TTAB Posts June 2016 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled seven (VII) oral hearings for the month of June. 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.



June 7, 2016 - 11 AM: In re American Textile Company , Serial No. 86287417 [Section 2(d) refusal of EVERSOFT for "Bed blankets; Blanket throws; Blankets for outdoor use; Children's blankets; Children's bed sheets, pillow cases, and blankets; Fleece blankets; Lap blankets; Pet blankets; Receiving blankets," on the ground of likelihood of confusion with the registered mark EVER SOFT for "yarns and threads"].

June 7, 2016 - 2 PM: In re M&D Wholesale Distributors, Inc., Serial No. 86182803 [Section 2(d) refusal to register BAHA TRINIDAD for cigars on the ground of likelihood of confusion with the registered marks TRINIDAD, TTT TRINIDAD, and TRINIDAD PARADOX for cigars].

 June 9, 2016 - 10 AM: In re Mount Felix Holdings, LLC , Serial No. 86060930 [Section 2(d) refusal of IRIS NEBULA for wines in view of the registered mark NEBULA for “red wine; wine"].
 

 June 21, 2016 - 2 PM: Jeanette K. Daniels v. TGN Services, LLC, Opposition No. 91204462 [Opposition to registration of PROGENEALOGISTS for "publishing of narratives in electronic manuscript and electronic book forms in the field of genealogical historical data, family history data, census data, birth, marriage and death records; providing online publications in the nature of newsletters, reports and magazines in the field genealogical historical data, family history data, census data, birth, marriage and death records; publishing of books, reports, charts, magazines, newsletters and guides in the field genealogical historical data, family history data, census data, birth, marriage and death records" and for "providing research services in the field of genealogical historical data, family history data, census data, birth, marriage and death records; consulting and advisory services in the field of genealogical historical data, family history data, census data, birth, marriage and death records," on the grounds of genericness and mere descriptiveness].

 June 22, 2016 - 11 AM: Boston Scientific Corporation v. Holaira, Inc., Opposition No. 91215699 [Section 2(d) opposition to registration of HOLAIRA for "Medical devices for treating obstructive lung diseases; medical apparatus and instruments for treating obstructive lung diseases" in view of the registered mark ALAIR for "Medical therapeutic devices for use in the treatment of pulmonary diseases, namely, catheters, probes, generators, bronchoscopes, and electrodes” and “Training and teaching in the field of surgery and treatment of pulmonary diseases, namely training and teaching in the use and operation of medical devices for bronchial surgery or treatment, and distribution of course materials, namely printed materials and electronic media, in connection therewith"].

June 23, 2016 - 2 PM : In re Hologic, Inc., Serial Nos. 86354289, et al. [Refusals to register the mark 3D MAMMOGRAPHY for "mammography imaging system" on the ground of mere descriptiveness, and the marks GENIUS 3D MAMMOGRAPHY and HOLOGIC 3D MAMMOGRAPHY for the same goods, for failure to disclaim "3D MAMMOGRAPHY"].

June 28, 2016 - 11 AM: North Atlantic Operating Company, Inc., North Atlantic Trading Company, Inc. and National Tobacco Company, LP v. DRL Enterprises, Inc., Opposition No. 91158276, et al. [Consolidated opposition and cancellation proceedings, commenced in 2003, involving the marks 1.0, 1.25, and 1.5 for cigarette rolling papers, on the grounds of genericness or mere descriptiveness].

Read comments and post your comment here.

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

Text Copyright John L. Welch 2016.

TTABlog Test: Are ZEN BAKERY and ZEN DELITES Confusable for Cookies?

Petitioner sought to cancel a registration for the mark ZEN DELITES for "cookies," claiming a likelihood of confusion with its mark ZEN BAKERY for bakery goods, including cookies [BAKERY disclaimed]. Respondent Susan DeFuria conceded priority, and goods overlapped. So it all came down to the marks. How do you think the cookie crumbled? Jack Q. Drake Revocable Trust v. Susan DeFuria (May 11, 2016) [not precedential].

The Marks: The Board perceptively found that, "[i]n appearance and sound the two marks are similar to the extent that the first word of each mark is ZEN. The marks differ in appearance and sound by virtue of their other terms, which are BAKERY and DELITES, respectively."

Respondent conceded that ZEN is a well-known term "as a Buddhist philosophy implying a superior way of being and state of mind." Neither party provided evidence as to the meaning of DELITES, but it is "obviously a recognizable variant of "'delights.'" And BAKERY is generic or highly descriptive in the field of baked goods.

Considering the meanings of the marks in their entireties, ZEN BAKERY might suggest a baking establishment that follows or is in some way guided by Zen principles. ZEN DELITES might suggest the pleasures (“delights”) of practicing Zen philosophy, or good things derived from the principles or practice of Zen. These meanings and connotations are distinguishable from those of Petitioner’s mark.

The Board agreed with Petitioner that BAKERY should be given less weight when considering its mark, but the marks still must be considered in their entireties.

The Board found that the dissimilarities in the marks outweigh the similarities.

Letter of Protest: Petitioner pointed to the USPTO's acceptance of its letter of protest during prosecution of Respondent's underlying application, claiming that this shows prima facie evidence of confusing similarity. Not so, said the Board.

The Deputy Commissioner, in granting the letter of protest, did not make any finding as to likelihood of confusion, other than to say that Petitioner’s Reg. Nos. 1529901 and 4104964 were relevant to the Examining Attorney’s ultimate decision. In following letter of protest procedure, the Deputy Director did not instruct the Examining Attorney to do any more than “consider the following [registrations] and make an independent determination whether to issue a requirement or refusal …” Accordingly, it is clear that the Deputy Director’s action is not a prima facie demonstration of confusing similarity.

Prior Lawsuit:Petitioner pointed to a successful prior lawsuit against a third party as evidence of the strength of its mark, but the Board was not impressed. The prior suit involved a mark nearly identical to petitioner's mark, and "does not show that a court would issue a similar injunction against a different mark, such as Respondent’s mark." Moreover, the litigation was largely resolved by settlement.

Purchaser Care: As to purchaser care, even though cookies are inexpensive items, that does not mean they are "purchased carelessly or without discrimination." [So much for the impulse purchase argument - ed.]

The Board concluded that the first du Pont factor controlled, and it dismissed the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: This decision leaves a bad taste in my mouth.

Text Copyright John L. Welch 2016.

ZERO Not Generic for Soft Drinks, Says TTAB, In Multi-Mark Battle

This consolidated proceeding involved eight oppositions to Coca-Cola's attempted registration of various ZERO-containing marks for soft drinks sports drinks, and energy drinks, without a disclaimer of the term "zero," on the ground that the word is generic or merely descriptive of no-calories beverages, and Coca-Cola's opposition to registration of PURE ZERO and DIET-RITE PURE ZERO for soft drinks [ZERO disclaimed], on the ground of likelihood of confusion with Coca-Cola's alleged family of ZERO-formative marks. The Board dismissed RC's oppositions to 13 of Coca-Cola's applications, but as to four applications the board sustained the oppositions subject to TCCC filing a disclaimer of the word ZERO within two months. TCCC's Section 2(d) oppositions were dismissed due to failure to prove priority. Royal Crown Company, Inc. and Dr. Pepper/Seven Up, Inc. v. The Coca-Cola Company, Oppositions Nos. 91178927, et al. (May 23, 2016) [not precedential].

Genericness: The Board found that the identifications of goods in TCCC’s applications adequately defined the genus of the goods at issue as soft drinks, sports drinks, and energy drinks. The question then was whether "ZERO" is understood by the relevant public primarily to refer to that genus of goods.

RC did not provide any direct evidence regarding consumer understanding of ZERO, nor any dictionary evidence associating ZERO with soft drinks. Its indirect evidence, which the Board found unpersuasive, included evidence of some 27 third-party zero-calorie soft drinks, sports drinks, and energy drinks with names that incorporate ZERO. However, "the overall use appears to be relatively minor in comparison to TCCC’s, representing a small fraction of TCCC’s use of the term for its goods." Crucially, none of the evidence showed that "ZERO" is a category of sports, energy, or soft drinks.

Third-party registrations for marks with "ZERO" disclaimed did not prove genericness, since words that are merely descriptive may also be disclaimed. A handful of public references to "zero" products spread over five years did not establish that ordinary consumers primarily use or understand the term ZERO to refer to the genus of soft drinks, sports drinks, or energy drinks. TCCC's own use of "ZERO" was "as part of a mark in product names."

The Board found that "RC has not met its burden to establish by a preponderance of the evidence that ZERO is generic for soft drinks, sports drinks, or energy drinks, even such drinks that contain no, or fewer than five, calories."

Acquired Distinctiveness: TCCC claimed acquired distinctiveness for "ZERO" in connection with its 17 applied-for marks. The question of whether the ZERO marks have acquired distinctiveness is determined on the basis of the facts existing as of the time registrability is being considered by the Board. Accordingly, the Board took into account evidence up to the time of close of the testimony periods.

TCCC's sales of beverages under the ZERO family of marks were in the billions of dollars, and advertising and promotion figures were in the hundreds of million dollars. Survey evidence from a prior proceeding supported the Section 2(f) claim.

RC argued that TCCC  could not establish acquired distinctiveness because its use of ZERO has not been substantially exclusive. However, the evidence concerning third-party use of ZERO (and RC's use as well) in a mark for soft drinks was "inconsequential, particularly when compared with the magnitude of TCCC’s use."

We find that the cumulative effect of TCCC’s use of ZERO in connection with its line of soft drinks is so extensive that it qualifies as “substantially exclusive” as required under Section 2(f), and that the use of ZERO by others is not so extensive as to rise to a level that invalidates TCCC’s claim of substantially exclusive use.

The Board concluded that TCCC had established acquired distinctiveness for soft drinks and for sports drinks. It found, however, that TCCC did not meet its burden to establish that it has acquired distinctiveness in the term ZERO for energy drink products. RC's oppositions as to those four applications were sustained, but TCCC was allowed two months from the date of this decision in which to file a motion "to amend these four applications to conform to the findings of the Board by stating that no claim is made to the exclusive right to use ZERO apart from the marks as shown for the applications and goods 'non-alcoholic beverages, namely, energy drinks' and 'syrups and concentrates for making energy drinks.'"

Likelihood of Confusion: As to TCCC's likelihood of confusion claims against two RC applications, the Board found that the two opposed marks are inherently distinctive as a whole, and therefore RC may rely on the filing dates of its applications as its constructive first use dates: February 28, 2005 for DIET RITE PURE ZERO, and March 7, 2005 for PURE ZERO.

TCCC did not assert likely confusion based on any of its individual marks, but claimed a family of ZERO marks. However, it had used only one mark before RC's filing dates. Therefore it could not rely on the family-of-marks argument to prove likelihood of confusion since it did not have a family of marks prior to RC's filing date.

And so the Board dismissed TCCC's claim for failure to prove priority.

Read comments and post your comment here.

TTABlog comment: When you walk down the aisle of the supermarket, is there a sign that says "zero" in the soft drink aisle, where no-calorie drinks reside?

Text Copyright John L. Welch 2016.

TTABlog Test: Are These Two Word+Design Marks Confusable for Retail Store Services?

The USPTO refused to register the mark shown below left, for "retail store services featuring furniture, furniture paint and finishes, clothing, fashion accessories such as scarves, hats, shoes, rings, necklaces, and earrings, and vintage items" [VINTAGE MARKET disclaimed], finding it likely to cause confusion with the registered mark shown below right, for legally identical retail store services. How do you think this appeal came out? In re Minegar, Serial No. 86179013 (May 23, 2016) [not precedential].

Because the services overlap, the Board must presume, "at least with respect to the overlapping services, that the channels of trade and classes of purchasers are the same."

Relying on Juice Generation and Jack Wolfskin, applicant argued that "IDEA" is a weak formative and that consumers will recognize subtle differences between the marks due to the number and nature of similar marks on similar goods. Applicant submitted four dozen use-based registrations for IDEA-formative marks, owned by different registrants, for goods and services related to the services involved here. Applicant also provided evidence of five websites whose domain names include the word "idea," for retail services featuring furniture and clothing.

The Board sided with applicant: 

Based on this evidence, we agree that the term “IDEA” and its plural “IDEAS” are used and registered by third parties in the relevant industry of retail furniture and clothing to such an extent that the public has been exposed to the terms and will look to other distinguishing aspects of Applicant’s mark. As our primary reviewing Court has noted, “extensive evidence of third-party use and registrations is ‘powerful on its face.’” quoting Jack Wolfskin, 116 USPQ2d at 1136.

Comparing the marks in their entireties, the Board noted that when the services are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

We note, nevertheless, that the marks have significant differences in sight, sound, and commercial impression. Although the marks share the term “IDEAS,” as noted above, we have found the shared term to be weak. Furthermore, Applicant’s mark contains additional wording and each mark includes a distinctive, eye-catching design.

Applicant's mark gives the impression of "light or bright ideas" for products sold in a “vintage market,” whereas the cited mark engenders no such impression, and offers a geometrical design. 

The found  that the marks "differ significantly in terms of appearance, sound, meaning and commercial impression."

Balancing the relevant du Pont factors, the Board concluded that the marks are not confusingly similar, and so it reversed the refusal.

Read comments and post your comment here.

TTABlog comment: How did you do? I have a similar case with the word "innovations."

Text Copyright John L. Welch 2016.

Fourth Circuit Denies Petition for Reconsideration En Banc in FLANAX Case

On May 23, 2016, the U.S. Court of Appeals for the Fourth Circuit denied Belmora's petition for reconsideration en banc in the FLANAX case. Belmora LLC v. Bayer Consumer Care AG and Bayer Healthcare LLC, Appeal No. 15-1335 (4th Cir. May 23, 2016) [Order here]. The petition for reconsideration is discussed here; the Fourth Circuit decision is TTABlogged here.

Belmora's FLANAX
In its ruling of March 23, 2016, the appellate court concluded that "Bayer is entitled to bring its unfair competition claims under Lanham Act § 43(a) and its cancellation claim under § 14(3)." The district court’s judgment was vacated, and the case now returns to the U.S. District Court for the Eastern District of Virginia for further proceedings

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

TTABlog Test: Are “ELITE TEST 360” and “360 TEST” Confusable for Nutritional Supplements?

The USPTO refused registration of the mark ELITE TEST 360 for “dietary and nutritional supplements for endurance sports,” finding it likely to cause confusion with the registered mark 360 TEST for nutritional supplements. The goods are identical, but what about the marks? How do you think this appeal came out? In re Delux Advertising, LLC, Serial No. 86513486 (May 18, 2016) [not precedential].

Because the goods are legally identical, they are presumed to travel in the same channels of trade to the same classes of consumers. These factors weighed heavily against applicant and also reduced the degree of similarity necessary to support a likelihood of confusion refusal.

As to the marks, the Board has many times found confusion likely between “reverse combination” marks: e.g., BANKAMERICA and AMERIBANC, RUST BUSTER and BUST RUST, SPRINT STEEL RADIAL and RADIAL SPRINT. The Board agreed with the Examining Attorney that:

[i]n this case, it is clear that the marks create similar commercial impressions because, as Applicant argues, “TEST is commonly understood as shorthand for ‘testosterone’ in nutritional supplements,” and “360 is a common term when marketing nutritional supplements as a way to connote wholeness or completeness, as in the 360 degrees of a circle."

The Board found that ELITE is laudatory and its addition was “not enough of a dissimilarity to prevent confusion.”

Even if the terms TEST and 360 are conceptually weaker than the term ELITE in Applicant’s mark, that would not prevent confusion given Applicant’s mere reversal of the terms in Registrant’s mark. In fact, consumers familiar with Registrant’s mark could believe that Applicant’s mark is a modified version of Registrant’s mark, or that Applicant’s supplements for endurance sports are an extension of Registrant’s brand of supplements into the endurance sports market. For example, the commercial impression of Applicant’s mark on consumers familiar with Registrant’s mark could be that of a select or superior nutritional supplement for “elite” athletes.

Although 360 and TEST are conceptually and commercially weak, there was no evidence that any supplements are sold under marks that include both terms. However, applicant’s use “of both terms together, in reverse order, with a weak prefix, makes confusion likely, even if use of only one of the these terms from Registrant’s mark would not lead to confusion.”

Applicant's contention that consumers would exercise a “high degree of care” was unsupported by any evidence. Moreover, there are no restrictions in the cited registration or the opposed application, and so the Board must assume that the involved goods encompasse inexpensive products sold to all types of consumers.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: How did you do? How about this reverse combination?: HEAD BUTT versus BUTT HEAD? Got any other suggestions?

Text Copyright John L. Welch 2016.

TTAB Dismisses "WOD Snob" Opposition for Failure to Prove Standing and Priority

The Board dismissed this opposition to registration of the mark "WOD Snob" for decorative magnets and athletic apparel because opposers, claiming common law rights in WODSNOB for athletic apparel, failed to prove standing and priority. The parties invoked the TTAB's Accelerated Case Resolution regime, stipulating to certain facts and submitting declarations in lieu of testimony. Tiffany Ferrara and WodSnob, LLC v. Courtney Sebastianelli, Oppositions Nos. 91218270 and 91219528 (April 19, 2016) [not precedential].

As their case-in-chief, opposers submitted a declaration from their attorney, with attached exhibits. After applicant filed her declaration and brief, opposers submitted a reply brief with another declaration from their attorney. Applicant objected to the reply declaration on the ground that it constituted improper rebuttal. The Board agreed.

[M]any of Ms. Ferrara’s averments in her [reply] declaration and all exhibits filed therewith plainly relate to facts which appropriately should have been introduced as part of Opposers’ case-in-chief. This includes factual testimony and evidence involving Opposers’ standing, ownership of their pleaded mark and priority. Applicant was entitled to an opportunity to rebut, with her ACR brief and accompanying evidence, the evidence proffered in support of Opposers’ allegations in the notices of opposition. This opportunity was foreclosed because Opposers withheld the evidence until their rebuttal, which is intended to be limited to denials refutations or explanations of Applicant's testimony and evidence.

As to standing, although opposers pleaded ownership of the mark WODSNOB and alleged that they filed an application to register the mark, Applicant did not admit those allegations, and opposers did not prove them. Oppposers' initial declaration referred to certain documentary exhibits as "true and authentic" copies - including photographs of apparel and hangtags, invoices, various Internet pages, but not a copy of their application to register.  The Board pointed out that these documents can be considered only for what they show on their faces, not for the facts stated therein. The attorney declaration did not recite any facts regarding the exhibits, or corroborate the truth of the statements made, or explain the significance of the documents.

For example, Norton declaration exhibits A-C comprise copies of printouts or photographs of apparel containing the term WODSNOB imprinted on the articles of clothing. On the face of these pictures, there is no way to determine if these are Opposers’ goods.

She did not state in her declaration that opposers are the owner of the WODSNOB mark or that opposers filed an application to register.

Therefore the Board dismissed the opposition.

Read comments and post your comment here.

TTABlog comment: Looks like opposer had better seek review by way of civil action, where they start over again and make a proper record.

Text Copyright John L. Welch 2016.

"MAGNESITA" Generic for Refractory Bricks, Says TTAB

The Board affirmed refusals to register the mark MAGNESITA for refractory bricks and related products, on the ground of genericness, and for providing information via a global computer network regarding refractory products, on the ground of mere descriptiveness. The English translation of "magnesita" is "magnesia" or "magnesite." In re Magnesita Refractories Company, Serial Nos. 77873477 and 85834316 (May 17, 2016) [not precedential].

Genericness: As to the goods in Application Serial No. 77873477, the Board found the genus to be adequately defined by applicant's identification of goods. The relevant consumers are the public at large, namely, ordinary consumers who purchase refractory products, which include household, commercial, and industrial users.

The Board applied the doctrine of equivalents, noting translations of MAGNESITA in the record from the Italian, Spanish, and Portuguese, all modern languages. The ordinary American purchaser includes "all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English." Purchasers are likely to "stop and translate" MAGNESITA when encountering it in connection with refractory products. The Board therefore found the mark to be equivalent to the English words "magnesite" and "magnesia."

Dictionary definitions and numerous website excerpts established that "magnesite and magnesia are the name of elements used in refractory products, including refractory bricks," and that they are significant aspects of the refractory products. The evidence indicated that magnesite and magnesia are used "to name or refer to a type of refractory brick (e.g., magnesite brick, magnesia-chrome brick).

Based on this evidence we have no doubt that potential purchasers familiar with Spanish, Portuguese or Italian would understand MAGNESITA to refer, at minimum, to a type of refractory brick, i.e., a magnesite brick. In re Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998) (ATTIC generic for sprinklers because consumers would understand it to refer to a category of sprinklers). If the proposed mark is held generic for any of the goods identified in a class of an involved application, registration is properly refused. ***. See also Cordua, Rests, Inc., ___ USPQ2d ___ (“[A] term is generic of the relevant public understands the term to refer to part of the claimed genus of goods or services, even if the public does not understand the term to refer to the broad genus as a whole.”).

Acquired Distinctiveness: The Board considered, in the alternative, applicant's claim MAGNESITA has acquired distinctiveness for refractory bricks, and it also considered the Section 2(f) issue as to applicant's services. Applicant had the burden to prove acquired distinctiveness.

The Board found applicant's proposed mark to be highly descriptive, and therefore more evidence is required to establish acquired distinctiveness. Applicant submitted evidence of substantial gross annual sales and proof of use since 2008, but there was no evidence of the extent to which the public perceives MAGNESITA as a source indicator. The Board therefore found that applicant had failed to prove acquired distinctiveness, and so it affirmed the Section 2(e)(1) refusals to register.

Read comments and post your comment here.

TTABlog comment: The Board stated that by making a Section 2(f) claim of acquired distinctiveness, applicant had conceded that the proposed mark is merely descriptive. I suggest that applicant conceded only that the mark is not inherently distinctive; it was contending that the mark was not merely descriptive because the mark had acquired distinctiveness.

Text Copyright John L. Welch 2016.

Test Your TTAB Judge-Ability On This Phantom Mark Refusal

The USPTO refused registration of the mark shown below for "financial analysis and consultation," deeming it to be a phantom mark - i.e., a mark with a changeable element - and therefore unregistrable under Sections 1 and 45 of the Trademark Act. The mark comprises "the term 'XXX.XX' forming a pattern of overlapping (sic) circles. The design consists of a distinctive arrangement of numerical financial data. Each 'X' in the design represents a single digit integer, for example, 0, 1, 2, 3, 4, 5, 6, 7, 8 or 9." How do you think this appeal came out? In re Perception Options LLC, Serial No. 86104779 (May 11, 2016) [not precedential].

The Board observed that a trademark application may seek to register only one mark and must be limited to a single mark. A mark that contains a "phantom" element "is considered to comprise more than one mark and, as such, dose not provide proper notice to other trademark users." If the changeable element is limited in number of possible variations, however, the mark may be registrable. See In re Dial-A-Mattress Operating Corp., 57 USPQ2d 1807, 1812-13 (Fed. Cir. 2013) (area codes limited in number).

Examining Attorney Roselle M. Herrera contended that Applicant sought to register more than one mark because "the 'X' in Applicant's drawing refers to a changing single digit integer ...." The possible combinations are limitless, she asserted.

Applicant argued that the "coordinates of the [changeable integer] element [in the mark] create the oval design," and the visual pattern with the oval remains fixed. It analogized the integers to pixels, as in micrography or text art (see example below). Thus it sought registration for "a single mark for which the overall commercial impression is a fixed oval design."

The Board, however, found that the description of the proposed mark refers to more than one mark. There are no restrictions as to the numbers used or the combination of numbers used, or the color or font of the digits.

The commercial impression of the proposed mark will change depending on the numbers used, repeating and/or in combination, font-style, font-type, or color (or a mix of font-styles, font-types or colors) in connection with identical or varied number-strings (XXX.XX) within the oval, with resultant areas within the oval being more prominent than the oval itself.

Even if the fonts or colors are not mixed, the use of "certain number-strings in the same found can create a different commercial impression," as illustrated by Applicant's examples:

In the first and second example, the ovals engender different impressions resulting from use of 111.11 versus 666.66, that latter appearing to be bolder. In the third and fourth, using mixed number strings, certain areas of the ovals are more prominent based on placement of the numbers used in the string.

Applicant can create a varying commercial impression; the number-strings could be used in such a way to create prominent and recessive sections within the oval so as to create a design, and the design may not be perceived as simply a fixed oval or interlocking ovals as stated in the description of the mark.

The Board concluded that the ability to change the number-strings within the oval (and to change fonts and color) results in more than one mark. As a result adequate notice to the public is not provided, and the public's ability to conduct a thorough search is not possible.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: How did you do? I think this mark would be registrable if applicant specified the font and color of the integers. And why do font and color matter anyway, since a standard character mark can be displayed in different fonts and colors, and a design mark without a color claim can be displayed in any color?

Text Copyright John L. Welch 2016.

CAFC Upholds TTAB: CHURRASCOS (Stylized) Generic for Restaurant Services

The U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's ruling in In re Cordua Restaurants LP, 110 USPQ2d 1227 (TTAB 2014) [precedential] [TTABlogged here], finding the term CHURRASCOS, in the stylized from shown below, to be generic for restaurant services. The fact that Applicant Cordua owns a registration for the mark CHURRASCOS in standard character form for the same services ("restaurant and bar services; catering") was irrelevant because each trademark application must be examined on its own merits. In re Cordua Restaurants, Inc., 118 USPQ2d 1632 (Fed. Cir. 2016) [precedential].

The question of whether a term is generic is a question of fact. The CAFC applies the "substantial evidence" standard in reviewing the TTAB's determination.

The court first pointed out that Cordua's ownership of a registration for the CHURRASCOS word mark did not preclude a finding of genericness for the stylized version of the mark. Cordua argued that the Board should have fully considered its "incontestable registration," but the court observed that a mark's incontestability under Section 15 is not a shield against genericness. Section 14 states that a registration for a mark that has become generic may be cancelled at any time.

In any event, this proceeding does not involve the earlier registration, and the Section 7(b) presumption of validity of that registration does not carry over to the new application for registration of a different mark. The Board must evaluate the present record to determine whether the stylized mark is ineligible for registration, and the USPTO must establish genericness by clear evidence. The Board applied that standard here.

The court noted that the Board's genericness analysis addressed Cordua's own restaurant services (stating that "'Churrasco' steak is clearly one of the primary items applicant's CHURRASCOS restaurants serve"). However, that error was harmless, because the Board properly determined that the involved genus of services was "restaurant services," and Cordua agreed with that determination.

The question, then, was whether "churrascos" is generic for restaurant services generally. The Board's findings that "churrascos" is a generic term for a type of grilled meat, and that "churrascos" is a generic term for a restaurant featuring churrasco steaks, was supported by substantial evidence.

Cordua maintained that "churrascos" refers to a style of grilling meat and not to restaurant services, but the court observed "[i]f the relevant public would understand a term denoting a specialty dish to refer to a key aspect of restaurant services, then the term is generic for restaurant services." Substantial evidence supported the finding that "churrascos" refers to a "key aspect" of a class of restaurants because those restaurants are commonly referred to as "churrasco restaurants." The Board found no error in the Board's conclusion that "there  is a class of restaurants that have churrascos as a centeral focus of their services, and both competitors in the field and consumers use the term 'Churrasco" to refer to this type of restaurant."

Cordua contended that even if "churrascos" is generic as to "churrasco restaurants" (also known as "churrascarias"), it is not generic for all restaurant services. However, a term is generic if relevant consumers understand the term to refer to part of the claimed genus, even if the public does not understand the term to refer to the broad genus as a whole. For example, "pizzeria" is generic for restaurant services, even though it refers only to a sub-group or type of restaurant rather than to all restaurants.

[R]egistration of the stylized form of CHURRASCOS on the Principal Register would give Cordua rights that it could enforce against all others providing restaurant services, including operators of traditional Latin American churrascarias (churrasco restaurants) that specialize in meat grilled in the churrasco style

And so the CAFC held that the TTAB did not err in its decision.

Read comments and post your comment here.

TTABlog comment: In footnote 2 of its opinion, the CAFC dismissed the notion that the USPTO's determination that the CHURRASCOS word mark was eligible for registration is binding in this case as a matter of issue preclusion under B&B Hardware. The CAFC found no suggestion in B&B Hardware that an examining attorney's decision to register or refuse to register a mark satisfies the traditional requirements of issue preclusion. See Restatement (Second) of Judgments Sec. 27 (1982) (requiring that an issue be "actually litigated" between parties for issue preclusion to apply).

Text Copyright John L. Welch 2016.

Meet the Bloggers XII: Monday, May 23rd, 8 PM, Kings Bowl

MEET THE BLOGGERS is back for the twelfth time. Perhaps the best non-INTA event ever devised by woman or man, MTB XII will be held on Monday, May 23rd, 8 PM. at Kings Bowl America in Orlando (here). Come and meet some of the best trademark attorneys in the world, and while you're at it say hello to the sponsors of this year's event. For details, directions, a look at the sponsoring bloggers, and the RSVP link, go here.

San Diego 2015

Hong Kong 2014

Dallas 2013

Washington, D.C. 2012. Co-hosts Pelton, Welch, Coleman, Schwimmer

San Francisco, 2011

Boston 2010. Co-hosts: Coleman, Chestek, Schwimmer, and Welch


Seattle 2009


Berlin 2008


Coleman, Schwimmer, Welch, Chicago 2007


Toronto 2006

San Diego 2005Click on photo for larger picture
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Precedential No. 14: FTD's Twitter Account Not a Separate, Registrable Service, Says TTAB

The Board affirmed a refusal to register the mark SAY IT YOUR WAY for "creating an on-line community for registered users ...," finding that Applicant FTD failed to show use of the mark with the recited service. The Board ruled that FTD's Twitter page did not offer this social-networking service as a separable service to others, but rather as merely incidental to the sale of its goods. In re Florists' Transworld Delivery, Inc., 119 USPQ2d 1056 (TTAB 2016) [precedential].

FTD sought to register its mark for "Creating an on-line community for registered users to participate in discussions, get feedback from their peers, form communities, and engage in social networking featuring information on flowers, floral products and gifts." (Class 42). The specimens of use comprised its Twitter "profile" page along with several related Internet webpages. The question was whether FTD or Twitter was providing the services of "creating an on-line community."

The Board pointed to a recent revision to the TMEP that cautioned examining attorneys to carefully examine webpages from social-networking websites to make sure that the mark in question is being used with the recited services:

Some applicants may mistakenly mischaracterize their services as ‘social networking’ because they assume that advertising or promoting their non-social-networking services via a social-networking website means they are providing social-networking services. For instance, an applicant may mistakenly file an application for ‘online social-networking services’ and provide a Facebook® webpage as a specimen when, in fact, they operate a pet store and are only using the Facebook® website to advertise the pet store and communicate information to and messages with actual and potential customers. Such a specimen is not acceptable for the social networking services since it does not demonstrate that the applicant is providing these services. TMEP Section 1301.04(h)(iv)C).

FTD argued that it had created its own virtual sub-community within Twitter, but the Board was unmoved. "Applicant has done nothing more than use the Twitter online community forum to engage in social-networking for its own benefit, and to advertise its online retail store services, which are rendered over its own corporate website ...." Moreover, to the extent that FTD provides information regarding flowers or conducts events to promote the sale of flowers, those activities do not appear appear to constitute a separate "registrable service," but are merely incidental too its primary services.

Therefore, the Board affirmed the refusal to register under Sections 1 and 45 of the Trademark Act.

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TTABlog comment:The Examining Attorney withdrew the refusal to register the mark in Class 35 for "Online retail store services featuring flowers and gifts, and promoting the retail services of member florists."

Text Copyright John L. Welch 2016.

TTAB Test: Which One of these Four 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 that approach to these four recent appeals. Which one resulted in a reversal? [Answer in first comment.]


In re Comfortband, LLC, Serial No. 86174491 (May 11, 2016) [not precedential]. [Refusal to register PRECISION SENSABAND for "identification bracelets, not of metal, for hospitals; identification bracelets, not of metal; identification wristbands, not of metal, for hospitals," in view of the registered mark PRECISION (in script font) for "plastic hospital identification bracelets"].

In re 730 Rue Bienville, L.L.C., Serial Nos. 86351471 (May 11, 2016) [not precedential]. [Refusal to register the mark shown below for "bar and restaurant services provided in a hotel" [EST. 1933 and LA LOUISIANE disclaimed], in view of the registered mark 21st AMENDMENT for "restaurant services; brewpub services"].

In re Urban Yoga, LLC, Serial No. 86392231 (May 11, 2016) [not precedential]. [Refusal to register the mark shown below left, for "yoga instruction" [YOGA and "Om symbol" disclaimed], in view of the registered mark shown below right for, inter alia, "yoga instruction" [YOGA FLORIDA disclaimed]].

In re Montfort Services Sdn. Bhd, Serial No. 86167048 (May 9, 2016) [not precedential]. [Refusal to register OSKALILY for Clothing, namely, ... shirts, jackets, coats; knitwear, namely, jumpers, cardigans, and sweaters; pants ... ; formal wear, namely, jackets, coats, and tuxedoes; ... , " in view of the registered mark OSKA for “women's and men's outer clothing, including of leather, namely, jackets, shirts, suits, pants, dresses, blouses, skirts, belts, Bermuda shorts, sweaters, tops, and sashes"].

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TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.

TTABlog Test: Is "DIGITAL BOOTH" Merely Descriptive of Metal Phone Booths?

The USPTO refused registration of the mark DIGITAL BOOTH for "metal phone booths." Applicant Packaging 22 argued that the mark is merely suggestive because "there is nothing digital about a phone booth." The Examining Attorney maintained that the mark describes booths that will feature digital voice over IP telephone services. How do you think this came out? In re Packaging 22, LLC, Serial No. 86212977 (May 10, 2016) [not precedential].

Applicant contended that the mark has a "strong incongruity" because "'booth' is something tangible, physical, and of low technology. 'Digital' denotes modern, high tech, and something ephemeral." A booth cannot be digital, and something digital cannot be a booth.

The Board, however, found nothing incongruous about the mark DIGITAL BOOTH; it "immediately describes a purpose or function of the goods, that is, the phone booth is designed and built to house digital technology, namely, a VoIP phone. Relying on dictionary definitions of "digital," "booth," and "VoIP," the Board found that the combination of DIGITAL and BOOTH does not convey "any distinctive source-identifying impression contrary to the descriptiveness of the individual parts."

Applicant indicated that its booths will house VoIP technology, and third-party websites showed that phone booths employ VoIP digital technology.

On this record, we conclude that consumers familiar with Applicant’s goods would immediately understand, upon seeing Applicant’s proposed mark, that the goods are designed and built to house a digital telephone. No imagination or thought is required by a prospective purchaser to discern that a significant purpose or feature of Applicant’s “metal phone booths” is use with digital technology, namely VoIP.

Finally, the Board observed that "the fact that an applicant may be the first and only user of a merely descriptive designation does not justify registration if the only significance conveyed by the term is merely descriptive."

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TTABlog comment: How did you do? Do you think this was a WYHA?

Text Copyright John L. Welch 2016.

Belmora Seeks En Banc Reconsideration of 4th Circuit's FLANAX Decision

Belmora LLC yesterday filed a petition for reconsideration en banc [pdf here] of the FLANAX decision issued by the U.S. Court of Appeals for the Fourth Circuit in Belmora LLC v Bayer Consumer Care AG, et al., Appeal No. 15-1335 (4th Cir. March 23, 2016). The appellate court vacated the ruling of the U.S. District Court for the Eastern District of Virginia, and remanded the case to the district court.

Belmora's FLANAX
Based on its reading of the Supreme Court’s Lexmark decision, 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, ruling 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 [Bayer], to assert priority rights over a mark that is registered and used by another party [Belmora] in this country. The Fourth Circuit concluded that the district court misapplied Lexmark, observing that there is no requirement in the language of Section 43(a) or Section 14(3) that a plaintiff must have used its own mark in commerce.

In its petition for reconsideration en banc, Belmora argues that the court's decision warrants en banc review because it "(i) overlooked material facts and legal considerations; (ii) conflicts with decisions of the United States Supreme Court, this Court, and other U.S. circuit courts of appeal; and (iii) raises questions of exceptional importance regarding the scope of 15 U.S.C. §§ 1051 et. seq. ('the Lanham Act')."

In holding that a claimant need neither own nor have used a trademark in U.S. commerce to maintain a cause of action under either § 14(3) or §43(a) of the Lanham Act, the panel decision appeared to be motivated by a sense of ethical outrage - misplaced, as will be shown - directed at one party as a result of which the Court, it is respectfully submitted, was regrettably too quick to throw out the legal baby with the equitable bathwater. In doing so, it jettisoned its own precedent, failed to address substantively significant authority that is in accord with that approach, and, by giving short shrift to the plain language of the statute and a forced reading of Lexmark Int’l Inc. v. Static Control Component, Inc., 134 S. Ct. 1377 (2014) threatened to undermine the integrity of the federal trademark system by widening any extant circuit split on this issue with a crowbar.

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TTABlog comment: Notably, the Fourth Circuit declared that Belmora is the owner of the FLANAX mark in the United States.

Text Copyright John L. Welch 2016.

TTABlog Test: Are These Two Word + Design Marks Confusable for Restaurant Services?

The USPTO refused registration for the mark shown below left, finding it likely to cause confusion with the mark shown below right, both for restaurant services. On appeal, applicant argued that his restaurant is in Virginia while registrant's is in Alabama, that his mark features a buffalo, not a chicken, and that the word PHILLY'S refers to to a geographical location [Cleveland), whereas PHIL's is a person's name. How do you think this came out? In re Shah, Serial No. 86042729 (May 6, 2016) [not precedential]

Of course, applicant's geographical distinction went nowhere, since the cited registration provides nationwide protection, and since applicant is seeking a nationwide registration.

As to the marks, The Board observed for the umpteenth time that when the services are identical, a lesser degree of similarity between the marks is needed to support a finding of likely confusion.

Despite the distinctions between the marks, the Board find that their overall look "remains close."

Both designs are essentially circular, with two concentric circles surrounding the drawing of the head of a central animal figure, and wording that is placed above and beneath the animal’s head. The dominant portion of both Applicant’s and Registrant’s marks, however, are not the designs, which serve as background, but the prominent words BUFFALO PHILLY’S and BUFFALO PHIL’S; ....

The Board noted that in a word + design mark, the literal portion is usually given greater weight because literal portion of a mark is far more likely to be remembered impressed and to be used when ordering the goods. It found "little memorable difference" between BUFFALO PHILLY'S and BUFFALO PHIL'S. As to connotation, there was no evidence of any geographical meaning [judicial notice? - ed.], but if there were one it would apply to both marks. In sum, the Board found the marks to be "highly similar in pronunciation and connotation and, despite the differences in appearance, are similar in their overall commercial impressions."

The Board concluded that confusion is likely, and so it affirmed the refusal.

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TTABlog comment: Is this a WYHA? Would BISON PHILLY'S be confusable with BUFFALO PHIL'S? How about BISON BILL'S and BUFFALO PHIL'S?

Text Copyright John L. Welch 2016.

TTAB Affirms Functionality Refusal of Door Channel Configuration Mark

Here we go again. Another product design mark failed to gain entry into the Hall of Registrations. The Board affirmed a Section 2(e)(5) functionality refusal of the configuration mark shown below, for "Metal doors, commercial reinforced steel doors” and “Non-metal doors." The mark comprises the configuration of the U-shaped channel that runs the length of the door.  In re Openings d/b/a Total Door, Serial No. 86044043 (May 5, 2016) [not precedential]. [Affirmed per curiam by the CAFC, October 11, 2017].

A product feature is functional "when it is essential to the use or purpose of the device or when it affects the cost or quality of the device." TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001) (citing Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 34 USPQ2d 1161, 1163-64 (1995) and Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982)).

The Board observed that utility patents have "vital significance in resolving [a] trade dress claim." quoting Traffix. "Moreover, utility patent evidence of functionality is entitled to even greater weight where, as here, the patent’s owner seeks a trademark registration for the same configuration claimed in the (expired) patent." And the Board noted that "product design almost invariably serves purposes other than source identification." TrafFix, 58 USPQ2d at 1005 (quoting Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 US. 205, 54 USPQ2d 1065, 1069 (2000)).

Applicant's expired patents disclosed and claimed a U-shaped locking channel running the full length of a door, and further stated that this configuration provides a number of benefits, including enhanced security and lower cost of manufacture.

Applicant's advertising touted the efficacy of the channel configuration:

[T]he full length locking channel "acts as a 5/8" deadbolt along the full length of the door." It provides "exceptional security on single doors and eliminates vertical rods, floor hardware, coordinators, astragals and flush bolts on pairs and double-egress fire doors." Moreover, the locking channel requires "no templating" and uniformly distributes loads to the door, "increasing the strength, durability and abuse resistance of the door and frame." These are all functional benefits.

Because the expired patents and the advertising statement established the functionality of the design, the Board did not need to consider alternative designs or cost of manufacture. In any case,

applicant’s argument that “the alternative designs are equal to, or even superior” to applicant’s design rings hollow in view of its own touting to the contrary in promotional materials. Given the utilitarian advantages of applicant’s configuration (one need only believe applicant’s own statements in its promotional materials) ... it follows that competition is hindered. In re Caterpillar, 43 USPQ2d at 1441.

Moreover, even in the expired patents did not reveal that applicant's design minimizes cost, and even if applicant's costs were higher, applicant would have an advantage by excluding competitors "from using what is, as claimed in the patents and Applicant’s advertisements, a desirable product design for a door." See In re Dietrich, 97 USPQ2d at 1637.

And so the Board found the mark functional under Traffix and Inwood.

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TTABlog comment: WYHA? Let's face it, if there are prior, relevant utility patents, the door to registration will be slammed shut.

Text Copyright John L. Welch 2016.

BULLET Confusable with BULLIT for Bicycle Parts and Bicycles, Says TTAB

Here's a real yawner. The Board affirmed a refusal to register the mark BULLET for "Bicycle parts, components and accessories, namely, bicycle wheels, rims and spokes for bicycle wheels, hubs, fast-locking hubs for bicycle wheels, brakes, tires, tubular tires, and inner tubes," finding the mark likely to cause confusion with the registered mark BULLIT for "bicycle (sic) and bicycle frames." Applicant argued that its actual products are specialized and expensive, and are sold under the famous mark "Camapagnolo." Irrelevant, said the Board. In re Campagnolo S.R.L., Serial No. 85168469 (May 4, 2016) [not precedential].

The Marks: Applicant argued that "bullit" is an invented word that has no meaning, whereas "bullet" has well established meanings, but that argument missed the target. The Board observed that a slight difference in spelling does not always result in differences in meaning or connotation. The Supreme Court long ago observed that "[b]ad ornithology has not yet become so rare or so easily detected as to make a word the arbitrary sign of something else than its conventional meaning." The Board agreed with Examining Attorney Leslie L. Richards that because "bullit" does not have a recognized meaning, consumers are likely to assume that it means the same as the phonetically equivalent word "bullet."

Therefore the Board found that the marks are highly similar, and so the first du Pont factor weighed against Applicant Campagnolo.

The Goods: Third-party registration evidence demonstrated that the goods are related and are sold in the same channels of trade to the same customers. Campagnolo maintained that its goods are "limited to expensive products sold to knowledgeable and sophisticated purchasers only through authorized distributors." The Board, however, pointed out that there are no such limitations in the opposed application. Nor was there any evidence that ordinary purchasers of bicycles or parts "are so discriminating or exercise such care in their purchases as to avoid confusion when related goods are sold under similar marks."

The Board found the involved goods are closely related, are advertised and sold in the same channels of trade, to the same (or an overlapping group of) purchasers.

Campagnolo asserted that absence of actual confusion during two years of coexistence on the market supported a finding of likely confusion. Not long enough, said the Board. Moreover, the absence of evidence of actual confusion is seldom probative in the ex parte context because the registrant has no opportunity to submit evidence on the issue.

Campagnolo claimed that it is "an iconic source of cycling components," and "extremely well-known and highly regarded in the cycle racing world ...." The Board pointed out, however, that a junior party "gains no advantage when its fame eclipses that of the prior users." [Can you say "reverse confusion"? - ed.].

Finally, Campagnolo asserted that its BULLET trademark is always use along with the CAMPAGNOLO house mark, but the Board pointed out that the only trademark it may consider is the one applied for.

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

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TTABlog comment: WYHA?

Text Copyright John L. Welch 2016.

"HIGH SCHOOL WORLD SERIES" Confusable with MLB'S "WORLD SERIES" Marks, Says TTAB

Applicant S9 Sports whiffed in its attempt to register the mark HIGH SCHOOL WORLD SERIES for, inter alia, "promoting sports competitions and/or events of others; promoting the goods and services of others by arranging for sponsors to affiliate their goods and services with high school baseball." The Board sustained this opposition filed by the Office of the Commissioner of Baseball, finding applicant's mark confusingly similar to the "very famous" and registered mark WORLD SERIES for entertainment services in the nature of baseball games, and for other related services, including organizing community sporting events. Office of the Commissioner of Baseball v. S9 Sports, LLC, Opposition No. 91200934 [not precedential].

Fame (Strike One): The Board found the mark WORLD SERIES to be "very famous," particularly in connection with Opposer’s championship baseball series and related promotional goods and services. Applicant grudgingly acknowledged the mark's fame:

The Opposer’s World Series marks are famous. There is no question about it. (The three + pages of “look how great and famous we are” self aggrandizing preaching done by Opposer on this issue are wholly unnecessary and irrelevant.)

Of course, fame plays a dominant role of in the du Pont analysis.

The Marks (Strike Two): The only distinctive term in applicant's mark is WORLD SERIES. "The presence of the additional term HIGH SCHOOL would not be likely to distinguish the marks since it would merely indicate that Applicant offers a subset of Opposer’s services under its mark." The Board found the marks to be more similar than dissimilar, and this factor weighed in Opposer's favor.

The Services (Strike Three): The services as recited in the application and registration overlap . Applicant argued that the services of the parties are readily distinguishable.

It is laughable for anyone to say that the common major league baseball consumer would drive to some out of the way field with lights emblazoned “High School World Series”, in a parking lot loaded with minivans with paint on the windows saying“Go Bobby”, pay $6 for a ticket, enter a no-alcohol environment, and then think to himself, “What a deal I’m getting to see major league baseball!!”

The Board agreed, that someone attending a major league baseball game is unlikely to believe that he or she is watching a high school game: "Even the most exasperated of fans, comparing the play of a
professional baseball team with the level of play encountered at a neighborhood sandlot game, are nonetheless unlikely to believe they are watching or attending anything other than an unfortunate performance by their favorite professional team."

But the question is not whether consumers would confuse the services, but rather the source of the services.

[B]ased on the fame of Opposer’s mark, consumers know that Opposer will use its mark for advertising and promoting the goods and services of others in connection with its baseball championship. Also, as indicated above, consumers are likely to believe that Applicant’s services rendered under the mark HIGH SCHOOL WORLD SERIES are a variation of Opposer’s WORLD SERIES services rendered at the high school level.

The Board concluded that confusion is likely, and it therefore sustained the opposition.

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TTABlog comment: The Office of the Commissioner of Baseball is an unincorporated association. Who knew?

Text Copyright John L. Welch 2016.

USPTO Moves to Dismiss Its 11th Circuit HOUNDSTOOTH MAFIA Appeal

On April 29, 2016, the USPTO filed a motion (here) to voluntarily dismiss its appeal from the decision of the U.S. District Court for the Northern District of Alabama in 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). In that ruling [TTABlogged here], the district court ordered the TTAB to vacate its decision in the HOUNDSTOOTH MAFIA case after the Board declined to do so on the request of the parties. The TTAB vacated its original 2013 decision in March 3, 2016.

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TTABlog comment: Several dozen law professors wrote to the Department of Justice, asking the Department to pursue this appeal due to their concern over this pay-for-vacatur approach to the law.

Text Copyright John L. Welch 2016.

TTABlog Test: Is FLIP'N CHICKEN Confusable with FRICKIN' for Restaurant Services?

Fricker's opposed Samar Haddad's application to register the mark FLIP'N CHICKEN for "restaurant services, restaurants featuring home delivery, and take-out restaurant services" [CHICKEN disclaimed], claiming a likelihood of confusion with the registered mark FRICKIN’ for restaurant services. The services are legally identical, but what about the marks? Are they too close? How do you think this came  out? Fricker’s Progressive Concepts, Inc. v. Samar Haddad, Opposition No. 91207770 (April 27, 2016) [not precedential].

Applicant Haddad argued that the marks differ in sound and appearance, and engender different commercial impressions because “FLIP’N” suggest[s] food prepared by flipping, whereas “FRICKIN’” refers to the ‘F’ word and to opposer's adoption of that meaning for its "amusing and memorable collection of marks."

The Board, however, compared FRICKIN' with the dominant portion of applicant's mark, FLIP'N, and found the involved marks to have striking similarities: they look similar and share the same cadence.

As to meaning, opposer's witness submitted printouts from THE ONLINE SLANG DICTIONARY and the URBAN DICTIONARY as evidence that the words “frick,”“fricking,” “flip,” and “flipping” are "socially acceptable euphemism[s] for the ‘F’ word." Applicant objected on the ground that these dictionaries are crowdsourced and therefore of unreliable origin. The Board agreed that the URBAN DICTIONARY has its limitations, but took judicial notice of like definitions of "fricking" and "flipping" from the THE AMERICAN SLANG DICTIONARY.

FRICKIN’ is a play on the surname of Opposer’s founder; it is memorable because of its euphemistic meaning. While FLIP’N might "suggest food prepared by flipping," FLIP’N also shares the same euphemistic meaning as FRICKIN’. *** Because FRICKIN’ creates such a strong commercial impression, and because FLIP’N and FRICKIN’ are so similar in appearance and cadence, and both words are euphemisms for the word “fucking,” when viewed in their entireties we find that Opposer’s mark FRICKIN’ and Applicant’s mark FLIP’N CHICKEN have highly similar commercial impressions.

The Board therefore found confusion likely and it sustained the opposition.

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TTABlog comment: I think applicant could have argued that his mark is a play on the phrase "flip him (or her) the bird," and therefore the marks have different, albeit vulgar, connotations.

Text Copyright John L. Welch 2016.