The Trademark Reporter's 2017 "Annual Review of U.S. Trademark Cases"

The Trademark Reporter has published its Annual Review of U.S. Trademark Cases: "The Sixty-Ninth Year of Administration of the Lanham Act of 1946," by Theodore H. Davis, Jr. and yours truly, John L. Welch. (download pdf here). The issue is dedicated to the late Allan S. Pilson.

Ted Davis observes that the U.S. Constitution loomed large over trademark jurisprudence during the past year. For the first time in 138 years (and only the second time in U.S. history) the Supreme Court is considering the unconstitutionality of a federal trademark statute. Lower courts took on not only First Amendment issues, but also the Seventh Amendment's right to trial by jury trial and the role of the Eleventh Amendment's grant of sovereign immunity in trademark litigation against a state.

The TTAB, of course, does not assess the constitutionality of the Lanham Act, but merely applies its provisions to the cases at hand. The USPTO, while awaiting the outcome of the Tam case, has suspended the examination of all pending cases involving issues of disparagement and scandalousness under Section 2(a).

As Ted Davis notes, the Board hewed to its strict position regarding fraud, leaving its Nationstar v. Ahman decision of 2014 as the only case in which the Board has found fraud since In re Bose was handed down by the CAFC in 2009. But the Board made a surprising departure from its usual position that gives significant weight to concurrent use agreements when assessing likelihood of confusion. In Bay State Brewing, it rejected such an agreement 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 CAFC's decisions in Juice Generation and Jack Wolfskin brought a relaxation of the Board's approach to third-party use and registration evidence offered to show that a given mark is weak. When the number of uses and or registrations are substantial, the court held, this evidence may have probative value "on its face," even without proof of specifics regarding use of the third-party marks.

Thanks again to The Trademark Reporter for granting permission to provide a link to this issue, which is Copyright © 2017 the International Trademark Association and reprinted with the permission of The Trademark Reporter®, 107 TMR 1 (January-February 2017).

Read comments and post your comment here.

Text Copyright John L. Welch 2017.

Supreme Court Denies Belmora's Petition for Certioriari in the FLANAX Case

The Supreme Court has denied the petition for writ of certiorari filed by Belmora LLC, seeking review of the Fourth Circuit's decision in Belmora LLC v. Bayer Consumer Care AG and Bayer Healthcare LLC,  819 F.3d 697 (4th Cir. 2016). 


Belmora's FLANAX
Based on its reading of the Supreme Court’s Lexmark decision, the U.S. District Court for the Eastern District of Virginia dismissed Bayer’s Section 43(a) false association and false advertising claims under FRCP 12(b)(6) and entered judgment on the pleadings as to Bayer’s Section 14(3) claim, ruling that the Lanham Act does not allow an owner of a foreign mark not registered in the United States, who does not use the mark in the United States [Bayer], to assert priority rights over a mark that is registered and used by another party [Belmora] in this country.

The Fourth Circuit concluded that the district court misapplied Lexmark, observing that there is no requirement in the language of Section 43(a) or Section 14(3) that a plaintiff must have used its own mark in commerce in order to prevail.

In its petition, Belmora had stated the "Question Presented" as follows:

Whether Sections 14(3) and 43(a) of the Lanham Act allow a foreign business that has neither used nor registered its trademark in the United States to sue the owner of a U.S. trademark for conduct relating to the owner’s use of its U.S. mark.

Read comments and post your comment here.

Text Copyright John L. Welch 2017.

TTAB Okays Amendment of "IBOOKSTORE" to "IBOOKS STORE," Finds Acquired Distinctiveness

In this consolidated appeal, the Board reversed the USPTO's refusal to allow amendment of Apple's mark from IBOOKSTORE to IBOOKS STORE (two words), and then found that Apple had established acquired distinctiveness for the amended mark based upon the "transfer" of inherent and acquired distinctiveness from two prior registrations for the mark IBOOKS. In re Apple Inc., Serial Nos. 85008432 and 85980567 (February 23, 2017) [not precedential].

Material Alteration? "The general test of whether an alteration is material is whether the mark would have to be republished after the alteration in order to fairly present the mark for purposes of opposition. If one mark is sufficiently different from another mark as to require republication, it would be tantamount to a new mark appropriate for a new application."

The Board found that IBOOKS STORE "contains the essence of the original mark, and the new form of the mark creates the impression of being essentially the same mark as the mark in the original drawing." There is no additional or deleted wording, stylization, or design element. The Examining Attorney's "fine distinction" between the meanings of the two marks was, the Board found, not significant.

Acquired Distinctiveness: By seeking registration under Section 2(f), Apple conceded that its mark is not inherently distinctive. In any case, the Board found IBOOKS STORE to be "merely descriptive, if not highly descriptive" of Apple's recited services, namely, "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.

Applicant pointed to its ownership of two registrations for the mark IBOOKS and IBOOK, the former for "computer software used to support and create interactive, user-modifiable electronic books" (class 9), and the latter for "software for reading electronic publications on digital electronic devices; computer software for authoring, downloading, receiving, editing, displaying, storing, and organizing text, graphics, images, and electronic publication," also in Class 9. Apple claimed that under Trademark Rule 2.41(a) it was entitled to "transfer" to its pending application the distinctiveness of the IBOOKS mark, i.e., to "tack" on the use of the registered mark to its applied-for mark.

In order to qualify for such "tacking," the new mark must be the legal equivalent of the old mark: they must be "indistinguishable from one another or create the same, continuing commercial impression such that the consumer would consider both as the same mark." In addition, Apple must establish that the goods in the prior registrations are sufficiently related to the services in the new application to warrant the conclusion that the distinctiveness of the registered mark will transfer to the services listed in the application.

The Board observed that Apple disclaimed the word "store," and thus the dominant term in the applied-for mark is IBOOKS. It therefore found that IBOOKS STORE creates that same commercial impression as the mark IBOOKS. [Really? - ed.].

As to the goods and services, the Board found that the goods in the prior registrations "appear" to be closely related to the services in the involved application, since they may be used to download, display, read and store the electronic publication provided by Apple's services. In short, the goods and services provide "overlapping and otherwise related functions, and any differences between them are immaterial."

Therefore, the Board found that the distinctiveness of the IBOOKS mark will transfer to the IBOOKS STORE mark, and that Apple had made a prima facie showing of acquired distinctiveness for the applied-for mark.

Finally, the Board found Apple's specimen of use [see above] acceptable for the amended mark.

And so the Board reversed the refusals to register.

Read comments and post your comment here.

TTABlog comment: What do you think? Was the Board unusually lenient here?

Text Copyright John L. Welch 2017.

TTAB Test: Which Two of These Four Mere Descriptiveness Refusals Were Reversed?

Two of these four Section 2(e)(1) refusals were reversed. Put on your TTAB judicial robes and see if you can figure out how these recent appeals came out. [Answer will be found in first comment].



In re Blue Equity Int'l, LLC, Serial No. 86623172 (February 21, 2017) [not precedential]. [Requirement for disclaimer of BEST in the mark shown below, for various entertainment-related services].

In re BPI Sports, LLC, Serial No. 86584732 (February 21, 2017) [not precedential]. [Section 2(e)(1) refusal of BEST WORKOUT, in standard characters and with WORKOUT disclaimed, for "dietary and nutritional supplements"].

In re Fujarek , Serial No. 76709445 (February 17, 2017) [not precedential]. [Section 2(e)(1) refusal of VOICE for "broadcasting services, namely, radio and television broadcasting by satellite and mobile phones, via a global computer network"].

In re Fáilte Ireland, Serial No. 86975779 (February 14, 2017) [not precedential].Section 2(e)(1) refusal of DUBLIN PASS for "Advertising services; television and radio advertising; public relations; promoting the goods and services of others through the distribution of discount cards" and for "Information services for entertainment, recreation and education" [PASS disclaimed]].

Read comments and post your comment here.

TTABlog comment: How did you do? See any WYHA?s here?

Text Copyright John L. Welch 2017.

CORN THINS and RICE THINS Merely Descriptive But Not Generic, Says TTAB

The Board sustained oppositions to registration of CORN THINS for popped corn cakes, and RICE THINS for rice cakes [CORN and RICE disclaimed], find the marks to be merely descriptive of the goods and lacking in acquired distinctiveness. However, the Board dismissed Opposer Frito-Lay's claims that the marks are generic, or so descriptive as to be incapable of acquiring distinctiveness. Frito-Lay North America, Inc. v. Real Foods Pty., Ltd., Oppositions Nos. 91212680 and 91213587 (February 21, 2017) [not precedential].

Genericness: The evidence of record included dictionary definitions, uses of the term "thin" by the parties and by third-parties in connection with snack products, newspaper and magazine articles referring to trademarks containing the word "thin," recipes, emails from applicant's customers, third-party registrations of marks containing the word "thin," some with the word disclaimed, and survey and other expert evidence.

The Board concluded that opposer had failed to carry its burden to prove genericness by a preponderance of the evidence. "[T]he evidentiary record presents a record with mixed uses of CORN THINS and RICE THINS, as well as THINS, in a trademark and non-trademark form" And so the Board dismissed the genericness claim.

Mere Descriptiveness: The Board found that a consumer will understand immediately from applicant's marks that the goods are thin in cross section and made primarily of rice and corn. The word "thins" has been used with food products that are thin in shape, and the ubiquity of use established that "thins" is not inherently distinctive for those products. The evidence showed that "thins" describes a characteristic of the goods, i.e., its thin shape. There was no persuasive evidence to confirm applicant's contention that "thins" is a double entendre, one meaning being the "lightness of the product and its low caloric content."

The Board therefore found the applied-for marks to be merely descriptive of the goods.

Acquired Distinctiveness: The Board found the applied-for marks to be highly descriptive of a feature or characteristic of the marks. According to the Board, applicant "has done little or no advertising," and its sales figures "while not insignificant, are not high." Moreover, the use of the term "thins" is not limited to applicant. Opposer's survey, "despite its problems," still had "some probative value in demonstrating limited recognition of CORN THINS as a mark." The Board therefore agreed with opposer that applicant failed to establish acquired distinctiveness.

The Board, however, did not find the applied-for marks to be so highly descriptive that they could never function as trademarks. [For example, "The Best Beer in America"]. There was limited third-party use of "rice thins" and "corn thins." And so the Board dismissed this claim.

Read comments and post your comment here.

TTABlog comment: How many "thins" do you have to stack together to make a "fat"? BTW this case was handled under the ACR regime. Now that testimony may be submitted by declaration in all cases, will the number of ACR cases decline?

By the way, remember the PRETZEL CRISPS case, which went up to the CAFC and was remanded? Oral argument at the Board was held in June 2016. Still awaiting a decision. Why aren't TTAB oral arguments, like those at the CAFC, recorded and made available?

Text Copyright John L. Welch 2017.

TTAB Test: Is PLUM Confusable With BLACKPLUM and/or PLUMDOG for Financial Services?

The USPTO refused registration of the mark PLUM for various advisory and consulting services, including mortgage brokerage, finding the mark likely to cause confusion with the registered marks BLACKPLUM for financial advice and consultancy services, and PLUMDOG for mortgage brokerage. Applicant's services overlap with those of the cited registrations, but what about the marks? How do you think this appeal came out? In re Plum, Inc., Serial No. 86572736 (February 16, 2017) [not precedential].

Of course, the Board presumed that the overlapping services are rendered in the same channels of trade to the same classes of consumers. And although the involved services encompass sophisticated investors, the Section 2(d) determination must be based upon "the least sophisticated potential purchasers." See Stone Lion Capital Partners, 110 USPQ2d at 1163.

As to the cited mark BLACKPLUM, the evidence established that a "black plum" is the common name of a species of plum found in the United States. "Thus, the shared meaning of PLUM and BLACKPLUM engenders a very similar commercial impression." In contrast, the word PLUMDOG has "a very different connotation and commercial impression."

Unlike with BLACKPLUM, the record includes no evidence that PLUMDOG has a particular meaning. Consumers most likely would view the “plum” portion of this mark as a modifier of "dog,' such that, considered in its entirety, the PLUMDOG mark creates a commercial impression of a kind of dog. We find that this differs significantly from the impression created by PLUM alone, even for the same services. *** Overall, we find that PLUM and PLUMDOG differ, especially in connotation and commercial impression.

Applicant pointed to various third-party uses of "plum," but only four were in the relevant field. This limited evidence was insufficient to support applicant's argument that "the word ‘plum’ is not distinctive within the field of finance."

The Board therefore reversed the refusal based on the PLUMDOG registration, but affirmed the refusal in view of the  BLACKPLUM mark.

Read comments and post your comment here.

TTABlog comment: Did you pull out a plum? Or were you barking up the wrong tree?

Text Copyright John L. Welch 2017.

TTAB Affirms Refusal to Register Container Shape on Principal Register

Ouch! Well, you can't win them all! The Board affirmed a refusal to register the container shape shown below, for "dairy products, namely, skyr," on the ground that the applied-for mark comprises "a nondistinctive configuration of packaging for the goods." The Examining Attorney had accepted Applicant’s amendment to the Supplemental Register in the alternative, and so the mark will now proceed to registration on the Supplemental Register. In re Icelandic Provisions, Inc., Serial No. 86768287 (February 16, 2017) [not precedential].

The mark consists of the three-dimensional configuration of a container for the goods, the container having substantially the shape of a non-rectangular parallelogram in horizontal cross-section. Examining Attorney Kristina Morris maintained that the configuration was not inherently distinctive and therefore was eligible for registration on the Principal Register only upon a showing of acquired distinctiveness. Applicant Icelandic Provisions contended that the configuration "constitutes inherently distinctive packaging registrable without proof of acquired distinctiveness."

As usual, the Board applied the Seabrook test for determining whether a design is inherently distinctive:

(1) whether the design is a common basic shape or design;
(2) whether the design is [not] unique or unusual in the field in which it is used;
(3) whether the design is a mere refinement of a commonly-adopted and well-known form of ornamentation for the particular class of goods viewed by the public as a dress or ornamentation for the goods; or
(4) whether the design is capable of creating a commercial impression distinct from any accompanying matter.

The Examining Attorney argue that a parallelogram is a basic geometric shape, and that Applicant’s parallelogram-shaped containers are merely a refinement of the square- and rectangular-shaped containers commonly used in the dairy industry. Applicant pointed to the rounded corners and sloped sides of the container as distinguishing and distinctive features.

The Board agreed with applicant that there was no evidence "showing use of the same exact configuration as that used by Applicant." But it found that the evidence submitted by the Examining Attorney showed that "many yogurt and similar dairy products are sold in containers having square, rectangular and oblong shapes, i.e., three-dimensional configurations, having tapered sides and rounded corners."

[P]urchasers and prospective customers for Applicant’s goods would be unlikely to regard its three dimensional configuration as identifying and distinguishing Applicant’s skyr and indicating its source.

Viewing applicant's specimen of use, the Board found that "[t]he wording and design elements applied to Applicant’s container contribute to the overall trade dress, and we see no basis for a finding that the shape of Applicant’s container creates a separable commercial impression."

Prospective customers viewing yogurt and related dairy product containers including those shown in the record and those used for Applicant’s goods, are likely drawn to the products by viewing the prominent word marks, logos and the decorative colors used on the packaging i.e., indicia other than the relatively common geometric shapes of the product containers.

And so the Board affirmed the refusal to register on the Principal Register.

Read comments and post your comment here.

TTABlog comment: If, in considering a container shape, the Board looks to the labeling and other indicia on the container, can any container be inherently distinctive? I.e., won't the consumer nearly always be "drawn to the products by viewing the prominent word mark, logos and the decorative colors?" Is a survey a must in these cases?

Text Copyright John L. Welch 2017.

Matthew Swyers (The Trademark Company) Excluded from Practice Before USPTO

Michael E. McCabe, Jr. reports (here), at his IP Ethics and Insights blog, that Matthew Swyers, owner of The Trademark Company, has entered into an "exclusion on consent" agreement with the USPTO, by which Mr. Swyers has voluntarily given up the ability to provide U.S. trademark-related legal services for a minimum of five (5) years.

Although Mr. Swyers denied engaging in any wrongdoing, his exclusion on consent comes with a significant caveat: if he ever seeks reinstatement to practice again before the USPTO (which he cannot do for at least five years), the OED Director will conclusively presume for purposes of considering his reinstatement petition both: (1) the allegations in the disciplinary complaint are true; and (2) Mr. Swyers could not have defeated those allegations.

Read comments and post your comment here.

Text Copyright John L. Welch 2017.

TTAB Dismisses 2(d) Opposition to ANTARCTIC ICE MARATHON Due to Failure to Prove Priority

The Board dismissed this opposition to registration of the mark shown below, for clothing and event services [ANTARCTIC ICE MARATHON & 100K and the geographic representation of Antarctica disclaimed], finding that, as to Opposer Marathon Tours' Section 2(d) claim, opposer failed to prove priority for its alleged mark ANTARCTICA MARATHON, and as to its fraud claim, opposer failed to prove, or even allege, an intent to deceive the USPTO. Marathon Tours, Inc. v. Richard Donovan, Opposition No. 91214916 (February 14, 2017) [not precedential].

Opposer Marathon Tours created and organized the Antarctica Marathon in 1995, held in the Shetland Islands. Due to environmental restrictions, only one or two hundred runners participated in any year. Revenues were about $1.3 million in 2007, and about $1.9 million in 2015. Unsolicited media coverage has been limited and sporadic.

Applicant Donovan has been organizing his event since 2006. His races occur in the interior of the Antarctic, and his event has been featured on American media. 


Section 2(d) Priority: Marathon Tours relied on its alleged common law rights to prove priority. It therefore had to prove that its mark was distinctive, either inherently or via acquired distinctiveness, and that it had priority of use. The Board noted that opposer had applied to register ANTARCTICA MARATHON and had claimed acquired distinctiveness under Section 2(f). [The application was blocked by Mr. Donovan's application]. That was an admission by Marathon Tours that its alleged mark was not inherently distinctive.

As to acquired distinctiveness, the Board found ANTARCTICA MARATHON to be highly descriptive, and therefore opposer had a higher burden to show acquired distinctiveness. [Note: the Shetland Islands are not in Antarctica, but the Board declined to consider the misdescriptiveness issue].

Although Marathon Tours began offering the relevant services in 1995, the ANTARCTICA MARATHON race did not become a regular and annually-recurring event until 2008. Media recognition consisted of four media articles during the period 1995-2007, all before the race became an annual event. Applicant Donovan, on the other hand, began offering his race in 2006 and has been offering it annually and regularly ever since. It attracted unsolicited media attention from the git-go, and the attention has continued to the present at a scale that far outpaces the media attention for opposer's race.

The Board concluded that Marathon Tours had failed to show both that use of its mark is substantially exclusive and that the mark had acquired distinctiveness. Thus opposer cannot show priority, and its Section 2(d) claim must fail.

Fraud: Marathon Tours alleged that applicant Donovan never operated or conducted its marathon races "in commerce regulated by the United States," and he therefore made a knowingly false statement upon with the USPTO relied.

However, Marathon Tours failed to allege, nor did it offer any proof, that applicant's statements (even if false) were made with the intent to deceive the USPTO. [Applicant Donovan testified that he targets US customers and offers his services in the USA]. Therefore, opposer's fraud claim failed as well.

And so the Board dismissed the opposition.

Read comments and post your comment here.

TTABlog comment: Looks like we have two entities using similar, descriptive marks for nearly the same services. Sounds like the recent CHICAGO STAGEHAND case. But at least there the stagehands were in Chicago.

Text Copyright John L. Welch 2017.

TTAB Affirms Rejection of New Drawing, Reverses Geographical Refusal of OAK PARK Design Mark for Beer

The Board rejected applicant's attempt to amend the drawing of the mark shown below to delete the words "SACRAMENTO CA," finding that such an amendment would be a material alteration of the mark as filed. However, the Board reversed a Section 2(e)(2) refusal of the original mark for beer because Oak Park of Sacramento, California, is too obscure a location. In re Oak Park Brewing Company, Inc., Serial No. 86329948 (February 14, 2017) [not precedential].

Material alteration: In an application under Section 1(b), an applicant may amend the drawing of the mark if "[t]he proposed amendment does not materially alter the mark." Rule 2.72(b)(2). The general test is whether the mark would have to be republished after the alteration. In short, the new and old versions must create the same commercial impression.

The evidence showed that there are several locations named "Oak Park" in the United States, including Oak Park, Illinois, known for the large collection of homes designed by Frank Lloyd Wright. It is also the birthplace of Ernest Hemingway and contains three homes of writer and Tarzan creator Edgar Rice Burroughs.

The Board concluded that removal of "SACRAMENTO CA" changes the commercial impression of the mark because it no longer refers to Oak Park of Sacramento, California, but may refer to another Oak Park. Or OAK PARK may simply be seen as an arbitrary designation of a park dominated by trees, with no geographical reference.

And so the Board affirmed the rejection of the proposed new drawing.

Geographical Descriptiveness The first prong of the Section 2(e)(2) test requires that the mark (or portion thereof) be a place generally known to the public. The USPTO's evidence showed that Oak Park is located within the Sacramento city limits. The population of Sacramento is about 400,000. Newspaper stories established "[a]t best" that a former mayor of Sacramento, who played in the NBA, grew up in Oak Park of Sacramento.  [Can you name him?]

Considering the evidence as a whole, the Board was not persuaded that "Oak Park" identifies a geographic location generally known to the American purchasing public for beer. Oak Park in Sacramento is minor and obscure. At one time it was an important suburb of Sacramento, but fell into decline. Although Sacramento is not an insignificant city, nothing in the record indicated that the specific area of Oak Park has any significance outside of Sacramento. "At best, the record showed that one professional basketball player grew up there, a fact probably not generally known to the American beer-drinking public."

Because the USPTO failed to satisfy the first prong of the Section 2(e)(2) test, the Board reversed the refusal.

Read comments and post your comment here.

TTABlog comment: Talk about obscure? That's what the words SACRAMENTO CA are in the applied-for mark. I think the USPTO should have allowed the amendment of the drawing and then refused registration under Section 2(e)(3).

Text Copyright John L. Welch 2017.

TTAB Denies NEW YORK FAIR AND LOVELY Cancellation Petition - Abandonment not Proven

The Board denied Unilever's petition for cancellation, in whole or in part, of a registration for the mark NEW YORK FAIR AND LOVELY for "Skin soaps, skin cleansers, cosmetics," in International Class 3, and for "Medicated skin creams and medicated skin lotions," in International Class 5. Unilever claimed that respondent had abandoned the mark as to some or all of the identified goods, but Unilever failed to carry its burden of proof. Unilever PLC v. Technopharma Limited, Cancellation No. 92056654 (January 20, 2017) [not precedential].

Grounds for cancellation: Unilever argued that the registration should be cancelled in its entirety because respondent's Section 8 Declaration failed to establish continued use. The Board pointed out, however, that because respondent's registration is more than five years old, Section 1064 limits cancellation to certain enumerated grounds, and filing a faulty Section 8 Declaration is not one of them. Nor is alleged error by the Director's office in the examination of the Section 8 Declaration.

Abandonment: The Board chose to consider Unilever's claim regarding the Section 8 Declaration as a claim of abandonment. Unilever was required to show, by a preponderance of the evidence, that use of the mark "has been discontinued with intent not to resume such use." 15 U.S.C. § 1127.

Reviewing the skimpy record, the Board concluded that Unilever had failed to meet its burden of proof.

Overall, the issue of the actual cessation of use of Respondent’s mark was insufficiently developed at trial to persuade us that an abandonment occurred. The amount of documentation of Respondent’s sales is indeed scant, and Mr. Farah’s testimony is not compelling. However, the burden of demonstrating abandonment is on Petitioner. The evidence of record is consistent with modest ongoing commercial activity under the mark. Even if use of the mark on some or all of the goods was not continuous, there is evidence of record that helps refute any notion of an intention not to resume use ....

Lawful use: Unilever also contended that any use of respondent’s mark did not qualify as "lawful use" because respondent did not comply with federal labeling laws. However, this claim was not mentioned in the petition for cancellation and was "only lightly touched upon at trial." Therefore, the Board agreed with respondent that the issue was not tried by consent, and further that respondent did not have adequate notice of the claim.

In any event, the claim would fail because there had been no final determination of noncompliance by any competent court or agency regarding the sale of respondent's goods. Nor was this a per se violation of applicable law. Unilever failed to adduce the required clear and convincing evidence of a violation.

And so the Board denied the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: A not very interesting soap opera.

Text Copyright John L. Welch 2017.

HONEYFILE Merely Descriptive of Security Software, Specimen Unacceptable, Says TTAB

The Board affirmed a Section 2(e)(1) refusal of the mark HONEYFILE, finding it merely descriptive of "computer software platforms for use in the field of computer network security that assist in the tracking of data exfiltration and network intelligence" and for related computer security services. The Board also affirmed the USPTO's rejection of applicant's specimen of use for the software because it constituted mere advertising. In re Bitvoyant, Serial No. 86693221 (February 9, 2017) [not precedential].

Mere Descriptiveness: The evidence established that, in the cybersecurity industry, a "honeyfile" is a "bait file that is intended for hackers to open, and when the file is opened, an alarm is set off." Applicant's specimens confirmed this finding: "We design HONEYFILES to attract adversaries with feasible mock assets." Thus the applied-for mark immediately informs consumers of a "quality, feature, function or characteristic" of applicant's goods and services. Despite applicant's arguments, the Board failed to find any incongruous meaning in the mark when considered in the context of security software and services.

Class 9 specimen of use: Applicant's specimens of use consisted of screenshots of its website, but the Examining Attorney maintained that the specimens were merely advertising materials and did not constitute a "display associated with the goods" because there was no means for ordering the software.

The Board looked to Section 904.03(e) of the TMEP (Jan. 2017), which states that for downloadable software an applicant may submit a specimen showing use of the mark on an Internet website. Such a specimen is acceptable if it "creates an association between the mark and software and provides sufficient information to enable the user to download or purchase the software from the website." *** If the website simply advertises the software without providing a way to download, purchase, or order it, the specimen is unacceptable."

The Board agreed with the examining attorney that applicant's specimens of use were unacceptable.

None of Applicant’s proffered specimens includes a "download" or similar link to put the consumer on notice that the identified goods are indeed available for download or the equivalent thereof. As such, the specimens cannot qualify as a display associated with the goods on this basis.

As noted above, a display of a mark on a screen that appears when computer software is in use is a suitable display associated with the goods. Here, there is no evidence to indicate that that is the nature of the specimens. The specimens merely provide a description of Applicant's products, in the nature of mere advertising. This, however, is not enough.

The Board concluded that applicant's specimens of use failed to show use of the mark in commerce with applicant's class 9 goods.

Read comments and post your comment here.

TTABlog comment: I guess you could say the Board "Pooh-Poohed" applicant's non-descriptiveness argument? Oh, never Milne!

Text Copyright John L. Welch 2017.

Effective Date of New Post-Registration Proof-of-Use Rule Delayed Until March 21st

The USPTO has announced (here) that the effective date of the final rule entitled "Changes in Requirements for Affidavits or Declarations of Use, Continued Use, or Excusable Nonuse in Trademark Cases," has been re-set to March 21, 2017. Under the new rule, briefly discussed here, the USPTO may require additional information to verify that a mark is in use in commerce in connection with particular goods/services identified in the registration, unless excusable nonuse is claimed.

In accordance with the memorandum of January 20, 2017, from the Assistant to the President and Chief of Staff, entitled "Regulatory Freeze Pending Review," this action delays the effective date of that final rule 60 days from the date of the January 20, 2017 memo. The effective date of the January 19, 2017 final rule, which would have been February 17, 2017, is now March 21, 2017. The 60-day delay in the effective date is necessary to give agency officials the opportunity for further review of the issues of law and policy raised by the rule.

Read comments and post your comment here.

Text Copyright John L. Welch 2017.

Precedential No. 2: TTAB Affirms Rejection of Specimen of Use for CONEY ISLAND BOARDWALK CUSTARD

The Board affirmed a refusal to register the mark CONEY ISLAND BOARDWALK CUSTARD, in standard character form, for frozen custards [CONEY ISLAND and CUSTARD disclaimed] due to applicant's failure to submit an acceptable specimen of use. Applicant contended that its specimen qualified as a display closely associated with the goods offered for sale in a Boardwalk stand. The Board, however, concluded that consumers would not be likely "to associate the mark with the goods such that the specimen serves as an inducement to the sale of the goods." In re Kohr Brothers, Inc., 121 USPQ2d 1793 (TTAB 2017) [precedential]. 

Section 45 of the Trademark Act states that a mark is deemed to be used in commerce on goods when "(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and (B) the goods are sold or transported in commerce." Because Section 45 does not define the term "displays associated therewith," the Board must determine on a case-by-case basis whether a particular specimen qualifies as a "display" adequate to demonstrate use in commerce. The Board observed that "mere advertising" does not suffice. A display must catch the attention of the consumer, who will associate the mark with the goods and be induced to buy them.

Applicant stated that its specimen of use, shown below, is located at eye level on a wall facing the customer as he or she approaches the counter to purchase the goods. It contended that this presentation qualified as a display associated with the goods because (1) the sign includes a picture of the goods and (2) the goods are "in close proximity to the specimen sign as displayed."

The Board, however, noted that most cases concerning a picture of the goods involve a catalog display or a webpage that includes information about the goods to allow a customer to place an order. Here, applicant does not provide information about the goods, portion sizes, flavors, cost, etc. The stylized drawing of a cone, in conjunction with the depiction of a Ferris wheel, is likely to be seen as evoking the Coney Island amusement park in Brooklyn. [Did you know that the Ferris wheel was invented by a man named George Ferris for the 1893 World's Columbian Exhibition in Chicago?] In short, Thus, the depiction of a cone "is more likely to be perceived as part and parcel of a composite word and design mark than as an unmistakable indication of the nature of Applicant’s goods."

Moreover, the mark in the specimen "is not displayed at the point of purchase in such a way that the customer can easily and directly associate the mark with the goods, which are said to be in proximity but not shown to be so." The sign is small - about the size of an envelope - and is located next to a business license and a certificate from the Delaware Health and Social Services Division of Public Health, "hardly a place where a merchant would place material intended 'to catch the attention of purchasers and prospective purchasers as an inducement to make a sale.'" TMEP Section 904.03(g).

In any event, while a consumer might look for a menu posted on a wall facing prospective customers, a consumer would not regard a sign placed together with certificates from the health department and a regulatory agency to be a trademark for the goods. Hence, the sign cannot be considered a display associated with the goods.

Even if, as applicant contended, it was not practical to place the mark on the goods, applicant's sign does not display the mark in such a way as to serve as an inducement to customers to buy the goods. In short, "the specimen is not a display that is easily and directly associated with the goods and cannot serve to support the required showing of use."

And so the Board affirmed the refusal under Section 1 and 45 of the Trademark Act,

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TTABlog comment: The same mark is registered (Reg. No. 4939484) by applicant for "retail stores featuring frozen desserts and beverages." Check out the specimens of use in that case.

PS: If applicant's sells its goods from a retail outlet in Delaware, is this mark geographically misdescriptive? geographically deceptively misdescriptive?

Text Copyright John L. Welch 2017.

TTAB Test: Is DEEP SOUTH Geographically Descriptive of Movie Studio Services?

The USPTO refused registration of the mark DEEP SOUTH STUDIOS, in standard character and design form, for "movie studio services," finding the term "DEEP SOUTH" to be primarily geographically descriptive of the services under Section 2(e)(2). Applicant, located in New Orleans, argued that "Deep South" is "amorphous" and is not the mark’s primary significance. How do you think this came out? In re Deep South Studios LLC, Serial Nos. 86896313 and 86896327 (February 9, 2017) [not precedential].

The Board found that the primary significance of "Deep South" is a place generally known to the public. Reference works discuss the Deep South as including Louisiana. The Board presumed that the public would believe that applicant's services emanate from the Deep South because applicant is based in Louisiana. Finally, there was no dispute that applicant's service emanate from the Deep South.

Applicant argued that New Orleans is not part of the Deep South, but the Board found that the evidence relied upon by applicant merely differentiate New Orleans culturally and in other ways from other parts of the Deep South. It did not say that New Orleans is not part of the Deep South.

"The purpose of the proscription in Section 2(e)(2) of the Act against registration of primarily geographically descriptive terms is to leave place names free for all businesses operating in particular areas to inform customers where the goods or services originate. It would be completely inconsistent with the objectives of the Trademark Act" to register DEEP SOUTH for Applicant’s movie studio services rendered in the Deep South unless applicant had claimed and proved that the term has acquired secondary meaning. In re MCO Properties, 38 USPQ2d at 1156.

And so the Board affirmed the refusal of the standard character mark, and affirmed the refusal of the design mark for failure to disclaim DEEP SOUTH and STUDIOS.

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TTABlog comment: How about DEEP! DEEP! SOUTH ?

Text Copyright John L. Welch 2017.

TTAB Test: Is 100 PERCENT WINE Confusable with CENTO PER CENTO for Wine?

The USPTO refused registration of the mark 100 PERCENT WINE, finding it likely to cause confusion with the registered mark CENTO PER CENTO, both for wine. The English translation of the Italian term is '100 percent.' Applicant argued that 99.7% of Americans who are old enough to purchase wine do not speak Italian, and therefore the average American purchaser would not stop and translate the mark into English. How do you think this came out? In re Big Heart Wine, LLC, Serial No. 86376188 (January 20, 2017) [not precedential].

The Board found no need to determine whether Italian is familiar to an appreciable segment of American consumers. The doctrine of equivalents applies to "words from common, modern languages." The doctrine has been applied to Italian terms in a number of Board rulings. In any case, applicant's own evidence showed that Italian is a common, modern language. As of 2007, nearly 800,000 Americans spoke Italian.

Applicant next argued that consumers will translate a familiar foreign word only when the word is descriptive of the goods. However, it cited no authority for that proposition, and the Board found none.

The Board observed that applying the doctrine of equivalents to discern the meaning of the foreign term is only part of the Du Pont analysis. The Board must also consider the similarity or dissimilarity of the marks in appearance, sound, and all other Du Pont factors.

Here, the Board found applicant's mark 100 PERCENT WINE to be similar in appearance and sound to CENTO PER CENTO, since PERCENT sounds like PER CENTO. CENTO PER CENTO is conceptually strong as a trademark. Of course, the goods are identical and the Board must presume that they travel through the same channels of trade to the same classes of consumers.

Finally, applicant argued that the goods would be purchased by sophisticated consumers, but the identifications of goods were not limited to fine wines offered at high prices to consumers with specialized knowledge and discerning palates.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Was the Board 100 percent correct?

Text Copyright John L. Welch 2017.

New Post-Registration Proof-of-Use Rule Goes Into Effect February 17th

Effective February 17, 2017, the USPTO is amending its rules concerning the examination of affidavits or declarations of continued use or excusable nonuse filed under Section 8 or Section 71 of the Trademark Act. Under the new rule, the USPTO may require additional information to verify that a mark is in use in commerce in connection with particular goods/services identified in the registration, unless excusable nonuse is claimed. [See Federal Register announcement of January 19, 2017 (here)].

In order to assess and promote the accuracy and integrity of the Trademark Register, the United States Patent and Trademark Office (USPTO or Office) amends its rules concerning the examination of affidavits or declarations of continued use or excusable nonuse filed pursuant to section 8 of the Trademark Act, or affidavits or declarations of use in commerce or excusable nonuse filed pursuant to section 71 of the Act. Specifically, under the regulations enacted herein, the USPTO may require the submission of information, exhibits, affidavits or declarations, and such additional specimens of use as may be reasonably necessary for the USPTO to ensure that the register accurately reflects marks that are in use in commerce in the United States for all the goods/services identified in the registrations, unless excusable nonuse is claimed in whole or in part. A register that does not accurately reflect marks in use in commerce in the United States for the goods/services identified in registrations imposes costs and burdens on the public. The amended rules will allow the USPTO to require additional proof of use to verify the accuracy of claims that a trademark is in use in commerce in connection with particular goods/services identified in the registration.

In a two-year study conducted by the USTPO, the owners of approximately 50% the 500 randomly-chosen registrations in which Section 8 or 71 declarations had been filed, were unable to verify that the involved marks were still in use on the identified goods/services.

Read comments and post your comment here.

Text Copyright John L. Welch 2017.

Recommended Reading: Jeanne C. Fromer, "The Unregulated Certification Mark(et)"

The recent TTAB decision regarding the TEQUILA certification mark [TTABlogged here] may have whet (or wet) your appetite for a more extensive discussion of certification marks. Professor Jeanne C. Fromer of New York University School of Law will slake your thirst with her recent article entitled "The Unregulated Certification Mark(et)," 69 STAN.L.REV.121 (2017) [pdf here].

Abstract: Certification mark law—a branch of trademark law—itself enables consequences that undermine the law’s own goals through inadequate regulation or oversight. Because the law allows certification standards to be kept vague, high-level, and underdeveloped, a certifier can choose to exclude certain businesses inconsistently or arbitrarily, even when those businesses’ goods or services would seem to qualify for the certification mark (particularly to consumers). Moreover, even when a certification standard is clear and complete, certifiers can wield their marks anticompetitively. They can do so through redefinition—something certification mark law currently allows without oversight—to ensure that certain businesses’ goods or services will not qualify for the mark. Both of these forms of certification mark manipulation undermine the goals of certification marks: to protect consumers by providing them with succinct information on goods’ or services’ characteristics and to promote competition by ensuring that any businesses’ goods or services sharing certain characteristics salient to consumers qualify for a mark certifying those characteristics. The law should be restructured to curb this conduct. I advocate for robust procedural regulation of certification standardmaking and decisionmaking that would detect and punish poor certification behavior. Moreover, for anticompetitive behavior that nonetheless slips through the regulatory cracks, I suggest that attentive antitrust scrutiny be arrayed to catch it.

Read comments and post your comment here.

Text Copyright John L. Welch 2017.

CHICAGO STAGEHAND Supplemental Registration Cancelled by Prior User Despite No Acquired Distinctiveness

In this unusual factual situation involving two geographically descriptive terms, the Board granted a petition for cancellation of a Supplemental Registration for the mark CHICAGO STAGEHAND, in standard character form, for "employment staffing in the field of labor and technical support in live corporate, concert and special events," on the ground of likelihood of confusion with the prior-used mark CHICAGO STAGEHANDS for union and staffing services in the live-event and production industry services in the live-event and production industry. The Board found that neither mark had acquired distinctiveness, and so the only issue was whether petitioner used the mark first. Theatrical Stage Employees Union Local No. 2 of the International Alliance of Theatrical Stage Employees and Moving Picture Technicians, Artists and Allied Crafts of the United States and Canada v. David B. Eaves, Cancellation No. 92055242 (February 1, 2017) [not precedential]..



The Board pointed out that in the ordinary case, when two parties vie for proprietary rights in a descriptive term, the case turns not on who used the term first, but on which party's mark first achieved acquired distinctiveness. Here, the Board found that neither party had established acquired distinctiveness. It therefore chose to follow the CAFC's dictum in Books on Tape, where the court pointed out that the owner of a Supplemental Registration has no proprietary rights in the registered mark, and that a challenger need not prove proprietary rights (as is usually required to challenged a registration on the Principal Register or a distinctive unregistered mark). In other words, a party "need not wait until it has acquired distinctiveness in its mark before seeking to clear away the impediment."

Priority: Respondent began operating his business in 2009, with use analogous to trademark use as early as March 2009. Petitioner's technical trademark use of CHICAGO STAGEHANDS was very limited and not continuous (i.e., sporadic). According to petitioner's witnesses, the mark appeared on apparel at times prior to 2009.

More significant was the testimony of third parties that they used and recognized CHICAGO STAGEHANDS as a reference to petitioner. This evidence demonstrated that people in the live event trade have used this phrase to describe petitioner and its members, "have found this phrase to immediately convey information about Petitioner and its members; and that they expect others to understand them when they use the phrase to refer to Petitioner and its members." Petitioner submitted press notices and publications in which CHICAGO STAGEHANDS has been used to describe petitioner and its members.

Courts have, on occasion, found that even where a company itself has not used a mark, use of the mark by the relevant public for the purpose of referring to the company may inure to the benefit of the company even to the extent of resulting in a protectable property right in the term.

The Board found that this evidence of petitioner's limited use of the term CHICAGO STAGEHANDS, coupled with the public's ongoing use of that term to describe and refer to petitioner, "are together sufficient to show descriptive use of the term pointing to Petitioner that is prior to any use of the term CHICAGO STAGEHANDS by Respondent."

Acquired Distinctiveness: Respondent's mark is a highly descriptive term. The amount of business and his efforts to advertise have been very small. Moreover, his use of the term has not been exclusive. Considering all the evidence, the Board concluded that respondent's mark lacked acquired distinctiveness.

Petitioner submitted a great deal of evidence but it was mixed and equivocal with regard to the way the public viewed the term CHICAGO STAGEHANDS. There was very little evidence regarding promotion of the mark or name, and furthermore since 2009 petitioner's use of the term has not been exclusive. Again, the Board concluded that the evidence of acquired distinctiveness was insufficient.

Likelihood of Confusion: The Board found that the services overlap and the marks are identical. It also found that confusion is likely to arise by reason of concurrent use of the two marks as source identifiers.

Conclusion: Neither party demonstrated a protectable proprietary interest in its designation. The Board's determination does not affect the right of either party to continue use of its designation, nor does it foreclose either party from demonstrating at another time on a different record that it has in fact acquired distinctiveness.

And so the Board granted the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: Can a term by generic in a particular location? I think so.

Text Copyright John L. Welch 2017.

TTAB Finds the Color Green Functional for Lawn Sprinklers

The TTAB affirmed the USPTO's refusals to register six design marks - comprising the color green applied to the top portion of a sprinkler head and contrasting with an adjoining portion - for lawn sprinklers, finding the proposed marks to be functional under Section 2(e)(5) and, alternatively, lacking in acquired distinctiveness. In re Orbit Irrigation Products, Inc., Serial Nos. 85945749 et al. (January 31, 2017) [not precedential].

Functionality: A single color can be source-identifying (think pink fiberglass insulation), or it can be functional (black for outboard motors and floral packaging). [Or it could be neither - ed.]. Applicant argued that the color green is not essential to the use or purpose of the sprinkler heads, and does not affect cost or quality. See Inwood Labs. Nor do the Morton-Norwich factors indicate functionality.

However, a feature that is not functional under Inwood is still barred from registration "if the exclusive appropriation of that feature would put competitors at a significant non-reputation related disadvantage." FTD, citing Qualitex.

Here, there is a competitive need for lawn care product manufacturers to use the color green to help their products blend in with the landscape. Permitting applicant to exclusively appropriate the color green would put its competitors at a disadvantage.

Applicant pointed to the contrast in color between the green top and the sides of its devices, which calls to mind the Louboutin case, in which the Second Circuit found that the red-lacquered outsole on high heels served as a source indicator when it contrasted with the color of the adjoining shoe portion. The Board pointed out, however, that unlike such high heels, sprinklers commonly are found with green tops and contrasting sides, which helps them to blend with the landscape. Thus unlike in Louboutin, here the contrast in color serves a function.

It makes no difference that competitors could offer a variety of colors other than green, because to limit their options would be unfair. In short, registration of the proposed marks would put competitors at a significant non-reputation based disadvantage, and so the marks are functional under Section 2(e)(5).

Acquired Distinctiveness: For the sake of completeness, and assuming arguendo that the proposed marks are not functional, the Board considered applicant's Section 2(f) claim.

Applicant pointed to its twenty years of sales of green-topped sprinkler heads, its sale of more than 2.6 million units per year (for more than $25 million), its advertising expenditures in recent years of $3.5 million annually, and its "look for" advertising.

Applicant also provided declarations from three large distributors stating that they recognize the green-top sprinkler heads as indicating Orbit as the origin of the goods.

The Board, however, agreed with Examining Attorney Tasneem Hussain that Orbit's showing was insufficient. First, Orbit failed to show that its use of the color green was "substantially exclusive," as required by Section 2(f). "Given the ubiquity of use of the color green on lawn care products in general, and on competitors' sprinkler heads in particular, Applicant's lengthy use of the same color does not transform it into a source indicator."

Furthermore, applicant's sales figures evince the products' popularity, not necessarily the public's recognition of the color green as a mark. As to the "look for" advertising, applicant did not provide specific information as to how long and how widely it used this type of advertising. Finally, the three declarations had limited probative value, since they were conclusory form statements from a small segment of the market. There was no direct evidence of public perception of the color green as a mark.

The Board concluded that applicant did not meet its "unusually high burden" of proving that its proposed marks had acquired distinctiveness.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: The sprinkler heads that I have on Cape Cod are black. But then, there's not much grass in my yard. Maybe they should be a sandy brown?

Text Copyright John L. Welch 2017.

TTAB Finds "THE LAUNDRY CAFE" Generic for ..... Guess What?

The Board affirmed a refusal to register THE LAUNDRY CAFE on the Supplemental Register, finding the term to be generic for "providing washing and drying laundry facilities," in International Class 37, and "Café and restaurant services," in International Class 43. Applicant argued that the recited services must be considered separately, but the Board agreed with Examining Attorney James T. Griffin that the relevant genus is the combination of laundry and restaurant services. In re Holland Akins Ventures, LLC, Serial No. 86650058 (January 31, 2017) [not precedential].

The Board pooh-poohed the PTO's foreign evidence: "foreign websites show the use of words by foreign writers, and they cannot, alone, demonstrate that U.S. persons have adopted the terminology used abroad." However, the Board did give probative value to the Internet evidence showing use of the phrase "laundry cafe" in various parts of this country to refer to a combination laundry and cafe. Two of the examples showed spontaneous use of the phrase "laundry cafe" by reporters, two involved businesses that chose the phrase to identify themselves, and another was "a blogger’s detailed description of his reaction to seeing a store marked LAUNDRY CAFÉ, showing that he understood it to refer to a café associated with a laundry."

The record also included a registration for THE LAUNDROMAT CAFE, in which "laundromat cafe" was disclaimed.

The CAFC's Princeton Vanguard decision requires that, even when the combination consists of two generic words, the Board must discern "the public’s understanding of whether joining those individual words into one lends additional meaning to the mark as a whole."

Here, the evidence of the public's understanding was not voluminous, the Board noted, but it was "sufficient to demonstrate that the relevant public would understand THE LAUNDRY CAFE primarily to refer to cafés that offer laundry services and laundries that offer café services." Of particular import was the fact that two writers spontaneously chose the term "laundry cafe" to identify businesses similar to that of applicant.

And so the Board affirmed the refusal.

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TTABlog comment: I'll have a detergent burger and a glass of fabric softener.

Text Copyright John L. Welch 2017.

TTAB Test: Is RAINSCAPES Merely Descriptive of Irrigation Services?

The USPTO refused to register the logo mark shown below, for "installation and maintenance of residential and commercial irrigation systems; and lighting installation services," on the ground that Applicant failed to comply with the Examining Attorney's requirement for disclaimer of the word RAINSCAPES. Applicant argued that rainscapes (which preserve and recycle rain water) are used "in lieu of," or are "the complete opposite of" irrigation systems. The Board rendered a split decision. How do you think this came out? In re Rainscapes Construction, Inc., Serial No. 86906294 (January 27, 2017) [not precedential].

Examining Attorney John D. Dalier relied on dictionary definitions of "irrigation" ("the distribution of water over the surface of the ground, in order to promote the growth and productiveness of plants"), and Internet evidence ("[r]ainscapes are landscape enhancements that reduce stormwater runoff from properties ... Rainscapes simulate natural drainage to intercept, capture and absorb rain into the ground") in finding "rainscapes" descriptive of applicant's services.

Applicant's specimen of use revealed "not only that Applicant provides irrigation services, but also that it is committed to water conservation in performing those services." The Board noted that water conservation is a goal of both rainscapes and irrigation

The panel majority had no doubt that "rainscapes" is merely descriptive of applicant's irrigation services, because "rainscapes supply land with water, which is one definition of 'irrigation,' and can support plants’ need for water, which is another."

They majority concluded that "RAINSCAPES immediately conveys knowledge of a quality, feature, function, characteristic or purpose of Applicant’s irrigation services. Customers will understand that Applicant uses “rainscapes” in at least some of its irrigation systems.

Finally, the majority observed, "applicant’s competitors which use rainscapes to irrigate, or in conjunction with irrigation products and services, should, like Applicant, have the opportunity to use the term “rainscapes” or variations thereof to describe their goods and services."

And so the panel majority affirmed the disclaimer requirement.

In dissent, Judge Bergsman contended that the evidence did not show that “Rainscapes” is merely descriptive when used in connection with applicant's recited services. "[N]one of the websites discussing 'Rainscapes' make reference to installing irrigation systems."

Irrigation and rainscaping are distinct but related processes. As noted by the majority, the term “Rainscape” refers to a landscaping technique intended to preserve and recycle rainwater. It is designed to be used in lieu of irrigation whereas irrigation is the application of water to landscape. According to Wikipedia, “[i]rrigation is often studied together with drainage, which is the natural or artificial removal of surface and sub-surface water from a given area.

Therefore, RAINSCAPES need not be disclaimed.

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TTABlog comment: How did you do? Note that, whether or not the mark is registered, competitors can still use the term "rainscapes" descriptively.

Text Copyright John L. Welch 2017.