TTAB Quarterly Index: January - March 2017

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Section 2(b) - Flag, coat of arms, insignia:

• Precedential No. 3 = TTAB Test: Does this Mark Include a Simulation of the Swiss Flag?

Section 2(d) - Likelihood of confusion:

• Despite Applicant's Prior Registrations, TTAB Affirms 2(d) Refusal of SWIRL WORLD & Design for Frozen Yogurt
• TTAB Test: Which of These Four Section 2(d) Refusals Was Reversed?
• TTAB Test: Are These Flying Bird Marks Confusingly Similar?
• CITY OF HEROES for Clothing Confusable with Same Mark for Video Games, Says TTAB
• TTAB Test: Is "THE GREEN PEPPER" Confusable With "GREEN BURRITO" For Restaurant Services? [Yes]
• TTAB Test: Which Two of These Four Section 2(d) Refusals Were Reversed?
• TTAB Test: Is PLUM Confusable With BLACKPLUM and/or PLUMDOG for Financial Services?
• TTAB Test: Is 100 PERCENT WINE Confusable with CENTO PER CENTO for Wine? [Yes]
• TTAB Test: Is MERLIN for Watches Confusable with MERLIN for Clothing?
• Fame of adidas 3-Stripes Mark Yields Section 2(d) Summary Judgment
• TTAB Test: Is BEACH HUGGY for Pillows Confusable With HUGGY PETS for Decorative Pillowcases? [Yes]
• TTAB Orders Cancellation of PORTÓN Registration, Confusable with PATRON
• TTAB Test: Which Of These Four Section 2(d) Refusals Was Reversed?
• Precedential No. 35: Third-Party Evidence Keys Dismissal of ROSE SENIOR LIVING Section 2(d) Opposition

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

• SOCIAL SECURITY ANNUITY Merely Descriptive of Retirement Planning Services, Says TTAB
• TTAB Test: Is "CERTIFIED GORILLA FRIENDLY" Merely Descriptive of Honey and Hotel Services?
• TTAB Test: Is "THE BOX" Merely Descriptive of Packaged Charcoal?
• TTAB Test: Is KRISMAS Merely Descriptive of Holiday Store Services? [Yes]
• TTAB Test: Which Two of These Four Mere Descriptiveness Refusals Were Reversed?
• CORN THINS and RICE THINS Merely Descriptive But Not Generic, Says TTAB
• HONEYFILE Merely Descriptive of Security Software, Specimen Unacceptable, Says TTAB
• TTAB Test: Is RAINSCAPES Merely Descriptive of Irrigation Services? [Yes]
• TTAB Test: Is "DEUTSCHER FUSSBALL-BUND" Merely Descriptive of Clothing and Soccer Gear? [Yes]
• TTAB Test: Which Of These Three Mere Descriptiveness Refusals Was Reversed?

Section 2(e)(2) - Primarily Geographically Descriptive:

• TTAB Affirms Rejection of New Drawing, Reverses Geographical Refusal of OAK PARK Design Mark for Beer
• TTAB Test: Is DEEP SOUTH Geographically Descriptive of Movie Studio Services? [Yes]

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

• TTAB Affirms Surname Refusal of ATWATER SPIRITS for Distilled Spirits
• Judge Seeherman Offers Different Approach to Section 2(e)(4) Surname Refusals

Section 2(f) - Acquired Distinctiveness:

• TTAB Okays Amendment of "IBOOKSTORE" to "IBOOKS STORE," Finds Acquired Distinctiveness
• CHICAGO STAGEHAND Supplemental Registration Cancelled by Prior User Despite No Acquired Distinctiveness
• TTAB Finds the Color Green Functional for Lawn Sprinklers
• Precedential No. 36: DEEP! DEEP! DISH PIZZA Lacks Acquired Distinctiveness for Pizza, Says TTAB

Abandonment:

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

Failure to Function:

• TTAB Finds Cosmetic Kit Bag Packaging Nondistinctive
• TTAB Affirms Refusal to Register Container Shape on Principal Register

Fraud:

• Finding Misuse of "R" Symbol But No Intent To Deceive, TTAB Dismisses FACETS Opposition
• TTAB Dismisses CHRISTIAN LACROIX Fraud Claim: No Intent to Deceive

Functionality:

• TTAB Affirms Section 2(e)(5) Functionality Refusal of Container Pull-Tab
• TTAB Finds the Color Green Functional for Lawn Sprinklers

Genericness:

• TTAB Finds "THE LAUNDRY CAFE" Generic for ..... Guess What?
• Precedential No. 1: TTAB Dismisses Opposition to TEQUILA Certification Mark Application

Use/Specimen of Use/Drawing:

• Can't Amend VINA DEL PASO to VINO DEL PASO for Wine, Says TTAB
• Precedential No. 4: Despite Amendment of Drawing to "SharpIN," TTAB Treats Mark as Standard Characters and Affirms Descriptiveness Refusal
• TTAB Dismisses Multi-Pronged Petition to Cancel ROYAL RITA Registration for Frozen Cocktails
• Office Door Sign Not Adequate Specimen of Use for Real Estate Services, Says TTAB
• TTAB Affirms Rejection of New Drawing, Reverses Geographical Refusal of OAK PARK Design Mark for Beer
• HONEYFILE Merely Descriptive of Security Software, Specimen Unacceptable, Says TTAB
• Precedential No. 2: TTAB Affirms Rejection of Specimen of Use for CONEY ISLAND BOARDWALK CUSTARD

Discovery/Evidence/Procedure:

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

Certification Mark:

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

CAFC decisions:

• CAFC Affirms TTAB: EMPORIUM Is Descriptive of Arcade and Bar Services
• CAFC Reverses TTAB's "DOTBLOG" Mere Descriptiveness Decision

Recommended Reading:

• The Trademark Reporter's 2017 "Annual Review of U.S. Trademark Cases"
• Recommended Reading: Jeanne C. Fromer, "The Unregulated Certification Mark(et)"
  

Other:

• Morgan Lewis Seeks TM/Copyright Associate for Wash., DC Office
• TTAB Posts April 2017 Hearing Schedule
• TTABlog Jobs: Uber Seeks Trademark Associate Counsel for San Francisco Office
• TTAB Posts March 2017 Hearing Schedule
• Supreme Court Denies Belmora's Petition for Certioriari in the FLANAX Case
• Matthew Swyers (The Trademark Company) Excluded from Practice Before USPTO
• Effective Date of New Post-Registration Proof-of-Use Rule Delayed Until March 21st
• New Post-Registration Proof-of-Use Rule Goes Into Effect February 17th
• TTAB Posts February 2017 Hearing Schedule
• Webcast Replay: "Friendly Shores - A Guide to TTAB Practice for Foreign Trademark Owners"
• The Top Ten TTAB Decisions of 2016 [Part 2]
• The Top Ten TTAB Decisions of 2016 [Part 1]
• Current Roster of TTAB Administrative Trademark Judges
• Robert H. Coggins Appointed As TTAB Administrative Trademark Judge; Ellen J. Seeherman Retires
• In 2016, How Often Did the TTAB Affirm Section 2(d) Refusals? 2(e)(1) Mere Descriptiveness Refusals?
• TTAB Issued 36 Precedential Opinions in 2016

Text John L. Welch 2017.

Morgan Lewis Seeks TM/Copyright Associate for Wash., DC Office

Morgan Lewis is seeking applicants for an associate position in its IP-Trademark/Copyright Practice in Washington D.C. See the Job Description below. Interested candidates may apply through https://www.morganlewis.com/careers.

Job Description:
Position Description:
Morgan Lewis, an international law firm with nearly 2,000 attorneys, is seeking to hire an Associate in the IP-Trademark/Copyright Practice in Washington, DC. Please note this a non-partnership track position. This position requires prior experience handling U.S. and international trademark portfolios (i.e., domestic and international trademark clearance, prosecution, maintenance, enforcement and counseling). Additional experience in one or more of the following areas is a bonus: U.S. PTO Trademark Examiner; litigation involving copyright, trademark (including Trademark Trial and Appeal Board administrative litigation), trade dress, false advertising and other Lanham Act and related state law issues; on-line business, social media, advertising and privacy issues.

Practice Description:
The Morgan Lewis Trademark Practice provides a full range of services in connection with brand-related IP law, including transactions, litigation, and counseling. Our practice encompasses trademarks and advertising, copyright, trade secrets, brand and copyright transactions, online business and privacy, and marketing arrangements. Our diverse client base ranges from global companies that own famous brands to small and midsized organizations. We have long-standing relationships with clients in all types of industries, including consumer products, food and beverage, pharmaceuticals and medical devices, technology, hospitality, media, equipment and industrial products, healthcare, financial services, education, and fashion, jewelry, luxury, and other retail.

Job Requirements:
Candidates must possess excellent academic credentials, as well as strong organization, research, writing and analytical skills. We value collegiality and diversity among our lawyers and seek to make the practice both professionally and personally rewarding.

TTAB Posts April 2017 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled seven (7) oral hearings for the month of April 2017. The April 4th hearing will be held at Suffolk Law School in Boston. The remaining 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.



April 4, 2017 - 1 PM: Poly-America, L.P. v. Illinois Tool Works, Inc., Cancellation No. 92056833 [Petition for cancellation of three (more than thirty-year old) registrations for marks comprising the configuration of a flexible plastic strip for closing plastic bags, on on the ground of functionality as to all three registered marks, and on the ground of abandonment due to uncontrolled licensing as to one of the registrations].

April 12, 2017 - 2 PM: In re Midwestern Pet Foods, Inc., Serial No. 86596702 [Refusal to register MEADOW PRIME for pet food without a disclaimer of the word PRIME].

April 18, 2017 -10 AM: In re PharmaCann, LLC , Serial No. 86520135 et al. [Refusals to register PHARMACANN and PHARMACANNIS for "Retail store services featuring medical marijuana" and for "Dispensing of pharmaceuticals featuring medical marijuana" on the ground that applicant lacks a bona fide intent to use the marks in commerce because the recited services are prohibited by a federal statute and cannot be in lawful use in commerce].

April 19, 2017 -11 AM: Merchant & Gould P.C. v. MG-IP, P.C., Cancellation No. 92057850 et al. [Two law firms fighting over the letters MG, plaintiff claiming the mark M&G for legal services, defendant the mark MG-IP].

April 20, 2017 - 11 AM: 3 Square, Inc. v. San Pasqual Casino Development Group, Inc. , Cancellation No. 92056703 [Petition to cancel registrations for the marks BLD and BLD's for bar and restaurant services on the ground of likelihood of confusion with petitioner's common law marks BLD, in standard character and design form (below), for restaurant and catering services [priority and laches at issue]].

April 25, 2017 -11 AM: In re Tin Roof Brewing Company, LLC, Serial No. 86598212 et al.[Section 2(d) refusal of TIN ROOF BREWING CO. for "Beer, ale, lager, stout and porter; Pale beer; Wheat beer" [BREWING CO. disclaimed], in view of the registered marks TIN ROOF for "wine" and THE TIN ROOF for "Bar and restaurant services," "Serving food and drinks," and "Tavern services."

April 26, 2017 - 2 PM: In re United Trademark Holdings, Inc., Serial No. 86836082 [Section 2(e)(1) mere descriptiveness refusal of LITTLE MERMAID for dolls].

Read comments and post your comment here.

TTABlog note: Any predictions? See any WYHA?s? See anything interesting?

Text Copyright John L. Welch 2017.

Despite Applicant's Prior Registrations, TTAB Affirms 2(d) Refusal of SWIRL WORLD & Design for Frozen Yogurt

The Board affirmed a Section 2(d) refusal to register the mark shown below left, for "frozen yogurt" and for "self-serve yogurt shop services," finding it likely to cause confusion with the registered mark shown below right, for "self-serve frozen yogurt shop services." Applicant pointed to its two existing registrations for the identical mark, except for the color claim, for the identical goods and services. Not good enough, said the Board. In re RaceTrac Petroleum, Inc., Serial No. 86636421 (March 28, 2017) [not precedential] (Opinion by Judge Pologeorgis).

The Board found the design elements in the marks to be less dominant than the literal elements. The latter are highly similar in sound, appearance, and commercial impression. The involved services are identical, and applicant's goods are related to the services of the cited registration. As to channels of trade, the evidence showed that frozen yogurt and self-serve yogurt shop services may be provided in the same marketplace to all relevant classes of purchasers.

Applicant invoked the 13th du Pont factor, which permits the Board to consider any other information relevant to the issue of likelihood of confusion. Applicant argued that, since it owns two registrations for a mark that is identical to the applied-for mark, except for the claim of color, for goods and services identical to those in the applied for application, and since it has priority of use, it would be inequitable to not allow the applied-for mark to register. It further noted that the mark of the prior registrations has coexisted with that of the cited registration for more than four years.

The Board distinguished In re Strategic Partners [TTABlogged here], because there the prior registrations were more than five  years old and thus no longer subject to cancellation under Section 2(d). Here, applicant's registrations were not yet five years old.

The Board acknowledged that denying registration here is inconsistent with the issuance of applicant's earlier registrations, but to hold otherwise "would give preclusive effect to the decisions of Examining Attorneys in granting Applicant's prior registrations, and the Board is not bound by the decisions of Examining Attorneys."

As to applicant's assertion of priority, the Board pointed out that such an assertion of priority of use can be given no consideration in an ex parte proceeding when registration has been refused under Section 2(d) in view of a subsisting registration.

The Board concluded that the existence of applicant's prior registrations did not outweigh the other du Pont factors.

The Board noted that applicant was not without remedy. It could have sought suspension of the application in order to pursue (1) a cancellation proceeding against the cited registrations, or (2) a consent agreement with registrant. An applicant's assertion of priority of use constitutes a collateral attack on the cited registration, which cannot be entertained in an ex parte proceeding.

Read comments and post your comment here.

TTABlog comment: Hmmm. Some interesting strategic decisions were made here.

Text Copyright John L. Welch 2017.

SOCIAL SECURITY ANNUITY Merely Descriptive of Retirement Planning Services, Says TTAB

Nine out of ten Section 2(e)(1) mere descriptiveness appeals result in affirmance of the refusal. This is one of them. The Board upheld a refusal to register SOCIAL SECURITY ANNUITY, finding it merely descriptive of "financial planning and retirement planning services" [SOCIAL SECURITY disclaimed]. Applicant argued that the mark is incongruous, or merely suggestive, but to no benefit. In re Joshua David Mellberg, LLC, Serial No. 76717806 (March 23, 2017) [not precedential].

Applicant maintained that it would take a "mental leap" for a consumer to perceive that SOCIAL SECURITY ANNUITY "represents the combination of both social security benefits and annuity strategies ... two concepts that are not naturally associated together."

Examining Attorney Thomas Young relied on dictionary definitions of "annuity" [A contract or agreement  by which one receives fixed payments on an investment for a lifetime or for a specified number of years], and on third-party web pages referring to Social Security as being an "annuity" program. Seven websites referred to this concept with the exact term SOCIAL SECURITY ANNUITY.

The Board found that Social Security "has indeed been interpreted as a type of 'annuity' program" to the extent that it provides fixed payments on a prior investment of funds. Furthermore, even if consumer would perceive the term SOCIAL SECURITY ANNUITY as referring to services that include both "Social Security" and "annuity" discussions, the term is still merely descriptive. There is nothing incongruous about the combination of those two terms in relation to the recited services.

The Board therefore affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Is this a WYHA?

Text Copyright John L. Welch 2017.

TTAB Test: Is "CERTIFIED GORILLA FRIENDLY" Merely Descriptive of Honey and Hotel Services?

The USPTO refused registration of the mark shown below [CERTIFIED disclaimed] as a certification mark for "honey; tea; field crops, namely, coffee, corn, potatoes; handicrafts, namely, baskets, home and fashion accessories, wooden carvings; mushrooms," in Class A; and "hotel services, hospitality services, tour operator services, travel agency services, tourism services, transportation services, park operations, hotels, lodges, recreational parks," in Class B., on the ground that applicant failed to disclaim the entire merely descriptive phrase "CERTIFIED GORILLA FRIENDLY." Applicant argued that "GORILLA FRIENDLY" is ambiguous and incongruous, and that other FRIENDLY marks have been registered without disclaimer. How do you think this came out?In re Wildlife Friendly Enterprise Network, Serial No. 86694394 (March 23, 2017) [not precedential].

The application contained the following certification statement:

The certification mark, as used or intended to be used by persons authorized by the certifier, certifies or is intended to certify that the goods and services will be grown, rendered, handled, delivered and processed in accordance with ecological and conservation farming and sustainable tourism guidelines and standards.

Examining Attorney Elizabeth N. Kajubi relied on dictionary definitions of "gorilla" ["a very large typically black-colored anthropoid ape (Gorilla gorilla) of equatorial Africa that has a stocky body with broad shoulders and long arms and is less erect and has smaller ears than the chimpanzee"] and "friendly ["COMPATIBLE, ACCOMMODATING"]. Applicant's website described its project as aiming "to recognize and reward tourism facilities and operators that do the right thing for gorillas and people through voluntary eco-labelling." Several third-party Internet webpages referred to "gorilla-friendly" products or projects.

These dictionary definitions and uses demonstrate that consumers understand the phrase “gorilla friendly” to convey information about a feature of the goods and services certified by Applicant: that they are beneficial to, helpful to, compatible with, or accommodating of gorillas.

At to applicant's arguments regarding the meaning of GORILLA FRIENDLY, the Board found that consumers "would immediately understand GORILLA FRIENDLY to convey that the goods and services subject to Applicant’s certification mark are deemed to be beneficial to, compatible with, or accommodating of gorillas." In the context of applicant's goods and services, there is no incongruity. The fact that gorillas are aggressive animals, and not "warm and lovable" is irrelevant.

The examining attorney submitted 42 third-party registrations in which the word FRIENDLY was disclaimed, or acquired distinctiveness was claimed, or the registration existed on the Supplemental Register - 11 involving certification marks [e.g., BIRD FRIENDLY, CAT FRIENDLY PRACTICE]. Applicant countered with 8 registrations on the Principal Register, in which FRIENDLY was not disclaimed and Section 2(f) was not claimed. The Board, however, pointed out once again that it must assess each case on its own record. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics similar to [Applicant’s] application, the PTO’s allowance of such prior registrations does not bind the Board or this court.”)

The Board concluded that GORILLA FRIENDLY is merely descriptive of Applicant’s certification activities for the identified goods and services, and therefore the phase must be disclaimed.

Read comments and post your comment here.

TTABlog comment: What do you think?

Text Copyright John L. Welch 2017.

TTAB Test: Which of These Four Section 2(d) Refusals Was Reversed?

It has been said that 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 recent Section 2(d) appeals, one of which resulted in reversal. Which one? [Answer will be found in first comment].

In re Amogreentech Co., Ltd., Serial No. 88618200 (March 14, 2017) [not precedential]. [Section 2(d) refusal of SNOWMASK for "cosmetics; mask pack for cosmetic purposes," in view of the registered mark ICE MASK for "Facial beauty masks; facial cleansers; facial emulsions; facial lotion; facial masks" [MASK disclaimed]].

In re Rescue One Air, Serial No. 87000714 (March 16, 2017) [not precedential]. [Section 2(d) refusal of RESCUE ONE AIR, in standard character and design form (below), for "HVAC contractor services; Installation, maintenance and repair of HVAC units and systems," in view of the registered mark AIR RESCUE in standard character and design form (second below), for "air conditioning contractor services"].

In re Trilliant Food and Nutrition, LLC., Serial No. 87159762 (March 23, 2017) [not precedential]. [Section 2(d) refusal of JAKE'S for "coffee sold in individual cartridges for use in single serve coffee brewers" [COFFEE disclaimed], in view of the registered mark shown below, for various baked goods and confectionary products [DESSERTS disclaimed]].

In re Century Stone Incorporated trading as Century Quartz Stone, Serial No. 86687997 (March 24, 2017) [not precedential]. [Section 2(d) refusal of CENTURY QUARTZ STONE and CQ Design for "Epoxy resin-based slabs manufactured using crushed recycled rock and glass for building purposes, sold to fabricators of building products; Quartz, sold to fabricators of building products" in view of the registered mark CQ & Design for "quartz surface slabs, countertops and tiles; building materials, namely, quartz material used in the manufacture of countertops, bathroom vanities, bar tops, and tub surrounds; quartz floor tiles"].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2017.

TTAB Test: Is "THE BOX" Merely Descriptive of Packaged Charcoal?

The USPTO refused registration of the mark THE BOX, in standard character and design form, for "charcoal; charcoal packaged in charcoal starter," finding the proposed mark to be merely descriptive of the goods and requiring a disclaimer of THE BOX in the design mark. The evidence showed that applicant's charcoal is packaged in a vented box that the user lights to ignite the charcoal. Applicant argued that its mark is mere suggestive because most charcoal is packaged in bags, and many items are packaged in boxes. How would you rule? In re Charcoal Box USA, L.L.C., Serial Nos. 86532794 and 865336461 (March 22, 2017) [not precedential].

The Board found that THE BOX merely describes a central feature or characteristic of applicant's goods. "Applicant goods are not just simply contained in a box and then poured into a charcoal grill. Rather, the box itself is an integral feature of the charcoal starter, and serves as the chimney for the  charcoal while it heats."

Even if the majority of grilling charcoal is packaged in bags, the Board noted, that does not diminish the descriptiveness of applicant's charcoal contained in a box.

The Board rejected applicant's assertion that, although THE BOX describes the packaging for the goods, it is only suggestive of charcoal or charcoal starter. The Board pointed to the MATCHBOX SERIES case, in which that mark was found to be merely descriptive of toy vehicles sold in boxes having the size and appearance of a matchbox. Applicant's product is aptly described as "box charcoal" or "charcoal in a box." Because applicant's goods and its packaging are intertwined, it is appropriate to consider whether THE BOX describes a feature of the packaging of the goods.

Applicant pointed to the USPTO's issuance of a registration for BBQ BAG for charcoal briquettes, but the Board once again observed that it is not bound by the issuance of prior registrations. Applicant also pointed to 16 third-party registrations for marks containing the word BOX, but the Board noted that those registrations identify goods and services unrelated to those at issue here.

Finally, applicant feebly argued that "box" has numerous definitions, none of which relate to boxes containing charcoal. For the umpteenth time, the Board pointed out that the meaning of the term must be considered not in the abstract but in the context of the identified goods.

And so the Board affirmed the Section 2(e)(1) refusal of THE BOX, and it also affirmed the requirement that applicant disclaim that term in connection with the design mark.

Read comments and post your comment here.

TTABlog comment: Was this a WYHA? Discuss among yourselves.

Text Copyright John L. Welch 2017.

Can't Amend VINA DEL PASO to VINO DEL PASO for Wine, Says TTAB

After receiving a notice of allowance for the mark VINA DEL PASO, applicant Tri Vin Imports filed a Statement of Use that included an amendment of the mark to VINO DEL PASO. Examining Attorney Sani Khouri rejected the amendment on the ground that it constituted a material alteration of the mark as originally filed, and he refused registration on the ground that the mark depicted on the specimen of use was not the mark that applicant applied to register. The Board affirmed. In re Tri Vin Imports, Inc., Serial No. 86257453 (March 14, 2017) [not precedential].

The Trademark Rules allow an applicant to amend its mark "only if: ... The proposed amendment does not materially alter the mark." Rule 2.72(b)(2). The general test is whether the altered mark would have to be republished in order to fairly present the mark for purposes of opposition. Also, the addition of any element that would require a new search generally will constitute a material alteration.

Applicant stated that VINA DEL PASO means "vineyard of steps." VINO is the Spanish word for wine. The examining attorney maintained that the change in meaning from VINA to VINO alters the commercial impression of the mark. A new search of the modified mark would have to be conducted, including a search for the English translation of the foreign words.

Although the two marks are highly similar in appearance, they are different in sound and meaning. The word "vina" does not appear in Cassell's Spanish-English dictionary, but viña, defined as "vineyard," does appear. In the word "viña," the letter "ñ" has the "ny" sound of "canyon." Thus to the extent that VINA is perceived as the Spanish word for "vineyard," its pronunciation would be notably different from that of "vino."

As to meaning, "vineyard of steps" suggests an agricultural cite characterized by steps, whereas 'wine of steps' is an incongruous expression."

Because the two marks at issue have different literal meanings and noticeably different pronunciations, the Board found that they do not create the impression of being essentially the same mark. A potential opposer would have to perform a different analysis for each of the two marks, and a proper availability search for the amended mark would have differed from a search for the original mark.

The Board therefore concluded that amendment to the proposed mark would entail a material alteration of the original mark.

Because the proposed amendment was rejected, and because the specimen of use depicted the proposed mark, not the original, the Board affirmed the refusal to register due to applicant's failure to submit an acceptable specimen of use.

Read comments and post your comment here.

TTABlog comment: So file a new application, and stop wine-ing.

Text Copyright John L. Welch 2017.

Precedential No. 4: Despite Amendment of Drawing to "SharpIN," TTAB Treats Mark as Standard Characters and Affirms Descriptiveness Refusal

The Board affirmed a Section 2(e)(1) refusal to register the mark SHARPIN, in standard character form, finding it merely descriptive of "cutlery knife blocks which incorporate built-in sharpeners that automatically sharpen knives." Applicant Calphalon asserted that the examining attorney had failed to enter its amendment of the mark to the special form "SharpIN" and instead improperly treated the mark as a standard character mark (although the examining attorney accepted the amendment to the drawing). Calphalon further contended that SharpIN (in special form) is incongruous or a double entendre. No dice, said the Board. In re Calphalon Corp., 122 USPQ2d 1153 (TTAB 2017) [precedential].

Form of the Mark: The Board first considered whether the mark of the amended drawing, SharpIN, should be treated as a standard character mark or a special drawing mark. Applicant's counsel discussed the amendment of the drawing from SHARPIN to SharpIN with Examining Attorney Michael P. Keating and now maintained that the examining attorney disregarded that discussion and failed to designate the mark as a special form mark. At a minimum, Calphalon argued, the examining attorney should have contacted it to seek clarification. See TMEP Section 807.03(h) ("When it is unclear from the record whether the submitted drawing was intended to be a standard character drawing, the examining attorney must contact the applicant for clarification.”)

The Board, however, found that the record was not "unclear" as to whether the submitted drawing was intended to be treated as a standard character drawing. Applicant's amended drawing met the requirements of Rule 2.52 for a standard character drawing "because the letters in its mark continued to be depicted in Latin characters, and the uppercase and lowercase letters in the drawing are part of the 'standard character set that lists letters, numerals, punctuation marks, and diacritical marks that may be used in a standard character drawing.'" TMEP § 807.03(b).

A standard character mark may be depicted in any font style or size, but the USPTO will convert the depiction to a standardized typeface for printing in the Official Gazette and on the registration certificate. Similarly, if the application is filed electronically, the mark will be automatically converted into the standard-character field to a standardized typeface.

The Board pointed out, when Calphalon requested the drawing amendment via TEAS, it did not select the special form option; the standard character designation remained the designation of choice. The amended drawing did not, as Calphalon argued, require the Office to re-designate it as "special form."

Calphalon invited a remand to the examining attorney for "clarification to special form," but the Board saw no remand needed since the examining attorney had treated the drawing properly. Nor was the Board moved by applicant's assertion that it first learned that the drawing would be treated as a standard character drawing when it received the examining attorney's appeal brief. It was applicant who so characterized the mark when submitting the amended drawing (i.e., it did not choose the special form option).

Having elected to seek registration of its proposed mark as a standard character mark, and having offered no persuasive justification for taking a contrary position for the first time in its reply brief on appeal, Applicant must have the descriptiveness of the mark assessed without limitation to any particular depiction of that term.

Mere Descriptiveness: Not surprisingly, the examining attorney contended that consumers would perceive the mark SHARPIN as equivalent to the word "sharpen" and thus descriptive of a function of the goods. Calphalon maintained that the mark does not immediately convey a readily understood meaning to consumers as to the nature of the goods. The Board, however, pointed out once again that the determination of mere descriptiveness is not a guessing game: a mark must be considered in the context of the goods at issue.

As to incongruity, the Board found nothing incongruous about the standard character mark SHARPIN. It immediately invokes an "association with the phonetically-identical and otherwise virtually-identical word 'sharpen,' and there is nothing incongruous about the use of the word sharpen (or its phonetic equivalent SHARPIN) to describe the function of goods identified as 'cutlery knife blocks which incorporate built-in sharpeners that automatically sharpen knives.'"

Calphalon claimed that the mark is a double entendre: "[c]onsumers will understand the mark to refer both to sharpening knives and that a sharpener is built within the knife block." The Board found that the first proposed meaning is the only readily apparent one for the mark in standard character format.

Applicant’s mark is not a double entendre because Applicant’s briefs make it clear that the possible existence of Applicant’s second proposed meaning of SHARPIN—that "a sharpener is built within the knife block"—inheres in the presentation of the mark in a special form as SharpIN, and that is not the form of the mark for which Applicant seeks registration.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Well, I suppose applicant will file a new application for SharpIN in special form. How do you think that application will fare? If SharpIN is considered a double entendre, are both meanings merely descriptive of the goods?

Text Copyright John L. Welch 2017.

TTAB Dismisses Multi-Pronged Petition to Cancel ROYAL RITA Registration for Frozen Cocktails

Tequila Cuervo petitioned for cancellation of a registration for the mark ROYAL RITA for "prepared frozen and non-frozen alcoholic cocktails; frozen and non-frozen alcoholic cocktail mixes," claiming that respondent does not sell alcoholic cocktails, does not use the mark on cocktail mixes, and does not own the mark. It also claimed that the mark is used only at a single location (Kauffman Stadium, home of the Kansas City Royals, and thus not in interstate commerce), that Respondent abandoned the mark through uncontrolled licensing, used the mark illegally, and committed fraud on the USPTO. The Board dismissed all claims. Tequila Cuervo La Rojena, S.A. de C.V. v. Mush, Inc. d/b/a Igloo’s Frozen Drinks, Cancellation No. 92059500 (March 14, 2017 [not precedential].

Use of the mark: Respondent provides frozen drink mixes and equipment at several dozen large venues. For Kauffman Stadium, respondent created the name ROYAL RITA for the frozen drinks made from its mix. Respondent's revenues come from the sale of the mix, which does not bear the mark. The mark is shown on a sign above the machine from which the drinks are dispensed. [see photo above]. Respondent creates the signage. The mark also appears on "vending sticks" carried by vendors through the stands, and the ROYAL RITA drink is carried in cups on the stick.

Respondent trains the people who make the drinks, supplies the recipe, maintains the machines, and visits customers several times each season to check the machines and sample the product. It admitted that it does not have a trademark license with Kauffman Stadium regarding the use of the mark at the stadium.

The Board found that, although Respondent does not use the mark "on the goods," it placed the mark on displays associated with the goods, i.e., on signage above the dispensing machine, on magnets attached to the machine (see below), and on menus. 

With regard to drink mix, respondent's witness testified that "[n]obody sees the box except the concessionaire who is pouring it into the containers so there's no need to have it on anything like [the cartons] since we’re not selling these boxes at retail."

Illegality of use: Respondent conceded that it is not licensed to sell alcoholic beverages, but the Board found that fact to be irrelevant since respondent is not selling alcoholic drinks, only mixes. In any case, the production and sale of alcohol is not per se illegal, and there was no evidence that any court or agency has found Respondent, Kauffman Stadium, or Aramark (the concessionaire) in violation of any law or regulation.

Interstate use:Although ROYAL RITA cocktails are sold only in Kauffman Stadium, those sales satisfy the use in commerce requirement. Christian Faith Fellowship Church v. adidas AG, 841 F.3d 986, 120 USPQ2d 1640 (Fed. Cir. 2016). In any case. respondent ships its drink mix interstate, from Texas to Kansas City. "In other words, the goods are 'transported in commerce,' which when combined with the ROYAL RITA mark being placed on 'displays associated' with the goods, constitutes 'use' in commerce. 15 U.S.C. § 1127.

Naked Licensing: The Board pointed out that a written license is not required.

"[w]here the license parties have engaged in a close working relationship, and may justifiably rely on each parties’ intimacy with standards and procedures to ensure consistent quality, and no actual decline in quality standards is demonstrated, we would depart from the purpose of the law to find an abandonment simply for want of all the inspection and control formalities." Taco Cabana Int’l, Inc. v. Two Pesos Inc., 952 F.2d 1113, 19 USPQ2d 1253, 1259 (5th Cir. 1991), aff’d, 505 U.S. 763, 23 USPQ2d 1081 (1992).

Petitioner Cuervo did not establish that respondent's quality control efforts were inadequate or that the quality of the ROYAL RITA drinks was unacceptable. "Kauffman Stadium serves drinks made with Respondent’s mix and machine, pursuant to Respondent’s recipe, and Respondent monitors the Stadium’s operations from time to time." In short, Petitioner did not prove abandonment via naked licensing.

Fraud: Petitioner's fraud claim was based on the various contentions that the Board rejected. Moreover, there was no evidence of any intent to deceive the USPTO.

And so the Board dismissed the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: According to the menu, the ROYAL RITA cocktail is made with Jose Cuervo tequila. What do you think about that?

Text Copyright John L. Welch 2017.

TTAB Affirms Section 2(e)(5) Functionality Refusal of Container Pull-Tab

In order to reach the registrability finish line, a proposed product configuration mark must clear two hurdles: Section 2(e)(5) functionality and Section 2(f) acquired distinctiveness. Selig Sealing Products failed to clear the first hurdle and, even if it had, it also failed at the second hurdle. Selig sought to register the product configuration shown below, for non-metal seals for use in container closures and caps. The applied-for mark consists of the "half-moon shaped pull-tab of an inner container seal." In re Selig Sealing Products, Inc., Serial No. 86078062 (March 14, 2017) [not precedential]

Section 2(e)(5) Functionality: The Board found that applicant's design possesses "two notable features: the semicircular profile of the pull-tab, and its position across the center of the seal, reaching from edge to edge."

In a thorough discussion of the (de facto) functionality of the design, the Board found that "there are many functional reasons that explain the semi-circular shape of Applicant’s pull-tab." The configuration is easier to grasp, and the base of the tab is as long as possible without extending beyond the edge of the container (so that a cap may be placed over the seal). Because of this functionality, competitors are not required to seek alternative designs.

[W]e are persuaded that all of the elements of Applicant’s design affect the performance of Applicant’s pull-tab as a method for removing Applicant’s seals, and that the combination of these design elements results in a design that is, as a whole, functional within the meaning of Section 2(e)(5). Viewing the record in its entirety, we find that the design of Applicant’s product comprises matter that, as a whole, “is essential to the use or purpose of the article or … affects the … quality of the article,” as contemplated by Inwood. We therefore find that Applicant’s product design is functional within the meaning of Section 2(e)(5).

Section 2(f) Acquired Distinctiveness: Assuming arguendo that applicant's design was not de jure functional, the Board considered applicant's evidence of acquired distinctiveness. [Of course, a product design can never be inherently distinctive].

Applicant's evidence fell "far short" of establishing acquired distinctiveness. Although applicant's revenues were substantial, there was no evidence placing the sales figures in context in terms of market share or advertising channels. Seven third-party declarations were too few to be meaningful because the Board lacked information "regarding the nature and size of Applicant’s customer base to conclude that these seven declarations meaningfully reflect the perception of Applicant’s design in the marketplace."

And so the Board affirmed the refusal under Section 2(e)(5)

Read comments and post your comment here.

TTABlog comment: When is the last time that the Board found a product configuration to be registrable?

Text Copyright John L. Welch 2017.

Finding Misuse of "R" Symbol But No Intent To Deceive, TTAB Dismisses FACETS Opposition

The Board dismissed this 10-year old opposition to registration of the mark FACETS for computer software in the health care management field, finding that although applicant had misused the federal registration symbol, there was no evidence that applicant had an intent to deceive. Farmaco-Logica B.V. v. The TriZetto Corporation, Opposition No. 91184047 (March 14, 2017) [not precedential].

Improper use of the registration symbol will negate an applicant's right to registration only when it is conclusively shown that the misuse was intended to deceive the purchasing public or others in the trade that the mark was registered. Copeland's Enters. Inc. v. CNV Inc., 20 USPQ2d 1295 (Fed. Cir. 1991).

Applicant's mark was registered for computer software in 1995 but the registration expired in 2005 when applicant failed to renew it. However, applicant has owned other registrations for the mark FACETS for a number of services, including application service provider (ASP) services in the health care management field. Opposer contended that applicant could use the registration symbol in connection with ASP services, but not software, and that it misused the symbol with the intent to deceive purchasers, former shareholders, and others in the trade into believing that the mark was registered for the software recited in the opposed application.

The Board found that applicant misused the symbol in certain SEC filings and other documents in references to is FACETS software.

Applicant mistakenly treats its application service provider activities and its software-as-a-service activities as being one and the same. This led to Applicant misusing the federal registration symbol in connection with its unregistered FACETS software-as-a-service activities despite Applicant’s efforts to ensure that it was properly using the federal registration symbol.

The USPTO's acceptance of applicant's specimens of use for its Section 8 declarations in connection with the two ASP registrations compounded the misunderstanding. The specimens showed use of the mark for a software application, not for ASP activities. Moreover, in some documents, applicant used the R symbol and the TM symbol at different points in connection with the mark, further demonstrating applicant's intent.

As noted earlier, Applicant’s focus in deciding when and how to use the federal registration symbol was an attempt to comply with the law. From that finding, we conclude that Applicant’s use of the federal registration symbol was not an attempt to market through deception. More generally, Opposer simply did not introduce any evidence regarding how Applicant misused the federal registration with the intent to deceive anyone.

Opposer relied only on circumstantial evidence in an effort to show applicant's bad intent, asserting that applicant is an experienced trademark owner, and its attorney (17 years of trademark experience) "should - and must - have known that many of her authorizations were not reasonable."

The Board pointed out, however, that the CAFC in Bose rejected the argument that proof that someone acted on an arguably objectively unreasonable belief (as to what constituted use in commerce through repair of returned goods) is enough to prove fraud. In re Bose Corp., 91 USPQ2d at 1942. "An honestly-held belief that is objectively mistaken does not give rise to fraud because of the absence of a subjective intent to deceive."

We found that no evidence that Applicant intended to deceive the purchasing public, former shareholders, or others that FACETS was a registered mark for software or software-as-a-service.

And so the Board dismissed the opposition.

Read comments and post your comment here.

TTABlog comment: In 2015, the Board granted applicant's motion for summary judgment on opposer's Section 2(d) claim (here).

Text Copyright John L. Welch 2017.

Precedential No. 3 = TTAB Test: Does this Mark Include a Simulation of the Swiss Flag?

Section 2(b) of the Lanham Act, in pertinent part, prohibits registration of a mark that "[c]onsists of or comprises the flag ... of any foreign nation, or any simulation thereof." The word "comprises" means "includes." Applicant sought to register the mark shown below for "hospitals," but it was refused registration under Section 2(b). Does the mark include a simulation of the Swiss flag [shown next below]? You be the judge. In re Family Emergency Room LLC, 121 USPQ2d 1886 (TTAB 2017) [precedential].

Applicant described the relevant portion of its mark as "a white cross on a red field, [with] red diagonal lines on the left edge of the field." It claimed red and white as a feature of the mark. It conceded that the mark "borrow[s] elements of the Swiss national flag."

The Board found applicant's design to be "highly similar" to the Swiss flag. The addition of lines at the left of the design and the very slight tilt of the design are "insignificant in altering the commercial impression of the design."

Simply put, the design shown in the proposed mark is not sufficiently altered, stylized, or merged with the other elements in the mark, so as to create a distinct commercial impression, other than as a simulation of the Swiss flag. The average member of the general public seeing the proposed mark would associate the design feature with the flag of Switzerland.

Therefore, registration of applicant's mark is prohibited by Section 2(b).

Read comments and post your comment here.

TTABlog comment: Is this a WYHA? Why is the opinion precedential?

Text Copyright John L. Welch 2017.

TTAB Test: Are These Flying Bird Marks Confusingly Similar?

The University of Houston System applied to register the mark shown below left, for printed materials (Class 16), mugs and cups (Class 21); clothing (Class 25); and educational and entertainment services (Class 41). Opposer Retail Royalty [Think American Eagle] claimed a likelihood of confusion with its registered mark shown below right, for personal products (Class 3); athletic bags (Class 18): Clothing (Class 25): and retail store services featuring a wide range of products, including clothing. How do you think this came out? Retail Royalty Company v. The University of Houston System, Opposition No. 91217413 (March 10, 2017) [not precedential].

The marks: Applicant contended that because there are many registrations and uses of flying bird marks, Opposer's mark should be given limited protection. The Board, however, found that few of the third-party marks were similar to those at issue.

The registrations obviously show that it is not uncommon for others to seek to adopt a mark containing a bird design in connection with clothing; however, the registrations further reflect the availability of an array of bird designs that can be used in marks and do not necessarily bear a resemblance to each other. Indeed, with the exception of a few, we find none of the registered marks bear a strong resemblance to either Opposer’s or Applicant’s mark.

Distinguishing Jack Wolfskin and Juice Generation, the Board found that there were too few third-party registrations and no relevant uses to undermine the strength of opposer's mark.

As to the marks themselves, the presence of the terms UHCL HAWKS imparts a meaning that does not appear in opposer's' mark. Moreover, the verbal portion of applicant's mark is the part that consumers are most likely to refer to when calling for the goods. The Board concluded that the marks are more dissimilar than similar.

However, the marks are not so dissimilar as to rule out likelihood of confusion under all circumstances.

Good and Services: As to applicant's class 16 and 21 goods, the record did not show that it is common for a single entity to provide retail clothing store services and offer goods like applicant's goods under a single mark. And so this factor pointed in favor of applicant as to these goods.

As to class 25 clothing, the goods are legally identical and presumably travel in the same channels of trade to the same classes of consumers. Moreover, when the goods are identical, a lesser degree of similarity is needed to demonstrate a likelihood of confusion.

As to applicant's class 41 educational and entertainment services, Opposer's activities involve "placing advertisements or congratulatory messages for the Big East collegiate sports conference on the billboard above its retail store in New York City. Although consumers would be attracted to the advertising, there is no reason to believe that they would believe opposer to be involved with the service of providing sports entertainment. And so this factor weighed in favor of applicant.

Consumers sophistication: Applicant's class 16, 21, and 25 goods may be inexpensive and purchased on impulse, a factor favoring opposer.

Conclusion: Balancing the relevant du Pont factors, the Board found confusion likely as to the Class 25 goods, but not as to applicant's Class 16 and 21 goods or its Class 41 services.

Dissent: Judge Bergsman dissented from the finding of likelihood of confusion for the Class 25 goods.

Read comments and post your comment here.

TTABlog comment: Retail Royalty has successfully shooed away two other bird marks via the TTAB: see here and here.

Text Copyright John L. Welch 2017.

TTAB Test: Is KRISMAS Merely Descriptive of Holiday Store Services?

The USPTO refused registration of the mark KRISMAS for, inter alia, retail store services featuring holiday merchandise and for entertainment services, finding the mark to be merely descriptive under Section 2(e)(1). Applicant/appellant pointed to 292 third-party registrations for marks containing the word "Christmas," without disclaimer. How do you think this came out? In re Imaginif, Inc., Serial 86420607 (March 6, 2017) [not precedential].

Examining Paula M. Mahoney maintained that the applied-for mark KRISMAS is the phonetic equivalent of "Christmas," and would therefore describe a feature or characteristic of applicant's Christmas-themed retail and entertainment services.

Applicant contended that KRISMAS is not merely a misspelling, but is suggestive of the secular nature of applicant's services: it "provides secular experiences and goods to those not observing the birth of Jesus Christ." Thus, said applicant, there is an incongruity between "Christmas" and KRISMAS.

However, applicant's own use of the word KRISMAS implied that it and the public at large regard the term as descriptive of the Christmastime theme of its retail and entertainment services. At its website, applicant uses the terms "Christmas" and KRISMAS interchangeably. The Board agreed with the Examining Attorney that "Applicant's use refers to the holiday based on the traditional, religious Christmas holiday, as well as offering secular items or services related to this time of year."

Applicant also made the inevitably losing argument that, from the mark alone, consumers will not "automatically assume or even have any clear idea what Applicant's goods and services are." Of course, a mark must be considered in the context of the pertinent goods and services and services, not in the abstract. In short, the determination of mere descriptiveness is not a guessing game.

The Board observed that applicant's competitors must be free to use "Christmas" or its phonetic equivalent, KRISMAS, for seasonally-appropriate goods and services.

With regard to the 292 third-party registrations for marks containing the word Christmas, without disclaimer, the Board pointed out that third-party registrations are not conclusive on the issue of descriptiveness. Each case must stand on its own merits. None of the registrations sought to monopolize "Christmas" per se for Christmas-themed goods and services. Only one mark comprised the word "Christmas" alone, and that was for computer game software. The other marks include "distinguishing elements rendering them, in context, not descriptive of their identified goods or services." [Some were registered under Section 2(f): e.g., CHRISTMAS IN NEW YORK for greeting cards - ed.].

The Board noted that there is a thin line of demarcation between a suggestive mark and a merely descriptive one, and that doubt should be resolved in applicant's favor. Here, the Board had no doubt, and so it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Is this a WYHA? a WYHO-HO-HO? Are you looking forward to EESTIR?

Text Copyright John L. Welch 2017.

TTABlog Jobs: Uber Seeks Trademark Associate Counsel for San Francisco Office

Uber is seeking a trademark attorney for an Associate Counsel position at its San Francisco Office. "We are currently searching for an Associate Counsel with substantial expertise in trademark law to join the Uber Legal Team. You will report to Senior Counsel, Trademarks and be based at Uber’s San Francisco office." Full details and application form may be found here.

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TTAB Dismisses CHRISTIAN LACROIX Fraud Claim: No Intent to Deceive

The Board dismissed this opposition to registration of the mark CHRISTIAN LACROIX for jewelry, buckles, and ash trays, finding that Opposer Lacroix, the well-known French fashion designer, had failed to prove his claim of fraud on the USPTO. Applicant stated that Mr. Lacroix had consented to registration of the mark, but Lacroix claimed that he did not consent and that applicant's statement was intended to deceive the Office. Christian Lacroix v. Christian Lacroix, Snc, Oppositions Nos. 91201563 and 91202642 (March 10, 2017) [not precedential].

In the two applications at issue, the applicant claimed ownership of three prior registrations that include a statement that CHRISTIAN LACROIX identifies an individual whose consent was of record. According to the TMEP, a consent in a prior registration may satisfy the consent requirement in a subsequent application. See TMEP §§ 813 and 1206.04(c) (January 2017). Opposer claimed that the two consents (one executed in 1987, the other in 1995) were no longer viable.

The Board observed that, under certain circumstances, a consent to registration may be implied from the terms of a written agreement." In 1987 Opposer assigned to applicant all of his rights in the trademark CHRISTIAN LACROIX, without any exception or reserve. He agreed to assist Applicant in registering the CHRISTIAN LACROIX trademark, and he agreed not to use the name for any professional or commercial gain that did not benefit applicant.

A reasonable reading of the Trademark Sale Agreement clearly implies Opposer’s consent to Applicant’s right to use and register the CHRISTIAN LACROIX trademark. There is no fraud because Applicant believed that Opposer consented to Applicant’s right to use and register the CHRISTIAN LACROIX trademark in the Trademark Sale Agreement and, thus, Applicant did not have the intent to deceive the USPTO when it filed the subsequent consents to the registration of the mark.

Read comments and post your comment here.

TTABlog comment: Actually, I don't believe applicant "filed" the consents. It just referred to the consents that were in the file of the prior registrations.

Further note: applicant took the testimonial deposition of Mr. Lacroix in France, under Articles 15 and 16 of the Hague Convention on Taking Testimony Abroad in Civil or Commercial Matters, 28 USC 2072. And see TBMP 703.01.

Text Copyright John L. Welch 2017.

CITY OF HEROES for Clothing Confusable with Same Mark for Video Games, Says TTAB

The Board affirmed a Section 2(d) refusal of the mark CITY OF HEROES for t-shirts and other clothing items, finding the mark likely to cause confusion with the identical mark registered for computer and video games. Third-party registrations and usage demonstrated that the goods are related and are sold in the same channels of trade. Applicant argued that the registered mark is no longer in use (according to Wikipedia), but the Board refused to entertain a collateral attack on the cited registration. In re Frank J. Chiara III Serial No. 86561927 (March 8, 2017) [not precedential].

Applicant argued that the marks create different commercial impressions when viewed on the actual goods, but the Board pointed out that the involved marks are in standard character form, and evidence regarding how the marks are actually used is irrelevant here. Applicant's citation of several district court infringement cases was also irrelevant, because there the focus in a civil action the court focuses on actual usage of the marks, unlike this TTAB proceeding.

Applicant further contended that he intends to use his mark to promote the City of Boston, and to raise funds "to help the city of Boston." He noted that his clothing items do not display any comic book heroes.

The Board observed, however, that nothing in applicant's mark (or in his identification of goods) associates the mark with Boston, or limits its connotation to any particular city or type of hero.

Applicant maintained that the Examining Attorney was making a theoretical connection between clothing and computer games, with no real-world business evidence or use. In fact, applicant urged, the cited mark is no longer in use.

The Board, however, pointed out that during ex parte prosecution, including an appeal, an applicant will not be heard as to matters that constitute an attack on a cited registration, including nonuse of the registered mark. The record evidence shows that third parties use and register designations to indicate the source of both applicant's and registrant's goods. The Examining Attorney is not required to show that registrant used its mark on clothing, but only that clothing may emanate from the same source as registrant's goods.

Applicant posited that, following the Examining Attorney's logic, all goods and services are related because "every major brand holder sells or distributes promotional clothing items." The Board pointed out that the evidence here suggests that, particularly given the tendency of video game makers to market clothing items as collateral goods, these goods are available to consumers on the same websites in the "real world."

Finally, applicant complained that, by maintaining the Section 2(d) refusal, the USPTO is forcing applicant to either request a consent from registrant or file "an unnecessary Petition to Cancel five (5) active registrations owned by Registrant in order to clear the way for Applicant to register  its mark." The Board agreed that those are the remedies available to applicant.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Actually, I see only four live registrations owned by registrant, and only one was cited against applicant. So why didn't he suspend this application and petition to cancel that single registration?

Text Copyright John L. Welch 2017.