TTAB Posts August 2016 Hearing Schedule

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



August 16, 2016 - 2 PM: Theatrical Stage Employees Union Local No. 2 of the International Alliance of Theatrical Stage Employees and Moving Picture Technicians, Artists and Allied Crafts of the United States and Canada v. David B. Eaves, Cancellation No. 92055242 [Petition to cancel a registration for the mark CHICAGO STAGEHAND, in standard character form, for "employment Staffing in the field of labor and technical support in live corporate, concert and special events," on the ground of likelihood of confusion with the prior-used mark CHICAGO STAGEHANDS for union and staffing services in the live-event and production industry services in the live-event and production industry].

August 24, 2016 - 10 AM: In re Lions Gate Entertainment, Inc , Serial No. 85535372 [Refusal to register the design mark shown below for "licensing of merchandise and intellectual property associated with motion pictures; providing online information on the licensing of merchandise associated with motion pictures," on the ground that the specimens of use do not show the applied-for mark in use in commerce in connection with the services identified].

August 24, 2016 - 11 AM: In re Summit Entertainment, LLC, Serial Nos. 85813593 and 85813596 [Section 2(d) refusals to register the mark INSURGENT for various goods including computer games, downloadable electronic games, and video games, and for various services including "providing online computer games," in view of the registered mark INSURGENCY for "Computer game software for personal computers and home video game consoles"].

Read comments and post your comment here.

TTABlog note: Any predictions?

Text Copyright John L. Welch 2016.

TTAB Test: Is SKINNIBELT Generic for Belts?

The USPTO refused to register the term SKINNIBELT for "belts," deeming it generic for the goods. The Examining Attorney maintained that "skinny belt" is the generic name of a category of belts. Applicant appealed. How do you think this came out? In re Jasco Solutions L.L.C., Serial No. 86308947 (July 25, 2016) [not precedential].

The Board noted that if "skinny belt" is generic, so is "skinnibelt," since the phonetic equivalent of a generic term is itself generic.

The Examining Attorney made of record retail website evidence offering women's apparel, and including many references to "skinny belts," but in many cases the context did not allow the Board to distinguish between descriptive and generic use.

Often, the context suggested that the term is not generic: for example, the following list "Accessories/belts/ skinny, medium, wide." One would not expect "medium belts," or "wide belts" to be generic, but rather merely descriptive of width.

Other websites display "skinny belt" alongside items described by variations of this wording: e.g., "Skinny Leather Belt, Skinny Faux Leather Belt, skinny thin Patent Leather Belt, ...." The interposition of other descriptive words between "skinny" and "belt" suggest that "skinny" is merely an adjective.

The Examining Attorney submitted several examples that appeared to use "skinny belt"  in a generic sens: e.g., "The red skinny belt by far stands out as the most popular colorful belt ...." However, these same sources also suggest that "skinny" might be just an adjective: e.g., "skinny rectangular belts."

Finally, the Board noted that nearly all of the products referred to in the USPTO's evidence as "skinny belts" were narrow in width. Applicant's belts (see above) are relatively wide but very thin in terms of the fabric from which they are made. Thu,s this suggest a disagreement as to what a "skinny" belt actually is.

The Board found the USPTO's evidence to be equivocal, and it does not clearly show that the relevant public understands the term "skinny belt" as a reference to a genus of belts, rather than merely a combination of the generic word "belt" to which the descriptor "skinny" has been applied.

Since the USPTO failed to provide the required clear evidence of genericness,the Board reversed the refusal.

Read comments and post your comment here.

TTABlog comment: How did you do? In my experience, belts are displayed by length, not width. So all the "36"s will be hung on one peg, etc. The widths of the belts on the peg may vary. But there is no little sign saying "skinny belts." If there were, that's where I'd go.

Text Copyright John L. Welch 2016.

TTAB Test: Should the Stylization of This Descriptive Term Support a Principal Registration?

The USPTO refused to register the mark JIUJITEIRO in the stylized form show immediately below, for various items of athletic apparel, including martial arts uniforms. Applicant One Nation conceded that the term (which means "a pracitioner of Brazilian jiu-jitsu") is merely descriptive of the goods by offering to disclaim the word "JIUJITEIRO," but the Examining Attorney refused to enter the disclaimer, maintaining that a mark may not be disclaimed in its entirety. Applicant appealed. How do you think this came out? In re One Nation Enterprises, Serial No. 86260948 (July 25, 2016) [not precedential].

The Board pointed out that the Examining Attorney was correct in asserting that a mark may not be disclaimed in its entirety. However, if the mark is in a stylized form that is distinctive, the mark may be registered on the Principal Register with a disclaimer of its literal element. The issue is whether the stylization creates an inherently distinctive commercial impression apart from the word itself.

The determination of whether a particular stylization is inherently distinctive is "necessarily somewhat subjective, and depends on the particular nature of the mark at issue." Applicant cited the JACKSON HOLE and CONSTRUCT-A-CLOSET cases as examples of marks found registrable on the Principal Register with disclaimer of the literal portion, but the Board found that those two cases did not strongly support applicant's position: in JACKSON HOLE the particular arrangement of the words was important, and in CONSTRUCT-A-CLOSET, letters were used as design elements.




The Examining Attorney pointed to the FRUTTA FRESCA and LA LINGERIE cases as examples of marks whose stylization was not sufficiently distinctive, but the Board noted that those cases provided only weak support for the USPTO's position because the marks were in ordinary, readable typefaces, and so the consumer would see little or nothing more than the generic words themselves.

Applicant's mark, in contrast, is not displayed in a font. Instead, it bears the appearance of an idiosyncratic hand-written cursive script. The literal element is not ready discernable on first impression.

While marks in many cursive scripts would surely fall closer to the [FRUTTA FRESCA and LA LINGERIE] marks ... in distinctiveness (or the lack of it), the fact that many cursive scripts are easily readable and indistinctive does not mean that all must be so. We think that in this case the stylization of Applicant’s mark is sufficient to create a distinctive commercial impression apart from the literal element of the mark, and sufficient to justify registration notwithstanding the descriptiveness of the disclaimed term. The stylization of Applicant’s mark is in essence a recognizable and distinctive design in its own right, regardless of the literal meaning conveyed by the word so displayed.

The Board concluded that applicant's mark is registrable on the Principal Register with a disclaimer of the word JIUJITEIRO.

Read comments and post your comment here.

TTABlog comment: How did you do? The mark looks like TINY I. FEIRO to me. I guess the lesson is the less legible the cursive script, the more likely it is inherently distinctive. Why would anyone want to use an illegible script mark?

Text Copyright John L. Welch 2016.

TTAB Reverses 2(d) Refusal of Salvation Army Mark, Finding Unity of Control

The Board reversed a Section 2(d) refusal to register the mark shown below, for charitable fundraising services, on the ground that the applicant and the owners of the registrations cited by the Examining Attorney "are governed by a central authority, which exercises unity of control over the entities' trademarks." As a result, the Board concluded, there will be no likelihood of confusion as to the source of the entities' services. In re The Salvation Army, Serial No. 86150336 (July 8, 2016) [not precedential].

The Examining Attorney based his refusal to register on thirteen existing registrations owned by three different entities incorporated in different states. Each of the registrations, for various charitable services, includes the words THE SALVATION ARMY. The Examining Attorney withdrew two additional citations because applicant, it turned out, is the owner thereof.

The Board observed that because the issue here is likelihood of confusion as to source, it would consider whether there exists "such unity of control over the marks ... that the public will view the identified services as emanating from a single source."

Applicant explained that it is one of The Salvation Army regional offices (in Illinois). The Salvation Army, "while decentralized into separate regional organizations, ... is under the unitary control of the Salvation Army USA through the National Commander USA and the Commissioners Conference USA." Relying on In re Wella A.G., 5 USPQ2d 1349 (TTAB 1987), applicant maintained that the regional entities follow directives from a single source. And it pointed out that the USPTO, has already allowed the aforementioned 13 registrations to co-exist.

The Examining Attorney contended that this arrangement fails to satisfy the requirements of Wella because the entities here are "sister entities" that are "not even owned by a single parent." Moreover, there is no evidence regarding how one entity controls the activities of another. And there is no consent agreement as found in the file history of the two withdrawn registrations.

In Wella, parent company Wella A.G. was refused registration of a particular mark in view of several registrations owned by its U.S. subsidiary. The CAFC vacated the TTAB's decision and remanded the case to the Board to consider whether the public would likely believe that the source of the Wella A.G. product is the U.S. subsidiary, or whether consumers perceive only a single source for all the Wella products, namely, Wella A.G.

The Board then reversed the refusal, observing that the CAFC views the concept of "source" as encompassing more than "legal entity." A declaration from a Wella U.S. executive stated that Well A.G. owned substantially all the stock of Wella U.S. and "thus controls that activities and operations of Wella U.S., including the selection, adoption and use of the trademarks." Although no details were given regarding this control, the Board found the declaration sufficient to establish that "control over the use of all the 'WELLA' trademarks in the United States resides in a single source."

The Board observed that the issue of "unity of control" must be considered on the facts of each case, and does not hinge on any particular organizational structure. "[M]erely because an arrangement does not fall within a set type of organization does not preclude a finding that there is unity of control."

Here the evidence showed that The Salvation Army is a worldwide organization headquartered in London; the United States affiliate is divided into four regions under the control of the National Command in a quasi-military structure. Moreover, applicant already owns three registrations for marks with the wording "The Salvation Army," which registrations have coexisted with the other registrations.

Under the unique facts of this case, the Board found that there would not be a likelihood of confusion as to source.

As the Federal Circuit stated, the question is "whether under the circumstances there was in fact any likelihood of confusion" and “to explain what that confusion would be.” In re Wella, 229 USPQ at 277. Based on this record and the unique organizational structure of the Salvation Army, it is not possible to explain what that confusion would be.

Read comments and post your comment here.

TTABlog comment: Seems a bit "loosey-goosey" to me. Oh, Wella!

Text Copyright John L. Welch 2016.

TTABlog Note: Converting an Opposition to a Concurrent Use Proceeding

Two recent decisions illustrate when an applicant may, and when it may not, successfully move to amend its opposed, geographically unrestricted application to one for concurrent use registration. In the first, the Board granted the motion and instituted a concurrent use proceeding. In the second the Director of the USPTO upheld the Board's denial of the motion to amend.

Renata Foucré, Erin Hartman and Heather Marlow v. Early Recognition Is Critical, Inc., Opposition No. 91225035 (July 22, 2015) [not presidential]. In this Section 2(d) opposition to registration of the mark HUCK CANCER for "organizing and conducting flying disc tournaments to raise awareness for cancer," Applicant Early Recognition moved to amend the opposed application to one seeking concurrent use registration. The Board observed that:

An applicant whose geographically unrestricted use-based application is the subject of an opposition proceeding may file a motion to amend its application to one for a concurrent use registration, reciting oppose(s) as exception(s) to the applicant’s claim of exclusive use, together with a motion to terminate the opposition in favor of a concurrent use proceeding. If the opposer does not consent to the amendment, the amendment may be approved and entered, and a concurrent use proceeding instituted, provided that applicant consents to entry of judgment against itself in the opposition with respect to its right to a geographically unrestricted registration. TBMP §§ 514.03 and 1113. In such cases, judgment will be entered against the applicant in the opposition, with respect to applicant’s right to an unrestricted registration, the amendment will be approved, and a concurrent use proceeding involving the amended application will be instituted in one Board action. TBMP § 1113.01.

Early Recognition claimed the right to exclusive use of the subject mark for the entire United States, except for the County of San Francisco within the state of California. It consented to entry of judgment against itself as to an unrestricted registration, and moved to terminate the opposition in favor of a concurrent use proceeding.

Concluding that Early Recognition met the jurisdictional and procedural requirements for a concurrent use proceeding, the Board granted the motion, entered judgment against it in the opposition, dismissed the opposition with prejudice, and instituted a concurrent use proceeding.

Hanscomb Limited v. Hanscomb Consulting, Inc., Opposition No. 91216132 (Director of USPTO, June 29, 2016). On the eve of the testimony period, Applicant Hanscomb Consulting's moved to amend its application to register the mark HANSCOMB CONSULTING for certain business consultation services, in order to seek a concurrent use registration. The Board denied the motion because the opposed application was based on intent-to-use, not actual use. Said the Board (here):

[I]ntent-to-use applications, are subject to concurrent use proceedings only after an acceptable allegation of use under Trademark Rules 2.76 or 2.88 has been filed. See Trademark Rule 2.99(g); see also TBMP §1103.01(a) (2015) (emphasis added). Further, applicants may not file an amendment to allege use in an application under Trademark Act § 1(b) that is the subject of an opposition in an effort to qualify for concurrent use registration. TBMP § 1105.

Hanscomb Consulting then filed a petition to the Director, seeking waiver of Rule 2.76(a)(1), so that it could file its amendment to allege use. The Director observed that a provision of the Rules may be waived when (1) an extraordinary situation exists, (2) justice requires, and (3) no other party is injured. The Director concluded that none of the conditions was met here.

This was not an extraordinary situation because established procedures govern the conversion of an opposition to a concurrent use proceeding. Those procedures do not apply here. The appropriate course is for the applicant to abandon the application and file a new application seeking concurrent use registration. Judgment will be entered against applicant in the opposition, but would not preclude such a restricted new filing,

The Director rejected applicant's claim that it would be severely prejudiced by the Board's ruling, pointing out that the loss of applicant's "priority date" based on its filing is irrelevant, since applicant admitted that it was not entitled to nationwide rights and since applicant's constructive use date "has little (if any) significance in a concurrent use proceeding," where applicant must demonstrate actual use of its mark.

Finally, the Director determined that opposer would be prejudiced should the petition be granted: "the delay required by examination of the AAU, and resolution of any use-based refusals or requirements, would affect opposer as well as petitioner."

And so the petition was denied.

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

TTAB Enters Judgment as Sanction For Non-Compliance With Its Orders

The Board had it up to here with Plaintiff Gary W. Stuckle's lack of cooperation in this opposition proceeding. His transgressions included failing to adhere to the Board's scheduling orders, repeatedly interposing groundless objections to Defendant Gregory Merkel's discovery requests, and ignoring two Board orders requiring verified interrogatory answers and proper responses to document requests. The Board entered judgment against Stuckle as a sanction, under Trademark Rule 2.120(g)(1) and Fed. R. Civ. P. 37(b)(2)(A)(vi). Gary W. Stuckle v. Gregory Merkel, Opposition No. 91203258 (July 20, 2016) [not precedential].

Plaintiff Stuckle asserted two registrations, one for FLYING MERKEL and the other the design+word mark shown above. Merkel counterclaimed to cancel the registrations on several grounds. Stuckle withdrew his notice of opposition but Merkel opted to purse his counterclaims.

The Board has patiently informed Stuckle of his obligations many times, even going so far as to direct Stuckle to Board resources, and to provide detailed guidelines for proper discovery responses, certificates of service, and verification of answers to interrogatories. Moreover, the Board previously warned Stuckle twice – in the November 25, 2015, order granting Merkel’s motion to compel and in the February 10, 2016, order following the conference preceding Merkel’s motion for sanctions – that if he failed to comply with the Board’s orders then Merkel’s remedy would lie in a motion for sanctions under Trademark Rule 2.120(g)(1).

Despite the Board's warning, Stuckle still failed to provide proper discovery responses and continued to ignore Board deadlines.

After careful consideration of Stuckle’s arguments and explanations, and given the continuing nature of Stuckle’s violations despite multiple prior admonitions from the Board, we conclude that any sanction short of judgment would be futile and unfair to Merkel,who, despite diligent efforts, has been unable to move the case forward due to Stuckle’s intransigence.

And so the Board granted the counterclaim for cancellation of Stuckle's regsitrations.

Read comments and post your comment here.

TTABlog quiz: Who was Fred "Bonehead" Merkle?

Text Copyright John L. Welch 2016.

TTAB Test: Is "HOME BREWING CO." Merely Descriptive of Beer?

It's not easy to pick a viable trademark for beer, as the Wall Street Journal noted in a recent article, "Hopportunity Cost: Craft Brewers Brawl Over Catchy Names as Puns Run Dry." This applicant sought to register the mark HOME BREWING CO. for beer [BREWING CO. disclaimed], but the Board found the mark to be merely descriptive under Section 2(e)(1). Applicant appealed, arguing that the word home is not descriptive but merely suggests "the sense of community and familiarity, as well as the notions of homeliness and comfort that one associates with their home." How do you think this came out. In re The Homebrewer, LLC, Serial No. 86273728 (July 19, 2016) [not precedential].

Applicant argued that the word "home" means a place of residence, whereas the goods listed  in the application will be produced and sold from a business location, not a residential unit, and by a business, not a family. Therefore the word "home" is not descriptive, but merely suggestive of "the sense of community and familiarity, as well as the notions of homeliness and comfort that one associates with their home." Moreover, "homebrew" and "homebrewing" are popular terms of art in the craft beer industry, and consumers will know that applicant's products are not homebrewed because it is illegal to sell beer produced from one's home

Examining Attorney Jeffrey S. DeFord relied on a Wikipedia entry for "Homebrewing" as the brewing of beer and other beverages in small quantities "as a hobby for personal consumption, free distribution at social gatherings, amateur brewing competitions or other non-commercial reasons."

The Board concluded that the Wikipedia evidence alone established that the applied-for mark "immediately informs prospective  purchasers as to a quality, feature, or characteristic of the identified goods, namely that the target market for Applicant's goods are 'home brewing' enthusiasts seeking to replicate at home the various ... types of beer offer by Applicant, who are seeking a specific taste for their beer." Citing several prior decisions (GASBUYER, SYSTEMS USER, MOUNTAIN CAMPER), the Board observed that "[a] term that alludes to the group to whom an applicant directs its goods or services is merely descriptive."

The inclusion of the non-source indicator "Co." does not "mitigate" the Board's finding of mere descriptiveness.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: How did you do? BTW, the attorney for applicant is Candace L. Moon of San Diego. She has applied to register the mark CRAFT BREW ATTORNEY for legal services (Serial No. 86504533), relying on Section 2(f). The application has been opposed by 11 law firms or attorneys. Ms. Moon's plight is mentioned at the end of the Wall Street Journal article.

Text Copyright John L. Welch 2016.

TTAB Test: Is FIRST TUESDAY Merely Descriptive of Lottery Services?

The USPTO refused to register the mark FIRST TUESDAY under Section 2(e)(1) of the Trademark Act, deeming the mark merely descriptive of "lottery cards; scratch cars for playing lottery games" and of "lottery services." Applicant North Carolina Lottery appealed, arguing that, based solely on the mark itself, the phrase merely suggests a particular day, but "leaves it to the consumer's imagination what happens on that particular day." How do you think this came out? In re North Carolina Lottery, Serial No. 86411401 (July 12, 2016) [not precedential].

Examining Attorney Lindsey Ben maintained that the proposed mark is merely descriptive of a feature of the goods and services, namely, new scratch-off lottery games that begin on the first Tuesday of every month. Applicant argued that "mental thought and multi-step reasoning" was required to glean the meaning of the mark.

[t]o connect the mark FIRST TUESDAY to Applicant’s lottery services and lottery cards, a consumer must be told that Applicant issues new instant scratch-off games on the first Tuesday of every month. Absent this knowledge, an ordinary consumer would not be able to discern the meaning of the phrase "first Tuesday."

The Board observed that when considering the context in which a mark is being used, it may look at labels, packaging, advertising, and the like to determine how the purchaser encounters the mark in the marketplace. Applicant's specimens of use [see example above] and its website indicate that new scratch tickets are available on the first Tuesday of each month. The Board therefore found that FIRST TUESDAY merely describes a feature or characteristic of lottery cards and lottery services. No mental thought or multi-step reasoning is required to reach a conclusion about these goods and services.

The lack of use of the phrase by competitors is irrelevant to the issue of mere descriptiveness. Nor does the fact that applicant may be the first or only user of a descriptive designation justify registration.

Finally, the Board noted once again that a mark must be considered not in a vacuum, but in the context of the goods or services with which it is used. Consumers encountering FIRST TUESDAY for lottery cards and lottery services will understand that it describes "an important feature" of applicant's goods and services: i.e., that new scratch tickets are offered on the first Tuesday of the month.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: How did you do? Is this a WYHA?

Text Copyright John L. Welch 2016.

"BJNI" Not Geographically Descriptive of Mineral Waters, Says TTAB

Have you ever heard of Bjni? Me neither. The Board reversed a Section 2(e)(2) refusal to register BJNI, in the stylized form shown below, finding the mark not primarily geographically descriptive of "mineral and carbonated waters." In re Vili Group Inc., Serial No. 86285733 (July 14, 2016) [not precedential].

The first prong of the standard test under Section 2(e)(2) requires that the primary significance of the mark be the name of a place generally known to the public. The Examining Attorney maintained that Bjni is a generally known geographic place, namely, Bjni, Armenia. Applicant did not dispute that Bjni is a geographic location, or that its goods originate in Bjni, but it contended that Bjni is not generally known and that Bjni is a village so small that consumers in this country "would not recognize it as indicating the geographical source of the actual water products to be sold under the BJNI name."

The Examining Attorney relied on a Wikipedia entry (here) describing Bjni as a village in Armenia with a population of just over 3000 people. The entry discusses Bjni's history and a medieval fortress and church, but makes no mention of mineral water. Travel websites mention the fortress and the church. Several mention mineral springs in Bjni, but only applicant's website (here) focuses on Bjni as a village known for its mineral spring water.

The Board found that the record evidence failed to support the refusal because it did not establish that Bjni is a generally known geographic location. Nearly all the evidence came from obscure foreign sources and was not probative of consumer perceptions in this country.

The brief Wikipedia entry has some probative value, but without additional evidence the Board could not find that Bjni is a generally known location. See In re Newbridge Cutlery, 113 USPQ2d 1445, 1450 (Fed. Cir. 2015) (the record must include substantial evidence to support a conclusion that the mark identifies a place "known generally to the relevant American public.").

And so the Board reversed the refusal.

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.

Precedential No. 21: Marijuana Sale Illegal, TTAB Affirms HERBAL ACCESS Refusal for Retail Services

The Board affirmed a refusal to register the mark HERBAL ACCESS for "retail store services featuring herbs," on the ground that the mark is being used in connection with the sale of a substance (marijuana) that is illegal under federal law. The fact that the provision of a product within a given state may be lawful is irrelevant in connection with federal registration of a trademark or service mark. In re Morgan Brown, 119 USPQ2d 1350 (TTAB 2016) [precedential].

To qualify for federal registration, a mark must be in "lawful" use, and so any goods or services for which the mark is used must not be illegal under federal law. If provision of the product or service is unlawful under federal law, it is irrelevant that use under state law may be lawful.

The USPTO generally presumes that use of an applicant's mark is lawful under federal law. Registration will not be refused unless either:

(1) a violation of federal law is indicated by the application record or other evidence, such as when a court or a federal agency responsible for overseeing activity in which the applicant is involved, and which activity is relevant to its application, has issued a finding of noncompliance under the relevant statute or regulation; or

(2) when the applicant’s application-relevant activities involve a per se violation of a federal law.

Examining Attorney Jeffrey J. Look relied on an asserted per se violation of federal law, namely, the provision of marijuana.

Applicant's specimen of use featured two photographs of his retail store, depicting a green cross [a symbol of the organized medical marijuana industry] on the door and on the window. His website displayed a map with the wording "Marijuana for the Masses," and depicted a marijuana plant with the text: "Call or stop by today and find out why people consider our marijuana to be the best of the best!" This evidence supported the conclusion that applicant "is engaged in the provision of marijuana via the retail services provided at the facility shown in the specimen and advertised on the website." [Doh! - ed.].

Thus applicant's services include the provision of an illegal substance in violation of the federal Controlled Substances Act (CSA), 21 USC Sections 812, 841(a)(1), and 844(a), and constitute a per se violation of federal law. Use of applicant's mark therefore includes unlawful activity under the CSA.

Applicant Brown argued that he is seeking to register his mark for the sale of herbs, not for marijuana, and that the sale of herbs is not illegal. The Board, however, observed that "[t]he mere fact that lawful use is also contemplated by the identification does not aid Applicant's cause." According to the Board, "it was entirely proper for the Trademark Examining Attorney to look to evidence such as the Applicant's specimen of use and website to ascertain that the word 'herbs' in the description of services encompasses marijuana."

Applicant Brown did not address or directly rebut the evidence that marijuana is an herb or that he sells marijuana, but he instead feebly argued that the evidence did not show the use of the mark specifically in connection with one particular herb: marijuana. However, the CAFC has rejected attempts to avoid a refusal "where a particular good or service falls within the generalized identification and the evidence shows that applicant's actual usage involves the specific good or service that is the subject of the refusal."

The Board concluded that, because the subject mark is being used in connection with the sale of a specific substance that falls within both the recitation of services and the prohibitions of the CSA, Applicant Brown's services include the sale of a good that is illegal under federal law, and therefore encompasses a use that is unlawful.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Is this a WYHA? Matthew Swyers represented applicant.

Text Copyright John L. Welch 2016.

Further Comments of Professor McCarthy Regarding TTAB Dilution Analysis

Professor McCarthy responds below to the comments on this TTABlog post regarding his criticism of the TTAB's dilution analysis.

I don’t agree with the commenters who argue that the T.T.A.B. is correct in thinking that "association" automatically proves that it is likely (probable) that the famous mark will be harmed and lose strength. I disagree with the argument that the existence of ANY other similar mark on ANY goods or services creates actionable "dilution" – once there was one, now there are two. First, the plaintiff would have to prove it’s mark is unique – the one and only trademark use of this designation – on any goods or services. Second, this would create a true "right in gross," which everyone has always said is what dilution law does not do. (That's a monopoly on the word as a mark.) The statute says that plaintiff must prove that the "association" created by the accused mark "impairs the distinctiveness of the famous mark." The Supreme Court said in Victoria’s Secret that association does not prove impairment.

Plaintiff must articulate some scenario in which there a likelihood that the strength of the plaintiff’s mark will be lessened. For example, Judge Furman found no dilution by a parody of Louis Vuitton expensive handbags even though there was association: "Significantly, it is not enough to show—as Louis Vuitton indisputably can—that members of the public are likely to 'associate' the defendant’s mark with the plaintiff’s mark (or that the defendant promotes such association)….. [T]he operative question is whether the kind of association [defendant] creates here is likely to impair the distinctiveness of Louis Vuitton’s marks." Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., 117 U.S.P.Q. 2d 1537, 1545, 2016 WL 70026, *7, (S.D.N.Y. 2016).

In the 2016 T.T.A.B. Omega case, OMEGA watch alleged that collegiate fraternity Alpha Phi Omega’s use of its name in Greek letters ( ΑΦΩ) on shirts would dilute the OMEGA mark in English or as the Greek letter Ω. The Trademark Board denied applicant's motion for summary dismissal of the opposition to its application for the three Greek letters. In my opinion, the Board should have found that there is no plausible situation under which the Greek lettered name of the fraternity on T-shirts would be likely to impair the distinctiveness of the OMEGA or Ω marks for watches. If so trivial a registered use can be held likely to damage the OMEGA mark for watches, then the watch company truly would have a monopoly on all commercial use of a letter from the Greek alphabet. To me, that would expand trademark law beyond all reasonable bounds. I think there could be "blurring" only if when people see the OMEGA watch mark, they will think of the Alpha Phi Omega name and that will impair the strength of the OMEGA mark. Omega v Alpha Phi Omega, 118 U.S.P.Q. 2d 1289, 1300 (T.T.A.B. 2016)

Read comments and post your comment here.

Text Copyright 2016.

NYIPLA Seminar: "Hot Topics In Intellectual Property Law" - July 20th in NYC

The New York Intellectual Property Association will host a seminar entitled "Hot Topics in Intellectual Property Law" on Wednesday July 20, 2016, from noon to 5 PM, at the Princeton Club, 15 West 43rd Street, New York City. NY and NJ CLE credits are available, including ethics credits. Register here.

With regard to developments at our favorite tribunal, TTAB Chief Adminstrative Trademark Judge Gerard F. Rogers will discuss the proposed new Board rules and fee changes.

AGENDA
12:00 - 12:45 - Registration and Lunch

12:45 - 1:00 - Welcome Remarks

1:00 - 1:30  - Keynote Address - State of the Union in Fashion Law
Professor Barbara Kolsun, Adjunct Professor of Fashion Law at Cardozo and Co-Director of Cardozo’s FAME program (Fashion, Art, Media and Entertainment)

1:30 - 2:00 -  Evidentiary Considerations for Evaluating “Disparaging Marks” Under Section 2(a)
Dyan Finguerra-DuCharme, Partner, Pryor Cashman LLP
Scott Greenberg, Senior Counsel, Locke Lord LLP
Robert L. Raskopf, Partner, Quinn Emmanuel LLP

2:00 - 2:30 Shammas & Nantkwest: A Critical Look at Expense-Shifting Provisions and the De Novo Review of Agency Rulings
Charles E. Miller, Member, Eaton & Van Winkle LLP

2:30 - 2:45 Refreshment break

2:45 - 3:15 Criminal Prosecution In Counterfeit Trademark and Trade Secret Cases
William P. Campos, Assistant U.S. Attorney, Intellectual Property Crimes Coordinator, Business and Securities Fraud Unit, U.S. Attorneys’ Office of the Eastern District of New York

3:15 - 3:45 New Rules and New Fees… What Changes Are Afoot at the TTAB?
Honorable Gerard F. Rogers, Chief Administrative Trademark Judge, Trademark Trial and Appeal Board

3:45 - 4:15 Exploring a Trademark Safe Harbor
Patricia Chang, Legal Specialist, Etsy

4:15 - 4:45 Ethical Considerations in Trademark Practice – EARN ETHICS!
Kathleen E. McCarthy, Partner, King & Spalding LLP

4:45 - 4:50 Closing Remarks

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BOXME Not Confusable With BOX for Data Storage Services, Says TTAB

The Board dismissed an opposition to registration of the mark BOXME for "storage services for archiving data bases, images, and other electronic data," finding the mark not likely to cause confusion with the registered mark BOX, and variations thereof, for "on-line content storage, archival, management and collaboration services" offered "in the cloud." Third-party registration and usage evidence of BOX-containing marks convinced the Board that BOX is conceptually weak, and the Board found the marks sufficiently different to avoid confusion. Box, Inc. v. Hakem Ikbariyeh, Opposition No. 91202576 (July 7, 2016) [not precedential].

Counterclaims: The Board dismissed pro se applicant Hakem Ikbariyeh's genericness and mere descriptiveness counterclaims. The evidence did not establish that relevant consumers understand BOX to refer to cloud-based storage services. The overwhelming majority of uses include BOX with one or more terms rather than by itself.

As to mere descriptiveness, the evidence came closer but still fell short. The third-party evidence showed that "BOX is not arbitrary, or particularly distinctive, but instead reveals something about cloud-based storage, sharing and synching solutions, at least metaphorically, in that these types of cloud-based solutions serves as a figurative 'box' in which content is stored and from which it is accessed." However, the evidence did not show that BOX immediately conveys knowledge about the services at issue. In fact, in most of the third-party registrations containing the discrete word "box," the word is not disclaimed.

Likelihood of Confusion: The Board found the services to be identical, and it therefore presumed that they travel through the same trade channels to the same class of consumers.

As to the marks, Applicant Ikbariyeh introduced 16 third-party registrations for marks containing the word BOX for products or services identical, similar, or closely related to those at issue, including the marks DROPBOX, BLUE BOX, DATABOX, RECEIPT BOX, POSTBOX, TREASURE BOX, and MY MAILBOX. Third-party uses included 24 Hour Box, DROPBOX, Digital Evidence Box,  inbox storage, and OneTimeBox.

The Board found that opposer's mark consists of a commonly used word with a well understood meaning, whereas applicant's mark is not a word and thus has no meaning. To the extent consumers view applicant's mark as two words, "box" and "me," applicant's mark creates a different commercial impression from opposer's mark. The Board found it "more likely that consumers could perceive Applicant's services as one more offering by another distinct source under a mark which contains the word 'box.'"

The Board found the voluminous evidence in the record to be "powerful on its face," citing Juice Generation.  Although opposer has been successful, any consumer recognition of opposer "is offset by the widespread use of the term 'box' and the box metaphor in the parties' industry."

In short, we agree with Applicant that Opposer’s BOX mark is conceptually weak, and that the evidence of commercial weakness is stronger than the limited evidence Opposer has offered to show consumer recognition or marketplace strength. Accordingly, while the parties’ marks are in some ways similar, we find that they are different enough, given the weakness of Opposer’s mark, that consumers will be able to distinguish between them.

And so the Board dismissed the opposition.

Read comments and post your comment here.

TTABlog comment: Thinking outside the box?

Text Copyright John L. Welch 2016.

TTAB Test: Which One Of These Three Section 2(d) Refusals Was Reversed?

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


In re McCrane, Inc., Serial No. 85728534 (July 6, 2016) [not precedential]. [Section 2(d) refusal of HUMANX, in the form shown below, for exercise and fitness equipment, in view of the registered mark HUMAN X (in standard characters), for "athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; boxing shorts; rash guards; tee shirts"].

In re Touratech AG, Serial No. 86288721 (July 6, 2016) [not precedential]. [Section 2(d) refusal the mark DriRide for motorcycle parts and accessories, arranging motorcycle travel tours, and motorcycle rentals, in view of the registered mark DRIRIDER for clothing for motorcyclists].

In re Summit Entertainment, LLC, Serial No. 77921988 (June 29, 2016) [not precedential]. [Section 2(d) refusal of ECLIPSE for, inter alia, all-purpose carrying bags, back packs, and messenger bags, "all relating to motion pictures and entertainment," in view of the registered mark ECLIPS & Design, shown below, for "trunks and travelling bags, namely, tote bags"].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.

WYHA? BEST PROTEIN Merely Descriptive of Nutritional Supplements, Says TTAB

The Board affirmed a Section 2(e)(1) refusal of the mark BEST PROTEIN, finding it merely descriptive of "dietary and nutritional supplements" [PROTEIN DISCLAIMED]. Applicant BPI Sports asserted that some imagination and/or forethought would be required to determine the meaning of the mark, but the Board disagreed. Would you have appealed? In re BPI Sports, LLC, Serial No. 86414907 (July 11, 2016) [not precedential].

Examining Attorney Eric Sable relied on dictionary definitions of "best" and "protein," and on product labels showing that protein is a common, heavily promoted ingredient of dietary and nutritional supplements (many of the products having "protein" in their names). The term PROTEIN is prominently displayed in applicant's own "fact sheet" and is an ingredient of applicant's supplements. The examining attorney also submitted website pages showing use of "best protein" in connection with those products.

Applicant BPI feebly argued that some thought or imagination is required in order to determine the mark's meaning in relation to its goods:

...the Examiner negates to mention that the cited Oxford Dictionary also states that “best” is defined to mean “most enjoyable” and “most appropriate, advantageous, or well advised.” Applicant submits that consumer (sic) can simply find that Applicant’s product is a “most enjoyable” dietary and nutritional supplement or a “most appropriate” or “well advised” dietary and nutritional supplement; neither of which would merely describe “the desirable quality of the goods” as asserted by the Examiner.

The Board, however, observed that laudatory terms are generally merely descriptive, and it had no doubt that BEST PROTEIN merely describes applicant's products because it identifies an ingredient thereof.

Finally, applicant pointed to several registrations for marks including the word PROTEIN for supplements, but the Board pointed out once again that the Board is not bound by decisions of examining attorneys in other cases. Each application must be examined on its own merits.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Well, would you have?

Text Copyright John L. Welch 2016.

TTAB Affirms 2(a) False Association Refusal of SEAL TEAM PHYSICAL TRAINING, INC.

The Board affirmed a Section 2(a) refusal of the mark SEAL TEAM PHYSICAL TRAINING, INC., in the stylized form shown below, for "consulting services in the field of fitness and exercise; physical fitness instruction" [PHYSICAL TRAINING INC. disclaimed], finding that the mark falsely suggests a connection with the Department of the Navy's elite units known as SEAL teams or SEALs. In re Seal Team PTI Incorporated, Serial No. 86420547 (June 30, 2016) [not precedential].

The Board applied its standard, four-part test under Section 2(a). Examining Attorney Mark Sparacino maintained that "SEAL Team" is the name of the Navy's elite units, and has no other recognized meaning. The record demonstrated that "SEAL Team" is a reference to members of special weapons operation and tactical units or teams in the Navy, known as SEAL (Sea-Air-Land) Teams (also known as SEAL, or Navy SEAL).

Applicant feebly contended that the mark does not point to the Navy because the term "Inc." signifies that applicant is not a governmental entity and the word "team" refers to the team-oriented nature of its fitness program. The Board was unimpressed, observing that "the addition of matter to the name of an institution does not avoid the commercial impression that the mark is a close approximation of the institution."

Next, applicant argued that the term "Seal Team" does not uniquely pointing to the Navy, relying on two existing registrations for a logo mark includes the words PADI SEAL TEAM, for diving instruction services, and an associated website. The Board, however, found that this single use was insufficient to defeat "the contrary evidence that there is a unique and unmistakable association of 'SEAL Team' with elite units of the Navy."

As to the third factor, applicant did not dispute that it is not connected with the Navy or its SEAL units.

The fourth factor looks to whether the elite units of the Navy are of such renown that when the mark SEAL TEAM PHYSICAL TRAINING INC. is used with applicant's services, consumers will understand "SEAL Team" as referring to these elite units and that a connection or association with these units will be presumed.

Applicant argued that "no rational person would sign up for physical fitness training with the Applicant under the assumption that he or she is joining the U.S. Navy SEALs or that he or she would actually be trained by active duty SEALS." The Board pointed out, however, that the question is whether consumers would presume a connection with the Navy units.

The Navy offers, as part of its recruiting efforts and outreach program, an athletic and fitness event for the public. It provides SEAL training engagements to athletic clubs, colleges, and universities. Applicant and other companies offer fitness programs using SEAL training methods. Moreover, applicant's website states that applicant was founded by a former Navy SEAL and offers SEAL-type workout by trainers who may be former SEALS.

In view of these recruiting and outreach efforts of the Navy, the public would assume that the Navy has an interest in sponsoring, approving, or supporting activities like applicant's. The Board therefore found that the public would presume a connection between applicant and the SEALS, i.e., that the Navy approves or endorses applicant's services.

The Board therefore concluded that applicant's mark falsely suggests a connection with the Navy's elite SEAL units, and it affirmed the refusal under Section 2(a).

Read comments and post your comment here.

TTABlog comment: Is this a WYHA?

Text Copyright John L. Welch 2016.

Professor McCarthy Criticizes the TTAB's Dilution Analysis

Professor J. Thomas McCarthy has been a consistent critic of the TTAB's analysis in dilution cases, particularly the Board's failure to properly consider the issue of "impairment" or "damage" arising from the alleged dilution. He sent me the following comment for posting:

I wish the T.T.A.B. would stop saying that dilution of a mark can be shown merely by proving that the challenged mark causes people to think of the famous mark. In its March 31, 2016 decision in the Omega case (118 U.S.P.Q. 2d 1289, 1298) it quoted from its last year’s decision in the New York Yankees case (114 U.S.P.Q. 2d 1497, 1506). It said that dilution by blurring occurs when “a substantial percentage of consumers, on seeing the junior party's use of a mark on its goods, are immediately reminded of the famous mark and associate the junior party's use with the owner of the famous mark, even if they do not believe that the goods come from the famous mark's owner.” That’s just a part of what dilution demands and is not what the statute says.

The Board’s definition is only about what constitutes “association.” This is merely one ingredient of dilution. The statute says that dilution by blurring is an association arising from a similarity in the marks “that impairs the distinctiveness of the famous mark.” Lanham Act §43(c)(2)(B). The T.T.A.B.’s definition erases this critical “impairment” or “damage” requirement from the statute.

The Supreme Court made it clear that as a matter of basic dilution theory, proof of association is itself neither proof of blurring nor proof that blurring is likely: “‘[b]lurring’ is not a necessary consequence of mental association. (Nor, for that matter, is ‘tarnishing.’)” Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 434 (2003).

Read comments and post your comment here.

TTABlog comment: What do you think?

 Text Copyright 2016.

TTAB Finds 1.0, 1.25, and 1.5 Generic For Cigarette Rolling Papers

The Board issued a 98-page opinion in this consolidated opposition and cancellation proceeding, commenced in 2003, involving Defendant's marks 1.0, 1.25, 1.5, and 2.0, in standard character and/or design forms, for cigarette rolling papers and/or cigarettes, on the grounds of genericness and/or mere descriptiveness. The Board found the marks to be generic for, and descriptive of, cigarette rolling papers, but snuffed out those claims aimed at Defendant's cigarettes. North Atlantic Operating Company, Inc., North Atlantic Trading Company, Inc. and National Tobacco Company, LP v. DRL Enterprises, Inc., Opposition No. 91158276 et al. (July 1, 2016) [not precedential]. [Subsequently, DRL filed a civil action seeking to reverse the Board's genericness findings. The parties reached a settlement and a judgment was entered requiring the reversal of the Board genericness rulings in light of the stylization of DRL's marks for cigarette rolling papers].

This blog post will not discuss the opinion in all its details, since life is short. However, set out below are some of the "high" points.

Testimony: The Board found the testimony of Defendant's Chairman and its Vice President and General Counsel to be evasive, harassing, and frivolous. The refused to answer directly "straightforward questions" asked by Plaintiff's counsel regarding Defendant's use of the challenged marks and the relationship of the marks to the size of the rolling papers. In short, their "hazy" testimony was "not credible" and had "little, if any, probative value."

Standing: Defendant argued that Plaintiffs had contracted away their standing to bring these proceedings because they were bound by agreement to distribute only ZIG ZAG branded cigarette papers bought from the manufacturer, Bolloré, and Bolloré had agreed not to use Defendant's marks, and to not permit Plaintiffs to use the marks, on ZIG ZAG papers.

The Board pointed out, however, that Plaintiffs did not enter into that agreement, and in any case, Plaintiffs "could terminate their agreement with Bolloré and find a new supplier of cigarette papers." So Plaintiffs' prospective interest in using the challenged designations sufficed to establish standing.

 Genericness for Rolling Papers: As to genericness, the Board found that customers perceive 1.0, 1.25, and 1.5 to be size designations for rolling papers, and Defendant uses those designations to indicate size. Although there are no industry standards governing the size of rolling papers, the size generally refers to the surface of the paper. Customers perceive 1.0 as a single width rolling paper, etc.

With regard to the stylized version of these designations, the Board found the stylization "not so unique or unusual as to create a distinctive commercial impression apart from the number represented."

Mere Descriptiveness for Rolling Papers: Defendant's registrations are more than five years old, and so cannot be cancelled on mere descriptiveness grounds. As to its opposed applications, although the marks are legally identical to those in two of the registrations, but the Board observed that the Morehouse defense is an equitable defense and is not applicable against a claim of mere descriptiveness. The Board then, not surprisingly, concluded that 1.25 and 1.5 are merely descriptive of cigarette rolling papers. [Defendant had disclaimed 1.0 in the stylized mark].

Acquired Distinctiveness: Defendant's survey evidence was found to be "inconclusive" and not of sufficient probative value to support a finding of acquired distinctiveness. The Board deemed the survey defective in that: it did not include a properly constructed control to measure noise; it was geographically restricted to the Southeastern United States, where Defendant had its highest market share; the survey used stylized versions of the marks rather than block form versions; the survey (conducted in 2007) was stale; the sample sizes were insufficient; and the results did not account for responses identifying a source other than Defendant.

Although Defendant's sales (since 1976) and advertising figures showed that its rolling papers are a successful product line, the Board could not find acquired distinctiveness based on this data. The challenged designations are always used with the JOB trademark, and therefore it was not possible to ascertain the recognition of the decimal indicators by themselves.

The testimony of several customers was undercut on cross-examination when they conceded that they perceive the decimal designations as size designations rather than trademarks. Finally, defendant pointed to its exclusive use of the designations, but the Board found that competitors "acquiesced to Defendant's assertion of its exclusive right to use the decimal designations to avoid litigation."

Looking at the totality of the evidence, the Board concluded that Defendant had failed to prove acquired distinctiveness.

Cigarettes: The evidence did not establish that consumers perceive the decimal designations 1.0, 1.25, 1.5, and 2.0 as indicating the size of a cigarette, and it failed to show that the size of a cigarette is a significant factor in the purchasing decision. In short, Plaintiff did not establish that size is "a distinctive characteristic of a cigarette."

The Board therefore concluded that the challenged designations are not generic for, or merely descriptive of, cigarettes.

[T]here is nothing in the record that demonstrates that consumers understand that size is a feature of cigarettes. While cigarette paper is a component of a cigarette there is no immediate connection between a cigarette and its paper size. Consumers would have to employ reasoning to connect the decimal designations sought to be registered as the size of a cigarette (e.g., the cigarettes they are purchasing or smoking is composed of paper which may be single wide (1.0), 1.25 or 1.5 sized cigarette papers.

For the sake of completeness, the Board also considered with these designations have acquired distinctiveness for cigarettes, and it concluded that they did not. However, if the Board's ruling regarding the genericness of 1.25 and 1.5 in stylized form is reversed on appeal, then the Board would find that the marks 1.25 and 1.5 have acquired distinctiveness for cigarettes.

Lack of Bona Fide Intent: Finally, the Board considered and rejected Plaintiff's claim that Defendant lacked a bona fide intent to use the decimal designations for cigarettes at the time it filed the opposed applications. Defendant's testimony regarding the expansion of its product line built on brand loyalty and establish trade channels corroborated the statements made in its applications that it had a bona fide intention to use the decimal designations for cigarettes. It had the capacity to market, if not manufacture, cigarettes, and cigarettes are within the normal zone of expansion for a company that sells cigarette papers.

In sum, the Board found Defendant's decimal designations generic for, and alternatively merely descriptive of, cigarette rolling papers. However, the Board found the designations not generic for, and not merely descriptive of, cigarettes.

Read comments and post your comment here.

TTABlog comment: The oral hearing in this case was held on June 28, 2016, and the decision was issued three days later.

Text Copyright John L. Welch 2016.

Supplemental Registrations and Acquired Distinctiveness: Did The TTAB Get This Right?

In the SEXSTROLOGY case that I blogged yesterday, the TTAB had this to say (at page 14) about the Supplemental Register:

1. According to the Board, Section 23 of the Trademark Act dictates that "a mark that is registrable on the Principal Register may not be registered on the Supplemental Register." Is that a correct reading of the Statute?

Section 23 says" "All marks capable of distinguishing applicant’s goods or services and not registrable on the principal register … may be registered on the supplemental register …." But Section 23 does not say that ONLY marks not registrable on the principal register may be registered on the supplemental register.

2. The Board also said, in footnote 8, that registration on the Supplemental Register constitutes an admission that the mark is merely descriptive. Section 27, in pertinent part, says that "registration of a mark on the supplemental register shall not constitute an admission that the mark has not acquired distinctiveness." The Board reads this to mean that acquired distinctiveness must come later, since the securing of a Supplemental Registration is an admission of mere descriptiveness at the time of issuance.

But I read Section 27 as speaking about the time of the registration: i.e, at the time of registration, acceptance of an Supplemental Registration is not an admission that the mark has NOT acquired distinctiveness.

In short, I think securing a Supplemental Registration is an admission only that the mark is not INHERENTLY DISTINCTIVE at the time of registration, not an admission that it is merely descriptive, and so one may later establish that the mark had acquired distinctiveness even before the date of the Supplemental Registration.

What do you think?

This discussion in the SEXSTROLOGY case was probably dictum, since Opposer was unable to prove acquired distinctiveness at any time, and the Board considered the pre-registration evidence "as part of the total picture."

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

TTABlog Test: Is "CARUSO HOTELS AND RESORTS" Primarily Merely a Surname?

The USPTO refused registration of the mark CARUSO HOTELS AND RESORTS for "hotel and resort services" [HOTELS AND RESORTS disclaimed], finding the mark to be primarily merely a surname under Section 2(e)(4). Applicant argued that fewer than one-hundredth of one percent of Americans have the surname CARUSO, that "caruso" means "boy" in Italian/Sicilian, and that CARUSO identifies the Italian operatic tenor, Enrico Caruso. How do you think this came out? In re Caruso Property Management, Inc., Serial No. 86068166 (July 6, 2016) [not precedential].

Examining Attorney Cheryl Clayton submitted a search report showing that CARUSO ranks as the 1,621st "most popular last name" in the USA, and that 23,919 persons share that surname. She also provided a page from a surname dictionary identifying CARUSO is an American surname of Italian origin, and a Wikipedia entry stating that one of the meanings of "Caruso" is that of a surname.

Applicant admitted that "Caruso" is a surname, but argued that it is a relatively rare one.

The Board noted that even the most common surname would represent only a small fraction of the entire US population. Furthermore, even rare surnames may be unregistrable, and there is no minimum number of directory listing required to establish a prima facie case under Section 2(e)(4). [In terms of prior Board decisions, 23,919 is a lot - ed.]. The Board also noted that "Caruso" is the name of one of Applicant's founders, as well as the most important part of Applicant's trade name and of the applied-for mark.

The Dictionary of American Names states that CARUSO is an Italian word for a:

nickname from caruso ‘close-cropped’...” and “[t]his word was also used in the more general sense ‘boy’, ‘lad’, since in the Middle Ages young men of fashion sometimes wore their hair much shorter than was the prevailing style. In the Girgenti area of Sicily the term was a metonymic occupational name for a worker in the sulfur pits, since such workers were required to wear their hair short.”

"When, as here, the term has a meaning in a foreign language, we consider the meaning's significance in the United States." [At least when it's a common, modern language - ed].

Few people would know that the surname CARUSO derives from an Italian/Sicilian historical noun. Such an obscure meaning does not detract from the surname significance of the term.

When CARUSO is used for the name of a hotel, it would be much more likely to be perceived as a surname, perhaps the owner’s, than as conveying that a “dear boy” operates or provides the name for the hotel.

Finally, the Board observed that the fact that an individual is famous in a particular field generally will not dissipate the term's primary surname significance. "There is a difference between an individual that has made a historically significant contribution and being an individual that has achieved such renown as an historical figure." The evidence did not support the assertion that the primary significance of CARUSO for hotel and resort services is Enrico Caruso.

Considering the mark as a whole, and noting the disclaimer of HOTELS AND RESORTS, the Board found the mark to be primarily merely a surname, and it affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: How did you do?

In Thermo LabSystems [TTABlogged here], the TTAB found WATSON to be primarily a surname for laboratory management software. James Dewey Watson was one of the discoverers of the structure of the DNA molecule, but the Board was not persuaded that the relevant purchasing public would consider Dr. Watson to be such "an historical figure" that they would "view the primary connotation of WATSON as James Dewey Watson."

Compare Lucien Piccard Watch Corp. v. Since 1868 Crescent Corp., 314 F. Supp. 329, 165 USPQ 459 (SDNY 1970) (finding DA VINCI not primarily merely a surname because it primarily connotes Leonardo Da Vinci).

Text Copyright John L. Welch 2016.

Precedential No. 20: TTAB Dismisses 2(d) Opposition, Opposer Fails to Prove Rights in SEXSTROLOGY

The Board dismissed this Section 2(d) opposition to registration of the mark SEXY ASTROLOGY for “astrology consultation” because Opposer Terry Nazon failed to prove proprietary rights in her mark SEXSTROLOGY, registered on the Supplemental Register for services in the nature of "astrology horoscopes." Terry Nazon, d/b/a Terry Nazon Inc. v. Charlotte Ghiorse, 119 USPQ2d 1178 (TTAB 2016) [precedential].

Because Opposer Nazon owns a Supplemental Registration for her mark, priority was not an issue. However, a registration on the Supplemental Register is not entitled to the presumptions of Section 7(b) of the Trademark Act, and is not evidence that Nazon owns proprietary rights in her mark. A mark so registered is presumed to be merely descriptive and Nazon had the burden to establish acquired distinctiveness.

The good news for Nazon was this: since priority was not an issue, Nazon was not required to establish acquired distinctiveness prior to any date on which Applicant Ghiorse might rely. Nazon needed to show only that her claimed mark “has acquired distinctiveness.”

Nazon claimed that she coined the term SEXSTROLOGY in 2004 for an article she was writing, combining the words SEX and ASTROLOGY. [Doh! - ed.]. She uses the word "to define astrology as it pertains to men and woman [sic], as it pertains to relationships, and as it pertains to the interaction between men and women." The Board perceptively pointed out, however, that using the term SEXSTROLOGY in various materials did not constitute use as a service mark for astrology horoscopes.

Nazon provided vague testimony about use of SEXSTROLOGY on her Facebook page, at the terrynazon.com website, and in her blog. She uses @SEXSTROLOGY as her Twitter handle, but "using a term as part of a Twitter handle to identify oneself does not necessarily evidence trademark use for particular services," The Board found that this evidence as a whole did not show trademark rights in SEXSTROLOGY for astrology horoscopes.

Applicant Ghiorse submitted several examples of third-party use of "SEXSTROLOGY" or "SEXTROLOGY," including several books, a Twitter page, Tumblr postings, and several websites, all with reference to astrology and relationships. A dictionary definition from "Definition Of," a "community dictionary," defined "sextrology" as "a contraction of sex + astrology; the stars to study the influence of one's sex life and sexual relationships." [sic]. Indeed, Opposer Nazon admitted that there is voluminous third party use of "sexstrology," and in her testimony she treated SEXSTROLOGY as "the name of the subject matter."

This evidence of multiple third-party and mainstream uses demonstrated the highly descriptive meaning of SEXSTROLOGY/SEXTROLOGY. The Board concluded that Nazon's evidence regarding her use of SEXSTROLOGY was insufficient to overcome Applicant Ghiorse's evidence of descriptiveness. Much of Nazon's evidence was flawed, and in some of the evidence "Sexstrology" may have been viewed as the subject matter rather than as a source indicator. Furthermore, the number of third-party descriptive uses indicate that Opposer has not been the substantially exclusive user as required under Section 2(f).

The Board concluded that Opposer Nazon failed to demonstrate that she has acquired proprietary rights in the term SEXSTROLOGY as a trademark for astrological horoscopes, and so the Board dismissed the opposition on that basis.

The Board also addressed, in the alternative, Nazon's likelihood of confusion claim, assuming arguendo that the term had acquired distinctiveness. Treating Nazon's mark as highly suggestive and entitled to a narrow scope of protection, the Board found the involved marks, when considered in their entireties, different in meaning and commercial impression.

[T]he words SEXY and SEX have different meanings. When each is combined with the other element in the respective marks, the result is that Opposer’s mark (again, treating it as suggestive rather than descriptive) conveys that her “astrology horoscopes” services are concerned with the effect of the stars on one’s romantic life or the romantic compatibility of various astrological signs. Applicant’s mark, SEXY ASTROLOGY, on the other hand, does not convey such a meaning. It clearly references ASTROLOGY, and directly tells consumers that this is the subject of Applicant’s “astrology consultation” services. However, the term SEXY, as used with ASTROLOGY, does not have a clear meaning. What is SEXY ASTROLOGY?

The Board concluded that confusion is not likely, and so even if Opposer Nazon had established trademark rights in the mark SEXSTROLOGY, she did not prove a likelihood of confusion.

Read comments and post your comment here.

TTABlog comment: How about SEXY ASTRONOMY? Would that be confusable?

Text Copyright John L. Welch 2016.