TTAB Sustains Dave Brock's (HAWKWIND) Opposition to NIK TURNER'S HAWKWIND

The TTAB sustained this Section 2(d) opposition to Nik Turner's application to register the mark NIK TURNER'S HAWKWIND for "Entertainment services, namely, live musical performances by an individual or musical group." The Board found Opposer David Brock to be the owner and prior user of the mark HAWKWIND, and rejected Turner's claim that Brock had abandoned the mark. Brock v. Turner, Opposition No. 91214199 (June 28, 2017) [not precedential] (Opinion by Judge Ritchie).

Dave Brock co-founded the band HAWKWIND in 1969 and has been the only person who has been a member of the band continuously since its founding. Applicant Nik Turner admitted that Brock exercises artistic control over the band's music. Expert witnesses testified that Dave Brock and the band HAWKWIND are synonymous.

David Brock
HAWKWIND toured the United States on various occasions from 1974 to 2007. A tour was planned for 2013 but, after bookings were made, the tour was cancelled due to Brock's poor health. HAWKWIND has been selling recordings in this country since 1972, as Turner admitted.

Turner acknowledged that he was not a founder of HAWKWIND. He left the band in 1976, and then returned from 1982-1984. He also acknowledged that he never controlled the band or its name, stating that "I, like every other member of the 'classic' line-up, was forced out of the band by Dave Brock." Turner has played in several bands whose names included the term "HAWKWIND." In 1994, he played in the United States under the name NIK TURNER’S HAWKWIND.

Priority/Abandonment: The Board found that Brock "has controlled the nature and quality of the HAWKWIND mark for musical recordings and for entertainment services in the nature of live musical performances in the United States, having established a priority for musical recordings in the United States of 1972 and of live musical performances of 1974.

Turner contended that Brock abandoned the HAWKWIND mark for live musical performances because Brock and HAWKWIND have not toured in the United States since 2007. The Board, however, found that Brock did not intent to abandon the mark "because HAWKWIND has continued touring elsewhere and HAWKWIND was planning to tour in the United States at least as recently as 2013, taking substantial steps to do so, before the tour was cancelled for reasons related to Mr. Brock’s health." Musical recordings of HAWKWIND are still available in the U.S.

Therefore,  the Board ruled, Brock did not abandon the mark, and he retained his established priority date of 1974. Turner’s earliest priority date for NIK TURNER’S HAWKWIND was 1994. The Board concluded that Brock had established priority for purposes of likelihood of confusion.

Nik Turner
Likelihood of Confusion: The Board found the services of the parties to be identical, the channels of trade overlapping, and the marks substantially similar in sight, sound, and commercial impression. The addition of "NIK TURNER'S" to "HAWKWIND" makes Turner's mark no less confusingly similar to HAWKWIND. See, e.g., In re Riddle, 225 USPQ 630 (TTAB 1985) (ACCUTUNE and RICHARD PETTY'S ACCU TUNE).

[W]e further note that Mr. Turner referred in his declaration to NIK TURNER'S HAWKWIND as "my version of HAWKWIND." This indicates exactly the problem. Consumers are likely to assume that Mr. Turner is simply offering another "version" or offshoot of HAWKWIND, which they would associate with Mr. Brock's HAWKWIND.

Brock claimed that his mark is famous, but his proofs fell short. The Board concluded that any fame of HAWKWIND in this country has waned in recent years. Nonetheless, "Mr. Brock has attained a certain degree of renown for the HAWKWIND mark among concert goers in the United States."

Considering the relevant du Pont factors, the Board found confusion likely and it therefore sustained the opposition.

Read comments and post your comment here.

TTABlog comment: Hundreds of comments on this dispute may be found at this TTABlog post, nearly all siding with Dave Brock. Raphael Gutierrez provided a report (here) on the oral hearing in this case.

Text Copyright John L. Welch 2017.

Lululemon Yoga Mat Configuration Lacks Acquired Distinctiveness, says TTAB

The TTAB affirmed a refusal to register the product configuration shown below, for "yoga mats," the purported mark being described as "a three-dimensional configuration of a rectangular-shaped yoga mat having one corner being curved and the remaining three corners being right angles." The Board agreed with Examining Attorney Samantha Sherman that Lululemon's proof of acquired distinctiveness was insufficient. In re Lululemon Athletica Canada Inc., Serial No. 86718537 (June 22, 2017) [not precedential] (Opinion by Judge Bergsman).

As we all know (See WalMart v. Samara), a product configuration cannot be an inherently distinctive trademark. The applicant for registration must establish acquired distinctiveness under Section 2(f). The Board observed that [t]here is no fixed rule for the amount of proof necessary to demonstrate acquired distinctiveness; however, the burden is heavier for product configurations." Proving acquired distinctiveness for a product design is no easy task. "[E]even long periods of substantially exclusive use may not be sufficient to demonstrate acquired distinctiveness especially where the subject matter sought to be registered is a product design."

Lululemon claimed use of the mark for more than five years; promotion of the mat on its website and in social media; sales of more than 1.3 million mats; 14,000 hits on a website video; widespread media attention; significant promotional expenditures; and a high product rating. However, nothing submitted by Lululemon referred to the shape of the mat. Lululemon did not provide any "look for" advertising directing consumers to the shape of the product.

"Look for" advertising refers to advertising that directs the potential consumer in no uncertain terms to look for a certain feature to know that it is from that source. Stuart Spector Designs Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d at 1572.

The Board found Lululemon's proofs to be inadequate, concluding that one curved corner "is not a distinguishable feature of the yoga mat." Others sell yoga mats with rounded corners. [E.g., see photo below].

Without any advertising directing consumers that Applicant’s yoga mat has one curved corner, consumers are unlikely to notice that feature of Applicant’s yoga mat, let alone perceive it as being exclusively associated with a single source.

The substantial sales figures alone do not establish consumer recognition of the product shape as a trademark; they might evidence that popularity of the product itself. Lululemon's reference to its advertising expenditures was vague, and it did not show how many different individuals viewed the website video or visited its website.

This record does not support a finding that consumers perceive the design of Applicant’s yoga mat as an indicator of source. There is simply nothing in the record that promotes the design of Applicant’s yoga mat in a way that would imbue it with source-identifying significance. For example, Applicant’s website and the product reviews show the product like any other advertising or photographs for purposes of product comparison.

And so the Board concluded that Lululemon had failed to prove acquired distinctiveness.

Read comments and post your comment here.

TTABlog comment: The Board is always looking for "look-for" advertising in these product configuration cases. Seldom found, however.

Text Copyright John L. Welch 2017.

Rejecting Laches Defense, TTAB Orders Cancellation of Two Registrations for Restaurant Services

The TTAB granted this petition for cancellation of 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. Respondent asserted the affirmative defenses of laches but failed to show any specific economic prejudice resulting from the 3-year delay in filing the petition for cancellation; in any event, because confusion was inevitable the laches defense was not available. 3 Square, Inc. v. San Pasqual Casino Development Group, Inc. , Cancellation No. 92056703 (June 22, 2017) [not precedential] (Opinion by Judge Heasley).

Priority: The principal issue for the likelihood of confusion discussion was the question of priority. The earliest date respondent could rely on was August 14, 2006, the filing date of the underlying ITU application for its BLD registration. It first used the mark in 2009.

Petitioner's co-owner testified that petitioner began using its marks on July 17, 2006. A bank statement reflected revenues received from July 18-21, 2006. The Board found petitioner's evidence and testimony to be sufficient to establish priority. "The testimony of a single witness with personal knowledge of the facts may be sufficient to prove first use if it is clear, convincing, consistent, uncontradicted, and sufficiently circumstantial to convince the Board of its probative value." Circumstantial evidence corroborated petitioner's use of both the block letters BLD interchangeably with the logo form of its mark.

Respondent asserted that it had decided to open its restaurant by February 20, 2006, adopted its intended logo form on July 17, 2006, and was the first to seek and obtain registration of its marks. The Board pointed out, however, that even if Respondent chose it marks first, the first party to use its mark is the senior user.

Laches: Laches "may be defined as the neglect or delay in bringing suit to remedy an alleged wrong, which taken together with lapse of time and other circumstances, causes prejudice to the adverse party and operates as an equitable bar."

Respondent’s registration for BLD issued on December 15, 2009, and for BLD'S on Jan. 12, 2010. The petition for cancellation was filed on January 12, 2013: approximately three years and a month after the BLD registration issued, and three years and ten days after the BLD'S second registration. The first issue was whether this delay was unreasonable.

Petitioner was unaware of Respondent until the USPTO issued an office action refusing registration of petitioner's two BLD marks in mid-2012. "The most Petitioner can be charged with, then, is constructive notice of Respondent’s registrations."

The Board noted that "[c]omparable periods of time have been found insufficient to establish laches [e.g., Plymouth Cordage Company v. Solar Nitrogen Chemicals, Inc., 152 USPQ 202, 204 (TTAB 1966) (slightly less than 3 year delay not sufficient to establish laches)], or sufficient to establish laches [e.g., Ava Ruha Corp. v. Mother’s Nutritional Ctr., Inc., 113 USPQ2d 1575, 1580-81 (TTAB 2015) (a little over 3 years, 2 months], depending on theircircumstances. The different outcomes can be explained by the degree of the plaintiffs’ unreasonableness and the magnitude of the defendants’ prejudice."

Respondent claimed that it made significant marketing and advertising investments in its two BLD marks and that cancellation of its two registrations would subject it to severe economic prejudice. However, the Board pointed out, those investments concerned respondent's hotels as a whole. Respondent was unable to say what portion was expended for the BLD venues themselves. Although a "significant portion" was for restaurant services, each hotel offered nine or ten restaurant options.

Without details regarding "the specific economic prejudice uniquely suffered by cancellation of its BLD and BLD’S registrations," the Board was "unable to say that Respondent has established its affirmative defense of laches."

Moreover, when confusion is inevitable, the equitable defense of laches will not be applied because any injury to respondent is outweighed by the public interest in avoiding confusion. Here, the marks and services are identical with no geographical limitation on respondent's rights.

Therefore the Board declined to uphold the affirmative defense of laches, and it granted the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: Does the laches defense conflict with the 5-year "statute of limitations" of Section 14? If a registrant aggressively invests in its mark, it may be protected from cancellation as early as three years from registration (Ava Ruha). Does that doctrine inequitably favor the big guy over the little guy?

Text Copyright John L. Welch 2017.

USPTO Issues New Examination Guide for Section 2(a) Disparagement and Scandalousness Cases

The USPTO has issued Examination Guide No. 1-17 (pdf here), entitled "Examination Guidance for Section 2(a)’s Disparagement Provision after Matal v. Tam and Examination for Compliance with Section 2(a)’s Scandalousness Provision While Constitutionality Remains in Question." The Guide explains "how the USPTO will examine applications following the Supreme Court’s decision in Tam."

Disparagement: As a result of the Supreme Court's decision in Tam, the disparagement provision of Section 2(a) is no longer a valid ground for refusal or cancellation of a registration. Consequently, "the portions of Trademark Manual of Examining Procedure (TMEP) §1203 that relate specifically to examination under the disparagement provision no longer apply. Applications that received an advisory refusal under the disparagement provision and were suspended pursuant to Examination Guide 01-16 [pdf here] will be removed from suspension and examined for any other requirements or refusals. If an application was previously abandoned after being refused registration under the disparagement provision, and is beyond the deadline for filing a petition to revive, a new application may be filed."

Scandalousness: The FUCT appeal (In re Brunetti), which challenges the constitutionality of the scandalousness provision of Section 2(a) is currently suspended at the CAFC. [TTAB decision TTABlogged here]. The CAFC has ordered the parties to submit supplemental briefing, "explaining how the constitutionality of the scandalousness provision should be resolved in light of the Supreme Court’s decision in Tam."

[T]he USPTO continues to examine applications for compliance with that provision according to the existing guidance in the TMEP and Examination Guide 01-16. Any suspension of an application based on the scandalousness provision of Section 2(a) will remain in place until the Federal Circuit issues a decision in Brunetti, after which the USPTO will reevaluate the need for further suspension.

Read comments and post your comment here.

TTABlog comment: What's your prediction as to the outcome of Brunetti?

Text Copyright John L. Welch 2017.

Precedential No. 18: Finding Abandonment of Opposer's Mark, TTAB Dismisses ARMBRUSTER STAGEWAY Opposition

In an exhausting exhaustive 61-page opinion, the TTAB dismissed this Section 2(d) opposition to registration of the mark ARMBRUSTER STAGEWAY for "vehicles, namely, customized limousines," finding that opposer had abandoned its pleaded mark ARMBRUSTER/STAGEWAY for limousines, prior to applicant's constructive first use date (December 4, 2012). The Board found opposer's testimony and evidence to be riddled with inconsistencies and contradictions as to whether it ever used the mark, and totally lacking as to its intent to resume use. Executive Coach Builders, Inc. v. SPV Coach Company, Inc., 123 USPQ2d 1175 (TTAB 2017) [precedential] (Opinion by Judge Hightower).

Under Section 45 of the Trademark Act, a mark is deemed to be abandoned “[w]hen its use has been discontinued with intent not to resume use.” Nonuse for three consecutive years constitutes prima facie evidence of abandonment, triggering a rebuttable presumption that the mark was abandoned without intent to resume use. The party contesting the claim of abandonment must come forward with evidence of use, or with evidence of intent to resume use. The ultimate burden of persuasion, however, remains with the party claiming abandonment.

The original Armbruster/Stageway company dates back to 1966. Opposer Executive Coach purchased the ARMBRUSTER/STAGEWAY mark and other assets in 1993. Its president testified at one point that from 1993-1998 approximately 20% of the cars bore the ARMBRUSTER/STAGEWAY badge, but later testified that he was uncertain as to the number. Opposer had no documents regarding use of the mark on cars: no invoices, photographs, or customer or sales records. Its president testified at one point that opposer ran out of badges by 2011, but later stated that the company still had some badges at the time of trial, although it provided none.

Nonuse: The Board observed that the testimony of a single witness may be sufficient to establish priority, but it “should not be characterized by contradictions, inconsistencies, and indefiniteness.” Here, however, “the testimony is indefinite and internallyinconsistent; unsupported by documentary evidence; and contradicted by the documentary evidence that is of record, as well as by the clear and consistent testimony of eight other trial witnesses.” The testimony of opposer’s president, the Board observed, was “consistent with a subjective desire to reserve a right in the ARMBRUSTER/STAGEWAY mark.” However, "[T]he Lanham Act was not intended to provide a warehouse for unused marks.”

The Board found by a preponderance of the evidence that the mark “was not used on vehicles in the ordinary course of trade after Opposer purchased the company in 1993.”

Opposer claimed that it used the subject mark in other ways in connection with custom vehicle manufacturing and sales services: in vehicle warranty manuals; on signs, plaques, and memorabilia displayed in opposer’s plant; on a trade show banner; in two domain names (armbrusterstageway.com and armbrusterstagewaylimousines.com); and in association with replacement parts.

The Board, however, found these uses to be “isolated and de minimis,” and “insufficient to constitute bona fide use of [the] mark in the ordinary course of trade.” Opposer did not contend that it took orders for ARMBRUSTER/STAGEWAY cars in association with the banner. The domain names, per se, did not identify opposer’s goods or services. The sale of unbranded replacement parts for ARMBRUSTER/STAGEWAY vehicles is “insufficient to maintain rights in the mark.” The displays in opposer’s plant merely reflect the historical use of the ARMBRUSTER/STAGEWAY mark on cars.

Therefore, the Board found that opposer presumably “abandoned the ARMBRUSTER/STAGEWAY mark through nonuse by at least 1996, that is, through nonuse for three consecutive years after Opposer apparently purchased the mark.” The burden of production shifted to opposer to produce evidence that it intended to resume use.

Intent to Resume Use: To prove that its nonuse of the mark was excusable, opposer was required to provide evidence that its activities were “those of a reasonable business with a bona fide intent to use a mark in U.S. commerce would have undertaken,” and that it planned to use the mark in the “reasonably foreseeable future.”

Here there was no evidence that opposer “developed an intent to resume commercial use of the ARMBRUSTER/STAGEWAY mark in the reasonably foreseeable future within the three-year period of nonuse from 1993 to 1996.”

Conclusion: The Board found that opposer abandoned the subject mark by 1996 and did not resume use of the mark prior to applicant’s constructive priority date of December 4, 2012.

Read comments and post your comment here.

TTABlog note: Hat tip to FOTTABlog Rebeccah Gan, applicant's counsel.

Text Copyright John L. Welch 2017.

Two Genericness Cases: BAGCORP and PATINA - Can You Guess What Goods?

In two recent genericness cases, the Board affirmed a refusal to register BAGCORP and sustained a petition for cancellation of a registration for PATINA, both on the ground of genericness. Can you guess what the goods were in each case?

In re BAG Corp, LLC d/b/a BAGCORP, Serial No. 86438780 (June 21, 2017) [not precedential) (Opinion by Judge Adlin). This applicant sought to register BAGCORP for "flexible intermediate sacks or bags for storage and transportation of materials in bulk." [Did you guess that?] There was no dispute that the genus of the goods was as described in the identification of goods. But does the public understand BAGCORP to refer to that genus of goods?

The evidence showed that applicant sells its bags to a wide range of businesses in the agricultural, waste, construction, transportation, landscaping, and food industries, and other industries, all in need of bags for storage and transportation.

Obviously the word "bags" is generic because applicant uses the word in its identification of goods. Moreover, applicant prominently uses that word generically in selling its goods. [What a surprise! - ed.]. When the words "bag" and "corp" are combined the relevant public will understand the term to refer to a company that sells bags. There was no evidence that BAGCORP has any other meaning. On the other hand, Examining Attorney Won T. Oh provided evidence that others use the term "bag corp." or variations thereof, generically.

The Board found this case to be similar to the ELECTRIC CANDLE COMPANY case [TTABlogged here], where that term was found to be generic for light bulbs, light fixtures, and related goods. The Board there held that the addition of the company designation had no significance. There was no evidence that any other entity used the entire phrase.

Although applicant was correct that its goods are not referred to as BAGCORP, "the relevant public would nonetheless understand [BAGCORP] to refer to a company that offers [bags]."  The term must be "left available for other such companies selling [bags]."

And so the Board affirmed the genericness refusal.

Rheinzink GmbH & Co., KG v. Western States Decking, Inc., Cancellation No. 92059862 (June 21, 2017) [not precedential) (Opinion by Judge Pologeorgis). In a 32-page opinion, the Board found PATINA to be generic for "metal roofing; metal roofing panels; metal roofing tiles; metal tiles for walls; ceilings," and it ordered cancellation of respondent's Supplemental Registration. [Did you guess that?]

The Board again found that the identification of goods defines the applicable genus. Relevant consumers include both industry professionals and non-professionals. The question, then, was whether the primary significance of PATINA to the relevant purchasing public is the class or category of goods identified in the challenged registration.

"Patina" is defined as a thin coating or layer, specifically an incrustation layer resulting from an extended period of weathering or burial, or a green film produced by oxidation of bronze and copper.

Petitioner submitted a number of examples of use of PATINA in connection with tiles and roofing: e.g., "Patina Green" and "Tropical Patina" metal roofing; "Natural Patina painted metal architectural systems"; "Natural Patina," "Antique Patina" and "Bronze Patina" insulated roof and wall panels. Petitioner also provided a number of publications evidencing that "patina" is "widely understood and used by the relevant trade and public to identify architectural metals, including the metal goods identified in Respondent's registration, having a desirable, aged appearance ...."

Moreover, respondent itself uses "patina" in a generic manner, referring to one of its products as "Painted Panels That Look Like Patina'd Copper." One of petitioner's experts testified that "patina" refers to discoloration on the surface of metal, and that purchasers commonly use "patina" generically to reference the products they are seeking. A linguistic expert opined that the noun "patina" is used by the general public in a generic sense in connection with metal architectural elements rather than associating it with a single source.

Respondent offered no evidence that the relevant public ever uses PATINA to refer to goods from a single source.

The Board concluded that, at a minimum, PATINA is generic for a type of metal roofing or tile. See In re Central Sprinkler Co., where ATTIC was found to be generic for a category of fire sprinklers. The Board therefore granted the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: The ATTIC case is a good one to remember. The term referred to a sub-genus of fire sprinklers. I think of goods displayed in a store, and whether there would be an aisle sign in the "sprinkler" section, pointing to the area of the store displaying "attic" sprinklers.

Text Copyright John L. Welch 2017.

TTABlog Test: Is GOLDENBERRY Merely Descriptive of Fresh Fruit?

The USPTO refused registration of  GOLDENBERRY, finding the applied-for mark to be merely descriptive of "fresh fruits." Applicant appealed, arguing that its fruit is yellow, not golden, and is properly called “Gooseberry” or “Cape Gooseberry.” How do  you think this came out? In re Volcano Produce, Inc., Serial No. 86321169 (June 20, 2017) [not precedential] (Opinion by Judge Quinn).

Examining Attorney Michael Eisnach maintained that GOLDENBERRY merely describes Applicant’s fruit: a berry that is golden in color. He pointed to use of the term by the media and by others in the fruit industry, as well as to dictionary excerpts, an item from Wikipedia, portions of Applicant’s website, and third-party website pages. The Board highlighted three examples of Internet use:

"Though new to the market in the U.S., golden berries have a long history of exportation and use in Europe, the Middle East, and China." (renegadehealth.com)

"Once you learn about aronia berries and golden berries, both of which are increasingly available in stores and online, you’ll be chomping at the bit to sample them. (people.com);

"Golden berries, also known as Physalis peruviana, is South American fruit that’s highly concentrated with nutrients and bioactive compounds." (globalhealingcenter.com).

Applicant argued that "[a] fair degree of imagination is required to make the leap from the mark to what goods are involved," but the Board pointed out for the umpteenth time that the mark must be considered not in the abstract but in the context of the identified goods.

The record confirmed that applicant's fruit is also called "Cape Gooseberry" and "Gooseberry," but, of course, a product may be described by more than one merely descriptive term or may have more than one name. The evidence "clearly shows that another commonly used name for the fruit is 'goldenberry' or 'golden berry.'" And that was not all she wrote:

In addition to being the name of the fruit, the evidence establishes that the term is merely descriptive of a berry that is golden in color ("deep yellow" as described in the dictionary ...).

Applicant mainly relied on the U.S. Department of Agriculture’s Fresh Fruit and Vegetables Manual (2d ed. 2012), which includes listings for "Cape Gooseberry" and "Gooseberry, but no entry for "goldenberry" or golden berry." Applicant contended that "the gossamer wings of tabloid pages [Applicant’s characterization of the Examining Attorney’s evidence] should [not] be allowed to serve as a substitute for the agricultural oracle that is the USDA." The Board was not impressed.

Notwithstanding this omission, the plethora of recent third-party uses of the term “goldenberry” in the fruit industry outweighs the probative value of this manual, which was issued five years ago.

Considering all the evidence, the Board concluded that GOLDENBERRY is merely descriptive of fresh fruit.


Read comments and post your comment here.

TTABlog comment: Is this a WYHA?

Text Copyright John L. Welch 2017.

VAGISAN Not Confusable With VAGISIL for Feminine Products, Says TTAB

The Board dismissed this opposition to registration of VAGISAN for various feminine hygiene products, finding no likelihood of confusion with the registered mark VAGISIL for overlapping products. The Board, relying on proof of applicant's capacity to produce its products, also dismissed opposer's claim that applicant lacked a bona fide intent to use the mark when it filed the opposed application. Combe Incorporated v. Dr. August Wolff GmbH & Co. KG Arzneimittel, Opposition No. 91209708 (June 19, 2017) [not precedential] (Opinion by Judge Bergsman).

Fame: Opposer asserted that VAGISIL is a famous mark but its proofs fell short. It proved use of the mark since the 1970's, substantial nationwide sales, a 50% market share for its powders and cream, a 90% share for anti-itch wipes, and substantial advertising expenditures. However, the Board found that opposer's commercial success does not make the VAGISIL trademark famous. There was no testimony or evidence regarding the size of the market or the percentage of women who purchase intimate feminine produce, and no evidence comparing opposer's advertising expenditures to those of comparable products. Although opposer's sales and market share were impressive, the Board could only speculate about the actual impact of opposer's mark on consumer perception.

Strength:  The prefix VAGI- is "obviously and indisputably highly descriptive when applied to a vaginal product." Third party registrations and uses of VAGI-formative marks showed that the VAGI-prefix means "something related to intimate feminine hygiene products (i.e., vaginal)." Also, relevant consumers have been exposed to these marks and products. Although there was no evidence regarding the extent of use of those marks, the number of them was sufficient to support the finding that "the VAGI-prefix is used to create a trademark that suggests an intimate feminine product."

The strongly suggestive nature of the VAGI-prefix (i.e., referring to intimate feminine products) means that Opposer’s mark VAGISIL cannot bar the registration of every mark beginning with a VAGI-prefix used in connection with intimate feminine hygiene products despite the commercial strength of Opposer’s mark. Marks incorporating the VAGI-prefix, including Opposer’s mark VAGISIL, will bar the registration of marks as to which the resemblance to [Opposer’s mark] is striking enough to cause one seeing it to assume that there is some connection, association or sponsorship between the two."

Goods/Channels: Because the goods overlap, the Board must presume that the channels of trade and classes of purchasers are the same.

Sophistication of Customers: This factor favored applicant because consumers exercise considerable care in purchasing these products.

The marks: The Board noted that when the common portion of a mark is weak, consumers may distinguish the marks based on otherwise minor differences. SAN and SIL are not similar. Therefore the marks in their entireties are distinguishable.

Other factors: The fact that applicant opposed the registration of VAGISIL in the UK is irrelevant here. In any case, contrary positions taken in other proceedings merely add shade and tone to the total picture before the decision maker. The Board is directed to decide the case on the record before it, and that duty may not be delegated to another body.

Conclusion: Balancing the relevant du Pont factors, the Board found that VAGISAN is not likely to cause confusion with opposer's mark VAGISIL.

Bona Fide Intent to Use: Applicant had not advertised or sold its products in the United States, nor did it have a written marketing plan for the United States. However, applicant has been in business since 1998 selling its products in Germany and other countries. An applicant's capacity to make or market the involved goods is evidence supporting a bona fide intent to use. Moreover, applicant met with a US company to discuss distribution of the products in this country, contemporaneous with the filing of the subject application.

The Board concluded that applicant did have a bona fide intent to use the mark "in a real and legitimate commercial sense" with it filed the subject application. And so the Board dismissed this claim as well.

Read comments and post your comment here.

TTABlog comment: The Board found the capacity to market a product to be evidence of bona fide intent in Swatch AG v. M. Z. Berger & Co., 108 USPQ2d 1463, 1477 (TTAB 2013), aff’d 114 USPQ2d 1892 and in Wet Seal, Inc. v. FD Mgmt., Inc., 82 USPQ2d 1629, 1643 (TTAB 2007).

Text Copyright John L. Welch 2017.

Supreme Court Declares Disparagement Provision of Section 2(a) Unconstitutional

In case you haven't heard, the Supreme Court ruled yesterday that the disparagement provision of Section 2(a) of the Trademark Act is facially unconstitutional because it violates the Free Speech clause of the First Amendment. "It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend." Matal v. Tam, 582 U.S. ___, 122 USPQ2d 1757 (2017).

The Slants album cover
Simon Tam's application to register the mark THE SLANTS for a musical band was refused registration under Section 2(a), which in pertinent part bars the registration of marks that may "disparage ... or bring into contemp[t] or disrepute" and "persons, living or dead." The TTAB affirmed the refusal [here], but the CAFC reversed [here].

The Supreme Court, in an opinion by Justice Alito, observed that federal registration "confers important legal rights and benefits on trademark owners who register their marks." B&B Hardware, 575 U.S. ___, at ___. Registration serves as constructive notice of a registrant's claim of ownership, provides prima facie evidence of the validity of the mark and its registration and of the owner's exclusive right to use the mark, enables a mark to be rendered "incontestable" after five years of use, and allows the owner to stop importation of infringing goods.

The Court thoroughly rejected the Government's arguments that trademarks are government speech, that trademarks are a form of government subsidy, and that the disparagement clause should be tested under a new "government-program" doctrine. The Court observed that even in situations where some content- and speaker-based restriction may be allowed, "viewpoint discrimination" is forbidden.

Our cases use the term “viewpoint” discrimination in a broad sense, ... and in that sense, the disparagement clause discriminates on the bases of “viewpoint.” To be sure, the clause evenhandedly prohibits disparagement of all groups. It applies equally to marks that damn Democrats and Republicans, capitalists and socialists, and those arrayed on both sides of every possible issue. It denies registration to any mark that is offensive to a substantial percentage of the members of any group. But in the sense relevant here, that is viewpoint discrimination: Giving offense is a viewpoint.

The Government argued that all trademarks are commercial speech and thus subject to relaxed scrutiny under the First Amendment, as outlined in Central Hudson Gas Elec. Corp. v. Public Serv. Comm’n of N. Y., 447 U. S. 557 (1980). The Court side-stepped that question because it found that the disparagement clause of Section 2(a) "cannot withstand even Central Hudson review."

Under Central Hudson, a restriction of speech must serve "a substantial interest," and it must be "narrowly drawn." Id., at 564–565 (internal quotation marks omitted). This means, among other things, that "[t]he regulatory technique may extend only as far as the interest it serves." Id., at 565. The disparagement clause fails this requirement.

The Government claimed an interest in preventing speech that expresses offensive ideas, but that position "strikes at the heart of the First Amendment." Demeaning speech may be hateful, but the Constitution protects the freedom to express hateful thought. The Government also claimed another interest is to protect the orderly flow of commerce, since discriminatory conduct has an adverse effect on commerce. But, the Court pointed out, the disparagement provision is not "narrowly drawn to drive out invidious discrimination." It applies to any trademark that disparages any person, group, or institution. "It is not an anti-discrimination clause; it is a happy-talk clause," and goes further than necessary to serve the asserted interest.

The Court therefore held the disparagement provision of Section 2(a) to be unconstitutional on its face.

In a concurring opinion, Justice Kennedy observed that "[t]he central purpose of trademark registration is to facilitate source identification."

To serve that broad purpose, the Government has provided the benefits of federal registration to millions of marks identifying every type of product and cause. Registered trademarks do so by means of a wide diversity of words, symbols, and messages. Whether a mark is disparaging bears no plausible relation to that goal.

Read comments and post your comment here.

TTABlog comment: Not a surprising outcome, but one that is not welcomed by many. Next up: the "scandalous and immoral" provision of Section 2(a). The FUCT appeal (In re Brunetti) is currently suspended at the CAFC. In a January 2016 letter [here], the Director of the USPTO recommended that the case be remanded to the USPTO because the reasoning in the CAFC's Tam decision "requires the invalidation of Section 2(a)’s prohibition against registering scandalous and immoral marks as well."

Text Copyright John L. Welch 2017.

Precedential No. 17: TTAB Affirms Refusal of PHARMACANN for Medical Marijuana Services Due to Illegality under CSA

The Board affirmed 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 lacked 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. Although Congress has forbidden the Department of Justice from expending any funds to prevent any state that has legalized medical marijuana from implementing its own laws, that prohibition is temporary and the law could be changed at any time. In re PharmaCann LLC, 123 USPQ2d 1122 (TTAB 2017) [precedential] (Opinion by Judge Larkin).

In order for a mark to qualify for registration, the use of the mark in commerce must be "lawful." In re JJ206, LLC, 120 USPQ2d 1568, 1569 (TTAB 2016). If the goods/services are illegal under federal law "the applicant cannot use its mark in lawful commerce, and it is a legal impossibility for the applicant to have the requisite bona fide intent to use the mark." Ibid.. The Examining Attorney maintained that the applications at issue here involve per se violations of federal law because the dispensing of marijuana is illegal under the federal Controlled Substances Act ("CSA"), 21 U.S.C. §§ 801 et seq. [The CSA uses the spelling "marihuana."]

Applicant put forth two principal arguments: first, that the Departments of Justice has announced [in the so-called "Cole Memorandum"] that it would not prosecute caregivers for providing medical marijuana or individuals for using medical marijuana, so long as the "actions are in clear and unambiguous compliance with existing state laws providing for the medical use of marijuana;" and second that Congress "has taken the same position as the Department of Justice,” in several Appropriations Acts, by prohibiting  the Department of Justice from expending funds to prevent states that have legalized medical marijuana (including Applicant’s home state of Illinois) from implementing their own state laws.

Applicant's first argument, the Board pointed out, "is foreclosed by our decision in JJ206, in which we 'reject[ed] Applicant’s argument that its use and intended use of the mark are lawful based on the [Cole] memorandum.'" 120 USPQ2d at 1571. There the Board held that the Cole Memorandum by its terms was "intended only 'as a guide to the exercise of investigative and prosecutorial discretion' and specifically provide[d] that '[n]either the guidance herein nor any state or local law provides a defense to a violation of federal law, including any civil or criminal violation of the CSA.'" Id. n.18 (quotation omitted). The Board then ruled that the conclusions reached in JJ206 regarding recreational marijuana applied equally to medical marijuana. "In both contexts, the Cole Memorandum lacks the force of law and “does not and cannot override the CSA." Id.

Applicant's second argument, albeit novel, was equally unsuccessful. The Board observed that in United States v. McIntosh, 833 F.3d 1163, 1169-70 (9th Cir. 2016), the United States Court of Appeals for the Ninth Circuit decided “whether criminal defendants may avoid prosecution for various federal marijuana offenses on the basis of a congressional appropriations rider [sometimes called the Rohrabacher-Farr Amendment] that prohibits the United States Department of Justice from spending funds to prevent states’ implementation of their own medical marijuana laws.”

The court ultimately concluded that the answer was “yes” if “their conduct was completely authorized by state law, by which we mean that they complied with all relevant conditions imposed by state law on the use, distribution, possession, and cultivation of medical marijuana.” Id. at 1179. In doing so, however, the court also concluded that the Appropriations Acts and the Rohrabacher-Farr Amendment did not make medical marijuana legal under the CSA.

The Board found the court's reasoning to be persuasive: although the Department of Justice is currently prohibited from spending funds for prosecution of those who are in compliance with state law, Congress could change its mind tomorrow. The court further noted: "Moreover, a new president will be elected soon, and a new administration could shift enforcement priorities to place greater emphasis on prosecuting marijuana offenses." In any event, the CSA is still the law.

Nor does any state law "legalize" possession, distribution, or manufacture of marijuana. Under the Supremacy Clause of the Constitution, state laws cannot permit what federal law prohibits. U.S. Const. art VI, cl. 2. Thus, while the CSA remains in effect, states cannot actually authorize the manufacture, distribution, or possession of marijuana. Such activity remains prohibited by federal law. United States v. McIntosh at 1180 n.5

The Board observed that there may be support in Congress for reclassification of medical marijuana under the CSA to a status that would make its possession, distribution, and dispensing lawful under federal law. However, that is not the law as of the date of its decision.

We must determine the eligibility of marijuana-related marks for federal registration by reference to the CSA as it is written, not as it might be enforced at any point in time by any particular Justice Department. The CSA in its current form makes Applicant’s intended uses of its marks unlawful, and its marks are thus ineligible for federal registration.

And so the Board affirmed the refusals to register.

Read comments and post your comment here.

TTABlog comment: How long will it be before the current administration changes course on medical marijuana prosecutions?

Text Copyright John L. Welch 2017.

Precedential No. 16: Rejecting Equivalents Argument, TTAB Affirms Surname Refusal of WEISS WATCH COMPANY

The Board affirmed a Section 2(e)(4) refusal of WEISS WATCH COMPANY for watches, clocks, and related goods [WATCH COMPANY disclaimed], finding the applied-for mark to be primarily merely a surname. Applicant argued that, applying the doctrine of foreign equivalents, WEISS has non-surname significance because “weiss” means “white” in German, and thus the surname bar is inapplicable. Nein, said the Board. In re Weiss Watch Company, Inc., 123 USPQ2d 1200 (TTAB 2017) [precedential] (Opinion by Judge Kuhlke).

WEISS is the surname of applicant's founder and head watchmaker, Cameron Weiss. The surname WEISS ranks number 531 on the list of common surnames in America for the year 2000. A LEXIS/NEXIS search revealed 99,683 appearances of the surname WEISS in a nationwide telephone directory. In short, the evidence showed that "WEISS is not rarely encountered as a surname in the United States."

There was no evidence that WEISS has a recognized meaning in English other than as a surname, but applicant pointed to the meaning of WEISS in German as "white," relying on In re Isabella Fiore LLC, where a surname refusal of FIORE was reversed because it is the Italian equivalent of "flower." [TTABlogged here]. This other meaning, applicant argued, removes WEISS from the surname bar.

The doctrine of foreign equivalents applies when it is likely that the ordinary American purchaser would "stop and translate" the foreign word into its English equivalent. The "ordinary American purchaser" includes "all American purchasers, including those proficient in a non-English language, who would ordinarily be expected to translate words into English."

The Board has found that consumers would stop and translate a term when it is from a major, modern language, spelled in the standard way in the foreign language, and is the only translation of the English word to which it translates, so that there is no question that its translated meaning would be recognized and not considered obscure. Isabella Fiore, 75 USPQ2d at 1569.

The Board recognized that German is a major, modern language and the proposed other meaning ("white") is not obscure, but "WEISS is not the standard orthography for the word 'white' in German." "White" translated from English into German is spelled as "Weiß," with the letter eszett, not as "Weiss."The evidence did not show that "weiss," spelled without the eszett, translates into "white" in English. The Board concluded that application of the doctrine of equivalents is not appropriate here.

Moreover, the Board took judicial notice that WEISS derives from a German habitational name - i.e., a German surname based on a location. This fact reinforces the consumer perception of WEISS as a surname.

In Isabella Fiore, the term FIORE was spelled in the standard Italian form and the English equivalent of "flower" resolved only to "fiore." There was no question that the term "fiore" would be recognized as the Italian word for "flower." Nor was the meaning obscure, and so the Board concluded that consumers would stop and translate the term, a fact that detracted from its surname significance.

Here, however, WEISS is not spelled in the standard German dictionary form. Moreover, WEISS is more common as a surname than FIORE (5193 NEXIS entries) and there was no evidence that FIORE was a surname associated with applicant, whereas here WEISS is advertised to consumers as the name of applicant's founder and head watchmaker. Finally, the surname WEISS originated as a habitational name in Germany and therefore a German speaker is likely to view WEISS as a surname rather than translate it into another word.

The addition of the words WATCH COMPANY to WEISS does not affect the surname significance of the mark, viewed in its entirety, in the context of applicant's goods, since neither "watch" nor "company" has any source-identifying significance.

Therefore, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Even if German speakers would stop and translate WEISS into WHITE, the remaining 99% of Americans - who don't speak German - would not. So why does it make a difference in the surname analysis whether such a small portion of Americans might not perceive WEISS as primarily a surname, when 99 % of Americans would?

"What watch? Ten watch. Such watch!"


Text Copyright John L. Welch 2017.

Precedential No. 15: LITTLE MERMAID Merely Descriptive of Dolls, Says TTAB

The Board affirmed a Section 2(e)(1) refusal of LITTLE MERMAID, finding the mark merely descriptive of "dolls." Drawing a distinction between character names in the public domain and those derived from works in which the applicant owns intellectual property rights, the Board concluded that consumers will not perceive LITTLE MERMAID as a source identifier but instead will "understand the mark to describe the public domain character in the Hans Christian Andersen fairy tale, as well as a young or little mermaid." In re United Trademark Holdings, Inc., 122 USPQ2d 1796 (TTAB 2017) [precedential] (Opinion by Judge Bergsman).

"The Little Mermaid" is a well-known fairy tale by the Danish author, Hans Christian Andersen. First published in 1837, it has been adapted many times, including in a Disney film (1989) and a stage musical based on the film (2008).

Applicant did not disagree that the term "Little Mermaid" immediately and directly describes a doll featuring the appearance of a young or small mermaid. Applicant, however, argued that the mark also immediately conveys the commercial impression of the name of the public domain, fictional character, and that this aspect of the mark is not merely descriptive of its goods. The Board agreed in part, finding that "the immediate commercial impression" evoked by LITTLE MERMAID, when used for dolls, is the fictional character.

The Board observed that its case law draws a distinction between "situations where the character is in the public domain and where the applicant owns intellectual property rights in the work from which the character arose." For example, MARTHA WASHINGTON was found merely descriptive of character dolls "because the mark identifies an historical figure which consumers do not necessarily link to commercial entities as they do a fictional character." A character like SUPERMAN, however, is a proprietary creation, promoted by an entity that markets all manner of products. Consumers expect goods and services bearing that name (or image) of SUPERMAN to emanate from, or be produced or licensed by, the entity that created the character and has the right to profit from its commercialization.

A fictional public domain character like the Little Mermaid of the Andersen fairy tale is not necessarily linked to a specific entity. "[P]rospective purchasers expect dolls labeled as LITTLE MERMAID to represent the fairy tale character and, thus, [the mark] describes the purpose or function of the goods (i.e., to represent the Little Mermaid of the fairy tale)." Other doll makers have a competitive need to use the name LITTLE MERMAID to describe their products.

Applicant asserted that the names of public domain characters have been regularly registered by the USPTO without requirement of a disclaimer or a showing of acquired distinctiveness: e.g., WALT DISNEY'S CINDERELLA, RAPUNZEL, and TINKER BELL. The Board, however, pointed out once again that each case must be decided on its own merits based on the record then before the Board. Third-party registrations are of little persuasive value; they do not estop or disqualify the Board from correctly deciding the case before it.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog note: How about BIG MERMAID for inflatable dolls?

Text Copyright John L. Welch 2017.

MIROSA for Beer Confusable with MIRASSOU, a Strong Mark for Wine, Says TTAB

The Board granted a petition for cancellation of a registration for the mark MIROSA for "beer, ale, lager, stout, porter, shandy," finding a likelihood of confusion with the registered mark MIRASSOU for wine. Noting Professor McCarthy's observation that only the CAFC uses the term "fame" instead of "strength" for the 5th du Pont factor (See the CAFC's the recent INSIGNIA decision [TTABlogged here]), the Board found MIRASSOU to be a very well-known mark of considerable strength. E. & J. Gallo Winery v. Wade, Cancellation No. 92063116 (June 7, 2017) [not precedential] (Opinion by Judge Quinn).

The Goods: The Board observed that it has found beer and wine to be related in prior decisions. In fact, the parties did not cite a single precedential decision holding beer and wine to be unrelated for likelihood of confusion purposes. Website evidence and third-party registrations confirmed the relatedness of these products.

The Board presumed that the goods travel in the same trade channels, including restaurants, bars, liquor stores, and convenience stores. In any case, the evidence confirmed that presumption. The goods are also sold to the same classes of purchasers, namely, ordinary consumers. The identifications of goods encompass inexpensive beer and wine subject to impulse purchases.

The Marks: The marks are "somewhat similar" in appearance. As to sound, as suggested by Petitioner, the marks may be similarly pronounced as “MË-RÖ-SÁ and MË-RÖ-SOO,” respectively. Moreover, any minor differences in sound may not be noticed when the beer and wine are ordered by name in a noisy bar or restaurant. Moreover, the consumer may never see the label for the beer if it is served in a glass from a keg, or the wine label if the wine is served from a bottle at the bar. Neither mark has any recognized meaning. Given the similarities in sound and appearance, the Board found that the marks engender overall commercial impressions that are similar.

In sum, the Board found the similarity of the marks to be a factor in petitioner's favor.

Strength of Opposer's Mark: The Board gave a nod to the CAFC's INSIGNIA decision, Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, Appeal No. 2016-1089 (Fed. Cir. May 24, 2017) [precedential], which stated that fame under Section 2(d) is not "an all-or-nothing" measure but rather "varies along a spectrum from very strong to very weak." The Board quickly turned to discuss the "strength" of the mark (not the "fame" of the mark), since that's what the courts (other than the CAFC) consider. "The Federal Circuit uses the term 'fame' instead of 'strength.'" McCarthy on Trademarks and Unfair Competition, Sections 11:73 and 24:49 (4th ed. June 2017). [In my view, "fame" is an all-or-nothing proposition, but strength varies along a spectrum, with fame at one end - ed.]

Petitioner provided evidence that the mark MIRASSOU is very well known in the wine market. The mark has been in continuous use since 1940, and MIRASSOU brand wine is one of the top sellers in this country. Tens of millions of bottle have been sold since 2009, with annual sales in the eight figures. Since 2010, advertising expenditures have been in the tens of millions of dollars.

There was no evidence of third-party use of similar marks for similar goods. "In sum, ... .the record established that Petitioner's mark MIRRASOU for wine is very well known, and is a mark of considerable strength. This factor 'warrants reasonable weight, among the totality of circumstances' in favor of a finding of likelihood of confusion." (quoting the INSIGNIA case).

Conclusion: Confusion is likely, and so the Board ruled in favor of petitioner.

Read comments and post your comment here.

TTABlog comment: Read Professor McCarthy's comment on the CAFC's INSIGNIA ruling here. Personally, I don't think the marks are that close.

Text Copyright John L. Welch 2017.

TTAB Accepts Concurrent Use Agreement for Registration of BRAS FOR THE CAUSE in 43 States

The Board accepted a concurrent use agreement allowing Applicant Bras for the Cause Iowa, Inc. to receive a registration of its mark BRAS FOR THE CAUSE for "Charitable fundraising services for screening, diagnosis, and eradication of breast and cervical cancer," limited to the area comprising the United States except the states of California, Colorado, Florida, Oregon, Pennsylvania, Washington, and Wyoming. Bras for the Cause Iowa, Inc. v. Soroptimist International of Glendale, CA , Concurrent Use No. 94002700 (June 9, 2017) [not precedential].

In December 2016, Iowa filed a motion to dismiss this proceeding in light of a settlement agreement reached by the parties. The Board denied the motion due to concerns as to whether the terms of the agreement would sufficiently avoid likely confusion, because of the agreed-upon concurrent use of the parties’ nearly identical marks for overlapping services in potentially overlapping geographic territory.

Applicant filed a revised agreement, adding an additional entity (SIA) and providing:

• That SIG and SIA will not "use the mark BRAS FOR THE CAUSE in Iowa or its contingent states of Minnesota, Wisconsin, Illinois, Missouri, Nebraska or South Dakota," which are designated for Applicant’s use;

• That Applicant will not "use the mark BRAS FOR A CAUSE in the states of California, Colorado, Florida, Oregon, Pennsylvania, Washington, or Wyoming," which are designated for SIG’s and SIA’s use, and Applicant "will so limit its pending trademark application;"

• That if either party desires to expand the use of its marks outside the designated states, they will follow the procedure set out in the Revised Agreement to prevent overlap, providing for advance notice and in certain scenarios, consent or the withholding thereof;

• That potential confusion is de minimis or unlikely;

• That their respective trade channels differ and their respective fundraising activities are "highly localized," each "within a limited geographic community near" their respective offices;

• That they will follow a procedure set out in the Revised Agreement to address any instances of actual confusion that may arise;

• That SIG has abandoned its application,9 and neither SIG nor SIA will apply to register BRAS FOR A CAUSE as long Applicant continues to use its mark;

• That Applicant “agrees to permit SIG and any of the SIA clubs to use SIG’s mark, as well as any logo that includes the words 'BRAS FOR A CAUSE;'" and

• That SIA will not oppose Applicant “in using Applicant’s mark and any logo that includes the words 'BRAS FOR THE CAUSE'" and SIG and SIA consent to the use and registration of Applicant’s mark.

The Board found the revised agreement to be acceptable and it ordered restriction of Iowa's application to the area comprising the United States except the states of California, Colorado, Florida, Oregon, Pennsylvania, Washington, and Wyoming.

Read comments and post your comment here.

TTABlog comment: A good example of what terms you may need in your next geographically-based concurrent use agreement.

Text Copyright John L. Welch 2017.

CAFC Affirms TTAB, Upholds Cancellation of Individual's Registration of Service Mark Due To Non-Ownership

The CAFC affirmed the TTAB's decision [TTABlogged here] granting a petition for cancellation of a Supplemental Registration for the mark THE AMERICAN COLLEGE OF VETERINARY SPORTS MEDICINE AND REHABILITATION for  various "veterinary education services." The court endorsed the legal framework applied by the Board in resolving ownership disputes when a member has departed a group, and it found that substantial evidence supported the Board's findings that Registrant Sheila Lyons never owned the mark. The court agreed with the Board's conclusion that her underlying application was consequently void ab initio. Sheila Lyons, DVM v. The American College of Veterinary Sports Medicine and Rehabilitation, 123 USPQ2d 1024 (Fed. Cir. 2017) [precedential].

Lyons, along with five other equine veterinarians, formed an organizing committee for the purpose of creating a veterinary specialist organization (VSO) for treating athletic animals. The committee began using the subject mark by 2002. Lyons was dismissed from the organizing committee in 2004. She then applied to register the mark and in 2006 received a Supplemental Registration.

In 2010, the American Veterinary Medical Association (AVMA) granted provisional recognition to the proposed VSO under the name "American College of Veterinary Sports Medicine and Rehabilitation." The College administered its first certification test in 2012 and has conducted annual meetings and continuing education programs since then.

The CAFC found no error in the framework applied by the Board in resolving this ownership dispute, a framework developed for situations in which a member of a group has departed and (in the absence of a formal agreement governing ownership of the mark) both the member and the remnant group claim ownership of the mark. See, e.g., Wonderbread 5 v. Gilles, 115 U.S.P.Q.2d 1296, 1305 (TTAB 2015); see generally, 2 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 16:45 (4th ed. 2015). Although various sources enunciated the relevant factors differently, they all include three main factors:

(1) the parties' objective intentions or expectations;

(2) who the public associates with the mark; and

(3) to whom the public looks to stand behind the quality of goods or services offered under the mark.

The Parties' Collective Intent: Although Lyons may have subjectively believed that she owned the mark and would control the VSO once formed, the objective expectations of the parties were that the organizing committee would form the VSO under the chosen name, not that Lyons would render personal services under the mark. At no time did Lyons communicate to other committee members her belief that she owned the mark, any prior use of the mark, or any objection to the committee naming the VSO after the mark. Thus her objectively manifested expectations contradicted any subjective notion the she owned the mark. Th CAFC concluded that substantial evidence supported the Board's determination that "the collective expectation of the parties, as objectively manifested, was that Lyons and the rest of the organizing committee would form an AVMA-accredited VSO with a name that became the mark."

Who the Public Associates with the Mark: Lyons cited as her first use of the mark a paper, written in the future tense, indicating her future plans to form a VSO under the name at issue. However, the mere preparation and publication of future plans (assuming her paper was published) do not constitute use in commerce. See, e.g., Aycock Engineering, Inc. v. Airflite, Inc., 90 USPQ2d 1301 (Fed. Cir. 2009). Moreover, Lyons never advertised the mark, never maintained a website, has no employees, no volunteers, no students, and no certification program.

On the other hand, the College has certified at least 115 veterinarians, established 13 active residency programs in veterinary colleges, and conducted conferences and continuing education programs. The College has obtained corporate sponsorships from companies in the veterinary industry, has received considerable attention in the press, and is listed on the AVMA website under the mark.

The CAFC concluded that substantial evidence supported the Board’s finding that the relevant public looks to the College, not to Lyons, for services in connection with the mark "because Lyons’s use of the mark has not created distinctiveness inuring to Lyons."

To Whom the Public Looks for Quality Control: Lyons provided no evidence that she obtained certification from the AVMA, or that she has students enrolled in educational services offered under the mark, or that she offers any certification programs at all. The College, on the other hand,earned AVMA accreditation so that the veterinarians it certifies may hold themselves out as AVMA-approved specialists. Furthermore, "as the Board observed, the College’s very name carries the 'AVMA's seal of approval' because many AVMA-accredited VSOs, and none that are not AVMA accredited, have names beginning with the words "American College of Veterinary.'"

The CAFC concluded that substantial evidence supported the Board’s finding that "members of the public who seek out veterinary sports medicine and rehabilitation services will rely upon the College’s certification as evidence of a particular veterinarian’s expertise."

Conclusion: In summary, the CAFC held that the Board’s findings were supported by substantial record evidence. "One might even say that the lion’s share of the evidence supports the Board’s decision."

Although Lyons may have been the first to use the mark, the record shows that her use never rose to the level of use in commerce. Rather, she initiated efforts to form an AVMA-accredited VSO with the name of the mark, and that endeavor moved forward without her after she was dismissed from the organizing committee. Her involvement with the committee may have been the very reason that the committee adopted the mark; nevertheless, it is clear from the record that the College used the mark in commerce before Lyons, and Lyons cannot in effect appropriate it. The Board’s findings to that effect were supported by substantial evidence.

Read comments and post your comment here.

TTABlog comment: Although the challenged registration was more than five years old, a Supplemental Registration may be cancelled at any time under Section 24(2) of the Trademark Act.

Text Copyright John L. Welch 2016.

Precedential No. 14: TTAB Affirms Mere Descriptiveness Refusal of WELL LIVING LAB for Research Services

In a bit of a snoozer, the Board affirmed a Section 2(e)(1) refusal of the mark WELL LIVING LAB, finding it merely descriptive of scientific research services in the field of human health and wellness in indoor environments. Discounting applicant's largely outdated evidence that "well living" refers to leading a moral life, the Board instead relied on more current evidence employing the phrase to mean "health and wellness." In re Well Living Lab Inc., 122 USPQ2d 1777 (TTAB 2017) [precedential] (Opinion by Judge Wolfson).

Beginning with "lab" - defined as a "room or building equipped for scientific experiments, research ...") the Board concluded that the term refers to the location where applicant's research services take place. At best, "lab" is merely descriptive, if not generic, for the services.

As to "well living," applicant provided definitions from the Oxford Dictionary with its final brief: for example, "the action or fact of leading a good life, especially with respect to moral virtue." The definitions included the comment that this sense of the term is "Now somewhat archaic." The Board gave this evidence some weight because some consumers may be aware of this meaning, but it found more probative Examining Attorney Chrisie Brightmire King's website evidence demonstrating that "well living" has essentially the same descriptive meaning as "health and wellness."

Combining the descriptive term "well living" with the non-distinctive term "lab" to form WELL LIVING LAB yields a phrase that is "no more than the sum of its parts:"

It immediately informs consumers of Applicant’s scientific research andproduct testing services about a feature or characteristic of the services, namely, that they involve research of products designed to improve a user’s health and wellness conducted in a laboratory environment. Accordingly, Applicant’s mark WELL LIVING LAB is merely descriptive of Applicant’s services.

Read comments and post your comment here.

TTABlog comment: Why is this precedential, may I ask? I think the footnotes are the most interesting parts of the decision.

Text Copyright John L. Welch 2017.

Precedential No. 13: TTAB Reverses Mutilation and Phantom Mark Refusals of U. Miami Ibis Design

The Board reversed two refusals to register the mark shown below, for various paper products, clothing, and educational and entertainment services, finding that it comprised neither a mutilation of the mark as actually used, nor a phantom mark. The applied-for mark, which "consists of an ibis wearing a hat and a sweater," depicts the mascot of the University of Miami, Sebastian the Ibis. In re University of Miami, 123 USPQ2d 1075 (TTAB 2017) [precedential] (Opinion by Judge Hightower).

Mutilation: Section 1051(a)(1) of the Trademark Act requires that an applicant submit a specimen of its mark as used. An applicant must also submit a drawing that is a "substantially exact representation of the mark" as used. See Rule 2.51(a). If the mark in the drawing contains only a minor alteration of the mark as used - i.e., it does not create an different commercial impression than the mark as used - the drawing is acceptable.

Here the mark in the drawing (above) differed from the mark as used (example below) in several ways: in use, the stylized letter "U" appears in the center of the hat; the word "Miami" is displayed on the front of the sweater; and the sweater has striping along the side and shoulders.

The Board noted that the Examining Attorney contended, in effect, that applicant has mutilated its mark by "severing part of it and seeking registration of only that part." The question for the Board was this: "What exactly is the 'trademark,' and does the designation for which registration is sought comprise a separate and distinct 'trademark' in and of itself?"

The Board observed that an applicant is allowed some latitude in selecting the mark that it wants to register, as long as the portion it selects creates a separate and distinct commercial impression. If not, the result is an impermissible mutilation of an Ibis.

The Board pointed to several prior decisions as examples of a design or word being registrable separate from accompanying matter, including a monster truck design without the words JURASSIC ATTACK appearing on the vehicle, the word PSYCHO apart from accompanying words and design, and the design of a bear inside a container separate from the word STERNO appearing thereon:

In light of those prior decisions, the Board found that the applied-for design mark creates a separate and distinct commercial impression from the letter "U" and the word "Miami" that appear on the specimens of use. Despite the appearance of that text, "the overall display on the specimens creates the commercial impression of a personified ibis."

As to the stripes on the sweater, the Board found their absence to be a minor alteration (like the stylized gills or strips in the monster truck case) that does not create a different mark with a different commercial impression from that of the specimens.

And so the Board found that applicant's drawing is a substantially exact representation of applicant's mark as actually used, and it reversed this refusal to register.

Phantom Mark: The Examining Attorney further contended that applicant was attempting to register more than one mark because the sweater "operates as a blank slate for whatever additional elements the applicant, in its sole discretion, sees fit to include."

The Board noted that under the Trademark Act an applicant may seek to register only a single mark, and a mark that includes a changeable or phantom element constitutes more than one mark. Registration of phantom marks is prohibited because "they do not disclose the designation used to identify and distinguish the goods covered by the mark, which makes it impossible to conduct an effective search."

Here, neither the drawing nor the mark description ("The mark consists of an ibis wearing a hat and a sweater") identifies a changeable or missing element. The refusal arose because of the extra elements that appear within the ibis design on the specimens of use. However, these extra elements are not "integral to Applicant's mark."

Applicant claims no rights to any wording in either the drawing or the mark description. We do not find Dial-A-Mattress to be on point here because Applicant has not applied to register a series of marks, or a mark with dashes or a blank space reserved for a term; rather, the applied-for mark incorporates no wording whatsoever. A registration of the ibis design covers only that mark as shown on the drawing, not any house marks or other literal elements Applicant chooses to add to it.

In short, applicant has not applied to register multiple marks. And so the Board reversed the phantom mark refusal.

Read comments and post your comment here.

TTABlog comment: This case suggests a way to avoid a phantom mark refusal: don't claim the phantom element as part of the mark, but in actual use set off the non-phantom element in such a way that it creates a separate commercial impression (e.g, by font, color, or design).

Text Copyright John L. Welch 2017.