TTAB Test: Is "IT'S PIRATE TIME" Confusable With "PYRAT" for Distilled Spirits?

Patron Spirits opposed the application of Peter W. Noyes to register the mark IT'S PIRATE TIME for "distilled spirits" and for "retail store services featuring rum and rum based products...," claiming a likelihood of confusion with the registered mark PYRAT for "distilled spirits." Applicant Noyes argued that the term "pirate" or "pyrat" is weak and suggestive for rum, thanks to Stevenson's Treasure Island, which popularized the notion that rum is the drink of choice for pirates. How do you think this came out? Patron Spirits International, Inc. v. Peter W. Noyes, Opposition No. 91215615 (October 28, 2016) [not precedential].

The goods in the application and cited registration are identical. As to applicant's retail store services featuring rum products, rum is a distilled spirit, and the Board has often found retail store services to be related to the goods sold by those retail stores.

When the goods are identical, it is presumed that the travel through the same, normal channels of trade to the same classes of consumers. As to the services in the application, neither opposer's identification of goods nor applicant's recitation of services include any limitations as to channels of trade, and the goods and services are therefore presumed to move in all normal channels of trade for those goods and services and to be available to all classes of consumers. Accordingly the Board presumed that opposer's distilled spirits may be sold through retail outlets like applicant's and to the same consumers.

Turning to the marks, the word "pyrat" is an alternative spelling of "pirate," according to the Oxford English Dictionary. [More like a misspelling to me - ed.]. The Board concluded that the commercial impressions of IT'S PIRATE TIME and PYRAT are "quite similar in that the dominant term in Applicant's mark is the same as Opposer's mark and consumers could perceive Applicant's mark as a reference to Opposer's goods, exclaiming that it is time for Opposer's PYRAT, which would likely be pronounce as 'pirate.'" Or consumers could perceive applicant's mark as a variation of opposer's mark, or a slogan developed by opposer.

The Board concluded that the relatively minor dissimilarities in sight and sound are outweighed by similarities in connotation and commercial impression, and this du Pont factor weighs in favor of opposer.

Applicant urged that the term "pirate" or "pyrat" is weak and suggestive because it is often associated with rum. A number of websites use the term in reference to rum, but the Board was not moved. A number of the references involved foreign brands not apparently sold in the USA, while most of the others are recipes that incorporate "pirate" in the name or are discussions of pirates drinking rum.

Applicant also pointed to two registrations: PIRATE AND PARROT & Design for rum, and PIRATES OF THE MISSISSIPPI for distilled spirits. However, two registrations are not enough to show that opposer's mark is diluted or weak. The word "pirate" or "pyrat" may be suggestive of rum, but it is not so weak as to merit only a limited scope of protection.

And so the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

TTABlog comment: What do you think?

Text Copyright John L. Welch 2016.

Precedential No. 32: Marijuana Vaporizers Are Illegal Under CSA, TTAB Affirms Two "JUJU" Refusals

The Board affirmed refusals to register POWERED BY JUJU and JUJU JOINTS for smokeless marijuana vaporizers on the ground that the identified goods are illegal under the federal Controlled Substances Act (CSA) and therefore use of the marks in commerce is unlawful. Applicant maintained that it does business only in states where marijuana is legal, and those jurisdictions comply with the Cole Memo. The Board, however, ruled that the CSA controls. In re JJ206, LLC, dba JuJu Joints, 120 USPQ2d 1568 (TTAB 2016) [precedential].

Use of a mark must be "lawful" if the mark is to qualify for federal registration. "[A]ny goods ... for which the mark is used must not be illegal under federal law." In re Brown, 119 USPQ2d 1350, 1351(TTAB 2016). [TTABlogged here]. It follows that if the goods on which a mark is intended to be used are unlawful, there can be no bona fide intent to use the mark in lawful commerce. When the goods are illegal under the CSA, the applicant cannot use its mark in lawful commerce and it is legally impossible for the applicant to have the requisite bona fide intent to use the mark. [The POWERED BY JUJU application was based on Section 1(b) intent to use].

Applicant's goods are identified as vaporizing devices for cannabis or marijuana. Under the CSA, it is unlawful to sell, offer for sale, or transport in interstate commerce drug paraphernalia, defined as "any equipment ... primarily intended or designed for use in ... ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under [the CSA]." The CSA identifies marijuana as such a substance. Based on the evidence of record, the Board concluded that "cannabis" in applicant's identification of goods refers to marijuana.

The Board therefore found that applicant's identified goods fall within the definition of illegal drug paraphernalia under the CSA.

Applicant contended that because it markets its goods in states that allow for the sale and distribution of marijuana, its current and intended use is lawful. The Board, however, rejected that position in Brown: "the fact that the provision of a product or service may be lawful within a state is irrelevant to the question of federal registration when it is unlawful under federal law. Id. at1351.

"Regardless of individual state laws that may provide for legal activities involving marijuana, marijuana and its psychoactive component, THC, remain Schedule I controlled substances under federal law and are subject to the CSA’s prohibitions. 21 C.F.R. § 1308.11." Id. at 1352; see also U.S. Const. Art. VI. Cl. 2; Gonzales v. Raich, 545 U.S. 1, 27, 29 (2005); United States v. Oakland Cannabis Buyers’ Coop., 532 U.S. 483, 491 (2001).

Applicant further contended that because the jurisdictions where it does business "comply with federal directives such as the Cole Memo," its good should be considered lawful. The Cole Memo is a memorandum from the U.S. Department of Justice to United States Attorneys, addressing the enactment of medical marijuana laws in certain states. It affirmed the illegality of marijuana under the CSA and set out federal "enforcement priorities" "to guide the Department's enforcement of the CSA against marijuana-related conduct." The memo urged that federal enforcement efforts focus on preventing distribution of marijuana to minors, preventing violence and firearm use in marijuana-related activities, and preventing the diversion of marijuana from a legal state to other states.

The Board rejected applicant's argument because the Cole Memo "does not and cannot override the CSA." The memo, noted the Board, "explicitly underscores that 'marijuana is a dangerous drug and ... the illegal distribution and sale of marijuana is a serious crime."

And so the Board concluded that because applicant's goods constitute illegal drug paraphernalia under the CSA, use and intended us of the applied-for marks is unlawful and cannot provide a basis for federal registration. Accordingly the Board affirmed the refusals to register under Sections 1 and 45 of the Lanham Act.

Read comments and post your comment here.

TTABlog comment: A recent Trademark Reporter commentary [pdf here], referring to the Cole Memorandum, states that "it is still an open question [after In re Brown] as to how the TTAB would rule when faced with the question of whether the DOJ’s tacit approval of state marijuana laws should allow cannabis-based applications to move forward." It's not an open question any more.

Text Copyright John L. Welch 2016.

TTAB Test: Is "NOT SO SIMPLE SYRUP" Confusable with "KEEP IT SIMPLE SYRUP" for Syrup?

Chef Sous LLC opposed an application to register the mark NOT SO SIMPLE SYRUP for "syrups for making beverages; non-alcoholic drink and cocktail mixes" [SYRUP disclaimed], claiming likelihood of confusion with its common law mark KEEP IT SIMPLE SYRUP for "simple syrup." The goods are in-part identical, the consumers are the general public, the goods are relatively inexpensive, and the channels of trade overlap. But what about the marks? How do you think this came out. Chef Sous LLC v. Heidi Webb, Inc., Opposition No. 91215638 (October 26, 2016) [not precedential].

The Board agreed with opposer that the mark KEEP IT SIMPLE SYRUP is suggestive, but disagreed with opposer's contention that the mark is famous, give the limited time of use and moderate sales and advertising figures.

The Board acknowledged that when the goods are identical in part, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

Although each mark contains the phrase SIMPLE SYRUP,  that phrase is either descriptive or generic Opposer disclaimed SIMPLE SYRUP in its registration of a logo mark containing that phrase. Nonetheless, the marks at issue must be considered in their entireties.
 
The Board agreed with applicant that the marks are "antithetical in meaning." Applicant's mark connotes "complexity, or the absence of simplicity," while opposer's mark puts a premium on simplicity and evokes the familiar expression, Keep It Simple Stupid." Because the marks  have different meanings, they have different commercial impressions.

Concluding that the first  duPont factor is dispositive, the Board dismissed the opposition.

Read comments and post your comment here.

TTABlog comment: Well, how did you do?

Text Copyright John L. Welch 2016.

Trademark Reporter Commentary: "USPTO Snuffs Out Marijuana Dispensary Service Mark Application ...."

Seattle-based J. Michael Keyes reviews the TTAB's recent decision in In re Brown, in his pun-filled commentary entitled, "USPTO Snuffs Out Marijuana Dispensary Service Mark Application: Will All Others Go Up in Smoke, Too?" (106 Trademark Reporter 988 (September-October 2016). In In re Brown, 119 USPQ2d 1350, 1351(TTAB 2016) [TTABlogged here], the Board affirmed a refusal to register the mark HERBAL ACCESS for "retail store services featuring herbs," on the ground that the mark was being used in connection with the illegal sale of a substance (marijuana) in violation of the federal Controlled Substances Act (CSA).

As In re Brown tells us, federal trademark protection is currently unavailable for those businesses seeking to protect trademarks and service marks that involve the sale of marijuana. Not all arguments in favor of registration are forever snuffed out, though. There may still be some daylight to challenge the underlying basis of the TTAB’s decision regarding the application of the Controlled Substance Act to applicants who are legally exercising their right to sell marijuana under state law

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

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

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


In re B&M Noble Co., Serial No. 86338620 (October 4, 2016) [not precedential]. [Refusal to register DUCHATEAU DOORS for "wooden doors excluding garage doors, namely, wooden interior doors and wooden entry doors; wood door frames; non-metal decorative moldings and decorative trim for use in building construction; wood moldings; doors of wood clad in aluminum"[DOORS disclaimed] in view of the registered mark CHATEAU for "non-metal garage doors"].

In re Alia Sonara Design Works, LLC, Serial No. 86338224 (September 29, 2016) [not precedential]. [Refusal to register the mark ALIA SONARA in the form shown below, for "Bow ties; boxer briefs; boxer shorts; head scarves; shoulder scarves; silk scarves; ties" on the ground of likelihood of confusion with the registered mark ALIA for "“ladies' clothing, namely jackets, skirts, blouses, tops, pants, pant suits, shirts, coats, sweaters, tunics, housecoats, jumpers, jeans, t-shirts, vests, tank tops, cullotes, tunics, and suits"].

In re Zen Marketing, LLC, Serial No. 86487195 (September 29, 2016) [not precedential]. [Refusal to register ZEN TEA TRADERS & Design (shown below left) for "Black tea; Earl Grey tea; Fruit teas; Green tea; Japanese green tea; Oolong tea; Rooibos tea; Tea; Tea for infusions" [TEA TRADERS disclaimed], in view of the registered marks ZenTea & Design for "tea" (shown below right) and MY ZEN TEA for "Tea, herbal tea, teabased beverages, coffee, sugar, spices"].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.

TTAB Test: Is CARS Merely Descriptive of Automobile Data Collection Software?

The USPTO refused to register the mark CARS for computer software and hardware for capturing road data and determining safe curve speeds for automobiles, on the ground of mere descriptiveness under Section 2(e)(1). Applicant contended that the term is at worst suggestive of a feature of its goods and services but does not merely describe them, pointing out that CARS is an acronym for "Curve Advisory Reporting System." How do you think this came out? In re Rieker Instrument Company, Inc., Serial No. 86197455 (October 21, 2016) [not precedential].

Examining Attorney April E. Reeves submitted evidence that "cars" is a synonym for "automobiles." [duh! - ed.] Applicant's identification of goods indicates that its products are used with automobiles. She also submitted evidence showing that “cars” is used descriptively "in the context of curve speed determination, both to refer to the type of vehicles for which safe curve advisory speed may be determined and to the automobiles used to gather data used in calculations to determine safe curve speed." The evidence also showed that "cars" is used to describe automobile-related software generally.

Applicant contended that the refusal represents an oversimplification of its goods, which comprise "a complete, indivisible hardware and software unit" "used by sophisticated state and local governments to capture speed data, with the resulting data ultimately used to achieve speed advisory signage uniformity from state to state." The Board pointed out that the goods as identified in the application control its analysis, and in any event the USPTO's evidence showed use of the word "cars" in a descriptive manner in the field of applicant's data-capturing software and hardware.

Finally, applicant asserted that CARS is a double entendre whereby the "primary significance of the CARS mark is thus derived from the meaning and overall commercial impression engendered by the CARS mark as an acronym for 'Curve Advisory Reporting System.'" However, there was no evidence that consumers recognize that acronym, or that consumers would understand CARS to refer to anything other than automobiles.

In sum, "consumers would immediately understand CARS, when used in connection with Applicant’s identified goods and services, to describe key features of the software and hardware – that their purpose involves cars and that they are used in cars."

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog note: Would the mark THE CARS be merely descriptive of a musical band if the band's recorded music is played in automobiles? Why not? WYHA?

Text Copyright John L. Welch 2016.

TTAB Enters Summary Judgment in TIGER SHARK Opposition - Lack of Bona Fide Intent

The Board granted Opposer Heinekin Asia Pacific's motion for summary judgment in this opposition to registration of the mark TIGER SHARK for beer, finding that Applicant Claypool lacked the requisite bona fide intent to use the mark in commerce when he filed his Section 1(b) application to register. Heineken Asia Pacific Pte. Ltd. v. Jonathan A. Claypool, Opposition No. 91220927 (September 26, 2016) [not precedential].

As we know, the lack of documentary evidence regarding an applicant's alleged bona fide intent is sufficient proof, absent adequate explanatory evidence, to demonstrate that applicant lacked a bona fide intention to use the applied-for mark in commerce at the time of filing. See Commodore Electronics Ltd. v. CBM Kaubshiki Kaisha, 26 USPQ2d 1503 (TTAB 1993).

Applicant Claypool admitted that he had no written plans to manufacture or sell beer under the mark, had not discussed distribution with any distributor, had not manufactured any type of beer, and had no retail marketing plan. He admitted that he had no documents regarding adoption of the mark, no labels or packaging, no advertising or marketing materials, no business plans, and no documents regarding money spent, potential consumers, or manufacturing of beer.

He stated that he has "no immediate plans to market beer, but plans to do so in 2 or 3 years, but has "no specifics in place."

Claypool asserted that he has "a simple mental memorized plan that is in fact a basic business plan," that he has been actively performing research and development regarding the production of beer, including taste testing by third parties, and that he has conducted clearance searches and has prosecuted additional mark as part of a collective plan.

Nonetheless, the only documents that Claypool submitted were his application to register, a copy of an ITU application that he filed on behalf of a third-party with whom he discussed financing for a brewery, and a TESS search report for the TIGER SHARK mark.

The Board observed that it has consistently held that neither the filing of an ITU application nor a trademark search is sufficient to establish a bona fide intent. Nor does the filing of applications for other marks suffice. In fact, the filing of multiple applications for various marks, combined with his estimate that he is two or three years from marketing a product, at a minimum casts doubt on his bona fides.

And so the Board granted the motion for summary judgment.

Read comments and post your comment here.

TTABlog comment: Oh well, he would have lost on the Section 2(d) ground anyway

Text Copyright John L. Welch 2016.

Belmora Files Petition for Writ of Certiorari in FLANAX Case

In the latest chapter in the long-running battle between Belmora LLC and Bayer over the mark FLANAX, Belmora has filed a petition for writ of certiorari from the Supreme Court. [Petition here]. Belmora seeks review of the ruling of the U.S. Court of Appeals for the Fourth Circuit in March 2016, which vacated an order of the U.S. District Court for the Eastern District of Virginia that had dismissed Bayer's claims because Bayer had never used the mark FLANAX in the United States.

Belmora owns a U.S. registration for the mark FLANAX for a naproxen sodium pain reliever, and has used the mark in this country for more than a decade. Bayer petitioned to cancel the registration, and when Belmora sought review of that decision by way of civil action, Bayer added claims for unfair competition.

The lower court dismissed Bayer's Section 43(a) false association and false advertising claims under FRCP 12(b)(6) and entered judgment on the pleadings as to Bayer's Section 14(3) claim, based on the district court's reading of the Supreme Court's Lexmark decision. [TTABlogged here].

In the petition, the "Question Presented" is stated as follows:

Whether Sections 14(3) and 43(a) of the Lanham Act allow a foreign business that has neither used nor registered its trademark in the United States to sue the owner of a U.S. trademark for conduct relating to the owner’s use of its U.S. mark.

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

TTAB Finds Acquired Distinctiveness for Headset Configuration Mark

The Board reversed a refusal to register the mark shown below, comprising the configuration of a headset, for "headsets for RF communications ...," finding that the mark had acquired distinctiveness. Applicant showed that it income from sales of the products has been high, that it has a 60% market share, that it used "look for" advertising to promote the mark, and that it is industry practice to include distinctive designs on headsets. In re HM Electronics, Inc., Serial No. 86162961(November 17, 2016) [not precedential].

Applicant's mark did not include the over-the-head band, the ear cushion, the buttons, and the boom microphone. As we know, product configuration marks cannot be inherently distinctive. Applicant claimed acquired distinctiveness under Section 2(f). The Board noted that "[a]n application faces a heavy burden in establishing the distinctiveness of a product design."

Declarations from applicant's vice president of marketing stated that the mark has been in use for about 5 years and revenues have exceeded $35 million dollars. Applicant's headsets are the top seller in the QSR (Quick Service Restaurant) industry. Applicant has spent 1.25 million dollars in advertising. The headset was designed to be visually distinctive, and manufacturers in the field design their headsets to have unique looks. Applicant's advertising has included the caption, "Look for the unique earpiece design."

A declaration from a customer stated that the shape and look of applicant's headset is immediately associated with applicant. Applicant's Senior Engineering Manager averred that the three major headsets in the field make their headsets look visually different, so that each headset is identifiable by the look of the headset.

Industry practice was a key factor in In re Black and Decker Corp., 81 USPQ2d 1841 (TTAB 2006), in which the Board found acquired distinctiveness in a design for a key head. [TTABlogged here].

And so the Board found that applicant's evidence established acquired distinctiveness.

Read comments and post your comment here.

TTABlog comment: It's not often a product configuration passes muster at the Board. Good job by the applicant in marshaling its evidence.

PS: note that the opinion is erroneously dated "2015."

Text Copyright John L. Welch 2016.

On Summary Judgment, TTAB Sustains BONNIE CASHIN Opposition For Lack of Bona Fide Intent

The Board sustained an opposition to registration of the mark BONNIE CASHIN for backpacks, handbags, and clothing, finding that applicant Stephanie Lake lacked the necessary bona fide intent to use the mark in commerce when she filed her Section 1(b) application. Applicant Lake's lack of documentary evidence regarding her alleged bona fide intent was sufficient to support the Board's granting of opposer's motion for summary judgment, under Commodore Electronics Ltd. v. CBM Kaubshiki Kaisha, 26 USPQ2d 1503 (TTAB 1993). The Trustees of the Bonnie Cashin Foundation, Lucia Keller and David Baum v. Stephanie Day Lake, Opposition No. 91213081 (October 12, 2016) [not precedential].

The Board has held that when there is no evidence of an applicant's bona fide intent to use the applied-for mark in commerce when it filed its application to register, entry of summary judgment is appropriate. See Honda Motor Co. v. Winkelmann, 90 USPQ2d 1660 (TTAB 2009). [TTABlogged here]. Applicant pointed only to the declaration that her counsel signed when filing her application, but she admitted that she had not taken any steps to use the mark. Her business strategy was not finalized, she hadn't commenced advertising, and hadn't determined specific channels of trade or volume of goods to be distributed.

The Board concluded that applicant had taken no actual steps toward preparing to use the BONNIE CASHIN mark on the identified goods, and had only a subjective intent to use mark when she filed the involved application.

Prior to January 2012, when she filed her application, applicant Lake was employed by opposer, and she represented to consumers that the BONNIE CASHIN mark identified opposer as the source of the goods and services offered at its website. She testified on deposition that her first step toward launching the brand was the filing of the involved application.

In sum, the Board found no evidence that applicant has a bona fide intent to use the mark BONNIE CASHIN on the identified goods when she filed her application.

Therefore the Board sustained the opposition.

Read comments and post your comment here.

TTABlog comment: According to Wikipedia, Bonnie Cashin was "an influential American designer and is considered one of the pioneering designers of American sportswear." Stephanie Lake's book about Bonnie Cashin was published in 2016.

Text Copyright John L. Welch 2016.

TTABlog Road Trip: AIPLA Annual Meeting, Washington, D.C., October 27th

Yours truly, the TTABlogger, will be heading down to our Nation's Capital for the 2016 Annual Meeting of the American Intellectual Property Law Association (AIPLA) in Washington, D.C. (Register here). The Trademark Track will be presented on Thursday, October 27th. My topic? Wait for it .............. TTAB Developments! (Brochure here).

The Trademark Track will also include a review of the new TTAB Rules of Practice (which will go into effect on January 17, 2017), a panel discussion on disparaging, immoral, and scandalous trademarks (how timely!), and a discussion of USPTO Examination and TTAB Updates (by Commissioner Denison, Deputy Commissioner Marsh, and TTAB Chief Judge Rogers).

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

TTAB Test: Is CLASSIC AUTO ROD (Stylized) Merely Descriptive of Auto Dealerships?

The USPTO rejected Daniel Rechtfertig's application to register the mark shown below, for "automobile dealerships," find the mark merely descriptive under Section 2(e)(1). Applicant described the mark as "the words 'Classic Auto Rod' in a chrome-like script having a three-dimensional appearance, with the words stacked to form the word 'CAR' when read vertically." He contended that the combination of the words appearing in an "unexpected fashion," coupled with the visual elements of the design, rendered the mark at most suggestive of the services. How do you think this came out? In re Daniel Rechtfertig, Serial No. 86554004 (October 13, 2016) [not precedential].

Examining Attorney Ahsen Kahn provided various dictionary definitions and website pages demonstrating that each of the constituent words has descriptive significance in connection with automobile dealerships. Moreover, CLASSIC ROD and AUTO ROD are used descriptively to refer to a type of automobile.

The Board found that the combination CLASSIC AUTO ROD "immediately conveys that Applicant's automobile dealerships feature older hotrods." Nothing in the combination is incongruous or would require further information in order for the descriptive significance to be apparent to consumers.

Turning to the stylization of the mark, the determination of whether the display creates a separate and distinctive impression is a subjective one based on the first impression of the viewer. The Board found that neither the word arrangement nor the stylization of the lettering creates a separate and inherently distinctive impression. Despite applicant's contention, the Board did not find the word "CAR" to be readily discernible, since the letter "A" in AUTO appears to be stacked under the letter "L" in CLASSIC. In any event, the word CAR would merely describe applicant's services.

The script lettering, which applicant describes as "chrome-like," is not so striking that it creates a distinctive commercial impression apart from the wording.

The Board therefore concluded that the applied-for mark merely describes the services, and it affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.

Precedential No. 31: Family of Marks May Have Different Owners if There is Unity of Control, Says TTAB

The Board dismissed this consolidated opposition to registration of the marks MILEWISE and ALLSTATE MILEWISE for insurance services,based on claims of likelihood of confusion with opposers' family of WISE-formative marks. Applicant Allstate moved to dismiss under Rule 12(b)(6) for failure to state a claim, asserting that the pleaded marks are not owned by a single entity and therefore cannot, as a matter of law, comprise a family of marks. Allstate further asserted that Opposers failed to allege that the common characteristic of the alleged family of marks is distinctive and that the marks have been used and promoted in such a way that consumers would associate the common characteristic "WISE" with a single source. The Board ruled that the marks in a family of marks may be owned by different entities if there is "unity of control," but because opposers failed to plead unity of control the Board dismissed the opposition. Wise F&I, LLC; Financial Gap, Administrator LLC; Vehicle Service Administrator LLC; and Administration America LLC v. Allstate Insurance Company, 120 USPQ2d 1103 (TTAB 2016) [precedential].

Family of Marks/Unit of Control: Relying on the Wella decisions, opposers maintained that the family of marks doctrine requires only that the shared characteristic of the marks be recognized as indicative of a common origin of the goods or services, and that the common origin need not be a single entity. In Wella, the CAFC vacated a TTAB decision that affirmed a refusal to register Wella AG's mark WELLASTRATE in view of several Wella-formative marks owned by its U.S. subsidiary, pointing out that "[i]f the Wella family of marks connotes to consumers only a single source for all Wella products, namely the Wella organization, it is difficult to see how Wella A.G.'s use of the mark 'WELLASTRATE' would cause confusion as to source because of Wella U.S.'s use of the other Wella marks." On remand, the Board observed that "[c]learly, the [Federal Circuit] views the concept of 'source' as encompassing more than 'legal entity.'"

The Board therefore agreed with opposers here that "in the context of the 'family of marks' inquiry, the concept of common origin ('source') may encompass more than one entity."

In view of the [TTAB's] Wella I and Wella II decisions, it logically follows that related entities can rely on a family of marks as a basis for a Section 2(d) claim – notwithstanding the fact that the pleaded marks are not all owned by a single entity – if the complaint contains sufficient factual allegations that they are related, and that there is unity of control over the pleaded marks such that the marks are indicative of a single source, and all of the other elements for pleading a family of marks are satisfied.

With regard to "unity of control," the TTAB stated in Wella II that:

Besides the existence of a legal relationship, there must also be a unity of control over the use of the trademarks. "Control" and "source" are inextricably linked. If, notwithstanding the legal relationship between entities, each entity exclusively controls the nature and quality of the goods to which it applies one or more of the various "WELLA" trademarks, the two entities are in fact separate sources.

Here, opposers pleaded only that three of the opposing entities are subsidiaries of Opposer Wise F&I. They failed to plead that use of the marks and control of the quality of the services "are controlled by one of the Opposers such that the marks identify a single source for all of the services identified by the respective marks." In Wella II, applicant Wella AG owned substantially all of the stock of Wells (USA), and thus "control[led] the activities and operations of Wella U.S., including the selection, adoption and use of the trademarks."

The Board ruled that an allegation of "unity of control" is a necessary element for claiming a family of marks for purposes of Section 2(d) when the marks are owned by separate legal entities. Opposers failed to make such an allegation and therefore failed to state a claim under Section 2(d) based upon ownership of a family of marks.

Pleading a Family of Marks: Aside from the ownership issue, opposers failed to allege that they have used the pleaded marks in such a way as to establish a family of marks.

To assert ownership of a family of marks a plaintiff must allege, and ultimately prove: (1) prior use of marks sharing a recognizable common characteristic; (2) that the common characteristic is distinctive (i.e., not descriptive or highly suggestive or so commonly used in the trade that it cannot function as the distinguishing feature of any party’s mark); and (3) that prior to the defendant’s first use (or constructive first use) of its involved mark, plaintiff’s marks have been used and advertised in promotional material or in everyday sales activities in such a manner as to create common exposure and thereafter recognition among the purchasing public such that the common characteristic is itself indicative of a common origin of the goods or services.

Opposers failed to plead that the common element WISE is distinctive and failed to plead that they have used and advertised the marks in such a manner that the public associates not only the individual marks, but also the common characteristic of the alleged family, with a single source. For that reason also, the notices of opposition fail to state a claim upon which relief can be granted.

Leave to Amend: The Board allowed opposers 30 days within which to submit amended notices of opposition (or a single consolidated notice).

Read comments and post your comment here.

TTABlog comment: IP ownership maven Pamela Chestek summarizes the decision here at here Property, Intangible blog.

Text Copyright John L. Welch 2016.

TTAB Sustains Opposition to PROGENEALOGISTS for Genealogical Services, Finding Acquired Distinctiveness Lacking

The Board sustained pro se opposer Jeanette K. Daniels's opposition to registration of the mark PROGENEALOGISTS under Section 2(f), finding that the mark lacked acquired distinctiveness. Because the mark is "highly descriptive," applicant's fifteen years of use and its advertising and sales efforts were insufficient to establish distinctiveness. Jeanette K. Daniels v. TGN Services, LLC Opposition No. 91204462 (October 11, 2016) [not precedential].

The Board had little doubt that PROGENEALOGISTS is "highly descriptive." The word "pro" implies that the services are rendered by professionals and a "genealogist" is a person who traces or studies the descent of persons or families. In fact, applicant acknowledged that it adopted the mark largely because of its descriptiveness.

Of course, highly descriptive terms are less likely to be perceived as trademarks and more likely to be useful to competitors in describing their services. More substantial evidence of acquired distinctiveness will typically be required to prove that such a term has source-identifying significance.

Applicant submitted evidence that its business has enjoyed strong growth since 1999. It expended substantial funds developing its website, and expends thousands of dollars each month for online advertising. Since 2010, sales have nearly quintupled. Sales, advertising, and website view figures are "significant." Applicant claims more than 15 years of substantially exclusive use. It did not submit consumers studies or surveys directly evidencing acquired distinctiveness.

The Board pointed out that applicant uses the proposed mark in a descriptive matter. For example, its website states: "ProGenealogists(R) is a consortium of professional genealogists who specialize in genealogical, forensic, and family history research."

The Board noted that, although applicant's growth in sales, advertising, and website views are impressive, raw numbers do not necessarily mean that consumers have come to recognize its proposed mark as a source indicator.

The Board concluded that, in view of the high degree of descriptiveness of applicant's proposed mark, its fifteen years of use and its advertising and sales figures are insufficient to establish distinctiveness.

Moreover, the evidence showed that the terms "pro" and "genealogist" are ubiquitous in applicant's field. An application for registration under Section 2(f) cannot success if the use of the term is not substantially exclusive.

Applicant's claim that others intentionally copied its mark was brushed aside by the Board, since copying is evidence of acquired distinctiveness only if the intent was to confuse consumers and pass off the services. Here, the alleged copyists were merely using common descriptive terms in their descriptive senses.

According to the Federal Circuit, “merchants act at their peril in attempting, by advertising, to convert common descriptive names, which belong to the public, to their own exclusive use.” In re Pennington Seed, Inc., 466 F.3d 1053, 80 USPQ2d 1758, 1762 (Fed. Cir. 2006) (generic use). To allow registration of Applicant’s proposed mark would inhibit legitimate competition by in effect granting a monopoly to what is essentially very common terminology in the genealogy trade, which Applicant’s competitors have an equal right to use. Cf. In re Mars, Inc., 105 USPQ2d 1859, 1866 (TTAB 2013).

And so the Board sustained the opposition.

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TTABlog comment: Once a mark is tagged with the "highly descriptive" label, the ballgame is over.

Text Copyright John L. Welch 2016.

TTAB Test: Is MERSIN (Turkey) Primarily Merely Geographically Descriptive of Cheese?

The USPTO refused to register the mark MERSIN, in the design form shown below, for cheese, garnish, and pastry products, without a disclaimer of the word MERSIN, on the ground that Mersin is primarily merely geographically descriptive of the goods under Section 2(e)(2). Applicant Gungor relied on In re the Newbridge Cutlery Co. [TTABlogged here] in arguing that Mersin, Turkey is so obscure and remote that its primary significance to US consumers is not geographic. How do you think this came out? In re Yahya Kemal Gungor, Serial No. 86263642 (October 11, 2016) [not precedential].

Applicant submitted four maps of Turkey that did not identify Mersin, but Examining Attorney Seth Dennis proffered 18 maps, 17 of which identified Mersin. Gungor acknowledged that the population of Mersin is 940,000 (far more than Newbridge, Ireland's 20,000). Moreover, unlike the word Newbridge, Mersin has no other meaning. "Thus, with a sizeable population, and no alternative meaning, we find that the primary significance of Mersin is a generally known geographic location."

As to whether consumers are likely to make a goods/place association, Applicant stated that the goods will be manufactured, packaged, shipped from, and sold in Mersin, as well as other cities within Turkey. That was sufficient to show a nexus with Mersin, and thus a goods/place association may be presumed. In addition, the Examining Attorney provided evidence that Mersin is known for some of the goods identified in the application.

Applicant argued that the very small subgroup of Arab Americans constitutes about 1.2 million people, and those of Turkish ancestry comprise another half million. The Board found those numbers not insubstantial. In any event, the consumers of applicant's goods are not limited to any particular ethnic or national origin and include anyone interested in foods of this type. Indeed, Internet evidence submitted by the Examining Attorney demonstrated that consumers have associated applicant's food products with Turkey and with Mersin in particular.

Finally, applicant pointed to third-party registration for marks containing the names of Turkish cities, but the Board noted that all but two were registered under Section 2(f), indicating that those terms have been recognized as primarily merely geographically descriptive. Of course, the Board is not bound by these registrations anyway.

And so the Board affirmed the refusal based on applicant's failure to disclaim MERSIN. Applicant was allowed two months to submit an appropriate disclaimer.

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TTABlog comment:

Text Copyright John L. Welch 2016.

CAFC Affirms TTAB: 660-Word Proposed Mark Fails to Function As a Trademark

The CAFC upheld the TTAB's affirmance [TTABlogged here] of a refusal to register the mark shown below, comprising about 600 words, for, inter alia, cartoon prints, paper dolls, and coloring books, finding that substantial evidence supported the Board's finding that the proposed mark merely conveys information and does not function as a trademark. In re Prema Jyothi Light, Appeal No. 2014-1597 (October 7, 2016) [not precedential].

(click on photo for larger picture)
The court observed that, although there is no limit on the number of words permitted in a trademark, the Board was correct in finding that the exhaustive list of characters, in columnar form, weighs in favor of finding no registrable trademark.

Applicant Light argued that her purported mark has acquired distinctiveness, but the court agreed with the TTAB: absent "evidence that the matter has been promoted as a trademark, we cannot find that the applied-for mark has acquired distinctiveness regardless of the time the applied-for mark has been used in this manner."

The court also upheld the Board's ruling that applicant's proposed amendments to her purported mark constituted material alterations of her mark and were therefore unacceptable.

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TTABlog comment: The examining attorney had suggested that applicant amend the application to seek registration of just the words SHIMMERING BALLERINAS & DANCERS, but applicant did not do so.

Text Copyright John L. Welch 2016.

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

By my estimation, somewhere around 80-85% of all Section 2(e)(1) mere descriptiveness refusals that reach the TTAB are affirmed on appeal. Well, here are four appeals that were recently decided. One refusal was reversed. Which one, pray tell? [Answer will be found in the first comment].


In re NTVB Media, Serial No. 86174087 (October 5, 2016) [not precedential]. [Section 2(e)(1) mere descriptiveness refusal of TV WEEKLY, in the stylized form shown below, for "Publications, namely, printed magazines, newspaper inserts, television guides, featuring information pertaining to media, television, movies, stars, trivia, gossip,media programming guides with information relating to video and audio content in television, movies,the Internet, web podcasts and radio programming, games, and puzzles” and the services of “Online publications, namely, online articles, guides, magazines relating to media, television, movies, stars,trivia, games, puzzles, gossip, media programming guides with information relating to video and audio content in television, the Internet, web podcasts and radio programming"].

In re Marabo North America Holdings Ltd., Serial No. 86464788 (October 5, 2016) [not precedential]. [Section 2(e)(1) mere descriptiveness refusal of JOINT'NMUSCLE for "Topical analgesic creams"].

Illustration by Bruce Blaus
In re ServiceNow, Inc., Serial No. No. 86474833 (September 28 2016) [not precedential]. [Section 2(e)(1) mere descriptiveness refusal of CREATORCON for "Arranging and conducting business conferences for software development"].

In re British Customs, LLC, Serial No. 86154804 (September 21, 2016) [not precedential]. [Section 2(e)(1) mere descriptiveness refusal of BRITISH CUSTOMS for "motorcycle parts, components and accessories, namely, wheels, rearview mirrors, engine rebuild kits sold as a unit, hub caps, brake cylinders, wheel bearing kits, fork crown covers, fork joints, gas caps, turn signals, sprockets, handlebar grips, clutch springs and fenders" and for "on-line wholesale and retail store services featuring motorcycle parts and accessories”].

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TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.

TTAB Test: Is TRINITY for Handbags Confusable with TRINITY for Jewelry?

Cartier International opposed an application to register the mark TRINITY for leather handbags, alleging a likelihood of confusion with the identical mark registered for jewelry. The marks are identical, but what about goods? Are they related? How do you think this came out? Cartier International A.G. v. Lance Coachman, Opposition No. 91209815 (October 5, 2016).

Of course, since the marks are identical, a lesser degree of similarity between the goods is necessary to support a finding of likely confusion. Applicant Coachman contended that Cartier's mark is descriptive of its jewelry, which is commonly composed of three rings of different metals, differing in color and/or finish. The Board pointed out that the validity of opposer's registration cannot be attacked absent a counterclaim, so it considered applicant's argument as one directed to the weakness of the registered mark.

The Board found that, although Cartier emphasizes the three bands of different gold in its advertising, TRINITY is "at worst suggestive" of the goods. With regard to market strength, the Board found TRINITY to be a strong mark for jewelry, based on "not insubstantial" sales and advertising expenditures, and on unsolicited media references to Cartier's iconic ring.

Applicant pointed to a third-party registration and use of TRINITY for handbags, but it provided only three uses and one registration, clearly not enough to show that third parties are "conditioned" to distinguish between TRINITY-formative marks.

To establish the relatedness of handbags and jewelry, Cartier submitted excerpts from 14 websites at which third parties sell both jewelry and handbags under the same mark: e.g., CHANEL, COACH, and GUCCI. Applicant countered with excerpts from 14 websites at which jewelry but not handbags, or vice versa, were offered for sale under the same mark. [Huh? - ed.]. The Board, however, pointed out that there is no requirement that all, or even a majority, of the sources of one product must also be the sources of the other.

Applicant argued that the relevant purchasers of the involved goods would exercise a high degree of care in their purchasing decisions. However, there are no limitations in the opposed application or pleaded registration, and so the Board must consider them to encompass inexpensive jewelry and handbags. The Board concluded that this factor was neutral.

Finally, applicant pointed to the lack of evidence of actual confusion, but the Board found that there had not been a reasonable opportunity for confusion to have occurred. Applicant spent only $6,000 in promoting and advertising his handbags, and most of that was in the form of giveaways. He has not promoted the handbags at trade show, has had minimal media exposure, and sold his handbags only to individuals and not retailers. His sales have been de minimis.

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

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TTABlog comment: The smaller they are, the harder they fall. Are all fashion accessories related for Section 2(d) purposes? Handbags and umbrellas? Jewelry and clothing? Watches and nylons?

Text Copyright John L. Welch 2016.

Precedential No. 33: "I ♥ DC" Fails to Function as a Trademark for Clothing, Says TTAB

The Board sustained an opposition to registration of the mark "I ♥ DC" in the form shown first below, for various clothing items, and ordered cancellation of a registration (on the Supplemental Register) for the same mark in the form shown second below, for backpacks, clothing, and stuffed toys, on the ground that the marks fail to function as trademarks. D.C. One Wholesaler, Inc. v. Jonathan E. Chien, 120 USPQ2d 1710 (TTAB 2016) [precedential].

Standing: The parties are competitors in the business of selling "D.C. souvenirs" at wholesale, to retailers such as gift shops and street vendors. Plaintiff's principal testified that, because of certain advertising by defendant, tourists fear that its goods are illegal and are afraid to buy from plaintiff. That was sufficient to establish standing.

Failure to Function: Plaintiff argued that the phrase "I ♥ DC" is a common slogan used in an informational sense, and that consumers are accustomed to seeing the phrase on goods from multiple sources.

The evidence demonstrated that apparel bearing the phrase "I ♥ DC" is available from many sources. Other merchandise prominently displaying the phrase, such as mugs, teddy bears, aprons, etc., is also common. Plaintiff has offered such goods since at least 2005. A vendor testified that he saw similar merchandise since 2000 or 2001, and that this type of product "was probably one of our most popular items from the very beginning." He has purchased these goods from several different wholesalers.

Plaintiff also showed that designs consisting of "I ♥ " followed by other terms (RUGBY, KETCHUP, JESUS, etc.) are common in the souvenir industry. Plaintiff's expert opined that customers and tourists purchase the items because they like the design or the product itself and do not care where they originated.

Defendant testified that he did not create the design and that the logo "has been out since the '60s for anyone to use." "I ♥ DC" means "I love D.C., the District of Columbia." [Really? ed.]. Defendant acknowledged that the design is used by others. Some of defendant's products display the mark only on the hangtag and not on the product itself.

The Board concluded that the mark would not be perceived as an indicator of source for the goods on which it appears.

The record before us indicates that I ♥ DC has been widely used, over a long period of time and by a large number of merchandisers, as an expression of enthusiasm, affection or affiliation with respect to the city of Washington, D.C. This significance of the expression is reinforced by the fact that similar expressions in the form “I ♥ __” have also been widely used to express such enthusiasms with respect to other places and things.

The Board noted that the souvenir marketplace is "awash" in products that display ""I ♥ DC"as a prominent ornamental feature. Consumers purchase the product because of this ornamentation, which appears as informational matter not associated with a particular source.

Defendant's use of the mark on hangtags, in a non-ornamental manner that is conventional for the display of trademarks, does not mandate a different outcome. The question is still whether the phrase functions as a trademark. Because of the informational nature and the ubiquity of the phrase, it does not convey source even when used on a hangtag.

And so the Board concluded that the two logos shown above do not function as trademarks for defendant's goods, and it sustained the opposition and granted the petition for cancellation.

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TTABlog comment: I ♥ TTABlog merchandise will be coming soon to your local yard sale.

Text Copyright John L. Welch 2016.