Wednesday, November 30, 2016

TTAB Posts December 2016 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled four (4) oral hearings for the month of December 2016. 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.


December 7, 2016 - 11 AM: Executive Coach Builders, Inc. v. SPV Coach Company, Inc., Opposition No. 91212312 [Opposition to ARMBRUSTER STAGEWAY for "vehicles, namely, customized limousines,"on the ground of likely confusion with the allegedly prior mark ARMBRUSTER/STAGEWAY  for limousines].


December 8, 2016 - 11 AM: Briggs & Stratton Corporation and Kohler Co. v. Honda Giken Kogyo Kabushiki Kaisha (Honda Motor Co., Ltd.), Opposition No. 91200832 [Opposition to registration of the product configuration shown below for "engines for use in construction, maintenance and power equipment," on the grounds of functionality, genericness, lack of acquired distinctiveness, and abandonment].


December 8, 2016 - 2 PM: Beau L Tardy v. Wild Brain Entertainment, Inc., Opposition No. 91205896 [Opposition to registration of DIZZY for video game software, video and audit recordings, on the ground of lack of bona fide intent].


December 13, 2016 - 2 PM: In re Nomi Network, Inc., Serial No. 85677459 [Section 2(d) refusal of NOMI FOR A BETTER LIFE for "On-line retail store services featuring clothing items, excluding footwear, that are specifically identified as made by survivors of sex slavery and human trafficking and sold to consumers who wish to support victims of sex slavery and human trafficking," in view of the registered mark NOMI for "footwear"].


Read comments and post your comment here.

TTABlog note: Any predictions?

Text Copyright John L. Welch 2016.

Tuesday, November 29, 2016

Precedential No. 34: Divided TTAB Panel Affirms 2(e)(4) Refusal of Rare Surname ADLON

A divided TTAB panel affirmed a Section 2(e)(4) refusal of the mark ADLON for various goods and services, including "hospitality industry services," finding it to be primarily merely a surname.  Although ADLON is a rare surname, the panel majority observed that it has no meaning or significance other than as a surname. Judge Quinn dissented, contending that ADLON is an extremely rare surname that consumers would perceive as a coined term having no meaning. In re Adlon Brand GmbH & Co. KG c/o FUNDUS FONDS-Verwaltungen GmbH, 120 USPQ2d 1717 (TTAB 2016) [precedential].

Guess where?

The panel majority noted that practitioners and examining attorneys often interpret and apply the Benthin factors with "a rigidity that is not warranted." Examining Attorney N. Gretchen Ulrich submitted website evidence demonstrating that ADLON is, in fact, a surname. So called "negative dictionary" evidence [NB: a "negative dictionary is not one that is printed in white type on a black background - ed.] showed that ADLON has no recognized meaning, nor is it the name of a geographic location. Applicant admitted the word has no meaning in a foreign language.

The evidence indicated that there are approximately 75 individuals in the United States having the surname ADLON. One is an actress named Pamela Adlon, who has "achieved a substantial degree of public recognition for her performances in live-action television roles" and as a voice actress, most famously in "King of the Hill," for which she won an Emmy as the character Bobby Hill. [Never heard of her - ed.].  Evidence from the IMDb mentions several other entertainers and artists with the surname ADLON. [Never heard of them either - ed.]

Guess who?

Applicant argued that the "rareness" of the surname ADLON should be dispositive in this case, since prior cases involving fewer than 100 occurrences of a surname resulted in reversal of the surname refusal. The Board, however, pointed out that a "strictly numerical approach to a surname analysis has been squarely rejected." See In re Etablissmements Darty et Fils, 225 USPQ 652, 653 (Fed. Cir. 1985). The Board again observed that "even a rare surname is unregistrable if its primary significance to purchasers is a surname." In re Eximius Coffee, LLC, 102 USPQ2d 1276, 1281 (TTAB 2016).

Applicant contended that consumers would perceive the mark as indicating applicant or its Hotel Adlon, and the source of its goods and services. According to Wikipedia, the original Hotel Adlon was one of the famous hotels in Europe, and served as the social center of Berlin throughout the Nazi period. It was largely destroyed in 1945, but has been rebuilt and now operates as the Hotel Adlon Kempinski Berlin. The hotel has been the subject of several films and documentaries.

The  panel majority found this evidence to be problematical since the hotel was named ADLON because it was the surname of its founder, and was subsequently run by family members. Thus, according to the majority, the evidence shows ADLON "used in a context that suggests that the term is a surname." The panel majority found no "objective countervailing evidence" that would rebut the surname meaning of ADLON.

Examining the entire record to determine the primary significance of the term ADLON, we find that the Examining Attorney has demonstrated that ADLON is a surname that is in use in the United States, that the public has been exposed to and discussed ADLON as a surname, and that the term ADLON has no other “ordinary language meaning.” We further find that Applicant has failed to demonstrate that the term has another significance that is its primary significance as perceived by the public. We find, therefore, that ADLON is primarily merely a surname and that the refusal to register the mark must be affirmed.

Judge Quinn, in dissent, opined that the "extreme rareness of a surname may provide some insight into the perception of it by consumers." The legislative history of Section 2(e)(4) corroborates the materiality of surname rareness.

Here, the evidence revealed 75 persons with the surname ADLON. Social media evidence uncovered a mere 8 examples of ADLON as a surname. The evidence regarding media attention given to a single actress best known for her performance as the voice of an animated character falls short of proving that ADLON is primarily a merely a surname. The other individuals with the surname ADLON do not appear to enjoy any particular notoriety.

Moreover, there are no contextual clues that identify ADLON as a surname. In contrast, for example, in Darty, the term DARTY was used in a company name, Darty et Fils, that reveals its surname significance. In Eximius Coffee, the surname of those associated with applicant was ALDECOA and the product was promoted as a "premium family coffee."

Based on the record, I find that consumers would not think of the extremely rare surname ADLON primarily merely as a surname because they are highly unlikely to have encountered it as such, but rather would regard the term as being a coined term or unknown term with an unknown meaning.

With regard to the Hotel Adlon, Judge Quinn found it unlikely that consumers in the United States would know of a single hotel in Berlin, Germany [not Berlin, Connecticut - ed.], and less likely to know that Lorenzo Adler was the hotel's founder. In short, this portion of the record "plays a minimal role in the surname analysis."

In sum, Judge Quinn would reverse the refusal to register, giving the applicant the benefit of any doubt arising from the record evidence.

Read comments and post your comment here.

TTABlog comment: I agree with Judge Quinn. How about you?

This is the third precedential decision in the last two months in which the Board has followed a revised approach to Section 2(e)(4), putting aside the more mechanical view of Benthin and focusing more broadly on consumer perception. The result has been a raising of the bar.

Text Copyright John L. Welch 2016.

Monday, November 28, 2016

TTAB Test: Which of These Four Section 2(d) Refusals Were Reversed?

Supposedly one can predict the outcome of a Section 2(d) case 95% of the time just by looking at the marks and the goods. In two of these four recent appeals, the Board reversed the refusals, finding no likelihood of confusion. Let's see how you do in figuring out which was which. [Answer will be found in first comment].


In re Lightning Strike Distributing, LLC, Serial No. 86855380 (November 16, 2016) [not precedential]. [Section 2(d) refusal of JED’S JERKY for "jerky" [JERKY disclaimed], in view of the registered mark JED'S for "barbecue sauce"].


In re Due South Brewing Co., Serial No. 86183992 (November 23, 2016) [not precedential]. [Section 2(d) refusal of DUE SOUTH BREWING CO. for "bar services" [BREWING CO. disclaimed], in view of the registered mark DUE SOUTH PIT COOKED BARBECUE & Design for "restaurant and catering services" [PIT COOKED BARBECUE disclaimed]].


In re Scram Software Pty Ltd., Serial No. 86658580 (November 23, 2016) [not precedential]. [Section 2(d) refusal of CLOUD SHERIFF for "Computer software for encrypting ... documents" and for "development, design, implementation, testing, analysis, and consulting services in the field of ... encryption" [CLOUD disclaimed], in view of the registered mark HISOFTWARE SECURITY SHERIFF for "Computer software, namely, downloadable software for use in ... encryption of documents," and for "hosting software for use in ... encryption of documents"[SECURITY disclaimed]].


In re Denver Beer Company, LLC, Serial No. 86515920 (November 23, 2016) [not precedential]. [Section 2(d) refusal of PRINCESS YUM YUM RASPBERRY ALE for "beer" [RASPBERRY ALE disclaimed], in view of the registered mark YUMYUM for "beer"].



Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.

Wednesday, November 23, 2016

TTAB Test: Is THE SALAD STATION Merely Descriptive of Restaurant Services?

The USPTO refused registration of the mark THE SALAD STATION, in standard character and design forms, finding the term merely descriptive of restaurant services. Applicant appealed, asserting that the mark would describe only the salad bar within the restaurant, not the restaurant itself. Applicant also pointed to third-party registrations for restaurant marks containing the word "station." How do you think this came out? In re Salad Town, LLC, Serial Nos. 86414039 and 86414055 (November 21, 2016) [not precedential].


The Board pointed out that a mark is merely descriptive even if it describes only a single feature, function, or characteristic of the services. Examining Attorney Colleen Mulcrone submitted screenshots of thirteen websites demonstrating that the term "salad station" is commonly used to describe a feature of a restaurant. "Consumers are accustomed to seeing the term “salad station” used to describe a feature of a restaurant that provides a selection of various salad ingredients and toppings, allowing customers to construct their own salad, i.e., a salad bar."

Applicant's website refers to a "salad bar" as a feature of its restaurants. "Therefore, the wording 'The Salad Station' is merely descriptive of Applicant’s restaurant services because, at the very least, it describes a significant feature of Applicant’s restaurant services, even if Applicant also offers soups, spuds and beverages in addition to a salad station."

Applicant argue that THE SALAD STATION is suggestive because "the consumer would see that THE SALAD STATION is actually the name of the restaurant itself. The consumer then needs to use a reasoning process to determine that THE SALAD STATION is actually a full-service restaurant that offers more than a salad bar." The Board, however, concluded the consumers would immediately understand that "salad station" refers to a feature of the restaurant.

Applicant submitted seven third-party registrations for marks containing the word STATION, for restaurant services or coffee bars. However, in three the term "coffee station" was disclaimed. As to the other four (including TACO STATION and CHIANTI STATION), there was no indication that the file record included the type of evidence provided here. Moreover, each case must be decided on its own factual record, and the Board is not bound by prior decisions involving different records.

The Board therefore affirmed the refusal of the standard character mark, and affirmed the disclaimer requirement for the design mark.

Read comments and post your comment here.

TTABlog comment: Well, what do you think?

Text Copyright John L. Welch 2016.

Tuesday, November 22, 2016

Noting Circuit Split, INTA Files Amicus Brief in Support of FLANAX Petition for Certiorari

The International Trademark Association (INTA) has filed an Amicus Brief (here) in support of the petition for writ of certiorari seeking Supreme Court review of the Fourth Circuit's FLANAX decision, Belmora LLC v Bayer Consumer Care AG, et al., 819 F.3d 697 (4th Cir. 2016) (4th Cir. 2016). The appellate court vacated the ruling of the U.S. District Court for the Eastern District of Virginia (here) dismissing Bayer's claims on the ground that it lacked standing, and it remanded the case to the district court for further proceedings.


According to the INTA brief:
The Court should grant Certiorari because this case presents a timely opportunity to provide clarity and guidance on an issue of great importance to trademark owners, namely: can the owner of a foreign trademark establish standing to pursue claims under Sections 14(3) or 43(a) of the Lanham Act against the owner of the same mark in the United States, and if so, under what circumstances may a foreign trademark owner establish such standing?

The INTA brief points out that the circuit courts of appeals have rendered inconsistent and conflicting decisions on the issue. The Ninth Circuit in Grupo Gigante held that a famous mark exception to the territoriality principle exists. However, the Federal Circuit (in Person's) and the Second Circuit (in Punchgini) have invoked the territoriality principle to reject claims by foreign trademark owners. The Fourth Circuit’s FLANAX decision represents a third approach to trademark territoriality in ruling that Lanham Act Sections 14(3) and 43(a) do not require that the plaintiff own a U.S. trademark as a precondition to asserting a claim. Instead, the Fourth Circuit, relying on Lexmark, focused on the defendant’s conduct, asking whether the defendant has caused injury to the plaintiff and ignoring the territoriality principle.

Read comments and post your comment here.

TTABlog comment: How do you think this will come out?

Text Copyright John L. Welch 2016.

Monday, November 21, 2016

LEFTY’S Restaurant Strikes Out In TTAB Section 2(d) Appeal

The Board affirmed a Section 2(d) refusal to register the mark LEFTY’S for “restaurant and bar services,” finding it likely to cause confusion with the identical mark registered for “bar and restaurant services.” Applicant Bovis Foods pointed to its use of the LEFTY’S mark for restaurant and bar services for “nearly 60 years” without confusion, and to its registrations for LEFTY O’DOUL’S for restaurant and bar services and for hot dogs, and mustard, and LEFTY's for non-alcoholic cocktail mixes, and energy drinks. The Board let those wild pitches go by. In re Bovis Foods, LLC., Serial No. 86286415 (November 18, 2016) [not precedential].


The Board pointed out that priority is not an issue in an ex parte appeal of a Section 2(d) refusal. Applicant could have petitioned to cancel the cited registration, or could have sought a concurrent use registration, but it did not do so.

Co-existence of the involved marks is relevant only if the mark were in use in the same channels of trade, and if there have been meaningful opportunities for confusion to occur.. Here, registrant’s restaurant is presumably in Maryland while applicant’s is in San Francisco. There was no evidence that customers have traveled from Maryland to San Francisco, or vice versa. [Have the Orioles never played the Giants? - ed.].

Even assuming Applicant’s restaurant is known to those who have not traveled to San Francisco or eaten there, due to its length of use for restaurant services and certain goods and its connection with the baseball player Lefty O’Doul, the fact that Applicant is not aware of actual confusion does not mean there has not been such confusion, nor does it foreclose the likelihood of confusion. The lack of evidence of actual confusion carries little weight in the ex parte context. J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965). The issue before the Board is, of course, likelihood of confusion, not actual confusion. Moreover, the registrant has no opportunity to be heard on the issue of actual confusion in an ex parte appeal.



With regard to the crowded-field argument, “[e]ven if there were sufficient evidence to find the field of restaurants that incorporate the term LEFTY’S in their marks crowded, and that the use and registration of LEFTY’S for goods adds to the crowded field, there must be some distinguishing element in the applied-for and registered marks or the goods and services by which consumers may distinguish them. Here, everything is identical.”

The Board therefore affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: As the saying goes, two Lefty's don't make a right. What's next? An application for a concurrent use registration?

Text Copyright John L. Welch 2016.

Thursday, November 17, 2016

TTAB Test: Are HOLAIRA and ALAIR Confusable for Lung-Related Medical Devices?

Boston Scientific opposed an application to register the mark HOLAIRA for "medical devices for treating obstructive lung diseases; medical apparatus and instruments for treating obstructive lung diseases," claiming a likelihood of confusion with the registered mark ALAIR for "medical therapeutic devices for use in the treatment of pulmonary diseases, namely, catheters, probes, generators, bronchoscopes, and electrodes." The goods are identical or overlapping, a factor that "weighs heavily" in favor of opposer. But what about the marks? How do you think this came out? Boston Scientific Corp. and Asthmatx, Inc. v. Holaira, Inc., Opposition No. 91215699 (October 6, 2016) [not precedential].


The Board asserted that "[t]he only difference between the marks is the initial syllable of each, and the addition of an “a” at the end of Applicant’s mark." [Those are pretty big differences, aren't they? - ed.]. It found that the marks have a "strong visual similarity." [Really? - ed.]

Although there is no correct pronunciation of a mark that is not a recognized word, the Board found that "consumers are likely to vocalize the words in a similar manner, given that the stressed, middle portion in each mark is identical." [So there is a correct pronunciation? - ed.].

Moreover, the marks evoke "highly similar connotations:" they suggest "a sense of one's 'breathing in all the air' or getting 'air to the whole lung.'" According to the Board, "[t]he word “all” (evoked by the 'al' of Opposers’ mark) and the word 'whole' (evoked by the letter string 'hol' in Applicant's mark) are established synonyms." And the Board concluded that we find that the marks create "similar overall commercial impressions when used on goods used to treat pulmonary or respiratory disease."

And so, balancing the relevant du Pont factors, the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

TTABlog comment: How did you do? I think this case was a lot closer than the Board made it seem. Maybe the Board got it wrong.

Text Copyright John L. Welch 2016.

Wednesday, November 16, 2016

CAFC Reverses TTAB: In-State Sale of Two Hats to Out-of-State Resident Constitutes Use of Mark in Commerce

The CAFC reversed the TTAB's decision in adidas AG v. Christian Faith Fellowship Church, Cancellation No. 92053314 (September 14, 2015) [not precedential], ruling that the sale of two hats at the Church's bookstore to an out-of-state resident constituted use in commerce of applicant's mark ADD A ZERO. The Board had granted the petition of adidas AG for cancellation of two registrations owned by the Christian Faith Fellowship Church for the mark ADD A ZERO, in standard character and design form, for "clothing, namely shirts and caps," finding that these sales were de minimis and insufficient to show use that affects interstate commerce. Christian Faith Fellowship Church v. adidas AG, 120 USPQ2d 1640 (Fed. Cir. 2016) [precedential].


Section 1(a) of the Lanham Act provides that "[t]he owner of a trademark used in commerce may request registration of its trademark." "Commerce" is defined as "all commerce which may lawfully be regulated by Congress." To register a mark based on use in commerce, "one must sell or transport goods bearing the mark such that the sale or transport would be subject to Congress’s power under the Commerce Clause, which includes its power to regulate interstate commerce."

In this case, the question was whether the Church made a sale of goods bearing the mark, in commerce regulable by Congress, before it applied to register its marks. The TTAB's interpretation of the Lanham Act and the "legal tests it applies in measuring registrability" are subject to de novo review by the CAFC.

Congress has broad power under the Commerce Clause. The Supreme Court's has ruled that Congress may regulate activities that have a "substantial effect" on interstate commerce.

In considering whether an activity has a substantial effect on commerce, one must consider the nature of the statutory scheme involved, regardless of whether the particular activity at issue is local or de minimis in nature. Wickard v. Filburn, 317 U.S. 111 (1942).

“That [the farmer’s] own contribution to the demand for wheat may be trivial by itself is not enough to remove him from the scope of federal regulation where, as here, his contribution, taken together with that of many others similarly situated, is far from trivial.” Id. at127–28.

"[W[hen a general regulatory statute bears a substantial relation to commerce, the de minimis character of individual instances arising under that statute is of no consequence," and Congress has the power to regulate it under the Commerce Clause. Gonzalez v. Raich, 545 U.S. 1, 17 (2005), quoting United States v. Lopez, 514 U.S. 549, 558 (1995).

The CAFC observed that its prior rulings in "use in commerce" cases reflect the broad scope of Congress’s Commerce Clause powers. For example, in Larry Harmon, the court argued that the Lanham Act’s requirement could be satisfied by a single-location restaurant and it refused to adopt a de minimis test for the "use in commerce" requirement. 929 F.2d at 663. In Silenus Wines, the CAFC held that the intrastate sale of imported French wine constituted "use in commerce." 557 F.2d at 809.



In the case at hand, the Court found it clear in light of those precedents that the Church's sale of two "ADD A ZERO"-marked hats to an out-of-state resident is regulable by Congress under the Commerce Clause and, therefore, constitutes “use in commerce” under the Lanham Act.

We reach this conclusion without defining the outer contours of Congress’s Commerce Clause powers because the transaction at issue falls comfortably within the bounds of those powers already sketched for us by the Supreme Court. The Lanham Act is a comprehensive scheme for regulating economic activity—namely the marking of commercial goods—and the "use in commerce" pre-registration requirement is an "essential part" of the Act.

The CAFC pointed out that the Church was not required to present evidence of "an actual and specific effect that its sale of hats to an out-of-state resident had on interstate commerce. Nor did it need to make a particularized showing that the hats themselves were destined to travel out of state."

Adidas’s argument that the Church must present actual proof that its sale to Ms. Howard directly affected commerce also contradicts precedent. "[P]roof that the defendant’s conduct in and of itself affected or threatened commerce is not needed. All that is needed is proof that the defendant’s conduct fell within a category of conduct that, in the aggregate, had the requisite effect." quoting Taylor v. United States, 136 S.Ct. 2074, 2080 (2016)

The appellate court pointed out that the definition of "commerce" in the Lanham Act means "all commerce that may be lawfully regulated by Congress." It concluded that because "one need not direct goods across state lines for Congress to regulate the activity under the Commerce Clause, there is likewise no such per se condition for satisfying the Lanham Act’s 'use in commerce' requirement."

And so the CAFC reversed the TTAB's decision and remanded the case to the Board for consideration of  adidas’s other grounds for cancellation (abandonment-and failure-to-function).

Read comments and post your comment here.

TTABlog comment: Following the court's reasoning, is there any "use" of a trademark or service mark that does not satisfy the "use in commerce" requirement? Is the old "interstate/intrastate" dichotomy dead, as far as "use" goes?

In other words, for application purposes are "first use" and "first use in commerce" now the same thing?

Text Copyright John L. Welch 2016.

Tuesday, November 15, 2016

TTAB Posts November 2016 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled seven (7) oral hearings for the month of November 2016. 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.



November 3, 2016 - 10 AM: In re Orbit Irrigation Products, Inc., Serial Nos. 85945749 et al. [Refusals to register the color green as applied to a top portion of a sprinkler head and contrasting with the adjoining portion of the sprinkler head, on the ground that the proposed marks lacks acquired distinctiveness under Section 2(f)]. [Isn't it functional? What color would you want your sprinkler heads to be? - ed.].


November 15, 2016 - 11 AM: In re Prosser, Inc. , Serial Nos. 86425269 and 86415217 [Section 2(d) refusal to register TRUE VELOCITY for "Polymer-based center fire rifle cartridges meeting military specifications and provided solely in connection with Department of Defense, governmental and military use in automatic machine guns and semi-automatic machine guns, excluding all other ammunition, shotgun shells and shotgun shell shot" in view of the registered mark VELOCITY for "ammunition; shotgun shells; shotgun shell shot"].


November 15, 2016 - 2 PM: American Council on Exercise v. William John Martin, Opp. No. 91203539 [Opposition to registration of ACE WATER for drinking water on the ground of likelihood of confusion with the registered marks ACE and ACE AMERICAN COUNCIL ON EXERCISE for educational materials and other goods in the field of physical fitness, and on the ground of lack of bona fide intent].


November 16, 2016 - 10:30 PM: In re Southern Wine & Spirits of America, Inc., Serial No. 86326950 [Section 2(d) refusal of the mark shown below [WINE & SPIRITS OF AMERICA DISCLAIMED], for "distributorship services in the field of wine, spirits and other alcoholic beverages" in view of the registered mark COASTAL PACIFIC FOOD DISTRIBUTORS for "Distributorship services in the field of food" [FOOD DISTRIBUTORS disclaimed].


November 17, 2016 - 1 PM: In re Utility Associates, Inc. , Serial No. 86389465 [Failure to disclaim the merely descriptive word BODYWORN in the mark shown below, for "Cameras; Cellular phones; Digital cameras; Microphones" and for "Application service provider (ASP) featuring software for use with wireless mobile devices for use in obtaining, recording, storing and maintaining data and other records and evidence, including video and audio; Consulting services in the field of collection of evidence for forensic purposes; Providing information in the field of collection of evidence for forensic purposes"].


November 17, 2016 - 2 PM: In re Kohr Brothers, Inc., Serial No. 85430114 [Refusal to register, under Sections 1 and 45 of the Trademark Act, the mark CONEY ISLAND BOARDWALK CUSTARD for "Frozen desserts, namely, frozen custards" due to failure to file an acceptable specimen of use].



November 29, 2016 - 2 PM: Unilever PLC v. Technopharma Limited, Cancellation No. 92056654 [Petition to cancel a registration for the mark NEW YORK FAIR AND LOVELY for "Skin soaps, skin cleansers, cosmetics" in Class 3, and for "Medicated skin creams and medicated skin lotions" in class 5, on the ground that respondent was not lawfully using the mark for the identified goods when it filed its Section 8 Declaration of Use].


Read comments and post your comment here.

TTABlog note: Any predictions?

Text Copyright John L. Welch 2016.

Monday, November 14, 2016

TTAB Test: Is This Specimen Acceptable for "ELLE SCHNEIDER" for Video Production and Script Writing Services?

Opposer Hachette claimed that the applied-for mark ELLE SCHNEIDER fails to function as a service mark for video production and script writing services. Applicant Lauren R. Schneider's specimen of use is shown below. Hachette contended that applicant is using the name “Elle Schneider” as her personal name and/or pseudonym, and not as a service mark in connection with the advertisement, promotion or provision of the identified services. How do you think this came out? Hachette Filipacchi Presse v. Lauren R. Schneider, Opposition No. 91202984 (November 4, 2016) [not precedential].


The specimen business card depicts the term ELLE SCHNEIDER next to the wording “DIRECTOR/WRITER” and Applicant’s email address. Opposer Hachette maintained that the business card displays applicant's name, Elle Schneider, but does not include any use of "Elle Schneider" as a service mark.

The Board observed that a personal name mark (not a surname) is deemed to be inherently distinctive "if the record shows that it is used in a manner that would be perceived by purchasers as identifying the services in addition to the person." E.g., In re Carson, 197 USPQ 554 (TTAB 1977) (JOHNNY CARSON registrable as a service mark where name featured in advertisements for services).

The Board found the specimen here to be similar to that in Ex parte TOAL, 111 USPQ 450 (Comm’r Pat. 1956) wherein the applicant sought to register “Marguerite Charlene” as a service mark for script writing and song composition services. Her business card displayed “Marguerite Charlene,” “Scripts and Songs for Radio and Television Performances” and her street address. The Commissioner affirmed the refusal to accept the business card as a specimen because the alleged mark was used to identify an individual rendering a personal service and not a name adopted and used by applicant to identify and distinguish her services from those of others.

Here, applicant used “Elle Schneider” as an assumed name and she provided direction (of videos and film) and is a writer. "The depiction of her assumed name, along with 'DIRECTOR/WRITER' and her email address, on the business card also demonstrates the rendering of a personal service and not a name adopted and used by Applicant to identify and distinguish her services from those of others."

The Board therefore found that Applicant’s specimen does not function as a mark for the services identified in Applicant’s application.

The Board also sustained Hachette's likelihood of confusion claimed based on the registered mark ELLE for overlapping services. But the Board dismissed opposer's dilution claim because, although applicant conceded that ELLE is famous in the fashion industry, that concession was not enough to establish that Applicant’s mark is a famous mark for purposes of Section 43(c)(1).

Read comments and post your comment here.

TTABlog comment:  I disagree with the Board ruling on the specimen of use. How about you?

Text Copyright John L. Welch 2016.

Friday, November 11, 2016

TTAB Affirms Refusal of "HARAJ" (Persian) for Advertising Services: Highly Descriptive, Lacks Acquired Distinctiveness

The Board affirmed a refusal to register the mark shown below (Persian, in Arabic script) for "classified advertising services," the panel majority finding the mark merely descriptive and lacking in acquired distinctiveness. Judge Adlin dissented in part. He would have affirmed on the ground of genericness. In re Yousef Saleh Alreshidi, Serial No. 86457267 (November 9, 2016) [not precedential].


The mark is described as consisting of "Arabic script which transliterates to HARAJ." The English translation of HARAJ is "Auction" or "Sale."

Doctrine of Equivalents: Applicant argued that the doctrine of foreign equivalents does not apply because Persian is "an obscure language and therefor not likely to be translated by the ordinary American purchaser." He pointed to a Census Bureau publication indicating that of the 60.6 million people who speak a non-English language at home, only 0.7% speak Persian.

The Board pointed to a TMR article saying that languages once thought to be obscure, such as Farsi (Persian) and Arabic, are now in common use in this country. More importantly, applicant's specimen of use showed that his services are advertised in Arabic characters, indicating that his own customers include people who read Persian and his services are directed to such customers.

Therefore the Board found that, with respect to applicant's services, Persian is not an obscure language. Accordingly the Board deemed the mark equivalent to "sale" or "auction" in English.

Genericness: The Board reviewed the Examining Attorney's evidence in detail but found very few instances in which "sales" or "auction" could be considered generic terms for classified advertising services. "The limited amount of evidence that AUCTION or SALES has been used as category names for classified ads is simply insufficient for us to find that the Office has demonstrated that SALE or AUCTION is understood by the consuming public to primarily refer to classified advertising services."

Mere Descriptiveness: The evidence showed that SALE describes a major characteristic of classified advertising services. Someone who can read Persian will immediately so understand the meaning of the mark. Therefore, the mark is merely descriptive of the services.

Acquired Distinctiveness: Applicant's claim under Section 2(f) was based solely on a declaration of at least five years of continuous and substantially exclusive use, with no further evidence being offered. The Board, however, found that for this "highly descriptive mark," a mere statement of five years of use is not sufficient to support a finding of acquired distinctiveness.

And so the Board affirmed the Section 2(e)(1) refusal.

Judge Adlin opined that the record evidence left no doubt that classified advertising services encompass sales and auctions, or that sales and auctions are among the most prominent and popular classifications of the advertisements that applicant and his competitors provide. The Board has held that a term that names the "central focus" of "key aspect" of a service is generic for the service itself. [E.g., HOTELS.COM for reservation services, RUSSIANART for fine are dealership services, CHURRASCOS for restaurant services]. Moreover, applicant's competitors need to use "sale" and "auction" in their classified advertising services.

Judge Adlin concluded that "[b]ecause the record established that the relevant public understands 'sales' and 'auctions' to refer to sub-groups, and in fact 'key aspects' of 'classified advertising services,' his mark is generic ...."

Read comments and post your comment here.

TTABlog comment: I agree with Judge Adlin. How about you?

Text Copyright John L. Welch 2016.

Thursday, November 10, 2016

TTAB Test: Does This Specimen Support Registration of FILAMENT TOWER?

The USPTO refused registration of the mark FILAMENT TOWER for LED fixtures and light bulbs, concluding that the specimens of use differed materially from the drawing of the mark in the application. Applicant argued that FILAMENT TOWER, used in the phrase "Cree LED Filament Tower Technology" [see specimen below] will be perceived as a trademark. The Board rendered a split decision. How do you think this came out? In re Cree, Inc., Serial No. 85838153 (November 8, 2016) [not precedential].

(Click on photo for larger picture)

The issue of "mutilation" may arise when the mark as depicted in a trademark specimen does not match the mark depicted in the application drawing. The drawing must be a "substantially exact representation" of the mark as used. Rule 2.51(b). When "essential and integral subject matter" is missing from the drawing, the mark may not be registered. TMEP Section 807.12(d).

The issue before the Board was whether FILAMENT TOWER "is a complete mark or merely part of a larger mark. In other words, are 'Cree LED' and 'Technology' essential and integral subject matter missing from the drawing?"

The panel majority concluded that the mark shown in the application drawing, FILAMENT TOWER, is manifestly not a substantially exact representation of the mark that applicant is using. Does FILAMENT TOWER, as it appears on the specimens, create a separate and distinct commercial impression?

There is nothing to distinguish or separate FILAMENT TOWER from the rest of the phrase. There was no evidence showing applicant's use of FILAMENT TOWER as a stand-alone mark, which would have reinforced its significance as a mark separate from the rest of the phrase.

Despite the fact that Applicant, based on this record, is always using FILAMENT TOWER in conjunction with the phrase "Cree LED Filament Tower" or "Cree LED Filament Tower Technology," Applicant is asking consumers, who are merely interested in buying a light bulb, to parse "Cree LED Filament Tower" or "Cree LED Filament Tower Technology" into its component parts (i.e., the Cree house mark, the generic term LED, the trademark at issue Filament Tower, and Technology which is just a puff term to show the sophistication of the product) even though there is nothing in the way the phrase is displayed that would distinguish the components.

The fact that applicant sometimes uses the "TM" symbol after the word "Tower" did not help, since the symbol might equally be seen to apply to the phrase "Cree LED Filament Tower."

The panel majority concluded that the mark in the application is a mutilation of the mark as actually used, and therefore it affirmed the refusal.

Judge Ritchie, in dissent, opined that because Cree is applicant's trade name, and LED names the product, the term Filament Tower creates a separate and distinct commercial impression.

Read comments and post your comment here.

TTABlog comment: I agree with the majority. How about you?

Text Copyright John L. Welch 2016.

Wednesday, November 09, 2016

"HECHTER" Primarily Merely a Surname (for Leather Goods and Clothing), Says TTAB

The Board affirmed another Section 2(e)(4) refusal, finding the mark HECHTER (Stylized) to be primarily merely a surname for leather goods and clothing. Although a very rare surname, it is the surname of applicant's founder and it has no other demonstrated meaning other than as a surname. In re Aulback Lizenz AG, Serial No. 79156860 (November 7, 2016) [not precedential].


The Board acknowledged the admonitions in its recent precedential decisions in Integrated Embedded [TTABlogged here] and Eximius Coffee [TTABlogged here] "not to apply any particular inquiry or factors mechanically or invariably give them equal weight." The entire record is to be examined, and there is no rule as to the kind or amount of evidence necessary to show that a proposed mark would be perceived primarily as a surname.

The Connection of a Person With the Surname Hechter to Applicant: Applicant conceded that a person named Hechter is connected with the company, noting several references to the retired French fashion designer Daniel Hechter. Applicant further conceded that this connection "tends to favor upholding the refusal." Although the evidence was not as strong as that in the two precedential cases, the Board found that the website evidence supported a finding that Hechter is a surname of a person connected with applicant.

The Benthin Factors:The Board then turned to the Benthin factors. Lexis evidence revealed 174 people in the USA with the surname Hechter, and applicant argued (before  Integrated Embedded and Eximius Coffee) that the rareness of the surname should be dispositive.  In the latter case, the Board observed that the statute does not exempt from the Section 2(e)(4) ban surnames that are uncommon. The question is whether the public will perceive the mark as a surname. Based on the Lexis results, media articles in the record, and applicant's statements, the Board found that "the extent to which the purchasing public in the United States is exposed to 'Hechter' as a surname is not insignificant."

Examining Attorney Claudia Garcia submitted dictionary evidence showing that "hechter" has no "ordinary language" or "common word" meaning in American English. Applicant pointed to the distinctiveness of DANIEL HECHTER as a mark, but the Board deemed that evidence to be irrelevant.

There was no evidence regarding whether HECHTER has  the structure and pronunciation of a surname. And finally, the Board agreed with the Examining Attorney that the stylization of the applied-for mark was not sufficiently distinctive to create a commercial impression beyond the mark's surname significance.

The Board concluded that the USPTO had established a prima facie case  under Section 2(e)(4) that applicant failed to rebut, and so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Applicant did not pursue a claim of acquired distinctiveness under Section 2(f).

Text Copyright John L. Welch 2016.

Tuesday, November 08, 2016

Free Webinar on TTAB Rule Changes: Thursday, Nov. 10th, 1-2 PM EST

Practical Law will present a free 60-minute webinar addressing the upcoming amendments to the Trademark Rules of Practice and how they affect TTAB practice and procedure. The webinar will be broadcast on Thursday, Nov. 10, 1-2 p.m. EST. Registration here.


The program will cover:

* critical amendments to TTAB procedure.
* a discussion of the TTAB’s reasoning behind the amended rules.
* the TTAB’s expectations for compliance with the amended rules.
* a Q&A with senior representatives from the TTAB.

Presenters:

Cheryl Butler, Senior Counsel, USPTO Trademark Trial and Appeal Board:
Cheryl Butler is Senior Counsel for TTAB Policy and Procedure and the TBMP Editor. Ms. Butler previously served as an Interlocutory Attorney and, prior to that, as a Trademark Examining Attorney. Ms. Butler received her J.D. from George Mason University School of Law and her B.S. in Geosciences from the University of Arizona.

Michael Webster, Interlocutory Attorney, USPTO Trademark Trial and Appeal Board
Michael Webster currently serves as an Interlocutory Attorney at the TTAB. Prior to joining the Board, Mr. Webster was a Trademark Examining Attorney at the USPTO for over fifteen years. He is a graduate of Regent University School of Law and earned his bachelor’s degree in Economics from Indiana University and an M.B.A. from Robert Morris University.

Uli Holubec, Senior Legal Editor, Practical Law Intellectual Property & Technology (Moderator)
Uli Holubec joined Practical Law from Quinn Emanuel Urquhart & Sullivan LLP, where she was a senior associate and handled a variety of trademark and other intellectual property matters. Uli previously was an intellectual property attorney at White & Case LLP and an intellectual property litigation associate at Lieberman & Nowak, LLP.

Michael Chiappetta, Senior Legal Editor, Practical Law Intellectual Property & Technology (Moderator)
Michael Chiappetta joined Practical Law from Fross Zelnick Lehrman & Zissu, PC, where he was counsel focusing on trademark and copyright litigation. Previously, he was an entertainment litigation associate at Troop Meisinger Steuber & Pasich, LLP in Los Angeles.
.

TTABlog Celebrates its 12th Anniversary!

The TTABlog was hatched on November 8, 2004, with a blog post entitled "Leo Stoller Loses Again." I never thought I would still be blogging twelve years later. Eleven, maybe, but twelve? No way! Thanks to all you readers!



Read comments and post your comment here.

Text Copyright John L. Welch 2016.

Monday, November 07, 2016

TTAB Test: Is "TAP IT" Merely Descriptive of Beer? Confusable with "TAP IT" for Energy Drinks?

Tap It Brewing opposed an application to register the mark TAP IT for energy drinks, claiming a likelihood of confusion with the identical mark registered for beer. Applicant Tap or Nap filed a counterclaim seeking cancellation of opposer's registration, asserting that TAP IT is merely descriptive of beer. How do you think this came out? Tap It Brewing Co., LLC v. Tap or Nap LLC, Opposition No. 91208370 (November 4, 2016) [not precedential].


Mere Descriptiveness: Of course, applicant bore the burden of proof on its Section 2(e)(1) counterclaim. Applicant relied on a Wikipedia entry indicating that a "beer tap" or “tap” is a valve "for controlling the release of beer," and on other evidence showing use of "tap" as a verb referring to the process of drawing beer from a keg. Applicant also supplied third-party registrations for marks containing the word "tap" and pointed out that many breweries, bars and restaurants use "tap" in their names. None of the registrations, however, were for beer.

Opposer’s evidence showed that tap is used in connection with a variety of beverages, including non-alcoholic, supporting its argument that "tap" and "tap it" refer to kegs and serving beverages from kegs, rather than beer specifically. There was no evidence that anyone would perceive "tap" or "tap it" as providing information as to a quality, feature, function, characteristic or purpose of Opposer’s beer.

Because there is no evidence that sellers, consumers or others refer to beer as “tap” or “tap it,” multi-stage reasoning would be required for consumers to associate the keg or other vessel conveyed by TAP or TAP IT with Opposer’s beer itself.

The Board therefore found that, "because of the indirect connection between a beer tap or tapping a keg on the one hand and the beer itself on the other," opposer's mark is merely suggestive. And so the Board dismissed the counterclaim.

Likelihood of Confusion: Because the marks are identical, a lesser degree of similarity between the involved goods is necessary to support a finding of likely confusion.

Applicant originally included "beer" in its application, seemingly revealing a relationship between the involved goods. Opposer relied on numerous third-party use-based registrations showing that a single mark has been registered for beer and for and energy or sports drinks. Brewers such as Sam Adams and Miller offer or plan to offer "hard" sodas, such as an alcoholic version of root beer.

We have no difficulty finding the goods related on this record. A relatively large number of third parties have registered or used the same marks for beer on the one hand and sports, energy or soft drinks on the other, and Applicant intended to use its mark for these goods as reflected in its original identification of goods. Moreover, several large and “craft” brewers appear to have expanded or, like Opposer, hope to expand their operations to offer soda, so much so that business publications have identified the practice as a trend. The evidence also reveals that Applicant’s and Opposer’s goods are complementary, as they are sometimes combined to make cocktails. This factor also weighs in favor of finding a likelihood of confusion.

Applicant' identification of goods is unlimited as to channels of trade, and the Board must presume that applicant's goods could be offered through grocery and liquor stores and bars and restaurants, possibly including the same ones that offer opposer's beer.

Because opposer's mark is suggestive, it is not inherently entitled to a broad scope of protection. Moreover, because a number of bars and restaurants that serve beer, as well as a number of breweries, use TAP or TAPS in their names, opposer’s mark is commercially weak. "However, while Opposer’s mark is weak, 'the evidence does not show that it is entitled to such a narrow scope of protection as to permit registration of a confusingly similar mark for related' goods."

The Board concluded that confusion is likely because the parties use identical marks on related beverages that travel in the same channels of trade. And so it sustained the opposition.

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.

Friday, November 04, 2016

TTAB Test: Is THE BEVERLY Confusable with BEVERLY JEANS & Design, Both For Jeans?

The USPTO refused registration of the mark THE BEVERLY for "denims; jeans; pants," finding the mark likely to cause confusion with the registered mark BEVERLY JEANS & Design, shown below, for "pants; shirts; tops; bottoms" [JEANS disclaimed]. Applicant contended that the marks are distinguishable because applicant's mark will be perceived as a "style name" for its "Forever 21" jeans while BEVERLY JEANS is a brand name. How do you think this came out? In re Forever 21, Inc., Serial No. 86678161 (November 2, 2016) [not precedential].


Applicant submitted website printouts showing how its mark is "actually used" and that it is "in conformance with marketplace convention for style names." According to applicant, "style names are commonly used in the jeans market" and "such style names commonly begin with the word 'The.'"

The Board was unmoved. Even if the applied-for mark is used as a style name, there is nothing to stop applicant from using it as a source-identifier for its products, and not just as a "style name." Nor are there any restrictions on applicant's use of its mark, nor any guarantee that "Forever21" will always appear in close proximity.

Even if consumers view applicant's mark as a "style name," confusion is still likely. Consumers familiar with the BEVERLY JEANS & Design mark may mistakenly believe that Applicant’s mark is merely a reference to Registrant’s style of jeans. That would be consistent with applicant's website evidence, which shows third-party usage of "The" as a prefix in a second reference to the same goods (e.g., "The Fayza" referring to "Fayza Boyhood Jeans").

If consumers do not perceive applicant's mark as a style name, the involved marks are confusingly similar. The word "The" will be seen as "having no source-indicating significance or as simply directing focus back to the common term, BEVERLY, which dominates both marks."

The similarity between the marks is enhanced by the fact that BEVERLY has no demonstrated significance vis-a-vis the involved goods and appears to be an arbitrary use of what is otherwise a proper name. There was no showing that any other entities use this term and Applicant made no argument that BEVERLY is weak or diluted.

The Board found the marks to be "very similar" and it affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: The Beverly sounds like a hotel, while Beverly Jeans sounds like a person's name. Oh, wait, we're talking about clothing here. So never mind.

Text Copyright John L. Welch 2016.

Thursday, November 03, 2016

TTAB Test: Is Buttock-Lifting Underwear Related to Breast-Lifting Tape, for Section 2(d) Purposes?

The USPTO refused registration of the mark PICK ME UP for "Bodyshaping undergarment clothing worn over the buttock that lifts the buttocks without padding," finding it likely to cause confusion with the registered mark PICK-ME-UP for "body tape in the nature of a bra consisting of breathable fabric backed with an adhesive layer for enhancing body contour by lifting the breasts." Applicant argued that the involved goods "not only are structurally different but use different means to achieve their objective and are offered to the marketplace for entirely different purposes." How do you think this came out? In re Sweet and Vicious, LLC, Serial No. 86636337 (November 1, 2016) [not precedential].


Of course, the marks are nearly identical. That factor "strongly favored" a finding of likelihood of confusion.

Applicant contended that the phrase PICK ME UP is entitled only to limited protection in view of three applications and 11 registrations for closely similar marks. The Board pooh-poohed the applications because they have no evidentiary value other than to show that they were filed. As to the registrations, they merited little weight on the issue of marketplace strength. Moreover, ten of the registrations were for articles of clothing, while the eleventh mark was significantly different from the marks involved here. And even if the cited mark was weak, it is still entitled to protection against registration of a similar mark for related goods or services.


Turning to the issues of the similarity of the goods, channels of trade, and classes of consumers, the goods of the parties are undergarments used to shape portions of the body. Applicant's own website offers "breast lift tape," "butt bras," and "butt lifters." Registrant's website offers both "rear-enhancing padded briefs" and "breast tape." Similarly, a third-party website offers "adhesive breast lifts and tape" and "butt lifter body shapers."

Applicant's argument that the involved goods are not related due to their structural differences and their differing purposes was unpersuasive. Goods need not be identical or even competitive to be related for Section 2(d) purpose; they need only be related in some manner surrounding their marketing that they could give rise to source confusion.

Since the purpose of both Applicant’s and Registrant’s goods is to shape parts of the body and the goods are sold on the same websites in proximity to each other, use of similar (or as in this case, virtually identical) marks could give rise to the mistaken belief that the goods emanate from the same source.

This same evidence also established that the goods are sold in the same channels of trade to the same customers (on-line websites selling shapewear clothing to women).

And so the Board found confusion likely, and it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: I found this opinion somewhat uplifting. How about you?

Text Copyright John L. Welch 2016.

Tuesday, November 01, 2016

TTAB Dismisses "Little Grenade" Opposition: Opposer Failed to Prove Nonuse

The Board dismissed this opposition to registration of the design mark shown below for air fresheners, finding that Opposer Julius Sämman (owner of the "Little Trees" design marks) failed to carry its burden of proof to show that applicants had not used their mark as of the filing date of the opposed application. Julius Sämman Ltd. v. Ibrahim Nasser and Serious Scents, Inc., Opposition No. 91210658 (October 31, 2016) [not precedential].


Applicants did not introduce any testimony or other evidence during their assigned trial period, but they attached certain documents to their trial brief. The Board pointed out once again that materials attached to a trial brief can be given no consideration unless they were properly made of record during the time for taking testimony. See, e.g., TBMP Section 704.04(b).

Ibrahim Nasser filed the subject application on June 1, 2012, based on actual use. The Board observed that a Section 1(a) application is void ab initio if the mark was not in use in commerce at the time of filing. If an opposer establishes a prima facie case of non-use, the burden would shift to applicants to rebut that evidence.

In short, opposer bore the burden of proof to show by a preponderance of the evidence that Nasser was not using the applied-for mark at the time he filed the subject application. 

Opposer relied on the deposition testimony of Mr. Nasser and on certain interrogatory responses. It claimed that Nasser's testimony regarding use was unclear. Nasser stated that he sold the goods "first in 2012, I think, 2012 or early 2013. I think 2012." The Board, however, discerned no admission that Mr. Nasser was not using the mark on the identified goods in June 2012.

Opposer argued that Nasser had no documents to prove use, but Nasser stated that he did. Applicants refused to produce them because they perceived the standard protective order to be insufficient. Opposer never moved to compel production.

Nasser's testimony indicated that he was at least advertising air freshener products under the mark. Although not enough to evidence actual trademark use, the advertising did support the assertion that the grenade design was in use.

In sum, the evidence presented by opposer did not create a prima facie showing that Mr. Nasser was not using the applied-for mark at the time of  filing. The fact that applicants did not submit any evidence at trial is irrelevant because they did not have the burden of proof.

And so the Board dismissed the opposition.

Read comments and post your comment here.

TTABlog comment: A bit of a train wreck, don't you think?

Text Copyright John L. Welch 2016.