TTAB Posts April 2016 Hearing Schedule [Part 2]

The Trademark Trial and Appeal Board has scheduled ten (10) oral hearings for the month of April. The first five (5) were listed yesterday. The next five (5) are listed below. These five (5) 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.


April 20, 2016 - 2:30 PM: In re Jetpay Corporation, Serial No. 85754561 [Section 2(e)(1) mere descriptiveness refusal of MONEY ACCESS CENTER for "debit card, prepaid debit card, and stored value card services; banking services; financial information services"].

April 21, 2016 - 10 AM:  Atari Interactive, Inc. v. Andrew N. Greenberg, Opposition No. 91202952 [Opposition to registration of HAUNTED HOUSE TYCOON for "computer game software" in view of the registered mark HAUNTED HOUSE for computer and video games and related goods].

April 21, 2016 - 2 PM: LuckyU Enterprises, Inc., dba Giovanni's Original White Shrimp Truck v. John "Giovanni" Aragona, Cancellation No. 92057023 [Petition for cancellation of registrations for the marks GIOVANNI'S ALOHA FOODS, GIOVANNI'S SCAMPI MARINADE, GIOVANNI'S ORIGINAL WHITE SHRIMP TRUCK, and GIOVANNI'S HOT & SPICY WE REALLY MEAN IT SAUCE! for food services, marinades, and hot sauce, on the grounds of abandonment and likelihood of confusion with petitioner's alleged common law trademarks containing the term GIOVANNI'S].

April 26, 2016 - 10 AM: Eden Foods, Inc. v. Kelly M. Biensen, Opposition No. 91202409 [Opposition to registration of EDEN FARMS NATURALLY GOOD FOOD for "Meats, namely, pork" in view of opposer's alleged family of EDEN marks for various food items and food-related services].

April 26, 2016 - 11 AM: Edens Foods, Inc. v. Eden's Gardens Cafe, Inc., Opposition No. 91209895 [Opposition to registration of the mark shown below, for "Restaurant and café services; Restaurant services featuring American and Italian cuisine, sandwiches, and vegetarian entrees; Delicatessen services; Bar services; Coffee shop services; Catering services," in view of the opposer's alleged family of EDEN marks for various food items and food-related services].

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TTABlog note: Any predictions?

Text Copyright John L. Welch 2016.

TTAB Posts April 2016 Hearing Schedule [Part 1]

The Trademark Trial and Appeal Board has scheduled five (V) oral hearings for the month of April. The hearings (except for the second one) 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.


April 6, 2016 - 2 PM: In re Openings, Serial No. 86044043 [Section 2(e)(5) functionality refusal of the product configuration shown below, comprising a U-shaped channel that runs the full length of a door at its top and bottom, for "metal doors, commercial reinforced steel doors" and for "non-metal doors"].

April 7, 2016 - 10:15 AM [ABA Annual IP Law Conference, Bethesda, Maryland]: Nash-Finch Company v. Ahold Licensing Sarl, Cancellation No. 92058000 [Petition for cancellation of a registration for the mark shown below, for "charitable fundraising services" [FOUNDATION disclaimed], in view of petitioner's registered OUR FAMILY marks for food products and its common law OUR FAMILY marks for fundraising services and charitable efforts].

April 12, 2016 - 2 PM: Ananda Marga Universal Relief Team and Ananda Marga Universal Relief Team, Inc. v. Foundation Amurt (Switzerland), Oppositions Nos. 91125116 and 91161067 [Fourteen (14)-year old opposition to registration of the mark shown below for charitable and educational services, in view of opposer's alleged prior use of virtually the same mark for the same services].

April 19, 2016 - 11 AM: In re Tango Card, Inc., Serial No. 86314468 [Section 2(d) refusal to register the mark REWARDS GENIUS for "Computer services, namely, providing a website featuring technology that allows enterprise business users of an online web interface to create and manage a rewards and recognition program, namely, account creation, account funding, catalog management, rewards delivery, and order management and history" [REWARDS disclaimed], in view of the registered mark GENIUS for "Administration of a customer loyalty program which provides cash rewards and incentives for sale and usage of transaction cards, electronic accounts, wireless communication devices and other payment devices or loyalty programs"].

April 20, 2016 - 2 PM : In re Apple, Inc., Serial No. 77844736 [Refusal to register the mark shown below for "Application programming interface computer software for use in developing applications for execution on central processing units (CPU) or graphic processor units (GPU), sold as an integral component of computer operating software" on the grounds that the mark identifies an industry standard and therefore fails to function as a mark, that applicant uses the mark as a certification mark through a licensee, that the specimen does not show use of the mark for the goods, and that the mark is not used on goods in trade]. 


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TTABlog note: See any WYHA?s here? A WYHO? or WYHPTC?

Text Copyright John L. Welch 2016.

TTAB Affirms Section 2(a) Deceptiveness Refusal of EMDROPS for Liquid Supplements

The Board affirmed two refusals to register the mark EMDROPS for "dietary and nutritional supplements in liquid form which do not include effective microorganisms or efficient microbes," finding the mark to be deceptive under Section 2(a), and perforce deceptively misdescriptive under Section 2(e)(1). The Board concluded that "EM" describes goods that contain "effective microorganisms," which applicant's goods do not contain. In re Manpreet S. Wadhwa, Serial No. 86013037 (February 16, 2016) [not precedential].

A mark is deceptive under Section 2(a) if (1) it consists of or contains a term that misdescribes the character, quality, function, composition, or use of the goods and/or services; (2) prospective purchasers are likely to believe that the misdescription actually describes the goods and/or services; and (3) the misdescription is likely to affect the purchasing decision of a significant portion of relevant consumers. A mark may be deemed deceptive even if the descriptive term is embedded in a larger mark.

The Board found that, given the generic nature of DROPS, consumers will perceive applicant's mark as a combination of the terms "EM" and "DROPS." Applicant did not argue otherwise, but he maintained that EM would be perceived as an abbreviation for "essential minerals" or "electrolyte minerals," which ingredients are present in applicant’s drops.

Examining Attorney Brin Anderson Desai submitted Internet evidence showing that the term "effective microorganisms" and its abbreviation EM were apparently coined by Professor Teruo Higa from the University of the Ryukyus in Okinawa, Japan, in connection with research regarding the alleged beneficial effects, on soil, of combinations of different microorganisms. He touted these "EM combinations" as beneficial in a wide range of unrelated fields. Several articles used the abbreviation EM in discussion microorganisms in the field of human health. In addition, other websites offer products that contain effective microorganisms, sometimes referring to them as "EM" or "probiotics."

In addition there are six third-party registrations for marks including the term EM for dietary supplements that include a disclaimer of EM or that have been registered under Section 2(f) [Five of the registrations are owned by Professor Higa's company].

Based on this evidence, the Board found that EM describes goods that contain effective microorganisms. Because applicant's goods to not contain effective microorganisms, the applied-for mark is misdescriptive of them.

Applicant argued that because EM is not commonly used with supplements, consumers will more likely view EM as meaning "essential minerals." Four third-party registrations from marks containing the term EM were deemed by the Board to have little probative value. In sum, applicant's evidence failed to convince the Board that supplements could not contain "essential microorganisms." Therefore, the Board concluded that consumers would believe the misdescription of applicant's goods.

Finally, the evidence showed that the health benefits of "essential microorganisms" have been touted in connection with the sale of dietary supplements.

Consumers are likely to believe that dietary and nutritional supplements that contain EM bestow unique health benefits to those who consume them. The greater marketability or desirability of the product is thus likely to induce prospective buyers to purchase the goods.

The Board concluded that the Office had made a prima facie case under Section 2(a), and applicant failed to overcome that showing.

The Board's findings under the first and second prongs of the deceptiveness test sufficed to support the refusal of the mark as deceptively misdescriptive under Section 2(e)(1) of the Act.

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TTABlog comment: Note that a mark that is primarily deceptively misdescriptive is still eligible for registration via Section 2(f), but a deceptive mark is not.

Text Copyright John L. Welch 2016.

Precedential No. 6: IMÁGENES ESCONDIDAS and HIDDEN PICTURES Not the Same Mark, TTAB Affirms Mere Descriptiveness Refusal

Ruling that the marks IMÁGENES ESCONDIDAS and HIDDEN PICTURES are not "the same mark" for Section 2(f) purposes, the Board affirmed a Section 2(e)(1) mere descriptiveness refusal to register the former for "books and magazines for children." Although IMÁGENES ESCONDIDAS means "hidden pictures" in English, the Board ruled that the acquired distinctiveness of the registered HIDDEN PICTURES mark could not be transferred to IMÁGENES ESCONDIDAS. In re Highlights for Children, Inc., 118 USPQ2d 1268 (TTAB 2016) [precedential].

Mere Descriptiveness: Although applicant provided a translation of IMÁGENES ESCONDIDAS as "hidden pictures," it maintained that the doctrine of foreign equivalents would not apply because consumers would not "stop and translate the mark" in light of the manner in which the mark is used: i.e., the mark will always appear along with the English HIDDEN PICTURES on applicant's bilingual puzzle publications, and so there will be no need to translate the mark.

The Board was unmoved. First, because applicant is applying to register the mark IMÁGENES ESCONDIDAS alone, the Board must assume it will be used alone, without a translation. Second, when the translation is provided, the consumer will still recognize the terms as equivalent. In short, the policy basis of the doctrine of equivalents applies: "whether a translation is made by the purchaser or provided to the purchaser; the result is the same." (Emphasis by the Board).

Next, applicant argued that "hidden pictures" is not merely descriptive of a feature or characteristic of its goods because its puzzles involve locating objects that are not concealed, but rather are "right before your very eyes." Thus, according to applicant, "hidden" in this context is not descriptive but ironic. The Board again was unmoved. Dictionary definitions of "hidden" include "unseen" and "not readily apparent." The Board had no doubt that "hidden pictures" is merely descriptive of a feature of the goods.

Acquired Distinctiveness: Applicant claimed acquired distinctiveness under Section 2(f) in view of its existing Section 2(f) registration for HIDDEN PICTURES for "magazines, puzzlebooks, and an ongoing feature in Highlights for Children magazine," and also in view of the fame and recognition of the HIDDEN PICTURES mark.

As to the prior registration, Trademark Rule 2.41(a)(1) provides that ownership of a prior registration of the same mark" may be accepted as prima facie evidence of distinctiveness if the involved goods or services are sufficiently similar. In Dial-A-Mattress, the CAFC explained that a proposed mark is the "same mark" if it is the "legal equivalent" of that mark: "A mark is the legal equivalent of another if it creates the same, continuing commercial impression such that the consumer would consider them both the same mark. *** No evidence need be entertained other than the visual or aural appearance of the marks themselves." Id.

The question of whether a foreign translation of a registered English language is the "same mark" as the English language mark under Rule 2.41(a)(1) is an issue of first impression.

Applying the Dial-A-Mattress standard, the Board found the answer to be readily apparent: "IMÁGENES ESCONDIDAS, even though it has the same meaning as HIDDEN PICTURE, is not 'the same mark' as HIDDEN PICTURES." They are different aurally and visually, and according to Dial-A-Mattress no other evidence need be considered.

The Board observed that, according to the Supreme Court in Hana Bank, "the question of whether two marks give the same impression to consumers 'involves a factual judgment,'" but applicant did not provide any evidence "demonstrating that consumers would consider IMÁGENES ESCONDIDAS and HIDDEN PICTURES to be the same mark even if they understood the equivalence in meaning."

Contrary to applicant's argument, the legal equivalency of two marks for purposes of Rule 2.41(a)(1) is not dependent on whether a consumer will stop and translate the mark, but on whether the marks create the same commercial impression.

In other words, whether two marks are foreign equivalents is a different question than whether two marks give consumers the same commercial impression. As noted, the marks are not similar in sound or appearance, and there is no evidence in the record demonstrating that IMÁGENES ESCONDIDAS and HIDDEN PICTURES create the same continuing commercial impression.

The Board next considered whether the record evidence established the fame of the HIDDEN PICTURES mark, and if so, whether Spanish-speaking consumers who translate the applied-for mark to HIDDEN PICTURES will immediately recognize it as an indicator of source. Applicant's evidence, however, was minimal and primarily concerned its HIGHLIGHTS mark, rather than HIDDEN PICTURES. Nonetheless, in view of the length of use and the number of magazines in or on which the mark HIDDEN PICTURES has appeared, the Board found that HIDDEN PICTURES "has achieved recognition among the consuming public."

However, the strength of the HIDDEN PICTURES mark "does not ipso facto mean that Spanish speaking consumers will immediately recognize that IMÁGENES ESCONDIDAS represents the same source of "books and magazines for children" as HIDDEN PICTURES.

Without additional evidence showing that Spanish-speaking consumers in the United States recognize that IMÁGENES ESCONDIDAS is an indicator of origin in Applicant, especially when Applicant has not used IMÁGENES ESCONDIDAS in the United States, we find Applicant’s argument to be unconvincing.

The Board therefore affirmed the Section 2(e)(1) refusal.

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TTABlog comment: Interesting that applicant cold show acquired distinctiveness for the applied-for mark in the United States, even though the goods have not been sold in the United States.

Text Copyright John L. Welch 2016.

TTAB Test: Which One of these Mere Descriptiveness Refusals Was Reversed?

By my estimation, somewhere around 85% of all Section 2(e)(1) mere descriptiveness refusals that go to final decision at the TTAB are affirmed. Well, here are four appeals that were recently decided. One was reversed. Which one, pray tell? Do you see any WYHA?'s here? [Answer in first comment].



In re Fuel Industries, Inc., Serial No. 86185707 (March 18, 2016) [not precedential]. [Refusal of BRODDCAST for "Multimedia software for digital content creation of entertainment videos using electronic media; multimedia software for digital video recording, editing and playback of videos; multimedia software for digital recording, editing and playback of entertainment videos; downloadable software for digital recording, editing and playback of entertainment videos"].

In re Silhouette America, Inc., Serial No. 86228926 (March 1, 2016) [not precedential]. [Refusal of PIXSCAN for "Computer software for use in capturing images and operating cutting machines, cutters, and plotters for cutting textile, paper, and cardstock in sheet or roll form in the field of crafts" and "Cutting mats for capturing images from which designs for cutting machines for textile, paper and cardstock are generated"].

In re Lawrence Foods, Inc., Serial No. 86256664 (March 3, 2016) [not precedential]. [Refusal of CHOCOLATE GLAÇAGE "icing and glazes for cakes, pies, donuts, and bakery goods"].

In re Paradise Mountain Organic Estate Coffee Ltd., Serial No. 86407960 (February 24, 2016) [not precedential]. [Disclaimer requirement of THE WORLD'S MOST SUSTAINABLE in the mark shown below for coffee, tea, and related products].

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

Fourth Circuit Vacates FLANAX Decision and Remands to E.D. Va.

Yesterday, the U.S Court of Appeals for the Fourth Circuit vacated the FLANAX decision of the U.S. District Court for the Eastern District of Virginia (here), and remanded the case to the district court for further proceedings. The lower court had dismissed Bayer's Section 43(a) false association and false advertising claims under FRCP 12(b)(6) and entered judgment on the pleadings as to Bayer's Section 14(3) claim, based on the district court's reading of the Supreme Court's Lexmark decision. Belmora LLC v. Bayer Consumer Care AG and Bayer Healthcare LLC, 819 F.3d 697 (4th Cir. 2016) [precedential], cert. denied, 137 S. Ct. 1202 (2017).


Belmora's FLANAX
[Caveat: as co-counsel to Belmora on this appeal, I will confine this post to a brief overview of the decision, leaving it up to my dear readers to absorb the entire opinion].

The district court ruled that the Lanham Act does not allow an owner of a foreign mark not registered in the United States, who does not use the mark in the United States, to assert priority rights over a mark [FLANAX] that is registered and used by another party [Belmora] in this country.

The Fourth Circuit concluded that the district court misapplied the Lexmark ruling:

The primary lesson from Lexmark is clear: courts must interpret the Lanham Act according to what the statute says. To determine whether a plaintiff, "falls within the class of plaintiffs whom Congress has authorized to sue," we "apply traditional principles of statutory interpretation." Id. at 1387. The outcome will rise and fall on the "meaning of the congressionally enacted provision creating a cause of action." Id. at 1388.

The Fourth Circuit observed that there is no requirement in the language of Section 43(a) that a plaintiff must have used its own mark in commerce. The district court erred in requiring Bayer to have pled use of its own mark in commerce "when it is the defendant's use of a mark or misrepresentation that underlies the Section 43(a) unfair competition cause of action."

Section 43(a) claims: The appellate court then applied Lexmark and found that Bayer's claims of unfair competition fall with the Lanham Act's protected zone of interests, and that Bayer pleaded "proximate causation of a cognizable injury." Bayer claimed that Belmora's "misleading association with BCC's FLANAX has caused customers to buy the Belmora FLANAX in the United States instead of purchasing BCC's FLANAX in Mexico." In short, BCC lost sales revenues in Mexico.

The Fourth Circuit concluded that Bayer adequately pled a Section 43(a) claim, the allegations reflecting the Lanham Act's purpose of preventing "the deceptive and misleading use of marks" in "commerce withing the control of Congress."

As to proximate cause, Bayer alleged lost sales in Mexico, and so Bayer may plausibly claim damages from Belmora's allegedly deceptive use of the FLANAX mark.

At this inital pleading stage, the court must draw all reasonable inferences in Bayer's favor. It concluded that Bayer sufficiently pled a false association cause of action under Section 43(a).

Bayer also alleged a false advertising claim under 43(a), and this claim also falls within the Lanham Act's zone of protection. Belmora's allegedly deceptive advertising could have resulted in U.S. customers Belmora's FLANAX instead of Bayers' ALEVE brand product. These lost customers satisfy the requirement of injury proximately cause by the challenged conduct.

The appellate court therefore concluded that the Lanham Act allows Bayer to proceed with its Section 43(a) claims. However, the court noted, Bayer must still prove injury proximately caused by Belmora's conduct.

The Board noted that it did not conclude that Bayer "has any specific rights in the FLANAX mark" in the United States. Belmora owns the mark. But Belmora may not use the mark "to deceive customers as a source of unfair competition." It is up to the district court to fashion an appropriate remedy.

Section 14(3): Again applying Lexmark, the Board agreed with Bayer that Section 14(3) of the Lanham Act, which permits cancellation of a registration for a mark that is being used to misrepresent source, does not include a use requirement, and such a requirement cannot be read into that section. Thus the district court erred in reversing the TTAB's decision ordering cancellation of the FLANAX registration.

The appellate court remanded the case to the district court for further proceedings consistent with its opinion.

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

TTAB Test: Are These Logo Marks for Coffee Confusingly Similar?

Torrefazione Italia LLC petitioned for cancellation of Trinidad Coffee Company's registration for the mark shown to the right, for coffee, claiming likelihood of confusion with the two marks shown below, for coffee products. The goods are legally identical, and presumably they travel through the same channels of trade to the same classes of consumers. The Board found Petitioner's marks to be "strong in the coffee beverage industry and thus accorded a broad scope of protection." So it all percolated down to one issue: are the marks confusingly similar? They both depict griffins. How do you think this came out? Torrefazione Italia LLC v. Trinidad Coffee Company, Inc., Cancellation No. 92058192 (March 10, 2016) [not precedential].

The Board found that consumers are likely to recognize the animals depicted in the marks as griffins, a beast resembling a lion in a "rampant" stance. But consumers will also perceive the "major differences" in the animals:

Petitioner’s griffin has a large mane, wears a crown and has a long tail, a beak and soft wings. It resembles a lion. Respondent’s griffin has no mane or crown, sports a serpent-like tongue and scales on its wings, and has no tail. It does not resemble a lion. Notably, Respondent’s griffin’s legs are not visible; the griffin may be sitting on a pedestal or standing with legs obscured by the pedestal. Petitioner’s griffin is in the classic “rampant” position.

Moreover, comparing the marks in terms of overall appearance, pronunciation, connotation and commercial impressions, the Board concluded that there is no likelihood that consumers will confuse the source of each parties’ goods based on the marks.

As to appearance, the marks "do not look anything alike." Petitioner's marks include additional design features, including "concentric circles, curlicues, and an abstract representation of the Italian flag that underscores the Italian theme of the mark." Moreover, the prominent wording TERRAFAZIONE ITALIA COFFEE encircles the mark.

Respondent's mark is open at the top and features a seated griffin on a pedestal etched with the capital letter “T” surrounded by a laurel wreath. "The conspicuous griffin in the center of Respondent’s mark and the smaller griffin in Petitioner’s marks are so dissimilar in appearance, as are the marks overall, that the fact that both include a griffin design is an insufficient basis upon which to find likely confusion."

As to pronunciation, Respondent's letter "T" sounds nothing like TERRAFAZIONE ITALIA COFFEE [Doh! - ed.]. As to connotation, Petitioner's marks suggest an Italian brand of coffee, whereas Respondent's mark does not.

The CAFC has recognized that a single du Pont factor may be dispositive, "especially when that single factor is the dissimilarity of the mark."

The Board therefore dismissed the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: WYHP?

Text Copyright John L. Welch 2016.

TTAB Orders Cancellation of Supplemental Registration Due to Non-Ownership

The Board granted a petition for cancellation of a registration for the mark THE AMERICAN COLLEGE OF VETERINARY SPORTS MEDICINE AND REHABILITATION for "veterinary education services namely conducting classes, seminars, clinical seminars, conferences, workshops and internships and externships in veterinary sports medicine and veterinary rehabilitation," ruling that Registrant Sheila Lyons never owned the mark, and therefore that her underlying application was void ab initio. The American College of Veterinary Sports Medicine and Rehabilitation v. Sheila Lyons, Cancellation No. 92053934 (March 17, 2016) [not precedential].

Respondent Lyons claimed to be the first user of the term, but the Board looked at the big picture: "Even if Respondent made some early use of the mark between its conception and her contact with Dr. Gillette in 1999, that alone does not suffice to establish ownership. 'In a dispute over priority of use for a mark requiring secondary meaning, mere priority of use (as for technical trademarks) is insufficient. It is the party who first achieved trademark significance in the mark through secondary meaning who is the senior user of such a mark.'"

Pamela Chestek, IP ownership maven, tells the story here at her Property, Intangible blog.

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

Precedential No. 5: Fame of Movie "JAWS" Supports 2(d) Refusal of Cooking Show Marks

In an ex parte context, fame is seldom a factor in the du Pont analysis due to lack of evidence , but here Examining Attorney Sara N. Benjamin's submissions demonstrated that the movie JAWS "is so well-known movie that it set the standard for summer blockbusters." The Board affirmed refusals to register the marks JAWS and JAWS DEVOUR YOUR HUNGER for "entertainment, namely, streaming of audiovisual material via an Internet channel providing programming related to cooking," finding the marks likely to cause confusion with the registered marks JAWS for "video recordings in all formats all featuring motion pictures." In re Mr. Recipe, LLC, 118 USPQ2d 1084 (TTAB 2016) [precedential].

Fame: The Examining Attorney relied on various websites proclaiming JAWS to be one of the best movies of all time. It was"phenomenally successful" at the box office and started a marketing trend that "has become the standard for success in the film industry." The Board recognized the potential admissibility issues with this evidence [e.g., hearsay], but it observed that the CAFC has approved the use of Internet evidence in ex parte proceedings. See, e.g., In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007) ("[i]nternet evidence is generally admissible and may be considered for purposes of evaluating a trademark").

Applicant conceded that the JAWS movie is "well-known in the movie industry," but argued that the evidence showed, at most, "niche fame" for a "40-year-old thriller about a shark," and that such evidence is insufficient to establish fame under Section 2(d). The Board found, however, that JAWS is not just the name of a single movie, but a series of movies. "[T]he renown and success of JAWS-inspired sequels and reissued versions of the original demonstrates that 'JAWS' is famous as the source identifier for a series of 'video recordings in all formats all featuring motion pictures.'"

Moreover, the Board observed, although the "niche fame" argument may serve to counter a showing of fame in the dilution context, it does not apply in the context of likelihood of confusion. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005)(“While dilution fame is an either/or proposition—fame either does or does not exist—likelihood of confusion fame varies along a spectrum from very strong to very weak.”(internal quotation omitted)).

In any case, the Board noted [in dictum] that "the evidence shows that JAWS has permeated into general culture, including being parodied by filmmakers; and its fame is not limited to subject matter such that it would be confined to 'a 'niche' level of fame.'"

Strength of the cited mark: The fame of the cited mark alone is, of course, not enough to establish a likelihood of confusion. See, e.g., Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54USPQ2d 1894, 1898 (Fed. Cir. 2000) ("fame alone cannot overwhelm the other du Pont factors as a matter of law").

Attempting to undermine the strength of the cited mark, Applicant pointed to a single third-party registration for the mark JAWS for "video and audio recording services," but a single registration, without proof of the extent of use, has little probative value. Applicant also referenced five pending applications, but pending applications prove nothing. Moreover, there was no evidence of any third-party use of JAWS-formative marks.

Similarity of the marks: As for the involved marks, the Applicant conceded that they are "similar." The Board found that JAWS is identical to the cited mark [what a surprise!] and that JAWS DEVOUR YOUR HUNGER is similar to the registered mark in terms of appearance, sound, connotation, and commercial impression.

The Board found the word “Jaws” to be the dominant element of Applicant’s mark because it is the first word in the mark and is the subject of the slogan JAWS DEVOUR YOUR HUNGER. Applicant’s mark JAWS DEVOUR YOUR HUNGER is presented in standard character form, and therefore is not limited to any particular depiction. Applicant could emphasize the word JAWS while downplaying the remainder of the mark; for example:

Applicant contended that its slogan mark suggests a clear connection with food, which the cited mark does not convey. The Board refused to bite: "[B]ecause of the fame Registrant’s JAWS mark, the shark’s reputation as having a voracious appetite, and Applicant’s standard character form application, Applicant’s mark is just as likely to engender a commercial impression of Registrant’s shark as of an appetite to be satisfied."

Relatedness of the Goods and Services: Turning to the involved goods and services, although applicant's services are limited to the subject matter of cooking, the cited registration is not limited and encompasses videos that may feature cooking. The Examining Attorney submitted 41 third-party use-based registrations that cover both video streaming and video recordings. Applicant did not submit any evidence to support its assertions regarding the lack of relationship between the goods and services. "Moreover, it is just as likely that the consuming public generally understands that video recordings of movies may be converted to a format that may be streamed over the internet." In any event, the Board concluded that the fame of Registrant’s mark "is sufficient to broaden the scope of protection to encompass such differences."

Conclusion: The Board therefore found that confusion is likely, and it affirmed the Section 2(d) refusal. The Board noted applicant's arguments about the broad scope of protection given the cited registration, but that scope is dictated by Section 7(b) of the Lanham Act. The Board pointed out, however, that "applicants in these circumstances are not without possible remedies, including seeking a consent from the owner of the cited registration, or seeking a restriction of the registration in inter partes proceedings under Section 18 of the Trademark Act, 15 U.S.C. § 1068."

Read comments and post your comment here.

TTABlog comment: So what would a Section 18 restriction look like? Limit the registration to movies featuring a big-mouthed shark? Wouldn't that restriction exclude movies about certain lawyers?

Text Copyright John L. Welch 2016.

TTAB Enters Summary Judgment on Res Judicata Ground in SKIPPY Cancellation

Things did not go smoothly for Skippy, Inc. in its attempt to take a second bite of the PB&J. Appearing pro se, it sought cancellation of Hormel's registration for the mark SKIPPY for peanut butter, but the Board granted Hormel's motion for summary judgment on the ground of claim preclusion (a/k/a res judicata). Skippy, Inc. v. Hormel Foods, LLC, Cancellation No. 92061574 (February 26, 2015) [not precedential].

In a previous proceeding (1986) involving Hormel's predecessor-in-interest, Petitioner Skippy, Inc. had sought leave to add a counterclaim for cancellation of the same registration, and it filed a separate petition for cancellation, but the motion was denied as untimely and the petition was dismissed, the Board stating as to the latter that "A petition for cancellation of opposer's pleaded Registration No. 504,940 is a compulsory counterclaim under Rule 2.114(b)(2)(i), and applicant is not free to file a separate cancellation petition." Skippy, Inc. did not appeal that ruling.

In 2001, Skippy, Inc. filed another petition for cancellation of the SKIPPY registration. Hormel's predecessor-in-interest successfully moved to dismiss on res judicata grounds. The Board again stated that the petition should have been timely filed as a counterclaim in 1986.

In the instant proceeding, commenced in June 2015, Skippy, Inc. seeks to cancel the SKIPPY registration on the same ground as in its previous attacks: fraud in the procurement of the registration (application filed in 1947) and fraud in filing a Section 15 declaration (1954). Applicant claimed that it has new evidence that was unavailable in the prior proceedings.

The Board once again found that Skippy, Inc.'s claim was barred by the doctrine of claim preclusion. There was no doubt that the same parties or their privies were involved in each of the cases. The prior rulings were on the merits. And the transactional facts are identical as to each claim by Skippy, Inc.: i.e., that Hormel's predecessor made the same false statements and withheld the same information from the USPTO in obtaining and maintaining the SKIPPY registration.

Petitioner was required to raise any invalidity claims it may have had against the subject registration in a timely manner in the first consolidated opposition proceedings. Petitioner failed to do so. If any grounds existed for attacking the validity of the Registration No. 504940, Petitioner’s opportunity to raise these grounds has passed.

The Board rejected Skippy, Inc.'s claim that it has new evidence that was previously unavailable. "Such evidence is merely additional evidence of the same allegedly fraudulent occurrence of which Petitioner was undisputedly aware in the earlier opposition proceeding. It is clear that these grounds were not only not newly discovered but, on the contrary, were grounds which existed and were know to Petitioner at the time it file its answer [in 1986]."

And so the Board granted Hormel's motion for summary judgment.

Read comments and post your comment here.

TTABlog comment: FYI: Skippy, Inc., is the successor in interest to Percy Crosby, creator of the “Skippy” cartoon character, a humorous, juvenile character that appeared in a syndicated cartoon comic strip from about 1923 to 1945.

Text Copyright John L. Welch 2016.

BUCK Merely Descriptive of Kentucky Bourbon, Says TTAB

In this consolidated opposition and cancellation proceeding, NJoy Spirits filed a motion for summary judgment, asserting that Frank Lin's registered mark BUCK is merely descriptive of "distilled spirits, namely, Kentucky Bourbon, for human consumption." The Board agreed, but it also found that a genuine issue of material fact existed as to whether BUCK has acquired distinctiveness under Section 2(f). Frank Lin Distillers Products, Ltd. v. NJoy Spirits, LLC. dba NJoy Spirits, LLC., Opposition No. 91211205 and Cancellation No. 92060288 (February 5, 2016) [not precedential].

Mere Descriptiveness: In support of its motion, NJoy submitted recipes for "Kentucky Buck Cocktail," a Wikipedia entry for "buck" as a name for a family of mixed drinks that may include bourbon, and various Internet references to "Buck," "Kentucky Buck," and "Buck Bourbon" as mixed drinks.

The Board found no genuine dispute that BUCK is merely descriptive of Frank Lin's Kentucky Bourbon. "[T]he internet evidence submitted by Petitioner clearly shows that (i) a 'buck' is a particular type of alcoholic cocktail or drink comprised of alcohol, ginger beer or ginger ale, and citrus, and that (ii) 'bucks' often comprise bourbon, e.g., the 'Kentucky Buck cocktail' or 'bourbon buck.'"

In short, the mark BUCK immediately informs consumers that Frank Lin's goods may be used to make a "buck."

Acquired Distinctiveness: Frank Lin asserted that BUCK has acquired distinctiveness, and although Lin did not state this as an affirmative defense, the Board considered the issue as having been "tried" by consent, since both parties argued the issue.

Lin provided a declaration stating that it has spent $100,000 promoting the BUCK mark and has sold 13,000 cases of its bourbon across the country. Google search results for "Buck Bourbon" yielded many references to Frank Lin's product.

Drawing all inferences in favor of the non-movant, the Board ruled that a genuine issue of material fact remained as to whether Respondent’s use of the mark has been substantially exclusive and continuous and as to whether Lin's sales are significant as compared to the sales of competing products.

The Board therefore denied NJoy's motion regarding the issue of acquired distinctiveness.

Read comments and post your comment here.

TTABlog comment: Does Frank Lin need a survey? NJoy? Will both pass the buck?

Text Copyright John L. Welch 2016.

TTAB Test: Is VALETTE (for clothing) Primarily Merely a Surname?

The USPTO refused registration of the mark VALETTE for various clothing items, deeming the mark to be primarily merely a surname under Section 2(e)(4). The Examining Attorney found 236 individuals with that surname, in the Leis Nexis database, and 33 news items referring to 17 such individuals. How do you think this came out? In re Nordstrom, Inc., Serial No. 86303016 (March 12, 2016) [not precedential].

Applicant Nordstrom submitted a search of whitepages.com, indicating there are 223 people with the surname VALETTE. The Board, considering the great size of the databases relied on by applicant and the PTO, found that VALETTE is "an extremely rare surname." The Board (by Judge Seehermann) cited In re Etablissements Darty et Fils:

In In re Etablissements Darty et Fils, ... the Federal Circuit acknowledged that, even though a term might be, indisputably, a surname, it might still be perceived by the relevant public as something else, including “an arbitrary term,” 225 USPQ at 653, thereby removing it from the prohibition of Section 2(e)(4). In this case, the extreme rarity of the surname VALETTE strongly suggests that few persons in the relevant market would know, or know of, a person named VALETTE.

The 33 news items were unlikely to have a substantial impact on the public's awareness of the surname, and the few individuals who were mentioned more than once do not seem to enjoy and particular notoriety.

The examining attorney submitted negative dictionary evidence [white print on black paper? - ed.], showing that VALETTE has no meaning other than as a surname. Nordstrom pointed to the commune Valette in south-central France. The Examining Attorney pointed out that Valette has a population of 262, located 247 miles from Paris and 42 miles from Auvergne. The Board found this evidence insufficient to show that VALETTE has a geographic significance that is the word's primary meaning.

The Board therefore concluded that VALETTE is so rare a surname that consumers would be unlikely to perceive it as a surname, but instead would view it as a coined, fanciful term with no specific meaning. And so the Board reversed the refusal.

Read comments and post your comment here.

TTABlog comment: Judge Seeherman usually likes to consider the surname refusal from the perspective of how many individuals are likely to want to use the term at issue as a trademark. If there are only 200 or so people with the surname, the likelihood that one of them wants to use the surname as a mark for certain goods or services is small. See the concurrence in In re Joint-Stock Company "Baik", 84 USPQ2d 1921 (TTAB 2007) [precedential].

Text Copyright John L. Welch 2016.

Tam files Petition for Writ of Mandamus at CAFC, demanding USPTO action on THE SLANTS application

Simon Tam has filed a petition for writ of mandamus with the CAFC, seeking an order directing the USPTO to comply with the CAFC's mandate by publishing for opposition his  service mark application for the mark THE SLANTS. [Petition here].

In an Order issued today [here], the CAFC has required the USPTO to respond to Tam's petition by March 23rd.

Read comments and post your comment here.

TTABlog comment: Although the CAFC mandate has already issued in In re Tam, I believe the USPTO could ask that the mandate be recalled and stayed while it pursues a writ of certiorari at the Supreme Court.

Text Copyright John L. Welch 2016.

USPTO Examination Guide 01-16: Suspension for Section 2(a) Disparagement and Scandalousness Cases

On March 10, 2016, the USPTO issued Trademark Examination Guide 01-16, stating that the Office will be suspending action on pending applications involving marks subject to refusal under the disparagement and the scandalousness provisions of Lanham Act Section 2(a). This action resulted from the pending appeals in the cases involving the marks THE SLANTS, REDSKINS, and FUCT, as briefly discussed below.

The constitutionality of the scandalousness provision is an issue that the USPTO expects to be decided by the Federal Circuit in In re Brunetti (No. 15-1109). [TTABlogged here] The constitutionality of the disparagement provision is an issue in two cases in the federal courts of appeal: In re Tam (No. 14-1203, Federal Circuit) [TTABlogged here] , and Pro-Football v. Blackhorse (No. 15 1874, Fourth Circuit) [District Court decision TTABlogged here]. The Pro-Football appeal remains pending before the U.S. Court of Appeals for the Fourth Circuit. The Tam appeal was decided by the U.S. Court of Appeals for the Federal Circuit on December 22, 2015. The Federal Circuit held that the disparagement provision is facially unconstitutional under the First Amendment, abrogating prior circuit precedent that had found the provision constitutional. In re Tam, 808 F.3d 1321, 1358, 117 USPQ2d 1001, 1025 (Fed. Cir. 2015) (en banc), as corrected (Feb. 11, 2016). The Tam decision remains subject to potential Supreme Court review. 28 U.SC. §1254; see also Application of Michelle K. Lee to Extend the Time to File a Petition for a Writ of Certiorari, March 9, 2016 (Supreme Court No.15A925).

The USPTO will continue to examine applications for compliance with these provision of Section 2(a), in accordance with existing guidance in the Trademark Manual of Examining Procedure § 1203. However, for any new applications the Office will issue only advisory refusals under "scandalous, immoral, or disparaging matter" provisions.

Any suspension of an application based on the scandalousness provision of Section 2(a) will remain in place until the Federal Circuit issues a decision in Brunetti, after which the USPTO will re-evaluate the need for further suspension. Any suspension of an application based on the disparagement provision of Section 2(a) will remain in place until at least the last of the following occurs: (1) the period to petition for a writ of certiorari (including any extensions) in Tam expires without a petition being filed; (2) a petition for certiorari is denied; or (3) certiorari is granted and the U.S. Supreme Court issues a decision.

Read comments and post your comment here.

TTABlog comment: I suppose if a mark is both disparaging and scandalous, the application will be suspended twice? I decline to offer any examples.

Text Copyright John L. Welch 2016.

The Trademark Reporter's 2016 "Annual Review of U.S. Trademark Cases"

The Trademark Reporter has published its Annual Review of U.S. Trademark Cases: "The Sixty-Eighth Year of Administration of the Lanham Act of 1946," by Theodore H. Davis, Jr. and yours truly, John L. Welch. (download pdf here).

Ted Davis has no doubt that the most important development of the year was the Supreme Court's decision in B&B Hardware, Inc. v. Hargis Industries, wherein the Court ruled that determinations by the TTAB on likelihood of confusion may have issue-preclusive effect in later infringement litigation. Also of significant impact was the CAFC's decision in In re Tam, deeming the disparagement provision of Lanham Act Section 2(a) unconstitutional as violative of the Freedom of Speech clause of the First Amendment. The REDSKINS case, now on appeal at the Fourth Circuit, has garnered more widespread attention, but although the TTAB's decision ordering cancellation of six REDSKINS registrations survived a constitutional challenge at the district court level, the appellate court may take a different view in light of In re Tam. These and many other cases are perceptively discussed in Ted's Introduction and in Section III of this article.

Back at the TTAB, things were somewhat less earth-shaking. The Board sustained a fraud claim for the first (and still only) time since the CAFC's seminal 2009 ruling in In re Bose. On the dilution front, the Board made it clear that the defense of parody is unavailable in the dilution-by-blurring context. In a rare case involving trade dress for services, the Board found a monster-shaped truck to be inherently distinctive for entertainment services. The CAFC's ironed out a kink in the Board's genericness jurisprudence, ruling in the PRETZEL CRISPS case that there is only one test for genericness, not two different tests depending on whether the mark at issue is a compound word or a phrase. And of course, the most publicized TTAB decision was its REDSKINS ruling, discussed briefly above. All this and more will be found in Sections I and II of this article.

TTABlog note: Thanks once again to The Trademark Reporter for granting permission to provide a link to this issue, which is Copyright © 2016 the International Trademark Association and reprinted with the permission of The Trademark Reporter®, 106 TMR 1 (January-February 2016).

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

Professor Rebecca Tushnet Says the CAFC's Reasoning in In re Tam Was Wrong

In her forthcoming article, The First Amendment Walks into a Bar: Trademark Registration and Free Speech, Notre Dame Law Review (download from her 43(B)log here), Professor Rebecca Tushnet argues that the CAFC got it wrong in In re Tam [THE SLANTS]. She maintains that Section 2(a) "is generally constitutional as a government determination about what speech it is willing to approve, if not endorse." The Abstract is set out below.

This Essay analyzes the First Amendment arguments against §2(a)’s disparagement bar with reference to the consequences of any invalidation on the rest of the trademark statute. Ultimately, given the differences—or lack thereof—between disparagement and other bars in the statute, I conclude that §2(a) is generally constitutional as a government determination about what speech it is willing to approve, if not endorse. If the Supreme Court disagrees, it will face a difficult job distinguishing other aspects of trademark law. And these difficulties signal a greater problem: the Court has lost touch with the reasons that some content-based distinctions might deserve special scrutiny. Often, perfectly sensible and by no means censorious regulations that depend on identifying the semantic content of speech would fall afoul of a real application of heightened scrutiny, to no good end.

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

TTAB Seeks Applicants for Attorney Advisor (Interlocutory Attorney) Positions

The USPTO is seeking applications for the position of Attorney Advisor (and more specifically, Interlocutory Attorney) at the TTAB. Reportedly, there are two openings. The detailed announcement may be found here.

Job Title: Attorney Advisor (Trademark) (EX)
Department: Department Of Commerce
Agency: Patent and Trademark Office
Job Announcement Number: TTA-2016-0002

This position is located in the Trademark Trial and Appeal Board (TTAB). The TTAB is an administrative tribunal within the U.S. Patent and Trademark Office (USPTO) that hears and decides trial level adversary proceedings involving two or more parties. These include oppositions (party opposes an application to register a mark after publication in the Gazette), cancellations (party seeks to cancel an existing registration), and concurrent use proceedings. The TTAB also hears and decides appeals from final refusals issued by USPTO Trademark Examining Attorneys following examination of applications to register marks.

* * * * * * * *
As an attorney for a particular case or legal issue the incumbent is responsible for promoting the efficient disposition of litigation before the TTAB. Specifically, the incumbent:

• Analyzes the legal issue in question, develops the strategy to deal with the legal issue, and determines the content and means of delivery of the completed analysis of the legal issue.
• Handles interlocutory matters in oppositions, cancellations and concurrent use cases at the TTAB, including mentoring and coaching others, and is recognized as an expert in the procedural and substantive aspects of the law.
• Independently decides and issues orders on all procedural and substantive motions that are not potentially dispositive of the proceeding, such as motions to amend pleadings, motions to compel and motions to strike evidence.
• Consults with and drafts decisions for Administrative Trademark Judges on all procedural and substantive motions that are potentially dispositive of the proceeding, such as motions to dismiss, motions for judgment on the pleadings, and motions for summary judgment.
• Deals with Administrative Trademark Judges and the top management of the TTAB, as well as the top management and/or attorneys of other private and public organizations.

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

Supreme Court Denies Certiorari Petition in Shammas Attorney Fees Case

On Monday, March 7, 2016, the Supreme Court denied the petition for a writ of certiorari filed by Milo Shammas in Shammas v. Hirschfeld, formerly known as Shammas v. Focarino.  Shammas sought to overturn 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").

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

"NAG CHAMPA" Merely Descriptive of Incense Sticks, Says TTAB

The Board affirmed a Section 2(e)(1) refusal to register the mark NAG CHAMPA, finding the mark to be merely descriptive of "incense sticks." The Board concluded that the mark "describes without thought or imagination the name of a well-known scent or fragrance found in Applicant’s incense." In re Shrinivas Sugandhalaya, Serial No. 78691247 (Feb. 9, 2016) [not precedential].

The evidence submitted by Examining Attorney Jeffrey S. DeFord established a prima facie case that MAG CHAMPA is widely used to identify and describe a scent found not only in incense, but also in soap, perfume oil, essential oils, candles, and other personal toiletries. The exact composition of the NAG CHAMPA scent varies, but it is generally considered to contain Champa flower extracts, resins, and sandalwood.

Applicant argued that third party products offered on ebay and amazon.com are infringing uses of NAG CHAMPA, and further that applicant has vigorously policed the NAG CHAMPA mark. The Board was not impressed:

If Applicant has sought to stop third-party use of the term NAG CHAMPA for incense, we see little or no evidence of any success in this endeavor. The record is replete with the use of NAG CHAMPA for a vast array of scented products. Accordingly, we cannot discount the third-party uses of NAG CHAMPA for incense, as Applicant suggests. Contrary to Applicant’s argument that these third parties are seeking to use NAG CHAMPA as a source identifier, nearly all of these products have other names or indicia to distinguish the sources of the incense.

Applicant claimed that the term NAG CHAMPA was coined by its founder in 1964, based in part on the names and nicknames of his children. Even if that is true, however, the Board must consider the present meaning of NAG CHAMPA, since registrability must be determined at the time registration is sought.

Applicant also contended that its mark has acquired distinctiveness, based on long use, sales of product nearing 40 million dollars in the period 1994-2013, and the availability of its product on ebay, amazon.com, and google.com. The Board was unimpressed. Use of the mark since 1990 might indicate commercial success of the product, but third party use and the nature of the mark undermine the Section 2(f) claim. Moreover, applicant's uses the mark NAG CHAMPA along with other prominent indicia on its packaging, and consumers may look to that other indicia as source identifiers.

Furthermore, given the widespread third-party use of the term, applicant's use "can hardly be called exclusive."

And so the Board denied the Section 2(f) claim and affirmed the Section 2(e)(1) refusal.

Even if Applicant was the initial user of NAG CHAMPA in the United States, the marketplace no longer reflects substantially exclusive use by Applicant. Nor has Applicant provided any explanation as to why it waited nearly fifteen years, from 1990 to 2005, before filing its application.

Read comments and post your comment here.

TTABlog comment: WYHA?

Text Copyright John L. Welch 2016.

TTAB Accepts Morehouse Defense! Dismisses Opposition to FB FRESH BODY for Cosmetics

The Board rendered a split decision in this Section 2(d) opposition to registration of the mark shown immediately below [FRESH and BODY disclaimed] for "non-medicated skin care preparations, namely, lotions" in International Class 3; and "clothing, namely, shirts, pants, shorts, sweatshirts, sportswear, in the nature of sweat pants and tank tops" in International Class 25, accepting applicant's  prior registration (Morehouse) defense regarding the Class 3 goods, but finding the mark confusingly similar to opposer's mark FB (in standard character form), registered for various clothing items. GTFM, Inc. v. Fresh Body, LLC, Opposition No. 91209621 (March 4, 2016) [not precedential].

Evidentiary issue: Opposer GTFM moved to strike certain website evidence because applicant had not indicated the relevance of the material in its notice of reliance. The Board pointed out that a procedural objection to a notice of reliance should be raised promptly so that applicant would have time to cure the defect. See Trademark Rule 2.122(e). Therefore, the Board deemed the objection waived.

Morehouse defense: Although applicant did not raise the prior registration defense in its Affirmative Defenses, it claimed ownership of a registration for the mark shown below for "non-medicated skin lotion," and it introduced a copy of the registration into evidence. Opposer did not object to this evidence until its brief at final hearing.

The first question, then, was whether the prior registration defense was tried by implied consent. Looking at the totality of circumstances, the Board concluded that Opposer GTFM was aware that the registration formed the basis of a defense, and it ruled that the issue had been tried by implied consent.

Considering the merits of the Morehouse defense, the Board found it applicable to applicant's class 3 goods. It observed that the goods in the subject application and the prior registration are "essentially identical." As to the mark, the Board found instructive its decision in The Place for Vision, Inc. v. Pearle Vision Center, Inc., 218 USPQ 1022, 1023 (TTAB1983). There, Pearle Vision sought to register PEARLE VISION CENTER with a design element, while already owning registrations for PEARL VISION CENTER in standard character form. Opposer's claim related only to the VISION CENTER portion of the mark. Citing Morehouse, the Board there observed that "An opposer cannot suffer damage, within the meaning of Section 13 of the Trademark Act, by the issuance of a registration if the applicant for such registration already owns an unchallenged registration of that mark for the same goods."

Here, opposer’s likelihood of confusion claim related only to the FB portion of the applied-for mark, and not to the FRESH BODY and design features of the mark. "Accordingly, as in Place for Vision, Opposer cannot be damaged by registration of the present applied-for mark when Applicant already owns an unchallenged registration for the same goods covered by a mark that is closer to Opposer’s mark than the applied-for mark."

And so the Board dismissed the Section 2(d) claim against applicant's class 3 goods.

Likelihood of confusion: As to the class 25 goods, both the challenged application and opposer's registration included "pants" and "shirts." The Board must presume that these goods travel in the same, normal channels of trade to the usual classes of consumers. The goods encompass inexpensive items that would be purchased with no more than ordinary care. These factors weighed heavily in favor of a finding of likely confusion.

As to the marks, the FB component of applicant's mark is highlighted by its central position and the two circles around it. Although the words FRESH BODY gives Applicant’s mark an appearance and sound that is different from opposer’s, these (disclaimed) words are less distinctive than the FB portion of applicant’s mark.

The Board concluded that, despite the differences between the marks, "the common portion FB in the marks is instrumental in creating the commercial impression of each of the marks, serving to engender similar overall commercial impressions."

In the present case, the words FRESH BODY are likely to  be viewed as identifying the previously anonymous source of the identical goods sold under the mark FB by Opposer, and/or as a house mark. Alternatively, the letters FB standing alone in Opposer’s mark may be perceived as simply a shortened form of Applicant’s mark, especially when the respective marks are used in connection with identical goods.

And so the Board found confusion likely, and it sustained opposer's Section 2(d) claim with regard to applicant's class 25 goods.

Read comments and post your comment here.

TTABlog comment: Well, it's about time we had a case where the Morehouse defense actually worked! I think the decision should be precedential. I'm not sure I agree with the Section 2(d) ruling. Isn't FRESH BODY the dominant part of applicant's mark?


Text Copyright John L. Welch 2016.

TTAB Vacates HOUNDSTOOTH MAFIA Decision, Following District Court Order

The Board issued an Order yesterday vacating its HOUNDSTOOTH MAFIA decision, in compliance with the February 23, 2016 Order of the U.S. District Court for the Northern District of Alabama [TTABlogged here]. The Director of the USPTO specifically reserved the right to seek further review of the orders and opinions of the district court in this matter. The full Order issued by the Board is set out below. The Board of Trustees of The University of Alabama and Paul W. Bryant, Jr. v. William Pitts, Jr. and Christopher Blackburn, Opposition No. 91187103 (March 3, 2016) [not precedential].

Pursuant to the settlement of Opposers’ appeal, resulting in the consent judgment the parties agreed to and obtained approval of in Bd. of Trs. of the Univ. of Ala. v. Houndstooth Mafia Enters., LLC, No. 7:13-cv-1736-RDP (N. D. Ala.), and the district court’s February 23, 2016 order requiring the Board to vacate its July 23, 2013 opinion, that opinion is vacated. The application is remanded to the examining attorney to update the owner information to reflect the assignment of the application to the Board of Trustees of the University of Alabama (recorded at Reel/Frame 5285/0632) and allow the application to proceed to registration. Opposers’ pending motion pursuant to Rule 60(b) is dismissed as moot. The Director of the USPTO specifically reserves the right to seek further review of the orders and opinions of the district court in this matter.

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

Family Feud: TTAB Dismisses Opposition to EARNHARDT COLLECTION for Furniture and Home Construction

Teresa Earnhardt, widow of race car driver Dale Earnhardt, opposed two applications of her stepson Kerry's company for the mark EARNHARDT COLLECTION for furniture and custom construction of homes, on two grounds: likelihood of confusion with the registered marks EARNHARDT and DALE EARNHARDT for various goods and services, and violation of the Section 2(e)(4) bar on registration of surnames. Teresa H. Earnhardt v. Kerry Earnhardt, Inc., Opposition Nos. 91205331 and 91205338 (February 26, 2016) [not precedential].

Likelihood of confusion: Opposer established priority of use for the common law mark DALE EARNHARDT for beanbag chairs, plates, figurines, ornaments, ornament plates, clocks, and tabletop figurines. The goods and services in the pleaded registration were "primarily memorabilia/novelty items, clothing, and professional automobile racing services." But opposer did not offer any testimony or evidence that the goods and services in the registrations were related to applicant's goods and services. The Board concluded that applicant's goods and services are not related to opposer's goods and services.

Opposer claimed that the mark DALE EARNHARDT is famous, but the Board found no evidence that the mark is famous with respect to any goods.

As to channels of trade, the Board concluded that the involved goods and services "are not sold in the same marketing milieu." Oppser's customers are likely to be impulse buyers of Dale Earnhardt apparel and memorabilia, whereas applicant's customers will purchase furniture and custom homes with some degree of care.

The Board found EARNHARDT to be the dominant portion of applicant's mark, and concluded that the involved marks are similar in appearance, sound, connotation, and commercial impression.

Relying on the Harry Winston case, opposer argued that the family relationship between the parties is an additional factor that supports a finding of likelihood of confusion. However, in that case, both parties were in the jewelry business. Here, applicant's goods and services are not related to car racing, and Kerry Earnhardt took steps to associate the mark EARNHARDT COLLECTION with himself, his family, and his company, rather than with his father or opposer. Thus the relationship between the parties does not affect the Section 2(d) determination.

Balancing the relevant du Pont factors, the Board found that applicant's mark is not likely to cause confusion with those of opposer.

Section 2(e)(4): The surname EARNHARDT ranked as number 16,852 in the U.S. Census database, with 1559 appearances. While it is not a common surname, neither is EARNHARDT so rare that it would not be regarded as a surname for Section 2(e)(4) purposes. Of course, EARNHARDT is in fact the surname of persons connected with both parties. The term has no other recognized meaning, and has the "look and feel" of a surname.

However, the Board must evaluate the mark EARNHARDT COLLECTION as a whole. Applicant contended that COLLECTION is a generic term, and therefore the two word mark is still considered a surname.

Not so fast, said the Board. COLLECTION may be descriptive of the manner in which some furniture is marketed, but it is not generic. Likewise with home design, COLLECTION does not refer to any class or category.

The Board relied on In re Hutchinson Technology, Inc., 7 USPQ2d 1490 (Fed. Cir. 1988), in which the CAFC panel majority found that HUTCHINSON TECHNOLOGY was not primarily merely a surname because the term TECHNOLOGY was not generic.

Therefore, the Board dismissed the Section 2(e)(4) claim.

Read comments and post your comment here.

TTABlog comment: I think COLLECTION should be considered highly descriptive, and that EARNHARDT COLLECTION is primarily merely a surname. COLLECTION adds nothing, in my view, to diminish the surname significance of EARNHARDT.

HUTCHINSON TECHNOLOGY sounds like the name of a company. EARNHARDT COLLECTION sounds like an assortment of things collected by someone named Earnhardt.

Text Copyright John L. Welch 2016.