ALI Webinar Dec 8th: "Trademarks, Trade Dress, and False Advertising 2015: Recent Developments for Business and IP Lawyers"

Yours truly, aka the TTABlogger, will team up again with Prof. Kenneth B. Germain in an American Law Institute (ALI) Webinar entitled "Trademarks, Trade Dress and False Advertising 2015: Recent Developments for Business and IP Lawyers." When? Tuesday, December 8th, 1:00 - 2:30 PM, Eastern Standard Time. Registration here.

Prof. Ken Germain

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

Topics include:

• "tacking" - backward, forward; judge v. jury (Hana Financial, Inc. v. Hana Bank et al, 135 S.Ct. 907 (2015))
• possibly preclusive effect of TTAB decisions in later court cases (B&B Hardware v. Hargis Industries, Inc.,135 S.Ct. 1293 (2015))
• recent federal registration decisions (proof of lack-of-bona fide intent; relevance of third-party uses and registrations)
• likelihood of confusion, distinctiveness of marks, sponsored links
• trade dress/product design, especially functionality and major differences among types of IP
• geographic scope of injunctive relief
• damages and attorney fee awards under 35(a) of the Lanham Act
• assessment of "expenses" in ex parte de novo appeals to district courts
• highly descriptive v generic; relevance of acquired distinctiveness
• relevance of earlier PTO actions in later infringement cases
• requirement of ‘use’ of a mark in commerce prior to trademark registration

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TTAB Posts December 2015 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled five (V) oral hearings for the month of December, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. Briefs and other papers for these cases may be found at TTABVUE via the links provided.



December 3, 2015 - 2 PM: In re The American Waffle Company LLC, Serial No. 85768317 [Section 2(e)(2) refusal of THE AMERICAN WAFFLE COMPANY on the ground that the marks is primarily geographically descriptive of "Pancakes; Waffles" [WAFFLE COMPANY disclaimed]]. 

December 3, 2015 - 2:40 PM: In re The Hyman Companies, Inc., Serial No. 85483397 [Section 2(a) refusal of the mark DIAMONDESS for "jewelry primarily composed of simulated diamonds and gemstones" on the ground of deceptiveness].

December 8, 2015 - 2 PM: Royal Crown Company, Inc. and Dr. Pepper/Seven Up, Inc. v. The Coca-Cola Company, Oppositions Nos. 91178927 et al. [Consolidation of seven oppositions to Coca-Cola's attempted registration of various ZERO-containing for beverages, without a disclaimer of the term "zero," on the ground that the word is generic or merely descriptive of no-calories beverages, and Coca-Cola's opposition to registration of PURE ZERO and DIET-RITE PURE ZERO for soft drinks, on the ground of likelihood of confusion with Coca-Cola's various ZERO-formative marks].

December 10, 2015 - 10 AM: In re William D. Hober, Inc., Serial No. 85643266 [Refusals to register the product configuration shown below, for "Gun parts, namely, bottom metal for custom guns that incorporates a trigger guard shape," on the alternative grounds of functionality under Section 2(e)(5) and lack of acquired distinctiveness. "The mark consists of a three-dimensional product design of a distinctive trigger guard profile shown in solid lines."]

December 17, 2015 - 2 PM: In re Epic Naturals, LLC, Serial Nos. 85762427 and 85762380 [Refusals to register the marks THE EPIC SEED in standard character and design form, for "yogurt, strained yogurt, and probiotic yogurt-based beverages not for medical purposes" on the ground of likelihood of confusion with the registered mark EPIC for cheese, and the ground of failure to disclaim the word SEED].

Read comments and post your comment here.

TTABlog note: Any predictions? I think I see at least one WYHA?  here.

Text Copyright John L. Welch 2015.

TTAB Test: Which One of These Three Section 2(d) Refusals Was Reversed?

Because tomorrow is a holiday [Thanksgiving], dear reader, we will have a shortened TTAB Test. Only three cases this time. One of these three Section 2(d) refusals was reversed. Your mission, if you choose to accept it, is to figure out which one. [The answer will be found in the first comment].


In re Colorbar Cosmetics Private Limited, Serial No. 86323815 (November 20, 2015) [not precedential]. [Section 2(d) refusal of COLORBAR USA for a wide range of cosmetics [USA disclaimed], such as bath oils, beauty creams, and nail polish (but not goods that are specifically for hair care), in view of the registered marks THE COLOR BAR for "Hairdressing services and counseling namely, offering advise [sic] regarding hair color in salons" and CB COLORBAR THE SALON (Stylized), shown below, for "Beauty salon services; Beauty salons; Hair color salon services; Hair salon services; Hair salon services, namely, hair cutting, styling, coloring, and hair extension services."

In re Malkon, Serial No. 86572090 (November 20, 2015) [not precedential]. [Section 2(d) refusal of BAGWAGZZZ for "Beds for household pets; Portable beds for pets," in view of the registered mark THE WAG BAG for "portable pet beds" [BAG disclaimed]].

In re White Birch Vineyards, LLC, Serial No. 86218002 (November 4, 2015) [not precedential]. [Section 2(d) refusal of WHITE BIRCH for wine in view of the identical mark WHITE BIRCH registered for vodka [BIRCH disclaimed].

Read comments and post your comment here.

TTABlog comment: Well, how did you do?

Text Copyright John L. Welch 2015.

Applying B&B Hardware, District Court Gives Preclusive Effect to TTAB Priority Finding

Applying collateral estoppel (i.e., issue preclusion) based on a prior TTAB decision [TTABlogged here], the United States District Court for the District of Maryland granted Defendant PNC's motion to dismiss Plaintiff's Ashe's complaint for trademark infringement. The Board had granted PNC's motion for summary judgment in an opposition brought by Ashe against PNC's application to register the mark SPENDOLOGY for an online financial management tool, ruling that PNC and not Ashe had priority of use. The district court applied the Supreme Court's holding in B&B Hardware v. Hargis that "a court should give preclusive effect to [Trademark Board] decisions if the ordinary elements of issue preclusion are met." Ashe v. PNC Financial Services Group, Inc., Case No.: PWG-15-144 (D. Md. November 17, 2015).

The district court found that the determination of priority of use by the TTAB in an opposition is the same as the determination of priority of use for purposes of an infringement claim. Furthermore, that issue was resolved in the TTAB proceeding, the issue was critical and necessary to the TTAB's judgment, the judgment was final, and Ash has a full and fair opportunity to litigate the issue before the Board. Thus all five requirements for issue preclusion were met.

Because priority is a necessary element of Ashe's infringement claim, the Board granted PNC's motion to dismiss.

Read comments and post your comment here.

TTABlog comment: Ownership is another issue that seems to be ripe for the application of issue preclusion. So even if issue preclusion is unlikely to result from a TTAB ruling on the issues of likelihood of confusion because the Board does not consider "marketplace usage," one should be aware that the Board's determination of ownership and priority may well have preclusive effect. Consequently, a party should be give those issues its full attention and maximum effort.

Text Copyright John L. Welch 2015.

SUGARLANDS DISTILLING COMPANY Not Geographically Descriptive of Moonshine, But Confusable with SUGARLAND CELLARS for Wine

The Board reversed a Section 2(e)(2) refusal of the mark SUGARLANDS DISTILLING COMPANY, ruling that the USPTO failed to prove the mark to be primarily geographically descriptive of "craft moonshine beverages" [DISTILLING COMPANY disclaimed]. But the Board affirmed a Section 2(d) refusal in view of the registered mark SUGARLAND CELLARS for wine [CELLARS disclaimed]. In re Sugarlands Distilling Company, LLC, Serial No. 85818277 (November 20, 2015) [not precedential].

Section 2(e)(2): To support a refusal under this section, the USPTO must first show that "the mark's primary significance is a generally known geographic location." The Examining Attorney contended that Sugarlands is a valley in the north-central Great Smoky Mountains, the location of a national park that features the "Sugarlands Visitor Center." Relying on a single Wikipedia entry (here), the Examining Attorney asserted that "the geographic location SUGARLANDS, while remote and obscure enough to conduct moonshining during the turn of the century, is not a location that is now so remote and obscure that consumers wouldn’t recognize it as a geographic location."

The Board was not impressed by the record evidence. "While the Wikipedia excerpt has probative value, without other evidence to support the proposition that consumers have been exposed to this term and are aware of its geographic significance, we cannot find that it is a generally known geographic location." The Board distinguished this case from In re New Merced, 85 USPQ2d 1614 TTAB 2007) [YOSEMITE BEER], where entries from multiple websites and reference works established that "Yosemite" is a well-known geographic region that is clearly not obscure or remote.

Section 2(d): The Board found that Applicant’s "craft moonshine beverages" are sufficiently related to Registrant’s "wine," that when sold under a "very similar mark," confusion is likely. The Board noted that "moonshine is defined as "smuggled or illicitly distilled liquor, especially corn liquor as illicitly distilled chiefly in rural areas of the southern U.S." and "intoxicating liquor; esp: illegally distilled corn whiskey." The Board presumed that applicant's goods are neither smuggled nor illicit, and it interpreted the identification of goods to mean "whiskey, including corn whiskey that is made from 80 percent corn mash."

The Board pointed out that there is no per se rule that all alcoholic beverages are related, but it noted that the CAFC and the Board "have repeatedly held various alcoholic beverages, including whiskey and wine to be related." The record contained evidence that several wineries also distill and sell various spirits, including whiskey.

The Internet evidence shows that there are a number of combination wineries and distilleries, and/or companies that produce both wine and spirits, including whiskey, and that these companies are located throughout the country, including New York, Iowa, Massachusetts and California. This evidence is sufficient for us to find that the goods are related.

Moreover the presumed trade channels for the involved goods overlap: liquor stores, bars and restaurants, and the alcoholic beverages sections of retail outlets, as well as onsite wineries/distilleries. Furthermore, the goods would be offered to the same general consumers.

As to the mark, the words SUGARLANDS and SUGARLAND dominate, since the additional wording in each mark is descriptive and has been disclaimed.

Applicant argued that confusion is impossible because the involved goods "cannot even be lawfully sold to the general public under the same roof" and "they are branded under distinguishable marks that explicitly say the products come from fundamentally different types of enterprises." There was no evidence,  however, to support the first point, and in any case the presumed channels of trade include liquor stores. As to the second point, the evidence included examples of wineries "being referenced as producers of distilled spirits or include in their name both words winery and distillery."

Finally, the Board found that the evidence did not show the term SUGARLANDS to be a weak formative. " While it is possible there may be some consumers in the United States that have heard of the SUGARLANDS and its connection with "moonshine," it could still be connected by
those consumers with Registrant’s mark SUGARLAND also located in Tennessee.

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

Read comments and post your comment here.

TTABlog comment: Compare the record evidence here regarding the relatedness of whiskey and wine with the evidence in the REUBEN'S BREWS case (here), including evidence that there are more than 10,5000 wineries and breweries in the United States, only a few of which produce both beer and wine at the same location, leading that Applicant to argue that the overlap was statistically insignificant.

Text Copyright John L. Welch 2015.

WYHA? TTAB Finds "THE KITCHEN" Confusable with "DA KITCHEN" for Restaurant Services

The USPTO refused to register the mark THE KITCHEN for restaurant services, finding it likely to cause confusion with the registered mark DA KITCHEN for "restaurant services; carry out restaurant services; catering services" [KITCHEN disclaimed]. Examining Attorney John S. Miranda maintained that "DA" is understood as a slang term for “the," and with the goods being in part identical, end of story. Would you have appealed? In re The Kitchen Cafe, LLC, Serial No. 85969508 (November 17, 2015) [not precedential].

Applicant argued that 1) “DA” has other meanings; 2) "DA only means "the" if translated from Hawaiian pidgin or Hawaiian slang, which is not subject to the doctrine of foreign equivalents; 3) in any event, the term "DA" changes the overall commercial impression of the mark; 4) there is no evidence that consumers are likely to pronounce the marks identically; 5) the correct analysis is to compare KITCHEN (without “THE”) and DA KITCHEN; and 6) Registrant has acknowledged that the cited mark is entitled to a narrow scope of protection, and that the mark in the cited registration would not be confused with the term "THE KITCHEN."

The Examining Attorney submitted numerous examples of use of the term "Da" instead of "The," including several references to the Chicago Bears as "Da Bears." In fact Chicagoans seem to have particularly embraced the word "Da."

How to Fake a Chicago Accent: Emphasize “D” sounds at the start of words and replace “th-“ sounds with “D”s. For example, “I was supposed to see the Bears play but I got stuck in traffic on the Dan Ryan” becomes: “I was supposed to see da Bears play but I got stuck in traffic on da Dan Ryan.” If talking fast try to blend in the “th” with a “d” sound. April 24, 2015 Denial of Request for Reconsideration, at 57-58; Wikihow.com

The Board concluded that the mark DA KITCHEN "gives the clear commercial impression of 'the kitchen.' It also has a very similar sound to the common pronunciation of 'the,' with a soft 'e.'"

While true that the registrant had argued that DA KITCHEN is not confusable with THE KITCHEN when it obtained its registration, that registration for THE KITCHEN had been abandoned at the time, and therefore this old argument merely adds "shade and tone" to the total picture here.

Finally, applicant argued that the cited mark is weak, pointing to registrant's disclaimer of KITCHEN, as well as to sixteen third-party registrations for marks with the word KITCHEN disclaimed. In addition, applicant seeks registration under Section 2(f), thereby acknowledging descriptiveness. However, there was no evidence of commercial weakness of the cited mark. Moreover, applicant's mark THE KITCHEN is more similar to DA KITCHEN than to any of the cited third-party marks.

The Board therefore found that the similarities in meaning and commercial impression in the involved marks outweigh the differences in sight and sound, and it held that confusion is likely.

Read comments and post your comment here.

TTABlog comment: If only Chicagoans are likely to be confused by these two marks (and maybe a few Hawaiians), would that be enough for a Section 2(d) bar? BTW, how do you blend the "th" sound with the "d" sound?

Text Copyright John L. Welch 2015.

WYHA? TTAB Finds "SOL-R" Merely Descriptive of Solar Panel Brackets

The USPTO issued a Section 2(e)(1) refusal of the mark SOL-R, finding it to be merely descriptive of constructions materials, including "metal cantilevered brackets for solar panels" and "roofing incorporation solar cells." Examining Attorney Rebecca A. Smith perceptively maintained that SOL-R is a novel spelling of SOLAR. Applicant SFS contended that consumers viewing the mark alone would not immediately know that the goods are used with solar panel installations. Would you have appealed? In re SFS Intec Holding AG, Serial No. 79109409 (November 16, 2015) [not precedential].

As we all know, the determination of mere descriptiveness is not a guessing game. [This argument is high on the top ten list of losing TTAB arguments - ed.]. A mark must be considered in the context of the goods at issue. Here, applicant's goods specifically refer to solar installations and panels.

Applicant also argued that SOL-R does not, by itself, convey the word "solar," and even if "SOL-R indicates some relationship to 'solar' or even the sun, there is nothing about the mark or the identification of goods that definitely indicates the products' function, characteristics, or use with specificity." The Board noted that applicant's use of the term "solar" through its identification of goods belied that contention.

The Board found that SOL-R is an alternative spelling of "solar" and would be perceived as such. A slight misspelling of a merely descriptive word generally does not transform the word into an inherently distinctive trademark. As the Supreme Court has noted, "[b]ad orthography has not yet become so rare or so easily detected as to make a word the arbitrary sign or something else than its conventional meaning."

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Well, would you have?

Text Copyright John L. Welch 2015.

Fame of TEMPUR-PEDIC Design Mark Yields Cancellation of BODIPEDIC & Design for Mattresses

The Board granted a petition for cancellation of a registration for the mark BODIPEDIC & Design for "mattress toppers, pillows, mattresses," finding a likelihood of confusion with the mark TEMPUR-PEDIC & Design for mattresses, pillows, and mattress toppers.  Petitioner's "impressive" sales and advertising figures led the Board to find the TEMPUR-PEDIC mark to be famous. Moreover, the goods are in part identical, the channels overlap, and actual confusion was established. Dan Foam ApS v. Innocor, Inc. , Cancellation No. 92054201 (November 13, 2015) [not precedential].

Petitioner got out of the wrong side of the bed when it failed to get its registration into the record. Nonetheless, it proved priority of use of its mark, and furthermore proved that its mark is famous for Section 2(d) purposes. Of course, famous marks are entitled to broad protection.

The goods are, in part, identical and are sold in overlapping trade channels to the same ordinary consumers. These consumers include purchasers who would exercise only ordinary care. And in any case, even sophisticated consumers are not immune to trademark confusion.

As to the marks, the evidence showed that nearly 50 companies use the formative "-pedic" in connection with mattresses, pillows, and related goods, which evidence "strongly suggests that many competitors in the mattress business use the '-pedic' suffix to imply that their products are "orthopedic," that is, beneficial in preventing and correcting aches and pains associated with bones, joints and muscles such that sleeping on the branded mattresses may avoid or alleviate bodily pain." In sum, the Board found the "-pedic" suffix to be weak.

However, evidence of third-party registration and use did not persuade the Board that a "reclining figure" is likewise "so weak that purchasers will tend to discount it and look to other features when considering the overall commercial impact of Petitioner's mark." Although reclining figures are suggestive of bedding products, none submitted by respondent were drawn with the detail of petitioner's mark and only two were "formatted like Petitioner’s mark, that is, with a recognizable reclining human figure drawn so as to appear to be laying on its side on top of a mattress."

The Board noted that the marks must be considered in their entireties; moreover, when the involved goods are identical a lesser degree of similarity in the marks is necessary to support a finding of likely confusion. It concluded that the marks are more similar than dissimilar.

Here, the word element of each mark is four syllables long, ending in “-pedic.” We have already noted that the suffix is weak, but it lends a similar visual and aural characteristic to each mark, and is emphasized (by bold style lettering) in Respondent’s mark, enhancing the likelihood that consumers will recollect it. The cadence of each mark, when spoken, will be the same. The designs of each mark are also similar. Both figures appear to be unclothed, and are lying on their side on top of the word portion of the mark as if the words were a mattress. Petitioner’s figure is clearly feminine and Respondent’s figure suggests feminine curves rather than masculine ones.

Respondent pointed to its ownership of a registration for the mark BODIPEDIC, invoking the Morehouse defense, and it also noted that the word marks TEMPUR-PEDIC and BODIPEDIC have co-existed on the Principal Register for more than five years. The Board pointed out, however, that the registered mark BODIPEDIC is not legally the same as the design mark challenged here, and so the Morehouse defense failed once again. As to the word mark registrations, even if the subject composite marks are dominated by the word portions, that does not mean that the entire word + design marks are not confusingly similar.

Finally, the Board found petitioner's evidence of actual confusion to be highly probative, even though it was not clear that many of the confused customers were referring to the word marks as opposed to the design marks.

Balancing the relevant du Pont factors, the Board found confusion likely and it granted the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: I think this one could have gone either way.

Text Copyright John L. Welch 2015.

WYHA? "CALIBURGER" Merely Descriptive of Restaurant Services, Says TTAB

The Board affirmed a Section 2(e)(1) refusal to register the mark CALIBURGER, deeming it merely descriptive of restaurant services. Examining Attorney Jennifer D. Richardson submitted evidence showing that CALI is a common abbreviation for California, that a "California burger" is a particular type of hamburger (usually topped with lettuce and tomato), and that applicant's restaurants feature California burgers. Would you have appealed? In re Caliburger, Serial No. 85810919 (November 12, 2015) [not precedential].

Applicant did not dispute that “Cali” means California, or that a “California-style burger” is a type of burger. It contended, however, that the preferred term used by restaurants is “California-style burger” and not “California burger,"' and anyway “Cali” is not commonly known as “California” in connection with a type of burger. Additionally, Applicant argued that its CALIBURGER burgers are not featured food items at its restaurants and that the term “Cali” in its mark suggests a “California lifestyle” and not a California-style burger.

The Board did not award applicant any style points for that last argument. It observed that in some contexts, "Cali" may bring to mind a California life style, but here Cali is followed by the word burger. "In the context of restaurants selling California burgers, the mark as a whole will
immediately be perceived as an abbreviation for a 'California burger,' and will not impart the connotation of a 'California lifestyle.'"

Moreover, the evidence showed that applicant does indeed feature California burgers at its restaurants. Finally, evidence of prior registration of a few "CALI"-formative marks was unpersuasive, the Board once again observing that each case must be decided on its own factual record.

Finding that CALIBURGER immediately informs the consumer as to a characteristic or feature of applicant's services, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Well, would you have appealed? FWIW: I grew up in Chicago and Champaign-Urbana, where I learned to love Illiburgers: featuring ketchup, mustard, and raw onion.

Text Copyright John L. Welch 2015.

TTAB Test: Is "LEFT NUT BREWING COMPANY" Scandalous for Beer?

Here we go again! The USPTO refused registration of the mark LEFT NUT BREWING COMPANY for "beers" [BREWING COMPANY disclaimed], finding the mark to be scandalous and immoral under Section 2(a). The Examining Attorney maintained that "left nut" is a vulgar reference to the left testicle. Applicant contended that the term has a number of non-vulgar meanings, that similar marks have previously been registered, and that such anatomical references are not per se vulgar. How do you think this came out? In re Left Nut Brewing Company, Inc., Serial No. 85935569 (November 13, 2015) [not precedential].

Because of the disclaimer of the term BREWING COMPANY, the Board focused on applicant's LEFT NUT. The Examining Attorney submitted definitions of "nut," including several that labeled the word "vulgar' when used to refer to a testicle. Because the term "left nut" does not appear in standard dictionaries, she submitted several definitions from the Urban Dictionary, including this familiar one: "a part of one’s anatomy that one would sacrifice to experience something exceptional." And the examining attorney ferreted out a number of Internet articles that use the term to refer to the left testicle.

The Board observed that evidence from both the Examining Attorney and Applicant shows that "'left nut' has several different meanings and is not always vulgar, even when sometimes referring to a testicle."

The Urban Dictionary definition of “left nut” submitted by the Examining Attorney shows that the term has a number of meanings. “Left nut” can, of course, refer to the left testicle. It also can be a figure of speech used to describe the lengths to which someone might go to attain something of great value. It can refer to a passenger’s position in an automobile, i.e., behind the driver. And it can refer to a member of the “political left” or a “left wing screwball.” Only the first of these meanings is arguably vulgar and, therefore, immoral or scandalous under Section 2(a).

Similarly, the Internet excerpts submitted by the Examining Attorney present a mixed picture of the vulgarity of the term “left nut.” In one excerpt, former U.S. Senator Alan Simpson tells a reporter to “Grab Your Left Nut For Luck.” In four of the excerpts, the term is used as a figure of speech for something of great value. In two excerpts, the term “left nut” is used in a strictly anatomical or medical sense to refer to the left testicle. In only three of the excerpts, the onion.com article, the lyrics by Eminem, and the someecard.com card, is the term used in what could be considered a primarily vulgar form.

The Board also noted four existing registrations for marks the include the word "nuts" to show that anatomical references are not per se vulgar under Section 2(a).

In view of the the mixed record of vulgar and non-vulgar meanings [mixed nuts? - ed.], the Board ruled that the evidence failed to establish that LEFT NUT is vulgar. LEFT NUT has even been use "by senators and web-authors with no evidence of offense or disapproval" and the PTO has registered similarly-suggestive "nut" marks.

The Board therefore found that LEFT NUT in applicant's mark LEFT NUT BREWING COMPANY is not vulgar and thus not immoral or scandalous under Section 2(a) And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlog comment: In view of this decision and the NUT SACK DOUBLE BROWN ALE ruling of two weeks ago, are we about to see a flood of applications for anatomically-related marks for beverages? Let's hope not.

Text Copyright John L. Welch 2015.

TTAB Test: Is PREGNANCY TEXT Merely Descriptive of Simulated Pregnancy Messages?

The USPTO issued a Section 2(e)(1) refusal of the mark PREGNANCY TEXT, finding it to be merely descriptive of "Education and entertainment services, namely, providing audio, video, and prose presentations featuring a simulated pregnancy experience in mobile wireless form in both SMS and MMS formats." The Examining Attorney maintained that the mark immediately informs consumers that applicant sends text messages regarding pregnancy. Applicant argued it mark comprises a double entendre or pun (think "pregnancy test"), and that its services provide "simulated pregnancy experience" in mobile form, that show teens that "becoming parents can change their lives." [Tell me about it - ed.]. How do you think this came out? In re Do Something!, Inc., Serial No. 85696594 (October 29, 2015) [not precedential].

Applicant pointed out that its services are not a "pregnancy test" since they do not determine if anyone is pregnant. It contended that consumers will readily associate PREGNANCY TEXT with the extremely common expression "pregnancy test," and the latter term is at most suggestive of its services. In short, according to applicant, PREGNANCY TEXT "creates an incongruous twist of the actual meaning of 'Pregnancy Test.'"

The Board, however, agreed with Examining Attorney Shaila Lewis that there is no double entendre here because the terms "Pregnancy Text" and "Pregnancy Test" are distinct phrases that have entirely different meanings. "To be a double entendre, the actual words in the mark PREGNANCY TEXT should have an alternate meaning and ... that meaning must be readily apparent to purchasers from the mark itself." Here, PREGNANCY TEXT "means exactly what it says, namely, a text message about pregnancy-related matters, including new born babies."

Applicant pointed out that its services concern "phone babies," not real babies. The Board grasped the difference, but pointed out that both simulated pregnancy and real pregnancy "deal with the subject of 'pregnancy' and are therefore appropriately describe by the word 'pregnancy' in the term PREGNANCY TEXT."

In sum, customers would understand that PREGNANCY TEXT describes the purpose and/or a feature of the services, namely, "that text messages are sent that relate to the subject of pregnancy."

The Board therefore affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Well, what do you think?

Note the Board's discussion of applicant's citation to a non-precedential TTAB decision. You can do it, but it is not encouraged. Non-precedential decisions are obviously not binding on the Board and the Board will generally not discuss them. [Too many such citations may just annoy the Board, which is something you want to avoid].

Text Copyright John L. Welch 2015.

Recommended Reading: John L. Brennan, "Determining Trademark Standing in the Wake of Lexmark"

John L. Brennan, J.D. candidate at Notre Dame Law School, reviews the Supreme Court's Lexmark decision and considers whether that ruling extends to trademark infringement cases, in his article, "Determining Trademark Standing in the Wake of Lexmark," 90 Notre Dame L. Rev. 1691 (2014).

Although the Court’s decision in Lexmark has resolved the debate over the issue of  standing for false advertising claims, it remains unclear whether the Court’s holding also extends to trademark infringement suits brought under section 43(a). The Court did not explicitly address this question in its opinion, and district courts thus far have differed in their interpretations of the decision’s scope. This Note addresses that ambiguity and aims to resolve it.
* * *
It is not difficult to understand that modern trademark law must change. The myriad available stories of attenuated yet successful theories of harm, along with the insightful criticisms offered by scholars, depict an area of law that has expanded far beyond its proper reach. Lexmark provides an opportunity for courts to institute meaningful change in trademark law. Its strict standing requirement, including the necessary showing of proximate cause, enables courts to seriously narrow the scope of trademark protection.

Read comments and post your comment here.

Text Copyright John L. Welch 2015.

Recommended Reading: McCarthy and Roumiantseva, "Divert All Trademark Appeals to the Federal Circuit? We Think Not"

Professor J. Thomas McCarthy and Dina Roumiantseva consider the wisdom of having the CAFC handle all appeals in trademark cases in their recent Trademark Reporter Commentary entitled "Divert All Trademark Appeals to the Federal Circuit? We Think Not," 105 TMR 1275 (September-October 2015).

With some regularity over the years, a proposal is made to change the Lanham Act so that appeals in all Lanham Act trademark and false advertising cases from district courts across the United States will be diverted from the regional circuit courts of appeal to the Court of Appeals for the Federal Circuit. We think it is time to discuss this proposal head on and hopefully to convince the reader that this diversion is not a good idea and should never be implemented. Advocates of this proposal claim that trademark law would benefit from the consistency that a single appeals court could provide and that the Federal Circuit has exceptional expertise in trademark law. We believe, however, that trademark law does not suffer from the kind of circuit conflict that led to the channeling of all patent appeals to the Federal Circuit in 1982. Moreover, our review of case law suggests that some regional circuits have a comparable or greater experience with trademark law. We argue that no change in the present system of trademark appeals is needed.

Read comments and post your comment here.

TTABlog notes:  I thank The Trademark Reporter for granting permission to provide a link to this article, which is Copyright © 2015 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 105 TMR 1275 (2015).

Text Copyright John L. Welch 2015.

Customer Sophistication For Expert Witness Services Yields Section 2(d) Reversal

The Board reversed a Section 2(d) refusal to register the mark shown below left, for "expert witness services in legal matters in the field of design of computer hardware, integrated circuits, communications hardware and software and computer networks for others," finding it not likely to cause confusion with the registered mark shown below left, for "legal services." Even assuming an overlap in customers, those customers would be careful and sophisticated, and able to distinguish the marks. In re Integrated Embedded dba Barr Group, Serial No. 86141386 (November 5, 2015) [not precedential].

The Examining Attorney submitted evidence from third-party websites showing that law firms may offer both legal services and expert witness services. The Board observed, however, that consumers of expert witness services are attorneys who desire to use those services in the preparation and presentation of their cases. Moreover, applicant's services are of a very specific nature, and the evidence did not show that those specialized services are offered by law firms. In fact, the third-party law firm webpages indicated that law firms that provide expert witness services focus those services on their areas of their legal expertise, not on technical expertise regarding computers.

And even if there were an overlap in the involved services, the only likely purchasers of the involved services would be attorneys who might need an expert witness in applicant’s field and might also have a need for legal services (for example, seeking co-counsel or assistance in an unfamiliar area of practice). "This one common class of consumers must be considered to be careful and sophisticated purchasers, who would pay attention to trademarks and notice differences between them."

As to the marks, applicant's mark "falls in the grey region between pure design marks which cannot be vocalized and word marks which are clearly intended to be." Therefore, the Board did not accept the Examining Attorney's view that the marks are "nearly identical" in sound, meaning, and commercial impression. The marks are obviously different in appearance, and this difference "causes them to have somewhat different commercial impressions." In view of the care with which the involved services will be chosen, the Board found those differences to be sufficient to distinguish the marks.

And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlog comment: After this victory, applicant may be humming The Bee Gees, "Stayin Alive."

Text Copyright John L. Welch 2015.

TTABlog Celebrates 11th Anniversary

Yesterday was the 11th anniversary of the birth of The TTABlog. This is the 3,264th post. That averages out to nearly 300 per year, but who's counting? Thanks for reading and commenting!

Read comments and post your comment here.

Text Copyright John L. Welch 2015.

"NAUTIGIRL & Design" Not Confusable With or Dilutive of NAUTICA, Says TTAB

The Board dismissed a petition for cancellation of a registration for the mark NAUTIGIRL & Design shown immediately below, for "tote bags for boating supplies," "mugs and beverage glassware," and "playing cards," finding the mark not likely to cause confusion with, and not likely to dilute, the registered mark NAUTICA and variations, for bags, glassware, and clothing. Nautica Apparel, Inc. v. Christine P. Palmerton d/b/a Par Yacht Charters, LLC, Cancellation No. 92056754 (October 21, 2015) [not precedential].

Likelihood of Confusion: The Board found the marks to be "markedly different." Although the word portion of a composite word-and-design mark is usually considered the dominant portion, that is not always the case. A highly distinctive design like that of respondent's mark can be the dominant portion.

Moreover, the Board found the marks different in sound. The "Naughti" in respondent's mark would be pronounced as "naughty;" consumers are pushed to that pronunciation by the presence of the word "naughty" in the mark. Petitioner Nautica's mark is more likely to be pronounced with a short "i" sound, as in "nautical." "Ordinarily, such a minor distinction in the pronunciation of a vowel would be inconsequential, except that in this case, it affects the connotations of the marks." In respondent's mark, the prefix NAUTI is a "fun play on words," bearing both the nautical connotation and the "naughty" connotation.

Petitioner Nautica maintained that NAUTICA refers to things nautical and it is advertised and promoted as such. NAUTICA is a lifestyle brand that "extends across a broad range of consumer products used by people in their normal day-to-day lives." "[T]he customer is asked to live a NAUTICA lifestyle, so they smell like NAUTICA, wear NAUTICA, sleep in NAUTICA, use NAUTICA in cooking, in every aspect of their lives" [Makes me rather NAUSEOUS - ed.] Respondent contended that this proceeding "is an attempt by Petitioner to secure a monopoly over the generic prefix "NAUT" and the entire nautical theme." As the Board observed regarding Nautica's position: "[i]n effect, it covers the waterfront."

The Board pointed out that Petitioner violated the anti-dissection rule by focusing on the shared  prefix NAUTI. Respondent's mark, taken in its entirety, "creates a wholly different commercial impression from Petitioner's marks." In sum, the marks are dissimilar as to appearance, sound, connotation, and commercial impression.

Petitioner argued that its NAUTICA marks are famous, but the Board observed that even it assumed fame for Section 2(d) purposes, that does not prove likelihood of confusion. And even if the Board assumed that Respondent's mark called to mind one of Petitioner's NAUTICA marks, "there is no reason to believe that the public would, in consequence, attribute Respondent's products to Petitioner."

Dilution: Nautica's evidence indicated an 82 to 90% brand awareness among fashion consumers, but the evidence did not allow the Board to evaluate the recognition of the mark by the general consuming public. While the mark may have achieved some level of fame for Section 2(d) purposes, it was not shown that the mark is "widely recognized by the general consuming public of the United States as a designation of source," the standard stated in the dilution statute. Niche fame is not enough. Nautica did not establish that its mark is a "household name" and therefore did not carry its burden to prove dilution by blurring.

Read comments and post your comment here.

TTABlog comment: Hat tip to Eve Brown and the Suffolk University Law School IP Clinic for this victory. Also note that this may be the first TTAB opinion penned by new TTAB judge David Heasley.

Text Copyright John L. Welch 2015.

TTAB Test: Is "MONTERO & Design" Confusable With "MONTECRISTO" for Cigars?

In this Section 2(d) opposition, Altadis claimed that the mark shown immediately below, for "cigar boxes, cigars," is likely to cause confusion with its famous mark MONTECRISTO, and its fleur de lis design mark and triangular crossed-swords designs marks (shown next below), all for cigars. What do you think was the outcome? Altadis U.S.A. Inc. v. Global Services 1939 LLC, Opposition No. 91213902 (November 3, 2015) [not precedential].

Applicant conceded that the mark MONTECRISTO is famous in the tobacco/cigar industry. Opposer Altadis failed to prove that its design marks are famous, but the Board deemed them to be strong marks entitled to a broad scope of protection.

The Board found that applicant's mark "incorporates the entirety of one of Opposer's marks." [i.e., the fleur de lis]. Moreover, the central portion of Applicant's mark "evokes a triangle." [Really? - ed.]. And the word mark MONTERO is "similar to Opposer's famous mark MONTECRISTO in that they share the first five letters (MONTE), they include the letter 'R,' and they end with the letter 'O.'"

In addition, "[t]o the extent the letter 'M' in the central portion of Applicant's mark resembles two mountains, it reinforces the MONTE portion of Applicant's mark, which Opposer's mark also shares." [What mountains? - ed]. MONTECRISTO is translated as "Mountain of Christ," and thus Applicant's mark and Opposer's mark "have very similar meanings." [Huh? - ed.].

Given the strength of Opposer’s fleur de lis mark, and the fame of the MONTECRISTO mark for cigars, we find that it is more likely than not that purchasers of cigars will view Opposer as the source of a mark that contains six fleur de lis in the center of the cigar band, and that the letter “M” identifies Opposer, whose name begins with that letter.

The Board concluded that the similarities in the marks outweigh their differences, and it sustained the opposition.

Read comments and post your comment here.

TTABlog comment: Wow! I would not have found the marks confusingly similar. How about you?

Text Copyright John L. Welch 2015.

TTAB Test: Is "REUBEN'S BREWS & Design" for Beer Confusable with "RUBENS (Stylized)" For Wine?

The USPTO refused registration of the mark shown below left, for "beer," finding it likely to cause confusion with the mark shown below right, for "wine." As usual, the Board found beer and wine related for Section 2(d) purposes, but what about the marks? How do you think this came out? In re Reubens Brews LLC, Serial No. 86066711 (October 27, 2015) [not precedential].

The goods: There is no per se rule that all alcoholic beverages are related. [It just works out that way - ed.]. The Board has found beer and wine to be related on a number of occasions. In fact, the Board was not aware of any precedential decision holding beer and wine to be unrelated for purposes of likelihood of confusion.

The Examining Attorney submitted third-party registration and website evidence showing that beer and wine may emanate from the same source, "usually a combination winery/microbrewery," under the same mark. Applicant's evidence showed that there are more than 10,5000 wineries and breweries in the United States, only a few of which produce both beer and wine at the same location, and so, Applicant argued, this overlap is statistically insignificant. The Board found that Applicant's evidence diminished somewhat the probative value of the Examining Attorney's evidence, but that there is "some degree of relationship between beer and wine." This du Pont factor favored a finding of likely confusion.

The Board found that beer and wine travel in the same normal channels of trade to the same classes of consumers. Moreover, neither beer nor wine is inherently expensive and they may be purchased on impulse.

The marks: The term BREWS was disclaimed in Applicant's mark and has little source-identifying significance, but it is the largest part of the mark and does contribute to the overall commercial impression. The barley stalk reinforces the term BREWS, and the words REUBEN'S and RUBENS are depicted in very different styles. The Board therefore found that the marks are visually very different.

In addition, the presence of the word BREWS in the applied-for mark creates a phonetic distinction.

As to meaning, REUBEN is defined as "a son of Jacob and the traditional eponymous ancestor of one of the tribes of Israel; a grilled sandwich of corned beef, swiss cheese, and sauerkraut usually on rye bread." RUBENS is the surname of Flemish painter Peter Paul Rubens, a prominent artist of the Baroque style or period. The Board found that the marks convey different meanings, one being a given name and the other a surname of a noted artist. Moreover the word BREWS has a meaning that one would not expect to be associated with wine.

The Board concluded that the marks engender different commercial impressions, and that the differences in appearance, meaning, and commercial impression outweighed the similarity in sound. The Board's conclusion was buttressed by Applicant's evidence of nine pairs of highly similar marks registered for beer and wine by different entities, and differing only by a generic or descriptive term. [E.g., HOURGLASS ALE and HOURGLASS, CABIN FEVER ALE and CABIN FEVER].

And so the Board found that the first du Pont factor weighed in Applicant's favor.

Finally, under the catch-all 13th du Pont factor, the Board took into consideration Applicant's evidence of nine existing registrations for identical or substantially similar marks for beer and wine, owned by different entities. [E.g., BLIND FAITH, BLUE MOON, BLACK WIDOW]. The Board concluded that the PTO has taken different positions in the past with regard to marks like Applicant's mark.

Considering the relevant du Pont factors, the Board found that the overall differences between the marks tipped the scale in favor of a finding of no likelihood of confusion. And so it reversed the refusal to register.

Read comments and post your comment here.

TTABlog comment: A tip of the TTABlog fedora to Applicant's attorney, Mike Drumm (a/k/a BEER LAW), whom I met on my pilgrimage to Denver, Colorado this summer.

Text Copyright John L. Welch 2015.

TTAB Posts November 2015 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled four (4) oral hearings for the month of November, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. Briefs and other papers for these cases may be found at TTABVUE via the links provided.



November 3, 2015 - 10 AM: Miss World Limited v. Camila Productions Ltd., Opposition No. 91206024 [Opposition to registration of THE WORLDS PAGEANTS for "Entertainment in the,nature of beauty pageants," on the ground of likelihood of confusion with, and likely dilution of, the registered mark MISS WORLD for "Entertainment Services, namely conducting of beauty competitions"].

The First Miss World (1951)
November 13, 2015 - 11 AM: Valhalla Motion Pictures. Inc. v. Valhalla Game Studios Co. Ltd., Oppositions Nos. 91204259 and 91206662 [Opposition to registration of VALHALLA GAME STUDIOS, in standard character and design form (shown below left) for video games and related goods and services, in view the registered marks VALHALLA MOTION PICTURES, VALHALLA TELEVISION, and VALHALLA TELEVISION, in the design form shown below right, for various entertainment services].

November 17, 2015 - 10 AM: In re Monster Cable Products, Inc., Serial No. 85318060 [Refusal to register the product configuration shown below for "Headphone cables sold as an integral component of headphones," on the grounds of functionality and genericness. The marks "consists of a headphone cable having a cross-section in the form of an oblong, wherein the cable features contoured outer edges and is significantly wider than it is thick. The headphone cable is used to connect ear bud devices to a headphone splitter. The ear bud areas shown in dotted lines in the mark are not claimed as part of the mark. Additionally, no claim is made to the length of the cable or the splitting of the cable into two cables."]

November 19, 2015 - 11 AM: Luigi Lavazza S.p.A. v. Favazza's, Inc., Opposition No. 91210050 [Opposition to registration of FAVAZZA'S for "Bar services; Catering services; Restaurant service," on the ground of likelihood of confusion with the registered mark LAVAZZA for "coffee shops, bars, restaurants, cafeterias, self-service restaurants, pubs, catering services"].

Read comments and post your comment here.

TTABlog note: Any predictions? Can you guess in what city Favazza's is located?

Text Copyright John L. Welch 2015.

TTAB Test: Is "NUT SACK DOUBLE BROWN ALE" Scandalous for Beer?

The USPTO refused registration of the mark NUT SACK DOUBLE BROWN ALE for "beer," deeming the mark to be immoral or scandalous under Section 2(a). The examining attorney found the term "nut sack" to be offensive to a substantial composite of the general public. Applicant Engine 15 appealed to the Board. How do you think this came out? In re Engine 15 Brewing Co., LLC, Serial No. 86038803 (October 29, 2015) [not precedential].

The Board observed that the USPTO may prove that a mark is scandalous under Section 2(a) by showing that the mark is "vulgar" as applied to the identified goods. The mark must be considered in light of contemporary attitudes, from the standpoint of a substantial composite (not necessarily a majority) of the public.

When the meaning of a term is ambiguous, the fact that a dictionary labels a term as "vulgar" is not always sufficient for Section 2(a) purposes. The CAFC pointed that out in Mavety Media:

While a standard dictionary may indicate how the substantial composite of the general public defines a particular word, the accompanying editorial label of vulgar usage is an arguably less accurate reflection of whether the substantial composite considers the word scandalous. Such labels are subject not only to differences in opinion among the respective publication staffs of particular dictionaries, but also to the potential anachronism of those opinions.

The PTO's evidence demonstrated that "nut sack" is a synonym for the scrotum. The Random House Historical Dictionary of American Slang suggests that the term is "usually considered vulgar."

Applicant argued that the term has an innocuous meaning when the mark is considered as a whole: it "confers [sic] the connotation that the product contains a great deal of nut flavor."

The Board acknowledged that the term "nut" has an innocuous connotation when use in connection with "nut brown ale," making it less likely that consumers would ascribe a vulgar meaning to the subject mark. [See the BIG PECKER BRAND case, In re Hershey]. The word "nut" clearly describes a flavor or style of ale, "rather than being an obvious reference to testicles." The words "double brown ale" reinforce that innocuous connotation.

The Board was not persuaded by applicant's argument that the word "sack" suggests a "sackful of flavor," or that "sack" is a reference to an obscure, historical method of making beer. The term "nut sack" has a readily understood meaning in common parlance.

The Board has noted that for several decades that "contemporary attitudes toward coarse language are more accepting than they had been in earlier eras." Here the evidence of record was mixed as to whether the term "nut sack" is immoral or scandalous. The term "may well raise eyebrows at a formal dinner party," but it must be assessed in light of the statutory language as well as the guidance provided by the courts ("shocking ...; disgraceful; offensive; disreputable; ... giving offense to the conscience or moral feeling; ... calling out [for] condemnation").

We observe that many slang terms come into the lexicon because the formally correct, clinical word for the thing itself is deemed uncomfortably potent. This seems to be particularly true with respect to parts of the human body, in which case speakers adopt the slang terms precisely because they seem less intense, less indelicate, than the formally correct or technical terminology.

"Scandalous" determinations under Section 2(a) "are rarely simple binary decisions, but involve various shades of gray." Some terms may seem "somewhat taboo in polite company, but are not so shocking or offensive as to be found scandalous within the meaning of the statute." Moreover, beer is an adult beverage, often associated with or resulting in the relaxation of inhibitions.

The Board concluded that "beer drinkers can cope with Applicant's mark without suffering meaningful offense." Even when the consumer thinks of body parts or insults, he or she is still likely to see the mark as an attempt at humor.

And so the Board reversed the refusal.

Read comments and post your comment here.

TTABlog comment: Consider the term NUT SACK for champagne. Would the result be different? How about NUT SACK for peanut butter (children will see it!)? Where is the vulgarity line to be drawn? Some say just north of Alexandria, Virginia.

BTW, if you click on the image above you will get a larger view of applicant's label. What does that sack of nuts look like? Looks like a nut sack to me.

Text Copyright John L. Welch 2015.