Precedential No. 3: Despite Consent Agreement, TTAB Finds TIME TRAVELER BLONDE Confusable With TIME TRAVELER for Beer

Although consent agreements are frequently entitled to great weight in its likelihood of confusion analysis, the Board was unmoved by a consent agreement in its affirmance of a Section 2(d) refusal of the mark TIME TRAVELER BLONDE for "beer" [BLONDE disclaimed], in view of the registered mark TIME TRAVELER for "beer, ale and lager." According to the Board,  the agreement between applicant and registrant "does not comprise the type of  agreement that is properly designed to avoid confusion and does not fully contemplate all reasonable circumstances in which the marks may be used by consumers calling for the goods." In re Bay State Brewing Company, Inc., 117 USPQ2d 1958 (TTAB 2016) [precedential].

The Board first found that the virtual identity of the marks, the identity of the goods, trade channels, and purchasers, and the "impulse nature" of purchases of beer, made for a "compelling case for finding a likelihood of confusion." It then turned to consideration of the consent agreement between applicant and registrant and the impact of same on the likelihood of analysis.

The Board pointed out that, according to In re du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), a consent agreement is simply evidence to be included in the likelihood of confusion determination, and "it may or may not tip the scales in favor of registrability, depending upon the entirety of the evidence." Each consent agreement must be examined and it is not a foregone conclusion that every such agreement will be determinative.

In the consent agreement at hand, applicant and registrant included the usual statement that they “wish to avoid any conflict with one another and consent to co-exist” under certain terms and conditions, and they "agree to cooperate in good faith to resolve such actual confusion and to develop measures sufficient to avoid a likelihood."

The agreement required that each party use its mark in connection with its house mark, that applicant  use TIME TRAVELER or the word TRAVELER only in the mark TIME TRAVELER BLONDE, that the word BLONDE be displayed in at least equal prominence with TIME TRAVELER, and that each party use a trade dress not confusingly similar to the trade dress of the other.

The "Geographical Limitation" provision in the agreement states that applicant will not use its applied-for mark “outside of New England and the State of New York,” while registrant’s use is not geographically limited. (Applicant Bay State is located in Massachusetts; Registrant A&S Brewing Collaborative is based in Vermont). The Board found that this provision creates two problems.

First, "the parties have agreed to allow use of their respective marks in the same territories, because Registrant will be free to use its mark in the entirety of Applicant’s territory." However, "[a]pplicant is not seeking a concurrent use registration (with a corresponding geographical restriction in Registrant’s registration), but rather a nationwide registration. Nor is Applicant seeking a geographically restricted registration as part of the consideration provided to Registrant for entering into a consent agreement." Compare Holmes Oil Co. v. Myers Cruizers of Mena Inc., 101 USPQ2d 1148 (TTAB 2011) (TTAB accepted a geographical restriction in a consent agreement despite overlap in territories, without requiring a concurrent use proceeding, because the restriction was "part and parcel of the consent agreement" and not because a geographic restriction in the application was necessary.) [TTABlogged here].

Second, the registration that applicant seeks would not reflect the geographical limitation that it has voluntarily accepted, and thus would be misleading.

We recognize that a mark shown in an unrestricted registration may actually be used in a smaller territory than that which it can be used. However, when marks are being searched and cleared, there is a presumption by searchers and attorneys afforded to an unrestricted registration that Applicant’s registration would not and should not be entitled to.

In light of the geographical overlap, the effectiveness of the remaining provisions in the agreement is diminished. The addition of each party's house mark to these virtually identical marks used on identical goods does not necessarily eliminate confusion. As to trade dress, each party agrees not to use trade dress confusingly similar to the other's, but there is no specification as to what trade dress each will use. "[I]f each used minimal trade dress and smaller font displays of the house marks, then the essence of the agreement would be met, but would not aid in the avoidance of confusion."

The Board noted that applicant's mark is not yet in use, and so applicant is seeking a determination "based on its mark, not as applied for, but rather as promised."

These promises as to trade dress and house mark usage represent another deviation from the parameters of the application and registration, and thus would result in a failure of the public notice function of registrations.

The Board remained convinced that there remained a likelihood of confusion arising from the use of these virtually identical marks for identical goods, subject to purchase on impulse by ordinary consumers, in the same geographical area.

In sum, while we unmistakably recognize the Federal Circuit’s instruction that consent agreements are frequently entitled to great weight, we find that the specific consent agreement in this case is outweighed by the other relevant likelihood of confusion factors, namely that the marks are virtually identical, and the goods, trade channels and purchasers are identical. Further, the goods are subject to impulse purchase. Notwithstanding the consent agreement, we are persuaded that patrons in New York and New England are likely to be confused as to source upon encountering the marks TIME TRAVELER and TIME TRAVELER BLONDE, even when these marks are used within the constraints set forth in the consent agreement.

Read comments and post your comment here.

TTABlog comment: In my experience, most consent agreements say nothing about geographical restrictions. So the Board has definitely raised the bar, don't you think? Or are the marks and goods here just too close for comfort?

Further comment: If geographical restrictions are needed to avoid confusion, then a concurrent use proceeding is the appropriate vehicle. If other differences are sufficient to avoid confusion, then geographical restrictions may be okayed without a concurrent use proceeding if that is part of the consent agreement. Isn't that what this case and the Holmes Oil case are saying?

Text Copyright John L. Welch 2016.

WYHA? MUTT Confusable with LAZY MUTT for Beer, Says TTAB

The USPTO refused registration of the mark MUTT for beers, finding the mark likely to cause confusion with the registered mark LAZY MUTT for beer. On appeal, applicant argued that the beers of applicant and registrant have distinct differences, that the marks suggest different tastes and characteristics of the beer, and that the consumers of craft beers are sophisticated and discriminating. Irrelevant, said the Board. Would you have appealed? In re JWB Wine LLC, Serial No. 86163390 (February 24, 2016) [not precedential].

Applicant's maintained that that "there are distinct differences within the range of beers categorized as ales." That was, of course, of no consequence because the Board must consider the goods as identified in the application and registration. Since there are no limitations in the identifications of goods, the Board must assume that they include all types of beers. Moreover, it must presume that the goods travel in the same, normal channels of trade to the same, usual classes of consumers.

As to the marks, the Board found the word MUTT to be the dominant portion of the cited mark, since "Lazy" is an adjective modifying "Mutt" (i.e., what kind of mutt? A lazy mutt). "Thus, the word 'Mutt' is [the] part of the registered mark most likely to catch the attention of the average beer drinker and be remembered by the average beer drinker."

The word “Mutt” is defined as “a mongrel dog.” The word “Lazy” is defined as “not liking to work hard or to be active” and “moving slowly." The marks MUTT and LAZY MUTT have similar meanings and engender similar commercial impressions (e.g., a dog and/or a lazy dog

Applicant argued that the marks "engender different commercial impressions when applied to the taste and character of the beer products they identify." Again, however, the Board pointed out that it cannot consider the taste and character of the beer, since the products as identified are identical (i.e., "beer").

The Board therefore concluded that the marks are similar in their entireties as to appearance, sound, connotation, and commercial impression.

Applicant contended that there are 125 active registrations and applications for marks containing the word "Mutt" for a broad range of goods and services. However, it offered no evidence of same. In any case, third-party marks for products other than beer have little probative value.

Finally, applicant's contention that purchasers of "craft beer" are careful purchasers fell flat. One again the Board pointed out that it must decide this case based on the goods as identified in the application and cited registration, neither of which contains any limitation on the type of beer involved. The identified goods may include less expensive beers sold to ordinary adult consumers "for a variety of reasons, such as parties and the like."

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

Read comments and post your comment here.

TTABlog comment: Well, Would You Have Appealed?

Text Copyright John L. Welch 2016.

TTAB Test: Is HAMMER for Skateboard Clothing Confusable with HAMMER & Design for Jackets and Hats?

The USPTO refused to register the mark HAMMER for "“Skateboarding clothing, headwear and footwear, namely, beanies; belts; footwear; hats; jackets and socks; pants; shirts; sweatshirts; t-shirts," finding the mark likely to cause confusion with the registered mark HAMMER & Design (shown below) for "jackets and hats." Applicant argued that registrant's goods are bowling-specific, that its own goods are associated with the famous skateboarder, Jim Greco, and that five third-party registrations for marks that include the word "hammer" show that the field is crowded with HAMMER marks. How do you think this came out? In re Hammers USA, Inc., Serial No. 85611025 (February 22, 2016) [not precedential].

The marks: The Board observed that the design in the cited mark merely reinforces the meaning of the word HAMMER. Considering the marks in their entireties, the Board found them to be "quite similar visually." They share a comparable commercial impression and are phonetically identical. Therefore, the first du Pont factor weighed in favor of likelihood of confusion.

The goods: Applicant's identification of goods includes "hats" and "jackets," and those goods overlap with those of the cited registration. Even narrowing applicant's goods to skateboarding clothes, they still fall within the scope of the cited registration.

Applicant contended that the association of its goods with Jim Greco (a famous skateboarder), along with its focus on skateboarding and Action Sports-oriented shops, differentiates its goods from those of the registration, which goods are "bowling-specific" and "purposefully aimed at professional bowlers." The Board, not surprisingly, rejected this argument, since there are no such limitations in the cited registration and therefore registrant's goods must be presumed to travel in all normal channels of trade to all potential customers. In short, the identification of goods as stated in the registration is controlling, regardless of what actually occurs in the marketplace.

The Board accordingly found that the goods and trade channels overlap, and these du Pont factors favor a finding of likely confusion.

Third-party marks: Finally, applicant maintained that the clothing field is crowded with HAMMER marks, and its mark should be allowed to join the field. It pointed to five third-party registrations, but the Board agreed with Examining Attorney Andrew C. Leaser that these five registered marks contain other matter that distinguish them from the cited mark. Applicant's mark includes no additional distinguishing matter.

The Board found that this batch of third-party registrations "does not establish that consumers could rely on any difference in Applicant's mark to distinguish it from that in the Registration." The Board considered this du Pont factor to be neutral.

Decision: The Board affirmed the refusal.

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TTABlog comment: Well, would you have?

Text Copyright John L. Welch 2016.

Alabama Federal Court Orders TTAB to Vacate HOUNDSTOOTH MAFIA Precedential Decision

In a June 23, 2015 ruling [TTABlogged here] the TTAB refused to vacate its 2013 precedential decision that dismissed an opposition to registration of the mark HOUNDSTOOTH MAFIA, in the design form shown below, for "shirts, hats." A civil action for review of that 2013 decision, filed in the U.S. District Court for the Northern District of Alabama, had resulted in a settlement and entry of a consent judgment, in part ordering that the Board's decision be vacated. The Board declined to do so. On February 23, 2016, Judge R. David Proctor granted the University's motion to enforce the judgment, denied as untimely the USPTO's motion to intervene, and issued an Order (here) requiring the TTAB to vacate its decision within fourteen days. Board of Trustees of the University of Alabama v. Houndstooth Mafia Enterprises, LLC, Case No. Case No.: 7:13-CV-1736-RDP (N.D. Alabama February 23, 2016).

The court observed that it was acting like an appellate court vis-a-vis the TTAB. "If an Article III court is ... bound by an appellate court’s decision, it follows that an administrative body (like the TTAB) is similarly constrained by a district court’s decision made while that court is acting as an appellate court reviewing a decision of the TTAB."

Thus, the mandate rule requires the TTAB to follow, rather than reexamine (or worse, ignore), this court’s final judgment. *** When a lower court is subject to appellate review, it is not free to deviate from the appellate court's mandate.

The district court asserted that not only did the TTAB not have the authority to ignore the district court's final judgment, but its reason for doing so was faulty. The court found that the Board missapplied the Supreme Court's decision in U.S. Bancorp and "flatly mischaracterize[d]" the facts of that case. Unlike here, Bancorp did not involve a provision in which the parties agreed to vacate a lower court decision.

The question the Supreme Court actually faced in U.S. Bancorp was this: Is the mere settlement of a case on appeal (or certiorari review) grounds, in and of itself, enough for a reviewing court to vacate the civil judgment of a subordinate court? *** To be clear, that is not the question presented here. In this case, the parties expressly agreed, as part of their settlement, that the TTAB’s decision below would be vacated.

The court found this case like Major League Baseball Properties, Inc. v. Pacific Trading Cards, Inc., 150 F.3d 149 (2nd Cir. 1998), where on appeal the parties jointly requested that the Second Circuit vacate the district court’s order and opinion "so that they could settle their dispute." The court brushed aside the TTAB's attempt to distinguish the current situation from that in the Second Circuit case.

Just like Pacific Trading Cards in Major League Baseball Properties, Defendants were locked in a dispute that they could not afford to continue litigating and wished to settle. The dispute could end on a "commercial basis satisfactory to both." Major League Baseball Properties, 150 F.3d at 152. But vacatur of the decision appealed from was a non-negotiable necessary condition to that settlement. Id. Thus, Houndstooth Mafia faced a similar Hobson’s choice.

As for the USPTO's motion to intervene, the court pointed out that the TTAB issued its 2015 decision refusing to vacate, more than one year after the district court's judgment had been filed with the Board. "[I[t was not until September 17, 2015 (after a hearing on the motion to enforce took place), that the Director filed her motion to intervene in this long-since closed action."

The court found the Director's motion to intervene to be untimely, and that "any right to intervene in this long-closed action has been waived."

Read comments and post your comment here.

TTABlog comment: The judge's memorandum opinion is not kind to the TTAB or the USPTO. In any case, I guess if a party has enough money and the other side doesn't, the first party can undo whatever the TTAB has done. Is that trademark bullying?

Text Copyright John L. Welch 2016.

George C. Pologeorgis Named TTAB Administrative Trademark Judge

George C. Pologeorgis has been appointed to the position of Administrative Trademark Judge for the Trademark Trial and Appeal Board. His appointment brings the total number of TTAB judges to 25. [Full roster here].

George Pologeorgis has served the TTAB as an Interlocutory Attorney at the TTAB for almost eleven years. During this time, Mr. Pologeorgis has proven particularly adept at managing the progress of TTAB trial cases. He is well acquainted with the strategic goals of the TTAB and has been instrumental in issuing decisions that result in sought-after efficiencies in processing of TTAB trial cases. Mr. Pologeorgis clearly understands USPTO stakeholder need for, and ultimately the economic importance of, timely and quality decisions on contested motions in TTAB inter partes cases and final decisions in ex parte and inter partes cases.

Before joining the TTAB for his current tenure as an Interlocutory Attorney, Mr. Pologeorgis served the USPTO as a Staff Attorney in the Office of Trademark Quality Review and Training. His experience in reviewing and assessing the work of trademark examining attorneys while in this position will serve him well as an ATJ at the TTAB. Mr. Pologeorgis also served the USPTO as a trademark examining attorney for almost five years. Eight years of private practice experience accrued by Mr. Pologeorgis also will be of great benefit to him and to the TTAB. These years as a litigator, including in IP cases, provides him with a keen understanding of how advocates plead and pursue their trial cases. This experience will serve him well when reviewing evidence and writing final decisions on the merits as an Administrative Trademark Judge.

Mr. Pologeorgis earned his Juris Doctor degree from the George Washington University National Law Center, where he was an editor of the Journal of International Law and Economics, and his bachelor’s degree in Political Science, cum laude, from the University of Pennsylvania.

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

TTAB Finds "BOOKING.COM" Generic for Travel Agency Services

In a 39-page opinion, the Board affirmed a refusal to register BOOKING.COM, in standard character form, finding the term to be generic for travel agency and hotel reservation services. In separate decisions, the Board also affirmed genericness refusals in three closely-related cases involving the same term in design form (including the one shown below). The Board also considered the USPTO's alternative refusal on the ground of mere descriptiveness under Section 2(e)(1), finding Applicant's Section 2(f) claim of acquired distinctiveness unsupported by sufficient proofs for this "very highly descriptive" term. In re Booking.com B.V., Serial No. 79114998 (February 18, 2016) [not precedential].

The Board found the genus of the services to be "travel agency and tourist agency services ..." and "making hotel reservations and resort information ..." (see page 4). The relevant public includes all persons interested in making reservations for travel or lodging, and all persons interested in obtaining information or advice about same. The USPTO's evidence focused on applicant's online reservation services, an approach which was proper, since a refusal may be based on any one of the services for which registration is sought.

The examining attorney submitted dictionary definitions of "booking" (e.g., "an arrangement to buy a travel ticket, stay in a hotel, etc. at a later date") and of ".com", and Internet website excerpts using the term "booking" to describe the services as offered by applicant and others. Applicant's website used the word "booking" both as a noun meaning a hotel reservation and a verb meaning to make such a reservations.

The evidence also included third party domain names and trade names incorporation the term "booking.com": e.g., ebooking.com, hotelbooking.com, eurobookings.com, Bookingbuddy.com.

From the evidence, the Board found it clear that:

an accepted meaning of “booking” is a reservation or arrangement to buy a travel ticket or stay in a hotel room; or the act of reserving such travel or accommodation. It is also clear from the Internet evidence that the term “booking” has been widely used to describe the service of arranging reservations for hotel rooms or air travel, as described in Applicant’s recitation of services and as comprehended by the applicable genera of services. (p. 20-21)

Applicant argued that the dictionary definitions show that the primary meaning of "booking" relates not to travel but to theater reservations. The Board, however, pointed out that the term must be considered in the relevant context of travel, regardless of its meaning in other contexts.

The Board deemed it proper for the examining attorney to consider "booking" and ".com" separately for genericness; that approach was approved by the CAFC in the LAWYER.COM and MATTRESS.COM cases. "The fact that 'booking' and '.com' appear in dictionaries separately, but not together, does not mean that their combination cannot be generic." (p.24). Moreover, the Board pointed out that it is not necessary that the public actually use a term to designate the genus, but only that the public understand the term to refer to the genus. See Marvin Ginn, 92 USPQ2d at 1685.

At to public perception of the term, applicant submitted a press release regarding a 2012 J.D. Power survey of customer satisfaction, but the Board found this evidence to be "at best a very indirect demonstration of what relevant customers understand 'booking.com' to mean." (p.27). The survey may indicated something about applicant's business success, but it says nothing about customers' understanding of the meaning of BOOKING.COM.

Applicant contended that it is impossible for BOOKING.COM to identify an entire class or genus of services because "a specific URL can identify only one entity." The Board noted, however, that a URL points to a specific address, not a specific entity, and the owner of the URL may change. In addition, applicant's argument ignored the use of "booking.com" by third parties in their Internet addresses.

Finally, the Board distinguished this case from In re Steelbuilding, in which the CAFC reversed a genericness refusal of STEELBUILDING.COM for both retail sale of steel buildings and the design and construction of same, because consumers would appreciate the dual meaning of the term: i.e., a building made of steel and the process of designing and constructing a structure with steel. Consumers would find no such double meaning in BOOKING.COM.

For the sake of completeness, the Board considered applicant's Section 2(f) claim. The USPTO's evidence demonstrated that BOOKING.COM is "very highly descriptive and would require significant evidence of acquired distinctiveness in order to allow registration of the mark." (p.35).

The Board found no evidence that would support a finding of acquired distinctiveness for applicant's lodging reservation services (class 39). As to the travel services (class 43), the evidence consisted of the Power survey information and a declaration regarding website visits, advertising, and revenues.

However, the USPTO's evidence of third-party use of "booking.com" in their trade names and domain names "seriously undercuts applicant's claim to have made 'substantially exclusive' use of the term, as well as applicant's claim of acquired distinctiveness." (p.37).

The Board found applicant's evidence inadequate to prove acquired distinctiveness, "especially because it does not focus on demonstrating actual market recognition of BOOKING.COM as a source indicator." (p. 38). "Overall, we find Applicant's evidence to be too sparse and equivocal to indicate that a term as highly descriptive as BOOKING.COM has acquired distinctiveness under Section 2(f)." (p. 39).

And so the Board affirmed the genericness refusal and the alternative Section 2(e)(1) mere descriptiveness refusal.

Read comments and post your comment here.

TTABlog comment: In one of the four related cases, the Board affirmed the refusals, but allowed registration with a disclaimer of BOOKING.COM for the following mark:

Text Copyright John L. Welch 2016.

STYLEHOUSE & Design For Clothing Confusable With STYLEHAÜS For Clothing Boutiques, Says TTAB

The TTAB affirmed a refusal to register the mark STYLEHOUSE, in the form shown below, for various clothing items, finding the mark likely to cause confusion with the registered mark STYLEHAÜS for "retail clothing boutiques." Applicant contended that registrant's "German-sounding term" is readily distinguishable, and that registrant's stores offer styling by appointment and hand-picked merchandise sold to sophisticated purchasers. The Board was  unimpressed. In re Mutyaar Inc., Serial No. 86345866 (February 17, 2016) [not precedential].

The Marks: The Board concluded that the marks sound the same and have similar appearances. The umlaut in the cited mark does not change the impression that HAÜS is the same as HAUS, and the Board considered "house" and "haus" to be equivalent. Registrant's mark is in standard character form, and could be displayed in "iterations similar to applicant's." Therefore, the minimal stylization in the applied-for mark does little to distinguish the marks.

The Goods/Services: The Board observed that it is "well recognized that confusion may be likely to occur from the use of the same or similar marks for goods, on the one hand, and for services involving those goods, on the other." Applicant's clothing items are the type of goods that would be sold in registrant's boutiques.

Moreover, Examining Attorney Jordan A. Baker submitted 25 use-based third-party registrations each covering various clothing items and retail clothing boutique services. The record also included evidence of third-party use of marks for both clothing and for boutique services.

Registrant's services constitute an trade channel for applicant's goods, and the customers overlap to the extent offered to the general public.

Applicant's assertions that registrant's services are provided goods only in Los Angeles through personal stylists were irrelevant because the determination of likely confusion must be made in light of the services as recited in the cited registration, regardless of what the evidence shows the actual services to be.

Similarly, applicant's sophistication argument failed because registrant's recitation of services did not limit its customers to those who are particularly careful or sophisticated. Nothing in the record showed that purchasers of clothing in retail boutiques exercise greater care than others in purchasing clothing. Moreover, applicant's clothing items may be subject to impulse purchasing.

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

Read comments and post your comment here.

TTABlog comment: Is this a WYHA?

Text Copyright John L. Welch 2016.

TTAB Test: Are FAVAZZA'S and LAVAZZA Confusable for Restaurant Services?

Luigi Lavazza S.p.A. opposed an application to register the mark FAVAZZA'S for "Bar services; Catering services; Restaurant services," on the ground of likelihood of confusion with the registered mark LAVAZZA for "coffee shops, bars, restaurants, cafeterias, self-service restaurants, pubs, catering services." The services are the same. What about the marks? How do you think this came out? Luigi Lavazza S.p.A. v. Favazza's, Inc., Opposition No. 91210050 (February 16, 2016) [not precedential].

Applicant conceded that the involved services are identical and are rendered in the same channels of trade to the same classes of consumers, who would exercise only ordinary care in their purchasing decisions.

As to the marks, applicant argued that LAVAZZA is a "family name" and therefore not entitled to a broad scope of protection. The Board noted that opposer's mark was registered under Section 2(f), but observed that the mark is still "entitled to the same trademark protection as any other validly registered trademark."

According to applicant, consumers would recognize the marks as Italian surnames that are easily distinguishable. The Board disagreed. It found the marks to be "visually similar because they both contain AVAZZA and there is little, if any, trademark significance in the addition of the apostrophe and letter 'S' in Applicant’s mark." "[W]hen the marks are compared in their entireties, they are strikingly similar in appearance and sound, and the differences are not sufficient to distinguish the marks visually or phonetically."

As for connotation, it is not clear whether consumers would ascribe any meaning to the marks, but rather would see both marks either as invented foreign words or as surnames. We find it highly unlikely that consumers would view one mark as a surname and the other as an invented foreign word. Thus, regardless of whether consumers would view the marks as invented foreign words or surnames, the connotation is the same. As a result of the similarities between the marks, both marks convey similar overall commercial impressions. We therefore find that the marks are highly similar in sound, appearance, connotation, and commercial impression.

Opposer Lavazza urged that its mark is famous, but its proof fell short. It failed to show with the requisite specificity what portion of its sales figures were attributable to restaurant services (as opposed to its coffee products),or what portion related to sales under the mark LAVAZZA by itself.

Applicant pointed to the lack of actual confusion despite some thirty years of coexistence, but because of the lack of evidence regarding opposer's use of the LAVAZZA mark for restaurants, the Board was unable to ascertain whether there had been a meaningful opportunity for actual confusion to have occurred. In any case, the Board observed, the test is likelihood of confusion.

Considering the pertinent du Pont factors, the Board found confusion likely and it sustained the opposition.

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TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.

Report on February 15th Meeting of TPAC (Trademark Public Advisory Committee)

Eric Pelton reports here on the February 15th meeting of the Trademark Public Advisory Committee (TPAC). PowerPoint slides included.

With regard to Our Favorite Tribunal, Chief Judge Gerard F. Rogers provided the following information:

• The Trademark Trial and Appeal Board currently has 23 Administrative Judges (plus the Chief Judge and the Deputy Chief Judge) and 13.5 interlocutory attorneys. 
• TTAB new case filings are up the first quarter of FY2016 over the numbers from prior year, and are expected to remain up throughout the fiscal year (Oct. - Sept.).
• Notice of Proposed Rulemaking featuring a new Rules package is expected to be published in March. There are four main goals/elements:
  • Leverage the use of technology and electronic communications.
  • Remove plaintiff’s obligations to serve notice on the defendant.
  • Discovery changes, including encouraging earlier completion of discovery and moving the deadline for filing a motion for summary judgment to prior to the first date to serve pre-trial disclosures.
  • Add trial testimony efficiencies, for example allowing parties to submit testimony by affidavit (instead of deposition) but subject to possible cross-examination.
• The Board will be doing outreach this spring regarding the new rules.

Read comments and post your comment here.


Text Copyright John L. Welch 2016.

CAFC Corrects SLANTS Opinion Regarding Cybersquatting Protection

On February 11, 2016, the CAFC issued an errata sheet (here) in connection with its opinion in In re Tam, 117 USPQ2d 1001 (Fed. Cir. 2016). [corrected opinion here]. The court had listed as one of the added benefits enjoyed by a federal trademark registrant is the ability to prevent cybersquatters from misappropriating the mark owner's domain name under Section 43(d) of the Lanham Act. That was not correct, since a federal registration is not a prerequisite to a cybersquatting action under 43(d).

The CAFC's errata sheet states:

Please make the following changes:

Page 6, lines 18–19, delete "prevent 'cybersquatters' from misappropriating his domain name, 15 U.S.C. § 1125(d)".

Page 34, line 37 to page 35, line 2, delete “It cannot prevent 'cybersquatters' from misappropriating the mark in a domain name. Id. § 1125(d)."

Perhaps the court should also correct its error (at page 39 of the corrected opinion) where it states that one of the benefits of copyright registration is use of the C-in-a-circle symbol. In fact, any copyright owner may use the C symbol, regardless of whether the copyright has been registered.

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

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

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



In re PTT, LLC, Serial No. 86203092 (January 21, 2015) [not precedential]. [Refusal to register WHAT I LIKE ABOUT YOU for computer game software for "machines, namely, slot machines and video lottery terminals," in view of the identical mark for "entertainment services in the nature of live-action, comedy, drama and animated television series" and "digital versatile discs featuring music, comedy, drama, action, adventure, and/or animation"].

In re Epic Naturals, LLC, Serial Nos. 85762427 and 85762380 (February 8, 2016) [not precedential]. [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].

In re Fivepals, LLC, Serial No. 85924540 (February 9, 2016) [not precedential]. [Refusal to register ALICE for "Mobile communication downloadable software platform allowing hotel customers to remotely access and reserve hotel services through smartphones, and allowing hotels to track and analyze customer preferences and characteristics," in view of the registered mark KATIE ALICE for "Hotel reservation services; restaurant reservation services; hotel restaurant reservation services; on-line booking of restaurant places (seats), including hotel restaurant places (seats); information about restaurants provided on-line from a computer data base or from the Internet; restaurant menus, including hotel restaurant menus; provided on-line from a computer data base or from the Internet; telephone booking services in respect of restaurants and hotel restaurants; information, advice and consultancy services in respect of the above; providing information via a global computer network in relation to the aforesaid services"

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TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.

Precedential No. 41: TTAB Refuses Reconsideration of its Denial of Rule 12(b)(6) Motion to Dismiss

Once in a great while, a precedential interlocutory ruling of the TTAB slips through the TTABlog crack. Here's one from December 2015 (although I can't understand why it earned the precedential label). The Board had denied (here) Respondent Knowluxe's FRCP 12(b)(6) motion to dismiss Guess?'s petition for cancellation of a registration for the mark shown below, for caps and t-shirts. On this request for reconsideration of that ruling, respondent likewise had no luck. Guess? IP Holder L.P. v. Knowluxe LLC, 116 USPQ2d 2018 (TTAB 2015) [precedential].

In its 12(b)(6) motion, Knowluxe argued that Guess?'s claims of likelihood of confusion and dilution were implausible and that the asserted trademark rights in a triangle design "conflict with the doctrine of aesthetic functionality and the prohibition against claims of trademark rights in gross."

The Board pointed out that "[a] motion to dismiss for failure to state a claim concerns only one issue: the legal sufficiency of the pleaded claims." It concluded that the motion had been properly considered.

The Board’s denial of the motion to dismiss set forth the legal standard for determining the sufficiency of the pleadings, the requirements for properly pleading likelihood of confusion and dilution, and the allegations in the petition to cancel which satisfied those requirements. Nothing more was necessary to explain that Petitioner properly pleaded its likelihood of confusion and dilution claims. Respondent’s further arguments regarding matters other than the legal sufficiency of the claims were superfluous.

Respondent’s arguments were in the nature of defenses, but the standard for considering a Rule 12(b)(6) motion is whether the complaint states a plausible claim for relief. The petition here met that standard.

The Board noted that respondent will have "the opportunity to assert any appropriate defense, develop the record, and argue the merits of its case, but consideration of the merits is premature at this juncture."

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TTABlog comment: Pretty basic, don't you think?

Text Copyright John L. Welch 2016.

IP Cases on Supreme Court Docket: October 2015 Term

Wolters Kluwer, in its IP Law Daily newsletter, provided a chart here listing the current "U.S. Supreme Court Docket, October 2015 Term — Intellectual Property Cases," with links to the docket sheet, the lower court ruling, and many of the pertinent briefs. Patent cases overwhelm the trademark cases in number. We will note below the few of the latter variety that concern TTAB-related matters.

Shammas v. Hirschfeld, formerly known as Shammas v. Focarino: Pending petition for a writ of certioriari from a ruling of the Fourth Circuit that in a Section 1071(b) civil action for review of an ex parte TTAB decision, the plaintiff/applicant must pay the PTO's expenses (including attorney and paralegal fees), win or lose (allegedly contrary to the "American Rule"). [TTABlogged here]. The USPTO filed is brief in response to the petition on February 3, 2016.

New Millennium Sports, S.L.U. v. Jack Wolfskin Ausrustung fur Draussen GmbH & Co. KGaA: Petition for certioriari denied on January 5, 2016. Sought review of a CAFC decision [TTABlogged here], which held that evidence of third-party use is "powerful on its face" even when the specific extent and impact of the usage has not been proven. The CAFC reversed a TTAB decision that had found the marks shown below to be confusingly similar for clothing items.

Couture v. Playdom: Petition for certioriari denied on October 5, 2015. David Couture sought review of the CAFC's ruling [TTABlogged here] that his application to register a service mark for certain entertainment services was void ab initio because he had not "rendered" the services prior to the date of filing his use-based application.

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

WYHA? "HEALTHY HEMP" Merely Descriptive of Hemp-Containing Baked Goods, Says TTAB

The Board affirmed a Section 2(e)(1) refusal to register HEALTHY HEMP, finding it merely descriptive of "bakery goods; breads; tortillas; all of the foregoing containing hemp" [HEMP disclaimed]. Applicant argued that the mark as a whole "has no meaning," and that "the Board has approved marks that convey more about the respective goods or services than does Applicant's mark." Would You Have Appealed? In re French Meadow Organic Bakery, LLC, Serial No. 86243820 (February 4, 2016) [not precedential].

Examining Attorney Robert J. Struck relied on dictionary definitions of "healthy" ("conducive to health") and "hemp" ("a tall widely cultivated Asian herb (Cannabis sativa of the family Cannabaceae, the hemp family) that has a tough bast fiber used especially for cordage ...."), and on Internet pages referring to "healthy hemp" in the context of food (e.g., "7 Healthy Hemp Foods to Try"). The Board was convinced:

Based on this evidence, we find that the mark HEALTHY HEMP directly conveys to consumers that the bakery products, breads and tortillas are healthful products, and that they are hemp-based products. Therefore, the proposed mark HEALTHY HEMP is a combination of two adjectives which describe Applicant’s products (e.g., a healthy, hemp tortilla).

Applicant maintained that its mark "as a whole has no meaning and thus, is not descriptive of any goods.... [C]ombining the terms has no known significance and creates a unique impression which is inventive [sic]." The Board was unmoved.

As to third-party registrations of other marks, the Board once again observed: "It is well settled that the Board must address each case on its own merits," based on the record before it. In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)."

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 2016.

Precedential No. 2: TTAB Denies Protective Order Motion and Sanctions Movant

The Board was not pleased with Applicant Rani Sachdev's motion for a protective order, filed on the day her discovery responses were due. It denied the motion as deficient and meritless, ordered Sachdev to show cause why sanctions should not be imposed, and barred her from filing any unconsented or unstipulated motion without Board permission. Emilio Pucci International BV v. Rani Sachdev, 18 USPQ2d 1383 (TTAB 2016) [precedential].

Opposer Emilio Pucci opposed Sachdev's application to register the mark St. Pucchi, in the stylized form shown above, for women's clothing, on the grounds of likelihood of confusion, dilution, and lack of ownership. It served a first set of discovery requests comprising 27 numbered interrogatories, 31 numbered document requests, and 83 numbered requests for admission. Applicant's counsel, on the day her discovery responses were due, sent three emails to Opposer's counsel requesting extensions of time (of decreasing length), but Opposer's counsel responded that she was unable to obtain instructions from Opposer. Applicant then filed a motion for protective order under FRCP 26(c), claiming that the discovery requests were overly broad and burdensome.

The Board first pointed out that filing a motion for a protective order, instead of responding and/or objecting to discovery requests, is generally not the proper course of action. See TBMP Sections 405.04(b), 406.04(c), and 410. With regard to interrogatories in particular, if the receiving party believes that the number exceeds the seventy-five interrogatory limit of Rule 2.120(d)(1), that party may serve a general objection. The purpose of the Rule is to "advance the discussion" between the parties and to "encourage them to discuss" their differences. Allowing a party to seek a protective order when there has been insufficient effort to resolve the dispute "is an entirely unworkable and impracticable approach that reflects a disregard for the affirmative duty to cooperate in the discovery process."

However, a party  may seek a protective order where it is "readily apparent that the discovery requests are so oppressive as to constitute clear harassment." Domond v. 37.37, Inc., 113 USPQ2d 1264, 1266 (TTAB 2015). Rule 2.120(f) provides, in pertinent part, that the Board may "make any order which justice requires to protect a party from annoyance, embarrassment, oppression, or undue burden or expense ...." In such case, the movant must establish good cause for the issuance of a protective order, i.e., "a particular and specific demonstration of fact, as distinguished from stereotyped and conclusory statements." The Phillies v. Philadelphia Consol. Holding Corp., 51 USPQ2d 1759, 1761 (TTAB 2013); and see FRCP 26(c)(1).

Applicant Sachdev made no effort to resolve the disputed issues before filing her motion. That lack of good faith effort was alone a sufficient basis for denial of the motion.

As to whether a protective order was warranted, the Board expects the parties to apply the principles of proportionality with regard to discovery. Domond at 1268; and see TBMP Section 402.01 and FRCP 26(b)(1) (as amended on December 1, 2015). The Federal Rule now states:

[u]nless otherwise limited by court order ... [p]arties may obtain discovery regarding any nonprivileged matter that is relevant to any party’s claim or defense and proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties’ relative access to relevant information, the parties’ resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit.

Applying the principle of proportionality here, the Board found no basis for concluding that Opposer's discovery requests would cause annoyance, embarrassment, oppression or undue expense. The discovery requests were standard and typical for this type of proceeding, and were tailored to seek relevant information. The interrogatories, under any counting method, did not exceed seventy-five in number.

Moreover, Applicant's motion lacked any legal citation or supporting argument, but rather contained  conclusory, "boilerplate" statements, with no explanation as to why the requests were burdensome or oppressive. The fact that Applicant filed her motion on the very day her responses were due was also troubling to the Board. She could have requested an extension of time prior to, or even on, the due date. Her unfounded and improper motion "calls into question whether Applicant had any objective for filing it other than to stall the proceeding."

The Board therefore denied the motion. Furthermore, exercising its inherent power to impose any sanction provided for by FRCP 37(b)(2), the Board allowed Applicant 15 days within which to show cause as to why the Board should not sanction her by finding that (1) she has forfeited her right to object on the merits to Opposer's discovery requests, and (2) Opposer's requests for admissions are deemed admitted  pursuant to FRCP 36(a)(3).

In addition, the Board barred Applicant from filing any unconsented or unstipulated motion in this proceeding without first requesting and receiving the Board's permission to do so.

Read comments and post your comment here.

TTABlog comment: Hard to understand why applicant did not simply file a request for extension even without Opposer's consent.

Text Copyright John L. Welch 2016.

WYHA? CARBON ELIMINATOR Merely Descriptive of Fuel Additive, Says TTAB

The Board affirmed a Section 2(e)(1) refusal to register the mark CARBON ELIMINATOR, finding it to be merely descriptive of "non-chemical enzyme fuel additive" [CARBON disclaimed]. Applicant's own specimen of use stated that the product "removes tough carbon deposit." Would You Have Appealed? In re Star-Brite Distributing, Inc., Serial No. 86344788 (February 2, 2016) [not precedential].

Examining Attorney Vivian Micznik First relied on a dictionary definition of "eliminate" - "to remove or take out, get rid of." Applicant's product description proclaimed that the product "uses enzyme technology to remove carbon, gum and varnish deposits."

The Board declared that "it is settled that where marks describe the intended purpose of the goods in connection with which they are used, they are merely descriptive."

Applicant's double-entendre argument (consumers couuld believe it to be a product that eliminates carbon dioxide) was both strange and unavailing, since the supposed second meaning of the mark was also descriptive of the goods. Finally, Applicant pointed to allegedly similar third-party marks, but the Board pointed out once again, quoting In re Datapipe, Inc., that "each application must be examined on its own merits. Neither the Trademark Examining Attorney nor the Board is bound to approve for registration an Applicant’s mark based solely upon the registration of other assertedly similar marks for other goods or services having unique evidentiary records."

The Board had no doubt as to the descriptiveness of CARBON ELIMINATOR, and so it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Any thoughts?

Text Copyright John L. Welch 2016.

TTAB Renders Split Decision in MONSTER v. MONSTERFISHKEEPERS Double-Header

The Board sustained Monster Energy's opposition to registration of the M Design mark shown below left, finding it likely to cause confusion with Monster Energy's registered design mark shown below right, for overlapping clothing items. However, the Board dismissed Monster Energy's opposition to registration of MONSTERFISHKEEPERS, in standard character form, finding it not likely to cause confusion with opposer's common law mark MONSTER, both for clothing items. Monster Energy's dilution-by-blurring claim directed at the MONSTERFISHKEEPERS mark failed utterly. Monster Energy Company v. Li-Wei Chih, Consolidated Oppositions Nos. 91205893 and 91205924 (February 1, 2016) [not precedential]

Evidence of third-party use of MONSTER-formative marks led the Board to find that the mark MONSTER is "somewhat weak for clothing." The letter M, however, was not shown to be similarly weak.

As to the marks, the Board found the two design marks to be "overall quite similar."

We do not ignore the design elements in the marks unique to each mark, particularly Applicant’s use of devil horns and tail and Opposer’s mark appearing to be a three-pronged claw mark. However, we must further keep in mind that the test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather the focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. *** Under actual marketing conditions, consumers do not necessarily have the luxury of making side-by-side comparisons between marks, and must rely upon their imperfect recollections

As to the word marks MONSTER and MONSTERFISHKEEPERS, "the additional matter in Applicant’s mark plays a significant role in helping to create a commercial impression that is quite different from Opposer’s mark, MONSTER."

That is, consumers encountering Applicant’s mark will quickly discern the three recognizable words, MONSTER and FISH and KEEPERS. Applicant introduced evidence showing that the first two terms or “monster fish” may be used to describe an extremely large fish kept as a pet or a gigantic fish that might be described fantastically as a “monster."

The Board therefore found the marks to be different in appearance and sound and, "most importantly," in their meanings. "The similarity of the marks based on Applicant’s incorporation of Opposer’s mark is outweighed by the differences, especially the connotation of MONSTERFISHKEEPERS versus that of MONSTER. Accordingly, this factor weighs against finding a likelihood of confusion."

The Board therefore dismissed the Section 2(d) claim.

As to the dilution claim (involving only the word mark MONSTERFISHKEEPERS), Opposer did not prove that its MONSTER mark was famous prior to 2010, Applicant's first use date. Moreover, the marks MONSTER and MONSTERFISHKEEPERS have little similarity, and in any case Opposer is not the sole user of the mark MONSTER. There was no direct evidence of the level of recognition of the MONSTER mark, little evidence of an intent on the part of Applicant to associate his mark with the MONSTER mark, and no proof of actual confusion.

Read comments and post your comment here.

TTABlog comment: It seems to me that Applicant was trying to suggest Opposer's marks without copying them exactly. What do you think? BTW, note that Applicant was represented by Eve Brown of the Boston University Law School Clinic, and formerly of the Suffolk University Law School Clinic.

Text Copyright John L. Welch 2016.

TTABlog Road Trip: Beverly Hills Bar Association, February 11th

Yours truly, the TTABlogger, will share the podium with TTAB Judge Lorelei Ritchie at a luncheon gathering of the Beverly Hills Bar Association, for a presentation entitled "The TTAB Comes to the BHBA." The event is hosted by the BHBA's IP, Internet & New Media Section, on Thursday, February 11, 2016, from 12:00 to 2:00 PM. Registration here.

Judge Ritchie will present tips on best practices for making your case before the TTAB, including trial and briefing, as well as tips for ex parte appeals. Yours truly will discuss ......... wait for it........ recent developments at the TTAB (and in the courts)!

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

How Often Did the TTAB Affirm a Section 2(d) Refusal in 2015? a 2(e)(1) Mere Descriptiveness Refusal?

This weekend I went to the TTAB's FOIA page in an attempt to determine, or at least estimate, the percentage of Section 2(d) likelihood-of-confusion refusals and Section 2(e)(1) mere descriptiveness refusals that were affirmed/reversed by the Board during the calendar year 2015. The highly unscientific results are set out below.


Section 2(d): I counted 223 Section 2(d) refusals, of which 188 were affirmed and 35 reversed. That's an affirmance rate of about 85%. [Down from a whopping 91% last year and more in line with the past few years].

Seven of the opinions were deemed precedential. The HUGHES FURNITURE, HOUSE BEER, MARAZUL, C.J. HANSON, and I AM refusals were affirmed. The TERRAIN and ALLEGIANCE STAFFING refusals were reversed.

NB: Some cases involved a mark in standard character and stylized form, and I counted that situation as one refusal.

Section 2(e)(1) mere descriptiveness: Of the 97 Section 2(e)(1) mere descriptiveness refusals, 84 were affirmed and 13 reversed, for an affirmance rate of approximately 86%. That is consistent with estimates that I and others have made in past years.

The only precedential opinion, in the SMART SERIES case, was affirmed.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

TTAB Posts February 2016 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled five (5) oral hearings for the month of February, 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.



February 10, 2016 - 10 AM: In re Summit Entertainment, Inc., Serial Nos. 77921983, 77921986, 77921988, 77921992, and 77921993. [Section 2(d) refusals to register the mark ECLIPSE for various goods relating to motion pictures and entertainment, in classes 9, 14, 18, 24, and 25, in view of, respectively, several class 9 registrations for the identical mark, a registration of the identical mark for watches in class 14, three registration in class 18 for ECLIPSE, ECLIPZE, and ECLIPS & Design, a class 24 registration of ECLIPSE for curtains, and a class 25 registration of the identical mark for footwear].

February 17, 2016 - 10 AM: Smart Closets LLC v. Produits Forestiers Direct Inc./Direct Forest Products Inc., Opposition No. 91210215 [Opposition to registration of SMART CLOSET for "modular storage systems, namely, shelves units, cabinets, rails, doors, shelves, poles, clothes bars, drawers and drawer units, being installed in wardrobes or any other room of a house, office or garage," on the ground of lack of bona fide intent to use the mark in commerce].

February 23, 2016 - 2 PM: In re Fullscreen, Inc., Serial No. 85951468 and 85951513 [Refusal to register the mark FULLSCREEN, in standard character and design form, for various services relating to development, distribution and production of advertisements and digital content].

February 23, 2016 - 3 PM: In re United States Steel Corporation, Serial No. 86174180 [Section 2(a) deceptiveness refusal to register COPPER-10 for prepainted coated sheet steel, namely, coated sheet steel prepainted to simulate naturally weathered copper"].

February 24, 2016 - [Time to be determined]: In re Loggerhead Tools, LLC, Serial No. 85598798 [Refusal to register a motion mark "depicting the product configuration of a hand tool in which six rectangular-shaped jaw-like elements of the circular head of a hand tool radially move in and out," for "Hand tools, namely, gripping tools in the nature of wrenches and wire crimpers for sale through mass merchandisers to retail consumers," on the ground of Section 2(e)(5) functionality]. [Video specimen of use here].

Read comments and post your comment here.

TTABlog note: See any WYHA?s here?

Text Copyright John L. Welch 2016.