Friday, December 30, 2016

TTABlog Quarterly Index: October - December 2016

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Section 2(d) - Likelihood of Confusion:

Section 2(e)(1) - Mere Descriptiveness:
Section 2(e)(2) - Geographically Descriptive:


Section 2(e)(4) - Primarily Merely a Surname:
Section 2(f) - Acquired Distinctiveness:
Application Requirements/Lawful Use/Specimen of Use:
Bona Fide Intent
Failure to Function:
Family of Marks:
Genericness:
Ownership:
Nonuse
Invalid Assignment Under Section 10:
Recommended Reading:
CAFC Decisions:
Other:
Text Copyright John L. Welch 2016.

posted by John L. Welch @ 12/30/2016   0 comments

Thursday, December 29, 2016

TTAB Posts January 2017 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled eight (VIII) oral hearings for the month of January 2017. 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.


January 10, 2017 - 2 PM: In re Well Living Lab Inc., Serial No. 86440401 [Section 2(e)(1) mere descriptiveness refusal of WELL LIVING LAB for "Scientific research in the field of human health and wellness in indoor environments; product testing, research and development designed to improve the health and well-being of product users; design and testing for new product development for others in the field of health and wellness; testing, research and development of products designed to improve the health and wellness of individual users; product testing, research and development relating to technology designed to monitor and control environmental characteristics of buildings and indoor spaces; accreditation services, namely, developing protocols and evaluating and testing conformance to protocols for products designed to improve the health and wellness of individual users"].


January 11, 2017 - 10 AM: In re Just Goods, Inc., Serial No. 86348671 [Section 2(d) refusal of BETTER FOR EVERYONE for "Antipasto, beverages consisting principally of milk, bottled fruits, butter, cheese, dairy-based dips, dairy-based spreads, dried fruits, eggs, fruit and soy based snack food, fruit spreads, fruit-based meal replacement bars, fruit-based organic food bars, jellies and jams, jerky, meat, milk,olive oil, pate, peanut butter, pickles, poultry, prepared nuts, seafood not live, shakes, sliced meat, snack dips, soups, tofu, vegetable chips, yogurt based beverages, condiments and snack foods, namely, artichoke paste, chili, olive paste, tapenade, vegetable condiments in the nature of vegetable-based spreads, condiment sauces, namely, vegetable based snackfood," in view of the registered mark BETTER FOR YOU, BETTER FOR EVERYONE, for "Meat substitutes; protein for use as an ingredient in cooking, baked goods and as a meat additive; protein food products, namely, chopped beef substitute, chicken substitute, pork substitute, crab substitute, lamb substitute, fish substitute, sausage substitute, meat substitutes, ham substitute, bacon substitute, veal substitute"].


January 11, 2017 -11 AM: In re Shabby Chic Brands LLC, Serial No. 85135970 [Section 2(b) refusal of the mark shown below left, for various goods in class 20, 21, and 24, including furniture, dinnerware, and fabrics, on the ground that the mark includes a simulation or design that resembles a governmental insignia of the United Kingdom’s Prince of Wales emblem (shown below right)].


January 12, 2017 - 10 AM: In re Apple Inc., Serial No. 85008432 [Refusal to register IBOOKSTORE for /retail store services featuring electronic publications, for use with proprietary software, provided via the Internet and other communications networks; retail store services featuring electronic publications for use with proprietary software on handheld mobile digital electronic devices and other consumer electronics," in International Class 35; and "providing an Internet website portal featuring technology that allows Internet users to preview and download electronic publications, for use with proprietary software, on a wide range of topics of general interest," in International Class 42, on the grounds that the mark is merely descriptive and lacking in acquired distinctiveness, and the specimen of use is unacceptable (an amendment to the mark having been denied)].


January 12, 2017 - 11 AM: In re Breitling SA, Serial No. 879152818 [section 2(d) refusal of MERLIN for "timepieces and chronometric instruments" in view of the identical mark registered for various articles of clothing].


January 17, 2017, 2016 - 11 AM: Patriot National Insurance Group, Inc. v. Patriot Risk and Insurance Services, Inc. Cancellation No. 92055674 [Petition for cancellation of a registration for the mark PATRIOT RISK & INSURANCE SERVICES & Design (below) for "Insurance agency and brokerage; Insurance services in the nature of loss control management for others," in view of the registered mark PATRIOT RISK SERVICES for "insurance services, namely, insurance agency services, insurance writing and underwriting, insurance brokerage, and insurance consultation services, all in the fields of worker's compensation, insurance administration in the fields of worker's compensation," and other PATRIOT RISK-formative marks].


January 24, 2017 - 10 AM: Briggs & Stratton Corporation and Kohler Co. v. Honda Giken Kogyo Kabushiki Kaisha (Honda Motor Co., Ltd.), Oppositions No. 91200832 and 91200146 [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].


January 24, 2017 - 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.

posted by John L. Welch @ 12/29/2016   0 comments

Wednesday, December 28, 2016

TTAB Test: Which of These Three Section 2(d) Refusals was 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. Here are three recent Section 2(d) appeals. Which one resulted in a reversal? [Answer will be found in first comment].


In re Werbner, Serial No. 87003366 (December 22, 2016) [not precedential]. [Section 2(d) refusal of PRACTICE SAFE SIGHT for eyewear products, including lenses for computer glasses, framed lenses, and magnification lenses, in view of the registered mark SAFESITE for "opthalmic lenses"].


In re Sharron Gilty, Serial No. 86618610 (December 23, 2016) [not precedential]. [Section 2(d) refusal of the mark shown below, for "bowties," in view of the registered mark BOW CHIC, in standard character form, for “wristlets and wristlet anchors for corsage, namely, bracelets" [BOW disclaimed]].


In re Water Babies Limited, Serial No. 79163879 (December 16, 2016) [not precedential]. [Section 2(d) refusal of the mark shown below for "Printed instructional and teaching material in the field of
swimming instruction," in view of the registered mark WATERBABIES for "swimming instruction"].


Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 12/28/2016   5 comments

Sunday, December 25, 2016

Third-Party Uses Bring TTAB Reversal of ACCURATE ROOFING Section 2(d) Refusal

The Board reversed a refusal of the mark shown below, for "building construction services, namely, roofing," finding it not likely to cause confusion with the mark ACCURATE ROOFING, registered for construction services including roofing.The Board found the cited mark to be weak in view of the inherent weakness of the term ACCURATE and the evidence of significant third-party use of marks and names of roofing companies containing that word. In re R. Young Enterprises, Inc., Serial No. 86671271 (December 23, 2016) [not precedential].


Because the involved services are in-part identical, the Board must presume that they travel in the same trade channels to the same classes of consumers. The question, then, was the similarity of the marks.

Under the sixth du Pont factor, the strength of the cited mark, the Board considered the nature and number of similar marks in use for similar services. Dictionary definitions of the word "accurate" indicated that it has suggestive significance for roofing services in that it indicates a company's ability to perform services that are "correct and without any mistakes."

As to marketplace strength, applicant submitted evidence of third-party uses of "accurate" in connection with roofing services in the marks and names of companies in 16 states by at least 30 entities. This evidence was "powerful on its face," even though applicant did not provide specifics regarding the extent and impact of the usage. See Juice Generation, 115 USPQ2d at 1674.

The absence of any evidence of third-party registrations of ACCURATE-formative was not significant because of the third-party usage evidence. The examining attorney's distinction between third-party use as a trade name rather than as a service mark was not meaningful, since service marks and trade names serve the same source-identifying function.

The inherent weakness of the word “accurate” as a mark for roofing services and the significant third-party use of ACCURATE in the marks and names of roofing companies suggest that roofing marks containing the word ACCURATE are capable of co-existing without confusion where “the remaining portions of the mark may be sufficient to distinguish the marks as a whole from one another.” Promark v. GFA Brands. Inc., 114 USPQ2d 1232, 1244 (TTAB 2015).

The Board focused on the cited standard character mark. As to applicant's mark, it found that "Accurate Roofing" is the dominant portion, since they appear in the largest and boldest type, and at the top of the mark.

On the record here, we find that Applicant’s use of a design element, the slogan “Roofing made to last!”, and other words in addition to the words “Accurate Roofing” makes the mark, when considered in its entirety, sufficiently dissimilar from the cited mark ACCURATE to avoid a likelihood of confusion. [citing Juice Generation at 1675-75] This du Pont factor weighs against a finding of a likelihood of confusion.

Finally, considering the fourth du Pont factor, the conditions of sale, the Board recognized that it must consider "the least sophisticated consumer." [God help us! - ed.]. The Board concluded that the purchasers of roofing services, including homeowners, are not "uniformly sophisticated," but they nevertheless exercise a good deal of care when purchasing roofing services. Typically, there is a pre-job estimate, customized to a homeowner's specific needs, and a one-on-one relationship is established between provider and customer. The services are relatively expensive and are particularly important to most homeowners because they involve the customer's dwelling. Therefore, this du Pont factor weighed against a finding of likely confusion.

The Board concluded that confusion is not likely, and it reversed the Section 2(e) refusal.

Read comments and post your comment here.

TTABlog comment: Note the importance of Juice Generation: third-party usage evidence is crucial in showing that a mark or a term is weak. Third-party registration may help, particularly when used like a "dictionary," but a collection of website uses will be much more powerful "on its face," even without proof of extent of use and consumer awareness.

PS: I think this opinion should be precedential. 

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 12/25/2016   7 comments

Friday, December 23, 2016

CHEESE ZOMBIES Not Generic But Merely Descriptive of Filled Bakery Products

The Board granted this petition for cancellation of a registration for the mark CHEESE ZOMBIES for "filled bakery products" [CHEESE disclaimed], finding the term to be merely descriptive of the goods and lacking acquired distinctiveness, but not generic. Defendant Dumploads offered the results of a survey from Survey Monkey, but the Board rejected that evidence on multiple grounds. Patty’s Original Cheese Zombies, Inc. v. Dumploads On US, Cancellation No. 92058966 (December 20, 2016) [not precedential].


Defendant's president, Mr. Giacobazzi, designed the survey and commissioned Survey Monkey to run it. He purchased an "audience" from Survey Monkey. He had designed no other surveys in the past eight years, he was not disclosed as an expert witness, there was no indication of any experience in surveys, nor did he have the skills to testify as an expert. Mr. Giacobazzi did not observe or oversee the survey and was not familiar with how Survey Monkey conducts its business. The Board concluded that the survey results constituted hearsay and it refused to consider them.

Genericness: The Board found the genus of goods to be "filled bakery products," and the relevant public to be ordinary consumers who purchase and eat filled bakery products. The Board proceeded, as required, to analyze the proposed mark as a whole.

As a first step, it is appropriate to look to dictionary definitions of the constituent words (cheese is cheese, a zombie is a zombie). There was no dictionary definition of "cheese zombie."

Ms. Riley, former teacher and administrator at Mt. Diablo Unified School District (California), testified that "cheese zombies" were served at schools in her district for decades. She describe a cheese zombie as a "wonderful puff of pastry around this nice gooey little narrow thing of cheese." They were very popular, and former students would even come back to buy them.

Plaintiff submitted media references to "cheese zombies," newspaper listings of school menus in California, Washington State, and Missouri, and at least eight on-line recipes. Defendant's president, Mr. Giacobazzi, testified that when he went to Foothill Middle School, "cheese zombies" were on the menu.

Viewing the evidence as a whole, the Board did not find that relevant consumers would understand "cheese zombies" as a type of "filled bakery products," including "a loaf of bread with cheese inside." In short, the term is not generic for those goods.

Mere Descriptiveness: The Board found, however, that the phrase "cheese zombies" immediately conveys an idea of the characteristics of the goods, i.e., they are a type of baked product filled with cheese. Indeed, "cheese zombies" is almost always used to describe the same type of baked item filled with cheese. Therefore the mark is merely descriptive.

Even if respondent had claimed acquired distinctiveness under Section 2(f), it was apparent that its use was not substantially exclusive, and so the claim must fail.

The Board therefore granted the petition for cancellation on the ground of mere descriptiveness under Section 2(e)(1).

Read comments and post your comment here.

TTABlog comment: Do you think the term is generic (a sub-genus)? What if the pastry were shaped like a zombie?

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 12/23/2016   8 comments

Thursday, December 22, 2016

Free Webinar: A Guide to TTAB Practice for Foreign Trademark Owners - January 19th, 10-11 AM EST

Yours truly, The TTABlogger, will present a webinar entitled "Friendly Shores: A Guide to TTAB Practice for Foreign Trademark Owners," on January 19th from 10 to 11 AM EST, sponsored by Wolf, Greenfield & Sacks, P.C. "Admission" is free. Register here.


The webcast will emanate from the Federal Reserve Building in beautiful downtown Boston. Among the topics to be covered are the following:
  • The requirement of “use” in U.S. Trademark law.
  • Vulnerability of U.S. registration based on foreign rights
  • Ex parte appeals before the TTAB
  • TTAB jurisdiction in inter partes proceedings
  • The four phases of oppositions and cancellations
  • Court review of TTAB decisions

If you have questions, send them to me at jwelch at wolfgreenfield dot com.
.
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posted by John L. Welch @ 12/22/2016   0 comments

TTAB Test: Is MONARCH ROASTING Confusable With LA MONARCA BAKERY & CAFE?

The USPTO refused registration of the mark MONARCH ROASTING for "coffee sold in cartridges for use in single serve brewing machines" [ROASTING disclaimed], finding it likely to cause confusion with LA MONARCA BAKERY & CAFE for "restaurant and cafe service" [BAKERY & CAFE disclaimed]. Third-party registrations convinced the Board that the goods and services are related (six registrants sell coffee pods and restaurant services, each under a single mark). But what about the marks? How do you thing this came out? In re Trilliant Food and Nutrition, LLC, Serial No. 86947151 (December 13, 2016) [not precedential].


The examining attorney also submitted evidence that coffee  pods are offered for sale in restaurants and cafes. Therefore, it all boiled (percolated?) down to the marks.

The involved mark have obvious difference in appearance and sound. As to meaning, the examining attorney contended that the dominant portions of the marks are MONARCH and MONARCA, and that these terms should be considered equivalent under the doctrine of foreign equivalents. The evidence established that MONARCA is Spanish for "monarch," that "LA" is a Spanish definite article meaning "the," and that there were 39 million Spanish-speaking residents of the United States.

The Board noted that the doctrine of foreign equivalents should be applied when an American consumer is likely to stop and translate the mark. However, that rule is not absolute, and should be taken as a guideline. The CAFC and the Board have recognized that in some contexts, even those familiar with the foreign language will not stop and translate: e.g., VEUVE CLIQUOT, CORDON BLEU, and TIA MARIA.

The cited mark LA MONARCA BAKERY & CAFE combines Spanish and English words. Clearly, this mark is directed to an English-language audience, and is not "an attempt to translate a mark for the purpose of reaching the English-language market." Customers are likely to appreciate that fact, and those that speak Spanish are unlikely to believe that LA MONARCA is intended as a translation of an English-language mark.

The Board concluded that customers will take the Spanish wording "as is," rather than translating it for the purpose of associating it with another mark. Therefore it is not appropriate to apply the doctrine of equivalents. Nonetheless, the Board did take into account that the two words MONARCH and MONARCA have similar meanings.

Viewing the marks in their entireties, the Board did not agree with the examining attorney. He went too far in discounting the significance of the descriptive and generic wording in the marks. "Even descriptive and generic terms have some impact on the overall commercial impression created by the marks."

Overall, the Board found that there were sufficient differences between the marks in appearance, sound, meaning, and commercial impression to render confusion unlikely.

And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlog comment:This same reasoning should have applied in yesterday's "BLACK" label case.

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 12/22/2016   4 comments

Wednesday, December 21, 2016

TTAB Test: Are These Two "Black" Labels Confusable for Energy Drinks?

The USPTO refused registration of the "label" mark shown below left, finding it likely to cause confusion with the mark shown below right, both for energy drinks. Applicant pointed to 11 third-party registrations for marks containing the word BLACK, for energy drinks, in arguing that BLACK is a weak formative. How do you think this came out? In re Foodcare SP. Z.O.O., Serial No. 85699749 (December 19, 2016) [not precedential).


Of course, with the goods identical it all came down to the marks. The Board pooh-poohed the significance of the third-party marks because applicant's mark and the cited mark are "closer to each other than any of the other third-party marks because the word 'Black' creates the dominant commercial impression of those [two] marks."

In the third-party marks such as BLACK DOG, BLACK MAMBA, BLACK STEEL, BLACK DEATH, BLACK SUN, BLAK MAX, and BLACK LABEL, the word “Black” is used to modify the word that follows “Black” creating a unitary mark engendering the commercial impression of a black colored object. *** With respect to the mark BIG BLACK M JAVA MONSTER and design, the letter “M” and the term JAVA MONSTER are the dominant elements. Even if we include BIG BLACK M JAVA MONSTER and design, three registrations incorporating the word “Black” does not substantially dilute the word “Black” in connection with energy drinks.

Nonetheless, the Board recognized that "black" is a color and is often used to modify the word it precedes, and so the cited mark is not entitled to a scope of protection that bars all other uses of "black" for energy drinks.

The Board found that BLACK is the dominant portion of the marks at issue because the term “Energy Drink” is the generic term for the goods at. The term "cola energy drink" in the cited mark describes the product, and the term "Original Premium" in applicant's mark is laudatory. "Consumers encountering Applicant’s ORIGINAL PREMIUM BLACK ENERGY DRINK are likely to shorten the mark to BLACK ENERGY DRINK. Likewise, consumers familiar with Registrant’s product are likely to shorten its name to BLACK COLA."

In view of the foregoing, the Board found the marks to be similar in appearance, sound, meaning and commercial impression.

The Board therefore found confusion likely and it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: I don't think the marks look anything alike. I think I need a non-black energy drink.

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 12/21/2016   4 comments

Tuesday, December 20, 2016

Is BUFFALO JAYNE Confusable with BUFFALO for Clothing?

1724982 Alberta ULC opposed an application to register the mark BUFFALO JAYNE for various clothing items, claiming a likelihood of confusion with the registered marks BUFFALO and BUFFALO DAVID BITTON for overlapping clothing items (women's and men's pants). Applicant pointed to twelve (12) registered marks containing the word BUFFALO in International Class 25 (including BUFFALO EXCHANGE, BUFFALO BAY, and BUFFALO WORK GLOVES) in arguing that opposer's mark(s) are weak. How do you think this came out? 1724982 Alberta ULC v. Buffalo Jakson Trading Co., LLC, Opposition No. 91223331 (December 14, 2016) [not precedential].


The parties agreed to invoke the Board's ACR procedure, submitting declaration testimony and supporting evidence. The Board focused on oppposer's mark BUFFALO, since it is closer to the applied-for mark than BUFFALO DAVID BITTON.

The Board found the involved goods to be identical or closely related. Because there were no restrictions as to channels of trade or classes of consumers in the involved application or registration, the Board presumed that the goods travel in the same, normal channels of trade for those goods, to the same classes of consumers.

Since the goods are identical in part, a lesser degree of similarity as to the marks is necessary to support a finding of likely confusion. Moreover, because the word BUFFALO is the first word in Applicant's mark, it is the part that is likely to be impressed upon the mind of the consumer and remembered. [I think that is less true when the mark sounds like a first and last name - ed.]. In addition, applicant's mark incorporates the cited mark in its entirety. [That begs the question - ed.].

To the extent that the word BUFFALO connotes "ruggedness, outdoors, wild, western," that same connotation applies to BUFFALO JAYNE clothing "designed for a cowboy has now met its counterpart in a cowgirl named Jayne." (sic). The Board concluded that the marks are similar in sight, sound, meaning and commercial impressions, and the first duPont favors opposer, particularly in view of the legal identity of the overlapping goods.

Applicant's sales figures and promotional efforts for more than two decades convinced the Board that BUFFALO, while not famous, is well-known for men's and women's pants.

Applicant argued that the cited mark should be given a narrow scope of protection in view of twelve prior registrations for marks containing the word BUFFALO. However, there was no evidence that these registered marks were in use, and therefore they can be given no weight on the issue of likelihood of confusion, i.e., in determining scope of protection.

However, registrations may be probative "if they tend to demonstrate that [BUFFALO] is suggestive or descriptive of certain goods and hence is entitled to a narrow scope of protection." Here, the registrations did not show that the term BUFFALO has a commonly understood meaning that is suggestive or descriptive of "men's and women's pants." Consumers may perceive that some of the goods could be made from buffalo hide, but that same connotation would apply, if at all, equally to applicant's and opposer's goods. [If it did so apply, wouldn't that make the marks more distinguishable? - ed.]

The Board found that opposer had carried its burden of persuasion by a preponderance of the evidence, and it sustained the opposition.

Read comments and post your comment here.

TTABlog comment: Reminder: get evidence of third-party use.

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 12/20/2016   0 comments

Monday, December 19, 2016

Frequently Occurring Surnames from the 2010 Census

The United States Census Bureau has released its 2010 report [here] regarding surname frequency. The ten most frequently occurring surnames are listed below.


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posted by John L. Welch @ 12/19/2016   0 comments

NYIPLA Seminar: Understanding the Upcoming Changes to the Trademark Rules and Practice

The New York Intellectual Property Law Association (NYIPLA) will host a CLE seminar on the upcoming TTAB rule changes. The seminar will be held on Thursday, January 12, 2017 at 6:30PM at the offices of Pryor Cashman LLP, 7 Times Square, New York NY 10036. Registration here.


New rules will go into effect on January 14, 2017 that impact procedures during examination and inter partes proceedings, including significant changes to the fee schedules. Please join us for a CLE program that will review these changes and discuss the policies underlying the new rules.

Panelists:

Wendy Cohen, Interlocutory Attorney, Trademark Trial and Appeal Board
Colleen Kearney, Staff Attorney in the Office of the Deputy Commissioner for Trademark Examination Policy, United States Patent and Trademark Office

Moderated by Dyan Finguerra-DuCharme, Partner, Pryor Cashman LLP
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posted by John L. Welch @ 12/19/2016   1 comments

TTAB Test: Are These Two Design Marks Confusable for Clothing?

Hybrid Athletics opposed an application to register the mark shown below left, for "athletic apparel, namely, shirts, pants, shorts, jackets, footwear,hats and caps," claiming a likelihood of confusion with its common law mark shown below right, for shirts, shorts, and jackets. The goods overlap, but are the marks similar? How do you think this came out? Hybrid Athletics, LLC v. Hylete LLC, Opposition No. 91213057 (December 15, 2016) [not precedential].


Opposer, in its notice of opposition, pleaded ownership of a pending application for its mark, which application proceeded to registration in February 2014. However, opposer never introduced a copy of the issued registration. Nor did it introduce a copy of another registration that it claimed to own. It therefore had to rely on its common law rights.

The identify of the goods weighed heavily in favor of opposer. Opposer can claim only those channels of trade and classes of consumer which it established by way of evidence. However, since there were no restrictions no channels of trade in the subject application, the Board must presume that applicant's goods travel in all appropriate channels of trade for such goods, to the usual classes of consumers, "which necessarily includes Opposer’s actual channels of trade and classes of consumers for the identical goods." In any case, the evidence showed that the channels do indeed overlap: the parties have each attempted to market its fitness apparel to the same consumers at CrossFit events.

The parties acknowledged that each mark is a stylized version of the letter "H," and, the Board observed, "this plays a role in the overall commercial impressions engendered by the marks." [To me, the mark on the left looks more like a bat or a guitar pick than the letter "H" - ed.].

Upon viewing the marks once, consumers attempting to recall or verbalize either mark at a later date will find it easier to describe the marks, in general, as being fanciful representations of the letter H, rather than attempting to remember and relate the particular design features of the marks.

Turning to the marks, the Board found "at least one design similarity in the marks, namely, they each have a 'stretched wide' letter appearance; that is, the letter H bows out in the center top portions of both marks." However, the marks are usually not encountered side-by-side by consumers.The Board concluded that marks "are overall more similar than not," and that the differences between the marks "are outweighed by the fact that are both stylized versions of the same letter, H, and will thus have similar commercial impressions."


Opposer asserted that there have been 14 instances of actual confusion in the three or four years that the parties' goods have been concurrently in the marketplace. Some were merely inquiries as to whether there was a relationship between the parties, but others involved individuals with experience in the fitness industry who were already familiar with opposer's mark and expressed source confusion upon encountering Applicant’s H design mark.

The Board deemed this actual confusion evidence to be "highly persuasive" on the Section 2(d) issue. "The fact that these individuals were actually confused certainly raises the stakes that less-informed consumers are likely to be confused." (Emphasis by the Board).

Balancing the relevant duPont factors, the Board found confusion likely, and it sustained the opposition.

Read comments and post your comment here.

TTABlog comment: What the H? I don't see it.

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 12/19/2016   4 comments

Friday, December 16, 2016

TTAB Test: Is RANGE FARMS Merely Descriptive of Poultry?

The USPTO refused registration of the mark RANGE FARMS under Section 2(e)(1), finding it to be merely descriptive of poultry. According to the Examining Attorney, the mark consists of two words that describe where the poultry comes from (a range and a farm). How do you think this came out? In re Lamex Foods Inc., Serial No. 86467416 (December 14, 2016) [not precedential].


The evidence established that each of the constituent words is descriptive of poultry. Website excerpts use of the terms "range chicken" and "range poultry." But there was no evidence of use of the term "range farms" in connection with poultry or any other agricultural product or enterprise. Applicant conducted a Google brand search for "range farms" and the only references retrieved were for "free-range farms."

When two merely descriptive words are combined in a mark, the Section 2(e)(1) question is whether the combination evokes a non-descriptive commercial impression. "If each component retains its merely descriptive significance in relation to the goods, the combination results in a composite that is itself merely descriptive." If the combination creates a unitary mark with a non-descriptive meaning, or if it has an incongruous meaning vis-a-vis the goods, then it is registrable. "[I]ncongruity is one of the accepted guideposts in the evolved set of legal principles for discriminating the suggestive from the descriptive mark."

The Board found that the idea of a "range farm" is "an incongruous or strange way to identify a place for breeding poultry in that the terms 'Range' and 'Farms' can be used interchangeably." "Range farms" has no recognized meaning in connection with poultry and it does not immediately "evoke an impression and understanding of where poultry is produced."

Because the word “Range” modifies the word “Farms” in the applied-for mark, the compound term RANGE FARMS suggests that poultry is produced on a large area of open farm land. This suggestion requires purchasers to use some imagination and reasoning.

The Board noted that competitors are free to use the descriptive words "range" and "farms", or variations like "range chickens" of "free-range chicken." [How about "free chicken farm range"? - ed.]

At the very least, the Board had doubts about the issue of mere descriptiveness, and such doubts are to be resolved in favor of applicant.

And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlog comment: What say you? What if the mark were RANGE/FARM, with the forward slash (or virgule) indicating that the poultry could come from either one. Would that mark be merely descriptive?

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 12/16/2016   1 comments

Thursday, December 15, 2016

TTAB Test: Is WOODY WHEAT Confusable With WOODY STOUT and WOODY BROWN ALE (Different Owners) for Beer?

The USPTO refused to register the mark WOODY WHEAT for "beer," finding it likely to cause confusion with two registered marks owned by different owners, both for "beer": WOODY STOUT [STOUT disclaimed] and WOODY BROWN ALE [BROWN ALE disclaimed]. Applicant argued that the co-existence of the two registered marks proved that WOODY is a weak formative for beer. How do you think this came out? In re Austin Brothers’ Beer Company LLC, Serial No. 86545695 (December 13, 2016) [not precedential].


Of course, the involved goods are identical, and there are no limitations on channels of trade or classes of consumers in the application or cited registrations. The Board therefore presumed that the channels of trade and classes of consumers are the same.

The Board affirmed the PTO's requirement that applicant disclaim the word WHEAT in the applied-for mark, and so the dominant portion of each of the involved marks is WOODY. The added word WHEAT does distinguish applicant's mark in appearance and sound, but consumers are likely to view applicant's mark as designating a variation of one or both cited marks - i.e., "a wheat-style beer under the WOODY brand, which also is offered in stout and brown-ale style beers."

As to applicant's argument regarding the weakness of the word WOODY in view of the co-existence of the cited registrations, the Board was unimpressed. "The application files of the two cited registrations are not of record. Accordingly, we have no evidence that would explain the rationale whereby the later registration was allowed to issue." The facts may have been different in those cases - for example, there may have been a consent provided by the earlier registrant. In any event, each case must be decided on its own merits and the Board is not bound by the prior decisions of examining attorneys regarding registration.

Applicant pointed to a third-party Supplemental Registration for WOODY CREEK WHITE for beer [WHITE disclaimed], but the Board found it distinguishable because WOODY CREEK is a unitary term with a geographic connotation. Applicant also submitted evidence of 20 beers with names incorporation the term WOODY, such as "Old Woody," "Woody's Perfect Porter," and "Woody's Easy Ale," but the Board noted that these marks do not have the same structure as the three marks at issue here: i.e., the word WOODY plus the generic name of a beer style.

Even crediting all of Applicant's evidence and accepting that the term WOODY is commonly used in association with beer, we cannot conclude that the public will look to other elements to distinguish Applicant's mark from the two cited marks because they comprise no other source-identifying elements.
.
The cited registrations are presumed valid under Section 7(b), and even weak marks are entitled to protection. To accept applicant's argument regarding the two cited registrations would provide substantially no protection for the owners of the cited registrations under Section 2(d).

In short, the Board found that the sixth du Pont weighs against a likelihood of confusion, but that factor was not dispositive.

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

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TTABlog note: What do you think?

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 12/15/2016   0 comments

Wednesday, December 14, 2016

CAFC Affirms TTAB: Registration Cancelled Due to Invalid Assignment of I-T-U Application

The CAFC affirmed the TTAB's ruling [here] that ordered cancellation of a registration for the mark THE EMERALD CITY for business development and consulting services in the renewable energy industry. The Board had found that the underlying Section 1(b) application had been assigned to Opposer Emerald City Collaborative in violation of Section 10 of the Lanham Act. Emerald Cities Collaborative, Inc. v. Sheri Jean Roese, Appeal No. 2016-1703 (Fed. Cir. December 13, 2016) [not precedential].


On November 24, 2009, Perry Orlando received a notice of allowance for his application to register THE EMERALD CITY. On December 30, 2009, he entered into an agreement with Emerald City Collaborative (ECC) entitled "Trademark Assignment and License," effective on that date. The Agreement stated that Orlando "agrees to convey and assigned" to EEC his mark "at such time as the Mark is registered at the [PTO]." EEC took over prosecution of the application and Orlando agreed to provided assistance with the prosecution. Orlando also agreed to use the mark by January 31, 2010, and his products "shall at all times be of a high quality," as determined by ECC. [Emphasis added by CAFC].

On April 19, 2010, Orlando filed a Statement of Use, and one month after the registration issued an assignment to ECC was recorded.

ECC filed an opposition to Roese's application to register EMERALD CITIES. She counterclaimed for cancellation on the ground that ECC's registration was invalid because the Agreement between Orlando and ECC violated Section 10 of the Lanham Act. The Board agreed with Roese, rejecting ECC's  argument that the Agreement was merely an "agreement to assign in the future."

Section 10 of the Lanham Act contains an anti-trafficking provision, which states that an intent-to-use application is assignable (1) only after the filing of a Statement of Use, or (2) if assigned to a successor to the business of the applicant to which the mark pertains, if that business is ongoing and existing. The second prong of Section 10 did not apply here. The question was whether the Agreement constituted an improper assignment of the Section 1(b) application prior to the filing of a statement of use.

Construing the Agreement as a whole, the CAFC reached the same conclusion as the Board: "the overall scheme and plan of the Agreement is that, by virtue of its execution, Orlando relinquished, and ECC acquired, immediate control and ownership over the intent-to-use application and the associated mark.

Orlando ceded control of the application to ECC and became obligated to assist ECC in its registration efforts. The Agreement provides that if it is terminated, Orlando must cease use of the Mark. In short, Orlando became a de facto licensee.

Moreover, Orlando agreed not to challenge ECC's use of the mark, whether before or after registration. Only ECC had the right to file oppositions or claims against confusingly similar marks, whether before or after registration.

Accordingly, we conclude that the Agreement, when read in its entirety, unambiguously shows that, by virtue of its execution, ECC acquired, and Orlando relinquished, immediate control and ownership of the intent-to-use application in a manner tantamount to an assignment." (quoting the TTAB opinion).

Because the Agreement violated Section 10, the Board did not err in cancelling the registration.

Read comments and post your comment here.

TTABlog comment: Sheri Jean Roese appeared pro se. How do you like those apples? Is there anything wrong with an agreement to assign a mark in the future, in terms of the Section 10 prohibition? Wouldn't that invite abuse? Pamela Chestek, please pick up the white courtesy phone!

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 12/14/2016   3 comments

Tuesday, December 13, 2016

CAFC Vacates TTAB's JOBDIVA Cancellation: Recruitment Software May Be a Service

The CAFC vacated a TTAB ruling [here] that ordered, on the ground of abandonment, cancellation of a registration for the mark JOBDIVA, in standard character form, and partial cancellation of a registration for the mark in the design form shown below, for "personnel placement and recruitment" services. The Board appeared to apply a bright-line requiring the registrant to show that it performed these services in addition to its provision of SAAS software at its website. The CAFC rejected that standard and remanded the case to the Board for consideration of the following question: "whether purchasers would perceive JobDiva's marks to identify 'personal placement and recruitment' services." In re JobDiva, Inc., 121 USPQ2d 1122 (Fed. Cir. 2016) [precedential].


JobDiva's software provides a database of employment applications that a hiring manager or recruiter may use to fill a job opening. It employs "harvesters" to find job candidates by scraping job boards and aggregating resumes. It helps hiring managers post job openings in a particular candidate's portal. And it assists job candidates by recommending potential openings. In many circumstances, JobDiva provides these offerings on a software-as-a-service (SAAS) basis to its customers.

JobDiva submitted screenshots of its website, along with a declaration from its CEO, in explaining its services, but the Board found the evidence insufficient because "[t]here was no reference ... to [JobDiva's] performance of personnel placement and recruitment services other than supplying [its] software." Concluding that the marks had not been in use for the services in question, the Board issued its cancellation order on the ground of abandonment.

On reconsideration, the Board criticized JobDiva for "confus[ing] the service of providing a software solution for personnel placement and recruitment with actually rendering placement and recruitment services." The Board required JobDiva to prove that "it is rendering personnel placement and recruitment as an independent activity distinct from providing its software to others." The Board ultimately found that JobDiva had failed to establish "that it is rendering 'personnel placement and recruitment' services for others separate and apart from providing its software." [Emphasis added by CAFC].

The CAFC observed that whether a mark has been used to identify a particular service is a question of fact, as is the question of abandonment.

The Board acknowledged that, in modern technology, the line between services and products sometimes blurs, and it is important to review the entire record to understand how a mark is used and how it will be perceived by customers. Nonetheless, the CAFC noted, the TTAB appeared to apply a bright-line rule requiring JobDiva to show that it performed the services in question in a way other than having its software perform the services. "In holding JobDiva to that standard, the Board erred in its understanding of the law."

Even though a service may be performed by a company's software, the company may well be rendering a service. For example, in On-Line Careline, we held that AOL had used its ONLINE TODAY mark in connection with services even though those services were  provided by software. 229 F.3d at 1088. *** At bottom, we recognized that software may be used by companies to provide services. Id.

In determining whether a mark is used in connection with the identified services, "a key consideration is the perception of the user."

The question is whether a user would associate the mark with "personnel placement and recruitment" services performed by JobDiva, even if JobDiva's software performs each of the steps of the service." In other words,  the question is whether the evidence of JobDiva's use of its marks "sufficiently creates in the minds of purchasers an association between the mark[s] and [JobDiva's personnel placement and recruitment] services." Ancor Holdings, 2006 WL 1258813, at *3.

The CAFC pointed out that, on remand, the Board should consider the nature of the user's interaction with JobDiva when using the software, as well as the location of the software host. If the software is sold to a customer who hosts the software on its own website and the user's interactions appear to be with the customer, then it is unlikely that the user would associate the JOBDIVA mark with the service performed by JobDiva. However, if the software is hosted on JobDiva's website "such that the user perceives direct interaction with JobDiva during operation of the software, a user might well associate JobDiva's mark with personnel 'placement and recruitment' services performed by JobDiva."

The ultimate question here is this: whether purchasers would perceive JobDiva’s marks to identify “personnel placement and recruitment” services. Because that question is a factual one, the Board must answer it in the first instance.

The appellate court remanded the case to the Board for further consideration in light of this opinion.

Read comments and post your comment here.

TTABlog comment: Doesn't the term "software-as-a-service" suggest that a service is being provided?

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 12/13/2016   2 comments

Monday, December 12, 2016

TTAB Dismisses HEALTHPLEX Cancellation Petition Due to Differences in Services

The TTAB dismissed a petition for cancellation of a registration for the mark HEALTHPLEX for "Medical Services," finding that petitioner had failed to prove a likelihood of confusion with the identical mark for "dental health insurance services," including "providing group and individual dental health insurance plans." The Board found "no evidence that the services are related or that the trade channels overlap." Healthplex, Inc. v. Genesis Health System, Cancellation No. 92060507 (December 8, 2016) [not precedential].


Because the marks are identical, a lesser degree of similarity between the services is required to support a finding of likelihood of confusion. The Board noted that the services need not be identical or even competitive in order to support a finding of likelihood of confusion.

It is enough that they are related in some manner or that the circumstances surrounding their marketing are such that they would be likely to be seen by the same persons under circumstances which could give rise, because of the marks used, to a mistaken belief that Petitioner’s and Respondent’s services originate from or are in some way associated with the same source or that there is an association between the sources of the services.

Petitioner failed to introduce any evidence that the parties’ services are related. Instead it relied only on its attorney's argument that "medical services" is a broad description that must be read to include all type of medical services, including dental health services and/or healthcare insurance services. The Board was not impressed.

Moreover, even assuming that “medical services” encompasses “dental care,” petitioner did not established that it provides dental care. It established use of its mark for insurance services, not for any kind of medical or dental care.

Registration appear to have no relationship to Petitioner’s, and are targeted to different customers for different reasons. Furthermore, as explained in more detail below, Petitioner has not demonstrated that there is in fact a relationship between its services and Respondent’s, and there is no reason apparent from the record why the customers of one party would be exposed to the other’s services or mark.


The record did contain "ample evidence" of a lack of relationship between the services. For example, Petitioner’s website includes pages for members, dentists, group administrators, brokers and visitors interested in dental insurance, but not dental patients seeking to interact directly with a dentist.

Petitioner is in the insurance business, while Respondent provides medical care. The qualifications and skills required of the providers of these services and the needs of the relevant consumers are so different that there is no basis for finding a relationship between the parties’ services.

There was also no evidence of any overlap in channels of trade. Petitioner’s services are direct to providers of dental insurance for others, or for individuals who need dental insurance; Respondent’s medical services target ordinary patients seeking treatment or with medical issues.

While we acknowledge that purchasers of dental health insurance services, like everyone else, will likely desire or require “medical services” from time to time, that is not enough to establish that the services or channels of trade are related.

And so the Board dismissed the petition.

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TTABlog comment: Seems right to me. How do you feel?

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 12/12/2016   0 comments

Friday, December 09, 2016

TTAB Test: Is FUNDAMENTAL DASHBOARD Confusable With FUNDAMENTAL CAPITAL for Financial Services?

Fundamental Capital opposed an application to register FUNDAMENTAL DASHBOARD for financial analysis and research services, claiming likelihood of confusion with its registered mark FUNDAMENTAL CAPITAL for financial investment services. The Board found the services to be  overlapping or closely related, but what about the marks? Opposer's mark was registered under Section 2(f), and applicant submitted evidence of nine third-party websites and 18 third-party registrations for marks or names that include the word FUNDAMENTAL in the financial field. How do you think this came out? Fundamental Capital, LLC v. Global Select Research LLC, Opposition No. 91221151 (December 5, 2016) [not precedential].


The words "capital" and "dashboard" are descriptive in the context of the parties' respective services. Therefore the Board found that the word FUNDAMENTAL is the dominant portion of each mark. Opposer's registration under Section 2(f) was a concession that FUNDAMENTAL CAPITAL "is merely descriptive." [Or maybe just that not inherently distinctive? - ed.]. The third-party registrations included the marks FUNDAMENTAL INVESTORS, FUNDAMENTAL EQUITY, and FUNDAMENTAL CHOICE.

Even though there was no evidence regarding sales or promotional efforts regarding the third-party marks, registrations plus web pages may be sufficient to show that a term is weak "where a considerable number of third parties use similar marks in connection with similar goods or services." Here, however, there was evidence of use of only three of the registered marks. (Compare Jack Wolfskin, where there were 14 such examples).

Third-party registrations, standing alone, may show the sense in which the term FUNDAMENTAL is used and understood. Here the examples of use and registration "tend[] to show at minimum suggestiveness of the term FUNDAMENTAL in this field." However, the record does not establish that FUNDAMENTAL is used to such an extent that customers "have been educated to distinguish between different ... marks on the basis of minute distinctions."

Thus, although this third-party evidence does weigh in favor of applicant by narrowing the scope of protection merited by the term FUNDAMENTAL, "it does not outweigh the factors of the similarity of the marks, relatedness of services and trade channels in this case." The addition of the words CAPITAL and DASHBOARD to the respective marks does not change the commercial impressions of the marks to avoid confusion, nor does the evidence establish that FUNDAMENTAL is so diluted as to preclude confusion.

And so the Board sustained the opposition.

Read comments and post your comment here.

TTABlog comment: What do you think? FWIW - The Board seems always to be pulling back from Juice Generation and Jack Wolfskin.

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 12/09/2016   1 comments

Thursday, December 08, 2016

TM Specimen Fails to Associate Mark With Goods, Says TTAB

The Board affirmed a refusal to register the mark shown below, for "direct current to direct current converter whose use in a battery operated electronic device allows the device to utilize more of the battery's stored energy, electronic circuits, integrated circuits," because the specimen of use failed to show the mark associated with the goods. In re 2nd Life Tech, LLC, Serial No. 86415828 (December 2, 2016) [not precedential].


Applicant's specimen of use consisted of a Kickstarter page displaying the mark in the upper left hand corner beneath the KICKSTARTER mark. The page refers to a "project," "The Problem," and "The Solution," and under the heading "The Solution" appears a picture of a prototype of applicant's device attached to an Energizer brand battery.


A web page that displays a product may constitute a "display associated with the goods" under Section 45 of the Lanham Act if it (1) contains a picture or description of the goods, (2) shows the mark in association with the goods, and (3) provides a means for ordering the goods.  See TMEP Section 904.03(i).

The Board found that applicant did not satisfy the second prong of the test. It concluded that "the applied-for mark is not displayed in a manner that would enable a viewer to easily associate the mark with the goods." See In re Osterbert, 83 USPQ2d 1220, 1223 (TTAB 2007). [TTABlogged here]. The only product depicted on the specimen web page bears a different design mark (a lightning bolt) and is identified by the word mark BATTERY VAMPIRE.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: WYHA?

Text Copyright John L. Welch 2016.

posted by John L. Welch @ 12/08/2016   2 comments