Test Your TTAB Judge-Ability On These Four Section 2(d) Refusals

I once heard a TTAB judge state that the outcomes of most Section 2(d) likelihood of confusion cases can be predicted just by looking at the marks and the identified goods/services, without more. Try your adjudicatory skills on these four recently-decided appeals, keeping in mind that, by my estimate, about 85% of Section 2(d) refusals are affirmed by the Board. [Answer in first comment].


In re Santini Fine Wines, Inc., Serial No. 85592838 (October 29, 2014) [not precedential]. [Refusal to register the mark LEONESSA for wine, in view of the registered mark LEONESS CELLARS (Stylized) for "bottles of wine, namely, wine sold in bottles" [CELLARS disclaimed]].

In re DNA Consulting LLC, Serial No. 85574196 (October 27, 2014) [not precedential]. [Refusal to register CELEBRITY SOUR for "alcoholic beverages, namely, pre-mixed alcoholic cocktails," in view of the registered mark CELEBRITY CELLARS for wine [CELLARS disclaimed]].

In re Evolved Ingenuity, LLC, Serial No. 85807923 (October 22, 2014) [not precedential]. [Refusal to register RECON for "hunting blinds and hunting tree stands" in view of the identical mark registered for "crossbows"].


In re CreditPal, LLC, Serial No. 77900983 (October 15, 2014) [not precedential]. [Refusal to register CreditPal, in standard character form, for "advisory services relating to credit and debit control, investment, grants and financing of loans; consumer credit consultation," in view of the registered mark CREDITPAL & Design for, inter alia accountancy services and provision of business information for credit, finance and insurance evaluation and analysis].

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TTABlog Comment:  Would You Have Appealed any of these refusals?

Text Copyright John L. Welch 2014.

TTAB Dismisses AGENTLINK 2(d) Opposition: No Priority and No Fraud

Section 2(d) decisions are a dime-a-dozen at the TTAB, but here's one that at least includes some interesting issues. Lighthouse opposed an application to register the mark AGENTLINK for certain insurance agency and brokerage services, claiming a likelihood of confusion with its allegedly previously-used mark AGENT LINK for marketing, advertising and consulting services in the insurance industry. Opposer Lighthouse also claimed fraud in the filing of the opposed application. Both claims failed. Lighthouse Sales and Marketing, LLC, v. MedLink, Incorporated, Opposition No. 91200752 (October 21, 2014).

Priority: Applicant MedLink sought to tack on to to its use of the AGENTLINK mark, its earlier use of the mark "MedLink." Of course that didn't fly, because tacking requires that the two marks be "legal equivalents." And so applicant was stuck with its fling date of October 21, 2010 as its priority date.

Opposer Lighthouse, on the other hand, failed to establish technical trademark use of its AGENT LINK mark prior to applicant's filing date. Lighthouse first rendered its services no earlier than October 25, 2010, when it executed a contract for the sale of its services to a single customer. In fact, there was no evidence as to when the services were actually performed, but in any case this lone "sale" occurred after applicant's filing date.

Lighthouse, however, asserted that it had earlier use analogous to trademark use. To establish same, it had to prove that its prior use of AGENT LINK was sufficient to create an association in the minds of consumers between its mark and its services. A direct association need not be shown, but opposer had so show that its activities were "reasonably expected to have a substantial impact on the purchasing public" in order to acquire proprietary rights in the mark.

Here, Lighthouse's evidence was insufficient. It acquisition of a fictitious name certificate, a domain name, and a toll-free number, and its contract with an IT firm regarding the sending of emails were activities in the nature of setting up a business. No potential customers were exposed to opposer's mark. Although opposer's website was up and running by April 2010, there was no evicence as to the impact of the use of AGENT LINK on the website: i.e., there was no evidence that anyone actually visited the website. Nor was there any evidence of the effect of Opposer's email campaigns. Opposer had email exchanges with 15 potential customers, too few to "translate into public exposure of AGENT LINK with Opposer."

The Board concluded that these efforts were insufficient to establish use analogous to trademark use. Since opposer had the burden of proof with respect to its claim of priority and likelihood of confusion, its Section 2(d) claim failed.

Fraud: Opposer's fraud claim hinged on the contention that applicant's CEO had actual knowledge of opposer's prior use of the AGENT LINK mark. Therefore, when the CEO signed the application to register, he could not have believed that applicant was entitled to use the AGENTLINK mark and that no other person had the right to use AGENTLINK or a similar variation thereof.

The Board, however, found that the record evidence did not support opposer's claim. Applicant's CEO testified that he had no knowledge of opposer at the time the application was filed, and there was no reason to doubt his testimony. Opposer's assertion that it mailed promotional material to applicant prior to the filing date did not establish that the CEO received and reviewed the material.

Given that fraud must be proven to the hilt, we find that even if Opposer had shown that Applicant had received the solicitation letter and/or email prior to Applicant's executing the application declaration, receipt alone does not prove that Applicant knew that Opposer had any rights, much less, superior rights in the AGENT LINK mark, or that Applicant believed that its use of its mark would be likely to cause confusion. Moreover, the parties’ services are not substantially identical and, therefore, Applicant's belief that there was no likelihood of confusion resulting from the parties’ concurrent use of their respective marks in connection with their respective services was not unreasonable. Quite simply, Opposer's evidence falls far short of meeting the standard of proof for fraud, and its ground that Applicant committed fraud in executing the application declaration is therefore dismissed.

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TTABlog note: A clearly bogus fraud claim. For a successful fraud claim, the rarest of birds, see last month's Nationstar case TTABlogged here].

Text Copyright John L. Welch 2014.

WYHA? TTAB Affirms Mere Descriptiveness Refusal of POLITICS FUNNIEST RAP BATTLES

The USPTO refused registration of the mark POLITICS FUNNIEST RAP BATTLES, deeming it merely descriptive of entertainment services featuring scripted and improvised rap battles between political figures. Examining Attorney Christopher Law relied on dictionary definitions of the constituent words, and pointed to the language of Applicant's recitation of services. Would You Have Appealed? In re Wison, Serial No. 85788703 (October 27, 2014) [not precedential].

A combination of descriptive words is not necessarily merely descriptive. The combination may create a unitary mark with a nondescriptive meaning or a bizarre or incongruous meaning. The examining attorney maintained that the individual words are descriptive and the combination is merely descriptive and laudatory of the services.

Applicant Dan Wison lamely, and rather incoherently, argued as follows:

The characteristics of Applicant’s services are such that they are suggestive and descriptive at the same time. Upon perception of the mark, the consumer may recognize
that [it] is for video content. However, the mark only suggests at the show’s format. The mark suggests that [sic] show involves politics and rap battles, but it does not reveal much about the content, how it is structured, or who is performing.

The Board was understandably unimpressed, and it agreed with the examining attorney: "the phrase POLITICS FUNNIEST RAP BATTLES immediately informs potential consumers of Applicant's entertainment services about the subject matter or content of the material, namely funny rap battles involving politics or in Applicant's words, 'rap battles between political figures.'"

Applicant Wison further asserted that there are "any number of other alternative marks that a competitor could use to describe a similar service." The Board pointed out, however, that the existence of other descriptive terms "does not redeem an otherwise merely descriptive word or phrase."

Finally, Applicant contended that competitors do not need to use the applied-for mark to describe their services, and that he was not aware of any other entity using the same phrase for entertainment services. The Board observed once again, however, that even if applicant were the first and only user of the mark, the mark would still be merely descriptive under Section 2(e)(1).

And so the Board affirmed the refusal.

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TTABlog comment: Well, would you have?

Text Copyright John L. Welch 2014.

TTAB TEST: Are Bath Salts and Customer Loyalty Programs Related for Section 2(d) Purposes?

Anthropologie and Urban Outfitters opposed an application to register the mark ANTHO in the form shown here, for bath salts, baths soaps, cosmetics, and other personal products, claiming a likelihood of confusion with the common law mark ANTHRO for a customer loyalty program rendered in conjunction with opposers' retail store and Internet services featuring beauty and cosmetic products. The Board, not surprisingly, found the marks to be very similar in sound, appearance, and overall commercial impression. But are the services and goods related? Anthropologie, Inc. and Urban Outfitters Wholesale, Inc. v. Happy Green Company LLC, Opposition No. 91204412 (October 21, 2014) [not precedential].

Opposers contendedt that "Anthro" is used by its customers as a nickname or abbreviation for the store, Anthropologie, and as a reference to opposers' goods (clothing) or services, but the Board was not impressed. Although on rare occasion the Board has stated that even if a company has not itself used a term as a trademark, it still may have a protectable property right in the term [think IBM and BIG BLUE] if the public has come to associate the term with the company or its goods and services.

However, the use by the public of a term to refer to a company and/or its products or services does not mean that the company has obtained rights to exclude others from using the same term for [every] product or service, and it certainly does not mean that the company has obtained rights to register the term as a mark for [every] product or service.

Here, the evidence did not show that opposers sell beauty and cosmetic products under the ANTHROPOLOGIE mark. In short, Opposers failed to establish rights in the word ANTHRO for anything other than their customer loyalty program services.

However, the Board found that Opposer's loyalty program services, rendered in connection with their retail and Internet services featuring beauty and cosmetic products (under third-party marks) "are similar to" Applicant's personal care products. Noting that "it is well recognized" that when the same mark or similar marks are used for goods and for retail services featuring those goods, confusion is likely, the Board concluded that this du Pont factor favored opposers.

Furthermore the involved goods and services are offered through the same type of trade channels, and the purchasers would overlap. The goods and services are subject to "impulse purchase." [Loyalty programs are subject to impulse purchase? - ed.]. And Opposers "have enjoyed success with their loyalty program services under the mark ANTHRO." [So that means it's a strong mark? Or is it just a good program? - ed.]. The record was devoid of any third-party use of the same or similar marks.

Balancing the relevant du Pont factors, the Board found confusion likely and it sustained the opposition.

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TTABlog comment: Well, what do you think?

Text Copyright John L. Welch 2014.

TTAB Dismisses Narrowly-Pleaded Section 2(d) Opposition to "Simplicity Hair Oil Blend"

The Board dismissed a Section 2(d) opposition to registration of Simplicity Hair Oil Blend, in standard character form, for "oils for hair conditioning" [HAIR OIL BLEND disclaimed], finding the mark not likely to cause confusion with the registered mark SIMPLICITY for "addin and add-on hair accessories, namely, artificial hair constructed primarily of human hair." Applicant Kelly neither submitted evidence nor filed a brief, and so only the single pleaded registration was considered by the Board.  Emminence, LLC v. Lisa Kelly, Opposition No. 91205286 (October 8, 2014) [not precedential].

Not surprisingly, the Board found the marks to be similar in connotation and  commercial impression, since SIMPLICITY is the first and dominant portion of the applied-for mark.

As for the goods, Opposer claimed to have broader rights that those provided by its registration. Relying on the "zone of natural expansion" doctrine and on its alleged common law rights, Opposer
asserted use of its mark on shampoos, conditioners, and conditioning oils, and urged that applicant's goods are nearly identical, or within opposer's zone of expansion.

Asserting that applicant had acted in bad faith, opposer pointed out that after the opposition was filed, applicant altered her packaging so that the word "Simplicity" in a vertical display, with the words "Hair Oil Display" greatly reduced in size.

The Board was sympathetic to opposer's position, but opposer had relied only on its registration in its notice of opposition. There was no claim of prior common law use of the mark. Applicant had no notice of such and allegation, and "despite Applicant’s non-participation during the trial of this case, we cannot treat the silence of Applicant qua defendant herein the same as finding that the issue was tried by the consent of the parties."

Moreover, opposer failed to provide adequate evidence that the involved goods are related. Opposer provided copies of its own webpages, showing that opposer sells a variety of hair-related products, but that was not enough to establish that consumers would view the involved goods as related.

[I]n addition to an absence of any notice to Applicant that Opposer would be relying upon possible common law usage of the cited mark on disparate goods, there is no factual basis in this record on which to conclude that oils for hair conditioning would be perceived by consumers of hair extensions as falling within the natural zone of expansion of a manufacturer of wigs and hair pieces.

Since the relatedness of the involved goods was not established, the Board say no need to consider "the complexities of the 'natural expansion' doctrine as an end-around this critical du Pont factor."

And so the Board dismissed the opposition.

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TTABlog comment: It's often difficult for a plaintiff when the defendant adopts the rope-a-dope strategy. It means the plaintiff has to do everything right, with no help from the defendant's errors or actions.

Text Copyright John L. Welch 2014.

Test Your TTAB Judge-Ability: Which Of These 4 Section 2(d) Refusals Was Reversed?

I once heard a TTAB judge state that the outcomes of most Section 2(d) likelihood of confusion cases can be predicted just by looking at the marks and the identified goods/services, without more. Try your adjudicatory skills on these four recently-decided appeals, keeping in mind that, by my estimate, about 85% of Section 2(d) refusals are affirmed by the Board. [Answer in first comment].


In re Flatiron Partners, LLC, Serial No. 85699903 (October 22, 2014) [not precedential]. [Section 2(d) refusal to register FLATIRON PARTNERS for "managing hedge fund portfolios directed to high wealth, sophisticated individual investors and to sophisticated non-hedge fund corporate entities" in view of the registered mark FLATIRON CAPITAL (standard characters) for"financing and loan services"].

In re Tezio LLC, Serial No. 85769474 (October 22, 2014) [not precedential]. [Refusal to register LOLA for "plastic containers for organizing and storing cosmetic" in view of the registered mark CHARLIE & LOLA and Design for, inter alia, "containers for household and kitchen use"].

In re Citizens Disability, LLC, Serial No. 85887875 (October 22, 2014) [not precedential]. [Refusal to register CITIZENS DISABILITY HELPLINE for "Counseling and assisting others in obtaining medical or disability related benefits, namely, Social Security Disability and Supplemental Security Income benefits" and for "Representing others in obtaining medical or disability related benefits, namely Social Security Disability and Supplemental Security Income benefits" [DISABILITY HELPLINE disclaimed] in view of the mark DISABILITY HELPLINE, registered on the Supplemental Register for "Advertising services; Attorney referrals, namely, forwarding inquiries by potential clients to social security lawyers and advocates"].

In re Mannatech, Incorporated, Serial No. 85558774 (October 22, 2014) [not precedential]. [Section 2(d) refusal to register NUTRIVERUS for dietary and nutritional supplements, on the ground of likelihood of confusion with the registered mark NU VERUS & Design (in the colors shown below) for "liquid nutritional supplement; nutritional supplements; vitamin and mineral supplements"].

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TTABlog Comment: See any WYHAs here?

Text Copyright John L. Welch 2014.

TTAB TEST: Is "BLENDS" Merely Descriptive of Wine Marketing Services?

The USPTO refused registration of the marks BLENDS and BLENDS, INC., in standard character form, for "marketing, advertising and promoting the sale of wine." The word "blends" is descriptive of wine, but does it describe applicant's services? Applicant contended that "blends" has many different meanings. How do you think this came out? In re Ren Acquisition, Inc., Serial Nos. 85787527 and 85787531 (October 3, 2014) [not precedential].

The evidence showed that the term "blend" is used to identify wine made from two or more varieties of grapes. Applicant maintained that "blends" is not descriptive of marketing, selling and promoting wines. It asserted that the PTO's evidence dealt with wine as a product, or with the act of selling wine, but not with marketing services: "Marketing, advertising, and promoting the 'sale' of wine is considerably different than the act of selling wine or producing wine."

The Board found that "the word 'Blends' describes the products that Applicant is marketing, advertising and/or promoting and, as such, it should remain available to any company rendering these services."

Applicant argued that when used in connection with marketing services, the word "blends" could refer to many things, not just wine. However, as the Board has repeatedly pointed out, "the determination of whether a mark is merely descriptive is not considered in the abstract but in connection with the services at issue." Applicant itself stated that it could market, advertise, and promote blended wines. The fact that "blends" may have different meanings in other contexts is simply irrelevant. [Applicant's out-of-context argument is, in my view, one of the Top Ten Losing TTAB Arguments].

And so the Board affirmed both refusals.

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TTABlog comment: Was this a WYHA?

Text Copyright John L. Welch 2014.

Test Your TTAB Judge-Ability on these Four Mere Descriptiveness Appeals

Here are four recent appeals from mere descriptiveness refusals under Section 2(e)(1). Let's see how you do with them, keeping in mind that, by my estimation, the Board affirms more than 80% of these refusals. [Answers in first comment].


In re Starkist Co,, Serial No. 85765644 (September 23, 2014) [not precedential]. [Mere descriptiveness refusal of INTERNATIONAL SELECTS for "seafood"].

In re Internet Promise Group LLC, Serial No. 85637772 (October 9, 2014) [not precedential]. [Mere descriptiveness refusal of STEP BREATHING for "Instructing others in a specific breathing technique, specifically, instructions in successive short inhalation and holding breath steps and then exhalation to enhance life force energy in the human body as part of teaching Yoga practice"].

In re Birds Eye Foods LLC, Serial Nos. 85729804 and 85729823 (October 14, 2014) [not precedential]. [Mere descriptiveness refusal of SAVORY SKILLETS and requirement for disclaimer of SAVORY SKILLETS in the mark BIRDS EYE SAVORY SKILLETS, both for frozen entrees].

In re DM CTW, LLC, Serial No. 85746575 (October 16, 2014) [not precedential]. [Mere descriptiveness refusal of THE BEST APP TO DATE for "Downloadable software applications for mobile telecommunications devices and handheld computing devices for organizing personal relationships and dating, for providing coupons, rebates, discounts, vouchers or special offerings on goods and services from participating merchants and for receiving information on events, activities and attractions"].

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TTABlog note: See any WYHAs here?

Text Copyright John L. Welch 2014.

TTAB TEST: Are AirREX and AIRTECH Confusable for Vehicle Suspension Springs?

Turkish company Aktas opposed Taiwan's Pin Hsiu Rubber's application to register the mark AirREX in the design form shown below, for, inter alia, "air springs for vehicle suspension components for cushioning driver's seats and cabs," claiming a likelihood of confusion with its registered mark AIRTECH for "air springs for vehicle suspension and for cushioning driver's seats and cabs." The Board found the goods to be, in part, legally identical. But what about the marks? Isn't AIR a rather weak formative in this field? How do you think this came out? Aktas Hava Suspansiyon Sistemleri Sanayi Ve Ticaret AS v. Pin Hsiu Rubber Co., Ltd., Opposition No. 91204375 (September 26, 2014) [not precedential].

Applicant pointed to ten prior registration for AIR-containing marks for goods related to vehicle suspension - AIR LIFT, AIR RUNNER, AZ AIR-ZENITH, AIRCRUSE, SIMILAIR, AIRPOD, AIRPLOW, AIRHAWK, AIR FORCE, and AIR CHASSIS - but it provided no direct evidence of actual use of these marks. With that lack of proof, the Board could not conclude that the field is so crowded with AIR-formative marks that consumers would distinguish the two marks in question based on small differences in the marks. In other words, the Board could not make any conclusion as to the commercial strength of opposer's mark.

However, as to the conceptual strength of opposer's mark, the third-party registrations, along with the dictionary definition of "air," led the Board to the conclusion that the word AIR "certainly has suggestive significance with respect to both Opposer's, Applicant's, and these third-party goods, namely suspension, cushioning, and wind-protection devices." The third-party registrations "serve as a reference source (much like a dictionary) for the usual connotation of the word 'Air' with respect to the goods in this field."

Because the word "Air" has suggestive significance and the word "Tech" is also suggestive ("of the level of technology incorporated into Opposer's suspension and cushioning components"), opposer's mark is not a strong one. Moreover, "Air" cannot be considered the dominant portion of AIRTECH.

The Board found that, visually and orally, the dissimilarities in the marks outweigh the differences. More importantly, the connotations are quite different. The parties "seem to agree" that applicant's mark connotes "king of the air," or something like that, whereas AIRTECH connotes air springs employing the latest technology.

In view of the relative weakness of opposer's mark, the Board concluded that the dissimilarity of the marks was the decisive factor.

And so the Board dismissed the opposition.

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TTABlog note: Well, what do you think?

Text Copyright John L. Welch 2014.

Cheryl S. Goodman Appointed as TTAB Judge

The USPTO has announced the selection of Cheryl S. Goodman as an Administrative Trademark Judge at the Trademark Trial and Appeal Board:

• Cheryl Goodman has been an Interlocutory Attorney for the TTAB for over fourteen years. Her tenure as an Interlocutory Attorney included a six-month detail with the Office of the USPTO Solicitor, yielding Ms. Goodman additional insight into the USPTO’s interaction with the Court of Appeals for the Federal Circuit and the U.S. District Courts, which handle appeals seeking review of TTAB decisions. Before joining the TTAB as an Interlocutory Attorney, Ms. Goodman served the USPTO for more than five years as an Attorney-Advisor in the USPTO’s Trademark Examining Operation. During her tenure as an Examining Attorney, Ms. Goodman completed a work detail as a Staff Attorney at the Department of Commerce, assisting the Department in its preparation of a voluminous response to a Freedom of Information Act request on the Department’s trade missions.
  
  Ms. Goodman began her lifelong commitment to public service as a Trial Attorney in the Department of the Treasury’s Office of Thrift Supervision. A Magna Cum Laude graduate of the Florida State College of Law, Ms. Goodman earned her bachelor’s degree, Cum Laude, from the University of Illinois.

The complete roster of TTAB judges, now numbering 23, may be found here.
.

Test Your TTAB Judge-Ability On These Four Section 2(d) Appeals

I once heard a TTAB judge state that the outcomes of most Section 2(d) likelihood of confusion cases can be predicted just by looking at the marks and the identified goods/services, without more. Try your adjudicatory skills on these four appeals, keeping in mind that, by my estimate, about 85% of Section 2(d) refusals are affirmed by the Board.


In re Holland & Hart LLP, Serial No. 85709248 (October 16, 2014) [not precedential]. [Refusal to register BEYOND THE OBVIOUS for legal services, in view of the registered mark THINKING BEYOND THE OBVIOUS for business consultation services].

In re Joy Industrial Co., Ltd., Serial No. 85677182 (October 16, 2014) [not precedential]. [Refusal to register N NOVATEK & Design for bicycles and bicycle and motorcycle parts and accessories, in view of the registered mark NOVATECK for "tires, pneumatic, semi-pneumatic and solid tires for vehicle wheels, wheels for vehicles, inner tubes, wheel rims, and structural parts for all the aforesaid goods"].

In re Cardeologie, Inc., Serial No. 85826725 (October 16, 2014) [not precedential]. [Refusal to register CARDEOLOGIE for greeting cards, invitation cards, notecards, postcards, etc., and for related retail store services, in view of the registered mark CARDOLOGISTS for, inter alia, greeting cards and invitation cards]. 

In re The Rock Creek Group, LP, Serial No. 85595470 (October 6, 2014) [not precedential]. [Refusal to register THE ROCK CREEK GROUP for, inter alia, "individualized and personalized financial services provided to institutional investors, namely, sovereign wealth funds, state and local pension plans, multinational corporations, foundations and endowments," in view of the registered marks ROCK CREEK PROPERTY GROUP, LLC, in standard character and design form, for "real estate investment, management, and brokerage services" [PROPERTY GROUP, LLC disclaimed]].

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TTABlog Big Hint: They all came out the same way. See any WYHA's here?

Text Copyright John L. Welch 2014.

TTAB Finds ARCATA Not Primarily Geographically Deceptively Misdescriptive of Wine

The Board reversed a Section 2(e)(3) refusal of ARCATA for wine, finding the mark not primarily geographically deceptively midescriptive of the goods. The evidence established that Arcata is a city in California that is neither obscure nor remote, and is the locus of several wineries. The question was whether "a consumer's misimpression that Applicant's goods originate in Arcata would be a material factor in his or her decision to purchase the goods." In re D’Andrea Family Limited Partnership, Serial No. 85834204 (October 15, 2014) [not precedential].

A mark is primarily geographically deceptively misdescriptive if:

(1) the primary significance of the mark is a generally known geographic location;

(2) the consuming public is likely to believe the place identified indicates the origin of the goods, when in fact the goods do not come from that place; and

(3) the misrepresentation would be a material factor in a consumer's decision to purchase the goods.

Here, the key issue was the third one: materiality. In order to establish materiality, the USPTO must show that "a substantial portion of the relevant consumers would be materially influenced in the decision to purchase the product or service by the geographic meaning of the mark."

Reviewing relevant precedents, the Board considered whether the PTO has shown "that Arcata is 'noted for' wine; that wine is a 'principal product' of Arcata; that wine is a product 'traditionally originating' in Arcada; or that for, any other reason, a substantial portion of customers for wine would be materially influenced in the decision to purchase wine by a misrepresentation that the goods originate in Arcata."

Arcata is a city of 16,000 persons, located in Humboldt County in Northwestern California. It is a college town, the home of Humboldt State University. For many years, timber dominated the economy; today a cannabis economy employs many in the area.

The Examining Attorney contended that Humboldt County is known for its distinctive wine, and that the characteristics of Humboldt County wine would be attributed to wines from Arcata. The Board observed, however, that the evidence did not support the Examining Attorney's argument. Humboldt County is not known for its wine; at most it has one viticultural area where a few dozen wineries are struggling for recognition. The three wineries located in Arcata obtain their grapes from other places. Customers would therefore not be induced to purchase applicant's wine in the belief that it was made with grapes grown in Arcata.

The Board declined to decide whether the name "Humboldt" would induce consumers to purchase wine. But the fact that Arcata is located in Humboldt County "is insufficient to persuade us that the name ARCATA would induce customers to purchase wine."

Having carefully reviewed the record, we see no indication that Arcata is "noted for" wine, that wine is a "principal product" of Arcata, or that wine is a product that customers perceive as “traditionally originating” in Arcata. Arcata does not appear to be a suitable place for growing wine grapes. Although there are three wineries located in Arcata, they acknowledge to the market (or the marketplace takes note) that their wine is made from grapes that are grown elsewhere. Although Arcata is located in Humboldt County, a place with a developing viticultural industry, Arcata itself is known as a university town.

And so the Board reversed the refusal.

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TTABlog comment: For a through discussion of Section 2(e)(3), see Anne Gilson LaLonde's article entitle "You Are Not Going to Believe This! Deception, Misdescription and Materiality in Trademark Law," 102 TMR 883 (May-June 2012) [pdf here].

Text Copyright John L. Welch 2014.

LA BOMBA and LA BAMBA Confusable for Cigars, Says TTAB

The Board affirmed a refusal to register the mark LA BOMBA, finding it likely to cause confusion with the registered mark LA BAMBA (Stylized), both for cigars. The Board took judicial notice of certain information from the Encyclopedia Britannica regarding "LA BAMBA" as the title of a Ritchie Valens song, but refused to do so with regarding to applicant's proffered entries from Wikipedia and from the Internet Movie Database (IMDb). In re Espinosa Cigars, LLC Serial No. 85772938 (October 3, 2014) [not precedential].

In its appeal brief, applicant asked the Board to take judicial notice of three references to the song "La Bamba," a traditional Mexican wedding song re-worked by Richie Valens into his "best remembered recording." As mentioned, the Board agreed to take judicial notice with regard to the Encyclopedia Brittanica entry. However, applicant did not establish that the IMDb is a standard reference worth or otherwise considered authoritative. As to the Wikipedia entry, that would have been acceptable had applicant offered it into the record at a time when the other party had an opportunity to rebut the evidence.

Ritchie Valens
Because the goods are identical, the Board presumed that they travel in the same, normal channels of trade to the same classes of consumers. Applicant argued that the relevant purchasers are "the most discriminating consumers" but offered no evidence to support that assertion. The Board observed that cigars "are not so expensive that we can assume consumers would necessarily exercise a higher level of care in purchasing."

The Board found the marks to be "extremely similar in sound and appearance." The stylization of the cited mark was of little significance, since the Board must assume that the applied-for mark could be depicted in the same stylization. As to pronunciation, there is no correct pronunciation of trademarks that are not easily recognizable English works. The two marks at issue would be verbalized in a similar manner.

Applicant maintained that the marks are distinguishable because of their different meanings. As translated from the Spanish. LA BOMBA means "the bomb." The Encyclopedia entry, as mentioned above, showed that LA BAMBA was a traditional Mexican wedding song that was popularized by Ritchie Valens decades ago. The Board was not impressed:

Although Spanish is commonly spoken language in the United States, this does not mean that cigar purchasers, or even a substantial composite of the consuming public, will understand the difference and distinguish the two marks based on their translated meanings. We keep in mind that the spellings of the two marks do not differ greatly and it is thus possible that a purchaser, who is unfamiliar with their Spanish meanings or who inadvertently does not notice the "O/A" letter difference, may mistakenly believe that Applicant’s mark is a reference to the Mexican folk song (or rock-and-roll song). Again, we must consider the possibility of word of mouth referrals such that, given the faint, if any, aural difference in the marks pronunciations, there may be confusion even if the connotations of the actual marks are different.

And so the Board affirmed the refusal.

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TTABlog comment: Rock on!

Text Copyright John L. Welch 2014.

Test Your TTAB Judge-Ability: Is KETOSIS ESSENTIALS Merely Descriptive of Nutritional Supplements?

The USPTO refused registration of the mark KETOSIS ESSENTIALS, deeming it merely descriptive of nutritional supplements [KETOSIS disclaimed], under Section 2(e)(1). The examining attorney asserted that the constituent words describe the goods, and that the combination adds no new meaning. Applicant pointed out that it owns ten existing registrations for marks containing the word ESSENTIALS for nutritional supplements. How do you think this came out? In re Healthy Directions, LLC, Serial No. 85485512 (September 23, 2014) [not precedential].

Ketosis is a condition characterized by an elevated concentration of ketone bodies in the body's tissues and fluids, and is often a complication of diabetes. Applicant, by its disclaimer, acknowledged that KETOSIS is descriptive of the goods.

The examining attorney provided dictionary definitions of "essential," as well as nine third-party registrations for ESSENTIALS-formative marks and one ESSENTIAL-FORMATIVE mark, either on the Supplemental Register or with a disclaimer of ESSENTIALS, all for supplements.

The Trademark Examining Attorney argues that inasmuch as Applicant is providing supplements that contain essential vitamins, minerals and/or other nutrients for individuals dealing with elevated ketone levels, or ketosis, no imagination is required to understand the nature of the goods, and hence, the mark is merely descriptive.

Applicant's ten registered marks included JOINT ESSENTIALS [JOINT disclaimed], CRANBERRY ESSENTIALS [CRANBERRY disclaimed], and CHOLESTEROL ESSENTIALS [CHOLESTEROL disclaimed]. It argued that its ten registrations were more probative than those cited by the examining attorney because its marks were in the same form as the applied-for mark.

The Board noted that one dictionary definition of "essential," in adjectival form, referred to a substance that is not synthesized by the body in a quantity sufficient for normal health and growth
(e.g., essential amino acids). But it observed that when the word "essential" is used as a plural noun and as the second component of KETOSIS ESSENTIALS, "the information conveyed is not so immediate."

The registrations made of record indicated that the USPTO has not been consistent in its treatment of the word "essentials" for vitamins and supplements. Having a "not insignificant level of residual doubt" regarding the descriptiveness of the applied-for mark, the Board resolved that doubt in favor of applicant, and it reversed the refusal to register.

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Text Copyright John L. Welch 2014.

TTAB Reverses Refusal of "ZOMBIE CINDERELLA" over "WALT DISNEY'S CINDERELLA & Design" for Dolls

The Board reversed a Section 2(d) refusal to register the mark ZOMBIE CINDERELLA for dolls, finding the mark not likely to cause confusion with the registered mark WALT DISNEY’S CINDERELLA & Design, shown below, also for dolls. Marketplace evidence of third-party "Cinderella" dolls, as well as the long history of the fairy tale, demonstrated that CINDERELLA is a weak formative. The Board concluded that the combination of ZOMBIE with CINDERELLA creates an incongruous impression that results in a significant difference between the marks. In re United Trademark Holdings, Inc., Serial No. 85706113 (October 9, 2014) [not precedential].

Judicial Notice: The examining attorney struck out twice in his requests that the Board take judicial notice of certain matters. First, as to several specimens of use submitted by applicant in other applications, the Board pointed out that it does not take judicial notice of USPTO records. Second, regarding the fame of "Walt Disney" and the Disney Company, the Board observed that, because fame is a dominant factor in the duPont analysis and must be clearly proven, it is "generally an unsuitable subject for judicial notice."

Cinderella's Weakness The story of Cinderella has been known to the public since at least 1697. The evidence showed that the Cinderella "is an established part of our cultural fabric and enjoys extremely widespread public recognition." Moreover, Aapplicant provided nine examples of dolls that depict the fairy tale character Cinderella. This evidence of marketplace use of CINDERELLA in connection with dolls further underscored the weakness of the term as a source identifier.

The record also shows, as we discuss further below, that this cultural figure has had an impact in the commercial field of dolls, and that many dolls that depict the character Cinderella have been offered in the market by unrelated businesses. We find that, for a doll that depicts the fairytale character Cinderella, the term "Cinderella" is, at a minimum, highly suggestive of the doll in that it names the fairytale character depicted. As such, it has limited power to function as a source indicator.

The Board concluded that the term CINDERELLA, as it appears in the cited mark, is entitled to a limited scope of protection.

Comparing the Marks: The examining attorney contended that the term ZOMBIE is not arbitrary with respect to dolls that depict zombies, but is descriptive thereof. Applicant, on the other hand, maintained that the combination of CINDERELLA and ZOMBIE has a "transformative effect":

Applicant’s mark juxtaposes the grotesqueness of a monster commonly portrayed in horror films with the beauty and innocence of a classic fairytale princess, giving it a unique and incongruous meaning and overall commercial impression. This odd combination of horror and fantasy creates a cognitive dissonance in the minds of consumers and results in a feeling of disequilibrium

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The Board found that the designation WALT DISNEY’S is "inherently distinctive and its possessive form emphasizes the weakness of the term CINDERELLA, indicating it is Registrant’s version of the character as opposed to another’s version." Furthermore, the design element "may function, for juvenile customers, as a stronger source indicator than the term CINDERELLA, because it depicts a specific version of Cinderella that is associated with the Walt Disney animated film 'Cinderella.'"

The Board also found that  ZOMBIE and CINDERELLA each have little distinctiveness for dolls that depict zombies. But the Board agreed with applicant that "the combination of ZOMBIE with CINDERELLA creates a unitary mark with an incongruous impression."

Because of the differences in connotation and commercial impression, the Board found the marks not confusingly similar:

We are persuaded by Applicant’s contention that the mark ZOMBIE CINDERELLA creates a "cognitive dissonance," involving an uneasy mixture of innocence and horror. By contrast, the registered mark creates an impression of prettiness and goodness. Even if such marks were used on identical goods, these distinct commercial impressions would be distinguishable.

And so the Board reversed the refusal.

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TTABlog comment: Hat tip to fellow blogger Erik Pelton for this victory!

Text Copyright John L. Welch 2014.

Test Your TTAB Judge-Ability: Is THE VINTNER GROUP Generic for a Wine Distributorship?

The USPTO refused registration on the Supplemental Register, of the designation THE VINTNER GROUP for "Import agency and wholesale distributorship featuring wine," on the ground of genericness. Is THE VINTNER GROUP a compound word (e.g., Gould's SCREENWIPE) or a phrase (American Fertility's AMERICAN SOCIETY FOR REPRODUCTIVE MEDICINE )? Does the relevant public include general consumers, or only winemakers and retailers? How do you think this came out? In re The Country Vintner, Serial No. 85567206 (October 8, 2014) [not precedential].

Both applicant and the examining attorney agreed that the genus of the services at issue is "wholesale distributorship featuring wine." Because "wholesale" refers to sale of goods to retailers, the Board agreed with applicant that sale of wine to the public is not included in the genus.

The Board found THE VINTNER GROUP to be a phrase rather than a compound word. "'Gould is limited, on its facts, language, and holding, to compound terms formed by the union of words.' In re American Fertility Society, 51USPQ2d at 1837. Here, there is no union of THE, VINTNER and/or GROUP into a compound term, nor is there a joinder (as described in American Fertility) of the 'most pertinent and individually generic terms applicable' to Applicant’s services.'"

Under American Fertility, dictionary definitions of the constituent words are not sufficient to establish genericness. The evidence must show that the relevant public refers to wholesale distributorship services featuring wine as THE VINTNER GROUP. The examining attorney bears the burden to prove genericness by a "strong" showing, with "clear evidence."

Dictionary definitions, third-party registrations, website evidence, and applicant’s own specimen of use established that THE VINTNER GROUP is merely descriptive of applicant’s services." It is also quite apt for wholesale distributorship services featuring wine," but aptness is not the test for genericness.

The evidence submitted by the examining attorney did not show use of the exact phrase THE VINTNER GROUP. Thirteen items showed "vintner group" in connection with association services, not distributorship services. The closest item, vintnergroup.com, was not used in this country. In fact, the only evidence of use THE VINTNER GROUP in the United States referred to applicant.

In sum, clear evidence of genericness was lacking. "'Much of the Examining Attorney’s evidence appears to illustrate little more than 'the thoroughness with which NEXIS [and the Internet] can regurgitate a [term] casually mentioned in the news.'"

The Board observed that this is a "close and difficult case," and it acknowledged that on a different record (e.g., in an inter partes proceeding) it might well reach a different conclusion. But on the current record, it reversed the refusal to register.

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Text Copyright John L. Welch 2014.

Test Your TTAB Judge-Ability: Is “L.A.M.B.” Deceptive for Clothing?

The USPTO refused to register the mark L.A.M.B. for “[c]lothing, namely, jackets, blazers, dresses, skirts, sweaters, jeans, scarves, tops, cardigans, camisoles, shorts, and bustiers; footwear; and headwear,” finding the mark deceptive for the goods under Section 2(a). Applicant indicated that its products are made of cotton or similar material, but contended that “consumers will and do perceive Applicant’s L.A.M.B. mark – with periods or 'dots' between the letters – as an acronym with the letters 'L', 'A', 'M', and 'B' representing 'LOVE', 'ANGEL', 'MUSIC' and 'BABY,' respectively," and that L.A.M.B. is a fashion line created by American singer Gwen Stefani. How do you think this came out? In re LAMB-GRS, LLC, Serial No. 77756492 (September 30, 2014) [not precedential].

The test for determining whether a mark is deceptive under Section 2(a) has been articulated in Budge as: (1) Is the term misdescriptive of the character, quality, function, composition or use of the goods? (2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods? (3) If so, is the misdescription likely to affect a significant portion of the relevant consumers’ decision to purchase the goods?

Evidence of use and of recognition by consumers and the trade can be considered in analyzing the first and second prongs of the Budge test; that is, such evidence may be considered in determining whether the mark misdescribes the goods and whether prospective purchasers are likely to believe that the misdescription actually describes the goods.

The evidence showed that Gwen Stefani, is a well-known singer and fashion designer. In 2004, her first solo album, “LOVE ANGEL MUSIC BABY,” sold more than seven million copies worldwide. At that time, Ms. Stefani launched a clothing and accessory line under the “brand name” L.A.M.B., an acronym for the name of her album. Sales have exceeded $175 million and here clothing is sold at many major retailers. She has secured four registrations for the L.A.M.B. mark for clothing items “that are similar to those identified in the present application or are items that may be made from lambskin.”

Applicant submitted Wikipedia evidence, media references, retail store website pages concerning the L.A.M.B. mark, as well as third-party registrations for BLACK LAMB, LITTLE LAMB, SHEEP, and WILD PIGS for various clothing items.

The Board acknowledged that the commercial impression of a mark is generally not altered by the presence or absence of punctuation marks. However, “the record in this case shows that Applicant’s L.A.M.B. mark is perceived by relevant consumers and the trade as an acronym that is synonymous with the words “LOVE ANGEL MUSIC BABY.”

Of particular note, Applicant’s much visited website immediately informs a visitor that Applicant’s L.A.M.B. mark is derived from the words LOVE ANGEL MUSIC BABY and the renown of the L.A.M.B. mark, as reflected in the promotional activities, sales figures and unsolicited media coverage, reiterates that understanding. We also point out that the fabrics used in connection with Applicant’s obviously L.A.M.B. “branded” clothing items are discernable when viewing the items in a retail store setting or online.

The Board concluded that consumers will perceive L.A.M.B.” as a trademark and that the words it represents, LOVE ANGEL MUSIC BABY, are arbitrary with respect to Applicant’s identified clothing, headwear and footwear.

And so the Board reversed the refusal.

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TTABlog comment: I asked my wife if she ever heard of Stefani. She said no. I’ve never heard of her album or her clothing line. I suspect there are more Americans who are unaware of the acronym “L.A.M.B” than are familiar with it. So I have my doubts about this decision.

Note there is nothing in the identification of goods restricting them to clothing items sold by or in in connection with Gwen Stefani. Suppose she assigns the registration tomorrow to a clothing manufacturer who makes no reference to her or her album? Then is the mark deceptive?

Text Copyright John L. Welch 2014.

Precedential No. 41: Finding Fraud, TTAB Sustains Opposition to NATIONSTAR for Real Estate Brokerage Services

The Board sustained a fraud claim for the first time since the CAFC issued its 2009 decision in In re Bose, finding that Applicant Mujahid Ahmad’s averments as to his use of the mark NATIONSTAR for various real estate brokerage services were fraudulent. Nationstar Mortgage LLC v. Mujahid Ahmad, 112 USPQ2d 1361 (TTAB 2014) [precedential].

On April 20, 2006, Mr. Ahmed personally filed a use-based application for the NATIONSTAR mark for “Real estate brokerage; rental of real estate; real estate management services, namely, management of commercial and residential properties; real estate investment; residential and commercial property and insurance brokerage; mortgage brokerage; and business finance procurement services.” Mr. Ahmad is a real estate agent in Virginia. He was not a real estate broker, insurance broker, or mortgage insurance broker, each of which requires a state license, at the time of filing his application to register.

Ahmad testified that he chose the mark in 2004-2005, after checking the Virginia corporate records and the USPTO databases. In April 2005, he registered several domain names containing the word “nationstar.” In early April 2006, opposer Nationstar Mortgage LLC contacted Ahmad, offering to buy two of the domain names. Within days, Ahmad filed the application here at issue.

After the subject opposition was commenced, Mr. Ahmad, now represented by counsel, filed a motion to amend the filing basis of his application to Section 1(b) intent-to-use. In June 2008, the Board granted the motion to amend, but noted that “amending the filing basis of the opposed application to Section 1(b) does not protect the application from the fraud claim.”

Fraud must be proven with clear and convincing evidence. A false statement made with a reasonable and honest belief of its truth is not fraud. There must be an “intent to mislead the USPTO into issuing a registration to which the applicant was not otherwise entitled.”

Ahmad’s testimony regarding use of the mark NATIONSTAR as of his filing date was of grave concern to the Board, due to his “evasiveness and his failure to respond directly to straightforward questions.” For example, he could not identify which printed materials he created and which were created by others, he claimed not to know whether his business earned any income, and he dodged questions about his filing of tax returns. The Board found his testimony “so lacking in conviction and credibility as to be virtually incapable of corroboration.” The documents that he provided were of “virtually no probative value” because he could not state who created them or when.

The Board observed that, as a real estate agent, Mr. Ahmad was well aware that legal documents must be carefully reviewed prior to signing. According to his testimony, Ahmad was well aware of the restrictions on real estate agents and he knew that separate licenses are required for brokers.

In short, the Board found Ahmad’s testimony to be “not at all credible,” and it concluded that Ahmad was not using the NATIONSTAR mark with any of the recited services prior to his filing date. At most he may have rendered real estate agency services prior to the filing date, as corroborated by two witnesses. Those services, however, were not listed in the application.

The Board next found that the false statements made by Ahmad were made knowingly and with an intent to deceive the USPTO. It noted that the law does not require “smoking gun” evidence of deceptive intent; direct evidence of deceptive intent is seldom available. Therefore, deceptive intent may be inferred from the surrounding facts and circumstances. Here, the surrounding facts and circumstances “provide clear and convincing evidence that applicant did not have a good faith reasonable basis for believing that he was using the NATIONSTAR mark in commerce for all the services identified in the application.”

The Board distinguished this case from In re Bose, where it was not unreasonable for the corporate officer who signed the Section 8 declaration there at issue to believe that the mark was in use in interstate commerce. Here, there was no nuance of trademark law that applicant may have incorrectly interpreted. Instead this case involved an applicant making false statements about his own industry and his own activities, knowing that he did not have the appropriate licenses.

The fact that Ahmad filed the subject application himself did not give him “a free pass to disregard the straightforward requirements of a use-based application and the solemnity of the application declaration that he signed subject to criminal penalties under 18 U.S.C. Section 1001.”

The Board therefore sustained the opposition, declining to consider the additional grounds of likelihood of confusion and lack of bona fide intent.

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TTABlog note: What do we learn from this decision? How did Ahmad think he was going to avoid a fraud finding? It is good to see that there are indeed some serious consequences to filing a false declaration.

Text Copyright John L. Welch 2014.

Call For Papers: Sixth Annual INTA Trademark Scholarship Symposium

Call For Papers: Sixth Annual INTA Trademark Scholarship Symposium

Precedential No. 40: TTAB Finds "MC" Family Famous, Sustains Dilution Opposition to MCSWEET for Pickled Vegetables

In a 59-page opinion, the Board sustained McDonald Corporation's opposition to registration of the mark MCSWEET for pickled gourmet vegetables, finding the mark likely to cause confusion with, and likely to dilute, opposer's "MC" family of marks for restaurant services and food products. Based on opposer's staggering sales and advertising figures and its "extraordinarily impressive number of products identified by individual marks in the 'MC' family," the Board concluded that the family of marks consisting of the prefix "MC" followed by a descriptive or generic term is famous for both Section 2(d) and Section 43(c) purposes. [This post will attempt to hit the high points of the opinion]. McDonald’s Corp. v. McSweet, LLC, 112 USPQ2d 1268 (TTAB 2014) [precedential].

Family of Marks: The Board first addressed the family-of-marks question.

A family of marks is a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the trademark owner. Simply using a series of similar marks does not of itself establish the existence of a family. There must be a recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods.

Opposer owns registrations for, and uses, the mark MC (alone) as well as the marks MCDONALD’S, MC CHICKEN, MC DOUBLE, MCRIB, MCMUFFIN, MCNUGGETS, MCGRIDDLES, MCCAFE, MCSKILLET, and MCFLURRY. [The marks MC, MCDONALDS, and MCFLURRY "are not, strictly speaking, members of Opposer’s claimed 'MC' family of marks because neither 'DONALDS' nor 'FLURRY' is generic or descriptive of the relevant goods, and the mark MC lacks a generic or descriptive suffix." Nonetheless, these marks reinforce the association between Opposer and marks that incorporate the prefix "MC."] According to witnesses, Opposer’s efforts to establish and maintain the “MC” family of marks have been so successful that consumers spontaneously use the “MC” prefix in connection with all of Opposer’s products. The Board concluded that McDonald's owns a family of "MC" marks comprising the prefix "MC" followed by a descriptive or generic term.

Section 2(d) Fame: In assessing the fame of the family of marks, the Board also considered the fame of the mark MCDONALD’S "because the 'MC' family was derived from and points back to the mark and as such is integrally related to that mark."

The evidence established that opposer has used the MCDONALD’S mark in connection with food and restaurant services since 1955, and operates 14,000 restaurants in the United States which serve 26 million people per day. It sells an "enormous number" of products under each of its 'MC' family members. Opposer extensively advertises products within the “MC” family - with some of the advertising emphasizing the "MC" prefix - and has also widely advertised under the MCDONALD’S mark for several decades.

The Board concluded that the "MC" family of marks is famous for Section 2(d) purposes, 

Applicant lamely argued that "the fame of [Opposer’s] mark may weigh against a finding of likelihood of confusion because consumers are so familiar with the famous mark that they can readily identify differences with other marks and the goods or services offered thereunder." The Board pointed out that the fame of a mark is not to be considered a liability in the likelihood of confusion analysis. It concluded that, the mark MCDONALD’S and the "MC" family of marks are famous in connection with restaurant services and food products, and are entitled to a wide latitude of legal protection.

Similarity of the Marks: In considering the involved marks, "the question is not whether Applicant’s mark is similar to Opposer’s individual marks, but whether Applicant’s mark would likely be viewed as a member of Opposer’s family of marks."

Applicant acknowledging that its mark was created by Leo McIntyre using the “MC” from his surname and "SWEET" to describe the sweet brine used to pickle onions. Applicant argues that its mark can be distinguished from Opposer’s family of marks because its mark is a surname. The Board disagreed: "Because Applicant’s mark and Opposer’s family of marks all start with the prefix “MC” and are followed by a term that is descriptive or generic for the goods, we find that the similarities in appearance, meaning and commercial impression between Applicant’s mark MCSWEET and Opposer’s family of “MC” formative marks are such that potential consumers would view Applicant’s mark as a member of Opposer’s family of marks."

Relatedness of the Goods: The evidence established that pickled vegetables are offered at quick service restaurants; Opposer’s restaurants offer multiple products that contain pickles and onions, and applicant’s pickled vegetables may be used as toppings for opposer's sandwiches. In view of the fame of Opposer’s "MC" family of marks for its food products and the complementary nature of the goods, the Board found the parties’ goods to be sufficiently related to support a finding of likelihood of confusion.

Applicant contended that its goods travel in different channels of trade from Opposer’s goods and services, since applicant's goods are not sold in quick-service restaurants. The Board noted, however, that there are no restrictions as to channels of trade in the opposed applications.

Moreover, restaurant-branded foods are also sold in supermarkets or grocery stores: for example, Burger King frozen onion rings, White Castle frozen hamburgers, and T.G.I. Friday’s frozen appetizers. Grocery stores are thus within the ordinary channel of trade for restaurant-branded goods. Moreover, since 1993, Opposer has operated McDonald’s restaurants inside Wal-mart stores.

Considering the relevant du Pont factors, the Board found confusion likely and it sustained the Section 2(d) claim.

Likelihood of Dilution: The Board ruled that the term "famous mark" in Section 43(c)(2)(B) is applicable to a "famous family of marks." This statutory language "encompasses not just an individual famous mark, but also a famous family of marks. There is nothing in the Lanham Act or its legislative history to warrant the exclusion of a family of marks from protection against dilution. Indeed, the inherent nature of a family of marks, may make such marks more susceptible to blurring than a single mark."

Fame: Based on the record evidence, the Board found that Opposer's "MC" family of marks meets the higher fame standard applicable for the purpose of establishing dilution by blurring. Moreover, Opposer also proved that its family of marks was sufficiently famous as early as 1986, prior to applicant's alleged first use of the applied-for mark in 1990.

Considering the six "blurring" factors set forth in Section 43 (c)(2)(B)(i)-(vi), the Board found that applicant’s mark MCSWEET is "very similar to Opposer’s family of marks;" that the combination of the prefix "MC with a generic or descriptive food term is inherently distinctive; that opposer's use of its "MC" family of marks is substantially exclusive; and that the degree of recognition of opposer's family of marks is and has been quite strong since as early as 1986 (when Opposer operated 7,272 restaurants in the United States and had sales of approximately $9,534,000,000). The Board found no evidence that applicant intended to create an association with Opposer’s family of marks.

Finally, as to proof of actual association between applicant's mark and the "MC" family of mark, opposer relied on the results of a dilution survey. The Board noted that "[b]oth the courts and the Board have found the 'brings to mind' survey format acceptable as evidence of actual association, which is required to establish likelihood of dilution."

Opposer's survey demonstrated "a substantial degree of association between MCSWEET and McDonald’s and the "MC" marks: "67% or two out of three individuals who encounter the MCSWEET term associate it with Opposer, McDonalds and its 'MC' marks." Notwithstanding Applicant’s objections, the Board found that "the survey demonstrates actual association between the mark MCSWEET and Opposer's family of 'MC' marks."

Considering all of the relevant dilution factors, the Board found that the mark MCSWEET "is likely to impair the distinctiveness of Opposer’s family of “MC” marks and is therefore likely to cause dilution by blurring within the meaning of Section 43(c)."

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TTABlog comment: There's a lot of basic TTAB law well explicated in this opinion. The discussion of the dilution survey is particularly instructive.

Text Copyright John L. Welch 2014.