The TTABlog<sup>®</sup>: 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.