federal and state trademark infringement and unfair competition, and federal dilution. In a 26-page opinion, the Fourth Circuit agreed with the district court. Swatch AG v. Beehive Wholesale, L.L.C., 109 USPQ2d 1291 (4th Cir. 2014).


The appellate court disagreed with the district court with regard to the standard of review. The district court stated that in a Section 1071(b) proceeding it sits in a "dual capacity," applying a "unique standard of review," acting in part as an appellate body (reviewing facts found by the TTAB under the substantial evidence standard) and partly as a trial court (considering de novo the new evidence submitted). The appellate court asserted that this approach is "in tension with the statute and directly conflicts with the requirement of Kappos v. Hyatt, 132 S. Ct. 1690 (2012)." [Kappos interpreted "Section 1071(b)'s parent parallel, 35 U.S.C. Section 145"]

In sum, where new evidence is submitted, de novo review of the entire record is required because the district court "cannot meaningfully defer to the PTO's factual findings if the PTO considered a different set of facts."

However, it was not clear that the district court did improperly defer to the TTAB's factual findings, and so remand of the case to the district court was not necessary. "Although the district court stated that it would apply an impermissible hybrid review to its likelihood of confusion and strength-of-the-mark analysis, there are more than sufficient facts recited in the opinion to support its findings." Likewise as to the issue of mere descriptiveness, "even if the district court considered only the new evidence de novo, it found facts sufficient to support its finding that SWAP is not merely descriptive."

With regard to likelihood of confusion, the appellate court ruled that the district court "properly found, on a sufficient review of the entire record, that despite the fame of SWATCH and the similarity of the goods, the 'lack of similarity between the marks, lack of predatory intent, lack of similar advertising and only minimal similarity in facilities,' in combination with 'the most significant factor, actual confusion,' resulted in no likelihood of confusion between SWATCH and SWAP."

With regard to likelihood of dilution, the TTAB did not decide that issue on the merits, so the district court's review was de novo. [Actually, the Board denied the claim because Swatch did not prove fame for Section 2(d) purposes, let alone for dilution - ed.]. The district court found that Swatch had not shown that any similarity between the marks would impair the distinctiveness of the SWATCH mark. The appellate court again pointed out that the marks are not confusingly similar and furthermore there was no evidence of copying, and so it affirmed the lower court's dismissal of this claim.

Finally, the district court dismissed the trademark infringement and unfair competition claims. Both the Lanham Act and Virginia statutory and common law require a likelihood of confusion to establish such claims. Therefore, these claims failed.

Read comments and post your comment here.

TTABlog note:  The appellate court also ruled that the issue of likelihood of dilution, like likelihood of confusion, is reviewed under a clear error standard, since both are fact-intensive inquiries.

Text Copyright John L. Welch 2014.

District Court Says Applicant Must Pay PTO Attorney's Fees in Section 1071(b) Civil Action, Win or Lose

The U.S. District Court for the Eastern District of Virginia recently ruled that, in a Section 1071(b) civil action for review of an ex parte TTAB decision, the applicant/plaintiff must pay the USPTO's expenses (including attorney and paralegal fees). [Win or lose, said the court, although this case involved only "lose."] The court awarded the USPTO $32,836.27 in attorney salaries, $3,090.32 in paralegal salaries, and $393.90 in photocopying expenses. Shammas v. Focarino, 109 USPQ2d 1320 (E.D. Va. 2014).

On October 25, 2012, the TTAB affirmed a refusal to register the term PROBIOTIC as a trademark for fertilizer, deeming it to be generic. [opinion here]. Applicant Milo Shammas then filed a civil action for review under Section 1071(b). The district court granted summary judgment in favor of the PTO on October 15, 2013, upholding the Board's decision.The PTO moved for an award of fees and expenses.

Section 1071 (b)(3) provides, in pertinent part, the following:

In any case where there is no adverse party ... unless the court finds the expenses to be unreasonable, all the expenses of the proceeding shall be paid by the party bringing the case, whether the final decision is in favor of such party or not. [Emphasis supplied].

The court faced the issue of whether "all expenses of the proceeding" includes attorney's fees, and it found this to be a question of first impression. However, it also found the question "not difficult" to answer, because it involves a straightforward statutory construction, "with the analysis beginning and ending with the plain language of the statute." If there were any doubt as to the scope of the term "expenses," the inclusion of the word "all" in the statute makes clear the breadth of the term.

When the word "expenses" is prefaced with the word "all," it is pellucidly clear Congress intended that the plaintiff in such action pay for all the resources expended by the PTO during the litigation, including attorney's fees.

The court noted various other statutes in which "attorney's fees" represent a subset of "expenses," and it cited several court decision to support the conclusion that "expenses" include attorney's fees.

The expenses submitted by the PTO were calculated by multiplying the number of hours for each individual by the actual hourly rate of each (calculated from the annual salary of the individual).

The court also awarded to the PTO the sum of $2,280.00 to compensate for expenses incurred in connection with a Rule 37 motion, which sum was separate from and in addition to the Section 1071 (b)(3) award.


Read comments and post your comment here.

TTABlog note:  Well, does this put a whole new spin on how to seek review of a TTAB ex parte decision? An appeal to the CAFC may turn out to be less expensive than a civil action. But the civil action route allows one to add new evidence.

Text Copyright John L. Welch 2014.

Part 3: Tips for Effectively Searching the USPTO Database Using TESS - California IP Bar Webinar: Jan 14 at Noon (PST)

On Tuesday, January 14 at noon (PST), the State Bar of California Intellectual Property Section (Trademark Interest Group) will present the third part of its three-part webinar series on "Tips for Effectively Searching the USPTO Database Using TESS." Part 3 will include searching TESS for information regarding Descriptiveness refusals, Likelihood of Confusion refusals, and competitive intelligence investigations. [Parts 1 and 2 are available on-demand here.] One hour of participatory MCLE credit available. Register here.

Tips for Effectively Searching the USPTO Database Using TESS
State Bar of California Intellectual Property Section Trademark Interest Group
Moderator: Mary A. Harris

Speakers:

Peter Bromaghim is a former USPTO examining attorney. He is an associate at Blakely, Sokoloff, Taylor and Zafman, in Los Angeles, where he focuses on domestic and international trademark prosecution and enforcement, counseling, portfolio strategy, licensing, and administrative and civil litigation.

Ed Timberlake is a former USPTO examining attorney and a former copyright examiner at the U.S. Copyright Office. He now has his own practice, Timberlake Law, where he focuses entirely on trademarks and copyrights, primarily providing advice, preparing and filing applications, and maintaining registrations.

Alex Butterman is also a former USPTO examining attorney. He specializes in trademark and copyright law at the Washington, D.C. intellectual property boutique firm of Staas & Halsey LLP. Alex has represented a diverse group of businesses in a variety of industries and commercial sectors while working in several IP boutique law firms.

Precedential No. 45: Opposer Made Prima Facie Case Under Section 2(d), So TTAB Denies Applicant's Rule 2.132(b) Motion to Dismiss

Oops! Here is another precedential decision, bringing the Board's 2013 tally to 45. At the close of Opposer Skincode's testimony period, Applicant Skin Concept filed a motion to dismiss under Rule 2.132(b). Under that rule, if a plaintiff offers in evidence only copies of USPTO records, the defendant may move for dismissal on the ground that, upon the law and the facts, the plaintiff has shown no right to relief. If the motion is denied, the defendant may proceed to offer its evidence. The Board denied Skin Concept's motion, finding that Skincode, which had relied only on USPTO records, had made out a prima facie case of likelihood of confusion under Section 2(d). Skincode AG v. Skin Concept AG, 109 USPQ2d 1325 (TTAB 2013) [precedential].

Skin Concept sought to register the mark SWISSCODE for "[s]oap; perfumery, essential oils, cosmetics, hair lotions; dentifrices." Skincode opposed, claiming likelihood of confusion with its previously used and registered mark SKINCODE 2 & Design (shown above) for "soaps, cosmetics, all adapted for use on the skin and the scalp." Skincode also claimed likelihood of dilution under Section 43(c).

Skincode attached to its notice of opposition a copy of its pleaded registration printed from the electronic database records of the USPTO, showing the current status and title of the registration. It did not submit any additional evidence. [Since Skincode offered no evidence regarding its common law use of its mark, and failed to provide any evidence of fame, the Board dismissed its dilution claim and any claim of likelihood of confusion based on common law rights].

In its motion to dismiss, Skin Concept contended that Skincode had failed to make a prima facie showing of entitlement to relief. In particular, with regard to opposer’s Section 2(d) claim, it argued that the marks at issue are distinctly different because the SKIN and SWISS components of the marks give them entirely different meanings and commercial impressions.

Opposer Skincode asserted that the marks both refer to the Swiss origin of the goods at issue, contending that the "i" in its registered mark is dotted with a “square containing an equilateral cross (or 'plus' sign) in the center [of] which is an obvious representation of the square-shaped flag of Switzerland." Applicant Skin Concept urged that the supposed depiction of a "Swiss flag" was not at all obvious.

The question for the Board was whether opposer’s registration was itself sufficient evidence to establish a prima facie case of likelihood of confusion such that the burden of proof must shift to applicant to present evidence to the contrary. Applying the duPont factors, the Board found that Skincode had presented a prima facie case.

The involved goods are legally identical, since both the application and the cited registration include "soaps" and "cosmetics." The Board must presume that these goods travel through the same, normal channels of trade to the same classes of consumers.

As to the marks, because some of the goods are legally identical, a lesser degree of similarity is necessary to support a finding of likely confusion. The Board observed that the word portions of the marks are similar in appearance and commercial impression in that each mark comprises a two-syllable word that begins with the letter S, has soft “I” vowel sounds in the first syllable, and includes CODE as the second syllable. It is the word portion of the cited mark that is likely to be impressed upon consumers' memories. Moreover, the applied-for mark appears in standard character form, and therefore the Board must consider all manners in which it might be displayed, including in a manner similar to that of the cited mark. The Board found it premature to decide on the connotation of the cross-design element of the cited mark, and likewise premature to decide whether CODE is the dominant portion of each mark.

In view of the actual and presumptive similarities of the marks at issue, and the partially identical goods, we find that opposer has at least made a prima facie case of likelihood of confusion with regard to the pleaded registered mark that dismissal of the opposition is therefore unwarranted.

And so the Board denied the motion to dismiss as to the likelihood of confusion claim based on opposer's registration, and it ordered the proceeding to resume with applicant's testimony period.

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TTABlog note:  Not much new here. How often does a plaintiff submit nothing other than its registration? No Internet evidence, no dictionary definitions? If you were representing applicant, what kind of evidence would you put in?

Text Copyright John L. Welch 2014.