"I BELIEVE THAT WE WILL WIN" Fails to Function as a TM for Clothing, Says TTAB

The Board sustained an opposition to registration of the slogan I BELIEVE THAT WE WILL WIN! for “Bottoms; Caps; Hats; Jackets; Shirts; Sweatshirts; T-shirts; Tops," on the ground that the applied-for mark fails to function as a trademark under Sections 1, 2 and 45 of the Lanham Act. Opposer U.S. Soccer alleged that its fans adopted the slogan as a rallying cry for the U.S. team during the 2014 World Cup [won by Germany], and that registration by applicant would deprive Opposer and others of the ability to use the mark as an "informational and aspirational slogan." United States Soccer Federation, Inc. v. Aztec Shops, Ltd., Opposition No. 91220225 (January 27, 2017) [not precedential].

Standing: Opposer U.S. Soccer established its standing by showing use of the slogan in its advertising and on apparel. In any case, it is not necessary for an opposer to be using a term in order to challenge registration; an opposer may establish its standing by showing merely that it has an interest in using the term in its business. The fact that licensees of U.S. Soccer may produce and sell the goods bearing the mark does not negate Opposer’s real interest in this proceeding, since use of a mark by a licensee inures to the benefit of the licensor/trademark owner.


Failure to Function: "Slogans and other terms that are considered to be merely informational in nature, or that express support, admiration or affiliation, are generally not registrable." See, e.g., In re Eagle Crest Inc., 96 USPQ2d 1227, 1232 (TTAB 2010) (“ONCE A MARINE, ALWAYS A MARINE is an old and familiar Marine expression, and as such it is the type of expression that should remain free for all to use.”).

The critical determination regarding whether a term functions as a trademark focuses on consumer perception. To make that determination, the Board looked to the specimens of use and other marketplace materials. Opposer made of record news articles, blog excerpts, and videos showing that the slogan or chant has been widely publicized and used by others both before and after Applicant’s adoption of the slogan in 2011.

Applicant maintained that the slogan is associated with San Diego State University as a result of more than $74,000 in sales of products bearing the applied-for mark since 2011 and advertising expenditures of approximately $400,000 annually for the entire SDSU brand. It submitted evidence showing use of the slogan on clothing, in retail store displays, and as an athletic facility wall decoration.

The Board was not impressed.

The function of a trademark is to identify a single commercial source. The record before us establishes that the slogan I BELIEVE THAT WE WILL WIN! has been widely used over a long period of time by various groups and organizations as an expression of enthusiasm and support for their particular sports team or cause. ***

Here, the primary purpose of I BELIEVE THAT WE WILL WIN!, as shown by the evidence of use by the public, is to convey information, that is, to convey enthusiasm and support for particular sports teams or causes. ***

Indeed, the fact that I BELIEVE THAT WE WILL WIN! is used by others in a “nontrademark manner” as a chant in sports and political arenas (and on clothing) establishes that the slogan cannot serve as an indicator of the source of Applicant’s apparel.

And so the Board sustained the opposition.

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TTABlog comment: If the fans of each side in a soccer match chant this slogan, won't the match end in a draw?

Text Copyright John L. Welch 2017.

TTAB Posts February 2017 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled four (4) oral hearings for the month of February 2017. The first of the four hearings will be held at Southwestern Law School in Los Angeles. The remaining three 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.


February 15, 2017 - 10 AM: Cosmetic Warriors Limited v. Trang Diem Tran, Opposition No. 91214890 [Section 2(d) opposition to registration of LUSH VAPOR for "Chemical flavorings in liquid form used to refill electronic cigarette cartridges" in view of the registered mark LUSH for cosmetic preparations, bath and beauty preparations, and related services].

February 15, 2017 - 11 AM: Win Luck Trading Inc. v. Northern Food I/E Inc. dba Northern Food, Cancellation No. 92058825 et al. [Petitions for cancellation of registrations for the four Chinese character marks shown below, for "Asian noodles; Chinese noodles; Noodles" on the ground of mere descriptiveness under Section 2(1) and lack of acquired distinctiveness].

February 28, 2017 -10 AM: Margaritaville Enterprises LLC v. Rachel A Bevis DBA Rachel A Bevis, Oppositions No. 91219403 and 91221395 [Section 2(d) oppositions to registration of MARIJUANAVILLE for “T-Shirts, Hats, Sweat Shirts, sweat pants, Jackets, Socks” and for “Drive-through retail store services featuring coffee and related goods; Retail apparel stores; Retail clothing stores,” on the ground of likelihood of confusion with the registered mark MARGARITAVILLE for clothing , coffee, and retail store services featuring clothing, books, and kitchen appliances].

February 28, 2017 - 11 AM: In re ECI Software Solutions, Inc., Serial No. 86544101 [Section 2(d) refusal to register the mark NAVERISK for "Computer software for the monitoring and management of IT systems; computer software for project and resource management” and “Computer services for the monitoring and management of IT systems; design and development of computer software for others; computer services for project and resource management; computer technical support services, namely, service desk or help desk services for IT systems; providing online non-downloadable software for use in the monitoring and management of IT systems,” in view of the registered mark NAVRISK for “Computer software platforms for Policy Management, insurance claims management and loss control”].

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TTABlog note: Any predictions?

Text Copyright John L. Welch 2016.

TTAB Test: Is MERLIN for Watches Confusable with MERLIN for Clothing?

The USPTO refused to register the mark MERLIN for "timepieces and chronometric instruments," finding it confusingly similar to the identical mark registered for various articles of clothing. The Examining Attorney relied on third-party registration evidence to show the relatedness of the goods, but Applicant Breitling submitted "a number of pairs of use-based third-party registrations for the same mark [but different owners] that are used on clothing on one hand and watches on the other." How do you think this came out? In re Breitling SA, Serial No. 79152818 (January 25, 2017) [not precedential].

The identity of the marks "weighs heavily" in favor of a finding of likely confusion. When the marks are identical a lesser degree of similarity between the goods is necessary to support such a finding.

Applicant Breitling submitted numerous registrations for the mark MERLIN but none covered goods related to those at issue here, and so the registrations had no probative value vis-a-vis the strength of the cited mark.

Examining Attorney Fred Carl III submitted third-party registrations that encompassed both clothing and watches under a single mark, and the marks were not house marks or designer marks. Breitling countered with pairs of registrations showing that the USPTO has registered the same or similar marks for clothing offered by one party and watches offered by another. Some of the registrations were cancelled, however, and others were not based on use in commerce. Moreover, some of the pairs were for not for identical marks, or covered goods unrelated to those involved here.

Nonetheless, a number of the pairs of marks of marks were relevant. "This evidence does not, however, disprove the Examining Attorney’s evidence that watches and clothing may be sold under the same mark. It merely reduces the weight to which the Examining Attorney’s evidence is entitled."

The Board concluded that there is some relationship, albeit not a strong one, between watches and clothing. It pointed out that watches and clothing may be complementary products in that consumers may purchase watches as a fashion accessory. Thus some consumers may expect watches and clothing identified by the same mark to emanate from the same source.

The evidence showed that watches and clothing may be sold in the same trade channels. The Board noted that the application and cited registration have no limitations as to the specific type of goods, and so they encompass inexpensive items bought with only ordinary care.

Considering the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal to register.

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TTABlog comment: How did you do?

Text Copyright John L. Welch 2017.

Precedential No. 1: TTAB Dismisses Opposition to TEQUILA Certification Mark Application

In a 75-page opinion that includes a 12-page Appendix summarizing the record, the Board dismissed this opposition to registration of the mark TEQUILA as a certification mark for "distilled spirits, namely, spirits distilled from the blue tequilana weber variety of agave plant." Opposer Luxco failed to prove its claims of genericness, lack of legitimate control, and fraud. Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477 (TTAB 2017) [precedential].

Applicant CRT is a private body authorized and approved under Mexican law to carry out activities of evaluation and certification of the production of tequila. Opposer Luxco imports tequila in bulk and sells its finished product to other distributors. It purchases tequila from two Mexican suppliers and the tequila is certified by Applicant as authentic tequila in accordance with Mexican law.

Standing: CRT asserted that Luxco lacked standing because, under US law, Luxco cannot use the term TEQUILA unless the product has been certified by CRT, and so the registration of TEQUILA as a certification mark will not change the commercial environment. The Board, however, pointed out that registration will "entail a new layer of protection under the Trademark Act, to which Opposer must answer, that does not currently exist." See Lanham Act Sections 2, 4, 7, 32, 34, 42, and 45. Therefore, Luxco has standing to bring its claims.

Genericness: A geographic certification mark is expressly exempted from the Section 2(e)(2) geographical descriptiveness bar, and so a geographical name does not require secondary meaning to qualify for registration as a certification mark. Opposer Luxco had the burden to prove by a preponderance of the evidence that the designation TEQUILA is generic.

A certification mark that certifies regional origin as well as the qualities and characteristics associated with that origin "will not be deemed to have become a generic term as applied to particular goods unless it has lost its significance as an indication of regional origin for those goods." Tea Board of India, 80 USPQ2d at 1887. The public's perception is the primary consideration in determining genericness.

The Board found the genus of goods to be those identified in the subject application, and the relevant consumers to be the purchasers of those goods. The question, then, was whether these relevant consumers perceive the term TEQUILA as an indicator of geographic origin or as merely the name of a certain type of alcoholic beverage regardless of it geographic origin and the methods and conditions for producing it.

The Tobacco Tax and Trade Bureau (TTB) of the U.S. Department of Treasury classifies Tequila as a distinctive product of Mexico and prohibits the labeling of bottles as Tequila if the product is not manufactured in Mexico in compliance with Mexican laws. Therefore, those in the trade are presumptively aware of that classification, but that does not establish how purchasers perceive the term.

The Board reviewed dictionary definitions of Tequila, encyclopedia and website references, several expert reports, advertising and bottle labels for Tequila, recipes, new articles, retail signage, and consumer survey results. It observed that "a term that identifies a category of spirit would not be generic if it also serves to identify geographic origin (e.g., a type of spirit from Mexico)."

The evidence ..., particularly the information in the standard reference works, advertising and brand names engendering an association with Mexico, labels on every bottle sold that include the statement “Product of Mexico” or “Hecho en Mexico,” and Applicant’s survey finding that 55.4% of the respondents believe that Tequila indicates that the product is made in Mexico, counters Opposer’s assertion that Tequila is a generic term.

The Board found that the record evidence was, at best, mixed, and "tends to show that Tequila has significance as a designation of geographic origin." Because Luxco failed to meet its burden to prove genericness by a preponderance of the evidence, the Board dismissed this count of the opposition.


Control: Opposer Luxco asserted that Applicant CRT cannot exercise control over the term Tequila as required by 15 USC Sections 1063-1064 because the TTB has authority over the use of tequila. The Board pointed out, however, that the TTB has no authority to make determinations as to trademark registrability. The Board is not concerned with whether TTB labeling requirements have been met, and the TTB requirements are irrelevant to the issue of trademark registrability.

The Board also rejected Luxco's argument that the Mexican government, and not Applicant CRT, owns the term TEQUILA. Applicant was authorized by the Mexican Institute of Intellectual Property to register TEQUILA as a certification mark because CRT is the organization that verifies compliance with the Official Mexican Standard for Tequila. The Board therefore concluded that CRT has the right and authority to control the use of the term Tequila as a certification mark in Mexico and in the United States, that CRT is exercising legitimate control, and that CRT is the owner of the certification mark for purposes of registration in the United States. See TMEP Section 1306.05(b)(ii).

Fraud: Luxco maintained that CRT misled the Trademark Examining Attorney into believing that TEQUILA has "special status" as an "appellation of origin" under US trademark law. The Board, however, found that the Examining Attorney was not misled, and in any case was provided with the authorities upon which CRT was relying in asserting that Tequila is recognized as a distinctive product of Mexico. Moreover, the evidence suggested that CRT had a reasonable belief in the correctness of its position rather than an intent to deceive the USPTO.

Luxco also claimed that CRT committed fraud by falsely stating to the Examining Attorney that "In terms of volume practically 100% of the tequila product sold in the world comes from a certified producer and certified brand." The Board, however, found nothing in the record to support the claim that this statement was false or intended to deceive the USPTO.

And so the Board dismissed the opposition.

Read comments and post your comment here.

TTABlog comment: I don't think I've ever tasted tequila. Isn't that funny? No? Well, I've always lived east of the Mississippi, although two of my brothers were born in New Mexico. I do, however, remember that song by The Champs.

Text Copyright John L. Welch 2017.

Webcast Replay: "Friendly Shores - A Guide to TTAB Practice for Foreign Trademark Owners"

Here is a link to my January 19th webcast entitled "Friendly Shores: A Guide to TTAB Practice for Foreign Trademark Owners." You may also download the PowerPoint slide deck. To access the program, you will have to sign in with your name, email address, affiliation, and title.

Read comments and post your comment here.

Text Copyright John L. Welch 2017.

The Top Ten TTAB Decisions of 2016 [Part 2]

Here is the second half of the TTABlog's "top ten" list of 2016 TTAB decisions. Part 1 may be found here. If you would have selected other cases for the top ten, please say so in the comments.



Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC, 118 USPQ2d 1413 (TTAB 2016) [precedential]. [TTABlogged here]. The Board granted this petition for cancellation of a registration for the mark NOBLE HOUSE for furniture, ruling that Respondent Floorco had abandoned the mark. The Board held that use of a wholly-owned subsidiary’s registered mark by a parent entity does not inure to the benefit of the subsidiary when the parent controls the nature and quality of the goods. Respondent Floorco asserted that it had been marketing and advertising NOBLE HOUSE brand furniture as available for sale. However, it was not Floorco that was marketing and advertising the products, but its parent corporation, Furnco. Moreover, the latter controlled the nature and quality of the furniture that may have been sold. The Board noted that in most cases the affairs of a subsidiary are controlled by the parent, and so no license or other agreement is needed regarding a mark owned by the parent and used by a subsidiary. Here, however, Furnco chose its subsidiary, Floorco, to be the owner of the registration, but parent Furnco did not meet the definition of a related company under the Lanham Act – i.e., an entity whose use of the mark is controlled by the registrant with respect to the nature and quality of the goods. Therefore, as to the abandonment issue, the parent’s use of the mark cannot be deemed use of the mark by the subsidiary, and “cannot show that Respondent intended to resume use of the NOBLE HOUSE mark.”

Intex Recreation Corp. and Intex Marketing Ltd. v. The Coleman Company, Inc., 117 USPQ2d 1799 (TTAB 2016) [precedential]. [TTABlogged here]. The Board ordered Applicant Coleman to produce unredacted versions of the documents it had previously produced, rejecting Coleman’s argument that the redacted portions were irrelevant or contained confidential material. Coleman maintained that the redacted portions concerned product lines not at issue in this proceeding, and “highly proprietary” competitive information. The Board saw no compelling reason for Coleman not to disclose purportedly irrelevant information in a document that contains relevant information. Unilateral redaction would deprive the receiving party of the full context of the relevant information, fuel mistrust about the propriety of the redaction, and incentivize parties to hide as much as they dared to hide. It would increase the potential for discovery disputes, resulting in wasteful expenditure of time and resources, and would place “an unnecessary and substantial burden” on the Board in conducting in camera review of each disputed document. Coleman should have designated the disputed documents under the appropriate tier of confidentiality. If Coleman believed the standard order was inadequate, it should have sought modification of the order.

D.C. One Wholesaler, Inc. v. Jonathan E. Chien, 120 USPQ2d 1710 (TTAB 2016) [precedential].. [TTABlogged here]. The Board sustained an opposition to registration of the mark “I ♥ DC” in design form, for various clothing items, and ordered cancellation of a registration (on the Supplemental Register) for a slight variation of that mark, for backpacks, clothing, and stuffed toys, on the ground that the marks fail to function as trademarks. Plaintiff argued that “I ♥ DC” is a common slogan used in an informational sense, and that consumers are accustomed to seeing the phrase on goods from multiple sources. The evidence demonstrated that apparel bearing the phrase is available from many suppliers, as is other merchandise prominently displaying the phrase, such as mugs, teddy bears, aprons, etc. Plaintiff also showed that designs consisting of “I ♥” followed by other terms (RUGBY, KETCHUP, JESUS, etc.) are common in the souvenir industry. Defendant testified that he did not create the design and that the logo “has been out since the ‘60s for anyone to use.” The Board concluded that consumers purchase the product because of this ornamentation, which appears as informational matter not associated with a particular source. Because of the informational nature and the ubiquity of the phrase, it does not convey source even when used on a hangtag.

Daniel J. Quirk, Inc. v. Village Car Company, 120 USPQ2d 1146 (TTAB 2016) [precedential]. [TTABlogged here]. The Board dismissed a petition for cancellation of registrations for the marks QUIRK and QUIRK AUTO PARK for “automobile dealership” because petitioner failed to prove its claim of fraud on the USPTO. Petitioner asserted that respondent’s underlying applications were executed fraudulently because respondent (admittedly) knew of and failed to disclose petitioner’s allegedly prior rights in the marks QUIRK and QUIRK WORKS TO SAVE YOU MONEY for auto dealerships. However, petitioner failed to establish its prior rights, and that alone was fatal to its fraud claim. The Board nonetheless proceeded to consider the issue of fraudulent intent, concluding that petitioner failed to demonstrate that respondent intended to deceive the USPTO. As we all know, fraud must be proven “to the hilt” with clear and convincing evidence. Fraud will not lie against a party who holds an honest and good faith belief in its right to register a mark and who verifies the statutorily prescribed ownership statement, which is phrased in terms of subjective belief. There was nothing in the record to indicate that respondent’s belief that - because petitioner’s use was intrastate – it had prior rights in the mark, was not an honest belief.

In re Florists' Transworld Delivery, Inc., 119 USPQ2d 1056 (TTAB 2016) [precedential]. [TTABlogged here]. The Board affirmed a refusal to register SAY IT YOUR WAY for “creating an on-line community for registered users ...,” finding that Applicant FTD failed to show use of the mark with the recited service. Reviewing FTD’s specimen of use, the Board ruled that FTD did not offer this social-networking service as a separable service to others, but rather as merely incidental to its primary services. The Board pointed to TMEP Section 1301.04(h)(iv)C), which cautioned examining attorneys to carefully examine webpages from social-networking websites to make sure that the mark in question is being used with the recited services. FTD argued that it had created its own virtual sub-community within Twitter, but the Board was unmoved. “Applicant has done nothing more than use the Twitter online community forum to engage in social-networking for its own benefit, and to advertise its online retail store services, which are rendered over its own corporate website ....” Moreover, to the extent that FTD provides information regarding flowers or conducts events to promote the sale of flowers, those activities did not appear to constitute a separate “registrable service,” but were also merely incidental to its primary services.

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Text Copyright John L. Welch 2016-17.

The Top Ten TTAB Decisions of 2016 [Part 1]

The TTABlogger has once again chosen the ten TTAB decisions that he considers to be the most important and/or interesting from the previous calendar year (i.e., 2016). This is the first of two posts, the first five selections being set out below. Additional commentary on each case may be found at the linked TTABlog postings]. The cases are not necessarily listed in order of importance (whatever that means).


In re Morgan Brown, 119 USPQ2d 1350 (TTAB 2016) [precedential] and In re JJ206, LLC, dba JuJu Joints, 120 USPQ2d 1568 (TTAB 2016) [precedential]. [TTABlogged here and here]. This pair of decisions may prove to be the opening gambits in an evolving area of trademark law. In Brown, the Board snuffed out an application to register the mark HERBAL ACCESS for “retail store services featuring herbs” because the mark was being used in connection with the sale of a substance (marijuana) that is illegal under the federal Controlled Substances Act (CSA). The Board observed that, "to qualify for a federal service mark registration, the use of a mark in commerce must be 'lawful.' *** Thus, any goods or services for which the mark is used must not be illegal under federal law." In JJ206, the Board affirmed refusals to register POWERED BY JUJU and JUJU JOINTS for "smokeless marijuana or cannabis vaporizer apparatus," rejecting applicant's defense that the goods are sold only in states where marijuana is legal. Citing Brown, the Board ruled that if the goods on which the mark is intended to be used are unlawful, there can be no bona fide intent to use the mark in lawful commerce. Applicant pointed to the Department of Justice's "Cole Memo," which sets out government priorities in the federal enforcement of the CSA against marijuana-related conduct, but the Board asserted that the Cole Memo "does not and cannot override the CSA."

In re Eximius Coffee, LLC, 120 USPQ2d 1276 (TTAB 2016) [precedential]. [TTABlogged here]; In re Integrated Embedded, 120 USPQ2d 1504 (TTAB 2016) [precedential]. [TTABlogged here]; and In re Adlon Brand GmbH & Co. KG c/o FUNDUS FONDS-Verwaltungen GmbH, 120 USPQ2d 1717 (TTAB 2016) [precedential]. [TTABlogged here]. In these three decisions, the Board charted a new course for Section 2(e)(4) surname refusals, focusing on consumer perception rather than applying a more mechanical approach under the traditional Benthin factors. Finding the marks ALDECOA and THE BARR GROUP to be primarily merely surnames, the Board emphasized the fact that persons with the surnames at issue were active in the involved businesses. In the third case, a divided Board panel affirmed a refusal of the mark ADLON for hospitality services. 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. Recently, retiring Judge Seeherman suggested a different approach in her concurring opinion in In re Bonhams & Butterfields Auctioneers Corp., Serial Nos. 85443480 and 85443485 (December 29, 2016) [not precedential], where she urged that the degree of rareness of the surname should be the first consideration in the Section 2(e)(4) analysis. [TTABlogged here].


In re Hodgdon Powder Company, Inc., 119 USPQ2d 1254 (TTAB 2016) [precedential]. [TTABlogged here]. In a rare “color mark” decision, the Board reversed a refusal to register a mark comprising the color “white” for “preformed gunpowder charges for muzzleloading firearms,” finding that Applicant Hodgdon Powder had proven acquired distinctiveness under Section 2(f). Of course, under Wal-Mart and Qualitex, single color marks are never inherently distinctive. Hodgdon stated that the color white for its gunpowder served no purpose other than to identify Hodgdon’s products, that the color white is not a natural by-product of the manufacturing process, and that no one else in the industry uses the color white for gunpowder. The Board concluded that the color white “is an anomaly contrary to consumers' expectations regarding the appearance of the product.” Hodgdon filed a declaration attesting to substantially exclusive and continuous use of the color white for at least the five years preceding the filing date of its application. Its advertising stated that the products, sold under the mark WHITE HOTS, is “The Only White Gunpowder.” The Board found Hodgdon’s advertising to be “effective ‘look for’ advertising.” Reviewing the totality of the evidence, the Board concluded that the color white for Hodgdon’s products had acquired distinctiveness.


In re Loggerhead Tools, LLC, 119 USPQ2d 1429 (TTAB 2016) [precedential]. [TTABlogged here]. The Board affirmed a refusal to register a motion mark “depicting the product configuration of a hand tool in which six rectangular-shaped jaw-like elements of the circular head of a hand tool radially move in and out,” for “hand tools, namely, gripping tools in the nature of wrenches and wire crimpers for sale through mass merchandisers to retail consumers,” on the ground of Section 2(e)(5) functionality. The Supreme Court has stated that a product feature is functional, and thus cannot serve as a trademark, if “it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” See TrafFix and Inwood. Treating the mark like a product configuration mark, the Board applied the ever-popular four-part test of Morton-Norwich. Reviewing Loggerhead’s utility patent for an “Adjustable Gripping Tool” and its design patent for a “Hydrant Tool,” the Board found that the design patent did not cover the motion described in the trademark application and so did not overcome the “strong conclusion” that the utility patent’s disclosure of the utilitarian advantages of the proposed mark indicated functionality. The USPTO pointed to numerous examples of advertising touting the utilitarian advantages of the tool. The Board found Loggerhead’s evidence of alternative designs unpersuasive, and a conclusory statement by its president that its device “was not the most cost-effective combination among the various alternatives available” to be unavailing. Concluding that the mark affects the quality of the tool, the Board affirmed the refusal.


In re Bay State Brewing Company, Inc., 117 USPQ2d 1958 (TTAB 2016) [precedential]. [TTABlogged here]. Although consent agreements are frequently entitled to great weight in its du Pont analyses, the Board was unmoved by such an agreement in its affirmance of a Section 2(d) refusal of the mark TIME TRAVELER BLONDE for “beer” (BLONDE disclaimed), in view of the registered mark TIME TRAVELER for “beer, ale and lager.” The Board found that the agreement between applicant and registrant “does not comprise the type of agreement that is properly designed to avoid confusion and does not fully contemplate all reasonable circumstances in which the marks may be used by consumers calling for the goods.” The agreement required that each party use its mark in connection with its house mark, that applicant use TIME TRAVELER or the word TRAVELER only in the mark TIME TRAVELER BLONDE, that the word BLONDE be displayed in at least equal prominence with TIME TRAVELER, and that each party use a trade dress not confusingly similar to the trade dress of the other. Particularly troublesome was the “Geographical Limitation” provision, stating that applicant will not use its applied-for mark “outside of New England and the State of New York,” while registrant’s use was not geographically limited.


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Text Copyright John L. Welch 2016-17.

TTAB Test: Is "DEUTSCHER FUSSBALL-BUND" Merely Descriptive of Clothing and Soccer Gear?

The USPTO refused registration of the mark shown below, for varous clothing items and for soccer gear because applicant refused to disclaim the term DEUTSCHER FUSSBALL-BUND (translated as GERMAN SOCCER FEDERATION). Applicant did disclaim that phrase for soccer-related services, but it argued that the third-party registration evidence supported registration. In re Deutscher Fußball-Bund (DFB) e.V., Serial No. 79144840 (January 18, 2017) [not precedential].

Applicant is the governing body of football (soccer) in Germany, and is in charge of the league system and the national teams. Germany's national teams have been quite successful, including wins at the World Cup in 1954, 1974, 1990, and 2014. [Some say that international football is a simple game: you run around for 90 minutes and then the Germans win!]. The subject mark is displayed along with applicant's goods, and "perhaps on the goods themselves."

Examining Attorney Matthew J. McDowell based the disclaimer requirement on the finding that DEUTSCHER FUSSBALL-BUND describes not the goods themselves, but the source of the goods. He relied on a now-cancelled registration owned by applicant for a different logo for the same or similar goods, in which applicant disclaimed DEUTSCHER FUSSBALL-BUND. [Was the disclaimer voluntary or required? - ed.]. He also submitted a number of third-party registrations in which similar terms were disclaimed for like goods: e.g., MAJOR LEAGUE SOCCER, INTERNATIONAL KENDO FEDERATION, INTERNATIONAL BOBSLEIGH & SKELETON FEDERATION, KUNG FUT KUNG FU FEDERATION, THE SHUFFLEBOARD FEDERATION, ATHLETIC ASSOCIATION, BASKETBALL ASSOCIATION.

Applicant seized on a registration owned by the Mexican Football Federation in which the term FEDERACION MEXICANA DE FUTBOL ASSOC. was not disclaimed, applicant maintaining that this was the most pertinent or analogous third-party registration.

The Board found that the prior disclaimer of DEUTSCHER FUSSBALL-BUND in applicant's now-expired registration, and its disclaimer as to the services here, constituted a concession that the term is merely descriptive of at least some of the goods. [What if the disclaimer was voluntarily and unnecessarily supplied by applicant in the earlier registration? - ed.].

Furthermore the overwhelming majority of the third-party registrations include disclaimers or 2(f) claims for terms like the one at issue here. Even if the Board agreed that the Mexican Federation registration was the most analogous, it was only one of 17 registrations cited by the examining attorney.

While Applicant has established that the Office has not required disclaimers or Section 2(f) showings for analogous terms in every single case, the record reveals that at the very least the Office has been relatively consistent in treating terms such as GERMAN SOCCER FEDERATION as merely descriptive of Applicant’s goods or analogous goods.

The Board's decision in In re Major League Umpires, 60 USPQ2d 1059 (TTAB 2001), supported the refusal to register. "It is well-established that a term which describes the provider of goods or services is also merely descriptive of those goods and services.... Certainly, ‘doctor’s diet’ for a diet plan would be understood by consumers as describing a diet designed or provided by a doctor, even though ‘doctor’ does not describe the qualities or mechanics (e.g., low fat, low carbohydrate) of the diet plan." Id. at 1060.

In Major League Umpires, the mark MAJOR LEAGUE UMPIRE conveyed the information that the clothing and protective equipment was designed by major league umpires. Here, the term DEUTSCHER FUSSBALL-BUND indicates that applicant, or a related company or individual, designed applicant' goods, and that the soccer-related goods are the same as, or at least similar to, those used by the German National team.

The Board therefore affirmed the disclaimer requirement.

Read comments and post your comment here.

TTABlog comment: If there is and can be only one German Soccer Foundation, is DEUTSCHER FUSSBALL-BUND merely descriptive of the source of the goods, or does it also serve as a source indicator? There can be more than one sets of major league umpires selling clothing and umpiring gear, and each set should be able to use the term MAJOR LEAGUE UMPIRE.

Text Copyright John L. Welch 2017.

Fame of adidas 3-Stripes Mark Yields Section 2(d) Summary Judgment

The Board entered judgment summarily in this opposition to registration of the mark shown below left, for "Athletic footwear; Bowling shoes; Footwear; Footwear for track and field athletics; Golf shoes; Headwear; Jackets; Pants; Running shoes; Shirts." The Board found confusion likely with the registered mark shown below right, for "footwear." The fame of the adidas 3-stripes mark, acknowledged by applicant, was a key to victory. In other words, 3-stripes and you're out! adidas AG and adidas America, Inc. v. Etonic Holdings, LLC, 121 USPQ2d 1188 (TTAB December 22, 2016) [not precedential].

Opposers relied on several registrations as well as on common law rights, but the Board focused on the registered mark shown above, which it found to be the closest of the registered marks. Standing and priority were not in issue, nor was there any dispute that the involved goods are in part identical. The Board must presume that these identical goods are marketed in the same channels of trade to the same classes of consumers. The applicant and registration have no limitations as to cost of the goods, and so they include relatively inexpensive footwear bought on impulse.

As we know, fame plays "a dominant role" in the du Pont analysis. "A famous mark has extensive public recognition and renown and enjoys a broad scope of protection or exclusivity of use."

The evidence established that the 3-stripes mark has been in use on footwear since 1952, that products bearing the mark are sold in more than 300 retailers, that opposers sold billions of dollars worth of footwear in the period 2006-2013, the vast majority of which bore the 3-stripes mark. Advertising expenditures have been very substantial.

Opposers sponsor various sporting events, including the World Cup, and the Boston Marathon. They outfit the NBA as well as various college sports teams. Such stars as Justin Bieber, Kay Perry, and David Beckham have been featured in advertising. The mark has been noted in media coverage and is co-branded with other high profile brands. Opposers have vigorously enforced their rights in the mark.

The Board therefore found no genuine dispute that the 3-stripes mark is famous for opposer's footwear and is entitled to a broad scope of protection.

As to the marks, the Board noted that applicant's mark may appear anywhere on its footwear, including the sides thereof. The three stripes in applicant's mark may be displayed at the same direction and angle as the adidas mark. Because two of the stripes in applicant's mark are not connected to the perpendicular element, "the overall impression of Applicant's mark is one of three stripes, rather than the letter 'E.' The perpendicular element "does not distinguish the parties' respective marks in a significant manner."

The Board found no genuine dispute that the overall commercial impressions created by the marks are highly similar.

The Board found that the relevant du Pont factors favor opposers, and no genuine dispute of material fact remained for trial. Therefore it granted opposers' motion for summary judgment under Section 2(d). The Board declined to reach opposers' dilution claim, lack of bona fide intent, and contract claims.

Read comments and post your comment here.

TTABlog comment: If the goods are in part identical, what's the need for a dilution claim? The test for similarity of the marks is the same under dilution and Section 2(d) anyway.

Text Copyright John L. Welch 2017.

TTAB Test: Is BEACH HUGGY for Pillows Confusable With HUGGY PETS for Decorative Pillowcases?

The USPTO refused registration of the mark BEACH HUGGY for "pillows," finding the mark likely to cause confusion with the registered mark HUGGY PETS for "decorative pillowcases for children." The examining attorney also required disclaimer of the word "BEACH." How do you think this appeal came out? In re Comfort Revolution, LLC, Serial No. 86564232 (January 13, 2017) [not precedential].

Disclaimer requirement: The evidence showed that applicant's goods are pillows for use at the beach. The Board rejected applicant's nebulous contention that the word BEACH merely conveys a level of comfort and relaxation that may be attained at the beach, and it found the disclaimer requirement appropriate.

Likelihood of confusion The Board found the involved goods to be "related on their face" as complementary products, confirmed by third-party registration evidence and third-party websites where pillows and pillowcases are offered for sale under the same trademark. The channels of trade include the same stores, both online and brick and mortar. Applicant's goods, which are broadly identified, encompass pillows for children. In any case, adults are ultimately the consumers for pillows marketed to appeal to children.

As to the marks, the words BEACH and PETS are conceptually weaker than the word HUGGY because each of those two words describes or suggests the purpose or a feature of the goods.

Applicant argued that the differences in the wording and the placement of the words suffice to distinguish the marks, but the Board was not persuaded in view of the dominance of the word HUGGY.

Applicant’s mark gives the commercial impression of a pillow that is useful for hugging at the beach, while the mark in the cited registration conveys a huggable pet in the form of a stuffed pillowcase. Consumers are thus drawn to the "huggable" element of the respective pillows/pillowcases.

Applicant's use of the word HUGGY could lead consumers to believe that the registrant has expanded its product line to include different themes and uses. Viewing the marks in their entireties, the Board found that the similarities outweigh the differences.

The Board therefore concluded that confusion is likely, and it affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: I would have reversed the 2(d) refusal. Isn't the word "huggy" suggestive and weak for a pillow?

Text Copyright John L. Welch 2017.

Last Call for 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 Thursday, 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.
.

TTAB Orders Cancellation of PORTÓN Registration, Confusable with PATRON

The TTAB granted a petition for cancellation of a registration for the mark PORTÓN for "Distilled spirits; brandy; pisco," finding the mark likely to cause confusion with the registered mark PATRON for tequila and distilled spirits. The Board found that "a substantial number of non-Spanish speakers will perceive both terms, in the context of the goods that include tequila and pisco, as Spanish words, and any recognition of the English word 'patron' will not sufficiently distinguish the marks." Patron Spirits International AG v. Pisco Porton, LLC, Cancellation No. 92059527 (January 4, 2016).

The involved goods are legally identical and presumably sold through the same channels of trade to the same classes of consumers. As to conditions of purchase, since there are no pertinent limitations in the identifications of goods, the Board must consider all purchasers, even the less discerning.

As to the marks, the similarities in structure and spelling create similarity in sound. The aural similarity "is significant because both parties’ beverages are sold in the sometimes noisy atmosphere of a bar or crowded restaurant."

As to connotation, Petitioner argued that to the vast majority of Americans, the marks would have no meaning “other than as a trademark with a Spanish-language overtone” and “will leave identical commercial impressions.” Respondent asserted that Spanish-speaking customers would recognize the differences in meaning between “patron” (customer or guess) and “portόn” (gate), and others would perceive “portόn” “as a foreign looking and foreign sounding word but would not perceive it in a manner similar to how they would perceive the ordinary English word ‘patron.’” Petitioner replied that in the context of tequila, “patron” would be perceived as a Spanish word.

The Board agreed with petitioner. It found that “a substantial number of non-Spanish speakers will perceive both terms, in the context of the goods that include tequila and pisco, as Spanish words, and any recognition of the English word “patron” will not sufficiently distinguish the marks.”

The Board concluded that marks are similar in appearance, sound, meaning and overall commercial impression, and that this similarity, where the goods are legally identical, outweighs the dissimilarities.

The Board did not accept petitioner’s claim of fame but, based on media articles referring to PATRON tequila, it did find that PATRON has commercial strength for tequila and is entitled to a “broader scope of protection.”

Balancing the relevant du Pont factors, the Board found confusion likely and it granted the petition to cancel.

Read comments and post your comment here.

TTABlog comment: What if the registration had been limited to distilled spirits sold in quiet bars and restaurants?

Text Copyright John L. Welch 2017.

TTAB Test: Which Of These Four 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 four (IV) recent Section 2(d) appeals. Which one resulted in a reversal? [Answer will be found in first comment].

In re SBE Licensing, LLC, Serial No. 86135841 (January 5, 2017) [not precedential]. [Section 2(d) refusal of THE PERQ and Design (below left) for "restaurant, café, coffee, tea, and juice bar services," in view of the registered mark PERQS, in standard character and design form (below right), for "coffee supply services for offices"].

In re MT Enterprises LLC, Serial No. 86420598 (January 6, 2017) [not precedential]. [Section 2(d) refusal to register (on the Supplemental Register) the mark The No Pull Harness & Leash in One, in standard character form, for "Animal harnesses for dogs; Animal leashes; Dog leashes; Leashes for animals; Pet products, namely, pet restraining devices consisting of leashes, collars, harnesses, restraining straps, and leashes with locking devices" [HARNESS & LEASH disclaimed], in view of the registered mark NO-PULL for "halters for domesticated animals”].

In re Clipper City Brewing Co., LP, Serial No. 86353682 (January 10, 2017) [not precedential]. [Section 2(d) refusal of BLACKBEARD’S BREAKFAST for "beverages, namely, beers, ales, and malt liquors," in view of the registered mark shown below, for "beers" ["Ale", "Virgin Islands Ale Co.", "St. Thomas", "Tortolas", "St. John", "St. Croix" and "Caribbean Sea" disclaimed.].

In re Eyefluence, Inc., Serial No. 86249068 (January 10, 2017) [not precedential]. [Section 2(d) refusal of EYEOS for "Computer hardware and software for providing a user interface involving eye tracking and/or eye movement for wearable devices," in view of the identical mark registered for various eyewear products, including eyeglasses, sunglasses, and frames].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2017.

Robert H. Coggins Appointed As TTAB Administrative Trademark Judge; Ellen J. Seeherman Retires

Robert H. Coggins has been appointed to the position of Administrative Trademark Judge at the Trademark Trial and Appeal Board. Judge Ellen J. Seeherman retired from government service in December 2016. With the appointment of Mr. Coggins and the retirement of Judge Seeherman, the number of TTAB judges remains at 26 (including the Chief Judge and Deputy Chief Judge).

Mr. Coggins served as an Interlocutory Attorney at the TTAB for more than ten years, prior to which he served for eight years as an Attorney-Advisor for the USPTO’s Trademark Examining Operation. During his tenure as an examining attorney, Mr. Coggins completed a three-month career development detail at the TTAB, and a six-month work detail in Patent Technology Center 2100 assisting in the review of international patent applications.

Mr. Coggins earned a Bachelor of Science degree in Biology from Davidson College and a Juris Doctor degree from Wake Forest University School of Law.

Read comments and post your comment here.

Text Copyright John L. Welch 2017.

TTAB Test: Which Of These Three Mere Descriptiveness Refusals Was Reversed?

By my recent estimation, somewhere around 90% of all Section 2(e)(1) mere descriptiveness refusals that reached the TTAB in 2016 were affirmed on appeal. Well, here are three appeals that were decided within the past month. One refusal was reversed. Which one, pray tell? [Answer will be found in first comment].


In re GMR, LLC, Serial No. 86338948 (January 9, 2017) [not precedential]. [Refusal of BLACKJACK CHAT for "Computer game software; computer game programs; electronic game programs and for "Etertainment services, namely, providing online computer and electronic games through a social networking website."

In re Panasonic Avionics Corp., Serial No. 86499954 (January 5, 2017) [not precedential]. [Refusal of FLIGHTLINK for "Meteorological forecasting; providing meteorological information; providing weatherinformation; weather forecasting; weather information services; weather reporting"].

In re Watered Up, LLC, Serial Nos. 86310513; 86310537; 86310550 (December 30, 2016) [not precedential]. [Refusal of AQUA CRISPS, in standard character and design forms, "for tapioca-based snack foods; tapioca chips"].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.

In 2016, How Often Did the TTAB Affirm Section 2(d) Refusals? 2(e)(1) Mere Descriptiveness Refusals?

I reviewed the TTAB's FOIA page in an attempt to determine, or at least estimate, the percentage of Section 2(d) likelihood-of-confusion refusals and Section 2(e)(1) mere descriptiveness refusals, that were affirmed/reversed by the Board during the calendar year 2016. The highly unscientific results are set out below.

Section 2(d): I counted 249 Section 2(d) refusals, of which 228 were affirmed and 21 reversed. That's an affirmance rate of about 91.5%. [A high water mark for the last few years].

Four of the opinions were deemed precedential, all affirmances: TIME TRAVELER BLONDE; JAWS; HOUSEBOAT BLOB; and MT. RAINIER Logo;

NB: Some cases involved an applied-for mark in standard character and stylized or design form, and I counted that situation as one refusal.

Section 2(e)(1) mere descriptiveness: Of the 91 Section 2(e)(1) mere descriptiveness refusals, 82 were affirmed and 9 reversed, for an affirmance rate of approximately 90%, again on the upper end of the spectrum for recent years.

Three of the opinions were deemed precedential, all affirmances: IMÁGENES ESCONDIDAS; HOUSEBOAT BLOB; and DEEP! DEEP! DISH PIZZA. In a fourth precedential decision, the Board affirmed a mere descriptiveness refusal of HEMP HOME HEALTH because the applicant did not address that refusal in its appeal.

Read comments and post your comment here.

Text Copyright John L. Welch 2017.

Judge Seeherman Offers Different Approach to Section 2(e)(4) Surname Refusals

The Board affirmed a Section 2(e)(4) surname refusal of BUTTERFIELDS for auction and appraisal services. Applying the Benthin factors, the Board found that the applied-for mark is not a rare surname, that it has no recognized non-surname significance, and that it has the structure and pronunciation of a surname. Judge Ellen J. Seeherman agreed with the result, but took the opportunity, in a seven-page concurrence, to explain her view of the proper approach to Section 2(e)(4), an approach that focuses on the rareness of the surname. In re Bonhams & Butterfields Auctioneers Corp., Serial Nos. 85443480 and 85443485 (December 29, 2016) [not precedential].

Judge Seeherman set out her view of Section 2(e)(4) in In re "Baik" [TTABlogged here]. On occasion, a Board panel has followed her approach. Here, however, the panel hewed to its recent line of Section 2(e)(4) rulings:

The majority follows the reasoning of several decisions recently handed down by the Board, namely In re Integrated Embedded, In re Eximius Coffee and In re Adlon, cited in the majority opinion. In those decisions, the Board makes it clear that a mark will be found to be primarily merely a surname as long as there is evidence that some people have that surname, no matter how rare the surname is, as long as it is perceived as a surname. The opinions now use the language whether the term is “encountered” as a surname, rather than “the degree of a surname’s rareness,” the language quoted in Benthin.

In Judge Seeherman's evolving view, the degree of rareness of the surname should be the first consideration:

I think the Board must first determine whether there are a sufficient number of people with a particular surname for the mark to even rise to the level of a surname. That is, there must first be a showing that there is some threshold number of people with that surname to make out a prima facie case for refusal under Section 2(e)(4).

The analysis relied upon by the majority, according to Judge Seeherman, ignored the purpose of the Section 2(e)(4) surname prohibition:

"The purpose behind Section 2(e)(4) is to keep surnames available for people who wish to use their own surnames in their businesses, in the same manner that merely descriptive terms are prohibited from registration because competitors should be able to use a descriptive term to describe their own goods or services." Binion, 93 USPQ2d at 1540.

If the surname is rare, there is no need to keep it available for anyone with that surname just because there is a theoretical possibility that another might wish to use the surname for goods or services related to those of the applicant.

The Lanham Act has never been as rigidly interpreted with respect to other grounds of refusal as Section 2(e)(4) is now interpreted under the Board's current approach. Now, a mark that is a rare surname may be refused registration even if the surname has little exposure to the public, as long as it has no other meaning, or looks and sounds like a surname, or articles can be found referring to a few people having the surname.

Accordingly, in my view, the rareness of a surname must be part of the threshold question of whether there is sufficient evidence of surname use for the mark to qualify as being a surname, and only if the answer to that question is “yes” should the analysis reach a consideration of whether the mark will be recognized as a surname.

Read comments and post your comment here.

TTABlog comment: Postscript: Judge Seeherman retired from government service at the end of December 2016.

Text Copyright John L. Welch 2017.

CAFC Reverses TTAB's "DOTBLOG" Mere Descriptiveness Decision

In a non-predecential opinion, the CAFC reversed the Board's decision (TTABlogged here) that found the mark DOT BLOG to be merely descriptive of the service of "providing specific information as requested by customers via the Internet." Appellant Driven Innovations did not challenge the Board's procedural ruling regarding application of the "clear error" standard. [The Board held that an applicant may not separately challenge that determination of "clear error," either by petition to the Director or on appeal to the Board. Applicant’s only recourse is to appeal the substantive refusal.] In re Driven Innovations, Inc., Appeal No. 2016-1094 (January 4, 2017) [not precedential].

The Board reasoned that "blog" refers to an online journal, and applicant's specimen of use showed that it provides information that may be derived from or used for blogs. The word "dot" represents the punctuation mark in an internet address, and the combination of "dot" and "blog" has the same meaning as the component parts. According to the Board, "[c]onsumers will immediately understand the term DOTBLOG, when used in association with Applicant’s services of ‘providing specific information as requested by customers via the Internet,’ as describing a website that may feature information for blogs, or be related to blogs, regardless of the domain in which the blogs reside."

Alternatively, the Board found that consumers are likely to perceive the mark as "related to information gleaned from the '.blog' domain" because ICANN’s activation of the .blog generic top-level domain.

The CAFC disagreed because the definitions of "dot" and "blog" did not provide sufficient support for the Board’s finding, under the applicable substantial evidence standard.

The word “dot” does not “immediately convey” a meaning of the punctuation mark used in an internet address, nor does it immediately describe the online nature of Driven Innovations’ services. See Chamber of Commerce, 675 F.3d at 1300. Instead, it merely suggests the online nature of Driven Innovations’ services because it “requires some operation of the imagination” to connect the term “dot” to the online nature of Driven Innovations’ services. Abcor Dev. Corp., 588 F.2d at 814. Similarly, the word “blog” at most establishes some form of relation between the services rendered and blogs generally, without any description as to how the services rendered relate to blogs. The use of “blog” in the mark is not descriptive because it does not immediately convey knowledge of a feature of the services. See Chamber of Commerce, 675 F.3d at 1300.

Finding the applied-for mark to be merely suggestive of applicant's services, the Board reversed the Section 2(e)(1) refusal and remanded the case for further proceedings.

Read comments and post your comment here.

TTABlog comment: FWIW, at the TTAB, the case was heard by an augmented panel of five judges, including the Chief Judge and Deputy Chief Judge.

Text Copyright John L. Welch 2016.

TTAB Issued 36 Precedential Opinions in 2016

The TTAB issued three dozen (XXXVI) precedential opinions in calendar 2016. Among the more interesting ones, the Board considered the registrability of a rare “motion mark,” concluding that the gripping, in-and-out movement of the jaws of a hand tool was functional under Section 2(e)(5). In an almost-as-rare color mark case, the Board reversed a refusal to register the color white for gunpowder charges because applicant’s look-for advertising convinced the Board that the mark had acquired distinctiveness.

Although the Board usually gives significant weight to concurrent use agreements when assessing likelihood of confusion, it refused to do so in a case involving two marks for beer because the agreement did not “fully contemplate all reasonable circumstances in which the marks may be used by consumers calling for the goods.” The Board was particularly unhappy with the provision that would limit applicant’s use to New England and New York, while registrant’s use was not geographically limited.

In what may prove to be the opening gambits in an evolving area of trademark law, the Board snuffed out an application to register a mark for “retail store services featuring herbs” because the mark was being used in connection with the sale of a substance (marijuana) that is illegal under the federal Controlled Substances Act. And it likewise affirmed a refusal to register two marks for “smokeless marijuana or cannabis vaporizer apparatus,” rejecting applicant’s defense that the goods are sold only in states where marijuana is legal.

In a flurry of Section 2(e)(4) rulings, the Board focused on consumer perception rather than the more mechanical application of the traditional Benthin factors in finding the marks ALDECOA and THE BARR GROUP to be primarily merely surnames. The Board emphasized the fact that persons with the surnames at issue were prominently active in the businesses involved.

In failure-to-function cases, the Board affirmed a refusal to register a repeated diamond pattern applied to “electronic hookahs,” deeming it to be a non-distinctive, merely ornamental design that lacked acquired distinctiveness. And it upheld a challenge to two design marks comprising “I ♥ DC” on the ground that the term is ubiquitous and informational and failed to function as a trademark for clothing and assorted goods.

In the inter partes arena, the Board promptly complied with a federal district court order to vacate its precedential opinion in the HOUNDSTOOTH MAFIA case. The parties had settled the Section 1071 civil action seeking review of the Board’s decision, and as part of the settlement agreed to vacatur. The Board at first refused to do so on a motion by the University of Alabama, but the federal judge then insisted, in no uncertain terms, upon vacatur.

In a reversal of the usual situation, the Board granted a petition for cancellation of a registration owned by a wholly-owned subsidiary because the mark was used only by its parent company and the subsidiary did not control the parent’s use of the mark. In another successful cancellation proceeding, the Board confirmed that the U.S. distributor of a product was the owner of the mark in question, not the foreign manufacturer who made the product to petitioner’s order.

Finally, another fraud claim bit the dust as the Board rejected a petitioner’s allegation due to its failure to prove an intention to deceive the USPTO when respondent, in its underlying application, made its allegedly false declaration regarding the lack of third-party prior rights in a similar mark.

Section 2(d) - Likelihood of Confusion:

• Precedential No. 35: Third-Party Evidence Keys Dismissal of ROSE SENIOR LIVING Section 2(d) Opposition
• Precedential No. 24: TTAB Affirms 2(d) Refusal of MT RAINIER Logo, But Reverses on 2(e)(3)
• Precedential No. 20: TTAB Dismisses 2(d) Opposition, Opposer Fails to Prove Rights in SEXSTROLOGY
• Precedential No. 17: BLACK MEN ROCK Confusable With BLACK GIRLS ROCK!, Says TTAB
• Precedential No. 13: TTAB Dismisses 2(d) Claim but Finds MINIMELTS Merely Descriptive of Pharmaceuticals
• Precedential No. 12: TTAB Affirms 2(e)(1) and 2(d) Refusals of HOUSEBOAT BLOB for Inflatable Mattresses
• Precedential No. 5: Fame of Movie "JAWS" Supports 2(d) Refusal of Cooking Show Marks
• Precedential No. 3: Despite Consent Agreement, TTAB Finds TIME TRAVELER BLONDE Confusable With TIME TRAVELER for Beer

Section 2(e)(1) - Mere Descriptiveness

• Precedential No. 13: TTAB Dismisses 2(d) Claim but Finds MINIMELTS Merely Descriptive of Pharmaceuticals
• Precedential No. 12: TTAB Affirms 2(e)(1) and 2(d) Refusals of HOUSEBOAT BLOB for Inflatable Mattresses
• Precedential No. 6: IMÁGENES ESCONDIDAS and HIDDEN PICTURES Not the Same Mark, TTAB Affirms Mere Descriptiveness Refusal

Section 2(e)(3) - Geographically Deceptively Misdescriptive:

• Precedential No. 24: TTAB Affirms 2(d) Refusal of MT RAINIER Logo, But Reverses on 2(e)(3)

Section 2(e)(4) - Primarily Merely a Surname:

• Precedential No. 34: Divided TTAB Panel Affirms 2(e)(4) Refusal of Rare Surname ADLON
• Precedential No. 30: TTAB Affirms Section 2(e)(4) Refusal of Rare Surname "ALDECOA"
• Precedential No. 29: TTAB Affirms Surname Refusal of "BARR GROUP"

Section 2(e)(5) - Functionality:

• Precedential No. 19: TTAB Affirms Functionality Refusal of Motion Mark for Hand Tool

Section 2(f) - Acquired Distinctiveness:

• Precedential No. 36: DEEP! DEEP! DISH PIZZA Lacks Acquired Distinctiveness for Pizza, Says TTAB
• Precedential No. 18: TTAB Reverses Refusal of the Color White for Gunpowder Charges
• Precedential No. 7: Lack of Exclusive Use Dooms “AYOUB” 2(f) Surname Application

Application Requirements/Lawful Use/Specimen of Use:

• Precedential No. 32: Marijuana Vaporizers Are Illegal Under CSA, TTAB Affirms Two "JUJU" Refusals
• Precedential No. 23: TTAB Affirms Refusal Of "pitchingsmart" Due To Faulty I.D. And Specimen
• Precedential No. 21: Marijuana Sale Illegal, TTAB Affirms HERBAL ACCESS Refusal for Retail Services
• Precedential No. 15: TTAB Rejects Specimens of Use for Radio Broadcast Services

Dilution:

• Precedential No. 11: TTAB Clarifies Timing of Fame Requirement for Dilution Claim

Failure to Function:

• Precedential No. 33: "I ♥ DC" Fails to Function as a Trademark for Clothing, Says TTAB
• Precedential No. 26: Finding a Repeating Pattern Not Distinctive, TTAB Affirms Failure To Function Refusal of Hookah Ornamentation
• Precedential No. 14: FTD's Twitter Account Not a Separate, Registrable Service, Says TTAB

Family of Marks:

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

Fraud:

• Precedential No. 27: TTAB Rejects Fraud Claim in QUIRK Cancellation Proceeding

Ownership:

• Precedential No. 31: Family of Marks May Have Different Owners if There is Unity of Control, Says TTAB
• Precedential No. 9: Use by Parent Company Does Not Save Subsidiary's Registered Mark from Abandonment

Discovery/Evidence/Procedure:

• Precedential No. 28: Claim Preclusion Inapplicable To Fraud Claim Due To Different Transactional Facts
• Precedential No. 25: Issue Preclusion Applies to Standing, Says TTAB
• Precedential No. 22: Appellee Fails To Address PTO Refusals, TTAB Affirms
• Precedential No.16: Filing of Cancellation Petition Tolls Section 14 As To Adddition of New Claim
• Precedential No. 10: TTAB Grants Leave to Prepare and Serve Sur-Rebuttal Expert Report
• Precedential No. 8: TTAB Grants Pre-Trial Motion Limiting Goods in Opposed Application
• Precedential No. 4: Documents Must Be Produced in Unredacted Form, Says TTAB
  
• Precedential No. 2: TTAB Denies Protective Order Motion and Sanctions Movant
• Precedential No. 1: TTAB Clarifies Statement of Use Timing Requirement

Text Copyright John L. Welch 2016-2017.