E.D. Va. Denies Motion to Dismiss Pro-Football's REDSKINS Appeal

Judge Gerald Bruce Lee of the United States District Court for the Eastern District of Virginia, has denied a Rule 12(b)(1) motion to dismiss Pro-Football, Inc.'s Section 1071(b) action seeking review of the TTAB's REDSKINS decision [here]. Judge Lee rejected Defendant's assertions that there is no judicially cognizable dispute because the five Native American defendants have no direct stake in the outcome of the case and are therefore not "parties in interest." Pro-Football, Inc. v. Blackhorse, et al., Civil Action No. 1:14-cv-01043-GBL-IDD (E.D. Va. November 25, 2014).

The court stated the overarching issue as follows: "whether, considering the entire record and drawing all reasonable inferences in Pro-Football's favor, the Court should grant Defendants' Motion to Dismiss because Pro-Football cannot bring an action against Defendants who have no commercial interest in the mark under §1071(b) of the Lanham Act."

In denying the motion, the court concluded as follows:

First, 15 U.S.C. §1071 provides review of a Trademark Trial and Appeals Board's decision in the Federal Circuit or a District Court, and any meritorious interest brought before an administrative proceeding, must carry over into a review of said proceeding. Second, the prior proceeding before the TTAB was an inter partes proceeding where Defendants were the sole adverse parties. Third, Defendants' petition for cancellation evidenced that Defendants have a legitimate direct and personal interest in the registration.

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TTABlog note: I doubt that many people are surprised at this ruling. Difficult to see how a party who successfully brought a proceeding could lack an interest in the outcome of the appeal.

Meanwhile, the United States is considering whether to intervene in this case, because Pro-Football has raised constitutional challenges to the validity of Section 2(a) of the Trademark Act. The court has set a deadline of January 9, 2015, for the U.S. to intervene. Discovery is set to close on that date.

Text Copyright John L. Welch 2014.

Reminder: ALI Webinar Dec 4th: "Trademarks, Trade Dress and False Advertising: Recent Developments for Business and IP Lawyers"

Yours truly, aka the TTABlogger, will team up again with Prof. Kenneth B. Germain in an ALI Webinar entitled "Trademarks, Trade Dress and False Advertising: Recent Developments for Business and IP Lawyers." When? Thursday, December 4th, 1:00 - 2:30 PM, Eastern Standard Time. Registration here.

Prof. Ken Germain

This practical program is specifically designed for business and IP lawyers who need to stay current with the recent trends in trademark, trade dress, and false advertising laws. Join us as our expert faculty provides a concise update and review of the latest cases from the United States Supreme Court, United States Courts of Appeals (including the Federal Circuit) and the U.S. Patent and Trademark Office Trademark Trial and Appeal Board.

Topics include:

• recent federal registration decisions on issues such as dilution-by-blurring, fraud, proof of lack-of-bona fide intent, disparagement, and specimens of use.
• possible resuscitation of a dead “generic term”
• likelihood of confusion, distinctiveness of marks, sponsored links
• dilution vs. confusion
• what's new in trade dress/product design and functionality
• injunctive relief, whether trademark causes deserve a presumption of irreparable harm
• monetary remedies: damages and attorney's fees under Lanham Act sec 35(a)
• consumer surveys: still in vogue or under suspicion
• insurance coverage for 'advertising injury' claims

.

TTAB Finds "PC LAPTOPS" Generic for ... Guess What?

In an enervating 28-page opinion, the Board affirmed a refusal to register the designation PC LAPTOPS for "computers, laptops, and portable computers" and for "retail store services in the field of computer hardware and software," finding the term to be generic for the identified goods and services, or alternatively, merely descriptive under Section 2(e)(1) and lacking acquired distinctiveness. The Board analyzed PC LAPTOPS as a "combined term," allowing consideration of dictionary definitions of the constituent words (as in Gould). But even if viewed as a "phrase" (as in American Fertility), the Board noted, PC LAPTOPS would still be generic. In re PC Laptops, LLC, Serial Nos. 77780768 and 77780823 (November 20, 2014) [not precedential].

Genericness: Not much to look at here. Dictionary definitions of PC and LAPTOP, along with media and public usage of PC LAPTOPS, convinced the Board that the applied-for designation is generic for applicant's goods. Furthermore, a term that is generic for certain goods is likewise generic for services featuring those goods.

Mere Descriptiveness: Applicant feebly contended that PC LAPTOPS may be considered a double entendre because "PC" is defined not only as "personal computer" but also as "politically correct." The Board, however, found nothing in the record to suggest that consumers would associate the concept of political correctness with computers. [Do some people think Apple computers are more "PC" than PC computers? - ed.].

Acquired Distinctiveness: Because PC LAPTOPS is highly descriptive, applicant had a "heavier burden" in demonstrating acquired distinctiveness. Applicant claimed continuous and substantially exclusive use since 1997, extensive advertising, consumer recognition, and recognition by the industry and media. But it failed to provide its advertising expenditures, or any context for comparisons with the industry. Nor did it provide sales volume.

Applicant offered the results of a consumer survey, but the Board accorded it little probative value, since no information was provided as to the methodology employed or the questions asked. "[T]here is nothing in the record to provide a basis for the results provided, or even what those results are intended to signify."

Finally, applicant's evidence of media recognition and industry awards was noted by the Board, but perhaps more important was applicant's failure to show that its use of PC LAPTOPS has been substantially exclusive, since there were "multiple uses by third-parties in a descriptive or generic manner."

The Board concluded that applicant had failed to establish acquired distinctiveness in connection with its identified goods and services.

And so the Board affirmed both refusals.

Read comments and post your comment here

TTABlog query: WYHA?

Text Copyright John L. Welch 2014.

TTAB Test: Are CENTURY and SECOLO Confusable for Wine?

The USPTO refused registration of the mark CENTURY for wine, finding it likely to cause confusion with the registered mark SECOLO for table wine. There was no dispute that the English translation of "secolo" is "century," but applicant argued that wine consumers are accustomed to seeing foreign words on wine labels and therefore would not translate "secolo" into "century." How do you think this came out? In re The Biltmore Company, Serial No. 85561663 (November 21, 2014) [not precedential].

Attention please: Is there a doctor of equivalents in the house? "Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine ... similarity of connotation in order to ascertain confusing similarity with English word marks." Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). The doctrine applies when it is likely that an ordinary American purchaser would "stop and translate" the foreign term into its English equivalent. Id. “The ‘ordinary American purchaser’ in this context refers to the ordinary American purchaser who is knowledgeable in the foreign language.” In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006).

There was no dispute that an appreciable number of U.S. consumers speak or understand Italian, or that the Italian word "secolo" is translated into English as "century." In addition to similarity in connotation, however, the Board must consider the appearance, sound, and overall commercial impression of the two marks in determining likelihood of confusion.

The Board found the marks dissimilar in appearance but somewhat similar in sound. "The first letter “c” in “century” is pronounced as an “s” would be, and each term is made up of three syllables." Furthermore, both words are arbitrary as applied to wine; thus SECOLO is conceptually strong as a trademark. The facts that applicant's goods (wine) encompass those of the cited registration (table wine), and that the goods are sold to the same customers through the same channels of trade, increase the likelihood of confusion.

Applicant pointed out that registrant, during prosecution of the application to register SECOLO, contended that purchasers would not “stop and translate” SECOLO into “century.” Registrant took that position when responding to a refusal to register based on the registered mark CENTURY OF PORT for port wine. The Board pointed out, however, that registrant's prior assertion is not an admission, although it may be considered as "illuminative of shade and tone in the total picture." See Interstate Brands Corporation v. Celestial Seasonings, Inc., 198 USPQ 151 (CCPA 1978). Each case must be decided on its own record, and registrant’s prior statements cannot be treated as indicating its position with respect to applicant’s mark and the goods at issue here.

Finally, as to applicant's assertion that wine drinkers will not translate foreign terms on wine labels, the Board found no evidentiary support. However, "[e]ven assuming some wine labels bear designations in languages other than English does not compel a conclusion that prospective purchasers will not translate any such terms, including SECOLO, into English."

And so the Board affirmed the refusal.

Read comments and post your comment here

TTABlog query: When the English translation of the foreign word is not an exact equivalent to the English language mark, likelihood of confusion may be lacking. See for example this case involving the Japanese word KOKORO and the English word HEART. For a real contretemps over a translation, see the GO GIRLS case (here).

Text Copyright John L. Welch 2014.

Title of Book Is Registrable With Acquired Distinctiveness, Says TTAB

The Board ruled that the title of a single book or a single DVD is properly refused registration under Section 2(e)(1) on the ground of mere descriptiveness, but is registrable under Section 2(f). Here, however, applicant failed to prove acquired distinctiveness, and so the Section 2(e)(1) refusal was affirmed. In re King Productions, Inc., Serial No. 76703458 (November 19, 2014) [not precedential].

The Examining Attorney refused registration under Sections 1, 2, and 45 of the Trademark Act on the ground that the title of a work fails to function as a trademark. Applicant for some reason focused on the issue of whether the specimens of use were acceptable, but that was not the basis for the refusal.

The Board observed that, although the registration of a title has often been refused registration under Sections 1, 2, and 45, the proper basis for refusal is Section 2(e)(1) because the title describes the work. A title is capable of registration if it is used for a second work (i.e., as the title of a series), and courts have  protected the title of a single work once secondary meaning has been established. So a title is capable of functioning as a trademark.

Of course, a Section 2(e)(1) refusal can be overcome by a showing of acquired distinctiveness under Section 2(f). And so the question here became whether applicant's mark had acquired distinctiveness.

Applicant had a "significant burden" under Section 2(f) because a title is highly descriptive of a book or DVD. Was there "sufficient public exposure of ROCK YOUR BODY in such a manner that consumers would view ROCK YOUR BODY not merely as a title of the book and DVD, but as  a trademark indicating source?"

Applicant sold only 884 sets of the book and DVD. Its website showed the mark used with apparel and workshops, which would convey to consumers that ROCK YOUR BODY plays a role beyond that of a title, but the evidence failed to show the extent of exposure of the website (e.g., the number of hits or visitors). The Board found that evidence insufficient to establish acquired distinctiveness, and so it affirmed the refusal under Section 2(e)(1).


Read comments and post your comment here

TTABlog note: Was the applicant aware that the Board would turn this appeal into a hunt for acquired distinctiveness?

Text Copyright John L. Welch 2014.

TTAB No Brainer? "GO PRO OR GO HOME" Confusable With "GO PRO" for Clothing

Applicant Go Pro Workouts trotted out several of the most frequent losing TTAB arguments in this Section 2(d) opposition to registration of GO PRO OR GO HOME for various clothing items. The Board not surprisingly found the mark likely to cause confusion with the registered mark GO PRO for overlapping clothing items. Gary Hale v. Go Pro Workouts, LLC, Opposition No. 91211810 (November 18, 2014) [not precedential].

The parties agreed to Accelerated Case Resolution (ACR), which resulted in a faster, although perhaps less expensive, defeat for applicant.

Because the goods overlap, the Board presumed that they travel through the same, normal channels of trade to the same classes of consumers. Applicant argued that opposer sells only clothing, while opposer's goods are ancillary to its sports training services. So, applicant maintained, its customers are athletes who train with applicant. That argument, the Board found, had little merit because the Board must make its determination based on the goods identified in the opposed application, regardless of what other goods and services applicant offers. Here there were no limitations on the channels of trade or classes of consumers.

Applicant further contended that its goods are purchased with an enhanced degree of care because a visitor to its website must register for a workout or nutritional plan before he or she can purchase any clothing item. The Board again pointed out there was corresponding limitation in applicant's identification of goods, and even if there were there was no evidence that purchasers of opposer Hale's products exercise extra care, and they may be confused by the marks.

As to the marks, applicant attempted to distinguish them by pointing to the dietary supplements and sports training services that it provides in connection with its mark, as if that significantly change the meaning of the mark. The Board again observed that applicant's supplements and training services are not part of this proceeding.

The Board found the marks to be similar in sound, appearance, meaning, and commercial impression. Notably, opposer's GO PRO s mark is contained in its entirety in applicant's mark and appears as the first part of the latter mark.

Applicant's assertion that GO PRO is in common use in the marketplace was not supported by the evidence. Applicant pointed to some three years of concurrent use of the involved marks with no evidence of actual confusion, but the Board pooh-poohed that argument. Three years is a relatively short period of time, and the fact that both parties' goods are sold on the Internet does not establish that there has been a meaningful opportunity for confusion to occur. Moreover, evidence of actual confusion is notoriously difficult to obtain, and the test is likelihood of confusion, not actual confusion.

To the extent that applicant argued that opposer's use of his mark was minimal and therefore confusion was unlikely, the Board noted that the rights flowing from a federal registration "do not vary with the size of the registrants."

The Board concluded that, even if GO PRO is a weak mark, it is entitled to protection, since "likelihood of confusion is to be avoided, as much between 'weak' marks as between 'strong' marks, or as between a 'weak' and 'strong' mark."

Read comments and post your comment here

TTABlog note: In short, the Board told applicant to GO HOME.

Text Copyright John L. Welch 2014.

ALI Webinar Dec 4th: "Trademarks, Trade Dress and False Advertising: Recent Developments for Business and IP Lawyers"

Yours truly, aka the TTABlogger, will team up again with Prof. Kenneth B. Germain in an ALI Webinar entitled "Trademarks, Trade Dress and False Advertising: Recent Developments for Business and IP Lawyers." When? Thursday, December 4th, 1:00 - 2:30 PM, Eastern Standard Time. Registration here.

Prof. Ken Germain

This practical program is specifically designed for business and IP lawyers who need to stay current with the recent trends in trademark, trade dress, and false advertising laws. Join us as our expert faculty provides a concise update and review of the latest cases from the United States Supreme Court, United States Courts of Appeals (including the Federal Circuit) and the U.S. Patent and Trademark Office Trademark Trial and Appeal Board.

Topics include:

• recent federal registration decisions on issues such as dilution-by-blurring, fraud, proof of lack-of-bona fide intent, disparagement, and specimens of use.
• possible resuscitation of a dead “generic term”
• likelihood of confusion, distinctiveness of marks, sponsored links
• dilution vs. confusion
• what's new in trade dress/product design and functionality
• injunctive relief, whether trademark causes deserve a presumption of irreparable harm
• monetary remedies: damages and attorney's fees under Lanham Act sec 35(a)
• consumer surveys: still in vogue or under suspicion
• insurance coverage for 'advertising injury' claims

.

Test Your TTAB Judge-Ability on these Three 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 three 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 Wildgame Innovations, LLC, Serial No. 85651686 (November 17, 2014) [not precedential]. [Refusal to register the mark FLEXTONE GAME CALLS DIRTY LIL’ HEN for "hunting game calls" [GAME CALLS and HEN disclaimed] in view of the registered mark DIRTY LITTLE DOE, also for hunting game calls [DOE disclaimed].

In re SuperShuttle International, Inc., Serial No. 85765129 (November 14, 2014) [not precedential]. [Refusal to register MyECar, in standard character form, for "transportation services, namely, airport ground, charter, and door-to-door transportation services of passengers by motor vehicles, and not car leasing or reservation services for vehicle rental," in view of the mark ECAR, registered for vehicle leasing, rental, and reservations services, and for automobile dealership services.

In re Brar Business Enterprises, Serial No. 85641460 (November 13, 2014) [not precedential]. [Refusal to register SLICE OF ITALY for "bar services, restaurant services, restaurants featuring home delivery; take-out restaurant services" [ITALY disclaimed], in view of the registered mark A LITTLE SLICE OF ITALY for pizza.]

Read comments and post your comment here.

TTABlog query:  How did you do? Any WYHAs here?

Text Copyright John L. Welch 2014.

Despite Lack of Documentation, Applicant Had Bona Fide Intent to Use "HARD CANDY" for Luggage, Says TTAB

In this dispute over the mark HARD CANDY, opposer claimed that the opposed application was void ab initio because applicant lacked a bona fide intent to use the mark in connection with the identified goods (leather goods) when the application was filed (March 27, 2009). Opposer relied on applicant's "pattern" of filing several dozen Section 1(b) applications for various goods, only to abandon them by failing to submit a Statement of Use. And it pointed to applicant's lack of pre-filing documentation that pertained to leather goods. The Board found, nonetheless, that applicant did have an intention to expand its line of products to leather goods. Hard Candy Cases, LLC v. Hard Candy, LLC, Opposition No. 91195328 (November 13, 2014) [not precedential].

Applicant relied on a pre-filing email to a potential licensing representative, in which it stated its goal of extending HARD CANDY into a "lifestyle brand." The only products specifically mentioned, however, were cosmetics. Applicant's witness testified that applicant had some communications with the potential representative in which handbags were discussed. Several post-filing emails did refer to leather goods, including one that concerned a meeting with Walmart, to whom applicant had sold cosmetic products since 2008.

The Board found that applicant's documentation and testimony were consistent and supportive. It was applicant's intention in talking to potential licensees and representatives to build a lifestyle brand. "In fact, ... the crux of Applicant's efforts was expansion into those product lines which Walmart would agree to purchase and sell, whether leather goods, jewelry, watches or perhaps something else."

Applicant ultimately succeeded in expanding its use of HARD CANDY into 'other categories such as sunglasses, cosmetic bags and apparel,' ... and that would not have happened unless Applicant intended it to happen.

Although applicant's intention to sell leather goods hinged on Walmart's agreement to buy them, that still qualified as a bona fide intention to use the mark. Moreover, post-filing documentation is admissible to corroborate the existence of a pre-filing bona fide intent.

Although applicant intention may have been focused more on expansion generally than on leather goods specifically, "that does not mean that Applicant's intent to use its mark on leather goods (and other products) was not bona fide." Given applicant's experience and demonstrated ability to expand its product line, its expansion into leather goods is entirely credible.

Finally, as to the dozens of abandoned trademark applications, the Board recognized that this may, in some circumstances, evidence a lack of bona fide intent. However, intent to use applications are often abandoned, for a variety of legitimate reasons. Here, it is undisputed that applicant did expand its business line from cosmetics to other products, and at the time of filing it intended to expand into leather goods.

And so the Board dismissed the opposition.

Read comments and post your comment here

TTABlog note: Reminds one of the ROLL-X case, in which the applicant had a bona fide intent to use the mark on x-ray tables, although it lacked pre-filing documentation. There, the filing of the ROLL-X application was consistent with an extension of applicant's product line, and applicant had the capacity to manufacture and market the goods. [TTABlogged here].

Text Copyright John L. Welch 2014.

TTAB Test: Is "THE EGG" Merely Descriptive of Facial Toning Devices?

The USPTO refused to register the mark THE EGG for "facial toning machines for cosmetic use" on the ground of mere descriptiveness under Section 2(e)(1). Examining Attorney Paul Moreno pointed out that applicant's machines or devices are egg-shaped, but applicant maintained that this is not a significant feature of the products. How do you think this came out? In re Flageoli Classic Limited, LLC, Serial No. 85811333 (October 30, 2014) [not precedential].

The Examining Attorney provided a (rather circular) definition of the word egg: "Something having the ovoid shape of an egg." He also submitted webpages showing that applicant and others refer to components of their facial toning machines as being "egg-shaped." in particular, applicant stated that its "handheld units store inside egg-shaped divider" and that "this device includes two hand-held, egg-shaped probes that are gently pressed to the skin."

The Board observed that "a word which describes the form or shape of a product falls under the proscription of Section 2(e)(1) of the Trademark Act." For example: V-RING for directional antennas, the primary components of which were shaped in the form of a "v" and a "ring;" CHAMBERED PIPE for an exhaust system consisting of a series of small tuning chambers; MATCHBOX SERIES for toys sold in boxes having the size and appearance of matchboxes; BEEFLAKES for frozen, thinly sliced beef; TOOBS for bathroom and kitchen fixtures in the shape of tubes; STRAIGHTS for straight legged jeans; WING NUT for for electrical connectors having winged projections for leverage while screwing; V-FILE for a card filing device in which the opening between the cards was in the form of a "v;" TTABLOG for blogs in the shape of the TTAB. [I made up that last one - ed.].

Of course, the word THE does not add any source-identifying significance to EGG. The Board therefore concluded that THE EGG is merely descriptive of the identified goods under Section 2(e)(1) because it "immediately and directly informs prospective purchasers and users of the shape or form of Applicant’s goods."

AFFIRMED.

Read comments and post your comment here

TTABlog query: Over-easy? Or egg on your face?

Text Copyright John L. Welch 2014.

TTAB Test: Are "TOKYO MOTORS" And "TOKYO RODS" Confusable For Retail Auto Parts Services?

David Becklean applied to register the mark TOKYO MOTORS for "business services, namely, retail store services featuring automobile parts, accessories, and aftermarket parts" [MOTORS disclaimed], but the USPTO refused registration, finding the mark likely to cause confusion with the registered mark TOKYO RODS for "online retail and wholesale store services featuring Japanese automobile parts and accessories; advertising of Japanese automobiles and parts for Japanese automobiles for others via the Internet; providing Japanese automotive information via a global computer network relating to vehicles for sale and vehicle parts and accessories" [RODS disclaimed]. How would you rule? In re Becklean, Serial No. 85748394 (November 13, 2014) [not precedential].

The Board agreed with Examining Attorney Charles L. Jenkins, Jr., that TOKYO is the dominant part of each mark, and that consumers will focus on that word as the first part of each mark. The Board did not buy applicant's arguments that the two marks create very different commercial impressions: "while 'rods' may conjure the term hotrod' or a vehicle modified for speed, the mark TOKYO RODS remains suggestive of a retail automotive parts and accessories source, albeit one with an emphasis on Japanese cars and performance. Likewise, Applicant’s TOKYO MOTORS will be understood by consumers as indicating a retail source for Japanese automobile parts and accessories."

And so the Board found the marks to be very similar in sound, appearance, and meaning.

Applicant "curiously" argued that "the relevant field is crowded with registered marks utilizing the term 'MOTORS' for retail services related to sales of automobiles and automobile parts and accessories." That argument actually supported the refusal, but the Board already decided that TOKYO is the dominant part of each mark.

Applicant's services are broad enough to encompass those of the cited registration. Moreover, third-party use-based registrations showed that both "retail" and "online retail" store services featuring automotive parts and accessories may be offered under the same mark.

The Board therefore affirmed the refusal.

Read comments and post your comment here

TTABlog note: Well, how did you do?

Text Copyright John L. Welch 2014.

TTAB Test: Feast Your Eyes on this 2(d) Refusal of BLUE SANTA STEW HOLIDAY FEAST

The USPTO refused registration of the word + design mark shown below, in view of the the registered mark HOLIDAY FEAST, both for pet foods. Are the marks different enough for reversal? How would you rule? In re Blue Buffalo Company, Ltd., Serial No. 85935706 (October 31, 2014) [not precedential].

Because the goods overlap, the Board must presume that they travel through the same channels of trade to the same classes of consumers. The goods are inexpensive items that may be purchased on impulse. Of course, since the goods are legally identical, a lesser degree of similarity between the marks is needed to support a likelihood of confusion refusal.

Applicant argued that that any similarity between the mark is of minimal importance because HOLIDAY FEAST is descriptive of the goods. [What holidays do pets celebrate? - ed.] The Board pointed out, however, that the cited mark is registered on the Principal Register without any disclaimer, and so "any argument that the registered mark is descriptive is improper and unavailing in the context of an ex parte proceeding such as this." Under Section 7(b) of the Trademark Act, the cited mark is presumed to be distinctive.

Moreover, there was no evidence of third-party use of HOLIDAY FEAST in connection with pet food. And so this is not a case similar to Knight Textile, where common use of the term ESSENTIALS, even though registered, was sufficient to distinguish the mark NORTON MCNAUGHTON ESSENTIALS for women’s clothing. [TTABlogged here].

To the extent that HOLIDAY FEAST is suggestive of "a grandiose meal for their pets or pet food that has a seasonal flavoring," the same suggestive meaning occurs with both marks and serves to strengthen the similarity between them.

The Board found that the commercial impressions of the two marks were not different enough to avoid a likelihood of confusion:

Both marks engender a holiday-themed fancy meal, albeit in a playful manner inasmuch as it is for pet food. Applicant’s mark accentuates the Christmas season with the wording SANTA STEW that is prominently displayed in larger letters in the center of the mark. This is further enhanced with Christmas holiday design elements, e.g., a Santa cap, a wreath-like border, etc. However, Christmas is but one holiday, and we can envision consumers familiar with Registrant’s HOLIDAY FEAST mark for pet food, encountering Applicant’s mark on pet food, and mistakenly believing that the latter is merely a Christmas-themed variation (“Santa Stew”) in a line of Registrant’s HOLIDAY FEAST pet food.

Finally, the addition of applicant's house mark did not avoid a likelihood of confusion. The Board pointed out that there is no per se rule that addition of a house mark will suffice to distinguish two marks, and in fact "such addition may actually be an aggravation of the likelihood of confusion as opposed to an aid in distinguishing the marks so as to avoid source confusion."

The Board therefore affirmed the refusal to register.

Read comments and post your comment here

TTABlog note: So how did you do?

Text Copyright John L. Welch 2014.

TTAB Test: Are BARTON FAMILY WINERY and THOMAS BARTON Confusable for Wine?

Joseph Barton applied to register BARTON FAMILY WINERY for "wine" [WINERY disclaimed], but the USPTO refused registration under Section 2(d) on the ground of likelihood of confusion with the registered mark THOMAS BARTON for "alcoholic beverages, namely, wines." Applicant avoided a Section 2(e)(4) refusal by seeking registration under Section 2(f), but what about the 2(d) refusal? How would you rule? In re Barton, Serial No. 85554813 (November 7, 2014) [not precedential].

Because the goods are identical, the Board must presume that they travel through the same distribution channels to the same classes of consumers. Moreover, when the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

Because both marks include the the designation BARTON, the marks are similar in appearance and pronunciation. In each mark, BARTON will be perceived as a surname, "perhaps identifying the same wine-producing family."

[C]onsumers familiar with Registrant’s wines are likely to believe that Registrant is now producing a line of wines bearing only its surname, and that Registrant is designating its own 'Barton family' as the maker of the wines produced under the mark BARTON FAMILY WINERY. The fact that the cited mark also includes the name THOMAS does not sufficiently distinguish it from Applicant’s mark.

Moreover, BARTON is the first word in applicant's mark, and it is not improper to give more weight to the name BARTON since it is not uncommon for wine producers to use the phrase FAMILY WINERY. "Here, the mark BARTON FAMILY WINERY could well be interpreted as a broad reference to wines emanating from THOMAS BARTON as part of the Registrant’s Barton family wine business."

Applicant submitted six third-party registrations for marks containing the word BARTON, but only two were based on use. The other four were registered under Section 66(a) with no use requirement, and they had no probative value. As to the two used-based registrations, owned by the same entity (one for whiskey and the other for whiskey and distilled spirits, excluding wine), "they are not evidence that the marks are in use on a commercial scale or that the public has become familiar with them." In short, these prior registration do not the show "a crowded field or that Registrant’s mark is weak."

The Board concluded that confusion is likely and it affirmed the refusal.

Read comments and post your comment here

TTABlog note: Well, how did you do?

Text Copyright John L. Welch 2014.

TTAB Test: Are "RightChoice" and "ClearChoice" Confusingly Similar for Dental Implant Services?

Clear Choice Holdings opposed an application to register the mark RightChoice, in standard character form, for "dental implant services," claiming a likelihood of confusion with the registered marks CLEARCHOICE  DENTAL IMPLANTS, CLEARCHOICE DENTAL IMPLANT CENTER, and ClearChoice and Star Design, also for dental implant services [DENTAL IMPLANTS and DENTAL IMPLANT CENTER disclaimed]. Are the marks too close? How do you think this came out? ClearChoice Holdings, LLC v. Dale D. Goldschlag, D.D.S., P.C., Opposition No. 91191371 (October 17, 2014) [not precedential].

Of course, when the services are identical, the Board must presume that the channels of trade and the classes of consumers are the same. Moreover, in such a case, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

The Board found the dominant element of Opposer's marks to be the term "Clear Choice." The shooting star in opposer's design mark, if anything, "highlights the term 'Clear Choice' by dotting the letter 'I' and, thus, indicating that by selecting opposer, the 'Clear Choice' in dental implant services, the consumer is making the correct choice." [Huh? The shooting star design does all that? - ed.].

In appearance and sound, the Board concluded, RightChoice and ClearChoice or CLEARCHOICE are similar: "each prefaces the word 'Choice' with a one-syllable word that describes the selection or 'choice' that the customer should make as wise (i.e., a 'Clear' choice or the 'Right' choice.)" In short, the words "Right" and "Clear" have the same meaning and provide the same commercial impression, especially when used with "Choice."

The Board concluded that the similarities between the marks outweigh their differences, and that the marks are similar in their entireties with regard to appearance, sound, connotation, and commercial impression.

Although applicant provided no evidence regarding purchaser care or sophistication, even assuming a high degree of care, the Board found this du Pont factor to be outweighed by the others. Moreover, even careful consumers may be confused when similar marks are used in connection with identical services.

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

Read comments and post your comment here

TTABlog comment: Well, how did you do? Note this prior Board decision in the REAL CHOICE versus CLEARCHOICE case [TTABlogged here].

Text Copyright John L. Welch 2014.

WYHA? "CURBSIDE EXPRESS" Merely Descriptive of Grocery Delivery Services, Says TTAB

As a rule of thumb, if an opinion in a Section 2(e)(1) appeal is seven pages or less, the chances are very high that it's a "WYHA?" In this one, the USPTO refused registration of the mark CURBSIDE EXPRESS, deeming it merely descriptive of "retail and on-line grocery store services featuring home delivery." The Board's opinion is just over six pages. Looking at the record evidence, would you have appealed? In re Phoenix Intangibles Holding Company, Serial No. 85849629 (November 7, 2014) [not precedential].

Examining Attorney Marilyn D. Izzi relied on website evidence referring to "curbside + liftgate" and "curbside delivery" as services in which items are transported to the curb of the customer, and the customer is then responsible for unloading the item from the back of the truck and carrying it into his or her home or office. Alternatively, the item is unloaded by the deliverer and deposited on the curb.

A dictionary definition of "express" not surprisingly indicated that it means "to send something using a service that will deliver it very quickly." And third-party registrations with disclaimers of "express" confirmed that descriptive meaning.

Considering the mark as a whole, the Board had no doubt that "the mark would immediately convey to customers the information that a feature of Applicant’s service is the availability of a speedy delivery of the purchased groceries to the customer’s home (without the promise that they would actually be carried directly into the home)."

And so the Board affirmed the refusal.

Read comments and post your comment here

TTABlog note: Well, would you have?

Text Copyright John L. Welch 2014.

TTABlog 10th Anniversary Bonus: The Complete Latest Issue of The Trademark Reporter

Tomorrow is the 10th anniversary of the birth of The TTABlog. What better gift to my readers than the latest, star-studded issue of The Trademark Reporter? [pdf here], featuring a terrific line-up of authors and articles! [I am pleased to note that all but one of the authors are members of the Trademark Reporter Committee of INTA.]

Ten years ago I was (figuratively) rubbing elbows with Leo Stoller (remember him?), the subject of my first blog post. Now I'm in a much better place. So was all that blogging worthwhile? No doubt about it.

TABLE OF CONTENTS
ARTICLES

Theodore H. Davis Jr. and Lauren Brenner, "Allegations of Fraudulent Procurement and Maintenance of Federal Registrations Since In re Bose Corp."

Sheldon Burshtein, "Trademark Licensing in Canada: The Control Regime Turns 21."

Daniel R. Bereskin, Q.C., "Canada’s Ill-Conceived New “Trademark” Law: A Venture into Constitutional Quicksand."

Jerre B. Swann, "The Evolution of Trademark Economics—From the Harvard School to the Chicago School to WIPO 2013—As Sheparded by INTA and The Trademark Reporter."

E. Deborah Jay, "He Who Steals My Good Name: Likelihood-of-Confusion Surveys in TTAB Proceedings."


BOOK REVIEW

Heather Redmond & Elizabeth Buckingham, Trademark Trial and Appeal Board Practice - Reviewed by Anne Hiaring Hocking.

* * * * * * * *
TTABlog note: Thanks again to The Trademark Reporter, and particularly to Managing Editor Lisa Butkiewicz, for granting permission to provide a link to this issue, which is Copyright © 2014 the International Trademark Association and reprinted with the permission of The Trademark Reporter®, Vol. 104 TMR No. 5 (September - October 2014).

Text Copyright John L. Welch 2014.

Test Your TTAB Judge-Ability On These Four Mere Descriptiveness Refusals

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 The Rainmaker Agency, LLC, Serial No. 85743797 (November 3, 2014) [Mere descriptiveness refusal of THE RAINMAKER AGENCY for "business management services, namely, sales management consulting services; marketing services, namely, providing independent sales representation; business development services"].

In re Pacific Coast Feather Company, Serial No. 85712273 (October 31, 2014) [not precedential]. [Mere descriptiveness refusal of STRETCHKNIT for "mattress pads"].

In re Sirius Products, Inc., Serial Nos. 85199591 and 85199615 (October 31, 2014) [not precedential]. [Mere descriptiveness refusal of WATERLESS BATH for "pet shampoo and conditioner" and for "medicated pet shampoo"].

In re Blue Lotus Lifestyle LLC, Serial No. 85937447 (October 30, 2014) [not precedential]. [Mere descriptiveness refusal of LOTUS for "drinking water with vitamins and botanicals"].

Read comments and post your comment here.

TTABlog note: See any WYHAs here?

Text Copyright John L. Welch 2014.

E.D. Va Affirms TTAB: DWG Lacks Acquired Distinctiveness for CAD Software

In a civil action for review under Section 1071(b) of the Trademark Act, the United States District Court for the Eastern District of Virginia has affirmed the Board's ruling (here) in In re Autodesk, Inc., Serial Nos. 78852798, 78852808, 78852813, 78852822 and 78852843 (September 30, 2013) [not precedential], upholding the USPTO's refusals to register DWG, DWG & Design, DWG TRUEVIEW, DWG TRUECONVERT, and DWG EXTREME for "computer software for data management and creation and manipulation of engineering and design data, particularly adapted for engineering, architecture, manufacturing, building, and construction applications, together with instruction manuals sold as a unit; computer-aided design software; computer software for animation, graphics and design modeling applications" on the ground that DWG is merely descriptive of the goods and lacks acquired distinctiveness. Autodesk, Inc. v. Lee, Civil Action No. 1:13-cv-01464-AJT-JFA (October 30, 2014).

The parties filed cross motions for summary judgment and stipulated that the Court could resolve any material factual disputes without any further proceedings. Autodesk introduced evidence in addition to that in the TTAB record, and so the court reviewed the record de novo and acted as the finder of fact based on the entire record.

With little discussion, the court deemed DWG to be, at best, a descriptive mark. "[I]t appears to the Court that Autodesk uses and promotes the DWG label typically in a descriptive sense, to indicate software that works, or is compatible with, dwg formatted files."

The question then was whether DWG had acquired distinctiveness. Applying fourth circuit law, the court found that "Autodesk has not adequately demonstrated consumer perception that DWG, standing alone, signifies an Autodesk product, as opposed to the DWG digital formatting of products, even though the consumer may think many such products are issued by Autodesk."

Autodesk pointed to its $40-60 million per year in advertising and marketing expenditures, but the Board found no evidence that DWG was promoted as a stand-alone brand name. Autodesk's survey evidence, which purported to show more than 40% association with Autodesk, was fundamentally flawed in that the surveys did not precisely establish what the respondents understood DWG to mean: whether a product labeled DWG meant that it is an Autodesk product, or that the product has functionality or characteristics of software with the .dwg formatting popularized by Autodesk.

The sales success of Autodesk's products did not establish acquired distinctiveness since the products were not branded with DWG alone, "but rather with branding that incorporates DWG as part of a larger mark or with other designs or marks."

Autodesk's evidence of unsolicited media coverage was not probative. Its success in enforcing its trademarks when others relinquished their rights does not mean its claims were meritorious, since settlements are often motivated by factors other than the validity of the claims asserted. Similarly, the licensing of software developers who obtain the right to use the DWG logo does not establish acquired distinctiveness, since the motivation for taking a license may be unrelated to any acknowledgement that DWG, standing alone, is a source indicator.

The court concluded that Autodesk had failed to make a prima facie case of distinctiveness, and so it affirmed the TTAB's ruling

Read comments and post your comment here

TTABlog note: Will the USPTO seek costs?

Text Copyright John L. Welch 2014.

Evidence of Actual Confusion Clinches Section 2(d) Opposition Victory

The Board sustained an opposition to registration of the mark CUTLERYANDBEYOND for retail and on-online stores featuring cutlery and kitchenware, finding the mark likely to cause confusion with the registered mark CUTLERYANDMORE.COM, in the special form shown below, for "on-line retail store services featuring cutlery, cookware, kitchen items and accessories therefor." Evidence of actual confusion, rarely proffered successfully in Section 2(d) proceedings, helped carry the day for opposer. Cutlery and More, LLC v. Dasalla Trading Company, Opposition No. 91201666 (October 31, 2014) [not precedential].

The Board found the involved services to be "essentially identical." and it therefore presumed that the services are offered through the same channels of trade to the same classes of consumers.

As to the marks, the stylized lettering and design element in opposer's mark was not particularly distinctive. In any case, "the specific style of a registered mark cannot serve to distinguish an applicant's mark that is in standard character form." Moreover, in a design plus word mark, the words are normally given greater weight.

Here, both marks begin with "CUTLERYAND," and the Board noted consumers are most likely to remember the first part of a mark. The marks have quite similar meanings, and neither MORE or BEYOND is a significantly distinctive term. In view of the "run-on" nature of the marks, the Board saw "little reason to designate any component of the marks as a 'dominant' component."

In sum, the Board found that the similarities between the marks outweigh the differences, and consequently this du Pont factor weighed in favor of opposer.

Third-party registration evidence submitted by applicant was of no probative value on the likelihood of confusion issue because there was no evidence of use of the third-party marks. The registrations did confirm, however, that the term "cutlery" has significance in the field of cutting implements and related retail services. [Doh! - ed.].

Opposer submitted proof of several incidents of actual confusion (mostly emails and telephone call transcripts). Applicant contended that the evidence was inadmissible hearsay. The Board, however, found that most of the evidence was not offered to prove the truth of what was said, and therefore was not subject to the hearsay exclusion of Rule 801(c). In any case, the Board further noted that such evidence has been accepted by the Board under the "state of mind" exception to the hearsay rule, "even when offered for the truth of an out-of-court declarant's assertion."

Applicant argued that the amount of actual confusion in a nine-year period of co-existence was de minimis, and in fact showed that confusion is unlikely to occur. The Board, however, noted that confusion evidence is "notoriously difficult to come by," and that actual confusion evidence is, according to the CAFC, "highly probative, if not conclusive, of a high likelihood of confusion." The Board therefore found that this du Pont factor favored opposer.

And so the Board sustained the opposition.

Read comments and post your comment here

TTABlog comment: Is there anything more important for an attorney to fully grasp at the trial stage than the hearsay rule?

Text Copyright John L. Welch 2014.

TTAB Posts November 2014 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled 3 (three) oral hearings for the month of November, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]. Briefs and other papers for these cases may be found at TTABVUE via the links provided.



November 4, 2014 - 11 AM: In re Design Solutions International, Inc., Serial Nos. 85812685 and 85815392 [Section 2(d) refusal of DSI and DSI DESIGN SOLUTIONS INTERNATIONAL INC for "ceiling lights, chandeliers, electric lamps, electric lighting fixtures, lighting fixtures, lamps" on the ground of likelihood of confusion with the registered mark DSI for "infrared lamp reflectors, ultraviolet lamp reflectors, and protective silver lamp reflectors"].

November 12, 2014 - 2 PM: Sigma-Tau Industrie Farmaceutiche Ruinite S.P.A. v. SigmaPharm Laboratories, LLC, Oppositions Nos. 91196802 and 91196807 [Section 2(d) oppositions to registration of the marks SigmaPharm, and SigmaPharm Laboratories, and SigmaPharm Laboratories & Design, for various pharmaceutical preparations and for pharmaceutical research and development services, in view of the registered marks SIGMA-TAU PHARMACEUTICALS, INC. and the Design Mark shown below right, for "pharmaceutical products for use in the treatment of carnitine deficiency and cardiovascular conditions]. 

November 25, 2014 - 10 AM: In re I.Am.Symbolic, LLC by assignment from William Adams, Serial Nos. 85044494, 85044495, and 85044496 [Refusals to register the mark I AM for cosmetics and personal products, "all associated with William Adams, professionally known as will.i.am," in class 3, for sunglasses and sunglass cases "associated with William Adams, professionally known as will.i.am," in class 9, and for jewelry, watches, and other goods, including "rubber wristbands in the nature of bracelets," in class 14, in view of the registered marks I AM for perfume, I AM (Stylized) for sunglasses and jewelry, and I AM for "silicone stretchable wrist band in the nature of a bracelet"].

Read comments and post your comment here.

TTABlog note: Any predictions?

Text Copyright John L. Welch 2014.