TTABlog Quarterly Index: April - June 2015

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Section 2(a) - Disparagement:

• CAFC Vacates THE SLANTS Opinion, Orders En Banc Hearing
• CAFC Affirms TTAB, Finds THE SLANTS Disparaging of People of Asian Descent

Section 2(d) - Likelihood of Confusion:

• "MATTRESS OVERSTOCK & Design" Not Confusable With "OVERSTOCK.COM," Says TTAB
• TTAB Test: Are KNOTTY BRUNETTE and NUTTY BREWNETTE Confusingly Similar for Beer?
• 041 BACARO & Design Confusable With BACARO for Restaurant Services, Says TTAB
• TTAB Test: Are ACCURASCIENCE and ACURA PHARMACEUTICALS Confusable for Research Services? [No]
• TTAB Test: Are MOONSHINE REDEFINED and REDEFINING VODKA Confusable for Liqour? [Yes]
• TTAB Test: Is SHAKTI THARA For Musical Performances Confusable with SHAKTI for Compact Discs? [No]
• TTAB Orders Cancellation of "AAA CarFacts" Registration: Confusable with CARFAX
• TTAB Test: Are COW CREEK and BULL CREEK BREWING Confusable for Beer? [Yes]
• TTAB Test: Are Ginger-Based Soft Drinks Related to Vodka, Gin, and Rum? [Yes]
• WYHA? TTAB Finds MASTERBAITER Confusable With MASTERBAIT & Design, Both for Clothing
• TTAB Test: Which One of These Four Section 2(d) Refusals Was Reversed?
• TTAB Dismisses OMEGA Opposition, Finding Tactical Protective Clothing and Watches Unrelated
• TTAB Test: Which One of These Four 2(d) Refusals Was Reversed?
• TTAB Test: Is SUNRISE for Guitar Picks Confusable With PUKANA LA for Guitars? [No]
• TTAB Reverses BRUTOPIA BREWERY Refusal, Finding Pubs Not Related to Beer Festivals
• WYHA? PUP SCOUTS and DOG SCOUTS OF AMERICA Confusable for Pet Services, Barks TTAB
• PANDORA'S for Cosmetics Confusable with Famous Mark PANDORA for Jewelry, Says TTAB
• Precedential No. 11: Despite Examination Errors, Issued Registration Must Be Cited as Section 2(d) Bar

Section 2(e)(1) - Mere Descriptiveness:

• TTAB Test: Is GROCERY GEAR Merely Descriptive of Reusable Grocery Bags? [Yes]
• WYHA? TTAB Affirms Mere Descriptiveness Refusal of MORINGA SKIN for Body Lotions
• TTAB Test: Is EV500 Merely Descriptive of Electric Vehicle Competitions? [Yes]
• TTAB Test: Is CASTFLOOR Merely Descriptive of Liquid-Based Flooring Materials? [No]
• TTAB Test: Is CHEF'S CUBE Merely Descriptive of Vacuum Packaging Machines? [No]
• TTAB Reverses Mere Descriptiveness Refusal of "ERILLO" For Electronic Cigars
• Test Your TTAB Judge-Ability on These Three Mere Descriptiveness Appeals
• CAFC Affirms TTAB: NOPALEA Merely Descriptive of Supplements Containing Nopal Juice
• Test Your TTAB Judge-Ability on these Four Mere Descriptiveness Appeals

Section 2(e)(4) - Primarily Merely a Surname:

• TTAB Test: Is BOLAN for Musical Instruments Primarily Merely a Surname? [No]

Section 2(f) - Acquired Distinctiveness:

• TTAB Orders Cancellation of Registration for Color "Blue" for AC Coil Cleaner: Acquired Distinctiveness Lacking

Abandonment:

• Finding Abandonment, TTAB Orders Cancellation of NAUGLES Registration for Restaurant Services

Application Requirements:

• Precedential No. 12: WYHA? TTAB Says Application Must Be Verified, Affirms Refusal to Register

Concurrent Use:

• Precedential No. 15: TTAB Refuses Concurrent Use Registration of DELMONICO'S For Restaurant Services

Dilution:

• Precedential No. 14: TTAB Sustains Yankees' Dilution Claim Re "THE HOUSE THAT JUICE BUILT"

Failure to Function/Specimen of Use:

• TTAB Reverses Rejection of TRULICITY Specimen of Use: Display in Ordinary Text Enough
• TTAB Affirms Refusal of "SCHOOLFURNITURE4LESS" As Merely Informational
• Test Your TTAB Judge-Ability On This Service Mark Specimen of Use
• Name of Dolphin Fails to Function as Service Mark for Aquarium, Says TTAB

Genericness:

• TTAB Finds SUSTAINABLE WATER Generic for ... Guess What?
• TTAB Test: Is "ALOE BIOSCIENCE" Generic for Aloe-Containing Personal Products? [No]
• CAFC Vacates PRETZEL CRISPS Decision: TTAB Misapplied Genericness Test
• Precedential No. 13: TTAB Finds BUYAUTOPARTS.COM Generic for .... Guess What?

Discovery/Evidence/Procedure:

• Three Summary Judgment Motions: Morehouse Defense, Claim Preclusion, and Contract Estoppel
• Fourth Circuit Rules That Plaintiff in Appeal from Ex Parte TTAB Decision Must Pay ALL Expenses"
• TTAB Denies Petition to Disqualify Opposer's Attorney for Signing Applications

CAFC Decisions:

• CAFC Affirms TTAB's "iWatch" Ruling: Applicant Lacked Bona Fide Intent
• CAFC Affirms TTAB Entry of Summary Judgment on COLOR WARS Cancellation Petition
• CAFC Vacates PRETZEL CRISPS Decision: TTAB Misapplied Genericness Test
• CAFC Vacates THE SLANTS Opinion, Orders En Banc Hearing
• CAFC Affirms TTAB, Finds THE SLANTS Disparaging of People of Asian Descent
• CAFC Affirms TTAB: NOPALEA Merely Descriptive of Supplements Containing Nopal Juice

Recommended Reading:

• Ken Germain: After B&B v. Hargis, TTAB Litigants Should Consider Expert Testimony
• Reading Material for Your Trip to INTA San Diego
• Roberto Ledesma: "Google and the Kingdom of Tonga"
• Five Presentations from the Trademark Office Comes to California
• Recommended Reading: Prof. Robert C. Bone, "Trademark Functionality Reexamined"

Other:

• TTABlogger Returns to Boston and Wolf Greenfield
• TTAB Posts June 2015 Hearing Schedule
• USPTO Seeks Leave to Intervene In FLANAX 4th Circuit Appeal
• TTAB Posts May 2015 Hearing Schedule
• TTAB Posts April 2015 Hearing Schedule

Text Copyright John L. Welch 2015.

"MATTRESS OVERSTOCK & Design" Not Confusable With "OVERSTOCK.COM," Says TTAB

The Board dismissed this Section 2(d) opposition to registration of the mark MATTRESS OVERSTOCK, in the design form shown below, for "retail store and on-line retail store services featuring furniture and sleep products" [MATTRESS OVERSTOCK disclaimed], finding the mark not likely to cause confusion with the registered mark OVERSTOCK.COM for online wholesale and retail store services featuring general consumer merchandise, including furniture, linens, and pillows. Although the services overlapped, the term OVERSTOCK, which is used by third parties to describe their retail store services, is "conceptually very weak," and consequently "the fact that the two marks share this term has little significance." Overstock.com, Inc. v. J. Becker Management, Opposition No. 91203624 (June 15, 2015) [not precedential].

I prepared a long summary of this opinion, only to delete it accidentally while it was still in draft form. Since I don't have the time (or will) to spend another two hours on this case, so I will just say the following.

The evidentiary issues discussed at the beginning of the opinion are worth reviewing. Most of opposer's evidence, though admissible, was not probative because it was hearsay. In other words, various documents were admitted for what they showed on their faces, but not for the statements made in the documents. For example, opposer's 2012 10-K statement was admissible by way of notice of reliance under Safer, but without testimony it could not be used to prove the facts stated therein. In other words, Safer eliminated the need for testimony establishing when and from where a document had been downloaded from the Internet, but testimony is still needed if the document is offered to prove the statements made in the document. Consequently, opposer's sales and revenue figures set forth in the annual report were hearsay because no witness confirmed their provenance or accuracy.

On the substantive side, because of the evidentiary deficiencies in opposer's proofs, it was unable to show that its mark was "famous" under Section 2(d) and entitled to a broad scope of protection. The inherent weakness of the word "overstock" for retail services was critical to the Board's finding of no likelihood of confusion.

Read comments and post your comment here

TTABlog comment: Think about the preclusion issue here. In a subsequent infringement action, is Overtock.com stuck with the findings regarding the strength of its mark? The dissimilarity of the marks? Seems to me the answer is yes.

Text Copyright John L. Welch 2015.

TTAB Test: Are KNOTTY BRUNETTE and NUTTY BREWNETTE Confusingly Similar for Beer?

Applicant sought to register the mark KNOTTY BRUNETTE for "beer, ale and lager," but the USPTO refused registration, finding the mark likely to cause confusion with the mark NUTTY BREWNETTE for beer. The goods are, in part, identical, but what about the marks? How do you think this came out? The Board panel was divided on the question. In re Twin Restaurant IP LLC, Serial No. 85934428 (June 24, 2015) [not precedential].

Applicant lamely argued that there would be no confusion because its KNOTTY BRUNETTE beer is sold only in Applicant’s Twin Peaks restaurants, which feature "sexy wait staff," and so consumers will understand the mark to be a homophone for "naughty brunette." The Board pointed out, however, that because the goods identified in the application are in part identical to those of the cited registration, it must presume that those goods travel through the same, normal channels of trade (including restaurants not owned by applicant) to the same classes of consumers.

The panel majority found the first du Pont factor - the similarity or dissimilarity of the marks - to be dispositive. Although the marks have slight differences in sound when pronounced correctly, it must be remembered that there is no correct pronunciation of a trademark [What about APPLE or BLACK CAT? - ed.]. Therefore the Board must assume that a consumer could pronounce the marks in the same way.

However, the Board majority found the "obvious" differences in appearance, connotation, and commercial impression to be critical. The primary connotation of the registered mark NUTTY BREWNETTE is the flavor of the beer. The phrase connote a "nutty brew" or nutty flavored beer. The Board recognized that the registered mark is also a double entendre for “nutty brunette” to denote "a dark-haired female with a 'nutty' or 'silly, strange, or foolish' personality." Nonetheless, "the appearance and primary connotation and commercial impression of the mark projects a nutty flavored type of beer."

In Applicant’s mark, "knotty" is a homophone for "naughty," conveying the meaning of "relating to or suggesting sex in usually a playful way." "Applicant’s mark is more likely to project the connotation of a 'naughty brunette,' that is to say, a dark-haired woman displaying a playful type of sexiness."

Moreover, both the adjectives “knotty” as well as its homophone “naughty” are entirely devoid of any connotation of nut or nut-like flavoring. Thus, the marks have their own unique humorous play on words that project separate meanings and distinct commercial impressions. As a result, when confronted with both marks, prospective consumers are unlikely to assume that Applicant’s and Registrant’s respective goods originate from the same source

The panel majority concluded that the dissimilarities in the marks outweighed the other du Pont factors, and so the Board REVERSED the refusal to register.

Judge David Bucher dissented, pointing out that similarity in sound alone may be sufficient to establish that two marks are confusingly similar.

Inside a noisy bar, as the night wears on, and the bartender and patron trade verbal exchanges ... any aural differences in the short vowel sounds of only the first of these four syllables will likely not be readily distinguishable – and especially to southern ears.

Judge Bucher also saw a similarity in connotation and he questioned the majority's assumption that a consumer would "retain fine connotations from one tavern visit to the next."

Yet the majority acknowledges similar sounding marks, each having one or even several double entendres! Let’s see, was that dark-haired female of several weeks ago an extremely difficult personality ("knotty"), strange ("nutty"), or playfully sexy ("naughty"). Or if the brew has an earthy flavor profile – in a wild, Euell Gibbons kind of way – was it due to the (knotty) bark or nuts?

When the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion, Judge Bucher reminded. And in cases of doubt in the 2(d) ex parte context, the benefit of the doubt goes to the registrant.

Read comments and post your comment here

TTABlog note: I side with Judge Bucher on this one. He sounds like he has real marketplace experience. Personally, I like the taste of NASTY BROONETT.

Text Copyright John L. Welch 2015.

041 BACARO & Design Confusable With BACARO for Restaurant Services, Says TTAB

The Board affirmed a refusal to register the mark 041 BACARO & Design, shown below, for "Restaurant and bar services [BACARO disclaimed]," finding it likely to cause confusion with the mark BACARO, registered for the same services. Applicant argued that BACARO means "Venetian Bar" and therefore is descriptive or generic for the services, but the Board refused to consider that argument because it constituted an improper collateral attack on the validity of the cited registration. In re G2D Management, LLC, Serial No. 85703129 (June 22, 2015) [not precedential].

In addition to its futile arguments regarding descriptiveness and genericness of the cited mark, applicant also argued that the cited mark is weak because consumers are accustomed to seeing the term BACARO in restaurant names. In support of that contention, applicant submitted the results of two Google brand searches and copies of pages from a tour company website offering tours of Venice "bacari." However, the Google listing provided little information regarding each establishment, some references were ambiguous or irrelevant, and a few referred to foreign restaurants. In short, this evidence "failed to establish such widespread use of 'bacaro' for restaurants or bars that consumers would be accustomed to distinguishing marks using the term on the basis of other components of the marks."As to the tour guide pages, the eateries named were located in Italy. Although the pages were in English, and thus presumably available to U.S. customers, the record did not show the extent of exposure to the website or that "bacaro" applied to bars in the USA.

Examining Attorney Tracy Cross submitted copies of pages from the websites of both applicant and registrant, showing that each recognizes the Italian origins of "bacaro." This, however, did not demonstrate that BACARO is weak, but "merely underscores the foreign regional nature of the term 'bacaro.'" Applicant's disclaimer did not affect that conclusion, the Board noting that an applicant's voluntary disclaimer of a term has no effect on the the issue of likelihood of confusion.

Turning to a consideration of the marks, the Board found that, despite the large size of the numbers "041," the term BACARO is a "salient feature" of applicant's mark and is of equal prominence with the numbers. "Moreover, consumers are more likely to remember a pronounceable term such as 'bacaro' rather than an arbitrary string of numbers." The Board also pointed out that, because the cited mark is in standard character form, the registrant could display its mark in the same font style as applicant's mark.

Bearing in mind that the marks will be used for identical services, the Board found the marks "more similar than dissimilar and not so different as to avoid a likelihood of confusion."

Read comments and post your comment here

TTABlog note: Do you hear the rumblings of an oncoming cancellation proceeding? Justice is supposed to be blind, so would you say that here the Board was Venetian blind?

Text Copyright John L. Welch 2015.

TTAB Test: Is GROCERY GEAR Merely Descriptive of Reusable Grocery Bags?

The USPTO refused to register the mark GROCERY GEAR in the stylized form shown below, finding it to be merely descriptive of "reusable grocery bags." Applicant Penny Johnson appealed, arguing that the lack of evidence of third-party use of GROCERY GEAR in a descriptive manner established that the mark is not merely descriptive. How do you think this came out? In re Penny Johnson, Serial No. 86017471 (June 22, 2015) [not precedential].

Examining Attorney Karen Severson relied on dictionary definitions of "grocery" (food bought at a store) and "gear" (equipment, paraphernalia), noting that the word "grocery" appears applicant's identification of goods. The scant Internet evidence showed us of "fabulous grocery gear" in connection with reusable grocery bags, and "Grocery Gear: Keep your cool" for a "collapsible cooler used to carry groceries." Three third-party registrations disclaimed "grocery" and three disclaimed "gear" for reusable bags or shopping bags.

The Board found that this evidence established the descriptive meaning of GROCERY and GEAR for applicant's goods. The combination of the two words, it concluded, did not evoke any new or unique commercial impression.

Applicant itself has described its goods as “reusable grocery bags,” and the manner in which Applicant promotes its goods, i.e., “pack & transport grocery system,” consumers would understand that the applied-for mark describes the purpose and/or a feature of the goods, namely, that they are bags intended to carry items from a grocery store."

As for applicant's argument that no third-party uses the phrase GROCERY GEAR, the Board pointed out that a term may be merely descriptive even if the applicant is the first and only user of same. The Board also noted that "some" of the evidence showed third-party use of "grocery gear."

The Board found nothing incongruous in the mark, and the stylization of the mark did not detract from its descriptiveness. Although any doubt regarding mere descriptiveness must be resolved in favor of the applicant, the Board had not doubt here in affirming the refusal to register.

Read comments and post your comment here

TTABlog note: I think "gear" is too vague a term to be descriptive here. A bag is not "gear," by my way of thinking. The word tells you nothing more about the goods than what you would know by looking at them: obviously a bag for carrying groceries. What do you think?

Text Copyright John L. Welch 2015.

TTAB Reverses Rejection of TRULICITY Specimen of Use: Display in Ordinary Text Enough

The Board reversed a refusal to register the mark TRULICITY for "pharmaceutical preparations for the treatment of diabetes, finding that applicant's specimen "demonstrates use of the mark that Applicant seeks to register with the meaning of the Trademark Act. In re Eli Lilly and Company, Serial No. 85183667 (June 18, 2015) [not precedential].

The examining attorney maintained that the specimen of use (shown below) "shows the proposed mark as part of [a] logically connected and continuous sentence ...." He noted that the word TRULICITY is in the same size and style of font as the surrounding wording and is not "set out from the surrounding text." One viewing the specimen of use, he contended, would have to search through the text even to find the mark.

(Click on photo for larger picture)
Applicant pointed out that TRULICITY is the only coined term on the specimen, appearing just before the generic name of the goods. It has an initial capital "T" and is accompanied by the "TM" designation. The Board, applicant argued, should not apply a mechanical test but instead should consider the commercial impression made by the mark.

The Board observed that "a trademark ... need not be displayed in any particular size or degree of prominence." The key question is whether it will be understood as indicating the origin of the goods. The Board paraphrased the specimen as stating: "This package contains either Trulicity brand dulaglutide or a placebo." This conveys "exactly the message that a trademark is supposed to convey, i.e., that the package contains Trulicity brand goods." [The Board noted that goods bearing this particular label are delivered to highly sophisticated users, i.e., medical or scientific professionals and subjects under their care.]

Cases cited by the examining concerned whether a mark was in "use" at all, or concerned descriptive or highly suggestive wording that might be perceived as informational. TRULICITY, the Board pointed out, is a fanciful, coined term.

Even though it may be embedded in other text, there is no danger that this coined term will be interpreted as merely descriptive or informational matter. It is also the only coined designation in the text of the label, and is set out with a “TM” symbol, further indicating it is a trademark. As such, its only purpose is to provide a unique identifier to a product that is otherwise identified only by a generic name and technical, explanatory information. Its placement on the product label is sufficient to “make it known to purchasers,” and its placement immediately adjacent to the generic name of the goods allows customers to “associate it with the goods.”

The Board concluded that TRULICITY, as used, meets the statutory definition of a trademark. Although display of the mark may be understated, it is up to applicant to decide how it wishes to display the mark to customers in the scientific research field.

Read comments and post your comment here

TTABlog comment: I don't particularly like this decision. I think a trademark should stand out from surrounding text. According to this decision, a TM symbol and an initial cap may be enough. I would require bold font and all caps.

Text Copyright John L. Welch 2015.

WYHA? TTAB Affirms Mere Descriptiveness Refusal of MORINGA SKIN for Body Lotions

The Board, in a three-page opinion, affirmed the USPTO's refusal to register the mark MORINGA SKIN for "lotions for face and body care containing moringa" [MORINGA disclaimed], finding it to be merely descriptive of the goods. The evidence established that moringa oil, derived from the seeds of the Moringa oleifera tree, has many uses, including uses in the skin care industry. In re j. debeaute, Serial No. 85967716 (June 18, 2015) [not precedential].

Applicant feebly contended that MORINGA SKIN is suggestive rather than descriptive because it is not clear whether the phrase revers to the skin of a person or the skin of a moringa fruit: "It takes some thought to realize that applicant's lotions contain moringa extracts and are used for the skin."

The Board pointed out once again that the determination of mere descriptiveness is not a guessing game. The mark must be considered in the context of the identified goods.

The question, however, "'is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods and services are will understand the mark to convey information about them.'"

The Board concluded that a consumer of lotions would readily recognize the MORINGA SKIN immediately conveys information about the goods: they are skin-care products containing moringa. Therefore the mark is merely descriptive of applicant's goods.

Read comments and post your comment here

TTABlog note: Well, would you have?

Text Copyright John L. Welch 2015.

TTABlogger Returns to Boston and Wolf Greenfield

Sometimes you can go home again. On Monday, June 22nd, I will head back across the Longfellow Bridge from Cambridge to Boston [the only direction available these days] to become Counsel to Wolf, Greenfield & Sacks, P.C., in Boston. [Some of you may recall that when I first came to Boston, I was a partner at WGS for 12 years.] This blog will continue on its merry way for the foreseeable future. I look forward to collaborating with my long-time friend, Doug Wolf, my co-chair on the Trademarks and Unfair Competition Committee of the Boston Patent Law Association (BPLA), Christina Licursi, my ex-partner [in a law firm sense] Ed Perlman, and my new and old colleagues at WGS. [New email address: jwelch at wolfgreenfield dot com.]

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TTAB Finds SUSTAINABLE WATER Generic for ... Guess What?

The Board affirmed a refusal to register the term SUSTAINABLE WATER (in standard character form), finding the term to be generic for "sustainable on-site water recycling and wastewater treatment services." Applicant sought registration on the Supplemental Register, but Examining Attorney Edward Nelson maintained that the term is "incapable of identifying [the source of] Applicant’s services." In re Aquei Technologies LLC, Serial No. 86034765 (June 17, 2015) [not precedential].

The Board found that the genus of services is adequately defined by applicant's recitation of services. It observed that the term SUSTAINABLE WATER is generic "if the relevant public understands it to refer to this type of water recycling and wastewater treatment services."

Applicant asserted that it was not seeking to register the term for the sale of water but rather it is providing a service that is "indirectly related to the words 'SUSTAINABLE WATER.'" Third-party uses, according to applicant, show the term used as an adjective "in different contexts and with additional word(s)." And so, applicant contended, the USPTO had failed to prove genericness by the required clear and convincing evidence.

The Board pointed out that applicant uses the term "sustainable water" in its own recitation of services. Applicant's website states that its services make the "'water' supply of large water users, like college campuses and manufacturing centers, 'sustainable.'"

Extensive evidence submitted by the Examining attorney demonstrated that the term SUSTAINABLE WATER "directly names the most important or central aspect or purpose of Applicant’s services, which are treating, recycling and reusing water." The Board noted that it has frequently ruled that a term that names the "central focus" or "key aspect" of a service is generic for the service itself, and the CAFC has approved this approach. [See the HOTELS.COM decision, In re Hotels.com LP, 91 USPQ2d 1532, 1535 (Fed. Cir. 2009)].

The Board rejected Applicant's noun-versus-adjective argument because "this 'part of speech' test does not accurately describe the case law results." [See, e.g., the ATTIC sprinkler case, In re Central Sprinkler Co., 49 USPQ2d 1194, 1199 (TTAB 1998). The fact that applicant is not selling water does not put an end to the inquiry.

With a nod to the CAFC's recent PRETZEL CRISPS decision [Princeton Vanguard, LLC v. Frito-Lay North America, Inc., 114 USPQ2d 1827 (Fed. Cir. 2015), the Board recognized that a genericness determination must be made on the record as a whole:

However, in the face of the overwhelming case of genericness put forward by the Trademark Examining Attorney, and Applicant’s failure to present convincing contradictory evidence (as opposed to mere argument), we find that Applicant has failed to call into question our ultimate finding.

And so the Board affirmed the refusal to register.

Read comments and post your comment here

TTABlog note: Is this a WYHA? In other words, were applicant's arguments likely to be sustainable? Did they hold water?

Text Copyright John L. Welch 2015.

TTAB Test: Are ACCURASCIENCE and ACURA PHARMACEUTICALS Confusable for Research Services?

The USPTO refused registration of the mark ACCURASCIENCE, in standard character and design form (below), for "DNA analysis services for scientific research purposes," finding the mark likely to cause confusion with the registered mark ACURA PHARMACEUTICALS for "pharmaceutical research and development services" [PHARMACEUTICALS disclaimed]. Third-party registration and website evidence showed that the services are related, but what about the similarity of the marks? And wouldn't the purchasers be sophisticated? How do you think this came out? In re AccuraScience LLC, Serial Nos. 86158955 and 86158968 (June 15, 2015) [not precedential].

Based on a dictionary definition of "accurate," the Board found that ACURA in the registered mark "suggests a desired characteristic of the services, namely, that they produce accurate results." But even if the Board found the registered mark to be inherently somewhat weak, it is still entitled to its registration presumptions and must be protected against confusion.

As mentioned, the Board found that DNA sequencing and analysis is related to pharmaceutical research and development services. The evidence suggested that common customers would be genetic research centers, pharmaceutical companies, and others within the biotechnology and biopharma fields.

Turning to the marks, the marks are obviously similar in their respective first portions, and there was no evidence that ACCURA and ACURA would be pronounced differently. Both marks evoke the meaning of "accuracy." Applicant argued that ACURA would bring to mind certain vehicles made by Honda, but it provided no evidence to support that assertion.

Nonetheless, when the marks are viewed as a whole, they are much less similar. Moreover, "ACCURASCIENCE connotes accurate science or accuracy in scientific results whereas ACURA PHARMACEUTICALS connotes accurate pharmaceutical research or formulation." Although these connotations are similar, they suggest different results. [They seem quite similar to me - ed.]. The Board concluded that the marks are "only somewhat more similar than dissimilar in appearance, sound, meaning, and overall commercial impression." Applicant's design mark "differs more strongly from the marks in the cited registration and also more strongly connotes accurate science." In sum, the Board found that the first du Pont "weighs only somewhat in favor of a likelihood of confusion."

The consumers of the involved services are not ordinary consumers. The primary purchasers are companies involved in the pharmaceutical and biotech industries. "By definition, all of these customers would be quite sophisticated." Although it is often observed that customers who are sophisticated in a particular field are not necessarily immune from source confusion, here the highly technical and sophisticated nature of the services led the Board to find that purchasers would exercise a high degree of care and would likely notice the differences between the marks.

The Board therefore reversed the refusal to register.

Read comments and post your comment here

TTABlog note: Not often does the sophistication argument make a difference. I think the marks are too similar, and even sophisticated consumers could be confused.

Text Copyright John L. Welch 2015.

TTAB Test: Are MOONSHINE REDEFINED and REDEFINING VODKA Confusable for Liqour?

Rabbit Hole Spirits sought to register the mark MOONSHINE REDEFINED for "distilled spirits; liquor; whiskey" [MOONSHINE disclaimed], but the USPTO refused registration on the ground of likelihood of confusion with the registered mark REDEFINING VODKA for "alcoholic beverages, except beers" [VODKA disclaimed]. The goods, as identified, overlap, but are the marks confusably similar? How do you think this came out? In re Rabbit Hole Spirits, LLC, Serial No. 86193667 (June 11, 2015) [not precedential].

Because the goods are legally identical (the goods identified in the cited registration encompass those of the application), the Board must presume that they travel in the same channels of trade to the same classes of consumers.

Rabbit Hole contended that the cited mark is "highly descriptive," but the Board observed that any such attack on the cited registration, which enjoys a presumption of validity, is improper. And so the Board considered applicant's position to be that the cited mark is highly suggestive and therefore weak.

Rabbit Hole pointed to 251 third-party registrations for marks containing the words REDEFINING, REDEFINED, or REDEFINE. The Board noted that, although such registrations are not evidence that the marks are in use, they may operate in the manner of a dictionary to show that a terms has a significance in a particular field. Here, nearly all of the third-party registrations covered goods and services very different from alcoholic beverages. However, dictionary definitions of "redefine" as "define again or differently" indicated that this meaning would be applicable to a broad range of goods and services. The Board therefore concluded that REDEFINING has a laudatory significance and it agreed with applicant that REDEFINING VODKA is not entitled to the broad scope of protection accorded an arbitrary mark. Nonetheless, even suggestive marks are entitled to protection against confusingly similar marks.

Rabbit Hole next pointed to several labels submitted to the Alcohol and Tobacco Tax and Trade Bureaus as evidence of third-party use of REDEFINING or REDEFINED in connection with alcoholic products. However, in only two did the words appear in the manner of a trademark. The Board observed that mere approval of a label by a government agency does not establish that the goods are actually being sold or that public is exposed to the mark.

Turning to the marks at issue, the Board agreed with applicant that there are specific differences in the marks [I agree, too - ed.] However, both marks consist of a variation of the word REDEFINE coupled with a generic term for an alcoholic beverage. The marks convey the same connotation and commercial impression of a beverage that is "different from the others, i.e., that it has been 'redefined.'" Consumers are likely to view the marks as indicating a single source, with the generic portions of the marks simply identifying the particular type of beverage. And the marks have a similarity in appearance and pronunciation. [Really? - ed.]. The Board concluded that the similarities in the marks far outweigh the differences.

Finally, Rabbit Hole lamely argued that the fourth du Pont factor - the conditions of sale - favored applicant because customers looking to purchase vodka would not buy moonshine. The Board noted for the umpteenth time that the issue is not whether consumers would confuse the goods, but whether they would confuse the sources of the goods. There was no evidence that purchasers of alcoholic beverages are particularly sophisticated or would exercise a greater standard of care than the general public. [Possibly less care, depending on the quantity of alcohol imbibed prior to the purchasing decision - ed.].

Balancing the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal.

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TTABlog note: Well, how did you do?

Text Copyright John L. Welch 2015.

Precedential No. 15: TTAB Refuses Concurrent Use Registration of DELMONICO'S For Restaurant Services

Concluding that there would be a likelihood of confusion even in Applicant Southwestern Management's current territory (upstate New York), the Board dismissed this proceeding seeking a concurrent use registration for the mark DELMONICO'S. for "restaurant services." Southwestern, the junior user but first to file an application to register, sought a nationwide registration except for the areas of use of the Defendants. However, the renown of the Defendant's restaurants (one in New York City (DELMONICO'S, the heir apparent to the historical restaurant of that name, the other based in New Orleans (DELMONICO) and promoted by Chef Emeril Lagasse) made it likely that confusion would occur even if Applicant's registration for "restaurant services" were limited to upstate New York. Southwestern Management, Inc. v. Ocinomled, Ltd. and Emeril’s Food of Love Productions, LLC, 115 USPQ2d 1007 (TTAB 2015) [precedential].

Applicant Southwestern operated four restaurants (Syracuse, Albany, Utica, and Rochester, New York), specializing in Italian food and steak. Defendants Ocinomed [OL] owns DELMONICO'S in downtown Manhattan, having taken the name of an historic New York restaurant that closed in about 1990. Although OL does not claim to own the goodwill of that restaurant, it does invoke a "cultural connection" to it, offering several dishes attributed to the historic eatery: Lobster Newburg and Baked Alaska, for instance. Defendant Emeril's [EFOL] operates two DELMONICO restaurants, one in New Orleans and one in Las Vegas, offering food with a Creole influence.

Although Southwestern claimed that its seniority of use entitled it to the lion's share of the United States, the Board found that Southwestern was not the senior user of the mark. OL began use of DELMONICO'S in New York City on May 13, 1998, just two days before Southwestern's first use date, and EFOL's predecessor-in-interest acquired rights in the DELMONICO mark in 1997.

Concurrent use proceedings are governed by Section 2(d) of the Lanham Act, which permits the grant of concurrent registrations, under appropriate restrictions as to "mode or place of use of the marks or the goods."

There are two 'conditions precedent to the issuance of concurrent registrations,' specifically: (1) that the party seeking registration be entitled to use the mark in commerce, notwithstanding concurrent use by others; and (2) that there be no likelihood of confusion, mistake or deception in the marketplace as to the source of the relevant goods or services resulting from the continued concurrent use of the trademark. In re Beatrice Foods Co., 429 F.2d 466, 166 USPQ 431, 435-36 (CCPA 1970).

The applicant has the burden of proof to establish its entitlement to a concurrent use registration. The rights of the parties are determined based on the facts existing as of the close of the testimony period.

EFOL contended that Southwestern's use of the mark was not "lawful," as required by Section 2(d), because it was not adopted in good faith. EFOL pointed to Southwestern's use of another EFOL trademark, BAM!, at about the same time. The Board observed, however, that even if Southwestern had known of EFOL's use of BAM!, that did not support a finding that it knew of EFOL's use of the DELMONICO mark. And even if Southwestern had knowledge of EFOL's use of DELMONICO, that does not necessarily disprove good faith adoption, since Southwestern "could have believed that its adoption was sufficiently remote so as to make confusion unlikely."

The determination as to whether Southwestern is entitled to a concurrent use registration requires an assessment as to whether confusion can be avoided by the imposition of "conditions and limitations as to the mode or place of use of the marks or the [services] on or in connection with which such marks are used." 15 U.S.C. Section 105(2). The only limitations proposed by Southwestern were geographical: Southwestern claimed the entire Unites States except for specific areas in New York, Louisiana, and Nevada, conceding those areas to the defendants.

The Board pointed out that a junior user may prove, in an appropriate case, that it is entitled to the entire United States with the exception of the senior user's territory. [See, for example, the Three Palms and Boi Na Braza cases]. The fact that Southwestern was the first to file for registration is a factor pointing in its direction, since the CAFC and the Board have discussed a policy of favoring the first to apply, but it is a factor that is "very much subordinate to the statutory considerations at the heart of a concurrent use analysis, i.e., the determinations as to whether a party is entitled to use its mark and as to whether confusion is not likely."

Any policy favoring those who apply for registration cannot, alone, automatically establish a party’s entitlement to use its mark in the majority of the geographic United States if consumer confusion is likely to result, in contravention of Section 2(d).

Southwestern, the Board found, has demonstrated its right to uses its mark, in its current manner, in its current locations, but a determination of the geographic scope of a concurrent use registration requires a full analysis of the likelihood of confusion issue.

The Board saw no meaningful difference between the singular and plural forms of DELMONICO, deemed the marks "obviously virtually identical in appearance and sound," and "essentially identical in meaning and overall commercial impression."

The identification of goods in the subject application, "restaurant services," encompasses the services offered by both defendants. Southwestern pointed to the differences in actual services: its moderately priced meals versus the high-end restaurants of EFOL offered by a celebrity chef and the high end Manhattan restaurant associated with a particular historic location.

Although the trial testimony about the differences in the restaurants suggested that there might be a basis for coexistence without likelihood of confusion, none of the parties suggested a way in which Southwestern's restaurant services could be specifically defined in a registration so as to avoid confusion with the type of restaurants operated by the defendants.

The Board next looked to the fame and renown of each of the parties respective marks, since that has a obvious bearing on the likelihood of confusion analysis. Southwestern's restaurants have a reputation local in nature. OL, however, "enjoys an peculiar form of renown because the press and public are very willing to conflate the identities of OL's restaurant with that of the historic Delmonico previously located at the same address." Although there is no business relationship between OL and the historic restaurant, "members of the public (and sometimes the press) do not necessarily appreciated the niceties of trademark ownership and continuity of business goodwill." In any case, the fact that OL's restaurant emulates the historic venue has produced "a heightened degree of interest and excitement among the press and public, which has redounded to the benefit of OL."

With regard to EFOL, through the fame of its principal, Emeril Lagasse, its DELMONICO mark has "a very substantial degree of renown throughout much of the United States." His celebrity resulted in substantial interest in his re-opening of the DELMONICO restaurant in New Orleans, and through numerous media appearances he has extensively promoted his two DELMONICO restaurants. Credit card and reservation records established that customers from across the country patronize the restaurants. In sum, although the evidence fell short of proving fame for Section 2(d) purposes, it demonstrated that the reputation of EFOL's mark "has spread throughout a substantial portion of the United States." Several incidents of actual confusion demonstrated that its reputation reached into New York state.

The Board found that upstate New York is not so remote that its denizens would be insulated from the reputation of EFOL's restaurants. OL established a "fairly widespread reputation," particularly strong in New York City and surely strong enough to reach Albany, New York. Consequently, the Board concluded that even if Southwestern's territory were limited to upstate New York, a likelihood of confusion would arise from the concurrent use of the involved marks.

In short, Southwestern failed to carry its burden of proof to show that confusion is not likely. The Board hastened to add that its determination did not, in some respects, take into account actual marketplace conditions, and affects only the issue of registrability and not Southwestern's right to use the mark.

And so the Board dismissed the proceeding, denying Southwestern the registration requested.

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TTABlog note: What's the next step? For whom?

Text Copyright John L. Welch 2015.

TTAB Affirms Refusal of "SCHOOLFURNITURE4LESS" As Merely Informational

Some phrases are just too commonplace to serve as source indicators: e.g., DRIVE SAFELY, or ONCE A MARINE, ALWAYS A MARINE. Applicant Belnick, Inc. applied to register four common terms - SCHOOLFURNITURE4LESS, CHURCHCHAIRS4LESS, STACKCHAIRS4LESS, and FOLDINGCHAIRS4LESS - and the Board affirmed refusals of all four, agreeing with the PTO that the terms fail to function as service marks for retails store services. In re Belnick, Inc., Serial Nos. 85973023; 85973044; 85973069; and 85973100 (June 10, 2015) [not precedential].

Relying on numerous third-party websites, Examining Attorney Timothy Finnegan maintained that each of the applied-for marks "is merely informational and constitutes a common term or slogan that is commonly used by those in Applicant's particular trade or industry," and "does not function as a service mark to indicate the source of Applicant’s services and to identify and distinguish them from others."

Applicant contended that “the threshold of distinctiveness necessary for a mark to qualify as a trademark is quite low” and that “[i]nclusion of ‘4 LESS’ in applicant’s mark is believed to present a visual variation from the generic term ‘FOR LESS’ in that it is capable, at least at some time in the future, to function as a service mark.” Applicant also pointed to a number of third-party registrations for marks containing "4LESS" or "FOR LESS" combined with a generic term.

The Board pointed out that use of a designation or a phrase to convey advertising or promotional information, rather that to indicate source, is not service mark use, referring to many examples in prior decisions (such as GUARANTEED STARTING, WHY PAY MORE, THINK ABOUT IT). Common laudatory statements ordinarily used in business or a particular trade are not registrable (like DRIVE SAFELY, THINK GREEN, PROUDLY MADE IN USA).

Of course, the key issue is how the proposed mark would be perceived by the relevant public. "The more commonly a phrase is used in everyday parlance, the less likely the public will use it to identify only one source and the less likely the phrase will be recognized by purchasers as a trademark or service mark."

Particularly pertinent was the Board's decision in In re Melville Corp., affirming a failure-to-function refusal of BRAND NAMES FOR LESS for "retail store services in the clothing field." There, the Board relied upon third-party uses to show that "it is a relatively common practice in the retail industry to make the claim that a merchant sells brand name merchandise for less than the usual price."

The Board, not surprisingly, gave no weigh to the lack of spacing between the components of applicant's mark, nor to the use of "4" instead of "four." Moreover, the terms "4 less" and "for less" are used interchangeably in the trade, and are generic equivalents indicating discount pricing.

With regard to third-party registrations, in some the phrases "4 less" or "for less" are disclaimed and the marks include additional distinctive words or designs. Others reside on the Supplemental Register. In any event, the Board asserted, the prevalent use of these two phrases in the furniture trade makes it unnecessary to focus on these other marks, even if there is some inconsistency in the PTO's treatment of the phrases. And, of course:

Although administrative consistency is a goal, these third-party registrations are not conclusive on the question of registrability of Applicant’s designation inasmuch as each case must stand on its own merits.

The Board therefore affirmed the refusals to register.

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TTABlog note: How about SCHOOLFURNITUREIVLESS [note the Roman numeral]?

Text Copyright John L. Welch 2015.

Ken Germain: After B&B v. Hargis, TTAB Litigants Should Consider Expert Testimony

In his latest article, Kenneth B. Germain advises that the Supreme Court’s decision in B&B v. Hargis has made it more important to consider hiring a legal expert in inter partes proceedings before the Trademark Trial and Appeal Board. The Brave New World of Possibly Preclusive TTAB Proceedings: How Expert Testimony Can Strengthen Your Case.

Many believe that the B&B v. Hargis decision, holding that a TTAB ruling on likelihood of confusion may have preclusive effect in infringement litigation, will have significant impact on the way TTAB cases are handled. Over the years, TTAB proceedings have become more like federal litigation due to various rule changes and the ever-growing importance of trademarks in the economy. B&B v. Hargis is another step in that direction, since the decisions of the Board may now have added significance for the brand owner. And why think that the Supreme Court's ruling will apply only in the Section 2(d) context? For example, what about the Board's recently ruling on dilution-by-blurring in the Yankees case?

Ken Germain posits that the wise TTAB litigator should consider the possibility of expert testimony.

So, with inter partes TTAB cases/decisions having become much more likely to have expansive and lasting effect, what adaptive litigation strategies might be worth considering? Engagement of a potential expert witness on trademark/unfair competition law ... is one such strategy.

Mr. Germain suggests what issues may be particularly appropriate for expert testimony, when to look for an expert, how to find one, and how much one may cost. Welcome to the new TTAB world!

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TTABlog note: The linked article has been provided with the permission of BNA’s Patent, Trademark & Copyright Journal, 90 PTCJ 2104, 05/22/2015, Copyright 2015 by The Bureau of National Affairs, Inc.

Text Copyright John L. Welch 2015.

TTAB Orders Cancellation of "METRO-POD" Registration for Hotel Services Due to Abandonment

The Board ordered cancellation of a registration for the mark METRO-POD for "providing hotel and restaurant services" on the ground that registrant had abandoned the mark. Respondent contended that his provision of a website for booking hotel and restaurant reservations qualified as use of the mark for the recited services. The Board disagreed. BD Hotels, LLC v. Michael D. Linczyc, Cancellation No. 92055278 (May 29, 2015) [not precedential].

Petitioner made some missteps along the way to victory. It submitted its reply brief six days late, and so the Board granted Respondent's motion to strike the brief. The Board also struck two testimonial affidavits submitted by Petitioner because affidavits are not allowed in lieu of depositions on oral examination unless the parties so stipulate in writing. Here there was no such stipulation and therefore, even though Respondent did not object, the Board refused to consider the affidavits. However, the Board did consider the exhibits attached to the affidavits, which exhibits comprised Internet printouts acceptable under Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1038 (TTAB 2010).

Section 45 of the Lanham Act,  provides that a prima facie case of abandonment is established by proof of nonuse for three consecutive years. To overcome that prima facie case, the mark owner must provide evidence either that it did not "discontinue" use of the mark, or that if such use has been discontinued, the nonuse of the mark was without "an intent not to resume" use.

Respondent maintained that he did provide hotel and restaurant services even though he did not own or operate a "brick and mortar" hotel or restaurant, because he runs the metro-pod.com website which provides information and booking services for a third-party hotels, as well as links to the booking sites for several other travel-related websites. Those services, Respondent argued, fall within the broad category of "providing hotel and restaurant services." In short, according to Respondent, "providing hotel services" is a broad category that does not require actual provision of accommodation services.

The Board was not persuaded. It took judicial notice of the Random House dictionary of "hotel" as "a commercial establishment offering lodging ...," and it concluded that "providing hotel services" means "providing a commercial establishment that offers lodging." Similarly, "restaurant" means "an establishment where meals are served to customers."

There was no dispute that Respondent had not used the METRO-POD mark for a retail establishment for at least three consecutive years. Respondent contended that because "providing hotel and restaurant services" is an acceptable identification of services, the more specific services of "providing and relaying information in connection with reservations and booking for temporary lodging … fall within the large umbra" of the services recited in his registration. Respondent pointed to several registrations that include recitations such as "hotel and lodging services, namely, providing and relaying information and securing payment in connection with reservations and bookings ...." The Board, however, noted that these registrations "are simply examples of other sufficiently accurate and definite identifications of services, and do not support a finding that 'providing hotels and restaurant services,' automatically or necessarily encompasses the services that Respondent actually provides."

The question is not whether "providing hotel and restaurant services" is an acceptable identification of services – it is. The question is whether the record supports a finding that Respondent provides hotel and restaurant services under the commonly understood definitions of those terms. The record does not support such a finding.

And so the Board granted the petition for cancellation.

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TTABlog note: This appears to be a good example of what problems can arise when an individual files a trademark application without advise of counsel.

Text Copyright John L. Welch 2015.

TTAB Test: Is SHAKTI THARA For Musical Performances Confusable with SHAKTI for Compact Discs?

Innertemple Music applied to register the mark SHAKTI THARA for "entertainment services in the nature of live musical performances by a singer of pop music," but the USPTO refused registration, finding the mark likely to cause confusion with the registered mark SHAKTI for "Compact discs, downloadable audio recordings featuring music and which may be accompanied by printed text and images ...." The evidence showed that "shakti" means "cosmic energy as conceived in Hindu thought." Are the goods and services related? Are the marks similar? How do you think this cames out? In re Innertemple Music LLC, Serial No. 85810152 (June 5, 2012) [not precedential].

Shakti Thara is a pseudonym of a singer named Thara Thangavelu, and would likely be perceived as a person's name. "Shakti," on the other hand, is not likely to be perceived as a woman's name, but rather would have "the meaning of energy or power, or have a general significance related to yoga, while others would view it as a coined term." The Board concluded that the differences in connotation outweigh the similarity due to the common term "shakti." In short, the marks are more dissimilar than similar.

As to the relatedness of applicant's services and the registrant's goods, the examining attorney contended that musical artists can be the source of both live musical performances and recordings, as evidence by the websites of various musicians, at which they promote both.

The Board observed that the PTO "makes a distinction between the performances embodied in a compact disc, and the compact disc itself." Consequently, the Board "must regard the cited registration as indicating the source of the physical compact discs and the downloadable audio recordings, as opposed to the source of the performances contained on the compact discs and recordings." The examining attorney did not submit any evidence that entities that provide physical compact discs or recordings for downloading also render musical performances, all under the same mark.

Although there is an "inherent connection" between compact discs and the performances recorded on them, "that does not mean that performing services and compact discs must automatically be treated as related."

The Board concluded that the evidence did not establish a likelihood of confusion, and it therefore reversed the refusal.

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TTABlog note: See In re Arnold, 105 USPQ2d 1953 (TTAB 2013) [precedential] (the mark BLATANCY failed to function as a trademark for audio recordings because it merely identified the featured performer).

Text Copyright John L. Welch 2015.

CAFC Affirms TTAB's "iWatch" Ruling: Applicant Lacked Bona Fide Intent

The U.S. Court of Appeals for the Federal Circuit affirmed the decision of the TTAB (TTABlogged here), sustaining Swatch's opposition to registration of the mark iWatch, in standard character form, for watches, clocks, and related goods, on the ground of lack of bona fide intent. The court ruled that the Board applied the correct legal standard and that substantial evidence supported the Board's finding that Applicant Berger's intent at the time it filed the application at issue "was merely to reserve a right in the mark, and not a bona fide intent to use the mark in commerce." M.Z. Berger & Co. v. Swatch AG, 114 USPQ2d 1892 (Fed. Cir. 2015).

Berger's owner and CEO testified that the company intended to sell only watches under the proposed mark. With regard to watches, the documents submitted by Berger related only to the prosecution of its trademark application. Bayer's testimonial evidence was inconsistent and contradictory, and its long history in the watch business did not include the capacity to produce watches with technological features. The Board concluded that the circumstances as a whole demonstrated a lack of bona fide intent to use the mark iWatch in commerce, as required by Section 1(b).

The CAFC observed that the Trademark Law Revision Act of 1988 (TLRA) amended the Lanham Act to permit the filing of a trademark application prior to the commencement of actual use of the mark, provided that the applicant had a "bona fide intention ... to use [the] mark in commerce" at a later date. Of course, and applicant is required to demonstrate actual use of the mark before a registration will issue.

The CAFC first considered whether lack of bona fide intent is a proper basis for challenging a trademark application. The TTAB has long so ruled, and the court agreed. An opposer is "entitled to rely on any statutory ground which negates appellant's right to the subject registration [.]"

The court then turned to the question of the meaning of "bona fide intention" under Section 1(b). There is no statutory definition of the term, but Section 1(b) states that such intent must be "under circumstances showing the good faith" of the applicant. This reference "suggests that applicant's intent must be demonstrable and more than mere subjective intent." Both the USPTO and the leading treatise on trademark law [McCarthy] have arrived at this same interpretation. The legislative history of the TLRA confirms that the issue of "bona fide intent" must be assessed on an objective basis.

Although "bona fide" is an accepted legal term, it can be read broadly or narrowly, subjectively or objectively, by a court or the Patent and Trademark Office. In connection with this bill, "bona fide" should be read to mean a fair, objective determination of the applicant’s intent based on all the circumstances.

Senate Report at 24 (emphasis added by CAFC).

The CAFC pointed to the definition of "use in commerce" in the Lanham Act: "[T]he bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark." And it noted the statement in the Senate report that the intention of an applicant to use the mark in commerce must be "firm." Congress declined to include a statutory definition of "bona fide" in order to permit flexibility in the operation of the trademark registration system.

[W]e hold that whether an applicant had a "bona fide intent" to use the mark in commerce at the time of the application requires objective evidence of intent. 15 U.S.C. § 1051(b)(1). Although the evidentiary bar is not high, the circumstances must indicate that the applicant’s intent to use the mark was firm and not merely intent to reserve a right in the mark. See id. §1127; see also Senate Report at 24–25. The Board may make such determinations on a case-by-case basis considering the totality of the circumstances

Viewing the evidence as a whole, the CAFC found that substantial evidence supported the Board's decision. The court agreed that Berger's documentary evidence "appears to relate only to the prosecution of the trademark application." With regard to the conflicting testimony, the court deferred to the Board's exercise of discretion in determining the weight and credibility of same.

The Board was within its discretion to disagree with Berger's bottom-line position that it possessed a bona fide intent, given the inability of the Berger witnesses to pull together a consistent story on a number of issues, e.g., would the watch be technological, did actual physical samples exist, were potential customers ever consulted.

Moreover, Berger's owner and CEO (its Rule 30(b)(6) witness) "all but conceded that Berger had not yet made a firm decision to use the mark in commerce at the time of its application."

The court also agreed that Berger's history in the watch industry was not of significance on the issue at hand because "there was no nexus between Berger's general capacity to produce watches and the capacity required to produce a 'smart' watch."

The bar for showing a bona fide intent is not high. But in our view, considering the inconsistent testimony offered by Berger employees and the general lack of documentary support, substantial evidence supports the Board’s conclusion that Berger’s intent at the time of the application was merely to reserve a right in the mark, and not a bona fide intent to use the mark in commerce.

Finally, the Berger contended that the Board applied a more stringent standard for bona fide intent that is required by the Lanham Act of by USPTO rules and procedures. The CAFC disagreed.

Nowhere did the Board state that the applicable standard requires an applicant to have actually promoted, developed, and marketed the mark at the time of the application. Nor did the Board state that it applied such a standard. To the contrary, the Board’s opinion reflects that it reached its conclusions by considering all the relevant facts and circumstances, including those that indicated Berger lacked intent. This is indeed the proper inquiry under the Lanham Act. 15 U.S.C. § 1051(b)(1) (intent to use must be "under circumstances showing the good faith of such person").

Nor was the Board's opinion inconsistent with USPTO practice. The court noted that, although a Section 1(b) application is acceptable based only on a verified statement of bona fide intent to use, the Office has statutory authority to seek further evidence of that intent. In short, the Board did not commit error in its application of the standard for bona fide intent.

And so the CAFC concluded that the Board properly sustained the opposition on the ground that Berger lacked a bona fide intention to use the mark iWatch in commerce at the time if filed its application to register.

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TTABlog notes: An applicant had better have some documentation to support a claim of bona fide intent. Or at least a close nexus between the new product and the old line of products (e.g., see the ROLL-X for x-ray tables case).

The CAFC declined to reach the issue of likelihood of confusion between the mark iWatch and the mark SWATCH. The Board had found no likelihood of confusion. Will Berger file a new application for iWatch?

Text Copyright John L. Welch 2015.

TTAB Test: Is EV500 Merely Descriptive of Electric Vehicle Competitions?

The USPTO refused registration of the mark EV500 under Section 2(e)(1), finding the mark to be merely descriptive of the services of promoting, organizing, and conducting competition events involving electric vehicles. Applicant conceded that EV stands for "electric vehicles," but it argued that "500" has no significance with respect to its services, since electric vehicles are "unlikely candidates for any type of competition going for 500 miles or longer." How do you think this came out? In re Contour Hardening, Inc., Serial No. 85569491 (May 12, 2015) [not precedential].

Examining Attorney Jenny Park pointed to applicant's own use of EV500 in connection with an exhibition (advertised as a race) that it sponsored, in which two vehicles traveled 500 miles on the Indianapolis Motor Speedway. Articles and blog posts showed that the number "500" miles is a benchmark for electric vehicles to travel on one charge. Therefore, the examining attorney contended, EV500 merely indicates that applicant's services will feature a 500-mile race involving electric vehicles.

Applicant argued that, to its knowledge, there has never been a 500-mile competition for electric vehicles, due to their technical limitations in terms of speed, range, and charging time. "[I]f '500' means anything, other than simply being an arbitrary term, it could refer to other features or characteristics of a race, such as 500-volt electric vehicles or 500 laps."

The Board noted that applicant owns a Supplemental Registration for EV500 for closely related services, and applicant's acceptance of that registration constituted an admission that the mark was descriptive at the time of registration.

The Board saw no question that "500" has significance in the vehicle racing industry. "Indy 500" is the most famous race covering 500 miles. The record also showed that "500" represents the "mileage goal" for electric vehicles, and a Danish car builder has achieved it. Several articles discussed future efforts to attain that goal.

In short, there was "ample record evidence to support a finding that a 500 mile race for electric vehicles is possible in the future, and that electric vehicle and battery makers are trying to manufacture electric vehicles that can drive 500 miles on one charge." Applicant's recitation of services is not limited to exclude competitions of 500 miles, and could encompass same (even if there hasn't been one yet).

The Board therefore found the mark to be merely descriptive, and it affirmed the refusal to register.

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TTABlog note: Seems like this is a mark that may be descriptive in the future. Or maybe it's wishfully descriptive? Or lauditory?

Text Copyright John L. Welch 2015.

CAFC Affirms TTAB Entry of Summary Judgment on COLOR WARS Cancellation Petition

The CAFC affirmed the TTAB's decision (here) summarily dismissing pro se Appellant Joel E Beling's petition for cancellation of Respondent Ennis, Inc.'s registration for the mark COLORWORX & Design for printing services. Mr. Beling alleged that respondent's mark was generic or merely descriptive, and its registration obtained by fraud. The CAFC agreed with the Board that Beling failed to produce evidence "sufficient for a reasonable person to find in his favor." Joel L. Beling, dba Supe Characters Pty Ltd, Appeal No. 2015-1157 (June 3, 2015) [not precedential].

When Ennis, Inc. opposed Beling's application to register the mark COLOR WARS in classes 16, 28, and 41, Beling filed a petition to cancel Ennis's registration for its COLORWORX & Design mark. The two proceeding were subsequently consolidated. The parties filed cross-motions for summary judgment in the cancellation proceeding, the Board granting Ennis's motion and denying Beling's motion, finding that Beling had failed to produce evidence to support each element of his fraud claim, and failed to produce any probative evidence of the public perception of Ennis's mark to support the genericness or mere descriptiveness claims. The CAFC reviewed the Board summary judgment rulings de novo.

Fraud: A party claiming fraud must provide clear and convincing evidence that the accused party knowingly made a false, material representation with the intent to deceive the USPTO. Beling alleged that Ennis fraudulently stated that it was not aware of any other party that had superior rights in the COLORWORX mark. Beling pointed to webpages and PTO records showing uses of either COLORWORKS, COLORWORX, or a cross-hair design, as well as to supposed inconsistencies in Ennis's discovery responses.

However, none of Beling's evidence suggested that Ennis knew that a confusingly similar mark was already in use, or that Ennis intended to deceive the PTO. In fact, Ennis's witness disclaimed any such knowledge. As to the inconsistent discovery responses, they were attributable to differences in the questions asked, and in any case were not relevant to Ennis's knowledge or intent.

Genericness or Mere Descriptiveness: Mr. Beling failed to submit any evidence to show that the relevant public would understand Ennis's stylized mark or the literal component of the mark to be generic or merely descriptive. Third-party uses of COLORWORKS, COLORWORX, or a cross-hair design did not demonstrate whether a consumer would recognize them as generic or merely descriptive of printing services. In fact, some of the marks were registered on the Principal Register, suggesting that the PTO did not consider them to be generic or merely descriptive.

Estoppel Sanction: Finally, Beling maintained that the Board had abused its discretion when it denied his motion to exclude some of Ennis's evidence as an estoppel sanction for failure to produce the evidence in response to discovery requests. However, the only such evidence not publicly available was a certain affidavit, which affidavit was not materially inconsistent with the testimony given by the same person. And so the CAFC ruled that the Board did not abuse its discretion in denying the motion to exclude.

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TTABlog comment: So the opposition part of the case continues. Do you think the marks are confusingly similar? How are Ennis's printing services related to class 28 games and toys, or class 42 educational and entertainment services?

Text Copyright John L. Welch 2015.

TTAB Test: Is CASTFLOOR Merely Descriptive of Liquid-Based Flooring Materials?

The USPTO issued a Section 2(e)(1) refusal to register the mark CASTFLOOR, deeming the mark merely descriptive of "cement and resin based flooring materials used in buildings; liquid based flooring materials used in buildings, namely, epoxy flooring," in International Class 19. The examining attorney relied on dictionary definitions of "cast" and "floor," and on applicant's webpage, which stated that after "pouring and applying" its product, "simply trowel finishing." How do you think this came out? In re X-Calibur Construction Chemisty Inc., Serial No. 86072819 (May 29, 2015) [not precedential].

The examining attorney asserted that applicant's materials are "cast" or poured as a liquid, into a defined area, where they harden to create a "floor." The Board observed, however, that the PTO's definition of "cast" calls for "pouring molten material into a mold." Nothing in applicant's description of its goods refers to use of a mold. And the use of troweling to shape the floor appears to be inconsistent with a casting process.

The examining attorney further relied on a number of third-party websites in contending that applicant's goods are used to create what is known in the industry as "cast floors." However, those webpages originated in foreign countries (including Holland, the UAE, Ireland, and Lithuania). Although written in English (sometimes nonidiomatic English), they were not "good evidence of the way in which the expression 'cast floor' would be understood by customers in the United States." In any case, the third-party websites were "too equivocal" to persuade the Board that "cast" describes the method used with applicant's materials.

And so the Board concluded that the examining attorney had failed to make a prima facie case, and it reversed the refusal to register.

Judge Wolfson concurred, noting that the nature of the goods makes it unlikely that US consumers will purchase the goods from vendors outside this country. She agreed that the doubt created by the record evidence must be resolved in favor of applicant.

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TTABlog note: Wouldn't the "confined area" into which applicant's materials are poured be considered a "mold"?

Text Copyright John L. Welch 2015.