TTABlog Quarterly Index: October - December 2015

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Section 2(a) - Disparagement:

• CAFC Deems Section 2(a) Disparagement Provision Unconstitutional
• TTAB Test: Is "DIAMONDS IN THE TROUGH" Deceptive for Diamond-less Jewelry? [Yes]

Section 2(a) - False Association:

• Precedential No. 39: TTAB Dismisses 2(a) False Association Claim: MARATHON MONDAY vs. BOSTON MARATHON
• Precedential No. 36: TTAB Gives the Boot to Nike's Inadequate Section 2(a) and 2(c) Claims

Section 2(a) - Scandalous and Immoral:

• TTAB Test: Is "NUT SACK DOUBLE BROWN ALE" Scandalous for Beer? [No]
• TTAB Test: Is "F**K PROJECT" Scandalous for Handbags and Clothing? [Yes]

Section 2(c) - Consent to Register:

• Precedential No. 36: TTAB Gives the Boot to Nike's Inadequate Section 2(a) and 2(c) Claims

Section 2(d) - Likelihood of Confusion:

• WYHA? "COLDTOUCH" for Mattress Pads Confusable with "COOL TOUCH" for Mattresses, Says TTAB
• TTAB Test: Is VITA for Tea Confusable With VITA for Coffee [Yes]?
• TTAB Test: Which One of these Three Section 2(d) Refusals Was Reversed?
• WYHA? TTAB Finds CAOS for Tequila Confusable with CHAOS COCKTAILS for Alcoholic Mixed Beverages
• Parody "Defense" Fails to Stop Section 2(d) Refusal of "MY OTHER BAG ..." for Parodic Tote Bags
• TTAB Test: Are "DASH NEIGHBORHOOD" and "DASH IN" Confusable for Convenience/Gasoline Stores? [No]
• TTAB Test: Which One of These Three Section 2(d) Refusals Was Reversed?
• WYHA? TTAB Finds "THE KITCHEN" Confusable with "DA KITCHEN" for Restaurant Services
• Customer Sophistication For Expert Witness Services Yields Section 2(d) Reversal
• "NAUTIGIRL & Design" Not Confusable With or Dilutive of NAUTICA, Says TTAB
• TTAB Test: Is "MONTERO & Design" Confusable With "MONTECRISTO" for Cigars? [Yes]
• TTAB Test: Is "REUBEN'S BREWS & Design" for Beer Confusable with "RUBENS (Stylized)" For Wine? [No]
• "EVADE OFFSHORE ARMOR (Stylized)" Mark Survives Under Armour's Section 2(d) Attack
• TTAB Grants Petition to Cancel MEN'S DIVORCE Supplemental Registration for Legal Services
• TTAB Test: Are "M WEBB" and "MAPPIN & WEBB" Confusable for Wallets and Purses?
• TTAB Test: Are "1-888-SU-ABOGADO" and "YOURLAWYER" Confusable for Legal Services? [Yes]
• TTAB Test: Is "MAC NET WIRELESS MONITORING" Confusable With "MAXNET" For Same Services? {No]
• Precedential No. 38: Fame of "will.i.am" Can't Save "I AM" Trademark Applications From 2(d) Bar
• Another TTAB Test: Are "FLUFF IT UP" and "FLUFFY STUFF" Confusable for Cotton Candy? [Yes]

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

• WYHA? TTAB Finds MULTI-BINGO Merely Descriptive of Gaming Devices
• TTAB Test: Is MEAT CANDY Merely Descriptive of Food Kiosk Services? [Yes}
• WYHA? TTAB Finds "SOL-R" Merely Descriptive of Solar Panel Brackets
• TTAB Test: Is PREGNANCY TEXT Merely Descriptive of Simulated Pregnancy Messages? [Yes]

Section 2(e)(2) - Geographical Descriptiveness:

• WYHA?: "STRETCH LA" Geographically Descriptive of Therapeutic Stretching Services, Says TTAB
• SUGARLANDS DISTILLING COMPANY Not Geographically Descriptive of Moonshine, But Confusable with SUGARLAND CELLARS for Wine
• TTAB Finds CAROLINA'S SUMMER HUMMER Geographically Descriptive of Alcoholic Beverages

Section 2(e)(3) - Primarily Geographically Deceptively Misdescriptive:

• TTAB Affirms 2(e)(3) Refusal of GRAN HABANO for Cigars

Section 2(e)(5) - Functionality:

• Rifle Barrel Configuration Unregistrable Due to Functionality, Says TTAB
• Precedential No. 37: TTAB Affirms Functionality Refusal of Hot Bonder Product Design

Bona Fide Intent:

• TTAB Enters Summary Judgment: Applicant Lacked Bona Fide Intent

Fraud:

• TTAB Tosses Out Yet Another Bogus Fraud Claim
• TTAB Tosses Out Another Bogus Fraud Claim, Dismisses RESCUE ROOTER Cancellation Petition
• E.D. Va. Gives Preclusive Effect to TTAB Finding of Fraud in NATIONSTAR Case
• TTAB Dismisses Bogus Fraud Claim: No Proof of False Statement

Specimen of Use/Failure to Function:

• TTAB Affirms Refusal of IPOD for User Manuals: Not Goods in Trade

Concurrent Use:

• Concurrent Use Applicant Carves Out Utah For Its Restaurant Services

Discovery/Evidence/Procedure:

• Precedential No. 40: TTAB Refuses to Allow Witness to Change Testimony in HOLLYWOOD HOTEL Opposition
• Hell Freezes Over: TTAB Reverses NETCLOUD Decision on Reconsideration
• TTAB Dismisses Cancellation, Petitioner Failed to Prove Standing
• Applying B&B Hardware, District Court Gives Preclusive Effect to TTAB Priority Finding
• Unpleaded Morehouse Defense Sacked by Terry Hoage Vineyards

CAFC Decisions:

• CAFC Deems Section 2(a) Disparagement Provision Unconstitutional
• CAFC Hears En Banc Oral Argument in THE SLANTS Appeal

Recommended Reading:

• Recommended Reading: John M. Murphy, "Famous and Well-Known Marks in Mexico: Past, Present, and Future"
• Recommended Reading: John L. Brennan, "Determining Trademark Standing in the Wake of Lexmark"
• Recommended Reading: McCarthy and Roumiantseva, "Divert All Trademark Appeals to the Federal Circuit? We Think Not"

Other:

• Decisions of the Supreme Court, the CAFC, and the TTAB on Registrability Issues: July 2014 to Date
• Judge David E. Bucher Retires from the TTAB
• ALI Webinar Dec 8th: "Trademarks, Trade Dress, and False Advertising 2015: Recent Developments for Business and IP Lawyers"
• TTAB Posts December 2015 Hearing Schedule
• TTAB Posts November 2015 Hearing Schedule
• Current Roster of TTAB Administrative Trademark Judges
• TTABlog Quarterly Index: July-September 2015
• TTAB Posts October 2015 Hearing Schedule

Text and photos Copyright John L. Welch 2015.

TTAB Tosses Out Yet Another Bogus Fraud Claim

In this battle of Blue Collar breweries, Opposer claimed that Applicant committed fraud on the USPTO when it included "beer" in its application to register since it had never used the mark BLUE COLLAR BREWERY in connection with beer. The Board granted applicant's motion for summary judgment on the fraud claim because applicant made no false statement. Blue Collar Brewery, Inc. v. Blue Collar Brewery, LLC., Opposition No. 91219820 (December 28, 2015) [not precedential].

Applicant originally included beer in its application, but only under a Section 1(b) intent-to-use basis for registration. The goods for which applicant claimed a Section 1(a) use basis did not include beer, but rather were: "Beer making kit; Beer wort; Extracts of hops for making beer; Hop extracts for manufacturing beer; Malt extracts for making beer; Processed hops for use in making beer."

During prosecution, applicant deleted beer and all the other Section 1(b) goods. It never claimed use of its mark for beer.

We find as a matter of law that Applicant never claimed it was using the mark in commerce in connection with “beer” or, for that matter, any of the goods applied-for under Section 1(b) of the Trademark Act as of date on which the underlying application was filed. Opposer thus cannot meet the first element of the ground of fraud, namely, that Applicant made a false statement in connection with these goods.

The Board therefore summarily dismissed the fraud claim.

Opposer also claimed that the term "brewery" in the applied-for mark is deceptively misdescriptive of the identified goods under Section 2(e)(1). The Board found that applicant failed to show the lack of a genuine issue of material fact on that issue, and so the Board denied that part of applicant's summary judgment motion.

Read comments and post your comment here.

TTABlog comment: Another fraud claim that probably could have been knocked out at an earlier stage of the proceedings: i.e., at the discovery/settlement conference.

Text Copyright John L. Welch 2015.

WYHA? "COLDTOUCH" for Mattress Pads Confusable with "COOL TOUCH" for Mattresses, Says TTAB

The Board affirmed a refusal to register the mark COLDTOUCH for "pillows, bed toppers" and "mattress pads," finding a likelihood of confusion with the registered mark COOL TOUCH (in standard character form) for "mattresses." Applicant conceded that the involved goods are similar, but contended that "cold" and "cool" have different meanings. Would you have appealed? In re Perry Textiles Inc., Serial No. 86360156 (December 14, 2015) [not precedential].

Third-party use-based registrations covering both applicant's and registrant's goods convinced the Board that the involved goods are related and complimentary in nature.

As to t he marks, applicant maintained that its mark "creates a commercial impression of its products being refrigerated or actually cold to the touch" whereas COOL TOUCH "creates a commercial impression of merely being cold when one feels the product." Moreover, "cool" has other meanings, like "fashionable, trendy or chic," and the words "cold" and "cool" differ in spelling and sound. Furthermore, "touch" is descriptive and less important in the Section 2(d) analysis.

The Board was unconvinced. Both "cold" and "cool" begin with a hard "c" and are very close in meaning.

The word "cool" is defined as "cold (but pleasant)." The slight difference in meaning is minimized by the subsequent, identical noun TOUCH. When considered as a whole, both marks imply that their products are cold or "cold (but pleasant)" to the touch. This is especially true, given the nature of both Applicant’s and Registrant’s goods.

The Board concluded that, although the marks have some differences in sight and sound, "there are striking similarities in connotation, and, ultimately, overall commercial impression."

The Board therefore found the marks confusingly similar and it affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Well, would you have?

Text Copyright John L. Welch 2015.

TTAB Tosses Out Another Bogus Fraud Claim, Dismisses RESCUE ROOTER Cancellation Petition

In a case decided under the TTAB's ACR regime, the Board dismissed a petition for cancellation of a registration for the mark RESCUE ROOTER & Design for plumbing services, finding that petitioner's allegations of abandonment and fraud were baseless. Petitioner pointed to respondent's Section 8 Declaration of Use, claiming that the registered mark was no longer in use and the declaration was fraudulent. Rescue Response Group Inc. v. American Residential Services, L.L.C., Cancellation No. 92060597 (December 22, 2015) [not precedential].

During the discovery/settlement conference, the parties stipulated to the following ACR agreement:

1. The parties agreed “to have the Board reach conclusions as to any issues of material fact in dispute”;
2. The parties agreed “to prosecute this case using the summary judgment model of ACR”;
3. The parties agreed “there would be no period of discovery”; and
4. The parties agreed their “testimony will be presented by affidavit or declaration (and, of course, any exhibits referenced by the affiants or declarants).

Abandonment: Petitioner asserted that respondent was no longer using the registered mark, but rather had been using the mark shown below:

In support of its contentions, petitioner submitted several pages from respondent's website from 2010 to the present, on which the different mark, not the registered mark, appeared. Although petitioner had the burden to present a prima facie case of abandonment (which the webpages failed to do), respondent proceeded to submit a declaration of a company officer stating that respondent "uses the original form of the mark as well as slight variations thereof." Attached as an exhibit to the declaration was a postcard sent to a prospective customer, which postcard bore the registered mark.

Petitioner argued that respondent "needed to show not just a few bare samples of advertising artwork but also use of the mark for each of the services (Plumbing services, namely, plumbing repair, drain cleaning and sewer cleaning) in the registration for each of the time periods in question for the abandonment and fraud claims." The Board disagreed: "even if we were to find that Petitioner has established a prima facie case of abandonment, and we do not, Respondent has adequately shown that it has not abandoned use of its mark, as registered."

Fraud: Having failed to prove that respondent made a false statement, petitioner's fraud claim was quickly jettisoned. "Since Petitioner has failed to show that any statements made in Respondent’s Section 8 affidavit of continuing use were false, let alone proving this to the hilt, Petitioner’s claim of fraud must fail."

Read comments and post your comment here.

TTABlog comment: My proposed "Rogers hearing" would have disposed of this case even more quickly than ACR. Once the petitioner agreed that there would be no discovery, the interlocutory attorney could have asked for the proofs behind the fraud and abandonment claims. How can one prove abandonment without taking discovery? Only via an admission of some sort.

Text Copyright John L. Welch 2015.

E.D. Va. Gives Preclusive Effect to TTAB Finding of Fraud in NATIONSTAR Case

Last month we had a federal district court apply issue preclusion to a TTAB finding on priority in the SPENDOLOGY case (here). Now the U.S. District Court for the Eastern District of Virginia has given preclusive effect to the Board's finding of fraud in the NATIONSTAR case (TTABlogged here). Nationstar Mortgage, LLC. v. Mujahid Ahmad and Nationstar Mortgage, Inc., Civil Action No. 1:14-cv-1751 (E.D. Va. December 17, 2015).

Plaintiff moved for summary judgment on four counts against Defendants: trademark infringement under Section 14 of the Lanham Act; unfair competition under Section 43(c); Virginia common law unfair competition; and fraud.

In 2014, the TTAB sustained an opposition to Defendant Ahmad's application to register the mark NATIONSTAR for various real estate services, finding that Ahman had committed fraud on the USPTO when he filed his use-based application to register. The Board concluded that Ahmad "did not have a good faith reasonable basis for believing that he was using the NATIONSTAR mark in commerce for all the services identified in the application."

Plaintiff here alleged that Defendant continues to offer mortgage lending services under the name NATIONSTAR MORTGAGE. The court had little difficulty in finding likelihood of confusion and violation of Section 43(a). It concluded that "Defendants' conduct in attempting to establish rights in the NATIONSTAR mark superior to those of the Plaintiff were made in bad faith." Under Virginia law, a claim for unfair competition is essentially the same as for Lanham Act Section 43(a), and so the court granted the motion for summary judgment on that claim as well.

As to the fraud claim, the court relied on B&B Hardware v. Hargis Industries, Inc., 135 S. Ct. 1293 (2015), which held that "a court should give preclusive effect to TTAB decisions if the ordinary elements of issue preclusion are met."

The district court found that all of the elements for claim preclusion were met: the issue was identical and was decided against Defendant Ahmad, and the decision was critical and necessary to the Board's decision. The TTAB decision is final (Ahmad did not appeal) and Ahmad was represented by counsel and had a full and fair opportunity to litigate the issue. Therefore, the court entered summary judgment on the fraud claim as well.

Read comments and post your comment here.

TTABlog comment: Common law fraud requires that the party claiming fraud show it relied upon the false statement. If Ahmad's false statement was made to the USPTO, how did plaintiff rely on it?

Text Copyright John L. Welch 2015.

CAFC Deems Section 2(a) Disparagement Provision Unconstitutional

The U.S. Court of Appeals for the Federal Circuit, after an en banc hearing, has deemed the disparagement provision of Lanham Act Section 2(a) unconstitutional because it violates the Freedom of Speech Clause of the First Amendment. Writing for the majority, Circuit Judge Kimberly A. Moore stated: "The government regulation at issue amounts to viewpoint discrimination, and under the strict scrutiny review appropriate for government regulation of message or viewpoint, we conclude that the disparagement proscription of § 2(a) is unconstitutional." The CAFC therefore vacated the TTAB's decision that had affirmed a refusal to register the mark THE SLANTS for "entertainment in the nature of live performances by a musical band." In re Tam, 117 USPQ2d 1001 (Fed. Cir. 2015) [precedential].

The court observed that federal registration confers significant benefits on a trademark owner, benefits that are not available when the mark is not registered. A federal registrant has a right to exclusive nationwide use of the mark where there was no prior use by others. A registered mark is presumed valid and use of the mark may become incontestable after five years. The registrant may enforce the mark in federal court and may recover treble damages for willful infringement. He may obtain the assistance of U.S. Customs and Border Protection in restricting importation of infringing or counterfeit goods, and may qualify for a simplified process for obtaining recognition and protection of his mark in countries that have signed the Paris Convention. And registration provides a complete defense to state or common law claims of trademark dilution.

Many of the Lanham Act's provisions that bar registration concern "deceptive" speech and do not run afoul of the First Amendment. Section 2(a) is a "hodgepodge" that includes restrictions "based on the expressive nature of the content, such as the ban on marks that may disparage persons or are scandalous or immoral."

The court found that Section 2(a) is "a viewpoint-discriminatory regulation of speech, created and applied in order to stifle the use of certain disfavored messages. Strict scrutiny therefore governs its First Amendment assessment."

The Government did not argue that the disparagement provision survives "strict scrutiny" but rather contended that Section 2(a) does not implicate the First Amendment at all. It contended that Section 2(a) is immune from First Amendment scrutiny because it prohibits no speech; that trademark registration is government speech, and thus the government can grant and reject trademark registrations with out implicating the First Amendment; and that the provision merely withholds a government subsidy for Mr. Tam’s speech and is valid as a permissible definition of a government subsidy program. The court rejected all three arguments.

The court held that "the disparagement provision of §2(a) is unconstitutional because it violates the First Amendment."

Read comments and post your comment here.

TTABlog comment: Is there any doubt whether the Supreme Court will take this case?

Text Copyright John L. Welch 2015.

Precedential No. 40: TTAB Refuses to Allow Witness to Change Testimony in HOLLYWOOD HOTEL Opposition

Concluding that a genuine dispute of material fact exists as to ownership of the opposed mark HOLLYWOOD HOTEL, the Board denied Opposer Hollywood Casino's motion for summary judgment. The attempt by Applicant Chateau Celeste's president to change his testimony regarding licensing and control of the mark was rejected by the Board. Nonetheless, opposer's evidence established only that Applicant was not the owner of the physical property known as the Hollywood Hotel at the time the subject application to register was filed.  Hollywood Casino LLC v. Chateau Celeste, Inc., 116 USPQ2d 1988 (TTAB 2015) [precedential].

Section 1 of the Trademark Act requires that the applicant for registration be the "owner of the mark sought to be registered." An application filed by one who is not the owner is void ab initio. Opposer maintained that the deposition testimony of applicant's president proved that someone other than applicant - namely, Zarco Hotels, Inc. - controls that nature and quality of the services rendered at the Hollywood Hotel, and therefore that Chateau Celeste was not the owner of the mark.

Errata Sheet: Applicant's president testified that Zarco Hotels owns the property, that Zarco controls the nature and quality of the services provided there, and that Chateau Celeste is the management company and has a license from Zarco to use trademarks. After opposer filed it summary judgment motion, the witness submitted an errata sheet changing certain portions of his deposition transcript to state that Chateau Celeste controls the nature and quality of the services at the property and that Zarco has a license from Chateau Celeste to use trademarks. Opposer objected to these proposed "clarifications," and likewise objected to a declaration of the same witness submitted in opposition to the summary judgment motion, because it likewise contradicted his original testimony.

Applying FRCP 30(e) with regard to the errata sheet, the Board observed that a party should not be allowed to make an unexplained "about face" with respect to damaging deposition testimony. To do otherwise would "eviscerate the purpose of sworn depositions, and would severely prejudice the deposing party's ability to rely upon or strategize based on the responses given by a deponent."

Because the proposed changes were substantive in nature and relate to a potentially dispositive issue, the Board applied "heightened scrutiny." Although the errata sheet was timely served - i.e., within 30 days of the transcript being made available - the explanation for the changes was unconvincing. The witness identified the cast of entities and had multiple opportunities to correctly identify them. The changes were made only after applicant was alerted to the damaging nature of the original testimony, and would serve to "recreate Applicant's testimony, presumably to defeat Opposer's newly added nonownership claim." Allowing a re-opening of the deposition would likely result only in the witness hewing to the amended answers. Balancing the relevant factors, the Board concluded that consideration of the errata sheet would be inappropriate.

Declaration: The declaration of the witness included the same "clarifications" as the errata sheet. He claimed that opposer's attorney did not explain the meaning of  the phrase "controls the nature and quality of the services that are provided at the property," which caused the original inaccurate answers. Opposer called the declaration a "sham affidavit" because the question was simple and straightforward and the answer did not reflect any confusion. The Board agreed with opposer, and it refused to consider the declaration.

Conclusion: Notwithstanding these evidentiary rulings, the Board ruled that opposer had failed to carry its burden to show the absence of any genuine issue of fact.

In particular, the deposition testimony does not make clear that Applicant was not, in fact, the owner of the trademark HOLLYWOOD HOTEL at the time the application was filed. The testimony Opposer cites as supporting its claim that Applicant was not the owner merely establishes that Applicant was not the owner of the physical property known as the Hollywood Hotel, located at 1160 North Vermont Avenue in Hollywood, California at the time the application was filed. [Emphasis in original].

The Board therefore denied the summary judgment motion and set a new schedule for resumption of the proceeding.

Read comments and post your comment here.

TTABlog comment: If Chateau Celeste is not the owner of the mark, the application is void. If it is the owner of the mark but it doesn't control the nature and quality of the services, what would that mean? Is Chateau Celeste caught between a rock and a hard place?

Practice pointer: Witness preparation should be conducted before the deposition, not after.

Text Copyright John L. Welch 2015.

WYHA?: "STRETCH LA" Geographically Descriptive of Therapeutic Stretching Services, Says TTAB

The Board affirmed a Section 2(e)(2) refusal to register the mark STRETCH LA, finding the mark to be primarily geographically descriptive of "therapeutic stretching services." Applicant contended that STRETCH is the dominant portion of its mark, and that LA primarily suggests a level of fitness, "as the inhabitants of Los Angeles are generally thought to be in better physical shape that those that reside elsewhere in the United States." The Board found that too much of a stretch.  In re MMDT Stretch, LLC, Serial No. 85930329 (December 16, 2015) [not precedential].

A Section 2(e)(2) refusal requires a showing that: (1) the mark sought to be registered is the name of a place known generally to the public; (2) the public would make a services/place association, i.e., believe that the services for which the mark is sought to be registered originate in that place; and (3) the source of the services is the geographic region named in the mark.

As to elements (1) and (3), applicant conceded that LA "identifies a real and significant geographic location." Applicant is located in Los Angeles county.  It admitted that its services will originate in Los Angeles, and it intends to offer its services in and around Los Angeles.

The Board observed that applicant’s arguments did not provide "a clear, alternate, non-geographic meaning of the mark, but only a vague suggestion that the term LA has favorable associations for those interested in fitness." In the context of the identified services, "customers are likely to perceive the mark as designating stretching services associated with Los Angeles."

The presence of the generic term STRETCH does not detract from the primarily geographic meaning of the mark as a whole.

As to the second element of the test, ordinarily, a service/place association is presumed when the services originate in the place named. The Board pointed out that applicant's intention to offer its services outside the Los Angeles area does not per se remove the mark from the Section 2(e)(2) ban.

Applicant argued that consumers in, say, Portland would not think that the stretching services originate in Los Angeles, just as a customer sitting in a French bistro-style restaurant will not think he or she is in Paris.

The CAFC, in In re Les Halles De Paris, J.V.,  observed that establishing a services/place association is somewhat more difficult than establishing a goods/place association. There, the place named (Le Marais) was in a foreign country, and the customer for the involved restaurant services (in New York City) "is well aware of the geographic location of the service." The CAFC ruled that there must be "an additional reason beyond the mark itself to identify the services as originating in the relevant place."

Here, and unlike in In re Les Halles, the services are to be provided in the place named. Paraphrasing the CAFC:

[T]he customer, "having come to [Los Angeles] for the services," will be "well aware of the geographic location of the service" and will have "an additional reason beyond the mark itself” to believe that the services “have their origin in the location indicated by the mark."

The Board therefore affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Surely another person or entity should be able to use "LA" in connection with similar fitness services offered in that area without having to worry about an infringement claim?

Text Copyright John L. Welch 2015.

TTAB Dismisses Bogus Fraud Claim: No Proof of False Statement

The Board dismissed a petition for cancellation of a registration for the mark AMERICAN BEAUTY for beauty pageants, finding that petitioner had failed to prove its claim of fraud in connection with respondent's Section 8 filing. Petitioner did not establish that respondent made a false statement to the USPTO, nor that respondent had an intent to deceive the Office. Harrison Productions, L.L.C. v. Debbie Harris, Cancellation No. 92058758 (December 16, 2015) [not precedential].

A fraud claimant must prove that the other party knowingly made a false statement of material fact, with intent to deceive, that was relied upon by the injured party (the USPTO), to its detriment. The burden of proof is a heavy one: fraud must be proven "to the hilt" (or as some say, "to infinity and beyond," or even "up the Wazoo"). Clear and convincing evidence is required.

Petitioner submitted a page from respondent's website referring to "the next National Pageant (on) November 27-30, 2014 at the Empire Theater in San Antonio, Texas." According to petitioner, no such pageant was scheduled, and respondent "simply changed the date on her website to give the false  impression that she is actually using the mark in commerce."

There was a major problem with petitioner's argument. Respondent never submitted that webpage to the USPTO as proof of use. The webpage specimen she did submit did not contain an advertisement for that pageant in San Antonio. It contained only a depiction of respondent's AMERICAN BEAUTY mark, with statements about her pageants. As the Board sagely observed:

A false statement appearing on a section of Respondent’s website that was not submitted to the U.S. Patent and Trademark Office (USPTO) cannot be treated as a false statement for the purpose of proving fraud, because the statement was never made to the Office.

The fact that a single pageant advertised by respondent did not occur proved nothing about whether respondent was using the mark at all. As respondent argued, "There is no record evidence of non-use by Registrant for any period."

Respondent's statement that her mark was still in use was certainly material to the mark's continued registrability, but petitioner failed to show it was false. As to knowledge, "Petitioner has not even proved that this statement was a falsehood, let alone a knowing falsehood."

Finally, petitioner failed to prove an intentional falsehood, either with regard to respondent's verification that her mark was in use, or her (irrelevant) failure to hold the November 2014 pageant.

And so the Board dismissed the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: I have been suggesting for several years that, whenever a fraud claim is made, the Board hold an early hearing (like a Markman hearing on the patent side) to ferret out these phony fraud claims at an early stage in the proceeding. I would require the fraud claimant explain up front the basis for the fraud claim, and then give the boot to the claims (pretty much every one) that cannot succeed.

Text Copyright John L. Welch 2015.

TTAB Test: Is VITA for Tea Confusable With VITA for Coffee?

Vitasoy International opposed registration of the mark VITA for "coffee," asserting likelihood of confusion with its registered, identical mark VITA for "tea drinks." Applicant argued that the marks different in sound when the associated trade dress is considered, that "vita" is weak in view of third-party registrations, and that the goods are different and come from different countries and have had different channels of trade for centuries. How do you think this came out? Vitasoy International Holdings Limited v. Caffe Vita, Inc., Opposition No. 91214495 (November 30, 2015) [not precedential].

Judicial Notice: Opposer requested that the Board take judicial notice of the fact that "prominent beverage chains like Dunkin' Donuts and Starbucks regularly offer both coffee and tea products," and it provided links to the websites of those companies. The Board refused to do so, since "the factual assertion does not appear to be generally known, and the internet URLs provided for particular retail websites do not constitute the types of sources whose accuracy cannot be reasonably questions ...."

The Marks: The Board pointed out that "distinction in trade dress cannot weigh against likelihood of confusion with respect to the registration of a simple word mark .... The reason is that such dress might well be changed at any time; only the word mark itself is to be registered." Of course, we know that "there is no correct pronunciation of a trademark" (except for common words like apple, black cat, and TTABlog).

Applicant argued that VITA is a weak mark in view of third-party uses and registrations, invoking Juice Generation and Jack Wolfskin. However, only one of the registrations included "tea."

Thus, unlike in Juice Generation and Jack Wolfskin, where the third-party evidence involved the very same restaurant services and clothing at issue, here the third-party registration evidence relied upon relates to a broader range of goods, a variety of food and beverage products. *** In addition, the third-party evidence here appears less voluminous than that in Juice Generation, which addressed at least 26 uses or registrations of the same phrase for restaurant services.

Moreover, the vast majority of these third-party marks included matter in addition to the word "vita." "Thus, given the smaller number of 19 active registrations with claims of use in commerce and the lesser degree of relevancy to the marks and goods at issue, we find the evidence for this duPont factor weighs only very slightly against likely confusion."

The goods: The record evidence included 38 active use-based registrations covering both coffee and tea; testimony by Applicant’s president that Applicant’s CAFFE VITA retail outlets sell both coffee and tea; and a Wikipedia entry about Opposer submitted by Applicant that indicates Opposer’s products include both teas and coffee drinks. Applicant provided no evidence that consumers distinguish the source of these goods based on geographic origin.

Trade Channels: Applicant contended that the goods are sold in different trade channels: "the vast majority of Applicant’s coffee beans are sold at the wholesale level," and "or Opposer “operates in Asian channels of trade for soy products." Even if true, that fact is irrelevant since there are no such restriction in the opposed application or the cited registration.

The trade channels for the identified goods include wholesale sales to coffee and tea retailers and retail sales to members of the general public. Applicant’s President acknowledged that applicant that both coffee and tea together in its retail outlets.

Therefore the Board concluded that the channels of trade for these goods are "similar," and this factor favored opposer.

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

Read comments and post your comment here.

TTABlog comment: A bit of a snorer, I think.

Text Copyright John L. Welch 2015.

Hell Freezes Over: TTAB Reverses NETCLOUD Decision on Reconsideration

A Board reversal on reconsideration is about as rare as a White Sox fan in Boston. But that's just what happened in the NETCLOUD opposition. In its original decision (here), the Board sustained a Section 2(d) opposition to registration of the mark NETCLOUD for various computer monitoring services, finding a likelihood of confusion with the (allegedly) previously used and identical mark for overlapping services. Applicant East Coast Network moved for reconsideration, contending that the Board had wrongly determined the priority issue because it relied on evidence that had been stricken, and because it permitted Opposer to rely on an issue that had not been pleaded. NetCloud, LLC v. East Coast Network Services, LLC, Opposition No. 91210559 (on reconsideration, December 10, 2015) [not precedential].

The Board had stricken certain exhibits because they were untimely submitted (i.e., with Opposer's reply brief rather than during its testimony period), and also because a party cannot rely on its own discovery responses. But the Board nonetheless considered the responses elsewhere in its decision. That was inappropriate and an error by the Board.

The Board had also allowed Opposer to establish priority by proving use of the subject mark by a predecessor-in-interest. Applicant maintained that this evidence was beyond the scope of the pleadings, which had not alleged use by a predecessor. Applicant had repeatedly objected to the admission of exhibits regarding this prior use, but the Board had basically ignored those objections.

On reconsideration, the Board ruled that the continuing objections to the exhibits at the testimony depositions was equivalent to a timely objection to the depositions in their entireties. The Board concluded that "Opposer's trial tactics contravene notice pleading requirements of the modern federal rules of appellate and civil procedure." The Board cited pertinent precedent:

Where testimony and exhibits relating to the adoption and use by opposer of trademarks are not the subject of any allegations in the pleadings, and applicant has objected at trial to the consideration of such matter on the ground of irrelevancy and renewed its objections in its brief, the evidence will not be considered by this Board in resolving the issues before it. Monorail Car Wash, Inc. v. McCoy, 178 USPQ 434, 435-36, fn.1 (TTAB 1973); P.A.B. Produits et Appareils de Beaute v. Satinine Societa in Nome Collettivo di S.A. e. M. Usellini, 196 USPQ 801, 804 (CCPA 1978).

With the above-discussed exhibits and depositions stricken from the record, the Board found that "in the absence of probative evidence of use of the NETCLOUD marks prior to Applicant's filing date, ... Opposer has failed to make out a prima facie case of priority."

The opposition was therefore dismissed.

Read comments and post your comment here.

TTABlog comment: This dark netcloud had a silver lining/

Text Copyright John L. Welch 2015.

Decisions of the Supreme Court, the CAFC, and the TTAB on Registrability Issues: July 2014 to Date

My compilation of precedential decisions on registrability issues from July 2014 to Date may be downloaded here. This paper accompanied my presentation last week for the ABA-CLE webinar. I hope you find it helpful. Please contact me regarding any errors or omissions.

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Text Copyright John L. Welch 2015.

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

I once heard a TTAB judge say that the outcome of nearly all Section 2(d) likelihood of confusion cases can be predicted just by looking at the marks and the identified goods/services, without more. Well, try your potential judicial skills on these three appeals. Which one was reversed. [Answer in first comment].


In re DRHORSEPOWER, INC., Serial No. 77505597 (December 4, 2015) [not precedential]. [Refusal to register the mark shown below, in view of the registered mark HORSEPOWER ENERGY DRINKS, both for energy drinks [ENERGY DRINKS disclaimed in the cited mark].

In re Murad, Inc., Serial No. 86286112 (December 9, 2015) [not precedential]. [Refusal to register INVISIBLUR PERFECTING SHIELD for "Nonmedicated skin care preparations, namely, creams, lotions, gels, toners, cleaners and peels" [PERFECTING SHIELD disclaimed], in view of the registered mark INVISIBLEND for "cosmetic creams; cosmetic creams for skin care; cosmetic preparations for skin care; face creams for cosmetic use"].

In re Americas Health and Wellness Fund LLC, Serial No. 86265852 (December 11, 2015) [not precedential]. [Refusal to register LUBDUB for various goods and services in classes 5, 29, 32, 35, 43, and 44, including nutritionally fortified beverages, fruit-based beverages, retail store service featuring vitamin supplements, and juice bar services, in view of the registered mark DUB for non-alcoholic energy drinks.

Read comments and post your comment here.

TTABlog comment: Are you keeping track of your success rate on these TTAB tests?

Text Copyright John L. Welch 2015.

Judge David E. Bucher Retires from the TTAB

Today is Judge David E. Bucher's last day on the Trademark Trial and Appeal Board, after 35 years of government service, seventeen as an Administrative Trademark Law Judge. Judge Bucher's trademark has been well-researched and well-written, highly readable opinions (including an occasional pithy dissent). Good luck, sir!

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WYHA? TTAB Finds CAOS for Tequila Confusable with CHAOS COCKTAILS for Alcoholic Mixed Beverages

The Board affirmed a Section 2(d) refusal of the mark CAOS for tequila, finding the mark likely to cause confusion with the registered marks CHAOS COCKTAILS and CHAOS ON THE ROCKS for "alcoholic mixed beverages except beer" [COCKTAILS disclaimed]. Applicant's argument that his mark CAOS would be pronounced "khaws" fell on deaf ears. Would You Have Appealed? In re Brent Theyson, Serial No. 85663894 (December 4, 2015) [not precedential].

The Marks: The Board found the word CHAOS to be the dominant and most significant portion of the cited marks. CHAOS appears as the first word in each mark, and has more source-identifying significant than the remainder of the marks, since both COCKTAILS and ON THE ROCKS are descriptive of the goods.

As to aural similarities, there is no correct pronunciation of a mark (at least if it is not a known word). Applicant's suggestion that CAOS is pronounced "khaws" was pooh-poohed by the Board: "[B]ecause "chaos" is an actual word, and "caos" and "khaws" are not, we find that consumers are likely to perceive and pronounce CAOS as the word CHAOS, that is, as "kei,as." Moreover the words have the same connotations: "a situation in which everything is confused and in a mess," perhaps suggesting the loss of control that may occur when one drinks alcohol.

The Board concluded that the marks "are sufficiently similar in appearance, sound, connotation and commercial impression that, if used in connection with related goods, confusion would be
likely to occur."

The Goods: The Board agreed with applicant that there is no per se rule dictating that all alcoholic beverage products are related for Section 2(d) purposes. However, the record evidence established the relatedness of tequila and "alcoholic mixed beverages except beers."

The evidence included three examples of third-party websites identifying tequila as a common ingredient in many mixed alcoholic beverages such as the Margarita, and six third-party registrations covering both tequila and alcoholic mixed beverages. Examining Attorney Karen K. Bush also provided evidence of three online websites offering tequila and prepared cocktails, including cocktails containing tequila. Since there are no limitations on channels of trade or classes of consumers in the involved application and registrations, the Board concluded that the goods travel in the same normal channels of trade to the same classes of customers.

Applicant feebly contended that the involved goods are different: Applicant sells "pure, unadulterated blue agave tequila," whereas Registrant offers "/low calorie, low carb' vodka cocktail[s], which mix[] vodka with fruit and low calorie sweeteners." Of course, we all know that what Applicant and Registrant actually offer under their respective marks is simply irrelevant. The Board must rule based upon the identifications of goods as set forth in the application and registrations, without regard to what the real world evidence shows the goods to be.

Concluding that the marks are similar, the goods are related, and the channels of trade and consumers overlapping, the Board found confusion likely, and it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Well, would you have appealed? Applicant's attempt to limit the goods in the application and cited registrations is an example of the Number One losing argument at the TTAB. If that's the case, why worry about issue preclusion under B&B Hardware?

Text Copyright John L. Welch 2015.

Recommended Reading: John M. Murphy, "Famous and Well-Known Marks in Mexico: Past, Present, and Future"

The latest issue of The Trademark Reporter provides several foreign language articles that are probably interesting, but of certain interest is an article in English by John M. Murphy of Arochi & Lindner in Mexico City: "Famous and Well-Known Marks in Mexico: Past, Present, and Future," 105 TMR 1060 (September-October 2015).

John M. Murphy

The protection of famous and well-known marks has preoccupied Mexican judges, bureaucrats, legal scholars, and trademark practitioners for over seventy five years. This article recounts the development of this area of law in Mexico, from its origins in the 1920s through the 2005 amendments to the Industrial Property Law, which authorized the Mexican Institute of Industrial Property (IMPI) to award declarations of fame and notoriety to qualifying trademark owners. In addition, this article will consider IMPI’s implementation of the 2005 amendments, which by some measures has been a success and by others a disappointment. The article will close with suggestions regarding how the current system might be improved.

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 1060 (2015).

Text Copyright John L. Welch 2015.

WYHA? TTAB Finds MULTI-BINGO Merely Descriptive of Gaming Devices

The Board affirmed a Section 2(e)(1) refusal to register the mark MULTI-BINGO, finding it to be merely descriptive of gaming machines, bingo machines, and the related software, firmware and gaming equipment "sold or leased to owners or operators of gambling places." On appeal, Applicant argued unsuccessfully that the mark is merely suggestive, since it does not appear in dictionaries and could have various meanings. Would You Have Appealed? In re Xylomen Participations, S.à r.l., Serial No. 86024542 (November 19, 2015) [not precedential].

Dictionary definitions of "multi" and "bingo" were sufficient to show that the combined term MULTI-BINGO immediately conveys to owners and operators of gambling facilities that Applicant's goods allow players to play multiple, simultaneous, bingo games. That fact that "multi-bingo" is not found in a dictionary is "not controlling." The question is whether the merely descriptive components retain their merely descriptive meaning when combined. The Board answered that question in the affirmative.

Examining Attorney Daniel S. Stringer also made of record several webpages showing use of the terms "multi and multiple" to describe bingo games, machines, or game rooms where a single player may play multiple games of bingo at once. This evidence corroborated the dictionary evidence in establishing that the subject mark immediately conveys information about this feature of Applicant's goods.

Applicant feebly contended that "multi bingo" could have many different meanings and was too vague to be merely descriptive. The Board, however, concluded that "multi" is "not so broad as to require mature thought to discern the nature of the goods." There is a readily recognizable connection between the mark and applicant's goods. Moreover, the alternate meanings that Applicant proposed -  more than one person can play, more than one game can be played on the same card, or more than one bet may be place or prize awarded - all describe possible features of Applicant's goods.

Moreover, Applicant's identified customers are "owners or operators of gambling places" and therefore sophisticated purchasers who are likely to be aware of the features of various gambling machines, including multiple play options.

The Board concluded that the mark MULTI-BINGO immediately apprises consumers of a central aspect of the goods, namely, that they allow players to play multiple games of bingo at the same time.

The Board therefore affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Well, would you have?

Text Copyright John L. Welch 2015.

TTAB Dismisses Cancellation, Petitioner Failed to Prove Standing

The Board dismissed a petition for cancellation of a registration for the mark BEACH PIZZA for "pizza" [PIZZA disclaimed], because petitioner failed to establish its standing to bring the proceeding. None of the evidence of record concerned the nature of Petitioner NH’s commercial activities and its need to use the BEACH PIZZA mark. NH Beach Pizza, LLC v. Cristy’s Pizza Inc., Cancellation No. 92058955 (November 20, 2015) [not precedential].

Standing is a threshold issue that must be proven in every inter partes case. In order to meet the standing requirement, a plaintiff need only show that it has a real interest, i.e., a personal stake, in the outcome of the proceeding. In short, the bar is not high.

In its petition, NH Beach Pizza alleged that it "will be damaged should it be prevented from using the generic term 'beach pizza' in the advertising of its goods, and has received claims of likelihood of confusion with the mark by Registrant." Respondent’s answer did not contain any admissions regarding Petitioner’s alleged business activities or Petitioner’s interest in the mark BEACH PIZZA.

In its Brief, Petitioner asserted that it is in direct competition with Respondent. Respondent did not acknowledge that Petitioner is a competitor or that it is engaged in its asserted business activities.

Neither party submitted testimony. The Board found that "[t]he record is utterly devoid of any evidence concerning the nature of Petitioner’s commercial activities and its interest in Respondent’s registered BEACH PIZZA mark."

Petitioner could have submitted testimony or competent documentary evidence as to its asserted need to use the term "beach pizza" and nature of its business activities to establish its standing. Petitioner neglected to do so. Thus, on the record before us, Petitioner has failed to establish a "real interest" and "reasonable belief in damage."

The Board therefore dismissed the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: Pleading standing isn't enough. Either the defendant has to admit facts that will establish plaintiff' standing, or plaintiff itself must submit evidence. Here, neither happened. Could Petitioner seek review by way of civil action under Section, and then add the needed evidence to support its standing?

Text Copyright John L. Welch 2015.

TTAB Affirms Refusal of IPOD for User Manuals: Not Goods in Trade

The Board affirmed a refusal to register the mark IPOD for printed materials and publications "sold or distributed in connection with handheld mobile digital media devices," on the ground that Apple's specimens of use (user manuals) did not show the term in use as a trademark for "goods in trade." In re Apple, Inc., Serial No. 78521891 (November 13, 2015) [not precedential].

The Trademark Act defines a trademark as something being used "to identify and distinguish his or her goods" and "to indicate the source of the goods." These definition "carry the necessary implication that a prerequisite to obtaining a trademark is that the subject matter to which it applies must be goods."

"Before rights in a term as a trademark can be established, the subject matter to which the term is applied must be 'goods in trade.'" In re Thomas White, Int'l, Ltd., 1006 USPQ2d 1158, 1161 (TTAB 2013) (investment reports not goods in trade). The question, then, was whether Apple's printed materials qualified as "goods in trade." Incidental items like letterhead, invoices, and business forms which bear an entity's trademark do not generally qualify as goods in trade.

Apple argued that its printed materials fill the bill because they bear the mark, are transported in commerce, and have utility to consumers of its products. Examining Attorney Sui Duong maintained that the materials are provided only incidentally with the iPod device, are not sold or distributed independently of the device, and have no viable existence apart from the device.

To determine whether an item is merely incidental to a primary product or service, we consider such factors as whether it: (1) is simply a conduit or necessary tool useful only in connection with the primary goods or services; (2) is so inextricably tied to and associated with the primary goods or services as to have no viable existence apart therefrom; and (3) is neither sold separately from nor has any independent value apart from the primary goods or services. Lens.com, 103 USPQ2d at 1676 (items incidental to services not independent goods in trade).

Apple contended that Lens.com should be limited to services, but the Board observed that the case is not so limited. The general question is always the same: "what is being offered for sale?"

The Board concluded that all three Lens.com factors support the refusal. The materials are paper inserts (provided in the same boxes as the goods) that provide nothing more than elementary guidance to iPod purchasers but not other consumers. There was no evidence that the materials are sold independently. And there was no evidence that consumers patronize Apple stores seeking these inserts.

Applicant's substitute specimens, consisting of third-party manuals for iPod accessories and compatible apparatus, suffered from the same deficiencies as the original specimens.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: WYHA?

Text Copyright John L. Welch 2015.

TTAB Test: Is MEAT CANDY Merely Descriptive of Food Kiosk Services?

The USPTO issued a Section 2(e)(1) refusal of the mark MEAT CANDY, deeming the mark merely descriptive of "food kiosk services; mobile food kiosk services; mobile street vendor services featuring food and drink; street vendor services featuring food and drink." Applicant appealed, arguing that her mark is suggestive, rather than descriptive, because it is a "tongue in cheek reference to the desirability of certain meat products." How do you think this came out? In re Katakis, Serial No. 85901018 (December 2, 2015) [not precedential].

Boston yesterday
Applicant asserted that "[c]andy, in common modern American English parlance, is a snarky reference to anything desirable." "Meat Candy," according to applicant, is "merely an expression of desirability of a product - i.e., so good it's like candy." Indeed, numerous website excerpts submitted by Examining Attorney Kara E. Jackson evidenced the laudatory or descriptive nature of "Meat Candy."

Applicant contended that MEAT CANDY is merely suggestive of her services because "many mental steps" are required to get from the mark to the services themselves. The Board, however, found the mark to be laudatory when considered in the context of applicant's services. The connotation of "desirability," as stated by applicant, is the "very connotation which makes the term laudatory ... (i.e., Applicant's service features food that is so good it is meat candy)."

In addition, many third-parties use the term for specific food products: for example, bacon, wrapped sausage, desserts, brisket ends. The Board therefore found that prospective customers "will readily understand that the applied-for mark describes a delicious meat specialty of Applicant's food services.''

The Board therefore affirmed the refusal to register.

Read comments and post your comment here

TTABlog comment: The opinion is a bit muddled, IMHO, but apparently the Board found the applied-for mark to be descriptive both because it is laudatory and because it describes the goods.

Text Copyright John L. Welch 2015.

Parody "Defense" Fails to Stop Section 2(d) Refusal of "MY OTHER BAG ..." for Parodic Tote Bags

The Board affirmed a refusal to register the mark MY OTHER BAG ... for "parodic canvas tote bags screen-printed with an artist's cartoonish rendering of a well-known designer handbag," finding the mark to be confusingly similar to the registered mark THE OTHER BAG BY ALDO for hand bags, carry-all bags, and the like [BAG disclaimed in both marks]. Applicant maintained that confusion is unlikely because its mark is a "tongue-in-cheek statement" by the person carrying the bag that while it "may not have cost me a fortune, 'My Other Bag ...' may have." The Board was unimpressed. In re My Other Bag Inc., Serial No. 85521133 (November 16, 2015) [not precedential].

The fact that a mark is intended to be a parody is not, by itself, sufficient to avoid a likelihood of confusion refusal. "Parody is a potential defense only if the involved marks would otherwise not be found confusingly similar." [If that's the test, then the parody defense isn't needed - ed.]. The Board found nothing in the record to show why applicant's supposed parody should trump the likelihood of confusion as to source.

Moreover, applicant's limitation to the identification of goods is "futile." Consumers are not privy to applicant's intention as stated in the application, and the limiting language is not "binding" on consumers. [See the recent "will.i.am" decisions].

Turning to the likelihood of confusion analysis, the Board found the initial phrase THE OTHER BAG to be the dominant feature of the registered mark. BY ALDO is likely to be considered a tag line or house mark. Both of the involved marks include the term OTHER BAG, and thus both marks imply "that their respective bags are distinct from a previously known bag, as if to say - 'not this one, but that one.'" Although the marks are different in sight and sound, there are similarities in connotation and overall commercial impression. The Board concluded that this first du Pont factor weighs in favor of a likelihood of confusion finding.

The goods of applicant and registration are "highly similar in nature, if not identical." Registrant's goods encompass applicant's more narrowly identified goods. Moreover, the goods of the registration "are unrestricted," and therefore may include "parodic" designs similar to those displayed on applicant's goods. In short, the Board found the involved goods to be related, and it concluded that the second du Pont factor points toward a finding of likely confusion.

The Board held that there is a likelihood of confusion between the two marks, and it affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: Seems to me that the parodic nature of the mark should be taken into account as part of the 2(d) analysis. It makes no sense to me to say that before considering parody, one first decides whether there is a likelihood of confusion.

Text Copyright John L. Welch 2015.

TTAB Test: Are "DASH NEIGHBORHOOD" and "DASH IN" Confusable for Convenience/Gasoline Stores?

The USPTO refused registration of the mark DASH NEIGHBORHOOD for "retail store services featuring gasoline," finding the mark likely to cause confusion with the registered mark DASH IN for "retail store services featuring convenience store items and gasoline." Applicant appealed, arguing that the term "DASH" is weak and "commonly associated with convenience stores." How do you think this came out? In re SDI Petroleum, LLC, Serial No. 86011946 (November 30, 2015) [not precedential].

Disclaimer requirement: The PTO also refused registration on the ground that Applicant refused to disclaim the term NEIGHBORHOOD. Relying on a dictionary definition and website pages, the Examining Attorney argued that NEIGHBORHOOD identifies a feature or characteristic of Applicant's services - i.e., the services are offered to the surrounding "neighborhood." Applicant pointed to several registered marks that contain the word NEIGHBORHOOD without disclaimer, but they were not for the same services as involved here, and the Board concluded that they do not evidence an Office policy or practice. Most importantly, the Board is not privy to the records in those cases, and in any event each case must be decided on its own merits.

The Board had no doubt that NEIGHBORHOOD is merely descriptive of applicant's services, and it affirmed the disclaimer requirement.

Likelihood of Confusion: Applicant's services are in-part identical, and thus legally identical, to the services of the cited registration. The Board must therefore presume that the channels of trade and classes of consumers are the same. Of course, when the services are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

Applicant submitted the declaration of a linguistic expert, who opined that the second syllable in each mark is dominant, that the term "dash" is typically accompanied by a preposition of direction, and that applicant is using the word "in a novel non-canonical, coined verb form." The Board, however, did not agree that consumers would not understand the mark "to indicate a dash into or around the neighborhood." Therefore, the commercial impressions of the two marks are similar.

Applicant further contended that DASH is weak and is "commonly associated with convenience stores," so that consumers will note the differences between the marks at issue. It submitted at least 17 examples of uses of DASH in connection with convenience store services around the country, relying on yellow pages information from the Internet. Applicant's counsel also made telephone calls to confirm that these businesses were in existence and were offering gasoline and convenience store services.

The Board, citing Juice Generation and Jack Wolfskin, agreed with applicant that consumers are "accustomed to encountering the term 'DASH' in relation to convenience store services and retail gasoline services." Moreover, some of the uses were "quite similar" to the DASH IN mark.The Board concluded that the shared term "DASH" is "so weak that consumers will look to distinguishing features of the mark."

The Board therefore reversed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: Small businesses like convenience stores and gas stations are ubiquitous, and therefore a fertile field for proof of third-party use. Find enough of them, cite the CAFC cases, and you can overcome the old saw that third-party uses are not probative without proof of the nature and extent of the use.

Text Copyright John L. Welch 2015.

TTAB Enters Summary Judgment: Applicant Lacked Bona Fide Intent

The Board granted Opposer's motion for summary judgment, ruling that Applicant failed to demonstrate its bona fide intent to use the marks EDGEPULL and EDGEPEEL for "primarily non-metal seals comprised of various layers including a metallic foil layer for use in container closures and caps,” as of the date that it filed the opposed applications. The Board therefore declared the applications to be void ab initio and it sustained the oppositions. Tekni-Plex, Inc. v. Selig Sealing Products, Inc., Oppositions Nos. 91214508 and 91215874 (November 25, 2015) [not precedential].

Under Commodore Electronics, a party may may establish a prima facie of lack of bona fide intent by showing that the other party lacks any documentary evidence regarding its intent to use the mark in question. In response to opposer's discovery requests, Applicant Selig failed to produce any pertinent documentation on the issue.

In response to the motion, Selig submitted pages from its website showing the history of the company and its products and services. However, nowhere did the marks at issue appear on the webpages, nor was there even an indication of when the webpages were created.

The Board found that opposer had thus established a prima facie case. Applicant Selig did not provide evidence that it even had a bona fide intent to use the subject marks.

Applicant has not come forward with evidence indicating for example, current business plans, ongoing discussions, or promotional activities to corroborate its claim of a bona fide intent to use either EDGEPULL or EDGEPEEL in commerce. In sum, Applicant has produced no evidence supporting or confirming the bona fide intent to use the mark in commerce which it asserted in its two involved applications.

Viewing the evidence in the light most favorable to the non-movant, "the record does not indicate" that Selig had a bona fide intention to use the subject marks on or in connection with the identified goods as of the application filing dates. The Board therefore granted the motion for summary judgment and deemed the applications void ab initio.

Read comments and post your comment here.

TTABlog comment: On second thought, this decision seems rather harsh. Why would one expect to see the mark on the webpages when the application is an ITU? Isn't this case like the ROLL-X case of a few years ago, where the applicant already had the capability of producing the identified products and was just adding additional product of the same type and nature to its product line? I know from experience that clients come up with new marks and file on them even without having documented plans to use the mark. But they have the capability of putting the mark into use at any time. For example, a new name for a pizza by a restaurant chain; the new mark can be added to the menu very quickly.

Text Copyright John L. Welch 2015.