TTABlog Bonus: 2017 Edition of "Advanced Practice Tips from the TTAB"

Here is the latest version of "Advanced Practice Tips from the TTAB," which provides highly useful guidance on how to navigate many of the procedural issues/hurdles faced by the TTAB practitioner. This 2017 edition incorporates the January 2017 Rule changes.



I offer a few TTAB tips off the top of my head (some duplicative of the TTAB's tips):

• As soon as the proceeding is commenced, start thinking about what you have to prove, and planning how you will prove it. 
• If you have a pro se party on the other side, or a difficult attorney, request participation of a Board representative at the mandatory discovery/settlement conference. This may also provide an opportunity to knock out badly pleaded or groundless claims (like fraud).
• Midway through the discovery period, check your initial disclosures to make sure that you have named the individuals that you expect to call as witnesses. If not, amend the disclosures pronto.
• Docket a date for services of written discovery at least 30 days before the close of discovery, because written requests must be served on or before that date in order that responses will be due by the close of discovery. If you are planning to take a discovery deposition, you may want to move that date back even farther.
• Study the rules and the TBMP so that your pleaded registrations are properly made of record. But remember, generally, that although the TBMP may be cited, it is a guidebook; it is not the law.
• Be reasonable in dealing with the other side. In my experience, The Board and its interlocutory attorneys appreciate advocates who are reasonable (and respectful), which can benefit you in the short and the long run.

Read comments and post your comment here.

TTABlog comment: At page 6 of the Board's paper, I think the Board understates the impact of the Jack Wolfskin and Juice Generation decisions on the potential probative value of third-party registrations and use in the likelihood-of-confusion context. For example, see the Board's ROSE SENIOR LIVING decision, TTABlogged here.

Got any tips of your own?

Text Copyright John L. Welch 2017.

Professor McCarthy Comments on CAFC's INSIGNIA Ruling

I was pleased to receive the following comment from Professor J. Thomas McCarthy's on the CAFC's ruling last week in the INSIGNIA case, wherein the court vacated and remanded the Board's decision due to improper consideration of the fifth du Pont factor.

I applaud the CAFC’s May 25 decision in Joseph Phelps Vineyards v. Fairmont Holdings, 2017 WL 2259634 The decision reversed and chided the Trademark Board for improperly applying the "fame" factor as a yes-no decision rather than on a sliding scale. I agree with the court because I've noted with dismay how the Board has treated the concept of "fame" in recent years. In the March 2017 update to my Trademark treatise, I rewrote Section 11:74 to discuss this issue.

I think that the source of this problem may lie in the past - the court’s 1973 DuPont factors, which for decades have consistently provided the framework for analyzing likelihood of confusion in the USPTO. There, the court listed as the fifth factor, the "fame of the mark," not the "strength" of the mark - the word "strength" is the usage of all of the other twelve circuits. Each of the 13 circuits has developed a multi-factor test to evaluate the key issue of whether there is a likelihood of confusion. All of those lists except for the list used by the Federal Circuit include an evaluation of the "strength" (not "fame") of the senior user's mark.

While the CAFC often treats the terms "famous and "strong" as synonyms, on occasion the court itself has lapsed into a yes-no analysis of "fame." I think it is the word "fame" that lends itself to an erroneous "yes it is or no it isn’t" thinking. But the word "strength" naturally leads to viewing it as a scale, not a category.

The CAFC’s eccentric use of the term "fame" has led the Trademark Board into framing the issue as whether the senior user's mark is or is not in the category of "famous" marks. Thus, regardless of the fact that for traditional likelihood of confusion analysis, "fame" is a range of strength, and not two discrete categories, the T.T.A.B. has continued to categorize marks as either "famous" or "not famous." What I think the Board should be doing is to ask if the senior user's mark is a relatively stronger or weaker mark in the context of this case. This is because the issue is whether the senior user's mark has a sufficient degree of strength to support a finding of a likelihood of confusion. But will the court’s decision in Joseph Phelps Vineyards be sufficient to change the Board’s thinking?

Read comments and post your comment here.

Text Copyright John L. Welch 2017.

CAFC Reverses TTAB's INSIGNIA Decision, Remands for Consideration of Section 2(d) "Fame"

In a brief, Per Curiam opinion, the CAFC vacated the Board's decision of July 6, 2015 (here) dismissing a petition for cancellation of a registration for the mark ALEC BRADLEY STAR INSIGNIA, in standard character form, for "cigars, tobacco, cigar boxes, cigar cutters and cigar tubes." The Board had found that respondent's mark was not likely to cause confusion with petitioner's registered mark INSIGNIA for wines. Concluding that the Board had applied an "incorrect standard for fame," the CAFC remanded the case to the TTAB for determination utilizing the correct standard. Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 122 USPQ2d 1733 (Fed. Cir. 2017) [precedential].

The CAFC ruled that the Board erred in giving no weight to the fifth du Pont factor after finding that Petitioner Phelps's mark INSIGNIA was not a famous mark. The CAFC pointed out that, unlike for dilution, fame for likelihood of confusion purposes is not an "all-or-nothing" proposition. Consequently, the Board "did not properly apply the 'totality of the circumstances' standard, which requires considering all the relevant factors on a scale appropriate to their merits."

Petitioner Phelps submitted evidence that INSIGNIA wine is renowned in the marketplace for wine and among consumers of fine wine. The record included evidence of extensive recognition and praise for INSIGNIA brand wine. The CAFC was therefore "perplexed at the Board’s finding that INSIGNIA wine has no 'fame,' giving no discernable weight to this factor." The "fame" factor should have been given "reasonable weight" among the totality of circumstances.

In a concurring opinion, Judge Pauline Newman pointed out two additional issues that should be reviewed on remand. First, the Board failed to consider the actual usage of respondent's mark, with the words ALEC BRADLEY separated from STAR and INSIGNIA, in a different font and size. [See specimens of use above].

The Board erred in declining to consider "illustrations of the mark as actually used," for precedent recognizes that such illustrations "may assist the T.T.A.B. in visualizing other forms in which the mark might appear." Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1353 (Fed. Cir. 2011).

Second, the issue of relatedness of the goods should be further considered, since the Board found that the evidence "suggests that the goods are sold in the same channels of trade to the same purchasers." Again, the Board treated this factor as an all-or-nothing proposition, but the evidence of relatedness should be considered on a "sliding scale."

Judge Newman pointed to the TTAB's non-precedential opinion in In re Licores Veracruz, S.A. de C. V., Serial No.77753913 (TTAB January 26, 2012), wherein the Board reached a contrary conclusion on the relatedness issue with respect to rum and cigars:

[I]n conjunction with the arbitrary nature of the mark MOCAMBO, we find that cigars and rum will be encountered by the same consumers under circumstances that could, because of the identity of the marks, give rise to the mistaken belief that they originate from the same source . . . . In view of the facts that the marks are identical and are a fanciful or arbitrary term, and the goods are related, move in the same channels of trade and are sold to the same consumers, we find that applicant’s mark MOCAMBO for "rum" is likely to cause confusion with the mark MOCAMBO for "cigars."

Here, the Board found that, because wine and cigars are products that differ in both composition and method of manufacture, they are not "related." However, "relatedness is a broad concept; products may exhibit 'relatedness' when they “are complementary products sold in the same channels of trade to the same classes of consumers."

Judge Newman observed that the Board should provide "reasonably consistent rulings on similar facts, to provide premises on which the public can rely."

Read comments and post your comment here.

TTABlog comment: Perhaps the CAFC should have been more clear as to the fifth factor: the Board should have given weight to the strength of the mark, even if the mark is not famous for Section 2(d) purposes.

On the relatedness issue, is Judge Newman merely second-guessing the Board's ultimately subjective finding?

FWIW, I think the Board reached the right result, but needed to provide a better explanation of its ruling.

Text Copyright John L. Welch 2017.

INTA 2017

Barcelona 4 Eibar 2: Pelton and Welch in Attendance as Lionel Messi Scores a Brace

First row upper deck, just above the "S" in "Sempre"

MTB XIII Hosts and Hostess

Pelton Welch Coleman Schwimmer Chestek Oppedahl

Barcelona: MTB XIII

USPTO Seeks Comments on Possible New Streamlined Cancellation Procedure

The USPTO is requesting comments on a possible new streamlined version of a trademark cancellation proceeding designed to enable a third-party to more efficiently challenge a registration based on abandonment or nonuse. See the Federal Register Notice here.

SUMMARY:

The United States Patent and Trademark Office (“USPTO”) seeks comments from stakeholders, mark owners, and all those interested in the maintenance of an accurate U.S. Trademark Register, on the establishment of a streamlined version of the existing inter partes abandonment and nonuse grounds for cancellation before the USPTO's Trademark Trial and Appeal Board (“TTAB”).

DATES:

To ensure consideration, comments should be submitted no later than August 14, 2017.

Read comments and post your comment here.

Text Copyright John L. Welch 2017.

Precedential No. 12: Return of the Phantom Mark Refusal

The Board affirmed refusals to register the marks NP--- and SL --- for "sealant compounds for joints," finding them to be "phantom" marks and thus ineligible for registration. The "variable designation ---" in each mark "represents up to three numeric digits." Applicant unsuccessfully maintained that, because the variable element is limited in number of combinations, the marks will be readily searchable and will provide adequate notice to other trademark users. In re Construction Research & Technology GmbH, 122 USPQ2d 1583 (TTAB 2017) [precedential] (Opinion by Judge Wellington).

Under the Trademark Act, an application may seek registration of only one mark. "A mark that contains a changeable or phantom element resulting in possibly more than one mark is generally refused registration." In re Primo Water Corp. 87 USPQ2d 1376, 1378 (TTAB 2008). The CAFC explained the reasoning for this rule:

[T]he mark, as registered must accurately reflect the way it is used in commerce so that someone who searches the registry for the mark, or a similar mark, will locate the registered mark. ‘Phantom’ marks . . . encompass too many combinations and permutations to make a thorough and effective search possible. The registration of such marks does not provide proper notice to other trademark users, thus failing to help bring order to the marketplace and defeating one of the vital purposes of federal trademark registration. In re Int’l Flavors & Fragrances Inc., 51 USPQ2d 1513, 1517-18 (Fed. Cir. 1999).

Applicant pointed to In re Dial-A-Mattress Operating Corp., 57 USPQ2d 1807, 1813 (Fed. Cir. 2001), and In re Data Packaging, 172 USPQ 396 (CCPA 1972), in asserting that the inclusion of a phantom element does not always preclude registrability of a mark. In Dial-A-Mattress, the CAFC concluded that (212) M-A-T-T-R-E-S (the "(212)" portion of the mark being depicted in broken lines to indicate that "the area code will change") was registrable because the variable element comprised "an area code, the possibilities of which are limited by the offerings of the telephone companies." In Data Packaging, the CCPA held that a mark consisting of a colored, narrow, annular band in a specific location on a computer tape reel was registrable, even though not limited to a particular color, because "the description of [the] mark ... is neither indefinite nor unduly broad. A competing manufacturer can ascertain from reading the description of the mark ... exactly what design appellant regards as a his trademark and can govern its selection of its own mark accordingly, with no fear of inadvertent infringement." 172 USPQ at 398.

The TMEP states that a mark with a changeable element may be registrable if the element is limited in possible variations such that adequate notice is given to allow an effective Section 2(d) search. As an example, the mark T. MARKEY TRADEMARK EXHIBITION 2*** would be registrable, where the asterisks represent elements to indicate different years. TMEP Section 1214.01 (Apr. 2017).

Unlike those marks, the applied-for marks do not pass muster. One is left to guess not only what combination "up to three digits" will be used, but also "what permutations of those combinations will be used." There are at least a thousand possible marks in each case, "which is nothing if not overly broad." Moreover, it is unclear what significance, if any, each possible number combination might have. For example, they could represent "the number of a particular series or version of a product, a physical characteristic or something else of utilitarian significance to the potential consumer.

That is, Applicant is seeking to register multiple marks and the public cannot predict what marks will be covered by any resulting registrations. In sum, by way of the phantom element in each of the two applied-for marks, Applicant is improperly seeking to register not two, but over two thousand different marks and, in each case, this would be in violation of the one mark per application requirement of the Trademark Act and would run counter to the policy underlying the rule against registering phantom marks.

The marks here at issue "contrast sharply" with the mark in Dial-A-Mattress. There, "it was clear from the drawing itself" that the phantom element represented a telephone area code." [Emphasis by the Board]. Any change in area code would have no impact on the overall meaning or commercial impression. Here, however, the missing information could be much more wide-ranging than area codes, and could be interpreted differently, depending on the context.

Similarly, in Data Packaging the design mark was described with sufficient definiteness and the number of potential marks was not overly broad, so that competitors were on notice and could govern the selection of their marks accordingly.

Here, we find that if Applicant’s marks are allowed to register, there would be insufficient constructive notice to the public regarding the extent of protection that should be accorded to these marks, and the USPTO would be unable to adequately fulfill its duty to conduct searches and determine registrability of these marks.

The Board therefore affirmed the refusals under Section 1 and 45 of the Trademark Act.

Read comments and post your comment here.

TTABlog comment: Suppose the digits had to be in a certain color? Would that make a difference?

Text Copyright John L. Welch 2017.

Precedential No. 11: TTAB Affirms Section 2(d) Refusal of Hockey Logo, Finding No Consent to Registration, 13th Factor Outweighed

The Board affirmed a Section 2(d) refusal of the mark shown below left, for "arranging and conducting ice hockey programs for injured and disabled members and veterans," finding it likely to cause confusion with the mark shown below right, entertainment and association services related to hockey. Applicant did not dispute that the marks are similar and the services related. Instead it contended that the registrant had consented to registration of the applied-for mark, and that under In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012), the 13th du Pont factor should be considered in light of applicant's ownership of the slightly different color logo mark shown farther below, for the same services. In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790 (TTAB 2017) [precedential] (Opinion by Judge Bergsman).

Du Pont 13: Applicant argued that this case is analogous to Strategic Partners [TTABlogged here], where the Board reversed a Section 2(d) refusal based on applicant's ownership of a substantially similar mark that had co-existed with the cited registered mark for more than five years. The Board there observed that the thirteenth du Pont factor (i.e., any other established fact probative of the effect of use) "accommodates the need for flexibility in assessing each unique set of facts." It concluded that the thirteenth factor "outweighs the others and leads us to conclude that confusion is unlikely." Id. at 1400.

The Board pointed out, however, that in Strategic Partners, the co-existing registrations were each more than five years old and thus immune to attach under Section 2(d). See Section 14 of the Trademark Act. [Note: the Board did not call the registrations "incontestable." Hooray for that! - ed./]. Here, however, applicant's existing registration has co-existed with the cited registration for less than five years, and is still subject to possible cancellation under Section 2(d). This is a "key factual distinction from Strategic Partners. *** [W]hile the 3½ year co-existence of Applicant's prior registration and the cited registrations is a relevant consideration, it does not outweigh the other du Pont factors in this case."

Finally, the Board noted once again that the issuance of the registration to applicant does not require approval of the second mark. The Board is not bound by the decision of a Trademark Examining Attorney in another case.

Consent: Applicant pointed to display of its registered mark on opposer's website, accompanied by a short discussion of applicant's organization. However, there was no written consent agreement, and the Board will not infer that the registrant consented to registration based on its apparent knowledge of the previously-registered, slightly different mark.

The Board pointed to In re Opus One Inc., 60 USPQ2d 1812, 1821 (TTAB 2001), where there was likewise no indication that applicant sought a consent to register, or that applicant was even aware of the application to register:

registrant’s conduct, particularly the fact that registrant has not objected to applicant’s use of the mark, reasonably might also be attributable to a belief on registrant’s part that applicant is using the mark pursuant to registrant’s approval and permission, and that registrant has the right to require applicant to cease using the mark in the event that the quality, nature or extent of applicant’s restaurant services were to change in a way detrimental to registrant’s interests.

The Board concluded that, because "Applicant's evidence lacks the weight Applicant attributes to it without an actual written consent to registration," applicant failed to prove registrant's consent to registration.

And so the Board affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: Why need a registration anyway?

Text Copyright John L. Welch 2017.

TTAB Finds PLAZMA and PLAZMA REACTIVE PUMP Deceptive and Deceptively Misdescriptive for Supplements

The Board affirmed refusals of the marks PLAZMA and PLAZMA REACTIVE PUMP for "dietary and nutritional supplements; dietary and nutritional supplements for endurance sports; dietary supplements," finding the marks deceptive and, alternatively, deceptively misdescriptive under Section 2(e)(1). In re Monsterops LLC, Serial Nos. 86295483 and 86295490 (May 15, 2017) [not precedential]. (Opinion by Judge Larkin).

Section 2(a) Deceptiveness: Section 2(a) prohibits registration of a mark that comprises (i.e., includes) deceptive matter. A mark may be deemed deceptive on the basis of a single term embedded in the mark. Section 2(a) deceptiveness is an absolute bar to registration.

The test for deceptiveness has three required elements:

1. Is the term misdescriptive of a character, quality, function, composition, or use of the goods;
2. If so, are prospective purchasers likely to believe that the misdescription actually describes the goods; and
3. If so, is the misdescription likely to affect the purchasing decision of a significant portion of relevant consumers.
In re Tapco Int'l Corp. 122 USPQ2d 1368, 1371 (TTAB 2017) (citing In re Budge, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988)).

The Board found, and applicant did not dispute, that consumers will understand "PLAZMA" to have the meaning of its phonetic equivalent, "plasma." In the context of the goods, "plasma" means the liquid portion of blood in which cells are suspended. Examining Attorney Shaila E. Lewis argued that PLAZMA misdescribes the goods because, as shown by third-party website evidence, plasma in protein form is a known ingredient in dietary and nutritional supplements, and the word "protein" by itself is used to refer to plasma protein. Applicant admitted that its goods do not contain plasma protein.

Applicant contended that the use of the term PLAZMA refers to the "mode of action" by which the goods provide "rapid absorption into blood  plasma and enhanced uptake into working muscle," pointing to its product label and related materials. The Board was not impressed. The issue of deceptiveness must be determined based on the marks themselves, not on the basis of extrinsice materials.

Based on the evidence of record showing that third parties tout the inclusion of plasma protein in their products, the Board found that consumers are likely to believe the misrepresentation.

And finally, as to materiality, plasma is hailed as providing an "edge" to bodybuilders and athletes, enabling them to train harder and more efficiently, recover more rapidly, and achieve greater muscle mass and endurance. The Board therefore found that the involved misdescription is material for purposes of Section 2(a).

And so the Board affirmed the deceptiveness refusal.

Section 2(e)(1) Deceptive Misdescriptiveness: For completeness, the Board also considered the alternative Section 2(e)(1) deceptive misdescriptiveness refusals. The relevant test consists of the first two parts of the Section 2(a) deceptiveness test, and does not include a materiality requirement. In view of the Board's findings above, it affirmed these refusals as well.

Finally, in connection with the alternative Section 2(e)(1) refusals, the Board required disclaimer of the term PLAZMA, because a mark refused under this provision is eligible for registration on the Principal Register under Section 2(f) or on the Supplemental Register.

Read comments and post your comment here.

TTABlog comment:What if the word PLAZMA were used within quotation marks? Or with an asterisk, followed by an explanation on the label?

Text Copyright John L. Welch 2017.

TTAB Test: Is "PPL" Merely Descriptive of Pre-Paid Legal Services?

The USPTO refused registration of the mark PPL, finding it to be merely descriptive of "business administration of legal expense plan services .... [and] reward programs to promote the sale of pre-paid legal expense plans." Applicant Pre-Paid Legal Services, Inc. argued that PPL would not be viewed as referring to "pre-paid legal" because there are other possible definitions of the abbreviation or acronym. How do you think this came out? In re Pre-Paid Legal Services, Inc., Serial No. 86423483 (May 11, 2017) [not precedential] (Opinion by Judge Ritchie).

Examining Attorney Kathy Wang contended that PPL is an acronym for "pre-paid legal" services, which is a feature of characteristic of applicant's services. The Board observed that an acronym mark is considered merely descriptive if:

1. The applied-for mark is an abbreviation or acronym for specific wording;
2. The specific wording is merely descriptive of the recited services; and'
3. The relevant consumers will recognize the abbreviation or acronym as the merely descriptive wording it represents.

The Examining Attorney provided website evidence and online dictionary entries, persuading the Board that PPL is a recognized acronym or abbreviation for "pre-paid legal."

The term "pre-paid legal" immediately conveys to customers a significant feature of applicant's business administration and reward services, and so the phrase is merely descriptive of the services.

Applicant maintained consumers will not view PPL as referring to "pre-paid legal" since there are 71 other meanings for PPL at acronymfinder.com, and PPL received 0 out of 5 stars on that website. It pointed to Baroness v. American Wine Trade, wherein CMS was found to be not merely descriptive of wine. [TTABlogged here]. The Board noted, however, that there the acronym CMS did not "directly and immediately convey the meaning of the three varietals," cabernet, merlot, and syrah. Instead, some thought was required to discern the derivation of that mark. Moreover, the mark at issue here must be considered in relation to the recited services, not in a vacuum.

Considering the entire record, the Board found the applied-for mark to be merely descriptive of applicant's services, and so it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Is this a WYHA?

Text Copyright John L. Welch 2017.

Applying Claim Preclusion Based on District Court Default, TTAB Enters Judgment Against ENTREPRENEURESS Applicant

In this Sections 2(d) and 43(c) opposition to registration of the mark ENTREPRENEURESS for educational and entertainment services relating to women entrepreneurs and business professionals, the Board entered judgment in favor of opposer on the ground of claim preclusion. Opposer had sued the applicants for trademark infringement and, after Dushawn Thomas was dismissed as a defendant, the federal court entered a default judgment against D. Nicole Enterprises LLC. The Ninth Circuit affirmed. The Board ruled that Ms. Thomas was in privity with the LLC and that claim preclusion applied to her. Entrepreneur Media, Inc. v. D. Nicole Enterprises, LLC and DuShawn Thomas, Opposition No. 91212882 (May 11, 2017) [not precedential].

The district court enjoined the LLC and its officers from applying to register the mark ENTREPRENEURESS. When the LLC assigned the subject service mark application to Ms. Thomas, its CEO, the court ordered her to appear before it and show cause why she should not be held in contempt of the court's injunction as a result of the assignment.

Meanwhile in the opposition proceeding, the LLC moved to join Ms. Thomas as a defendant, and the Board granted the motion over Opposer's objection. See Western Worldwide Enterprises Group, Inc. v. Qindao Brewery, 17 USPW2d 1127, 1138 n. 4 (TTAB 1990).

Opposer did not specifically raise the doctrine of res judicata as the basis for judgment, but the Board took up the issue anyway.

A default judgment is a judgment "on the merits" and so may have claim preclusive effect. See, e.g., Lawlor v. Nat'l Screen Service Corp., 349 US 311 (1955). For claim preclusion to apply, the following elements must be present:

(1) the parties (or their privies) must be identical;
(2) there must be an earlier final judgment on the merits of the claim; and
(3) the second claim must be based on the same set of transactional facts as the first.

The Board found that all three element were satisfied here.

Identity (or Privity) of Parties: Applicant argued that the district court's judgment is inapplicable to Ms. Thomas because she was dismissed as a party defendant. The Board, however, found the LLC and Ms. Thomas to be legally identical since she is the assignee of the opposed mark and CEO of the LLC. An assignee stands in the shoes of the assignor. And as CEO of the LLC, Ms. Thomas and the LLC are in privity for purposes of claim preclusion. See The John W. Carson Foundation v. Toilets.com, Inc., 94 USPQ2d 1942 (TTAB 2010). In addition, the district court's injunction applied not only to the LLC but to its "officers."

Final Judgment on the Merits: As indicated, a default judgment is a final judgment on the merits.

Same Transactional Facts: "The marks and claims at issue in this proceeding were also at issue in the Civil Action."

And so the Board entered judgment in favor of opposer, and it denied applicant's motion to suspend this proceeding pending a resolution o the district court's contempt proceeding.

Read comments and post your comment here.

TTABlog comment: Ms. Thomas and the LLC appeared pro se.

Text Copyright John L. Welch 2017.

TTAB Test: How Would You Rule in These Three TTAB Appeals Decided Two Days Ago?

Here are three appeals decided by the TTAB two days ago: a Section 2(e)(1) mere descriptiveness refusal, a Section 2(e)(4) surname refusal, and a Section 2(d) likelihood of confusion refusal. Put on your judicial robes and see if you can figure out how these recent appeals came out. [Answers will be found in first comment].


In re Bedgear LLC, Serial No. 86690878 (May 10, 2017) [not precedential] (Opinion by Judge Greenbaum). [Section 2(e)(1) mere descriptiveness refusal of INDEPENDENT SUSPENSION for "Mattresses and parts thereof, mattress foundations and parts thereof, mattress toppers, pillows, back rest pillows, kids pillows and sleeping bags." Applicant argued that "independent suspension" will bring to mind cars rather than bedding, thus rendering the proposed mark suggestive and incongruous.]

In re Falcon, Serial No. 86673659 (May 10, 2017) [not precedential] (Opinion by Judge Lykos). [Section 2(e)(4) surname refusal of HUSMAN  “Hats; Long-sleeved shirts; Shirts; Sweat shirts; T-shirts.” Applicant contended that HUSMAN is a rare surname (938 listings), and that her mark is a coined term representing a play on the words "husband" and "man" to refer to an unmarried man in a committed relationship.].

In re Cruz, Serial No. 86845373 (May 10, 2017) [not precedential] (Opinion by Judge Gorowitz). [Section 2(d) refusal of PA’DENTRO for "Liquor and liqueur beverages, namely, flavored tequila and ready to drink tequila-based beverages; Tequila," in view of the registered mark ADENTRO for "wines." Applicant argued that the involved goods are completely different because Applicant’s tequila “is a liquor exclusive to Mexico…made from 100% Blue Agave” with an alcohol content ranging from 35% to 55%, whereas Registrant sells a domestic wine made with Spanish varietals using old world wine making techniques.].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2017.

CAFC and TTAB Registration Decisions: July 2015 to April 2017

Here is a bit of reading material for your trip to the INTA annual meeting in Barelona: "Decisions of the Trademark Trial and Appeal Board and the Federal Circuit on Registrability Issues: July 2015 to April 2017." This paper (pdf here) categorizes and summarizes the precedential opinions of the CAFC and TTAB over the last twenty-two months. I will be discussing a number of these cases in my presentation on Wednesday morning, May 24th. An expanded discussion of many of the decisions (i.e, the decisions published in the USPQ between July 2015 and June 2016) appears in "The Sixty-Ninth Year of Administration of the U.S. Trademark (Lanham) Act of 1946," published in February by The Trademark Reporter (TTABlogged here).

Read comments and post your comment here.

Text Copyright John L. Welch 2017.

TTAB Test: Are These Two "EIS & Design" Marks Confusable for Engineering Services?

The USPTO refused registration of the mark shown below left, for "engineering," deeming it likely to cause confusion with the registered mark shown below right for "design for others in the field of engineering, engineering, industrial design ...." The services are in part identical, but what about the marks? How do you think this came out? In re Engineering & Inspection Svcs., LLC, Serial No. 86644478 (May 4, 2017) [not precedential] (Opinion by Judge Adlin).

The Board found the marks to be more similar than dissimilar because the literal and dominant portions of the marks are identical. When marks are comprised of words and a design, the words are usually accorded greater weight. The gears in applicant's mark suggest and reinforce the identified engineering services. [Really? - ed.] "Those interested in Applicant's engineering services would rely on the initials EIS which more clearly identify a source of services than either the nondistinct rectangle or the gear design."

In registrant's mark the initials EIS are highllighted by the accompanying design "becuase the initials effectively 'pierce' the stars design such that the design's left side no longer looks like the side of a standard star, but instead is used to draw attention to the initials, through the lines of the star appearing above the initials." In addition, the letters are effectively "bolded." The words at the bottom of the mark are not bolded and "merely highlight that the source is EIS, which is in turn a Vincit Group member, drawing more attention to the initials than the star design." And star designs are fairly common and thus less distinctive than the accompanying words.

The marks also sound quite similar and convey the same meaning, to the extent consumers perceive a meaning in EIS. "Indeed, consumers familiar with Registrant's mark may, upon encountering Applicant's mark, believe that Applicant is the same EIS which is a member of the Vincit Group."

Applicant's argument that consumers of the involved services are sophisticated and will exercise heightened care was unsupported by evidence. In any case, this factor is "easily outweighed" by the legally identical or closely related services, overlapping trade channels, and similar marks.

And so the Board affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: What do you think?

Text Copyright John L. Welch 2017.

Precedential No. 10: TTAB Sustains Surname Claim Against AZEKA'S RIBS, But Proceeds to Find Opposer's Mark Abandoned

The Board sustained this opposition to registration of the mark AZEKA'S RIBS for "barbecue sauce" [RIBS disclaimed], finding rather easily that the mark is primarily merely a surname. Although that Section 2(e)(4) ruling was dispositive as to the issue of registrability of the mark, the Board exercised its discretion to consider opposer's likelihood of confusion claim, and particularly the issue of whether opposer had abandoned its rights in its pleaded AZEKA'S RIBS mark for marinated ribs. Azeka Building Corp. v. Bryan Kenji Azeka, 212 USPQ2d 1477 (TTAB 2017) [precedential] (Opinion by Judge Quinn).

Section 2(e)(4): In this proceeding involving a dispute between two branches of the Azeka family, the Board considered the Section 2(e)(4) factors set forth in its recent opinion in In re Eximius Coffee, LLC 120 USPQ2d 1276, 1278 (TTAB 2016) [TTABlogged here]:

1) whether the term is the surname of anyone connected with the applicant;
2) whether the term has any recognized meaning other than as a surname;
3) whether evidence shows that the term has the structure and pronunciation of
a surname;
4) whether there is contextual use related to surname significance; and
5) whether the evidence shows use of the term as a surname is rare.

AZEKA is obviously applicant's surname. There was no evidence that AZEKA has any meaning other than as a surname. The third factor was neutral because the record was devoid of relevant evidence on structure and pronunciation. As a contextual clue, the use of the possessive for AZEKA'S is consistent with the perception of the term as a surname. And the evidence revealed 866 individuals with the surname AZEKA, and at least three websites showing use of AZEKA as a surname, "giving the surname at least some public exposure in the media."

The addition of the word RIBS does not detract from the surname significance of AZEKA, since RIBS is at least descriptive, if not generic, when used in connection with barbecue sauce.

In sum, there was nothing in the record to indicate that AZEKA would be perceived as anything other than a surname, and applicant did not contend otherwise. And so the Board sustained opposer's claim under Section 2(e)(4).

Abandonment: Applicant urged the Board to consider opposer's Section 2(d) likelihood of confusion claim in order to put to rest the controversy between the parties as to which is entitled to claim rights in the AZEKA name in the future. Applicant did not dispute that there is a likelihood of confusion caused by opposer's use of the mark AZEKA'S RIBS for marinated ribs prepared with a "secret sauce" and applicant's identical mark for barbecue sauce. He argued that the confusion issue is rendered moot by opposer's abandonment of its rights in the pleaded mark.

The Board has discretion to decide only the claims necessary to enter judgment and dispose of the case at hand, and is not required to decide every pleaded claim. Nonetheless, it was persuaded that it should decide applicant's abandonment defense, which, according to applicant, was the main controversy between the parties.

The Board agreed that contemporaneous use of the mark would likely cause confusion, but it noted that priority is an element that opposer must establish for a likelihood of confusion claim. If opposer has abandoned rights in its mark, then "it becomes available for other to adopt and use as a trademark."

The Board found, and opposer did not deny, that the period of nonuse of opposer's mark exceeded ten years. A three-year period of nonuse is enough to establish a rebuttable presumption of abandonment with intent not to resume use. The burden of production then shifted to the opposer to produce evidence that it intended to resume use.

Opposer pointed to sporadic attempts to license the mark, but the Board found that they fell short of rebutting the presumption of abandonment.

Essentially the evidence in this case does not show, except in one instance, focused negotiations toward execution of a license agreement; rather, these mostly “one and done” contacts were sporadic, cursory and, given the lack of Opposer’s follow-up in most instances, half-hearted, with zero licenses executed. Opposer’s efforts were neither consistent nor sustained. Evidence of vague discussions concerning the potential use of the mark at some unknown point in the future are insufficient to show an intent to resume use.

Opposer gave no explanation or reason as to why it could not use the mark AZEKA'S RIBS on its own, without a license. "[T]he record simply is devoid of any evidence showing a specific and consistent plan to resume use during a period of ten years."

And so the Board concluded that opposer's pleaded mark was abandoned. Therefore opposer cannot demonstrate priority of its pleaded mark and its Section 2(d) claim failed.

Read comments and post your comment here.

TTABlog comment: The Board's decision to exercise its discretion was the most interesting issue in the case, I think. [The substantive issues were rather straightforward.] The Board regularly declines to decide the issue of dilution, for example, when coupled with a likelihood of confusion claim that is successful.

Text Copyright John L. Welch 2017.

Precedential No. 9: TTAB Affirms Surname Refusal of BELUSHI'S for Travel and Restaurant Services

In another decision downplaying the surname rareness factor, the Board affirmed a Section 2(e)(4) refusal of the mark BELUSHI'S for various travel, hotel, and restaurant services, finding it to be primarily merely a surname. Although BELUSHI is an "exceedingly rare" surname (only five people in the U.S. are named BELUSHI), "the celebrity of John Belushi and the continuing media attention on Jim Belushi support a finding that a substantial portion of Americans know BELUSHI to be a surname." In re Beds & Bars Limited, 122 USPQ2d 1546 (TTAB 2017) [precedential] (Opinion by Judge Quinn).

John Belushi
Examining Attorney Ronald L. Fairbanks submitted Lexis/Nexis evidence showing BELUSHI to be a surname (5 listings from Lexis/Nexis). There was no evidence that BELUSHI has a meaning other than as a surname, nor that anyone connected with Applicant has the surname BELUSHI. The inclusion of the apostrophe was a "contextual clue" that the BELUSHI is a surname.

Applicant focused on the rarity of the surname, arguing that "because there are only five people in the entire United States with the surname Belushi, substantially no one will be adversely affected by the registration of Applicant’s mark BELUSHI’S." [Note that this is the approach to Section 2(e)(4) espoused by former TTAB Judge Seeherman]. The Examining Attorney pointed to the fame and publicity of the Belushi brothers, John and Jim, in the television and film industries, which greatly increases the public’s awareness of BELUSHI as a surname.

The Board observed that that "[e]ven a rare surname may be held primarily merely a surname if its primary significance to purchasers is that of a surname." It found that BELUSHI "is so well-known as a result of media publicity that it would be immediately recognized as a surname."

The relevant question is not simply how frequently a surname appears, however, but whether the purchasing public for Applicant’s services is more likely to perceive Applicant’s proposed mark as a surname rather than as anything else. How frequently it has been exposed to the purchasing public as a surname, thereby causing consumers to recognize it as such, is also of relevance in this case.

The Board found this case to be similar to In re Gregory, 70 USPQ2d 1792 (TTAB 2004), wherein the mark ROGAN was found to be primarily merely a surname in view of substantial media exposure of individuals with that surname, including Baseball Hall of Famer Wilber Rogan, author Barbara Rogan, actors Seth Rogan and Joe Rogan, and former Congressman and USPTO Director James Rogan. There, the Board concluded that "the name [Rogan] may be rare when viewed in terms of frequency of use as a surname in the general population, but not at all rare when viewed as a name repeated in the media and in terms of public perception." Id. at 1795.

Applicant contended that In re Pyro-Spectaculars Inc., 63 USPQ2d 2022 (TTAB 2002) was more to the point. There, the Board reversed a surname refusal of SOUSA for fireworks and related entertainment services, based on evidence of the continuing fame and notoriety of the historical band leader and composer John Philip Sousa for his patriotic music, and on the fact that fireworks and shows featuring pyrotechnics are the types of goods and services that potential purchasers would associate with patriotic events, figures, and music. The Board consequently found that the primary significance of SOUSA, when used in connection with fireworks and related services, was as the name of a person well known in United States history for his patriotic music.

Here there was no evidence that John and Jim Belushi qualify as historical figures associated with the services identified in the application at issue.

Jim Belushi
And so the Board concluded that BELUSHI'S is primarily merely a surname, and it affirmed the Section 2(e)(4) refusal.

Barcelona
Read comments and post your comment here.

TTABlog comment: During prosecution, applicant included an alternative amendment to the Supplemental Register, which the USPTO accepted, and so the mark BELUSHI'S will be registered in due course (and will not be published for opposition). Use in the USA is not required because applicant has an issued EU registration. If this mark were used in the USA, would problem arise under the right of publicity laws?

Note that a mark registered on the Supplemental Register without use in the USA is a paper tiger. Is there any way that Bayer v. Belmora could be stretched to provide some kind of rights under the Lanham Act to this applicant?

Text Copyright John L. Welch 2017.

TTAB Test: Are Pet Store Services Related to Pet Hotel Services?

The USPTO refused registration of the mark HAPPY HOUND for "retail store services featuring dog and pet products made by others," finding it likely to cause confusion with the mark shown below, for "pet boarding services; pet day care services; pet hotel services" [TRAINING DAYCARE BOARDING SPA disclaimed]. The Board found the marks to be substantially similar, since HAPPY HOUND is the dominant element in the cited mark. But what about the services? How do you think this came out? In re Happy Hound LLC, Serial No. 86167663 (April 3, 2017) [not precedential] (Opinion by Judge Goodman).

Examining Attorney Linda A. Powell made of record excerpts from various websites showing that services such as those of applicant and registrant are advertised and offered together.

The evidence shows that retail stores featuring dog and pet supplies, dog day care and dog boarding services may originate from the same source. Not only does this evidence establish a relationship between Applicant’s and Registrant’s services, but it also establishes that the channels of trade overlap. That is, the third-party websites show that Applicant’s and Registrant’s services are advertised and offered to the same consumers at the same time and, therefore, the services at issue move in the same channels of trade.

In an attempt to demonstrate the weakness of the cited mark, applicant relied on 31 websites that show use of HAPPY HOUND in connection with dog day care, boarding, grooming, pet sitting, dog walking and/or dog training. This evidence, according to the Board, showed that consumers are likely to be accustomed to encountering the phrase HAPPY HOUND in relation to registrant's services, and it tended to show that registrant's mark is relatively weak and entitled to only a narrow scope of protection. The registered mark "will only bar registration of marks as to which the resemblance [to Registrant's mark] is striking enough to cause one seeing it to assume that there is some connection, association or sponsorship between the two.'" The Board concluded that this du Pont factor was neutral. [Why neutral? - ed.]

Applicant maintained that the purchasers of the involved services are sophisticated, but the Board noted that the services are offered to the general public and there was no record evidence to support applicant's contention. In any event, even sophisticated purchasers are not immune from source confusion when highly similar marks are used with related services. The Board found this factor to be neutral.

The Board concluded that confusion is likely and it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Seems to me the third-party evidence should have been given more weight.

Text Copyright John L. Welch 2017.

San Francisco Law Firm Seeks Mid-Level TM Attorney

Pranger Law PC, a San Francisco boutique law firm specializing in trademark and advertising law, has an opening for a Trademark Attorney to work with a domestic and international trademark portfolio, with heavy enforcement work. "The ideal candidate will have at least 5-7 years prior experience and be licensed to practice in CA (other jurisdictions may be considered)." More details here.

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CITY CLUB Mark Survived Tropical Storm Sandy, Says TTAB

This opposition involving the mark CITY CLUB for soft drinks boiled down to a priority contest. Applicant Day's Beverages relied on its filing date of July 15, 2014 as its priority date, and it claimed that opposer, although the first user, had abandoned its rights to the mark prior to that July date. The Board said, Have a TTABad day!  3rd Generation Enterprises Co., Corp. v. Day’s Beverages, Inc., Opposition No. 91220327 (April 24, 2017) [not precedential] (Opinion by Judge Quinn)

The Board pointed out that there are two elements to an abandonment claim: nonuse of the mark and intent not to resume use. If the mark has not been in use for a three-year period, Section 45 of the Act creates a presumption of abandonment and the mark owner bears the burden to produce evidence that it did not abandon the mark - i.e.,either that it has used the mark or that it intended to resume use. The ultimate burden of persuasion on the issue, however, remains with the party alleging abandonment.

Applicant contended that Opposer 3rd Generation began “liquidating” its CITY CLUB inventory in July 2011; that opposer has not used the mark since then; and that opposer failed to establish that its nonuse was excusable and that it had an intent to resume use. In response, opposer contended that applicant failed to make out a prima facie case of abandonment and that, in any event, any period of opposer’s nonuse is excusable.

The evidence provided by opposer 3rd Generation showed use of the mark in 2009 and continuing until 2012, when opposer lost its biggest customer. The latest invoice for that year was dated July 18, 2012.

On August 29-30, 2012, tropical storm Sandy struck New Jersey, flooding opposer's warehouse. As a result opposer lost all of its inventory as well as its computers and business records. Opposers sales of CITY CLUB brand soda resumed in 2014 and totaled a few thousand dollars for the year. The 2014 invoices were dated in October to December 2014 and showed sales to a single customer. At the time opposer's witness testified in 2015, sales that year had also totaled a few thousand dollars.

The Board found "substantial evidence" that opposer did not abandon its mark. Although 3rd Generation stopped using the mark in October 2012 due to Sandy, it intended to resume use and did so in 2014. Thus, the maximum period of nonuse was two years, and there was no prima facie abandonment. [In any event, this nonuse was excusable].

While "hardly impressive," opposer's sales were "certainly of a magnitude that demonstrates prior and continuous use of the mark with no abandonment, rather than, as Applicant contends, mere 'liquidation' of the brand."

And so the Board ruled that opposer had prior rights in the CITY CLUB mark and it sustained the opposition.

Read comments and post your comment here.

TTABlog comment: Rather straightforward, don't you think?

Text Copyright John L. Welch 2017.

Recommended Reading: Prof. David S. Welkowitz, "Trademark Trial and Appeal Board, Meet the Constitution"

Professor David Welkowitz of Whittier Law School questions the TTAB's practice of refusing to address constitutional issues, in his article, "Trademark Trial and Appeal Board, Meet the Constitution," Fordham Intellectual Property, Media and Entertainment Law Journal, Vol. 27, No. 3 (2017). [pdf here].

Abstract
For many years, the Trademark Trial and Appeal Board has refused to address constitutional claims raised in the course of registration or cancellation proceedings. A recent example involves the Washington Redskins trademark, which is the subject of a cancellation proceeding now before a U.S. Court of Appeals. The Board’s refusal to address constitutional issues rests on the assumption that the Board lacks the authority to make constitutional decisions. That may seem odd, given the fact that the Board is an arm of the federal government, and its members are bound to uphold the Constitution. This Article examines the basis of the Board’s claim of incapacity. Although the Board’s claim is not with-out precedent, it is argued that the better reading of current law is that the Board does have the capacity to address constitutional claims and that it should do so. The Article further examines ways in which the Board can decide constitutional issues without overstepping its bounds as an administrative agency. In particular, the Article examines the possible use of a familiar constitutional principle of avoidance as a means of allowing the Board to incorporate constitutional principles into its decision-making without having to rule on the constitutionality of the provisions of the federal trademark statute.

Read comments and post your comment here.

Text Copyright John L. Welch 2017.

Precedential No. 8: TTAB Finds KLEER ADHESIVES Deceptive, But Not KLEER MOULDINGS and KLEER TRIMBOARD

The Board adhered to its standard test for deceptiveness under Section 2(a) in affirming a refusal of KLEER ADHESIVES for adhesives and mortar for use with PVC building materials, the products being "optically opaque, color-matched, or otherwise non-transparent." As to the marks KLEER MOULDINGS and KLEER TRIMBOARD for PVC building materials, however, the Board reversed the same refusals due to lack of evidence that the term KLEER (or its phonetic equivalent, "clear") has an understood meaning with regard to such synthetic products. In re Tapco International Corporation, 122 USPQ2d 1369 (TTAB 2017) [precedential] (Opinion by Judge Shaw).

Under Section 2(a) of the Trademark Act, registration must be refused if a term is deceptive of a feature or an ingredient of the identified goods. In re Budge, 857 F.2d 773, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988). The test for deceptiveness is whether all three of the following criteria are met:

(1) Is the term misdescriptive of the character, quality, function, composition or use of the goods?
(2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods? and
(3) If so, is the misdescription likely to affect the purchasing decision of a significant portion of relevant consumers? Id.

KLEER ADHESIVES: The Board agreed with Examining Attorney Fred Carl III that KLEER is the phonetic equivalent of "clear," that "clear" means transparent, and that applicant's goods are not transparent. Consumers are likely to believe that the description of the goods as transparent because - as shown by web pages, new stories, and "how-to" articles - manufacturers provide clear adhesives for use in the construction industry.

Applicant Tapco argued that consumers are unlikely to believe that its adhesives are clear because they are sold only to "a sophisticated relevant consumer base of builders, contractors, sub-contractors, and other knowledgeable construction professionals." According to Tapco, these consumers "would be “savvy enough to realize that colormatched adhesives for use with the Applicant’s like-branded KLEER PVC building products are adhesives sold under the KLEER brand umbrella, as the term KLEER is viewed in the relevant industry as a house mark and known source identifier covering a wide variety of products." The Board pointed out, however, that the application at issue does not limit the channels of trade to only sophisticated consumers. Thus the Board must presume that applicant's goods are sold to all prospective consumers of such adhesives, including the average homeowner. Moreover, there was no evidence that consumers would view KLEER as having another meaning, and thus "there is nothing to suggest any industry custom or understanding that KLEER does not mean clear to building construction professionals."

The Board concluded that "prospective purchasers are likely to believe that the term KLEER describes Applicant’s adhesive products when, in fact, they are not clear."

The evidence demonstrated that clear adhesives have important and desirable advantages over non-transparent adhesives, and so the Board found that "a clear-drying finish would be material to the decision by consumers to purchase PVC adhesives." Although flavor, scent, and color would typically not be considered material, the desire of consumers for clear adhesives is more than a personal preference:

The record establishes that clear adhesives are objectively more useful than non-transparent adhesives because they provide a bond "that cannot be seen" or which can be used to join products of any color. This feature makes clear adhesives more desirable than other non-transparent adhesives.

And so the Board found KLEER ADHESIVES to be deceptive under Section 2(a).

KLEER MOULDINGS and KLEER TRIMBOARD: The Examining Attorney contended that the word KLEER in these two marks indicates that the goods are made from "clear wood," i.e., wood that is free from knots and other defects. Since applicant's goods are not made from wood that is free from knots or other defects, he maintained that the mark is misdescriptive of the goods. The Board construed the argument to be that consumers of applicant’s synthetics products will likely assume there is a similar distinction between synthetic building products that are clear of any defects and those that are not.

Although the USPTO's evidence established that "clear" has an understood meaning with respect to wood, "there is no evidence in the record establishing a similar recognized distinction between clear and blemished synthetic building products."

The Board found no need to reach the third Budge factor, and it reversed the deceptiveness refusal as to these two marks.

Read comments and post your comment here.

TTABlog comment: Rather straightforward, don't you think?

Text Copyright John L. Welch 2017.

TTAB Posts May 2017 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled 12 (twelve) oral hearings for the month of May 2017. The 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.



May 2, 2017 - 11 AM: In re Volcano Produce, Inc., Serial No. 86321169 [Section 2(e)(1) mere descriptiveness refusal of GOLDENBERRY for "fresh fruits"].

May 2, 2017 -2 PM: In re Red Lobster Hospitality, LLC, Serial Nos. 85179591 and 85179618 [refusal to register the mark shown below, in color and in black-and-white, for "restaurant services and restaurant carry-out services," without a disclaimer of LOBSTER].

May 4, 2017 -2 PM: Advanced California Innovative Institute, Inc. v. American Cambridge Institute, Cancellation No. 92060449 et al. [Petition for cancellation of a registration for the mark ACI INSTITUTE (in standard character and Chinese graphical character form, below) for

"printed instructional, educational, and teaching materials in the field of English, math, and standardized test preparation" and for "educational services, namely, conducting 2nd grade through 12th grade courses of instruction and tutorial services in the field of English, math, standardized test preparation, and college application assistance and distribution of educational materials in connection therewith," on the ground of likelihood of confusion with the registered marks shown below for "education services, namely, mentoring in the field of Math and English; Education services, namely, providing kindergarten through 12th grade (K-12) classroom instruction; Education services, namely, providing mentoring, tutoring, classes, seminars and workshops in the field of attaining higher education," and on the grounds of fraud and lack of ownership].

May 9, 2017 - 10:30 AM: In re Intercontinental Exchange Holdings, Inc., Serial Nos. 86659045, 86659053, and 86659057 [Refusal to register BRENT for various financial services, on the ground of genericness, or alternatively, mere descriptiveness and lack of acquired distinctiveness].

May 9, 2017 -2 PM: In re Nunn Milling Company, Inc., Serial No. 86596764 [Refusal to register VERY BERRY for "bird food made in significant part of suet" without a disclaimer of BERRY].

May 10, 2017 - 2 PM: In re Pan American Properties, Corp., Serial No. 86350072 [Section 2(d) refusal of G SHOT for "Alcoholic beverages except beers; Prepared alcoholic cocktail" in view of the registered mark G-SHOT for "non-alcoholic energy drinks containing red ginseng"].

May 11, 2017 - 10 AM: In re Invention Development Management Company, LLC , Serial No. 85876688 [Refusal to register COFFEE FLOUR on the Supplemental Register, for "Flour made by processing and blending together coffee cherry skins, pulp, and pectin for use, alone or in combination with other plant and milk based products, as a dry ingredient in food and beverage products for consumer use," on the ground of genericness].

May 16, 2017 -11 AM: In re Business Building Solutions, LLC., Serial No. 86306250 [Refusal of THE BREAKFAST SHOPPE for "catering services"on the ground of genericness, or alternatively, mere descriptiveness and lack of acquired distinctiveness].

May 18, 2017 - 11 AM: In re Wal-Mart Stores Inc., Serial No. 86651975 [Section 2(d) refusal of GEORGE for "watches, clocks, jewellery and imitation jewellery" in view of the identical mark registered for "pet collar medallions and charms"].

May 18, 2017 - 1 PM: In re Williams-Sonoma, Inc., Serial No. 86092589 [Section 2(d) refusal of MANHATTAN for "upholstered furniture"in view of the registered mark MANHATTAN CABINETRY for “custom designed and crafted furniture].

May 23, 2017 - 2 PM: In re Sweetwater Brewing Company LLC, Serial No. 86587130 [Section 2(d) refusal of WHIPLASH WHITE IPA for "ale; beer"  in view of the registered mark WHIPLASH for “wine," and further refused for failing to disclaim the term WHITE IPA].

May 23, 2017 - 2 PM: In re Kipling Apparel Corp., Serial No. 86356569 and 86356608 [Section 2(e)(4) surname refusal of KIPLING for "picture frames" and "mugs, tumblers, drinking bottles; trays for domestic purposes; coasters not of paper and other than table linen; leather coasters, plastic coasters"].

Read comments and post your comment here.

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

Text Copyright John L. Welch 2017.