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.