Precedential No. 10: TTAB Test: Are These Two Marks for Furniture Confusingly Similar?

Applicant sought to register the word + design mark shown below, for "furniture" [FURNITURE, MOTION, and RECLINERS disclaimed], but the examining attorney refused registration under Section 2(d), finding the mark likely to cause confusion with the registered mark BRADLEY HUGHES for "residential and commercial furniture." The goods overlap, but are the marks close enough? How do you think this came out? In re Hughes Furniture Industries, Inc., 114 USPQ2d 1134 (TTAB 2015) [precedential].

Evidentiary issue: The Board first dealt with applicant's objection to certain evidence submitted by Examining Attorney Alicia Collins Edwards. Applicant filed its notice of appeal six months after the final refusal was issued, and then two months later requested a remand to the Office for entry of a disclaimer of the word "motion," in order to moot that issue on appeal. The examining attorney entered the disclaimer but also submitted additional Internet evidence in further support of her likelihood of confusion refusal. Not allowed, said the Board.

The examining attorney improperly treated the request for remand as a request for reconsideration of the entire final refusal. However, the time had expired for a request for reconsideration. The request for remand related only to the disclaimer requirement and not the Section 2(d) refusal. Therefore it was impermissible for the examining attorney to submit new evidence on the latter issue.

The Board noted that the examining attorney could have filed her own request for suspension of the appeal and remand, upon a showing of good cause, for the purpose of submitting new evidence regarding likelihood of confusion.

And so the Board sustained applicant's objection to the additional evidence.

Likelihood of confusion: Applicant contended that it offers goods that are distinct from those of the Registrant, asserting that Registrant serves a niche market for "luxury" and "artisan made" furnishings, whereas applicant offers furniture aimed at a broader market. Applicant also maintained that its goods are sold online, whereas Registrant's furniture is sold in specialty showrooms through design professionals with registered trade accounts. Not so fast, said the Board.

The Board, because it is required to compare the goods as identified in the application and registration at issue, found the involved goods to be legally identical The Board may not, through extrinsic evidence, limit the scope of the identification of goods in either the application or cited registration. Applicant's broadly worded identification (furniture) encompasses registrant's identification (residential and commercial furniture). Moreover, the identifications of goods are not limited as to type, style, or price level, nor are they limited as to channels of trade. The Board therefore must presume that the involved goods travel in the same channels to the same classes of consumers.

Although the evidence showed that registrant's furniture is hand-crafted, the registration is not so limited. The Board therefore must assume that the involved goods encompass furniture of all types, including mass-produced furniture sold to the general public, including the less knowledgeable consumer. Although furniture may not be an "impulse" purchase, there was no evidence to support a finding of any degree of care that would weigh against the likelihood of confusion refusal. The Board found this factor to be neutral.

Turning to the marks, the Board noted once again that when the involved goods are identical, a lesser degree of similarity between the marks is needed to support a finding of likelihood of confusion. It agreed with the examining attorney that the surname "Hughes" dominates the applied for mark. The letter "H" merely serves to reinforce the prominence of "Hughes." The disclaimed words and the word EAZE appear in somewhat smaller print, and consumers are likely to pay less attention to the smaller descriptive wording and the generic term FURNITURE. The surname significance of "Hughes" also makes that word more likely to be the focus of prospective customers in calling for the goods.

The design elements of applicant's mark are common shapes that fail to distinguish the marks at issue. Here it is especially true that these design elements merely serve as carriers for the words and do not themselves have any strong source-identifying significance.

Comparing the marks as a whole, consumers are likely to focus on the surname HUGHES and will mistakenly believe that the goods emanate from the same source. [think WINSTON and BRUCE WINSTON - ed.].

The Board concluded that the marks are similar in sound, appearance, connotation, and commercial impression. Finding that a likelihood of confusion exists between the two marks, the Board affirmed the refusal to register.

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TTABlog note: How did you do? Assuming that B&B/Hargis is applicable in an ex parte context, is this a good example of a case where issue preclusion would not apply in an infringement action? Do you think opposer would win in a civil action?

Text Copyright John L. Welch 2015.

Precedential No. 9: SMART BALANCE Not Confusable with SMART ONES for Frozen Food, Says TTAB

In a 44-page opinion, the Board gave the cold shoulder to this consolidated opposition to registration of the mark SMART BALANCE for frozen entrees and for various snack foods and desserts, finding the mark not likely to cause confusion with the registered mark SMART ONES for various types of frozen foods, including entrees, desserts, ready-to-eat wraps, pizzas, and breakfast foods. The Board concluded that although the goods of the parties, as identified in their respective identifications of goods, are closely related and, in some cases, legally identical, the marks are significantly different, particularly in view of the weakness of the formative "SMART," the seventeen-year period of conflict-free coexistence of the parties' marks (but not for frozen foods), and applicant's corroborating survey evidence and expert testimony. ProMark Brands Inc. and H.J. Heinz Company v. GFA Brands, Inc., 114 USPQ2d 1232 (TTAB 2015) [precedential].

Objection to Applicant's Survey Evidence and Expert Testimony: A large portion of the Board's opinion focuses on the expert testimony and survey evidence offered by the parties. Opposers unsuccessfully urged that applicant's survey evidence and expert testimony be stricken because they allegedly comprised improper rebuttal evidence that went beyond attacking applicant's survey. The Board, however, found the evidence and testimony to be proper rebuttal, even though the evidence and testimony did not use applicant's survey as a "template" and did not refer to opposer's survey. FRCP 26(a)(2)(D)(ii) refers to a rebuttal expert as one who presents evidence intended to "contradict or rebut" the other party's evidence. Opposers expert did contradict the conclusions of applicant's expert. Moreover, use of its survey evidence and expert testimony by applicant is not limited to rebutting Opposers' survey, but may counter any of Opposers' evidence, whatever its form.

Fame: Opposers failed in their attempt to prove the mark SMART ONES to be famous for Section 2(d) purposes. The evidence showed large dollar sales, but SMART ONES always appeared in conjunction with the WEIGHT WATCHERS trademark. The Board was consequently unable to attribute the sales or promotional expenditures to the SMART ONES mark alone. See, e.g., In re Bongrain Int'l (Am. Corp.), 894 F.2d 1316, 3 USPQ2d 1727, 1739 (Fed. Cir. 1990). Two brand surveys were similarly inconclusive as to the strength of the SMART ONES mark by itself. Opposers' survey evidence, which purported to show 82% aided awareness of the brand, lacked significant evidentiary value, the Board noting that it has discouraged the use of aided awareness questions. See, e.g., Carefirst of Maryland, 77 USPQ2d at 1507.

In sum, the evidence fell well short of the clear proof required to establish fame under Section 2(d). This failure to prove Section 2(d) fame led the Board to dismiss Opposers' dilution-by-blurring claim, where the burden of proof for proving fame is even higher.

Likelihood of Confusion Surveys: The Board considered the parties' survey evidence "with the following best practices mind."

1. the universe was properly defined and chosen;
2. the survey questions were properly formulated and presented;
3. the interviews were conducted in a manner to minimize error and bias;
4. the data were properly coded, collected, and later analyzed; and
5. the survey reports are complete and appropriately detailed

Opposers' likelihood of confusion survey purported to show a 32% likelihood among the 250 respondents surveyed. The Board, however, found the survey to be fatally flawed. The preliminary screening question that it employed eliminated potential purchasers of SMART BALANCE products who were unaware of SMART ONES products. The Board noted that this "skewed the results of [the] survey by preventing those individuals least likely to be confused from participating." In addition, the pivotal question was close-ended and failed to ask "why?"

"If you were to see a brand of frozen meals in the frozen food section of a supermarket named Smart Balance, would you think it was associated with, licensed by, owned by or in any way connected to Smart Ones? You may answer yes, no, or don’t know."

The Board observed that when a closed-ended question is used, it is essential that a "robust control group" be employed. It found applicant's question to be leading "because it spotlights only two stimuli, i.e., the "SMART ONES" and "SMART BALANCE" trademarks, and provides no other options." As a result, the Board found applicant's survey results to be "dubious in a litigation setting."

Applicant's survey, on the other hand, comported with best practices: the survey universe was properly defined, the questions followed the generally-accepted Ever-Ready format, posing non-leading, open-ended questions and asking appropriate follow up questions, and the survey employed acceptable controls. The survey reported a 2% likelihood of confusion among relevant purchasers, based on 410 respondents. The Board found that applicant's survey supported a conclusion that confusion is not likely.

Smartly balancing the relevant du Pont factors, the Board found that Opposers had failed to carry their burden to prove likelihood of confusion by a preponderance of the evidence.

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TTABlog note: Survey evidence is not often proffered in a TTAB case, and typically the parties' surveys will more or less cancel each other out. After the B&B/Hargis decision, will more survey evidence be offered, since the TTAB's decision will seemingly carry more weight?

Text Copyright John L. Welch 2015.

TTAB Test: Are These Two Marks For Overlapping Goods/Services Confusingly Similar?

The USPTO refused registration of the mark shown first below, finding it likely to cause confusion with the mark shown second below, for goods/services that "perform overlapping functions, namely, the promotion of goods and services of others via the Internet by way of offering coupons and discounts in exchange for product and/or service reviews." So it all came down to the first du Pont factor. How do you think this appeal came out? In re Hy-Vee, Inc., Serial No. 86105555 (March 25, 2015) [not precedential].

The marks are obviously similar in that they share the words DIGITAL COUPONS or its phonetic equivalent. However, those terms have "descriptive, if not generic, significance" with respect to the involved goods and services. It is therefore more likely that consumers will "equate" those term with the goods and services rather than viewing them as source indicators.

The letters DQ in the cited mark play a dominant role due to their size and location, and the comprise the portion most likely to be remembered by consumers. In addition, the "computer mouse" design element in applicant’s mark is "dissimilar enough from Registrant’s mark to distinguish Applicant’s goods and services." The Board concluded that the marks engender "substantially different commercial impressions."

The Board acknowledged, as the examining attorney contended, that the words in a word+design mark usually predominate. However, that is not always the case. The Board also acknowledged that when the involved goods/services are legally identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

Here, however, given the highly descriptive or generic meaning of DIGITAL COUPONS, the marks are so different that confusion is not likely.

And so the Board reversed the refusal to register.

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TTABlog note: Well, how did you do?

Text Copyright John L. Welch 2015.

TTAB Reverses 2(d) Refusal Due to Specific Differences in Involved Software

The Board affirms 90% of the Section 2(d) refusals it gets its hands on, but here's one that it reversed. The applicant sought to register the mark MISTORE for "Computer software for use in connection with retail point of sale and inventory management." The examining attorney maintained that the mark was confusingly similar to the registered mark shown below, for "computer e-commerce software to allow users to perform electronic business transactions via a global computer network." In re Micros Systems, Inc., Serial No. 85826131 (March 6, 2015) [not precedential].

The marks: The Board found applicant’s mark MISTORE to be the phonetic equivalent of the dominant portion of the cited mark, MYSTORE. Applicant’s argument regarding the descriptiveness of the term "mystore," although not supported evidence, persuaded that Board that the term "is not arbitrary, which does somewhat narrow the scope of protection afforded the cited mark." On the other hand, applicant’s misspelling of the term "MY STORE" does not make "MI STORE" a "coined term," as applicant argued. Accordingly, the Board found the marks in their entireties to be similar in appearance, sound, connotation and commercial impression.

The goods: The examining attorney relied on dictionary definitions of “business transactions,” “point-of-sale,” and “e-commerce,” and information about applicant’s software from applicant’s
brief. However, two of the dictionaries existed only online and not in print, and so the Board refused to take judicial notice of them. The third definition was from a dictionary published in the United Kingdom, but was obtained from the dictionary’s American English database and so was eligible for judicial notice.

The definition of e-commerce from the third dictionary requires that the business be conducted on the Internet. There was no evidence that applicant’s software relates to any business transaction conducted on the Internet. "To the contrary, access and use of the electronic data is restricted to store personal and not the general public." [Moreover, the examining attorney’s position was contradicted by one of the rejected definitions, for a business transaction in electronic commerce, which is a “monetary transaction that is made between consumers or businesses via the Internet.”]

The Board concluded that the sparse record in the case failed to establish that the goods are related.

Channels of trade: Because the goods are not related, the Board could not presume that they travel in the same channels of trade to the same classes of consumers. There was no evidence regarding the actual channels of trade, and so this factor was deemed neutral.

And so the Board concluded that the differences in the goods outweighed any similarity between the marks, and it therefore reversed the refusal.

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TTABlog note:

Text Copyright John L. Welch 2015.

Supreme Court Rules that TTAB Decision May Have Preclusive Effect

In an attention-grabbing decision, at least in trademark circles, the Supreme Court ruled yesterday that, in an action for trademark infringement, "[s]o long as the other ordinary elements of issue preclusion are met, when the uses adjudicated by the TTAB are materially the same as those before the district court, issue preclusion should apply" to the issue of likelihood of confusion. The Court reversed the decision of the Eight Circuit that held that the TTAB decision in favor of B&B was not entitled to preclusive effect because, inter alia, the TTAB and the Eighth Circuit use different factors to evaluate the issue. B&B Hardware, Inc. v. Hargis Industries, Inc., 113 USPQ2d 2045 (2015).

The Court held that issue preclusion can be grounded on the decision of an administrative agency. Both Supreme Court precedent and the Restatement (Second) of Judgments "make clear that issue preclusion is not limited to those situations in which the same issue is before two courts." [The Court did not address the question of whether this application of issue preclusion is constitutional because that Article III issue was not properly raised.] The Court found nothing in the Lanham Act that bars application of issue preclusion in this type of case.

Nor is there any categorical reason why TTAB decisions on registration can never meet the ordinary elements of issue preclusion. The Court agreed with Professor McCarthy that issue preclusion applies when "the issues in the two cases are indeed identical and the other rules of collateral estoppel are carefully observed."

The Court found that, despite some differences in the factors applied by the TTAB and the Eight Circuit in assessing likelihood of confusion, the test were not fundamentally different. The standard for purposes of registration is the same as for purposes of infringement. Because the TTAB considered the mark as shown in the application for the goods identified in the application, its determination regarding likelihood of confusion may not resolve the issue as to usages that are not disclosed. However, that is not a reason for concluding that issue preclusion may never apply.

If a mark owner uses its mark in ways that are materially the same as the usages included in its registration application, then the TTAB is deciding the same likelihood-of-confusion issue as a district court in infringement litigation. By contrast, if a mark owner uses its mark in ways that are materially unlike the usages in its application, then the TTAB is not deciding the same issue. Thus, if the TTAB does not consider the marketplace usage of the parties’ marks, the TTAB’s decision should “have no later preclusive effect in a suit where actual usage in the marketplace is the paramount issue.” 6 McCarthy §32:101, at 32–246.

The Court remanded the case to the Eight Circuit, directing it to apply the following rule: "So long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before the district court, issue preclusion should apply."

Justice Ginsburg concurred in the majority opinion, on the understanding that "for a great many registration decisions issue preclusion will obviously not apply," because the decisions often involve "a comparison of the marks in the abstract and apart from their marketplace usage."

Justices Thomas and Scalia dissented, finding inadequate support for the proposition that common law principles of preclusion should apply to decisions of administrative tribunals, or that Congress implicitly authorized the decisions of the TTAB to have preclusive effect.

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TTABlog note: When a losing TTAB party seeks review by way of civil action under Section 1071, it is entitled to a trial de novo. Often infringement claims are added to the action. If additional or new evidence is submitted, it would seem that preclusion goes out the window. Is B&B v. Hargis a rare case where the opposition and civil action are simultaneous, with no appeal from the TTAB ruling?

Text Copyright John L. Welch 2015.

TTAB Denies Request for Reconsideration of REDNECK RIVIERA Decision

The Board denied Applicant's request for reconsideration of its January 6, 2015 decision [TTABlogged here] affirming a refusal to register the marks REDNECK RIVIERA and REDNECK RIVIERA FEST for entertainment services and hotel and restaurant services [FEST disclaimed]. The Board found no error in its original ruling that the mark is primarily geographically descriptive of the services under Section 2(e)(2). In re Rich Marks, LLC, Serial Nos. 85789873, 85789870, and 85784407 (on reconsideration, February 25, 2015) [not precedential].

The Board's original decision was based not only on collaborative website sources like the Urban Dictionary, as applicant contended, but also on national, regional and specialty periodicals and major broadcast networks, including ABC New, CBS News, the New York Times, and others. The Board reaffirmed its finding that "Redneck Riviera" is "a real, significant geographical place along the northeast coastline of the Gulf of Mexico ... and the term 'Redneck Riviera' has been an important part of the Southern vernacular for decades." That some individuals may derive from the ordinary meaning of the words, a pop-culture, slang meaning that reflects "any beautiful beach having inhabitants displaying the 'redneck' habits of poor, lower-class persons, thus evocative of a lifestyle beyond any particular zip code," "that possibility does not overcome the historical, primary geographical significance of the term 'Redneck Riviera.'"

Applicant also pointed to the recent CAFC decision reversing the TTAB's affirmance of a Section 2(e)(2) refusal of NEWBRIDGE HOME for "silverware, jewelry, and kitchen goods," and arguing that here, too, substantial evidence was lacking for the Board refusal. [TTABlogged here]. The Board, however, distinguished that case, which involved a foreign place name and a mixed record of evidence (including atlases that did not list the place). In contrast, here the overall evidence submitted by the examining attorney "cannot be said to be evenly 'mixed.'" In short, there is "a consistent showing of 'Redneck Riviera' as naming a specific geographical region by serious news outlets."

The purpose of a request for reconsideration, the Board noted, is to point out errors made by the Board in reaching its decision. After careful review of its decision, the Board found no error, and it denied the request for reconsideration.

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TTABlog note: Requests for reconsideration are almost never granted. They typically do nothing more than give the Board the opportunity to pound a few more nails into the coffin.

Text Copyright John L. Welch 2015.

USPTO Seeks Applicants for TTAB Administrative Trademark Judge

The USPTO has invited applications for the position of Administrative Trademark Judge on the Trademark Trial and Appeal Board. [Details here]. "The judges of the Trademark Trial and Appeal Board (TTAB) are responsible for hearing and deciding adversary proceedings involving oppositions to applications, petitions to cancel registrations, and concurrent use proceedings; and for hearing and deciding appeals from final refusals by trademark examiners to allow the registration of trademarks. Each appeal and adversary proceeding shall be heard and decided by at least three judges of the TTAB."

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WYHA? Precedential No. 8: TTAB Affirms Section 2(a) Disparagement Refusal of PORNO JESUS

Not surprisingly, the Board affirmed a Section 2(a) disparagement refusal of PORNO JESUS for DVDs and video recordings "featuring music videos, adult themed content, glamour photography, and adult entertainment." The Board found it clear that the applied-for mark would have the "likely meaning" of Jesus Christ being associated with pornography, a meaning that may be disparaging to a substantial composite of Christian-Americans. In re Matthew Beck, 114 USPQ2d 1048 (TTAB 2015) [precedential].

Section 2(a) of the Lanham Act prohibits registration of a mark consisting of matter which may disparage, inter alia, “persons,” “institutions,” or “beliefs.” The Board applies the following two-part test to determine whether a mark is disparaging:

1) what is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services; and

2) if that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group.

Examining Attorney John M. Gartner relied on numerous dictionary definitions and encyclopedia entries regarding the terms comprising the mark, as well as on Internet materials providing membership statistics for various Christian denominations in this country, and materials discussing the views of certain denominations toward pornography. [They don't like it - ed.].

Applicant Beck submitted articles from various Internet sources discussing shifting views among Christians on issues involving pornography, including material from a website disseminating and supporting Christian pornography, as well as several third-party registrations for marks containing the word "Jesus:" HOOKERS FOR JESUS for charitable services, REDNECK JESUS for entertainment and informational services, JESUS FREAK for clothing, THE DAY JESUS SPOKE HIP HOP for entertainment services featuring Christian music, and WHO WOULD JESUS SUE? for printed publications in the field of faith-based advocacy.

There was no dispute that "Jesus" in the applied-for mark refers to Jesus of Nazareth, upon whom the Christian faith is based, and there was agreement that "porno" means - you know what. Thus the Board found that the likely meaning of PORNO JESUS is "Jesus of Nazareth partaking of acts related to pornographic or sexually explicit materials."

Although the Board opined that PORNO JESUS would be "potentially disparaging regardless of applicant's goods or services, actual use or intent," it proceeded to consider the manner of use of the mark. Because applicant Beck's goods feature "adult-themed content," which applicant acknowledged includes pornographic films, it was clear that PORNO JESUS would have the "likely meaning" of "Jesus Christ associated with pornographic acts and sexually explicit materials."

Next the Board considered whether the meaning of the mark would disparage a substantial component of the referenced group, which the Board found to be Christian-Americans. The examining attorney's evidence from the websites of several Christian denominations indicated that these denominations oppose pornography, believing it to be harmful and not in conformance with the tenets of Christianity.

With regard to the third-party registrations cited by Applicant Beck, the Board once again observed that it is not bound by the determinations of examining attorneys in other cases, but must apply the statute to the fact record before it. In any case, none of the third-party registrations associated Jesus Christ with pornography and none involved adult-themed materials.

The existence of a sub-genre of Christian-themed pornographic movies (featuring married couples portraying married couples engaged in sex acts intended to be instructional and reflecting the beliefs of some Christians) suggests that the larger body of pornography does not reflect Christian beliefs. Moreover, Mr. Beck's identification of goods was not restricted to a type of pornography that may theoretically be acceptable to certain Christians. In any case, the examining attorney is not required to show that all members of the referenced group would find the mark disparaging.

Finally, the Board noted that in meeting its burden of proof, the PTO may, in the absence of direct evidence, extrapolate from the evidence of record to show that a substantial composite of Christian-Americans find the mark PORNO JESUS for the identified goods to be disparaging.

And so the Board affirmed the refusal to register.

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TTABlog note: Well, would you have appealed?

Text Copyright John L. Welch 2015.

Some Thoughts on de facto and de jure Functionality

Section 2(e)(5) of the Lanham Act bars registration of a proposed mark that “comprises any matter that, as a whole, is functional.” The shape of a product or a feature of a product may have a function – i.e., it may have utility – but still be registrable as a trademark. In other words, the product or feature may be de facto (in fact) functional but not de jure (in law) functional.

Confusion over these concepts sometime arises when, in considering the registrability of a product shape, the TTAB or a court encounters design patents or utility patents that are related to the product. Utility patents, as the name indicates, concern things that have utility: “any new and useful process, machine, manufacture, or composition of matter.” Design patents concern the ornamental features of useful objects: the way things look rather than the way they work. Thus both utility and design patents are directed to things that are useful (or de facto functional).

A particular device may be the subject of a both a utility patent, because it incorporates a useful invention – say, a corkscrew that operates in a new way – as well as a design patent, because the device has a novel and nonobvious shape – suppose the corkscrew is shaped like a kangaroo.

In the trademark realm under Section 2(e)(5), when one considers whether a product configuration or feature may be registrable as a trademark, one must first determine whether it has utility – i.e., whether it is de facto functional. A purely ornamental feature (i.e., purely non-functional) – such as the decorations on a monster truck (for entertainment services) – by definition has no utility and is therefore eligible for registration as a trademark.

What about a shape or feature that does have utility? For example, in our corkscrew, the tail of the kangaroo, which functions as the handle or lever that operates the corkscrew? It has utility, it performs a function, and therefore it is de facto functional in a trademark sense. But is it de jure functional and therefor unregistrable? That’s where the Inwood and Morton-Norwich decisions come in play.

One approach to assessing the registrability of product shape or feature is to ask the following questions:

1. Does the configuration or feature have utility? If yes, proceed to the next question. If no, the feature is ornamental and may be registrable. A showing of acquired distinctiveness is required, says Wal-Mart, unless the feature may be considered product packaging (or, as in the recent monster truck case, trade dress for services). Product packaging and other trade dress may be inherently distinctive, but first it must pass the Seabrook test.

2. If the configuration or feature has utility (for example, the kangaroo tail), is the shape the only one that will work? No it is not, for the kangaroo tail. The handle of the corkscrew, and the corkscrew itself, could take on many shapes. What, then, is an example of a design that can be useful in only one shape? Patent attorneys point to a case involving the blade or shank (the business end) of a key, which had to be in the particular shape in order to operate the corresponding lock. So that design patent was held to be invalid because the shape was "functional" in a design patent sense, not ornamental. If question 2 is answered yes, then the configuration or feature is not eligible for a design patent (or a trademark registration).

3. If the answer to question 2 is no, then a design patent is available. An invention is functional in the design patent sense only if the design is the only one that will work: think key blade. But functionality for trademarks requires a different standard. Even if there are alternative designs that will work, a product configuration or feature may be unregistrable as a trademark – i.e., de jure functional – if the design meets the Inwood test: if it is "essential to the use or purpose of the device or ... affects the cost or quality of the device." The CCPA’s Morton-Norwich factors are meant to assist in the determination of trademark functionality. In the recent "bladeless" fan decision, the Board found that the shape of the product met the Inwood test.
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The Board and the courts sometimes go astray when utility patents are involved. It is tempting to conclude that any feature discussed in a utility patent must ipso facto be de jure functional and therefore unregistrable as a trademark. But the Supreme Court in TrafFix was careful to limit the effect of utility patents as follows: it said that if a feature is claimed in a patent (not merely discussed in the specification), that is strong evidence that the feature is de jure functional. Not conclusive evidence, but strong. That is because even if a feature is claimed in a patent (for example, the lever on the cork screw), it still may be possible to design that element in a number of shapes that work equally well (the kangaroo tail being one).

Some of these principles were discussed in two recent TTAB decisions: the monster truck case, in which the Board found the decorations on a monster truck to be ornamental trade dress that was inherently distinctive under Seabrook, and the “bladeless” fan case, in which the Board applied Inwood and Morton-Norwich in affirming a Section 2(e)(5) functionality refusal of the shape of the fan elements.

The next time you read a decision in a product configuration case or trade dress case, look closely to see how the court or the Board applies these principles and makes these distinctions. Of course, if you don't agree with my understanding, let me know.

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Text Copyright John L. Welch 2015.

TTAB Test: Are Tequila and Wine Related for Section 2(d) Purposes?

Proximo Spirits applied to register the mark COCOMO for "tequila; tequila based prepared cocktails," but Examining Attorney Tamara Hudson refused registration under Section 2(d), deeming the mark likely to cause confusion with the registered mark KOKOMO for wine. Applicant contended that its mark suggests coconuts,  while the cited mark references Kokomo, Indiana. As to the goods, applicant pointed out that registrant is a winery, and that wineries produce only wine. How do you think this came out? In re Proximo Spirits, Inc., Serial No. 85865962 (March 16, 2015) [not precedential].

The Board found the marks similar in appearance and pronunciation, the latter factor being particularly important because the goods may be requested verbally without prior reference to a menu. As to meaning, there was nothing in the record to suggest that consumers would associate registrant's KOKOMO wine with Kokomo, Indiana, nor was there any evidence to show that applicant's mark, when used with tequila, has anything to do with coconut.

As to the goods, the Board acknowledged that not even an unsophisticated purchaser would mistakenly buy wine expecting tequila, or vice versa. [At least while sober - ed.]. But the issue is not whether consumers would confuse the goods, but whether they would be confused as to the source of the goods.

The Board presumed that the involved goods would be sold in all normal channels and to all normal classes of purchasers for such goods. The trade channels for both would include liquor stores, bars and restaurants, and the alcoholic beverages sections of retail outlets. Thus the channels of trade are the same, and the customers include unsophisticated purchasers.

The Board observed that the CAFC and the Board "have repeatedly held spirits and wine to be related."

"[a] typical consumer of alcoholic beverages may drink more than one type of beverage and may shop for different alcoholic beverages in the same liquor store. Moreover, a person may serve more than one kind of alcoholic beverage before or during a meal or at a party."

Applicant argued that it is "common knowledge" that wineries sell only wine, but the Board concluded that, even if true, that does not rebut the examining attorney's showing that consumers would assume a connection between wine and tequila sold under very similar trademarks. The examining attorney submitted third-party registrations covering both wine and tequila, and Internet evidence that some entities distribute and sell both wine and tequila. Moreover, restaurants and bars offer wine and tequila pairings, and wine may be mixed with tequila in drink recipes.

This evidence corroborated the Board's finding that wine and tequila are related. It also showed that the goods are complementary products (like the pepper sauce and agave in In re Davia, 110 USPQ2d 1810 (TTAB 2014) [precedential]).

The Board therefore found confusion likely and it affirmed the refusal to register.

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TTABlog note: It seems likely that every alcoholic beverage would be found related to every other one, because they can be purchased in the same stores, etc., appear together in some third-party registrations, and may be mixed together. In other words, there is a de facto per se rule that all alcoholic beverages are related. Right?

Text Copyright John L. Welch 2015.

TTAB Test: Is FLAT IRON TACO Deceptively Misdescriptive of Tacos?

William R. Nyborg applied to register the mark FLAT IRON TACO for tacos, but Examining Attorney Tracy Cross refused registration on the ground that the mark is deceptively misdescriptive of the goods under Section 2(e)(1). Mr. Nyborg appealed. He admitted that his tacos do not contain "flat iron" steak, but argued that the USPTO failed to show that consumers would believe the supposed misrepresentation: "if a consumer were to order a shredded chicken variant of Applicant’s ‘FLAT IRON TACO’ it would be hard to believe that the consumer in question would expect ‘flat-iron steak’ to be contained therein." How do you think this came out? In re William R. Nyborg, Serial No. 85661044 (February 27, 2015) [not precedential].

The test for deceptive misdescriptiveness is two-pronged: (1) does the term in question misdescribe a characteristic, quality, function, composition, or use of the goods, and if so (2) will prospective purchasers likely believe that the misdescription actually describes the goods?

The examining attorney established that "flat iron" is a type of steak, and that flat iron steak is a primary ingredient in prepared taco dishes. Moreover, the phrase "flat iron tacos" is used to describe tacos having a filling of flat iron steak! The Board therefore concluded that FLAT IRON TACO is "merely descriptive of a significant aspect of the goods which the goods could plausibly possess."

Applicant Nyborg feebly argued that "flat iron" may be used to describe items other than steak, like a hair straightener. Irrelevant, said the Board, because for Section 2(e)(1) purposes a mark must be considered in the context of the involved goods.

Mr. Nyborg's argument that a consumer would not believe the misrepresentation because he or she would not expect flat-iron steak after ordering shredded chicken, was a misapplication of the 2(e)(1) test.

Clearly if a customer orders a chicken taco he or she will not be expecting to get a steak taco. However, a consumer might well order a FLAT IRON TACO believing that he or she will be getting a taco filled with flat iron steak, and therefore the mark will misrepresent a characteristic of the goods.

And so the Board affirmed the refusal.

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TTABlog note: Well how did you do? What about Section 2(a) deceptiveness? Wouldn't the misrepresentation be material to many consumers?

Text Copyright John L. Welch 2015.

WYHM? TTAB Denies Summary Judgment Motion, Says Opposer Has Standing

Nearly three years into this opposition proceeding, Applicant TGN Services moved for summary judgment on the ground that Opposer Jeanette K. Daniels lacked standing to oppose TGN's application to register the mark PROGENEALOGISTS for, inter alia, providing research services in the field of genealogy. Ms. Daniels alleged that the applied-for mark is generic, or alternatively, merely descriptive and lacking in secondary meaning. Jeanette K. Daniels v. TGN Services, LLC, Opposition No. 91204462 (February 18, 2015) [not precedential].

As we know, standing is a threshold issue in every inter partes proceeding. The CAFC in Ritchie v. Simpson established a low threshold for standing: "namely, whether a plaintiff's belief in damage has a reasonable basis in fact and reflects a real interest in the case." A plaintiff who challenges on the ground of mere descriptiveness or genericness has standing if she has a competitive need or equal right to use the term in a descriptive manner.

Opposer Daniels alleged that she is a professional genealogist and an instructor at a genealogy college. In that connection, she has conducted research work for clients since 1977, and she uses the words “pro,” “professional,” “genealogy,” “genealogists,” and “genealogist” in her genealogic business.

In support of her allegations, Opposer submitted a copy of her certification as an “Accredited Genealogist,” issued by The Genealogical Department of The Church of Jesus Christ of Latter-day Saints, and she testified that she was president of the local Association for Professional Genealogists. Opposer also submitted evidence that she uses the phrases “Where Genealogists Become Professionals,” “Professional Genealogy,” and “Professional Genealogical Research Courses” on the college website.

In light of this evidence, the Board concluded that Ms. Daniels "demonstrated a real interest, that is to say, 'a direct and personal stake' in the outcome of this proceeding, and a reasonable basis for belief that she may be damaged by registration of the applied-for mark."

And so the Board denied the summary judgment motion.

Read comments and post your comment here

TTABlog note: WYHM? Would You Have Moved for summary judgment?

Text Copyright John L. Welch 2015.

TTAB Affirms Section 2(e)(5) Functionality Refusal of "Bladeless" Electric Fan Configuration

The Board affirmed a Section 2(e)(5) functionality refusal of the product configuration depicted below, for electric fans. The proposed mark comprised a "three-dimensional configuration of [a] circular ring on top of a column-shaped base with inlets and buttons." In re Dyson Limited, Serial No. 85708119 (March 11, 2015) [not precedential].

Applicant Dyson's product is a so-called "bladeless" fan, in which an impeller moves air that enters the base and pushes the air into the body of the circular ring or nozzle. A slit or "mouth" in the nozzle emits the air so that it flows along the inner surface of the nozzle. Because of the contour of the nozzle, air is drawn forward from behind the nozzle through the empty circular space, and combines with the impelled air to cool the user.

The Board noted that the standard for functionality under Section 2(e)(5) is set forth in the Supreme Court's Inwood decision: namely, whether a feature is "essential to the use or purpose of the article or ... affects the cost or quality of the article." If a product design is functional under Inwood, there is no need to conduct further factual inquiry by applying a Morton-Norwich analysis [although the Board did so here].

Dyson made of record a number of utility and design patents and applications that it owns. Also relevant were certain findings in prior district court litigation involving the design patents. Examining Attorney Dorrit Carroll pointed to certain language in the claims of applicant's utility patents in arguing that each visible element of the design has utility. Applicant Dyson contended that the Board must consider the design as a whole, rather than dissect it into a" checklist of design concepts." It argued that the nozzle could take many different shapes, as may the base. As to the air inlets, applicant asserted that although the have utility, they could be made in various shapes (i.e., they are de facto functional, but not de jure functional).

In an earlier civil litigation, Dyson obtained a preliminary injunction against an infringer of its design patents. The court found that nearly every element of the design was functional (in a design patent sense), but that the specific proportions of the design were protectable. The Board gave the findings of functionality substantial weight, but it noted that the court's findings were "based upon standards that differ from those that guide us in determining the protectability of Applicant's design as a trademark."

[T]he Court’s finding as to the protectability of the proportions of Applicant’s design is based upon standards that differ from those that guide us in determining the protectability of Applicant’s design as a trademark. As the Court made clear, infringement of a design patent occurs where the resemblance between two designs is such that an ordinary observer would “purchase one [product] believing it to be the other.” 5 TTABVUE 39-40. Trademark infringement occurs where a customer would be likely to confuse the source of one product with the source of another. If Applicant obtains the desired trademark registration, Applicant would be in a position to enforce it not only against those who imitate the design in its precise proportions, but also against users of any design so resembling Applicant’s design as to be likely to cause confusion, mistake or deception. Accordingly, the District Court’s finding on this point does not dispose of the question before us, because a trademark registration could provide, possibly in perpetuity, a substantially broader scope of protection than the District Court contemplated extending to Applicant.

The Board was persuaded by Dyson's patents, coupled with the court's findings, that the circularity of the ring-shaped nozzle and the cylindrical shape of the base are functional. The shape of a circle is the most efficient shape for the base (in cross-section) and for maintaining the central discharge of the nozzle. The "three lines" are essential to the tilting and oscillating functions of the fan, and the array of control buttons in a straight line is one of only a few superior arrangements. Likewise, the circular shape of the buttons is one of a few superior shapes.

The Board considered a number of alternative designs provided by Dyson, but it concluded that the alternative designs were not functionally equivalent. A circular nozzle maximizes the airflow, and competitors should not have to avoid or disguise a circular design in order to avoid applicant's purported trademark.

Dyson design consists of fundamental geometric forms - the circle and the cylinder - and therefore "has a degree of simplicity, the avoidance of which would place competitors at a disadvantage." Avoidance of these shapes would probably mean added expense for competitors. Similarly, the need to eschew buttons in a straight line, or non-rectangular inlets, would likely increase the costs of a competitor.

The ultimate question under Section 2(e)(5), the Board observed, is whether the design "as a whole, is functional." In Beckton, Dickinson, however, the CAFC stated that "a mark possessed of significant functional features should not qualify for trademark protection where insignificant elements of the design are non-functional."

Here, three of the Morton-Norwich factors (utility patents, lack of equivalent alternative designs, and increased cost) favor a finding of functionality. To the extent that the shapes or arrays of the buttons and air inlets are non-functional, they are "insignificant elements of the design" that cannot render the design as a whole protectable.

And so the Board found that, under Inwood, the applicant's product configuration is de jure functional and unregistrable.


Read comments and post your comment here

TTABlog note: I agree with the Boards' conclusion, but I don't agree with the Board's comparison of trademark infringement and design patent infringement standards. The standard for design patent infringement is not so stringent as the Board indicates, in my opinion. I agree that the functionality standards for design patents and trademarks are different, but because a product design may be patentable even if it is the most efficient design, whereas that is not the case for a trademark. In other words, the standard for proving functionality of a design patent is much higher than that for a trademark.

Text Copyright John L. Welch 2015.

TTAB Test: Is APOTHEOSIS Confusable With APOTHIC for Wine?

E. & J. Gallo Winery opposed an application to register the mark APOTHEOSIS for wine on the ground of likelihood of confusion with its mark APOTHIC, also for wine. Of course, it all came down to the similarity or dissimilarity of the marks. How do you think this came out? E. & J. Gallo Winery v. Kinney Family Vintners LLC d/b/a Occasio Winery, Opposition No. 91207656 (March 10, 2015) [not precedential].

It was uncontested that Gallo had used the mark APOTHIC since 2010, and so standing and priority were established. Because the goods are identical, the Board must presume that they travel through the same, normal channels of trade to the same classes of consumers. Applicant's evidence of its "membership" system, the price of its wine, and the sophistication of customers was irrelevant, since there were no corresponding limitations in the opposed application.

As we know, because the involved goods are identical, a lesser degree of similarity between the marks is required to support a finding of likely confusion.

Gallo argued that its APOTHIC mark is famous, but it failed to prove fame by the required clear evidence. The wine enjoyed significant sales and Gallo spent liberally on advertising, but Gallo did not provide sufficient context for that data: i.e., how they compared with other brands of wine. The Board did find, however, that the mark is "fairly strong" and entitled to a "concomitant broad scope of protection."

As to the marks, the Board noted that they begin with the same first five letters [Can you name them? - ed.], and that consumers are prone to focus on the first part of a mark. The involved marks look and sound similar because of their sharing these five letters. As to connotation, "apotheosis" means "the perfect form or example of something," "the highest or best part of something." Gallo's mark is derived from the word "Apotheca," a place where "[m]ore than 800 years ago, vintners blended and stored their most coveted concoctions." [I believe its just outside Cleveland - ed.]. Gallo blended "Apotheca" with "epic" to produce APOTHIC. However, there was no evidence that consumers would understand APOTHIC to include or this meaning. [Could you say consumers would be apathetic about the meaning? - ed]. The Board agreed with Gallo that "apotheosis" is not a commonly-used word [What was the evidence for that? ed.] and to many consumers would not connote anything. Therefore, the Board could not conclude that involved marks have similar meanings.

The Board took note of Gallo's expanded us of APOTHIC to several different types of wine, including APOTHIC RED, APOTHIC WHITE, APOTHIC ROSE, and APOTHIC DARK. Those consumers who are familiar with this expansion may assume that APOTHEOSIS is another expansion or variation of APOTHIC.

Considering the marks in their entireties, the Board found them to be more similar than dissimilar, especially since they both begin with the same five letters and consumers "are familiar with Gallo's expanding use of its mark."

And so the Board sustained the opposition.

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TTABlog note: So, do you agree with this decision? Wine not?

Text Copyright John L. Welch 2015.

WYHA? TTAB Affirms Mere Descriptiveness Refusal of PHOTOGREFER for Online Photography Referrals

The Board agreed with Examining Attorney Brittney L. Cogan that the mark PHOTOGREFER is merely descriptive of "online referrals in the field of photography," under Section 2(e)(1). Applicant agreed that its usage of the mark indicates that the two words are intended to be understood independently: as "Photog" and "Refer." Would you have appealed? In re Photogrefer.com Inc., Serial No. 85838184 (March 9, 2015) [not precedential].

The Board noted that, although applicant seeks registration for PHOTOGREFER in standard character form, it could (and does) depict the mark as two words. PhotoGrefer refer is merely descriptive of applicant's online referral services. Even if applicant were the only use of the term, the mark would still be merely descriptive.

Finally, applicant made the strange argument that "the term 'PHOTOGREFER' in relation to services like those of the Applicant has consistently been treated as suggestive of the respective services." However, none of the registrations referred to by Applicant were for the mark PHOTOGREFER.

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 2015.

TTAB Test: Are Wine and Whiskey Related for Section 2(d) Purposes? And Where is Millbrook?

The USPTO, through Examining Attorney Jillian R. Cantor, refused registration of the mark MILLBROOK DISTILLERY (in standard character and design form) for whiskey [DISTILLERY disclaimed] on two grounds: likelihood of confusion with MILLBROOK for wine, and geographical descriptiveness under Section 2(e)(2). Applicant appealed. How do you think these came out? Do you think that all beverages are related for 2(d) purposes? Do you know where Millbrook is? In re Millbrook Distillery, LLC, Serial Nos. 85924732 and 8595455 (February 9, 2015) [not precedential].

Section 2(d): Third-party registrations covering whiskey and wine, coupled with Internet evidence that third parties operate both wineries and distilleries, many including "winery" and "distillery" in their names, convinced that Board that the goods are related. Moreover, they are sold in the same channels of trade to the same classes of consumers.

Applicant submitted evidence of third-party uses of MILLBROOK, but there was only one that concerned alcoholic beverages: a wine company in Windsor, Connecticut. But there was no proof that this trade name had received any public exposure, and in any case a single third-party use is not sufficient to show that consumers can distinguish between the two marks at issue.

Applicant conceded that wine may be purchased by ordinary consumers without much care, but it insisted that whiskey purchasers will exercise a higher degree of care. The evidence, however, showed that whiskey and wine may be sold in the same price range.

[A]lthough a whiskey aficionado may well have a favorite brand or want a particular taste and aroma, not everyone who purchases whiskey or wine will be that discriminating. People may not buy wine or whiskey for themselves, but may purchase it as a gift or, as previously stated, will want these beverages as supplies for a party, and therefore the aroma or taste of the product will not be important. Because we must assess the likelihood of confusion for all consumers of the goods, we find that wine and whiskey may be bought by ordinary purchasers who have no particular sophistication about the products, and who buy them without exercising great care.

And so the Board affirmed the Section 2(d) refusal.

Section 2(e)(2) The examining attorney submitted evidence showing that Millbrook is a village in Duchess County, New York, having a population of about 1400. She asserted that Millbrook is a "low-key version of the Hamptons" and is "one of the most affluent towns in New York State," and maintained that Millbrook is a "generally known geographic location" as required by the first prong of the Section 2(e)(2) test.

The Board was not convinced that Millbrook is not an "obscure location." "Simply because a place has a school or library or town hall or motel does not mean that the public is aware of the geographic location. If that were the case, no place could be considered obscure unless it literally did not contain any public buildings."

The website evidence, the  Board observed, did not show public exposure to Millbrook, but only that someone who knew of Millbrook and was looking for information about it would likely encounter these websites. The Wikipedia entry submitted by the examining attorney was unreliable due to certain inconsistencies.

In short, the PTO failed to meet its burden to show that Millbrook is the name of a place generally known to the public, and not remote or obscure. Therefore, the Board reversed the Section 2(e)(2) refusal.

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TTABlog note: So how did you do?

Text Copyright John L. Welch 2015.

TTAB Test: Is "CLETAXI" Merely Descriptive of Taxi Transport Services?

Anthony B. Rozier applied to register the mark CLETAXI for taxi transport services, but the USPTO refused registration, finding the mark merely descriptive of the services under Section 2(e)(1). Examining Attorney Laurie Mayes asserted that "CLE" is the airport code for Cleveland Hopkins International Airport, whence applicant plies his trade. Rozier argued that "a great deal of imagination, thought and perception" is required to reach any conclusion as to the nature of his services. How do you think this came out? In re Rozier, Serial No. 86005944 (March 5, 2015) [not precedential].

Applicant displays his mark as shown above, advertising that he will take customers to and from Hopkins, whose airport codes is indeed CLE. The Board found, based in part on applicant's display of the mark, that CLETAXI "immediately and directly informs purchasers about the nature of Applicant's services." See In re Cox Enterprises, Inc., 82 USPQ2d 1040 (TTAB 2007) (THEATL merely descriptive of magazines about Atlanta).[TTABlogged here].

As to applicant's argument about the difficulty in discerning the meaning of the mark, the Board noted that applicant did not explain just what multi-stage reasoning process would be required. He contended that "CLE" has a multiplicity of meanings, but the Board pointed out once again that the mark must be considered in the context of the nature of the goods. On this point, the Board rode with the examining attorney, who bluntly asserted: "[a]ttributing other meanings to CLE in the context of taxi transport services does not make sense."

Finally, the Board observed that even if applicant were the first and only user of the term for these services, the mark is still merely descriptive.

And so the Board affirmed the refusal.

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TTABlog note: Is this a WYHA? I wonder if  an attorney gets CLE credit for using Mr. Rozier's taxi service?

Text Copyright John L. Welch 2015.

Precedential No. 7: TTAB Reverses Failure-to-Function Refusal of Monster Truck Body Ornamentation

The Board reversed a refusal to register the mark shown here, comprising a “truck cab body in the design of a fanciful, prehistoric animal,” for “entertainment services, namely, performing and competing in motor sports events in the nature of monster truck exhibitions,” rejecting the examining attorney’s contentions that the design failed to function as a service mark and that the drawing of the mark was not a “substantially exact representation of the mark in use.” Applying the standard test for trade dress distinctiveness found in Seabrook Foods, Inc. v. Bar-Well Foods Limited, 568 F.2d 1342, 196 USPQ 289, 291 (CCPA 1977), the Board found the mark to be unique and unusual, and therefore inherently distinctive. In re Frankish Enterprises Ltd., 113 USPQ2d 1964 (TTAB 2015) [precedential].

Failure to Function: The examining attorney maintained that the proposed mark would not be perceived as a source indicator for the services because it was merely “one of many interesting truck designs in which ... monster trucks appear,” and thus did not distinguish applicant’s services from those of others. He relied on the results of two Internet image searches for “monster trucks,” which yielded photographs of a number of trucks with various shapes and themes. The Board, however, pointed out that none of the trucks featured “unambiguous dinosaur or ‘fanciful prehistoric animal’ designs or themes.”

The Board observed that, although product designs cannot be inherently distinctive (Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 U.S.P.Q.2d 1065 (2000), product packaging trade dress can be. Moreover, under Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 23 U.S.P.Q.2d 1081, 1084 (1992), trade dress for services may be inherently distinctive. See In re Chippendales USA, Inc., 622 F.2d 1346, 96 U.S.P.Q.2d 1681, 1684 (Fed. Cir. 2010) (“Cuffs and Collars” costumes worn by dancers found to be trade dress that could be inherently distinctive for adult entertainment services.”) The Board found applicant’s proposed monster truck design to be “akin to the packaging of what is being sold.”

The question, then, was whether applicant's trade dress was inherently distinctive. The four-part test for determining inherent distinctiveness of trade dress was set forth in Seabrook v. Bar-Well:

[1] whether it was a ‘common’ basic shape or design,
[2] whether it was unique or unusual in the particular field,
[3] whether it was a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods, or
[4] whether it was capable of creating a commercial impression distinct from the accompanying words.

Professor McCarthy has observed that the parts of this test "are merely different ways to ask whether the design, shape or combination of elements is so unique, unusual or unexpected in this market that one can assume without proof that it will automatically be perceived by customers as an indicator of origin." J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 8:13 (4th ed. 2014)

The Board found that the examining attorney's evidence failed to show that applicant's "fanciful, prehistoric animal" design was either a common or basic design. Instead, it is "unique among the more than 100 monster trucks" uncovered by the examining attorney. "The Examining Attorney provided scant, if any, evidence that Applicant's truck is a 'mere refinement' of anything, let alone a 'commonly-adopted' and 'well-known form' in the monster truck field." The elements of applicant's design - "conveying the body of a dinosaur and adorned with other dinosaur elements, including horns, a protective shield and eyes bordered by scales" - are unique and make the design unlike those proffered by the examining attorney.

Moreover, the proposed mark creates a commercial impression separate from the words JURASSIC ATTACK that appear on the specimens of use, because the design is predominant. The words appear only on a small portion of the back of the truck, while the design elements encompass the entire truck cab. In short, the design is not mere "background" material for the words.

It is settled that a mark applied to a product can function "not only as ornamentation for the product but also as a mark for applicant's services." In other words, there is no prohibition against a trade dress mark being aesthetically pleasing. The Board observed that applicant's three-dimensional mark is "akin to the marks found registrable in Two Pesos (restaurant design), Red Robin (bird costume), Eagle Fence (colored wire in fencing) and similar cases," and not like the trade dress refused registration in Hudson News (newsstand motif), Chippendales (adult dancer costume), and File (bowling alley lighting).

The Board concluded that the examining attorney failed to set forth a "reasonable predicate" for his finding that the mark is not inherently distinctive or that it will not be readily perceived as a source indicator for applicant's services.

Mutilation: The examining attorney contended that the drawing in the application was not a "substantially exact representation of the mark in use," as required by Rule 2.51(a) because the specimens showed the mark appearing with the word JURASSIC ATTACK and other markings. The Board pointed out, however, that a background design may be registrable by itself if it is "distinctive or unique enough to create a commercial impression as an indication of source separate and apart from the remainder of the mark."

As noted above, the Board found that applicant's mark is "distinctive, unique and creates a commercial impression separate and apart from the word mark JURASSIC ATTACK." It is anything but "mere" background material. As to the additional markings (for example, stylized gills or stripes) that do not appear in the drawing, the Board found them to be merely "minor alterations" that "do not create a new and different mark creating a different commercial impression."

And to the Board reversed the refusals to register.

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TTABlog note: If someone with a similar looking truck drove it only backwards, would that result in reverse confusion?

Text Copyright John L. Welch 2015.

Precedential No. 6: "PMONEY" Confusable with "POPMONEY" for Electronic Funds Transfer, Says TTAB

The Board highly commended the parties for choosing to resolve this Section 2(d) opposition via the ACR regime. The parties agreed to forego discovery and disclosures, and submitted stipulations of facts and briefs with attached evidence, but no testimony. The Board sustained the opposition, finding the mark PMONEY likely to cause confusion with the registered mark POPMONEY (in standard character and design forms), both for financial services that included electronic funds transfer. Fiserv, Inc. v. Electronic Transaction Systems Corp., 113 USPQ2d 1913 (TTAB 2015) [precedential].

The parties agreed that if ACR "did not turn out to be the best route for them, then they could opt out of it later." They conferred with the interlocutory attorney on two occasions with regard to the stipulations of fact. [The opposition was filed on December 31, 2013, and decided on February 27, 2015].

Turning to the merits, because the respective services of the parties overlapped in part, the Board presumed that the channels of trade and classes of purchasers also overlapped. These factors weighed heavily in opposer's favor. Moreover, the Board observed for the umpteenth time that when the involved services are identical (or identical-in-part) a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

Applicant claimed that "pop" has a descriptive meaning as applied to opposer's services, but the evidence was scanty and unpersuasive. There was no evidence that the shared term, consisting of P plus MONEY, is commonly used by third parties or has any meaning in relation to the services.

The Board concluded that the marks are substantially similar, finding it likely that applicant's mark PMONEY would be perceived as an abbreviation of POPMONEY, since consumers "have a universal habit of shortening full names - from haste or laziness or just economy of words."

Applicant contended that purchasers of the involved services are sophisticated, but applicant conceded that the relevant consumers include the general public. The Board observed that "the applicable standard of care for a likelihood of confusion analysis is that of the least sophisticated consumer," and there was no evidence that the general public are sophisticated or exercise a high degree of care in connection with these services. In any event, even sophisticated consumers may be confused, especially when, as here, the services are identical in part. Finally, the Board noted, services like those of the parties here are offered to the general public at low prices or even for free.

And so the Board sustained the opposition.

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TTABlog note: Zzzzzzzzzzzz!

Text Copyright John L. Welch 2015.

CAFC Affirms TTAB: a Service Mark is Not in "Use" Until the Services are Rendered

The CAFC affirmed a decision of the TTAB (here) that ordered cancellation of a registration for the mark PLAYDOM for certain entertainment services. The appellate court agreed with the Board that the registration was void ab initio because Registrant David Couture had not used the mark in the rendering of the services prior to filing his underlying Section 1(a) application. Couture v. Playdom, Inc., 113 USPQ2d 2042 (Fed. Cir. 2015) [precedential].

In seeking registration based on use in commerce under Section 1(a) of the Lanham Act, an applicant must have used the mark in commerce with the listed goods or services as of the filing date of the application. Section 45 provides that a service mark is in use in commerce "when it is used or displayed in the sale or advertising of services and the services are rendered in commerce ...."

The Board found that the appellant had not rendered the identified services as of the application filing date. He had "merely posted a website advertising his readiness, willingness, and ability to render said services." The Board therefore deemed the registration void ab initio and it granted to petition for cancellation.

The CAFC observed that it had not previously addressed directly the question of "whether the offering of a service, without the actual provision of a service, is sufficient to constitute use in commerce under the Lanham Act." The Statute is clear on its face as to the definition of "use" for a service mark: the mark must be both displayed in the sale or advertising of services and the services must be rendered.

And so the CAFC affirmed the TTAB's ruling ordering cancellation of Mr. Couture's registration.

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TTABlog note: Maybe the reason the CAFC never had the opportunity to address this issue before is because the wording of the definition of "use" in Section 45 is clear on its face.

Text Copyright John L. Welch 2015.

Reminder: TTABlog Road Trip: IPO's "PTO Day" in Wash., D.C., March 10th

Yours truly, the TTABlogger, will be speaking at "PTO Day," sponsored by the Intellectual Property Owners Association (IPO), on March 10, 2015, in Washington, D.C. The event will feature many luminaries from the USPTO, including Deputy Director Michelle Lee, Commissioner for Trademarks Mary Denison, Commissioner for Trademarks, TTAB Chief Administrative Trademark Judge Gerard F. Rogers, and Sharon Marsh, Deputy Director for Examination Policy. It will be held at the JW Marriott Hotel, 1331 Pennsylvania Avenue, NW. The program may be found here and registration here. Tentative title for my talk: "The Top 9 or 10 TTAB Decisions of the Past Year or So." See you there?

In an intriguing afternoon session, friends and fellow bloggers Ron Coleman and Steve Baird, along with Jesse Witten and the USPTO's Cynthia Lynch, will focus on "an overview of Section 2(a) of the Lanham Act as well as the procedures for determining if a trademark is disparaging. Then, attendees will hear from counsel that represented the Native Americans in the Washington Redskins case (Baird and Witten) as well as the counsel for The Slants (Coleman)."

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Text Copyright John L. Welch 2015.

TTAB Posts March 2015 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled eight (VIII) oral hearings for the month of March, as listed below. Seven of the hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. The hearing in the OMEGA case will be held as part of that ABA-IPL Conference in Bethesda, Maryland (details here). 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.



March 12, 2015 - 11 AM: In re Erik M. Pelton & Associates, PLLC, Serial No. 85817818 [Section 2(e)(1) mere descriptiveness refusal of TUESDAY TRADEMARK TIP for providing online newsletters in the field of brands, trademarks, and trademark law via e-mail"].

March 17, 2015- 11 AM: Johnathan L. Fox v. JMIR Publications Inc., Cancellation No. 92056565 [Petition for cancellation of a registration for the mark HEALTHBOOK for "Providing an interactive web site that enables users to enter, access, track, monitor and generate health and medical information and reports; all of the above excluding services related to social networking" on the ground that mark was not in use for the services at the time of filing of the underlying application, and also on the ground of abandonment].

March 19, 2015 - 11 AM: In re Tango Card, Inc., Serial Nos. 85878822 and 85878838 [Section 2(e)(1) mere descriptiveness refusal of REWARDS AS A SERVICE for promotional and marketing services and for providing an online non-downloadable system application, featuring the provision of rewards programs].

March 24, 2015 - 11 AM: Mango's Tropical Cafe, Inc. v. Tango Mango, Inc. , Cancellation No. 92055269 [Petition for cancellation of a registration for TANGO MANGO for restaurant services, in view of opposer's alleged family of MANGO-formative marks, including MANGO'S TROPICAL CAFE and MANGO'S MAMBO BAR, for restaurant services].

March 24, 2015 - 2 PM: L'Oreal USA, Inc. and L'Oreal v. Mikhail Levitin T/A Mikhail Levitin Institute, Opposition No. 91202898 [Opposition to registration of the mark shown below for "anti-aging cream" on the grounds of likelihood of confusion with, and likelihood of dilution of, the registered mark L'OREAL and related marks, for beauty care products, including face cream and face lotion].

March 25, 2015 - 11 AM: Premio Foods, Inc. v. EDS Manufacturing, LLC., Opposition No. 91206407 [Opposition to registration of PREMO for "fruit salads and vegetable salads" and for "packaged foods, namely, deli sandwiches and desserts," in view of the registered mark PREMIO for sausages].

March 26, 2015 - 10:15 AM: Omega S.A. v. Alliant Techsystems Inc., Oppositions Nos. 91173785 and 91174067 [Oppositions to registration of the two marks shown below, for tactical gear and tactical equipment for military, law enforcement and defense applications, on the grounds of fraud and likelihood of confusion with opposer's OMEGA marks for watches and other goods].

March 26, 2015 - 2 PM: in re Josef Dolezal , Serial No. 85826122 [Section 2(c) refusal to register JORDAN MAXWELL for "Digital media, namely, pre-recorded video cassettes, digital video discs, digital versatile discs, downloadable audio and video recordings, DVDs, and high definition digital discs featuring talks, lectures and presentations by Russell Joseph Pine a.k.a. Jordan Maxwell," on the ground that the mark identifies a living individual whose consent is not of record].

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TTABlog note: Any predictions?

Text Copyright John L. Welch 2015.