Thursday, June 30, 2016

TTABlog Quarterly Index: April - June 2016

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Section 2(a) - Disparagement:
Section 2(a) - Deceptiveness:
Section 2(d) - Likelihood of Confusion:

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

Section 2(e)(2) - Primarily Geographically Descriptive:
Section 2(e)(4) - Primarily Merely a Surname:
Section 2(e)(5) - Functionality:
Section 2(f) - Acquired Distinctivness:
Dilution:
Failure to Function/Phantom Mark:

Genericness:
Ownership:
Use/Specimens of Use:
Discovery/Evidence/Procedure:
CAFC decisions:

Recommended Reading:
Other:
Text Copyright John L. Welch 2016.

posted by John L. Welch @ 6/30/2016   0 comments

Wednesday, June 29, 2016

TTAB Posts July 2016 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled three (3) oral hearings for the month of July. 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.



July 21, 2016 - 11 AM: Merrick Pet Care, Inc. v. Petkin Inc., Opposition No. 91217064 [Section 2(d) opposition to registration of FLOSSBONE for "edible chews for dogs," in view of the registered mark FLOSSIES for "dog treats"].


July 26, 2016 - 2 PM: In re LC Trademarks, Inc., Serial No. 85890412 [Refusal to register DEEP! DEEP! DISH PIZZA for pizza [DEEP DISH PIZZA disclaimed], on the ground of mere descriptiveness under Section 2(e)(1) and insufficient proof of acquired distinctiveness under Section 2(f))].



July 28, 2016 - 11 AM: In re Eureka Restaurant Group, LLC, Serial No. 86258059 [Section 2(d) refusal of EUREKA! DISCOVER AMERICAN CRAFT & Design for restaurant services, in view of the registered marks EUREKA PIZZA & Design for "restaurant services, namely, restaurants featuring home delivery, carryout, and catering services" [PIZZA disclaimed] and EUREKA PIZZA in standard character form, for "food preparation services featuring pizza, bread sticks, and sauces except hot sauces; restaurant services featuring delivery, carry-out, and catering" [PIZZA disclaimed]].


Read comments and post your comment here.

TTABlog note: Any predictions?

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 6/29/2016   0 comments

Tuesday, June 28, 2016

TTAB Affirms 2(e)(4) Surname Refusal of "DICKMAN'S" for Pickles

The Board affirmed a Section 2(e)(4) refusal of the mark DICKMAN'S for jams, jellies, pickles, and other class 29 goods, finding the mark to be primarily merely a surname. Applicant Enumclaw Farms argued that the number of persons with the surname DICKMAN is an inconsequential portion of the US population, but the Board found that the evidence sufficiently demonstrated that consumers are likely to perceive the mark as a surname. In re Enumclaw Farms LLC, Serial No. 85942195 (June 24, 2016) [nor precedential].


As usual, The Board applied the test set forth in In re Benthin. Applicant stated that "DICKMAN'S is not the proper surname of anyone connected with Applicant," but rather the mark was selected arbitrarily. Applicant conceded that "dickman" has no dictionary meaning.

Examining Attorney John S. Yard submitted LexisNexis results indicating that 1729 persons have the surname DICKMAN. He also submitted more than 100 news articles referring to individuals having that name. Applicant provided data from the 2000 census, revealing 5682 occurrences of the surname DICKMAN, ranking the name as the 5,601st for common surnames.

Finally, the Examining Attorney contended that DICKMAN has the structure of a surname, since "-MAN" is an extremely common suffix in surnames: e.g., Bachman, Goodman, Herman. Moreover, he maintained, the possessive form of the word does not diminish its surname significance, but rather reinforces it.

Applicant pointed out that the Examining Attorney had not provided evidentiary support for his assertion regarding these other names, but the Board deemed the other evidence sufficient to support the refusal. It found that the applied-for mark will be perceived by consumers as primarily merely a surname.

The fact that the number of persons with the surname represents a small percentage of the total U.S. population is inconsequential so long as the evidence sufficiently demonstrates that consumers are likely to primarily understand DICKMAN’S as a surname. In this case, the Examining Attorney has made such a prima facie showing. The evidence shows that the primary and almost exclusive manner in which the public is exposed to the term “dickman” is in the context of it being a surname.

The Board agreed with the Examining Attorney that the possessive ending of the mark reinforced its surname significance because consumers will believe that the identified goods are prepared and sold by someone with the surname "Dickman."

And so the Board affirmed the refusal

Read comments and post your comment here.

TTABlog comment: What do you think? Do you know any Dickmans?

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 6/28/2016   4 comments

Monday, June 27, 2016

CAFC Affirms TTAB: MAYARI Not Confusable With MAYA for Wine

Concluding that substantial evidence supported the Board's finding that the marks MAYARI and MAYA, both for wine, are sufficiently dissimilar to avoid confusion, the CAFC affirmed the Board's dismissal of this Section 2(d) opposition. Although the goods are identical, the channels of trade and classes of consumers are presumed to be the same, and the application and registration encompass inexpensive wines purchased with no more than ordinary care, the first du Pont factor was dispositive. Oakville Hills Cellar, Inc., dba Dalla Valle Vineyards v. Georgallis Holdings, LLC, 119 USPQ2d 1286 (Fed. Cir. 2016) [precedential].


The CAFC reviews the Board’s legal conclusions without deference and its factual findings for substantial evidence. In re Pacer Tech., 338 F.3d 1348, 1349 (Fed. Cir. 2003). Likelihood of confusion is a question of law based on underlying findings of fact. In re Chatam Int’l Inc., 380 F.3d 1340, 1342 (Fed. Cir. 2004). The determination of likelihood of confusion is based on the factors set forth in DuPont, 476 F.2d at 1361. In assessing the likelihood of confusion, the marks must be considered in their entireties as to appearance, sound, meaning, and commercial impression.

Although the word MAYA has established meanings, there was insufficient evidence to support opposer's assertion that consumers would perceive MAYARI as MAYA- and -RI. "Even assuming that consumers were to dissect MAYARI into separate components, Oakville failed to demonstrate to the Board why the dissection would be 'MAYA-RI,' not 'MAY-ARI' or 'MA-YARI.'"

As to sound, there was no evidence that consumers would emphasize "MAYA" in pronouncing MAYARI.

The evidence supported the Board's finding that MAYA is a familiar word, whereas MAYARI has no recognized meaning to U.S. consumers. The Board did not err in finding that "most customers would likely perceive MAYA as a female personal name or the name of the pre-Columbian civilization" and would "perceive MAYARI as a coinage without meaning."

Accordingly, the Board correctly found that the unfamiliar MAYARI is distinguishable from the familiar MAYA, and that the marks, considered in their entireties, are dissimilar as to appearance, sound, meaning, and overall commercial impression. We also conclude, on this record, that the Board did not err in balancing all relevant DuPont factors and in determining that the dissimilarity of the marks was sufficient to preclude a likelihood of confusion.

The court observed once again that "a single DuPont factor may be dispositive in a likelihood of confusion analysis, especially when that single factor is the dissimilarity of the marks."

Read comments and post your comment here.

TTABlog comment: That pronunciation thing is always a problem for the opposer. How would you prove the common pronunciation of a coined term?

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 6/27/2016   3 comments

Friday, June 24, 2016

USPTO Proposes Changes in Section 8 Affidavit/Declaration Requirements

On Wednesday, June 22nd, the USPTO published a Notice of Proposed Rulemaking entitled "Changes in Requirements for Affidavits or Declarations of Use, Continued Use, or Excusable Nonuse in Trademark Cases," Federal Register, Volume 81, No. 120, pp. 40589-40594 [pdf here]. "Specifically, the USPTO proposes to require the submission of information, exhibits, affidavits or declarations, and such additional specimens of use as may be reasonably necessary for the USPTO to ensure that the register accurately reflects marks that are in use in the United States for all the goods/services identified in the registrations, unless excusable nonuse is claimed in whole or in part." Comments must be received by the USPTO by August 22, 2016, preferably submitted electronically to TTABFRNotices at uspto.gov, or submit comments at the Federal Register website, here.


In order to assess and promote the accuracy and integrity of the trademark register, the United States Patent and Trademark Office (USPTO or Office) proposes to amend its rules concerning the examination of affidavits or declarations of continued use or excusable nonuse filed pursuant to section 8 of the Trademark Act, or affidavits or declarations of use in commerce or excusable nonuse filed pursuant to section 71 of the Trademark Act. *** A register that does not accurately reflect marks in use in the United States for the goods/services identified in registrations imposes costs and burdens on the public. The proposed rules will allow the USPTO to require additional proof of use to verify the accuracy of claims that a trademark is in use in connection with particular goods/services identified in the registration.

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 6/24/2016   1 comments

Thursday, June 23, 2016

TTAB Test: Are “INDI” and “INDY” Confusable for Clothing Items?

The USPTO refused registration of the mark INDI for various clothing items, including shirts and headwear, finding the mark likely to cause confusion with the registered mark INDY for “t-shirts” and “hats.” The goods are, in part, legally identical, but what about the marks? How do you think this came out? In re Strong Current, Ltd., Serial No. 86440263 (June 16, 2016) [not precedential].


The Examining attorney relied on the similarity of the marks in sound and appearance. Applicant conceded that the marks are likely to be pronounced identically and look similar. The Board agreed.

The Board, however, found pivotal the differences in connotation and commercial impression. The primary meanings of INDY are (1) “a form of auto racing” involving a banked, regular, typically oval track, and (2) a nickname for the city of Indianapolis. The mark INDI, with its fanciful spelling, has no such significance. Consequently, consumers are unlikely to assume that the involved goods come from the same source.

And so the Board reversed the refusal.

Read comments and post your comment here.

TTABlog comment: How did you do? I think the marks are confusable. BTW: Guess who owns the INDY registration?

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 6/23/2016   6 comments

Wednesday, June 22, 2016

Fame of Empire State Building Design Mark Yields TTAB Dilution Victory

The Board sustained an opposition to registration of the mark NYC BEER & Design (shown below left), for beers, concluding that the mark is likely to dilute Opposer’s famous design mark depicting the Empire State Building (shown below right). ESRT Empire State Building, L.L.C. v. Michael Liang, Opposition No. 91204122 (June 17, 2016) [not precedential].


Applicant Liang described his mark as including “a building resembling the Empire State Building” and he acknowledged that the building is famous. Opposer relied on, inter alia, two registration for its design mark for entertainment services (the observation deck) and real estate management and leasing services. The registrations described the mark as consisting of “the shape of the exterior of a skyscraper with a pointed, spindled top.”

Since the opposed applications were filed under Section 1(b) based upon intent-to-use, Opposer needed to prove that its marks became famous prior to the filing date of the applications.

The Board observed that fame for likelihood of confusion purposes differs from dilution fame; the latter is not determined in the context of certain goods or services, but rather the dilution claimant ‘must show that when the general public encounters the mark ‘in almost any context, associates the term, at least initially, with the mark’s owner.’”

The evidence established that the Empire State Building was completed in 1 931 and for 40 years was the tallest building in the world. It has been featured in hundreds of movies, including King Kong and Sleepless in Seattle. It features a 103rd floor observation deck visited by millions of guests per year. Opposer’s marks have been used with a wide variety of goods and services, and numerous licenses have acknowledged Opposer’s rights in the marks, with full attribution. Its annual sales revenues and advertising expenditures in connection with the marks are “very significant.” The marks receive extensive media exposure in print, radio, television, and the Internet. The Board therefore found the marks to be famous under Section 43(c)(2)(A).

Turning to the six non-exhaustive factors of Section 43(c)(B)(i)-(vi) for assessing the likelihood of dilution by blurring, Applicant’s witness stated that the building depicted in applicant’s mark is the Empire State Building, and there was no evidence to indicate otherwise. Nor was there any evidence that the marks lack inherent distinctiveness. Opposer’s use of its marks is “substantially exclusive.

There was no direct evidence, such as a survey, showing the level of recognition of the mark, but opposer’s activities in branding, co-sponsorship, and licensing of its design mark support its “its efforts to create maintain recognition not only of the Empire State Building, but of its activities under the mark.” There was no evidence that applicant intended to create an association with Opposer’s mark, nor any evidence of actual association, but as to the latter, applicant has not yet commenced us of his mark.

The Board concluded that applicant’s mark is likely to cause dilution by blurring of Opposer’s design mark. The Board declined to analyze Opposer’s Section 2(a) false association and Section 2(d) likelihood of confusion claims.

Read comments and post your comment here.

TTABlog comment: There are so few TTAB dilution decisions, why wasn't this precedential?

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 6/22/2016   4 comments

Tuesday, June 21, 2016

Precedential No. 17: BLACK MEN ROCK Confusable With BLACK GIRLS ROCK!, Says TTAB

In a case that "illustrates the efficiency of the Board's Accelerated Case Resolution procedure ('ACR')," the Board sustained a Section 2(d) opposition to the mark BLACK MEN ROCK & Design for "caps, hats, jackets, t-shirts" and for "education services, namely, providing live and on-line classes, seminars, workshops in the field of personal development." The Board found the mark likely to cause confusion with the registered mark BLACK GIRL'S ROCK! for "tee shirts," "charitable services, namely organizing volunteer programs for at-risk teenage women of color," and "entertainment, namely, a continuing award show broadcast over television; arranging and conducting of concerts; and entertainment services in the nature of live musical performances." Beverly A. Bond v. Michael Taylor, 119 USPQ2d 1049 (TTAB 2016) [precedential].


Each party had filed an unsuccessful summary judgment motion, leading the Board to encourage the parties to stipulate to resolution of the proceeding via the ACR procedure. In order to take advantage of ACR, the parties must stipulate that the Board may resolve any genuine disputes of material fact "in the context of something less than a full trial."

The parties agreed to use the Board's ACR procedure, and the Board approved the stipulation of the parties as follows:

• the Parties will principally rely upon the evidence submitted in connection with the two previously filed motions for summary judgment, and any supplemental declarations;

• the Parties may supplement their previously filed briefs on the motion for summary judgment, but will limit any supplemental briefs to ten pages;

• the Parties will forgo reply briefing;

• the burden of proof to establish her case by a preponderance of the evidence remains with Opposer and

• the Board may resolve disputes as to any material fact which the Board may find to exist and may issue a final ruling after considering the parties’ ACR submissions.

The Goods/Services: The goods of the parties are in part identical, and these identical goods are presumed to travel in the same channels of trade to the same classes of purchasers.

As to the services, the Board found that opposer's charitable services are related to applicant's educational services. It noted that applicant's recitation of services is not limited to "black girls." Moreover, opposer testified that men participated in her programs. However, the evidence was insufficient to show that the services of the parties are offered in the same trade channels.

The Marks: While there are differences in the marks,  "the connotations and commercial impressions are similar and the similarities outweigh the differences."

Both marks connote that the subject of the services ("black girls" and "black men") are "very good, impressive, or exciting." Thus, Opposer’s and Applicant's marks suggest that the programs offered by Opposer and Applicant improve the self-images of the participants. Both the design in Applicant's mark, consisting of the silhouette of a man with his arms outstretched in a sign of victory, and the exclamation point in Opposer's mark emphasize the positive outcome the programs hope to have on the participants.

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

Read comments and post your comment here.

TTABlog comment: In an ACR proceeding, may the parties stipulate that the Board's factual findings will have no collateral estoppel effect?

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 6/21/2016   2 comments

Monday, June 20, 2016

Precedential No.16: Filing of Cancellation Petition Tolls Section 14 As To Adddition of New Claim

Ashland Licensing (owner of the mark VALVOLINE) petitioned to cancel two registrations for the mark MAXVOLINE, in standard and design forms, for "lubricants for automobiles," within five years of issuance of each of the registrations, on the grounds of likelihood of confusion and abandonment. After the five-year anniversary dates, Ashland filed a motion to add a claim for nonuse. The Board ruled that the commencement of a cancellation proceeding tolls Trademark Act Section 14 for the purpose of adding claims against a challenged registration. Ashland Licensing & Intellectual Property LLC v. Sunpoint International Group USA Corp., 119 USPQ2d 1125 (TTAB 2016) [precedential].


Section 14: Section 14 of the Lanham Act provides that, prior to the fifth anniversary date of a registration, a party may plead any ground for cancellation of a registration. However, a petition to cancel after that date must be restricted to certain grounds enumerated in Section 14 (genericness, fraud, abandonment, functionality, and a few others). Nonuse is not one of the enumerated exceptions.

In The Williamson-Dickie Mfg. Co. v. Mann Overall Co., 359 F.2d 450, 149 USPQ 518 (CCPA 1966), the CCPA ruled that in an opposition filed prior to the fifth anniversary of the opposer’s pleaded registration, Section 14 does not bar a Section 2(d) counterclaim to cancel the pleaded registration even though more than five years had then passed since issuance of the registration.

The Board found that the issue in this case "presents a variation on the same theme," and it held that "so long as the cancellation proceeding commences within five years of the date of registration, the five-year limitation under Trademark Act Section 14 is tolled by the commencement of a cancellation action for the purpose of adding claims against the registration by that petitioner."

The Board observed that its ruling "will aid the Board in its work." If tolling were not allowed, that might discourage settlement discussions between the parties, and it might encourage "foot-dragging" during discovery by a party "who finds the risk of a motion to compel may be less than the potential risk of additional claims."

In sum, the petitioner who learns of further grounds for cancellation, and acts without undue delay, may seek to add those grounds, even if the subject registration has passed its fifth anniversary during the pendency of the cancellation proceeding. With this decision we see no contravention of the legislative purpose of Trademark Act Section 14 in limiting the risk of cancellation of registrations. A petition to cancel has been filed before the five-year anniversary date of the registration, and so the registration already is at risk. To hold that the availability of additional claims will vary with the speed with which petitioner obtains discovery responses jeopardizes the Board’s orderly disposition of its cases.

Timeliness of Motion: The Board next examined whether Petitioner Ashland acted in a timely fashion. Ashland maintained that it learned of the facts supporting the nonuse claim during a June 10, 2014 deposition, and thus the information was not known to Ashland at the time of filing the petition for cancellation. Respondent contended that the proposed amendment was untimely since Ashland did not bring its motion until almost one year later. The Board, however, noted that proceedings "largely were suspended, or there was good cause to believe that proceedings would be suspended, from the time Petitioner learned of the new information." And so the Board ruled that Ashland did not unduly delay in bringing its motion to amend.

Proper Pleading: Finally, the Board pointed out that Ashland had not properly pleaded its nonuse claim. Ashland alleged that the registered marks were not in use at the time of filing of the underlying applications. However, the applications were filed under Section 1(b), based on intent to use, and so no use was required prior to filing.

The Board pointed out that in an inter partes proceeding, the Board will consider evidence of use that occurred after the filing of the statement of use but within the original or extended period for filing the statement of use. Embarcadero Techs., Inc. v. Delphix Corp., 117 USPQ2d 1518, 1523 (TTAB 2016). Therefore a proper allegation of nonuse should state that the marks were not in use as of those later dates. The Board allowed Ashland 15 days to file an amended petition for cancellation.

Read comments and post your comment here.

TTABlog comment: I propose calling a registration that is more than five years old, a "mature" registration (to avoid the misnomer "incontestable" that is often used).

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 6/20/2016   0 comments

Friday, June 17, 2016

Fourth Circuit Affirms Issue Preclusion Ruling Based On TTAB Priority Finding

On June 13, 2016, the U.S. Court of Appeals for the Fourth Circut affirmed the ruling of the U.S. District Court for the District of Maryland [TTABlogged here], which had dismissed Keith A. Ashe's suit for trademark infringement on the ground of issue preclusion based on a prior decision of the TTAB [TTABlogged here] on the issue of priority of use. Ashe v. PNC Financial Services Group, Inc., Appeal No. PWG-15-144 (4th Cir. June 13, 2016).


The district court applied the Supreme Court's holding in B&B Hardware v. Hargis that "a court should give preclusive effect to [Trademark Board] decisions if the ordinary elements of issue preclusion are met." Ashe v. PNC Financial Services Group, Inc., Case No.: PWG-15-144 (D. Md. November 17, 2015).

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

The appellate court, in a four-page per curiam opinion, concluded that the district court did not in dismissing as barred by collateral estoppel.

The district court concluded, and PNC argues on appeal, that the issue of priority in a trademark opposition case before the TTAB is always identical to the issue of priority in a federal trademark infringement case. In contrast, Ashe argues that the Supreme Court in B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 1299 (2015), held that the issue of priority will, at least sometimes, be different.

Even assuming that B & B Hardware stands for the proposition that, when considering the issue of priority, courts must determine whether the actual use of a mark is the same as the use stated in a trademark application, Ashe has alleged no actual use of the mark other than those uses described in his trademark application. Consequently, in this case, the issue of priority decided by the TTAB was identical to the issue of priority presented to the district court.

Therefore, the Fourth Circuit affirmed the district court 's decision.

Read comments and post your comment here.

TTABlog comment: I can't think of a situation where the issue of priority would be different before the Board and the district court. Can you?

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 6/17/2016   1 comments

Thursday, June 16, 2016

TTAB Test: In which of these Three Cases Did the Board Find No Likelihood of Confusion?

Supposedly one can predict the outcome of a Section 2(d) case 95 percent of the time just by looking at the marks and the goods. In one of these three recent decisions - two oppositions and one ex parte appeal - the Board found no likelihood of confusion. Let's see how you do in figuring out which one it was. [Answer will be found in first comment].


In re Liquivita, LLC, Serial No. 86265014 (May 20, 2016) [not precedential]. Section 2(d) refusal of LIQUIVITA LOUNGE & Design (shown below) for various medical services and therapies [LOUNGE disclaimed], in view of the mark LIQUI-VITE for "multivitamin dietary food supplement."


Abercrombie & Fitch Trading Co. v. FUB LLC, Opposition No. 91208221 (May 20, 2016) [not precedential]. Section 2(d) refusal to register F&A for "baseball caps; shorts; t-shirts," in view of various marks comprising or containing the term A&F for clothing items.


Shoichi Matsumoto v. David Beaulieu, Opposition No. 91217806 (May 16, 2016) [not precedential]. Section 2(d) opposition to registration of NO RECIPE REQUIRED in standard character form, for "providing an online website that provides cooking and culinary information," in view of the registered mark NO RECIPES for"on-line journals, namely, blogs featuring recipes, cooking and travel information."


Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 6/16/2016   4 comments

Wednesday, June 15, 2016

Yesterday's TTABlog Webcast Recording on TTAB Developments Now Available

In case you missed yesterday's TTABlogger Webcast on TTAB Developments, here's a link to the presentation. You will have to file out the email form and then click the REGISTER button to get access to the presentation. Thank you for all who tuned in yesterday to the live show.


Read comments and post your comment here.

 TTABlog comment: One correction - on slide 22, the final date for nominations to TPAC should be July 25, 2016, not 2015.

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 6/15/2016   1 comments

TTAB Grants Rule 2.132 Motion to Dismiss IODINE Opposition for Failure to Prosecute

The Board dismissed this opposition to registration of the mark IODINE for various goods and services, granting applicant's Rule 2.132(a) motion for judgment for failure to prosecute because opposer had filed no evidence and taken no testimony. Opposer failed to show "good and sufficient cause" why judgment should not be entered against it. Iodine Software, LLC v. Iodine, Inc., Opposition No. 91217516 (June 13, 2016) [not precedential].


After opposer's testimony period closed on January 24, 2016, application filed a motion to dismiss  under Rule 2.132(a), which provides that "If the time for taking testimony by any party in the position of plaintiff has expired and that party has not taken testimony or offered any other evidence, any party in the position of defendant may ... move for dismissal on the ground of the failure of the plaintiff to prosecute. *** In the absence of a showing of good and sufficient cause, judgment may be rendered against the party in the position of plaintiff. "

In its (untimely) response to the motion, opposer stated that it had agreed with applicant's settlement proposal as of February 16, 2016 and applicant's counsel had confirmed that they were awaiting further instructions from applicant. Opposer asked the Board to deny the motion and to allow the parties time to complete the settlement.

The Board then asked for "documentation of the settlement," but opposer supplied only a statement that its attorney had sent the latest settlement proposal to applicant on March 28, 2016, and that the parties were still negotiating.

Applicant responded that the parties had not reached settlement and that the negotiations did not constitute good and sufficient cause to avoid judgment.

The Board observed that the "good and sufficient cause" standard is equivalent to the "excusable neglect" standard under FRCP 6(b)(1)(B) for re-opening of the testimony periods. [A very difficult standard to meet - ed.]. The Board, as usual, turned to the four-factor test in Pioneer Inv. Serv. Co. v. Brunswick Assoc. Ltd., 507 U.S. 380 (1993).

The third Pioneer factor is the most important: the reason for the delay, including whether it was within the reasonable control of the moving party. Here, attempts at settlement did not excuse opposer's failure to act within the prescribed time limit. Opposer should have sought an extension of time or a suspension of its discovery period prior to the close of same. Opposer failed to explain why it allowed its testimony period to lapse. "Opposer brought this case and, in so doing, took responsibility for moving forward on the established schedule." In short, opposer's failure to act was within its reasonable control.

Moreover, under the second Pioneer factor, the delay in proceedings, "has a significant potential impact on this case." The proceeding is over unless the Board reopens the testimony periods, which would delay resolution of the case by several months "and runs counter the Board's interest in an expeditious adjudication of its cases."

There was no evidence of bad faith on opposer's part, nor any specific prejudice to applicant beyond mere delay.

On balance, however, the Board found that opposer had failed to show excusable neglect that would warrant proceeding any further with the case.

And so the Board granted the motion and dismissed the opposition with prejudice.

Read comments and post your comment here.

TTABlog comment: Once the testimony period closes, a party is up the creek without a paddle.

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 6/15/2016   2 comments

Tuesday, June 14, 2016

TTAB Dismisses 2(d) and Dilution Claims in Opposition to "GARO & Design" for Cigars

The Board dismissed this opposition to registration of the mark GARO & Design (shown immediately below) for  "cigars," finding it not likely to cause confusion with Opposer's registered marks that include a fleur de lis design, also for cigars (see the three marks next below). The Board also dismissed Opposer's dilution-by-blurring claim, finding that Opposer's fleur de lis mark had not obtained fame and further that the involved marks are too dissimilar to support the claim. Altadis U.S.A. Inc. v. Garo Bouldoukian, Opposition No. 91218161 (June 9, 2016) [not precedential].



Standing: Opposer is the parent company of a wholly-owned subsidiary who owns the marks, and opposer uses the marks in direct competition with applicant. Opposer's use "inures to the benefit of Opposer," and therefore Opposer has standing. [Quality control? See the recent parent/subsidiary case in which the parent's use of the mark did not inure to the benefit of the owner/subsidiary (here) because of the lack of quality control - ed.].

Goods, Channels of Trade, Classes of Customers: Since the involved goods are identical, the Board must presume that they travel in the same, normal channels of trade to the same classes of consumers.

Fame: Opposer failed to establish fame for any marks other than its MONTECRISTO-formative word marks. It did not establish fame for its fleur de lis design.

Marks: The Board found the dominant portion of applicant's mark to be the word GARO and the silhouette design. The fleur de lis pattern appears as "wallpaper - an incidental design, which, if it is discerned at all, is nothing more than background to the more source-identifying dominant components of Applicant's mark." The marks are "very dissimilar" in appearance, there is "no overall similarity" in sound, and the connotation of the marks is also dissimilar. Moreover, the marks create wholly different commercial impressions.

Oberving that a single du Pont factor may be dispositive, the Board found that opposer had failed to prove a likelihood of confusion, and therefore it dismissed opposer's Section 2(d) claim.

Dilution:  Since opposer could not establish fame for purposes of Secgtion 2(d), it perforce could not meet the higher fame standard applicable to a dilution claim.

Moreover, even assuming arguendo that opposer's fleur de lis mark was famous, the involved marks are "profoundly dissimilar."

And so the Board dismissed the dilution claim.

Read comments and post your comment here.

TTABlog comment: Do you think this was a WYHO?

BTW, the Board, relying on a 2005 decision, said that the marks must be "identical or very substantially similar" for purposes of a dilution-by-blurring claim, but that is not the correct standard. In the COACH case in 2010 (pdf here), the Board ruled that "For purposes of determining the degree of similarity between applicant’s mark and the famous mark in the dilution analysis, we will use the same test as for determining the similarity or dissimilarity of the marks in the likelihood of confusion analysis." That is the test that the TTAB has been applying ever since. It didn't make any difference here, since the marks were not similar enough anyway.

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 6/14/2016   0 comments

Monday, June 13, 2016

TTAB Reverses Geographical Descriptiveness Refusal of "CASS PARK VILLAGE"

The Board reversed a Section 2(e)(2) refusal of the mark CASS PARK VILLAGE, finding the mark not primarily geographically descriptive of real estate, entertainment, and restaurant services. The USPTO failed to show that the primary significance of CASS PARK is the name of a place generally known to the public. In re Olympia Development of Michigan, LLC, Serial No. 86333108 (June 10, 2016) [not precedential].


The first prong of the test under Section 2(e)(2) is "whether the primary significance of the term in the mark sought to be registered is the name of a place generally known to the public."

The Examining Attorney maintained that CASS PARK identifies a federally recognized historic district in Detroit, where applicant intends to build a development. In support, he relied on a Wikipedia entry (here) describing the Cass Park Historic District, and a printout from the Curbed Detroit blog regarding applicant's development plans for the area.

The Board found this evidence insufficient to support the refusal to register.

While both pieces of evidence have some probative value, absent other evidence to support the proposition that consumers have been exposed to the term “Cass Park” and are aware of its geographic significance, we cannot find that it is a generally known geographic location. Newbridge Cutlery, 113 USPQ2d at 1450-51 ("The internet (and websites such as Wikipedia) contains enormous amounts of information: some of it is generally known, and some of it is not. ... [T]he mere entry in a gazetteer or the fact that a location is described on the internet does not necessarily evidence that a place is known generally to the relevant public.")

The Board distinguished a case involving the mark FOUNTAIN HILLS for real estate development services because there, the applicant listed Fountain Hills, Arizona as its address, and other evidence showed that "'Fountain Hills' is 'the name of the place where the services are rendered' rather than 'an indication of the source of applicant’s real estate services.'"

[O]n this record, it is not readily apparent how the term CASS PARK is primarily geographically descriptive of the services identified in the application. This is not to say that we might not reach a different result on a different record, such as one that might be
adduced in an inter partes proceeding or when Applicant files a Statement of Use.

And so the Board reversed the refusal.

Read comments and post your comment here.

TTABlog comment: Applicant's address is 2211 Woodward Avenue, Detroit, Michigan, which is about 0.6 miles from Cass Park. Couldn't the Board take judicial notice of that? How will the real estate services be rendered in interstate commerce?

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 6/13/2016   2 comments

Friday, June 10, 2016

USPTO Seeks Nominations for Patent and Trademark Advisory Committees

"The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) is seeking nominations to fill upcoming vacancies for the Patent Public Advisory Committee (PPAC) and the Trademark Public Advisory Committee (TPAC). Nominations must be postmarked or electronically transmitted on or before July 25, 2015. Submission details can be found in the Federal Register Notice (here)."


"The Public Advisory Committees for the USPTO were created through the Patent and Trademark Office Efficiency Act statute in the American Inventors Protection Act of 1999 to advise the Secretary of Commerce and the Under Secretary of Commerce for Intellectual Property and Director of the USPTO on the management of patent and trademark operations. The Public Advisory Committees review the policies, goals, performance, budget, and user fees of the patent and trademark operations, respectively, and advise the director on these matters. Each committee has nine voting members who are appointed by, and serve at the pleasure of, the Secretary of Commerce. Each member serves a three-year term."

posted by John L. Welch @ 6/10/2016   0 comments

TTAB Affirms 2(a) Deceptiveness Refusal of WONDER DOWN for Down Alternative Bedding

The Board affirmed a Section 2(a) deceptiveness refusal of WONDER DOWN & Design for "down alternative bed pillows; down alternative mattress toppers" and "down alternative mattress pads." Applicant argued that its mark as a whole was not misdescriptive of the goods, but the Board pointed out that the mark may be refused registration if the word "DOWN" alone is deceptive. In re Perry Textiles Inc., Serial No. 86119296 (June 8, 2016) [not precedential].


The CAFC has established a three-part test for deceptiveness under Section 2(a):

1. Is the term misdescriptive of the character, quality, function, composition or use of the goods?
2. If so, are prospective purchasers likely to believe that the misdescription actually describes the goods?
3. If so, is the misdescription likely to affect the decision to purchase? In re Budge Mfg. Co., Inc., 857 F.2d 773, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988).

Misdescription: There was no dispute that applicant's goods are not filled with feathers (i.e., down). Applicant pointed to A.F. Gallun & Sons Corp. v. Aristocrat Leather Prods., Inc., 135 USPQ 459, 460 (TTAB 1962), in which the Board found the mark COPY CALF not deceptive for wallets and billfolds not made of leather. COPY CALF, however, was a play on the words "copy cat," and the word "copy" immediately suggested to purchasers that the goods were imitations or copies of wallets and billfolds made of calf skin. In short, "CALF" no longer carried its ordinary meaning.

Here, in contrast, "DOWN" has no relationship to "WONDER" such that it changes or lessens the misdescriptive import of "DOWN," but simply implies that the down has special properties. Applicant did not explain how the word "DOWN" has some other non-misdescriptive meaning in the subject mark.

Consumer Belief: Examining Attorney Gretta Yao submitted evidence demonstrating that goods such as applicant's can and do frequently include down, and are advertised as such. Consequently, consumers will readily believe that applicant's goods include down, when in fact they do not. Applicant did not dispute this point.

Materiality: The evidence established that many consumers prefer down for their bedding and seek it out for its desirable qualities: it is warm, lightweight, and packable, and retains its loft longer than synthetics. Moreover, down-filled bedding commands a higher price, and that price disparity confirms the materiality of the misdescription.

All three prongs of the Budge test having been met, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Do you think this was a WYHA?

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 6/10/2016   4 comments

Thursday, June 09, 2016

Last Call - Free Webinar: The TTABlogger on TTAB Developments, June 14th, 12-1 PM EST

Yours truly, The TTABlogger, will present a webinar on TTAB developments on June 14th from 12 to 1 PM EST, sponsored by Wolf, Greenfield & Sacks, P.C. "Admission" is free. Register here. The formal title of the presentation is "TTAB Update: A Year of Critical Developments."


The webcast will emanate from the Federal Reserve Building in beautiful downtown Boston. Among the topics to be covered are the following:

  • Newly-proposed changes to the TTAB rules of practice and fee schedule.
  • Pending challenges to the constitutionality of Section 2(a)’s bar to registration of disparaging and scandalous marks.
  • Court rulings on issue preclusion after the Supreme Court’s B&B Hardware decision.
  • The 4th Circuit's FLANAX ruling on territoriality
  • The probative value of evidence of third-party use and registration.
  • The CAFC’s clarification of the test for genericness.
  • TTAB rulings on parent/subsidiary licensing, acceptability of concurrent use agreements, the Morehouse prior registration defense, and more.

If you have questions, send them to me at jwelch @ wolfgreenfield dot com.
.

posted by John L. Welch @ 6/09/2016   0 comments

TTAB Affirms Refusal of Nondistinctive Shed Design for Recycling Services

The Board affirmed a refusal to register the trade dress shown below, for "recycling collection center services for collecting clothing and textile goods for redistribution to further users," finding that the proposed mark comprised a nondistinctive design lacking in acquired distinctiveness. Applicant's reliance on Section 2(f) was a concession that the trade dress is not inherently distinctive. In re St. Pauly Textile, Inc., Serial No. 85769111 (June 7, 2016) [not precedential].


The mark, according to applicant, consists of a three-dimensional depiction of a drop off station in the form of a "decorative residential garden shed." The shape of the deposit opening (shown in dashed line) does not form part of the mark.

Applicant relied its use of the purported mark for 18 years, an increase in its shed locations to 753 throughout New York and the Northeast, collection of several million pounds of clothing over the past five years, and certain media coverage. Applicant's website included instructions to visitors to "Look for the St. Pauly Shed!"

Examining Attorney Tracy C. Fletcher submitted examples of third-party clothing drop-off stations that are similar to applicant's trade dress, including this one:


Applicant argued that the evidence was sufficient to establish a prima facie case of acquired distinctiveness, contending that applicant "appears to be the sole user of a residential garden shed for recycling collection center services." Accordingly, applicant asserted, a lower amount of evidence should be needed to establish acquired distinctiveness here.

The Board observed that the record included numerous examples of garden shed-like buildings used for clothing donation drop off receptacles, as well as examples of doors with diagonal braces and of gabled roofs.. Thus its is not "unique" or "unusual" to see a garden shed-type building used as a clothing drop-off receptacle. Applicant's door design "is nothing more than a variation on common diagonal designs."

Given the nature of applicant's proposed mark, the Board found that a higher level of evidence is needed to establish a prima facie case of acquired distinctiveness. Applicant's eighteen years of use was insufficient, in itself, to meet the requirement.

The evidence regarding expansion of use of applicant's drop box may show only that its services are becoming increasingly popular, not that consumers perceive the shed design as a source indicator. Applicant's supposed "look for" advertising simply says to look for its shed, but does not reference the design at issue. Thus customers could perceive this statement as saying "look for our donation drop off." Similarly, the media refers to the drop off as a shed, with no mention of the applied-for design as identifying source.

Accordingly, based on all the evidence, the Board found that applicant had failed to establish that its applied-for design has acquired secondary meaning.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: This shed looks pretty unique to me for a clothing drop off box. All I see around Boston are things that look like dumpsters.

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 6/09/2016   1 comments

Wednesday, June 08, 2016

TTAB Grants Cancellation Petition As a Sanction For Failure to Participate in Discovery Conference

The Board granted a petition for cancellation of a registration for the mark JINHAO for ball-point pens and related products, because respondent failed to participate in the required Rule 2.120 conference. Shanghai QianGu Stationery Co. Ltd. v. EachBit Trade LLC, Cancellation No. 92062453 (June 6, 2016) [not precedential].

On May 5, 2015, the Board issued an Order granting Petitioner's motion to compel Respondent to participate in the discovery conference required by Rule 2.120(a)(2). The Board warned Respondent that it might be subject to sanctions if it failed to comply. See Rule 2.120(g)(1) and FRCP 37(b)(2)

On May 24, the interlocutory attorney emailed the parties, inquiring as to their availability for the discovery conference. Petitioner's counsel promptly responded, but Respondent did not. The interloc then sent an email to the parties setting the conference for May 31st at 1pm.

Petitioner's counsel called into the conference, but Respondent did not. The interloc then called Respondent, using the telephone number of record. Respondent did not answer; the call was directed to a voice mail system. The interloc left Respondent a voice mail message indicating that the Board was attempting to reach Respondent in order to hold the discovery conference, and requesting that Respondent contact the interloc as soon as the message was received.

The interloc waited twelve (12) minutes for Respondent to join the telephone conference, but Respondent "did not call in or otherwise attempt to contact the assigned Interlocutory Attorney. Accordingly, the assigned Interlocutory Attorney terminated the teleconference."

The Board therefore entered judgment as a sanction for failing to participate in the discovery conference. It granted the petition for cancellation and order the registration to be cancelled.

Read comments and post your comment here.

TTABlog comment: Reminiscent of the Patagonia v. Azzolini case, TTABlogged here.  

TTABlog Tip: when dealing with Interlocutory Attorneys, don't be an Azzolini.

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 6/08/2016   0 comments

Tuesday, June 07, 2016

Ted Davis: Annual Review of U.S. Federal and State Case Law

Here is a link to Ted Davis's article for the 2016 INTA Annual Meeting, entitled "Federal and State Court Review." Thank you, Ted, for permitting me to post this link.


Ted Davis

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 6/07/2016   3 comments

Monday, June 06, 2016

Precedential No. 15: TTAB Rejects Specimens of Use for Radio Broadcast Services

The Board affirmed a refusal to register the mark WORLD’S BIGGEST SMALL GROUP for radio broadcasting services (in International Class 38}, finding that applicant's specimens of use failed to show that the phrase served as a source indicator for radio broadcasting services, as opposed to applicant's own radio program. In re WAY Media, Inc., 118 USPQ2d 1697 (TTAB 2016) [precedential].


A service mark specimen of use is acceptable if it either (1) shows the mark used or displayed as a service mark in the sale of the services, which includes use in the course of rendering or performing the services, or (2) shows the mark used or displayed as a service mark in advertising the services, which encompasses marketing and promotional materials. Here, applicant contended that its specimens of use satisfied both tests.

Applicant focused on four pages of material, including several Internet website pages referring to a radio program and YouTube screenshots that purportedly depicted the mark in a "radio broadcast booth environment." [See picture above]. The Board noted that the TMEP provides guidance as to the meaning of "radio broadcasting services:"

“Radio broadcasting services” (Class 38) would be an appropriate identification when a radio station uses a mark, such as call letters, to indicate the source of its broadcasting services generally. On the other hand, if an applicant is using the name of a weekly comedy television show as a mark, “television broadcasting services” would not be appropriate because the mark does not serve to identify and distinguish the electrical transmission of the program. Instead, the applicant should identify the services as “television entertainment services in the nature of an ongoing series of comedy programs” (Class 41).

Here, the Board found that the phrase WORLD’S BIGGEST SMALL GROUP, as it appears on the specimens, refers to applicant’s Bible-reading and devotion program. There was no direct association in the specimens between WORLD’S BIGGEST SMALL GROUP and radio broadcasting services. In short, "[n]othing on these pages demonstrates that consumers would perceive the phrase WORLD’S BIGGEST SMALL GROUP as a source indicator for radio broadcasting services."

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: The original application also included entertainment, e-mail newsletter services, and website-related services in International Class 41 and charitable outreach services in International Class 45. Those services were divided out and the divided application proceeded to registration, based upon the same specimens of use as in this case.

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 6/06/2016   6 comments

Thursday, June 02, 2016

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

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



In re 10 Barrel Brewing LLC, Serial No. 86190248 (May 31, 2016) [not precedential]. [Refusal to register SWILL for beer in view of the registered mark SWELL SWILL for wines].


In re FreeStyle Fitness Academy, LLC, Serial No. 86490859 (May 31, 2016) [not precedential]. [Refusal to register FreeStyle Fitness Academy, in standard character form, for the service of training fitness instructors, in view of the registered mark shown below for conducting fitness training and training dance instructors].


In re Mudskipper Media LLC, Serial No. 86570258 (February 9, 2016) [not precedential]. [Refusal to register the mark shown below left, for "café services; catering services; restaurant services; restaurants" [AMERICAN CAFE disclaimed], in view of the registered mark shown below right, for "restaurant services" [HEROES, PIZZA, and SUBS disclaimed], and the registered mark HEROES PUB for "restaurant and bar services" [PUB DISCLAIMED].



Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 6/02/2016   5 comments